[originally published November 5, 2015 at www.law-dlc.com]
Did you know that the Framers of the United States Constitution solidified the rights to copyrights and patents more than two years before the protection of freedom of speech? It is true. The Constitution, signed on September 17, 1787, included the following specific provision:
Congress shall have the power to … promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.
Science and useful arts. Authors and inventors. Writings and discoveries. Yes, this is the very foundation for our legal system that protects copyrights and patents. Trademark law was governed essentially by common law until 1881, when Congress passed a federal trademark act through its powers under the Commerce Clause. Our system of intellectual property predates the Bill of Rights. The United States has always relied on innovation and creativity as a core of individual rights and values.
History lessons aside, the trinity of basic IP rights often gets confusing to the average person. What constitutes a patent? How is it different from a copyright? And how is it protected differently from a trademark? Here I will try to explain the basics of patents, copyrights and trademarks. This includes the scope of rights, the nature of the property right and when you actually acquire a right in particular IP (and how to enforce it). Shall we begin?
Under the law, patents cover “inventions.” Pursuant to Title 35 of the United States Code: “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
What does this mean? Essentially, if you have a physical prototype of a new and novel machine or tangible thing, or more recently if you have conceived of a unique business method that can be put into practice, you have an “invention” that can be patented.
What does this not mean? You cannot patent an idea or a hypothetical. Please do not call your lawyer and start your proposal for acquiring a patent with “I have this idea…” as that lacks sufficient concreteness to be protected under the law. Plus you will annoy your lawyer and we do not want that.
When do you have a patent? To acquire a United States patent, you need to apply to the United States Patent and Trademark Office to register your novel invention. It is likely in your best interests to contact a licensed patent lawyer to assist you here, as the USPTO requires that only registered patent attorneys be allowed to prosecute patent applications. After the prosecution of your patent application, which usually requires a series of back-and-forth discussions with an examiner at the patent office, you may be granted a U.S. patent with a fancy certificate and everything. The date your patent is officially granted is the day you have a patent.
What do I get with my patent? As the owner of a U.S. patent, you own the exclusive right to make, use, and sell the products or methods embodied by the claims of your patent. Essentially you have the right to exclude others from practicing that which is disclosed by your patent. But your exclusive rights only exist for a period of twenty (20) years from the date you filed the original patent application. Most applications for patents take anywhere between two and three years before a patent is issued, which means your rights are usually intact for the remaining time.
What do I not get with my patent? You do not have the right to “tie” your patent to another product of yours and force customers to pay for both if they want to make, use or sell the non-patented product only. This would violate antitrust laws. You also do not have the right to prevent others from discussing your patent publicly – your rights in the patent are subject to your exchange of information disclosed in the patent to benefit the public. It is a fair trade with the government. You get a limited monopoly. The public gets access to all of the information disclosed by your patent publication. You also cannot prevent others from improving on your patented invention during the patent term. The U.S. patent system encourages improvements and modifications to existing inventions.
When should I call my attorney about patent questions? If you have a new and useful invention that you wish to patent, call your attorney. If you own a patent and believe someone else may be unlawfully practicing, selling or using your invention, call your attorney to explore the potential for an infringement action. You have rights in the patent, by all means enforce them.
Under the law, copyrights cover “original works of authorship fixed in any tangible medium of expression.” More specifically, the categories of copyrighted works include literary works, musical works (including lyrics), dramatic works (including accompanying music), choreographic works, pictorial, graphic and sculptural works, motion pictures and other audiovisual works, sound recordings, and architectural works.
What does this mean? It means any work of art that is fixed in a tangible medium of expression can be subject to a copyright and protected under the law. This includes almost any type of artistic expression, and the threshold for what constitutes “artistic” is intentionally a low bar. Your stick figure drawing, no matter how lacking in artistic merit, may still be copyrighted so long as it is an “original work.”
What does this not mean? You cannot copyright a word or phrase. You cannot copyright a name or title. You cannot copyright an idea or a plan. You cannot copyright blank forms. You cannot copyright works consisting entirely of information that contains no original authorship, i.e., you cannot claim copyright in statistics or sports scores (sorry, NFL).
When do you have a copyright? Unlike a patent, copyright exists the moment a work is fixed in a tangible medium of expression. Your copyright exists the moment you created it. This copyright is immediately enforceable at law. Now, you can take an additional step and seek to register your copyright with the United States Copyright Office. To actually sue someone for copyright infringement in the United States and receive damages thereafter, you are first required to apply for a registration of the copyright at issue. This provides an incentive to register all copyrighted works you consider to have value. Nevertheless, you have a copyright the instant your moment of inspiration is reflected by pencil to paper, or whichever creative tool you prefer.
What do I get with my copyright? You have rights in your work of art. Some of these rights may be stronger than others, naturally. You do have a copyright in the aforementioned stick figure drawing, but the scope of these rights are what is commonly referred to as a “thin” copyright; your copyright exists but the scope is thin and proving infringement would be a substantial task. As a copyright holder, you have the exclusive right to reproduce the copyrighted work, to prepare derivative works based on that copyrighted work, to distribute copies of the copyrighted work or to transfer ownership of the copyright, to perform the copyrighted work publicly (if a literary, musical, dramatic, choreographic, motion picture or other audiovisual work), to display the work publicly (for literary, musical, dramatic, pictorial, graphic or sculptural works), and for sound recordings – to perform the work publicly through means of a digital audio transmission.
What do I not get with my copyright? The default is “public domain.” But for your copyright interests, works of art are considered public domain material and free to use by all. Moreover, you cannot prevent others from the “Fair Use” of your copyrighted work. Fair Use allows for criticism, commentary, news reporting, teaching, scholarship, or research by means of using your otherwise exclusive rights in the copyrighted work. Fair Use is subjective and is governed by four factors on a sliding scale, so one cannot claim to be “teaching” or providing commentary through the public display of all of the Star Wars movies. George Lucas and Disney will absolutely sue those who show the movie but claim to be using the copyrighted motion pictures for teaching purposes. Fair Use is a subjective concept, however, and is a fact intensive investigation, but as a copyright owner, you need to be aware that your rights are not universal. You also cannot claim a copyright in anything that is purely functional nor can you claim exclusive rights in items that are considered “useful articles.”
When should I call my lawyer? If you have a copyrighted work that you think is worth registering with the Copyright Office, even though you already have legal rights from the moment of creation. Also, if you have a copyright registration and believe someone is infringing your exclusive rights, contacting your lawyer is a good first step. Infringement requires proof of access and substantial similarity in the infringing work, and a legal professional can help guide you through the analysis and the legal precedent.
As noted above, trademark law derives from a Congressional Act and is not directly enacted by the Constitution. Today, trademarks are governed at the federal level by the Lanham Act and, unlike patents and copyrights, can also be protected by individual state statutes. Nevertheless, trademarks can be just as valuable and enforceable as patents and copyrights.
According to federal law, trademarks are any “word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.” The concept of a “service mark” is similar and the term “trademark” often includes service marks colloquially.
What does this mean? If you have a name or slogan or a logo or a design that you use to identify your company or the source of goods and services provided by you or your company, you have a trademark. Customers rely on these trademarks as a means of distinguishing the quality of one provider’s goods and services from competing products and services. Trademarks exist to benefit the consuming public.
What does this not mean? You cannot register trademarks for names or slogans that are offensive (hello, Washington Redskins). You cannot register “generic” marks or words which are commonly associated with an entire class of goods, i.e. aspirin. Additionally, like copyrights, you cannot seek to protect as a trademark any functional features, though this is often a gray area in matters of trade dress when it comes to product packaging and design where there are uniquely distinctive shapes that may also serve functional purpose.
When do you have a trademark? Trademark rights exist the moment you use your trademark in commerce. Use essentially means to place the mark on the goods you are selling (or the packaging) or to display it for purposes of advertising to allow customers to associate your trademark with your particular goods or services. Trademark rights may exist at common law the moment this use begins, without the need for registration with a state government or through the USPTO. The Lanham Act, however, will recognize and enforce unregistered trademarks against unlawful uses or infringements. Having a state or federal registration provides certain presumptions of validity that encourages a trademark owner to seek registration. A trademark registration serves to provide extra notice to the public regarding the ownership of a mark and the source of goods and services.
What do I get with my trademark? Unlike patents and copyrights, while the trademark “owner” is the source of goods and services, the purpose of trademark law is to protect the public from deception. This is why trademark owners are required to diligently police their existing marks against unauthorized uses in commerce. As a trademark holder, the value of your trademark allows you to promote your products and reap the benefits of providing goods or services that customers willingly seek to purchase. You are also able to (and in fact are required to) enforce these trademark rights against any unauthorized uses by third-parties, and seek damages from their infringing acts.
What do I not get with my trademark? You cannot prevent others from saying or using your trademark when they compare their goods to yours. This is comparative fair use. You also cannot prevent others from using your trademark to describe qualities or features of your goods and services. This is descriptive fair use. You also cannot prevent someone selling a different class of goods or services from using a trademark that may be similar to yours – though this is a gray area because “confusingly similar” marks can bleed across industries depending on the fame of the mark and the distinctiveness of a particular name or logo. While you can trademark a color (yes, really) you cannot prevent anyone from using that color in any context and in any environment. Your trademark is generally limited to the class of goods and services you provide, subject to your trademark being famous and potentially “diluted” by others. This, however, is a separate topic and may be far more complicated than this primer can provide.
When should I call my lawyer? If you are starting a business. If you are selling goods or providing services to the public. If you have a design for a logo or a unique and catchy slogan that might be used to sell products to the consuming public. In any of these instances, you have trademark rights that you should seek to protect through the help of legal counsel. The trademark registration process is relatively straightforward but a lawyer can help you get as broad of rights as possible without running afoul of any hidden technicalities. Also, if anyone is using words or phrases or logos similar to yours – call your lawyer as you may need to enforce these or risk having your trademark rights deemed abandoned.
I hope this was a helpful overview of the differences between the three major types of intellectual property rights. There are other related categories of intellectual property, most notably trade secrets and publicity rights, but these are not derived from constitutional documents and are predominantly the jurisdiction of each state’s laws and regulations.
If nothing else, I hope this overview helps to minimize the instances where the terms trademark, copyright and patent are conflated. Each of these property rights is distinct and has a unique application in the law based on being derived from different policy-based reasons. Patents are protected because the government (and the economy) seek to encourage innovation and technological growth. Copyrights are protected to incentivize authors and artists to create new works of art as sources for public entertainment and inspiration. Trademarks are protected for the benefit of the consuming public and to avoid the false designations of origin of goods and services. While they all fall under the umbrella of “intellectual property” the legal rights for each category — and the enforcement of these rights – can be quite distinct.
 The Bill of Rights was not signed and enacted until December 15, 1791.
 U.S. Const. art. I, § 8, cl. 7.
 United States Trademark Act of 1881. See also http://ipmall.info/hosted_resources/lipa/trademarks/PreLanhamAct_084_Act_of_1881.htm
 State Street Bank and Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998).
 35 U.S.C. § 261.
 35 U.S.C. § 154(a)(2).
 17 U.S.C. § 102(a).
 Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903) (Holmes, J.) (“It would be a dangerous undertaking for persons trained only in the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits.”)
 17 U.S.C. §§ 411(a), 412.
 17 U.S.C. § 106.
 15 U.S.C. § 1127 (definitions).
 15 U.S.C. § 1125(a).
 35 U.S.C. § 171.