|
COVER ARTICLE My client has this great idea.
Now, what am I supposed to do with it? It’s Tuesday morning. You are in your office dutifully minding the interests of all your clients, when you receive a call from a client for whom you have done business work over a period of years. Your client proudly informs you that he has developed a new design or a new invention (in his words a “great idea”) in connection with his business. He then asks you, “How can we protect this thing?” What is your response? Perhaps your client has developed a new technical improvement in his manufactured product. Perhaps he has invented an entirely new product, still replete with duct tape and loose wiring. Perhaps your client’s development is an artistic work such as new song, a new book, or a series of photographs. In any event, your client sees his new design, sees a fortune waiting to be made from the new design, and is looking for you to guide him to proper protection of his new ideas. But, what route of protection should you advise him to pursue? In view of this hypothetical, this article presents a brief overview of the various forms of intellectual property protection available under federal and state law, the subject matter that they are intended to cover, and some of the pros and cons of pursuing one form of intellectual property protection versus another. At the broadest level, one can identify three principal categories of intellectual property:
Patent Actually, there are three different types of patents that may be granted to inventors by the federal government. The first and most common type is the “utility” patent. A utility patent protects inventions that are “useful”, i.e., inventions that have utility.[3] The list of inventive subject matter that is deemed “useful” in the eyes of the Patent Act, and protectable via a utility patent, has expanded considerably over the past few decades. Utility patent protection was once principally concerned with more industrial inventions such as mechanical and electrical devices, manufactured articles, chemical formulations, and processes for making such products. Recently, however, utility patent protection has been extended to previously unprotectable areas of invention such as computer programs, living genetically altered organisms, and methods of doing business.[4] Although a utility patent cannot be enforced against an infringer until it has issued from the Patent Office (generally two or more years after the underlying patent application was filed), the term of the patent is measured from the filing date of the application and extends for 20 years from that filing date.[5] The second principal type of patent is a “design” patent. In contrast to a utility patent, which protects the utilitarian aspects of an invention, a design patent protects ornamental design features that have been applied to a product.[6] Take, for instance, a folding pocketknife. If your client were to invent a new folding and locking mechanism for a pocketknife, it could be protected by a utility patent. If, however, your client creates a new decorative embellishment for the knife’s handle, this ornamental design may protected via a design patent. In analyzing the protection available from a design patent, courts often speak in terms of functionality. That is, if a particular design feature or element is dictated primarily by functional concerns rather than aesthetic or ornamental concerns, then that feature will be excluded from design patent protection.[7] This prevents design patents from being used to protect utilitarian design features, which should be protected via utility patents instead. Unlike a utility patent, the term of a design patent is measured from the date of issuance of the patent. The term is 14 years from the date of issue.[8] The final type of patent is a “plant” patent. Plant patents are quite specialized. This patent specifically protects new and distinct forms of asexually reproducing plants.[9] Thus plant patents are, by and large, of interest only to those in agricultural field. With all three types of patents, one must look to the law of the Court of Appeals for the Federal Circuit for judicial guidance, rather than the law of the Sixth Circuit.[10] Appellate jurisdiction over patent cases was taken away from the regional circuit courts and vested in the then-newly created Federal Circuit by the 1981 Federal Courts Improvement Act. Moreover, all patent infringement actions enjoy an automatic ticket into the federal courts; 28 U.S.C. § 1338(a) not only provides federal subject matter jurisdiction, it provides that the federal courts shall have exclusive jurisdiction over patent infringement cases. If the patent holder prevails in his patent infringement action, he may recover monetary damages in amount no less than a “reasonable royalty.”[11] Beyond a reasonable royalty, in some instances, the patent holder may recover his entire lost profit from the sale of goods or services that was denied to him on account of the infringement.[12] In addition to monetary relief, a prevailing patent holder will generally also be entitled to injunction relief to prevent the infringer from continuing his illegal activities.[13] Trademark The owner of a valid trademark may prevent others from using a mark which is “confusingly similar” to the owner’s trademark. Whether or not the two marks are confusingly similar is determined using a multi-factor balancing test. In the Sixth Circuit, there are eight factors in all: (1) the strength of the senior mark, (2) the relatedness of the goods or services, (3) the similarity of the marks, (4) any evidence of actual confusion, (5) the marketing channels used, (6) the likely degree of purchaser care, (7) the intent of the defendant in selecting the mark, and (8) the likelihood of expansion of the product lines.[17] Generally speaking, however, the most important factors are the similarity of the marks and the similarity of the goods or services with which they are being used. A limited set of trademark rights, known as “common-law” trademark rights, arise merely from use of the trademark in commerce. However, the strongest rights, and the trademark rights most clients will ultimately want, require federal registration of the mark. Again trademark rights arise from use of a mark in commerce; federal registration of the mark is deemed to provide constructive use of the mark nationwide, regardless of the geographic extent of actual use.[18] Moreover, the existence of the federal registration constitutes prima facie evidence of the validity of the trademark.[19] To ultimately obtain a federal trademark registration, the mark must be used in interstate commerce.[20] However, the applicant does not have to have begun actual use in order to apply for federal registration. A client can now apply for a federal registration based merely upon a bona fide intent-to-use the trademark in interstate commerce.[21] The Federal Circuit hears appeal from the actions of the Patent and Trademark Office relating to trademark registration application.[22] Thus, when you apply for federal trademark registration, the success of the application will be determined in accordance with the law of the Federal Circuit. However, once a registration is obtained, any action in district court against an infringer will be governed by the law of the Sixth Circuit.[23] As with patent cases, federal courts have subject matter jurisdiction over trademark actions.[24] Actions for infringement of both registered[25] and unregistered[26] marks can be brought in federal court. However, this jurisdiction is not exclusive as with patent infringement lawsuits.[27] Thus, trademark actions may be brought in either the state or federal courts. Closely related to the trademarks is trade dress. Whereas trademark law focuses on the protection of distinctive works and logos used in connection with the marketing of goods and services, trade dress focuses on protecting distinctive forms of packaging and even distinctive designs for a product itself when the product packaging or product configuration serve as a source identifier for the product.[28] Back to that bottle of Coke. Whereas the name Coca-Cola might be protected as trademark, the familiar shape and design of Coca-Cola’s glass bottle may be protected as trade dress. As with trademarks, the owner of a valid trade dress may prevent others from using a trade dress which is “confusingly similar” to the owner’s trade dress.[29] Once again, whether or not the two are confusingly similar is determined using a multi-factor balancing test focusing in particular on the similarity of the trade dresses and the similarity of the goods on which they are being used. One important aspect of trademarks and trade dress is their potential longevity. Whereas all patents and copyrights will eventually expire, trademarks and trade dress can, in theory, last forever so long as the mark or dress continues to be used in commerce. Because a trademark or trade dress can potentially last forever, the question of functionality also arises with trademarks and trade dress. The issue is particularly important with trade dress. The aspects of a product or its packaging that are functional, i.e., utilitarian, are excluded from trade dress protection.[30] Otherwise, one might use trade dress protection to side-step the time limitations of the patent laws, and obtain indefinite exclusive rights in useful invention. Denying trade dress protection to functional aspects of a product generally prevents an overlap between trade dress protection and utility patent protection.[31] Nonetheless, the scope of trade dress protection can and often does overlap with the protection provided by an ornamental design patent.[32] Copyright The purely functional or utilitarian aspects of a new work are also excluded from copyright protection.[35] Here again, this is to prevent an overlap with utility patent protection. However, there can be some overlap with design patents and with trade dress protection. With respect to the protected expression, the copyright provides a specific bundle of exclusive rights. These include the exclusive right (1) to reproduce the copyrighted work in copies or phonorecords; (2) to prepare derivative works based upon the copyrighted work; (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; (4) in the case of literary, musical, dramatic and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and (6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.[36] How long, then, does a copyright last? Well, it depends. Under the current version of the Copyright Act, a new work created by an individual author is entitled to a copyright lasting from the point of creation of the work until 70 years after the death of the author.[37] If there are multiple authors, the copyright lasts until 70 years after the death of the last surviving author.[38] An important exception exists, however, if the work was “work for hire,” that is, if the actual author created the work as a part of his employment for another and with the intention that the employer would own the copyright in the work. In this case the copyright endures for a term of 95 years from the year of its first publication, or a term of 120 years from the year of its creation, whichever expires first.[39] There are also many other works that were originally copyrighted under the earlier Copyright Act of 1909. Copyright terms under the 1909 Act were originally substantially shorter than under the present Copyright Act; however, the terms of works originally copyrighted under the 1909 Act have generally, but not always, been extended under the 1978 Act.[40] Copyrights are registered with the Copyright Office of the Library of Congress.[41] A copyright does not have to be registered before exclusive rights exist. However, the copyright generally does need to be registered before an action can be brought against an infringer in court.[42] The standards for registration of a copyright are originally governed by the law of the Court of Appeals for the DC Circuit, which has jurisdiction over appeals from the Copyright Office. However, once a copyright is registered and an action is brought against an infringer, the law of the regional circuits is applied in the infringement suit. As with patents, the federal District Courts have exclusive subject matter jurisdiction over copyright lawsuits.[43] Which form is best? • • • Notes
• • • J. David Gonce is an associate with the firm of Luedeka, Neely & Graham PC in Knoxville. He received his law degree from the Duke University School of Law in 1999 and his undergraduate degree from the University of South Carolina in 1994. His practice is focused primarily in intellectual property law, particularly patent prosecution and patent litigation. Tennessee Bar Journal
|