By Breffni Baggot
S INTELLECTUAL PROPERTY IMPORTANT? It is essential in the Information Age.
"Knowledge is Power" is said to be a proverb, a timeless truth. But is knowledge power? It used to be. Knowledge is now easily available. It is no longer concentrated in the hands of few and no longer differentiates those with power from those without power. What will differentiate one information worker from the next in the Information Age is IDEAS. The same is true for companies and indeed countries.
Where does intellectual property come in? Intellectual property is the set of legal rights to an expressed idea. Without it, innocently or intentionally, others can legally copy what you have done. With it, you can reap the just rewards of your creativity.
The first step to getting a return on your creativity is knowing what intellectual property you have. For example, a company might be unaware that one of its employees has come up with a valuable invention a field unrelated to the core business. An audit of your technology can lead to licensing it. It is commmon to have intellectual property opportunities and yet not know of what is sitting right on your desk.
For example, you may want to protect your Internet domain name. An Internet domain name is what follows the @ sign in your e-mail address, or what typically follows the "www" in a Web address. Can you imagine the benefit of excluding others from using your internet domain name? This has never occurred to most people. Opportunities like this are the essence of intellectual property. Some areas of law never change because they do not need to change. Law exists to govern people's affairs and in many ways these do not change over time; for example, the definitions of larceny and burglary have generally remained constant. But where human affairs change the law must change to accomodate the changes. Thus, we see how the law of intellectual property develops remedies to address an ever changing number of new forms of old crimes, for example those crimes committed by hackers and software pirates.
Intellectual property is a dynamic area which endeavours to keep pace with the ever increasing speed with which technology is changing our world. Some were not surprised at the concept of registering domain names because they saw the Internet coming and knew that intellectual property would somehow develop a way to accomodate the changes the Internet would bring. Registration of domain names is but one example of a change in technology leading to an opportunity through intellectual property.
The Information Age will bring still more changes and for those who know how to use intellectual property, these changes will mean opportunities.
How do intellectual property rights relate to the new global economy? In other words, how far do intellectual property rights extend? All legal rights are ultimately enforced by the police power of the jurisdiction for which they are granted. Therefore, the smart thing to do is to apply for intellectual property rights wherever you do business. Sending products abroad without patent and trademark protection is like leaving the country without your passport.
WHAT IS INTELLECTURAL PROPERTY?
INTELLECTUAL PROPERTY is differentiated from real property such as land in that intellectual property is a product of the intellect. For example, the legal rights to an invention spring from the creativity of the inventor. Intellectual property has many forms. Patents are legal documents granting rights to invention. Copyrights protect various forms of authorship such as literary works, artistic works, musical works. Trademarks identify products and services so that consumers can be sure that they are buying from a particular provider.
A PATENT GRANTS the owner the right to exclude others from making, using or selling the patented invention. This exclusive right is granted for 20 years for most patents, and a slightly shorter term for designs and plants. The 20 year term begins when the patent application is filed with the Patent Office in your country.
What can you patent? Patents can be applied for any invention which is new, useful and nonobvious. Prior art is defined as the body of public knowledge which predates the date of invention. It includes prior patents, publications, common knowledge in a field, etc. An invention is novel if it is not identically shown in the prior art. An invention is not obvious if it would not be obvious for a person of ordinary skill in the relevant technical field to arrive at that invention, given the prior art. Any invention which accomplishes some function which is even slightly useful and not inimicable to society is useful enough to warrant patent protection. An invention to cause AIDS would probably be denied patent protection for lack of usefullness. Few legal standards are mathematically exact yet in all of history no greater solution has been arrived at for discerning what is just than standards such as those described. Determining obviousness is difficult, but this does not mean that one cannot determine obviousness. It is much like determining negligence; for example if you err at work and a lawsuit results a jury may consider whether the reasonable prudent person in your field would have made the same mistake. Patentability is determined similarly but you must have caused a useful rather than harmful result. Determining obviousness is like asking whether the reasonable prudent person in the relevant technical field would have arrived at the same invention; in other words was your invention obvious at the time you invented.
How do I determine whether I have a good invention? Good is what is patentable and allows you to gain or retain a competitive advantage or financial return. To find if an invention is patentable, at a minimum patent search is required. Whether an invention will make money is so complex that it is best treated on a case by case basis.
What is a patent good for? The owner of a patent has the right to exclude all others from making, using and selling the invention. He has a market niche all to himself and may license the right to make, use and sell the invention to others in exchange for a royalty. Or, he may choose to make it himself and exclude others from the marketplace. Or, he may choose to sell the patent to another. (For example, we all use alternating current every day rather than direct current. The invention of the A.C. motor led to the replacement of direct current machines - which Thomas Edison had favored. The inventor of the AC machine chose not to make AC machines but instead sold the patent rights to George Westinghouse.)
What is the difference between a patent and an invention? A patent creates legal rights that did not exist before the Federal Government granted the patent. An invention creates something that did not exist until it was invented. But some neglect to apply for a patent and are left with the invention but no patent rights to the invention. Thus, the invention and the patent rights to the invention are different. For example, the title to your car is not your car. A thief can take your car but that does not mean he has a legal right to the car, which is why you can retrieve your car.
How far do my rights extend? Just as your right to vote cannot be enforced outside the country of which you are a citizen, patent rights are enforcable only in the jurisdiction for which you have received a patent. Similarly, a patent granted in country A has no effect upon your competitor's activities in country B unless you have obtained a patent in country B also.
Can I patent anything? Anything manmade under the sun is potentially patentable, according to the US Supreme Court. But different intellectual properties are associated with different intellectual expressions. A song cannot be patented, but it can be copyrighted. A patent may be obtained for any machine, process, article of manufacture or chemical composition. Patents for designs, and plants are also allowed. Even life forms can be patented such as the oil-degrading microorganisms invented by A.M. Chakrabarty. This is an example of a useful invention - especially in cleaning up oil spills.
How much does it cost to get a patent? Expect to spend a few thousand. This is a pleasant surprise. A patent prevents others from legally making, using, and selling your invention. Given the money and energy spent just trying to stay competitive in the business world today, one would expect that something which makes it illegal for others to compete with you would cost more.
COPYRIGHT PROTECTS original works of authorship fixed in any tanglible medium of expression. Copyright arises automatically when a work is created and fixed in that medium of expresssion. Notice is not required for copyright although it is required for bringing an infringement suit. The typical copyright notice is the circle "C", date and name of author. Notice and registration are not required for a copyright to exist, but without these the author loses the right to certain damages should his/her work be copied. Among these are statutory damages equal to a maximum of $100,000 per copy and attorney's fees. Proof of copyright infringement requires proving: a. the existence of a copyright owned by the plaintiff, b. access by the defendant to the copyrighted material, and c. a substantial similarity between the copyrighted material and the defendant's material.
Copyright protects literary, musical, dramatic and artistic works. Copyright applies to the expression of an idea, but not an idea itself. If the law protected merely ideas, one might sue alleging as proof the ideas in the plaintiff's head. You can imagine someone offering into evidence the thoughts in their head. Not too trustworthy. Further, the purpose of copyright law, as given by the Constitution is to advance the progress of science and the useful arts. Only expressed ideas can efficiently lead to the progress of science and the useful arts.
What is copyright good for? It grants 5 rights exclusively to the author or owner of the copyright: the right to reproduce the coprighted work, the right to prepare works derived from the copyrighted work, the right to distribute copies of the copyrighted work by sale or other transfer of ownership or rental, the right to perform the copyrighted work, the right to display the copyrighted work publicly.
But some uses of copyrighted work do not constitute infringement and are called "fair uses." These uses include criticism, comment, news reporting, teaching, making copies for classroom use, scholarship, research. Several factors are included in determining whether a use qualifies for the fair use exception: (1) the purpose and character of the use, including whether the use is commercial, (2) the nature of the copyrighted work, (3) the amount of the copyrighted work used, (4) the effect of the use on the potential market or value of the copyrighted work.
The "purpose and character" factor is a measure of the commercial nature of the use. The use may be not commercial at all - for example, use by a non-profit organization. Or it may be clearly and totally commercial as where A copies B's software and sells it, giving nothing back to A. Then too the use may lie somewhere in between. For example, an engineer copies another's books or articles because they relate to the engineer's research. The engineer has no plans to sell these copied items, but he is making the copies to advance the commercial position of his employer.
The "nature of the copyrighted work" relates to the level of originality of the work. Fair use weighs the interests of the public in having easy access to information against the needs of the author in getting paid for his effort. If a work is very original a court is less likely to find that copying it is fair to the author and the public. On the other hand, a work may be so devoid of originality that not only does it fail to qualify for the fair use exception, but it does not even deserve copyright protection. For example, the Supreme Court found so little originality in putting together a phone book that Illinois Bell was not deserving of copyright for the phone book.
The "amount and substantiality taken" by the copier will be a fair use if it is not a significant fraction of the whole. Determining what is fair is not subject to mathematical certainty, however, and some parts of a work are more significant than others. Imagine if one copied only a single sentence from each of an author's works and fixed these on post cards and sold them. These sentences might be "To be or not to be..." and "Art thou more lovely than a summer's day?" and so on. Though the copier had taken only a single sentence from each work and only a fraction of all the sentences ever written by the author, these selected sentences are pivotal within each of theauthor's works. Had this occurred in his lifetime, Shakespeare would not likely have seen much fairness in the copying and selling of these lines.
The "effect of the use upon the potential market or value of the copyrighted work" is a factor in a fair use determination. A use that does not materially impair the marketability of a copyrighted work is a fair use.
The simplest solution to many copyright problems is to seek a license for use from the copyright owner or the Copyright Clearance Center which is a central licensing center for millions of authors. You can contact them at Copyright Clearance Center, (508) 745-7837 in Salem, Massachussetts, USA.
WHERE DOES trademark authority originate? There are three sources of trademark law: state law, federal law, and foreign law.
What is a trademark? A trademark is a word or symbol used to identify the source of a good so it can be distinguished from another's goods. The mark "Levi" allows consumers to distinguish a given set of jeans from jeans with the mark "Guess". In addition, if the design of a product or its packaging is nonfunctional and distinctive, then that design is registrable as a trademark. It is even possible for a color to be a trademark, according to a recent US Supreme Court case. A service mark is a word or symbol which distinguishes the services of one from the services of another. A collective mark is a service mark or trademark used by a collection of individuals. The Florida Citrus Growers might be a collective mark. A certification mark is a mark which shows that the work was done according to a given certification.
A trade name is not a trademark. Tradenames are protected by state law but not federal law. A tradename, also called a commercial name, is any name used by a person to identify his business or his vocation. However, wording which constitutes a tradename may be used in such a manner that it also functions as a trademark registrable with the trademark in the country where one would like protection for the mark. If the product or service is available in more than one country, one will want legal protection in each country.
What is a trademark for? Trademarks minimize confusion over the source of goods. This is essential to consumers who rely on the quality of goods to be as they are represented. For example, if a can says "Coca-Cola" one can be sure that the product will taste like a Coke and not a Pepsi, RC, or anything else. Trademarks also help manufacturers since they can be confident that if they work hard to produce a quality product, their reputation will not be diluted by copycats passing off fakes as genuines. At a minimum you do not want consumers to be confused by trademark(or tradedress) and buy your competitor's goods or services instead of yours. Once, a software company had a competitor that chose a name that sounded like the name of this software company. When customers dialed information, these two names sounded the same to the operators and operators would sometimes give customers the number for the competitor. The customer usually didn't find out that he had contacted the wrong vendor until he had received theproduct. By that time, the customer didn't care because both businesses offered similar products and services. Meanwhile, the software company was working hard at improving their products and services to make up for sagging sales - unaware that not only were they losing customers but spending money on the wrong solution to the problem.
INTERNET DOMAIN NAMES
AN INTERNET DOMAIN name is what follows the @ sign in your e-mail address, or what typically follows the "www" in a Web address. These usually contain the name of a business or its initials. One example would be "MTV."
Formerly, domain names were registered, first come first serve, by Network Solutions, known as InterNic, a private business contracting with the National Science Foundation. But now, InterNic will register domain names first-come-first-serve only if the applicant warrants that A. the applicant's statements are true and the applicant has a right to use the name, B. the applicant has a bonafide intention to use the domain name regularly, C. the use does not infringe any third party's trademark, service mark, trade name or other intellectual property right, D. the applicant is not seeking the domain name for an unlawful use, and E. the applicant agrees to resolve disputes through arbitration.
The applicant must have a functional domain name service from a registered Internet provider. An applicant must pay InterNic $100 to register a domain name for two years and $50/year afterwards. Domain names not used for 90 days may be surrendered to InterNic for use by another.
How do domain names relate to trademarks, service marks, etc.? If an owner of a domain name is challenged by the owner of a trademark, the domain name applicant can continue to use the domain name if a. the applicant's date of first use of the domain name predates the trademark owner's first use of the trademark and/or effective date of registration or b. the applicant provides InterNic with a certified copy of his own trademark registration identical to the domain name showing that he is the actual owner of both the domain name and trademark. Still, the domain name applicant must agree to indemnify InterNic and if necessary post a bond in the amount of any damages sought by a third party. If the domain name applicant cannot abide by these requirements he/she has 90 days to pick another name. If there is a dispute as to a domain name, InterNic will allow the first domain name user to continue the use for a time so that an alternate name can be found. Then, InterNic places the domain names on hold so that no one, including the disputing parties, may use that domain name. Finally, registration of a domain name puts others on notice that you claim the right to a domain name. Considerations of domain name registration should always be considered in parallel with registration of trademarks, service marks, etc.
There are two more things which are useful to remember about trademarks and Internet Domain Names. First, a trademark is a "democratic" intellectual property. If the public decides that escalator applies to any moving staircase then if you had owned "escalator" as your trademark to distinguish your moving staircase from your competitor's this trademark is now gone because the public identifies both your moving staircase and your competitor's as an "escalator." Second, InterNic is not the Federal Government. InterNic does not grant or deny any legal rights in the way that the Federal Government does. It is therefore wise to obtain one's rights from the party with the power, here the Federal Government. This is why trademark registration should always be considered in parallel with domain name registration. Finally, many point to the InterNic Policy as an authority. It certainly is one authority. One company's policy is not, however, law and does not carry the weight of, for example, an Act of Congress.
Web Law Review, Spring 1997
Text and Photo ©
1997, Breffni Baggot
Web Package © 1997, EagleLink