Intellectual property strategy

Intellectual property categories

Optimize your intellectual property strategy by using a combination of patents, trademarks, copyrights, and trade secrets.  

In theory, the different categories of IP (utility patents, provisional patents, design patents, copyrights, trademarks, and trade secrets) are distinct. However, in practice, these can somewhat overlap. Each is a type of IP protection tool. Maximize your intellectual property strategy by picking the right set of tools for the right situation.

Patents (utility patents) cover useful, original, and nonobvious ideas for gadgets, physical objects, compositions of matter (e.g., drugs), and the like. The USPTO carefully reviews these and requires that issued patents must be published. They can last for up to 20 years if you pay the maintenance fees.

Provisional patents are mostly a short-lived (1-year) first draft of a utility patent.

Patents (design patents) cover the ornamental appearance of a functional item. These also must be filed, reviewed, and ultimately disclosed to the public. These last for 15 years, maintenance fees not required.

Copyrights cover original written material, music, images, movies, and the like. These can last over a lifetime (e.g., the lifetime of the author plus 70 years) after initial publication. Registration not initially required, but eventually needed to enforce rights.

Trademarks cover the words, symbols, or packaging associated with certain classes of products and services in commerce.  Registration, disclosure to the public, and review are required. These have no lifetime limit, so long as the owner periodically sends in proof of continued use in commerce.

Trade Secrets cover undisclosed commercially useful information not generally known to the public or trade. These can include unpatentable items such as recipes, as well as un-copyrightable items such as lists. No lifetime limit, provided that the secret does not get exposed.

Sometimes it is possible to improve your intellectual property strategy by handling the IP under multiple categories. Examples include:

  • Using a non-publication request to keep the IP secret while pursuing a US patent
  • Converting a utility patent drawing to a later design patent
  • Protecting a user interface IP as a utility patent, design patent, and copyright
  • Recording a distinctive design as both a design patent and a trademark
  • Filing a distinctive image (or fragment of literature) as both a copyright and a trademark

There are some tricky aspects to the multiple category approach as well; these include:

  • Cases where international IP rules are different from US rules
  • Trying to use a provisional patent for a later design patent
  • Shifting copyright (non-functional) vs patent (functional) and design patent (ornamental appearance of functional item) distinctions
  • Competitors using your assertions for one IP category against another IP category

So “mind the gap,” but try to formulate an intellectual property strategy.

Contractor Copyrights

Contractor copyrights
Contractor

Want to pay a contractor to produce creative material for you, and then actually own the copyrights? Getting ownership of contractor copyrights is tricky.

Copyrighted material – such as text, images, music, or code, is probably essential for your creative and commercial efforts. None of us has the time or talent to do all of this ourselves. So you have naturally turned to experts to help provide this material.

Contractors are essential for many projects.

You could hire employees for this purpose.  However, like most projects, your project is probably a short-term project. In “the good old days,” this would not be a problem. Employees had no rights, so you could just hire and fire them at whim. These days, however, your employees have rights and benefits. Some of your employee rights, for example, can include unemployment insurance, social security, tax withholding, and the like. You may not want to go back to the Victorian era, but at the same time, you may not find it feasible to hire someone. 

To avoid this hassle, you can use contractors.  Contractors deliver results and don’t burden you with a lot of responsibility. You pay money, expect to obtain the benefit of the deal (the work and the IP rights), and then no more hassles or obligations! Unfortunately, the generally older IP laws have not caught up with the modern world. Thus your simple expectation breaks down when it comes to IP. You should be aware that contractor copyrights are particularly tricky.

For contractors, just because you paid for it doesn’t mean you automatically own the IP.

To somewhat oversimplify, if you want to pay someone and obtain ownership of copyrighted material, the following legal considerations can apply:

  • Under Federal law, full copyright ownership requires a “work for hire” agreement.
  • “Work for hire” agreements can imply (and in California, can define) that the worker is an employee.
  • Employees are legally entitled to various employee benefits.
  • Contractors are not legally entitled to employee benefits.
  • Absent an assignment; copyright ownership remains with the contractor.
  • Assignments for copyright ownership must be in writing.
  • Copyright assignments that are not “work for hire” can be terminated by the author or heirs after 35 years.

Getting legal ownership of the IP you paid for can be tricky

The inconsistency between the older IP laws and the newer contractor laws creates wacky legal problems.  You can try a more aged strategy, which is to put “work for hire” terms in your contract agreements. The idea is to acquire full copyright ownership this way automatically.  Unfortunately, such “work for hire” terms can be inconsistent or even incompatible with the modern definition of “contractor.” These conflicting rules open the door to potential legal headaches.

Alternatively, you can skip the “work for hire” clause. Instead, as part of the deal, you require the author-contractor to assign the copyright to you or your company. The assignment route is usually adequate, but not completely perfect. To do this, you will have to arrange for additional assignment paperwork. You should also realize that 35 years later, Federal copyright law allows an author-contractor to petition to terminate this assignment.

Thirty-five years is adequate for most purposes. But what if you are thinking on longer terms? Here, you might try to work around the 35-year copyright assignment termination issue. One option is to contract with a corporation that, in turn, “work for hire,” employs the author.

Blurred lines: copyright AFC tests

Copyright AFC tests
Blurred lines

The “Blurred lines” music copyright case went wrong because courts are not using modern abstraction-filtration-comparison (AFC) infringement tests.

Copyright covers creative expression but not ideas or information.  Many copyrighted works, however, are a mixture of creative expression and ideas/information.  And what about fair use? This mixture gives courts headaches, and as a result, copyright litigation can be unpredictable.

For software copyright infringement cases, courts tend to use an “abstraction-filtration-comparison” (AFC) test. Copyright AFC tests were first introduced in the 1992 “Computer Associates v. Altai” case.  For this test, the court (i.e. the judge with expert help) first “abstracts” (analyzes) the work and determines what parts are “expression” (copyright protected) and what parts are ideas (copyright ineligible).  Then the court removes (filters out) the ineligible idea portions. If there are questions about what remains, the court can give the remaining “expression” portions to a jury to decide.

This test puts a lot of responsibility on the court to get things right and is hard to perform in practice, but at least it makes some sort of logical sense.  Throw out the ineligible stuff, and just look at the rest.

Copyright AFC tests were inspired by the earlier “Scènes à Faire” (Scenes a Faire) concept often used for literary and movie copyrights. As a quick example, if you want to write a Western novel or film, then horses, guns, salons, bandits and the like are considered essential ideas, and these would be tossed out in a copyright case involving a Western theme.

So what went wrong in the recent “Blurred Lines” music copyright infringement case? The song admittedly tried to capture the party atmosphere of Marvin Gaye’s earlier “Got to Give it Up” song, but the lyrics and music were quite different. Both had party noises and “cowbell”, but these were different party noises and different cowbells. In fact, Marvin Gaye’s copyright was for sheet music that didn’t cover party noises and cowbells at all.

The problem is that outside of software, older tests, such as “objective substantial similarity” and “total concept and feel” are still being used.  These older tests blur the distinction between creative expression and ideas and rely on an unskilled jury to magically sort things out.

To somewhat simplify the “Blurred Lines” case, the jury listened to music that contained a mixture of creative expression (different lyrics and music) and unprotected ideas (generic party noises and cowbell). To make matters worse, the jury instructions did not even tell the jury to try to distinguish between creative expression and copyright ineligible ideas.

So, not surprisingly, the jurors found infringement; most likely because both songs contained party noises and cowbell.  Never mind that these were not covered by copyright and that as far as the actual copyrightable lyrics and music went, the two songs were quite different.

This case is presently on appeal. Various copyright experts have suggested that the way out of this mess is to expand the use of the copyright AFC test from computer software to other types of copyright cases as well. Unfortunately, the law works slowly. Until then, go easy on the cowbell at parties.

Intellectual property for cheerleaders: functional copyrights?

Copyrights for functional items?
Is the uniform decoration “functional”?

Functional copyrights? In Star Athletica v Varsity Brands, the Supreme Court ruled that copyrights can cover the industrial designs of clothing, 3D objects, and other useful (functional) things.

The boundaries between different areas of intellectual property, such as copyrights and patents, can be fuzzy. Copyrights, among other things, cover artistic images and 3D sculptures on various media or “articles”, but the artistic feature must be able to exist separately from any functional (useful) part of the underlying media. But there are blurred lines, and this is causing problems for software and manufactured goods as well.

Copyrights v design patents: Copyrights require only minimal originality, are cheap, and last for generations. But, if you want to claim an ornamental design for a functional (useful) item, this falls into design patent territory. Design patents have a higher threshold for originality, are more expensive, and only last for 15 years.

Some things, such as clothing, and other 3D designs that combine artistic/ornamental and useful/functional aspects, fall into multiple areas, but not always as one might predict. Clothing “knock-offs” exist because the overall pattern or cut of clothing is conclusively (legally) presumed to be functional, hence copyright exempt. So this goes into the design patent bin. However artistic fabric patterns can be copyrighted.

Which brings us to the cheerleaders, and the Supreme Court’s (SCOTUS) recently decided Star Athletica v. Varsity Brands case.  This teaches lessons that apply to other mixed artistic/functional things as well, such as 3D objects. So you folks with 3D printers, listen up!

Cheerleader uniforms have certain characteristic lines and colors, and Star Athletica copyrighted a number of these designs. Varsity Brands, possibly believing that fashion knockoffs are no big deal, copied them, got sued, and the case eventually made its way to SCOTUS.

Varsity had some interesting legal arguments – namely that the lines and colors were functional (no copyright) because they distinguished the uniform as a cheerleader uniform. However, SCOTUS didn’t buy it. They cited Mazer v Stein, an earlier 1954 SCOTUS case, where an artistic statute was ruled to have retained copyright protection even when used as a lamp base (made functional). Like this earlier case, SCOTUS ruled that if an otherwise copyrightable feature can be perceived as art separate from the useful article, then the feature can get copyright protection.

Unintended consequences?  So we can have an ornamental design for a functional item (design patent).  We can also have a useful item with an artistic feature (copyright); at least when the artistic feature can exist independently of the useful item. Confusing, and there may be some unforeseen economic issues. Although SCOTUS relied on the previous 1954 Mazar case, copyright laws have changed since 1954.  Copyright now automatically attaches to nearly everything and lasts nearly forever.

In any event, if you are planning on doing fashion knockoffs, be careful.  In fact, if you are any manufacturer planning on incorporating “an old art design” into a functional object, be careful.