Those who Live by the Sword . . .

Frustrated over Republicans' use of the filibuster to block President Obama's nominees to the federal courts whom they deemed too extreme, Senator Harry Reid led 51 Democrat senators to an unprecedented change of the rules this past week that effectively prevents Republicans from using the power of the filibuster to effectively block presidential nominees to any federal court other than the U.S. Supreme Court. Not content to simply do away with the requirement of a super-majority of 60 votes previously required to suspend the rules of the Senate, the majority party exercised the "nuclear option" to take away the Senate minority's right to effectively block Senate action by refusing to yield the floor or yielding only to like-minded Senators.

If the tortured roll out of Obama care has taught us anything, one would think it is that passing legislation and then reading it is a monumentally bad idea. The rules of the House of Representatives strictly limit the time allotted to members who take the floor and the House does almost all of its work in Committees, where chairpersons from the majority party can easily quash legislation they oppose. That is why fatally flawed, unwise, unread legislation like the Affordable Care Act can pass in the House as long as the majority power votes as a single block--a fact that the current majority party in the House will most likely live to regret in the next election cycle as the American public learn about the misrepresentations, broken promises and outright lies that they were fed about lower healthcare costs for most Americans, keeping their doctors, and keeping their current insurance plans if they were satisfied with them.  With this parliamentary tactic, the Senate now becomes much more like the House and the minority party loses one of the few rights it has always enjoyed--to speak at length in opposition of what any Senator believes to be a bad idea.

Senator Reid spoke eloquently and forcefully against taking away the right of Senators to filibuster presidential nominees when Republicans last held the Senate and tried to do precisely what Reid has now done. Hypocrisy aside, this is simply a bad idea. No doubt Senator Reid will once again argue for re-implementing the filibuster when the big, bad Republicans regain the Senate in the future if he is not forced to retire by irate voters in the interim.

Meantime, partisan politics will continue with the lines further hardened by this newest act in the ongoing tragicomedy that is Congress making it even harder for any meaningful compromise to be reached. Moreover, presidents will be able to pick with impunity judges who serve for life from the outer reaches of left field and right field at whim--cherry picking the newest crop of jurists from the outer reaches of the Twilight Zone, if their hearts so desire, helping to ensure a high level of volatility in federal law that can only be welcomed by anarchists.

Anyone who believes this is a good thing would do well to view Mr. Smith Goes to Washington. Indeed, it should be required viewing for all of our elected officials--unless, of course, they are afraid of facing the real inconvenient truth that we are sliding ever closer to banana republic status, minus the drama of real fisticuffs in our hallowed legislative halls for the time being.

Intellectual Property Law: A Practical Guide to Copyrights, Patents, Trademarks and Trade Secrets [Excerpt: Chapter 4 - Copyright Ownership, Creation and Transfer]

Chapter 4: Copyright Ownership, Creation and

Transfer

Copyright Ownership and Transfer

            A copyright  is a personal property right that vests in the author or authors of a work. In situations when a work is made for hire (e.g., when an author is contracted by a publisher to write a book in exchange for royalties and/or other payment), the copyright owner is the employer who commissions the work who owns all the rights provided in the copyright to the work absent a written agreement to the contrary.¹⁶  In work for hire  arrangements, the author may be credited with authorship of the work, but it is the employer who commissioned the work who owns the copyright and has the right to dispose of the work in any way it sees fit absent an agreement to the contrary with the author.¹⁷ The owner of a copyright may dispose of it the same as any other type of personal property. Namely, she may sell it, license it, or give it away during her life or after death by a provision in a valid will.

The Difference Between Ownership of a Copyright

and Ownership of Physical Objects¹⁸

            When someone owns a copyright, she or he owns the right to the expression of an idea that has been put in a tangible form. The expression of that idea and the copyright are two distinct rights and transferring one does not automatically transfer the other. For example, if you purchased this book, you own it and have the right to give it away, sell it to someone else or even destroy it. By purchasing a copy of this book, you did not purchase its copyright however. Thus, you may not copy the book to give away to someone else or post an electronic copy of it online; such use would constitute copyright infringement and could subject you to both civil and criminal penalties. The book is personal property, but the intellectual property—the copyright—is retained by the copyright owner. The same, of course, is true of movies, audio books and music distributed in traditional media such as compact disks and DVDs, or downloaded electronically to be played on a computer or electronic device. You own a copy of the movie or music that you purchase, but can only use it in ways that do not infringe on the copyright owner’s property rights. (E.g., you can give away the original DVD containing the latest new release after you view it, but you cannot make a copy of it to sell or give away to a friend.) If you belong to a movie rental service that allow you to download movies online, you may view the movie in accordance with your rental agreement either once or as many times as the agreement allows. But you may not copy the movie to your hard disk or burn it to a DVD or, for that matter, use screen capture software to save the movie or a video recorder to record if off your computer screen. Of course, you also may not hook up your computer to a video projection system and project the movie outdoors for your neighbors to enjoy. (Projecting the movie indoors for the benefit of non-paying guests, however, would be fine as long as the viewing is not open to the public.)

Duration of Copyright  

            Copyright in works created on or after January 1, 1978 last for the life of the author plus an additional 70 years after the author’s death.¹⁹For works prepared by two or more authors, the copyright lasts for the life of the longest surviving author and for 70 years after the death of the longest surviving author.²⁰ Copyrights in works published anonymously  or under a pseudonym will last for 95 years from the date of their first publication or 120 years from the date of creation, whichever expires first.²¹ But if such works are registered prior to the expiration of this time period in the name or names of their true authors, then the copyright will extent to the usual life of the longest-lived author and 70 years after his or her death.²²

            In the case of works for hire , where an author is contracted to create material as an employee that is to be copyrighted by the employer (e.g., a publisher of college textbooks who owns the copyright to work created by its authors under the terms of the typical publication agreement), the copyright protection runs for 95 years from the date of first publication or 120 years from the date of creation, whichever expires first.²³

            Copyrights that became effective prior to January 1, 1978 generally lasted for 28 years from the date of creation, with an additional extension of 67 years available to authors, their heirs and to owners of copyrights that were commissioned as works for hire.²⁴

The Process of Securing a Copyright

            Copyright protection  attaches automatically to any work of authorship as soon as it is created and saved in a permanent form. It is not necessary to formally register the work with the U.S. Copyright Office for copyright protection to attach. However, and most importantly, copyright registration  is a prerequisite to bringing suit for copyright infringement. So that while copyright protection may  attach automatically to a work of authorship fixed in tangible form, one may not begin a lawsuit to recover or enjoin copyright infringement without registration.

            The good news for authors, musicians, choreographers, performance artists, painters sculptors, architects, business people and all others who want to protect their works of authorship against infringement is that the process for registering one’s copyright is relatively simple and can be accomplished at a very modest cost.

            Copyrighted material  can be registered in the U.S. Copyright Office either by filing the required forms and payment through the mail or electronically. Of the two, the online method is less expensive and generally results in faster processing times.²⁵ As of this writing, the filing fee  for a registering  a basic claim to a single work is $35 if electronic filing is used and $50-65 if paper forms are filed through the mail.²⁶ The U.S. Copyright Office estimates that 90 percent of electronic filers  will receive a copyright certificate within six months of filing a complete submission, while one-third will receive the certificate within ten weeks of filing.²⁷ Filings through the mail take a bit longer with 90 percent of certificates received within eight months of submission and one-third of filers receiving certificates within five months of filing.²⁸ (You will find samples of the current forms in Appendix A.)

            Copyright registration  can generally be accomplished at any time when copyright protection is in force for both published and unpublished works. Whether registration is done electronically or by regular mail, a copy of the unpublished work  or phonorecord must accompany the complete application along with the required fee.²⁹ If published work is involved, then two copies of the best edition of the published work or phonorecord must accompany the application.³⁰ If the copyright relates to an author’s contribution to a published collected work (e.g., a chapter in a book or short story in a collection of short stories), a single copy of the published work or phonorecord must accompany the application.³¹

---

¹⁶ 17 U.S.C. §201(b) (2006).

¹⁷ This is the usual arrangement in the writing of college textbooks, for example. But a work for hire  can result in work created by an employee in his role as employee, such as reports, artwork, web page designs, and other works of authorship produced by the employee in the normal course of employment that qualify for copyright protection. Absent an agreement to the contrary, including terms in an employment contract or in a collective bargaining agreement covering employees in a union environment, works of authorship produced on the job as part of an employee’s work responsibilities generally belong to the employer.

¹⁸ See 17 U.S.C. §202 (2006).

¹⁹ 17 U.S.C. §302(a) (2006).

²⁰ 17 U.S.C. §302(b) (2006).

²¹ 17 U.S.C. §302(c) (2006).

²² Id.

²³ Id.

²⁴ 17 U.S.C. §304(a)(1)(A)-(C) (2006).

²⁵ The USCO provides tutorial assistance for using the electronic filing option at http://www.copyright.gov/register/index.html (last visited September 2, 2009).

²⁶ Information on all current filing fees and services can be found at http://www.copyright.gov/docs/fees.html. (last visited September 2, 2009). Information on current fees can also be obtained by telephone from the Copyright Public Information Office at (202) 707-3000, 8:30 a.m. to 5:00 p.m. eastern time, Monday through Friday, except federal holidays, and by writing the Library of Congress, Copyright Office, 101 Independence Avenue, S.E., Washington, D.C. 20559-6000.

²⁷ http://www.copyright.gov/register/index.html (last visited September 6, 2009)

²⁸ Id.

²⁹ 17 U.S.C. §408(b)(1) (2006).

³⁰ 17 U.S.C. §408(b)(2) (2006).

³¹ 17 U.S.C. §408(b)(3) (2006).

Intellectual Property Law: A Practical Guide to Copyrights, Patents, Trademarks and Trade Secrets [Excerpt -- Chapter 2]

Intellectual Property Law:

A Practical Guide to Copyrights, Patents,

Trademarks and Trade Secrets

Victor D. López, J.D., Esq.

Associate Professor of Legal Studies

Hofstra University

Frank G. Zarb School of Business

©2011 by Victor D. López

No portion of this copyrighted book may be copied, posted, transmitted or otherwise used in any form without the express written consent of the author.

For Kenneth J. Ansley

and

Emilio, Nieves, Susana, Osvaldo and Oscar  Gordedo (Rubén Gordé),

with much love and gratitude.

About the Author

            Victor D. López is currently an Associate Professor of Legal Studies at Hofstra University’s Frank G. Zarb School of Business. He holds a Juris Doctor degree from St. John’s University School of Law and is a member of the New York State bar. His professional affiliations include membership in the New York State Bar Association, the Academy of Legal Studies in Business (ALSB), and the North East Academy of Legal Studies in Business (NEALSB). He also serves as a reviewer for several peer-reviewed journals and is currently serving as President of the North East Academy of Legal Studies in Business (2011-2012). He has also served the organization as vice-president (2009-2010) and as program chair of the 2011 NEALSB Annual Conference.

In addition to publishing revised and expanded editions of two college textbooks in the past two years through his new publisher, Textbook Media Publishing (see http://www.textbookmedia.com/Products/BookList.aspx), he has presented articles at academic conferences and published scholarly articles over the past five years in a range of subjects that include immigration law, bankruptcy law, unauthorized practice of law, state and federal efforts to regulate the high cost of college textbooks, and leadership ethics. Since 1990, he served as a Professor of Business for 12 years at SUNY Delhi and more recently as the dean of the business division at Broome Community College for four years immediately prior to joining the Hofstra University faculty. He has served as a professor and dean at other academic institutions since 1987.

Other books by Victor D. López

••    Business Law: An Introduction 2e (Textbook Media 2011)

•    Business Law and the Legal Environment of Business 2e (Textbook Media 2010)

•    Free and Low Cost Software for the PC (McFarland & Company 2000)

•    The Legal Environment of Business 1/e (Prentice Hall 1997)

•    Case and Resource Materials for the Legal Environment of Business (Prentice Hall 1997)

•    Business Law: An Introduction 1/e (Irwin / McGraw Hill)

•    Free and User-Supported Software for the IBM PC: A Resource Guide for Libraries and Individuals (McFarland & Company 1990) (Co-authored with Kenneth J. Ansley)

A Note to My Readers

           This book is intended as both a primer on intellectual property law and as a general reference for authors, artists, musicians, librarians, entrepreneurs and others interested in learning about intellectual property law and the processes for obtaining copyrights, trademarks and patents in the U.S. and through international agreements. The main text provides a brief orientation on the relevant law and on the process and cost of applying for patents and trademarks through the U.S. Patent and Trademark Office and copyrights through the U.S. Copyright Office. In order to make this book as useful as possible as a one-stop reference resource, I have collected and included selective statutory materials, sample forms, and other useful resources in appendices to provide greater depth and context for the material presented in the main text. All of the information in the appendices is available online, but some of it can be difficult to find even if you know what to look for and where to look.

           As you use this book, keep in mind that it can only offer general reference materials and information. While this book will provide you with timely, useful information and show you where you can find additional resources available free of charge from both the federal government and every state, it does not offer legal advice. Only an attorney can provide you with legal advice tailored to your specific needs and neither this book nor any of the self-help advice offered by various national services that assist consumers with document preparation, including the creation and filing of patent, trademark and copyright applications, is a substitute for the advice of an experienced lawyer.

Acknowledgments

            I am poor in all things save in the quality of my family and friends. The individuals to whom I have dedicated this and my previous seven books have had an enormous influence in my life, as have others as yet unacknowledged. If able, I hope to correct that in the future. In case that opportunity is not open to me, I would at least like to express my gratitude for the privilege of the transformative nature of their friendship that time, distance and life can never change: Maria Luisa Seoane (Marisita), José Naveira (Tio Pepe), Maria Olga Naveira Calviño (Olguita), Francisco Naveira (Tio Paco), Claude and Cathy Morell, and Bill Raynor.

            I would also like to acknowledge the support of Hofstra University’s Frank G. Zarb School of Business of my research, publication and professional development efforts, including the summer research grants that facilitated the research, writing and publication of various scholarly articles over the past three years.

Table of Contents

Chapter 1: A Brief Introduction to U.S. Law

The Common Law and Civil Law Traditions

The Civil Law Tradition

The Common Law Tradition

The Complexity of U.S. Law

Use Available Resources Wisely

Chapter 2: General Introduction to Copyright Law

Introduction

Exclusive Rights in Copyrighted Works

Chapter 3: Limitations on the Exclusive Rights of Copyright Owners

Fair Use Limitations of Exclusive Rights

Reproduction by Libraries and Archives

Chapter 4: Copyright Ownership, Creation and Transfer

Copyright Ownership and Transfer

The Difference Between Ownership of a Copyright and Ownership of Physical Objects

Duration of Copyright

The Process of Securing a Copyright

Chapter 5: Copyright Registration

General Rules for Copyright Registration

Application for Copyright Registration

Chapter 6: Remedies for Infringement and Criminal and Civil Sanctions

Civil Remedies for Infringement

Criminal Penalties for Infringement

Chapter 7: General Introduction to Patent Law

Patent Application

Patent Specifications

Drawings

Models or Specimens

Oath of Applicant

Filing the Patent Application Issue of Patent

Chapter 8: Some Practical Considerations Before Applying for a Patent

Choosing a Lawyer

Useful Resources Available to Inventors from the USPTO

Patent Process

Libraries

Payment of Fees

Chapter 9: International Protection of US. Patents

Methods of Applying for a Patent Outside of the United States

Patent Cooperation Treaty (PCT)

Patent Prosecution Highway (PPH)

Chapter 10: Trademarks and Service Marks

Common Law Trademark Protection

Infringement and Damages

Chapter 11: Registration of Trademarks and Service Marks

Submitting the Application

Specific Requirements for the Registration Application

Amendment of a Submitted Application

Duration and Maintenance of a Trademark Registration

General Registration Procedure under the Madrid System

Procedure for Registration of a Mark under the Madrid System

State Trademark Laws

Chapter 12: Trade Secrets

Trade Secret Protection

Uniform Trade Secrets Act (UTSA)

Definition of Trade Secret under the UTSA

Remedies under the UTSA

Preservation of Secrecy

Statute of Limitations

Economic Espionage Act of 1996 (EEA)

Protecting a Company’s Intellectual Property through Contract Law

Nondisclosure Agreements

Agreements not to Compete

Appendix A: Copyright Registration Forms

Appendix B: Selected Sections of the Copyright Act of 1978 as Amended

(Title 17 of the United States Code)

§ 502. Remedies for infringement: Injunctions

§ 503. Remedies for infringement: Impounding and disposition of infringing articles

§ 504. Remedies for infringement: Damages and profits

§ 505. Remedies for infringement: Costs and attorney's fees

§ 506. Criminal offenses

§ 507. Limitations on actions

§ 509. Seizure and forfeiture

Appendix C: Sample Patent

Appendix D: Selected Sections from Title 35 and Title 37 of the United States Code

United States Code Title 35 – Patents

United States Code Title 37 – Code of Federal Regulations Patents, Trademarks, and Copyrights

Appendix E: Notes on Becoming a PTDL

Appendix F: English Language PCT Application Form

Appendix G: USPTO Patent Prosecution Highway (PPH)

Appendix H: Selected Sections of the Copyright Act of 1946 (Lanham Act), as Amended

Appendix I: 37 C.F.R. Part 2-Rules of Practice in Trademark Cases (Selected Sections)

Appendix J: Sample Form MM3

 [  ***** SAMPLE CHAPTER EXCERPT ***** ]

Chapter 2: General Introduction to Copyright Law

Introduction

            The U.S. Constitution  gives Congress 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.”² Congress exercised this right in passing the Copyright Act of 1790  which was signed into law by President George Washington on May 31, 1790. The Act was brief; it fit on a half page of a newspaper.³ It provided citizens of the United States copyright protection for the maps, charts, and books they authored for a period of 14 years and allowed copyright protection to be extended for an additional 14-year period. The Copyright Act has been amended numerous times in the intervening years and grown in both complexity and size. The current version of the Act⁴ as of this writing is 266 pages not counting 12 appendices.

            Although the law has grown in complexity since the first Copyright Act, the core concepts relating to copyright are still relatively simple to understand. In this chapter, we will examine the essential elements of the law and the specific types of intellectual property it is intended to protect.

Subject Matter of Copyright

            The subject matter  covered by the law of copyright is rather broad and includes “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”⁵ Works of authorship include the following categories: ⁶

         - literary works;

         - musical works , including any accompanying words;

         - dramatic works , including any accompanying music;

         - pantomimes  and choreographic works;

         - pictorial, graphic, and sculptural works;

         - motion pictures  and other audiovisual works;

         - sound recordings; and

         - architectural works

         Copyright protection  attaches to original works of authorship fixed in a permanent medium. Note that an original work of authorship is not protected as soon as it is created; rather protection attaches when it is fixed onto a permanent medium so that it can be reproduced and perceived by others at a later time. It is not the act of creation but rather the act of saving or archiving one’s creation in a tangible medium that grants copyright protection to the creator. For example, if a poet constructs a new poem and speaks it aloud, no copyright attaches to this new creation. Copyright attaches only when the work is fixed in an existing or yet to be invented “tangible medium of expression” that allows it to be reproduced and perceived by others later. Writing the poem on paper with a pen or pencil will suffice, as would recording a reading of the poem on tape or in digital form saved as an audio or video file on a computer, compact disk, DVD or some future medium of storage not yet in existence. Likewise, a new dance that is created by a choreographer is not copyrighted until it is “saved” in some form such as by being videotaped or by the choreographer writing down the steps in the dance on paper or some other permanent form through which the dance steps could later be communicated by others. Thus, a photographer who snaps a photograph automatically obtains a copyright to it when the image is captured on film or saved in digital form to the camera’s internal memory, or in an external SD card or other removable storage. And a writer’s words are copyrighted as soon as they are transferred to paper by a pen or other writing implement, or saved onto a computer’s hard disk or removable storage (e.g., burned onto a CD or DVD or saved onto a USB thumb drive or other removable storage media).

Exclusive Rights in Copyrighted Works

         The owner of a copyright has the exclusive right  to do (and to authorize others to do) all of the following with regard to the work protected by the copyright:

(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 copy-righted work publicly ; and

(6) In the case of sound recordings, to perform the copyrighted work publicly  by means of a digital audio transmission.⁷

            The exclusive nature of the enumerated rights  means that no one other than the owner of a copyright (and those acting with his or her consent) may copy, distribute, publicly display, publicly perform or create derivative works based on the copyrighted work. Unauthorized use of copyrighted materials can lead to civil and criminal sanctions that will be discussed later in this chapter. It is important to note that civil and criminal copyright infringement  can occur even when unauthorized use of copyrighted work is made that does not bring any material benefit to the copyright infringer. Thus, while making unauthorized copies of a copyrighted book, music CD or of a video DVD for sale clearly involve both criminal and civil violations of copyright law, so does copying a rented movie to keep for personal use, copying an audio book borrowed from the library, or burning a CD of one’s favorite music to give to a friend. By purchasing a legal copy of a copyrighted work such as a book, magazine, or legally downloaded MP3 music files, the user generally obtains the right to use those files for personal use only, and not to copy or redistribute them. Thus you may watch a rented or purchased movie at home, and show it to guests in your home for non-commercial purposes (e.g., without charging them a fee). However, you cannot show the movie in a setting that is open to the public (e.g., on a projection system in your back yard where everyone is welcomed to view the movie). Moreover, the same is true for copyrighted work that is non-commercial in nature. The performance of an amateur rock band in someone’s garage cannot be taped without the band’s consent; and if consent is given to tape the performance, copies of the performance cannot be made without the express consent of the band, nor can the taped performance be posted online, broadcast or played at a public venue without the band’s consent. And the same is true for a dance routine, short story, poem, drawing, painting, sculpture or any other subject matter protected by copyright.

---

² U.S. Const. Art I §8.

³ The Columbian Sentinel, July 17 1790 at 1. A digitized version of the newspaper page can be viewed at http://www.earlyamerica.com/earlyamerica/firsts/copyright/centinel.html (last visited August 11, 2009).

⁴ The current Act is contained in Title 17 of the U.S. Code and includes amendments through 2006.

⁵ 17 U.S.C. §102(a) (2006).

⁶ Id.

⁷ 17 U.S.C. §106 (2006).