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

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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.

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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).