THE BRAND LAWYER

My grandfather used to say “confusion rained and we all got wet.” That seems to be the case for most people trying to get a handle (not the Twitter type) around understanding intellectual property law. It can be confusing, especially these days when everything seems to intermix. So here goes what I hope is a digestible, and brief, explanation.

The word “intellectual” in “intellectual property” is used to distinguish these kinds of non-physical properties from tangible “personal property” (physical things we own) and “real property” (real estate). Intellectual property is not physical in nature, being “intangible” in nature.   Intellectual property sometimes is called “intangible property.”

There are a number of different kinds of intellectual property: (1) original ideas and concepts, (2) ideas and concepts that result in inventions, (3) creative expression of ideas and concepts, (4) brand names and other brand indicia (like logos, designs, etc.), and (5) certain personal rights, including (a) the right to use our names and likenesses and voices for commercial purposes, and (b) not allowing others to destroy the integrity of the way we express ourselves creatively.

Each of these, and the rights in them, is legally differently. Some are protected only under state laws, some only under federal law, and some under both. Internationally, each country has its own laws, although there is some harmony between the patent, copyright and trademark laws of most countries. The following discussion is limited to U.S protection.

(1) Original Ideas and Concepts. These get almost no protection and what little there is varies from state to state, with no federal protection unless the idea or concept satisfies the requirements for federal patent protection. The Copyright Act expressly excludes concepts and ideas; I can’t tell you how often I have to sadly inform a client or prospective client that I can’t copyright a concept, no matter how brilliant and creative. And contrary to popular belief, merely identifying an idea or concept as “proprietary” does not create any legal rights. Some states will protect original ideas and concepts if there is an agreement between the parties in which it is agreed that the idea or concept is original and has to be kept confidential. Most states require that the agreement be written and entered into before the idea or concept is disclosed to the party charged with keeping it secret. Some states require that the idea or concept be more than merely original – that it also be “novel.” In some states, like New York, there is some older law that protected ideas for television formats and concepts, but that has been eroded over the years. California now requires written confidentiality agreements, and there is recent law indicating that the idea or concept has to be a “trade secret” as defined under the Uniform Trade Secrets Act. The bottom line is that before you give away your great new ideas and concepts, make sure you find out and do what the law requires. Because once the “secret” is out, it’s out. And there goes your protection.

(2)      Inventions. These are the subject of patent law, which is only federal. A patent grants a bundle of exclusive rights in inventions, which are defined as ideas, concepts, functionality, methods and processes that are “novel,” “non-obvious” and “useful” as well as novel designs of useful articles. The monopoly created by patent law is the strongest in our law, and thus patents are hard and expensive to get and are for a limited duration. There are very stringent requirements for obtaining patent protection and the process is expensive and usually quite long – from start to finish could be over a decade. And even if you are issued a patent, it is subject to challenge. Merely filing for patent protection does not create any rights; while it allows you to identify the subject of the patent application as being “patent pending” all that does is put the public on notice that if the patent issues, anyone who has been commercially exploiting something covered by the patent may be liable for patent infringement and money damages dating back to when the notice was provided. If you are lucky enough to get patent protection, it can be a very powerful and lucrative tool. Given the expense and length of time in obtaining a patent, there is always a cost/benefit analysis required before embarking on that route. Useful information about patents can be found on the US Patent and Trademark Office website, www.uspto.gov.

(3) Expressing Ideas. How we express our ideas and concepts creatively is protected by copyright law if the expression is “original” (not copied substantially from another source) and not ephemeral in nature—it has to be “fixed” in a “tangible medium.” Since 1978, copyright protection is federal alone (with some exceptions). The subject matter of copyright is listed in Section 102 of the federal Copyright Act, and includes everything we refer to as “content” in the entertainment industry (text, still images, video and film, music, choreography, and more (maps, choreography, software programs, graphs, pantomime and architecture). Copyright rights are created from the moment the copyrightable subject matter (called “works”) are created and fixed – registration is voluntary but necessary to acquire certain valuable rights and to file copyright infringement lawsuits. The exclusive rights under copyright are the rights to reproduce (make copies) of the work, to make derivatives of the work and copies of the derivatives), and to publicly perform, publicly display, distribute and transmit the work and its derivatives. These rights are “divisible,” meaning that they can be broken up in different ways and each right can be owned separately. For example, the author of a novel can grant licenses to different persons to respectively make a theatrical film, a television series, a television movie, a Broadway play, a sequel or prequel, and so on.  If the license is exclusive, the exclusive licensee is the “owner” of that right (I will be posting a separate article about licensing).  Ownership is a major issue under copyrights, with lots of rules and exceptions to rules.  An important point to keep in mind is that copyrightable work product created by employees is owned by the employer, but work product created in whole or part by non-employees is owned by the non-employee unless there is a written document signed by the non-employee making it clear that the work being created is a work for hire and in any event all of the non-employee’s rights in the work is being assigned and upon completion will be assigned.  This assignment language is necessary since not every work is a work made for hire.

[article continued in the next post]