Patents, Trademarks, Copyrights, and Trade Secrets: Identifying and Protecting Your Intellectual property

PATENTS, TRADEMARKS, COPYRIGHTS, AND TRADE SECRETS:
IDENTIFYING AND PROTECTING YOUR INTELLECTUAL PROPERTY

TRADEMARKS

What is a trademark or service mark?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.

A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are often used to refer to both trademarks and service marks.

What is the value of holding a trademark or service mark?

Trademark rights allow you to prevent others from using a confusingly similar mark.

What are the limitations of a trademark or service mark?

A trademark rights do not prevent others from making or selling similar goods or services using a clearly different mark.

How do you get a trademark or service mark?

Trademark rights are based on use. The first party to use a mark in a geographic area has superior rights in that mark. The use must be continuous (not sporadic) and may not be simple “token” use (one prototype is insufficient).

Registration of the mark is not required. However, there are substantial benefits for federally registering the mark as discussed below.

Selecting a Mark

Not all marks are equal. The strength of a mark (i.e. the ability to prevent others from using similar marks) is dependent upon the distinctiveness of the mark; more distinctive is better. The following categories illustrate the continuum:

     Generic. Generic terms cannot be protected as trademarks. A generic term is the common name for a good or service and provides no information as to the source. A trademark can become generic if not properly protected; for example, aspirin and superglue were both once trademarks which have become generic.

     Descriptive. Descriptive terms describing characteristics, functions, quality, or other attributes of a good or service are weak trademarks, and may not be trademarks at all. However, upon a showing of "acquired distinctiveness" through extended use a descriptive term can develop secondary meaning and become protectable as a mark. The descriptive term “wood” could not typically be used as a trademark for a brand of desks, but if a company named “Wood” had been manufacturing a specific brand of desks for the last 200 years and everyone easily understood the origin of the good when you referred to “Wood desks,” then the term might be eligible for trademark protection.

     Suggestive. Suggestive terms suggest a characteristic or attribute of a good or service and are immediately protectable as marks. An example might be “Gooble Gobble” as a trademark for the sale of turkey meat.

     Arbitrary. Arbitrary terms are real words which have no existing relationship to the product or service they identify. These terms make for strong marks. Apple computers and Ivory soap are two good examples.

     Fanciful. Fanciful terms are considered the strongest marks because they are made up words or designs which have no prior use or meaning in language. Kodak cameras and Verizon telephone service are examples of fanciful marks.

Other factors to consider in determining the strength of a mark are the number of other marks with identical or similar terms, the length of time the mark has been in use, market recognition of the mark, and promotional effort expended in developing the mark.

Best Practice Tip: Careful consideration should be given to selecting a trademark in which you intend to incur time and expense developing brand recognition. In addition to considering the factors discussed above, you should perform trademark searches to determine whether others are currently using your proposed mark. Two quick, easy and free searches include Google and the U.S. Patent and Trademark Office – Trademark Electronic Search System. More comprehensive searches are available, typically ranging in price between $100 and $500.)

Forms of Trademarks

Trademarks can be in various forms, including word marks, slogans, designs and logos. Word marks are most common and include the use of one or more words and/or numbers. Slogans are compound word marks, such as “Just Do It.”

Designs and logos are protectable provided they are not simply “ornamental” on the product. For example, the Ralston Purina checkerboard is a valid design mark. Color can be the subject of a trademark, but there must be proof of secondary meaning. The pink color of Owens Corning insulation has been protected because the source of the good is commonly recognized in the industry (i.e., it has developed secondary meaning). Sound and fragrance may also be the subject of a trademark, again provided there is secondary meaning and they are distinctive. The sound of a Harley Davidson motorcycle has received trademark protection.

Why should a mark be federally registered?

There are many reasons:

Provides prima facie evidence of a party’s exclusive right to use the mark
Establishes validity of the registered mark
Indicates ownership of the mark
Extends rights to exclusive use nationwide (rather than limited to local geographic area)
Mark becomes incontestable five years after registration
Allows infringement suit to be brought in federal court
Permits potential recovery of certain statutory remedies (including damages)
Registrant may bar the importation of goods bearing an infringing mark
Facilitates registration of the mark abroad

Federal registration with the U.S. Patent and Trademark Office should not be confused with state registration in the Secretary of State’s office. State registration is available, and provides a small number of the benefits described above, but most of these benefits require federal registration.

Best Practice Tip: In addition to considering federal registration of your trademark with the U.S. Patent and Trademark Office, you should also give serious consideration to registering the domain name which corresponds to your mark. If the domain name is not available, that will likely tell you a lot about the strength and availability of that trademark generally. Network Solutions is one of the most reliable services, and charges $34.99 per year to register a domain – substantial discounts are available on multiyear contracts.

Proper Use of a Mark

Use “TM” for unregistered trademarks or common-law marks, and use “SM” for unregistered service marks. These symbols are typically placed after the mark in superscript, such as the following:

TreeCreek^TM window frames
TreeCreek^SM financial services

Use ® for federally registered trademarks and service marks. The notation should appear after the mark in superscript, such as the following:

TreeCreek® window frames
TreeCreek® financial services

It is not necessary to include the notation (TM, SM or ®) after every occurrence of the mark on the same product or document. The notation should be placed next to the first or most prominent occurrence of the mark on each product or page of a document.

Trademarks should be used only as adjectives, never as nouns or verbs. You do not blow your nose with kleenex, you do so with Kleenex® tissues. You do not FedEx documents, you send documents using FedEx® shipping services.

Trademarks should not be used in a plural or possessive form.

Policing a Trademark

To maintain and protect a trademark, the holder must take active steps to “police” the use of its mark. There are watch services which will perform this function for a trademark holder. The USPTO’s Official Gazette should be monitored, along with use of the mark by competitors. Most importantly, a trademark holder should monitor use by its employees, contractors, and licensees. Inappropriate use must be corrected through various actions depending upon who is making the inappropriate use.

How long does a trademark last?

Rights in a common-law trademark continue until abandoned. A trademark is considered abandoned when the owner stops using the mark with no further intent to resume use of the mark. Abandonment is presumed after three consecutive years of non-use. Abandonment can occur where a trademark holder has failed to police and protect its mark. Licensing (or permitting) another to use your trademark without imposing adequate quality control can also be deemed abandonment.

After federally registering a trademark, it is necessary to file a Declaration of Continued Use within the fifth and sixth year of registration to avoid cancellation. A Renewal application must be filed between the ninth and tenth year of registration, and must be accompanied by a Declaration of Continued Use.

TRADE SECRETS

What is a trade secret?

A trade secret (defined in ORS 646.463) is information, including a drawing, cost data, customer list, formula, pattern, compilation, program, device, method, technique or process that:

Derives independent economic value, actual or potential, from not being generally known to the public or to other persons who can obtain economic value from its disclosure or use; and
Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

How do you know whether information qualifies as a trade secret?

The following six criteria are often employed in determining whether something qualifies as a trade secret:

the extent to which the information is known outside of the business;
the extent to which it is known by employees and others involved in the business;
the extent of the measures taken to guard the secrecy of the information;
the value of the information to the business and its competitors;
the amount of effort or money expended in developing the information;
the ease or difficulty with which the information could be properly acquired or duplicated by others.

General knowledge, skill, or expertise of an employee is not a trade secret. There is well established public policy favoring employees’ freedom of mobility and right to retain the basic knowledge they acquired during employment.

What is the value of holding a trade secret?

A trade secret, by definition, has independent economic value from not being generally known. To the extent you maintain the “secrecy” of the information, and another party misappropriates your trade secret, you will have specific legal remedies against the party, including injunction, recovery of actual loss and unjust enrichment, and attorneys’ fees in egregious cases.

What are the limitations of a trade secret?

If you fail to take adequate steps to protect your information, or inadvertently disclose the information, you lose all trade secret protection. The following are proper means by which your competitors may learn about your trade secrets without misappropriation:

Discovery by independent invention or development.
Discovery by reverse engineering. Of course, the item you intend to reverse engineer must have been acquired by legitimate means on the open market. One of the many reasons software is licensed, rather than sold, is to contractually preclude anyone from reverse engineering the product to reveal the trade secrets contained in the code.
Observation of the item in public use or on public display.
Obtaining the trade secret from published literature.

Why do you identify trade secrets?

The first step to protecting your trade secrets is to perform an inventory. An inventory allows you to identify what information your company considers valuable and then ensure it is adequately protected. If a dispute later arises, being able to clearly articulate what you consider a trade secret will add credibility to your defense.

Simply because what you seek to protect contains a certain portion of public information does not preclude it from being a trade secret. The way you organize, compile, use, or modify the information can be a trade secret. Your knowledge that certain publicly known processes work better than others or improvements to publicly known processes may also be a trade secret. One of your most valuable trade secrets may be your customer list, despite the fact that each customer is individually listed in the telephone directory.

Best Practice Tip: Specific examples of documents you may want to treat and mark as confidential include customer lists, compiled or comprehensive price lists, or drawings and schematics.

How do you protect your trade secrets?

The key to protecting your trade secrets is to keep them relatively secret.

Establishing trade secret protection serves two purposes. First, and most obvious, it implements a system to minimize the potential that identified sensitive information will be publicly disclosed. Second, it makes available a set of remedies which can be enforced against someone who “misappropriates” your trade secrets.

Depending on the value and sensitivity of your trade secrets, the following list of measures may be appropriate for establishing trade secret protection:

Physical Safeguards

Reasonably restrict access to your building, plants, and property.
Segregate areas where particularly sensitive information is kept.
Install locks and other security measures with varying degrees of security based on the level of sensitivity of information kept in each area.
Change locks and security codes as appropriate.

Procedural Safeguards

Use identity badges for all employees, service technicians, and guests.
Establish procedures for plant tours so that trade secrets are not revealed.
Only allow access to trade secret information on a need-to-know basis.
Develop procedures for handling new employee intake, and exit interviews with departing employees to advise of their future obligations.
Adequately compensate employees with access to trade secrets.
Avoid disclosing trade secrets through the use of labels which list contents or materials, except to the extent necessary to comply with OSHA and other laws.
Educate employees about the importance of trade secrets and the necessity for procedures related to the proper use and protection of such information.
Monitor the use of cameras in and limit photographs of your plants and facilities.

Safeguarding Documents

Label and safeguard all documents containing trade secrets.
Screen all technical and marketing information written by your employees and intended for publication so that confidential information isn’t inadvertently disclosed.
Screen reports and other information disclosed to the government for trade secrets and obtain non-disclosure agreements if necessary.
Establish procedures for tracking copies of confidential documents and routinely destroy unnecessary copies. This goes for computers as well. Never donate old computers that may contain confidential information to employees or charity without first destroying all such information.

Best Practice Tip: Use caution and be selective when marking documents “Confidential Information.” Mark only those documents that actually contain trade secrets. Simply rubber stamping everything is self-defeating and diminishes protection of true trade secrets.

Confidentiality & Non-Disclosure Agreements

Your first line of defense should always be to disclose trade secrets on a need-to-know basis only. Your second line of defense is to ensure everyone with a need-to-know has executed a valid confidentiality agreement (also referred to as non-disclosure agreements).

You should execute confidentiality agreements with all employees that have access to trade secrets. Additionally, any contractors, service technicians, suppliers, or customers with access to trade secrets should also execute confidentiality agreements.

Best Practice Tip: Before allowing anyone into your facilities where trade secrets are kept or allowing anyone to access your computer network, consider whether they should first execute a confidentiality agreement. Remember, all it takes is one person without an obligation of confidentiality to disclose your trade secrets and destroy their value.

Employment Application Materials

You may want to consider adding the following provisions to the acknowledgement and signature section of your employment application:

Obligation of confidentiality.
Acknowledgement that ideas, inventions, and works of authorship, developed in the course of employment belong to the employer.
Assignment provision granting, and agreeing to execute all necessary documents to transfer, all ideas, inventions, works of authorship, etc. developed in the course of employment to employer.

Best Practice Tip: Approximately 90% of all problems related to the loss of trade secrets have been attributed to employees leaving a company. That’s where your greatest degree of effort should be focused. The use of confidentiality agreements and employee intake and exit interviews may be most effective in this area.

What is Misappropriation?

Misappropriation is defined as the:

Acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means;
Disclosure or use of a trade secret of another without express or implied consent by a person who used improper means to acquire knowledge of the trade secret;
Disclosure or use of a trade secret of another without express or implied consent by a person who, before a material change of position, knew or had reason to know that it was a trade secret and that knowledge of it had been acquired by accident or mistake; or
Disclosure or use of a trade secret of another without express or implied consent by a person, who at the time of disclosure or use, knew or had reason to know that the knowledge of the trade secret was derived from or through a person who had utilized improper means to acquire it; acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use; or derived from or through a person who owed a duty to the person seeking relief to maintain its secrecy or limit its use.

Best Practice Tip: If you would be uncomfortable telling your mother or priest where or how you got the information, consult your attorney before using the information.

Avoiding Misappropriation

The best method of avoiding allegations of misappropriation is to implement employee intake procedures, educate your employees about obligations of confidentiality related to yours and others’ trade secrets, and encourage a culture of fair and honest dealings.

Best Practice Tip: Employees are regularly hired because of the valuable information they gained working at other companies. Because of the substantial penalties involved, particularly under the federal criminal statute, it is advisable to amend your hiring process to regularly screen whether those employees have ongoing obligations under confidentiality or non-compete agreements and to ensure they do not bring documents or information belonging to their prior employer.

PATENTS

What is a patent?

A patent is a grant of a right to exclude others from practicing the patented invention for a limited amount of time. A patent does not give its owner the right to practice an invention – only to prevent others from practicing it. There are three types of patents. The type of patent we ordinarily think of is a utility patent. There are also design patents, which protect the ornamental appearance of a manufactured product, and plant patents, which protect asexually reproduced plants, such as apples, roses, and tulips.

A utility patent can protect machines, tools, compositions of matter, such as chemical compounds, computer programs, methods, including business methods and methods for processing materials or manufacturing products, and biological materials, such as genetically modified plants and animals. Most patents protect improvements in something which is already known in a different form. U.S. Patents are granted by the United States Patent and Trademark Office and offer national protection within the United States and its territories.

Foreign patent protection is also available, through each national government or one of a few international organizations, and foreign applications filed within a year of a U.S. application can claim the priority of the U.S. application.

How can a patent be used?

A patent is a form of intangible personal property, which can be bought and sold, and a company’s portfolio of patents can be an important asset in making the company attractive for acquisition, and may be useful as collateral in obtaining financing.

A company's ownership of patent rights, either by outright ownership of patents assigned to the company, or ownership of a security interest, should be protected by recordation of the operative document in the United States Patent and Trademark Office.

The owner of a patent can grant licenses permitting others to practice the patented invention.

Patents can be owned jointly, but there should always be an agreement between co-owners, so that they are obligated to account to each other for income derived from the patent rights, and to prevent one co-owner from entering a license agreement or selling his rights under terms that would damage the other co-owners. Without such an agreement any owner of an undivided joint interest in a patent could grant a non-exclusive license to the patent without consent of the other owners.

When should I think about obtaining patent rights?

Applying for a patent should be considered any time the use of an invention would give a business an advantage against its competitors, particularly when the invention cannot practically be kept secret while exploiting it. When an invention will be disclosed as part of a product, or by use of a method or machinery in an open area, a patent can protect the invention, and should be considered.

When an invention can be kept secret it may be advantageous to depend on trade secret protection, since the duration of trade secret protection is not limited, so long as secrecy is maintained. For that reason, recipes, such as the Coca Cola formula, are usually kept as trade secrets, rather than being patented, because a patent necessarily includes a full disclosure of the invention, and the recipe would be freely available for use by anyone once the patent expired.

How do I obtain a patent on an invention?

An application has to be filed in the United States Patent and Trademark Office. In the United States, patent applications have to be filed in the name of the actual inventors, even though inventions by employees are normally assigned to the employer.

U.S. patents are supposed to be issued to the first person to invent, not the first person to file for a patent. Therefore, the date of invention is very important in determining your rights. The moment of invention is called “conception.” Legally, conception is “the formation, in the mind of the inventor, of a definite and permanent idea of the complete and operable invention, as it is thereafter to be applied in practice.” Conception must be of a specific method of solving a problem, not just an idea about a desired result. A concept must be sufficiently complete so that one of ordinary skill in the art could understand the concept and bring it to reality without extensive experimentation. You should note that the first glimmerings of what would turn out to be the invention do not qualify as “conception.” Remember that defining a date of conception for your invention can have big legal consequences. Your invention may be unpatentable—or your patent may turn out to be proven invalid during litigation—if someone else conceived of the same invention earlier than you did.

If foreign protection of the invention is contemplated, a United States patent application needs to be filed before there is any non-confidential disclosure of the invention. If protection is desired for only the United States, there is a grace period of one year after the earliest of any of several events. Thus, a United States patent application must be filed within one year after any printed publication describing the invention, any offer to sell or actual sale of the invention, or any public use of the invention, including commercial use, even when not openly visible to the public (such as a method used in a factory without disclosure outside the factory, to produce products which are sold).

Printed publications can include scholarly papers which are available and can be identified by searching in libraries, or papers published in professional journals. A potential problem is that an article published in a scholarly journal can disclose and thus prevent foreign protection of a patent at an unexpectedly early date, as when the January issue of a journal is released by the printer in the first week in December.

Consequently, as a general rule it is important to apply for a patent as soon as you can. Before an application is actually filed, do not disclose the invention without a nondisclosure agreement, limit use to experimental use, and be mindful of buying prototypes from suppliers, even if the supplier has signed a confidentiality agreement. An application should be prepared and filed promptly once you have determined that the invention works as intended, if you think that there is a potential value to protection of the invention, in order to:

preserve foreign patent rights,
avoid being beaten to a filing date by a competitor working on a similar invention, and
avoid the inventions of others becoming prior art relevant against your own patent application.

It is not necessary, and may create a disadvantage, to wait to file a patent application until you have developed a commercially marketable form of the invention.

What makes an invention patentable?

To be patentable an invention must be novel, that is, the invention must never have been known in exactly the form in which it is intended to be patented.

Additionally, the invention must be nonobvious in view of any single item of prior art or in view of an obvious combination of two or more items that are part of the prior art.

Prior art is defined specifically by U.S. patent law but generally includes anything relevant that was known in the U.S. prior to the invention for which a patent is being sought, or that was in public use or on sale or described in a printed publication more than a year before a U.S. application's filing date. For foreign countries, the prior art generally includes anything publicly known in the world prior to the effective filing date of an application.

How does a patent define what are the owner's rights?

A utility patent or a plant patent includes one or more claims whose language defines the invention, and the drawings define the invention of a design patent. A utility patent may have several claims, each of which defines a separate invention. The invention defined by each claim has to be described in detail in the specification of the application for the patent. A patent's claims should define the invention as broadly as possible in view of the known prior art, and should also define the invention more narrowly, to cover the invention if other prior art is later discovered.

How can I have a better chance of being ready to apply for a patent at the appropriate time?

One important way is to have appropriate employment agreements in place to require employees (1) to disclose inventions promptly (so that the company can evaluate whether those inventions merit patent protection), (2) to assist the company's patent attorney in preparation of patent applications, and (3) to assign inventions to the company.

When an employee's work is likely to result in inventions, the employee should be required to keep an inventor's notebook documenting the research or experimentation conducted. The inventor's notebook should be kept in a way that makes it likely to be convincing evidence: It should be permanently bound. Entries should be made in ink and dated. Pages should be filled consecutively, and changes should not be made once an entry has been signed and dated.

Who is an inventor?

An inventor is a person who has contributed to an invention as defined in a patent claim. There can be several inventors, whose work must be cooperative and make a contribution but need not be contemporaneous or even at the same place. It is important to name all the inventors, but not to name those who are not inventors. The correct inventorship often cannot be determined until claims have been written.

When should a patentability search be conducted?

Any time the inventors are not deeply and broadly aware of the history of developments in the field of an invention, and usually even then.

How can I avoid infringing patents my competitor owns?

Searches can be conducted online in databases on the U.S. Patent and Trademark Office database for published patent applications and issued patents assigned to an individual or a company once the assignment has been recorded. Searches can also be based on the inventors' names.

Where a competitor owns a patent in the field of an intended product, a professional opinion should be obtained to avoid infringement. Searching for prior art relating to a patent can be done to determine whether a claim of a patent is invalid, or unenforceable. Products can be designed to avoid infringing a known patent.

How can I determine whether it's safe to put a product on the market to compete with one already there?

The product already available may be marked with relevant patent numbers. Searches can be done in patent office databases for the country or countries where the product will be sold – but it requires the consideration of an experienced professional to determine whether any patent in particular would be an obstacle. Where there is any doubt a professional opinion should be obtained, to avoid liability for willful infringement.

What right does an employer have in an employee's invention?

It depends on the employee's duties. As to an invention in the field of employment the employer probably owns the invention, but the employment agreement can be helpful. Where an employer's time or materials are used to create an invention a shop right is probably available to the employer, even when the inventor is not employed as an inventor, but has only duties other than development of the technology involved in the invention – e.g. a bookkeeper uses the company's machines and in spare time develops an improvement in a company product.

What is a provisional patent application?

A provisional patent application is a description of an invention that is filed in the Patent Office It starts the one-year Paris Convention grace period and establishes a priority date for filing foreign patent applications as to what it contains, but some people are tempted to file brief and incomplete descriptions as provisional patent applications, to save costs. A provisional application has to be converted to a non-conventional application within a year, and may save some initial filing costs, since claims are not required, and the filing fee is less, but it presents serious risks since it may embolden an inventor or company to make public disclosures that could prevent or limit the available protection for an invention, if the provisional application doesn't include a complete and detailed disclosure. It can be useful, but may be a dangerous trap for the unwary.

COPYRIGHT

What is copyright?

Copyright is a form of protection provided to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works.

What is the value of holding copyrights?

Copyright protection generally gives the owner of copyright the exclusive right to do and to authorize others to do the following:

Reproduce the work in copies or phonorecords;
Prepare derivative works based upon the work;
Distribute copies or phonorecords of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
Perform the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works;
Display the copyrighted work publicly, 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; and
In the case of sound recordings, perform the work publicly by means of a digital audio transmission.

What are the limitations on copyright?

Copyright protects the particular way an author has expressed himself; it does not extend to any ideas, systems, or factual information conveyed in the work.

One of the other most important limitations is the doctrine of “fair use.” The law permits others to reproduce a particular work for certain fair uses. The following four factors should be considered in determining whether or not a particular use is fair:

the purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes;
the nature of the copyrighted work;
amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
the effect of the use upon the potential market for or value of the copyrighted work.

The distinction between “fair use” and infringement may be unclear and not easily defined. There is no specific number of words, lines, or notes that may safely be taken without permission. Acknowledging the source of the copyrighted material does not substitute for obtaining permission.

Examples of activities that courts have regarded as fair use include:

quotation of excerpts in a review or criticism for purposes of illustration or comment
quotation of short passages in a scholarly or technical work, for illustration or clarification of the author’s observations
use in a parody of some of the content of the work parodied; summary of an address or article, with brief quotations, in a news report
reproduction by a library of a portion of a work to replace part of a damaged copy
reproduction by a teacher or student of a small part of a work to illustrate a lesson
reproduction of a work in legislative or judicial proceedings or reports
incidental and fortuitous reproduction, in a newsreel or broadcast, of a work located in the scene of an event being reported

Who can claim copyright?

Copyright protection subsists from the time the work is created in fixed form. The copyright in the work of authorship immediately becomes the property of the author who created the work. Only the author or those deriving their rights through the author can rightfully claim copyright.

The alternative is “works made for hire,” a work prepared by an employee within the scope of his or her employment. In such cases, the employer and not the employee is considered to be the author.

What works are protected?

Copyright protects “original works of authorship” that are fixed in a tangible form of expression. The fixation need not be directly perceptible so long as it may be communicated with the aid of a machine or device. Copyrightable works include the following categories:

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
architectural works

These categories should be viewed broadly. For example, computer programs and most “compilations” may be registered as “literary works”; maps and architectural plans may be registered as “pictorial, graphic, and sculptural works.”

How do you get copyrights?

Copyright is secured automatically when the work is created, and a work is “created” when it is fixed in a copy or phonorecord for the first time. “Copies” are material objects from which a work can be read or visually perceived either directly or with the aid of a machine or device, such as books, manuscripts, sheet music, film, videotape, or microfilm. “Phonorecords” are material objects embodying fixations of sounds (excluding, by statutory definition, motion picture soundtracks), such as cassette tapes, CDs, or LPs. Thus, for example, a song (the “work”) can be fixed in sheet music (“copies”) or in phonograph disks (“phonorecords”), or both.

No publication or registration or other action in the Copyright Office is required to secure copyright.

If a work is prepared over a period of time, the part of the work that is fixed on a particular date constitutes the created work as of that date.

What notice is required?

The use of a copyright notice is not required, although it is often beneficial.

Use of the notice may be important because it informs the public that the work is protected by copyright, identifies the copyright owner, and shows the year of first publication. Furthermore, in the event that a work is infringed, if a proper notice of copyright appears on the published copy or copies to which a defendant in a copyright infringement suit had access, then no weight shall be given to such a defendant's interposition of a defense based on innocent infringement in mitigation of actual or statutory damages. Innocent infringement occurs when the infringer did not realize that the work was protected.

The use of the copyright notice is the responsibility of the copyright owner and does not require advance permission from, or registration with, the Copyright Office.

The notice for visually perceptible copies should contain all the following three elements:

The year of first publication of the work. In the case of compilations or derivative works incorporating previously published material, the year date of first publication of the compilation or derivative work is sufficient. The year date may be omitted where a pictorial, graphic, or sculptural work, with accompanying textual matter, if any, is reproduced in or on greeting cards, postcards, stationery, jewelry, dolls, toys, or any useful article; and
The name of the owner of copyright in the work, or an abbreviation by which the name can be recognized, or a generally known alternative designation of the owner.

Example: © 2002 John Doe

How long copyright protection last?

A work that is created (fixed in tangible form for the first time) on or after January 1, 1978, is automatically protected from the moment of its creation and is ordinarily given a term enduring for the author's life plus an additional 70 years after the author's death.

In the case of “a joint work prepared by two or more authors who did not work for hire,” the term lasts for 70 years after the last surviving author's death.

For works made for hire, and for anonymous and pseudonymous works (unless the author's identity is revealed in Copyright Office records), the duration of copyright will be 95 years from publication or 120 years from creation, whichever is shorter.

Other rules apply to works created before January 1, 1978.

Why should copyrights be registered?

In general, copyright registration is a legal formality intended to make a public record of the basic facts of a particular copyright. However, registration is not a condition of copyright protection. Even though registration is not a requirement for protection, the copyright law provides several inducements or advantages to encourage copyright owners to make registration. Among these advantages are the following:

Registration establishes a public record of the copyright claim.
Before an infringement suit may be filed in court, registration is necessary for works of U. S. origin.
If made before or within 5 years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate.
If registration is made within 3 months after publication of the work or prior to an infringement of the work, statutory damages and attorney's fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.
Registration allows the owner of the copyright to record the registration with the U. S. Customs Service for protection against the importation of infringing copies.

Registration may be made at any time within the life of the copyright.

Disclaimer: The materials available on this web site are for informational purposes only. Nothing on this site should be construed as legal advice or opinion. It is important that you consult an experienced attorney concerning your particular factual situation. Do not rely solely on the information provided on this web site.

Use and Disclaimer