Protect Your Thoughts

Patents. Trademarks. Copyright. Learn how to protect your intellectual property.

Protect Your Thoughts As competitiveness ramps up, learn how to put intellectual property protections to good use By Bill Hollimon

 

As Florida and the rest of the country struggle through the worst recession in memory, understanding the consequences of a competitive advantage is more important than ever. That’s what sets a business apart from its competitors and brings value to its customers, a key to surviving this economy.

For many, this competitive advantage evolves from an idea — an idea about how to solve a problem; how to fill a need; how to more effectively create and deliver a message. However, once the idea is put into practice, the challenge becomes protecting and preserving the idea — the intellectual property — so that a business, and not its competitors, can fully realize the benefits.

When the U.S. Constitution was drafted, the framers realized the importance of intellectual property to our country. Article I, Section VIII of the 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." Congress, in turn, has enacted legislation implementing this constitutional provision and that forms the foundation of our intellectual property system.

Intellectual property (IP) refers to property that, at its core, is the product of mental effort. IP is generally intangible. On the other hand, more familiar forms of property, such as real property (land and buildings) and personal property (cars, furniture, etc.), are tangible. Nonetheless, IP owners have the same right to enjoy the benefit of their property, and to protect their property from theft and exploitation, as do the owners of real or personal property.

There are four major forms of intellectual property; in general, each form protects a specific arena of ideas and the expression of those ideas. The various forms of IP include: patents, trademarks, copyrights and trade secrets.

Patents

A patent is a government grant to an inventor of the right to exclude all others, for a limited period of time, from making, using or selling the patented invention. In exchange for this right, an inventor is required to completely disclose the invention in a patent application. At the conclusion of the patent term, the invention is then dedicated to the public. Generally, patents have a term of 20 years from the date on which the application was filed in the U.S. Patent Office.

Patents protect ideas that are expressed in inventions. Many inventions are the product of necessity. This necessity often arises because the solution to a problem is simply not available. If you solve a problem in this circumstance, think patent. To be patentable, the invention must satisfy the patent law’s requirements of novelty, usefulness and non-obviousness.

Patentable inventions include devices, methods of doing business and improvements. Patents are protectable only under federal law. If you build a better mousetrap, or develop a software-implemented business method, protect that idea with a patent. Otherwise, your competitors are free to copy your idea once it is disclosed.

Trademarks

Trademarks are powerful marketing tools used to build brand identity. A trademark is a word, phrase, logo or symbol used to indicate the source of goods and to distinguish the good from those sold by others. Service marks are identical to trademarks, except that they are associated with services rather than goods. Trademarks are protected under federal law, state law and the common law. The owner of a trademark generally has the exclusive right to use the mark in connection with the goods or services actually sold under the mark. Trademark rights are always premised upon actual use, and the first user almost always has superior rights to later users.

Trademarks should not be used to identify particular goods; instead, they should build an association to the source of the goods. For example, Exxon® does not identify oil, gasoline or related services. On the other hand, "Tasty Pizza" does not function as a trademark because it merely describes the good sold. The strongest trademarks, and those entitled to the greatest protection, disclose little about the associated goods or services.

Copyrights

Copyright is probably the most pervasive, and misunderstood, form of IP. Copyright protects the creative expression of authors that is fixed (recorded) in a tangible medium of expression. This includes books, movies, magazines, computer software, audio recordings, paintings, drawings and sculptures. Copyright does not protect ideas, standing alone, and does not protect purely factual information.

The owner of the copyright in a work has the exclusive right to control reproduction, distribution, modification, and public performance and display. However, the "copyright" in a work is distinct from the work itself; thus, a consumer can buy a book but can’t copy the book without the permission of the copyright owner.

Almost everything that is preserved in writing, on film, on audio tape or on a computer falls within the subject matter of copyright. The general rule is that the author is the owner of the copyright in a work. The exception to this rule arises for "works made for hire." A work made for hire is: 1) a work produced by an employee for an employer (the employer is the author); or 2) a specially commissioned work under a written contract designating the work as a work made for hire (the commissioning party is the author).

Businesses that procure creative services need to ensure that they obtain both the work and the copyright rights necessary to use and exploit the work. Businesses that provide creative services need to understand that the work produced is distinct from the copyright in that work — and that there is value in both components.

The duration of a copyright is generally the life of the author plus 75 years. Copyrights are protectable only under federal law. Copyright registration is not necessary to create copyright rights; however, registration is necessary to enforce those rights in federal court, and registration within 90 days of first publication, or before any known infringement, affords the copyright owner additional rights.

Trade secrets

Trade secrets are protected under state law. Generally, a "trade secret" is information that derives economic value from not being known to competitors and that is treated as a secret.

A trade secret constitutes intellectual property that can be deliberately created by a company and protected indefinitely. Unlike copyrights, patents or trademarks, however, trade secrets have no finite life, and there is no registration process. A trade secret need not be the result of creative effort (such as the case with copyrights) or novel invention (like patents). The critical requirements for a trade secret are: 1) secrecy and 2) the information must create actual or prospective economic value.

If your competitive advantage derives from your intellectual property, maintaining your advantage may depend upon preserving and protecting this property. If so, make sure that you, and not your competitors, derive the benefits from your hard work by identifying and protecting your intellectual property.

Bill Hollimon is a shareholder at the Tallahassee-based law firm Pennington, Moore, Wilkinson, Bell & Dunbar. His practice focuses on patents, trademarks and copyrights and also includes civil and administrative litigation in these areas. Hollimon is an adjunct copyright law professor at the Florida State University College of Law and a certified circuit civil mediator specializing in IP disputes.

 

Brands going PUBLIC

 

When the name of your product works its way into the dictionary or becomes "genericized," that’s when you know you’ve done a

great marketing job. But that success can be a double-edged sword — and you can easily lose your trademark protection.

 

That’s what happened to Sony in Austria, when the word "Walkman" made it into the Austrian dictionary.

 

While the Walkman trademark is still protected in the U.S., other companies have not been so lucky with some of their famous products.

 

Some examples of trademarks that were lost because they became generic over time are: escalator, kerosene, shredded wheat, thermos,

aspirin, yo-yo, kleenex, corn flakes, raisin bran, zipper and cellophane.

 

But campaigns have been launched by some companies, including Lego and Xerox, to prevent their trademark products from beginning

genericized.

 

The makers of Lego products have a page on their Web site entitled, "Fair play, please," which outlines how and when the Lego trademark

should be used.

 

"An owner must prevent the improper use of its trademarks to prevent the public from being deceived. This is why the LEGO Group is very

active around the world in making sure that its trademarks are not misused," the Web site explains.

 

Xerox launched a successful campaign to refocus attention on its brand when it urged consumers to copy their documents on Xerox machines.

 

— Linda Kleindienst