Common Questions: What Kind of IP Protection Should I Pursue?

We frequently receive questions from business owners asking for intellectual property (“IP”) advice that combine legally unrelated terms, such as asking whether they should “copyright their logo”, or “trademark their idea”, or “get a patent on their design”.*  While it’s possible for IP owners to “layer” their protection – in other words, the same design might be protected under copyright and trademark law, and the same product configuration might be subject to a design patent as well as copyright and/or trademark protection – in many cases, a rights holder may only be exploring one kind of IP protection at a given time. This post is intended to simply define basic terms (particularly under U.S. law) to help foster conversations regarding obtaining the right protections for your IP – but if you need specific advice about what kinds of IP rights apply to your specific circumstances, you should talk with a lawyer who has experience in this area.

* Note that in some circumstances, it is possible to obtain a design patent – so asking to “patent a design” does not necessarily lead to an impossibility or a mismatch between the type of work and the applicable law. However, a mismatch occurs when the question asks whether unique artwork could be patented – where the questioner was really asking about obtaining a utility patent to protect an artistic work that has no functional elements.

Patents

Patent law governs the rights of inventors of new and useful ideas, including a process and/or machine, or an ornamental design, provided that these inventors have applied for – and been granted by the U.S. government (at the U.S. Patent and Trademark Office (USPTO)) – exclusive rights to reduce that invention to practice and exclude others from practicing the invention for a period of time set by statute. That period of time (“duration”) can be changed by Congress under certain situations. As a result, one patent’s duration might be different than another’s.

In addition, the statutory duration of a design patent currently is less than a utility patent, so it is important to consider what kind of patent has been issued before concluding that patent rights may or may not exist at any given time.

In order to obtain a patent, the inventor is required to disclose the new invention with sufficient detail that any other person skilled in this particular art would be able to recreate the invention. However, the benefit of obtaining a patent is the ability to exclude others from practicing the invention during the statutory period of exclusivity. If an inventor decides that it never wants to disclose the invention – but instead wants to protect it as a “trade secret” – then the inventor must take extreme care not to reveal the secret to others, including by publication or other disclosure, without the protections of non-disclosure agreements or security measures designed to keep the secret out of the hands of competitors or the public.

Finally, in order for patent rights to issue, an inventor cannot have already disclosed his invention to the public (with certain exceptions) before filing his application for patent protection – unlike copyrights and trademarks where the Work can have been published or the mark can have been used in commerce in connection with specific goods or services long before the application for registration is filed.

As I am not a patent lawyer, I will simply note that patent rights are not automatic; they must be applied for and granted by the USPTO through an issued patent before they can be enforced against others. Even after issuance, there may be limitations in the scope of a patent. Interested parties should consult with authorized patent practitioners (whether patent attorneys or patent agents) for any specific advice in this area.

Trademarks

Trademarks can be any word, phrase, symbol or design, sound, color or other indicia of source, or a combination of such indicia, that identifies and distinguishes the source of the goods of one party from those of others. A “service mark” performs the same basic function as a “trademark”, but applies to the source of a service rather than of a product (i.e., goods). (For simplicity, this post refers to both trademarks and service marks as “trademarks.”)

Trademarks generally must be unique enough that purchasers or potential purchasers associate them with one particular source’s goods or services – and only that source’s goods and services. While tempting, choosing a mark that describes the goods or services will not create a strong trademark and will not permit purchasers or potential purchasers to distinguish your goods from those of others – particularly if those descriptive words are commonly used by others in your industry.

Trademark rights in the U.S. require “use in commerce” – in other words, using a trademark in connection with particular goods or services offered in interstate commerce offered by a single source. Without that “use in commerce,” such words, phrases or logos/designs would not develop the goodwill associated with a mark or acquire any trademark value. You might have coined an interesting phrase, and maybe you were the first to publish it on the internet, or put it on the front of a t-shirt or on a mug – but unless the mark has been used as an “indicator of source” of particular goods or services offered to the public, then it does not function as a trademark.

Even without obtaining a federal registration, a trademark owner can establish exclusive rights to use a particular trademark based on its first use of the trademark in connection with particular goods or services in the marketplace (aka “common law trademark rights”). Relying on common law rights alone, however, may restrict your trademark rights to a particular geographic region in which use actually occurs. You could assert your common law rights against a newcomer who enters your geographic area, offering the same (or similar) goods or services under a confusingly similar mark. However, that newcomer might acquire senior rights in other geographic areas that could prevent the later expansion of your use. (Except in the case of famous marks which may be subject to broader protections in broader geographic regions, even if there is no use in commerce in that region.) Federal registration of one’s marks with the USPTO, while not required in order for trademark rights to exist, offers more comprehensive protection, including a presumption of nationwide use, than reliance upon common law rights alone.

Trademark rights can be perpetual, provided that trademark owners use their marks consistently and continuously in connection with specific goods or services in interstate commerce. If a trademark owner stops using a mark over a long period of time (generally three years or more, depending on the circumstances), with an intent not to resume use, marks can become abandoned, allowing a newcomer to step in later and start using the same mark without creating confusion with the original owner’s prior use. As with many conclusions in trademark law, the determination whether rights have lapsed is a highly fact-based determination and should be discussed with counsel if this is a concern.

Copyrights

Copyright rights exist from the moment of creation of a creative work, upon “fixing the work in a tangible medium of expression.” So, typing up a novel on paper, or saving it to disk or to the hard drive of a computer, would constitute a tangible medium of expression, just as drawing an original illustration on paper or chiseling a statue out of marble would. Copyright law does not protect the idea depicted in the creative work, but just the expression of the idea. See also a prior blog post on Can I Copyright My Knight in Shining Armor Story? (discussing common story themes and the limitation of copyright protection to the expression of the theme) and a series of posts on the copyrightability of fictional characters.

Creation of a copyrightable work entitles the author to several exclusive rights under U.S. law, including rights: (1) to reproduce (or, copy); (2) to prepare derivatives; (3) to distribute copies by sale, other transfer, rental, lease or lending; (4) to perform publicly; (5) to display publicly; and (6) (in the case of sound recordings) to perform by digital audio transmission. 17 U.S.C. § 106. Copyright owners also have the exclusive right to withhold their works from public circulation if they so choose.

Notwithstanding that copyright rights attach upon the moment of fixation of the expression in tangible form, under recent U.S. Supreme Court law, a copyright owner cannot enforce its copyright rights against others unless it is has filed for – and received – registration of its copyright rights with the U.S. Copyright Office. See Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 139 S.Ct. 881 (2019); see also prior posts in this blog explaining the Fourth Estate decision. Importantly, if an author happens to register its rights with the Copyright Office before the alleged infringement begins, then the author is permitted to seek statutory damages (up to $35,000 per work, or up to $150,000 per work if the infringement is found to be willful) instead of having to prove the full scope of actual monetary losses resulting from the infringement. Filing before the infringement occurs also permits the author to seek recovery of its attorney fees from the infringer if it prevails on an infringement claim (and if certain other criteria are met).

An author’s exclusive rights under the Copyright Act last for the life of the author, plus 70 years. 17 U.S.C. § 302. If a work was created as a work made for hire, anonymously or pseudonymously, then copyright protection lasts for 95 years after the date of first publication, or 120 years after the date of creation. Id. As a general rule, therefore, if an author is still living, one should assume that any tangible work created by this author is protected by copyright, and permission in advance would be required before anyone else could copy, display or distribute those works and not infringe the author’s exclusive rights.

Additional Recommended Reading

As mentioned above, the purpose of this post is to provide some guidance on the different terminology used to describe different IP rights. Some additional resources that are relevant to these basic concepts can be found below.

CARES Act Permits Extensions of Statutory Deadlines for Patent, Trademark and Copyright Matters

The “Coronavirus Aid, Relief, and Economic Security Act” (or the “CARES Act”) has been approved by both the House and Senate, and was signed by President Trump on March 27, 2020.

While the Act significantly impacts employers, employees and individuals alike, this article will address only the impacts of the Act on the U.S. Copyright Office and the U.S. Patent and Trademark Office (“USPTO”), and the newly granted authority of the Register of Copyrights and the Director of the USPTO to amend certain timeframes to deal with the coronavirus and the effects of business closures around the country.

USPTO’s Initial Response to COVID-19

At the beginning the coronavirus outbreak, the USPTO released a statement that confirmed it considers the effects of COVID-19 to be an “extraordinary situation,” but rather than putting a moratorium on official deadlines or suspending current activities before the USPTO, the USPTO would simply “waive petition fees” relating to inadvertently abandoned or cancelled patents or trademark applications/registrations due to the coronavirus. The USPTO further acknowledged that it would not grant waivers, extensions of deadlines or any relaxation of requirements set by statute. We practitioners have heard many times that in the absence of any delegation of specific authority by the legislature, the USPTO cannot amend any statutory deadline.

According to the “Official Notice” in its March 16 statement, the USPTO would waive the filing fees for trademark applicants or registrants to petition the Director to revive an application or a registration that was abandoned/cancelled due to the inability to respond to an Office communication “due to the effects of the Coronavirus outbreak,” provided that such requests were filed within two months after the issuance of the notice of abandonment/cancellation and provided that these petitions included a statement about how the applicant/registrant was affected by the outbreak. (Official Notice at 2).

With respect to patent filings, the USPTO placed even more restrictions: the petition fee would be waived, but only if the patent applicant or patent owner was unable to respond (or was delayed in responding) to an Office communication “because the practitioner, applicant, or at least one inventor, was personally affected by the Coronavirus outbreak such that they were unable to file a timely reply.” (Id. at 1). The petition filed must include a statement that the delay in filing the reply to the Office’s communication was due to the impacts of coronavirus on the filer.

In both cases, the USPTO made it clear that statutorily-set deadlines – such as (a) the deadline to file a nonprovisional application based on a prior-filed foreign patent application, (b) the full 36-month period in which to file a statement of use for a trademark application, (c) the deadline to file declarations of continued use under Section 8, or (d) the deadline to oppose a trademark application – could not be extended by the USPTO and would remain in force. (Id. at 3)

CARES Act – Copyright Office Deadline Extensions

The Copyright Office did not announce any suspension of deadlines for applications filed with the Office as a result of the coronavirus – but instead simply announced on March 13, 2020 that the physical Office would be closed to the public and all applications and other filings could still be made through the Copyright Office’s online systems.

The Senate’s March 25, 2020 amendment to the prior House version of the CARES Act includes a delegation of authority to the Register of Copyrights to permit extensions of deadlines under certain circumstances, under a provision entitled, “National Emergency Relief Authority for the Register of Copyrights.”  Specifically, Senate Amendment 1578 (Section 19011 at p. 84 of 96) permits the Register of Copyrights to extend certain deadlines with the following caveats:

  • The Register must determine that a national emergency “generally disrupt[s] or suspend[s] the ordinary functioning of the copyright systems, or any component thereof”.
  • The “national emergency” must be declared by the President under the National Emergencies Act (50 USC § 1601 et seq.).
  • A national emergency that disrupts or suspends the copyright systems on only a regional basis could still qualify as a “national emergency” permitting the extension of deadlines.
  • The extensions of deadlines could include a toll, waiver, adjustment or modification of “any timing provision including any deadline or effective period” provided that these extensions are only temporary and last no longer than the “Register reasonably determines to be appropriate to mitigate the disruption caused by the national emergency”.
  • The Register’s authority to amend deadlines can be retroactive, provided that the “deadline has not already passed before the declaration of a national emergency described in subsection (a) of this Section.

The Amendment clarifies that statutes of limitation (by which civil actions must be commenced or federal court actions filed) cannot be extended by this provision. Id. § (d).

CARES Act – USPTO Deadline Extensions

The temporary authority given to the USPTO Director to respond to an emergency is more narrowly defined than that under the Copyright Office section. In a section entitled “Temporary Authority of Director of the USPTO During COVID-19 Emergency,” Senate Amendment 1578 (Section 12004 at p. 66 of 96) permits the USPTO Director to “toll, waive, adjust or modify any timing deadline” established by the Patent Act (Title 35), the Trademark Act (15 U.S.C. § 1051 et seq.), Section 18 of the America Invents Act (35 U.S.C. § 321) “or regulations promulgated thereunder” if the Director determines that an “emergency” (as defined under subsection (e)) has the following effects:

  1. “materially affects the functioning of the” USPTO;
  2. “prejudices the rights of applicants, registrants, patent owners, or others appearing before the Office” (which presumably would include litigants in inter partes proceedings before the Patent Trial and Appeal Board (PTAB) or the Trademark Trial and Appeal Board (TTAB)); or
  3. “prevents applicants, registrants, patent owners or others appearing before the Office from filing a document or fee with the Office.”

Id. § (a). Item 3 is not broad enough to allow the Director to extend deadlines simply due to computer system failures at the USPTO (unless they happen to occur during the COVID-19 outbreak, during the national emergency declared by the President on March 13, 2020 or during any other emergency covered by this Section). Id.

Note that the “emergency” to which this Section applies “includes” (but does not appear limited to) the emergency declared by President Trump “pursuant to the National Emergencies Act on March 13, 2020 as a result of the COVID-19 outbreak (and any renewal thereof)” and continues for a 60-day period following such declaration. Id. § (e). The authority granted by this Section expires two years after the date of its enactment. Id. § (g).

Unlike the Copyright Section, this Section does not explicitly preclude the Director of the USPTO from retroactively impacting a deadline that has already passed, although one might interpret the timing of the emergency period as beginning “on or after the date of enactment of this Section” as limiting the Director to only change current or prospective deadlines. Compare Section 19011(b) (Copyright Office provisions) with Section 12004(e) (USPTO provisions).

NEXT STEPS

Now that the final bill has been signed into law, one would expect to see official announcements from both the USPTO and the Copyright Office to identify particular extensions to be expected for specified periods of time.

One confusing provision in both the Copyright Office and the USPTO provisions is that the Register/Director is required to submit a Report to Congress no later than 20 days after the termination to change the deadlines under this Act is made – but only if the extension of time is “in effect for a consecutive or cumulative period exceeding 120 days”. Id. § (c). Assuming the timing glitch is adjusted appropriately, then the Report must contain a description of the action taken, relevant background and a rationale for why the adjustment was made. Id.

(Once the Public Law version of the bill is available, this post will be updated with a link to it.)

Are There Deadlines to File Copyright Infringement Suits?

This article is the second in a series, analyzing the Supreme Court’s decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC., issued on March 4, 2019.

In the briefing submitted to the Supreme Court in connection with the Fourth Estate case, the petitioner argued that a determination that the registration certificates were required before filing suit would dramatically constrict a copyright owner’s ability to stop infringements and enforce its rights in court, given the statutory time limit in which to file suit. Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571, 2019 WL 1005829 at ¶ 20 (U.S. Mar. 4, 2019).  The Court dismissed this concern as “overstated,” noting that “the average processing time for registration applications is currently seven months.” Id.

However, the presence of a three-year statute of limitations on filing copyright infringement actions should instruct copyright owners to be diligent in policing their rights and seeking registration as soon as possible – or at least as soon as possible after infringement has occurred (if the infringed work was not already registered), so that the owner is not precluded from recovering its actual damages or enjoining further infringement. 17 U.S.C. § 507(b) (“No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.”) (emphasis added).

When Does a “Claim” Accrue?

The date when a copyright infringement claim accrues is also the subject of a circuit split – so copyright owners must also pay attention to the rule that applies in their jurisdiction. Continue reading

Copyright Registration Certificate Must be “In Hand” Before Filing Infringement Suit

This article is the first in a series, discussing the Supreme Court’s decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. issued on March 4, 2019.

Resolving a long-standing circuit split over whether copyright owners must have a copyright registration certificate in hand before filing a copyright infringement suit, the U.S. Supreme Court has ruled that it’s not sufficient to have simply filed a completed application, but that the Copyright Office must act on the application, either to grant or to refuse registration, before a copyright owner can commence a lawsuit to combat infringement. Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571, 2019 WL 1005829 (U.S. Mar. 4, 2019).

Copyright Registration – “Keys to the Courthouse”

Registration of a copyright in a work has long been considered the “keys to the courthouse” for copyright owners – meaning that while creative works written after 1978 were automatically protected by the Copyright Act (Eldred v. Ashcroft, 537 U.S. 186, 195 (2003) (confirming that “federal copyright protection . . . runs from the work’s creation”)), their owners could not sue for infringement until those works were registered with the Copyright Office. 17 U.S.C. § 501(b) (providing a private right of action for infringement of a copyright); id. § 411(a) (requiring registration before copyright owner was permitted to institute suit).

Incentives to Prompt Registration – Before Infringement

The Act provides several additional incentives for owners to apply for registration with the Copyright Office as soon as possible. In particular, if a work that has been registered is later infringed, the rights holder could recover statutory damages of up to $30,000 per work infringed (or up to $150,000 per work if the infringement were proven to be willful) and could recover its reasonable attorneys’ fees incurred in connection with enforcing its rights if it prevails in the case. Id. §§ 504(c), 505. Statutory damages and attorney’s fees are not available unless the work had been registered before the infringement occurred or within three months after first publication of the work. Id. § 412(2).

Prior Circuit Split – “Registration” versus “Application” Approaches

Until now, federal courts were split on the issue of whether a registration certificate was required (the “registration approach”) or whether it was sufficient to have submitted a completed application with the mandatory deposit copies and the correct filing fee to the Copyright Office for consideration (the “application approach”) before filing a complaint in federal court. Fourth Estate, 2019 WL 10055829, ¶ 4 (confirming that certiorari was granted to “resolve a division among U.S. Courts of Appeals on when registration occurs in accordance with § 411(a)); see also Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612, 615-16 (9th Cir. 2010) (collecting cases and noting circuit split); Zaslow v. Coleman, 103 F. Supp. 3d 657, 663 (E.D. Pa. 2015) (“Courts are divided over whether merely applying to the Copyright Office (the ‘application’ approach), or whether the Office issuing the registration (the ‘registration’ approach), sufficiently satisfies § 411.”). Continue reading

IP Claims Fail Against ISP for Merely Hosting Infringing Material

In a recent decision by the United States District Court for the Eastern District of Pennsylvania (ED Pa.), the court dismissed an individual author’s suit against Amazon for hosting an infringing copy of his copyrighted work. Parker v. Paypal, Inc., Civil Action No. 16-4786, 2017 WL 3508759 (E.D. Pa. Aug. 16, 2017).

I.  THE FACTS

Plaintiff, Gordon Roy Parker, wrote a book entitled “Outfoxing the Foxes: How to Seduce the Women of Your Dreams,” for which he registered his copyright in 1998. In October 2015, he learned that his book was being sold online as part of an “anthology of books and articles written by and for pickup artists.” Id. at *2. He requested that the work be removed from the site – which appears to have occurred, at least for a time.

Several months later, in December 2015, he learned that sales of the anthology (including his copyrighted work) had resumed. In addition to seeking a take down of the book from this site, and to restricting the site’s access to its PayPal account, Parker notified Amazon.com, Inc. and Amazon Web Services, Inc. (collectively, “Amazon”) regarding Amazon’s hosting of the infringing work. (The Court’s opinion does not discuss any response by Amazon at this time.)

Parker alleges in his complaint that despite providing such notice to Amazon, the infringing work was still being hosted through Amazon’s cloud servers at least as late as Spring 2016.

In a May 2016 email, Parker told Jeff Bezos (CEO of Amazon) about the infringement and said that Parker was removing six of his titles from Amazon’s Kindle Books program. The distribution of his books through Kindle was undertaken under contract between Parker and Amazon. In response to Parker’s email, representatives of Amazon asked him to report potentially infringing material “consistent with the Digital Millennium Copyright Act.” Id. at *3. (Note: Within Amazon’s Conditions of Use Page, its “Notice and Procedure for Making Claims of Copyright Infringement” Section includes a link to an online form to report instances of infringement.)

II. AMAZON MOVED TO DISMISS THE CLAIMS

Amazon moved to dismiss Parker’s claims against it on the grounds that: (1) Parker failed to state a proper claim for copyright infringement or unfair competition as to Amazon; (2) Parker’s claim for breach of contract (based on the Kindle publishing agreement for seven of his e-books, including the infringed work) was pre-empted by the Copyright Act; and (3) the remaining claims for misappropriation of likeness and unjust enrichment are barred by the Communications Decency Act, 47 USC § 230 (“CDA”).

The Court agreed with Amazon’s analysis and dismissed Parker’s complaint as to Amazon. (Note that the case still proceeds with respect to other defendants.)
Continue reading