Intellectual Property
Intellectual property is a work or invention that is the result of creativity to which one has rights and for which one may apply for a copyright, trademark, or patent. It includes a wide variety of property created by musicians, artists, authors and inventors, including trade dress and trade secrets. Works may be protected in several ways, such as Apple's apple logo, which is covered by both copyright and trademark laws. Different laws give different protections for different periods of time, and a creator may take advantage of all applicable laws. Likewise, recipes are not copyrightable, as they are factual -- lists of ingredients and instructions. A unique recipe may be eligible for a patent, but a creator may opt to not patent the recipe in order to not make it public, and instead have the recipe as a trade secret.
The United States Constitution Article I Section 8 provided that Congress shall have the power "[t]o 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." The Constitution also contains a First Amendment, "Congress shall make no law ... abridging the freedom of speech, or of the press." The two are related. "The Framers intended copyright to be the engine of free expression. By establishing a marketable right to the use of one's expression, copyright supplies the economic incentive to create and disseminate ideas." Harper & Row v. Nation Enterprises, 471 U.S. 539, 558 (1985). "When, in 1790, George Washington asked Congress to enact copyright legislation, he argued that it would increase the national stock of knowledge. And knowledge, he said, is 'the surest basis of public happiness'" Mann, Charles C. 1998. Who will own your next good idea? The Atlantic Monthyl 282(3): 57-82, 58.
Intellectual property rights can be sold. They can be licensed exclusively or non-exclusively. And they can be used as collateral to obtain financing.
Copyrights
Copyrights protect works that are in a literary, artistic, educational, or musical form. In other words, things like photographs, novels, short stories, articles, paintings, movies, documentaries, songs, dance, software code, and architecture. These items are tangible, that is, they are capable of being precisely identified or realized by the mind. A copyright exists at the moment of creation, and at that time, the owner of the creation has the exclusive right to reproduce and profit from it. It protects the individual expression; it is not a monopoly on the ideas, facts, or information. The copyright lasts for the creator's life plus 70 years. If the creator is a corporation, the term is at least 95 years, as "works for hire" are protected by the life of the creator plus 95 years. If the work is anonymous (including those using pseudonyms), the copyright lasts for 95 years from first publication or 120 years from creation, whichever expires first. There is no requirement that a copyright be registered with the U.S. Copyright Office, but registration does provide additional protections, like the right to sue and obtain statutory damages. There is no such thing as an international copyright, but the United States does have treaties with some nations that require reciprocal recognition of copyrights.
U.S. Copyright Law is found at 17 United States Code (U.S.C.) §106 et seq. Under U.S. law, copyright owners have the exclusive right to: (1) reproduce the work, 17 U.S.C. §106(1); (2) prepare derivative works based on the work, §106(2); (3) distribute copies of the work, §106(3); (4) in the case of literary, musical, dramatic, and choreographic works, pantomimes and motion picturesj and other audiovisual works, to publicly perform the work, §106(4); (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 picutre or other audiovisual work, to publicly display the work, §106(5); and (6) in the case of sound recordings, to publicly perform the work by means of a digital audio transmission, §106(6).
Registration of a copyright can be done online (see link below), with payment of a registration fee under $100.00. A lawyer is not required. Why register? The U.S. Supreme Court held unanimously that copyrights must be registered before owners can pursue lawsuits over alleged violations: Fourth Estate Public Benefut Corp. v. Wall-Street.com, LLC, et al. (2019).
Pursuant to Section 203 of the Copyright Act, the creator of a copyrighted work who, during his/her lifetime, transferred all or some of the rights to the work on or after January 1, 1978, may terminate the transfer and regain the rights after a certain period of time, generally at least 35 years. However, there is a limited time frame, five years, in which to terminate. It begins at the end of the 35 years from the date the grant was made. In the case of grants that included the right to publish, it begins at the end of 35 years from the date of publication or 40 years from the date of the grant, whichever is earlier. Termination is a use-it-or-lose-it proposition. The statute was enacted to give authors the opportunity to regain rights they may have signed away when they had little bargaining power, but if they do not take advantage of it within the time period, the opportunity is gone. The notice of termination mus be served (by personal service or first class mail) no later than two years before the intended termination date, but may be served up to ten years before the beginning of the five year period. Once the author has sent the notice of termination, but before termination takes effect, the statute allows thre original granteee a first change to renegotiate the rights.
The requirements of the Notice of Termination are found in the federal regulation, CFR §201.10. The Notice must be in writing, clearly state that the termination is being made under Section 203 of U.S.C. Title 17, be signed by the author(s) terminating, state the intended date of termination - which must fall within the five year period, identify the grant or grants sought to be terminated, its date of execution, and if applicable, the date of publication of the work under the grant. Before serving notice, make a reasonable investigation as to the current ownership of the rights to be terminated, as the notice must be served on the current holder. The Notice must also be recorded with the Copyright Office prior to the effective termination date, in order for the termination to become effective.
If the author is alive, only the author may terminate the grant of rights. Termination in the U.S. does not affect foreign rights in the copyrighted work, since those are not covered by the Copyright Act. There is an exception for adaptations - derivative works - of the copyrighted work. Section 203 does not apply to works made for hire, grants made by the author in his/her Will, and transfers by the author's successors. When an author dies, his/her termination right is inherited as set forth in the statute. If the work was jointly authored, a majority of those who signed the grant, or their heirs, must request termination.
With music, there are two distinct copyrights: the song composition (the arrangement of the music and the lyrics), and the tangible sound recording of the music (known as the "master"). Traditionally, record labels owned the sound recording and the musicians retained the publishing rights, resulting in many artists not having full control over their music.
Copyright Law (Library of Congress) Forms to Register a Copyright with the U.S. Copyright Office Registering a Copyright with the U.S. Copyright Office Copyright Basics (U.S. Copyright Office) Mandatory Deposit FAQs (U.S. Copyright Office) Group Registrations of Literary Works (U.S. Copyright Office) Cataloging in Publication Program (Library of Congress) Circular 38A: International Copyright Relations of the United States The Digital Millenium Copyright Act (U.S. Copyright Office) Copyright and Artificial Intelligence (U.S. Copyright Office) Communications Decency Act of 1996, 47 U.S.C. §230 Child Online Protection Act (COPA), 47 U.S.C. §231 (Federal Trade Commission) Using Music in Political Campaigns: What you Should Know (ASCAP) U.S. Supreme Court decision in Georgia et al. vs. Public.Resource.Org, Inc., wherein it was held that the State of Georgia was ineligible to have a copyright in the annotations to the Official Code of Georgia. The opinion discusses "the government edicts doctrine," that no one can own the law. Notices of Termination (U.S. Copyright Office) Getting Rights Back: Termination of Transfer (Authors Alliance) New York City Law: Freelance Isn't Free Act
"Copyright comprises the exclusive - incorporeal - rights to reproduce and publicly perform or transmit works; it does not reach the physical object that embodies the work. Thus, once the copyright owner sold a copy of the work, that copy - in its physical manifestation - became the personal property of its new owner, who could resell, lend, or otherwise dispose of her chattel." Copyright Without Walls?: Speculations on Literary Property in the Library of the Future, by Jane C. Ginsburg, 42 Representations 53, 54 (footnotes omitted) (1993). In other words, one has bought the book (which one may resell, etc.), but one has not bought the story. Professor Ginsburg explored issues that would arise with digital publications in libraries.
Categories of Publishing: Trade Books (adult hardcover and paperback, juvenile hardcover and paperback, mass market fiction and nonfiction); Religious Books (Bibles, hymnals, prayer books & other texts); Professional Books (law, business, medicine, science/technology); Scholarly Books (academic texts, including university presses); Elhi Books (textbooks, workbooks, supplements); College Books (textbooks, workbooks, review books); and Standardized Texts.
The Authors Guild Media Liability Insurance (The Authors Guild) Writers' Resource Library (The Authors Guild) Contracts 101 for Artists (NY Artists Equity Association, Inc.) Sample Life Story Rights Agreement The Authors Registry: a not-for-profit clearinghouse for payments to authors, receiving royalties from organizations distributing them to U.S. authors. It was founded in 1995 by a consortium of U.S. authors' organizations, namely The Authors Guild, The American Society of Journalists & Authors, the Dramatists Guild, and the Association of Authors' Representatives. Artists Rights Society The Mechanical Licensing Registry: a nonprofit organization designated by the U.S. Copyright Office pursuant to the Music Modernization Act of 2018. National Music Publishers' Association Nashville Songwriters Association International Digital Media Association Arts Services Inc.
A Guide to the Visual Artists Rights Act by Cynthia Esworthy (Harvard University School of Law)
Key Decisions - Transformative Works: Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (Library of Congress) Summary of the Campbell decision (U.S. Copyright Office) Summary of the Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith decision, 2nd Circuit (U.S. Copyright Office), appeal now pending before the U.S. Supreme Court.
History of Copyright Through the Courts: Folsom v. Marsh, 9 F. Cas. 342 (C.C.D. Mass. 1841) Baker v. Selden, 101 U.S. 99 (1879) Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884) Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903) Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930), cert. denied, 282 U.S. 902 (1931) Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984) (often referred to as the Betamax Case) - addressed secondary liability for copyright infringement Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) - held that the distribution of a product capable of both infringing and non-infringing uses, with the clearly shown object of promoting copyright infringement, and actual copyright infringement by users of the product, may establish contributory infringement on the part of the distributor. Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985) - addressed "fair use" in regards to unauthorized use of quotations from the unpublished manuscript of former President Gerald Ford's autobiography, A Time to Heal. Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991) - held that the white pages of Rural's telephone directory were unprotectable by copyright since they lacked originality. American Geophysical Union v. Texaco, Inc., 60 F.3d 913 (2d Cir. 1994) - addressed systematic institutional photocopying of copyrighted works Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996 (2nd Cir. 1995) - regarding sweaters. Yurman Design, Inc. v. Paj, Inc., 262 F.3d 101 (2nd Cir. 2001) - regarding jewelry design. Eldred v. Ashcroft, 537 U.S. 186, 123 S.Ct. 769, 154 L.Ed.2d 683 (2003) upholding the constitutionality of the 1998 Sonny Bono Copyright Term Extension Act (CTEA). Kerson v. Vermont Law School, Inc. (2nd Cir. 2023) - School can cover up murals that it believes are racially insensitive, even though the artist disagrees. Thaler v. Perlmutter, (2023) - The work created by Artificial Intelligence is not copyrightable. "Human authorship is a bedrock requirement."
Elements of Contributory Infringement: (1) Direct infringement to which the accused contributed; (2) the accused must actually know, or constructively know (i.e., deemed by the law to have known) that direct infringement is occurring; and (3) the accused must materially contribute to the actual direct infringement.
Elements of Fair Use: (1) Nature of the use - generally socially desirable uses, such as education or journalism, as opposed to commercial uses, and transformative instead of merely redistributive uses, are more likely to qualify for fair use; (2) nature of the work - taking of factual works are more likely to qualify as fair use than taking fictional works, as would published works versus unpublished works; (3) amount of work copied - taking the "heart of the work" may be unfair even if it is small; and (4) market effect - looks not just at the defendant's conduct, but whether widespread conduct such as the defendant's would substantially and adversely impact the potential market for the underlying work.
When a copyright expires, the work enters the public domain and may be used by anyone.
Trademarks
Trademarks protect a word, phrase, symbol, or device used in commerce to distinguish one product from another. Trademarks help make the difference between products clear. They identify brands and their sources. Trademarks are classified as to types of goods and services. While a company may have a trademark for a type of product, another company may be able to trademark the same word, phase, symbol or device for another type of product. Whether the other company can depends on whether it would likely confuse consumers as to the source, type and quality of the product or service they are purchasing. The purpose behind protecting trademarks is in that way different from copyrights and patents -- trademarks protect the consumer, while the latter protect the creator or inventor. Nevertheless, trademarks help protect an entity's "goodwill" by not allowing their mark to be used by inferior products or services.
A color can be tradmarked. Qualitex Co. v. Jacobson Products Co., Inc., 514 US 159 (1995); In re Owens-Corning Fiberglas Corporation, 774 F.2d 1116 (Fed. Cir. 1985); Christian Louboutin v. Yves Saint Laurent America, 696 F.3d 206 (2nd Cir. 2012). Color is part of a product's appearance, also known as "trade dress," such as the distinctive Tiffany blue box. The Apple Store design is trademarked, as is the MAC start up chime.
The use of a trademark without registration limits protection to the areas where the trademark is used on a product or service. This protection arises under the common law.
A trademark can be registered in New York State under the state's law, but protection is limited to New York State. NYS General Business Law Article 24. Registration is with the New York State Department of State. A trademark may also be registered in other states where applicable.
On the federal level, trademarks are registered with the U.S. Patent and Trademark Office. Federal trademarks are protected so long as they are used in interstate commerce. They do not expire, provided companies keep submitting the proper paperwork evidencing use of the trademark in interstate commerce.
The U.S.Supreme Court held unanimously that a trademark infringement plaintiff doesn't have to show willful infringement by the defendant to obtain an award of profits: Romag Fasteners, Inc. v. Fossil Group, Inc., fka Fossil, Inc., et al (2020).
Trademarks (U.S. Patent and Trademark Office) Classifications of Trademarks (U.S. Patent and Trademark Office) Federal Trademark Dilution Act of 1995 (U.S. Congress) Register a Servicemark in New York State (NYS Department of State) Register a Trademark in New York State (NYS Department of State)
Trademark Licensing From the trademark owner's perspective, licensing can provide a way to increase revenue and brand presence without the need to increase capital. From the licensee's perspective, it can be a way to team existing assets with the hot properties consumers are looking for, thereby creating markets that previously did not exist. Sample Clauses - Trademark Licensing Agreement
A Defense of the New Federal Trademark Antidilution Law, by Barton Beebe, Fordham Intellectual Property, Media and Entertainment Law Journal (Vol. 16:4, 2006).
A Trade Dress is the look and feel of products, packaging or place of business. Trade Dress is also registered the the U.S. Patent and Trademark Office. The exterior design of IHOP's restaurants is protected as trade dress.
A Trade Secret is information that a business uses that is not widely known or easily discoverable by others. It includes secret devices, techniques, formulas, and recipes. A trade secret must have economic value and be kept secret from third parties. Once a trade secret is disclosed, it is lost forever.
Patents
Patents protect novel inventions or discoveries. It does not protect ideas, but does protect almost anything new "made by man." Machines, manufactured articles, processes, methods, compositions of matters, and improvements of earlier patented products, are among the items that may be patented. Patents come in several types: utility, which is of functional or technical features; design, which is of the ornamental appearance of products; and plant, which are of plants that are stable and asexually reproduced. To be protected, a patent must be registered, and the application must be filed before anyone else files for the patent. Utility and plant patents last for 20 years from date of the patent application. Design patents last for 15 years from the date of the patent application. Notably, a patent does not give a right to produce, use, sell, or import the invention, just protection from others doing so. Whether an invention can be developed is dependent on many factors, including whether it can be compliant with all applicable laws.
As the patent is an exchange for information that the applicant possesses, the description of the invention in the patent must be sufficient to enable the public to make and use the invention when the patent expires.
Patents (U.S. Patent and Trademark Office) Google Patents: a search engine. Patent Pro Bono Program for independent inventors and small businesses (U.S. Patent and Trademark Office) Henry Ford Museum of American Innovation
35 U.S.C. § 102(c) provides that an inventor shall be entitled to a patent unless he has abandoned his invention. It is distinguishable from abandonment of a patent application, and from the abandonment, suppression or concealment under 35 U.S.C. § 102(g). Additionally, abandonment under § 102(c) refers to an abandonment of the right to a patent, not an abandonment of the thing invented. In re Gibbs, 437 F.2d 486 (C.C.P.A. 1971). To prove abandonment, there must be proof that the inventor intended to abandon his right to a patent. This intent may be implied from the inventor's conduct. Ex part Dunne, 20 U.S.P.Q.2d 1479, 1480 (Bd. Of Patent App. And Int. 1991).
Issued patents are presumed valid. 35 U.S.C. §282. The burden is on the party asserting abandonment of an issued patent to show abandonment by clear and convincing evidence. Moore v. U.S., 194 U.S.P.Q. 423, 428 (Ct. Cl. Trial Div. 1977).
A joint venture is one in which economically independent entities join for a common commercial purpose. Absent an agreement to the contrary, each joint owner can exploit the patent without the permission of the other and without any duty to share royalties. The joint owner's right includes the right to license third parties. 35 U.S.C. §262 (1996).
More Resources
Libraries, Databases, & Museums
Institute of Museum and Library Services The American Association of Law Libraries The Avalon Project: Documents in Law, History and Diplomacy (Yale University) The Discography, a legal encyclopedia of popular music.
Foundations The Cultural Landscape Foundation
What About Those Ideas?
Section 102 of the Copyright Act does not protect an idea, only the expression of that idea in a tangible medium. Thus, it may not protect one who is pitching ideas.
New York State case law may provide protection. Relief may or may not be had in actions for breach of contract (written, oral, or implied-in-fact) or misappropriation of property (property, not contract, law). See, e.g., High v. Trade Union Currier Publ. Corp., 69 N.Y.S.2d 526 (Sup. Ct. N.Y.Co. 1946), aff'd, 89 N.Y.S.2d (1st Dept. 1949); Apfel v. Prudential-Bache Sec., Inc., 81 N.Y.2d 470, 473 (1993) (express contract); Giangrasso v. CBS, Inc., 534 F.Supp. 472 (EDNY 1982) (implied contract); Adsani v. Miller, 1996 WL 194326 (SDNY 1996) (misapporiation); Oasis Music Inc. v. 900 USA Inc., 614 N.Y.S.2d 878 (1994) (misappropriation). The idea has to be novel in order to merit protection. See, e.g., Hudson Hotels Corp. v. Choice Hotels Intl., 995 F.2d 1173 (2d Cir. 1993) (non-novel idea cannot be a protected trade secret); Murray v. National Broad Corp., 844 F.2d 988 (2d Cir. 1988) (idea of portraying an upper middle class black family not novel, therefore no implied-in-fact contract); Nadel v. Play-by-Play Toys & Novelties, Inc., 208 F.3d 368 (2d Cir. 2000) (a "showing of novelty to the buyer will supply sufficient consideration to support a contract"). Keep in mind that in New York State, any contract that cannot be performed within one year is subject to the Statute of Frauds (NYS General Obligation Law §5-701(a)(1)), and as such, must be in writing.
Chances are, though, that you wind up in California to pitch your idea, and thus the exchange falls under California law. Notable cases: Desny v. Wilder, 46 Cal. 2d 715 (Sup. Ct. Cal. 1996) (ideas are "as free as the air"); Blaustein v. Burton, 9 Cal. App. 3d 161 (2d App. Dist. 1970) (implied-in-fact contract); Chandler v. Roach, 156 Cal. App. 2d 435 (1957) (Implied-in-fact contract); Whitfield v. Lear, 751 F.2d 90 (2d Cir. 1984) (applied California law; implied contract); Landsberg v. Scrabble Crossword Game Players, Inc., 736 F.2d 485 (9th Cir. 1984) (impled contract); Buchwald v. Paramount Pictures, Corp., 1990 Cal. App. LEXIS 634 (Sup. Ct. Cal. 1990) (Coming to America movie; enforceable option contract); ; See also, Baer v. Chase, 392 F.3d 609 (3d Cir. 2004) (The Sopranos television series; express contract too vague to be enforced, not fixed in terms of duration or price). Due to the litigation in Whitfield, most studios refuse to accept any unsolicited ideas unless the author signs a release giving up all rights to the material.
The dissent in Desny v. Wilder, supra, argued for protections for the author/artist, pointing out the differences in economic and social statuses of the parties in most transactions.