What is Intellectual Property

There are three types of property that can be owned by a person or entity. The first two types are “real property” (i.e., land and materials that are attached or “fixed” to the land) and “chattel,” also sometimes know as “personal property” (i.e., movable goods). Ownership and the rights associated with ownership of these are pretty straightforward. In general, ownership of these types of property means the right to possess it, the right to enjoy it, the right to sell it and the right to prevent everyone else on Earth from doing the same. 

The laws that deal with ownership and control over these types of property usually concern questions that come about based on disputed ownership and shared ownership. There is usually little question as to what constitutes ownership of a parcel of real property or a physical object and there is usually little question as to what the ramifications of complete ownership of such property mean.

EXAMPLE (1): Batman owns the Batcave. As such, he has the right to prevent Joker from entering onto the premises of the Batcave and he has the right to dwell in the Batcave himself, among other rights that his ownership of the Batcave inherently gives to him. The complex rules of real property may become an issue when and if Penguin stakes a legal claim to the Batcave or when and if Batman conveys or leases the Batcave to Robin. However, there is little confusion as to Batman’s rights in the Batcave so long as his ownership of the premises remains unchallenged.

EXAMPLE (2): The Tick, somewhat lesser-known but still as real as a superhero can be, does not own any real property. Instead, he lives with his sidekick Arthur, who wears a moth outfit while battling crime. When the Tick jumps to action he cries “Spoon!” and last year Arthur gave him a spoon for Christmas, which the Tick prizes dearly. As owner of this chattel, the Tick may eat with it, display it on his wall, wear it in his belt as a weapon, or (more likely) misplace it somewhere never to be seen again. Once Arthur gives him the gift, the Tick has the “full bundle of rights” which come with ownership of the spoon.

The third type of “property” that can be owned by a person or entity is “intellectual property.” Ownership of intellectual property cannot be crystallized and defined as clearly as can the other two types of property because the property itself is intangible – it cannot be held, touched, or defined by physical boundaries. Instead, “intellectual property” is the ownership interest that a person or entity may have in creations of the human mind. Ownership of intellectual property means ownership of a concept or idea rather than ownership of a parcel of property or object. Of course, as with real property and chattel, intellectual property can be sold or otherwise conveyed.

Intellectual property is usually initially owned by the person who thought of the concept or idea that is the subject of the intellectual property, although it can often be transferred or released though agreement, transaction, operation of law, or simply the passage of time. While it is held, ownership of intellectual property allows its owner to exclude other people from using the ideas or concepts that comprise the intellectual property at issue. Depending on the type of intellectual property at issue and governing law, this right may be limited to preventing other people from using the intellectual property at issue for commercial purposes.

EXAMPLE: Calvin invents the “transmorgofier,” a brilliant device that allows its user to transform any person into an animal that best approximates the behavior of that person. If Calvin has gone through the appropriate steps to secure ownership of the intellectual property that encompasses the design of the “transmorgofier,” then he will have the legal power to prevent Hobbes from selling the same device, even if Hobbes manufactures transmorgofiers using only his own materials. This is because Calvin owns the idea behind the transmorgofier, not just the prototype that he may have created.  Calvin may also be able to prevent Hobbes (and anyone else) from using the word “transmorgofier” in certain respects, as Calvin may own certain rights in the word.  

Types of Intellectual Property

There are three basic areas of intellectual property that will be dealt with in this course: copyrights, trademarks, and patents.

Copyrights provide protection for works that were authored by the copyright holder. Those works can be in any form and can be delivered through any medium. Thus, copyright protection can protect written essays or books, songs, paintings and other works of art, movies, computer software, etc. See 17 U.S.C. § 102.   Copyright protection for any original work is automatic and it arises immediately upon completion of a work. Still, the protection afforded can be greatly enhanced by registering the copyright with the Copyright Office.

Note that copyright ownership usually allows the owner to prevent dissemination of the work and it prevents any other person from copying elements of the copyrighted work for his or her own commercial benefit.

EXAMPLE: J.K. Rowling, author of the popular “Harry Potter” book series, holds a copyright on the book series. This allows her to prevent anybody from reproducing or re-selling any Harry Potter books without her permission (or, of course, the permission of the publishing company to whom Ms. Rowling has sold the publishing rights). In addition, if another author named Play Gerizer publishes “his own” book called “Harry Potter and the Overcooked Spaghetti” that shares many of the same characters and plotlines of the original Harry Potter series, Rowling would have a cause of action against Gerizer. Even if Gerizer’s book slightly changes the names and places in the book, Gerizer may still have violated Rowling’s copyright if he stole the expression of her ideas.

Trademarks are words or symbols that are used by a manufacturer or seller of an item that serve to identify and distinguish the goods of that proprietor from those of all others. Trademark protection arises automatically upon the usage of the trademark in commerce. However, as with copyrights, trademarks may be registered with government authorities. Taking this step affords the holder of the trademark much greater protection than would be available in the case where the trademark is not filed. 

Trademarks can apply to slogans, mottos, or logos, and can even apply if the goods of a particular manufacturer or seller are packaged in a unique way (called “trade dress”). However, it must be noted that marks, designs or logos must be unique or at least be very distinctive before they will be offered trademark protection. The effect of trademark protection is that other companies may not use those words/that design or any words/designs that are “confusingly similar” to the trademarked words/design on their products. See Storck USA, L.P. v. Farley Candy Co., 22 U.S.P.Q.2D (BNA) 1204 (N.D. Ill. 1992). 

EXAMPLE: Petals ‘r Us is a nationwide flower delivering company whose motto has been for the past 20 years, “We bring fresh flowers to your front door for very reasonable prices.” A new flower delivery company, “1-900-FLOWERS” starts employing the slogan “We bring fresh flowers to your front door or your back door for low low prices.” Even though the 1-900-FLOWERS slogan has changed some of the words from the Petals ‘r Us slogan, a court may rule that the slogans are confusingly similar. Thus, it may rule that 1-900-FLOWERS has violated Petals ‘r Us’ trademark if customers are likely to be confused.

Although traditionally trademarks apply to goods only, if services are involved, the “service mark” performs the same function. Today, the concept of trademark has come to encompass services as well.

EXAMPLE: Buddy Hill’s father is sick of giving the kid money every week, and tells him to get a job of his own. After Buddy is fired from three consecutive positions (once for sleeping on the job, once for eating on the job, and once for sleep-eating on the job) he decides to go into business for himself. To advertise his new business he makes a sign which reads “Buddy’s Surprise Service! Give your loved-one a surprise! Jumping from behind bushes and yelling ‘BOO!’ is my specialty!” Along with the slogan, Buddy draws a stick-figure of himself and a green bush, which serves as his logo. Buddy is not selling any goods whatsoever, but is simply providing a (valuable?) service. Once he enters into commerce using this sign and people begin to associate the slogan and logo with Buddy’s business, he will obtain some measure of protection against others in the area using his same service mark. Of course, that doesn’t mean he can prevent others from offering the same service…watch out for competition, Buddy!

Patents provide protection for the inventors or developers of inventions or techniques that are new and useful and that are not obvious to the average person. See Nadel v. Play-By-Play Toys & Novelties, Inc., 208 F.3d 368 (2d Cir. 2000). Patents can affect “hard” technologies such as developed products and inventions, and can be applied to designs and methods in which products can be manufactured and put to use. See 35 U.S.C. § 101. Note that, in order to be eligible for patent protection, an idea or product must be something that does not already exist in that form and it must not be something that can be easily deduced from a currently available idea or design.

EXAMPLE: Bill creates a rechargeable 9 volt battery that can be recharged simply by leaving it out in the sun for three hours - as it can be regenerated by solar power. Until that time, all rechargeable 9 volt batteries had to be plugged into an electrical source to recharge. Even though rechargeable batteries are nothing new and 9 volt batteries previously existed, the facet of Bill’s battery that allows it to recharge by allowing it to sit in the sun could be protected by a patent.

See United States v. Adams, 383 U.S. 39 (1966).  

Unlike copyrights and trademarks, patents are only created and effective once they are applied for and granted by appropriate government authorities. While copyright and trademark protection is strengthened by the proper filings, patent protection does not even exist until the proper filings are made and approved. The protection granted by patents is very powerful. Such protection prevents “reverse engineering” (see terms) by other people and it protects the holder against “independent discovery” (see terms).

A form of intellectual property that is related to the patent is the trade secret. A trade secret is information related to the proprietary development of a commercial product that is not generally known to the public. A trade secret is inherently protected even without any filing with the government. There is no such thing as filing a trade secret, as trade secrets would be protected through maintenance of confidentiality. Unlike patents, trade secrets do not protect its owner against reverse engineering or independent discovery. 

EXAMPLE (1): Coma-Cola, a large soft drink manufacturer, adds a secret ingredient to all of its soft drinks that allows its drinkers to feel really good after drinking Coma-Cola products. One day, Barbara, a tourist who is touring the Coma-Cola manufacturing plant and who accidentally stumbles into the wrong room, accidentally discovers that the secret ingredient in Coma-Cola is a small dose of a tranquilizer. Even if the production of Coma-Cola is not a patented process, Barbara may not make this information public and she may not use this information to produce her own soft drinks that are copies of Coma-Cola.

EXAMPLE (2): Stewie is trying to devise a way to rid himself of a particularly annoying family member. Finding a bottle of Fizzy Cola, he experiments with adding different substances in an effort to find something which will do the trick. One of his attempts leads him to a mixture which has the same effect as Coma-Cola, and he realizes that he must have hit upon the secret ingredient. He knows that he can legally market this independently-discovered formula, because patent law won’t protect against it. Unfortunately, his mother mistook his lab notes for the random scribblings of a baby playing with crayons and threw them away. Foiled again.