McDonald's double arches,
Apple Computer's Apple.
One of the most misunderstood areas of law that affect us every day is Copyright law. What rights do you as a consumer have versus the rights of a corporation or individual who produces copyrightable material? What's the difference between a Patent and a Copyright? What about trade secrets? This document will attempt to answer these questions in concise terms and then apply them to a few situations that people find themselves in on a regular basis.
The Copyright Act grants five rights to a copyright owner, which are described in more detail below.
The rights are not without limit, however, as they are specifically limited by "fair use" and several other specific limitations set forth in the Copyright Act.
The reproduction right is perhaps the most important right granted by the Copyright Act. Under this right, no one other than the copyright owner may make any reproductions or copies of the work. Examples of unauthorized acts which are prohibited under this right include photocopying a book, copying a computer software program, using a cartoon character on a t-shirt, and incorporating a portion of another's song into a new song.It is not necessary that the entire original work be copied for an infringement of the reproduction right to occur. All that is necessary is that the copying be "substantial and material."
The right to make a derivative work overlaps somewhat with the reproduction right. According to the Copyright Act, a derivative work is
a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.A derivative work usually involves a type of transformation, such as the transformation of a novel into a motion picture. In the computer industry, a second version of a software program is generally considered a derivative work based upon the earlier version.
The distribution right grants to the copyright holder the exclusive right to make a work available to the public by sale, rental, lease, or lending. This right allows the copyright holder to prevent the distribution of unauthorized copies of a work. In addition, the right allows the copyright holder to control the first distribution of a particular authorized copy. However, the distribution right is limited by the "first sale doctrine", which states that after the first sale or distribution of a copy, the copyright holder can no longer control what happens to that copy. Thus, after a book has been purchased at a book store (the first sale of a copy), the copyright holder has no say over how that copy is further distributed. Thus, the book could be rented or resold without the permission of the copyright holder.
Congress has enacted several limitations to the first sale doctrine, including a prohibition on the rental of software and phonorecords.
The public performance right allows the copyright holder to control the public performance of certain copyrighted works. The scope of the performance right is limited to the following types of works:
Under the public performance right, a copyright holder is allowed to control when the work is performed "publicly." A performance is considered "public" when the work is performed in a "place open to the public or at a place where a substantial number of persons outside of a normal circle of a family and its social acquaintances are gathered." A performance is also considered to be public if it is transmitted to multiple locations, such as through television and radio. Thus, it would be a violation of the public performance right in a motion picture to rent a video and to show it in a public park or theater without obtaining a license from the copyright holder. In contrast, the performance of the video on a home TV where friends and family are gathered would not be considered a "public" performance and would not be prohibited under the Copyright Act.
The public performance right is generally held to cover computer software, since software is considered a literary work under the Copyright Act. In addition, many software programs fall under the definition of an audio visual work. The application of the public performance right to software has not be fully developed, except that it is clear that a publicly available video game is controlled by this right.
The public display right is similar to the public performance right, except that this right controls the public "display" of a work. This right is limited to the following types of works:
The definition of when a work is displayed "publicly" is the same as that described above in connection with the right of public performance.
Works that have not been fixed in a tangible form of expression are not protected under the Copyright Act, since fixation is one of the prerequisites for copyright protection. For example: choreographic works that have not been notated or recorded, or improvisational speeches or performances that have not been written or recorded are both ineligible for copyright protection. For many years, unrecorded music concerts were also unprotected by copyright law because they were not fixed. This caused problems when bootleg tapes of rock concerts would appear, since there was no cause of action under the Copyright Act (there was often protection under certain state statutes and common law, however). This meant that the availability of copyright infringement actions against bootleggers depended on whether the performers bothered to record the concert.
In December, 1994, Congress changed the law of unrecorded music performances when it passed The Uruguay Round Agreements Act. This act included a new provision, which prohibited the recording of live musical performances (that is, bootleg copies) even when there was no other "fixation" of the work. This provision includes separate prohibitions against the distribution and transmission of bootleg copies. In fact, the prohibition against transmission does not even require that a physical copy of the performance ever be made. While this act appears to create an exception to the fixation requirement for copyright, it is probably best understood as an independent right that is similar to copyright, but is not copyright.
Titles, names, short phrases, and slogans are not protected by copyright law. Similarly, it is clear that copyright law does not protect simple product lettering or coloring, or the mere listing of product ingredients or contents. The exclusion of these types of materials is not an exception to copyright law, but merely an application of the requirements for copyright protection. To be protected by copyright, a work must contain at least a minimum amount of authorship in the form of original expression. Names, titles, and other short phrases are simply too minimal to meet these requirements. This is why you will often see books and movies sharing the same title.
Of course, brand names, slogans and phrases which are used in connection with a product or service may be protectable under trademark law (see the section on trademarks for more information). In fact, a series of books all under the same title may even create trademark protection for that title.
Ideas, procedures, principles, discoveries, and devices are all specifically excluded from copyright protection. As stated in the Copyright Act:
In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.
This specific exclusion helps maintain the distinction between copyright protection and patent law. Ideas and inventions are the subject matter for patents, while the expression of ideas is governed by copyright law. If copyright were extended to protect ideas, principles and devices, then it would be possible to circumvent the rigorous prerequisites of patent law and secure protection for an invention merely by describing the invention in a copyrightable work.
An example is the best way to explain this idea/expression distinction. Suppose that an inventor discovers a process for cold fusion--an invention that would revolutionize society as we know it. If the inventor were to write down on paper a description of the process, that description would be protected against copyright infringement from the moment the work is fixed. If she were to publish her paper, no one would be able to make additional copies of the paper without her permission. However, anyone reading her paper could implement her process without fear of copyright infringement, since the process itself--the idea--is not protected under copyright law. In fact, it would even be allowable for someone to write a competing paper describing her invention, as long as the competing paper described the invention in its own words and did not take any "expression" from the original paper. However, only the inventor could apply for patent protection for her process. After applying for the patent, and going through a rigorous examination of the patentability of her patent, the U.S. Patent and Trademark Office might grant her a patent. At that point, she could prevent all others from using her idea. (For more information on patent protection, see the section on patents below).
One consequence of the idea/expression dichotomy is that there is no copyright protection in basic facts. A fact, such as George Washington's birthday or the Pope's address and phone number, is considered synonymous with an idea. It makes no difference how much effort went into discovering a particular fact. Even if it took two years of research to discover a fact, the fact is still not protectable under copyright laws. It is possible that a compilation of facts is protectable as a compilation, as long as the compilation required a minimum degree of originality.
A second, less expected result of the idea/expression dichotomy is the inability to obtain copyright protection for blank forms. Although graphical or literary elements that might be found on a form (such as a photograph or a detailed explanation of a term) would be subject to copyright protection, there is no copyright in the blank form itself. The blank form is considered to be a type of idea, a conclusion which stems from an old Supreme Court decision.Useful articles: Copyright protection is generally not available to articles which have a utilitarian function. Examples of these types of "useful articles" would include lamps, bathroom sinks, clothing, and computer monitors. Under the Copyright Act, the only copyright protection available to these items is for "features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." Unfortunately, this test is inherently ambiguous when deciding the scope of copyright protection for certain useful articles.
Some distinctions are clear. For instance, a painting on the side of a truck is protectable under copyright law even though the truck is a useful article. The painting is clearly separable from the utilitarian aspects of the truck. The overall shape of the truck, on the other hand, would not be copyrightable since the shape is an essential part of the truck's utility. Another commonly considered example is that of clothing. The print found on the fabric of a skirt or jacket is copyrightable, since it exists separately from the utilitarian nature of the clothing. However, there is no copyright in the cut of the cloth, or the design of the skirt or jacket as a whole, since these articles are utilitarian. This is true even of fanciful costumes; no copyright protection is granted to the costume as a whole.
One of the primary purposes for prohibiting copyright protection in useful articles is to prevent the granting of patent-like protection through the copyright laws. If a useful article was protected under the copyright law, the protection against copying would be quite similar to patent protection. Since copyrights are so much easier to obtain than patents, there would be no way of limiting this patent-like monopoly to inventions that are truly novel and non-obvious. (For more discussion on patent protection, see the section on patents below.)
Another interesting copyright concern is the extent of copyright protection in pictoral or sculptural works that portray a useful article. Take, for example, a painting of a futuristic looking automobile. Copyright protection would prevent the outright copying of the painting. In addition, copyright law would prevent the creation of a three-dimensional model of the automobile found in the painting. However, under the specific terms of the Copyright Act, copyright law would not prevent General Motors from making a working (hence utilitarian) automobile of the design found in the painting.
Trademark law governs the use of a device (including a word, phrase, symbol, product shape, or logo) by a manufacturer or merchant to identify its goods and to distinguish those goods from those made or sold by another. Service marks, which are used on services rather than goods, are also governed by 'Trademark law.' In the United States, certain common law trademark rights stem merely from the use of a mark. However, to obtain the greatest protection for a mark, it is almost always advisable to register the mark, either with the federal government, if possible, or with a state government. A mark which is registered with federal government should be marked with the ® symbol. Unregistered trademarks should be marked with a "tm", while unregistered service marks should be marked with a "sm".
A mark is infringed under U.S. trademark law when another person uses a device (a mark) so as to cause confusion as to the source or sponsorship of the goods or services involved. Multiple parties may use the same mark only where the goods of the parties are not so similar as to cause confusion among consumers. Where a mark is protected only under common law trademark rights, the same marks can be used where there is no geographic overlap in the use of the marks. Federally registered marks have a nation-wide geographic scope, and hence are protected throughout the United States.
A trademark is a device which can take almost any form, as long as it is capable of identifying and distinguishing specific goods or services. The best way to understand the types of devices available is through actual examples. The examples on this page are divided as follows:
Logos are probably the next most common form of mark. A logo can be described as a design which becomes a mark when used in close association with the goods or services being marketed. The logo mark does not need to be elaborate; it need only distinguish goods and services sold under the mark from other goods and services. Examples of logo marks are:
McDonald's double arches,
Apple Computer's Apple.
Pictures or drawings of a character or scene are often used as trademarks or service marks.
Corning's Pink Panther, and
Or a trademark might be a combination of letters and a design, such as:
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Slogans from advertising campaigns are also used as trademarks. Example slogans which have strong trademark rights attached to them are:
"Solutions for a small planet"
The color of an item can also function as a trademark. The Supreme Court held in the 1995 case of Qualitex Co. v. Jacobson Products Co., 115 S.Ct. 1300 (1995) that the green-gold color of a dry cleaning press pad can function as a trademark. Before this decision, the argument was often made that color alone could not be considered a trademark, since granting trademark status to colors would soon lead to the depletion of the number of colors available for an object. The Court in Qualitex rejected arguments based on this depletion theory, reasoning that alternative colors would usually be available for competitors. In those cases where alternative colors were not available, courts could deny trademark protection in those circumstances where color depletion may actually occur.
In order for a color to be considered a trademark, the owner must show that secondary meaning has been developed for the color. In addition, a color cannot be a trademark if the color is functional in nature. For example, one court has held that the color black serves a functional purpose when used on outboard boat motors, since the color black matches all other boat colors and also makes the motor appear smaller. A second court, however, has stated that it is possible for a color to function as a trademark even if the color contributes to the utilitarian or aesthetic function of a product. A second example of a color mark is the color pink for Owens-Corning's fiberglass insulation.
A product or container shape can also serve a source identifying function and therefore can be an enforceable trademark. A product or container shape may also be subject to a design patent. Historically, trademark protection was not granted to product shapes until the consuming public recognized the shape as indicating the source of the product. In other words, the product shape was required to obtained secondary meaning. However, recent court decisions may mean that an inherently distinctive product shape can be a protectable trademark even before secondary meaning is obtained.
The prototypical example of a product shape trademark is:
The Coca-Cola bottle shape:
A sound can also be a trademark or a service mark. The three tone chime of NBC has been registered as a service mark. Sound trademarks recently were in the news when Harley-Davidson announced that it was attempting to register the exhaust sound of a Harley- Davidson motorcycle with the U.S. Patent and Trademark Office (USPTO). Harley-Davidson was reacting to moves by competitors to duplicate the Harley sound in competing motorcycles. Hearings in front of the USPTO have been scheduled to determine whether Harley-Davidson can register the sound.
Because of this definition, one of the most common Trademark issues is Xerox. Xerox is a trademark, but many people use it in everyday language to talk about a photo copy. In many ways, it is completely interchangeable for people. As such, Miriam Webster continues to try to add Xerox to its dictionary as it is a word commonly used in everyday language. However, every year, Xerox has to defend its trademark in court. Should Miriam Webster be successful, Xerox would most likely lose their trademark rights for the work Xerox.
The US Constitution, in Article I, section 8, set forth the right of Congress to
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.Section 101 of the U.S. Patent Act sets forth the general requirements for a utility patent:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent, subject to the conditions and requirements of this title.
In other words, for an invention to be patentable it must:
Statutory Requirement: The U.S. Patent Statute states that processes, machines, articles of manufacture, and compositions of matter are patentable. This wording appears to cover every useful invention imaginable. To a large extent, this is true. Under this statute, the United States has one of the broadest standards for what is patentable in the entire world. Most inventors, including those in the software and computer fields, do not have to worry whether their inventions are non-statutory. However, there are certain "inventions" which are not patentable under the Patent Act. In these rules, the Office stated that the following (admittedly confusing) items were "clearly non-statutory":
These items are considered indistinguishable from abstract ideas and laws of nature, and therefore are unpatentable. However, software patents can usually overcome these categories in one of two ways. First, if the patent requires the software program to operate on data, the invention can be considered a patentable process. Second, if the patent claims the software program in connection with the physical structure of a computer, the invention can be considered a patentable machine.
Previous interpretations of the statute have also listed the following items as nonstatutory:
There have not been any recent interpretations as to the extent that these two items limit the scope of patent protection for software.
Novelty (Newness) Requirement: In order for an invention to be patentable, it must be new as defined in the patent law. This novelty requirement states that an invention cannot be patented if certain public disclosures of the invention have been made. The statute which explains when a public disclosure has been made (35 U.S.C. Section 102) is complicated and often requires a detailed analysis of the facts and the law. The most important rule, however, is that an invention will not normally be patentable if:
Although the United States grants the one year grace period described in the last two rules above, most other countries do not grant such a period. Therefore, it is almost always preferable to file a patent application before any public disclosure of the invention. Most patent attorneys will try diligently to file a patent application prior to any public release or announcement in order to allow international patent filings.
Useful Requirement: The patent law specifies that the subject matter must be "useful." The term "useful" in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent. In most cases, the usefulness requirement is easily met in computer and electronic technologies.
Nonobviousness Requirement: If an invention is not exactly the same as prior products or processes (which are referred to as the "prior art"), then it is considered novel. However, in order for an invention to be patentable, it must not only be novel, but it must also be a nonobvious improvement over the prior art. This determination is made by deciding whether the invention sought to be patented would have been obvious "to one of ordinary skill in the art." In other words, the invention is compared to the prior art and a determination is made whether the differences in the new invention would have been obvious to a person having ordinary skill in the type of technology used in the invention.
As can be imagined, the determination of whether a particular change or improvement is "obvious" is one of the most difficult determinations in patent law. In order to make such a determination, an examiner in the patent office will normally review previous patents to find those patents which are closest to the invention in which a patent is sought. If all the features of the invention can be found in a single patent, the examiner will reject the patent as lacking novelty (that is, it is exactly the same as what was previously known and therefore is not new). If no patent contains all of the features, the examiner will attempt to combine two or more prior patents, and attempt to find all of the features in a combination of those prior patents. If the examiner is successful in finding such a combination, the examiner will generally reject the invention as an obvious combination of items known in the prior art. However, there must be some reason to combine the two references, and often a rejection based on such a combination can be overcome.
Some changes to known products which would not normally be patentable are: