| Following are questions and answers
concerning copyrights and trademarks arranged in what we believe
is a logical sequence. Additional questions and answers are
added regularly, so please visit our site often. Please feel
free to make copies for non-commercial purposes. |
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What is intellectual property? |
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Intellectual property refers to what has been created by people as opposed to physical property or real property (real estate).
Intellectual property includes trademarks, copyrights, trade secrets and patents.
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What remedies are available
for infringement of intellectual property rights? |
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Courts can grant injunctions, restitution, monetary damages (including actual damages, the amount of the infringer's gain), and punitive damages. In addition, the losing party's intellectual property rights may be canceled, and the losing party may be liable for fees and costs. |
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What is a trademark? |
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A trademark or service mark is a name, phrase, work or symbol used to identify a specific product or service offered by a specific person or company.
A trademark or service mark distinguishes a product of a specific person or company from a similar product of another.
Examples: Coke, Kleenex, Xerox |
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What are the advantages of registering a copyright? |
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As soon as a work is created, the author automatically receives federal copyright protection for the work. Registration of a copyright is not required for protection, but registration has significant advantages:
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Registration of a copyright creates a public record
of the copyright claim |
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Registration grants a copyright owner the right to
sue for copyright infringement |
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Registration within five years of publication
creates prima facie evidence that the copyright is valid |
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When a copyright is registered within three months
from publication, the copyright owner may be able to
recover attorney's fees and statutory damages without
having to prove monetary loss. |
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What is a trade secret? |
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Trade secrets include ideas and information that is not known to others. It provides the user with an advantage over its competitors.
Example: Formula for Coke. |
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What is a logo? |
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A logo is a graphic mark or emblem used to represent a company. |
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Is it possible to apply for a name, logo and slogan in one application for a trademark? |
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No. They are separate trademarks requiring separate applications. |
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What is the purpose of
obtaining a trademark? |
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There are two primary purposes:
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To prevent competitors from stealing the goodwill
that a business has created, and |
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To prevent consumers from being mislead by the use
of confusingly similar names, logos and other marks. |
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What is a mark? |
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Marks include:
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Words that are used in a distinctive way. Examples
would include Apple Computers and Mustang Automobile; |
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Coined or made up terms such as Exxon and Kodak; |
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Graphical arrangements such as Toys R Us (with a
backwards R); and |
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Terms that suggest rather than describe a
characteristic or quality such as Jaguar Automobile. |
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What is a service mark? |
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A service mark is any name, phrase, symbol or device used to identify the source of a service rather than a product. |
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Our company has created and published informative materials to use with our customers. Now a competitor is using it without our permission. What can I do about it? |
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If the competitor is using parts of your written materials verbatim, then you may have a claim for copyright violation. On the other hand, if the competitor is using your concepts, then you may have a claim for unfair business practices.
California's Unfair Competition Law protects competitors and consumers from illegal, fraudulent, and unfair business practices. It provides for relief and civil penalties in cases of unfair competition. |
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I published information on my Web site. Now I see excerpts from it on a stranger's Web site. What are my rights? |
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If you designated the Web site pages as copyright you may be
entitled to an injunction to stop the unauthorized use. If the
copying and republishing is of a registered copyright of a book
or e-book with the U.S. Copyright Office, then you may be
entitled to an injunction to stop the misuse and to statutory
damages and fees for copyright infringement. |
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How can I protect my trade secret? |
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By keeping it a secret. Trade secrets are not subject to trademark protection or patent. However, trade secrets can be valuable intellectual property rights that can be protected through the courts. |
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Are trade secrets registered with any government agency? |
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No. They must be kept absolutely secret. |
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A former employee has provided a new employer with our trade secrets without permission. Is there anything I can do? |
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Yes. California law protects trade secrets and provides for remedies for their misappropriation, including injunctive relief, general and punitive damages, and attorney fees.
Generally, a trade secret misappropriation claim requires a finding that the offending person knows or has reason to know that the information is a trade secret, that it was acquired improperly, and that it is being used without the owner's express or implied consent. |
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I created software then licensed to another company. That company now refuses to pay me. How can I enforce my rights? |
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You can enforce your intellectual property rights and enforce your license agreement. If initial requests to cure are unsuccessful then you should file a lawsuit requesting a restraining order, seizure order, and/or preliminary injunction, and a demand for damages, costs, and attorney fees. |
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We are at the stage of product development where we need to solicit external support, and the most likely source is a company that might be interested in marketing our invention. How do I protect my intellectual property rights? |
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You should always protect any proprietary information at the earliest stage of development and maintain an active protection program. You should not communicate the details of your invention in any discussions, whether oral or written without a signed confidentiality agreement. All subsequent communications to any outside company should have a cover letter identifying the information as proprietary and privileged and within the scope of the confidentiality agreement. Under the terms of the confidentiality agreement, the company is not to divulge your information to any other company and not use it for any other purpose except to evaluate for a business relationship. The agreement must also specify that providing the information to the company does not mean that you are transferring or licensing your intellectual property rights to them. |
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How can I protect computer software that I wrote? |
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Computer software can be protected by copyright by the original author or to the author's assignee. Depending on the nature of the software with regard to novelty and non-obviousness it may be eligible for a patent. While most ordinary programs, or the mathematical algorithms used, usually are not patentable, it may be possible for patent protection of algorithms used to implement novel and non-obvious processes. Copyright is the most widely used protection for computer software because it is easier and less costly to obtain. Copyright protection can be obtained for original software, whether an application program, an operating system or a database. The holder of the copyright may license the software to others by contractual agreement. Copyright protection only protects the specific work, not the idea. Others may independently create programs with identical or equivalent capabilities and not infringe your copyright. |
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What is "work made for hire"? |
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A copyright is owned by the author or artist who created the work; unless the author sells (assigns) the copyright or the work was "made for hire." When a work is created by an employee while on the job or by an independent contractor who was hired to create the specified work, the work is usually considered as a made for hire work. The copyright on work made for hire belongs to the employer or the party who commissioned the work.
In general, an employee who writes or creates a work for an employer is creating a work for hire. An independent contractor may have copyright to a work unless there is an agreement with the employer which should include an assignment of the copyright to all work product produced. |
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What is a right of publicity claim? |
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The right of publicity is a claim that you have used someone's name or likeness to your commercial advantage without consent and resulting in injury. The plaintiff generally must prove that you are using their image or likeness for advertising or other solicitations. Freedom of speech rights protect your use of a public figure's name and likeness in a truthful way, but you can still be liable if a court determines that your use implied a false endorsement. |
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What is a copyright? |
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It is a set of exclusive rights granted to the author or creator of an original work such as a book, article, music, motion picture, or computer program. These rights can be licensed, sold and / or assigned. |
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What is a patent? |
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A patent is the grant of a property right or privilege made by the government to a person who invents something. A patent gives the inventor the right to prevent others from making, selling or using the same process or item for a period of time. |
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What agency of the government grants patents? |
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Patents are granted by the United States Patent and Trademark office. |
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What can be patented? |
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Inventions that fall into one of four classes:
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Machines |
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Processes |
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Articles of manufacturer |
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Composition of matter |
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Patents must not be frivolous and proof must be provided
that the invention will be operable. It must also have some
utility.
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Can a patent be sold?
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Absolutely. They can be sold in their entirety or an
interest can be sold. |
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| Michael T. Chulak & Associates |
| Full Service Law Firm |
| MTCLaw.com |
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