identification, sources, and traps for the non-lawyer
This guide is a breezy tour of the major kinds of intellectual property under United States laws. You can read it in one go.
The most important parts are sob stories of prototypical injustices intellectual property laws try to prevent. Keep them in the back of your mind. If bad things like this happen to you, talk to a lawyer.
If you spot an error or come up with a way to make this guide better, you can propose changes on GitHub. This guide is publicly licensed under the terms of the Creative Commons Attribution-ShareAlike 4.0 International (CC-BY-SA-4.0), a copyleft license.
Some readers may prefer Brent Britton’s Ownability, which is longer, but sports svelte, colorful illustrations. That’s a good resource, too.
This field guide covers copyright, trademark, patent, and trade secret. For each kind of intellectual property, you will find:
This is just a field guide. It’s designed to help you identify some potential intellectual property problems you might otherwise miss, not to make you an eagle-eyed IP-spotting machine, or to solve specific problems. That’s what lawyers are for. I’m sorry they’re so expensive. I’m working on it.
Individual: Anna Author labors twenty years in poverty to finish a novel. A dishonest publisher makes millions printing an unauthorized “first edition” of an early draft Anna submitted for review. Anna starves to death, then becomes famous.
Company: Acme Pictures, Inc. borrows millions to make an action-adventure film. Movie theaters project copies of a stolen screener and keep every dime from ticket sales. Lots of people see the film exactly once. Acme’s founders take janitor jobs at a local film school to make rent, but creditors find them anyway, and break their legs. There is no sequel.
Policy: Give creators control of how creative works are copied, so they can get paid. Also give particular kinds of artists limited rights to protect the integrity of their work, since other countries are into that, and we promised we’d play along.
Key Statues: United States Code, title 17
Administrator: United States Copyright Office
Steps Required: None required, but copyright registration gives important benefits. Many authors register on their own, without lawyer help.
The author of a work doesn’t always own the copyright, or have a right to license it. Some works made for others, called works made for hire, belong to employers and clients.
Copyright doesn’t cover everything that’s written or recorded. Works must have a minimal degree of creativity for copyright.
“Fair Use” isn’t copyright infringement, but giving credit or saying you don’t intend to infringe doesn’t turn infringement into fair use.
Individual: Larry the Luthier builds and sells mandolins, identifying his masterworks with unique scrolls. A large manufacturer of budget banjos starts selling inexpensive, foreign-made mandolins with scrolls just like Larry’s. The nation’s primo flatpickers figure Larry sold out, and go electric. Larry is struck by lightning.
Company: Lapointe Associates provides “Lazarus Recovery” services to customers who need files recovered from crashed PC computers. A competitor begins offering its own version of “Lazarus Recovery”, for Apple computers, but they never manage to recover any files. Word gets around, and nobody wants to pay for anything called “Lazarus Recovery” any more. Lapointe Associates have to go into enterprise solution integration consulting, and start wearing ties, to make ends meet. Everyone feels a little dead inside.
Policy: Protect the meanings of names and other marks that tell consumers who is behind goods and services.
Law: Federal, plus less important state laws
Key Statutes: United States Code, title 15
Administrator: United States Patent and Trademark Office
Steps Required: Use a mark to identify the source of goods or services. Registration, especially federal registration, gives significant benefits. “Intent to Use” applications can call dibs on marks before they’re actually used. Using a trademark attorney to file applications is highly recommended, but not required.
Federal trademark registration isn’t required, but no federal registration means suing under state law for violations within that specific state.
Trademark owners need to enforce their rights to keep them strong, but not every use of a mark (or something similar to it) threatens to confuse consumers. Trademark has fair use rules, too.
Trademark rights can’t be transferred in ways that break consumers’ associations between products and services bearing the mark and who they come from. Lawyers call these “naked assignments”, “bare assignments”, and “assignments in gross”. There are no good jokes about this.
Individual: After years of tinkering, Carrie Craftsman invents a new kind of bracket for industrial garage doors. She applies for and receives a patent, and also meets with a potential manufacturer. The manufacturer starts making and selling the new bracket on the sly. The garage door of the local fire department fails when Carrie gets caught in a workshop fire. Carrie’s kin inherit nothing, and have to sell the homestead to a multinational farming conglomerate.
Company: FrollickWear, Inc. invests millions of dollars over ten years to develop revolutionary costumes for synchronized swim teams, and receives a patent. Eight disgruntled employees leave FrollickWear to start a new venture selling lifeguard swim trunks using the same technology. FrollickWear goes bust, and the Olympic Committee delists synchronized swimming. The traitorous eight retire to multistory house boats parked in Olympic-size swimming pools.
Policy: Give inventors control of how their inventions are marketed, so they can get paid.
Key Statutes: United States Code, title 35
Administrator: United States Patent and Trademark Office
Steps Required: Patent application granted by the USPTO. “Provisional” applications can call dibs on an invention for up to one year. Using a patent attorney to file applications is strongly recommended, but not required.
It is not enough to be the first person who made or thought of an invention. Since 2012, under the America Invents Act, the first to file for a patent on an invention can receive it, with special procedures to challenge a patent after it is granted.
Patents for software are neither impossible nor easy to get. The law on what can be patented, and how the USPTO and courts make that assessment, is changing.
The title of a patent is often very general-sounding. But the “claims”—specific, numbered descriptions at the end of a patent—not the title, determine what a patent covers.
“Provisional Applications” are important, but they aren’t patents. They’re just rights to file a patent application that counts from back when the provisional was filed.
Individual: Sam Smythe, journeyman industrial welder, keeps a list of potential clients locked in the drawer of a desk in his private office. A competing fabrication firm sneaks into his office, pries the drawer open, snaps a photo of his list, and dispatches sleazy sales creatures to each lead faster than Sam could ever cover them himself. Sam journeys on to Chapter 11.
Company: Exemplar Logistics completes a year-long market analysis to identify the best way to ship preprep mochi to the burgeoning Continental “hip food” market. A competitor cajoles a disgruntled Exemplar employee into handing over a copy of the analysis, which they use to beat Exemplar out of the diet toaster pastry market. Competitors launch a ruthless “glutinous rice” negative ad campaign. Exemplar gets pounded.
Policy: Protect valuable secrets that owners take pains to keep from competitors.
Law: Mostly state, but increasingly federal
Key Statutes: State-specific, often the Uniform Trade Secrets Act, plus the federal Defend Trade Secrets Act
Steps Required: In general, have a secret with economic value and take reasonable steps to keep it secret.
Just because something might be patent- or copyright-protected doesn’t mean it can’t be a trade secret. Companies have intentionally kept patentable inventions secrets instead, and protected them as trade secrets.
Sharing secrets across companies doesn’t automatically destroy trade secret rights. Nondisclosure agreements and related practices can count as reasonable steps to keep trade secrets secret.