- posted: Apr. 21, 2010
Copyrights, Trademarks, Trade Secrets, & Patents
What's a Copyright?
A Copyright gives you the right to control what happens to a work that you've produced. You have the right to control the copying of it (hence the term "Copyright"), but you have other rights as well. For example, you have the right to control who performs it, in the case of a play. You have the right to control the making of works that are derived from the original work - a sequel, perhaps.
What do I have to do to get a Copyright?
You just have to publish your work - essentially, show it to outsiders, either by fixing it in a written form, presenting it to an audience, etc.
Don't I have to register the work to get a Copyright?
Not anymore. Now, all you have to do is have evidence that you published it. Registration for widely known works may still be valuable, as promptly registering your Copyright with the Copyright office with give you some more rights should you ever have to protect your Copyright in court.
Can I Copyright a concept, such as, for example, young webheads learning about business?
No, you can Copyright only the expression of an idea. For example, no one has the Copyright for a young wizard learning to cope with new-found powers, but someone - J.K. Rowling - has the Copyright for a young wizard named Harry Potter, and his adventures. It's her particular expression of the idea of a young wizard that is protected.
I created some web pages, but my boss says that they don't belong to me. Why not?
Well, answering the question depends on what you created, what you used to create it, and why you created it. Since you created the web pages at work, you presumably used your employer's computers, and did so at your employer's direction, so that tends to suggest your employer owns it. However, if you published web pages at home, for purposes unrelated to your job, those would belong to you.
For more information, go to http://www.Copyright.gov/circs/circ1.html#hlc.
What's a trademark?
A trademark is an image, phrase or otherwise distinctive mark that shows the maker or owner of the product in a way that is distinguishable from all others. Words (Xerox®), shapes (the old glass Coca-Cola bottles), sounds (the National Broadcast Corporation's three chimes), colors (green-gold professional ironing board covers), and even perfumes have been found to be trademarks, so long as they are not functional, but help identify the product.
What do I have to do to get a trademark?
You pretty much have to use it in commerce before anyone else in your geographic area. There is a constant balancing act ? you want something that is quickly associable with your product, but it has to be distinctive from all others. A trademark does not have to be registered with the U.S. Patent & Trademark Office, but it can help.
What has to be done to register my mark?
You can apply for one before using it, but the most important thing is to actually use the mark. The registration form now is actually online, at www.uspto.gov. Before that, though, we strongly recommend a database search in all the jurisdictions that you want to use the product in, to make sure that you are not violating someone else's mark. While the US Patent and Trademark Office's web site has a database of registered marks and those in the application process, that is not enough -- someone could be using it without registering it. A full search may cost some money, but it is far cheaper than to waste your investment in marketing on a mark that someone else has priority to.
My friend's company registered its trademark, but then some other company claimed to use it first, and made my friend stop using it. How can that be right?
The first to use the mark has priority, not the first to register. During the registration process, a search is made to see if the proposed mark is too close to other marks. However, the databases are never foolproof.
What happens if I find someone who is using our mark?
The first step is usually something called a "cease and desist letter," sent to tell them about your priority to the mark, or the confusing similarity of their mark to yours. If they do not stop using the mark, then you may sue them for trademark infringement. While you do not have to have the trademark registered, it can be a big help, If your mark is registered and valid, then you can recover your attorney's fees for the case and possibly have a greater recovery, if you win.
Misappropriation of Trade Secrets
Do I have to register a trade secret?
No. In fact, to make it publicly known would destroy the value of a trade secret.
What is a "trade secret," and how is it different than a trademark?
A trade secret is (1) a secret formula, recipes, method, compilation, program, or technique that is valuable because it is not generally known in the industry, and (2) is subject to reasonable efforts to keep it secret. While a trademark is a way of making your product known, a trade secret is protectable only if it is not generally known.
What are some examples of trade secrets?
Recipes - for example, the formula for Coca-Cola or the "Eleven Secret Herbs and Spices" of KFC. Business methods or manufacturing processes can be considered trade secrets. Customized computer programs, almost always used in-house, can be trade secrets. Customer lists are often subject to trade secret lawsuits.
My business has a secret customer list, and our competitor now is marketing to the same customers. Can we sue to stop them?
It depends on how they came to know about your customers. The identities of customers themselves are rarely secret ? those are usually businesses that want to be known. If your competitor found out the information independently of you, it hasn't taken your trade secret. However, if you can show that the competitor is using your list that was expensive to put together, you may be able to stop it from using your list, or get damages for their use.
How long does a trade secret last?
Potentially forever - see, for example, the recipes above. A trade secret can last as long as it is valuable because it is secret, and it is subject to reasonable efforts to protect it.
How do I protect a trade secret?
Trade secrets should be clearly marked as "confidential," or some other marking that clearly shows it should not be shown outside your business. Also, get a written agreement with your employees to protect that information. The best time to do that is at the beginning of the employment relationship, because that is when people are most likely to sign. If you wait until after they start working, you may need some additional compensation to them, although a lawyer may help you structure the process to reduce your cost. Still, protecting your most valuable asset is worth the trouble and expense.
One of my Southern California sales reps left, and is going to work for a competitor. Can I stop him?
Probably not. California has a very strong tradition of protecting employees. Standard employee non-competition agreements are valid in many states, but not California. Even stopping a former employee from announcing his move to a competitor is not likely in California, although you can stop the former employee from using your trade secrets. Many nationwide companies fall victim to this part of California law.
A competitor has just shown up with a device that looks like a copy of ours. Can we stop her from using it?
Yes, if she "stole," or misappropriated it from you. If she properly reverse engineered it, or developed entirely independently of your trade secrets, she is entitled to compete.
What is a patent?
A patent is an exclusive right to use or market a unique design, process, formula, or device. It is a monopoly that is authorized by the Constitution's establishment of a patent office.
What do I have to do to get a patent?
You have to apply for one at the US Patent & Trademark Office (the "USPTO") within a year of formulating the unique design, process or device. If the USPTO finds that it is sufficiently novel, it will then publish the proposed patent, to see if anyone opposes it. If no opposition succeeds, then the patent can be issued.
How much does a patent cost?
Patents cost from several thousand to twenty thousand dollars or more, depending on the type of patent and the size of the proposed inventor. There are also maintenance fees after a patent is granted. A patent lawyer - who may not be a regular lawyer, but someone specialized in some part of the patent world - is a vital part to putting together a good patent application. We can work with you to find a patent lawyer who meets your needs.
How long does a patent last?
A utility patent, for formulas, devices, and the like, is now 20 years from the date of the application.
What good does a patent do me?
A patent gives you the exclusive right to use or market the invention. For both practical and legal reasons, you may want to licence someone else to use your patent, and you would be entitled to get a reasonable royalty for it. If someone is using the patent without permission, you can stop them from doing so.
Do you have to be employed as an inventor to get a patent?
No. Abraham Lincoln received one relating to steamboats. The actress Hedy Lamarr (of the "Road" pictures, with Bing Crosby and Bob Hope), invented a radio frequency skipping process that is used today in cellular phones.
For more on trademarks and patents, go to http://www.uspto.gov/main/faq/.