For the next few posts, intellectual property attorneys will be weighing in on legal issues for small business.Today we have input Steven Weinberg of Cowan, DeBaets, Abrahams & Sheppard LLP.
1. Can you explain the difference between copyright, patent and trademark in some layman’s terms for us non-lawyers?
Trademark law protects distinctive brand names, logos, designs (think the Golden Arches or the Nike Swoosh) and other distinctive things (sounds, aromas, packaging designs, and more) from being used in a deceptive way, and protects consumers from purchasing what they think is a genuine branded product but turns out not to be. Trademark law protects distinctive names, logos, etc. as they are used for products as well as for services (like tv shows, legal services, restaurant services, etc). A “trademark” is a protected name, logo, etc. used for products and a “service mark” is a is a protected name, logo, etc. used for products. Trademark rights in the US are created by actually using the trademark or service mark, but one can obtain exclusive national rights through the federal registration process, and/or just in specific states through the state’s trademark registration process. Trademark protection lasts for as long as one is using the trademark or service mark, but a federal registration has to be renewed every 10 years.
Copyright law protects original creative works from being substantially copied and used without the permission of the copyright owner. It also protects against the creation of derivatives of the original creative work. The kinds of works protected include literary works, graphic works, musical works, choreography, motion pictures, certain kinds of architecture, and just about anything that is expressed in an original way. Copyright protection is automatic – if you have created a work protected by the copyright law, it is protected. But in the US you need to register your claim of copyright with the US Copyright Office in order to be able to sue for copyright infringement and obtain certain remedies. Copyright law does not protect ideas, processes, systems or concepts or the design of a functional article, such as clothing designs or furniture designs (there are some limited exceptions). Copyright law is limited in duration. For corporate works, it is generally 95 years and for individuals for the life of the author plus 70 years.
Patent law protects useful inventions and discoveries which, to qualify for patent protection, have to be “novel” and not “obvious” to a person skilled in the art. Patent protection covers inventions and discoveries of any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement of any of them. The only way to get patent protection is to be granted a patent by the US Patent and Trademark Office, which usually takes many years to get. Having patent protection means that the invention cannot be commercially made, used, distributed or sold without the patent owner’s consent. Patent protection is only for 20 years.
What is the biggest/most common mistake you see small businesses and artists make in the area of intellectual property?
Not knowing the rules about what they own and what they don’t own. Many small businesses assume that if they pay a freelance artist to create a copyrightable work for them that the business owns it. They don’t. Unless there is a written document signed by the artist that says that the work is a “work made for hire” or that the artist is assigning all of its rights in the work to the small business, the business only gets a non-exclusive right to use the work, with the artist retaining all of the other rights.
Similar mistakes are made with inventions or discoveries that are patentable. And here’s where employment law becomes involved. Under copyright and trademark laws, anything created by an “employee” that can be used in the employer’s business is owned by the employer. So it is very important to make sure that there is clarity about whether the artist is an employee or an independent contractor. And just because an agreement says that the artist is an independent contractor doesn’t mean that for labor and tax purposes, as well as for intellectual property ownership purposes, the artist actually legally is an independent contractor, so one has to be really careful here.
