Asked and Answered

By John DiGiacomo

In Asked and Answered #1, we answer the question, “What is intellectual property?”

Transcript: Hey everyone, this is John Di Giacomo and I am a partner with Revision Legal. We are an internet and intellectual property law firm, and we get a lot of questions. Some of those questions are so basic that you really probably shouldn’t hire an attorney to answer them. The purpose of this program is to answer those questions in a quick and easy and consumer friendly format. This is not legal advice. Keep that in mind, we are not forming an attorney-client relationship with you, but we hope you enjoy the podcast. This is Asked and Answered.

We’re Asked and Answered number 1, we’re going to be very basic. We often get the question, “What is intellectual property?” Well, it’s really four categories. It’s trademarks, copyrights, patents and trade secrets. There are some outliers as well, such as the right of publicity or the right of privacy that some people may consider falling under the intellectual property banner. We’re not going to deal with those today, but we will deal with these other 4 categories and just give you a breakdown of number 1, what are they, and number 2, what do we get these things for, why do we get these protections for intellectual property?

Let’s start with trademark. A trademark is a word, phrase, symbol or design that identifies and distinguishes the source of goods or services of one party from those of others. The basic idea is that a trademark is an indicator of the origin or source of goods or services. When you go to the grocery store and you reach for that box of whatever your favorite brand of pasta is, you go for that box because that brand name indicates that that company makes that pasta. That’s the basic idea behind a trademark. A company builds goodwill in its brand so that consumers who really like its products or its services reach for that brand every time they need those products or services.

Why do we get these things? Well, we get trademark registration with the U.S. patent and trademark office in the United States for a number of reasons, but the basic ones are first and foremost, it allows you to get nationwide priority over everyone else to use that trademark in commerce in association with your goods and services. It allows you to do that to the exclusion of others, so the basic idea is that trademark registration is intended to protect against consumer confusion. If you register your trademark at the federal level, then the idea is that carving out those limited monopolies over those words, phrases, designs, et cetera, prevents against consumer confusion in the marketplace, because a consumer that wants to reach for a Sony tv doesn’t necessarily want to reach for a Sorny tv, which is why we have this likelihood of confusion test.

In basic terms, we have trademark registration because we want to make sure that we have a centralized database to register and to track those trademarks. We want a place where people who want to adopt a trademark know to look and search, so that they can determine whether or not that trademark’s already taken, and whether or not they’ll infringe on someone else’s rights. There are some other benefit as well, such as the ability to get a large amount of statutory damages.

The next type of intellectual property that we will talk about is the copyright. Copyright rights extend to works of creative authorship that are fixed in a tangible medium of expression. If you paint a picture on a canvas, you have copyright rights by virtue of the fact that you created those items and put them in a fixed forum. Copyright registration is a substantial benefit to those who have copyright rights. The reason for this is that if you have a registered copyright, you can oftentimes obtain statutory damages up to $150,000 per work infringed. Now what does that mean? That basically means that in a copyright infringement lawsuit, instead of going through the very costly and time intensive process of proving your actual damages, which might be lost profits, of the reasonable royalty that could be paid for the work, you can ask for statutory damages and not have to go through that process.

That’s a huge incentive to file for registration with the U.S. Copyright Office. Additionally, it also puts others on notice of your rights. If you file with the U.S. Copyright Office, you will be listed in a searchable database, and others can see whether or not you’ve obtained copyright protection, and they can decide based on that database entry that they probably shouldn’t infringe on your rights.

The next piece of intellectual property that we will talk about is the patent. Now a patent is a government granted monopoly that provides the right to exclude others from making, using, or selling an invention. In the United States, in order to obtain patent rights you actually have to file for patent registration. It’s incredibly important that you talk to a patent attorney, and that if you’ve got an invention that you believe is marketable, you at least get an idea of whether or not you should file for patent protection. Patents are the traditional area of intellectual property that we think of when we think of that term, and there’s a good reason for that.

Patents have been the lifeblood of American ingenuity for a long period of time, and basically the U.S. patent system is probably one of the best in the world, and it contains the ability to search and document those inventions and actually improve on them by looking at what other people have invented. It’s a very important piece of the intellectual property system in the United States.

The final piece of intellectual property that we’ll talk about today is the trade secret. Now trade secrets don’t require a lot from your end. Basically a trade secret is anything that derives independent economic value from the fact that it is a secret. If you keep something a secret, it may have trade secret protection. Now, my favorite example of a trade secret is beer, because I love beer, and brewing recipes are really a trade secret and nothing else. For example, if you create a new and unique IPA, you cannot obtain copyright protection to protect others from replicating that recipe. You can’t use a trademark to prevent others from replicating that recipe either, and of course patent doesn’t apply either.

The only way to protect that recipe is to have it fall under trade secret protection. Now how do you do that? Well, really to protect something with a trade secret, you just have to keep it a secret. You have to control access to it, you have to make sure that only the right people have knowledge of it or access to it. That’s really it. It’s a very valuable form of intellectual property for a lot of businesses, such as the food industry and manufacturing companies.

Those are the 4 categories of intellectual property. I hope this has been helpful, and if you have any questions feel free to email them to us at ask@revision, R-E-V-I-S-I-O-N legal, L-E-G-A-L, dot com. We hope you’ll tune in again at some other time. Thank you.

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