LEARNING OBJECTIVES:
After studying this module, you should be able to
- Explain why the creation and protection of intellectual property is so important to business.
- Identify the types of protected marks and be able to distinguish between trademarks and service marks.
- Describe how to protect marks, the defenses to trademark infringement, and the penalties for infringement.
- Explain how domain names are like trademarks and how they can be protected.
- Describe what subject matter can be patented and identify the types and duration of patents.
- Explain how an invention can be patented under federal patent laws, the defenses to an infringement claim, and the penalties for patent infringement.
- Describe how US law defines “tangible writings” that can be copyrighted, how long such items can be protected, and the penalties for copyright infringement.
- Explain fair use and other exceptions that allow limited use of copyrighted materials.
- Explain the business tort of misappropriating a trade secret and describe the strategies business has adopted to reduce the possibility of trade secret theft.
General Resources: Chapters from Business Law Textbooks
Reading: Intellectual Property, Ch. 13 from Government Regulation and the Legal Environment of Business by Mayer.
Reading: Intellectual Property, Unit 6 from Business Law by the Saylor Academy.
Reading: Intellectual Property, Ch. 9 from The Legal and Ethical Environment of Business by Lau and Johnson.
What is Intellectual Property?
Video: Introduction to Intellectual Property: A Crash Course (10:09). In addition to introducing you to the types of intellectual property, the video also discusses the importance of IP law to protect innovation and the rights of creators.
Video: Basic Facts: Patents, Trademarks and Copyrights (8:25) This video both identifies trademarks, patents, and copyrights, and distinguishes between each category, providing helpful examples.
Infographic: Types of Intellectual Property. This simple infographic defines copyrights, patents, trademarks, trade dress, and trade secrets.
Infographic: IP Law Explained through Google This infographic explains trademarks, patents, copyrights, and trade secrets, using examples of intellectual property owned by Google (as of 2013, when the Infographic was created).
Reading: What is Intellectual Property Law? This very short reading provides a slightly different definition of intellectual property, as well as basic definitions patents, copyrights, and trademarks.
Video: What is Intellectual Property & Why Do I Care? (3:23). This video supplements several of the others as it also discusses trade secrets. It also dives into the importance of intellectual property to business in protecting the company’s market value, business strategy, and legal rights.
Video: Patent Protection for Your Ideas: File Trademark for Brands (1:56) The video presents a basic hypothetical situation illustrating the theft of intellectual property, highlighting why it is important for creators to obtain IP protection for their particular IP.
Why do we protect intellectual property?
Reading: Importance of Obtaining a Trademark for Business Introduces the function of trademarks, how a mark qualifies or is eligible for trademark protection, and the extent of that protection.
Reading: Intellectual Property Considerations for your Company Useful article on important considerations businesses must make in regards to patents, trademarks, and copyrights.
Infographic: Protecting Intellectual Property Rights. This simple infographic provides brief explanations (with examples) of patents, copyrights, trademarks, and trade secrets, plus their duration. It also includes right to publicity as another form of intellectual property, but will look at that concept in our Torts module, not IP. Beneath the infographic, you’ll also find some basic information about IP
Using Contracts to protect intellectual property
Reading: How to Use a Contract to Protect Your Invention. This article discusses using Confidentiality and Non-Disclosure Agreements (NDAs), as well as Works for Hire Agreements signed by Independent Contractors and Employees that assign rights to intellectual property that is work-related and/or created on behalf of the employer, to protect an employer’s IP.
Reading: Avoiding Intellectual Property Traps in Contracts. In addition to NDAs, this post on an international law firm with considerable litigation and IP expertise, also discusses other contractual agreements that may protect your IP: Licensing agreements and assignments, representations and warranties, and IP indemnification provisions. (March 2020)
Reading: How to Protect Your IP Rights in Works Created by Contractors (Nolo 2020). This brief article explains the difference between Works Made for Hire and Works Not Made for Hire by listing the 9 categories of copyrightable material that may be protected as a work for hire.
Patents
Video: Patent Law Overview (12:20) Professor Ida Jones explains patent law and provides simple, introductory examples to explain concepts as she goes over them.
Video: Patents, Novelty and Trolls: Crash Course Intellectual Property (9:50). Introduces patents, what they protect and how they are different than copyrights.
Reading: Introduction to Understanding Patents. This U of Michigan Library Research Guide provides a short explanation of the three requirements for patents: usefulness, novelty, and non-obviousness.
Video: What is Novelty and Non-Obviousness in Patent Law (1:07). Produced by a law firm, this short video explains these concepts in simple terms.
Reading: Legal FAQ: Introduction to Patent Law. This 4-page document provides another explanation of patent law that also includes discussion of how the PTO decides to issue a patent, what to do if your application is rejected, what “patent pending” means, and how to obtain patent rights in foreign countries.
Reading: Design Patent Basics This website provides links to a number of topics. Among the best are “Apply for a Design Patent” (which discusses the application, drawings, and specifications requirements of the application, with examples); design patent on a golf sculpture, how long for a design patent, and copyright or design patent. (You certainly don’t have to look at all!)
Reading: Enforcing a Patent Discusses what constitutes patent infringement and the remedies available, and the five stages of a patent from conceiving the idea to the expiration of patent protection.
Trademarks
Infographic: Classification of Trademarks. This infographic defines fanciful, arbitrary, suggestive, and descriptive trademarks, as well as those that are considered generic, and thus not protected as a trademark.
Reading (with embedded videos): 14 Sounds You Probably Didn’t Realize Were Trademarked. Among the trademark sounds you can listen to in this article are the Mockingjay’s whistle from Hunger Games, the “chung chung” sound from Law and Order, Homer Simpson’s “D’ oh,” Tarzan’s yell, and Darth Vader’s breathing!
Reading: About Trademark Infringement. The US PTO explains infringement and the remedies that are available.
Reading: Trademark Infringement: What are the Requirements for a Trademark Claim Under the Lanham Act? This law firm website explains what trademark infringement is and what constitutes infringement under the federal Lanham Act.
Reading: Trademark Infringement and Dilution This NYC Bar explains the difference between infringement and dilution.
Reading: Trademark Dilution. Justia explains the elements of trademark dilution.
Reading: Trademark Dilution: Blurring v. Tarnishment. A law firm explains trademark dilution (in contrast to infringement).
Reading: Cybersquatting: What is it and what can be done about it. Nolo explains the basics of Cybersquatting.
Video: Trademarks (6:28) An overview of trademark law, the amount of protection a trademark receives based on how distinctive a mark is, and benefits to registering a trademark
Video: Trademarks, Patents, and Copyrights (8:37) Produced by the USPTO, this video provides a basic introduction to these three forms of IP, with good examples to illustrate each and show how they differ from the other types of IP. (This video is also listed in the “What is Intellectual Property Law?” category above.)
Video: Trademark Law Overview (24:03) Professor Ida Jones explains trademarks and their use in business. Her IP videos include problems to make sure you understand the materials, and her descriptions are clear and to the point.
Video (for entertainment and content) How Velcro’s Lawyers Want to Protect the Brand from “Genericide” (2:14) In a humorous song, the company’s lawyers explain that after the patent expired, the company continued to protect the name Velcro through trademark — and what they now need to do to make sure the trademark doesn’t become generic. (not available for module review assignment)
Apple Trademarks and Service Marks A list of Apple’s trademarks and service marks (through August 6, 2020) found in the legal section of their website.
Reading: “11 of the most unusual company and celebrity trademark applications and disputes” (Compiled by Hannah Roberts for Business Insider in December 2016). Among the examples in the Trademark Hall of Fame are Taylor Swift’s song lyrics, a specific shade of purple protected by Cadbury, and darts that smell like beer. Enjoy!
Copyrights
Video: Copyright Overview (15:02) In another excellent video, Professor Ida Jones explains copyrights, their purpose, and the associated rights for copyright holders.
Video: Copyright Basics: Crash Course Intellectual Property 2 (12:17) While learning the basics of copyright law, you might also read some of the comments this video generated, many very critical of the length of time US law protects copyrights!
Video: Copyright Protection: What Can Be Protected and What Cannot be Protected (7:13) produced by LawShelf.
Video: Copyright, Exceptions and Fair Use: Crash Course Intellectual Property 3 (11:38) Discussion of modern examples the laws, and exceptions pertaining to copyright infringement, such as Fair Use. In this video, like some of the other Crash Course IP videos, the speaker provides some extraneous examples and explanations before getting to the main topic, so you may want to fast forward at the beginning.
Reading: “Fair Use in the Era of Social Media” from Forbes (May 26, 2016) This article analyzes the impact of social media in regards to permissibility of using and sharing copyrighted materials on the internet under fair use rules and the boundaries of transformative use. Provides many good contemporary real-life examples.
Reading: “Cartoons that should’ve entered public domain in 2016 (but didn’t).” (Blog post last updated on 30 December 2017). This article explains why Disney and others have lobbied Congress to extend copyright protection of intellectual property retroactively to prevent them from expiring and entering the public domain.
Reading: The Impact of Google v. Oracle: Google’s Big Win at the Supreme Court (April 2021). In a 6-2 ruling in April 2021, the Supreme Court ruled that Google’s use of Java’s code was “fair use.” For additional background on the case at the lower levels, you might find “Google Beats Oracle on Copyright, Defeating $9 Billion Claim” (Washington Post May 26, 2016) This case is simply one in a series of trademark infringement cases brought by tech companies against each other.
Reading: The Multi-Million Dollar Copyright Battle Over “Happy Birthday to You” (2015) This article lays out the suit filed in 2015 by Warner Music that they owned the copyright to the Happy Birthday and that any performance of the song in movies, radio, theater, or on TV required a license and the payment of royalties. The case was settled in 2016. To learn the outcome, read “Happy Birthday” is public domain, former owner Warner/Chapell to pay $14M.”
Trade Secrets
Video: Trade Secrets Overview (7:12) Professor Ida Jones explains trade secrets, factors which dictate the existence of a trade secret, and protections afforded by trade secrets themselves.
Video: How to Protect Your Intellectual Property and Trade Secrets (3:39) The business reality of protecting IP and using non-disclosure agreements (NDAs). NDAs can be tricky, so if you want to understand some of their intricacies, read How NDAs Work and Why They’re Important (Investopedia, 2019).
Reading: Trade Secrets. This article on the U.S. Patent and Trademark Office website discusses trade secret policy and how the courts protect trade secrets.
Reading: ‘Reasonable Measures’ For Protecting Trade Secrets: A Primer (2019). This post by law firm Winston & Strawn discusses ways to protect trade secret protections when employees leave and other “reasonable measures,” as well as confidentiality issues.
Video: Trade secret litigation after the Defend Trade Secrets Act (4:42). An attorney explains the 2016 statute that established the first-ever federal, private civil cause of action for trade secret misappropriation.
Reading: Defend Trade Secrets Act Enacted — Implications for Employers & Trade Secret Litigation. This article explains the 2016 statute and its significance in protecting trade secrets.
Reading: LG Energy Solution Responds To USITC Evidence in SK Innovation Trade Secret Theft (March 2021)
Want to learn more? Enrich your knowledge by exploring these topics in more detail.
International Intellectual Property
Video: International IP: Crash Course Intellectual Property 6 (10:00) Another of the Crash Course IP videos, this one discusses the role of international IP treaties in regulating global intellectual property rights.
Reading: International Protection of Brands and Patents (2006). Although old, this article provides a basic explanation of international IP protection. If you are interested in this topic, you may want to go to the next link.
Website: Pursuing international IP protection. This U.S. Patent and Trademark Office website provides information on and links to how to protect intellectual property in other countries, links to treaties that facilitate filing in multiple countries, and a chart with additional info on how IP is protected in a number of other countries.
RECENT COPYRIGHT LITIGATION
Reading: Supreme Court rules against Andy Warhol in copyright dispute over Prince portrait (CNN, May 18, 2023). The majority (7-2) ruled that Warhol’s use of the Prince photograph in series of silk screens called “Orange Prince” was not fair use, but infringed on the photographer’s copyright. Justice Kagan dissented, saying that the court’s ruling would “stifle creativity” and leave copyright precedent in “shambles.” She also thought Warhol’s work was sufficiently “transformative” as to be fair use. What do you think?
Ed Sheeran’s “Thinking Out Loud” and Marvin Gaye’s “Let’s Get it On” — Copyright Infringement?
Reading: Ed Sheeran wins copyright infringement lawsuit involving Marvin Gaye’s ‘Let’s Get It On’ (May 2023). This lawsuit, filed by the estate of Ed Townsend (who co-wrote “Let’s Get It On” with Gaye in 1973) against Sheeran in 2017. A New York jury ruled in Sheeran’s favor, finding no infringement. Sheeran faced a similar lawsuit filed in 2018 by Structured Asset Sales (SAS), which owned 1/3 of the Marvin Gaye hit “Let’s Get It On.” Sheeran won this lawsuit (also in May 2023), as discussed in Ed Sheeran triumphs in copyright lawsuit over Marvin Gaye’s ‘Let’s Get It On.’ Again.
Video (10:33): Did Ed Sheeran Steal Marvin Gaye’s Chords? This video explores the similarity of the chords at issue in the copyright lawsuit, complete with courtroom drawings of the trial and excerpts from the Vulture stories on the trial proceedings.
Video (8:34) Did Ed Sheeran ACTUALLY Plagiarize Marvin Gaye? Similarly, this video by musician and composer Adam Neely compares the two songs in detail.
Video (2:27): Did Ed Sheeran copy this famous song? Listen for yourself in this CNN report in which Sheeran sings in court. [Sorry for the long ad that precedes the video.]
Katy Perry’s Dark Horse and Flame’s Joyful Noise — Copyright Infringement?
Video: Did Katy Perry Copy From Flames Joyful Noise? (2:13) This 2014 video by musicologist Todd Decker compares Joyful Noise (2008) with Perry’s Dark Horse song (released in 2013) — before a lawsuit was even filed!
Video: Katy Perry v Flame Lawsuit: Let’s Compare (10:10) Musician and musicologist Rick Beato compares the two songs.
Reading: Katy Perry Wins Reversal of Dark Horse Copyright Verdict (March 2020). The federal judge reversed the verdict, holding that the 8-step musical phrase is not a “unique and rare combination.” Marcus Gray appealed in October 2020 and in March 2022, the Ninth Circuit Court of Appeals affirmed the decision of the district court to overturn the initial jury verdict. Read more in Katy Perry Wins Appeal in ‘Dark Horse’ Copyright Suit. Here are articles relating to the original verdict and why some argued it was a bad ruling:
Reading: Katy Perry liable for US$2.8m for Dark Horse ‘copyright infringement’ – but the real loser is the music industry (2019). A Los Angeles jury ruled against Katy Perry and found that she owed gospel rapper Flame $2.8 million for infringing on Joyful Noise. The author criticizes the verdict and predicts dire consequences for the music industry.
Reading (with embedded videos): Musician Says Katy Perry’s ‘Dark Horse’ Copyright Infringement Verdict Sets A ‘Dangerous Precedent’ (2019). Another critical view of the verdict that predicts the music industry will be in a “morass of copyright infringement laws.”
Video: Why the Katy Perry/Flame Lawsuit Makes No Sense (8:54). In criticizing the ruling, the video notes that the ruling turned on the testimony of the plaintiff’s music expert, Todd Decker, whose video at the top of this list argued that she had infringed on Joyful Noise.
Led Zeppelin’s Stairway to Heaven Copyright Litigation
Reading: Stairway to Heaven: Background on the copyright infringement lawsuit with excerpts from numerous songs that contain a similar guitar riff.
Video: Led Zeppelin vs Spirit Lawsuit | Stairway To Heaven Comparison (6:46) This video compares the musical elements of Stairway to Heaven with the plaintiff’s song, Taurus, and other songs which are believed to inspire both of these songs. Watch this video to hear an analysis by Rick Beato that compares the two songs.
Reading and Video: Led Zeppelin Win in Stairway to Heaven Trial (March 2020)Analysis of the trial and its implications by Rolling Stone
Reading and Video: Led Zeppelin Lawyers Want $800,000 for Defending Copyright Suit In the aftermath of a ruling for Led Zepplin’s victory, this article talks about the defendant’s counsel demanding attorney’s fee be paid, which is sometimes permitted in copyright infringement cases.
Blurred Lines
Video: Blurred Lines (1:57) A jury in 2015 returned a verdict against Robin Thicke and Pharrell Williams and found they owed Marvin Gaye’s estate $7.4 million for Copyright Infringement of Gaye’s “Got to Give it Up”
Video: Blurred Lines Judgment (1:52) Judge awards $5.3 million to Gaye’s Estate.
Reading: Blurred Lines: Robin Thicke and Pharrell Williams to pay $5 m in final verdict. The copyright infringement action brought by Marvin Gaye’s estate against Blurred Lines began in 2013. A jury returned a verdict for Gaye in 2015 and this 2018 BBC article discusses the Appellate court decision essentially upholding the initial trial verdict. To learn more about the case, you can listen to the video excerpts and commentary below.
Music video: Blurred Lines (4:31) Listen to the official music video by Thicke and Williams.
Music video: Got to Give It Up (10:25) Marvin Gaye and his music.
Video: Blurred Lines v. Marvin Gaye’s Got to Give It Up (1:26) Listen to the two songs side-by-side and then listen to the longer videos of each song to decide for yourself whether they are similar enough to constitute infringement.
Video: Blurred Lines/Marvin Gaye Comparison Copyright Lawsuit (7:45) A musicologist compares the two songs on a number of more technical musical levels, e.g., melody, chord progression, tempo, bass line, etc.
Copyrights and Tattoos
Reading: LeBron James’ tattoo artist moves forward in lawsuit against NBA 2K makers Take-Two Interactive (2019). The tattoo artist filed suit in federal court in Cleveland in 2017, alleging that the tattoo he created for James was being used in a number of interactive video games. This article discusses the case.
Reading: ‘NBA 2K’ Publisher Beats Copyright Suit Over LeBron James’ Tattoos (March 2020). The article discusses the legal basis for finding no infringement.
Reading: Copyrights and Tattoos (2011). This blog post discusses a copyright infringement case involving the use of a tattoo created for Mike Tyson that Warner Brothers inked on a character in the movie, Hangover II, which nearly delayed the release of the movie. The post discusses the factors the judge applied in denying the tattoo artist’s request for a preliminary injunction.
GSU Copyright Lawsuit
Reading: Library Guide GSU Library was involved in one of the biggest copyright lawsuits against a library for copying excerpts of books and articles and posting them to the Reserve collection. This guide provides a summary of the case, as well as links to the original case (2012), 11th Circuit Court of Appeals opinion (2014), and the trial court opinion (on remand).
Reading: Library Copyright Alliance Supports Georgia State University in Amicus Brief (2013). This article provides a good overview of the litigation through the trial outcome.
Readings: Articles on GSU Copyright Suit compiled by the Association of Research Libraries.
Intellectual Property
Reading: Sports IP: Name, Image, and Likeness (NIL). This October 2021 blog post describes the aftermath of the Supreme Court’s decision giving “student-athletes” the right to be compensated for use of their NIL.
Reading: What is Intellectual Property? General overview of intellectual property, its categories, and the rights and protections guaranteed for each type of IP category
Reading: How Trademarks Differ from Patents and Copyrights Nolo explains the difference between trademarks and copyrights and patents.
Reading: “Four Intellectual Property Myths You Should Avoid” (Entrepreneur October 7, 2015) Although a bit dated, this article explains why one patent may not be sufficient to protect an invention, why the various forms of intellectual property are not interchangeable, and why simply holding a patent may not be attractive to investors.
Protecting Intellectual Property
Video: USPTO and trademark basics (11:03). An expanded version of the USPTO’s Video on Trademarks, Patents, and Copyrights (in Trademarks above). Provides a basic explanation of patents, trademarks, and copyrights (despite its title), how to register a trademark, and the benefits of doing so. Uses a lot of graphics and images to illustrate types of items that can be protected via trademark.
Video: Lecture on Trademarks (41:47) Also produced by the USPTO, this video provides a much more detailed discussion of the importance of trademarks to business and explains how trademarks differ from patents, copyrights, domain names and business names registration.
Website: Resources for Inventors and Entrepreneurs The U.S. Patent and Trademark Office provides an extensive website for entrepreneurs that explains the online process of filing and application process for each type of patent and trademark, with links to videos to walk you through the process. It also has advice for avoiding scams, finding resources nationwide, and eligibility criteria to determine if you qualify for free assistance to help you file for patent and trademark protection.
Reading: 10 Ways to Protect Your Intellectual Property Article provides advice on the importance of obtaining intellectual property protections for new and start-up companies.
Video: What does an Intellectual Property Attorney Do? Attorney Tina Amador-Robles explains IP law and the role of an IP attorney.
Patents
Reading: IP Watchdog’s Beginner’s Guide to Patents and the Patent Process. This is a great resource if you want to learn more about the patent process, including the importance of a patent search!
Reading: FAQ on the Process for Applying for and Obtaining a Patent
Video: Design Patents & Utility Patents (4:00) Video explains the difference between these types of patents.
Website: Patents and Patent Trolls by John Oliver’s Last Week Tonight (2015) Oliver offers an explanation of patent trolls and how they can abuse the patent system by stockpiling patents and threatening lawsuits, forcing businesses are forced to [ay considerable sums of money. (Language may be offensive to some).
Trademarks
Reading: Usain Bolt Trademarks. Gerben law firm maintains an intellectual property page for TMs held by Usain Bolt (updated April 2021), including his UB logo and his “pose,” both of which are used on a variety of products, including clothing, sunglasses, outdoor gear, etc. You can search their website to see trademarks held by 76 other athletes including Alex Rodriguez, Babe Ruth, Dak Prescott, Jesse Owens, Kobe Bryant, LeBron James, Magic Johnson, Michael Jordan, Mohammed Ali, Tiger Woods, Tom Brady, and Zion Williamson. (site is constantly being updated).
Reading: Skittles owner sues THC-laced copycat Zkittlez for trademark infringement (May 2021). Mars Wrigley candy company sued the manufacturer of Skittles-like candy with the psychoactive compound in cannabis.
Reading: Should I Register My Trademark? Advice regarding why to register a trademark, and the benefits to filing for federal (rather than state) trademark protections.
Reading: Applying for a Trademark or Service Mark (includes directions, an instructional video, and the actual application form)
Copyrights
Video: (for entertainment!) A Fair(y) Use Tale (10:13) An explanation of Copyright Law and Fair Use using video clips from Disney movies (not available for module review assignment)
Reading “Weird Al’s Rejected Wings Parody, ‘Chicken Pot Pie” (Rolling Stone May 26, 2016). For a video of Weird Al performing a portion of this parody, go to Chicken Pot Pie Live! (not available for module review assignment)
Reading: Works Made for Hire Explains the legal issues that may arise if you hire third-party independent contractors (rather than utilizing employed workers) to create your intellectual property.
Reading: Copyright Registration for Sound Recordings U.S. Copyright Office explains how to file for copyright protection
Trade secrets
Reading: Trade Secrecy in Willy Wonka’s Chocolate Factory Based on the book and original movie.
Video: Slugworth and the Everlasting Gobstopper (:48) Listen to this video clip from the original Charlie and the Chocolate Factory to hear Slugworth ask Charlier to steal trade secret information from Wonka. (not available for module review assignment)
Video: Evil Alert: The Top 20 Schemes Plankton Used to Steal the Trade Secrets (8:15). If you’re familiar with Sponge Bob Square Pants, you might enjoy this compilation from several episodes involving attempts to steal Krusty Krab’s trade secrets.
Video: Trade Secret vs Patent Litigation (3:58) An attorney with Jones Day explains the difference between litigating a trade secret claim and one alleging patent infringement.
Unfair Competition
Video: Unfair Competition (6:50) Professor Ida Jones explains unfair competition as a type of intellectual property.
Agencies that Protect Intellectual Property
Website: U.S. Patent and Trademark Office Provides general information about patents and trademarks and how to protect them, as well as searchable databases to find existing patents and trademarks.
Website: USPTO How To Search the Trademark Database. In addition to explaining the process, one link takes you to TESS, the Trademark Electronic Search System so that you can search for existing or pending trademarks, which reduces the possibility that your application will be denied under the “likelihood of confusion” standard. Feel free to conduct a search — think up a name you believe might be novel and see if it has already been trademarked!
Website: U.S. Copyright Office Allows you to search for copyrights, register copyright and record a document. Contains a Fair Use Index of cases, tutorials, and other information about copyrights.
Website: WIPO The World Intellectual Property Organization. The website serves as a portal to all WIPO activities, services, and resources, including databases, insight and analysis, inventor assistance, and a WIPO Academy, that even offers online summer courses for college students interested in intellectual property.
Website: WIPO Lex database to search for national laws and international treaties on IP This database provides free access to legal information on WIPO-administered treaties, other IP treaties, and IP laws of member nations.