Minnesota Law
Minnesota Intellectual Property & Computer Law
Intellectual Property & Computer Law
Copyright
Coverage
Copyright protection is granted to original works of "authorship" fixed in a tangible form of expression. Authorship includes literary works, such as novels, poems, and short stories; musical works, including any accompanying words; dramatic works, including any accompanying music; dance works; paintings; photographs; sculptures; movies and sound recordings; and architectural works. Copyright protection applies to a wide range of expression, from computer software to advertisements. What all of these items have in common is an original expression of an idea. Copyright applies to the expression of the idea, not the idea. Whether something infringes on a copyright is difficult to discern and a great deal of case law has been written on the subject. For example, in a written work outright plagiarism -- that is, the exact copying of words -- is infringement, but a copyright does not prevent others from using the facts and ideas used in that work.
Copyright is separate from the subject matter of the copyright. For example, if a person buys a painting from an artist, he or she buys the painting only and not the copyright. If the buyer makes copies of the painting and sells them, the buyer is infringing on the artist's copyright. Copyright gives the creator of the work the exclusive right to reproduce the work, prepare other works based on copyrighted work, distribute copies, perform the work, and display the work. An owner of a copyright can sell one, some, or all of these exclusive rights. For example, an author of a novel can sell the movie rights to one person and the paperback rights to another.
Creation
Copyright protection originates from the time the work is created. A work does not have to be published in order to receive copyright protection. There are no applications to fill out in order to have copyright protection. Copyright protection lasts a limited time. The time period depends on when the work is created and whether or not it was published. Generally, works created on or after January 1, 1978, have copyright protection from the time of creation throughout the creator's life, plus an additional 50 years. For works made during the course of employment, the duration of copyright is 75 years from publication or 100 years from creation, whichever is shorter.
Owner
The owner of a copyright is typically the creator of the work. However, if a person is employed by another and creates the work while on the job, the copyright is owned by the employer, not the employee. This is known as work made for hire. If a person hires an independent contractor to create a work, he or she should address the copyright ownership up front. One does not necessarily own the copyright for an item that an independent contractor creates on the job. In this situation, the parties should decide who owns the copyright and whether the work is work made for hire.
Notice and Registration
As stated previously, copyright protection arises when a work is created and does not require registration or notice. However, a person may give notice that the work is copyrighted and register a copyright. For works created after March 1, 1989, it is no longer required to place a copyright notice on the work. However, it is a good idea to place the copyright notice on all creative works to give notice of the copyright claim. If there is an infringement of a copyright, a court will not allow the party who infringed to claim that he or she did not know that the work was copyrighted if a notice was placed on the work.
A copyright notice contains three parts:
- The word "Copyright," the abbreviation "Copr.," or the © symbol
- The year the work was first published
- The name of the copyright owner
Besides placing a copyright notice on an original work, a person may also register the copyright. Registering a copyright is not required, but it provides three benefits: first, a presumption that the copyright claim is valid; second, the award of attorney fees and statutory damages in an infringement case; and finally, copyright registration is a prerequisite to bringing an action for copyright infringement.
Registering a copyright is relatively straightforward. In general, the registration should be done within three months of publication. A person must complete an application supplied by the Library of Congress, Copyright Office. This form is sent to the Office with a filing fee and copies of the work. The number of copies to be supplied depends on whether the work has been published, whether the work has been published outside the United States, or if the work is a contribution to a collective work.
Fair Use
Although a copyright gives its owner exclusive rights, fair use of a copyrighted work is not considered an infringement of copyright. Fair use includes copying for purposes such as news reporting, teaching, research, and comments and criticisms. Factors to be considered in determining whether use is fair use include the purpose of the use, whether the use is for profit or not, the amount of the work used, and the effect of the use on the value of the work. There are also exceptions for libraries and teachers.
Patent
Patent Categories
An invention must be new, useful (except for design patents that must be ornamental), and not obvious in order to be granted a patent. There are three categories of patents -- utility patents, design patents, and plant patents. A utility patent is granted to anyone who invents or discovers any new or useful process, method, machine, manufacture, composition of matter, or any improvement thereof. A new industrial or technical process may be patented. Manufacture refers to the articles that are made. Composition of matter relates to chemical compositions and includes mixtures of ingredients as well as new compounds. A utility patent is granted for a term of 17 years. A design patent is granted to anyone who invents a new, original, and ornamental design for an article of manufacture. The appearance of the article is protected under this patent. A design patent is granted for a term of 14 years. A plant patent is granted to any person who invents or discovers and asexually reproduces any distinct and new variety of plant. The plants may include any mutants, hybrids, and newly found seedlings, except a tuber-propagated plant or a plant found in an uncultivated state. A plant patent is granted for a term of 17 years.
Application
In order for a patent to be granted to an inventor, an application for a patent must be filed. Once a patent has been applied for, the inventor may proclaim that his or her product has a patent pending, but this does not provide any protection against infringement; it only serves as a warning to others that a patent may be forthcoming. A patent application is made to the U.S. Patent and Trademark Office, which is part of the U.S. Department of Commerce. A patent application is confidential; however, if a patent is granted, the application becomes public information.
The application includes three components. First, the applicant must submit a written document that describes the invention and states the claims of the inventor. The statement must be in such detail that a person knowledgeable in the subject matter area could build and use the invention based on the information provided. The claims must state the patented characteristics of the invention. This document must also contain a declaration by the inventor that he or she believes himself or herself to be the original and first inventor of the application's subject matter. The declaration must be notarized. The second component of the application is drawings. Drawings of an invention should be furnished to illustrate the invention. An inventor should supply as many drawings as are necessary to adequately describe the invention. The third requirement is the filing fee. The fees may be reduced by 50 percent if the patent applicant is an individual, small business, or nonprofit organization.
After a patent application is filed, a patent examiner reviews the application. The examiner may allow the patent, reject the application, or object to the application. A rejection means that the examiner believes the invention should not be granted a patent, while an objection means that there is a problem with the application. A problem with the application can be fixed -- an inventor can amend the patent application to address the concerns raised by the examiner. An inventor can appeal a patent rejection.
A patent will not be granted if the invention was in public use or on sale in the United States more than one year before filing the application. Even an inventor's own use of the invention may bar him or her from receiving a patent if the use occurred for more than one year before application. A patent also will not be granted if the invention was the subject of a patent application in another county that matured more than one year prior to the filing of a patent application.
Patents are granted only to the inventor; however, an inventor may sell the rights to the patent or sell licenses whereby another can pay a fee to use the patent. The license may be exclusive or nonexclusive. If the rights to a patent are assigned, the assignment should be registered with the U.S. Patent and Trademark Office.
Before an inventor applies for a patent, a search should be done to determine whether a patent already has been granted for the invention. This search may be expensive. The Public Search Room of the U.S. Patent and Trademark Office is the primary source of information. Also, a Patent and Trademark Depository Library has been established at the Minneapolis Public Library and Information Center.
When a patent is granted, an inventor must pay an issuance fee. Also, maintenance fees for the patent are paid three times during the patent period to keep the patent in force. Minnesota statutes require any invention development services in Minnesota to disclose the number of customers who have received additional money by virtue of the work done by the invention developer service.
The U.S. Patent and Trademark Office maintains a register of attorneys and agents who meet the legal, scientific, and technical requirements to practice patent law, and who agree to uphold high standards of professional conduct.
Trademark
Rights to a trademark arise when a trademark is used or an application to register is made and the applicant intends to use the mark. A trademark gives the owner exclusive use of the trademark as long as it is used to identify goods or services. As is the case with copyrights, federal registration is not necessary for a trademark to be protected. A trademark is good from the first time a product is used in interstate commerce. A mark may lose its trademark significance if it becomes associated with a generic name. For example, the terms "nylon" and "escalator" were once trademarks that became generic. As with a copyright, there are a number of advantages to federal registration. A trademark may be registered with either the U.S. Patent and Trademark Office or the Minnesota Secretary of State. Registration in one office does not register the trademark in the other office.
Federal Trademark Registration
As previously mentioned, federal registration of a trademark is not required; however, there are two benefits from registering. First, the owner of a federal trademark registration is presumed to be the owner of the trademark. Second, the owner of a federal trademark registration is entitled to use the trademark nationwide.
An application for federal trademark registration goes through two stages. First, the application must be accepted, and second, once the application has been accepted, the process to determine trademark registration begins. An application to register a trademark must be filed in the name of the owner. The owner can be an individual, partnership, or corporation. An owner who has already begun using a trademark can file an application based on that use. An owner who has not yet used the trademark may make an application based on an intention to use the trademark. Use of a trademark in promotion or advertising before the trademark is used with the products or goods does not qualify as use. If an owner files an application based on intent to use the trademark, she or he must use the trademark and submit proof of this use to the U.S. Trademark and Patent office before the trademark will be registered.
The application consists of a completed application form, a drawing of the mark, and a filing fee. There is a separate filing fee for each class of goods or services listed in the application. The Patent and Trademark Office maintains a list of over 40 class categories, from furniture to clothing to chemicals. If the application is based on the use of the trademark, the application must include three examples per class showing actual use of the trademark. A separate application must be filed for each trademark a person wishes to register. The applicant must be careful when identifying goods and services, because an application may not be amended later to add goods or services not within the scope of the original identification.
After an application is filed, it is reviewed to determine if it meets the minimum requirements. If it does, the application is given a serial number and the applicant is sent a receipt. If minimum requirements are not met, the application and the fee are returned to the applicant. After an application is accepted, an examining patent and trademark attorney reviews the application to determine whether the trademark should be registered. If the attorney decides that the trademark may not be registered, a letter is sent to the applicant stating the grounds for refusal. The applicant must respond within six months or the application will be abandoned. If the applicant's response does not overcome the attorney's objections, a final refusal will be issued. A common reason for refusing to register a trademark is the likelihood of confusion between the applicant's trademark and a trademark that has already been registered.
If there are no objections to the application or the objections have been overcome, the attorney will approve the trademark for publication in the Official/Gazette, a weekly publication of the Patent and Trademark Office. Any party who believes that it may be harmed by the registration of the published trademark has 30 days to file an opposition to the trademark. Oppositions to trademarks are heard before the Trademark Trial and Appeal Board.
If no oppositions are raised, the application continues in the registration process. The next step depends on whether the application is based on actual use of the trademark or intent to use the trademark. If the application is based on the actual use of the mark, the Patent and Trademark Office registers the mark and issues a registration certificate.
If the application is based on the party's intent to use the trademark, the Patent and Trademark Office issues a Notice of Allowance. The applicant has six months from the date of the notice to either use the trademark and send to the Patent and Trademark Office a Statement of Use with three samples of use per class or request an extension of time. If the Statement of Use is filed and approved, the Patent and Trademark Office then issues a registration certificate. There is an additional fee per class for these filings.
Before a person applies for federal registration of a trademark, a search should be done to determine whether there are any conflicting trademarks. The application fee is not refunded if a conflicting trademark is found. Also, one would not want to spend resources on a trademark that is not available. The Public Search Library of the U.S. Patent and Trademark Office is the primary source of available trademark information. Also, a Patent and Trademark Depository Library has been established at the Minneapolis Public Library and Information Center. The term of a federal trademark registration is ten years, with ten-year renewal terms.
Besides registering a trademark claim, a person may also give notice to the public that trademark rights are claimed. The TM symbol or the SM symbol may be used by anyone to notify the public of the claim. Registration is not required; however, use of the registration symbol ¬ is permitted only when the trademark has been registered with the Patent and Trademark Office.
State Trademark Registration
A trademark can also be registered with the Minnesota Secretary of State's Office. A state trademark registration is not equivalent to federal registration. A trademark that is federally registered does not need to be registered with a state since federal registration gives the owner the rights to that trademark nationally. However, a party who has not registered a trademark with the Federal Patent and Trademark Office may, in some instances, wish to file the trademark with Minnesota. For example, if a person is operating a small business in Minnesota and has no intention of expanding the business, he or she may consider registering the trademark with the Secretary of State to protect his or her interests only in the state of Minnesota.
A trademark registration in Minnesota takes less time and costs less than federal trademark registration. An applicant must submit an application to the state with the appropriate filing fee. State registration only provides protection in Minnesota, so a person can have a trademark registered with Minnesota and another person could legally use the same trademark in Wisconsin. Trademarks registered in Minnesota can also be protected as long as the trademark continues to be used. The initial term of a trademark registration is ten years with subsequent renewal periods. Registering an assumed name or a corporate name in Minnesota is not trademark registration and does not provide trademark protection.
Trade Secret Law
Case law interpreting Minnesota's Uniform Trade Secrets Act has focused on the steps a business must take to protect a secret before it can claim misappropriation. An attorney experienced in this area can advise on the steps appropriate for a particular business to take. Generally, a business can help protect trade secrets by maintaining a strict policy regarding the identification, communication and use of trade secrets. Some practical means by which a company can help protect misappropriation of its secrets include reminding employees about confidential communications, asking them to sign confidentiality agreements, reminding them before and after the discussion of a trade secret to keep the information confidential, and by denoting sensitive communications with the word "secret," or "confidential."
Resources
United States Patent and Trademark Office, Washington, D.C. 20231, (703) 308-HELP (general information), (703) 557-INFO (automated), TDD (703) 305-7785.
Minnesota Secretary of State, 180 State Office Building, 100 Constitution Avenue, St. Paul, MN 55155-1299, (612) 296-2803.