Intellectual Property Basics: Digital Works
QUICK JUMP: Patent Process Overview | Digital Works Excerpt from: Development and Deployment of Digital Works in Universities: A Guide for Authors and Licensing Officers by Catherine Innes and Charles C. Valauskas, published by the Association of University Technology Managers, 1999 Part of the challenge in creating and managing software, multimedia, digital media and web-based content is that there is no single body of law that governs its ownership and protection. Commercial entities typically look to copyright, patent, or trade secret protection for software or other digital content. Copyright is clearly the most important form of protection for such works. However, other forms of protection—such as trademark and the right of publicity—may come into play in either the creation or use of digital content. The potential profitability of products built around digital content creates an incentive for owners to seek as many forms of protection as possible. Each of these forms of protection has attributes and shortcomings. As a result, it is important for developers of digital works to understand how all intellectual property laws may be employed to protect their works.Trade Secrets
Trade secrecy is the most common form of intellectual property protection in the business world, and in particular, it is commonly used in the computer industry. One major reason for this is that trade secrets can cover a very wide spectrum of information—including material that is not eligible for copyright (such as processes and ideas), or patent protection (such as subject matter that does not meet the novelty test), and regardless of whether it is in tangible form or intangible form. Trade secrets are broadly defined as any information that has value—either actual or potential—that is not generally known and is kept secret by its owner. As with copyright, no application or disclosure process is necessary to obtain trade secret protection. Unlike patents and copyrights, which are federal forms of protection, state law provides trade secret protection. Advantages of trade secret protection are that it can last indefinitely and there is no cost associated with obtaining this form of protection. Courts have found that a variety of forms of subject matter, including computer software and display architecture, may constitute or contain trade secrets. The major shortcoming of this form of protection is that it does not provide the limited period of exclusivity that a patent or copyright provides: trade secret protection (without backup contractual protection such as a nondisclosure agreement) cannot prevent someone else from independently developing the same information or “reverse engineering” a product that comes to the open market. Universities develop this form of intellectual property daily but they do not often take the steps to protect it as such. This is partially due to the lack of familiarity with what is needed for such protection, but also because of the countervailing policies and practices inherent to academic institutions. A primary mission of academic institutions is to educate the public about new discoveries. The value that the public ascribes to such institutions is often measured by such public disclosures. The tenure track system—with the emphasis on publication—further acts as a disincentive to the maintenance of information as a trade secret. With the increase in the cost of other forms of protection, it may be useful for universities to utilize trade secrecy more as businesses do to protect software, hardware, databases, and new processes, as well as more common forms of information such as technical data, know-how, clinical data, and other tangible results of research.
Patents
The U.S. government grants for a limited time exclusive rights to useful, new, and nonobvious inventions or designs. The owner of a patent can prevent others from the manufacture, use, offer for sale, or sale of the patented invention in the U.S. and the importation into the U.S. of the same. Patent protection for digital based products and technology historically has been used sparingly relative to copyright and trade secret protection. One reason is that the courts have employed changing standards to determine whether and what digital based technologies can be protected by a patent. Another significant factor is the time and cost involved to obtain a patent. It can take some 18 to 24 months and in excess of $10,000 to obtain a patent on software. For technology that is rapidly changing, the value of a patent may be limited. Many elements of content in digital form may qualify as patentable subject matter A patent may be granted to anyone who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof.” These classes of subject matter taken together include practically everything that can be made by man and the processes for making the products. This robust form of intellectual property protection adheres to strict guidelines and digital developers should consider whether a patent would provide desirable protections for their purposes. Software may have both patentable and copyrightable elements and a claim of copyright protection for expression does not preclude patent protection for a novel idea in the form of an algorithm. It should also be noted that patent protection does not allow independent creation and thus if someone has obtained a patent on an idea, all others must obtain a license to use the invention, even if the use is unintentional or without knowledge that a patent exists.
Trademarks
A trademark is any symbol—such as a word, acronym, phrase, or design—that identifies and distinguishes the source of goods. A service mark is the same as a trademark except that it is used for a service rather than a product. Trademark rights are established by the actual use of the mark or the filing of an application to register the mark based on a bona fide intent to use it. The owner (or applicant) of a distinctive trademark has the exclusive right to use the mark on the type of goods for which the mark was obtained. Any word or logo may be used as a trademark as long as it does not contain immoral or deceptive matter; matter that falsely suggests a connection with persons or institutions other than the owner of the mark; a national or state flag; or is likely to cause confusion in the marketplace with other goods. Marks that are distinctive, such as Xerox, are considered to be stronger and more enforceable than words that are descriptive of the product or service, such as Pizza Hut. Cybermarks—a phrase coined for marks used on the world wide web—are valuable tools. Browsers of web content often use trademarks to search for content they wish to access. Marks have also been used as valuable tools to further help to protect copyright works from misuse on the web. University interest in registering trademarks and generating income, however, is typically limited to the athletic departments’ interest in satisfying the students, parents, and alumni demand for clothing and souvenirs bearing the university’s name, logos, and mascots. Trademark is an important form of intellectual property protection and may be an effective method of protection in technology licenses. Universities may wish to expand their use of trademarks and develop and use strong marks with new content that is placed on the web.
Right of Publicity
Some say that the fifth intellectual property right is the right of publicity: that is, the right everyone has upon birth to control how their name, image, voice, or other identifying characteristics (as a whole termed the “persona”) may be used. This is a right that varies from state to state. Any developer of digital content will need to consider this right if a project uses photographs, voice sound recordings, or names of individuals. Even if the individual is deceased, the right of publicity may still be implicated as some state laws provide that this right survives death. If the project is or may be intended for wide distribution such as on the internet, it is recommended that the project be able to clear the law of the state with the most restrictive law on point.
Copyright
Patents result only after the U.S. Patent and Trademark Office (USPTO) grants the same, trademark rights result upon use of the mark (or filing an intent to use application directed to the mark), and trade secrets come into existence upon the development of valuable information that is not generally known. Copyright law provides protection of an original expression as soon as it is rendered in tangible form—regardless whether the form is digital or analog. Other than fixing an original work in a tangible form, nothing else is necessary to establish this form of intellectual property protection. In its simplicity in obtaining protection, copyright is like trade secrecy. Copyright is a valuable form of intellectual property protection, but like all forms of protection, it has certain shortcomings as well. Unlike patents, which are granted only to unique ideas, copyright may be granted to many similar works that are independently created from the same ideas. This issue comes up frequently with respect to software because it contains both original expression and functional ideas. Copyright does not protect ideas that may be contained in a protectable expression and thus would not protect against someone else entering the market with a competing software product based on the same idea.