IP Comparison Chart (Intellectual Property: Law & the Information Society - Selected Statutes & Treaties)

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IP Comparison Chart (Intellectual Property: Law & the Information Society - Selected Statutes & Treaties)

+-----------------+-------------------+------------------+-------------------+
|                 | TRADEMARK         | COPYRIGHT        | PATENT            |
+-----------------+-------------------+------------------+-------------------+
| Constitutional  | Commerce          | IP Clause,       | IP Clause, Patent |
| and Statutory   | clause,           | Copyright Act    | Act               |
| Basis           | Lanham Act.       |                  |                   |
|                 | (There are also   |                  |                   |
|                 | state             |                  |                   |
|                 | trademarks.)      |                  |                   |
+-----------------+-------------------+------------------+-------------------+
| Subject         | Word, phrase,     | Creative         | Inventions—new    |
| Matter          | symbol, logo,     | works—for        | and useful        |
|                 | design etc. used  | example,         | processes,        |
|                 | in commerce to    | books, songs,    | machines,         |
|                 | identify the      | music, photos,   | manufactured      |
|                 | source of goods   | movies,          | articles,         |
|                 | and services      | computer         | compositions of   |
|                 |                   | programs         | matter. Not       |
|                 |                   |                  | abstract ideas or |
|                 |                   |                  | products/laws of  |
|                 |                   |                  | nature            |
+-----------------+-------------------+------------------+-------------------+
| Requirements    | Not generic (or   | Original and     | Useful, novel     |
| for Eligibility | merely            | creative         | and non-obvious   |
|                 | descriptive       | expression,      | to a person       |
|                 | without           | fixed in         | having ordinary   |
|                 | secondary         | material form    | skill in the art  |
|                 | meaning),         |                  | (PHOSITA)         |
|                 | identifies source |                  |                   |
|                 | of product or     |                  |                   |
|                 | service, used in  |                  |                   |
|                 | commerce          |                  |                   |
+-----------------+-------------------+------------------+-------------------+
| Rights          | Basic trademark   | Exclusive        | Exclude others    |
|                 | right only vis a  | rights to copy,  | from making,      |
|                 | vis a particular  | distribute,      | using, selling or |
|                 | good or service.  | make             | importing         |
|                 | Bass for beer,    | “derivative      | invention         |
|                 | not ownership     | works”,          |                   |
|                 | of word “Bass.”   | publicly         |                   |
|                 | Prevents others   | perform and      |                   |
|                 | from using        | publicly         |                   |
|                 | confusingly       | display.         |                   |
|                 | similar           | Possibly new     |                   |
|                 | trademarks; for   | right to stop    |                   |
|                 | famous marks,     | circumvention    |                   |
|                 | prevents others   | of digital       |                   |
|                 | from “diluting”   | ‘fence’          |                   |
|                 | the mark. Also    | protected ©      |                   |
|                 | prohibitions      | works.           |                   |
|                 | against false or  |                  |                   |
|                 | misleading        |                  |                   |
|                 | advertising.      |                  |                   |
+-----------------+-------------------+------------------+-------------------+
| Duration        | If renewed and    | Life plus 70     | 20 years for      |
|                 | continually used  | years; 95 years  | utility patents   |
|                 | in commerce,      | after            |                   |
|                 | can be            | publication for  |                   |
|                 | perpetual.        | corporate        |                   |
|                 |                   | works            |                   |
+-----------------+-------------------+------------------+-------------------+
| How Rights      | USPTO             | Creation and     | USPTO patent      |
| are Procured    | trademark         | fixation         | application       |
|                 | registration      | in a tangible    | process           |
|                 | process           | medium;          |                   |
|                 | for ® status,     | registration is  |                   |
|                 | though common     | not required to  |                   |
|                 | law rights        | get copyright    |                   |
|                 | are recognized    | (but is required |                   |
|                 | absent            | for suit to      |                   |
|                 | registration      | enforce)         |                   |
+-----------------+-------------------+------------------+-------------------+
| Examples of     | Genericity,       | Idea and         | Abstract          |
| Limitations     | nominative fair   | fact/expression  | knowledge         |
| and             | use, parodic use  | distinction,     | in patent         |
| Exceptions      |                   | scenes a faire,  | application       |
|                 |                   | fair use, first  | disclosed freely. |
|                 |                   | sale             | Subsequent        |
|                 |                   |                  | inventors can     |
|                 |                   |                  | “build on”        |
|                 |                   |                  | patented          |
|                 |                   |                  | invention and     |
|                 |                   |                  | patent result     |
|                 |                   |                  | without           |
|                 |                   |                  | permission. Both  |
|                 |                   |                  | inventors must    |
|                 |                   |                  | consent to        |
|                 |                   |                  | market resulting  |
|                 |                   |                  | compound          |
|                 |                   |                  | invention.        |
+-----------------+-------------------+------------------+-------------------+

 

 

TRADEMARK

COPYRIGHT

PATENT

Constitutional and Statutory Basis

Commerce clause,
Lanham Act. (There are also state trademarks.)

IP Clause, Copyright Act

IP clause, Patent Act

Subject Matter

Word, phrase, symbol, logo, design etc. used in commerce to identify the source of goods and services

Creative works—for example, books, songs, music, photos, movies, computer programs

Inventions—new and useful processes, machines, manufactured articles, compositions of matter. Not abstract ideas or products/laws of nature

Requirements for Eligibility

Not generic (or merely descriptive without secondary meaning), identifies source of product or service, used in commerce

Original and creative expression, fixed in material form

Useful, novel and non-obvious to a person having ordinary skill in the art (PHOSITA)

Rights

Basic trademark right only vis a vis a particular good or service. Bass for beer, not ownership of word “Bass.” Prevents others from using confusingly similar trademarks; for famous marks, prevents others from “diluting” the mark. Also prohibitions against false or misleading advertising.

Exclusive rights to copy, distribute, make “derivative works”, publicly perform and publicly display. Possibly new right to stop circumvention of digital ‘fence’ protected © works.

Exclude others from making, using, selling or importing invention

Duration

If renewed and continually used in commerce, can be perpetual.

Life plus 70 years; 95 years after publication for corporate works

20 years for utility patents

How Rights are Procured

USPTO trademark registration process
for ® status, though common law rights
are recognized absent registration

Creation and fixation
in a tangible medium; registration is not required to get copyright (but is required for suit to enforce)

USPTO patent application process

Examples of Limitations and Exceptions

Genericity, nominative fair use, parodic use

Idea and fact/expression distinction, scenes a faire, fair use, first sale

Abstract knowledge
in patent application disclosed freely. Subsequent inventors can “build on” patented invention and patent result without permission. Both inventors must consent to market resulting compound invention.

* * *

Intellectual Property: Law & the Information Society
Selected Statutes & Treaties

First Edition, 2014

James Boyle, William Neal Reynolds Professor of Law, Duke Law School

Jennifer Jenkins, Director, Center for the Study of the Public Domain & Senior Lecturing Fellow, Duke Law School

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Case Information

August 19, 2014

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