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Think about this – you take this intangible thought, turn it into something tangible, and give it life! Indeed, it becomes ‘alive’ and even enjoys the protection of the law. We’re talking about intellectual property; an interesting subject that we introduced as a new series two weeks ago. In part I & II of the series, we powered through a number of aspects of intellectual property, including the definition thereof, categories that make up intellectual property, and the rights conferred under the relevant category.

In part III of the series, we invite you to take one step back with us for a quick, at-a-glance comparison of the different types of intellectual property, which, as outlined and described in part I, include patents, copyrights, trade secrets, and trademarks. For starters, the four types are the fabric upon which intellectual property rights are founded. Each provides the owner a range of protections. However, while none provides the exact same rights, the different types of intellectual property may complement each other (and even overlap at times). Another vital aspect to note is that each form of protection associates with a particular subject matter, with varying restrictions, requirements and the same, but not uniform, remedies, which results from infringing on the owner’s rights. Thus, understanding each in depth is crucial. Accordingly, for our discussion today, we will consider several points concerning each type, including ownership, requirements, eligible subject matter, misappropriation/infringement, remedies, and key limitations, and create a sort of quick guide for you to have on hand, so you can understand the mechanisms on which they work.

As a preliminary matter, a discussion on intellectual property entails significant complicated language… so let’s turn this into common English.

“Assignee” – an individual to whom an intellectual property is legally transferred to;

“Inventor” – an individual who has invented something, either tangible or intangible, that’s considered an intellectual property;

“Author” – a person who has written a book, article, or document that’s considered to be an intellectual property;

“Infringer” – a person who violates/infringes on an intellectual property;

“Injunctive relief,” simply referred to as an injunction, concerns a “judicial” remedy which restrains a party from undertaking particular acts or demands them to act in a certain way to stop infringing on intellectual property rights. In other words, you are asking for the Court to provide “injunctive” relief—i.e. relief as offered by the Court telling someone what they can or cannot do. Now that we have some of the standardized, common terms out of the way, let’s go a bit into some of the specific categories and talking points, to serve as an overview for you in the future. Without further ado, let’s dive right in!

Patent

  • Ownership – owned by the inventor or their assignee(s).
  • Requirements – adequate written description, utility, non-obviousness, and novelty.
  • Eligible Subject Matter – inventions (devices/machines, processes, ornamental designs, etc.).
  • Misappropriation/infringement – using, importing, selling, offering for sale, and making the invention without permission from the inventor or their assignee(s).
  • Remedies – if infringed, the infringer is required to incur injunctive relief and/or damages that include reasonable/established royalty or lost profits.
  • Key limitations – reasonable repair and exhaustion doctrines.

Copyright

  • Ownership – owned by the author or their assignee(s).
  • Requirements – fixation and originality in a tangible medium.
  • Eligible Subject Matter – a range of authorship works (musical, literary, or dramatic works, sculptural, pictorial, choreographic, or graphic works, and architectural, sound recordings, or audiovisual works.
  • Misappropriation/Infringement – displaying, performing, distributing, adapting, and/or reproducing a work without permission from the author or their assignee(s).
  • Remedies – if infringed, the infringer is required to incur injunctive relief and a range of damages such as statutory damages, a reasonable royalty, infringer’s profits, or lost profits.
  • Key Limitations – compulsory licensing and first sale, fair use, and merger doctrine.

Trade Secret

  • Ownership – owned by the developer or their assignee(s).
  • Requirements – independent economic value, reasonable efforts to uphold secrecy, and actual secrecy.
  • Eligible Subject Matter – Commercially sensitive information/data (secret processes, techniques, programs, compilations formulas, methods, and patterns, etc.).
  • Misappropriation/Infringement – Disclosing, using, and/or acquiring with the permission of the developer or their assignee(s).
  • Remedies – if infringed, the infringer is required to incur injunctive relief and/or damages such as a reasonable royalty, infringer’s profits, or lost profits.
  • Key Limitations – Independent development.

Trademark

  • Ownership – owned by first person to use in commerce (either constructive use through an intent-to-use application or actual use).
  • Requirements – distinctiveness (means the ability to act as source identifier).
  • Eligible Subject Matter – the form of which is virtually unlimited and source identifiers including logos, designs, words, colors, sounds, slogans, and product packaging and/or configurations.
  • Misappropriation/Infringement – Using and/or displaying similar identifier that could cause confusion in the marketplace as to the service or product’s source.
  • Remedies – if infringed, the infringer is required to pay injunctive relief and/or damages such as a reasonable royalty, infringer’s profits, or lost profits.
  • Key Limitations – fair use and first sale doctrine.

Stay tuned for more guidance, training, and counsel. In the interim, if there are any questions or comments, please let us know at the Contact Us page!