Comparing Copyright, Trademark, and Patent

SOURCE OF RIGHTS, SUBJECT MATTER, OWNERSHIP, DURATION

  Copyright Patent (utility) Trade secret Trademark
Source of protection Federal: Copyright & Patent Clause, 1976 Copyright Act

State: generally preempted

Federal: Copyright & Patent Clause, 1952 Patent Act and 2011 AIA amendments

State: generally preempted

Federal: Commerce Clause; Defend Trade Secrets Act of 2017 (DTSA)

State: Uniform Trade Secrets Act (UTSA), Restatement

Federal: Commerce clause; Lanham Act of 1946

State: statute/common law

What is protected (subject matter) Original work of authorship fixed in tangible medium of expression Novel, useful, and nonobvious product or process. Certain types of information, if reasonable steps taken to keep secret and there is independent economic value Word, symbol, other device used as indicator of source or origin of goods/services
What is not protected Facts, ideas, procedures, process, systems, methods of operation, concepts, principles, or discoveries. Some
“useful articles” also unprotected.
Laws of nature, physical phenomena, abstract ideas Generally known information Generic terms, functional matter, other types of barred terms
How rights arise Fixation: you write it down or save it Patent issued by USPTO Upon creation of secret Use of the mark in commerce in connection with the goods/services
Is registration required Not required for copyright rights to exist, but registration required for lawsuit; many benefits Required for rights and for lawsuit No such thing. Public registration would reveal the secret Not required for trademark rights or § 43 suit; required for lawsuit under § 32; many benefits
Is use required Need not use Need not use (this leads to the “patent troll” problem) Need not use In US, mark must be used to establish & maintain rights
Is disclosure required No. Copyright exists in unpublished works, there is no duty to disclose the work to public Yes. Invention must be disclosed in application, which includes specification and detailed “claims” that show invention; this allows others to further innovate No. A general disclosure would end trade secret protection; however, limited disclosures may be needed to use the trade secret (NDAs, duties of confidentiality) Yes. Mark need not be registered, but by definition TMs must be used in commerce
Who is initial Owner Author, which can be individual, or be employer under work for hire doctrine Pre-AIA: first inventor

AIA (on or after March. 16, 2013): first inventor to file

Generally, persons who create secret; however, employment or contractual relationship may vest ownership in others Generally, entity that controls the TM
Duration Limited times: for example, for individual author, it’s life of author + 70 years Generally, 20 years from application Unlimited so long as still trade secret Unlimited if mark still used and still indicator of source
Notice symbol May use © even if work not registered. “Patent pending” may be used for application. “Pat.” (or “Patent”) + registration number may be used if the patent has issued No requirement of public notice, though it can be helpful to put legends on confidential/TS documents to remind users not to disclose. Can use TM or SM notices with or without registration; cannot use statutory ® notice unless mark is registered

RIGHTS AND DEFENSES

  Copyright Patent (utility) Trade secret Trademark
Rights of owner To exclude others from reproducing, adapting, publicly distributing, publicly performing, publicly displaying the work To exclude others from making, using, offering to sell, or selling the patented invention in the U.S., or importing the patented invention into the U.S., more To prevent improper acquisition, disclosure, or use of the trade secret To prevent: infringement of registered and unregistered marks; dilution of famous marks; false designation; false advertising; cybersquatting; and counterfeiting.

State law often tracks federal, but not always

Is intent to infringe (civil) required Not req’d but helps P Not req’d but helps P Knowledge required Not req’ but helps P
Defenses include Independent creation, fair use, first sale, implied license, compulsory license, more Invalidity (lack of subject matter, not novel, obvious, not useful, more), inequitable conduct, implied license/first sale, repair, experimental use, laches, antitrust & patent misuse Reverse engineering, independent creation, information generally known, reasonable steps to keep secret not taken, laches, statute of limitations

 

Mark lacks distinctiveness; mark is scandalous, disparaging, or deceptive; functional matter; mark is abandoned; fair use (classic, nominative, parody)

CONCEPTUAL OVERLAPS

  Copyright Patent (utility) Trade secret Trademark
Constitutional basis Copyright and Patent Clause Commerce Clause
Federal law only? Generally, federal law only Both state and federal law
SMJ? Federal court only State court and federal court (1331, 1332, 1367)
Goal of protection Creation and dissemination of knowledge Protecting fair competition
Type of information protected Creative authorship Know-how, inventions, processes, and the like Brands
Duration Limited Potentially limitless
Do you have to use the info? No. Yes

Revised 4/26/17