Home My Bar Page CLE Bar Journal Contact Us Membership Directory

Job Bank
News and Publications
Member Services
Judges' Benchbooks
Emeritus Program

Case Maker

Law Pay

Legally Speaking


Issue: August, 2005
Author: Nancy Sharp Nti Asare

pdf Printable Version (PDF)

A Basic Introduction to Intellectual Property Law

Today, Intellectual Property Law has created challenges for the legislatures and courts, because our forefathers could never have envisioned the computer revolution or the complexities of globalization within the Intellectual Property context. It is an area of law that changes almost daily. I have been advised that offering advice, teaching, or writing on the subject of Intellectual Property law can be compared to trying to hit a moving target from a speeding train. So, please bear with me, as I brave this perilous highway!

To many people in the world, wealth is defined in terms of tangible property, such as land and houses, or of intangible property, such as stocks and bonds. Today, however, wealth can include Intellectual Property.

Intellectual property is an umbrella term for intangible property that consists of people’s minds or as some might refer to as “the intellectual creative process.” Trademarks, Service marks, copyrights, and patents are all examples of Intellectual Property. Today, books are copyrighted. Private computers are trademarked. An invention could be patented. Regardless, the primary purpose of intellectual property law is to ensure a rich, diverse and competitive marketplace.

In both domestic and international law during the last decade, Intellectual Property has taken on a greater importance. The primary reasons for this have been attributed to globalization and the technological age. Many American products sold abroad need to be protected. These products include American TV series, films, pharmaceutical supplies, computer programs, CDs and videos.

Early on, the U.S. Constitution recognized the need to protect creative works. Article 1 – Section 8 authorized Congress “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their writings and discoveries.” Laws were then specifically designed to protect and reward inventive and artistic creativity.

A common criticism of Intellectual Property law is that it limits the economic freedom of some individuals; however, that criticism is countered by the belief that it does so to protect the freedom of others to enjoy the fruits of their labors, in the form of profits. In the USA, it is important to note that the law’s goal in Intellectual Property is to first, promote the progress of science and useful arts, and second, to reward a creator for his or her efforts. It is believed, in our society, that an absence of monetary protection would result in diminished creativity.

Before addressing Intellectual Property complexities, it is best to take a basic look at the three core areas of Intellectual Property: Trademarks, Copyrights, and Patents. While each of the intellectual property areas is distinct, they all have characteristics in common. Each provides limited property rights in intangible products of investment, intellect, or labor, whether they are inventions, accumulated information, original expressions, or business good will. Each of the areas of Intellectual Property law is governed by a federal statute.

A trademark is a distinctive mark, motto, device, or emblem that a manufacturer stamps, prints, or otherwise affixes to the goods it produces. This is done so that those goods can be distinguished from the goods of other manufacturers and merchants.

Trademark law provides incentives to companies to invest in the development of goodwill by ensuring that others will not steal and profit from their trade symbols. A trademark also permits the consumer to be certain of the same product from the same manufacturer every time they make a purchase. Trademark law reduces “search costs” and prevents confusion for the consumer. In addition, trademark law prevents unjust enrichment by prohibiting the sale of inferior imitations under the same trademark.

Much of the history of trademark law is traced back to the medieval period and to guild members (or groups of craftsmen) who wanted protection of the goods they sold and began affixing the mark of their guild to these goods to indicate ownership and source of goods. However, this practice of using a mark to indicate ownership and sources actually predates this guild practice. Archeologists have unearthed Greek vases thought to be from the fifth and sixth centuries BC bearing individual potter marks. Also, merchants in the middle Ages were known to affix distinctive marks to their goods before shipment to identify them in the event of shipwreck or piracy.

Systematic legal protection of trademarks in the common law world began to take shape in the early years of the 19th century. The starting point in common law countries was the law of deceit from which the tort of “passing off,” was developed. A plaintiff would prevail in a “passing off,” cause of action, if it was proved that the defendant used the plaintiff’s mark to deceive consumers into thinking that the plaintiff was the source of the defendant’s goods.

Over time, the courts began to relax the requirement of fraudulent intent in cases where the plaintiff’s mark was arbitrary or highly distinctive. The fact that the defendant copied a distinctive mark was itself evidence of the intent to deceive. Later, in 1870, the U.S. began to provide a registry for such trademarks and extended remedies for infringement. In 1946, the U.S. Congress further defined trademark law by the passage of the Lanham Act. Over the years, the Lanham Act has expanded both judicially and legislatively.

The Lanham Act creates three ways to establish trademark registration.

1. use
2. bonafide intent to use
3. trademark registration in a foreign country

A copyright is an intangible right granted by statute to the author or originator of certain literary or artistic productions. Works created after January 1, 1978, are automatically given statutory copyright protection for the life of the author plus 70 years. Copyrights owned by publishing houses expire 95 years from the date of publication or 120 years from the date of creation, whichever is first. For works of more than one author, the copyright expires 70 years after the death of the last surviving author.

Works that can be copyrighted include books, records, films, works of art, architectural plans, menus, music videos, product packaging and computer software. Basically, anything that is not an original expression will not qualify for copyright protection.
To obtain copyright protection, a work must be original and fall into one of the following categories:

1. literary works
2. musical works
3. dramatic works
4. pantomimes and choreographic works
5. pictorial, graphic and sculptural works
6. films and other audiovisual works
7. sound recordings

Copyright owners no longer have to place a mark on their work to have the work protected against infringement.

Copyright origins in the common law world trace back to the establishment of the first printing press in England around 1476 and following to the issuance of licenses to print books. The world’s first copyright act was the Statute of Anne in the year of 1710. The first American act, fashioned closely on the Statute of Anne, went into effect on May 31, 1790.

Today, one of the most problematic and troublesome areas of copyright law is striking a balance between the competing interests of the individual creator and that of society. As a result, the “Fair Use Doctrine,” has developed. The fair use doctrine can be analogized to the use of privilege in Tort Law. It is used as an affirmative defense. It provides that in certain circumstances, a person or organization can reproduce copyrighted material without paying royalties. Fair use involves a balancing process by which a complex set of variables determines whether other interests should override the rights of the creator.

A patent is a grant from the Federal Government that conveys and secures to an inventor the exclusive right to make, use, and sell an invention for a period of 20 years. Patents for design, as opposed to inventions, are given for a 14-year period.

For either a regular or design patent, the applicant must demonstrate to the satisfaction of the patent office that the invention, discovery or design is genuine, novel, useful, and not obvious in light of the technologies of the time. Patents are identified by placing the word patent or Pat., with the patent number. Patent protection is broader in scope but also shorter in duration and more difficult to obtain than trademark or copyright protection.

In contrast to patent protection in some other countries, the U.S. patent protection is given to the first person to invent a product or process. In other countries the protection is given to the first who files for the patent.

The first known system for granting patents to inventions dates back to Venice in the mid-fifteenth century. The Venetian system, codified into a general patent statute in 1474, sought to ignite the introduction of new technologies by giving patentees the exclusive right to practice their art for a specified period, usually ten to 50 years. In England, patent law was created in the 16th century and was written into the American Constitution in the 18th century. The first U.S. patent office was created in 1836.

Other areas of intellectual property law include service marks, certification marks, collective marks, trade name and trade dress. Service marks are similar to trademarks but are used to distinguish the services of one person or company from those of another. For example, a service industry such as an airline company has a particular mark or symbol associated with its name. Certification marks are used by one or more persons to certify the region, materials, mode or manufacture, quality or accuracy of the owner’s goods or services. The Good Housekeeping Seal of Approval is an example of a Certification Mark. A Collective Mark is a certification mark used by members of a cooperative, association or other organization. Collective marks appear at the end of movies, in the credit, to indicate the various associations and organizations that participated in the making of the particular movie.

In addition to trademark, copyright and patent law, Intellectual Property law covers laws on trade secrets, the right of publicity, moral rights, and traditional unfair competition.

Nancy Sharp Nti Asare received her Juris Doctorate from Willamette University in Salem, Oregon. She completed post graduate studies in International Law at the East China University of Politics and Law in Shanghai, Peoples Republic of China and an LLM at the University of Stockholm, in Sweden, where she was a Research Fellow for the Faculty of Law. She has held law and legal studies professorships in New Mexico, The United Arab Emirates, Estonia and Mexico. Most recently she was employed by the U.S. Department of State and USAID in Baku, Azerbaijan. She taught Intellectual Property for the University of Wyoming School of Law last spring.

Copyright © 2005 – Wyoming State Bar