April, 2014
By Thomas Moore

This is the first installment of several articles regarding the basics of intellectual property litigation. This article focuses on the legal framework of intellectual property, the next article will explain the nature and purposes of cease-and-desist letters, the following article will describe injunction practice and the final article will describe the nuances of litigation in each form of intellectual property.

“Intellectual property” is dominated by the word “intellectual.” The image is of Jean Paul Sartre sitting in a café on the left bank of Paris, smoking Gauloises cigarettes and thinking deep thoughts. That kind of “intellectual” has absolutely nothing to do with “intellectual property.” “Intellectual property” is the blanket term for four kinds of intangible property, namely patents, copyrights, trademarks and trade secrets. In addition to these four, Congress occasionally creates statutes that might be described as subsidiary types of intellectual property. These include the special protections afforded famous trademarks, domain names, anti-circumvention technologies and authenticity labels. Because this article is about basics, the four primary forms of intellectual property are described below.

Patents, copyrights and trademarks are (for the most part) the subject of federal law. Patents are subject to being granted by the Patent and Trademark Office. Copyrights and trademarks can be registered with the Copyright Office and the Patent and Trademark office. Trade secrets are the subject of state law, but the Uniform Trade Secrets Act has allowed a level of uniformity among the different states. California has adopted the Uniform Trade Secrets Act.

Patents protect inventions. The idea is to grant the inventor (or his assignee) a monopoly over the invention for twenty years in exchange for the inventor’s having made the invention public. The inventor may use that monopoly to commercialize the invention himself, to license the invention to others or to wait for someone else to commercialize the invention and to sue them. The latter sort of person is commonly referred to as a “patent troll.”

Generally, many things are easily understood to constitute an invention. Patent law can get complicated when a purported invention is not new, when it is actually a law of nature or when it represents a well-established way of doing business.

Copyrights protect expressive works, such as paintings, sculptures, books, movies and music. The functional aspects of a given work are not copyrightable. As a consequence, software is copyrightable only to the extent that it is expressive.

Trademark law protects the association between a given mark and a set of goods or services. Compare the sentences, “The apple was fresh and juicy” with “The apple had the most apps available for download.” One immediately distinguishes between the non-trademark use of a common English word from the trademark use. It is that association between the mark and the product that is protected from the likelihood confusion that could exist between unduly similar marks.

Trade secrets protect information, such as a formula, pattern, compilation, program, device, method, technique or process, but only as long as that information (i) is subject to reasonable efforts to maintain its secrecy, and (ii) would have economic value to a competitor if it became known. The cliché in discussing trade secrets is to refer the secret formula for Coca-Cola as the paradigmatic trade secret. These days, it would be more apt to reference the source code for the Windows operating system. Microsoft takes considerable efforts to maintain the secrecy of that source code.

The Windows operating system is also a good example of how the different forms of intellectual property can all apply to the same product. Microsoft holds the trademark to “Windows,” likely holds patents to some of the novel mechanics of the software, a copyright to the expressive elements of the code, and maintains the source code as a closely guarded trade secret.

The first step in litigating any of the different types of intellectual property is the cease-and-desist letter (in patent law, the letter is more nuanced but is effectively the same thing). Receipt of such a letter is often the first indication that trouble is coming down the road.