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| Is disclosure required | No. Copyright exists in unpublished works, there is no duty to disclose the work to public | Yes.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 1/4/19