Frequently Asked Questions

Q: What is IP law?

A: Intellectual property law encompasses legal protections for creations of the mind, such as inventions, literary and artistic works, designs, symbols, names, and images used in commerce. These protections are crucial as they grant creators exclusive rights to their works, incentivizing innovation and ensuring that creators can benefit economically from their creations.

Key U.S. IP Laws:

• Patents: Governed by Title 35 of the U.S. Code, patents protect new, useful, and non-obvious inventions.
• Trademarks: Under the Lanham Act (15 U.S.C. §§ 1051 et seq.), trademarks protect brand names, logos, and slogans.
• Copyrights: Outlined in Title 17 of the U.S. Code, copyrights protect original works of authorship, such as books, music, and films.
• Trade Secrets: Protected under the Defend Trade Secrets Act of 2016 (18 U.S.C. §§ 1836 et seq.), trade secrets encompass confidential business information that provides a competitive edge.

Resources:

• U.S. Patent and Trademark Office (USPTO)
• U.S. Copyright Office

Q: What is the process for trademarking a business name or logo?

A: To protect your business name and logo, you should register them as trademarks with the United States Patent and Trademark Office (USPTO). This process involves several steps:

1. Conduct a Trademark Search: Before filing, perform a comprehensive search using the USPTO’s Trademark Electronic Search System (TESS) to ensure your desired name or logo isn’t already in use.
2. Prepare and File an Application: Submit a trademark application through the Trademark Electronic Application System (TEAS) on the USPTO website. The application requires details about the mark, the goods or services it will represent, and its first use in commerce.
3. USPTO Examination: An examining attorney reviews the application to confirm it meets all legal requirements. This includes ensuring the mark isn’t confusingly similar to existing registrations and complies with the Lanham Act.
4. Publication and Opposition: If approved, the mark is published in the Official Gazette for a 30-day period, during which third parties can oppose the registration.
5. Registration: If no oppositions are filed, or if oppositions are resolved in your favor, the USPTO issues a registration certificate.

Timeline: The entire process typically takes between 8 to 12 months, depending on potential legal issues or oppositions.

Resources:

• USPTO Trademark Basics
• Trademark Process Overview

Q: When should I apply for a copyright versus a trademark?

A: Copyrights and trademarks serve different purposes in protecting intellectual property:

• Copyright: Protects original works of authorship, including literary, musical, and artistic works. Protection is automatic upon creation and fixation in a tangible medium, but registering with the U.S. Copyright Office provides additional legal benefits, such as the ability to sue for infringement and claim statutory damages.
• Trademark: Protects symbols, names, logos, and slogans that distinguish goods or services in commerce. Registration with the USPTO is necessary to obtain nationwide protection and the presumption of ownership.

When to Apply:

• Apply for a Copyright: When you create an original work, such as a book, song, or painting.
• Apply for a Trademark: When you develop a brand identifier, like a business name, logo, or slogan, used in commerce.

Resources:

• Copyright vs. Trademark
• U.S. Copyright Office Registration Portal

Q: What are the rules around using online content?

A: Using images or text from the internet without proper authorization can lead to copyright infringement under the Digital Millennium Copyright Act (DMCA). To legally use such content:

1. Obtain Permission: Contact the copyright owner to request permission or a license to use the material.
2. Use Licensed Content: Utilize content available under licenses like Creative Commons, ensuring you comply with the license terms.
3. Public Domain: Use works that are in the public domain, which are free from copyright restrictions.

Fair Use Consideration: In some cases, using portions of copyrighted material without permission may be permissible under the fair use doctrine, especially for purposes like criticism, comment, news reporting, teaching, scholarship, or research. However, fair use is a complex legal standard evaluated on a case-by-case basis.

Resources:

• U.S. Copyright Office – Fair Use
• Creative Commons Licenses

Q: What steps should I take to patent an invention?

A: Start by conducting a patent search to ensure your invention is novel. Then file for a provisional patent with the USPTO to secure a filing date, giving you 12 months to file for a non-provisional patent. Your invention must meet specific criteria, including novelty, usefulness, and non-obviousness.

 A: Follow these steps to patent an invention:

1. Patent Search:
   
   
   • Conduct a comprehensive search to ensure your invention is novel using the USPTO Patent Public Search Tool.
     
     
2. Choose the Right Patent Type:
   
   
   • Utility Patents: Protect new processes, machines, or compositions of matter (valid for 20 years).
   • Design Patents: Protect new, original, and ornamental designs for articles of manufacture (valid for 15 years).
     
     
3. File a Provisional Patent Application (Optional):
   
   
   • A provisional patent protects your invention for 12 months while you prepare a non-provisional application.
   • File through the USPTO Patent Center.
     
     
4. File a Non-Provisional Patent Application:
   
   
   • This application is examined by the USPTO. If approved, it grants full patent protection.

Timeline: 12-24 months for USPTO examination and approval.

Key Laws: Title 35, U.S. Code

Resources:

• How to Apply for a Patent (USPTO)
• Patent Search Database

Q: How do I protect my IP in other countries?

A: U.S. trademarks and patents do not automatically extend internationally. For trademarks, consider filing under the Madrid Protocol. For patents, you can file an international application under the Patent Cooperation Treaty (PCT), which allows you to seek protection in multiple countries. A breakdown of options is listed below:

1. Patents:
   
   
   • File under the Patent Cooperation Treaty (PCT) for international protection.
   • Start the process within 12 months of your U.S. filing date.
     
     
2. Trademarks:
   
   
   • File via the Madrid Protocol for trademark protection in over 100 member countries.
   • Madrid Protocol Overview
     
     
3. Copyrights:
   
   
   • Protected in most countries through the Berne Convention. No registration is needed, but local laws apply.

Resources:

• World Intellectual Property Organization (WIPO)
• International Patent Protection Information

Q: How can I stop someone from using my protected material?

A: Send a cease-and-desist letter outlining the infringement and requesting that the infringing activity stops immediately. If this does not work, you may need to file a lawsuit to enforce your rights under federal laws like the Lanham Act (for trademarks) or the Copyright Act.

Steps to address infringement:

1. Cease-and-Desist Letter:
   
   
   • Draft a formal notice detailing the infringement and demanding cessation. Use an IP attorney to avoid errors.
     
     
2. File a Complaint:
   
   
   • For copyright violations, file a DMCA takedown request with the infringer’s platform.
   • For trademarks, file a complaint with the USPTO or initiate legal proceedings under the Lanham Act (15 U.S.C. § 1125).
     
     
3. Litigation:
   
   
   • If other methods fail, file a lawsuit. Damages can include lost profits and statutory penalties.

Resources:

• DMCA Notice Guidelines
• USPTO Trademark Disputes

Q: What are the durations for copyrights, trademarks, and patents?

A:

• Copyrights: Life of the author + 70 years (for individuals). For corporations, 95 years from publication or 120 years from creation, whichever is shorter. 17 U.S.C. § 302
  
  
• Trademarks: Potentially indefinite if renewed every 10 years and used in commerce. Lanham Act, 15 U.S.C. § 1059
  
  
• Patents: 20 years from the filing date for utility patents; 15 years for design patents. 35 U.S.C. §§ 154, 173

Q: Can I use copyrighted material without permission?

A: The fair use doctrine allows limited use of copyrighted works without permission under specific circumstances:

1. Purpose and Character: Non-commercial uses (e.g., education, commentary) are more likely to qualify.
   
   
2. Nature of the Work: Non-fiction works are more likely to be fair use than creative works.
   
   
3. Amount Used: The smaller the portion used, the more likely it qualifies.
   
   
4. Market Impact: The use must not harm the original work’s market value.

Key Law: 17 U.S.C. § 107

Further Reading:

• U.S. Copyright Office Fair Use

Q: Can AI-generated content be copyrighted?

A: Under current U.S. copyright law, protection only applies to works with human authorship. However, if an AI is used as a tool under the guidance of a human, the human may claim copyright. This area is evolving, and recent cases may impact future rulings.

• Key Case: Thaler v. Perlmutter (2023) affirmed the human authorship requirement for copyrights.

Further Reading:

• U.S. Copyright Office Policy on AI

Q: Can I enforce my rights without registration?

A:

• Copyright: Registration is required to file a lawsuit under the Copyright Act (17 U.S.C. § 411), but you can register after infringement occurs. However, early registration allows you to claim statutory damages and attorney’s fees.
  
  
• Trademark: Common-law rights exist, but federal registration under Lanham Act (15 U.S.C. § 1111) provides stronger protection and remedies under the Lanham Act.

Further Reading:

• Copyright Registration Process
• Trademark Registration Benefits

Q: Who owns the IP created by contractors or freelancers?

A: Ensure that your contract includes a work-for-hire clause that assigns IP ownership to the hiring party, or an IP assignment agreement, that explicitly transfers rights to the employer. Without this, the contractor may retain ownership.

Further Reading:

• Work-for-Hire Contracts

Q: Am I liable if I didn’t know I was infringing?

A: Yes, lack of knowledge is not a defense to infringement. However, under Copyright Act (17 U.S.C. § 504(c), damages may be reduced in cases of innocent infringement. Conducting due diligence and obtaining proper licenses helps to avoid these issues.

 A: Yes, ignorance is not a defense. ), courts may reduce damages for innocent infringement, but liability still applies.

Further Reading:

• Copyright Damages Overview

Q: Does owning an NFT give me copyright or trademark rights?

A: Owning an NFT grants you ownership of the digital token but not the underlying copyright of the associated work unless explicitly stated. IP rights must be clarified in the NFT’s terms of sale or smart contract.

Further Reading:

• WIPO: NFTs and IP

Q: What agreements should we have in place for shared IP?

A: IP created during a joint venture should be governed by an IP ownership agreement that specifies: 

• Who owns newly created IP.
• How the IP will be used
• Licensing terms for shared use.
• Dispute resolution mechanisms.

Consider involving an attorney to ensure all terms are clear and enforceable.

Further Reading:

• IP Agreements Templates

Q: If I’m in California, does my IP attorney need to be registered or located in California?

A: Not necessarily. Intellectual property law, such as copyright, trademark, and patent law, is governed by federal law, meaning an attorney licensed in any U.S. state can represent you before federal agencies like the USPTO or the Copyright Office. For instance:

• Patent Attorneys: Must be registered with the USPTO and pass the Patent Bar Exam, which is separate from state bar exams.
  
  
• Trademark and Copyright Attorneys: Can practice in any state as long as they are licensed to practice law in at least one U.S. jurisdiction.

However, if your case involves state-specific legal issues (e.g., trade secrets under California’s Uniform Trade Secrets Act or breach of contract claims related to IP), your attorney may need to be licensed in California or collaborate with a California-licensed attorney.

Considerations for Local Representation:

• Convenience: A local attorney is beneficial for in-person meetings or court appearances if the case involves state-level disputes.
  
  
• State-Specific Expertise: Trade secret cases or other issues like California’s Independent Contractor Rules (AB5) might require specialized knowledge of California law.

Would you like help finding IP attorneys in your area or navigating a specific legal issue at the federal level? Reach out to our team today.

Further Reading:

• USPTO Patent Attorney/Agent Search
• California State Bar Attorney Search