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GLOSSARY OF INTELLECTUAL PROPERTY TERMS By Benjamin Oelsner
The information provided here was adapted and excerpted with permission from McCarthy's Desk Encyclopedia of Intellectual Property, Second Edition, written by J. Thomas McCarthy. Copyright ©1996 by The Bureau of National Affairs, Inc., Washington, D.C. 20037. For BNA Books publications call toll free 1-800-960-1220. ASSIGNMENT [patent-trademark-copyright]. A transfer of rights in intellectual property. An assignment of a patent, for example, is a transfer of sufficient rights so that the recipient has title to the patent. The assignment can be a transfer of all rights of exclusivity in the patent, of an undivided portion (for example, a 50 percent interest), or of all rights within a specified location (for example, a certain area of the United States). Transfer of anything less is considered to be a “license.” (See LICENSE, GOODWILL) AUDIOVISUAL WORK [copyright]. A copyrightable work consisting of images that are related, presented in a series, and intended to be shown by use of a machine, as well as any sound accompanying a work. A common example of an audiovisual work is a slide show, such as that used in a sales presentation, a lecture, or an introduction to a museum. AUTHOR [copyright]. Either the person who creates a copyrightable work or the employer of a person who creates a copyrightable work within the scope of employment. “Author” in copyright law includes not only writers of novels, plays, and treatises, but also those who create computer programs, arrange data in telephone books, choreograph dances, take photographs, sculpt stone, paint murals, write songs, record sounds, and translate books from one language to another. (See WORK MADE FOR HIRE, JOINT AUTHORS) BERNE CONVENTION [copyright-international]. The major multilateral copyright treaty, signed in Berne, Switzerland, in 1886. The Berne Convention, whose members form the Berne Union, is adhered to by more than 75 nations. The World Intellectual Property Organization (WIPO) is the administering agency for the Berne Union. BEST MODE [patent]. A condition for the grant of a patent. An inventor must describe the best method he or she knows for carrying out the invention. COMMUNITY TRADE MARK (CTM) [trademark-international] A trademark registration granted by the European Community Trademark Office and enforceable throughout EC member nations. COMPILATION [copyright]. A copyrightable work consisting of an assembly of preexisting material. The assembly must exhibit at least minimal originality in the selection, organization, and arrangement of the material without making any internal changes in it. CONTRIBUTORY INFRINGEMENT [patent-trademark-copyright]. Indirect infringement of intellectual property rights in which one person contributes to the direct act of infringement of another. Contributory infringement of a trademark, for example, occurs when a manufacturer of goods aids or encourages its distributors to pass off its goods as those of another manufacturer. COPIES [copyright]. As a noun, the material objects that store or fix copyrightable information other than sounds; as a verb, the act of copying. COPYING [copyright-patent-trademark]. In copyright law, “copying” denotes two separate but interrelated concepts. To constitute an infringement of copyright, a work must be a “copy” in the sense that it is substantially similar to a copyrighted work, and it must have been copied from the copyrighted workas opposed to being the result of coincidental, independent production or from being taken from the same source as the copyrighted work. Legal standards for infringement of copyright differ from those for patents and trademarks; the latter do not require proof of copying. COPYRIGHT [copyright]. An exclusive right conferred by the government on the creator of a work to exclude others from reproducing it, adapting it, distributing it to the public, performing it in public, or displaying it in public. Copyright does not protect an abstract idea; it protects only the concrete expression of an idea. To be valid, a copyrighted work must have originality and some modicum of creativity. COUNTERFEITING [trademark]. The act of producing or selling a product containing an intentional and calculated reproduction of a genuine trademark. A “counterfeit mark” is identical to or substantially indistinguishable from a genuine mark. Often, counterfeit goods are made to imitate a popular product in construction and appearance so as to deceive customers into thinking they are purchasing the genuine merchandise. DEPENDENT CLAIM [patent]. A claim in a patent that refers back to a previous claim and defines an invention that is narrower in scope than that in the previous claim. A dependent claim is written so as to be more restricted than the technology defined in the previous claim. DERIVATIVE WORK [copyright]. A work based on a preexisting work that is changed, condensed, or embellished in some way. DESCRIPTIVE MARK [trademark]. A word, picture, or other symbol that describes something about the goods or services in connection with which it is used, such as their purpose, their size and color, the class of users, or the end effect on users. A descriptive term is not considered to be inherently distinctive; to establish validity for registration or protection in court, it needs proof of acquired distinctiveness, known as “secondary meaning.” (See SECONDARY MEANING, SUGGESTIVE MARK) DESIGN PATENT [patent]. A government grant of exclusive rights in a novel, nonobvious, and ornamental industrial design. A design patent confers the right to exclude others from making, using, or selling designs that closely resemble the patented design. A design patent covers the ornamental aspects of a design; its functional aspects are covered by a utility patent. A design patent and a utility patent can cover different aspects of the same article, such as an automobile or a lamp. DILUTION [trademark]. A type of infringement of a trademark in which the defendant's use, while not causing likelihood of confusion, tarnishes the image or blurs the distinctiveness of the owner's mark. To possess the selling power and recognition protected by antidilution statutes, a mark must be relatively strong and famous, at least within a certain group of people, product line, or territory. DISTRIBUTION RIGHT [copyright]. Exclusive right of a copyright owner to distribute copies or phonorecords of his or her work to the public by sale, lease, or rental. Unlike the other rights of copyright, the distribution right is infringed merely by a transfer of copies of a work, whether those copies were made lawfully or unlawfully, except under the “First Sale Doctrine.” (See FIRST SALE DOCTRINE) DOMAIN NAMES [trademark]. The names and words that companies designate for their registered Internet Web site addresses, such as the “Forbes” magazine name in the URL http://www.forbes.com. Trademark disputes arise when more than one company tries to use the same domain name, or one company appropriates another company's brand or product name for its URL. DURATION [patent-trademark-copyright-trade secret]. The term or length of time that an intellectual property right lasts. A U.S. patent on an invention, for example, has a duration of 20 years from the date on which the patent application was filed, as does a plant patent. The basic duration of a U.S. copyright is the life of the author plus 70 years. Protection of information as a trade secret lasts as long as the information remains secret. EQUIVALENTS, DOCTRINE OF [patent]. A rule of claim interpretation under which a product or process, although not a literal infringement, is an infringement if it performs substantially the same function in substantially the same way to obtain substantially the same result as a patented product or process. FAIR USE [copyright-trademark]. A defense to a charge of copyright or trademark infringement. For copyrights, U.S. courts consider four factors in determining if a fair use defense exists: the purpose and character of the disputed use; the nature of the copyrighted work; the importance of the portion used in relation to the work as a whole; and the effect of the use on the market for or value of the copyrighted work. For trademarks, the secondary user must show that he or she is not using a descriptive, geographically descriptive, or personal name mark in a trademark sense but only to describe his or her goods or services or their geographic origin, or to name the person running the business. FIELD OF USE RESTRICTION [general intellectual property-antitrust]. A provision in an intellectual property license restricting the licensee to use the licensed property only in a defined product or service market. FIRST SALE DOCTRINE [copyright]. An exception to the exclusive right of a copyright owner to distribute copies or phonorecords of a copyrighted work. Under this principle, the copyright owner has the right to sell a copy of a book but not the right to control subsequent sales of that copy. (See DISTRIBUTION RIGHT) FIRST TO FILE [patent-trademark]. A rule under which, for patents, priority is determined by which inventor was the first to file a patent application, rather than by who was first to invent. This rule is followed by almost every nation in the world except the United States. For trademarks, priority between conflicting applications to register a trademark is handled by publishing the application with the earliest filing date for possible opposition by the applicant with a later filing date. In the United States, ownership of a trademark is determined by who was first to use it, not by who was first to file an application for registration. However, under the new intent-to-use system, an application for registration can be filed prior to actual use of a mark. (See INTENT-TO-USE APPLICATION) FIRST TO INVENT [patent]. A rule under which patent priority is determined by which inventor was the first to actually invent, rather than by who was the first to file a patent application. This is the rule followed in the United States. FUNCTIONALITY [patent-trademark-copyright]. That aspect of design that makes a product work better for its intended purpose, as opposed to making the product look better or to identifying its commercial source. GENERIC NAME [trademark]. A word used by most people to name a class or category of product or service, such as “personal computer” or “cellular phone.” No one person may have trademark rights to a generic name. GOODWILL [trademark]. The value of a business or of a line of goods or services, beyond its tangible assets, that reflects its commercial reputation. A business with a well-established goodwill could have all its tangible assets destroyed yet still own its reputation — its goodwill. Since a trademark or service mark is a symbol of a business's goodwill, trademark infringement is a form of theft of goodwill. IDEA-EXPRESSION DICHOTOMY [copyright]. A fundamental rule of law that copyright does not protect an idea: copyright protects only specific expressions of an idea. INFRINGEMENT [general intellectual property]. An invasion of an exclusive right of intellectual property. Infringement of a utility patent involves making, using, or selling a patented product or process without permission. Infringement of a design patent involves fabrication of a design that, to the ordinary observer, is substantially the same as an existing design, where the resemblance is intended to induce the observer to purchase one thing supposing it to be another. Infringement of a trademark consists of the unauthorized use or imitation of a mark that is the property of another in order to deceive, confuse, or mislead others. Infringement of a copyright involves reproducing, adapting, distributing, performing in public, or displaying in public the copyrighted work of someone else. INTELLECTUAL PROPERTY [patent-trademark-unfair competition-copyright-trade secret-moral rights]. Creative ideas and expressions of the human mind that have commercial value and receive the legal protection of a property right. The major legal mechanisms for protecting intellectual property rights are copyrights, patents, and trademarks. Intellectual property rights enable owners to select who may access and use their property and to protect it from unauthorized use. INTENT-TO-USE APPLICATION [trademark]. Since 1989 in the United States, an optional method of applying for federal registration of a trademark based on a declared intention to use the mark on specific goods or services. INVENTION [patent]. The creation of a new technical idea and of the physical means to accomplish or embody it. To be patentable, an invention must be novel, have utility, and differ from what skilled users might expect. JOINT AUTHORS [copyright]. The creators of a copyrightable work who merge their separate contributions to the work. If there is joint authorship, then it follows that there is joint ownership of copyright in the work created. Co-owners of a copyright are treated as “tenants in common,” with each co-owner having an independent right to license the use of a work, subject to accounting to the other co-owners for any profits. JOINT INVENTORS [patent]. Two or more inventors of a single invention who work together in the inventive process. KNOCK-OFF [patent-trademark-copyright]. An identical copy of a work or product that is protected by patent, trademark, trade dress, or copyright. KNOW-HOW [trade secret]. Information that enables a person to accomplish a particular task or to operate a particular device or process. LICENSE [patent-trademark-copyright]. A permission to use an intellectual property right within a defined time, context, market line, or territory. In intellectual property law, there are important distinctions between “exclusive licenses” and “nonexclusive licenses.” An exclusive license is “exclusive” as to a defined scope; it is not the one and only license granted by a licensor. In giving an exclusive license, the licensor promises that he or she will not grant other licenses of the same rights within the same scope or field covered by the exclusive license. However, the owner of rights may grant any number of nonexclusive licenses of the same rights. In a nonexclusive license, title remains with the licensor. A patent license is a transfer of rights that does not amount to an assignment of the patent. A trademark or service mark can be validly licensed only if the licensor controls the nature and quality of the goods or services sold by the licensee under the licensed mark. Under copyright law, an exclusive licensee is the owner of a particular right of copyright, and he or she may sue for infringement of the licensed right. There is never more than a single copyright in a work regardless of the owner's exclusive license of various rights to different persons. MISAPPROPRIATION [unfair competition]. A common law form of unfair competition in which an individual or firm copies or appropriates some creation of another that is not protected by patent, copyright, or trademark law, or any other traditional theory of exclusive rights. MORAL RIGHTS [copyright-author's rights]. Certain rights of authors, beyond those recognized in copyright law, as recognized by the legal systems of some European and other countries. Moral rights generally fall into three categories: the right of an author to receive credit as the author of a work, to prevent others from falsely being named author, and to prevent use of his or her name for works he or she did not create; the right of an author to prevent mutilation of a work; and the right of an author to withdraw a work from distribution if it no longer represents his or her views. MUSICAL WORK [copyright]. A category of copyrightable work expressed in notation for sounds. A musical work can be fixed in physical objects that are classified as either “copies” (e.g., sheet music) or “phonorecords” (e.g., compact discs or tapes). A composer's song is covered by a musical work copyright, but a recording of the song is covered by a sound recording copyright. NOTICE [patent-copyright-trademark]. A formal sign or notification attached to items that embody or reproduce an intellectual property right — for example, placing the word “patent” or its abbreviation, “pat.,” together with the patent number, on a patented article made by a patent holder or his/her licensees. The formal statutory notice of U.S. trademark registration is the letter R in a circle symbol -®, “Reg. U.S. Pat. & Tm. Off.,” or “Registered in U.S. Patent and Trademark Office.” Many firms use informal trademark notices, such as “Brand,” “TM,” “Trademark,” “SM,” or “Service Mark,” adjacent to words or other symbols considered to be protectable marks. Notice of copyright consists of the letter C in a circle symbol - © or the word “Copr.” or “Copyright,” the copyright owner's name, and the year of first publication. NOVELTY [patent]. One of three conditions an invention must meet to be patentable. Novelty is present if every element of an invention is not disclosed in a single piece of prior art. OBVIOUSNESS [patent]. A condition in which an invention cannot receive a valid patent because a person with ordinary skill in that technology can readily deduce it from publicly available information (prior art). ON SALE [patent]. The situation in which an inventor cannot obtain a patent if he or she waits for more than one year to file a patent application after a product embodying the invention has been placed “on sale.” ORDINARY SKILL IN THE ART [patent]. The level of technical knowledge, experience, and expertise possessed by the ordinary engineer, scientist, or designer in a technology that is relevant to an invention. PASSING OFF [trademark]. (1) The substitution of one brand of goods for another. (2) Trademark infringement in which the infringer intentionally means to mislead or deceive purchasers. (3) Trademark infringement in which there is no proof of intent to deceive but likelihood of confusion can be proven. (4) In British-law countries, acts illegal under the common law, apart from registered trademark law, involving the misrepresentation of one's goods or services as those of a competitor, usually by using a similar mark. PATENT [patent]. A grant by the federal government to an inventor of the right to exclude others from making, using, or selling his or her invention. There are three kinds of patents in the United States: a utility patent on the functional aspects of products and processes; a design patent on the ornamental design of useful objects; and a plant patent on a new variety of a living plant. Patents do not protect ideas, only structures and methods that apply technological concepts. Each type of patent confers the right to exclude others from a precisely defined scope of technology, industrial design, or plant variety. In return for the right to exclude, an inventor must fully disclose the details of the invention to the public so that others can understand it and use it to further develop the technology. Once the patent expires, the public is entitled to make and use the invention and is entitled to a full and complete disclosure of how to do so. PERFORMANCE [copyright]. To recite, render, play, dance, or act a copyrighted work, including the radio or television broadcast of a performance and the reception of such a broadcast. The right to perform a copyrighted work publicly is granted to all types of copyrighted works except for pictorial and sculptural works and sound recordings. PHONORECORD [copyright]. The material object that stores or fixes copyrightable sounds, such as audiotapes, compact discs, computer chips that store sounds, and the like, other than the sound track of a motion picture. PRIOR ART [patent]. The existing body of technological information against which an invention is judged to determine if it is novel and nonobvious and can thus be patented. PROCESS CLAIM [patent]. A claim of a patent that covers the method by which an invention is performed by defining the steps to be followed, in contrast to a product claim or an apparatus claim, which covers the structure of a product. PRODUCT-BY-PROCESS CLAIM [patent]. A patent claim in which a product is claimed by defining the process by which it is made. The product-by-process form of claim is most often used to define new chemical compounds, since many new chemicals, drugs, and pharmaceuticals can practicably be defined only by describing the process of making them. PRODUCT CLAIM [patent]. A claim of a patent that covers the structure, apparatus, or composition of a product, in contrast to a process claim, which covers a method or process. PUBLICATION [copyright]. The distribution of copies or phonorecords of a work to the public. PUBLIC DOMAIN [general intellectual property]. The status of an invention, creative work, commercial symbol, or any other creation that is not protected by some form of intellectual property. Items that have been determined to be in the public domain are available for copying and use by anyone. The copying of such items is not only tolerated but encouraged as part of the competitive process. (See COPYING, INTELLECTUAL PROPERTY.) REDUCTION TO PRACTICE [patent]. The physical part of the inventive process that completes and ends the process of invention. After a reduction to practice, the invention is complete for patent law purposes. RENEWAL [trademark-copyright]. The extension of a registration of a trademark or the extension of a copyright. REVERSE ENGINEERING [trade secret]. A method of obtaining technical information by starting with a publicly available product and determining what it is made of, what makes it work, and how it was produced. This method goes in the reverse direction of usual engineering efforts, which start with technical data and use them to produce a product. If the product or other material that is the subject of reverse engineering was properly obtained, the process is legitimate and legal. RIGHT OF PUBLICITY [general intellectual property]. The inherent right of every human being to control the commercial use of his or her identity. SECONDARY MEANING [trademark]. A meaning for a trademark or service mark that customers associate with a particular brand of products or services. For trade symbols that are not inherently distinctive, distinctiveness must be acquired in order to be protected by a trademark or service mark. This acquired distinctiveness is known as “secondary meaning” because it is acquired second in time to the primary meaning of a word. A word such as “best” for milk is regarded as descriptive and not inherently distinctive. The primary meaning is that milk thus described is purported to be the best. To achieve exclusive trademark rights for a product called “Best Milk,” a seller using this word must use it so that it achieves a secondary meaning denoting that all milk marked “best” comes from a single commercial source. SERVICE MARK [trademark]. A word, slogan, design, picture, or any other symbol used to identify and distinguish a service (hotel and restaurant services, sales services, investment services, and the like) as opposed to a product. SKILL IN THE ART [patent]. An ordinary level of proficiency in the particular technology in which an invention is made. (See OBVIOUSNESS.) SOUND RECORDING [copyright]. A category of copyrightable work consisting of the sounds that are recorded on a phonorecord. SUBSTANTIAL SIMILARITY [copyright]. The degree of resemblance between a copyrighted work and a second work that is sufficient to constitute copyright infringement by the second work. Exact word-for-word or line-for-line identity is not necessary for copyright infringement. Rather, U.S. courts have chosen the phrase “substantial similarity” to define the level of similarity that, together with proof of validity and copying, constitutes copyright infringement. SUGGESTIVE MARK [trademark]. A word, picture, or other symbol that suggests, but does not directly describe, something about a good or service in connection with which it is used as a mark. For example, “goliath” for wood pencils suggests, but does not literally describe, large size. A suggestive term is regarded as being inherently distinctive and needs no proof of secondary meaning for registration or protection in court. (See DESCRIPTIVE MARK.) SUPPLEMENTAL REGISTER [trademark]. A register of words, symbols, package trade dress, product or container shapes, or slogans that do not qualify for registrable trademark status but can achieve trademark status once they acquire secondary meaning. (See SECONDARY MEANING.) TRADE DRESS [trademark]. The totality of elements in which a product or service is packaged, such as the shape and appearance of a product or container, the cover of a book or magazine, and the distinctive and recognizable shape of an automobile. These elements combine to create the visual image presented to customers and can acquire exclusive legal rights as a type of trademark or identifying symbol of origin. TRADEMARK [trademark]. 1. A word, slogan, design, picture, or other symbol used to identify and distinguish goods. 2. Any identifying symbol, including a word, design, or shape of a product or container, that qualifies for legal status as a trademark, service mark, collective mark, certification mark, trade name, or trade dress. Trademarks identify one seller's goods and distinguish them from goods sold by others. They signify that all goods bearing the mark come from or are controlled by a single source and are of an equal level of quality. And they advertise, promote, and generally assist in selling goods. A trademark is infringed by another if the second use causes confusion of source, affiliation, connection, or sponsorship. TRADE NAME [trademark]. A symbol used to identify and distinguish companies, partnerships, and businesses, as opposed to marks used to identify and distinguish goods or services. TRADE SECRET [trade secret]. Business information that is the subject of reasonable efforts to preserve confidentiality and has value because it is not generally known in the trade. Such confidential information is protected against those who gain access to it through improper methods or by a breach of confidence. Infringement of a trade secret is a type of unfair competition. (See UNFAIR COMPETITION) UNFAIR COMPETITION [general intellectual property]. Commercial conduct that the law views as unjust, giving a civil claim against a person who has been injured by the conduct. Trademark infringement has long been considered to be unfair competition. Other recognized legal categories of unfair competition are false advertising, trade libel, infringement of a trade secret, infringement of the right of publicity, and misappropriation. UTILITY [patent]. The usefulness of a patented invention. To be patentable, an invention must operate and be capable of use, and it must perform some “useful” function for society. WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO) [international]. One of the 16 specialized agencies of the United Nations system. WIPO, located in Geneva, Switzerland, was created in 1967 and is responsible for promoting the protection of intellectual property throughout the world. It fulfills this responsibility by promoting cooperation among nations in intellectual property matters, administering various “unions” and other treaty organizations founded on multilateral treaties, and creating model laws for adoption by developing nations. WORK MADE FOR HIRE [copyright]. A work prepared by an employee within the scope of his or her employment or a commissioned work that the parties agree in writing to treat as a work made for hire. The real person, partnership, or corporation for which the work is prepared is considered to be both the author and the owner of copyright from the moment of creation of the work. WORLD TRADE ORGANIZATION (WTO) [international trade-intellectual property]. An international body dealing with the rules of trade between nations. At its heart are agreements negotiated and signed by the bulk of the world's trading nations. These documents provide the legal ground rules for international commerce. The three main purposes of the WTO are to help trade flow as freely as possible, to serve as a forum for trade negotiations, and to provide for settlement of disputes. Benjamin Oelsner is an attorney with the firm of Brobek, Phaleger, and Harrison in Palo Alto, California. |