Intellectual Property Law in Illinois

This article was edited and reviewed by FindLaw Attorney Writers | Last reviewed March 26, 2008

In the field of intellectual property law, the various facets thereof combine to offer protection to a person for the intellectual property developed or discovered by that person. A patent can protect an invention. A copyright can protect an author's works. A trademark can protect the use of a particular phrase or name as applied to a product or a service. A trade secret can protect a particular item or process, which is special to an individual person or company. The law of unfair competition is similar to the law of injury or broken contracts.

INTRODUCTION

Patents, trademarks and copyrights are protected and covered by Federal Law. Trade secrets and unfair competition are handled by State law. There is sometimes an federal/state overlap in trademarks. Some states, including Illinois, have their own trademark procedures for protecting names for goods or services used within the state. All these facets of the intellectual property law cooperate to provide the maximum protection for an idea, an invention, a work of art, a book or other item of intellectual property.

A typical example of that cooperation relates to TUPPERWARE. The term TUPPERWARE is a registered trademark of Dart Industries, Inc. of Deerfield, Illinois. The TUPPERWARE company has had its basic patent expire. Trademarks, trade secrets, and copyrights combine to still provide protection for Dart Industries, Inc.

The name, specifically the trademark, is applied to such a good product, that people still prefer a product bearing the TUPPERWARE trademark as opposed to a product bearing a competing mark. Clearly, the TUPPERWARE trademark is so prominent that people ask for that trademarked product. Within the TUPPERWARE factory with all their experience of manufacturing the products over the course of the years, undoubtedly several trade secrets to more efficiently and effectively produce the product have been developed. Thus, the TUPPERWARE company has used its patent to protect itself, until its trademark was promoted sufficiently to become well-known, and valuable. Its trade secrets, probably developed during the patent term, provided production efficiency and effectively extended product protection.

As is clear from looking at the TUPPERWARE catalogs and similar promotional devices, copyright protection is applied to prohibit copying of those promotional devices. It can then be seen how one well known company has developed and used intellectual property law to its maximum effect, even overlapping the protection of different fields of intellectual property protection.

Each facet of the intellectual property law generally protects a different type of invention, work of art or intellectual property creation. Article I, Section 8, of the United States Constitution provides for protection of inventors and authors through patents and copyrights. A treaty plus action by the United States Congress under Commerce Clause of the Constitution provides for protection of trademarks.

Patents are codified for inventors under Section 35 of the United States Code (U.S.C.) to protect an idea of a certain class. Copyrights are codified for authors under Section 17 of the United States Code to protect the expression of an idea. Trademarks are provided under Chapter 15 of the United States Code to protect a word, more than one word or a design used to define goods or services.

The basic tenet of intellectual property law, especially patents and copyrights, is to encourage the free exchange of ideas. From a purely capitalistic standpoint, a person is ready to disclose or exchange an idea when compensation is available therefor. The patents and copyrights are designed to encourage a person to disclose an idea, while permitting that person to retain the right to some economic benefit therefrom. With this economic benefit, a person becomes more willing to disclose an original idea.

Thus, patents and copyrights obtained for specific periods of time exclusive rights for the developer with regard to that particular item. Within these rights, an inventor or author may develop a product capable of achieving a profit or commercial advantage. After the expiration of the particular time frame, the information becomes public property. Then anyone may use this property free of any charge to develop their own ideas, therefrom.

As a general rule of thumb, once an idea is uttered, the idea is free to all. The patent and copyright laws provide exceptions to this rule, and encourage further disclosure of ideas, due to the protection provided. An unsolicited idea submitted by a person to a company or other idea user, even if it proves valuable and results in tremendous profits for the company, does not require the company to pay anything therefor. If, however, that particular person has a patent or other intellectual property protection, it is quite possible that the person may use that protection to collect money from the company.

PATENTS

The best starting point for a patent requires that someone, preferably the inventor, describe the idea in writing and illustrations, which can then be used to outline a search of patents and other literature in the field. If the search indicates a patent may be possible, then a patent application may be prepared. After examination, a patent may issue based on the patent application.

There are three (3) classes of patents -- utility patents, plant patents (for a living plant) and design patents. Each type of patent covers a different field of invention. Title 35 of the United States Code is the patent statute.

A patent is issued based on a patent application. A patent application is given a serial number and filing date, upon filing of the same at the United States Patent and Trademark Office. If the application is permitted to become a patent, the patent is given an issue date and a Patent Number. By tradition only, issue dates are always on a Tuesday.

Utility patents and plant patents have a life measured from whatever the issue date to twenty (20) years after the filing date. That is to say, the effectiveness of the plant and utility patents is measured from the issue date to the end of the referenced twenty (20) year term. Due to recent change, if the term of a utility is less than seventeen (17) years as a result of a delay caused by the Patent and Trademark Office, the term will automatically be extended to be at least seventeen (17) years. Design patents have a life of fourteen (14) years from the issue date.

With regard to a plant patent, whoever invents or discovers and asexually reproduces any distinct and new variety of plant may obtain a plant patent therefor.

With regard to a design patent, whoever invents any new, original and ornamental design for an article of manufacture may obtain a design patent therefor. It is quite possible to protect an article of manufacture with both a utility patent and a design patent.

With regard to a utility patent, whoever invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereon may obtain a patent therefor. The utility may even protect the idea behind the invention. This, of course, is subject to other limitations of the patent law.

The other requirements to which a utility patent may be subject are: whether anybody has done it before, whether the item or subject matter sought to be patented has been publicly disclosed or offered for sale, and whether the item is obvious in view of prior work that was done in the area to which it pertains.

Obviousness, like beauty, is in the eye of the beholder. A patent examiner, whose job it is to examine patent applications and determine if the invention is patentable, considers almost everything obvious. A patent attorney, whose job it is to get a patent application through the Patent and Trademark Office, considers nothing obvious.

A typical example of obviousness assumes that a person has come up with an invention comprising elements A, B, C, D and E. A patent or other disclosure is known showing elements A, B, C, F and G in combination. A second patent or other known information shows that F and E are equivalent. A third patent shows that G and D are equivalent. The examiner could thus combine these three patents and say that it would be obvious to substitute equivalents from one patent into another patent and render the idea set forth in the patent application obvious.

There are exceptions to this obviousness rule. If the sum of A, B, C, D and E produces a synergistic, new and unique result instead of an obvious result; the combination may still be patentable. For example, if a certain combination of well known elements is formed and can be proven to cure AIDS or cancer, that combination of known elements for that purpose may well be patentable.

One of the major changes in patent law occurred as a result of Diamond vs. Chakrabarty, 447 U.S. 303; 206 U.S.P.Q. 193 (1980). Prior to that case, the rule was that life forms could not be patented. The particular patent application was denied by the Patent and Trademark Office. The proper appeals led to the United States Supreme Court. The Supreme Court held that the genetically-modified mouse, which could be more easily infected with cancer, could be patented as a valuable research tool. The Patent and Trademark Office has created a new division to handle patents of this type.

Another major change in the patent law revolves around the patentability of a business related processes. In State Street Bank & Trust Co. v. Signature Financial Group, Inc. 149 F3d 1368, 47 USPQ2nd 1596 (Fed. Cir. 1998), United States Patent 5,193,056, relating to a data processing system for implementing an investment strategy, was held to define a proper invention and not subject to summary judgment. The case was then sent back to the lower court for an infringement trial. There were certain physical acts required beyond the computer, which led to the court's decision. The effect of this decision, for which certiorari was denied, permits patentability of some business processes. With the court modification permitting patenting of business methods, modifications to the patent laws have been made to permit the earlier user of the business plan to avoid patent infringement. Also, the Patent Office will now publish patent applications 18 months after filing unless a request is made to the contrary. In the event that the case is eventually filed foreign, you may have 45 days after that determination to withdraw your request to keep the case secret and unpublished.

As a further result of that case, the patent term has been changed again to minimum 17 years, unless the delay is caused by the patent applicant. Earlier the patent term was changed from 17 years from date of issue to a point measured from the issued date point 20 years beyond the filing date. The effect of this change on most cases was to increase the life of a patent for a year. However, Patent Office delays can delay the issuance of a patent and therefore shorten the life of a patent. To reiterate, United States patent law has now been modified to make the minimum patent life in the United States 17 years unless the patent applicant caused the delay. Thus, if the United States Patent Office causes the delay, the patent will automatically be extended, thus giving the patent a life of at least 17 years.

To obtain a plant patent, a plant must be asexually reproduced. Asexual reproduction refers to a plant produced by grafting or similar means, rather than a plant produced naturally or from a seed. A naturally-occurring plant, even if able to be asexually reproduced, is not patentable.

A design patent protects the appearance of an article. The design patent is much simpler to write up than a utility patent or a plant patent. Thus, a design patent is less expensive to prepare, file and prosecute.

Each utility patent is basically its own short story describing the particular invention, which has utility in sufficient language, so a person may develop blueprints from the patent and produce whatever is described. The short story (or utility patent) must disclose how to make the device. The claims at the end of the utility patent define the scope of the invention.

With a utility patent or a plant patent, the owner of the patent may stop others from making, using or selling the patented idea for the life of the patent. With a design patent on a device, the patent owner may stop others from making, using or selling the patented device for a period of up to 14 years. No patent is renewable.

Under certain circumstances, a drug patent may be extended. The extension is granted sometimes, because the Food and Drug Administration may not approve a patented drug for use until the patent has almost expired.

The reason the rights under a patent are phrased in a relatively negative fashion is that sometimes, in fact quite often, a new patent is an improvement on an old patent. In order to produce an invention under a patent, an item protected by a still-enforceable patent may have to be used. This cannot be done without permission from the holder of that patent. Thus, it becomes clear why there is this somewhat negative limitation of patent rights.

Let one assume for the sake of argument that four patents exist. The first patent covers invention A. The second patent covers invention B. The third patent covers invention C. The fourth patent covers a combination of invention A, B and C. Further assuming that all four patents are still valid and have not expired, patent rights in the negative limitation of being able to stop someone from making, using or selling a patented invention can defined as follows.

The owner of the combination patent utilizing A, B and C must buy the required components from the owners of the respective patents or their licensees. As long as the owner of the combination patent buys the A component from the owner of Patent A, the B component from the owner of Patent B, and the C component from the owner of Patent C, there is no problem. The owner of the combination patent is free to make as many combinations and sell as many combinations as desired -- provided each combination is made from the properly purchased components.

Each component may also be purchased from a duly authorized licensee of a patent holder. A retailer or wholesaler buying from a patentee is inherently authorized to make sales of the item. The only restriction on the sale is that it cannot be for the purpose of assisting a patent infringement.

If the owner of the combination patent buys component A in a foreign country and imports it into the United States for use in the invention covered by the combination patent, the owner of Patent A can use Patent A to stop that action. If the owner of the combination patent buys the component A from any source other than an authorized source of the owner of Patent A, the owner of the combination patent has a tremendous problem and is guilty of infringement.

Likewise, the owner of Patent B can sell component B to anyone. However, the owner of Patent B cannot sell the patented component B to anyone that he knows will use that component B to make the A plus B plus C combination to infringe the combination patent. The owner of the patent relating to component B would be a contributory infringer with regard to the owner of the combination patent.

Thus it becomes clear why rights under a patent are negatively defined.

The big advantage of having a patent revolves around the protection offered by the Federal Law. Anybody copying a patent without permission, and thereby infringing the same, can be brought into Federal Court. The Federal Court can triple the damages a jury would award and require the copying or infringing party to pay the attorney's fees for the patent owner. If one party brings a law suit against another party, the general rule of law is that each party will pay its own attorney's fees. With this provision that attorney's fees must be paid by the defendants if the suit is lost combined with the treble damages, the great advantage of this statute becomes clear.

If a person actually has a patent application on file at the United States Patent and Trademark Office, that person may mark covered devices "patent pending". To falsely mark patent pending on a device without actually having an application on file subjects the claimant to severe civil and criminal penalties under the law. After the patent has issued, it is a good idea to mark the patent with the patent number. In this way, everyone using the product will be on notice that the product is protected by a patent. Then anyone copying the product is subject to maximum damages.

Patents have throughout history been confused with monopolies. Monopolies for the most part are considered unacceptable. However, with the first patent being granted in the Third Century BC in Greece and the first patent act being instituted in Venice in 1474, patents have advanced the cause of technology. The patents throughout history have been found to promote technology and to promote advances.

In the United States or what is now known as the United States, the first patent statute issued in Massachusetts in 1641. In the 1800's, a very important state patent was issued in New York to John Fitch for making steamboats. However, as is well known, Robert Fulton's design of a steamboat became better known and was probably superior to that of John Fitch.

In the first United States patent are included the signatures of Thomas Jefferson, George Washington and Edmund Randolph. These three men were the top government officials of the day. They acted as the examining office for that patent. Today this function is performed by the United States Patent and Trademark Office, under control of the Commissioner of Patents and Trademarks, as a part of the Department of Commerce.

In what appears to be a minor reorganization which became a federal law in 1999 and should not affect the functioning of the Patent Office, the Patent Office has been separated from the Trademark Office and a Commissioner appointed for each branch. These Commissioners still report to a person in the United States Department of Commerce. However, the title of the Commerce Department head has been changed from Commissioner of Patents and Trademarks to Under Secretary of Commerce For Intellectual Property and Director of the United States Patent and Trademark Office.

In 1790, the Federal Government preempted, that is completely took over, the duties of issuing patents. The current patent act is based, with modifications, on the 1952 Patent Act. A patentable invention since 1952 has been based on what is called "The Standard of Nonobviousness". In other words, is what has been done worthy of a patent? If it is worthy of a patent, there is nothing known in the world that can render the particular invention sought to be patented obvious.

It is quite possible to file a patent application based on a device that has not been constructed. It is, however, always advisable to make and test a device before a patent application is filed. The constructed device may well indicate required changes in the device to improve its function. The changes may not be covered by the patent application and the resulting patent.

If somebody makes a device that might infringe a patent, the device must be analyzed to determine whether it performs substantially the same function for substantially the same result in substantially the same way as the patented device. If the device reads on the claims of the patent and meets the other criteria, there is an infringement.

Ownership of a patent belongs to the inventor or inventors named thereon, without a countermanding agreement. This agreement should be in writing. Otherwise, if an inventor builds a device for a person or a company, the inventor owns the patent on the device, with the person or company having only the right to use the device during the course of business.

Another change in the law is a federal requirement for an invention promotion service to provide evidence regarding its success rate. Such a service must disclose how many inventions have been successfully manufactured and its percentage rate of success. Hopefully, this change will eliminate most of the undesirables from that business.

TRADEMARKS

The Federal Trademark Statute includes trademarks and service marks. In the United States Code, Chapter 15 is the federal trademark statute.

A trademark is any word, name, symbol, device or combination thereof used by a person or company in commerce to identify or distinguish its goods from those manufactured or sold by others and to indicate a possible primary source for the goods, even if the source is not publicly known. There are marks that also exist to identify particular services involved.

In 1999a new law known as the Anticyber Squatting Consumer Protection Act was passed. Basically, the Intellectual Property Law Bar has been pushing for a ruling or statute which would protect trademarks in light of or in spite of domain name registrations. This legislation in several sessions of Congress easily passed the House, but was stalled in the Senate. However, there was a registration on the Internet of the names of the members of the Senate Judiciary Committee. At that point, the Senate Judiciary Committee became interested in pushing this bill through their procedures, and getting it through the Senate. As a result, the trademark holder has substantial protection against a person who registers the trademark on the Internet. Thus, what the Courts have been holding regarding use of names on the Internet, has now been codified.

Another major trademark litigation is in process, because the Harley/Davidson Company is attempting to obtain trademark protection on the sound its motorcycle engine makes. Opposition to this trademark comes from almost every motorcycle manufacturer. The sound of the National Broadcasting Company received trademark protection many years ago. Two of the possible decisions are (1) Harley/Davidson will lose, because it is an attempt to extend patent protection with a trademark, or (2) Harley/Davidson will win because, other sounds have been trademarked.

The United States Supreme Court recently settled a dispute among the circuits regarding use of a particular color as a trademark. It has been held, that color can be protected as a trademark. This decision provides a great advantage for the Owens/Corning Company and its pink insulation.

Due to a recent modification in the trademark law, it is possible to file an application for a trademark without actual use of the mark. However, before registration of the mark is actually obtained, it is necessary to prove use of the mark in interstate commerce. These applications are referred to as "Intent to Use Applications", for which prosecution costs can greatly increase.

The best types of marks are either coined, arbitrary or suggestive. Descriptive marks and generic marks cannot be subjects for trademarks. A trademark can be registered if the goods of the applicant are distinguished from the goods of others thereby.

In other words, is the mark distinctive when compared to other trademarks for the same goods and services? If the answer to that question is "yes", the trademark can be obtained. If the answer is "no", the trademark cannot be obtained.

To use a mark similar to a registered trademark on the same or similar goods is a major problem for the infringer. There is a civil action for recovery in the event of trademark infringement, with punitive damages including court costs and attorneys' fees being a possible award.

The key questions on determining an appropriate trademark infringement are (1) similar goods, (2) similar appearance and (3) similar sound. If a proposed trademark has those three items in conflict with a registered trademark, the proposed trademark could infringe the registered mark and cause the infringer to suffer the appropriate penalties.

However, if a mark becomes extremely powerful or famous, it may be possible for the mark to be extended to goods not inherently covered by the mark. For example, the Pirelli Tire Company of Italy has filed suit against a gentleman intending to use the name Pirelli for a pizza parlor in the Chicago suburbs. Another confrontation involves SPAM, which is a registered trademark of the Hormel Corporation. Hormel has already informed Cyber Promotions, Inc. that Hormel does not like the Cyber use of SPAM to describe cyberspace junk mail. Is SPAM a famous mark, which would preclude such use?

Also, BERETTA of Italy filed suit against the General Motors Corporation, and CHEVROLET, in particular for use of BERETTA on a type of CHEVROLET CAMARO. This suit was settled. The terms of the settlement were that each party would pay its own attorney's fees, CHEVROLET would donate five hundred thousand ($500,000.00) dollars to the American Cancer Society, and CHEVROLET could use BERETTA for its sports cars. No other use could be made of the term BERETTA. The President of BERETTA received a red BERETTA CAMARO, and the President of CHEVROLET received a matched set of ivory-handled, nine millimeter BERETTA pistols. Thus it can be seen that if the mark is very strong, it may be applicable to goods not normally covered by the mark.

The theory of this case and others has now been codified. If a mark can be shown to be famous and extremely well-known, it will granted protection in fields beyond its normal use or service. This is commonly called the famous mark exception.

The original function of a trademark was to indicate the origination of the corresponding goods or the services and to protect the consumer. The later function is to protect the marking advantage and to protect the vendor. There was a great difficulty in developing a Federal Statute for trademarks to cover these aspects. Finally, the Federal Trademark Statute was based on the commerce clause.

The key item in trademark protection is to avoid having the trademark become a generic term, whereby the trademark owner loses the exclusive use of the trademark. A number of trademarks have been lost as a result of becoming generic. Typical examples of those trademarks are aspirin, escalator and zipper. XEROX Corporation of Stamford, Connecticut, is making every effort to protect its trademark -- especially by discouraging people from using XEROX as a verb. In this fashion, the XEROX Corporation hopes to keep its trademark from becoming generic.

Trademarks are renewable. The trademark is issued for a period of ten years. During the first ten-year period, between the fifth and sixth years, the trademark owner must prove continued use or lose the mark. If continued use of the trademark is proven, the mark becomes virtually incontestable. The trademark is renewable for an unlimited number of ten-year periods.

To have a trademark issued, a proper application must be filed. The Patent and Trademark Office will complete its work. Assuming that the Office agrees that the applicant is entitled to the trademark, the application is published for the opposition. Any one feeling threatened by the applied-for mark can oppose the applicant getting a registration for the trademark. If the applicant has no opposition or wins the opposition, the applicant will get a registered trademark.

A person may mark the service or goods with a "TM" whenever use of a particular mark is considered therefor. However, one may not use the smaller capital "R" with a tangential circle therearound, unless the trademark registration is actually in hand. Thus, the marking system for a trademark under trademark law is somewhat different from patent law in that one can use the "TM" without actually having a trademark application on file. "Patent pending" is only usable when a patent application is actually on file.

The preferred types of marks are coined, arbitrary or distinctive. A coined mark is a mark completely conjured up from a collection of letters. The mark is then promoted sufficiently with advertising to provide both a distinctiveness and protection for the product. TUPPERWARE is one such mark. An arbitrary mark is just a common word not clearly applicable to certain goods that is made to apply to the mark. A suggestive mark is one that indicates the particular goods without describing the goods. For example, PLAYBOY Magazine is a suggestive mark -- in more ways than one.

A descriptive mark can acquire distinctiveness in application as a trademark only through secondary meaning. There is a supplemental registration procedure in the Patent and Trademark Office which permits one to put the mark on a supplemental register. If the mark is continuously used for five years, one may then transfer it to the principal register if desired.

Generic marks are, of course, not allowed. A surname may be used as a trademark only if it acquires secondary meaning. A descriptive mark fails to serve as a trademark, if it does not advise the public that the product comes from a single source and it infringes on free use of speech.

Acquired distinctiveness or secondary meaning can overcome these problems. Trademark infringement considers likelihood for confusion, deception or mistake as to the source, when the mark is applied to goods in commerce. The likelihood of confusion depends or the similarity of the marks, the appearance, the sound, the connotation and the impression. Other factors include similarity of goods and services, similarity of trade channels, condition of the sale, strength of the mark, number and nature of similar marks and similar goods, and consumer surveys.

An unregistered mark may be infringed provided that the one who asserts rights in the trademark can prove that the use of the mark merits Federal protection and that the likelihood of confusion can be established. However, it is much easier to enforce rights with a registered mark.

In Illinois, the state trademark statute is Illinois Compiled Statutes Chapter 765, Section 1035/1 (765 ILCS 1035/1 et seq.) and following. On January 1, 1998, Illinois made effective her version of the "Model State Trademark Bill." Adoption of this model statute bring the Illinois State Act more in line with the federal act.

Illinois State Trademarks are administered by the Illinois Secretary of State. Federal Trademarks are administered by the Patent and Trademark Office as a unit of the Department of Commerce.

COPYRIGHTS

Copyrights, like patents, have specific provisions therefor in the United States Constitution. Chapter 17 of the United States Code is the copyright statute.

A major change in the copyright law occurred with the decision in Feist Publications v. Rural Telephone Service Company, 499 U.S. 340 (1991). A minimal spark of creativity is required to obtain a copyright now. While this requirement is no where as strenuous as the requirement for a patent, it is major increase in the requirements for getting a copyright. Thus, copyrights are somewhat more difficult to obtain.

At anytime, it is possible to claim a copyright interest in a created item by marking the item with "copyright", a year, and a name. One form of proper copyright notice appears at the end of this paper. Notice is preferable, but not required, to achieve protection of the item. Maximum protection under the copyright laws is obtained, when the application for copyright is filed within three (3) months of the first publication of the item sought to be copyrighted.

If the copyright application is filed within three months of the publication date of the item with a proper copyright notice, the copyright holder can recover from an infringer from the date of publication, most likely including punitive damages. If the copyright application is filed later than three months after publication, the copyright holder can, in most cases, only recover severe punitive damages under the federal law, from infringers from the date of copyright issuance. Thus, it is highly desired to mark all qualifying materials "copyright" in the appropriate manner as soon as possible and file within the appropriate time.

Prior to 1988, copyright was mandatory in order to get copyright protection. As a result of this requirement, Dr. Martin Luther King, Jr.'s heirs were not to have a copyright on the "I Have a Dream" speech. Advance copies of the speech were circulated without a copyright notice in 1963. Therefore, under the old copyright law, copyright was waived. Anyone may now use that speech for any purpose, without fear of copyright infringement. If that occurred under the new copyright, the copyright would have attach automatically upon creation of the speech. His would own all rights to the speech and require a royalty for any performance thereof.

If the copyright is held by the author in person, the length of the copyright is the life of the person plus 50 years. If the author's company or another company owns the copyright, the term of the copyright is 75 years. A copyright is not renewable.

If two different people come up with the same idea, each independently of the other, both are entitled to a copyright. One may not exclude the other. On the other hand, a patent or a trademark is exclusive.

Copyright protection applies to literary works, musical works (including any words), dramatic works (including any music), pantomimes, choreography, pictorials, sculptural works, graphic works, motion pictures, sound recorders, solid state circuits and computer programs. The copyright provides a person the exclusive right to reproduce a work, prepare derivative works thereof, sell it, perform it publicly, and display it publicly.

For example, it is not fair use of a copyrighted item to play a radio station loudly enough in a business establishment for patrons to hear. In so doing the copyright is infringed. One must purchase the right to do this from the American Society of Composers and Performers or a similar organization in the United States.

Fair use of a copyrighted item is not an infringement. Fair use includes criticism, comment, news reporting, teaching, scholarship or research. Factors considered in determining fair use are the purpose and nature of the use, the nature of the work and the portion used. The effect of the use on the value of the work is also considered.

Copyrights developed as a privilege for printers in England shortly after the refinement of the printing press. However, copyrights were modified to protect the authors. Copyrights have also been used in the past as a means of censorship.

The first United States Copyright Act of 1790 covered only maps, charts and books. Prior to creation of the United States Constitution, before publication of an item, state law copyright jurisdiction applied -- while after publication, Federal law jurisdiction applied.

The Copyright Act was modified to cover specific classes of works and modified last in 1978. It now includes prints by etching or engraving, musical composition, public performance of dramatic works, photographs, paintings, drawings, statues, models, designs of fine art, the right to dramatize nondramatic literary works, and the right to public performance. Also, eleven categories of protected works including derivative works, motion pictures, sound recordings, records, computer programs and similar matters have since been added thereto.

Statues and models may also be subject design patent protection. However, one cannot have both. A choice must be made. If the exclusivity of the design patent is more important than the longer term of the copyright, the choice is for a design patent. If the longer term of the copyright is more important than the exclusivity of the design patent, then the choice favors a copyright.

What is required for a copyright is at least some originality. The author must contribute something more than a merely trivial variation. The copyright automatically vests in the author at the time of creation. There is no application process for a copyright to exist as there is for patent or a trademark. However, application for registration does provide significant protection, and avoids abandonment of rights in an otherwise copyrightable creation.

The key test for copyright infringement is whether the average person would consider the second article as being from the same area as the first article. It is necessary to show that the infringer first had access to and knowledge of the work, and then created the reproduction the work, to constitute infringement of that work.

Function of the use of the copyrighted material is also a part of copyright infringement. If recipes from a copyrighted recipe book are used to make a second recipe book there is definitely infringement. If a recipe book is used to provide a history of cooking, that may or may not be an infringing action depending on the situation defined by all of the circumstances surrounding the use of the copyrighted material.

The Register of Copyrights, as a division of the Library of Congress, handles the routine functions associated with the copyright law. The Register of Copyrights serves the same function for copyrights that the Patent and Trademark Office serves for patents and trademarks.

Ownership of the copyright on a work belongs to the author or creator, without a countermanding agreement. This agreement should be in writing. For example, if a person hires a computer specialist to write a program for him or her, that person should obtain a written agreement that he or she will own the copyright. Such action will permit that person, to make copies of the program or modify without permission of the computer specialist.

TRADE SECRETS

Information used in business which gives a person a demonstrable advantage can be held as a trade secret. COCA COLA is a typical example of a formula protected by a trade secret still unknown to the general public -- even after about 100 years. The five or so employees, who know the formula for COCA COLA, are never allowed together on the same airplane, or even in the same room.

There are six factors to be considered in order to protect trade secrets:

1) the extent to which the information is known outside of the business, which owns that trade secret;
2) the extent to which it is known by the employees and others involved in the business;
3) the extent of measures taken by the owner to guard the secrecy of the information;
4) the value of the information, both to the owner and to possible competitors;
5) the amount of effort or money expended by the owner in developing the information;
6) the ease or difficulty with which the information could be properly acquired or duplicated by others. (IICLE Unfair Competition, 1979).

If a person, without stealing or otherwise getting information from the owner of the trade secret discovers the trade secret through independent research or other appropriate means, that person is free to use that information. The trade secret is then lost to the owner, and no monetary damages can be obtained from that person.

Reverse engineering is not misappropriation of a trade secret. Reverse engineering involves examining a legally obtained, supposedly protected by trade secret item, and duplicating that item, based on that examination alone.

A trade secret may be a formula for a chemical compound; a process of manufacturing, treating or preserving materials; a pattern for machine or other device; or a list of customers. Because of the greater damages that can be awarded, it is best to try to bring a trade secret violation act under the federal statute or 15 U.S.C. 1125(a).

Three types of trade secrets are recognized under Illinois law. First, the owner of such information is entitled to protection from tortious misappropriation by competitors. Such an action is usually based on improper means used. Typical examples of means include bribery, theft or industrial espionage. Second, most common are cases brought by employers to restrain former employees from dispensing their knowledge of the trade secrets to other people. This action relies on the fiduciary relationship between the fiduciary relationship between the employer and the employee. Third, there are also actions to enforce the license agreement for a trade secret. These, however, are very rare due to the inherent nature of the confidentiality related to the trade secret.

In Illinois, the state trade secret statute is Illinois Compiled Statutes, Chapter 1065/1 (765 ILCS 1065/1 et seq.) and following.

UNFAIR COMPETITION

Unfair competition (or unfair trade practice) is a catch all tort. It is closest to trademark practice, but there is no federally registered trademark interest, which is protected. It requires a wrongful act or bad faith act coupled with damage or potential damage to trade. A typical example is found where news stories are lifted by a second party from a newspaper sent to other parts of the country by that second party for publication in other papers. Protection in this function can also possibly be obtained by copyright, if the proper filing is done.

The Illinois statutes covering unfair trade practices are found in a wide variety of places. It is in various parts of Illinois Compiled Statutes, Chapters 10, 15, 55, 65, 70, 740 and 815 among others. Chapters 740 and 815 are the most pertinent.

Various aspects of unfair competition include Interference With a Contract, Covenants Not To Compete, Passing Off, Commercial Disparagement, False Advertising, and Commercial Bribery.

The prima facie (perfectly clear) case for inducing breach of contract requires the plaintiff to establish the existence of the contract between the plaintiff and a third party at the time of defendant's action. Plaintiff must further establish that the defendant knew of the contract; and that the defendant induced the third party to breach, rescind, terminate or otherwise adversely affect the performance of the contract with plaintiff. The plaintiff must also prove that the defendant's act were an actual or proximate cause of the damage to the plaintiff.

Another part of the Unfair Competition is Breach of Covenants Not To Complete. Covenants Not To Compete can run from an employer to either a current employee or to a separating employee, or from seller of business to the buyer of a business. Generally speaking, the covenant from a seller of a business to a buyer of a business is more widely enforceable than the covenant between an employer and an employee. The employee must have the right to make a living. Therefore the restrictions on area and competing area and time of the Not To Compete will be more strictly limited with regard to an employee than with the selling owner business. In the business, the Covenant Not To Compete usually consists of a statement that the party will not form a competing business within a certain distance or within a certain time of the sale of separation. Thus, because of the right of the employee to make a living, the time and the distance may be somewhat limited.

Passing off means to sell the goods of one manufacturer by leading a purchaser to believe that he is buying the goods of another. Another term for Passing off of the goods of one company as the goods of another is Palming Off. Passing off occurs is at the time of the offer for sale whether or not a purchase is made. Thus, the actual making of the goods is the critical element of this action.

Illinois has adopted the Uniform Deceptive Trade Practices Act. As long as the eleven points of the Deceptive Trade Practices Act are applied, there is an action. The elements are:

1) passes off goods or services as those of another;
2) causes likelihood of confusion or of misunderstanding as to the source, sponsorship, approval or certification of goods or service;
3) causes likelihood of confusion or of misunderstanding as to affiliation, connection or association with or certification by another;
4) uses deceptive representations or designations of geographic origin in connection with goods or services.
5) represents that goods or services have sponsorship, approval, characteristics, ingredients, uses, benefits or quantities that they do not have or that a person has a sponsorship, approval, status, affiliation or connection that he does not have;
6) represents that goods are original or new if they are deteriorated, altered, reconditioned, reclaimed, used or secondhand;
7) represents that goods or services are a particular standard, quality or graded or that goods are a particular style or model, if they are of another;
8) disparages the goods, services or business of another by false or misleading representation of fact;
9) advertises goods or services with intent not to sell them as advertised;
10) advertises goods or services with intent not to supply reasonably expectable public demand, unless the advertisement discloses a limitation of quantity;
11) makes false or misleading statements of fact concerning the reasons for, existence of or amounts of price reductions;
12) engages in any other conduct which similarly creates a likelihood of confusion or of misunderstanding. (IICLE Unfair Competition, 1979 Chapter 7, Page 6).

In Commercial Disparagement, one must consider the action of commercial defamation, or commercial libel and slander. This is based on the publication on false and derogatory assertions concerning the reputation of an individual or entity. The standard rules of both slander and libel per se apply. Disparagement on the other hand is an injurious falsehood relating to false and derogatory statements about the quality or nature of the products or services provided. This, of course, is actionable also.

The Hormel Corporation challenge against Cyber Promotions can be pursued under facets of unfair competition in addition to trademarks. Federal trademark law provides for court costs and attorneys' fees. Unfair competition may be easier to prove. Those are difficult, which vary from case to case.

For the most part, the distinction between libel and slander has been eliminated for unfair competition purposes. Libel is written disparagement. Slander is spoken disparagement. However, penalties for either libel or slander are similar.

PATENT ATTORNEY TRAINING

Most attorneys practicing in the intellectual property law field are patent attorneys. Of the areas of intellectual property law, only patent law requires a federal license to practice before the patent division of the Patent and Trademark Office. Only patents require a special federal license. Obtaining that license requires passing an examination or working for the Patent and Trademark Office as a patent examiner for four years.

To get permission to take the federal examination, a person must prove technical competence. The easiest way to prove that is to have a bachelor of science degree in engineering, one of the physical sciences or one of the natural sciences. If one passes that examination and is not an attorney, one becomes a patent agent. A patent agent is licensed to practice before the patent division of the Patent and Trademark Office. If one passes that examination, and is an attorney, one becomes a patent attorney. If a patent agent subsequently becomes an attorney, that agent can have the agent's certificate reissued as an attorney's certificate.

CONCLUSION

While each branch of intellectual property law serves a specific function, it is possible to combine attributes of more than one branch thereof to maximize protection for an idea. Whatever branch thereof is used, it is clear that intellectual property law offers advantages both to the developer and to the consumer.

Copyright 2000, Mathew R. P. Perrone, Jr.
Attorney At Law/Patent Attorney
(847)658-5140
210 South Main Street
Algonquin, Illinois 60102

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