Overview

A patent grants its owner the exclusive right to prevent others from making, using, selling, offering to sell or importing a patented invention within the United States for a limited period. The regulatory framework for patents is established under the U.S. Patent Act (35 U.S.C.), and the U.S. Patent and Trademark Office (USPTO) administers the issuance of patents. Notably, U.S. law does not recognize common law patent protection; patents must be obtained through formal registration with the USPTO.

Since the U.S. operates under a first-inventor-to-file system, the right to a patent is awarded to the first inventor who files a patent application, regardless of the date of invention. There are three primary types of patents: utility patents, design patents and plant patents.

Types of patents and duration

• Utility patents. The most common form of patent, utility patents protect new and useful processes, machines, technical creations and improvements thereof (35 U.S.C. sections 101 to 103). A utility patent lasts for 20 years from the date the application was filed with the USPTO, subject to the payment of maintenance fees. This term may be extended under certain circumstances, such as when regulatory approval delays the market introduction of patented pharmaceuticals (35 U.S.C. section 154(a)(2)).
• Design patents (filed on or after May 13, 2015). These patents cover novel, original and ornamental designs for articles of manufacture, focusing on the aesthetic aspects of an article rather than its function (35 U.S.C. section 171). Design patents have a term of 15 years from the date of issuance. Unlike utility patents, design patents do not require maintenance fees (35 U.S.C. section 173; MPEP section 1505).
• Plant patents. Granted to individuals who invent or discover and asexually reproduce new and distinct plant varieties, these patents protect innovations in plant breeding and horticulture (35 U.S.C. section 161). Plant patents last for 20 years from the filing date, with no requirement for maintenance fees.

Once the patent term expires, the invention enters the public domain, meaning anyone can use, make or sell the invention without infringing the patent.

Patent application process

To secure patent protection, an inventor must submit a detailed application to the USPTO. The application must satisfy several substantive requirements, including:

• Enablement. Provide enough detail so that someone knowledgeable in the field can replicate the invention without excessive trial and error (35 U.S.C. section 112).
• Written description. The application must demonstrate that the inventor had fully conceived the invention upon filing (35 U.S.C. section 112).
• Best mode. The inventor must disclose the best method they are aware of for carrying out the invention at the time of filing (35 U.S.C. section 112).
• Definiteness. The claims of the application must clearly define the invention’s scope (35 U.S.C. section 112).
• Novelty and non-obviousness. The invention must be new, meaning it cannot be a replica of prior art, and it must also be non-obvious to a person of ordinary skill in the field (35 U.S.C. section 102). For a discussion surrounding novelty and non-obviousness when combining elements of prior art, see KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398.

Patent prosecution entails communicating back and forth with the USPTO. This process usually results in the need to respond to office actions where the examining attorney sets forth issues/legal assertions relating to the application’s compliance with statutory requirements and other considerations.

Patent rights and enforcement

Once a patent is granted, the patent holder obtains the exclusive rights to make, use, sell, offer for sale or import the patented invention within the United States (35 U.S.C. section 154). These rights can be enforced through litigation in federal courts, and patent infringement can occur even if the infringer is unaware of the patent’s existence. Patent holders have the exclusive right to exclude others from making, using, selling, offering for sale or importing the patented invention. Patent infringement occurs when a third party engages in any of these activities without the patent owner’s permission. Infringement may be direct, where someone engages in conduct that fully encompasses the claims of the patent, or indirect, through inducement or contributory infringement.

Remedies for patent infringement include injunctions, which may stop infringing activities, and monetary damages. In certain cases, where infringement is found to be willful, courts may award enhanced damages up to three times the actual damages (35 U.S.C. section 284). 

Civil litigation. Patent enforcement typically occurs through civil litigation in federal courts. Patent holders may file a lawsuit against an infringer to seek remedies such as injunctions, damages and, in cases of willful infringement, enhanced damages. Patent litigation can be complex and expensive, often requiring extensive expert testimony on issues like claim construction and technical details.

• Injunctions. Courts can issue preliminary or permanent injunctions to stop infringing activities. Injunctions are common in cases where ongoing infringement would cause irreparable harm to the patent holder’s business.
• Monetary damages. Damages for patent infringement can include lost profits, the infringer’s profits, or a reasonable royalty based on the value of the patented invention. In exceptional cases, where the infringement is found to be willful, courts may award treble damages — up to three times the actual damages.
• Declaratory judgments. An alleged infringer may preemptively file a declaratory judgment action, asking the court to declare that their actions do not infringe the patent, or that the patent is invalid.

Administrative proceedings. The U.S. Patent and Trademark Office (USPTO) offers administrative mechanisms, such as post-grant reviews, inter partes reviews and ex parte reexaminations, which allow third parties to challenge the validity of a patent after it has been granted. These procedures provide a faster and often less expensive alternative to federal litigation.

Overview

A trademark is any word, name, symbol, design or combination thereof used in commerce to identify and distinguish the goods or services of one manufacturer or seller from those of others (15 U.S.C. section 1127). It signifies the source of the goods/services, helping consumers recognize them as being from a particular company. Trademarks serve as a key element in brand identity, protecting businesses and preventing consumer confusion. U.S. trademark law is governed by the Lanham Act (15 U.S.C. sections 1051 to 1141n), which provides for both the protection and enforcement of trademark rights.

Common law trademark rights in the U.S. arise through use in commerce, although registration with the USPTO (see 37 Code of Federal Regulations (C.F.R.) sections 2.2 to 7.41) significantly enhances these rights by providing nationwide protection and other legal advantages.

Types of trademarks

Trademarks fall into several categories, including:

• Trademarks. These protect symbols, words, or designs that distinguish the goods of one entity from those of another (e.g. “APPLE”).
• Service marks. These function similarly to trademarks but apply to services rather than goods (e.g. “UBER”). 
• Certification marks. These certify that goods or services meet certain standards and are used by authorized third parties (e.g., “Fair Trade Certified”).
• Collective marks. These identify membership in an organization, such as a union or professional association (e.g. “NATIONAL ASSOCIATION OF REALTORS”). 

Of the foregoing categories, trademarks can cover/protect visual (colors and graphical markings, e.g. Tiffany Blue and UPS brown), audible (sound jingles, e.g. NBC chimes, MGM roaring lion) and even olfactory components (e.g. the smell of Play-Doh).

Distinctiveness

Generally, to be eligible for federal registration, a trademark must be inherently distinctive or have acquired distinctiveness/secondary meaning. A mark acquires distinctiveness when it has achieved recognition among the relevant consumers as a distinct source as opposed to being merely descriptive of the goods/services offered. Three types of marks are considered to be inherently distinctive and are registrable without proof of such acquired distinctiveness (see Abercrombie & Fitch Co. v. Hunting World, Inc. 537 F.2d 4 (2d Cir. 1976)):

• Inherently distinctive marks:
  • Fanciful marks — invented terms with no inherent meaning (e.g. “EXXON”).
  • Arbitrary marks — common words used in an unrelated context (e.g. “APPLE” for electronics).
  • Suggestive marks — these imply a characteristic of the goods or services but do not describe them directly (e.g. “NETFLIX”).
• Marks requiring secondary meaning:
  • Descriptive marks — these describe the goods or services but can only be registered upon showing secondary meaning (e.g. “HOLIDAY INN”).
• Unregistrable marks
  • Generic terms — these are common terms for a product or service and cannot be trademarked (e.g. “Computer” for computers). Additionally, certain marks can fall prey to genericide, and thereby lose trademark protection if the public begins using the mark to refer to the product/service itself (e.g. “ESCALATOR”, “TRAMPOLINE” and “FRISBEE”).

Registration

Principal Register. If a mark is registered on the Principal Register, it is prima facie evidence of the validity and ownership of the mark, and it creates the presumption that the owner has the exclusive right to use the mark nationwide. To be eligible for registration on the Principal Register, a mark must be inherently distinctive or have acquired distinctiveness. 

Supplemental Register. While registration on the Supplemental Register does not provide the benefits discussed above, it shares some other benefits that come with registration on the principal register such as:

• Right to use ® symbol next to the mark and ability to provide the public with notice of the mark.
• Examiners can reject marks that create a likelihood of confusion with the mark.

Trademark enforcement

Trademarks serve as a critical tool for businesses to protect their brand identity and prevent consumer confusion. Trademark infringement occurs when a third party uses a mark that is identical or confusingly similar to a registered trademark in a way that is likely to cause confusion among consumers.

Civil litigation. Trademark owners can file a lawsuit in federal court to enforce their rights. Remedies for trademark infringement may include injunctions, monetary damages, and, in cases of willful infringement, enhanced damages.

• Injunctions. Injunctions are a common remedy in trademark cases, particularly when the continued use of the infringing mark would cause ongoing harm to the trademark owner’s brand.
• Monetary damages. Damages in trademark cases may include the trademark owner’s actual damages, the infringer’s profits, and, in some cases, statutory damages for counterfeiting. Courts may also award enhanced damages in cases of willful infringement.
• Trademark dilution. In addition to infringement claims, owners of famous trademarks can pursue dilution claims under the Federal Trademark Dilution Act. Dilution occurs when the use of a similar mark diminishes the strength or distinctiveness of a famous mark, even in the absence of consumer confusion.

Administrative proceedings. Trademark owners can oppose the registration of confusingly similar marks through proceedings before the Trademark Trial and Appeal Board (TTAB) of the USPTO. These opposition or cancellation proceedings allow trademark owners to challenge marks that have been registered or are pending registration, without the need for full litigation.

Overview

Copyright law in the United States protects original works of authorship that are fixed in a tangible medium of expression (17 U.S.C. section 102). This means the work must be embodied in some tangible medium, such that it can be perceived, reproduced, or communicated for more than a fleeting moment. Importantly, copyright only protects the expression of an idea, not the idea itself. For example, a book’s specific text and the selection, coordination and arrangement of such text may be protectable, but the underlying ideas or facts it conveys are not (for a discussion surrounding the dichotomy between literary ideas and copyrightable expression, see Nichols v. Universal Picture Corp. 45 F. 2d 119, 121 (2d Cir. 1930): “There is a point in [the] series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his ‘ideas,’ to which, apart from their expression, his property is never extended”). Copyright protection arises automatically upon the creation and fixation of the work — there is no requirement to register the work with the U.S. Copyright Office to obtain rights, though registration is a prerequisite to suing for federal copyright infringement in federal court. Registration also provides other benefits such as eligibility for statutory damages and attorneys’ fees in infringement actions.

The scope of copyright protection extends to the fruits of various kinds of creativity, including literary works, musical compositions, and choreographic works as detailed below (17 U.S.C. section 102).

Copyrightable works

Copyright covers a broad range of human originality (17 U.S.C. section 102). While works must exhibit some level of originality, the threshold for originality is relatively low. Works protected include:

• Literary works. This includes novels, poems, articles and even computer code.
• Musical works and sound recordings. There are distinct copyrights for the musical composition (e.g. sheet music) and the sound recording.
• Pictorial, graphic and sculptural works. This category includes paintings, drawings, photographs and sculptures. It protects not only traditional fine arts but also more commercial designs, such as graphic design and product packaging like jewelry.
• Motion pictures and audiovisual works. Films, television shows and digital videos all fall under this category. 
• Architectural works. Includes design of buildings, both in their constructed form and in the architectural plans themselves.

Copyright ownership 

Copyright ownership initially vests in the author of the work unless the work qualifies as a “work made for hire”. In such cases, the employer or commissioning party is considered the author and thus holds the copyright. 

Copyright duration

Copyright protection lasts for a significant period but eventually expires, allowing the work to enter the public domain:

• Works created on or after January 1, 1978. Copyright protection lasts for the life of the author plus an additional 70 years. For works created by multiple authors, the term lasts until 70 years after the death of the last surviving author (17 U.S.C. section 302).
• Works made for hire. For works made for hire or anonymous/pseudonymous works, copyright protection lasts for 95 years from the date of publication or 120 years from the date of creation, whichever expires first (17 U.S.C. section 302).
• Works published before 1978. The duration of protection for these works varies due to the complexities of earlier copyright laws, but most such works are now either in the public domain or approaching the end of their copyright term.

Rights of copyright holders

Copyright holders enjoy the following six exclusive rights (17 U.S.C. section 106):

• Reproduce the work. This involves reproducing the work in copies or phonorecords. 
• Create derivative works. Copyright owners may create new works based on the original, such as adaptations or translations.
• Distribute copies. This includes selling, leasing or transferring copies of the work to the public.
• Publicly perform the work. This right applies to work such as musical works, plays, choreographic works and audiovisual works. 
• Publicly display the work. This right covers works that can be publicly performed as well as pictorial, graphic or sculptural works which may be shown in public settings.
• Perform work by means of a digital audio transmission. This exclusively covers sound recordings performed publicly through digital audio transmissions. 

Copyright infringement and remedies

Copyright infringement occurs when a party violates any of the exclusive rights held by the copyright owner without authorization. Infringement of the reproduction right may be proven either by showing direct copying or by demonstrating access to the copyrighted work coupled with substantial similarity to the original. Copyright law also recognizes indirect forms of infringement, such as vicarious or contributory infringement, where a party may be held liable for facilitating or benefiting from the infringement of another. Copyright holders can file a lawsuit in federal court to stop the infringing activity and recover damages. A key advantage of copyright enforcement is the availability of statutory damages if the work was registered with the Copyright Office prior to the infringement or within a specified timeframe.

Remedies for copyright infringement include:

• Injunctions. Courts may issue orders to cease infringing activities (17 U.S.C. section 502). Preliminary injunctions are often sought early in the litigation process to prevent irreparable harm.
• Statutory and actual damages. In cases where statutory damages are available, copyright owners can recover a set amount of damages without needing to prove actual losses. Alternatively, they may pursue actual damages, which compensate for the copyright owner’s losses and the infringer’s profits. Copyright owners may recover actual damages and the infringer’s profits, or statutory damages if the copyright was registered in a timely manner. In cases of willful infringement, courts may award enhanced statutory damages (17 U.S.C. section 504).
• Attorneys’ fees. Copyright owners who have registered their works may also be entitled to recover attorneys’ fees in successful infringement actions (17 U.S.C. section 505).

Additionally, criminal penalties are available for willful copyright infringement, such as large-scale piracy, done for commercial advantage or private financial gain, with potential punishments including fines and imprisonment (18 U.S.C. section 2319).

Overview

Trade dress encompasses the distinctive non-functional visual elements of a product or its packaging that help consumers identify its origin. Trade dress encompasses the overall look and feel of a product, which can include features such as shape, color, design, texture and even layout. For example, the distinctive shape of the Coca-Cola bottle is a well-known example of protected trade dress.

Types of trade dress

Trade dress is generally categorized into two types:

• Product design. This includes the non-functional aspects of the design or shape of the product itself, such as the specific design of a luxury handbag. Product design is only protectable upon a showing of acquired distinctiveness or secondary meaning. For a discussion between product packaging and product design protections see Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000).
• Product packaging. This includes the appearance of a product’s packaging, such as the distinctive orange and black color scheme of Reese’s Peanut Butter Cups, or the iconic Coca-Cola bottle. Product packaging may be inherently distinctive and protectable without a showing of secondary meaning. 

Protection of trade dress

To qualify for trade dress protection, the design must be distinctive and non-functional. Distinctiveness refers to the ability of the trade dress to serve as a source identifier. Non-functionality means that the design elements being protected are not essential to the use or purpose of the article and do not affect the cost or quality of the product.

As mentioned above, trade dress can be inherently distinctive, meaning it is immediately recognized by consumers as identifying the source of the product, or it can acquire distinctiveness through secondary meaning. Secondary meaning arises when the public comes to associate the design with a particular source over time.

Trademark and trade dress duration

Trademark rights in the United States can potentially last indefinitely, provided that the trademark owner continues to use the mark in commerce and, with respect to registrations, maintains such registration with the USPTO.

• Common law trademarks. These arise automatically upon use in commerce and continue for as long as the mark is used in connection with the goods or services. However, common law rights are limited geographically to where the mark is actually used in commerce.
• Registered trademarks. Federal registration of a trademark with the USPTO can last for as long as the mark is used in commerce in connection with its registered goods/services. Registrations must be renewed every 10 years and can be renewed indefinitely, provide the use requirement is satisfied.

The key to maintaining trademark protection is continuous use. Abandonment of the mark (e.g., three years of inexcusable non-use without intent to resume) can result in loss of rights, even for federally registered trademarks.

Trademark and trade dress infringement

Trademark and trade dress infringement occurs when one party uses a mark or design that is confusingly similar to another party’s pre-existing trademark or trade dress in connection with the same or similar goods or services. This unauthorized use can lead to a likelihood of consumer confusion regarding the source, sponsorship or affiliation of the goods or services. 

Courts assess the likelihood of confusion using a multifactor test established in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), commonly known as the Polaroid Test. This test is primarily utilized in federal courts to provide a structured and consistent framework for evaluating trademark and trade dress infringement claims. The Polaroid Test evaluates eight key factors:

• Strength of the plaintiff’s mark. Determines how distinctive and recognizable the plaintiff’s mark is, with stronger marks (e.g. fanciful or arbitrary) receiving greater protection.
• Similarity of the marks. Assesses visual, phonetic and conceptual similarities between the plaintiff’s and defendant’s marks.
• Proximity of the products or services. Considers whether the goods or services are related or compete in the same market.
• Likelihood of bridging the gap. Examines the probability that the defendant will expand into the plaintiff’s market segment, increasing chances of consumer confusion.
• Evidence of actual confusion. Looks for instances where consumers have been confused by the similar marks, which can significantly support an infringement claim.
• Defendant’s good faith in adopting the mark. Considers whether the defendant adopted the mark with intent to deceive or benefit from the plaintiff’s reputation.
• Quality of the defendant’s product. Evaluates whether the defendant’s goods or services are of similar or inferior quality, which could affect consumer perception and likelihood of confusion.
• Sophistication of the consumers. Takes into account the level of care and attention typical consumers exercise when purchasing the goods or services, with more sophisticated consumers being less likely to be confused.

Enforcement of trademark and trade dress rights

Enforcement of trademark and trade dress rights is governed by the Lanham Act. Remedies for infringement may include:

• Injunctions. Courts may order infringers to cease using the infringing trade dress (15 U.S.C. section 1116).
• Monetary damages. The trade dress owner may recover damages for any lost profits or unjust enrichment attributable to the infringement (15 U.S.C. section 1117).
• Destruction of infringing goods. In some cases, courts may order the destruction of goods bearing the infringing trade dress (15 U.S.C. section 1117).

Just as with trademarks, trade dress owners must be vigilant in enforcing their rights to maintain protection.

In the United States, both the right of publicity and right of privacy protect an individual’s control over the use of their identity. Interestingly, the foundations for the right of publicity began through the right of privacy articulated by Samuel Warren and Supreme Court Justice Louis Brandeis in an 1890 article titled, “The Right to Privacy” (Warren & Brandeis, “The Right to Privacy”, 4 Harv. L. Rev. 193 (1890)). Today, the right of publicity focuses on the commercial exploitation of a person’s identity, while the right of privacy is concerned with protecting an individual’s personal dignity and emotional well-being.

The right of publicity allows individuals to control the commercial use of their identity, including their name, likeness, voice, signature and other distinctive characteristics. This right is primarily asserted by celebrities, athletes and other public figures whose identity has significant commercial value, though it can be asserted by any individual whose persona is misappropriated for profit.

The right of publicity is generally based in state common law and state-regulated, and its scope varies widely across jurisdictions. States like California (Cal. Civ. Code section 3344), New York and Tennessee provide strong protections, particularly for public figures. In some states, the right extends posthumously, allowing heirs to control a deceased individual’s likeness for a specified period. 

This patchwork nature of the right of publicity laws coupled with the exploitative nature of generative AI has led to growing pressure from various human artist groups for a clear federal right of publicity. The NO FAKES Act introduced in October 2023 is an attempt to create a federal floor to prevent unfair use of an individual’s voice and likeness through generative AI. 

Right of privacy

The right of privacy, on the other hand, protects individuals from unwanted intrusions into their personal life. It covers a broader range of protections against invasions of privacy, including intrusion upon seclusion, public disclosure of private facts, false light and misappropriation of identity. While there is considerable overlap with the right of publicity in the area of misappropriation, privacy rights tend to focus more on personal harm, emotional distress or damage to reputation rather than purely financial loss.

Some states like California provide specific constitutional protections for privacy invasions (e.g. California Constitution, Article I, section 1, which enshrines a right to privacy), and have enforced a stricter privacy framework through specific legislation (e.g. California Consumer Privacy Act (CCPA)). 

Key differences

While the right of publicity and right of privacy overlap, they differ in fundamental ways:

• Legal foundations. The right of publicity today stems from property law principles, granting individuals a property right in their persona. In contrast, the right of privacy is rooted in tort law, designed to protect against emotional and reputational harm.
• Remedies. The right of publicity is often enforced through commercial remedies, such as monetary damages for unauthorized commercial exploitation of a person’s identity. The right of privacy, however, usually leads to damages for emotional distress or reputational harm caused by the invasion of personal privacy.
• Scope and duration. The right of publicity can extend posthumously in certain states, as in California, while privacy rights generally expire upon an individual’s death. This means that heirs can assert a right of publicity after death, but not a right of privacy.

Enforcement and remedies

Enforcement of both the right of publicity and right of privacy typically involves filing a lawsuit when an individual’s identity or privacy has been violated without their consent. Remedies can include:

• Injunctions. Courts may order the cessation of unauthorized use of a person’s likeness or identity, or prohibit further intrusion into an individual’s private life.
• Monetary damages. Plaintiffs can recover compensatory damages for the commercial exploitation of their identity (under the right of publicity), or damages for emotional distress and reputational harm under privacy laws. In certain cases, punitive damages may also be awarded for particularly egregious invasions of privacy or misappropriation of identity.

Overview

A trade secret is a type of intellectual property that consists of confidential business information which provides a competitive advantage to its owner/holder. This information is not generally known or easily accessible to others and is subject to reasonable measures to maintain its secrecy.

To be considered a trade secret, the information must be kept confidential, and the information must have actual or potential commercial value. Coca-Cola’s recipe is a well-known example of a trade secret. While each state’s framework for protecting trade secrets is not completely identical, most states have modeled their laws after the Uniform Trade Secrets Act (UTSA) which was published in 1979.

Scope and protection of trade secrets 

Trade secret protection can extend to information such as recipes, manufacturing processes, advertising strategies and more. However, information that is generally known or is easily ascertainable by reverse engineering cannot be protected by trade secrets law. Therefore, it is imperative that businesses take reasonable measures to maintain secrecy over economically valuable information they are interested in protecting through trade secrets. Reasonable measures include, but are not limited to:

• Building access controls.
• Security cameras and guards.
• Access and security audits.
• Confidentiality policy within employee handbook and employee contracts.

Trade secret duration

Trade secret protection lasts for as long as the information remains secret and continues to provide a competitive advantage. Unlike other forms of IP, trade secrets do not expire after a fixed period. However, if the trade secret is disclosed — whether through a breach of confidentiality, reverse engineering or accidental disclosure — the protection is lost.

Thus, the duration of trade secret protection can, in theory, last indefinitely, provided that the information is kept confidential and maintains its value as a trade secret.

Trade secret infringement

Trade secret infringement usually occurs in one of two ways:

• Improper means. This occurs when an individual acquires secret information through bribery, theft or by inducing a breach of duty of secrecy, amongst other methods.
• Disclosure without consent. This generally occurs when an individual improperly discloses or uses a trade secret despite knowing or having a reason to know that the information was a trade secret.

Trade secret enforcement

Trade secrets are protected under state laws (typically through the Uniform Trade Secrets Act) and federal law (through the Defend Trade Secrets Act of 2016). Trade secret misappropriation occurs when a third party improperly acquires, discloses, or uses confidential business information.

• Civil litigation. Trade secret owners can file a lawsuit to prevent further misappropriation and to recover damages for losses resulting from the unauthorized use of the trade secret.
• Injunctions. Courts may issue injunctions to prevent further use or disclosure of the misappropriated trade secret.
• Monetary damages. Damages for trade secret misappropriation can include both the owner’s actual losses and the infringer’s unjust enrichment. Courts may also award enhanced damages and attorneys’ fees in cases of willful and malicious misappropriation.
• Seizure orders. Under the Defend Trade Secrets Act, a court may issue a seizure order to prevent the dissemination of trade secrets in extraordinary circumstances, such as when there is a risk of the trade secret being transported abroad.

Moral rights arise from the idea that human personality is embedded in each human created work which in and of itself is deserving of protection. Under this view, works are viewed as an extension of the author. This is as opposed to the utilitarian underpinnings of U.S. copyright law which recognizes economic rights to incentivize creators to create since that will result in more works being available to the public. Unlike economic rights, moral rights cannot be transferred to another party, though they may be waived in the U.S. Therefore, assignments of moral rights are void and ineffective as a matter of law. The United States recognizes moral rights primarily in the context of pictorial, graphic and sculptural works under the Visual Artists Rights Act of 1990 (VARA) (17 U.S.C. section 106A).

Under VARA, artists possess the right to claim authorship of their work and to prevent the intentional distortion, mutilation, or modification of their work that would be prejudicial to their honor or reputation. 

Scope and limitations

The scope of moral rights under U.S. law is generally narrower than in other countries. In continental Europe, moral rights are inherently powerful, inalienable and cannot be waived, whereas the already limited moral rights provided under VARA in the U.S. are waivable (17 U.S.C. 106(A)(e)(1): “[moral rights] may not be transferred, but those rights may be waived if the author expressly agrees to such waiver in a written instrument signed by the author”). Although the U.S. follows the minimum standards set forth under the Berne Convention by covering the moral rights of paternity and integrity, certain other nations go further by providing the right of association or the right to withdraw permissions related to use. In the U.S., moral rights under VARA apply only to visual art and last for the duration of the artist’s life. However, the rights do not extend to works made for hire, and they may not prevent all types of modifications, particularly those that occur during restoration, conservation, or relocation of the work.

Mask works

Mask works are a specialized category of IP protection designed for the semiconductor industry. The Semiconductor Chip Protection Act of 1984 (SCPA) grants exclusive rights to creators of mask works, which are the three-dimensional layouts of semiconductor chips. These designs are essential in manufacturing microchips and other semiconductor devices, which are integral to modern electronics.

Obtaining mask work protection. To obtain protection for a mask work, the design must be registered with the U.S. Copyright Office within two years of the first commercial exploitation of the semiconductor chip. Protection lasts for a period of ten years, during which time the creator has exclusive rights to reproduce, distribute, and import the mask work.

Mask work duration. The duration of protection for mask works under the Semiconductor Chip Protection Act is 10 years from the date of registration or from the date of the first commercial exploitation, whichever occurs first. After the expiration of the 10-year term, the layout design enters the public domain and can be freely used by others.

Scope of protection. Mask work protection is limited in scope. It does not extend to the functionality of the semiconductor device, only to the layout design. Additionally, certain exceptions exist, such as reverse engineering for the purpose of education, research or evaluation, which are permitted under the law.

Remedies for mask work infringement. The SCPA provides remedies for unauthorized reproduction or distribution of a registered mask work, including:

• Injunctions. Courts may prevent further infringement through injunctions.
• Monetary damages. The mask work owner may recover damages for unauthorized uses, including actual damages or statutory damages as provided under the SCPA.
• Seizure and destruction. Courts may order the seizure and destruction of infringing products.

Licensing

Overview. Licensing is a legal and contractual arrangement whereby the owner of intellectual property (IP) grants permission to another party to use that IP in exchange for some consideration, usually through royalties or lump-sum payments. Licensing is a crucial strategy for IP holders to monetize their intellectual assets without relinquishing ownership. It also allows businesses to expand the use of their innovations, brands or creative works while controlling how those assets are used by others. Licensing applies across all forms of IP, including patents, copyrights, trademarks, trade secrets and even rights of publicity.

Licenses are generally governed by contract law, and the specific terms of a licensing agreement can vary widely depending on the nature of the intellectual property and the relationship between the licensor and licensee. Licensing can provide the flexibility to customize IP use to specific needs, including geographic, temporal and commercial limitations.

Types of licensing. The scope of rights granted in a licensing agreement varies depending on the parties’ intentions and the specific intellectual property involved. The following are the most common types of licensing agreements:

• Exclusive license. An exclusive license grants the licensee the sole right to use the IP in a specified territory or field of use. Under an exclusive license, the licensor typically agrees not to use the IP themselves and not to grant licenses to any other parties. This type of license is common in industries where market exclusivity is critical, such as pharmaceuticals or technology.
• Non-exclusive license. In a non-exclusive license, the licensor retains the right to use the IP and may grant similar licenses to multiple licensees. This is often used when broad dissemination of the IP is desirable, such as in software or franchising.
• Sole license. A sole license allows the licensee to use the IP while the licensor retains the right to use the IP themselves but agrees not to license it to any other parties. This type of license offers a balance between exclusivity and flexibility.
• Cross-licensing. In a cross-licensing arrangement, two parties grant each other licenses to their respective IP. This is common in technology sectors where different companies rely on each other’s patents to develop new products, such as in the telecommunications or automotive industries. It’s also common in consumer products in the context of brand collaborations.
• Sub-licensing. A sub-license occurs when a licensee, who has been granted the right to use IP, further licenses those rights to a third party. Whether a sub-license is permissible depends on the terms of the original licensing agreement.

Key provisions in licensing agreements. A comprehensive licensing agreement should include several critical provisions that address the rights and obligations of both the licensor and the licensee:

• Scope of license. This defines the exact rights being granted, including the geographic area, duration, field of use and whether the license is exclusive or non-exclusive. The scope can also specify whether the licensee has the right to modify or create derivative works, particularly in copyright or patent licenses.
• Compensation. Licensing agreements typically specify the form and frequency of payments. This may involve a lump-sum payment, ongoing royalties based on a percentage of sales, or milestone payments tied to specific achievements, such as regulatory approval or market entry.
• Quality control. Particularly in trademark licensing, the licensor must ensure that the quality of goods or services associated with the licensed mark is maintained, policed and enforced. Failure to include and enforce quality control provisions can result in the abandonment of trademark rights.
• Confidentiality. Many licenses, especially those involving trade secrets or proprietary information, contain confidentiality clauses that prevent the licensee from disclosing or improperly using the licensed IP. This is critical in protecting the competitive value of the trade secret or proprietary information.
• Indemnification. Licensors may include indemnification clauses to protect themselves from legal liability arising out of the licensee’s use of the IP. This is particularly important if the licensee’s use of the IP could expose the licensor to third-party claims, such as patent infringement.
• Termination and renewal. A licensing agreement should clearly outline the conditions under which the license can be terminated, such as breach of contract or failure to meet performance benchmarks. The agreement may also include provisions for automatic renewal or an option to renegotiate terms at the end of the license term.

Licensing in specific IP contexts. Each type of intellectual property has unique considerations when it comes to licensing:

• Patent licensing. Patent licenses are prevalent in technology-driven industries like pharmaceuticals, software and engineering. Patent pools — where multiple patent holders bundle their patents for licensing — and standard-essential patents (SEPs) play a significant role in industries such as telecommunications, where compliance with technical standards is necessary.
• Copyright licensing. Copyright licenses are common in publishing, music, film and software industries. In addition to reproduction and distribution rights, copyright licenses may cover derivative works, public performance and synchronization rights (the use of music in visual media). Copyright licensing must be carefully managed to avoid infringement of both the original work and any derivative works.
• Trademark licensing. Trademark licenses are commonly used in franchising, brand extensions and merchandising. The licensor must exercise strict quality control over the use of the trademark to avoid weakening its rights. Licensing without adequate oversight risks invalidating the trademark.
• Trade secret licensing. Trade secrets are licensed under strict confidentiality provisions. The licensor must ensure that the licensee implements adequate security measures to protect the trade secret from being disclosed or misappropriated. Trade secret licenses often include non-compete and non-disclosure agreements to further protect the secret’s value.
• Right of publicity/privacy licensing. Celebrities and public figures frequently license their likeness, name or signature for use in advertising, merchandising and endorsement deals. These licenses often include strict approval and usage clauses to maintain control over the image and identity of the person being licensed.

Benefits and risks of licensing. Licensing offers numerous benefits to both licensors and licensees. For licensors, it provides a way to monetize IP without direct commercialization, allowing them to expand into new markets or industries. For licensees, licensing offers access to valuable IP, reducing the time and cost associated with developing new technologies or products from scratch.

However, licensing also carries risks. For licensors, these include the potential loss of control over the IP, particularly if quality control measures are not enforced. There is also the risk of creating a competitor if the licensee develops derivative works or improvements. For licensees, the primary risks are the potential for disputes over the scope of the license or the adequacy of the IP’s legal protection, such as if a licensed patent is later invalidated.

Administrative and alternative enforcement mechanisms

Enforcement of intellectual property (IP) rights is essential to protect the value of those rights and prevent unauthorized use or exploitation by third parties. In the United States, IP rights can be enforced through a combination of civil litigation, administrative actions and, in some cases, criminal prosecution. The choice of enforcement method depends on the type of intellectual property and the nature of the infringement. Successful enforcement requires a clear understanding of both the substantive IP laws and the procedural rules governing the legal actions.

Customs enforcement. IP owners can register their trademarks and copyrights with U.S. Customs and Border Protection (CBP), which will help prevent the importation of counterfeit goods. CBP has the authority to seize infringing goods at the border and may also collaborate with other federal agencies to investigate and prosecute large-scale counterfeiting operations.

Domain name disputes. Trademark owners may enforce their rights through the Uniform Domain-Name Dispute-Resolution Policy (UDRP), which provides a streamlined process for resolving disputes over domain names that infringe on trademarks. This is particularly important in cases where cybersquatters register domain names that are confusingly similar to established brands.

Alternative dispute resolution (ADR). Many IP disputes can be resolved through ADR methods, such as arbitration or mediation, which offer a faster and often less expensive alternative to litigation. These methods are commonly used in commercial agreements that involve IP licenses, joint ventures or cross-border transactions.

IP disputes process

Overview. Intellectual property disputes can arise in various contexts, including claims of infringement, invalidity or misappropriation. The resolution of IP disputes often involves complex legal and factual issues, requiring specialized knowledge of both the applicable law and the underlying technology, business practices or creative works at issue. The process for resolving these disputes depends on the type of IP involved and may occur through civil litigation, administrative proceedings, alternative dispute resolution (ADR) or a combination of these approaches.

Civil litigation. The most common method for resolving IP disputes is through civil litigation in federal court. Each type of intellectual property is governed by a different statutory framework, which dictates the applicable rules and procedures for disputes:

• Patent disputes. Patent infringement lawsuits are typically filed in federal district courts, as federal law governs patent rights. Parties may also seek declaratory judgments on issues such as patent validity or non-infringement. Patent cases often involve significant discovery and expert testimony, particularly on technical matters such as claim construction and infringement analysis. Cases can be further complicated by counterclaims for patent invalidity based on prior art or other grounds.
• Copyright disputes. Copyright infringement cases are also filed in federal district courts. The litigation process usually begins with the copyright owner filing a complaint alleging unauthorized use of the copyrighted work. Defendants may raise various defenses, such as fair use, independent creation or lack of access. Copyright owners who have registered their works may also seek statutory damages and attorneys’ fees, providing a strong incentive to register works with the U.S. Copyright Office.
• Trademark disputes. Trademark infringement, dilution and unfair competition cases are primarily litigated in federal courts. Trademark disputes may also include claims under state law, particularly in cases involving common law trademark rights. The central issue in many trademark disputes is whether the defendant’s use of a mark creates a likelihood of consumer confusion. Courts may also address issues of trademark dilution, particularly when the case involves famous marks.
• Trade secret disputes. Trade secret misappropriation claims are governed by both state law (under the Uniform Trade Secrets Act) and federal law (under the Defend Trade Secrets Act). Litigants typically file trade secret cases in federal court if the case involves interstate commerce or if federal trade secret law is invoked. Courts must determine whether the information at issue qualifies as a trade secret, whether it was misappropriated through improper means, and whether the plaintiff has taken reasonable steps to maintain the secrecy of the information.

Stages of civil litigation. IP litigation generally follows a similar process across different types of IP disputes, which includes the following stages:

• Pleading. The process begins with the filing of a complaint by the plaintiff, outlining the claims of infringement, misappropriation or other violations of IP rights. The defendant then files an answer, raising any defenses or counterclaims.
• Discovery. During discovery, the parties exchange evidence and information relevant to the claims and defenses. Discovery may involve written questions (interrogatories), document requests, depositions, and expert reports. Given the technical nature of many IP cases, discovery is often extensive and costly.
• Pretrial motions. Before trial, parties may file various motions, such as motions to dismiss, motions for summary judgment, or motions to exclude certain evidence. These motions allow the court to rule on legal issues that may dispose of the case or narrow the issues for trial.
• Trial. If the case proceeds to trial, it may be decided by a judge or a jury, depending on the issues and the parties’ preferences. Patent cases, for example, often involve a “Markman hearing” to determine the meaning of disputed patent claims, a crucial issue that can significantly impact the outcome of the case.
• Appeal. After trial, either party may appeal the court’s decision to a higher court. In patent cases, appeals are typically heard by the U.S. Court of Appeals for the Federal Circuit, while other IP appeals may be heard by the regional circuit courts of appeal.

Administrative proceedings

In some cases, IP disputes are resolved through administrative proceedings rather than federal court litigation. These proceedings are typically faster and less costly than civil litigation, but they often have more limited remedies.

• Patent Trial and Appeal Board (PTAB). The PTAB is an administrative tribunal within the U.S. Patent and Trademark Office (USPTO) that hears challenges to the validity of issued patents through procedures such as inter partes review (IPR) and post-grant review (PGR). These proceedings allow third parties to challenge a patent’s validity based on prior art or other grounds without resorting to full litigation in federal court.
• Trademark Trial and Appeal Board (TTAB). The TTAB, also part of the USPTO, adjudicates disputes involving trademark registration, including opposition proceedings (where a third party challenges a pending trademark application) and cancellation proceedings (where a third party seeks to cancel an existing trademark registration). TTAB decisions are limited to the registrability of the mark and do not determine broader issues of trademark infringement or damages.
• International Trade Commission (ITC). The ITC hears cases involving the importation of products that allegedly infringe U.S. patents, trademarks or copyrights. The ITC can issue exclusion orders barring the importation of infringing goods into the U.S. ITC proceedings are particularly important in industries like consumer electronics and pharmaceuticals, where infringing products are often manufactured overseas.

Alternative Dispute Resolution (ADR). Many IP disputes are resolved through alternative dispute resolution (ADR) methods such as arbitration and mediation. These methods offer a less formal and potentially less expensive way to resolve disputes without going through the full litigation process.

• Arbitration. In arbitration, the parties agree to submit their dispute to one or more arbitrators who render a binding decision. Arbitration is often faster than litigation, and the proceedings are private. Many commercial contracts involving IP, such as licensing agreements or joint ventures, include arbitration clauses requiring that disputes be resolved through arbitration rather than litigation.
• Mediation. Mediation involves a neutral third party who helps the disputing parties negotiate a mutually acceptable resolution. Mediation is non-binding, meaning the mediator does not issue a decision but instead facilitates discussion between the parties. Mediation can be particularly effective in cases where the parties have an ongoing business relationship that they wish to preserve.

International IP disputes. Given the global nature of commerce, many IP disputes have cross-border elements, involving parties from different countries or IP rights that extend across national borders. International IP disputes are often governed by treaties such as the Paris Convention, the Berne Convention, and the TRIPS Agreement, as well as national laws.

Disputes involving international IP rights may be resolved through litigation in foreign courts, international arbitration, or proceedings before international bodies such as the World Intellectual Property Organization (WIPO). In some cases, international enforcement of IP rights requires coordination between national IP offices and customs authorities to prevent the import or export of infringing goods.

IP assignments

An IP assignment is a legal transfer of ownership of intellectual property from one party (the assignor) to another (the assignee). Unlike a license, which grants limited rights to use the IP, an assignment involves the complete transfer of ownership, including all rights associated with the IP. Assignments are common in various contexts, such as business transactions (e.g. mergers and acquisitions), employment agreements and settlement of IP disputes.

Key provisions in IP assignment agreements. An IP assignment agreement typically includes several key provisions:

• Identification of the IP. The agreement must clearly identify the intellectual property being assigned, including any related rights, such as future improvements or derivative works.
• Consideration. The agreement should specify the consideration (i.e., payment or other compensation) provided in exchange for the assignment. This could be a lump-sum payment, ongoing royalties, or other forms of compensation.
• Warranties and representations. The assignor typically warrants that they own the IP and have the right to assign it. The assignor may also warrant that the IP does not infringe on any third-party rights and that no other encumbrances exist on the IP.
• Further assurances. Many assignment agreements include provisions requiring the assignor to take further actions, such as executing additional documents, to ensure that the transfer of rights is properly completed.

Recording IP assignments. In many cases, it is essential to record the assignment with the relevant government authorities to ensure that the transfer of ownership is recognized and enforceable. For example, patent and trademark assignments should be recorded with the U.S. Patent and Trademark Office (USPTO), and copyright assignments can be recorded with the U.S. Copyright Office. Failure to record an assignment may affect the assignee’s rights, particularly if the assignor transfers the same IP to a third party without notice. It’s important to note that the assignment of intent-to-use trademark applications are generally not permitted to be assigned unless as part of a business sale in which case the assignee is a successor of the continuously operating/existing business.

Works for hire

In the U.S., the concept of “work for hire” applies to certain works created by employees or under a contractual agreement. Under copyright law, the employer or commissioning party is considered the legal author and owner of the work, rather than the individual who created it.

Categories of works for hire. There are two main categories of works for hire:

• Employee-created works. If an employee creates a work within the scope of their employment, the work automatically qualifies as a work for hire, and the employer owns the copyright.
• Commissioned works. For certain types of commissioned works, such as a contribution to a collective work or a specially ordered work for use in an audiovisual production, the parties can agree in writing that the work is a work for hire. Without such an agreement, the individual creator retains ownership unless the copyright is assigned.

Legal implications. The work-for-hire doctrine has significant legal implications, especially in creative industries like film, advertising, and software development. Employers and companies that commission works must ensure that appropriate agreements are in place to clarify ownership. Failing to designate a work as a work for hire could result in the individual creator retaining ownership of the copyright, potentially complicating the commercialization or distribution of the work.

Non-compete agreements. Non-compete agreements are contracts that restrict an individual’s ability to work for a competitor or start a competing business for a specified period of time after leaving their current employment. These agreements are commonly used to protect trade secrets, confidential information and other IP assets from being exploited by competitors.

Enforceability of non-compete agreements. The enforceability of non-compete agreements has historically varied by state, but recent federal developments have introduced uncertainty into the future of these agreements across the U.S. Some states, such as California, have long prohibited non-compete agreements, except in limited circumstances, while others enforce them if they are reasonable in scope, duration, and geographic reach. Courts typically use a balancing test to determine the enforceability of a non-compete, considering factors such as:

• Legitimate business interests. Non-compete agreements are typically enforceable only to the extent necessary to protect legitimate business interests, such as trade secrets, proprietary information, or customer relationships.
• Reasonableness. The agreement must be reasonable in terms of time, geographic scope, and the types of activities restricted. For example, a non-compete that bars an employee from working in a specific industry for an overly long period or across an overly broad area is likely to be found unenforceable.
• Public policy. Courts also consider whether enforcing a non-compete would contravene public policy, particularly if it excessively restricts an individual’s ability to earn a livelihood.

Recent developments and the federal ban on non-competes. In early 2023, the Federal Trade Commission (FTC) proposed a rule that would ban the use of non-compete agreements across the country, arguing that such agreements stifle competition and limit workers’ economic opportunities. The proposed ban was met with considerable support from worker advocacy groups, as well as strong opposition from businesses and industry groups concerned about the protection of confidential information and trade secrets.

However, a federal court overturned the ban in 2024, stating that the FTC exceeded its authority in attempting to regulate non-compete agreements through administrative rulemaking. This decision has left the future of federal regulation in limbo, with the case likely to progress through appeals, and potentially reaching the U.S. Supreme Court. As the legal battles continue, the outcome remains uncertain, and businesses should monitor this issue closely.

The uncertain future of federal non-compete bans. While the federal ban has been overturned for now, the debate over non-compete agreements is far from settled. The FTC has signaled its intention to challenge the court’s ruling, and lawmakers in Congress may attempt to pass federal legislation that limits or regulates the use of non-competes. The outcome of these efforts could lead to a major shift in how non-competes are treated nationwide, particularly if the Supreme Court weighs in or Congress passes a new law.

Until the dust settles, non-compete agreements remain governed by a patchwork of state laws. Employers and employees alike should stay informed about both state-specific laws and potential federal developments, as the legal landscape surrounding non-competes may soon undergo significant changes.

Non-competes in IP-related industries. In industries that rely heavily on intellectual property, such as technology, biotechnology and pharmaceuticals, non-compete agreements are commonly used to prevent the loss of competitive advantage through the transfer of confidential knowledge or IP to a competitor. However, companies should be cautious in drafting these agreements, ensuring they comply with applicable state laws and avoid being overly restrictive.