Frequently Asked Questions

We Seek to

Care enough to Speak Honestly;

Be Aware enough to Speak Kindly; and,

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for Smart Clients®

About KeganLaw

Since 1940, Kegan & Kegan, Ltd. has provided its clients personalized strategic advice, preventative guidance, and when needed crisis counseling and defense.

We identify, develop, and protect intangible business assets—trademarks, copyrights, patents, trade secrets, contracts, websites—and counsel other professionals on legal issues.

KeganLaw Pages

Notice—Laws Change

The law is constantly changing. Moreover, no general discussion can incorporate all the specific facts of your particular situation. Consult an attorney for particular legal questions.

Frequently Asked Questions (FAQ)

quently Asked Questions--

1.Intellectual property

6.Ownership and Contract

7.Copyright

8.Academia

9.Business Startup

10.Kegan & Kegan, Ltd.

11.Reliance; Notice--Laws Change

Intellectual Property

Q. How do trademarks, copyrights, and patents differ?

A. Trademarks indicate the source of a product or service. Copyrights bar unauthorized copying or distributing of original text, graphics, sounds, sculpture, and other works fixed in a tangible medium of expression. Patents bar making, using, or selling nonobvious inventions. A patent grants a monopoly for a limited time, 20 years from application date, in exchange for the inventor making public the best mode of the invention. Copyrights now last for about a century. Trademarks may endure without limit, as long as the mark distinctively indicates a single source and does not become a generic descriptor. Original mask works , the typology of a semiconductor chip, may be protected similar to copyright but for a shorter term of 10 years. A single product may be protected by patent, trademark, copyright, mask work, and trade secret.

Q. Do I need to register my trademarks, copyrights, or patents?

A. Patents are available only by application. Copyright is created by the act of authorship, but enforcement of copyright practically requires prompt registration. Trademark rights in the USA are based on use of the trademark; federal registration provides additional advantages.

Q. What deadlines may limit my rights?

A. Many. Patent applications in the USA are barred more than one year after first commercialization or description of the invention in a printed publication; some foreign countries bar patents after any commercialization or public description. USA patents are changing 15 March 2012 from first-to-invent to a first-to-file system, so prompt application filing becomes critical. Many countries grant trademark rights to the first person to apply, independent of actual use. Litigation to enforce rights is governed by diverse state and federal statutes of limitation.

International

Q. Can I safely use in the USA intellectual property from another country?

A. Maybe. Foreign patents have no effect in the USA. However, an issued foreign patent may indicate a pending USA patent application, which may or may not result in a granted USA patent. Foreign trademark registrations have few rights in the USA, but "famous" trademarks do have additional rights.

Copyright is generally not territorially limited. The line between infringement and fair use is defined differently in different countries. Prudence suggests before any major investment, gather relevant facts and consult with competent intellectual property counsel. Often discreet inquiry to the owner of foreign rights is appropriate--to specify the exact rights owner and potential license terms.

Q. Do my USA rights protect me in foreign countries?

A. Trademarks and patents are territorial. Generally a USA trademark or patent has no effect in another country. If you wish trademark or patent rights in other countries, separate applications must be filed.

Some unregistered but "famous" trademarks gain limited additional rights. Copyrights generally are recognized internationally, but the particular rights recognized may differ. The United States offers copyright registration. Many foreign countries have no copyright register; rights must be fully proved at trial against an infringer.

Patent

Q. What does "patent pending" mean.

A. In the United States, an inventor may give public notice that an application for a patent has been filed with the US Patent and Trademark Office. If the patent is granted, then patent rights generally begin on the date of patent issue and last 20 years from filing, if patent maintenance fees are paid 4, 8, and 12 years thereafter. Not all patent applications are granted. A patent application by itself grants no rights. However, there is risk in marketing a product covered by a patent application, because if a patent is granted, immediately thereafter any marketing of the invention must be stopped or licensed. It is illegal to claim a patent is pending when a good faith patent application has not been filed.

Q. Can I find out what is claimed in a pending patent application?

A. Maybe. Some foreign patent applications are published about 18 months after filing. Currently in the USA, many patent applications are published about 18 months after filing; some non-published applications remain secret unless and until a patent is granted. Granted patents and their file histories become public documents. Rejected patent applications remain secret, accessible only to the inventor and authorized agents. In the United States, copyright and trademark files are public; however older files may be destroyed.

Trademark

Q. My company is incorporated, why don't I necessarily have full trademark protection?

A. Incorporation, partnership, and other business and nonprofit organization status is governed by state law. In most states, a corporate name will be granted if it is "distinguishable" from other corporate names on that state's corporate register, generally ignoring "company," "incorporated," "corporation," and their abbreviations. The test for trademark infringement is whether two terms are likely to create confusion, mistake, or deception. Two terms may be distinguishable (both available for corporate names) but still likely to confuse (only one available as a trademark). Moreover, a secretary of state generally does not compare a proposed new corporate name against the corporate names of the other states, nor against state and federally registered trademarks, nor against unregistered trademarks.

Q. Why consider a state trademark registration?

A. Federal trademark registration requires use of the trademark in commerce regulated by Congress--interstate, foreign, with the Native American tribes, or other regulated commerce. An intrastate business may wish to provide statewide public notice of its trademark. If a business wants prompt government recognition of its trademark, state registrations may be available within two weeks; federal registrations generally take at least a year. A new business without tangible assets--as is common in the computer industry--may wish government documents recognizing its intangible assets--trademarks and copyrights. Other tactical considerations may suggest state trademark registration.

Q. Do I need a formal trademark search?

A. Need depends on your knowledge and risk tolerance. There is no legal requirement to search for similar trademarks before adopting a trademark. However, if you use a trademark that is confusingly similar to an earlier trademark, you may have to disgorge your wrongful profits, compensate the senior trademark owner for lost profits, pay the costs of the dispute, and pay for your own transition costs--stationary, signage, packaging, directories. Moreover, you lose the goodwill developed in your abandoned trademark. Some lists of trademarks are available for free on the Internet. Unless you are very familiar with your industry and are willing to risk trademark infringement, a professional search and trademark attorney's opinion are recommended.

Internet

Q. How are Internet domain names protected?

A. The Internet domain name system has been in some flux. Currently there are six major top level domains allocated to the United States: .com for commercial, .org for organizational, .edu for education, .net for network, .gov for governmental, and .mil for military; several other top level domains have been introduced. Second level domain names are granted if they differ from previously registered domain names, even if they are confusingly similar. Domains of mark.com, marks.com, themark.com, the-mark.com, mark.net, and mark.org can all coexist. A federal trademark registration for your second level domain name (eg, mark), provides significant advantages in the current Internet domain dispute resolution procedure. Domain names are also available from registrars in other countries, which have different top level domains--for example, mark.ca in Canada, .eu for the European Union.

Q. Can anything be done about bad practices on the Internet?

A. Maybe. The Internet has become a global community; in most communities some people and companies violate common norms. Moreover, laws and norms differ across nations, while the Internet generally ignores national boundaries. Some violations on the Internet can be quickly and inexpensively removed; others take more time and effort; some, like mosquitos, and be protected against but likely not eliminated. Much depends on specific facts and how well you have anticipated problems and already obtained appropriate protection: issued intellectual property registrations, on- and off-site backups of website content, Internet domain registration in your company’s name—not your web designer, passwords known by two trusted key people, timely Internet and intellectual property audits.

Ownership and Contract

Q. Do I own what I create?

A. Sometimes. Your employer likely owns your creations on company time, using company equipment, related to your job duties. You likely own your creations made on your own time, on your own equipment, unrelated to your job duties. This general balance may be changed by an employment agreement.

Q. What is a "contract" and must it be in writing?

A. A contract is an enforceable promise, and it need not be in writing. Oral contracts are enforceable, although proving what the agreement was is more difficult without a signed writing. The usage in your local trade and the course of business dealing between the parties can add implicit terms to explicit contracts. Some contracts must be in writing to be enforceable--typically agreements not to be performed within one year, concerning real estate, or for the sale of good for more than $500.

Q. Can a foreign, minor college student agree to write software for a USA company?

A. Yes, although to ensure ownership rights are appropriately protected, the student's age, nationality, location while working, and parental marital status need to be determined. If the student is a minor, parental or guardian confirmation should be obtained. If the parents are divorced, acknowledgment by both parents may be prudent. Agreements by minors may not be enforceable without parental confirmation; competency to contract is generally determined in the USA by state law. Copyright ownership is determined by a complex interaction among nationality of the author, location where the creation was made, nation of first publication, date of creation, date of first publication, dates of relevant international treaties, competency of ownership transfers, and date and place of rights enforcement.

Q. What does copyright protect?

A. A copyright owner has exclusive rights to reproduce, prepare derivative works, distribute, publicly perform, and publicly display the copyrighted work, and for sound recordings to publicly perform the work by a digital audio transmission. There are limited exceptions for compulsory licenses, juke boxes, libraries, broadcast, cable, and satellite transmissions.

Q. What is "Fair Use" of another's property?

A. You can generally use another's intellectual property with their permission. Unlicensed use may be lawful under particular factual conditions. Another's trademark may be used for comparative advertising in the USA if it informs but does not create confusion. Europe has stricter laws on comparative advertising than the USA. There is no "fair use" of a patented invention, but a patent may be challenged as invalid. Brief selections from copyrighted works may sometimes be used without license, especially for spontaneous educational and political purposes. Fair use evaluations require trained copyright expertise. There is no magic number of words or musical notes than automatically grant fair use.

Q. Is it fair copyright use if I credit the source?

A. No. Academic norms and legal rights are not the same. Academic plagiarism is using another's work without attribution. Legally, there is no copyright infringement in using without attribution public domain writings before the twentieth century. Unauthorized copying or paraphrasing copyrighted works is an infringement, even if you fully cite the author and source.

Academia

Q. Who owns what rights in academia (universities, colleges, high schools, primary schools).

A. Many colleges and universities now have written policies for determining patent rights of faculty. Government and industrial research grants often specify ownership and control for the faculty and employed researchers. However, few institutions have established policies for copyrights, or for students and staff. Ownership, clear title, and consequently commercialization become especially complex when academic teams create intellectual property. Moreover, traditional academic practices, generally granting faculty full copyright rights for paper scholarly publications, are being questioned when applied to potentially profitable areas of multimedia, computer software, and distance learning.

Business Startup

Q. How do I start my business right?

A. Clarify your goals, priorities, resources, limitations, risk preferences, time targets, personal and corporate style. Anticipate likely problems, obtain written agreement among all relevant stakeholders. Think of the extremes: what if you soon generate huge profits; what if your partners soon generate huge debts; what if it takes a long time for your breakthrough success. Consider tax, insurance, estate, and regulatory perspectives together with the classic management questions: planning, organization, communication, control, decisionmaking, technology, context, culture, and change. Early legal and tax advice can efficiently save much time and trouble later. Know why you're in you're business; have a simple sentence explaining why customers should prefer you to competitors.

Q. Is succession planning important so early in my business?

A. Yes. A stitch in time saves nine is as true in the computer age as it was for Benjamin Franklin. Most business people are forced to deal with succession planning sometime. Planning intellectual property asset ownership and licensing and monitoring key employee development can avoid expensive, rushed changes.

Q. Does the size of a law firm determine the quality of legal services?

A. No. Many factors influence quality. Probably most important is your comfort with the fit between the firm's culture and your personal and business priorities. Is the firm's focus on preventing and resolving disputes or trying to "win" no matter the facts, law, and cost? Does the firm use simple English you can understand or complex legalese? Does the firm have longstanding experience helping clients similar to your industry and growth phase? Are the professionals working on your matters trained in the specialties needed or are they new arrivals attempting to learn at your expense? Has the firm integrated computerization over the past decades, increasing both efficiency and client responsiveness? Does the firm offer you options to fit your time, risk, and budget priorities?

Q. Do all legal tasks require an attorney?

A. No. Just as you can take an aspirin for your own headache, but would be ill advised to do your own appendectomy, some legal tasks can be done by a client directly. For example, the third of a routine series of copyright or state trademark applications might be directly filed with the government office. Patent application costs may be greatly reduced when the inventor drafts a clear, comprehensive description of the invention and articulates its superiority over alternatives. However, matters in which you invest a lot or for which you expect disputes generally benefit from early legal review.

Kegan & Kegan, Ltd.

Q. How are GreenLight Software, Elan Associates, MacGuide, and Kegan & Kegan, Ltd. related?

A. For over a half-century, Kegan & Kegan, Ltd. continues to provide counsel concentrated on intellectual property (trademarks, copyrights, patents, trade secrets), computer software, and the Internet. Utilizing state of the art computer techniques, Daniel Kegan developed firm management software, now marketed by GreenLight Software. GreenLight's Client Portrait received the first US copyright registration for iconic, non-hierarchical programming; Cudgel was also granted a 17-claim patent by the United States Patent and Trademark Office. The MacGuide family of publications provides information and support for business and home computer users, from neophytes to power users. Elan Associates provides organizational consulting activities and the MoneyLab seminars. See the Web at <www.keganlaw.com>.

Q. Can I rely on these FAQ/Q&A's to fully answer my legal questions?

A. No. Only general principles are presented here. Your particular situation has unique facts and may involve your particular state laws. Moreover, a solution should reflect your personal preferences for profit, risk, time orientation, dispute avoidance, interaction with other priorities, style, and other matters. Legal problems should be discussed with an attorney.

Notice: Laws Change

The law is constantly changing. Moreover, no general discussion can incorporate all the specific facts of your particular situation. For particular legal questions, consult an attorney. For questions regarding this Clipper, consult Daniel Kegan.