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By Joel I. Rosenblatt, Attorney at Law
Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jirosenblatt@earthlink.net
The Right and Left Brains of Intellectual Property
I was reminded recently that intellectual property is not restricted to the ordered and logical set of inventionsof inventions, writings and discoveries, associated with “left brain,” thinking. There exists another side, found in the “right side,” of the brain, emphasizing the technical less and the sensual and artistic more. It is the world of designs and is found in the separate protections of patent, trademark, and copyright. My reminder came when a client asked if he could patent a small carving that he thought useful as a key chain. As the carving was a solid inanimate object, incapable of any function, a utility patent for system or method, was ruled out. However, there was the possibility of a design patent, to protect the appearance of the carving and although it would not offer the protections of functionality offered by a utility patent, it was not as expensive to file or prosecute.
Design patents are examined in the U.S. Patent Office, just like the heavy duty utility version. For the curious, examples of design patents may be viewed on line at the USPTO.GOV web site The best way is to see some examples is to type in “D11/200" as a US Classification in the patent search engine. A list of about 160 designs for fasteners and buckles, will appear. To qualify as a patentable design, it must be the visual and ornamental appearance of a manufactured article. In the case of our carving, it must first be something more than a pure work of art. The design may be in the shape of the manufactured article or in the surface ornamentation, and must be inseparable from the manufactured article and cannot exist alone. Our carving satisfies this requirement by being a key chain, a suitable article of manufacture, with the design being the shape, and surface appearance of, the key chain.
While a design patent application is as relatively simple as preparing a trademark or copyright application, it can only be filed and prosecuted by a registered patent attorney, or by the design inventor as a pro se. The parts are the preamble, with the design title, name of the designer applicant, and a brief description of the nature and intended use of the article in which the design is embodied, for example, “Key Chain.” The description of the design is the drawings which must be in a sufficient number of views to be a complete disclosure of the claimed design. The single claim allowed is to “The ornamental design for (the article which embodies the design or to which it is applied) as shown.” That means the claim is to what is shown in the drawings and nothing more. The design patent term is fourteen years from the date of grant compared to twenty years from the date of filing for a utility patent.
The design patent would be recommended to protect an investment in the shaping or surface decoration of a manufactured article, and that would be commercially attractive to a competitor.
Copyright, another branch of intellectual property, offers a variety of design protections, in addition to the basic copyright protection given to expressions of fine art. For example, who would have imaged the copyright law would protect original designs of vessel hulls. The law grants an owner of an original vessel hull design certain exclusive rights provided that application for registration of the design with the Copyright Office is made within two years of the design being made public. However the law is strictly commercial in nature as protection is afforded only to vessel hull designs embodied in actual vessel hulls that are publicly exhibited, publicly distributed, or offered for sale or sold to the public, The design is protected for ten years from the date of registration or the date the design is first made public. A design patent on the same design, terminates the copyright protection.
An “architectural work” is another form of design expressly protected under the Copyright Act. An architectural work is the design of a building when in the tangible form of a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features. Standard features are generally excluded anyway under copyright law as below the standard of originality.
A last word before leaving copyright is the special treatment given to a “work of visual art.” It is easier to say what it is not than what it is. It is not any work, made for mass production but is limited to artistic works limited to single exhibition copies or limited editions of 200 or less. Once established as a work of visual art, only the author may claim attribution and if it has attained national significance, it may not be destroyed or mutilated without permission. Imagine a work of fine art, embedded in a small building the Trump enterprise wants removed for a new megaplex.
Finally we have trademarks and service marks. As we all know, a mark serves to identify the products or services sold under the mark, as coming from the same source. In practical terms, that means the same juristic entity (legal shorthand and lawyers may skip this part, for an individual, partnership or any limited liability company, that can sue or be sued), is holding itself out to the consumers in the relevant market as responsible for the quality of the goods or services. It’s intended as a consumer benefit to identify any item of clothing, for example, purchased under the “Ralph Lauren,” mark, has the same quality.
At one time, trademarks were created as artistic eye catching design. Old Dutch cleanse, comes to mind as one mark relegated to the shelf and be “scrubbed, not worn.” Sorry for the parody Mr. Bond. However, with the expansion of “designer” wear, the labels themselves have become attractive designs, sought after as attractive decorations to, or as part of, the clothing. The “design,” idea even has extended itself to the appearance of sets of clothing articles, for example an exercise set for gym or running use, or clothing for snow boarding. Examples of sets of clothing serving as design marks are the registrations of the uniforms of professional football and other sports teams. However protection of a design under the trademark law will not protect its non trademark use.
Most right brain creative works are fine art, literature, and music, which have always been protected under copyright and thanks for Sonny Bono, now deceased, the protection given seems to go on forever.
Stay Tuned for Next Month's Article!
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Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims.
Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround.
Education and Professional Affiliations:
Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School.
Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jirosenblatt@earthlink.net . |
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