Introduction

In this chapter, you will learn about the most important concepts and resources related to intellectual property (IP). IP “refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.”^[1]

Consider the following stories related to IP:

• Hundreds of Native Hawaiians and other demonstrators gathered outside the president’s office at the University of Hawaiʻi in 2006 to protest the patenting of hybrids of Hawaiian taro by the University’s College of Tropical Agriculture and Human Resources.^[2] Their opposition stemmed from the Hawaiian cultural belief that taro is the brother of humans and the concept of patenting it is repugnant. For its part, the university stated that it had been developing taro varieties and patenting them for its entire 100-year history.
• In 2007, Hawaiʻi-based photographer Kim Taylor Reece reached a settlement with artist Marylee Leialoha Colucci. He had sued her for copying one of his photographs of a hula dancer in her stained glass artwork.^[3] The case was noteworthy because some Native Hawaiians accused Reece of claiming copyright on a hula gesture, a notion offensive to Native Hawaiian concepts of cultural rights. Reece asserted that he was not claiming copyright on the pose itself, but that Colucci had copied his carefully composed photograph of a hula dancer as the basis for her own work.
• Native Hawaiians and others were outraged in 2018 when Aloha Poké LLC, a Chicago restaurant specializing in poke (a Hawaiian dish made of raw fish), sent threatening letters to businesses with similar names, claiming trademark infringement after the company had trademarked the service mark Aloha Poké. Commentators expressed surprise and dismay that a company could trademark the terms aloha and poke.^[4]

IP, as you can see, can be controversial. It can also be bewilderingly complex to a layperson, and even lawyers defer to their colleagues who are specialists in IP matters. As librarians, we cannot speak about IP with the authority of legal experts, but we can learn the basics of the four major types of IP and help library users find the best resources for their research needs related to IP.

Copyright

Copyright is a type of IP right that applies to creative works in fixed form. Copyright grants the owner of the copyright the exclusive right to reproduce the work, produce derivative works, or to perform the work publicly. Copyright and patent protections stem from Article I, Section 8 of the U.S. Constitution, which states, “The Congress shall have Power To…promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Copyright can be assigned to another party, such as when an author of a book assigns the copyright to the publisher. Copyright does not apply to ideas, methods, process, etc.—that is what patents and trade secrets protect. Another dimension of copyright law is that it applies only to creative works. Courts have established that works that are recitations of facts are not eligible for copyright protection. Thus, case law, statutes, and regulations are not protected by copyright law. Similarly, statistics and data, such as census data, are in the public domain. If laws or decisions are compiled by a commercial publisher, the value-added aspects of the publication, such as headnotes, indices, and footnotes are copyrighted.

Because copyrights are registered with the Copyright Office, a division of the Library of Congress, they are a type of government information. Librarians must have a good understanding of copyright concepts such as fair use and public domain, which come into play in teaching, resource sharing, digitization, and course reserves. There are differing opinions among librarians about how much help we should give patrons who have copyright-related inquiries. Some have argued that, given our familiarity with copyright laws and concepts, we are best positioned to provide users with guidance concerning copyright. Others have expressed concern that providing specific guidance veers into the realm of giving legal advice and have insisted that librarians should not provide assistance beyond pointing to self-help resources on copyright questions.

Reference Questions

In this section, we’ll review some commonly asked questions about copyright.

How can I tell if a work is still under copyright?

• Any work published before January 1, 1929 is now in the public domain, meaning that it is not covered by copyright protection.
• Works published between January 1, 1929 and December 31, 1978, inclusive, are protected for a term of 95 years from the date of publication, with the proper notice.
  • But, if the work was published between January 1, 1923 and December 31, 1963, when there was a non-automatic “renewal term,” the copyright owner may not have renewed the work. If he or she did not renew, the original term of protection (28 years) will have expired and these works will be in the public domain. Check the Stanford Copyright Renewal Database to determine renewal status for books published during these years.
• After 1978, the way we measure the term of protection changes. It no longer begins on the date of publication; rather, it runs for 70 years from the date the author dies (called “life of the author” plus 70 years). If the work has multiple authors, the copyright extends through the lifetime of the longest surviving author. Furthermore, the publication status is irrelevant. Works are protected whether they are published or not.
• Finally, those works that were created before December 31, 1978, but never published, are now protected for the life of the author plus 70 years.^[5]

The following guides can help a user determine whether a work is protected by copyright.

• Cornell University Library’s Copyright Term and the Public Domain
• The Copyright Genie by Librarycopyright.net
• The Public Domain Slider by by Librarycopyright.net

How can I identify the copyright holder and obtain permission to use their work?

We can refer to the Catalog of Copyright Entries maintained by the Library of Congress to find the copyright holder if the copyright was registered. It is available online from 1978 to the present from the Copyright Office in the Library of Congress. Earlier issues are searchable in Google Books or HathiTrust. Many libraries also have the catalog in print or microform. The Copyright Office’s Circular 21 explains how to search copyright records to identify the copyright holder or investigate the copyright status of a work.

Let’s take a look at an example in the Catalog of Copyright Entries. If we search for works by recording artist Kealiʻi Reichel, many recordings of songs are listed. Looking at the entry for “Maunaleo,” we find that the copyright claimants are Carlton Kealiʻi Reichel and Marvin Nogelmeier (see Figure 1). The catalog entry also tells us that the publisher is Punahele Productions. Sometimes the catalog gives an address for a publisher, but in this case, no address is listed.

Can I use the material if the copyright holder cannot be identified or located?

The short answer is no. In the United States there is no law that grants permission to use a work if the copyright holder cannot be identified or located, although such provisions do exist in some other countries. These types of works are termed “orphan works.” There is no such concept as implicit abandonment of copyright under U.S. law. This may be the most frustrating aspect of copyright law for patrons. In practice, people frequently use copyrighted works without permission, taking a chance that the copyright holder will not be vigilant in asserting his or her rights.

This book is out of print. Can I copy the whole thing?

Just because a work is out of print does not mean it is in the public domain. Even if you cannot purchase a copy of the work, it is possible to license the work or to pay the copyright holder a fee for the right to reproduce it. The Copyright Clearance Center is an example of a company that facilitates the licensing of works by libraries and others.

The Google Books approach has been to not display the full text of a work published after 1928 unless the copyright holder has granted permission to Google to display it. Unfortunately, this means that many public domain works published after 1928, including government documents, can be searched but not viewed in Google Books.

How much of the work can I use and still comply with fair use?

The Copyright Act of 1976 established the doctrine of fair use, under which certain uses of copyrighted works, such as news reporting and teaching, are permitted. Four factors are used to determine compliance with fair use:

1. Purpose and character of the use
2. Nature of the work
3. The portion of the work used in relation to the work as a whole
4. The effect of the use on the potential market for or value of the work^[6]

Because of the complexity of fair use, one must look beyond the text of the copyright statute and employ additional guidelines to determine how courts have applied the four factors. To determine if a use falls within fair use guidelines, you can consult any number of guides such as the Copyright Advisory Network’s Fair Use Evaluator or the American Library Association’s Fair Use Checklist.

Can I use this image in a publication or presentation? Where can I find copyright-free images to use in my publication?

The first step is to determine whether the image is in the public domain—you can refer users to  Copyright Term and the Public Domain in the United States for this purpose. If it is not in the public domain, the copyright holder may have supplied instructions about how to request permission. In the online realm, it is become increasingly common for creators to grant limited licenses using Creative Commons. You can search Creative Commons for images that have CC licenses. There are also many sites that offer copyright-free images.

Copyright Status of Government Documents

Under federal copyright law, works of the U.S. government are not eligible for copyright protection. However, government documents may contain copyrighted works that have been reproduced with the permission of the copyright holder. Furthermore, works produced under contract or grant for the federal government may be copyrighted. It is best to check the copyright status of a work with the agency that produced the document. More information can be found in the publication Frequently Asked Questions about Copyright.

Copyright of state government publications is covered in chapter 10.

International Copyright

It is important to note that this chapter covers copyright law in the United States. Works published in foreign countries fall under the laws of those countries, which may differ significantly from U.S. law. In addition, there are many international agreements concerning various aspects of copyright. The United Nations claims copyright on its publications, but it offers several exceptions, as explained on its rights page. The governments of most countries claim copyright on government publications. It is beyond the scope of this book to go into foreign copyrights and related international agreements, but if you work in a collection that has a substantial amount of material published abroad, it would be wise to acquire some reference sources that cover copyright in the relevant countries. Circular 38A of the Copyright Office describes the copyright treaties and agreements in which the United States participates. The World Intellectual Property Organization’s WIPO Lex database offers free searching of international legal information about intellectual property.

Patents

A patent is a document that gives an inventor the exclusive right to prevent others from making, using, or selling an invention.^[7] To understand patents, it is helpful to understand what is eligible for patent protection. To be patentable, an invention must be new, nonobvious, and it must be a process that requires mental or mechanical effort, a machine, an article of manufacture, or a composition. Unpatentable inventions include theories, processes that rely on an emotional reaction, products of nature, printed matter unless the material has some mechanical aspect, and unsafe, illegal or immoral inventions.^[8]

The U.S. Patent Application Process

To prepare a patent application, the applicant must review the “prior art,” in other words, existing patents and pending patent applications, in order to satisfy the requirement that the invention be novel. This is why both patents and patent applications are publicly available for searching. Once the application and fees have been submitted to the U.S. Patent and Trademark Office (USPTO), a patent examiner reviews the application and makes a determination as to whether to grant the patent. Examiners work with applicants to remedy deficiencies in the application and help applicants understand the position of USPTO in considering an application.

Inventors who wants to file patent applications should be referred to the USPTO website or the nearest Patent and Trademark Resource Center (PTRC) for assistance.^[9] PTRCs are libraries that provide access to specialized research tools and have staff who are trained to assist users with patent and trademark searching. Patent seekers should also be advised to consult an attorney who specializes in patents. However, some inventors are reluctant to make a substantial financial investment without having done preliminary research themselves.

Types of Patents

There are three types of patents. Plant patents can be granted for asexually reproduced plants. Here is an example: PP19939 for the Maui Gold taro plant, awarded to the University of Hawaiʻi. It was developed with funding from the U.S. Department of Agriculture, so the USDA has an interest in the patent as well.^[10] The second type of patent is a design patent, specifically for an ornamental design. Patent D780056 is an example of a Harry Winston jewelry design for a hibiscus charm.^[11] The third type, and the one we most commonly deal with, is a utility patent. An example is Patent 8,510,247 granted to Amazon for a method of recommending items based on geolocation.^[12]

Subscription Databases That Include Patents

Many science and technology databases cover patents. Examples include Engineering Village, Google Scholar, Web of Science, SciFinder Scholar, and Scopus. The coverage of U.S. and foreign patents varies in these resources, so they can be a jumping-off point for a patent search, but they may not give a complete picture of all of the relevant patents. Some databases allow patrons to set up alerts so that they can be notified when a new patent is issued in their area of interest.

Free Patent Resources

Several free databases allow users to find United States and international patents and patent illustrations.

• Patent Public Search is USPTO’s official database for searching U.S. patents and patent applications.
• Free Patents Online (FPO) In addition to providing an easy to use interface for patent searching, FPO offers several analytical tools highlighting trends in patent issuances.
• Pat2pdf This site allows searching by patent number to retrieve PDFs of patent documents in one step.
• Google Patents contains millions of patent publications from 17 patent offices around the world and technical documents and books indexed in Google Scholar and Google Books.
• The World Intellectual Property Organization (WIPO) uses the Patentscope interface to search patents issued in dozens of countries.
• The Lens offers free searching of over 100 million international patent documents and includes analytical tools.
• Espacenet is the database of the European Patent Office, offering access to over 130 million patent documents.

To get a feel for what patents look like, let’s review patent number 2026082. Viewing the document, we can see that this is the patent for the board game Monopoly, which was granted to the game’s inventor, C. B. Darrow, in 1935. Note that when someone applies for a patent, he or she is not required to provide a working model; it is sufficient to submit drawings with a detailed written description of the item. In this case, Darrow included drawings of the board, game pieces, cards, and even the Monopoly money.

Next, we’ll examine patent number 6214353, a patent for a malaria vaccine that was granted to Pasteur Merieux Serums et Vaccins and the University of Hawaiʻi. Scrolling through the patent, we can see the international classification number as well as the primary and secondary U.S. patent classifications. There are also references to other patents and publications, some of which were cited by the patent examiner. As you can tell, patent examiners must be experts in a field in order to evaluate a patent applicant’s claims. At the end of the patent, there is a list of references similar to what you would find at the end of a journal article. It is understandable why such patents would be covered in scientific databases.

Finally, let’s search for patents using the classification system. To start with, we can do a keyword search in Patent Public Search to try to find a classification for a feline toothbrush. Note that when doing a keyword search in this interface, multiple search terms will be connected with the OR operator unless you select AND. When we view patent number 4738001, a patent for a canine and feline toothbrush, we see that the primary classification is 15/106. Click on 15 to be taken to the classification hierarchy for Class 15, Brushing, Scrubbing, and General Cleaning. Within Class 15, clicking on Subclass 106 leads to a definition of the subclass. Viewing the definition will help a searcher to determine whether the subclass is relevant. In the Class 15 hierarchy, click on the P icon next to 106 to view a list of patents in the classification 15/106. In Figure 1 below, notice that a variety of different apparatuses are cited, not just designs for toothbrushes, because it is the unique features of the article that determine its patentability, not necessarily a particular use.

Some patents may have several classes listed, and if you are doing a thorough patent search, you should check into those other classes in addition to the primary class. You can also search patent classifications through the classification structure. For example, if we want to find the class for a board game like Monopoly, we can consult the patent for Monopoly, which lists the class number 273-134. Scrolling through the United States Patent Classification, we find that Class 273 is for Amusement Devices: games. Using the hierarchy under Class 273, subclass 236 is for board games, 242 for “piece moves over board having pattern” and 256 is “Property or commodity transactions.” Figure 3 shows the hierarchy of classes.

Figure 3. United States Patent Classification class structure for a Monopoly-type game.

CLASS 273, AMUSEMENT DEVICES: GAMES

If we search for patents with a classification of 273/256, we find patent 6,352,259 for a Pet Lover’s Board Game that cites the Monopoly patent and seems to be modeled on Monopoly, so we could conclude that 273/256 would be a relevant classification.

The Cooperative Patent Classification is a scheme developed in cooperation with the European Patent Office. Let’s examine the classification for a game like Monopoly under this scheme. Within the category Human Necessities, we find Card, Board, or Roulette Games. Note that there is a one, two and three-dot indentation pattern to indicate subclasses. Under Board Games, there are several subclasses, including Board Games concerning economics or finance. Finally, there is a subclass for games played on an endless track, A63F 3/00072, that mentions Monopoly as an example.

A third classification scheme is the International Patent Classification (IPC), administered by WIPO.

Government and University Patents

In contrast to copyright, which the U.S. government does not claim for its publications, U.S. government agencies can be granted patents. The government also funds patents, as we saw with the Maui Gold taro patent. Agencies maintain search interfaces for their patents, like the U.S. Department of Energy’s DOEpatents. Government agencies can license their patents in a transaction known as technology transfer. Many agencies, like the National Institutes of Health, have technology transfer offices.

As we have seen, universities are major patent generators. Common areas in which universities do research that may result in patent applications include biotechnology, plants, vaccines, human cells, and engineered laboratory mice. Like federal agencies, universities have offices of technology transfer and development that list technologies available for licensing.

Secrecy Orders

While most patent applications can be located using the USPTO search interface, a small number  have been subject to secrecy orders. Under the Invention Secrecy Act of 1951, the USPTO is required to refer any patent application which it believes may be harmful to national security to an appropriate defense agency for review to determine whether it should be subject to a secrecy order. An example of a technology that might warrant a secrecy order is an encryption method.

As of the end of FY 2021, 5,976 secrecy orders were in effect.^[13] Secrecy orders are sometimes rescinded or amended, but for the most part the number of secrecy orders increases each year because few orders have been rescinded. The oldest secrecy order currently in effect dates back to 1942.^[14]

Trademarks and Service Marks

Trademark is the generic term used to cover intellectual property associated with a product or service. The authority to grant trademark protection originates in what is known as the Commerce Clause of the U.S. Constitution, which grants Congress the power to “regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes.” Trademarks are issued to protect intellectual property in the event that a competing product or service attempts to use a similar word, phrase, symbol, sound, series of letters, or combinations thereof. In order be granted a trademark, a mark must be inherently distinctive and not liable to be confused with an established product or service.^[15] Although registration of trademark ownership is not required, registering a trademark with USPTO provides nationwide protection. Without registration, trademark rights only apply in the geographic area in which the product is offered.

We can think of a trademark (™) as a visual identifier, like a logo, that identifies the source of the product. A service mark (SM) identifies the source of a service and is often in the form of a motto or catchphrase. Trademarks and service marks can be registered (®) with the USPTO, but they do not have to be in order to be protected. If they are registered, trademarks may be used for an indefinite period as long as the registration is renewed periodically. Trademarks can also be registered with a state agency that registers businesses. A business name can be a trademark, but not all business names are trademarked. It is a good idea for businesses to register trademarks, as it can prevent other businesses from confusing consumers with inferior products marketed under the same name or using a very similar logo. Domain names may be registered with a domain name registrar, but domain registration does not confer the same protection as trademark registration. Domain names can also be trademarked.

Let’s examine some trademarks. Use the Trademark Electronic Search System (TESS) to search for Eddie Would Go. There are five entries, four live and one dead. The first one is for a variety of products and is registered to the Aikau Family LLC. If you click on TSDR, which stands for Trademark Status & Document Retrieval, you can review the list of documents associated with the trademark. Click on Specimen and you can view an image of a specimen product. Other documents include the Statement of Use, in which the registrant affirms that the trademark is in use, registration renewals, and other filings. The next registration is for a line of clothing. Viewing the Assign Status, we see that the trademark for the clothing line used to be assigned to Quiksilver, but it was later assigned to the Aikau Family. The next record is for sporting events. The final trademark is for surfing videos and was assigned to Quiksilver, but it has been abandoned.

Remember that trademarks can be registered with USPTO, but they can also be registered in a state. Let’s examine the clothing brand HE>i. Searching TESS, we learn that the trademark is registered to Hegreaterthani Inc. There are two records, one for a clothing line and one for other products. Looking at the State of Hawaiʻi business registration for Hegreaterthani Inc., we can learn the names of the officers, the mailing address, and registered agent of the company.

Trade Secrets

In the film “Duplicity,” Julia Roberts and Clive Owen play a pair of industrial spies who carry out an elaborate scheme of deception to steal the formula for a revolutionary secret product.^[16] In real life, trade secrets may not be so dramatic, but they are still closely guarded, and stealing a trade secret is a violation of federal law. There is no standard definition of a trade secret. In general, the term is understood to refer to business information that a company has kept secret, that gives the company a competitive advantage, and whose disclosure would harm the company’s economic interests.^[17]

Unlike other types of intellectual property, there is no registration or application process for trade secrets and there is no publicly available listing of them. Before 1996, trade secrets were covered by state laws, but in 1996 the Uniform Trade Secrets Act, enforced by the FBI, was implemented to provide for uniform treatment throughout the U.S. Trade secrets provide protection that is not available under patent protection. Obviously, someone who receives a patent must publish detailed information about the process, composition, or other characteristics of the invention. Trade secrets typically protect things like manufacturing processes, chemical formulations, or recipes. Recipes are not generally covered under other types of intellectual property. You cannot patent or copyright a recipe that is a simple list of ingredients with instructions, although collections of recipes or additional commentary on a recipe can be copyrighted. However, trade secret law can protect a special formulation of herbs and spices, for example, or a technique for extracting a flavoring from a plant.

Insider’s Library

Butler, R. E. (2014). Copyright for academic librarians and professionals. ALA.

Contains easy-to-understand explanations of copyright concepts such as fair use, public domain, and permission, and includes flow charts to answer common questions related to copyright in higher education. Discusses copyright issues related to many types of resources, such as internet sites, streaming video, and photographs.

Russell, C. (2004). Complete copyright: an everyday guide for librarians. ALA.

Russell’s work explains key copyright concepts through the introduction of scenarios that are augmented with discussions of relevant court cases.

Stim, R. (2016). Patent, copyright & trademark: an intellectual property desk reference. Nolo.

This guide to intellectual property for the layperson provides definitions and explanations of concepts in intellectual property law.