Key Cases and Definitions in Intellectual Property Law
June 10, 2021
Steamboat Willie has been in this scene before: staring down the last years of its copyright protection and into the abyss of the public domain. But this time, the iconic cartoon might become public property.
Disney is said to have lobbied before Congress twice since Mickey Mouse made his debut nearly a century ago in Steamboat Willie to extend copyright protection for that version of its main mouse. The updated laws that seem to have resulted from that lobbying extended protections for other works of art, film, literature and music and gave the mouse top billing for his role in lengthening copyright terms.
“It affects the term of all copyright,” St. Louis-based patent attorney Randolph Bretton said of Mickey Mouse’s copyright case. “It’s not just Steamboat Willie or graphics — it affects music, literature; it’s wide sweeping. Also, it’s an example where people can look at how a very influential organization can change the law.”
But the curtain is closing on Steamboat Willie’s protection again: If Congress does not alter copyright law before 2024, the copyright on Steamboat Willie will expire.
“Disney has enough other creative material available now that they don’t have to rely upon Mickey Mouse anymore,” said David Crawford, an intellectual property attorney in St. Louis.
Congress has altered the copyright law numerous times since the U.S. Copyright Act of 1790 — when the original term of copyright protection was only 14 years, with the possibility of renewal for a subsequent 14 years. Now, for works that have an individual author and that were created on or after January 1st, 1978, copyrights extend for the author’s life plus 70 years. Works made for hire or those with anonymous or pseudonymous authors are protected for 95 years from the date of its first publication or 120 years from its creation, whichever is shorter.
The History of Copyright Extensions in the U.S.
The Copyright Act of 1790, the first federal copyright act, offered 14 years of protection and permitted renewal for another 14 years to the authors of charts, maps and books.
The Copyright Act of 1831extended copyright terms from 14 to 28 years, with the option for authors to renew their copyright for another 14 years on top of the original term.
The Copyright Act of 1909extended the length of copyright protection to give authors a 28-year original copyright term with the option to renew for 28 years — a maximum of 56 years.
The Copyright Act of 1976, which took effect in 1978, established that works having an individual author that were created on or after Jan. 1, 1978, were granted copyright protection for the author’s life plus 50 years.
The Sonny Bono Copyright Term Extension Act (referred to by some as the “Mickey Mouse Protection Act”) extended copyright protections to the life of the author plus 70 years for works that were created on or after January 1st, 1978 and had an individual author. For works that have multiple authors, those same protections extend 70 years from the last author’s death. Works made for hire, anonymous works, or pseudonymous works created on or after January 1st, 1978 are protected for 95 years from the date of first publication or 120 years from the date of creation, whichever is shorter.
Intellectual Property Definitions and Distinctions
Copyrights, trademarks and patents are each used for different purposes, though they can sometimes apply to the same material. Here’s a look at some of the key differences between each type of intellectual property and the protections that apply to them.
WHAT DOES IT PROTECT?
Works of art, music, literature
HOW LONG DOES IT LAST?
For works that have an individual author and created in 1978 or after, life of the author plus 70 years. For works made for hire, or anonymous/ pseudonymous works, created in 1978 or after, 95 years from first publication or 120 years from creation, whichever is shorter
A piece of work is protected from the time it is created, with or without registration. Copyright registration is voluntary, but it allows the copyright’s holder to bring a copyright infringement lawsuit against those who allegedly infringe on the copyright. Works with an individual author and created on or after Jan. 1, 1978 are protected for the life of the author plus 70 years under current copyright law. Works by multiple, anonymous, or pseudonymous authors are protected for 95 years from their first publication or 120 years from their creation, whichever is shorter.
Although copyrighted material often requires third parties to obtain permission to use, some copyrighted material can be used without permission under the fair use provision in areas such as research, news reporting or commentary.
As copyright law has been altered over the years, it is often challenged by new formats for publishing and reproducing material that raise the same legal questions.
“As formats change over and over again, it raises these old copyright issues over and over again,” Crawford said. “What’s old is new again.”
WHAT DOES IT PROTECT?
Names, logos, slogans, phrases
HOW LONG DOES IT LAST?
10 years, with unlimited renewals available every 10 years
HOW MUCH DOES IT COST INITIALLY?
$225 and up.
Trademarks distinguish providers of goods and services from one another, and they protect an entity’s name, logo, slogan or combination of words and symbols that represent it. Any and all business owners can benefit from registering their trademarks, which are most often applied in sectors like real estate and land subdivisions, investment and manufacturing.
Federally registered trademarks and service marks are designated by the “®” symbol. Businesses are not required to register their trademarks, but doing so allows them some benefits in terms of taking legal action against other entities with similar logos or symbols that offer similar products or services. Protection of a trademark begins when it is first used. Just as car insurance policies can protect drivers from high costs associated with potential accidents, registering a trademark can protect a business even if competition is not obvious when it launches, said St. Louis-based intellectual property attorney Annette Heller.
“You do it to protect yourself from any future problems,” Heller said. “It’s not that expensive overall when you think of [how] that trademark becomes your most valuable asset — the way they distinguish you from your competitor[s]. If you have to change your name, you might as well be starting all over in the business.”
Common law trademarks — which are unregistered — offer some protection. But they’re based on where an entity does business geographically, which can be difficult to prove in the era of global internet.
Businesses that federally register their trademarks can do so for every category of goods and services they provide, and trademark protection can be renewed every 10 years with an unlimited number of renewals. Trademark application fees can cost $225 or more, according to the U.S. Patent and Trademark Office.
WHAT DOES IT PROTECT?
Inventions – design, utility and plants
HOW LONG DOES IT LAST?
With some exceptions, utility/plant patents: 20 years from earliest U.S. filing date; design patents: 15 years from date issued
HOW MUCH DOES IT COST INITIALLY?
$50 and up.
There are three types of patents — design, utility and plant patents — that can be issued for inventions that are novel and not obvious. Patents can be granted for processes, machines, manufactures, and compositions of matter. The United States Patent and Trademark Office specifies what cannot be patented, including among other things: laws of nature, natural phenomena, abstract ideas, and inventions that are offensive.
Patents are commonly granted in the biotech, pharmaceutical, medical, computer and chemicals industries. But St. Louis patent attorney Randolph Bretton said U.S. courts need to better define patentable subject matter, particularly as court rulings affect the processes and products that can be patented.
“Every time a patent law comes out, it’s, ‘How is it interpreted?’ And usually cases are heard by the Supreme Court or the federal court, and I don’t think they appreciate how narrowly the patent office is going to interpret it,” Bretton said. “The difficulty is the courts don’t foresee the wide-sweeping implications of what they’re doing sometimes.”
The America Invents Act (PDF, 280 KB), passed in 2011, brought U.S. patent law more in line with international standards by granting patents to the first inventor to file for a patent for an invention, rather than the first to invent it.
With some exceptions, utility and plant patents last 20 years from the the earliest U.S. filing date, while design patents last 15 years from the date the patent is issued.
Recent Cases That Have Shaped Intellectual Property law
Mickey Mouse isn’t the only character that influenced intellectual property law. Other major cases in the last decade or so have shaped the way laws are applied to copyrights, patents and trademarks — here are just a few recent cases with broad implications.
“That’s going to have a huge impact on the number of applications filed because right now, it can take six to nine months or a year to get a registration on a copyright,” Heller said. “People are going to have to pay more attention to registering works that may be infringed.”
Star Athletica LLC v. Varsity Brands, Inc. (2017): This Supreme Court case established that design elements in fashion can be copyrightable, opening up a new avenue of registration and giving fashion designers more time to protect their intellectual property.
“If you waited longer than a year, you couldn’t — you were dead in the water,” Crawford said. “Now you don’t have to register your copyright right away.”
Recent Cases That Have Influenced Trademark Law
Matal v. Tam (2017): The Supreme Court ruled that the disparagement clause of the Lanham Act of 1946 — a clause in the law governing trademarks that prohibits marks that disparage racial or ethnic groups — was unconstitutional and violated the First Amendment’s free speech clause. The case was brought by Asian-American rock band The Slants after the U.S. Patent and Trademark Office rejected its trademark registration application and appeal. After the Court of Appeals for the Federal Circuit sided with the band, the USPTO petitioned the U.S. Supreme Court to prevent being forced to register the mark. The Supreme Court upheld the Federal Court ruling.
Mission Product Holdings Inc. v. Tempnology LLC (2019): This Supreme Court case made it more difficult for trademark owners to rescind contracts with trademark licensees if the owners of the trademark go into bankruptcy. The ruling affects the quality control aspect of trademark licensing.
“If the holder of a trademark allows someone else to use it, they have to supervise, make sure that the goods and services provided under that trademark are consistent with the trademark owner’s use of it,” Heller said. “And when a licensor goes into bankruptcy, the court used to find that license could be terminated at will; there’s no longer an ability of the licensor to supervise quality control, which of course created a lot of harm to the licensee who’s using the trademark.”
Recent Cases That Have Influenced Patent Law
KSR International Co. v. Teleflex, Inc. (2007): This Supreme Court case emphasized the 1966 Graham v. John Deere Co. decision, a previous influential case that clarified patents cannot be awarded to obvious inventions. In that case, William Graham sued John Deere Co. for infringing on his patent for mechanical parts on a plow. After multiple appeals in lower courts, the case went to the Supreme Court, which consolidated Graham’s case with another patent infringement case over a patent on a spray bottle. The Supreme Court ultimately ruled both patents were invalid because they failed the non-obviousness test, and the case a set of factors for determining non-obviousness.
The KSR case reinforced the approach to the obviousness inquiry as set forth in Graham v. John Deere Co. and laid out additional guidelines for making obviousness determinations.
“It made it more difficult to get a patent, and it sort of included things like common sense,” Bretton said. “That’s sort of a black box … It’s undefined.”
Vanda Pharmaceuticals v. West-Ward Pharmaceuticals (2018): This case established that a method for treating a patient based on metabolism is patent-eligible subject matter. That method was previously argued to be a natural phenomenon, therefore unpatentable.
“A drug is administered, and a doctor after observing the metabolism of the drug or the events that happen after that natural event then will administer the same amount of the same drug or different drug,” Bretton said. “So that’s a complete process that doesn’t exist in nature — naturally occurring — and that was deemed patentable subject matter.”