Introduction

Consider the following events related to intellectual property:

• Hundreds of Native Hawaiians and other demonstrators gathered outside the office of the University of Hawaiʻi’s president in 2006 to protest the patenting of hybrids of Hawaiian taro by the University’s College of Tropical Agriculture and Human Resources.^[1] 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, photographer Kim Taylor Reece settled a lawsuit against artist Marylee Leialoha Colucci for copying one of his photographs in her stained glass artwork.^[2] The case was noteworthy because some Native Hawaiians accused Reece of copyrighting a hula gesture, a notion offensive to Native Hawaiian concepts of cultural rights. Reece claimed that he was not copyrighting the pose, 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 again outraged in 2018 when a Chicago restaurant specializing in poke (a Hawaiian dish made of raw fish), Aloha Poké LLC, sent threatening letters to businesses with similar names, claiming trademark infringement after the company had trademarked the service mark Aloha Poke. How could a company trademark the word aloha or the dish poke?

In response to these and other incidents, Native Hawaiians have created a movement to counter intellectual property claims and cultural misappropriation through legal protection of traditional cultural expressions.^[3]

Intellectual property (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 intellectual property 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 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’s what patents and trade secrets protect. 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 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 legal advice and have insisted that librarians should not attempt to go beyond pointing to self-help resources on copyright questions.

Reference Questions

Questions commonly asked by patrons:

• How can I tell if a work is still protected under copyright law?
• How can I locate the copyright holder to obtain permission?
• Can I use the material if the copyright holder cannot be identified or located?
• This book is out of print. Can I copy the whole thing?
• How much of the work can I use and still comply with fair use?
• Can I use this image in a publication or presentation?
• Where can I find copyright-free images to use in my publication?

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

• Any work published on or before December 31, 1924 is now in the public domain.
• Works published between January 1, 1925 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 1924 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 “Determinator” 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). Further, 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.^[4]

How can I identify the copyright holder to obtain permission?

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.

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 (aka Puakea) Nogelmeier. 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.

Another important point is that we are discussing copyright law in the U.S. Works published in foreign countries fall under the laws of those countries, which may differ significantly from U.S. law. In addition, there are international agreements concerning certain aspects of copyright. It’s 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.

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

The short answer is no. In the U.S. there is no law that grants permission to use works 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’s in the public domain. Even if you cannot purchase a copy of the work, it’s possible to license the work or to pay the copyright holder a fee for the right to reproduce it. Libraries do this all the time with interlibrary loan of journal articles.

The Google Books approach has been to not display the text of books published after 1923 unless the copyright holder has granted permission to Google to display it. Unfortunately, this means that many public domain works, including government documents, cannot be 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 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^[5]

Because of the complexity of fair use, one must look beyond the text of the copyright statute to case law 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 Crash Course.

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 the Cornell’s site Copyright Term and the Public Domain in the United States for this purpose. If it’s not in the public domain, the copyright holder may have given instructions on whom to contact for permission. In the online realm, it’s 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 United States 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. For example, news articles are frequently reproduced in congressional hearings and the Congressional Record. 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. The Government Publishing Office has prepared a guidance document about copyright and federal documents to which librarians can refer users.^[6] Further information can be found in Frequently Asked Questions About Copyright.

On the other hand, some states do claim copyright on their publications, and so do many foreign governments, so one cannot assume that a non-U.S. government document is in the public domain. For state documents, Harvard’s State Copyright Resource Center covers the copyright status of state documents in all 50 states. The United Nations claims copyright on its publications, but it offers several exceptions, as you can see on its rights page.

Patents

Patents have been enshrined in the U.S. Constitution to grant inventors limited protection for their inventions. To understand patents, it’s helpful to understand what is patentable. 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.^[9]

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 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]

Inventors who wants to file patent applications should be referred to the nearest Patent and Trademark Resource Center and to the USPTO website for assistance.^[13] Patent seekers should be advised to consult an attorney who specializes in patents, but some patrons are reluctant to make the substantial financial investment without doing preliminary research.

Reference Questions

• “I’m looking for patents for portable chicken houses.”
• “How can I find startup companies with the highest number of patents in Internet of Things (IoT) Micro-Electro-Mechanical Systems (MEME) sensors?”
• “Me and a co-worker are working on documentation of early tattoo history and patents. I have became aware of a dispute between Sam O’Reilly (credited with the first tattoo machine patent) and a man…”

Patrons may have a variety of reasons for asking questions about patents. While some researchers may be interested in filing a patent application, it is more common to encounter researchers who are either doing biographical or genealogical research or who are interested in the history of a product or technological development.

The first question about chicken houses was from a faculty member who was interested in seeing different designs for portable chicken houses. Searching using patent classification could be an effective way to find designs for moveable chicken houses. The second question would probably be better answered by searching in an engineering database (discussed below) rather than using a patent search engine. The concept of “startup” might be difficult to define, though. The third question is related to the history of developments in a field and is more of a traditional patent search question. Answering it might also involve some research in news sources in addition to locating patents that reference the original patent.

Subscription Databases That Include Patents

Many science and technology databases cover patents. Examples include Engineering Village, Google Scholar, ISI Web of Knowledge, 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.

The IEEE Spectrum publishes the annual Patent Power Scorecard,^[14] which ranks the top 20 patent-holding entities in each industry segment. This type of resource could potentially help with the reference question about MEME patents by start-ups.

Free Patent Resources

Several free databases allow users to find U.S. and international patents and patent illustrations.

• Free Patents Online (FPO) (http://www.freepatentsonline.com/) In addition to providing an easy to use interface for patent searching, FPO offers several analytical tools highlighting trends in patent issuances.
• Pat2pdf (http://www.pat2pdf.org/) This site allows searching by patent number to retrieve PDFs of patent documents in one step.
• Google Patents https://patents.google.com/ 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 (https://patentscope.wipo.int/) to search patents issued in dozens of countries.

First, let’s search for patent 2026082 in Pat2pdf. 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, search for 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 a list of references, some of which are being cited by the patent examiner. As you can tell, patent examiners must be experts in the field in order to evaluate a patent applicant’s claims. At the end of the patent, we find a list of references similar to what you would find at the end of a journal article. You can understand why such patents would be covered in scientific databases.

Finally, let’s examine searching for patents using the classification system. To start with, we can do a keyword search in the USPTO search interface to try to find a classification for a feline toothbrush. When we view patent number 4738001, a patent for a canine and feline toothbrush, we see that the primary classification is 15/106. Going back to quick search, we can select current US classification and type in 15/106. In Figure 1, notice that a variety of different apparatuses are cited, not just designs for feline toothbrushes, because it’s 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’re doing a thorough patent search, you would want to 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 2 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’ve 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. Universities make quite a bit of money from licensing intellectual property, so faculty who receive patents are highly sought after.

Secrecy Orders

While most patents can be located using the USPTO search interface, a small number of patents 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 get a secrecy order is an encryption method.

The Federation of American Scientists tracks the number of secrecy orders issued each year.^[15] Many of the orders are for government agencies, especially in the Department of Defense, but others are for inventions of private inventors. In some cases, secrecy orders merely prohibit export of a technology, but in other instances the existence of the patent is classified information. 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.

Trademarks and Service Marks

Trademark is the generic term used to cover intellectual property associated with a product or service. 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.^[16]

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 don’t have to be in order to be protected. If they are registered, trademarks must be renewed periodically. They 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’s 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.

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. You can see that there are a lot of potential uses for the information in this database beyond the trademark registration. What other uses can you think of?

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 at the state level. To explore trademark further, we’ll 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 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 bent on stealing the formula for a revolutionary secret product.^[17] 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.^[18]

Unlike other types of intellectual property, trade secrets are not registered, so there’s no database you can search to find them. Before 1996, trade secrets were handled by individual states, 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, if you are granted a patent, you have to 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 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. But trade secret law can protect a special formulation of herbs and spices, for example, or a technique for extracting a flavoring from a plant.

Librarian’s Library

Butler, R. E. (2014). Copyright for academic librarians and professionals. Chicago: 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. Chicago: 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. Berkeley, California: Nolo.

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