You Don’t Know Jack: Five Surprising Facts about Intellectual Property Law

Wed, May 3rd, 2023 | by Miles Mediation and Arbitration | Article | Social Share

Think you know the law? If you’re an attorney or simply well-versed in legal matters, you may have a working knowledge of statutory and case law. However, the area of intellectual property (IP) law is rife with surprises about which even seasoned lawyers may be unaware. Here’s a closer look at some surprising facts about IP law that may be new (or news!) to you.

Surprising Fact: Mural and Graffiti Artists Own the Copyright Rights to Their Work

You own a building. Someone comes along and paints a mural on the side of it. Then you decide to tear down the building or paint over it.

Not so fast — the mural artist owns the copyright in his artwork, and because he owns the copyright, he can prevent the building owner from destroying it. That means that if you own a building and someone paints artwork, or graffiti, on it, technically you must get a waiver of rights from the artist who created it. That’s how copyright works.

Wait! What about the fact that the artist trespassed onto your property, or didn’t have permission to paint or deface it? It doesn’t matter. That fact that doesn’t keep it from being a work of art and every work of art has a copyright in it in favor of the artist. You may own the building that the art is painted on, but you don’t own the copyright to the art. That is a separate item of property (“intellectual property”) from the art itself. A comparable situation — someone steals a canvas and paint supplies and uses them to create a piece of art. The copyright in that piece of art is owned by the thief, but who owns the tangible work of art may present some dicey issues as well.

Surprising Fact: The Copyright Notice is Unnecessary

Copyright notice is sometimes a hotly disputed issue, but the fact is that you don’t need a copyright notice to protect your work. Before the current copyright statute was enacted in 1978, the creator of the work had to put a notice on it, with the copyright symbol, the date, and the name of the creator. Now, however, when it comes to anything that is visual arts or content “readable by man or machine,” copyright notice is unnecessary.

Note that I do generally recommend that people put a copyright notice on their work simply because it makes it easier to win a case for copyright infringement.

Surprising Fact: You Can Recapture the Copyright to Songs You’ve Written

I live and practice in Nashville, where music is a big thing. Sometimes songwriters and recording artists (and occasionally their lawyers) don’t know that if the copyright in their song or master has been assigned (say, to a publisher or a record label), if appropriate and timely action is taken, that copyright can be recaptured (technically the assignment can be terminated). The “appropriate action” is a bit difficult to maneuver. There are generally three different situations:

The work was created and first transferred prior to 1978. 17 U.S.C. § 304(c) controls and after a 56-year waiting period, the U.S. copyright can revert.
The work was created prior to 1978 but first transferred after 1977. 17 U.S.C. § 203(a) “may” control and after a 35-year waiting period, the U.S. copyright can revert.
The work was first transferred after 1977. 17 U.S.C. § 203(a) controls and after a 35-year waiting period, the U.S. copyright can revert.

You recapture the U.S. copyright by giving notice no more than 10 years and no less than 2 years before a date that is either subject to the 56-year or 35-year measurement period and recording the notice with the copyright office. When you do this properly, timely and effectively with a music catalog, the grantee has no recourse but to return the U.S copyright(s) to you.

For example, songwriter Even Stevens, who wrote songs such as “I Love a Rainy Night”, “When You Are in Love with A Beautiful Woman,” and many others, recaptured the U.S. copyrights in his music catalog and was able to sell it to another publisher for a number that had two commas in it. In fact, there are lawyers here in Nashville who work almost exclusively helping songwriters and recording artists recapture their copyrights and there is nothing the original grantee can do about it if it is handled properly.

Currently, works first securing copyright prior to 1964 and works first transferred between 1978 and 1984 have lost the ability to be recaptured. So, if you have a song registered in 1964 or granted in 1985, this is the last year to exercise these rights, or they are lost forever. The measurement is from the date of registration or grant (generally).

Surprising Fact: A Claim for Patent Infringement May Start Before the Patent Is Issued

There is a time lag between applying for a patent and the issuance of it. It can take several years from filing for a patent application to get examined and eventually be issued.

However, patent applications are (except for a couple of unusual occasions) published 18 months after the filing of the application. Once the application is published, the world is on notice of what you are claiming as your invention. If the claims of the issued patent are substantially the same as the claims in the original application, a claim for infringement can go back to the date of publication. This could involve a lot of money as infringement damages.

When you file a patent application, you make claims that define your invention. The patent office can accept or reject those claims, and you may have to modify them; as a result, the issued patent claims may be significantly different than what was originally filed. To have a patent claim revert to the publication date, the claims must be substantially the same. Once the patent is issued, it set the claims “in stone” and you can make your claim for infringement then.

Surprising fact: Patents and Copyrights Differ in Terms of How Ownership is Established

With patents, the inventor is entitled to own the patent and will own it unless that right has been assigned to someone else. If you’re working for a company and you come up with something unique that you want to patent, you are automatically the patent owner. The company can get you to assign patent rights to the company ahead of time or afterwards, but if not, you own the invention and own the right to secure that patent.

Note that the company could have “shop rights”, but the employer can’t authorize others use the rights or the invention unless the inventor contractually agrees. “Shop rights” are rights to make and use an invention that may belong to an employee if the invention was developed on company time, developed using company resources, et cetera.

However, with copyright law, if you’re working for a company and create a work of art (like an article or logo or social media post), the company automatically owns the copyright by statute, The company may also own the copyright in a work that was created by an independent contractor if the contractor was specifically hired to create the work under what’s called the work-for-hire doctrine. So, ownership of patent rights is different from ownership of copyright interests are different — and that difference is a significant one — between patent and copyright law.

Intellectual property law is ever-changing, and will no doubt continue to offer surprises as time goes on. Keeping up with it can help prevent it from presenting unpleasant surprises the next time you’re in court, or in an IP mediation.

About Jack Waddey

Jack Waddey is a mediator of complicated, sophisticated disputes involving intellectual property and business breakups. Chambers USA 2021 recognized him as a “Band II” level mediator and among the top 35 mediators in the U.S. Jack has also been named a “go-to” mediator by the Nashville Post, and he is one of 15 mediators on the International Trademark Association panel of mediators for trademark disputes.