Your IT IP can be legally protected — but that may not always be to your advantage
Posted on
December 12, 2022

This feature first appeared in the Fall 2022 issue of Certification Magazine. Click here to get your own print or digital copy.

You can legally protect your IT IP. But should you?

In the July 2022 issue of Certification Magazine, we looked at the three main forms of intellectual property protection that can apply to IT or other areas: copyrights, trademarks, and patents. Given the strength and the value of each of these protections, it may be difficult to imagine why they are ever violated and why offenders are not immediately stopped and punished for doing so.

In reality, these protections are violated all the time — sometimes knowingly and sometimes innocently — and protecting them can be both costly and time-consuming. There are a number of reasons why violations occur and they include the following:

The wording of what can be protected is somewhat ambiguous: How does one define "novel" or "non-obvious," and is the definition one person comes up with for those terms the same as another would? There can be discrepancies in this, which then leads to loopholes in protection.

Enforcement costs can be expensive. Just because an individual has a patent, for example, does not always mean they can afford to fight a better funded adversary all the way through the legal process. Legal expenses can be high, as well as causing a drain on other resources (time, opportunities, and so forth).

Very little happens quickly. It can take years before a case is scheduled, or a jury selected, that is capable of having some understanding of the matter. An actual decision could take even longer. And the narrative rarely ends with an initial ruling: There is almost always room for an appeal, a higher court, and even more expense as the saga continues.

The best way to illustrate how protections can be challenged is to look at some examples of where this was done in surprising or unexpected ways. In all cases, these are meant to illuminate the possibilities, and not weigh in for either side.

It should also be noted that some of these cases are still being appealed and/or working their way through the legal system — so the ultimate outcome may still be up in the air. If you are faced with a similar issue, you should always consult legal counsel and nothing here is meant to represent or replace that.

Copyright challenges

You can legally protect your IT IP. But should you?

One of the oldest forms of intellectual property protection, copyright is also one of the simplest. It is typically thought that if you can print it or describe it with words, then you can copyright it.

The first catch, however, comes from the simplicity inherent in the way the protection is granted. By default, copyright is automatically granted to the creator of the work at the moment of creation. The process of submitting to the copyright office is helpful, but unnecessary for the protection to apply.

A few years ago, four friends — two couples — went to an amusement park on a warm summer's day. Just as they were about to get on the roller coaster, one of the men secretly handed his phone to the other and told him to record the next few minutes.

As the ride started, the now phoneless man proposed to his girlfriend and used the analogy of how life is a roller coaster and he wanted to ride the ups and downs with her for the rest of their lives. It was a beautiful moment preserved on video, and the newly engaged couple posted it online for all to see.

The video quickly found traction on social media and was starting to go viral when a producer of a national talk show saw it — and began discussions to have the engaged couple on the show. While the couple themselves were charming, the real entertainment value was in the video.

Talks progressed smoothly until the subject of posting the video on the show's website came up. It was then that the show decided to take a pass. They did so because the engaged couple did not possess a copyright on the video: It was owned by the creator.

The friend who was using the phone handed to him just for that purpose, even though he never touched that phone again and had no real claim to it, is technically the copyright holder. The producers did not want to negotiate with the friend and risk a scenario in which they had to pay money for rights to a video everyone else was watching for free.

If the friend had been paid for taking the video — even a nominal amount — then it might be possible to argue that a work-for-hire arrangement existed and copyright belonged to the engaged couple. Situations such as these, however, are rarely clear cut.

A classic example of copyright belonging to the creator is the case of the "selfie monkey" in which a wild monkey took his own photograph with a photographer's camera. The result is a very funny photo possessing great commercial value in terms of calendars, art, greeting cards, and so forth.

PETA (People for the Ethical Treatment of Animals), however, decided to represent the wild monkey and sued on his behalf as the copyright owner of the image. In a settlement, it was agreed that 25 percent of revenue from the image would be allocated to animal causes. Additional information about the case is available online.

You can legally protect your IT IP. But should you?

Within the IT world, one of the largest and most complicated cases arose when SCO Group filed lawsuits against many rivals (IBM, Novell, and others) claiming that code in the Linux kernel mirrors code in the Unix kernel. SCO claimed ownership to the copyright for the Unix code.

A plethora of issues leaped to the surface during this disagreement and, basically, SCO lost on almost all counts. Among the issues was the fact that some of the original Unix code was written prior to the advent of current copyright laws (pre-1976) and covered by different licenses.

The next issue was that Bell Labs is where Unix originated, but they sold Unix to Novell. Novell then used it to create a port called UnixWare. Novell sold all of UnixWare to SCO, but the wording of the sale contract was ambiguous as to who would own the copyright to the actual Unix (not just UnixWare).

While SCO thought they owned everything, Novell thought they retained the copyright. A judge ruled that Novell did indeed retain copyright to Unix, and that a third party (SCO in this case) cannot file a suit on behalf of another. Never mind that that is exactly what PETA did for the selfie monkey. By the judge's ruling, therefore, only Novell could file suits against other companies — and Novell had no interest in so doing.

The issue also arose as to how much code can be mirrored between two programs before it violates copyright. Naturally, there will be lines with "if" statements, as well as standard lines of code, but at what point is this coding from scratch versus cut and paste?

An examination was done on consecutive lines of code for similarities, but — at least allegedly — only found matches in headers, comments, and other areas not ripe for copyright protection. In more recent years, 11,330 lines of Java have been shown to appear in the Android operating system, but the courts have ruled that this falls under the "fair use" clause and Google/Alphabet is not violating Oracle's copyright by doing so. Additional information about this case is available online.

Trademark challenges

You can legally protect your IT IP. But should you?

A trademark is meant to protect words, phrases, symbols, or designs identifying the source of products, goods, or services and allow them to be distinguished from those of others. It cannot be used for generic wording or what could be considered descriptive wording. You can't trademark "add butter," for example.

Despite all of that, Ohio State University was famously just awarded a trademark for the most generic word of all — the word "the" — despite it going against everything that trademark protection is intended to be. Additional information about this case is available online.

This illustrates the subjective nature of the protection, but not nearly to the extent that Jurin vs. Google does. To protect a trademark, the holder is obligated to go after every breach of it and get the harming party to stop.

If, for example, I were to trademark "Dulaney Tape," then I would be obligated to fight anyone marketing not only Dulaney Tape without permission, but also "Delaney Tape," "Doolaney Tape," and anything else the market might be confused by. Otherwise, I will risk degrading the value of the mark.

At issue with Jurin vs. Google is that Jurin has a made up word trademarked for their product (styrotrim) and Google's marketing tools recommend that trademarked word as a keyword (AdWord) to competitors attempting to lure searchers to other products.

Surprisingly, the courts have sided with Google even though doing so allows competitors to infringe on Jurin's trademark. This seemingly contradicts the protection altogether and it is difficult to imagine another medium in which this could happen so openly. Additional information about this case is available online.

Patent challenges

One of the biggest weaknesses of patent protection is that you are required to file for it in order to have it (as opposed to a copyright). The catch is that completing such a filing requires you to share with the world the most minute details of what you have created. In other words, you must not only tell what you've created, but exactly how it can be replicated.

For this reason, I know of some small companies that have purposely chosen not to seek patents for some amazing things they have created. They know that filing would create competition (by telling others how to do exactly what they are doing) and they accept that they do not have the monetary resources to battle a more well-funded rival through the legal system.

Such innovators deliberately keep their developments private based on the calculation that this will hold back others from catching up. Famously, the lubricant WD-40 has never been patented for these very reasons. (Additional information is available online.)

You can legally protect your IT IP. But should you?

A second weakness is that sometimes patents are granted that have a large reach for something seemingly trivial. When this happens, it is known as a "frivolous" patent but the protection it provides can hinder development, or advancement, of other technologies in a substantial way.

One of the most questionable cases in this category would be Amazon's early patent on its 1-click purchase technology. Up until 2017, other online retailers wanting to implement a single-click purchase were required to license the technology from Amazon. It is decidedly questionable whether this really meets the criteria of what patent protection was intended for.

It has been argued, for example, that this is really just a way of completing a purchase — and that other media (magazine subscription cards, for example), have existed for years prior that allowed you to commit to a transaction through a single action. Whether Amazon helped or hurt the market with this particular patent has been a subject of debate for years. Additional information about this case is available online.

Weighing your options

The three forms of intellectual property protection discussed are intended to give individuals and firms a means of protecting their intellectual assets. Problems frequently arise, however, from the interpretation of these protections not always being definitive or clear-cut.

Because of these ongoing ambiguities, it is important for IT firms and others to weigh their options carefully before seeking protection. Each individual or organization must determine the best course of action for their specific situation — when to fight, how to fight, or even whether to fight

About the Author

Emmett Dulaney is a professor at Anderson University and the author of several books including Linux All-in-One For Dummies and the CompTIA Network+ N10-008 Exam Cram, Seventh Edition.

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