March 16, 2016 – Patent. Copyright. Trademark. Trade secret. License. Right to Privacy.

The words are familiar, and part of every lawyer’s legal lexicon. They permeate the business world. But how well do you really understand them? How quickly can you tell your client if an invention is patentable, and if so, how to do it? Or what to do with it, once it is patented? How confidently could you advise a client about keeping trade secrets? Would you know where to turn for fast and accurate answers?

Now you know. It’s all explained by experienced attorney-authors in Intellectual Property in Wisconsin from the State Bar of Wisconsin PINNACLE^®, newly revised and expanded for 2016.

What do Jeffery Dahmer, Billy Joel, and Andy Griffith have in common?

Short answer: they have all been subject to intellectual property litigation in Wisconsin.

As explained by John D’Antico in chapter 5 (discussing the “Right to Control Publicity”), the father of Jeffrey Dahmer, notorious Wisconsin serial killer, wrote a book about the murders, a book he dedicated to the victims and said he intended to donate a portion of profits to their families. Several family members sued, contending that their names could not be used for profit without their consent. For reasons set out in the chapter, the federal district court dismissed the action.

As for singer Billy Joel, he tried to block the vendor sales of unauthorized merchandise bearing his name or likeness. As D’Antico explains, Joel succeeded where the Dahmer family could not. To find out why, turn to chapter 5 of Intellectual Property in Wisconsin.

Finally, there was the case of Andy Griffith, a/k/a “Andy Taylor,” the affable sheriff of TV’s fictional Mayberry, North Carolina. In that case, a candidate for sheriff of Grant County, Wisconsin, legally changed his name to that of the actor. The newly minted Wisconsin-based Andy Griffith ultimately lost the election, though his troubles did not end there. He found himself being sued in federal court by the original, who did not take kindly to his name being bandied about. But “Sheriff Taylor” ultimately lost as well, for reasons set out in chapter 7 by Hillary Wucherer and Heather Stutz.

No word, though, on whether Opie, Aunt Bea, or Otis testified.

Telling Trademarks from Copyrights from Patents – and What Is “Trade Dress” Anyway?

Short answer: it depends on the intellectual property you’re trying to promote and protect.

“The paramount distinction between trademark and copyright,” say Dirk Vanover and Shailaja Reddy in chapter 1, “relates to the nature of what is protected.” Copyright is intended to protect an author’s original authorship or expression, while a trademark protects words, symbols, and the like that are used to identify goods or services.

Meanwhile, “a patent,” according to Michael Gratz, Timothy Newholm, and Michael Griggs in chapter 3, “is a … legal document issued by the government that gives the patent holder the right to exclude others from practicing [an] invention.”

And as for trade dress, in chapter 2, Joe Heino describes it as “the overall appearance or image of a product or service,” i.e., the “dressing of a product.” Something to share at a cocktail party, perhaps. At least with other lawyers.

What Can Be Licensed, and How?

Short answer: nearly any intellectual property in almost any way imaginable.

“The owner of a valid intellectual property right,” note attorney-authors Michael Gratz and Brad Meyer, “nearly always has sole authority to decide who may exercise the right.” And if that owner lacks the equipment, facility, or desire to make and sell the idea or item covered by that right, he or she can authorize someone else to do so, via a negotiated agreement known as a license.

The form a license can take, from rights granted to compensation paid, is very broad. Generally speaking, it will address the subject being licensed, the licensee, and how, where, and when the subject is to be used. It can be exclusive or limited, world-wide or confined to a particular area. As with any contractual agreement, the devil is in the details, and the careful lawyer will open his or her copy of Intellectual Property in Wisconsin, and turn to chapter 6.

Where Can You Get a Copy of the Book?

Intellectual Property Law in Wisconsin is available in print to members for $149 and to nonmembers for $189, and online via Books UnBound^®, the State Bar’s interactive online library.

Subscribers to the State Bar’s automatic supplementation service will receive future updates at a discount off the regular price. Annual subscriptions to Books UnBound start at $159 per title (single-user price; call for full-library and law-firm pricing).

To order or for more information, visit the WisBar Marketplace or call the State Bar at (800) 728-7788 or (608) 257-3838.