— Jessica Gutierrez Alm, Attorney
New ideas, creations, and business ventures are often the product of collaboration. If lawyers had their way, a written agreement would precede every creative collaboration. Of course, this is not the case. Collaborators often do not seek advice of counsel, or see the need for an agreement, until after the new idea, creation, or venture is well underway. As a result, statutes and case law operate to define the joint ownership rights. Each type of IP affords slightly different rights to joint owners.
A patent, whether design or utility, provides the patent holder with the right to exclude others from making, using, selling, offering to sell, and importing the patented invention. Where a patent is owned by multiple entities, each joint owner has the right to independently license any of these rights. Moreover, patent joint owners do not have a duty to account to one another. This means that joint owners do not have to share profits with one another. However, the consent of all owners is generally needed to sue to enforce the patent. In practice, this means that one joint owner can block others from suing. Consent of all owners is also needed to exclusively license the patent.
A copyright holder has a set of rights, including the rights to reproduce, distribute, make derivative works of, perform, and display, the copyrighted material. Similar to patents, each joint owner of a copyright may individually exercise these rights without consent of other joint owners. Each joint owner may additionally license these rights. However, there is one notable difference from patent law: the duty to account. Each joint copyright owner has a duty to share profits obtained from the copyright with all joint owner. Another distinction from patent law is that joint copyright owners may each sue to enforce the copyright without consent of other owners. However, consent of all owners is also needed to exclusively license the copyright.
Due to the nature of trade secrecy, the law of joint ownership of trade secrets is not as well defined as with patents and copyrights. In general, case law suggests that joint owners of a trade secret may each use the trade secret for their individual business purposes. However, it is unclear whether joint owners have a duty to account. While consent of all joint owners is likely not needed to sue for misappropriation of the trade secret, the owners must consent to exclusively license the trade secret.
The prospect of a jointly owned trademark is something of a different nature. By definition, a trademark is an identifier of a single source. While multiple parties can own a trademark, if each party is permitted to use the mark independently in the marketplace, by definition, the mark is no longer designating a single source. Additionally, the law is unclear on whether joint trademark owners have a duty to account, or whether they must consent for an infringement suit. In many cases, a co-branding agreement may be a good alternative to a jointly owned trademark registration. Alternatively, multiple parties may want to jointly own a single entity, which in turn owns the mark.
Jointly owned trademarks are rare, but not unheard of. Arguably the most famous jointly owned trademark is owned and maintained by two competitors. DC Comics and Marvel Comics have co-owned the mark SUPER HEROES for decades. This seems a strange duo since the two companies are not only direct competitors, but also the only major players in the comic book realm. Nonetheless, the two entities have jointly owned the mark since 1979, and are known for diligently enforcing it. Some wonder if this is an example of trademark misuse, as SUPER HEROES does not designate a single source. A consumer might identify a product with SUPER HEROES as being from either DC Comics or Marvel Comics. The companies’ fierce enforcement efforts may be an attempt to head off an inevitable genericness fight.