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This question posed by the title of this post can be a very tricky one to answer because both patents and trade secrets can provide strong and valuable protection for ideas. But patents and trademarks have different risks and costs involved, and it usually is these risks and costs that drive the decision whether to protect an idea by obtaining a patent, or by relying on the trade secret laws.

First, a few definitional points. As a general proposition, a patent protects an idea reduced to practice (i.e. the invention) that is novel and not obvious. A patent allows its owner to prevent others from using the invention covered by the patent (i.e. practicing the patent) for the term of the patent, which general is 20 years for a utility patent and 14 years for a design patent. Once the term of the patent is over, the invention embodied in the patent goes into the public domain.

A trade secret is any technical, scientific or business data which is not generally known to the public, provides economic value to the owner, and is protected by reasonable means to keep it secret. The information and invention embodied in a patent is completely disclosed to the public when the patent is issued, and anyone who reads the patent will know how to practice the invention. By contrast, as the term implies, the essence of a trade secret is secrecy – the trade secret information is valuable because it is secret. Trade secrets do not have a specified term, but are protected for as long as the trade secret information remains secret.

Obtaining trade secret protection does not require any formal application or registration process – the protection comes into existence upon development of the protected information and the implementation of measures to keep the information secret. In contrast, patents are issued by the United States government, so obtaining a patent requires an application to the federal Patent and Trademark Office. The preparation and prosecution of a patent application can be quite expensive and time consuming in many cases.

So which is better, a patent or trade secret? That question can only be answered in true lawyer fashion, it depends.

All patents start out as trade secrets up until the time a patent is issued. But trade secret protection can be lost through independent discovery, accidental disclosure, or in some cases even unauthorized publication (i.e. theft of the trade secret). Most have heard of the term “reverse engineering” – while that phrase can have negative connotations in some contexts, it is perfectly legitimate for business competitors to “reverse engineer” their competitor’s products and, if trade secrets are discovered, trade secret protection is lost. So if reverse engineering is a concern or there is a risk of public disclosure notwithstanding the measures taken to protect secrecy, patent protection rather than trade secret protection may be the preferred path. But many start-up businesses may not have the financial resources to obtain a patent (which often can cost tens of thousands of dollars) so the business may have no choice but to rely on trade secret protection. Likewise, if the period for which the business’ technology has value is short (or at least shorter than the term of a patent), trade secret may be the better option.

Because a patent provides the right to the owner to exclude all others from practicing the patented technology, it provides very strong protection (especially if the scope of the patent is broad). Patents also usually are the preferred basis for licensing agreements. But because a patent involves public disclosure, competitors are given a roadmap how the patented invention works and legitimately can try to design around a patent. This is especially a risk with narrow patents in crowded fields. And there can be significant cost involved in trying to enforce a patent through patent infringement litigation.

The bottom line is the determination of whether a business should seek a patent or rely on trade secret protection must be made on a case-by-case basis with respect to the information involved, how the information will be commercialized, and the financial resources of the business.

The United States Supreme Court issued its decision today in the case of Petrella v. MGM, in which it held (by a 6-3 decision) that the doctrine of laches is not a complete bar to a claim for copyright infringement.

After retiring from boxing, Jake LaMotta worked with his friend Frank Petrella to tell the story of LaMotta’s career. Their venture resulted in two screenplays and a book. The Supreme Court case concerned a screenplay registered in 1963.

MGM ultimately acquired the motion picture rights to the book and both screenplays. In 1980, MGM released the film Raging Bull. Petrella died in 1981 and his renewal rights reverted to his heirs; Paula Petrella is Frank’s daughter. Petrella renewed the copyright in the 1963 screenplay in 1991. In 1998, Petrella informed MGM that she owned the copyright to the 1963 screenplay. In 2009, Petrella sued MGM, alleging that the company continued to infringe her copyright in the 1963 screenplay by using, producing, and distributing the film. Petrella sought relief only for acts of infringement occurring after January 2006. MGM moved for summary judgment on the basis of laches. The trial court found that laches barred the entire suit and the 9th Circuit agreed.

The Supreme Court found that the 9th Circuit erred in failing to recognize that the copyright statute of limitations itself took account of delay. The Court held that, in the face of a statute of limitations enacted by Congress, laches could not be invoked to completely bar legal relief. The Court explained that it was not incumbent on copyright owners to challenge each and every actionable infringement. Even if an infringement was harmful, the harm might be too small to justify the cost of litigation. A copyright owner was allowed to defer suit until litigation was worth it.

The statutory scheme of the Copyright Act secured to authors a copyright term of long duration and a right to sue for infringement occurring no more than three years back from the time of suit. The Supreme Court found that the statutory scheme left little place for an equitable doctrine that would further limit the timeliness of a copyright owner’s suit and completely bar relief. The Court explained that in extraordinary circumstances, the consequences of a delay in suing could be of sufficient magnitude to warrant curtailment of the relief equitably awarded, and that a copyright owner’s delay in commencing suit could be taken into account in determining appropriate injunctive relief and assessing profits.

The complete opinion can be found here: http://www.supremecourt.gov/opinions/13pdf/12-1315_ook3.pdf

The answer generally is yes, so long as the photograph or snapshot has sufficient “expressive content” to make the photograph original. But the other side of this coin is that the copyright protection only extends to the “expressive content” of the photograph, and not to the underlying factual content of the photograph, so that only the “expressive content” can be infringed.

The recent decision out of New York in Harney v. Sony Pictures illustrates these concepts. The photograph at issue in the Harney case was taken by Harney of a man named Christian Gerhartsreiter who had his daughter on his shoulders on Palm Sunday, with a palm in her hand and a church in the background. Gerhartsreiter was the man who had falsely masqueraded as a member of British aristocracy and then as a member of the Rockefeller family.

Sony Pictures made a TV movie about Gerhartsreiter and publicized it with an image of a father carrying his daughter on his shoulders that clearly was based on Harney’s photograph, but was not an exact copy. To determine whether Sony Pictures had infringed Harney’s photograph, the court in Harney “dissected” Harney’s photograph and determined what was “expressive content” and what was factual content. The court determined that the factual content of the photograph was the subjects, the setting, the poses, the background and the “expressive content” was the photographer’s “aesthetic flair” concerning such things as composition, lighting, shading, and use of color.

Ultimately, the court concluded that the images Sony Pictures used to promote its TV movie copied the factual content of the Harney photograph, there was no infringement because Sony Pictures had not copied any of the “expressive content.” In so holding, the court emphasized that to find otherwise would give photographers exclusive rights in ideas embodied in their photographs, which is not permitted under the copyright laws.