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Chris Emerson
This article was developed by the Kentucky Bar Association (KBA) Intellectual Property (IP) Section. To learn more about the KBA IP Section, visit https://www.kybar.org/page/intellectualproperty.
IP Month
October 2024 (like October 2023) is proclaimed “Intellectual Property Month” by the Governor of the Commonwealth of Kentucky. This proclamation states that Intellectual Property (IP) has “a significant role in Kentucky’s economy” and “is represented by the knowledge, innovations, and inventions generated throughout the state.”[1]
Kentucky Pumpkins
There are many facets of IP that could be explored in relation to Kentucky, such as the innovations tangential to the bourbon trail, thoroughbred horses, and fried chicken, however, in the spirit of fall, we will explore an agricultural product of the Bluegrass State – pumpkins.
Pumpkins have long been part of U.S. Halloween and Thanksgiving celebrations.[2] They are an important component of fall decorating, which now ranks second in consumer spending to Christmas decorating.[3] Kentucky seems to be having a good year for pumpkins,[4] and this year the State Fair weighed-in the largest pumpkin at over 1,133 pounds,[5] so now is as good a time as any to discuss the IP tangential to this colorful crop.
Copyrights, Patents, Trade-secrets, and Trademarks for Pumpkins?
Copyrights, patents, trade-secrets, and trademarks may not be the first thing that comes to mind when discussing pumpkins and Jack-O-Lanterns, but indeed, an overlap exists.
U.S. copyright law requires a work to be (1) original and (2) fixed in a tangible medium for it to be protected.[6] “Original” has some legal connotations in relation to copyright law, but the threshold is generally whether a work (e.g., a Jack-O-Lantern, painted pumpkin, etc.) is independently created and has a “modicum” of creativity. “Fixed in a tangible medium” also has a legal meaning, but in short, both a carved Jack-O-Lantern and painted pumpkin would likely meet this requirement as they would each physically exist on a pumpkin (e.g., a fixed medium – not merely imaginative). By contrast, it is unclear how a physical pumpkin (e.g., without any alterations) could be considered “original” (created by an author) and/or “fixed in a tangible medium”, and therefore would not likely be eligible for copyright protection. Copyrights occur as soon as a work is created and is in tangible form, so it is possible that you already have a de facto copyright for a Jack-O-Lantern (or other work) without even knowing about it. That being said, if you want to further your copyright protection, you can optionally register it federally with the Copyright Office.
U.S. patent law provides for different types of patents, including plant patents, utility patents, and design patents.[7] A plant patent may be granted for a pumpkin that is a-sexually reproduced, invented or discovered in a cultivated state, distinct from other plants, non-obvious, and not excluded by statute.[8] However, and perhaps this is self-evident, but a plant patent would not be available for a carved Jack-O-Lantern. Conversely, a design patent for a pumpkin (e.g., the plant itself) would likely not be issued in view of the “article of manufacture” (e.g., made by man) requirement, however a Jack-O-Lantern design could theoretically satisfy this and other requirements for a design patent.[9] For example, a Jack-O-Lantern design that is sufficiently original, non-functional, and man-made (e.g., not simply plucked from the ground) could, at least theoretically, be eligible for design patent protection. With regards to utility patents, a pumpkin (alone and of itself) would not be eligible in view of the “patentable subject matter” requirement (e.g., requiring an invention to be a process, machine, manufacture, or composition of matter for utility patent eligibility).[10] Similarly, a Jack-O-Lantern (e.g., either the design or object) would likely not be eligible for a utility patent as it would not appear to have a “utility” (e.g., a practical use, such as a door lock)[11] even though it may be considered “manufactured.” If one really wanted a design or utility patent, Jack-O-Lantern carving kits, brushes, containers, etc., could potentially be more eligible subject matter, as they may be manufactured and have utility (e.g., the utility of decorating and/or storing a pumpkin).
U.S. trade-secret law requires a trade secret to 1) be commercially valuable as a secret, 2) be known to a limited group of people, and 3) be subject to reasonable steps taken by the rightful holder of the information to keep it secret, including the use of confidentiality agreements for business partners and employees.[12] Accordingly, pumpkin breeding methods, farm data, and crop production may all be subject to trade-secret protection if the necessary steps are taken. However, this protection is not limited to pumpkins, and could apply to other agricultural endeavors, including those involving livestock and/or other crops (e.g., corn, tobacco, etc.). Pumpkins, Jack-O-Lanterns, and other items which are shown and/or sold to the general public would likely not qualify for trade-secret protection. Trade secrets do not need to be registered to qualify for trade secret protection.
U.S. trademark law generally requires a mark to be distinctive, non-functional, and used in commerce (though trademark law may differ by state).[13] Accordingly, marks/brands for specific pumpkins, a particular pumpkin patch, and/or a Jack-O-Lantern carving kit could be eligible for trademark protection. Trademark rights are generally territorial, so for example, if a Kentucky farmer is growing and selling “Dreamsicle Pumpkins” exclusively in Kentucky, then an Indiana farmer may also grow/sell “Dreamsicle Pumpkins” in Indiana (but not in the Kentucky farmer’s territory). If the Kentucky Farmer were to federally register the “Dreamsicle Pumpkin” trademark, grow, and/or sell said pumpkins in Indiana prior to the Indiana farmer doing so, then the Indiana farmer may be precluded from using the “Dreamsicle Pumpkins” trademark in either Kentucky, Indiana, and/or possibly nationwide. Trademark requirements and protections may differ by states, but trademarks may optionally be federally registered for improved notice and potentially improved protection against infringers.
Each case is specific and requires a detailed and particular legal analysis by a legal professional. Examples and generalities discussed herein are not legal advice, and if you have an invention, work, brand, and/or secret that you believe has IP value, please consult an IP practitioner.
Conclusion
As nature develops the fall aesthetic, and related festivities develop in the coming months, there will be many opportunities to view IP developments in Kentucky. Whether you are riding on a tractor to pick a pumpkin, carving a Jack-O-Lantern, or cruising down the road and appreciating the natural beauty that Kentucky has to offer, you can take a second to think about the various IP protections that could apply to a particular device, brand, artwork, or secret, and perhaps think about ways in which you can innovate and develop something for which you can acquire your own IP protection.
[1] Governor Andy Beshear, IP Proclamation, October 2024.
[2] Cheryl Kaiser and Matt Ernst, Pumpkins, December 2018, at 1, https://www.uky.edu/ccd/sites/www.uky.edu.ccd/files/pumpkins.pdf
[3] Id.
[4] Ben Beddoes, Summer weather helping out pumpkins at Ky. Farm, WKYT, August 22, 2024. https://www.wkyt.com/2024/08/22/summer-weather-helps-out-pumpkins-bi-water-farm-greenhouse/
[5] Curadhan Powell, Officials crown the largest pumpkin and watermelon at 2024 Kentucky State Fair, WLKY, August 18, 2024.
[6] Sydney Blitman, Copyrightability of Jack-O-Lanterns, October 27, 2022. https://copyrightalliance.org/copyrightability-jack-o-lanterns/
[7] USPTO, Applying for Patents, April 27, 2023.
[8] USPTO, General Information About 35 U.S.C. 161 Plant Patents, September 22, 2017. https://www.uspto.gov/patents/basics/apply/plant-patent
[9] USPTO, Design patent application guide, November 16, 2017.
[10] MPEP 2107 (e9 r11. 2013)
[11] Id.
[12] Cornell, Trade Secret, June 2024.
[13] Cornell, Trademark, June 2024.