Power Conf 09 01 10 Workshop

THE POWER CONFERENCEWomen Doing Business

September 1, 2010

PROTECTING YOUR COMPANY’S INTELLECTUAL PROPERTY ASSETS

Workshop Presented by Barbara I. Berschler© Barbara I. Berschler 2010

Subjects to Be Covered

What is copyright?

What is a trademark?

What is a trade secret?

What are some contract/licensing drafting issues you may encounter?

What Is Copyright?

Exclusive rights granted by law to the creator (“author”) of a copyrighted work for a limited period of time.

Exclusive rights are to: reproduce, make derivative works, distribute, perform, display and transmit (sound recordings).

How Is Copyright Created and Protected?

In the U.S., copyright protection automatically attaches once a work is fixed in any tangible medium of expression provided the work meets certain minimum standards.

What Are Some Kinds of Works that Can Be Protected by Copyright?

Literary works (includes software applications)

Musical works (original music) Pictorial, and graphic works (look & feel of

webpage, photographs) Motion picture & audiovisual works Sound recordings (3rd party works)

[Note: this is not a complete list of works eligible for copyright protection!]

What Kinds of Works Are Not Protected by Copyright?

Ideas, procedures, systems, methods of operation, concepts, principles or discoveries (look to patents & trade secrets for protection).

Works in the Public Domain (expired copyrighted works, certain federal government works).

What Kind of Intellectual Material Is Protected by Copyright?

Expression of the idea, not the ideaitself.

Work that is original to the author.

In the work’s development there was a minimum level of creativity involved.

How Long Does Copyright Typically Last?

For individuals: life of the author plus 70 years.

For entities: 95 years from publication.

What Is a “Work Made for Hire?”

Work created by an employee in scope of employment.

Specially commissioned work that falls within one of nine categories: contribution to a collective work, motion picture, translation, supplementary work, compilation, instructional text, test, answers to test, atlas. (These works would be created by independent contractors.)

How Does a Non-Creator Come to Own the Copyright?

If an employee creates it, employer owns.

If it is a “work made for hire” and you have a prior written agreement to that effect.

If it is another kind of creative work andyou have a prior written assignment of the copyright from the creator.

By inheritance.

What Is Copyright Notice? Why Do It?

Easier to prove willful infringement

May deter potential infringers

Place copyright notice on the 1st published edition

Notice has 3 elements:

Copyright symbol

Owner’s name (may be different from author)

Year of publication

Why Register a Copyrighted Work with the Copyright Office?

Registration is not required to obtain copyright protection.

Registration in the U.S. accords benefits:

Cannot file a lawsuit to enforce without it

Certain proofs easier to make

Statutory damages may be available

Attorney fees may be available

What If More Than One Person Is Involved in Creating the Work?

To avoid problems, have a written agreement as to who will do what and stating it is intention of parties that it is a “joint work.”

If there is no written agreement, the law gives co-owners certain rights (undivided interest, exercise of exclusive rights, accounting for profits).

What Is Copyright Infringement?

Someone other than the copyright owner exercising one of the exclusive rights without the permission of the owner.

Unless there is a statutory limitation (fair use, reproduction by libraries), there may be strict liability.

What Steps To Take Against An Infringer?

Send “cease and desist letter”

Demand payment of licensing fee

Institute a lawsuit to obtain:

Injunction

Actual Damages

Statutory Damages

Attorney Fees

What If You Are Accused of Copyright Infringement?

There may be “technical” defenses available.

An important defense may be “Fair Use” such as for: criticism, news, comment, teaching, scholarship, research.

Try negotiating a settlement by paying licensing fee.

What Is A Trademark Or Service Mark?

A mark (word, design, sound) that indicates to the public the source of the goods or services being offered.

The mark must always be used in connection with the existing business or enterprise.

What Are the Purposes of Trademarks?

Public not confused as to source of goods or services.

Business distinguishes itself from its competitors.

Prevent others from taking a “free ride” on your good will.

What Do You Get When You Have A Trademark?

Exclusive right to use it with your goods or services

Valuable business asset (form of property)

Can be bought, sold, licensed

What Is the Difference Between Federal and State Trademark Law?

Trademark protection grew out of the “common law” (court decisions).

Some states do allow for registration (VA and MD yes; DC no).

Federal Registration is principally under the Lanham Act.

Federal protection only for marks used in interstate commerce.

What Can Be a Trademark?

Words Staples Series of letters CBS Series of numbers model number

Logos Picture Sunmaid’s girl Design Burberry’s plaid Symbol Nike’s swooch

Sound NBC chimes Name Dell Nickname VW’s Beetle Color Pink for insulation Trade Dress Franchised Restaurant Theme

Strong vs. Weak Marks

Strong marks are considered to be inherently distinctive, automatically public knows it is referring to a source.

Weak marks tend to be descriptive, not clear to public whether it is simply describing the goods or services or indicating source.

Generic terms cannot be trademarks, they ID the “thing” (aspirin, thermos, escalator).

How to Come Up With a Strong Mark?

Made up words: Xerox, Kodak, Amtrak

Fanciful/Arbitrary: Apple computer, Penguin books

Suggestive: Joy detergent/perfume, Ivory soap, Hard Rock Café

Designs: Nike’s swoosh

What Is Involved With Applying For Federal Registration?

Conduct search before you file

Specify the goods or services being offered

Identify what international class(es) applies

Indicate “first use” and “first use in commerce”

Identify owner

Provide drawing if mark has design element

Provide filing fee ($325.00 per international class)

What If You Have Not Used Mark In Interstate Commerce?

You can file an “intent to use” application.

This reserves the important filing date.

When you do start to use the mark in interstate commerce, you file a Statement of Use.

How Long Does Federal Trademark Registration Last?

10 years and is renewable indefinitely provided mark is continuously used.

Failure to timely renew and pay fee can lead to abandonment of mark.

What Must You Do To Protect Your Mark?

Continuously use it in connection with goods or services.

Police the use of your mark.

If licensing, monitor its use by others.

Address infringements.

Comply with the USPTO requirements.

Under What Circumstances Could You Be Liable for Infringement?

Adopting a confusingly similar mark to that owned by another.

Incorporating another’s mark into your mark.

Displaying another’s mark without their permission.

What Is a Trade Secret?

It is any valuable information that you have accumulated, discovered, developed, or generated in connection with the operation of your business that is not generally known; and

For which you take reasonable steps to preserve the secrecy.

What Are Some Examples of Trade Secrets?

Customer and supplier lists

Business and marketing plans

Software developed for you

Internal procedures you have developed

Techniques and systems

What Must You Do to Protect the Trade Secret?

Some measures you can take:

Identify what is the trade secret you want to protect

Stamp documents “confidential”

Have employees and consultants sign confidentiality agreements

Lock away sensitive materials

Protect computers with firewalls & passwords

Allow access only to those “who need to know”

Faithfully and strictly enforce your procedures

How Do Confidentiality Agreements Work?

As part of your efforts to protect trade secrets, you want to have all who will come in contact under a legal obligation not to disclose or use the trade secret without your permission.

Therefore, some non-disclosure obligation should be incorporated in agreements with potential buyer/sellers, contractors, consultants, employees likely to have access.

Such agreements must be carefully drafted not to be overly broad or else they may not be enforceable.

What to Look Out for inIntellectual Property Creation or Use Contracts?

Identify all parties to the contract and be sure the persons signing have the authority to do so.

Include definitions for important terms used in the contract. (Aim for consistency.)

To make enforceable, reference as part of the contract the attached Schedules that cover specifications of work, mile stones, delivery dates, deliverables, payment.

Contract--Continued (2)

• Anticipate how parties will handle delays in performance.

Identify procedures for delivery, changes to and acceptance of work product.

• Specify who owns what IP in final work product.

• Your original content

• Customer’s content

• Third party content

Contract--Continued (3)

Will the content creator indemnify the customer against 3rd party IP infringement claims?

What are the procedures for terminating the contract if either party defaults or for any other reason?

Contract--Continued (4)

What are the representations and warranties each party will make? Authority, no conflicts, originality, performance of

product, compatibility, no liens, no infringement, ownership of content

Confidentiality obligations Identify each party’s principal contact for

all forms of communication.

What Are Some Other Contract Issues To Keep In Mind?

Do you have rights or licenses for 3rd party material ?

Are your contractors also obligated vis-à-vis any confidentiality obligations with your customers?

Have you protected your own trade secrets with your employees and contractors?

Have you inadvertently created an “implied license”?

Are the services you are providing to your customers staying within the scope of any third party agreements you have?

Contact Information

Barbara I. BerschlerPress, Potter & Dozier, LLC

7910 Woodmont Avenue, Suite 1350301-913-5200

www.berschlerlaw.comwww.allrightsreservedblog.combberschler@presspotterlaw.com