PROTECTING YOUR COMPANYS INTELLECTUAL PROPERTY ASSETS
THE POWER CONFERENCEWomen Doing BusinessSeptember 1, 2010
PROTECTING YOUR COMPANYS INTELLECTUAL PROPERTY ASSETSWorkshop Presented by Barbara I. Berschler Barbara I. Berschler 2010Subjects to Be CoveredWhat 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).3How 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.4What 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 worksSound recordings (3rd party works)[Note: this is not a complete list of works eligible for copyright protection!] 5What 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).6What Kind of Intellectual Material Is Protected by Copyright?Expression of the idea, not the idea itself.
Work that is original to the author.
In the works development there was a minimum level of creativity involved.7How Long Does Copyright Typically Last?For individuals: life of the author plus 70 years.
For entities: 95 years from publication.8What 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.)9How 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 and you have a prior written assignment of the copyright from the creator.By inheritance.10What Is Copyright Notice? Why Do It? Easier to prove willful infringementMay deter potential infringersPlace copyright notice on the 1st published editionNotice has 3 elements:Copyright symbolOwners name (may be different from author)Year of publication11Why 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 itCertain proofs easier to makeStatutory damages may be availableAttorney fees may be available12What 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).13What 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.
14What Steps To Take Against An Infringer?Send cease and desist letterDemand payment of licensing feeInstitute a lawsuit to obtain:InjunctionActual DamagesStatutory DamagesAttorney Fees15What 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.16What 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.17What 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.
18What 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
19What 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.20What Can Be a Trademark?WordsStaplesSeries of lettersCBSSeries of numbersmodel number
LogosPictureSunmaids girlDesignBurberrys plaidSymbolNikes swooch
SoundNBC chimesNameDellNicknameVWs BeetleColorPink for insulationTrade DressFranchised Restaurant Theme21Strong vs. Weak MarksStrong 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).22How to Come Up With a Strong Mark?Made up words: Xerox, Kodak, AmtrakFanciful/Arbitrary: Apple computer, Penguin booksSuggestive: Joy detergent/perfume, Ivory soap, Hard Rock CafDesigns: Nikes swoosh23What Is Involved With Applying For Federal Registration?Conduct search before you fileSpecify the goods or services being offeredIdentify what international class(es) appliesIndicate first use and first use in commerceIdentify ownerProvide drawing if mark has design elementProvide filing fee ($325.00 per international class)24What 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.25How 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.26What 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.27Under What Circumstances Could You Be Liable for Infringement?Adopting a confusingly similar mark to that owned by another.
Incorporating anothers mark into your mark.
Displaying anothers mark without their permission.28What 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.29What Are Some Examples of Trade Secrets?Customer and supplier listsBusiness and marketing plansSoftware developed for youInternal procedures you have developedTechniques and systems30What Must You Do to Protect the Trade Secret?Some measures you can take:Identify what is the trade secret you want to protectStamp documents confidentialHave employees and consultants sign confidentiality agreementsLock away sensitive materialsProtect computers with firewalls & passwordsAllow access only to those who need to knowFaithfully and strictly enforce your procedures31How 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.32What 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 contentCustomers contentThird party contentContract--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 contentConfidentiality obligationsIdentify each partys 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--vis any confidentiality obligations with your customers?Have you protected your own trade secrets with your emplo