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Practical on Copyrights and Trademarks
 

Practical on Copyrights and Trademarks

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Explores factors related to copyrights including what is protected, the company development cycle, rights and registration. Trademark factors include what is protected, common law rights, ...

Explores factors related to copyrights including what is protected, the company development cycle, rights and registration. Trademark factors include what is protected, common law rights, registration, clearance searches and filing strategies.

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    Practical on Copyrights and Trademarks Practical on Copyrights and Trademarks Presentation Transcript

    • Series 3 Practical on Copyrights and Trademarks By: Attorney Advertising Wayne Kennard Zachary Piccolomini
    • Copyrights – What is protected? • Copyrights protect original works of authorship, including: • • • • • Presentations Company operating/instructional manuals Whitepapers Computer software Screen displays and graphical user interfaces • Does not protect facts, ideas, systems, or methods of operation • Although it may protect the way these things are expressed © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 2
    • Copyrights – What is protected? • Does not protect company names • May be protected by trademarks • Question: • Company A and Company B come up with exactly the same copyrightable computer software program. Company A did it on March 1 and Company B did it on March 10. Who owns the copyright? • What factors would change the ownership result? © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 3
    • Company Development Cycle Alpha Stage [Internal Review/Testing] 1. Provisional Pat. Appln. Beta Stage [Selective Customer/Client Testing] Production Stage [Public Use: Sales and Licensing] 1. Provisional Pat. Appln. 1. Provisional Pat. Appln. 2. Utility Pat. Appln. 2. Utility Pat. Appln. 2. Copyright Protection 3. Copyright Protection 3. Copyright Protection 3. Trade Secret Protection 4. Trade Secret Protection 4. Trade Secret Protection Update Stage 1. Provisional Pat. Appln. 2. Utility Pat. Appln. 3. Copyright Protection 4. Trade Secret Protection © 2014 Wilmer Cutler Pickering Hale and Dorr LLP Provisional Converted to Utility WilmerHale 4
    • Copyrights – Automatic Rights • Rights automatically vest upon creation. • Provide copyright notices on: • GUIs/screen displays • Manuals, brochures, and other documents that generally published or going to particular third parties • For software-based product/service offerings, the company should embed plain language copyright notices in (1) uncompiled source code and (2) compiled code © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 5
    • Copyrights - Formal Registration • Formal registration is optional, but has advantages: • (1) Access to statutory damages • • $750-$30K per occurrence without proving actual damages Can increase to $150K per occurrence for willful infringement • (2) Shows investors that the company is sophisticated • To register online, go to the Copyright Office website at www.copyright.gov and click on “Electronic Copyright Office” (Registration Walkthrough Coming Up) • Filing fee is $35 online, compared to $65 for paper filings © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 6
    • Copyright Registration for Softwarebased Products U.S. Copyright Office Circular 61 (see Exhibit) • Provides special rules for registering software-based product/service offerings • Filing requirements: • Application • Non-refundable filing fee • Non-returnable deposit • • If includes trade secrets, can block out trade secret portions If want to register screen displays, the company need not specifically reference the screen displays (alternatively, the company can reference the screen displays, but then must also include identifying materials) © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 7
    • Copyright Registration U.S. Copyright Office Circular 12 (see Exhibit) • Recordation of Transfer and Other Documents • Transfer of copyright ownership • Filing requirements: • Document must have the original signature (or proper certification of a photocopy) • Document must be complete • Document must be legible • Pay the filing fee © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 8
    • Copyright Registration Copyright Registration Walkthrough © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 9
    • Trademarks – What do they protect? • A trademark is a word or phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of: • Goods of one party from the goods of others (trademark) • A service rather than goods (technically a “servicemark”) • Goods include physical goods, such as: • Pharmaceutical products • Computers • Services include non-physical functions, such as: • Financial planning • Landscaping © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 10
    • Trademarks – Common Law Rights • Registration is not required – a company can establish rights in a mark based on use of the mark in commerce • May allow company to challenge a trademark registration or application • Company can mark the trademark with “TM” • Typically geographically restricted to actual use © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 11
    • Trademarks – Registration • Registration with the US Patent and Trademark office provides several advantages: • A legal presumption of ownership of the mark • An exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration • The ability to bring an action in federal court • The right to use the federal registration symbol ® • The right to prevent others from using your trademark in URLs • Registration gives an investor comfort to know that they can freely use the trademarks • Also shows sophistication of the company © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 12
    • Trademarks – Clearance Searches • Trademark applications are compared against other: • Trademark Registrations (Live) • Trademark Applications • Trademarks can also be opposed by common law trademarks • Cost saving tip – company can perform its own clearance search • Search the trademark office – go to http://www.uspto.gov/trademarks/index.jsp and click on “Trademark Search” • Search the internet • Search the secretary of state for major states (e.g., MA, DE, or other states of interest) © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 13
    • Trademarks - Filing • Can file online by completing the online form at http://www.uspto.gov/teas/teasplus.htm (Trademark Application FilingWalkthrough Coming Up) • Typically file: • On principal register • With a “standard character” designation • With one or more classes of goods/services ($275 per class) © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 14
    • Trademarks - Filing • Class descriptions are at: • http://www.uspto.gov/trademarks/notices/international.jsp • Can either write out a description of the class, or adopt one from the USPTO • Recommend working with an attorney to select the class(es), and to draft the description of each class if the classification cannot be easily found online © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 15
    • Trademarks – Filing Strategies • Need not use the trademark – can file an “intent-touse” application (Recommended) • Best option is to file (1) on principal register for (2) standard character trademark. Alternatives include: • Using a stylized mark (e.g., designs, pictures, etc.) • Seeking registration on the supplemental register • Can seek help of an attorney to respond to rejections, which may include: • Arguing against “likelihood of confusion” with another mark • Arguing against descriptiveness of the mark • Rewording the description of the classes of goods/services © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 16
    • Trademark – Filing Trademark Filing Walkthrough © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 17
    • Technology Checklist for Start-Up Companies When and why to use the Technology Checklist for start-up companies © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 18
    • Questions? Wayne Kennard 617-526-6183 wayne.kennard@wilmerhale.com Zach Piccolomini 517-526-6027 zachary.piccolomini@wilmerhale.com Wilmer Cutler Pickering Hale and Dorr LLP is a Delaware limited liability partnership. WilmerHale principal law offices: 60 State Street, Boston, Massachusetts 02109, +1 617 526 6000; 1875 Pennsylvania Avenue, NW, Washington, DC 20006, +1 202 663 6000. Our United Kingdom offices are operated under a separate Delaware limited liability partnership of solicitors and registered foreign lawyers authorized and regulated by the Solicitors Regulation Authority (SRA No. 287488). Our professional rules can be found at www.sra.org.uk/solicitors/codeof-conduct.page. A list of partners and their professional qualifications is available for inspection at our UK offices. In Beijing, we are registered to operate as a Foreign Law Firm Representative Office. This material is for general informational purposes only and does not represent our advice as to any particular set of facts; nor does it represent any undertaking to keep recipients advised of all legal developments. Prior results do not guarantee a similar outcome. © 2014 Wilmer Cutler Pickering Hale and Dorr LLP © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 19