SlideShare a Scribd company logo
1 of 40
Intellectual Property
    What New Business Leaders Need to Know


                         Presented by:

                    Matti Neustadt Storie
                          Attorney
                      Stoel Rives LLP
             Technology and Intellectual Property


                        January 28, 2010




1
What is it?

                     Trade Secrets



                     Ideas
                                             ™
                                     Under license
     Pat. Pending

                US Patent No. 6,366,389


    ©      Brand Names
                                               Expressions



2
How do you get it?

    •   INVENT IT – patents, trade secrets
    •   CREATE IT – copyright, trade secrets
    •   USE IT - trademark
    •   REGISTER IT – patent, copyright, trademarks
    •   BUY IT




3
What is it worth?

    • Commercial or Competitive Advantage
       – Monopoly rights
       – Exclusivity
       – Consumer Preference – Good Will
    • Generate Revenue
       – Licensing
       – Merchandising
    • Defensive Value
       – Cross Licensing
       – MAD


4
Invent It.

    PATENTS


5
Patents

    • A government grant of a limited right to exclude
      others from making, using, selling, offering, and
      importing the claimed invention
    • What a patent is not:
       – A right to “practice” your invention
       – You may not be free to practice your invention if it infringes
         someone else’s patent
    • A right to sue, not a right to do
    • “Flavors” of patents: utility, design, and plant


6
Patents

              • Where do inventions
                come from?
                – Necessity
                – Shortcomings of prior
                  solutions
                – Applications of new
                  technologies
                – Customer requests
                – Engineers

7
Patents

    • To obtain a utility patent, applicant must show that
      the invention is:
       – New
       – Useful
       – Nonobvious
    • New inventions have not been disclosed, or (in the
      U.S.) are applied for within one year of disclosure.
    • Non-obvious inventions means that it is not readily
      ascertainable by a “person of ordinary skill in the art”
      based on prior art.

8
Patents

    • Utility Patents – for useful inventions
       – Term of 20 years from earliest filing date (for new
         application)
    • Design Patents – for designs (cannot be usesful)
       – Term of 14 years from grant
       – Narrowly interpreted – best against knock offs that don’t
         include labels.
    • Average of 32 months from application to grant (all
      patents)




9
Key Patent Issues for
     Business Leaders
     • Patents must be registered – there is no common law
       right in an idea
         – First-to-invent system in the U.S.
         – One year grace period for filing
     •   Disclosure Requirements
     •   Cost
     •   Business Benefit / ROI
     •   Ownership/Inventorship
         – Employee is inventor
         – Employer will only own the patent under certain
           circumstances.
10
Hide It.

     TRADE SECRETS


11
Trade Secrets

     • Examples:
       –   Marketing and business plans
       –   Computer source code
       –   Secret recipes, formulas
       –   Product development efforts, including information about
           what doesn’t work (“negative information”)




12
Trade Secrets

     • A trade secret is something that gives a business a commercial
       advantage in the marketplace because it is secret.
     • A trade secret is a creature of state law, both common and
       statutory law.
     • Trade secrets may exist in either tangible or intangible form and
       creation of a trade secret depends on how the information is used
       and protected. No registration system is available.
     • Misappropriation and use of trade secrets may be subject to US
       state and federal law as well, e.g., the RICO statute, the Economic
       Espionage Act, and the Lanham Act.



13
Trade Secrets

     • A trade secret will only be protected by the courts if a
       business takes care to keep it secret!
     • How?
        –   Employment agreements
        –   Security and treatment of information
        –   Non Disclosure Agreements with third parties
        –   Limited Access
        –   Avoiding infection




14
Key Trade Secrets Issues for
     Business Leaders
     • Developing and implementing policies regarding the
       security of information.
     • Implementing systems to reduce the risk of disclosing
       trade secrets.
     • Drafting and using appropriate non-disclosure
       agreements with employees and third parties.
     • Appropriate use of Non-Compete Agreements with
       key employees.



15
Create It.

     COPYRIGHTS


16
Copyrights

     • Copyright protects “original works of authorship.”
     • What are “works of authorship”?
        – An idea or concept that is “fixed in a tangible medium of
          expression.”
        – What is fixed?
        – What is an expression?
     • Copyright protection only the EXPRESSION of the
       idea, and not the idea itself.
        – Monopoly rights in an idea are only granted through patents.



17
Patent vs. Copyright

     • Patent law allows the owner the right to exclude all others
       from making, using, or selling the invention. The scope
       of the invention is determined by the patent claims. It does
       not matter if the infringer independently developed the
       same invention.
     • Copyright law prevents the copying of the expression of
       ideas. Copyright law does not protect ideas themselves.
       As a result, copyright law does not protect against
       someone else stealing an invention, nor does it
       prevent anyone else from independently creating the
       same or similar expression.


18
Copyrights

     • An owner of a copyright has certain monopoly rights.
     • These rights include the right to:
        1. Reproduce the work;
        2. Prepare derivative works based on the original work;
        3. Distribute copies of the work by sale, rental, lease or
           lending;
        4. Perform the work publicly;
        5. Broadcast the work (in the case of a sound recording; and
        6. Display the work publicly.




19
Copyright

     • Ownership
       – The Works Made for Hire Doctrine
       – Works created by employees as part of their job are
         generally owned by their employers.
          • Government
          • Professors
       – However, paying a non-employee to create a work does
         NOT guarantee ownership of the copyright.
          • Consultants
          • Independent Contractors
          • Software Developers


20
Copyrights
     • Registration is not required to create a copyright interest.
     • Registration can provided added benefits
        – Required to file an infringement suit
        – Collect statutory damages and attorney fees.
     • Marking a work with a copyright notification symbol is
       also not required, but it avoids claim of “innocent”
       infringement.
        – If you place a copyright notice on a work, it should be as required
          by statute.
        – ©2009. Stoel Rives, LLP



21
Copyrights

     • Infringement          • Defenses
       –   Music Downloads     – Fair Use
       –   Linking             – Public Domain
       –   Framing             – Safe Harbor
       –   Tweeting




22
Key Copyright Issues for
       Business Leaders
     • Ownership
        – Copyright ownership is always vested in the author or creator of
          the work.
        – Right vest immediately upon fixation
     • Term
        – Life of the author plus 70 years (individual)
        – 120 years after creation or 95 years after publication (corporate)
     • Registration
        – Registration a prerequisite to suit, recovery of statutory damages
     • Infringement and Defenses

23
Use it.

     TRADEMARKS


24
Trademarks




25
Trademarks




26
Trademarks

     • Trademark law is a type of consumer protection.
     • Trademarks identify source of goods or services.
     • Consumers associate familiar sources with past
       experience and reputation.
     • Result: protection of the consumer from confusion as
       to source and quality.




27
Trademarks

        • An owner only has monopoly rights for the goods
          which are associated with the mark.
        • A mark is only protectable if it is inherently distinctive
          or has acquired distinctiveness (“secondary
          meaning”)




     Most                                        Least distinctive
     distinctive


28
Trademarks


     • United States                  • Abroad
        – Words                         – Words
        – Designs (Logos)               – Designs (Logos)
        – Packaging and Product         – Packaging and Product
          Configurations                  Configurations
        – Colors                        – Touch Marks
        – Sounds                        – Holograms
        – Fragrances                    – Taste marks
        – Combinations of the Above



29
Trademarks




30
Trademarks

     • Trademark rights exist as soon as a distinctive mark
       is used in commerce.
        – For descriptive marks, rights are gained after it can be
          shown that the mark has acquired distinctiveness.
     • Registration of a trademark is not required for an
       owner to have rights or to assert those rights.
        – However, it has benefits.




31
Senior
      User




32
Senior
      User




         Junior
     User Registered




33
34
After Incontestability: Senior
     user’s territory frozen from
     time junior user applied?
     Maybe.




35
Trademarks
     • Registration
        – Registration provides enhanced rights and constructive notice to
          the world.
     • Marking – ™ and ®
        – Marking can be a requirement for damages for infringement.
        – Erroneous marking may lead to lawsuits.
     • Use
        – Consistent use.
        – Trademarks are generally used as adjectives, not nouns and
          NEVER verbs.
             • Genericide


36
Trademarks

     • Infringement
        – Passing Off (counterfeiting)
        – Consumer Confusion
     • Actions for infringement based on counterfeit goods
       will only be available if the counterfeit goods are sold
       under the trademark.
     • The main test of infringement is whether the use of
       the allegedly infringing trademark creates consumer
       confusion.
     • Senior user generally has priority and can stop
       subsequent users.
37
Key Trademark Issues for
     Business Leaders
     • Ensuring no prior use of the brand you are seeking
     • Branding strategy
        – Don’t pick brands likely to infringe
        – Create and implement policies to protect your brand
     • Registration plan
     • Enforcement plan
        – It is true that if you don’t use it, you will lose it.




38
Key IP Issues for
     Business Leaders
     •   Make sure you own it.
     •   If not, make sure you have the right to use it.
     •   Utilize protections available.
     •   Careful contracting.
     •   Monitor your rights, and be prepared to enforce them.




39
Thank You!

            Matti Neustadt Storie
              Stoel Rives LLP
     Technology and Intellectual Property
               (503)294-9523
             mnstorie@stoel.com




40

More Related Content

What's hot

Intellectual Property Rights
Intellectual Property RightsIntellectual Property Rights
Intellectual Property RightsNishant Pahad
 
intellectual property rights
 intellectual property rights intellectual property rights
intellectual property rightsHamza Cheema
 
Intellectual Property for Businesses
Intellectual Property for BusinessesIntellectual Property for Businesses
Intellectual Property for BusinessesDavid Lizerbram
 
Fab Lab IP and Sharing Mechanisms
Fab Lab IP and Sharing MechanismsFab Lab IP and Sharing Mechanisms
Fab Lab IP and Sharing MechanismsPeter Troxler
 
Intellectual Property 101
Intellectual Property 101Intellectual Property 101
Intellectual Property 101ClientSide
 
Introduction to UK Intellectual Property Law
Introduction to UK Intellectual Property LawIntroduction to UK Intellectual Property Law
Introduction to UK Intellectual Property LawJane Lambert
 
Intellectual Property Protection for Products
Intellectual Property Protection for ProductsIntellectual Property Protection for Products
Intellectual Property Protection for ProductsJeremy Horn
 
Intellectual Property for Start-Ups and Small Businesses.
Intellectual Property for Start-Ups and Small Businesses. Intellectual Property for Start-Ups and Small Businesses.
Intellectual Property for Start-Ups and Small Businesses. Small Town Marketing.Com
 
Intellectual Property: Legal Bootcamp, December 2013
Intellectual Property: Legal Bootcamp, December 2013Intellectual Property: Legal Bootcamp, December 2013
Intellectual Property: Legal Bootcamp, December 2013This account is closed
 
Chapter16 intellectual-property
Chapter16 intellectual-propertyChapter16 intellectual-property
Chapter16 intellectual-propertyVin Voro
 
IP 101 for Startups
IP 101 for StartupsIP 101 for Startups
IP 101 for StartupsMark MacLeod
 
Ip & npd razaghi-ramezankhani-ghiassaleh-parvizian
Ip & npd razaghi-ramezankhani-ghiassaleh-parvizianIp & npd razaghi-ramezankhani-ghiassaleh-parvizian
Ip & npd razaghi-ramezankhani-ghiassaleh-parvizianOmid Aminzadeh Gohari
 
Intellectual property rights
Intellectual property rightsIntellectual property rights
Intellectual property rightsaviardh
 
Intellectual property rights
Intellectual property rightsIntellectual property rights
Intellectual property rightsHimanshu Pathak
 
Intellectual Property and Business Law
Intellectual Property and Business LawIntellectual Property and Business Law
Intellectual Property and Business LawNow Dentons
 
TRIPS-Patent,Trademarks,Industrial Design
TRIPS-Patent,Trademarks,Industrial DesignTRIPS-Patent,Trademarks,Industrial Design
TRIPS-Patent,Trademarks,Industrial DesignSony Mathews
 

What's hot (20)

Intellectual Property Rights
Intellectual Property RightsIntellectual Property Rights
Intellectual Property Rights
 
intellectual property rights
 intellectual property rights intellectual property rights
intellectual property rights
 
Intellectual Property for Businesses
Intellectual Property for BusinessesIntellectual Property for Businesses
Intellectual Property for Businesses
 
Fab Lab IP and Sharing Mechanisms
Fab Lab IP and Sharing MechanismsFab Lab IP and Sharing Mechanisms
Fab Lab IP and Sharing Mechanisms
 
Intellectual Property 101
Intellectual Property 101Intellectual Property 101
Intellectual Property 101
 
Introduction to UK Intellectual Property Law
Introduction to UK Intellectual Property LawIntroduction to UK Intellectual Property Law
Introduction to UK Intellectual Property Law
 
Intellectual Property Protection for Products
Intellectual Property Protection for ProductsIntellectual Property Protection for Products
Intellectual Property Protection for Products
 
Intellectual Property for Start-Ups and Small Businesses.
Intellectual Property for Start-Ups and Small Businesses. Intellectual Property for Start-Ups and Small Businesses.
Intellectual Property for Start-Ups and Small Businesses.
 
Intellectual Property: Legal Bootcamp, December 2013
Intellectual Property: Legal Bootcamp, December 2013Intellectual Property: Legal Bootcamp, December 2013
Intellectual Property: Legal Bootcamp, December 2013
 
Chapter16 intellectual-property
Chapter16 intellectual-propertyChapter16 intellectual-property
Chapter16 intellectual-property
 
IP 101 for Startups
IP 101 for StartupsIP 101 for Startups
IP 101 for Startups
 
Ip & npd razaghi-ramezankhani-ghiassaleh-parvizian
Ip & npd razaghi-ramezankhani-ghiassaleh-parvizianIp & npd razaghi-ramezankhani-ghiassaleh-parvizian
Ip & npd razaghi-ramezankhani-ghiassaleh-parvizian
 
Ipr
IprIpr
Ipr
 
Intellectual property rights
Intellectual property rightsIntellectual property rights
Intellectual property rights
 
Intellectual property rights
Intellectual property rightsIntellectual property rights
Intellectual property rights
 
Intellectual Property Rights
Intellectual Property Rights Intellectual Property Rights
Intellectual Property Rights
 
Introduction to IPR
Introduction to IPRIntroduction to IPR
Introduction to IPR
 
Patents burrone
Patents  burronePatents  burrone
Patents burrone
 
Intellectual Property and Business Law
Intellectual Property and Business LawIntellectual Property and Business Law
Intellectual Property and Business Law
 
TRIPS-Patent,Trademarks,Industrial Design
TRIPS-Patent,Trademarks,Industrial DesignTRIPS-Patent,Trademarks,Industrial Design
TRIPS-Patent,Trademarks,Industrial Design
 

Similar to Intellectual Property Basics

Protecting Your Start-Up Company's IP
Protecting Your Start-Up Company's IPProtecting Your Start-Up Company's IP
Protecting Your Start-Up Company's IPNow Dentons
 
Protecting Your Intellectual Property: How to Patent Your Copyright with a Tr...
Protecting Your Intellectual Property: How to Patent Your Copyright with a Tr...Protecting Your Intellectual Property: How to Patent Your Copyright with a Tr...
Protecting Your Intellectual Property: How to Patent Your Copyright with a Tr...Quarles & Brady
 
Monetizing Game User Interface Innovations in Enterprise Applications
Monetizing Game User Interface Innovations in Enterprise ApplicationsMonetizing Game User Interface Innovations in Enterprise Applications
Monetizing Game User Interface Innovations in Enterprise ApplicationsFrank Coppersmith
 
Maximizing and protecting ip
Maximizing and protecting ipMaximizing and protecting ip
Maximizing and protecting ipNerve2012
 
Maximizing and protecting ip
Maximizing and protecting ipMaximizing and protecting ip
Maximizing and protecting ipeophiladelphia
 
Intellectual Property Issues for Startups
Intellectual Property Issues for StartupsIntellectual Property Issues for Startups
Intellectual Property Issues for Startupstiparksv
 
Intellectual property basics presentation (practical law)
Intellectual property basics presentation (practical law)Intellectual property basics presentation (practical law)
Intellectual property basics presentation (practical law)jhreescnm
 
Understanding Intellectual Property
Understanding Intellectual PropertyUnderstanding Intellectual Property
Understanding Intellectual PropertyLocus Research
 
IP Basics for Businesses and Entrepreneurs
IP Basics for Businesses and EntrepreneursIP Basics for Businesses and Entrepreneurs
IP Basics for Businesses and EntrepreneursErica Bristol
 
We-Thought-You-Wouldn't-Notice-Webinar
We-Thought-You-Wouldn't-Notice-WebinarWe-Thought-You-Wouldn't-Notice-Webinar
We-Thought-You-Wouldn't-Notice-WebinarNanette Newbry
 
Kieran moore ip and contracts for web developers
Kieran moore   ip and contracts  for web developersKieran moore   ip and contracts  for web developers
Kieran moore ip and contracts for web developersImage X Media
 
Introduction to Intellectual Property and Patents
Introduction to Intellectual Property and PatentsIntroduction to Intellectual Property and Patents
Introduction to Intellectual Property and PatentsTT Consultants
 
Intellectual Property Slide Deck for Video Project
Intellectual Property Slide Deck for Video ProjectIntellectual Property Slide Deck for Video Project
Intellectual Property Slide Deck for Video ProjectBrouseMcDowell
 

Similar to Intellectual Property Basics (20)

Protecting Your Start-Up Company's IP
Protecting Your Start-Up Company's IPProtecting Your Start-Up Company's IP
Protecting Your Start-Up Company's IP
 
Lean IP
Lean IPLean IP
Lean IP
 
Protecting Your Intellectual Property: How to Patent Your Copyright with a Tr...
Protecting Your Intellectual Property: How to Patent Your Copyright with a Tr...Protecting Your Intellectual Property: How to Patent Your Copyright with a Tr...
Protecting Your Intellectual Property: How to Patent Your Copyright with a Tr...
 
13530912_2.PPT
13530912_2.PPT13530912_2.PPT
13530912_2.PPT
 
Monetizing Game User Interface Innovations in Enterprise Applications
Monetizing Game User Interface Innovations in Enterprise ApplicationsMonetizing Game User Interface Innovations in Enterprise Applications
Monetizing Game User Interface Innovations in Enterprise Applications
 
Got a great idea? Now what?
Got a great idea? Now what?Got a great idea? Now what?
Got a great idea? Now what?
 
Maximizing and protecting ip
Maximizing and protecting ipMaximizing and protecting ip
Maximizing and protecting ip
 
Maximizing and protecting ip
Maximizing and protecting ipMaximizing and protecting ip
Maximizing and protecting ip
 
Intellectual Property Issues for Startups
Intellectual Property Issues for StartupsIntellectual Property Issues for Startups
Intellectual Property Issues for Startups
 
Intellectual property basics presentation (practical law)
Intellectual property basics presentation (practical law)Intellectual property basics presentation (practical law)
Intellectual property basics presentation (practical law)
 
Ip 102 b
Ip 102 bIp 102 b
Ip 102 b
 
Understanding intellectual property
Understanding intellectual propertyUnderstanding intellectual property
Understanding intellectual property
 
Understanding Intellectual Property
Understanding Intellectual PropertyUnderstanding Intellectual Property
Understanding Intellectual Property
 
IP Basics for Businesses and Entrepreneurs
IP Basics for Businesses and EntrepreneursIP Basics for Businesses and Entrepreneurs
IP Basics for Businesses and Entrepreneurs
 
CS lec week 9.pptx
CS lec week 9.pptxCS lec week 9.pptx
CS lec week 9.pptx
 
We-Thought-You-Wouldn't-Notice-Webinar
We-Thought-You-Wouldn't-Notice-WebinarWe-Thought-You-Wouldn't-Notice-Webinar
We-Thought-You-Wouldn't-Notice-Webinar
 
Intellectual Property Considerations During Product Development
Intellectual Property Considerations During Product DevelopmentIntellectual Property Considerations During Product Development
Intellectual Property Considerations During Product Development
 
Kieran moore ip and contracts for web developers
Kieran moore   ip and contracts  for web developersKieran moore   ip and contracts  for web developers
Kieran moore ip and contracts for web developers
 
Introduction to Intellectual Property and Patents
Introduction to Intellectual Property and PatentsIntroduction to Intellectual Property and Patents
Introduction to Intellectual Property and Patents
 
Intellectual Property Slide Deck for Video Project
Intellectual Property Slide Deck for Video ProjectIntellectual Property Slide Deck for Video Project
Intellectual Property Slide Deck for Video Project
 

Intellectual Property Basics

  • 1. Intellectual Property What New Business Leaders Need to Know Presented by: Matti Neustadt Storie Attorney Stoel Rives LLP Technology and Intellectual Property January 28, 2010 1
  • 2. What is it? Trade Secrets Ideas ™ Under license Pat. Pending US Patent No. 6,366,389 © Brand Names Expressions 2
  • 3. How do you get it? • INVENT IT – patents, trade secrets • CREATE IT – copyright, trade secrets • USE IT - trademark • REGISTER IT – patent, copyright, trademarks • BUY IT 3
  • 4. What is it worth? • Commercial or Competitive Advantage – Monopoly rights – Exclusivity – Consumer Preference – Good Will • Generate Revenue – Licensing – Merchandising • Defensive Value – Cross Licensing – MAD 4
  • 5. Invent It. PATENTS 5
  • 6. Patents • A government grant of a limited right to exclude others from making, using, selling, offering, and importing the claimed invention • What a patent is not: – A right to “practice” your invention – You may not be free to practice your invention if it infringes someone else’s patent • A right to sue, not a right to do • “Flavors” of patents: utility, design, and plant 6
  • 7. Patents • Where do inventions come from? – Necessity – Shortcomings of prior solutions – Applications of new technologies – Customer requests – Engineers 7
  • 8. Patents • To obtain a utility patent, applicant must show that the invention is: – New – Useful – Nonobvious • New inventions have not been disclosed, or (in the U.S.) are applied for within one year of disclosure. • Non-obvious inventions means that it is not readily ascertainable by a “person of ordinary skill in the art” based on prior art. 8
  • 9. Patents • Utility Patents – for useful inventions – Term of 20 years from earliest filing date (for new application) • Design Patents – for designs (cannot be usesful) – Term of 14 years from grant – Narrowly interpreted – best against knock offs that don’t include labels. • Average of 32 months from application to grant (all patents) 9
  • 10. Key Patent Issues for Business Leaders • Patents must be registered – there is no common law right in an idea – First-to-invent system in the U.S. – One year grace period for filing • Disclosure Requirements • Cost • Business Benefit / ROI • Ownership/Inventorship – Employee is inventor – Employer will only own the patent under certain circumstances. 10
  • 11. Hide It. TRADE SECRETS 11
  • 12. Trade Secrets • Examples: – Marketing and business plans – Computer source code – Secret recipes, formulas – Product development efforts, including information about what doesn’t work (“negative information”) 12
  • 13. Trade Secrets • A trade secret is something that gives a business a commercial advantage in the marketplace because it is secret. • A trade secret is a creature of state law, both common and statutory law. • Trade secrets may exist in either tangible or intangible form and creation of a trade secret depends on how the information is used and protected. No registration system is available. • Misappropriation and use of trade secrets may be subject to US state and federal law as well, e.g., the RICO statute, the Economic Espionage Act, and the Lanham Act. 13
  • 14. Trade Secrets • A trade secret will only be protected by the courts if a business takes care to keep it secret! • How? – Employment agreements – Security and treatment of information – Non Disclosure Agreements with third parties – Limited Access – Avoiding infection 14
  • 15. Key Trade Secrets Issues for Business Leaders • Developing and implementing policies regarding the security of information. • Implementing systems to reduce the risk of disclosing trade secrets. • Drafting and using appropriate non-disclosure agreements with employees and third parties. • Appropriate use of Non-Compete Agreements with key employees. 15
  • 16. Create It. COPYRIGHTS 16
  • 17. Copyrights • Copyright protects “original works of authorship.” • What are “works of authorship”? – An idea or concept that is “fixed in a tangible medium of expression.” – What is fixed? – What is an expression? • Copyright protection only the EXPRESSION of the idea, and not the idea itself. – Monopoly rights in an idea are only granted through patents. 17
  • 18. Patent vs. Copyright • Patent law allows the owner the right to exclude all others from making, using, or selling the invention. The scope of the invention is determined by the patent claims. It does not matter if the infringer independently developed the same invention. • Copyright law prevents the copying of the expression of ideas. Copyright law does not protect ideas themselves. As a result, copyright law does not protect against someone else stealing an invention, nor does it prevent anyone else from independently creating the same or similar expression. 18
  • 19. Copyrights • An owner of a copyright has certain monopoly rights. • These rights include the right to: 1. Reproduce the work; 2. Prepare derivative works based on the original work; 3. Distribute copies of the work by sale, rental, lease or lending; 4. Perform the work publicly; 5. Broadcast the work (in the case of a sound recording; and 6. Display the work publicly. 19
  • 20. Copyright • Ownership – The Works Made for Hire Doctrine – Works created by employees as part of their job are generally owned by their employers. • Government • Professors – However, paying a non-employee to create a work does NOT guarantee ownership of the copyright. • Consultants • Independent Contractors • Software Developers 20
  • 21. Copyrights • Registration is not required to create a copyright interest. • Registration can provided added benefits – Required to file an infringement suit – Collect statutory damages and attorney fees. • Marking a work with a copyright notification symbol is also not required, but it avoids claim of “innocent” infringement. – If you place a copyright notice on a work, it should be as required by statute. – ©2009. Stoel Rives, LLP 21
  • 22. Copyrights • Infringement • Defenses – Music Downloads – Fair Use – Linking – Public Domain – Framing – Safe Harbor – Tweeting 22
  • 23. Key Copyright Issues for Business Leaders • Ownership – Copyright ownership is always vested in the author or creator of the work. – Right vest immediately upon fixation • Term – Life of the author plus 70 years (individual) – 120 years after creation or 95 years after publication (corporate) • Registration – Registration a prerequisite to suit, recovery of statutory damages • Infringement and Defenses 23
  • 24. Use it. TRADEMARKS 24
  • 27. Trademarks • Trademark law is a type of consumer protection. • Trademarks identify source of goods or services. • Consumers associate familiar sources with past experience and reputation. • Result: protection of the consumer from confusion as to source and quality. 27
  • 28. Trademarks • An owner only has monopoly rights for the goods which are associated with the mark. • A mark is only protectable if it is inherently distinctive or has acquired distinctiveness (“secondary meaning”) Most Least distinctive distinctive 28
  • 29. Trademarks • United States • Abroad – Words – Words – Designs (Logos) – Designs (Logos) – Packaging and Product – Packaging and Product Configurations Configurations – Colors – Touch Marks – Sounds – Holograms – Fragrances – Taste marks – Combinations of the Above 29
  • 31. Trademarks • Trademark rights exist as soon as a distinctive mark is used in commerce. – For descriptive marks, rights are gained after it can be shown that the mark has acquired distinctiveness. • Registration of a trademark is not required for an owner to have rights or to assert those rights. – However, it has benefits. 31
  • 32. Senior User 32
  • 33. Senior User Junior User Registered 33
  • 34. 34
  • 35. After Incontestability: Senior user’s territory frozen from time junior user applied? Maybe. 35
  • 36. Trademarks • Registration – Registration provides enhanced rights and constructive notice to the world. • Marking – ™ and ® – Marking can be a requirement for damages for infringement. – Erroneous marking may lead to lawsuits. • Use – Consistent use. – Trademarks are generally used as adjectives, not nouns and NEVER verbs. • Genericide 36
  • 37. Trademarks • Infringement – Passing Off (counterfeiting) – Consumer Confusion • Actions for infringement based on counterfeit goods will only be available if the counterfeit goods are sold under the trademark. • The main test of infringement is whether the use of the allegedly infringing trademark creates consumer confusion. • Senior user generally has priority and can stop subsequent users. 37
  • 38. Key Trademark Issues for Business Leaders • Ensuring no prior use of the brand you are seeking • Branding strategy – Don’t pick brands likely to infringe – Create and implement policies to protect your brand • Registration plan • Enforcement plan – It is true that if you don’t use it, you will lose it. 38
  • 39. Key IP Issues for Business Leaders • Make sure you own it. • If not, make sure you have the right to use it. • Utilize protections available. • Careful contracting. • Monitor your rights, and be prepared to enforce them. 39
  • 40. Thank You! Matti Neustadt Storie Stoel Rives LLP Technology and Intellectual Property (503)294-9523 mnstorie@stoel.com 40