October 2010 - Business Law & Order - John Nishi

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IP Protection Strategies (US and Foreign)

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October 2010 - Business Law & Order - John Nishi

  1. 1. Trademarks and Copyrights: Rights or Liabilities? Presented by John Nishi Oct. 18, 2010 © 2010 All Rights Reserved.
  2. 2. Trademarks Trademarks – ANYTHING that identifies the source of a product or service • Words Brand Name • Symbols & Logo Product • Colors* Shape • Shapes* • Sounds* • Smells* • Textures* • Tastes* (?) * if non-functional
  3. 3. Development of Trademark Rights Rights derive from USE of a DISTINCTIVE mark in commerce • Commercial "Use" of Mark • Distinctiveness – inherently distinctive (fanciful, arbitrary, suggestive) – descriptive but with acquired distinctiveness – non-distinctive (merely descriptive or generic)
  4. 4. Development of Trademark Rights • Registration is advantageous but not necessary – Presumption of national rights – "Constructive Use" date
  5. 5. Development of Trademark Rights The TM and  Symbols … • "TM" symbol represents only a claim of rights; does not establish rights • Use  only after Federal registration
  6. 6. Trademark Risk Proactively clearing a new trademark for use is AT LEAST AS IMPORTANT as establishing enforceable rights
  7. 7. Trademark Risk Likelihood of Consumer confusion is the infringement standard • similar (not necessarily identical) marks • related (not necessarily competing) commercial activities Dilution of famous brands
  8. 8. Trademark Risk Scope of activities that create potential liabilities is broader than scope required to develop rights • Business Name • Domain Name • Advertising Campaign
  9. 9. Trademark Risk Conduct CLEARANCE RESEARCH … • BEFORE using commercially, • BEFORE you must commit to brand • BEFORE filing for registration & • BEFORE you get emotionally attached
  10. 10. Copyright Ownership Rights created without registration by fixation of original expressions into a tangible form • protects expression (not idea) • must be fixed in tangible form • Registration is Optional, Easy & Inexpensive – provides notice – preserves statutory damages
  11. 11. Copyright Ownership Copyright Notice Recommended • (© or "Copyright") + Yr. Pub’d + Owner – Example: © 2005 Acme Products
  12. 12. Copyright Ownership "Works Made for Hire": Must acquire ownership by assignment if Copyrightable Work is created by a non-employee (with very few exceptions) • Make Copyright Assignment a condition of hiring/engagement
  13. 13. Copyright Risk BEWARE of a business plan that relies on use of another's copyrighted material • Music at work = public performance • Photocopies of news/scientific articles • Software (Unauthorized Users/Modification)
  14. 14. Imagine never thirsting … it Copyright Risk isn't hard to do BEWARE of "borrowed" works < 120 Yrs Old • Recall: Copyright automatically attaches the moment a "work" is created • Duration: Author's life +70 years – Works by a company employee last 95 years from first publication or 120 years from creation
  15. 15. Copyright Risk Infringement by • reproduction • modification • distribution of copies • public performance or display
  16. 16. Your Exposure Trademark Infringement • Injunction + Damages + Legal Fees (worst case) • Legal fees easily greater than $250k Copyright Infringement • Legal fees + Injunction + Damages • Legal fees easily greater than $250k
  17. 17. John Nishi Dickinson Wright PLLC 301 E. Liberty Street, Suite 500 Ann Arbor, Michigan 734.623.1938 JNishi@DickinsonWright.com

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