1. January 14, 2014

2. The Legal
Hot Buttons:
Today’s Goals
Why Marketers
•
Should Care
•
About IP
Discuss common legal threads that
run through client experience
Focus on the value of a
preventative, proactive approach
•
Minimize the involvement of
lawyers in your lives!
WEBINAR PRESENTED FOR:
• Create some conversations
Traklight
January 2014
PRESENTED BY
Sharon L. Toerek, Partner
Licata & Toerek
LegalandCreative.com

3. Disclaimer
Technology leads…
Business adapts …
Law sweeps up behind.

4. A Day in the Life
of a Marketing
Pro…
• New Product Launches
• New Technology Platforms
and Tools
• New Content Generated
• New Strategy to Implement
• New Creative Treatments
IT’S ALL INTELLECTUAL
PROPERTY!

5. The 5 Top
Marketer
IP
Hot Buttons
1. Protecting IP in a Business Pitch or
the “Idea Phase”
2. Using a Virtual/Freelance Workforce
3. Rights to Completed Work
4. Selecting a Brand or Rebrand
5. Using IP Properly in Content
Marketing and Social Media

6. IP Hot Button
#1
Protecting IP
in a Business
Pitch or the
“Idea Phase”
The Business Issue:
Constant tension in the pitch/
prospecting/ideation process
Your best creative foot forward vs.
Resources to generate work that may
not lead to a formal relationship
The Legal Hot Buttons:
– Who owns the work if an agency or vendor
doesn’t get hired by a brandholder?
– What happens if the work gets implemented
by someone else?

7. IP Hot Button
#1
Protecting IP
in a Business
Pitch or “Idea
Phase”:
Prevention
THE HARSH TRUTH:
NOBODY OWNS IDEAS!
Option 1: Get a confidentiality/rights
ownership agreement in place pre-pitch
– Make the provisions mutual
Option 2: Forego the agreement and
assume risk with open eyes

8. IP Hot Button
#1
Protecting IP
in a Business
Pitch or “Idea
Phase”:
Prevention
Alternative Prevention.…
Use copyright law.
- Express as much of the conceptual work
in written form as possible (storyboards,
memos, detailed proposals)
- Put rights ownership language in all
proposals
- Use copyright notices on all work product
(pre-engagement)

9. IP Hot Button
#1
Protecting IP
in a Business
Pitch or “Idea
Phase”:
Prevention
Further Consideration:
Negotiate ownership in advance.
– Puts everyone on same page about IP
ownership
– An increasing trend in industry

10. IP Hot Button
#1
Protecting IP
in a Business
Pitch or “Idea
Phase”:
Reaction
Determine end goal before
you pursue a remedy.
– Arrange a rights transfer/license
arrangement (the business/commercial
solution)
– Pursue legal claims for:
• Contract breach
• IP misappropriation

11. IP Hot Button #2
Using a
Virtual/Freelance
Workforce
The Business Issue:
Balancing the workload or need for
expert resources by using virtual or
freelance contractors
The Legal Hot Buttons:
- Originality of Work
- Client Confidentiality
- Work Rights Ownership
- Restrictive Covenants
- Insurance Coverage

12. IP Hot Button #2
Using a
Virtual/Freelance
Workforce:
Prevention
PUT IT IN WRITING
PUT IT IN WRITING
PUT IT IN WRITING…..
No handshake arrangements
IP in completed work in these
situations DOES NOT follow the
money – it must be in writing!

13. IP Hot Button #2
Using a
Virtual/Freelance
Workforce:
Prevention
Critical Contract Provisions:
– Transfer of all IP and work rights
– Warranty of work originality
– or a license to use or transfer the work
– Confidentiality
– Industry or Client Noncompetition
and Non-solicitation
– Errors and Omissions Insurance
Coverage

14. IP Hot Button #2
Using a
Virtual/Freelance
Workforce:
Reaction
– Get a post-engagement work rights
assignment/transfer between parties
– Enforce your contract if it’s breached
– Make a claim on the errors and
omissions insurance policy if
appropriate coverage exists

15. IP Hot Button #3
The Rights to
Completed Work:
The Business Issue:
Agency: “What issue? We’re fine with
our clients owning the work!”
Client/Marketer: “What issue? Of
course we own the work! We paid for it!”
The Legal Hot Buttons:
– IP Ownership Does NOT follow the $
– A Payment problem or dispute
– Nothing in writing

16. IP Hot Button #3
The Rights to
Completed Work:
Prevention
– Acquire rights to all 3rd party-produced
work in writing
• Create an internal process to manage
rights to all work in a project
• Don’t forget about ALL outside vendors
and partners used (photography, music,
software programs, mobile apps)
– Include rights transfer language in
client –agency/vendor contracts
• Trigger rights transfer to client
on payment
• If you aren’t transferring ALL the rights,
say so specifically

17. IP Hot Button #3
The Rights to
Completed Work:
Reaction
– Get a post-completion assignment of
rights from freelancers or third-party
vendors
– In payment disputes between agency
and client, intellectual property
ownership can be a lever to help
resolve the matter
– Negotiate broader license if the
client’s desired use of work expands
post-engagement

18. IP Hot Button #4
Brand
Selection or
Implementation
The Business Issue: Traveling too
far down the path of brand selection or
implementation before learning a mark
is not available or will not “clear.”
– Brand mark availability
– Appropriate clearance of mark
Domain name availability and/or clean
Google® results
Are NOT Trademark Clearance!

19. IP Hot Button #4
Brand
Selection or
Implementation:
Prevention
Begin the trademark search/clearance
process as early as possible
• Consider screening several alternatives
simultaneously to save time
Start the trademark registration process
immediately after selection/clearance
• Intent-to-use registration process allows
you to apply while you’re implementing the
mark

20. IP Hot Button #4
Brand
Selection or
Implementation:
Prevention
Steer away from the following:
– Marks that are very descriptive/generic
– Marks that are likely to cause
confusion with others in your industry or
market

21. IP Hot Button #4
Brand
Selection or
Implementation:
Reaction
If a brand trademark does not clear
(after adoption):
– distinguish it
(by industry/product/service)
– modify it with graphics or language
– acquire it

22. IP Hot Button #5
Using IP Properly
in Content
Marketing and
Social Media
The Business Issue: Content
Marketing and Social are attractive, but
quick-moving and viral tactics. IP
missteps are harder to fix.
The Legal Hot Buttons: The
following scenarios create IP legal
implications (for client and agency):
- Using freelance-created content
- Repurposing content of others
- Posting proprietary information in
content or on social channels
- Improper TM use (yours or theirs)

23. IP Hot Button #5
Using IP Properly
in Content
Marketing and
Social Media:
Prevention
– Get permission when posting the content
of any party who isn’t your employee on
your platforms
- Make proper attribution when posting
content /IP of others (CR and TM Notices)
– Follow proper brand standards and
usage requirements for trademarks
– Don’t use competitor brands in your
marketing unless you are following the
laws on comparative advertising

24. IP Hot Button #5
Using IP Properly
in Content
Marketing and
Social Media:
Reaction
Correct violations as soon as you
learn about them:
-
Take down objectionable content
-
Cease competitive ads if they are
not compliant with law
-
Get a license or written
permission, post fact, to use the
IP
-
Do not disclose sensitive or
proprietary business information
via social channels or published
content

25. Recent Legal
Developments/
Trends
New Top Level Domains
– Trademark implications for
brandholders:
- Tons more real estate to monitor
and protect on Internet
– Trademark lawyers are hoping ICANN
cautious about releasing new TLDs
too quickly

26. Recent Legal
Developments/
Trends
Pinterest® & Copyright
Infringement
– Every “repin” is a potential copyright
infringement
• Jury out on whether image owners care
in many cases
– Stakes higher in a commercial context
• Where you disrupt commercial market for
an image
– Don’t “repin” in a commercial context
without permission

27. Recent Legal
Developments/
Trends
Ownership of “Social
Contact” Data
Who owns:
– Twitter handles that include brand
names
– Twitter followers, LinkedIn links or
Facebook fans

28. IP Hot Buttons
for Marketers:
Questions?
Thank You!!!!!!
Reach me at:
E-mail: Sharon@legalandcreative.com
Phone: 216.573.6000
Twitter: @SharonToerek
LinkedIn:
http://www.linkedin.com/in/sharontoerek
Blog: www.LegalandCreative.com

29. blog.traklight.com

30. The ID your IP tool, can identify your potential IP including patents,
trademarks, copyrights, and trade secrets, as well as get strategic
advice on how to protect your intellectual property.
1. Go to Traklight.com
2. Click on the ID your IP button
3. Use Promo Code WEBINAR13 at checkout