Recognize and Protect Your Intellectual Property


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Intellectual property comes in many forms including, copyright, patents, trademarks, domain names, and trade secrets. Similarly, intellectual property “theft” comes in many forms, including infringement, misappropriation, unfair competition, gray market/parallel importation, counterfeiting, and hacking.Understanding what intellectual property your company has and developing appropriate intellectual property strategies can provide companies with the tools to protect and enforce that intellectual property.

Join Jill Sarnoff Riola, chair of Carlton Fields’ firm-wide IP practice group and Florida Bar board certified in Intellectual Property, as she provides an overview of the different types of intellectual property and outlines strategies to protect and enforce them.

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Recognize and Protect Your Intellectual Property

  1. 1. COVERING YOUR ASSETS Identifying And Protecting Your Company’s Intellectual Property Presented by: Jill Sarnoff Riola
  2. 2. Jill Sarnoff Riola Jill Sarnoff Riola serves as the chair of Carlton Fields’ firm- wide IP practice group. She is also board certified in Intellectual Property by The Florida Bar, giving her an edge in this area of practice, and further positioning her as an expert in IP. She is also a former in-house attorney in both the consumer products and technology industries. She works directly with companies to understand their business and assist them in developing appropriate intellectual property strategies that align with their present and future business plans, including development, protection and enforcement of domestic and international intellectual property portfolios.
  3. 3. Types of Intellectual Property (IP) • Confidential Information and Trade Secrets • Trademark, Service Mark and Trade Dress • Copyrights • Patents
  4. 4. Confidential Information and Trade Secrets Information that adds value to the business and known only to the owner – Product Plans – Inventory – Pricing – Internal policies – Business plans – Customers – Finances – Personnel data
  5. 5. Confidential Information and Trade Secrets Trade Secrets – A formula, practice, process, design, instrument, pattern, or compilation of information which is not generally known or reasonably ascertainable, by which a business can obtain an economic advantage over competitors or customers • Colonel Sander’s secret recipe • The Coca-Cola formula • Patentable information (but not patented) • Technical and non-technical information • Know-how and show-how
  6. 6. Confidential Information and Trade Secrets How to Protect Confidential Information – Need fiduciary or contractual relationship • Express – – Non-disclosure agreement – Confidentiality Clause – Employment Agreement • Implied – – Employment relationship – Board of Directors – Trustee • Statutory – state law
  7. 7. Confidential Information and Trade Secrets Employee Agreements – IP Assignment – Confidentiality – Non-compete – Non-Solicitation
  8. 8. Confidential Information and Trade Secrets Causes of Action for Theft of Confidential Information – Misappropriation • Trade secrets • Confidential information Conversion Theft Damages – Statutory – Check state law – Actual damages – Defendant’s profits
  9. 9. Trademarks and Service Marks “What It’s Called” or “What It Looks Like” Always an adjective – never a noun
  10. 10. Trademarks and Service Marks
  11. 11. Trademarks and Service Marks Trade Name – Company name can be a trademark or service mark – usually a “house mark” • Apple • Walt Disney World • Mercedes • Louis Vuitton • Geico • Duck Commander • CBS
  12. 12. Trademarks and Service Marks Trade Dress – The non-functional, unique appearance of a product or packaging – Overall commercial impression identifies the source • Coca-Cola bottle • Chanel No. 5 bottle • McDonald’s restaurants • Volkswagen Beetle car • American Airlines airplanes
  13. 13. Trademarks and Service Marks Types of Marks – Arbitrary or fanciful • Mark bears no logical relationship to the product and/or is made up – Apple computers – Kodak cameras – Xerox photocopiers – Suggestive • Mark “suggests” the features/purpose of the product – Chips Ahoy chocolate chip cookies – Herbal Essence shampoo
  14. 14. Trademarks and Service Marks Types of Marks (continued) – Descriptive • Describes the product or its features and can only obtain trademark protection through “secondary meaning” – NY Daily News – Mr. Clean – Generic • IS the underlying product and not protectable – Red Rubber Ball (not the song) – Shredded Wheat – Ice Pak
  15. 15. Trademarks and Service Marks Protection – United States • Common Law – limited rights arise on use • Statutory – rights arise on use and registration – State – intrastate – Federal – interstate – International • Common Law – rights arise on use • Civil Law – rights arise on registration – Not Extra-Territorial • Exceptions: – Community Trademark – Benelux
  16. 16. Trademarks and Service Marks Benefits of Registration – Constructive notice nationwide of the trademark owner's claim – Evidence of ownership of the trademark – Jurisdiction of federal courts may be invoked – Registration can be used as a basis for obtaining registration in foreign countries – Registration may be filed with U.S. Customs Service to prevent importation of counterfeit or gray market foreign goods – Generally the only way to protect mark internationally
  17. 17. Trademarks and Service Marks Trademark Infringement – Valid and enforceable trademark/service mark – “Secondary meaning” or “Acquired distinctiveness” – “Likelihood of confusion” Dilution – Blurring or tarnishment of “famous” trademark Unfair Competition – False Advertising – False Representation – Misappropriation Counterfeiting
  18. 18. Trademarks and Service Marks Damages – Actual damages – Defendant’s profits – Reasonable royalty – Enhanced damages – Corrective advertising damages – Attorneys fees and costs if exceptional case – Destruction of all goods – Interest – Additional damages for counterfeit goods – Statutory damages – Injunctive relief
  19. 19. Copyrights “What it looks like”, “what it sounds like” – Constitutional and statutory protection – Original expression of ideas (but not ideas) • Books • Song lyrics • Plays • Text, graphics, artwork, music, database, software, documentation, packaging, advertisements, commercials, websites
  20. 20. Copyrights Copyright Rights – Right to reproduce – Right to prepare derivative works – Right to distribute copies – Right to perform publicly – Right to display publicly Types of copyrights – Joint Works – Derivative Works – Compilations – Work for Hire
  21. 21. Copyrights Work for Hire – Just because you paid for it doesn’t mean you own it. • Employer owns it if the creator is a legal employee of the company for IRS purposes. • Independent contractor owns it in the absence of a written agreement with an express assignment of the copyright to the employer. Yes, really.
  22. 22. Copyrights Enforceable only if registered in US Copyright Office – NOT necessary to register in each country – International copyright treaties  Copyright Infringement – “Substantial similarity” – Access and copying
  23. 23. Copyrights Copyright Damages – Actual damages – Defendant’s profits – Statutory damages (if qualified) – Injunctive relief – Destruction of infringing materials – Attorneys’ fees and costs – Additional damages for counterfeits – Ex parte relief, seizure orders, asset freezes, expedited discovery – Separate criminal statute for counterfeiting
  24. 24. Patents “What it does” – method, process or apparatus  Types of Patents – Utility Patents – Plant Patents – Design Patents Types of Patent Applications – Provisional – Traditional – One year bar date
  25. 25. Patents Duration of US Patent Protection – 20 years from the earliest filing date – Design patents are 14 years from date of issue.  Benefit of Obtaining a Patent – Prevent others from making, using, selling, offering for sale or importing the patented invention in the United States for the duration of the Patent – Must have an issued patent to file a lawsuit Registration – Patent protection is always statutory – Each country has its own patent laws – NOT extra-territorial
  26. 26. Patents New Patent Act – America Invents Act – First to File, not First to Invent – But – First Inventor = Prior Art New Act + New Procedures + Sequestration + PTO Budget Cuts = – Fewer Examiners and Greater Processing Times
  27. 27. Patents Patent Infringement – Direct infringement – Indirect/Contributory Infringement
  28. 28. Patents Patent Infringement Damages • Lost profits • Reasonable royalty • Interest and costs • Enhanced damages – up to three times the award • Attorney’s fees in certain cases • Certain statutory limitations apply if infringed product or its packaging was not marked with patent number. – Injunctive relief
  29. 29. Domain Names Address for a website – Company names • – Trademarks • – Personal names •
  30. 30. Domain Names Cypersquatting – Use of 3rd party famous trademarks or names •  •  •  •  •  Typosquatting – Misspelling • v.
  31. 31. Domain Names Identical or Substantially Similar to a valid trademark or famous name. No legitimate interest in mark – Gripe site OK Bad faith use and registration – Attempt to sell to “true” owner – No active website – “Parking” site with competitive ads – Use of infringing domain name as scam site
  32. 32. Domain Names Trademark Act – Civil – Anticybersquatting Consumer Protection Act aka Cyber Piracy – Trademark Infringement – Unfair Competition Remedies – Damages – Profits – Injunction – Transfer of Domain Name
  33. 33. Domain Names UDRP – Administrative – Two forums: • National Arbitration Forum • WIPO – ICANN Uniform Domain Name Dispute Resolution Policy and Rules – Follows UDRP case law Remedy – Transfer or cancellation of domain name
  34. 34. Counterfeit Goods Counterfeit goods are inferior replica goods that bear identical or near identical copies of the genuine US registered trademark or US registered copyright. – Handbags – Watches – Software – Movies – Airplane engine replacement parts Both civil and criminal remedies available, with potential damage awards in the millions. Criminal penalties can include imprisonment and fines. ® and © registrations should be filed with US Customs who will seize and destroy counterfeits coming into the country.
  35. 35. Gray Market Parallel Importation Genuine goods meant for sale outside of the US but imported back into the US for resale. – Different formulations – Different specifications – May be sold without packaging or warranties – Can interfere with exclusive distribution rights in the US Owner of US trademark registration or US copyright registration can register them with US Customs IF they meet certain requirements. Causes of action are trademark and/or copyright infringement, unfair competition, tortious interference with contractual relationships. May depend on particular state law. Remedies are the same as for trademark and copyright infringement.
  36. 36. IP Licenses and Assignments IP Licenses – Exclusive vs. Non-exclusive – Geographic limitations – Quality control provisions – Indemnification – Control over infringement suits – Assignability IP Assignments – A full and irrevocable transfer of certain intellectual property from the owner (assignor) to another party (assignee) for an agreed payment. – Must assign the intellectual property and “the goodwill associated therewith” for trademarks
  37. 37. The IP Audit Questions you need to answer: – Do you own your IP? – Do you need assignments from independent contractors? – Do you have licenses for all of your software? – Are you in compliance with all of your licenses? – Are your licensees in compliance with their licenses? – Are your primary products protected by registered copyrights, patents, or NDAs? – Do you have a proper Confidentiality/Trade Secret protection program in place? – Are your primary trademarks registered in the US and your primary international markets? – Do you have proper distribution and reseller agreements in place? – Do you have appropriate employee agreements and internal policies on creating, using and owning intellectual property? – Do you have employee training programs in place so they understand the value of the Company’s IP?
  38. 38. Finally Identify what you own Identify what you thought you owned but don’t Identify the “gaps” Implement new or revised programs, agreements, policies, processes Ensure protection follows strategic direction of the Company
  39. 39. Questions If you have any questions, please submit them now. Thank you for taking the time to attend today’s webinar. If you have any questions about the information covered today, please contact: Joe Gerard Jill Riola