+

5 Things Every Artist (and All Businesses)

Should Know About The Law

Shireen Marshall, Elevated IP, LLC

David Rein, Erickson Kernell IP

+Disclaimer

• These materials are solely for educational purposes.

• No individualized legal advice is being given today.

• The presentation of these materials does not establish an attorney–client relationship with the presenters, Elevated IP, LLC, or Erickson Kernell IP

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+Real vs. Intellectual Property

Real estate/vehicles/equipment vs. copyrights/trademarks/patents/trade secrets

Both real and intangibleproperty can be bought, sold, traded, pooled, mortgaged, gifted, etc.

Due diligence on IPshould be as rigorous as diligence on real property

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+The Art of Copyrights

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“Only one thing is impossible

to God: to find any sense in

any copyright law on this

planet”

Mark Twain

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+How Do You Spot A Copyright?

An Original Work

Not Novelty

“Spark of Creativity”

Author

Fixed, Tangible Medium

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+Look For . . . (non-exhaustive list)

Literary

Musical

Dramatic

Pantomine & Choreograph

Picture, Graphic & Sculpture

Film & Other Audiovisual

Sound Recordings

Architectural

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+

Artist Owns Exclusive Rights

Reproduce

Adaptation/Derivative

Distribution

Performance

Display

(These are all separate from the work itself!)

For Visual Rights: Moral Rights Attribution; integrity

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+ Register!

www.copyright.gov

Inexpensive ($50)

Advantages

Sue

Remedies

Prima Facie Evidence

Register If Consider

Commercialization

Ideal w/in 3 months

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+Poll Question

Question: True or False: Works must be marked with the

© symbol to receive copyright protection.

Answer: False

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+Online Content

#socialmediaisIP

Company should own internet domains and

social media accounts (not the IT person,

founder, etc.)

Procedures are available for transferring

domain ownership from cybersquatters to

rightful owners

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+Online Rights/Digital Rights

- Place a Copyright, Trademark or Patent Number Notice

- Register

- Low-resolution images

- DMCA/Website Notice or IP Complaint Resolution Process

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+Trademarks

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+ What Is A Trademark?

A source identifier; a recognizable word, logo or expression

that identifies the goods or services of a particular person or

company

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+Strength of a Trademark

Weakest Strongest

Generic Descriptive Suggestive Arbitrary/Fanciful

Thermos

Aspirin

Xerox

Kleenex

Apple

Twitter

Kodak

Sno-Rake

Greyhound

Playboy

Bed & Breakfast Registry

Camper Depo

Recycler

Early clearance searching and filing of an intent-to-use

(ITU) application can avoid rebranding nightmares

later

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+Benefits of Federal

Trademark Registration

Exclusive nationwide right to use the mark

Presumption of validity

Ease in notifying to potential infringers

Ability to claim incontestability

Right to sue in federal court

Statutory and treble damages

Ability to enlist U.S. Customs to restrict

importation of infringing goods

Ability to prevent cybersquatting

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+Poll Question

Question: Yes or No: Will the U.S. Trademark Office

register offensive marks?

Answer: Yes

(Matal v. Tam, 582 U.S. ______, 2017.)

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+ IP Ownership Usually Author/Inventor

Work for Hire/Employment Contract

Joint Authors/Inventors

Intend contributions merged inseparable

Joint ownership

Either grant non-exclusive rights

Assignment

Grants

Contests

Work Policies

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+Work For Hire Contracts

Employer is the legal author

Limited to 9 categories: (1) a contribution to a collective

work, (2) a part of a motion picture or other audiovisual

work, (3) a translation, (4) a supplementary work, (5) a

compilation, (6) an instructional text, (7) a test, (8) answer

material for a test, (9) an atlas

Work must be specially ordered or commissioned

Must be a written agreement, signed by both parties,

specifying that the work is a work made for hire by use of

the phrase "work for hire" or "work made for hire”

Retroactive work for hire is not permitted

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+Business Structure

Limited Liability Company

(LLC)

Corporation

Non-profit Corporation

Secretary of State

Some protection from liability

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+Poll Question

Question: True or False: Generally, only one type of

intellectual property is applicable for a given product.

Answer: False

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+Licensing & Contracts

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+Licensing Basics

Transfer of Ownership by

Assignment

License an Infinite #

Exclusive v. Non-exclusive

1 or more of rights

Limit purpose, geography,

time etc.

Third party use

Transfer or Exclusive MUST be

in Writing if Copyright or

Patent

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+Licensing Basics

What IP?

Who can use? Exclusive?

Where is it licensed?

When? Term.

How? Restrictions?

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+IP Appears In Many Contracts

Employment Agreements

Assignments

IP Licensing Agreements

Joint Development Agreements

Independent Contractor Agreements

Non-Disclosure Agreements

Model Releases

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+Model Releases

If people are unrecognizable, no model release is needed

Using someone’s name or likeness in reporting is

considered Fair Use

Famous people have a right of publicity

Will probably charge for using their name or likeness for

commercial purposes, or sue you for violating their right

of publicity

Non-famous people have a right of privacy

Might sue you for invading their privacy, if you use their

likeness for commercial purposes without permission

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+Poll Question

Question: Which type of IP is not acquired automatically

by creation or use?

Answer Choices: Patents, trademarks, copyrights

Answer: Patents

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Questions

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Thank You

Shireen Marshall, Ph.D.

Elevated IP, LLC

smarshall@elevatedip.com

720-507-1255

4845 Pearl East Circle

Suite 101

Boulder, CO 80301

www.elevatedip.com

Dave Rein

Erickson Kernell IP

drein@kcpatentlaw.com

913-499-1306

1301 Arapahoe St.

Suite 105

Golden, CO 80401

Twitter: @daverein

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