intellectual property legal overview zerodivide 2012 fall convening
TRANSCRIPT
Intellectual PropertyLegal Overview
ZeroDivide 2012 Fall Convening
What is Intellectual Property?(and do I have any??)
Intellectual property = product of intellect or creativity that has commercial value
includes names/logos, creative expression, and inventions
What is Intellectual Property?(and do I have any??)
Common forms of intellectual property (shamelessly simplified)
Trademark rightsYour rights in your name and symbols that represent you and your goods/services
CopyrightsYour rights in your expression
PatentsYour rights in your inventions
What is Intellectual Property?(and do I have any??)
Your organization has intellectual property if it …
• Has a name• Has a web site• Generates textual, graphic, audio-visual, or other expressive
content
It would be hard for any organization that interacts with the world to avoid owning intellectual property. The question is what steps – if any – you take to protect it.
And, as a practical matter, how you deal with others’ intellectual property can be even more important to your organization than how you deal with your own.
Two Sides of the IP Coin: Asset & Liability
Investment – developing and protecting your own intellectual property as an asset
Risk Avoidance – avoiding liability for infringement of third-party intellectual property rights (i.e., even if you don’t care about your intellectual property, others care about theirs)
Trademarks
A trademark is a word, phrase, or other symbol that indicates the origin of your goods and services.
NBC Chime (succession of three distinct pitches: G3, E4, and C4, sounded in that order, creating an arpeggiated C-major chord in the second inversion, within about two seconds time, and reverberating for another two or three seconds)
I’M LOVIN’ IT
Trademark Risk Avoidance
ClearanceBefore adopting a mark, identify conflicting third-party rights
A trademark attorney can assist you with clearance searches, including analyzing the risk posed by third-party marks. The clearance process is often more expensive than obtaining the trademark registration itself, but not clearing a mark can be more expensive still.
At the very least, do your own research into others who might be using similar names/marks. (“Would I care about my organization’s use of our proposed mark if I were this third-party trademark owner?”)
Trademark Investment
Registration not required.In the U.S., trademark rights are created by using a mark in commerce.
Why seek federal trademark registration?
• Notice of your rights to others (“no trespassing” sign)
• Ability to use ® symbol
• Ability to sue in federal court
• Legal presumption of nationwide exclusive right to use mark with goods/services in registration
• Prerequisite for certain kinds of damages
• Five-year old registration can become hard for others to challenge
Trademark Investment
What’s involved with filing a federal trademark application?
• The mark• The goods/services• The owner• When mark was first used• Standard filing fee = $325 per class (all imaginable goods services divided into
classes for administrative purposes; e.g., clothing in class 25, wine in class 33)
Note: The trademark application process includes a number of fairly technical requirements, and problems with any of them could mean starting over from scratch. Use care and/or seek the assistance of a trademark attorney.
Copyright
Copyright is a set of rights in original works of authorship fixed in a tangible medium of expression
Works of authorship protectible by copyright include:(1) literary works;
(2) musical works, including any accompanying words;
(3) dramatic works, including any accompanying music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works;
(7) sound recordings; and
(8) architectural works
Copyright
Copyright is a set of rights in original works of authorship fixed in a tangible medium of expression
The rights that make up copyright ownership include:(1) to reproduce the copyrighted work
(2) to prepare derivative works based upon the copyrighted work (the right to adapt)
(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly
(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly
(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission
Copyright Investment
Works Made for Hire
The default rule is that the person who creates the work owns the copyright in the work.
Important exception is a “work made for hire,” which includes “a work prepared by an employee within the scope of his or her employment,” 17 U.S.C. § 101.
Whenever someone creates a work related to your organization – especially independent contractors or other non-employees – be careful to decide and document ahead of time who will own that work. For example, enter into simple agreements specifying that a particular work will be a work made for hire and that the creator will assign all copyright interests in the work to the organization. After the work has been created, have the creator execute an agreement assigning copyright interests to the organization.
Copyright Investment
Copyright protection begins the moment the creative expression is affixed in a tangible medium.
Why seek copyright registration?
• Copyright registration is necessary to sue for copyright infringement.
• In order to recover statutory damages, the copyright in the infringed work must have been registered before the infringement occurred
statutory damages = instead of having to prove that it has actually been damaged by the infringement, the copyright owner can recover statutory damages of “not less than $750 or more than $30,000 as the court considers just,” 17 U.S.C. § 504(c)(1)
Registration of copyright in any particular work is relatively easy and inexpensive, but the volume of copyright-eligible works generated by an organization can make the registration process cumbersome and costly. Try to develop a registration plan for routinely generated works.
Copyright Risk Avoidance
Just because you can easily copy text, images, sound, and video content from the web does not mean that it is safe to do so.
The availability of statutory damages for plaintiffs can make copyright infringement a costly proposition for defendants, even if the infringing use doesn’t seem like a big deal.
Do not assume that fair use will be available as a defense.
Copyright Risk Avoidance
Fair Use (17 U.S.C. § 107)
[T]he fair use of a copyrighted work … for purposes such as criticism, comment, newsreporting, teaching …, scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
Copyright Risk Avoidance
The fair use defense to copyright infringement depends on an extremely fact-intensive and subjective analysis. It is generally difficult to predict with any certainty whether a court would consider a particular use to qualify for the fair use defense.
If a copyright owner wants to sue you for infringement, fighting the suit might be prohibitively expensive even if you think you have a solid fair use defense.
Some copyright owners count on this fact – and the availability of statutory damages – to push for settlement payments for uses that arguably qualify for fair use protection.
Other IP-ish Rights and Issues
• Rights of Publicitythe right to control and exploit a person’s likeness
• Rights of Privacythe right to control information about a person
• Defamationliability based on falsehoods that damage a person’s reputation
Resources
Patent and Trademark Office (www.uspto.gov/trademarks)
Resources
Copyright Office (www.copyright.gov)
Resources
First Amendment Coalition (www.firstamendmentcoalition.org)
Electronic Frontier Foundation (www.eff.org)
Online Media Legal Network – Harvard’s Berkman Center (www.omln.org)
Resources
Creative Commons (www.creativecommons.org)
Open Source Initiative (www.opensource.org)
This presentation is intended for general informational purposes only and should not be construed as legal advice or legal opinion
on any specific facts or circumstances, nor is it intended to address specific legal compliance issues that may arise in particular circumstances. Please consult counsel concerning your own situation and any specific legal questions you may have.
The thoughts and opinions expressed in this presentation are those of the individual presenter and do not necessarily reflect the official or unofficial thoughts or opinions of Bryan Cave LLP.
Katherine [email protected](415) 268-1972
Bryan Cave LLP560 Mission Street, 25th FloorSan Francisco, CA 94105