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How Does Your Company Protect its IP?
(cont’d)
Your company protects its IP by:
•Marking its packaging, advertising, marketing materials and websites
with appropriate IP notices. For example:
Copyright notice for electronic and printed publications:
© 2015 ABC Company, Inc.
Trademark notice for products, packaging and other materials:
[BRAND]® is a registered trademark of your company.
OR, if the mark is not registered:
[BRAND]™ is a trademark of your company.](https://image.slidesharecdn.com/intellectualpropertybasicspresentationpracticallaw-150915144906-lva1-app6892/85/Intellectual-property-basics-presentation-practical-law-21-320.jpg)
Intellectual property basics presentation (practical law)
- 1. Intellectual Property Basics John H. Rees Callister Nebeker & McCullough
- 2. 2 Introduction Intellectual property (IP) drives a large segment of today’s global economy. Valuable IP rights may exist in products and services we see, hear and use everyday. This presentation will: •Provide an overview of the main types of intellectual property and discuss how they are protected by your company. •Share best practices for protecting your company’s IP rights and avoiding infringement of other companies’ IP rights.
- 3. 3 Types of Property Most companies own three different types of property: •Real property. (Things like the headquarters building and parking lot). •Personal property. (Things like office equipment, computers and furniture). •Intellectual property. (Things like information, technologies, formulas, brands, logos, designs, photos and music).
- 4. 4 What is Intellectual Property? Intellectual property is a general term for categories of rights in intangible creations of the mind. There are four main types of IP: •Patents. (Protects rights in useful inventions and discoveries, like machines and processes). •Copyrights. (Protects expressive works, like art, music, dance and literature, and also software). •Trademarks. (Protects product, service and company identifiers, like brands, logos and package designs). •Trade Secrets. (Protects commercially valuable confidential information, like business and financial plans, formulas, recipes and customer information).
- 5. 5 Why Does IP Matter? IP matters because it is one of your company’s most valuable business assets. Intellectual property: •Builds brand awareness and loyalty among consumers. •Establishes protectable legal interests in the goods and services sold by your company and the technology and know-how used to produce them. •Has intrinsic value that may be sold, licensed or leveraged for profit. •Gives your company a competitive edge. •Drives innovation. •Enables your company to enter new markets and grow market share. •Creates jobs.
- 6. 6 What is a Patent? A patent is a right granted by the US government to an inventor for a limited time to exclude others from: • Making, using, offering for sale, or selling the invention in the US. • Importing the invention into the US. Utility patents (including business method patents) are the most common types of patents.
- 7. 7 Patent Registration Your company protects its patents by filing an application for patent protection in the US Patent and Trademark Office (USPTO) (see sample patent application drawing of a sewing machine below).
- 8. 8 What is a Trademark? A trademark identifies which person or company is the source or origin of goods and services and distinguishes the trademarked goods and services from those made or sold by others. Trademarks may take the form of: •Names (e.g., CALVIN KLEIN® apparel and GEORGE FOREMAN® grills). •Brands (e.g., COKE® soft drinks and APPLE® computers). •Designs and symbols (e.g., Nike’s "Swoosh" design on footwear). •Slogans (e.g., Wendy’s slogan WHERE’S THE BEEF® and De Beers’ slogan A DIAMOND IS FOREVER®).
- 9. 9 Example of Design and Word Marks
- 10. 10 What is a Trademark? (cont’d) Trademarks may also take the form of: •Color (e.g., the color of Owens-Corning’s pink fiberglass insulation). •Sound (e.g., NBC Universal Media’s chimes and Yahoo! Inc.’s yodel). •Scents. •Package, product or store design (e.g., the shape of a fragrance bottle or the interior design of a restaurant). Trademarks consisting of colors or package, product or store designs, or combinations of these features are commonly referred to as "trade dress."
- 11. 11 Trademark Registration In the US, trademark rights arise from use, not registration. However, your company protects its trademarks by filing for federal trademark registration in the USPTO because federal registration gives the trademark owner many benefits, including: •The exclusive right to use the mark nationwide in connection with the goods or services covered by the registration. •The right to use the registered trademark symbol ® to discourage infringement.
- 12. 12 What is a Copyright? Copyright protects works of authorship that are: •Fixed in any tangible form or medium of expression. •Original in the sense that they are: • Independently created by the author (or authors). • At least minimally creative.
- 13. 13 Who is the "Author" of a Copyrighted Work? The "author" may be one person, or two or more persons (in which case the work is jointly owned by its authors). For a "work made for hire," the employer or party that commissions the work is the initial owner of the copyright in that work, unless either of these parties and the creator of the work agree differently in a signed writing.
- 14. 14 Works Protected by Copyright Copyright protects both published and unpublished original works of authorship, including: •Literary works (e.g., books, periodicals, manuscripts, film, tapes and computer programs). •Musical works, including accompanying words. •Dramatic works, including accompanying music (e.g., scripts and screenplays). •Pantomimes and choreographic works. •Pictorial, graphic and sculptural works (e.g., fine, graphic and applied art and art reproductions, photographs, prints, maps, models and technical drawings). •Motion pictures, video games and other audiovisual works. •Sound recordings. •Architectural works.
- 15. 15 Example of Copyrightable Subject Matter Literary and pictorial works: drawing from a book
- 16. 16 Works Not Protected by Copyright Copyright does not protect: •Ideas, systems, methods or processes. •US government works. •Typefaces (although copyright protection is available for computer programs that generate fonts and typefaces).
- 17. 17 Copyright Registration Registration is not required to establish federal copyright ownership. However, your company protects its copyrights by filing for registration in the US Copyright Office because registration provides substantial benefits, including: •The ability to bring an action for copyright infringement. •Recovery of attorneys’ fees and special categories of damages not otherwise available in an infringement action.
- 18. 18 What is a Trade Secret? A trade secret is: •Business, financial and technical information. •Kept confidential by its owner through reasonable efforts. •Economically valuable because the information is not generally known. For example, Coca-Cola’s soda formula, KFC’s fried chicken recipe and the source code of Adobe’s PHOTOSHOP® software are trade secrets.
- 19. 19 Trade Secret Protection Trade secrets are not registered like patents, trademarks and copyrights. Instead, the your company expects you to protect its trade secrets by making reasonable efforts to keep this information confidential, for example, by: •Never giving your passwords to anyone. •Keeping hard copies of trade secret information in locked files or cabinets. •Never giving confidential information to customers or other individuals outside of the company unless: • Authorized by management. • The recipient has signed a written Non-disclosure Agreement.
- 20. 20 How Does Your Company Protect its IP? Your company protects its IP by: •Registering its copyrights and trademarks. •Applying for patents on its inventions and discoveries. •Keeping its trade secrets confidential and limiting their disclosure, including information concerning any invention or discovery for which it may decide to seek a patent. •Obtaining signed non-disclosure agreements from vendors and other business partners, and from employees under the terms of their employment agreements. •Engaging watch notice services to monitor new IP application filings by other companies.
- 21. 21 How Does Your Company Protect its IP? (cont’d) Your company protects its IP by: •Marking its packaging, advertising, marketing materials and websites with appropriate IP notices. For example: Copyright notice for electronic and printed publications: © 2015 ABC Company, Inc. Trademark notice for products, packaging and other materials: [BRAND]® is a registered trademark of your company. OR, if the mark is not registered: [BRAND]™ is a trademark of your company.
- 22. 22 How Does Your Company Protect its IP? (cont’d) Your company protects its IP by: •Keeping an eye on the market and its competitors’ activities. •Reviewing industry-specific trade papers, magazines and websites. •Developing best practices for IP protection and training employees on the subject. •Enforcing its rights against infringers by sending cease and desist letters, and when appropriate, commencing litigation. •Publicizing enforcement victories through targeted press releases.
- 23. 23 How Does Your Company Minimize the Risk of Infringing Other Companies’ IP Rights? Your company reduces its risk of infringing other companies’ IP rights by: •Conducting a thorough investigation to obtain legal clearance of all IP prior to use. •Implementing policies and guidelines to reduce infringement risk. •Educating employees about your company’s policies and guidelines. •Training employees about the types of IP that are most relevant to their jobs and industry.
- 24. 24 Hypothetical 1 Jane, the Vice President of Sales and Marketing for her company, needs to prepare a presentation to the company’s salesforce at its annual sales meeting. To visually liven up her presentation, she downloads numerous images from the internet and copies them into her presentation slides. ------ Can Jane do this?
- 25. 25 Answer to Hypothetical 1 • Probably not. Although many internet sites contain photographs that are in the public domain, the photos Jane selected may well be protected by copyright. • If the photographers, companies or stock photo houses that own rights in these photographs learned of Jane’s use of protected photos in her sales presentation, Jane’s company may be liable for copyright infringement. Lesson: Always check with legal counsel before you download images or other materials from the internet for company use.
- 26. 26 Hypothetical 2 Frank, a designer, is developing product packaging for a new line of soft drinks to be sold by his company. He thinks packaging similar to Coca- Cola’s red and white soda cans would be perfect for this new product. Because Frank’s product will feature a different brand name, he doesn’t see any reason why he can’t duplicate the color scheme and design of Coca-Cola’s packaging. ------ Is Frank right?
- 27. 27 Answer to Hypothetical 2 • No. Even if the packaging for Frank’s product features a different brand name, Coca-Cola owns trade dress rights in its iconic red and white can design. • If Frank’s company markets its soft drink line with cans featuring colors and designs that are confusingly similar to those contained in Coca-Cola’s trade dress, it may be liable in an action for trade dress infringement. Lesson: Always check with legal counsel if you are uncertain about these issues.
- 28. 28 Hypothetical 3 Lucy, a scientist for a pharmaceutical company, is developing a new medication for people with high cholesterol. There are several branded medications on the market that help reduce cholesterol. ------ If Lucy can figure out the formula for one of these other medications, can she use it to develop a new medication sold by her company?
- 29. 29 Answer to Hypothetical 3 • Probably not. Branded medications are generally patented (although there are some branded generic drugs that have gone off patent). • Lucy would likely expose her company to a very damaging claim of patent infringement if she pursued product development in this manner. Lesson: Copying another’s product or service is never a good idea. Before engaging in conduct that may expose the company to liability, always contact legal counsel for advice.
- 30. 30 Conclusion • Never assume that what you see in the marketplace, in the media or on the internet is in the public domain and free to copy, download or use. • If you are unsure whether something contains the protected IP of another party, always check with legal counsel before downloading or using it. • Always bring suspected infringement of your company’s IP to the attention of legal counsel.
- 31. Questions
- 32. 32 John H. Rees Callister Nebeker & McCullough 801.530.7388 [email protected] For Further Information or Questions Contact:
Editor's Notes
- #4: Presenter Notes: Real and personal property are rights in tangible things – for example, the right to physical possession of a building (real property) or a book (personal property). IP rights are rights in intangible "things" – for example the look of a building or the expressive content in a book.
- #7: Presenter Notes: Utility patents protect "useful" inventions that are "novel" and "non-obvious" and include things like machines and chemical or biological compositions. Business method patents are a class of utility patents that protect computer-related business processes such as financial data processing methods. In addition to utility patents and business method patents, there are also: Design patents which protect original, ornamental designs of manufactured articles like the hood of an automobile or the case of a smart phone. Plant patents which protect distinctive plants like a new type of flowering shrub.
- #8: Presenter Notes: Patents are: Awarded to the first inventor to file an application on the invention under the US "first-inventor-to-file" system. In effect for a maximum of 20 years after the date of application. The 1885 patent registration for this sewing machine has expired. The presenter may wish to display additional examples of [COMPANY]’s patent drawings or registrations at this point in the presentation.
- #10: Presenter Notes: The presenter may wish to replace this image of Thomson Reuters’ logo with images of [COMPANY]’s trademarks at this point in the presentation.
- #12: Presenter Notes: Federal trademark registration also gives the trademark owner: Evidentiary presumptions relating to mark ownership and validity in an action for trademark infringement. The ability to record the trademark registration with the US Customs Service to prevent the importation of infringing and counterfeit goods. Federal trademark registrations last for ten years, subject to maintenance requirements, and are renewable for additional ten-year periods as long as the trademark is in use in commerce.
- #14: Presenter Notes: A work is considered a work made for hire if it is either: Created by an employee in the scope of his or her employment. Specially ordered or commissioned by another party, if it also meets certain criteria under the copyright laws in effect when it was created. For example, if a graphic designer employed by [COMPANY] develops a promotional campaign, the copyright in the layout, text and designs found in that campaign belongs to [COMPANY]. If, however, the company engages an independent contractor graphic designer to develop the layout, text and designs of the [COMPANY]’s marketing campaign, the copyrights in these materials will belong to the contractor unless the contractor executes a written assignment to [COMPANY] of all copyrights in these materials. Therefore, always check with the Legal Department to make sure all assignments and other necessary contract provisions are in place before hiring a contractor and, especially, before the contractor begins work under his or her commission.
- #16: Presenter Notes: This drawing, taken from the Dictionary of French Architecture from 11th to 16th Century (1856) by Eugene Viollet-le-Duc (1814-1879) is now in the public domain. However, the drawing and the book in which it is printed are examples of copyrightable subject matter. The presenter may wish to show additional examples of [COMPANY]’s copyrighted works at this point in the presentation.
- #17: Presenter Notes: Copyright also does not protect single words or short phrases such as: Book titles. Headlines. Slogans.
- #18: Presenter Notes: Federal copyright registration also: Establishes prima facie evidence of the copyright’s validity in an action for copyright infringement. Eliminates an innocent infringement defense (with proper notice) to copyright infringement. Permits recordation with the US Customs Service to stop the importation of infringing copies. Copyrights owned by [COMPANY] as works made for hire last for a term that is the shorter of 120 years from the date of creation or 95 years after first publication.
- #20: Presenter Notes: [COMPANY] also protects its trade secrets by: Placing confidentiality notices on all confidential information. Obtaining signed Non-disclosure Agreements from those permitted access to trade secret information.
- #21: Presenter Notes: We expect you to cooperate with us in protecting our IP by complying with [COMPANY]’s policies.
- #23: Presenter Notes: The Legal Department, or its outside counsel, may engage watch notice services to alert [COMPANY] when applications for potentially infringing patents, trademarks and copyrights are filed.
- #24: Presenter Notes: For example, many employees mistakenly believe that if they see several different companies using a similar name, image or design on a product or in connection with a service in the market, then it must be legal for them to also use that name, image or design in marketing their product or service. What they may not realize, however, is that either: The companies using the mark or design may market very different products or services, so that it is permissible for them to use these designations because their use does not cause a likelihood of consumer confusion. One company may hold a registration for that name, image or design while the other companies are infringers. To prevent [COMPANY] from infringing the IP rights of another company, all product formulas, technologies, prototypes, names, package and label designs, marketing and advertising materials, and website and social media content must be cleared through the Legal Department.
- #31: Presenter Notes: Although [COMPANY] uses watch services and other methods to detect infringement, it is impossible to monitor all potentially infringing activity. Many times, employees discover infringement through conversations with friends, family members and colleagues and at trade shows and other industry events. Always inform the Legal Department of suspected infringement of [COMPANY]’s IP so that we can immediately investigate the matter further. If [COMPANY] must take enforcement action, time is of the essence and statutes of limitation and filing deadlines must be complied with.