Presented byBarbara I. Berschler, Esq.

© Barbara Berschler 2009

Subjects to Be CoveredIntroduction to “What is copyright?”

Introduction to “What is a trademark?”

Introduction to “What is a trade secret?”

What are some contract drafting issues for designers?

What Is Copyright?Exclusive rights granted by law to the creator

(“author”) of a copyrighted work for a limited period of time.

Exclusive rights are to: reproduce, make derivative works, distribute, perform, display and transmit (sound recordings).

How Is Copyright Created and Protected?In the U.S., copyright protection

automatically attaches once a work is fixed in any tangible medium of expression provided the work meets certain minimum standards.

What Are Some Kinds of Works that Can Be Protected by Copyright?Literary works (software applications)Musical works (original music)Pictorial, and graphic works (look & feel of

webpage, photographs)Motion picture & audiovisual worksSound recordings (3rd party works)

[Note: this is not a complete list of works eligible for copyright protection!]

What Kinds of Works Are Not Protected by Copyright?Ideas, procedures, systems, methods of

operation, concepts, principles or discoveries (look to patents & trade secrets for protection).

Works in the Public Domain (expired copyrighted works, certain federal government works).

What Kind of Intellectual Material Is Protected by Copyright?Expression of the idea, not the idea itself.

Work that is original to the author.

In the work’s development there was a minimum level of creativity involved.

How Long Does Copyright Typically Last?

For individuals: life of the author plus 70 years.

For entities: 95 years from publication.

What Is a “Work Made for Hire?”Work created by an employee in scope of

employment.

Specially commissioned work that falls within one of nine categories: contribution to a collective work, motion picture, translation, supplementary work, compilation, instructional text, test, answers to test, atlas. (These works would be created by independent contractors.)

How Does a Non-Creator Come to Own the Copyright?If an employee creates it. Employer owns.If it is a “work made for hire” and you have a

prior written agreement to that effect. If it is another kind of creative work and you

have a prior written assignment of the copyright from the creator.

By inheritance.

What Is Copyright Notice? Why Do It? Easier to prove willful infringementMay deter potential infringersPlace copyright notice on the 1st published

editionNotice has 3 elements:

Copyright symbolOwner’s name (may be different from author)Year of publication

Why Register a Copyrighted Work with the Copyright Office?Registration is not required to obtain

copyright protection.Registration in the U.S. accords benefits:

Cannot file a lawsuit to enforce without itCertain proofs easier to makeStatutory damages may be availableAttorney fees may be available

What If More Than One Person Is Involved in Creating the Work?To avoid problems, have a written agreement

as to who will do what and stating it is intention of parties that it is a “joint work.”

If there is no written agreement, the law gives co-owners certain rights (undivided interest, exercise of exclusive rights, accounting for profits).

What Is Copyright Infringement?

Someone other than the copyright owner exercising one of the exclusive rights without the permission of the owner.

Unless there is a statutory limitation (fair use, reproduction by libraries), there may be strict liability.

What Is a Trademark or Service Mark?

A mark (word, design, sound) that indicates to the public the source of the goods or services being offered.

The mark must always be used in conjunction with the existing business or enterprise. (Non-profits are eligible to own trademarks.)

What Are the Purposes of Trademarks?Public not confused as to source of goods or

services.

Business distinguishes itself from its competitors.

Prevent others from taking a “free ride” on your good will.

What Do You Get When You Have a Trademark?Exclusive right to use it with your goods or

services

Valuable business asset (form of property)

Can be bought, sold, licensed

What Is the Difference Between Federal and State Trademark Law?Trademark protection grew out of the

“common law” (court decisions).Some states do allow for registration (VA and

MD yes; DC no). However, usage creates the property right.

Federal Registration is principally under the Lanham Act by filing application with USPTO.

Federal protection available only for marks used in interstate commerce.

What Can Be a Trademark?Words Verizon

Series of letters CBS Series of numbers model number

Logos Picture Sunmaid’s girl Design Burberry’s plaid Symbol Nike’s swooch

Sound NBC chimesName DellNickname VW’s BeetleColor Pink for insulationTrade Dress Franchised Restaurant

Theme

Strong vs. Weak MarksStrong marks are considered to be inherently

distinctive, automatically public knows it is referring to a source.

Weak marks tend to be descriptive, not clear to public whether it is simply describing the goods or services or indicating source.

Generic terms cannot be trademarks, they ID the “thing” (aspirin, thermos, escalator).

How to Come Up With a Strong Mark?Made up words: Xerox, Kodak, Amtrak

Fanciful/Arbitrary: Apple computer, Penguin books

Suggestive: Joy detergent/perfume, Ivory soap, Hard Rock Café

Designs: Nike’s swoosh

What Must You Do to Protect Your Mark?Continuously use it in connection with goods

or services.Police the use of your mark.If licensing, monitor its use by others.Address infringements.Register marks used in interstate commerce

with USPTOComply with the USPTO renewal

requirements.

Under What Circumstances Could You Be Liable for Infringement?Adopting a confusingly similar mark to that

owned by another.

Incorporating another’s mark into your mark.

Displaying another’s mark without their permission.

Is There a Relationship Between Copyright and Trademarks?When a business uses a mark, the business can

acquire exclusive rights in that mark provided it uses the mark as a trade or service mark.

However, if the mark has a design feature to it, such as a logo, then whoever created that design may own the copyright in the mark.

If a business has a third party create its logo, then the business should also address the ownership of the copyright in the design. (By assignment or license)

What Is a Trade Secret?It is any valuable information that you have

accumulated, discovered, developed, or generated in connection with the operation of your business that is not generally known; and

For which you take reasonable steps to preserve the secrecy.

What Are Some Examples of Trade Secrets?Customer and supplier listsBusiness and marketing plansSoftware developed for youInternal procedures you have developedTechniques and systems

What Must You Do to Protect the Trade Secret?Some measures you can take:

Identify what is the trade secret you want to protect

Stamp documents “confidential”Have employees and consultants sign

confidentiality agreementsLock away sensitive materialsProtect computers with firewalls & passwordsAllow access only to those “who need to know”Faithfully and strictly enforce your procedures

What if Someone Misappropriates Your Trade Secret?“Misappropriate” means someone

acquired the trade secret of another improperly; or disclosed or used it without permission.

You can seek injunctive relief, damages for actual loss and unjust enrichment, or imposition of a reasonable royalty, exemplary damages if there was willful and malicious misappropriation.

Attorney fees may be possible.

How Do Non-Disclosure Agreements Work?As part of your efforts to protect trade

secrets, you want to have all who will come in contact under a legal obligation not to disclose or use the trade secret without your permission.

Therefore, some non-disclosure obligation should be incorporated in agreements with potential buyer/sellers, contractors, consultants, employees likely to have access.

Such agreements must be carefully drafted not to be overly broad or else they may not be enforceable.

What Are Some Other Kinds of IP You Should Be Aware of?When using content that can be associated

with a person, such as their photograph, signature, voice, be sure you have the authority to incorporate it in the work.

Most people have an enforceable “right of privacy.” The right to be left alone.

Be especially careful about the use of images or likenesses of children.

Celebrities have a “right of publicity.” The right to exploit their own fame.

What Are Some Terms to Include in Your Contract with Your Customer?Identify all parties to the contract and be sure the

persons signing have the authority to do so.Include definitions for important terms used in the

contract. (Aim for consistency.)To make enforceable, reference as part of the

contract the attached Schedules that cover specifications of work, mile stones, delivery dates, deliverables, payment.

Anticipate how parties will handle delays in performance.

Identify procedures for delivery, changes to and acceptance of work product.

Contract Terms--Continued (2)Specify who owns what IP in final work

product.Your original contentCustomer’s contentThird party content

Will you indemnify your customer against 3rd party IP infringement claims?

What are the procedures for terminating the contract if either party has defaulted and not cured or for any other reason.

Contract Terms--Continued (3)What are the representations and warranties

you will make?Authority, no conflicts, originality, performance

of product, compatibility, no liens, no infringement

What are the representations and warranties your customer will make?Authority, no conflicts, ownership of content provided,

no liens, no infringementConfidentiality obligationsIdentify each party’s principal contact for all

forms of communication.

What Are Some Other Kinds of Contractual Relationships?Do you have rights or licenses for 3rd party material ?Are your contractors also obligated vis-à-vis any

confidentiality obligations with your customers?Have you protected your own trade secrets with your

employees and contractors?Does the client’s website need to include agreements

concerning privacy, protection of personal data, use by minors, internet usage policies?

Do you need to have ongoing maintenance, hosting, and servicing agreement with the customer?

Barbara I. BerschlerPress, Potter & Dozier, LLC

7910 Woodmont Avenue, Suite 1350301-913-5200

www.berschlerlaw.combberschler@presspotterlaw.com