practical on copyrights and trademarks

Practical on Copyrights and Trademarks

By: Wayne Kennard Zachary Piccolomini

Series 3

Attorney Advertising

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Copyrights – What is protected? • Copyrights protect original works of authorship,

including: • Presentations • Company operating/instructional manuals • Whitepapers • Computer software • Screen displays and graphical user interfaces

• Does not protect facts, ideas, systems, or methods of operation • Although it may protect the way these things are expressed

2 © 2014 Wilmer Cutler Pickering Hale and Dorr LLP

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Copyrights – What is protected? • Does not protect company names

• May be protected by trademarks

• Question: • Company A and Company B come up with exactly the

same copyrightable computer software program. Company A did it on March 1 and Company B did it on March 10. Who owns the copyright?

• What factors would change the ownership result?


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Company Development Cycle Alpha Stage

[Internal Review/Testing] Beta Stage

[Selective Customer/Client Testing] Production Stage

[Public Use: Sales and Licensing]

1. Provisional Pat. Appln.

2. Copyright Protection

3. Trade Secret Protection


2. Utility Pat. Appln.







Update Stage





4

Provisional Converted to Utility

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Copyrights – Automatic Rights • Rights automatically vest upon creation. • Provide copyright notices on:

• GUIs/screen displays • Manuals, brochures, and other documents that generally

published or going to particular third parties • For software-based product/service offerings, the company

should embed plain language copyright notices in (1) un-compiled source code and (2) compiled code


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• Formal registration is optional, but has advantages: • (1) Access to statutory damages

• $750-$30K per occurrence without proving actual damages • Can increase to $150K per occurrence for willful infringement

• (2) Shows investors that the company is sophisticated

• To register online, go to the Copyright Office website at www.copyright.gov and click on “Electronic Copyright Office” (Registration Walkthrough Coming Up) • Filing fee is $35 online, compared to $65 for paper filings

Copyrights - Formal Registration


http://www.copyright.gov/

http://www.copyright.gov/

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Copyright Registration for Software-based Products U.S. Copyright Office Circular 61 (see Exhibit) • Provides special rules for registering software-based

product/service offerings • Filing requirements:

• Application • Non-refundable filing fee • Non-returnable deposit

• If includes trade secrets, can block out trade secret portions • If want to register screen displays, the company need not

specifically reference the screen displays (alternatively, the company can reference the screen displays, but then must also include identifying materials)


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Copyright Registration U.S. Copyright Office Circular 12 (see Exhibit) • Recordation of Transfer and Other Documents

• Transfer of copyright ownership

• Filing requirements: • Document must have the original signature (or proper

certification of a photocopy) • Document must be complete • Document must be legible • Pay the filing fee


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Copyright Registration Copyright Registration Walkthrough


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Trademarks – What do they protect? • A trademark is a word or phrase, symbol or design,

or a combination thereof, that identifies and distinguishes the source of: • Goods of one party from the goods of others (trademark) • A service rather than goods (technically a “servicemark”)

• Goods include physical goods, such as: • Pharmaceutical products • Computers

• Services include non-physical functions, such as: • Financial planning • Landscaping


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Trademarks – Common Law Rights • Registration is not required – a company can

establish rights in a mark based on use of the mark in commerce • May allow company to challenge a trademark registration

or application • Company can mark the trademark with “TM” • Typically geographically restricted to actual use


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Trademarks – Registration • Registration with the US Patent and Trademark

office provides several advantages: • A legal presumption of ownership of the mark • An exclusive right to use the mark nationwide on or in

connection with the goods/services listed in the registration • The ability to bring an action in federal court • The right to use the federal registration symbol ® • The right to prevent others from using your trademark in

URLs

• Registration gives an investor comfort to know that they can freely use the trademarks • Also shows sophistication of the company


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• Trademark applications are compared against other: • Trademark Registrations (Live) • Trademark Applications • Trademarks can also be opposed by common law

trademarks

• Cost saving tip – company can perform its own clearance search • Search the trademark office – go to

http://www.uspto.gov/trademarks/index.jsp and click on “Trademark Search”

• Search the internet • Search the secretary of state for major states (e.g., MA,

DE, or other states of interest)

Trademarks – Clearance Searches


http://www.uspto.gov/trademarks/index.jsp

http://www.uspto.gov/trademarks/index.jsp

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• Can file online by completing the online form at http://www.uspto.gov/teas/teasplus.htm (Trademark Application FilingWalkthrough Coming Up)

• Typically file: • On principal register • With a “standard character” designation • With one or more classes of goods/services ($275 per

class)

Trademarks - Filing


http://www.uspto.gov/teas/teasplus.htm

http://www.uspto.gov/teas/teasplus.htm

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• Class descriptions are at: • http://www.uspto.gov/trademarks/notices/international.jsp • Can either write out a description of the class, or adopt one

from the USPTO • Recommend working with an attorney to select the

class(es), and to draft the description of each class if the classification cannot be easily found online

Trademarks - Filing


http://www.uspto.gov/trademarks/notices/international.jsp

http://www.uspto.gov/trademarks/notices/international.jsp

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Trademarks – Filing Strategies • Need not use the trademark – can file an “intent-to-

use” application (Recommended) • Best option is to file (1) on principal register for (2)

standard character trademark. Alternatives include: • Using a stylized mark (e.g., designs, pictures, etc.) • Seeking registration on the supplemental register

• Can seek help of an attorney to respond to rejections, which may include: • Arguing against “likelihood of confusion” with another mark • Arguing against descriptiveness of the mark • Rewording the description of the classes of goods/services


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Trademark – Filing Trademark Filing Walkthrough


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Technology Checklist for Start-Up Companies When and why to use the Technology Checklist for start-up companies


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Questions? Wayne Kennard 617-526-6183 [email protected] Zach Piccolomini 517-526-6027 [email protected]


Wilmer Cutler Pickering Hale and Dorr LLP is a Delaware limited liability partnership. WilmerHale principal law offices: 60 State Street, Boston, Massachusetts 02109, +1 617 526 6000; 1875 Pennsylvania Avenue, NW, Washington, DC 20006, +1 202 663 6000. Our United Kingdom offices are operated under a separate Delaware limited liability partnership of solicitors and registered foreign lawyers authorized and regulated by the Solicitors Regulation Authority (SRA No. 287488). Our professional rules can be found at www.sra.org.uk/solicitors/code-of-conduct.page. A list of partners and their professional qualifications is available for inspection at our UK offices. In Beijing, we are registered to operate as a Foreign Law Firm Representative Office. This material is for general informational purposes only and does not represent our advice as to any particular set of facts; nor does it represent any undertaking to keep recipients advised of all legal developments. Prior results do not guarantee a similar outcome. © 2014 Wilmer Cutler Pickering Hale and Dorr LLP

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