Intellectual Property

Imagine opening the front door of your office and letting people walk off with your computer, telephone, furniture, and whatever else your company owns. Sound crazy? Yet that’s what many companies do when it comes to neglecting their own intellectual property. If you fail to protect this, your company could lose far more money than you ever imagined. It may be the most valuable thing your company owns.

Even if your company isn’t directly involved in technology, it can’t avoid intellectual property issues. Intellectual property is a broad category of what are called “intangible rights.” These are rights that protect products of a person’s mind that have commercial value. In other words, those thoughts can be valuable under the right circumstances. Just as there are laws that protect ownership of a person’s private property, there are laws that protect intellectual property as well.

Intellectual property continues to be one of the most litigated areas in technology law. From the early days of the Internet, intellectual property has been at the forefront of the e-commerce revolution. It is the lifeblood of any technology company and should be guarded with the utmost of care. Issues involving copyright, trademark, and trade secrets are always part of doing business today, either in cyberspace or in the “real world.”

COPYRIGHT

copyright symbolChances are that your company produces many things which qualify for copyright protection. Even if your company does not copyright its own work, it may use the copyrighted works of others.

Copyright is the foundation of protecting creative expression. It’s among one of the best known forms of intellectual property protection and applies to a wide range of creative works. Songs, artwork, photographs, sculptures, movies, software, and websites are a few of the many works eligible for this protection.

It’s so easy to distribute copyrighted works over the Internet today, that even children routinely do it. This is why so many disputes involving copyright are at the forefront of technology law. And they won’t be going away anytime soon. Cases involving record companies, film studios, television networks, photographers, and authors continue to ensure that the issue of copyright will remain in the public consciousness.

What Rights Does Copyright Give Me and How Do I Get One?

A copyright gives the owner the exclusive right to reproduce, adapt, modify, distribute, perform, and display the work. It gives the owner the right to exclude others from using the copyrighted material without the owner’s permission. Copyright is governed entirely by federal law. Neither Massachusetts nor any other state can pass legislation which overrides copyright law.

Copyright is typically among the easiest and most inexpensive intellectual protection to obtain. The standard is quite low. (1) It must be an original work of authorship. This means that the author created it and did not copy it from another source. It also must have some modicum of creativity. It doesn’t have to be much creativity, but it must be just enough to trigger protection. If there is no creativity involved, the court will not give it any protection, no matter how much effort was put into it. (2) The work must also be fixed in a “tangible medium of expression,” such as written on paper, captured on film, or stored on computer media. There are many ways that a copyrightable work is considered to be fixed.

It’s important to understand the difference between “expression” and “idea.” The purpose of copyright is to protect the expression of an idea and not the idea itself. For example, there have been many stories written about haunted houses. While copyright will protect an author’s distinctive story about a haunted house (the expression), it will not allow the author to keep anyone else from telling a different story about a haunted house (the idea). The idea/expression distinction allows the idea of haunted houses to remain in the public domain as “creative raw material” for anyone else to use. This in turn, allows more people to contribute stories about a particular subject and provides a greater body of knowledge which can be shared and enjoyed by everyone.

Do I Have to Register My Work at the Copyright Office?

Despite what you may have heard, registration of a particular work at the Copyright Office is not a requirement for obtaining a copyright. Copyright occurs the moment the work is fixed in a tangible medium of expression. There are, however, certain advantages of registration. Registration is a prerequisite to filing suit against a potential infringer. Registration also creates a legal presumption that the copyright is valid and the owner listed on the certificate is the owner of the work. In addition, if the registration is secured within the first 3 months of publication of the work or prior to any act of infringement by another party, the copyright owner can collect “statutory damages” plus attorney’s fees (if the matter goes to trial). The registration process itself is easy. It involves filling out a form, depositing a sample of the work with the Copyright Office (depending upon the type of work), and payment of a fee. A registration certificate usually issues a short time later.

Another popular misconception is use of the “©” notice. Although many believe otherwise, the absence of a copyright notice does not mean that a work is not protected. As noted above, a work is now copyrighted as soon as it is fixed in a tangible medium of expression. While the copyright notice used to be a requirement under older versions of the copyright statute (and could still apply in some circumstances), Congress made it optional in 1988 when it passed the Berne Convention Implementation Act. This act aligned American copyright law more closely with international standards.

Placing a copyright notice on a work, however, could still prove to be beneficial to the owner. It alerts others that the work is protected by copyright and can stop someone from asserting an “innocent infringer” defense. While it is better to have a notice, its absence won’t keep you from obtaining copyright protection.

How Long Does a Copyright Last?

A copyright can last for many years, depending upon when the work was created or published and what copyright laws were in effect at the time. In most cases, copyright lasts the life of the author plus 70 years. If the author is a company, or if the work was created anonymously or under a pseudonym, it can last from 95 to 120 years, depending upon the date the work was published or created (whichever is shorter). After a copyright expires, the work enters the “public domain.” This means that the work is no longer protected and anyone can use it without having to obtain permission from the author (or the author’s heirs) and without fear of being liable for infringement.

While it may be easy to obtain a copyright, copyright law itself is extremely complex and requires careful attention to detail. Copyright infringement is among some of the easiest infringement to commit, particularly on the Internet. Your company needs a law firm that understands the many facets of copyright law, particularly as it applies to technology and the Internet. We can assist your company navigate through this difficult, complex, and evolving legal area. Specifically, we can help your company:

  • Obtain a copyright;
  • Pursue an infringer;
  • Defend against allegations of infringement;
  • Analyze the impact of particular copyright laws on your business; and
  • Analyze how copyright laws can impact new technologies.

TRADEMARKS AND DOMAIN NAMES

registered trademark symbolJust name the product or service, and there is no shortage of many competing companies which offer it. In a marketplace flooded by products and services, commentators often discuss the importance of “branding,” “brand names,” and “brand loyalty.” Whether they realize it or not, they are referring indirectly to trademarks. In many ways, trademarks are at the foundation of a company’s branding efforts.

Why are Trademarks Important?

Trademarks are important because they give companies the ability to differentiate themselves and their products from those of their competitors. They also allow companies to build their business by investing their resources in brands that may eventually have broad commercial appeal. For example, there are many different beverages out there, but there’s only one Coca-Cola®. There are many types of overnight delivery services, but there’s only one Federal Express®. These companies safeguard their trademarks vigorously to ensure that there’s no violation of the commercial image these marks represent. Litigation involving trademark infringement, dilution, and unfair competition is common and indicates of how fiercely companies protect their brands.

What Exactly is a Trademark?

A trademark is a word, phrase, logo, graphic symbol, or other device (such as a sound, smell, or color) used by a company to distinguish its product from others. Everyone is familiar with well-known trademarks such as IBM®, Coca-Cola®, and Chevrolet®. By just mentioning these trademarks, an image is elicited in the minds of the consumer. That’s exactly the point behind a trademark—it differentiates products and indicates when products originate from a single source.

Even the way a product is packaged and labeled, or the way a store is decorated, such as the iconic look of a Campbell’s® soup can label or the distinctive look of a Banana Republic® store can help to distinguish one product from another. This is an area of trademark law known as “trade dress” and can also play an important role in product differentiation. A service mark is essentially the same as a trademark, but it distinguishes the services of one company from another. Citibank® (financial and banking services) and CNN® (television broadcasting services) are examples of service marks. Service marks can also function as trademarks, and vice versa. For example the Starbucks® mark does not just function as an identifier for coffee services, but also for a particular brand of coffee sold under the same name. Trademarks and service marks can also encompass advertising slogans such as the “Just Do It®” from Nike® or “What Can Brown Do For You?®” from UPS®.

How does the Internet Affect Trademark Rights?

In cyberspace, trademarks take on particular significance. You may have heard about domain name disputes and the so-called “cyber-squatter.” This is a person who registers a domain name based upon another company’s mark and refuses to relinquish it.

For example, a person who registers the domain name “DeltaAirlines.com” before Delta Airlines® could be found to be infringing on Delta’s mark. However, not all domain name registrations, even those based upon valid trademarks, lead to legitimate charges of cyber-squatting. The term “Delta,” which is a common trademark, is not only associated with an airline, but is also used by a company that sells faucets (and by many other companies). On the Internet, however, there can be only one “Delta.com.” In this situation, either company—or any number of others—may have legitimate rights to register and use this name. A charge of cyber-squatting against the owner can lead to a countercharge of what is known as “reverse domain name hijacking,” whereby the domain name owner accuses the complaining party of harassment and of attempting to usurp the owner from his/her legitimate right to use the name.

Although domain name disputes are not as high-profile as they were during the 1990s, they are still common. All of the domain name registrars are obligated to follow the Uniform Domain Name Dispute Resolution Policy (“UDRP”), an internal administrative procedure that addresses disputes involving domain names and trademarks. The UDRP, however, is not the last word on resolving these disputes. They can still end up in court and lead to expensive litigation that can affect a company’s ability to differentiate itself in the marketplace.

Furthermore, the use of metatags and other types of textual cues to aid search engines in locating sites for potential customers has also spawned a great deal of litigation. Issues involving the sale of keywords to parties other than trademark holders have also generated disputes. Cases involving pop-up advertisements and other Internet marketing tactics have also been subject to infringement actions. As new technology is developed to promote a company’s products or services, trademark disputes are never far behind.

What Should My Company Do?

Don’t overlook the importance of securing rights in the name of your company’s products and services. It is an important first step in creating an image in the minds of consumers about the type of products or services that you sell. Even though your company may be located in Massachusetts, its products or services likely have a national (and even international) market. If your company is committed to quality and providing a first-rate product or service, why not start creating and protecting that image at both the local and national level?

Registering your company’s trademarks or service marks at both the federal and state level is an essential part of that process. We can help you in all aspects of managing your company’s trademark practice. We can assist your company:

  • Determine if a mark qualifies for protection;
  • Secure a registration;
  • Formulate trademark usage guidelines;
  • Pursue an infringer; and
  • Defend your company from allegations of infringement.

Understanding the implications of trademark use on the Internet and in cyberspace is also a crucial part of your company’s business strategy. We can help your company:

  • Seek recourse against a cybersquatter;
  • Defend your company from cybersquatting allegations;
  • Determine if keywords, metatags, pop-up advertisements, and other on-line marketing tools have trademark implications;
  • Analyze other trademark issues that arise in connection with your business.

TRADE SECRETS

TOP SECRET red stamp on a documentEveryone has secrets. So do most companies. A company may make a great deal of money from its secrets, particularly its “trade secrets.” A trade secret has no precise definition and can be different things to different companies. A trade secret can be a customer list, formula, process, physical device, software program, method, technique, database, or any other type of business information that: (1) provides a competitive advantage; and (2) stays secret. It has a purposely broad definition, as there is a wide variety of information that can give a company a competitive edge.

What Should My Company Do to Protect its Trade Secrets?

As the name suggests, the fundamental principle associated with any trade secret is that it stay secret. The formula for Coca-Cola® may be the most famous example of a trade secret which has been rigorously guarded for over a century. Unlike copyrights and patents which expire after a set period of time of exclusive use, a trade secret can potentially last forever as long as it is kept secret and the information is not disclosed or discovered independently. The longer it is kept secret, the longer the company can exploit it.

Unlike copyrights and patents, trade secrets require that they remain secret at all times. Disclosing a trade secret, whether done through inadvertence or spite, can be disastrous for a company. This is particularly true if the disclosure occurs on the Internet which allows for rapid and irreversible dissemination to others, including your competitors. It’s no surprise that companies go to great lengths to ensure that their trade secrets are tightly controlled at all times.

While inadvertent disclosure by a careless employee is damaging enough, the biggest threat is the employee who purposely discloses your company’s secrets. This is known as “misappropriation.” There are many stories of employees who steal and disclose their companies’ trade secrets in retaliation for being fired, laid off, disciplined, or passed over for a promotion. Some employees make these disclosures as a way to protest their company’s stance on political or moral issues. Some employees, about to leave the company to join a competitor, have decided to transmit these secrets to their new employer. And cases of corporate espionage are still common.

What Should My Company Do?

These are just a few of the many scenarios that businesses face in an increasingly competitive marketplace. Ultimately the person who engages in this wrongful conduct is responsible for the misappropriation, however this can still damage or destroy the livelihood of your company. Every company, regardless of size or resources, must plan to protect its trade secrets.

We will help your company evaluate the legal status of your trade secrets. We can conduct an audit and evaluate if certain information qualifies for trade secret status. We can help determine if your company has taken the appropriate measures to safeguard its secrets, and provide you with insight into the legal steps necessary for protecting your company’s most valuable information. We can review your contracts with employees, independent contractors, licensees, and others to determine if your company is maximizing its contractual protections against disclosure.

Finally, whether it is initiating suit against someone whom you believe appropriated your company’s secrets, or defending your company against allegations that it misappropriated another company’s secrets, we can provide you with representation at every stage in the litigation process.

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