Blog : Intellectual Property Protection

Lean Business Start Up

The new way to start a business is to start out with a vision of making money and not spending it.  Try to create your vision with what you have and see if your customers will buy your products before going deeply in debt.  Borrowing money to try to cover all of the aspects that you believe your business could be creates more risk and uses resources that may be needed elsewhere. 

Check out this article on bootstrapping your business start-up efforts. http://www.inc.com/magazine/20110201/the-art-of-the-pivot.html

Jeffery A Jacobson

Why Should I Register A Copyright?

Copyright Protection:

What is a Copyright?

A copyright is the protection created under the United States Copyright Act which protects “an original work of authorship.” Copyrights protect music, photographs, video, films, works of art, software, buildings, and architectural drawings when they are put into a fixed form that can be copied and distributed.

What are the Advantages to Registering a Copyright?

A Copyright exists when the work is created by the author. It is created when it is in a form that can be copied and distributed to others. This “common law” copyright protects the author’s creation against unauthorized copying. However, the US Copyright Act preempts the enforcement of common law copyrights. Therefore, in order to sue to enforce the author’s copyright in his or her work, the copyright must be registered with the US Copyright Office. The following are advantages of registering your copyright:

  • You can immediately sue to enforce your copyright in your work;
  • You may be entitled to attorney fees;
  • The presumption that the registered owner’s copyright in the work is valid;
  • You can record your registration with US Customs and Boarder Protection to stop infringing products from entering the US.

Who is the Owner of the Copyright in a Work?

Generally, the author is the owner of copyright. If there are multiple authors, they may share the copyright and there may be several layers of copyrights in a work. For example, if one individual writes the text to a book and another does the illustrations, the author of the text owns that copyright in the text and the illustrator owns the copyright in the illustrations.

Ownership of a copyright right will reside in one who is not the author only:

  1. if the copyright has been assigned,
  2. if the work is a “work made for hire,” or
  3. the copyright is transferred by law, such as by will, descent, or bankruptcy.

A “work made for hire” is defined as:

  1. a work prepared by an employee within the scope of his or her employment; or
  2. a work specially ordered or commissioned in a signed writing for use as:
    • contribution to a collective work
    • a part of a motion picture or other audiovisual work
    • a translation
    • a supplementary work
    • a compilation
    • an instructional text
    • a test
    • answer material for a test
    • an atlas

Courts have ruled that this definition is narrow. Even if the parties expressly agree in a written instrument that the work shall be considered a work made for hire, it may be determined by the court that the work is not one of the defined “works made for hire” as described in the statute. Therefore, care must be taken to make sure all rights are assigned to the correct party in writing.

Protection of copyrights based on several levels of the same work can be complicated. When multiple individuals are involved in the creation of the work, various levels of ownership need to be discussed and reviewed carefully. It is important to have an experienced copyright attorney involved throughout the process of creating the work to highlight any issues early in the process. This can save you headaches and money in the long run.

Our intellectual property lawyers take the time to assess, discuss, and guide you through copyright ownership, licensing copyrights, copyright royalties, confidentiality agreements, and, when necessary, copyright litigation. An original work of authorship often represents years of hard work. Securing that work with copyright protection is essential to protect your rights.

If you have questions regarding copyrights or other intellectual property, please contact Jeffery Jacobson.

Who Owns Your Plans?

Do you create your own house plans or blueprints?  Do you have someone (e.g. an architect) assist or create layouts and blueprints for you?   If you paid to have them drawn up, you may or may not be the owner of the plans or blueprints.  What do I mean?  You may have the right to use the plans, but copyright laws will control whether you have the right to sell the plans, stop someone else from using the plans, or alter the plans without the permission of the creator.

Copyright 101:  In the U.S., the owner of a copyright in a work is the author.  In most cases, this is an individual or a group of individuals working together to create the work.  When a group is involved, the ownership rights are shared among them and any one of the owners has the right to use the work, with some exceptions, of course.  If an artist or architect creates a work for you, your right to use the work will be based either on an assignment or an agreement.

  • An assignment can be used to transfer copyright ownership rights to you.  An assignment is merely an agreement where the creator of the work agrees to assign all of his or her rights in the work to you in return for a payment (or ongoing payments).
  • A work made for hire is owned by the hiring party, not the creator.  There are two distinct types of work that may be classified as “made for hire”: (1) a work created by an employee within the scope of employment or (2) a commissioned work created by an independent contractor (non-employee) that is the subject of a written work-for-hire agreement and that falls within a special group of categories. Drawings or architectural plans are not included in the work-for-hire categories. Therefore, assignment language must be used in a written agreement with an independent contractor.
  • A license is the right to use the artwork for a specific purpose. A license does not transfer copyright ownership and only gives you limited rights as defined by the licensor.

It is always best to have ownership rights spelled out in a written document.  Otherwise, you may be surprised to find out that you have only paid for a license to use the plans.  If the creator is the owner, he or she is free to sell them to your competitor.

* Jeffery Jacobson is an attorney with Parmenter O’Toole, PLC in Muskegon, Michigan. Parmenter O’Toole is a full-service business and real estate firm with extensive experience in the area of construction law. The comments in this article are not intended to be a substitute for legal guidance or advice for a specific situation.  You should obtain informed legal counsel to assist in your decisions relating to any issues which may be raised in this article.  For additional information regarding the above topic, or any other intellectual property issues you may have, Jeff can be reached at Jeffrey A. Jacobson or 231.722.5405.

Trademark Registration Protection

Choosing a Business Name and Protecting Your Brand Choosing a name to properly represent your product or service can be difficult and should be done with careful consideration. Before choosing a name, you should do a basic search to determine whether the name you have chosen will infringe on another’s trademark rights. Searching should, at a minimum, be done at the state and federal level to discover any registered marks that may be confusingly similar to the mark you have chosen. A more in-depth search may be done by searching telephone directories and county records.

Researching a name before you start using it is important not only to guard against infringement of another’s mark, but also to start your business with a name that will not be confused with your competitors. Most businesses spend thousands of dollars every year to promote their products or services and create name recognition. If someone has a similar name, a customer could mistake your advertising for promotion of your competitor’s products or services.

Once you have chosen the perfect name, how do you protect it? Unregistered names are protected by common law trademark infringement. To enforce your rights to a mark under common law, you must prove that a business competitor has adopted a name that is confusingly similar to the one already being used by you and the similarity results in a likelihood or probability of confusion among consumers who are using ordinary care. In other words, the burden is on you to prove that you used the mark first and that your customers will be confused by your competitor’s use of the mark.

Why should you register a mark if it can be protected by a common law action? There are several advantages to registering a mark with the U.S. Patent and Trademark Office (USPTO). First, registration gives notice to the world that you claim the mark in association with your product or service. Second, registration allows you to receive up to treble damages (triple the amount of damages) in a suit for infringement to protect your mark. Third, and most important, registration creates several presumptions. Registration creates a presumption that a mark is valid and that the owner of the registration owns the mark. Also, it is presumed that the owner has exclusive rights to the mark and that the mark is not confusingly similar to other registered marks. Finally, if you plan to use your mark outside the U.S. (e.g. Internet sales), a registered mark allows you to file applications for foreign registration based on your U.S. registration. Also, if you compete against foreign companies in the U.S., registration with the USPTO allows you to prevent the importation of goods bearing marks that are confusingly similar to your mark by further registration with U.S. Customs.

Protection of your mark does not end at enforcement in infringement actions. A mark must be used the correct way to protect its registration and uniqueness, as it is associated with a product or service. When using your mark, you should give notice of your claim to it as a mark. For an unregistered mark, the notation (TM) is used after the mark ((SM) for a service mark). For registered marks, the notation “®” is used to give notice of the mark’s registration. If you do not give such notice, it may be difficult to prove that infringement by a competitor was intentional, which may decrease the amount of damages that you are entitled to.

In addition, you should not allow your mark to be used as an adjective to describe your products. Such use could cause your mark to become generic and descriptive of the product or service. For example Xerox ® spends millions of dollars each year to educate the public that Xerox is a brand of copy machine (i.e. “use our Xerox ® brand copier” not “Xerox this document”). The mark should also be set out distinctively in text by either use of a logo, underlined, or italicized. Finally, if you are going to allow some to use your mark, you need to make sure you license use of the mark to such person and enforce unauthorized use outside of the license agreement.

With the advent of E-commerce it has become more important for businesses to protect their names. A business that was once just local can now be national or global. Companies selling over the Internet are now invading local markets, which may take business away from the “mom and pop” corner store. If a company is using a name similar to yours, potential customers purchasing on the Internet could be confused as to whom they are purchasing products or services from. Therefore, with careful selection of a name and proper protection, you can guard against a competitor profiting from the hard work and money you spent to create your band name associated with your products and services.

For more information, please contact Jeffery A. Jacobson

Ownership of Rights in Product Development

Ownership of Rights in Product Development

Intellectual property is comprised of various rights recognized by the law which were created to protect the result of creative efforts. Those rights can be embodied in such things as patents, trademarks, copyrights, trade secrets, rights of publicity, confidential information, shop rights, license rights, contract rights, know-how, and the right to fair competition.

Ownership of intellectual property is not an all or nothing proposition. Just because you may own a patent does not mean that someone else may not have the right to use the patented invention or a portion of that invention. In fact, it is not uncommon for an author of a book to own the copyright, but for the publisher to effectively control most of the rights emanating from that copyright.

What types of ownership should you be concerned with in product development?

  • You should be aware that copyrights are owned by the author unless it is otherwise assigned through a written agreement to someone else or was developed by an employee within the scope of employment. For example:
    • Software code is owned by the person who wrote it even if you paid that person to write it for you;
    • Illistrations in a book are owned by the artist even if you wrote the text of the book and paid the artist to incorporate the drawings into your book;
    • CAD or other models created are owned by the creator even if you paid a machine shop to prepare a prototype for you;
    • Recordings of music you wrote are owned by the recording company unless otherwise transferred through a written agreement; and
    • Advertising designs created by an advertiser on your behalf are owned by the advertiser.
  • You are not the “inventor” if you came up with the “idea”. An inventor is the person who takes an idea and develops it into something that actually works (e.g. a working prototype developed from the idea).
  • There may be multiple owners. Absent an express agreement otherwise, each joint inventor is presumed to have an undivided equal interest in the invention (and any patent covering the invention), and can exploit or transfer that interest without accounting to the other owner or owners. However, copyright owners may restrict use by joint owners and require owners to share the income from sale of the product.
  • Trade secrets are also valuable assets that may be owned. What may constitute a trade secret extends beyond what may be patentable, and includes any formula, pattern, drawing, device, machine, or compilation of information (including customer lists) that is used in a business and that gives the business an opportunity to obtain an advantage over competitors who do not know it or use it. If the owner of a trade secret attempts to keep confidential valuable and secret business information, the owner will have legal rights against others who use improper methods to obtain that information.

KEY TIPS:

Care needs to be taken to make sure that you understand and agree on ownership rights BEFORE you begin working on a project. In order to enforce that agreement, it must be in writing. Also, when multiple owners will be involved in the project, you should use an LLC or corporation to organize the ownership interests.

If you have questions regarding your website or other Internet law questions, please contact Jeffery Jacobson.

Department of Justice Says Google Book Deal May Violate Antitrust

The US DOJ has stated that the revised agreement to settle copyright lawsuits against Google for the use of author’s books may still violate copyright and antitrust laws. Particularly, the class action procedure for future copyright claims against Google reaches beyond the claims that are currently at issue. This provision is too broad. It is trying to grant rights that are not consistent with the “core principle” of the Copyright Act. The DOJ stated that, granting such broad rights could create anticompetitive advantages for Google.

However, the Department of Justice stated that “[it] continues to believe that a properly structured settlement agreement in this case offers the potential for important societal benefits.” The department stated that “it is committed to continuing to work with the parties and other stakeholders to help develop solutions through which copyright holders could allow for digital use of their works by Google and others, whether through legislative or market-based activities.”

Click here to read more.

Questions contact Jeffery Jacobson