Intellectual Property Intellectual Property Basics forBasics for

Copyright, Trademark, Copyright, Trademark, Trade Secrets & Trade Secrets &

LicensesLicensesPresented byPresented by

Barbara I. Berschler, EsquireBarbara I. Berschler, EsquireFor Maryland Small Business For Maryland Small Business

DevelopmentDevelopmentCopyright Berschler 2007-2010Copyright Berschler 2007-2010

What Is Copyright?What Is Copyright?

Exclusive rights granted by law to Exclusive rights granted by law to the creator (“author”) of a the creator (“author”) of a copyrighted work for a limited period copyrighted work for a limited period of time.of time.

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

How Did Copyright Law How Did Copyright Law Come to Be?Come to Be?

English Law in 18English Law in 18thth Century Century

Founders included in U.S. Founders included in U.S. Constitution (Art. 1, Sec. 8, Cl. 8)Constitution (Art. 1, Sec. 8, Cl. 8)

1976 Copyright Act, as amended1976 Copyright Act, as amended

How Is Copyright Created and How Is Copyright Created and Protected?Protected?

In the U.S., copyright protection In the U.S., copyright protection automatically attaches once a work automatically attaches once a work is fixed in any tangible medium of is fixed in any tangible medium of expression expression provided the work provided the work meets certain minimum meets certain minimum standardsstandards..

What Kinds of Works Can Be What Kinds of Works Can Be Protected by Copyright?Protected by Copyright?

Literary worksLiterary works Musical worksMusical works Dramatic worksDramatic works Pantomimes and choreographic worksPantomimes and choreographic works Pictorial, graphic and sculptural worksPictorial, graphic and sculptural works Motion picture & audiovisual worksMotion picture & audiovisual works Sound recordingsSound recordings Architectural worksArchitectural works

What Kinds of Works Are What Kinds of Works Are Not Not Protected by Copyright?Protected by Copyright?

Ideas, procedures, systems, methods Ideas, procedures, systems, methods of operation, concepts, principles or of operation, concepts, principles or discoveries (look to patents & trade discoveries (look to patents & trade secrets for protection).secrets for protection).

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

What Kind of Intellectual What Kind of Intellectual Material Is Protected by Material Is Protected by

Copyright?Copyright? Expression of the idea, not the Expression of the idea, not the ideaidea

itself.itself.

Work that is Work that is originaloriginal to the author. to the author.

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

How Long Does Copyright How Long Does Copyright Last?Last?

For individuals: life of the author For individuals: life of the author plus 70 years.plus 70 years.

For entities: 95 years from For entities: 95 years from publication.publication.

What Is a “Work Made for What Is a “Work Made for Hire?”Hire?”

Work created by an employee in Work created by an employee in scope of employment.scope of employment.

Specially commissioned work that Specially commissioned work that falls within one of nine categories: falls within one of nine categories: contribution to a collective work, contribution to a collective work, motion picture, translation, motion picture, translation, supplementary work, compilation, supplementary work, compilation, instructional text, test, answers to instructional text, test, answers to test, atlas.test, atlas.

How Does a Non-Creator How Does a Non-Creator Come to Own the Copyright?Come to Own the Copyright?

If an employee creates it. Employer If an employee creates it. Employer owns.owns.

If it is a “work made for hire” If it is a “work made for hire” andand you you have a prior written agreement to that have a prior written agreement to that effect. effect.

If it is another kind of creative work If it is another kind of creative work andand you have a prior you have a prior written assignmentwritten assignment of the copyright from the creator.of the copyright from the creator.

By inheritance.By inheritance.

What Is Copyright Notice and What Is Copyright Notice and Why Do It?Why Do It?

Easier to prove willful infringementEasier to prove willful infringement May deter potential infringersMay deter potential infringers Place copyright notice on the 1Place copyright notice on the 1stst

published editionpublished edition Notice has 3 elements:Notice has 3 elements:

– Copyright symbolCopyright symbol– Owner’s nameOwner’s name– Year of publicationYear of publication

Why Register a Copyrighted Why Register a Copyrighted Work with the Copyright Work with the Copyright

Office?Office? Registration is Registration is notnot required to obtain required to obtain

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

benefits:benefits:– Cannot file a lawsuit to enforce without Cannot file a lawsuit to enforce without

itit– Certain proofs easier to makeCertain proofs easier to make– Statutory damages may be availableStatutory damages may be available– Attorney fees may be availableAttorney fees may be available

What If More Than One Person What If More Than One Person Is Involved In Creating The Is Involved In Creating The

Work?Work? To avoid problems, have a written To avoid problems, have a written

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

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

How Can You Make Money How Can You Make Money From Your Copyrighted Work?From Your Copyrighted Work?

License its use to others (partial or License its use to others (partial or exclusive)exclusive)

Obtain royaltiesObtain royalties

Sell all rights in the copyright Sell all rights in the copyright (assignments)(assignments)

What Is Copyright What Is Copyright Infringement?Infringement?

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

What Steps To Take Against What Steps To Take Against An Infringer?An Infringer?

Send “cease and desist letter”Send “cease and desist letter” Demand payment of licensing feeDemand payment of licensing fee Institute a lawsuit to obtain:Institute a lawsuit to obtain:

– InjunctionInjunction– Actual DamagesActual Damages– Statutory DamagesStatutory Damages– Attorney FeesAttorney Fees

What If You Are Accused of What If You Are Accused of Copyright Infringement?Copyright Infringement?

There may be “technical” defenses There may be “technical” defenses available.available.

An important defense may be “Fair An important defense may be “Fair Use” such as for: criticism, news, Use” such as for: criticism, news, comment, teaching, scholarship, comment, teaching, scholarship, research.research.

Try negotiating a settlement by Try negotiating a settlement by paying licensing fee.paying licensing fee.

What Is A Trademark What Is A Trademark Or Service Mark?Or Service Mark?

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

The mark must The mark must alwaysalways be used in be used in conjunction with the existing conjunction with the existing business or enterprise.business or enterprise.

What Is A Trademark What Is A Trademark Or Service Mark?Or Service Mark?

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

The mark must The mark must alwaysalways be used in be used in conjunction with the existing conjunction with the existing business or enterprise.business or enterprise.

What Are the Purposes of What Are the Purposes of Trademarks?Trademarks?

Public not confused as to source of Public not confused as to source of goods or services.goods or services.

Business distinguishes itself from its Business distinguishes itself from its competitors.competitors.

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

What Do You Get When You What Do You Get When You Have A Trademark?Have A Trademark?

Exclusive right to use it with your Exclusive right to use it with your goods or servicesgoods or services

Valuable business asset (form of Valuable business asset (form of property)property)

Can be bought, sold, licensedCan be bought, sold, licensed

What Is The Legal Basis For What Is The Legal Basis For Trademarks?Trademarks?

In ancient times, cattle branding, craftsman In ancient times, cattle branding, craftsman marksmarks

Mid- 1800’s, English and U.S. courts Mid- 1800’s, English and U.S. courts recognized claims against “passing off” recognized claims against “passing off” (fraud)(fraud)

2020thth century courts concerned with century courts concerned with preventing consumer confusionpreventing consumer confusion

1870 Congress passed 11870 Congress passed 1stst trademark trademark registration lawregistration law

1946 Congress passed Lanham Act1946 Congress passed Lanham Act

What Is the Difference What Is the Difference Between Federal and State Between Federal and State

Trademark Law?Trademark Law? Trademark protection grew out of the Trademark protection grew out of the

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

(VA and MD yes; DC no).(VA and MD yes; DC no). Federal Registration is principally Federal Registration is principally

under the Lanham Act.under the Lanham Act. Federal protection Federal protection onlyonly for marks for marks

used in interstate commerce.used in interstate commerce.

What Can Be a Trademark?What Can Be a Trademark? WordsWords StaplesStaples

– Series of lettersSeries of letters CBSCBS– Series of numbersSeries of numbers model numbermodel number

LogosLogos– PicturePicture Sunmaid’s girlSunmaid’s girl– DesignDesign Burberry’s plaidBurberry’s plaid– SymbolSymbol Nike’s swoochNike’s swooch

SoundSound NBC chimesNBC chimes NameName DellDell NicknameNickname VW’s BeetleVW’s Beetle ColorColor Pink for insulationPink for insulation Trade DressTrade Dress Franchised Restaurant ThemeFranchised Restaurant Theme

Strong vs. Weak MarksStrong vs. Weak Marks

Strong marks are considered to be Strong marks are considered to be inherently distinctiveinherently distinctive, automatically , automatically public knows it is referring to a source.public knows it is referring to a source.

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

Generic terms Generic terms cannotcannot be trademarks, be trademarks, they ID the “thing” (aspirin, thermos, they ID the “thing” (aspirin, thermos, escalator).escalator).

How to Come Up With How to Come Up With a Strong Mark?a Strong Mark?

Made up words: Xerox, Kodak, Made up words: Xerox, Kodak, AmtrakAmtrak

Fanciful/Arbitrary: Apple computer, Fanciful/Arbitrary: Apple computer, Penguin booksPenguin books

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

Designs: Nike’s swooshDesigns: Nike’s swoosh

What Steps to Take What Steps to Take BeforeBefore You Adopt a Mark?You Adopt a Mark?

Search to find possible conflicting Search to find possible conflicting marksmarks

Hire professional searcher who will Hire professional searcher who will check for:check for:– Existing marksExisting marks– Cancelled marksCancelled marks– Applied for marksApplied for marks– Common law marksCommon law marks– State registrationsState registrations– CopyrightsCopyrights

What Is Involved With Applying What Is Involved With Applying For Federal Registration?For Federal Registration?

Conduct search Conduct search beforebefore you file you file Specify the goods or services being offeredSpecify the goods or services being offered Identify what international class(es) appliesIdentify what international class(es) applies Indicate “first use” and “first use in Indicate “first use” and “first use in

commerce”commerce” Identify ownerIdentify owner Provide drawingProvide drawing Provide filing fee ($325.00 per international Provide filing fee ($325.00 per international

class)class)

What If You Have What If You Have Not Not Used Used Mark In Interstate Commerce?Mark In Interstate Commerce?

You can file an “intent to use” You can file an “intent to use” application.application.

This reserves the important filing date.This reserves the important filing date.

When you do start to use the mark in When you do start to use the mark in interstate commerce, you file a interstate commerce, you file a Statement of Use.Statement of Use.

How Long Does Federal How Long Does Federal Trademark Registration Last?Trademark Registration Last?

10 years and is renewable 10 years and is renewable indefinitely provided mark is indefinitely provided mark is continuously used.continuously used.

Failure timely to renew and pay fee Failure timely to renew and pay fee can lead to abandonment of mark.can lead to abandonment of mark.

What Must You Do What Must You Do To Protect Your Mark?To Protect Your Mark?

Continuously use it in connection Continuously use it in connection with goods or services.with goods or services.

Police the use of your mark.Police the use of your mark. If licensing, monitor its use by others.If licensing, monitor its use by others. Address infringements.Address infringements. Comply with the USPTO Comply with the USPTO

requirements.requirements.

Under What Circumstances Under What Circumstances Could You Be Liable for Could You Be Liable for

Infringement?Infringement? Adopting a confusingly similar mark Adopting a confusingly similar mark

to that owned by another.to that owned by another.

Incorporating another’s mark into Incorporating another’s mark into your mark.your mark.

Displaying another’s mark without Displaying another’s mark without their permission.their permission.

What Is a Trade Secret?What Is a Trade Secret?

It is any valuable information that It is any valuable information that you have accumulated, discovered, you have accumulated, discovered, developed, or generated in developed, or generated in connection with the operation of your connection with the operation of your business that is business that is notnot generally known; generally known; and and

For which you take reasonable steps For which you take reasonable steps to preserve the secrecy.to preserve the secrecy.

What Are Some Examples of What Are Some Examples of Trade Secrets?Trade Secrets?

Customer and supplier listsCustomer and supplier lists Business and marketing plansBusiness and marketing plans Software developed for youSoftware developed for you Internal procedures you have Internal procedures you have

developeddeveloped Techniques and systemsTechniques and systems

Is There Any Time Limit On Is There Any Time Limit On Trade Secrets?Trade Secrets?

No.No.

As long as you can “keep” the secret, As long as you can “keep” the secret, then it continues to exist.then it continues to exist.

Think of the formula for Coca-Cola.Think of the formula for Coca-Cola.

What Must You Do to Protect What Must You Do to Protect the Trade Secret?the Trade Secret?

Some measures you can take:Some measures you can take:– Identify what is the trade secret you want to Identify what is the trade secret you want to

protectprotect– Stamp documents “confidential”Stamp documents “confidential”– Have employees and consultants Have employees and consultants sign sign

confidentiality agreementsconfidentiality agreements– Lock away sensitive materialsLock away sensitive materials– Protect computers with firewalls & passwordsProtect computers with firewalls & passwords– Allow access only to those “who need to know”Allow access only to those “who need to know”– Faithfully and strictly enforce your proceduresFaithfully and strictly enforce your procedures

Is There a Law for Trade Is There a Law for Trade Secrets?Secrets?

Many states, including Maryland and Many states, including Maryland and Virginia, and the District of Columbia Virginia, and the District of Columbia have adopted some form of the have adopted some form of the Uniform Act.Uniform Act.

Courts have also influenced how the Courts have also influenced how the law developed.law developed.

What If Someone What If Someone Misappropriates Your Trade Misappropriates Your Trade

Secret?Secret? ““Misappropriate” means someone acquired Misappropriate” means someone acquired

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

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

Attorney fees possible—but be careful, this Attorney fees possible—but be careful, this could go the other way.could go the other way.

Is There a Time Limit For Is There a Time Limit For Misappropriations?Misappropriations?

Yes, you must bring your lawsuit Yes, you must bring your lawsuit within 3 years after you discovered within 3 years after you discovered the misappropriation or by the the misappropriation or by the exercise of reasonable diligence it exercise of reasonable diligence it was discovered.was discovered.

How Do Non-Disclosure How Do Non-Disclosure Agreements Work?Agreements Work?

As part of your efforts to protect trade As part of your efforts to protect trade secrets, you want to have all who will come secrets, you want to have all who will come in contact under a legal obligation in contact under a legal obligation notnot to to disclose or use the trade secret without your disclose or use the trade secret without your permission.permission.

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

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

Contact InformationContact Information

Barbara I. BerschlerBarbara I. Berschler

Press, Potter & Dozier, LLCPress, Potter & Dozier, LLC

7910 Woodmont Avenue, Suite 13507910 Woodmont Avenue, Suite 1350

Bethesda, MD 20814Bethesda, MD 20814

301-913-5200301-913-5200www.berschlerlaw.com