Licensing and Protecting Your Intellectual Property By Andrew Berger, Esq. For the Cornell Entrepreneurial Network Webinar on April 23, 2010
Some Considerations When Thinking About Licensing A license is a long-term mutually dependent relationship Termination of the licensee, though important, may not be an option Will both sides be able to make money from the deal ?
Some Additional Considerations Do you own the rights you are licensing? If a trademark license, are the goods on which your mark will appear appropriate for the mark? Will the goods manufactured by the licensee be of sufficient quality?
Before You License, Ask: Whats the potential market for the product/service in question? What is the other sides track record? What external forces might adversely impact the relationship?
When You Negotiate the License Win only the important points Build trust with every interaction You never know till you ask
Lets Now Talk About How to Protect Your IP We begin with copyright
What Works Are Protected? Original works of authorship fixed in a tangible medium Original works of authorship fixed in a tangible medium They include: music, books, magazines, photographs, movies paintings, sculpture, records and maps They include: music, books, magazines, photographs, movies paintings, sculpture, records and maps
What Does Original Mean? Originality means independent creation, not novelty Originality means independent creation, not novelty The work must reflect a minimal level of creativity but there is no aesthetic threshold The work must reflect a minimal level of creativity but there is no aesthetic threshold
When Is Copyright Created? When the copyrightable work is fixed in a tangible medium, including on paper or on a computers hard drive for more than few seconds When the copyrightable work is fixed in a tangible medium, including on paper or on a computers hard drive for more than few seconds
What Rights Does a Copyright Holder Have? Reproduce (copy) the work Reproduce (copy) the work Distribute the work Publicly perform the work Publicly perform the work Publicly display the work Publicly display the work Create derivative works (such as a movie from a novel)
Copyright? Who Owns the Copyright? The creator unless: The creator unless: She transfers ownership or She transfers ownership or The work is for hire The work is for hire Works for hire are created in two situations: Works for hire are created in two situations: The employee creates the work pursuant to his responsibilities The hiring party commissions an independent contractor to create certain categories of works and the parties agree in writing that the work is for hire
How Long Does Copyright Protection Last? Life of the author plus 70 years Life of the author plus 70 years For works for hire or owned by a corporation: 95 years from publication of the work or 120 years from its creation, whichever ends first For works for hire or owned by a corporation: 95 years from publication of the work or 120 years from its creation, whichever ends first
How Can You Best Protect Your Work? By registering it with the Copyright Office U.S. Copyright Office 101 Independence Avenue SE Washington, DC 20559-6000 (202) 707-3000 http://www.copyright.gov
What Are the Benefits of Registration? If the registration is timely, you can collect statutory damages and possibly attorneys fees from the infringer A timely registration is one made at any time before the work is infringed or, if it has been infringed, within 3 months of the works initial publication or distribution to the public
What Does Copyright Protect? The expression of the idea, not the idea itself. The distinction assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by work
What Constitutes a Trademark? Words that identify the brand Phrase or Slogan Design or Logo Even the NBC chimes
Acquiring Rights in a Trademark By public use; a trademark is an adjective, not a noun: say ROLLERBLADE® in-line skates, not rollerblades or Kleenex® Everyday Tissue, not Kleenex Say this is a SLEEPYS mattress from the Sleepys Mattress Co
Protecting Trademark Rights By Registration Registration will give you significant benefits: National priority: the exclusive right to use the mark nationwide in connection with the goods or services Only exception is in locations where another was using the mark before you registered
Non-Statutory Benefits The judge or jury will treat your claim more seriously Your registered mark may deter a second comer from registering something similar
Types of Registrations Use-Based Application Intent-to Use Application
Suggestions About Selecting a Mark Is it available-you need to do a search Is the mark strong? The 5 categories of marks in descending order of strength: Arbitrary Fanciful Suggestive Descriptive Generic
Strength of the Mark Depends on its Distinctiveness Arbitrary or fanciful marks are the strongest Arbitrary: common words applied in an uncommon way Fanciful are made up names with no dictionary meaning
Suggestive Marks Suggestive marks: suggest a quality or characteristic of the goods and services
Stay Away From Descriptive Marks Descriptive terms like Windows® only give rise to trademark rights after consumers associate them with a specific sourceusually only after years of expensive advertising Generic marks describe the product and are not marks at all. If the brand name becomes the generic name of the good in the publics perception, any trademark rights will be lost.
Proper Trademark Use Set the mark apart with large type or colors Use ® -- with the mark after the registration issues or SM confer no trademark rights; they are self-declared indications of claimed rights; use them before and during the application process
What Is Trademark Infringement? The use of a confusingly similar mark likely to cause a substantial number of consumers to be confused about whether the goods or services come from or are approved or sponsored by the trademark owner Not a bright-line test depends on evaluation of many facts and circumstances
The Cease and Desist Letter The letter should Name the mark holder, the nature of the trade or service mark, the date of first use and registration # Specify the infringers conduct and, if you know, the legal provisions violated Demand the infringer cease its conduct and confirm by a date certain it has done so Chose the closing carefully, say you will enforce your rights An overt threat to sue may prompt the infringer to start a declaratory judgment action
Settlement Strategies Settlement strategiessome suggestions Offer infringer reasonable time to migrate Gradual name change Limit the infringing use to specific goods, channels or areas Propose or accept a co-existence agreement Contribute to infringers cost of changing the infringing product License the mark to defendant for a royalty
Other Questions? Contact Andrew Berger at (212) 702-3167 or firstname.lastname@example.org. email@example.com Also visit Andrews blog at www.ipinbrief.com