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Presentation to PRSA’s Counselors Academy Forum SAFEGUARDING YOUR AGENCY’S BIG IDEAS: HOW TO PROTECT YOUR INTELLECTUAL PROPERTY IN THE NEW BUSINESS PROCESS?

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Presentation on theme: "Presentation to PRSA’s Counselors Academy Forum SAFEGUARDING YOUR AGENCY’S BIG IDEAS: HOW TO PROTECT YOUR INTELLECTUAL PROPERTY IN THE NEW BUSINESS PROCESS?"— Presentation transcript:

1 Presentation to PRSA’s Counselors Academy Forum SAFEGUARDING YOUR AGENCY’S BIG IDEAS: HOW TO PROTECT YOUR INTELLECTUAL PROPERTY IN THE NEW BUSINESS PROCESS? September 30, 2014 Michael C. Lasky Public Relations Law Chair/ Litigation Practice Group Co-Chair 212.468.4849 mlasky@dglaw.com © 2014 Davis & Gilbert LLP

2 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 1 INTRODUCTION »Basics of Intellectual Property Law »Intellectual Property and the Agency/Client Lifecycle -Protection of Agency Speculative Creative Work for Prospects -Negotiating the Intellectual Property Provisions of an Agency Client Agreement -Protection of Agency Speculative Creative Work for Clients

3 WHAT’S AN IDEA WORTH?

4 Agency Intellectual Property Workshop 3

5 $30.1 MILLION $12 MILLION IN INTEREST

6 THE BASICS OF INTELLECTUAL PROPERTY LAW

7 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 6 COPYRIGHT »Copyright protects “original works of authorship” which includes text, music, art, drawings, dramatic works, sculptures, books and photographs

8 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 7 COPYRIGHT »Copyright protects the “author” of the work »Copyright provides the author of the work the certain rights including: -The right to reproduce -The right to prepare derivative works -The right to distribute copies and -The right to display work publicly

9 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 8 WHAT’S THE DIFFERENCE BETWEEN AN “IDEA” AND THE “EXPRESSION” OF AN “IDEA”? »Idea: -The brave captain of a faster-than-light starship valiantly fought the alien race using laser weapons in order to save all of humanity

10 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 9 WHAT’S THE DIFFERENCE BETWEEN AN “IDEA” AND THE “EXPRESSION” OF AN “IDEA”? »Example 1: Expression of the Idea

11 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 10 TRADEMARK »Trademark protects names, titles, short phrases and other symbols that distinguish the source of one product from another

12 Agency Intellectual Property Workshop 11

13 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 12 TRADEMARK »Just Do It »Think Different »A Diamond Is Forever »Got Milk?

14 HOW INTELLECTUAL PROPERTY RIGHTS RELATE TO THE AGENCY / CLIENT LIFECYCLE

15 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 14 THE AGENCY CLIENT LIFECYCLE »Speculative Pitches for Potential Client »The Agency Client Agreement »Speculative Pitches for Existing Clients »Ending the Agency Client Relationship

16 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 15 SPECULATIVE PITCHES FOR POTENTIAL CLIENTS »What’s protected by intellectual property laws in a firm’s pitch materials? -The entire deck is protected by copyright Images Copy Individual components, such as examples of client marketing materials

17 Agency Intellectual Property Workshop 16 SPECULATIVE PITCHES FOR POTENTIAL CLIENTS

18 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 17 SPECULATIVE PITCHES FOR POTENTIAL CLIENTS »Individual components can be protected -This “Let it out” advertisement is protected by copyright, including the image, layout and copy

19 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 18 SPECULATIVE PITCHES FOR POTENTIAL CLIENTS »Set dressing for the “Let it out” lounge is protected by copyright

20 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 19 SPECULATIVE PITCHES FOR POTENTIAL CLIENTS »Pitch materials will likely include a recommendation of a logo, tagline or other trademark: -Remember, trademark protection does not arise without use, so there is no trademark protection of the tagline “let it out” at the point of presentation. However, protection could be obtained in other ways

21 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 20 SPECULATIVE PITCHES FOR POTENTIAL CLIENTS »How can you protect your pitch materials that are not protected by intellectual property law? »Five Alternatives MOST PROTECTION LEAST PROTECTION Pitch Agreement The “Elegant Email” Oral Disclosures NDA Written Disclosure

22 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 21 SPECULATIVE PITCHES FOR POTENTIAL CLIENTS 1.Agency’s Pitch Agreement -Most comprehensive protection -Specifies Services to be rendered by agency Payment to agency, if any Ownership of pitch materials to agency Non-disclosure obligations of agency and client

23 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 22 SPECULATIVE PITCHES FOR POTENTIAL CLIENTS 2.Non-Disclosure Agreement -We recommend that the Non-Disclosure Agreement specify that the agency retains all right, title and interest in and to the presentation materials, affording similar intellectual property protection as the Pitch Agreement

24 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 23 SPECULATIVE PITCHES FOR POTENTIAL CLIENTS »Beware of the potential client’s “killer” NDA and the client’s pitch agreement -“Killer” NDA is a non-disclosure agreement with extra “stuff” -Usually includes a provision transferring intellectual property

25 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 24 SPECULATIVE PITCHES FOR POTENTIAL CLIENTS -Example of “Killer” NDA: WHEREAS in connection with the request for proposal (the “RFP”), discussions and meetings between you and Hilton regarding the exploration of a possible contractual relationship or other agreement utilizing your and/or Hilton’s products and/or services (together, the “Concept”) -All use of Confidential Information or other information and all derivations thereof or inventions arising from or related to the Concept shall be and inure solely to Hilton’s right, title, interest and benefit (including all intellectual property rights or interests relating thereto or arising therefrom, worldwide and in perpetuity, in all media now known or hereafter developed)...

26 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 25 SPECULATIVE PITCHES FOR POTENTIAL CLIENTS 3.As an alternative to a Pitch Agreement or NDA, consider the “elegant email” solution -You send a simple email to the potential client regarding the ownership of the pitch materials, and get them to agree that the agency retains the rights -“Thanks again for the opportunity to pitch for PR services for your new program. As we discussed, the agency retains all rights to the materials we present, unless we agree on appropriate compensation. I really hope we will be doing business together”

27 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 26 SPECULATIVE PITCHES FOR POTENTIAL CLIENTS 4.Written Disclosures -May or may not be enforceable as a contract between the agency and the potential client -However, they let the client know that the agency takes these matters, and its intellectual property, very seriously, and may actually have a non-legal preventative effect

28 Agency Intellectual Property Workshop 27 SPECULATIVE PITCHES FOR POTENTIAL CLIENTS © [DATE] [AGENCY NAME]. The trademarks, trade names and logos used herein are the property of [AGENCY NAME]. No part of this presentation may be used without permission. All rights reserved. EXAMPLE OF WRITTEN DISCLOSURE

29 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 28 SPECULATIVE PITCHES FOR POTENTIAL CLIENTS 5.Oral Disclosures -Least effective, but better than nothing -Orally inform your audience of the protection of the materials prior to the presentation as follows: Before we begin, we just wanted to confirm that the intellectual property in the materials you are about to review are owned by, and considered confidential information and/or trade secrets of, [AGENCY NAME], and may not be used without our permission

30 IP PROVISIONS OF THE AGENCY CLIENT AGREEMENT

31 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 30 IP PROVISIONS OF THE AGENCY CLIENT AGREEMENT »So, your agency has won the pitch, now its time to negotiate the Agency Client Agreement »Four provisions of the contract relate to intellectual property: 1.Transfer of ownership of intellectual property 2.Representations and warranties 3.Indemnification 4.Exploitation of agency’s intellectual property by the client beyond the original scope

32 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 31 IP PROVISIONS OF THE AGENCY CLIENT AGREEMENT 1.Transfer of ownership of intellectual property -Ownership of intellectual property should not transfer to the client unless and until the client has paid the agency in full -The agency must retain ownership of any of its own intellectual property

33 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 32 IP PROVISIONS OF THE AGENCY CLIENT AGREEMENT 2.Representations and Warranties -Client will typically ask the agency to represent and warrant that the materials it creates for the client do not infringe on any intellectual property rights of others -Be sure to include carve outs from this representation regarding situations beyond the agency’s control

34 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 33 IP PROVISIONS OF THE AGENCY CLIENT AGREEMENT »User-Generated Content (UGC) -While the collection and use of UGC is more popular than ever, the agency does not create the materials submitted and so does not have any control over it -Agency should not take any responsibility for UGC

35 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 34 IP PROVISIONS OF THE AGENCY CLIENT AGREEMENT 3.Indemnification -Client will always ask the agency to indemnify the client for intellectual property infringement -Be sure to obtain an indemnity from the client covering the agency for its use of any materials or information provided by the client, including any related intellectual property

36 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 35 IP PROVISIONS OF THE AGENCY CLIENT AGREEMENT 4.Can the client exploit the agency’s intellectual property beyond the original scope (… or are you capturing all possible revenue)? -Agency is typically only being paid for the time it takes to create the “great idea” -However, that time is not necessarily equivalent to the real “value” of the ideas that are presented

37 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 36 IP PROVISIONS OF THE AGENCY CLIENT AGREEMENT »Consider how creative artists are compensated in other industries -Music Industry Songwriters own the copyright in the musical composition and lyrics Publishing companies administer songwriters’ publishing Labels own copyright in the recording -Songwriters and artists are compensated as a percentage of retail or wholesale sales, and in some cases, based on the performance of the music

38 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 37 IP PROVISIONS OF THE AGENCY CLIENT AGREEMENT »Here are some examples of great ideas that have the potential to generate revenue outside of their internal marketing uses

39 Agency Intellectual Property Workshop 38

40 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 39 THE IP PROVISIONS OF THE AGENCY CLIENT AGREEMENT »Agency should attempt to capture this additional revenue stream by getting the client to agree that the scope of the work is for public relations services only, and that a separate license/ agreement would be necessary for any use of the work beyond that scope

41 SPECULATIVE PITCH FOR EXISTING CLIENT

42 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 41 SPECULATIVE PITCH FOR EXISTING CLIENT »Has many of the same issues as a speculative pitch for a new client, but with some twists -Check your existing agency client agreement. Some agreements specifically state that agencies will not be compensated for pitches and that the client will own the intellectual property regardless. This is for the “privilege” of doing business with the client -Consider the business relationship. Will raising the issue of ownership cause a strain?

43 Safeguarding Your Agency’s Big Ideas: How to Protect Your Intellectual Property in the New Business Process 42 SPECULATIVE PITCH FOR EXISTING CLIENT »Since any pitch for additional business is necessarily outside of the scope of the existing agreement, get the client to agree that they do not own the intellectual property unless or until they pay for it »As an alternative to an amendment or separate agreement, consider the “elegant email” solution again

44 43 From Arenas to Zooey: Recent Attempts to Expand Right of Publicity Claims 43 The Basics of Advertising & Marketing Law 43 QUESTIONS? Michael C. Lasky Public Relations Law Chair/ Litigation Practice Group Co-Chair 212.468.4849 mlasky@dglaw.com © 2014 Davis & Gilbert LLP


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