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April 2011 - Business Law & Order - Jon Shackelford
- 1. IP-PartDeux (2) Intellectual Property Licensing & Infringement Avoidance for Entrepreneurs & Business Leaders April 18, 2011 Moderated by: Jon Shackelford IP Attorney, USPTO Registered © 2011 Jon E. Shackelford
- 5. J. Shackelford (20 min.) Introductions / Topic Overview
- 6. M. Bell (20 min.) University Tech-Transfer
- 7. M. Malven (20 min.) IP Licensing Issues for Small & Emerging Businesses
- 8. R. Hoffmann (20 min.) IP Infringement Avoidance
- 10. Terms & Conditions Apply This slide presentation is informational only and was prepared to summarize relevant intellectual property considerations relevant to most entrepreneurs and early stage business operations. It does not constitute legal or professional advice. You are encouraged to consult with the presenter or other qualified attorney if you have specific questions relating to any of the topics covered in this presentation.
- 12. Different IP types for different purposes:
- 13. Patents
- 14. Trademarks
- 15. Copyrights
- 16. Trade Secrets
- 17. Some combination of one or more of these allows a Business to DISTINGUISH ITSELF from its competitorsThink of them like … or
- 18. Meet Mitch Egan: A Humble Entrepreneur Mitch Egan Made Products
- 19. Meet Mitch’s Customer … ? “Hmm. These stools are pretty cool. Maybe I should buy 2. ? ?
- 20. Mitch and His Customer
- 21. Mitch and His Market Q. Why did the Entrepreneur cross the road? Mitch wants to cross this space without ending up like the chicken
- 22. The InexorableIP Field ^ (unavoidable, inevitable) Imagine YOURCustomers/ Clients here. (Whether they realize it or not …) Every Business MUSTcross this “IP Field” to reach their Customers Imagine YOURBusiness here.
- 23. Danger at Every Step
- 25. Some are like Mr. Magoo …
- 26. The rest don’t make itImagine YOURBusiness here.
- 27. Public Access “Right of Way” to Market
- 28. Public Access “Conditions” for Each IP Type
- 29. Every Business Faces a Unique IP Field
- 33. Products
- 34. Machines
- 36. Material CompositionsWatson, Get my Patent Attorney on the phone!
- 37. Laying Patent Traps These Goldtraps are ones Mitch set. (Or acquired in a business deal)
- 38. Survey for Traps & Public Spaces
- 41. Exclusive & Non-
- 42. Territory limits
- 43. Time limits
- 44. Etc.
- 45. Alternatively, you could consider buying the IP outright.A License from the patent owner makes a Bridge over this trap
- 48. Words
- 49. Symbols
- 50. Colors
- 51. Shapes
- 52. Sounds
- 53. Smells
- 55. Survey Trademark Section ? ? ? ? ? ?
- 56. Public Pathway vs. Non-Public Areas ? ? ? ? ? ? ?
- 58. Blaze Your Path
- 62. Music
- 63. Written Words
- 64. Photographs
- 65. Film/Videography
- 66. Sculptures
- 67. Software
- 69. Open Source (?)
- 72. Blaze Your Trail (Catalog) An Assignment from the author(s) turned this trap to Gold
- 73. Get Permission/Ownership for Contracted Work (Website) A License from the author(s) made a Bridge over this trap
- 74. The “Trade Secrets” Section
- 76. Formulas
- 78. Marketing plans
- 82. Secrets Obtained via NDA’s
- 85. Lay Some Traps
- 90. Hot Dog Stand The Inexorable IP Field
- 91. Accounting Service The Inexorable IP Field
- 92. Software Developer The Inexorable IP Field
- 93. Alternative Energy (Early Stage) The Inexorable IP Field
- 94. Your Business? The Inexorable IP Field
- 95. Questions? Jon Shackelford JShackelford@Dickinson-Wright.com 734.623.1734
Hinweis der Redaktion
- The famous bank robber Willie Sutton was once asked “Why do you rob banks?” His glib reply, “Because that’s where the money is.”
- Terms and Conditions apply …
- Mitch has to get to his customers, but the only way to reach them is to cross this space in the middle.Let’s call that space the “Inexorable IP Field”
- Inexorable = Inescapable, Inevitable, UnavoidableImagine there is an Intellectual Property Field (like an obstacle course) between Mitch and his customers (… between you and your customers/clients)The field has four sections:A Patent SectionA Trademark SectionA Copyright Section, andA Trade Secret SectionMitch (and you) You must cross all four Sections in order to do businessSome are like Mr. Magoo…A stubborn, nearsighted person that avoids certain disaster by nothing more than an uncanny streak of luck.
- The IP Field is full of traps that others (before you) have set to protect their business interests - to give them a competitive advantage. If you were to step in one of these traps, AND if the trap owner realizes it, they could sue you.
- Inexorable = Inescapable, Inevitable, UnavoidableImagine there is an Intellectual Property Field (like an obstacle course) between Mitch and his customers (… between you and your customers/clients)The field has four sections:A Patent SectionA Trademark SectionA Copyright Section, andA Trade Secret SectionMitch (and you) You must cross all four Sections in order to do businessSome are like Mr. Magoo…A stubborn, nearsighted person that avoids certain disaster by nothing more than an uncanny streak of luck.
- Each Section has an optional “safe” passage: PUBLIC WALKLaid end-to-end, a person could make it all their customers walking on this sidewalk alone.You can only use the Public Walk if you meet special conditions, which are different for each sectionNo Opportunity to DISTINGUISH YOURSELF on Public PathWhether it is easy to meet the Public Walk conditions will be different for various types of businessPublic Walk generally HARD for:High Tech businessesCutting Edge Products/Services - Public Walk generally EASIER for:Low Tech businessesRoutine Services
- Public vs Non-Public ZonesPublic zone like a sidewalkThis is free for anyone to use.Usually old approaches (never the “latest-greatest”)Non-Public zone is a mixture:ClaimedProtected by IPClaimed areas represented by “traps”UnclaimedNot protected by IPClear for the entrepreneur to walk acrossA business can ONLY distinguish itself from its competitors in the Non-Public Territory
- Arrangement of traps will be different for every field of endeavor.There will always be Trademark traps (at the very least)
- The order of the 3 steps will vary for each type of IP, a well as the techniques needed to survey and lay trapsALSO, there is no significance to the order of the Sections: Patent-Trademark-Copyright-Trade Secret.
- Let’s start with the Patent Section
- Public Path Conditions?The subject matter of an expiredpatentBut beware of improvement patents!Products/methods for which no-one has sought patent protection, and which have been publically available or “on sale” more than 1 year agoProduct made/used/sold by, or ANY Process used in, a business that did not exist 20 years ago, should be considered for risk of Patent Infringement.OFF-THE-SHELF ITEMS: "Off-the Shelf" purchased items are usually free of any patent risksCaveat: Not a defense if the assembly infringes a valid patent.SPECIAL USE COMPONENTS: Making/Selling a component whose only legitimate purpose is to be incorporated into a patented assembly can create infringement liability.How to Find patents that pose infringement risks:Examine Competitor products/literature for indications of patentsSearch USPTO recordsInquire with Trade Associations
- Public Path Conditions?The subject matter of an expiredpatentBut beware of improvement patents!Products/methods for which no-one has sought patent protection, and which have been publically available or “on sale” more than 1 year agoA Patent IS NOT a Right to use the inventionIT IS: Only a Right to STOP OthersTherefore, having a patent on your own product does NOT give you the right to make or sell it (or even use it)What is Non-Public Path?Mixture of Claimed & Un-Claimed spaceClaimed space = subject matter of an active patentPatent “pending” may be a serious concern tooUnclaimed space = subject matter yet to be discoveredANY Product made/used/sold by, or ANY Process used in, a business that did not exist 20 years ago, should be considered for risk of Patent Infringement.Even most “Hi-Tech” products are “Frankenstein-ish” … in that they contain a mixture of older and newer featuresolder features might qualify for Public Path.
- If problems are detected:Design Around; Acquire rights (via purchase or license); Indemnification (from customer); Disqualify patent
- Let’s move on to the Trade Marks Section
- Clear a new trademark before using in commerceAny commercial attempt to sell a branded Product or Service has the potential to create trademark violations.Likelihood of Consumer confusion is the infringement standardDilution of famous brandsA clearance search starts with the business “PROPOSING” 1 or more “possible” trademarks that it is “thinking” about “maybe” using
- Public PathGeneric terms and purely descriptive terms (“Hot Dogs”)Non-Public PathArbitrary & Fanciful TermsSuggestive Terms
- Ask yourself: What “memory devices” do I want my customers to recognize & trust?Consider Trademark protection for these.In the U.S., protectable rights derive from USE of a DISTINCTIVE mark in commerceRegistration is advantageous but not necessary
- USE your own trademarks & Generic/Descriptive TermsAVOID others trademarksUse properly …The TM andSymbols …
- Next we come to the Copyright Section
- Step 1: Set Copyright TrapsAsk yourself: "What valuable artistic expressions have I (or my organization) created?"Rights created automatically when expression is "fixed"Registration is Optional, Easy & Inexpensive (www.copyright.gov)Duration: Author's life +70 years W-2 employees: 95 yrs. from first publication or 120 yrs. from creation Myth-Busting the concept of "Work-For-Hire"A non-employee (W2) Author/Artist owns the copyright unless written agreement says otherwise (with very few exceptions)Great for contractors / trap for businessesAvoiding InfringementTest: Substantial Similarity + AccessBEWARE of any commercial activity that uses someone else's copyrighted materialSome Exceptions available for face-to-face teaching activities of a nonprofit educational institution, in a classroom or similar place devoted to instruction …
- Strictly speaking, only U.S. works published before January 11923 and foreign works published in compliance with U.S. formalities (registration, © notice) before that date are in the public domain in the U.S. For non-U.S. works published without compliance with U.S. formalities (i.e., without © notice), the situation is a bit more complicated: If published before 1909, such works are in the public domain in the U.S.If published between 1909 and 1922 (inclusive) in a language other than English, the Ninth Circuit has considered them as "unpublished works" according to Peter Hirtle and following the decision of the United States Court of Appeals for the Ninth Circuit in the case Twin Books v. Disney in 1996. The case was about the book Bambi, A Life in the Woods; the decision is heavily criticized in Nimmer on Copyright (ISBN 0-820-51465-9), the standard commentary on U.S. copyright law.If published between 1909 and 1922 (inclusive) in English, they are highly likely to be PD, given that the aforementioned controversial case was only about a work published in a foreign language.Additionally, any work first published outside of the United States without copyright notice prior to 1989, when the U.S. joined the Berne Convention, is in the public domain in the U.S. if it was in the public domain in its country of origin on the URAA date (in most cases January 1, 1996). See the section on country-specific rules for more information.Also, the 1923 cut-off date applies only to the U.S. This means foreign works first published before 1923 are in the public domain in the U.S., but may still be copyrighted outside the U.S.
- Non-Employees hired to create copyrightable works (software, websites, photos, etc.) … (green-rimmed)All other traps (red-rimmed) represent copyrightable works of others you might wish to “take” w/out permissionTaken from internetUnauthorized software copiesEtc.
- Let’s talk finally about the Trade Secrets Section
- Information from Past Employer (#1 Source of Liability)Be wary of ANYTHING taken from a previous employer.Prohibit partners & new employees from incorporating prior employer’s secrets into your business#2 Source of Risk is Violated NDA’sObserve NDA’s you signPUBLIC PATHWAY = Any/all publically available information
- Ask yourself: "What valuable information do I want to keep secret?"Consider Trade Secret protection for these.Protection Strategy: Secrecy, Secrecy, SecrecyUse reasonable efforts to maintain secrecyLimit access to confidential materials/info.Mark 'CONFIDENTIAL' on all Sensitive MaterialsUse Confidentiality AgreementsEmployees, Consultants, JV PartnersVendors, Customers
- PatentsNone likelyTrademarksAvoid 3rd party Trademarks (Ball Park, Kowalski, etc.)Protect your brand/reputationCopyrightsMenu layoutAdvertisingTrade SecretsSecret chili recipe
- PatentsNone likelyTrademarksAvoid 3rd party Trademarks (Price Waterhouse, H&R Block, etc.)Protect your brand/reputationCopyrightsVery littleMainly advertising-relatedTrade SecretsSafeguard All your client’s infoDon’t steal prior employer customer list
- PatentsThere are some software patentsTrademarksAvoid 3rd party Trademarks (Microsoft, Apple, etc.)Protect your brand/reputationCopyrightsStealing other’s codeUnauthorized image downloadsProtecting the code you writeTrade SecretsClient’s infoYour object code
- PatentsThere are some software patentsTrademarksAvoid 3rd party Trademarks (Microsoft, Apple, etc.)Protect your brand/reputationCopyrightsStealing other’s codeUnauthorized image downloadsProtecting the code you writeTrade SecretsClient’s infoYour object code
- PatentsThere are some software patentsTrademarksAvoid 3rd party Trademarks (Microsoft, Apple, etc.)Protect your brand/reputationCopyrightsStealing other’s codeUnauthorized image downloadsProtecting the code you writeTrade SecretsClient’s infoYour object code