Intellectual property comes in many forms including, copyright, patents, trademarks, domain names, and trade secrets. Similarly, intellectual property “theft” comes in many forms, including infringement, misappropriation, unfair competition, gray market/parallel importation, counterfeiting, and hacking.Understanding what intellectual property your company has and developing appropriate intellectual property strategies can provide companies with the tools to protect and enforce that intellectual property. Join Jill Sarnoff Riola, chair of Carlton Fields’ firm-wide IP practice group and Florida Bar board certified in Intellectual Property, as she provides an overview of the different types of intellectual property and outlines strategies to protect and enforce them.

1. COVERING YOUR ASSETS
Identifying And Protecting Your
Company’s Intellectual Property
Presented by: Jill Sarnoff Riola

2. Jill Sarnoff Riola
Jill Sarnoff Riola serves as the chair of Carlton Fields’ firm-
wide IP practice group. She is also board certified in
Intellectual Property by The Florida Bar, giving her an edge
in this area of practice, and further positioning her as an
expert in IP.
She is also a former in-house attorney in both the
consumer products and technology industries. She works
directly with companies to understand their business and
assist them in developing appropriate intellectual property
strategies that align with their present and future business
plans, including development, protection and enforcement
of domestic and international intellectual property
portfolios.

3. Types of Intellectual Property (IP)
• Confidential Information and Trade Secrets
• Trademark, Service Mark and Trade Dress
• Copyrights
• Patents

4. Confidential Information
and Trade Secrets
Information that adds value to the business and known only to the
owner
– Product Plans
– Inventory
– Pricing
– Internal policies
– Business plans
– Customers
– Finances
– Personnel data

5. Confidential Information
and Trade Secrets
Trade Secrets
– A formula, practice, process, design, instrument, pattern, or
compilation of information which is not generally known or
reasonably ascertainable, by which a business can obtain an
economic advantage over competitors or customers
• Colonel Sander’s secret recipe
• The Coca-Cola formula
• Patentable information (but not patented)
• Technical and non-technical information
• Know-how and show-how

6. Confidential Information
and Trade Secrets
How to Protect Confidential Information
– Need fiduciary or contractual relationship
• Express –
– Non-disclosure agreement
– Confidentiality Clause
– Employment Agreement
• Implied –
– Employment relationship
– Board of Directors
– Trustee
• Statutory – state law

7. Confidential Information
and Trade Secrets
Employee Agreements
– IP Assignment
– Confidentiality
– Non-compete
– Non-Solicitation

8. Confidential Information
and Trade Secrets
Causes of Action for Theft of Confidential Information
– Misappropriation
• Trade secrets
• Confidential information
Conversion
Theft
Damages
– Statutory – Check state law
– Actual damages
– Defendant’s profits

9. Trademarks and Service Marks
“What It’s Called” or “What It Looks Like”
Always an adjective – never a noun

10. Trademarks and Service Marks

11. Trademarks and Service Marks
Trade Name
– Company name can be a trademark or service mark –
usually a “house mark”
• Apple
• Walt Disney World
• Mercedes
• Louis Vuitton
• Geico
• Duck Commander
• CBS

12. Trademarks and Service Marks
Trade Dress
– The non-functional, unique appearance of a product
or packaging
– Overall commercial impression identifies the source
• Coca-Cola bottle
• Chanel No. 5 bottle
• McDonald’s restaurants
• Volkswagen Beetle car
• American Airlines airplanes

13. Trademarks and Service Marks
Types of Marks
– Arbitrary or fanciful
• Mark bears no logical relationship to the product and/or is made up
– Apple computers
– Kodak cameras
– Xerox photocopiers
– Suggestive
• Mark “suggests” the features/purpose of the product
– Chips Ahoy chocolate chip cookies
– Herbal Essence shampoo

14. Trademarks and Service Marks
Types of Marks (continued)
– Descriptive
• Describes the product or its features and can only obtain trademark
protection through “secondary meaning”
– NY Daily News
– Mr. Clean
– Generic
• IS the underlying product and not protectable
– Red Rubber Ball (not the song)
– Shredded Wheat
– Ice Pak

15. Trademarks and Service Marks
Protection
– United States
• Common Law – limited
rights arise on use
• Statutory – rights arise on
use and registration
– State – intrastate
– Federal – interstate
– International
• Common Law – rights
arise on use
• Civil Law – rights arise on
registration
– Not Extra-Territorial
• Exceptions:
– Community
Trademark
– Benelux

16. Trademarks and Service Marks
Benefits of Registration
– Constructive notice nationwide of the trademark owner's
claim
– Evidence of ownership of the trademark
– Jurisdiction of federal courts may be invoked
– Registration can be used as a basis for obtaining
registration in foreign countries
– Registration may be filed with U.S. Customs Service to
prevent importation of counterfeit or gray market foreign
goods
– Generally the only way to protect mark internationally

17. Trademarks and Service Marks
Trademark Infringement
– Valid and enforceable trademark/service mark
– “Secondary meaning” or “Acquired distinctiveness”
– “Likelihood of confusion”
Dilution
– Blurring or tarnishment of “famous” trademark
Unfair Competition
– False Advertising
– False Representation
– Misappropriation
Counterfeiting

18. Trademarks and Service Marks
Damages
– Actual damages
– Defendant’s profits
– Reasonable royalty
– Enhanced damages
– Corrective advertising damages
– Attorneys fees and costs if
exceptional case
– Destruction of all goods
– Interest
– Additional damages for
counterfeit goods
– Statutory damages
– Injunctive relief

19. Copyrights
“What it looks like”, “what it sounds like”
– Constitutional and statutory protection
– Original expression of ideas (but not ideas)
• Books
• Song lyrics
• Plays
• Text, graphics, artwork, music, database, software,
documentation, packaging, advertisements, commercials,
websites

20. Copyrights
Copyright Rights
– Right to reproduce
– Right to prepare derivative works
– Right to distribute copies
– Right to perform publicly
– Right to display publicly
Types of copyrights
– Joint Works
– Derivative Works
– Compilations
– Work for Hire

21. Copyrights
Work for Hire
– Just because you paid for it doesn’t mean you own it.
• Employer owns it if the creator is a legal employee of the
company for IRS purposes.
• Independent contractor owns it in the absence of a written
agreement with an express assignment of the copyright to the
employer. Yes, really.

22. Copyrights
Enforceable only if registered in US Copyright Office
– NOT necessary to register in each country
– International copyright treaties
Copyright Infringement
– “Substantial similarity”
– Access and copying

23. Copyrights
Copyright Damages
– Actual damages
– Defendant’s profits
– Statutory damages (if qualified)
– Injunctive relief
– Destruction of infringing materials
– Attorneys’ fees and costs
– Additional damages for counterfeits
– Ex parte relief, seizure orders, asset freezes, expedited discovery
– Separate criminal statute for counterfeiting

24. Patents
“What it does” – method, process or
apparatus
Types of Patents
– Utility Patents
– Plant Patents
– Design Patents
Types of Patent Applications
– Provisional
– Traditional
– One year bar date

25. Patents
Duration of US Patent Protection
– 20 years from the earliest filing date
– Design patents are 14 years from date of issue.
Benefit of Obtaining a Patent
– Prevent others from making, using, selling, offering for sale or importing
the patented invention in the United States for the duration of the Patent
– Must have an issued patent to file a lawsuit
Registration
– Patent protection is always statutory
– Each country has its own patent laws
– NOT extra-territorial

26. Patents
New Patent Act – America Invents Act
– First to File, not First to Invent
– But – First Inventor = Prior Art
New Act + New Procedures + Sequestration + PTO
Budget Cuts =
– Fewer Examiners and Greater Processing Times

27. Patents
Patent Infringement
– Direct infringement
– Indirect/Contributory Infringement

28. Patents
Patent Infringement Damages
• Lost profits
• Reasonable royalty
• Interest and costs
• Enhanced damages – up to three times the award
• Attorney’s fees in certain cases
• Certain statutory limitations apply if infringed product or its
packaging was not marked with patent number.
– Injunctive relief

29. Domain Names
Address for a website
– Company names
• microsoft.com
– Trademarks
• duckcommander.com
– Personal names
• ranchoriola.com

30. Domain Names
Cypersquatting
– Use of 3rd
party famous trademarks or names
• madonna.com 
• tomcruise.com 
• juliaroberts.com 
• brucespringsteenclub.com 
• sting.com 
Typosquatting
– Misspelling
• microsoft.com v. microssoft.com

31. Domain Names
Identical or Substantially Similar to a valid trademark or
famous name.
No legitimate interest in mark
– Gripe site OK
Bad faith use and registration
– Attempt to sell to “true” owner
– No active website
– “Parking” site with competitive ads
– Use of infringing domain name as scam site

32. Domain Names
Trademark Act – Civil
– Anticybersquatting Consumer Protection Act aka Cyber
Piracy
– Trademark Infringement
– Unfair Competition
Remedies
– Damages
– Profits
– Injunction
– Transfer of Domain Name

33. Domain Names
UDRP – Administrative
– Two forums:
• National Arbitration Forum
• WIPO
– ICANN Uniform Domain Name Dispute Resolution
Policy and Rules
– Follows UDRP case law
Remedy
– Transfer or cancellation of domain name

34. Counterfeit Goods
Counterfeit goods are inferior replica goods that bear identical or near identical
copies of the genuine US registered trademark or US registered copyright.
– Handbags
– Watches
– Software
– Movies
– Airplane engine replacement parts
Both civil and criminal remedies available, with potential damage awards in the
millions.
Criminal penalties can include imprisonment and fines.
® and © registrations should be filed with US Customs who will seize and destroy
counterfeits coming into the country.

35. Gray Market Parallel Importation
Genuine goods meant for sale outside of the US but imported back into
the US for resale.
– Different formulations
– Different specifications
– May be sold without packaging or warranties
– Can interfere with exclusive distribution rights in the US
Owner of US trademark registration or US copyright registration can
register them with US Customs IF they meet certain requirements.
Causes of action are trademark and/or copyright infringement, unfair
competition, tortious interference with contractual relationships.
May depend on particular state law.
Remedies are the same as for trademark and copyright infringement.

36. IP Licenses and Assignments
IP Licenses
– Exclusive vs. Non-exclusive
– Geographic limitations
– Quality control provisions
– Indemnification
– Control over infringement suits
– Assignability
IP Assignments
– A full and irrevocable transfer of certain intellectual property from the owner
(assignor) to another party (assignee) for an agreed payment.
– Must assign the intellectual property and “the goodwill associated
therewith” for trademarks

37. The IP Audit
Questions you need to answer:
– Do you own your IP?
– Do you need assignments from independent contractors?
– Do you have licenses for all of your software?
– Are you in compliance with all of your licenses?
– Are your licensees in compliance with their licenses?
– Are your primary products protected by registered copyrights, patents, or NDAs?
– Do you have a proper Confidentiality/Trade Secret protection program in place?
– Are your primary trademarks registered in the US and your primary international markets?
– Do you have proper distribution and reseller agreements in place?
– Do you have appropriate employee agreements and internal policies on creating, using and owning
intellectual property?
– Do you have employee training programs in place so they understand the value of the Company’s IP?

38. Finally
Identify what you own
Identify what you thought you owned but don’t
Identify the “gaps”
Implement new or revised programs, agreements, policies,
processes
Ensure protection follows strategic direction of the Company

39. Questions
If you have any questions, please submit them now.
Thank you for taking the time to attend today’s webinar.
If you have any questions about the information
covered today, please contact:
Joe Gerard
j.gerard@i-sight.com
Jill Riola
jriola@carltonfields.com