Maximize Your Business Performance Intellectual Property Strategies for Online Lead Generators and Marketing Services
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1 Maximize Your Business Performance Intellectual Property Strategies for Online Lead Generators and Marketing Services DECEMBER 17, 2014 Justin Pierce, Kristina Schrader, and Jonathan Pompan (Moderator) 2012 Venable LLP 1
2 Overview Strategic management of IP enhances business performance and provides businesses with distinct competitive advantages in the marketplace. Many online lead generators, however, fail to effectively manage or even use their IP rights to achieve and support their business objectives. This webinar will cover the basics of how IP rights such as patents, trademarks, copyrights, and trade secrets apply to the business of online lead generation, and how online lead generators can better use intellectual property to maximize their business performance. 2
3 Agenda Intellectual Property Basics Application of IP to Online Lead Recommendations for Online Lead Generators Question & Answer Closing Presenters names: Moderator: Jonathan Pompan Panelists: Justin Pierce and Kristina Schrader 3
4 Intellectual Property Basics Patents Basis: U.S. Constitution, Article I, 8, cl. 8 to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. Term: 20 years (for utility patents). Protects: Inventions. 4
5 Intellectual Property Basics Patents Threshold: Patent Eligibility Process (includes software and business methods), machine, manufacture, composition of matter, or improvement thereof (35 U.S.C. 101). Requirements for Patentability: 5 Utility; Novelty (not anticipated by prior art; not barred by pre-filing events); Nonobviousness (sufficient advance beyond the collective knowledge in the art to warrant an exclusive right); Adequate Disclosure; and Definiteness.
6 Intellectual Property Basics Trademarks Basis: Common Law, State & Federal Statutes (Lanham Act) Term: Rights terminate when use ceases; incontestable 5 years post-registration. Protects: (A)ny word, name, symbol, or device, or any combination thereof [ANYTHING] used by a person to identify and distinguish his/her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods. Requirement: Use in Commerce 6
![Protects: (A)ny word, name, symbol, or device, or any combination thereof [ANYTHING] used by a person to identify](/docs-images/44/14523693/images/page_6.jpg "and distinguish his/her goods, including a unique product, from those manufactured or sold by others and to")
7 Intellectual Property Basics Copyrights Basis: U.S. Constitution, Article I, 8, cl. 8 to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. Term: Life of the Author + 70 years Protects: Original works of authorship that are fixed in a tangible medium of expression (can include software). Requirements: Originality + Fixation 7
8 Intellectual Property Basics Trade Secrets Basis: State law (in most states: Uniform Trade Secrets Act). Term: Continues as long as it stays secret. Protects: Information (formula, pattern, compilation, program, device, method, technique, or process) that derives independent economic value from being a secret, and is kept secret through reasonable efforts. Requirements: Secrecy 8
9 Patents Build a competitive advantage around your technology LendingTree.com fine print: LendingTree technology and processes are patented under U.S. Patent Nos. 6,385,594 and 6,611,816 and licensed under U.S. Patent Nos. 5,995,947 and 5,758,328. Leadperformer.com (see next slide) 9
10 Patents 10
11 Patents Case Example: Dynamic Tabs cases Internet Patents Corp. held 505 patent for technology allowing the use of Back & Forward navigational functions on a website form without data loss. Filed two suits in N.D. California: Internet Patents Corp. v. Quinstreet and Internet Patents Corp. v. General Automobile Insurance Services, both against online lead generators who used online forms. Patent invalidated in Sept for lack of patenteligible subject matter ( mere abstract idea ; no inventive concept). 11
12 Patents Case Example: LendingTree v. NexTag (2014) LendingTree patents: System allowing borrowers to submit a single form for multiple lenders. LendingTree sued Zillow, NexTag, and Adchemy for operating similar websites. LendingTree waited 6+ years to file suit against NexTag; court applied equitable doctrine of laches ; awarded attorneys fees to NexTag. 12
13 Trademarks Using trademarks to build competitive advantage around your brand: Bankrate Insurance Verified. US TM Reg. No providing subscribing customers with qualified business leads using a proprietary business lead validation method which blocks suspicious, erroneous and fraudulent leads. Secure distinctive registered trademark rights within your field, specialty, or market 13 Why? Competition is fierce trademark records in USPTO that expressly cover lead generation in some form. Most filed within the past 5 years.
14 Trademarks Case Example: AARP v. American Family Prepaid Legal Corp., et al (2009) Defendant s Mailer 14
15 Trademarks 15 AARP v. American Family Prepaid Legal Corp., et al (2009) Defendants used AARP mark (with disclaimer in fine print) on mailers to people matching criteria identified by financial services company; sales reps visited respondents and used high-pressure sales tactics to browbeat seniors into buying financial services. AARP sued for violations of RICO, Lanham Act, unfair and deceptive trade practices, etc. (case settled).
16 Trademarks Case Example: Carrier Corp. v. Reply! Inc. (2011) Reply! operated lead generator site for home improvement contractors. Purchased search term Carrier (brand of A/C units), so users searching for Carrier got sponsored link: Carrier Find Best Deals on Carrier Units carrier.reply.com Carrier sued for trademark infringement, false designation of origin and false representation, 16 dilution, cyberpiracy, etc. (case settled).
17 Copyrights Build competitive advantage by protecting your content and software. 17
18 Copyrights Case Example: Marketing Technology Solutions v. MediZine (2010) MTS s Promotion Serving Platform (PSP) software served ads to users based on responses to healthrelated questions; former employee developed iconnect (competing software) for MediZine. MTS sued MediZine for copyright infringement, trade secret theft, unauthorized computer access, etc. claims survived defendant s summary judgment arguments that copying a few lines of code was de minimis and that Campaign Ranking Code was merely an algorithm (case later settled). 18
19 Trade Secrets Case Example: Vinyl Interactive v. Guarino (2009) Vinyl operated Free College Scholarships lead program, allowing users to fill out form and enter in scholarship raffle. Former employee became program manager for JumpStart (competing program); gained access to some confidential files and Vinyl s Google Analytics account. Vinyl sued for theft of trade secrets (case later settled). 19
20 Trade Secrets Vinyl Interactive v. Guarino (2009) IM convo between 2 former colleagues (what not to do): anthony [defendant]: did anyone connect JumpStart to me yet SteveVinylInteractive: no i dont think so anthony: do you think they will be pissed SteveVinylInteractive: nah SteveVinylInteractive: i mean everyone knows you left and work for a competitor Hint: Steve was wrong. 20
21 Trade Secrets Vinyl Interactive v. Guarino (2009) Court found the following likely protectable trade secrets: Identity of Vinyl s publishers Rates Vinyl pays to its publishers Publishers lead quality and conversion rates Rates advertisers pay Vinyl for leads Identity of Vinyl s advertisers for this campaign Vinyl s profit margins for advertisers Vinyl s methods to identify publishers Methods for reporting and tracking publisher leads quality Methods for determining volume per publisher Vinyl s data on and analysis of competitors products 21
22 Recommendations for Online Lead Generators Build competitive advantage through the strategic use of intellectual property Patents Use to protect the innovative aspects of your core services and technology Enforce your rights without delay Trademarks Secure registered rights in distinctive marks Avoid confusing or improper use of others trademarks Copyrights Register copyrights in your content and software Trade Secrets Maintain the right protocols for securing trade secrets Ensure employees are not using others trade secrets 22
23 Question & Answer 23
24 the The road road ahead ahead for ABC CORPORATION Venable LLP
25 Contact Information YOUR VENABLE TEAM Moderator: Jonathan Pompan, Partner t Panelists: Justin Pierce, Partner t Kristina Montanaro Schrader, Associate t
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