With an Intellectual Property Portfolio Strategy Comes Company Growth

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1 With an Intellectual Property Portfolio Strategy Comes Company Growth Whatever the size of the company, from Fortune 500 company to startups, there is little choice today but to be vigilant with respect to intellectual property ( IP ) enforcement. With businesses in all industries necessarily using social media and creating forceful online presences, the need for brand and content protection immediately exists and requires a thoughtful and comprehensive IP strategy from the top down. While my firm has over a decade of experience handling both patent prosecution and litigation, the IP portfolio strategies I m focused on here in this article are trademark- and copyright-oriented. A complete IP portfolio strategy may include (but is not limited to) patents, trade secrets, designs and passing off. Technology, specifically web-based platforms, mobile software applications and social media evolve so quickly the balance between technology innovation and legal protection surrounding the creation, use, and ownership of IP can be alarmingly fluid. It is important to note studies have shown companies with a comprehensive IP portfolio strategy grow at a much greater pace than companies which do not. 1 Moreover, companies planning their digital footprint as a business in a strategic and structured way when interacting with customers and prospects create a greater probability of deriving a benefit from their investments than those using technology in an ad hoc or informal way. IP portfolio first steps for early-stage companies and new brands Companies first starting a comprehensive IP portfolio strategy can follow these steps to better position their company name, the name of any product/service offerings and the overall look and feel of a brand for maximum legal protection and to avoid any potential infringements: Have an attorney complete a full federal, state, and domain clearance search and opinion of any new or existing brand names without current federal trademark protection; Secure & reserve the rights to a brand s name across popular websites to ensure others do not already have them or cybersquat on them; this should be a consideration in creating 1 What Really Makes Startups Grow: new study reveals what successful companies have in common, Bobbie Gossage, May 2015 Issue, Inc. Magazine:

2 and developing a brand. There are free tools available to help you determine availability of a brands name across platforms 2 and domains 2 ; File federal trademark applications for any company name, or product/service trademarks to begin building a company IP portfolio; File patent applications for any patentable inventions, after requisite novelty searches have been performed; Ensure that all IP, not just trademarks and patents, has been properly assigned to the company s legal operating entity by founders, officers, owners or employees, and have an attorney prepare contractor and employee agreements to ensure IP ownership is clear and always properly assigned; Develop a IP content protection strategy by referencing each company-sanctioned cloudbased software application s or social media site s legal Terms of Use (TOU), which is the contractual agreement between a website operator and a website s users; 3 and Update internal company social media and IP use policies which accurately reflect the company s legal rights to generated IP (content) and expectations on assignment and use. Even if a company does not formally use a particular social media platform or online, cloud-based software application, its employees and clients most certainly do. Training the company s decision-makers Training a workforce ensures officers, employees and contractors are familiar with company IP policies, can recognize situations which may present risks, and can handle such risks appropriately. Employees and contractors should know where to go to get answers to their IP questions, understand the company IP policies and comply accordingly. To do so effectively, a company should: Provide an enjoyable training environment with specific rather than abstract explanations of company IP policies; 2 Resource for determining the name availability across platforms: 2 Resource for determining the availability and creativity you can deploy when securing a domain name: 3 The TOU are binding agreements that establish the terms to which users agree before using the website, or to which they are deemed to agree by virtue of their use of the site.

3 Frequently revisit and update with notification given to those affected promptly and training for any major IP policy and strategy overhauls; and Whenever possible, developing working relationships with social media and online service providers to find creative solutions where the law continues to lag behind. As a social media and cloud-based software platform user and, therefore, content producer, a company should note that agreeing to a TOU often submits a company and its agents -- its employees and contractors -- to a platform s dispute resolution process. Therefore, as a best practice, a company should seek to impose its own customized, platform-specific TOU in connection with its social media presence. In doing so, a company should consider including appropriate disclaimers, licenses, end user representations, warranties, and indemnities to cover external variables. It is more difficult to protect a company s valuable IP after rights have already been violated and when the proper foundation for enforcement has not been laid. 4 Thus far, this IP portfolio strategy has been focused on development of, and education regarding, identifying and protecting IP assets such as trademarks and copyrights (specifically brand assets and content), but a company must also actively work to detect infringing activities and defend its rights against infringers of its valuable IP. Carefully monitoring company IP online As a first step, a company s policies, as discussed above, can serve as a framework for taking action against any online content which could negatively impact a company s IP rights, online brand presence, and overall image. But before any company can effectively enforce its IP rights, it must develop a plan for detecting and monitoring abuses and infringements. For instance, this plan could include: Putting an IP brand asset monitoring program in place which helps preserve evidence of infringement by centralizing the gathering of potentially abusing or infringing content, so that at a later date, this content will be easier to use as evidence to prove abuse or infringement, 4 e.g., pictures on the web should be stamped with copyright notices so when they are invariably copied by a third party, the pictures are at least attributed. If a platform allows for attribution rights and a custom TOU, this step may be unnecessary, but still advised to protect valuable copyrights.

4 prove damages and allow for legal requirements, especially with regard to trademarks, of policing infringement or losing valuable IP rights; and Having an attorney, whether outside or in-house counsel, manage an IP monitoring service. IP monitoring services, though, will have set term lengths, subscription periods, or contracts, while their technology generally outdates itself within months. It is best for a company to allow their attorney to use their judgment on which services are known for rapid adaptation while also shifting that IP monitoring cost away from the company. Taking action against brand infringers What does a company do when it detects IP infringement, specifically trademark or copyright infringement? Each situation will vary in the available options, therefore, the company s attorney and company executives must be familiar with the mechanisms and processes available for redress in IP law, as well as those of domain registrars and platforms. With respect to trademarks, the company may not have a choice but to enforce against an infringer. A company should, in most cases, assume customers are seeing its trademarks and brand assets in a confusing manner with a potentially infringing third-party s trademarks and brand assets, because, as the trademark owner, if the company fails to police or enforce against unauthorized third-party use of a trademark, it may be deemed an abandonment of the trademark and result in a loss of trademark ownership. When third-party content is flagged for misuse or infringement, a company needs to carefully prioritize and categorize third-party trademark abuses by their severity. A company s social media policy should answer what course to take with respect to employee and contractor conduct, but third-party trademark infringement can be more difficult. One option (which may prove fruitless, but sometimes provides needed contact information) is to request any third-party information from social media and cloud-based application platforms themselves. Most importantly, keep in mind that not all IP infringements are created equal, and a company should consider the severity of the IP infringement and the size and resources available to it when considering the comprehensiveness of its IP portfolio enforcement. The nature of today s economy is fluidity; a company must remain fluid as well. Technology will continue to evolve at a faster pace than the law can handle. Therefore, it is critical a company keeps step

5 with the advancements of online platforms and content creation/ip ownership policies and works together with other its own and third-party content creators, as well as platforms and online service providers, to find creative solutions to understandably difficult IP problems with significant consequences. Ric Gruber Jr of Pasky Gruber LLC is an attorney and web entrepreneur who brings years of experience assisting start-ups. He offers experience in corporate governance, transactional intellectual property, data security, privacy compliance, restaurant franchising, advertising & entertainment law.