Intellectual Property For Designers
Jefferson Coulter PLLC Legal Solutions 1216 Pine Street Suite 201 Seattle, WA 98101 206.957.8181 www.coultertm.com 2
What Intellectual Property Rights Are Implicated in Design Work? Copyright Trademark SM Trade Secret 3
What s a Copyright Anyway? A Copyright is, among other things, the exclusive right to reproduce a work and to distribute copies to the public. The protection lasts from the work s creation through the life of the author plus 70 years or, if the work is made for hire, 95 years from first publication or 120 years from creation, whichever expires first. Thereafter, the work enters the public domain and may be used freely by anyone. 4
What Issues Arise with Copyrights? Assignment and Work for Hire Infringement and Fair Use Credit and Moral Rights 5
What s a Work Made for Hire? A work prepared by an employee within the scope of his or her employment; or A work specially ordered or commissioned... if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. 6
Assignment Work for hire can t be created by agreement if the work falls outside certain categories: Contribution to a collective work, Part of a motion picture or other audiovisual work, A translation, A supplementary work, A compilation, An instructional text, A test, Answer material for a test, or An atlas. If the parties, in such a case, intend that the commissioning party own the work, the creator should assign all rights in the work to that party as part of the agreement. 7
What Are Infringement and Fair Use? Infringement is the use of someone else s copyrighted work without permission. Fair Use Fair Use is a type of permitted limited infringement. Making copies for a classroom, quoting someone s work, critiquing of books, etc. 8
What Are Credit and Moral Rights? Credit is attribution, which is only one Moral Right. Moral Rights Moral Rights are the rights of visual artists to 1. Have an author s name associated with the work ( attribution ). 2. Prevent his or her name from being used on someone else s work. 3. Remove the author s name from a work that has been mutilated or distorted. 4. Prevent the distortion, mutilation or destruction of the work itself if those changes reflect adversely on the artist s honor or reputation ( integrity ). 9
Copyright Case Study The Northwest Flower Society (NFS) hires you to design a Macromedia Flash animation as part of a new development campaign. You sign their contract, which states that anything you design for them is a Work for Hire. You deliver it to them, they sell it to another organization in Topeka and never pay you. What now? 10
Copyright Case Study (cont d) Because the Copyright in the animation is owned by NFS, you can t prevent them from selling it to a third party. Your only option is to sue NFS. However, had you agreed that the copyright would vest in them only upon full payment to you, you could not only sue them for payment, but you also could prevent the Topeka organization from using the animation or have them pay you a license to use it. 11
How Do You Address Potential Copyright Issues? In an agreement between the author and the person using (or owning) a work, always establish who will ultimately own the work, how that work may be used, and what rights to credit, attribution, or integrity an author has. If the author is not an employee, then he or she will be the owner unless the author enters into a work-for-hire agreement or assigns the copyright to the new owner. 12
What s a Trademark Really? A Trademark can be anything used to identify the source of goods or services and to distinguish them from the goods and services of others. 13
What Are the Elements of a Trademark? A Trademark may consist of Words (such as a brand name or slogan), Designs (such as the shape of a bottle), Sounds (such as distinctive chimes for a TV network), or Even a color that identifies the source of a product. The critical element is that, whatever the form, the trademark must distinguish the origin of the goods or services to which it relates. 14
Why Do We Have Trademarks? Trademark law protects both the trademark owner and the public: The trademark owner is protected from the erosion of commercial goodwill, while the public is protected from deception as to the source and quality of merchandise. Trademark protection gives the owner of a mark the right to prevent others from using confusingly similar marks. 15
What Issues Arise with Trademarks? First Use Likelihood of Confusion 16
First Use Trademark rights in the U.S. are established by First Use. For example, if you began using a mark in 1999, and a competitor began to use one in 2003, generally you would have superior rights to that junior user. 17
Likelihood of Confusion Likelihood of Confusion Likelihood of Confusion is the test to determine whether someone is infringing on a trademark. When looking at two similar marks, would the relevant consumer of a good or a service be confused as to the origin of the goods or services? 18
How Do You Address Potential Trademark Issues? Research Registration Monitoring 19
Research When determining what mark to use for a new business, product, or service, it s a good idea to invest in a trademark search. A trademark search will compare your mark against Federal and State databases, registered domain names, State business filings, and local directories to see if there is prior use of the mark. Where there is no conflicting use, you can be confident in using and registering that mark. If there is a potentially conflicting mark, it should be evaluated to determine whether the two marks can co-exist or if it makes more sense to select another mark. 20
Registration There is a Federal system of trademark registration as well as a system in each State. Why? Federal registration gives you the right to sue infringers in Federal courts for damages and lost profits, to use the symbol, to provide notice of your superior rights to anyone seeking a trademark, and to demand transfer of infringing domain names. Federal Register with the U.S. Patent and Trademark Office, if you ship products or provide services in more than one State and/or internationally. State Register with your State if you engage in only intrastate business, but want to protect your mark in your State. 21
Monitoring Once you establish your trademark rights through use and/or registration, it is important to monitor your marks to protect their value. Many companies use a trademark watch service to monitor for the filing of potentially confusing trademark applications and/or an unregistered use of a confusing mark (on the Internet or elsewhere). By identifying conflicting marks, you may oppose their registration or force their owners to cease using them. The trademark owner is responsible for monitoring the use of his or her mark. 22
Trademark Case Study Your client is a search engine optimization (SEO) company. They want your help to build an identity. You search the Internet for available domains, do market research, and come up with Blue Torch Communications. Your client loves it, you prepare a logo (stylized blue torch) and prepare all their collateral using the logo and name. They design their Web site, and launch a global marketing campaign. 23
Trademark Case Study (cont d) Your client receives a cease and desist letter from Blue Torchlight, Inc., an advertising company located in Raleigh. Blue Torchlight is the owner of a Federal Trademark registration of Blue Torchlight for advertising and marketing services. They do not have an Internet presence, but are developing one currently. Your client is in a bad situation. They ll need to stop using the name or face an infringement action they ll probably lose. 24
So What s a Trade Secret? Trade secret protection may be available for a formula, pattern, device or compilation of information that is used in business and gives the owner an advantage over competitors who do not know or use it. Example: Customer lists 25
How Do You Protect a Trade Secret? For a trade secret to be protected, the owner must have taken reasonable precautions to maintain its secrecy. Such precautions may include limiting knowledge of the secret to employees who need to know it, controlling the flow of visitors to the area where the secret is being practiced, and stamping as Confidential any documents referring to the secret. 26
What Issues Arise with Trade Secrets? Disclosure Use 27
Disclosure To whom is the information disclosed? How is it used? How does the owner of the information protect it? 28
Use If an officer, owner, or employee of a business that owns a trade secret leaves, what mechanisms are in place to protect use of the trade secrets? 29
Trade Secret Case Study Discuss with group. 30
What Steps Should You Take to Protect Your (& Your Client s) Interests? Copyright Establish who will own the work (Contract). Trademark Ensure that the logo, slogan, etc., has been cleared and is available, register it in the appropriate region (State, Federal, International), and monitor its use. Trade Secret Trade Secret Maintain confidential information through nondisclosure agreements. 31
Questions??? 32