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The Ins and Outs of IP for Non-IP Lawyers

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The Ins and Outs of IP for Non-IP Lawyers

Many times, clients come to lawyers and firms looking for advice in the fields of copyright and trademark. This course hopes to help familiarize practitioners with some common issues and terminology in those fields so they can at least be somewhat conversant with their clients on the topics. Will this course turn you immediately into an IP lawyer? No, but it will allow you to learn how to handle basic IP issues like registering a copyright or trademark. It will also allow viewers to learn about common issues that could help guide clients in the right direction. After watching the course, practitioners will also be able to steer clients to websites and sources that can address many of the issues new businesses or entrepreneurs need to understand the issues involved. Finally, it will provide viewers with basic knowledge about the differences between copyright and trademark and what goals each of those devices serve.

Transcript

- [Oscar] Hello everybody, my name is Oscar Michelen. I'm a partner in a law firm of Cuomo LLC. And welcome to my presentation on the "Ins and Outs of IP for Non-IP Practitioners." What we're gonna try and do today is give you a little bit of background in IP law. It's an interesting area. It's very complicated. And law schools will have a semester-long class each devoted to a separate area or even some sub-sets of IP law. But at the same time, what I've seen is that with the growth of small startups, e -retail, brick and mortar stores going to online sales, many lawyers are having clients walk in, several office will come to them with IP questions or issues. So what we're gonna try to do today is give you some terminology, some basic background to make you comfortable to at least spot some issues and have some knowledge when a client comes to you with these basic IP questions, that you have at least some working knowledge to address the issue, talk to them, and maybe steer them in the right direction. And it could also serve as a basic template to help you start building an IP practice of your own. I mean, let's start really basic. What is intellectual property? That's any creative work or invention considered to be the property of its creator. So intellectual property rights are recognized and protected under their corresponding fields of law. And under intellectual property law, owners are granted certain exclusive rights, like the ability to publish to various markets, license the manufacturer, and distribution of inventions, and sue in the case of any unlawful or deceptive copying. Common types of intellectual property rights that you hear about include copyrights, trademark, patents, industrial design rights, and trade secrets. And thank you to Wikipedia for a little bit of that definition. All right, so in that definition, there are some key words that form the basis of IP law. The first is that IP rights are protected by law. The second is that they have to be creative. The third is that they constitute a work that's a legal term of art of work. And the most important, quite frankly, is that the owners of the IP rights are granted exclusive rights. Today we're gonna focus on the two most common IP rights, copyright and trademark. Patent rights are much more complicated. In order to file for patents, you have to be a member of the patent bar. Any lawyer can engage in patent litigation, but to process patents, you have to be a member of a separate bar. So we won't be discussing that area of IP law. What is the difference between a copyright and a trademark? Very often clients are confused about the two. Do I need a copyright? Do I need a trademark? Do I need both? What's the difference? So it's important that we have at least the basic knowledge of what separates copyright and trademark. Copyright applies to visual and audio works, written texts, movies, music, and more. It gives the owner the right to copy that work and then distribute it. So again, film, song, sheet music, a novel, a poem, play. Trademarks, however, are very different. Those are the symbols, the slogans, the name, or any other item that is a company's MARK in TRADE. And by that we mean, it identifies the company as the source of the product. And that, we'll get into later when we talk about it, because that's the key distinction between a mark in trade and a copyright. So let's look at one of the most famous trademarks in the world. The Nike Slash, "Just Do It." So would Nike have to copyright or trademark this item? So the phrase "Just Do It" is too short to get copyright protection. It's a common English word. You know, Nike didn't come up with the phrase, it's always been there in the English language. So they couldn't get a copyright on the phrase, "Just Do It." They could however, get a trademark that identifies "Just Do It" as Nike's mark in trade, so that I couldn't sell gasoline, men's clothes, or dog care products possibly, with the phrase "Just Do It," because it is associated with Nike's business. Similarly, the Nike Swoosh that you see is a trademark. You can get a copyright on the design. And so that people, they created that Swoosh, that design. And so that logo could get copyright protection as well 'cause it's a visual work. So let's talk about copyrights. So we'll talk about the first of the four sections that are applicable to IP rights. And that is, it has to be protected by law. Copyright law comes from the Constitution, and this is an eye-opener sometimes for both lawyers and for clients, that it is actually contained in Article 1, Section 8 of the United States Constitution, that's known as the Copyright Clause. And it empowers the United States Congress to promote the Progress of Science and Art by securing for limited time to authors and inventors the exclusive right to their respective writings and discoveries. One of the reasons that our founding fathers included the Copyright Clause is that many of themselves were authors and inventors, and recognized that they needed this protection to be guaranteed as the law of the land. They were still concerned with England's meddling and the potential that without an American protection, their authorship, their inventions would not be properly protected. So the Constitution gave the foundation for Congress to empower laws to protect science and art. And now copyright is embodied in the US Copyright Act, And it is actually regulated by The Library of Congress through The Copyright Office in Washington DC. And this is important. All copyright is Federal. There is no State Copyright Law. So claims involving copyright get jurisdiction in and must be brought through the Federal Courts. On the other hand, Trademark Law doesn't come from the Constitution. It's not mentioned anywhere in the document. It's now currently derived from the 1946 Lanham Act, which is also known colloquially as the Trademark Act. Trademarks are not administered by the Library of Congress. They're administer by the US Patent and Trademark Office, the USPTO. Now, there could be, and there are related State law claims arising out of trademark. You can bring a Deceptive Business Practice Act, you can bring a Theft of Property Rights Act in State Court. However, most cases are still brought either in Federal Court or through the Trademark Trial And Appeal Board, TTAB. So copyright protected by law through the Constitution, and laws like the Copyright Act, Trademark Law, not in the Constitution, comes under the 1946 Lanham Act, the Federal Court, and there may be related State Court claims. Creative, that's the next feature. So what makes something creative? Both Copyright and Trademark Law require that the work involved is a product of creativity. It has to be original in some way, and it's gotta be something new and fresh. Very important is that you can't protect a mere idea or concept. You could only protect your specific expression of that idea. So an idea, like a movie where somebody steals the Declaration of Independence. Okay, well, that's just a thought, that's a concept. And it's not enough if that's officially creative to be protected. However, if you write a screenplay about it and you then create a movie about that concept, that version of the idea of the theft of the Declaration of Independence can be copyrighted. Similarly, "Just Do It," like we talked about, is not sufficiently creative to be a copyright, but it can be registered as a trademark because it's different enough and attaches itself to a company. So to avoid confusion with another company's product, you can get a trademark in that phrase. The copyright. The work cannot be too similar and it can't be derived from another work, and it cannot be too simplistic, like the "Just Do It" example. On Derivations, part of the exclusive right is the right to make derivations of your own original work. So you can't come and do something that's close to something that's already out there, okay? So it has to be creative, it has to be new, and it has to be your own. What do we mean by the word work? And this really only applies to copyright. You have to be the author to claim copyright. He who created it gets it. So the person who wrote the play, took the picture, or produced the movie, generally gets the copyright in it. Now, obviously there are exceptions. It can be transferred, sold, or licensed. Once you write it, you have the right to pass it on to somebody else or to give all or some of those rights to another party. But initially, you have to be the one who created it. It's gotta be your work. I can't take something and that somebody else wrote, never copyrighted it, but then me find it and then register it with the Copyright Office and pass it as my own work. Now, the exception to that is when something is what's called "a work for hire." Again, that's a term of art. So what's a Work for Hire? Lots of times this comes up when a work is created by an employee as part of his or her own job, or a work specifically created on behalf of a client, where all parties agree in a work for hire agreement, that it will get a designation as a work for hire. So a work for hire is an exception to the general rule that the person who actually creates the work is the legally recognized author of that work. And according to Copyright Law in the United States, if a work is made for hire, it's the employer, and not the employee who's considered the legal author. You wanna craft a work for hire agreement if you're gonna go down this line. You want to have in your employee manual if you're a business owner, that everything that your employees create are works for hire. But there's lots of litigation on this, okay? We deal with many, many claims from ex-employees, from employers trying to assert IP rights in things they created. Maybe when they were home in the evening. Now you have work from home. It really complicates the situation. When is somebody working for you, when is somebody working for themselves. But there is an 11 part test that I'm not gonna go into in this session, created by the courts to determine if a work is a work for hire. So one of the main points in that 11 part test is that you need an agreement, and you wanna get it in writing. So there's a dispute. Well, when a common issue is a dispute among website developers, for example, over who owns the content written by the developer, but then it's placed on the client's site. Most website development is in fact a work for hire. So if your client, or even your firm or yourself wanna engage with a website developer, you wanna very much go over and examine the website developer's agreement as to who owns the rights to the content created to develop that website. So what's an example that you could show your clients of one of the world's most famous works for hire? The Smiley Face. Most people think that, it came down sometime around the Garden of Eden, and it's always been with us. It's ubiquitous. But in fact, it was created by a guy named Harvey Ball for an insurance company in 1963. It took him 10 minutes, he said. And he got $45 in compensation. Now, believe it or not, the Smiley company administers the rights in over 100 countries to the Smiley Face, and it has earned $207 million for licensing the right to the Smiley Face. And so Pearl Harvey got $45 in 1963, and the Smiley company has made over $200 million to date for licensing the right to use the official Smiley Face you see there. You know who's not smiling, is Harvey Ball. That's just not smiling. Okay, Exclusive rights. That's the next and last segment that talks about what makes intellectual property. So how do you get exclusive rights? Well, the good news is that the exclusive rights vest the second you create them. A US law says that intellectual property rights vest the minute a work is created, not when it's registered. So there's very famous, you know, urban myth about what we call a poor man's copyright, where you send off a hundred packages in an envelope containing your copyright. You never open it. And so it has a date from when the US Postal Office returns it to you. And you could prove if it's ever infringe, like, "Here's my envelope with my creative work inside of it, and here's the date stamp showing when I mail this out. So therefore, I must have written this before the infringer date." Now, it's actually never been tested in court, but I do believe that it could be one way to prove a date of creation. You know, provided you could show the envelope was that opened. You have the date stamp on there from the mailing, you have it contained within that envelope, and then you open it up in court. It's a possibility. So one thing that you have to be aware of is, and we'll talk about copyright now. The author gets that exclusive right only on the "first sale." So what does that mean? That means that anyone can then resell that one copy. What they can't do is make other copies because they don't have the copyright, okay? But that's why used bookstores exist. That's why used record stores still exist. Rarer and rarer every day, both of those two places, but they do exist. I can take any painting I bought off the wall and put it in my driveway and sell it in a garage sale. I'm not violating somebody's copyright. What I can't do is make a duplicate copy of it, but I'm free to sell the one copy that I do have. Now for trademarks, okay? Once you use that mark in trade, you don't have to register it to protect yourself or your company. You just have to be able to prove that you used it before whoever tries to use it afterwards, so that you can stop others from using your trademark. In trade, that's literally why you do it. So think of Knock Offs. Those are very familiar examples of somebody using your mark in trade without your permission. Now, depending on the strength of the mark, and we'll talk about that later, you may only be able to get that protection in a limited geographical area or in a specific industry. The one thing to keep in mind until we get to it and discuss it more in detail, is that the stronger the mark, the greater the protection. So the stronger the mark, the greater area you could protect it in geographically, and even maybe get protection in industries outside the one that you are using it in. So exclusive rights come into play, get vested, if you will, the minute you create them, okay? You're in your kitchen, you have a great idea for the next American or Great American novel, and you write it in one sitting that night. And through the morning, you've got copyright in that work without registering it. You have a great name for a business, or a great idea for a cute logo. You go out there, you start marketing. Pretzels or t-shirts or whatever it is, using that logo or that brand name, you've got your trademark. You don't need to register. So that begs the question, why register? Several reasons. Let's go with three basic reasons. Number one, there really ain't no reason not to do it. It's easy. You can do both copyright and trademark registration online. For trademarks, all you gotta do is go to the uspto.gov website and apply. Fill out a form. And it costs $225 per class. Class, meaning like clothing, furniture, automotive products, those specific groups that you want the mark to apply to where you've used it in trade. It is 225. Copyright's even cheaper. You can get one very quickly, very simply by going to copyright.gov. That's the Library of Congress's website. They have a basic form as well. You fill in the blank, you upload your work, and pay online with a credit card, and boom! You've registered your copyright. So, reason number one, why register? It's easy to do, and cheap. Secondly, registration provides definitive proof of your claim of ownership. You're no longer gonna keep 15 copies of the envelope with the postage date on it. Now, on the USPTO site or the copyright.gov site, you have planted your flag. "Hey, this is what I wrote, this is when I wrote it. This is what I'm claiming. These are the pictures that I took. Here is my uploaded files of those photographs. Here's my name, here's my contact information, and here is the date that I created these works." Similarly at the USPTO, you're saying to the world, "This is my company name. This is my logo. This is my phrase that I'm using in my business, and this is when I first used it." So I don't have to worry about proving when I actually did it, because I'm claiming to the world on a government website when I first created the work or used the mark in trade. So that's another reason to register. Most importantly, it allows you to get penalties and legal fees if you have to sue if you have a registered copyright, okay? Trademark law doesn't come normally with access to legal fees, but for copyright, you can get both statutory penalties and legal fees if you prove infringement of a copyright that was registered at the time of the infringement. So that is a big deterrent. Copying makes it easier to find a lawyer because they're entitled to legal fees and statutory penalties. So you can bring that lawsuit easily. Now, these little symbols that we see. Okay, the R with the circle means that you have a registered copyright or trademark, okay? And it tells the world that they can find that work and your registration on the government's website. Now, here's the thing you could tell clients that they're often appreciate, and that is that they're free to put up the little TM or the C without filing with the Copyright Office or the Trademark Office. Because what you're saying there is that you are declaring to the world that you have rights in this work or in this brand. As a matter of fact, a lot of my trademark clients, even after they get registration, like to use the TM still, because it seems clearer to them what that means. And then at the bottom of their website or their material, they could say, XYZ is a registered copyright of the company or the brand or logo is a registered trademark of the so-and-so corporation. But until you get registration, you're free to use either the symbol or the C symbol, or the TM symbol. So how do you register a copyright? Remarkably simple and frankly. The Library of Congress has an excellent Electronic Copyright Office available on copyright.gov. You could create a simple username or password to log in. And then you use the electronic form, that's right for whatever type of material you or your client wanna copyright. And you may wanna use more than one if more than one form of copyright applies. So what you're seeing there is the interface that you'll see on copyright.gov that'll direct you to the particular area depending on the works, okay? Then all you gotta do is pay the fee and you're good to go. These are the categories. There are six basic copyright categories. Literary, that covers fiction, non-fiction, poetry, articles, periodicals, that's the written work. Performing arts, that's music, the lyrics, the sound recording of a particular version of a song, scripts, stage plays, okay? Those are governed by performing arts categories. Visual arts, that's gonna be very rangy. That goes from artwork, of course, like illustrations, but it also includes jewelry. You can get a copyright in a particular fabric pattern. Architecture is covered in visual arts. Another big category is digital content. That's everything from computer programs, software, databases to blogs and websites and versions of websites. Motion pictures obviously, movies, but also TV shows, video games, animation, and short video clips are all covered under that category. And then finally, photographs. That's everything from a selfie and a family photo to news photos, you know, newsworthy photography, journalistic photography to your wedding photos, to portraits of famous people. When do you need more than one? When is one category not enough? So for example, if you make a different use of the material. You write a novel, but you wanna turn it into a screenplay. You wrote a song, the sheet music, but then you record your version of that song. That's a sound recording. That's a separate type of copyright. One copyright for the sheet music, another copyright for the sound recording. One copyright for the novel, another copyright for a screenplay or a pilot that you wanna test for possible TV production. You know, you write a children's book, but you want a separate copyright for the illustrations, or maybe you want a trademark for a character within that. The most famous example of that is Disney. You know, Disney has fought long and hard to protect its copyright in Mickey Mouse, but it will forever have the trademark of the mouse as long as it uses it in trade, which apparently will be forever. What if I wanna use someone else's copyrighted material in my new material? In other words, I wanna create a new song, or I wanna create a novel, or I wanna film a movie and in the background, I'm going to have someone else's copyrighted material. Can I use that if my material is otherwise new? The answer is nope, that's quite literally the entire point of copyright. It gives the copyright holder the right to use the work and to make a derivative or secondary, or additional use of that work to make other works. That's the whole point. So you will need permission, which in Copyright Law is called a license. You will need a license to use any portion of that work. And recently, my firm brought litigation over a performing company, very famous, we're not gonna use the name. That took a picture of the group in front of my clients' graffiti art. And there's a building in Manhattan where the owner allows graffiti artists to use sections of this large brick wall for their original work. And this performing arts group decided it would look cool to pose in front of that work, and did not realize that was actually a copyrighted registered work of art by my client. And they put it in their posters, they put it on their handouts, they put it on their website, and we were able to bring in action and obtain damages for the derivative use of that work. There's lots of lawsuits over movies that have filmed paintings in scenes, and the painting is part of an integral part of the scene, and that's a violation of that painter's copyright to make that derivative use. So you have to be careful. And obviously the most famous now are when artists sample, take a snippet of a previous song and use it in a new song. You can't do that without permission unless you wanna get it sued. Vanilla Ice, one of the most famous cases where they took the baseline from "Under Pressure," and he used it in his song, "Ice Ice Baby." And so, sampling, now extraordinarily common. When you see a copyright for some new music, particularly in hiphop genre or rap, you'll see where many people are credited portions, point 10, point 4, point 2 of a song because it contains a sample or a beat, or a track from another song, correct? So let's move on now to trademark. What is a mark? So you think you can trademark, okay. So the more original, and we talked about this before. The more original, the more protection you get. So the most protectable type of mark is called fanciful. And that's something like Exxon, Panasonic, Xerox, where these words did not exist before some company or adman or somebody else created the word, okay? So Exxon, obviously for oil and gas, but I also can't use it for dishes or food because it's Exxon's word. They created the word. It didn't exist in the lexicon until they put it out there. So it's protectable in any scope. The next one that's less protectable is called descriptive. Think of 7-11, which used to be the hours of the store. Mr. Clean, it tells you what it does. EZ-Pass. It describes the function of the software to get you through tolls without having to throw money in a basket or hand a ticket or something to a toll collector. So the least protectable are geographical or generic that tell you what it is or where it is. Team Staten Island, Fred's Dry Cleaners. Okay, these are not strong marks that are going to be able to be protected unless your show that it's causing confusion somehow. So it's gotta be used in trade, but then it has to be applied to the way a product looks, like trade dress could be, or it's packaging, or it's name, okay? Now, the USPTO has an incredibly useful video that you can watch or direct your client to, called "Trademark Basics" that lays all of this out in a very appealing visual format. Very simple, no legalese, and I highly recommend that you look at it or direct your client to it. How do I know if a trademark is available? First thing I always tell clients is do a Google search. See what you find. Wanna call yourself "Fred's Dry Cleaner"? Let's go see if anybody ever used "Fred's Dry Cleaner" in trade. Let's see if there's a website. Let's see if anything comes up with that. That's the most basic and easy way to start, because it'll be a quick end if you do find that someone's doing the exact same thing you wanna do with the exact same name you wanna use. But you could also go to the USPTO website. And it's called TESS, Trademark Electronic Search System. Very user-friendly, very easy to use, broad enough to find all the trademarks that are likely to cause confusion with what your client wants to do. Cause confusion, okay? Causing confusion, likely to cause confusion is the test. Is someone going to think that your product or service is coming from the same product, same company that has the mark for that product or service previously. On TESS, you're gonna wanna narrow your search to limit the results to be able to evaluate a manageable number of trademarks. Don't search under dry cleaner, okay? Make it Fred's dry Cleaner or Peoria Fred's Dry Cleaner. As simple, but as limited as you possibly can. And you wanna search in a similar class as your client is looking to protect. The USPTO has 45 classes covering all goods and services, okay? So you wanna become familiar with those. You wanna tour around the website. Again, I wanna keep touting how user-friendly copyright.gov and the USPTO website are. You don't have to be a software engineer to glean a lot of tremendously valuable information from these two sites. So classes 1 through 34 are for goods, while classes 35 to 45 are for services. And I've been using trademark to cover everything, but technically, 35 through 45 are service marks, okay, where you're trying to get protection for a brand in a service area as opposed to an actual fungible, sellable, tradable good, like a coffee mug, for example. Okay. So each of those classes covers a wide range of goods so that you don't need more than one class. So for example, class 25 covers all clothing, whereas class 36 covers all insurance and financial services. You don't need a separate class for all your life, okay? So again, I would refer you, if you look at item D to the Trademark ID Manual on the website, it's going to help you frame the search. It's gonna tell you how to be more successful when you wanna see if anybody's using the brand, the mark, the logo that you or your client wanna use, right? And then number three, for logos, there's a design search code system on the USPTO that can help guide you. Each prominent design element is gonna have its own code. You're gonna wanna plug those codes. You can plug more than one code at a time into the TESS search system to see if anybody has a similar design, excuse me. So let's look at the example that the USPTO uses, because it's informative and it's instructed. And by the way, the government doesn't own copyright. So I'm free to you, just in case you're worried about. Okay, so design search codes are six digit numbers that classify elements in a logo design, but they're not applicable to words. Excuse me. I saw the eagle example, then I went to birds. So logo design is applicable to elements, but not to words design elements. So you wanna pick really the three most prominent features in a logo design or a brand design. You wanna find the search codes for those design elements and create the six-digit design code that you see. So you see this flying, attacking bald eagle. The three design elements are its animals 03, birds and bats, and then specifically eagles. So this is 03.15.01. So now, how do I go and register that mark? Again, go to the website. Very user friendly uspto.gov. One area is for patents, another is for trademarks. The trademark section has online fillable applications for you to use to register a trademark. Again, I refer you to this great online tutorial "Trademark Basics" that's on the site. All the forms are fill-in-the-blank. The issue will come in selecting the class of goods or services and in the proof that you used the mark in trade or for use. A lot of times clients will come to you, "I got a great idea. Okay, I'm gonna launch this business. But before I launch this business, I wanna make sure that no one steals my idea before I get up and running." Well, in order to get a registered trademark, you have to have actually used the mark in trade. You can't get the copyright for an idea before you write it, and you can't get the trademark before you use it. But yes, you can. In the USPTO website, there is a category called "An intent to use." If your client is so anxious that their idea is gonna be stolen the minute it's launched, they can get protection for the idea because they intend to use it. So you file the application under an intent to use, you show the brand name or the logo, or the design element like the Flying Eagle that we just showed that you wanna use. And you basically are telling the government and the country that, "Hey, I'm gonna use this brand, this logo, this mark in my future business." And then you get 90 days to actually use the mark in trade. To sell a t-shirt, to launch a website with an online catalog, to start your tech, your right share business with whatever new name or logo you wanna use. And the USPTO gives you that 90 day window. Once you actually launch the product out into the world and use it in trade, you then update your application to show the actual use, and you get the registered trademark, okay? So first you use an intent to use, and then you use, then you file an actual use application. All right, so those are the basics on copyright and trademark. I wanna get into some more nitty gritty in those areas based upon some recent case law that you should familiarize yourself with, that will impact these areas. So the Supreme Court of the United States has actually had a very, very busy copyright and trademark docket of recent. And there were two main issues that affected and impacted copyright registration that practitioners should be familiar with, if they're gonna go down this yellow brick road. So SCOTUS held unanimously that a copyright registration must be issued and not merely applied for prior to the filing of an infringement lawsuit in order to qualify for statutory damages and legal fees. So lots of times with trolls, copyright trolling in particular, talk about that later in a particular field. There was a split among the circuits interpreting section 411 A of the Copyright Act as to whether the copyright had to be applied for prior to filing the lawsuit, or actually registered at Fourth Estate Public Benefit Corporation versus Wall-Street.com settled that issue and said it has to be actually registered. The other big case that came down recently of the important copyright is Rimini Street, Inc. versus Oracle USA, Inc. And in Rimini Street, SCOTUS determined that the full costs under section 505 of the Copyright Act does not authorize courts to award litigation costs beyond those specified by Congress in the general costs statute, which is covered under section 505. Why am I bringing these up? It sounds kind of esoteric, but it has a lot of very important practice implications when clients come to you looking for help when there's a copyright infringement, okay? So what is the direct impact? What is the direct impact that these two cases have on copyright? Okay. Number one, very important to have a registered work. Number two, if you're going to launch some type of copyrighted contact that you wanna protect, you can seek pre-registration under Copyright Act 408 f in order to get protection. You can pay for expedited processing to get that registration faster. If you need to sue in a hurry, you must have a registration prior to filing a copyright infringement lawsuit. So if you pre-register and you pay for expedited processing, you can file that lawsuit quicker. You wanna advise clients when they come to you that not all of their costs are gonna be covered. And what Rimini dealt with that limited it to the six categories found in sections 1281 and 1920 of the Copyright Act are expertise. So if you're gonna spend a lot of time and a lot of money on experts in your litigation, your client may not be able to get compensated for those costs, and they should be aware of that. That SCOTUS Limited, the type of costs that can be reimbursed by a losing party to a prevailing party under the Copyright Act, okay? So the next thing that I wanna talk about is an area that clients are gonna come to you with, fairly common, and that's digital image litigation, okay? It is very often the way that smaller law firms or solo practitioners will be sought out by a client because it's so big and such a big part of the federal court IP docket. We're talking about copyright trolls that have filed hundreds and hundreds and hundreds of lawsuits all across the country over a website or a blog, or an E-zine, an online magazine, or a company's marketing materials using a picture, okay? You know what I have tons and tons of litigation involved in are hotels that travel agents use. Pictures of a hotel. In marketing, a vacation package. but somebody took that picture of a hotel and licensed it, maybe to a real estate company or one particular travel agency. And then boom! Everybody downloaded that picture by right clicking, saving it, and now they're all using Lahaina, Wa'ahila, whatever hotel in Hawaii, where a lot this litigation is based. And this photographer or the trolling law firm that they have hired has now filed hundreds and hundreds of lawsuits over that picture of the hotel. And they're trying to get anywhere from $2000 to $50,000 for each use of that image, okay? So they'll send a claim letter, or they'll go right to lawsuit over the use with digital image on their website or their blog. And you can find out that these lawsuits have flooded the Federal IP Docket, the Federal Docket in general. You wanna be able to talk to your clients about the nature and scope of that litigation. But it's a very common problem that lawyers are seeing in IP. So the client comes to you and they wanna know, "Hey, you know, if it's so easy, as I've just spent nearly the last hour talking about and touting the value, simplicity, and user-friendliness of copyright.gov, uspto.gov, why do I need a lawyer?" Well, in this area, first of all, you always need a lawyer. And attention to detail is very, very important. Sure, a basic copyright, a basic trademark can be done by the client if they're careful and they take their time. But the hardest thing to do, particularly in the area of trademark, is to conduct the right search, to look for the right class, to look the right design elements so that you can be sure that you have an original idea or an original logo, or an original branding that can in fact be protected and that won't be attacked. We recently had a client who thought that she had a wonderful idea for a new clothing type to promote to moms with a clever brand name, and she was ready to register her trademark. And she came to me and I did a design element search, I did a trademark search. And lo and behold, I found it was already somebody out there who was in fact selling and promoting the identical clothing item. Two moms, in a very similar fashion that she had thought she came up with in her house. Now, it wasn't the end. She was a little downcast, a little, you know, hurt by the fact that her great new idea wasn't that original, but it saved her a lawsuit. And she was able to go back, rethink her strategy, come up with a new, more original brand name and website design. And we're currently in the process of registering that trademark for her. And intend to use until she goes out there and puts out her product in marketplace, okay? So these very basic IP points can be understood generally, but they can get very, very complicated. You know, think about for example, a geographical area. Sure, you wanna name your restaurant after a particular type of geographical location, a river, a creek, a mountain or something. You could protect that in your neighborhood, not outside the state, not everywhere else if you intend to franchise. So you wanna talk to the client about, "Well, how many of these restaurants you wanna open?" You wanna use them across the country. Now I have to look to see whether someone in Colorado used that name if you intend to get there, okay? Shoe design, jewelry design, recipes can and cannot be protected under circumstances if they're very specific. So take the time to learn this yourself in order to move forward with your client. I wanna talk about protecting your client's business because that's what they're gonna come with, and that's the other area we talked about with trade secrets and works for hire and those types of things. And you should be familiar with those areas when a client comes to you, okay? You always wanna advise your client to have their contractor, their web designer, their employees, to sign non-competes and non-disclosures that protect their trade secrets, including their soup recipes, including their pasta sauce recipes, including their jewelry designs. If they're jewelry designers that are employing technicians that design a bracelet or a unique ring, or a chain, okay. So you want them to have a simple one or two page non-compete, non-disclosure agreement. You wanna make sure they sign a work for higher agreement, so that anyone doing something creative for them is clearly doing it on behalf of the business. That way you can get protection like the Smiley Company did with the logo. Good old Harvey, because they had a work for hire agreement, okay? You wanna register a DMCA agent, so that they'll get protection from the DMCA which we'll talk about in a moment. Should they get notice of an infringement? And you wanna protect your client by telling them that you can't just right click an image and put it up on your website and not get sued. So you wanna talk to your client about making sure that all of their marketing material, from a physical brochure that they may hand out to a menu, online or hard copy to a, let's say, business trade dress, okay? Or a song, that it uses only their original material, and not somebody else's intellectual property no matter how small that intellectual property is used in the work, okay? So let's talk about the DMCA. Very important past during the Clinton administration. And it gives "Safe Harbor" to provide Online Service Providers like Google and YouTube and others protection when other people put up non-original content as their own on a site, okay? So if the website's end user or the third-party posts infringing content on a site, the site's entitled to receive a take down notice before it can be sued. "Hey, that's my song you have on your digital platform," okay? It's a complicated law with strict requirements, so I'm not gonna go into each and everything. It doesn't protect against the website's own infringing activity. And you've gotta meet strict DMCA requirements to get the "Safe Harbor" protection. You have the designated note, an agent for service of copyright claims. It has to be on your website, and you have to file that with the copyright office. Again, very simple. It could be, you know, [email protected] whatever your email address is. It could be DMCA [email protected] it could be administration, [email protected], [email protected], the [email protected], whatever your website is, okay. If you wanna write and adopt and post on your website a repeat infringer policy to get the protection for the Safe Harbor to remain effective, the Online Service Provider has to set up internal processes and procedures to manage and take down notices, and to implement a repeat infringer policy to protect yourself from people who say, "Oh, but the same person kept putting up songs, pictures, et cetera, that didn't belong to them." And you should have known these terms of service don't have to be unique. You can download templates for them from various websites by paying for them. You can upload them once and never change them. And you can just set up a separate email address for DMCA information and take that notices to protect you. And that way you won't get sued if on your website, or on your online magazine, or on your online platform you allow others to post content, you'll be protected from lawsuit if you follow the simple steps in the DMCA Act that they set forth in this area, okay? So you wanna go through it yourself as a lawyer to learn it. It's a bit complicated, like I said. But each step is kind of simple. There's just a lot that you have to follow to get the full protection. So lastly, I wanna talk about when client comes in, what will an IP client need? And there's some very important things. Number one, a history of the use of the product or the creation of the copyrighted work. When did they do it? How did they do it? In what medium did they do it? You wanna make sure there was no one else involved. Nobody, no family member, no employee, no independent contractor, no guy out in the street who is not involved in creating the work or coming up with the idea or drawing the logo or whatever it is. Did you do this all alone? If not, who did? Do you wanna own this protection? In what legal form? Yourself, corporation, LLC. Think about these things. You need to get the proof of creation or the use in trade with actual samples, okay? A website may not be enough. Did you ever sell anything on that website? Did you ever get advertising rates on that website? Something to show that you're using it in trade. And then last and most importantly, a legal fee, okay? But depending on the complexity of the registration that they're looking for, or a trade book that they wanna get, that's how you have to adjust the fee that you wanna charge. But you wanna make sure that they have all their ducts in order. So you can properly conduct a search either of the Copyright Office or the Trademark Office for any prior use that's going to conflict, and that is going to allow for a claim of infringement, okay? And you wanna make sure that you have everybody who's involved, so that no, Tom, Dick or Harry or Shirley or Betty or Elizabeth can come along and say, "You didn't do that by yourself. I helped you, that's my idea. I worked for you. You promised me," so long and so forth, okay? So I know we covered a lot. I know we covered it in a hurry. I wanna thank you for listening. I wanna thank you for deciding to get some of these basic top rated trademark ideas, and to to come to me for that source. Should you have any questions or anything comes up that you'd like to contact me, this is my contact information. The easiest way is my email, omichelen, [email protected] Also my first name and last name, no spaces at Gmail. Thanks again. I hope it was helpful, and I look forward to hearing to for any comments or suggestions for a future similar program. Thanks again.

Presenter(s)

Oscar Michelin
Partner
Cuomo, LLC

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