Foster Swift Business & Corporate Law Report
March 27, 2014
You don't have to be Apple, Google or Coca Cola to protect your intellectual property.
According to the Interbrand 2013 annual survey, the three most valuable global brands are Apple ($98 billion), Google ($93 billion), and Coca-Cola ($79 billion). For Apple, Google, and Coca-Cola, most readers can picture the logo associated with each one. The numbers associated with the brands are not revenues, market capitalization, or sales. The numbers are the market valuations of the brands themselves. Another way of describing the value of a brand – it is the value, in part, of the company’s intellectual property.
In today's digital and knowledge-based business world, intellectual property rights are the cornerstone of a business's value and competitive edge. Intellectual property rights are commercially valuable products of the human mind and can be classified into four primary categories: trademarks, copyrights, patents, and trade secrets. A company’s use of intellectual property rights may also include the related rights of publicity and privacy. Many businesses do not adequately secure these intellectual property rights and may, therefore, lose them to a competitor’s use. As a result, a company that fails to properly protect its intellectual property forfeits its competitiveness, and, perhaps, viability in the marketplace. Taking steps to identify, classify and protect your company’s intellectual property will enhance and safeguard the assets that drive your company’s competitive advantage.
The value of specific brands is directly related to the value of the company's trademarks. Trademarks protect any word, symbol, or other device that identifies or distinguishes a good or service and identifies the source of the good or service. A logo or slogan is the most common type of "mark" that can be protected. However, sometimes even a sound, color, or even smell could acquire trademark protection.
One of the most important aspects of intellectual property protection for trademarks is to start the process of protecting the mark as soon as possible – even before a product or service launches or is released to the consuming public. The best practice is to pre-clear the name, checking for availability to use, prior to actually using it in association with a good or service. Legal protection can be acquired through an "intent to use" the mark in commerce, and small changes to a mark can provide long-term legal benefits that save time and money for a company.
Once the availability is confirmed and protected, a company or individual can then protect the brand name in other important areas, including website domains and social media accounts. Often, it is important to monitor and keep track of new social networks in order to secure accounts for a brand.
Since your brand can ultimately become the most valuable asset as a company, it is important to carefully build and protect the brand from the very beginning.
A copyright protects actual content that is created – it does not protect an idea. The content could be text, photos, videos, sound recordings, architecture, computer software, a website, or any other content. It is important to remember that copyright protections attach at the moment of creation, but that filing for federal copyright protection is still an important step to protecting and preserving all of an author's rights. But filing for protection is not enough.
Many companies neglect to consider copyright issues in the workplace and when doing business. Securing your company's intellectual property rights can be as simple as including an additional form in the employee manual or implementing a written policy to have all employees and independent contractors sign a one page document, either acknowledging and setting forth a "work made for hire" arrangement or executing an "assignment" of all rights, title, and interest in and to a work. The general rule under the Copyright Act states that a person who creates a work is the author of that work, unless the work is designated as a "work made for hire." The Copyright Act defines a "work made for hire" as a work prepared by an employee within the scope of his employment or a work specially ordered or commissioned for use as a contribution to a collective work.
Unless a written agreement is entered into specifying ownership or assignment of rights, an employer does not own the intellectual property rights of a commissioned work that is performed by a consultant or independent contractor. The consultant owns all of the rights in the work created and may use, resell, or make derivatives of the work created, even if the work was created on behalf of another company.
For example if a business or individual hired a graphic design company to create a logo and a "work made for hire agreement" was not signed before the logo was created or an "assignment" was not executed after the completion of the logo, the graphic design company would own all rights, title, and interest in the logo. The graphic design company would be free to license or sell the logo to any other companies, as well as create derivatives of the work and dilute the market place with various, similar images. Without an agreement, the commissioning company would not control any rights in the logo or how it could or could not be used by others. This can cause nightmares for the organization that hired the designer.
The same analogy of a logo created by a third party can be equally applied to a computer programming company that is hired to create specialized software for a company to use or sell. That same specialized software that a company paid a consultant to develop could then, absent a written agreement, be freely resold or licensed to other companies, including an emerging competitor. The risk of losing all ownership rights to a company's brand, website, specially created software programs, internal marketing reports, and materials created by consultants is legally and quite easily avoidable if the proper documents are executed. The consequences and actual damages to a company are devastating if the company loses control of its sensitive and proprietary information. The financial cost and difficulty to retrieve or obtain those intellectual property rights after a dispute arises far surpasses the cost and relative ease required to initially secure and protect those valuable rights.
Legal protection is available for inventions that are useful, novel, and not obvious – commonly called patents. Patent protection can cover a process, machine, design (the way it looks), or even some types of plants. But it must be an invention. Securing patent protection provides an inventor the exclusive, government-issued right to exclude others from making, using, or selling the invention for the duration of the patent.
One key aspect of patent protection is that an invention is not protected until the patent is filed – there is no protection just by virtue of inventing something new. Again, it is important to understand the legal implications of an invention at the very beginning of a process rather than waiting.
Furthermore, patent protection requires full public disclosure of an invention. Many individuals or businesses do not want to publicly disclose valuable secrets.
Some businesses have valuable intellectual property but do not want to reveal the information publicly as would be required for a patent. Trade secrets consist of any type of proprietary information that an owner takes steps to keep secret and has economic value from being kept secret. Trade secrets can be protected under either federal or state law. Most businesses have trade secrets, and the key issue for businesses is to keep the information secret. Information can lose protection if it is revealed or available to the public.
Therefore, every business should have a strategy and policies in place to protect its valuable information. This is one area where planning on the front end can save an incredible amount of time and money.
Rights of Publicity
One commonly overlooked intellectual property right is a right of publicity. The right of publicity comes from the rights associated with privacy. The right of publicity protects the commercial use of an individual's name, identity, or likeness. These rights are important to remember, especially if a company will be using individuals to promote or market its products or services. Individuals also need to understand that there is an intellectual property right – and potential profits – associated with using one's name or likeness in a commercial fashion. The right of publicity can be easy to overlook, so make sure you consider it in commercial settings.
Taking five minutes to review what proactive and protective measures your company has in place to secure its intellectual property rights, and thereby, its competitive advantage, is a worthwhile investment to ensuring your company's competitive standing in the marketplace and ensuring its financial success.