basics of running an arts organization ii: intellectual property issues july 21, 2008 christina...
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BASICS OF RUNNING AN ARTS ORGANIZATION II: INTELLECTUAL PROPERTY ISSUES
July 21, 2008
Christina Ezell, Esq.
615-775-7521
Agenda
What is Intellectual Property?
Copyrights
Trademarks
Patents
Trade Secrets
Conclusion
What is Intellectual Property?
A property right is generally a right to exclude
“Intellectual Property” (IP) is generally a right to exclude others from making, using or selling intangible property created by the mind
What is Intellectual Property?
Exhaustion of RightsOnce an IP holder has sold a physical
product with IP rights attached, it cannot prohibit subsequent resale
Used books at bookstoreToasters at a garage sale
What is Intellectual Property?
Public DomainMost IP rights have limited duration
Patents-20 years from date of filing Copyrights-life of author plus 70 years Trademarks requires continued use in
commerce
What is Intellectual Property?
TerritorialityNo global copyright, patent or trademarkModest number of international agreementsBerne Convention (copyrights)Paris Convention (patent and trademark)World Trade Organization-Trade Related
Aspects of Intelletual Property (TRIPS)
Copyrights
Introduction
Limits to Copyrights
Registration Process
Whether to Register
Works for hire
Selling and licensing rights
Avoiding copyright infringement
Q ’s to consider in making transfers
The need for counsel
Introduction
Original creative expressions are copyrightable Copyright protects form, not content Mere collections of facts without “some minimal
level of creativity” are not copyrightable Work must be fixed (tangible means of
expression) Ex. Sculpture in a block of ice
Introduction
Categories of protectable worksLiterary
Fact, fiction, prose and poetryComputer programs
Source codeMusical Works
Can be derivative--think of different arrangements of Mozart
Introduction
Categories of protectable worksDramatic works
Works as a whole, not just individual scenes or jokes
General plot denied under idea/expression Pantomime and Choreographic Works
Still must be fixed Ex. Motion picture, special choreographic notation
Introduction
Categories of protectable works Pictoral, Graphic and Sculptural works
Maps Selection of materials included, not the actual names of
places
Motion Pictures and other Audiovisual Works Series of related images
Sound recordings Singers bring their own style
Introduction
Categories of protectable works Architectural works
Buildings Blueprints Drawings
Derivative works Must still be original Must be based on public domain or get permission from
original copyright owner of underlying work
Introduction
Categories of protectable worksCompilations
Arrangement important
Limits to Copyright
Fair UsePartial or limited reproduction of another’s
work may be permitted under the Fair Use Doctrine and are considered in light of the following factors Purpose and character of the use Nature of the copyrighted work Amount and substantiality of the portion used Effect on the market for the original work
Limits to Copyright
Expressions, not ideas, are protectedEx. The author of a book has protection for
her words, but not for the basic plotEx. Photographer has protection from
duplication of his picture of a sunset, but not from other people taking pictures of a sunset or the same sunset
Limits to Copyright
Utilitarian, three-dimensional works are excluded Ex. Drawing of a microwave is copyrightable, but the
microwave itself would be protected by a design or utility patent
But--to the extent these works have parts that serve no purpose but for aesthetics, copyright might be available for those parts
Ex. A vase with an extensive aesthetic design on the side, the aesthetic design might be copyrightable, only way to find out is to try and register them--if denied a design patent option may be available
Limits to Copyright
Independent CreationA second work, identical to an earlier
copyrighted work does not infringe if it independently created
Obviously the better known the first work, the less likely that independent creation defense will be believed
Three level of Protection
Level 1: Copyrighted Copyrightable works are copyrighted as soon as they are
fixed in tangible form. Your copyright exists immediately without registering the work, putting a copyright notice on it, or doing anything special
Level 2: Notice You can immediately put a copyright notice on any new
work without a copyright registration. (1) notice of copyright; (2) year first published; and (3)
claimant’s name. Ex. ©2006-2008, Christina Ezell
Three levels of Protection
Level 3: Registration Registration is needed before suing an
infringer. Registration within three months of first publication or before the infringer begins copying is need to recover attorney’s fees and statutory damages (up to $150,000 per each “infringement”)
Why register?
Notice eliminates a defense of a copier Some nations require it and a few even require
“all rights reserved” If the text does not interfere with the artistic
integrity, always best to put a notice into published copies
Notice should automatically secure protection in most other countries under international treaties
Registration Process
Straight forward and inexpensive Forms with instructions can be obtained from the
Copyright Office Return form with $45 fee and copy of the protected
work Deposit copies not required for works of visual art,
but does require a submission of identifying material (ex. Photograph of sculpture)
Should I register?
Some publishers prefer that works not be registered prior to publication
While registration costs little, expenses can grow quickly when each item is inexpensive, runs are short, several items must be registered separately
Registration is only needed after infringement occurs, question becomes whether the remedies gained by registration are worth it?
“Works for Hire”
Employed Artists Copyrights of regular employees are presumed to be owned by
their employers unless there is an agreement to the contrary Important to note: must be within an employee’s scope of
employment
Free-Lance Artists Ordinarily presumed to own copyright in their work Exception!! A party commissioning work could say that it is “for
hire”, especially if it contributes to a larger work Important to note: the fact that is it work for hire must be in
writing and the work must fall under “work made for hire” in Section 101 of the copyright statute
Issues in Work for Hire
Ownership If the copyright in a work for hire is owned by the
commissioner, the artists has no rights--so a similarly created later work EVEN if by the SAME ARTIST will infringe
Freelance artists should consider carefully what they may be giving up to allow a commissioned work to be regarded as a work for hire
Issues in Work for Hire
Term of copyrightWorks for hire, the shorter of 120 years
from the date of creation or 95 years from date of publication
Other works, artist’s lifetime and 70 years beyond
Joint works, 50 years beyond death of last surviving contributor
Issues in Work for Hire
Copyright transfers may revert If its not “work for hire”, even if the
copyright is transferred, it may revert back to the artist (or heirs if deceased) after 35 years--subject to the right to continue prior uses
Selling and Licensing Rights
Questions to ask prior to selling or licensing rights: Is it “work for hire”? What type of rights are being transferred? How will this restrict the artist in being able to sell similar
works? What happens with copyright owner or licensor goes out of
business or no longer wants to use the work? What is the payment structure? How are royalties computed? Are there any indemnification issues?
Avoid Copyright Infringement!
If you have access to the original work and you make a work virtually identical, even if it may have been independently created, it is likely to be presumed that it was copied
So what if you are an artist that sells copyright in a work? Obviously you had access if you later execute a similar work---make sure that you have a written agreement with purchaser about these matters!
Avoid Copyright Infringement
Test is “substantial similarity”Would an ordinary observer recognize that
the work was copied in whole or in part from the earlier one?
Avoid Copyright Infringement
Do not copy unless you have permissionDo not copy unless you are sure it is in
the public domain (any copyrights have expired)
Pay attention to the limitations in licenses--ex. Its ok to print, but not ok to distribute electronically
Do I need Counsel?
Generally not needed for registration
Highly advised when transferring, licensing, buying or selling copyrightsCould end up with less than bargained forCould end up under certain constraintsCould end up with liabilities you did not
realize you were taking on
Do I need Counsel
May not be able to assess the economic advantages or disadvantages, but will be able to point out legal implications
There might be hidden business issues such as product liabilities
Trademarks
What are Trademarks? Obtaining a Trademark Choosing a good one Avoiding a bad one Trademark searches Registration process Whether to register
What is a Trademark?
“Brand names” used to distinguish one company’s product from another’s product
Can be more than just words or logos
Trademark vs. Servicemark
Allows consumers to seek or avoid sources of products
Can be the most important asset of a business
Obtaining a Trademark
In the U.S., formalities are unnecessary for trademark rights
Can go through formal registration process in order to enforce rights
Choosing a good one!
Unique and strong marks are best Marks similar to ones used by several businesses
are weak (ex. Sinus medications with “sinu” as the prefix)
Suggestive marks are better, “Flash” to suggest speed (but avoid the GM mistake of Nova which literally means “no go” in Spanish!!)
Arbitrary or “fanciful” marks are the strongest--no connection with the related goods or services, ex. Mr. Pibb
Avoiding a bad one!
Descriptive marks are weak Generic terms not allowed, can’t TM “radio” for a radio
Misspelling not always an advantage, especially if advertised in non-print form
Geographic names are weak Deceptively misdescriptive terms are bad (ex. Two
Minute for a Dry Cleaners) Laudatory marks or personal names are not good
marks as you must prove secondary meaning
Avoiding a bad one!
If you use a mark similar to those used by companies in similar markets, you could be setting yourself up for damages for infringement
Strong Marks
Kodak for Copiers, Fanciful
Apple for Computers, Arbitrary
Sure for Deodorant, Suggestive
All are inherently distinctable and protectable
Weak Marks
Champion for Sparkplugs, Laudatory
L.A. Gear for Shoes, Geographic
Steak and Brew for Restaurant, Descriptive
Tommy’s for anything, personal name
Must prove “secondary meaning” to be protectable
Generic Marks
Lite for Beer
Discount Mufflers for Mufflers
Super Glue for Glue
Do not distinguish one maker from another!!
Trademark Searches
In order to avoid trademark infringement, you must do more than avoid known marksPerform a trademark search in the USPTOSearch state registrationsSearch common law uses of trademark Internet uses of trademark
Trademark Registration Process
Scope State registration only cover within state borders Federal registration, entire U.S. and territories
Requirements Use of Mark In commerce
Trademark Registration Process
Application Examination
Allowed and published No opposition
Registered Opposition
Either win and its registered or lose and game over Rejected
Response to rejection send it back to examination Either overcome rejection or game over
Infringement
In order to sue for infringement, Plaintiff must show PriorityThe mark is protectableAnd Defendant’s mark is likely to confuse
the public
Whether to Register
Federal registration can cost $1000.00 or more, but it is the only way to ensure U.S. protection
Attorney admitted to practice anywhere in the U.S. can register with PTO, but many lawyers are not exposed to trademark law or registration procedures, always best to seek out a specialist
Patents
In order to be patentable, an invention must beUsefulNovelNon-obvious
Types of Patents
Utility Protects processes, machines, articles,
compositions for 20 years
Design Protects article’s ornamental characteristics for 14
years
Business Method Protects methods of doing practically anything
Waiting to File
Priority and One Year Bar First person to reduce invention to practice has priority Only helpful to be first if you can prove it!! Patent application can’t be filed more than one year
after the date the invention was Patented or described in printed publication in this country In public use On sale in this country
Most Foreign countries do not have one year grace period, some have 6 months, some none at all!
Provisional Application
Placeholder filing that preserves an invention’s priority date for one year
Cheap to fileAutomatically abandoned if utility
application is not filed within the yearOnly provides priority to the extent it
properly described the invention
Patent Application Costs
Can range anywhere from $2500-$15,000 to file a utility application with an additional $2000-$5000 through issuance
Can take up to 2-5 years to issue
Patent Pending
Application is published after 18 monthsMarking product “patent pending” may
delay competitors--can’t design around a patent if they can’t see the scope it covers
Cannot sue for infringement until patent issues
Trade Secrets
Any information that is secret and used by a business that gives it a competitive advantage
Trade Secret Case, Plaintiff must prove: A trade secret existed Defendant learned of the trade secret through a
confidential relationship or improper means Defendant used or disclosed or will inevitably disclose
the trade secret without Plaintiff’s authorization Defendant profited from or Plaintiff was damaged by
Defendant’s use or disclosure of trade secret
Conclusions
TrademarksMake sure your mark is protectableMake sure you mark is not owned by
anyone elseProtect valuable marks with trademark
registration
Conclusions
CopyrightsGet author’s written agreement that you
own the copyrightPut a copyright notice on everything that
might be copyrightableRegister if you decide its important
Conclusions
PatentsGet everyone’s written agreement that you
own all patent rightsQuickly seek an attorney to help with filing
patent application
Conclusions
Trade SecretsGet everyone’s written agreement that you
own everythingGet confidentiality agreements