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October 25, 201210 am PT/ 1 pm ET

IP Ownership in a Contingent World: What You Need to Know to Own and Protect Your Intellectual Property

Moderator: Barry Asin, President, Staffing Industry Analysts

Guest Speaker: Eric Rumbaugh, Esq., Michael Best & Friedrich LLP

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Contingent Workforce Strategies SummitMay 15-16, 2013Andel’s Hotel | Berlin, Germany



CW Solutions Forum and CWSC Summit Chicago 2013

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Contingent Workforce Solutions Forum September 10, 2013

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Staffing Industry Analysts | 1975 W. El Camino Real, Ste. 304 | Mountain View, CA 94040 | 800.950.9496 | www.staffingindustry.com

Moderator: Barry Asin, President

Staffing Industry Analysts

Guest Speaker: Eric Rumbaugh, Esq.

Michael Best & Friedrich LLP


IP Ownership in a Contingent World: What You Need to Know to Own and Protect Your Intellectual Property

Eric H. Rumbaugh, Esq.Michael Best & Friedrich LLP

100 East Wisconsin Avenue, Suite 3300Milwaukee, WI 53202-4108

[email protected]

This presentation is intended for general information purposes only and does not constitute legal advice. Specific questions and requests for legal advice should be addressed to legal counsel.

The Big Picture For Contingent Workers

Significant issues in transfer of intellectual property Businesses are often unprepared for issues with traditional

direct hire workers Issues are more complicated – and less well understood –

for contingent workers and ICs Managers involved in contingent worker procurement and

management should understand the big picture

Trade Secrets Defined

“Technical or nontechnical data, a formula, pattern, compilation, program, device, method, technique or process that derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by other persons who can obtain economic value from its disclosure or use.”

Must actually be a secret or subject to “reasonable efforts” to be kept a secret.

The definition drives compliance

Typical Trade Secrets

Customer Price and Purchasing History Cost and Margin data Candidate data and history Company financial history and data Marketing and Strategic Planning Information Formulas, designs or technical data

What are “Reasonable Efforts?”

Must be reasonable under the circumstances Reasonable efforts do not mean all conceivable efforts

Common “Reasonable Efforts”

Use of confidentiality/non-disclosure agreements Security precautions (locks, passwords, badgers, etc.) Circumstances of disclosure to employees Electronic communications, social networking policies Passwords “Need to know”

“Reasonable Efforts” for Contingent Workers

Often ignored “Need to know” is critical Some confidentiality duty

Vendor contract Employee acknowledgement

Real-life application

Uniform Trade Secrets Act (UTSA)

Provides remedies for misappropriation and threatened misappropriation of a company’s trade secrets by a former employee (or third party).

47 states have adopted it. Massachusetts, New York and Texas have not

Best Practices For Exiting Contingent Workers

Often ignored for contingent workers/ICs What is the worker doing? What would the best practice be for a direct-hire worker?

Exit Interview Data Preservation

E-Mail and Data Servers Remote access, print, and other logs Laptop/Desktop – when and how to image? To store? What to look for?

Best Practices For Incoming Contingent Workers

Mirror of outgoing employees Communications with supervisors about importance of

not receiving information Often ignored for contingent workers/ICs

Significant risk for portable IP

Co-Employment and Best Practices For All Contingent Workers

Consider “need to know” Consider non-disclosure obligation

Any writing Log-in

Vendor and IC contracts Co-employment issues

What Does Copyright Protect?

Original works of authorship Literary works (books, computer programs Performing arts (theater) Visual arts (sculpture, fine art) Sound records/audio-visual Architectural works

Fixed in a tangible medium

Copyright Does Not Protect

Ideas Facts Titles Names Short Phrases “Inventions”

How Are Copyrights Acquired?

Protection is now automatic Registration is simple, advantageous

Establishes public record of claim Eliminates “innocent infringement defense”

Special Issues For Contingent Workers

Often ignored Bringing work product from job to job

Formality of Registration Has Benefits:

Prerequisite to suit Registration before infringement or within three months

of publication: Statutory damages (up to $150,000 per infringement) Costs Attorneys’ fees

Copyright Owner Has Exclusive Rights

Reproduction Distribution Display/Public Performance Creation of Derivative Works

Subject to certain defenses: FAIR USE, compulsory license

Who is the Owner? Copyright is Owned by the Author

THIS ISSUE OFTEN ARISES – WITH DEPARTED WORKERS; COMMISSIONED WORKS

Exceptions: (1) Author transfers ownership

Must be in writing (2) “Work Made for Hire”

Exceptions to Ownership by the Author

A work is “made for hire” when:(a)prepared by an employee within the scope of his/her employment, or (b)specifically ordered or commissioned for use as a contribution to a: collective work motion picture or other audiovisual work translation supplementary work compilation test or answer material, atlasNote: parties must agree in a signed written instrument that the

work is a work made for hire Author transfers ownership

Must be in writing

Works Made for Hire

Ownership does not vest in author Instead, employer is considered author and copyright

owner in the first instance Avoids ability of employee to later terminate grant of

rights

Is it a Work Made for Hire?

Courts will look at the nature of the employer-employee relationship Control by employer over the work Control by employer over the employee Status of the employer

Practical Tip

ALWAYS GET IT IN WRITING!

Best Practices – Copyrights

CLARIFY IN AGREEMENT – who will own copyright, what will be the scope of license rights.

Address this anytime copyrightable work is involved

IP Ownership – Contingents and IP

State-specific IP assignment rules Who signs? Special issues for contingent workers





Time for Your Questions





Upcoming Webinars

November 15, 2012 MSP/VMS Landscape

November 28, 2012 2013 European Contingent Market Forecasts

December 13, 2012 US Legal Update





• Copies of the slides and a link to the audio recording will be distributed to all attendees within 24 hours following the webinar

• A replay of the webinar will be available for CWS Council Members at www.staffingindustry.com

Slides and Audio





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