Intangible AssetsIntangible Assets

What is worth protecting?What is worth protecting?

April 21, 2009April 21, 2009

© 2009, Amy M. Cohen, Esq., All Rights Reserved© 2009, Amy M. Cohen, Esq., All Rights Reserved

A Brief QuizA Brief Quiz

• Is this worth protecting?Is this worth protecting?

• Can I protect it?Can I protect it?

• How?How?

• Logo and/or Business nameLogo and/or Business name

• If you have developed a following using If you have developed a following using this name and logo, yes, it is worth this name and logo, yes, it is worth protecting. protecting.

• If potential customers associate a If potential customers associate a particular good or service with your name particular good or service with your name or logo, it is worth protecting.or logo, it is worth protecting.

• Yes, you can protect it, by applying for Yes, you can protect it, by applying for trademark registration of logo and/or trademark registration of logo and/or name.name.

• Photographs or artworkPhotographs or artwork

• If you make your living creating artwork or If you make your living creating artwork or taking photographs, it is worth it to taking photographs, it is worth it to protect. This prevents others from protect. This prevents others from capitalizing on your work.capitalizing on your work.

• Yes, you can protect it, by filing an Yes, you can protect it, by filing an application for registration of copyright.application for registration of copyright.

• Each separate work of art (each separate Each separate work of art (each separate photograph) is entitled to separate photograph) is entitled to separate registration and protection.registration and protection.

• Clothing designs and logoClothing designs and logo

• As noted above, artwork or photographs As noted above, artwork or photographs are protectable and it is worth it if this is are protectable and it is worth it if this is how you make your living. When selling how you make your living. When selling products featuring your designs, it is products featuring your designs, it is important to protect them with copyrights.important to protect them with copyrights.

• Also important is protecting your logo that Also important is protecting your logo that you use on the products you sell, by you use on the products you sell, by registering the logo as a trademark.registering the logo as a trademark.

CLIENTCLIENT CONTACTCONTACT ADDRESSADDRESS TELEPHONE TELEPHONE NUMBERNUMBER

GROSS ANNUAL GROSS ANNUAL PROFITPROFIT

INTERESTED IN:INTERESTED IN:

ABC, Inc.ABC, Inc. Barney RubbleBarney Rubble 1234 Bedrock Lane, 1234 Bedrock Lane, Valencia, CA 91355Valencia, CA 91355

661-123-4567661-123-4567 $5,000,000.00$5,000,000.00 High yield, low riskHigh yield, low risk

Cheese 101Cheese 101 Minnie MouseMinnie Mouse 12 Toon Lane 12 Toon Lane Anaheim, CAAnaheim, CA

$15,000,000.00$15,000,000.00 Low risk, long term Low risk, long term growthgrowth

Fred FlintstoneFred Flintstone N/AN/A 1515 Bedrock Lane 1515 Bedrock Lane Valencia, CA 91355Valencia, CA 91355

661-987-6543661-987-6543 $50,000,000.00$50,000,000.00 Junk Bonds onlyJunk Bonds only

• Customer lists and contact informationCustomer lists and contact information

• Yes, this may be worth protecting.Yes, this may be worth protecting.

• Product LabelsProduct Labels

• Yes, this is worth protectingYes, this is worth protecting

What Can I Protect?What Can I Protect?

• IntangiblesIntangibles– ““Trade Secrets”Trade Secrets”– Trade Dress Trade Dress – LogosLogos– Brand NamesBrand Names

• Tangibles: ProductsTangibles: Products

How to Protect Your How to Protect Your IntangiblesIntangibles

““Trade Secret”Trade Secret”

• Is information, including a formula, Is information, including a formula, pattern, compilation, program, device, pattern, compilation, program, device, method, technique or process thatmethod, technique or process that– (1) derives independent economic value from (1) derives independent economic value from

not being generally known to the public or to not being generally known to the public or to other persons who can obtain economic value other persons who can obtain economic value from its disclosure or use; andfrom its disclosure or use; and

– (2) is the subject of efforts that are (2) is the subject of efforts that are reasonable under the circumstances to reasonable under the circumstances to maintain its secrecy.maintain its secrecy.

What are “reasonable efforts” to What are “reasonable efforts” to protect?protect?

• Limited access to informationLimited access to information

• Confidentiality AgreementsConfidentiality Agreements

• Location of InformationLocation of Information

• Other factors – Is information known in Other factors – Is information known in industry?industry?

What should your clients (or you) What should your clients (or you) be concerned with?be concerned with?

• Is a value derived from the information used in Is a value derived from the information used in daily business? (Client lists, pricing information, daily business? (Client lists, pricing information, production cost information, contact production cost information, contact information.)information.)

• Would competitors gain similar value if Would competitors gain similar value if information was known to them?information was known to them?

• Is the information being protected?Is the information being protected?– Under lock and keyUnder lock and key– Limited employee access (“key employees”)Limited employee access (“key employees”)– Confidentiality AgreementsConfidentiality Agreements– Shredding trashShredding trash

Trade DressTrade Dress

• What is it? Various elements used to promote a What is it? Various elements used to promote a product or service. product or service.

• For products, could be packaging, displays, For products, could be packaging, displays, configuration of the product (iPod packaging, configuration of the product (iPod packaging, Galliano bottle).Galliano bottle).

• For services, could be décor or environment in For services, could be décor or environment in which a service is provided (i.e. Hard Rock Café which a service is provided (i.e. Hard Rock Café interiors).interiors).

• Trade Dress can be registered with US Patent Trade Dress can be registered with US Patent and Trademark Office (USPTO) and receive and Trademark Office (USPTO) and receive protection from federal courts.protection from federal courts.

Should you or your clients be Should you or your clients be concerned about protecting concerned about protecting

trade dress?trade dress?

• Would the average consumer be confused Would the average consumer be confused about the origin of a product, if another about the origin of a product, if another product was allowed to appear in similar product was allowed to appear in similar dress? If yes, you should look into dress? If yes, you should look into protecting the trade dress.protecting the trade dress.

TrademarkTrademark

• A trademark usually consists of a word, A trademark usually consists of a word, phrase, logo, or other graphic symbol.phrase, logo, or other graphic symbol.

• Not limited to brand name or logo, can Not limited to brand name or logo, can also be distinctive shape, letters, numbers, also be distinctive shape, letters, numbers, package design, sound, smell, color, or package design, sound, smell, color, or other aspects of product that promote it.other aspects of product that promote it.

Should you protect your logo?Should you protect your logo?

• Do you have a creative logo or symbol to Do you have a creative logo or symbol to identify your company, product or identify your company, product or services?services?

• Would your customers become confused Would your customers become confused as to the origin of products if a similar as to the origin of products if a similar logo or similar was used on other products logo or similar was used on other products or services?or services?

Some TM BasicsSome TM Basics

• TM is owned by first business to use it in a TM is owned by first business to use it in a commercial context- associate the mark commercial context- associate the mark with a product or service.with a product or service.

• TM once registered is good for 10 years, TM once registered is good for 10 years, can be renewed.can be renewed.

Copyright ProtectionCopyright Protection

• You can copyright any “original” work in which You can copyright any “original” work in which the author uses some amount of creativity and the author uses some amount of creativity and does not merely copy pre-existing works.does not merely copy pre-existing works.– BooksBooks– Plays – including accompanying musicPlays – including accompanying music– Web contentWeb content– MoviesMovies– Architectural worksArchitectural works– Music – including lyricsMusic – including lyrics– Photographs, choreography, sculpture, sound Photographs, choreography, sculpture, sound

recordingsrecordings

The Basics of ©The Basics of ©

• Rights attach at creationRights attach at creation

• No protection of ideas or factsNo protection of ideas or facts

• Creator is generally owner (exception – works Creator is generally owner (exception – works for hire, commissioned works, author sells work)for hire, commissioned works, author sells work)

• Bundle of rights – reproduce, display or perform, Bundle of rights – reproduce, display or perform, distribute or sell, adaptations or derivative distribute or sell, adaptations or derivative works.works.

• Life of author plus 70 yearsLife of author plus 70 years

• Public Domain after expirationPublic Domain after expiration

Do you have anything worth Do you have anything worth protecting under ©?protecting under ©?

• Industry manuals – sales guides, product Industry manuals – sales guides, product information, “how-to” processes.information, “how-to” processes.

• Web materials, informationWeb materials, information

• Graphic designsGraphic designs

• Sales techniques if novel or new to industrySales techniques if novel or new to industry

• If employees are creating, need “work for hire” If employees are creating, need “work for hire” language in employee agreement.language in employee agreement.

Identify your assets as protectedIdentify your assets as protected

• Proper Copyright notice: Use of © symbol Proper Copyright notice: Use of © symbol or “copyright,” name of owner, year of or “copyright,” name of owner, year of first publication, “all rights reserved.”first publication, “all rights reserved.”

• © Notices on websites© Notices on websites

• Proper TM notice: Use of TM with mark at Proper TM notice: Use of TM with mark at any time, use of ® symbol only after mark any time, use of ® symbol only after mark is registered by USPTO.is registered by USPTO.

The EndThe End

Presentation © 2009, Amy M. Cohen, Esq., All Rights ReservedPresentation © 2009, Amy M. Cohen, Esq., All Rights Reserved