Chicago business affairs workshop (ip)

CHICAGO DEPARTMENT OF BUSINESS AFFAIRS & LICENSING

Business Education Workshop Copyrights & Trademarks

August 29, 2008 9:30 am – 11:00 amPresented by David M. Adler, Esq. & Associates, PC

Speaker Bio

David M. Adler, Esq. is the principal attorney and driving force behind the Adler Law Group, a boutique intellectual property law firm based in Chicago, Illinois. Founded in 1998, the Adler Law Group was created with a specific mission in mind: to offer small and closely-held businesses a competitive advantage by providing the same strategic and legal guidance and services available from large, often cost-prohibitive, law firms on an efficient and affordable basis.

Mr. Adler has an extensive background, in both private practice and as in-house counsel, with experience in corporate law, including contract interpretation, drafting, negotiation, and enforcement, business entity organization and intellectual property law. Mr. Adler also specializes in advising artistic talent and creative professionals in the media and entertainment industries.

Mr. Adler received his law degree from the DePaul University College of Law in 1997 where he wrote for the DePaul Arts & Entertainment Law Journal. He received a Bachelor of the Arts in English, a Bachelor of the Arts in History with a concentration in Chemistry from Indiana University in Bloomington, Indiana.

Outside the practice of law, Mr. Adler taught undergraduate courses on E-Business and Arts & Entertainment Law in the Arts, Entertainment & Media Management Department of Columbia College Chicago. He is the past chair of the Chicago Bar Association's Start-up and Entrepreneurial Ventures Subcommittee and contributes to Workz.com as a "guest expert" columnist for the ecommerce and small business section.

DAVID M. ADLER, ESQ. & ASSOCIATES, PC

Safeguarding Ideas, Relationships & Talent® 161 North Clark Street, Suite 2550

Chicago, Illinois 60601 Phone: (312) 379-0236

April 11, 2023 2David M. Adler, Esq. & Associates, PC Safeguarding Ideas Relationships & Talent®

1. Introduction.

The purpose of this workshop is to provide a working understanding of 1) your business’ intangible assets, 2) Intellectual Property rights, 3) guidance on how to identify, register and protect these assets and rights, and 4) how to identify threats from business competitors.

Intellectual property rights are a bundle of exclusive rights over creative expressions, both artistic and commercial. Creative artistic expression is generally covered by copyright laws, which protect creative works such as books, movies, music, paintings, photographs, and software and gives the copyright holder exclusive right to control reproduction or adaptation of such works for a certain period of time.

Creative commercial expression is sometimes known as “industrial properties,” as they are typically created and used for industrial or commercial purposes. A patent may be granted for a new, useful, and non-obvious invention, and gives the patent holder a right to prevent others from practicing the invention without a license from the inventor for a certain period of time. A trademark is a distinctive sign which is used to prevent confusion among products in the marketplace.

An industrial design right protects the form of appearance, style or design of an industrial object from infringement. A trade secret is an item of non-public information concerning the commercial practices or proprietary knowledge of a business. Public disclosure of trade secrets may sometimes be illegal.The term "intellectual property" denotes the specific legal rights described above, and not the intellectual work itself.

Intellectual property rights give creators exclusive rights to their creations, thereby providing an incentive for the author or inventor to develop and share the information rather than keep it secret. The legal protections granted by IP laws are credited with significant contributions toward economic growth.

Oftentimes, the largest value of a businesses can be traced to intangible assets. Knowing how to identify and leverage these IP assets and protections produces more value.


2. Copyright Basics.

What is Copyright?

• Article I, Section 8 of the US Constitution grants Congress the power ... “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

What does copyright protect?

• Creative expression: literary, dramatic, and musical works; pantomimes and dance; pictorial, graphic and sculptural works; audio-visual works; sound recordings; and architectural works.

• Requirement that works be “fixed in a tangible form.” Protected as soon as it is expressed. Tangible form includes the electronic medium: e.g. a graphic file saved to disk; a web page saved

as a .html file. Most of the items encountered on the Internet are protectable: the text of web pages, contents of

email and Usenet messages, sound files, graphics, etc.


Copyright basicsCopyright Notice?

no longer necessary, avoids any uncertainty that it is copyrighted. The four elements of Notice are the copyright symbol “©”, the term “Copyright,” the year of

copyright, the name of the copyright holder, and the phrase “All Rights Reserved.” For example: “Copyright © 2008 David M. Adler, Esq., All Rights Reserved”

What is NOT protectable? Ideas Facts Titles Names Short phrases Blank forms

What is a “Work Made For Hire?” – A “work made for hire” is either:

• a work prepared by an employee within the scope of his or her employment, or • a work specially ordered or commissioned for certain uses (including use as a contribution to a collective work), if the

parties expressly agree in a signed, written instrument. – The employer is the author of a work made for hire.


Copyright Basics

How long does protection last?

• Duration depends in large part on when the work was created.• If published before 1978, automatically protected from the moment of its creation and protected

during the author’s life plus 70 years;• Joint Works prepared by two or more authors who did not “work for hire,” the term lasts for 70

years after the last surviving author’s death. • Works made for hire, anonymous and pseudonymous works: duration is 95 years from publication

or 120 years from creation, whichever is shorter.• Works created but not published (or registered) before January 1, 1978, have been brought under

the statute and duration of is computed in the same way: the life-plus-70 or 95/120-year terms.

What Material Can One Use?

• Any original material one creates: graphics, audio, text, or video.• Licensed materials - a license will spell out how the image may be used, how much it would cost to

use the image, and any other conditions and restrictions.• Works in the “Public Domain.” Works in the Public Domain include characteristics such as: a lost

copyright, an expired copyright, owned or authored by the federal government, specifically granted to public domain, or just non-copyrightable.


Copyright Basics

Why should I register my copyright?• Not necessary for creation of copyright but for enforcement.• In order to file a lawsuit • “statutory damages”

How do I register my work?

• file the appropriate form • Check with the Copyright Office to get the current fees. ($35 electronic/ $45 print)

The Digital Millennium Copyright Act

• The Digital Millennium Copyright Act (DMCA) is part of the copyright law • Criminalizes production and dissemination of technology, devices, or services intended to

circumvent measures (commonly known as Digital Rights Management or DRM) that control access • heightens the penalties for copyright infringement on the Internet.


Copyright Basics

Writing an Effective DMCA Notice

• An effective DMCA Notice will notify a web site operator/hosting provider of particular facts in a legally admissible document signed under oath. An effective DMCA Notice must contain the following information:

1. Identity of the correspondent, either: a) the owner of a copyrighted work(s), or b) a person “authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.”

1. Provide contact information, including name, street address, telephone number, and email address.

1. Identify the copyrighted work that is being infringed, or provide a representative list of the works.

1. Specifically identify the material you are requesting the DMCA Notice recipient disable.

1. Provide the specific location of the material on the World Wide Web reasonably sufficient to enable the DMCA Notice recipient to locate the material.

1. State that you have “a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agents, or the law.”

1. State that the information in the notice is accurate, and sign your name, under penalty of perjury.

• The DMCA Notice may be signed either physically or electronically. To exercise your DMCA rights, you must send your DMCA Notice to the “designated agent.”


Trademarks and Service marksDefinition

• A trademark is any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from others, and to indicate the source of the goods.

• In short, a trademark is a brand name. • A service mark is any word, name, symbol, device, or any combination, used, or intended to be

used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.

Why are Trademarks and Service marks important? • Federal registration is not required to establish rights nor to begin use of a mark. • Federal registration can secure benefits beyond the rights acquired by merely using a mark.

– For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide.

• Patent & Trademark Office authority is limited to determining the right to register, • Only a court may render a decision about the right to use, such as issuing an injunction or awarding

damages for infringement. • Federal registration can provide significant advantages to a party involved in a court proceeding.


Trademarks and Service marks

How are Trademark Rights Obtained? • Actual use• Fling an application to register a mark in the Patent and Trademark Office (PTO)• Two related but distinct types of rights in a mark:

– the right to register and the right to use. – Generally, the first party who either uses a mark in commerce or files an application in the PTO has the

ultimate right to register that mark. – The PTO cannot provide advice concerning rights in a mark. Only a private attorney can provide such advice.

• Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services.

• The term of a federal trademark registration is 10 years, with 10-year renewal terms. • Between the fifth and sixth year after the date of initial registration, the registrant must file an

affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.

Securing and Protecting • Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation

with the mark to alert the public to the claim. • It is not necessary to have a registration, or even a pending application, to use these designations. • The registration symbol, ®, may only be used when the mark is registered in the PTO. It is improper

to use this symbol at any point before the registration issues.



Domain Names - Relationship to Trademarks

• The Internet allows users to access millions of web sites and web pages. • Every web page has its own web site that is similar to a street address or telephone number in that it is the address

for that web page on the Internet. This Internet address is commonly referred to as the "domain name.”• Domain names are the familiar and easy-to-remember names that end in "dot com" or "dot net" (e.g.,

www.yourbusinessname.com) that correspond to unique Internet Protocol (IP) numbers (e.g., 243.11.241.78) that serve as addresses on the Internet and allow computers to find one another.

• Domain names always consist of a second level domain (a term or series of terms, e.g. "ecommerceattorney") followed by a top level domain ("TLD"), such as ".net" for networks, ".org" for not-for-profit groups and ".com" for commercial entities.

• Web users most easily locate a web site through the web site's domain name. Web users assume that, as a general rule, the domain name of a particular company will be the company name followed by ".com."

• Sometimes, a trademark is even better known than the company name, in which case a web user will assume that the web address is "trademark.com." When a web surfer does not know a specific domain name he has two (2) options: try to guess the correct domain name or use an Internet "search engine.”

• The incidence of conflicts between owners of trademarks and businesses on the Internet who may, intentionally or otherwise, use a similar name in their Internet addresses appears to be on the rise.

• Registered trademark owners that wish to protect their business goodwill on the Internet may seek protection of federal trademark laws under (a) Section 32 of the Lanham Act 15 U.S.C. ß 1114 for trademark infringement; (b) Section 43(a) of the Lanham Act 15 U.S.C. ß 1125(a) for dilution or unfair competition; or (c) under state unfair competition laws.

April 11, 2023 David M. Adler, Esq. & Associates, PC Safeguarding Ideas Relationships & Talent® 11


Domain Names - Relationship to Trademarks, continued

• The Internet has rapidly moved from a loosely organized decentralized public network for research, educational and governmental collaboration to a globally networked economy for the efficient exchange of communications and currency.

• When a trademark is composed of a domain name, neither the beginning of the URL (http://www.) nor the TLD have any source indicating significance.

• Those designations are merely devices that every Internet site provider must use as part of its address.

• Today, advertisements for all types of products and services routinely include a URL for the web site of the advertiser. Just as the average person with no special knowledge recognizes "800" or "1-800" followed by seven digits or letters as one of the prefixes used for every toll-free phone number, the average person familiar with the Internet recognizes the format for a domain name and understands that "http," "www," and a TLD are a part of every URL.

• Marks consisting of domain names are subject to the same requirements. • Registerable as a trademark or service mark only if it functions as a source identifier. The mark as

depicted on the specimens must be presented in a manner that will be perceived by potential purchasers as indicating source and not as merely an informational indication of the domain name address used to access a web site.

• In In Re Eilberg, the Trademark Trial and Appeal Board held that a term that only serves to identify the applicant's domain name or the location on the Internet where the applicant's web site appears, and does not separately identify applicant's services, does not function as a service mark.


Intellectual Property Management Tips

If there is one thing of particular importance to new ventures that I have learned while managing my clients’ intellectual property (IP), it is that they should have consulted me first. Failure to identify and document IP and the relationships of those who come into contact with it at the inception of the new venture can lead to serious entanglements down the road. Because so much of the intrinsic value of a new venture is often tied up in the intangible assets of a new business, it is imperative to:

• Identify your intangible assets early• Protect your intangible assets through registration and

contract• Leverage your intangible assets strategically



1. IP Audit – Locate & Identify your IP!

• Conduct an audit to assess your company’s intellectual property assets as well as your liabilities to identify and reduce risks and capitalize on opportunities. Books and services are available to help you do an IP audit.

• Once a company's intellectual property rights have been identified through an audit, the IP manager should put a program in place to assure that these rights are properly registered and correctly used. This article is intended to serve as a practical guide to the registration and maintenance of IP rights.

2. Trade Secrets - Protect them or lose them!

• Definition of a Trade Secret: The Illinois Trade Secrets Act (765 ILCS 1065) provides broad protection to confidential trade secret information that gives businesses a competitive advantage. Under the statute, a trade secret is any “information, including but not limited to, technical or non-technical data, a formula, pattern, compilation, program, device, method, technique, drawing, process, financial data, or list of actual or potential customers or suppliers, that:

– (1) is sufficiently secret to derive economic value, actual or potential, from not being generally known to other persons who can obtain economic value from its disclosure or use; and

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



• Most common context within which trade secret disputes arise: employment. Given the ease of electronic transmission of data, a disgruntled employee with access to proprietary information has the ability to do considerable damage to a business. The IP manager should therefore put internal controls in place limiting access to trade secret information to employees with a need to know.

Trade Secret Management Tips: • Mark all materials containing confidential info, including drawings, faxes, emails

and other written materials, as “CONFIDENTIAL.” • Shred/destroy confidential materials that you throw out.• Lock up your outside trash. Otherwise, it may be considered public domain, and

legally available to “Dumpster Divers” employed by your competition.• Require guests to sign in and wear “visitor” badges.• Prevent free access to trade secret and confidential information. Enforce

computer passwords, cover revealing labels, restrict visitor tours, and lock drawers.

• Use Confidentiality Agreements with anyone who has access to trade secret info.



3. Trademarks and Service Marks - Protect your Brand!

• What is Registerable? Although typically thought of as words, logos or slogans, trademarks also exist in such non-traditional formats as musical sounds (Intel), product shapes (Coke Bottle), colors (M. Stewart) and scents.

• Benefits of Registration: • Validity. Federal registration constitutes prima facie evidence • Ownership of and Exclusive Right to Use the Mark. • Constructive Notice. Only a federal registrant has the right to use the distinctive ® symbol in

connection with the registered mark. If the mark is accepted for registration, the filing of an application constitutes constructive use and confers a right of priority having nationwide effect as of the filing date. A junior user's defense of good faith adoption and use after the application filing date is eliminated.

• “Incontestable” Status: after five years of use, upon filing of the appropriate affidavits of continuous use and incontestability.

• Border Enforcement. A registrant also has the right to interdict importation of goods bearing infringing and counterfeiting marks.



Trademark Management Tips:• Signify all marks with the appropriate SM, ™ or, if registered ®. • Do a preliminary search before you decide to register a mark (The

internet can help). Marks confusingly similar to existing marks in the same product category are not likely to be approved by the US Patent and Trademark Office. Neither are generic or descriptive marks. [Note: this is where a seasoned trademark lawyer can help.]

• Professional services are available to perform thorough trademark searches once your preliminary search is satisfied.

• Consider registering domain names (if you will use them) to protect the integrity of your brands.



4. Copyrights - Protect your published works! • Copyright protection begins immediately. Registration is not required. • Author the exclusive right to reproduce, adapt, distribute, perform and display the work publicly. • The violation of any of these rights constitutes copyright infringement. • The most important benefit of copyright registration, in most instances, is that it entitles the copyright

owner to statutory damages and attorneys' fees. Section 412 of the Copyright Act provides that no award of statutory damages or attorneys’ fees shall be made for: (1) any infringement of copyright in an unpublished work commenced before the effective date of registration, or (2) any infringement of copyright commenced after first publication and before the effective date of registration, unless such registration is made within three months after first publication of the work.

• Computer software is “collective work.”

Management Tips:• Mark published documents with © or “Copyright” and the year(s) the materials were published.• Enforce internal policies, such as prohibitions against illegally copied software on company computers.


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