Licensing and Protecting Your Intellectual Property

By Andrew Berger, Esq.

For the Cornell Entrepreneurial Network

Webinar on April 23, 2010

Some Considerations When Thinking About Licensing

A license is a long-term mutually dependent relationship

Termination of the licensee, though important, may not be an option

Will both sides be able to make money from the deal?

Some Additional Considerations

Do you own the rights you are licensing?

If a trademark license, are the goods on which your mark will appear appropriate for the mark?

Will the goods manufactured by the licensee be of sufficient quality?

Before You License, Ask:

What’s the potential market for the product/service in question?

What is the other side’s track record?

What external forces might adversely impact the relationship?

When You Negotiate the License

Win only the important points

Build trust with every interaction

You never know till you ask

Let’s Now Talk About How to Protect Your IP

We begin with copyright

What Works Are Protected?

Original works of Original works of authorship fixed in a authorship fixed in a tangible mediumtangible medium

They include: music, They include: music, books, magazines, books, magazines, photographs, movies photographs, movies paintings, sculpture, paintings, sculpture, records and mapsrecords and maps

What Does Original Mean?What Does Original Mean?

Originality means independent creation, Originality means independent creation, not noveltynot novelty

The work must reflect a minimal level of The work must reflect a minimal level of creativity but there is no aesthetic creativity but there is no aesthetic thresholdthreshold

When Is Copyright Created?When Is Copyright Created?

When the copyrightable work is fixed in a When the copyrightable work is fixed in a tangible medium, including on paper or on tangible medium, including on paper or on a computer’s hard drive for more than few a computer’s hard drive for more than few secondsseconds

What Rights Does a Copyright What Rights Does a Copyright Holder Have?Holder Have?

Reproduce (copy) the Reproduce (copy) the workwork

Distribute the work Publicly perform the Publicly perform the

workwork Publicly display the Publicly display the

workwork Create derivative

works (such as a movie from a novel)

Who Owns the Copyright?Copyright? The creator unless: The creator unless: She transfers ownership or She transfers ownership or The work is for hireThe work is for hire Works for hire are created in Works for hire are created in

two situations:two situations: The employee creates the

work pursuant to his responsibilities

The hiring party commissions an independent contractor to create certain categories of works and the parties agree in writing that the work is for hire

How Long Does Copyright How Long Does Copyright Protection Last?Protection Last?

Life of the author plus Life of the author plus 70 years70 years

For works for hire or For works for hire or owned by a owned by a corporation: 95 years corporation: 95 years from publication of the from publication of the work or 120 years work or 120 years from its creation, from its creation, whichever ends firstwhichever ends first

What is a Copyright Notice and What is a Copyright Notice and What are Its Benefits?What are Its Benefits?

The notice consists of the The notice consists of the © symbol, name of the © symbol, name of the copyright holder and the copyright holder and the date the work was date the work was publishedpublished

The notice prevents an The notice prevents an infringer from arguing that infringer from arguing that its infringement was its infringement was innocentinnocent

© Cornell University 2011© Cornell University 2011

How Can You Best Protect Your Work?

By registering it with the Copyright Office

U.S. Copyright Office101 Independence Avenue SEWashington, DC 20559-6000

(202) 707-3000http://www.copyright.gov

What Are the Benefits of Registration?

If the registration is timely, you can collect statutory damages and possibly attorneys’ fees from the infringer

A timely registration is one made at any time before the work is infringed or, if it has been infringed, within 3 months of the work’s initial publication or distribution to the public

What Does Copyright Protect?

The expression of the idea, not the idea itself.

The distinction assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by work

Rogers v. KoonsInfringement?

Fournier v. Erickson Fournier v. Erickson Infringement?Infringement?

Trademark Basics

What Constitutes a Trademark?

Words that identify the brand

Phrase or Slogan

Design or Logo

Even the NBC chimes

Acquiring Rights in a Trademark

By public use; a trademark is an adjective, not a noun: say ROLLERBLADE® in-line skates, not rollerblades or Kleenex® Everyday Tissue, not Kleenex

Say this is a SLEEPY’S mattress from the Sleepy’s Mattress Co

Protecting Trademark Rights By Registration

Registration will give you significant benefits: National priority: the

exclusive right to use the mark nationwide in connection with the goods or services

Only exception is in locations where another was using the mark before you registered

Non-Statutory Benefits

The judge or jury will treat your claim more seriously

Your registered mark may deter a second comer from registering something similar

Types of Registrations

Use-Based Application

Intent-to Use Application

Suggestions About Selecting a Mark

Is it available-you need to do a search Is the mark strong? The 5 categories of marks in descending order

of strength: Arbitrary Fanciful Suggestive Descriptive Generic

Strength of the Mark Depends on its Distinctiveness

Arbitrary or fanciful marks are the strongest Arbitrary: common

words applied in an uncommon way

Fanciful are made up names with no dictionary meaning

Suggestive Marks

Suggestive marks: suggest a quality or characteristic of the goods and services

Stay Away From Descriptive Marks

Descriptive terms like Windows® only give rise to trademark rights after consumers associate them with a specific source—usually only after years of expensive advertising

Generic marks describe the product and are not marks at all. If the brand name becomes the generic name of the good in the public’s perception, any trademark rights will be lost.

Proper Trademark Use

Set the mark apart with large type or colors

Use ® -- with the mark after the registration issues

™ or SM confer no trademark rights; they are self-declared indications of claimed rights; use them before and during the application process

What Is Trademark Infringement?

The use of a confusingly similar mark likely to cause a substantial number of consumers to be confused about whether the goods or services come from or are approved or sponsored by the trademark owner

Not a bright-line test—depends on evaluation of many facts and circumstances

Infringement?

Infringement?

The Cease and Desist Letter

The letter should Name the mark holder, the

nature of the trade or service mark, the date of first use and registration #

Specify the infringer’s conduct and, if you know, the legal provisions violated

Demand the infringer cease its conduct and confirm by a date certain it has done so

Chose the closing carefully, say “you will enforce your rights” An overt threat to sue may prompt the infringer to start a declaratory judgment action

Settlement Strategies

Settlement strategies—some suggestions Offer infringer reasonable time to migrate Gradual name change Limit the infringing use to specific goods,

channels or areas Propose or accept a co-existence agreement Contribute to infringer’s cost of changing the

infringing product License the mark to defendant for a royalty

Other Questions?

Contact Andrew Berger at (212) 702-3167 or berger@thshlaw.com.

Also visit Andrew’s blog at www.ipinbrief.com