Why Marketers Should Care About IP
January 14, 2014
presents
Sharon Toerek
Legal + Creative Licata & Toerek
Mary Juetten
CEO of Traklight
The Legal
Hot Buttons:
Today’s Goals
• Discuss common legal threads that run
through client experience
• Focus on the value of a
preventative, proactive approach
• Minimize the involvement of
lawyers in your lives!
• Create some conversations
Why Marketers Should Care About IP
WEBINAR PRESENTED FOR:TraklightJanuary 2014
PRESENTED BYSharon L. Toerek, PartnerLicata & ToerekLegalandCreative.com
Disclaimer Technology leads…
Business adapts …
Law sweeps up behind.
A Day in the Life of a Marketing
Pro…
• New Product Launches• New Technology Platforms
and Tools• New Content Generated• New Strategy to Implement• New Creative Treatments
IT’S ALL INTELLECTUAL PROPERTY!
The 5 Top
Marketer
IP
Hot Buttons
1. Protecting IP in a Business Pitch or the “Idea Phase”
2. Using a Virtual/Freelance Workforce
3. Rights to Completed Work
4. Selecting a Brand or Rebrand
5. Using IP Properly in Content Marketing and Social Media
IP Hot Button #1
Protecting IP in
a Business
Pitch or the
“Idea Phase”
The Business Issue: Constant tension in the pitch/
prospecting/ideation process
Your best creative foot forward vs.
Resources to generate work that may not lead to a formal relationship
The Legal Hot Buttons: – Who owns the work if an agency or vendor
doesn’t get hired by a brandholder?
– What happens if the work gets implemented by someone else?
IP Hot Button #1
Protecting IP
in a Business
Pitch or “Idea
Phase”:
Prevention
THE HARSH TRUTH:
NOBODY OWNS IDEAS!
Option 1: Get a confidentiality/rights ownership agreement in place pre-pitch
– Make the provisions mutual
Option 2: Forego the agreement and assume risk with open eyes
IP Hot Button #1
Protecting IP
in a Business
Pitch or “Idea
Phase”:
Prevention
Alternative Prevention.…
Use copyright law.
- Express as much of the conceptual work in written form as possible (storyboards, memos, detailed proposals)
- Put rights ownership language in all proposals
- Use copyright notices on all work product (pre-engagement)
IP Hot Button #1
Protecting IP
in a Business
Pitch or “Idea
Phase”:
Prevention
Further Consideration:Negotiate ownership in advance.
– Puts everyone on same page about IP
ownership
– An increasing trend in industry
IP Hot Button #1
Protecting IP
in a Business
Pitch or “Idea
Phase”: Reaction
Determine end goal before you pursue a remedy.
– Arrange a rights transfer/license arrangement (the
business/commercial solution)
– Pursue legal claims for:
• Contract breach
• IP misappropriation
IP Hot Button #2
Using a
Virtual/Freelance
Workforce
The Business Issue:Balancing the workload or need for expert resources by using virtual or freelance contractors
The Legal Hot Buttons:- Originality of Work
- Client Confidentiality
- Work Rights Ownership
- Restrictive Covenants
- Insurance Coverage
IP Hot Button #2
Using a
Virtual/Freelance
Workforce:
Prevention
PUT IT IN WRITING
PUT IT IN WRITING
PUT IT IN
WRITING…..
No handshake arrangements
IP in completed work in these
situations DOES NOT follow the
money – it must be in writing!
IP Hot Button #2
Using a
Virtual/Freelance
Workforce:
Prevention
Critical Contract Provisions:– Transfer of all IP and work rights
– Warranty of work originality– or a license to use or transfer the work
– Confidentiality
– Industry or Client Noncompetition and Non-solicitation
– Errors and Omissions Insurance Coverage
IP Hot Button #2
Using a
Virtual/Freelance
Workforce:
Reaction
– Get a post-engagement work rights assignment/transfer between parties
– Enforce your contract if it’s breached
– Make a claim on the errors and omissions insurance policy if appropriate coverage exists
IP Hot Button #3
The Rights to
Completed Work:
The Business Issue:
Agency: “What issue? We’re fine with our clients owning the work!”
Client/Marketer: “What issue? Of course we own the work! We paid for it!”
The Legal Hot Buttons:– IP Ownership Does NOT
follow the $
– A Payment problem or dispute
– Nothing in writing
IP Hot Button #3
The Rights to
Completed Work:
Prevention
– Acquire rights to all 3rd party-produced work in writing
• Create an internal process to manage rights to all work in a project
• Don’t forget about ALL outside vendors and partners used (photography, music, software programs, mobile apps)
– Include rights transfer language in client –agency/vendor contracts
• Trigger rights transfer to client on payment
• If you aren’t transferring ALL the rights, say so specifically
IP Hot Button #3
The Rights to
Completed Work:
Reaction
– Get a post-completion assignment of rights from freelancers or third-party vendors
– In payment disputes between agency and client, intellectual property ownership can be a lever to help resolve the matter
– Negotiate broader license if the client’s desired use of work expands post-engagement
IP Hot Button #4
Brand
Selection or
Implementation
The Business Issue: Traveling too far down the path of brand selection or implementation before learning a mark is not available or will not “clear.”
– Brand mark availability
– Appropriate clearance of mark
Domain name availability and/or clean Google® results
Are NOT Trademark Clearance!
IP Hot Button #4
Brand
Selection or
Implementation:
Prevention
Begin the trademark search/clearance process as early as possible
• Consider screening several alternatives simultaneously to save time
Start the trademark registration process immediately after selection/clearance
• Intent-to-use registration process allows you to apply while you’re implementing the mark
IP Hot Button #4
Brand
Selection or
Implementation:
Prevention
Steer away from the following:
– Marks that are very descriptive/generic
– Marks that are likely to cause confusion with others in your industry or market
IP Hot Button #4
Brand
Selection or
Implementation:
Reaction
If a brand trademark does not clear (after adoption):
– distinguish it (by industry/product/service)
– modify it with graphics or language
– acquire it
IP Hot Button #5
Using IP Properly in
Content Marketing
and Social Media
The Business Issue: Content Marketing and Social are attractive, but quick-moving and viral tactics. IP missteps are harder to fix.
The Legal Hot Buttons: The following scenarios create IP legal implications (for client and agency):
- Using freelance-created content
- Repurposing content of others
- Posting proprietary information in content or on social channels
- Improper TM use (yours or theirs)
IP Hot Button #5
Using IP Properly in
Content Marketing
and Social Media:
Prevention
– Get permission when posting the content of any party who isn’t your employee on your platforms
- Make proper attribution when posting content /IP of others (CR and TM Notices)
– Follow proper brand standards and usage requirements for trademarks
– Don’t use competitor brands in your marketing unless you are following the laws on comparative advertising
IP Hot Button #5
Using IP Properly in
Content Marketing
and Social Media:
Reaction
Correct violations as soon as you
learn about them:
- Take down objectionable content
- Cease competitive ads if they are
not compliant with law
- Get a license or written
permission, post fact, to use the
IP
- Do not disclose sensitive or
proprietary business information
via social channels or published
content
Recent Legal
Developments/
Trends
New Top Level Domains
– Trademark implications for brandholders:
- Tons more real estate to monitor and protect on Internet
– Trademark lawyers are hoping ICANN
cautious about releasing new TLDs too quickly
Recent Legal
Developments/
Trends
Pinterest® & Copyright Infringement
– Every “repin” is a potential copyright infringement
• Jury out on whether image owners care in many cases
– Stakes higher in a commercial context• Where you disrupt commercial market for
an image
– Don’t “repin” in a commercial context without permission
Recent Legal
Developments/
Trends
Ownership of “Social Contact” Data
Who owns:
– Twitter handles that include brand names
– Twitter followers, LinkedIn links or Facebook fans
IP Hot Buttons
for Marketers:
Questions?
Thank You!!!!!!Reach me at:
E-mail: [email protected]
Phone: 216.573.6000
Twitter: @SharonToerek
LinkedIn: http://www.linkedin.com/in/sharontoerek
Blog: www.LegalandCreative.com
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