Transcript Lisa - Jackson Walker L.L.P.

Leveraging Intellectual Property
Law for Your Advertising Clients
Mark Tidwell
Jackson Walker, L.L.P.
713-752-4578
[email protected]
March 4, 2004
Focus
• Understanding Intellectual Property
• Value of Intellectual Property
• Applying Intellectual Property Law to Improve Your
Clients’ Brands and Advertising
• Next Steps
• Q&A
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Understanding Intellectual
Property
Intellectual Property Law
Involves. . .
• Protecting ideas
• This includes unique creations from the mind: words,
branding schemes, slogans, designs, advertising copy,
web pages, machines, chemical formulas, software,
paintings, sculptures, books, plays, business methods …
• These are protectable, just like tangible property such
as real property and personal property
• These areas are called “Intellectual Property” (IP)
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Vehicles of Protection
Patents
Copyrights
Original work of authorship fixed in tangible form:
-Pictorial
-Graphic
-Compilation -Literary
-Musical
-Sculptural
-Audio/Vis.
-Software
-Derivative Works
Invention: an concept for a new
-Process
- Machine/Apparatus
-Product
- Formulation
-Ornamental Design
20 yrs
75 yrs
Until lost
or
forfeited
Until disclosed
or publicly known
Trademarks/
Service Marks
Indicia of the origin of a
product or service
-Word
-Symbol
-Design
-Sign
-Name
-Color
-Logo
-Packaging
-Internet Domain Name
Trade Secrets
Information that has economic value
by not being disclosed, and is the
subject of reasonable efforts to keep
it confidential
-Know-How - Software Code
- Business Methods
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Your Areas of Focus
• trade·mark (tr³d“märk”) n. 1. Abbr. An identification
placed on goods to indicate the source of goods and
thereby distinguish the goods from those manufactured
or sold by others.
(Legal basis: common law; 15 U.S.C.)
• Cop·y·right (k¼p“¶-rºt”) n. Abbr. c., C., cop. 1. The
exclusive legal bundle of rights granted to the creator of
a Work.
(Legal basis: 17 U.S.C.)
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Value of Intellectual Property
Intellectual Property
Creates Power
• Enhances brand value
– Distinctiveness
– Familiarity/recognition
• Creates levels of connection among a brand family
• Protects the brand against competitors
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Value of a Trademark: Goodwill
• Consumer association of the trademark with a source
(your client) or quality (the best) of goods
• Consumers will seek out a company or a specific
product based on the trademark
• Value attaches based on “use in the marketplace”
Quality Product + Consumer Recognition =
GOODWILL
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Value of Copyright: Protection
• The owner of a copyright has exclusive rights to...
– Reproduce the Work
– Prepare new Works based on preexisting Works
– Distribute copies of the Work
– Publicly perform the Work
– Publicly display the Work
• The period of protection is generally the life of the
Author plus 75 years
– Works for Hire: 95 years from publication or 120
years from creation
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Top Brands Create and Protect IP
Brand Name
Brand Value ($Mil)
1. Coca-Cola
2. Microsoft
3. IBM
4. GE
5. Intel
6. Nokia
7. Disney
8. McDonalds
9. Marlboro
10.Mercedes
70.45
65.17
51.77
42.34
31.11
29.44
28.04
24.70
22.18
21.37
Business Week 2003 Global Brands Scoreboard
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Applying IP Law to Improve Your
Clients’ Brands and Advertising
Assess What Is Trademarkable
• Word, name, symbol or design, or a combination of
these elements
– Colors, sounds and smells
• Service Marks - marks used with services (vs. tangible
products)
• Trade Dress - combination of many elements that
function together as a source identifier to create an
overall “look” (example: alkdsjflakjd)
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Trademark Rule #1:
Strength is Key
Strong—Fanciful—Arbitrary—Suggestive—Descriptive--Generic—Weak
ASICS
Saucony
Racing Flats
Nike
Shoes
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Trademark Rule #2:
Avoid Consumer Confusion
• Create a unique mark (name and/or appearance)
• Don’t adopt a mark that is similar to another mark for
similar goods
• Confusion erodes “goodwill” of existing mark
• Consumer Confusion = Likelihood of Confusion
• Likelihood of Confusion = Trademark Infringement
CONSUMER
CONFUSION
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Trademark Rule #3: Establish Your
Mark Through Use Or Registration
• “Using” the trademark creates rights
– Goods: Apply mark to goods and sell goods
– Services: Advertise services using mark
(Limitations: Geography & First User)
• Applies within a particular industry
– United Van Lines AND United Airlines
• “Registering” the trademark creates rights
– U.S. Trademark Office
– State Trademark Office
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Federal Registration with
the U.S. Trademark Office
• File Application Cost: ~$1,300
• Prosecute Application: ~$2,500
• Application Time: ~13 months
• Scope: Entire U.S.
• Duration: 10 years + renewable for as long as mark is
used
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Value of Federal Registration
• The Trademark Office reviews the Application to
determine if the mark satisfies the conditions for
trademark protection
– Source identifier
– Likelihood of confusion
• Additional rights are available through registration
with the U.S. Trademark Office
– Covers entire United States
– Blocks others from registering similar marks
– Offers enhanced damages; attorneys’ fees
– Allows one to sue in Federal Court
– Permits use of the ®
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Scope of Rights
• Prevent others from using the same or similar marks
on similar goods
– Geographical area
– Fields of use
– Expansion into geographical area or fields of use
• Use of ™ or ®
• Period of protection: Indefinite so long as you use it
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Assess What Is Eligible for
Copyright Protection
• Original “works” that are eligible include:
– Literary works - books, articles, poems, etc.
– Musical works - score and words
– Dramatic works, pantomimes, and choreographic works
– Pictorial, graphic and sculptural works - web pages,
advertisements, photographs, paintings, technical
drawings
– Motion pictures and other audiovisual works
– Sound recordings
– Architectural works
• What’s NOT eligible:
– Trademarks
– Ice Sculptures
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Copyright Tip #1: Know the
Standards for Copyright Protection
• Standard: “Original” works of authorship... “Fixed” in a
tangible medium of expression
– Original: conceived without copying
– Fixed: recorded in a way that can be preserved and
reproduced
• KEY: Expressions of ideas, not the ideas themselves
– Example: Individual description of the same event can
be copyrighted by each author
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Copyright Tip #2: Know Who
Can Obtain a Copyright
• The author or creator of the Work
• Exception: Work for Hire Doctrine - a work prepared by an
employee within the scope of his or her employment =
Employer ownership
• WARNING!! Independent contractors are not employees
• Some potential problem areas include:
– Advertising
– Web page design
– Software design
– Photographers
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Copyright Tip #3:
Maximize Your Clients’ Rights
• The Copyright automatically attaches at the time the
Work is created
• Additional rights are available through registration
with the U.S. Copyright Office
– Presumption of ownership
– Ability to acquire statutory damage and/or
attorneys’ fees
• Copyright notice is no longer required for protection,
but is advised
• Proper Form: © year of creation, name of owner
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Registration with the
U.S. Copyright Office
• File Application Cost: ~$50
• Prosecute Application: ~$300
• Application Time: ~3 months
• Scope: Entire U.S.
• Duration: Life of author + 75 years  120 years
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Value of Federal Copyright
Registration
• Tied to litigation
– You must be registered in order to enforce your
rights
– You may register at any time up until the point of a
trial
• Statutory damages are possible – it is often difficult to
prove actual damages
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What Happens When IP Is
Overlooked?
• Need some examples of BAD RESULTS
• Some marks no longer act as a source identifier
– Bandaid = a bandage
– Kleenex = a tissue
– Xerox = a copy
– Internet = communication medium
• Why bother with Copyright if automatically
attaches?
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What’s Next
Trademark Takeaway
1. Make IP part of your value add
2. Identify several potential trademark candidates
3. Narrow the candidate field
4. Conduct a trademark availability search
5. File a trademark application
6. Begin use: Creates common law rights
7. Register Trademark: Creates federal/state rights
8. Identify Trademark: TM SM ®
9. Stop Misuse of Mark: Descriptive vs. generic
10. Protect Rights: Continue “exclusive” use
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Copyright Takeaway
1. Protects “expressions”, not “ideas”
2. Creator (ad agency)/independent contractor owns
work (get/give assignment)
3. Work must be “original”
4. Work must be an “authorship”
5. Rights attach upon creation
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Questions?