Believe in or not it is difficult to avoid inadvertently copying the ideas of others, especially in a company setting where there are number of individuals doing many different tasks wherein the innocent or unknowing use of others intellectual property can cause liability problems. This is where the intellectual property liaison comes into play as being an individual who is involved with your use of technology on a daily basis to ensure all of the right controls are in place and the required employee training is accomplished.
See “General Intellectual Property” under the “Portfolios” page for more information on the intellectual property liaison tasks.
A trademark can be infringed without directly copying or even being in competition with the copied trademark’s associated goods and services. All that is required is there be a likelihood of confusion for the consumer. This means that the original and new trademark only need to be similar, not exactly alike at all. This is called the sight, sound, and meaning rule, thus different appearances, spellings, and meanings between the two marks, will not avoid infringement if there is a chance of confusion by the consumer as to source or origin of the goods and services. Liability can include injunctions, monetary damages, and attorney’s fees for willful infringement.
Dilution has an even wider liability for an infringer of what is termed a famous mark, in that use of the famous mark or a mark similar to the famous mark even in non-competing or dissimilar goods and services can result in liability. Also, likelihood of confusion is not required, as there can be no deception as to source or origin of the dissimilar goods and services, but dilution can occur nevertheless as the name recognition and goodwill of the famous mark has been improperly used. Dilution basically includes the attributes of “blurring” and “tarnishment”. Blurring meaning to cloud the famous marks association with particular goods and services and tarnishment meaning to use the famous mark in an unflattering manner. Of course a question should be is the mark famous?
Note that the fame associated with a mark doesn’t mean it has to be extremely well known, as fame is a relative item specific to the mark itself, for more information on what is considered for a mark to be famous see, “Dilution” under “Trademarks”.
Choosing a Trademark
Always steer clear of similar packaging and terms used by competitors; besides, you want to establish your own market identity right? Once a tentive mark has been selected, have a search done to find confusingly similar marks in every country you want to register your mark in. This avoids the waste of time and money on promoting a mark or applying for registration only to find out a year later that you cannot have that mark either by refusal from the Trademark Office or by another company forcing you to stop using that particular mark. It is much easier to secure your legal rights first and then promote and use the mark. In addition, by not doing a full comprehensive search (being more than just an Internet search) it may be inferred that you acted with bad faith, which could result in increased damages against you.
Each and very public disclosure a company makes must be supported by credible facts, liability for false or misrepresentations in the disclosure can come under section 43(a) of the Lanham Act. The typical scenario is misrepresentations in advertising relating to a competitors product.
Requirements to prove this type of case include that a misrepresentation of fact was made, a substantial segment of the audience was deceived, the misrepresentation was material to the audience and influenced their buying decision, the advertising was in interstate commerce, and that the aggrieved party suffered injury, either through lost sales or loss of goodwill. Note that, the aggrieved party’s product or service need not be named in the advertising, nor does the advertising need be literally false, or that the deceptive ad be done intentionally. Advertising as used in this context is not limited to print, or radio, and TV, but any form of public disclosure even including word of mouth.
The item that sets off copyright from all other forms of intellectual property is the concept that only the particular expression is protected and not the underlying idea. Also, keeping in mind that fictional based copyrights receive the highest legal protection and that fact-based copyright receive the lowest legal protection. Liability for copyright infringement under statutory damages, wherein actual damages need not be proven, can be quite high up to $100,000.00 per infringement if intentional copying is shown in addition to possible criminal liability.
First, know if the work is copyright protected or if the copyright is expired. This can be done by looking for a copyright notice, or having a search of the records at the Copyright Office. However, this is not conclusive as unpublished works before 1978 did not have to be registered for protection, or the work may be part of a compilation i.e. an article in a magazine, and not registered individually. The exception to searching is when a completely independent creation is made.
In copyright infringement the two major terms are “access” and “substantial similarity” for proving infringement. Access shows that the infringer had the capability to copy the protected work and substantial similarity goes to the extent of copying that was done to rise to the level of infringement. Access is usually not much of an issue as when a protected work is published, it is deemed available to the public. Substantial similarity is just about always the major issue, and varies with the type of work, with a lower level of similarity required for fictional works, and a high level of similarity required for factual works. Another factor is the amount of copying in relation to the entire protected work plus the extent of publication, i.e. one copy or thousands of copies.
Other issues to consider are that copyrights in multiple countries may be in the public domain in some countries and not others, i.e. unexpired. Also a derivative work such as a movie from a book, the derivative work may have an expired copyright, whereas the underlying work may have an unexpired copyright.
A common defense to copyright infringement is what is termed “fair use” which is use for criticism, comment, news reporting, teaching, scholarship or research. Fair use has a higher applicability to non-commercial uses than to commercial uses and also higher applicability when the use is changed from what the work was originally used for.
If the use of the work is unchanged in the infringement, then it is presumed that infringing use is having a direct effect on the original works market. Thus, if the fair use does not affect the market for the original work, results in a stronger case for this exception to copyright infringement. The safest route is to always seek permission and not to absolutely count on the fair use exception to save you from copyright infringement. See “Permission” under “Copyright” for more information.
Getting copyright permission can be difficult even in terms of just logistics; however, the Copyright Clearance Center has blanket licenses for photocopying, and can be a more convenient way to obtain multiple permissions.
If you are anything other than an individual i.e. a company, or a having a commissioned work, always ensure that an agreement exists to ascertain ownership of the intellectual creations.
Patents are especially risky, as an independent creation while protecting against infringement in copyright, does not protect against infringement in patent. Thus, you could completely create a new product on your own and still have patent infringement risk. When a new product is created, at the very least you should have a patent prior art search completed to understand the potential infringement risk of any current unexpired patents and also allow you to possibly design around a potentially troublesome patent that is unexpired. There is still risk in not finding all of the prior art in that all pending applications are held in confidence, either until they issue or are published at 18 months after filing, and that a patent could soon issue that you may be infringing upon.
To effectively design around an existing unexpired patent, the existing patent’s file history will have to be reviewed to understand the degree of amendments that were done to obtain patentability, and therefore the degree of claim interpretation and latitude that the court will give, see “Infringement” under “Patents” for more information. Factors to consider when designing around unexpired patents are:
- Can technology be used that exists outside of the claims given that particular patents file history.
- Can technology be used that is already in the prior art.
- Can the invention be accomplished with fewer parts or elements that what the patent claims.
- Is it possible to obtain a patent for the design around invention itself, as this can provide evidence of a substantial change in relation to the prior art, by the design around invention rising to the level of being patentable over the prior art.
- Using technology that is in the patent but not claimed, however, be careful in that if continuations are filed based upon the issued patent the disclosed but unclaimed information could be later claimed in the continuation.
Items 2 and 3 above are the most certain ways to design around an existing patent, also paying attention to what it takes to design around an exiting patent can help thwart the claim that you acted willfully in your infringement thus reducing your damages liability.
A trade secret can be virtually anything that is kept secret and has value; trade secrets require reasonable efforts by the company to keep the information secret. Independent creation is always a defense to trade secret misappropriation; also reverse engineering can be legally done to a product only protected by trade secret. Misappropriation occurs when the information is obtained without the express or implied consent of the owner of the trade secret or obtained through improper means. Improper means include theft, bribery, misrepresentation, breach or the inducement of a breach of a duty to maintain secrecy or forms of espionage, electronic theft, or even just the mental retention and use of the trade secret information.
Confidentiality agreements should always be used and respected. See the “Articles” button going to “Trade Secrets” for more information.
Third parties who submit ideas to companies and individuals should be approached with caution, as the third party could later claim misappropriation even if you independently created a similar idea by inferring that you had access to the third parties idea. Many companies have a policy of returning all unsolicited ideas unopened immediately to the sender and ensure that the individuals who create ideas in their own company do not even have access to the unopened idea submitted. A naked idea that is submitted without any known intellectual property protection can run the risk of being worthless by already being in the public domain, or possibly be infringing on an existing intellectual property right, the issue is that you do not know the pedigree so to speak of the unsolicited idea and run the risk of being charged with contributory infringement.
This does not mean that all unsolicited ideas should be out of hand rejected, only that a degree of caution should be exercised, by using an idea submittal agreement that protects you with the third party and completely documenting all activities related to transactions with the third party.
Avoiding Misappropriation of Others Ideas
Always have employee confidentiality agreements that cover prior confidentiality agreements that the employee may have from past employment, and to specify what inventions the employee is coming into your company with, to eliminate confusion as to who owns what rights to what invention.
Also look to where your information comes from in your inventive activities, especially items not in publications, or created by independent research, or by obtaining information from legally acquired products, anything else should give rise to understanding that another’s intellectual property rights may have been infringed upon.
Right of Publicity
Be cautious when using famous individuals their likenesses, famous names, etc. in any advertising and promotion activities, even if that person is in a copyrighted work that you do have permission for, the famous person has a separate right in protecting their identity for commercial purposes.
All of intellectual property has anti trust risk in that technology is very mobile, and through mergers, acquisitions, various license agreements, etc. can create monopolies that violate anti trust laws. What is known as vertical licensing, i.e. manufacturer, distributor, to retailer has less anti trust risk, whereas horizontal licensing, i.e. competitors licensing to each other carries higher antitrust risk. See the “Articles” button going to “Anti Trust” for more detail as related to intellectual property.
MultimediaAlways remember that the rights obtained for one aspect to a work for instance do not always translate to rights to use the same work in another media. For example, a copyright permission to use a book does not necessarily translate to a right to use the same book in an Internet online context. Or alternatively, when contracts are drawn for say copyright permissions, specify all the multi media that would be covered by the permission.