A Basic Guide to Understanding IP.

Intellectual Property101

Ashley K. LongAttorneyCarney Badley Spellmanlong@carneylaw.com206-607-4194

Todays Presentation Covers 3 Main PointsUNDERSTANDING WHAT intellectual property ENTAILSMANAGING YOUR IPPROTECTING YOUR IP

UNDERSTAND YOUR IPPATENTSTRADEMARKSCOPYRIGHTS

Intellectual Property can seem like a nebulousterm. Here are the three types of IP:

Patent: An invention.

Trademark: Something that identifies YOU as the source of a good/service.

Copyright: Original works of authorship fixed in any tangible medium.

PATENTNot every invention is patentable. Here are the requirements for patentability in the U.S.Be of Patentable Subject MatterProcess an act, or a series of acts or steps.Machine a concrete thing, consisting of parts, or of certain devices and combination of devices. Manufacture an article produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery.Composition of matter all compositions of two or more substances and all composite articles.Be Novel Not already invented or disclosed by someone else.Be Non-obviousThe invention being claimed cant be the next obvious step in the original inventions evolution.Be UsefulDoes the invention provide some identifiable benefit?

PATENTWhat is not patentable?Abstract ideas, the laws of nature, and mere suggestions or ideas CANNOT be patented.

TRADEMARKSA source identifier for a particular good or service.

A trademark can be thought of with a simple formula:Identifier + Goods or Services = Provider.

TRADEMARKSWhats the identifier really mean?The identifier is typically what we think a trademark is the mark itself. It can be.A word or wordsImageSoundSmellProduct PackagingProduct ConfigurationColorEtc.?

TRADEMARKSAn identifier isnt really a trademark until its associated with some kind of good or service. This association allows consumers to identify the source of the goods or services.Examples.The word Kindle + e-reader = Amazon. The cherry red lacquer finish + shoes = Louboutin.The "G-E-C" musical sequence + television = NBC

The Roar

JUST DO IT.

COPYRIGHTOriginal works of authorship fixed in any tangible medium.

Literary works (including software)Musical worksDramatic worksPantomimes and choreographic worksPictorial, graphic, and sculptural worksMovies and other audiovisual worksSound recordingsArchitectural works

COPYRIGHTWhat types of things CANNOT be copyrighted?Unrecorded/Unwritten WorksImprovisational speechesChoreography that hasnt been notatedTitles/Ingredients/SlogansCommon Geometric DesignsIdeasWorks That Are Common PropertyCalendarsWeight charts

COPYRIGHTWhat about something Ive created based on another persons work?Is your work a derivative work or an original work which contains some portion of someone elses copyrighted materials?If the former, then only the copyright owner can grant permission for you to use their work in your own (e.g. turning a novel into a screenplay).If the latter, then youre protected under the fair use doctrine and can possibly copyright the work yourself.SUBJECTIVE!

Practical Examples of Commercial IPIP Term:Commercial Context:Patent

Trademark

CopyrightA unique algorithm you invented for your app.

The name of your app.

The source code for your app.

MANAGING YOUR IPManaging your IP assets is a MUST for every business. Registration versus Ownership

REGISTRATIONPATENTProvisionalUtilityDesignTRADEMARKMarkPackagingConfigurationCOPYRIGHTRegistrations are categorized by type.

Registration can confer MANY important benefits!!! But remember, its up to you to enforce your IP rights.

For example, trademark registration

First to Use and First to FileWhat are your rights at home and abroad?State/Federal/InternationalState Registrations: Only provide registration on a per state basis. May not be used in many enforcement situations.Federal Registrations: Available to brand owners with multi-state use of their marks.Intl Registrations: Most jurisdictions require registration to enforce your mark.

WHY SHOULD I REGISTER?Presumption of Validity.Exclusivity.Ease of Online Enforcement.Customs Registration.Injunctive relief at courts.Better damages awards in litigation.

PROTECTING YOUR IPConsiderations vary from one type of IP to another.Enforcement is vital to the protection of your IP portfolio.Patent Licensing and litigation.Trademark Registered marks vs common law rights.Copyright Injunctions and enforcement.US rights vs International Rights.How do your rights differ from jurisdiction to jurisdiction?

IP OWNERSHIPDo you own your IP?Does the IP created by your business belong to you?EmployeesIndependent ContractorsTrade SecretsCreation is only the first step! Maintaining ownership requires proper management of your assets.

Your Business and Your IPEmployee and Independent Contractor Agreements.Do you have IP provisions in place? Default ownership of IP differs between employees and contractors!Third Party Agreements.Are your distributors, publishers, or other third parties following your branding guidelines?Fan Use.Consider how to treat fan sites. Are these a PR possibility or an enforcement issue?

THE ENDFor more info, please contact Ashley Long at long@carneylaw.com or at 206-607-4194.