Davis To Co-Chair Cyberspace Law Committee’s Legislative Subcommittee

Mon, 17 Oct 2011 22:59:00 GMT

Steve Davis was recently appointed to serve as Co-Chair, along with Los Angeles attorney Mark Sonnenklar, of the Legislative Subcommittee of the California State Bar Business Law Section’s Cyberspace Committee.

The Cyberspace Committee is a standing committee of the Business Law Section of the California State Bar. The Committee focuses on the law relating to the Internet and cyberspace and related technologies. Its primary tasks are to monitor legislation and judicial opinions relating to cyberspace, keep Business Law Section members abreast of developments in the area, and to host educational programs relating to cyberspace.

The Legislative subcommittee focuses in particular on federal and state legislation relating to cyberspace. One of its priorities in the upcoming year is to improve communication with legislators and their staff about cyberspace-related bills.

Along with his appointment to the Subcommittee, Steve also was appointed Co-Vice Chair of the Cyberspace Committee as a whole.

Leonard to Speak on IP Issues in Political Campaigns

Mon, 29 Aug 2011 17:01:00 GMT

Mark Leonard will co-chair a panel on intellectual property law issues in political advertising at the California Political Attorneys Association’s ("CPAA") annual retreat in Monterey, CA on September 10, 2011. Mark will provide an overview of common trademark, internet and social media issues that arise in political campaigns and address strategies on how campaigns can avoid IP infringement and privacy law violations. Intellectual property law issues are arising more frequently with each election cycle and Mark has advised numerous campaign organizations, officeholders, interest groups and political parties on a variety of intellectual property and defamation law issues.

The CPAA is a nonpartisan California nonprofit corporation that provides a forum for the exchange of information between and among the members of the Association regarding political law and takes and presents positions on proposed legislation, regulations, and policy matters before appropriate state and federal agencies.

Leonard to Present Trademark Law For Artists

Mon, 01 Aug 2011 18:12:00 GMT

Mark Leonard will offer his annual California Lawyers for the Arts sponsored presentation “Trademark Law For Artists” on August 4, 2011 at 6:30 at the The Center for Contemporary Art, 1519 19th Street, Sacramento, CA 95811. Mark will provide an overview of trademarks, including how to search for potentially conflicting trademarks, registering and maintaining trademarks, using other’s trademarks in artistic works and more. For information on how to register for this event please visit California Lawyers for the Arts’ website.

California Lawyers for the Arts is a non-profit service organization that provides a variety of services for artists, assisting them with referrals to attorneys, managing a variety of dispute resolution services, sponsoring educational programs and presentations, issuing publications, and acting as a resource for information for artists of all disciplines and art organizations.

Davis To Give Copyright Presentation To Artists

Wed, 20 Jul 2011 17:52:00 GMT

Steve will present an overview on copyright law for artists tonight, July 20, 2011, at 6:30 p.m. at the Barton Gallery, 1723 I Street, Sacramento, California.

The presentation will cover a broad range of topics on copyright law: what copyright law covers, how long copyright lasts, how to register a copyright, who owns the copyright, and how you can tell if one piece of art infringes the copyright in another. His talk will emphasize the doctrine of "fair use" in incorporating preexisting works of art into new art, with specific examples and illustrations.

The presentation is part of a regular series of workshops sponsored by California Lawyers for the Arts, an organization that serves as an informational resource for artists and also provides mediation and arbitration services. The cost of the program for CLA members is $10 and for the general public is $20.

Leonard Named 2011 Super Lawyers Rising Star

Wed, 20 Jul 2011 16:26:00 GMT

For the third consecutive year, Mark Leonard has been selected by Northern California Super Lawyers Magazine as a Rising Star in the area of intellectual property litigation. Super Lawyers Rising Stars recognize the top up-and-coming attorneys in the state who are 40 years old or younger, or who have been practicing for 10 years or less.

The Importance of Trademark Searching

Mon, 27 Jun 2011 21:06:00 GMT

One of the most common mistakes a business makes regarding its intellectual property is failing to conduct a comprehensive trademark search before opening its doors or offering new products or services. That mistake can be costly if the mark chosen by the business is similar to one that is already being used by a related business, potentially resulting in significant rebranding and litigation expenses.

The failure to conduct a trademark search is such a common mistake likely because there are a number of myths that cause businesses to believe a search is unnecessary. For business names, a very prevalent myth is that there is no need to search if the Secretary of State’s office approves the name of a corporation or limited liability company. The Secretary of State’s name approval process uses criteria different from trademark law and only checks against corporate and limited liability names registered with the state. It does not does not consider federally registered marks, partnerships, sole proprietorships, business entities in other states, or even state trademark registrations. Accordingly, trademark conflicts can arise between businesses in the same state that have both had their names approved by the Secretary of State.

A second myth is that it is sufficient if no identical matches are found after searching a mark on the Internet or United States Patent and Trademark Office (“USPTO”) records. Trademarks need not be identical for a conflict to arise, phonetic similarity or similar meanings are sufficient. These searches are also incomplete because trademark rights are acquired through use not registration and many businesses do not advertise on the Internet. Thus, these searches may miss potential conflicts.

Even established businesses should conduct searches for any trademarks they use that have not been registered with the USPTO. As we discussed in a prior post, federal trademark registrations confer a nationwide right of use and conflicts with unregistered marks may arise many years after they began to be used. Both established and new businesses should consult with an experienced trademark attorney to determine an appropriate search strategy and to properly understand the search results.

The need to conduct trademark searches are only one of many intellectual property issues that businesses face. For other common issues, please review our intellectual property checklist.

Social Media Privacy Bill Defeated By California Legislature

Tue, 21 Jun 2011 21:15:00 GMT

The efforts of the California legislature to regulate privacy in social media received a setback on June 2, 2011 when the California State Senate for the second time refused passage of a Senate Bill that would require social media networks to adopt default settings restricting the display of their users’ personally identifiable information.

The bill, S.B. 242, known as the “Social Networking Privacy Act,” was introduced by Senator Ellen Corbett earlier this year. The bill required social media networks to adopt default settings prohibiting the display of “personal identifying information”, such as address, telephone number, driver’s license, social security number, credit card numbers, and other information. It also required the networks to advise users of their ability to change the settings for display of personal information in “plain language.” Finally, it required networks to remove personal identifying information “in a timely manner” upon request.

Supporters of the bill argued it was necessary because studies show many social media users are unaware of how much private information they make unavailable on social media sites. Opponents, on the other hand, argued there was an insufficient demonstration of a need for the new law, that it would result in less privacy, and that it unconstitutionally infringed the free speech rights of social media users.

Ultimately, the bill fell two votes short of a majority in the State Senate. Online privacy remains an issue of interest to the state legislature, however, and other bills remain pending.

Davis To Speak To Folsom Artists On Copyright And Fair Use

Wed, 13 Apr 2011 23:14:00 GMT

Steve will deliver a presentation on “Copyright Infringement and Fair Use in the Visual Arts” to the Folsom Arts Association at its monthly meeting on April 28 at 6 p.m. at The Gallery at 48 Natomas Street.

Steve’s presentation will focus on the following topics:

How to prove a claim of infringement of a work of visual art. In this part we’ll go over the law and the elements of an infringement claim.
How to prove a work is similar to another. The emphasis of this part will be what it means for one work to be similar to another, and how one proves that one work is substantially similar to another.
Guidelines for the defense of fair use. Not all use of a copyrighted work is infringement. In this part of the presentation we’ll discuss what the elements of a fair use defense are and, more importantly, draw upon real world examples to provide meaningful guidance to working artists.

The Folsom Arts Association is dedicating to cultivating and supporting art appreciation in the Folsom area. For more information, please see its website here.

Businesses May Face New Data Security Breach Notice Requirements

Wed, 02 Feb 2011 18:56:00 GMT

Businesses that conduct e-commerce should pay close attention to a new bill recently introduced in the California State Senate. State Senator Joseph Simitian is taking another crack at heightened data security breach notice requirements with his recent introduction of Senate Bill 24, a duplicate of last session's Senate Bill 1166, which was in turn nearly identical to 2009's Senate Bill 20.

The purpose of this legislation is to strengthen requirements of notices of database security breaches. The first such legislation was enacted in 2002, requiring any person or entity that maintained a data system to send notice of a breach of the system to any California resident whose data was taken by another without authorization. Cal. Civil Code § 1798.82.

As more consumer information is placed online, unauthorized attempts to access such information are increasing as well. According to the Privacy Rights Clearinghouse, since 2005 there have been over 500 million breaches of sensitive consumer information such as medical records, social security numbers, and credit cards. <http://www.privacyrights.org/500-million-records-breached>

Senator Simitian's most recent effort is an attempt to standardize what the notice must say. Senate Bill 24 requires the security breach notice to include, among other things, a general description of the type of information breached, a general description of the breach, and toll-free telephone numbers of major credit reporting agencies if the breach exposed a bank account or credit card number, social security number, driver’s license, or California identification card number.

If the breach involves more than 500 California residents, it also requires the person or entity or agency to provide notice to the attorney general.

Both Senate Bill 20 and Senate Bill 1166 were supported by many consumer protection groups but opposed by some companies and industry associations that argued the additional notification requirements were unnecessary and unhelpful to consumers. Both bills were passed by the legislature, but vetoed by Governor Schwarzenegger.

With a new Democratic governor having taken office, it appears likely this time around that the bill will be signed into law, adding to the notice requirements companies and individuals will face after breaches of their data systems. You can monitor SB 24’s progress on the Official California Legislative Information website.

Maintaining A Federal Trademark Registration

Fri, 24 Dec 2010 18:32:00 GMT

In previous blog entries we’ve written about the importance of choosing and registering a trademark wisely. Equally important – but often neglected – is maintaining a trademark registration once it has been obtained.

A federal trademark registration is a valuable asset, but it may be inadvertently lost when it is time to renew the registration. A registration must be renewed between the 5^th and 6^th year after registration. For example, a registration that issued on December 1, 2005 may first be renewed on December 1, 2010, and it must be renewed by December 1, 2011.

A second renewal is due between the 9^th and 10^th year after registration and every 10 years thereafter. Some registration owners mistakenly believe that the United States Patent and Trademark Office (“USPTO”) will send a notice when it is time to renew a registration. In fact, the USPTO does not send such notices, nor does it inform the owner when a registration has been cancelled for failure to renew.

To help prevent an inadvertent cancellation, registration owners should ensure that they calendar each renewal date. One advantage of using an experienced trademark attorney to obtain a registration is that such attorneys maintain dedicated trademark calendaring systems and will remind registration owners about their renewals well in advance of the renewal deadlines. For registration owners who have obtained their own registrations it is also a good practice to retain a trademark attorney to track renewal deadlines.

By heeding the proper deadlines and taking care of the registration renewal requirements in a timely manner, trademark owners can preserve the valuable assets they have in their federal trademark registrations.

Key Issues in Contracts Between Artists and Dealers

Wed, 20 Oct 2010 22:49:00 GMT

In Tuesday’s blog entry we provided an overview of artist-dealer contracts. Today we focus on some of the key issues that the parties should heed in entering artist-dealer contracts.

Scope of Agency. What is the scope of the dealer's duties as a consignee of the artwork? For example, is it an exclusive arrangement, or will the artist have the right to work with other dealers? If it is an exclusive arrangement, is it exclusive in just one city or region, or for the entire country, or even the entire world? Both parties should consider the description of the scope of the dealer's duties very carefully to make sure the contract meets their respective needs.

Duration. How long is the dealer's consignment going to last? Both sides may have an interest in limiting the length of their obligations to each other. The artist may want the right to cut off the dealer's rights in the artwork in the event the dealer is unsuccessful in selling the art. One way of doing that is providing that the artist may terminate the relationship if the dealer does not meet a certain sales quota. The dealer, similarly, may want to limit the duration of the consignment if the artwork doesn't sell. The length, or term, of the relationship should be stated clearly in the contract.

Sales Price. The artist and dealer often both have a say in the price at which the art sells. The contract should state in some way the price for the artwork or the manner in which the price can be established. The dealer may want the right to adjust pricing for different circumstances or for different customers. The dealer also may want the right to purchase the work outright from the artist at a favorable price.

Commission. One of the most important provisions of the artist-dealer contract is the commission -- the amount to be paid to the artist upon sale of the art work by the dealer. The commission usually is a percentage of the dealer's sales price. Depending upon the reputation of the artist or of the dealer, the commission may vary greatly. Another way of calculating a commission is to set a price that the artist receives, and to allow the dealer to keep any amount in excess of that.

Accounting. The contract should describe clearly when the artist is to receive commissions. Contracts often provide that artists will be paid commissions on sales that occur on some periodic basis, such as quarterly or monthly. Almost as important is the dealer's obligation to provide information and documentation from which commissions are calculated. The artist should have the right, for example, to get a summary of works sold, sale dates, and sales prices.

Promotional Duties and Exhibitions. A potential area of conflict is how much the dealer is supposed to do to promote the artist's works. If the artist wants the dealer to promote the artist's works in specific ways, the contract should say what they are. Promotional activities can include things like exhibiting at a gallery, catalogs and other advertising materials, and website promotion, among other things.

Damage and Insurance. As the artist's fiduciary, the dealer is obligated to take reasonable care of the artwork. But each party's interpretation of what is reasonable is likely to differ from the other party's. To avoid disputes the artist may want the dealer to undertake specific steps to care for the art works and keep them from harm. Or the artist may ask the dealer to warrant that the dealer will carry sufficient insurance to insure the artist against the risk of injury to the art work. It is not unreasonable for the artist to ask the dealer whether the dealer carries insurance against the risk of damage to art work.

Identify of Purchaser. It may be useful to the artist to know who is purchasing the artist's work -- for marketing purposes, for example. Artists should consider whether to require the dealers to disclose the identities and contact information of purchasers of their art work to them.

Disputes. Sometimes disputes can arise despite the best efforts of the parties to avoid them. The parties should consider including a clause in the contract that provides for a dispute resolution procedure. For example, the parties may choose to mediate or arbitrate their dispute rather than to court by inserting an appropriate clause in their contract.

California Lawyers for the Arts maintains an arbitration and mediation service for this very purpose: providing for out-of-court resolution of conflicts between or involving artists. Artists and dealers can take advantage of this service by including a clause in their contract that mandates that disputes arising out of their contractual relationship must be resolved by mediation or arbitration under this service. For more information go to the California Lawyers for the Arts website.

An Overview of Contracts Between Artists and Dealers

Tue, 19 Oct 2010 21:02:00 GMT

An Overview of Artist-Dealer Contracts

An art dealer is anyone who buys, sells, or trades in works of art. Artists who commercially sell their art typically do so by entering contracts with dealers. But many artists, and even some dealers, often pay little attention to the contracts they sign. That’s a mistake for both parties. Understanding what sort of contracts they sign benefits both artists and dealers and assists both sides in knowing their rights and avoiding disputes.

Today’s blog entry provides a short overview of the two different kinds of artist-dealer contracts: sale contracts and consignment contracts. The next blog entry will highlight some of most important issues that arise in artist-dealer consignment contracts.

Is it a sale or a consignment?

Artist-dealer contracts, generally speaking, fall into two categories: sale contracts and consignment contracts. A sale contract is one in which the dealer buys the work of art outright. Once the dealer buys the artwork, the relationship between artist and dealer ends.

In a consignment contract, on the other hand, the dealer (the "consignee") accepts the artwork from the artist (the "consignor") for the purpose of exhibiting or selling it for the benefit of both the artist and the dealer. The artist remains the owner of the artwork. The dealer becomes the artist’s agent, and as an agent the dealer has a number of duties to the artist.

Most contracts between artists and dealers are consignment, not sale, contracts. The advantage of a consignment is that the dealer does not accept as great a risk by having to pay the full purchase price. Under California law, a contract between an artist and a dealer is considered a consignment contract unless the dealer pays the artist the full purchase price for the artwork.

A dealer/consignee has fiduciary duties to the artist.

Once a dealer accepts an artwork under a consignment contract with an artist, the dealer has a fiduciary duty to the artist, which imposes a variety of specific duties on the dealer. These duties include the following:

The dealer has the duty to care for the artist's artwork.
The dealer has the duty to deal with the artist fairly and honestly.
The dealer has the duty to provide an accounting to the artist of any money received by the dealer for the purchase of the artist's artwork.

A dealer/consignee cannot waive its duties under California law.

In contract negotiations, parties sometimes try to change or even waive the duties they otherwise would have under law. But under California law, a dealer cannot waive the dealer's duties. Any attempt by the dealer to waive such duties is void -- meaning of no effect -- as a matter of law. That means a dealer cannot avoid its fiduciary duties to the artist, even if the dealer wants to, and even if the dealer convinces the artist to sign a contract that appears to waive the artist's rights.

In the next blog entry, we'll deal with some of the specific key issues that arise in artist-dealer consignment contracts.

Crocker Museum Reopening A Boon For Sacramento Arts

Mon, 11 Oct 2010 18:46:00 GMT

The newly expanded Crocker Art Museum officially reopened yesterday, October 10, 2010, marking one of the biggest events in the Sacramento art scene in years. The addition of the new space more than triples the museum’s exhibition space, and it particularly increases the museum’s temporary exhibition space. It will provide considerably more space to display the works of California artists.

From what I’ve read and seen from pictures, the new space also looks good and is visitor-friendly. I’m looking forward to going as soon as possible.

For more information, go to the Museum’s website at www.crockerartmuseum.org.

Leonard to Speak at Trademark Law For Artists Event September 15, 2010

Sat, 28 Aug 2010 22:52:00 GMT

Mark Leonard will offer his annual California Lawyers for the Arts sponsored presentation “Trademark Law For Artists” on September 15, 2010 at 6:30 at the Elliott Fouts Gallery, 4749 J St. Sacramento, California 95819. Mark will provide an overview of trademarks, including how to search for potentially conflicting trademarks, registering and maintaining trademarks, using other’s trademarks in artistic works and more. For information on how to register for this event please visit California Lawyers for the Arts’ website.

Common Intellectual Property Issues With Business Logos

Sat, 21 Aug 2010 17:43:00 GMT

A distinctive logo can be a very effective marketing tool to help businesses stand out from their competitors. Businesses should consider a number of issues, however, before adopting a new logo.
One of the most common mistakes businesses make when choosing a new logo is failing to conduct a trademark search to determine if another related business has already adopted a similar logo. If another business has obtained a federal trademark registration for its logo in connection with related products or services prior to another business adopting a similar logo, the latter business will likely have to stop using its logo. Removing a logo after it is already being used can be very disruptive and expensive.

If a business is not creating the artwork that will be used in its logo from scratch, it should also be cautious about where it obtains the artwork. Free or low cost “clip art” images are available from many websites and software packages. However, these images are often provided subject to a license which may restrict use of the images to “personal” and/or “non-commercial” uses. Use of images subject to such a license in a business logo may violate those restrictions.

Other issues arise when working with an outside vendor such as a graphic designer to create a new logo. Many businesses assume that if they pay a designer to create a logo the business owns all the rights in the logo. That is often not the case. Graphic designers generally retain the copyrights in the materials they create and only give permission, or a license, to their clients to use the materials. Businesses should insist on written agreements with their graphic designer and ensure that agreement clearly spells out who owns what rights in the material being created. Businesses should also seek indemnification language in such agreements to provide that the designer will be financially responsible for any claims that the artwork created by the designer infringes a third party’s intellectual property rights.

The above issues are only some of many intellectual property issues that businesses often face. For other common issues, please review our intellectual property checklist.

Advantages of Federal Trademark Registration

Fri, 30 Jul 2010 17:41:00 GMT

Nearly all businesses have trademarks, even if they have never tried to register them. Merely doing business under a name, or selling a product through the use of a name or logo, may give a business owner “common law rights” in the name or logo. These rights may entitle the business owner to remedies under the law against infringement, even if the business owner takes no steps to register its marks.

While a federal trademark registration does not create rights in a mark, it can help to secure those rights and provide additional benefits to the trademark owner. Smart business owners should consider carefully what their marks are and whether it makes sense to attempt to register them.

Whether a mark can be registered with the U.S. Patent and Trademark Office depends on three main factors. First, the mark must be used in interstate commerce. The interstate commerce requirement is most easily satisfied when a business sells a product or provides a service to a customer in a different state from where the business is located. The requirement is also satisfied by sales to customers in the same state if the business uses interstate commerce in the course of making the sale, such as if customers use the business’s website to place an order.

Second, the mark must be sufficiently distinctive or strong to be federally registered. Generic marks cannot be registered at all and descriptive marks can only be registered under certain circumstances. We discussed the strength of marks in a previous blog post, here.

The third main factor is whether an application or a registration for a confusingly similar mark already exists. Although the first to actually use a mark has priority over later users of a similar mark, the first to file an application to register a trademark has priority in the registration process. This means that even if a company has priority in its use of a mark, called a “senior user”, if a later user of a confusingly similar mark, a “junior user”, is the first to file a trademark application, and the first company seeks to register its mark the junior user’s application will be given priority and will likely prevent the senior user from obtaining a registration. The senior user will not be prevented from continuing to use its mark, but, if it may be limited to using that mark only in the market it had established at the time the junior user’s registration issued.

This situation illustrates one of the primary benefits of a federal trademark registration – it gives a business peace of mind that it will be able to continue to its mark without interference from later junior users. In fact, the registration gives the business a potential nationwide right to use its mark in areas where it is not currently doing business. For example, if a business in California obtains a federal trademark registration for its mark and a business in Arizona begins using a confusingly similar mark after the registration issues, if the California business expands into Arizona, it can require the Arizona business to stop using its mark.

A federal registration also allows a business to use the registration symbol, ®, in connection with its mark. Use of the symbol can have marketing advantages, as consumers may see a registered mark as an indication of quality. If it is ever necessary for a business to enforce or defend its trademark rights in court, a federal registration gives the business a number of advantages. First, the registration creates a presumption that the mark is valid, that the registration owner is the true owner of the mark, and that the owner has the exclusive right to use the mark. Second, the registration allows the owner to file a suit in federal court. It is often preferable to bring an action in federal rather than state court. Additionally, the owner of a registered mark can seek damages for trademark infringement beyond what can be obtained with only common law rights in a mark.

A federal trademark registration also can help to prevent foreign infringers from importing their products into the United States. A business can notify the U.S. Customs and Border Protection agency (“CBP”) of its registered mark, and if products are imported into the United States that infringe the registered mark, CBP can seize those products.

Given the above advantages, businesses should seriously consider seeking a federal registration for their marks. However, the registration process can be complex and businesses should consult with an experienced trademark attorney to determine if their trademark qualifies for federal registration and to guide them through the registration process.

Leonard Named 2010 Super Lawyers Rising Star

Tue, 27 Jul 2010 22:26:00 GMT

For the second consecutive year, Mark Leonard has been selected by Northern California Super Lawyers Magazine as a Rising Star in the area of intellectual property litigation. Super Lawyers Rising Stars recognize the top up-and-coming attorneys in the state who are 40 years old or younger, or who have been practicing for 10 years or less.

Mon, 19 Jul 2010 20:17:00 GMT

Stephen Davis will offer an overview of Copyright Law at a presentation sponsored by California Lawyers for the Arts on July 22, 2010 at 6:30 at the Barton Gallery, 1723 I Street, Sacramento, California 95814. Topics will include the subject matter of copyright, registration procedures, the scope of copyright protection, infringement, fair use, and other issues, with a focus on issues of importance to artists of all kinds. To register for the presentation, click here.

Stephen Davis has been involved in California Lawyers for the Arts for over ten years, and has been actively involved in dispute resolution, client referrals, pro bono representations and consultations. He has appeared on the Hannity & Colmes television program defending the right of California Lawyers for the Arts to sponsor a controversial art show in the California Attorney General building in Sacramento. In 2009 he received the Artistic License Award for his contributions to CLA.

Intellectual Property Checklist: 9 Steps to Protect Your Business

Fri, 16 Jul 2010 01:05:00 GMT

Almost all businesses have some sort of intellectual property – legal rights in ideas, writings, trademarks, slogans, graphic works, creative works, and other “intangible” things of value. A smart business takes steps to protect its intellectual property and to profit from it.

9 Step Intellectual Property Checklist

The following is a list of steps a business should take to protect its intellectual property and to maximize its value:

1. A business should determine what kind of intellectual property it has or is likely to have.

Both new businesses and existing businesses have names, trademarks, ideas, writings, creative works,confidential information or methods, and other intangible things that are valuable to the business. In fact, in the modern business world, intangible assets often are more valuable than tangible ones.

These intangible valuable assets are called intellectual property. The law recognizes a variety of kinds of intellectual property, and a business may have one or more of these different kinds. They are:

Patents. Patents are useful ideas and inventions that are protected for a limited term of years after being registered with the United States Patent & Trademark Office. A patent must be registered to be protected. The patent registration process can be fairly long and expensive. Only a licensed patent attorney can represent a business in the patent registration process. (Note: Davis & Leonard LLP are not licensed patent attorneys and do not handle the registration of patents. We do refer patent registration work to licensed patent attorneys that we know.)
Copyrights. A copyright is the exclusive right to copy, publish, display, or create “derivative works” from creative, expressive works, such as books, articles, stories, songs, sound recordings, paintings,sculptures, computer source code, paintings, photographs, and a number of other works. Anyone who creates such a work automatically owns the copyright in the work, but to enforce that right against an infringer one must register the copyright with the United States Copyright Office.
Trademarks. A trademark is a name, mark, or slogan used by a business that identifies the source or origin of products or services offered by the business. “Coca-Cola”, for example, is a world famous trademark that identifies a specific brand of cola in the mind of the consuming public. A business acquires rights in a trademark by using the mark in commerce in connection with a product or service. A trademark can be registered with the United States Patent & Trademark Office and/or with the applicable state government if certain registration requirements are met.
Trade Secrets. A trade secret is any valuable idea, method, or information that has value to the business by virtue of the fact that it is a secret, and is the subject of reasonable efforts by the business to maintain its secrecy. A confidential “in-house” manufacturing process can be a trade secret, as can a customer list. A trade secret, by its nature, cannot be registered with the government. Instead, its secrecy must be zealously protected by the business. Businesses can take a number of steps to protect their trade secrets.

2. At the outset of the formation of the business, the business should make sure it owns or has the legal right to use any intellectual property that is going to be part of the business.

New businesses often are created precisely to take advantage of a new idea, or a new piece of software, or a new business concept, or to market a new creative work, like a book. Sometimes, though, these ideas or works are created by third parties, and the right of the new business to use the intellectual property isn’t very clear. A smart business will take stock of all the intellectual property that is needed to get started and make sure that it has the right to use that intellectual property under the law or, if necessary, through properly prepared and signed contracts with those third parties.

3. A business should take steps to protect valuable, confidential ideas, methods, and information from disclosure to competitors and to the public.

The business world is fiercely competitive. Generally speaking, a business’s competitor’s are free to compete against it by adopting similar ideas, methods, and processes, and are free to compete for the same customers, vendors, and employees. Every business that has valuable, confidential information should take steps to protect it from disclosure to unwanted eyes, by doing things such as having employees sign nondisclosure agreements, keeping information in a secure place, and taking other similar steps.

4. A business should consult with a patent attorney about protecting useful inventions and business methods by registering them as patents.

Inventions and new, original ideas may be protected by a business, but only if they are registered with the United States Patent and Trademark Office. Patent registration entitles the patent owner to exclusive use of the patented invention. The patent process can be lengthy, complicated, and expensive, however, so consultation with a licensed patent attorney is a good idea.

5. A business should take steps to protect business names, trademarks, and slogans through trademark registration.

A business may acquire a legal right to the exclusive use of its names, marks, and slogans if it uses them in commerce to distinguish the source or origin of the business's products or services. Trademarks that are used in "interstate" commerce -- that is, commerce that crosses state borders -- can be registered with the United States Patent and Trademark Office. Trademarks that are used strictly within state borders can be registered with the appropriate state authority.

6. A business should protect valuable creative works, such as books, articles, songs, graphic works, computer software, videos, sculptures and similar works by copyright protection.

Patents protect useful ideas and inventions, but not purely creative works, like songs, books, etc. That's what copyrights are for. Unlike patents, copyrights are relatively easy to register with the Copyright Office. Copyright protection also lasts much longer than patent protection.

7. A business should make sure that employees and independent contractors sign contracts to make sure that ideas and works created for the business are owned by the business.

It is a common misconception that hiring someone to create a work for a business automatically gives the business ownership of the work. To make sure it owns the rights in all of the intellectual property in works it pays for, a business should enter "work made for hire" and assignment contracts that explicitly confer rights in the works to the business.

8. A business should not allow others to use its intellectual property except through properly prepared and executed license agreements.

The way to retain ownership of intellectual property while working with others to profit from the work is to license the rights in the work to another party. A license recognizes the licensor's ownership of the intellectual property, while granting to the licensee a valuable but limited right to do something with the work, for the benefit of both parties. For example, an inventor might license the right to another party to manufacture and sell goods that embody the invention. In return, the inventor might earn a royalty from the profits earned by the manufacturer from the sale of the goods.

9. A business should consider conducting a valuation of its intellectual property.

Businesses often know that they have intellectual property, but they have no idea what the intellectual property is worth. The business may be able to estimate the value of the intellectual property by projecting the profits it can expect to earn from the use of the intellectual property over the course of its expected life. If this is difficult, there are valuation experts that can assist with placing a value on the intellectual property. Valuation can also be useful to establish licensing terms and royalty rates.

Have questions?

Are you in need of protecting intellectual property? Contact Davis & Leonard LLP for more information on how your business can take the necessary steps to protect and profit from your intellectual property.

Choosing a Strong Trademark

Thu, 15 Jul 2010 19:31:00 GMT

Businesses of every size have trademarks and may have rights they aren’t aware of. The legal definition of a trademark (or “mark”) is a word, name, symbol or device used in connection with the sale of products or services. While some marks are very well known -- the Nike “swoosh” symbol and the phrase “Intel Inside” are good examples -- a mark does not have to be famous in order for its owner to acquire rights in that mark. Whether a word or name is protectable as a mark is determined by its strength.

The strongest marks are fanciful, such as made up words like “Xerox”, or arbitrary, English words that have nothing to do with the product or service they are used with, such as “Apple” for computers. The next category of strength below arbitrary or fanciful is suggestive. A suggestive mark suggests, but does not directly describe, the qualities associated with the word in connection with the product or service with which it is used. An example is “Apple-A-Day” used in connection with vitamins. “Apple-A-Day” is associated with being healthy which is a characteristic that comes to mind when thinking about vitamins.

The next type of marks is descriptive. Descriptive marks immediately convey a characteristic of a product or service, such as “5 Minute Workouts” as a mark for series of workout videos that can be completed in five minutes. Descriptive marks are very weak and may be difficult to register or enforce.

The weakest category is generic marks. A mark is "generic" if it is commonly used for the general name for a product rather than for identifying a particular source of a product. “Thermos”, “escalator”, and “aspirin” are examples of marks that have become generic because the public commonly thinks of and uses these terms to name the products themselves rather than to identify a specific source or origin for them.

Businesses should strive to choose arbitrary, fanciful, or suggestive marks. The distinction between suggestive and descriptive marks is very fact sensitive and may not be readily apparent. Businesses should consult with an experienced trademark attorney before adopting any new mark to ensure their mark is protectable.

Introducing the Davis & Leonard Blog

Wed, 07 Jul 2010 22:49:00 GMT

Welcome to the Davis & Leonard Blog. We look forward to using this blog to comment on new developments in the areas of law in which we practice, especially intellectual property law and cyberspace law. We will also note some changes we are making to our website, www.davisandleonard.com.

We are revamping our website over the summer, adding features that we hope will be useful and interesting. For instance, we're adding resources to the section on intellectual property. The first addition will be our new Intellectual Property Checklist for Businesses. The second will be a Legal Checklist for New Internet Businesses. We'll also be adding a short article on Recent Developments in Privacy Policy Law.

One of our goals, ultimately, is to make this website an information resource for anyone whose business involves electronic commerce or intellectual property, or anyone with an interest in these fields.