The Borrero Law Firm provides comprehensive counsel for intellectual property (IP) needs spanning copyright law, trademarks, and trade secrets (note: at this time we do not specifically cover patent). The IP field includes the following areas of concern:
- Copyright/trademark/trade secrets
- Filing of copyright/trademark registrations
- International copyright/trademark registration (advisory and filing)
- Use and business strategy vis-a-vis others’ IP rights/licenses (incl. software use strategy)
- Contracts to enforce your IP rights (NDAs, employment, contracting, servicing, etc.)
- Trademark/copyright infringement or trade secrets misappropriation (“theft”) litigation
- Special areas: interactions with media law, employment law and trade law; domain name disputes, niche areas of design protection; etc.
In the below guide, we elaborate on the main considerations of these areas, and note the role of our firm and legal advisors generally in assisting. (Click here or on the embedded links referencing our firm in the below to jump straight to getting in touch with us).
Basic Legal Background
For the reference of those getting acquainted with U.S. intellectual property law on their own, the main sources of that law are (note: you do not need to worry about this if you aren’t planning to deal with IP on your own, without the assistance of legal counsel):
- Copyright: Federal: The Copyright Acts (of 1790 through 1976) and many more recent acts updating them (see the Library of Congress for a list and details) – 17 U.S.C. chs. 1-8, 10-12; State laws (primarily covering unsanctioned recordings and unpublished works);
- Trademarks: Federal: The Lanham Act, and other acts – 15 U.S.C. ch. 22 ; state laws, common law/case law;
- Patent: Federal: The Patent Acts of 1790 and 1952; The Patent Reform Acts of 1005-2009, and others – 35 U.S.C. (entire title); State law
- Trade secrets: Federal: the Defending Trade Secrets Act (DTSA) – 18 U.S. Code §1838 (et seq.); State law (for intra-state use only; generally implementing the Uniform Trade Secrets Act, though with considerable variations), common law/case law
Federal copyright and patent law are explicitly enabled by the U.S. Constitution, Article 1, Section 8, Clause 8. Federal trademarks and trade secrets are pure creations of Congress, but founded upon the authority of the Commerce Clause of the U.S. Constitution (Article 1, Section 8, Clause 3).
As the above implies, there exist valid questions of which source (or sources) of intellectual property law apply in a particular situation, either mandatorily or electively–apart from any questions of which type of IP is at stake. This is an area (in addition to the many discussed below) where formal legal advisory is critical, both to clarify the situation and be able to proceed with an optimal strategy.
Preliminary Questions & Initial Advisory
Optimally, the IP owner’s legal advisory process should begin even before the moment of creation, i.e., when a creative endeavor is conceptualized or planned. That is of course not always feasible, especially in individual or small-scale creative scenarios where there is little (or no) capital up front. However, legal advice should be sought as early as possible, especially when significant money is or might be involved later (even on the part of others who might take interest in the work), when a work is or may become popular, or when the owner simply cares deeply about their work and how others might use it. The earlier, the more costs–and even heartache–can be avoided later.
One obvious reason to get IP legal counsel early on is to learn out about the registration process for the particular IP — copyright, trademark, or patent (registration does not apply for trade secrets), and get legal assistance in registering your IP. However, less considered is the question of whether exactly your creative work is even protectable under a legal regime for IP protection, which regime would apply (there is some overlap between them all), and whether registration is appropriate–or worth it–and when it makes sense to register. Many people do not realize that copyright and trademark registration are not required, and therefore, there is a great need for competent legal guidance in helping to inform trademark and copyright owners and creators when it makes sense for them specifically to undertake a registration.
Another key type of issue is how specifically to “implement” your work of intellectual property–including defining as well as protecting it. Of course, the overriding issue is which legal regime (or regimes) to use to protect your IP if more than one is applicable or possible. But the legal implementation question comes up even within a specific IP regime. For example, within copyright law, a work created by multiple contributors or participants may be a work of joint authorship, a work-for-hire, a single-author/owner work (with un-compensated contributors), or an amalgam of separate works (with little common or central legal substance). All of these are distinctly different treatments under copyright law and imply different contracts for the contributors, and there may be varying levels of latitude in “choosing” one or other other (depending on the situation). This choice may further involve significant business or public interest considerations, as well as legal risk, cost and strategy considerations.
There are numerous other business considerations in pursuing a particular form of IP protection or registration. For one, there are up-front costs involved, therefore there is a cost-benefit equation to any form of IP protection used in business. For example, if making money on a patent is a long-shot, perhaps spending $2000-3000 to file a patent for your invention is an uneconomical choice (then again, if you have the money and really would love to have a patent to your name, maybe it’s worth it to you). Similar considerations go into trademark or copyright registration (though the up-front costs are generally much lower). The importance to you of having more leverage in litigation later is another major factor that plays into whether and when registration should be done.
Timing with regards to business life cycle may make a great deal of difference; e.g., if a “brand identity” is likely to be a major commercial “sell” of your venture (especially with a business model significantly based upon licensing), then it is likely that you will get more of a benefit out of registering a trademark early. Conversely, if brand recognition is likely only to come much later, after your product or service matures in the marketplace, then you might not need to worry about trademark registration in the early stages of the business.
Long-run business strategy is also intertwined with IP questions in other ways. As mentioned, business strategy is intertwined with specific choice of IP legal implementation–e.g., in copyright, your business model may lend itself more to a work-for-hire rather than joint authorship in particular situation. More generally, aggressive pursuit of IP can put off potential customers, create ill will in the marketplace at large, or needlessly invite expensive litigation that is an excessive cost or distraction to your enterprise. On the other hand, not investing enough in IP protection can open one up to “theft” of various sorts, from rampant “piracy” cannibalizing your market, to making it too easy for larger competitors to trounce you.
Failure to plan for IP early can also lead to more litigation than if rights had been more clearly declared and delineated in advance (with not only registration, but also contracts and general communications). This is especially evident in the business-formation context, where multiple people are coming together in a commercial enterprise, some bringing various assets, some talents, and some bringing capital. When other aspects of business of the business are being built and business ownership rights and responsibilities are being defined, intellectual property should be considered as well. Namely, who owns what in terms of IP (including who is contributing IP in exchange for what ownership stake–surprisingly, an oft-entirely neglected question), the centrality of the IP and formal IP protections to the business model, and when various IP-related steps should be taken (registration, licensing, enforcing, etc.) given economic and strategic considerations.
IP legal counsel is commonly sought out at the moment the IP creator/owner decides to undertake an IP registration. In fact, one can attain copyright and trademark registrations onesself directly with the Library of Congress and US Patent and Trademark Office (USPTO), respectively, quite feasibly, if one is willing to “roll up one’s sleeves” in terms of following detailed instructions online and reading the basic legal guidelines. Of course, many people are understandably intimidated by the information and the registration process, don’t understand the legal guidelines or how they translate to their personal situation, don’t have the time themselves, or just want the “peace of mind” of having attorney guidance or full handling of a registration. In any of these cases, we (or other competent IP legal counsel) will be there for you. In most cases, it probably pays–in terms of saved time and/or averted costly legal problems later–to engage an attorney to advise on the IP registration process, even if you plan to be very “hands-on”.
Another reason it is a good idea to talk to an attorney about your prospective IP registration is, as mentioned earlier vis-a-vis pre-registration advisory, you might learn of good reason to reconsider or alter your registration plans. E.g., there might be little value in registering in your situation; it might be more economical to do later; the work may not actually qualify for trademark, copyright or patent legal protection, or it might be better protected under a different IP regime than you were initially planning (e.g., copyright instead of trademark; design or business method patent instead of copyright; trade secret instead of patent, etc.). It is difficult to get a bearing on these issues without the input of an experienced legal advisor.
Another area where legal counsel has a special ability to help is in providing guidance with respect to the ever-changing laws of IP. In the U.S., just in the last year (2016), the Defending Trade Secrets Act (DTSA) was passed, providing federal coverage for trade secrets for the first time; in 2011, the American Invents Act (AIA) was passed, radically changing the U.S. patent system; in 1998 we had the last major revision of U.S. copyright law with the Digital Millennium Copyrights Act (DMCA), which has brought follow-on case law development that is still playing out today; and trademark law was significantly revised in 1999 with the Anti-Cybersquatting Consumer Protection Act (ACPA), and the Federal Trademark Dilution Act (FTDA) was passed in 1995. Unfortunately, there is little public awareness and even less understanding of these laws–even the ones passed as early as the 1990’s–outside of the specialist IP legal community.
Then there is the issue of international registrations and other agreements effecting global IP rights. Intellectual property increasingly operates in a unified global “market”, especially since the advent of the internet and an ever-more-digitized economy. Accordingly, there are a myriad of international conventions and regimes that cover registrations of copyrights, trademarks, and patents worldwide, that are increasingly relevant to anyone with intellectual property. To briefly list just the major ones, there is the Madrid System for registration of trademarks (now part of WIPO); the Patent Cooperation Treaty for patents (also part of WIPO); the Trade-Related Aspects of Intellectual Property Rights Agreement (TRIPS) for copyright, trademark and other industrial design and trade rights (part of the WTO); the Patent Cooperation Treaty for patents (now partially-administered by WIPO) and its “companion,” the Paris Convention (also covering a variety of other industrial IP); and the Uniform Domain Name Resolution Policy, which deals with the nexus of trademarks and domain names (created by ICANN) (the Berne Convention for copyright is now largely subsumed by TRIPS). Which conventions are applicable, how to invoke them, and the unique costs and benefits involved, can be difficult to get a grasp on when “going it alone”.
Licensing & Use Strategy
Often central to “using” or profiting from IP is licensing it–that is, giving or receiving permission to/from others to use the IP, usually in the form of a contract (called a license). Almost any imaginable contract payment arrangement is possible, with the prevailing ones being royalties, up-front or milestone-based fixed payments, or some combination of the two. IP licenses can be negotiated on a one-off basis between the two parties (the licensee and licensor), be made available in standard form to the general public or different classes of it (i.e. commercial vs. noncommercial vs. educational/charity users), or be mandated in standard form by the law (such as copyright law’s compulsory licenses for written and recorded music; see 17 U.S.C. §§114(f), 115).
Licensing situations can range from so simple you can practically ignore that a license is involved, to extremely arcane and difficult to understand. Copyright law, particularly for music/performance art, is a particularly notorious example of this, as multiple, simultaneous types of licenses are often involved or required.
If you are the owner of IP, your business model or organizational strategy may revolve around licensing. If you need to make use of others’ IP in your venture (be it for- or not-for-profit), IP licensing may end up being a central economic and strategic consideration as well. In many of these circumstances, it is likely to prove foolhardy to attempt to handle the licensing (either as licensee or licensor) without legal counsel.
Even if you are building a business in meaningful part on the IP of others and making use of a compulsory or general public license, it is likely worth a consult with a well-versed IP attorney to determine if your use conforms with the license, what your potential legal risks are, and whether there are alternative options. Such alternatives may include business strategy options as well as legal, so you should engage with a law firm that has a sufficiently “big picture” perspective to capably help you consider non-legal alternatives that may obviate legal issues. For example (to cite a real situation we have advised upon), if a software services business faces a potential software patent threat from a questionably-valid patent, it may nevertheless be more economical for it to alter the software minimally to avoid falling under the scope of the patent, instead of facing a costly legal battle that would damage the enterprise significantly–even assuming a legal victory!
A final, but major IP use issue to consider is the notion of fair use. Fair use is a near-universal concept in U.S. intellectual property law which allows for some IP uses that would otherwise be violative or infringing if there is some sort of good-cause basis. Most famous is copyright fair use, which is often invoked in justifying (or defending, if in court) the excerpting of pieces of copyrighted works for news, commentary, education, or artistic adaptation. However, fair use as a legal concept also exists in trademark law, patent law, and trade secrets law. This is a rapidly-developing area of the law due to ongoing changes in how IP is represented, used and conveyed in current culture and with current technology. A challenge in addition to (and in part because of) that rapid change, to the extent fair use is even encoded in the law, it is typically left open-ended. This results in a situation where it is difficult to give a definitive answer on whether a prospective unlicensed IP use is legal under fair use–even for attorneys. But legal experts can undoubtedly shed much more light (and provide a much higher level of assurance) than the layperson alone. Borrero Law is extensively familiar with fair use, so please get in touch with us if you need advice related to a potential or asserted fair use case (whether it is on the part of yourself, or others, utilizing your IP).
Contracts to Enforce IP
One way of “enforcing” your IP with contracts is of course, per the above, licensing. But licenses are not the end of the list of legal agreements that help you use and protect your IP. Others sorts of contracts you may need to create or alter in consideration of your IP (or that of others) includes:
- Non-disclosure agreements (NDAs) and non-compete agreements (NCs)
- Employment contracts
- Consultant/contractor agreements
- Vendor/servicer agreements
- Corporate/organizational policy
- Investor/financing agreements
- Purchase/sale/assignment agreements
It is usually very important in the above sorts of agreements to list (as exhaustively as possible) the items of intellectual property that are of concern, and which party has what rights and responsibilities with respect to them. With data security an ever-increasing concern, as well as a proliferation of cloud-based services/”software as a service” (SaaS) provided by third party vendors, it is becoming ever more important to enforce the confidentiality, security, custodial limitations, and data lifecycle of important intellectual property-representing data through appropriate contract provisions.
Enforcement Through Litigation
Whether you are an owner or user of IP, competent legal advisors will help you avoid litigation to the greatest extent practicable by heeding all of the above, pro-actively. Often, however, irreconcilable disagreements between parties cannot be avoided, and IP matters often justifiably end up being litigated in court. Questions of IP authorship- or ownership-in-fact, the precise meaning of license terms or even IP laws themselves, or questions of a party’s conduct in view of IP contracts or laws, are all oft-encountered issues that push parties into court.
As a owner or licensor of IP examining the possibility of filing suit to enforce your IP, a preliminary step is to get legal advice on how to proceed even prior to filing a lawsuit. A common initial step is to make a formal, direct written legal demand upon the party you believe is infringing your IP or violating a license. An officially-formulated, legally-sound demand letter from a law firm, more often than not, can get the other party to the negotiating table with a more reasonable stance, or even persuade them to completely give up the putatively-infringing use (possibly even paying for your costs of legal counsel). Of course, there can be no guarantee of such an optimal outcome, so it may be necessary to file a lawsuit, despite your best efforts to resolve a conflict without one (which our firm can handle for you).
As user of IP (either under claim of ownership or other right-to-use) facing a claim of license breach or infringement/misappropriation by another party, you’ll want to get legal counsel quickly, whether you have received a demand letter (from a lawyer or otherwise) or have already been sued. Legal counsel familiar with IP will be able to give you a read on whether you are truly infringing or are in breach, help communicate and negotiate with the opposing party, advise you with regards to litigation strategy, and formulate and file your replies, making and advancing your best legal case.
Whether you are the (prospective) plaintiff or defendant in an IP lawsuit, legal counsel will be especially useful in gauging the likely economic costs and potential benefits of the litigation, clarifying the complex issues of which remedies and penalties are available (or which ones you might face that a court might actually approve), explaining how the pertinent IP registrations (or lack thereof) effect litigation strategy, and determining whether you should file registrations for your at-issue IP at issue if this has not been done already, as well as actually undertaking the litigation itself.
Specialized & Crossover Areas of IP Law
There are numerous specialized, niche, and “crossover” areas of (or related to) IP worth considering, which firms like ours can help you with. These include:
- Software license strategy – this area of concern goes beyond standard business and IP usage/licensing concerns because of the fairly-involved technical aspects of software. The general issue is that, while an individual writing software or creating an application for noncommercial use might not need to worry much about which free/open source software they use, a commercial project needs to carefully consider which software they integrate, link to (as libraries), or software services they interact with. E.g., it may make considerable difference to your venture in terms of revenue/profit, legal compliance, business model, or public good will/publicity whether a (potentially) utilized software component is licensed under the GNU GPL, MIT, Mozilla, Creative Commons, or other license. Borrero Law understands these unique and complex issues and can provide valuable guidance with them.
- Domain name (“cybersquatting”) disputes – Arising since the 1990s internet boom, cybersquatting begins when a party buys a domain name (e.g., BorreroLegal.com) with no bona fide intent to use it (often, the plan is to speculate, by selling it for a much higher price later). This becomes a matter of legal dispute when another party, who was not the first to register the domain name, believes they have a superior right to the domain name. Usually that asserted right is based on a (putative) trademark right to the domain name or some close variant of it, making cybersquatting an area of legal concern closely-connected to trademarks. Accordingly, in the past 10-15 years, a legal regime has been put in place to resolve cybersquatting disputes in a way that harmonizes with trademark law. This includes arbitration within the Uniform Domain-name Dispute Resolution Policy (UDRP) system, as well as federal court litigation under the U.S. Lanham Act (especially the ACPA, mentioned above). Our firm can represent you in a cybersquatting dispute (regardless of which side you are on), as well as advise generally on most related legal concerns.
- Interactions with media law, employment law and trade law – Intellectual property law sometimes yields complex or unusual interactions with other areas of law. As mentioned above, IP is increasingly of concern in employment or business-to-business trade situations, and interactions between business and corporate law and IP underlie much of the general discussion on this page. But another, non-intuitive area of legal crossover occurs between media (and first amendment) law and intellectual property law (for example, the publication of a particular sequence of numbers or codes can be an “anti-circumvention measure” in violation of U.S. copyright law; or, the leaking and public release of copyrighted information can be permissible “fair use” even though it otherwise violates the letter of copyright law). For these types of challenging legal scenarios, you need well-steeped, expert counsel, which our firm can provide.
- Special, niche or obscure areas of IP protection – Examples of such areas are: any international IP infringement concerns; copyright protection under the Visual Artists Rights Act of 1990, semiconductor chip designs under the Semiconductor Chip Protection Act of 1984, architectural works under the Architectural Works Copyright Protection Act of 1990, or ship designs under the Vessel Hull Design Protection Act of 1988; patent protection for industrial designs, plants, biological life forms or novel chemical mixtures; or trademark protection in cases of cybersquatting (see earlier bullet) or in other complex internet-based scenarios.
If you think any of these areas might be applicable to your IP, get in touch with us, and we can either advise you directly, or point you in the right direction.