Douglas Cherry, Esq., associate in the litigation and intellectual property practice groups in the Sarasota, Florida office of Shumaker, Loop & Kendrick, LLP discussed the possible legal pitfalls for PR professionals dealing with trademarks, copyrights and trade secrets.
Securing your company’s intellectual property is more important than ever in these tough economic times. People are often shocked when assaulted with issues dealing with intangible assets. A lot of the law is counter-intuitive. Doug regularly encounters expensive litigation issues that could have been prevented by some early, inexpensive measures.
Some of the issues that can arise around intellectual property rights involve marketing elements, creative content, advertising slogans, names, logos, website design, software, techniques, processes, marketing materials, personal identity, databases and more.
Here are ten fatal assumptions made regarding intellectual property and technology law:
1. We pay for it, so we own it. Many issues arise when working with independent contractors. The Work for Hire doctrine covers work done by an employee during scope of employment and certain works specially ordered or commissioned. An independent or off-work employee owns that work unless specifically assigned in writing. Although copyright is secured once put in tangible form, there are significant advantages of formal registration. Filing fees are about $82. Tip: Make sure your contract is not limited to Work for Hire language. One simple document can prevent a large amount of legal fees later.
2. If we modify someone else’s text to a certain degree, then we can use it in our advertising or marketing materials. There’s no specific rule for how much (what percentage) you are allowed to copy/modify something. Always assume that it’s an infringement.
3. I saw this great image on a website and want to use it in our materials. No one will care since it is only one picture. Technical ease does not equal legal right to do so. With IP protected material, you must obtain permission from the owner with an assignment or license, or there can be dire consequences. Tip: Be cautious of stock photography sites.
4. We got some great photos at our last event, including some pictures of kids and guest celebrities. Let’s post them online. Before posting photos, consider the Right of Privacy – the right to be left alone without emotional or non-economic harm and the Right of Publicity where the violation is unauthorized use of name or likeness for any commercial or advertising purpose without consent. Also consider COPPA (Child Online Privacy Protection Act). Be very careful about using any child’s personal identifiers without the right releases. Tip: Who took the photos? Do I have rights?
5. We have been using the names, logos, and slogans for our company or advertising campaigns for years, so no one else can use them. A trademark is any word, logo or package design used by a company/merchant to identify its goods and services and distinguish them from others. (i.e. Coca-Cola brand name, UF Gator logo).
A trademark is acquired when it is used in commerce. Federal registration gives you nationwide protection and the ability to expand. Tips (in order): Carefully select your trademark, request a clearance search early, consider an intent-to-use trademark application, obtain the domain name and any variations, state registration may be prerequisite, send a press release and begin marketing. If not intent-to-use, then seek registration.
6. Of course our independent contractors, volunteers, and partners may know our confidential information, but they know not to reveal any of it. It’s common sense to keep that information to one’s self. Trade secrets (i.e. formulas, databases, business plans) are subject to reasonable efforts to maintain secrecy and are not required to be registered in any way. The economic value is in the secrecy. Protect trade secrets through a multi-faceted program including releasing information on a need-to-know basis, confidentiality agreements, locks, restricted facilities and networks, passwords, etc. and always make departing employees return information. Exit interviews are key.
7. We don’t really need to have a firewall or password protection for our servers and PC’s. No one would think to hack our system. 90% of all organizations have been hacked at one time or another. Protect personally sensitive information of your clients and employees through firewalls and passwords. Don’t collect unnecessary personal and financial information and be careful of hackers who mine information though social media. Do you really need to keep all those company records? Keep in mind they’re all subject to discovery in the case of litigation.
8. I would hate to ask someone who is helping our organization to sign anything. Don’t undervalue your business, no matter how much you trust or like someone. It doesn’t hurt to have an agreement. Blame it on your attorney.
9. A nonprofit does not have to worry about complying with SPAM or blast fax laws. Blast fax/TCPA litigation is rampant, with often-time automatic damages. The CAN-SPAM act does apply to nonprofits as well as corporations. There are specific requirements for complying with CAN-SPAM.
10. We don’t need to spell out for our employees what they should and should not be doing online. They just do their job with our clients and that’s that. The nature of emails can be blunt. People say things in email that they would never say in person and are even more candid on social networks. Messages posted on social networks are discoverable information that will be out there forever. Be careful what you’re posting and put a social media policy into place. Draw a line between business, social and personal. Also, watch out for defamation, copyright issues (video, music, photos). The company can be responsible for materials on their site, group or page.
One of Doug’s most quotable quotes during the presentation was, “Being right and being sued are two different things.” Rather than assuming you’re covered, take the necessary time and steps to protect yourself and your company.
Douglas Cherry, J.D.
IP & Tech Law Attorney
Shumaker, Loop & Kendrick, LLP