What's New in IP and Brand Management
Fall 2007
Greetings!
Hope you find the information within this newsletter informative. For any further information regarding any of the topics covered please contact us.
Sincerely,
Avaneesh Marwaha
In THIS ISSUE:
IP Development, Rights...the future:
What spending time and money gets you:
Copyright? What is it? What does it do? How do I protect it?
Recent IP Cases
IP Development, Rights...the future:
This October OceanTomo held their semi-annual intellectual property summit and auction in Chicago, Illinois. While the auction was a great success, the seminars that took place during the event had the greatest impact on the future of intellectual property. The topics ranged from IP rights in China to developing IP rights in University Research. Issues of interest that were covered were developing IP licensing agreements, IP audits and the value of IP as an asset.
It is clear that in today's marketplace a company's ability to sell or market a good or service is directly related to its various trademarks, service marks, logos and brands ("source identifiers"). The earlier that a company realizes that the development and protection of its source identifiers, the better off the company will be in competing within its marketplace and expanding to neighboring marketplaces. Having a good idea, good business plan or great service is only part of an overall competitive business model. To have a complete business model the company must invest in the development, protection and growth of its various source identifiers.
After a company has invested time and money in developing and establishing their source identifiers and other intellectual property that company can potentially grow in to other marketplaces. How? By examining the potential for co-branding of goods/services with different companies. By co-branding or licensing the company's intellectual property the company can realize additional revenue from various relationships. Often times these relationships require very little in additional resources to establish and the risks involved are shared by all the partners. Licensing out or licensing in ones established intellectual property can often be the highest revenue to cost ratio a company can experience.
Why all this talk about intellectual property and the costs/benefits of intellectual property? Over the course of the past 7-10 years intellectual property has moved steadily from a protectable piece of property to a revenue generating asset. Just as real property (homes etc.) moved from basic homesteads to investment properties and assets of individuals, intellectual property has moved from a piece of the company to an investable piece of property and asset.
IP has, for the most part, been locked up in the legal departments of most businesses because companies have estimated that the costs associated with developing IP as either too high or not worth the value. Many small to mid size companies (1 million to 250 million in revenue) often evaluate IP as an asset for acompany that is grossing well over 250 million dollars a year, when in fact a small/mid size company should be investing in IP so that it can effectively compete and have a greater chance of sustainability within the marketplace for years to come. IP is the future of competition and the earlier a company starts developing, protecting and growing its IP the farther along it will be in the stream of competition.
IP has finally reached the forefront of business establishment, rejuvenation, development and maintenance. Small and medium sized businesses that haven't put IP in the forefront or have not given IP the time and money required should start evaluating it. The most efficient method for evaluating the IP a company has is with an IP audit. The purpose of an IP audit is to centralize/organize the known IP and identify the unknown IP. After collecting the necessary documents and evaluating what IP is missing a plan is created to determine what kind of IP is not protected and how to protect. Once the IP is protected the business and IP attorney can determine the best way to either increase revenue or capital by a) using the IP, b) selling the IP, c) licensing the IP or d) no longer using the IP. The determination of how the IP is handled is based on the future needs and goals of the company. This step is often the most crucial as IP can help attain and reach the far-off goals of a company.
With the current growth and importance placed on IP the future of IP is anything but negative. With the increased role that IP is playing in the day-to-day discussions in boardrooms and business negotiations, IP will only continue to increase in value for the company and consumer. Companies like OceanTomo that develop new avenues for IP, such as auctions and the OceanTomo Index, have only shown the tip of the iceberg as to the potential that IP has in today's and tomorrow's marketplace.
Therefore, start-ups and small/medium sized business should begin and continue to invest in the IP that it currently possess and plan for the future and the unknown IP that is available.
To find out more information about registering copyrights, licensing or litigation contact Marwaha Law Office, LLC.
What spending time and money gets you:
After your company has decided upon its specific source identifier it is important to spend the appropriate amount of time and resources on branding and distribution. Why? So that one day your company's trademark will be on this list (all the trademarks below are still registered and in use):
Levi Strauss
- In 1873, the company, began using the pocket stitch design
- In 1886, the two horse brand design was first used
- In 1936, the red tab was attached to the rear pocket so that the jeans could be identified at a distance
McDonalds
- Created the McDonalds family of marks in 1953 (use in commerce)
- Marks range from McDonalds to McCoffee to McMuffin
- Created the notion of "Mc"-Language which allows them to protect any potential competitor from using a "Mc" based name
MGM
- The roar of a lion - 1924
NBC
- -1961, the NBC chimes
Coca Cola
- In 1887, the most famous mark was used and registered in 1893
- Have protection over its bottle design
- Most recent trademark "Coca-Cola Zero", first used in June 2005 and currently published for opposition
All these marks started as trademarks for small companies that understood the importance of having its products identified and separated from its competitors. Even though Coca-Cola is the most famous mark in the world, the Coca-Cola Company is still spending money and time on brand development for new product lines and using its house hold name to co-brand these products.
To find out more on how to effectively develop, promote and protect trademarks, copyrights and brands contact Marwaha Law Office, LLC.
Copyright? What is it? What does it do? How do I protect it?
According to 17 USC Section 102 (a) -- copyright protects the original work of the author. This work must be expressed in a tangible medium which can be reproduced or otherwise communicated. Works of authorship include:
- literary works
- music works (including words)
- dramatic works
- choreographed works
- pictorial, graphic and sculptural works
- motion pictures or other audiovisual works
- sound recordings
- architectural works
What does ownership of a copyright get you? Exclusive rights to:
- to produce copies or reproductions of the work and to sell those copies (including, typically, electronic copies)
- to import or export the work
- to create derivative works (works that adapt the original work)
- to perform or display the work publicly
- to sell or assign these rights to others
- to transmit or display by means of digital audio transmission (XM Satellite Radio, Sirius)
How do you protect your work? By providing notice to the public that you are claiming ownership over the work and notice can be given in the following manner © 2007 John Doe
This notice of ownership will allow you to stop a potential infringer from using your copyrighted materials but it will not allow you to seek any damages from their copying of your material. To get any damages from copyright infringement your material must be registered with the U.S. Copyright Office.
To learn more about copyrights and how to protect them contact us.
Recent IP Cases
Leelanau Wine Cellars, Ltd. v. Black & Red Inc.., Nos. 06-2391(6th Cir. Sept. 20 2007).
In a case arising out of a trademark dispute between two Michigan wine producers over the use of the word "Leelenau" as part of the name for their wines, a judgment for defendants is affirmed as, considering the applicable factors, plaintiff failed to demonstrate that defendant's use of the mark "Chateau de Leelanau Vineyard and Winery" was likely to create an actionable likelihood of confusion.
GM Corp. v. Urban Gorilla., 06-4128(10th Cir. June 29, 2007).
In trademark dispute over steel "body kits" designed to make a truck look like a military-style vehicle, denial of plaintiff GM's motion for preliminary injunction is affirmed where the district court did not abuse its discretion in finding that GM failed to make a strong showing of a likelihood of success on the merits that the "body kits" infringe upon and dilute GM's trade dress rights in its Hummer line of vehicles.
San Jose Constr., Inc. v. S.B.C.C. Inc, H031066(Cal. Appl. Dist. October 12, 2007).
In an action by plaintiff-construction company against its former employee and his new employer, summary judgment for the new employer is reversed as, contrary to the ruling below, there were triable issues of fact with regard to causes of action for misappropriation of trade secrets, intentional interference with prospective economic advantage, and unfair competition.
Buochat v. K-Mart Corp., 04-1008(4th Cir. October 17, 2007).
In copyright infringement cases arising out of the design and use of the logo for the Baltimore Ravens football team, summary judgment for plaintiff but denial of requests for actual or statutory damages is affirmed where the doctrine of claim preclusion prevents plaintiff from obtaining actual damages from the licensees and his failure to register his copyright before infringement began renders him ineligible for statutory damages.
Time Warner Cable Inc. v. DIRECTV, Inc., 07-0468 (2nd Cir. August 9, 2007)
Order preliminarily enjoining DirecTV from disseminating, in any market in which Time Warner Cable provides cable service, certain television commercials and Internet advertisements -- which included commercials featuring actors Jessica Simpson and William Shatner -- found likely to violate the Lanham Act on literal falsity grounds is vacated to the extent the district court exceeded its permissible discretion in preliminarily enjoining DIRECTV from disseminating the Internet advertisements, and to the extent there was ambiguity in the injunction on the television commercials.
(Case summaries from www.FindLaw.com)
No Legal Advice or Attorney-Client Relationship: These materials have been prepared by Marwaha Law Office, LLC for informational purposes and are not legal advice. This information is not intended to create, and receipt of it does not constitute, an attorney-client relationship. You should not act upon this information without seeking advice from a lawyer licensed in your own state or country. Do not send us confidential information until you speak with one of our attorneys and receive our authorization to send that information to us.
Copyright 2007 Marwaha Law Office LLC.
