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Insider Louisville
April 10, 2017

A company’s intellectual property is one of its most important and valuable assets.  Generally speaking, there are three types of intellectual property:  trademarks, copyrights, and patents.  Imagine the frustration of learning that someone else is using your intellectual property, after you were the one that invested significant time and money to develop those materials.  What can you do to stop folks from taking advantage of all of your hard work and creative efforts?

In most cases, the first step is to contact the offending party to advise them of your prior rights and see if they will voluntarily discontinue using your intellectual property.  Oftentimes, these folks are unaware of your rights and will agree to phase out use in a relatively short period of time.  If that doesn’t work, then you should consider legal and equitable remedies provided for the type of intellectual property at issue.

Trademarks

A trademark can be any word, name, symbol, or device (or combination thereof) used to identify and distinguish one’s own goods from those of another.  The Lanham Act protects trademarks from infringement regardless of whether the trademark is registered with the United States Patent & Trademark Office (USPTO).  However, if you have registered your trademark with the USPTO, the Lanham Act provides a “constructive notice” provision whereby so long as the registrant uses the ® designation in connection with the mark, the registrant is entitled to profits and damages from the infringing party without having to prove that the infringer had actual notice of the registration.  This can save registrants a lot of money if and when the matter should ever go to court.

Trademark rights last as long as the trademark is in use.  Therefore, unlike patents or copyrights, there is no expiration date so long as you continue using the mark.

Generally speaking, anyone who uses a trademark that is likely to cause confusion with a senior user’s trademark, or uses a trademark that is likely to cause consumers to mistakenly believe that the offending party’s goods or services are sponsored or approved by, or are associated with, the senior user, is liable for trademark infringement.  The Lanham Act provides for injunctive relief (which would prevent the offending party from further selling any offending goods or services), as well as the recovery of the offending party’s profits, damages sustained by the senior trademark owner, and the costs of the action.

Most states also have statutory or common law protections (or both) against trademark infringement, which usually mimic and supplement the federal rights afforded by the Lanham Act.

If your trademark is being used by another within the context of a domain name, the Internet Corporation for Assigned Names and Numbers (ICANN) recognizes that trademark rights are protected within the context of domain name registrations.  To that end, ICANN has established the Uniform Domain Name Dispute Resolution Policy (UDRP), which provides an expedited and cost-efficient mechanism for requiring transfer of domain name registrations to the rightful trademark owner.

Copyrights

The Copyright Act protects the tangible expression of, among other things, literary works, musical works, pictorial, graphic and sculptural works, motion pictures, and sound recordings from infringement.  Copyright rights can last a long time.  For instance, for works created on or after January 1, 1978, the duration of the copyright is the life of the author plus 70 years.  For works “made for hire,” the duration is 95 years from publication or 120 years from creation, whichever expires first.

Copyrights are unique in that the “copyright right” automatically attaches to the person who created (i.e., “authored”) the work.  Therefore, unless the work is created by an actual employee of your company (which would then, by law, be a work “made for hire”), you would need to obtain a written assignment of the copyright rights from the author of the work.

This nuance of copyright law can become problematic if and when you should ever have to pursue a third party who is using your work.  For example, what if a third party had lifted parts of your website content for use on their website?  You, of course, would want to make them remove your content from their website.  However, if you contracted with someone to create your company’s website, and had not obtained an assignment of the copyright rights from that person, then you would not be the owner of the copyright rights and would not have standing to assert the copyright claim.  Therefore, always be sure to obtain an assignment of any creative works when you engage folks who are not your employees to develop those materials.

Assuming you are the copyright owner, the copyrighted works must be registered with the US Copyright Office before you can file a civil action in federal court and obtain monetary damages.  If the work is registered with the US Copyright Office, you may be eligible for statutory damages in the range of $750 to $30,000 for each work infringed, which may be increased to $150,000 per work if the infringement is willful.  Therefore, statutory damages can be a potent remedy, especially if actual damages may be hard to prove.  The Copyright Act also provides for injunctive relief and seizure of the offending works.

Patents

The America Invents Act (AIA) protects, generally speaking, inventions that are novel, useful, and nonobvious.  A patent must have been issued by the US Patent Office before the owner of the patent (or in some cases, an exclusive licensee) has a right to file a civil action in federal court arising out of any direct or indirect infringement.

Unlike trademarks and copyrights, patents have a limited shelf-life since patent owners are essentially granted a monopoly for that technology during the life of the patent.  For example, for utility patents issued after June 8, 1995, all rights in the patent will expire 20 years following the earliest filing date of the patent application, assuming the annuity payments are made at the requisite intervals.

To constitute infringement, the accused product has to contain all of the elements and limitations of at least one of the claims in the issued patent.  If infringement is proven, the AIA provides for monetary damages of no less than a reasonable royalty and the patent owner’s lost profits, as well as injunctive relief.

Conclusion

Make sure you have buttoned up your own rights in your intellectual property before you seek to enforce your legal and equitable remedies.  However, the law provides some powerful tools to protect your intellectual property.  Therefore, speak with your legal representative if and when you should discover any potentially offending uses so that you can consider your options and determine the best way to address those issues.

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