Digital Signature Legality for Assignment of Intellectual Property in Australia

How to eSign a document: digital signature legality for Assignment of intellectual property in Australia

okay thank you very much I'm I'm delighted to see see a nice crowd here tonight I'm always happy to see that first of all thanks to all of you for taking the time on a very busy day to come out to a hotel room to listen to a lawyer babble on about stuff that he knows about I am always amazed when people actually do this to be honest with you you know because you know let's face it I mean lawyers do have a little bit of a reputation for being somewhat stodgy and all the stuff I try to break the mold but you decide if I do or not but but I really do appreciate the fact that you take the time you are my heroes you are the Imperial Stormtroopers of the small business community so I really do appreciate the fact that that you're doing all this either that or the food here is really terrific and that's if that's the case well then that's that's that's another thing okay so tonight's topic is intellectual property basically what is it why is it important and most importantly how do you protect it if you ever doubt it that I'm a lawyer there's my there's my proof we always tell you what we're not going to do and then we tell you what we're going to do two things here you have to know about that well I do a lot of programs for score here in the state of Connecticut I am NOT an employee or in any official way connected with score so I speak for myself I do not speak for score or anyone else anything you hear in this program is entirely mine the second one is the more important though there is a very big difference between giving legal information and giving legal advice there's a very big difference between saying here's what the law says and here's what you should do I don't know any of you guys well enough to know exactly you know how you should any of you should do in your own lives for that I would have to know you a bit better quite frankly you know I'd have to charge a little bit for that so anything you so if you hear something that I say tonight and it sounds good and you do it and it doesn't work and you end up going bankrupt you lose your business your spouse divorces you your kids don't want to talk to you your dog pees on your leg you end up living in a diaper box under the Brooklyn Bridge you can't really sue anybody for that okay this is not legal advice this is no substitute for what a lawyer or accountant would do in a one-on-one meeting with you I'll tribe don't get me wrong I'll try to answer your questions as best I can but there's just a very big difference between those two things so what is intellectual property well the best way that I can describe it is the stuff that's inside your head okay basically it's intangible you cannot use your five senses to touch it you can't see it you can't smell it taste it you know hear it or anything like that oftentimes the stuff never leaves your head it never exists in any sort of tangible physical form but it's very important and it's very real especially in today's economy intellectual property may be the most valuable asset that your business has when I was a boy growing up in the 1950s companies were mostly manufacturing companies and they had real assets they had plant they had equipment they had trucks they had real estate they had all this wonderful stuff being a banker was great back then because it was so easy to put values on those things and figure out how much you could lend against that you know I mean I was taught you know my dad was a banker that the loan-to-value ratio was the most important thing you know with a bank loan now today all the most important assets of your company we don't we no longer live in a manufacturing world at all we live in a world of technology and and and the world is getting increasingly more digital digital and more intangible the most important assets the most valuable assets that your company has go home every night is what they do and the stuff that lives in their heads and in your heads is the most important asset and it's very hard to value that I I don't envy my banker friends these days it's very hard to lend to a start-up technology company that has an idea and maybe it's been patented but there's no markers no market is yet there's no revenue we have no idea figuring out what this thing is worth you know what was the value of Facebook in 2000 before they started the company answer you can't put a value of it after now today you can't but back then you absolutely couldn't what's important about intellectual property is this is important stuff you must keep it confidential you must keep it proprietary this is the stuff that drives your business and determines whether your says you're successful or not and to the extent you can you want to try to get it protected by a governor agency in some way mess we're going to be talking about tonight okay there are four basic types of intellectual property there are patents which are basically inventions these are things you create that you sell to make money and you and you own all the rights to them there are trademarks and these are not there's a lot of misinformation about trademarks people think you trademark a name you like your company name or something like that and that's not the case you don't trademark names you trademark marks and marks are very different than names they can be a name they can be words but they have to be at be what's called a mark a mark is something that you put on your products and services to identify them in the stream of Commerce so the golden arches for McDonald's the Pillsbury Doughboy these are all examples of registered trademarks copyright deals with works of authorship books literary works art designs music compositions anything that is an original work of authorship is protected by copyright and then trade secrets this is a very technical definition of trade secrets which I'll get into a little bit later but for purposes of now just think of it as any other intellectual property that doesn't that is not a patent trademark or copyright that's the best way to do it if a piece of information is valuable proprietary you make money off it and you don't want the world to know about it and it's not a patent or trademark or copyright it's a trade secret that's just a lump category that we use to lump everything else together that doesn't fit in the first three the first three types patent trademarks and trademarks and copyrights are what we call legal monopolies is what they are they do not give you ownership of anything a lot of people get confused by this they think oh if I have a patent on the invention I own it that is really not true you don't a patent a trademark a copyright is what we call a legal monopoly now we live in a capitalist economy in a capitalist economy you do not like monopolies monopolies are bad things if a company has monopoly power over something they have the right to set whatever prices they want and you must pay them because you have no other choice we don't like monopolies those are bad things but here are three monopolies that the government you they based the government basically says that for a period of years okay subject to certain conditions you are the only person who can make money off of this thing whatever this thing is and nobody else can do it if somebody else does it you can sue them and make them stop or get money from them collect royalties from them what we call infringement that's that's that's what those things are thinking of them as legal monopolies and they're very valuable for that reason you're you're getting a legal monopoly only you can make money off of this thing for a period of X years the only thing is you cannot register a trade secret there is no way to register a trade secret with a government agency there are other ways to protect trade secrets and we'll talk about those when we get there okay let's talk about pads I apologize for the type on the slide by the way you can't take pictures of the slides if you wish just try not to use a flash if possible it will affect the video a patent is a grant of a property right to the inventor okay key thing number one only the inventor can imply for a patent okay so if you are with us say if you're with a company you're part of their R&D department and you come up with a new invention for some new kind of drug or something like that the patent will be registered in your name as the inventor of that product now of course it will also be assigned to your company on an exclusive basis Sara said to say if you develop this patent when you're working for your employer you will probably not be able to exploit it yourself only your company will but you're always given credit as the inventor on a patent filing this is the legal definition the right to exclude others from making using offering for sale or selling the invention in the US it's a legal monopoly is what it is and there are three types of patents utility patents are the most common these are granted to anyone who invents or discovers any useful new and useful keep it most words in mind process machine article of manufacture or composition of matter or any new and useful improvement okay you cannot patent an idea it has to be reduced to writing and it has to be described in quite significant detail before the government will issue a patent you can't just go in there and say hey I have a great idea for a new type of genetically injured engineered tuna fish basically we import these special tuna from Japan and basically what we do is we feed them nothing but mayonnaise celery and carrots so that when they are finally harvested the tuna salad is already made you know it's you can laugh by the way it's perfectly okay there's an absolutely insane idea but that's what a design patent is and that's what a utility patent basically is it's it's something it's a count it's a composition of matter it's a new and useful invention design patents can be granted to anyone who invents a new original and ornamental design for an article of manufacture it has to be for a product you can't just come up with a really cool design for you know that just looks good on paper you know as a beautiful piece of wort all right you can't get Picasso could not have patented his Guernica painting for example even though it's a great painting it has to be for an article of manufacture so if you come up with a really cool design like Apple did for the iPhones and the iPads and all of that you can sometimes get patents on the design Android cannot do their things exactly the same way that Apple does last but not least is a plant patent these can be granted to anyone who invents or discovers and asexually reproduce --is any it's think the asexual you can't just be a modification of his existing plant you have to create a whole new one any distinct and new variety of plant and let me tell you if these things are hallucinogens you will be a billionaire okay if you can do this actually very few people in the world can do that okay what can be patented any person who invents or discovers any a new a new and useful process now let's look at these words okay new and useful are very important the subject matter must be new it can't be just the same old same old thing so let's say for example you come across an old patent for sealing wax and you decide it would be really cool to redo sealing wax as a thing where people who write letters to each other if letter writing is making a comeback they can use these seals and things like that that would be a very hard thing to do but to get a patent on because it's not new to quote the Rolling Stones your father is still purr affecting ways of making sealing-wax it's an old product it has to be new and it has to be useful the term useful means that the thickness object matter must have a useful purpose and also operative mnestheus all these weird words but you only see these words when you're dealing with patents I mean I don't think anyone ever uses the word operative miss unless they're doing a patent filing basically a machine that doesn't work is not useful and I have had situations where people have obtained patents or provisional patents but then when they go to try to do the prototype and do the actual invention it doesn't work the way they did they have to totally redo the thing and they lose their patent protection because of that I have had situations where that has happened the things got to work in plain English a patent cannot be based upon a mere idea or suggestion when you submit a patent filing you are have to submit a series of mechanical drawings do any of you have to do mechanical drawings in shop class when you were in high school you know you probably did it's not the older folks in the room see now we don't do manufacturing so nobody does that anymore I don't know what they do in shop class these days they're probably doing AI or something like that it's not thinking of the band saws and stuff like that I mean seriously you always do a kiddy taking shop because he was covered in the sawdust you know when I was a kid that I don't think that's the case now they do other things with lasers I'm sure and that's even Gracie a kid walk around with a hole in his head you know he just came from shop class you know but you have to submit a very detailed set of drawings and those are looked at very carefully by the patent examiner's most of whom are engineers by background so these people have been trained to look at these things you know you have to submit a complete description of the machine and it has to look a very specific way the Patent Office has about a hundred pages of regulations about what these drawings have to look at you can't just do a sketch on the back of an envelope and submit it as a patent filing laws of nature physical phenomena and abstract ideas are not patentable subject matter so that Higgs boson doohickey that they discovered last year okay I mean that's a great discovery it's one of the greatest discoveries in physics in the last 100 years but nobody can get a patent of that because it's a law of nature nobody invented the Higgs boson doohickey forgive the turtle I tend to use weird words sometimes the invention must be new it must be useful novel is the word that they use instead of new and invention is not new if it was known to the public before the filing date of the patent application so if I submit a patent for an automobile tire that looks just like every other automobile tire except wow it's painted green and I think that that's gonna look really cruel going down the road way that is not considered a new invention even though the tire might look a little different than normal tires you know let's say it's a square tire now of course a square tire is probably not going to be useful because it doesn't work okay but let's say that for some reason I can make a square tire that works or a hexagonal tire or something like that something that's really cool that would not be considered new I mean tires exist the hexagon has been around since the ancient Greeks so you know the combination of the two would not be considered a new or novel invention it's impossible to guarantee the novelty of an invention basically when you submitted in your patent filing the examiner's in Washington do a very thorough search which with what's called prior art and if they see that your stuff is too close to the prior art they will not let you proceed with your patent application they will reject you the invention must be useful it must have a useful purpose although you can patent a toy so for example the desk toy with the steel balls where you do one and it goes back and forth and all that kind of stuff that is a patented object believe it or not even though it's not really I mean you know it doesn't do anything it just entertains you that's okay that can be a useful purpose but if that is what is that if that is what you're doing you know in in most cases computer electronic stuff the usefulness requirement is an easy one to meet but when you're patenting pharmaceutical stuff you have to basically show the utility of the new compound so for example many years ago I had a client who did a product where basically when you close your eyes you know the lights that you see you know the lights that you see when you close your eyes at night those are called phosphenes and he actually created uh it was basically it look like an eyeglass thing that you put over your eyes and basically what it McGee would organize the phosphenes in your eyes so but actually making out patterns and stuff like that some if you're really higher something like that on dope or something like that I mean it really in handin try it it wasn't it wasn't my thing but it really like enhanced the experience it would make like squares and stuff like that and he had a Dickens of a time patenting this thing because of what's the use of this thing you know what is its purpose it's just it's cool as heck as all heck but it doesn't what does it do what you know if you're phosphenes are more organized you live a better life I mean no there's absolutely no connection between those two things so so again you know what is the usefulness requirement can be a hurdle especially for pharmaceutical and other drug products the last requirement is that the invention must be non-obvious again this is one of those patent words they only exist in the patent world what they what the examiners do they compare the invention of the prior art and they determine whether the differences whether the differences would have been obvious to a person having ordinary skill and the type of technology used in the invention so for example in my example of the square tire that would probably not be assuming that it was useful that you could make it useful that would probably not be considered a non-obvious invention because anyone could take the idea of a tire and get it to the point where the thing will roll maybe with 48 you know different different planet different plants or something like that maybe that would work but it's an obvious idea anybody who has a knowledge of basic geometry could figure that out okay so that invention probably wouldn't go and the examiners really do a lot if they don't see a particular patent that is that is very close to yours they'll look at other previous compat patents and they'll they'll like combine them and if they see that your product is nothing more than a combination of two or three other existing patents they will reject the application it's a very rigorous exam that they go through okay how long do patents last let's say you're lucky you get through all this this this this process generally the term of a new patent is twenty years from the date that which the application was filed you know patent grants are effective only within the US US territories and possessions that's it you pens the good news is there are no state law patents the only place you can get a patent is the US Patent and Trademark Office and when you get it it covers all marketing and business activities within the United States that's not true of trademarks but the bottom line here is Union by and by the way internationally if you're doing pants you basically have to go country by country there are one or two patent treaties that the u.s. is a party to but basically it's not a situation where you register your patent and you're covered in all the participating countries you have to go country by country patent law varies very widely from country to country even in within the European Union it actually varies between the neighboring states the member states in the EU patent law is incredibly technical patent lawyers tend to have degrees in both law and engineering do you remember the exam the geometry exams used to have in high school you used to hate these here's a here's a pic a diagram of an object now which of the following is that object turned 90 degrees to the right 180 degrees to the left remember that they do have you crazy with these questions this is what patent examiner's do every day of their lives key Majan having a job like that you know but you know okay there's a drawing here are 15 other drawings in the same prior art are they too close or is this truly an innovation can you imagine having to make that call that is a real hard call to make even for engineers that's a real hard call to make you need help there are some things in the law that you can do yourself don't get me wrong I'm not saying you have to have a lawyer every time you go to the bathroom although it helps but so they keeps us busy but this is not one of those things this is something you really need help with patent lawyers usually have engineering as well as law degrees they can be very expensive you should be aware that there is something called a patent agent and there are quite a few of them here in the Northeast especially there's a lot of them patent agents are people who are not lawyers but they are licensed by the Patent Office to help people with their patent applications the score people here actually work with several patent agents in Fairfield and New Haven counties a patent agent basically can do everything that a lawyer can except for one thing they cannot represent you in court so if you file your patent and somebody Sue's you for infringement federal court you need a lawyer to represent you in court but if there's an issue with the examiners you know within the Patent Office your patent agent will take the Amtrak down to Washington and he'll fight that battle for you or she will that's their day they're licensed by the Patent Office to to be sort of your advocate in the process and they are a fraction of the cost of a lawyer sometimes the third to a half of what an attorney charges there's a tremendous tiny so I suggest that if you're thinking of filing a patent there are some do-it-yourself books which you should certainly read just to get a sense of how the process works but get yourself either a patent agent or patent lawyer there are some free resources as well this is a very good website for people in Connecticut only I know a lot of people around the world are looking at this video but this only applies to Connecticut but if you go to the USPTO got dove site and type in patent assistance and the name of your state or country they will there are people listed with the Patent Office and that's how you find these people but they vary very widely in quality so for example I Yukon actually has a sort of a patent law clinic where students from the law and education engineering school will combine and help you you know with your patent and it's absolutely free they get course credit for that the problem is you're dealing with college students okay if they're working you know after their you know for their Saturday night frat party and stuff like that the quality of your patent application is not going to be that great and if the examiners do raise issues these are students they're not going to take the train to Washington and fight your battle for you that's not going to happen you're you're more on your own having said that there they are free but sometimes you get what you pay for okay so that's patents okay I do not do patent work just so that you know I want to say this in the video if anybody here needs a patent done you can certainly send me an email and I'll send you some resources but I don't do that work for any of my clients that's way too technical for the kind of stuff that I do okay so let's shift gears now let's start talking about trademarks okay a trademark like a patent a trademark is a legal monopoly it is not ownership it is permission from the government that only you will be able to make money from this thing for a period of years what is the thing the answer is it's not a name whenever a client comes to me for the first time one of them they're setting up a business one of the first questions they have is how do i trademark my name and the answer is you don't trademark a name you trademark a mark and a mark can be a word or a collection of words but a mark is something very different a mark is something that you put on your products to identify that in the stream of Commerce so for example you go to the grocery store you go to the pasta section you see those blue boxes Ronzoni brand pasta right Ronzoni is a registered trademark of that particular pasta company although that's not the company name by the way Xerox you go to buy a printer and you buy the Xerox model three-one-seven that's a trademark Xerox Corporation is not a trademark because even though that is the name of the company it doesn't appear on the products or services I had this issue a number of years ago back in the early 90s I started a little publishing company called by n X corporation by an express we were going to basically do career training for lawyers that was our our mission when she did pretty well ah SH we got a pretty good company going for about ten years some two with two partners and I and I applied I did it myself I applied to the trademark office to get a trademark for the name by anacs which is which you know certainly you can do it's a made-up word it's just like Xerox or eBay or any of these kind of companies but I got bounced and I got bounced not because the name wasn't good I got bounced because I wasn't actually using it on my products and services when you submit a trademark filing you have to send them two copies of your stuff your packaging and all of that so they can verify that you are using that trademark in commerce and I wasn't using the word bionics I was using a little sort of stylized letter B kind of like what Bloomingdale's was doing at the time if you remember back to the Bloomingdale's department store many years ago what I had to do was I had to have my graphic designer produce another book cover with bionics on the spine and that worked I was able to send two copies of that into the trademark office and we finally did give get our trademark for bionics but if you're not using it in commerce even though it's a really cool name and it's otherwise trademark able the trademark office will not give it to you that is the message it defies a brand of merchandise and you must use it in commerce or you lose it okay trademarks are not good for 20 years trademarks are only good for as long as you are using them in commerce you do have to renew them every five years and if you miss a renewal they kill it which means anybody else can use that brand you can still use it but anybody else can use that name on your products and services okay if you plan on branding your business you need a registered trademark if anybody comes up to me at the score meeting and says hey cliff I'm love cliff I'm look I'm looking to build a national brand for my stuff the word brand whenever you use that with a lawyer the first words the trigger up here in our brains registered trademark that's what we need if somebody if you want to have a brand a registered trademark is absolutely mission-critical you spend your money on that before you spend your money setting up the company and doing all the other stuff that's important if you can't get that brand for what you want to do then you have to go back and start all over again for branded businesses a registered trademark is essential by the way trademarks only generally refer to products you can get a trademark on a service but it's not called a trademark it's called a service mark or an SM that's just a little technicality so if I wanted to go out there and crew and create a trade name for cliff the legal guy or something like that I probably wouldn't get that as a trademark but just for fun cliff the legal guy would be an SM it would not be a trademark because it's identifying a brand of legal services trademark versus copyrights you trademark marks brand names and logos you copyright slogans and marketing copy and graphics other than logos so for example if you look at the Maxwell House coffee can the coffee cup that's tilted on the side and the drops coming out of it that's a registered trademark the good to a last drop though is not a trademark that's a slogan that's a copyright I think I'll have a little seed with a circle okay these things get kind of cluttered sometimes you got there are in the circle and you got to see in the circle that are right next to each other but that's what's going on there you do not have to register your trademark although it's a very bad idea if you're doing a branded business I certainly would not recommend that under any circumstances you've got to have the registered trademark but you don't have to so let's say for example you want to call your self Joe's garage your name is Joe and you're gonna set up a garage well there's no law that says you can't call yourself Joe's garage but you're never gonna get a trademark on it you know anybody named Joe who wants to start at your garage in the United States can call himself Joe's garage you can't get a trademark on that so but that doesn't mean though you can't treat that as a trademark you don't want somebody right across the street calling himself Joe's garage so what you do is you put a little TM or an SN next your name you've seen this you know where a name and has a little TM what the TM basically means okay and this does not have to be registered with the trademark office at all okay what the TM says is look I'm claiming this as a trademark okay I don't know if I can get a registered trademark or not I'm not saying I have a registered trademark but I'm claiming it as a trademark and if you I see that you're in my space you're in my space and you're doing the exact same thing with the same name I'm gonna sue you and try to make you change your name that's what it means as it says don't tread on me is what the TM says I'm claiming this now you can sue for infringement but it's very hard to win in court with a TM TMS are not that strong basically you have the burden when you have a TM and somebody else is using it and you want to shut them down but they're saying no wait a minute I was the first you know howdy who wins that battle well the answer is you're gonna have to go to court and you're gonna have to prove that that other person didn't use the trademark until after you read you started using your little TM and how do you prove that when did you start putting your TM on stuff you're gonna have to have some way of documenting that because the minute you sue somebody for infringement especially when it comes to trademark the first thing they say is wait a minute hold it dude yeah you're using this day but you know what I was using this name before you you're infringing me I should be suing you not the other way around and it becomes a question of who was using it first and the good news is whoever uses it first wins the bad news is the how do you prove it how do you prove that you were using the TM on a certain date that's that could becomes a very difficult question even with today's technology okay now we go to the register trademark if you can get a registered trademark you get the right to use the AR in a circle that says you have a registered trademark that must be registered with the US Trademark Office which is part of the Patent and Trademark Office it is a federal crime to use the AR in a circle if the trademark is not registered sometimes people will do that they think oh I'm just gonna put it for the trademark round this I'll just put the R in a circle if they find out you're doing that that's a federal crime with a minimum fine of ten thousand dollars by the way it's a nasty thing so don't do that you can use the TM the SM all you want nobody cares but the artists circle is sacred you have to have gone through the registration process to get that if you have the R in a circle the difference between the common law trademark and the registered trademark is with a common law trademark if you sue for infringement you got the burden of proving everything if you have a registered trademark all you have to do is show my trademark was registered on the since such a date and the burden now shifts to the other side to show that they were using that mark in commerce before you were they got the burden now of proving when they first started doing stuff when you trade something but it gave what a trademark gives you this is the wrong terminology and if there any trademark lawyers listening to this I apologize I'm oversimplifying this I know greatly but it gives you proof of publication that's your proof on this since such a date I was using this marking commerce that's what that means it ends that argument it's the total ending of that argument okay the other thing though that it really gives you is if you have a registered trademark for Frugal firmness that's a made-up word I use it in a lot of my talks it's like a stand-in for widget or something if you have a trademark for frugal framers and somebody else has the domain name frugal framers calm let's say one of these people who buys up lots of domain names and they hold them for ransom make you want to pay twenty thousand dollars you know to get ahold of you you know who I'm talking about the cyber squatters they call them right you can force them to give you that domain name without paying anything if you have a registered trademark and somebody else is using a domain name that has that registered trademark in it you can force them to transfer that trademark to you let me on that that's a very key thing that you get with registered trademarks that you do not get with with common law trademark okay federal versus state market trademarks I said before there are no state patents there are however state trademarks but state trade marks to be honest with you I'm not a big fan of them they're kind of useless in Connecticut here as the Secretary of State's office that gives these out you can't apply to me if you have a little local business for example and you're not really planning to do anything beyond a very limited local area but you want some protection for your name you may be able to get a trademark from the state of Connecticut but it's only good within the boundaries of the state of Connecticut it used to be that a state trademark was actually pretty valuable because a lot of businesses back 50 60 years ago were small local retail services businesses but now all those people have a website right and a state trademark will not protect you beyond the boundaries of the state of Connecticut if you have a state law trademark in Connecticut and somebody in Utah has been using your exact same name for the exact same business for 50 years you're gonna get a nasty letter saying cease and desist and there's nothing you can do about that you know generally speaking states say trademarks are basically useless and even the federal trademarks do not protect you once you go beyond national boundaries what about overseas okay we'll talk about copyright in a minute copyright is very different there are like patents that we have several international treaties here's a nice little web page where you can find out about them but you they're not automatic it's not a situation where if you trademark your logo or a mark in the United States it's automatically protected overseas you have to actually register in each of the countries in which you think your trademark is going to be used so for example if I'm representing an eBay seller here in the United States and they're calling themselves frugal Framus and they get a registered trademark for frugal Framus if they want to sell goods on eBay's british site eBay Cote UK they have to register their trademark in the UK and elsewhere in the EU in order to get protection in Europe that u.s. trademark doesn't automatically apply to when they when the when their business goes beyond national boundaries and not every country has signed a treaty there are a handful of treaties but I want to say only about 40 or 50 countries are privy to them okay a trademark unfortunately you have to go nation by nation how long is a trademark last initially they give you ten years it must be renewed every ten years you can in green you indefinitely okay as long as you are using the mark in commerce that's the key you lose it if you stop using it in commerce you don't defend it against infringers when you own a trademark you got to defend it like like a child you do because everybody else nobody else knows that you have a registered trademark they're calling their business something similar because they don't know any better so you got to constantly send out what I call cease and desist letters these are letter nasty letters usually your lawyer will do them or you can do them yourself that says hey we become aware that you are using this name on your website please be aware of the fact that we have had this registered trademark for the last fifteen years you cannot use it cease and desist immediately or or face all kinds of nasty legal action and most of the time they will take it down okay and I'll I'll tell you a story about about a very horrible story about trademark at that before we move on to copyrights but here's another thing let's say you have a very popular trademark a trademark that is so popular people start using it as a verb and this can happen when you blow your nose into a soft tissue you are blowing your nose into a Kleenex right well Kleenex was once a breath trademark of the Procter & Gamble in fact I think it is still a registered trademark of the Procter & Gamble Company but if you want to call yourself you want to create a set of tissues and call it you know cliff and echoes brand Kleenex tissues they really can't do a lot about that because they the court decided back in the 1960s that they allowed their name to become generic and when your name becomes generic you really can no longer defend it as a registered trademark aspirin was once a CH registered trademark of the Bayer company in Germany when they first came to the United States Yoh Yoh was a registered trademark I remember the name of the company but it was way moe was it way moe back in the 50s yeah it was a registered trademark of somebody back in the 50s I can't remember who it was but not Google when you search online and you're googling it but you're using the Yahoo search engine you cannot say that you are googling it believe it or not and somebody actually went to court this court went to the federal appeals court in California about three or four years ago and Google defended its regulars registered trademark they did not want the term Google to become generic with online search they didn't want to do that they spent a lot of money on that case they did not want to become the next Kleenex so let's talk a little bit about the trademark process not everything can be trademarked like the Joe's garage was my good example the name cannot be a generic term so California vineyards I've got a vineyard in California so what can't trademarked that merely descriptive web graphics cliffs you know cliffs legal services you know geographical believe it or not Nantucket nectars is not a registered trademark if you look at their bottles they say TM on them because they weren't able to get that because it was just their juice guys from the net from Nantucket Mass you know that's the thing that wasn't considered significantly distinctive you cannot use a surname your name cannot be immoral or scandalous anybody remember bad frog beer am I the only person who remembers bad frog this was a major thing back in the 90s there was a brewery a craft today we would call them a craft brewery in Michigan somewhere that was having a lot of trouble so what they decided to do to differentiate to distinguish their beer in the marketplace is they created these labels they call their beer bad frog beer and the label I cannot do this on a video but picture a frog sitting on a living billy pad extending his hand and one particular finger can you do that I cannot do this on a video ok Beach you have the graphic in your head this was the label for bad frog beer and they then they sold there they started selling this stuff at about 30 states attorneys general went after them saying this is immoral this is immoral because this is a an obscene gesture that this frog is making we don't want our stuff in the local shop right where kids can see that right and eventually they went out of business they actually had to file bankruptcy if you have a 6-pack of bad frog beer sitting in your house are you ready for this it is worth about five thousand dollars on eBay seriously even if the bottles are empty that was labeled that has become like an icon for the whole immortal trademark thing so a trademark lawyer who's been around for a while and I will show you some where they got an empty bottle of bad frog beer in their office as a sort of a reminder that you can't do that discreet deceptive or false connection or dis or anything that disparages I had a client Believe It or Not years ago this was many years ago who actually had actually a very cool idea he wanted to create miniature rolls of toilet tissue for people who have liked RVs or small boats or something like that where the full-size rules don't work and he wanted to call it micro - soft bathrooms breath room tissue see buddy here see a problem with that anybody here and he pushed back on me a little I said look dude you can have a real problem with you know the guy in Redmond Washington he goes no I'm not doing computers I'm not doing software you know I'm doing toilet paper he's not doing that we're in different categories I'm sure I could get a trade more finish well you you might do it but you know something I can tell you two things about this you know number one I mean he's gonna fight you know that and you do not have the millions of dollars necessary to fight Microsoft Corporation secondly your only customers gonna be Apple you know that's really that's the first that's gonna be your first customer because I gotta want that for all their employee bathrooms you know of course to go to whether you're disparaging that Brent do not do not do not go there I finally talked some sense into my clients can be kind of hard headed sometimes with some of this stuff they just trust me it just it goes with my territory last thing you cannot put the likeness of a living person I love this rule by the way I would like to know the lawyer who came up with this you cannot put the likeness of a living person or a dead president without consent I don't know how they came up with this one I mean you know don't get me wrong right so for example some of you know there's a wine from some one of the California wineries called Marilyn Merlot and they got a picture of Marilyn Monroe and I'm sure they got that license from her estate I'm sure they're using that with permission you know but I could put I could put the current presidents label look this this videos gonna be around for a while I hope so I don't want to use names I I could put the current presidents likeness on a bottle of beer and no one would say anything but if I try to put Millard Fillmore's picture on a bottle of beer it's a problem I this is what I don't get I have to be honest with you I mean I'd like to think that the laws are at least somewhat logic this is one that defies understanding by the way be very careful about celebrities you know do not put a photo of Elvis on anything because his estate is brutal about going after people and preserving what they call his right of publicity even though he's been dead 40 years he still has the writer playwright at felicity their right to his own likeness and image certain celebrities enforced that better than others you know but the Elvis people and Disney I mean do not mess with the Maus somebody a couple of years ago tried to do a Mickey Mouse emoji right the Disney people and these sweet people all they do or fairy stories for kids right these sweet people all right they came down on this guy with baseball bats I mean this guy now cannot even use his own name in commerce after what they did with him you know tradition by the way trademarks there was a guy who did cookies in the 70s anybody remember Famous Amos back in the 70s when he sold his business they made him sign an agreement that he could not use his name on any other product or service again for the rest of his life he could do anything he wanted to do but he couldn't call it Amos or anything like that because that was considered an infringement so sometimes people get really nuts about this stuff okay the name cannot be trademark we're talking now about was trademark Abel and what is it a name cannot be trademarked if it is confusingly similar to another mark so that microsoft toilet tissue for example i mean that would be a good example you know or let's say you take an existing name and you just changed a couple of the letters or something here's the key if you're in a supermarket and these two things were side by side is there a risk that you would pick up the wrong package you you want a but you pick up B instead because it looks similar if that's the case you're not gonna be able to get your trademark trademark examiner's also are very graphic very visual people I mean what they do is they do a trademark search they print out this whole list of trademarks and then they go through saying okay is that too close is that too close okay that money might be too close I gotta talk to the client about that one this is what they do it's very very visual type work you know the Patent and Trademark Office has extremely broad discretion to make this determination hire a lawyer to do a trade a thorough trademark search do not rely on the trademark offices online service the trademark office has actually a very good service it's called testy ESS it's very easy to find on the USPTO gov site and if you go on there and type in the name that you want to trademark it will tell you if anybody else has it and it will show you all the listings and all that stuff now it's good but I wouldn't base a trademark filing on it's a great way to research names and see how popular they are it's because it's free I mean you can spend as much time on that site as you want to but when it comes to actually doing a filing hire an attorney and have them do a trade a thorough search because here's why well the tests system will pick up a name that is exactly the same as the one you want to use it will not pick up a logo that has the name as part of it so let's say for example you want the name frugal framesi okay you put it in it'll do the search and you'll say nobody else has the name frugal promise but in fact there is a company somewhere in the world that has a logo that incorporates the name frugal Framus as part of the of the pictorial that will not show up in the search and you may end up with a cease and desist letter even though you thought you did a pretty thorough search so do not rely on the search system generally it costs about five hundred to a thousand dollars to do a thorough trademark search a correct the correct way spend the money it is well worth paying it's always deductible on your taxes legal fees are always deductible on your taxes take advantage of that I mean I will tell you I'll tell you Mike here is my heartbreak story here which I will tell you right now one of my very first clients that I had this is way way back now going back many years these were two ladies they had gone to nursing school together they became friendly they were going to become obstetric nurses gynecological nurses dealing with newborns and and you know the birth process and they had a great idea for a magazine for new moms you know for first-time moms and they were going to promote this in ob/gyn offices they were going to give this out free to every ob/gyn office in the United States and survive on advertising you know because the bus base that the birth market is huge it was actually a great idea and they had the perfect name for it the absolute perfect name which I cannot tell you of course I begged them to do to get a registered trademark back then a registered trademark and only battle over a thousand bucks now it's more like 2,000 2,500 to do it the right way and they just said we don't have the money we really don't want to spend money you're building a national brand here you definitely want to have the trademark please get that trademark registration I would rather you pay that lawyer than pay me they wouldn't listen they went ahead they did extremely well they got almost a million dollars in advertising in their first year in print they were starting to some some pretty big companies were starting to knock on that door they had a very good idea with this okay but then they got a nasty letter from a law firm in California that represented one of the biggest HMOs in California and that turns out that this HMO very powerful company was using that exact same name not in a publication for the public but in for their in-house employee newsletter they had about 3,000 employees nationwide and the newsletter they got every month was called this and they had gotten a registered trademark on that for newsletters and magazines so I tried I fought I did I almost got on a plane and flew out there to try to meet with those people to see if we could have negotiated some but they would not back down they saw what my clients were doing is as infringing my clients had to go back to all their advertisers they came up with a new name that was actually you know fairly good but they went back to all their advertisers and all their advertisers pulled out overnight because they had committed to that name okay once you start listening advertising and getting people to depend on your name that becomes essential that brand is everything they were trying to build a national brand without a registered trademark and that's what happened to them and again if they had gone to court maybe they would have won to be honest with you I mean this was not a publication for the public I could have made some very good arguments that these two things are like apples and oranges but let's face it these people did not have the money to go fighting a huge multi-billion dollar corporation halfway across the car on the other side of the country they simply could not do that so that's the situation you don't want to be in I name may be trademark Abel if it is suggestive of what the product does so Coppertone remember tanning oil and tanning lotion you know it makes you look like your copper arbitrary arbitrary names are the best monster what does monster have to do with looking for jobs online what does camel have to do with cigarettes what does you know what does eBay meet doesn't mean anything it's pig latin for B as all it is here's my rule the less your name has to do with your product or service the better it is the better it is okay pick a name that has nothing to do with what your product or service does and you're probably close to getting a registered trademark okay let's talk about copyrights here we're gonna do something a little bit California here because there's a lot of confusion about what a copyright is and want you all to close your eyes here and I want you to picture the Mona Lisa can you do that see nobody closes their eyes when I do this you know try it do it with your eyes open but try it it's better if you close your eyes don't know but nothing bad is gonna happen I'm not gonna play with your phosphenes or anything like that just picture the Mona Lisa and now pretend you're putting it it's lying flat on a table everybody can do that okay now about 18 inches above the painting now create in your mind a hologram of the Mona Lisa it looks exactly like the Mona Lisa except it's a hologram it's it's not it's 3d but it's you can't touch you can't touch it if you try to touch it your finger goes through it it's not you can't you can see it but you certainly can't do anything with it it's not a tangible thing now last but not least then you can open your eyes take the painting move it off the table in your mind but leave the hologram where it was over the hovering over the table can you do that okay now open your eyes that's the hologram is what a copyright is whenever you create a work of authorship it's easy to do with the painting but this could also be a literary work a musical composition I just like using the Mona Lisa because everybody knows the Mona Lisa looks like the whenever you create a work of art a hologram forms in the air above it and it looks exactly like the work of art down to the last brushstroke but it's not tangible it's it's not something you can put your hands on it's an intangible set of Rights that we call a copyright okay and the copyright moves independently of the work of art that's why I had you take the Mona Lisa off the table if you're an artist you can sell your art at art shows at you know arts and crafts shows and galleries but you still own the copyright to a work that is in fact there are copyrights actually very valid and enforceable copyrights to works that no longer exist some of the paintings of like early paintings of Picasso and stuff were destroyed by the Nazis during World War two yet their copyrights still exist even though the works themselves went up in flames for you know 70 80 years ago these things can happen copyright moves independently of the work of art itself just because you bought a painting you know I'm Mark Rothko or something at a gallery does not mean you have the right to make copies okay what is copy again has nothing to do with ownership it's basically the right to make copies here's a word that actually means what it says copyright is the right to make copies it's the right to reproduce this work of art to publish it if it's a book or a work of music to make lithographs or serigraphs if it's a work of art and make money from those reproductions and it contains a bundle of Rights picture make believe that I'm holding a bunch of pens in my hand okay this is what a copyright is a copyright is a bunch of pens when I create a work of art all the Pens are in my hand and as I do deals with people I give away some of those pens along with it I may give all of them away but I may only give some the Pens that I don't give away are the ones I get to keep and that's how a copyright works a copyright is not just one thing it's a bundle of things we'll talk about that right now what does copyright protect it protects original works of authorship literary dramatic music art poetry novels all the usual suspects computer software and since 1990 architecture if I'm an architect and I design a very distinctive business with a recognizable profile think of the bird's nest stadium in Beijing or the Bilbao the Guggenheim Museum in Bilbao Spain okay I can actually try copyright that design so nobody else can do a museum that has exactly that same design only since 1990 though that's a fairly recent addition to the copyright laws it also protects derivative works so if I create a if I create a popular Broadway play and Hollywood comes along and wants to make a screen and make a movie out of it you know they're gonna have their people do the screenplay but I own the copyright to that screenplay and to that movie unless of course I assign it to the production company which of course I probably will you know but hey look if I write a book and they make a movie out of it you know I will never have to work a day again the rest of my life so that's a deal that I'm going to take let's put it that way okay it does not protect ideas although it may protect the way the ideas are expressed so for example if I wanted to create a series of books about this young boy who's kind of a loner and nobody likes him and all the sudden he discovers he has magical powers and all of a sudden this guy comes and taps him on the shoulder and shows him this wonderful school where he can learn how to be a wizard along with other people who are like him does this sound like a book you know about right as long as I can do it as long as I don't make the character look too much like Harry Potter I can do that in fact an author did do this recently his name is Lev Grossman he wrote a book a couple of years ago called The Magicians he actually made a series out of it they just made a movie out of the first version what he did was he took the basics of the the skeleton of the Harry Potter story and he transmitted it to college is what he did if his story was about a group of young wizards who discovered later in life that they had these powers and they go to a wizard in college as opposed to a wizard in grade school and of course the books are totally different I mean he did not rip off any thing from Harry Potter at all these are very different stories but the basic architecture of the stories are of his stories are exactly the same as the Harry Potter stories but they're catering obviously to a much different audience a much different set of issues I'll give you some good cases on that later okay again I apologize for the type on this slide is very small your website if you any original content can be copyrighted if you're writing the content for your website you should absolutely put the copyright notice at the bottom the C in the circle and all of that we'll talk about that in a minute your domain name no the only way to protect the domain name your whatever dot-com is by registering it as a federal trademark your recipe for baked beans no if it's a mere listing of ingredients that cannot be copyrighted on unless you accompany it with substantial literary expression so if you ever read a cookbook have you ever seen a cookbook recently where it's just recipes no they always have these stories I was walking down a street in Verona Italy and I had all of a sudden I smelled this wonderful gnocchi you know they do that this is why they do it because they can get the copyright on the story you know as planned the recipe as part of it okay but the actual recipe itself cannot be copyrighted I just read a book just the other day it was a memoir by Dean Martin's daughter and at the very end of the book he actually has a recipe for Dean Martin's favorite pasta fazool you know when the moon hits your eye like a big bear that he actually had a favorite recipe for pasta fazool that came from his grandmother and she had the recipe in the back of the book that's copyrighted because it's in the book you know it's part of him for memoirs of her father anyway your company name no you have to get a trademark for that databases are very complicated you cannot date that you cannot trademark the contents of a database but you might be able to get a database a copyright on the way the database is structured the database architecture anybody here doing database software call me at the end of the program this gets very very complicated I can't make general rules on this one when does copyright attach at the moment of creation you do not have to register your copyright to register to register your copyright with the Copyright Office to protect it however if you want to sue someone for damages you do have to register your copyright with the Copyright Office that's one exception if you just want somebody to take something down because they're infringing that's okay you don't have to register your copyright for that but if you're looking to sue somebody for damages because they had it up on their website for several years without your permission and you just found out about it for that you have to have a registered copyright except but with that one exception you do not have to have a registered copyright what you do need to do though is prove the date of publication this is just like we talked about with patents right you you you publish a work somebody comes out of the woodwork and says hey you infringe me I've been in this work I wrote that same book 30 years ago you just ripped me off so now we have a battle over who comes first okay it's exactly the same as I said in patents you have to prove when was the date in publication years ago people used to do something called poor persons copyright poor man's copyright but we me take the sexist language out of everything nowadays poor person's copyright is when it's calling now basically what people would do they get a manuscript they go to a Kinkos they get several copies made up and what they would do is they would mail them to themselves they mail it they would seal the envelope in such a way that it could not be just opened by accident and then they would mail these copies to themselves because the postmark would act as a date proof of publication that the work was in existence on that particular day now this is hard to do nowadays because they don't always put dates on postmarks anymore do you get letters in the mail that don't have dates on the postmarks so you got about you may have to do this several times before you get the actual date on the postmark I have known people actually to go to the postmark and request a hand stamp because they want to get that date on the envelope and make sure that the envelope is hermetically sealed if anybody could open that by accident you know so put tape don't just put tape on the top put it on all the edges seal that sucker if you're gonna play this game so that's the thing what you must do is you must put the statutory copyright notice on and that's what it looks like the copyright symbol or you could actually write out the word copyright to although these days it's very easy if you have Microsoft Word go to insert symbol and the copyright symbol is right there so you can you can easily use the symbol the year in which you wrote it by Clifford RN echo all rights reserved all rights reserved is not part of the statutory copyright notice only the C in a circle the year and the name are the statutory copyright notice but I always put the words all rights reserved remember I talked about the Pens copyright being a bunch of pens okay what all rights reserved says is if I don't sell you all of my pens the ones I don't sell you I keep I'm holding on to the whatever pens I don't sell you I hold on to that's what the all rights reserved means that's very valuable language I'll keep that up for just a minute sometimes it's a bad idea to register by the way a lot of people don't always register their stuff especially literary works they don't do them upfront because there are people out there called copyright trolls and these are not bad people or even short people these are sometimes big companies or sometimes it's foreign governments you know there are people who comb the copyright records looking for ideas for their new books an author's say who has writer's block is having trouble thinking of a new plot he'll look at some of the new registrations in the copyright oh wait a minute Horry about this wizard kid oh I could do a lot with that okay don't worry I won't make it I felt I don't even want to know about it I'm not even gonna look at this book because I'm afraid that I might do something too close to it so but that idea the wizard kid who goes to this care I can create a whole world out of that like really good I can make a zillion dollars out of that people do that they look for ideas remember you cannot protect an idea you cannot patent trademark or copyright an idea that you can't do you know there are people out there that do it but again if you sooner or later you are going to have to register it my advice to you is get your work published by a big company who would like app or a publisher and who will then register the copyright for you you know if Random House copyrights my new book I don't worry so much about being in French that's their headache they own the copyright they got teams of lawyers very highly paid lawyers and they'll go after anybody who tries to rip off my books okay but little cliff ethic Oh working out of his home office and his bathrobe and bunny slippers that's not going to happen I'm not going to take on you know a major infringer especially if it's some writer in China or something how the heck do I sue somebody in China okay here's how you register your copyright you must submit to the Copyright Office the correct application form a non-returnable copy of the work and it must be in paper or audio recording you cannot send them a digital file yet they're working on that right now in the next couple of years this probably will be no longer the case but for right now while the application form can be electronic the proof of publication the non-returnable copy of the work has to be in paper or audio recording format you cannot send a DVD at least not quite yet there's a filing fee which is 40 to 80 dollars a work and you can file application electronically but then you have to send the proof the copy of the work by overnight mail is how you have to do that they're still working on there they're not quite in the 21st century their foreign works the good news is we have something very good here unlike patent or tr