Copyright and the King, this time Martin Luther King Jr.

Today is a momentus day. It’s the second inauguration of Barak Obama, the first African-American President of the United States.  Today is also the day on which we honor the memory and legacy of Martin Luther King, Jr., the greatest American civil rights leader of all time. 

Unlike President Obama, however, Reverend King lead from the sidelines not as a politician but as a voice of conscience.   While President Obama can give a good speech none compare to the speeches Reverend King gave on bad days.  Reverend King was one of the greatest orators of all time.

But Reverend King was not an elected official.  When he gave a speech, whether from the pulpit of a church in Memphis or from the steps of the Lincoln Memorial in Washington DC, he did so as a public citizen.  Under the copyright law in effect while he was alive, Reverend King retained the copyright in his speeches regardless of their import to our society.  Had Reverend King been a federally elected politician or appointed official the copyrights would vest with his employer, the American people, and be in the public domain.

However, as a lay leader with a talent for words one of the greatest legacies he left his widow and children were the value those words had.  Associates of Reverend King speak of his generosity but it is important to remember that when he died at the hand of an assassin in my hometown, he had left nothing other than those words for his family.  In fact it is likely that Reverend King knew that the words he wrote had value as he registered the copyrights in his speeches with the Library of Congress as the Copyright Act of 1909 required.  

Over the years since Reverend King’s untimely passing his widow, and children, have struggled with balancing their interest in his legacy with the interest we all have in it. They have exerted control over the words to prevent uses that they felt would not honor Reverend King’s legacy, as well as situations where the use would compete with their interests.  Exerting that control is well within the family’s right as the holder of the exclusive rights to the copyrights in the speeches Reverend King wrote.

Though King’s family is well within their rights when they exercise control over the speeches, many (okay probably most) people find the practice discomforting.  Didn’t Reverend King write those words for all of us?  Aren’t we all supposed to heed the words in his speeches? 

Slate has published an editorial which supposes that tweeting the words of a Martin Luther King speech would be a form of civil disobedience because the action would infringe the copyrights.  The author of the article completely ignores that some uses of the speech, in its entirety as well as segments, may be appropriate without permission from, or compensation to, the King family under the concept of Fair Use.  According to the editorial, a video was removed from YouTube because it included a clip of one of Reverend King’s speeches as an example of copyright being too restrictive.  As I can’t find the video I can’t comment on how the clip was used but it seems to me that Mr. Ammori, the author of the ediotrial, could have made a fair use argument under the commentary exception.  However, instead he, like others, attacks the concept of copyright because the King family feigns to control Reverend King’s legacy.  Most importantly he ignores that Reverend King took the time to register his copyrights to prevent his works from being deemed to be in the public domain.

Intellectual Property Enforcement: Have your voice heard

The Prioritizing Resources and Organization for Intellectual Property Act of 2008 (the “PRO-IP Act”) enhanced civil and criminal penalties for intellectual property infringement as well as established the Intellectual Property Enforcement Coordinator to serve in the Office of Management and Budget at the White House. The Intellectual Property Enforcement Coordinator has been charged with overseeing, and contributing to, the development and implementation of the Joint Strategic Plan, an inter-agency plan to combat intellectual property counterfeiting and infringement. The first Joint Strategic Plan, published in 2010, focused on (1) leading by example through a policy of not purchasing or using infringing products; (2) increasing transparency; (3) ensuring efficiency and coordination between agencies and with state and local governments; (4) enforcing rights internationally; (5) securing the supply chain; and (6) building a data-driven Government.

However, Congress recognized that plans to combat intellectual property infringement would need to evolve over time. Therefore it required that the Joint Strategic Plan be revisited every three years. In preparing for the next Joint Strategic Plan, Victoria Espinel, the Intellectual Property Enforcement Coordinator, has requested input from the general public to create a strategy that is “forceful yet thoughtful, dedicated and effective, and that makes good and efficient use of our resources.” Ms. Espinel has stated that “who better to play a key part in shaping the new Strategy than you, the American people.”

Initially, Ms. Espinel seeks specific recommendations from the public regarding the Federal government’s intellectual property enforcement efforts. The recommendations may address any issue related to intellectual property and call for responses ranging from legislation and regulation to changes to practice. Each recommendation, however, should include:

1) a detailed description that states the issue;
2) a solution; and
3) identify the agencies responsible for implementing the recommendation.

Additionally, to obtain specific information, Ms. Espinel has requested feedback to a series of questions which address the issues the Joint Strategic Plan should cover. The scope of the questions is broad, ranging from cooperation between the private and public sector for intellectual property enforcement to steps that the U.S. Customs and Border Protection can take to improve the e-recordation system. Significantly, the Coordinator has requested input on authentication tools and track and trace technologies that the federal government could use to identify counterfeit or pirated goods.

There is no one way to write comments. Comments can range from 50 page formal proposals to informal responses that are only a few paragraphs long (see examples from the 2010 process)

Here are some easy steps to follow if you would like to file comments in response to Ms. Espinel’s request:

1) Read the Request for Public Comments.
2) Follow the formatting and delivery instructions provided in the Notice>
3) Identify the issues on which you are commenting.
4) State your credentials in the licensing industry (licensor, licensee, attorney, etc.) and address the issues from your experience.
5) Indicate whether you are responding as an individual or from an official capacity for an organization or company. If you are provide some information about the organization and its interest in the issue.
6) Provide real-world examples in your response based on your experience in the licensing industry.

Please note that comments are due by 5 p.m. on June 25.

Developing a Code of Conduct to Implement The Consumer Privacy Bill of Rights, Round 1

Earlier this year President Obama released the “Consumer Privacy Bill of Rights” as part of the “Consumer Data Privacy in a Networked World: A Framework for Protecting Privacy and Promoting Innovation in the Global Digital Economy.” The Consumer Privacy Bill of Rights sets forth the rights and expectations individuals should have with regards to the use of personal data on internet and digital networks. The rights are:

1. Individual Control: Consumers have a right to exercise control over what personal data companies collect from them and how they use it.

2. Transparency: Consumers have a right to easily understandable and accessible information about privacy and security practices.

3. Respect for Context: Consumers have a right to expect that companies will collect, use, and disclose personal data in ways that are consistent with the context in which consumers provide the data.

4. Security: Consumers have a right to secure and responsible handling of personal data.

5. Access and Accuracy: Consumers have a right to access and correct personal data in usable formats, in a manner that is appropriate to the sensitivity of the data and the risk of adverse consequences to consumers if the data is inaccurate.

6. Focused Collection: Consumers have a right to reasonable limits on the personal data that companies collect and retain.

7. Accountability: Consumers have a right to have a personal data handled by companies with appropriate measures in place to assure they adhere to the Consumer Privacy Bill of rights.

In addition to setting forth the Consumer Privacy Bill of Rights, the Framework calls for the National Telecommunications & Information Administration (the “NTIA”) to convene stakeholders to develop codes of conducts which the Federal Trade Commission(the “FTC”) will be able to enforce.

Last week I attended the first of the meetings between stakeholders at the NTIA. Participants represented a wide range of organizations and companies. A show of hands indicated that 25% represented consumer and public interest organizations like the ACLU, CDT et al. The other participants represented corporate and business interests from companies like Facebook and Comcast to developers.

Ostensibly the purpose of the meeting was to begin the process of creating a code of conduct for the protection of privacy of personal data in mobile applications. However, the NTIA decided to focus on just one element of the code, transparency. The first order of business was to go through a directed exercise to identify the issues related to transparency most important to participants. Each attendee was given one minute to speak. Overall the issues highlighted related to consistency of disclosures, context of disclosures, standardizations of processes, conciseness and clarity of disclosures, and timeliness of disclosures.

While I appreciate the facilitated process the NTIA used to guide the conversation during the first meeting, I am unable to provide you any tangible results from the activity. I am hopeful that the stakeholders will have future opportunities to create a valuable code of conduct which the FTC can use as a framework for enforcement. For now, the NTIA has indicated that the next meeting of stakeholders will be in August. In the meantime, I look forward to working with clients and other stakeholders to help craft the code of conduct called for in the “Consumer Data Privacy in a Networked World: A Framework for Protecting Privacy and Promoting Innovation in the Global Digital Economy.”

Ideas and the Law: Using Intellectual Property to Protect You (Trademarks and Trade Secrets)

In the previous posts in the Ideas and the Law Series I addressed the challenges people face protecting ideas once they have been disclosed to third parties. As noted earlier in the series, while the underlying ideas may be available for others to interpret, the way in which you manifest the ideas may be subject to copyright and patent protection. The final installment in the series looks at the roles trademark and trade secrets play.

Trademarks are classified as intellectual property because they are intangible. However trademark law is at its roots consumer protection law. The purpose of trademark law is to prevent consumers from being confused as to the source of goods and services. Marks are the words, logos, and designs that identify the source of goods and services: trademarks identify goods and service marks identify services. While trademark law has its roots in consumer protection, trademarks are now valuable corporate assets.

To qualify for trademark protection, a mark must be distinctive to identify the source of goods and services. The strongest marks are those that are arbitrary and unique (e.g. ACCORD for a car). Weaker marks are those that are descriptive and require secondary meaning to acquire distinctiveness over time, or through investment (e.g. a surname or geographic term). The weakest marks are generic marks where the mark is synonymous with the goods and services to which it applies.

In the United States, certain trademark rights attach automatically to the marks as a result of use in commerce. Fundamentally, under state law, users of a mark may prevent third parties from using the same or similar marks in a manner that could confuse consumers. The degree to which a user of a mark may enforce an unregistered mark depends on a number of factors which differ from state to state.

However, to obtain the greatest amount of protection available for a mark in the United States a mark should be registered with the United States Patent and Trademark Office. A registered trademark has additional rights and benefits otherwise unavailable to trademarks. The owner of a registered trademark has:

The ability to enforce the marks on a national basis;
Access to federal courts for enforcement and statutory damages for infringement
The legal right use of the ® symbol
Recording the mark with US Customs to prevent the importation of counterfeit goods

To obtain a federal registration for a mark, it must meet certain criteria. A mark will not qualify for trademark protection if it is generic. Additionally, a mark that is geographic in nature, primarily a surname or is otherwise merely descriptive may not qualify for trademark protection unless it has become distinctive. Significantly, the mark must not be confusingly similar to other registered marks, or marks pending review.

Trademark rights stem from use in the United States. In the rest of the world, a mark may be registered and protected even if it has not been used in commerce. To be in harmony with the rest of the world, the United States allows users to file applications for registration of a mark that is not yet in use but for which the applicant has a bona fide good faith intent to use within a specific period of time. The USPTO processes “Intent to Use” applications in the same manner as for those in use.

Common law trademark rights are enforceable as long as a mark is used in commerce. A registration with the USPTO is valid for ten years, and may be renewed for ten year terms indefinitely as long as the mark remains in use.

In other countries the first to file a trademark application has priority over other users, even those who have been using the mark. In the United States, a senior user will have priority over a junior user, even if the junior user has the registered mark. However, in other countries the owners of a registered mark will have priority over another user even if the registered mark is not being used in commerce. Therefore, companies launching products or services with the intent to distribute, or manufacture, outside of the United States need to implement a global strategy for trademark registration.

Strategic Practices:

1) Choose marks that are distinctive to identify the goods and services your company offers;
2) Search the USPTO database, and online resources, to determine if there are any marks in use, registered, or pending registration, that are confusingly similar to your mark; and
3) Pursue trademark registration in the countries in which your products will be sold, or manufactured.

Trade Secrets

Trade Secrets are an often overlooked, but incredibly valuable, form of intellectual property. From the original Coca Cola recipe to processes within Wal-Mart and Amazon, some of the most valuable corporate assets are trade secrets. State laws govern what qualifies as a trade secret, and how to protect them.

Nearly every state has adopted the Uniform Trade Secrets Act which defines a trade secret as “information, including a formula, pattern, compilation, program device, method, technique, or process, that: (i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.” However, what qualifies as protectable “information” differs from state to state.

To claim that information is subject to Trade Secret protection “reasonable efforts” to keep the information secret. There are no absolute guidelines as to what qualifies as a “reasonable effort” to maintain secrecy. In addition to limiting access to information to employees and others on a need-to-know basis, companies should implement a comprehensive program to maintain secrecy. The program should be adapted to meet the company’s specific needs but should include marking materials and documents confidential, locking files and doors, requiring passwords for computer access, obtaining non-disclosure and confidentiality agreements from employees, contractors and others.

Strategic Practices:

1) Identify the elements of your business that are unique and keep them secret;
2) Create and implement a “Trade Secret Policy;”
3) Notify recipients of information that the information is secret.

Conclusion

Sharing ideas is an important element of the startup ecosystem. The most common way to protect ideas when discussing business opportunities is to execute Confidentiality and Non-Disclosure Agreements. However, they are not always the best option, and sometimes are not available. Regardless, a Confidentiality and Non-Disclosure Agreement is only as good as the paper on which it written and the person across the table.

Therefore, founders, inventors and creators should implement an intellectual property strategy from the outset. Each form of intellectual property provides different benefits which when combined create the best opportunity to protect the idea which serves as the basis for companies.

Ideas and the Law: Using Intellectual Property to Protect You Part 2 (Copyright)

As previously discussed on this blog, there is little legal recourse available if someone steals your idea. In certain limited circumstances you may have legal recourse but even then you have to have the resources to enforce your rights. Therefore, it is in inventors, entrepreneurs and companies best interest alike to consider what steps can be taken to protect their rights. The previous post in the series addresses the use of patents to protect inventions that are useful.

Another right that protects the unique expression of an idea is copyright. Specifically, copyright grants creators a bundle of exclusive rights that automatically vest in works of original authorship which creators, or assignees, may enforce against third parties. The bundle includes, but are not limited to, the rights to make copies, derivative works, distribute or publicly perform the works. Unlike with patents, copyright attaches automatically to qualifying works once they have been fixed in a tangible medium of expression. A qualifying work can be in nearly any medium, from literary works to websites and databases, as long as the work is original.

While copyright attaches automatically, the Copyright Act of 1976, as amended, provides additional benefits to those copyright owners who register the protected works with the Copyright Office of the Library of Congress. The additional benefits available to owners of registered copyrights include the ability to maintain a copyright related lawsuit in federal court and to register the works with Customs to prevent importation of counterfeit works. Additionally, registration within three months of publication, or prior to the act of infringement, is required to obtain statutory damages.

The exclusive rights that copyright grants, and the ability to register the works with the Copyright Office, vest in the creator of the qualifying works. A creator is generally the person who creates the works. However, in certain circumstances, where there is a written agreement between the parties, the copyright may vest in a third party as a “work made for hire”:

1) Where an employee creates the work in the course of his or her employment duties; and
2) Where the creator is engaged under contract to a third party to create, or contribute to, a collective work; motion picture or other audiovisual work; translation; supplementary works to another copyright protected work; compilation; instructional texts; testing materials and atlases.

Therefore, from the outset, it is best practices to obtain written agreements from all parties, including founders, who create works that copyright may protect.

The term of copyright varies depending on who the creator is, and it can get confusing!

Individual Creator = life of the author plus seventy (70) years
2 or more Creators = life of the last surviving author plus seventy (70) years
Works Made for Hire = 95 years from first publication or 120 years from first creation, depending on which term expires first.

Significantly in the United States creators of copyright have the right to terminate any transfers that purport to transfer all of the rights (an assignment or exclusive license) after thirty five years. Therefore where possible it is best to have works that are vital to a company be treated as a work made for hire.

Strategic Practices:

1) Obtain written agreements from any people who create copyright protected works for your company;
2) Register valuable works with the Copyright Office of the United States Library of Congress; and
3) Include the © notice on any materials your company creates, including the website.

Ideas and the Law: Using Intellectual Property to Protect You Part 1 (Patents)

In the first of the Ideas and the Law Series, I addressed what steps you can take to protect an idea. Technically there is little legal protection available unless the person to whom you disclose an idea has a contractual obligation to keep the information confidential, or otherwise not use it. However, if you have developed your idea into something that qualifies for protection as intellectual property you can prevent a third party from using the protected works without permission, and compensation.

The remainder of the Ideas and the Law Series will discuss the four major types of intellectual property:

1) Patent
2) Copyright
3) Trademark
4) Trade Secret

Patent

A patent may be granted to processes, machines, methods and compositions of matter that are new, non-obvious and useful. An invention can be for a new product or an improvement on an existing product. Patents are the exclusive rights inventors have to prevent others from making, using, selling or importing their inventions without permission.

The rights are not automatic. Inventors must file an application that sets forth the claims to which the patent would apply with the government to obtain the patent. In the United States, the Patent and Trademark Office can award three types of patents:

1) Utility Patents for discoveries and inventions for a term of 20 years;
2) Design Patents for new and original ornamental design for a term of 14 years; and
3) Plant Patents for the invention of, or discovery of, and asexual reproduction of a new plant variety for a term of 20 years.

To obtain the benefits of a patent, an application must be filed that is both timely and in the right person(s) names. The patent application must be filed in the names of all inventors who contribute a “definite and permanent idea of the complete and operative invention” to the conception of the invention. Under current law failure to file a patent application within one (1) year of the public use, sale, marketing or publishing description of the invention will result in the invention passing into the public domain. In the event that a patent issues on an invention that is later challenged evidence of disclosure of the idea prior to one year before the application was filed will result in the patent being cancelled. However claimants can stop the clock after the initial disclosures by filing a provisional patent application which provides applicants an additional year to file the full application.

Significantly, in September 2011, President Obama signed the American Invents Act, a patent reform bill, into law. The Act, once fully enacted, will overhaul the manner in which patents are prosecuted and enforced. Significantly, beginning on March 16, 2013, the United States will transition from a first-to-invent jurisdiction to a first-inventor-to-file jurisdiction. The transition will create a “race to the courthouse” situation for inventors, and potentially be devastating for small inventors.

Strategic Practices:

1) Share the invention sparsely with people who need to know and only subject to a Confidentiality Agreement
2) Keep an “Invention Notebook” that sets forth the claims of the invention, when disclosures were made, and other pertinent information
3) Have written agreements with all people (employees, contractors, friends) who contribute to the invention

Come back for the next Ideas and the Law post on Trademarks!

The Myth of the Start-Up

Chris Dixon has posted a thoughtful analysis about the Myth of the Overnight Success on his blog. He writes:

You tend to hear about startups when they are successful but not when they are struggling. This creates a systematically distorted perception that companies succeed overnight.

Similarly, there is a general Myth of the Start-up that makes starting a company look easy. Many companies that people commonly refer to as a Start-up are not in fact start-ups in the most basic definition of the word. For example, Priceline was developed in house at Walker Digital and MySpace was a project of an existing marketing company. Neither company struggled through the early stages because they were incubated within larger organizations that provided for their care and feeding. Twitter is another company commonly referred to as a start-up that was incubated within a well funded organization.

Starting a company is hard! Building a company requires patience, perseverance and hard work. Don’t fall for the Myth of Overnight Success OR the Myth of the Start-up!