Over the years, the Firm’s corporate clients have come to us complaining about infringements upon their intellectual property (“IP”). Many times, to their dismay, these clients have found themselves under protected, because the company did little to protect the key ingredients to their corporate success.
At Assouline & Berlowe, we have found that even as IP becomes more accepted as an ingredient in valuing corporate worth, we observe frequent instances of:
• Companies using logos and slogans without obtaining registered trademarks;
• Companies drafting significant amounts of text without obtaining copyright registrations (e.g., websites, instruction manuals, handbooks, brochures, etc.);
• Companies employing and contracting with artists, authors, musicians, web-designers with no clear understanding to who will own the works created;
• Companies creating products without obtaining patents; and,
• Companies creating massive customer lists and proprietary information and taking no action to protect these trade secrets from their former employees and others.
We encourage our clients to protect their IP with a safe and methodical manner. This methodology requires that our clients implement and maintain an Intellectual Property Management Program. An IP Management Program consists of a team of employees focused on developing and performing a set of procedures that (1) recognizes the corporate IP, secures the corporate IP, and maintains corporate IP; (2) exploits the IP; (3) prosecutes IP infringements; and, (4) respects the IP of others.
Step 1: Recognizing, Securing and Maintaining IP’sInitially, a company must designate a person or team charged with the responsibility of creating and enforcing the policies and procedures associated with its IP’s. This person or team must recognize those IP’s that it can patent, copyright, trademark, as well as those IP’s that the company alone considers trade secret, confidential or proprietary.
Products and inventions must be evaluated for patentability, and if so, patented the with the USPTO. Logos, slogans, and trade-names should be trademarked by applying with the USPTO and any State Office. Written, Artistic, and Audio Works should be registered for copyright protection with the US Copyright Office.
Customer lists, designs, formulas, patterns, processes, and strategic and marketing plans must be kept in a secure location and exposed only on a need to know basis. Employment agreements containing trade secret and non-compete provisions must be executed with all employees, with copies in both an individual’s employment file and in a master file for all employees.
Ownership of IP’s must be determined from the start. This means: (i) having employment agreements with employees clearly defining that the fruits of their labor is the intellectual property of the company; (ii) having work-for-hire agreements with vendors that state that the IP’s they create are owned by the company; (iii) having written licensing agreements with anyone who the company allows to use the IP’s.
Once a company has obtained registration of its IP’s, it should use the appropriate recognized symbols on its IP’s, such a ® for Registered Trademark and © for Registered Copyrights.
Step 2: Exploiting IP’s
Companies must look for ways to market and use its IP. This can include contracting for exclusive and non-exclusive licensing of copyrights, trademarks, and patents and franchising of trademark usage. Trademarks and service marks should be used prominently and frequently to establish brand recognition and customer goodwill. Advertising the fact that you maintain Trade secrets can also have a strong affect on branding or the uniqueness of a product. . . for instance a tasty secret recipe. These are just a few of the ways a company can exploit its IP’s
Step 3: Prosecuting IP Infringement
When the companies’ IP are infringed, the company should immediately send out cease and desist letters. If the cease and desist letters are ineffective, lawsuits should be commenced immediately. Where appropriate, injunctions should be sought. This is the case when a former employee steals customer lists or trade secret and proprietary information. In the context of competing patents, trademarks, and copyrights, commencing administrative actions in the appropriate federal or state agency should be considered.
Step 4: Demonstrate and Insist on Respect of the IP Rights of Other Companies
Educate all employees as to what constitutes an IP and what the penalties are for infringement. Companies should perform patent, copyright and trademark searches to see if there IP may be infringing upon another’s IP. Written works should be evaluated for providing proper attribution to other authors. Companies should obtain licenses to use the works or inventions of others when expanding upon already existing IP. Furthermore, companies should not conduct espionage on its competition, and they should carefully scrutinize the intake procedure of new employees that are hired away from the competition.
Costs/Benefits of an Intellectual Property Management Program
While IP Management programs can cost significant amounts of time and money, the attorneys fees of one lawsuit alone can far exceed the cost of implementation. In today’s competitive marketplace, no company should be without an Intellectual Property Management Program. Call us to discuss starting an IP Management Program for your company.
Peter E. Berlowe, Esq.
ASSOULINE & BERLOWE, P.A.
Intellectual Property, Labor & Employment Law, Bankruptcy, Commercial Litigation, and Corporate Law
Miami · Ft. Lauderdale · Boca Raton