Changing how you address Intellectual Property Issues Tips for the Institution and those who support it.

Changing how you addressIntellectual Property Issues

Tips for the Institutionand those who support it

Changing how you address Intellectual Property Issues

Tips for the Institutionand those who support it

Brian R. GilomenDePaul University

School of Public Service

Topics Addressed Today:

• Backgrounds (mine, and yours)…• Expectations…• Definitions critical to a reasoned

discussion of Intellectual Property

Topics Addressed Today:

• High-level IP concerns from the viewpoint of:

The Institution (primary focus)

Institutional staff

Consultants and service providers

Topics Addressed Today:

• Then: Questions; Discussion; Wrap-Up

• But First – a Quiz:

What does this slide background represent to you?

• Let’s try to change your view of IP issues into this:

•

My Background

• An attorney and an unapologetic geek (which fostered an interest in IP)

My Background

• Started career representing energy clients and licensing nuclear power plants (applied particle physics!)

• Ended up in-house in the telecom sector: ultimately V.P./General Counsel of Internet Services for SBC (now ATT)

My Background

• I was the attorney clients would turn to first with IP-related questions– Initial issue screening & triage; referrals

to IP subject matter experts

My Background

• Currently Adjunct Faculty with the Graduate School of Public Service of DePaul University–Teaching Administrative Law and, of

relevance to NCDC, Law and Nonprofit Organizations

Your Background

• Members of NCDC; folks supporting NCDC mission as “the fundraising resource for Catholic organizations and their sponsored ministries…” (I’ll use this example in a moment)

Your Background

• You represent many different disciplines, but most are directly involved in development/fundraising

• Thus, a focus today on IP issues that might impact Catholic institutions (my view/example: education institutions) and development efforts

Expectations• To offer helpful (not comprehensive)

tips for changing how you deal with Intellectual Property issues; and how to deal with them effectively

• Surprising level of impact of such issues in your field

Definitions

Definitions• The world of Intellectual Property

(“IP”) is full of Legal Jargon• Here are the most germane for us

today:

Definitions• Intellectual Property:

“Legally recognized exclusive rights to creations of the mind”– Intellectual Property Licensing: Forms

and Analysis; Raysman, Pisacreta and Adler; Law Journal Press, 1998–2008

Definitions• Owners granted exclusive rights to

their intangible cerebral creations• Examples: musical, literary, and

artistic works; discoveries and inventions; words, phrases, symbols, and designs

Definitions• Common types of intellectual property

rights include:–Copyright–Trade secrets–Patents…

Definitions• Common types of intellectual property

rights include:–Trademarks/Service Marks

And the related:– Industrial design (think Apple…)–Trade dress (think Apple again…)

• Let’s discuss each

Definitions• Copyright:

Legal grant, to the creator, of an original work, of exclusive rights to its use and distribution (note commas)–Usually for a limited time– Intent: to enable the creator to receive

compensation for intellectual effort–Likely to be your greatest concern

Definitions“Our MissionNCDC is the fundraising resource for Catholic organizations and their sponsored ministries, providing education, advocacy and leadership.

The National Catholic Development Conference is the United States’ largest membership association of charitable religious fundraisers. Our nonprofit membership consists of religious communities of men and women, shrines, social service agencies, schools, parishes, dioceses, seminaries and international relief agencies”

Definitions• Source: http://ncdc.org/who-we-are/

(retrieved 2014-8-28)• And, at the bottom of the web page:

“Copyright National Catholic Development Conference. All Rights Reserved”

Definitions• Trademark (and “Service Mark”)

Recognizable sign, design or expression which identifies products or services of a particular source from those of others–http://www.uspto.gov/trademarks/basics/

definitions.jsp (retrieved 2014-8-28)

Definitions• Typically a name, word, phrase, logo,

symbol, design, image, or a combination of these

Definitions• Non-conventional trademarks exist

which don’t fall into those categories: perhaps based on color or sound–T-Mobile: color Magenta– “Intel Inside”: 4-tone sound

Definitions• And, trade dress: a form of

trademark protection that protects the “look and feel” of something

• Broader than traditional trademark; extends to the tangible and intangible aspects of the object: shape, layout, color palate…

Definitions• “Apple has successfully secured a

trademark for the design of its retail stores. Trademark protection was applied for in 2010 and granted last week according to documents filed at the US Patent and Trademark Office”– http://arstechnica.com/apple/2013/01/apple-granted-tr

ademark-protections-for-the-interior-of-the-apple-store/ (retrieved 2014-8-29)

Definitions• “Stores are meticulously designed down

to the last detail, including special architectural glass panels (patent pending), floating glass staircases (patented), stainless steel exteriors, and even the lightly colored birch tables on which the arrays of demo iPads and MacBook Pros sit” (Id.)

Definitions• Trademark issues surface if you have

one and want to protect it, or when you use the trademark of another

Definitions• Patent:

A limited duration property right relating to an invention, granted by the USPTO in exchange for public disclosure of the invention–http://www.uspto.gov/trademarks/

basics/definitions.jsp

Definitions• An “invention” = non-obvious, novel

product or a process that is solution to specific technological problem

• You are less likely to have patent issues unless your entity is involved with invention creation (or seeks to use the inventions of others)

Implications for the Institution

Implications for the Institution• Approach:

Analyze whether the Institution is:–The producer/provider of IP,

or

–The consumer of IP

Implications for the Institution• Regarding the former: must protect

your rights; maximize your reward• Regarding the latter: must protect

your posterior; minimize your liability

Implications for the Institution

Institution as producer/provider:

Implications for the Institution

Institution as producer/provider:• Copyright:• First: explore/identify every kind of

original expression of work that the Institution creates that might be defined as, and worthy of, copyright protection

Implications for the Institution

Institution as producer/provider:• Consider protecting any original

writing/expression, no matter the media• Printed media is obvious. More

germane these days are websites, blogs, solicitation emails…

• But: what about Facebook? Twitter?

Implications for the Institution

Institution as producer/provider:• Then: have written policies and

procedures in place to effect that protection!–Created by and adopted by Board;

incorporated in employee handbook; made part of new employee package

Implications for the Institution

Institution as producer/provider:• Trademark: If you like what you use,

protect it!–Make it distinctive–Difficult to uncover similar marks

• Once again: anticipate; have policies/ procedures to obtain protection

Implications for the Institution

Institution as producer/provider:• Patent: most difficult of all to address• Research Institutions: discoveries/

inventions often distributed through technology transfer and moved into commercial sector for development into useful products

Implications for the Institution

Institution as producer/provider:• 1980 Bayh-Dole Act authorizes

universities to retain patent and licensing rights resulting from federally funded research

• U.S. Patent system an integral part of process

Implications for the Institution

Institution as producer/provider:• But: “Goldilocks problem”: can easily

try to patent too soon, or too late–Either can result in great and

unnecessary expense

Implications for the Institution

Institution as producer/provider:• So: anticipate; have policies and

procedures to obtain protection• Seek excellent counsel for this one

Implications for the Institution

Institution as producer/provider:

In sum, change your practices to:–Catalog your IP; understand its value–Manage it effectively: obtain and

enforce your rights; license wisely–Accomplish all of the above via carefully

drafted/enforced policies/procedures

Implications for the Institution

Institution as consumer:

Implications for the Institution

Institution as consumer:• Analysis identical whether the

Institution uses material subject to copyright, that is trademarked/service marked, or that is subject to patent protection

Implications for the Institution

Institution as consumer:• Do you have the right to use what you

are using?• Can only make that call after:

–Recognizing the external IP–Knowing what rights attach to that IP–Knowing whether your use is exception

Implications for the Institution

Institution as consumer:• Exceptions? Assume they don’t

apply, but under certain limited circumstances copyrighted works, for example, may be used without license from copyright owner– “Fair use” exception might apply

Implications for the Institution

Institution as consumer:• Serious liability, and bad publicity, lie

in wait for infringers• Thus, change your practices to adopt

well-conceived Institutional training, policies and procedures

Implications for Staff

Implications for Staff• Staff’s job is to support and perfect

the Institution’s rights and interests• Institution is non-sentient; staff = tool

to accomplish Institution’s mission–To do otherwise is malfeasance; conflict

of interest

Implications for Staff• Where Institution is producer of IP,

Staff must:–Understand what is IP; catalog it;

determine its value–Manage the IP effectively: obtain and

enforce rights; license wisely

Implications for Staff• Where Institution is consumer of IP:

–Staff is the source of Institutional liability. It is Staff that invariably, for example, copies the software, plagiarizes the content, misuses the registered trademark…

Implications for Staff• Staff therefore must change so as to:

–Recognize the external IP–Determine what rights attach to that IP–Explore whether your use is exception –Acquire rights if necessary/desired–Stop infringing if unwilling/unable to

obtain rights

Implications for Staff• Accomplish all of the foregoing via

carefully crafted and enforced policies and procedures

Implications for Staff• Where Institution and Staff interests

regarding IP might diverge:

When Staff is permitted to perfect personal rights to IP

Implications for Staff• Such personal rights rarely the rule;

most staff-created IP is within scope of employment, paid for by salary and thus owned by Institution

• Staff rights will be (should be!) covered by explicit terms of employment; policies

Consultants/Service Providers

Consultants/Service Providers

A bit of a chimera:• Offer support for Institution’s mission,

rights and interests, but…• “Enlightened self-interest” also often

in play

Consultants/Service Providers• Example: who retains rights to

consultant-produced IP?• Fertile battleground of “work for hire”

(institutional view) vs. “retained and licensed rights (consultant view)

Consultants/Service Providers• Resolution: via carefully drafted and

fully-understood engagements, contracts, scope of work…

• Meeting of the minds is critical• Leave nothing “for later” or “T.B.D.”

Wrap-Up

Questions?

Hopefully, these tips will help you change how you address IP issues

Thanks for attending!