Changing how you address Intellectual Property Issues Tips for the Institution and those who support it
Dec 23, 2015
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!