Work For Hire: Do You Know Who Really Owns the Work?

With the help of the Internet, creative people are becoming more entrepreneurial and are serving as their own publicists, marketing teams, record labels, managers, etc. Some are doing this hoping to be discovered by a "major" player in the relevant industry, while others have found that "doing it yourself" is far more lucrative and allows you to retain more of your rights. But, does it really? The reality is, unless you are truly doing it ALL BY YOURSELF, you may not necessarily own the copyright in your works.

For example, have you ever hired someone to create a track for, design a website, write an article for your online magazine, or take photographs for your album cover? Or, maybe you've done most of the work, but asked someone to write the introduction to the book you plan to self-publish or write the hook to your new song. Sound familiar? This happens all the time. So, here's the question of the hour: When you hire someone to do creative work for you, do you legally own the work?

If you're like the countless people who have asked me about this issue, you may think that because you paid someone to do the work or because you did most of the work and they only added what you deem to be a trifling portion, that you own the copyright exclusively. But, like George and Ira Gershwin once said, "It Ain't Necessarily So". The general rule of copyright is, the person who creates the work, owns the work. But this is not always the case. As with most intellectual property laws, there are exceptions to rules.

The Copyright Act

The General Rule Determining who owns the copyright is very important because it determines who gets to claim ownership of the exclusive rights granted by the Copyright Act of 1976 ("The Act"), and ultimately who will get paid for exploitations of the work.

While a detailed discussion of the rights under The Act is beyond the scope of this article, here is quick list of the six exclusive rights that an owner of a copyright has or can authorize another to have under Section 106 of the Act: (1) reproduce the copyrighted work in copies or phonorecords; (2) prepare derivative works based upon the copyrighted work; (3) distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; (4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, perform the copyrighted work publicly; (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, display the copyrighted work publicly; and (6) in the case of sound recordings, perform the copyrighted work publicly by means of a digital audio transmission.

Under The Act, copyright ownership vests initially in the author of the work. In general, the "author" is the person who actually creates the work. Therefore, when a third party such as a web designer, a writer, a producer, or a photographer contribute to your work, under the Act, they may be considered the exclusive copyright owner, or the work may be considered a "joint work," in which case the third-party might be considered a co-copyright owner and may also have the right to exploit the work.

An Exception to the Rule: "Work-Made-for-Hire"

Although the general rule is that he who creates the work owns the work, The Act provides certain exceptions, including the "work made for hire" exception (more commonly referred to as a "work for hire"). Under this exception, the employer or the person that hires an independent contractor to create certain works, rather than the employee or the independent contractor himself or herself, is considered the author and owner of the copyright.

In order for a work to be deemed a "work for hire" it must meet one of these two criteria: (1) the work must be created by an employee within the scope of employment; or 2) the work must be created by an independent contractor and must fall within one of the nine statutory categories of works. Within these two criteria, there are additional thresholds that must be met in order for the work to be deemed a work for hire.

Works Created By An Employee: Work created by an "employee" within the scope of employment is considered a work for hire. While determining who is and who isn't an "employee" is not always the easiest task, there are certain factors that courts have applied to determine whether an employer-employee relationship exists. These factors include: (1) whether the employer controls how the work is done by the employee; (2) whether the employer controls the employee's schedule in creating the work; (3) whether the employer is in the business to produce such works; and (4) whether the employer provides the employee with benefits and withholds taxes. If all or some of these factors are met, an employer-employee relationship may exist. Consequently, the employer would be the copyright owner of all the work created by the employee within the scope of employment.

Works Created By An Independent Contractor: Work created by an independent contractor who has been hired to create a specially ordered work may also be considered a work for hire. For this category of work to be deemed a work for hire, these conditions must be satisfied: (1) there must be a written agreement between the parties specifying that the work is a work made for hire, and (2) the work must fall within one of the following nine narrow statutory categories: (1) a translation, (2) a contribution to a motion picture or other audiovisual work, (3) a contribution to a collective work (such as a magazine), (4) an atlas, (5) a compilation, (6) an instructional text, (7) a test, (8) answer material for a test, (9) or a supplementary work (i.e., "a secondary adjunct to a work by another author" such as a foreword, afterword, chart, illustration, editorial note, bibliography, appendix and index). If these requirements are met, the person who hired the independent contractor is likely to be deemed the copyright owner.

Assigned, Seal, Delivered...It's Yours Since merely stating that a work is a work for hire in a written agreement may not be enough (e.g., the work may not fall clearly into one of the nine statutory categories), a well-drafted work for hire agreement should also always contain an assignment of the entire copyright by the independent contractor over to the person commissioning the work. Conclusion

In today's "do it yourself" environment, it is inevitable that more and more musicians, writers, producers and other content-creators will be spending time and money developing work, often times with the help of third parties. I mean, let's face it, we can't do it ALL BY OURSELVES. Just remember that when you bring in other people to help with your work that are not your employees or independent contractors as defined by The Act, they may be considered co-copyright owners or even worse, the exclusive copyright owner. Protect yourself. In order to establish your legal ownership and control of the work, be sure that you have a comprehensive work-for-hire agreement that includes, among other things, an assignment of copyright provision.

NOTICE: This article represents copyrighted material and may only be reproduced in whole for personal or classroom use. It may not be edited, altered, or otherwise modified, except with the express permission of the author. This article discusses general legal issues of interest and is not designed to give any specific legal advice pertaining to any specific circumstances. It is important that professional legal advice be obtained before acting upon any of the information contained in this article.

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Warning! Co-Creation Hazard Ahead

Brainstorming and collaborating frequently produces superior work. For that reason, it is not surprising that many creative works, in the art and literature world, as well as in the business world, are the result of co-creation. Unfortunately, it is common for disputes to arise over co-created materials. That is not to say you shouldn't collaborate. It is, however, essential that the collaborators agree upon the terms of the arrangement.

Whether you have a business partner, a co-inventor on a new product, or a co-author on a book, blog, or other writing, you should take some simple steps to avoid future disagreements over ownership. As human beings, we typically perceive our contribution to a project as being the most valuable. The financier always believes the key to the company's success is the financial capital, the visionary always believes it is the ideas and the person rolling up their sleeves to do the work believes that success is the result of hard work. Of course, a more objective observer knows that all of those were the ingredients of success.

The laws governing intellectual property do dictate the rights owned by co-authors and co-inventors, but those laws do not necessarily match the intentions of the parties. If two authors work together to author a book, they become joint owners in the copyright to the book. Unless the writing was separated in some easily discernable way, both authors own 50 percent of the work and each have all of the rights that a single author would have. For example, if both authors contributed to every chapter and worked together to decide on wording, there is no way to differentiate between their work and therefore no method to divide the copyright. On the other hand, if each author wrote certain chapters of the book and those chapters could be separated without destroying the work, then there might be a way to divide the copyright. Typically, that is not the case. The applicable federal law states that "a 'joint work' is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole."

Similarly, joint inventors on a patent each have all of the rights of an inventor. There is usually no easy or accurate way to separate out the contribution of each inventor to the invention.

Co-authorship and co-inventorship can be problematic because both creators have the right to commercialize and monetize the product and can easily and frequently do, interfere with one another's efforts if there is a lack of cooperation.

When co-authorship is contemplated, my recommendation to my clients is that they enter into a written assignment of the copyright to avoid joint ownership of the copyright. One of the authors can assign their rights to the other author in exchange for compensation, recognition, and other negotiated terms. If the co-authors cannot agree on one owner, they can both assign the copyright to a company in which they both have an ownership interest. The company, such as a limited liability company, should be governed by a written agreement between the owners. That agreement should include the rights and obligations of the respective members, how to deal with contingencies such as the death of one of the owners, buyout provisions by one owner of the other's interest as well as other operational matters.

When a creation is only owned by only one person or one entity, there is a clearer direction for commercialization of the work and there are far fewer disputes over the respective rights and obligations of the parties. The next time you are collaborating on a project that involves intellectual property, make sure you discuss ownership of the resulting product and consider consulting an intellectual property attorney to assist you in memorializing your agreements and assigning the ownership to a single person or entity. The cost of this preventative step will be a fraction of the cost of resolving a dispute later.

This article is not intended to provide legal advice. This article only covers United States Law. Always consult an attorney for legal advice for your particular situation.

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Concept Of Intellectual Property In Islam And Western Law

Concept of property is the part and parcel of a structured society in this modern age. How the concept of property is viewed, determines the nature of society. These copy rights are well known phenomena of this age of modernization and of great impotence.

Intellectual property is defined as the specific legal rights over the property with is the result of one's intellectual effort for example patent, trademark, industrial design and copy rights. It is the property of intangible or incorporeal nature.

In western intellectual law of property has attained significant importance and is a well accepted concept and it comes under the domain of personal property. But in Islamic law the concept of intellectual property is disputed.

In Islamic law this concept of intellectual property is the one on which no extensive work has been done and jurists are at dispute. Some of them consider it as the property and others do not. The main reason for the dispute is the nature of property as intellectual property is intangible, and has no physical existence.

Different Islamic schools of thoughts advocate their opinion of acceptance and non acceptance differently. The Hanfi school of thought do not accept the intellectual property as a property but the Shafi consider it as the property because they consider the usufruct and the benefit too as the property while the Hanifi's only consider the corporeal property as the property.

The modern jurist has put the intellectual rights of property under the category of Haqooq-e-Urfiya( customary rights) and these are the rights which, according Mulana Taqi Usmani, are of such nature about which there is no proof found in sharia and the only basis of its recognition is the practice of these rights.

This is the time when this very concept of intellectual property is required to be defined and accepted. Importance of this very concept is inexorable at this stage of globalization. It is a challenge for the Muslim world to resolve this dispute of acceptance and non acceptance of intellectual property. Muslim jurists are greatly in need of ijtihad and ijma for the recognition of this concept undisputedly.

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Latest Legal Developments in the UK

1- ASA new online powers: e-commerce businesses and social media sites have six months to get ready!

The Advertising Standards Authority (ASA), the UK's independent advertising regulator, adjudicates on complaints about advertising made under the new Advertising Codes, in force since 01 September 2010.

ASA's current remit does not include regulation of general website and social media content but only paid-for online advertising and sales promotions.

From 01 March 2011, ASA will be able to regulate and intervene in relation to:

1) advertisers' own marketing communications on their websites, to ensure that their standard is as high as in newspapers and TV; and 2) marketing communications in non paid-for space under their control such as social networking sites like Facebook and Twitter to ensure that the principles of misleading advertising, consumer protection, protection of children and similar are implemented across all sectors and all businesses and organizations, regardless of size. ASA intervention powers will not apply to journalistic and editorial content and marketing related to ideas unless they solicit or encourage fundraising donations.

ASA will be undertaking an ongoing, quarterly review of the extended remit with the intention of carrying out a comprehensive review of its new powers towards to mid of 2013.

In addition to its current sanctions, from 1 March 2011 ASA will be able to impose the following sanctions:

1) to request, with the agreement of search engines, the removal of paid-for links to pages hosting a banned advertisement; and 2) to name and shame a non complying advertiser by placing its own adverts online highlighting continued refusal to comply with a ruling.

2- Equality Act 2010

The Government Equalities Office (GEO) has published a list of the provisions of the Equality Act 2010 that will come into force on 1 October 2010. The provisions in the Equality Act 2010 aim at updating, simplifying and strengthening current legislation in all areas including discrimination. The provisions in the Equality Act will come into force at different times to allow time for the people and organisations affected by the new laws to get ready, although the "vast majority" of the Equality Act 2010 provisions will come into force on this date.

3- A quick reminder of the importance of performing an intellectual property audit

Nearly all businesses have some form of Intellectual Property that is valuable and contributes to their success and profits.

By carrying out an IP audit you will obtain a systematic review of the intellectual property created, owned, used or acquired by your business.

There are essentially two types of IP audits: a preliminary audit and a comprehensive audit.

Remember that, when undertaking an audit, a number of issues must be addressed, including identifying your intellectual property and understanding the ownership and licensing arrangements you have in place. This will enable you to make an assessment of the type of intellectual property education your employees require.

IP Audits should be undertaken regularly as a part of general intellectual property management, a precursor to an acquisition, in preparation for a joint venture and in order to defend intellectual property infringement.

By carrying out an IP Audit, you look closely at your business to:

I. Identify where IP is used; II. Find out who owns the IP rights; and III. Assess the value of the IP.

This will not always be easy. Remember that, IP exists not only in patents, trademarks or designs rights you have registered. Valuable IP may be in trade secrets, in software, written material, domain names and customer databases.

An IP Audit should raise and answer the following questions:

a) Is my intellectual property protected? b) Am I infringing anybody else's intellectual property rights? c) Am I fully exploiting my intellectual property?

As stated before, an IP Audit is the first step of a correct IP Management and subsequent exploitation:

After an IP Audit is concluded, using the logbook (report) you created during an IP Audit, will help you to manage your IP. You can record in it all research, notes, designs and meetings related to your ideas in a dated, tamper-proof manner, with witness signatures where appropriate. This can serve as a powerful tool, helping you identify and protect your Intellectual Property later on, if you need to prove that, it was you who created the relevant IP.

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Can A Company Claim Exclusive Use of the Term?

Zynga Game Network Inc. is in the computer game software business. You may not recognize its products from its corporate name but it is the creator of Farmville®. Farmville® is an extremely popular online real-time simulation game available on Facebook® and the Apple iPhone®. When playing the game, users are responsible for managing a virtual farm. Zynga is also the manufacturer of other simulation games, such as, CityVille, FishVille, FrontierVille, PetVille, and YoVille.

Blingville, LLC, another computer game software company, intends to launch a virtual game on Facebook® called BLINGVILLE. When Zynga found out about this it objected and sent a number of cease and desist letters to Blingville. In the letters, Zynga alleges Blingville is infringing on its trademark rights when it uses of the letters "ville" in its name and on its game. Zynga claims ownership of the term "ville" based on its family of games ending in the suffix "ville" (mentioned above). Zynga does not own any trademarks for BLING or BLINGVILLE but it believes Blingville's use of the suffix "ville" is likely to lead consumers to believe the two companies are somehow related or that Zynga endorses or sponsors Blingville's product. In response to Zynga's demand letters Blingville filed a law suit with the District Court of West Virginia. In the suit Blingville asks the Court to enter a judgment that declares use of the mark BLINGSVILLE is not trademark infringement.

Will Zynga has enough to claim exclusive ownership of the term "ville?" Looks like we will have to wait and see.

FARMVILLE® is a registered trademark of Zynga Game Network Inc. FACEBOOK® is a registered trademark of Facebook, Inc. APPLE iPhone® is a registered trademark of Apple, Inc. BLINGVILLE® is a registered trademark of Blingville, LLC

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What You Should Know About Copyright

Copyright (as opposed to patents or registered trademarks) arises automatically without the author having to comply with or observe any formalities. What it is required is that the work has certain requisites. In this case the protection arises automatically as soon as the work is recorded in electronic or paper form.

However, authors of copyrighted work should still identify and safeguard their copyright works. This can be done by (i) identifying all materials that are likely to have copyright protection; (ii) ensuring that proper ownership and licensing arrangements are in force; (iii) ensuring that appropriate copyright assignments and waivers of moral rights were included in the written agreements commissioning the materials and if this was not the case, arranging for separate copyright assignments and waivers to be obtained from the third parties; (iv) keeping proper records. Authors should sign and date their works and, where relevant to the term of copyright, the date of first marketing of articles should be recorded. These records can then be used as the basis for any infringement action. Actions can fail if the claimant cannot prove subsistence of copyright or ownership.

Although not necessary, as a matter of law, to gain protection, it is useful to include on copyrighted materials a notice in accordance with the Universal Copyright Convention, that is [year, "Copyright [name of publication]" copyright owner]. This serves to warn anyone using the work that copyright exists and that action may be taken if the work is copied.

Depending on the type of work involved, additional text can be included with the copyright notice. This might include: (i) text prohibiting the reproduction of any material whether by photocopying or storing in any medium by electronic means or otherwise (this does not affect the legal position but serves as a reminder and might also be useful in preventing any user from arguing that there was an implied licence in its favour permitting copying or storage);warnings stipulating that the doing of any unauthorised act in relation to the work will result in both civil and criminal liability; (ii) warnings that any copying will result in criminal or civil action; (iii) a form of disclaimer to provide protection for the author and the publisher if use is made of opinions or views expressed in written materials.

Increasingly, the onus is upon the rights-holder to enforce his rights and, unless he does so, he may lose the rights, at least against a persistent infringer (this is clearly evident in the field of trademarks, where rights can be lost if not asserted. It is therefore important to put the infringer on notice and to keep a record of doing so. Speed of notice and action may be important if immediate injunctions are required. A delay of, say, a month may be fatal to such an application. This is because in order to succeed the claimant will have to argue irreparable damage caused by the infringement and any delay in bringing proceedings may count against that argument.

An important part of the protection and exploitation process is to ensure that everyone within an organisation is aware of the potential value of copyright works and how to protect them. As suggested above, a system needs to be put in place to ensure that proper reviews and record-keeping arrangements are implemented on an ongoing basis, combined with sensible and appropriate use of copyright notices and warnings. The fact that there is no registration regime for copyright makes it particularly important to be proactive in dealing with potential infringements and putting third parties on notice.

In fact, increasingly, the onus is upon the intellectual property owner to enforce his rights and, unless he does so, he may lose the rights, at least against a persistent infringer (this is clearly evident in the field of trademarks, where rights can be lost if not asserted. Speed of notice and action may be important if immediate injunctions are required. A delay of, say, a month may be fatal to such an application. This is because in order to succeed the claimant will have to argue irreparable damage caused by the infringement and any delay in bringing proceedings may count against that argument.

This article is for general purposes and guidance only and does not constitute legal or professional advice.

Copyright 2010 Anassutzi & Co Limited. All rights reserved. Information may be shared or reproduced only if accompanied by the author's name and bio.

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Licensing Your Work

There are many different ways that you as a copyright holder can let others use your intellectual property, but perhaps the way that affords you the most freedom is to license your work. With a license, you are able to grant others permission to use your work, but you retain exclusive rights over how they may use that work.

Why should you be concerned with how someone uses your work? This is an important aspect of licensing, one that protects both your work and your reputation, and it leaves you with greater control than, for instance, a Creative Commons license. With a Creative Commons license, anyone may use your work in any way that you specify. However, with a Licensing Agreement Form, you call all the shots. You allow specific people specific rights. Consider this scenario: You write a fantastic song, but someone records a terrible version of it. After your work has been botched so badly, who is going to want to hire you to write another one? Another scenario: You've created a documentary, which you feel is effective as a whole, and you give someone permission to show it. However, you later find out that the person showing your documentary has taken excerpts of it out of context, skewing the message you intended to convey.

When you license your work, you specify exactly what can and cannot be done with it. You can license a recording to be used in a movie, but not in the promotional material for the movie. You can license your software so that other companies can use it, but you can limit the use, amount of users, and even the time frame.

It's your work. When you license your work, you can be sure that you retain complete control, not only over who is allowed to use your work, but how that work is presented to the world.

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Eight Tips For Inventors Planning To File A Patent Application

1. When you get your stroke of genius and come up with an idea, WRITE IT DOWN! You need to create a record of invention before going any further.

You should list:

(a) A full and complete description of your idea;

(b) The date (very important);

(c) Your signature; and

(d) Dates and signatures of at least two people to witness and understand your having invented your invention.

2. Don't blab about your invention to anyone without a written confidentiality agreement.

3. Keep written records of your progress in developing the invention:

(a) Write down all modifications, experiments, alternatives, and other details.

(b) Keep copies of any emails, notes, letters, text messages or anything documenting discussions with others.

(c) Keep receipts for anything that you buy for your invention, including parts, software, consultant costs, marketing costs, advertisements, or anything having to do with your invention.

(d) Yes, these records must be in writing and dated.

4. Assess the marketability of your invention.

Rule of thumb - total sales should be twenty times or more of the cost of inventing and patenting your invention. A suggested rule of thumb to determine whether your invention will sell well is that the total sales will be at least twenty times the cost of inventing and patenting it.

5. Do a patent search:

(a) Is your invention novel?

(b) What is the prior art?

(c) If you are improving on something that has already been patented, is your invention a new physical feature, a combination of prior separate features, or a new use of a prior feature?

(d) If you are improving something that has already been patented, is your invention not obvious?

(e) Does your invention produce a new and unexpected result?

6. Plan on filing your patent application sooner rather than later.

(a) Only one year grace period after public disclosure in U.S.

(b) Only 6 months in Japan.

(c) No grace period in Europe.

7. Consider the pros and cons of filing a provisional patent application:

(a) First things first - it is not a "provisional patent." It is a "provisional patent application." Do not trust anyone that does not bring up the fact that the provisional patent application never automatically becomes a regular patent application without doing something extra. There is no such thing as a provisional patent. Remember this; the patent office doesn't even read your provisional application. They just take your money and stamp it with a date.

(b) Pro: Save money and time. Saves your place in line before competitors, while you can work on marketing, developing technology, and deciding whether to expend additional funds. Big companies often file provisional patent applications.

(c) Con: Why wait? If a competitor files a regular patent application while you have only filed a provisional patent application, then the competitor will probably beat you in getting a patent first. If your place is save in line, but the other person is ready to buy their ticket, you're out of luck. To prepare a quality patent application, you have to spend a great deal of time stressing over many details. If you spend the time to do it right for a provisional, you lose nothing by filing a real application now.

8. Work with an experienced lawyer who is registered with the Patent and Trademark Office and does patent work for a living.

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Competitive Intelligence - Getting Ahead of the Development Curve

Today companies are being forced to cope with rising litigation risk because the business environment is simply more litigious. This increased litigiousness has produced a more rigorous due diligence requirement that involves a greater focus on the way intelligence is gathered and the processes associated with it. Part of this rigorous protocol is to monitor the IP landscape generally and competitive targets specifically (companies, products and technologies), before a decision is made to pursue one or more candidates.

You can monitor technology in a variety of ways as it is being developed. At the inception of a technology, research platforms can provide only limited assistance because patents aren't typically filed until about halfway through the product lifecycle.

The lifecycle of the product usually begins with basic research and progresses through a developmental stage until it is mature enough to patent. After the technology is mature and protected, marketing plans begin to emerge as it is applied to products and finally introduced to the market.

Because results of patent analysis rely in part on patent data, there isn't a way to use it to thoroughly evaluate the technology between inception and patent prosecution. Innography can assist with evaluating the company, along with its current product and patent portfolio during that phase. But much of the competitive intelligence (CI) research must be performed in more conventional ways.

In the beginning, it can be monitored using resources such as research papers and grey literature. This method is a very important complement to research that can be performed using a research platform. Using the platform, you can see what companies are investing in which technologies, which can be very good technology investment indicators. It can point you to materials that indicate which type of investments in future technologies are being made today.

As the technology becomes well defined and is deemed to be viable, you can rely on R&D Alliances and joint ventures such as open innovation networks to understand the developmental progress. At this point, the focus of your CI gathering should shift from understanding the technology, to a complete understanding of the company who is investing in its development.

Finally, as the technology comes online and patents are filed and granted, you can begin to understand with greater clarity which of your CI targets represents the best investment and least risk. This is where your IP business intelligence platform i.e. patent software becomes critical.

You need to be able to overlay the IP data with business and legal data to give it a business context. It is important to know, for example, whether the new technology really is new and whether its patent is similar to other patents held by litigious companies. In such a case, they might already be aware of the patent and are simply waiting for an acquisition or licensing deal so that they can sue someone with much deeper pockets than the inventor.

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Intellectual Property Roadmap - A Step by Step Guide For Protecting Your Intellectual Property

Lately, we have been asked on a couple of occasions to provide a roadmap for our clients to follow to protect their current and developing intellectual property.

What follows is a sampling of the information we have provided. We hope you find this helpful.

As an initial matter, the appropriate agreements need to be in place. Any vendors, consultants, programmers, and the like, that are engaged by the entity should sign a Non-Disclosure Agreement. In general, these are straightforward documents; however, they should always be reviewed to ensure that they are applicable to the particular entity signing them as well as to the particular situation. In addition, agreements should be executed with any of the above-described entities that obligate them to assign any and all intellectual property rights regarding the technology they are working on or developing on your behalf. This becomes particularly important with respect to patents.

When a patent application is filed, the inventors must be disclosed to the United States Patent and Trademark Office (PTO). Inventorship as it pertains to patents has a legal definition as follows.

Anyone that materially contributes to any claim in a patent, must be named as an inventor.

Accordingly, if a programmer or another makes such a contribution, they will be considered to be an inventor. Another tenet of patent law is that each inventor owns a 100% undivided interest in the patent. Therefore, every inventor is free to do whatever he/she wishes with the patent. This is why agreements obligating anyone working for you or on your behalf, obligating them to assign their inventions related to your technology, must be executed.

Regarding software and programmers, the intellectual property concerned is both patent and copyright since software is subject to both. With respect to copyright, the author of a work (including software code) owns the copyright the moment the work is affixed in some tangible form. A Copyright Registration is not required for ownership rights to inure. Accordingly, absent a written agreement to the contrary, a programmer would own the copyright to the code he creates. As such, "work for hire" agreements need to be in place with anyone doing any programming.

Another area of concern with respect to software is whether or not the programmers have incorporated any Open Source code into the software. If they have, we must check where they got the open source code from and what the licensing terms for using it are. There is some open source code that requires that any software that incorporates it be made available to the public free of charge.

Once the appropriate agreements are in place, the copyrights for the software should be registered.

As you may be aware, there are over seven million issued patents. Accordingly, if you have recently introduced products to the market place, or are about to, it is important that a patent search be conducted on the commercial products in order to ascertain whether or not they infringe any issued patents.

We should also file for patent protection if the search indicates that a patent may be possible on the products. It is imperative to understand that public disclosure, sale, or offers for sale of an invention starts a clock ticking in the United States. An applicant for a patent has one year from the date of first public disclosure, sale, or offer for sale to file a patent application in the United States. Failure to do so results in the invention being dedicated to the public. That same public disclosure, sale, or offer for sale, destroys the ability to patent an invention in virtually every other country in the world (there is no one-year grace period). Based on the foregoing, it is important to use Non-Disclosure Agreements, and preferably to file for patent protection prior to making a disclosure of an invention.

Provisional patent applications are a useful tool to economically protect your inventions in the early stages or when a public disclosure is imminent. A provisional patent application allows an applicant to establish a filing date without having to incur the up-front expense of preparing a "full-blown" non-provisional patent application. Instead, the provisional patent application requires that a disclosure describing the invention along with a drawing, if necessary, be prepared and filed. No claims, background, or summary of the invention are necessary in filing a provisional patent application.

The provisional patent application has a life of exactly one year from the filing date. At the end of, or prior to the expiration of, the one-year period, the applicant must convert the provisional application into a non-provisional application. In addition, foreign filings must also be made at the end of this one-year period. If the applicant does not convert the application into a non-provisional patent application, the provisional patent application automatically becomes abandoned.

The disclosure filed with the provisional patent application must meet the enablement requirements of the patent statute. In other words, the disclosure must contain sufficient detail in order to put a person of ordinary skill in the art to which the invention pertains in the position of being able to make the invention without undo experimentation. Therefore, it behooves an applicant intending to file a provisional application to include as much detail as he/she is currently in possession of.

When the provisional application is converted to a non-provisional patent application, no new matter may be added to the non-provisional patent application. This means that if subject matter is disclosed in the non-provisional patent application which was not disclosed in the provisional patent application, the applicant will end up with two filing dates. The first filing date will be applicable to the subject matter disclosed in the provisional patent application while the second filing date will pertain to any new matter disclosed in the non-provisional patent application.

Provisional patent applications are not examined by the U.S. Patent and Trademark Office and merely act as place holders for reserving an earlier filing date. However, if the non-provisional patent application derived from a provisional application matures into a patent and is litigated, the provisional patent application becomes part of the file history of the patent. Finally, a provisional patent application can be used to obtain an early filing date, at minimal expense, and also to explore the market for the invention during the pendency of the provisional patent application. If at the end of twelve months, it does not appear that the invention will be profitable, the applicant can simply allow the provisional patent application to go abandoned.

On an ongoing basis, it is recommended that provisional patent applications be filed early in the invention/product development process and to file follow up provisionals as a product is developed. At the end of the one-year provisional period of the earliest filed application, or earlier, the provisionals can be combined and filed as a non-provisional patent application. At the same time, foreign filing decisions need to be made and applications filed. The foreign filings can take one of several forms. Patent protection can be applied for in desired countries individually, regional patent applications can be filed or a PCT (Patent Cooperation Treaty) application may be filed.

With respect to foreign filing, I would recommend filing PCT (Patent Cooperation Treaty) applications. A PCT application allows one to designate virtually all foreign countries while delaying the decision, and the expense, for a substantial period of time regarding exactly which countries patent protection should be sought in.

As stated above, on or before the one-year anniversary of filing a provisional patent application, a non-provisional patent application must be filed. The non-provisional patent application is the "real thing" patent application since it will be critically examined in Washington, D.C. by the United States Patent and Trademark Office. The non-provisional application contains a specification which provides a complete, detailed description of the invention, its surrounding environment, its advantages over prior art, and one or more preferred embodiments. Drawings are included, when necessary, to ensure a thorough understanding of the invention. The specification concludes with one or more claims which serve to completely and precisely describe the scope of the invention for which a patent grant is sought.

The completed patent application, along with a filing fee, is forwarded to the United States Patent and Trademark Office (USPTO) in Washington, D.C. for examination. If the subject matter of the application is judged patentable by the USPTO, a patent will be granted.

In executing the patent application, the inventor is asked to sign a Declaration, Power of Attorney, and Petition. In order to record that the Company owns the patent application, patent and the inventions described and claimed therein, the inventor also executes at the time of filing the patent application, an Assignment. The Assignment is then recorded in the United States Patent and Trademark Office.

The Patent Office rules require us to submit all documentary prior art of which we are aware, during the course of the prosecution of your application. The manner in which this information is conveyed to the PTO is via an Information Disclosure Statement (IDS).

Once the application is received at the PTO, it is assigned to an Examiner who then conducts a search of the Examiner's prior art which consists of all issued U.S. patents as well as some foreign patents and publications. If the Examiner uncovers prior art relevant to the claimed subject matter of your patent application, an Office Action will issue that typically includes a rejection of one or more of the claims in the application and the Examiner's reasons for this rejection. In addition to rejecting claims over prior art located by the Examiner, the Examiner can also reject an application for other reasons such as informalities, and for disclosing and claiming more than one invention. You should bear in mind that it is not uncommon, and in fact more likely than not, that the Examiner will cite issued patents against your application that were not uncovered in any search we performed for you prior to filing the application. This is due in part to the fact that what the Examiner finds relevant may be quite different from what was relevant when the search was made. Furthermore, the documents contained in the Examiner's search rooms are more comprehensive and complete than those available in the public search rooms. It is also possible that applications issued as patents subsequent to our search. Upon receipt of an Office Action from the Examiner, counsel will review it and report its receipt as well as their recommendations.

In order to continue with the prosecution of the patent application, we must respond to the Office Action within a given time frame, or the application goes abandoned. An applicant can usually expect two Office Actions during the prosecution of the patent application. However, bear in mind that it is also possible that the application will issue as a patent without any Office Actions. If we are successful in responding to the Office Action submitted by the Examiner and we receive a Notice of Allowance indicating that the patent application will issue as a U.S. patent, formal drawings must be prepared as well as payment of the issue fee to the Patent Office. Once the patent issues, a maintenance fee must be paid periodically. In the United States, in order to keep a patent active, maintenance fees must be paid at 3.5, 7.5 and 11.5 years.

At times, we are unable to convince an Examiner that the claims in a patent application are allowable over the prior art applied by him/her. In this instance, we can either cease any further prosecution of the application which would result in its abandonment, or can appeal to the United States Board of Patent Appeals and Interferences. If an applicant decides to appeal to the board, a Notice of Appeal must first be filed. Once a notice is filed, an applicant has two months to submit an Appeal Brief to the board. The brief goes first to the Examiner involved in the case, and he is given an opportunity to answer. Depending on his answer, the applicant can either file a Reply Brief revisiting the issues raised by the Examiner, or do nothing and let the Board decide based on the originally filed Appeal and Examiner's Answer. If a favorable decision is handed down from the Board, the application will then issue as a patent. If an unfavorable decision is handed down, the applicant has two options - either allow the application to go abandoned or appeal to the District Court in Washington or the Court of Appeals for the Federal Circuit.

Maintaining a record of invention dates and what was invented is also very important. Inventors should keep engineering notebooks that document the invention process from conception. These notebooks must be maintained in a safe location. Each page of the notebook must be witnessed by having someone other than the inventor sign and date the page and then under their signature the words "Read and Understood" should appear. The person signing the pages should also execute a Non-Disclosure Agreement. The United States is the only country that employs a "first-to-invent" system. This means that if a patent issues and another entity can prove that it invented first, the relevant claims in the patent would be invalid.

These are some of the most commonly encountered issues and strategies. If you have any specific issues, please do not hesitate to contact us.

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Freedom to Operate Analysis

The technology space is getting crowded day by day. Every product, be it a simple toy or a small automobile component or a highly technologically intensive product like the spare part of a satellite launching vehicle, is an amalgamation of diverse ideas and functional concepts which are protected by a bevy of patents, utility models and design registrations. For example, even a simple product like Gillett's Mach 3, a razor is protected by more than 40 different patents which protect each and every engineering feature of Mach 3.

In such a scenario, even before one initiates the design and development of a new product, one should first have a very clear idea about the proprietary technology in and around the product to be developed. The term 'proprietary technology' means the features of the product that have been protected by various intellectual property tools like patents (functional features), or designs (aesthetics features).

"Freedom to Operate" Search: There is enormous risk if one launches a product without any freedom to operate analysis and search. In such case the newly launched product is quiet vulnerable to infringement suits which can threaten the business of the company itself. At this stage, the cost associated with IPR litigation and the uncertainty involved in it, is usually fatal and it may force the company to withdraw itself from the business altogether. A very famous case study which is often quoted to emphasize the importance of a thorough freedom to operate search is that of Polaroid Vs Kodak. Kodak was a pioneer in the segment of photography in USA. Polaroid made a late entry into the market and developed its proprietary technology for 'instant photography'. Eventually, Kodak too decided to make a foray in the instant photography segment. One week after the Kodak's product launch, Polaroid filed infringement suits against Kodak for infringement. The courts held that Kodak infringed Polaroid patents. Kodak had to pay $ 900 million. This forced Kodak to withdraw from the instant photography business altogether.

The best way therefore is to undertake a thorough Freedom to operate search and analysis even before one starts making investments in setting up plants for manufacture of the proposed product.

A 'freedom to operate' search and analysis is exactly meant for the purposes of understanding the 'degrees of freedom' that are available to the product development team while designing and developing a new product in the market. The ultimate goal of a product development team is to come out with a product that does not infringe a patent or a registered design.

A "freedom to operate" analysis is but a type of due diligence which has to done with lot of care and seriousness before undertaking any manufacturing activity. Freedom to operate analysis provides the details based on which one can ascertain whether or not the proposed product or the existing product can be made, used, offered for sale or sold without infringing another valid enforceable patent.

The outcome of a typical exhaustive freedom to operate analysis assumes a strategic significance in making the following vital decisions:

Selection of a product for manufacture From a freedom to operate search one understands the feasibility of launching a product into the market with an optimized infringement threat.

Selection of a process of manufacture Even through the product is not new, one can manufacture it by a new process, in such cases freedom to operate analysis ascertains whether the proposed process is non-infringing or not. If it is infringing, it also provides the details of the players with whom one will have to make the licensing arrangements.

Selection of the equipments and design of the plant and work flow Freedom to operate analysis provides insights as to how to design around the existing proprietary technology by consciously choosing non-infringing variables in the overall process flow.

Selection of the packaging, labels and other details Packaging and labeling of the proposed products comes into the picture at a very late stage. Freedom to operate search provides lots of insights so as to preclude the possibility of infringement of other forms of intellectual property, especially copyrights and trademarks.

Selection of markets (country-wise) Patents are territorial in nature and therefore, an act that constitutes an infringement in India may not do so in other country where there is no valid enforceable patent related to the product or process in question.

Selection of technology partners, strategic alliances and cross-licensing partners. In a typical complex business situation, coming across a purely non-infringing process or product is a rare thing. In such cases, product development becomes a collaborative effort. Freedom to operate analysis gives an overall idea about the various players in a given product segment with their specialties. One can thus make the strategic decisions regarding licensing, cross-licensing and forming strategic alliances with the other players based on the findings of the freedom to operate search. Conducting a Freedom to operate Analysis has become imperative in today's times. Freedom to operate analysis must come from an independent patent attorney from outside the organization. This ensures impartial and objective analysis. Furthermore, a freedom to operate opinion from a professional patent attorney is also considered in the court of law during the infringement proceedings. One can therefore use the 'Freedom to Operate' opinion from an attorney as defense against the allegations of will infringement.

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Can You Copyright News Headlines?

This article addresses the law relating to copyright in news headlines and explores the case law relating to whether media publishers can protect their headlines as original literary works.

Media companies have tried to claim copyright protection over newspaper headlines reproduced on the internet. News publishers have claimed that news headlines qualify for copyright protection as original literary works under copyright legislation. As early as 1918 in the case of International News Service v Associated Press 248 U.S. 215 the US Supreme Court has held that there can be no copyright in facts or 'news of the day'.

However unlike in Commonwealth countries like Australia where there is no recognition of a tort of misappropriation the United States recognises a doctrine of misappropriation of hot news. This tort has enabled media publishers and other organisations to gain the right to protect other entities from publishing certain 'facts' or data, including news and other time-sensitive information during a certain window period to enable the organisation which has invested in gathering the data can recoup their investment. There are a number of criteria which must be satisfied to prevail in an action of hot news misappropriation

As stated above, Commonwealth Courts have rejected a tort of unfair competition as framed in the United States and have decided such cases solely on the basis of copyright law. Courts have been reluctant to afford literary copyright to titles, characters and news headlines. However newspaper publishers have only recently brought legal action in Australia for copyright infringement in their headlines and portions of their articles on the basis that the reproduction or abstracting of headlines is equivalent to theft of their content. Newspaper publishers have tried to obtain copyright protection in their headlines as discrete original literary works under copyright legislation.

For copyright protection to exist a literary work must exist and not every piece of writing or printing will constitute a literary work within the meaning of the law.

Typically, single words, short phrases, advertising slogans, characters and news headlines have been refused copyright protection even where they have been invented or newly coined by an author. The courts have given different reasons for denying copyright protection to such works. One reason offered by the Courts is that the 'works' are too trivial or not substantial enough to qualify for copyright protection. The case of Exxon Corporation v Exxon Insurance Consultants Ltd (1981) 3 All ER 241 is a leading English precedent where copyright was refused for the word Exxon as an original literary work.

Exxon argued it enjoyed copyright in the word Exxon having invested time and energy in employing linguists to invent the word, contending that the actual size of the literary work doesn't preclude a work from acquiring copyright protection. The court found that the work was too short or slight to amount to a copyright work.

The Court also stated that although the word was invented and original it had no particular meaning, comparing it with the word 'Jabberwocky' used for Lewis Carroll's famous poem. US case law has only recognised limited intellectual property rights in invented names or fictional characters in exceptional cases. There is no modern English or Australian case which has recognised that titles, phrases, song and book titles should be granted copyright protection.

Publishers asserting copyright in headlines contend that compiling and arresting headlines involves a high degree of novelty and creativity, and that headlines should qualify as original literary works. To be a literary work, a work has to convey pleasure or afford enjoyment or instruction. A literary work must also be original, and to satisfy the test of originality it must be original not just in the sense of originating from an identifiable author rather than copied, but also original in the particular form of expression in which an author conveys ideas or information. This is because copyright is not meant to protect facts or ideas.

The question whether copyright can subsist in newspaper headlines was discussed briefly by a Judge in a Scottish case called Shetland Times Ltd v Wills [1997] FSH 604. The Judge didn't arrive at a final conclusion as to whether a newspaper headline can be a literary work, but expressed reservations about granting copyright to headlines, especially where they only provide a brief indication of the subject matter of the items they refer to in an article.

Newspaper headlines are similar in nature to titles of a book or other works and titles, slogans and short phrases which have been refused copyright protection. In the case of IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14, the High Court held that no copyright can subsist in a programme title alone. The Courts have based their reasons for refusing copyright protection to such works both of the basis that they are too short (see Francis Day & Hunter Ltd v Twentieth Century Fox Corp Ltd (194) AC 112) or alternatively that titles of newspapers, songs, magazines, books, single words and advertising slogans lack sufficient originality to attract copyright protection.

The title 'Opportunity Knocks' for a game show was refused protection, as was the title "The Man who Broke the Bank at Monte Carlo" for a song and "Splendid Misery" for a novel. Courts have also refused copyright protection for invented names such as Kojak and newspaper titles such as 'The Mirror'. Such titles and names may however be protected by other forms of intellectual property such as trademark law or the tort of passing off.

Whilst Courts have recognised that newspaper headlines may involve creative flair and be clever and engaging but represent little more than the fact or idea conveyed.

Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd the Federal Court of Australia has ruled that newspaper headlines are not capable of copyright protection. Reed and collected and reproduced the news headlines and articles appearing in the Australian Financial Review on it's Abix subscription service. Fairfax alleged that by producing abstracts of the articles in their service Reed had infringed the copyright in a number of works, being the headlines as a separate literary work and in the headline and article together, as a 'combination work', all of the articles, headlines and bylines as a 'compilation' and also published edition copyright in each of the Australian Financial Review. The Court held that the headline was too trivial to be copyrightable and did not amount to a substantial part of the combination work so as to amount to infringement and the combination work didn't amount to a work of joint authorship.

The law in the United States is somewhat unsettled in relation to the rights of news aggreggators to engage in such activity due to the existence of the tort of unfair competition which is recognised in some US States.

The Court held that even had the use amounted to infringement it would have been excused by the defence of fair dealing.

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Difference Between Patents, Trademarks, and Copyrights

A patent is a permit by a government to an inventor, allotting the right to prohibit others for a confined period from making, employing or selling the invention all over a country. It is a record in which the invention is ampley illustrated and the scope of the invention identified.

Utility patents are presented for invention of new and worthwhile processes, machines, manufactures, compositions of material or some new and worthwhile enhancement thereof. U.S. Patents use to last for a period of 17 years from the dates they are presented. U.S. Patent applications processed today have a period of 20 years from processing. Each country has its own patent law.

Design patents encompass the external adornment of a product and supply lesser defense than utility patents, but are substantially less costly to acquire. They are employed, for illustration, to secure ornamental designs of jewelry, furniture, beverage containers and computer icons.

A trademark is any word, name, symbol, or device appropriated and employed by a manufacturer or marketer to differentiate the origin of the goods or services and tell the difference between them from those furnished by others. A service mark is a type of trademark that appertains to services.

The principal operation of a trademark is to signify origin. Never the less, trademarks furthermore assist to ensure the quality of the goods or services, and through advertising, assist to conceive and retain demand. Rights in a trademark are obtained by consumption or by applying for a federal trademark registration previous to use. Use of the trademark is required to ultimately occur, and is required to carry on if the rights so obtained are to be preserved. Each country has its own trademark law.

Copyright is a type of defense supplied by the laws of a country to authors of unique works of authorship counting literary, dramatic, musical, artistic, and additional works. Protection is accessible to both published and unpublished works.

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Introduction to Trade Secrets

Uniform Trade Secrets Act (UTSA)

Many states in the U.S. have enacted their own respective versions of the UTSA.

California's version begins at California Civil Code Section 3426. Under California's statute, a "trade secret" means information, including a formula, pattern, compilation, program, device, method, technique, or process that:

derives independent economic value (actual or potential), from not being generally known to the public or to other persons who can obtain economic value from its disclosure or use; and is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

Trade Secret vs. Patents

If an invention cannot be easily discovered by another, consider maintaining the invention as a trade secret. If an invention can be easily discovered or reverse engineered, consider applying for a patent.

How to Protect Valuable Confidential Information

- Do not disclose the information to anyone. Maybe, with a signed non-disclosure agreement. Still, only disclose to those that have a legitimate need to know.

- Take reasonable measures to maintain secrecy.

- Computer firewalls, encryption, other electronic measures.

- use secure email options.

- Avoid wireless communication. Consider encrypted wireless communications.

- Keep records on recipients of confidential information and identify what exactly was disclosed.

- Have visitors sign log when visiting premises.

- Use non-disclosure agreements.

- File patent applications before any public disclosure, if patent application is planned.

- Maintain UTSA protection for subject matter not claimed in a patent application.

Federal Economic Espionage Act

The Economic Espionage Act of 1996 (the "EEA") makes criminal two types of misappropriation.

(1) Trade secret thefts to benefit a foreign government or foreign agent (18 U.S.C. Section 1831(a)); and

(2) thefts for economic advantage, regardless if a foreign entity is involved (18 U.S.C. Section 1832(a)).

The EEA not only criminalizes confidential information theft, but also makes illegal knowingly receiving, buying, destroying, or possessing a stolen trade secret.

Even attempts and conspiracies to perform the illegal acts are in themselves criminal acts under the EEA..

The EEA's definition of a trade secret is based on the definition provided under the UTSA.

Examples

Software used in the lumber industry - Rivendell Forest Prods., Ltd. v. Georgia-Pacific Corp., 28 F.3d 1042, 1046 (10th Cir. 1994).

Engineering drawings and measurements to manufacture an aircract brake assembly - United States v. Lange, 312 F.3d 263 (7th Cir. 2002).

Information on manufacturing contact lenses - Syntex Opthalmics, Inc. v. Tsuetaki, 701 F.2d 677, 684 (7th Cir. 1983).

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What Is the Protection of Business Names Under Intellectual Property Law?

It is unlikely that the name can be protected by copyright because a name will not qualify as a literary work under copyright law or the word is commonplace. Names which have been held not to be protected by copyright include Exxon, opportunity knocks and the man who broke the bank at Monte Carlo. Certain distinctive words and pictures may be registered as trademarks and trademarks legislation. Furthermore, the consumer protection provisions of the trade practices law which prohibit misleading or deceptive conduct in. The temptation is may be used in business versus business cases to stop others using a business name.

Sections 52 and 53 cases have involved names such as Big Mac, Taco Bell and Triathlon as the name of sports magazine. Even the use registered businessman could breach section 52 or section 53 of the trade practices legislation in Australia. Penalties under the trade practices act include fines, injunctions, damages and the adverse publicity formally called corrective advertising. A person engaged in passing off could also be misleading or deceptive in breach of section 52. The Court noted in Hornsby building information case section 52 was quite extensive jurisdiction in passing off actions which was a consequence of a very direct relationship which necessarily exists between the perception of consumers and course of trade on the enquiry caused by the unfair practices of the trade rival. If you want to know more about business names law, there are varying specifics across different jurisdictions but the broad principles are basically the same.

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