BL Speer & Associates

 

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Stop Marketing. Start Branding! 

Posted by BL Speer & Associates Saturday, March 24, 2012 9:03:00 PM

This blog post is by guest contributor The Brand Ascension Group, LLC. You’ll learn the importance of branding, of which your trademark is but a part of the overall brand experience perceived by your customer.

When most think of the term Branding they often associate it with the term Marketing or in some cases a cattle ranch. When they think of the term brand, generally an image or a symbol such as a logo, or a tagline come to mind. In fact, none of these associations are truly accurate. This is one of the most confused issues in business today. Knowing the difference can translate to leveraged growth.

Marketing vs. Branding

Marketing is the act of communicating or disseminating the message of your brand. It is all about the creative vehicles you use to leverage the message to your market (e.g., electronic or advertisements, PR, print.) Branding is the process of creating and living the message of your brand. If your message isn’t clearly defined with a consistent process in place that reflects and affirms it, then your marketing dollars will be wasted and squander valuable budgets in the process. The process of building your brand starts at the internal level of the business (i.e., how your employees and culture cultivate the message and ultimately serve the client), not in an external ad. Our advice? Stop marketing, at least for now. And, start branding. Your challenge: Make a conscious effort to get crystal clear on a specific message you want to convey to your customers and train and empower your staff to deliver it relentlessly.

Think about all the facets of your business; from your values and behaviors, your brand promise, to how you deliver your products and services. All of these are integral to morphing a good brand into a great brand! To show up in a conscious way that builds and sustains your brand, three key attributes must be in place: Relevance, Consistency and Distinctiveness.

Why Focus on Relevance?

Brand RELEVANCE is matching and satisfying YOUR internal and external messages and values to YOUR brand promise.

How do you show up in a RELEVANT way when delivering on the promise you commit both internally and externally to your customers? Do your customers care about the same things you care about?

How relevant is Wal-Mart® to its customers? Their tagline: Always, Low Prices, Always! What about Best Buy®? Relevance is explicit in their name? They provide the best price or the best value for the deal. Their name is relevant to the internal/external behavior and promise they deliver with each product and customer transaction.

Your authenticity must be consistently congruent with your core values, not everyone else’s. So take some time to list your top 6 core values.

Consistency = Trust

Brand CONSISTENCY is showing up the same way every time, walking the talk and being true to your brand promise. Why is Consistency so important to sustaining your successful brand? What it boils down to is one simple word: Trust.

Honesty is expected. Trust is engaging and intimate. It needs to be earned. Honesty is required to be in business today…Trust is something else altogether. It is one of the most important values of a brand and it requires real effort from corporations.*

How you show up consistently in the various facets of your business…from how you answer the phone, to what customers see, hear, taste, touch, smell and intuit must be congruent with your promise.

Oprah is the “Queen” of consistency. Thirty million people totally trust her. One initiative through Oprah’s Angel Network generated $12.1MM in donations for children in South Africa. No one would donate that kind of money if they did not trust Oprah and expect that she would consistently follow through on her promise.

Even You Can Create Distinctiveness!

What is the one word you “own” in the mind's eye of your market that distinguishes your brand from others?

Brand DISTINCTIVENESS means you stand out uniquely and unequivocally different than your competition both internally and externally while being congruent with your Brand Promise.

What makes Fed Ex so distinctive in their industry is their “unrelenting commitment” to deliver. Google has transformed the experience of browsing on the internet, and Amazon and eBay with their unique approaches to e-business.

Stop Marketing and Start Branding!

Make sure your brand’s message is crystal clear and authentic to your core values.

Empower every employee to understand and live your Brand Promise.

Capitalize on creating RELEVANT, CONSISTENT and DISTINCTIVE customer experiences.

Creating and living the brand message cannot be over emphasized. Branding is a powerful lever for any business when it is approached in a conscious, strategic and holistic way to show up relevantly, consistently and distinctively in every way.

*Marc Gobé, Emotional Branding: The New Paradigm for Connecting Brands to People, 2001, p. xxix


© 2008 The Brand Ascension Group, LLC

What's In a Name? 

Posted by BL Speer & Associates Saturday, March 24, 2012 8:46:00 PM

by Brenda L. Speer

The names used in conjunction with your business can be confusing not only for you, but also sometimes for legal practitioners. There are three types of names that companies commonly use in association with their businesses. As defined from a legal perspective they are:

Entity Name: The formal name by which your entity (be it a corporation, limited liability company, limited partnership, etc.) is registered with the Secretary of State’s office of the appropriate state of entity formation;

Trade Name: The name under which your entity does business, which name is other than your entity name, the purpose of a trade name being to allow third parties to trace back to the true entity in case of the need to find out the names and addresses of owners, officers, directors, partners, etc., or to bring suit against the entity; and

Trademark: A trademark indicates the source or origin of your particular goods or services to the consuming public. The term “trademark” encompasses both trademarks (marks used with goods) and service marks (marks used with services).

All three of these name types should be registered with the Secretary of State. These names may or may not be all the same. A real life example in which the names are all the same: IBM, Inc. (entity name), doing business as IBM (trade name), selling IBM® brand computers (trademark). In contrast, a real life example in which the names are not all the same: The Proctor & Gamble Company (entity name), doing business as P&G (trade name), selling Bounty® brand paper towels (trademark).

You should review your business records to ensure that you have done all of these registrations. As of June 1, 2006, in Colorado all trade names are registered with the Secretary of State. In the past, only sole proprietors or general partnerships did not register with the Colorado Secretary of State, but rather, they registered with the Colorado Department of Revenue. All of the previous registrations done with the Colorado Department of Revenue have been transferred to the Colorado Secretary of State and now all trade names are searchable and registerable with this one government agency.

An entity name registration does not automatically grant to you the exclusive right to do business throughout the state of formation and registration under your entity name. The reason is that the legal reach of a trademark can supersede that of an entity name. Trademark rights allow the senior (or first) user of the trademark to use the trademark in connection with the owner’s particular goods or services to the exclusion of others in the marketplace. An entity name registration does not necessarily do that.

The distinction is one of fact: that is, what is the manner in which you use your entity name? If it is used in the manner of a trademark, which is to identify your goods and services to the consuming public, then your entity name has also taken on trademark rights. Trademark rights accrue through actual usage of your mark in connection with your particular goods and services. This is known as common law trademark usage and your rights will extend throughout the geographic territory in which you can prove you are using the mark. However, a state trademark registration grants to the trademark owner the same rights, yet the registration carries with it an evidentiary presumption that the trademark rights extend throughout the state of registration. The same holds true for a federal or United States trademark registration; however, the evidentiary presumption extends throughout the United States and its territories.

The level of scrutiny accorded entity name, trade name and trademark registrations by the Secretary of State’s office (whether Colorado or elsewhere) is minimal. All the Secretary of State looks for is to see if someone has already registered the exact same name. No assessment is made with regard to similar names or marks that may be confusing to the public. If you are starting a new business or product or service offering, then it is in your best interest before launching to avoid possible confusion and trademark infringement by doing a nationwide entity name and/or trademark availability search.

Accordingly, it is to the benefit of your entity that you have all appropriate filings completed for entity name, trade name and trademark (and federal, if appropriate) registrations with the Colorado Secretary of State’s office so that you may best protect and maintain your name to your exclusive use. Goodwill and consumer recognition attach to the name by which you hold your business out to the marketplace and the value of such to a successful business should not be underrated.


© 2008 BL Speer & Associates

Trademark Alphabet 

Posted by BL Speer & Associates Saturday, March 24, 2012 8:35:00 PM

by Brenda L. Speer

What is a trademark? The purpose of a trademark is to indicate the source or origin of a good or service. A trademark may be a word, symbol, name, device or any combination thereof. A trademark owner has the exclusive right to use his trademark in conjunction with his particular goods and services.

In the United States, trademark rights begin to accrue as soon as you use your mark in commerce in connection with your goods and services. This is known as common law use and in this instance your trademark rights will extend only to those geographic areas in which you can prove active trade in commerce has occurred. The next rung up the ladder of trademark protection is a state trademark registration.

A state trademark registration may be obtained for each state in which the mark is used in commerce and carries the evidentiary presumption that you are using your mark throughout the state(s) in question. Provided you are trading in interstate commerce (doing business in at least two states), you can go to the top rung of the ladder of trademark protection and pursue a federal trademark registration, which carries the evidentiary presumption that you are using your mark throughout all 50 states and the US territories.

Trademarks should be appropriately marked with notice of ownership. This is where the trademark alphabet comes into play. A federally registered trademark is marked with the circle R symbol, ®.

Trademarks subject to either common law use rights or a state registration(s) are marked with either SM (indicating a service mark, or another way of saying a trademark which is used in connection with services) or with TM (indicating a trademark which is used in connection with goods). To use ® in connection with a trademark, you must have a federal registration. The use of SM or TM in connection with a trademark requires either common law use of the mark or a state registration.

Only trademarks which are descriptive, suggestive, arbitrary or fanciful (in order of increasing legal strength of a trademark) are entitled to legal protection. Generic terms (the word for the good or service itself) are not entitled to trademark protection, because these terms must remain available for all to use in identifying their goods or services. Examples of generic terms are telephone, car, dry-cleaning, etc.

The legal strength of a trademark is often inversely related to the appeal of the trademark to your marketing team. Why? Because of the ability of the trademark to instantly convey to a consumer what the good or service is. As you’ll see in the discussion which follows, descriptive marks require no consumer education, suggestive marks require some consumer education and arbitrary or fanciful marks often require extensive consumer education. The marketing plus of a legally strong trademark though is the increased value and heightened awareness in the marketplace of your brand.

A descriptive trademark describes the nature or quality of the goods or services and is subject to limited legal protection; provided the owner can demonstrate the trademark has secondary meaning, meaning the public has come to identify the descriptive trademark with a particular source. An example of a descriptive trademark is Half Price Books® for retail store services featuring books. See the immediate connotation to the consumer? Inexpensive books. No explanation needed.

A suggestive trademark suggests the nature or quality of the goods or services. Examples of suggestive trademarks are Coppertone® suntan oil and Edge® shaving cream. These marks have a less immediate connotation to a consumer, but do readily convey that Coppertone suntan oil will give them a nice, perhaps unhealthy, tan and that Edge shaving cream will give them a smooth, close shave.

An arbitrary trademark applies an existing term with intrinsic meaning in a different context. Examples are Apple® computers and Palm® PDAs. Without the advertising campaigns that went along with these product launches, the consumer would have no idea what either an Apple or a Palm were. These trademarks were worth the effort and, as a result, are very strong marks in the marketplace. We all have a different perception of an Apple computer versus a Dell® PC and of a Palm versus a Blackberry®.

A fanciful trademark is coined anew for use as a trademark: it is a word that didn’t exist before. Examples are Exxon® gasoline and Kodak® film. Imagine the consumer education that Kodak had to undertake when it went into business—not just for its Kodak brand, but also for the film and photography industry. Again, the effort was worth it: look at how strong its brand and trademark are today.

A trademark should always be used as an adjective, never as a noun, verb, plural or possessive. Trademarks are properly recited as: brand . In common parlance, the word “brand” may be dropped, but the trademark should still be paired with a noun. For example, you blow your nose into a Kleenex® brand tissue or wear a pair of Levi’s® jeans. Conversely, you don’t Rollerblade® in the park (misuse as a verb; proper use would be skating with a pair of Rollerblade in-line skates), and you don’t make a Xerox® of a document (misuse as a noun; proper use would be making a copy with a Xerox photocopier).

It is the responsibility of the trademark owner to maintain and enforce his trademark rights. If he doesn’t, he risks losing those rights. There are no trademark police. You alone are responsible for ensuring your trademark is used properly and enforcing your trademark rights against infringers.


© 2008 BL Speer & Associates

Consistency-It's Not Just for Branding 

Posted by BL Speer & Associates Saturday, March 24, 2012 8:21:00 PM

by Brenda L. Speer

From a marketing perspective, there are three important factors for instilling and maintaining your brand—relevancy, consistency and distinctiveness—for good reason. I’m going to give you an intellectual property law attorney’s perspective as to why one of these factors—consistency—is also legally important. To do that, first I’ll digress and give you a primer on trade dress and a brief recap of trademark law.

Aspects of your business identity, or brand, are legally protectable under trade dress and trademark law. Trade dress protection extends to the commercial impression of a business, specifically, the non-functional features of the business expressed in the total image and overall appearance of the goods or services it offers. An excellent example of trade dress is UPS and the ubiquitous brown color that permeates its operations from packaging to uniforms to delivery trucks. In fact, UPS has employed this important trade dress element in its advertising with the slogan “What can Brown do for you?” Brown is an important element of the UPS brand.

If another company were to imitate UPS’ trade dress in a manner that would cause confusion among consumers, then UPS would have an action for trade dress infringement against that competitor. A new or an existing entrant in the delivery business that decides to adopt brown as its signature color is sure to have UPS paying it a not-so-friendly call.

Consistency in the use of your company’s trade dress is important, not only to expressing your brand, but also to legally maintaining your brand. For the law to recognize trade dress, the aspects of the trade dress must be consistently applied and continuously used. For example, McDonald’s trade dress in its restaurants is instantly recognizable to consumers through consistent use of building shape, interior layout, color scheme, décor, packaging, menu offerings and so on. The restaurant wouldn’t even need a sign for you to know it was a McDonald’s restaurant.

Now, let’s say you have 12 restaurants in a metropolitan area and they all have the same name, but they each have a different menu offering, décor and building exterior in both shape and color. Your customers would know you owned all of these restaurants, because they all operate under the same name. However, they’d probably be very confused as to what to expect at any one restaurant they may patronize. Why? Your brand, and thus, your trade dress, is inconsistent. These disparities dilute your brand and negate any trade dress protection you may be able to claim.

Trade dress and trademarks are complementary legal cousins that serve different legal purposes. To recap, the purpose of a trademark is to indicate the source or origin of a good or service. A trademark may be a word, symbol, name, device or any combination thereof. A trademark owner has the exclusive right to use his trademark in conjunction with his particular goods and services.

So why should you care if you consistently use your trademark from a legal perspective? Just as for trade dress, for the law to recognize a trademark, the trademark must be consistently applied and continuously used. Additionally, it is the responsibility of the trademark owner to maintain and enforce his trademark rights. If he doesn’t, he risks losing those rights. As a result, owners need to be particular as to how their trademarks are used, which is why proper, consistent use is important in your branding and marketing.

As you may recall, there are several factors for proper usage. First, a trademark should always be used as an adjective, never as a noun, verb, plural or possessive. Trademarks are properly recited as: <Trademark> brand <good or service>. In common parlance, the word “brand” may be dropped, but the trademark should still be paired with a noun.

Why should a trademark owner care whether its trademark is used as an adjective? For an owner to do otherwise creates the risk of the trademark becoming generic, or an eponym, and generic marks are not entitled to legal protection. Some classic examples of trademarks that became eponyms are aspirin, escalator and thermos. Yes, aspirin was originally a brand name for acetylsalicylic acid medication. Although trademark misuse is common, it’s still not correct and not an excuse for you to use, or to allow others to use, your trademark improperly.

Trademark owners do public relations campaigns to educate consumers on proper use of their trademarks to combat genericide. Both Xerox Corporation (Xerox® copiers) and Kimberly-Clark Corporation (Kleenex® tissues) have conducted such campaigns. Think of Google and its phenomenal success. The trademark Google is often used as a verb. I’m sure you’ve said many times to others searching for information, “Just Google it.” Makes you wonder if the Google trademark may face genericide in the future. Yet another reason why you should care and take heed to consistently apply your brand. Consistency–it’s not just for branding. It’s your legal friend and ally in the competitive marketplace.


© 2008 BL Speer & Associates

Copyright Mythology 

Posted by BL Speer & Associates Saturday, March 24, 2012 8:07:00 PM

by Brenda L. Speer

During the term of copyright for an original work of authorship, the copyright owner of the work has the exclusive right to:

1) Reproduce the work;

2) Prepare derivative works of the work;

3) Distribute copies of the work;

4) Perform the work publicly (as applicable); and

5) Display the work publicly (as applicable).

During the time I’ve been practicing law, I’ve heard several, oft-repeated misconceptions regarding limitations on the extent to which a copyright owner can enforce his rights against infringers, particularly with regard to the right of reproduction.

Myth No. 1: If an excerpt from a work is less than 300 words, then the excerpt may be reproduced without the need to seek the copyright owner’s permission.

False. The copyright owner’s right of reproduction of an original work extends to the work in whole and in part. There is no magic number of words that may be used from an original work without the need to seek the owner’s permission. By way of example, let’s take the case of the haiku. You may recall from your school days learning to craft one of these structured three line poems; wherein the first line has five syllables, the second line has seven syllables, and the third line has five syllables.

Can’t Touch This
by Brenda Speer

I wrote this haiku.
It belongs to me, not you.
You can’t copy it.

As you can count, this poem only has 14 words; however, these 14 words constitute 100% of the poem. According to the myth of the 300 word rule, you could copy this entire poem without the need to seek my permission. Now you know that this is incorrect and would constitute copyright infringement, because reproduction of the poem, in whole or in part, is a right that belongs exclusively to me.

Myth No. 2: If an original work is changed by 10% or more, then it becomes a new work and may be reproduced without the need to seek the owner’s permission.

False. Just as with the myth of the 300 word rule, there is no magic percentage by which an original work may be changed to take an unauthorized derivation of that work out of the realm of copyright infringement. Again, the copyright owner’s right to prepare a derivative work (a transformation of the original work) extends to the original work in whole and in part. Conjure up an image of Andy Warhol’s multicolored, pop art portrait of Marilyn Monroe. For mathematical simplicity, let’s assume there are 10 colors used in equal parts in the portrait. Again, following the myth of the 10% rule, you could change one of the colors and prepare and reproduce a derivative work of the Marilyn Monroe portrait without the need to seek permission from Andy Warhol’s estate. (Although he is deceased, his Marilyn Monroe work is still within its copyright term.). However, nothing could be further from the truth. Such a derivation and reproduction would constitute copyright infringement and we all seem to inherently understand this.

Myth No. 3: If a work is publicly available, then anyone can use it without the need to seek the copyright owner’s permission.

False. As mentioned in last month's newsletter, public availability of a work is not the same as the work being within the public domain. What's the difference? An original work of authorship is publicly available if it can be accessed by the public. That is, any book or sound recording you can find in the store or at the library is publicly available. But just because a work is publicly available, does not mean it is in the public domain. A work falls into the public domain once its copyright term expires. A seasonally relevant example is the movie It's a Wonderful Life. Due to an unfortunate clerical error, the owners of the movie failed to renew its copyright term. (At the time the movie was created, 1946, the term of copyright was 28 years and could be renewed for a subsequent 28 year term.) Accordingly, the film’s images entered the public domain in 1974. So, the film images from It’s a Wonderful Life are both publicly available and in the public domain. Because the film images are in the public domain, they may be reproduced without the need to seek the owner’s permission. (WARNING: Do not rush out and make copies from your DVD version of the movie for your friends! Copyright issues surrounding the movie are a bit more complicated, because the movie is based upon the short story “The Greatest Gift” by Philip Van Doren Stern. On the other hand, the movie How the Grinch Stole Christmas, although publicly available, is not yet in the public domain.

Myth No. 4: If only a portion of a work is copied, then such use is a “fair use” and may be reproduced without the need to seek the copyright owner’s permission.

False. First, you must understand that any copying of an  original work within its term of copyright, no matter what portion is copied or how much is copied, is technically copyright infringement. The concept of “fair use” is a defense to copyright infringement. What that means practically speaking, is: You've copied someone else's work; they've sued you for copyright infringement; and your defense is the copying is a fair use and, therefore, not copyright infringement. What’s fair use? There are certain instances in which reproduction of an original work of authorship may be considered fair use and, therefore, not copyright infringement. These certain instances are explicitly defined by federal statute and are:

“For purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.”

In determining whether a reproduction is considered a fair use or not, the courts will consider several factors, not in order of importance and none of which is dispositive:

1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

2) the nature of the copyrighted work;

3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

4) the effect of the use upon the potential market for or value of the copyrighted work.

When it comes to fair use, the best defense is a good offense. It is always best to obtain permission from the copyright owner to reproduce a work in whole or in part.


© 2008 BL Speer & Associates

Copyrights 101 

Posted by BL Speer & Associates Saturday, March 24, 2012 5:49:00 PM

by Brenda L. Speer

What are copyrights? Copyrights are one of the four basic types of intellectual property: copyrights, trademarks, patents and trade secrets. In the US, copyrights are governed by federal, not state, law.

Original works of authorship include:

Literary works;

 

Musical works, including any accompanying words (compositions, or "notes on a page");

 

Dramatic works, including any accompanying music;

 

 

Pantomimes and choreographic works;

 

Pictorial, graphic and sculptural works;

 

Motion pictures and other audiovisual works;

 

Sound recordings (the recorded performance of a musical work); and

Architectural works (2D blue prints and 3D structures ).

 

The term is copyrightS plural, because copyrights pertain to a bundle of legal rights afforded to original works of authorship fixed in any tangible medium of expression. The copyright owner has the exclusive rights to:

Reproduce the work (make copies, thus the term copyrights);

Prepare derivative works (adaption of the original, such as a translation, or a screen play from a book);

Distribute copies (sell, give away, lend);

Perform the work publicly (as applicable, such as a play); and

Display the work publicly (as applicable, such as a sculpture).

Due to changes in the US Copyright Act over the years, the term of a copyright depends upon when the original work of authorship was created and who created it. Currently, the term for works created on or after January 1, 1978, is either for the life of author plus 70 years for an individual work, or the first to expire of 95 years from publication or 120 years from creation for an anonymous work, pseudonymous work or work for hire.

After expiration of the copyright term, the work is in the public domain and may be used freely by anyone.

CAVEAT: public availability does not mean public domain.

For example, the book Harry Potter and the Sorcerer’s Stone by J.K. Rowling is publicly available at bookstores for purchase and at libraries to borrow; however, it is not in the public domain, because it is still within its copyright term.

Although marking an original work with copyright notice is not legally required, it is for the owner best to do so. Copyright notice format appears as either © 2008 Author Name for most works, or as 2008 Performer Name for sound recordings (the "circle P" symbol for sound recordings originated in the era of the phonograph).

Under US federal law, copyrights in original works of authorship arise at the moment of creation of the work. Creation occurs once the work has been converted from an idea to a tangible expression of that idea. In other words, writing down on paper a story you’ve formed in your mind creates an original work that may be subject to copyright protection. All you have to do to have a claim of copyright in your work is to transform it to tangible expression.

However, to enforce your claim of copyright in a work, you must have a copyright registration for that work. Simplistically, a copyright registration is an admission ticket to the federal courthouse to sue for infringement. Copyrights in a work are enforced by the owner of the copyrights. Unfortunately, there are no "copyright police" who’ll do that for you. If someone infringes your copyrights, then you have to sue him to protect and enforce your rights.

Although you may file for a copyright registration in a work at any time during its copyright term, it is better to file right away. A copyright registration filed within three months of first publication of the work allows the copyright owner to seek attorney’s fees and costs and to opt for an award of statutory versus actual damages in an infringement suit. By waiting until later to file a registration, you are potentially leaving money on the table that could have been awarded to you in a copyright infringement suit.


© 2008 BL Speer & Associates

Patents 101 

Posted by BL Speer & Associates Saturday, March 24, 2012 5:48:00 PM

by Brenda L. Speer

What is a patent? A patent is a type of intellectual property. The various types of intellectual property are often confused with one another. To illustrate this point, I came up with the nonsensical question: Can I patent a trademark for a copyright? The answer is: No, you cannot, because patents, trademarks and copyrights are three distinct intellectual property rights.

By way of analogy, there are various modes of transportation, each of which serves a different purpose. Cars drive on land, ships sail on water and planes fly in the air. And so it is with intellectual property rights—each property right serves a different purpose.

Trademarks indicate the source or origin of a particular good or service;

Copyrights protect original works of authorship; and

Patents protect inventions or discoveries.

There are three types of patents:

Utility: One may get a utility patent for any new, useful and nonobvious:

Process (ex., how to make an aluminum can);

Machine (ex., the aluminum can making machine);

Article of Manufacture (ex., the aluminum can);

Composition of Matter (ex., a metal alloy, such as steel); or

Improvement thereof (ex., a pop-top versus a pull-tab aluminum can).

Design: One may get a design patent for any new, original and ornamental design for an article of manufacture (ex., silverware pattern, three-dimensional bottle shape).

Plant: One may get a plant patent for any distinct and new variety of plant, which is asexually reproduced, including cultivated spores, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state (ex., a newly grafted rose plant).

Whether an invention meets the standard of patentability set forth above (e.g., the standard for a utility patent is that the invention must be new, useful and nonobvious) is determined with regard to all prior art in the same field of endeavor in the world known before the date of the invention. What this means in the case of a utility invention, is that when the invention is examined against all prior, relevant, worldwide knowledge, the invention must be new (not known before), must be useful (functional; i.e., no perpetual motion machines allowed), and must be nonobvious (not an insubstantial, obvious variant of what has come before, such as coloring window cleaner green versus blue).

The owner of a patent grant has the exclusive right to make, use and sell the invention disclosed in the patent. This exclusive right endures for a term of either 20 years from the filing date of the patent application for a utility or plant patent, or 14 years from issuance date for a design patent. When the patent term expires, the invention is dedicated to the public by operation of law and anyone can make, use and sell that invention.

Patent rights are jurisdictional. In other words, a US patent grant is only enforceable against infringements occurring in the United States. If you have a US patent for your inventive widget, then someone else could legally make, use and sell your widget in any other country with impunity. However, if they were to export their widget to the United States, then as soon as their widget crossed the border, it would be infringing on your US patent rights.

An invention which is the subject of a patent grant should be marked with patent notice. I’m sure you’ve seen patent notices before on items. On your next trip to a coffee shop or fast food joint, take a look at your take-out cup, lid or sleeve for the patent notice. A notice looks like this:

Utility Patent: U.S. Patent No. 6,012,345

Design Patent: U.S. Patent No. D654,321

Plant Patent: U.S. Patent No. PP12,345

Pending Patent Application: U.S. Pat. Pend.

You can look up a patent by its identifying number in the US Patent Office records at www.uspto.gov. From the information in the patent you can determine what the protected invention is and when the patent term expires.

Patent rights in an invention do not begin until if and when a patent application issues as a patent grant. From the date of application until the date of grant, patent protection rights do not attach to the invention. Accordingly, a patent pending notice is the equivalent of a “beware of dog” sign. It warns the public that the subject invention does not have patent rights yet and serves as a deterrent to infringement.

Although someone could legally make, use and sell an invention while its patent application is pending, as soon as the patent grant issues, then they would be subject to an infringement claim against them from the date of the patent grant forward in time. The duration of this interim pendency period is variable, so for someone to gear up and manufacture a patent pending invention poses a considerable financial risk. Once a patent grant issues, every item of inventory for that invention becomes an instance of infringement. Unless the infringer has a crystal ball, they have no way of knowing when to exit the market before the patent grant issues in order to avoid liability for patent infringement.

As with trademarks and copyrights, there are no patent police. The patent owner is responsible for enforcing his patent rights.

FOREWARNING: If you think you have developed a patentable invention, then it is critical that you seek legal protection for your invention before you publicly disclose it. A public disclosure can be as innocent and simple as showing your invention prototype to your neighbor. In some countries, a public disclosure of an invention before a patent application is filed is an absolute bar to patent protection. Unique to United States patent law, there is a one-year grace period before the absolute bar applies. This one-year period is commonly referred to as the “on-sale bar.” What the absolute or on-sale bar means is that you have exactly one year from the date of public disclosure of your invention to file a patent application. If you fail to file your patent application within the one-year grace period, then by operation of law, your invention is deemed dedicated to the public and you forfeit any right to pursue patent protection for your invention.


© 2008 BL Speer & Associates

Pix & Flix in Cyberspace: To Post or Not to Post? 

Posted by BL Speer & Associates Saturday, March 24, 2012 5:32:00 PM

by Amy Padgett

Many thanks to Amy for researching and writing this blog post! (When originally posted in July 2009, Amy was a Summer Intern at the firm and law student at Oklahoma University.)

Most of us have done it — we have posted, watched and shared photos and video content on popular websites such as Flickr, YouTube, Picasa, MySpace and Facebook. Most, if not all of us, who post content simply click through the obligatory “I agree” sections when setting up a user account on one of these websites. But, you should actually read and understand the terms to which you are agreeing. If you don’t, then you won’t be aware of the rights you are granting these sites with respect to the content you post.

In order to protect your rights in your content, you should thoroughly read the Terms of Service (also known as Terms of Use) and the Privacy Policy for each website before you upload content to a site. These terms are typically found on the home page of the website and are easily accessible. The Terms of Service (TOS) language grants the website a license to use the content you post. Once you understand to what you are agreeing, you can make an informed decision whether or not to create a user account and to post your content on a particular website.

The TOS are somewhat similar from website to website. As an example, let’s look at Picasa’s TOS (Picasa is owned and operated by Google). Picasa is a website to post your pictures for viewing by others, such as family and friends.

Section 9.4 deals with Proprietary Rights and states in part (emphasis added):

Other than the limited license set forth in Section 11, Google acknowledges and agrees that it obtains no right, title or interest from you (or your licensors) under these Terms in or to any Content that you submit, post, transmit or display on, or through, the Services, including any intellectual property rights which subsist in that Content (whether those rights happen to be registered or not, and wherever in the world those rights may exist).

What this means is Google claims no ownership of or intellectual property rights to the content you post. This is good and in your favor. However, Google does require that you grant Google a license to the content you post on Picasa. This license gives Google permission to host, post and display your content on Picasa. Without this permission, Google could potentially be infringing your copyrights in your content. The license protects Google.

Section 11 of the TOS contains the license that you are granting Google by posting your Content on Picasa. The license states (emphasis and parenthetical comments added):

11.1 You retain copyright and any other rights you already hold in Content which you submit, post or display on or through, the Services. (This is good—you own your stuff.) By submitting, posting or displaying the content you give Google a perpetual (forever), irrevocable (you can’t cancel the license), worldwide (everywhere), royalty-free (you don’t get any money), and non-exclusive (you can let others use your stuff, too) licence [sic] (Google’s misspelling in original) to reproduce (copy so they can post it), adapt, modify, translate (manipulate as needed to post it, such as technical requirements for file type and size), publish (post it), publicly perform (play your video, for example), publicly display (post your picture) and distribute (make available to others, such as visitors to the Picasa site) any Content which you submit, post or display on or through, the Services. This licence [sic] is for the sole purpose of enabling Google to display, distribute and promote the Services and may be revoked for certain Services as defined in the Additional Terms of those Services.

11.2 You agree that this licence [sic] includes a right for Google to make such Content available to other companies, organizations or individuals with whom Google has relationships for the provision of syndicated services, and to use such Content in connection with the provision of those services. (This enables Google to legally make posting of your content possible through its business relationships with third parties, such as a hosting service.)

What all this means to you is that by posting your content on Picasa, you grant Google the right to make your photos and video available for viewing by others. You can control whether your photos can be viewed by the public at large or by invitation only. Usage limitations that you control are usually addressed in a website’s Privacy Policy and/or user account settings.

In addition to thoroughly reviewing the TOS you should also read each website’s Privacy Policy before positing content on a site (typically found on the home page or through a hyperlink within the TOS). A website’s Privacy Policy describes the type of Personally Identifiable Information (PII) that the site will collect from you and its policies for using the PII. Typically, you voluntarily provide the PII to the site by entering your name, e-mail address, etc.

Although websites cannot completely guarantee privacy, as no security measures are perfect, one way you can protect and control the content you post on various sites is to ensure that the content is posted in a private setting. This can be done by adjusting the privacy settings on your account and by avoiding posting images and video in public areas of websites, such as chat rooms and message boards.

Many websites have privacy settings that you can control. For example, on Facebook, a user can log into his “Profile” page and make all content posted visible to “only friends.” By adjusting the privacy setting, the Facebook user can limit the accessibility of his content in cyberspace.

Websites frequently change their Privacy Policy and TOS, so it is a good idea to periodically check these sections of the website to see if any material changes have occurred since your initial agreement. Only you as the content owner have the ability to protect yourself, your images and your videos by understanding to what you are actually agreeing when you click “I agree” to a website’s TOS. If you don’t agree with the TOS, then don’t create an account. That’s the only bargaining power you have. Once you click “I agree,” you are legally binding yourself to the TOS. But remember: you have the power to decide with which TOS and Privacy Policies you are comfortable and you have the option to choose on which sites to post your content.

 


© 2009 BL Speer & Associates

Do Orphan Works Need Foster Parents? 

Posted by BL Speer & Associates Saturday, March 24, 2012 5:07:00 PM

by Brenda L. Speer

A bill addressing orphan works was introduced into the Senate in April 2008. It was known as the Shawn Bentley Orphan Works Act. The proposed legislation was passed by the Senate on September 26, 2008, but was never passed by the House.

The Orphan Works Act stirred up controversy at its introduction. Why?

Well, first, we should understand what an Orphan Work is. Copyrights in an original work of authorship arise at the moment of creation. The owner has exclusive rights in the work for reproduction, distribution, preparation of derivative works (modification of the original work), public display and public performance .If someone other than the owner wants to use that original work, then permission must be obtained from the owner of the original work. The owner is usually the author, but ownership in an original work can be transferred by the author to another (just like ownership in any property).

In 2006 the US Copyright Office did a study on the issue of orphan works and made recommendations to Congress based upon the study. An Orphan Work was defined in the report as one whose copyright owner “cannot be identified and located by someone who wishes to make use of the work in a manner that requires permission of the copyright owner.” Perhaps an Orphan Work’s owner cannot be identified, because the work does not have a notice (which is not required under current law), and cannot be located, because the owner is no longer alive (person) or in existence (company).

How do works come to not have notice? It depends on the circumstances. Before the Copyright Act of 1976, it was a requirement that copyright notice be posted on or with the published work, for example: © 1975 Creative Author. If notice wasn’t posted, then copyrights could be lost. Copyright notice was not required on unpublished works. Since 1976, copyright notice is not required to be posted on works.

A work without notice could be a post-1976 work that never had notice. The work could be a pre-1976 unpublished work that wasn’t required to have a notice and, therefore, didn’t. The work could be one which has had its notice removed either unintentionally for a variety of reasons, or intentionally by an infringer. (Note: It is unlawful to remove copyright notice from a work.)

The notice is a way for potential users to know and locate the author or owner of the work to request permission to use the same. What happens if there is no notice? Then determining ownership can be a challenge.

Many years ago I had a client who wanted to reproduce a platter with a western design on it. The platter had copyright notice of a company stamped on it. A search of the US Copyright Office records didn’t turn up a registration. (Registration is not a requirement for a claim of copyrights in a work, but is required to enforce copyrights against infringers.) A search on the company turned up information that it was defunct.

So what happened to the copyright assets in the platter when the company dissolved? Did the rights get transferred to a shareholder? Did another party buy them? Who knows, because the trail went cold. I advised the client that reproduction of the platter without permission could expose it to a claim of copyright infringement later by whomever was the owner now. Given the trail was so murky, from a practical standpoint it was probably a small risk the owner would come forward (if the owner even knew it was an owner), but a risk nonetheless. My client opted not to reproduce the platter.

The Orphan Works Act had provisions in it that, if it were in effect, would have allowed my client to reproduce the platter, with reduced liability for infringement, provided certain actions were undertaken prior to the reproduction.

One of the actions to have been required was that the user/infringer must undertake and document a “qualifying search” to try to locate the owner. Provided a “qualified search” had been made, then the infringer reduced its liability for a claim of copyright infringement later brought by the owner.

In my view, and that of those opposed to the Act, the “qualified search” provision itself posed plenty of unanswered problems and issues that would be left to interpretation by the courts. However, for purposes of discussion, let’s assume a “qualified search” was made and the other required actions were complied with by the infringer. If a “qualified search” was made, then the remedies the owner would have against the infringer are limited under the Orphan Works Act.

There were several aspects in the Senate Bill that, in my opinion, would have been staggering, objectionable changes to existing copyright law. Orphan Works are a valid issue to address, but the proposed remedy was far worse than the ailment.

The subtitle of the bill was apt in terms of exposing the true objective of the bill: “To provide a limitation on judicial remedies in copyright infringement cases involving orphan works.” These limitations weighed heavily in favor of the infringer and would have been extremely detrimental to the copyright owner.

Under the current Copyright Act, an owner whose work is infringed can pursue several remedies against the infringer:

(1) monetary damages, either (a) statutory damages up to $150,000, or (b) actual damages;

(2) injunctive relief to (a) stop the infringement, (b) forbid future infringement, (c) impound the infringing work, and/or (d) destroy the infringing work;

(3) attorney fees; and

(4) costs of suit.

The Orphan Works Act would have eliminated actual and statutory damages, injunctive relief, attorney fees and costs of suit. The copyright owner would have had only one form of new relief: “reasonable compensation.” Under the current Copyright Act, the benefit of the statutory damages provision is that some meaningful monetary relief can be awarded to the owner, because actual damages (or “reasonable compensation”) often are nominal.

To add insult to injury, the Orphan Works Act stated that “reasonable compensation” was “the amount on which a willing buyer and willing seller in the positions of the infringer and the owner of the infringed copyright would have agreed with respect to the infringing use of the work immediately before the infringement began.”

Gee, thanks, Congress. That would have left the copyright owner holding the bag for the cost of enforcing its rights against an infringer, with no ability to stop and prevent future infringement, and with what may have been nominal monetary compensation for the infringement. The elimination of attorney fees, costs, and actual and statutory damages would have chilled any incentive for a copyright owner to sue an infringer. A law suit against an infringer would have involved a lot of unrecoupable time, money and emotional energy on the part of the owner, yet resulted in only a monetary slap on the wrist of the infringer.

As if that was not enough, the bill would have eliminated injunctive relief! What that would have meant is that the owner couldn't have forbidden the infringer from continuing the infringement! Wow, the infringer could have infringed for a nominal monetary penalty (payment of “reasonable compensation” for the infringement) and kept right on doing what it had been doing. This would have put the owner in the untenable position of doing business with the infringer, whether the owner wanted to or not.

Then the Orphan Works Act further provided that if the infringer created a derivative work, the infringer got to have a copyright in its infringing derivative work to boot! What?! Sounds to me like the infringer would have been getting away with theft. It would have been the equivalent of saying:

I can take your home movies (may be they went viral on the web and there’s no longer any identifying information associated with the video and, therefore, it’s orphaned),

Put them in a documentary (I create a derivative work),

Then, after you successfully sue me for using your movies without your permission (remember, you get no attorney fees or costs of suit for enforcing your rights),

I merely pay you a reasonable fee for the use of the movies (you can’t get actual or statutory damages, and the “reasonable compensation” probably will be nominal, because your home movies probably don’t have much, if any, commercial value),

I can continue to use the movies in the documentary (you have no injunctive relief remedy to stop me from continued use), and

I can claim ownership of and copyrights in the documentary!

So, yes, in my opinion, Orphan Works most definitely need foster parents to care for them. The current Copyright Act, although it may be burdensome to a would-be user/infringer, does foster the interests of Orphan Works. Had the proposed legislation been enacted, exploitation of Orphan Works with almost complete impunity would have become the new rule of copyright in the creative wild frontier.


© 2009, 2012 BL Speer & Associates

ISBN Is Not a Text Message 

Posted by BL Speer & Associates Saturday, March 24, 2012 4:54:00 PM

by Brenda L. Speer

ISBN seems like it would be text messaging shorthand for “it’s been” doesn’t it? And it would be used something like this: Isbn gr8 2 c u (for non-texters, that would mean: It’s been great to see you.). Well, ISBN is not text messaging shorthand, but is an acronym with particular meaning in the publishing world.

Part of my clientele is authors and publishers and as a result, I continue to expand my knowledge base about the publishing industry. Here are a few items of interest about books I’ve learned along the way.

ISBN

Ever wondered what the bar code labeled ISBN on the back of the book is? (Another publishing tidbit: in publishing parlance, the outside back cover of a book is known as Cover 4.) ISBN is an acronym for International Standard Book Number. This number is a unique identifier assigned to every book and it provides a standard way to identify books in global trade. The numbering system was created and implemented in 1966.

“Every book” doesn’t mean per book title, but rather each format and each edition of the same book title. That is, a hard cover book and a paperback book of the same title are two different books and, thus, have two different ISBNs. The same holds true for a first edition and a second edition of the same book.

Through December 31, 2006, books had 10 digit ISBNs. Since January 1, 2007, ISBNs have had 13 digits. So, the digit string in the ISBN provides a clue as to whether the book was published before or after January 2007.

Why did the ISBN change? The change to 13 digits was needed in order to expand the numbering capacity of the ISBN system and alleviate numbering shortages in certain areas of the world. Also, by changing the ISBN to 13 digits, the book industry has fully aligned the numbering system for books with the Global Trade Item Number identification system that is widely used to identify most other consumer goods worldwide.

Part of the number sequence of the ISBN identifies the publisher of the book.  According to the US ISBN agency, R.R. Bowker, that issues ISBNs:

“Once an ISBN publisher prefix and associated block of numbers has been assigned to a publisher by the ISBN Agency, the publisher can assign ISBNs to the publications to which it holds publishing rights. However, after the ISBN Agency assigns ISBNs to a publisher, that publisher cannot resell, reassign, transfer, or split its list of ISBNs among other publishers. These guidelines have long been established to ensure the veracity, accuracy and continued utility of the international ISBN standard.”

The 13 digit identifier breaks down into four or five main parts, usually separated by hyphens in the human readable ISBN digits printed at the top of the bar code:

Part I:   Identifies the country in which the ISBN is assigned

Part II:   Group identifier (language-sharing country group)

Part II:   Identifies the publisher to whom the ISBN was originally allocated

Part III:  Identifies the title

Part IV: Check digit which ensures each ISBN is valid (last digit)

With the exception of the final check digit, each part of the ISBN varies in the number of digits depending on the applicable number string designated to identify a particular country, group, publisher and title.

LCCN

The acronym LCCN stands for Library of Congress Control Number. LCCNs are issued by the US Library of Congress upon application of the publisher. The number usually appears on the preliminary page which contains copyright information.

The LCCN numbering system has been in use since 1898. Originally, LCCN stood for Library of Congress Card Number, because the Library of Congress prepared cards of bibliographic information about each book for its library catalog (remember card catalogs?) and it sold duplicate sets of the cards to other libraries for use in their catalogs. This system is known as centralized cataloging. Each set of cards was given a serial number to identify it.

The LCCN is a serially based system of numbering cataloging records in the Library of Congress. Unlike the Dewey Decimal Classification or the Library of Congress Classification, the LCCN has nothing to do with the contents of the book. Rather the number identifies the catalog card that provides identifying bibliographic information about the corresponding book.

Although the bibliographic information now is electronically created, stored and shared with other libraries, the need still exists to identify each unique record. The LCCN continues to perform this function.

Libraries worldwide use the LCCN to catalog most books which have been published in the US. Beginning in February 2008, the Library of Congress created the LCCN Permalink Services which provides a stable URL (Uniform Resource Locator, or identifier of a particular web page on the Internet) for all LCCNs.

The basic parts of the LCCN include a year (year the card was created) and a serial number (to identify the particular card set). For the years 1898-2000, a two-digit year identifier was used and since 2001 a four-digit year identifier has been used. Serial numbers are six digits, including any leading zeros.

PRINTERS KEY

The printers key, also known as the number line, is a convention publishers started using in 1945 to indicate the print run of a book. A print run means all copies of a book printed at a particular time. For example, a first print run of a book may be 5,000 copies. Once the first print run is sold out and more copies of the book need to be printed, that would be the second print run and so on.

The printers key appears on the preliminary or copyright page. A printers key number or letter string looks something like one of these examples:

1 2 3 4 5 6 7 8 9

9 8 7 6 5 4 3 2 1

a b c d e f g h i j k

2 4 6 8 10 9 7 5 3 1

1 3 5 7 9 10 8 6 4 2

The purpose of alternating the digits from left to right, as in the last two examples, is so that the line of numbers remains roughly centered on the page even as the numbers are removed with subsequent printings.

The lowest alpha-numeric character that appears in the printers key indicates the particular print run. That is, if “1” or “a” is present, then that book was produced in the first print run. If there is no “1” or “a,” then that book was produced in a second print run; if there is no “2” or “b,” then that book was produced in a third print run; etc.

Some printers keys also include a date line to indicate the year in which the print run occurred. A printers key for a book that had a third print run in 1980 might look like this:

3 4 5 6     83 82 81 80

Why are the numbers removed, instead of added, with each successive printing? This convention is a hold-over from the days of the hot-metal press where each character on a page was a metal block.

Once a page was set up, the printer needed to remove only a character block from that page’s print sheet before reprinting. Removing only an outer character block, versus adding a block, meant that the fewest possible changes had to be made to the page of characters. In turn, these minimal changes reduced the likelihood of a printing mistake and the resultant charge to the publisher for the change necessitated by the new print run.

The next time you pick up a book, pause a moment to take a look at the preliminary or copyright page. You’ll now be able to decipher some of the information contained on it.

Happy reading!


© 2009 BL Speer & Associates

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