What Happens If I Infringe on Someone’s Copyright?

As an attorney for startups and up-and-coming companies, I am often asked questions such as these:

“do I need permission to use someone else’s song in my Kickstarter video?” or “what will happen if I just use it?” or “if the band or label catches me, they can just tell me to stop, right?”

To answer those questions, it is important to explain the basic underlying concept of Federal Copyright law, so read a brief explanation here.. 

Simply put, if you are using a creative, intellectual or artistic work without the owner’s permission, then you are infringing on that party’s Copyright.   Even if the Copyright is not registered, the Copyright owner can sue you to try and recover ‘Actual Damages’.  This means that the Copyright owner can take you to court and have a jury decide what the actual monetary harm is.

If a Copyright is registered with the Library of Congress before and you infringe, then the Copyright owner can sue you for ‘Statutory Damages’ (under 17 U.S. Code § 504).  Here, no proof of actual harm is needed.  The range of the award amount is written into the code: $750 to $30,000 for each work infringed.

If there is evidence of willful infringement (ie. the infringer knew or should have known about the fact that the work is copyrighted), then the award can go up to $150,000 for each work infringed.  In such cases, the Copyright owner can also recover attorneys fees and other costs of the lawsuit from you.  The actual amounts that are awarded are at discretion of the judge.

Keep in mind – a single ‘work’ can be subject to multiple Copyrights from different parties.  In the case of a song, rights to the  music, lyrics, and recording can all belong to different parties.

This explanation obviously does not apply if the work is in the ‘Public Domain’ (either due to the Copyright’s expiration or by the work creator’s choice).  If you plan on using the ‘Public Domain’ exception, make sure that all elements of the work you want to use are covered.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Andrei Tsygankov is the Co-Founder and COO of SmartUp® and a partner at Founders Legal (Bekiares Eliezer LLP). As an attorney, Andrei specializes in corporate, commercial, trademark, and international business matters.

andrei

Source: Smartup Legal

What Is a Copyright?

If a person today creates an intellectual, creative or artistic work, the form of that work is automatically protected by Federal Copyright law (Title 17 of the U.S. Code).  Copyright protection does not extend to the underlying ideas or information, but simply to the form in which they are presented.

As of 1989, Copyright protection for works that are copyrightable is automatic (courtesy of the Berne Convention and the 1989 Berne Convention Implementation Act).  Simply displaying the symbol ‘©’ lets people know that the work is Copyrighted – although even that notice is not a requirement.  A Copyright holder can register the Copyright with the U.S. Library of Congress.  The benefit to registration is mainly the ability to recover more damages from infringers.

If the creator of a copyrightable work is a physical person, then he enjoys Copyright protection for the work for his life plus 70 years.  If the creator is an entity (a business), then the Copyright protection is either 120 years following the creation of the work or 95 years after the work is published.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Andrei Tsygankov is the Co-Founder and COO of SmartUp® and a partner at Founders Legal (Bekiares Eliezer LLP). As an attorney, Andrei specializes in corporate, commercial, trademark, and international business matters.

andrei

Source: Smartup Legal

What Is Trade Dress?

The term ‘Trade Dress’ refers to the overall aesthetic, visual design of your product or even your brand as a whole.  This is all about a unique look that consumers associate exclusively with your brand or product and no else’s.

Trade Dress can include one or more of the following:
  1. Colors or color combinations
  2. Visual designs (including patterns)
  3. Unique shapes
  4. Layouts
  5. Packaging
  6. Even the Overall ‘Look and Feel’
How Can I Protect My Trade Dress?

The best way to protect your Trade Dress is to register it with the USPTO as a Trademark under the Lanham Act.  There are many benefits to doing so.  The real key to protecting Trade Dress is that it has to be:

  1. Distinctive (truly unique to only you); and
  2. Non-Functional (it cannot involve any useful components that give your design any utility)

For example:  Picture a classic Coca-Cola bottle with its red and white label.  Coca-Cola could have been made its bottle to be of any shape; the label could have been of any color.  Different choices here would have made no functional difference to the product (so, non-functional).  Instead, Coca-Cola chose its bottle shape and colors for aesthetic reasons and then invested heavily, over time, into making them iconic and instantly recognizable (and thus distinctive).

How Can I Use My Trade Dress Registration To My Advantage?

You can file a Trademark application to protect each unique visual aspect of your brand or specific product (this can be anything from a physical product to a computer user interface).  If granted, the resulting registrations would then work together with the Trademark registrations you have on your name and logo to keep unscrupulous competitors from copying any visual aspect of the brands or products you worked hard to create and promote.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Andrei Tsygankov is the Co-Founder and COO of SmartUp® and a partner at Founders Legal (Bekiares Eliezer LLP). As an attorney, Andrei specializes in corporate, commercial, trademark, and international business matters.

andrei

Source: Smartup Legal

Is My Invention Patentable If It Integrates into an Existing Product?

To begin the analysis, we must first answer the following:

  1. Is the “invention” something that exists already and you are applying it to an existing product to improve the existing product’s performance? OR
  2. Is the “invention” unique and you are applying it to the existing product to improve the product’s performance?
  3. Does the “invention” have a utility outside of the existing product that it is applied to?

If any of the answers above are “YES” – then you may qualify for a utility patent filing. If not, then you may qualify for a design patent filing. This article assess the utility patent prospects of the invention.

You can file a single patent application to cover the invention, the invention/equipment combo, and the improved equipment integrating the invention as a whole. If you are just at a ‘proto-type’ stage, you have two options 1) file a provisional patent application on the proto-type, secure “patent-pending”, or 2) try to develop a finalized design and file for the full patent.

I usually recommend method (1). It will enable you to go to manufacturers with the security of knowing that they won’t ‘steal’ your design or face federal consequences if they do. Then, working with a manufacturer/engineer, you can develop the final product and convert the provisional to a full patent at that time.

Having a full patent-pending, you can then begin to approach equipment companies for licensing of your ‘invention’. Licensing will enable you to collect royalties on the use/sale of any equipment that incorporates your invention.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

 

Source: Smartup Legal

Can You Add Another Person to Your Patent Application?

“If I filed for a provisional patent as the sole inventor, is it possible to add another inventor when filing for the nonprovisional patent if he makes a contribution to the invention?”

You may add additional inventors to your non-provisional application.  The non-provisional must have at least one inventor in common with the provisional patent application.

It is important to understand, however, that the inventors listed must correspond to the subject matter stated in the patent claims, not the patent specification.  An inventor is someone who contributed to the conception of a patent claim.  Patent claims are not required provisional patent application, but they are required in the non-provisional… so you must carefully assess who may or may not be listed as an inventor in the non-provisional patent application.

In addition, if you are adding an inventor because the inventor contributed additional subject matter after the provisional patent filing – you must be careful.  Adding new subject matter in the patent claims that was not covered in the provisional may cause the patent examiner to decline your priority claim to the provisional application.  This is because the provisional patent application must at least anticipate the subject matter claimed in the non-provisional application.

As such, you must file a non-provisional patent application with the same subject matter as the provisional and then, you must file a continuation-in-part application to cover the new subject matter not covered by the provisional.  This will enable you to preserve your priority claim to the provisional – else, you risk losing your claim!

I would strongly advise that you retain a licensed attorney for the non-provisional filing.  I have not met an inventor who has obtained enforceable and defensible patent protection without the support of a licensed patent attorney.  There is a high risk of abandoning your patent rights to the public domain.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

 

Source: Smartup Legal

Can I Convert a US Provisional Patent Application to an International Patent Application?

A US provisional application must be filed in the US or any foreign country within 12 months of its filing date to benefit from the priority date established by the provisional application.  As such, the provisional patent application provides the patent applicant with 12 months to decide in which countries a patent application should be filed (US or other jurisdictions).

However, in that same 12 month window, the patent applicant may choose to convert the US Provisional to an international, patent cooperation treaty (PCT) patent application.  Here is how the process generally works for PCT applicants:

  1. PCT Application is filed (by 12 month filing deadline)
  2. PCT Examination Results received (6-8 Months from PCT filing)
  3. Select Which PCT member states in which you would like your PCT application recognized (within 30 months)
  4. Report your PCT Application and Examination Results to the member state (US/EPO/CA/CN/JP/RU/etc).

As such, filing a PCT application essentially takes that 12 month US deadline and turns it into a 30 month extension (18 additional months) for all 148 PCT member states.  It is important to properly draft US provisional patent applications in anticipation to an international conversion.  Consult a licensed patent attorney for this process.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

 

Source: Smartup Legal

Patents Stats 2014 (Infographic)

If you are thinking about filing for a patent in the new year, it is important to take a look back at patent stats from 2014 to better understand certain aspects such as how long you might be waiting for a patent, and to what industries the most patents going. After gathering data from the USPTO, we have constructed an infographic to enable you to quickly understand everything that is happening in the world of patents.

In 2014, the largest player in the patent industry was, by no surprise, the tech giant IBM with 6,737 issued patents, closely followed by fellow tech companies, Samsung, Canon, Sony, and Microsoft. In terms of a waiting period, the average time it took for a patent to reach completion was 27.4 months, however, this number varied by industry due to the complex nature of the patents. The shortest waiting time was seen within the biotech industry at 26.2 months, and the longest was software and information security at 31.7 months.

Among the 329,000 total patents issued, plant patents experienced the greatest surge with a 20% increase from the previous year. Utility patents closely followed with a 14% increase from 2013, and design patents experienced a 7% increase. Of the total issued, the majority went to large entities while the remainder (~20%) went to small entity and micro entity companies. Within the US, the states granted the most patents were also states that boast large technology sectors and startup communities. These states included California with 44,147 patents, which was by far the highest amount, followed by Texas, New York, Washington, and Massachusetts.

Through the data gathered, it is easy to see that more and more people are seeking patents to protect their intellectual property. Legal security is no longer reserved solely for the IBMs of the world. There are now affordable ways for small companies and even independent inventors to protect their innovative ideas.

For the full infographic visit Entrepreneur.com/article/232903

patent-stats-14-excerpt

If you are interested in more detail related to your situation it is best to speak with an attorney.

Andrei Tsygankov is the Co-Founder and COO of SmartUp® and a partner at Founders Legal (Bekiares Eliezer LLP). As an attorney, Andrei specializes in corporate, commercial, trademark, and international business matters.

andrei

Source: Smartup Legal

Another Invention Does Something Similar to Mine – What Should I Do?

There are other inventions that do the same thing or provide the same result as my invention, but my invention does it differently. Is my invention still patentable?

Rarely do patents protect a RESULT and the RESULT is seldom patentable for most field of inventions without also claiming the functional elements used to obtain the result (e.g., electro-mechanical inventions). Rather, patents more often protect the functional components/systems/processes that are used to obtain a desired RESULT, however common the result.

Can the functional elements that are used to achieve the result in your invention (albeit a common result) be distinguished from the elements of a previously patented invention that may be used to obtain the same result? If so, then there may be a patentable distinction between your invention and the patented invention.

The next question we should ask is whether your functional elements are a mere obvious variation of the patented invention? If not, then we move to the second stage of the analysis: is there any prior art that discloses the same/similar functional elements but for the purposes of obtaining a different result or utility in a different field of use?

If so, we may run into the legal issue of “obviousness” – would it have been “obvious to one of ordinary skill in the field of your invention” to take the functional elements from one field of use and apply it to another field of use? Or, could you argue that there was a step of ‘inventiveness’ that was required to create your system.. for instance, was it necessary to modify the elements of your invention in order to obtain the desired result in the different field of use?

TL;DR:

1. Same result, but different functional elements may be patentable IF:
2. Functional Elements have not been previously combined to obtain desired result; or

a) Functional Elements have not been previously combined in the current field of invention, and
b) Inventive modifications were necessary to obtain desired result in the current field.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal