Are Templates And Forms Protected Under Copyright Law?

Here is a common question I get from clients: I invented a new type of diagram design related to social sciences. How can I legally prevent anyone else from teaching and displaying my diagram? Let’s say I was the first to invent the Venn diagram. Can I obtain a copyright or a patent prevent anyone from using or displaying it?

You are right to gather that the law surrounding copyrights of diagrams is difficult to generalize. Typically, a “template” or “fill-in-the-blank” diagram is not copyrightable. So a “Venn Diagram” man not be protected by copyright law, since it can be regarded to as a ‘template’.

When a completed diagram (e.g., on that is ‘filled-in’) is copied, as a whole, without much ‘transformation’, it may be considered a copyright infringement. The extent of transformation required relative to the original work is typically assessed on a case-by-case basis.

In general, blank-forms or templates are not considered a work of authorship sufficient for copyright protection. This is because such templates/forms reflect general IDEAS. Ideas are not copyrightable. Rather the Expression of the Idea is copyrightable. Your words/illustrations/creations used to bring an Idea to life are considered the copyrightable expression. This is why, in general, blank forms are not protectable under copyright law whereas completed-filled-in forms would be protectable.

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 Infringe on a Patent Application That Is Currently Pending?

Clients often present to me some ‘patents’ they found through Google and ask me if they infringe the subject matter of the patent. This is a very loaded question and difficult to answer. But before even getting to the answer, it’s important to understand what the “patent” document cited by the client actually is.

First, it is important to distinguish a granted patent from a patent application publication. A granted patent entitles the patent owner 20 years of rights to exclude others from making, using, and selling the patent invention (as listed in the patent claims portion of the publication). A patent application publication (which is what you listed) only discloses to the public that the patent applicant has applied for a patent. It does not mean that a patent has been granted.

Both patent applications and granted patents are published. This means that a single patent filing will publish twice if it passes examination: first prior to commencement of the patent examination and again after examination has determined that the patent application is to be a granted patent. The first publication is mean to put the public on notice of a patent-pending examination, while the second publication is meant to put the public on notice of an actual granted patent.

Almost every non-provisional patent application that is filed to the USPTO gets published 18 months after its earliest filing date (whether the filing date of a related provisional or the filing date of the non-provisional patent filing itself). Sometimes, and for strategic reasons, the patent application may request that the patent application remain unpublished unless a patent is granted (in which case publication occurs post patent-grant).

Until a patent is granted, it is hard to determine what activity would constitute an infringement – simply because we do not know 1) whether the patent application will be issued as a patent by the patent examiner; and 2) what scope of patent protection will ultimately be granted to the patent application. This is an important distinction as the subject matter a patent applicant hopes to obtain patent (and as applied for in the published patent application) usually differs from the subject matter that is actually granted patent (due to patent examination requirements).

So, if you are trying to determine if you would be potentially infringing a patent application – It is important you monitor this application, and any other related application, to see what might issue to patent. Until then, you may act at your own discretion, knowing that there is a risk of patent infringement if the patent is to be granted. Until a patent is granted, infringement cannot occur.

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

If I Withdrew My Patent Litigation Claim, Can I Re-File It Later on?

In general, there is no statute of limitations on a claim for patent infringement. However, the Patent Act specifies a time limit on monetary relief for patent infringement claims – damages are available only for infringement that occurs within the six years prior to the filing of the complaint. In general, a voluntary dismissal (unless it’s the second such dismissal associated with that particular claim) just serves to wipe the slate clean – it is as if the suit was never filed. In that sense, it does not serve to toll any limitation period.

In the event the suit has been dismissed twice, the claim is most likely barred by res judicata as the second voluntary dismissal of an action operates as a dismissal with prejudice.

One other issue to point out on the topic of time limitations associated with patent infringement claims, while there is no formal statute of limitations, a defendant can still assert the affirmative defense of laches to prevent a patent holder from pursuing a claim, asserting that the delay in bringing suit is unreasonable, and the defendant will suffer material prejudice due to the delay. There is no formal time for the application of laches – it just depends on the situation.

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

Megan K. Johnson is a business lawyer with over 7 years of experience. She helped champion securities crowdfunding at the local level and worked with the first company to successfully close an equity crowdfunding involving everyday investors. She is a partner at Founders Legal and can be reached at [email protected]

megan

Source: Smartup Legal

Intellectual Property 102 – Identifying, Securing, Capitalizing, and Early Stage Enforcement

Legal mistakes can doom even the best startup concepts and founding teams. It is important to know who owns the IP, the proper timing for registration, and how to enforce your legal rights. This presentation gives you a legal road map to successfully safeguard your product or idea.

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

How Long Does It Take to Register a Trademark?

The length of the U.S. Federal trademark registration process can vary. Once filed, an application is typically assigned to an Examining Attorney within about 3 months. The Examining Attorney will firstly review the application to make sure that the applied-for mark can be registered at all. The Examining Attorney will then review the selected classes and sub-classes in the application, make sure that the specimens are acceptable, and that ‘use’ of the mark is proper. Finally, the Examining Attorney performs a search to find possible conflicting marks – including those that look or sound substantially similar to the one in the application.

If the applied-for mark can be registered, no issues are found in the application itself, and if no conflicts are found, then the Examining Attorney will issue an ‘allowance’. An allowance simply means that the mark has passed the USPTO’s internal review, which is oftentimes the biggest hurdle for registration. It is not atypical for this process to take 1-4 months after the application is assigned to an Examining Attorney.

Once the mark is allowed, the application is published for opposition – a period of 30 days during which third parties can ‘oppose’ the mark, if they reasonably believe that registration of the mark in the application will harm them. If no third party opposes the application, then a registration is typically issued 1-2.5 months after that.

Therefore, a period of approximately 8 months from filing to registration is not unusual. There is a possibility that a registration may be granted within 6 or 7 months. It is also worth mentioning that a registration can require much more time (possibly years) if the Examining Attorney issues a refusal or if a third party files an opposition to the application.

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

LLC or Corporation: What Is Best for Your Startup?

The most significant difference between an LLC and a Corporation is in a) structure and b) governance.

Generally speaking, the way a Corporation is structured and run is well-defined, with little room for variance. An LLC is structured and run by contract between the LLC and its owners (the Members), which makes it very fluid and adaptable.

A Corporation is very rigid – the way in which it is set up and run is defined by law and practice, so there is little room to change things. The benefit of a rigid structure is predictability – everyone involved (investors, lenders, advisors, employees etc.) knows exactly how a Corporation works. This rigid Corporate structure is also highly scalable.

An LLC, however, is a much newer type of entity, and it is designed to be very flexible. The state laws and rules that define LLCs are typically very broad – and purposefully so to allow for variation.

The LLC can be structured, governed and taxed exactly like a Corporation, but can be set up for the Members (owners) to run the LLC directly, without a board. The roles can be defined by contract (Operating Agreement) between the LLC and its Members.

The obvious benefit is that an LLC can be tailored to meet the exact needs of a specific business. There is however, a drawback: Since the baseline laws are broad, the governing documents must be very well done to avoid nasty surprises.

The most important document in an LLC’s toolbox is the Operating Agreement – which is the contract that defines how the company is run.

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

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

How Is Licensed IP from a University Affected During an Acquisition

If a startup company uses an exclusive licensed IP from a university, what usually happens if the company wants to get acquired by a larger company? Do large companies usually avoid acquiring a company with a licensed patent?

The question can be answered whether or not you have an exclusive license to the IP from a University, an Individual, or an Entity. We must first visit the terms of that license agreement to determine whether the agreement includes a Successors & Assigns clause. This clause states that if either party is acquired, the acquiring party is subject to the agreement just as if it were the original party to the agreement. It means that if someone were to acquire the licensor (e.g., the entity granting the license), then that acquiring entity would be required to honor the terms of the license. Similarly, it means that if someone were to acquire the licensee (e.g., you in this case), that the acquiring entity would be entitled to the same terms of the license.

In some instances, the Licensor writes in the agreement that the terms of the license should be renegotiated upon an acquisition of either the Licensor or the Licensee.

The next thing we should consider are the actually terms of the license and what it would mean to the entity acquiring inheriting the licensing agreement. If the entity subject to the license highly relies on the license agreement, then the acquiring entity will carefully scrutinize the terms.

For instance, when does the license expire? What happens when the license expires? Will the licensor be willing to renew the license to the acquiring entity? Are there any conflicts of interests between the licensor and the acquiring entity (do they want to do business with each other)? Will the licensee be able to provide his/her products/services without such license? Is it possible to design proprietary products/services to circumvent the license? How much of the company’s value/worth is associated with/relies on having the license? Can the acquiring party get such license themselves and thereby eliminate the need for your company altogether (exclusive licenses prevent this)?

In general, even large companies have many license agreements they are bound to themselves. They acknowledge that this is a normal part of business. However, if your company will collapse if such license agreement is not in place then it may be harder to be acquired.

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 Use a Competitor’s Name in Advertising?

Some of the most memorable advertising campaigns in history involve the comparative use of competing trademarks.

Coke vs. Pepsi; Burger King vs. McDonald’s; Bud Lite vs. Miller Lite… The list could go on and on.

If you are a major consumer brand, chances are you have thought about how to create your own consumer identity by comparison to or distinction from your competition.

But proceed with caution. A thoughtless ad campaign that carelessly namedrops another company’s trademark could land you in court.

The Quick and Dirty

In general, it is not illegal to compare yourself to your competitor in the advertising context, so long it is not untruthful, disparaging, misleading, or confusing to the public. Additionally, the use of a competitor’s trademark cannot lead the public to believe that the company is endorsing you.

But what do those generic rules look like in practical application?

 What You Can Say

1. Consumer Comparison Survey

Courts have held that it is legally defensible to conduct actual consumer comparison surveys and truthfully report the results. In short, anything you say about a competitor must be substantiated.

Remember the Pepsi Challenge? In its never-ending war against Coca Cola, Pepsi sought to prove its claimed superiority with an actual consumer taste test. At malls and other public locations, a Pepsi representative poured Pepsi and Coke into two blank cups and asked consumers what soda they preferred. Pepsi was lawfully entitled to publish its results, which it claimed showed that American consumers preferred Pepsi. But the takeaway is that anything you say about your competition that could be construed as “factual” (rather than obvious opinion-like statements that no consumer would take seriously) must be substantiated.

2. Brand References

Although a fine line should be recognized here between acceptable references and inappropriate endorsements, courts have held that the use of a trademark where there is no attempt to capitalize on consumer confusion or the commercial cache of a certain brand would be acceptable. For example, a court found permissible AOL’s effort to market to AARP membership with the following advertisement: “If you danced to the Beatles, cruised in a Thunderbird, or tuned into Dick Clark, you have earned . . . 100 hours free [Internet service on AOL].” Clark and Olive Enterprises, Inc. v. America Online Inc., 2000 WL 33535712 (C.D. Cal. 2000).

3. Compatibility Assurances

If your product serves as an accessory to another company’s product, you can advertise that compatibility. For example, compatibility advertising is frequently seen with i-Phone accessories – it is permissible for a company that makes i-Phone protective cases to mention Apple and its product the i-Phone in an advertisement about a protective case.

But caution should be taken here to ensure that compatibility advertising does not create an impression of endorsement or an affiliation between the two companies. For example, in a case between Stouffers and Weight Watchers, the Court found the following language likely to create consumer confusion: “Stouffers presents Weight Watchers exchanges for all 28 Stouffer’s Lean Cuisine entrees.” According to the Court, the use of the word “presents” between the marks “Stouffer’s” and “Weight Watchers” “creates the impression either that Stouffer owns Weight Watchers, or more likely that Stouffer is presenting these exchanges for Weight Watchers – in other words, that Weight Watchers gave Stouffer the exchanges to publish in the ad.” Weight Watchers Int’l, Inc. v. Stouffer Corp., 744 F.Supp. 1259 (S.D.N.Y. 1990).

Conclusion

With common sense and a good understanding of the legal parameters, companies can acceptably reference a competitor’s brand in an advertising campaign. But, given the heightened scrutiny trademark owners will give to the unauthorized uses of their market, caution should be taken to ensure that an advertisement avoids ambiguous language, which could cause consumers to be confused as to source, identity or sponsorship of the product or service. Anything even arguably deceptive or misleading must be avoided, and all direct factual comparisons must be substantiated.

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

Megan K. Johnson is a business lawyer with over 7 years of experience. She helped champion securities crowdfunding at the local level and worked with the first company to successfully close an equity crowdfunding involving everyday investors. She is a partner at Founders Legal and can be reached at [email protected]

megan

Source: Smartup Legal

Website Terms and Conditions, Why Do I Need Them?

Three Ways The Most Boring Page on Your Website Offers Critical Protection

Although web professionals spend almost no time on it, website terms and conditions govern the relationship between your company (or the entity running the website) and visitors, users and customers. So, as a founder, this page shouldn’t be ignored. Depending on the type of business you have, there are specific provisions you should include in your terms and conditions to make sure your company’s unique risks are mitigated. However, highlighted below are some general provisions that are a good idea for most companies with a web presence to address.

1. E-Commerce:

If you are selling goods through your website, your terms and conditions are especially important. You should make sure to include your return policy, whether you will make full refunds for dissatisfied customers, and what transit risk you are comfortable taking on – for example, will you be responsible if a product breaks when a customer is shipping back a return? Disclaimers on your liability and any warranty you make in reference to your product are also critical.

2. Protect Your Original Material:

When you put your work on the internet, you are literally making your hard-earned wisdom or recommendations available to the entire world. To protect against any improper third party use, you may need to prominently display notices regarding copyright or trademark. Additionally, to protect against a visitor who may use your content in a manner that you did not intend or who relies on the information you provide to his or her detriment, you should be sure to include appropriate disclaimers and limitations of liability.

3. User-Submitted Information:

If your site displays any information submitted by users (including standard “user profile” details), you should limit your liability from any libelous or offensive material, as well as any material that may infringe on the intellectual property of others. In addition to specifically disclaiming liability, you must also develop policies around when you will monitor and remove content and clearly state these policies in your terms and conditions.

To conclude, if given proper attention, you are entitled to largely ignore the terms and conditions of your website, so long as you initially make sure they adequately protect you and remain up to date. If so, the only time you’ll refer to them is to help you out of a jam. But if no attention is given to this boring little page, you may pay later with unmitigated legal exposure. Make sure to consult an attorney to ensure that your particular company risks are being appropriately mitigated.

 

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

Megan K. Johnson is a business lawyer with over 7 years of experience. She helped champion securities crowdfunding at the local level and worked with the first company to successfully close an equity crowdfunding involving everyday investors. She is a partner at Founders Legal and can be reached at [email protected]

megan

Source: Smartup Legal