January 2018 To-Do for Individuals and Companies who Own Intellectual Property
By Connie J. Mableson
If you individually own or if you have an interest in a company that owns intellectual property (IP) assets, January is a good time to prepare an IP audit for you IP assets. An IP audit is simply a list or database pertaining to your IP. It can help you identify IP assets, make the proper registrations to protect the IP, administer any IP licenses, help you to keep tract of the IP’s monetization, and help you collect IP royalties. Your IP audit will create an immediate and long-term impact on your assets and potential income to be collected.
STEP 1: MAKE AN INVENTORY OF ALL YOUR IP. What is IP? It includes:
A. Copyrights: Any creative expression such as text, artwork, graphics, PPT presentations, website HTML, Website code, text on websites, and brochures. Trademarks, Patents, and Trade secrets.
B. Your WEBSITE. Make sure you OWN your (a) URL and (b) your HTML and website. Perform a WHOIS search at www.whois.net to see if you (or your website development company) own your URL. If not, make sure you get the purported owner to transfer ownership to you and make sure the registrant’s records (like GoDaddy) are changed. Then make sure you get, from your website developer and anyone who contributed anything to the website, a release of rights to you. Under copyright law, the developer of your website owns your website unless the developer has transferred ownership to you IN WRITING.
C. Music. IP includes any musical compositions or master sound recordings you may have made.
D. AV Productions. IP includes any audio-visual productions you made. From corporate videos, to product videos, music videos, or any YouTube videos. This can also include films, documentaries, commercial adverts, etc.
E. Trademarks. Are you using any word marks like company name, product names, services names? What company or brand logos are you using? Make a list.
F. Patents. DO you have any utility or design patents?
G. Trade Secrets. Do you have any trade secrets in the way of processes, formulas, methods, that need protection but have not been protected by filing a copyright or patent? These need to be listed and identified as CONFIDENTIAL INFORMATION. Only certain people should have access to your trade secrets and they should only be disclosed on a need to know basis and always under a Non-disclosure agreement.
Step 2: PROTECT YOUR IP.
A. Copyrights. Any creative expression such as text, artwork, graphics, PPT presentations, website HTML, Website code, text on websites and brochures, musical compositions, master sound recordings, and audio-visual productions should be registered through the U.S. Copyright Office.
B. Patents should be registered with the USPTO-Patent Office.
C. Trademarks should be registered:
-at the state level. Either with your state’s corporation commission or secretary of state (each state is different), you should register your marks, names, and logos so you have priority in your state.
-federal level -USPTO. If your marks, words, slogans or logos are used in more than one state, you can apply for a federal trademark registration. Consider conferring with a Trademark attorney to get this done properly. Not all marks or names are eligible for registration.
D. Trade Secrets can only be protected by Non-Disclosure Agreements. Make sure you have a form of NDA that includes a non-circumvention provision and is up to date.
Step 3: CHECK YOUR CONTRACTS. Some of your IP may be licensed under License or similar agreements. Make sure you have copies of all licenses in the file for the specific IP. Check the licenses to make sure you are in compliance and that the licensee is also in compliance for payments, reporting, etc. If not, you may want to see legal counsel to help you get the licensee in compliance.
Step 4: DECIDE OF YOU NEED FOREIGN PROTECTION. This may be the year you decide to obtain foreign protection for your IP. This could mean foreign copyright application, foreign trademark application or Madrid protocol or other international registration for trademarks.
Step 5: TICKLE ALL DEADLINES for filing updates, renewals, etc., in your individual/company master calendar. Trademarks and patents require renewal. Tickle these dates. Also, all of your IP contracts should have dates tickled for termination, renewal, option periods and anything in the contract that requires action by either party. By doing this, you can also budget for the renewals and have a good idea what monies you will need and when for renewals.
DISCLAIMER: The materials in this article and as may appear on www.mablesonlaw.com, www.dmcabook.com, and www.literaryattorney.com (the “materials & websites”) are made available by Connie J. Mableson, PLLC for informational purposes only and are not legal advice. The transmission and receipt of information contained in and on the materials & websites do not form or constitute an attorney-client relationship. I am not your attorney unless you have signed a written engagement letter with my firm. Persons receiving the information in and on the materials & websites should not act upon the information without seeking professional legal counsel. In the event the materials & websites are not consistent with the rules or laws governing communications of legal services in a particular state, and a client contact is generated as a direct result of such materials, Connie J. Mableson, PLLC is unwilling to assume the representation of the client contact.
