[This article was written and published in 2014. We include it here for its advice and value to organizations, but please read the disclaimers at the end.]
For this month’s article, we spotlight Fitzgerald and Rhodes, LLP, a business and transactional law firm in Washington, DC. They have graciously answered some burning questions for business owners. Whether your business is a start-up or an established company, it probably produces content through marketing activities, social media, or internal and external articles or reports.
Knowing the ins and outs of how to protect vital intellectual property (IP) is essential to your success. We interviewed Stephanie Fiesta and David Rhodes, Partners of Fitzgerald and Rhodes, to find out some of the top issues all businesses should consider when it comes to their IP.
Q&A: Top IP Issues You Should Consider
1. What are some of biggest legal challenges facing small and mid-sized businesses?
Fitzgerald & Rhodes:
Every company faces a different set of legal challenges based on specific circumstances, but one of the most common challenges we see is finding ways to protect IP. IP comes in many shapes and sizes. As a business owner, you need to think about what IP is important and which protection strategy will work best for your company in its industry. For example, should your company protect its IP through patents, trademarks, trade secrets, copyrights and/or direct contracts like non-disclosure agreements (NDAs)?
2. What should a company consider before deciding whether to license a product to a competing company?
Fitzgerald & Rhodes:
There are many different reasons why a company may want to enter into a license agreement, and there are many different types of licenses. In general, there are a few topics you should consider before deciding whether to license your products.
Key considerations when licensing your product:
a. First, consider the scope of the license. The license should permit the licensee to use and modify the product as needed, while protecting against permitting uses not presently contemplated by the licensee.
b. Determine your role in the licensing agreement. Will you be providing bare licenses to intellectual property or will you provide additional deliverables and support to the licensee? If you are providing support, think about what limits will apply to these activities.
c. Consider warranties and indemnification obligations for your product.
d. Ask yourself, “What remedies am I willing to provide?” Include necessary provisions in your licensing contract.
e. Consider what your NDA should include.
Disclaimer: This is a limited list, and it is always a good idea to discuss these issues with an attorney experienced in handling licenses.
3. What, if any, liability is associated with providing or sharing links on the Internet? What about taking “screen shots”? How can companies ensure that they don’t infringe on others’ copyrights when they share information, articles, or resource links on the Internet?
Fitzgerald & Rhodes:
With limited exceptions, all original expressions in a tangible form are copyrighted at the moment of their creation without requiring any further act. When there is no written agreement or creation under an employer/employee relationship, the original author owns the copyright. Any copying or distributing of original works would constitute an infringement of a copyrighted work.
Linking is widely practiced on the Internet and is, generally, found to be permissible as long as the linked site is open to the public. However, you must ensure that any description of the work is your own description; if you use an already established description of the work in question, you may be infringing on another’s copyright. Screen shots can constitute copyright infringement if you don’t obtain the permission of the creator of that work.
When copying any content from the Internet, you should determine who owns the work and what license is provided to the company copying it. The defense of “fair use” is considerably more limited than the concept those words convey, and “everyone else is doing it” is not a valid defense for copyright infringement. So, use careful consideration whenever copying or distributing works found on the Internet.
Needless to say, there are many considerations when engaging in any communications or marketing-related activities. Understanding how to protect your IP can help you build your IP inventory and protect your brand.
We thank Stephanie and David for their expertise.
In full disclosure, Fitzgerald & Rhodes, LLP is a client of Once Upon A Brand, LLC. We did not receive any compensation for writing this article and provide this information because we believe it to be relevant to our audience.
Legal disclaimer: The legal information provided in this article should not be construed as legal advice. You should always consult a qualified attorney before making any legal decisions related to your company.