Explores factors related to copyrights including what is protected, the company development cycle, rights and registration. Trademark factors include what is protected, common law rights, registration, clearance searches and filing strategies.

1. Series 3
Practical on Copyrights and
Trademarks
By:
Attorney Advertising
Wayne Kennard
Zachary Piccolomini

2. Copyrights – What is protected?
• Copyrights protect original works of authorship,
including:
•
•
•
•
•
Presentations
Company operating/instructional manuals
Whitepapers
Computer software
Screen displays and graphical user interfaces
• Does not protect facts, ideas, systems, or methods
of operation
• Although it may protect the way these things are expressed
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3. Copyrights – What is protected?
• Does not protect company names
• May be protected by trademarks
• Question:
• Company A and Company B come up with exactly the
same copyrightable computer software program. Company
A did it on March 1 and Company B did it on March 10.
Who owns the copyright?
• What factors would change the ownership result?
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4. Company Development Cycle
Alpha Stage
[Internal Review/Testing]
1.
Provisional Pat. Appln.
Beta Stage
[Selective Customer/Client Testing]
Production Stage
[Public Use: Sales and Licensing]
1.
Provisional Pat. Appln.
1.
Provisional Pat. Appln.
2.
Utility Pat. Appln.
2.
Utility Pat. Appln.
2.
Copyright Protection
3.
Copyright Protection
3.
Copyright Protection
3.
Trade Secret Protection
4.
Trade Secret Protection
4.
Trade Secret Protection
Update Stage
1.
Provisional Pat. Appln.
2.
Utility Pat. Appln.
3.
Copyright Protection
4.
Trade Secret Protection
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5. Copyrights – Automatic Rights
• Rights automatically vest upon creation.
• Provide copyright notices on:
• GUIs/screen displays
• Manuals, brochures, and other documents that generally
published or going to particular third parties
• For software-based product/service offerings, the company
should embed plain language copyright notices in (1) uncompiled source code and (2) compiled code
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6. Copyrights - Formal Registration
• Formal registration is optional, but has advantages:
• (1) Access to statutory damages
•
•
$750-$30K per occurrence without proving actual damages
Can increase to $150K per occurrence for willful infringement
• (2) Shows investors that the company is sophisticated
• To register online, go to the Copyright Office website
at www.copyright.gov and click on “Electronic
Copyright Office” (Registration Walkthrough Coming Up)
• Filing fee is $35 online, compared to $65 for paper filings
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7. Copyright Registration for Softwarebased Products
U.S. Copyright Office Circular 61 (see Exhibit)
• Provides special rules for registering software-based
product/service offerings
• Filing requirements:
• Application
• Non-refundable filing fee
• Non-returnable deposit
•
•
If includes trade secrets, can block out trade secret portions
If want to register screen displays, the company need not
specifically reference the screen displays (alternatively, the
company can reference the screen displays, but then must
also include identifying materials)
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8. Copyright Registration
U.S. Copyright Office Circular 12 (see Exhibit)
• Recordation of Transfer and Other Documents
• Transfer of copyright ownership
• Filing requirements:
• Document must have the original signature (or proper
certification of a photocopy)
• Document must be complete
• Document must be legible
• Pay the filing fee
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9. Copyright Registration
Copyright Registration Walkthrough
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10. Trademarks – What do they protect?
• A trademark is a word or phrase, symbol or design,
or a combination thereof, that identifies and
distinguishes the source of:
• Goods of one party from the goods of others (trademark)
• A service rather than goods (technically a “servicemark”)
• Goods include physical goods, such as:
• Pharmaceutical products
• Computers
• Services include non-physical functions, such as:
• Financial planning
• Landscaping
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11. Trademarks – Common Law Rights
• Registration is not required – a company can
establish rights in a mark based on use of the mark
in commerce
• May allow company to challenge a trademark registration
or application
• Company can mark the trademark with “TM”
• Typically geographically restricted to actual use
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12. Trademarks – Registration
• Registration with the US Patent and Trademark
office provides several advantages:
• A legal presumption of ownership of the mark
• An exclusive right to use the mark nationwide on or in
connection with the goods/services listed in the registration
• The ability to bring an action in federal court
• The right to use the federal registration symbol ®
• The right to prevent others from using your trademark in
URLs
• Registration gives an investor comfort to know that
they can freely use the trademarks
• Also shows sophistication of the company
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13. Trademarks – Clearance Searches
• Trademark applications are compared against other:
• Trademark Registrations (Live)
• Trademark Applications
• Trademarks can also be opposed by common law
trademarks
• Cost saving tip – company can perform its own
clearance search
• Search the trademark office – go to
http://www.uspto.gov/trademarks/index.jsp and click on
“Trademark Search”
• Search the internet
• Search the secretary of state for major states (e.g., MA,
DE, or other states of interest)
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14. Trademarks - Filing
• Can file online by completing the online form at
http://www.uspto.gov/teas/teasplus.htm (Trademark
Application FilingWalkthrough Coming Up)
• Typically file:
• On principal register
• With a “standard character” designation
• With one or more classes of goods/services ($275 per
class)
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15. Trademarks - Filing
• Class descriptions are at:
• http://www.uspto.gov/trademarks/notices/international.jsp
• Can either write out a description of the class, or adopt one
from the USPTO
• Recommend working with an attorney to select the
class(es), and to draft the description of each class if the
classification cannot be easily found online
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16. Trademarks – Filing Strategies
• Need not use the trademark – can file an “intent-touse” application (Recommended)
• Best option is to file (1) on principal register for (2)
standard character trademark. Alternatives include:
• Using a stylized mark (e.g., designs, pictures, etc.)
• Seeking registration on the supplemental register
• Can seek help of an attorney to respond to
rejections, which may include:
• Arguing against “likelihood of confusion” with another mark
• Arguing against descriptiveness of the mark
• Rewording the description of the classes of goods/services
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17. Trademark – Filing
Trademark Filing Walkthrough
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18. Technology Checklist for Start-Up
Companies
When and why to use the Technology Checklist for
start-up companies
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19. Questions?
Wayne Kennard
617-526-6183
wayne.kennard@wilmerhale.com
Zach Piccolomini
517-526-6027
zachary.piccolomini@wilmerhale.com
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Representative Office. This material is for general informational purposes only and does not represent our advice as to any particular set of facts; nor does it represent any undertaking to
keep recipients advised of all legal developments. Prior results do not guarantee a similar outcome. © 2014 Wilmer Cutler Pickering Hale and Dorr LLP
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