CBA Record Nov-Dec 2019

Protecting Clients’ Intellectual Property: Overview of Patents, Trademarks, and Copyrights Discussed at CBA Seminar By Amy Cook, CBA Record Editorial Board; The Farmer Chef Alliance

not cover titles and short phrases, basic shapes, symbols, functional objects (e.g., vases, apparel), or works authored by U.S. government. As with a patentable invention, copy- right ownership originally vests in the creator, but it can be transferred by assign- ment, license, bequest, or operation of law. Further, works created by an employee or specially ordered or commissioned may be considered “works for hire,” where the employer or party commissioning the work owns the copyright. Work for hire agree- ments must be in writing. To successfully claim copyright infringe- ment, the plaintiff must show access to the work and substantial similarity. Dam- ages will be the copyright owner’s actual damages plus any additional profits of the infringer, or statutory damages. The copyright must have been registered with the Patent and Copyright Office to qualify for statutory damages, which can be up to $150,000 if the infringement was willful. Do you have further questions regarding IP law? The folks at Google would prefer you don’t google it – instead, look it up on the Google search engine. Both new attorneys and general practi- tioners were out in force for an Oct. 15 CBA Intellectual Property Law Commit- tee CLE exploring the basics of intel- lectual property law and its increasing importance to businesses and individu- als. Presenters on trademark, copyright and patent laws included Jessica Ekhoff of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, and Adam Reis of Irwin IP LLC who chairs the CBA Intellectual Property Law Committee. To watch the on demand video of “Pat- ent, Trademark and Copyright Basics for New Attorneys and General Practitioners” (10/15/2019), visit www.chicagobar.org/cle for more information.

Trademarks When you hear “Just Do It,” what pops into your mind? When you’re sitting down to watch a movie and hear a lion roar, which film studio do you know it’s from? Would you anticipate receiving an expen- sive bauble if someone hands you a gift box in a beautiful robin’s-egg blue shade? These are just a few examples of instantly-recognizable trademarked brands. A trademark is commonly a slogan or logo, but Jessica Ekhoff, of Pattishall McAuliffe, explained at a recent CBA seminar that trademarks can be “anything that can be used to set your brand apart.” Thus, a word (Ford cars); logo (the Nike swoosh); packaging (Coke bottle shape); color (Tif- fany blue); sounds (MGM roaring lion); and even scents –apparently, there is a bubblegum-scented sandal – can all be trademarked. Clients will want to consider trade- marking their brand for several reasons: after they invest in expensive marketing campaigns, they don’t want a competitor “free-riding” off that campaign. A strong trademarked brand also helps with quality control, sets the brand apart, helps custom- ers buy with confidence, and builds loyalty. Trademarks are categorized along a spectrum of distinctiveness ranging from weakest to strongest: generic, descriptive, suggestive, arbitrary, fanciful. Fanciful is a word that did not exist before, such as “Pepsi.” Arbitrary is a term that previously existed but has no relationship to the prod- uct it is now used on, such as “Apple” for a computer. Ekhoff cautioned against trade- marks becoming genericized—a trademark should always be an adjective, not a noun or verb. For instance, elevator and thermos were once trademarks. As long as they are in use, trademarks can last hundreds of years.

Patents Another form of intellectual property for clients to consider are patents. Patents, said Justin DeAngelis, of Quarles &Brady, pro- tect “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Clients may want to acquire a patent to protect their investment in research and design, as a deterrence to copying; to pre- vent products from being manufactured overseas and imported into the U.S.; and to receive revenue from licensing. Most patents today are small improve- ments on existing patents, and commonly fall into two categories: (1) utility, for struc- tural and functional features, which last 20 years from filing date, and (2) design, for ornamental or aesthetic features and last 15 years from issue. DeAngelis noted that 84% of compa- nies’ values in 2015 are intangible assets such as IP. Who owns an invention? An inventor is one who actually conceived the claimed inventive subject matter or who made a substantial contribution to any claim, not “merely a technician who performed the work.” The inventor initially owns the work; however, employers own the invention if the employee has an obliga- tion to assign it to their employer or if the employee, such as an engineer, was “hired to invent.” Copyright Christopher Johnson, assistant director of education for Lawyers for the Creative Arts, said that copyright protects “an origi- nal work of authorship fixed in a tangible medium of expression.” Translation: the author did not copy from another source, and it can be reproduced. Copyright pro- tection gives the holder the exclusive right to copy, reproduce, create derivative works, distribute, perform the work publicly, and display in a public showing. It does

14 November/December 2019