Q. For several years, I have been using a logo a friend designed for my business. My clients repeatedly compliment me on it and say I should trademark it or get a copyright or a patent. What protection is available for my logo?
A. First, we should address the ownership of the intellectual property before we address the form of protection. Since your friend created this logo, your friend may own the logo and may be granting you a royalty-free license to use it. That is, as a creative work by your friend, you may not have exclusive rights to "your" logo. On the other hand, you may have hired your friend to create this logo and you may have done so with a contract clearly stating that the logo was to be a work-for-hire with all rights to the work going to you or your business entity. For simplicity, we will continue with the presumption that you own all rights to the logo and that the work was original. As a creative, original work, the rights to the illustration you use as your logo were protected by US copyright law the moment it was fixed on the drawing surface. When your clients speak of a patent, they may be referring to a US design patent. If the new, original and ornamental design is the shape, surface ornamentation, or a combination of each, which is embodied in or on an article of manufacture (like an ashtray when people smoked indoors for example and more modernly computer generated icons), then a design patent may have been sought years ago when it first was created. If you have been using this logo in interstate commerce, you may be able to secure a federal trademark or servicemark for your logo. In addition, the trademark form of protection is based in the need to keep confusion from the marketplace and to protect goodwill and as such, concurrent copyright protection, which stems from providing financial protection and motivation to creative persons, are not mutually exclusive. If you pursue a federal trademark, your logo will be published for opposition where other businesses may be put on notice of your intent to claim this logo as yours in your business sector. If your logo is confusingly similar to some other business competitor of yours or if it is a knock-off of a well established brand name or symbol, then be prepared for the "cease and desist" letter. Extensive trademark searches are conducted by prudent businesses before adopting a logo for this very reason. If you are exclusively involved in intrastate commerce, you may obtain state trademark protection. Since the day you first used the logo in your business, you have been asserting your common law trademark rights to your logo. The improper use of trademarks, more generally, the inadvertent creation of confusion in the marketplace or the inadvertent appropriation of or harm to the business goodwill of others could leave the unwary business leader reading "cease-and-desist" or "demand" letters pressing claims of trademark and trade dress infringements and acts of unfair competition. Businesses that believe they may find themselves involved with this complex area of business and intellectual property law may benefit from the assistance of legal counsel.
Q. A potential vendor requires my company to execute a mutual ("two-way") non-disclosure agreement (NDA) before he shows me his latest product while a potential private investing group recently refused to sign my company's unilateral ("one-way") NDA. What's behind this inconsistent behavior?
A. Nondisclosure agreements signed by other business entities and confidentiality agreements signed by your employees are used to contractually create, or perhaps re-assert, obligations to keep valuable, competitively useful, information from the public generally and competitors specifically. In addition, if the owner of a patentable invention intends to seek foreign patents, it is crucial to keep the invention shrouded in secrecy prior to filing patent applications in foreign jurisdictions. When an "unprotected" disclosure is made to the public, a one year countdown to patentability may start as far as the US Patent Office is concerned. Even if you are filing in the US exclusively, it is prudent to protect your subject invention as a trade secret in the unfortunate event that you fail to obtain domestic patent protection. Your candidate vendor may be attempting to protect his trade secrets, whether or not they may be patentable. Private investors may see or hear countless business plans in a week. Many of these investors feel that if you can't pitch your plan in 60 seconds, you haven't thought about it enough. Under their time pressures, they really would have little time to properly review your NDA. Moreover, some of these investors may feel your agreement creates nothing more than another liability for them from another unhappily unfunded entrepreneur. Being the "buyers" in your scenario, they may refuse to sign such an agreement and still get more than enough pitches to fill their day. Where a business plan relies heavily on innovative technology and the market share presumably reserved by one or more yet-to-be-obtained patents, it is prudent to secure one or more patents pending prior to going before those private investors (prudently refusing to bind themselves). Finally, NDAs are contracts and can be quite basic or, but for their titles, can act as letters of intent or more. As with any legally binding document, it advised that you to seek professional legal review of such documents prior to signing.
Q. A contracting consultant and one of my employees have come up with a great idea. I want them to develop this idea further. If I pay for their time and expenses while developing and testing the idea and the result is a patentable invention, will I own it?
A. First the good news. Absent a document to the contrary, you may at least have a right to use the invention you paid others to create and develop. You may have heard of this "automatic license" by its common name, "shop rights." Under US patent law, the individual inventor is the initial owner of the invention. Where both the consultant and the employee have jointly contributed to the conception and reduction to practice of the invention, then they may jointly own the invention. It is common for an employer in an employment relationship and a principal in a contracting relationship to stipulate the ownership of all creative works. For example, inventions conceived and reduced to practice by others at your direction and with your financial support would be assigned to your company or you as a sole proprietor. It is not uncommon to incentivize the disclosure of these inventions with monetary rewards and even grant participation in the royalties from any licensing of the invention to third parties. Because of the complex interaction of federal and state law, employment and consulting agreements addressing the ownership, rights, licenses, rewards and royalties associated with creating intellectual property should be reviewed by legal counsel.
Q. A local business plays a selection of music in its lobby that I think could be greatly improved. On more than one occasion, I have requested they include of few of my favorite tunes, but, they still play the same mix. Should I be up-front and tell them where to buy the CDs I like?
A. Although you are only trying to help, you are taking the wrong approach. Before you press the business further, you may read the remainder of this answer to appreciate the scope of a copyright license. That is, you must understand that the CD you buy is intended by the record label (and the creators) for your personal use. That is, for the price of your CD purchase, you can listen to the music on the CD as many times as you wish...so long as you are enjoying the music privately. You have not purchased the right to perform this music publicly (including the playing of the CD to an audience) and you have not purchased the right to collect money or otherwise gain economic benefit from such performances. When a business plays music for its patrons' enjoyment, it is by definition not for personal, private use. Unlike the practice of patentable processes which may be stopped by the owner through a court order, anyone can play or perform copyrighted music...so long as they pay for it (you may have heard of or think of this as a "compulsory license"). To legitimately and cost-effectively provide music for its patrons' enjoyment, the business may have purchased a license to a mix of music that gives the business legal permission to play the music for the enjoyment of their customers for a fixed period of time. The mix relieves the business of administering the license fees it would have to pay to the various copyright holders. The American Society of Composers, Authors and Publishers (ASCAP and www.ascap.com) has set up methods to see to it that the creative artists are rewarded while the public can affordably enjoy their works. For good business and legal reasons, the business should not play music with the permission purchased in the same manner or at the same price you purchased your private, personal use CD. A better approach would be to suggest the content of the next mix they "lease" when their current license expires. The licensing of creative works in one or multi- media (for example, music, video, text, animation and software) and associated rights clearing can become quite complex and not surprisingly, such proposed arrangements may benefit from the review of legal counsel.