To upgrade or not to
upgrade is this year’s
operational question
kirk.hoaglund@clientek.com; www.clientek.com.
Darin Lynch, Knowledge Marketing: 763.746.2797; darin.lynch@knowledgemarketing.com; www.knowledgemarketing.com.
Tom Salonek, Intertech: 651.994.8558; tsalonek@intertech.com; www.intertech.com.
COPYRIGHT LAW
DEAR INFORMER: I hired a photographer to take photographs of people for an annual report, and the photos are great. Now I want to frame them for our conference room but he says I can’t. Why not?
DEAR STOPPED: You paid for them, you like them, you want to hang them up. What’s the problem? You don’t own the rights unless you negotiated that in advance, most likely for a higher price.
Business owners are often “surprised and shocked” by copyright law, when they learn they don’t own the rights to creative works, says Dan Satorius, an intellectual property attorney at Lommen Abdo in Minneapolis.
“Whoever creates the copyrightable work owns the rights unless there’s a written agreement, signed by both parties, and expressly stating it’s a work for hire,” he says.
This is true with anything that’s copyrightable, such as music, writing, Web content. It is likely to cost more to purchase unlimited rights, but if you want such rights be sure to get the agreements signed before work begins.
Dan Satorius, Lommen Abdo: 612.336.9332; dsatorius@lommen.com; www.lommen.com
INTELLECTUAL PROPERTY
DEAR INFORMER: I read your article on protecting intellectual property in the March issue. My company doesn’t have any “secret sauce” or high-tech product line, though. Is IP protection for med-tech and computer-tech companies only?
DEAR BRANDED: “Every business has a name, and if the business has a name it’s a form of intellectual property,” says Steve Baird, an attorney with Winthrop & Weinstine in Minneapolis.
A brand or trademark is nothing to scoff at. Think Coca Cola: Give away the secret formula for the product, and what’s left is a powerhouse name. “In many companies the brand is the most valuable asset the company has,” Baird says.
How to start protecting that brand? It depends on the stage of the company. A start-up company is by definition starting fresh, so choose names carefully. On a continuum from generic names on one hand, to fanciful on the other, trademark attorneys recommend the fanciful. Hire an attorney to search for use of that name, and register it if it’s clear, before you invest money marketing it.
If you started up a long time ago, you can still begin the process now. “It’s never too late, although the longer one waits” the more likely someone else is using your brand, Baird says. In some cases when the brand was not registered, a company could have common law rights to use a name in a specific region.
Then you have to police it. “A lot of folks think once they have their registration, you put it in a drawer. But trademarks are dynamic,” Baird says.
Adds Dan Satorius, the intellectual property attorney with Lommen Abdo in Minneapolis: “It’s the trademark owner’s obligation to protect the mark.”
That includes checking for improper usage of the brand or mark, and hiring an attorney to send cease-and-desist letters if it’s infringed upon. You can hire companies to check for infringements for about $250 a year, Baird says.
Always use your mark as an adjective, not a noun or a verb, says Satorius. (Right: The Xerox brand of photocopiers. Wrong: “Go Xerox that document.”)
And what happens if people start using your brand as a generic term? (Think Google, think Kleenex, think Rollerblade.)
“People have lost their distinctive trademarks,” Satorius says, citing aspirin, escalator and nylon as examples of names that were at one time distinctive marks. “You have to show that you’re making an attempt” to fight such usage, or it will fall into the public domain. For example, you can purchase ads informing people about the proper use of the brand. (Xerox did this successfully, Satorius says.)
Never alter the mark, he says. “Distinctiveness is built up over time. If you change it,” people can argue distinctiveness is lost.
When you’re referring to your mark, do so consistently, such as setting it apart with capital letters, and using the registered trademark symbol (r in a circle) or TM if it’s not registered.
(You can hear more on this topic at dev.divistack.com; click on how-to audio and these two experts’ names.)
Steve Baird, Winthrop & Weinstine: 612.604.6585; sbaird@winthrop.com; www.winthrop.com
Dan Satorius, Lommen Abdo: 612.336.9332; dsatorius@lommen.com; www.lommen.com
