Intellectual property (IP) licensing is crucial for businesses in the modern digital age. It is an area that requires careful management and understanding.
An IP license is an agreement where the owner of an intellectual property (licensor) grants permission to another party (licensee) to use, produce, or sell the licensor’s IP. It is important to note that the licensor retains intellectual property ownership. The licensee merely receives the rights to use the IP under specific terms and conditions outlined in the licensing agreement.
Businesses might need to license their IP for several reasons. First, it allows them to monetize their intellectual property without producing or selling products themselves. This means they can earn revenue through royalties. Second, it can help expand market reach by allowing others to sell or produce the product or service in different regions or sectors. Lastly, licensing can foster strategic partnerships and collaborations, driving innovation and growth.
Types of IP Licensing
Three main IP licensing types exist:
- Exclusive licensing: In this arrangement, only the licensee can use, produce, or sell the licensed IP. Even the original owner (licensor) cannot use the IP in the way stipulated in the agreement.
- Sole licensing: Under an exclusive license, both the licensee and the licensor can use the IP. However, the licensor cannot grant additional licenses to other parties.
- Non-exclusive licensing: In a non-exclusive license agreement, the licensor retains the right to grant licenses to multiple parties, including using the IP.
Pros and Cons of IP Licensing
Like any business decision, IP licensing has its advantages and disadvantages. On the positive side, IP licensing can provide additional income streams, expand market reach, and foster business partnerships. It can also mitigate risk as the licensee often assumes the costs and risks associated with manufacturing, marketing, and selling the product or service.
However, IP licensing also has potential downsides. Poorly drafted agreements can lead to disputes over royalties, usage rights, and the scope of the license. There is also the risk of the licensee damaging the reputation of the IP if they produce or sell substandard products or services.
Examples of IP Licensing
- Franchising: One of the most common examples of IP licensing is franchising. Companies like McDonald’s, Starbucks, and Subway license their brand name, operating methods, and products to franchisees who open and operate their locations in these famous chains. The franchisees pay royalty fees to use the franchisor’s IP.
- Software licensing: Companies like Microsoft or Adobe license their software to users. You are not buying the software outright when you purchase a software product from these companies. Instead, you are purchasing a license to use the software subject to the terms and conditions of the licensing agreement.
- Merchandising: Entertainment companies often license their intellectual properties for merchandising purposes. For example, Disney licenses its characters to toy manufacturers who produce and sell toys based on those characters.
- Patent licensing: Pharmaceutical companies often license new drug or medical device patents. The company that owns the patent grants another company the right to manufacture and distribute the drug or device, usually in exchange for royalty payments.
- Music licensing: Artists and record labels often license their music for use in movies, commercials, and other forms of media. The licensee pays a fee to the licensor (the artist or record label) for the rights to use the song or piece of music.
- Publishing rights: Authors often license their books for translation and publication in different countries. The foreign publisher pays a licensing fee to the original publisher for the rights to translate and publish the book in their country.
Licensing Your IP
To successfully license your IP, you must first identify your intellectual property and ensure it is legally protected. Next, find potential licensees who are a good fit for your IP. Prepare a comprehensive licensing agreement that clearly outlines all parties’ terms, conditions, rights, and responsibilities. It is advisable to seek legal counsel during this process to ensure the agreement is robust and protects your interests.
Philadelphia Business Lawyers at Sidkoff, Pincus & Green P.C. Can Keep Your IP Protected
Your business’s IP is crucial to your brand and your success. You need a firm ready to help you protect your IP. To get legal support, speak with our Philadelphia business lawyers at Sidkoff, Pincus & Green P.C. Call us at 215-574-0600 or contact us online to schedule a consultation. Located in Philadelphia, we serve clients in Pennsylvania and New Jersey.
Intellectual property (IP) is defined as any product of the human intellect such as inventions, designs and symbols, artwork, business and product names, website content, and other creations used in commerce. While the internet is a useful tool for businesses to reach a wide range of people, it simultaneously provides wide exposure to theft and copying. The importance of protecting your intellectual property cannot be emphasized enough and the four main ways to do so are through copyrights, trademarks, patents, and trade secrets.
Copyrights are used to protect a creator’s manuscripts, song lyrics, photographs, paintings, sound recordings, and other original ideas. Although you own the copyright at the time you create something, registering the copyright with the U.S. Copyright Office gives you exclusive and enhanced rights such as the ability to seek damages when infringements occur. In most cases a copyright expires 70 years after the death of the of the creator.
Trademarks are protected symbols, logos, words, or phrases that identify your service or product. A trademark should be registered with the U.S. Patent and Trademark Office (USPTO) and renewed every ten years. Because a trademark identifies goods and services as belonging to one owner you could run into disputes if your trademark is similar enough to that of another company.
How Do Patents Protect My Intellectual Property?
Patents protect unique inventions such as machines, equipment, chemical composition, or processes. Once patented, no one else can make or distribute your invention unless you have given them license to do so. Patents are granted by filing an application with the USPTO and are usually valid for 15 to 20 years after the filing date. Note that a patent cannot be obtained for something that already exists.
“Trade secrets” are not registered with any government office but are intellectual property important enough to a company that it cannot be shared with competitors or become public knowledge. To do so might seriously jeopardize the prospects of the company. Trade secrets can be protected with nondisclosure agreements that prevent involved parties from sharing information with outsiders. If you can show that your company had protocols and procedures in place to protect your trade secrets and a theft occurs, you will be able to seek damages in court. Intercompany theft of intellectual property and corporate espionage are federal offenses.
Additional Steps to Take to Protect Your Intellectual Property
After registering your intellectual property with the government and enforcing any infringements you can further protect your published work and ideas by using digital rights management to limit online access, preventing others from copying, saving, and editing your work, blocking them from printing, sharing, and taking screenshots, and watermarking your work to show ownership.
Documentation is also helpful in proving ownership of intellectual property. At every step of your creative process document in detail what you are doing and how by using drawings, plans, descriptions, and written records. Including the date on each one is critical as evidence of when you first produced your original creation.
Deciding how to apply these different kinds of intellectual property protections can be complicated and should be done with the counsel of an experienced business lawyer.
Philadelphia Business Lawyers at Sidkoff, Pincus & Green Protect and Defend Your Intellectual Property Rights
Have you experienced copyright, trademark, or patent infringement? At Sidkoff, Pincus & Green we aggressively defend and protect our clients’ intellectual property rights. To schedule a consultation with one of our experienced Philadelphia business lawyers, call 215-574-0600 today or contact us online. Located in Philadelphia, we represent clients throughout Pennsylvania and nationwide.
Intellectual property (IP) encompasses patents, trademark, copyrights, and trade secrets. In general terms, IP refers to any intangible product made by a person, and it is important to protect your IP.
Fortunately, safeguards can be put in place to protect inventions, company branding, trade secrets, and other forms of IP. Innovators should work with a lawyer when they are seeking guidance for issues related to IP, including trademarks, copyrights, patents, and trade secrets. Listed below are ways you can protect your IP.
Trademarks usually safeguard brands and the logos used on products and services. You should follow these steps in order to receive a trademark:
- File a submission, and choose what types of products and services you want to use for the trademark.
- A trademark examiner examines the submission to see if anyone has already registered the same or similar mark. If nothing is found, a trademark is published in a public register to other parties to object. If no objection is provided, then the trademark is approved.
- A trademark stays in effect for successive 10-year periods if the owner meets the legal necessities for renewals.
When an author writes, draws, or designs a piece of work, they have immediate copyright. A person can file an application to receive a federal registration for a copyright via mail, online, or in person, which endures for the creator’s lifetime, along with an additional 70 years.
Patents shield innovative ideas, processes, and inventions. Once the innovator files a patent application with the U.S. Patent and Trademark Office (USPTO), an examiner reviews it to make sure that the invention has not been previously utilized.
Usually, the examiner and innovator seeking the patent will have a discussion on the merits of granting the patent. It is worth nothing if the person receives a patent, it is valid for 20 years from the application’s filing or 17 years from the patent’s issuance, whichever is longer.
A trade secret is private, specific information that affords its owner a financial edge over competitors. To protect a trade secret, the owner must do the following:
- Regulate physical and electronic access.
- Utilize nondisclosure agreements with any party that requires you to share the information, such as a regulatory agency.
- Stamp documents with a trade secret stamp or watermark.
Innovators should seek legal counsel to clear any hurdles in the patent process to avoid issues and possible business litigation.
Philadelphia Business Lawyers at Sidkoff, Pincus & Green P.C. Are Skilled at Protecting IP
Protecting your IP rights can be contentious, with several hurdles to clear. Our Philadelphia business lawyers at Sidkoff, Pincus & Green P.C. can help you avoid issues related to your IP. Call us at 215-574-0600 or complete our online form for an initial consultation. We are located in Philadelphia, and we serve clients throughout Pennsylvania and New Jersey.
After President Barack Obama signed the Leahy-Smith America Invents Act in 2011, there was a steady decline in patent lawsuits. However, according to data compiled by Unified Patents, close to 900 district court lawsuits regarding patents were filed in the second quarter of 2019 alone. It is unclear what is causing this increase, but when the economy slows down there is an uptick in intellectual property litigation. The emergence of cannabis products and technology related to smartphones has also had a major impact on the trademark space.
It remains to be seen whether this uptick is the start of a trend or simply a blip. It may take several months to determine whether a trend is emerging. Within the past decade, industries that generated more patent lawsuits are life sciences and technology that allows smartphones to communicate over the internet, according to an Ann Arbor-based intellectual property litigation attorney. Because of the number of new products across many industries, there has been a spike in lawsuits.
Congress Weighs in on IP Litigation
In an effort to prevent patent infringements, Senators reintroduced the Support Technology and Research for Our Nation’s Growth and Economic Resilience (“STRONGER”) Patents Act of 2019. They also met with other industry representatives to discuss intellectual property and develop legislation.
Federal legislation may make it easier for patent owners to protect their copyrights thanks to the Copyright Alternative in Small-Claims Enforcement Act of 2019 (“CASE Act”). The bill, which includes House and Senate versions, seeks to create a small-claims process for copyright holders to obtain compensation for infringed works. The recovery amount will be capped at $15,000 per work. Currently, if a copyright holder pursues claims in federal court, they may face legal costs that exceed the judgment. In cases like this, it is generally recommended that copyright holders avoid litigation
The Defend Trade Secrets Act was established in 2016 to protect trade secrets. Prior to that, each state had its own system. The Defect Trade Secrets Act was introduced after the Economic Espionage Act of 1996, which gave the U.S. attorney general the power to prosecute an individual of a company that is involved in stealing trade secrets. Those who violate the act may be fined up to $500,000 and face up to 10 years in prison. Corporations may incur fines of up to $10 million.
Patent disputes can be very expensive, so businesses should consider the costs associated with making and marketing products versus the cost of defending intellectual property rights.
Philadelphia Business Lawyers at Sidkoff, Pincus & Green P.C. Assist Clients with IP Litigation Issues
If you need legal assistance with a patent lawsuit, you are urged to contact the Philadelphia business lawyers at Sidkoff, Pincus & Green P.C. as soon as possible. We have a proven track record of reaching successful outcomes for clients who have trademark issues. To schedule a confidential consultation, call us today at 215-574-0600 or contact us online. Located in Philadelphia, we serve clients throughout Pennsylvania and New Jersey.
ComicMix is currently embroiled in copyright and trademark litigation with Dr. Seuss Enterprises stemming from a crowd-funded book project called Oh, The Places You’ll Boldly Go! The project originated on the crowd-funding website Kickstarter. ComicMix intended to create a mashup of Dr. Seuss and Star Trek, and raised thousands of dollars to fund the project.
The lawsuit was filed at the end of 2016, and a federal court judge has recently ruled that the suit can proceed. Earlier, a U.S. District Court Judge had dismissed the trademark claims, allowing only the copyright claims to proceed. The claims were subsequently amended and are proceeding along with an additional claim for unfair competition.
This case, according to the District Court Judge, addresses an important and timely question about the new mashup culture, wherein two unique and independent creative concepts are mashed together. Courts are struggling to decide how this culture squares with the legal doctrine of nominative fair use. This doctrine allows for the use of another’s trademark for purposes such as commentary, criticism, comparative advertising, or parody. The legal standards for what constitutes fair use was articulated in 1992 after a number of newspapers used toll numbers to conduct polls on the popular band, The New Kids on the Block.
In trying to figure out whether ComicMix’s project constitutes nominative fair use, the Court considered whether the product is readily identifiable without the use of the trademark, and whether ComicMix falsely suggested that the project was sponsored by Dr. Seuss Enterprises. The trademark at issue was the title used and the font style.
The question still pending as the litigation proceeds is whether the use of the title, which the original use has sold over 650 million copies, was more than reasonably necessary. The most pressing issue in the case is that the mash-up used the exact same font as the Dr. Seuss original, even imitating exactly the unique shape of the original exclamation point. Because ComicMix was unable to establish fair use, the litigation was allowed to proceed to jury.
The licensing program of Dr. Seuss Enterprises currently allows other authors to publish books based off of its existing books and use of its characters. However, it does not have a licensing program that addresses the mash-up market. The company has stated if it decides to license mash-ups, it would be based on a new licensing program, not similar to or derived from its existing one.
Philadelphia Trademark Lawyers at Sidkoff, Pincus & Green P.C. Represent Clients in All Types of Intellectual Property Claims
To schedule a consultation with the Philadelphia trademark lawyers at Sidkoff, Pincus & Green P.C., call us today at 215-574-0600 or contact us online. We represent clients throughout Pennsylvania and New Jersey in all types of business litigation, including fair use, trademark, copyright, contract, tortious interference, and unfair competition claims.
Protecting Internet Service Providers from Claims of Copyright Infringement
The Digital Millennium Copyright Act 17 U.S.C. §§ 512, (“DMCA”), is a law that heightens the penalties for copyright infringement on the Internet. The DMCA provides a safe-harbor provision for internet service providers from monetary liability under the Act as long as they comply with the conditions set forth in § 512. An internet service provider is defined as
“an entity offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user’s choosing, without modification to the content of the material as sent or received and/or a provider of online services or network access, or the operator of facilities therefor, and includes an entity described in subparagraph (A).”
Companies like Google and Amazon are considered internet service providers because they merely provide the online services that allow third party users to sell goods. Parker v. Google, Inc., 422 F. Supp. 2d 492, 501 (E.D. Pa. 2006) aff’d, 242 F. App’x 833 (3d Cir. 2007) and Hendrickson v. Amazon.Com, Inc., 298 F. Supp. 2d 914, 914 (C.D. Cal. 2003).
Internet service providers are protected under the Act’s safe-harbor provision as long as the provider: does not have actual knowledge of infringing content on its servers, does not receive a financial benefit directly attributable to the infringing activity if the provider has the ability to control such activity, and acts quickly to remove or disable access to infringing material after receiving notice that the material is infringing.
For more information, call our trademark lawyers in Philadelphia at Sidkoff, Pincus & Green at 215-574-0600 or contact us online.
Recently, an all Asian-American band called The Slants made headlines because the United States Patent and Trademark Office “USPTO” denied their application for a trademark on grounds that their name was a racially disparaging term. Trademark registration is considered “government speech,” and thus is regulated.
Although American citizens have freedom of speech, and the right to exercise that privilege, the government cannot sanction disparaging language. In other words, although a band can call themselves The Slants, and more generally, anyone can use any “trademark” or name they like regardless of how disparaging it may be, the government cannot register an offensive trademark. The so-called disparagement provision of Section 2(a) of the Lanham Act prohibits registration of marks that “may disparage” any person or group.
The Slants are a Portland, Oregon based rock band founded by musician Simon Shiao Tam. Tam states that, as an Asian-American, he named the band in an effort to reclaim power from a racial slur that had been used against him his entire life. According to Tam, the band’s name also refers to “guitar slants” and the band members’ unique slant on life.
Enforcement of the Lanham Act is Unconstitutional
After the USPTO denied the application pursuant to the disparagement provision, Tam filed suit. The matter is currently pending before the United States Supreme Court. Before the case made its way to the Supreme Court, a Federal Circuit Court of Appeals determined that the disparagement provision of the Lanham Act is unconstitutional. The Circuit judges noted that regardless of their personal feelings about the trademark at issue, or any other disparaging marks, the First Amendment forbids government regulators to deny registration on grounds that it finds the speech likely to offend others. The Court went so far as to note that Tam’s role as a musician is to weigh in on cultural and political discussions about race and society that are “within the heartland” of speech protected by the First Amendment. The issue currently before the United States Supreme Court on appeal is whether the disparagement provision is facially invalid under the Free Speech Clause of the First Amendment.
A number of so-called interested parties have filed amicus briefs in this case. One brief, submitted to the Court by the Cato Institute, takes issue with the fact that the government should not get to decide what is or is not a racial slur.
One related case that may be instructive involves the registration of the NFL team named the Redskins. A District Court upheld the cancelation of the Redskins trademark on grounds that it may disparage Native Americans. The Court noted that because trademark registration is “government speech,” it is exempt from First Amendment scrutiny.
Philadelphia Trademark Lawyers at Sidkoff, Pincus & Green, P.C. Have Extensive Experience Litigating Trademarks
If you have questions about registering a trademark or protecting an existing mark, the Philadelphia intellectual property lawyers at Sidkoff, Pincus & Green can help. We have decades of combined experience in intellectual property law. With offices conveniently located in Philadelphia, we serve clients throughout Pennsylvania and South Jersey. Schedule a consultation today by calling us at 215-574-0600 or by completing our online contact form.
The Supreme Court recently weighed in on certain copyright infringement issues that have long been unsettled in American law. First, the Court ruled that the resale of foreign-manufactured books in the United States does not violate the “first-sale” provision. In a second related lawsuit, the Court found that the award of attorneys’ fees to the reseller was appropriate. The case, Kirtsaeng v. John Wiley & Sons, Inc., has important implications for intellectual property litigants, because it clearly sets forth the factors courts must consider in determining whether to award attorneys’ fees to a prevailing party.
The case arose when Kirtsaeng instructed family and friends living in Thailand to purchase copies of John Wiley & Sons’ books and ship them back to him in the United States. The books were priced substantially less in Thailand than in the U.S., so Kirtsaeng resold them for a profit. Wiley then sued him for copyright infringement.
The lawsuit alleged that Kirtsaeng infringed Wiley’s right to exclusive distribution under Section 106(3) of the Copyright Act. Kirtsaeng claimed that his purchases and resales were protected under the “first-sale” provision. Wiley’s rebuttal that the provision does not apply to books manufactured abroad was not accepted by the Court, who ruled in favor of Kirtsaeng.
In a second round of litigation arising out of the same set of facts, Kirtsaeng argued that he was entitled to attorneys’ fees under the Copyright Act’s discretionary fee shifting provision, which allows a court to award reasonable attorneys’ fees to a prevailing party. Author of the opinion, Justice Kagan, stated that payment of attorneys’ fees is important to uphold the intent behind the copyright act, which aims to enrich the general public through access to creative works.
Kagan stated that the reasonableness of the losing party’s position should be taken into account in awarding attorneys’ fees, along with other so-called “Fogerty factors,” including:
- The frivolousness of the losing party’s position.
- The losing party’s motivation for bringing the suit.
- Objective unreasonableness of the losing party’s claim.
- The need in particular circumstances to advance considerations of compensation and deference.
This decision is important for any intellectual property litigant for many reasons, one being that it can help inform a decision whether to settle and for how much. For example, if a litigant’s claim is weak, knowing that going to trial could result in having to pay attorneys’ fees should serve to encourage settlement.
Philadelphia Business Lawyers at Sidkoff, Pincus & Green P.C. Have Extensive Experience in All Aspects of Business Litigation
Philadelphia business lawyers at Sidkoff, Pincus & Green P.C. have extensive experience in all types of business tort litigation, including complex copyright infringement matters. With offices conveniently located in Philadelphia, we represent businesses throughout Pennsylvania and South Jersey. To schedule a consultation, call us at 215-574-0600 or contact us online today.
Lawing Financial has accused a former employee of conspiring with a co-worker to steal trade secrets, then opening up a competing business. According to Lawing Financial’s lawsuit, the defendant initially helped the company establish its business. Then, he and his co-worker allegedly conspired to steal trade secrets, including client lists, from the firm before resigning without notice to immediately open a competing business. He had been employed by the company for seven years before resigning.
The defendant has denied all accusations of wrongdoing and filed a counterclaim, alleging that he left the company because, among other things, he was not paid compensation he was entitled to. He is also suing Lawing Financial for defamation of character, libel, slander and tortious interference of contracts.
Philadelphia Business Lawyers at Sidkoff, Pincus & Green Pursue Compensation for Those Victimized by Wrongful Acts and Business Torts
If you are in need of a business lawyer in Philadelphia, the team at Sidkoff, Pincus & Green has extensive experience in business tort litigation, including copyright or trademark infringement, fraud, breach of fiduciary duty, unfair competition and misappropriation of confidential information. To schedule a consultation, call us at 215-574-0600 or fill out our online contact form today. With offices conveniently located in Philadelphia, we represent businesses throughout Pennsylvania and South Jersey.
A new report by Lex Machina, an intellectual property litigation research company, has brought to light just how prevalent file sharing litigation has become lately in the world of intellectual property and copyright law. The analysis, which spanned more than five and a half years from the first quarter of 2009 to the second quarter of 2015, studied the trends of copyright cases that were filed in United States district courts during that period. The year 2011 witnessed an upsurge in file sharing cases and three years later, in the summer of 2014, file sharing cases outnumbered all other copyright cases by a significant margin.
Who are the Parties?
The most prevalent plaintiffs in the recent increase in file sharing cases are those in the music, software, publishing and fashion industries. Broadcast Music has filed close to 1,000 lawsuits since 2009 and Sony/ATV Song has filed just over 500. Warner-Tamerlane Publishing, Songs of Universal and EMI Blackwood have filed about 1,100 lawsuits combined. The top defendants have been retailers, recorded book publishers and music publishers. Ross Stores has had to defend itself against file sharing lawsuits 181 times in the past five years. TJX Companies, Universal Music, Amazon.com and Burlington Coat Factory have been contested just under 300 times combined.
How are the Cases Decided and How Long Does it Take?
The report highlights that fair use, a concept in U.S. copyright law that allows limited use of copyrighted material without asking permission from the rights holder, is usually decided before a trial begins at summary judgment. About three out of four plaintiffs who won their cases did so at summary judgment. Of the lawsuits studied, the defendant succeeded in winning their case less than three percent of the time, but the plaintiff won their case 22 percent of the time, making them seven times more likely to have a successful outcome than the defendant in terms of file sharing cases. However, 64 percent of cases ended in settlement and almost 11 percent ended because of a procedural error by one of the parties.
The average time for a temporary restraining order was eight days, 1.2 months for a preliminary injunction and 7.5 months for a permanent injunction. In cases wherein a trial occurs, the average time it takes for a trial to begin is just over two years.
Philadelphia Business Lawyers at Sidkoff, Pincus & Green Represent Clients in Intellectual Property Litigation Cases
Philadelphia business lawyers at Sidkoff, Pincus & Green have been fighting for our clients in complex business and copyright matters since 1958 – almost 60 years. Call 215-574-0600 or contact us online to talk to one of our knowledgeable Philadelphia copyright lawyers.