Intellectual Property Interview with Marc P Misthal from GRR New York

Patents, Copyrights, Trademarks & Tradesecrets.

The truth is there are a number of ways you can protect your business from unfair competition and copycats. We sat down with Marc P Misthal to get a better understanding of some of the ways you can do this.

Why should someone seek legal counsel earlier rather than later?

• There is always some potential pitfall you may not be aware of. (Beyond just intellectual property, it is wise to get advice as early as possible to avoid this pitfalls. E.g. Signing a lease, employing others etc)
• Get the best protection that you can as early as you can get it. This gives you and advantage. Very early on (startups) your ideas are your business, generally they are your core asset and as such should be protected.
• Investors want to see that you’ve taken steps to protect yourself. Having protection will generally make investors more comfortable and likely to invest.
• An attorney can help you determine what you can and cannot protect. You can generally get this information from one from an initial consultation which may in some cases be free.
• You don’t want to build up a name only to receive a cease and desist letter a year later because someone else has that trademarked, legal counsel will conduct a search to ensure this does not happen.
• Generally, the cost of legal counsel will be much lower than a costly mistake or loss of opportunity due to a competitor either suing you or stealing your idea.

What is protectable that most people don’t think about protecting?

In one way or another, nearly everything is protectable, sometimes that simply means keeping it a secret, and other times it means getting solid legal protection in place.

Trademarks, what can you trademark? Why should you trademark?

“Anything that indicates source is a trademark.” ~ Mark P Misthal
Most people think about the words, the names of companies or a catchy somewhat unique tagline but it is much more than that.

Trademarks can be sounds, in certain circumstances they can be color such as the Tiffany boxes. Colors are difficult to protect but they can be especially when used in a specific source identifiable way.

Trademarks are industry specific. As an example, Delta Airlines Vs Delta Faucets, they are two different companies with Trademark protection for their name in their specific industry.

Trademark searches are important, the attorney will be able to give you some advice on steps you can take to lessen the likelihood of having to change your name later on. Trademarks can be cleared early and that will help safeguard your investment.

International Trademarks, Copyright and other intellectual property considerations.

1. It can get expensive, protection in one country generally does not provide protection in another.
2. You must determine which countries/territories are of most significance to you.
3. You may invest in attaining rights in certain countries with the sole aim of licensing or selling the rights there at a later date.
4. In the US there are state Trademarks but generally, a Trademark registered on a Federal level will give you protection nationwide.
5. Cost-Benefit analysis, for Trademarks with a reputable law firm you will have an in-depth Trademark search which costs around $1,800, and a filing for a single class is around $1,000. Fees vary as does the level of experience and competency.

Can a Trademark guarantee you a domain name? (Even if someone else has it.)

“The fact that you have a trademark does not automatically entitle you to the corresponding domain name.”

However if someone purchased the domain name with the intent of squatting or selling it to you then it is likely possible that you can in fact get the domain. If however the domain was already in use prior to you registering a trademark for example then it is going to be unlikely that you have any entitlement.

Trademarks are industry-specific, this means that you may be issued a trademark on a name but someone also has a trademark on the same name in a different industry. Delta Airlines & Delta Faucet Company are a good example, one would not necessarily have more rights to Delta.com than the other one.

What is copyright?

Copyright is a form of protection grounded in the U.S. Constitution and granted by law for original works of authorship fixed in a tangible medium of expression. Copyright covers both published and unpublished works. https://www.copyright.gov/help/faq/faq-general.html

Statues, plush animals, books, art, music, logos and so much more can and is protected by copyright. My understanding (CJ) – Anything that is an original creation that can be attributed to a creator (author) or number of creators (authors) is likely to be protected by copyright.

Copyright is generally automatic but to enforce a copyright you must have a copyright registration.

In the video go to 24:25 to learn more about this important fact. Even though you own the copyright to your creative work the moment it is created, you will need to register the copyright to enforce it in a court of law. Furthermore there are benefits to registering a copyright early on.

“If you timely file you can make a claim for your attorney’s fees.” “If you timely file you can claim statutory damages” Mark P Misthal

Can I bundle a number of works into one copyright registration? Such as multiple books?

It is a fair question that needs legal counsel to make a determination. The copyright office will generally determine if this is possible or not however if they are generally independent works it is likely you will need to file separately.

If I change X% of someone else’s work can I get around copyright laws? When is it inspiration instead of outright copyright infringement?

As always we recommend seeking legal counsel on this grey area. The biggest question I (CJ) believe one should ask is: How similar are the two works? Are the two works substantially similar? It is important to note I am not an attorney and each case is unique but generally the question will always be how similar the two works are and if the derivative is an original work in its own right.

I hired a designer to create a logo, who owns the copyright to it? What about an artistic product such as figurines or jewelry?

Unless copyrights are assigned the creator owns the copyright. Unless the artist is an employee, in which case generally speaking the employer will own the copyright to any work product.

For example is you hire a freelancer to create figurines for your company. You then proceed to hire a manufacturer in China to mass produce that same figurine, you may be in breach of the original artist’s copyright.

Is a work for hire clause sufficient to ensure I own the copyright?

Generally speaking, it does offer some protection but you would want to have a copyright assignment clause included. Furthermore, you would want to ensure that the wording is correct and well thought out. Even with a work for hire agreement and an assignment clause you run the risk of not having full copyright.

There are firm deadlines with when patents have to be filed.

Outside the US rules may differ. For example in Europe patents must be filed prior to making the product available, if this is not done you lose the right to patent.

“In the US have you usually have one year from when the invention is made publicly available. … It is even more strict in other parts of the world. Where the deadline is you have to file before public disclosure. … If you don’t comply with those dates there is no way to get patent protection back.” ~ Mark P Misthal

What can you patent?

Most things can be patented the general rule is that it must be novel and non-obvious.

Trade-secrets are another way to protect yourself.

For example KFC’s and Coca Cola’s recipes are a highly guarded tradesecret. We will be interviewing someone in-depth on trade secrets and how they may offer protection beyond simply ensuring people don’t know your secret.