How 3D Printing Affects Intellectual Property

Artists, designers and industries have always wrestled with the potential problem of intellectual property theft. Whether it’s fighting to fending off the malicious reproduction of closely guarded designs or trying to keep an eye on the distribution of licensed creations, the challenges of maintaining intellectual property rights are only getting more complicated as 3D printing increases in popularity.

What is 3D Printing?

Also called additive manufacturing, 3D printing uses a special type of printer and one of hundreds of manufacturing materials to create solid copies of objects. To make this possible, the objects are first scanned with a 3D scanner and turned into Computer Added Design (CAD) files that the printer then reads. Materials are laid down in successive horizontal layers as the printer effectively “builds” the item section by section, which stands in contrast to the subtractive nature of traditional manufacturing.

This rapidly growing technology has a multitude of applications. It may be used to create models, prototypes or parts for machines and aircraft. Methods for printing working human organs for use in transplants are also in the works. On the creative side, 3D printing provides a way for artists and designers to literally bring their imaginations to life.

While there are many applications that will change our future, we are already seeing homes being developed using this technology and it’s being hailed as the technology of the future for affordable housing.


The Intellectual Property Dilemma

Just like the troubles that arose surrounding peer-to-peer music and file sharing sites, problems with intellectual property law are beginning to pop up in relation to 3D printing. Many “blueprint” sites exist where designers can upload their creations for others to print, but not all of these creations represent original work. Even when they do, it can be difficult to track whether or not end users are following proper attribution procedures according to any creative licenses attached to the design. At a certain point, reproduction becomes uncontrollable and the origin of the initial creation gets lost in the chaos.

One of the biggest problems with 3D printing and intellectual property law is that most people don’t understand how copyright works. This leads to unintentional and accidental infringement that can result in big losses for the companies or designers holding the rights to the items being reproduced. With personal 3D printers becoming more common, it’s getting harder to track down individual infringers and prove that their actions are worthy of legal punishment.

If it’s just a CAD file, what happens if that file is released to the general public or what happens if the file is changed for the better or worse? The liability by itself is enough to make sure we establish property intellectual property guidelines.

3D Printing, Intellectual Property and the Future

Copyright law technically goes into effect the moment a unique design is created, but industries and designers can file for additional legal protections in an attempt to keep their intellectual property from being reproduced. Patents, trademarks and design protection are all meant to ensure that a design remains the property of the original creator. However, these do little to stop malicious users from creating counterfeit copies of anything from toys to functional weapons. The potential dangers posed by some of these items may bring other branches of the law, such as liability law, into play as time goes on.

Given the complex legal challenges surrounding 3D printing and intellectual property, it could be some time before official legislation is put in place to handle cases of infringement. Until then, those who create and distribute designs need to be made aware of how to take advantage of available protections so that they have some type of legal recourse should their creations fall into the wrong hands.


Our Solution

Williams IP Law has worked across many verticles and can help if you think that someone has violated your intellectual property rights through 3D printing. With offices throughout Texas, we can help you wherever you are located.

Trade Secrets Rights and Uses

Intellectual property may be protected in a variety of ways. New inventions may be covered by a patent while your company’s name and logo may be protected with a trademark registration. If your company publishes brochures, then these are covered with a copyright.

However, what if your company has something that they would like to protect, but keep secret? Several famous examples of “trade secrets” exist. These include Kentucky Fried Chicken’s 11 herbs and spices, the secret formula for making Coca-Cola and the search algorithm that Google uses.

Why didn’t these companies decide to patent or otherwise protect their IP via the various mechanisms that are available under U.S. law?

It’s because they wanted to keep their “secret ingredient” a secret. When you file a patent application, for example, it is essential that you disclose everything about the invention so that the United States Patent and Trademark Office can establish that it is non-obvious, novel and eligible for patent protection.

This means that any proprietary information that goes into your invention will eventually become public knowledge. When your patent expires, your technology becomes available for others to use.

However, when you protect something as a trade secret, then you have the potential to keep it a secret in perpetuity.

What Can You Protect with a Trade Secret?

Trade secrets can protect an array of things, from an ingenious idea that gives your firm a competitive edge to the marketing plans for your newest product. Similarly, customer lists can be protected as trade secrets as well as information regarding prices and costs.

Some companies even protect negative know-how as a trade secret. This basically refers to anything that they have learned to not do through extensive research and development. Sometimes, this information is just as valuable as the ingredients that successfully make up your secret.

Essentially, a trade secret can be almost any information that is valuable to your company and generally isn’t known to the rest of the world, especially your competition.

What Rights Does a Trade Secret Grant?

If a company chooses to keep some information as a trade secret, then they have the right to prevent certain people from using or benefiting from that trade secret.

Some of these people are automatically bound by a strict duty of confidentiality. This applies to any employees who work with or are knowledgeable about the trade secret.

Trade secrets also give you legal protections in the event that your proprietary information is illegally obtained via bribery or theft. A company with a trade secret further can prevent people who accidentally discover the secret information from profiting from it as well as those who are asked to sign a non-disclosure agreement before the confidential information is shared with them.

However, a trade secret does not grant a company any rights if another party independently discovers the trade secret. As an example, there is no law that prevents someone from reverse engineering a product that is only protected as a trade secret. This means that theoretically someone could analyze the formula used to make Coca-Cola, discover its precise ingredients and then start making and selling their own version of Coca-Cola. Because Coca-Cola’s formula is only protected as a trade secret, they would have a lot of difficulty stopping the inventor from profiting from his knowledge.

How Does a Company Protect a Trade Secret?

Businesses have to do more than just call a certain piece of information a trade secret. Instead, it is necessary to take affirmative actions that will protect this information and keep it confidential. Many companies will take extreme measures to keep their information strictly private.

This is the case with the makers of Coca-Cola, as the formula is locked in a bank vault that is only able to be opened after a resolution is passed by the board of directors. Only two company employees are ever allowed to know the formula at the same time. These employees are forbidden from flying on the same airplane, and their identities are never made known to the public.

Most companies do not have to go to such extreme lengths to protect their trade secrets. A few reasonable precautions generally are all that is required.

For instance, it is wise to mark any documents with “Confidential” if they contain any trade secret information. All trade secret materials probably should be locked away in a safe or other secure area after hours. Another sensible measure is to beef up any computer security protocols to ensure that hackers and other bad actors can’t gain access to sensitive information.

If you do have trade secrets, then you’ll probably want to limit how many people actually have access to that information. Ensure that your employees are bound by a duty of confidentiality, preferably with a written document, and do the same with anyone who is not an employee but who must be told about the trade secret for any reason. A proper non-disclosure agreement is a simple document that can help to protect proprietary information under just about any circumstances.

Talk to a Lawyer About Protecting Trade Secrets

If you have proprietary information that you believe would be best protected by keeping it as a trade secret, then contact the Law Offices of Jeff Williams. Mr. Williams is an experienced intellectual property attorney who can help you to understand your rights and devise a strategy for protecting proprietary information.

4 Ways to Prevent Chinese Counterfeiters

The Counterfeit Epidemic

An ever-growing number of U.S. companies are seeing their products being ripped off online or in the various trade channels. One major contributor has been China. The counterfeiting industry there isn’t new. In fact, it’s been rampant there for many years. It’s has been admittedly difficult to police every product that comes out of China, but that doesn’t mean it’s impossible. With good intellectual property protection, and by following a few steps, it’s possible to reduce the flow of counterfeit goods coming out of China.

Steps to Protect Yourself

  • One of the most important steps toward protecting valuable intellectual property is to seek patents and trademark registrations in the U.S. and China. If every right of protection was an arrow, you want a quiver full of potential rights. The idea is to gain as many potential advantages you can. There have been some ingrained skepticism regarding the value of intellectual property protection in China. However, recently there have been some real changes in the way China looks to enforce intellectual property. China has made steady improvement in the enforcement of patent and trademark rights in recent years and in many ways, intellectual property rights in China are one of the strongest chances you may have to curtail counterfeiting.
  • In regards to trademarks specifically, a two-fold approach is recommended. We suggest that after you obtain a federal registration, you look to formally register the trademark with the respective national customs agency (China Customs – General Administration of Customs or GAC for short). The same strategy goes for the United States (US Customs – may register both Trademarks and Copyrights). Statistics show that of all the goods confiscated by Chinese Customs, most all of them involved trademarks registered in China and registered with Chinese Customs. It is important to register your marks with Chinese Customs to prevent the export of counterfeits.
  • Below is a simple timeline to go by for Chinese Customs registration. It can take around 14 months for a Chinese trademark to become registered. You need a registered mark prior to registering with Chinese Customs. Chinese customs may take anywhere from 3-4 months to complete the registration process. This means it can take at least 18 months to get full trademark protection in China. It is best not to wait.
  • Keep in mind that the Chinese trademark system operates on a first-to-file doctrine. This means that registration must occur prior to any enforcement. In the end, the U.S. and China customs will monitor incoming and outgoing shipments for counterfeit goods. The owner of the trademark registration is informed whenever counterfeit goods are found, providing an opportunity for the owner to cease the transportation of any counterfeit goods.
  • It’s also advisable for American companies to be very careful about who they are doing business with in China. Frequently, the perpetrator of counterfeit goods is in some way related to the legitimate product or business you are working with in China. Be it a distributor, manufacturer, retailer or someone who used to be connected to one of those business partners. These are most often the parties behind knock offs. Accordingly, it pays to not only develop a close relationship with these organizations, but also to keep a good handle on some portions of intellectual property. If you don’t provide business partners with all of the secrets to your success, then they will have a much more difficult time duplicating your product.
  • Monitoring the Internet for counterfeits is another essential component. Some companies ask employees to periodically check certain e-commerce websites to see if knock offs are being sold. When the task becomes too onerous to do in house, some organizations turn to an intellectual property attorney who can perform a monitoring service for them. This is frequently a smart move since the attorney probably has access to helpful tools that make monitoring the market much more efficient.
  • Of course, when that monitoring uncovers someone who is actually counterfeiting goods, it’s time to contact them with a cease and desist letter. This is sometimes all that is required to get the counterfeiting to stop. A U.S. intellectual property attorney may work in conjunction with an attorney in China to send the letter, backing it up with proof of patents and trademarks both in the U.S. and in China. Cease and desist letters sometimes result in a genuine apology and a promise to stop. However, the need to threaten legal action, like a lawsuit, may also be necessary if the counterfeiter is resistant.

It may never be possible to completely stem the flow of counterfeit goods coming out of China, but if U.S. owners and manufacturers do their part, it is possible to reduce that flow to a trickle. If you a need intellectual property litigation expert contact the Williams IP Law for a free consultation.

Stronger International Intellectual Property Laws are Coming

At Williams IP Law, our legal professionals frequently are asked about protecting intellectual property rights in foreign countries. It’s not unusual to find that inventors and entrepreneurs hold numerous misconceptions about how patent and trademark systems work on a country-by-country basis.

For instance, it is a common misconception that obtaining patent and trademark rights in the U.S. grants rights that extend into other nations. However, this is not the case. Each country has a unique system in place for protecting patents and trademarks. In the case of Europe, it is possible to obtain rights across the European Union or in specific countries in which coverage is desired.

This means that if a company is doing business in another country, then it may make sense to obtain patent and trademark protection in that foreign country. As an example, consider an American company that is selling products at home and in Peru. That company would want to protect its intellectual property in the US as well as in Peru and in any other country to which they are shipping products.

The same may be true for a company that is having its products manufactured in a foreign nation. Intellectual property protection may be sought in the country of manufacture, such as Malaysia, and in the U.S. where the products are sold.

Accordingly, it makes sense to stay informed with regard to changes in the intellectual property laws of foreign jurisdictions. These changes frequently have the effect of offering intellectual property right holders greater protection than they had before.

Let’s take a look at some unfolding developments in other jurisdictions around the world.

New Protections for Small Businesses in the EU

A cooperative effort between the European Commission and the European Union Intellectual Property Office, or EUIPO, is offering critical financial assistance to Small and Medium Enterprises, otherwise known as SMEs. This financial assistance is aimed at helping smaller business concerns protect their intellectual property rights as robustly as large corporations do.

In general terms, it is easier for large corporations to protect their IP. They have deeper pockets and more resources that help them to obtain and enforce protection. Small businesses do not have access to the same resources, and this can make it difficult for them to take the lead in innovation.

To help bring more balance to the IP process, the government has created the EU SME Fund, which currently has a budget of €47 million. This money will be used to reimburse small- and medium-sized businesses for the expenses that are incurred in connection with protecting their intellectual property.

As an example, the fund will reimburse businesses up to 90 percent of fees incurred for IP Scan services. These services provide assessments of a company’s unique intellectual property needs. SMEs also may be reimbursed up to 75 percent of fees charged by national intellectual property offices for trademark and design registrations as well as up to 50 percent of national-office fees that are charged in connection with patents.

The EU SME Fund was created in response to the global COVID-19 emergency and its particularly harsh impact on SMEs. It will operate between 2022 and 2024 with the hope of supporting innovation in SMEs across the EU.

China Makes Strides

If you do business in China, then you already may be aware that it’s a nation that is rife with counterfeit products. Protecting patents and trademarks in China is an uphill battle in which there always seems to be more imposters trying to capitalize on your success and the quality of your products.

The Chinese government recognizes this status, and they are making efforts to correct these and related intellectual property issues. As an example, the Chinese intellectual property office recently joined the international Hague Agreement for the registration of industrial designs. Membership signals a willingness to work within an agreed-upon set of rules and regulations that are upheld across national borders.

Additionally, China has established more than 20 offices worldwide that are tasked with handling disputes between Chinese entities and foreign companies. This demonstrates a willingness to cooperate on the world stage with regard to intellectual property rights.

Recently, Chinese officials unveiled a 115-point outline regarding how to build a powerful country from an intellectual property standpoint. Included within the outline is an intention to amend the country’s anti-monopoly law, strengthen the manner in which intellectual property rights are protected and enhance quality control with respect to the examination of patent and trademark applications.

Hopefully, with China’s new focus on protecting intellectual property rights, foreign businesses will soon see fewer fakes and imposters cropping up.

Do You Need IP Protection in Other Jurisdictions?

If your organization has any overseas operations, then it might be worthwhile to examine whether or not IP protection is needed in those countries. Ask for guidance from an intellectual property attorney at Williams IP Law by calling (832) 795-1909.

The Invention Process for Entrepreneurs

Do you have an invention?

When you have an idea for a new invention, the excitement you feel can be hard to contain. In the space of a few moments, you see yourself bringing a desirable new product to market and earning millions of dollars in the process.

Unfortunately, the invention process is complicated. Getting your new product from an idea to an actual item on store shelves requires a great deal of time and effort. It’s also essential that you protect your innovation with a patent application so that you can prevent others from taking advantage of your creativity.

Although the invention process looks a little different each time, there are still certain steps that you can expect to take.

Develop and Document Your Idea

You need much more than a vague concept to get started. Accordingly, you may have to spend some time developing your idea.

Keep in mind that most inventions are created in order to solve a problem. As you work to develop your idea, maintain your focus on the problem that you are trying to solve. You may want to keep notes relating to your research, experiments and development efforts.

Prior to 2013, the United States had a “first to invent” patenting system. In the event that two inventors submitted highly similar patent applications, the United States Patent and Trademark Office would award any resulting patent to the applicant who could prove that they had the idea and developed it first, regardless of whether or not they were the first to file a patent application.

In March 2013, U.S. patent law changed, and the system became a “first to file” patent system. This means that keeping dated, witnessed documentation of your development process has become less critical. Nonetheless, you may want to keep plenty of notes to document your process in case another party ever disputes your claim to the invention.

Complete a Patent Search

It is possible for any inventor to conduct a patent search in the online records of the USPTO. The online system enables inventors to look for any existing patents that may be similar to their new invention. For an invention to be patentable, it must be unique and non-obvious. If you discover prior art in your patent search that is duplicative of your invention, then you may need to re-focus your efforts.

Do Some Market Research

Did you know that as many as 95 percent of all patents don’t end up being profitable for the inventor? Usually, this is because the invented item just isn’t something that people need or want. Consequently, it may be sensible to do some market research. Is your invention one that people will actually buy?

Obtaining a patent, developing a product and marketing it are all time-consuming and expensive processes. It makes sense to ensure that there is a good possibility that you can make money from your idea down the road before investing too much time and money.

Take a look at other similar products that are already on the market. How much are they selling for? Will it be possible to manufacture and distribute your product at an affordable cost that makes your retail price reasonable?

Market research can be indispensable to determining whether or not you continue with the next steps of the invention process.

Build a Prototype

This is the step in which your idea becomes tangible. You may build the prototype yourself or hire a manufacturing company to do it for you.

Usually, a prototype begins with drawings. Once again, this is something you can do yourself or hire out. Next, you may create a mockup out of any material that can make a passable 3-D model of your idea. It’s then possible to create a working model.

The prototype is a critical step because it may reveal flaws or missing components in your idea. In fact, you may find yourself going back to the drawing board. That’s perfectly all right. Most inventions are the product of a lot of trial and error.

File a Patent Application

When you, at last, have a working prototype of your invention, you probably have most of the kinks figured out. This means that it’s a good time to think about protecting your idea. Typically, this means filing a patent application.

You may file an application for a utility patent, which covers machines or processes, or a design patent, which covers ornamental designs.

Some inventors elect to write and file the patent application by themselves. However, this rarely is advisable. The application will be reviewed by a lawyer at the USPTO who is likely to issue arguments against the patentability of the invention. Having a qualified intellectual property attorney draft and file your patent application usually makes the process go a little more smoothly. The Examiner at the USPTO still may initially deny a patent, but your attorney will be prepared to file legal arguments that could change the Examiner’s mind.

Work on Fundraising, Manufacturing and Marketing

Now that your invention is “patent pending,” you are ready to move on to disclosing your invention to people and entities that might be able to help you with financing, manufacturing and marketing. This may involve writing up a business plan and setting up your own company. Alternatively, some inventors choose to license their patent rights to a company that will handle things like manufacturing, distribution and marketing.

If you do plan to enter into any legal agreements or licenses with another party, then it’s wise to consult with a patent attorney to ensure that any documents that you consider signing fully protect your interests.

Talk to Williams IP Law

Do you have a great idea that you would like to turn into a marketable product? If so, then give Williams IP Law a call. We are experienced at providing guidance to inventors regardless of where they are in the invention process. Whether you need help with drafting and filing a patent application or deciding if a proposed licensing agreement really is a good deal, Williams IP Law has the knowledge needed to advise you.

Patent Trolls Exist

If you have a patent or are considering securing patent protection for a new invention, then one of the things that you need to be aware of is patent trolls.

What is a patent troll? How can they affect you and your patent rights? Inventors with these and other questions are encouraged to schedule a consultation with a Texas patent attorney to discuss pursuing a patent and protecting their rights.

What Are Patent Trolls?

You may hear patent trolls referred to as “non-practicing entities,” or NPEs. A patent troll is an individual or entity that uses legal means to enforce patent rights against individuals or entities that they claim are infringing their patent rights. The troll is trying to collect licensing fees on the patents they own, but trolls don’t build, make or sell anything. Their practice is to obtain or buy patents and then demand that any companies using related technology pay them fees. Accordingly, you could see the work of the patent troll as a form of legalized extortion.

Because of patent troll activity, manufacturers and inventors end up wasting all sorts of time and money defending their rights in patent infringement lawsuits. Sometimes, they conclude that it just makes sense to pay licensing fees to the patent troll rather than fight them.

What Do Patent Trolls Do?

An ordinary company that holds one or more patents usually spends their time and resources manufacturing a product or offering a service. They also likely perform research, looking for new applications and new technology.

Things are really different at an NPE. They spend virtually all of their time and resources in protecting their patent portfolio. However, they are not doing so in order to prevent others from profiting from their exclusive technology that they are using on a product or service. They don’t offer products or services at all. They are only monitoring the marketplace for any technology that might infringe one of their patents. Patent applications that are published by the U.S. Patent and Trademark Office are a great place for patent trolls to look for emerging technology.

That’s because patent trolls prefer to exploit new or otherwise vulnerable companies or individuals who don’t have much in the way of resources to defend themselves. The patent troll is hoping for an early, easy victory that will give them a settlement and probably even induce other companies to do the same.

Because patent trolls do not make, sell or import anything, they are not vulnerable to a counter-assertion that they are actually infringing on the other company’s technology. Patent litigation already is costly and complicated. Without the ability to make this counter-assertion, it can be almost impossible for the patent troll’s victim to prevail.

Patent Trolls in Action

Here’s one example of how patent trolls work. A company called Lodsys is an obvious NPE. They don’t make or sell anything. However, they do engage in lawsuit after lawsuit, each one alleging patent infringement by another entity.

Lodsys appears to specialize in exploiting small app developers. They see a new app come on the market, and they quickly move in with a lawsuit, claiming that the in-app purchasing technology used in the app infringes on one or more of Lodsys’ patents. Both Apple and Google are trying to intervene in some of these lawsuits, but these will take years to resolve.

Consider also the many lawsuits that have been filed by Shipping & Transit LLC. In 2016, this company filed more patent lawsuits in the U.S. than any other. They sue 100 or more small companies each year, claiming that the technology that allows these companies to send tracking numbers to customers is exclusively owned by them via patents that they hold. Many overwhelmed small companies don’t even know how to begin protecting themselves or fighting back.

Mistakes to Avoid

Patent trolls usually make themselves known through a demand or cease-and-desist letter. The worst thing that the recipient of that letter can do is to ignore it. The better choice by far is to consult with a patent attorney so that an appropriate response can be made. Choosing not to respond only strengthens the patent troll’s case down the road.

Plus, if the patent troll receives a strongly worded, immediate response from an attorney, they are likely to just drop their demand. That’s because patent trolls prefer an easier route to collect money. If they encounter swift, decisive resistance, they’ll go looking for victims who are not defending themselves as well.

Can You Protect Yourself Against Patent Trolls?

Patent trolls always bet that their victims won’t know how to react to a demand letter. All too often, people simply throw these letters away, figuring that they are junk mail. Consulting with a Texas patent attorney is the smarter option.

If you are considering entering into a licensing agreement with any entity or individual, proceed with caution. Have a trusted intellectual property lawyer review the terms of the licensing agreement to ensure that it is fair, balanced and appropriate.

Contact the Jeff Williams Law Office today to find out more about how to protect yourself from patent trolls.

Why Intellectual Property Should be Protected

Patent Protection

Holding a patent gives you the right to pursue legal remedies if you see that a competitor is using your invention on their products. That’s because a patent gives the owner the right to exclude everyone else from selling, using or making goods or services that contain the claimed invention. It is possible for the patent owner to license the technology that is covered by the patent to anyone that they choose, but sometimes people use protected technology without asking permission.

Patent owners are entitled to stop this use of their invention through a legal injunction obtained in federal court. Under the law, the owner can collect damages for this unlicensed use, and if it can be proven that the infringer used this technology willfully and knowingly, then the owner can recover up to three times the actual amount of damages suffered.

Patent Infringement

Unfortunately, patent infringement litigation can be complicated, time-consuming and expensive. This is why it is always sensible to consult with a patent attorney to explore the options for proceeding. Typically, an infringement lawsuit is a final step after all other efforts have failed. Even then, litigation is not always warranted if the economic harm is relatively small compared to the cost of a court battle.

All that may be required is a stern but friendly letter attaching a copy of the patent, explaining that the competitor is unlawfully using technology that’s protected by a patent. When the letter comes from an attorney, it usually carries more heft, and with a copy of the patent attached, the infringer is put on notice. Any further use of that technology will be knowing and willful.

If someone is trying to sell a knock-off product with a logo or brand name that is confusingly similar to yours, then a registered trademark affords you a variety of legal protections. Discovering that your trademark is being used by another, unauthorized person can be infuriating. While having a federally registered trademark does give you the right to sue in this situation, it generally is sensible to start with a cease-and-desist letter.

Much like patent infringement, it is always advisable to have such a letter sent by a qualified intellectual property attorney. This demand letter clearly states the issue and how it is having a detrimental effect on the owner of the trademark rights.

It is a possibility that the infringer genuinely did not know about the trademark owner’s rights. In this case, they may quickly respond with a promise to not use the mark any longer.

On the other hand, it’s possible that the infringer absolutely knows about your trademark rights and was seeking to benefit from the goodwill that you have worked hard to build with the public.

Whether the infringement was intentional or not, the letter will establish a short deadline by which the infringer must stop all use of the mark. Typically, the letter also will state consequences that will ensue if the infringement continues. This may be kept vague with language suggesting that the trademark owner will “explore all legal remedies.”

If the infringer does not immediately respond or promise to discontinue use, then it may be possible to enter into a series of letters or negotiations that seek to resolve the situation amicably. Should these efforts fail, then your trademark attorney can file a trademark infringement lawsuit.

Infringement Lawsuits

These lawsuits may be filed on the basis of a likelihood of confusion. Basically, trademark law is aimed at protecting consumers. Trademarks are meant to help members of the public readily and correctly identify the origin of the products they are purchasing. A confusingly similar mark muddies the water, perhaps leading consumers to purchase an item that they believe is the genuine article while it is actually a knock-off.

Trademark infringement lawsuits also may be filed on the basis of tarnishment or dilution of the mark. If you have a famous and well-respected mark, then use by a cut-rate competitor on inferior goods can have a negative effect on your reputation. The result is loss of profits, and this can be extremely harmful to your business. However, when you work with an intellectual property attorney, you can protect your trademark rights.

Copyright Protection

The same is true with copyrights. You can prevent other people from using your protected material when you have obtained an official copyright registration. Much like the remedies available for patent and trademark infringement, you do have the option to sue if your copyright is infringed. Once again, this usually is not the first step to take as litigation is always risky and expensive.

While you are not required to register your creation with the copyright office, doing so does give you the presumption of ownership, which can be powerful in any dispute. Moreover, registration of copyrighted materials entitles the plaintiff to collect statutory copyright damages. This means that if you do prevail in court, you could be awarded significant damages.

However, the smart first step is to engage an intellectual property attorney to send a cease-and-desist letter to the infringer. When they are written on law firm stationery, such letters can be incredibly effective. Accordingly, this is the least stressful and most cost-effective way to deal with the situation.

Contact Williams IP Law to learn more about how you can protect your business by protecting your intellectual property. Obtaining protection via patents, trademarks and copyrights will help you to hold on to your ideas and grow your business.

Fair Use Vs. Intellectual Property

Fair Use

An individual or entity may accordingly use copyrighted material without first obtaining the permission of the owner of the copyright. This means that fair use is an affirmative defense that may be used if an owner makes a claim of infringement.

It also is possible to claim fair use if the new work is somehow transformative. Defining “transformative” in this sense is immensely difficult. In fact, many copyright owners and alleged infringers have gone to court over just what “transformative” use really means.

The answer is that hard-and-fast rules on this topic do not exist. Related court decisions over the years have been varied, and although it seems confusing, this actually demonstrates that the concept of transformative use actually works.

The various lawmakers and judges who took part in drafting the fair use exceptions were deliberately vague on this point because they didn’t want to place unnecessary limits on the definition. Effectively, they wanted it to be open to interpretation and to be defined expansively, much as free speech is.

Fair use doctrine frequently is relied upon to defend commentary and criticism. Whether you are the movie or book reviewer for your local newspaper or have a YouTube channel on which you critique the latest pop album releases, you generally have the right to reproduce some portion of the work that you are reviewing.

The same is true when a news anchor or a reporter provides quotes and a summary of a new medical study. This is considered fair use because the protected material is being used for commentary and criticism purposes.

What makes this type of use acceptable under the law is that the public could reap benefits from reading or listening to the critic’s or reporter’s insights. The review or report is enhanced through the inclusion of some of the copyrighted material.

Fair use also makes it permissible to create parodies. Of course, what actually qualifies as a parody may be up to the discretion of a judge if the creator of the copyrighted material doesn’t agree that the new work is merely a humorous expression of literary criticism or social commentary.

Case Examples

Consider some examples to see how differently things can be viewed by the courts. In one case, Leibovitz v. Paramount Pictures Corp., famed photographer Annie Leibovitz took exception to a parody of the photograph that she took of a naked, pregnant Demi Moore. Leibovitz’s work appeared on the cover of Vanity Fair and caused a sensation at the time. Later, Paramount Pictures published a send-up of the photo showing the head of actor Leslie Nielsen digitally grafted onto the body of a pregnant, naked woman. The pose and lighting were similar to those in Leibovitz’s photo.

In this case, the court decided that the picture by Paramount was clearly parodic in nature.

That was not the case when a court decided Dr. Seuss Enterprises, L.P. vs. Penguin Books USA, Inc. Penguin had published a Dr. Seuss-style book that they claimed was a parody of the O.J. Simpson murders. It was entitled, “The Cat NOT in the Hat!” and was purportedly authored by Dr. Juice. The judge found that this book was not a parody and made a judgment in favor of the plaintiff.

Clearly, not everyone agrees on what constitutes fair use.


Intellectual Property

When determining the purpose and character of the use of the copyrighted material, the court will look at whether the use was commercial or non-commercial. Use that is commercial is less likely to be deemed fair use, but if it is non-commercial, then there is a much better chance that the court may see it as fair use.

Courts also look at the nature of the copyrighted work. Specifically, the judge will examine whether the underlying work can be considered as more factual or more creative. When the copyrighted work is more imaginative or creative, then it is less likely that someone else’s use will be considered fair use. Another critical consideration is whether or not the copyrighted work has been published. It would be very difficult to claim fair use that is based on an unpublished work.

The court will look at how much of the copyrighted material is used in the new work as well. Suppose that the new work uses only small amounts of the copyrighted work, like a quote from a novel or a still image from a film. Such relatively limited use of the copyrighted material is unlikely to be considered infringing. On the other hand, if the new work uses a significant amount of the original work, then the court may decide in favor of infringement.

To demonstrate just how subjective this determination is, it is worth noting that the judge additionally considers whether or not the portion of the copyrighted material that was used was the “heart” of the original work. If the judge feels that the borrowed portion was the heart of the original piece, then using even a small amount of it may be considered infringing.

Determining fair use also may depend upon the effect of the new work on the market. Essentially, the court must decide whether or not the activities of the defendant may cause harm to the market as well as whether or not the new use may harm potential markets that the owner of the copyrighted material might exploit. If the court determines that the use may harm the owner’s current and potential markets, then the judge is likely to conclude that the use was infringing.