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Intellectual Property: a Two-Edged Sword

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Intellectual Property: a Two-Edged Sword NYSBA FALL 2012 | Vol. 30 | No. 2 Inside A publication of the Corporate Counsel Section of the New York State Bar Association Message from the Chair Looking forward to our tra- would amend Part 522 of the Rule of the Court of Ap- ditional CLE program on Ethics peals for the Admission of Attorneys and Counselors at for October 26, 2012. Steven Law. Hopefully, when you read this, the rule will have Nachimson is working hard to been adopted by the courts. put the fi nal touches on that Our Section took the top honor in the State Bar’s program. President’s Diversity Challenge in 2011 and we were At the end of June in recognized at the Section Leadership Conference in Cooperstown the House of May 2012. The commitment to diversity continues for Delegates approved our recom- us. In my Spring/Summer message I anticipated six mendation to allow in-house diverse law students in-house for the summer. How- counsel, who have not been ad- ever, we ended with nine students at nine different mitted to the New York bar but law schools in New York. On August 14, 2012 Alliance are registered in New York, to provide pro bono services Bernstein hosted the 7th annual Kenneth G. Standard while working for their employers. The recommendation Diversity Internship Reception, which honors all of Inside Inside Inside ............................................................................................2 A Supreme Court Milestone in the Evolving Right (Janice Handler) of Judicial Recourse from Administrative-Agency Intellectual Property: A Two-Edged Sword .......................................3 Decisions in the Wake of the America Invents Act .....................23 (Cheryl L. Davis) (Charles E. Miller) Taking the Contracting Mystery Out of Software How to Identify, Valuate, and Leverage Your Company’s as a Service Deals .............................................................................31 Intellectual Property..........................................................................6 (Mark Grossman) (Erica M. Hines) Crowdsourcing: Understanding the Risks.......................................34 Protecting Your Intellectual Property by Staying Informed (Marc A. Lieberstein, Ashford Tucker and and Knowing Your Options .............................................................9 Andrea K. Yankovsky) (Albert L. Jacobs, Jr., L. Donald Prutzman and Andrew Berger) How to Manage Collaborative Inventions .......................................39 (Timothy Howe, Ph.D., Esq., Deborah L. Lu, Ph.D., Esq., Clarifying Some Gray Areas of Copyright Law ..............................14 Thomas J. Kowalski, Esq. and Smitha B. Uthaman, Ph.D.) (Lisa W. Rosaya and Michael J. Bales) Using IP Assets to Weather the Startup Storm ................................43 Intellectual Property Issues Relevant to the (Jason Kreps and Tom Lemmo) “Green” Economy ...........................................................................18 Corporate Counsel Section Report: Right to Practice Reform: (Gaston Kroub) Registered In-House Counsel and Pro Bono Service .................50 Recent Changes to U.S. Patent Law ..................................................21 (David S. Rothenberg, Cynthia Beagles, Greg Hoffman, (Gerard F. Diebner) Jeffrey P. Laner, Randal S. Milch, Thomas A. Reed and John Frantz, with the assistance of Eve Runyon) Editors: Janice Handler and Allison B. Tomlinson SPECIAL ISSUE: INTELLECTUAL PROPERTY those who contribute to the success of this program. We Our Technology and New Media Committee launched a program mentoring our former interns. If you keeps adding content on our website for our members. want to be a mentor in 2013 let us know. Our past interns Thus, check our Section’s website at www.nysba.org/ are mentoring the class of 2012. Corporate. We welcomed three new liaisons from the Young Please give us your feedback. The Section is always Lawyers Section this year. As a past Young Lawyers looking for volunteers, so please reach out if you have Section liaison myself, it is an important relationship we any interest in being more involved. must continue to cultivate as these members will be the David S. Rothenberg future of our Section. Inside Inside Intellectual Property! As a young in-house marketing that discuss recent developments in patent and copyright lawyer I thought this an exotic (and non-essential) legal law (especially the AIA); and articles for the true IP con- specialty populated mostly by geeks with Ph.D.s—you noisseur that discuss crowdsourcing, software as service know, the ones who chose science instead of English as deals, IP in the green economy, managing collaborative their college majors. I learned quickly enough that mar- inventions, and using IP assets to ameliorate startup risks. keting executives salivate over their trademarks and are No corporate counsel can afford to be ignorant of IP very protective of their patents even when they have no issues—as one of our authors points out, the IP portfolio clue what a patent is or does. of a company can be more valuable than the products it This issue has something for everyone—from the gen- manufactures. At the least, this issue will tell you what eralist in a small legal department who vaguely knows you don’t know. that the company has intellectual property but doesn’t Enjoy! know what to do with it or how to protect it, to the patent experts who want to know how to use the newly enacted Janice Handler America Invents Act to strategic advantage. We have articles that outline IP basics (such as “Intel- Janice Handler is co-editor of Inside, former Gen- lectual Property: A Two-Edged Sword”; “How to Iden- eral Counsel of Elizabeth Arden Cosmetics Co., and an tify, Valuate, and Leverage Your Company’s Intellectual adjunct professor of Corporate Counseling at Fordham Property ”and “Protecting Your Intellectual Property by Law School. Staying Informed and Knowing Your Options”); articles NNYSBAYSBA CCORPORATEORPORATE CCOUNSELOUNSEL SSECTIONECTION VVisitisit uuss oonn tthehe WWebeb aatt WWWW.NYSBA.ORG/CORPORATEWW.NYSBA.ORG/CORPORATE 2 NYSBA Inside | Fall 2012 | Vol. 30 | No. 2 SPECIAL ISSUE: INTELLECTUAL PROPERTY Intellectual Property: A Two-Edged Sword By Cheryl L. Davis No matter the nature of your Company’s business, As you can see, copyright notice still serves a practical the odds are that as in-house counsel, you will have to purpose. address intellectual property issues with the Company’s employees at some point. These issues will probably arise While copyright protection lasts for the life of the in one of two contexts (if not both): (i) advising employ- artist plus 70 years (or, in the case of a work made for ees on how to protect the Company’s intellectual prop- hire, for 95 years from the year of its fi rst publication or 120 years from the year of its creation),4 patents only last erty, and (ii) cautioning them against becoming infringers 5 themselves. The same laws that protect the Company’s for twenty years from the date of application. While an intellectual property can be turned on the Company just initial trademark registration lasts for ten years, the regis- as easily if it infringes upon the intellectual property tration can continue to be renewed for additional ten-year 6 rights of others. terms. With respect to protecting the Company’s trademarks I. Protecting the Company’s I ntellectual and patents, you want to make sure that (i) the necessary Property fi lings are being made to renew the registration (where A. Legal Precautions trademarks are concerned) and (ii) again, that there is clear notice of the registrations. Designers and market- Before instructing employees on the business precau- ing personnel may occasionally protest that the notice tions they need to take to protect the Company’s intel- will negatively affect the look of the logo or their design lectual property, you should fi rst make sure the necessary concept. But, if notice is absent, the Company must then legal precautions have been taken. For example, where prove that the infringer had actual notice of the registra- the Company has valuable copyrights, you want to tion, and therefore, of the infringement. The Company make sure that they have been registered with the U.S. will then run the risk of losing at least some (if not all) of Copyright Offi ce. While copyright arises upon creation, its potential damages—which, since they can potentially registration is necessary in order to be able to bring a suit be trebled by the court, can end up being quite substan- in the event of infringement. In addition, if the copyright tial.7 You therefore should make sure that employees in- has been registered before the infringement takes place, clude the appropriate notices on the packaging and mar- statutory damages and attorneys’ fees then become avail- keting materials for the Company’s goods and services. able.1 Even if the Company doesn’t end up actually bring- ing suit, the mere availability of increased damages may B. Educating Employees About Intellectual Property give you additional leverage when it comes to settlement Having ensured that the legal framework is in place, negotiations. you should make sure that the employees are aware of You also want to make sure that there is adequate the value of your Company’s intellectual property, and copyright notice on the Company’s products (and/or that they know how (and how not) to treat it. While some their packaging), as well as on the Company’s website basic information should be included in the Company’s and other materials entitled to copyright
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