Protect Your Intellectual Property or Else

by Varnum LLP
Contact

[co-author:  Janelle Grigaitis - Summer Associate]

With an increasingly competitive marketplace challenging traditional business models, protecting intellectual property in the automotive industry has never been more vital. Among a business's most valuable assets are the four types of intellectual property ("IP"): trademarks, copyrights, patents, and trade secrets. But, what is IP and why is it important to protect it? 

Trademark

A trademark is a word, name, symbol, or logo used to advertise or market a product or a service. Trademarks help to identify and distinguish the product or service from its competitors. Although "common law" rights in a trademark can be established merely by using it in commerce, registering the trademark grants the holder the legal presumption of exclusive ownership, and notifies the public that the user claims ownership.

Trademarks can be protected through registration with the state or federal government. If a trademark is registered, someone with a similar mark who applies for protection may be denied and should consider ceasing to use the possibly conflicting mark to avoid litigation. Beyond registration, trademark owners can also hire a "watch service" to monitor trademark registries for copycats, or to watch domain names to see if anyone is selling competing products online. Another cost-effective way to stay aware of whether your trademark is being used, or appears on the news or on the Web, is to create a Google Alert. However, it would be risky to rely solely on Google Alerts, or simply periodically "surf the Web" yourself, because those searches do not flag trademark registries or domain names. 

Another way to protect intellectual property is by securing trademarks for future expansions of a product line. For example, when Cadillac introduced its new CT6 flagship in 2014, it began to seek trademark registration coverage for not only CT6, but CT2, CT3, CT4, CT5, CT7, and CT8 as well. By doing so, Cadillac avoided the situation that Audi found itself in with Fiat Chrysler earlier this year. Fiat Chrysler Automobiles, in exchange for an undisclosed trademark previously owned by Audi, agreed to release two of its badges, Q2 and Q4. Because Audi owned the trademarks to the rest of the Q1 through Q9 badges, securing the "Q2" and "Q4" trademarks helps to strengthen its recognition in the marketplace and prevent consumer confusion. 

Copyright

A copyright protects an original work of authorship "fixed in a tangible medium of expression." For example, it protects books and other written works, artworks and other images, music, and many other things. While copyrights are often associated with protecting novelists and musicians, they can also be used to protect computer software, which is a huge component of modern cars. Although copyright exists the moment the work is created, the copyright must be registered before a lawsuit can be filed for infringement of a U.S. work. Registered works can be eligible for statutory money damages and attorneys' fees in successful litigation. Therefore, best practice is to register works that are very important to your business. 

Beyond registration, if someone is infringing a copyright (or a trademark or patent for that matter), an attorney can send a cease-and-desist letter to the infringer, and, if the infringement is taking place online, a Digital Millennium Copyright Act (DMCA) Takedown Notice to the web host or platform. Although issuing the DMCA Takedown Notice in copyright matters does not entitle the owner to damages, the Internet service provider is required to remove material that appears to infringe on a copyright. 

Patent

Patents come in a few different varieties, but the two most commonly pursued are utility and design patents. A utility patent covers an invention that produces a function or result, such as an engine design or other mechanical or electrical type device. A design patent protects purely artistic or ornamental design — a non-functional characteristic or feature of a manufactured item. To protect a patent within the United States, it must be registered with the U.S. Patent and Trademark Office. There is no "common law," use only protection for patents. A U.S. patent gives the owner the exclusive right to exclude others from making, using, offering to sell, selling, or importing the product for a specific period of time, such as 20 years presently for a utility patent. 

Trade Secret

Finally, a trade secret is business information that is kept scrupulously confidential, such as product development plans, financials, client lists, highly innovative ideas, or computer software. The best way to ensure protection of trade secrets is to take reasonable measures and precautions to keep them confidential, such as maintaining strict company policies and access by only those "with a specific need to know." Employees, independent contractors (such as consultants or other non-employee workers and representatives), and business partners can be required to sign confidentiality/trade secrets non-disclosure agreements. Unlike patents, trade secret protection can extend for an unlimited duration, provided it is kept "secret." 

As with most matters, careful planning to protect your IP with an expert such as an experienced attorney can save time, money, and grief in the long run.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Varnum LLP | Attorney Advertising

Written by:

Varnum LLP
Contact
more
less

Varnum LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.