Protecting Your Mobility IP - Used Car Week · relationship between Eversheds Sutherland (US) LLP and the recipient. Eversheds Sutherland (US) LLP is part of a global legal practice,

© 2019 Eversheds Sutherland (US) LLPAll Rights Reserved. This communication is for general informational purposes only and is not intended to constitute legal advice or a recommended course of action in any given situation. This communication is not intended to be, and should not be, relied upon by the recipient in making decisions of a legal nature with respect to the issues discussed herein. The recipient is encouraged to consult independent counsel before making any decisions or taking any action concerning the matters in this communication. This communication does not create an attorney-client relationship between Eversheds Sutherland (US) LLP and the recipient. Eversheds Sutherland (US) LLP is part of a global legal practice, operating through various separate and distinct legal entities, under Eversheds Sutherland. For a full description of the structure and a list of offices, please visit www.eversheds-sutherland.com.

National Remarketing ConferenceUsed Car Week 2019

Jason McCarterJeremy Spier

Protecting Your Mobility IP

Eversheds Sutherland

Why Care About Intellectual Property (IP)

Represents a major asset of many businesses

― For many tech businesses, IP (e.g. patents) is their most important asset

― For many service businesses, their brand (trademarks and trade names) is their most important asset

Attention paid to IP maintains or increases the value of the assets

Protecting IP provides significant competitive advantages

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General Types of IP

Trademarks – any word, symbol, or sound that identifies one product or service from those of others

Tradename – identifies an organization itself

Copyright – protects original material that is fixed in tangible form from copying – protects expression of idea but not idea itself

Patents – right to exclude others from making, using, selling, or importing a patented invention

Trade Secret – any business information that is the subject of reasonable efforts to preserve confidentiality that has value because it is not known to public

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What is a trademark?

Anything that can distinguish the goods or services of one business from another:

Word - Jeep, Manheim, Coke

Name - Ford, Dodge, Kelley Blue Book

Symbol/Logo -

Shape -

Sound - Harley- Davidson V-Twin Engine Sound

Color - John Deere Green

Trade Dress/Packaging -

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Trademarks

Trade names vs. Trademarks

Trade name – a symbol, name, or word used to identify and distinguish companies, partnerships, and businesses

─ Example – Ford Motor Company

Trademarks identify and distinguish goods or services

─ Example - Bronco

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Copyrights

What exactly are copyrights?

Copyright protection is available to original works of authorship that are fixed in a tangible medium of expression

― Originality means a minimum level of creativity – You may use the ideas of someone else so long as you do not copy the way they expressed those ideas

― Authorship means independent creation

― Fixation means that your work is fixed in a tangible medium of expression

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Copyrights

Why do we have copyrights?

― Without copyright protection there would be little financial incentive to create things that could easily be copied and resold

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Copyrights

Copyrights do NOT include:

― Ideas

― Independent creation

― Useful objects or the useful elements of otherwise protectable objects

― A method of operating a device

― Blank forms, including data input screens

― Titles, names, short phrases, and slogans

― Familiar symbols or designs

― Recipes

― Fonts (but the software needed to create font may be protected)

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Copyrights

Who owns a copyright?

─ The author, or anyone to whom the author transfers ownership

─ Work made for hire• Employers are the authors

• Independent contractors vs. employee (within the scope of employment)

• Assignments• Graphic designers

• Advertising

• Commercials

• Coders

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Copyrights

Who owns a copyright?

Best practices for business owners

― Obtain an agreement to assign before the work begins and a formal assignment upon completion of the work: ―IN WRITING!

― Record agreement or transfer of ownership with Copyright Office

― Remember: most work made by independent contractors does not constitute a “work made for hire” under US law

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Patents

Factors to consider before pursuing a patent

Costs

― Monetary costs to obtain and maintain• Filing, attorney and maintenance fees

― Opportunity cost• Limited time period of exclusive rights: only up to 20 years

Enforcement of the patent

Commercial life of the patented product

Development life cycle and time frame of industry

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Patents

What is a patent?

Right to exclude

― A patent grants its owner the right to exclude others from “making, using, selling or importing” a patented invention

Types

─ Design

─ Utility

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Trade secrets

Definition

― Any business information that is the subject of reasonable efforts to preserve confidentiality and has value because it is not generally known in the trade

Example

─ Client lists

─ Research and development reports

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Trade Secrets

How “secret” is a secret?

Reasonable steps should be taken to preserve the confidentiality of information

― Examples• Develop employee and vendor confidentiality policies (non-disclosure agreements)

• Password protect important information and mark documents “confidential”

• Shredding/document disposal policies

• Restrict employee access to certain information

• Use firewalls and encryption to protect digitally stored trade secrets

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Trade Secrets

Protecting my trade secrets

Proper v. Improper discovery of trade secrets

Proper ways of obtaining trade secrets:

─ Independent invention

─ Reverse engineering

─ Observing product in public use

─ Publicly available data

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You cant put the genie back in the bottle


Trade Secrets

Infringement

Improper disclosure or use of protected trade secret information

Typical illegal methods include:

─ Industrial espionage

─ Bribery

─ Misrepresentation

─ Breach of confidentiality agreement, explicit or implicit

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Trade Secrets

─ 2016 Federal Defend Trade Secrets Act• Civil trade secrets actions in federal court

─ Uniform Trade Secrets Act – adopted by 48 states + D.C. Private right of action, with money damages

─ States adopt own versions: Definitional: “trade secret,” “misappropriation,” “improper means”

─ Statutes of limitations (GA, 5 yrs.; CA, 3 yrs.; AL 2 yrs.)

─ Exemplary damages limited (CO, VA, GA), unlimited (NC, MI), or omitted (AR, LA)

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Best Practice

Trade secret audits

Document trade secrets, intended use, actual use

Document sharing with outsiders and applicable NDAs

Document access and use regarding outsiders’ information

Continue protecting information

Strong NDAs with third-parties

Written information access policy covering electronic data

Restrict employee access to information

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Best Practice

Review form employee policies/agreements

Whistleblower immunity notice

─ No criminal or civil liability under state or federal law for misappropriation if confidentiality protected

─ Provide direct notice or cross-reference to “employees”

─ Is notice to “employees” worthwhile?

─ Update confidentiality and policy documents

─ Include notice of penalty for misappropriation

Use DTSA definitions

─ “Trade secrets” examples may be broader

─ Uniformity for multi-state workforce

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Best Practice

Considerations for non-employee contracts and NDAs

Flow of information: to or from?

─ Choice of law: state claims still available; longer or shorter state SoL desirable?

─ Exemplary damages and attorneys fees

─ Exclusive venue provision

Add language allowing for seizure

─ Similar to injunctive relief provisions

─ High burden for seizure

Incorporate statutory definitions trade secret: examples may be broader

─ Uniformity for multi-state business

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Protectable Subject Matter Review

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Copyright Trademark Trade Name Patent (Utility) Trade Secret

What is protected?

Expression, not ideas Source-indicating word, symbol, etc.

Company name Device, composition, process

Formula, pattern, device, information

Criteria for protection?

Originality, authorship Distinctiveness, use in commerce

Distinctiveness, use Novelty, utility, non-obviousness

Financial benefit from secrecy

To obtain protection:

Fixation in tangible medium

Use in commerce; federal and state

registration

Registration in Superior Ct.; use

Grant by USPTO Maintain secrecy

Protects against:

Copying, etc. Confusing use Confusing use Manufacture, use, or sale

Misappropriation

Duration of Protection:

Life of author plus 70 years

Continuous with use Continuous with use 20 years from filing application

Continuous with secrecy


eversheds-sutherland.com© 2019 Eversheds Sutherland (US) LLPAll rights reserved.This communication cannot be used for the purpose of avoiding any penalties that may be imposed under federal, state or local tax law.

Jason McCarter, [email protected]+1.404.853.8050

Jeremy Spier, [email protected]+1.404.853.8926

Follow us on twitter:@ESautolaw

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Protecting Your Mobility IP - Used Car Week · relationship between Eversheds Sutherland (US) LLP and the recipient. Eversheds Sutherland (US) LLP is part of a global legal practice,