FAQs About IP Law

The legal process can be unfamiliar and confusing. We'll help guide you through the process and provide clear expectations along the way. Below are answers to some frequently asked questions, as well as some terms you'll hear throughout your case.

Don't see an answer to your question? Email us at info@klemchuk.com or call to learn more about the process and how we can help.

Copyright lawyers provide advice on the type of works that are copyrightable as well as how to protect such works. As the ease of disseminating content to the masses via the Internet grows, the need for adequate copyright protection continues to increase. Copyright lawyers can help artists, writers, photographers, programmers, and the like, to understand how best to protect their works, to help prevent infringement, and to be in the best position to enforce such rights should they encounter infringement.

Copyrights are automatically created when someone creates an original work of authorship and fixed in a tangible form. And, it is not necessary to register those rights for them to exist. However, recent law now requires that a work must be registered before an owner can bring an infringement lawsuit against a third party to enforce those rights.

Copyright is an intellectual property right that protects, for example:

• Literary works

• Musical works

• Dramatic works

• Artistic works

• Software programs

• Architectural works

Domain hijacking is the theft of a domain by changing the ownership and/or access without the authorization of the rightful owner. Too often, domain owners do not properly safeguard access to their domains. Common mistakes, such as the sharing of passwords, using generic passwords, not changing default settings on hosting or Word Press sites, installing plugins and not keeping them updated, are all examples of how domains can become vulnerable to domain hijacking.

To prevent domain theft, domain owners should implement safeguards and routine maintenance of their domains. Internet and eCommerce attorneys can provide guidance on best practices and policies to prevent domain hijacking issues.

Before buying a domain name, one should do some domain acquisition diligence to help ensure the domain is actually available for use as intended and that there are no third party rights attached to a chosen name that could have negative consequences later. Once a domain is clear for use, if the domain name is available on the open market, one can simply purchase it from any accredited domain name registrar. However, if the domain is already taken and for sale by either a reseller or a domain squatter, some care should be taken in proceeding with the purchase.

Additionally, if the domain name you want to acquire includes your brand name or registered trademark, there are options you should be aware of prior to proceeding as there are laws that protect against domain registrants with bad faith intentions in registering particular domains.

The Uniform Domain-Name Dispute Resolution Policy (UDRP) is a process of dispute resolution established by the Internet Corporation for Assigned Names and Numbers (ICANN) the all registrars are bound to follow. It allows for expedited review in the form of an administrative proceeding for disputes alleging abusive domain registrations. The outcome of such a proceeding will resolve with a review and opinion that will either find the domain registrant is allowed to maintain the domain registration, or result in a cancellation, suspension, or transfer of the domain name. The UDRP process is less expensive than formal litigation and can involve parties from different countries.

TLD stands for “Top-Level Domain” and is the root part of a domain name consisting of the portion after the last dot in a domain name. There are over 1500 TLDs in existence and the number keeps growing as new TLDs are requested and allowed.

Domain squatting is also known as cybersquatting. It consists of the bad faith registration of a domain name that includes the trademark of a third party. Cybersquatters register domains with the intent to unlawfully profit from the trademark owner, either through diversion of traffic or the attempted sale of the domain to the trademark owner or a competitor thereof.

The Anticybersquatting Consumer Protection Act is the U.S. law that provides protection to trademark owners from the bad faith registration for profit of domains. Other countries have similar laws. Understanding which jurisdiction applies can be tricky or unclear. However, domain squatting can be resolved through an international arbitration process, such as WIPO (World Intellectual Property Organization) or a UDRP proceeding.

Domain listings and website listing services are generally scams. Domain owners often get invoices under the guise of an important and urgent deadline to “maintain” or “renew” a domain name listing before it expires. Domain owners should be careful of such notices. They are made to appear official to get unsuspecting domain owners to pay the invoice for nothing more than an unnecessary listing of the domain in an obscure “list” somewhere, if at all. Domain owners should keep track of their domain renewals directly with their domain registrar.

Intellectual property (IP) is generally intangible property resulting from some degree of creation. The various forms of IP are distinct and offer different protections under patent, copyright, trademark, trade dress, trade secret, and other related laws.

Patents

A patent gives the inventor exclusive rights in the invention for a period of time, so that he or she can profit from the invention before the right to exploit it is available to the general public. Patents can be granted for plants and other life forms, designs of manufactured products, machines, processes, and combinations of matter. A patent protects inventions or discoveries and grants the patent holder (or patentee) the exclusive right to make, use, offer for sale, and sell inventions, including new and useful processes, machines, certain designs, and certain varieties of plants, for a period of 20 years (excluding design patents).

COPYRIGHTS

A copyright helps prevent others from copying, making derivative works of, performing, distributing, or selling copies or counterfeits of original works of authorship, such as music, lyrics, books, plays, poems, paintings, sculpture, photographs, architectural designs, and software. The creator of the work is generally considered to be the author of the work and is the owner of the copyright. An author of a work need not register the work with the U.S. Copyright Office to be protectable under copyright law. The work is generally protectable for the life of author plus 70 years.

TRADEMARKS, SERVICE MARKS, AND LOGOS

A trademark, service mark, or logo helps prevent others in the marketplace from using a confusingly similar name, symbol, or device to indicate the source of its goods or services. A trademark protects words, phrases, symbols, or designs identifying the source of the goods or services of one party and distinguishing them from those of others. Trademarks are generally protectable as long as they are used in commerce to distinctively indicate the source of the goods or service.

TRADE DRESS

Trade dress protection is similar to trademarks and can be used to identify and promote the non-functional aspects of a product or service. For example, the shape, color, and design of a product or its packaging can be trade dress. Likewise, the decor and color scheme of a restaurant or store also can be trade dress. Trade dress is generally protectable as long as it is distinctive and used in commerce to indicate the source of the goods or service.

TRADE SECRETS

A trade secret is any formula, process, design, or compilation of information, which is not generally ascertainable, by which a company can obtain an economic advantage over competitors or customers. In some states, a trade secret remains enforceable as long as reasonable efforts have been taken to keep it “secret.”

IP lawyers provide guidance and advice related to the various types of intellectual property.

Lawyers help with: identifying intellectual property, registration of rights, maintenance of the IP, strategizing on portfolios, implementing enforcement programs, and litigation.

Intellectual property (IP) law covers patent, copyright, trademark, trade dress, trade secret, and other related intangible assets rights. IP law protects owners of those assets from improper third party infringement of those rights for their own financial gain.

Basically, IP law involves:

• identification of assets that should be protected;

• protection through formal registration and/or internal processes;

• maintenance of the rights through proper use, filings, enforcement, and/or internal processes; and

• guarding against infringement by third parties through enforcement programs, consumer education, adequate agreements, and litigation, when necessary.

IP due diligence is an important factor in understanding the value of a company’s intangible assets. Due diligence is often performed in connection with the preparation for sale of a business or the IP. However, perfuming IP due diligence on some periodic basis, without the expectation of any sale of assets, can help owners understand the value of their assets as well as where there may be some protection lacking, the need to expand or minimize efforts for protection. IP due diligence consists of a very detailed audit of all the intellectual property of a company and how it is maintained, handled, licensed, protected, and disclosed. Due diligence examines any issues for and the scope of protection of the IP, the expected revenue as well as expenses stemming from the various IP, and any agreements with third parties that involve the IP.

International law refers to the various rules, agreements, and treaties that govern the relations between various nations. Different countries are parties to different international agreements between countries. When doing business internationally, it is important to understand which laws apply and when either national and/or international laws prevail should an issue occur.

The most common international laws that businesses encounter include customs regulations for importing and exporting of goods, privacy laws that affect where online businesses reach (regardless of where hosted or the intended audience), private international laws that cover disputes between individuals or businesses of different countries, and intellectual property rights laws/treaties.

International laws apply according to the specific situation and circumstance. International laws and the proper application of a given law can be confusing and complicated. Therefore, it is important to seek the advice of legal counsel in the countries involved with an understanding and experience with the specific type of transactions of concern.

International lawyers help with identifying potential issues with international transactions and preparing proper agreements and safeguards for such transactions. International lawyers typically have foreign associates in various countries that they work with to help clients best navigate business transactions internationally.

International lawyers most commonly assist with:

• foreign business transactions

• business ventures

• international protection of intellectual property rights

• negotiating contracts

• resolving international disputes

There is no all-encompassing law that covers Internet activity and e-Commerce business.  The laws that will apply are specific to the type of transaction, the business, the jurisdictions involved, and a myriad of other factors relevant to the specific activities involved. 

Although there are numerous laws that can apply to online transactions, the most prevalent are related to consumer privacy in how data is collected, stored, and used, the use of third-party intellectual property, the form of marketing to consumers, and security of online transactions involving currency exchange. 

Businesses transacting business online (Internet and eCommerce businesses), and even individuals engaged in general online activities, should be aware that there are numerous laws that can apply to even common online activities and transactions.  It is common that legal counsel is only sought after an issue actually arises.  The expense for backtracking and defending against claims would be minimized with initial consultation from experienced Internet counsel that can provide advice to help with compliance where specifically needed at the forefront. 

Cyber lawyers assist online businesses with advice on best practices for compliance with the various regulations that affect a particular type of business, and also represent consumers against harm and damages caused from online activities and business transactions.  

Some of the type of services Internet and eComerce lawyers provide, include:

• Clearance for use of a trade name

• Obtaining clearance for and registration of domains

• Strategies related to online presence

• Obtaining and negotiating agreements and licenses as needed

• Creating website terms, policies, and provisions

• Assistance with social media, online marketplace, and other online issues

• Negotiating contracts and agreements

• Representing clients against legal claims, as well as filing and litigating claims against wrongdoers

Although there are numerous laws that can affect online businesses and general online transactions and activities, there are some more common things online businesses should be aware of, at least in general, to have awareness of when to confirm compliance and/or seek the advice of legal counsel for assistance with compliance. 

For example, Internet and eCommerce laws, also referred to as cyber laws, include regulations related to the following common, online-related activities:

• Obtaining a domain name – Anti-Cybersquatting Consumer Protection Act (ACPA)

• Choosing the domain hosting company and its jurisdiction

• Website creation – Terms of Use (TOU); Terms of Service (TOS); Privacy Policies; Legal Disclaimers      

• ISPs (Internet Service Providers)

• Data collection and storage

• Privacy regulations – state, federal, and even international laws can apply 

• Website content – Children’s Online Privacy Protection Act (COPPA)

• Use of third party trademarks – Lanham Act

• Use of copyrighted content – Digital Millennium Act (DMCA); Uniform Domain-Dispute Resolution Policy (UDRP)

• Marketing regulations – Federal Trade Commission (FTC)

• Business transactions – Uniform Commercial Code (UCC); Magnuson-Moss Warranty Act

A patent is a right granted by a government to an inventor for the exclusive right to manufacture and/or sell an invention for a specified period of time.  

In the United States, there are three types of patents:

• Utility patents – cover new and useful processes, machines, and matter or chemical compositions

• Design patents – cover new and original designs of products

• Plant patents – cover the invention and reproduction of a new variety of plant

For an idea to be patentable, it must be new and useful, novel, and non-obvious.  An invention is not patentable if it is already in use by the public, or if it consists of abstract ideas or things that already exist in nature. 

Patent lawyers can help inventors and invention owners with a wide scope of services from inception of an idea to the enforcement of those rights. 

The type of services patent lawyers provide, include assisting with:

• Describing/disclosing the subject of an invention

• Research and preliminary searching to help determine whether the idea is patentable

• Providing an opinion on the chances for success at obtaining patent protection

• Drafting of a proper application with all detailed requirements for examination

• Prosecuting an application

• Maintaining registration rights

• Portfolio management and strategizing 

• Creating and negotiating contracts, licenses, and royalties

• Implementing patent enforcement programs

• Defending against third party claims and litigating infringement actions

The process for obtaining a patent should include several steps to help ensure the idea is viable for patent protection and that the cost and time required to navigate through the patent process is worth the investment.  

First, obtaining a patentability search and opinion is important to help understand the landscape of prior art and chances for success in obtaining a patent grant.  Second, a clearly drafted patent application must be filed for examination.  The examination process can take a couple to several years, depending on the type of technology involved and the backlog at the United States Patent and Trademark Office for review of applications in that particular field.  Throughout the examination process, additional expenses are typically required for prosecuting the application and responding to objections and communications from the patent examiner.  Third, once the patent is allowed, additional fees are required for grant.  There will also be maintenance fees later throughout registration to maintain the registration rights.

A trade secret is valuable intellectual property in the form of information that is confidential and gives the owner a competitive edge over others. The information can be a recipe, process, software, method, list, practice, machine, instrument, compilation, or the like, that gives the owner an advantage in the manufacture or sale of product and/or in offering services.

Examples of famous trade secrets are the recipe for COCA-COLA® and the KFC® “original recipe” for chicken. But, trade secrets can also be a special method or process, a coveted business list, an unknown process, or something that sets the owner apart from competitors because the secret is kept a secret.

Unlike other forms of intellectual property, trade secrets are not registered. In order for the right in a trade secret to exist, it must be:

• valuable because others don’t know about it;

• something others can’t get the information about without obtaining it from the owner; and

• kept a true secret by the owner taking active and reasonable measures to protect it from becoming publicly known.

Additionally, as long as all the above elements exist, the trade secret maintains protectable intellectual property rights. This is why some companies opt not to obtain patent protection on certain things, because patents become public records and the life of patent protection does eventually end.

Trade secret lawyers help businesses and individuals identify trade secrets and how to best protect them. In evaluating the intellectual property of a business, lawyers can perform a due diligence review to help identify and valuate the intangible assets of the business, including trade secrets.

To maintain the rights in a trade secret, it is important that owners implement processes and confidentiality agreements in the business to properly show the owner has taken “reasonable efforts” to maintain the trade secret, which is a vital element to the maintenance of such intellectual property right. Trade secret lawyers create company agreements to help protect intellectual property, such as non-disclosure, non-compete, employment, and confidentiality agreements.

Trademarks serve as “source identifiers” to consumers about where a particular product or service is derived from. Most commonly, trademarks consist of a word, phrase, and/or design. However, a trademark can also be a sensory mark such as a color, sound, or even a scent, that due to its distinctive use becomes a symbol of a company, product, or service.

“Service Marks” refer to marks used in connection with offering services, rather than products. However, the term “Trademark” is interchangeably used to refer to both marks used on products and services.

Examples of well-known trademarks include:

• the “swish” symbol for NIKE® products

• APPLE® for computer-related products and services

• the lion roar for motion pictures by Metro-Goldwyn-Mayer Lion Corp.

• the light blue color for Tiffany jewelry boxes

Trademarks are intellectual property rights can be established in common law, without the need for registration. However, registration of a mark at either the state or federal level provide important benefits. Registration creates a public record of the claim to those rights providing notice to third parties, which is important in a dispute regarding those rights.

Federal trademark registration advantages include, for example

• public notice of the claim

• legal presumption of ownership (nationwide)

• exclusive rights

• ability to sue in federal court for infringement of rights

Trademark owners should register their marks if they want to protect their marks from confusingly similar use by third parties. Becoming known through brand names and marks by consumers for good quality in providing goods and/or services is a valuable business achievement that grows the goodwill of a business. Therefore protecting trademarks used to offer the goods/services becomes even more important when third parties are likely to try to pass off their goods/services under a similar mark to gain consumers mistakenly seeking authentic goods/services under the mark.

Although registration is not necessary to acquire trademark rights, registration provides the strength and requirements to best be able to legally enforce trademark rights through online takedown requests and/or federal litigation. Many online marketplace and social media platforms will take no action against an infringing party unless a federal registration can be presented to easily show rights in the intellectual property at issue.

Trademark lawyers assist clients with identifying and assessing trademark rights to help with clearing marks for use and registration. Attorneys help trademark owners navigate through the application and prosecution process to achieve registration, as well as maintenance of those rights. Additionally, trademark lawyers can counsel owners on various aspects of trademark related legal services, such as:

• proper use and branding guidelines

• licensing agreements

• trademark portfolio management, maintenance, and strategy (nationally and internationally)

• enforcement of rights

• trademark litigation

Transaction law refers to the legal practice involving business and commerce, and focuses on the use of agreements, contracts, plans, policies, and processes to help businesses achieve optimal legal protection. Some of the type of services that fall under transactional law, include:

• business planning, strategizing, and entity formation

• employment agreements

• contracts and commercial agreements

• eCommerce protection (website policies, terms of use, DMCA)

• franchising

Transactional lawyers assist business owners with all aspects from formation of a business, to legal services related to the running and operation of the business, as well as preventing and negotiating business-related disputes. Different industries, business types, and ways of doing business, all involve separate and distinct requirements for legal compliance specific to the particular business. Experienced transactional lawyers have experience in handling the various types of issues businesses can encounter and work with clients to proactively implement measures to protect the business. Some of the types of business transactions that transactional lawyers assist with, include:

• writing non-disclosure agreements (NDA)

• creating custom employment agreements

• writing and negotiating software agreements

• reviewing and negotiating vendor and contractor agreements

• creating licensing agreements

• ensuring inclusion of indemnity clauses

• drafting business specific website terms of use and privacy policies for optimal protection

• negotiating business disputes

Operating a successful business is best achieved with some reinforcing and basic agreements to help protect the business against common legal issues. The basic things all businesses have in some form are employees, vendors, contractors, and consumers. So, having agreements in place to address the most common issues encountered with these four factors will help to provide the basics for protection of a business.

Employee Agreements help clarify scope and expectations. Examples include:

• employee policies; social media policies; remote working policies

• confidentiality agreements

• employment contracts

• non-compete clauses/agreements

• trade secret and intellectual property policies/agreements

Vendor Agreements are not always something that can be revised, but they should be clearly understood, and depending on the extent of relationship, volume, etc., some negotiation can be warranted. Types of vendor agreements and/or terms to negotiate include:

• supply agreements with specific terms regarding breach and remedy

• payment terms

• indemnity and hold-harmless agreements

• distribution and warehousing agreements

Contractor Agreements identify the scope and expectations, including payment terms, IP rights, and other important factors prevalent in working with contractors.

• statement of the work (SOW) agreement

• independent contractor agreements

• intellectual property use and rights transfer agreements

Consumer-related Agreements include policies, procedures, and agreements necessary to help protect a business from laws and regulations related to consumer rights and privacy. Examples include:

• website terms of use and privacy policies that specifically address the type of concerns prevalent to the type of business and online presence

• privacy and data use policies for collecting any kind of consumer private information with opt-out policies clearly defined

• eCommerce agreements for online sales