Mobile Device Security Policies for Employers – Small and Large

As a business owner, perhaps you have seen articles about setting ground rules for BYOD (a.k.a. employees bringing their own devices to work to use for work purposes). Placing restrictions on access to Company information, however, should not be limited only to those BYOD devices. Instead, if the Company issues Company-owned devices to employees for use on Company systems, similar ground rules should be put in place to set expectations and provide the backdrop for any disciplinary action that may be needed later if an employee misuses Company information or loses an unsecured device.

Here are some questions to keep in mind as you develop policies for Company-owned devices issued to employees: Continue reading

Common Questions – What’s Involved in Registering a US Trademark?

So, you’ve decided to launch a brand name in the U.S. and are contemplating registering it in the U.S. Patent & Trademark Office (“PTO“). What can you expect? Not every application is the same, so there will be variations in exactly what happens in the prosecution of your application, but hopefully this will serve as a “Trademark 101 Primer” to describe the basic process overall.  (Note – this post is for general information purposes only and does not provide any specific legal advice.  Contact your trademark attorney to discuss any areas of specific concern.)

BASICS

What is a Trademark? It’s a word, phrase, symbol or design, or a combination of words, phrases or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark performs the same function as a trademark, but applies to the source of a service rather than of a product. (For simplicity, this post refers to trademarks and service marks collectively as “trademarks.”)

How Valuable is a Good Trademark? The value of a good trademark lies in its ability to convey to the public the source of a particular good or service. The key is to develop a mark unique enough that customers associate it with your goods or services – and only your goods and services. While temptingly simple, choosing a mark that describes your goods and services will not create any trademark value. Customers won’t know to distinguish your goods from others in the same market.

Can  Rights Develop Based on Use? Federal registration is not a requirement to protect trademarks in the U.S. – instead, rights in a particular trademark can be established simply based on use in connection with particular goods or services in the marketplace (aka “common law trademark rights”). Nevertheless, federal registration offers more comprehensive protection than reliance upon common law rights, including providing nationwide notice of the owner’s claim to the mark.

TRADEMARK APPLICATION PROCESS
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Common Questions – Benefits of Trademark Searching

Searching for potentially competing trademarks before you go through the time and expense of developing a strong brand is a very worthwhile exercise, but it costs money – and sometimes clients can be reluctant to spend the money if it’s not technically “required” to do so.

Trademark searching is not required before you file an application for federal trademark registration with the U.S. Patent & Trademark Office (USPTO), but it is highly recommended. Here are a few reasons why:

1) The USPTO’s filing fees are non-refundable if an Examining Attorney refuses registration of your mark based on a pre-existing application or a registration owned by another;

2) The owner of the pre-existing mark could send you a cease and desist letter demanding that you stop using their mark, change your mark, perhaps destroy products or advertising material that uses the mark, seek disgorgement of profits for earnings using their mark or seek other remedies; and

3) The whole point of developing a valuable trademark (or service mark) is to create “source identification” – basically, to allow the consuming public to associate your unique mark with you. And only you. This value is undermined if there are lots of marks that are very similar to the one you ultimately adopt and use.

There are different levels of searching that can be beneficial – depending on your circumstances. They include:

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Is Your Company Subject to Laws Regulating Safe Destruction of Documents?

Many companies have document retention policies – in other words, policies determining how long they will keep certain kinds of documentation.  These policies also frequently cover when documents may be destroyed in the normal course of business.  (Assuming, of course, that no litigation is pending and that there is no other reason why the company would be legally obligated to keep these documents.)  It’s almost a business necessity these days given the cost of document storage.

It is also a fairly safe bet that by now, most people have heard about the potential risks associated with data breaches, or at the very least, have heard about the Target data breach during the holiday season in 2013.

However, did you know that many states regulate how personal information can be destroyed?  Or, more specifically, how documents and records that contain such personal information may be discarded?  To date, at least thirty-one states have enacted laws like this (the link attached omits the Delaware law that was just enacted).

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Common Questions: Can I Copyright My ‘Knight in Shining Armor’ Story?

The short answer is – perhaps, at least parts of it.  Copyright law protects “original works of authorship fixed in a tangible medium of expression.”  17 U.S.C. § 102.  This protection attaches from the moment at which the expression is recorded – in other words, from the moment the pen hits the paper. 

While fictional stories can contain creative and innovative ways of expressing some common themes, the common themes themselves are not protectable.  These are standard story elements – such as a damsel in distress, who is later saved by the proverbial knight on a white horse (e.g., Rapunzel or Sleeping Beauty), the villain who seeks redemption (e.g., Star Wars), star-crossed lovers whose romance is tragic (e.g., Shakespeare’s Romeo and Juliet), an epic journey through which the hero has several adventures (e.g., The Iliad or the Odyssey), or corruption and betrayal by a close friend leading to a tragic downfall (e.g., Shakespeare’s Julius Caesar).  These story elements have existed for hundreds of years, and can be found even in Greek comedies and tragedies that we studied as students in literature classes or in theater programs.

These basic story elements are not protected under the Copyright Act, because to prevent others from copying them would render storytelling completely impossible.  They are generic, standard building blocks in any story.

Stories that include these elements, however, are not completely beyond the protection provided by the Copyright Act.  Instead, the way the story is told – the prose, the narrative, the alliterative descriptions that bring these story elements to life – are all the kinds of unique expression which the Copyright Act protects. 

If someone were to come along and copy verbatim several chapters of a book (or even a shorter amount), the author could still enforce his or her copyrights (subject to some defenses like fair use, expiration of copyright term or independent creation, joint ownership, etc., which are beyond the scope of this article) because of that exact duplication.  The author could not prevent other stories from being written that include a “damsel in distress” element or a “knight on a white horse” element – because those are the generic elements beyond the protection of the Copyright Act.  They can always pursue an action when exact copying of their original, creative text has occurred.

In a recent case, this dichotomy between the protection of the expression versus the lack of protection of an idea was explored further.  In Rucker v. Harlequin Enterprises Ltd., No. 4:12-cv-01135 (S.D. Tex. Feb. 26, 2013), the plaintiff – an author who had written (but not yet published) the first chapter of a romance novel – sued a book publisher for its publication of a full-length novel that allegedly copied her story about a “tall, dark and handsome,” wealthy and powerful male hero, and a beautiful red-haired heroine with green eyes, who was slender, young and strong-willed.  Rucker at 14-15.  She basically argued that the book publisher copied her idea (which she had submitted in a writing contest), put it into a full-length novel, and published it without her knowledge or consent.

The author did not provide any evidence that the publisher had actually seen her submission, but the Court later concluded that because the works were not substantially similar, there was no need to determine whether the book publisher, in fact, had access to her work prior to its own publication.  Id. at 4 n. 2.   In her complaint, the author identified 40 instances of direct infringement in a summary form, but did not provide any specific examples of them.  Id.at 1.  Because the book publisher provided copies of both works in its motion to dismiss, the Court was able to compare both works side-by-side to determine whether a claim for infringement could survive.  Id. at 1-2.

After reviewing both works, the Court recognized that while there were some similarities between the two works, these similarities were “not in legally protected elements.”  Id. at 12.  The Court explained that “a theme or trope that has long existed is not ‘expression’ that the Copyright Act protects.  Rather, infringement requires copying of constituent elements of the work that are original.”  Id.at 13.  In addition, “material or themes commonly repeated in a certain genre are not protectable by copyright, nor are so-called scenes a faire.”  Id.  “Scenes a faire” are later defined as involving “incidents, characteristics or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic, what flows naturally from these basic plot premises.”  Id.(quoting Atari, Inc. v. N. Am. Philips Cons. Elec. Corp., 672 F.2d 607, 616 (7th Cir. 1982)). 

These elements “are not protected because they are strongly affiliated or connected with a common theme and thus are not creative.”  Id.  In other words, there are limited ways available in which these standard story elements can be described.  The Copyright Act does not preclude others from copying these same standard elements, because the ideas themselves are not copyrightable.  Id. at 9 (“Copyright law does not protect an idea, but only the expression of an idea.”) (citation omitted); see also Russ Berrie & Co. v. Jerry Elsner Co., Inc., 482 F. Supp. 980, 986 (S.D.N.Y. 1980) (“shared characteristics of both parties’ Santa toys of a ‘traditional red suit and floppy cap, trimmed in white, black boots and a white beard’ and ‘nose like a cherry’ [were] common to all Santas and not probative of copying.”) (as quoted by Rucker at 13).

Ultimately, the RuckerCourt concluded that “[t]he similarities that [the author] asserts are either stock elements of romance novels or plot elements that naturally flow from the broad themes that the two works share with other works in the same genre.”  Id.at 14.  The Court held that there was no actionable similarity between the two works and dismissed the complaint.  Because the Court held that allowing the plaintiff to amend the complaint would be “futile,” the dismissal was made without leave to amend and with prejudice.

The take-away point from these cases is that unique ways of telling a story will garner protection under the Copyright Act, but one author cannot prevent others from telling stories using the same standard story elements, provided that the other authors tell the stories in their own ways and do not copy verbatim what the original author wrote.

More on the idea/expression dichotomy can also be found in these prior posts:  Common Questions: Can I Copyright My Idea?  and When is a Fictional Character Copyrightable? (and, as later updated).