Intellectual property

What is Work For Hire?

by Fred Abramson on July 20, 2011

Image by NobMouse via Flickr

You started a new business and hired a web developer to design your website. Who owns the website design? The determination is dependent on whether the site design is a work for a hire.

If you own a business that deals with any type of intellectual property, you have to understand the concept of work for hire.

In the above example, which I encounter frequently, the web developer will often claim in the contract that they own all intellectual property rights to the design. They are technically correct. If you fail to enter into a contract, the copyright belongs to the web developer. That’s why it is vital to have a contract with a web developer stating that it is a work for hire and assigning all intellectual property rights to you.

There are other instances were work for hire comes into play:

An employee develops an intellectual property right. If you are a Google employee and you develop a new algorithm improving search results, clearly Google would own the ip. It doesn’t matter whether or not there is an employee agreement.
You are owner of company and you have a work for hire agreement. You may be an owner of a start-up and have a separate consulting business. If the work for hire agreement is silent about ownership of the intellectual property rights, the separate consulting business would retain intellectual property rights.

You need to be very careful regarding intellectual property when you start a new business. If you are developing a new app and one partner is involved in marketing and business development while your partner is busy creating the app itself, who do you think owns the app if your partnership fall apart? If you failed to establish a company, then app developer. It may surprise you that even the idea of building the app was yours, you will be left with nothing.

The golden rule here is that if your company creates intellectual property rights, a contract is essential.

If you have a question regarding work for hire in New York, feel free to call me at the Law Office of Frederic R. Abramson at 212-233-0666.

Is Your Website’s Image Protected Under Trademark, Copyright or Trade Dress?

by Fred Abramson on September 20, 2010 · 4 comments

You have spent hours of time and a significant amount of cash creating a website for your business. You are up late surfing on Stumpleupon and to your amazement, a page comes up that has the same look and feel as your website. Can you sue?

According to Richard Raysman, a partner at Holland & Knight, and Peter Brown, a partner at Baker & Hostetler writing in the New York Law Journal the law remains unsettled when it comes to using trademark law to protect a site’s distinctive interface and design elements.

Copyright law will usually not protect the overall layout of a web site. However, unique website design elements that are not protected under copyright could constitute trade dress which can be protected.

According to the New York Law Journal article, one of the leading reported cases that held that a site’s “look and feel” may form the basis for trade dress infringement is Blue Nile, Inc. v. Ice.com, Inc., 478 F.Supp.2d 1240 (W.D. Wash. 2007). In Blue Nile, the court held that the plaintiff, an online retailer, could pursue a trade dress claim based on the defendant’s alleged copying of the “overall look and feel” of the plaintiff’s commercial website.

What Should You Do to Succeed on a Trade Dress Claim?

You must show that your design is unique and has attained secondary meaning. By “secondary meaning” it is clear to a customer that the goods or services being sold are from the same company.
You must describe in words the specific parts of the website that was copied. It is not enough to simply attach a copy of the offending site.
The copying of your website must be intentional.

If you have any questions regarding trade dress, trademark and copyright law as it pertains to websites, contact me at the Law Office of Frederic R. Abramson at 212-233-0666.

Clorox looks to Hire an In-House Social Media Attorney

by Fred Abramson on January 26, 2010

According to AdAge, Clorox is seeking a full-time in-house legal counsel who will focus on social media. Clorox is looking for a lawyer who would help them avoid legal issues, such as when Toyota and its ad agency Saatchi and Saatchi improperly used photographs without permission in a social media campaign.

Of course, they could avoid hiring an in house attorney by retaining my law office, but that is their problem.

Here is the job description as per the Clorox website:

Position Summary:

Reporting to the Associate General Counsel, Regulatory, this Corporate Counsel position will (i) provide legal counsel to the Company’s Marketing group for the clearance and procurement of intellectual property rights relating to production and distribution of advertising, including copyright, music and video licensing, talent rights, privacy rights, and SAG and AFTRA issues, among other things; (ii) draft and negotiate marketing-related agreements for all business units, including celebrity talent contracts, promotional agreements, agency agreements and media buying agreements; (iii) provide counsel relating to consumer privacy issues; and provide legal support in other areas as needed.
Key Responsibilities:

Provide legal counsel to business partners on managing and securing advertising content, especially as it relates to social media and other Web 2.0 executions, TV and radio, including copyright, unfair competition, rights of privacy and publicity, music and video licensing, use of stock photography and stock footage and other intellectual property and rights management issues.

Provide legal counsel to business partners on matters involving the complex provisions and implications of the Screen Actors Guild, the American Federation of Television and Radio Artists, the American Federation of Music, ACTRA (National Commercial Agreement/Canada) and other advertising and entertainment industry collective bargaining agreements.

Draft and negotiate a wide variety of marketing-related agreements, including agency/client agreements, media buying agreements, celebrity talent contracts, music licenses, commercial production agreements and other agreements relating to the advertising, marketing and promotions across various multi-media platforms.

Develop and maintain internal processes with marketing communications team to ensure timely delivery of content and compliance with relevant laws and regulations.

Provide legal counsel regarding consumer privacy laws and issues, including those arising from collection and maintenance of personally identifiable information.

Develop and conduct legal training for business partners in areas of expertise.

Partner with assigned businesses and/or functions to help with business strategies, goals and operations and process improvements.

Provide coaching and mentoring to other attorneys and paralegals in the department in areas of expertise. Advise on other legal matters, as designated by manager.

Work with Legal Services leadership, other attorneys and staff on departmental administrative matters.

Minimum Requirements:
Years and Type of Experience:

4-7 years of experience as a practicing attorney; required experience and knowledge of marketing and advertising law, specifically with respect to negotiating, securing and clearing intellectual property rights for advertising (including all forms of social media) and counseling on talent rights matters. Both outside and in-house experience in these areas is preferred.

Experience in consumer privacy laws issues preferred.

Skills and Abilities:

Ability to work independently on legal matters for assigned substantive areas with the oversight of more senior attorneys.

Broad range of relevant legal experience, the ability to identify prioritize and resolve critical legal issues in real time.

Ability to identify and use the most efficient and effective legal resources to complete the work in a timely and cost effective manner.

Unquestioned personal integrity; seen as a role model for ethical principles and values of the Company and practices required by law.

Excellent interpersonal and communication skills.

Ability to work well in a matrixed organization and interact with and command respect from Company employees.

Excellent judgment, communication and listening skills.

Ability to handle sensitive and confidential information.

Excellent execution and organizational skills and attention to detail.

Urgency and results focus to ensure timely and appropriate response to issues raised.

Firmness and courage to confront issues at every level.

Strong skills in leadership – the ability to drive and lead while working with legal and technical staffs.

Strong ability to influence, provide points of views, and to listen.

Strong decision making and problem solving skills.

Some travel may be required

What can Companies do to Protect their IP and Data from a Google-like Cyber Attack?

by Fred Abramson on January 21, 2010 · 1 comment

Protecting intellectual property from a cyber attack is something that all companies need to be concerned about. Google recently released information about a targeted attack on their intellectual property and data that occurred in December, 2009. The attack came from China and according to Google, resulted in the “theft of intellectual property from Google.” Apparently they were not the only company that was under a cyber attacks. At least 20 other corporations were hit, including a law firm that was suing China.

Google explained the cyber attack as follows:

The route attackers used was malicious software used to infect personal computers. Any computer connected to the Internet can fall victim to such attacks.

E-mails were targeted at individuals in each company that were made to appear as that they were coming from other people at each company. They attempted to get their target to click on a link or attachment.

Potential Legal Consequences of a Breach

If your company has been subject to a cyber attack and data has been breached, your company may be subject to litigation. There have been an increase in the number of lawsuits commenced by customers and clients whose data have been compromised. For example, there is currently a lawsuit in Pennsylvania against Heartland Payment Systems, which claims that the company waited to tell consumers about a data breach and failed to protect sensitive information.

Businesses also need to be aware of compliance laws such as Sarbanes Oxley when they lose the personal information of their customers.

Potential Legal Consequences of an Intellectual Property Breach

Cyber Attacks, like the one inflicted against Google, often attempt to steal Intellectual Property. Trademarks, patents, copyrights and trade secrets, are big targets for cyber criminals.

What companies from selected industries can do to protect their data

High-tech: Need to protect source code and engineering design documents.
Banks and Financial Companies: Confidential customer information.
Pharma and Bio-Tech: Trade secrets such as research and the manufacturing of drugs.

If you have any questions or if you wish to discuss this issue further, please don’t hesitate to contact me at The Law Office of Frederic R. Abramson at 212-233-0666.

Free NY Website Development Agreement

by Fred Abramson on October 19, 2009 · 2 comments

Developing websites and other multimedia products is unique. Even though it is similar to movie production and software development, there are certain issues that must be addressed in a Development Agreement.

Below is a checklist to guide you on the important matters that need to be address prior to entering into a Development Agreement:

Who are the parties?
Have all the details regarding what is being developed been agreed to?
When is delivery of the materials scheduled?
Is there any intellectual property issues that need to be addressed, such as licensing?
How is payment to made? At the end of the project or when certain milestones are reached?
Who will own the intellectual property?
Will the developer be involved in maintaining the work? If so, at what price?

Here is a free web Development Agreement you can use for your business.
Multimedia Development Contract Template

Legal Reasons Why Your Company Should Have a Social Networking Policy

June 3, 2009

Your employees are probably participating in social networking sites such as Facebook, LinkedIn and Twitter. But what are your workers doing on Facebook while on the clock? Are they networking or are they sharing their 5 favorite beers? On the one hand, you want to trust your employees and make them feel like they have […]

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