Intellectual Property Attorneys for Disputes and Infringement Actions
Intellectual property (or “IP”) is an important aspect of any business, and there are many aspects to IP law. Aside from formation or registering IP, you also need to protect IP. IP protection means either you are attempting to prevent another company from using your IP, or it could mean another company is trying to prevent you from using their IP.
In other words, aside from protecting your IP, you can find yourself in a legal dispute with another business regarding IP, even if you had no idea or intent to steal or use someone else’s IP. This can come in a number of forms:
- Trademark Infringement
- Copyright Infringement
- Patent Infringement
- Theft of Trade Secret Information
Depending on the issues and circumstances, an infringement action could involve statutory damages, attorneys fees, injunction, actual damages, lost profits and more. As a consequence, allegations of infringement must be taken very seriously.
What is Trademark Infringement?
Trademark law consists of “common law” for unregistered marks at the state level, as well as state trademark law for state-registered trademarks, and finally federal trademark law for all marks properly registered with the United States Patent and Trademark Office (or USPTO). Federally registered trademarks have precent over all other marks in the United States, although there can be exceptions on a limited, local basis for marks with an earlier “first use in commerce” date.
Trademark infringement occurs when one uses an identification mark that creates a “likelihood of confusion” with a pre-existing trademark. Many business leaders get confused with a “likelihood of confusion,” because when businesses first name their company, they may look for an “exact match” but rarely look for “confusingly similar” marks.
A “likelihood of confusion” is a multipart test that examines the strength of the first mark, similarities of the marks (in look, sound and meaning), the sophistication of the likely consumers, similarity of trade channels, how similar the products or services are, evidence of actual confusion, intent of the infringer, and more.
The mark that is used first in commerce is presumed to have priority over later marks, although a later mark that obtains a trademark first could (after time) have an “incontestable mark” that will win over earlier marks.
If you have a trademark, it is imperative that you monitor and police your mark. If other businesses use your mark, and you do not prevent such use, you could eventually lose your trademark rights. If you are using the trademark of another business, and that businesses has preemptive rights, you could subject your business to damages, attorneys fees, lost profits and more.
What is Copyright Infringement?
All expressions are owned by their authors, such as a photograph taken by a photographer, a drawing or painting of a logo created by an artist, and ad copy or other content created by a author. Similarly, a videographer will own the video produced.
There are two primary circumstances that seem to trip up many business leaders: First, a business leader will hire a contractor to produce some sort of work product, whether a logo, website, software or other work product for the business. Without the proper contract, that contractor will own the copyrights of the work product produced. This is where it’s important to have a contractor agreement to ensure the copyrights of any work product produced will be owned by the company. If you don’t do this, certain use of the work product could generate a copyright infringement claim by the contractor or anyone the contractor may have sold such copyrights to.
Second, if you take a photo of someone else’s work, do you own the copyright of that work? The answer is no. Same question of a video, that includes a background song from Taylor Swift and pictures of a performance? Again, the answer is no. Many businesses fall victim to illegal or improper incorporation of other copyrighted material into their work product, such as:
- A web developer copies images off the Internet for use on your website.
- A contractor improperly uses open source software in your company’s software application.
- An employee creates a video that incorporates the copyrights of others, including images, other video, performances, music, lyrics, or background vocals.
- A band improperly incorporates background cords or vocals into their performance.
- And much more.
A copyright infringement claim, if made against a properly registered copyright, can involve statutory damages (up to $150,000 per infringing use, if deemed willful), attorneys fees, lost profits and more. There are many defenses and possible ways to avoid liability, depending on the circumstances.
If you are an author, and believe your copyrighted material has been stolen or misappropriated without your permission; or you are a business being accused of illegal use of copyrighted material, call the lawyers at Business Law Southwest, LLC to better understand your rights and next steps.
What is Theft of Trade Secret Information?
Trade secret information means any information, such as a list, formula, pattern, method, recipe, or process that (1) derives economic value by not being generally known and reasonably attainable by proper means, and (2) is the subject of “reasonable efforts” to maintain its secrecy.
Trade secrets are regulated at both a state level and at a federal level. In New Mexico, the New Mexico Uniform Trade Secrets Act regulates trade secrets. Specifically, the act permits damages and injunctive relief, as well as special damages (i.e. attorneys fees and up to twice actual damages) in instances of willful and malicious misappropriation.
Theft of trade secrets occurs when another party, through “improper means” misappropriates the trade secret information of another. “Improper means” involves some sort of wrong-doing, such as theft, bribery, misrepresentation, breach or inducement of a breach of duty, etc. Such a cause of action can be maintained not just by the one who “took” the trade secret information, but by the other party or parties who “used” the trade secret information.
There is also a federal act called the Defend Trade Secrets Act (DTSA) of 2016, that provides additional remedies in certain circumstances.
As a business owner, it’s important to take “reasonable precautions” to maintain the secrecy of your trade secret information, and it’s important to protect your trade secret information if you become aware of its misappropriation. Otherwise, failing to protect your trade secret information can mean you lose rights to protect such information.
The attorneys at Business Law Southwest, LLC are experienced IP attorneys and dispute resolution attorneys, and have the background to help you navigate around difficult disputes involving intellectual property.
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