In receiving questions from clients and others, some incorrectly believe that the new first-to-file provisions of the recently passed patent legislation mean that the first party to file a patent application unconditionally has lawful rights in the patent application, even where a second party misappropriates or derives the intellectual party from the first party. This is incorrect.
Ten Common Concerns with Expanding Business to the United States
Website Terms of Service and Privacy Policies – More Than Law
Some companies simply copy and paste the terms of service and privacy policies. This can be a costly mistake. The terms of service (“TOS”) and privacy policies (“PP”) should reflect the combination of legal, business, marketing, and ethical concerns of the company. Facebook has received a lot of criticism of its privacy policies over the years, ranging from the tracking beacon to the more recent outcry over granting Facebook application developers access to its user’s telephone number and address information. Even though Facebook’s action were likely permissible within its TOS and PP, the public outcry lead to a reversal of its policy, highlighting the extra-legal importance of the documents. [Edit: Facebook has resumed the policy.]
Legal
Part of the lack of attention to the TOS and PP is that they are, in fact, legal documents… so the website developers’ eyes glaze over reading the legalese (snooze). But because they are legal documents that can bind the company and the website visitor, proper attention should be paid to the documents. In hurriedly copying the documents from elsewhere, a meaningful TOS and PP for an opinion blog, a product website, an adult services website, a B2B cloud service, a server penetration business, etc. may not be implemented. Each type of business has its unique legal issues that should be addressed. All the terms from one set of documents may not be intended, useful, and/or enforceable in different business use cases.
Business
As a binding document, the TOS and PP can positively and negatively affect the direction of the business, including the monetization strategy. Facebook started with its users segmented in different silos, namely their schools. Originally, one needed a .edu email address in order to join and communication was generally limited to other people having emails with the same domain name. More recently, Facebook’s growth strategy is almost the opposite of that original strategy. It now encourages everyone to join and create relationships that did not previously exist. An inflexible TOS and PP may not have permitted that strategic change in direction.
Contrast that business scenario with the PP policy of the former eToys.com website. It read in part:
eToys respects your privacy. We do not sell, rent, loan or transfer any personal information regarding our customers or their kids to any unrelated third parties. Any information you give us about yourself or your kids is held with the utmost care and security and will not be used in ways to which you have not consented.
At a quick glance, that seems a respectable policy. However, the company went bankrupt. As the customer data was one of the valuable remaining assets in the bankruptcy estate, there was a dispute over the sale of the eToy.com customer list. In other words, the documents affected the ability of investors, creditors, and successors to recover value.
The potential reach of the documents as a whole (as well as the language of the above section) is further highlighted by the recent purchase of the free to use OkCupid.com dating website by the paid use Match.com website. If OkCupid had a privacy policy of similar to that of the above quoted eToy privacy policy, there may be questions whether Match.com is an “unrelated third party,” impacting any possible integration plans. In addition to the legal question, there would be a business valuation question for OkCupid and Match if OkCupid had been marketed with a strong privacy expection. OkCupid users may then leave in droves, decreasing the potential value of OKCupid to Match.com.
Marketing
It may seem counterintuitive, but the TOS and PP can support (or detract from) your marketing efforts. Currently, the industry trend is to move to the cloud. However, two key reasons why businesses are hesitant to move to the cloud are downtime and data access/use concerns. A cloud service provider of B2B applications where users enter valuable, sensitive business data has a more compelling message when it can state that the privacy policy explicitly states that business data will only be used for the purpose of the application and will not be processed individually or in the aggregate for marketing purposes.
Ethics
Again, it may seem counterintuitive that the TOS and PP dating can indicate the culture of a company, but podcast and technology guru Leo Laporte deactivated his Facebook account citing poor privacy control for a user account and stating that Facebook had incentive to not provide strong privacy (Note: he has since recreated a Facebook account). Yours truly only maintains test accounts on Facebook for similar reasons. In fact, Facebook’s privacy issues lead to startup Diaspora’s raising of ~ $200,000 based on creating a privacy oriented distributed social network. (Edit: And that little project called Google+)
A more pointed illustration of lack of ethics illustrated via the TOS and PP was shown in some now defunct dating websites. Those websites would send messages to male subscribers of the website that appeared to be from interested women. A few jilted men suspected that the messages weren’t from interested women and complained to the website operators suspecting that it was a ruse to entice them to sustain their subscriptions. The website “customer service” pointed those men to the terms of service, which stated that messages may be sent through the system from “likenesses” (read non-existent women) based on those men’s profiles and interests…. Those “unique” terms may be enforceable, but they are still ethically questionable. You can imagine that reputation of the company.
Conclusion
The above illustrations aren’t to endorse one approach over another but they should highlight that even though the terms of service and privacy policy are “contracts,” they should drafted to reflect the legal, business, marketing, and ethical goals of your company. Are your TOS and PP Google’s Terms, StartPage’s Policy, Twitter’s Terms, or your own terms?
Trademark Protection and Control in Technology Matters
Startup IP, Investors, and Nondisclosures
Frequently, in an intellectual property consultation with a startup team, we inventory and discuss the intellectual property involved in the business plan and the timing, cost, and strategy in protecting it. As some intellectual property rights can be impacted or misappropriated upon disclosure, the consultation turns towards upcoming disclosures of the proprietary elements of the business plan. Frequently, the upcoming disclosures includes presentations in front of angels or venture capitalists for funding. In turn, this leads to a discussion of approaches to protect elements of the business plan in light of the upcoming disclosure. Sometimes there is a discussion of nondisclosure agreements, which leads to the fact that the majority of formal investors don’t sign nondisclosure agreements. This can create a problem with the intellectual property rights associated with the business plan. For example, some elements of the business plan may be patentable subject matter. In certain settings, the pitch may be deemed a public disclosure. This would mean that the startup has one year to file a patent application in the United states and has forfeited patent rights in many countries outside the U.S., thus international patent filing protection is limited.
Below are three approaches for considering preservation of intellectual property rights associated with a business plan before pitching to investors:
Common concerns of a startup in disclosing proprietary without a signed NDA include the investor revealing the idea to others, theft of the business plan, and the risk of losing rights in the protectable elements of the business plan. A risk averse approach is to have the suitable intellectual property filings and procedures completed before making any pitches. Intellectual property submissions with a filing date prior to pitching is one of the better approaches to mitigate or minimize the damages associated with those concerns. One scenario where this approach may be useful is a Slanket style business plan. Where the business concept is centered around a product that has limited technological innovation, a catchie brand name, and a strong marketing campaign. The startup team may believe that pitching this without any intellectual property filings may be letting the cat out of the bag and opt for this approach.
A second approach is tiered disclosure of proprietary information. You are typically wasting paper and your breath in presenting a nondisclosure agreement to an investor on a first presentation. The first meeting is typically introductory and there is usually no need to reveal much proprietary information. You should be able to explain the product/service, the problem solved, the target market, financials, and the team credentials without discussing the secret sauce. The investors should then have sufficient information to determine whether they invest in the field of technology, whether they are already invested in a competitor, whether there is potential for return on investment, and whether there is interest in a further conversation. Then during the subsequent conversations, you may provide additional tiers of information. After the first or second presentation you may have a sufficient relationship for a nondisclosure agreement. Almost universally, by the time you are discussing term sheets (and clearly at due diligence) you will have NDAs and have revealed some or all of the proprietary information.
For example, a business plan may be centered around a system for generating and processing medical records using specially formulated inks, printers, and an imager adapted for rapid scanning and 100% accuracy in recognition and processing of the characters. In a first meeting, you might state that you have a system that enables the processing of a 100 bed hospital’s records in thirty minutes. In a later presentation, you might mention the novel ink, printer, and imager. In later presentations or due diligence, you would mention the composition, structure, and process. Be aware that not all investors are open to this approach – Angies’ Angels may be open to this approach while Victor’s Ventures may not. You should know what you are prepared to disclose before each presentation.
A third approach is to risk disclosure. To be sure, you are taking a risk. Investors openly state that they hear many pitches. They also openly state they converse and network with other investors. They also openly state that they provide mentorship to companies. The volume of information from the pitches and that open environment support a reasonable possibility of public or private disclosure of your proprietary information, even inadvertent disclosure. On the other hand, are you dealing with a reputable investor who wants to remain in the business? Are you dealing with someone who has a portfolio built upon others’ business plans? If so, why would they shoot themselves in the foot? Moreover, is the possible funding worth more than the risk of intellectual property disclosure or misappropriation? Could the first mover advantage from the funding outweigh the risk of disclosure?
The approach you choose should fit the intellectual property at issue, the business plan, the investors, and the risk tolerance of the team, among other factors. The above options should help you pitch while considering the preservation of your intellectual property rights.
Governmental Sources for Inventor Prototyping and Manufacturing Assistance
Many small businesses need help with design and development of inventions at various stages. A startup may want a mockup or virtual prototype in order to pitch for funding. Later, the business may need a working prototype for further proof of concept. Then that prototype may need to be further refined for efficient manufacture. Thus a business may need expertise in moving forward from the concept stage to a tangible product. As I have stated before, be extremely cautious in using inventor assistance companies for these services. That being said, there are some governmental entities that are available for free or at reduced cost.
One great resource for the proof of concept, prototype assistance, and working through some of the early stage engineering issues is the Space Alliance Technology Outreach Program (SATOP). SATOP is an alliance of scientists, engineers, and other technical professionals who provide free technical assistance in machine design, process engineering, material selection, and numerous other technologies. Note: SATOP does not work on software or information technology projects. SATOP offers up to 40 hours of hours of free technical assistance, with a goal a providing a solution within three months. A small business submits a request for technical assistance and the program checks its subject matter expertise and availability before accepting the project. SATOP has centers in Florida, New Mexico, New York, and Texas.
There are other similar programs around the country, although their focus, cost, and scope of assistance may vary. Some programs provide only with the original prototype and others focus on specific industries.. Frequently, the programs are associated with a university or a Small Business Development Center. The University of Pittsburgh Manufacturing Assistance Center can assist with a wide range of issues from conception to the manufacturing process. It can help in creating 2D or 3D CAD models, machining, fabrication, and pilot production. The University of Maine College of Engineering also offers a program available to businesses, entrepreneurs, and researchers. The University of Utah will soon open the Energy Innovation Commercialization Center offering services in the clean and renewable energy.
Other than a search engine, great starting points for locating these program are your local Small Business Development Center counselors or counselors at the entrepreneurship or engineering department of your local university. The programs do not typically retain ownership of the intellectual property, thus you would maintain control of the patents and proprietary technology.
Enforcing Intellectual Property Rights in the Startup Phase
Mission critical assets of a startup business can include its unique products and its branding. If either is usurped, the emerging business may not survive for long. Because of that, the small business must consider protecting those assets. A frequent discussion in the analysis of securing formal intellectual property rights is, of course, the value in doing so. Frequently that discussion turns to the ability to enforce those intellectual property right(s) if those rights are infringed upon. Here is where a frequent mistake in valuing those rights is made. Sometimes the business thinks that the value is nominal and not worth the money because enforcing those intellectual property rights means going to court. Going to court can be expensive and out of reach, therefore the registered rights are worthless. The assumption that the only option to enforce the intellectual property rights is by going to court is incorrect. There are three primary options used individually or in combination in enforcing intellectual property violations.
1. Civil litigation
2. Criminal Action
3. Negotiation
Which option or options are chosen should not just be a legal decision. It should be a business decision. In other words, what approach(es) will best help your business? Will filing a patent infringement lawsuit increase revenue? Maybe. Will another person in jail for copyright infringement help your business? Maybe. Can you negotiate with a party who infringed your trademark? Maybe. What problem is being caused by the infringement? What unaddressed issues exist in the business?
First, to use an analogy, most would not think of not documenting their living arrangement, whether that be a rental agreement or a mortgage. And when a dispute about the living arrangement occurs, most people don’t just immediately charge off to the courthouse. Occasionally, I do some pro bono work in this area and this is one of the last recommended options. If a deposit is not returned to a renter, some of the effective solutions might be sending a letter pointing out the terms of the lease relating to the deposit and the penalty for not returning the deposit, blogging about the company that improperly took the deposit, or even possibly accepting the losses. Most people will not end up pursuing a small claims action.
With that being said, take a look at the linked article, discussing the pirating of the upcoming Call of Duty Black Ops game. At this point, the upcoming game is likely protected by copyright, trademark, trade secret, and other forms of intellectual property protection. Analyst Doug Creutz at Cowen Group estimates that Call of Duty Black Ops could sell 10.7 million units in its first year, or $642 million at retail. The game is clearly an important asset of the company.
Well, the game has been leaked prior to its release. The company employed investigators to track the unlawful copies. When the investigators located the infringers, the company had the above options to enforce its IP rights. Activision Blizzard did not charge off to the courthouse and file a civil suit, it didn’t turn the infringers over to law enforecment, and it didn’t put the Guido treatment to the alleged infringers. The game maker integrated legal, financial, marketing strategy into it decision as to how to handle the legal situation. One alleged infringer released a video saying in part “I never said I was going to leak this game… Was I going to give a copy to my friends? Yes…. I wanted to play my game…. The best game I ever played….I wouldn’t have sold the f****** for a million dollars.” Legal issues aside, that’s a pretty strong endorsement of a soon to be released product. (Ed. Note: I’d appreciate such a strong endorsement. Please comment below)
The standard civil and criminal solutions may not be effective in a startup situation. Alternative solutions must be considered. For example, where a trademark infringer is using a domain name unlawfully integrating your registered trademark and impacting necessary revenue, it may be prudent to negotiate immediate control of the domain name. This might be necessary where a small business could not survive until a Uniform Domain Name Resolution Policy proceeding (UDRP) decision or Anticybersquatting Consumer Protection Act (ACPA) based lawsuit could be settled.
What are the chances of the RIAA collecting from Jammie Thomas? Was it evident that collection would be a problem at the time of invesitgating or filing a lawsuit? Would a startup be able to pursue that type of legal strategy? For those reasons, registration of intellectual property with consideration of alternative enforcement strategies should be considered for startup phase businesses.
Four Sources for Possible Patent Licensees or Assignees
Frequently inventors consider licensing or sale of their patent application or issued patent as the means for monetizing their intellectual property. One challenging step is to determine who might be interested in licensing or purchasing the patent rights. Determining potential licensees or assignees is a key step in developing the business plan.
1. Search Engines
This is probably no surprise, but the search strategy needs to differ from the typical internet search. The goal is to locate websites of companies that have licensed patents, news releases announcing licensing of patents, industry analyses of patent transfers, and the like. Be prepared to view more than just the first page of results.
- Vary your search terms – You can start with a narrow search based on the features of the patent. For a fishing lure, the first search might be “patent license floating plastic fishing lure bass”. You can then alter the search to include different features and/or broaden the terms of your search to locate different results. Based on the above search, the next searches might be “patent pending clear plastic fishing lure” or “patented top fishing lures”.
- Vary your search sources – Remember that a lot of the discussion of patent licensing and intellectual property sales is not on the general web. The discussion of companies’ licensing and technology transfers may be part of an article in a business journal. Instead of searching just the “web” option of the search engine, search other segments such as “news”, “finance”, or “directories”.
- Vary your search engine – Even though Google is the preferred search engine for general use, other search engines can aid your search for licensees and assignees. There are industry specific search engines, thus you may look for an automotive electronics focused search engine if the patent application is in that industry (if it makes you feel better, you can search Google for the other search engines). Also there are search engines which group or “cluster” results. Thus a search with terms similar to the above fishing lure on a clustering search engine such as Yippy may present results categorized by “Business”, “Suppliers, Manufacturers”, or other relevant groups.
2. Trade shows
Trade shows are where a lot of suppliers and purchasers come together to buy, sell, introduce, and negotiate new technologies. Vendors, purchasers, sponsors, and suppliers listed on the trade show website may also be interested in acquiring rights to other technologies in the trade.
3. Thomasnet
ThomasNet is a comprehensive listing of more than 600,000 manufacturers, distributors, and services providers in more than 67,000 categories ranging from automotive equipment to chemical coatings. Some business in the relevant industries may actively acquire new technology.
4. United States Patent & Trademark Office
The United States Patent & Trademark Office (USPTO) website lists owners of patents and patent applications. One can search the patents records or search the patent assignments to look for owners of patent rights in the selected technologies. Owners of patent rights in the fields related to the patent may be interested in acquiring rights in related technologies from third parties.
Of course locating prospective licensees or assignees is only an early step in patent licensing or assignment. The inventor should still further research and qualify the company before proceeding. And the inventor should understand the value of a license or assignment of the invention the other party.
Two Advantages of Monitoring Use of Your Trademarks
You’ve probably read about the recent dispute between Best Buy, owner of the “Geek Squad” trademarks, and Father Luke Strand of Holy Family Catholic Church, (former?) owner of a VW Beetle adorned with a “God Squad” logo. One of the ways that Best Buy uses the Geek Squad trademark is in a logo form on VW Beetles. Best Buy became aware of Father Strand’s use and contacted him and requested that he stop using his logo, alleging trademark violations.
After usage or registration of a trademark, startups and small businesses tend to focus solely on building the goodwill associated with the trademark. After all, that is the main point of the trademark, right? Unfortunately, with the rights come some responsibilities. One of those responsibilities should include monitoring the use of the trademark. Monitoring is primarily to detect infringement and detect improper usage of the mark. For emerging businesses, two key advantages of monitoring a trademark’s use include:
1. Decreased potential for infringement, lawsuit, and damages
Early notice of another party’s use of a mark in a confusingly similar manner gives both parties more viable solutions to the problem. The potential for adversity is less, as the potential infringing party has less of a time, money, and emotional investment in use of the mark. For example, tech maven Gina Trapani was in the early stages of working on an application formerly named “Think Tank” when another company alerted her to their prior use. The other company cordially approached her and the “Think Tank” application became the “Think Up” application. According to Gina Trapani (This Week In Google Podcast at 70:15), the situation was amicably resolved. The situation was resolved before two “Think Tank” apps were released to the market, end users were confused, and marketing budgets were spent. Because the second “Think Tank app” had not been released, infringement may not have occurred. And if there was infringement, the damages were minimized.
2. The scope and validity of the trademark is maintained
A trademark can be invalidated by becoming “generic.” A popular example is when the “Aspirin” trademark became generic. Consumers used “Aspirin” to refer to any analgesic and the mark lost its function as a source indicator, thus it was eventually invalidated. In the Geek Squad situation, Best Buy currently has a certain scope of protection in the “Geek Squad” mark. Because Best Buy has spent time and money using the mark, a typical consumer can easily recognize the logo. Father Strand apparently is/was using a similar mark, thus slightly chipping away at Best Buy’s scope of protection. Suppose over the course of several years several other parties start using a similar logo with “Greek Squad,” “Great Squad,” “Geek Pod,” and “Geek God,” text. All of those uses further erode Best Buy’s scope of protection. Then if Best Buy decides to assert infringement claims against later parties, United States trademark law limits the scope of protection of the “Geek Squad” mark. For that reason, it is in Best Buy’s interest to act early. Similarly, monitoring the usage of a mark can alert a trademark holder of improper usage so it can act to prevent the undesired results.
The ways in a trademark may be monitored vary from the free and simple to more costly and thorough. Simple low cost approaches to monitor a might be services such Google Alerts, which monitor the publicly available internet. A more costly, thorough approach can include additional sources such as trademark filings, domain name registrations, industry periodicals, and other sources. This may be done manually or via the services of a trademark attorney or trademark monitoring company.
Myths Regarding Integrating Internet Data Into Applications
Lookin’ for information on a chemical, well there’s a database for that. Looking for barcode information, well there’s a database for that. Lookin’ for a local restaurant, … you get the point. There is a lot of useful published data available on the internet in a convenient format. And there are lot of potential applications out there hoping to make that data even more useful.
In questions/comments after presentations, phone calls, intellectual property inventories, due diligence, and even on the internet (gasp!), I have heard many tales regarding use, reuse, and commercial use of published internet data. Frequently someone asserts that integration of the internet data into an application is a non-issue because it is posted on the internet. Some of the various reasons given include:
- The data was made available for download.
- The data was changed by 10/20/30 per cent.
- The data was posted in XML format.
- The data was semantically marked.
- The data was reformatted.
- The data didn’t have a copyright notice.
- The creator of the data couldn’t be located.
Generally, a content creator has rights in original works as soon as it is saved. And generally these rights include exclusivity in copying the content, distributing the content, and creating derivatives of the content. In other words, if rights vest, the content creator substantially controls the use of the data. For these reasons the blanket statements above are myths.
It may be that the published internet data may not be be eligible for protection or have a very limited scope of protection. It may also be true that the content creator doesn’t care how the data is used or that it may licensed for commercial use. However, just because data is published on the internet, available for download, or accessible in a convenient format does not in and of itself mean that it is available for use in an application. Not only might the possibly impermissible use lead to the failure of your application, it may lead to liability for copyright infringement or violation of the terms of service. Due diligence should be performed before integrating the published data into an application. You should at least analyze whether the data is subject to copyright, whether there is a fair use of that data, whether it is being used in violation of the terms of service, or whether you are knowingly accepting some risk.