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Ounce of Prevention for Business IP Assets Worth Pound of Cure By Chris Brown

April 18, 2018

It may sound exhausting. Your client is focused on starting a new business and of course, they have plenty on their plate. Purchasing equipment and inventory, leasing premises (if not operating from home), arranging sales and/or other business development opportunities, as well as getting the word out on the new business will take every bit of a 24-hour day.

However, the fruits of labor will pay off. Indiana offers an easy online filing system as well as access to many other resources. Organizing a business structure may just be the easiest step.

Your client needs strategies and concepts regarding the intellectual property assets encompassed in the new business even before the articles of incorporation are filed. Many pieces may already have been created and others will be developed as the business grows. Remember, as with any other task, an ounce of prevention in the form of planning for intellectual property is worth at least a pound of cure, especially when the client is engaged with the day-to-day efforts of running the business.

Trademarks and Trade Names

Clients may not understand that adopting a company or corporation name (even one not used as a brand) can result in unfair competition claims under the federal Lanham Act (e.g. 35 U.S.C.§ 1125) or state law.

I’ve seen clients that have incorrectly assumed that registration of their company name is without consequence. I’ve also experienced that similar misconceptions arise with domain names. Most states, Indiana included, do not have a process to evaluate the likelihood of consumer confusion among corporate names. If Indiana does not find a match with an existing corporate name, it will usually go ahead and register the name. The same goes with domain names. If a registrar does not find a match with an existing domain name, the registration will proceed. Only later may the client discover that there is a non-identical, yet potentially confusing domain name, corporate name or trademark that has already been registered by another entity.

Indiana has a searchable database of registered business names: https://bsd.sos.in.gov/publicbusinesssearch. Once your client has decided upon a company name, guide them to take the simple step of searching the Indiana database to review any similar names and the business they conduct. Note that this review is not comprehensive. However, it can be utilized to locate and avoid specific pitfalls. Your client can also arrange for more in-depth searches. Again, before the corporate articles are filed, a basic, quick search is highly recommended.

Trade Secrets

If the client has no employees, trade secret issues may be minimal. The new businessperson always needs to be aware of what business information is valuable and safeguard that information. The easiest step is to keep such information locked away when not in use, whether digitally (separate server or drive) or physically.

When employees, investors, or corporate officers come into the picture, the small-business person needs to consider who needs access to valuable information and how to compartmentalize it. A good practice is to get written agreements from employees and others involved with the business that include clauses requiring them to use such information for the business, and not for themselves. Also, keep a log of people admitted to nonpublic areas of the business’ premises, and have them sign a short agreement not to divulge what they observe or learn.

Patents

Not all new businesses will include an inventive product, method, or device as part of its plan. However, a new businessperson needs to know that the clock starts ticking on applying for a patent in the United States when an invention is “ready for patenting” and non-confidentially disclosed or otherwise made public. Once that happens, the client has one year from such publication to file a U.S. application. Accordingly, as a new business is formed, Quick decisions concerning a patent search or application and secrecy agreements (preferably written) with investors, employees or others may be needed.

Copyrights

Copyright automatically exists in an “original work of authorship” as soon as it is “fixed in a tangible medium of expression.” A copyright is initially owned by the author unless (1) assigned by the author, or (2) a “work made for hire,” i.e. made by an employee in the scope of employment.

When others are the authors, the new businessperson must be aware that he or she may not own, and may even have limited rights to, materials created for the business. Web designers, for example, may retain ownership of copyright, and while the new business may use material created by the web designer, the businessperson may have limited ability to alter or add to the material. The new business needs to be aware of, or negotiate away, any such limitations.

The number of people who assume that material on the internet or posted on social media is free for anyone’s use is remarkable. Informational sites frequently allow a license to use material for noncommercial or educational purposes. However, know that the new businessperson (your client) needs to investigate and observe such licenses, where they exist. Fair uses are permitted by statute (17 USC 107), but are generally not associated with commercial use of copyrighted material. It is vital for a new businessperson to remember that photographs, text or other online material are rarely free for the taking.

Winding it Down

As with life in general, whether a business is large or small, it does not last forever. Intangible property should be treated with as much care as tangible property. Hoosiers may remember when the Roselyn Bakery chain ceased operation, but the trademarks and associated goodwill were valuable assets that continued in use.

Intellectual property can pass by assignment or by operation of law. In a bankruptcy, patents, copyrights, trademarks (with associated goodwill) and trade secrets may be sold or assigned for the benefit of creditors. In the winding up of a corporation or limited liability company, intellectual property must be considered in the disposition of all property. While it may seem that there need be little or no concern for intellectual property in a soon-to-be defunct small business, potentially valuable rights are at least in ownership limbo and may be lost if provision for them is not made in the winding down.

In a noncorporate business, where any intellectual property owned by the “business” is in fact owned by the individual proprietor, winding down the business may have little effect on the property of the business — it remains owned by the proprietor. However, in such cases any intellectual property — which can include copyright in personal and business papers — transfers on the death of the owner occur according to a residuary clause in his or her will, or according to the applicable law of interstate succession.

To view the article in The Indiana Lawyer click here.


Inventor Michael Duff Featured in STRINGS Magazine

April 3, 2018

Michael Duff is a world class craftsman behind some of the world’s greatest violinists and stringed musicians. Duff was recently awarded a U.S. Patent for innovating a new bow, including a novel frog part of the bow.

Stringed musical instruments such as the violin, viola, cello and stringed bass use bows to create classic and timeless music. Duff is the proprietor of Berg Bows® International in Bloomington, Indiana in 1985. https://www.bergbows.com/ As a former faculty member of Indiana University’s Department of Microbiology, he utilizes his scientifically trained mind and prides himself in being involved in the handcrafting of each and every bow.

Innovating New Bow

Michael enlisted the assistance of Dan Lueders of Woodard Emhardt Moriarty McNett & Henry. In November 2017, Berg Bows International received a patent (U.S. 9,830,892 B1) for all violin, viola and cello bows with Berg “Sound Stick” Technology. His inventive bow was featured in Strings magazine.

For more information, please refer to http://stringsmagazine.com/bow-maker-michael-duffs-new-line-includes-hybrid-materials/


Indiana Super Lawyers Honors Four Woodard, Emhardt, Moriarty, McNett & Henry LLP Partners

February 21, 2018

Four partners from Woodard, Emhardt, Moriarty, McNett & Henry LLP have been named to the 2018 Indiana Super Lawyers and Rising Stars lists.

The following attorneys were included on the Super Lawyers list:
• Thomas Q. Henry – Intellectual Property
• Spiro Bereveskos – Intellectual Property Litigation
• Daniel J. Lueders – Intellectual Property Litigation

The following attorney was named to the Rising Stars list:
• William A. McKenna – Intellectual Property Litigation

Super Lawyers is an annual rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement. The patented selection process includes independent research, statewide nominations and peer evaluations. Only the top 5 percent of Indiana’s attorneys are selected among the state’s most elite. All honorees are listed on the Super Lawyers website at www.superlawyers.com.

The “Rising Stars” designation honors leading attorneys who are 40 years or younger or have been practicing for 10 years or less.


Woodard, Emhardt, Moriarty, McNett & Henry LLP Promotes Two to Partnership

January 3, 2018

Woodard, Emhardt, Moriarty, McNett & Henry LLP is proud to announce that Jeremy Gustrowsky and Michael Morris have been named to the firm’s partnership, which was effective January 1, 2018.

Jeremy Gustrowsky focuses on all areas of intellectual property. He assists clients with a wide variety of needs to plan and execute strategies for protecting their ideas and branding their products and services. He has significant experience in preparing and prosecuting patent applications in the U.S. and abroad for a broad range of products. He also assists in litigation and dispute resolution matters.
He is a graduate of Indiana University Robert H. McKinney School of Law (J.D., 2010) and University of North Carolina at Asheville (B.S., 1999)

Michael Morris practices in all areas of intellectual property, including providing services for identifying, procuring, and enforcing intellectual property rights. In particular, he has significant experience in preparing and prosecuting medical device and mechanical patent applications in the U.S. and abroad; providing freedom-to-operate, infringement/non-infringement, invalidity/validity opinions and monitoring competitor IP.
He is a graduate of Indiana University Maurer School of Law (J.D., 2011) and Rose-Hulman Institute of Technology (B.S., 2008)


Matthew Gardlik Admitted To ISBA Leadership Development Academy

December 13, 2017

The Indiana State Bar Association (ISBA) today announced the Class of 2018 of its Leadership Development Academy, now entering its seventh year. The lawyers are accomplished legal practitioners who have been admitted to practice for less than 15 years. The Academy is a statewide leadership program established to empower and develop lawyers to be informed, committed and involved so that they may fill significant leadership roles in local and state bar associations, local communities and organizations and to serve as role models in matters of ethics and professionalism.
 
The 25 members will participate in five sessions featuring professional facilitators and prominent speakers from various disciplines to inform participants about leadership principles and techniques, the importance of effective leaders in organizations to maximize efficiency and effectiveness, and the challenges and rewards of leadership in action. The press release is located here.
 


Woodard Emhardt Attorneys Recognized by 2017 Indiana Super Lawyers

February 22, 2017

We are pleased to announce that Woodard, Emhardt partners Thomas Henry, Spiro Bereveskos and Daniel Lueders have been named Super Lawyers for 2017. Additionally, Woodard, Emhardt partner Bill McKenna has been named as a Rising Star for 2017. Congratulations to all!


Chuck Schmal Serving on the Indianapolis Bar Association Board of Directors

January 18, 2017

Woodard, Emhardt partner Chuck Schmal was sworn in today, January 18th, as a member of the Indianapolis Bar Association Board of Directors. He will be serving throughout 2017 as a Vice President working together with other dedicated members of the IndyBar leadership to strengthen the Indianapolis legal community and expand its positive impact in the community. Congratulations Chuck!


Woodard, Emhardt Hosting E-Day for Ball State’s Entrepreneurship Program

April 12, 2016

Woodard, Emhardt is hosting “E-Day” (Evaluation Day) for Ball State University’s Entrepreneurship Center on April 12, 2016. During E-Day, seniors majoring in entrepreneurship present their business plans to a panel of judges who decide whether a student passes or fails out of the program. The pool of judges includes business people, attorneys, and members of Indiana’s venture capital and entrepreneurship communities. Woodard, Emhardt wishes good luck to all of the participating students!


Woodard Attorneys Selected IP Stars for 2016

March 31, 2016

Woodard Emhardt Moriarty McNett & Henry LLP is pleased to announce that partners Spiro Bereveskos, Daniel J. Lueders, and Charles P. Schmal have been selected to appear in the 2016 edition of IP Stars from Managing Intellectual Property (MIP) magazine. IP Stars identifies and analyzes the leading IP firms and attorneys in all 50 US states and Washington DC to provide deeper insights to the complex US IP legal market for in-house counsel at Fortune 500 companies. Professionals selected for IP Stars are highly-regarded by their peers for the work they do both in and outside their organizations.


Indiana Super Lawyers

February 22, 2016

Congratulations to Woodard, Emhardt partners Spiro Bereveskos, Thomas Henry, and Daniel Lueders for being named Super Lawyers in The Super Lawyers Magazine, Indiana / 2016.

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