Your Iconic Image : Protecting Your Intellectual Property

Randi Karpinia - Sagacity Legal PLLC

Randi Karpinia, CEO of Sagacity Legal, transforms entrepreneur’s ideas and inventions into intellectual property assets that can lead to huge profits.  With over twenty years of legal experience, Ms. Karpinia is a recognized expert in all aspects of business legal management with a focus on intellectual property rights and management.  At Sagacity Legal, she guides her clients through the legal risks they’ll face now and in the future, so they can focus their time and efforts on the value, expertise, and experience they bring to their business.

https://sagacitylegal.com/

https://www.linkedin.com/in/randikarpinia

https://www.youtube.com/c/AttorneyRandiKarpinia

https://www.facebook.com/sagacitylegal

Whether just starting out or an established business, I can help turn your ideas and inventions into profits.  I offer a free IP consultation which can be scheduled directly at https://bit.ly/MeetWithRandi

www.marlanasemenza.com

Audio : Ariza Music Productions

Transcription : Vision In Word

Marlana  

Randy Karpinia transforms entrepreneurs’ ideas inventions into intellectual property assets that can lead to huge profits. With over 20 years of legal experience, she is a recognized expert in all aspects of business legal management, with a focus on intellectual property rights and management. Welcome, Randy.

Randi  

Thank you for having me.

Marlana  

So first let's just ask, what is intellectual property?

Randi 

That's a great question. And for many people it sounds very legal, right? Like, oh, that's not for me. But intellectual property is your intangible assets as a business owner. So, the easy answer is there's kind of four categories patents for inventions, copyrights for content literary, trademarks for brands and trade secrets for the things you just want to keep to yourself. And many business owners are so busy, which is, you know, working on the market, they're developing those things. They're developing their brand, they're developing their content, even developing patentable ideas, and they just don't realize because intellectual property sounds something for big corporations, but in reality, it's something that should be in all of our business plans.

Marlana  

So, the last one was interesting to me that it can be trade secrets .

Randi 

yes. Good one that as lawyers like to use all the time,

Marlana  

sorry. But

Randi 

of course, that happens in a podcast. The one everyone always likes to use as an example, because we all know it is the Coca Cola formula. Okay, Coca Cola has been around forever. That company, as many I don't know, 1000s, hundreds of 1000s of employees it's had over the years, has managed to keep the actual formula, a trade secret. So, they never protected. They protected it using a trade secret. And the way you do that is legally very, very detailed. You know, it's almost like putting a safe in and locking it up. There are some very important procedures that need to be put in place. But sometimes that is the right thing to do.

Marlana  

Interesting. So, let's say an Emeril Lagasse, who has his spice blends or something like that, can that also fall into that category?

Randi 

Absolutely! Because you can't patent recipes, almost impossible. So, you can copyright them, but people can change one thing, and it's done. So yeah. But what's important is, if he's giving each say head chef, in each restaurant the formula, it's no longer a trade secret. So, there would have to be processes like I don't want to miss the, for example, I believe I've researched like Coca Cola, so this would be the kind of things he would have to do. No one would have the full recipe.

Marlana  

Got it! So, he could provide them, let's say with the spice blend in a container, not the recipe.

Randi 

Yeah. This very few needs to know

Marlana  

So, at what point? Does something become not a trade secret? How many people would have to know?

Randi 

That's the hard part I actually don't recommend. I know, we've gotten off talking about trade secrets, I don't normally recommend. It's an interesting area because the law is pages and pages, and then there's federal trade secret laws. There's a trade secret laws; each country is different. Oh, well, most entrepreneurs, smaller businesses, big corporations can do it. But most smaller businesses wouldn't have. It would be very difficult and time consuming to really keep it a trade secret. And if someone copied it, and then they want to enforce it gets more difficult, right? Whereas if you have a trademark on your brand, if you have a copyright on your content, a patent on your invention, you take that piece of paper and say you're infringing.

Marlana  

So now that you brought up copyrights, let's talk about those, because it's something that as a photographer I'm familiar with. I was always under the impression that once something is created, it is copyrighted. Is that the case? What does register it with the copyright office gain us?

Randi 

Absolutely! And as a photographer, I've seen your work. Some of your work ensure that this is something you have all the processes, and you work with all the time. So, you are absolutely right. And many people don't know that, so, I'm glad you said that copyright law, unlike any other intellectual property ownership occurs for the originator immediately upon creation. So, if you take a photo unless you're doing a work for hire, and I won't go into all that, but if you are taking a photo, or if somebody is creating a business, or let's say a training course, a lot of people are doing training courses, now that material is automatically copied, the copyright is owned by the originator. The problem is to enforce. 

So, it's great, I own the copyright. When this video is finished with podcasts, you own the copyright to it, that's great. But if you don't want somebody to copy it, or you want to enforce, you need to register. So, what does that mean? Okay, maybe I don't register the copyright, because I have so much content, but now somebody's copying me, and they've made it and it's blatant. And I'm willing to put in the financials to stop them, I want to put a stop to it, then you need to register. Now, where the benefit of registering early versus when you find out about an infringement, which was your question. If you are registered, and somebody copies, there are statutory damages. Each and every instance of the copying, plus attorney’s fees, legal fees. If they haven't been copying, and you hadn't registered, and then you go after them, you've filed the registration and then you sue them or you demand, you have to prove actual damages, you have to prove that 10 customers that would have paid you $1,000 Each, whatever it is for that content went to the other person it very, very difficult to prove actual damages. And then you don't get lawyers’ fees, attorney fees either.

Marlana  

Okay, so let's say with a photograph, I can produce a raw file or something like that, to kind of prove that I created it in the first place. But let's say you have a song, or you have, you know, like you said a training course, maybe it's easier with a training course. How do you prove that you are the originator with some of these other contents?

Randi 

There's no proof needed unless we start talking litigation. Okay, so when you register, and this goes for copyrights, trademarks, patents, you basically raise your hand or your attorney, if they're filing for you and say, I swear that I am the owner, there are no other claimants and copyright terms they can claimants. So, you're telling the government that you are being truthful. Now, what happens is there are laws, and if you commit fraud on one of these offices, it can be as much as jail time. You know, the penalties are pretty high. So, it's sort of like when you get on the stand and you see on TV, they get on the stand, they raise their hand and say, Yes, I'll tell the truth. That's exactly what you're doing. When you're registering your copyright trademark patent. You're telling the government that yes; I am it and they trust you. Until someone says differently.

Marlana  

I was just going to say what if somebody else comes along? Like let's say, I use a song because it seems that in the recesses of my brain this has occurred, where somebody says, I created this piece of music or the song and somebody else comes along and says no, that's mine. So how does one prove that or how does that become litigation?

Randi 

It's very expensive. Once again, we're talking about copyrights. The just to move, keep paralleling the other since the questions are great. In the trademark world, the trademark office actually during the process of registering a trademark has a period of time called the opposition period. It's a 30-day period when the trademark has been allowed, the examiner says, Yeah, I'm gonna give you this trademark. And anybody can file what's called an opposition, I always tell my clients, it's a baby litigation, because it happens in the Trademark Trial and Appeal Board, where someone can say this, if you get that registration, it's gonna hurt me because either one, I have something similar or two I've been using, and I just didn't register it. And it happens all the time. 

Even that, you know, I've said litigation is hundreds of 1000s of dollars, even TTAD proceedings, if they go there, they're definitely like a bit VB litigation, and they can, you know, run anywhere from if you sell 25,000 up to so the cost just really skyrockets. So, you're, you know, the, it's in your best interest to only register what's yours. Unfortunately, there's many people out there both valid lees, like someone may have just happened to come up with a similar song, you know, maybe not exactly the same, the tune kind of sounds the same. Or, you know, a brand name very likely someone in California, someone New York could come up with the same name and be using it. So, it's something that you'd have to look at, as and I'll call it an IP owner on both sides, protect yourself, have the proof of when you created it, and always have the proof somewhere, you know, and then just make sure that what you're using, you're not copying. And that happens a lot. I have a lot of clients who come to me and say, I've developed this content. And oh, my gosh, I'll just make it up. Tony Robbins has this great, you know, thing that he says, and I can't say it any better, and I'm gonna use it and I can't be creative. I always say try to use your own. Because it's the other side. We're trying to protect what we do. But we also want to keep from, you know, getting a demand letter being sued for infringement ourselves.

Marlana  

So, let's say we go to trademark something, and you said that there's a period where somebody can come forward and say that, no, I've been using that or whatever. Let's say I want to register a trademark. But you've been using something, how would you know that I've tried to trademark it?

Randi 

So, there's something called a clearance, and I don't want to be mean, but it's a little bit interesting. I won't say funny, but it's interesting for me when say a new business owner or someone has just developed a new program. When you come up with a name or a brand, it's really emotional, means something to you. My firm name suggests the legal, means something to me. And when I do a clearance, if the business owner isn't yet using it, and they come to me ahead of time, I always recommend a clearance and you know, we can do a short one, or we could do very worldwide. I'm doing one right now worldwide for a client to try to find out what is the chance of getting that registration. And there are times where I say to the business owner? Yeah, I don't think you should use it because of this or because of multiple, and it's hard for them, because then they have to go back and think of something else. It happens all the time, but before you get out there. A lot of people come to me for trademark after they're getting big, right? Oh, now I see this, I need to protect this. The problem then is if there is somebody out there, they could have to rebrand late, and we could all rebrand, but it's better upfront.

Marlana  

So, what's the difference between a trademark and copyright?

Randi 

Yeah, people get that confused a lot. I get people coming, I have this name, I want to copyright it. No, you want to trademark it. So, let's go through the three. Trademarks are for names, phrases, logos, they are things that identify your brand. So, if you have, say a phrase that you just happen to use in your messaging, but it's not branded, it's just something you say that would not be trademarked. But if you have that same phrase, and it's at the top of your website, and it's the name of your courses and you use it in a very distinct branding way and you of course know all about branding that would be a trademark. So just having a name, phrase or logo isn't enough, it has to be identifying your brand. Okay? Copyright is for anything in a tangible medium. So, it used to be with a book, we'd say written materials. Well, now it's video, audio, you know, all anything in a tangible medium, you can do. Now, the key with copyright is, you're, you're protecting exactly what you call it deposit. So, there's different names in the trademark of it's a specimen. In the Copyright Office, the deposit, it's really just to prove in the case of the copyright, so if you like, say you use pretend this was a training video, and you said, Randy, can we copyright it? And a year from now, you make some changes, have to copyright it again? So, the registration is specific to exactly what you do. Right?

Marlana  

I know, even with images when I have registered them with the copyright office, it has to be that exact title. And, you know, yeah, there can be no variation.

Randi 

So yeah, you have that experience. Copyrights are easier to register, in that there's not this major examination to see if there's something out there confusingly similar. That's what the trademark office would use, the patent office would use. There’s a lot more examination to trademarks and patents. But the value of a copyright is the exact thing that you deposit. Okay. And so, then what's a patent? So, a patent is, is there's two kinds of patents. One, let's kind of flow in from trademarks. And copyrights are called a design patent that is for an ornamental look and feel of a product. Now I say a product, but graphic user interfaces go in their icons. So that's where it overlaps with trademarks, right? You could trademark an icon as a brand. But you could also change trademark, a graphic user interfaces or design. So that's one kind of pattern that, again, they all kind of overlap a little bit. The patterns we're used to talking about are what to call utility patents. And these are new and novel useful functionality.

Marlana  

Okay, and what does that mean?

Randi 

So that means that you came up with either a product or a software, I do a lot of software patents we in our digital world, that doesn't exist anywhere. And you say, Wow, that's, that's really hard. How could that possibly be like the US alone, we're in the eleven, millions in the pens. But I just yesterday mailed a ribbon copy of a pen to a client. And it's, that's where you work with people like me and my firm and others like us who know. And so again, with patents, so I'm kind of following the process. It's a lot like trademarks. And we always look and see what's out there. First, we do a patent search and a legal opinion. And we say, oh, you know, you develop this product, this little niche piece. This is what's let's get it. Let's. So, it's complicated, but I have first time inventors, I love it. You know, like, I have moms who came up with things. Because, you know, they're just because I can't talk about what Yeah, it's, I have right now that are moms who came up with inventions simply to make their life better with their babies, and patentable invention. Um, during COVID It was funny because when COVID hit, a lot of my colleagues at other law firms were talking about, you know, things kind of, you know, people aren't going to come get a lawyer when they're worried about all these other things going on, or they're not in the office or whatever. My business exploded in that like, right after March 2020. Because people just everyday people were coming up with ways to deal with the pandemic, you know, everything from I can't talk about the inventions, but you know, things that allow them to do their function or their service in person while keeping the other people safe, you know, and things like that. And so, there were a lot of first-time inventors that came out of COVID

Marlana  

interesting and it seems like if you have something the best bet is just go to an A tourney like you and say, This is what I have, how do I protect it? Because you'll be able to point them in the correct direction

Randi 

I've actually had this debate with other law firms. Bigger law firms will say, okay, yeah, I'll write your patent for you, I actually take a different approach in that, I want to first see what's out there. So, anyone who comes to me, the first thing I'm gonna say is, let's see what exists. If it already exists, we're not going to patent it. And you need to know that because if you develop the product, you don't want to be infringing. Right, it's always those two sides of the equation of you want to protect it. But you also don't want to step on someone else's IP because it can be painful. 

Marlana

And I know that you offer free IP consultation, is that...