When it comes to the topic of intellectual property — intangible assets such as artistic work, discoveries, inventions, names, symbols and designs — many businesses don’t give it a second thought. But that kind of thinking can end up being a costly mistake.
“Business owners need to be thinking about IP issues and have money put aside in their budget for IP legal issues,” says Tom Wilhelm of Wilhem Law Office in Appleton. “I’ve had cases where clients didn’t do that and wound up being in a legal bind.”
Wilhelm says there are at least two IP issues all businesses owners need to check out: the company name and its website. He says owners need to make sure the name they’re planning to use hasn’t been trademarked by anyone else in the same industry in the same state. The next step is to make sure all the content being used on the website — photos, graphics and copy — are either original or are being used with permission.
“There’s a steady trickle of people who pull photos off the Internet and use them on their website and then get a letter telling them they are using the image without permission and they owe $3,000. That’s a letter no small business owner wants to get,” Wilhelm says.
Another caveat concerning the website and all marketing materials is to carefully read the contract with the creator of the website to make sure the business owns the material. If not, Wilhelm says the law stipulates that the creator — for example, the ad agency who made the website — owns the content.
“And if you want changes, but for some reason want to go with another provider, you can’t just go and get the changes made. You have to go back to the person who created the site and they can charge you whatever they want to make those changes,” he says. “Or you have to start from scratch.”
Issues like that are why business owners need to make sure they have an IP attorney look over contracts involving anything being created for or by the company, Wilhelm says. “We can spot things like that and say, ‘You should do this’ or, ‘This contract doesn’t protect you if the company uses an image without getting permission first.’”
While being careful not to misuse someone else’s content or original material, businesses also need to protect their own ideas and material, says Bob Duimstra, an attorney with Menn Law Firm in Appleton.
“People need to recognize what they need to protect and what means they have available to protect those assets. Businesses sometimes don’t realize what they have,” he says.
While people usually link intellectual property and patents, the topic is much broader and needs to include copyrighted and trademarked information as well as business trade secrets, says Andrew Landsman, an attorney with Godfrey & Kahn S.C., which serves clients throughout Wisconsin.
“Right away, I tell all my clients to make sure they copyright all the material on their website. That’s important,” he says. “Patents are clear cut and there are distinct rules that need to be followed; it gets blurrier with trademarks and copyrights. You need to make sure you’re not ignoring these areas because once the genie gets out of the bottle, it’s hard to get it back in.”
With today’s technology, digital information is streaming in and out of businesses. Landsman says businesses need to think about where information is coming from and where it’s going.
“Every business needs to have policies about digital communication, whether it’s through the IT department, HR or both areas,” he says. “For example, some companies say employees can’t use flash drives on company computers or maybe emails sent from certain domains are encrypted.”
Confidentiality agreements and non-disclosure agreements also can come into play when keeping business information secure, Duimstra adds.
Just like with other areas of business, Wilhelm says companies must manage their risk when it comes to IP.
“It’s about putting the right people and procedures into place to keep you out of trouble,” he says. “Lawyers are there to help you when the unexpected shows up.”
Landsman says business owners shouldn’t be afraid to ask their attorneys about IP issues as they come up. “It’s better to deal with issues up front than on the back end, so ask an attorney if you have questions.”
Conducting an IP audit
Just as you would inventory your business’ physical assets, you need to do the same with its intellectual ones. Consider:
» What information is trademarked or copyrighted?
» Is there additional information or materials that need to be copyrighted or trademarked?
» Are there ideas or processes in the works that may need to go through those processes?
By knowing what your company “owns,” you’ll be in a better position to realize if something is being misused. If you’re unsure about what needs to be done, consult with an IP attorney. He or she can help steer you in the right direction.
Source: Tom Wilhelm of Wilhelm Law Offices, Appleton