Monetization of IP : This bearded, vegetarian hipster made about 600k this year for doing nothing.

This hipster musician, otherwise known as Paul McCartney, makes tons of money every year.  At last count, he makes something like 35 Million dollars a year.

Now, to complicated financial wizards sitting at a prop trading desk, that might not seam like a large sum. However, taken over the course of this Beatles's 4 decade career, it adds up to a net worth somewhere in the 800 million dollar range.

Some portion of that income comes from touring. However, a large portion of his income comes from royalties from his later Beatles, solo endeavors and Wings catalog.   McCartney is one of the most prolific songwriters of his generation, with a number of songs he has written hitting the tops of the Billboard Charts.  One of those songs you might be listing to right now. It is called "Wonderful Christmastime."

Paul is careful to retain rights in all of the work he produces. This is a by-product of being burned by his early record company EMI, which paid the Beatles a penny an album. They still got rich, but nowhere near the level they should have.

To salt the wound, EMI would eventually sell the royalty rights to the Beatles' early hits to a Sony / Michael Jackson joint venture (the catalog included  4000 other songs including hits by Bob Dylan and was bought for 47 Million dollars in the 1980's. - it was sold by Michael Jackson prior to his death for 375 Million). 

This experience, getting sharked by EMI, is probably why when McCartney came up with the idea for "Wonderful Christmastime", he retained both writing and preforming rights. As such, when a royalty check does come in, it goes straight into the no-pig based bank. By current estimates the continuous playing of "Wonderful Christmas Time" nets Paul about 600k a year, every year, since 1979.

Since Copyright in the US is Life plus 70 years, Paul's children will be having a wonderful Christmas time for the remainder of their lives.

Every so often, I meet someone who argues with me about the value of Copyright protection or the necessity to spell out with clarity who owns the rights in a particular literary or artistic endeavor. Usually they argue that the potential benefit is minuscule relative to the cost and expense of hiring someone knowledgeable to handle the matter. Alternatively, people argue that the potential awkwardness of having that conversation with band mates or collaborators is not worth the effort.  99 times out of a hundred, these people are not completely off base. Unfortunately, most copyrighted material is not worth much to anyone other than the creator.
However, it is that one-off, that one in a million occurrence which makes the entire process worth it.

No one wants to be an Ex-Beatle hawking Christmas jingles because they got hosed on their first record deal. Well, no one except Ringo.

Girls be illin?: Don't waste your start-up capital on non-essential legal fights

Story: Goldieblox, a toy company marketing engineering toys to girls, used the Beastie Boys famous / infamous song "Girls" in a parody music video to promote their start-up project. The music video went viral on youtube, spawning mostly ardent praise and affection.

The Cerberus Legal dogs of Universal Music sent Goldieblox a pleasant letter (by Cerberus legal dog standards) asking them to take down the video. The letter claimed that the parody video was outside the scope of the fair use exception to copyright use, and constituted an impermissible use of the underlying work.

The legal counsel for GoldieBlox filed a declaratory judgment action seeking a finding on non-infringement under the parody provision of fair use.  This could be a educational case about how a "letter" is never really a letter, but an invitation to bring a DJ action.

A lot of digital ink has been split regarding the merits of the parties positions. If you are in favor of the permissible parody argument, then the Electronic Frontier Foundation (eff) has a great rundown of the law and their interpretation.

The point being missed here is one of resource allocation. It is argued that any press is good press. If that is true, then this entire episode is a net benefit to Goldieblox and their start-up ambitions.

However, from a business point of view, getting into a law suit with a major entertainment company is a huge hassle. Aside from your own legal costs, which could have been better spent on non-legal blog based marketing, you run the potential risk that you might lose and owe someone, or some mega corporation, lots of money. That outcome is unlikely here (even if GoldieBlox loses, they will likely have minimal damages), but that is besides the point.

A cursory level of diligence would have shown that not only do the Beastie Boys not like "Girls" (they refuse to play it anymore), they are actually quite litigious. As such, perhaps their IP, regardless of your use, was not the best media to use.

For the legal costs involved in filing and arguing a Declaratory judgement action, you could have hired a band or a composer to generate a all new song. The point here isn't that the Beastie Boys are right to argue about fair use, it is that a start up generally should avoid potentially bruising legal fights.  IP counsel should always be mindful of not only the legal arguments, but the overall business position.

Start-up resources should never we wasted on non-essential legal fights. If you need access to a particular piece of technology or code in order for your idea to function, then roll the dice, take the risk. If you want to make a music video parody of a famous song, think about the necessity to the bottom line.

Jordan Garner

Product Design IP in the age of 3D Printers

Dieter Rams designed Coffee Maker

Intellectual property protection for industrial design and industrial designers has always been a fraught process. The nature IP does not lend itself easily to the tasks Industrial Designers might put to them. However, new technology might begin to change how Industrial Designers see Intellectual Property protection.

IP Limits

Conventionally, industrial design is protected through a design patent.  Design patents allows the designer to get protection on their purely ornamental design for 14 years from filing.  Unfortunately, this means that if the product has a functional component (enhanced ergonomics etc.) then the designer relinquishes that functionality, or they are forced to obtain the more expensive and time consuming utility patent. A utility patent covers the function of a device , process, compound or article of manufacturer. For example, a designer could hold a patent on the manufacture of a particular item. While this might successfully deter large scale copying, it does not prevent wide spread dissemination of the construction methods and processes.

Copyright protects artistic and literary works for 70 years, plus the life of the author. Text and audio-visual works are the primary focus of copyright. Once you move beyond the artistic realm into the functional, Courts have held that copyrights no longer apply.  However, the age of 3D printing might be about to change the rules of the game.

Charles Eames Design Patent 

3D Printing

For the uninitiated, a 3D printer is a device that builds an object, usually out of some resin, layers at a time. It is the electronic opposite of a very fine mandolin slicer. MakerBot, and companies like them are pioneering a way to have an "internet of things." The eventual goal would be a repository of templates for the production of all manner of goods, ready to be downloaded and printed, the way one might download a song and burn it to a CD [ed. do kids ever do that any more ?].

 The software used in 3D printers vary from device to device. However, they all use some form of stereolithography file to instruct the device on how to lay down layers of material. Once all the layers have been deposited, you should have a reasonable copy of object described by the file.

It should be apparent that 3D printing allows for the production of many useful things, it also allows for the re-production of industrial design elements without authorization from the original creators. Where 3D printing has created a problem, it might also offer a solution.

IP Incorporation into Designs



Since the procedures for manufacturing the item begins with a digital file. It is possible to encapsulate the design within the boundaries of Copyright law. If the software file, the instruction set for making a particular design is complete (that is, it does not require additional tooling, or minimal machining) then the software encapsulates the design.

It might still hold true that the tangible representation of the software (i.e. a chair or lamp) is not covered by copyright, the software code that executes the 3D printer is a valid piece of IP.  Therefore, the nexus of IP infringement of the design would occur when the digital file is copied (i.e. on a file share network). Thus, developing code for the 3D designs will become as important as the conceptual prototypes. Court are well positioned to hear arguments on the illicit trade and sale of pirated software. This presents an opportunity for Industrial designers and software coders to collaborate on clever implementations of the software to render the designs with minimal post processing. The closer the code is to representing the object, the stronger the case for infringement. Once the code base of a portfolio has been engineered, a simple licensing program [not in bitcoins!!!] (think Itunes) could offer people the world over the chance to download an use a particular firm's designs.

Alternatively, or additionally, a designer could include a structural trademark element. For instance, the design of a chair could,  incorporate a logo. In this instance, merely printing the object does not create a cause of action. However, once an unscrupulous manufacturer attempts to sell the copied design, they are engaged in trademark infringement.

There are likely more elegant solutions than these two for the potential problems posed by 3D printing. However, these solutions show that IP in 3D printing can be maintained and creators can be protected.

Jordan Garner

Flat Design and the Decline of the GUI Design Patent

 With the advent of IOS7, Apple has joined Microsoft (Metro) and Google (Now) in putting to rest (for the time being) digital skeuomorphic designs. While a good thing for designers who like clean lines, it might complicate future GUI Design Patent Strategies.

A quick primer, digital skeuomorphic design elements are when the interface or the icon is designed such that it looks like the physical world object that it is designed to digitally replicate. For example, the bookshelf in Ibook, is digital skeuomorphic design. There is no reason that a digital container of book files needs to look like a bookshelf; other than to relate to you, the user, what is the purpose of the digital program. Additionally, buttons with dropped shadows, or clever isometric representations of objects within the icon space, are all examples of digital skeuomorphic design.

However, with the advent of flat design across the three major mobile development platforms, things like icons designed to look like bookcases is going to be a thing of the past. Flat design, like its "Modernism" architectural equivalent is premised of reducing the ostentation ornamentation. In the same way that neo-Gothic architecture like this gave way to boxy simplicity of like this, so too does flat design trend to simple geometric forms and a studied lack of ostentation and ornamentation.

Part of this change has been led by a difference in attitudes regarding the purpose of the GUI in the first place.  Digital skeuomorphic designs were originally used to help people with no inherent knowledge of the inner workings of computers to easily map real world actions to digital ones. A digital file was made to look like a physical office file. A digital delete function was made to look like a trash can, etc. Now, with at least two generations of American consumers raised on digital entertainment, there is less of a need to visually explain the functions of each icon. It is simply enough, in most instances, to state its function and designate an area for the user to interact with that function.

lots of rectangles, no shadows 

GUIs, flat or not, can be protected by design patents. In 1996, the USPTO created guidelines for the protection of GUIs based on its decision in Ex Parte Strijland.  GUI design or surface ornamentation is protectable as long as it is shown to be novel, not obvious, and not functional. The claimed design may be presented as a line drawing or a digital image. Color and grayscale are allowed to be presented in the same GUI application, but line drawings and digital images are not. Animated designs are also patentable in the United States, and must show a minimum of two views of the animation. 

This is all a long winded intro into the point. Of the recent victories that Apple has achieved against Samsung, Apple succeeded in proving that Samsung had copied a design patented GUI (seen at left). As you will note,  this Apple design is chock full of skeuomorphic elements. This includes not only the icons themselves, but their placement, the shape of the icons, their slightly beveled appearance etc.

However, by moving to a flat design paradigm, Apple and its competitors are moving into a field whose sole purpose is to simplify the display elements, not add ornamentation. As noted above, design patents mush have a non-functional use, and must be directly related to the ornamentation. If flat design takes hold, it will be increasingly difficult for designers to obtain protection for flat designs as they  essentially become functional identifiers for computer tasks. As a result, we are going to see a lot of convergent design elements that people will accuse other people of stealing, but no one will be able to obtain a patent on.

As a result, it is preferable to augment your GUI design patent strategy with a screen shot copyright strategy. This way, if it is an instance of blatant copying, you are still protected by an enforceable IP right.

Jordan Garner

Developer's IP checklist

Awhile back I got a call from a video game developer that was about to go live with their product. The lead developer/CEO had just discovered that there was a trademark registered to a major company, that happened to be the same name as their game.

Luckily, we were able to resolve the issue prior to them going live, but it raises an interesting point.

A lot of the discussion relative to IP in the start up / developer space is colored by the larger market discussion on software patents and their role in, or hindrance on, innovation.  This discussion has sucked all the air out of the room as it applies to the multiple forms of IP that are pretty critical to a successful brand.

As such, I figured I would just do a quick check list for all the app/game/social media/ tech start-ups out there that maybe thought that having a position on patents was their sole IP issue.  Here is the quick check list, followed by some in-depth discussion.

1. Do you have Copyright Assignments for Coders, Designers and UI/GFX Modelers
2. Do you have a Trademark on your company / product name. Do you have a domain name on the same?
3. Do you have a firm wide confidentiality policy?

Copyright  Assignment Documents:
 In the U.S. any works of authorship, which includes drawings, character models, wireframes, code, or text, is covered by copyright.  The copyright vests in the creator at the time of creation. So, as soon as your character modeler generates an awesome character for your app, the copyright in that character vests in the creator. Not, I repeat, Not the company who they they are working for.

This is always true, UNLESS, you have an agreement in place that assigns all of that work to the company.

This can be done in two ways. The first is to have everyone that is working on the project sign a document that assigns all of their work to the company.

Second, which is more subject to legal challenge, is a Work For Hire Agreement. A Work For Hire Agreement that states that the works created were done so as a commissioned work of authorship. This is the language you will find in employment contracts for large media companies and software companies alike. The problem is, if you and your buddies are coding the killer app, when did you sign employment agreements? Odds are you didn't Once you are ready to go live, pitch investors, or hit Kickstarters, everyone who has contributed to the project should agree, in writing that they are assigning their rights over to some entity.  However the agreement is made is largely irrelevant, the goal is to get the assets essential to the company under the ownership umbrella of the company.

As a second point, I always suggest filing a few federal copyrights on art assets or screen shots, just to deter scrapers, clones and knockoff artists.

Trademarks:

Trademarks are source designations of origin. They identify the good or service as coming from a particular entity. As I stated at the beginning of this piece, an invaluable use of time is to check the trademark office to see if the name of your game, company, or app is already in use. If so, is it is the same field of use. There is nothing worse then having to go back through code looking for references to a company name that needs to be changed at the last minute. Securing a trademark relative to a patent is a cheap and easy process. Once it is secured it can be used as your brand and the public show case of all your company has to offer.

I always remind clients that Twitter did not Trademark "Tweet", a decision that came back to bite them in terms of money and attorney fees. See here.

Confidentiality

As a rule of thumb, anything that pertains to proprietary technology, that gives you a perceived edge in the market place (google's search algorithms, Coke's formula, Zucherberg's Hoodie), should be kept confidential.  Not only is this just good practice, but it also lays the foundation of a strong Trade Secret Policy.  As I pointed out in an earlier post here, the rules for protecting valuable IP via Trade Secret Laws has been greatly enhanced.

Every Company should take advantage of that, not just vampire squid banks. The best way to do so, is to make sure that everyone has signed confidentiality agreements that lay out their responsibility to keep the companies secrets...secret.

For the large majority of start-ups and developers, this is all the IP you need. In the future, when you begin driving technology, Patents will become a critical component of your IP strategy. However, you will never get there if you don't secure your IP in the beginning.

Jordan Garner