Tag Archives: IP

Six Stubbs Alderton & Markiles’ Attorneys Listed as 2017 Southern California Super Lawyers

Stubbs Alderton & Markiles, LLP is pleased to announce that six lawyers have been named to the 2017 Southern California Super Lawyers. Super Lawyers is a 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, peer nominations and peer evaluations.

Super Lawyers Magazine features the list and profiles of selected attorneys and is distributed to attorneys in the state or region and the ABA-accredited law school libraries. Super Lawyers is also published as a special section in leading city and regional magazines across the country. Lawyers are selected to a Super Lawyers list in all 50 states and Washington, D.C.

Stubbs Alderton & Markiles, LLP would like to congratulate the following attorneys named to the 2017 Super Lawyers list –

Scott Alderton - Super LawyersScott Alderton is a founding partner of the Firm, Managing Partner, and a member of the Firm’s Executive Committee.  Scott is co-chair of the Firm’s Venture Capital and Emerging Growth Practice Group and chair’s the Firm’s Interactive Entertainment and Video Games Group. Scott advises both public and private clients across a number of industries, including technology, manufacturing and distribution of goods in commerce, finance, the Internet, interactive video games, and new media industries.

Joe Stubbs - Super LawyersJoe Stubbs is a founding partner of the Firm, and a member of the Firm’s Executive Committee. He is co-chair of the Firm’s Venture Capital and Emerging Growth Practice Group, and of the Firm’s Mergers and Acquisitions Practice Group. Joe practices in the areas of corporate and securities law, emphasizing the corporate representation of both publicly-held and privately-held emerging growth and middle-market companies, venture capital and private equity firms, angel investment groups and investment banks.

Michael Sherman - Super LawyersMichael Sherman is an accomplished trial lawyer in high-stakes, “bet-the-company” litigation, and has represented both large and early-stage companies as well as entrepreneurs in all facets of business and complex commercial litigation. He has evenly split his litigation practice on both the plaintiff and defense side of cases, has first-chaired numerous trials in complex matters in industries as varied as energy, securities, healthcare, environmental, consumer products, technology, project development/finance, advertising, real estate and apparel, and is highly skilled in class actions and unfair competition law.

Jeffrey F. GershJeff Gersh - Super Lawyers is a Partner of the Firm. He has litigated, arbitrated, or mediated complex business and commercial matters, for both plaintiffs and defendants, whether individuals, public or private corporations, partnerships, limited liability companies and/or its members, shareholders and partners, involving various types of disputes, including contract matters, trade secrets, intellectual property (trademarks, copyrights and trade dress) negligence and fraud, employment, real estate, license agreements, the apparel and garment industry, and general business matters.

Kevin Debre - Super LawyersKevin D. DeBré is the chair of the Firm’s Intellectual Property & Technology Transactions Practice Group.  Kevin advises entrepreneurs and companies that use intellectual property to build their businesses.  Kevin has particular expertise in structuring and negotiating technology commercialization and patent licenses, strategic alliances, research and development collaborations, trademark licensing and brand merchandising agreements and manufacturing, distribution and marketing arrangements.  He also counsels clients on compliance with data security and privacy laws and regulations.

Tony Keats is a partner of the Firm and Co-chair of the Trademark and Copyright Practice Tony Keats - Super LawyersGroup. Tony’s almost three decade legal career has focused on both the legal and business protection of brands and creative content from consumer products to entertainment, from designer goods to the Internet. Since he commenced practice, he has provided counsel and has litigated cases on behalf of many of the world’s largest consumer product and entertainment companies, as well as individual entrepreneurs, actors, and musicians. Tony’s litigation background also includes related commercial matters involving unfair competition, contract disputes, rights of publicity violations, business torts, domain name infringement, and idea submission claims.

The official Super Lawyers 2017 publication can be read in its entirety here.

For more information about Stubbs Alderton & Markiles, contact Heidi Hubbeling at hhubbeling@stubbsalderton.com or (310) 746-9803.

FacebookTwitterGoogle+LinkedInEmail

SAM Partner Kevin DeBré Featured as Speaker at California State Bar Event

Kevin DeBréStubbs Alderton & Markiles’ Partner Kevin DeBré will be featured as a speaker at “Tips and Tricks for IP Practitioners” presented by The State Bar of California. A fireside chat with startup technology attorney, Kevin DeBré, and Founder of Ring, Jamie Siminoff discussing innovation within a startup and considerations driving decisions about IP protection and enforcement. The event will be Tuesday, January 24, 2017 at the JW Marriott Santa Monica Le Merigot.

For more information about the event visit their website here. 

To find out more about Stubbs Alderton & Markiles’ Intellectual Property & Technology Transactions practice contact Kevin DeBré at kdebre@stubbsalderton.com

 

 

FacebookTwitterGoogle+LinkedInEmail

Kevin DeBré’s Article “Let Your Business Strategy Drive IP Protection” Featured in the WSJ’s The Accelerators Column

 

WSJ

SAM Partner Kevin DeBré‘s article “Let Your Business Strategy Drive IP Protection” has been featured in today’s edition of the online WSJ column, The Accelerators.

Kevin discusses how a startup company can protect their innovation while furthering their business objectives.

To read the full article, click here.

Kevin DeBré advises entrepreneurs and companies engaged in building businesses based upon technology or intellectual property assets and he has particular expertise in structuring and negotiating intellectual property-driven deals. A business lawyer, a registered patent lawyer and a former engineer, Kevin handles a wide range of transactions, develops IP protection strategies and advises management teams on compliance with privacy and data security laws and regulations.

For more information about our Intellectual Property Practice, contact Kevin at (818) 444-4521 or kdebre@stubbsalderton.com

 

FacebookTwitterGoogle+LinkedInEmail

Trade Dress for Websites

Konrad GatienKonrad Gatien, Partner and co-chair of Stubbs Alderton & Markiles’ Brand Development & Content Protection Practice,  discusses the importance of establishing a distinctive website to create trade dress, and therefore protect your unique brand. Konrad is involved in all aspects of brand creation, promotion and protection, assisting clients in the selection and adoption of brand names, securing copyrights and trademarks worldwide, and running specialized global enforcement programs.

 ____________________________________________

What is Trade Dress in the Electronic Age?

The digital age has seen the migration of store fronts from brick-and-mortar locations to the Internet.  Currently, Amazon is the largest online retailer in the world, with over 48 billion in sales.  Given the importance of e-commerce, it comes as no surprise that making an online “storefront” distinctive has become a key element in a company’s branding strategy.  Not only must the website be eye-catching and interesting, it must stand out from among the over 600 million active websites online.

One means of achieving distinction is for a company to create a website that has a unique “look and feel” that sets it apart from the rest.  In legal terms, this overall visual appearance is known as “trade dress.”  Trade dress traditionally has consisted of the specific characteristics or visual appearance of a product or its packaging.  The scope of trade dress protection has expanded from these traditional notions to include magazine covers,[1] store interiors,[2] and websites.[3]

The elements of trade dress with respect to websites include such elements as the images, frames, colors, highlights, orientation, layout, graphics, animation, borders and sounds, as well as the selection and arrangement of all of these elements.[4]

The purpose of trade dress protection is prevent marketplace confusion by ensuring that a consumer’s reliance upon the distinctive features associated with a single source are not copied and associated with another business and its products.

 Trade dress is protectable once it has achieved secondary meaning, a status achieved when a substantial number of purchasers associate a particular appearance only with a single source.  Once secondary meaning is established, the trade dress owner may prevent others from copying it under the Lanham Act, which prohibits unfair competition.

Articulation and Distinctiveness

To establish trade dress, a person or business seeking protection must be able to sufficiently articulate which elements of its website are distinctive.  These elements cannot be “functional,” meaning they cannot be merely essential to the product’s use.  For example, a shopping cart or check out feature in and of itself would be functional; however, a unique logo or graphic for this feature may be a protectable element of the site’s trade dress.  The purpose of the requirement that trade dress consist of specific, articulable, non-functional elements is to give competitors sufficient notice of what the protected trade dress is, and to protect legitimate competition by prohibiting the monopolization of useful product features.[5]

Preemption by Copyright

It is worth noting that where online trade dress is at issue, a trade dress owner’s claims may still be dismissed if the appearance of the website falls under the protections of the Copyright Act.[6]  Given the preemption rule, a brand owner cannot seek to protect the look of its website as both a copyrighted work and trade dress.  Therefore, a website owner should be careful in selecting the elements of its trade dress in a manner that clearly distinguishes them from elements protected by copyright law.  For example, common geometric shapes are not protectable through copyright law, so the owner should consider including those in its trade dress articulation.  In addition, the format and layout of a website should be included in the trade dress articulation because they are not proper subjects of a copyright claim (though text and photographs would be proper subjects).[7]

Closing Thoughts

Your website’s appearance is the first impression consumers have of your business.  A well-designed website that is distinctive and pleasing to the eye builds consumer confidence in your brand, and helps define your brand’s commercial integrity.    To ensure that you maximize the impression of your brand, you should take care to populate your website with elements that are not only distinctive, but also that are legally protectable.  From a trade dress standpoint, this will include the layout of the site, certain graphic elements, and its overall appearance, as opposed to its content.  When articulating your trade dress, you should be careful to distinguish those elements from the text, original graphic elements and photographs protectable under copyright law to ensure that your trade dress claims are not preempted by the Copyright Act.

[1] Reader’s Digest Ass’n v. Conservative Digest, 821 F.2d 800 (D.C. Cir. 1987).

[2] Apple was issued a service mark registration for the design and layout of its Apple retail stores on January 22, 2013  (see Reg. No. 4,277,914).

[3] See, e.g., Sleep Science Partners v. Avery Lieberman, 2010 U.S. Dist. LEXIS 45385 (N.D. Cal. 2010).

[4] See id.

[5] Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995).

[6] Sleep Science Partners, 2010 U.S. Dist. LEXIS 45385, at *13.

[7] See Copyright Office Circular 66.

____________________________________________

For more information about Trade Dress  and other intellectual property related questions, please contact Konrad Gatien at (310)746-9810 or kgatien@stubbsalderton.com.

FacebookTwitterGoogle+LinkedInEmail

Trade Dress for Websites

Konrad GatienKonrad Gatien, Partner and co-chair of Stubbs Alderton & Markiles’ Brand Development & Content Protection Practice,  discusses the importance of establishing a distinctive website to create trade dress, and therefore protect your unique brand. Konrad is involved in all aspects of brand creation, promotion and protection, assisting clients in the selection and adoption of brand names, securing copyrights and trademarks worldwide, and running specialized global enforcement programs.

 ____________________________________________

What is Trade Dress in the Electronic Age?

The digital age has seen the migration of store fronts from brick-and-mortar locations to the Internet.  Currently, Amazon is the largest online retailer in the world, with over 48 billion in sales.  Given the importance of e-commerce, it comes as no surprise that making an online “storefront” distinctive has become a key element in a company’s branding strategy.  Not only must the website be eye-catching and interesting, it must stand out from among the over 600 million active websites online.

One means of achieving distinction is for a company to create a website that has a unique “look and feel” that sets it apart from the rest.  In legal terms, this overall visual appearance is known as “trade dress.”  Trade dress traditionally has consisted of the specific characteristics or visual appearance of a product or its packaging.  The scope of trade dress protection has expanded from these traditional notions to include magazine covers,[1] store interiors,[2] and websites.[3]

The elements of trade dress with respect to websites include such elements as the images, frames, colors, highlights, orientation, layout, graphics, animation, borders and sounds, as well as the selection and arrangement of all of these elements.[4]

The purpose of trade dress protection is prevent marketplace confusion by ensuring that a consumer’s reliance upon the distinctive features associated with a single source are not copied and associated with another business and its products.

 Trade dress is protectable once it has achieved secondary meaning, a status achieved when a substantial number of purchasers associate a particular appearance only with a single source.  Once secondary meaning is established, the trade dress owner may prevent others from copying it under the Lanham Act, which prohibits unfair competition.

Articulation and Distinctiveness

To establish trade dress, a person or business seeking protection must be able to sufficiently articulate which elements of its website are distinctive.  These elements cannot be “functional,” meaning they cannot be merely essential to the product’s use.  For example, a shopping cart or check out feature in and of itself would be functional; however, a unique logo or graphic for this feature may be a protectable element of the site’s trade dress.  The purpose of the requirement that trade dress consist of specific, articulable, non-functional elements is to give competitors sufficient notice of what the protected trade dress is, and to protect legitimate competition by prohibiting the monopolization of useful product features.[5]

Preemption by Copyright

It is worth noting that where online trade dress is at issue, a trade dress owner’s claims may still be dismissed if the appearance of the website falls under the protections of the Copyright Act.[6]  Given the preemption rule, a brand owner cannot seek to protect the look of its website as both a copyrighted work and trade dress.  Therefore, a website owner should be careful in selecting the elements of its trade dress in a manner that clearly distinguishes them from elements protected by copyright law.  For example, common geometric shapes are not protectable through copyright law, so the owner should consider including those in its trade dress articulation.  In addition, the format and layout of a website should be included in the trade dress articulation because they are not proper subjects of a copyright claim (though text and photographs would be proper subjects).[7]

Closing Thoughts

Your website’s appearance is the first impression consumers have of your business.  A well-designed website that is distinctive and pleasing to the eye builds consumer confidence in your brand, and helps define your brand’s commercial integrity.    To ensure that you maximize the impression of your brand, you should take care to populate your website with elements that are not only distinctive, but also that are legally protectable.  From a trade dress standpoint, this will include the layout of the site, certain graphic elements, and its overall appearance, as opposed to its content.  When articulating your trade dress, you should be careful to distinguish those elements from the text, original graphic elements and photographs protectable under copyright law to ensure that your trade dress claims are not preempted by the Copyright Act.

[1] Reader’s Digest Ass’n v. Conservative Digest, 821 F.2d 800 (D.C. Cir. 1987).

[2] Apple was issued a service mark registration for the design and layout of its Apple retail stores on January 22, 2013  (see Reg. No. 4,277,914).

[3] See, e.g., Sleep Science Partners v. Avery Lieberman, 2010 U.S. Dist. LEXIS 45385 (N.D. Cal. 2010).

[4] See id.

[5] Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995).

[6] Sleep Science Partners, 2010 U.S. Dist. LEXIS 45385, at *13.

[7] See Copyright Office Circular 66.

____________________________________________

For more information about Trade Dress  and other intellectual property related questions, please contact Konrad Gatien at (310)746-9810 or kgatien@stubbsalderton.com.

FacebookTwitterGoogle+LinkedInEmail

Intellectual Property Law News Flash from Stubbs Alderton & Markiles, LLP

Important Business News

from

S.A.M. High Res Logo (jpg) - small

June, 2013 – The White House’s U.S. Intellectual Property Enforcement Coordinator, Victoria Espinel, has released the 2013 Strategic Plan on IP Enforcement. A copy of the report can be found here.

For more information about IP Enforcement, please contact Anthony Keats, Partner and Chair of SAM’s Brand Development & Content Protection practice at akeats@stubbsalderton.com or (310) 746-9802.

 

FacebookTwitterGoogle+LinkedInEmail

SAM Partner Konrad Gatien to be a Panelist at Maverick Angels AIM Program at USC

Konrad GatienSAM Partner Konrad Gatien will be a featured panelist at the Maverick Angels‘ AIM (Accelerating, Incubating, Mentoring) Summer program at University of Southern California on June 12th, 2013.  The panel will focus on legal issues that surround the startup process.  Konrad will be discussing the ins and outs of intellectual property and trademarks.  Other panelists include Rick Citron of Citron & Deutsch, and Nick Zargarpour of the Zargarpour Law Firm.

Konrad’s practice includes all aspects of brand creation, promotion and protection, assisting clients in the selection and adoption of brand names, securing copyrights and trademarks worldwide, and running specialized global enforcement programs.  For more information about our Brand Development & Content Protection Practice, please contact Konrad at kgatien@stubbsalderton.com or 310.746.9810.

FacebookTwitterGoogle+LinkedInEmail

Kevin DeBré to be Featured Speaker at Coloft Academy’s Startup Legal: Intellectual Property – March 4th, 2013

SAM Partner Kevin DeBré will be the featured instructor at Coloft’s Startup Legal Class on Intellectual Property on Monday, March 4th from 7:00-8:30pm.  For more information and registration, click here.

For more information regarding our Intellectual Property Practice, contact Kevin at (818) 444-4521 or kdebre@stubbsalderton.com.

 

FacebookTwitterGoogle+LinkedInEmail

Navigating the Waters of Work For Hire

Steve Goldstein is a Partner of the Firm and Chair of the Interactive Entertainment and Video Games practice group. Steve’s practice concentrates on advising clients within the video game industry on legal issues across all aspects of their business, including negotiation of video game publishing agreements, merchandizing agreements, co-marketing agreements and other inbound and outbound licenses regarding the exploitation of video game intellectual property, Internet best practices, drafting of online game privacy policies and terms of use, alternative financing, global corporate structuring, and legal issues related to the use and trade of virtual goods.

________________________________________________

There was a time in console and PC game development when developers could enter a publishing agreement and retain the rights to the IP they created.  With increasing market pressure, downward sales and pervasive aversion to risk by publishers, those days are long over unless you are one of a very select group of incredibly successful independent developers.  As such, almost any type of development deal which involves a publisher financing the lion’s share of a game will be a “work made for hire” in which the publisher will own all right, title and interest in the game being developed, regardless of whether the game was the original idea of the developer.  Even though the industry standard is for developers to give up the rights on the games they work on, there are many ways that developers can protect themselves so they can get the most out of a work-for-hire agreement.  The following is a list of suggestions and tips to keep as much as you can when dealing with a work-for-hire negotiation.

You should keep your tools and technology.  A work-for-hire agreement always starts from the standpoint that a publisher gets everything that the developer creates in the course of making a game for the publisher.  However, this does not make much sense when a developer is working on re-usable code that can apply to multiple games, such as game engines, physics engines, effects, etc.  To use a film analogy, just because a studio pays for the production of a film, it does not necessarily own the cameras that were used to shoot that film.  If you are developing your own technology and software tools to create a game and you do not specifically state that those tools and tech are not to be deemed part of the work-made-for-hire, you will unintentionally give away vital assets of your studio.  By including a carve-out for tools and tech, you are building value in your company even though you may not own the game you are working on.

If you do negotiate a carve-out for your tools and tech, the publisher is going to ask for a broad-based license to use those tools and technology.  It is important to keep this license as narrow as possible.  Again, these technologies are valuable assets of your company, and if a publisher has open-ended rights to use (or to allow other developers to use) your software to create any type of game that publisher wants, this diminishes the value of those assets.  You therefore want to limit the publisher’s rights to use your tools and tech strictly (1) to the extent the tools and tech are integrated in the game, to distribute the tools and tech to end users solely as the tools and tech are embodied in the game in object code only, and (2) to use the tools and tech to complete the game solely in the event that the publisher terminates the agreement due to your uncured material breach.  This is an extremely narrow license, but it is possible to achieve with the right amount of negotiation.

It’s not the IP, it’s the revenue streams.  Many developers think that they lose value in their company when they create a new IP under a work-for-hire because they are giving up their rights in IP that they would otherwise own.  However, a work-for-hire can be tremendously valuable if the agreement between the developer and publisher is structured so that the developer has solid revenue streams from the IP.  In other words, a developer may be far better off under a work-for-hire in which the developer has a significant royalty, an aggressive recoupment structure and participation on ancillaries than the developer would if the developer owned the IP but had a low royalty rate.  Further, publishers have a stronger incentive to invest marketing and promotional dollars into a game that they own than a game that they have licensed.  Going back to the film analogy, most motion picture directors do not own the movies they create on behalf of the studios.  Very successful directors, while they don’t own the movie they make, do have significant royalty participations, not only on the film itself, but on all ancillary properties and merchandise that the film generates.  If a director creates a billion dollar film franchise and has a significant participation, that director is not going to mind that the studio owns the IP he or she made.  In short, the aggressive negotiation of the revenue streams that a developer receives from a work-for-hire may be better than actually retaining ownership of the IP.

If you don’t own the IP, make sure you are attached to it.  Another major risk factor in entering into a work-for-hire agreement is that the developer that creates the IP will not be able to work on future iterations of that IP, such as sequels or ports.  It is therefore critical that the developer negotiates long-term rights to work on future projects related to the IP.  Typically, these rights are in the form of rights of first negotiation and last refusal.  A right of first negotiation ensures that the developer has the opportunity to negotiate working on an ancillary project prior to the publisher negotiating with any other third party for that same project.  This right is typically granted by the publisher.  The right of last refusal is more favorable to the developer, and thus, rarely granted by publishers.  This right states that if the developer and publisher do not come to an agreement under the right of negotiation, if the publisher negotiates a deal with a third party developer for the development of a particular ancillary property, before entering into that deal, the publisher must offer the same terms to the developer of the original property.  If the developer passes on the offer, the publisher may enter into an agreement with the third party developer.  “First and last rights” can also be intricately tied to royalties as well.  As part of negotiating these rights, developers should also ensure that to the extent they “pass” on working on a port, sequel or prequel, the developer should still receive royalties as part of the developer’s ancillary rights royalty stream.

While the “work-for-hire” is not ideal for all developers, through proper negotiation, a “work-for-hire” can provide significant and long-term revenue streams to a developer.  Although the proposition of losing your IP can be daunting, by approaching “work-for-hire” with a long-term strategic focus on royalties, retention of technology and ongoing rights to work on a franchise, a “work-for-hire” can build tremendous value in your studio.

This article is provided for informational purposes only and does not constitute legal advice.  For more information regarding video game legal issues, please contact Partner Steve Goldstein, Chair of the Interactive Entertainment & Video Games Practice at (818) 444-4510 or sgoldstein@stubbsalderton.com.

FacebookTwitterGoogle+LinkedInEmail

“Aereo Gets More Air Time”

Kevin DeBré, Stubbs Alderton & Markiles, LLP Partner and Intellectual Property Practice Group Chair is featured in the Licensing Forum of the IP Law Section New Matter Publication of the State Bar of California, Volume 37, Number 3.  His article “Aereo Gets More Air Time” discusses the decision by The Southern District of New York to deny the request by television broadcast industry giants for a preliminary injunction that would have put Aereo out of business.  This decision may also signal independence for cable and satellite system operators from paying retransmission fees to broadcasters.  If this decision stands, it may force the networks to rethink their business model for broadcast TV.  To view Kevin’s article, click Licensing Forum.

For more information about our Intellectual Property and Licensing Practice Area, contact Kevin DeBré at kdebre@stubbsalderton.com or (818) 444-4521.

FacebookTwitterGoogle+LinkedInEmail