INTELLECTUAL PROPERTY
OVERVIEW
Dave Baker is head of the firm’s Intellectual Property Department. He is a partner with the firm and has been practicing law in California for twenty-five years. A popular speaker and writer, Dave is very involved with numerous industries whose intellectual property is important to their success, including action sports, computer software, popular media, entertainment, shooting, transportation, and restaurants. He can be reached at the firm’s Orange County office and by e-mail at dbaker@hartkinglaw.com.
IN THE ELECTRONIC INFORMATION AGE, INTELLECTUAL PROPERTY IS A SIGNIFICANT COMPANY ASSET. Intellectual property is the most important asset of many of the world’s largest and most powerful companies and it is the foundation for the market dominance and continuing profitability of leading corporations. Not surprisingly, intellectual property, in the form of trademarks, copyrights, trade secrets, trade dress, and, of course, patents, is also becoming increasingly important to small and mid-size companies, the most knowledgeable of which are increasingly using their intellectual property assets to increase their bottom line. No company is too big and no company is too small to be concerned about defending and exploiting its intellectual property, particularly when it comes to its competitors in the marketplace. And in order to do so, efficiently, effectively, and economically, proper representation is essential.
hartkinglaw.com 4 Hutton Centre Drive, Suite 900 Santa Ana, CA 92707
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A COMPANY’S BRAND IS ONLY AS STRONG AS ITS TRADEMARKS. When we think of automobile manufacturers, popular restaurants, and even clothing lines, most of us think of well-known brands like Mercedes Benz, McDonald’s, and Nike, what we are really doing is identifying products and services with a particular brand. These brands almost always are most strongly associated with what is commonly known as a trademark. Whether it’s an elegant hood ornament, a stylized yellow letter “M,” or a simple swoosh, these trademarks, over time, have come to represent a high level of quality to consumers around the world. Of course, every company aspires to the level of recognition attained by these companies, but the first step in the process is the selection and use of a unique trademark. Proper registration, use, and enforcement of trademarks is the key to protecting and enhancing the value of a particular brand as well as the investment of time, effort, and capital in that brand.
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WEBSITES CAN BE A MINEFIELD OF LEGAL ISSUES. Every business has a Website. And for many businesses, a website is the first impression a customer may have about a company. It is the opportunity for a company not only to make a great first impression, but it is a chance for a company to solicit new business, impress existing clients, and establish a unique identity within an industry. Good websites depend on content and good content takes the form of text, images, designs, photographs, music, audio, and even videos, much of which is dynamic and ever-changing. However, the design and maintenance of virtually every website eventually touches on a myriad of legal issues, including especially copyright law, trademark law, and laws protecting trade secrets, advertising and fair competition. Companies that fail to recognize the need for consistent monitoring of the content posted on their websites run the risk of civil litigation and exposure to serious consequences, including substantial monetary damages.
SOCIAL MEDIA TECHNOLOGY AND SITES LIKE FACEBOOK AND TWITTER HAVE OUTPACED THE LAW. Social media is everywhere and virtually everyone is using it. Unfortunately, not everyone is using it in an appropriate manner and this can cause real problems. Employers are especially vulnerable and can find themselves in a difficult position when it comes to concerns about employee privacy, negligent hiring, and the protection of company property. With very little in the way of established legal standards for employers to rely on, it is important for them to seek proper representation and advice when it comes to the use of social media in recruiting and hiring, the protection of privacy rights, avoiding the disclosure of confidential information, controlling information affecting a company’s reputation, and the enforcement of company policies about job performance.
WITHOUT ADEQUATE PROTECTION, TRADE SECRETS, THE LIFE BLOOD OF BUSINESS, ARE ALWAYS AT RISK. Unlike other types of intellectual property, companies often overlook trade secrets because their creation and very existence depend upon secrecy, but they are not publicly recognized or registered with any governmental agency. Even audits of intellectual property assets can fail to adequately identify the nature and extent of a company’s trade secrets portfolio because managers and corporate counsel may not grasp them fully. Many industries depend on their trade secrets to remain competitive with their unique industry and, in certain industries, a trade secret portfolio’s value may exceed the value of a company’s trademarks, copyrights, and patents combined. However, by their nature, trade secrets are easily misappropriated because they represent nothing more than information, which can be memorized, scribbled down, e-mailed or copied onto a tangible medium and then quietly removed. Once trade secrets fall into the hands of a former employee or competitor, they can be put to immediate use and the theft may go completely unnoticed. Thus, protection strategies are even more important.
Hart King provides a wide range of legal services designed to effectively, efficiently and affordably provide critical protection and enhancement for your intellectual property. Trademarks • • • • • • • • • • • • • •
U.S. registrations through the U.S. Patent and Trademark Office Foreign registrations through a network of foreign legal counsel State registrations (where recognized) Trademark Trial and Appeals Board (TTAB) proceedings Due diligence and clearance reviews Watch service monitoring, analysis and counseling Usage policies and guidelines Portfolio management, usage declarations and renewals Licensing and coexistence agreements Assignments and third party transfers U.S. Customs and Border protection filings Anti-Counterfeiting strategies and enforcement Domain name disputes Cease and desist letters
Copyrights • • • • • •
U.S. registrations through the U.S. Copyright Office Author’s rights negotiations, licensing and implementation Public performance licensing Website clearance, disclosures and disclaimers Social Media protocols and enforcement Clearance and usage policies and protocols
Trade Dress • •
Enforcement strategies and counseling U.S. registrations
Trade Secrets • • • •
Corporate protection counseling and programs Employment agreements Non-disclosure, confidentiality and non-competition agreements Advisory audits
Civil Litigation • • • •
Intellectual property ownership, infringement and enforcement Unfair business practices False advertising claims Alternative Dispute Resolution, Trials and Appeals
Complimentary Continuing Education •
E-blasts, newsletters, seminars and webinars
hartkinglaw.com
4 Hutton Centre Drive, Suite 900 Santa Ana, CA 92707
p: (714) 432-8700 f: (714) 546-7457
REPRESENTATIVE CASES AND MATTERS Dave has represented a broad range of clients, large and small, in a wide variety of matters including civil litigation, involving valuable intellectual property assets spreading across industries as diverse as action sports, computer software and electronics, restaurants, shooting and firearms, real estate development and consumer products. Care Ambulance Service, Inc. v. Care 1st Ambulance, Inc. Represented the largest provider of emergency and medical transportation services in Southern California in managing and enforcing the company’s valuable trademark portfolio against infringing competitors. Aeries Software, Inc. dba Eagle Software Represented the largest student information software company in California in managing its trademark and copyright portfolios, handling corporate affairs, and negotiating and implementing a variety of complex licensing arrangements and agreements. Golden Rain Foundation of Laguna Woods, et al. adv. RRLH, Inc. Managed the trademark portfolio of the largest residential retirement community in Orange County, California and negotiated a very favorable settlement for the community in a Federal District Court action arising from the community’s licensed use of a 50 year old trademark that had become synonymous with the community. Saturdays Surf NYC, LLC Managed the substantial international trademark portfolio for a very popular brand of apparel that is sold worldwide. Club Speed, Inc., adv. Oskar Systems, LLC, et al. Successfully represented a mid-size software company specializing in resort and facilities management software in a series of Federal District Court copyright infringement and licensing cases. Affluent Target Marketing, Inc. v DLM, et al. Represented to successful conclusion the country’s largest direct mail marketing publisher in a Federal District Court action arising from an East Coast publisher’s efforts to “knock off” the client’s unique business model and breach several contracts the parties had put in place.
Airsoft Extreme, LLC. Managed the trademark portfolio, including a myriad of valuable trademark licensing agreements, and act as litigation counsel (and liaison counsel in matters filed outside California) for the largest retailer of airsoft products in the United States. Harper, et al. v. South Counties Oil Corporation, et al. Represented key petroleum executives in state court litigation arising from the executives’ lucrative employment contracts and allegations of trade secret misuse and successfully negotiated substantial settlement of the actions following arbitration. Senn-Delaney Leadership Consulting Group, LLC v. Hilco, et al. Represented a well-known executive search and leadership consulting services firm in a complex trademark ownership dispute before the Trademark Trial and Appeal Board resulting in the client’s sole ownership of the valuable marks at issue. Elite Access Systems, Inc., v. Ramset, Inc. et al. Acted as corporate counsel for the nation’s leading gate operator company and acted as trial counsel in a series of successful California state court actions based on trade dress infringement against a number of competitors who were unlawfully copying the “look and feel” of his client’s most popular products. Pep Boys, Inc. v. McDonald’s Corporation, et al. Was instrumental in obtaining California “historical site” status for the second-oldest McDonald’s restaurant (located in Downey, California) based on the unique and historic nature of its signage and décor.