The following is an interview with Burgin Hardin, J.D., Senior Counsel, Boy Scouts of America National Council for my Entrepreneurial Innovation graduate course. Burgin and I once worked together and I value his guidance and opinions on licensing law, intellectual property, and frankly, about everything else.
Q. Tell me a little bit about your background (education and experience). Where are you working now and what are your primary responsibilities? How did you get started in the particular area of Intellectual Property (IP) law?
A. I graduated from Davidson College and earned my law degree from Wake Forest University. Currently, I am an in-house attorney for the Boy Scouts of America, with a focus on IP protection and enforcement and commercial contracts. I got my professional start in IP at the BSA, where I began my career as a compliance specialist for BSA’s trademark licensing business. In that role, I helped manage and enforce the BSA’s trademark license agreements.
I must say this at the outset: These remarks are for general information purposes only and are not intended as legal advice. Anyone seeking legal advice should consult with his/her attorney (and that is not me!). Also, these comments reflect my personal views and not those of my employer.
Q. Might you share with me the different types of intellectual property and how they are used? In other words, what’s the difference between a copyright, a trademark, and a patent?
A. Copyright protects the particular expression of an idea and covers tangible media in which that expression is fixed—e.g., a book, a musical work, a film, software code, etc. Patents come in three “varieties”: utility patents, design patents and plant patents. Utility patents, the most common type, cover new and useful processes and machines. Trademarks identify the source of a good or service and distinguish one person’s goods and services from those of another.
The purpose of copyrights and patents, which are directly authorized by the Constitution (Article 1, Section 8, Clause 8), is to advance innovation. Copyrights and patents provide authors and inventors an incentive to innovate—that incentive being, exclusive control over the use of their works and inventions.
On the other hand, trademarks are rooted in consumer protection (and date back to the Romans). A trademark signals to consumers that the good or service sold under that mark embodies certain qualities, a fact that the consumer relies on when making a purchase. The U.S. federal statute governing trademarks is known as the Lanham Act, and most states have their own trademark protection schemes within their own borders.
Q. In your opinion, what are some of the biggest misconceptions individuals have about the different types of intellectual property?
A. People often mistakenly conflate copyrights and trademarks, but they represent separate and distinct IP rights. Copyrights and trademarks serve different purposes, protect different interests, and are enforced differently.
Another misconception: In the U.S., a person must register his trademark with the government to have a protectable mark. To the contrary, in the U.S., trademark rights are based on use, not registration. Thus, a person can have a protectable trademark in the U.S. based on his prior use, even if he has not registered the trademark. Registration has benefits in terms of enforcement, but it is not necessary to obtain trademark rights.
Q. How does the application of laws surround intellectual property differ from country-to-country?
A. This could be—and is—the subject of entire books. One example of how IP laws different from country-to-country is the first-to-file versus first-to-use trademark schemes. As I mentioned, the U.S. operates on a first-to-use basis—meaning, the first person to *use* a mark is the presumptive owner of the mark. In first-to-file countries, which are the majority, the first person to *file* a trademark registration with the government is the presumptive owner of the mark.
What are the implications for IP holding U.S. entrepreneur who might decide to produce products off-shore? For example, what might be the primary challenges for an artist who owns a copyright on a print pattern for fabric, or the holder of an apparel-based brand trademark, or the owner of a patent for a medical device who manufacture product abroad?
Entrepreneurs should be mindful that the protections afforded their IP in the U.S. will not necessarily extend to other countries. For example, a person with a U.S. trademark should not rely on her rights in U.S. to protect the mark in other countries where the mark is used. Entrepreneurs should consider all the ways in which their IP will be “in play” in other countries—e.g., as part of a manufacturing process, on display in advertisements, broadcast or distributed to the foreign audience—and develop a tailored IP protection strategy for each country.
Another practical consideration is, who has access to the IP? In my opinion, one of the most effective ways to protect one’s IP, especially in a foreign jurisdiction where navigating the legal system might be a challenge, is to entrust one’s IP only to vendors, suppliers, and partners who are reputable and reliable. In other words, do your homework on your potential partners and become familiar with where, how and by whom your IP will “in play.”
Q. New entrepreneurs often launch a business based on an invention. Have there been any changes or pending changes in U.S. patent laws in recent years? If so, what are these changes and in your opinion how might these changes impact the inventor and his or her ability to build a viable venture around an invention?
A. The America Invents Act of 2011 (AIA) essentially overhauled the U.S. patent system by moving to a first-to-file system, establishing procedures to help accessed patent infringers contest weak patents, and changing some of the standards for obtaining a patent. Commentators have described the AIA as the most comprehensive patent reform bill since the 1950s.
Q. How do you think entrepreneurial innovation, in general, might be affected by changes in patent laws?
A. I am far from an expert on the AIA. But based on the commentary I’ve heard from those who are experts, the AIA is intended to reduce the threat of patent infringement litigation by non-practicing entities (NPEs or, derisively, “patent trolls”). For NPEs, patent enforcement is a business in and of itself, not a means of driving scientific progress. For some inventors, the cost of facing an NPE in litigation outweighs the benefits of innovating. The AIA aims to address that imbalance. If NPE’s patent enforcement activity has had a chilling effect on innovation, as many experts believe, the AIA’s reforms should help reheat inventors’ engines.
Q. What’s the most novel (humorous, interesting, etc.) thing you have read about that someone has tried to protect under IP laws?
A. There are a lot of stories to choose from. One interesting and relatively recent IP spat involved CBS, Comedy Central, Stephen Colbert and … Stephen Colbert (the character). It wasn’t surprising for a production company, such as Comedy Central, to assert ownership of the characters and “bits” featured in its shows. But the way (the real) Stephen Colbert exposed the issue and tried to workaround it was entertaining. Here’s a recap of the whole brouhaha: https://consumerist.com/2016/07/28/stephen-colbert-says-comedy-central-unhappy-with-cbss-use-of-stephen-colbert-so-he-introduces-new-stephen-colbert/
Q. What are a few of your favorite resources for IP information?
- Eric Goldman’s Technology and Marketing Law Blog (http://blog.ericgoldman.org/) is a great resource. Eric Goldman is a professor at Professor of Law at Santa Clara University School of Law.
- Law360.com is another great resource. Law360 is a LexisNexis company.
- The international law firm Foley Hoag publishes a well-written and informative blog on trademarks and copyrights: http://www.trademarkandcopyrightlawblog.com/
Q. What advice might you offer to an entrepreneur who believes he or she has IP that should be protected?
A. Seek legal counsel from an attorney specializing in the type of IP that you need to protect, and consider the legal fees a capital investment in your business. When creating your IP protection strategy, consider all the jurisdictions in your supply chain, not just the end market where you intend to distribute or publish your product. And look at your IP protection strategy over the long term, bringing to bear all three IP disciplines—copyright, trademark and patent law—to protect your business over time.