Create, Consult, Control
News & commentary on intellectual property issues.
Jun172009 | Steve O'Donnell
Patenting illusions II
Do you have an illusion that could be patented? If so, should you patent it?
Magic inventions probably fall into one of two categories, gaffs and methods. Both may be patentable. The first thing to consider is whether your new illusion is really new. A new Topit design might be patentable, but stringing together an old card force with an old billet trick, even though no one has ever thought to do it in that way before, is probably not patentable. That doesn't mean that a patent for a card force is necessarily impossible, but it may be difficult to convince the patent examiner of that. On the other hand, since much of magic is not widely known, it might be difficult for an examiner to find prior art that would kill an application. Keep in mind that hiding information from the patent office may result in a patent that is ultimately unenforceable and expose you to civil liability if you try to enforce it.
If you do get a patent on your trick, what do you do with it? There are a few ways of making money from a patent. One would be if it was such a great trick that people would pay to see you perform that one trick. I have a hard time imagining an act that is one trick long, although shady mentalists have been bilking money out of people with little more for centuries. Another way of making money would be to either license the patent or to sell it outright. Licensing is really similar to what is done already under the Magician's Code model. A person would buy a packet trick and get a license to perform it. Unlike the Magician's Code model though, someone that learns the secret without paying for it may be liable for patent infringement damages and the person that shares the secret could be liable for indirect infringement.
Discovering that someone is infringing a patent is a different issue. A patent covering a intricate gaff is going to be much easier than discovering that someone is infringing a patent covering a method of performing an illusion. The first case likely would involve one of a fairly short list of companies, while the second could be someone performing at a birthday party.
Other than the money that could directly be made from a patent, there might also be a secondary value to a patent on an illusion if it increases the inventor's visibility and reputation in the community. An instructional DVD, seminar, or performance poster will likely get more attention if it rightly declares that the inventor is such a creative innovator that the US has granted a patent to his illusion(s).
Whether or not it makes financial sense to invest in obtaining a patent for an illusion is something that needs to be determined on a case-by-case basis. In addition to getting a patentability opinion from a patent lawyer, the inventor might also want to discuss the plan with a business manager.
I would love to work on magic patents. If you think you have something novel, please let me know and I'll see what I can do for you.
If you are a member of the Magic Cafe [http://www.themagiccafe.com] these is a great list there of magic patents in Secret Sessions, search for “Magic Patents - a list.” You'll need 50 valid posts, I think, to access that forum. . . which if you've read this far probably isn't a problem.
May082009 | Steve O'Donnell
Choosing a trademark
A business' identity is likely its most important asset. It embodies all of the business' accumulated goodwill and assures purchasers that new products are of the same high quality as other products sold by the business. Unfortunately, if you don't plan accordingly, you might not be able to protect your brand, or worse yet, lose money over a bad decision.
A common life of a brand name begins when the business owner first thinks of it. Sometimes it's clever, often it is <ahem> less clever. The owner then starts using the name on everything, often marking it with a trademark symbol, next comes a business bank account and an accountant. The accountant, maybe working with a business lawyer, maybe not, files the appropriate paperwork with the department of state to register the business. Any required licensing is obtained and there is a grand opening. After the initial rush of things that most obviously have to be done, comes the consideration of other things, like brand identity, that often get put off until too late.
One situation you don't want to face with your business is finding out that someone already has a trademark on the name you're using and that the money you've spend on logo/web design, business cards, stationary, signage and advertising would have been better spent building a nice, warm fire. If that's not bad enough, if you're using a name that someone else has registered, you might find yourself on the receiving end of an infringement lawsuit. Neither is good for a new business' bottom line and can fairly easily be avoided for a fraction of what it will cost to clean up a mess.
When I'm working with entrepreneurs on their startup companies I recommend that they select creative trademarks, I prefer to see marks that have no relation to the products or services that are being protected. The rationale for that is simple, if the mark has no obvious connection to the product then the chances of someone else already using it is slim. I also like to see marks that are nonsense. That further increases the chance of the mark being unique and it also helps with the chance of getting a good domain name as well as a few variations on the domain. Also, the more abstract a trademark is (as opposed to it being more descriptive of the goods), the stronger the trademark will be.
One of the first thing I suggest to people is that they find out if the domain they would like is available. If it is, great, register it. If it isn't, then the question is if the business will be adequately served with some strained variant of the desired URL. If “[business name]” isn't available will “[business name][state]” or “[business name]'online'” be adequate? The answer to that depends, to some extent, on what the plans are for the business and how much internet marketing the business requires.
I prefer to get the domain name first because there are a number of businesses in the business of grabbing domains and reselling them to someone that will actually use them. For that reason, type the URL you want into your browser's URL bar and DON'T use a registrar's search to find if it is available. Also, since the internet is such a pervasive marketing tool, if the proposed mark hasn't found its way into a URL, the chances of it being successfully cleared are probably pretty good.
Once the URL is purchased then comes the actual trademark search. What steps your attorney needs to do differs on whether you need a state or federal trademark as well as on other considerations. If you have no plans of doing any business across state lines, then a state search might be all you need. If you plan to offer your wares across the country, then a federal registration is more useful. The internet has enabled just about everyone to operate in national and international commerce, so federal registrations are becoming more prevalent then the were a decade or two ago.
Once the trademark search is done, and your name is “cleared,” get a trademark application on file and start using it as soon as you can. If things go well, you'll have clear ownership of your trademark all across the country and your brand's reputation will be secure.
The best way to ensure that your brand is really yours is to engage a trademark attorney as soon in your business planning as feasible.
Of course, things don't always go according to plan, and sometime. . . too often, a business will invest in branding itself and start operations without considering that they might be stepping on someone else's toes. Also, there is a possibility that a search will miss something, after all it is impossible to prove a negative. Thankfully, that doesn't necessarily mean that all is lost, but ways of working through that will have to wait for a another post on another day.
Apr272009 | Steve O'Donnell
Copyright issues for freelance web designers
By it's nature, web design is well suited for freelance work. Unfortunately, many freelance developers use form contracts that may giving away more than necessary.
I have a small stack of web dev form contracts that I've collected over the past few years. I've been able to divide my sample contracts into two piles: Those I wouldn't sign as a developer and those I wouldn't sign as a client.
Those that I wouldn't sign as a developer have broad intellectual property grants. I have one that grants all intellectual property rights to any work done pursuant to the development agreement. Taken on it's face, that could mean that the client owns all the copyrights to the final design AND draft designs that were rejected. Additionally, the client could prevent the designer from showing that job as part of their portfolio. Another possibility is that the client could also sue the developer if the developer designs a similar logo for another client.
In the other stack are contracts where the designer retains complete control over the copyrights but grants the client a license to use them. Those contracts usually do not mention a grant to use the designs in other promotional materials and something about what happens if the client's business is sold. If it isn't clear that the client can transfer the license that might be a sticking point in negotiations to sell the business. If I was having someone design a logo for my website, I would expect to be able to use the same logo on business cards, brochures, ads, etc, and be able to transfer the design with the business.
The form contracts I've seen fail to address the very real possibility that the copyright will be infringed. The owner of the copyright is the one that can enforce it. If the developer owns the copyright, the client can't enforce it on his own against a third party. Similarly, if the developer transfers the copyright to the client, then the developer is unable to enforce the copyright against someone infringing it. The problem with this situation would occur if either the developer or the client didn't care about the infringement for whatever reason, but the other party to the contract does care and wants to enforce the copyright.
I have yet to see a freelancer's form contract that addresses the possibility of a design patent coming out of the job. What would happen if the developer granted a full copyright assignment to the client, but separately patented the design? I'm not sure of the answer, but it is something to think about.
What is a better solution? The answer to that depends on what both parties want out of the transaction. Usually, both parties want the ability to enforce the copyright and to fully be able to use it themselves. That is probably not possible in most cases.
Contracts are a formalization of an agreement reached after a negotiation. If both parties simply sign a form purchased from an office supply store, a form neither party really understands, both parties are doing themselves a disservice. The better approach is to engage a lawyer that's looking out for your interests in the transaction and can advise you on potential pitfalls that a person working the register at the office store can't do.
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