Presentation to PRSA’s Counselors Academy Forum
SAFEGUARDING YOUR AGENCY’S BIG
IDEAS: HOW TO PROTECT YOUR
INTELLECTUAL PROPERTY IN THE
NEW BUSINESS PROCESS?
September 30, 2014
Michael C. Lasky
Public Relations Law Chair/
Litigation Practice Group Co-Chair
212.468.4849
mlasky@dglaw.com
© 2014 Davis & Gilbert LLP
INTRODUCTION
»Basics of Intellectual Property Law
»Intellectual Property and the Agency/Client
Lifecycle
- Protection of Agency Speculative Creative Work
for Prospects
- Negotiating the Intellectual Property Provisions
of an Agency Client Agreement
- Protection of Agency Speculative Creative Work
for Clients
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
WHAT’S AN IDEA
WORTH?
3
Agency Intellectual Property Workshop
$30.1 MILLION
$12 MILLION IN INTEREST
THE BASICS OF
INTELLECTUAL PROPERTY
LAW
COPYRIGHT
»Copyright protects “original works of authorship”
which includes text, music, art, drawings, dramatic
works, sculptures, books and photographs
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
COPYRIGHT
»Copyright protects the “author” of the work
»Copyright provides the author of the work the
certain rights including:
- The right to reproduce
- The right to prepare derivative works
- The right to distribute copies and
- The right to display work publicly
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
WHAT’S THE DIFFERENCE
BETWEEN AN “IDEA” AND THE
“EXPRESSION” OF AN “IDEA”?
»Idea:
- The brave captain of a faster-than-light starship
valiantly fought the alien race using laser
weapons in order to save all of humanity
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
WHAT’S THE DIFFERENCE
BETWEEN AN “IDEA” AND THE
“EXPRESSION” OF AN “IDEA”?
»Example 1: Expression of the Idea
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
TRADEMARK
»Trademark protects names, titles, short phrases
and other symbols that distinguish the source of
one product from another
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
11
Agency Intellectual Property Workshop
TRADEMARK
»Just Do It
»Think Different
»A Diamond Is Forever
»Got Milk?
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
HOW INTELLECTUAL
PROPERTY RIGHTS
RELATE TO THE AGENCY /
CLIENT LIFECYCLE
THE AGENCY CLIENT LIFECYCLE
»Speculative Pitches for Potential Client
»The Agency Client Agreement
»Speculative Pitches for Existing Clients
»Ending the Agency Client Relationship
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
SPECULATIVE PITCHES
FOR POTENTIAL CLIENTS
»What’s protected by intellectual property laws in a
firm’s pitch materials?
- The entire deck is protected by copyright
• Images
• Copy
• Individual components, such as examples of
client marketing materials
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
SPECULATIVE PITCHES
FOR POTENTIAL CLIENTS
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Agency Intellectual Property Workshop
SPECULATIVE PITCHES
FOR POTENTIAL CLIENTS
» Individual components can be
protected
- This “Let it out” advertisement
is protected by copyright,
including the image, layout and
copy
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
SPECULATIVE PITCHES
FOR POTENTIAL CLIENTS
»Set dressing for the
“Let it out” lounge is
protected by
copyright
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
SPECULATIVE PITCHES
FOR POTENTIAL CLIENTS
» Pitch materials will likely
include a recommendation
of a logo, tagline or other
trademark:
- Remember, trademark
protection does not arise
without use, so there is no
trademark protection of the
tagline “let it out” at the point
of presentation. However, protection
could be obtained in other ways
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
SPECULATIVE PITCHES
FOR POTENTIAL CLIENTS
» How can you protect your pitch materials that are
not protected by intellectual property law?
» Five Alternatives
MOST PROTECTION
LEAST PROTECTION
Pitch Agreement The “Elegant Email” Oral Disclosures
NDA
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Written Disclosure
Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
SPECULATIVE PITCHES
FOR POTENTIAL CLIENTS
1. Agency’s Pitch Agreement
- Most comprehensive protection
- Specifies
• Services to be rendered by agency
• Payment to agency, if any
• Ownership of pitch materials to agency
• Non-disclosure obligations of agency and
client
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
SPECULATIVE PITCHES
FOR POTENTIAL CLIENTS
2. Non-Disclosure Agreement
- We recommend that the Non-Disclosure
Agreement specify that the agency retains all
right, title and interest in and to the presentation
materials, affording similar intellectual property
protection as the Pitch Agreement
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
SPECULATIVE PITCHES
FOR POTENTIAL CLIENTS
»Beware of the potential client’s “killer” NDA and the
client’s pitch agreement
- “Killer” NDA is a non-disclosure agreement with
extra “stuff”
- Usually includes a provision transferring
intellectual property
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
SPECULATIVE PITCHES
FOR POTENTIAL CLIENTS
- Example of “Killer” NDA: WHEREAS in connection with
the request for proposal (the “RFP”), discussions and
meetings between you and Hilton regarding the
exploration of a possible contractual relationship or other
agreement utilizing your and/or Hilton’s products and/or
services (together, the “Concept”)
- All use of Confidential Information or other information
and all derivations thereof or inventions arising from
or related to the Concept shall be and inure solely to
Hilton’s right, title, interest and benefit (including all
intellectual property rights or interests relating thereto or
arising therefrom, worldwide and in perpetuity, in all media
now known or hereafter developed) ...
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
SPECULATIVE PITCHES
FOR POTENTIAL CLIENTS
3. As an alternative to a Pitch Agreement or NDA,
consider the “elegant email” solution
- You send a simple email to the potential client
regarding the ownership of the pitch materials, and
get them to agree that the agency retains the rights
- “Thanks again for the opportunity to pitch for PR
services for your new program. As we discussed, the
agency retains all rights to the materials we present,
unless we agree on appropriate compensation. I
really hope we will be doing business together”
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
SPECULATIVE PITCHES
FOR POTENTIAL CLIENTS
4. Written Disclosures
- May or may not be enforceable as a contract
between the agency and the potential client
- However, they let the client know that the
agency takes these matters, and its intellectual
property, very seriously, and may actually have
a non-legal preventative effect
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
EXAMPLE OF WRITTEN DISCLOSURE
SPECULATIVE PITCHES
FOR POTENTIAL CLIENTS
© [DATE] [AGENCY NAME]. The trademarks, trade
names and logos used herein are the property of
[AGENCY NAME]. No part of this presentation may be
used without permission. All rights reserved.
Agency Intellectual Property Workshop
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© [DATE] [AGENCY NAME]. The trademarks, trade names and logos used herein are the property of [AGENCY NAME].
No part of this presentation may be used without permission. All rights reserved.
SPECULATIVE PITCHES
FOR POTENTIAL CLIENTS
5. Oral Disclosures
- Least effective, but better than nothing
- Orally inform your audience of the protection of the
materials prior to the presentation as follows:
• Before we begin, we just wanted to confirm that
the intellectual property in the materials you are
about to review are owned by, and considered
confidential information and/or trade secrets of,
[AGENCY NAME], and may not be used without
our permission
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
IP PROVISIONS OF
THE AGENCY CLIENT
AGREEMENT
IP PROVISIONS OF THE
AGENCY CLIENT AGREEMENT
»So, your agency has won the pitch, now its time to
negotiate the Agency Client Agreement
»Four provisions of the contract relate to intellectual
property:
1. Transfer of ownership of intellectual property
2. Representations and warranties
3. Indemnification
4. Exploitation of agency’s intellectual property
by the client beyond the original scope
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
IP PROVISIONS OF THE
AGENCY CLIENT AGREEMENT
1. Transfer of ownership of intellectual property
- Ownership of intellectual property should not
transfer to the client unless and until the client
has paid the agency in full
- The agency must retain ownership of any of its
own intellectual property
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
IP PROVISIONS OF THE
AGENCY CLIENT AGREEMENT
2. Representations and Warranties
- Client will typically ask the agency to
represent and warrant that the materials it
creates for the client do not infringe on any
intellectual property rights of others
- Be sure to include carve outs from this
representation regarding situations beyond
the agency’s control
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
IP PROVISIONS OF THE
AGENCY CLIENT AGREEMENT
»User-Generated Content (UGC)
- While the collection and use of UGC is more
popular than ever, the agency does not create
the materials submitted and so does not have
any control over it
- Agency should not take any responsibility for
UGC
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
IP PROVISIONS OF THE
AGENCY CLIENT AGREEMENT
3. Indemnification
- Client will always ask the agency to indemnify
the client for intellectual property infringement
- Be sure to obtain an indemnity from the client
covering the agency for its use of any materials
or information provided by the client, including
any related intellectual property
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
IP PROVISIONS OF THE
AGENCY CLIENT AGREEMENT
4. Can the client exploit the agency’s intellectual
property beyond the original scope (… or are you
capturing all possible revenue)?
- Agency is typically only being paid for the time it
takes to create the “great idea”
- However, that time is not necessarily equivalent
to the real “value” of the ideas that are
presented
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
IP PROVISIONS OF THE
AGENCY CLIENT AGREEMENT
»Consider how creative artists are compensated in
other industries
- Music Industry
• Songwriters own the copyright in the musical
composition and lyrics
• Publishing companies administer songwriters’
publishing
• Labels own copyright in the recording
- Songwriters and artists are compensated as a
percentage of retail or wholesale sales, and in some
cases, based on the performance of the music
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
IP PROVISIONS OF THE
AGENCY CLIENT AGREEMENT
»Here are some examples of great ideas that have
the potential to generate revenue outside of their
internal marketing uses
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
38
Agency Intellectual Property Workshop
THE IP PROVISIONS OF THE
AGENCY CLIENT AGREEMENT
»Agency should attempt to capture this additional
revenue stream by getting the client to agree that
the scope of the work is for public relations
services only, and that a separate license/
agreement would be necessary for any use of the
work beyond that scope
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
SPECULATIVE PITCH
FOR EXISTING CLIENT
SPECULATIVE PITCH FOR
EXISTING CLIENT
»Has many of the same issues as a speculative pitch
for a new client, but with some twists
- Check your existing agency client agreement.
Some agreements specifically state that agencies
will not be compensated for pitches and that the
client will own the intellectual property regardless.
This is for the “privilege” of doing business with the
client
- Consider the business relationship. Will raising the
issue of ownership cause a strain?
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
SPECULATIVE PITCH FOR
EXISTING CLIENT
»Since any pitch for additional business is
necessarily outside of the scope of the existing
agreement, get the client to agree that they do not
own the intellectual property unless or until they
pay for it
»As an alternative to an amendment or separate
agreement, consider the “elegant email” solution
again
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Safeguarding Your Agency’s Big Ideas: How to Protect
Your Intellectual Property in the New Business Process
QUESTIONS?
Michael C. Lasky
Public Relations Law Chair/
Litigation Practice Group Co-Chair
212.468.4849
mlasky@dglaw.com
43
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