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March 24, 2022 Shownotes:

What drives the most valuable businesses on the planet? It’s typically not their real estate or their tangible assets. It’s their intellectual property. In that light, protecting your brand shifts from a “to-do” to a “must-do today.” Attorney Andy Nelson shares how to be proactive in keeping your intellectual property safe from something as small as a social media post to something as large as your brand’s identity with a trademarked name, logo or slogan.

Rochelle Reiter: [00:00:00] This is The 19 a podcast that delivers marketing insights from Orange Label in 19 minutes or less. This year, the agency is celebrating 50 years of working with established brands that are driven by a fearless entrepreneurial mindset. What does this mean for you? It means enriched conversations and stories with marketing and leadership experts aimed at improving lives.

Rochelle Reiter: [00:00:28] Hello and welcome to The 19: Entrepreneur Edition! I’m Rochelle Reiter, President of Orange Label. Today, we’re talking about something that every entrepreneur can benefit from, and that’s learning more about intellectual property rights. The World Trade Organization defines intellectual property as “the rights given to persons over the creation of their minds.” Understanding intellectual property is a key part of being able to protect your brand and its exclusive identity. Here to share more about intellectual property from copyright and trademark protection to copyright infringement is attorney Andy Nelson. With decades of experience representing clients in business, commercial and intellectual property matters, and his clients have ranged from the food and beverage industries to advertising, technology, apparel and more. Andy, welcome to The 19. We’re so excited to have you here today.

Andrew Nelson: [00:01:18] Oh, thanks Rochelle. I’m excited to be here!

Rochelle Reiter: [00:01:24] So tell us about your background as an attorney and your specialty.

Andrew Nelson: [00:01:29] Okay. Well, I’ve been doing this 20 years now. I started out up in the Bay Area, Silicon Valley, I guess, to be accurate. I came down here in 2003 and I’ve been practicing in Orange County ever since. I guess I’d put it in two categories what I’ve been doing my entire career one dispute resolution and avoidance for businesses. So that is garden variety problems that crop up to full fledged raging lawsuits, anything in between. I do help businesses try to avoid narrow and and resolve their little dust ups that that occur. And then on the other part of what I do, which kind of emerged out of my dispute resolution in the intellectual property arena, is developing a transactional counseling prosecution, if you will, intellectual property practice. And that I’ve built up over the last number of years. So I love getting in there and helping businesses understand what they have in terms of intellectual property, putting boundaries around it, identifying it and helping them exploit it and then helping them enforce it.

Rochelle Reiter: [00:02:27] Why is protecting intellectual property so important for brands?

Andrew Nelson: [00:02:32] Simply put, it’s it’s an asset so much like, you know, a business’s personal property. It’s, you know, it’s desks and inventory and things like that. And it’s real estate, which may be actual real estate holdings. It may be a leasehold, whatever it is. People understand those assets, these more intangible things. They’re treated like property in the law. But a lot of folks don’t understand that it’s treated like property. And the thing is, I think just about any business is going to have something, some kind of intellectual property that’s an asset for its brand. And, you know, the gates are kind of left open a lot. And in some cases, it may not be the most important asset for business, but it is a valuable asset that’s, you know, when you go to exit or otherwise depart your business, it’s part of that value. Sure. And for some businesses, it will be the most valuable asset. I mean, if you think about the most what you consider the most valuable businesses or companies on the planet, their value is largely driven by their IP. Yeah. Not the other stuff. Not the real estate and not the personal property.

Rochelle Reiter: [00:03:30] Sure. It’s interesting that many brands don’t get that.

Andrew Nelson: [00:03:32] Yeah. And it’s it’s just not intuitive.

Rochelle Reiter: [00:03:35] Right.

Andrew Nelson: [00:03:35] You know, I mean, I think we all grew up thinking, you know, you see something physical and you can say that’s mine. You know, understand holding it or taking possession of it as ownership and you know, how to keep other people away from it and kind of maintain your ownership. But these intangibles, it’s just it’s just not intuitive you have to learn it.

Rochelle Reiter: [00:03:51] What do you find that most businesses don’t understand about intellectual property rights?

Andrew Nelson: [00:03:58] The rights themselves. Simply enough. I think most people I mean, I kind of alluded to it a moment ago. I think a lot of people I mean, I’ve seen over the years, people kind of get this idea that if they think of something or develop something, they have a sense of ownership. As in it’s mine, but they don’t they don’t understand really the contours of of what the law kind of lays down for different types of intangibles. Some things just aren’t protectable.

Rochelle Reiter: [00:04:25] Yeah.

Andrew Nelson: [00:04:26] And they’re just in the public domain, even though you may have this innate claim to ownership over it.

Rochelle Reiter: [00:04:31] Like, that’s my idea!

Andrew Nelson: [00:04:32] It’s mine. That’s mine. I thought that up 50 years ago. No one can use it right now. Well, it’s not that simple. So it’s really constructed. I mean, I guess even real estate law and personal property law that’s constructed as well. But these are more recent in the grand scheme of things. And so just not understanding what I see over and over again is just not understanding the different types of law, different columns that exist or buckets, if you will, and how different things that people conjure up either get placed in one bucket over another, which comes with its own rights obligations, and when somethings go in the public domain or there’s no way to protect this bucket.

Rochelle Reiter: [00:05:06] Sure, sure. So at what stage do most of your clients come to you? In other words, is it a proactive approach or is it oh I’ve got a problem?

Andrew Nelson: [00:05:16] Certainly, it’s a mixed bag. I will say this on the dispute resolution side I talked about earlier, it’s often reactive.

Rochelle Reiter: [00:05:22] Yeah.

Andrew Nelson: [00:05:22] You know, it’s it’s often either they’ve, you know, received a salvo or they’ve already launched their own salvo. And then they think, okay, I need to get you involved. And things are already on the rails in some fashion. On the intellectual property side, I would say I think it’s a bit more proactive, although not entirely. But but I do enjoy that when people come to me at the very beginning before they’ve done something, launch missiles against somebody else or started using their IP because in some scenarios using your IP, exploiting it, trying to gain value from it may be great in the short term, but you may actually miss some crucial deadlines. This comes up most in the patent area, as in if you start publicly disclosing what your invention is, you start using it, selling it, maybe showing it off at trade shows. If you don’t apply for patent protection within a certain period of time and it’s typically one year from disclosing it, you can’t ever do it. It’s out in the open. All your IP is out there for everybody else to use.

Rochelle Reiter: [00:06:17] Yeah. So what do you recommend as effective strategies for trademark and copyright protection for brands?

Andrew Nelson: [00:06:25] Okay. So those are two different things when it comes to trademarks. Specifically, two things are huge. One, clearing it, making sure that what you want to kind of adopt as a brand identifier for you or multiple identifiers, maybe a name and maybe a logo as well, maybe a slogan. On top of that, you want to make sure that no one else is in your space using something similar or the same for a similar industry, similar goods, something along those lines. There’s some other considerations, but those are the two big ones. You want to make sure that no one else is there, you know, and you decide to adopt something. And next thing you know, you’re getting a cease and desist letter after you’ve invested in your new brand identity. That’s no good. So clearing it is great. And similar to that with copyrights, that’s a different kind of intellectual property. What you want to make sure is that if you’re using somebody else’s, for example, you want to make sure you’re clearing it. And beyond that, you want to make sure if you’re creating something that you really think about what your source of inspiration was, because your source of inspiration may be somebody else’s property. And next thing you know, if yours is substantially similar to that other property, you might be committing copyright infringement.

Rochelle Reiter: [00:07:27] Okay.

Andrew Nelson: [00:07:28] So you really want to know where you’re getting something or if you’re in an organization where those who create for you are getting their inspiration. Those are two big ones. And that’s at the very beginning, you know, clearing. And then beyond that, of course, there’s additional strategies to protect your own property. But first thing is clear it. Make sure you’re free to operate.

Rochelle Reiter: [00:07:45] Mm hmm. And do you do that upfront work for your clients?

Andrew Nelson: [00:07:49] Yeah, we do. We do that and also help. I mean, a lot of people can do a lot of this on their own. So we like to help people, you know, keep their attorney bills down. The more work that they’re capable of doing and want to do, we encourage that. But we’re a good backstop. And sometimes people have their business to run. They don’t want to you know, they don’t want to do that. So we can certainly help out with that.

Rochelle Reiter: [00:08:07] Okay, great. What recommendations do you have for brands when it comes to using photography, music and different things like that that they’re combining for a particular marketing asset?

Andrew Nelson: [00:08:20] Yeah, this is a danger area for sure, and this is a subject of a lot of calls and emails I get over time. You know, using photos on websites or sinking music with you name it, you know, the video would have you.

Rochelle Reiter: [00:08:33] Sure.

Andrew Nelson: [00:08:33] The dangers are you’re talking about most likely using someone else’s property or someone else’s creation. And if you are if you’re not in control, if you didn’t create the content yourself, you got to really know where it comes from. You know, you may be using other’s content, but it may be extremely old. Maybe that’s in the public domain if it’s that old and I mean old, old, old. And, you know, it should have ragtime music attached or something that old. But if it doesn’t, you really want to know where it comes from. Copyright infringement in particular can be particularly onerous. And these are kind of strict liability type regimes, so to speak. So, you know, the I didn’t know kind of excuse might help a little bit, but it’s generally not going to help on liability. So when you’re using other’s content, you want to trace it, make sure you know where it’s coming from, and then if it in fact is someone else is do your due diligence to make sure that it’s one free to use as maybe it’s in the public domain for any number of other reasons. Maybe it’s super old, or if you’re using it, it comes from somebody else. Ensure that they’ve got the rights to then give to you.

Rochelle Reiter: [00:09:29] Sure.

Andrew Nelson: [00:09:29] Which may be kind of tracking the right agreements along the way to make sure they have a license to use, or if they’re the original creator entering into your own, you know, right to use your own license or otherwise get permission to use it. So just have that peace of mind that you’re just not going to be surprised by something you don’t want to be surprised by.

Rochelle Reiter: [00:09:45] Sure, sure.

Andrew Nelson: [00:09:46] But when music yeah. Music and photography especially, those are so easy to snap up. And the myth I hear over and over again is it was on the web, so I thought it was free to use, you know, that kind of thing.

Rochelle Reiter: [00:09:56] And that doesn’t hold up, right?

Andrew Nelson: [00:09:57] It does not hold up. No. You might get lucky once in a while, but more often than not, no. You’re going to get some kind of communication.

Rochelle Reiter: [00:10:05] So with the rise of social media, what are the legalities surrounding audio clips like on TikTok and Reels for Instagram?

Andrew Nelson: [00:10:14] This is, I think evolving all the time. But and if my info is out of date, I don’t think it is. Somebody can chime in when it comes to TikTok and Instagram. They have their own licenses already built in. They’re already in place with a lot of artists or publishers out there. So if you create, you know, a TikTok video or with Instagram, I got to get this right here, not a post, not IGTV, but a story or a real you’ll have the music option available. Those licenses are already grabbed up by Instagram and TikTok. So if you use or incorporate that music, you should be good to go.

Rochelle Reiter: [00:10:48] Okay? Yeah.

Andrew Nelson: [00:10:49] Using your own would be okay. Grabbing music and using an outside app to integrate it if you have the permissions could be okay, but you might get pulled if you want to use music that’s not in those in-app libraries, you’re going to have to negotiate.

Rochelle Reiter: [00:11:01] So it sounds like it’s good to go as long as it’s already in the library that’s on TikTok or Instagram?

Andrew Nelson: [00:11:07] Should be for, yeah, for those particular uses. Yes.

Rochelle Reiter: [00:11:09] Great! What are the legal implications of using images for memes in your brand posts for social, do you know?

Andrew Nelson: [00:11:16] Yeah. Another another mixed bag. A little complicated. When you talk about using memes, you’re talking about using someone else’s visual content, someone’s visual art or audio visual, I guess photography or what have you video, someone else’s content. And this is where you probably hear a lot of people say, Oh, I’m just I’m making something cute or funny and it’s fair use for me to do. So that’s a brush that gets kind of used quite a bit and maybe inaccurately. You talk about using someone else’s content. Yes, you may be able to use that content without permission and protect yourself or I guess, or tuck yourself under this claim of fair use. But that can be a bit dangerous, fair use. There’s a lot of considerations that go into it. There’s no easy check the box, check this box, check that box. And I’m in a safe harbor.

Rochelle Reiter: [00:11:57] Yeah.

Andrew Nelson: [00:11:58] It’s hard to figure out. So I think the most frequently used label, if you will, that might tuck someone under fair use would be to create parody or commentary. And memes often do that. Yeah. Names are sometimes they’re just funny and satire. They’re not necessarily commenting on the image itself or the audio or potentially even a trademark. You know, when you have a, like the Polo logo and you have like the rider being bucked off or something like that, that makes fun of the logo itself. That’s probably and I’m saying this, you know, with big finger quotes around, that’s probably fair use because it makes fun of the mark itself. It’s just not using that mark in some other fashion that doesn’t make fun of it or, you know, that’s on the trademark side. But other imagery, it’s unclear. Now, I will say this, there’s probably a lot of copyright infringement, a lot of trademark infringement going on with memes all the time. A lot of brands or creators of the content just don’t care.

Rochelle Reiter: [00:12:48] Yeah.

Andrew Nelson: [00:12:49] You know, sometimes they do take ownership over their their properties, but sometimes it’s, you know, this doesn’t reflect poorly upon me. It doesn’t hurt my business, it brings attention to me. And so I’m not going to do anything about it, even though they might. So it’s a bit of a dangerous game using these memes, but it’s hard to give anyone any. Here’s your one step and you’re free and clear.

Rochelle Reiter: [00:13:08] Yeah, clear cut answers.

Andrew Nelson: [00:13:09] It’s hard to do that. But I will say if you see a lot of folks using the same meme over and over again, even in a commercial sense, you could probably draw some conclusions about the intentions of the owner of that property, whether they are enforcing it. If you haven’t heard stories about other people being receiving the cease and desist letters, that kind of thing, that might indicate something. But that’s not great legal advice.

Rochelle Reiter: [00:13:29] Right?!

Andrew Nelson: [00:13:29] I mean, that’s it’s a risk assessment.

Rochelle Reiter: [00:13:31] Yeah. Are you seeing more cases involving social media or now that social media is just pretty much mainstream? There’s is there not much?

Andrew Nelson: [00:13:40] I’m sure there is a lot, but I don’t track every district court across the country.

Rochelle Reiter: [00:13:43] Right, right.

Andrew Nelson: [00:13:44] But I don’t see a lot. I mean, you know, a lot of these things would tend to make the news when they occur. There was one in the last few years that involved user generated content. You know, someone posting all their own content on, say, I think it was Instagram in particular. And then that content got used by a third party or sponsor or somebody else affiliated with Instagram. And of course, that author was not happy about that. But if you look at the terms of use, Instagram’s terms of use at the time, by having a public account like that, you are agreeing to anything you post could be used. I don’t say by anybody. It’s a little tighter than that, but it could be used by others in many ways. And you were giving permission.

Rochelle Reiter: [00:14:20] Yes. By posting it, right. Yeah. I think you just covered the next question, which was legal issues with reposting public content. So do you have anything to expand on there?

Andrew Nelson: [00:14:30] Sure. Sure. If you are a user of a platform, you know, some social media platform, the terms and conditions or terms of use are there for you to find. Go look for them or you don’t have to go on the platform. If you just go on your search engine and terms of use for Facebook or Instagram, you should get taken to those terms of use. However, make sure that you’re in the right country. Some will say this is for Ireland or whatever and that could change. Make sure it’s where you are and then understand you’ll understand your rights and obligations regarding your own content that you create, which also give you insight into others content. Because if you’re using others content, it’s maybe their property. So if they’re writing something, posting something that technically could have copyright protection, but they create that. But by posting it on, say, Instagram, stick with Instagram for the moment, they may very well be agreeing that others may use their content for certain purposes. And frankly, you know, this is one where I don’t hear, you know, a lot of complaints and gripes going around. Now if somebody posts, you know, a major piece of work that’s kind of their business, you know, their novel or their serial novel or what have you or their music over and over again. They’re probably not going to take kindly to others. Reposting it wholesale may or may not. If they’re getting promoted, they may like that. But if someone’s using it to then promote some other commercial venture or what have you, that owner may not like that. Now that may be okay depending on the terms of use of the platform. We want to look at those. But even if it’s okay, you know, do you want to get slammed on social media for doing that, for maybe not doing the moral thing or.

Rochelle Reiter: [00:15:57] Yeah, is it…

Andrew Nelson: [00:15:58] Being accused of you know, the immoral thing, that sort of thing. There is a lot to watch out for too.

Rochelle Reiter: [00:16:02] For sure. For sure. If there was one strategy you would want to recommend to businesses to protect themselves and their brand, what would it be?

Andrew Nelson: [00:16:10] In order to be able to put fences around it? To enforce it, you have to know what you have. So my big strategy is educate yourself, learn what you think you might own or you might have. It’s kind of an audit, like a self audit, self inventory. What do I have? What do I think is my property? What do I think of, you know, if I create it in terms of audio, visual content, brand identifiers, you know, my slogans, my color combinations, what have you do? I have inventions. Do I have secret sources? You know, that might.

Rochelle Reiter: [00:16:36] Yeah.

Andrew Nelson: [00:16:36] Protectable trade secrets. What do I have? Let me try to really define these. Let me write them out. And then you can kind of figure out, okay, well, this is best protected. This is probably a trademark law that, you know, that shrouds this. This is probably copyright law. If anything, here’s my invention. If anything, if it’s information based, maybe it could be a trade secret. Maybe it’s a patent. If it’s a physical device, probably only going to be a patent. If anything, once I really know what I have, then I can ask the right questions about protecting it, whether I have a real fence around it, and then I can figure out what are my ways to strengthen it and enforce it. But all these other things enforcing it, I mean, I see these sorts of, you know, flying emails all over the place or letters cease and desist letters where people don’t have any rights at all.

Rochelle Reiter: [00:17:15] Right.

Andrew Nelson: [00:17:16] I’m dealing with one of those right now. Someone is you know, someone has what we call an intent to use trademark application and someone else is using what this other person’s hoping to adopt at some point in time is using it now. But the person who’s complaining is saying, I have a trademark. Well, they don’t and they don’t have a reservation. And they it may mature in one, but it could very well be that they’d never put it into use. And if they never put it into use, then there’s not going to be a trademark there at some point. So this is where I see people slinging letters and season assists, you know, this kind of area of law without really knowing what their rights are and their obligations. And this boomerangs a lot, sometimes probably the trademark arena the most, where you see letters or emails, you know, Facebook messenger or whatever. Someone says, you can’t you know, you can’t use this, you can’t do that. And come to find out, well, I’m glad you sent this to me, because I’ve been using this ten years longer than you, and thanks for making me aware of it, you know?

Rochelle Reiter: [00:18:06] Right.

Andrew Nelson: [00:18:06] And so it goes back the other direction. So that happens a lot, probably more so there than anywhere else.

Rochelle Reiter: [00:18:12] Yeah. Well, it’s definitely something for brands to consider. And I really appreciate you sharing your insights and thoughts on the topic. Thank you so much for being with us today.

Andrew Nelson: [00:18:23] Thanks, Rochelle! I enjoyed it.

Rochelle Reiter: [00:18:30] Thank you for listening to The 19: Entrepreneur Edition with attorney Andy Nelson. To learn more about Andy’s services and how he helps businesses protect their brands, visit fortislaw.com/attorney or join his private Facebook group at Facebook.com slash groups slash Defending Your Brand. If you have additional thoughts on the topics we discussed today, send us an email. You can send questions, comments and more to info@orangelabeladvertising.com.

Rochelle Reiter: [00:19:00] A special thank you goes out to our contributors Senior Studio Manager Kelsey Phillips, Micah Panzich, who edits our show, and Ashley Ruiz, Senior Content Writer. Be sure to subscribe to The 19 on Apple Podcasts, Google Play and Spotify, and if you like what you heard today, leave us a review!

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