Protecting Your Intellectual Property

In Partnership With WSJ. Custom Studios

People working in creative fields should heed this advice to maximize the return on their ideas and inventions while protecting their vision.

“Saul" is the largest ball of stickers in the world. This brainchild of the folks at StickerGiant, a $10 million label and sticker manufacturer in Longmont, Colorado, was conceived as a way to celebrate America's first-ever National Sticker Day (also conceived by StickerGiant). It took months to build, with employees taking Saul home for long weekends and working on it in the office in teams. Proudly, they rolled the 231-pound, nearly 9-foot-around behemoth into the record books — and on to attention-grabbing headlines and late-night talk show sound bites.

“We have people randomly showing up from as far as the East Coast just to see Saul," says Jesse Freitas, marketing director at StickerGiant. The increasing popularity has even led the company to want to register its tagline: “Every Sticker Has a Story."

“Right now, we're putting it through the trademark process," Freitas says. Recently, he found a customer using the tagline on a website — to sell stickers bought from StickerGiant. “We don't mind that," he says, happy to spread the news about the stickers, labels and logos that businesses keep coming back for. “But we have seen other companies saying 'every fill-in-the-blank has a story,' and it got our marketing team thinking about preventing someone from stealing our specific tagline, because it means something to us."

It's typical for companies to only realize they should get a trademark, patent, copyright or other legal guarantee when they reach out for financing and a lender asks, “Have you secured all rights from employees and collaborators?"

Companies that have overlooked this important step risk being unable to raise capital for further development.

“It's not for lack of sophistication," says Tom Kowalski, an intellectual property attorney at Duane Morris LLP in Philadelphia, Pennsylvania. “Rather, it's for want of focus on that detail when there are a number of other details pulling the company's focus."

Companies can also lose business to copycats and incur lawsuits when they aren't careful. In 2017, a big-box retail store was ordered to pay a high-end jewelry store millions in punitive damages for trademark infringement.

How to Hold On

Kowalski sympathizes with all manner of people working in creative fields who are trying to maximize the return on their ideas and inventions. He offers these tips to creatives who want to protect their vision as well as their bottom line:

Describe the Forest and the Trees

When applying for exclusive rights to use your creation, be both broad and specific. “Often, people craft patent applications thinking they're covering the universe," Kowalski says. “The problem is they encompass a lot of things that may not be patentable, or they write so broadly that they don't get to sufficient specifics to ensure coverage of product or claims."

Say you invent a device. You want to protect the initial technology and further development of the technology, according to Kowalski. You need to protect what you're doing now, what you envision doing in the future and what you imagine others might try to do with your device once it's on the market.

It's not necessarily that you're afraid of someone stealing your idea; it's that you want to prevent someone from legitimately designing around you because you left something on the table. “Instead, build a fence around what is niche for your company," Kowalski says.

Seek Custom Counsel

When looking for legal assistance, look for someone with a background in your field. Kowalski notes that several attorneys in his practice were once scientists, so they're more likely to understand, say, medical inventions and scientific work, particularly the distinctions that might make a device new or novel, and how those distinctions could be rendered in the future, which might not be obvious to other attorneys or even the inventor.

Protect Trade Secrets

Kowalski also recommends instituting employee agreements — guidelines that staff and collaborators must sign off on in regard to your intellectual property. “It should define the work broadly, explain that the person is hired to create this intellectual property and that as he or she creates it, it is automatically transferred to the employer," Kowalski says. He adds that from time to time you might change up the policy, but the point is for the people you work with to understand what's at stake.

When It All Works Out

StickerGiant's story doesn't end with its tagline. Freitas is also trademarking the company's unique name and logo as the sticker manufacturer expands overseas.

“Our theme is stories. Our mission is to help people tell their story, so the story factor is the heart of what we do and our message to the world. We want to make sure we protect it," he says.

As for Kowalski, he tells a story about intellectual property that unfolded right in front of him — at his own home.

A roofer came to work on his house. He had designed screws to hold gutters in place and at one point asked the lawyer to take a look at his patent application. “It looked good," Kowalski says.

A few years and one bad storm later, the roofer returned to fix the roof again. “I've gotten a lot of money from licensing my screw patents," he said. It turns out that orthopedic surgeons picked up on the screw and now use it to hold bones in place.

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