An Introduction to Protecting Your IP By David Garcia, Jr.

An Introduction to Protecting Your Intellectual Property
By David Garcia, Jr.
          I am a lawyer. This is not legal advice. Just a few thoughts on protecting one's Intellectual Property.
         A lawyer friend of mine wrote a children's book which is going to be the foundation of an IP portfolio. I'm sure he's not the only one, from the number of book launch announcements I've seen everywhere. You know the kind: a children's book with a story and characters apparently written with the hope of having them adapted into a film or TV series. There's nothing wrong with that, and I'm not here to judge them. In fact, I’m one of them, although I write YA and MG books. In his case, he's looking for a publisher, but he wants to have as much protection for his IP as soon as possible. He’s handling the copyright application himself, and that's a good first step.
          Here's what my friend, and now my client, has done. He wrote the book for a readership consisting of six-to-eight-year-old kids. It's illustrated. He's the author of the text and the illustrations, so he's an author-illustrator. In one way, that makes it easier for me because he's the copyright owner of 100% of the book's content. In other words, I don't have to worry about the other person, whether an author or an illustrator, and what rights and/or percentages of contribution the other person might claim, and whether the percentages might be in dispute, especially if they hadn’t been previously agreed to; always talk about the percentages at the beginning and sign an agreement regarding that. In this case, it means fewer documents for me to prepare.
            He also paid for a book trailer. As you know, a book trailer is a marketing tool. Here's the rub. The book trailer is a mini-movie, and it contains some of his book’s text and illustrations. From the legal point of view, in order for him to own all the rights to the book trailer, he has to have what we call chain-of-title documents even if he won’t be selling the trailer. Yes, it's a stack of documents, usually contracts. The stack of documents consists mostly of contracts signed by every person who contributed to the making of the trailer. Just like a movie or a music video made by one of my music industry clients. In this case, my client wrote the script, but if he had hired someone to do it, my client would need to have the scriptwriter sign an employment agreement in which the writer grants all rights to my client.
          Since his book trailer is animated, that means less work for him and me, which I'll demonstrate below.
         The voiceover artists will sign a contract similar to that of the scriptwriter.
         Since the animation is done with the help of an animation studio, the company that owns the studio will have to sign a contract similar to that of the scriptwriter mentioned above, but in its capacity as a company and an employer in its own right, guaranteeing that it has the rights to the labor and services of its employees and delivering same to my client.
          In my client's case, the animation studio provided both the audio and the visual elements of the book trailer. If the trailer’s audio were recorded at a sound recording studio, then the recording studio would have its own contract with my client.
        If the book trailer had been a live trailer rather than animated, it would have had actors performing, with their performances being recorded live, hence the use of the term live. Since my client is making the trailer himself, that makes him the trailer's producer. Then he, as producer, would have had to hire a casting director to help him with the casting decisions. That would have required a separate contract with the casting director, unless he/she provides his or her own contract, in which case I would simply review that contract for my client. Then I would have prepared contracts with the actors or on-camera talent. Locations also require location agreements.
          In an animated trailer as well as in a live trailer, the services of a director are required, and he or she would have to enter into a contract with the producer/author.
          Once the trailer's principal photography is done, that is, when the "shoot" or the video recording of all the performances is done, then post-production takes place.
          Post-production, or post, as we call it, involves editing, additional audio recording, graphics, titles, sound and visual effects, and whatever other needs the trailer may have. This requires a contract with the post house unless the production house or animation studio included that in its contract with the producer.
          Now that the trailer is in the can, my work as an IP lawyer continues. "In the can" is an old phrase from when movies were shot on film, and the finished and edited film was placed in cans for distribution to theaters. We still use that phrase, or some of us do. For one thing, my client needs to obtain a copyright registration for his trailer, which, in his case, might have the same title as the IP project. In other cases, it may be different; think of the Star Wars iterations.
          The next step is for the author, as IP owner, to take steps to protect his book series. It is possible for the title of a book series to be protected under the United States trademark law. An application for trademark registration is made at the United States Patents and Trademarks Office (USPTO or PTO). A title cannot be copyrighted, so there is no way to copyright a book title. If the book is already published, then the application for a trademark using the book title is made showing proof of actual use of the title in commerce, that is, across state lines. If the book is not yet published, the trademark application is made on an Intent-To-Use (ITU) basis. That means that the applicant intends to use the mark at some time in the future but is not doing so at the time of the application. Sometime after filing the ITU application, the applicant must submit proof of having used the mark in commerce. Each application has its own requirements and timelines. Each application is, to a great extent, different from every other application.
          It must be said that we always advise trademark clients to have a trademark (or service mark) search done by a law firm or company that specializes in searches. I don’t render that service. This search must be done before the book (or product of any kind) is manufactured and offered to the public. There have been cases in which everything from table games to music bands have had to change their names because someone else was already using the name (mark), which could have been avoided by having a trademark search done ahead of time. There is nothing worse than receiving a cease and desist letter from a competitor’s law firm after a lot of time, effort, and money have been spent, and now an entire print run has to be destroyed, and a project has to be renamed, with the consequential changes to marketing and advertising. Not to speak of the loss of professional standing and branding. Read this paragraph again, please.
          If the book is sold in other countries, the author will need to obtain IP protection there. His/her book publisher should be of help in this matter. Because there are copyright, trademark, and brand trolls all over the world, companies such as Disney have networks of lawyers and others who help it protect their IP, both existing and forthcoming.
          One of the earliest, simplest, and cheapest ways to protect IP is by registering the domain names of one’s brands, titles, characters, or whatever is important. One should register one’s mark with as many extensions as possible, not just the proverbial dot com, but the dot net, dot info, etc. Additional protection for your mark may be obtained by registering the plural of your mark because, believe it or not, trolls will do it if you don’t. Developing a website is a topic for others to explain, not for me. The internet is not the problem, ill-intentioned people are, although, to be fair, there are countries in which people know nothing about Intellectual Property protection, so they’ll take what they can. China is one example, and some may say, the worst. Over there, it’s not unusual to see a Volkswagen with a Rolls Royce grille or some other form of pirated products. Some of you may know about the selfie stick inventor who had his selfie sticks made in China, only to find out that someone there copied his design and was selling it over there before his was even manufactured. Don’t let that stop you from being the best creator that you can be.
          Along with a domain name registration (and timely renewal), it’s recommended that you obtain your IP pages (or servers, if that’s what they’re called) in every social network platform that you can. It’s mostly free and a bit time-consuming, but it’s better that you do it and not an interloper.
          I hope that this helps to give our readers an understanding of the protection of IP in the US.
         I am a lawyer. This is not legal advice. Just a few thoughts on protecting one's Intellectual Property.
         My thanks to our host Mark Schultz for letting me share these thoughts with you. Best of luck in your writing and creative endeavors!
 
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My landline phone number is: 210-224-2400
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