Getting Legal: Intellectual Property with Richard Gearhart

Welcome to Building Better Developers, the Developer podcast, where we work on getting better step by step, professionally and personally. Let's get started. Well, hello and welcome back. We are doing another interview. This time we're going to get legal. We're going to speak with Richard Gearhart. He is a lawyer in particular dealing with intellectual property related stuff. So things like trademarks and copyrights and patents and things of that nature. The kinds of questions that I think a lot of times we have when we're starting to get into that side hustle or build that product or even some of the source code that we've created as part of our job. Where do we go from that? What do we do? How are we protected? How do we protect our customers, our employees, our employers and employees? And how do we go about protecting our product, even if we create a product? We're going to get into all of that and more, but let's just dive right in and let Richard introduce himself. Okay, today we have a new conversation we're starting. We are speaking with Richard Gearhart and he's got some legal background. He has got some stuff that he's going to talk to us about that I think is, again, it's one of these areas where we may be very deep in our technical realm, but there are other areas of life and business that we are not usually as secure in. And we're going to talk to him about that and probably by the time you're done, hopefully you're taking notes because there's going to be some things you're going to say, oh, I need to make sure I take care of that. So I want to welcome you to the show and I want you to go ahead and introduce yourself because I'd never do near as good a job as you will. Well, I appreciate that, Rob, and it's pleasure to be here today. I'm an intellectual property attorney and so I focus on patents, trademarks and copyrights. And in addition to that, we do a lot of agreement work and our firm, Gearhart Law, has done a lot of work in the software area over the years and we've also negotiated a lot of contracts in the software space. So we know a little bit about it and it's really great to be here. I'm really looking forward to being able to share the knowledge that I've gained over the 35 years in practice and hopefully answer some questions that some of your listeners might have. So really looking forward to the discussion. Excellent. So am I. And actually, let's just right out of the gate, you hit like the top three of patents, trademarks and copyrights for the non-legal minds out there. Can you give like a sort of like an elevator speech of what are the quick sort of definition of those three things and maybe what maybe a little bit of how that applies, particularly in the software world? Absolutely. So there's really four types of intellectual property. I only mentioned three. The fourth one doesn't really come up that often, but I think I'll just toss it in there so you know about it. The first thing are patents and patents protect original inventions. So they're very technology oriented. Many of our clients either in the hardware or software realm file patents to protect software programs. So patents are very conceptual. They don't necessarily protect the exact code, but they might protect the architecture of a particular program and its outcome. And the object with software patent is always to protect as many variations on the idea as you can. So if you're writing a program and you decide to put a shopping cart on the website, somebody shouldn't be able to avoid your patent just by making that one little change. And lots of times, and we can get into this a little bit later, but it's a real challenge protecting software for a number of reasons. And part of it is just how the technology evolves over time. And so you want your patent or patent portfolio to kind of keep up with that. The second type of intellectual property that comes up a lot are trademarks. Trademarks protect brands. And so probably the most famous trademark in the world is the Coca-Cola trademark. And everybody knows that if you buy a Coca-Cola, it's going to come somehow, some way from the Coca-Cola bottling company. And so the trademark identifies the source of the product. So when a customer purchases it, they know that they're buying this product from a particular company and then it's going to have a particular quality or characteristic. So trademarks are very important because that allows people to invest in their brand, build a brand identity, and they don't have to worry about somebody else using the same name, but just for a different company. The third type of intellectual property are copyrights. And copyrights protect mostly original works of expression. So that's books, plays, movies, music, sculptures, mostly creative works are protected by copyright. Now for your audience, it also turns out that copyright protection can be used to protect software. Right. And this kind of protection mostly came up when people were selling CDs with operating systems on them. And then somebody would copy the CD on the black market and they would distribute the CD. Companies like Microsoft would file copyright applications on the CD and that allowed them to protect the technology that way. And the fourth type of intellectual property is our trade secrets. And so trade secrets are also often relied upon in the software world. A trade secret is just a secret that gives a competitive advantage. So you have to keep it secret, typically within an organization, and it has to give you a competitive advantage. So the point with trade secrets is that they really are there to protect companies from misappropriating the technology. That is leaving one company and going to another company and taking that company's secrets with them. You really can't enforce a trade secret against a company that was never involved directly with your company. So you can do that with a patent, you can do that with a trademark, but you can't do that with a trade secret. So that's kind of a summary of the world of intellectual property. I tried to relate it as much as I could to people who are developers and programmers. So that was an excellent introduction. I think that's a great little explainer for the four different types of protection. Now, I guess let's start, now we've got sort of that basis and we know what these are. Let's start with a, from an entrepreneurial point of view, where does that kick in? Because you mentioned, and I think people know, you've got Coke and you've got Nike and you've got these organizations that have spent gazillions of dollars on their brands and years and years and refining all of these. How does that, if somebody's just starting out, they've got a little company that they're starting, where does that fit? Where is the right time for them to start taking a look at getting some of these protections? So, yeah, that's a great question. And I'll try to answer it as best I can. It does kind of depend on the type of company and the type of business that you're in. And your investment in intellectual property always has to be viewed as part of, in terms of what your budget is, what your revenue is, and what your future intentions are. Usually when it comes to trademarks, for example, if you've started your own company and you have a company name, you're not just doing business under your own name, I usually think that it makes sense to at least do a trademark search before you get too far down the road. And I'll explain what that means in a little bit. But if you're going to call yourself the software company, you want to make sure that somebody else doesn't already have a trademark on a company called the software company, especially if you're in the business of making software. And trademark search is not especially expensive if you come to an intellectual property firm. Obviously, the first thing you want to do is just check yourself on the internet to see if there are conflicts, if there's anybody else using those terms. If somebody else is, then you really should think carefully about adopting that name. You should really consider switching that name before you get too invested in it. And if you have any questions about that, then that's probably the time to get an intellectual property professional involved. In the world of software and software services, there's a lot of companies that use similar and same names. That may be your get out of jail free card if there's a lot of people who are using similar or the same terms as you are. But you want to be sure because every day we receive inquiries from clients who say I started this company. I've been at it for two or three years. Last week I got a cease and desist letter from this company that's all the way across the country and they have a federally registered trademark and they're telling me now that I have to stop using my name and I have to change it. And so you have to consider that that's something that could happen that's perhaps likely to happen if somebody has a federally registered trademark and you're using the same name in the same field of endeavor. It's highly likely that you could get a letter from somebody like that someday and then you're either having to pay a lot of legal bills to get out of it or you have to change your name. And so going back to what I said earlier, it's important at some point if you're going to make a big investment in your name or reasonable investment in your name to make sure that somebody else isn't using it. And the best way to do that really is to get an intellectual property professional involved. Usually for between five hundred and a thousand dollars you can get a trademark search done and then you can see what the landscape is and then you can make a decision about should I move forward with the name? Should I modify it? Should I choose something completely different? Should I file my own trademark? Right. And those are all questions that you can you can ask an intellectual property professional. But it's relatively inexpensive insurance compared to what you would pay down the road if there's a problem with a third party. Does that make sense? Yeah, it makes a lot of sense. It leads to a question. So let's say you're you've spent a few years on your company. You got to the point where you're like, OK, I'm stepping into this more and I want to do a trademark. And you find somebody already has that name that's not trademarked. Is there sort of a race to get a trademark at that point or is there something where they're protected because they existed before the trademark or just in general? I don't want to get I know this could get really complicated. No, I don't. That's a that's a very good question. So if if the other person the trademark rights are determined by use, who uses the mark first in association with the goods or services that are being provided. So one of the things you would have to look at is number one. OK, they may have the same name, but if they're in a different business, you may be OK. OK, you you would definitely want to consult with an attorney on this part because it depends a lot on the individual facts. And and so you really can't make a sweeping generalization. It may turn out that you end up making a modification, slight modification to your name, or it may you know, it just it's going to depend on is this a big company or a small company? Is this the kind of company that is likely to cause trouble for you? Sometimes if it's just another small company, maybe miles away, it won't have an impact on what you're trying to do. So it depends on a lot of factors. And that's why it's good to talk with somebody about it. But to your point, it's not necessarily the end of the world, but it's not necessarily good news either. Right. So you have to check into it and find out. So. And what trademarks in particular, I guess, what happens? How detailed do these have to be? Because, you know, you see these things where we're like Coke, it's the same thing. It's always been. But then you get you see where they'll tweak it a little bit. So maybe the swoosh for Nike is now a little less swoosh or more swoosh or they've got or they've they've adjusted a color from blue to, you know, Bob Blue or whatever name, you know, like a slightly different color. One, I guess, how specific does have to be and how is this somewhere you would have to like refile when you do a you do an update, a update to your design, essentially? So we always try to get. We always try to get marks for our clients that are just the words, and we don't necessarily encourage our clients to get marks on the logos. These are called standard character marks. And what that means is if anybody let's say we're calling our company the software shop. Right. That means that if somebody uses the term software and shop in any font, in any color, in the presence of any artwork or logo, then if any third party does that, then they're infringing. Right. That's the broadest possible protection. A word mark or standard character mark is the broadest possible protection. And that's all what we always go for. And so when you're after you file a trademark, you have to provide the trademark office with specimens showing the mark being used in commerce. And then between five five years later, after the after the mark is granted, you have to file a statement of use which shows that the mark is being used in commerce. And as long as you're still using the software shop as your trademark, you can change the logo. You can change the font. You can change whether it's horizontal or vertical, the size. And it'll still be considered OK for trademark purposes. Now, if you file the mark in a particular font or a particular color or you have a particular logo and then you go to renew the mark later and you've changed that, you may have trouble getting the trademark office to accept to accept the specimens and they might not renew the mark. And so they give you a little bit of leeway, but not necessarily a lot. So so the best thing to do is to try to get protection on, you know, get the broader protection. And then you don't have to worry about that so much. But you don't have to necessarily file a new mark under those circumstances every time you change something about it. So. And that's good. And I was hoping it was something like that, where you try to be generic enough to sort of cover. Do you have do you have trademarks that you're worried about or? No, not particularly, but it's just those kinds of things that I've definitely worked with companies and customers and organizations that have those. And it was always one of those like, well, what happens if you tweak this or you adjust that? And in particular, from when you are working with companies and you're coming in and doing some of the technology, sometimes you'll create help them create a new website and suddenly, you know, you don't want to be in a situation where you change a keyword or color or swoosh or image or something like that, that then essentially breaks their trademarks. So or any other thing is just to make sure that you're not infringing on somebody else when you're doing those kinds of things. So I would say if you're in that position and you're working with a client, I think you can you can do your client a service just by raising that issue and suggesting that maybe you got, you know, if you're changing this here, is it going to be OK for your trademark? Maybe, you know, and then maybe they'll want to go talk with their trademark attorney or something like that about it before they're fully committed to it and then have problems down the road. So, you know, I think that that can make you look good to your client. Right. So absolutely. So on the other end of it, in a sense, in the copyright realm, there's a it feels like there's a lot of urban legends around copyrights and how you do it and how you secure yourself and what you can do and what you can't. Are there maybe a couple of like common misconceptions that people come into with you that you like for them to know about so that we can address copyright properly and also protect our you know, if we're creating code or a blog or doing a podcast or something like that, that we can also properly whatever we can do, reasonable measures to protect our content. So if you're thinking like, you know, just creative content like we're we're generating right now and whether it's verbal or whatever, the first thing is, is you don't necessarily have to file a copyright registration to get the copyright. And under the copyright laws, the creator of the content is the owner of the content, unless it's a work for hire. Right. And so I think for for your audience, the best thing to know is that if you're going to be in a situation where you're where you're working for a client, you want to make sure that who's going to own what is clear from the beginning. So you may have no problems whatsoever turning everything over to the customer. I mean, the assumption is, as well, we're paying for it, right. So it's ours. But that may not necessarily be how the law sees it. Copyright is kind of weird in that way, in that even though you're doing something for somebody, it may not automatically be a work for hire. And you may have you may have rights in it without the written without the written contract. Most of the time you would you would be correct in assuming that it would be, you know, owned by the customer. But it may not necessarily be the case. And if you, for example, are doing something and you want to carve out some rights for yourself, you may be able to do that. And that may be OK with the customer. So, OK, I'm going to take these designs that I'm making and I promise. And, you know, you're doing it for a floral shop. I never I'll never use these kinds of designs or code or pages or whatever you're doing for any other floral shops. But I might do it for an automotive dealership. Right. And so that could that can work to your benefit. But you just it's important that you kind of strike that deal from the beginning. And and, you know, because if you just go and do it later, then there could be all sorts of all sorts of challenges there, too. Another place that we get frequently get issues is when people are using images that they get off of the Internet without using stock images or buying the images, if they copy images right from somebody else's website. There's a number of services out there now that are policing these websites. And professional photographers put their photos into this algorithm and the algorithm goes out and they find infringing copies. And then you get a you know, your client would get a letter from one of these services demanding five thousand dollars for the use of that image. And so what you put in your contract controls whether you're responsible for that or they are. You know, if you agree to indemnify them and hold them harmless for infringements of that nature, then you're going to end up paying for that. You know, that that issue. So one of the areas that is most active in the in the world of website development are these, you know, these these photographers trying to enforce their rights on images. So you've got to be either should pay for it. You know, maybe you have the client pay for it or you should make sure that there's language that says, hey, I'm not responsible for this if it goes if it goes, you know, if it goes south. So that's another area where there's a fair amount of activity. And it's something that I think your guys and gals need to be pretty aware of. Pencils down. That is where we're going to pause this time. We're going to come back. We've got a part two going to be more of the same, although we're going to get a little bit more into like patents and some things like that. A lot of great stories, a lot of great examples that Richard brought along as well. So hopefully you're getting something out of that and able to sort of connect it to where your concerns are or maybe should be based on your job, your consulting agreements, all of those kinds of things, because the legal stuff can bite us in the butt sometimes. It can cause us to get tripped up. And somebody like this is perfect for making sure that we have, I guess, our, you know, our radar properly attuned for the things we need to be aware of to protect ourselves, protect our companies, protect our products. That being said, we'll wrap this one up. We'll come back next time. Have a little bit more of this conversation with Richard. Until then, go out there and have yourself a great day, a great week, and we will talk to you next time. Thank you for listening to Building Better Developers, the Develop-a-Noor Podcast. You can subscribe on Apple Podcasts, Stitcher, Amazon, anywhere that you can find podcasts. We are there. And remember, just a little bit of effort every day ends up adding into great momentum and great success.