I. TYPES OF INTELLECTUAL PROPERTY

Patent: protects invented devices or processes.

Trademark: protects words/pictures/slogans used to brand goods or service. Common examples would include POLO to identity certain Ralph Lauren items, WHOPPER for hamburgers sold by Burger King or THE REAL THING for Coca Cola, which is itself a trademark.

Copyright: original works of authorship in fixed medium of expression. Common examples would include an article, song, movie script or painting.

Trade Secrets: any proprietary information kept confidential and having commercial value. Common examples would include a process, formula, recipe or customer list.

All but trademarks are common sources of competing claims and interests when an employment or independent contractor relationship ends.

Not just for tech firms. More companies than not are involved in the creation of some type of intellectual property, whether capable of traditional protection by copyright, trademark or patent, or whether it is in the nature of confidential information, trade secrets and know-how.

II. COMPETING INTERESTS OF EMPLOYERS, EMPLOYEES AND CONTRACTORS

Patent and copyright rights typically vest in creator:

1. Treatment as work for hire (owned by employer) of items created by employees in the scope of employment.
   
   
   • This can be overridden by specific agreement.
     
     
   • Employees may later argue that creation wasn't within scope of employment.
   
   
   
2. Presumption of not work for hire (owned by employee) for copyright materials created by contractor in the absence of certain circumstances.
   
   
   • The work must be "specially ordered" or "commissioned." What this means is the independent contractor is paid to create something new (as opposed to being paid for an already existing piece of work).
     
     
   • Before commencement of work, both parties must expressly agree in a signed document that the work shall be considered a work made for hire.
     
     
   • The work must fall within at least one of the following nine narrow statutory categories of commissioned works listed in the Copyright Act: (1) a translation, (2) a contribution to a motion picture or other audiovisual work, (3) a contribution to a collective work (such as a magazine), (4) as an atlas, (5) as a compilation, (6) as an instructional text, (7) as a test, (8) as answer material for a test, (9) or a supplementary work (i.e., "a secondary adjunct to a work by another author" such as a foreword, after-word, chart, illustration, editorial note, bibliography, appendix and index).
     
     
   • Get assignment from contractors.
   
   
3. Note conflict between usual employer preference for treatment of worker as contractor with advantage it gives the worker as to patentable or copyrightable work.
   
   
4. Your lack of ownership jeopardizes your right to use and your exclusivity of use.

• Work for hire agreements with contractors.
  
  
• Get agreements from employees contributing intellectual property confirming work for hire.
  
  
• Copyright assignment from contractors as backup.
  
  
• Confidentiality/non-disclosure agreements for trade secrets Non-compete and/or non-solicitation agreement for business relationships
  
• Get these agreements at the outset of the relationship. There may be a requirement that you give something valuable in return for them if obtained later.

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