Associations & Intellectual Property Rights

Amish Mehta, CPA.Ken Kwartler, Esq. (center), Ken Kwartler Law Office, addressed Associations and Intellectual Property Rights at the October luncheon. Also pictured Joel A. Dolci, CAE (left), NYSAE president and CEO, and Carter Keithley, president, Toy Industry Association, and immediate past president of NYSAE.

"Society benefits when people have an incentive to invent and create," said Ken Kwartler, Esq., Ken Kwartler Law Office, NYSAE's October Luncheon speaker. A 25-year intellectual property specialist and former chief Nike trademark lawyer, Kwartler noted that intellectual property rights have skyrocketed in value and importance in recent years. He spoke about how associations could best protect their trademarks, brands, creative works, inventions, and confidential information.

Kwartler defined intellectual property as anything that has come into being as a result of someone's intellect and something that has to be protected by the law. "Clearly not everything people create is protected by the law," said Kwartler. There are different types of legal protection—copyright, trademark, patent, trade secrets, domain names, and publicity rights.

A trademark tells where a product comes from and can include logos, brands, slogans, words, names, products, packaging designs or other elements that indicate a source of goods or services. Best practices for trademark protection include:

  • Clearing all trademarks before use, making sure that you have the right to use it;
  • Protecting your trademark by registering (this enhances your ability to enforce the mark against use by others and ensures that others will find you during their own clearance search);

A copyright protects original works of creative expression, such as music, art, books, dance, photography, architecture. "Ideas and facts are not copyrightable," said Kwartler, "only someone's original expression of the idea or fact." Others may make fair use of copyrighted works for purposes such as journalism, criticism, commentary, scholarship, and research. Best practices include:

  • Registering works with the US Copyright Office;
  • Using proper copyright notice on all works;
  • Not using other's copyrighted works without permission.

Patents protect new inventions and processes and some types of commercial design. Best practices include:

  • Considering patent protection for significant inventions;
  • Not investing in new inventions without patent searches.

A trade secret is information that has commercial value because it is not generally known, someone has discovered it, developed it or compiled it, and its owner has protected it from disclosure. This might include a membership list, customer lists and info, process, formulae and recipes, business plans, technology, pre-release designs, prototypes, and negative know-how (knowing what doesn't work). Best practices include:

  • Having employment and supplier non-disclosure agreements;
  • Treating all documents with care;
  • Establishing procedures and secure locations to protection information; and
  • Prominently displaying legends on information, such as: "NYSAE confidential and proprietary information. All rights reserved."

It is the right of any well-known person or celebrity to control the likeness of themselves for profit without permission. The right of publicity is the right of any well-known individual to prevent the commercial exploitation of his or her name, image, likeness, voice, or other indicia without permission. Best practices include:

  • Avoiding celebrity names, images or references unless you have permission;
  • Obtaining permission from anyone you might use in your ads or related content.