Copyright Mokra. Image Courtesy RGBStock.

In previous posts here and here, I reviewed methods for discovery and auditing your marketing agency’s intellectual property, with a view toward capitalizing on those assets to enhance the Agency’s value or create additional revenue streams. In Part 1 of this series, I also posed some questions the Agency can ask to help prioritize its intellectual property assets, so that it can make smart investments in an asset protection strategy.

The right time to legally secure the Agency’s intellectual property is before the Agency tries to monetize it.

The right time, and not coincidently, the least expensive time, to legally secure the Agency’s intellectual property is before the Agency tries to monetize it. How does the Agency do that?

In this part of the Roadmap, I review the IP legal protection methods an Agency is most likely to need, along with some brief examples of the types of assets those methods could “cover.”

Trademark Registrations

Has the Agency identified an original brand name, its logo(s), any promotional taglines, or names for any of its proprietary methods, services, tools or products? These are all the potential subjects of federal trademark registrations. Federal trademark registration not only gets these “marks” into the national registration database at the US Patent & Trademark Office, but also provides the Agency a nationwide claim to potentially exclusive use of the mark for the Agency’s offerings, an enhanced ability to collect damages in an infringement proceeding, and the right to use the all-popular ® designation with the mark. Additionally, federal registration almost always allows the Agency to command a higher asking price if it ever sells the business, or the marks.

Copyright Registrations

If the Agency’s IP audit reveals assets like “client-facing” methods, processes or tools, or, alternatively, “agency internal” processes, methods or training systems, and if these are reflected in a tangible format – such as in promotional collateral, presentation decks, training curriculum or materials – those tangible items could be the subject of copyright registrations. And, at a minimum, these items should include copyright notices and copyright ownership statements, even if the Agency doesn’t pursue registrations for them. Why register copyrights? And when should registrations be pursued? There are a lot of factors to evaluate with the Agency’s legal counsel, but the short answer is that if a tangible item expresses IP that is original or important to the Agency, and if that item will see the light of day outside the Agency, federal copyright registration is worth pursuing. Copyright registration is cost effective, and is also a legal requirement prior to the Agency pursuing an infringement claim, should that become necessary. If the asset is truly agency-internal, or if it’s more valuable because of its secrecy, then confidentiality measures are generally the best protection methods.

IP Rights Assignments

Were any of the Agency’s intellectual property assets created by freelancers or independent contractors? Were any the result of collaborations with strategic partner firms? If the answer is yes, then the Agency needs assignment of the rights to those assets, in writing, from those parties. Unless the creator of the asset is in the Agency’s employment, ownership of intellectual property does not “follow the money.” Even though the Agency may have paid for third party work, U.S. copyright law requires that a written transfer of rights occurs. Make sure the Agency secures these rights a work agreement signed before the asset is created, or, at a minimum, an intellectual property rights assignment document after the asset is created. Remember that the Agency later can’t sell, assign or license to a third party for money what it doesn’t legally own.

Confidentiality Agreements and Procedures

Where the value of an asset to the Agency lies in maintaining its exclusivity and secrecy, the best method of protection for the intellectual property may be as straightforward as a solid confidentiality policy or nondisclosure agreement. There are also times where this protection should be layered along with one of the other methods of protection reviewed here. Make it part of the Agency’s standard operating procedure to have strong internal confidentiality policies about proprietary information, in writing. And where third parties are involved, employ a Nondisclosure Agreement before sharing the asset or, where appropriate, before the asset is created. The Agency can (and should) also include confidentiality language in its IP Rights Assignment documents.

Patent Registrations

This form of intellectual property protection is one I’ve left until last for a reason. First, it applies to a relatively narrow class of assets – proprietary software, mobile application code, and (rarely) business methods, among a few others. Second, patent protection is costly to secure, and there are very specific timelines and steps for the process that can be challenging for an Agency to manage, even with the best patent counsel. Third, the patent landscape is in a great state of flux right now, as policy makers try to protect the interests of patent holders while not stomping on the interests of new innovators – all of which means that the ability to secure patent protection can be extremely speculative. Still, if you have an original asset that might qualify for patent registration, and have determined that the investment makes sense, the financial rewards of securing the protection can be great.

I’ll wrap up the Roadmap for Turning IP Into Money with my next post on methods to monetize the Agency’s intellectual property.

Does your Agency have or monetize its IP? I would love to hear about your experiences in the Comments Section below. And, don’t miss my wrap-up of the Agency Roadmap for Turning IP Into Money, coming next. Sign up to receive new content regularly by subscribing here.