We’ve had our fill of Apple vs. Samsung, Oracle vs. Google, and Apple vs. Apple. Those high-profile cases are the stuff of news and not about our daily work. Or are they?
Registering a domain name might trigger a lawsuit. Installing software can result in additional license fees or even a fine. Your idea might not be yours to use.
Intellectual property law affects everyone in the enterprise in strange and serious ways. Here are some tips to keep the lawyers from your door.
Tip #1: Research your trademarks, including marketing phrases. Avoid similarities that cause confusion. Be sure to check for international uses.
My company name is Fubarb Co. My domain name is fubarbco.com. One of your system administrators registers a site called myfubarbco.com. My lawyers send you a nastygram, claiming trademark infringement because customers are likely to think that myfubarbco.com is affiliated with fubarbco.com. The gold standard for trademark cases is “likelihood of confusion”: Is a reasonably prudent consumer likely to be confused by the two items?
Tip #2: Remind your users that the end-user license agreement (EULA) matters.
An employee finds a clever piece of software and installs it on her computer. Are you, the employer, encumbered by the terms of the licensing agreement? As any lawyer will tell you, it depends. (By the way, I am not a lawyer.) The EULA may have language that states explicitly that the computer owner, such as the company, is the party agreeing to the license.
Another warning: If your employees bring their own iPads and Nexuses to work and use them to access Microsoft applications, you as CIO could be liable for additional license fees. The CIO Journal reports that new licenses for Windows 8 and subsequent products have new terms for multiple devices. The additional fees will be waived for Microsoft Surface users.
In spite of the fact that the Chief Justice doesn’t read the fine print and that you can hide prizes for months inside a EULA, the fine print can hold unpleasant and/or dangerous surprises. A tool such as EULAlyzer can highlight text in an agreement that’s non-standard verbiage.
Tip #3: Patent law is for patent lawyers. When you’re developing and selling a product, perform the due diligence regarding licenses and then go about your work. You might be brought into a drive-by lawsuit, but there isn’t much you can do in advance beyond the basics.
Your development team creates a Web service that allows customers to initiate a phone call to a sales rep. You use the VOIP service from Twilio. Your customers and sales teams love your Web app. Then, in the morning mail, your corporate counsel receives notification that your company has been named in a patent infringement lawsuit.
Twilio is being sued by Telinit Technologies, LLC for infringement of US Patent 6,192,123, which defines a “Method and apparatus for initiating telephone calls using a data network.” In addition, two of Twilio’s customers, Trulia and Match.com, are named in the suit. Telinit was incorporated in Texas in August and acquired the patent through a complicated series of assignments and acquisitions.
There is no evidence that Telinit has products other than patents. According to TechDirt, 40 percent of all patent litigation originates with non-practicing entities, familiarly known as patent trolls. The business model involves acquisition of broad patents that are defunct or in trouble and then filing lawsuits. Backers provide resources for the lawsuits in the expectation of a handsome return. In a recent podcast, GigaOM legal writer Jeff Roberts said, “Instead of investing in companies, they invest in lawsuits.”
Managing intellectual property in the enterprise can be made simpler, but never simple. It can be easier, but never easy; better, but probably never good. Paying attention to basics, such as trademarks and software licenses, can save you time and money that you may need for harder stuff, such as dealing with patent trolls.
— Karl Hakkarainen is an independent IT analyst and consultant.