Right of Publicity
Introduction
• Create an Introduction to your work that addresses the question “What intellectual property issues arise in your workplace?” Some prompts you might consider:
o who important is IP in your business?
o how much time and attention has been paid to IP policies, forms, and legal issues?
o What role does IP play in the HR context (forms, departing employees, new employees, etc.)
Patents
The majority of the patents that we deal at my company are utility patents as that category covers chemical and biological compositions. The pharmaceutical industry has specific IP issues. Often times a drug product is covered with some form of exclusivity, whether it is a patent or regulatory exclusivity. There are a few main requirements for patent eligibility under the U.S Patent Act are: Patentable Subject Matter, Novelty, Non-Obviousness, Adequate Disclosure. A typical timeline of acquiring a U.S Patent is 3-5 years.
As part of the process, my company has a disclosure of invention form that is to be filled out for any patents and submitted to the legal department for review and confirmation of next steps. The ownership described in these patents is the company directly as the patents are worked on during work hours and are specifically requested by the employer. We have 3 product patents for 3 of our drugs.
Trade Secrets
There are various trade secrets that are found at my current employer. This includes inventions, disclosures, processes, compounds, biological materials, gene sequences, systems, methods, formulae, devices, patents, patent applications, trademarks, intellectual properties, instruments, materials, products, patterns, compilations, programs, techniques, sequences, designs, research of development activities and plans, specifications, computer programs, source and object codes, costs of production, prices and other financial data, sales-related data and information, promotional methods, costs of production, prices and other financial data, sales related data and information, marketing plans, lists of names or classes of customers, or personnel, list of suppliers, business plans, business opportunities, financial statements, financial models, or financial projections, information regarding compensation of the Company’s employees and other service providers and the existence and content of any business discussions, negotiations or agreements between the Company and third party.
The steps that have been taken to keep the secrets secret include ensuring employees sign an employee confidential information and inventions agreement upon hire. The language included is a (1) noncompetition; at will employment, (2) no solicitation 3) confidential obligation (4) information of others, (5) company property (6) ownership of inventions (7) excluded inventions as an exhibit B, (8) invention records; patent applications, (9) representation of no prior contracts, (10) agreements with the United States Government and other Third Parties (11) termination procedures as well as other miscellaneous clauses that govern the law. Additionally, our Information Security team has put various steps in place to secure the Company’s data. This includes a process to preapprove any software installation, inability to upload any work documents to one’s personal google drive, strict measures in company used phones as well as laptops, all types of traceability in data as well as a process to claim ownership of inventions.
As part of the onboarding process, new hires are expected to complete all paperwork assigned to them in the designated Human Resources Information System. As part of the offboarding process, employees exiting the organization are expected to acknowledge that they understand their obligations that was agreed to when hired. Consultants are expected to sign an NDA, confidentiality agreement, and non-solicitation agreements.
The policy suggestions I would make regarding trade secret protections include restricting the ability to send any company documents to personal email addresses outside of the organization, ensuring that access is cut off during the termination, have the IT do an audit of the employee’s devices and provide to HR to discuss and remind the employee of their obligations as well as ask any clarifying questions during the exit interview process.
I was unable to locate any whistleblowing provisions under the DTSA which leads be to believe we don’t have one listed for my current employer.
Copyrights
The type of copyright work I find in my place of employment includes any work made for hire that is written or recorded, such as an email with published research with clinical trial information, online reports with proprietary data, postings of news stories including social media, software licenses leveraged, videos that are produced from an employment branding perspective or any music that I use for a company event.
As a work made for hire, the employer is the owner unless a written agreement was signed. According to the United States Copyright Office, section 101 of the Copyright Act defines a “work made for hire” in two parts:
a) A work prepared by an employee within the scope of his or her employment or
b) A work specially ordered or commissioned for use
1) As a contribution to a collective work,
2) As part of a motion picture or other audio-visual work,
3) As a translation,
4) As a supplementary work,
5) As a compilation,
6) As an instructional text,
7) As a test,
8) As an answer material for a test, or
9) As an atlas
If the parties expressly agree in a written instrument signed by them that the work shall be considered work made for hire.
My current company uses other’s copyrighted works from photo stock to clinical study data/findings, software licenses for employees to leverage, learning & development programs, tools, trade journals, and video tapes.
According to the U.S Copyright Office, Fair use is a legal doctrine that promotes freedom of expression by permitting the unlicensed use of copyright-protected works in certain circumstances. Section 107 of the Copyright Act provides the statutory framework for determining whether something is fair use and identifies certain types of uses – such as criticism, comment, news reporting, teaching, scholarship, and research. Section 107 also calls for consideration of the following four factors in evaluating a question of fair use: purpose and character of use, including whether the use is of a commercial nature or is for nonprofit educational purposes, nature of the copyrighted work, amount and substantiality of the portion used in relation to the copyrighted work as a whole, and effect of the use upon the potential market of the copyrighted work.
The types of employees that we have at our company includes employees and independent contractors which are both creating copyrighted materials. The types of contracts in place for employees are offer letters in the U.S and Canada and contracts in the UK. We also have confidentiality agreements in place, and non-solicitation clauses. For independent contractors we have Statement of Work, Master Services Agreements, Confidentiality agreements, and non-disclosure agreements.
Right of Publicity
The state that I live in is California. As part of my employment agreement with my company, employees sign their right of publicity away. In particular, the employer has a release form that states that the employee agrees to allow the company to use their photos at any time during employment without the obligation of any monetary compensation from the Company. This can include using my name, photo, and likeness for Company benefit.
The right of publicity issues that my company might have includes hiring actors for our commercials as well as actual patients that use our products to share their story about how the product has improved their quality of life. The process is to have the actor/patient sign a right of publicity contract and be compensated so we can use their likeness as part of our advertisements or endorsements. We also advertise our products on magazines, the internet, external presentations and other forms of marketing materials for our products that include photos or videos of people that were specifically hired for their likeness.
California has a right of publicity statute, California Civil Code Section 3344 states, in pertinent part: “Any person who knowingly uses another’s name, voice, signature photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s prior consent…shall be liable for any damages sustained by the person or persons injured as a result thereof.” This statute prohibits “knowing” use of a person’s name/likeness/etc. This statute focuses on advertising uses of a person’s likeness. The courts have interpreted the statute to impose a three-step test: 1) was there a knowing” use of the plaintiff’s protected identity? 2) was the use for advertising purposes and 3) was there a direct connection between the use and the commercial purposes? The statute also contains an explicit exception for uses “in connection with any news, public affairs, or sports broadcast or account, or any political campaign.” § 3344(d).
There are right of publicity cases in California. One in particular was Hansen v. The Coca-Cola Company. The case concerns who has the right to use Hubert Hansen’s publicity. In 1935, Hubert founded a fresh juice company in Los Angeles that bore his last name. After his death in 1951, his children and grandchildren continued to operate and expand Hubert’s business. Forty years later, Monster Energy purchased the business that was run by Hubert’s descendants. Thereafter, Monster Energy used Hubert’s name and story to market some of its juice, lemonade, and soda products. Hubert’s descendants demanded that Monster pay for the use of Hubert’s publicity. In the end, the court found that the right to use Hubert’s publicity was not included in the deal.
The issues, terms and information I was able to find regarding right of publicity in California cover living individuals as well as family members of the deceased. In addition to California Civil Code Section 3344 which covers living persons, I also found that California Code, Civil Code – CIV § 3344.1 (a)(1) covers the deceased and states, “any person who uses a deceased personality’s name, voice, signature, photograph, or likeness in any manner, or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods, or services without prior consent from the person or persons specified…shall be liable for any damages sustained by the person or persons injured as a result thereof. In terms of limitations for CIV § 3344.1, section € states, “if any deceased personality does not transfer his or her rights under this section by contract, or by means of a trust or testament instrument, and there are no surviving persons as described in subdivision (d), then the right set forth in subdivision (a) shall terminate.
I believe that the culture of where I live in California has significant impact on the laws of right of publicity in my state as California is where the world’s biggest film industry is located. One of the most well-known cities is Hollywood where it is filled with celebrities that make a living of their likeness. Stars like Dwayne Johnson, Leonardo DiCaprio, Steve Jobs, Jennifer Aniston and Angelina Jolie are all from California. They spend their entire career building their persona and certainly deserve the protection of their likeness.
Conclusion
• Create a Conclusion
o What is the state of IP in your workplace?
o What suggestions might you make?
o How important is IP (reiterating the intro)
