Developing an Intellectual Property Enforcement Strategy (Part II of V) – Articulating an Intellectual Property Enforcement Strategy:
As discussed in the first article in this series, intellectual property rights holders face a challenge in balancing their intellectual property rights with the type of fan-made projects which are the hallmark of an engaged fan base. Perhaps the most important step a rights holder can take in maintaining this balance is in developing an intellectual property enforcement strategy.
The first step in developing an intellectual property enforcement strategy is for a rights holder to take an inventory of the various forms of intellectual property owned as part of the venture. This may include patent rights, trademark rights and/or copyrights.
In mass media and entertainment ventures, intellectual property rights are most commonly embodied in copyrights and trademark rights (although some mass media and entertainment ventures such as the STAR WARS® brand have historically found ways to incorporate patent protection). Collectively, such copyrights and trademark rights can be thought of as a holistic “brand.”
The second step in developing an intellectual property enforcement strategy is to consult with competent counsel to understand the obligations, if any, to enforce certain intellectual property rights. For example, failing to police trademark rights could result in the loss of such rights. A “bright line” position of any venture should be the preservation (and, where possible, the expansion) of intellectual property rights. In other words, an intellectual property rights holder is best served by first understanding: (i) which rights are owned; and (ii) what needs to be done to preserve and grow these rights.
The third step in developing an intellectual property enforcement strategy is to understand your brand’s “deal breakers.” A brand’s deal breakers are those things which your brand cannot and will not tolerate.
Some “deal breakers” will be relatively standard across ventures. For example, third party commercial use of a brand’s trademarks should be a “deal breaker” inasmuch as such use can result in a loss of the brand’s trademark rights.
Know Your Audience and Your Brand.
Other “deal breakers” will be more specific to a particular venture’s brand identity. Is your brand built around a wholesome, family image? Is your brand edgy and “push the envelope” wherever possible? Does your brand target a mass market or only a niche market? Is your brand’s target demographic young or old? Thoughtfully considering such questions with the help of an intellectual property attorney can be highly worthwhile in developing both internal brand awareness and a consistent brand enforcement strategy.
For example, a brand targeting young adults (e.g., the HARRY POTTER® universe) will likely articulate different “deal breakers” from a brand targeting a more mature audience (e.g., GAME OF THRONES® universe). Some particular “deal breakers” which many brands find important include: (i) obscenity / sexually explicit material; (ii) racist or other bigoted content; and (iii) gratuitous violence.
In formulating a brand’s “deal breakers”, it is also important to keep in mind the engine driving the brand. Brands driven primarily by print media or film/television production sales such as the TWILIGHT® franchise or the STARGATE® franchise may have a different brand enforcement strategy than brands with larger merchandizing efforts such as the STAR WARS® franchise. For example, a brand driven primarily by book sales may take a more aggressive role in enforcing its rights against a fan-created publication than against fan-created costume sales on Etsy.com.
A fourth and final step should be to rationally and easily articulate an intellectual property enforcement strategy. For example, a hypothetical brand strategy statement for a teenage mystery novel series might read:
Our brand includes fictional characters in an adolescent mystery genre. Our goal is to simultaneously protect the integrity of our brand while encouraging our fans to interact with our company and “make our characters their own.” As such, our strategy is to generally limit the enforcement of our brand’s various intellectual property rights to instances involving commercial exploitation or obscenity, bigotry or gratuitous violence.
A simple statement such as this can do wonders in helping to “think through” both when and how to take action against a third party.
Critically, these steps should be done in consultation with counsel since an intellectual property enforcement strategy – particularly a written one – will likely become a central issue in any potential future intellectual property infringement litigation.
Grimes LLC has developed a reputation as a world leader in successfully helping clients build, protect and monetize intellectual property. If your company wants to balance intellectual property protection with fan engagement, call us today for a free consultation.
