October 19, 2015

Top Ten (Actually Eleven) Copyright and Trademark Tips for Nonprofits

8 min

This article was republished in the July 20, 2016 issue of Tax Exempt Advisor

Whether it is protecting your own intellectual property or avoiding the infringing of others', copyright and trademark law should play an important role in the typical activities of every nonprofit. Fortunately, the well-informed nonprofit can go a long way toward protecting its interests in this area without the involvement of lawyers. While the advice and guidance of counsel is recommended and encouraged in formulating and implementing your nonprofit's intellectual property policies, there are internal steps that all nonprofits can undertake without the direct involvement of counsel. The following (brief and non-exhaustive) guidelines provide the basic thinking and framework for such steps and, in particular, the implementation of effective policies and practices to manage copyright and trademark rights and avoid the infringement of others' rights:

1. Use Copyright and Trademark Notices. Use copyright notices (e.g., © 2015 ABC Nonprofit. All rights reserved.) on and in connection with all creative works published by your nonprofit and trademark notices on all trademarks, service marks, and certification marks owned and used by your nonprofit (e.g., TM for non-federally registered marks and ® for federally registered marks). While copyright and trademark notices are not required, their effective use can significantly enhance your intellectual property rights, including eliminating an "innocent infringement" defense. Be sure to use them prominently, consistently, and in all media.

2. Register Your Trademarks (Both Domestically and Overseas) and Domain Names. Register your nonprofit's name and important logos, slogans, certification marks, and other trademarks and service marks with the U.S. Patent & Trademark Office. While federal registration of your marks is not required to obtain and maintain trademark rights in the United States (common law rights are enforceable in the U.S.), it can be extremely helpful in enhancing and enforcing them nationwide. It also can be required for certain remedies or enforcement. In particular, registration is a necessary component in the domain name dispute process. It is also important to remember the national scope of trademark rights and to seek protection in foreign countries. In most foreign countries, trademark rights are based on a first-to-file system, so foreign trademark registration—as early as possible—is essential. Also, be sure to immediately obtain domain-name registrations for all current and prospective (important or material) trademarks. In sum, while the federal and foreign trademark registration processes are not simple and generally do require the use of legal counsel, they are well worth the effort and cost for enhanced rights and protection.

3. Register Your Copyrights. Register your nonprofit's website, publications, and all other important, original, creative works (that are fixed in any print, electronic, audio-visual, or other tangible medium) with the U.S. Copyright Office. While such registration is not required to obtain and maintain a copyright in a work, it is a prerequisite to filing suit to enforce your rights and confers other important, valuable benefits. If your works are registered either within the first three months of initial publication or before infringement of the works occurs, your organization will be able to pursue statutory damages and attorneys' fees, as opposed to just actual damages (a major difference, especially in the nonprofit setting). Copyright registration is a very simple and inexpensive process, and does not require the use of legal counsel. It also can be very helpful for protecting and enforcing your copyright rights overseas, and for getting prompt, responsive action by internet service providers, social media operators, and others where you are seeking for content to be taken down because it infringes your own copyright rights.

4. Police Use of Your Intellectual Property. Monitor and police the use of your copyrights and trademarks by others and enforce your rights where necessary. Use periodic web searches and outside monitoring services, among other means, to identify potential infringement of your copyrights and trademarks. Don't hesitate to send cease-and-desist letters where warranted, but understand that enforcement can involve different types of dispute resolution processes. Enforcement does not necessarily involve the filing of a lawsuit, and does not even always require the use of legal counsel. Mediation, arbitration, and simple settlement are good alternatives as well, especially where enforcement costs are a concern.

5. Codify All Licenses from Your Nonprofit to Others in Writing. Whenever your nonprofit lets others—such as volunteers, members, chapters, affiliates, sponsors, certificants or accreditants, or endorsed vendors—use your nonprofit's name, logos, copyrighted works, and other intellectual property, put the terms and conditions of the license in writing. Be sure to put strict limitations on how the intellectual property can and cannot be used, and what happens if those rules are violated. Typically, other important legal provisions will be included as well. The license does not have to be a signed paper document; online click-and-accept licenses are equally enforceable, as U.S. law recognizes electronic contracts and signatures. While oral or implied non-exclusive licenses can exist, they can be difficult to interpret, difficult to enforce, limiting in nature, and otherwise problematic for your nonprofit. In short, do not rely on such oral and implied agreements when a written agreement will better evidence contractual rights.

6. Make Sure You Own or Have Permission to Use All Intellectual Property. Ensure that your nonprofit owns or has appropriate permission to use all intellectual property (e.g., text, graphics, photos, video, trademarks, etc.) that it uses in its publications, on its website, on social media, and in all other media. Most common copyright problems arise from the issue of sufficient rights or permission. For example, you may have conceived the idea, supervised the work's creation, and paid for it, but that does not mean you own the work. You may have only a limited license for a specific, narrow use. When you wish to use the work on another project or in another medium, you may learn that a separate fee and permission are required—or that such other use is even prohibited. As such, for copyrights, obtain either an assignment (transfer of ownership; must be in writing to be valid) or a license (permission to use; exclusive licenses must be in writing to be valid, but it is strongly advisable to codify even non-exclusive licenses in writing). For written copyright or trademark licenses, be sure that they are irrevocable, perpetual, worldwide, and royalty free (if applicable); specify whether exclusive or non-exclusive (or perhaps exclusive for a certain period of time); cover all possible current and future uses of the work in all media; contain a release to use the author, speaker, or owner's name, photograph, etc. (if applicable); and contain appropriate representations and warranties (and, in limited cases, indemnification).

7. Agreements with Independent Contractors. Maintain written contracts for development or creation with all independent contractors to your nonprofit—such as software developers, consultants, photographers, lobbyists, and all other contractors—to ensure that your nonprofit is assigned the ownership rights (or at least sufficiently broad license rights) to all intellectual property developed or created by the contractor under the agreement. Without such a writing, the basic rule in copyright law is that the person who creates the work is the one who owns it, regardless of who paid for the work to be created. This rule does not apply to employees, ownership of whose work (that is within the scope of their employment) automatically vests in the employer. (As such, if the contractor is not self-employed, the assignment ideally should come from someone authorized to bind the employer.) If your nonprofit is a joint author of a copyrightable work with another party (e.g., nonprofit employees working side by side with an outside technology consultant to develop new software for your nonprofit), be sure to seek to obtain a copyright assignment (or at least a sufficiently broad license) from the co-author(s) if you wish to use the joint property in a manner that differs from the standard rights available to joint authors/owners (e.g., for enforcement, exploitation or profit-sharing).

8. Agreements with Authors and Speakers. For the same reason as stated above, obtain a written and sufficiently broad license or assignment from all (non-employed) writers and speakers for your nonprofit, including members. Be sure that, for licenses, the permission is sufficiently broad—as outlined in #6 above—and most certainly that it permits you to use both written material (such as articles and PowerPoint presentations) and audio or visual recordings of their presentations in any manner your nonprofit may choose in the future.

9. Agreements with Officers, Directors, Committee Members, and (Sometimes) Other Volunteers. For the same reason as stated above, obtain a written statement from all nonprofit officers, directors, and committee members (and any other volunteers helping to create copyrightable content) assigning ownership of all intellectual property that they create (within the scope of their service to the nonprofit) to your organization. Incidentally, such a form also can be, and often is, used to impose confidentiality obligations on these individuals, to require conflict of interest disclosure, and to impose any other restrictions or guidelines on their service.

10. Protect Your Membership Database. For membership associations, because the name, addresses and other contact information contained in your membership directory/list are generally are not protected by copyright law—as they usually do not possess the minimum level of originality required—if your organization publishes the directory or permits others to use the list, it is imperative to use a "shrinkwrap" license, click-and-accept feature, or other form of contractual commitment to place explicit, binding limits and conditions on the use of that information by members, vendors, chapters, affiliates, and others. Failure to do so may leave your nonprofit with little or no recourse to prevent unrestricted use of this most valuable information by those who obtain a copy of it.

11. Rules for Interactive Online Services. Many nonprofits operate listservs, chat rooms, and other interactive online services utilized by your members, supporters, or others (who are not employees of your nonprofit). This may be done directly through your website, using outside service providers, or through social media. If so, it is important to regularly distribute rules that prohibit the posting of any copyright- and trademark-infringing information or marks (along with other rules, such as prohibiting negative comments about individuals and companies, and prohibiting the advertising or marketing of products or services). In addition, be sure to maintain a compliant "take-down" policy and to immediately remove (or have removed) any material that violates these rules if it comes to your nonprofit's attention.