Patents, Trademarks, and Copyright

Is your intellectual property protected by law?

Microsoft CEO Bill Gates wrote a book titled Business At The Speed Of Thought, and if I didn’t know better, I might have thought he was writing about skateboarding. As a whole, the skateboard industry is an incredibly dynamic and fluid marketplace, and as NHS President Bob Denike says, to be successful you gotta “hit it first and hit it fast.”

Ask lumbering giants like Nike, and they would probably agree; Nike came into the sport late, introduced a surprisingly low-tech shoe line, and were out of skateboarding before you could say, “Air Jordan!

Creative thought generates change in all businesses┬┐including skateboarding┬┐and in most instances, these thoughts can remain the exclusive property of their creators. This dynamism encourages constant innovation and change in everything from board construction to brand names. The laws of intellectual property are designed to protect this process, establishing the creator of these ideas as their rightful owner.

Intellectual property falls into three major categories: patent, trademark, and copyright. Sometimes the lines between the three blend, but in the realm of skateboarding, they generally relate to the following: patents protect the new and unique designs of skateboard decks, trucks, wheels, etc.; trademarks protect the brand names, slogans, and logos; copyrights protect the artwork screened onto a deck, or design elements in a logo.

The point in protecting intellectual property, of course, is to enable companies to differentiate themselves from their competition. One of the latest trends companies are using to differentiate their products (particularly from blank and pricepoint decks) is custom deck constructions. Whether it’s six-ply, nine-ply, or some other variation, a significant marketing blitz has resulted from the reconstruction of deck constructions.

For an inventor or company to receive a patent for an idea, that idea has to be novel and nonobvious from inventions that have come before it. Novel means something that has not been done before, and nonobvious means something that is not the logical extension of a preexisting thing. As NHS’ Denike puts it, it must be something that is revolutionary, not just evolutionary.

Troy Morgan of Expedition One thinks he and his company are onto something revolutionary with the Inerlock line of decks. Morgan has begun the patent application process with the United States Patent and Trademark Office (www.uspto.gov) for the deck’s steel-insert design, and introduced Inerlock to the market at September’s Fall Action Sports Retailer Trade Expo in San Diego. Once Expedition One’s patent is accepted by the USPTO, the company will be able to control who can exploit the invention commercially, and how.

It’s important to note that an application for a patent must be submitted within a year of the invention being disclosed to the public. If the invention is on the market for over a year before the submission of the application, all rights to exclusivity are lost.

In skateboarding, as with most industries, there are very few revolutions, but evolutionary changes are always taking place. Paul Schmitt of P.S. Stix manufacturing is constantly formulating new ways to build a better, lighter skateboard. A few years ago Giant Distribution brands released several different deck constructions, capitalizing on the current tech-skateboard trend. As Schmitt puts it, the changes in construction may have a ten-percent improvement in the performance of the board, but the consumer perceives a much more significant change, resulting in a dramatic increase in sales.

A company doesn’t have to own its own woodshop to capitalize on its technical innovations. Chris Carter of Alien Workshop worked with Schmitt to develop Alien’s own proprietary deck constructions. By way of an informal trade-secret agreement, only Alien boards are manufactured using theiparticular Microlite and Ultra-Lite constructions. Trade-secret agreements allow two cooperative parties to protect one’s intellectual property.

An invention can make about as much impact as the proverbial lone tree falling in a forest if consumers aren’t there to see it, or ever hear about it. Thus, the labeling and marketing of new technologies are the linchpins to success. The identification and promotion of new products create the buzz in the marketplace and propel sales. Whether its Element’s Featherlight or Santa Cruz’s PowerPly, the name influences the consumer’s purchasing.

This is where trademarking steps into the mix. While the technology that created the new deck may simply be an incremental innovation, and thus not patentable, the trademark assigned to the innovation can differentiate the product, and can definitely become the exclusive property of the manufacturer.

For example, Element, through the marketing of Featherlight, creates a demand for decks identified by the Featherlight trademark. Since Featherlight decks are exclusive to Element skateboards, kids who want Featherlight will look for Element decks. In this instance, technology takes a backseat to promotion┬┐now it’s the labeling of the technology that becomes the valuable asset. Element has exclusive rights to the mark, and only its decks can have the Featherlight trademark on them.

The importance of protecting a popular trademark cannot be overstated. Consumers want to feel they are buying the best (lightest, strongest, etc.) board available, and many are not able to feel the ten-percent improvement in performance. But they understand that they’re riding a Featherlight, and if an influential pro rider says they’re better, then they must be. That’s the value of a trademark.

Of course, the popularity of a trademark depends on much more than just technical innovation. No matter how great the technology is, if the brand is weak and not supported by a respected team, the consumer is not going to respond.

In the skateboard industry, a strong team is the foundation of a strong trademark, and no one knows this more than Tod Swank of Tum Yeto. Swank has continuously worked to evolve his products, but has focused on his brands’ high-profile teams to build value in Tum Yeto’s trademarks. In skateboarding, a strong image and good reputation generate sales, making a company’s trademark one of its most valuable assets.

In the wake of the blank- and pricepoint-product scare, the third member of the intellectual-property group, copyright, seems to have been de-emphasized lately. Skateboard graphics produced as original works of art are protected under copyright law as the intellectual property of their creators.

Devil Man, for example, could be considered a copyright of its creator, World Industries; products bearing Devil Man identify them as World Industries goods. But if Disney were to make Devil Man a character in its next animated movie, World Industries would have no protection under trademark and patent laws. Devil Man and other World Industries characters are original works reduced to a medium (drawn on paper), so copyright laws would give World the legal right to stop Disney from using the cartoon image.

Even if your logo or artwork is used on a completely unrelated product (on a lunch pail rather than a skateboard), copyright laws give you the power to stop that unauthorized use of your intellectual property.

Copyright laws, as most other laws pertaining to intellectual property, grant you the opportunity to protect your original artwork, but the government will not exercise those laws for you. This means that you have to police the use or misuse of your patents, trademarks, and copyrights. Penalties for patent, trademark, or copyright infringement in the United States can be stiff: the infringer can be forced to stop selling the unauthorized goods; the infringing goods may be destroyed; the infringer may have to pay as much as three times the profits; the infringer may have to pay the owner of the patent, trademark, or copyright three times the value of profits lost due to the infringement; and in some cases the infringer may have to pay attorney fees for the owner of the patent, trademark, and copyright.

Each country has its own laws regarding intellectual property. With patents, trademarks, and copyrights, one must follow the procedures of each country where protection is sought. With patents and trademarks there are certain treaties that affect procedural rights of the owner. For copyrights, the U.S. is a member of the Berne Convention, which offers some copyright protection in all member nations; thus, a work published in the United States or another Berne Union country is eligible for minimum protection in all member countries of the Berne Union.

Determining the value of ideas has always been difficult, and the steps one must take to protect intellectual property are sometimes overlooked. Identifying your intellectual property and determining what can be done to maintain your exclusive control over it will allow you to maximize its value.

The law firm of Friscia & Nussbaum contributed to this article. Matthew Miller is an attorney-at-law in Solana Beach, California. He can be reached at: (858) 259-6969.hree times the profits; the infringer may have to pay the owner of the patent, trademark, or copyright three times the value of profits lost due to the infringement; and in some cases the infringer may have to pay attorney fees for the owner of the patent, trademark, and copyright.

Each country has its own laws regarding intellectual property. With patents, trademarks, and copyrights, one must follow the procedures of each country where protection is sought. With patents and trademarks there are certain treaties that affect procedural rights of the owner. For copyrights, the U.S. is a member of the Berne Convention, which offers some copyright protection in all member nations; thus, a work published in the United States or another Berne Union country is eligible for minimum protection in all member countries of the Berne Union.

Determining the value of ideas has always been difficult, and the steps one must take to protect intellectual property are sometimes overlooked. Identifying your intellectual property and determining what can be done to maintain your exclusive control over it will allow you to maximize its value.

The law firm of Friscia & Nussbaum contributed to this article. Matthew Miller is an attorney-at-law in Solana Beach, California. He can be reached at: (858) 259-6969.

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