IP Audit to-do for Jan. 2018

January 2018 To-Do for Individuals and Companies who Own Intellectual Property

By Connie J. Mableson

If you individually own or if you have an interest in a company that owns intellectual property (IP) assets, January is a good time to prepare an IP audit for you IP assets. An IP audit is simply a list or database pertaining to your IP. It can help you identify IP assets, make the proper registrations to protect the IP, administer any IP licenses, help you to keep tract of the IP’s monetization, and help you collect IP royalties. Your IP audit will create an immediate and long-term impact on your assets and potential income to be collected.

A.  Copyrights: Any creative expression such as text, artwork, graphics, PPT presentations, website HTML, Website code, text on websites, and brochures. Trademarks, Patents, and Trade secrets.

B.  Your WEBSITE. Make sure you OWN your (a) URL and (b) your HTML and website. Perform a WHOIS search at to see if you (or your website development company) own your URL. If not, make sure you get the purported owner to transfer ownership to you and make sure the registrant’s records (like GoDaddy) are changed. Then make sure you get, from your website developer and anyone who contributed anything to the website, a release of rights to you. Under copyright law, the developer of your website owns your website unless the developer has transferred ownership to you IN WRITING.

C.  Music. IP includes any musical compositions or master sound recordings you may have made.

D.  AV Productions. IP includes any audio-visual productions you made. From corporate videos, to product videos, music videos, or any YouTube videos. This can also include films, documentaries, commercial adverts, etc.

E.  Trademarks. Are you using any word marks like company name, product names, services names? What company or brand logos are you using? Make a list.

F.  Patents. DO you have any utility or design patents?

G.  Trade Secrets. Do you have any trade secrets in the way of processes, formulas, methods, that need protection but have not been protected by filing a copyright or patent? These need to be listed and identified as CONFIDENTIAL INFORMATION. Only certain people should have access to your trade secrets and they should only be disclosed on a need to know basis and always under a Non-disclosure agreement.

A.  Copyrights. Any creative expression such as text, artwork, graphics, PPT presentations, website HTML, Website code, text on websites and brochures, musical compositions, master sound recordings, and audio-visual productions should be registered through the U.S. Copyright Office.

B.  Patents should be registered with the USPTO-Patent Office.

C.  Trademarks should be registered:
-at the state level. Either with your state’s corporation commission or secretary of state (each state is different), you should register your marks, names, and logos so you have priority in your state.
-federal level -USPTO. If your marks, words, slogans or logos are used in more than one state, you can apply for a federal trademark registration. Consider conferring with a Trademark attorney to get this done properly. Not all marks or names are eligible for registration.

D.  Trade Secrets can only be protected by Non-Disclosure Agreements. Make sure you have a form of NDA that includes a non-circumvention provision and is up to date.

Step 3: CHECK YOUR CONTRACTS. Some of your IP may be licensed under License or similar agreements. Make sure you have copies of all licenses in the file for the specific IP. Check the licenses to make sure you are in compliance and that the licensee is also in compliance for payments, reporting, etc. If not, you may want to see legal counsel to help you get the licensee in compliance.

Step 4: DECIDE OF YOU NEED FOREIGN PROTECTION. This may be the year you decide to obtain foreign protection for your IP. This could mean foreign copyright application, foreign trademark application or Madrid protocol or other international registration for trademarks.

Step 5: TICKLE ALL DEADLINES for filing updates, renewals, etc., in your individual/company master calendar. Trademarks and patents require renewal. Tickle these dates. Also, all of your IP contracts should have dates tickled for termination, renewal, option periods and anything in the contract that requires action by either party. By doing this, you can also budget for the renewals and have a good idea what monies you will need and when for renewals.

DISCLAIMER: The materials in this article and as may appear on,, and (the “materials & websites”) are made available by Connie J. Mableson, PLLC for informational purposes only and are not legal advice. The transmission and receipt of information contained in and on the materials & websites do not form or constitute an attorney-client relationship. I am not your attorney unless you have signed a written engagement letter with my firm. Persons receiving the information in and on the materials & websites should not act upon the information without seeking professional legal counsel. In the event the materials & websites are not consistent with the rules or laws governing communications of legal services in a particular state, and a client contact is generated as a direct result of such materials, Connie J. Mableson, PLLC is unwilling to assume the representation of the client contact.

FACEBOOK offers new tools to find pirated videos (and content owners can monetize them!)

If you are a copyright owner of a video that has been copied or pirated without your permission, Facebook is making it easier for you to police the social platform for unauthorized and pirated videos — and then either monitor or block them, or potentially make money from them.

Facebook’s Rights Manager allows copyright holders to identify unauthorized video sharing based on reference files. But using the system has largely been a manual process, unless rights owners developed hooks from their own automated systems into the Rights Manager’s API.

Facebook now is directly integrating Rights Manager with services from three third-party providers —Zefr, Friend MTS, and MarkMonitor — to provide new options to automate such tasks. Although Facebook doesn’t charge any fees to use Rights Manager, the third-party partners do.

Zefr:  Zefr’s RightsID system was originally created for YouTube. Through Zefr’s access to Facebook’s video-search API, it can help rights holders find intellectual property via descriptive search; Zefr also will offer clients the capability to manage the queues of automated matches returned by Rights Manager.

Mark Monitor: MarkMonitor provides antipiracy-screening services for on-demand and live-streaming video.

Friends MTS: U.K.-based Friend MTS’s services for TV broadcasters let them find illegal live-streams of their channels

Facebook’s Rights Manager lets content owners create automated rules to determine what actions to take when it finds a copyright-infringing video. They can block the video from being viewed; leave the video up and monitor it for activity; or claim a share of any advertising revenue generated if an ad break runs during the video. In addition, rights holders can choose to manually review the videos that are flagged as a match.

Content owners must be approved to access to Facebook’s Rights Manager tool, via an application available at


Website owners ALERT -DMCA Law Changes 12/31/17


IF YOU OWN A WEBSITE and you allow others to post reviews, comments, pictures, or any content, you may be liable for contributory copyright infringement if you do not comply with the DMCA.  Even a single claim of copyright infringement could cost you thousands in attorneys’ fees, not including damages.

The DMCA has changed.  YOU MUST ELECTRONICALLY FILE YOUR DESIGNATED AGENT (THE PERSON WHO RECEIVES THE DMCA NOTICES REGARDING YOUR WEBSITE) BEFORE DECEMBER 31, 2017 OR YOU LOSE DMCA SAFE HARBOR PROTECTION.  Even if you have filed an agent already, you must re-file using the new electronic filing system.

For existing and former clients, I will act as your designated agent (if you want me to) and/or will file your designated agent information electronically with the U.S. Copyright Office for a flat fee (including the filing costs) of $100.00 per URL/website. Please provide the following information: (1) the URL of your website; (2) the owner name of the website (your company name or individual name); (3) address (no P.O. Boxes); (4) telephone number; (5) email address, and remit $100.00 to me prior to December 27, 2017.

You must also post certain information on your Website to qualify for DMCA and this is a good time to evaluate your compliance with DMCA to maintain complete DMCA safe harbor protection.

Feel free to call me if you have any questions. Connie 602-277-8100.



YouTube “Reaction Video” deemed “Fair Use”

“Reaction Videos” are videos that show the emotional reactions of people viewing television series episodes or film trailers and have grown in popularity on YouTube.  These videos must necessarily use copyrighted content owned by others (such as the television show) as a part of the “reactions”.  The United States Southern District Court of New York recently ruled that in at least one case, the use of the borrowed content was a “fair use” and could be used without the permission of the content owner.

The case concerned a video uploaded to YouTube by the h3h3Productions channel (Ethan and Hila Klein) in which the Kleins mock a video of another professional YouTuber, Matt Hosseinzadeh. The five-minute video by Mr. Hosseinzadeh is a fictional portrayal of a character played by the author chasing after a woman who challenges him to a parkour race. The Kleins’ video intercuts clips from Mr. Hosseinzadeh’s video with their commentary, as the couple criticize a range of aspects of the video including the production values of the segment, Mr. Hosseinzadeh’s fashion styling and the author’s portrayal of women.

Mr. Hosseinzadeh filed a DMCA Notice (Digital Millennium Copyright Act) with YouTube. YouTube responded by taking down the Kleins’ video, which led the Klein’s to submit a DMCA counter-notification challenging Mr Hosseinzadeh’s DMCA Notice and claiming that the video was fair use of the original work, and therefore did not infringe Mr Hossenzadeh’s copyright in the video.

Following this, the legal action in question was filed, with Mr. Hosseinzadeh alleging copyright infringement and misrepresentation.

The Court held on summary judgment that the Kleins’ use of Mr. Hosseinzadeh’s video was “fair use” after applying the 4 fair use factors.

For more information about the DMCA and fair use, see our webpages here.



Legislation Protecting Sound Recordings

Two (2) new bills have been introduced that affect protection and compensation regarding sound recordings. A sound recording includes CDs, vinyl, mp3 and digital formats.

    Fair Play Fair Pay Act (HR 1836), was re-introduced in the House in March, 2017. Most people are surprised to learn that a radio station does is not required to pay the record label or the artist/band when it plays sound recordings. Only the songwriter gets paid. This Fair Play bill is intended to create a terrestrial performance royalty for sound recordings. Radio stations and broadcasters are opposed to the Bill as it would cost them additional money to play “records” arguing that artists and labels receive fair treatment based on the free promotion when the song is broadcast and resulting purchase of albums, merchandise and concert tickets.
    The Classics Act (HR 3301) (Compensating Legacy Artists for their Songs, Service, and Important Contributions to Society Act), would provide federal copyright protection for sound recordings made prior to 1972. Any recordings made prior to 1972 only enjoyed state by state copyright protection if a state offered it by statute. Very few states did.

These bills are not new. They typically fail. I’ll keep you updated.