In 2023, The New York Times made history after suing Microsoft and OpenAI in what has been dubbed the biggest intellectual property (IP) case to date, and, given that many platforms tend to source information and materials from numerous places, some employees may unintendedly violate copyrights, trademark rights, or patents.
 

As a result, it is important that a solid training program on the fundamentals of IP laws is included in the onboarding process.

Remember that any employee, regardless of their department, level, or seniority, is a part of the company. As such, any IP infringement on their part can damage your business.

In this article, I will share some policies that, from my perspective, need to be incorporated into company-wide IP training.

Legal Particularities Worth Remembering

Businesses that operate globally must register trademarks in the different jurisdictions where they do business.

It is important to understand what happens if an employee uses a trademark not registered by the company but belonging to another company in a specific region, such as the United States. For example, when a Chinese conglomerate started selling articles that carried a specific brand name in Texas, a family-owned business — which owned the trademarks for that name since it was their last name — sued the Asian firm.

Going through a similar situation can cause damage to your brand — financial, reputational and, ultimately, cause you to leave your new target market.

In this regard, some aspects need to be considered as to what comprises a brand:

• Visual representation: The graphic elements of the trademark
• Naming: The actual name used
• Classes: The areas of business or classes with which the trademark is registered

Each point is critical, and overlaps can create problems. If a trademark already belongs to another registered entity — as it happened in the San Antonio case — legal claims may arise, and measures may be taken based on the degree of similarity.

Key Components of a Robust IP Training

1. Fundamentals of intellectual property
Many people do not realize that IP includes not only the objects of work but also trademarks. All in all, IP encompasses a variety of information — even trade secrets, some branding elements, and innovative ideas could be part of it.

2. Rights transfer
It is essential to understand how the rights to intellectual work created by employees are transferred. For instance, our policy states that all developers who work on creating intellectual property automatically transfer their rights to any resulting work product containing such intellectual property to the company. This ensures our company is the legal owner of these rights.

3. Temporary workers
As the nature of work keeps shifting, more and more companies are working with temporary, project-based workers rather than full-time employees. These project-based workers are often subject to different rules than regular employees and are rarely considered when assessing the company's compliance. Instead, the hiring manager prioritizes results above all else, which may create a significant legal gap. This creates a significant legal gap.

Hence, companies must clarify how temporary workers may use company materials, trademarks, or other intellectual property. Similarly, contracts should be explicit, and state if the results of a contractor’s work belong to the company, or whether the contractor can use it for their own purposes. If so, the terms under which they can use this work must be clarified.

4. Trademark use
As would be expected, marketing, sales, and business development teams are using the company’s materials on a daily basis to promote their products and services. Having said this, understanding how to use trademarks correctly, especially in regions where the trademark is not yet registered, is very important to avoid risks.

For example, if there is a case where we need to promote our services in a new market — provided this is not our main market — and we do not have a trademark there yet, at least we need to understand the situation and its possible consequences. Given that this is a common situation when companies are testing the waters for a potential expansion, having everyone — especially the marketing and sales teams — aware of the context is much better than ignorance and being caught off-guard.

5. Implementation and reporting
Who is responsible for the implementation of policies, and who can be contacted if there is a controversial case?

To ensure that IP management is handled competently, and promptly, legal professionals need to be involved. Lawyers play a key role in overseeing IP policies and guaranteeing companies remain compliant, and their expertise is essential for navigating the growing complexities of IP laws. In the case of smaller firms that have a central activity related to IP rights, such as IT outsourcing, then its legal emphasis will be on the transfer of such IP rights.

This is why large companies often have an entire department dedicated to IP rights. However, regardless of the size of the business, thorough training must be provided for staff to support IP-related processes.

6. Using trademarks of others
There are often situations where we need to use a partner’s logo or other branding elements.

Many people may not realize that using third-party materials often requires explicit consent. Without this permission, we risk potential legal claims for trademark misuse. Also, to clarify, this consent should not be a mere informal agreement, but must be documented in writing and signed by an authorized representative of the third party.

Maximizing the Training’s Effectiveness

Human resources (HR) professionals play a critical role in ensuring training is effective. By working together with a company’s legal team, the HR department can craft a solid program that keeps everyone aligned and promotes good practices across the organization.

Typically, training dynamics involve organizing seminars or courses that help employees understand and internalize IP rules. To enhance value, guest speakers who have previously navigated IP challenges successfully can be invited.

However, the company must keep in mind that its role in providing effective training goes beyond organizing — it needs to simplify complex concepts for employees to fully grasp their importance. I also recommend looking at good practices from other sectors. For example, IT and SaaS companies often face compliance problems, while retail brands — and their hundreds of trademarks — can offer additional insights and case studies.

Final Thoughts

While IP might seem like a cumbersome subject, it can be simplified and demystified. Especially in today’s world, understanding intellectual property and its challenges is a must, and companies need to prepare for it. By creating a thorough, all-encompassing training program that trains employees from the get-go, businesses can ensure their team is well-trained and that protocols are respected. This will, in the long run, pay for itself, as the alternative involves costly lawsuits and potential reputational damage, among other issues.

Author Bio

Maria Lukinskaya is the Chief Legal Officer at Mellow.

Error: No such template "/CustomCode/topleader/category"!