How Associations Can Protect Their Content Rights Before Going Global
By: Dorothy W. Deng and Michelle Sara King
Reprinted with permission. Copyright, ASAE: The Center for Association Leadership, June 1, 2015, Washington, DC.
Intellectual property is a crucial asset for any association. This includes content developed for members and constituents as well as the value associated with the association's brand and promotion of that brand. Intellectual property rights and laws vary by country, so it is important for all associations to take protective measures and learn the laws and regulations of their target markets before going global.
We have prepared a checklist to help associations begin to protect their intellectual property rights.
1. Register the Association's Trademark and Copyrighted Content in the United States
Filing legal actions against foreign content infringers in a foreign country can be very difficult and expensive. As such, it is advisable to secure trademark registration with the U.S. Patent and Trademark Office and copyright registration with the U.S. Copyright Office to help preserve the association's right to pursue legal actions in the United States.
In addition, it is advisable to display the association's trademark designation and copyright notice on its content. For trademark designation, the ® symbol can only be used in conjunction with the association's mark after the federal trademark certificate is issued. Without a federal trademark certificate, the TM symbol can be displayed. For copyright notice, it can be displayed regardless of a copyright certificate issued by the U.S. Copyright Office. The copyright notice shall include three elements:
- the word "copyright," or the symbol ©
- the year of publication
- the copyright owner (association)'s name.
2. Have Clear License Agreements and Restrictive Terms of Use in Place
There are several ways to market an association's content internationally. For example, some associations share content with their local partners via joint events or web portals, while other associations contract with local distributors to enter the local market.
If an association is considering the options mentioned above, it is advisable to enter into an appropriate license agreement with the local partner or distributor. The license agreement should include the scope of permitted use, clear restrictions concerning prohibited use, and language reserving the right to terminate the license agreement immediately when the license terms are breached.
For associations making their content available without going through local partners or distributors, it is advisable to clearly state the scope of permitted use and any restrictions concerning prohibited use at the point of access, as well as directly on the content. For example, if the association plans to make its content available to registered users, the users could be prompted to agree to the terms of use. If the content is intended to be marketed to an international audience, the association should consider translating the terms of use to the local language.
3. Consult With the Website or IT Vendor
As a practical matter, associations planning to make their content available via a website or portal should consult with their IT vendors and legal counsel to see if any security measures could be implemented to prevent unauthorized access, downloading, or copying.
4. For Targeted Countries, Register the Association's Trademark Locally
For associations planning to have a more substantial presence in a particular geographic area, it is advisable to register trademarks locally and also to explore registering using the Madrid Protocol. There have been examples where a competing local association went ahead and registered the U.S. association's trademark in the local market, therefore preventing the U.S. association from using its trademark or name locally. Since trademark registration requirements are country specific, associations planning to enter into a specific market should retain a local trademark attorney to handle the trademark registration.
Intellectual property is one of the most crucial assets of any association. Association leaders need to be vigilant and focused on ensuring their intellectual property is protected both in the United States and other markets. Associations should consult their legal counsel and relevant country IP offices for information and guidance on protecting their intellectual property.
Michelle Sara King is president and CEO of King Consults in Washington, DC. Email: mking2@aol.com