October 25, 2004 Program Summary

“Professional Liability, Intellectual Property,
and Other Hot Legal Issues”

by Adele Sommers; photography by Mary Meyer

Speaker Mary HarrisAt this information-saturated session, an expert panel consisting of Mary Harris, Steve Ronca, and Andrew Schroeder, all local attorneys practicing in San Luis Obispo or Santa Maria (see speaker details below), helped us drill into several “burning questions” about contracts, professional liability, patents, trademarks, copyrights, and ownership of intellectual property.

Speaker Steve RoncaDue to the broad nature of these topics, we requested questions in advance of the meeting. Also, the purpose of this event was to provide general guidance rather than specific legal advice, which would require in-depth knowledge of a particular situation.

We were able to address most of the questions to derive some valuable principles and guidelines. Below is an amalgam of the important highlights we gleaned from our panelists. Also note that definitions and a list of resources appear toward the bottom.

Speaker Andrew Schroeder1. General advice on working with an attorney

  • Bring a list of questions. Many people consult an attorney in an open-ended and unstructured way. However, you can help your legal advisor better focus on your needs if you come prepared with a list of specific questions.
  • Do some advance research. Try to learn what you can about the subject ahead of time. The effort will be worth the time spent, as you won't need to use all of your attorney's time to educate you on the basics.
2. Tips for working with a patent attorney
  • Check qualifications and methods. When shopping for a patent attorney, find out if he or she has technical expertise in your area of focus. A data encryption product may not be well understood by an attorney with a biology background, for example. Also ask about fees, whether the attorney outsources work to other groups locally or in other countries, and what his or her cross-consultation process is (for complex products that require multiple areas of expertise).
  • Be sure to disclose ALL product or process details. Don't ask your attorney to rely on vague descriptions or sketches of your product or process. The more thorough, detailed, and specific your information is, the better your patent application will withstand all future challenges.
  • Alternatives to patents. If you want to avoid the expense and time of obtaining a patent (which typically costs about $10,000 and three years of effort), you can consider using a trade secret. While a trade secret protects and polices your ideas to some extent, it doesn't protect against reverse engineering. A patent is the best tool for protecting against idea theft and “fair use” defenses.
3. Who owns a product you created while an employee?
  • Almost always, your employer owns it. You can usually count on it if you used the employer's equipment, resources, facilities, and/or created the product on work time. If the situation meets only one of these tests, your employer can still claim ownership. For example, let's say you borrowed a company laptop and took it home, where you developed a product of your own. You therefore used company equipment even though you used it off-site on your own time. If the product you created relates to what your company does, the company may want to pursue a claim to the rights to it.
  • Independent contractors generally own their original works of authorship. Some exceptions may apply.
  • Gray area: Are you a freelancer or an employee? The answer could determine who owns the rights to the products you create. Even if you think you are an independent contractor, and you have an agreement spelling out the product rights you will retain, there are certain tests your work situation must meet. The IRS lists the criteria for determining whether or not you fall into the employee category. For example, did the client provide benefits for you? Did you work on your client's site using their equipment for extended periods without working for other clients? Check the IRS guidelines to learn about all the tests.
  • When can you include work samples you created in your portfolio? Regardless of whether you created a work sample as an employee or as a contractor, it's always best to request permission in writing (even via e-mail), which you should save. The company or client may specify certain conditions, such as “sanitizing” the products to remove any proprietary information or customer names. Requesting and receiving permission is better than relying on “fair use” guidelines, as it's always possible your request may be denied.
4. How can you limit your liability for products you create on contract?
  • You can limit, but not eliminate, your liability. Although you can't absolve yourself of all responsibility and liability for the completeness, accuracy, and safety of the information products you create for your clients, some limited legal protections exist. Errors and omissions insurance and carefully worded contract clauses are two different ways to mitigate the extent of consequential damages that might result if customers have real trouble with your products. (Example: a customer misinterprets a key instruction in a user manual you created for your client's medical diagnosis software.)
  • One contract clause does not fit all. Just as a flu shot protects only against certain strains of viruses, a contract clause spelling out the limits of your professional liability should be tailored to the situation. Unlike shrink-wrap software, this is an area where boilerplate disclaimers will not work well. To be sure you are addressing your situation(s) correctly, you should consult an attorney. Consider the following:
    • How complicated is the work?
    • What is the nature of the product or process?
    • What background do you and your client each bring to the table?
  • Liability problems can stem from poor relationships. Working with clients is all about building relationships. The more you can support your clients through your personal guarantee of satisfaction, the more you are likely to maintain positive relationships. As part of maintaining those relationships, you can take reasonable precautions by ensuring that your clients review and approve your products before they are released. Additionally, by having a thorough written agreement, and a verbal discussion of the key clauses, you will probably build stronger relationships, even if you also filter out a few clients along the way.

5. What protections apply to maps and collections of common facts?

  • Originally created maps, but not the facts they are based upon, are protected by copyright.
  • If you are recompiling a collection of maps or common facts, you should consult an attorney for guidance on copyright issues.

6. Who owns the rights to a work compiled from several different sources?

  • Ownership of a thing is not the same as owning rights to its components. If you are creating a compilation involving various components, you must acquire the rights to all elements you didn't originate (e.g., in the form of a license) if you want to have rights to residual sales or other future uses.
  • You should research the “pedigree” of all components given to you. If you obtain some graphic or textual material to incorporate into a product you're creating, you should find out who owns the rights to those items. For example, is it clip art with terms of use that say it can be used royalty free, without attribution, in any form? Or are there strings attached on how or where it can be used? What rights are reserved by the originators?
  • If in doubt, see an attorney. To get information on where the boundaries of licensing or owning a particular element begin and end, seek professional guidance. Once you understand the basic concepts, you may not need repeated interpretations unless the circumstances change.

7. What legal documents should you have on an e-commerce Web site?

  • You should have at least the following: Terms of service, privacy policy, and copyright and trademark notices where applicable.
  • Seek legal help as needed to construct these documents or to tailor boilerplate templates.

8. What are some tips for using trademarks?

We ran out of time to complete the discussion of this topic, so the information below comes directly from the US Patent and Trademark Office, or USPTO (see http://www.uspto.gov/web/offices/tac/doc/basic/register.htm).
  • Is registration of a mark required? No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.,
    • constructive notice to the public of the registrant's claim of ownership of the mark;
    • a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
    • the ability to bring an action concerning the mark in federal court;
    • the use of the U.S registration as a basis to obtain registration in foreign countries; and
    • the ability to file the US registration with the US Customs Service to prevent importation of infringing foreign goods.
  • When can I use the trademark symbols TM, SM and ®? Any time you claim rights in a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol “®” only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.


  • Creative Commons (a set of guidelines that offers ways to reserve some, but not all, rights to a given work): http://creativecommons.org




  • Patents: A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. US patent grants are effective only within the United States, US territories, and US possessions. Under certain circumstances, patent term extensions or adjustments may be available. (Source: http://www.uspto.gov/web/offices/pac/doc/general/index.html#ptsc)
  • Trademarks and servicemarks: A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and servicemarks. (Source: http://www.uspto.gov/web/offices/PAC/doc/general/index.html#mark)
  • Copyrights: Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly. The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. (Source: http://www.copyright.gov/circs/circ1.html#wci)
Professional Liability, Intellectual Property,
and Other Hot Legal Issues
Date: Monday evening, October 25, 2004

Professional Liability, Intellectual Property, and Other Hot Legal Issues” addressed several of the legal questions audience members submitted in the areas of:

  • Errors and omissions insurance vs. structuring contracts to avoid liability issues
  • How to shield your own or others' proprietary work from unauthorized disclosure
  • How to design and use nondisclosure agreements
  • How to license your work for use by others
  • Work-for-hire and other contracts
  • Copyright protections and precautions
  • Copyright infringement considerations
  • Trademarks and patents

We invited a distinguished panel of attorneys whose practices geographically cover north SLO county to Santa Maria. Collectively, they specialize in contract law; copyright, patent, trademark, and intellectual property law; and other business law topics.

  • Stephen C. Ronca, Attorney-at-Law, grew up in San Luis Obispo and attended Cal Poly, graduating with a BA in political science in 1991. He returned home after earning his juris doctor degree, and currently runs a general law practice in San Luis Obispo. Steve also owns and operates Law-Abiding Citizens, a legal clinic he formed in Atascadero in 1999 that offers affordable professional assistance and legal representation in various areas of the law. Steve established the Cuesta College Legal Counseling Clinic in 1996, which offers pro bono legal advice and assistance to the students. Additionally, he enjoys teaching business law at Cal Poly and Cuesta College. Steve's office phone numbers are 805-547-8383 (San Luis Obispo) and 805-466-4699 (Law-abiding Citizens in Atascadero).
  • Andrew Y. Schroeder, Attorney-at-Law, majored in biological sciences at Cal Poly and received his J.D. degree from the University of the Pacific, McGeorge School of Law, with a concentration in Intellectual Property. Andrew is licensed to practice before the United States Patent & Trademark Office (USPTO) and is a member of several county and state bar associations. Additionally, he belongs to the Los Angeles Intellectual Property Law Association; the Intellectual Property Law Section of the State Bar of California; the US District Courts, Northern and Central Districts of California; and the 9th Circuit, US Court of Appeals. Andrew has even taken a class with Supreme Court Justice Anthony Kennedy, which was called "Fundamental Rights in Europe." His Web site is IdeasToLegacies.com; office phone is 805-260-1842.
  • Mary A. Harris, Attorney-at-Law, graduated with highest honors from Cal Poly (B.A. Political Science 1980), and received her law degree from Loyola Law School (JD 1984), where she was a member of the Loyola Law Review and Managing Editor of the Entertainment Law Journal. She is a member of the Intellectual Property Section of the State Bar of California. Mary is a sole practitioner in San Luis Obispo, providing personalized services in the areas of trademark, copyright, licensing, computer law, and estate planning. A transactional attorney for 20 years, her intellectual property services include brand development and counseling, trademark and service mark selection, screening, registration, protection, and maintenance, as well as copyright registration and protection. She is also very active in the community, for example, as a Past President of the Rotary Club of San Luis Obispo and as founder and former Executive Director of the San Luis Obispo International Film Festival. Mary's San Luis Obispo office phone is 805-543-0855.


Disclaimer, credits, copyrightGet Acrobat ReaderSome articles or linked resources may be in Portable Document Format (PDF). To download the free Acrobat Reader, click the icon at right. To install the Reader, double-click the downloaded file.

Disclaimer and credits