Protecting your big idea

“If only I had thought of [enter big idea here], I’d be rich!

We’ve heard a similar phrase spoken countless times, and we tend to believe that big ideas are a sure path to success, but big ideas are a funny thing.  The person who has a big idea doesn’t always end up with the big idea, doesn’t always wind up coming in first, and doesn’t always end up cashing out big.

In many ways, the success of the big idea comes down to the intellectual property behind it and who can claim a valid legal interest in that property.  As an entrepreneur or business owner, it is almost certain that you will enter agreements with several other parties in order to bring your idea to market.  As you do so, you will have to consider your assets and the measures you need to take to protect them.  It can be easy to overlook the formalities, especially when relationships seem trusting and forward-moving.  Some may fear that tending to the details will kill the deal, impede the trust-building between the parties, dampen the punch of the sales pitch, or perhaps seem unnecessary because everyone is on the same page.  But is everyone on the same page?  Better yet, even if everyone is on the same page now, can you guarantee they will stay that way?

In American Express Co. v. Goetz, the plaintiff, Stephen Goetz, claimed that he had a big idea, that it belonged to him, and that it was stolen by American Express.  His big idea was the slogan “My Life My Card” to be used in conjunction with personalized credit cards. Goetz was a marketing professional, so he put together a packet pitching the idea and mailed it to American Express, Mastercard, Citigroup, and others.  He registered the domain name, applied for a federal trademark, and also disseminated to recipients of his pitch the address of a test website that previewed the software he had developed to help credit card users personalize their experience.  On all marketing material, the slogan “My Life My Card” was prominently displayed.

As it turns out, his idea was a good idea, a very good idea.  It so embodied a specific marketing message that American Express chose to use the same exact slogan.  As you may recall, beginning in 2005 American Express ran a number of high profile advertisements using the slogan “My Life My Card” and featuring big name celebrities like Robert Deniro, Tiger Woods, and others.  The campaign was a big success.

As you might imagine, Goetz was not happy.  He sued for misappropriation and trademark infringement… and lost.

Why?  Because, the court found, he had no legal interest in the slogan.  Amex did not admit to taking the slogan from Goetz; rather, Amex claimed that it independently developed the idea only one week prior to receiving Goetz’s package in the mail.  Goetz of course did not believe it.  But whether or not we are inclined to share his belief that the timing was just a bit too “convenient,”  it did not matter either way to the court, which based its decision on the fact that Amex could not steal something from Goetz that Goetz did not own.

The court found that Goetz had no legal interest in the slogan, despite developing the idea, registering a domain name using the slogan, and applying for a federal trademark, because a trademark or service mark must be used to identify the source of goods or services.  The slogan was not intended to identify Goetz’s own marketing services, but rather, the hypothetical services of a credit card company.  Trademark rights do not arise in such ideas.  Trademark rights arise from the use of a mark in connection with goods or services in commerce.  Copyright, on the other hand, does protect original expression of ideas, but short phrases like slogans are typically considered to be insufficiently original to gain copyright protection.  Goetz’ idea was not a trade secret because he made no effort to keep it secret, and neither was it the proper substance of patent law.  So how could Goetz protect his idea?

Goetz’ main protection should have come from a contractual agreement, but because Goetz had no such agreement with American Express, Goetz had nothing.  American Express, by contrast, had great success.

When it comes to protecting the intangible assets of your business, the intellectual property attorneys at Briskin, Cross & Sanford can help you make sure that when you enter new relationships with business partners you retain the ability to protect your big idea, leverage your big idea, and make sure your big idea doesn’t go down in history as being someone else’s big idea.