Disclosure control
: Florida intellectual property laws

Intellectual property is a valuable commodity. However, the available layers of protection don’t happen automatically.

What are you doing to protect your intellectual property? Have you or your business taken steps to protect your brand, innovative products, original software or other forms of intellectual property?

You probably know there are a variety of options to protect these valuable assets, principally, patents, copyrights and trademarks. But if you are not taking advantage of these protections, you are making a costly mistake.

All of these protections, with the exception of state trademark rights, are secured through formal registration with the federal government. These registrations provide you and your business with layers of protection for many types of intellectual property, as well as providing notice of your intellectual property to others in the market and to the public at large. For some companies, intellectual property is one of its most valuable assets, and can be leveraged against competitors both offensively and defensively.

Many people may not realize the disclosure of a novel product, process or design jeopardizes the ability to protect it. Depending on the circumstances, an inventor may be prevented from securing a patent if the invention was disclosed before filing the patent. Similarly, trade secret protection is lost when those secrets become publicly known. While many larger companies have policies addressing the use and disclosure of information outside the company, most individuals and small businesses do not.

Since 2006, a lesser-known Florida statute also limits the available remedies for anyone whose ideas and creations are used by others. Florida Statute 501.972 bars any claim or cause of action for the use of “an idea, procedure, process, system, method of operation, concept, principle, discovery, thought, or other creation” that is not protected by patents, trademarks, copyrights or trade secrets unless there is a written contract. In other words, if someone uses your idea, concept, creation (or the other forms enumerated in the statute), you cannot prevent that use or obtain damages—unless there is something in writing defining the terms of use.

Florida Statute 501.972 appears to be one of the first of its kind in the U.S., and in its seven years of existence only once has §501.972 been the subject of a published legal opinion. In 2010, BP solicited the public for ideas to stop the leak from the Deepwater Horizon rig that gushed oil into the Gulf of Mexico for 87 days. BP ultimately received more than 100,000 submissions from members of the public, and at least one person sued BP for compensation based on his submissions. However, a Federal Court recently ruled that the litigant’s claims based on submissions to BP were barred by Florida Statute 501.972.

What does this mean for you? In short, you should never disclose any idea, concept, creation or other intellectual property without a written contract defining terms of use and, depending on the circumstances, secrecy. There are a number of examples of instances where such disclosures occur in the business world. For example, business owners or entrepreneurs may disclose projects they have in the works to entice investors, venture capitalists and potential partners. A physician may speak to medical device or pharmaceutical representatives about improvements in technology. Your business may contact an engineering firm or a manufacturing company to build a new prototype or product. Sometimes individuals disclose their product improvement ideas to manufacturers. Indeed, some large companies have websites or other mechanisms for customers to submit these suggestions. Each one of these examples may present the need to obtain a written agreement or understanding of the terms of use and disclosure.

Protect yourself.

Editor’s note: Ryan Santurri is a Florida Board Certified Intellectual Property Law Attorney. He advises clients in the areas of intellectual property and related litigation involving patents, trademarks, trade secrets, copyrights and right of publicity. He also provides trademark and copyright acquisition and counseling services. He has been involved in successful appeals to the Federal Circuit, including favorable appellate decisions on rulings from trial and from the U.S. Trademark Trial and Appeal Board. [addmg.com]