an introduction to intellectual property by brian miller, trademark lawyer and it solicitor

Protecting Your Brand: Looking After Your Intellectual Property

Brian MillerSenior Associate

IP, IT & CommercialStone King LLP

ENSURING YOUR ORGANISATION'S IP IS

PROPERLY PROTECTED

COPYRIGHT

What Is Copyright?Definition

• Subsistence– Literary (includes computer programs)– dramatic, – musical and – artistic works

• no copyright in idea

2

PROTECTING YOUR INTELLECTUAL PROPERTY


PROPERLY PROTECTED

How Do I Protect It?

– Unlike trade marks, cannot register copyright

– make sure you• save a copy• do not amend• back it up• lock safely away or encrypt

COPYRIGHT

3


ENSURING YOUR ORGANISATION'S IP IS PROPERLY PROTECTED

COPYRIGHT How Do I Protect It?

– use the copyright sign © on all materials– if software, bank with ‘escrow agent’, who will:

• Test• Release to named party on certain events

4



COPYRIGHT What Happens if Someone Copies My Work?

– Be sure that it is your work that has been copied

Has the “Copy Test” Been Satisfied?– Must be “substantial”– General rule of thumb: >50% – If satisfied, do not delay

5


COPYRIGHT: Exceptions to Copyright Infringement

•Minor infringements•Temporary copies•Fair dealing (inclusion for the purpose of news reporting)•Incidental inclusion (‘passing shot’).•private and educational use (eg instructions and examination)•Public interest (eg. injurious to public life)•Copying for visually impaired•Libraries, archives and public administration •Works permanently situated in public places

6


COPYRIGHT: FAIR DEALING

7

•use deemed acceptable (eg. review and criticism, non-commercial research or private study)

•quoted material justified, no more than necessary is included.

•source of the quoted material is mentioned, along with

•the name of the author.



COPYRIGHT How Long Does It Last?• original literary, dramatic, musical and artistic

works)– life of the author plus 70 years– computer-generated works: 50 years

• films: life of principal director plus 70 years• Broadcasts: 50 years• Sound recordings: 50 years• Typographical arrangements: 25 years

8



PROPERLY PROTECTED

TRADE MARKS

Why Register?• Cannot easily protect a name • Preventing infringements costly without• Protected from the date of registration• No need to prove reputation • Protection nationwide

9



PROPERLY PROTECTED

TRADE MARKS

How Do I Register?• Easy application process• Supply name and/or mark to IPO• Work out “classes” • £200 per mark plus £50 per class

10



PROPERLY PROTECTED

TRADE MARKS

How Long Does It Take?• 4 weeks before advertisement• 8 weeks for opposition• 4 weeks for final processing• Total time: 4 months from receipt of application

11



PROPERLY PROTECTED

TRADE MARKS

What Does It Protect?• Name and logo• In classes for which they are registered

Where?• United Kingdom only• If EU or overseas protection required, register:

– EU trade mark (EEA protection)– international mark (Madrid Protocol); or– individual mark in the countries of concern

12



PROPERLY PROTECTED

TRADE MARKS

How Do I Protect My Mark After Registration?

• Fundamentally need do nothing (other than renew)• ™ during application, ® after• if mark used or copied, do not delay

13



TRADE MARKS

How Long Does It Last?

• Ten years• Can renew indefinitely• “Use or lose”

14


DESIGNS AND DESIGN RIGHTS


PROPERLY PROTECTED

• Process and reasons for registering similar to TMs• For registration to be valid, design must:

– be new– have individual character

• Period of protection: – five years– Renewable for up to twenty-five years

• Unregistered designs similar to copyright

15


INVENTIONS: PATENTS


PROPERLY PROTECTED

• Process and reasons for registering similar

• detailed specification must be:– watertight – reveal process of production– capable of registration:

• new• have an inventive step: not obvious• capable of being used in industry• not on a list of excluded items

16


INVENTIONS: PATENTS


PROPERLY PROTECTED

– software generally not patentable in UK and EU unless a “technical effect” can be shown

• must renew it every year after the 5th year for up to 20 years protection

• Fees vary (generally much more expensive)

17


DATABASES


PROPERLY PROTECTED

18


‘A collection of data or other material arranged in such a way so that the items are individually accessible’

Protection exists in potentially two forms:

(i) by copyright* as a literary work; and/or(ii) by a database right**.

* must have originality in the selection or arrangement of the contents.

** must have been substantial investment in obtaining, verifying or presenting its contents

http://www.ipo.gov.uk/types/copy/c-applies/c-literary.htm

DATABASES


PROPERLY PROTECTED

19


Registration• None necessary

Term of Protection• if unpublished, fifteen years from

• making• publication (if later)

Infringement of database right• Compilers: check permission from each owner• Users: be aware of underlying rights owners, as well

as those of the database owner


WEBSITES

How Do I Know If I Own the Code In My Website?• Commissioning Developers

• Ensure contract watertight on copyright• In absence of agreement, copyright vests in the

developer!• Employees

• CDPA, s.11(2): employer is first owner BUT• Must be ‘in course of employment’

• Is it the developer’s work? • Possession is 9/10ths…

Make sure these rights are in the contract..20

WEBSITES, DOMAIN NAMES AND HOSTING

WEBSITES: Key Aspects

Ensure legal compliance

Own the code

Control the hosting

Own the content


21


PROPERLY PROTECTED

DOMAIN NAMESHow Do I Know If Own My Domain Name?

• Ensure your organisation is the registered owner of the domain (check on WHOIS, eg. www.123-reg.co.uk/domain-names/)

• registrations in employee’s name to be avoided• Don’t forget to keep tabs on renewal

22



PROPERLY PROTECTED Whois record for nspcc.org.uk

Domain name:nspcc.org.uk

Registrant:NSPCC

Registrant type:UK Registered Charity, (Charity number: 216401)

Registrant's address:NSPCC

42 Curtain RoadLondon

EC2A 3NHUnited Kingdom

Registrar:Webfusion Ltd t/a 123-reg [Tag = 123-REG]

URL: http://www.123-reg.co.uk

Relevant dates:Registered on: before Aug-1996

Expiry date: 11-May-2013Last updated: 08-Jun-2011

23



PROPERLY PROTECTED

DOMAIN NAMESWhat’s to Stop Someone Registering A Similar Name?• nothing!• buy identical domains for generic and TLD domains• if cybersquatter appears, complain to registrar• allowing cybersquatters can result in

– damage to brand – theft of business or donations

• register a trade mark relating to domain name

24


Ensure you are registered owner

Avoid registration in an employee’s name

Keep tabs on renewals

Beware the Cybersquatters...

Domain Names

25

DOMAIN NAMESHow Do I Know My Domain Name Does Not Infringe

Another’s?

• Carry out checks (Google)• Check Trade Marks Register and Trade Marks Journal• Look on Companies House for similar company names• Use a specialised agent if concerned

26



PROPERLY PROTECTED

HOSTINGHow Do I Know I Control My Hosting Account?• unless account in organisation’s name, you don’t• developers often prefer to use own hosting• agree in contract that:

– account in organisation’s name; or– full access to be given, both during and after term– developer to transfer all digital assets/code upon

termination

27


ConclusionCovered a lot of ground:• copyright, trade marks, designs and patents• ensuring your website, domain names and hosting are

within its ownership and control

Websites: make sure in contract copyright ownership clear you control access to your hosting and domain names

For further information on website compliance, please take a look at the following articles by the author:

1. Is Your Website Legally Compliant2. Copyright in Photographs 28

Brian MillerSenior Associate

IP, IT & CommercialStone King LLP

[email protected]

brianmillersolicitor

@theitsolicitor

0207 324 1523

an introduction to intellectual property by brian miller, trademark lawyer and it solicitor

Business