DIGITAL PUBLISHERS’ GUIDE TO INTELLECTUAL PROPERTY

Simon Rowell, Partner

Digital Publishers’ Guide to IP

A. Protecting your brand

B. Understanding copyright

C. Securing ownership of copyright in digital works

D. Licensing of copyright in digital works

E. Confidential Information

A. Protecting your brand

Common law v registered trade marks

Conduct a search prior to use – territory?

Pick a distinctive mark

File trade mark applications

o Word mark

o Logo

o Colours?

o Book titles?

o Word mark

o Logo

o Colours?

o Book titles?

B. Understanding copyright

Works protected by copyright

o Literary (includes software and compilations), musical and artistic works

o Sound recordings and films

o Typographical arrangements of published editions

o Communication works Communication work means a transmission of sounds, visual images, or other information, or a combination of any of those, for reception by members of the public, and includes a broadcast or a cable programme

Works protected by copyright

Note, a digital work may comprise one or all of the foregoing works

Originality

• Sufficient independent skill, judgement and labour went into creation

– Nine Network television programming schedule: Yes

– NO FEAR t-shirt slogans: No

• Not itself copied

Exclusive rights of copyright owner

o To copy or issue copies

o To perform, play or show the work in public

o To communicate the work to the public

o To adapt the work

o To authorise others to do the above

Exceptions to the owner’s exclusive rights

• Fair dealing

• Education

• Libraries and archives

• Format shifting

• Internet service provider liability

Duration of copyright

• Literary, artistic, dramatic and musical works: 50 years after death of author;

• Sound recording or film: 50 years from date made or made available to the public (whichever is longer)

• Publishers’ copyright: 25 years after publication

• Communication work: 50 years from first communication to public

Infringement of copyright

• Takes a substantial part

• Importance of the part taken

• Is objectively similar

• Assessment of overall similarities: “a copy is a copy if it looks like a copy”

• There is a causal connection

• Some copying has actually occurred

Idea v Expression of Idea

C. Securing ownership of copyright

[Image used on www.spicyindia.blogspot.com (4 Dec 2007)]

Securing ownership of copyright

• Copyright automatically exists

• Employee authors

• Commissioned works – text v illustrations

• Assignments

• Marking with © symbol recommended

• Retaining drafts recommended

Securing ownership of copyright

• Works contributed by members of the public

• Important to include terms of submission, to clarify ownership / licence terms (eg open source, creative commons)

• Wikipedia terms: To grow the commons of free knowledge and free culture, all users contributing to Wikimedia projects are required to grant broad permissions to the general public to re-distribute and re-use their contributions freely, as long as the use is attributed and the same freedom to re-use and re-distribute applies to any derivative works.

D. Licensing copyright in digital works

Owner’s permission to perform a restricted act

• Author’s licence direct to digital publisher

• Book publisher’s sub-licence to digital publisher

• Digital publisher’s licence (as © owner) or sub-licence (as licensee of author) to a syndication partner, subscriber, ISP or other third party

• One to many licence – GNU GPL or Creative Commons

Publishing licence

• Identification of work(s)

• Rights licensed – book, audio book, digital book, TV and film rights, merchandise rights, etc

• Duration

• Territory

• Royalties

• Sublicensing

E. Confidential Information

• Exists by contract or by circumstance

• Submission or receipt of project ideas

• Employees

F. Patents

• Territorial

• Patentable subject matter varies

• Novelty

• Inventive

C. Questions?

[Image released to the public domain - http://commons.wikimedia.org]

C