Protecting your ideas

08 March 2010

Victoria Evans, Associate, Bird & Bird LLP

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Overview

The different forms of intellectual property that arise in the creative industries

Subsistence – how and when an IP right comes into existence? Who owns it?

Infringement – what protection do IP rights actually give?

Showing your work:Protecting your ideas using contracts

Avoiding infringement

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What is Intellectual Property?

Key features:

Intellectual Property protects creations of the mind that are of commercial value

IP is an intangible (although can sometimes be registered) – it exists only in law. It is however a property right and can be bought, sold, licensed, etc….

IP gives rise to exclusive rights, and so also the right to stop other people from doing things

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Types of Intellectual Property

The main types of IP in the creative industries:

Copyright – protects literary and artistic works

Designs – protect the appearance of usually 3D objects

Trade Marks – protect marks showing trade origin

Patents – protect technological inventions, less relevant here

Confidential Information – but not really intellectual property at all! Protects private information which is generally not otherwise protectable by the IP rights above

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Why is Intellectual Property Important

Exclusive Right

Has value

InfringementInjunctions

Damages / Fines

Sometimes criminal Liability

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A practical example

Where's the IP here? A Louis Vuitton handbag…

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A practical example (cont.)

Trade marks: "Louis Vuitton"

Designs:

Copyright:

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Copyright

Protects original work: literary, dramatic, musical, artistic, sound recordings, films, broadcasts…

'Artistic works' likely to be of most interest to designers however…

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Copyright: Overview

Copyright protects artistic works, provided that work is:

recorded in permanent form

original i.e. not copied

Copyright does not protect ideas per se – it protects the expression of those ideas.

Copyright arises automatically from when the work is recorded – it cannot be registered (but should be fully documented)

Consider using copyright notice © to put other parties on notice of your rights – but not essential

Copyright in artistic works lasts for 70 years from death of the author

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Copyright: Ownership

Critical to ensure you know who owns the copyright as they alone have the right to use and exploit it!!

Default position: the author of the work is first owner unless there is an assignment to someone else

Employer will be owner if work created by employee during course of employment

Even if work is commissioned, the freelance designer who created it will be owner subject to any agreement to the contrary.

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Copyright: Infringement

Copyright gives the owner the exclusive right to:

copy the work

distribute copies of the work to the public

perform, show or play the work to the public

adapt the work

import or deal in infringing copies

Doing any of the above acts to the protected work (or a substantial part of it) without the owner's consent amounts to copyright infringement

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Copyright: Infringement (cont.)

To prove infringement, must prove that the allegedly infringing work:

is copied directly or indirectly from the copyright work

opportunity to copy?

independent creation is not copying!

is objectively similar to the copyright work

copies the whole or a substantial part of the protected work:

What constitutes a substantive part is assessed qualitatively, not quantitatively

There is no "5 changes rule"!

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Registered & Unregistered Design Rights

Protects the appearance but not the function

Protects the appearance of the whole or part of a product resulting from features of lines, contours, colours, shapes, texture of the product itself or its ornamentation (pattern) = a design

Jimmy Choo: Dolce & Gabbana:

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Registered & Unregistered Designs : Overview

Types of design protection available:Registered designsUnregistered design rights

Both available as national rights or European Community rights

Designs are protectable provided that they are new and have individual character over any other design which has been:

made available to the public at the time of registration (for registered designs) or first public disclosure (for unregistered designs).

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Registered & Unregistered Designs : Overview

How is design protection achieved?Unregistered designs will subsists automatically upon disclosure to public

Registered designs must be filed, ideally before first public disclosure of design but by no later than 1 year afterwards (grace period)

How long does it last?Registered designs give up to 25 years of protection from filing for registrationUnregistered designs at least 3 years protection from first public disclosure (no registration required and 3 years generally sufficient for fashion industry)

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Registered & Unregistered Designs : Overview

Who owns the design?

Creator of the design is the first owner, but:If commissioned, commissioner will be first owner (cf. copyright!)If created during course of employment, employer is the owner

What rights does the owner have?Owner has exclusive right to use the design, i.e. make, offer, import articles in which the protected design (or a design creating the same overall impression in the eyes of the informed user) is incorporated/applied.

RCD/UCD infringed by person using the RCD/UCD without the consent of the owner

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Trade marks

Any sign capable of distinguishing goods or services of one business from those of another

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Trade Marks

Any sign capable of distinguishing goods or services of one business from those of another. For example: brand names, logos, shape of goods/packaging, colours, sounds, designs, etc

Main purpose of a trade mark – an indication of trade origin, so as to:

Stop others trading off your goodwill

Avoid confusion in the marketplace

Preserve reputation for quality/luxury associated with a mark

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Trade Marks: Overview

The TM owner has the exclusive right to use the mark and prevent others from using it (or where, there is a likelihood of confusion, using a similar mark)

'Use' includes affixing the mark to goods, marketing goods/services under the mark and importing or exporting under the mark.

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Dealing with IP rights: assignment and licences

IPRs can either be:

(i) Assigned – transferred outright from the owner to a third party

(ii) Licensed – licensor grants permission to a third party (licensee) to 'use' the IP right under agreed terms but ownership remains with the licensor.

Licensee must often pay a royalty for use of the licensed IP

By way of example, an IP licence will form an essential part of agreements governing the relationships:

Fashion house putting its name on a range of perfumes

Fashion house granting retail outlets licence to market its branded products

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Confidential Information

Confidential information can (in certain circumstances) protect commercially sensitive materials and information and may be the only or main form of protection for such information, which cannot be protected as IPRs

A person who has received information in confidence cannot take unfair advantage of it

To be protected by the law of confidential information, information must be:

Confidential in nature: having the "necessary quality of confidence".Disclosed in circumstances importing an obligation of confidence.

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Confidentiality Agreements

Rather than relying on rather vague 'law of confidentiality' better to make duties contractual and spell them out!

Confidentiality Agreements are used where one or both parties are disclosing information to the other and each wishes to impose obligations on the other party to keep its information secret.

Alternatively, confidentiality clauses may be incorporated into other agreements:

Employment contracts

Consultancy agreements

Manufacturing agreements

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Confidentiality Agreements

Make sure contracts and NDAs are in place before disclosure of any confidential information

Restrict access to confidential information – 'need to know' basis

Ensure that recipient of confidential information is well aware that the information is confidential

Keep good records of use and disclosure of all confidential information

Ensure policies in place governing disclosure, use and discussion of confidential information inside and outside the workplace

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Practical points

Both Copyright and Unregistered Designs can arise automatically, therefore no registered record of what has been created, by whom and when.

Keep the proper document trail:

Keep original design drawings, sketches, research materials, contemporaneous records, meeting notes, e-mails for all stages of design process

Date stamp & sign copies contemporaneously, e-mail copies to yourself, etc

Keep records of all individuals who contributed, the scope of their contributions and their employment/consultancy agreements.

Use appropriate copyright notices to put third parties on notice: "Copyright © - Victoria Evans 2009"

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Practical points cont

Searches

Getting workCare with approaches

Care with contracts

OwnershipJoint ownership

Problems

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Where to get advice

Ownit

Law Society

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Any Questions?

Protecting your ideas

Victoria Evans, Associate, Bird & Bird LLP

www.twobirds.com