Victoria Evans Protecting Your Ideas 04 03 10 Ppt


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  • This is a 30 minute presentation, so I will cover these topics at a high level and will take questions at the end.
  • Sometimes also called "Industrial property", Intellectual property is an area of law that covers various different rights. Intellectual property protects applications of ideas and information that are of commercial value. Intangible- which means they are assets which cannot be seen, touched or physically measured In exchange for the intellectual property right the owner must fulfil certain criteria to gain the right. As we will see the greater the protection granted under the particular intellectual property right the more difficult it is to obtain that right.
  • To give you an idea of how these rights might appear in the creative process: Every item, whether an item of clothing, a pair of shoes, a set design, a hat or an item of jewellery, starts out as an idea. The idea itself is not protectable in its own right − certain basic concepts must remain available for anyone to use. However, once an original idea is "put down on paper" or is somehow otherwise made into something tangible, copyright may automatically arise to protect the way in which that original idea has been expressed. Once the idea has been generated, and the idea put on paper, prototypes may be created. Such prototypes, as well as sketches and patterns may be protectable as designs (unregistered or registered). A item will be more memorable and easily distinguishable if it has a name or a distinctive logo. items become identifiable through a number of different names: the designer's name; the name of the house; the name of a group of products to which the item may belong; or a name given to the item itself. With sufficient use, such names may enjoy unregistered trade mark protection if consumers identify the name with the origin of the item . It may also be possible to obtain registered trade mark protection for such names . Additionally, distinctive parts of the item may be registrable as trade marks. Finally, instead of using a name for the purpose of identification, a logo, a combination of name and logo or even a slogan may be used.
  • One characteristic shared by all types of intellectual property is that the rights granted are essentially negative : they are rights to stop others doing certain things which can be broadly summarised as "copying" "Copying" in this context is used in its broadest sense to include copying a design which may amount to copyright or design infringement; or copying a trade mark, a brand name, or the look and feel (the get-up) of a particular business or product, which may constitute trade mark infringement or passing off. Penalties depend on the exact nature of the infringement, but usually injunction and damages. Defences in some instances of innocent infringement, but this does not prevent the injunction. UK law currently provides for criminal sanctions only for trade mark counterfeiting and copyright piracy
  • I am now going to go on to look at the different rights in turn in a little more detail.
  • Artistic works are not just paintings hanging in a gallery- this could include graphic works, patterns, design drawings, paintings, photographs, sculptures Original- skill, labour and judgment required – very low threshold) It is not necessary to post the document to yourself / use a copyright "registration" service author (i.e. person who created it)
  • Usually best to reinforce in employment contract Commissioned work: the commissioner should always seek an express written assignment of ownership of the copyright from the designer - simply paying for a commissioned work does not suffice to transfer ownership of the copyright to the commissioner!
  • Substantial part- not a mathematical % judgment, as seen on the Louis Vuitton handbag flower motif.
  • There are several types of design right, so I am just going to give you an overview of some of the key features. A registered design can be the whole or part of a product resulting from the features of the lines, contours, colours, shape, texture or materials of the product or its ornamentation. This can include packaging, get-up, and graphic symbols. A 3-dimensional article as well as a 2-dimensional design, such as a surface pattern, can be protected. An unregistered design is a 3-dimensional aspect of shape or configuration of the whole or part of an article. A design may also be protected by copyright for artistic 2-dimensional designs – for example – any surface decoration.
  • Therefore the degree show will start the clock ticking for design registration
  • There are a number of trade marks visible in this picture: not only the Coca-Cola logo but also the shape of the bottle. The recipe for coca-cola is a trade secret.
  • TMs protect companies' brands by serving as an indication of the origin of the goods. This type of protection protects the companies' investment in building quality brands and marketing/advertising of those brands. E.g., generic coke drinks, generic pharmaceuticals. Branded goods often have a first to market effect or "quality" associated with them. There are both unregistered trade marks and registered trade marks. Registered trade marks can be registered in the United Kingdom or as a Community Trade Mark within the EU. Trade marks continue as long as the registration fees are paid. Unregistered trade marks are marks used by traders that over time build up associated goodwill. Such marks can be protected by way of a passing off action which is wider than registered trade mark infringement as it protects all the ways in which a claimant’s product or business may be identified. On the other hand, the benchmark for establishing a cause of action in is normally higher from an evidential point of view.
  • The owner of a trade mark can prevent others from using a mark in the course of trade that is identical or similar to the owner's registered trade mark if the infringer's mark is used on identical or similar goods and services as the registered mark. The owner must also show that if the mark is similar that the public is confused into thinking that the allegedly infringing mark is actually the owner's mark. If the mark used is similar or identical to the owner's mark however it is used on dissimilar goods or services where the trade mark has a significant reputation and use of the other mark must take unfair advantage or be detrimental to this reputation. The test for infringement of a trade mark is whether a consumer in a rush would be confused by the trade mark and the allegedly infringing trade mark.
  • Assignment- basically the 'sale' of the right leaving the seller with no further interest
  • Confidential information is not technically IP under English law - it is protected not by law, but by the fact it is confidential Any information which is disclosed i.e. someone could learn during your final show will lose its confidentiality To bring an action for breach of confidence, there must also be use or disclosure of the information, either threatened or actual.
  • (or Non-disclosure Agreements/NDAs)
  • Keeping a document trail that records the creation process is important to show the existence and ownership of rights in the original work. A good document trail will show the originality of the work, record the date of first creation and reveal any subsequent amendments. It should also demonstrate how the idea evolved into a tangible product.
  • Searches- more difficult, obviously more likely to be influences by intellectual property which is around you, so worth looking again at anything you may have used for inspiration, and thinking about whether there could be any IP in it. You can also do some simple internet searches and it is possible for registered rights to look on the registers at the IPO, but at this point you may want to get some legal advice. When approaching companies in respect of your work, depending what it is- try to put a confidentiality agreement in place (although not always practical). Try not to leave samples or design drawings i.e. types of items which would enable copying. If you enter into a contract, be clear about what rights you have – there maybe industry standards which you might not be able to avoid, but at least you will be operating with clear understanding. Joint ownership of copyright: any work produced by collaboration in which the contribution of each author is not distinct from that of the others Copyright duration runs from the death of last of joint authors to die Joint rights to exploit or enforce
  • As I said I have covered only the basics of the types of rights – we have not looked in detail at defences which may be available – if in doubt try to get some more advice.
  • Victoria Evans Protecting Your Ideas 04 03 10 Ppt

    1. 1. Protecting your ideas 08 March 2010 Victoria Evans, Associate, Bird & Bird LLP
    2. 2. Overview <ul><li>The different forms of intellectual property that arise in the creative industries </li></ul><ul><ul><li>Subsistence – how and when an IP right comes into existence? Who owns it? </li></ul></ul><ul><ul><li>Infringement – what protection do IP rights actually give? </li></ul></ul><ul><li>Showing your work: </li></ul><ul><ul><li>Protecting your ideas using contracts </li></ul></ul><ul><ul><li>Avoiding infringement </li></ul></ul>
    3. 3. What is Intellectual Property? <ul><li>Key features: </li></ul><ul><li>Intellectual Property protects creations of the mind that are of commercial value </li></ul><ul><li>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…. </li></ul><ul><li>IP gives rise to exclusive rights, and so also the right to stop other people from doing things </li></ul>
    4. 4. Types of Intellectual Property <ul><li>The main types of IP in the creative industries: </li></ul><ul><li>Copyright – protects literary and artistic works </li></ul><ul><li>Designs – protect the appearance of usually 3D objects </li></ul><ul><li>Trade Marks – protect marks showing trade origin </li></ul><ul><li>Patents – protect technological inventions, less relevant here </li></ul><ul><li>Confidential Information – but not really intellectual property at all! Protects private information which is generally not otherwise protectable by the IP rights above </li></ul>
    5. 5. Why is Intellectual Property Important <ul><li>Exclusive Right </li></ul><ul><li>Has value </li></ul><ul><li>Infringement </li></ul><ul><ul><li>Injunctions </li></ul></ul><ul><ul><li>Damages / Fines </li></ul></ul><ul><ul><li>Sometimes criminal Liability </li></ul></ul>
    6. 6. A practical example <ul><li>Where's the IP here? A Louis Vuitton handbag… </li></ul>
    7. 7. A practical example (cont.) <ul><li>Trade marks: &quot;Louis Vuitton&quot; </li></ul><ul><li>Designs: </li></ul><ul><li>Copyright: </li></ul>
    8. 8. Copyright <ul><li>Protects original work: literary, dramatic, musical, artistic , sound recordings, films, broadcasts… </li></ul><ul><li>'Artistic works' likely to be of most interest to designers however… </li></ul>.
    9. 9. Copyright: Overview <ul><li>Copyright protects artistic works, provided that work is: </li></ul><ul><ul><li>recorded in permanent form </li></ul></ul><ul><ul><li>original i.e. not copied </li></ul></ul><ul><li>Copyright does not protect ideas per se – it protects the expression of those ideas. </li></ul><ul><li>Copyright arises automatically from when the work is recorded – it cannot be registered (but should be fully documented) </li></ul><ul><ul><li>Consider using copyright notice © to put other parties on notice of your rights – but not essential </li></ul></ul><ul><li>Copyright in artistic works lasts for 70 years from death of the author </li></ul>
    10. 10. Copyright: Ownership <ul><li>Critical to ensure you know who owns the copyright as they alone have the right to use and exploit it!! </li></ul><ul><li>Default position: the author of the work is first owner unless there is an assignment to someone else </li></ul><ul><li>Employer will be owner if work created by employee during course of employment </li></ul><ul><li>Even if work is commissioned, the freelance designer who created it will be owner subject to any agreement to the contrary. </li></ul>
    11. 11. Copyright: Infringement <ul><li>Copyright gives the owner the exclusive right to: </li></ul><ul><ul><li>copy the work </li></ul></ul><ul><ul><li>distribute copies of the work to the public </li></ul></ul><ul><ul><li>perform, show or play the work to the public </li></ul></ul><ul><ul><li>adapt the work </li></ul></ul><ul><ul><li>import or deal in infringing copies </li></ul></ul><ul><li>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 </li></ul>
    12. 12. Copyright: Infringement (cont.) <ul><li>To prove infringement, must prove that the allegedly infringing work: </li></ul><ul><ul><li>is copied directly or indirectly from the copyright work </li></ul></ul><ul><ul><ul><li>opportunity to copy? </li></ul></ul></ul><ul><ul><ul><li>independent creation is not copying! </li></ul></ul></ul><ul><ul><li>is objectively similar to the copyright work </li></ul></ul><ul><ul><li>copies the whole or a substantial part of the protected work: </li></ul></ul><ul><ul><ul><li>What constitutes a substantive part is assessed qualitatively, not quantitatively </li></ul></ul></ul><ul><ul><ul><li>There is no &quot;5 changes rule&quot;! </li></ul></ul></ul>
    13. 13. Registered & Unregistered Design Rights <ul><li>Protects the appearance but not the function </li></ul><ul><li>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 </li></ul><ul><li>Jimmy Choo: Dolce & Gabbana: </li></ul>
    14. 14. Registered & Unregistered Designs : Overview <ul><li>Types of design protection available: </li></ul><ul><ul><li>Registered designs </li></ul></ul><ul><ul><li>Unregistered design rights </li></ul></ul><ul><li>Both available as national rights or European Community rights </li></ul><ul><li>Designs are protectable provided that they are new and have individual character over any other design which has been: </li></ul><ul><ul><li>made available to the public at the time of registration (for registered designs) or </li></ul></ul><ul><ul><li>first public disclosure (for unregistered designs). </li></ul></ul>
    15. 15. Registered & Unregistered Designs : Overview <ul><li>How is design protection achieved? </li></ul><ul><li>Unregistered designs will subsists automatically upon disclosure to public </li></ul><ul><li>Registered designs must be filed, ideally before first public disclosure of design but by no later than 1 year afterwards (grace period) </li></ul><ul><li>How long does it last? </li></ul><ul><li>Registered designs give up to 25 years of protection from filing for registration </li></ul><ul><li>Unregistered designs at least 3 years protection from first public disclosure (no registration required and 3 years generally sufficient for fashion industry) </li></ul>
    16. 16. Registered & Unregistered Designs : Overview <ul><li>Who owns the design? </li></ul><ul><ul><li>Creator of the design is the first owner, but: </li></ul></ul><ul><ul><ul><li>If commissioned, commissioner will be first owner (cf. copyright!) </li></ul></ul></ul><ul><ul><ul><li>If created during course of employment, employer is the owner </li></ul></ul></ul><ul><li>What rights does the owner have? </li></ul><ul><ul><li>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. </li></ul></ul><ul><ul><li>RCD/UCD infringed by person using the RCD/UCD without the consent of the owner </li></ul></ul>
    17. 17. Trade marks <ul><li>Any sign capable of distinguishing goods or services of one business from those of another </li></ul>
    18. 18. Trade Marks <ul><li>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 </li></ul><ul><li>Main purpose of a trade mark – an indication of trade origin, so as to: </li></ul><ul><ul><li>Stop others trading off your goodwill </li></ul></ul><ul><ul><li>Avoid confusion in the marketplace </li></ul></ul><ul><ul><li>Preserve reputation for quality/luxury associated with a mark </li></ul></ul>
    19. 19. Trade Marks: Overview <ul><li>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) </li></ul><ul><li>'Use' includes affixing the mark to goods, marketing goods/services under the mark and importing or exporting under the mark. </li></ul>
    20. 20. Dealing with IP rights: assignment and licences <ul><li>IPRs can either be: </li></ul><ul><ul><li>Assigned – transferred outright from the owner to a third party </li></ul></ul><ul><ul><li>Licensed – licensor grants permission to a third party (licensee) to 'use' the IP right under agreed terms but ownership remains with the licensor. </li></ul></ul><ul><ul><ul><li>Licensee must often pay a royalty for use of the licensed IP </li></ul></ul></ul><ul><ul><ul><li>By way of example, an IP licence will form an essential part of agreements governing the relationships: </li></ul></ul></ul><ul><ul><ul><ul><li>Fashion house putting its name on a range of perfumes </li></ul></ul></ul></ul><ul><ul><ul><ul><li>Fashion house granting retail outlets licence to market its branded products </li></ul></ul></ul></ul>
    21. 21. Confidential Information <ul><li>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 </li></ul><ul><li>A person who has received information in confidence cannot take unfair advantage of it </li></ul><ul><li>To be protected by the law of confidential information, information must be: </li></ul><ul><ul><li>Confidential in nature: having the &quot;necessary quality of confidence&quot;. </li></ul></ul><ul><ul><li>Disclosed in circumstances importing an obligation of confidence. </li></ul></ul>
    22. 22. Confidentiality Agreements <ul><li>Rather than relying on rather vague 'law of confidentiality' better to make duties contractual and spell them out! </li></ul><ul><li>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. </li></ul><ul><li>Alternatively, confidentiality clauses may be incorporated into other agreements: </li></ul><ul><ul><li>Employment contracts </li></ul></ul><ul><ul><li>Consultancy agreements </li></ul></ul><ul><ul><li>Manufacturing agreements </li></ul></ul>
    23. 23. Confidentiality Agreements <ul><li>Make sure contracts and NDAs are in place before disclosure of any confidential information </li></ul><ul><li>Restrict access to confidential information – 'need to know' basis </li></ul><ul><li>Ensure that recipient of confidential information is well aware that the information is confidential </li></ul><ul><li>Keep good records of use and disclosure of all confidential information </li></ul><ul><li>Ensure policies in place governing disclosure, use and discussion of confidential information inside and outside the workplace </li></ul>
    24. 24. Practical points <ul><li>Both Copyright and Unregistered Designs can arise automatically, therefore no registered record of what has been created, by whom and when. </li></ul><ul><li>Keep the proper document trail: </li></ul><ul><ul><li>Keep original design drawings, sketches, research materials, contemporaneous records, meeting notes, e-mails for all stages of design process </li></ul></ul><ul><ul><li>Date stamp & sign copies contemporaneously, e-mail copies to yourself, etc </li></ul></ul><ul><ul><li>Keep records of all individuals who contributed, the scope of their contributions and their employment/consultancy agreements. </li></ul></ul><ul><ul><li>Use appropriate copyright notices to put third parties on notice: &quot; Copyright © - Victoria Evans 2009&quot; </li></ul></ul>
    25. 25. Practical points cont <ul><li>Searches </li></ul><ul><li>Getting work </li></ul><ul><ul><li>Care with approaches </li></ul></ul><ul><ul><li>Care with contracts </li></ul></ul><ul><li>Ownership </li></ul><ul><ul><li>Joint ownership </li></ul></ul><ul><ul><ul><li>Problems </li></ul></ul></ul>
    26. 26. Where to get advice <ul><li>Ownit </li></ul><ul><li>Law Society </li></ul>
    27. 27. <ul><li>Any Questions? </li></ul>
    28. 28. Protecting your ideas Victoria Evans, Associate, Bird & Bird LLP