Intellectual Property Rights in Pervasive Media


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Copyright: Anna Clements (TLT LLP) © 2010.

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  • Introduce, explain where from and what we do Technology and Media team at TLT.
  • Explain summary of how the session will play out – explain that they can ask questions if they need to
  • As I understand that most of you already have an understanding of the concept of intellectual property, I'll just briefly to go over the different types and which types of IP you are most likely (and least likely) to come across in pervasive media projects.
  • No IP in an idea, IP will only come into existence when the idea is recorded in a tangible form. There are broadly 5 different IP rights and when you have the tangible form, you can think about which of the 5 it attracts. There could be more than one IP right. Also, if you are collaborating with someone else, the IP rights could be owned by more than one person, but we will go into further detail on collaboration a bit later on. List the 5, it is also possible to protect confidential information. This is something to bear in mind, particularly if you are only at the idea stage (and would have no automatic IP rights in your idea) but need to discuss the idea with third parties to take it forward. I'll just run through the types in more detail.
  • Copyright is the IP right most likely to attract to pervasive media. It is an unregistered right which arises automatically in a number of creative works being…. Duration – in musical, dramatic, artistic works lasts for 709 years from the end of the calendar year in which the author died. Sound recordings and broadcasts – 50 yrs from the date on which the recording was made. Moral rights – your right to be identified as the author cannot be assigned but can be waived.
  • The basic requirement is that it has to be capable of distinguishing goods and services. You may consider protecting the name of your product, if you've created a game, the characters and the names of characters in that game. Specific goods and services If you have created a character or product name rd parties better to register otherwise its more difficult to prevent third parties using your names/characters.
  • Less likely to apply to a pervasive media project – design protects the shape and appearance of articles. But if you think what you have created might attract design protection, there are two kinds: registered and unregistered.
  • Unregistered design right provides the same protection, but it is shorter in duration and, if you want to rely on the right to claim infringement you have to overcome the more difficult test of proving that the third party copied your design. Where you ahev a registered right, you have to show that the infringing design creates the same impression as your design on the informed user.
  • It is not possible in the UK to patent software or business processes and unlikely that the content and works created within pervasive media would be capable of obtaining a patent. However, if you have invented something, patents protect:
  • Possibly data base rights may arise in pervasive media if the project involves collecting and storing a lot of data
  • This is a fairly important concept, although not an IP right as such, unless the information protected attracts IP protection, if you are intending to collaborate with others on certain ideas, you should consider signing a non-disclosure agreement setting out the terms on which each party will share and keep secret the other's confidential information.
  • In summary of the types of IP – there are the 5 different types which protect the owner by granting the owner the exclusive right to use the work and to prevent others from using it. Essentially they are negative rights which provides scope for commercial exploitation if you want to grant others rights in your work.
  • Any copyright, design etc will be owned by you. If created in employment owned by the employer. You can decide whether you need to obtain any registered protection such as trade marks and registered designs and you can decide what you want to do with the work, whether you wish to use it for further developments etc. Fairly straightforward.
  • I think that many of you have had experience in dealing with collaboration agreements and are probably aware of the need to get written agreements in place when working with third parties.
  • Depending on who you are dealing with, the first step to consider is whether you need to get any kind of confidentiality agreement in place? Then, think about what each party will bring to the table and where you are hoping to take it. As well as being an important document to protect your rights, an agreement can also flush out issues which the parties hadn't considered such as if both had been considering a different market or territory. How will revenue be shared and accounted for? What rights do you need form the other party so that you can fulfill your obligations – will the right they are granting you achieve this? What rights are you granting them? Do you still want to retain the right ti use your IP in other projects simultaneously? Always advisable to retain your rights and just grant a limited licence. Once a licence has been granted the rights under it are limited to those expressly stated in the licence, so, if you want to do something with the product not envisaged, you would need to seek consent from the other parties – bearing in mind they have no obligation to grant consent. Warranties and indemnities aren't as scary as they sound – it might be that each party confirms in writing that it owns all IP in its contribution and agree to indemnify each other if as a result of a breach of this warranty, the others incur costs as a result of infringement claims.
  • If you want to retain rights in your product, you can grant end users the right to use your product for a fee by way of a licence. If you use a third party distributor, they may put there own licence terms in place with the end user, depeding on your arrangement with them. The App Store has its own end user terms which are non-negotiable. If you do have input into the licence granted to end users, consider the rights you are going to grant them – can they copy the product or furtehr develop it? Can they modify it or commercially exploit it? If not need to say so. How will they pay? How long will the licence last? What happens if they breach the terms of the licence? Any obligations of you the rights holder?
  • Rather than revenue generating, your product may be for the benefit of the community and you want to let others use the product. Again you can grant third parties licences, such as under creative commons but need to think about what you want to give away, what you want to keep and any limits on how your product can be used. Brings us on to the types of creative commons licenses.
  • Intellectual Property Rights in Pervasive Media

    1. 1. Intellectual Property Rights in Pervasive Media Anna Clements
    2. 2. Overview <ul><li>Types of intellectual property and how the different types may arise in Pervasive Media </li></ul><ul><li>Protecting IP rights </li></ul><ul><li>Exploiting IP rights in your works </li></ul><ul><li>Creative Commons </li></ul><ul><li>Questions and answers </li></ul>
    3. 3. Types of Intellectual Property (IP) and how the different types might arise in Pervasive Media
    4. 4. Types of IP <ul><li>No IP in an idea </li></ul><ul><li>Need a tangible form </li></ul><ul><li>Broadly five different types: </li></ul><ul><ul><li>Copyright Works </li></ul></ul><ul><ul><li>Designs </li></ul></ul><ul><ul><li>Trade Marks </li></ul></ul><ul><ul><li>Inventions (Patents) </li></ul></ul><ul><ul><li>Database Right </li></ul></ul><ul><li>AND don’t forget Trade secrets and know-how (Confidential Information) </li></ul>
    5. 5. Types of IP: Copyright <ul><li>Copyright: </li></ul><ul><ul><li>Unregistered right, arises automatically on creation </li></ul></ul><ul><ul><li>Original literary, artistic, musical, dramatic works; and broadcasts, films, recordings </li></ul></ul><ul><ul><li>Includes computer software </li></ul></ul><ul><ul><li>Prevents: </li></ul></ul><ul><ul><ul><li>Reproduction </li></ul></ul></ul><ul><ul><ul><li>Adaptation </li></ul></ul></ul><ul><ul><ul><li>Publication </li></ul></ul></ul><ul><ul><ul><li>Performance </li></ul></ul></ul><ul><ul><ul><li>Broadcasting </li></ul></ul></ul><ul><ul><li>Protection: broadly, 25 years to author’s life plus 70 years </li></ul></ul><ul><ul><li>Moral Rights </li></ul></ul>
    6. 6. Types of IP: Trade Marks <ul><li>Trade Marks: </li></ul><ul><ul><li>Signs used to distinguish goods of one trader from others </li></ul></ul><ul><ul><li>Can be characters, product names, symbols, logos. Even colours, smells and sounds </li></ul></ul><ul><ul><li>Can be registered or unregistered </li></ul></ul><ul><ul><li>Registered for specific goods and services (in classes) </li></ul></ul><ul><ul><li>Best to register otherwise difficult to enforce </li></ul></ul>
    7. 7. Types of IP: Designs <ul><li>Unregistered: </li></ul><ul><ul><li>Exists automatically on creation of design </li></ul></ul><ul><ul><li>Protects “new” designs for any aspect of the shape/appearance of an article </li></ul></ul><ul><ul><li>New – must not be “commonplace” in the design field in question </li></ul></ul><ul><ul><li>Exclusions: </li></ul></ul><ul><ul><ul><li>Ideas </li></ul></ul></ul><ul><ul><ul><li>Methods of construction </li></ul></ul></ul><ul><ul><ul><li>“ Must fit”, “must match” </li></ul></ul></ul><ul><ul><li>The right: 15 year monopoly on making articles to the design , must allow licensing in last 5 </li></ul></ul>
    8. 8. Types of IP: Designs <ul><li>Registered: </li></ul><ul><ul><li>Original features of shape, configuration and surface decoration </li></ul></ul><ul><ul><li>Monopoly in the territory of use of design - having substantially similar effect on any article </li></ul></ul>
    9. 9. Types of IP: Inventions <ul><li>Inventions: </li></ul><ul><ul><li>New products or processes -> patents </li></ul></ul><ul><ul><li>Registered right: </li></ul></ul><ul><ul><li>Stop others making/using/selling your invention for ≤ 20 years in the territory </li></ul></ul><ul><ul><li>Requirements: </li></ul></ul><ul><ul><ul><li>New (not public domain) </li></ul></ul></ul><ul><ul><ul><li>Inventive (not obvious) </li></ul></ul></ul><ul><ul><ul><li>Capable of Industrial Application </li></ul></ul></ul><ul><ul><ul><li>Not specifically excluded: software and business processes are not patentable (in the UK) </li></ul></ul></ul>
    10. 10. Types of IP: Database Right <ul><li>Database right: </li></ul><ul><ul><li>Unregistered right </li></ul></ul><ul><ul><li>Exists automatically where substantial investment in obtaining, verifying or presenting the contents of the database </li></ul></ul><ul><ul><li>Database = a collection of independent works, data or other materials arranged in a systematic or methodical way, and individually accessible by electronic or other means </li></ul></ul><ul><ul><li>Infringed by unauthorised extraction or re-use of “substantial part” </li></ul></ul><ul><ul><li>Protection:15 years from making or last substantial change </li></ul></ul>
    11. 11. Confidential Information <ul><li>Right to prevent use or disclosure of information if: </li></ul><ul><ul><li>Secret </li></ul></ul><ul><ul><li>Substantial </li></ul></ul><ul><li>Arises by: </li></ul><ul><ul><li>Contract – use to protect ideas in discussions </li></ul></ul><ul><ul><li>Relationship of confidence </li></ul></ul><ul><li>Lasts until: </li></ul><ul><ul><li>Obligation released, or </li></ul></ul><ul><ul><li>Information public </li></ul></ul>
    12. 12. IP – Negative Rights <ul><li>Intellectual Property: </li></ul><ul><ul><li>Right to prevent somebody using your work without your permission </li></ul></ul><ul><ul><li>Enables you to use your work to create revenue or other benefits through licensing, cross licensing, granting someone else the right to use your work. </li></ul></ul><ul><ul><li>Territory specific </li></ul></ul><ul><ul><li>Law is different in relation to each type </li></ul></ul>
    13. 13. Who Owns the IP? <ul><li>Inventions and right to apply for patents: inventor Copyright: author Commissioned designs: commissioner Databases: investor BUT: Anything created by an employee in course of his employment vests in employer Independent contractors: contractor, subject to implied licence to use All subject to contract, within limits imposed by statute </li></ul>
    14. 14. Protecting Your Work
    15. 15. Works of Sole Authorship <ul><li>If you are creating something alone, you will own the IP rights in your work (unless created in employment). </li></ul><ul><li>Consider whether need to register any IP rights. </li></ul>
    16. 16. Unregistered Protection <ul><li>Unregistered Rights: </li></ul><ul><ul><li>Copyright, design & database right </li></ul></ul><ul><ul><li>Are automatic rights which do not require registration </li></ul></ul><ul><ul><li>If copyright exists in the work – full © legends e.g. “© TLT LLP 2010” </li></ul></ul><ul><ul><li>Maintain original dated drawings/scripts </li></ul></ul>
    17. 17. Registered Protection <ul><li>Registered Rights : to enhance protection </li></ul><ul><ul><li>Trade Mark: register if sign/symbol distinctive and not descriptive </li></ul></ul><ul><ul><li>Use of ™ and ® </li></ul></ul><ul><ul><li>Patent: apply if the company has a novel and inventive product/process </li></ul></ul><ul><ul><li>Registered design: if a design is novel and has individual character </li></ul></ul>
    18. 18. Works of Co-Authorship <ul><li>Works which are created by two or more persons collaborating where each person's contribution is not distinct, are treated as works of joint ownership. </li></ul><ul><li>In the absence of an agreement, none of the parties have the right to do anything with the work without the other's consent. </li></ul><ul><li>Important to agree terms prior to entering into any kind of collaboration. </li></ul><ul><li>Consider whether need to obtain any registered protection. </li></ul>
    19. 19. Protection by way of Written Agreements <ul><li>NDA; </li></ul><ul><li>Contributions; </li></ul><ul><li>What is the end product/market; </li></ul><ul><li>Revenue split, collection, sharing; </li></ul><ul><li>Rights granted (cross licenses); </li></ul><ul><li>Rights reserved; </li></ul><ul><li>Warranties and indemnities. </li></ul>
    20. 20. Exploiting your intellectual property rights
    21. 21. Commercial Exploitation <ul><li>Licensing the product to end users. </li></ul><ul><li>Assigning your rights in the product. </li></ul><ul><li>Consider the terms of licence/assignment. </li></ul>
    22. 22. Distribution <ul><li>How will the product be distributed to end users? </li></ul><ul><li>Third party distributor e.g. the App Store? </li></ul><ul><li>Distributor's own terms </li></ul><ul><li>End User Licence Terms - perpetual, fees etc </li></ul><ul><li>Revenue generating product? – - license fees - royalties - up front payment </li></ul>
    23. 23. Non-commercial exploitation <ul><li>Creating for the community </li></ul>
    24. 24. Creative Commons
    25. 25. Types of Licence <ul><li>All rights reserved </li></ul><ul><li>No rights reserved </li></ul><ul><li>Some rights reserved </li></ul>
    26. 26. No rights reserved/Some rights reserved <ul><li>What rights are granted under the licence? </li></ul><ul><li>Can you use/develop/incorporate the work as you see fit or are there restrictions? </li></ul><ul><li>Can you commercially exploit the work? </li></ul><ul><li>Are there any requirements to pay royalties? </li></ul><ul><li>Does the licence require you to licence the end product under a similar arrangement (contaminate your work)? </li></ul><ul><li>Is there any time limit/ other limits on use of the work? </li></ul>
    27. 27. Failure to comply with Licence Conditions <ul><li>Licence terminates </li></ul><ul><li>Your right to use the work is terminated and use of the work without licence will infringe the owners IP rights. </li></ul>
    28. 28. Remedies for Infringement <ul><li>Damages </li></ul><ul><li>Injunctive relief </li></ul><ul><li>Delivery up of infringing articles </li></ul>
    29. 29. Useful Links <ul><li>UK Patent Office: </li></ul><ul><li>Government Info website: </li></ul><ul><li>Community Trade Mark Office: </li></ul><ul><li>World Intellectual Property Organisation: </li></ul><ul><li>US Patent Office: </li></ul>