UNLOCKING THE HIDDEN VALUE OF YOUR INTELLECTUAL PROPERTY

21 APRIL 2010

Richard HastingsPartner

Thomas Eggar Solicitors

TEAM INTRODUCTION – THOMAS EGGAR COMMERCIAL TECHNOLOGY AND IP TEAM

Commercial contracts Information Technology Intellectual Property

Commercial Contracts Information Technology Intellectual Property

Commercial Contracts Intellectual Property Information Technology Partnership Corporate Insolvency Notarial work

Richard Hastings (partner) Direct line: 023 8083 1216 richard.hastings@thomaseggar.com Richard Hastings heads up the firm’s commercial team at Thomas Eggar LLP. Richard joined Thomas Eggar as a Commercial Technology partner in November 2006 after spending the last 12 years as a commercial In-House lawyer holding several senior legal positions including Legal Director for Sir Alan Sugar at Amstrad Plc, and as General Counsel for Interoute Telecommunications. Richard joined us from his previous position as European General Counsel for Yahoo! where he had responsibility for all of the company's legal affairs including a team of 24 lawyers across Europe. Richard also heads up our Intellectual Property team and has specific expertise in all areas of Intellectual Property, Data Protection, Commercial Technology, and Telecommunications Law.

J oanne Blazey (associate) Direct Line 01635 571089 joanne.blazey@thomaseggar.com Following qualification J o spent seven years with city law firm Taylor Wessing where she acted for a number of technology, media and telecoms clients. She joined Thomas Eggar in December 2007 following its merger with Penningtons. J o is based in the Newbury office where she undertakes a broad range of commercial work with a particular emphasis on the commercial technology sector. Her practice includes advising on IP and IT agreements including software licensing, distribution and agency agreements, outsourcing of managed services as well as commercial and IP aspects of corporate transactions.

Michael Camps (partner) Direct line: 01243 813189 michael.camps@thomaseggar.com Michael has been a partner in the firm since 1986. He trained with a Central London firm, where he subsequently became a partner. As well as being a notary public, he specialises in company commercial work and has a particular interest in intellectual property and partnership law. He has clients across a broad sweep of sectors but has particular expertise in advising clients in the marine, food and toy industries. He holds post-graduate diplomas from the University of Bristol in Intellectual Property Law and Practice and from the University of Cambridge in Notarial Law and Practice.

General Commercial Litigation Intellectual Property Law

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Commercial contracts Intellectual Property

In association with:

J oshy Thomas (associate) Direct line: 01243 813158 joshy.thomas@thomaseggar.com J oshy trained at Eversheds after first having pursued a career in the army as a legal support officer and after completing her officer training at Sandhurst. J oshy qualified into the Commercial Litigation department at Eversheds in September 2000. J oshy attended the post-graduate diploma in IP Law and Practice at Bristol University in 2003. J oshy joined Thomas Eggar LLP in February 2007.

Matthew Bridger (solicitor) Direct line: 023 8083 1214 Matthew.bridger@thomaseggar.com Matthew was admitted as a Barrister and Solicitor of the Supreme Court of Victoria, Australia in 2001 and worked as a Commercial solicitor for two city based law firms. He moved to England in 2002 and was appointed as in–house Commercial Lawyer for the Isle of Wight Council.

In 2008 Matthew returned to the private sector, joining Thomas Eggar in November 2008. Matthew advises a diverse range of clients from SMEs to large pharmaceutical, technology, telecommunications and transport and logistics companies as well as public sector organisations.

Thomas Eggar has teamed up with Mastrovito & Associates to provide a competitively priced ‘one stop shop’ for international trade marks, registered designs and domain names. This is seamlessly interwoven with our litigation and advisory services, providing a strong advantage over our competitors. Advising a diverse and high profile list of clients, we undertake the full range of clearance, registration, conflict resolution, enforcement and portfolio management services. Mastrovito & Associates are a team of specialist lawyers and support staff experienced in the protection and maintenance of trade mark and design portfolios. They provide advice on all aspects of trade mark protection and related issues including design rights and internet matters. Mastrovito & Associates was founded in 1999 by Alice Mastrovito, who had been a partner in a leading London firm of Trade Mark Attorneys before deciding to establish her own trade mark specialist firm. They have grown into a team that is large and experienced enough to meet the basic requirements of clients in this complex area of law whilst still

Intellectual propertyOur experience includes:

• advising Yahoo! on the group’s intellectual property/domain name and trade mark portfolio;• development and support for the fifaworldcup.com website including associated multi-million

sponsorship agreements;• O2 on brand protection, brand strategy, registration and compliance;  • Portsmouth City football club on all aspects of club sponsorship and IP brand protection;• Sponsorship of Leicester City football club by Walkers;• IP licensing and multi national ventures;• on intellectual property and brand strategy and protection;• trade mark & domain name registration;• undertaking IP audits for large organisations and educational establishments;• development and support for a large European greetings card and novelty toy manufacturer’s

website and advising on brand protection and exploitation;• assignment of software and Intellectual Property Rights from domain name registry issues in

relation to passing-off and trade mark infringement actions.

E-Commerce/Privacy/TelecomsOur experience includes:

• e-trading arrangements; Website content, Hosting, Design and Support Agreements;• new mobile e-commerce venture to provide localised services via WAP applications;• all aspects of new e-commerce start ups including all web T&Cs, privacy policies, trading

terms and commercial advice;• advising major multi-nationals on Data protection regulation and compliance with transfer of

data outside the EU and safe harbour other alternatives;• roll out of Voice over Internet Protocol (Telecoms VOIP) services across Europe including

licence applications/ registrations in each country;• all aspects of R & D and associated licensing;• various outsourcing agreements including outsourcing of customer care facilities to the

Netherlands plus several outsource agreements of Yahoo facilities and associated service agreements;

• numerous high value sales and acquisition agreements for telecom infrastructure/services/telecom and IT equipment;

• agreement for the provision of worldwide wi-fi network connectivity agreement.

Corporate/Commercial Our experience includes advising:

• Disposal of Toucan Broadband Telecom to Pipex Plc;• Milan Mandaric on the disposal of Portsmouth City Football Club and on the takeover of

Leicester City Football Club plc through his US company, UK Football Investments LLC;• a number of sports professionals on a European joint venture including advertising and use of

image rights; • a number of football clubs on their financing arrangements;• a sports retailer on the proposed disposal of a majority stake to a private equity house;• Offshore gambling services to 2 national newspapers;• Joint venture and service agreement for the back office platform for package holidays with a

leading UK airline;• legal negotiations and drafting for a joint venture with Tesco for the provision of mobile services

to be sold by through Tesco stores;• advising Sports Direct on its acquisition of major high street brands including Field & Trek and

Munroe Sports;• advising Evans Cycles in relation to share acquisition agreement including support for roll out of

retail IT on-line systems.

Contentious IP & litigationOur experience includes:

• advising IDT Telecom on the exploitation and enforcement of various patents in the UK vs EBay and Skype;

• advising on enforcement of trading breaches regarding parallel imports and counterfeit goods;

• prosecution of long established trade marks against the International Olympic Committee;• advising on defence and strategy regarding patent trolls enforcing long standing IT patent

technology; • advising International brand owners on European IPR enforcement and exploitation

strategies; • taking action against infringers, negotiating settlements and drafting settlement agreements;• advising on the transfer of domain names from cyber squatters to those with a legitimate in

the name including obtaining High Court judgements;• advising on software licensing issues;• advising on website copyright infringement issues and in particular on the use of

photographs and the world wide web.

WHAT WE DO

WHAT IS INTELLECTUAL PROPERTY?

Intellectual Property gives rights in:

* the particular way that ideas or information are expressed.

* You cannot protect an idea itself but the law protects the way that the idea is set out.

Intellectual Property (“IP”) is a collection of:• Intangible property interests (can’t put them in your pocket)

• Granted by the government

• Only enforceable in the territory where the government has control (e.g. UK patent is not enforceable in France)

• Create limited legal monopolies – the ability to prevent others from doing certain things (e.g. copying a book, manufacturing an invention, displaying a mark, etc.)

DIFFERENT TYPES OF INTELLECTUAL PROPERTY

• Copyright – may subsist in creative and artistic works (e.g. books, movies, music, paintings, photographs and software).

• Patents – may be granted for a new, useful and non-obvious invention.

• Trade Marks – are distinctive signs which are used to distinguish the products or services of different businesses.

• Industrial design right – protects the form of appearance, style or design of an industrial object (i.e. spare parts, furniture or textiles).

• A Trade Secret (confidential information) - is secret, non-public information concerning commercial practices or proprietary knowledge of a business.

Intellectual property confers a bundle of exclusive rights in relation to the particular form or manner in which ideas or information are expressed or manifested, and not in relation to the ideas or concepts themselves (see idea-expression divide). The term "intellectual property" denotes the specific legal rights which authors, inventors and other IP holders may hold and exercise, and not the intellectual work itself.

Intellectual Property Laws are designed to protect different forms of subject matter (but there is some degree of overlap).

The Rights What they protect

PatentLegally protectable monopoly for specific inventions.Last for 20 years.Require public disclosure of technology.

Inventive technical features of products and processes.

But not: computer programmes, methods of doing business and medical treatments.

Trade MarkDistinctive graphical representation which distinguishes goods or services from other entities

Brands, logos, names, packaging

Kodak or IntelBass 1876 red triangle logo

Passing off Goodwill in an unregistered mark can be protected by an action for passing off.

Goodwill and reputation.

CopyrightApplies automatically when work is created and recorded,Allows owner to stop others from copying

Original artistic musical, dramatic and literary works, including computer programs, sound recordings, films, broadcasts and typographical arrangements of published works.  E.g. design drawings, illustrations, company brochures, photographs and typeface.

IP RIGHTS

IP RIGHTS

Registered Design RightMonopoly like Trade Mark: apply for UK registration or a Community Trademark Must have new and individual character

Appearance of whole or part of a product resulting from the features of e.g. contours, shape, texture or materials and/or its ornamentation. Shape and configuration e.g. fabric cutting pattern.  Common usage in fashion industry, 2D products wallpaper, textile designs, surface decoration.

Unregistered Design RightProtects against copying not monopoly

Any aspect of the shape or configuration (internal or external) of the whole or part of an article, 3D products not surface decoration – there are exclusions.

Confidential information not strictly IP right but unregistered right governed by case law

Know how-, trade secrets. Sensitive technical and commercial business information, customer lists, important in external development of product – discussions.

REMEDIES FOR IP INFRINGEMENT

Account of profits

The award to the holder of IPR of the profits that a defendant has made from the infringement.• Ascertain the total profits from the

infringer’s activities.• The total profits should be apportioned to

establish the profit which is attributable to the specific IPR.

• Adjust the figure to reflect the nature of the party’s cases.

• Deduct any tax.

Damages

Calculated on the basis of lost profits or on a royalty basis and are compensatory.• Put the party back into the position it

would have been in had the infringement not occurred.

• There may be a punitive element in the form of exemplary damages.

Additional Remedies• Declaratory relief.• Delivery up and destruction.• Court order to reveal relevant information.• An injunction.• Criminal sanctions (patents; trade marks;

copyright; registered designs)

Threats

Groundless threats to sue for IP infringement may themselves be actionable.

YVES SAINT LAURENT 2000

NEWCASTLE BROWN ALE 2001

Does your Company actually own your IP?

If you apply for finance or look for a 3rd party to invest into your company consider the following:

• Audit your IP• Ownership Rights• Beware shareholder conflicts• Joint ownership rights• Consultants rights• Employee rights• Restrictions on Employees when they leave• Dealings with 3rd parties

PROPERLY MANAGE YOUR IP

BEST PRACTICE APPROACHES

Everyday business usage

Protect your:-• Brand• Trade Name• Company Name• Domain Name• Website

Intellectual Property as the core route of the business, service

or product you provide• Identify• Register• Ensure confidentiality is in place• Beware consultant or contractor

ownership rights• Ensure contract process for

protection of IP via licensing• If using licensed technology

ensure you have long term rights• Warranties and Indemnities• International issues

IP rights can be used as security for raising finance.

• what form of security would be appropriate for the right in question?

• of what value is the IP right to the lender if the borrower defaults?

• what will be the effect on the borrower if it loses title to the IP right?

IP RIGHTS AS A FINANCIAL SECURITY

Our company has a logo which we asked advertising agency to create

• Do we own the copyright?• Can the agency use the format for other clients?

• Confidentiality protection• Register all statutory protection• Appropriate shareholders agreement

Where did I go wrong my ex business partner is using my invention?

SOME EXAMPLES

ANY QUESTIONS?