Protecting Your Brand: Looking After Your Intellectual Property
Brian MillerSenior Associate
IP, IT & CommercialStone King LLP
ENSURING YOUR ORGANISATION'S IP IS
PROPERLY PROTECTED
COPYRIGHT
What Is Copyright?Definition
• Subsistence– Literary (includes computer programs)– dramatic, – musical and – artistic works
• no copyright in idea
2
PROTECTING YOUR INTELLECTUAL PROPERTY
ENSURING YOUR ORGANISATION'S IP IS
PROPERLY PROTECTED
How Do I Protect It?
– Unlike trade marks, cannot register copyright
– make sure you• save a copy• do not amend• back it up• lock safely away or encrypt
COPYRIGHT
3
PROTECTING YOUR INTELLECTUAL PROPERTY
ENSURING YOUR ORGANISATION'S IP IS PROPERLY PROTECTED
COPYRIGHT How Do I Protect It?
– use the copyright sign © on all materials– if software, bank with ‘escrow agent’, who will:
• Test• Release to named party on certain events
4
PROTECTING YOUR INTELLECTUAL PROPERTY
ENSURING YOUR ORGANISATION'S IP IS PROPERLY PROTECTED
COPYRIGHT What Happens if Someone Copies My Work?
– Be sure that it is your work that has been copied
Has the “Copy Test” Been Satisfied?– Must be “substantial”– General rule of thumb: >50% – If satisfied, do not delay
5
PROTECTING YOUR INTELLECTUAL PROPERTY
COPYRIGHT: Exceptions to Copyright Infringement
•Minor infringements•Temporary copies•Fair dealing (inclusion for the purpose of news reporting)•Incidental inclusion (‘passing shot’).•private and educational use (eg instructions and examination)•Public interest (eg. injurious to public life)•Copying for visually impaired•Libraries, archives and public administration •Works permanently situated in public places
6
PROTECTING YOUR INTELLECTUAL PROPERTY
COPYRIGHT: FAIR DEALING
7
•use deemed acceptable (eg. review and criticism, non-commercial research or private study)
•quoted material justified, no more than necessary is included.
•source of the quoted material is mentioned, along with
•the name of the author.
PROTECTING YOUR INTELLECTUAL PROPERTY
ENSURING YOUR ORGANISATION'S IP IS PROPERLY PROTECTED
COPYRIGHT How Long Does It Last?• original literary, dramatic, musical and artistic
works)– life of the author plus 70 years– computer-generated works: 50 years
• films: life of principal director plus 70 years• Broadcasts: 50 years• Sound recordings: 50 years• Typographical arrangements: 25 years
8
PROTECTING YOUR INTELLECTUAL PROPERTY
ENSURING YOUR ORGANISATION'S IP IS
PROPERLY PROTECTED
TRADE MARKS
Why Register?• Cannot easily protect a name • Preventing infringements costly without• Protected from the date of registration• No need to prove reputation • Protection nationwide
9
PROTECTING YOUR INTELLECTUAL PROPERTY
ENSURING YOUR ORGANISATION'S IP IS
PROPERLY PROTECTED
TRADE MARKS
How Do I Register?• Easy application process• Supply name and/or mark to IPO• Work out “classes” • £200 per mark plus £50 per class
10
PROTECTING YOUR INTELLECTUAL PROPERTY
ENSURING YOUR ORGANISATION'S IP IS
PROPERLY PROTECTED
TRADE MARKS
How Long Does It Take?• 4 weeks before advertisement• 8 weeks for opposition• 4 weeks for final processing• Total time: 4 months from receipt of application
11
PROTECTING YOUR INTELLECTUAL PROPERTY
ENSURING YOUR ORGANISATION'S IP IS
PROPERLY PROTECTED
TRADE MARKS
What Does It Protect?• Name and logo• In classes for which they are registered
Where?• United Kingdom only• If EU or overseas protection required, register:
– EU trade mark (EEA protection)– international mark (Madrid Protocol); or– individual mark in the countries of concern
12
PROTECTING YOUR INTELLECTUAL PROPERTY
ENSURING YOUR ORGANISATION'S IP IS
PROPERLY PROTECTED
TRADE MARKS
How Do I Protect My Mark After Registration?
• Fundamentally need do nothing (other than renew)• ™ during application, ® after• if mark used or copied, do not delay
13
PROTECTING YOUR INTELLECTUAL PROPERTY
ENSURING YOUR ORGANISATION'S IP IS PROPERLY PROTECTED
TRADE MARKS
How Long Does It Last?
• Ten years• Can renew indefinitely• “Use or lose”
14
PROTECTING YOUR INTELLECTUAL PROPERTY
DESIGNS AND DESIGN RIGHTS
ENSURING YOUR ORGANISATION'S IP IS
PROPERLY PROTECTED
• Process and reasons for registering similar to TMs• For registration to be valid, design must:
– be new– have individual character
• Period of protection: – five years– Renewable for up to twenty-five years
• Unregistered designs similar to copyright
15
PROTECTING YOUR INTELLECTUAL PROPERTY
INVENTIONS: PATENTS
ENSURING YOUR ORGANISATION'S IP IS
PROPERLY PROTECTED
• Process and reasons for registering similar
• detailed specification must be:– watertight – reveal process of production– capable of registration:
• new• have an inventive step: not obvious• capable of being used in industry• not on a list of excluded items
16
PROTECTING YOUR INTELLECTUAL PROPERTY
INVENTIONS: PATENTS
ENSURING YOUR ORGANISATION'S IP IS
PROPERLY PROTECTED
– software generally not patentable in UK and EU unless a “technical effect” can be shown
• must renew it every year after the 5th year for up to 20 years protection
• Fees vary (generally much more expensive)
17
PROTECTING YOUR INTELLECTUAL PROPERTY
DATABASES
ENSURING YOUR ORGANISATION'S IP IS
PROPERLY PROTECTED
18
PROTECTING YOUR INTELLECTUAL PROPERTY
‘A collection of data or other material arranged in such a way so that the items are individually accessible’
Protection exists in potentially two forms:
(i) by copyright* as a literary work; and/or(ii) by a database right**.
* must have originality in the selection or arrangement of the contents.
** must have been substantial investment in obtaining, verifying or presenting its contents
DATABASES
ENSURING YOUR ORGANISATION'S IP IS
PROPERLY PROTECTED
19
PROTECTING YOUR INTELLECTUAL PROPERTY
Registration• None necessary
Term of Protection• if unpublished, fifteen years from
• making• publication (if later)
Infringement of database right• Compilers: check permission from each owner• Users: be aware of underlying rights owners, as well
as those of the database owner
ENSURING YOUR ORGANISATION'S IP IS PROPERLY PROTECTED
WEBSITES
How Do I Know If I Own the Code In My Website?• Commissioning Developers
• Ensure contract watertight on copyright• In absence of agreement, copyright vests in the
developer!• Employees
• CDPA, s.11(2): employer is first owner BUT• Must be ‘in course of employment’
• Is it the developer’s work? • Possession is 9/10ths…
Make sure these rights are in the contract..20
WEBSITES, DOMAIN NAMES AND HOSTING
WEBSITES: Key Aspects
Ensure legal compliance
Own the code
Control the hosting
Own the content
WEBSITES, DOMAIN NAMES AND HOSTING
21
ENSURING YOUR ORGANISATION'S IP IS
PROPERLY PROTECTED
DOMAIN NAMESHow Do I Know If Own My Domain Name?
• Ensure your organisation is the registered owner of the domain (check on WHOIS, eg. www.123-reg.co.uk/domain-names/)
• registrations in employee’s name to be avoided• Don’t forget to keep tabs on renewal
22
WEBSITES, DOMAIN NAMES AND HOSTING
ENSURING YOUR ORGANISATION'S IP IS
PROPERLY PROTECTED Whois record for nspcc.org.uk
Domain name:nspcc.org.uk
Registrant:NSPCC
Registrant type:UK Registered Charity, (Charity number: 216401)
Registrant's address:NSPCC
42 Curtain RoadLondon
EC2A 3NHUnited Kingdom
Registrar:Webfusion Ltd t/a 123-reg [Tag = 123-REG]
URL: http://www.123-reg.co.uk
Relevant dates:Registered on: before Aug-1996
Expiry date: 11-May-2013Last updated: 08-Jun-2011
23
WEBSITES, DOMAIN NAMES AND HOSTING
ENSURING YOUR ORGANISATION'S IP IS
PROPERLY PROTECTED
DOMAIN NAMESWhat’s to Stop Someone Registering A Similar Name?• nothing!• buy identical domains for generic and TLD domains• if cybersquatter appears, complain to registrar• allowing cybersquatters can result in
– damage to brand – theft of business or donations
• register a trade mark relating to domain name
24
WEBSITES, DOMAIN NAMES AND HOSTING
Ensure you are registered owner
Avoid registration in an employee’s name
Keep tabs on renewals
Beware the Cybersquatters...
Domain Names
25
DOMAIN NAMESHow Do I Know My Domain Name Does Not Infringe
Another’s?
• Carry out checks (Google)• Check Trade Marks Register and Trade Marks Journal• Look on Companies House for similar company names• Use a specialised agent if concerned
26
WEBSITES, DOMAIN NAMES AND HOSTING
ENSURING YOUR ORGANISATION'S IP IS
PROPERLY PROTECTED
HOSTINGHow Do I Know I Control My Hosting Account?• unless account in organisation’s name, you don’t• developers often prefer to use own hosting• agree in contract that:
– account in organisation’s name; or– full access to be given, both during and after term– developer to transfer all digital assets/code upon
termination
27
WEBSITES, DOMAIN NAMES AND HOSTING
ConclusionCovered a lot of ground:• copyright, trade marks, designs and patents• ensuring your website, domain names and hosting are
within its ownership and control
Websites: make sure in contract copyright ownership clear you control access to your hosting and domain names
For further information on website compliance, please take a look at the following articles by the author:
1. Is Your Website Legally Compliant2. Copyright in Photographs 28
Brian MillerSenior Associate
IP, IT & CommercialStone King LLP
brianmillersolicitor
@theitsolicitor
0207 324 1523