Intellectual Property Law is the part of the legal system that:
- Protects your creativity
- Protects the creativity of others (limits how you can deal with the creative works of others)
Intellectual Property Law determines:
- Who owns what rights
- What to do if there is a dispute
What Intellectual Property Law Services Does Acacia Law Offer?
- Branding – names, logos, advertising phrases
- Patents – registration to protect new inventions
- Designs – registration to protect new shape or configuration of objects
- Copyright – automatic right in some creative works such as photographs, novels
- Franchises – usually include branding, systems, processes to ensure that the goods or services produced by the franchisees are of a standard quality from one franchisee to the next
- Royalty Agreements – the owner of intellectual property is paid for the use of their intellectual property
- IP Valuations – we work with accountants to determine the value of your intellectual property (often required when you wish to sell your intellectual property or your business)
- IP Audits – the intellectual property of your business is assessed and suggestions for improved intellectual property protection are made
- IP Licensing – the owner of intellectual property is paid for the use of their intellectual property
- Litigation (IP disputes including infringment disputes) – if someone infringes your intellectual property (or they allege that you infringe theirs) then the process could include letters demanding that the infringement stops. If a negotiated settlement is not possible, the case could end in court.
What Should I do If Someone Uses My Intellectual Property Without My Permission?
- Before objecting to unauthorised use – get proper legal advice from an intellectual property expert to ensure that the unauthorised use is legally objectionable.
- Be sensible! Not every unauthorised use is bad news – sometimes it might amount to good publicity! For example, an artist who complained that their painting was shown on set of a TV show without his permission, could have used it as an opportunity to raise his profile, but instead, because of his objection, the TV show just stopped showing his painting.
- Rather than thinking of suing an infringer, it might be best to consider reasonable royalty payments. Also, sometimes an infringer did not mean to infringe and will stop if asked to.
- Be careful of communicating directly with the infringer without expert legal advice. You could inadvertently make comments or admissions that can be held against you if the matter later goes to court.
What Should I do If I Receive A Letter Of Demand Stating That I am Infringing Someone’s Intellectual Property?
- Contact a Patent Attorney. This could be a very serious situation and could lead to litigation. Your patent attorney will be able to advise you further. Each infringement case is different and you will need to obtain specific advice.
- Do not ignore the letter. This could lead to people filing an infringement claim against you in court. It is always more expensive to resolve things through the courts than by negotiation.
What Is A Trade Mark?
A trade mark is a “sign” that acts as a “badge of origin” and differentiates your business, product or service from those of competitors. To be registered as a trade mark your mark must be “distinctive” and not descriptive. For example, you could not register the word “soap” as a trade mark for soap (because other soap manufacturers would want to use the word soap when describing their soap products). A good example of a distinctive trade mark that is non-descriptive, is Apple for computers. The word Apple is not at all descriptive of computers, so other traders who want to use the word Apple would only do so to trade off Apple’s reputation. Of course, if you own a fruit company or a fruit juice company, the word Apple would be descriptive and not registerable as a trade mark as others in that industry would need to use that word to describe their goods.
What Different Types Of Trade Marks Are there?
- Word/s eg Acacia, IBM, Microsoft, McDonald’s
- Advertising slogan “Acacia Law – We’ve Got You Covered”
- 3 dimensional shape eg shape of Toblerone chocolate
- Sound eg Microsoft tune whenever you boot up a Microsoft product
- Smell eg “smell of freshly mowed grass”
What is a Patent?
A Patent is a registration that gives legal protection to inventions eg. New type of quick drying paint, or new ingredient to make gold more pliable or new tools to use in agriculture.
- Invention must be NEW.
- You MUST GET proper legal advice before telling anyone of the idea or you might lose the right to register a patent.
- Talk to a patent attorney first!
- eg. The inventor of the plugboard, Kambrook, lost millions of dollars in revenues because they did not register their invention as a patent, meaning that anyone could commercialise it (and many have done so, to Kambrook’s cost.
Why Should I Register My Invention As A Patent?
- It protects you from being sued for patent infringement (provided you file your patent first before someone else files for your invention) ***POTENTIAL SAVINGS at least $100 000 in legal fees (even if you are the true inventor of the invention, once someone else has it patented they can sue you). It is a massive business risk not to have your patent registered.
- This gives you property that has value and can be sold or licensed. It is a lot harder to sell or license know-how or trade secrets. The guy who invented the plug board did not patent his idea (count how many you have at home …Every house has a plug board at their TV for TV, Foxtel, dvd etc to plug into the same electric socket). The plug board is a billion dollar industry. But because he did not have it patented, others have cashed in and he has got no royalties from their sales. In the years since that invention, no one has come up with anything better, so it is a false assumption to say that only the most recent technology is financially worthwhile.
- You can use a patent to prevent your competitors from using your technology without your permission.
Copyright – what are you allowed to do?
- Copying anything that occurs in nature
- Copying anything that in which you own the copyright
- Where no copyright exists eg the work is a common design not owned by anyone
- Coming up with something similar without reference to a copyright work (but BEWARE, if it looks like a copy, a court will assume it is a copy unless you can prove otherwise! )
Copyright – how much of a copy is too much?
- There is no magic % that you are allowed to copy from a copyright work.
- A copy of even a small part eg one paragraph from a novel, or a part of a painting
- The test is whether looking at it objectively someone might think there was copying.
- If the objects are objectively similar, then the person who is alleged to have copied must PROVE that there was no copying
Copyright – What are you not allowed to do?
- COPY someone else’s work – if you come up with something nearly identical without reference to their work, that is permitted (although copying will be assumed where there are very similar, unless you show otherwise)
- Modify someone else’s work
- Make an adaptation of someone else’s work eg. Photograph a painting, writing a play based on a novel.
- Even displaying an artwork in public without the copyright owner’s permission can be an infringement
Copyright and the Internet
- MYTH = if it is on the internet, I am allowed to copy it
- Material on the internet is protected by copyright like any other material (it is just easier to copy or download!)
- Copying onto your hard-drive, downloading, printing, copying to disc, emailing a copy, cutting and pasting, modifying are all prohibited activities, unless you have the permission of the copyright owner.
- EXCEPTION – you can make copies of material which a website authorises you to copy or material that is no longer under copyright protection (copyright can last for 50 years after the death of the creator).
How Do I Protect My Copyright?
- It is not possible to register copyright (other than in Amercia)
- Copyright automatically exists as soon as you create a creative work such as a drawing, a book, a photograph, a song, provided your creative work is original (not itself a copy).
- Other works that attract copyright are computer software, written documents (such as office policies and procedures), layout and design (eg of a website or a brochure).
- Even a telephone book as held by courts to attract copyright.
- Keep full records and original concept documents of all creative works you create. You might need these if your copyright is disputed
- When you create a creative work, you should always mark it with the copyright symbol (c) + the year + your name + (optionally) your contacts eg (c) 2014, Acacia Law, firstname.lastname@example.org
- Preferably lodge copies with an independent third party like a lawyer or accountant who can attest to the lodgement date and what was lodged (if your rights are challenged).
Who owns the right to file patent/design/trade mark or who owns the copyright?
- If you create something while working for another person often your employer will own the intellectual property rights in what you create – even if it does not say so in your employment contract (but there are exceptions to this rule).
- Exceptions to employer owning intellectual property in creations of employees – where you create something in your own time, with your own resources, which is unrelated to your job eg. If you work as a check out operator and create jewellery at home. The law becomes more complicated if (as often happens) that the creator might have used some of their employer’s resources or equipment or did some of the creation during working time.
- If someone pays you or offers to pay you to create some copyright works (eg a painting, photograph, diagram) THEY OWN THE COPYRIGHT – even if they do not actually pay you! If you want to retain the copyright you need to make that clear IN WRITING eg suitable terms and conditions.
- Intellectual Property Rights in creations made while at school or university might belong to the school or university (it depends on the terms of the enrolment contract.
- When creating or inventing something that is going to attract Intellectual Property Rights, we strongly recommend that you have a written agreement relating to ownership BEFORE anything is created. Although, there are some provisions about ownership written into the law, it is possible to change the default position by written agreement. Having a written agreement tends to minimise the chances of disputes over intellectual property rights ownership.
What Are Moral Rights In Copyright Law?
- Even when an artist or author or other creator of a copyright work, does not own the copyright any longer, they have certain “moral rights”, for example
– to be acknowledged as the creator of the work
– not to have their work treated in a derogatory manner
- Moral Rights can be waived but not transferred. Many contracts assigning copyright also include a waiver of moral rights – once these rights are waived, the artist is not entitled to enforce them in the future.
Any of the business disasters listed below could be avoided, if you take proper advice from a patent attorney and a trade mark attorney, you can avoid these situations.
- You register your company name and Australian Business name and trade happily for many years. Out of the blue a competitor sues you for trade mark infringement and you discover that they have registered your company name as their own trade mark. You can probably get it back, but cannot afford the $100 000+ legal bill.
- You create an amazing design of a ring. It becomes the most popular design in the world. It sells millions of $’s a year – but you don’t see a cent of it
- You develop a revolutionary type of paint that every artist in the world begins to use. It sells millions of $’s every year – but you don’t see a cent of it
- As part of your artwork, you create a series of cartoon characters. They become more famous than the Simpsons – but Disney Studios steals them from you!
- You paint an amazing painting, and all of a sudden it is world famous. It is reproduced on postcards, books, tv , movies – but the owner of the painting claims that as the artist you have no rights to the reproductions – even if they distort or ruin your original.
- You design a children’s toy that becomes very popular and profitable. It sells in all the top stores – until the $2 shop sells a replica, and your income from the toy stops because everyone buys the $2 toy.
- You create a sculpture or other artwork that reflects the essence of your creativity, and someone decides to display it, but before they do they spray it with ugly graffiti, completely ruining your creation
- You create an incredible new process that makes producing medicine quicker and safer. You are confident that you are going to be rich until your employer sues you and says that they own the intellectual property rights.
What Is A Registered Design?
- Designs can be registered and for new shapes, or patterns – eg jewellery design, furniture, child’s toy, footwear or clothing, shape of a new car headlight.
- Design must be new
- Advised for most important ranges of designs, and also for all commercial designs
o Easy to stop others from copying
o Gives you confidence that your design does not infringe existing registered designs (once your registered design is certified)