In the latest of articles from our freelancers on certain areas of law, and following our articles on intellectual property and copyright, this article looks at the basics of trademarks and includes some helpful tips to think about. As always, it is worth restating that HPLpro is not a legal firm (we supply freelance in-house lawyers), and this article should not be taken as legal advice. It is important for you and your business to have experienced legal practitioners review your business ideas and intellectual property portfolio to ensure that they adequately meet your needs. Please feel free to request a freelance in-house lawyer from us if required. All of the trademarks used in this article are used without permission, no challenge to their status intended. |
Top tip #1 – When creating a new brand or a new product, or even if you are setting up a new company and you are considering the company name, it is absolutely worth checking whether someone else has registered that mark, or a similar mark, by doing a trademark search. You can do this either by engaging an expert such as a lawyer to do the search for you, or you can do it yourself online, normally by accessing the relevant government department website for your country (although given that there can be an element of complexity to some marks, we would always encourage you to go to an expert). For example, in the UK, you would use the UK Intellectual Property website. In the US, you would go to UPTSO, the United States Patent and Trademark Office. Doing such searches up front can save you time and money in the long run by avoiding potentially ruinous litigation. |
Registered/non-registered trademarks
Trademarks can either be registered or unregistered depending upon the territory and the owner of the mark will have different remedies available depending upon the registration.
If the territory that you are doing business in recognises unregistered trademarks, you will start to get the benefit of upon starting trading with that mark. Most of the time, the more trading that you do, the more reputation the mark will build, and the stronger your claim of ownership will be – there are some complications which are outlined later in this article.
In respect of registrations, there is no global register of trademarks, but some countries do have collective registrations, such as the European Union. This means that you can register a trademark under the European system and get protection in all of the EU countries. Of course, registering comes with a cost and you can either register a mark through a lawyer or agent, or you can do it directly on the webpage for the relevant country registrar. In the US, a trademark registration typically costs between $200-400 per mark per class. In the UK it costs between £170-200 and then there is an additional but lower cost of £50 for additional classes for the same mark. Be aware that these costs can, and do, change. In addition, trademarks need to be renewed meaning that after every ten years or so (depending upon the territory) there is more cost.
If the territory that you are doing business in recognises unregistered trademarks, you will start to get the benefit of upon starting trading with that mark. Most of the time, the more trading that you do, the more reputation the mark will build, and the stronger your claim of ownership will be – there are some complications which are outlined later in this article.
In respect of registrations, there is no global register of trademarks, but some countries do have collective registrations, such as the European Union. This means that you can register a trademark under the European system and get protection in all of the EU countries. Of course, registering comes with a cost and you can either register a mark through a lawyer or agent, or you can do it directly on the webpage for the relevant country registrar. In the US, a trademark registration typically costs between $200-400 per mark per class. In the UK it costs between £170-200 and then there is an additional but lower cost of £50 for additional classes for the same mark. Be aware that these costs can, and do, change. In addition, trademarks need to be renewed meaning that after every ten years or so (depending upon the territory) there is more cost.
In respect of what can actually be registered, this will change from territory to territory, but commonly, registrations will cover words, phrases and/or logos. In addition, as stated above, certain jurisdictions also permit colours and sounds to be registered although those registrations are not the easiest to obtain. See the section on restrictions below for what cannot be registered.
Recently, in the UK, Nestle were denied their application to register the above choclolate shape as a trademark (on account of it not being distinctive enough)
An unregistered trademark is denoted by the ™ symbol next to the mark, whereas a registered trademark is denoted by the ® symbol. Have a look at the above well-known examples.
Top Tip #2: In Microsoft Word – and probably other word processing software - if you type in left bracket, the letters 'tm' and a right bracket, the character ™ will appear; and if you type in, left bracket, the letter 'r' and a right bracket, the character ® will appear |
Trademark classes
Further, to complicate things slightly, trademarks exist in 'classes' which is a way of dividing those marks into categories of use. For example, Class 34 refers to tobacco and articles for smoking. That means that HPLpro could own a trademark for the word 'Cobra' in class 34 and that mark is not likely to infringe a 'Cobra' word trademark in class 39 – transport.
The Nice Classification (NCL), established by the Nice Agreement (1957), contains a list of the internationally recognised trademark classes (searchable on the World Intellectual Property Organisation webpage).
The process of trademark registration can take a while, particularly if any other individual or company objects to that registration. For example, if you try to register the trademark 'Red Bullock' in class 32 (Beer and Beverages) your application is likely to receive and objection by a certain manufacturer of energy drinks. As stated in toptip#1 if you have created a new product you should always perform a trademark search prior to releasing that product or registering a trademark.
The Nice Classification (NCL), established by the Nice Agreement (1957), contains a list of the internationally recognised trademark classes (searchable on the World Intellectual Property Organisation webpage).
The process of trademark registration can take a while, particularly if any other individual or company objects to that registration. For example, if you try to register the trademark 'Red Bullock' in class 32 (Beer and Beverages) your application is likely to receive and objection by a certain manufacturer of energy drinks. As stated in toptip#1 if you have created a new product you should always perform a trademark search prior to releasing that product or registering a trademark.
Trademark strategy
If your company has a large trademark portfolio, costs can sometimes mount up very quickly. You should ask yourself, do you need to register everything? Unfortunately, when it comes to trademark strategy, many companies (and indeed lawyers) advocate the approach of registering everything that can be registered.
One of our freelancers has worked for a company where the approach was to register absolutely everything in every class they possibly could, which amounted to a portfolio of 3000 trademarks each in at least 4 classes. That is a very, very expensive endeavour. Registering a mark is fairly futile if you do not intend to protect that mark, which means that the costs of bringing trademark infringement claims also need to be considered in any IP strategy. Having an all-encompassing trademark registration strategy can be extremely costly.
Of course, sometimes it is necessary for certain business in certain industries to have such as wide approach and each business should certainly talk to a professional to assess their specific needs. Nevertheless, such a strategy should consider what is important for that business and register those marks in the classes that you will use. This exercise cannot be done in isolation, consideration should be given to the industry as a whole, competitor activity, as well as likely future trading activity. If you would like to engage a HPLpro freelancer to help you with you trademark and/or IP strategy do let us know.
One of our freelancers has worked for a company where the approach was to register absolutely everything in every class they possibly could, which amounted to a portfolio of 3000 trademarks each in at least 4 classes. That is a very, very expensive endeavour. Registering a mark is fairly futile if you do not intend to protect that mark, which means that the costs of bringing trademark infringement claims also need to be considered in any IP strategy. Having an all-encompassing trademark registration strategy can be extremely costly.
Of course, sometimes it is necessary for certain business in certain industries to have such as wide approach and each business should certainly talk to a professional to assess their specific needs. Nevertheless, such a strategy should consider what is important for that business and register those marks in the classes that you will use. This exercise cannot be done in isolation, consideration should be given to the industry as a whole, competitor activity, as well as likely future trading activity. If you would like to engage a HPLpro freelancer to help you with you trademark and/or IP strategy do let us know.
We have Pepsi, would you like one?
Unlike other forms of IP, trademarks need to be maintained as they can be damaged by a trademark owner. Trademarks, if misused, can actually bring about their own downfall. For example, if a trademark becomes generic it can actually be challenged. I am sure that we have all been in a restaurant and asked for a Coca Cola only to be met with, "we have Pepsi, would you like one?" (or vice versa).
Such a question is asked to ensure that trademarks maintain their distinctiveness. Some people suggest that having a mark that is so powerful it is used in relation to products that are not your own is a positive thing for a business – they argure that it means that the business 'owns' the space for that product. Nevertheless, the issue becomes of vital importance when a business with a generic trademark attempts to stop a third party from using it commercially – they may not be able to. Indeed, their own mark may be found to be invalid for lack of distinctiveness.
Thermos, Kleenex, and Hoover are all examples of genericized trademarks.
Of course, the most powerful trademark at present that is arguably at risk of becoming generic is Google. Googling anyone? Whenever somebody says 'google it,' to you do you only use the Google search engine or do you use any search engine available?
To ensure that your marks maintain their distinctiveness, even when they become globally popular, you must ensure that you always use your trademarks consistently, educate your customers the correct way to use the marks through your marketing (rather than reinforcing bad habits) and always challenge misuse of those marks. Also, avoiding the use of the mark as a verb will help (such as Hoovering or Googling). Finally, using the mark adjacent to the generic type of goods or service will likewise assist in prevention of genericization: for example, Burger King burgers, Sprite soft drink, Bud Light beer.
When thinking up names for new brands and the like there are three main schools of thought: use a name which indicates to customers what the brand could be (e.g. Pizza Hut); use a name which is a real word but normally used in a different context (e.g. Apple) and think up a completely new word (e.g. Google). It is perhaps not a coincidence that many of the strongest global marks take the latter approach. Any marks that come in the first category are going to have a hard time proving that they are distinctive enough to be registered (see below).
Such a question is asked to ensure that trademarks maintain their distinctiveness. Some people suggest that having a mark that is so powerful it is used in relation to products that are not your own is a positive thing for a business – they argure that it means that the business 'owns' the space for that product. Nevertheless, the issue becomes of vital importance when a business with a generic trademark attempts to stop a third party from using it commercially – they may not be able to. Indeed, their own mark may be found to be invalid for lack of distinctiveness.
Thermos, Kleenex, and Hoover are all examples of genericized trademarks.
Of course, the most powerful trademark at present that is arguably at risk of becoming generic is Google. Googling anyone? Whenever somebody says 'google it,' to you do you only use the Google search engine or do you use any search engine available?
To ensure that your marks maintain their distinctiveness, even when they become globally popular, you must ensure that you always use your trademarks consistently, educate your customers the correct way to use the marks through your marketing (rather than reinforcing bad habits) and always challenge misuse of those marks. Also, avoiding the use of the mark as a verb will help (such as Hoovering or Googling). Finally, using the mark adjacent to the generic type of goods or service will likewise assist in prevention of genericization: for example, Burger King burgers, Sprite soft drink, Bud Light beer.
When thinking up names for new brands and the like there are three main schools of thought: use a name which indicates to customers what the brand could be (e.g. Pizza Hut); use a name which is a real word but normally used in a different context (e.g. Apple) and think up a completely new word (e.g. Google). It is perhaps not a coincidence that many of the strongest global marks take the latter approach. Any marks that come in the first category are going to have a hard time proving that they are distinctive enough to be registered (see below).
Restrictions
Be aware that there will be some things that you cannot trademark and this list of restrictions will differ depending upon what territory you are in. A trademark that has been registered can also been found to be invalid if it breaches such restrictions. You need to have a look at the website of the relevant registrar or talk to an expert to find out what the restrictions are in in your jurisdiction.
Common restricted marks may include:
Common restricted marks may include:
- marks which give the impression of government association or approval (or royal approval in the UK);
- Geographical locations – although geographical locations are rarely owned by one business, nevertheless they can be exploited only by businesses operating in that area (Melton Mowbray pork pies, for example);
- generic/non-distinctive marks (see above);
- certain flags, emblems;
- marks which are too similar to other marks; and
- obscene marks.
We hope that you found the above useful. Let us know if you have any questions or if you have a need for part-time or temporary in-house legal support.
The HPLpro team
Comments
This article follows up on our hugely popular article on the basics of intellectual property with a slightly more detailed look at copyright. In this article we we examine what copyright is, what it does and how it is surviving in the modern digital era.
As always, it is worth restating that HPLpro is not a legal firm, and this article should not be taken as legal advice. It is important for you and your business to have experienced legal practitioners review your business ideas and intellectual property portfolio to ensure that they adequately meet your needs. Please feel free to request a freelance in-house lawyer from us if required.
As always, it is worth restating that HPLpro is not a legal firm, and this article should not be taken as legal advice. It is important for you and your business to have experienced legal practitioners review your business ideas and intellectual property portfolio to ensure that they adequately meet your needs. Please feel free to request a freelance in-house lawyer from us if required.
Summary
© Copyright protects creative works;
© it does not protect ideas; © there are exceptions to copyright; © some copyright protections are global; © copyright expires after a certain time; and © technology is changing faster than the law. |
As stated in our earlier article, copyright is essentially the protection of rights in creative works – think pictures, music, sculptures, graphics, films, books, and so on. In essence, it gives the holder of those rights the ability to prevent other people copying the work, or using the work in certain ways without permission. Importantly, copyright does not protect ideas – it protects the expression of those ideas, which need to exist in some tangible form. For example, the music created by a band who are jamming will not have copyright protection unless that music is recorded in some form. The same is true of a sculpture, copyright is only available once the sculpture has been created, rather than when it is an idea in the head of the sculptor.
However, it is important to distinguish between the rights in an expression of an idea and the rights in a physical object - copyright does not necessarily also mean that you own the physical object that 'holds' the copyright. For example, the band Gorillaz own the copyright to the song 'Superfast Jellyfish' but that does not equate to automatic ownership of every CD with the song on. The opposite is also true, you can own a CD with 'Superfast Jellyfish' on it without having the rights to commercially exploit that song.
"Hang on," we hear some of you cry, "I just recorded my 7 inch record of Captain Sensible's 'Happy Talk' onto a TDK Cassette tape. Am I going to go to prison?" Perhaps, for the music choice (Captain Sensible should go to prison for that video), but as for copyright, there are exceptions to copyright – which are covered later in this article – which mean that in some territories (such as the UK) you are able to copy the artistic work in certain circumstances – such as making copies for personal use. Interestingly, that change only occurred in the UK in 2014 and essentially reflected what the public were already doing with those copyright works; mixtapes made prior to 2014 in the UK were technically infringing copyright.
Berne baby, Berne
As noted in our previous article, the details of copyright change from country to country – copyright is not international - however, the Berne Convention, which was established in 1886 and has been gently amended over the years, creates certain minimum requirements of protection for the territories that have signed up to it (all 173 of them). The Convention holds that if you created a work which qualifies for protection in one of the contracting states, you get the same minimum level of protection in all of the others - and that protection is not conditional (in other words, it is automatic).
This means that, in respect of the beautiful photograph above, if it were to qualify for copyright protection in the UK, it would, for example, get copyright protection in Nigeria.
The Berne Convention also holds that there are two distinct elements to copyright – economic and moral rights – and those rights can be held by different persons or entities. Economic rights are what we normally think of when considering copyright – they grant the owner the ability to exploit the copyright for financial gain and prevent others from doing so – in other words the owner has the right to copy and sell (or license) the work. Moral rights are slightly different – they enable the author of the work to be recognised as the author; and grant the ability to prevent the work being modified in a way that would be prejudicial to the honour or reputation of the author. In many 'western' countries, moral rights are seen as the ugly cousin of economic rights and can even be waived in certain territories, such as the UK. the waiver of moral rights is, however, considered by some to be controversial as, if there is an imbalance in negotiating power, an artist may be unduly 'encouraged' to waive those rights. On the other hand, a company will simply use a different freelancer should the proposed artist object, hence the controversy. Perhaps a reasonable approach to take would be to suggest that, if the artist is merely bringing into existence somebody else's vision, then they should not object to waiving moral rights. Of course, if the work of art is solely the vision of the artist, it would seem unreasonable to expect the artist to waive their moral rights.
The Berne Convention also holds that there are two distinct elements to copyright – economic and moral rights – and those rights can be held by different persons or entities. Economic rights are what we normally think of when considering copyright – they grant the owner the ability to exploit the copyright for financial gain and prevent others from doing so – in other words the owner has the right to copy and sell (or license) the work. Moral rights are slightly different – they enable the author of the work to be recognised as the author; and grant the ability to prevent the work being modified in a way that would be prejudicial to the honour or reputation of the author. In many 'western' countries, moral rights are seen as the ugly cousin of economic rights and can even be waived in certain territories, such as the UK. the waiver of moral rights is, however, considered by some to be controversial as, if there is an imbalance in negotiating power, an artist may be unduly 'encouraged' to waive those rights. On the other hand, a company will simply use a different freelancer should the proposed artist object, hence the controversy. Perhaps a reasonable approach to take would be to suggest that, if the artist is merely bringing into existence somebody else's vision, then they should not object to waiving moral rights. Of course, if the work of art is solely the vision of the artist, it would seem unreasonable to expect the artist to waive their moral rights.
As stated above, copyright normally arises automatically upon the creation of the artistic work. There is not a register of copyright works in the UK – when you create it, copyright arises immediately and automatically. There is however a register of copyright works in the US and, in general, you cannot sue for copyright infringement in the US unless your copyright is registered at the US Copyright Office. The good news is that you can register the copyright yourself at the US Copyright Office.
We mentioned in our previous article that copyright only last for a period of time and then expires. The Berne Convention states that the minimum period is the life of the author and then a period of 50 years following the death of the author. In many countries, that period is extended to 70 years plus the life of the author.
Exceptions to the rule
So what can a non-copyright holder do with an artistic work that is protected by copyright?
Good question. In many territories, there are exceptions to copyright (although these vary greatly from country to country). Common exceptions are for research purposes, personal use, private study, criticism/review, teaching, parody and so on. Most of the exceptions deal with permissible reproduction of the copyright work in ways which do not have a commercial purpose, but that is not always necessarily the case – copyright infringement can take place even if money is not being exchanged.
Another way of using a copyright protected work without infringing it is to obtain a license to do so. That license could either be general (in other words, everybody is offered the same license on the same terms), or specific to you as an individual (such as in the case of music sample clearances as detailed below). These licenses impact upon all of us more often that we may realise, for example, computer software licenses are likely to be the general copyright licenses that most people will encounter in their daily lives. We know you've all clicked 'I agree' without reading the accompanying license at some stage or another. Another common license in the UK is the use of a radio in a public place, such as an office, which is also likely to require a copyright license.
Good question. In many territories, there are exceptions to copyright (although these vary greatly from country to country). Common exceptions are for research purposes, personal use, private study, criticism/review, teaching, parody and so on. Most of the exceptions deal with permissible reproduction of the copyright work in ways which do not have a commercial purpose, but that is not always necessarily the case – copyright infringement can take place even if money is not being exchanged.
Another way of using a copyright protected work without infringing it is to obtain a license to do so. That license could either be general (in other words, everybody is offered the same license on the same terms), or specific to you as an individual (such as in the case of music sample clearances as detailed below). These licenses impact upon all of us more often that we may realise, for example, computer software licenses are likely to be the general copyright licenses that most people will encounter in their daily lives. We know you've all clicked 'I agree' without reading the accompanying license at some stage or another. Another common license in the UK is the use of a radio in a public place, such as an office, which is also likely to require a copyright license.
Copyright Notice
You may recognise the copyright symbol - ©. It is not necessary to use but indicates to the world that you consider the work to be protectable and yours. You may have also seen dates feature after a copyright notice – this gives the viewer the knowledge of when a copyright piece was first created or published. In the years prior to 2000 a particular global treaty required the words 'All Rights Reserved' to be written on the copyright work in order to be able to have protection but that is no longer the case – however, you will see that it is almost always still used in literature and on websites – we still use it at the footer of most of our webpages – such as on our home page - for example. Old habits die hard, although it is good practice to nevertheless use a copyright notice. An example of a simple notice is: "© Copyright HPLpro Limited 2017. All Rights reserved. "
The Law moves slowly...
We have dealt with some of the main elements of copyright in the preceding paragraphs. Now let us look at how the law is interacting with the modern world when it comes to copyright. We made reference to animal selfies in our earlier article which have recently been held by a court in the US to not attract copyright – animal art has been a thing since the 1950's if not before, so it goes to show how slowly the law gets around to considering new developments. Speaking of non-human artistic works, presumably the same applies to AI meaning that, when the AI in your Google piano gets advanced enough to invent its own music, that music would not give rise to copyright protection. Which brings us neatly on to technology.
The World Intellectual Property Organisation – which is the body that manages the Berne Convention – is also responsible for the 1996 WIPO Copyright Treaty. This treaty is a special agreement under the Berne Convention that deals with digital elements of copyright protection in relation to computer programmes and databases.
Given that computer programmes and databases existed for decades before the WCT treaty it again goes to show how slow legislation moves in respect of keeping up with the pace of technological change; perhaps necessarily, given the pace of technology, legislation is behind the curve when it comes to the modern digital world. Legislators, lawyers and courts often find themselves trying to shoehorn matters relating to new technology into old laws.
What would the authors of the Berne Convention make of a live broadcast of a band on Google Hangouts, where the band are all in different countries (some of which being non-WCT and non-Berne countries) – where the drummer is Biff-Biff the monkey, the bassist is Ceolopithia, a character in World of Warcraft (being played by a real human), an MIT Artificial Intelligence, Robot X1, is playing the guitar, Beardy Man is on vocals and samples from various bands from the 1980s are being mixed in by Dr Dre . The performance is being watched, recorded and broadcast on a multitude of different devices – including on a big screen at Time Square in New York (with the crowd recording that broadcast on their phones). Additionally, the score for the music is being automatically ascribed by a Google AI app (we may have just invented that) on at least a million Samsung phones. Finally, there is no contract between the band as they have never met and are just jamming. What would the law make of that? Either way, we want that album. What would the band be called, we wonder…
What would the authors of the Berne Convention make of a live broadcast of a band on Google Hangouts, where the band are all in different countries (some of which being non-WCT and non-Berne countries) – where the drummer is Biff-Biff the monkey, the bassist is Ceolopithia, a character in World of Warcraft (being played by a real human), an MIT Artificial Intelligence, Robot X1, is playing the guitar, Beardy Man is on vocals and samples from various bands from the 1980s are being mixed in by Dr Dre . The performance is being watched, recorded and broadcast on a multitude of different devices – including on a big screen at Time Square in New York (with the crowd recording that broadcast on their phones). Additionally, the score for the music is being automatically ascribed by a Google AI app (we may have just invented that) on at least a million Samsung phones. Finally, there is no contract between the band as they have never met and are just jamming. What would the law make of that? Either way, we want that album. What would the band be called, we wonder…
…but The Internet moves so quickly
Never one to hang around, The Internet is trying to come up with its own solutions to the above conundrums, primarily taking the approach that everyone can use everything. In particular, the Creative Commons licenses enable users to copy, edit, alter, update and generally fiddle with the creative works which the creators have licensed – for free - for that purpose, all within the bounds of copyright laws. The Creative Commons ethos is, "when we share, everyone wins." Interestingly, a key factor of the CC license is that of accreditation - you can use the author's work provided that you also state where the work originally came from.
Of course, The Internet also has a habit of ignoring rules and laws altogether.
In many ways, The Internet has collided head on with copyright, particularly in relation to films, music and software. The fallacy that a person can sit behind their computer screen and nobody can 'see' what they are doing is like that of a child with a box on their head thinking that nobody can see them.
The reality is more one of cost – whilst online copyright infringement can usually be traced, it is unlikely to be punished, simply due to the disproportionate cost involved; pursuing a person who has downloaded a Dizzee Rascal album in breach of copyright will cost more than the price of the album itself. Additionally, legal systems would not be able to cope with the large numbers of claims that would arise. Finally, depending upon the territory, the copyright holder will also likely need to show a loss to base their claim on. If the Dizzee Rascal downloader bought a copy of the album when challenged there would likely be no basis for a claim. The complaining party also has to have the right to bring the case, as Osama Fahmy found when he brought a US copyright claim against Jay-Z for the use of some of his uncles' music in the 1999 song, 'Big Pimpin’.'
There is no question that with the march of the online world the approach to copyright of a significant proportion of the population has changed, its importance has perhaps diminished in the eyes of some. Nevertheless, it is perhaps unfair to solely blame The Internet; piracy, the glamourous name given to unauthorised reproduction of copyright works, had been around for decades prior to The Internet. Many readers of this article may recall making mixtapes and perhaps going on to sell them at school. The financial element is important here; whilst the law perhaps does not reflect it, in practice, copyright holders seem to be targeting those persons and entities who are making money out of copyright infringement or who are enabling others to commit copyright infringement rather than pursuing the bedroom Dizzee Rascal downloaders. Further, plagiarism (the practice of copying someone's work and passing it of as your own - synonymous with copyright theft) has been around for centuries; it is arguably a little easier to commit plagiary with the advent of The Internet but also a little harder to get away with.
Frankly, it is getting physically easier to copy stuff; we can even print plastic copies of virtually anything in our own homes. Additionally, the line between what is and what is not copyright infringement is becoming increasingly blurred given the increasing sophistication of technology and it is all happening at a pace which outstrips the law, cases and legislation. The use of samples in music has been a phenomenon for many decades but could technically be an infringement of copyright, notwithstanding the result of the 'Big Pimpin'' case highlighted above. In fact, there have been numerous cases since the 1990s (way too many to list in this article) , particularly in the US, on this subject. This all means that advice from lawyers is therefore becoming an increasingly valuable commodity when it comes to copyright and copyright infringement and avoiding court cases.
Does that mean however, that an artist should talk to their lawyer prior to letting their creative juices flow? Whilst that is something for each individual and entity to decide for themselves, it would be prudent to keep your freelance HPLpro lawyer close to hand when your company starts producing copyright works, just in case. Lawyers can be creative too don't you know.
Feel free to comment on how copyright operates in your specific country.
We hope you found the above useful; let us know if you have any other request for articles. Stay tuned for other articles on IP, contracts and other interesting legal things!
The HPLpro team
We hope you found the above useful; let us know if you have any other request for articles. Stay tuned for other articles on IP, contracts and other interesting legal things!
The HPLpro team
In the latest of articles from our freelancers on certain areas of law, we tackle the basics of intellectual property (also called IP): what it is, what types of IP there are and some helpful things to think about.
As always, it is worth restating that HPLpro is not a legal firm, and this article should not be taken as legal advice. It is important for you and your business to have experienced legal practitioners review your business ideas and intellectual property portfolio to ensure that they adequately meet your needs. Please feel free to request a freelance in-house lawyer from us if required.
As always, it is worth restating that HPLpro is not a legal firm, and this article should not be taken as legal advice. It is important for you and your business to have experienced legal practitioners review your business ideas and intellectual property portfolio to ensure that they adequately meet your needs. Please feel free to request a freelance in-house lawyer from us if required.
What is IP?
Intellectual property is an idea that has been turned into something; ideas on their own are not intellectual property. So, for example, you may think of an idea for a great painting which, in itself, is not intellectual property. However, as soon as you paint the painting you have created some intellectual property!
There are various types of intellectual property that you will have heard of (copyright, patents, trademarks, design rights, and so on) and we will detail those below. How these types of intellectual property are dealt with can change from country to country and some even have global agreements on how they work. Some types of intellectual property arise automatically and immediately upon creation whereas other types of intellectual property need to be registered – at a cost - with one or several governmental bodies in order to be protected. This article will focus on IP generally rather than the rules in any specific territory or country – it is always worthwhile engaging experts in the relevant area to ensure that you protected.
IP can be owned by individuals and companies and can be transferred from person to person or company to company; you do not need to be the creator of the IP to be the owner. IP can also be licensed from one party to another, so, in certain circumstances you can use someone else's IP under a license agreement. You can also have joint owners of IP.
It is worth bearing in mind that most IP only exists for a certain period of time (although in some instances those periods of time can be extended or renewed).
There are various types of intellectual property that you will have heard of (copyright, patents, trademarks, design rights, and so on) and we will detail those below. How these types of intellectual property are dealt with can change from country to country and some even have global agreements on how they work. Some types of intellectual property arise automatically and immediately upon creation whereas other types of intellectual property need to be registered – at a cost - with one or several governmental bodies in order to be protected. This article will focus on IP generally rather than the rules in any specific territory or country – it is always worthwhile engaging experts in the relevant area to ensure that you protected.
IP can be owned by individuals and companies and can be transferred from person to person or company to company; you do not need to be the creator of the IP to be the owner. IP can also be licensed from one party to another, so, in certain circumstances you can use someone else's IP under a license agreement. You can also have joint owners of IP.
It is worth bearing in mind that most IP only exists for a certain period of time (although in some instances those periods of time can be extended or renewed).
If you have an idea but have not yet turned it into actual IP – be sure to keep that information secret! As stated in this article, an idea on its own is not intellectual property – and you may find that you lose the ability to protect your idea if you don't keep it secret. If you need to tell other people or companies about your idea, make sure you use an NDA (aka confidentiality agreement) beforehand – see our explainer on NDAs and our free NDA builder.
|
Copyright
Copyright is essentially the protection of creative works – it protects the expression of an idea. So, for example paintings can be protected by copyright, as can statues, photographs, novels, drawings, computer programmes and so on. The key however is that these elements need to exist in the real world and need to have an element of creativity – meaning that, for example, the book needs to have actually been written down for it to attract copyright protection. The protection that copyright grants is the ability to stop someone else copying your work, adapting it, distributing it, or performing it without permission (if it is a play or musical score). We will look at copyright in more detail in our next article.
|
Patents
Patents deal with inventions and protect how and when other people can use that invention. A significant consideration with regard to patents is that they are published and are able to be freely viewed by everyone when they are registered. That means that somebody could take your invention and improve it and/or do it differently all potentially without infringing your patent. So, if you have something that is highly confidential, you may not want to have it published as a patent. Further, patents exist for a certain period of time, normally 20 years, after which time they pass into the public domain – so again, if you want more than 20 years of protection you may want to consider keeping the information a secret rather than registering a patent. However, to do so would be counteractive to the general philosophy of patents which is to encourage the development and sharing of new ideas. As with copyright, we will take a further look at patents in a later article.
When hiring freelancers of any sort to turn your ideas into actual things – web designer, software programmer, artist, writer - remember to include language about IP ownership and to transfer that IP over to you or your company in the contract that you have with the freelancer. Depending upon where you are in the world, failure to do so could result in the IP being owned by the freelancer! If we get enough interest, we may ask one of our freelancers to create a free freelance template for download. Also note that if you are an employer, you should include appropriate language in your employment contracts on IP ownership. |
Trademarks
Trademarks protect branding which is used in relation to trade (and all of the trademarks in the above picture are used without permission - no challenge to their status intended.). Normally a trademark will be a word or a logo but in some territories worldwide you can also claim colours or smells as trademarks. A trademark is therefore a logo, word or other element which identifies the source of that logo or mark for the economic benefit of the owner but also for the benefit of consumers at large; if everyone could use the word Microsoft in respect of computer programmes that they were selling, users would have no idea of the origin, and therefore the quality (or lack of), of that software.
Trademarks can either be registered or unregistered depending upon the territory and the owner of the mark will have different remedies available depending upon the registration. Further, to complicate things slightly, trademarks exist in 'classes' which is a way of dividing those marks into categories of use. For example, Class 34 refers to tobacco and articles for smoking. That means that HPLpro could own a trademark for the word 'Cobra' in class 34 and that mark is not likely to infringe a 'Cobra' word trademark in class 39 – transport.
As with the other types of IP we will pen a further article on this subject at a later date.
Trademarks can either be registered or unregistered depending upon the territory and the owner of the mark will have different remedies available depending upon the registration. Further, to complicate things slightly, trademarks exist in 'classes' which is a way of dividing those marks into categories of use. For example, Class 34 refers to tobacco and articles for smoking. That means that HPLpro could own a trademark for the word 'Cobra' in class 34 and that mark is not likely to infringe a 'Cobra' word trademark in class 39 – transport.
As with the other types of IP we will pen a further article on this subject at a later date.
Design rights/ Registered designs/industrial designs
This little bundle of IP rights varies greatly depending upon the country but in general they protect the aesthetics of an industrial article, particularly the design of that article. They may help you to prevent someone making, selling or distributing infringing articles. The classic design of an Alessi kettle for example may be the perfect subject for a registered design. |
Other IP
There are a few other elements which are sometimes considered to be intellectual property and are worthy of mention:
Trade secrets – these are confidential pieces of information which relate to the most vital elements of a business and normally they will be contained in the heads of only a few people worldwide. The Coca Cola recipe is rumoured to be one such trade secret.
Domain names – domain names can be considered to be intellectual property in that they can be owned and traded and are not physical items as such. Along with other IP elements, businesses should consider domains names as part of their intellectual property strategy.
Protected Geographical Location rights – the ability to refer to ther origin of a product or service can have real world value – Melton Mowbray pork pies for example. Although geographical locations are rarely owned by one business, nevertheless they can be exploited only by businesses operating in that area. Only pork pies made in the Melton Mowbray area can use such a reference on their packaging – even if they are identical in every way to one made just outside the area (aficionados will however tell you that the MM Pork Pie is distinctly different to all others).
Trade secrets – these are confidential pieces of information which relate to the most vital elements of a business and normally they will be contained in the heads of only a few people worldwide. The Coca Cola recipe is rumoured to be one such trade secret.
Domain names – domain names can be considered to be intellectual property in that they can be owned and traded and are not physical items as such. Along with other IP elements, businesses should consider domains names as part of their intellectual property strategy.
Protected Geographical Location rights – the ability to refer to ther origin of a product or service can have real world value – Melton Mowbray pork pies for example. Although geographical locations are rarely owned by one business, nevertheless they can be exploited only by businesses operating in that area. Only pork pies made in the Melton Mowbray area can use such a reference on their packaging – even if they are identical in every way to one made just outside the area (aficionados will however tell you that the MM Pork Pie is distinctly different to all others).
Company names – finally a company name is intellectual property of a sort and it is worth bearing in mind that just because you own the company name does not mean that you own a trademark with the same name nor does it give you automatic rights to a domain name.
Hope you found the above useful. We will tackle the specific elements mentioned above in later articles, so keep tuned!
The HPLpro team
The HPLpro team
Author
HPLpro
Archives
June 2017
May 2017
April 2017
March 2017
Categories
All
Article
Contracts
Data Protection
Downloads
Explainers
Intellectual Property