Although somewhat sexist in tone, He stole my idea – what can I do about it? really caught my attention. It was presented by Denise Nurse, the co-founder of Halebury one of our partners providing legal advice. They aim to make law more accessible to everyone, in particular start-ups and medium sized companies.
Here are my notes from the workshop:
1. What is Intellectual Property?
- Ideas are not protected until you do something with it. It has to turned into something tangible.
- Often compared to physical property. You wouldn’t buy a house without research and professional advice. Once purchased you need to maintain and develop it in order to protect or increase its value.
- You need to identify the various aspects of IP in the manifestation of your idea:
– Copyright – automatically covers any creative output, but you need to prove you did it first.
– Trademarks – your unique identifier for you business. Can be registered for ten years with the Intellectual Property Office or the EU for a Community Mark. Start with business name, might want to include your strap line. Need to develop a strategy, but budgetary restrictions are often a factor. If you have an established brand which can not be registered as it is descriptive you can use the ‘passing off’ laws to gain some protection.
– Patents – a long, complicated and expensive process. Covers an inventive process. Must be completely new and secret, but if successful gives you a monopoly for 20 years. Can be licensed to others.
– Designs – often overlooked, but relatively cheap and easy to register. Covers the shape of something and how it fits with something else. Does not have to be registered, but this gives more protection.
– Database rights – relate to the organisation of information. Protection from staff walking away with customer lists etc.
– Confidential information – take time to ensure you have the correct confidentiality agreement. How long will it need to last? Who does it cover? Be careful using standard agreements found on the internet.
2. How is IP Infringed?
- Copy, publish, distribute
- Sell, rent, lend
- Produce, manufacture
- Perform, broadcast
3. What is the Damage?
- Music industry claims 20% lost income due to piracy.
- Your reputation can be damaged – e.g. counterfeit goods which are poor quality
- Money – loss of IP eats into your income.
- Dilution of rights – e.g. by allowing its use to become generic you lose the value of your rights such as a trade mark.
- Weakened commercial position – will have an impact on potential partners, licence agreements.
4. Protection = Preparation and Perception
- Mark and / or register – e.g. use copyright symbol.
- Insure – a growing field, especially in the field of products and patenting. Can cover legal fees to attack or defend from attack. Can help when going for investment.
- Monitor use – the IPO do not act as IP police. You have to check. Not difficult these days with the internet and search engines. Some trade mark attorneys offer this service.
- Take swift action – very important not to hang about, but don’t act rashly, get legal advice.
- Follow through – do you have the resources to follow up on original letter? Nine times out ten the initial letter and demands within it will work. In some cases your trade association can provide support.
- Make an example of someone who is blatantly abusing your IP.
- Get warranties from third parties you are working with.
5. What if someone is infringing your IP?
- Gather evidence – such as witness statements.
- Get insurance – can be bought after the event.
- Call a lawyer – better if you already have a relationship and they know you IP situation.
- Contact the infringer
- Make a claim
- Notify the authorities – some acts are illegal in addition to civil. E.g. counterfeiting goods.
- Settlement agreement – you may be able to work out a licensing deal.
6. Defences – anticipating
- Dispute ownership or title – prove the IP is yours. E.g. in the film world need to ensure all aspects are covered.
- License to use – check the small print of original documentation.
- Lack of knowledge – if your work is not widely available it is possible the infringers have not copied your work, although they will still be in breach of your IP.
- Rights have expired or have been exhausted – can be a geographical factor.
- Jurisdiction – disputes may be taking place in other locations.
- Acquiescence – you haven’t used your registered trade mark for too long.
7. What will you win?
- Stop infringement
- Seize copies
- Account for profits – example of Brats dolls dispute with Matel – $100 damages.
- Criminal sanctions – e.g. Pirate Bay founders
8. Practical steps
- Set up processes
- Keep an up to date record of your IP – don’t forget to renew trademarks
- Document your agreements
- Monitor the market place – be aware of IP use and trends in your market area.
- Build an aggressive reputation – lessons learnt from working for Rupert Murdoch.
- Publicising your success – e.g. when you make an example of an infringer.
- Research and take advice – sometimes you will need professional advice, build this into your plan.
- Have a strategy – always worth going through your IP assets even at a late stage.
Audience comment: “For most companies ethics is a small county in the south east of England.”