Tag Archives: Intellectual Property

World IP Day

World IP Day 2015: A Change In The Tide For Music?

World IP DayOn 26 April, World Intellectual Property Day… celebrate[d] music with the aim of promoting discussion of the role of IP in encouraging innovation and creativity.

As a part of this, there [were] …discussions across the globe exploring some of the challenges and subsequent changes shaping the music industry today.

A key change in the music industry

One of the key changes in recent years has been the way that we can access music. Streaming has becoming one of the most popular ways to access music with 60 million users signed up to industry leader Spotify.

However, many artists didn’t feel that letting the general public listen to their music for free was fair on the artist. With this in mind, last month, American rapper and producer, Jay Z, launched a rival platform called ‘Tidal’ – with the view that through this service (with no ‘free’ option), artists would be paid for their work. At $20-per-month, Tidal promises exclusive content and videos that other streaming services will not have access to. Artists, such as Rihanna, Usher, Madonna and Beyonce have all aligned themselves to Tidal, with Jay-Z saying the platform was going to ‘forever change the course of music history’, ‘allowing art to flourish’.

To read more about the impact of Tidal on the intellectual property debate within the music industry please visit: http://www.shoosmiths.co.uk/client-resources/legal-updates/world-intellectual-property-day-change-for-music-9654.aspx

Naming a brand

Naming A Company? How Can You Avoid Trademark Disasters?

Naming a brand When choosing a new name, it can be confusing to know the order in which to do things – such as registering domain names, a company name, designing a new logo and so on.

People tend to do all these things and then only at the end of a branding project do they turn to a lawyer to protect the brand. This is the wrong way to go about it because if you’ve chosen a name that infringes on somebody else’s rights, it leaves little scope to choose a better name. You will have invested time and resources in the name, and may be tempted to continue to use that name, despite the very real and serious risks.

So, what due diligence can you carry out yourself? And when do you need the expertise of an appropriately experienced intellectual property lawyer?

Well the first point to be aware of is that the domain name or company name’s availability does not mean you may use the name. It depends what you want to use the name for.

Carrying out your own checks to settle on a shortlist 

A key question is whether the name is in use by a competitor, who may have registered it as a trademark or built up unregistered rights in the name.

So, do some Google research. If you find somebody else is already using the same or a similar name within the same or a similar industry sector, then beware.

However, if someone is using a similar name, the next question is to look at where they are located. If they are based outside the geographic area in which you will do business, then you may be alright to use the name. However, it does depend.

Assess the Google search result by asking yourself whether the country the other entity is based in is relevant; whether they are potential competitors, and whether they have customers in your territory or online. If the entity using a similar name might be selling their product in the UK (say via an estore), then you may have problems using the name.

If you find nothing, this is not conclusive. For example, not all websites are search-engine friendly, and not all products are promoted by names online. In some cases, someone could have registered a mark and not started using it yet, as it’s possible to register a name for up to five years before using it.

Checking the trademark registers.

That’s why you also need to do a search of the trademark registers.

The trademark registers are public, which means that anyone can search them to discover whether someone else has already registered the same brand name. If the name is registered that means you can avoid investing on marketing, graphics, websites and so on using that name.

This is a central function of the registers, putting others on notice of their rights. However, if the name is not already registered it does not mean you’re in the clear. Is a similar name registered?

Increasingly, the search facilities provided by the trademark registries are quite sophisticated so that it’s possible to find out whether similar names are already registered too – not just exactly the same name. If you do find similar registrations, then you need to take a view as to whether the owner of one of those marks might object to your use of a similar name. If you can’t work it out, then you should pay a lawyer for a legal opinion.

How a professional can help

While I’m more than happy to provide information to help people assess the risks for themselves, it is not possible to provide opinions on specific names without being engaged to provide the service.  Often it is necessary to consult the registers before an opinion can be provided.

It’s important to appreciate that initial checks do not replace the need for legal advice, but are a step to take before settling on a few possible names.

By carrying out these searches, choosing names carefully, and immediately discarding names which are obviously already in use by others, you will save yourself a lot of expense and disappointment. You will also find a shortlist of worthwhile names to ask a lawyer to assess for you.

If you get the green light, you should consider registering a trademark at the same time. That is the way to ensure the name is uniquely yours to use and that someone else doesn’t start using the same name in a way where your two  businesses might be confused for one another. It costs a lot of money to resolve such disputes. A registration is much cheaper than costly litigation.

As a firm we suggest clients use the resources available for preliminary due diligence of their own, and then take professional advice if it matters to you to avoid litigation, or to have a name that you can uniquely own.

Finally, remember that not all names are capable of being trademarked, so a lawyer can add significant value to any naming exercise as they are best placed to advise whether your chosen name is capable of functioning as a trade mark. .

EPO ruling on patent cases for conventional plants

New EPO Ruling On Conventional Plants Creates Controversy

EPO ruling on patent cases for conventional plants

At the end of March the EPO issued two decisions in the highly publicised Tomato II and Broccoli II cases. Both of these cases involved seeds for plants that were grown conventionally or through “biological breeding methods involving cross and selection.” The EPO’s highest court stated that such seeds were patentable.

Following the March decision in both cases, “civil society reacted quickly to say that the EPO is favouring giant argochemicial companies… to the detriment of small breeders and consumers”. The concern of such groups is that there will be little incentive for innovation and that the decision, which cannot be challenged, as it was made by the highest court, “will be used to bypass the current legislation in Europe, according to which conventional selection processes on plant and animals cannot be patented…”.

To learn more about these decisions, the significance of these cases and the reactions to the decisions, please see: http://www.ip-watch.org/2015/04/01/epo-backs-patents-on-conventional-plants-broccoli-tomato-cases-decided/

 

Learn which countries are part of the Madrid Protocol

International Trademarks – Madrid Protocol System

Learn which countries are part of the Madrid ProtocolWhile it is not possible to register “international trademarks”, the Madrid Protocol system provides the next best solution if the country in which you want to register has signed up to the Madrid Protocol.

The current list of countries within the Madrid System has some notable gaps, such as Canada, South Africa, Hong Kong and many South American and Middle Eastern countries.  So, it is gratifying that more and more countries are signing up every year.

Additional countries that have joined the Madrid System recently, according to WIPO, are the OAPI (African Intellectual Property Organization) countries and Zimbabwe.

The OAPI countries include: Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, Comoro Islands, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo.

India and Mexico signed up in 2013 and China in 2012. Cambodia will join in June 2015. It is also rumoured that Canada, one of the notable gaps mentioned above, will soon become party to the Madrid Protocol.

How the Madrid Protocol works in practice

The first step to securing wider protection globally is to register a trademark in your home country as a starting point.

For UK companies or those operating within the EU, the base application will either be a UK or EU trademark.

Then once that UK or EU application is filed, you may extend your registration by using a single application. In that application you designate your desired countries (which must also be party to the Madrid system).

The overall costs will depend on the applicable official government fees of the countries in which you are applying to register, and the number of classes.

Note that the application must use the same classes as the base application, although it is possible to apply in fewer classes than your base application.

The official fees vary a lot from one country to another. To get an indication of the official fees, use our official fee calculator. The legal fees will depend on the number of countries and classes involved.

Conclusion

With more and more companies doing business online, businesses nowadays have to think about international trademark matters from the word go.

Before the Internet became the main route to market for so many companies, global trademark issues would only have arisen for them once companies were substantial enough to move into other countries.

Nowadays, being online means you do business worldwide, so that it is increasingly important to check the trademark registers in other jurisdictions before making a final selection of a name. This is often overlooked by businesses, even substantial ones, with serious consequences. For example,as mentioned in our previous post SkyDrive Set for a Skydive? Microsoft recently had to rebrand to One Drive,

Once a company has done its due diligence in other markets and settled on a name it needs a clear strategy for registering in other markets. And the Madrid System provides a cost-effective way to obtain multiple registrations worldwide. The cost of applying in 3 classes in 10 countries could come to less than it would to register in 2-3 countries that are not party to the Madrid system.

Have you registered your rights in other countries? What was your experience? Please do share your experience with us by leaving a comment below.

 

Aston Martin file suit alleging that former employee copied their designs

Design Infringement Claimed By Aston Martin

Aston Martin file suit alleging that former employee copied their designsOn 27 Friday 2015, Aston Martin filed suit against Galpin, in the Central District of California on the grounds that Galpin’s new prototype design for the Thunderbolt infringed their intellectual property rights. In particular, the claim is that the Thunderbolt draws on similar design features to the Aston Vanquish, such as the wings logo and side vents.

Interestingly, the Thunderbolt was designed by Henrik Fisker, a former Aston employee. During his tenure at Aston, Fisker participated in the design of the famous DB9 and Vantage (the predecessor to the Vanquish).

Aston Martin said, “Fisker’s bad faith intent to free-ride off the tremendous goodwill associated with the famous Aston Martin mark, wings logo, side vent mark, and Vanquish mark could not be more transparent.”

The Court will now determine whether the similarity between the two cars is permissible.

For details of this case see: http://www.bloomberg.com/news/articles/2015-03-30/aston-martin-empire-vodka-philips-intellectual-property

Copyright in a Logo, Informal Contracts, and Innocent Smoothies

Copyright In A Logo, Innocent Smoothies, And Informal Contracts

Copyright in a Logo, Informal Contracts, and Innocent SmoothiesThe trouble with disregarding formalities, like legal agreements, is that even minor disagreements have the propensity to escalate into disputes.

An imperfect recollection of the terms of a contract is unlikely to escalate if the contentious point is answered when you consult the written agreement. However, where there is no concrete agreement in place, it is much more likely that issues turn into major disputes, leading to mess and expense. And sometimes where there is an unsigned document discussed by the parties, the court is likely to regard those terms as binding between them.

This is what happened in a case involving Fresh Trading Company (Innocent) and Deepend who had acquired the rights to the ‘Dude’ logo (the well-known Innocent halo logo) from the designers. The dispute resulted in a hotly contested series of cases around ownership of copyright.

In 2009, Deepend initiated proceedings with OHIM on the grounds that Fresh did not have the right to use the logo and that Deepend did because of the assignment of copyright to them of the Dude logo after the design company that created the brand in 1999 dissolved.

In 2012, OHIM agreed with Deepend. Fresh appealed the decision.

Background

At the time the logo was designed, Innocent was a fledgling company who had started a business relationship with the designers. Their brief was to “develop the ‘visual identity for the product’.” Although the designers never received payment for their design work, a recent High Court decision ruled in favour of Fresh finding that the parties had been acting under the unsigned Heads of Agreement. These not only assigned the full intellectual property of any work approved by Fresh to Fresh, but also had provisions for remuneration for Deepend.

The reason the judge found in favour of Innocent was that the Heads of Agreement included a provision that required Deepend to transfer copyright to Fresh. There was an obligation on Fresh to allot shares to Deepend. However, the judge found that neither of these requirements were expressed as a conditional obligation.

He used a flipped example to make his point, saying that the obligations to allot shares could theoretically arise even if there was no transfer of copyright to Fresh. The judge also made the additional point that at the time Deepend didn’t really deal with the matter of lack of shares and this must have been a result of the perception that a shareholding in Fresh wasn’t of very much value. This therefore negates the assertion that Fresh “refused to pay.”

So when you add this together with the fact that the judge didn’t consider the remuneration in the form of shares to be a precondition for the assignment of copyright clause then it becomes easy to see how he was able to justify his conclusion that on equitable principles, copyright should vest in Fresh. This followed the approach in Griggs where the logo design created was not formally assigned by the designer, however an implied contract was found to have existed nonetheless.

Conclusion

This decision, more than anything, highlights the importance of explicitly stating within a contract that IP rights are conditional on remuneration.

Another important lesson that can be learnt is to explicitly agree on copyright ownership from the outset in order to avoid costly litigation further down the line. This case also underlines the continued availability of remedies in equity.

The fact that the courts are sometimes willing to interpret the details included in an unsigned agreement to achieve a just result should be a warning to ensure the finalisation and signing of your official paperwork.

Before you tweet that picture

Is Posting Photos On Twitter A Breach Of Chef’s IP?

Before you tweet that pictureThis is the first of a series of blogs in which I look at intellectual property issues in different sectors. I will be considering the extent to which IP protections such as patents, copyright, trademarks, designs, and know how protect business models.

This week the spotlight is on the IP issues that arise for chefs, and the visual aspect of their creations, that is, plating. In part 2, I will focus on recipes, and the protection of foods.

Plating

The widespread habit of posting pictures of foods we eat in restaurants on social media (so-called “food porn”) has led to a number of comments by chefs complaining about damage to their intellectual property.

For example, FranceTvInfo reported that French chef Gilles Goujon felt deprived of his “intellectual property” as a result of the practice. And in an article in the Eater in 2012 where several chefs of different origins were interviewed, a US chef expressed the view that photographs of his food without his consent involved the “taking of intellectual property” of the restaurant.

The reasons behind the objections to the practice range from breach of etiquette due to the disruption of the ambiance, to the irritation and annoyance caused to other diners. Mainly the chefs object to the poor quality pictures which they feel create a negative impression of their food creations.

So what is this all about and is there an IP problem?

Before it became so easy for anyone with a smartphone to take a picture of a meal, the way we experienced the food of a restaurant was to visit the place to eat the food. So, this is a problem that digitisation has brought about for restaurants and chefs.

A point to bear in mind is that people commonly refer to their “intellectual property” using the words in a loose sense to mean their ideas and creations. They do not necessarily mean to refer to intellectual property rights in the strict legal sense of the words.

However, let’s see whether there is a legal IP problem.

This involves first considering how the dishes are protected under copyright or design law. If there are IP rights, the next question is whether these rights are infringed by the taking and posting of photos on social media.

Copyright in plated dishes

In the UK, and US there is no protection in copyright for a plated dish because the law requires that a work be “fixed” in a more permanent form to enjoy copyright protection. Other possible forms of protection, such as artistic craftsmanship in the UK are unlikely to apply given that the purpose of a plate of food is for the customer’s consumption.

In Europe where there is no “fixation” requirement, the appearance of a dish could be protected by copyright.  And high-end cuisine plates might well meet another of the legal pre-conditions for copyright protection – namely, that they be original.

However, even if the fixation problem mentioned earlier could be overcome, arguing that there is infringement in taking a photograph would be difficult as there would likely be fair use and fair dealing defences. In other words, you might argue that you took the photos for the purposes of doing a restaurant review.

Design protection

There is no design right protection in the UK for a plate of food because unregistered design rights protect the shape and configuration of products rather than their surface decorations.  Surface decorations would be protected under copyright law, which as mentioned above, does not help in protecting the layout of food on a plate in the UK and US.

In any event, design right is only infringed if someone were to make a product to the design (that is, the recipe). Simply taking a photo of the outcome of that recipe (that is, the designed product) would not be an infringement.

Registered design

Registering the design of a plate of food is possible under EU law.  Different types of design are classified for registration under what is known as the Locarno classification, and foodstuffs are expressly allowed for within Locarno Class 1.

However, unlike the large food manufacturers who protect their IP with registrations, (for example the design of spam slices is protected by EU Design No. 81344-0006), high- end food restaurants do not tend to register designs of their plates of food. Even if they were to do so, it is difficult to see what benefit they would derive from such protection. It would be relatively easy for other restaurants to copy the designs by creating plates incorporating some minor changes. Nor could they use design registration to prevent diners from photographing their dishes.

For more detail on the issues described above, you might like to read the following articles published by the IPKat: Chefs take issue with food porn; and Again on food porn.

Recipes

In part 2 I will look at food recipes. However, for now it’s important to mention that although a recipe may enjoy copyright protection, that protection simply enables the copyright owner to stop others making  physical copies of the recipe. Copyright law does not prevent others from creating a dish by using the recipe. So, copyright in their recipes would not put chefs in a position to stop diners photographing their dishes.

Conclusion

Therefore, the best policy for restaurants who object to diners taking photos, is to do as one chef in the north of France did according to the BBC. That is, to introduce a “no camera” provision on their menus.  After all, in many other industries such as kitchen design, shops are known to ask customers to refrain from taking photos of their displays. Restaurants could supply photos of their dishes for diners to post on social media. Then at least the quality objection would be dealt with.

In part 2 we will look at food recipes, and foods, and the extent to which IP rights such as trademarks, patents and know how, or industry norms come into play.

MBA Courses and business books ignore IP to a shocking extent

Intellectual Property Rights – Why Ignoring Them Could Be Disastrous For UK Businesses

Good news for UK business this month. The UK is ranked as the most entrepreneurial country in Europe and the world’s second most innovative country.

The Global Entrepreneurship Index measures start-up progress in the world. Only the USA, Canada and Australia came above the UK. (See the Guardian report).

For innovation we did even better, coming second in the Global Innovation Index 2014.

This is all well and good but as you may have guessed there is a ‘but’ coming.

Intellectual property (IP) law will be relevant to every one of these businesses.  Yet MBA courses, books for start-ups, and entrepreneurship groups neglect IP law to a shocking extent.

Start-up publications and MBA courses ignore IP

A survey of more than 20 books released between 2006 and 2013 that give business advice to fledgling companies reveals that only eight mention IP. And of those, a mere handful explore the subject beyond a brief summary.

It’s a similar story when you look at MBA courses. The one run at London Business School, is ranked number four in the world according to the Financial Times.  But it does not mention IP in its core modules.

Before looking at why IP is dealt with so cursorily, let’s see how many start-ups we are talking about. Currently, start-ups are increasing at a rate of 7% year on year; a staggering 526,446 new companies registered with Companies House in 2013. It is likely that at least 50% of these (most likely more) will not have considered IP at all before registration.

Other IP lawyers are similarly surprised

I am not alone in finding this surprising. Neil J Wilkof who contributes to blogs such as IPKat and IP finance, stresses this point frequently throughout his writings:

It remains my most vexing professional challenge. The “it” is how to integrate IP/IC into management education. The vexation comes from the seeming paradox that while intellectual property and intellectual capital are routinely described as cornerstones of innovation, if not modern business itself, their systematic presence in MBA curricula remains sporadic at best.”

The world has changed

My theory for this state of affairs is that society hasn’t caught up quickly enough with the dramatically changed role of IP law in the digital age. The fact is that the Internet is creating new rules for many industries, and also for IP law.

In an industrial society IP was a more esoteric subject; one that was of marginal relevance to small businesses. However, in the digital world IP occupies a central role. There are few areas of commerce that are not impacted by IP.

As I explained in my blog on rebranding, the risk of encroaching on other people’s rights is far greater nowadays. A simple search on the Internet may instantly reveal whether a name or image you are using belongs to someone else. In the overcrowded world of businesses, it becomes more important to register trademarks and other IP to protect your business against competitors.

Myths and Misinformation about IP

There is a lot of misinformation around IP law. These myths can be dangerous.

A common misconception is that IP is all about patents. People justify ignoring IP because they don’t have “£50,000 plus to spend on patenting”.  While it’s true that securing a patent may be optional or may not be worth the investment, at other times it may be the essential protection without which a business should not operate.

There are other IP rights apart from patents, such as copyright and trademarks. This could be the critical IP on which a particular business needs to focus.

The right action for one business will differ enormously from another as so much depends on the context, the business concept and the vision behind the business.

Some business advisers acknowledge the importance of IP for a business producing physical products, or to a business that is already successful and established, or to businesses operating in the creative sector.  However, IP should not be ignored by anyone planning a new project.

Many business advisers don’t understand IP

It is concerning that even those who should know better, such as investors and business advisers, still don’t really understand IP. Yet some will advise others about IP based on their own misconceptions. For example, they make statements such as “IP is relevant to certain ‘IP rich’ businesses”.

Whether due to wrong assumptions about IP involving costly registrations, or ideas as to the costliness of IP advice, IP is often not adequately considered when new ideas are implemented.

A serious error is the assumption that IP is all about the protection of what you have. What is less well appreciated is the need to take account of other people’s IP when making choices of names and designs. Also, if you ignore the question of whether or not you will secure necessary rights when you commission someone else to create something like a website for you, then you store up problems for the business down the line.

A frequently made mistake is around the choice of names. That is a whole subject in its own right. For now what is noteworthy is that there is no point in designing a brand around a name that you may not own, or which is otherwise inadequate from an IP perspective. Too often designers who create brands for their clients make fundamental errors that lay them open to negligence claims if their clients seek legal advice from an IP lawyer.

Undoubtedly, for some people IP is just too inconvenient to take on board.  We live in an age when it is so easy to set up a new business by going online and getting the information and templates you need. Legal advice is seen as a nuisance and unnecessary expense. Copyright and trademark law are thought of as simply too much of a grey area and too complicated. And that is precisely why we need more education on IP in books, courses and entrepreneurship groups.

 

What does copyright cover?

What Does Copyright Cover?

What does copyright cover?A Christmas Carol by Charles Dickens was an immediate success when it was first published selling 6,000 copies. Yet, as mentioned in my blog Copyright Protection: How to manage copyright in an unregulated space Dickens made little money from it due to piracy. In Victorian times copyright laws only protected a work inside the country in which it was first produced and created. Therefore after ‘A Christmas Carol’ was published, copies started popping up abroad in America, produced by publishing houses very cheaply. They gave Dickens absolutely no financial benefit.

Copyright is an important right which underpins the economic benefits in many industries apart from publishing. So, it’s worth looking into what copyright covers.

Copyright protects a variety of ‘works’ (names and taglines are not protected by copyright but by trademarks), and the types of copyright works which a business might typically use include:

  • books, brochures, letters and contracts
  • music and sound recordings
  • films and videos
  • drawings, illustrations and photographs
  • logos and packaging
  • computer programs, databases and games.

A work does not need to be of a high quality to enjoy copyright protection. If I began to write a blog post and scribbled a page of notes, I would own the copyright in the notes even if the notes were in serious need of editing.Copyright protection arises automatically, meaning that, unlike patents, trademarks and designs, in the UK it is not necessary to register in order to secure copyright ownership. However, don’t let this lull you into a false sense of security.

One of the many myths about copyright, is that when you pay for a work, you own the copyright. This is not true. The contract terms commissioning the work govern whether you will have copyright. If there is no written contract, copyright will automatically arise in favour of the creator rather than in yours. The person paying for the work just has a licence to use it (and this licence is a lot narrower than the rights copyright ownership would give).

Default rules for copyright ownership

The question of copyright ownership depends in part on who creates it unless there is a specific written legal agreement discussing the matter.

One rule states that the creator of a work automatically becomes the ‘first owner’ of the copyright in the work, except where it is created by an employee. Even if there is no written agreement about copyright with an employee, under English law it is the employer who is the first owner of any work created by the employee in the ‘course of employment’.

An ‘employee’ means a member of staff on your payroll. Freelancers or self-employed contractors, whether permanent or occasional, are not your employees when it comes to copyright, so you would not own copyright in their work.

If you ask another business to produce work for you, be they a sole trader, partnership, company or educational establishment, you will only own copyright in that work if the written agreement between you says so.

This terms should be agreed before you commit to using someone for your project. Note that, in contract law, the time that you are legally bound to use someone’s services may be much earlier than you realise. If you are no longer free to walk away, then unless the other party is willing to give you copyright, you have no right to demand it. The moral is not to leave discussions about ownership of copyright till too late. Otherwise, you will not be entitled to claim copyright.

In practice, if you are having an important product developed, like a piece of software for your business, it’s crucial to address the rights in it before you are committed to using that developer. The easy-going willingness of IT developers to assign rights to you could well turn into resistance when it comes to actually signing on the dotted line. So, get it in writing at the outset rather than leaving it till the end of the project.

Bear in mind that if you don’t take steps to transfer ownership in the early days, when the rights have little value, once they do acquire value, other people may be unlikely to readily agree to transfer the rights over to you without further payment.

Rights of the copyright owner

Copyright is a property right, like many other IP rights. So, it can be sold, bought, given away or left to someone in a will. The copyright owner is the one entitled to ‘exploit’ the work, such as by copying parts of it and selling copies to the public.The rights exclusively enjoyed by a copyright owner include renting or licensing the work to others, broadcasting it, transmitting it over the Internet, adapting it into other languages, and so on.

As always, it’s easier to negotiate rights before you’ve engaged someone’s services than afterwards. The best policy is to write your requirements into the agreement when you commission a work such as a website. If the agreement doesn’t give you a full licence to use the work for all your intended purposes, you may later be charged a further fee for permissions to use it. For example, if you are having a professional photograph taken, agree with the photographer what uses you will be able to make of the photo in future. Is it just for your website and social networking sites? Or could you also use the photo if a journalist asked for your image to accompany a magazine article?

Copying a substantial part of a work

Many people mistakenly assume that you can copy someone’s work as long as you credit them as the author. If you take ‘a substantial part’ of a work, you will be infringing copyright in it. This is a trap for the unwary as, in some cases, even a very small part of a work may count as a substantial part of it. And it doesn’t make it acceptable if you acknowledge the author.

Note that you may sometimes copy a large proportion of a work without infringing copyright, because it may not be a substantial part of the text in question. This would apply if the material was fairly generic. On the other hand, copying a small fraction of the whole work can sometimes be enough to infringe copyright.

In one case, a judge had to decide whether a 20-second recording of a piece of music known as Colonel Bogey (the whole song lasted four minutes) infringed copyright. In finding that it did, he said:

This reproduction is clearly a substantial part of Colonel Bogey … Anyone hearing it would know that it was the march called Colonel Bogey, and though it may be that it was not very prolonged in its reproduction, it is clearly, in my view, a substantial, a vital, and an essential part which is there reproduced.

Unfortunately, there is no rule of thumb for determining what uses you may make of a copyright work. So take care and, if necessary, seek legal advice before borrowing from a copyright work, especially if it’s used for a commercial purpose, such as in a book you’re writing.

If you don’t have permission, and you don’t have a defence under the ‘fair dealing’ exceptions, you would infringe the owner’s copyright.

The fair dealing defence is available if you are using an image for the purposes of review and criticism (such as to report an event in the news), or if it’s purely for non-commercial research or private study. In limited circumstances, you may also be able to use work for parody or pastiche. Similarly, there is no copyright infringement if copyright work is incidentally included in an artistic work, sound recording, film or broadcast (so-called ‘passing shot’ use). However, what amounts to  incidental use may be surprising. For example, if music is included in a work (e.g. playing on a radio included in a scene in a film) its inclusion cannot be said to be incidental.

Conclusion

It was not until 50 years after the publication of ‘A Christmas Carol’, that the Berne Convention was created to give authors copyright protection over their work abroad as well as in the country in which the work was created

Copyright covers so many aspects of business life that it is important to have an audit to understand where copyright ownership lies in existing works.That way you can decide which works you would like to own, and what steps you need to take. Otherwise, a dispute or other problems could arise which costs ten times more than if you looked into the matter in advance and sorted it all out.

Find out more about copyright ownership, contracts, and infringement on our website.

Protection of television formats - The Great British Bake Off

Protection Of Television Formats – The Great British Bake Off

Protection of television formats - The Great British Bake OffThe Great British Bake Off isn’t just clever when it comes to cakes. By protecting its IP, it has been able to secure a fortune in licensing.

The other day I met someone who told me that she had been advised that it is not possible “to have copyright in an idea”. As a result, she had given up trying to turn her idea for a programme into reality as she would not be able to secure legal protection over it.

What is protectable

It strikes me that two separate issues are being mixed up here: protection of an idea and protection of a concept that turns into something tangible.

As a general rule ideas cannot be protected other than through the law of confidentiality. So, if a party to whom you wish to disclose an idea is unwilling to sign a confidentiality agreement, (or NDA as it’s often called), there will be little you can do if that party runs off with your idea.

In contrast, once a concept is turned into something tangible like a television programme it is possible to obtain powerful protection for it, in the same way as businesses can.

The intellectual property that affords powerful protection

Protection relies first of all on having a distinctive name. Programmes such as Hotel Insprector are poorly named, as they are too descriptive. It is not possible to have trade mark rights over such names. Even if it had a trade marked name, it would be impossible to stop others putting on separate shows using the concept of an expert visiting and suggesting improvements to failing businesses. So, the Hotel Inspector has led to others running with similar concepts and setting up programmes such as Restaurant Inspector and Business Inspector.

The same goes for business formats such as Air B&B; you can’t stop others copying the concept and setting up competing businesses.  But, if you have a distinctive name, at least you will be memorable and can stop competitors using the same or even similar names.

How the Great British Bake Off is protected

An example of a television programme that has protected its intellectual property is the The Great British Bake Off. The show’s producers, Love Productions, protected their IP and have reaped the rewards through a lucrative licensing deal worth millions of pounds.

This was the subject of a recent Guardian article, Great British Bake Off: when iced buns meet intellectual property.

Interestingly, as soon as the programme was launched in 2010, the company filed its trade mark covering a number of classes. Some of them were poorly chosen, but this is unsurprising given that the company did its own trade marking.

Once they were more confident of the progamme’s future success they appointed representatives to file in 8 classes to protect spin offs and merchandise. For example, the company registered in class 9 to protect computer games and other software, in class 16 for various stationery and paper products and in class 28 for toys.

To support its licensing deals, these registrations would have been internationalised in order to extend protection to other countries such as the USA.

Other intellectual property

As well as the Bake Off brand, the company is likely to be licensing its know-how for creating the show and making it a success. Licensees would be given the benefit of its experience in setting tasks and judging completion of the contestants’ tasks. The licensing deal would be likely to include copyright in the programme’s theme tune and its list of cooking tasks.The more intellectual property rights that can be packaged up together, the stronger the protection for the owners of the licence.

In conclusion, if you want to monetise your successful concepts, be they business formats such as Zumba, or television formats such as the Great British Bake Off, it is essential to put in place the right protections. That way you have the full range intellectual property protection to underpin your licensing deals.