Tag Archives: Copyright and Databases

Blogging Without Infringing

In my previous post, I looked at the issue of protecting your blog content and identity. This blog briefly looks at some of the issues concerning the inclusion of other people’s materials in your content.

As I mentioned in the last blog, as a blogger you need to look in both directions when it comes to intellectual property (“IP”). In particular, you should ensure that what appears on your blog – be it text, photos, or comments – does not infringe the IP rights of someone else.

Before you launch your blog, with your new blog identity, you should carry out trade mark searches to make sure your name, tagline and logo don’t infringe the registered trade marks of another person or company.

Public domain and copyright

Moreover, make sure the contents of your blog presence don’t infringe someone else’s copyright. Content is not necessarily in the public domain just because it is freely available to access on the Internet. Unless you have created the content yourself – for example, taken that photograph yourself – you cannot assume that it is not protected by copyright. In fact, you should usually assume the opposite.

Most content is protected by copyright and that copyright will only expire 70 years after the death of the author. While it’s true that there are exceptions which permit some use of protected material – fair dealing in the UK or fair use in the United States, these are limited in scope, as you will see below.

Use of stock images

These days, with search engines like Google, there are thousands of images online for bloggers to use in their blogs. However, make sure your use won’t infringe copyright by checking the terms of the sites you’re using. Do the licence terms cover your blog? For example, if you may only make non commercial use, and do have promotions or otherwise make your blog pay, then don’t download from a site that only allows non commercial use as doing so may well amount to unauthorised reproduction contrary to copyright law.

Fair dealing of copyright material

What happens if, as a blogger, I want to use material such as photo from a news event, or if I want to quote from an article, or book or even if I want to parody such material?

Well, assuming that the content you want to use is protected by copyright (which is likely), the general position, at least in the UK, is that the reproduction of a substantial part of a work amounts to copyright infringement. What constitutes a “substantial part” is a complex and large topic, and will differ in each case as everything depends on the particular facts. So, let’s not get bogged down here with the somewhat tricky issue of what amounts to a “substantial part”, and instead look at what the law permits by way of certain limited exceptions which constitute fair dealing in the UK.

Although there are a number of fair dealing exceptions, only a few are likely to be relevant to bloggers. These include (a) criticism and review, parody and quotation, (b) reporting of current events, and, (c) incidental use (which is not strictly fair dealing but convenient to mention here).

If you reproduce part of a copyright work – let’s say an online article – in order to criticise or review that work or another work, your use may qualify as fair dealing under the law in the UK. This same law also protects you when you feature a quotation of a work. However, it’s important to note that you may not freely reproduce a work if you want your use to be “fair”. So, reproducing an entire article on your blog is unlikely to be fair dealing. And the exception applies only to published works. Moreover, you must normally also include a sufficient acknowledgement of the original work.

The law in the UK also provides for fair dealing of third-party copyrighted material for the purpose of reporting of current events. However, photographs are excluded from this exception and so you cannot download and reproduce a photograph for the purpose of news reporting on your blog. While it might seem obvious, the events must be “current” and you must normally include a sufficient acknowledgement.

A blogger may also make incidental use of another’s copyright work without infringing copyright in that work. However, the law in the UK expressly excludes the deliberate inclusion of another’s music or lyrics. For example, you cannot add a song in the background of a video clip and claim that your use was incidental use if the song owner objects: it is not incidental use in this example because the music was included deliberately.

Creative commons licences

The last decade has seen the rise of open access forms of disseminating works known as Creative Commons (or (“CC”) licences. These provide for standard-form licences allowing members of the public to reuse a work in particular ways. Creative commons have sought to develop a suite of licences for many types of works.

The CC licences offers copyright owners a suite or menu of terms for using content. Some of these only allow reuse in an unmodified form. Some only allow reuse with attribution. Others only allow reuse for non-commercial purposes.

While CC licences have become extremely popular in recent years, the most common kind is the “attribution, non-commercial, non-derivative works” licence which only allows the user to reproduce, distribute, or play the work in a non-modified form, only for non-commercial purposes and with attribution of authorship. As a consequence, CC licences are generally better suited to users who do not seek remuneration from copyright.

Using other’s logos or trade marks

A question that often arises is to what extent people may include the brand logos or trade marks of others in blog content. In terms of logos – say, logos of famous companies such as Virgin, Barclays, or Coca Cola – the best advice is: “don’t” because most of brand logos are usually protected by both trade mark registration, and copyright. This means that any reproduction by you on your blog of another’s brand logo is potentially copyright infringement.

In contrast, the mere reference in your blog to a word trade mark – such as “BARCLAYS BANK” or “GAP” – is unlikely to amount to trade mark infringement. This is because, generally speaking, names do not enjoy copyright protection. Also, trade mark infringement is based on consumer confusion and so a mere reference to BARCLAYS BANK in your blog is not necessarily going to confuse your readers. That said, if your use is such that the relevant consumer might be led to believe that your blog is somehow connected to or supported by Barclays Bank, your use could potentially amount to trade mark infringement. So, when in doubt stick to merely referring to their brand names and avoid using other’s trade marks in such a way as to cause consumer confusion.

So, now that you have some basic insights into the IP laws, happy blogging!

Blogs and Intellectual Property Rights – Don’t Just Blog It, Protect It

These days, any of us can be a blogger. All you need is somewhere to post your content, and an interesting angle on life – be it sports, politics, travel, food, music, you name it – you can blog your perspective on it. What’s more, you can attract a worldwide audience of thousands or even millions.

However, as well as a web presence and a flair for writing, you should also develop an awareness of intellectual property (“IP” for short) and its impact on your blogging activities.

IP is essentially about protecting our intellectual creations, and that includes of course our blog entries. But whatever A has protected, B may infringe. So, when we consider blogging and IP, you need to look in both directions: how can you, as a blogger, protect your IP and also, how can you ensure that your blog does not infringe the IP of others? Here today we look at “A” – what you have protected. In next week’s blog, we look at “B” – avoiding infringing what someone else has created or protected.

While IP embraces a bundle of different rights, in this blog we are going to briefly look at the two most important rights for bloggers: trade marks and copyright.

It really is amazing that some bloggers enjoy a huge reputation online and yet they have never protected their blog identity by means of trade mark registration. For example, it seems that Turner Barr – about whom I say a little below – of “Around the World in 80 Jobs” fame, did not file a trade mark application until after he had settled what is probably one of the most high-profile IP blog disputes to date. It’s an unfortunate fact of life that many people take IP for granted until some issue crops up, and then they really value their IP and wish they had better protected it at the outset.

Blogs Are Global – Trade Marks Are National

Blogs, being online, are global in nature. They don’t respect national borders which can make trade mark protection, which is generally national in nature, potentially complex. However, it’s advisable to file to register your blog name and blog identity as trade marks at least in your home country. In trade mark law there is something known as the “priority filing system” which enables you to apply to register your trade mark elsewhere in the world within 6 months of your initial home filing and maintain the original filing date.

Let’s turn to copyright. Copyright arises automatically as soon as your writings, photos, music or other creations are fixed in a recorded form. For example, as soon as you save your blog entry on your computer, it is protected by copyright as a literary work. Similarly, as soon as you take a photograph on your mobile phone, it too can be protected as an artistic work.

As for your blog content – such as your blog entries, photographs, music etc– it’s advisable to always keep a dated record (for example, in your computer files) in case you should ever need to prove that you created the work, and on what date you did so.

It’s a good idea too to use the copyright symbol – © – alongside your creations, such as your photographs. Use of the © symbol is generally not obligatory but it gives notice to the world that the material is protected by copyright and Courts will often proceed on the assumption that it is protected by copyright.

Although Internet Service Providers (ISPs) are not liable if another person takes your blog material and posts it elsewhere online, you still have options. For example, if the infringer refuses to take-down the lifted material, you may be able to achieve that result by filing a take-down notice with the website provider. Social media companies such as Facebook have well-established take-down procedures by which they will remove infringing content on proof that it infringes your IP rights, including your trade marks and copyright.

Turner Barr

So what about Turner Barr mentioned earlier? Turner created a highly-successful blog called “Around the World in 80 Jobs” which recounted his experiences as a young millenial in obtaining sometimes strange and wonderful jobs around the globe but which also provided information and advice to young people about gaining employment. In 2013, Swiss employment company Adecco produced their own version of his blog, and they filed trade mark applications in various countries for “Around the World in 80 Jobs”. Happily, all’s well that end’s well. After a sustained campaign on social media, Adecco agreed to drop its version of “Around the World in 80 Jobs”, and withdrew its trade mark filings.

If this pressure from social media hadn’t happened, then it would not have been at all straight-forward for Turner. The right approach is to always file to protect your blog presence as a trade mark before disputes arise such as Turner’s with Adecco.

So, in conclusion, if you blog you have IP. Make sure both to protect your blog IP, and avoid infringing the IP of others. In the next video, we will have a look at some of the issues surrounding use of the material of other people in your blog and how to avoid common mistakes.

How Agencies Can Protect Their Clients When Branding And New Identity Creation

While every agency understands how to use the creative process to create a brand name, few understand the legal implications of choosing one name over another.

Turning an idea into a business involves creating intangible elements like names. As these are governed by the law of intellectual property it means you are creating intellectual property.

Specifically, trade mark law protects names, and so one implication is that you need to choose a name that meets the requirements of the law.

To fully understand the impact of getting this right on both the agency and client side, it is worth reflecting on what value a brand brings to a business.

Value of a brand

A brand name is of the most valuable assets a business will have.

According to Forbes, the most valuable brand name in the world in 2017 was APPLE. It was worth $170 billion. GOOGLE takes second place, at $101 billion and MICROSOFT in third place, at $87 billion. Three words – APPLE, GOOGLE, MICROSOFT together are worth about $360 billion.

Just think about that for a moment. The world’s top three brands are worth many times the average country’s entire GDP (or annual economic output). That’s the value of a good brand name.

Based on the value of the world’s biggest brands, a good brand name needs to be:easy to pronounce and spell

• one that works internationally

• one that copes with business expansion or change of direction.

• one that is legally available

The final point is most important here.

The trade mark registers are cluttered, and the best .com domains are often already taken. Therefore, choosing a name invariably involves doing some due diligence.

An agency tasked with creating a name should really put forward a shortlist of 3-6 names for full legal clearance if the client is to stand a chance of finding one name that it may use.

Getting this wrong may not just mean the trade mark application is thrown out. The client may find itself on the wrong end of an enforcement action by another business whose trade mark is being infringed.

A name that infringes on someone else’s mark leaves the client with little choice but to rebrand. Some clients might sue an agency that created the identity for them, or require a free rebrand. Quite apart from the reputational damage for the agency, a name that the client can’t use would prove as problematic for the agency as it would for the client.

Not only is it worth getting this right to protect your agency, it also offers you an opportunity to deliver certainty and differentiation from other agencies who are less aware of the consequences.

An agency’s responsibility when creating a brand identity

When a client engages the services of a branding agency to create an identity, that agency is an adviser, and as such, is expected to understand the surrounding law.

While the agency might tell a client that certain actions that are required to clear a name for use should be undertaken by lawyers, it’s not possible to completely absolve itself of responsibility simply because some of the work involved in clearing a name is done by lawyers.

There are two levels of checks for brand names that should be undertaken:

1) Basic preliminary checks – often these do not require a lawyer and can be done through simple searches

2) Full clearance searching – in most cases done by lawyers

I’m of the view that while lawyers are always best placed to undertake full clearance and this is clearly the responsibility of the client, basic preliminary checks can and should be performed by the agency as part of the process of developing names.

This seems not to be the prevailing view.

One designer recently said to me that she does not believe she is responsible if a client of hers has problems with a name she selected for the client and the client decided not to register the name as a trade mark. According to this designer, if the client chooses not to trade mark the name then it’s the client’s fault if it later transpires there are problems with the name.

Quite apart from the fact that registering a name as a trade mark in no way helps if the name is not available to use, I have deep problems with this view. Protecting a name isn’t just about registering it as a trade mark. It’s more about checking that the name may be safely claimed.

If an agency is entrusted with creating a new brand identity, it’s reasonable for the client to expect that you will offer up names they have a fighting chance of using. This means doing some of the trade mark searches yourself, albeit leaving the full clearance searching to the lawyers.

While specialist full clearance searches might be left to the client to arrange with its own lawyers, any business choosing a new name for its clients does have a responsibility to ensure the name is legally available.

Understanding the legal requirements is essential if the selected name is to stand up to legal scrutiny. There are a number of searches that agencies should and could perform on a name – beyond a simple Google or .com search, which is often all that is done. If you fail to provide names which don’t even stand up to the most basic legal scrutiny, what is the client paying for when it pays to have a name created?

And, importantly, how does that reflect on your agency if a problem later arises?

The client’s responsibility when protecting their brand identity

Many clients don’t ask lawyers to do full clearance searches before applying for trade mark protection simply because they don’t realise this is an essential step in the process, rather than an optional step.

As clients frequently choose to not do further searches on names, (possibly because they have spent all their available budget on the brand identity work), it’s even more important for branding agencies to do “good enough” checks of names before proposing them to clients. Otherwise, what’s the point of branding a name the client can’t own? It would be building their business on a foundation of sand.

On one occasion when we were provided with a shortlist of six names by a designer, we found that the most basic search of the trade mark registers knocked out four of the names immediately. So, effectively, the client only had two names to choose from, and they were not the first choices on the list.

I hate to think what might have happened if the client hadn’t asked us to do clearance searches on the names. It might have gone with one of the names that were infringing with all the associated problems and risks.

This is why I would urge agencies to learn how to do some basic checks of the trade mark registers whenever they are creating a new identity for their clients. Indeed, a good agency should also perform its own checks on a name the client proposes using, even if the agency didn’t choose the name.

Again, it’s important to remember you’re not protected simply by virtue of registering a trade mark.

Taking steps to protect intellectual property

The identity of any well-known brand comprises a variety of elements. Trade mark law encompasses the name, and also any taglines, slogans, logos, designs, product shapes, sounds, smells, colours, and other features that distinguish a product or service from its competitors.

Bear in mind that whenever you turn an idea into a product or service you’re also creating intellectual property assets. Copyright law is highly relevant in brand creation. Therefore, copyright and other intellectual property issues need to be top of mind in the early stages of identity creation.

However, the primary identity of any successful brand is inevitably in its name. Protecting the future value of a business involves protecting the name, and also taking account of IP as a whole.

An agency should create internal processes to ensure names are properly checked out before any short list of names is offered to the client.

There are three steps that any business should take to protect its intellectual property if it is to build value, and avoid disasters such as the need to change its identity.

Imagine having to rebrand due to problems with a name or copyright work. While this might seem unimaginable for the likes of the world’s top brands, problems around names and IP can affect even them.

For example, Microsoft had to rebrand after being ordered to do so by a UK court for infringing on a trade mark owned by British Sky Broadcasting Group (BSkyB).

”Changing the name of a product as loved as SkyDrive wasn’t easy,” Microsoft’s Ryan Gavin reportedly told a journalist.

The value and safety of your own and your client’s intellectual property is more important than ever before. Do it right and the intangible assets you create could be worth far more than the cost of producing them. Do it wrong and you could miss vital opportunities, have your true value stolen or find yourself on the wrong side of an intellectual property dispute.

To find out how to protect your own agency’s intellectual property and that of your clients register your interest to learn about IP Fundamentals including the Azrights Naming course.

Register Your Interest Here

Personality Images And IP

In the lead up to the Christmas and new year season, most of us are accustomed to seeing television advertisements featuring well-known actors and personalities endorsing a range of luxury products such as perfumes and watches. While it is obvious that a personality like Sean Connery will have been handsomely rewarded for endorsing a famous brand of watch, such endorsements raise the interesting question as to what extent a person, famous or otherwise, can control the use of his or her image or likeness in the sale of products or services. Can, for example, Sean Connery stop me from selling 2018 calendars bearing his image on the front cover?

At least in the UK there is as yet no recognised legal right of publicity or personality. This means that a person has no specific legal right in the UK to control the unauthorised use of their image or appearance.

Celebrities

That said, that does not mean that persons such as celebrities are not without some legal remedies. It is quite common these days for famous persons such as actors and sports stars to register their name or signature as a trade mark. So, for example, both David Beckham and Victoria Beckham have registered the names DAVID BECKHAM and VICTORIA BECKHAM respectively as EUTMs in respect of a broad range of products and services including personal care products, electronic goods, jewellery, watches, clothing and fashion accessories. Similarly the popstar Rihanna has obtained an EUTM registration of the word RIHANNA for various clothing and fashion products. This means that the unauthorised use in trade of their name in relation to such products is likely to be held to infringe their trade mark registrations.

Where celebrities have faced greater challenges is in registering their image as a trade mark. This is because it has usually been held by the trade marks office that an image or likeness of a famous person will not be perceived by the public as being a trade mark. As a consequence, famous persons have usually struggled to register their image or likeness as trade marks.

Does this mean that I am at liberty to sell t-shirts or calendars bearing the image of a famous person? The answer is: not necessarily. Even if the famous person in question does not have a registered trade mark of their image or likeness, that person could still successfully challenge use by me of their image on the basis of the common law remedy of passing-off.

Passing-off

Passing-off is a legal remedy that protects the goodwill which has been built up by a person in their business, from being wrongfully appropriated by another person. To succeed, a claimant must typically prove three elements: a recognised goodwill in the UK, a misrepresentation by the defendant, and damage caused to the claimant’s goodwill.

For present purposes, the key element to be proved by the famous person or celebrity is misrepresentation: will the public be misled into believing that my 2018 calendar bearing the image of, say, Sean Connery on its cover has been approved by or has some connection with that former Bond star?

Courts’ approach

Generally speaking, the courts in the UK have been reluctant to conclude that the public has been misled into buying merchandise bearing a celebrity image. Instead, the starting position of the courts is to say that merely placing the image or likeness of a person, famous or otherwise, on, say, a garment, is not in and of itself passing-off.

In order to succeed, the celebrity must prove that the public has somehow been deceived into thinking that he or she has approved or endorsed the product and that that belief has played a part in the purchasing decision. This is usually not an easy hurdle to overcome because the public are well used to seeing celebrity images on all kinds of products – such as t-shirts, posters, stickers – without seriously believing that the celebrity is somehow behind that product.

However, a celebrity can still succeed if the particular facts support the claim that the public would indeed buy the product due to a mistaken belief. A few years ago, Rihanna succeeded in a passing-off action against the owners of the TOP SHOP retail chain which had been selling t-shirts in their stores bearing her image. Although the High Court pointed out that merely placing a celebrity image on an item of clothing is not automatically passing-off, the judge accepted the claimant’s evidence that the pop singer had previously had a publicised commercial arrangement with TOP SHOP such that at least some shoppers would likely to have mistakenly believed that Rihanna had some association or connection with the t-shirts bearing her image.

What then are the steps I can take to avoid or at least reduce the risk that I might be successfully sued for using a celebrity image on the cover of my ficticious 2018 calendar?

Managing risks

If you propose to use a celebrity name or image on a product line, you should check whether the celebrity has any trade mark registrations. If, for example, they have protected their name, there is a real risk that placing their name on your product could infringe such trade mark registration, assuming it covers the same or similar goods.

Even without trade mark registrations, we have seen that a person can successfully challenge unauthorised use of their image by means of a passing-off claim. Using terms like “official” or “unauthorised” will greatly increase the risk of confusing the public and so should be avoided.

Moreover, if the celebrity in question already has a reputation for promoting or endorsing products or services, the courts are more likely to conclude that the public may be misled into thinking that there is some connection with your products.

However, the risk of a successful challenge is likely to be greatly reduced if the person is no longer alive.

While we strongly recommend that entrepreneurs always seek express permission before commercialising the image of a famous person or celebrity, by taking the steps outlined here, the risk of a successful challenge from a celebrity or personality may be significantly reduced.

Written by Shireen Smith and Kieran Heneghan.

Copyright – Who’s Hiding Under Your Bed? Hairy Monsters And Non-Literal Copying

You may be one of the eight million or so viewers who have already seen the John Lewis 2017 Christmas television advertisement – Moz the Monster, featuring a lovable monster who hides under a child’s bed. If so, has it perhaps reminded you of any other lovable monster?

Having viewed the TV advert, the former children’s laureate, Chris Riddell, clearly felt that it copied his 1986 children’s book – Mr Underbed – featuring a big blue hairy monster who rocks the bed and snores loudly. A few days after the launch of the TV advert, Mr Riddell tweeted: “John Lewis helps themselves to my picture book”.

John Lewis has strongly denied any allegation of plagiarism, stating that the story of a big hairy monster under the bed, which keeps a child from sleeping, is a universal tale which has been told many times over the years. The department store went on to say: “Ours is a Christmas story of friendship and fun between Joe and Moz the Monster, in which Joe receives a nightlight which helps him get a good night’s sleep”, adding, “The main thrust of our story is utterly different”.

Non-literal copying

Although there is no indication that Chris Riddell plans to take formal legal action, his tweet highlights the longstanding tricky area in copyright as to non-literal copying, that is, copying of the ideas of an earlier work rather than the literal words or content.

In contrast to entrepreneurial works – such as films and sound recordings – where, to infringe, the claimant must show copying of a substantial part of the actual film or recording, copyright in authorial works – such as literary, dramatic, musical, and artistic works – provides wider protection, going beyond the actual content itself.

For example, the author of a novel or a play is entitled in principle to object to the copying of the storyline, plot, incidents, and themes, although it may be more difficult to protect mere copying of the identity of a character. The composer of a musical work may object to the copying of melody or orchestration.

That said, at least in the realm of regular literary, dramatic, musical, and artistic works such as books, the UK courts have often struggled to come up with concrete rules for determining the frontier between acceptable and unacceptable copying. As a result, it is somewhat difficult to predict the outcome of legal actions concerning non-literal copying.

Ideas-expression dichotomy

The most common approach of the UK courts is to look to the so-called ideas-expression dichotomy which provides that, generally speaking, the law protects against copying of the expression of ideas contained in a work but not against copying of the ideas themselves. Under this approach, it is not an infringement to take the ideas or concepts behind, say, a book or song and to incorporate them into a later work. The tricky part is deciding what exactly is meant by the word “ideas” in this context.

The fact is that the law does protect against copying of mere “ideas” provided that those “ideas” are sufficiently detailed and involve sufficient intellectual creativity to warrant copyright protection. At the same time, the law does not protect ideas which are commonplace or which are essentially mere facts. Ultimately, while the courts in the UK are keen to prevent obvious plagiarism, they do not want to give a claimant a monopoly of knowledge or historical research.

In the well-known Da Vinci Code novel case in 2006, the Courts rejected a claim of copyright infringement brought by the authors of “The Holy Blood & The Holy Grail” who claimed that Dan Brown’s world-wide best-seller, the Da Vinci Code, infringed their book. In particular, they argued that Dan Brown’s page-turner had taken a substantial part of the “manner” in which they had expressed their ideas. The Courts rejected this argument, stating that while Dan Brown had expressly drawn on the ideas in their book, such use was merely to provide background material. In this case, the Courts were not prepared to find that the historical research and “facts” about the alleged real meaning of the “Holy Grail” enjoyed copyright protection.

What, then, might be the outcome if Chris Riddell were to claim that the John Lewis “Moz the Monster” TV advert was infringing copyright in his Mr Underbed book? Anyone familiar with the book Mr Underbed and who has watched the TV advert, may notice that both do indeed feature a large hairy, albeit friendly, monster. Visually speaking, both monsters share a large red nose and protruding triangluar-shaped teeth from both ends of its mouth. In terms of scenario, both monsters hide under their respective child’s bed, thus keeping the child from sleeping.

Conclusion

However, it would seem that the scenario of a monster hiding under a human’s bed is commonplace in story-telling and in literature. A friendly monster is likely to have features such as being hairy, having a big nose and protruding teeth. Moreover, young children are notoriously reluctant to go to sleep at night, especially if there is mention of a creature lurking in the dark.

On this basis, although for at least some viewers – especially perhaps those with young children themselves – the John Lewis TV advert might have brought Mr Underbed to mind, it seems unlikely that this resemblance would be found to go beyond the mere “idea” of Chris Riddell’s book.

But, who really knows what may be hiding under your bed.

Co-written with Kieran Heneghan

What Is Copyright And How Can You Claim Your Own?

Every business has a logo, website, brochures, photographs, packaging, software, and more. These are all subject to copyright law.

Only the copyright owner is entitled to grant permission to others to use or copy their copyright materials. Copyright licensing underlies the use of images, music, lyrics, content for books, software and more.

Licensing is the way in which the use of a copyright work is controlled by the owners who receive royalties in return for giving you permission to use that work.

Ownership of Copyright

Ownership of copyright could be critical to your success as a business. Unless you get advice and are strategic about it, you risk not following the necessary steps to secure copyright every time you have work created for you. This means your business may not be protected, and may not own copyright in some key assets.

Copyright potentially unlocks additional revenue streams, so getting copyright issues right could increase the value of your business.

There are many myths about copyright which are traps for the unwary.

How one Business Lost the Opportunity to Exploit its Software

For example, one business-Â CML – commissioned software from Business Linx, with the intention of licensing other businesses in their industry to use it. It was likely to be popular. They assumed that as they were paying for the software to be developed they would automatically own it. However, unfortunately for CML, the contract with Business Linx didn’t give them copyright ownership. So, they had nothing to sell. They found this out too late – once the software had already been developed. All they had was the right to use the software for their own internal business. Business Linx, the developer, who had got all the business information to build the software from CML, was the one who could sell the software. They were free to market it to CML’s competitors and others.

If only CML had taken IP advice and looked at the contract more closely.

Be Strategic about Copyright Ownership

You should always be strategic about ownership of copyright. Make sure you have a written contract with freelancers, and agencies, and scrutinize the contracts to check that you are getting the rights you need, and avoid infringing on other people’s rights too.

And if you develop copyright works for others, make sure you carefully consider your strategy so you don’t lose business, and yet increase the value of your business. You don’t necessarily have to give your copyright away, and nor do you need to alienate your potential client. The key is to discuss licensing terms so you both get what you need from the arrangement.

In the CML example, an appropriate deal might have given Business Linx copyright ownership, while CML could have received the exclusive rights to sell the software. Or perhaps CML might have also allowed Business Linx to sell the software, but only if they agreed not to sell the software to CML’s competitors, or for a period of time, or in certain geographic areas. In this way they could have both benefited from the arrangement. As it was, Business Linx secured a huge advantage at CML’s expense.

What JK Rowling Needed To Know About Intellectual Property law

JK Rowling is now a successful writer with one of the most valuable brands. It’s taken her just 21 years to get there. Initially, when she sent her first manuscript to publishers, she was turned down by more than 12 of them before Bloomsbury, a publishing house in London, accepted her book.

Authors starting out will rarely have an agent to look after their interests. So it’s important in those early days, for a writer to take advice on the publishing agreement before signing it. It’s the same with any project involving IP – it’s vital to get IP advice before implementing your ideas.

Why a publishing agreement is so critical

Certainly, JK Rowling’s considerable wealth didn’t result from book sales alone. However, the foundations for that wealth began with her first publishing agreement which is a critical contract.

The publishing agreement determines how the intellectual property arising may be exploited. The rights you give your publisher set out who may control the various rights in the work you create.

As the creator of the work, the writer will own the copyright in it. Therefore, the agreement should protect your copyright, and you should never give it away to the publisher. So, if your publishing agreement has a copyright assignment clause in favour of the publisher, don’t sign it before taking advice.

Most publishers will let authors keep the copyright, and will insist on having certain rights, such as the exclusive right to print, or to produce translations, licensed to them. Other rights like film, or television rights might well be left entirely to the author, while it will depend on the type of book and the publisher what happens to book club rights or similar.

At the time JK Rowling secured her first publishing deal, who could have known her books would have so much success? Yet if you are someone creating a business, or an artistic work, or piece of music, you need to assume you will be hugely successful, and not give away your rights unthinkingly.

Ownership of copyright underlies JK Rowlng’s wealth

If JK Rowling had assigned her copyright in Harry Potter to the publisher, she would not have achieved the profits and wealth that her writing gave rise to. It’s because she retained ownership of copyright that she was able to licence others to use the name on merchandise, to license the making of films, and to carve out rights to licensees of her work on a geographic basis.

Harry Potter has been registered as a trademark as have other characters, along with many designs produced around the books’ elements. Securing such IP rights or giving others the right to do so plays a crucial role in the income generated by the brand.

Once you own IP rights which are desirable to others to use, you may license a whole host of businesses in exchange for royalties. Licensing increases your revenues for as long as there is a market for your creations. And unlike physical property there is no natural limit to the number of people to whom you can give a right to use your IP. So the revenues to be earned from IP far exceed what you would be able to earn from investment in physical property like land which may only be let out to one party at a time.

Consequently JK Rowling’s creations have been used on a variety of goods and services. The movie characters have been licensed to theme parks and other organisations, and reproduced on many different merchandise. Licensing agreements are flexible as they allow you to license as much or as little of your IP as you like. JK Rowling’s creations have made billion dollar profits as a result.

Conclusion

In conclusion, Rowling’s considerable wealth today is all down to her intellectual property, with her biggest source of income being generated from licensing.

So the moral is to protect your IP if you have ideas to bring to the world. Whether you are an author, designer, software developer, or entrepreneur, don’t ignore IP whatever you’re creating. By taking timely advice and setting your IP strategy you will be better placed to secure essential IP assets and build your business on strong foundations. The future growth of any business is based on its IP.

Why not begin by attending my next workshop by following the link on the sidebar of this blog.

IP Workshops – Essential IP Law For Creatives

I have been hosting focused intellectual property workshops for creative agencies for a few months now. Attendees are incredibly engaged, and invariably find aspects of the workshop a real eye opener.

Intellectual property is intrinsically bound up with the work creative agencies do. Therefore, a good knowledge of Intellectual property law helps in running a creative business, as well as reducing the risk of legal complications.

For example, better to avoid an infringement claim by doing proper due diligence checks before creating a logo than waiting to find out there is a problem once the logo is already created.

Liability for IP issues

While many agencies aim to limit their liability for IP related issues by putting the onus on the client to obtain legal advice themselves, it is difficult to see how agencies could successfully absolve themselves of liability in situations where they create a new logo, or even a new name.

One of the most memorable cases involved a dispute over the Dr Martens Airware logo . Due to a lack of IP knowledge the agency was embroiled in litigation along with the client, and suffered significant time, effort and expense in the ensuing court battle. This could have been so easily avoided with the right documentation in place.

IP law essential

The role of IP law is therefore crucial in avoiding pitfalls, and positioning clients of agencies for maximum success. IP fits hand-in-glove with the creative process.

The workshops highlights the pitfalls. Then by simply offering IP services, or referring matters to an IP specialist at the appropriate time in the creative cycle, agencies are able to give their clients real help while absolving themselves of responsibility.

Contrary to popular belief the right time to refer clients is not after the creative exercise is concluded. The appropriate due diligence checks should be carried out at an early stage, because if what you intend to create or use infringes on a third party’s rights, the client has nothing worth protecting. All the effort taken in creating the identity is wasted.

The workshops help agencies to find alternatives to simply asking their client to consult their own lawyers. Many clients will not have lawyers or may never consult any lawyers because they do not appreciate the significance of doing so. The upshot is that they are at risk of using an identity that may cause problems for them down the line. That will impact their revenues, and could expose them to litigation. And it’s doubtful that a clause excluding liability in the agency’s terms would be legally effective anyway.

The next workshop is on 14 July from 3-5pm. It’s a small session for a maximum of 8 people to attend.

This session costs £40+VAT per person (or £25+VAT for early birds) and includes refreshments, as well as a copy of my book Intellectual Property Revolution.

To book go to EVENTBRITE NOW.

Intellectual Property Value – Do You Need Specialist Skills to Value IP?

As intellectual property (IP) becomes more recognised as an asset class, interest in it is increasing – so much so that apparently according to the IPKAT Hong Kong property surveyors have been trying to break into assessing the intellectual property value in a business.

They recently called upon overseas bodies (for example, the Royal Institution of Chartered Surveyors to promote the virtues of having surveyors perform IP valuations.

As the IPKAT says, the question is whether

IP valuation is a sub-category of business valuations or a self-contained professional endeavor; and
(ii) in either case, to what extent must an IP valuation professional understand the legal context of IP rights?

The starting point is to consider what we mean by IP

What is IP?

The term IP is generally associated with registrable rights like trademarks, patents and designs. However, SMEs also have many non registrable IP issues to consider, such as copyright, know how, trade secrets, database rights, organisational knowledge and more.

Unless an SME takes advice to identify, manage, and protect its IP assets it could be seriously exposed because intangibles are a poorly understood asset class.

There is no one size fits all when it comes to determining a business’s risks and opportunities. Even two businesses in the same industry, with similar business model, may have different issues to address depending on how they develop their businesses and what contracts and other arrangements they have in place, For one business copyright may be the critical asset, while for another it may be the database or a patent.

They will not necessarily be equally desirable to an investor as their value on exit would be impacted by a number of factors unique to each business.

Why have an IP valuation?

One issue a valuation will consider is whether there is key IP underpinning a company’s competitive advantage. If so, another question is whether that competitive advantage is adequately protected.

Banks and investors may accept IP assets as valuable security to finance an SME’s growth if the business can demonstrate that those IP assets underpin revenues and forecasts, and impact cash flow.

How the strength of the IP asset is critical

A fictional example may help convey how IP works.

Say a company has developed an innovative solution that becomes well known in its industry. That competitors will copy a good idea is inevitable. So, if a company’s asset isn’t protected with a patent or other barrier to entry, it is more vulnerable to copy cats.

However, where there are no patents to protect the product, it is a mistake to assume there is little you can do to prevent a competitor stealing market share. You may not be able to stop them creating similar products but you may be able to protect your competitive position and create barriers to entry through the name you choose for the product.

The name is a potential barrier to entry because it can stop competitors using similar ones to identify their offerings – but only if it is a name that the business can uniquely use.

If the business chooses a generic name (that is, one that describes what the product does, rather than an actual name), the name will not be capable of protecting the company’s asset. This is so even if the company registers that name as a trademark combined with a logo. Such a registration would effectively only protect the logo where the name is generic.

So the upshot is that the business has a product that gives it a competitive advantage. It has a valuable asset, but not as valuable as it would be if the name was capable of stopping competitors stealing market share when providing ‘me too’ solutions.

That not all names are equally effective at containing IP value is not generally well understood

Shifting value of IP

IP value is rarely static. Intellectual property rights can change in value over time for a variety of reasons. For example, when you first patent something, it’s possible you have a unique solution to a problem so that your patent provides a strong competitive advantage. But then as other solutions to the problem emerge, the value of your patent may be reduced. On the other hand, if you have successfully marketed your product, despite your patent becoming less critical to your competitive advantage, your trademark may have gained value as your name recognition has increased.

So, failing to give a product a distinctive name that is capable of functioning as a trademark, or not checking whether other people’s rights might prevent use of the chosen name long term impacts the value that is generated, and that would inevitably depress the value of your IP.

IP value is impacted by the choices you make

The above example is designed to illustrate how the IP in question, or the choices you make impact IP value. You need to be ready to make changes if needs be. However, names are not the sum total of IP. There are so many other issues that impact IP value.

There are a number of IP actions required in order to build value and wealth. Implementing effective contracts is a hugely important, but misunderstood aspect of IP protection.

Because it is never possible to foresee what problems and scenarios might arise for a business in the future, it is prudent to secure its IP rights to the fullest extent, so the business has adequate protection to protects its position in the market.

Therefore, identifying IP rights, and protecting and managing them, is essential for any ambitious business.

Conclusion

Clearly IP valuation is not an area in which surveyors would have appropriate transferable skills.

IP and business are closely intertwined. In practice, you need to take both into account. That is why it requires the combined skills of business and IP experts to get the most effective IP valuation and strategic advice.

In a future post, I will explore the different methods for valuing IP.

Take Our Protect Your IP Test Now

Intellectual Property Revolution – Book Launch – Video Highlights

The Intellectual Property Revolution, my second book, was launched with great success on 13 October 2015 at the Institute of Directors in London.

For those of you who were unable to attend the event the next best thing is to watch the videos of the night.

Daniel Priestley of Entrevo, who runs a global entrepreneurship accelerator programme known as Key Person of Influence (that I myself have attended) gave the introductions for the night.

He also took us through the ages pointing out that at one time it was ownership of land that enabled people to build fortunes, these people built themselves a reputation and became influential. Then after this agricultural age came the industrial revolution where people built their fortunes by owning the means of production. In the digital economy it is intellectual property that is the means to building fortunes. He said millennials would rather spend all their time and money to build start-ups than purchasing houses or land.

Next up was Will Critchlow of Distilled, CEO of a digital marketing agency based in London with offices in the USA. He reinforced the importance of using the right name and protecting intellectual property rights very early on, an issue he himself had encountered at the early stages of his business ventures while at school. Intellectual Property, in particular securing a trade mark helps provide businesses big or small with strong foundations to securely expand and build a reputation they establish. This will strengthen branding strategies becoming real investments rather than failing later on.

Then finally, I spoke about the importance of taking early IP advice in order to position yourself for maximum value if you succeed, and reduce the risk of disaster. When overlooked, IP can be damaging to the core features of any business. For example, a poor choice of name can be a real set back. This is something I discuss in more detail in my blog Intellectual Property Value – Do You Need Specialist Skills to Value IP?

IP is so important to any business, as the internet now dominates our daily lives, it is the ownership of these intangibles which is so necessary to protect. At Azrights, we offer a fixed price service that provides early stage businesses with comprehensive advice concerning Intellectual Property rights and strategic building of them.

There was a chance for guests to mingle over canapes and here are some vox pox and highlights of the event. The vox pox discussions give some insight into why attendees believe IP is so important in today’s society.

While the highlights below will give you a general flavour of the eventful evening.

Since the launch, I have revised the conclusion of the book, as this was a chapter I struggled to write last year. At the time, I wanted to finish the book so I used something. However, having had time to reflect over the festive period, I have changed the conclusion, and am now very happy that the book will be an easy, insightful read for businesses interested in IP.

The new conclusion fits much better with the book as a whole being a kind of synopsis of the book and summarises the transformative effects of Intellectual Property rights. If you don’t have time to read the whole book, you’d now get a strong indication of what the book is all about by reading just the conclusion and perhaps revisiting the book when time allows.

Attend Exploring IP Session