Leigh Ellis, commercial copyright lawyer, Gillhams Solicitors

Copyright is one of the most common forms of intellectual property protection as it protects the most common forms of materials produced: computer software, photographs, email messages, graphic works, as well as many others.

Copyright applies automatically without any need for registration. Copyright is a negative right: that is, the copyright owner is entitled to prevent others from copying of their work. However, it does not protect ideas other than the way the ideas are recorded or reduced to a written form. In this way, copyright protects the expression of the idea, rather than the idea itself. The only area of law that protects ideas that do not have some sort of physical embodiment is the law of confidence information.

Generally speaking, determining who owns copyright is a straightforward question. The author of a qualifying work is the first owner of copyright. If the person is employed, it is the employer that is the first owner of copyright.

This means that unless contractual arrangements with freelancers and independent consultants have been agreed in writing that displace these default rules, the consultants or freelancers will own the copyright in works that they create for others, irrespective of their vocation.

It is well established that a court will not intervene to assign copyright contrary to these default rules unless special circumstances exist. One might say that it is a form of insurance to ensure that when freelancers and contractors are engaged that copyright is dealt with in accordance with your expectations.

There is a common misconception that registration is required for copyright works in the UK. This is not the case. Registration services merely provide an independent service to produce evidence that the copyright was created at the time the owner says it was. If the owner has satisfactory evidence of the creation date (for instance, by its publication) there is little need to concern oneself with such registration services.

Copyright infringement comes with what is known as ‘strict liability'. It is immaterial whether the copier knew that the work was protected by copyright and thus it is irrelevant that the copier intentionally copied the work. The copier will still be liable for infringement.

Furthermore, a copyright work need not be copied in its entirety in order for a claim for copyright infringement to be proved. The Copyright, Designs and Patents Act 1988 simply requires a ‘substantial part' of the work to be copied. A ‘substantial part' is assessed by reference to the importance of the part copied rather than the quantity copied. It stands to reason therefore that quite a small part of the work may copied and still be an infringement.

There is no reason why works protected by copyright cannot be combined with other applicable areas of intellectual property protection such as patent and designs to maximise protection.

For many businesses, the point of protecting intellectual property rights lies in generating licensing revenues from multiple licensees.

It is important to remember that copyright in a protected work is separate to the physical embodiment of the work. For instance, when publishers print books they do so with a view to selling copies of the book. The publisher owns the copyright. When someone purchases a copy of the book, they do not purchase the copyright in the book. A sale of the physical embodiment of the work does not carry with it a right to copy it unless otherwise agreed.

The nature of intellectual property rights makes licensing the only means - albeit incredibly flexible - to authorise third parties to use a copyright work, while maintaining ownership.

When you engage someone to produce written materials or other copyright works, ensure that the contract deals with intellectual property in the letter of engagement or contract, in writing. In an increasingly intellectual property aware business environment, not appreciating the legal landscape can lead to unexpected, unwelcome and expensive surprises.

For more information please visit www.gillhams.com

• The general rule in most countries, including the UK, is that the first to register and not the first to use has a better claim to a mark. In the worst case, you may have to discontinue use of your mark in the face of a mark registered later by a third party, irrespective of whether the owner of that later mark has begun to use its mark or whether your mark is your company name
• While it is possible eventually to protect a trade mark in the UK through use, this can take years. Moreover, it can be difficult and expensive to take action against other businesses on the basis of unregistered rights
• A registration on the public record serves to ward off competitors who may have been considering adopting the same or a similar mark
• Finally, a registered trade mark is an object of property, in many cases the single most valuable asset of a business. Registered marks can be sold, licensed or offered as security against bank loans

While there is a cost to obtaining a trade mark registration, many businesses discover that there is often an even greater cost in not registering a mark.

Signs that may be registered as a trade mark include words, personal names, designs, letters, numerals, colours and colour combinations, and the shape of goods or their packaging. Whether they can be registered depends essentially on whether they are distinctive and/or whether they conflict with existing rights.

Companies can continue to protect and nurture a registered mark by:

• Using it. If no use is made of a registered mark for a period of five years, and there are no proper reasons for non-use, other businesses can apply to have it revoked
• Flaunting it. It is always a good idea to show that you claim rights in a mark, by using the ^TM symbol on a mark which is used but not registered. Once you have a registration, you may then use the ® symbol. Other ways of making your mark stand out are to use bold type or capital letters
• Using it properly. It is important not to use your trade mark as a noun or a verb in order to try to prevent it from becoming a generic term. ‘Aspirin' was once a registered trademark in the UK but was lost when it became generic. The past few weeks have seen strenuous efforts by the owners of the Google® trade mark to try to prevent the media using that mark as a generic term for internet searching

Sarah Harrop, intellectual property solicitor, WilmerHale
What is a patentable invention? It is an invention that is novel, contains an inventive step and is capable of industrial application. It also needs to reach the patent office without prior publication. This is particularly important as entry into the public domain prior to filing of an application kills any chance of obtaining patent protection for the invention.

For this reason, prior to filing, the invention needs to be protected by the laws of confidentiality. The laws of confidence give the owner the exclusive right to use and disclose the confidential information under further obligations of confidence. Absence such obligation of confidence, the protection is lost. For this reason, companies should ensure that they use robust non-disclosure agreements when they are obliged to disclose any aspect of their trade secrets.

Furthermore, it is important to ensure that the company has the right to apply for patent protection in respect of the invention. Under English law, inventions created by employees are the property of their employers if such inventions were made either in the course of the employees’ normal duties, in the course of specifically assigned tasks or where, due to the nature of the duties, it can be said that the employees had a special obligation to further the interests of the company. In the case of contractors, third parties and indeed, founders, where possible all rights to apply for patent protection for inventions should be assigned in writing to the company.

Patent protection only occurs upon grant of the patent. The rights last for 20 years from their filing date, subject to payment of renewal fees (and of course provided they are not invalidated at any stage). Grant of patent gives the owner the exclusive right to prevent others manufacturing products based on the protected idea.

There are various ways to seek patent protection. A patent may be sought directly by means of an application to the national patent offices. If protection is sought on a pan-European basis, then a bundle of national (West European) patents can be sought by applying for them via the European Patent Office under the EPC system established under European Patent Convention 1973.

Finally it is possible to initiate international patent applications in a number of countries throughout the world by a one-stop shop using the PCT system (established under the Patent Cooperation Treaty 1970). The PCT provides for a single application specifying the countries where protection is sought, a single search and in some cases a single preliminary examination. Thereafter, the application must be pursued separately in each designated country.

David Freer, director, asset finance, HSBC Insurance
Registering your design gives you exclusive rights for the look and appearance of your product. The existence of your design registration may be enough on its own to stop others from trying to exploit your design. If it does not, it gives you the right to take legal action to stop them exploiting your design and to claim damages.

A registered design allows you to sell your design and the Intellectual Property (IP) rights to it, and license your design to someone else while retaining the IP rights to it.

However, should you need to take legal action to protect your intangible asset you may need legal expenses insurance to help enforce your rights.

IP is essentially worthless if you do not have the financial means to defend it in court should it be challenged. IP disputes are more common than you may know and more expensive than you may imagine, with even the most straightforward action typically costing up to £250,000.

However, sometimes just having insurance cover in place can be enough to deter competitors from challenging your business over the rights to IP. It also shows that you are serious about protecting your IP, and that you have the funds available to fight a costly challenge.

The main type of IP cover available in the UK provides legal expenses cover for enforcement of the IP should another person infringe it. It will pay all of the legal expenses you incur in defending your patent up to the insured limit, whether the matter is settled in or out of court. In the event that you should lose the dispute, the insurance will cover the legal costs and damages of the other party, for which you may be liable. The insurance also covers your legal costs for defence if your design or product has infringed another party’s IP.

Premiums have been fairly stable in this market in recent years, with a premium of £1,000 providing cover of up to £500,000, as a guide, but can be as little as £100 per annum for those who have just started up.

Underwriters will provide cover for all the countries you may trade in, including the US. However, with many more legal cases and higher payout awards in the US, cover in that market is extremely hard and more expensive to attain.

Source: New Business Magazine