The ACID legal hotline is inundated with intellectual property calls and often the same queries appear time after time. We have highlighted some of the most common queries  and our “IP Doctor” lawyer Andrew Lee from ACID Accredited law firm McDaniel & Co gives some brief answers.

If you have a particular IP query you would like answered please email help@acid.uk.com

Will posting a copy of my work to myself help to prove its origination?

Known as the “poor mans copyright”, posting a copy of your work to yourself is not a reliable method for proving origination. The reason is that the method can be easily faked and manipulated. For example, an empty and unsealed envelope can be posted and the work sealed inside at a later date to give the impression it was created earlier. It is unlikely this evidence would stand up in Court.

The best way to deal with origination issues is to ensure all preparatory documentation that goes into the creation of a work is signed by the author, and dated, then stored in a safe place. Such documentation could include sketches, drafts, plans etc. However, once the work is complete, filing a copy of the work with a recognised third party such as a solicitor, bank or independent organisation will help provide independent evidence of a latest possible date of creation. ACID offer such a service through the ACID Design Data Bank and all members should take advantage of this.
 

If I commission someone to create something for me, do I own the rights in it?  

When something is created, unregistered rights such as copyright, UK unregistered design right and European Community unregistered design right may subsist in that particular design. These rights may subsist individually, or they may all subsist together, depending on the nature of the work created.

The default position under the legislation is that the creator of the work, not the commissioner, will be the owner of any copyrights and European Community unregistered design right whereas the commissioner, and not the author, will be the owner of UK unregistered design right. Therefore different people could own different rights in the same work, with each of those rights having a different scope and duration.

The situation is further complicated in that, generally, if you commission the creation of something for a particular purpose, then an implied licence will arise in your favour to use the work for that purpose. However, determining the scope of any implied licence can often be difficult and has led to much litigation.

In summary of the above, unless the ownership of rights is dealt with expressly by the parties through a written agreement  (at a later date a disagreement may arise over the use of that work) enlisting the help of lawyers and the Courts to sort it out will be expensive. ACID members therefore should consider using the Freelance Designer generic agreement to ensure the ownership of rights is dealt with expressly at the outset so everyone is clear of the position.

If I change 7 things is it ok to copy something?

This is a very dangerous and common myth. For example the test for copyright infringement is whether the alleged infringing piece reproduces the whole, or a substantial part, of the work. The test for this is qualitative not quantitative. Therefore, if someone copies what may only be a small amount of the work, but qualitatively speaking that part is a substantial part of the author’s skill and labour, they will be infringing.

Furthermore, someone may reproduce a work in a completely different form but still infringe. For example, a written story in a book could be infringed by someone creating a picture board of that narrative. Two totally different expressions – but one would still infringe the other.

 Do I have any automatic protection abroad?

Depending on which rights subsist in your work, you may have some protection abroad. European Community unregistered design right extends to all 27 member states. UK unregistered design has reciprocal protection in certain countries, the most notable being New Zealand. Copyrights also have protection in other jurisdictions, as the UK is a signatory to various international conventions which provide for reciprocal protection.

However, you should always consult a lawyer for specific advice because whilst the above is set out in simple terms, a careful analysis is required to determine the scope and extent of your protection abroad.

 Does obtaining a registered design for my work offer any benefits that unregistered rights do not?

In short, yes. Both UK and Community Registered Designs can last for 25 years compared to the UK and European Community versions of unregistered design right, which last for a maximum of 15 and 3 years respectively. In addition, the main advantage of having a design registration is that it protects against those who copy and also those who do not. With unregistered rights, the protection is only against those who copy your work, so if someone creates something that looks the same, but they have not copied, there is no infringement. With a registration, you are protected as you are granted a monopoly over that design. Those are the main benefits, but there are others which you should discuss with your lawyer.

Trade Marks Q&A

Why do some brands have ® after them and some have ™? Is there a difference?

If you have a registered trade mark then you are permitted to use the ® sign to indicate that the mark is registered. It is an offence to use the ® sign if the mark is not registered. Using the ™ sign simply means that you are using the particular sign in a trade mark sense i.e. to brand your goods, but that the mark itself is not registered.

Being able to use the ® sign can also be considered a further benefit of obtaining a trade mark registration as it can have a deterrent effect.

 What is a Trade Mark?

A trade mark is a particular sign, or get up, used by a business to distinguish its goods or services from those of other businesses. In the UK, a trade mark proprietor’s rights can be protected by obtaining a registered trade mark from the UK Intellectual Property Office. In addition, the rights can be protected at common law by the tort of passing off which protects the goodwill and reputation which has developed through trading and promotion.

Under the Trade Marks Act 1994, any sign which can be represented graphically and which is capable of distinguishing the goods or services of one undertaking from those of another can potentially be registered. There are however certain exclusions such as when the trade mark is descriptive of the goods it is to be registered for. An example would be trying to register the word “soap” in respect of soap.

Various well known trade marks take various different forms such as word marks (Microsoft), logo’s (the Nike tick) shapes (Toblerone box) and sounds (the Direct Line insurance jingle). 

It can often be more difficult to register trade marks which consist, for example, of shapes or sounds because the average consumer does not typically distinguish goods by those signs but is more accustomed to distinguishing by the word or logo marks on the product itself. We all use trade marks each day to ensure we know where the product we are buying is coming from and hence guarantee the quality we are expecting.

 Should I think of registration?

Registration is of course optional. As your business grows, you will develop goodwill in respect of signs and get up that you use to distinguish your business which can found an action under the common law for passing off. However, as it can take time to develop a significant goodwill, it can be difficult for new or small businesses to bring passing off actions. In addition, passing off actions require evidence of deception or likely deception which can be difficult to show.

However, by obtaining a registered trade mark the registrant is granted the exclusive right to use the mark in connection with the goods or services for which it is registered. By holding the registered trade mark the owner can take action for infringement against anyone who uses an identical mark on identical goods or services, uses an identical or similar mark in connection with identical or similar goods, where the use has caused or is likely to cause confusion and in some circumstances the owner may have the right to prevent use of an identical or similar mark on dissimilar goods. The protection is therefore wider, and easier to enforce, than relying on passing off.

Furthermore, by holding the registration the owner can make others aware of the registration and the registration is held on a public register which anyone can view and access. This may help to deter potential infringers if they know a particular trade mark is registered.

How long does it take to obtain a trade mark and how long does it last for?

Typically, the process from filing the application to obtaining the registration takes between 6-9 months. However, once the registration is granted, the registered trade mark takes effect from the day the application was filed and not the date it was granted; hence the filing date is the relevant date. Sometimes, applications can take longer to process if any obstacles are hit along the way such as objections from the Intellectual Property Office or from third parties with similar marks.

The period of protection lasts for 10 years however, a trade mark registration can be renewed indefinitely in 10 year periods meaning the trade mark can theoretically have a perpetual existence. The Bass brewery red triangle mark is at present the oldest UK registered trade mark being registered since 1 January 1876. 

 What is a Patent?

A patent is an IP right covering new inventions. Patents generally have a life span of 20 years from the date of the patent application. Patents cover concepts, NOT what something looks like. By having a patent, the owner can take action to prevent others from using his invention.

The justification for having a patent system is to encourage inventors to disclose their inventions, and how they work, in exchange for a limited monopoly over the invention itself. After the patent has expired, the inventions are free for all to use which, in turn, could aid improvements and developments in that industry.

Examples of well known products covered by patents which have now expired are the Dyson vacuum cleaner and the Workmate workbench.

What are the requirements for a valid patent?

A patent must be

• New
• Inventive
• Capable of industrial application
• Not one of the excluded areas

An invention will be new if it has not been done before, anywhere in the world, prior to the date you apply. It is therefore important that before you apply for a patent, you take steps to ensure your inventions are only discussed under confidential conditions. It is also advisable that if you are thinking of patent protection, you consult a lawyer at an early stage. The last thing you want is for your patent to be invalid through your own actions.

For a patent to be inventive it must have what is known as an inventive step. The invention must not be obvious. The test is “the man skilled in the art” who is a hypothetical person (or persons), used by the Courts, and said to have common general knowledge of the sector of the invention concerned. They are also presumed to have no inventive capability. If the invention would be obvious to that person, then the patent will fail on this ground.

To be capable of industrial application, a patent must simply be capable of being used in any kind of industry. It does not actually have to have been applied industrially.

There are various exclusions from protection which include discoveries, scientific theories, schemes, rules and methods for performing mental acts, computer programmes and the presentation of information. 

Do I need to have a patent to protect my inventions?   

Sometimes, businesses try to protect their inventions by keeping ideas and methods a trade secret and ensuring no-one else knows about them. For example, the coca cola recipe is a strictly guarded trade secret. Also see the BBC website article in respect of Irn-Bru at http://news.bbc.co.uk/1/hi/scotland/8066968.stm. Attempting to protect your ideas, however, by keeping them secret, may be unsuitable. For example, a newly improved mechanical device, such as a folding ladder, is unsuitable for protection this way because as soon as one ladder is sold, the invention is seen.

Even with inventions which could be protected by way of keeping them secret the protection is still relatively fragile and requires stringent in house procedures to ensure the risk of the information becoming public is minimal. This will not however prevent other businesses using similar techniques; they just will not know yours. A patent would give a monopoly over that invention however arrived at.

What does it mean when a product is advertised as “Patent pending”?

This simply means a patent has been applied for but it does not mean that the patent is going to be granted. The existence of a patent application, even if unlikely to result in the grant of a patent, can still have a deterrent effect. Those who seek to use the invention risk being sued when the patent is granted. It can also give the impression to potential customers that the product is in someway special or unique. It is, however, an offence to represent that a product is a patented product, or the subject of a patent application, when that is not the case.

Can I get patent protection in different countries?

Yes. Patents are territorial in nature which means they are granted on a country by country basis. At present, there is no European wide patent, covering all 27 member states, such as for trade marks and registered designs. There are however procedures in place to allow you to make one application to cover a number of European countries in that application. The result of a successful application is a bundle of individual patents in different countries at a lower cost than individual applications to each country.

You should seek advice from a lawyer on the best ways to protect your inventions and the methods of extending that protection abroad.

ACID Generic Agreements

Intellectual Property owners should ensure that they have the right agreements in place to underpin their commercial relationships. Below are some examples of common questions asked where the use of an ACID Generic Agreement would have helped to avoid a subsequent problem. 

Intellectual property rights are like any other form of property. They can be dealt with in a variety of ways. They can be sold, licensed, mortgaged, for example. Quite often however, when two parties enter into an agreement in respect of intellectual property, they do so without legal advice or without documenting the agreement. That can have a number of consequences and there is a raft of intellectual property case law which has at its foundation the problem that the parties conducted their arrangement informally and did not reduce it to writing. So, clarity of ownership is key! 

I am a fabric designer and I have designed a new print. A manufacturer of furniture wishes to use that print and apply it to furniture for sale. I do not want to sell the print outright as I would like to have the option of using it myself in the future.  How can I best protect myself?  

In this situation you are looking to allow another to use your design but retain ownership and receive financial benefits from doing so. The best option therefore is to licence the use of the design to the manufacturer. The starting point should be to have a form licence agreement drawn up, the foundation of which could be the ACID royalty/licence agreement. It is important that the agreement is reduced to writing for a number of reasons: 

• It provides commercial certainty to both parties as to what the agreement between them is.
• There is no ambiguity as to what the manufacturer is licensed to do, how long it is licensed to do it for, on what types of products it can use the design and whether you will be at liberty to grant licences to others.
• The terms of payment can be specifically set down such as whether you will be paid a one off licence fee or a percentage royalty per sale made by the manufacturer or a combination of both.

I am a freelance designer who is regularly commissioned by clients to produce a wide variety of products and designs. I have a problem where a client is alleging that they own the rights in the product I have created. We did not have a written agreement; the deal was concluded informally over the telephone. How can I ensure I am better prepared next time?

The issue of the ownership of commissioned works is complex and these were outlined in previous Q & A’s. It is always advisable to deal with the issue of ownership of commissioned works before any work is undertaken when preliminary negotiations are underway. In that regard the ACID Freelance Designer Agreement is extremely useful. This document will allow you to expressly provide for the issue of ownership. In addition, if you already have your own written terms of business, the content of the freelance designer agreement can be incorporated into those terms as additional clauses dealing expressly with IP ownership. 

You may wish to retain legal ownership of the intellectual property in the designs you produce but grant the customer a licence to use the design. The customer would, in any event, have an implied licence to use the design for the purpose it was commissioned. Alternatively, you could be happy to agree that the customer will be the owner of all intellectual property rights once payment for the work has been received. Again, by reducing this agreement to writing, there is no ambiguity. 

A manufacturer has asked to see some prototypes and samples of my work so that they can give me an idea of the costs of producing the product for me to commercially exploit. Is there anything I should be aware of and what can I do to ensure I am protected?  

This is a relatively common situation and the risk is that an unscrupulous manufacturer could decide to  take your product, produce it themselves and sell it as their own. Many people approach commercial situations with good intentions, however, it is wise to err on the side of caution. There is a simple way of maximising your protection in this situation with the use of the Acid Intellectual Property Agreement. This is a short agreement that you would give to the manufacturer and ask them to sign before sending them any prototype, or sample of your designs. 

The agreement outlines that you are the owner of the samples and any intellectual property rights. The manufacturer by signing the agreement would acknowledge that and also agree not to do anything with the samples without your written consent. Of course, even if they sign the agreement this does not mean they will not do anything wrong. There is no guarantee. However, if they have signed the agreement then you have in writing their confirmation that you own the designs and that they will not misuse them.   

Without such an agreement they could complicate matters by alleging you gave them permission.

I am starting a new business, is there anything I should have in place for trading with customers?

ACID offer the Standard Terms and Conditions template generic agreement. The template is a basic set of trading terms and conditions with additional clauses that can be added or taken out depending on the circumstances, but with emphasis on ensuring any intellectual property issues are covered. This will allow you to clearly set out to customers the terms upon which you do business. For example, how long will a customer have to pay for the goods or services? What happens if they do not pay? What is the procedure for returns? Are you to retain ownership and title until payment is made?

Without a set of written terms and conditions it can be difficult to know on what terms you are conducting business, which makes any disputes costly and time consuming to resolve. This way, by having a set of Terms and conditions, the terms are clearly set out. The generic agreement can also be amended to be tailored specifically towards your business needs.

I am worried that by asking the company I am dealing with to sign agreements that they will refuse to deal with me or assume I think they are not trustworthy. Should I still insist they sign the documents?

Yes! The first sign of concern in such a relationship should be when the other party is not keen to have formal agreements in place. This should raise your suspicions immediately. After all, if they are a bona fide company who do not intend to rip you off, then there should be no problem with formalising the agreement. Remember that the agreements are also for their benefit. By having everything  in writing it also allows them to conduct the relationship with clear boundaries. Furthermore, it should be of comfort to them that you take intellectual property rights seriously and wish to do things correctly.

Visit ACID Trading for further explanations, help and advice