seminar 1 intro

definition

• a body of legal rights protecting intellectual creations and commercially valuable intangible assets

• allow creators and businesses to control the use and exploitation of their creations including through assignment and licensing

• unlike tangible property ip protects the intangible creation expression invention sign deign or confidential information rather than the physical object itself

• ip protection is intended to

  • reward creativity and innovation

  • encourage investment and commercialisation

  • prevent unauthorised exploitation and free riding

  • balance private rights against wider social and economic interests

• different ip rights protect different subject matter and have different requirements durations and limitations

  • however the same product can be protected by sever ip rights simultaneously

main examples

• copyright= protects original expression not ideas themselves ie literary work, computer code, musical performance

• patents= protects qualifying technical inventions ie disowns suction technology

• trade marks= protects signs capable of distinguishing goods and services origin ie logo, slogan, colours, sounds

• registered designs= protects the external appearance of products ie Coca Cola bottle shape

  • unregistered design rights= provide automatic but more limited design protection

• trade secrets= protect commercially valuable information while secrecy is maintained ie recipes, know how

• geographic idications= protect qualifying products who’s qualities characteristics or reputation are linked to their geographic origin

McDonalds logo and slogan

trademark= a sign capable of distinguishing the goods or services of one undertaking from others ie words logos shapes colours

• the Golden Arches and McDonalds name can function as trade marks

• protects the sign as an indicator of commercial origin to the company it does not protect the underlying idea of selling fast food

copyright= original expression

• may also protect an original logo as an artistic work if the requirements are satisfied

• a short slogan may receive copyright protection but short phrases do not automatically qualify; originality and nature of the work must be considered

passing off= if branding is unregistered the business may potentially rely on common law principle of passing off

• must establish good will/reputation, mis representation and damage/likelihood of damage

dyson vacuum cleaner= a single product can be protected by several IP rights

patent= patens protect qualifying technical inventions ie how the product works

• technical aspects of a vacuum cleaner ie mechanisms and methods of operation may be patentable if stat requirements are satisfied

• requires an application and examination satisfying novelty, inventive step, industrial applicability and not being excluded subject matter

• providing protection for up to 20 years max

registered design=conerns the appearance of a product ie shoe configuration pattern ornamentation (ie what the product looks like)

• hoover design must satisfy the requirements of novelty and indidual character creating a new impression on the reader

• uk registered design protection lasts u to 25 years subject to renewal every 5

• unregistered have automatic but more limited protection for identical copying

trademark= goods or services business origin ie who made it

• dyson name and logo can function as ems because they identify the commercial source of the goods from its competitors ie Henry hoover

copyright= original expression

• may protect qualifying works associated with the product such as instruction manuals, photographs, software and code, website contents and advertising material

cocacola original recipe

trade secret= informations which is not accessible to the public/secret , has commercial value because it is a secret and reasonable contractual and practical steps have been taken to protect this secret

• examples of contractual measures= confidentiality clauses and nodal

• practical measures= restricted access, encryption, security procedures, need to know systems

why not a patent

• patent requires sufficient discolsure of the invention in exchange for a period of exclusive rights whereas a trade secret does not require public disclosure and can potentially last indefinitely provided the information remains secret

• therefore a business would prefer secrecy where discolsure would undermine their commercial advantage

moral justification

ip recognises the creators personal connection with their work and protects certain private/personal interests

• copyright moral rights include

  • paternity= right to be identified as the author in qualifying circumstances

  • integrity= protection against derogatory treatment ie parody works

  • protection against false attribution

• however moral rights are subjectt to stat qualifications and exceptions

economic justification

IP can provide incentives for

• research and development

• creativity

• inventstment

• production

• commercialisation

ip protects against free riding

• without protection competitors may be able to copy successful innovations without bearing the original devlopment costs

• ip roots therefore allow creators to recover investment through exploitation liscencing and commercialisation

ARM example

• arms business model demonstrates how ip can be commercialised through liscencing product technology rather than necessarily manufacturing the final product itself

social justification

Ip encourages the creation and dissemination of

• technology

• medicines

• scientific developments

• creative works

IP does not necessarily require permanent secrecy or restriction

• different rights allow controlled use through mechanisms such as liscencing open source models and Creative Commons listening

IP can all provide consumers with information

• trademarks provide information about comercial roigin and in some cases such as fair-trade it provides standards and characteristics ossiciated with goods

balancing private and public interests

ip rights are not absolute

• the law imposes limitations, exceptions, duration limits and requirements designed to balance private rights against wider public interests

for example

• copyright eventually expires

• patents expire after an initial 5 year period if not used

• trademarks require renewal

• design rights have limited durations ie max 20 years

• trade secrets depend on continued secrecy

compare and contrast

the fundamental distinction is the subject matter they protect

• patent= how does it work

• design= what does it look like

• copyright= what original expression has been created

• trademark= how do consumers identify its commercial source

• trade secret= what valuable info is being kept secret

• gi= what geo origin is linked the the products qualities characteristics or reputation

IP right	What it protects	How protection arises	Duration / key feature

Copyright

Original qualifying literary, dramatic, musical and artistic works, films, sound recordings etc.

Generally automatic if requirements are satisfied

Generally life of author + international 70 years or eu 50 years for literary, dramatic, musical and artistic works

Patent

Qualifying technical inventions

Application and examination

Generally up to 20 years, subject to renewal and requirements

Registered trade mark

Signs distinguishing goods/services

Registration

10 years at a time, renewable indefinitely

Unregistered trade mark

Protectable goodwill through passing off

Arises through use/goodwill rather than registration

No fixed statutory term; depends on continuing goodwill

Registered design

Appearance of a product

Registration

Up to 25 years, renewed every 5 years

UK unregistered design right

Shape and configuration of qualifying 3D products

Automatic where requirements are satisfied

Generally whichever expires first: 10 years from end of year of first sale or 15 years from end of year of creation; licence-of-right rules apply in final 5 years

Supplementary unregistered design

Appearance of a product following qualifying disclosure

Automatic

3 years from disclosure

Trade secret/confidential information

Secret commercially valuable information

Secrecy + reasonable steps to maintain it

Potentially indefinite, but protection depends on secrecy

GI

Qualifying products linked to geographical origin

Protection under the relevant GI scheme

Depends on the applicable GI regime

Copying the source code

issue= copyright protects the expression of an idea not the underlying idea itself

• software code can be protected by copyright as a literary work

• copying the actual source code may infringe copyright however independently developing a new program based on the same general smartwatch idea would not necessarily infringe

• if the former employee copied the code without permission this may constitute infringement

ownership= if the code was created by an employee in the course of employement the employer will generally be the first owner of copyright subject to any agreement to the contrary

• therefore if the employee created the code for baboon in employement Babylon is likely to own the copyright however the employement contract and precise circumstances should be checked

remedies

• injection

• damages

• account for profits

• orders relating to infringing copies and materials ie destruction or delivery

registering a similar logo= trademark opposition/invalidity

trade mark protects a sign capable of distinguishing a good/services commercial origin

• If BabazonTech already owns a trade mark:
  Registering the mark first may give BabazonTech stronger protection against a later similar mark. A later mark may potentially infringe under where the marks are sufficiently similar, the relevant goods/services overlap, and there is a likelihood of consumer confusion.

• Trade mark registration and trade mark infringement are separate issues.

  • . If the former employee has only applied to register a similar mark, BabazonTech may potentially oppose the application. The application itself would not automatically constitute trade mark infringement.

  • If the former employee’s mark has already been registered , BabazonTech may potentially seek invalidity/cancellation and/or bring infringement proceedings, depending on the circumstances.

    • However, this would depend on the scope of BabazonTech’s existing rights, the degree of similarity between the marks, the relevant goods and services, and the surrounding circumstances.

  • If BabazonTech’s mark is unregistered:
    BabazonTech may potentially rely on the common-law action of passing off, provided it can establish the necessary elements, including goodwill/reputation, misrepresentation, and damage.

remedies

• injection

• damages or account for profits

• opposition/invalidity proceedings for registration attempt

• trademark infringement proceedings for use

revealing and munfacuring secrets= trade secrets

trade secrets= the Manu info may qualify if it is a secret, has commercial value because of its secrecy and there are reasonable steps taken to maintain its secrecy ie contractually or practically ie encryption restricted access

• trade secret protection can potentially continue indefinitely but only while the info retains its confidential character

• the former employees discolsure may constitute unlawful acquisition use of discolsure where the legal requirements are satisfied

  • the fact the person is a former employee does not automatically end the confidentiality obligation, the precise contractual and legal duties must be examined ie nodal or confidentiality clauses

producing an identical watch design= design rights

design rights= the external appearance of the smartwatch may be protected by registered or unregistered design rights depending on the facts

• registered= protects qualifying features of a products appearance for up to 25 years subject to renewal levy 5

  • if the former employee produces a product falling within the scope of the reg design this may constitute infringement especially if the competing product does not create a different overall impression on the user (not merely copying an abstract(

• unregstered= arises automatically and protects the appearance of a product fr 3 years following qualifying discolsure. its duration is more limited and is primarily concerned with copying

  • therefore the precise protection depends on

    • whether it was registered or unregistered

    • whether copying can be established

    • when it was disclosed

    • what aspect os being copied

remedies

1.     Injunction= especially when continued conduct would cause the company ongoing harm this would prevent the former employee from

a.     Continuing use of the code

b.     Using the infringing logo

c.     Disclosing or using condifential info

d.     Manufacturing or selling the infringeing design

2.     Damages = the seek compensation for losses caused by the misuse with the amount depending on

a.     Nature of the infringement

b.     Losses suffered

c.     Relvant stat/common law rules

3.     Account of profits = requires the ifirnger to account for profits attiributable to the wrongful use

a.     Damages= claimaints loss

b.     Account profits= defendants wrongful gain

4.     Delivery up/destruction= make orders concerning infringing articles/materials

a.     Copies of source code

b.     Ifnirnging products

c.     Materials bearing an infringing mark

5.     Trademark remedies = seek to challenge the registration and or enforce its existing trademark rights

a.     If unregistered passing off may provide an alternative route subject to proof of the necessary elements