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Intellectual Property Lawyer

When dealing with IP, it is crucial to understand it from a non-contentious and contentious perspective. In other words, you need to know how to identify, register, monitor and exploit your IP but you should also understand how to plead your legal claims in court if you need to enforce or defend your IP.

Identifying the right type of IP to rely on in a court case is critical in enforcing or defending your IP rights, especially where you have alternative IP claims from which to choose.

Suppose you do not correctly protect the appropriate IP. In that case, you may find that the court or tribunal strikes out or otherwise rejects your case.

Losing in your attempts to defend your IP in a contentious dispute will open your business up to a very high loser’s price tag which could be avoided by identifying and protecting your business's IP appropriately early on in your business life cycle.

Types of Intellectual Property Protection

The first step in enforcing your intellectual property rights is determining the type of intellectual property you are protecting in your business. Is the intellectual property in your business best protected as copyright, trademark, trade secret or confidential information?

We offer dedicated IP claims services in the specific areas of copyright, passing off, trademarks, patents, design rights, database rights, and IP-related practice areas of technology and entertainment law.

We focus on all aspects of media law including, modelling, and TV, and have successfully handled several online intellectual property-related domestic and international disputes.

Strictly speaking, it is incorrect to classify confidential information as intellectual property. However, lawyers often treat confidential information as part of intellectual property. Lord Neuberger's (Master of the Rolls) judgment in Stephen John Coogan v News Group Newspapers Limited and Glenn Michael Mulcaire (and a conjoined case brought by Nicola Phillips) [2012] EWCA Civ 48 makes the argument that confidential information should be classed as IP in detail.

Not identifying and protecting your IP appropriately is dangerous, especially if you seek to rely on claims based on ownership of the relevant IP in intellectual property proceedings.

Wrongful use of trademarks, copyright, trade secrets and confidential information, are routine matters that you will encounter in almost every small business.

Defending intellectual property infringement

Unfortunately, IP infringement is a typical problem faced by all entrepreneurs. However, the know-how of enforcing or defending intellectual property rights is specialised.

Entrepreneurs are always at risk of not being able to protect their intellectual property. Typically entrepreneurs do not understand in depth the legal distinctions between intellectual property types and the rights and limitations of each of them.

It's essential to consider what type of intellectual property you can protect in your business and manage them effectively. The operational decisions that involve IP when running your business include: hiring staff, running a course, uploading photographs to your website, or providing information to other parties about products or service components in your business.

Many entrepreneurs do not own the intellectual property in their business that they think they own. They have not identified and protected the potential intellectual property in their business, thereby leaving themselves open to others being able to use their intellectual property assets with impunity.

One of the costliest IP mistakes entrepreneurs can make is not protecting their rights in works appropriately. For example, when you hire an outside source to create something for your business or collaborate with a partner or affiliate business, you do not necessarily automatically protect any work that might be capable of being intellectual property. You need to put in place specific procedures including registrations, and explicitly state the status of a particular work product or creative work(s) in the service contract.

It's not only graphics, photographs and other content that businesses must worry about. Companies can open themselves up to having their intellectual property stolen simply by hiring a new consultant who lawfully uses their information outside of the business because the employer did not adequately protect the information or work.

A new employee could steal trade secrets or critical information from his prior employer and use them to benefit his new company without any legal sanctions because the previous employer did not adequately protect the information.

Whether copyright, confidential information or trade secrets apply, protected material must be protected appropriately. Anything short of proper protection could land your business in hot water from IP theft, which can have serious reputational and financial consequences.

Trademark

A trademark can be defined as any sign used to identify the source of the goods or services related to it, whether registered or unregistered and the associated devices and get-ups. Words, logos, sounds, shapes, multimedia, motion and holograms can all be trademarks. Even smells are considered as potentially capable of being a trademark. S1.1 of the Trademark Act 1994 substituted (14.1.2019) by The Trademarks Regulations 2018 (SI 2018/825), regs. 1(1), 3 (with Pt. 5) sets out the formal definition.

There are points at which trademark overlaps with copyright. At times individual works will contain aspects that can be protected by trademark or copyright. Sometimes parts of creative works can be protected by trademark and copyright.

Copyright can protect the artistic and literary aspects of a business logo which the business uses as a trademark. Companies can also use trademarks to protect unauthorised use of their logo. In theory, any written words, symbols and numerals should be protected as a literary work under copyright law.

However, most countries, including the UK, do not accept names and titles as capable of copyright protection. Over the years several famous trademarks, such as Exxon have been held by the courts as not being capable of copyright protection.  But this does not mean short words or phrases cannot be capable of copyright protection. Short words or phrases can be protected by copyright if they demonstrate sufficient creativity and originality.

Trademark lawsuits can overlap with copyright lawsuits because they can sometimes be a viable alternative to a copyright claim.

A recent example is Cormeton Fire Protection Ltd v Cormeton Electronics Ltd 18 January 2021 IPEC, where the claimant alleged both copyright and trademark infringement concerning the defendant's use of the word CORMETON. The famous Jif Lemon case is another example of trademark and copyright lawsuits overlapping.

You will need to decide with your legal representative which type of IP is better to claim under if the subject matter overlaps between trademark and copyright law.

Copyright

If the stolen asset you are complaining about concerns original literary, dramatic, musical, and artistic works, you can sue for copyright infringement. Copyright works include literature, drama (tv, film, theatre, mixed-media), music, video, architecture and computer software.

More formally, automatic copyright protection is conferred and exists in the following depictions of original expression: original literary, dramatic, musical, or artistic works; sound recordings, films or broadcasts; and typographical arrangement of published editions.

Copyright just about covers anything creative, so if you are an artist, photographer, designer, writer, editor or publisher, then copyright is bound to apply to your business. But copyright is so broad in scope that it applies to things that you wouldn't necessarily expect it to apply to such as websites, computer games and apps.

There would be copyright in the graphics and frames generated in the game as artistic works in a computer game. The design notes and computer software would be protected as literary works and the game itself as a dramatic work.

The diverse breadth of the application of copyright makes it so fascinating that it can apply to things from the sublime to the ridiculous. Copyright applies to architecture, fine art, textiles, and sandwich toasters, but people have also tried to apply it to bizarre things like a yoga position. 

Original expression and creativity in the work are the litmus test of whether the work is capable of copyright protection.

As well as being an original expression of an idea, the work must contain a sufficient degree of creativity and be recorded in material form to be copyright protected. 

Confidential Information

Confidential information can be any information that satisfies the three-stage test that is based on case law. First, there must be a quality of confidence to the information (see Coco v AN Clark (Engineers) Ltd [1969] RPC 41 at 47). Secondly, the discloser must give the information in circumstances that give rise to an obligation of confidence. Lastly, there must be an unauthorised use or disclosure (either actual or threatened) of the confidential information which has or will cause a detriment to the party communicating it.

Trade Secrets

The law on trade secrets in the UK is governed by The Trade Secrets (Enforcement etc.) Regulations 2018 (the Regulations). S 2(a) of the Regulations define trade secrets as a secret that is not generally known; has commercial value due to its secrecy, and has been subject to reasonable steps to keep it a secret.

Consequences of intellectual property infringement

Intellectual property is not esoteric in the sense that you must belong to a secret society of specialists to understand it. However, you need to specialise in IP to have a good understanding of how it works.

Failure to appreciate the complexity of IP rights can have severe consequences for businesses, including reputational and financial damage.

IP rights violations left unchecked could lead to companies with bad reputations passing themselves off as being associated with your business.

Further, if your business ever tried to enforce IP based on a wrongly defined or poorly managed intellectual property asset, along with insufficient knowledge of the legal doctrines that underpin IP, you would almost certainly fail.

If your business suffered from repeated theft of know-how or creative assets, it could result in your business's complete failure. Even if your company does not fail, several accidental or malicious violations will lead to financial and reputation damage.

Several decisions have gone against the claimant because of reliance on inappropriate  IP rights.

An excellent recent example is the EUIPO finding regarding the street artist Banksy and the Banksy's "flower bomber" image, in which a protester is throwing a bunch of flowers. Banksy attempted to use trademark law to protect his artwork. Banksy's claim failed. A full copy of the decision is here.

The EUIPO made it clear that Banksy should have sought to enforce his automatic copyright protection for his work as his reliance on trademark law was in 'bad faith'.  

Banksy's failure to protect his artwork shows the merits of bringing a claim under the most appropriate type of IP.

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