North Shore Wednesday Group
19 June 2019
Greg Ross
Partner
What is the pudding here for?
Guest Post: Is Christmas pudding – pudding?
What is “Intellectual Property”?
- Type of property right that covers intangible creations of the human intellect, as opposed to things like land or goods
- String of different laws and rules mostly limited territorially in effect makes overseas protection expensive – WIPO
- Best initially explained by some examples to be touched upon today:
- Copyright
- Trademark
- Patent
- Registered Design
- Trade Secrets
- Confidentiality obligations
What “Intellectual Property” Laws don’t do
- An “idea” is not protectable “at law” as intellectual property
- Protecting an idea is problematic but not impossible
- Often need action / registration
- Our laws only apply onshore, overseas local law (with some exceptions)
- No guarantee of making money from IP
Common Law v Statutory
- Protecting an idea is problematic
- We don’t have an equivalent of the USA’s Defend Trade Secrets Act of 2016
- Statutory protections quicker and easier to enforce than general law things like passing off or deceptive an misleading conduct
Account of profits available for breach of some statutory IP rights
Problems with Common Law Protections
- Protecting an idea is problematic
- Contracts
- Types of action to enforce / defend
- Cadbury Schweppes v Pub Squash
- Unlike some forms of statutory IP right, no worldwide enforcement system
Benefits of Statutory Protection for some types of Intellectual Property
Overseas registration can be of help but it costs
Formal “account for profit” remedies for patent and trademark infringement
Copright
| Nature | Length of copyright |
|---|---|
|
Literary, artistic, music and dramatic works |
“Mickey Mouse” Amendments following signing of US Free Trade agreement - 80 years from creation |
|
Also photographs, cinematograph films, sound recordings, performances and broadcasts |
Came into effect 1 January 2005
|
|
Copyright Act
|
Extends length of copyright in works still in copyright
|
|
Computer code
|
|
|
Protects an expression not an idea
|
|
Moral Rights
- Separate to Copyright
- Three types of moral rights
- Right to be attributed as author
- Right not to be falsely attributed as authority
- Right of integrity
- Art Gallery Canberra
- Original author retains moral rights even if employee
- Cannot be assigned or waived must obtain specific consent
Trademark
Common law and statutory
Can’t own common, location or mere descriptive words
Statutory much better protection
Local Registration but can apply to extend overseas (for a cost)
Word, style of word (font), logo,
Attaches to a business of some sort and protection relates to classes of goods and or services
The symbols to the right are more American than Australian but can demonstrate a claim
Patents and Registered Designs
Patents are grantedto protect any device, substance, method or process that is new, inventive and useful
Innovation (formerly petty) patents – granted up to 8 years
Very complex area
Standard patents – granted up to 20 years
Registered design protect the unique visual appearance of a product
Confidentiality (Non-Disclosure) Agreements
Best way to protect trade secrets – know how
- Restaurant client examples
- Recipes KFC – Coca Cola
- Business negotiations
- Franchise – operations manuals
Employees and Contractors
Who owns what?
Employees
If work produced in pursuance of employment contract, then employer usually owns copyright
Examples – lecture notes in universities
Students
Generally own what they create
Cannot use their work or reproduce it without written assignment or permission
Encouragement to attribute quotes etc
Contractors
Deal with it in the contract
Internet pitfalls – Copyright Especially
Need to educate people about
- Cutting and pasting from works from internet
- Attributing works to authors
- Illegal downloads especially music/video files
- Need to attribute when using extracts
Who, what, when, where and why [e.g. in contracts]
Who owns what IP – wise?
Who owns the product?
Identify all property involved – consider a schedule or register
IP – Copyright – processes – confidentiality – staff versus contractor impact on ownership
Can Contractor use it? License it ? Royalties?
Moral rights – the issue of consent – changes
Foreground and Background IP
Reflect your policy in contracts
Tips & Questions
- In a business, do an inventory of the types of Intellectual Property used, what is owned and what is licensed;
- Decide what need protection (and where)
- Have apt T&Cs to protect IP when dealing with customers and contractors;
- Where necessary deal with IP in employment contractsTo Conclude
The Pudding Story
Unlike KFC and Coca Cola which has over 1100 TMs registered
|
“ Our aim is to achieve successful outcomes TIMOTHY EAKIN |
|
|
The text of the slides and discussion |
Level 28 |
