FAQ – Intellectual Property & Entertainment Law
1. What is Intellectual Property?
Intellectual Property (IP) refers to a collection of legal rights over various creations of the mind ranging from new inventions and artistic works to symbols and names used in trade. It can also refer to information that is of competitive value to a business. Frequently encountered categories of IP rights include: copyright, trade mark, patent, industrial design, confidential information and trade secrets.
2. I am about to start an (online) business. What do I need to know?
In Australia, to own a website you must first register that website domain name with an authorised registrar. Once registered, you will own the domain name to that website. However, it is important to understand that this does not mean you own the trade mark for your domain name – if your domain name infringes on someone else’s IP it could be taken down. It is crucial that you ensure your domain name, business name, logos, graphics and other links on your website are not someone else’s IP. Always check the source of the content if it is not something you yourself created. If it is not your own, you will need to obtain adequate legal permissions to use the content before you can post it to your website.
3. Is a business name registration enough to protect my new business name and will my business name be protected overseas?
Having registered a business name in Australia does not offer any protection overseas. In fact, even in Australia simply registering your business name with ASIC will offer very limited protection from others trading under the same business name as you. While companies cannot register two identical business names, the same restriction doesn’t apply to non-companies (ie unincorporated entities or sole traders). For non-companies identical business names will only have a clarification of the different ABN details on the register. This means logos or words (including your business name) are left unprotected and other traders may use them to offer goods and services that may be yours, or very similar to yours. This is why it is important to consider protecting your business name and icons under a registered trade mark. To protect your business name in Australia and overseas, you must register your business name as a trade mark both in Australia and every country where you carry out your business. An international trade mark application may be useful in allowing you to obtain trade mark protection in several different countries with one application to IP Australia. For the list of countries participating in the international trade mark system see: http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf
4. I went on a trip to the USA, saw a great business name/business concept and want to use it in Australia. What should I be aware of?
You should always be aware that using something identical or similar to what someone else is using is risky as you could be using someone else’s IP. Increasing globalisation means even overseas concepts and ideas may be protected in Australia. A business name, image, or concept that you see in USA may be registered as a trade mark in Australia. Even if it is not registered as a trade mark in Australia, it may have sufficient fame and reputation here (sometimes referred to as “spill-over reputation”) to sustain an action against your use of the name or concept. The overseas trader may also have copyright rights in the images or texts used which are automatic and internationally recognised under international conventions, namely The Berne Convention (1886)
5. I want to buy a business, how do I ensure that the reputation/good will is protected? What am I actually paying for?
Buying a business can mean buying a whole range of different things. What you are buying may include: the physical location of the business or lease, the working capital (such as the equipment, machinery and/or furniture of the business), and ‘good will’ or reputation and other intangible aspects of a business that make up its commercial value. IP falls within the last two categories. These assets include: copyright material, confidential information such as client lists and supply lists, rights under contracts concerning IP or rights under IT contracts including warranties and indemnities, registered business names etc.
When buying a business it is critical to ensure that all rights in IP belonging to the seller are transferred to you as the purchaser. For example, to be able to continue using the name of the business upon purchase you need to ensure that the vendor has transferred it to you on the ASIC register. If the business has any registered trade marks, these must also be properly assigned to you. There may also be confidential information like customer and supplier lists as well as copyright in various texts and artistic works that you may need to use once you take over the business. Without getting good advice and ensuring you have bought these IP rights, you may end up with just bricks and furniture – probably far less than you bargained for!
6. I am selling my business. What have I got to sell?
As with buying a business, selling a business can mean selling a whole range of things. What you are selling may include the physical location of the business or lease, the working capital (such as the equipment, machinery and/or furniture of the business), and ‘good will’ or reputation and other intangible aspects of a business that make up its commercial value. You also need to consider the value of IP rights, trade marks, confidential information such as customer and supplier lists as well as copyright in various texts and artistic works owned by the business.
7. I have a great name that someone else wants to use…
If you have a great name for your product or business that is certainly something worth protecting. The best protection is early registration of your name as a trade mark – anyone else who then wants to register a trade mark similar to yours will not be able to do so unless they can show honest and concurrent use or prior continuous use and withstand other grounds to opposition to their registration that would be available to you. However, having registration without actually using the registered trade mark will leave you vulnerable to an application to have your registration removed for non-use and also decreases your ability to prevent infringement. The prudent motto to bear in mind with respect to your trade marks might be expressed as “use it or lose it.” If on the other hand, you find that someone else who wants to use your name has already registered it as a trade mark, it will be up to you to defend your right to use by showing honest and concurrent use or prior continuous use.
8. I have been using my business name for 20 years and have just discovered someone is using the same name. What do I do?
What you do in a situation like this will depend on exactly what IP rights you hold in relation to the business name that you’ve been using. If your business name has been registered as a trade mark, you are able to take action for trade mark infringement under the Trade Marks Act 1995. If successful in this action, the court may grant an injunction legally stopping the use of your trade mark by the other person, and/or monetary compensation for the infringement. However, it must always be remembered that your rights to protect your trade mark from the infringement by others are not dependent on registration alone. A registration without actual use of the trade mark registered may make it harder for you to fight infringement. For example, the other trader may be able to defend the infringement by showing earlier use. They may also seek to apply to remove your registration for non-use.
If, on the other hand, your business name is not a registered trade mark your options will depend on whether the other person has registered this same name as a trade mark. If the other user has registered the trade mark you will have fewer options. However, you may still be able to get some form of limited or conditional registration either by negotiating an agreement with the other person or being able to show either honest and concurrent or prior continuous use to IP Australia. If they have not registered, you would have the opportunity to register first and secure your rights subject only to any successful opposition to your registration. You may also have other options outside the trade marks system. It is therefore important to get thorough legal advice.
9. I want to use a simple generic name. Should I? Why not?
A simple generic name can often be a great description of exactly what you do in your business and this certainly has the benefit of directness and clarity. Despite these initial benefits, however, a simple and generic name may mean that your business may not be able gain the legal protection that it might need. If your business develops a reputation in the market for its excellent goods or services this business goodwill could, through confusion or a lack of differentiation, be lost to other traders with a similar generic name. The usual protection found in consumer laws for misleading and deceptive conduct would be difficult to apply where the other traders are simply using generic and descriptive names for their own businesses. It would also be difficult to get trade mark protection as a simple and generic name is likely to contain words that other traders would likely want to use to describe their similar goods or services. You would have few options for protection other than trying to prove to IP Australia that your generic name had developed a distinctive reputation in the market. This can be extremely difficult to prove. Therefore, when thinking of a business name a generic name may not always be best. If you are thinking of using a simple generic name, it may be best to get legal advice about what supplementary protection may be available to you.
10. Is a domain name a trade mark? What protection does owning a unique domain name give me?
A domain name is not a trade mark unless it is registered as a trade mark. Ownership of a domain name simply ensures that identical domain names will not be available to others. In the case of similar domain names your level of protection will depend on various factors including just how unique your domain name is. This is because the more unique and unusual a domain name the easier it becomes to establish a higher level of reputation in the market and show that the use of a similar domain name to yours is “misleading and deceptive” to consumers. Registration of the domain name as a trade mark will have the advantage of formalising your right to use the domain name and prevent others from using similar domain names. However, once again, registration as a trade mark will be denied to domain names that are common words and expressions that others may wish to use in connection with their goods or services.
11. Who owns my website?
In Australia, to own a website you must first register that website domain name with an authorised registrar. Once registered, you will be the legitimate registrant (holder) of that domain name to that website. However, it is important to understand that this does not mean you own the trade mark for your domain name – if your domain name infringes on someone else’s IP it could be taken down. It is crucial that you ensure your domain name, business name, logos, graphics and other links on your website are not someone else’s IP. Always check the source of the content if it is not something you yourself created. If it is not your own, you will need to obtain adequate legal permissions to use the content before you can post it to your website.
12. Someone is trying to register my business name as a trade mark – what do I do?
Your options will depend on whether your business name is registered as a trade mark or not. If your name is registered as a trade mark and their name is not, you can oppose their registration on various grounds under the Trade Mark Act 1995. If you do not have trade mark registration, you need to act quickly and register at the earliest possible date. This can be done expediently through a HeadStart application which can allow you to get an express assessment. If you are late and the other trade mark similar to your name is registered you will face the more difficult process of obtaining registration through the honest and concurrent use exception subject to you being able to prove such use.
13. I developed software whilst at work and the employer wants to claim ownership. What do I do?
In the context of employment, the ownership of IP rights are typically governed by the employment contract. In the absence of any express contractual provisions, the ownership of IP rights will follow the default positions as set out in the relevant legislation such as the Trade Marks Act, the Patents Act 1990 and the Copyright Act 1968. An employer’s right to a patent, for example, where the employee’s invention was invented in the course of employment will not be automatic but will depend significantly on the nature of the employee’s duties in relation to the nature of the invention. When it comes to copyright over such works as texts, music, building plans or computer software, the employer will own the copyright in a work produced by an employee in the course of employment. The problem that often arises though is whether the copyright work came about in the course of employment. Important factors that may determine this include:
– the conditions of employment
– the relationship of the work to their employment
– the degree of control over the work of the employee
– the equipment used to produce the work (personal or work equipment)
Ultimately though any express term of the employment contact or confidentiality agreement will override the default position.
Having legal advice on the IP issues in the contract of employment before signing can be critical.
14. I have an idea I want to communicate – how do I go about it without someone stealing my idea?
An “idea” itself is not capable of being intellectual property unless it fits into one of the recognised intellectual property rights recognised by law. The content of the idea is key in determining this. If the idea is an invention which has not yet been made public or used you may be able to obtain a grant of patent over it which would give you exclusive rights to exploit your invention such as selling it, hiring it or otherwise using it and preventing others from doing the same for a total period of 20 years. As one of the key requirements for being able to register a patent is that it has not previously been publically disclosed (a definition which encompasses even one disclosure to a third party not bound to confidentiality), it is crucial to ensure that all communications are made subject to strict and clear confidentiality agreements.
If the idea is not an invention it may still be protected as confidential information or a trade secret. Such protection would require that the information is in fact really confidential – as opposed to common knowledge – and is communicated with clear indications that the communication is in confidence. A confidentiality agreement is usually used to ensure this result. Confidentiality agreements can also be used to make the necessary communications to third parties for the purposes of conducting trials or market research and product testing without losing rights or otherwise jeopardising your intellectual property rights.
You may also be able to protect the way your idea is expressed – whether it be a text, an image, film, sound recording or other recognised form. If you are the author of any of these expressions of your idea you may have copyright rights. Copyright is automatic upon publication and does not need to be registered. You should however ensure that you do hold the copyright by getting legal advice and protect your copyright by keeping proper records of your work, displaying warnings and recognised markers on it and only allowing others to use it upon the execution of proper legal agreements like an assignment or licence of copyright.
If the idea is a name which you want to use in the course of trade or business, you would need to apply for trade mark registration.
15. I have been using my domain for over 5 years now someone in the US has sent me a request to take it down through auDA/ICANN? What do I do?
Domain name disputes are becoming an ever more common phenomenon in the highly globalised and digitalised era of trade and commerce. Domain name authorities such as auDA (.AU Domain Administration) Ltd and ICANN (Internet Corporation for Assigned Names and Numbers) have specially developed dispute resolution policies and procedures which provide a cost-effective avenue for managing disputes over domain name entitlements. Even if another person’s registration of a domain name was originally approved you may still be able to dispute it. If your domain name is identical or confusingly similar to another’s or infringes on their registered trade mark the other user may be able to have your domain name registration immediately transferred if they are successful in their claim. To protect yourself you should always ensure that you do not use domain names made up of another entity’s registered trade mark and trading names and acquire your own trade mark protection where possible. This can be done through the availability of searches of both registered and unregistered interests. You should also be careful when picking your domain name by ensuring it is not likely to be deceptively similar to another domain name especially where it is in respect of similar information, goods or services.
16. What is copyright? Do I have it?
Copyright refers to the legal rights and protections over various forms in which ideas, concepts, and information are expressed, but not the ideas, concepts and information itself. Copyright exists in a vast variety of forms often called “works” including texts, images, tables, graphs music, computer software programs, performances and other forms often referred to as “Part Four Subject-Matter” including films, sound recordings, and television broadcasts. Copyright protection does not require registration or any other application to be made. In the case of works, it arises automatically upon the creation of an original work. The same applies to “Part Four Subject Matter” minus the requirement of originality. Without there being a searchable register of copyright materials, the often used symbol indicating copyright “©” is a helpful tool that can be used to protect your copyright by signalling a warning to others, but it is certainly not required in order for your work to be protected.
In most cases the author is the owner of copyright, however this will not always be the case. For example, for sound recordings the copyright belongs to the person who was the owner of the record on which the recording was made. In the case of a film it will be the person who made the necessary arrangements for the making of the film. Also, if an author created the copyright material in the course of their employment, the employer will be the owner under the Copyright Act 1968 (unless the employment contract expressly provides otherwise). There are also special rules about ownership of copyright in relation to commissioned materials which in cases of portraits, engravings, photographs for private or domestic purposes and for value sound recordings will be owned by the person who commissioned the production of the material.
If you are thinking of making your material public or using material as part of your business or commercial venture you should get full legal advice about the potential copyright issues applicable to your situation.
17. What can Carroll & O’Dea help you with?
At Carroll & O’Dea we have an experienced and caring team of IP lawyers who understand how important protecting IP is to your business or organisation. We have extensive experience in managing IP issues in the private sector and not-for-profit sectors both in Australia and overseas, and can help you with:
– Strategic and cost effective legal advice on local and overseas IP protection of all components of a brand including trade marks, copyright material, domain names and social media;
– IP issues arising in various business transactions including corporate sales or acquisitions and restructures;
– Assignment of IP rights including due diligence assessments of a vendor’s intellectual property;
– Licensing and joint development of IP rights
– Enforcement of IP rights;
– Due diligence assessments to identify your specific intellectual property and assist in the development of intellectual property management plans;
– Advice on IT outsourcing agreements particularly in relation to data privacy issues and transition our arrangements.