Intellectual Property Disputes FAQs

1) I have created an artistic work and want to use it, but my employer has told me that they own the copyright. What can I do?

2) I have bought a copyright work; does that mean I now own the copyright?

3) I have created a copyright work, how can I go about registering it?

4) I  have been asked to make programmes of a sporting event, what do I need to consider?

5) I have spent a long time creating a database and I am concerned that someone is going to use my design, is there anything I can do?

6) What is a design right?

7) I believe someone is using my design, what will I need to prove?

8) I have invented something which I believe has never been seen on the market before. What can I do to protect my invention?

9) I believe someone has been using my patented product in another country, and I have a UK patent, what can I do?

10) What is a Trademark?

11) Can I register my trademark?

12) I’m not sure I have the time or money to go to Court, is there any alternative?

 

1) I have created an artistic work and want to use it, but my employer has told me that they own the copyright. What can I do?

There is a presumption in the Copyright, Designs and Patents Act 1988, that any copyright in literary, musical, artistic, dramatic and film works created by an employee in the course of his/her employment will be owned by the employer, unless the employee and employer have agreed otherwise.

The definition applies to works created “in the course of employment”.  The position is different if a third party is commissioned to create a copyright work.  The person responsible for creating the copyright work, not the commissioner, is generally the owner of the copyright in the work, unless there is express agreement to the contrary. If you believe you will be in a position where this issue may arise, you should carefully review the terms of contract to consider the copyright position and seek to deal with it by way of express terms in the contract.

2) I have bought a copyright work; does that mean I now own the copyright?

Not necessarily, unless you are the first owner of the copyright, or the copyright has been transferred to you. For example, if you have bought a painting, you only own the copyright if that has been transferred to you. Equally, if you buy a copy of a book, then you have not bought the copyright to that book, or the images contained within it and by buying a CD does not give you permission to make copies, or play it in public. Again, the copyright position should always be considered and dealt with by way of express agreement, where necessary.

3) I have created a copyright work, how can I go about registering it?

There is no means to register copyright in the UK. In the UK, copyright applies automatically provided that certain criteria exist and are met. We can advise you how to seek to protect your copyright.

4) I  have been asked to make programmes of a sporting event, what do I need to consider?

Usually, you will need to ask the copyright owner for permission to use their copyright work by way of a license. A license is a set of terms and conditions for using the copyright work, including whether there is any fee (royalty) to use the work.

Depending on the copyright work, sometimes the owners act together to license certain uses of that work. Sometimes, licensing bodies can grant a license.

5) I have spent a long time creating a database and I am concerned that someone is going to use my design, is there anything I can do?

Databases can receive copyright protection for the selection and arrangement of the material within the database. There is also a right that protects the information being extracted and re-used from a database.

Database rights last for 15 years from making, but if it is published, the rights last for 15 years from publication.

6) What is a design right?

A design right is the right of ownership in the appearance of the whole, or a part of a product. Whereas a patent protects the way a product is manufactured or functions, a design right protects what makes the product look unique.

The owner of the design right has the exclusive right to reproduce the design for commercial purposes. A design right lasts for 10 years after you first market the article using your design (with a limit of 15 years from the date you created the design).

You need to register your design at the Intellectual Property Office and pay the registration fee.

7) I believe someone is using my design, what will I need to prove?

You will need to show that you have a registered design right, and the use of your design by someone else is an infringement of your design right. Alternatively, if the design is not registered, you may still have a claim if you have developed goodwill in the design. To claim damages, you will need to show you have suffered monetary loss, or alternatively, that someone has exploited your design and profited financially.

You may have an action for ‘passing off’. You will need to show that there is a risk of confusion for the consumer between your product, and that of the person who is using a similar (or the same) product/logo/name. In order to succeed in a passing off action, you will also need to show at least that your product/logo/name has goodwill (reputation) associated with it.

Finally, you may also have a claim for breach of copyright.

8) I have invented something which I believe has never been seen on the market before. What can I do to protect my invention?

If you fulfill a certain number of conditions, then you could apply to get your invention patent protected. A Patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. Once granted by the Intellectual Property Office, your protection will generally last 20 years.

Patent protections means that the invention cannot be made, used, distributed or sold without the patent owner’s consent.

There are a certain number of conditions which must be fulfilled before a patent is granted. These are:

  • It must be of practical use
  • It must show an element of novelty
  • The invention must show an inventive step which could not be deduced by a person with average knowledge of the technical field
  • Its subject matter must be accepted as "patentable" under law

In many countries, scientific theories, mathematical methods, plant or animal varieties, discoveries of natural substances, commercial methods, or methods for medical treatment (as opposed to medical products) are generally not patentable.

9) I believe someone has been using my patented product in another country, and I have a UK patent, what can I do?

Your solution will depend on whether you have applied for a patent in the country in which your invention is being used. If you only have a UK patent then this will not extend to worldwide protection. However, you can apply for a European patent which will cover you for most European countries or a Worldwide patent which covers almost 185 jurisdictions. Each has advantages and disadvantages so it is best to take specific advice on what is most appropriate. 

10) What is a Trademark?

A trademark is any sign you (or your business) uses, such as a business or brand name, or logo. A trade mark can be a word or words, an image, a colour or shape, a sound, a smell or a three-dimensional form, or any combination of these.

You may want to use the symbol ™ to show that you believe you have the right to use the mark, and will protect it.

11) Can I register my trademark?

Yes. You can register your trademark at the Intellectual Property Office. This will mean that you have exclusive use to your mark for the goods and services specified in your application.

To register your mark you have to show that it is distinctive, and not being used by someone else in your trade.

Registration lasts 10 years and may be renewed, and you may use the symbol ® if you want to.

12) I’m not sure I have the time or money to go to Court, is there any alternative?

You could consider bringing a claim in the Patents County Court. The Court aims to provide cheaper, speedier and more informal procedures to ensure that small and medium enterprises and private individuals are not deterred from protecting their rights by the potential costs of litigation.

The PCC multi-track has a limit on damages of up to £500,000. Costs orders will be made which are proportionate to the nature of the dispute and subject to a cap of no more than £50,000. The small claims track is for suitable claims in the PCC with a value of up to £5,000. Costs orders on the small claims track are highly restricted.

All the remedies available in the High Court are available in the Patents County Court including preliminary and final injunctions, damages, accounts of profits, delivery up and disclosure. In particular search and seizure (Anton Piller) and asset freezing (Mareva) orders are available in the Patents County Court.

If you believe that you may have a claim that could be issued in the Patents County Court, we advise you to seek legal advice.

For more information, please contact Gerard Cukier.

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