I.

Statutory intellectual property protection: Copyright, designs, patents and

trade marks
1. Copyright:
 Copyrights protect original works of authorship, such as paintings,
photographs, musical compositions, sound recordings, computer
programs, books, blog posts, movies, architectural works, and plays.
There are some things that are not “creative,” like titles, names, short
phrases, and slogans; familiar symbols or designs; lettering or coloring;
and mere listings of ingredients or contents. Copyrights protect
expression and never ideas, procedures, methods, systems, processes,
concepts, principles, or discoveries.

 Companies can be copyright owners as the law allows ownership

through “works made for hire” — works created by an employee
within the scope of employment or certain independent contractors
owned by the employer. Copyright law provides copyright owners with
the following exclusive rights (among others):
 Reproduce the work
 Prepare derivative works
 Distribute copies by sale, transfer of ownership, or license
 Perform or display the work publicly

 Works created on or after January 1, 1978, have a copyright term of life

of the author plus seventy years after the author’s death. For works
made for hire, copyright protection is 95 years from publication or 120
years from creation, whichever is shorter. Copyrights exist
automatically but you can enhance the protection by registering the
work. Copyright registration is not mandatory but allows copyright
owners to seek certain types of monetary damages and attorney fees.

 Notable exceptions to the exclusive rights are “copyright fair use” or

the use of copyrighted works that have fallen into the “public domain.”
As to the latter, in-house counsel must ensure any company copyrights
are kept current until they otherwise expire

2. Design
a) What are Design Rights?
 Design rights are a unique type of intellectual property rights
which protect designs. Designs can be 2D or 3D. There are two
types of design rights, unregistered, and registered. Typically, they
confer upon the rights holder a different scope and length of
protection over a design.
  Like copyright an unregistered design is a right that comes into
existence at the point when a new design is created. This imparts a
certain level of protection over a design at the point it is made.
Registered design rights typically last longer and protect more
aspects of a design.

 This is a bit like trade marks however unlike trade marks,

registered design rights are not examined at the point of
submission. This means it is important to make sure that your
registered design right application is correctly drafted to make sure
that it protects the key attributes of your design.

 Unregistered design rights protect the shape and configuration of a

designed object. Registered designs also typically provide further
protection such as surface decoration which would not be
protected otherwise.

b) How Do I Utilise Design Rights?

 There are many priorities when it comes to protecting designs with
design rights. The first step is to be aware that designs are
protected by their own IPR, (note: that in many cases designs can
also be protected though copyrights, and in some cases trade
marks).

 The second thing to do is to identify key designs that require

protection. You should seek to file these as registered designs as
this will give you the best protection and quickest course of
remedy should someone infringe your design.

 As mentioned above, whilst registered designs are a registered

right, they are not examined upon filing. As such it is important to
make sure that your design registration will protect your design in
the best way possible. This may not be immediately obvious to
non-experts. In many instances designers submit designs to the
IPO in the form they have created them (e.g. a .CAD file).
However, doing so often does not register the design in such a way
that it emphasises its key attributes as to ensure that they are
protected by the law.

 As such, preparation of a registered design should be considered as

an entirely different drafting exercise exclusive from the creation
 of the design itself.

c) What Happens Internationally?

 There are a few considerations to make if you are seeking to
protect designs internationally.

 The first consideration would be to ascertain the extent to which

your design is protected in its prior to any registrations in the
countries in which you operate – including where the design is
available and communicated to the public.

 As such you will want to have a look at these jurisdictions and the
general status of protection conferred by unregistered design rights
in these markets, as well as any protection that may be in place via
copyright or in limited cases, unregistered trade mark rights
(“passing off”).

 Once you have completed an intellectual property audit of your

designs exposure and protection, you will need to review whether
this is adequate and whether (and where!) design registrations can
plug any gaps in your protection. Key to this will be to look at
where infringement might occur, the a priori rights from
unregistered designs, the strengthened rights offered by
registration and any further ways that you might look to enforce
the uniqueness of your design.

3. Patents
 A patent is a government-granted monopoly to build, sell, and use
your invention (and prevent others from doing so). If you are
issued a patent, it’s usually good for 20 years; however, there are
some patents that are only good for 14 years. After 20 years, your
patent expires and anyone can copy, build,and sell your invention.
In exchange for the “monopoly,” you must disclose the details of
your invention to the public so that someone “practiced in the arts”
could recreate it. To receive a patent your idea must meet four
requirements:
 The subject matter must be “patentable” (as defined by
Congress and the courts).
 Your idea must be “new.”
 The idea must be “useful.”
 Your idea must be “non-obvious.”
 See Practical Law – Patent: Overview
  There are three types of patents you can file for:
 Utility patent – Utility patents may be granted to anyone who
invents or discovers any new and useful process, machine,
article of manufacture, composition of matter, or any new and
useful improvement thereof (good for 20 years).
 Design patent – Design patents may be granted to anyone who
invents a new, original, and ornamental design (good for 14
years).
 Plant patent – Plant patents may be granted to anyone who
invents or discovers and asexually reproduces any distinct and
new variety of plant (good for 20 years).

 Patents can be expensive to obtain and maintain, as there are

yearly or regular fees required to main them. And, like trademarks,
patents are only good in the country where the patent was granted.
So, in-house counsel must consider which countries and markets
require patent protection.

3. Trade mark
 A trademark can be any word, phrase, symbol, design, or combination
of these things that identifies your goods or services — it’s how
customers recognize your company in the marketplace. We tend to use
the term “trademark” generically as referring to both trademarks and
service marks. A trademark is used for goods; a “service mark” is used
for services.

 A trademark has many benefits, including:

 Identifying the source of your goods or services
 Providing legal protection for your brand
 Guarding against counterfeiting and fraud

 A trademark does not mean you own a particular word or phrase.

Rather, you own the rights to how that word or phrase is used with
respect to specific goods or services. Key to obtaining trademark
protection is the need to identify the specific categories of goods and
services the mark will cover. And, the company must actually use or
provide such goods and services in the chosen categories — or have a
good faith and demonstrative intent to do so.
II. Common law protection of intellectual property: Passing off, malicious
falsehood and breach of confidence
1. Passing offf
a) What is passing off?
 Passing off happens when someone deliberately or unintentionally passes off
their goods or services as those belonging to another party. This action of
misrepresentation often damages the goodwill of a person or business, causing
financial or reputational damage.
 In addition to straight passing off, there can also be:

 extended passing off - where misrepresentation of a particular quality of a

product or service causes harm to another's goodwill
 reverse passing off - where a trader markets another business' goods or
services as being his own
 Raising an action of passing off can help you to prevent other people from using
the goodwill associated with your business for their own benefit.

b) Elements of passing off

 To establish a claim for passing off, you must meet three key requirements:

1. Goodwill - you must prove that you own a 'reputation' in the mark that the
public associates with your specific product or service.
2. Misrepresentation - you must show that the trader has caused confusion and
deceived or misled the customers into believing that their goods and services
are actually yours.
3. Damage - you must prove that the misrepresentation damaged or is likely to
damage your goodwill, or cause actual or foreseeable financial or reputational
loss.
 Rights relating to passing off are established gradually with use. Goodwill in a
mark can be particularly difficult to define. The reputation and goodwill of a
business are generally considered as something that provides an identity to a
business and its goods or services, and distinguishes them from those of its
competitors.

c) Remedies for passing off

 If you are successful in a passing off claim, there are several remedies available.
You can:

 apply for an injunction to prevent the business from using your trade mark
or goodwill
 apply to have the infringing goods destroyed
 sue for damages or seek account for lost profit
  request an inquiry to establish loss

2. malicious falsehood?
a) What is malicious falsehood?
 Malicious falsehood is a tort or a civil wrong. Malicious falsehood
referred to an act of maliciously publishing dishonest or false statement
concerning the claimant, his business, property or other economic
interests, and that lead third person to act in a manner causing the
claimant pecuniary loss or damage. Malicious falsehood is also
commonly called as an injurious falsehood. Injury to reputation is not a
necessary element to this tort. The objective of the law of malicious
falsehood is to protect the commercial or economic interest of the
claimant. This law makes it possible to bring a cause of action against a
defendant where statement themselves are not defamatory and
defamation suit is not appropriate but words made are false and causes
damage to the claimant. Thus, malicious falsehood is an alternative for
a defamation suit.

b) Illustrations
 When a person makes a dishonest statement to the third party that the
chatter accountant has retired from his practice. As a result, he faces
pecuniary loss. Although the statement is not defamatory as it does not
suggest any degradable remarks about the chatter accountant but the
statement is false.
 When a company makes false allegation regarding its competitor’s
product as a consequence financial loss occurs. Therefore, the cause of
action in malicious falsehood arises against the company.
 When a person makes a false statement to third parties that the house of
the claimant is not available for the tenancy barring them to occupy the
house and causing damage to the claimant.

c) Essential elements of malicious falsehood

 There are four prerequisites to prima facie establish a case of malicious
falsehood (Palmer Bruyn & Parker Pty Ltd v Parsons (2001)):
 False statement: There shall be a dishonest statement concerning
the claimant or his business or profession or his property
 Publication to the third party: The defendant has published a false
statement to a third party
 Malice by the defendant: The statement was maliciously published
with the intention of causing harm to the claimant. Malice would
be proved when the defendant knew that the statements were false
 and the claimant will naturally face loss.
 Special damage: That the claimant suffered special
damage and such damage has followed as direct and
natural consequences of the defendant’s publication. In
legal term, special damages refer to actual economic
damages.

3.Breach of confidence:
 Breach of confidence is a tort that is committed when one person uses
information disclosed to them on a confidential without the consent of
the owner of the information.

 To establish that this tort has been committed , the following

requirement must be satisfied:
 The information is of a confidential nature; trivial information and
public knowledge are not protected.
 The information was given in circumstances where the obligation
of confidence was explicitly made known and accepted, or was
implied from the context.
 There has been an unauthorised use or threatened use of the
information.
 Duty of confidence
 When secret information is dealt with in a commercial setting it is
usually the case that an obligation of confidence is enforced by an
express contractual provision. These are called non-disclosure
agreements and are a standard business practice across many different
fields.
 If the duty of confidence is not expressly provided, there will in certain
cases be an implied duty of confidence. An example of where this
would arise is in an employment setting, as employees are considered
to owe an implied duty of confidence concerning trade secrets and such
like to their employers.