AJ PARK’S GUIDE TO IP
Who can claim what when it comes to intellectual property can be a thorny issue. And that’s why copyright is so important, says Simon Fogarty.
Everything you need to know to stay on the right side of the law—and your
Copyright applies to a wide range of works, including logo trademarks, product designs, photographs and written materials. You need to keep copyright in mind when you—or your business—are creating any of those things.
There are two reasons for this. First, you want to make sure you know who will own the copyright. Second, you don’t want to infringe someone else’s copyright.
Knowing whether you will own copyright is important. Copyright may be one of your key assets so you want to make certain that it is owned by the party you want to own it. Unfortunately, the rules about copyright ownership are not straight forward, so you need to be alert.
Certain copyright works—not all works—that an employee creates are owned by the employer. However, the copyright work must be created ‘in the course of his or her employment’.
That is, they must create the copyright work as part of their job. If you employ a lab technician and that person designs a trademark logo, they will probably own the copyright in the logo.
Likewise, if the copyright work falls outside the works covered by this provision of the Copyright Act, the employee will own the copyright. If you want to sell the business and the logo trademark is a key asset, then an ownership issue would be a serious problem.
People use third parties all the time to design logos, prepare written materials for brochures, or to provide photos to use on a website. You might think that if you pay someone to do any of those things that you will own the copyright. Unfortunately that is not the case. If you pay someone to take a photograph then under the Act you will be the first owner of the copyright. In contrast, if you pay someone to write text for a brochure they will be the first owner of the copyright.
Fortunately, the Copyright Act allows you to contract out of the ownership provisions in the Copyright Act. To avoid issues with employees, the employment contract should make it clear what a person’s role is so that you both know who will own any copyright works.
And, if the lab technician comes up with a brilliant logo, make sure that you buy the copyright off them at the start so you don’t run into problems downstream.
Similarly, when you pay someone to create a copyright work, make sure that contract says that you will own the copyright. If the person creating the work won’t part with the copyright, make sure that you get a licence to use the work.
If you see a product made by someone else that you like, don’t just copy it. Even if it isn’t protected by a patent or registered design, the Copyright Act gives 16 years of protection to product designs. This is different from many other countries that don’t provide copyright protection—or unregistered design protection—for product designs.
Another point you need to consider is whether to import and sell a product that you see at trade show overseas. Many manufacturers will supply products without knowing whether the product will infringe copyright in New Zealand.
If you see a late model design on offer at a trade fair you should consider carefully whether you might infringe copyright in New Zealand (or a registered design or patent for that matter). A quick search of the internet might give you a clue about how old the design is. If the design is less than sixteen years old and you start selling it here, you might get a nasty letter from their lawyers claiming that you are infringing copyright.