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.

New Zealand Marketing - - Contents -

Ev­ery­thing you need to know to stay on the right side of the law—and your

com­peti­tors.

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.

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