2011 11 14 les licensing course

Intellectual Property Overview

Obtaining protection and scope of protection:

Protecting your company’s intangible assets

Wouter Pors

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Subject of protection - overview

InnovationTechnology developed by the company

Incorporated in products or services

Corporate identityCompany or division as such

Product and service look and feelProduct or service as such

Many different looks and feels?

Is the message still clear?

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Protecting innovation

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Subject of protection

PurposeProtecting developments

Others will not block you from use

Licensing portfolio

Cross-licensing

MeansPatents - obtained by application and grant

Copyright - ensues from act of creation

Know how - dependent on confidentiality

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Scope of protection

PatentsProtection of the invention, not just the actual useIdea behind the invention, but legal certainty for third partiesExpires after 20 years

CopyrightLimited to the actual product or format and Others that make the same overall impressionAssessed on case by case basis; national law still variesExpires 70 years after death of the maker

Know howScope hard to determineReal problem lies in proof of copying

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The company, the services

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Subject of protection

Innovation

Corporate identityIdentifying your company

Marketing your company

Creating goodwill (value)

Separate from competition

Product and service look and feel

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Subject of protection

Innovation

Corporate identity

Product and service look and feelIdentifying your company’s products and services

Marketing your company’s products and services

Creating goodwill (value)

Separate from competition

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Means of protection

Innovation

Corporate identityIndication of origin - collectively, granted by law

Trade name - through use in the course of trade

Trade mark - application and registration

Copyright - ensues from act of creation

Product and service look and feel

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Means of protection

Innovation

Corporate identity

Product and service look and feelIndication of origin - collectively, granted by law

Trade mark - application and registration

Design right - application and registration

- unregistered design rights

Copyright - ensues from act of creation

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Distinguishing yourself

Company, products, services

•Trade name•Trade mark•Design right•Copyright•Trade dress•Format

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Trade mark

Any distinctive sign identifying you and your products and services for your public

•Name•Logo•Colour•Sound

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Trade marks

Monopoly on distinctive sign for products or services

Harmonised European law

Acquired by registration (first come)

Choice between National and European Community

International: bundle of national rights

Must have distinctiveness (not descriptive)

Words, logo’s, shapes, colours, sounds

Perpetual, if renewed regularly

Works against confusingly similar younger signs

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Many uses for trade mark rights

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Many uses for trade mark rights

ECJ 20-09-2007, C-371/06, Benetton v. G-Star: a shape that gives value to a trademark cannot acquire distinctiveness through extensive use

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Baby-dry is distinctive

Not valid are signs which may serve in normal usage from a consumer's point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought. Furthermore, a mark composed of signs or indications satisfying that definition should not be refused registration unless it comprises no other signs or indications and, in addition, the purely descriptive signs or indications of which it is composed are not presented or configured in a manner that distinguishes the resultant whole from the usual way of designating the goods or services concerned or their essential characteristics. (ECJ 20 September 2001, C 383/99 P)

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But Postkantoor is not!

A mark consisting of a word composed of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, is itself descriptive of the characteristics of those goods or services for the purposes of that provision, unless there is a perceptible difference between the word and the mere sum of its parts: that assumes either that because of the unusual nature of the combination in relation to the goods or services the word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts, or that the word has become part of everyday language and has acquired its own meaning, with the result that it is now independent of its components. In the latter case, it is necessary to ascertain whether a word which has acquired its own meaning is not itself descriptive for the purposes of the same provision. (ECJ 12 February 2004, C-363/99)

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Design

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Design

Monopoly on shape of product or pattern on productHarmonised European lawAcquired by registration (first come)Choice between National and European CommunityMust be novelMaximum protection 25 yearsWorks against confusingly similar designsUnregistered design right

Protection for 3 yearsLess certaintyFall-back where no copyright can be invoked

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Design

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Design

Scope of protectionMultiple design registration to protect all features

Limitations on design rights: pitfallsRegistering new version of product only protects the changes

Technical features are not protected (trademark case before the ECJ: Philips v. Remington)

Must fit exception for parts

Way out: copyrightOn the design as a whole

On specific elements of the design

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Copyright

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Copyright

Monopoly on “a work”: text, design, lay-out, format

National law, partly European and world-wide harmonisationCopyrights for non-artistic works not accepted everywhere

Same goes for technical works

Automatic creation by making “a work” (proof of priority needed!)

Must be original and bearing the mark of it’s maker

World-wide protection if recognised (creative level)

Protection 70 years after death of the maker

Very broad possibilities

Works against copies and look-alikes

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Court of Justice: copyright protected work

16-7-2009, C-5/08, InfopaqDatacapture process

Reproduction of press articles by means of an automated process in which these articles are scanned and converted into a numerical file, which can then be processed electronically

Electronic collection of newspaper clippings

Fragments of 11 words from an article are reproduced

Elements which are the expression of the intellectual creation of the author of the work, may be just 11 words

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Application of copyright

Traditional: text, music, theatre, film

New application

Trade dress

Software, designs, objects for everyday use

TV programme formats

Business method formats

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Copyright: trade dress

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Design vs copyright

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Patents vs copyright: technology

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Patents vs copyright: technology

Exception for technology as such

Dutch Supreme Court 24-2-2006 TechnipKinetic scheme of chemical equations as part of computer simulation program for petrochemical industry

Selection relates to objective scientific data and laws of nature, scientific or technical purpose

Original and expression of intellectual creation of the maker

Selection base on scientific or technical knowledge of the maker, insights and experience

Court of Appeal: protection

Scope of exception is limited

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Patents vs copyright (business methods)

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Patents vs copyright

US: anything under the sun made by man is patentableBut: in re Bilski, 30 October 2008

Europe: only technical inventions, no business methods

Copyright: once again the solution to provide equality of investment protection between US and Europe?

However: does not protect the purely technical solution, “look and feel” have to be added

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Copyright: format protection

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Copyright: format protection

Well established: TV-programmesDutch Supreme Court: Una voce particolare

New: business methodsDistrict Court The Hague 27 April 2005 Referendumwijzer

What is the strategy?Situation unclear

Case law still developing

Completely accepted in business in media sector

Might fill the gap for investors

Prepare in case this confirmed in the courts

File evidence of the creation of the format and its priority

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Copyright: format protection business methods

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Develop a strategy

What exactly are your assets?What are their distinctive features?Which rights should you invoke to protect those?What actions need to be taken for protection?What is your market and where will it go?Don’t take a national approach, rights may vary!Which competing rights are surrounding your assets?What can you afford to invest?How can you postpone investments?

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Exploiting your protection

Building a licensing strategy

What about transfer pricing and taxation of royalties?

Which legal entity should be the right owner and where should it be?

Allocate the investments to the right owner!

Beware of competition law issues

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Defending your investment

Are you prepared to litigate?

Pro-active, aggressive or defensive approach?

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Participation of licensees

License agreements

Involving licensees in your business strategy

Non-circumvention

Sub-licensing authority

Active monitoring of infringements

Common approach towards infringements

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Wouter PorsBird & Bird The HagueVan Alkemadelaan 700

PO Box 303112500 GH The Hague

T: +31 (0)70 353 8825 F: +31 (0)70 353 8882 M: +31 (0)653 293 896

E: wouter.pors@twobirds.com