Ask the lawyer about IP
04 September 2011
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27 Comments
Tim Riley from Dominion Law answers your questions about intellectual property, trademarking and other things copyright related as part of this month's Generator.
Check out Tim’s answers in the comment box below and read his articles and exercises on Demystifying IP.
Further reading:
Comments
Ok, welcome everyone, let's be having your questions! (Having said that, I am now heading out of the office for around an hour and a half)
Hi Tim
If I have a piece of digitized music that I've created, will the date and time stamp within the file be sufficent proof of ownership/composition.
As in, I've chucked a song on the net, and a month later someone else is claiming it to be theirs.
Cheers
Hi Les,
To evidence ownership, you need to be able to trace the file to you/your computer. I assume this can be done? I am a little IT illiterate, but there will be a traceable record of you uploading the file in the first place and where from? The date and time stamp establish when your copyright first came into being, so provided you can link the file to you, then that will prevent anyone from claiming they created the music subsequent to that. What do the date and time stamp record? Is it when you first saved the file?
Not much comfort but the fact someone wants to claim it has got to be a compliment...
Kia ora Tim,
I have a query from my perspective as a writer looking at the position of intellectual property protection for fictional characters that have been created by the writer.
I have heard of the distinct delieation standard in terms of intellectual property, and wonder if it applies in New Zealand.
The distinct delineation standard rests upon the assumption that the more developed a character is, the more it embodies expression and less a general idea.
The more highly developed a character is the greater intellectual property protection will be given to it as the character(s) created is "sufficiently delineated" from stock characters.
Appreciate your thoughts and comments.
Na,
James
Kia ora James,
Yes I would agree with that. It's a general rule of copyright that the more detail you have created and written down, the more protection you have. That's why I always tell writers/directors submitting ideas/treatments to producers to put as much detail down on paper as they can. It goes against the grain a little as some people feel a need to keep things secret. But the reality is, because copyright protects the expression of the idea, not the idea itself, the more you can express it, the more protection you will have. (Sorry, just re-read your question and see that you are already accross the expression/idea distinction).
So yes, you are right on the money.
Kia ora Tim,
Thanks very much for that. I have no shortage of detail, documentation and reference imagery. Apprecaite your reply.
Na,
James
Hi,
Hmmm... my art work was stolen and put on a range of shirts for a large company in the UK, I found out about it and called them out, but they have been unresponsive since the first few emails (after me asking for adequete compensation for what they did). The same thing has happened to me a few times before with Aust and NZ companies (and we came to agreements), but now it's with one in the UK I don't know what rules apply... are there lawyers who work specifically with artists? How do the laws from NZ-UK? What can I do to get compensation for what they did with my work?
If you have any ideas... thanks!! :)
Hi Sarah,
This is something that many people have to face - ie, "what the #@$% use are legal rights if they just get ignored?!"
Your rights in the UK are the same as here due to conventions between NZ and the UK (and most other countries). But the problem for you is enforcing those rights. If you are getting ignored by the infringer, the next step is formal legal action in the courts. But no doubt you don't have a spare 20,000 pounds lying around to hire lawyers in the UK...And the company no doubt thinks "hey, what's she gonig to do about it in NZ".
Publicising someone's infringing behaviour can sometimes work, but again, it's not easy to generate publicity in another country where you don't have the range of contacts needed to get it going.
Sometimes, when companies won't respond as in this case a strongly worded lawyers letter can make them take notice. There is no guarantee but it's often worth a try. And yes, there are lawyers that work with artists. I do, for instance....
Thanks for the reply Tim.
Yes, $20,000 is rather a lot of money. It's a fairly blatant rip of my art, and I have a lot of evidence of this... would the company have to pay my legal fees as well as their own, assuming that I won againstthem?
A strongly worded letter from a lawyer could be a good option, I've been looking around for lawyers but I have no clue really where to begin. If you were interested in this or know someone who might be able to do this perhaps we could discuss by email?
Yes, you get costs if you win (although it is never as much as you actually pay).
Get in touch with me by email - tim@dominionlaw.co.nz and we can discuss further.
Hi Tim
Hows it bro? I just found this page by accident... When I saw your name. Just stopping in to say Hi
Cheers
Brendon T
Hi Brendon, and I promise you I am going to look at your script....this weekend!
All goods bro, take as long as you like no hurry! cheers
Hi Tim
I have been a subscriber of the Big Idea and have received the recent email with your blog etc.
We have an issue with an American company using our trademarked name here in New Zealand where we have trademarkered it for our own use. We have asked them to cease and have suggested a unilateral agreement but they have completely ignored us. There is some background to this situation but the essence of it involves a big brother attitude(ie USA) over little brother(NZ, us) mentality as we are much smaller and run our start up business as a charitable trust.They have recently advertised their workshops,classess here in NZ using the name in question. We are in the same line of work so there is no question what they are trying to do. They prevented us from using the Trademarked word on a internet radio show we were hosted on each week earlier this year, even though our host was in Canada and we were broadcasting from NZ?? We spoke to the BlogTalk radio personnel about this via email and provided them with our TM documents, but they ignored us also.This USA company also used Blog Talk Radio and would use the name freely however.We have suggested a unilateral agreement then also but they have not responded.
We have emailed them about their recent wording advertising here on Aug 11 and now have a draft to send Sept 15 but before we send it we thought it would be best that we get some guidance here.They know we are smaller seemingly and I suspect they are relying on that to walk all over us. We are not happy with this and do not want to bow down anymore.
Can you advise us in this situation?
Warm Regards
Heather Reiss
Ascension Explorers
ascensionexplorers@gmail.com
Hi Heather,
I am assuming this company has the same mark registered in the US? Even so, I don't so how they could prevent you using the name in Canada. Mind you, I assume the internet radio show was available to subscribers in the US, and if they have US registration they could object to this.
In any case, as you have registration in NZ you can prevent them using the name in connection with services offered here. If they are ignoring you I recommend you get a lawyer to write to them with a "cease and desist letter". I am happy to help with this and if you would like to discuss further with me you can contact me direct at Dominion Law.
If you have prior use of the name you can in some circumstances get them removed from the US register (again, assuming they are registered there). But this of course is costly as it involves instructing US lawyers.
cheers,
Tim
Thank you Tim. We will make contact with you.
Cheers
Heather
Hi Tim
I tried unsuccessfully to register a business trade name with IPONZ - the word was a common usage word so it was rejected - as you mentioned in your article. So what can I do next to protect it?
And nice knowledge sharing by the way!
KB
Hi Kathryn, nice to hear from you. Bout time we caught up for a wine...
You could spell it differently and apply again for registration, but if you want to retain the common spelling your options are limited. The other usual avenue of protection is under the law of passing off. There's not really anything you need to do to gain that protection, but the longer you have been using the name and the greater it's public connection to you, the more likely you are to be able to protect it. So the more successful you are at marketing the name and establishing a successful business around it, the more protection you will have.
The other thing you could do is design a logo using the name and register that as a trade mark device (trademarks are either "devices" or "words"). That won't protect the bare use of the word though, but it does help to establish the connection in the public eye. Take Yummy Apples for example. They would not be able to register the word, but they do have a registration of a logo containing the word. And in my mind I definitely associate the word "yummy" with that company. [Disclosure - Jodie's dad works for that company so I am probably more than usually familiar with it].
Thanks Tim - firstly - yes wine! And secondly thanks for the excellent advice the logo option perfect. x
Hi Tim
Last year I was commissioned by an art consultant to make (text/image) a substantial catalogue of art works and their condition. My contract states that I'm to be paid monthly for hours worked and I have issued four invoices with zero result, after the last one he promised he would pay me for the full amount of the job this month but I know he won't - to get paid for another job I did at the same time for him I had to Small Claims Court him. He has sold the catalogue on to the client as his own work. Is this a breach of my copyright or simply a debt collection issue?
Cheers
Kelly
Hi Kelly,
Normal rule is the commissioner owns copyright, but that is subject to what the contract says. Often people reserve copright until paid in full. Does your contract contain any provisions along those lines? If the answer to this is "no", then its a simple debt collection. If "yes" then you can probably enforce your copyright against the client.
In any case, it is a situation where you can embarrass the consultant into dealing with it by going direct to the client and notifying them that you are the creator and that you have not been paid?
Hi Tim,
Thanks for that. Now the original contract DID give the consultant copyright and prohibited me talking to the client about money (interesting!) but is now as I understand it, void due to him not abiding by his own payment schedule and has been superseded by a recent email that promised if I gave up the catalogue I would be paid at the end of the month in full. Under this much simplified contract, if in fact it is one, surely as writer/photographer I own the copyright of the catalogue which I've entirely funded the creation of from my own resources. The consultant has contributed nothing.
Kelly
Thanks
Kelly
I think you should write to him formally cancelling the contract on the basis of a complete failure of consideration. In that letter you would also assert your copyright over the catalogue. Now the problem is, in a practical sense, is this going to help you get paid? If the client has already paid the consultant they are not going to want to pay again. Presumably they acquired it in good faith. You may still be left in a practical sense with just a claim for the money owing against the consultant. This forum is finished now, but feel free to give me a call if you want to discuss it further.
Remote
Hi Tim,
If our group employed a videographer to film an event we held and have paid them, who owns the copyright to this filming?
Cheers :)
Hi Maxine,
You do, unless the contract provided that the videographer was to own the copyright.
Hi Maxine,
You do, unless the contract provided that the videographer was to own the copyright.
Hi everyone, thanks for participating. I enjoyed it, and hopefully was of some help.
That's it for this forum. If you haven't yet, please read my article and accompanying exercises.
And the IP message I would like to go out on is - "be careful, but not too careful. The best protection you can have for an idea is to get to the market first and do it better than any imitators can."