Legal protection of intangibles - OECD.org · Creative works: -Literary and artistic works (such as logo, books and other writings, musical compositions, paintings, sculpture, etc.)

Legal protection of intangibles

Isabelle Leroux (IP) & Anne Quenedey (Tax)

Partners

Bird & Bird

© Bird & Bird LLP 2011 page 2

I. INTRODUCTION


Legal protection of intangibles

● Intellectual property rights at an international level

● Protection of intangibles not entitled to protection by intellectual property law

● Transfer/ financial agreements on IP rights

© Bird & Bird LLP 2011 page 4 page 4 page 4

II. INTELLECTUAL PROPERTY RIGHTS AT AN

INTERNATIONAL LEVEL


Industrial Property Vs Intellectual Property: Preliminary remarks

Industrial Property : - Patent , kwow how - trademark - design Intellectual Property : - Industrial Property + Copyright


« Intellectual Property is worldwide ! »

• IP vocabulary/concept is internationaly understood : ie what is a trademark in India is the same in Ukrainia and the US

• IP is international even if the rights can be national because of international treaties, EC regulation, international convention, TRIPS agreement

• Any IP can desappear except in some countries Trademarks

• IP right has a value as a monopoly right as long as it is a right !

• Any and each IP right is challengeable and can be revoked, cancelled, nulled, because of another party, a TM and Patent office, a judge


A. What protection is granted?

• Exclusive right/monopoly over the use of their creation

- for a certain period of time, and therefore give :

- the right to prevent others from using their name, inventions, designs or creations (injunction, damages claims), and

- The right to authorize against payment:

~ License agreements

~ Assignments

~ Securities

• Territoriality of the rights : IP rights limited to countries filed or registered Vs/ Domain names having an international protection upon filed


B. Fields of IP protection

● Patents

● Designs

● Trademarks

● Copyrights

● Databases


B. Fields of IP protection : Example: the Iphone

Instruments of protection

What they protect

Patents Inventions

Trademarks and geographical origins

Origin

Designs Appearance

Copyrights

Creative works: - Literary and artistic works

(such as logo, books and other writings, musical compositions, paintings, sculpture, etc.)

- Computer Programs

Rights related to copyrights

- Rights of performers (e.g. actors, singers and musicians)

- Producers of phonograms (sound recordings)

- Broadcasting organizations

Databases Compilations of data

© Bird & Bird LLP 2011 page 10 page 10

C. Acquisition of IP rights

Intellectual property rights may be granted independently from the existence of a registration system:

Protection granted through a registration or certification process

Patents

Trademarks

Geographical indications

Designs

Variety of plants

Protection granted without formalities, due to the creation of a work (in most countries)

Copyrights

Related rights

Protection granted subject to the evidence that a substantial investment was made

Database


D. Standard definitions


1) Industrial Property (i) Patents

● Definition: an exclusive right granted to an inventor by a State, or by a regional office acting for several States,

• which allows the inventor to exclude anyone else from commercially exploiting its invention

• for a limited period, generally 20 years

● Not all inventions are patentable

Conditions of patentability of an invention:

• Industrial applicability

• Novelty

• Inventive step

• Patentable subject matter


U.S. patent # 5,375,430, 'gravity-powered shoe air-conditioner.'

this device does not introduce any new concepts, but instead combines two existing concepts in an original way. The shoes, patented in 1994 by Israel Siegel, are powered by the walking motion of the user.

Each time you take a step, your heel works to activate the air-conditioner compressor and expander.


1) Industrial Property (i) Patents

• Consequences:

• Any exploitation of the patented invention without the patentee’s authorisation is an illegal act

• The patentee may give permission, or grant license, to other parties to use the invention on mutually agreed terms

• The patentee may sell his rights to the invention to someone else

• Compensation of the monopoly: publication of the invention for the purpose of science progress


1) Industrial Property (ii) Trademarks

● Definition : registered/used sign, or a combination of signs, which distinguishes the goods or services of one enterprise from those of another/guarantees commercial origin

● Protection:

• Exclusive right to use the mark:

- right to prevent unauthorized third parties from using the mark, or a confusingly similar mark, so as to prevent consumers and the public in general from being misled

- right to negotiate payment in return for others using the trademark

● Period of protection: varies but can be unlimited since the trademark may be renewed indefinitely on payment of corresponding fees


Samples :

« Just do it »

Herald Tribune

http://www.google.fr/imgres?imgurl=http://2.bp.blogspot.com/_r2iKEbQS6hQ/SIiB2wFYsxI/AAAAAAAABl8/RXBGpEywz7o/s320/magenta.jpg&imgrefurl=http://jandccardswaps.blogspot.com/2008/07/august.html&h=300&w=300&sz=2&tbnid=cj3CiHiSB2bOQM:&tbnh=116&tbnw=116&prev=/images%3Fq%3Dmagenta%2Bcolor&zoom=1&q=magenta+color&hl=fr&usg=__Bb2rZXPCyvsrGdjiTwRxuoUnp58=&sa=X&ei=D5OHTe_dOMev4Aal-_HQCA&ved=0CGoQ9QEwCw




1) Industrial Property (iii) Industrial Designs

● Definition : 2D or 3 D product : original, ornamental and non-functional features or shape of an industrial product that result from design activity,

• Protection against unauthorized exploitation

• right granted in many countries, pursuant to a registration system

● Areas: technical or medical instruments, jewellery, luxury items, house wares and electrical appliances to vehicles, architectural structures, textiles designs, leisure goods, clothing, etc


Sample :


1) Industrial Property (iii) Industrial Designs

● Conditions of protection:

• novelty and/or originality of the design

• In most industrial design laws: exclusion of protection of designs dictated solely by the article’s function

• term of protection : Usually maximum : 10 to 25 years


1) Industrial Property (iv) Geographical Indications

● Sign used on goods that have a specific geographical origin and possess qualities or a reputation that are due to the place of origin

• Qualities influenced by specific local factors

- Agricultural products: “Roquefort” for cheese produced in a certain region of France

• Qualities due to human factors found in the place of the origin of the products (traditions, etc.)

- “Swiss” for watches made in Switzerland

● Protection depending on national laws and international treaties


1) Industrial Property (v) Breeders’ right in new plant variety

● protect new, distinct, uniform and stable varieties, against the unauthorized exploitation of the propagating material, harvested material and products made from the harvested material of the protected variety, as well as the variety denomination

● right granted in many countries,

● pursuant to a registration system,

● Period of protection: no shorter than 20 years from the date of the grant of the breeder’s right (25 years minimum for trees and vines)


2) Copyrights and related rights

(i) Copyrights

(ii) Related rights


2) Copyrights and related rights

(i) Copyrights

● Definition : Rights given to creators for their literary and artistic works

(including computer software)

● Literary and artistic work: every original work of authorship, irrespective of its literary or artistic merit

”The expression literary and artistic works shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression”

(Berne Convention for the Protection of Literary

and Artistic Works)


Examples of such works

Painting Music Choreography

Film

Logo Catalogue Packaging

Poster Software Slogan Furniture


2) Copyrights and related rights (i) Copyrights

● Rights granted under copyright:

• Economic rights: allow the rights owner to derive financial reward from the use of his work by others, by license or assignment

- The rights owner may prohibit or authorize against money: ~ The reproduction, distribution of the work, rental of copies

~ The translation of the work into other languages

~ The adaptation (such as a novel into a screenplay)

• Moral rights: preserve the personal link between the author and the work


2) Copyrights and related rights (i) Copyrights

● Duration of copyright:

• Economic rights: - Berne Convention : life of the author plus not less than 50

years after his death

- European Union, USA: 70 years after the death of the author

• Moral rights: perpetual


2) Copyrights and related rights (i) Copyrights - Computer programs

● Definition : Set of instructions, which controls the operations of a computer in order to enable it to perform a specific task, such as the storage and retrieval of information

• Article 10.1 of TRIPS Agreement:

- computer programs, whether in source or object code, shall be protected as literary works


2) Copyrights and related rights (i) Copyrights - Computer programs

● Exclusive rights granted: right to do or to authorize

● Right can be licensed or assigned, in one country or internationally, or even for the entire world


2) Copyrights and related rights (ii) Related rights

● Definition : Granted to performing artists, producers of sound recordings and broadcasting organizations in their radio and television programs on the basis that they:

• Contribute to making works available to the public, or

• Produce subject matter which are not qualified as works under the copyright systems, but contain sufficient creativity or technical or organizational skill to justify recognition of a copyright-like property right


2) Copyrights and related rights (ii) Related rights

• Performers:

• Producers of phonograms:

• Broadcasting organizations:

- Rights to authorize or prohibit re-broadcasting, fixation and reproduction


3) Sui generis rights

Database


3) Sui generis protection Database : new right “invented” in 1996, based on economic investment

● The content is eligible for copyright protection provided that they constitute original creations

● Article 10.2 of the TRIPS Agreement/Art 3 of the Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases


3) Sui generis rights : Database

● Containing is protected by a “Sui generis” rights

• Conditions of protection :

If the maker of the database can demonstrate a substantial investment (qualitatively and/or quantitatively) in either the obtaining, verification or presentation of the contents

• Rights of the maker of a database : Forbid

- extraction and/or re-utilization repeated and systematic

- extraction and/or re-utilization of insubstantial parts


III. PROTECTION OF INTANGIBLES

NOT ENTITLED TO PROTECTION BY INTELLECTUAL PROPERTY

LAW

.


Protection of « others » intangibles which are not listed formerly as IP rights :

• Any industrial or commercial achievements may not be protected under IP law

• but can nevertheless be protected against competitors

• on the basis that they represent valuable competitive advantages:

• Domain names, indications of origin, shape, packaging, marketable creations, technical achievements,

• even advertising campaign, any “creation if there is a commercial value


III. Protection of other intangibles

Examples of intangibles with “commercial” value

Illustrations

1. Distinctive indications

Trade names THE COCA-COLA COMPANY

Domain names Coca-cola.fr

Trade-dress

2. Manufacturing/industrial /commercial secrets

Trade secret

Know-how


Difference of meaning between

• Trademark Vs Brand

• Europe Vs the US

• Value of the first is not equal to the second

• Brand is all, Trademark is just one title

• Role of brand measures the portion of the decision to purchase that is attributable to brand – this is exclusive of other aspects of the offer like price or feature.

• Conceptually, role of brand reflects the portion of demand for a branded product or service that exceeds what the demand would be for the same product or service if it were unbranded.


Interbrand WW ranking


A. What protection is granted? ● Protection against unauthorized reproduction/imitation via unfair

competition laws or provisions: injunction, damages claims

• Definition : attempt by an entrepreneur to succeed in competition without relying on his own achievements, but rather by taking undue advantage of the work of another :

- Protection against acts likely to cause confusion with the establishment, goods, activities of a competitor: intent to confuse irrelevant

- Protection against free-riding/ parasitism/ trademark dilution: the fact for a company to place itself in the wake of a competitor and thus to unduly benefit at no cost from its competitors' notoriety and/or achievements

- Protection against wrongful disclosure of “undisclosed information”

● Commercialization: authorization in return of payment, sale


B. Overview

1) Distinctive signs ordinarily excluded from

statutory IP protection

2) Manufacturing/Industrial/Commercial secrets


1) Distinctive signs (i) Indications

● TRADE NAMES

• A trade name refers to the name or designation that identifies an enterprise: essential business asset as an indicator of origin

• Conditions of protection:

- A trade name must be protected without the obligation of filing or registration, whether or not it forms part of a trademark (Article 8 of the Paris Convention for the Protection of Industrial Property)

- scope of protection depends on the scope of use

- Sufficient distinctiveness required


1) Distinctive signs (i) Indications

● DOMAIN NAMES

• Commonly used to find web sites → valuable commercial asset,

competitive advantage:

- Significance as business identifiers

Example: coca-cola.com

- Significance as generator of repeated traffic, e-commerce business

Examples:

~ Sex.com sold by Escom LLC to Clover Holdings for 13 million$

~ Toys.com : 5 million $

• Conditions of protection: registration


1) Distinctive signs (ii) Appearance and presentation of goods/services

● TRADE DRESS

• Designates designs or other shapes, appearances or visual characteristics of products (non-functional features), colour combinations that are not protected by specific IP laws such : essential asset as aesthetic appeal determines consumers' choice

- In the United-States: protection under trademark law of unregistered marks consisting of trade dress for a restaurant - layout, atmosphere and colour scheme of the interior dining patio and exterior building - (TWO PESOS INC. v. TACO CABANA,INC)

≠ French case law: difficult to obtain : cancellation of a device mark representing a shop interior (combination of colors and layout : SEPHORA)

~ Need of protection under the rules of prevention of unfair competition


2)Manufacturing/industrial/commercial secrets

Competitive strength may depend on innovative methods or techniques not protectable under IP law :

●trade-secrets and know-how is usually protected :

• By protection against unfair competition : Civil liability

• By prohibiting the disclosure of confidential information

●Protection against:

• Use and disclosure by (former) employees

• Misappropriation, use and disclosure by other competitors



● TRADE SECRETS

• Definition: varies from country to country, but general standards referred to in Art 39 of the TRIPS :

- The information must be secret

- It must have commercial value

- It must have been subject to reasonable steps by the rightful holder of the information to keep it secret,e.g.:

~ Information known to a limited group of persons only

~ Confidentiality agreements

~ confidentiality clause and undertakings not to compete in the employment contracts



● As a result, trade secret refers to:

• Any confidential information which provides an enterprise with a competitive edge, such as:

- Sales methods

- Distribution methods

- Contract forms

- Advertising strategies

- Consumer profiles, etc



● KNOW-HOW

• Definition : A category of trade-secrets related to non-patented information of purely technical character, resulting from experience and testing, which is:

- Secret

- Substantial and

- Identified

• As a result, know-how refers to:

- Chemical formulae

- Prototypes

- Production methods

- Patent applications as long as

not published by patent office, etc

http://www.google.fr/imgres?imgurl=http://percolat.free.fr/documentation/silhouettes/cocacola2l.JPG&imgrefurl=http://percolat.free.fr/0304dimensionsbouteille.htm&usg=__ip8MusF-e3-KxOpOfFw5Bg44qEw=&h=1047&w=438&sz=68&hl=fr&start=20&zoom=1&tbnid=oGieUqcaljgOGM:&tbnh=150&tbnw=63&ei=kzt-TfjtEMuSswaY8u3oBg&prev=/images%3Fq%3Dcocacola%26um%3D1%26hl%3Dfr%26sa%3DN%26biw%3D1260%26bih%3D838%26tbs%3Disch:1&um=1&itbs=1

http://www.google.fr/imgres?imgurl=http://www.schuss-bike.com/img/logos/michelin_logo.png&imgrefurl=http://www.schuss-bike.com/product.php%3Fid_product%3D452&usg=__9wnydsVhYAIE4r793fLOBkn3qkY=&h=472&w=1299&sz=103&hl=fr&start=13&zoom=1&tbnid=M4-n_XiiRr2rbM:&tbnh=55&tbnw=150&ei=IlV-TdKuGIii8QPclsHLAw&prev=/images%3Fq%3Dpneu%2Bmichelin%26um%3D1%26hl%3Dfr%26sa%3DN%26biw%3D1260%26bih%3D838%26tbs%3Disch:1&um=1&itbs=1


And some possible new intangibles ?

• “luxury feeling” first mentioned by ECJ ( Dior ) followed by the french supreme court (Chanel)

• Advertising investments ( ECJ again L’Oreal / bellure)

• Fragrances ?

• Are they covered and protected by IP rules : NO


IV. TRANSFER OF INTELLECTUAL

PROPERTY RIGHTS

A. Types of transfer

B. Limitations


Types of transfer 1) Total transfer of IP rights : samples

Example 1: transfer of a single IP title (a patent, a trademark or a design) Example 2: transfer of a patent depending on another patent

A owns two patents: patent X and patent Y, Y depending on X A assigns patent Y to B, but keeps the ownership of patent X A keeps control over the exploitation by B of patent Y


A. Types of transfer 1) Total transfer of IP rights

● Example 3: transfer of a branch of activity (manufacturing and exploitation of a bottle of water)

TRANSFER OF ALL THE INTELLECTUAL PROPERTY RIGHTS related to THE BOTTLE:

• Patent protection for various technical parts of the bottle

• The design of the bottle protected by industrial design rights

• The brand name is protected by a trademark

• The drawing on the label is protected by copyright

• A domain name “evian.com” has been registered

• “Evian” is used as a trade name and is the company name

What the value is of each right independently of the others ? Or is there a global value ?


A. Types of transfer 2) Partial transfer of an IP title

● Example 1: partial transfer of a trademark

• YVES SAINT LAURENT SAS notably owns a French device mark:

To designate amongst other perfumes and cosmetics in class 3

- Transfer of the trademark rights to company A for perfumes

- Transfer of the trademark rights to company B for cosmetics

● Example 2: partial transfer of copyrights

• A publisher owning the copyrights in a book may simultaneously transfer such copyrights:

- To a TV channel for the sole purpose of making a made-for-TV movie, and

- To a theater play producer for the sole purpose of creating a play


A. Types of transfer 3) Transfer by geographical zone

● Example: YVES SAINT LAURENT SAS notably owns a French trademark and an Italian trademark:

• YVES SAINT LAURENT SAS may wish to transfer its trademark rights in the Italian territory only → it will only transfer its Italian trademark


B. Limitations

● COPYRIGHT

• Moral rights of authors : Remain with the author even after he has transferred his economic rights

• Co-ownership : the one can sell his works without the approval of the other(s)


B. Limitations

● Community trademarks and Community designs

• Transfer only possible for the whole territory of the European Community: No transfer for only some Member States territories

● Patents in inventions regarding national defense

• Compulsory licenses

• Expropriation

● Competition sanction

• Compulsory licenses ( can be even free)


● An Industrial Property right is valid in the country in which it is REGISTERED, not only filed

● It can be registered in one country and not in another (refused or just not filed)

● Any IP rights can be transferred, licensed or assigned except the moral right (copyright)

● Only a right can be assigned or licensed : no right no agreement ● Copyright is “protected” worldwide upon its creation ● An IP right can be revoked in a country and valid in another one :

competition advantage disappear in a country and is maintained in an another

● Upon its death monopoly disappear and usually the corresponding value too! ( new follow on innovation theory : TM replacing Patent!)

● Specific case : famous marks ● New concepts appearing : Patent and TM trolls / TM proliferation

Thank you

Isabelle Leroux & Anne Quenedey

Partners

Bird & Bird

[email protected]

[email protected]

Tel +33 1 42 68 6000

Fax +33 1 42 68 6011

Bird & Bird is an international legal practice comprising Bird & Bird LLP and its affiliated businesses. www.twobirds.com

mailto:[email protected]

mailto:[email protected]

Documents

Legal protection of intangibles - OECD.org · Creative works: -Literary and artistic works (such as logo, books and other writings, musical compositions, paintings, sculpture, etc.)