Category: IP Infringement

New Zealand Registered Designs Now Available on DesignView

From 30th June 2020, the New Zealand Intellectual Property Office (IPONZ) has made its registered design data available on DesignView – a searchable international database of registered designs from the European Union Intellectual Property Office (EUIPO).

 

What are Design Rights?

In New Zealand, a registered design protects the visual appearance of a product, or a part of a product.  The protection can cover 3-dimensional shapes and product configurations, as well as patterns and ornamentation in 2-dimensions (such as wallpaper, textiles and labels).

Registered designs protect the way a product looks, not the way it works, and so purely functional designs are not protected (a patent may be more appropriate for protecting the functional aspects of a product).  Examples of products that may be protected by registered design rights include tools, machinery, furniture, jewellery and clothing, as well as their packaging.

The protection afforded allows the owner an exclusive right to use the design in trade or business, including making, importing, selling or hiring any product for which the design is registered.

In New Zealand, so long as the renewal fees are paid, registered designs last for 15 years.

 

Why Search Designs?

In order to qualify for registration, a design must be:

  • New and original
  • More than just functional
  • Appealing to the eye

 

A design search will help answer questions around novelty and originality.  It can also address the likelihood of a product infringing any existing third-party patents and designs in those jurisdictions where you want to operate.

 

DesignView

DesignView is a free global online tool from the European Union Intellectual Property Office (EUIPO) that facilitates searching of over 16 million registered designs from the 72 participating offices around the world.

A range of IP right, bibliographic and legal status information can be searched and investigated, including the product indication, Locarno classification, ownership, legal status and registration date.  Access to details at the office of origin is also provide.

The news of New Zealand joining DesignView follows closely the announcement that the EUIPO had launched improved versions of both its DesignView (designs) and TMview (trade marks) databases.  The improvements include a wider set of search criteria and abilities to fine tune queries, a function to compare designs and trade marks side-by-side, and the capability to export to PDF, Excel and Word formats.

Alistair Curson

 

References

AJ Park. “Designs: Protecting your design in New Zealand”. Retrieved July 14, 2020, from: https://www.ajpark.com/assets/Uploads/Resource/Protecting-your-design-in-New-Zealand.pdf

Bainbridge D. (2012). Intellectual Property, 9th edn, Pearson Education Limited, Harlow, England.

Curson A. (2020, April 21). “Expanding the Scope of Free Global Intellectual Property Databases”. Retrieved July 14, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=294

European Union Intellectual Property Network. (2020, June 29). “News: New Zealand joins DesignView”. Retrieved July 16, 2020, from: https://www.tmdn.org/tmdsview-web/welcome#/dsview/news

European Union Intellectual Property Network. (2020, April 02). “News: The EUIPO has launched improved versions of TMview and DesignView”. Retrieved July 16, 2020, from: https://www.tmdn.org/tmview/#/tmview/news

European Union Intellectual Property Network. “DesignView”. Retrieved July 16, 2020, from: https://www.tmdn.org/tmdsview-web/welcome#/dsview

James & Wells. “Design registration FAQs”. Retrieved July 14, 2020, from: http://www.jamesandwells.com/resource/design-registration-faqs/

New Zealand Designs Act 2002, s5. Retrieved July 16, 2020, from: http://www.legislation.govt.nz/act/public/1953/0065/latest/DLM281716.html

New Zealand Designs Act 2002, s11. Retrieved July 16, 2020, from: http://www.legislation.govt.nz/act/public/1953/0065/latest/DLM281725.html

New Zealand Intellectual Property Office. “Designs”. Retrieved July 14, 2020, from: https://www.iponz.govt.nz/about-ip/designs/

New Zealand Intellectual Property Office. “New Zealand’s designs are now on EUIPO’s DesignView”. Retrieved July 14, 2020, from: https://www.iponz.govt.nz/news/new-zealands-designs-are-now-on-euipos-designview/

WIPO PROOF: Protect Your Intellectual Assets with A Digital Time-Stamp

WIPO PROOF is a new online business service from the World Intellectual Property Organisation (WIPO) that provides tamper-proof evidence of the existence of any digital file, in any format, at a specific point in time.

 

Types of IP Assets

Intellectual property (IP) rights and assets deal with the output of creative effort.  These include: inventions; designs; works of art, music and literature; trade secrets; know-how; research; data; and other business records.

Whilst some of these can be protected with formally registered IP rights (such as patents and registered designs), others are only covered by unregistered rights, or the processes within an organisation to prevent unauthorised access and disclosure.  All these assets can be highly valuable to a business, and, as such, appropriate steps should be taken to safeguard them.

Additional support mechanisms that enable management around, or otherwise discourage, unauthorised use, infringement and theft, can be of great benefit.

 

WIPO PROOF

WIPO PROOF is a new digital service to complement existing IP registration systems.  It provides a date and time-stamped fingerprint, in the form of a digital certificate, that serves as tamper-proof evidence of the existence of an asset at a specific point in time.

Using Public Key Infrastructure (PKI) technology, WIPO PROOF generates certificates in the form of tokens.

PKI is an established cryptographic technology, widely accepted internationally, for the creation, storage, and distribution of digital certificates.  In addition, WIPO PROOF meets eIDAS (Electronic Identification, Authentication and Trust Services) standards.  This is a European Union regulation relating to electronic identification and trust services for electronic transactions.

 

Protecting Your Assets with WIPO PROOF

WIPO PROOF is specifically designed for innovation and creativity in the digital world.

Anyone can use WIPO PROOF and request a token for a specific digital file.  Any digital file of any size can be protected, including numeric, image, executable, text or audio-visual files.

WIPO PROOF is not a registration system.  Rather, it offers tamper-proof evidence of the prior existence of a digital file.  This can discourage misuse and misappropriation.  It can also safeguard intellectual assets at every stage of development from concept through to commercialization.

Trade secret strategies can benefit from the certification of a file or data that demonstrates both its value and the steps taken to protect it.  Owners of creative works can show that they were in possession of an original work before anyone else.  Scientific research and other valuable data sets can be managed more effectively through accepted verification of their existence and ownership.

The service offered by WIPO PROOF should be viewed as an additional part of your IP strategy.  It can be used to protect certain assets, lay the foundation for the eventual registration of a formal IP right, and help resolve legal disputes, arbitration and mediation.

Alistair Curson

 

References

Bainbridge D. (2012). Intellectual Property, 9th edn, Pearson Education Limited, Harlow, England.

Wikipedia. (2020, June 02). “eIDAS”. Retrieved June 13, 2020, from: https://en.wikipedia.org/wiki/EIDAS

Wikipedia. (2020, June 11). “Public key infrastructure”. Retrieved June 13, 2020, from: https://en.wikipedia.org/wiki/Public_key_infrastructure

World Intellectual Property Organisation. “WIPO PROOF – Trusted Digital Evidence”. Retrieved June 04, 2020, from: https://www.wipo.int/wipoproof/en/

World Intellectual Property Organisation. (2020, May 27). “WIPO PROOF: WIPO Introduces New Business Service That Provides Evidence of an Intellectual Asset’s Existence”. Retrieved June 04, 2020, from: https://www.wipo.int/pressroom/en/articles/2020/article_0012.html

Learning Lessons from Cartographers to Protect Intellectual Property

Most businesses will have copyright-protected works as a part of their overall IP portfolio.  For some, these works may be the core of their business, such as literary works or other documents, music, art or software code.  How can these businesses effectively protect themselves against copyright theft and infringement?

 

Copyright Infringement and Independent Creation

For a work to attract copyright protection, it must be original.  This does not mean that the work is new.  Rather that it originated from the author who displayed reasonable independent labour, skill and judgment to create the work.  In other words, the author didn’t copy the work from another source.

It is possible for two authors to independently create very similar works.  Provided they did not copy from either each other (or from someone else) then there would be no infringement of copyright.

For copyright infringement to occur, the following need to be satisfied:

  1. There needs to be a valid copyright in a work and ownership of it
  2. The alleged infringing work needs to show a level of objective and striking similarity to the copyright-protected work – a clear resemblance
  3. There needs to be a causal connection between the two works – facts that suggest that copying of the copyright-protected work is likely to have occurred in the creation of the infringing work
  4. There should be copying of a “substantial part” of the copyright-protected work – this is based on quality rather than quantity, as well as the relative importance of the copied elements to the copyright-protected work

Any evidence, or that lack thereof, to support an independent pathway of creation will be important in deciding a case of copyright infringement.  This is where copyright traps can be particularly useful, especially for establishing a causal connection between works.

 

Copyright Traps and Paper Towns

Copyright traps are an established technique to address infringement and plagiarism across a range of works.

The practice involves including a small or trivial item of false information within a work, or details and design features that are unique to the work, and are thus highly unlikely to originate at random in a separate work from a third party.  The latter are often used to ensure the integrity of the original work and the information it contains are not compromised nor misleading to the end user.  In both scenarios, these traps provide a strong causal link to demonstrate that copying had occurred.

Within the discipline of cartography (map making), the use of “paper towns” is the inclusion of a non-existent town, or other unique details such as road widths, on a map.

A famous example is the fictitious town of Agloe in New York State, USA.  Included in maps drawn by the General Drafting Company in 1937 as a copyright trap, an actual hamlet with a general store, gas station and two houses, was eventually built on the site (although it has now long since been abandoned).

In another case from the early 2000s, the UK’s Ordnance Survey (national location and mapping agency) won a £20m compensation from the UK’s Automobile Association (the AA) for the unauthorised copying of its maps in the publication of various atlases, town plans and maps by the AA.  In the conclusion to a long running dispute, the Ordnance Survey were able to demonstrate evidence of copying based upon specific style features and design elements included in their maps, which also subsequently appeared in the AA maps.

 

Applications to Other IP Rights

The principle behind copyright traps and “paper towns” can be applied to a number of IP rights to guard against theft and infringement, and to provide important evidence to resolve disputes.

The technique has applications in documentation relating to trade secrets to detect the leakage of the information to third parties.  Within software development (a field of particular relevance to the tech industry here in New Zealand), the practice of embedding a unique identifier within a piece of code is known as “watermarking”.

Such traps can be a standard inclusion within documentation, software code and other works.  Alternatively, they be applied on an ad hoc basis to investigate suspected ongoing theft or infringement by introducing a change or false information and seeing if it is propagated by the alleged infringer.

Proving IP theft and infringement can be difficult, time-consuming and expensive.  Provided the use of “paper towns” and copyright traps do not lessen the quality or integrity of the product or service you provide, then this is a strategy to consider in order to protect your intellectual property.  They can provide you with valuable evidence and put you in a strong position to stop the theft of your IP and the subsequent damage to your business.

Alistair Curson

 

References

Bainbridge D. (2012). “Intellectual Property”. 9th edn, Pearson Education Limited, Harlow, England.

Clark A. (2001, March 06). “Copying maps costs AA £20m”. Retrieved April 02, 2020, from: https://www.theguardian.com/uk/2001/mar/06/andrewclark

Curson A. (2019, August 06). “Copyright – Originality”. Retrieved April 01, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=231

Fasthoff Law Firm. (2016, November 27). “Anatomy of a Copyright Infringement Case: Defenses to Allegations of Copyright Infringement”. Retrieved April 01, 2020, from: https://www.fasthofflawfirm.com/anatomy-copyright-infringement-case-defenses-allegations-copyright-infringement/

Grundhauser E. “Agloe, New York”. Retrieved April 03, 2020, from: https://www.atlasobscura.com/places/agloe-new-york

Hamilton J. (2010, July 08). “What is software watermarking?”. Retrieved April 03, 2020, from: https://jameshamilton.eu/research/what-software-watermarking

Interlego A.G. Appellant v Tyco Industries Inc. and Others Respondents [1989] AC 217.

Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273.

McDonald A. (2019). “Copyright Law”. Retrieved April 01, 2020, from: https://www.amcdonald.co.nz/information/copyright-law-barrister/

New Zealand Copyright Act 1994, s16. Retrieved April 01, 2020, from: http://www.legislation.govt.nz/act/public/1994/0143/117.0/DLM345923.html

New Zealand Intellectual Property Office. “Copyright: Ownership and Protection”. Retrieved April 01, 2020, from: https://www.iponz.govt.nz/about-ip/copyright/ownership-and-protection/

O’Connell D. (2020, March 27). “Trade Secrets & Paper Towns”. Retrieved April 01, 2020, from: https://www.linkedin.com/pulse/trade-secrets-paper-towns-donal-o-connell/?trackingId=UPyO0WRnS6GZYnDa8PrRLw%3D%3D

Ordnance Survey. (2020). “About us”. Retrieved April 02, 2020, from: https://www.ordnancesurvey.co.uk/about

Wikipedia. (2020, March 13). “Agloe, New York”. Retrieved April 03, 2020, from: https://en.wikipedia.org/wiki/Agloe,_New_York

Wikipedia. (2020, March 02). “Fictitious entry”. Retrieved April 01, 2020, from: https://en.wikipedia.org/wiki/Fictitious_entry

Wikipedia. (2020, March 26). “Ordnance Survey”. Retrieved April 02, 2020, from: https://en.wikipedia.org/wiki/Ordnance_Survey

Stronger Protection for Intellectual Property Rights in China

China recently announced that it was seeking to improve protection for and enforcement of intellectual property rights.  As China is one of New Zealand’s top trading partners, it will be of interest to see how these improvements develop.

 

China’s History of IP

As little as ten years ago, many companies were wary of moving into China because of the perceived and actual challenges of enforcing their IP as well as losses from IP theft.  Despite the attractions of relatively cheap manufacturing and a massive potential market, the costs associated with a lack of appropriate IP enforcement meant that many players felt the benefits were not worth the effort.

China has been implementing new IP laws since the 1980s, and much has changed over the last decade as a result of a deliberate effort by the Chinese government.  Chinese companies are now recognising the value of IP and the importance of respecting the IP of others – something that is vital for the current global model to work.

In November 2019, China enacted a new law aimed at addressing the registration of trade marks made in bad faith.  It is also seeking to accelerate the implementation of previous announced measures for punitive damages for the infringement of patents and copyright.

The recently announced improvements further build on this.

 

The Proposals

China is intending to address a number of issues that have previously affected effective enforcement of intellectual property rights.  Such issues include low compensation, high costs and difficulties of proof.

Notably two key areas are highlighted:

  • Exploring how to lower the threshold for what constitutes IP infringement in the first place
  • Increased penalties for offenders

 

View Point

Having confidence in one’s IP and the ability to effectively enforce it is key to investment and business growth.

These developments should be welcomed and their progress followed with interest.

Alistair Curson

 

References

Brown T. (2019, November 25). “Five things to know about China’s promised crackdown on intellectual-property theft”. Retrieved November 28, 2019, from: https://www.marketwatch.com/story/five-things-to-know-about-chinas-promised-crackdown-on-intellectual-property-theft-2019-11-25

Harney A. (2019, November 25). “China plans stronger protections for intellectual property rights”. Retrieved November 27, 2019, from: https://www.reuters.com/article/us-china-ip/china-plans-stronger-protections-for-intellectual-property-rights-idUSKBN1XY0A5

New Zealand Now. (2018, March 15). “Economic overview”. Retrieved November 28, 2019, from: https://www.newzealandnow.govt.nz/investing-in-nz/economic-overview

NZ Business. (2018, June 19). “The Rise of IP in China”. Retrieved November 28, 2019, from: https://nzbusiness.co.nz/article/rise-ip-china

O’Neill R. (2019, November 26). “China vows to lower threshold for IP infringement”. Retrieved November 28, 2019, from: https://www.worldipreview.com/news/china-vows-to-lower-threshold-for-ip-infringement-18946

Weightman W. (2019, November 06). “China’s IP System was Improving Even Before the Trade War”. Retrieved November 28, 2019, from: https://www.chinabusinessreview.com/chinas-ip-system-was-improving-even-before-the-trade-war/

Workman D. (2019, February 04). “New Zealand’s Top Trading Partners”. Retrieved November 28, 2019, from: http://www.worldstopexports.com/new-zealands-top-trade-partners/

Copyright – Originality

Modern copyright law protects works against copying; issuing copies to the public; performing, playing, showing or communicating to the public; or the making of adaptations.

 

Originality versus Novelty

For a work to attract copyright protection, it must be original.  This does not mean that the work is new.  Rather that it originated from the author who displayed reasonable independent labour, skill and judgment to create the work.  In other words, the author didn’t copy the work from another source.

 

Copyright Infringement and Independent Creation

It is possible for two authors to independently create very similar works.  Provided they did not copy from either each other (or from someone else) then there would be no infringement of copyright.

For copyright infringement to occur, the following need to be satisfied:

  1. There needs to be a valid copyright and ownership of it
  2. The alleged infringing work needs to show a level of objective and striking similarity to the copyright-protected work – a clear resemblance
  3. There needs to be a causal connection between the two works – facts that suggest that copying of the copyright-protected work is likely to have occurred in the creation of the infringing work
  4. There should be copying of a “substantial part” of the copyright-protected work – this is based on quality rather than quantity, as well as the relative importance of the copied elements to the copyright-protected work

Any evidence, or that lack of, to support an independent pathway of creation will be important in deciding a case of copyright infringement.

 

A Recent Example: Iron Man 3

For the past three years, Marvel Entertainment and Horizon Comics Productions have been engaged in a copyright infringement lawsuit over the design for Marvel’s Iron Man 3 movie poster.

Horizon asserted that Marvel had copied an image of their character Caliban (from their comic book series “Radix”) shown in a crouched kneeling position, and had used it to depict Robert Downey Jr. as Iron Man in the same pose.  They claimed that six Marvel employees were aware of the Horizon works and had influenced those who had designed the Iron Man 3 poster.

At trial, Marvel were able to provide evidence that their Iron Man 3 poster had been independently designed from photographs taken at photo shoot with Robert Downey Jr.

Horizon, however, did not produce evidence to the Court’s satisfaction to refute this.  Neither were they able to demonstrate a causal connection to copying, including evidence that the employees concerned had seen the Caliban drawing or had been involved in designing the ‘Iron Man 3’ poster.

On 15th July, the U.S. District Court ruled in favour of Marvel.

Alistair Curson

 

References

Bainbridge D. (2012). “Intellectual Property.” 9th edn, Pearson Education Limited, Harlow, England.

Fasthoff Law Firm. (2016, November 27). “Anatomy of a Copyright Infringement Case: Defenses to Allegations of Copyright Infringement”. Retrieved July 26, 2019, from: https://www.fasthofflawfirm.com/anatomy-copyright-infringement-case-defenses-allegations-copyright-infringement/

Horizon Comics Productions Inc v. Marvel Entertainment LLC et al, No. 1:2016cv02499 – Document 121 (S.D.N.Y. 2019). Retrieved July 30, 2019, from: https://law.justia.com/cases/federal/district-courts/new-york/nysdce/1:2016cv02499/455684/121/

Interlego A.G. Appellant v Tyco Industries Inc. and Others Respondents [1989] AC 217.

Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273.

McDonald A. (2019). “Copyright Law”. Retrieved July 26, 2019, from: https://www.amcdonald.co.nz/information/copyright-law-barrister/

McKeown JS. (2008, January 24). “Independent creation”. Retrieved July 30, 2019, from: https://www.lexology.com/library/detail.aspx?g=0551e374-9c92-4138-973f-69083615ea5b

New Zealand Copyright Act 1994, s16. Retrieved July 26, 2019, from: http://www.legislation.govt.nz/act/public/1994/0143/117.0/DLM345923.html

New Zealand Intellectual Property Office. “Copyright: Ownership and Protection”. Retrieved July 30, 2019, from: https://www.iponz.govt.nz/about-ip/copyright/ownership-and-protection/

Welk B. (2019, July 16). “Marvel Wins Copyright Infringement Lawsuit Over ‘Iron Man 3’ Movie Poster”. Retrieved July 25, 2019, from: https://www.imdb.com/news/ni62550147 and from: https://www.thewrap.com/marvel-wins-copyright-infringement-lawsuit-over-iron-man-3-movie-poster/