Get help & free expert advice on the subject of Intellectual Property by sending your questions to IP@emincubation.co.uk.

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Question:

I am looking to import cds from mainly non-EU countries (the US would bethe main source) to sell on eBay. Is that legal or a breach ofcopyright?

Our expert (from AdamsonJones) replies:

I think there would be problem with this, though not necessarily with copyright.

It's very likely that the CDs would carry one or more trade marks that are registered in the UK, and so for any products originating outside the EU the resale of those products in this country would constitute infringement of those registered trade marks. 

This probably would not apply to goods sourced within the EU because of the principle of free movement of goods within the single European market and of so-called "exhaustion of rights" (once goods have been put on the market anywhere in the EU by the owner of IP rights, that owner cannot enforce those rights in respect of subsequent commercial dealings anywhere else in the EU).

Regarding copyright, as far as we can see the mere act of selling a product (albeit one protected by copyright) does not constitute "reproduction" of the copyright work and so would not be a copyright infringement.  However, if any of the copyright material were posted on the eBay site (eg an image of the CD sleeve, or any other literary or graphic material copied from the CD, even something like a listing of the tracks), that could well constitute copyright infringement, and so great care would be needed.

In short, we think this would be inviting trouble on the trademark front.  It might be possible to avoid the copyright issues, but in practice it could be awkward.

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Question:

How effective is ACID (Anti Copying In Design) in protecting its clients designs?

Our expert replies:

In the UK there are two forms of design protection: registered design provided for by the Registered Designs Act and design right provided for along principles broadly similar to copyright law.

ACID are a trade organisation set up to help its members understand and protect their rights. Although the UK IPO supports their initiative to raise awareness of IP issues, we cannot comment on their effectiveness.

When dealing with any organisations, it is always best to conduct your own research - ask what success rate the organisation has achieved, find out the associated costs and ask for relevant case studies.

The UK Intellectual Property Office Central Enquiry unit is able to give advice about all forms of intellectual property protection and also provides an extensive range of free literature. (08459 500505). 

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Question:

Someone has asked if they can licence a piece of my work for their use. What does this mean?

Our expert replies:

Like other forms of property, Intellectual Property can be bought, sold or licensed for others to use. In this situation, someone is asking you for permission to use something you own.

A licence is a contract between you and a prospective user and it is for both parties to negotiate the terms and conditions, including the payment or royalty for the use.

There are different kinds of licences available and you should seek advice from your legal adviser, patent or trade mark attorney to discuss what you need.

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Question:

Who owns the intellectual property if we contract someone to create a 3D render of a product we've designed? Does the renderer have the right to request IP of the 3D image and programs used to create the 3D render?

Our expert replies:

If the 3D render has been made faithfully from your drawings, it is likely that you will own the IP as the renderer has had no creative input. However, if the renderer has had to make changes or adjustments, no matter how small, they may be entitled in part to their creative input, in which case there will be joint ownership.

It is best to address this before you enter into the collaboration. An agreement as to who owns the IP, which may result from the partnership, should be decided beforehand and written into the contract. 

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Question:

Are databases protected by Copyright?

Our expert replies:

Yes - databases may be protected by both copyright and database right.

For copyright protection to apply, the database must have originality in the selection or arrangement of the contents and for database right to apply, there must have been a substantial investment in obtaining, verifying or presenting its contents. It is possible that a database will satisfy both these requirements so that both copyright and database right apply.

Database right is in many ways very similar to copyright so that, for example, there is no registration for database right - it is an automatic right like copyright and commences as soon as the material that can be protected exists in a recorded form. However, the term of protection under database right is much shorter than under copyright. Database right lasts for 15 years from making but, if published during this time, then the term is 15 years from publication.

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Question:

I am a designer-maker working mainly under my own label but I also design for other small companies. They are selling my work under a joint name and are simply buying off me like any other trade customer. However, I have agreed that the designs are exclusive to them. How should I go about formalising this arrangement and agreeing copyright? This is a very small job and earns only a little money so lawyers fees might cost more than the work if I try and do anything complicated!

Our expert replies:

Its good to see that you are aware of copyright issues and want to get a formalised agreement in place.

The agreement between you and your client is as much about safeguarding their position as well as yours. They want exclusivity to those designs and it may be that they would be happy if a written agreement was drafted by a professional. If this is the case, your client may be willing to pay the costs for this to be formalised (it should not be too expensive).

Another option you could consider is to assign the copyright to your client as part of the sale or for an extra payment. The assignment must be recorded in writing and again you may want to seek professional advice. You should bear in mind that, once the copyright has been assigned, you will no longer be the owner and will not be entitled to its use.

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Question:

We have run a training course twice for an organisation and now one of their staff who is on a teaching course and is putting together a course using our material so they can run the course in house.  Do we have any recourse if the course is not exactly the same as ours?

Our expert replies:

All the materials that you have created are subect to copyright protection and will belong to the creator/author or their employer (the company).

Unfortunately copyright does not protect the underlying theme, so anyone is entitled to provide training courses along the same theme as yours. What they cannot do is use your material/ photographs/ charts/ tables etc.

You should mark your materials with the copyright symbol (C in a circle) the owner of the material (Your name or the company name) and the year of creation. It may also be worth putting a list of conditions of use for the material, for example, this document must not be photocopied without the consent of the owner.

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Many thanks to our experts, Steve Jones of AdamsonJones & Gary Townley of UK Intellectual Property Office.

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