IOM & IP: PROTECTION OF INTELLECTUAL PROPERTY IN THE ISLE OF MAN

We outline the principles of intellectual property protection in the Island relying heavily, as it does, on UK IP law.

IP is a legal term for ideas which originate in the mind of a person and result in creative output, such as artwork or technology. The underlying idea behind IP law is twofold: to inspire and protect creativity and innovation on the one hand and to provide a mechanism of effective punishment for those who slavishly copy on the other (or, more properly put, a legal remedy for those who are wronged by the use of their IP rights without permission). There is a moving balance to be found – we can be inspired by the world around us and it is not unreasonable to assert that nothing is truly original. Money does not grow on trees and sometimes creators must be reasonably credited for their work. IP law is effectively a framework designed to facilitate creativity – aiming to provide just the right amount of reward for hard work or creativity, to allow creators to commercially exploit their creations and/or to prevent others from using them without authorisation.

Four core areas of IP law are copyright, designs, trademarks and patents. There are other related areas, for example confidential information and domain names, that are said to fall under the umbrella of IP and related law although they are not covered in this article.

IP can take the form of registered rights, such as registered trademarks or registered designs, or unregistered rights such as copyright or “goodwill”, which in IP terms is a value usually associated with a brand or reputation.

Generally speaking, IP rights are territorial meaning that different rules apply in different countries/jurisdictions. There are some exceptions to this where inter-governmental projects have provided varying degrees of international harmonisation. The Island’s IP law derives from principles set out in legislation and case law of the United Kingdom, including the Copyright, Designs and Patents Act 1988 and the Trade Marks Act 1994, having force on the Isle of Man. This is an outline of the four core areas.

• Copyright
• Designs
• Trademarks
• Patents

Copyright protects original expressions of ideas, for example paintings, books, song lyrics or photographs. Expression is important – as a random example, nobody can have a monopoly over the idea of painting half a melon or some apples however someone can benefit from copyright protection in respect of their particular expression of the idea of painting any of those things. Some inspirational creatives can spark a movement which is perfectly natural and in such a scenario there would be a limit to the extent to which they could enforce copyright to stop others creating their own unique expressions of the same idea.

Copyright owners can permit others to use their work in exchange for a payment, for example royalty fees made at certain intervals for licensing purposes. To benefit from copyright protection, works must be sufficiently “original”, although the standard required is not actually particularly high. Some creative choices for example in the selection of words in a short text or choice of setting/lighting/props for a photograph or drawing, assuming they are not copied from others, are almost a sure shot for copyright protection. Copyright can also protect sound recordings and films. Sometimes there are questions of joint authorship where two or more parties are said to have collaborated in a work.

To successfully establish an infringement (copying) case it must be shown that an infringer has taken the whole or a substantial part of the original work, which is assessed by reference to quality over quantity. The duration of protection for copyright works does vary and is usually 70 years after the death of an author – the old adage “take a picture it will last longer” does sometimes ring true. It would be contrary to human evolution to provide everlasting protection for creative works, allowing someone to hog all of the IP, although trademarks do offer an exception to this for those willing to pay the renewal fees (see below).

Design law can protect the appearance, shape and configuration of designs which are novel and of individual character when compared with the existing design field. There are various levels of protection, including registered and unregistered design rights, and various durations of protection up to a current maximum of 25 years if renewed. For a design to be valid it does not need to be entirely original yet must be a step ahead of what has gone before. A benefit of registering designs is that it can simplify the enforcement of design rights to prevent third parties copying. A designer has twelve months from disclosing a design to register it – this is known as the grace period, allowing a short period to “test” a design. Registered designs can cover two dimensional surface patterns or three dimensional designs for example glassware or a container for carrying eggs. Design law is particularly complex due to various types of protection and also potential overlaps with the other areas of IP outlined in this article.

Trade marks protect brand names or logos. A widely accepted justification for trademarks is that they indicate the origin of goods or services offered for sale. Trademarks are classified by goods and services. For example toys, computers, clothing, and legal services all fall under different class headings. This means that similar trademarks can coexist in harmony in similar yet distinct industries. Whether you are sledging on a snow day or sitting in the office, you will probably be encountering trade marks in some form. Registered trademarks last for 10 years and can be renewed to infinity and beyond (indefinitely). A registered trade mark entitles its owner an exclusive right to use for the goods/services it is registered for and to prevent or permit other parties to do the same. There is law providing for protection of unregistered trademarks conferring similar rights, where a business has developed goodwill or significant reputation in a brand, although typically more evidence is required to benefit from such rights.

In the age of technology, new types of trade marks, such as shapes, smells, or even touch, are beginning to emerge. However at present from a practical standpoint the most commonly used trademarks remain traditional words and logos.

You could say a function of a trade mark is to help consumers work out what is likely to be a good buy.

Patents can be applied for to protect inventions that are novel and involve an inventive step – considered from the eyes of someone skilled in the field in question, the question is: would the step be obvious to them? Popular patent stories that make the headlines are often around industries such as mobile technology or medical developments however there is also a wide area of mechanical patents that can cover things as seemingly simple as beds (with some bells and whistles, such as a television, for example). Patents are usually valid for 20 years from registration and at its simplest level the deal is disclosure of the invention steps in exchange for a 20 year monopoly over the same. The benefit to society is that others are free to use the information disclosed to build on and adapt to develop their own innovations, ideally leading to a somewhat structured flow of collaboration and innovation.

IP Disputes

Unfortunately, disputes have the potential to become rather expensive so it is always worth considering potential win-win situations. On the flipside, they can force a competitor out of a market which is obviously beneficial for business. Advice should be sought if an Island resident has an IP dispute and choosing the correct forum can be complex.

Some IP disputes have global ramifications and make the headlines. Others are confined to a small business community. The tenets of most IP issues are similar: the best approach is to get clear on the basic facts at the outset. A very important consideration is whether taking legal action on the basis of IP is likely to be commercially valuable for your business - then of course it makes sense. However, this assessment is more nuanced than a simple financial calculation and the benefit may not always be apparent on the face of it. Protecting or enforcing IP rights may require significant investment and the return may be measured in brand value or reputation, otherwise known as goodwill, which is not as black/white as a cash/money figure.

Once allegations of infringement are made, everything related to both the creation of the original IP and the alleged infringement can be challenged. For example, if an innovator claimed that a third party had copied their work, that third party may simply assert that the artist copied it themselves from a fourth party. In fact, there is specific government legislation in place known as groundless/unjustified threats provisions, which are designed to deter people from making baseless claims of IP infringement without having first gotten their facts straight or undertaken reasonable investigations. That legislation specifies potential consequences for those found to have made groundless/unjustified threats, including the payment of damages. The aim of such provisions is to protect genuine creatives from the annoyance of baseless threats of legal action from others. In practice, groundless threats actions are not particularly common however some cases do proceed, sometimes where big businesses attempt a scattergun approach to competitors.

Collaboration

Two or more parties can collaborate and mix, swap or share their IP in business or creative projects. For example, some well-known songs are of course accompanied by a well-known dance, sports teams agree advertising deals, and retailers may collaborate with designers to create an attractive in-store layout. Perhaps a more readily understandable example from a traditional perspective would be an author contracting the services of an illustrator to provide drawings for a book.

In summary therefore, whilst the above might sound like fun and games, IP law is a complex area subject to robust principles and also procedural requirements and thresholds which must be met in order for protection to apply. These include evidence of creation, where an author is based, and the nature of any working relationships. It is difficult to distill a typical IP related query to a simple question like “is the Mona Lisa smiling?”.

It is important to recognise that the underlying principles of IP, set out above, apply in equal measure to (1) the entire concept of IP and (2) any minor or low value IP issue – there will always be chancers out there brazenly copying the ideas of others and sometimes the most commercially sound decision is to let an infringement go. Other times, of course, taking legal action can be a sensible option. Context is important. Consider for example an emporium selling all manner of goods – there are a lot of parties involved and a lot of differing perspectives. Nonetheless, as part of a long term strategy IP can be an invaluable tool.

Note: This article does not constitute legal advice and specific advice should be sought on the facts of each case.

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