INTELLECTUAL PROPERTY - A QUICK GUIDE FOR GRAPHIC ARTISTS

Intellectual property protection is much easier than many people think. The most important thing is to understand what intellectual property rights are. You can then determine who owns the rights and how best to protect them.

The most common form of intellectual property that a graphic artist will deal with is copyright. In Australia, copyright arises on the creation of an original work. There is no need to register the copyright work for protection to arise. You should, however, keep records of when you created the work and any material, such as draft copies, that demonstrate that you created the work without reference to any pre-existing work. If someone claims that your work infringes their copyright in a work you were unaware of, having evidence that shows that your work was an independent creation can be helpful in defending a claim of copyright infringement.

Copyright automatically vests in the author of the copyright work, subject to two important exemptions:

1. An employer holds the copyright in relation to work done by an employee in the course of their employment; and
2. Copyright may be assigned from the author or copyright owner to another party by notice in writing, which is signed by or on behalf of the assignor.

Therefore, if you create an original work and you are not an employee and you have not agreed in writing to assign the copyright to another party, you will be the copyright owner. If however, you have orally expressly agreed that you would assign all your rights to another person rather than nothing being said about the issue at all, then this may give rise to an ability for the other party to go to court to get an appropriate order to assign the copyright to that person.

Ownership of copyright gives rise to the exclusive right to, amongst other things:

1. reproduce the work in a material form;
2. publish the work;
3. perform the work in public;
4. communicate the work to the public;
5. make an adaptation of the work.

It is a copyright infringement for someone other than the owner does any of the above activities, without the permission of the owner.

In most cases, copyright protection lasts for the duration of the life of the creator plus fifty (50) years from the year of the creator's or first publication.

Trade marks are another form of intellectual property that may arise when graphic artists, for example, design a logo for a client.

A trade mark may be a letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent or a combination of any of these which is used to distinguish the goods or services provided in the course of trade by a person from those provided by another person.

Although it is not compulsory, you may register a trade mark with IP Australia. By registering a trade mark, you obtain the rights to the exclusive use and/or control of the use of the trade mark for the goods and services for which it is registered.

Although it is not compulsory, owners of registered trade marks should mark them with the symbol ®. This may act as a deterrent to discourage other parties from using your trade mark with out permission.

Similarly, unregistered can be marked using the symbol “, or if an application has been made it can be marked ” Application Pending.

It is possible to search the trade mark register (at the IP Australia website www.ipaustralia.gov.au ) to check currently registered trade marks. This may be useful for you and your clients to try to avoid using trade marks that are too similar to existing registered trade marks.

For registered trade marks, the initial term of registration lasts for ten (10) years and must be renewed every ten (10) years for continuing protection.

For unregistered trade marks, trade mark protection will continue as long as the trade mark continues to be used.

Confidential information rights do not have to be registered and arise when information is disclosed in confidence to another party. This form of intellectual property right can be used to protect, for example, ideas, trade secrets and know-how. Protection arises automatically when an obligation of confidentiality arises such as a employer/employee relationship or when an agreement to keep information confidential is made.

It can be difficult to enforce your rights when there is a breach of confidence in comparison with enforcing your rights following an infringement of other intellectual property rights, so it is best to try to limit the disclosure of confidential information as much as possible.

The protection continues until the information falls into the public domain or is no longer considered confidential by the originating party.

Intellectual property rights, which would not frequently need to be considered by graphic artists are:

1. Patents, which protect inventions of products or processes;
2. Circuit Layouts rights, which protect circuit layouts used for building an integrated circuit or computer chip; and
3. Registered plant breeders. rights, which protect new varieties of plants and fungi.

Lott v JBW & Friends Pty Ltd
This was a matter decided by the South Australian Supreme Court in 2000. It involved a graphic design business which had designed a brochure for a client, but were not paid for their work. The graphic designers sued their client to recover their fees, but unfortunately for the graphic designers, they sued the wrong party. The court found that they should have sued a company, rather than Mr Lott, who was the Chairman of Directors of that company. As it turned out, the company who owed the fees had failed and had gone into administration.

The company had reproduced a graphic bar from the brochure containing the words .Opera in the Outback. in newspaper advertisements for the event. The court found that despite the argumentthat the graphic bar was .merely a printed representation of four English words arranged with the aid of a computer and using proprietary software., it was still an artistic work, which was eligible for copyright protection. The court found that the graphic bar had been .designed and drawn with care to obtain effect..

The court found that despite the fact that the whole brochure had not been reproduced, the graphic bar itself was a copyright work and therefore an unauthorised reproduction of it was a copyright infringement, despite the fact that there had been some minor alterations.

The court rejected the argument that there was an implied licence for the company to reproduce the graphic bar other than in the brochure to advertise the event. The contract between the parties made no mention of such a licence and the court found that the only purpose of the artistic work was to advertise the opera in the advertising brochure.

In this matter, because the company director was aware of the graphic designers. claim of copyright and the fact that he decided to proceed with the advertisement regardless and the fact that anything that had to do with the event had to have his approval, he was found liable for the company's copyright infringement.

In assessing the damages payable, the court found the infringement had been flagrant in that the infringements were committed in the knowledge that copyright was claimed and were deliberate and repetitive. As a result, a higher award of damages was made. However, on appeal, the Magistrate's original damages amount of $8,000 (the company had been invoiced a copyright fee of $10,000 by the graphic designers) was reduced to the amount of $250 that the graphicdesigner had stated in evidence that he would have charged to assign the copyright in the graphic bar. Additional damages of $750 for flagrancy were also ordered.

• Have a written agreement which does not assign your copyright to the customer, but rather, simply grants a licence on payment in full or alternatively only assigns copyright upon payment in full.
• If you do not have a signed agreement with your client, make sure that you confirm who your client is, in writing.
• Copying a small part of a copyright work can still be a copyright infringement
• Directors can be liable for their company's copyright infringements if they authorized the infringing act.
• Make sure you sue the correct party for recovery of your fees and assess whether that party is likely to be able to pay your fees if you are successful
• It is very difficult to make a profit from litigation

It is important for graphic designers to be aware of how to protect their intellectual rights as well as how these rights can be infringed. The importance of intellectual property is easily overlooked, but can be a valuable asset. However, the cost of litigating to protect your rights can be expensive, so it is prudent to take steps to attempt to prevent infringement from occurring.

STEVE WHITE
WHITE SW COMPUTER LAW
AUGUST 2005

www.computerlaw.com.au

© White SW Computer Law 2005

This article is a guide only and should not be used as a substitute for proper legal advice, readers should make their own enquiries and seek appropriate legal advice.