Written by Alyce Evans, Jennifer Tutty (Principal) and Lucy Diggle.
Intellectual property (IP) plays a critical role in any successful enterprise. Whether you’re a seasoned entrepreneur or small business owner just starting out, recognising the value of your business’ tangible and intangible assets can assist you to maximising your business’ profitability, reputation, and longevity.
While the term intellectual property often brings the words ‘copyright’ and ‘trademarks’ to mind, IP encompasses a wide array of forms.
In this blog, we’ll examine the full spectrum of IP assets that empower modern businesses and introduce you to the concept of an IP Asset Register to keep track of your business’ own IP.
Summary of IP Assets Relevant to a Business
Here’s a summary of the main types of IP you may find in a business…
– Copyright.
– Trade marks.
– Designs.
– Patents.
– Trade secrets.
– Business names.
– Websites and domain names.
– Social media accounts.
– Databases.
– Email addresses
Additionally, for some businesses, IP assets can includes plant breeders rights, circuit layouts and more.
Now that we’ve identified the key types of IP, let’s break each of these rights down. In these next sections, we explain:
– How the different types of IP are relevant to businesses;
– Key legislation; and
– IP registration requirements.
Copyright
Copyright refers to the bundle of rights attaching to original works and other subject matter.
Under the Copyright Act 1968 (Cth) (Copyright Act), “works” that can be protected by copyright include literary works, musical works, artistic works and dramatic works. “Other subject matter” that can be protected include sound recordings, cinematograph films, TV broadcasts, sound broadcasts and published editions of works.
Copyright is an IP asset that can be owned. Therefore, the rights associated with it can be bought, licensed, transferred and passed down through one’s will and estate.
Examples of copyright relevant to your business may include the following:
– Internal business documents.
– Document precedents.
– Training manuals.
– Website copy.
– Marketing photographs.
– Sketches and designs of your business products.
– Branding assets.
– Code and software behind your business’ digital presence.
– Recordings.
Legislation and registrability:
In Australia, copyright is protected by the Copyright Act 1968 (Cth) (Copyright Act).
Copyright protection is automatic if the relevant work meets certain criteria. Therefore, you are not required to register copyright in Australia.
If copyright is found to exist in a work, copyright protection is automatic.
Trade Marks
A trade mark is a “sign” used by traders to distinguish their goods or services in the marketplace from that of other traders. Trade marks function as a badge of origin, as they signify to consumers the origin of the product or service (ie. the brand!)
There are different types of trade marks, including:
– Brand names (e.g. “Nike”).
– Logos (e.g. McDonalds’ golden M arches).
– Slogans (e.g. “Red Bull Gives You Wings”).
– Colours (e.g. the Tiffany blue).
– Shapes (e.g. the shape of a Toblerone box).
– Sounds (e.g. the roar of the MGM Lion).
– Scents and more.
Legislation and registration requirements:
In Australia, trade marks are protected under the Trade Marks Act 1995 (Cth) (Trade Marks Act).
To enforce your rights under Australia‘s trade mark legislation, the trade mark must be registered.
Unregistered trade marks can in some circumstances be enforced under Australia’s Consumer Law and the common law, however, this can be complex.
If you’re interested in reading more about trade marks and your business, check out our previous blogs ‘9 Things Business Owners Need to Know to Protect Their Logos‘ and ‘How to Choose the Best Trade Mark Classes for your Business‘.
Patents
A patent right is an exclusive right that protects new, useful inventions.
Patentable inventions can include devices, substances, methods and processes.
In essence, a patent is a contract of sorts between the inventor and society. It grants an inventor the exclusive right to make, use and sell their invention for a specified period in exchange for publicly sharing the details of the invention.
Some examples of inventions that are regularly patented includes:
– Scientific formulas.
– Technology.
– Medicines and medical devices.
– Appliances.
– Software systems.
– Novel fabrics and materials.
Legislation and registrability:
In Australia, patents are protected under the Patents Act 1990 (Cth) (Patents Act).
To enforce your rights under Australia’s patent legislation, the patent must be registered.
Designs
A design right protects the overall visual appearance of products that are new and distinctive. A design is a crucial form of IP asset for businesses that are looking to differentiate their products in the market.
Some examples of common, registered designs include:
– Fashion garments.
– Product packaging.
– Homewares.
– Furniture.
– Toys.
Legislation and registrability:
Designs are protected under the Designs Act 2003 (Cth) (Designs Act).
To enforce rights under Australia’s design legislation, the design must be registered and certified.
Trade Secrets
A form of classified and confidential information, trade secrets are often associated with businesses and companies. As many business owners will know, trade secrets often contribute to the competitive edge of a business and its success in the market.
Examples of trade secrets relevant to businesses include:
– Secret formulas, methods or processes (e.g. the Coca Cola recipe).
– Manufacturing techniques.
– Client, customer and supplier lists.
– Marketing information (such as data, strategies and processes).
– Pricing information, profit and loss statements and sales forecasts.
Legislation and registrability:
Australia does not have specific legislation protecting ‘trade secrets’. However, the common law (and confidentiality) can be used to protect them. Business contracts that protect trade secrets can include employee and contractor agreements, confidentiality agreements and manufacture and supply agreements.
Trade secrets cannot be registered.
Business Names
Business names are, simply, the name of a business. When registered, they are a formal and statutory governed registration, which can be used to determine the legal owner of a business.
Remember, however, a business name may be the same name as the legal entity running the business OR it may be different.
Similarly, a business name is not a trade mark, however it can be trade marked.
Let’s provide an example using our law firm, Studio Legal:
– Business name (registered): Studio Legal.
– The company that owns and operates the business: Legal & Artist Services Pty Ltd.
– Studio Legal has a registered trade mark for the words: ‘Studio Legal’.
Protection and registration:
Registering a business name with ASIC is an important step. However, this does not expressly prevent others from using that name. For the clearest protection and rights, it’s generally wise to apply for ASIC registration AND trade mark registration of your business name.
URL’s, Websites and Social Media Accounts
Businesses often own, control and operate URLs (domain names), websites and social media accounts.
These things make up a business’ virtual storefront, and can be very important to the operation, trade, marketing and valuation of a business.
Examples of these business assets include:
– Domain names, business websites and accounts linking to a business website (such as a WIX account, WordPress account, etc).
– Business accounts for Instagram, YouTube, Facebook, Spotify, Shopify, LinkTree, MailChimp and more.
Protection and registration:
These assets are often protected by third party provider terms and conditions, user account access and passwords. Elements of these things can be protected by the Copyright Act.
Access or use may need to be purchased, licensed or subscribed to. However, generally these things cannot be registered.
Moral Rights: What you need to know…
While intellectual property laws primarily focus on protecting the economic interests and ownership rights of creatives, moral rights acknowledge the intrinsic connection between creators and their work.
Therefore, moral rights are generally concerned with the ethical (rather than economic) side of things.
Moral rights are protected in Part IX of the Copyright Act. These rights include:
1. Right of attribution: The right to be attributed as the author of the work.
2. Right against false attribution: the right not to have the work falsely attributed to someone else.
3. Right of integrity: The right for the work not to be treated in a derogary way.
Why it’s important to remember moral rights
Moral rights cannot be assigned, licensed or given away. Therefore, they are important to consider when using works or other matter protected by IP.
For example, let’s consider a business training manual. The author of the manual may assigned have their copyright in the manual to their employer. However, they retain the moral right to be identified as the author.
Our 3 key tips when it comes to moral rights:
1. Even if a business owns copyright in a piece of content, without a contract to the contrary, the original creator (for example an employee or freelancer) will retain moral rights in this content piece.
2. Moral rights can’t be ‘waived’ in Australia and do not need to be ‘asserted’ like in some countries. Like copyright, they automatically exist and are enforceable upon creation of a copyright work.
3. Critically, a person can consent to their moral rights not being honoured (i.e. a moral rights consent). For example, this means your employee might consent (contractually or otherwise) to you not naming them as the author of the training manual they wrote for your business.
Business IP Asset Register:
A Business IP Asset Register (or IP Inventory) lists all of the IP that is owned, licensed and used by a business. Crucially, an IP Asset Register helps break down each item of IP clearly and highlights any restrictions on use.
IP Asset Registers are a great way of keeping track of a business’ assets. They can be incredibly valuable for business’ looking to commercialise their IP assets, or for those looking to buy or sell businesses.
An IP lawyer can assist you to create a Business IP Asset Register
Further Information
If you think an IP Asset Register could be helpful for your business or you have another IP or business related enquiry, please contact us through our online form or via email at hello@studiolegal.com.au.
Written by Alyce Evans, Jennifer Tutty (Principal) and Lucy Diggle.
Published 11 September 2023.
Photo by Georgie Cobbs on Unsplash
DISCLAIMER
The information in this article is of a general nature. It does not constitute formal legal advice and should not be relied on as such. Please see the full disclaimer in our website terms. Please contact Studio Legal if you are seeking advice about a specific legal matter.