Trade Marks and Copyright: The Difference Explained

Trade Marks and Copyright: The Difference Explained

Trade Marks and Copyright: The Difference Explained

Trade marks and copyright: the difference explained

For many businesses, intellectual property is one of their most valuable assets. We often get questions from our clients on how they can best protect their intellectual property, but what we have noticed is that many of them struggle to identify what specifically they are trying to protect.

This is completely understandable because intellectual property comes in many different forms. The two most commonly used types of intellectual property protection are trade marks and copyright.

In Australia, we refer to trade mark in two words, consistent with the legislation. Overseas, it is common to combine the words to ‘trademark’. They each refer to the same thing.

Some of the frequently asked questions we get include ‘What can I trade mark?’, ‘Can I sue someone for using my trade mark?’ or ’How do I protect my copyright?’. In this article, we will answer these questions for you.

Firstly, let’s explore the difference between the two.

Trade marks – protection of your brand

If you have been running your business for some time and have established substantial goodwill and reputation, your business name becomes your brand. Your brand is your trade mark. Two of the fastest growing trade marks in 2020 were TikTok and Zoom. When you hear those names, you can immediately bring to mind the kind of services each platform offers, even if you haven’t used them yourself.

Think of a trade mark as a ‘badge of origin’. It is anything that distinguishes your goods and services from those offered by other traders in the market. It can be your business name, logo, slogan, colour or even a sound, or a smell – although scent marks are very rare.

Your trade mark is a valuable marketing tool. The purchasing decisions of consumers are often influenced by the brand, so the higher your brand recognition, the more you may want to prevent your competitors from using a similar brand to provide similar services and benefit from your hard-earned success.

Think about how people by cars, or shoes. Many people favour a particular brand of motor vehicle because it is either something they have always driven, or it has a brand promise that they believe in or relate to. For example, Toyota is known for reliability, and Ferrari is the world’s most well known racing car. In shoes, people will often favour a brand like Asics, or Adidas, or Nike depending on their preferred sport, or sports stars.

So, how do you gain the exclusive right to use your trade mark and take actions against those who infringe it?

The answer is by registration. We will talk about this further below, first lets look at how copyright is different from trade marks.

Copyright – protection of your original creative works

Copyright has more substance that a trade mark and is more likely to be judged on the amount of creative input required to develop the work to be protected. Where a word can be a trade mark, a word by itself won’t be protected under copyright.

Copyright protects the creation of literary, dramatic, musical, artistic, and certain other types of intellectual works.

When you write a book, you are the copyright owner of that book (unless you have agreed to transfer your copyright to someone else). When you create online education materials, all your materials, including videos or audios, are your copyrighted material.

Just like trade marks, your copyright materials can be extremely valuable to your business. But unlike trade marks, you do not need to register copyright to gain protection. Copyright is generated automatically upon creation of the work.

There is one exception to that rule, and that is the registration of digital works in the United States. If you want to claim protection of a digital representation of your work in the United States, you must first register that work with the Electronic Copyright Office.

To have copyright protection, you must document your ideas and have it in some sort of tangible form. The easiest way would be to write it down. A visual or audio recording is also sufficient. It is important to understand that a mere idea is not protected. This is part of the reason that businesses rely on non-disclosure agreements and confidentiality deeds. Those sorts of agreement can provide you with protection of an idea before it is discussed and before it has been documented or produced in some other form capable of copyright protection.

What protections do you need?

As you can see, trade marks and copyright are two very different types of intellectual property. What you can do to protect them is very different too.

Trade marks – protection by registration

A trade mark can exist without being registered; however registration gives you the exclusive right to use your trade mark and makes it much easier to defend.

What this means is that you will have the legal right to stop others from using your trade mark and when necessary, take legal action against them to defend your rights. Just be aware that it is your responsibility as the trade mark owner to keep an eye on the marketplace and identify any infringement or potential infringement of your trade mark. When you see someone using your brand, or something very similar to your brand, you should tell them promptly, and request that they ‘cease and desist’ the infringement.

From time to time, we have clients who have already contacted someone they believe to be infringing their mark without persuading that person to stop their infringement. Sometimes, this is because our client doesn’t have the rights they thought they did, and sometimes it is because they have stated their rights incorrectly. It is important to check what rights you have first, before making any claims. We have a number of strategies for communicating with infringers to bring about a quick resolution to your concerns.

In Australia, if you do not have a registered trade mark, it can be an offence for you to threaten legal action against someone for using your trade mark. If you do have a registered trade mark, you should be notifying infringers that you do, and asking them to stop infringing your trade mark. This is usually done with a cease and desist letter.

Copyright – protection by documenting your ideas and creating tangible material

Registration is not required to protect copyright. Copyright material is protected as soon as it is created (in tangible form, that is). As the copyright owner, you have the exclusive right to reproduce your work, commercialise it, and be recognised as its creator.

As already mentioned, the one exception is the requirement to register a digital work with the Electronic Copyright Office in the United States if you want to take action against someone in the United States for copyright infringement.

Unlike trade marks, we are not aware of any countries outside the United States that have official registers or databases for copyright, so in most cases, people won’t be able to conduct searches to see if something is an original creation.

Because there is no form of registration and in pursuing someone for infringement you might be required to demonstrate that you are the original creator of the work, it is especially important for you to use one or more of the following strategies to protect your copyright:

  • keep a record of your evolution of ideas – as evidence of the progression of your work
  1. drafts, sketches, rough recordings, plans etc
  • insert footprints into your work (eg. deliberate mistakes or hidden data that identify you as the author)
  • watermark your work
  • use technology to make it harder to copy your work electronically
  • include a copyright statement on your work – this alerts people to the fact that your work is subject to copyright and you intend to protect it © [your name] and [the year the work was created]
  • include copyright use provisions in the terms of use or terms and conditions of your website that clearly set out what people can and cannot do with your published work
  • provide your contact details so people can ask for permission to use your work
  • if your work gets used regularly in educational institutions, government or big business, then register your work with the Copyright Agency to receive any royalty payments collected on your behalf
  • have template cease and desist letters you can send to people you believe to be infringing your work, politely asking them to stop.

What happens if you don’t take steps to protect your interests?

Under both trade mark and copyright law, if you don’t take steps to protect your interests you can lose your rights.

For trade marks, you must use the mark in the form registered, and take steps to stop others using your mark in order to keep the protection that registration provides.

For copyright, if you don’t let people know that they are infringing your copyright, you can make it harder to prove that you created the work in the first place, and if you knowingly let things pass, you may be deemed to have given permission for use.

Consider creating an intellectual property register for your business so that you can keep track of your different types of intellectual property, when they were created, who created them, and what you have done to protect it. Your intellectual property is an asset to your business.

How long do protections last?

Trade marks – 10 years

A trade mark registration lasts for 10 years from when you first file your application. You can renew your trade mark registration by paying renewal fees any time before the expiry of six months after the date your registration is due to lapse.

Copyright – creator’s life plus 70 years

The duration of copyright can vary depending on the type of work and whether the owner is an individual or a company, but generally in Australia, it is the life of the author plus 70 years.

Summary

To summarise the differences between trade mark and copyright protection:

  • your brand and logo are protected as trade marks, upon registration
  • your content and materials are protected by copyright, upon creation
  • you can and should take a variety of different steps to protect your intellectual property

Need help?

If you would like help identifying your valuable intellectual property, creating an intellectual property register and protecting your intellectual property, contact Onyx Legal.

Intellectual Property Protection – What is it? & Why You Need it

Intellectual Property Protection – What is it? & Why You Need it

Intellectual Property Protection – What is it? & Why You Need it

What IS INTELLECTUAL PROPERTY? 

If you are a business owner, it is important for you to understand that your intangible assets, the ones you can’t pick up and hold, are just as valuable as your physical property.


If you haven’t appreciated the value of your intellectual property before now, you might not have taken any steps to protect it. Unfortunately, the point where you recognise value is often when it’s already too late and other people are already exploiting your name, or your brand, or your ideas, and reaping all the benefits.

WHAT RISKS DO YOU FACE IF YOU DON’T PROTECT YOUR INTELLECTUAL PROPERTY?

Almost all businesses you have heard of or are looking for are either offering products or services online or marketing their business online in order to reach as broad an audience as possible. But not all businesses realise that the higher the exposure, the higher the risk of your content being copied, misused or stolen.

You do not want to put yourself in a situation where you make it too easy for someone to infringe your intellectual property or even worse, have them infringe your intellectual property without you even realising it’s happening; consider the current feud between McDonald’s and Hungry Jack’s over the ‘Big Jack’ burger.

HUNGRY JACK’S ‘BIG JACK’ TOO MCDONALD’S BY SURPRISE

Whilst McDonald’s did take action back in the 1970’s to register the trade mark ‘Big Mac’ after years of comfortably holding sway with the name, they stopped checking their core competitors’ trade mark registrations and November 2019 Hungry Jack’s dared to see if they could get the ‘Big Jack’ through.

Surprisingly, they did! Examination was expedited, and although an adverse report was initially issued the response was filed, considered and accepted within days, resulting in registration in about half the time typical for current filings. Sales were initiated in late July 2020 and McDonald’s filed a claim in the Federal Court opposing the trade mark within a month.

Regular monitoring of filings might have enabled McDonald’s to object before registration, with the opportunity to stop the application getting through, stopping the Hungry Jack’s campaign before launch, and saving the cost of having to start court proceedings.

In November 2020 the case was still ongoing and mediation had been ordered. In the meantime, the Big Jack is on menus around the country.

Apart from trade mark infringement, one of the most common complaints we see is copying of contenT… 

… usually by someone who has been involved with your business as an employee or contractor, or as a customer.

Customers tend to take your information and think they can do it better, but without the grounding you have in the history of the product or service, often fail after a short period. With millennial employees, our experience has been sheer ignorance on the part of the employee of what is expected of them, even if it was clearly written into their employment contract. With contractors and more mature employees, our experience suggests that intellectual property theft tends to be based more in what they think they can get away with and has been conducted on an assessment that you won’t take action.

So, if you are still doing nothing to protect your intellectual property, then you are exposing your business to a significant amount of risk and the potential for the high costs of enforcement as compared to prevention.

Not only could your business lose its competitive advantage in the market, but poor-quality imitations of your content can also ruin your business’s reputation.

DON’T PANIC 

This article helps you consider what intellectual property you need to protect and offer some tips on how you can do that.

WHAT IS INTELLECTUAL PROPERTY?

It is important you understand the scope of your intellectual property.

As the name suggests, intellectual property is any property or creation of your mind or intellect. Whenever you develop a new product, service, process or idea, that is considered your intellectual property and belongs to you.

From small things such as the name on your door, to bigger things like your secret recipe, or an innovative invention, these may all be your intellectual property. These are the things that differentiate your business from other businesses in the market and therefore give your business its commercial value.

Common examples of Intellectual Property for online business:

  • brand name and byline
  • logo and colour choices
  • website meta information
  • website content – visual, video, written, downloadable
  • content – planning, drafts, upgrades
  • customer lists – email, SMS, FB messenger, push notification
  • customer service – processes, scripts, emails
  • internal operating processes and procedures
  • business delivery methodology
Intellectual property can be divided into the following categories. Which category you need to seek protection under for your creation will depend on your product or service.

1. Trade Marks

Many businesses register trade marks to protect their interests. The value of your trade mark increases with the success of your business, so consider when the best time will be for you to register your trade mark.

A trade mark is a form of brand recognition that distinguishes your product or services from your competitors. It helps consumers recognise the source or quality of your products or services. It could be a word, logo, phrase, letter, number, picture, or even a smell. For example, both Google and Facebook have registered their names as trade marks to protect their exclusive rights.

You may wish to do the same and register your business name as your trade mark to prevent anyone else from using it. You could also register the name of your core product or your core service as a trade mark. Think ‘Big Jack’.

Do not confuse trade mark registration with registering a business name with the Australian Securities and Investments Commission (ASIC). Registering a business name with ASIC is your legal obligation, which would allow you to use that name to identify your business. However, it does not stop others from using the same or similar name the way a trade mark registration does.

Similarly, registering a domain name does not give you the exclusive right to use it the way a registered trade mark does, and there are limits on the way trade marks can be used in domain names and on websites.

2. COPYRIGHT

Copyright is a bundle of rights in creative work such as text, artistic work, music, computer programs or films. For example, if you draw a sketch, write a book, a journal article or a movie script, those would be protected by copyright. (Copywriting is writing of copy, usually with the objective of making someone want to buy. Two different concepts.)

As the copyright owner, you have the exclusive right to reproduce your work, decide how it will be published and distributed, and keep it from being used or modified by others. If you allow other people to use your work, you still have the right of attribution. What this means is that anyone using your work has to give you credit by for example, putting your name or photo on or next to your work. Commercial exploitation and attribution rights are separately enforceable, not linked.

Be aware that copyright does not protect what are merely ideas or concepts. Your work has to be in some material form (ie. written down or recorded in some way) to be protected. So even if you have a brilliant idea in your head for a movie, but you have not written it down as a script or storyboard, then that idea will not be protected by copyright.

3. patents

If you have an invention or innovation that you wish to protect, then you should look at patent registration. You may need a patent when you have developed a new device, substance, method or process. For example, it may be a solar panel, a new textile, or even medicine. Patent registration gives you the exclusive right to exploit your product for commercial gain.

Onyx Legal doesn’t specialise in patent registration and we can instead refer you to a patent attorney.

4. DESIGNS

Designs are like a mixture of copyright and patents, but what you are protecting is the design or appearance of your product. That may include its shape, colour, configuration, pattern or ornamentation. Sometimes, the overall visual appearance of your product may be so new and distinctive that it forms a valuable asset of your business. Examples of designs include the ball chair, the mankini, or the Tiffany box.

Design registration gives you the exclusive right to make, import, sell, hire, use or keep a product based on that design.

5. TRade secrets and confidential information

All businesses have trade secrets and confidential information. Your employee, client and supplier data are examples of your confidential information. Trade secrets might be secret formulas, practices, processes or any other information that has commercial value because it is not generally known by others. Trade secrets are also a type of intellectual property.

As the holder of trade secrets and confidential information, you need to take steps to protect that information and maintain its secrecy. For example, you can prepare confidentiality or non-disclosure agreements to help ensure that whoever you disclose trade secrets to must keep it confidential. It is also advisable to ensure you have provisions in employment agreements and contractor agreements if you have others contributing to your business. 

COCA-COLA PROTECTING ITS INTELLECTUAL PROPERTY

To give you an illustration of how important it is for businesses to protect intellectual property, let’s take the familiar brand of Coca-Cola as an example.

The Coca-Cola company owns the trade mark ‘Coca-Cola’, as well as the trade mark on the graphic designs of their name, and even the shape of their bottles. You may think that it is being overly cautious, but these are all valuable assets of its business which distinguish it from other cola brands.

Imagine what would happen if Coca-Cola’s competitors are able to use its unique bottle shape, logo, brand name or design to mislead consumers into thinking that they are the real Coca-Cola.

Of course, Coca-Cola’s formula is a trade secret. The company has high security measures to protect its secret formula and ensure that it remains completely confidential.

The success of Coca-Cola depends largely on its ability to obtain protection of its intangible creations and assets. The key takeaway here for you is, if you want your business to stay competitive in the market, it is crucial for you to consider effective protection of your intellectual property.

HOW DO YOU PROTECT YOUR INTELLECTUAL PROPERTY?

You must be prepared to spend money.

  1. Protection by registration

Patents, designs, and trade marks can be protected through registration. In Australia, registrations are made with IP Australia.

Registration offers you the most secure legal protection, with codified exclusive rights. If someone infringes your rights, you are entitled to take legal action against them.

Be aware that in design registration there is an extra step which requires your registration to be certified before you can enforce your rights.

If a dispute ever arises, it is less costly to defend a registered right than an unregistered one because your registration serves as proof of your ownership.

  1. Automatic protection

There is no system of registration for copyright in Australia.

If you are the creator of copyright work, you automatically get copyright protection in the work upon its creation (ie. as soon as it is written down or recorded). Copyright vests in the employer for works created in the course of employment. 

If you sell into the United States market, you must register digital products with the Electronic Copyright Office before you can enforce your rights in the United States.

Because there is no registration system to protect your copyright in Australia, consider placing a © symbol or label on your work to indicate that copyright belongs to you and you intend to protect it. This can act as a deterrent to potential infringers.

There is no right order. Consider including a copyright statement that looks something like this:

“© the year of first publication and your name ”

For example, “© 2020 Onyx Legal”.

Similarly, there is no system of registration for trade secrets either. You will need confidentiality agreements for people to sign so that they do not disclose your trade secrets without your permission, as well as provisions in your employment and contractor agreements.

  1. Confidentiality/ Non Disclosure Agreements (NDA)

Whenever you share trade secrets or any confidential information with your employees, contractors or business partners, you need to ensure that they don’t share it with anyone else.

The most effective way to prove their agreement to protect your intellection property is to prepare an NDA which holds the other party liable for intentionally or unintentionally disclosing any confidential information without your consent.

However, keep in mind that no contract or agreement is any protection against human misbehaviour, so whilst it will remind most people to do the right thing, it does not offer 100% protection of your intellectual property.

4. PRACTICAL MEASUREs

The more effort you put a potential copycat to, the less attractive your product or service is to being copied. Within your business, it might be cheaper to educate staff and contractors rather than taking them to court. Some practical measures you could apply are:

  • watermarks
  • PDF rather than text downloads
  • a pay wall before access
  • terms and conditions on your website and for access through pay walls
  • contracts and agreements
  • employee education and training
  • internal policies
  • an intellectual property register
  • creating a method or framework eg. Six Sigma
  • keep an eye on competitors
  • create your own enforcement process map
  • regularly search for your core product or service
  • give cease and desist or take down notices to infringers

WHAT IF YOU WANT TO LET SOMEONE USE YOUR INTELLECTUAL PROPERTY?

You may wish to grant licenses for individuals or businesses to access or use your intellectual property for either personal use or commercial use. For example, Disney grants licenses to toy makers to use Disney characters for commercial purposes. Or if you are an online educator, you may grant to your customers a license to access your online classes for personal use.

Creative Commons licencing is one option to define your licence terms for public online content, but other content is usually protected by drafting a clear and appropriate license agreements.

From an asset protection perspective, you might extablish a separate holding entity to hold your business intellectual property and licence use of it to your trading entity. 

When you license your materials to others, it is important for you to define the parameters of  use of your intellectual property, including timing and payment. 

IT IS YOUR RESPONSIBILITY TO ENFORCE YOUR INTELLECTUAL PROPERTY RIGHTS

Don’t think that by having your intellectual property registered or protected by a NDA, you can sit back and relax. That is only the first part of it. As the owner of intellectual property, you are responsible to identify infringements and enforce your rights.

What constitutes an infringement varies depending on the circumstances.

Whenever you are not sure about grounds to allege an infringement, then you should always be cautious and get legal advice before sending out any correspondence to the offending party. It the action in question does not constitute an infringement, your accusation may be considered as a groundless or unjustified threat. If that is the case, then the other party might be in a position to bring a claim against you.

Want more information?

A good understanding of the scope and value of your intellectual property can help you decide what steps to take to protect it, and improve the long term value of your business.

Make an appointment with us at Onyx Legal to discuss appropriate strategies for the protection of your intellectual property. 

Using Copyright Material Online

Using Copyright Material Online

Using Copyright Material Online

What is copyright?

Copyright is the legal protection given to any kind of work (eg writing, movies, website content) which has been created by a person. 

Copyright gives the owner of the copyright in the works the exclusive rights to:

  • reproduce the works
  • publish, perform or otherwise introduce the works to the public for the first time and any other time thereafter
  • control the importation of the works to other countries
  • rent the works out to other people
  • assign or license the rights in the works to others. 

There is no need to pay for, register or apply for copyright in any works, it is something that is automatically given when new works are created. 

The work does not need to be published, or made available to the public in order to be protected by copyright, nor does it need the copyright © notice. Protection is free, instant and automatic as soon as the work is created.

Copyright protects a wide range of works which include:

  • written work (“literary works”), which include newspaper and journal articles, songs, poems, screenplays, novels etc
  • computer programs
  • compilations, which include things like albums 
  • artistic works, such as paintings, drawings, photographs, sculptures, architectural plans, buildings etc
  • dramatic works, such as screenplays, theatre works and choreography
  • live performances
  • musical works
  • films 
  • broadcasts, such as television or radio broadcasts
  • published editions (copyright applies separately to the layout of a publication and to the actual content of the publication)

Some works which attract copyright protection, have copyright in more than one aspect of the works.

For example a musical recording will attract copyright in relation to:

  • the lyrics of the song
  • the musical composition of the song
  • the actual recording of the song
  • and also in relation to the live performance of the song.

Who owns copyright?

Although parties may agree to change the standard position on copyright, generally, the person who creates the work is the owner of the copyright in those works.

There are a few exceptions to this rule however:

  • Where work is produced by an employee for the employer. By law copyright belongs to the employer. When signing a contract for employment, the employee will usually confirm that they assign to the employer any copyright in work produced by the employee as part of the employee’s job.
  • Where work is produced by a freelancer, such a photographer, the general position is that the copyright will be with the freelancer. The exception to this is where somebody commissions a freelancer to produce work for a private or domestic purpose. For example, the photos produced by a photographer at a wedding; copyright will sit with the bride and groom, not the photographer unless there is something different in writing between the parties.
  • In relation to film and sound recordings, usually the copyright will be owned by with whoever paid for the recording to be made (eg. the producer).

What are moral rights?

Even if the creator of the works does not own the copyright in the works (such as when an employee develops some work for their employer), the creator still has what is known as ‘moral rights’.

Moral rights give a certain amount of protection to the work of the person who created the works. These rights include:

  • The right of attribution, which means the creator has the right to be given credit for their work when used by anyone else – including the owner of the copyright. For example if a photograph appears in a magazine, although the magazine may own the copyright in the photograph, the photographer still has the right to be given credit for their photo by having their name put on or next to the photograph.
  • The right to defend against any false attributions to their work. That is, if someone gives credit to another person for the creator’s work, the creator may take legal action against this. After this change in the law a variety of people who had had books ghost written suddenly started acknowledging the true writers for their ‘contribution’.
  • The right to take legal action if their work is treated in a way which has a negative impact on their reputation. Like a building being defaced.

A person can only give up their moral rights by agreeing to do so, in writing.

attribution of works

Attribution is like avoiding plagiarism.

Attribution of works means that, in your work, you give credit to the other people whose work you have used within your own work. This ensures that you do not breach the creator’s moral rights.

Attribution of another person’s work may also be necessary where you use material under a creative commons license or where you intend on relying on a ‘fair dealings’ exception to copyright infringement. These are discussed below.

How do I properly attribute the work of someone else?

If the creator of the works has not specified how they would like to be attributed, then as long as your attribution is clear and obvious enough that the audience to your work knows who the original creator of that particular part is, that is all that is needed.

WHAT DOES ‘FAIR DEALINGS’ MEAN – AUSTRALIAN POSITION?

‘Fair Dealings’ are those situations where you may use someone’s work (which would normally be protected under copyright law), without asking for their permission to use it.
There are very defined circumstances when this can be applied. To fall under the ‘fair dealings’ category, the use must be for one of the following reasons:

  • research or study 
  • criticism or review – this involves making a genuine review or critique of the material or the ideas underpinning the material, there cannot be ulterior motives for the review/critique 
  • parody or satire 
  • reporting news – the reporter must be using the copyright protected works for the main purpose of reporting the news, not for any other purpose (such as a funny article which is actually intended to entertain the audience rather than report the news)
  • and for the purposes of advice by a lawyer, trademarks or patent attorney.

To rely on any of the ‘fair dealing’ exceptions to copyright, you must be able to prove that the use does in fact fit into one of those categories above, AND that the use of the work in question was also fair in the context.

In addition, if you use copyright protected works without permission and plan to rely on a ‘fair dealings’ use, then you must acknowledge the source and the author of the original works in your own work (see attribution above).

What does ‘fair use’ mean – United States position?

In the United States, there is a similar concept called fair use. The fair use exemption is wider than the Australian concept of fair dealings. 

The United Sates provision includes purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research. These categories are more flexible than the strict Australian counterpart. 

To determine if a use is a ‘fair use’ the following factors should be considered:

  • The purpose and character of the use, including if the use is of a commercial nature or is for nonprofit educational purposes. The more commercial the intended use, the more likely the fair use exemption will not apply. 
  • The nature of the copyrighted work.
  • The amount of the portion used in relation to the copyrighted work as a whole, and whether it is a substantial part. Substantial does not necessarily mean a lot. It can be a small but distinctive part.  
  • The effect of the use upon the potential market for or value of the copyrighted work. 

So, if you plan to use copyrighted material for one of the categories (eg news reporting) then you may be able to do so if the use would be fair (based on a consideration of the above factors). In general, the word fair means the use is not harmful to the original creator of the work. 

In this example, the use of an audio clip (like a quote from Winston Churchill) or a video clip (from a movie or television program) to emphasise a point in a podcast, would be likely to be considered fair use.

What is a creative commons licence?

A Creative Commons license is a license that the owner of copyright may choose to use to allow other people to use their works without any payment or need to ask permission for use.

There are various Creative Commons licenses which set out the different terms of use according to the type of license chosen by the person who owns the copyright. Some licenses may only need you to give credit to the person whose work you are using. Other licenses will prevent you using that particular work for commercial or profit generating reasons etc. 

WHERE CAN I GET CREATIVE COMMONS LICENSE MATERIAL FROM?

Material which is made available for you to use via a creative commons license (ie. you don’t have to seek the copyright owner’s permission before using it), is available right across the internet.

One good place to start is creativecommons.org.

This website allows you to search a range of sites which offer creative commons licensed material for your use. 

WHEN DO I NEED PERMISSION TO USE COPYRIGHT MATERIAL?

As a general rule you must get permission to use someone else’s works whenever you want to use those works in a way which is reserved for the exclusive use of the owner of the copyright. ie. whenever you want to publish, communicate, reproduce, perform or alter the works, or any part of the works.

Even using a small part of some copyright protected works could see you infringe copyright. If the part that you want to use is a “substantial” part, that is it is an “important, essential or distinctive” part of the works, then you will need to get permission from the copyright owner.

As an example, still shots from movies and television programs are something you should, in theory, seek permission to use. However, unless you are using that still for a commercial purpose (eg. putting on mugs or t-shirts and selling them because of the image) you are unlikely to have any problems.

Some good questions to ask yourself, “Am I using somebody else’s work?” If yes, then: 

  • Has the creator of that work used any skill or labour to create the work that I would like to use? For example, have they gone out to a statement from a source themselves, or have they copied the statement from somewhere else? If they made the effort to get the statement themselves, that act has required some skill and labour from the copyright owner, whereas copying a statement obtained from another source would not. 
  • Do I want to use a “substantial” part of the other person’s work? ie. Is it an important, essential or distinctive part of the work that I want to use? The word “substantial” does not indicate the amount of the work that you want to use, as a percentage for example, just the overall significance of what you want to use.

If you answer ‘yes’ to these questions, the safest option is to seek permission from the copyright owner to use the material in questions.

There are some exceptions to this rule however, where there is: 

  • a ‘fair dealings’ exception
  • creative commons license, or
  • copyright has expired (generally 70 years after the death of the creator however there are various times depending on the year it was created or first published).

WHERE DO I GET PERMISSION TO USE COPYRIGHT MATERIAL?

A good place to start when looking for permission to use the work of someone else, is with the publisher of those works.

Another place is with a copyright collective agency. These are agencies which grant permissions and receive payments for copyright licenses in a range of copyright protected industries. There are many such agencies right around the world which operate locally (such as across Australia) or globally.

In relation to use of government owned materials, you should check the government websites for permitted use for each particular government.

How can Onyx Legal help you?

If you want purchase copyright work, license copyright work, ensure your employees understand that you own copyright in their creation, protect your copyright work, or defend a claim of copyright infringement contact us.

Avoid copyright infringement with Facebook Live

Avoid copyright infringement with Facebook Live

Avoid copyright infringement with Facebook Live

On 3 February 2017, Australian television broadcaster Foxtel televised a highly anticipated boxing match between two well-known boxers, Danny Green and Anthony Mundine. To watch the fight, viewers were required to subscribe through Foxtel and pay a fee to watch the fight live on TV.

Australian resident Darren Scopyright fair use in Australiaharpe was a genuine Foxtel subscriber who paid the required fee to watch the fight live. For those who aren’t exactly sure what live streaming is, it’s the ability to broadcast audio and video as it happens. Any time you want to “go live” you can and anyone watching your posts on Facebook can see you, or whatever it is you are streaming.

Sharpe made the mistake of using his phone to record the fight and stream it live through Facebook Live. While he was live streaming the fight, Sharpe received a call from Foxtel asking him to stop. It was reported that he said he couldn’t, because he has 70,000+ people watching it, which was exactly Foxtel’s point. While Sharpe was allowing a bundle of people to watch the fight for free, Foxtel and all those Sports Bars out there were losing revenue.

When Sharpe refused to stop the streaming, Foxtel immediately suspended his subscription, himself and his followers missing the rest of the fight.

Sharpe did what he did on purpose, and continued after receiving notice of infringement. You should also be aware of the risk of accidental infringement. You might have seen some television shows blur posters, signs, t-shirt branding and other images. It is usually because what has been blurred is protected by copyright and the producer didn’t get permission. It is easy to blur a background image when you have the ability to edit, but not in live streaming. If you infringe someone’s copyright, even accidentally, there can be consequences you didn’t anticipate.

Originally Foxtel claimed that it would pursue legal action against Mr. Sharpe for breaching copyright. Luckily for Mr. Sharpe, that legal action was dropped after he posted a carefully worded public apology on his Facebook page. It is unclear what conversations occurred between Foxtel and Facebook. Given that Mr. Sharpe was able to so easily live stream the fight from his Facebook page, it raises the question –

Should Facebook be responsible for copyright infringement?

Probably not.

One side of the argument is that Facebook should be more responsible for what users post as it has the ability to police the content on its website and act quickly to disable infringing material. On the other hand it is costly and time-consuming to monitor the Facebook page of over 1 billion users. Facebook terms and conditions do require all users to have permission to use the content they upload, whether written, audio, video, or as is now available, through live streaming.

United States legislation requires online service providers, such as Facebook, to take action against copyright infringement. The Digital Millennium Copyright Act (“DCMA”) exempts online service provides from liability for copyright infringement by its users in certain situations. There is no Australian equivalent. The exemption requires online service providers to take down, remove or disable access to infringing material where it is given notice that offending material has been posted on its network. It is clearly working. Facebook’s copyright policy provides rights holders with an easy mechanism to give notice to Facebook that intellectual property have been infringed and have the offending material removed or have a user’s profile disabled.

Facebook Live copyright infringement

Can Facebook be over zealous in taking down infringing content?

Has the DCMA and its safe harbours caused Facebook to be over zealous when taking down material and disabling profiles?

Facebook page administrators are given no warning that the page would be shut down. Anybody with an email address, real or fake, can make a complaint to Facebook without having to validate the claim, effectively giving anyone the ability to shutter any page without proof.

Facebook has suffered criticism in the past (Huffington Post) for shutting down pages where copyright has been alleged, when in fact no copyright infringement existed. The above extract of Facebook terms shows the ‘hands off’ approach taken by the company after Facebook has removed content. What is worse, is when a business page is removed without warning, taking potential customers and contacts with it. In late 2017 a Queensland client had their page removed and received email notification from Facebook referring them to the company that lodged the complaint.

Hello,

We’ve removed or disabled access to the following content that you posted on Facebook because a third party reported that the content infringes or otherwise violates their trademark rights:

Page: ###

Facebook is not in a position to adjudicate disputes between third parties. If you believe that this content should not have been removed from Facebook, you can contact the complaining party directly to resolve your issue:

Notice #: ###

Contact Information
Rights Owner: ## Inc.
Email: ##
Trademark: ##

If an agreement is reached to restore the reported content, please have the complaining party email us with their consent and include the original reference number. We will not be able to restore this content to Facebook unless we receive explicit notice of consent from the complaining party. Please note that the complaining party is not required to respond to your request.

We strongly encourage you to review the content you have posted to Facebook to make sure that you have not posted any other infringing content, as it is our policy to terminate the accounts of repeat infringers when appropriate.

For more information about intellectual property, please visit our Help Center at https://www.facebook.com/help/370657876338359/.

The Facebook Team

In this instance, the rights holder had a trade mark registered in the United States. Intellectual property rights are not granted worldwide. The Queensland company had the same trade mark registration pending in Australia. Facebook appears to be very U.S.- centric in how it reviews rights. The help centre information suggested that an appeal process would be available, but then failed to respond to any communication.

Facebook-content-take-down

Facebook’s aggressive stance on copyright and trade mark infringement may hinder the impact of genuine rights holders. Where someone in the United States and Australia have the same trademark in respect of similar goods, both are equally as enforceable as each other in their respective territories.

Facebook has put the onus back on rights holders to work the details of the infringement out for themselves. Their copyright policy states that users can follow up (by email) with the person who alleges the infringement. It also provides guidance on how to file an appeal if the content was removed due to a take down notice under the DMCA.

Facebook’s policy surrounding two legitimate rights holders is not clear but it appears they are acting cautiously. It may be the case that whoever gets in first to lodge infringement with Facebook may be the winner.

However, in the case of live streaming, Facebook’s response time might simply not be quick enough to protect their interests and alternate avenues will have to be explored.

How can Onyx Legal help you?

If you have any questions about copyright or trade marks, contact us to find out how we can help.

What Happens when Someone Claims Copyright Infringement Overseas?

What Happens when Someone Claims Copyright Infringement Overseas?

What Happens when Someone Claims Copyright Infringement Overseas?

Where in the world can you take action for copyright infringement?

The topic for today is copyright.

Our client has received a letter of demand from Germany.

Now, you are not obliged to go to the courts somewhere else in the world if on your website you have terms and conditions that say the governing law is Australia, or if on your piece of material it says the governing law is Australia. Copyright laws are similar internationally in line with treaties, but are limited by country if you want to take legal action. If you specify the governing law you are in a position to argue that an action started somewhere else in the world is outside its jurisdiction.

So in our client’s case, the dispute is in regard to a book cover. The inside cover states that the governing law is Australia, it’s published by an Australian company and the artist involved is based in Germany.

We have told the German lawyer, “If you want to take action against our client, come here to Australia and take action here.”  Because even if there is a decision in Germany, they can’t enforce it against our client in Germany because the client has no property there. That means they can’t make our client pay unless they come here to Australia and execute against the client’s property here in Australia. So they have an uphill battle in front of them.

When you’re being pursued by someone from overseas for a copyright issue, remember it’s going to be hard for them to get money out of you if they’re in another country. 

How can Onyx Legal help you?

If you are worried that someone is infringing your rights under copyright law, or you receive a letter alleging that you are infringing copyright law, contact us so that we can help you chart a way forward.