Every year there are always a few publicised cases of businesses caught out using photos and artwork without agreement from the intellectual property owner. In each instance, the creator of the IP or a friend of theirs has stumbled across this unauthorised use, and the business involved has had to swiftly pull the offending merchandise and apologise. More than likely, behind the scenes, they have also had to deal with the other parties’ lawyers.
The whole unfortunate episode is certainly a hassle, reputational blow and a lost opportunity any business leader can do without.
Unfortunately, though, this is far more common than the high profile cases that make the news. One reason is because making these mistakes has never been easier – thanks to the internet and digital files. Still, few business leaders take the threat that IP theft represents seriously, despite the significant risk of potential legal action, which could even lead to crippling and expensive litigation.
Here are several ways your team might be accidentally, or even knowingly, making unauthorised use of IP owned by other parties:
- The dreaded right-click – it is all too easy for an employee to find a photo or other item on the internet, ‘right-click’ to download and save it, then use it for a client presentation, on your website, on products, and so on. To stop this, make sure your staff understands your company’s IP policy, and provide paid subscriptions to image banks, such as Dreamstime, Shutterstock, and Getty Images. Also, ensure the use of downloaded images, films and files, are in accordance with the copyright and ‘use’ levels set by each service. For instance, there can be different costs for using an image in a nation-wide ad campaign than a one-off use on webpage. Nevertheless, the cost of these services is far cheaper than the cost of dealing with a legal action from the owner of the IP.
- Bringing in IP from a previous employer – while it may seem helpful to know what your new employee’s previous employer was up to, allowing their IP to muddy the waters in your business could ultimately become a poison chalice. For your new hire, sharing confidential information, new product and service plans, and the like, are almost certainly a breach of their previous employment agreement. Should your business act on any of the IP they bring in with them and the other company becomes aware of this, there is the potential for expensive and nasty legal action against both the employee and your business.
- Creating without searching – when creating new brands and logos, products, designs, and inventions, it is essential to check official IP databases, such as trademarks, patents and designs registers to ensure something the same or very similar isn’t already protected by another party. I’ll never forget a local company that traveled to a gift convention with their ‘new’ coffee mug featuring a unique handle shape, only to have the actual owner of the registered design come across it as he wandered down the aisles. As the company was the licensee of the Olympic insignia for that product class, not only did they lose tens of thousands of dollars in destroying the infringing coffee mugs, they lost even more in potential profits from lost orders of that product line. Had their product designer simply searched the Australian designs register, they would have seen the unique coffee cup and avoided it altogether.
- Not seeking formal permissions – if a third party is happy for you to use their material, such as paragraphs from a book or article, a photo, footage, etc, ensure to obtain the right permissions in writing. Better yet, use a legal agreements, such as a licensing or supplier contract. It is not enough to assume the other party will be happy for the ‘exposure’. Then create a specific file for these written permissions and contracts so you can prove your right to use if the need arises.
- Breaching moral rights – in some cases, even with legal agreements providing for exclusive ownership or use of a third party’s copyright, changing intellectual property without their permission or not providing attribution (or worse still, the attributing the wrong person) can be a breach of a contract if moral rights have not been waived. Where possible, ensure a moral rights waiver is included in relevant contracts, such as employment, sub-contractor and supplier agreements.
- Other types of infringement – there are a myriad of other ways IP can be infringed so it is important to ensure that your business creates a culture that is respectful of intellectual property and IP owners. You can achieve this by putting IP on the agenda in your own business.
Of course, should your business face any of these issues, speak to an IP lawyer and get the right advice about how to proceed. Trade marks attorneys (I can help!) and patent attorneys can conduct the searches you need when creating new products, and also file for your own IP protection.
And to decrease the likelihood of your team making any of the above listed mistakes, circulate an IP policy, and organise easy online IP training through KOMO.
To read other helpful IP articles, including about ‘Dirty’ and ‘Ghost’ IP, visit my profile: https://au.linkedin.com/in/aliciamayergaicd.