What is IP?

Intellectual property (IP) rights can be a business’ most valuable asset. For example, Forbes reported that while Disney’s 2013 hit Frozen grossed US$1.3 billion at the box office, the licensing of the IP rights accumulated US$107.2 billion in retail sales. Lucasfilm’s astute decision to retain the IP licensing rights for consumer products for the first six Star Wars films helped George Lucas become a billionaire.

Now let’s look at your business. You have a brand, maybe even a new idea, and you have a lot of excitement! Instead of your first move being to tell everyone, you first need to formulate a plan and brainstorm ideas to market and commercialise them. You need a plan to ensure protection and the best commercial outcome. This is where us lawyers come in!

IP is not a single item, it is a list of distinct forms of rights all bundled together. Traditional forms of IP can include:

Trade Marks;
Designs;
Patents;
Copyright;
Plant Breeder Rights;
Know how; and
Trade Secrets.

Once you have identified the IP and defined it, you are able to protect it or allow others to use it for a fee. The fact that IP rights can be traded or dealt with forms a starting point for how IP rights can be protected in a contract or licence. As different from other property or assets, when defining the IP right the certain characteristics and what needs to be protected will inform whether you need a trade mark registration, a design registration, or a licence agreement, etc, other examples of IP characteristics to consider include:

IP rights are intangible, meaning they require careful identification, provenance and articulation in a contract.
It can be challenging to verify the ownership and provenance of some IP rights, particularly copyright, which subsist without formal registration and know-how, and may exist only in someone’s mind, lacking substantiation or formality.
A significant risk is that IP rights are more vulnerable to being extinguished than other property. For example, if a registered trade mark is not used by the owner for a continuous period of 3 years, it is vulnerable to removal for non-use. Similarly, if someone can show that a patented invention was not new, the patent can be revoked. If work is not sufficiently original, its copyright can be vulnerable.

IP enforcement arises in the follow situations, but only if you have registered your rights appropriately:

somebody is suspected of using your IP without permission or in an inappropriate manner, and you would like to stop them, or
where somebody claims that you have infringed their IP rights.

Methods of enforcement will vary depending on a number of factors, including the type of IP and whether the action arises prior to or following the grant of a registered IP right. Good strategies for protecting IP will also assist the effectiveness of any enforcement action.

Stacey Brennan
Lawyer