1. DIGITAL PUBLISHERS’ GUIDE TO INTELLECTUAL PROPERTY
Simon Rowell, Partner

2. Digital Publishers’ Guide to IP
• Protecting your brand
• Understanding copyright
• Securing ownership of copyright in digital works
• Licensing of copyright in digital works
• Confidential Information

3. A. Protecting your brand

4. Common law v registered trade marks
Conduct a search prior to use – territory?
Pick a distinctive mark
File trade mark applications
o Word mark
o Logo
o Colours?
o Book titles?

5. B. Understanding copyright

6. Works protected by copyright
o Literary (includes software and compilations),
musical and artistic works
o Sound recordings and films
o Typographical arrangements of published
editions
o Communication works
Communication work means a transmission of sounds, visual
images, or other information, or a combination of any of those, for
reception by members of the public, and includes a broadcast or a
cable programme

7. Works protected by copyright
Note, a digital work may comprise one or all
of the foregoing works

8. Originality
• Sufficient independent skill, judgement and
labour went into creation
– Nine Network television programming schedule: Yes
– NO FEAR t-shirt slogans: No
• Not itself copied

9. Exclusive rights of copyright owner
o To copy or issue copies
o To perform, play or show the work in public
o To communicate the work to the public
o To adapt the work
o To authorise others to do the above

10. Exceptions to the owner’s exclusive rights
• Fair dealing
• Education
• Libraries and archives
• Format shifting
• Internet service provider liability

11. Duration of copyright
• Literary, artistic, dramatic and musical works: 50 years
after death of author;
• Sound recording or film: 50 years from date made or
made available to the public (whichever is longer)
• Publishers’ copyright: 25 years after publication
• Communication work: 50 years from first
communication to public

12. Infringement of copyright
• Takes a substantial part
• Importance of the part taken
• Is objectively similar
• Assessment of overall similarities: “a copy is a copy if it
looks like a copy”
• There is a causal connection
• Some copying has actually occurred

13. Idea v Expression of Idea

14. C. Securing ownership of copyright
[Image used on www.spicyindia.blogspot.com (4 Dec 2007)]

15. Securing ownership of copyright
• Copyright automatically exists
• Employee authors
• Commissioned works – text v illustrations
• Assignments
• Marking with © symbol recommended
• Retaining drafts recommended

16. Securing ownership of copyright
• Works contributed by members of the public
• Important to include terms of submission, to clarify
ownership / licence terms (eg open source, creative
commons)
• Wikipedia terms: To grow the commons of free
knowledge and free culture, all users contributing to
Wikimedia projects are required to grant broad
permissions to the general public to re-distribute and
re-use their contributions freely, as long as the use is
attributed and the same freedom to re-use and re-
distribute applies to any derivative works.

17. D. Licensing copyright in digital works

18. Owner’s permission to perform a restricted act
• Author’s licence direct to digital publisher
• Book publisher’s sub-licence to digital publisher
• Digital publisher’s licence (as © owner) or sub-licence
(as licensee of author) to a syndication partner,
subscriber, ISP or other third party
• One to many licence – GNU GPL or Creative Commons

19. Publishing licence
• Identification of work(s)
• Rights licensed – book, audio book, digital book, TV
and film rights, merchandise rights, etc
• Duration
• Territory
• Royalties
• Sublicensing

20. E. Confidential Information

21. • Exists by contract or by circumstance
• Submission or receipt of project ideas
• Employees

22. F. Patents

23. • Territorial
• Patentable subject matter varies
• Novelty
• Inventive

24. C. Questions?
[Image released to the public domain - http://commons.wikimedia.org]

25. C