Whether a business thrives or slips away into the abyss of failure can be determined almost entirely on whether people know about the business and its products and/or services. This awareness may be largely based on the business’ marketing strategies. Therefore, when businesses commit to either large or small scale marketing, utilising social media and/or professional marketing firms, often the content created can be of a proprietary nature and should be protected. The problem however is that when businesses invest, sometimes large sums, for creative campaigns which consist of memorable slogans or jingles, some businesses do not take advantage of the property rights which might arise from their investments.
In this article I seek to explore the benefits of Intellectual Property (IP) rights, particularly copyright and trade marks, and why it is imperative for businesses to seek the benefits of the available IP protection.
What’s mine, is mine- Copyright, Trade Marks and Exclusive Rights
For copyright, governed by the Copyright Act, once a person has created an original work from the protected categories of works, copyright vests. These categories include literary, dramatic, musical or artistic works. Once the work is created, the author in ordinary circumstances is also the owner of the work, and the copyright in it. Now in Jamaica, copyright may even be registered with the Jamaica Intellectual Property Office for added protection.
An important consideration for a business is that where a work is created by an employee, in the course of employment, while the employee is the author of the work, the employer, being the company, will be considered the owner of such work, unless a contrary intention is shown (where the employee is engaged by the Crown, the Crown is the first owner). For works created by independent contractors, for the benefit of the business, there is no presumption of ownership in favour of the company and thus, the proper course is to get an assignment of all the rights to the work from the creator. The reason for this is that ownership of copyright in a work grants to the owner, certain exclusive rights in relation to that work including the right to copy the work, issue copies of the work to the public, and perform the work in public. This makes copyright protection an asset to a business, infringement of which can carry heavy penalties.
Similarly for trade marks, the Trade Marks Act protects registered trade marks, and grants to the owner of the mark, a property right, and entitlement to all the rights and remedies under the Act. One such entitlement is that the proprietor of a registered trade mark has exclusive rights to the mark, and its use in Jamaica and wherever else it is registered. This is important as the mark can therefore, be linked exclusively with a company’s goods and services, and distinguish the goods and services of one business from those of another, which is also an asset to a company.
Even more protection- Infringement and Penalties
Since certain exclusive rights emanate from copyright protection, infringement is an offence and can amount to weighty penalties. Acts which infringe copyright include the importation of an article which is an infringing copy of a work, and the possession of an infringing copy in the course of business, sale or offering for sale of an infringing copy, exhibition in public, and distribution of an infringing copy of a work. Where a person does any of these acts, without the consent of the copyright owner, and there is no available exception, they infringe the copyright owner’s rights, and open themselves up to fines, and other remedies available to the copyright owner.
With trade marks, one act which is considered infringing is the unauthorised use in the course of trade of a sign which is identical to a trade mark, in relation to identical goods and services covered by the trade mark. Another act which infringes a trade mark is the unathorised use in the course of trade of a sign likely to cause public confusion or deception because the sign is either identical to the trade mark, in relation to similar goods, or the sign is similar to the trade mark in relation to similar goods covered by the trade mark. Note that even the use of a sign identical or similar to the trade mark, without the trade mark holder’s consent, for dissimilar goods can be an infringement. For trade marks in particular, infringement is a vital consideration because the penalties include fines and imprisonment up to five years on conviction before a Circuit Court.
Conclusion
IP protection is essential for businesses so that they might protect the fruits of their investments. Therefore, whether marketing strategies undertaken produce valuable proprietary content such as songs, slogans or designs, businesses should consider how to preserve that content for themselves, and reap the benefits from the protection of copyright and trade marks. Once that consideration is done, register your intellectual property, your business may depend on it!
Lisa Rhooms is an Associate at Myers, Fletcher & Gordon, and is a member of the firm’s Commercial Department. Lisa may be contacted via lisa.rhooms@mfg.com.jm or www.myersfletcher.com. This article is for general information purposes only and does not constitute legal advice.
