Clinch Neville Long - internet copyright and trademark lawyer

Copyright and other rights

These rights are protected by act of parliament and deter others from copying your work. Registration is not required or possible in Australia. It protects most creative works such as writing in any language, music, computer programs, paintings, songs, plans and drawings. You must be the author, or assignee, or the employer, of the author to own the copyright. more information

2.Trademarks

Marks can be either distinctive marks or names at common law which have acuired a reputation, or by registration under statute. Registration of a distinctive mark or name before use by others is the preferred position. more information

3.Confidential Information

This is information in any provable form (verbal, written or electronic) which a business treats as confidential and is not already in the public domain and is important to a business strategy.
more information

4.Patents

These are monopoly rights created by statute and require registration before the invention is disclosed to the public. Each must be a new way of achieving a result. more information

Copyright

1.1	Copyright arises under the Copyright Act 1968 in Australia and gives the author/owner the sole and exclusive right to reproduce the whole, or at his election, a substantial part of the work, and to publish and translate the work into another language (computer or electronic) or to derive a new program from that work. This necessarily includes the right to translate from source code to object code. The whole of the internet site will be protected by copyright. It may not be your property and where you have accuired content from another person you must ensure you have a license to use that material.
1.2	Copyright gives the author or owner a bundle of exclusive rights, which includes the following:- (i) the right to reproduce the whole or a substantial part of the work; (ii) the right to publish the work; (iii) the right to translate the work into other languages; (iv) the right to translate the work to other computer languages; (v) the right to create derivative works using a substantial part of the existing copyright. Copyright also empowers the author and/or owner to publish the website by transmission.
1.3	Remember that the plans/ideas behind your website are not protected as a plot in a dramatic play is not protected. The protection afforded your site arises from your use of the language in recording your ideas or your plot. The same result achieved by your website can be achieved using the same ideas or plot in a different, perhaps substantially different, site and without infringing against your right.
1.4	To be entitled to the protection of the copyright in your site, you must consider whether your site has been previously published in whole or part; (i) if you have previously published your program by having your site hosted by a Internet Service Provider, then your copyright will subsists only if that first publication took place in Australia and you, as the author, were an Australian citizen at that time; (ii) if you have not published your website, you as the author must have been an Australian citizen for a substantial part of the period over which you created the website.
1.5	Copyright subsists for the life of the author and thereafter for fifty (50) years. If the owner is a company then it subsists for fifty (50) years from the date of first publication. The act of publication involves making a sufficient number of copies of the program to meet reasonable public demand. The statutory period commences with the act of publication.
1.6	For copyright to exists, work must be characterised as a literary, dramatic, musical or artistic work. Literary work includes computer programs. In addition, there must be a direct connection between that material and the author.
1.7	Copyright protection vests automatically and is not the subject of any formality, provided that the subject works falls within one of the classification provided for in the Copyright Act and the author was an Australian at the time of authorship.
1.8	A computer program is made when it is first reduced to writing or to some other material form.
1.9	Simple and complex programs have been abandoned to the public domain and there is no value in writting a program asserting copyright to same if it already resides on the public domain. This may also be an offence under the Copyright Act
1.10	Copyright may not be enforceable if it is contrary to public policy, so the question arises as to whether blasphemous, indecent, seditious or libellous work is contrary to public policy and its enforcability thereby affected.

2. Trademarks

2.1	Every great site has a great trade mark and your site should have a similar benefit from the beginning if you are to promote your goods and services
2.2	Trade Marks are protected at common law if unregistered and distinctive of your goods and services and are protected by the Trade Marks Act 1995 if registered with the Trade Marks office. The term "Trade Mark" is synonymous with the term "Trade Name".
2.3	Trade marks involve entirely different concepts to those involved in business names, company names and personal names. Trade marks attribute ownership and quality to products and services whilst the other names identify business and persons irrespective of their products and service. Registration of a trade mark before use is not mandatory, whilst registration of a business name is. A trade mark registration and/or use involves a mark containing symbols and/or words whereas a business name can contain words only.
2.4	To maximise your internet site's opportunities by registering a trade mark as its "handle", you should avoid names which describe an attribute of your website. The best trade mark is an invented or adopted name, such as Westpac or Apache. An application for the mark "Ultracare" was disallowed because it described an attribute of a product being its use for care of an extreme kind. The symbol TM near a word or logo means that it is claimed as trade mark and not necesssaily a registered trade mark which would be indicated with the symbol ¨.
2.5	There is no doubt that most great trade marks are, in fact, surnames and are usually the surname of the inventor or perhaps his partner's daughter. See the following trade marks:- Mercedes Benz, Sony, Ford, Dolby, Kellogs etc. Each of these names were the surnames of the inventor or the author of the product and registration probably followed after reputation in the goods was established. Westpac is a good example of a new and an invented trade name.
2.6	To register under the Trade Marks Act, expert knowledge of that Act is required. There is a delay of six (6) months whilst the application is examined and granted but, upon grant, your rights are retrospective to the date of lodgment.
2.7	Publication prior to registration of a trade mark involving its commercial use does not deny you the right to ultimate registration. Publication of patents (e.g. commercial use or disclosure) prior to registration disentitles the applicant to protection under the Patent Act 1990
2.8	Considerable and expensive difficulties surround the enforcement of an unregistered trade mark, so if you are serious about the exploitation of your internet site, you should create an attractive and non-descriptive name and promptly proceed to have an application lodged on your behalf. This ensures that at all times during the development and exploitation process you have an adequate and acceptable mark protected upon which you can build goodwill and reputation. Failure to promptly lodge an application can mean that another person may have taken your name.
2.9	You need to take into account that your trade mark will relate to Australia only, whilst your copyright has international standing. You may need to consider registration of your trade mark in other countries.
2.10	Prior to lodging an application, searches must be carried out to ensure that there are no competing users of the mark or similar marks in Australia. The test is as to whether your application is for a mark which is substantially identical or deceptively similar to a mark registered or pending registration in the same class of goods or services (or of a different class but in relation to similar goods or services).
2.11	The trade mark will be valid for seven (7) years from the date of lodgment and may be renewed for a further fourteen (14) years. .
2.12	In order to protect your trade mark it is important that you commence marketing your internet site as early as possible and thereby show the connection in the course of trade between the trade mark and your goods and yourself. If you choose a weak trade mark and have feeble trading activity, then you could find that you are unable to enforce your trade mark. It is for this reason that you must accept the need for an invented word as a trade mark and best not a descriptive trade mark.

3. Confidential Information

3.1	Confidential Information or Trade Secrets are a class of intellectual property that is protected by the common law. It is information and methods which are of the calibre of patentable ideas which you treat as secret, valuable and confidential. No statutory protection is available.
3.2	In addition to your copyright and your registered trade mark, you may find that you are the owner of confidential information in your internet site and/or instruction manual, programming methods or other records. Most business information held by companies are not capable of being protected as confidential information as it is usually a compilation of material held on public record.
3.3	You must be able to identify with clarity what you see to be your confidential information and the disclosure of that confidential information must be made on a limited basis so that a relationship of confidence and trust is expressly or impliedly introduced before a breach of confidence occurs.
3.4	Disclosure to an employee of confidential information in the course of their employment by you is an example of a relationship in which there is implied confidence and trust. Developed critical path plans and programming procedures unique to yourself and pricing structures and methods are capable of protection and should not be carelessly disclosed to a third party without them accepting an obligation of secrecy and trust.
3.5	Disclosure to third parties necessitates you expressly or impliedly introducing, before the disclosure, an understanding that the disclosure will be made in trust and confidence and that the material is a trade secret and confidential to you.
3.6	If you claim that certain of your methods and records are confidential, then you should be meticulous in retaining the secrecy of the information and be seen to regularly assert that right to confidentiality when there is breach of the confidence and trust. Failure to do so can be fatal to your interests.

4. Patents

4.1

Patent protection is a monopoly right to exploit a novel invention and arises under the Patents Act 1990. It protects ideas and concepts capable of being worked or expressed physically irrespective of the size and shape of the physical expression. Patent law does not protect the form of expression but only the inventive concept. A program is essentially an exercise in mathematics and no one can claim a monopoly over mathematical process no matter how unique.

4.2

If the program is part of a practical and inventive process, then it may be patentable. A computer program may, if it is in itself an advance in the science and art of computer hardware or computer technology or, being an inherent part of inventive process, be the subject of a successful patent application.

Your Copyright

1.Creation of your copyright material

Involves keeping all drafts, company employment documents and records of relevent dates

2.Claiming your copyright

You need a ©, record of dates of copyright and the name of the yourself.

e.g. "© 2000 Clinch Neville Long."

3.Protection

Give it a name and preferably a Trademark, respond promptly to theft and passing off.

1. Creation of your copyright material

1.1	The burden of asserting your right will lie with you and you should be in a position to produce evidence of authorship by printing and retaining each step in the process. Those original diagrams, mud maps and the early code duly dated, are extremely valuable as part of your proof of original authorship. Ownership by assignment in writing gives no better title than that of the author so you will still need that evidence of authorship. Do not throw your old records away.
1.2	Joint ownership of your internet site can exist where there are two (2) or more authors and it is not possible to identify the separate parts that were written by any one of the joint authors. Joint ownership can also exists as a result of a transfer by operation law or by agreement or assignment.
1.3	A website produced by joint authors must be a collaboration in which it is not possible for either of the authors to separate out the contribution from that of the other author.
1.4	Where two (2) authors write separate parts of a program, then they own separate copyright in their separate segments.
1.5	A person who provides the diagrams, plans and graphics for the site is entitled to copyright in the end product, unless there is an agreement to the contrary.
1.6	Joint owners (not several owners) of the copyright in a site hold as tenants in common and either of them may sue in respect of an infringement.
1.7	Where there is a partnership, and one of the partners writes the whole of the program, then the question of who is the owner of the copyright is one of considerable difficulty and may be determined by a Court if you do not address that matter by the partnership agreement.

2. Claiming your copyright

2.1	A formal claim in writing is not a prerequisite to protection of your copyright in Australia. Please note that such claims are invariably made by almost all authors and publishers of copyright material on a world wide basis and who are you to tempt fate.
2.2	Registration is not required and is not available in Australia to assist enforcement of your copyright.
2.3	You should nevertheless claim your copyright by express notice, stating on the front page (and why not subsequent pages) your name, the year of of authorship or publication and the fact that copyright is claimed using the usual symbol ©.
2.4	This notice should exist on the original document and all copies created from the original document. It should appear on the computer program electronically and physically in all hard copies and it should appear on any and all instruction manuals and materials.
2.5	Legal requirements in some other countries impose an obligation to use a copyright notice and your program could end up being trialled with or without your knowledge in another foreign country.

3. Protection

3.1

Protection resides in protective action in the form indicated above and, if that is not sufficient, then in threatening action against infringers and then in action by recourse to litigation.

3.2

It is the form of expression used in your program which is protected by your copyrights so that a person wishing to appropriate your intellectual property is free to take your ideas and plot. Having so done, the thief might find it difficult to have the benefit of those ideas or plot without stealing your form of expression. The infringer must copy a substantial part of your site, in order that you might enforce your rights against him.

3.3

In order to evaluate the extent of the infringement, you should adopt a 'side by side' comparison between your source code and that of the infringer and from that you must be able to identify substantially similar parts of your code in that of the infringer. If you are tempted to assimilate another author's code or his ideas, then, the same test should be applied in deciding whether you are breaking the law.

Exploitation of your copyright

1.Assignments

Assignments as to Copyrights - once the work is completed it can be divided by reference to time, country and media. For example, you could assign the TV rights to your novel in Japan for ten years reserving a royalty or otherwise

2.Licensing

Licensing as to Copyrights - is the creation of limited rights in another to eploit your copyright for your joint benifit. It can be exclusive or non-exclusive.

1. Assignments

1.1

Contracts for the assignment or licensing, distribution or disclosure of your site and its code should be in writing and must be clear and unequivocal as to the rights that are granted and reserved. The term, the identity of the parties entitled to the benefit of the contract and the geographic area to which it relates should also be recorded in that contract.

1.2

Registration of written dealings in copyright for any of the above purposes is not available in Australia but can be a pre-requisite to enforcement in some countries and you should seek expert advice before considering international exploitation.

1.3

You need not assign all of the copyright or all of the rights relating to copyright. Contracts can be exclusive and non-exclusive and you could, for instance, assign the whole of the Japanese rights in an irretrievable manner and yet, at the same time, licence the U.K. rights reserving the reversion of the U.K. copyright at the expiration of the U.K. agreement.

1.4

All contracts relating to your program should be professionally written with all of the terms specified relating to the language and/or translation rights, royalties and fees, performance guarantees, copyright notices, enhancement, modifications, interfacing and the appointment of subsidiary rights.

1.5

The outright sale of copyright of at least some geographic regions must be considered if you do not have adequate capital for development and marketing. Parties who are expected to expend capital in development and marketing are unlikely to commit their funds whilst you remain the exclusive owner. Part ownership by way of a joint venture may be the answer, but question who is to own the copyright and the royalties both before , during and after the agreement, and in what proportions. Who must be parties to any litigation?

1.6

If you have a fully developed website with some market presence, then a distribution agreement is a common method of ensuring the due and proper marketing of your site. These agreements require the same detail consideration as mentioned above and, in addition, consideration must be given to ensuring that any goodwill and reputation arising from the distribution attaches to your trade mark and you.

1.7

This will involve the assignment of the right to use exclusively or non- exclusively your trade mark for the limited purposes specified in the agreement. If you do not own the trade mark, then all of the goodwill and reputation in your program will attach to your distributors mark and at the expiration or termination of the agreement the distributor will own the mark and the related goodwill and reputation and you will own an anonymous program.

1.8

Prior to disclosing your copyright code to potential distributor, you should attempt to obtain a confidentiality agreement, wherein the distributor acknowledges your copyright, your confidential information and the limited purposes of the disclosure. That agreement would restrict the right of the distributor to disclose the site to other parties.

1.9

A disclosure to a person may result in a disclosure to third parties who owe you no duty of confidentiality. The disclosure agreement must bind the person and the company to whom you are making the disclosure not only to prevent unlicensed exploitation but also disclosures to third parties. Some software houses will not execute confidentiality agreements and you may have to consider reliance on the reputation and limited assurances that that company offers or, alternatively, pass up the opportunity of exploitation with that company.

2. Licensing

1.1

An assignment of the copyright allows the new owner to alter the copyright material in whatever manner and for whatever purpose he might choose and to do so without reference to you.

1.2

Under a licence, the licensor is able to place limitations on the licensee's right to alter the licensed material.

1.3

An exclusive licence must be in writing and the licensee may bring proceedings for infringement against all infringes other than the licensor.

1.4

A non-exclusive licence can be verbal or implied and for that reason you must be extremely careful in your verbal and unwritten dealings with your website.

1.5

Developments or enhancements to the website after the date of licensing are extensions carrying separate and identifiable copyrights.

1.6

The right to make these enhancements and their ownership, and the right to royalties and the apportionment of royalties, between the original copyright material and the enhancements can be the source of grave difficulties if not dealt with adequately in the agreement.

1.7

Each license agreement must deal with the above issues and issues such as:

New trade secrets developed during and or parallel to the performance of the agreement;

Obligations as to technical assistance and remuneration as to the provision of such assistance;

Legal liability for breach of contracts of supply and tortious liability such as breaches of the copyrights of others;

Performance obligations as to territories, their development and sale levels and marketing budgets;

Royalties at fixed and variable rates, exchange rates and the burden of losses;

Local and international auditing and the cost of such matters with and without default;

The right to make or manufacture the discs and instruction manuals;

1.8

Joint venture agreements between yourself and the distributor are a significant avenue for exploitation of programs if you want to play an active role in the business side of the exploitation. Remember this essentially means you have a partner who may not be well known to you, and remember all the stories of marriages and divorces.

Contact Details

Street Address	Suite 4, Level 20, 31 Market Street, Sydney 2000
Postal Address	PO Box Q110, QVB NSW 1230
Telephone	(02) 9261 1255
Fax	(02) 9264 0866
E-mail	gibson.owen@tkro.com.au

1.1	Contracts for the assignment or licensing, distribution or disclosure of your site and its code should be in writing and must be clear and unequivocal as to the rights that are granted and reserved. The term, the identity of the parties entitled to the benefit of the contract and the geographic area to which it relates should also be recorded in that contract.
1.2	Registration of written dealings in copyright for any of the above purposes is not available in Australia but can be a pre-requisite to enforcement in some countries and you should seek expert advice before considering international exploitation.
1.3	You need not assign all of the copyright or all of the rights relating to copyright. Contracts can be exclusive and non-exclusive and you could, for instance, assign the whole of the Japanese rights in an irretrievable manner and yet, at the same time, licence the U.K. rights reserving the reversion of the U.K. copyright at the expiration of the U.K. agreement.
1.4	All contracts relating to your program should be professionally written with all of the terms specified relating to the language and/or translation rights, royalties and fees, performance guarantees, copyright notices, enhancement, modifications, interfacing and the appointment of subsidiary rights.
1.5	The outright sale of copyright of at least some geographic regions must be considered if you do not have adequate capital for development and marketing. Parties who are expected to expend capital in development and marketing are unlikely to commit their funds whilst you remain the exclusive owner. Part ownership by way of a joint venture may be the answer, but question who is to own the copyright and the royalties both before , during and after the agreement, and in what proportions. Who must be parties to any litigation?
1.6	If you have a fully developed website with some market presence, then a distribution agreement is a common method of ensuring the due and proper marketing of your site. These agreements require the same detail consideration as mentioned above and, in addition, consideration must be given to ensuring that any goodwill and reputation arising from the distribution attaches to your trade mark and you.
1.7	This will involve the assignment of the right to use exclusively or non- exclusively your trade mark for the limited purposes specified in the agreement. If you do not own the trade mark, then all of the goodwill and reputation in your program will attach to your distributors mark and at the expiration or termination of the agreement the distributor will own the mark and the related goodwill and reputation and you will own an anonymous program.
1.8	Prior to disclosing your copyright code to potential distributor, you should attempt to obtain a confidentiality agreement, wherein the distributor acknowledges your copyright, your confidential information and the limited purposes of the disclosure. That agreement would restrict the right of the distributor to disclose the site to other parties.
1.9	A disclosure to a person may result in a disclosure to third parties who owe you no duty of confidentiality. The disclosure agreement must bind the person and the company to whom you are making the disclosure not only to prevent unlicensed exploitation but also disclosures to third parties. Some software houses will not execute confidentiality agreements and you may have to consider reliance on the reputation and limited assurances that that company offers or, alternatively, pass up the opportunity of exploitation with that company.

1.1	An assignment of the copyright allows the new owner to alter the copyright material in whatever manner and for whatever purpose he might choose and to do so without reference to you.
1.2	Under a licence, the licensor is able to place limitations on the licensee's right to alter the licensed material.
1.3	An exclusive licence must be in writing and the licensee may bring proceedings for infringement against all infringes other than the licensor.
1.4	A non-exclusive licence can be verbal or implied and for that reason you must be extremely careful in your verbal and unwritten dealings with your website.
1.5	Developments or enhancements to the website after the date of licensing are extensions carrying separate and identifiable copyrights.
1.6	The right to make these enhancements and their ownership, and the right to royalties and the apportionment of royalties, between the original copyright material and the enhancements can be the source of grave difficulties if not dealt with adequately in the agreement.
1.7	Each license agreement must deal with the above issues and issues such as: New trade secrets developed during and or parallel to the performance of the agreement; Obligations as to technical assistance and remuneration as to the provision of such assistance; Legal liability for breach of contracts of supply and tortious liability such as breaches of the copyrights of others; Performance obligations as to territories, their development and sale levels and marketing budgets; Royalties at fixed and variable rates, exchange rates and the burden of losses; Local and international auditing and the cost of such matters with and without default; The right to make or manufacture the discs and instruction manuals;
1.8	Joint venture agreements between yourself and the distributor are a significant avenue for exploitation of programs if you want to play an active role in the business side of the exploitation. Remember this essentially means you have a partner who may not be well known to you, and remember all the stories of marriages and divorces.