17th October 2020
17th October 2020
Intellectual property, or "IP," is everywhere you look. In fact, these days, for many businesses, much of their worth is in their IP. IP is contained within the movies and television shows we watch, the brands we love to buy, and the devices we love to use.
What about your own IP? Often, individuals and small businesses alike develop their own IP. You might create IP in your photos, videos, writing, images or brand names. Small businesses might hold IP in the products or services they sell, their names or logos, and the materials they put out for advertising.
IP is also labour-intensive: it takes dedicated care and thought to develop. It can take years to grow and monetise. That's why it is especially frustrating when someone uses your IP without your permission.
If someone does use your IP without your permission, this is often referred to as IP infringement. Unfortunately, IP infringement is all too common in the internet age. Many digital technologies make it very easy to infringe IP.
In this guide, we'll discuss the steps you can take if someone is infringing your IP. Please remember that nothing in this guide constitutes legal advice and everything here should be taken as informational only.
We'll briefly discuss each type of IP below.
There are several types of IP in Australia, but copyright and trademark are the forms that you are more likely to have come across.
Copyright law provides protection to work with a 'creative' element, such as literary, dramatic, musical and artistic works. In order for copyright to subsist in work, the work must be made by a resident or citizen of Australia, must be made or first published in Australia, or must have a specified connection with a country which is a member of a relevant international copyright treaty.
Importantly, there is no system of registration for copyright - so it is not necessary to undergo any registration process in order to obtain legal protection for relevant work.
A trademark is a way of identifying a unique product or service - such as a 'brand', a logo, letter, number, phrase, word, sound, smell, shape, picture, movement, type of packaging, or some combination of these.
All of your favourite brand names have likely filed trademarks.
If a copyright is the right to prevent others from copying your art, a trademark is the right to prevent others from using your brand name, logo, or slogan from representing their own goods or services being sold in commerce. In other words, if you started a brand for fast food called "Bob's Burgers," and registered the trademark, you would be able to prevent other fast-food restaurants from using the name "Bob's Burgers."
Patents are less common than trademarks and copyright.
Patents deal with inventions, designs and processes (such as a new software design or a new process for creating a waterproof fabric). These sorts of inventions, designs or processes may be protected by registering a patent.
If somebody comes up with a new invention and wants to make sure that nobody copies it, then they will register a patent.
A registered design protects the visual design of a product (for example, the shape, pattern or configuration).
Registering a design can prevent other people or businesses from using your design (except with your permission).
As the name suggests, plant breeder's rights relate to new plants. For example, if you develop a new variety of tomato, you might want to register your plant breeder's rights in order to protect your IP.
Circuit layout rights relate to original layout designs for integrated circuits and computer chips. For example, these sorts of layout designs might be used in computers, watches, smartphones, medical equipment, or home electronics.
Circuit layout rights do not need to be registered. They apply automatically once a design or layout is created.
Unfortunately, due to the internet, IP infringement is quite common. Here we'll discuss a few examples of IP infringement that happen every day.
Although sharing is the most common practice on all social media platforms, the truth is that many people are infringing on other people's copyrights when they share on social media.
In fact, any time you share something that is the creative work of someone else without their permission, you are infringing on a copyright. Likewise, you may find that someone else has posted a creative work of yours on their social media without your permission.
Sometimes, commercial and personal websites will do a simple Google image search of what they want and take any photo that comes up in the search for themselves. Bloggers are guilty of this, but so are business websites belonging to digital companies.
You may find that a website you didn't authorise has taken a work of yours and used it without permission.
Offline, sometimes businesses are guilty of using other people's intellectual property in their advertisements. This could be in a magazine advertisement or a billboard or anything in between.
Occasionally, people will use others' IP on products. This happens a lot online, because there are numerous websites that allow users to upload a graphic for a t-shirt, coffee mug, pen, and other similar products.
If you have found your IP on a website like this, you may need to request the material be removed from both the website operator and the individual user.
IP infringement can happen anywhere - online or offline. It is important to protect your IP as soon as you find out about a possible infringement.
In order for you to be able to claim that your IP has been breached, you need to actually be the owner of the IP.
If you have created IP as part of your job, then it is possible that the IP might actually be owned by your employer. Your Employment Agreement may provide guidance regarding the ownership of IP that is created during your employment.
Alternatively, if you hired a freelancer to create some IP for you (such as a graphic design), then it is possible that the freelancer may have retained the rights in the IP. The Service Agreement which you used to hire the freelancer may provide further information about the ownership of any IP that the freelancer created.
If the IP is of the type that needs to be registered (such as a trademark or a patent), then the registration process will need to have been performed correctly before you are able to claim your IP rights.
If in doubt, seek legal advice to confirm that you hold the IP rights.
Before making contact with the party that is using your IP, make sure to confirm that there has actually been an infringement. In some cases, the other party might have a legitimate reason for using the IP.
If the IP is owned by your business (rather than you personally), then remember to consider whether anyone else could have authorised the other party to use the IP. For example, maybe your business partner authorised them to use the IP.
Alternatively, maybe you granted the other party a licence to the IP a long time ago and have forgotten. Or perhaps the other party's use of the IP falls within one of the "fair dealing" exceptions under the Copyright Act 1968 (Commonwealth).
"Fair dealing" is terminology used in Australia's Copyright Act 1968 (Commonwealth). Under that legislation, copyrighted material can be used without permission from the copyright owner if it is being used for a "fair dealing". The following purposes are considered a "fair dealing" under the legislation:
- research or study
- reporting news
- criticism or review
- parody or satire
- reporting news
- enabling a person with a disability to access the copyrighted material
- professional advice from a lawyer, trade mark attorney, or patent attorney
The Australian Copyright Council provides further information about fair dealing.
The other party might have the right to use the IP if you have granted them rights to the IP by way of an Intellectual Property Licence Agreement or an Intellectual Property Assignment Agreement. They may also asked you for permission in the past, by sending you a Letter Requesting Permission to Use Intellectual Property.
Making false claims of infringement can have consequences. For example, if a false accusation of infringement harms the reputation of the other party, this could open you up to claims of defamation. Or if you falsely compel the other party to stop using your IP, and this harms their financial position, then they may make a legal claim against you for compensation. You may also be liable for other penalties.
If in doubt, seek legal advice, to ensure that your IP has been infringed.
In many cases, people don't actually intend to commit an IP infringement. They might not have realised that they were doing so, or they might have simply been careless.
Often, simply reaching out to them to notify them that you own the IP and that they will need to stop infringing it, can be enough to reach an amicable resolution.
If you have tried informally reaching out to the infringer but have not received a satisfactory response, then you may consider sending a cease and desist letter.
Alternatively, some IP owners choose not to informally reach out to the infringer, and to jump straight to this step instead.
If your copyright has been infringed, you may send a Copyright Infringement Cease and Desist Notice. If your trademark has been infringed, you may send a Trademark Infringement Cease and Desist Notice.
If another item of your IP has been infringed, then you may send a General Cease and Desist Notice.
If a copyright infringement has occurred online, then you may consider issuing a Takedown Notice to the internet service provider ("ISP").
The Australian Copyright Regulations 2017 (Commonwealth), sets out a procedure for issuing a copyright Takedown Notice.
If an ISP receives a valid Takedown Notice, then they are required by law to remove the infringing material. The Australian Copyright Council provides further information about these procedures.
In many cases, if your IP has been infringed online, then it may not have been confined to Australia.
If the website where the IP was posted is based in the USA, and is one that aggregates content that other people post, like Google or Youtube, then you might be able to issue them with a DMCA notice. DMCA stands for Digital Millennium Copyright Act, which is a federal law in the USA.
Like the takedown notice procedure in Australia, this law allows you to issue a notice to the ISP or the website where the content is published.
Before you issue a DMCA notice, check if the website has a DMCA Policy. This will usually be in the same area as their Terms and Conditions or Privacy Policy. If they do have a DMCA Policy, you may choose to draft and send a simple DMCA Notice, using the template from our US site. This contains all of the information the website will need to remove the material.
If they don't have a DMCA Policy, or if you would rather not send a DMCA Notice or a Takedown Notice, then you may send a Copyright Infringement Cease and Desist Notice.
For further information about taking action in the USA, see our guide to IP infringement in the USA.
A lawyer can help you to weigh up your various options and may be able to assist with a swift out of court resolution.
If all other attempts fail, then it may ultimately be necessary to sue the infringer, in order to enforce your rights. Although litigation is a long process, if your IP is important and commercially valuable, litigation is really the only process for ensuring the infringer stops (if they haven't already).
If the infringements have occurred in multiple countries (for example, if your IP has been distributed to multiple countries online), then it may be necessary to seek legal advice in all relevant countries. Don't fear though, making contact with an Australian lawyer is a good first step and they can often help you to make contact with lawyers in other jurisdictions if necessary.
So before taking action for IP infringement, first check that you actually hold the IP rights, and that there has actually been an infringement. Once both of these points are confirmed, try to reach the infringer directly. Sometimes the quickest and easiest way to resolve the matter is through a polite conversation with them. However, if this does not work, then more formal procedures may be necessary, including sending a takedown notice, or commencing legal action. Seek legal advice for assistance with this.
Finding out that your IP is being infringed is stressful. It is important to take proactive action to ensure that you protect what is yours.
By following the steps on this list, you'll be in a great position to make sure you can protect the IP you've worked so hard to develop.