7 mins | 1410 words
By: Daniel Anthony
The Internet plays an essential role in today’s hyper-connected economy, from online marketplaces to social media to big data. Its importance has grown immensely in the last decade, and along with it, the need for business to protect their brands and copyrights online.
Some studies have found that intangible assets like intellectual property (IP) account for over 75% of the S&P 500’s entire value and over 40% for the average business. Considering this, every company should have a strategy in place to ensure they own and control their valuable IP. Below, I discuss four aspects that all businesses should include in any plan to protect IP online.
#1 – Own your IP
Every business is continually generating intangible assets in some form or another. These intangible assets could include confidential information, reputation, innovative know-how, ideas, brands, content, and designs. Intellectual property rights can be described as the method of turning these intangibles into enforceable property rights that have tangible value.
The most common IP assets used online are trademarks, copyrights, and designs.
Below are brief definitions of each IP asset along with a basic summary of ownership rules.
Trademarks: Any symbol that distinguishes the products or services of one company from others. Trademarks are how you represent your brand to the world.
- Ownership rule – The failure to properly licence trademarks can lead to loss of ownership. Trademarks are used and owned by the entity that is responsible for the character and quality of the good(s) or service(s). Generally, this is the company arranging for the manufacture of the goods, or the one delivering the services. If third parties carry out this work, or a parent or subsidiary does, you have to put licenses in place to ensure their trademark use accrues to your benefit.
Copyright: The original expression of ideas in a fixed form, such as software code, photographs, music, video, text, and more.
- Ownership rule – Copyright is owned by the human author(s) of the work(s) by default, except when it comes to work(s) created by employees of a company. In that case, the employer owns the work(s). This automatic ownership means that if you hire an outside contractor to create anything, the consultant owns the copyright by default. Therefore, any contractee that wants to ensure they own the copyright requires a written assignment.
Designs: A unique look of a product, usually created by its shape, configuration, pattern or ornamentation.
- Ownership rule – Designs are owned by the person who designed them, except if the creator was hired to do so, in which case it is owned by the person who hired them. Therefore, the company owns all designs created by both employees and contractors.
A common mistake is not to track the name of the author/creator of copyrights and designs, making ownership difficult to prove later.
Since IP ownership is not automatic or straightforward, working with legal counsel to set up internal processes to document ownership properly will both generate value for the company and save headaches in the future.
#2 – Protect your IP
Once ownership is addressed, the next step is to protect your IP from misuse by others. Some IP is protected by keeping it secret (e.g. confidential information and trade secrets). Firm employment contracts and confidentiality agreements that ensure the information remains confidential should be in place to support this form of protection.
For trademarks, copyright, designs, and patents, you can register these rights with national intellectual property offices, which grants several advantages, such as
- Exclusivity in the market,
- Public notice of your rights,
- Buying, selling or licensing of the IP rights,
- Enforcement capabilities, and
- More opportunities to use it/them as collateral/security or for tax optimization.
Another essential tool to use when protecting your IP is to provide public notice of your rights through marking. While this is optional, a public notice can help deter infringement and can be used to show that your mark is exclusive.
- Trademarks can be marked with TM, meaning trademark, or R in a circle, meaning registered trademark.
- Patents can be marked with the word PATENT together with the patent number, or PATENT PENDING if an application was filed but is not yet registered.
- Copyright can be marked with a C in a circle, or the word Copyright, followed by the name of the owner and the year of publication.
- Designs can be marked with a capital D in a circle followed by the owner’s name.
A final tool is to record your trademarks and copyrights in various third party enforcement programs.
The Canada Customs permits the filing of a list of IP and will contact you if they find suspected counterfeit. Amazon offers a brand registry to give owners of registered trademarks greater control over listings.
#3 – Monitor your IP
Once your IP is owned and protected, the next step to online protection is to monitor use. It’s important to monitor both your own online use, as well as third-party use.
First, it’s useful to monitor how your own company uses your IP. How and where do your trademarks, copyrights, and designs appear on your websites and social media? Are you set up with analytics to track traffic on your websites and social media? Is your IP mentioned in third party media? Is its use being tracked and monitored? This information can be helpful in any legal enforcement proceeding in proving your reputation. It is also relevant when working to determine which of your IP is most valuable.
Second, it is useful to monitor for any infringement or misuse of your rights. This misuse can include counterfeits and knock-offs, confusingly similar domain names, use of your copyrighted material without permission, and competitors adopting confusing trademarks or designs.
Monitoring for misuse can be both passive and active. An example of passive monitoring is providing employees, retailers, and customers with a contact person or e-mail so they can reach out if they see an issue. It is amazing what others will bring to your attention if you make it easy. An example of active monitoring is setting up a quarterly search of the Internet for any unauthorized use of your brands, designs, or copyrights, and generate a report of any misuse identified.
#4 – Enforce your IP
The final stage of protecting IP online is to act, either through “enforcement” or “improvement.”
When considering enforcement, triaging potential problems is crucial. Triaging usually involves discussions with legal counsel.
One strategy may be to divide potential problems into three categories:
- An infringement that’s causing harm – action required.
- Potentially an issue but not causing harm – monitor for developments.
- Not an infringement – no action required.
For those issues requiring action, there is a wide range of options that can be taken, but it depends on the situation. Potential actions could include contacting the infringer to demand they cease, filing a complaint with the platform where the infringement is occurring (e.g. Amazon, Facebook), recovering a domain name through arbitration, commencing court proceedings, or educating your customer base.
Improvement, whenever a company has identified infringements of IP, provides an opportunity to ask whether there is a gap in protection. Through regular monitoring, it is common to spot issues such as trademarks that you own but have not registered, or holes in your tracking of ownership of copyright, or failure to properly give public notice of your rights, requiring an update to your website. There is no better test to the quality and comprehensiveness of your online IP protection than to review the infringements that occur in the real world and to take action to prevent it from happening in the future.
Creating a strategy to own, protect, monitor and enforce your IP online is an excellent way to grow and protect the value of one of your company’s most important assets.
About Daniel Anthony
Daniel has been recognized as one of Canada’s leading lawyers in protecting and enforcing IP rights on the Internet. Daniel has over 15 years of experience exclusively in the field of IP law, including trademarks, copyright, patents and litigation. Daniel is the past chair of the Canadian Internet Law Committee, a registered patent and trademark agent, and was recognized in 2016 as a leading lawyer under 40 in Canada.
About Smart & Biggar
Smart & Biggar helps the world’s leading tech companies protect and leverage their IP, and advises them on how to use IP Strategy to secure growth around the world. Headquartered in Ottawa with a national presence, Smart & Biggar has a consistent track record and reputation as the leaders for IP and tech law in Canada.
As a sponsor of Invest Ottawa, Smart & Biggar runs regular IP clinics as well as one-on-one virtual consultations. To book a time to speak with an IP Law expert about the things that matter to you, your idea, and your business, first complete our Request our Service form.