Intellectual property – should a local authority be concerned about it?
Introduction
Intellectual property (IP) might not be on the top of the list, or indeed on the list at all, for local authorities when innovating, creating or indeed working in partnership with others, especially when there are so many other factors in the mix that need to be taken into account. However, in the same way as commercial businesses, local authorities do need to be aware of the different IP rights that exist, to know how to protect those rights, to understand what the potential pitfalls might be, and to make sure they don’t end up infringing the IP rights of other people and businesses.
IP will be a relevant consideration where the local authority is, for example, working on an innovative project, doing so with a private sector partner or where a third party is commissioned to provide support for it, as part of the drive to deliver services fit for the twenty first century. The more commercial the project, the more likely it is that there will be rights created and which may well need protecting.
IP rights fall into two general categories, registered rights and non-registered rights.
Registered rights
These include patents, trade marks and registered designs and become registered on application to an official body, such as the UK Intellectual Property Office. However, even if granted, their validity can still be challenged and it could also be possible for a competitor to register the trade mark, in another country, purporting it to be their own. It would then be a case of proving that the overseas registration had been granted in bad faith, even if it seems clear cut that the competitor has simply cut and pasted the logo rather than it being, by some sheer fluke, an identical design.
Registered rights are monopoly rights, which means that once registered, the owner can stop others from using the right without permission. Whilst a local authority is less likely to be involved in something that may require a patent or a registered design, it may need to consider protecting a trade mark.
As to what is a trade mark, is very broad. It is more often than not a sign or symbol used to distinguish products or services from those of others. It can be a brand name, a mark, a logo, a trading style, packaging, colours associated with a trading style, as well as sounds, smells and slogans.
Unregistered rights
These arise automatically, give protection against copying or using the right, and include copyright, unregistered design rights, rights in unregistered trade marks and confidential information.
Copyright protects original artistic, musical, dramatic and literary works, including computer programs, sound recordings, films, broadcasts and typographical arrangements of published works and will be the most familiar unregistered IP right.
Copyright protects the expression of an idea, not the idea itself i.e. it needs to be written down or otherwise “fixed” or be in tangible form. Ownership of copyright in a work allows the owner to prevent unauthorised copying of the work. Many local authorities will, at one time or another, have received a communication from an individual, company or organisation with a demand for payment, for example in respect of an image posted on the local authority’s or a community school’s website, or perhaps used in some sort of advertising and which turns out to be a copyright infringement. It is important for officers to receive training and/or access guidance to ensure that IP rights are not infringed, even if not intentionally by using another’s work for inspiration, for example, as it need not be the whole of the work that has been copied, to amount to an infringement.
Brexit
EU rules regarding the recognition and enforcement of judgments cross-border will cease to apply in the UK and the rules governing the enforceability of a judgment that has not been enforced by exit day will cease to have effect. UK lawyers too will lose their rights of representation before EU courts and bodies.
The Law Society has published guidance for solicitors on the recognition and enforcement of civil and commercial judgments.
Conclusion
Hindsight can be expensive, so yes, IP is definitely something a local authority ought to be concerned about.
To ensure local authority IP rights are protected and to minimise the risk of breaches, local authorities should identify what rights they own and what they think they own, and of these, document each so that it is clear which are registered, which are registrable and which are unregistered. They should also consider the value of their IP assets to understand not only what might be lost if the asset is not sufficiently protected but also what might be gained. Local authorities should not ignore the value in exploiting, by way of licensing, their IP rights, as a way to make money and also as a means of ring-fencing creative endeavour by preventing copycats.
Remember too that if, for example, an individual or body has been commissioned to design a logo or develop an app for the local authority, unless the contract provides otherwise, the local authority will not own it. This could have serious consequences, as local authorities would not be able to reap the rewards of any commercial asset that is produced, for example by licensing it for use by other local authorities and/or third parties. Local authorities should therefore ensure such commissioning arrangements are contractual and that appropriate IP provisions are included.
For further information or to arrange bespoke training please contact Cordelia Payne or a member of our public sector team.
