02 types of iprs

Types of IPRs
- “Hard” IPRs: Patents, trade secrets
- “Soft” IPRs: Trademarks, trade names, domain names

Rights protecting creativity:

- Copyright
- Boat hull rights (power of a lobby)
- Publicity/image rights
- Design rights

Patents
Commercial significance
- Can grant an essential monopoly over an industry and protect sales from competitors
- Can generate income from licences

What they are

- Patents are rights granted by the state, in response to an application by the inventor, covering a novel
invention
o “Novel”: Must be new (ie. went over an inventive step than what was done before)
o “Invention”: Not the same as discover – patentee must do more than merely add knowledge to
what was previously known; must make some addition by producing a new or useful
thing/result (product), or develop a new method of producing an old thing/result (process)
- Monopoly right
o Even if another party independently came up with the same/similar invention without
knowing of the patented product, the patent owner may still apply for an injunction in court if
the patent covers the other party’s invention
o With sufficiently aggressive enforcement of patent rights, a company can essentially dominate
an industry  Patents are very valuable
- Lasts 20 years (in most countries), provided that the patent owner pays renewal fees
- Can be registered at the patents office in the relevant countries
o Patents have a 1 year priority period (cf 6 month period for trademarks), where the business
may decide which other jurisdictions it wants to apply for patent protection within this 1 year,
and can apply the “priority date” (date of application in the country of origin) for the other
applications
- Expensive to obtain
o Patents are often considered a liability rather than an asset, given the high costs in both
obtaining/renewing the patent and enforcing it
 High costs associated with application and also renewal of the patents
 Important for businesses to know not only what they want to patent, but also why –
unless the business has a clear strategy involving patents, there is no point in
obtaining one
o [Strategy] In certain industries, businesses do not apply for patents; they simply publicise
their product so that competitors cannot patent their product since it would no longer be
“novel”
 Businesses may also sometimes put warnings such as “patented worldwide” or
“worldwide patents obtained”, which are merely warnings and carry no legal
significance (and are often not even true) – but can frighten the ignorant or even
impress bankers (or analysts claiming to conduct valuation of the company)

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Industries
- In certain industries, it is difficult for a business to survive without patents

1. Smartphone industry
- Unless the business has patents to negotiate a deal (eg. cross-licensing deal), it would be driven out and
sued
- Important for companies to know how to play the IPR game well
o eg. Apple and Creative
 Creative initially got sued in the US with their first product (speaker), and bought
over the plaintiff to deal with the claim
 Later, when they launched the Creative Zen music player, they applied for patents,
and sued Apple when the latter released the iPod – Apple ended up paying Creative
$65m and royalties until the Zen patents expired  Creative learned how to play the
game by obtaining patents and enforcing them
- Patent trolls are common in the industry
o Patent trolls are in the business of buying licences/patents and suing others, and do not make
products of their own
o eg. NTP and RIM
 NTP (patent troll) owned a patent for merging existing e-mail systems with radio-
frequency wireless communication networks, and sued Research in Motion (RIM),
the manufacturer of BlackBerry, for patent infringement for its BlackBerry devices
which offered wireless email services
 In the end, RIM sought to settle with NTP for $612m, rather than potentially incur
higher costs in a lawsuit
 Under the settlement, NTP also granted RIM the right to continue running its
BlackBerry business – commercially, averting the threat to force RIM to shut down
its BlackBerry business would have been a far bigger concern than just the cost of
litigation

2. Software industry
- One key industry where the situation is different in the US than elsewhere
o US: Far more software patents than ROW
 Generally easier to obtain software patents in the US
 [Strategy] If the business is looking to move into the US market for software, it is
critical to obtain a US patent for the software, as competitors are likely to have
patents and may threaten with infringement suits
o ROW: Patent attorneys often draft patent claims in a manner that claims a product that
implements the software/programme, rather than the software/programme itself
 [Issue] Difficulty in drawing the line between the programme itself and a product
which implements the programme
- *Note: Software and code is viewed in many countries as a literary work which may be protected by
copyright as well;ass

3. Pharmaceutical industry
- Where large amounts are invested in R&D, patents can be part of a strategy to extend competitive
advantage or at least allow higher “returns” on investment put into R&D
o Price of patented medicines are up to 85% higher than that of generic ones
- Patents may also give an effective monopoly over the industry
o eg. Pfizer and Novartis (Warner Lambert LLC v Novartis (2017, SGCA)
 Pfizer owned a pharmaceutical patent which claimed a monopoly over the use of
pregabalin for treatment of pain

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  Around 19 years after the patent was granted, Novartis wanted to make a product
which used pregabalin, and applied to the Health Sciences Authority for product
licences
 Pfizer commenced proceedings against Novartis, seeking a declaration that its patent
would be infringed by Novartis if it made such products, and Novartis counter-
claimed that the patent was invalid in the first place
 However, despite the invalidity, Pfizer had effectively an almost two-decade
monopoly for that particular type of painkiller
- Practice of evergreening of patents is especially pertinent in the pharmaceutical industry
o Evergreening: Practice of obtaining patents for variations of the product, hence potentially
allowing more than 20 years of patent protection (and industry monopoly), by patenting not
only the initial version but also variations
 eg. Drugs – can patent not only the tablet form but also a slow-release version of the
same drug
o *Note: In some countries, it is more difficult to obtain subsequent patents for variations as
they are no longer considered “novel” – depends on how the patent application is worded

4. Agricultural industry
- Patents on plants/plant varieties are important in certain countries such as Japan and Thailand, where
there is a high % of plant-related patents (includes food crops, industrial crops, ornamental trees, fruit
trees, vegetables, etc.)
o 23% of all infringement of such patents are overseas infringement  Companies operating
overseas should be wary of IPRs protected in Japan
o [Strategy] Companies must look into the main countries in the relevant industry they are
operating in (eg. Japan for agriculture)

Petty patents/utility models

- Provide short-term protection for minor inventions (eg. for a corkscrew)
- Short grant lag and less stringent patentability requirements  Good for quick protection, or if a patent
application has been rejected due to lack of inventive step
o However, there is also a shorter term (6-10 years)
- Usually cheaper to simply buy the patent, instead of getting embroiled in a lawsuit for infringement
- [Strategy] Petty patents are quite common in China, and if the company is looking to enter the Chinese
market, it is advisable to consider applying for petty patents/utility models, otherwise it may have to
commence legal actions against owners of petty patents on the grounds of invalidity (which is not
advisable in a country that the business may not be as familiar with)

Issues
1. Patent offices are not omniscient/all-knowing, and patents may be granted when they should not
- Patent office may not know of certain inventions/products that have been developed (especially in
more obscure parts of the world)
- The most the patent office can do is to conduct a search within the limited time period it has to examine
each patent application, and decide whether to grant or reject it  Many patents, which should not be
there, are granted
- *Note: Patent offices do not have any responsibility imposed on them to ensure that the patents granted
are valid  Cannot sue the patent office for an invalid patent granted; can only perhaps counterclaim
against the patent owner on the grounds of invalidity (which turns into an issue of litigation and who
has the deepest pockets, rather than who is technically right)
o eg. Monopoly
 Parker Brothers, who created the Monopoly board game, sued a company in
California which manufactured a game called “Anti-Monopoly” – it transpired that

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 the manufacturer of “Anti-Monopoly” had based its idea on an earlier game
developed by American feminist Lizzy Magie
 This meant that Parker Brothers’ patent on the Monopoly game should not even have
been granted in the first place, but since Parker Brothers had deep pockets, they could
sue and enforce their patent
- In any case, patent offices are also in the business of granting patents, since the office receives
application fees, renewal fees, etc.
- Overall, patent system is by no means perfect, and companies with deep(er) pockets will find it easier
to game the system

2. Territoriality
- Industry landscape and features of the legal system differ across jurisdictions
o eg. In the US,
 Jury trials in IP cases  Rationale is to underscore consumer perception, and IPR
owners tend to fare better
 Contingency fees for lawyers  Since lawyers’ fees are determined by the success of
the claim (eg. may earn a cut of the final settlement amount), there is a further
incentive to work towards the best possible outcome
 Treble damages  IPRs are more of an integral and everyday part of business life in
US than in any other country, and a successful suit can bring higher quantum of
damages than in other countries without such a system
 cf SG, where an unsuccessful party to a lawsuit may have to bear costs (for
both parties), which often discourages people from bringing suits
 In China, new amendments to the Patent Law also provide for up to 5x
punitive damages for patent infringements
 In designing an IPR strategy, it is important for the business to consider its
end goal – eg. to scare other businesses, to drive competitors out by seeking
costs
o [Strategy] Should consider obtaining a patent in the US
- Should be noted that lawsuit outcomes may differ depending on jurisdiction
o eg. Apple and Samsung
 Lawsuits exchanged between companies, largely over the design of their products (ie.
concerning design patents rather than innovation patents)
 Apple won the suit in California and Samsung won in South Korea
 Ultimately, after at least $1b in legal costs globally on each side, both companies
settled in a confidential arrangement
o eg. Impossible Burger
 Impossible Foods registered “Impossible Burger” as an EU trademark in 2019 for
plant-based meat substitutes/burger patties
 Nestle came in with its Incredible Burger, but Dutch district court ruled that Nestle
must rebrand its burger in the EU
 Held that both were visually similar as both words consisted of the same
number of letters, started with the letter “I” and were phonetically similar
 However, a lawyer from a UK law firm opined that given past approaches taken by
English courts, an English court would have been much less likely to find
infringement  Different jurisdictions may have differing attitudes on IPR
protection

3. Commercial game
- Not every invention may be worth patenting, given the high costs – may prefer to rely on other IPRs
such as trade secrets, or could resort to other strategies like putting warnings (eg. “patented
worldwide”) which have no legal significance but may frighten the ignorant

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 o That being said, for companies with deep pockets, having comprehensive patent protection
can intimidate competitors, especially smaller ones
 eg. Apple was recently granted over 60 patents by the US Patent and Trademark
Office, including a patent for the Apple Watch display (which is essentially a square
surface)
 Patents signal innovation, which is especially important in the technology
industry and also especially since Apple markets itself as a leader in this
field
 Given that Apple is a big company with deep pockets, smaller companies
and new entrants will be careful not to infringe Apple’s patents, otherwise
they may face legal suits which they cannot afford to defend
- Novelty is also a key factor for patent protection
o [Strategy] Important to apply first before making the product available to the public, and take
advantage of the priority period to apply for a patent in other countries
 Any prior publication before the date of application would destroy the patentability
 *Note: SG now has a grace period of 1 year to apply for a patent after making a
product available to the public, but this law may not be present in all other countries
 Relying on this may allow a SG patent to be granted, but not patents in other
jurisdictions
o [Strategy] Businesses may also choose not to apply for patents, and instead simply publicise
their product so that competitors cannot patent their product since it would no longer be
“novel”

4. Commercial ways to deal with lawsuits

- Usually cheaper to simply buy the patent instead of getting embroiled in a lawsuit for infringement,
especially where petty patents are involved
- eg. Apple and Creative
o When Creative initially got sued in the US with their first product (speaker), they bought over
the plaintiff to deal with the claim
- [Strategy] Instead of a long-drawn battle in court, it may be easier to buy over the plaintiff or the
patent

Trade secrets
What they are
- Trade secrets/confidential information refers to information belonging to an individual or business
which has a sufficient element of secrecy/confidentiality that the law will protect it as a matter of good
faith (rather than property/contract), and not allow its disclosure to others without consent
o Often protected contractually
o In SG, protected under a breach of confidence action (action in equity, not tort)
o In US, there is a Defend Trade Secrets Act and there are also state rights
- No need to register
- Used to protect many valuable ideas and know-how
o When a business applies for patents, a lot of information about the product is disclosed 
When the patent expires, others could potentially copy the product based on the publicly-
available information
o Some companies will even examine competitors’ patents in order to manoeuvre around these
patents
- *Note: Know-how is related to trade secrets, although not all know-how may be protected as trade
secrets
o Much of a person’s know-how relates to general skill/expertise, which the law does not allow
to be restrained

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Issues
1. Definition of “trade secrets”
- Difficulty in establishing the nature of rights that one has over trade secrets
- Merely labelling something as “confidential” does not necessarily mean that it is a trade
secret/confidential information that can be protected by IPRs
o To establish a claim for trade secrets, the claimant must show:
 Occasion of communication was confidential (or that circumstances show that both
sides would have accepted it as confidential, if asked at that time)
 Content of the idea was clearly identifiable, original, of potential commercial
attractiveness, and capable of being realised in fact
- Trade secrets are more of a quasi-IP right than “property” in itself – eg. information is not considered
property, and not excludable since it is very difficult to exclude someone from knowing something
- Trade secrets are often exploited as IPRs in tandem with patents (see below)

2. Employment issues
- Confidential information and trade secrets are highly valuable, and in a company the employees often
have access to such information  Difficulty in protecting trade secrets
o Companies may have strict employment contracts to protect trade secrets (eg. restricted
covenants that prevent employees from working for a competitor for a certain period of time
after leaving)
 eg. Microsoft employee Lee Kai Fu
 Lee, who was the corporate VP at Microsoft and helped to build the MSN
Search Engine, moved from Microsoft to Google
 Microsoft sued Google in Seattle, on the basis that hiring Lee to head
Google’s research lab in China was in direct competition with Microsoft and
breaches a non-compete clause which stipulated that Lee could not work for
Microsoft’s competitors for 1 year
o *Note: Choice of jurisdiction – Microsoft sued in Seattle rather
than California, as the former has more lax laws with respect to
employees
 Ultimately, the case was settled privately between Microsoft and Google
 eg. Google engineer and self-driving car technology
 Former Google engineer Anthony Levandowski downloaded documents
containing Google’s self-driving car technology before he left Google, and
later went on to oversee Uber’s self-driving car division
 Uber had to settle the case with Waymo (spin-off from Google’s self-
driving car project) for US$245m
 Levandowski was also sentenced to 18 months imprisonment, and another
court also upheld an arbitration ruling requiring him to pay Google
US$179m (which mostly consisted a bonus he received for his work on self-
driving cars)
- [Strategy] Ensure adequate protection in employment contracts
o During employment: Restricting access to confidential documents/drafts/models on a need-to-
know basis only
o After employment: Restraint of trade to prevent work at a competitor for 6 months

3. Other difficulties in protecting trade secrets

- Although trade secrets may be protected by contract, in practice, when it is licensed out, the trade
secret can be found out
o eg. KFC – Proprietary manner of preparing/cooking the chicken is found in KFC’s licences to
franchisees
- There is also nothing stopping others from reverse engineering a product to discover a trade secret

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 o eg. Coca-Cola – Often said that the drink recipe is the most valuable trade secret, but in
reality, any customer may simply purchase a bottle and send it to a laboratory to figure out
how it was made
 In fact, there is a company in California which has made an identical drink to Coca-
Cola, but sells it to other companies to put their own brand on it

Know-how and patents

- Know-how may be linked to patents
- When making a patent application, some information will be published
o Business would want to keep essential things about the product/invention confidential 
Confidential information can be licensed in a know-how agreement
o Such information may be just as important in the manufacturing process as the information in
the patent
- Factors to consider:
o Whether the patent likely to be obtained will be weak
o Whether the invention can be kept a secret and not reverse-engineered
o Speed at which the invention will be superseded in the marketplace (if likely to be superseded
quickly, may not be commercially worth obtaining a patent which is expensive and may be
worthless if innovation in the industry moves quickly)

*Note: Sometimes, companies may find it more commercially viable to protect inventions by trade secrets
rather than patents
- eg. Netflix’s CineMatch algorithm
o CineMatch algorithm is a prized invention which enables Netflix’s servers to process
information from its databases to predict which movies/shows would suit a subscriber’s tastes
o Interestingly, Netflix has not patented this algorithm, but its employees are made to sign
confidentiality agreements not to reveal the algorithm
o Applying for a patent would come at the cost of having to reveal the workings behind the
CineMatch algorithm, which Netflix may be unwilling to do

Trademarks
What they are
- Trademarks refer to any sign used to differentiate products/services of one business from others
o Can come in different forms – can be a word/combination of words, logo/device, colour,
shape, etc.
o Requirement: Distinctive, not purely descriptive
- Can be registered at the country’s trademark office
o *Note: In many countries, trademarks may still be protected even without registration, as a
result of the trademarks’ use in the marketplace and the goodwill associated with it (passing
off/unfair competition action)
 Passing off actions may also protect the get-up or “look” of a product/service (trade
dress – characteristics/appearance of a product/service which indicates source of
origin)
 eg. Mexican fast-food restaurant, Taco Cabana, claimed that its décor and
ambience were copied by its competitor Two Pesos, and was likely to cause
confusion among customers
o US Supreme Court held that Two Pesos had deliberately infringed
upon Taco Cabana’s trade dress

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 o Years later, Taco Cabana filed another lawsuit against Two Pesos
seeking $5m in damages for failing to comply with the Supreme
Court’s ruling, but just months later, agreed to buy Two Peso’s
assets for $22m  Commercial decision to convert Two Pesos’
restaurants to Taco Cabana restaurants, which Taco Cabana’s
management noted was “aided by the striking similarity of the two
chains”
 Must be careful where brands draw parallels to one another
 eg. Down N Out vs In N Out
o Sydney burger chain Down N Out faced a lawsuit for passing off
from In N Out Burgers, as the Down N Out logo and marketing
collateral were similar to that of In N Out, and marketing
campaigns also made reference to In N Out
o Court held that there was possible deception
o [Prof] Must show protectable goodwill in that jurisdiction (ie. In N
Out must show that Australian consumers were likely to be
deceived)
 If it was constructed as a parody though, there may be
parody defence
 cf Flat Iron and The Feather Blade
o Concept of The Feather Blade (SG) is similar to that of Flat Iron
(UK), but different logos, and no reference to Flat Iron  No
infringement/passing off
o Trademarks have a 6 month priority period (cf 1 year period for patents), where the business
may decide which other jurisdictions it wants to apply for trademark protection within these 6
months, and can apply the “priority date” (date of application in the country of origin) for the
other applications
- Not a monopoly right (cf patents)
o Trademarks do not give owners the right to stop others from using the same/similar mark in
any way – they only serve to protect against confusion arising from another’s use of the
same/similar mark on the same/similar goods/services which the mark is registered for or has
already been used on
o Further, marks can only be registered for particular goods/services
 eg. Ralph Lauren’s “Polo” trademark is registered specifically for clothing, while
Nestle’s “Polo” is for confectionary and Volkswagen’s “Polo” is for automobiles 
None of these 3 companies may be said to own the word “Polo” in relation to
everything
 c.f. some brands are so famous that they can transcend that particular service
- Long-lasting protection
o If registered, trademarks can last as long as renewal fees are paid (generally every 10 years),
as long as it does not become genericised (see below)
- *Note: Some businesses may use IPR litigation for other commercial reasons, apart from asserting the
validity of the IPR or enforcing against infringement
o May be used for publicity, or to put pressure on the defendant
o eg. Fitbit – Sued for infringement before they listed on the US stock market
 Plaintiff thought that Fitbit was vulnerable at that time, and would likely seek to
settle quickly, otherwise their flotation on the stock market may be at a lower price

Examples
Words
- “Lenovo”

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 - “Google”
- *Note: Companies, especially bigger ones, may seek to protect a family of trademarks (as part of
overall branding)
o eg. Toys R Us – Threaten to sue anyone who uses “R Us” in their brand name for
infringement
 Generally, would only win if the “R” was reversed (like in the Toys R Us logo)
 But good example of family of trademarks that is well-protected

Logos
- Nike’s swoosh device: Protected as a registered trademark in several countries, and also protected by
copyright as a drawing
- Puma’s logo
o eg. Puma vs Kuma vs Foum
 Puma may argue that the devices are sufficiently similar and buyers may think that it
is an extension of Puma’s products, hence if Kuma/Foum products are of poor quality
they would affect the goodwill of the Puma brand
 Defendants may seek to argue that they are simply parodies
 In certain countries (but not SG), there is a defence in the Trademarks Act
for parody or fair use
 However, parodies must be distinctively a parody
- Adidas’ three stripes

Colours
- Cadbury’s purple colour
- BP’s green colour
- Tiffany & Co’s blue colour

Shapes
- Ritter Sport filed for trademark of the square shape for chocolates
- Toblerone’s triangular shape for chocolates
o Has been registered in some countries where the registries have held that the shape is unusual
for such a product, and thus functions to indicate the origin of the chocolate

Designs
- Christian Louboutin’s red soles
o Red soles were a registered trademark, and Louboutin sued YSL for making shoes with red
soles  Louboutin won
- *Note: Trademarks in fashion are a grey area – must be indicative of origin (which courts seem to
accept that Louboutin’s red soles are indicative of, but not necessarily other designs)
o eg. Valentino filed for trademarks for their Rockstar shoes which used pyramid studs in its
design, citing evidence that it had used the mark for years and that the sales generated from
such shoes was high  Court rejected the case
 Use of pyramid studs on fashion products is common
 Just because the mark has been used for a long time and generated high sales does
not mean that it is indicative of origin

Issues
1. Potential global expansion
- When coming up with trademarks, the business should consider if it wants to go global
o eg. Dutch beverage called Pschitt does not sound good in the English language
o Trademarks also tend to be made-up words (eg. SONY) rather than legitimate words, as it is
more difficult to obtain protection for commonplace words

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  eg. Lenovo – Founders initially wanted to register “Legend”, but eventually
combined “Legend” and “Novo” (novel) to make “Lenovo”  Also easier to prove
infringement if others use it
o [Strategy] Important to check the language and practices in the countries that the business is
considering expanding to, and ensure that the marks chosen are acceptable (in sound and
meaning) and preferably not commonplace words in the local language
- Also important to have a global strategy with respect to trademarks
o [Strategy] If the business intends to expand overseas, it may be a good commercial decision
to apply for a mark in the intended countries of operation before actually expanding there
 eg. In Australia, the “Burger King” mark was registered by someone else before the
Burger King founders expanded the business to Australia, hence the brand is known
as “Hungry Jack’s” in Australia instead  Foresight in applying for marks related to
Burger King in Australia would have saved the inconvenience of having inconsistent
advertising/branding across the world, etc.
 Registering for the trademark first also helps the company to avoid having to deal
with lawsuits
 eg. “Breadtalk” trademark was already registered in China before the
Breadtalk company moved into the Chinese market, and Breadtalk settled
by buying over the trademark  Cheaper, faster and more straightforward
than trying to prove that the trademark was registered in bad faith
(pragmatic but cheaper/faster > prove bad faith as a matter of principle but
costlier)
 *Note: Trademark laws in certain countries, such as China, follow the “first-to-file”
rule where trademarks are granted to the party who files first, rather than the party
who uses the trademark first (like in the US)  Important to register fast as there has
been an influx of trademark registrations in China by local businesses/individuals
who register marks of foreign products
o Businesses must balance registering trademarks in other jurisdictions for protection, and the
cost of doing so
 Must bear in mind that if the trademark is registered but not used for a certain period
(3 or 5 years, depending on country), a 3rd party may apply to have it removed from
the register on the grounds of non-use  Must minimally use the trademark in the
relevant jurisdictions

2. Trademark may not be protected where the mark is simply descriptive/functional

- eg. Polo Ralph Lauren in Indonesia

o Indonesian company registered this trademark ( )

o Indonesian court held that “polo” is a game, “polo shirt” is a descriptive term of a type of
shirts worn while playing polo, and that Ralph Lauren did not have a monopoly over an image
of a polo player with a mallet sitting atop a polo pony  Ralph Lauren’s claim failed
- eg. Ferrero Rocher’s packaging and shape
o Chocolates are sold in distinctive gold wrapping, sitting in a brown paper cup
o [Prof] While the shape and packaging are recognisable, they do not show the origin of the
chocolate
- eg. Philips’ 3-headed razor
o European Court of Justice held that the trademark was not validly registered as this was
merely a functional shape of the product

3. Risk of being genericised

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 - If a trademark becomes genericised, it becomes free for all to use and there is no longer trademark
protection accorded
- eg. “Tabloid”
o Was a registered trademark for medicines in 1884, but became so successful that in 1904, UK
courts accepted it as a term to describe something which was compressed  The term
“tabloid” became free for all to use as a description
o Subsequently, British press baron Lord Rothermere launched The Daily Mail, the first tabloid
newspaper
- eg. “Escalator”
o Was a registered trademark by OTIS (manufacturer), but soon became the standard way to
describe moving stairs  The word “escalator” fell into public domain and can now be freely
used by anyone
- [Strategy] Companies may emphasise words etc. as trademarks rather than mere descriptions of the
product
o eg. Coca-Cola company consistently emphasises that “Coke” and “Coca-Cola” are registered
trademarks of the company, and not simply an alternative word for cola drinks in general
o Use the ® or TM marks to emphasise that they are trademarks and not mere descriptions
 *Note: It is an offence in certain countries to apply the ® or TM symbols on
unregistered products, hence it is important to conduct the necessary due diligence on
the country’s laws before executing the IPR strategy
o Use the trademark with a noun, to make the mark distinctive from the function
 eg. “Kleenex facial tissues” instead of simply “Kleenex”
o Educate/remind the public about the proper use of the trademark
 eg. Google ensures that dictionaries define “Google” as a trademark of an Internet
search engine

Related IPRs
- Trade names: Name under which a business trades
o May be protected under the tort of passing off (eg. SG), or delict of unfair competition (eg.
Germany)
o In some countries, protection is only granted where there is deemed to be “slavish imitation”
- Company names: Name of the company/entity itself
- Business names: Name of the business
o Registration requirements depends on the country (eg. in Switzerland, business names must be
registered at the business name registry)
- Domain names: Website names
o Exist as contractual rights (contract between the business and domain name registry), not
IPRs (property rights) as such
 Nonetheless, domain names are still valuable as businesses do trade domain names
 *Note: Some countries treat domain names as property rights, while others merely
treat them as contractual rights
o However, some businesses may register their domain names as trademarks
 BT v One in a Million (1999) – Law of passing off may potentially be available to a
plaintiff who successfully argues that they have goodwill in relation to a particular
name, which the defendant had registered as a domain name
o [Strategy] If looking to have domain names licensed/acquired, the business must ensure that
the documentation expressly provides for domain names (and does not simply say “I hereby
transfer all IPRs”), because domain names are not IPRs per se

Copyright
What they are

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 - Copyright is a legal right arising in a broad range of works, including literary works, databases, films,
musical and artistic works
o Protects the expression of ideas, and not the ideas in themselves
- Costs nothing to obtain
- Copyright arises automatically when the work is produced and there is generally no need to register
o In most countries, there is no copyright registry; in certain countries (eg. the US), there is a
registry but it is not necessary to register in order to have the right, it is simply advantageous
to do so if the copyright holder wants to sue
- Copyright holders automatically get the benefit of international conventions to obtain copyright in most
countries in the world
- Duration of copyright is generally life of the author + 70 years
- Not a monopoly right
o Copyright simply serves to prevent copying of the work
o eg. If one draws a picture of the Louvre, he has copyright in his drawing, which allows him to
stop others from copying his drawing, but does not stop others from creating their own
drawings of the Louvre from the same angle, etc.

Boat hull rights:

- Specific to the US, where lobby groups successfully lobbied for protection of boat hulls
- Important for business to be sensitive to different jurisdictions’ specific laws

Examples
Literary works
- Covers any work in written form – no question as to the quality of the work
- Includes computer programmes, which are written as strings of code

Databases
- In most countries, only the selection/arrangement of data is protected, not the underlying data in itself
o SG position (Global Yellow Pages v Promedia Directories): GYP claimed that Promedia
infringed its copyright in the Internet Yellow Pages, and various editions of its print
directories, with Promedia’s use and deployment of material from GYP’s directories in
producing/maintaining Promedia’s own “Green Book” directories
 Court held that there is no copyright of facts, and one party cannot be allowed to
monopolise control over facts
o EU position: Specific sui generis database right which prevents unfair extraction of data,
introduced after successful lobbying from database companies
 Database rights are rights given in the EU to creators of valuable databases, and grant
a monopoly right which lasts for 25 years
 [Prof] However, this right does not work in practice, and such actions have rarely
succeeded

Films
- Possible to have multiple copyrights in a film – copyright over the film score/soundtrack, copyright
over the script, copyright in the underlying book the film was made based on, copyright over the
characters in the film
o Each of these rights are revenue streams for the creator
 eg. Harry Potter – JK Rowling licensed Warner Bros to make the film, sell
merchandise, etc.  Licences are contractual rights (right to make films, right to
make translations, etc.) and allow Rowling to earn revenue from film distribution,
merchandise, etc.
o If a business were to want to commercialise a film, it must ensure that it has obtained
authorisation/licences from each copyright holder

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Musical works
- Similar to films, it is possible to have multiple copyrights in a single musical work – copyright over the
music, copyright over the lyrics, etc.
o If a business were to want to commercialise a musical work, it must ensure that it has obtained
authorisation/licences from each copyright holder
- Musicians can earn from various revenue streams, including paid live shows/concerns, digital
downloads, physical album sales, streaming (eg. Spotify), synch deals (eg. getting music played on TV
or at events like the Super Bowl), etc.
- [Issue] Copyright infringement and plagiarism suits in music
o eg. Katy Perry and Marcus Gray
 In 2019, rapper Marcus Gray claimed that pop artist Katy Perry, in her song “Dark
Horse”, had copied his earlier-written song “Joyful Noise”, particularly by Perry’s
use of 2 ostinato patterns in her songs  Federal jury in LA awarded $2.78m to Gray
 However, in 2020, the earlier jury verdict was overturned
 Court held that the allegedly infringing ostinato patterns were not
protectable as a matter of law since it was not a particularly unique/rare
combination, and “to allow an individual to monopolise notes such as these
or other commonly occurring elements of music would muzzle artists and
songwriters”, and restrain new works

Artistic works
- Includes paintings, photographs, sculptures, etc.
- *Note: Buying a painting =/= acquiring copyright in the painting
o Painter still owners the copyright; buyer only owns the physical paint on the canvas
- Cannot assert IPR ownership if anonymous
o eg. Banksy’s graffiti
 Banksy, a street artist known for his anonymity and secrecy, obtained an EU
trademark for his graffiti showing a masked protester hurling a bunch of flowers
 Greeting card company claimed that the trademark was taken in bad faith as Banksy
never intended to use it for goods/services
 EUIPO declared Banksy’s trademark invalid, noting that he did not have any
intention to use the mark to commercialise goods or provide services
 As an anonymous party, Banksy also faces difficulty asserting ownership of the
trademark
- For photographs, photographers often seek copyright licences to be taken out before their photographs
may be reproduced on other platforms  Method of extracting/creating value from underlying
copyright
o eg. Volvo
 Photographer Jack Schroeder and model Britni Sumida sued Volvo for violation of
copyright and publicity/image rights respectively, after Volvo used photos from their
shoot in its Instagram story
 Claimants did not expressly give permission to Volvo to use photos
 Volvo relied on Instagram’s policy, arguing that by posting it publicly and tagging
Volvo, they gave implied consent and an implied licence to use the photo
 California federal judge dismissed Volvo’s motion to dismiss the lawsuit
 [Prof] Here, there is clearly no actual licence, so Volvo is trying to rely on
Instagram’s policy, but the photographer did not give Volvo a licence to reproduce
the photos
 Likely that the case would be settled quietly by Volvo since it seems like
there was infringement, and there is negative publicity

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 o *Note: Defence of reporting a current event available – hence if photos are used in media for
reporting purposes, it is not considered infringement
 Although if another party then embeds the photo or reposts it, they may not be able to
avail themselves to the same defence
- *Note: The subject in photographs does not own copyright to the photographs
o eg. Twelve Cupcakes and SPH
 Twelve Cupcakes’ owners put up articles written about their business on their
company website and social media pages
 SPH demanded payment for reproducing their articles online
 Under copyright law, authors are the ones who own the copyright and can control
distribution rights to a piece of work, not interviewees/information providers

Design rights
What they are
- Design rights are rights granted by the state (similar to patents) which protect novel designs
- Monopoly right
- Lasts for up to 25 years in countries such as the UK or Australia
o In certain countries, similar protection may be given by a design patent/utility model (eg.
Germany)

Examples
- eg. Jimmy Choo and M&S – Jimmy Choo sued M&S for making similar-looking handbags
o In this case, there was no registered design, but there was a lot of publicity surrounding the
case and M&S agreed to stop stocking the product for commercial (rather than legal) reasons
as it did not want to be seen selling lookalike products

Publicity/image rights
What they are
- Publicity rights are rights given under the laws of some countries over a person’s image
o Applicable in some US states (often in states where celebrities live, eg. California) but not
others
o Not applicable in the UK; must rely on the law of passing off instead
 eg. Rihanna and Topshop
 Topshop sold a T-shirt with an image of Rihanna printed on the front
 Topshop had received an assignment of rights from the photographer who
took the photo of Rihanna  Rihanna could not sue for copyright
infringement, but sued for passing off (necessary element is deception)
 Court held that Topshop was deceiving customers that there was a
commercial connection with Rihanna
- [Strategy] Even in jurisdictions where there is no recognition of publicity/image rights, people may
still create such rights contractually
o eg. If a business wanted to work with Messi, it could be negotiated for the contract to stipulate
that his image rights are IPRs and may not be used  Even without formal IPRs, given the
freedom of contract, it is possible to create a world where parties have to accept that there are
rights pegged to one’s image

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