Intellectual Property & Information Technology

Your business will probably have some element of Intellectual Property (“IP”) involved in it. In fact, we, at W Davies, often find that our clients possess quite a full portfolio of IP assets. These can even be as valuable as the more traditional assets of shares and physical property.

You can receive from us the benefit not only of the relevant knowledge of intellectual property law, but also of many years of practical business application experience in the first-hand use of IP Rights.

Therefore, W Davies can assist you in all stages of the ‘life’ of your IP assets – including their creation, protection, commercialisation, transfer and, if necessary, enforcement.

Such assistance can be provided in at least the following areas:

• Copyright (plus Design Rights, Trade Secrets and Know-how)
• Trademarks (and Passing Off)
• Music Licence and Distribution Agreements
• Artist, Media and Publishing (Musicians, Record companies, Visual Artists, Writers and Publishing)
• Franchising & Sponsorship
• Commercialisation of IP rights
• Information Technology, Software & Design Issues (where they link to IP)

Once upon a time, copyright held a Cinderella-like place in the field of IP – relating mainly to the music, film and publishing industries. Today, though, in this electronic age, copyright has soared in importance in most national and international businesses. Internet growth and IT convergence (i.e. with communications, entertainment, publishing, etc) have turned content and its protection into areas of major importance for our commercial clients.

A common misunderstanding relates to the way in which copyright is created. Under copyright law, there is no copyright in an idea, but rather in the expression of that idea. Of course, we can help you to protect that expression.

Copyright also gives the owner the right to prevent others from copying ‘literary’ and ‘artistic’ works.

A literary work in this context includes any work (including music or dramatic works) that is written, spoken or sung. It includes factual documents like data sheets, instruction manuals, reports and computer programmes (plus, to a certain degree, computer programme structure).

An ‘artistic’ work is a sculpture, a photo, a graphic work and a collage; ‘artistic merit’ is irrelevant – so this category generally includes plans, engineering drawings, plus architecture (buildings and building models) and computer graphics (including the lay-out of screens).

Authors, musicians and artists will usually own copyright from which royalties can be obtained. But many other work areas can include an element of copyright. For example, copyright can form part of the efforts of software providers and other designers, if set down in a tangible form. Perhaps you have prepared an Office Manual – if so, that too would involve copyright. Wherever it arises, you should consider protecting and valuing your copyright. In any copyright contract that we prepare or review for you, we will include appropriate royalty provisions.

However, we go far beyond giving advice on the ‘mere legalities’ of the matter – having decades of practical, first-hand experience of such negotiation, in over 80 countries. You can receive the benefit of our detailed knowledge of industry sectors (especially the music area).   Furthermore, we understand how technology is involved today in the provision of the content to the consumer. So we can help you in the areas of: music, visual works, computer software issues, literary (print) works, performance rights, designs and rights relating to databases.

More than ever before, the electronic age requires your business to demonstrate a ‘point of difference’. In its most obvious way, this can be shown by the public’s perception of your business’s brand. Once a brand has achieved proper recognition, it has a real value. Therefore, your business entity must ensure that this brand remains distinctive to that business and must be kept safe from abuse. You need to trademark your brand. Then we can help you to prosecute any trademark infringement, from a position of strength.

You can have our advice on trademark strategy and protection, trademark licensing and transactions involving the acquisition or disposal of marks and on analogous rights – nationally and internationally.

Where your trademark is registered, the aim is to enable members of the public to distinguish your goods or services from those of another person or entity. Trademark registration gives the owner the right to prevent others from employing the same (or a similar) mark on goods or services which are the same (or similar). Provided that the renewal fees are paid and the trademark is used, the ownership can endure indefinitely.

Trademark registration must be of:

• Distinctive word or words (which can include a personal name)
• Logo
• Combination of words and logo
• Another symbol
• Sound (the roar of a Harley Davidson motorbike exhaust, or the bars of an advertising jingle)
• Smell
• Colours
• Shapes and packaging (e.g. a Coca-Cola bottle)

Unregistered Trademarks in the UK

If you have an Unregistered Trademark, any infringement of it in the UK can dealt with by the action for “passing off”, under common law.

Our IP legal specialist worked for many years in a series of commercial roles for major multi-nationals. Part of that work involved negotiating music licensing and distribution agreements, at first-hand, in dozens of countries, plus the subsequent drafting of the agreements. This included 12 years with one of the major record companies, followed by further years in international music business consultancy.

So if music is your business, we can provide a legal service augmented by substantial commercial experience and success, plus a strong awareness of the challenges, difficulties and opportunities.

We can offer you advice and assistance in negotiating deals relating to:

• Music licensing and distribution agreements (including matters of copyright and royalty rates)
• Recorded music deals – “record contracts” (for companies and artists)
• Copyright law
• European and Global music deals
• Clearance rights and contracts
• Live music
• Tours
• Catalogue deals
• Music publishing (see below, in our Artist, Media, & Publishing section)
• Digital music platforms (involving non-traditional operators e.g. mobile phone companies)
• Management and agency agreements
• Merchandising agreements
• Sponsorship agreements and
• New business models.

Our IP Department can cater for your needs both in the UK and internationally, because of our wide experience of overseas music markets.

Music Publishing and Collecting Societies

In tandem with the record company side of the music business, we can advise you on matters relating to the potentially-lucrative area of music publishing and on Collecting Societies.

Unlike as in many other legal firms, our intellectual property specialist (who is legally qualified in several jurisdictions) worked for many years in a series of commercial roles for major multi-national companies, negotiating IP deals at first-hand, in dozens of countries.

Accordingly, we can offer to you an Intellectual Property rights legal service – augmented by substantial commercial experience and success, as well as a full awareness of the challenges, difficulties and opportunities of the area.

You may come to us with a business concept seeking creative answers, to help to turn your ideas into profitable commercial reality. If so, we will be happy to augment your legal requirements with appropriate, entrepreneurial tactics.

Part of our overall advisory process can be an ‘audit’ of your Intellectual Property rights portfolio. This would be carried out to ascertain whether or not you are exploiting it to the fullest extent. Here, our aim would be to explain the balance between commercial pragmatism and legal best practice.  Then, jointly, we can reach a balanced way forward for your business.

Many kinds of business arrangement can involve considerations of Information Technology (‘IT’) – and thus of IT law. These could include software licences, or contracts for the trial and development of software. Such agreements may be fairly straightforward in content. Alternatively, they may involve considerably more complex, ‘bespoke’ agreements drafted to meet the needs of those engaged in IT design and development. Consultancy may be involved in such software and digital issues.

The speed at which technology and digital technology law (both national and international) change requires constant re-assessment of the legal issues and of the commercial basis of today’s IT, software and digital industries. In the field of digital media distribution, the pace of advancement in technology has resulted in a multitude of novel platforms and delivery methods. Content owners and delivery entities must review their business models and update them frequently. Excitingly, this pace of change has altered the traditional revenue streams, with the advent of new commercial liaisons.

Below, are some of the IT areas upon which we can advise you:

• E-commerce development
• Digital distribution of sound & visual recordings, including downloads and streaming
• Confidential information
• Software issues, including development and commissioning of specialised software
• Supply and maintenance agreements
• Music and other software licensing, plus other agreements
• Website development agreements
• Data rights
• Domain name matters, including transfers
• Data protection, privacy and policy for websites
• Terms & conditions for effecting business via the website
• Terms & conditions for use of the website
• Acceptable use policy

As it is acknowledged that the internet embraces an inherently international character, the guidance which we provide on the relevant issues and on the potential means of their resolution will frequently be influenced by the inter-continental nature of the matter.

Should you wish to discuss IP & IT further please contact enquiries@wdavies.com