This week, we concluded our series coveringeverything a small business owner needs to know about intellectual property rights.
Now, Business Advice expert and series author, David Walker, provides responses to questions from readers.
(1) How can a small business owner stand up to threats from lawyers
I would be interested to hear your thoughts in respect of how to defend your intellectual property rights? from thepoint of view of a small business being effectively “bullied” into submission by high-earning lawyers, acting on behalf of companies, taking a blanket approach with little regard to the actual detail and circumstances.
What can you advise for such a scenario?
It would appear that the process is not sympathetic to businesses who have a real case to argue, but unfortunately do not have the finances to stand their ground. The IP Office can only ‘sit on the fence? and cannot give any helpful guidance or ruling, thus helping to avoid cases without any foundation being pursued.
A big company with lots of intellectual property rights to protect will often have lawyers on retainer to police its right and clamp down on infringers.
However, as you point out, such companies often fire off a standard response without any thought to what they are sending and innocent small businesses can be in the firing line of this.
However, you should not be afraid to stand up to the company if you have done nothing wrong. Doing so doesn’t need to cost the earth and you only need to know a little bit about the law to do this yourself.
It is actually an offence for a company to make unjustified threats of intellectual property infringement, so the lawyers should be careful in what they are saying. It would be fine for them to effectively notify you of the company’s rights, but they shouldn’t say that you are infringing them unless you actually are and they have evidence of this.
If they threaten you, with no right to do so, threaten them back.
Ask them to provide proof that what you have done infringes their rights and if they can’t say you will take action against them for unjustified threats of intellectual property infringement if they take this further.
It is also a good idea to make sure all of your rights are properly protected. This then gives you a solid base for you to fight back from.
Please note that these unjustified threats of intellectual property infringement only apply to trade marks, patents and registered designs. They don’t apply to copyright infringement.
(2) What happens if I cannot track the appropriate individuals down or establish direct contact with them
I’m writing a book about a certain brand of guitars with the permission of the company/brand. I plan to self-publish, but it is just as possible that it could end up being published by a major publisher.
However, as things stand I will be the publisher, and I plan to incorporate photos of relevant guitars and people, including present and past employees of the guitar manufacturing company and some famous guitarists.
Based on your article on using other people’s intellectual property, I believe that in addition to obtaining the permission of the copyright holder (which may or may not be the photographer) I also have to obtain permission from any of the individuals that are included in the photographs.
Is that correct, and what happens if I cannot track the appropriate individuals down or establish direct contact with them, despite having made efforts to do so?
It is an interesting question as we have no real law on “image rights” as such. Instead, people who wish to prevent the publication of photographs of themselves must rely on a range of other laws, none of which quite fit the bill.
To be absolutely sure that you are not infringing anyone’s intellectual property rights, I would say it is safest not to use the photo if you don’t have the permission of the copyright owner and anyone in the image.
However, if it is the perfect image and you really want to use it I would say it is a judgement call. Without seeing the image or knowing the context, I can’t say whether I would or wouldn’t use a particular image, but below are a few ideas to think about.
Why would the person in the image object? If the picture is a clear invasion of privacy, for example if it was taken in private, don’t use it. If it was taken at a public event, it is less likely to be seen as an invasion of privacy.
How famous is the person? What else do you know about them? For example, do they do lots of endorsement deals so are protective of the commercial value of their image? If so, I would again be cautious.
If there are many, freely available images, this may be less of a risk.
If you have made a good attempt to identify the person and locate them and the picture doesn’t fall into the categories above I would probably be tempted to publish the picture (in the first instance at least).
I would add a disclaimer to the book to say you have made every effort to identify and obtain the consent of people in the images, but where this has not been possible, invite them to get in contact.
If you are self-publishing and printing on demand and receive an objection from someone, it should be relatively simple to remove the picture from later publications.
If you then get a publishing deal you can re-consider all of this before making a final decision on what pictures to include.
Catch up on David Walker’s series on intellectual property rights: