How can Intellectual Property be protected?
Intellectual Property can be protected either by bringing an action in court or through an amicable out-of-court settlement.
Here are the different actions that can be taken in order to protect Intellectual Property:
- in case of infringement of a national patent it is possible to bring a claim before the competent national court;
- in case someone is selling counterfeit products under another's trademark without the trademark owner's authorization it is possible to request the competent national custom department for seizure of the same products;
- in case of registration of a trademark which is identical with or similar to an earlier trademark it is possible to submit an application for cancellation to the European Union Intellectual Property Office (EUIPO). Of course, in case the new trademark has not been registered yet, it is possible to file an opposition against registration, requesting the Office to reject the trademark application;
- in case of violation of commercial secrets it is possible to bring action in court;
- in case of conflict between domain name registration or sale and Property Rights it is possible either to bring an action in court or to settle the litigation through out-of-court negotiation (ICANN);
- in case of counterfeiting of products with protected geographical indication it is possible to bring a claim before the competent national authority.
Moreover, both criminal and civil action can be initiated. Here are some of the civil actions which can be taken:
- precaution measures such as injunctions and seizures, aimed at avoiding misuse of Intellectual Property;
- damage compensation;
- enforcement actions aimed at enforcing an order previously issued by the Court.
Crimes such as counterfeiting and piracy amount to criminal offences against Intellectual Property and they can be prosecuted in court.
Applicable laws and forum having jurisdiction on Intellectual Property Matters
Intellectual Property Matters fall into the scope of the discipline of contractual obligations.
UE Regulations have established as a general rule that in case of non-contractual obligations that arise due to an infringement of Intellectual Property Rights, the applicable law is that of the country where protection is sought or where the crime has been committed.
On the issue of the competent forum instead, UE regulations are somewhat more flexible, allowing law enforcement authorities to choose (above all in cases of counterfeiting) the location of the court among the following possible places:
(i) the infringer's place of residence;
(ii) the place where the offence was committed;
(iii) the place where the infringement has produced its effects.
What is Intellectual Property?
Intellectual Property Rights include a variety of exclusive rights over intellectual creations. They can be divided into two different subgroups:
- industrial property, relating to patents, trademarks, industrial designs and protected geographical indications;
- copyrights, aimed at protecting ownership of literary and artistic work.
What are Intellectual Property Rights?
The following possibilities are open to owners of Intellectual Property:
- they may grant rights of use to third parties (Licensing agreement);
- they may sell Intellectual Property Rights (Transfer or assignment of Intellectual Property rights).
More in detail, by means of a written licensing agreement holders of Intellectual Property rights (licensors) can negotiate with another party (licensee) the right to make use of their Intellectual Property.
A licensor can grant rights of use either to a single person (exclusive licensee) or to different persons. In turn, the licensor receives compensation in the form of royalties, that is a percentage of product sales.
It is also worth noticing that a licensor is entitled to place restrictions on the right to make use of his/her Intellectual Property. For example, the licensor can specify a starting date and a duration of the licensing agreement, or limit the rights of use according to geographical areas, fields of application, and so on.
Even after signing a licensing agreement, the licensor will retain the following rights and responsibilities:
- intellectual Property Rights, that is there is no transfer of ownership;
- legal responsibility on the retention of Intellectual Property Rights.
Otherwise a licensor can opt for transferring Intellectual Property Rights, thereby waiving all rights of use, as well as any economical benefit deriving from them.
Directive on Copyright in the Digital Single Market: (EU) 2019/790
The Directive on Copyright in the Digital Single Market (EU 2019/790) is aimed at giving holders of Intellectual Property Rights, in particular musicians, artists, actors, screenwriters, and online news editors, the opportunity to negotiate better agreements on the revenues derived from the exploitation of works published on internet platforms such as YouTube, Facebook, and Google News.
The objective is to ensure that rights and obligations relating to copyright protection are guaranteed even on the internet, so that the big companies of the web share their incomes with artists and online news editors.
It is also worth noticing that the above mentioned platforms are deemed responsible for the contents uploaded by the users on their websites, thus automatically granting to online news editors the right to negotiate agreements on the content exploited by news aggregators on behalf of journalists.
Many provisions of the Directive on Copyright were conceived to ensure that the internet continues to be a space of freedom of expression.
Thanks to the Directive on Copyright, then, holders of copyrights will be entitled to seek additional remuneration for the exploitation of their works by internet platforms whenever the original remuneration appears to be too low or disproportioned if compared to the incomes of the distributors.
The upload of content on free online encyclopedias such as Wikipedia or on open source software platforms is excluded from the scope of the EU Intellectual Property Directive.
Moreover, the Directive on Copyright introduced the obligation for online content sharing service providers to request permission from the copyright owner every time they give public access to works or other copyrighted materials uploaded on their websites by their users, as this is an act of making available and communication to the public.
In the absence of the owner's permission, online content sharing service providers will be held responsible for any non-authorised act of communication to the public.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.