Intellectual Property is one of the fastest growing areas of commerce and while other countries like the United States, United Kingdom and Canada have seen the need to invest in this aspect of commerce, we in the Caribbean and especially the smaller states still need to heavily invest in intellectual property. Intellectual Property is big business.
A recent Graduate Schools Edition of U.S News and World Report noted that Intellectual Property Law was going to be the “hottest area of law in the new millennium”. Marc Greenberg an IP professor at Golden Gate University says “The decline in dot.com fortunes hasn’t changed that assessment, with law schools all over the nation adding or expanding their intellectual property law offerings. Law placement experts confirm that the demand for IP lawyers still outpaces the supply – with no end of that demand in sight.”
Increased interest in IP can be attributed to the continued movement of countries to an information-based economy. Four years ago (May 2004) the International Intellectual Property Institute held a symposium in Barbados to discuss the topic, “Establishment of the Caribbean Court of Justice: The Effect on Intellectual Property and International Trade”. Given the Caribbean Single Market and Economy, it was stated that the region will have to concentrate more on the acquisition and sale of intellectual property to sustain member countries.
IP is the United States’ largest export and a major factor in their sustained growth. It was recently reported that because the private sector has not properly taken the necessary steps to maximize revenue from their music industry, Jamaica lost over one billion dollars in the last 10 years.
Intellectual Property refers to creations of the mind and includes logos, names, inventions, literary and musical works. Intellectual property is intangible in nature. Hence, once the owner’s rights are lost or compromised, it is extremely difficult if not impossible, to recover those rights. Imagine for example granting a third person permission to use a trademark that does not allow the trademark owner to verify the quality of the goods produced. This could result in complete loss of the mark. Similarly, launching and marketing an important product without seeking a patent for the same may very well prevent one from later seeking patent protection. One final example is where an employee takes valuable company information to a competitor without restrictions imposed by the owner of the confidential information which would naturally cause the information to lose its protected status.
The tangible nature of IP also prevents it from being susceptible to natural disasters such as hurricanes, volcanoes, earthquakes and tsunamis. It is therefore a worthwhile investment.
There are several heads under the umbrella of IP. These include Trade Marks, Copyright, Patents and Trade Secrets. I want to look at Trade Marks, and Copyright in particular, discuss their nature and the way in which we can invest in them. The other areas briefly are:
Patent is a limited exclusive right given to inventors to exclude others from making using or selling his or her invention.
Trade Secrets: A trade Secret consists of any valuable information that gives its owner an advantage over its competitor. This includes customer lists, recipes, marketing plans and methods of conducting business. Unlike Trademarks and Patents no registration is needed. Further a trade secret can enjoy a lifetime of protection. Once the information is kept a “secret” then the law will afford it protection. However if that information is lost then it will no longer be a trade secret. (The Coca Cola recipe is locked in a vault). If the recipe is patented then the owner would have enjoyed it for the limited time. On the other hand if the recipe is not known, then the owner can enjoy it as a trade secret so long as the confidentiality is maintained. Volcano Rum in Montserrat is a case in point.
A trademark is a symbol, name, design or combination thereof by which we identify a company’s products and services. For example “Grace”, “Busta,” “Pinehill,” “Banks,” “Stanford”. Now, a trademark should identify the source of the goods and not the goods themselves. We have come to expect the Grace label to be associated with that reputable Jamaican company with an excellent line of high quality products. So when I buy a Grace fruit juice I know it’s the same product I am getting whether I am in St. Kitts, Antigua or Jamaica. (Car/Mercedes, ).
Words (either single or multiple): e.g Grace, You know why you fly (American Airlines), A Caribbean Treasure spectacular by nature (MTB’s tag line and its logo)
Numbers and letters: As long as they do not describe the mark e.g CNN, Datsun 120Y, KFC, BUT a mark such as VCR200 should not be registered in relation to a VCR.
Designs: Mark can be only a design such as NIKE Swoosh or Smile of a Quaker such as Quaker Oats. It can also be words plus design such as Stanford with the eagle.
Sounds: The sound of the roaring lion heard at the beginning of Metro-Goldwyn Mayer movies and Tarzan’s yell are all registered also Microsoft sound when computer boots up or shuts down.
Shapes: A product shape may be registered so long as the shape is not functional. That is to say that it does not affect the performance of the product or its use. E.g Coca Cola has registered its curved bottle shape. It is was able to do so because the shape does not in any way affect the taste.
Color: If a color is natural to a product or is useful to a product, it cannot be registered. Owens-Corning was allowed to register the color pink for its insulation materials, and the since the color pink in not naturally associated with insulation its registration was allowed. The colors yellow and orange were not allow to be registered for public telephones because they were more visible in an emergency and competing telephone companies should be allowed to use the colors as well.
Not all attempts at registering a trademark will be allowed. We look at some barriers.
When you are in business, your mark is among your most visible assets. So how do select a mark? It is natural for one to want to select a mark that is connected to the service such as Film Production Inc. But such a mark would be rejected. One should select a fanciful mark that has no connection to the product. Such as APPLE for computers, Yahoo for Internet Search engine and services, Mingles for Hair Salon. A mark that is descriptive will be accepted where it has acquired a secondary meaning (for some that mean 5 consecutive years of use of the mark). A name that is made up from scratch such as Pepsi or Google is meaningless at first but company must spend time and money to teach consumers to link the mark with the company’s products and services.
In choosing a mark bear in mind that the standard for infringement is not whether the mark is identical to another’s but rather whether it is confusingly similar. Therefore changing a few words will not exempt you from liability. You should check to see if it is already in use and conduct searches to see if a mark is in use.
When choosing a mark one should consider the words that are common to the business and avoid them. Even though you may get the mark registered you may have a hard time protecting against other users since they may have used those very words.
The market of your business will also determine the extent of your search and kind of mark you may want. If you are selling products in Montserrat and you have no intentions to branch beyond here, then you will choose a mark that is not used in Montserrat.
So choose a mark that is fanciful and not typical. Choose a mark where you have the domain name available and register domain name as well. Conduct searches on the internet to determine if mark is used. Search the local registry or USA online as well.
Maintaining your trademark is important once you have registered for a mark can be lost if it is abandoned or if it becomes generic.
Trademarks are property just like vehicles and land. They can be bought and sold like other types of property. In many cases Trademarks are licensed and not sold. (Explain difference)
When licensing you mark it is important to state in the licence that you as owner retain quality control of the mark so that you ensure the goods and services offered by the licensee meet your standards.
Copyright law ensures legal protection for literary, musical and dramatic works. Copyright is a negative right. It’s a right to prevent others from copying or reproducing your creation. In fact apart from copying, the Copyright Act of all jurisdictions provides protection from all such practices as the making of derivative works, the altering or modification of a work, the displaying of work, and in the case of music, the broadcasting of work. The creators have the exclusive rights to their work. They can themselves do all of the above or give permission to others to do it. They could also limit the scope of permission.
Whether it’s an artistic work, a literary work, or a musical work every creation starts with an idea. “Who let the dogs out?” started with an idea. “Hot Hot Hot” started with an idea. However, by now most of you should be familiar with the mantra of copyright law: “Copyright law protects the expression of the idea rather than the idea itself.” A movie about a Superhero who lives a secret life and comes to the rescue of helpless citizens is an idea, whereas the movies “Superman”, “Batman” and “Spiderman” are all expressions of the same idea. Hence each creator is afforded protection of the work in question.
Education is one of the best ways to encourage the creation of works. The provision of vital information is key for a thriving creative society. I often hear people say, “If only I knew…I would have...”. We need to educate those in the creative industry about the value of their creation. You may be a songwriter who does not have a University degree but you may very well have written a number of songs. Those songs combined with a basic understanding of copyright can result in significant income for you and your family. On the other hand, a lack of this knowledge can result in a hit song that is played around the world, generating millions of dollars with few or none of those dollars going to you the songs creator. In fact, this is the tragic tale of dozens of songwriters across the Caribbean. This is why education is so essential.
Our very own Soca star Arrow, author and first performer of “Hot Hot Hot”, credits his success to his informal study of the performance industry. According to him artists in the region need to purchase books and read. As a result of reading Arrow positioned himself to earn money worldwide every time his music is played. He has licensed his music to be used in toys, compilations (there are over 30 versions of the song “Hot Hot Hot” ranging from the classical version to country and western), and most recently he has licensed the song to be used as a ringtone.
The story is told of Hopeton Lewis who released the song, The Tide is High, in the 1960s. Some 20 years later, the song was covered by the British singer Blondie and became an international hit. It is reported that first installment of royalties paid to Lewis was over three million U.S. dollars. He could not have collected such sums without copyright protection.
The fact is, what you don’t know can hurt you! There are several artistes in the region and especially the Eastern Caribbean who are unaware of how the music business functions. They place too much reliance on “managers” and other aides to deal with the administrative aspects of their affairs. Moreover, these aides too are often not very knowledgable about the industry. Well, the stakes are too high, and the possibility of getting hurt too real for artists to take either themselves or their work for granted. My advise to every artist is this: Get to know your industry. Read!!! Information is easily available on the Internet. Knowledge is Power!
There is no doubt that IP is big business. It’s the US’ biggest export.
The Passion of Christ started with an idea for a movie. However, revenues from that idea is derived not only from the movie but from merchandise. There’s the passion of the Christ Crosses, Passion of Christ bibles, Nails, Hammers etc. Seventy-five Thousand (75,000) The Passion of the Christ "nail pendants" were sold the week Mel Gibson's film opened thereby supporting the thought that showbusiness is 10% show and 90% business!
Every day on television we hear huge figures quoted in relation to the income of celebrities. How do we in the Caribbean make money from our creation?
Copyright exists for literary, musical and dramatic works.
The way forward:
So, knowing of the massive revenues that can be derived from an idea where do we go from here? We also know that throughout the region, in any given year an amazing amount of songs are created. Our artists are very industrious, but are they strategizing to take the best possible advantage of their wage earning potential? Are they ready for business? I am now going to suggest some steps that could be of help:
Whether you are a songwriter, author, or playwright you should do all you can to develop your creation. Intellectual property could very well be the backbone of our economy. Given its intangible nature IP is not susceptible to natural disasters such as Hurricane and Volcanoes. It is therefore worthwhile investing in creative ventures. Let’s think outside the box and reconsider our attitude towards this potentially lucrative market.
William Krasilovsky and Sidney Shemel, This Business of Music, Billboard Books
Donald S. Passman, All you need to know: The Music Business
Tim Whitsett, Music Publishing: The Real Road to Music Business Success, Mix Books
Tim Sweeney & Mark Geller, Tim Sweeney’s Guide to Releasing Independent Records TSA Books
Tad Lathrop & Jim Pettigrew, This Business of Music Marketing & Promotion, Billboard Books
Writer’s Market
How to Start your own Magazine
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