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Intellectual Property Law

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Introduction

Innovations, ideas, trademarks, and works of literature are all examples of what is

referred to as “intellectual property” or “IP. As a result of legal restrictions such as copyright,

patents, and trademarks, a creator’s work may only be used and distributed with their permission.

Businesses take appropriate precautions to safeguard their fixed assets, such as their stock and

machinery. Intangible assets, on the other hand, are more challenging to protect. Intellectual

property (IP) is a non-physical resource. Patents, trademarks, and copyrights may provide value

to a firm even if they aren’t tangible (George, 2013). Intellectual property (IP) refers to anything

that only the Intellectual Property owner may claim as their own. In the UK, ideas aren’t

considered intellectual property, but the objects from an idea are considered intellectual Property

(Cheng-Davies, 2006). However, there’s always the possibility that firms may be imitated when

they present new products or services to the globe. Because of the internet, unique IPs may be

easily stolen. All companies must therefore safeguard their intellectual property rights.

Intellectual property (IP) rights and safeguards make it simpler for a corporation to pursue legal

action if its IP is stolen, yet it is still possible for a firm to lose its market share.

Intellectual property cannot be justified in the same way as physical property. Unlike

physical goods, which can be mass-produced, intellectual property is not limited in quantity.

Intellectual property does not have the same difficulty with scarcity as other forms of property

since it relies on a readily available resource, which is information (George, 2013). There are

artificial limits put on intellectual property by a legal system that hinders access to public

distribution and use of the intangible intellectual property. According to Ciro (2005), the

argument goes that grounds for the privatisation of physical assets cannot be applied to

immaterial assets. Because intellectual property rights are now enforced, an explanation based on
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the production and preservation of investor value may be made, but this does not justify their

existence.

Part A

It has come to Saria’s attention, in this particular instance, that another acting studio

(Aspiring Actors Association) is utilising the mask from her logo to promote their own company.

Saria teaches an acting technique inspired by the Popov School; therefore, the legacy of

Alexander Popov is carried on by her and other instructors. Based on various considerations, a

claim for passing off against AAA will be evaluated on its merits. Passing Off” is a common law

used by several firms in the UK to defend their trademarks. The right to file a claim for Passing

Off does not need trademark registration and emerges once a firm has established a reputation.

Passing off is misrepresenting one’s products or services as those of a third party,

whether by purpose or accident. A person or company’s goodwill is frequently harmed through

misrepresentation, which may lead to financial loss or a tarnished image. Saria may prohibit

other studios from profiting from the goodwill connected with her firm by initiating a passing-off

claim. A rival cannot imitate one company’s unique trait to pass it off as their own. Several

possible resolutions and defences are available if such a lawsuit is brought against a company. A

company’s reputation and goodwill are tools to differentiate a firm and its products or services

from its rivals. A company’s excellent name, reputation, and connections have been referred to

as its “goodwill.” Attractiveness is the driving factor behind customer acquisition.

The company owner (claimant) has the legal right to restrain the defendant (defendant)

from taking advantage of their goodwill and reputation for their benefit. Passing off an action

requires the claimant to show that: (1) They have a reputation or goodwill associated with their
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goods and services; (2) The defendant has made a misrepresentation that has confused; (3) The

defendant’s misrepresentation has damaged the claimant’s reputation and goodwill. If Saria

wants to win a claim for passing off, she must prove that her firm possesses the following:

Goodwill

Claimants who want to recover for passing off must first demonstrate that they have built

up the appropriate goodwill. Passing off allegations sometimes include the defendant’s abuse of

a name, mark, or getup. On the other hand, passing off protects the goodwill of the claimant’s

business as a whole rather than particular aspects of the claimant’s firm. There is no hard and fast

rule for how long it takes to prove goodwill, but a firm that hasn’t done any business is unlikely

to be able to pursue a passing-off claim.

The goodwill of Saria’s firm must also be established in the UK before she can win a

passing-off lawsuit. Even while a physical presence in the UK isn’t a must, having clients in the

country may help create a company’s reputation. If more than one firm is engaged in making

products or services accessible to the public, it may not be evident who the owner of the

goodwill is, especially if the goods or services are passed off as their own. When engaging in

new connections, such as appointing a distributor, franchisee, or agent, it is essential to ensure

that the issue of ownership is addressed in the contract terms (Irvine v. Talksport Ltd, 2003).

Otherwise, the following questions may determine who owns what: Buying products or services

based on a known trader’s reputation? People’s perception of who’s accountable for the products

or services is critical here. When anything goes wrong, who is to blame? Who is ultimately

responsible for the quality and character of a product or service? What evidence does a specific

dealer have that they are the rightful owner of the goodwill?
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When a group of merchants uses the same mark to identify their products, the goodwill

associated with the logo is said to exist collectively. However, it is vital to accurately identify the

traders that fall into this category.

Misrepresentation

Suppose Saria can establish that the Aspiring Actors Association made a misleading or

deceptive ideology in their business and logo to be perceived as her business. In that case, she

will have a solid case to claim to pass off. It doesn’t matter whether the selection of the logo was

innocent if it has the effect of obscuring the source of the defendant’s services from the general

public. Furthermore, Aspiring Actors Association does not need to make the representation to

cause misunderstanding. To pass off, it is irrelevant whether or not an individual was unaware

the conduct in question was deceiving them.

The source of the products or services must also be a subject of the deception. Falsely

claiming that their products or services are those of the claimant is a common tactic used by

defendants in court. The defendant can make a direct statement to this effect or for this

misrepresentation to be inferred by the defendant’s use of the same or similar identifying marks

as the claimant’s. Passing off may also occur when a defendant illegally claims credit for

someone else’s products or services. However, this is a challenge to Saria since she teaches the

acting style originally Popov’s. Visual similarities between the two logos; the structure of the

marketplace and conditions in which services are provided; the habits of regular customers; and

the nature of the services offered may all contribute to the risk of confusion.

Passing-off claims will be more difficult for Saria if the claimant has used a generic term

to describe their products or services. Saria or anybody else cannot be blamed for the public’s
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association of the “Aspiring Actors Association” with Saria. Saria’s business and AAA’s

deception in commerce are good for her. As long as there is no relationship between the

claimant’s logo and the defendant’s, the public is less likely to be misled into believing there is

some connection between the two firms. According to the case, Saria has a basis for claiming

passing off since both organisations are concerned with the acting profession.

Damage to the claimant

Passing off claims requires that the claimant establish that the defendant’s deception has

harmed the claimant’s goodwill or reasonably foreseeable harm (Fenty v. Arcadia Group Brands

Ltd, 2015). The following are examples of possible damage:

 Damage to Saria’s business reputation due to the defendant’s deception led the public to

acquire their services instead of Saria’s services.

 Suppose the defendant (AAA) has a terrible reputation or provides subpar services

compared to Saria’s. This might harm Saria’s business by association.

 Suppose a claimant’s exclusivity may be eroded because consumers may no longer link a

mark with a specific firm because of a reduction, blurring, or erasure of goodwill.

Part B

Saria is an internationally renowned actress who utilises an unregistered oval emblem as

her trademark on her premises and in her advertising. Numerous firms in the United Kingdom

are thriving without the protection of a registered trademark. It might be because they believe
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their brand is too descriptive to be protected as a trademark, that the brand is still being

developed, or that trademark registration is just one more thing that the company hasn’t had time

to solve. While multiple companies may be tempted to use Passing Off as a defence, registering a

trademark is the better option in the long run due to the following reasons:

Immediate safeguarding of a company’s Intellectual Property

It does not matter whether the trademark has been used in the past or not, or whether or

not the trademark is registered since the owner will have instant legal protection over the

trademark. There is an initial five-year period in the UK when the trademark cannot be contested

because it has not been used. A Passing Off claim may be filed without registration of the logo,

but the brand owner must prove that their name or logo has been utilised in the UK and that the

firm has goodwill. On the other hand, Passing Off provides less protection for a firm than

registering a trademark.

Detection of possible conflicts

The appropriate Intellectual Property Office and any professional company that the

business owner engages in will search the trademark registry as part of the application procedure.

Trademark applications may identify existing trademarks, which may decrease the power of a

business’s brand or even lead to litigation if any of those owners oppose the application and use

the name or logo. As a result, the earliest stages of registering a trademark might aid in assessing

the advantages of utilising a certain title or emblem. While possibly re-branding at an early stage

may not seem tempting, re-branding is considerably simpler at the initial stages of starting a

company when the brand has less value (and limited expenditure on the name and logo). The
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alternative may be an expensive legal battle in the future and the risk of losing the use of the

organisation’s trademark.

Alerting others about a company’s legal options

Trademark registration makes a logo a part of the appropriate registry. There is a public

record of this, so a concerned party can see exactly when the company becomes entitled to use

the mark. Competitors may register a confusingly similar trademark to a business without its

knowledge since there is no comparable universal database for Passing Off. The appropriate

intellectual property office (or whoever is assigned to maintaining the register on your behalf)

will normally examine the records for any conflicting marks if you already have a registered

trademark.

Costs of Enforcement

One does not have to pay the expenses associated with registering a trademark if you

depend on Passing Off. However, suppose you are relying on the Passing Off to safeguard the

use of your name or logo (whether by acting in the courts to halt any interference or by opposing

an application for the registration of a rival’s mark in the appropriate trademark register). In that

case, you are likely to pay additional expenses. Referencing the relevant registry makes it simple

to establish the existence of trademark registration. For Saria to prove Passing Off without the

use of a trademark, a business needs to demonstrate the following three elements; the defendant

has misrepresented their products and services like yours, the misinformation is causing harm to

the previous firm, and damage to the firm mostly by diverting sales as a result of the

misrepresentation.
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Part C

Popov’s drawings in his book inspired the mask that appears within Saira’s oval emblem.

The question is whether Saira is accountable for copyright infringement because of this. The use

of a whole or significant portion of a work without the owner’s consent is a copyright

infringement, and none of the exceptions to copyright applies in this case. There are both good

and bad aspects to intellectual property rights for company owners, such as trademarks or

copyrights. Having your company logo copyrighted or trademarked ensures that no one else will

be able to use it (Cheng-Davies, 2006). It’s also possible to get into difficulty if your designs are

too similar in style to anything already out there because of logo copyright laws. A copyright is

automatically assigned to any intellectual property in the United Kingdom, including works of

writing, photography, and art; films, television shows, and music. This includes books, web

pages, music, paintings, photographs, maps, and periodicals.

Acts to protect intellectual property were enacted in 1998. As a result, new data, such as

computer programs and databases, and other rights associated with the information society have

been incorporated into the law (Kozinn, 2013). Copyright infringement occurs when you

download programmes, apps, and other computer software without obtaining the appropriate

licence. The right to any original content that one has developed does not need to be registered

under British law. As soon as a creative work is created, it is instantly protected by copyright and

does not need to be submitted to a copyright authority (Fenty v. Arcadia Group Brands Ltd,

2015). With the copyright sign, some individuals put their name and the year they made that

specific piece of work. This does not imply that content without the copyright sign may be used

without permission from the copyright holder.

Copyright law specifies that work may only be reproduced, distributed, rented, loaned,

shown in public, or performed by the copyright owner. Copyright infringement occurs when

content is used without permission from the copyright holder (Rahmatian, 2013). Even if it’s just

a single line or a lengthy document, the amount of copyrighted data taken doesn’t matter. The

quality and significance of the violation and the material’s inherent worth are more important

considerations for the law. The courts utilise a criterion known as “substantial similarity” to

determine whether or not someone has committed copyright infringement. But choosing whether

the two works are significantly similar is neither simple nor exact. Even if there isn’t a set

formula, the court may apply guidelines to get to a judgment.

How similar a new work is to a previous one may assist a judge in determining whether

usage is minor or merits more scrutiny. In most cases, the court would not consider the use of a

single line from a 300-page book to be significant. A four-line poem, for example, may be seen

as an example of a substantial quantity of copying if just one line is utilised (Rahmatian, 2013).

According to Lord Hoffmann: “Generally speaking, in cases of artistic copyright, the more

abstract and simpler the copied idea, the less likely it is to constitute a substantial part. In the

sense of the contribution of the author’s skill and labour, originality tends to lie in the detail with

which the basic idea is presented. Copyright law protects foxes better than hedgehogs.”

(Griffiths, 2013). The similarity component makes up the second portion of substantial

similarity. The creative composition, not simply the concept, must be identical. No facts,

procedures, substances, or other information may be copyrighted. An idea is a poem about spring

blossoms, and it’s not a very original one. However, the precise word choice, sequence,

punctuation, and even sentence length are distinct creative features of the original piece itself

(Cheng-Davies, 2006). For a court to determine whether the new work is sufficiently similar to
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the original that it was likely copied, it must compare them. A court is likely to reach the same

conclusion if the public is likely to mistake the new work with the original.

A legal concept known as “fair dealing” is utilised to determine whether the use of

copyrighted information is permitted. Defendants who claim fair dealing acknowledge they

utilised a copyrighted work for a legitimate purpose instead of those who claim substantial

similarity in denying any wrongdoing (Wiese, 2002). In this sense, fair dealing serves as a

defence. People may use a portion of an original work without permission or licence under the

fair dealing t, which is frequently used for educational reasons. Fair dealing is a question of fact,

degree, and impression; there is no formal definition. How would a fair-minded and honest

individual have handled the project? ‘

According to Sawkins v. Hyperion Records Ltd (2005), the following factors are crucial

in establishing whether or not a specific use of a work is a fair dealing: Is the market for the

original work affected by the use of the work? If a work is used as a replacement for the original

and the owner suffers a financial loss, the usage is not fair. Is the amount of time spent on the

project adequate and reasonable? Do you think it was necessary to spend all of the seized funds?

In most cases, you may only utilise a portion of a work. Depending on the situation’s specifics,

one aspect may be more important than another in determining the success of the transaction.

It’s not a defence at all but a standard used by courts to establish whether or not a claimed

new work genuinely duplicates another copyrighted work that was made before. To avoid being

found guilty of copyright infringement, one must avoid having a judge establish a strong

resemblance between the works. According to Rahmatian (2005), not all copyright violations are

clear-cut. Although a judgement of significant similarity is critical in demonstrating

infringement, the mechanism by which this criterion is determined is very subjective. Saria’s
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oval mask has committed a copyright infringement, but she may use fair dealing or significant

resemblance exceptions to justify her actions.

References

Cheng-Davies, T. S. (2006). Does copyright law confer a monopoly over unpreserved cows?.

European Intellectual Property Review.

Ciro, T. (2005). The scarcity of intellectual property. Journal of Information, Law & Technology,

10(1), 21.

Fenty v. Arcadia Group Brands Ltd, 2015 E.W.C.A. Civ 3 (2015).

George, A. (2005). The difficulty of defining ‘Property’. Oxford Journal of Legal Studies, 25(4),

793-813.

Griffiths, J. (2013). Dematerialization, pragmatism and the European copyright revolution.

Oxford Journal of Legal Studies, 33(4), 767-790.

Irvine v. Talksport Ltd, 2003 E.W.C.A. Civ 423 (2003).

Kozinn, A. (2013). Sony Issues Bob Dylan Recordings to Keep European Copyright. N.Y.

Times. Retrieved from https://www.nytimes.com/2013/01/08/arts/music/sony-issues-bob-

dylan-recordings-to-keep-european-copyright.html

Rahmatian, A. (2013). Originality in UK copyright law: The old “skill and labour” doctrine

under pressure. IIC-International Review of Intellectual Property and Competition Law,

44(1), 4-34.

Sawkins v. Hyperion Records Ltd, 2005 E.W.C.A. Civ 565 (2005). – copyright infrngement

Wiese, H. (2002). The justification of the copyright-system in the digital age. Tolley's

communications law, 7(2), 39-45.