When we draft contracts, we are often asked to “make sure that we own the intellectual property (IP)” or “please protect our intellectual property“. It can be hard to identify exactly what the intellectual property is. As we now live in a word of convergence, it is becoming more and more necessary to identify exactly what the “IP” comprises and be able to identify the different ‘ingredients‘ of the cake, and who owns each ‘ingredient’ as well as the metaphorical ‘cake’ itself.
IP stands for “Intellectual Property”
What is Intellectual Property?
This is a right in our law that enables a person or company to prevent others from conduct which would give them an unfair trade advantage. IP is divided into a number of different categories, the more important ones are the following. To aid your reading we can provide you with an Intellectual Property Grid, which sets out the key points of IP.
A single product can often be the subject of a number of different forms of protection. For example, with a computer, each of the following features can be protected as IP:
- patents for the hardware,
- registered designs for the shape of the casing,
- trademarks; and
- copyright in respect of the software and manuals.
Copyright: the right to stop copying
Copyright in South Africa is conferred and regulated by the Copyright Act, 98 of 1978. Unlike trademarks or patents, copyright does need to be registered. Where it exists, it does so automatically. Broadly speaking, copyright is the right given to the owner of a copyrighted work not to have that work copied (reproduced) without authorisation. The types of works covered by copyright are literary works (e.g. articles, reports, tables and other content), computer programs (software), artistic works (e.g. drawings, photographs, etc.) and musical works. For copyright to exist, the work must be:
- in a material form,
- produced by a South African or in South Africa, and
- be of a certain morally accepted nature.
A trade mark is essentially a means of identifying a product, whether goods or services. It is often a brand name, but it can be any sign capable of being represented graphically, including a picture, colour, shape, pattern, or any combination of these. Trademarks are protected by common law and by statute. The relevant legislation is the Trademarks Act, 194 of 1993. The Trademarks Act defines the function of a trademark as distinguishing one person’s goods (or services) from those of another. It follows that trademarks are registered for certain goods or categories of goods or services.
In the offline world, your trademark represents your identity in the marketplace, making you and your products recognizable to your customers. In the online world of the Internet, domain names have come to fulfil the same role as a trademark as your presence on the Internet starts with your domain name. Importantly, when attempting to reach a company on the Internet, the domain name is often the first component of any search. It is accordingly of vital importance that the domain name reflects the company’s full corporate or some or all of its product names, or at least a recognizable part thereof. Generally, domain names are registered on a first come, first serve basis by various regional entities that have been allocated the responsibility of domain name registration.
A patent is a monopoly or an exclusive right granted for a specific period of time by the State to an inventor in exchange for a full disclosure of the invention to the public. This monopoly entitles the inventor to prevent others from using the invention within a defined territory (e.g. South Africa). After expiry of the period, members of the public are free to use the invention. In order to be patentable, a device, method or process must fulfil three basic requirements. It must be:
- novel (new),
- of practical use (useful on a practical level), and
- inventive (it must not be so similar to what is already available that it required little or no ingenuity to make the invention).
The visual appearance of an article as judged by the human eye can be protected by a form of registered design (e.g. a computer casing). It is a monopoly granted by the State to the owner of a design for a specific period of time in exchange for disclosure of the design to the public for their use. A registered design relates to the shape or appearance of an article. Thus an application to register a design is based on drawings, photographs or other pictures which clearly illustrate the shape or appearance of the article.
Trade secrets include things like confidential business information, business secrets, client lists, future business plans, know-how, residuals, expertise and other strategic or valuable business information subject to limited disclosure. It must:
- be secret and not publicly known, and
- have commercial or competitive value.