Experienced Chartered Trade Mark Attorneys & Solicitors with real world IP knowledge

Author: Andrew Clay

Amazon is far and away the biggest UK retailer of non-food items, with a turnover for FY2021 of nearly £27bn, equating to sales in excess of £50,000 per minute. The volume of business conducted on some popular Amazon pages is measured in the tens or even hundreds of thousands of pounds per month.

For many UK traders in a wide variety of goods Amazon represents an absolutely essential route to market.

However Amazon has an IP infringement take down policy, which can lead to your products being removed from Amazon. So what do you if Amazon takes down your listing in response to a third party complaint of IP infringement? This article explains what your options are.

What is Amazon’s take down policy?

Amazon has an IP policy (available here), under which a proprietor of intellectual property rights such as copyrights, trade marks, patents, registered designs or rights in unregistered designs, can file IP infringement complaints with Amazon by using its Report Infringement Form (available here). The form requires the third party complainant to give details of, inter alia, the IP right allegedly infringed, the ASIN (Amazon Standard Identification Number) for each product or the URL of the Amazon page on which the offending item is being offered for sale.

Amazon will typically assess the IP infringement form within a few days of getting it. If it finds the complaint credible then it will remove the offending products from its website.  However not every IP infringement notification filed with Amazon will lead to an offending page being taken down.

What happens when Amazon delists your products?

The first that the Amazon trader typically knows about a third party infringement complaint made to Amazon is either that it sees that its products are no longer on the Amazon website or else it receives an email from Amazon informing it that some of its products have been removed and referring to the IP rights complained of, the relevant ASIN numbers of the products removed and the identity of the complainant.

The Amazon email gives the trader three options:-

(i)           Firstly the seller can provide Amazon with a letter of authorisation or licence agreement from the relevant manufacturer or rights owner, evidencing that the delisted products were being lawfully sold.

(ii)          Secondly if the trader thinks that it has never sold or listed the product, the subject of the complaint, then it is invited to contact Amazon.

(iii)         Thirdly if the trader thinks that the complaint is not well-founded, Amazon basically invites the trader to reach out to the complainant and ask for retraction of the notice. This is typically done by using Amazon’s Notice Retraction Form (available here). Amazon wisely in effect leaves it to the trader and the rights owner to sort out the dispute, which Amazon will know next to nothing about, between them.

If the complainant does retract the notice then Amazon will relist the products, usually within a few days of the Notice Retraction Form being filed.

What happens when the complainant won’t retract the notice?

If the complainant won’t retract the notice, then the delisted trader basically has two options to get its products relisted:-

1.           Offer Amazon an indemnity in respect of the infringement claim

A number of different concerns motivate Amazon’s take down policy. One of Amazon’s main concerns is to avoid liability in respect of infringing items sold on its platform. Once Amazon has been informed that an item sold on its platform infringes third party IP rights then it likely becomes liable for such infringements unless it promptly takes steps to remove the offending items from its website. However if Amazon is offered an indemnity in respect of such sales then it may relist the items: this was done successfully for example  by the defendant in Shenzhen Carku Technology Co., Ltd v The Noco Company [2022] EWHC 2034 (Pat). However it is unclear how often this will work in practice.

2.           Sue the Complainant

The UK Threats Legislation

UK IP legislation contains what are referred to as threats provisions. These provisions create in effect  a number of statutory torts, making it unlawful to make an unjustified threat against a third party, such as a distributor or retailer, to bring legal proceedings against them for infringement of a relevant IP right.  Making such an unjustified threat gives a person aggrieved by such threats a legal cause of action against the person making the threat. The threats provisions were introduced to stop traders fighting proxy wars against mere dealers in goods, who would be unlikely themselves to have enough skin in the game to make it worth their while to defend an infringement allegation and would thus just stop dealing in the goods the subject of a threat of legal proceedings. Such threats provisions exist for patents, registered trade marks, registered designs and UK unregistered design right but bizarrely not for copyright.

So what is the relevance of the threats legislation to Amazon Take Down Requests? A recent case (Shenzhen Carku Technology Co., Ltd v The Noco Company [2022] EWHC 2034 (Pat)) confirmed that submitting an IP infringement report to Amazon can amount to a threat of legal proceedings, which is thus actionable by the delisted trader if the assertion of infringement turns out to have been wrongly made.

So if you believe that your delisted products don’t in fact infringe third party IP rights or that those rights are invalid or don’t even exist then you can threaten to sue and/or actually sue the complainant for unjustified threats if the IP right asserted against your products is a patent, a registered trade mark, a registered design or UK unregistered design right.

Relief Available

The relief available in such a threats action would include (a) a declaration from the court that the threat was unjustified, (b) an injunction against the continuance of the threat and (c) damages in respect of any loss sustained you have suffered by virtue of the threat. The injunction against the continuation of the threat could take the form of a mandatory injunction compelling the complainant to file a retraction form with Amazon in agreed terms. However providing Amazon with a court order containing a declaration that the threat was unjustified would also likely lead to the offending products being relisted.

Given the scale of trade that takes place on popular Amazon listings, a damages claim against the entity filing the take down notice could be substantial, especially if the delisted trader was able to show that due to the absence of its product on Amazon for a long period, Amazon’s algorithms had relisted its product further down the list of search results generated in response to key search terms being entered by a user. In such a situation the delisted trader could claim not just for historical losses, during the period when they were delisted, but also for future losses and/or the additional costs incurred, which could include the costs of paying for sponsored ads to improve the listing position.

What about Copyright Infringement, Passing Off & Breach of Confidence

There are no statutory threats provisions for copyright infringement, passing off or breach of confidence. However a delisted trader could seek a declaration that such threats were unjustified, an injunction and damages on the basis of the torts of ether malicious/injurious falsehood, wrongful interference with a contract or tortious interference with a business relationship. An injunction against threats to bring copyright infringement proceedings was for example granted in Jaybeam Limited v Abru Aluminium Limited [1976] RPC 308 on the basis of such torts.

Should my business sue Amazon?

Suing Amazon in respect of the Amazon Take Down policy and the delisting is very unlikely to be a worthwhile route for a number of reasons.

Firstly, Amazon has very much deeper pockets than almost any trader and could be expected to vigorously defend any claim brought against it for delisting a seller’s products based on a third party claim of IP violation. Amazon’s standard seller terms and conditions also give it a right of no fault termination of its contract with any seller on 30 days’ notice. So falling out with Amazon is unlikely to be in a seller’s best interest.

Secondly, in relation to any contract claim, Amazon’s UK standard seller terms and conditions (here)   contain numerous provisions that would make such an action highly problematic.

Thirdly, it is also difficult to see how a tort claim could be framed against Amazon that would stand any real chance of success. In relation to a negligence claim, Amazon can’t, for example, be expected to forensically determine IP infringement and validity questions in the way that a court can, so that its delisting of products subject to a third party IP infringement complaint is unlikely to breach any duty of care it owes to its customers. Tortious interference type claims generally require an existing contract between the complainant and a third party (rather than the mere possibility of a future contract) that is interfered with. Malicious falsehood type claims require the defendant to publish false words to a third party, which is not something that Amazon do. Amazon’s standard seller terms and conditions would also greatly curtail the prospect of any such claim leading to a significant financial recovery.

Have you been subject to an Amazon Take Down or IP Infringement Claim?

If you have been subject to an Amazon take down or a third party IP infringement claim then do not hesitate to contact our Andrew Clay, who has over 34 years’ experience of IP infringement claims.

Author: Andrew Clay

So you have had an idea for a new product or process and want to commercialise it. Perhaps you have a prototype. You might even have gone into small scale production to test the market. The big issue for most SME’s in all these situations is how to scale up from where they are to where they want to get to. In other words how do you exploit your IP rights and best monetise what you have got?

The answer to that question for most SME’s is almost always going to involve seeking some form of help from third parties, be they your bank manager, a business angel, private equity, a sub-contract manufacturer or established player in the market. In this article, I explain five of the key effective IP exploitation routes and how to get started.

There is in reality a sixth exploitation route, which is to sue or threaten to sue infringers of your IP and extract money from them by way of damages or an account of profits. For the sake brevity, that route is not considered further in this article.

What is IP exploitation?

IP exploitation means making money, in consensual market transactions, either out of your IP rights themselves or alternatively out of the things that are protected by your IP rights. You might, for example sell a patented chair or you might license the patents covering the chair to a third party manufacturer.

Good housekeeping –  IP Protection

The first thing you should do before you exploit your IP rights is to make sure you have properly protected them. Some key ways to protect your IP rights are:

  • File a patent application to protect a new product or process.
  • File a registered design application to protect the appearance of a new product.
  • File a registered trade mark to protect the brand you propose to use to market the new product.

Copyright and unregistered design rights will often exist automatically in the things you have created, without the need for registration.

Next you will need a properly drafted confidentiality agreement (also called a non-disclosure agreement or NDA) so you can share your new product idea, plans and commercially sensitive information relating to them with relevant third parties. Such agreements will not prevent third parties misusing what is disclosed to them but their existence can make it much easier to frame a legal complaint for breach of confidence if they do so. An NDA is not only essential but also signals to third parties that you know what you are doing and will protect and defend your IP rights. Disclosing a new product to a third party, which has not been protected by a patent application and without an NDA, can leave the product developer in a very weak position.

With your IP rights protected, you can turn to the weighty question of how to get your product to market. There are at least five key routes to effective IP exploitation, each with its own advantages and disadvantages.These are briefly outlined below.

Route 1: Cash injection to build your own manufacturing facility and fund marketing/sales

This route can take numerous forms, from a simple bank loan, through to equity investment via a private raise or IPO.

Advantages: in theory you should have more control over your manufacturing, product launch, marketing and distribution processes than for some of the other routes.

Disadvantages: building manufacturing capacity, a market position and demand for a new product can be expensive and time consuming. Taking a new product to market often takes a lot longer than people anticipate, which can put added strain on already stretched finances. IPO’s represent expensive money, not just during the float but afterwards, complying with listing regulations. Many who IPO come to regret it. Equity investment via a private raise is also often expensive money: a large chunk of a company’s shares are given away early on when the company doesn’t have much value for what can seem, with the benefit of hindsight, not very much money.

Route 2: appoint a sub-contract manufacturer to make the product for you, which you or your distributors will then sell

Advantages: this route will often involve a lower upfront cost than inhouse manufacture and enables you to tap in to experienced manufacturing expertise and a purchasing network for component parts.

Disadvantages: there will often still be up some up front costs such as tooling and other specialised production machinery. Also you will still need to fund the stock you buy, which can seriously impact cash flow. It can be tempting for the subcontract manufacturer to make some extra product on the side and then sell it (for example on Alibaba) into the market to compete with you. This can be very expensive to stop if the subcontract manufacturer is based overseas, for example in China. Finally you are still left with the cost of building a market for the product and a distribution system.

Route 3: license your IP to a third party

Advantages: the licensee may have all the advantages of an established player in the market – a reputation, distribution network, financial strength and the manpower and other resources, which it would take you years to build up. The licensee will also often assume a lot of the financial risk of taking a new product to market. Thus, when it works out well, appointing a licensee can be a low cost way of gaining rapid and significant market access. Not surprisingly this is a very popular route.

Disadvantages: a bad licensing arrangement can be like a marriage gone sour – difficult and expensive to get out of, with plenty of scope for argument about numerous issues.  If it goes wrong the IP can be tied up for ages with little benefit or worse still a bad licensee can irreparably tarnish the IP. Finding a licensee for a new product can be very difficult and time-consuming. Often the licensee will be in a much stronger bargaining position than the SME licensor so the licensee has to consummate a licensing deal on less than ideal terms, with a party which has much greater financial clout if the parties do fall out.

Route 4:   Outright sale of the IP to a third party

This route is often favoured by biotech/pharma start-ups as the only really viable way to get their promising new drug or test onto the market, which can with clinical trials costs tens or even hundreds of millions of pounds.

Advantages: Potential for a quick cash out exit. Low risk if the cash comes up front. Often the key players in the technology developer will join the buyer’s business so as to assist with the further commercialisation of the new technology.

Disadvantage: Often the seller gets a relatively modest return in comparison to the upside that may be generated down the line. Purchasers will often be reluctant to pay all the cash upside upfront and will want to defer paying at least some of it until certain milestones are hit. Sometimes former entrepreneurs don’t adapt well to being mere” employees of the buyer.

Route 5: JV/partnering arrangements

These arrangements can take numerous bespoke forms. A common route is to set up a JV company with a shareholders agreement with a third party who can bring technical, financial or marketing expertise or resources into the JV.

Advantages: You will retain an ownership position and some degree of control in the exploitation vehicle, which is much better resourced and positioned to exploit the market opportunity. If set up properly the interests of the owners should be broadly aligned which discourages cheating.

Disadvantages: If the partners fall out they can be even more expensive and difficult to get out of than a licensing arrangement. Conflicts can arise if one of the business partners is a supplier or customer of the JV, whose commercial interests are not the same as the JV. Often conflicts arise when the parties’ exploitation plans meet reality, for example if much more money is required to fund the JV than had been expected.

Which IP Exploitation route is best for you?

There often isn’t a single right answer. There may be multiple options that will work well for you. It is often easier to say what routes won’t work or are too high risk to sensibly contemplate. For example, is granting a worldwide, ten year, exclusive licence to a competitor of yours, about whom you know in truth very little, with no minimum exploitation obligations really a good idea? Is disclosing all your non-patented, confidential process know-how to a giant Chinese manufacturing conglomerate worth the risk? Can your business’ likely growth trajectory really pay for all the costs of being listed on AIM?

We specialise in IP Exploitation advice

At Sonder & Clay we have vast experience of advising entrepreneurs and businesses about the different options. Often what will help you the most is having someone independent who will really challenge your assumptions and help you think through the consequences of your plans. If you would like an informal discussion with us then please do get in touch with me, Andrew Clay.

Sonder & Clay’s Andrew Clay is giving a licensing master class in London on 10 October. If you would like to attend please follow this link: Licensing IP Rights – Common Problems & Solutions

Author: Andrew Clay

Patents in the UK are one of the most important IP rights as they protect the investment made in developing new products and processes.

In this post we explain what patents are, how to get them and what rights they give you.

What is a patent?

A patent is a statutory monopoly, lasting for up to twenty years, granted in respect of a new product or process, which meets certain criteria. If your product or process is protected by a patent then only you (and businesses you license) can lawfully commercialise that product or process. If third parties import, make or sell the patented product or use the patented process then you can sue them and claim damages or an account of their profits and seek an injunction. Having a patent can protect your new product or process from competition and can thus allow you to have a bigger market share and/or charge more for your product or process.

What can be patented in the UK?

A valid patent can be obtained for a new product or process, which is not an obvious development over what was already known and which is capable of being applied industrially. Tens of millions of patents have been filed over the years worldwide, illustrating the enormous range of what can be protected. The range of things that can be patented is therefore very broad as illustrated by the following examples of patentable inventions:

  • an improved gearbox
  • a new polymer or other chemical entity
  • a class of chemicals to improve the way fuels perform in engines
  • a new arrangement of components in a floor cleaner
  • the use of a new drug to treat a particular illness
  • a device to hold taxi licences on windscreens
  • a new design of a memory bus or semiconducting material

What cannot be patented in the UK?                    

However not every invention can be patented: for example new ways of doing business, mathematical methods and software and most surgical techniques are not patentable. All patentable inventions must be new and not merely an obvious tweak over what was previously out there.

Newness (or novelty) is a very strict requirement for patented inventions: disclosing your invention before your file for patent protection to just one person, who is not bound by an obligation of confidentiality can invalidate your patent. The golden rule is therefore to file for your patent before you disclose your invention to any third party.

How do I get a patent in the UK?

To ensure you obtain a patent right in the UK it is advisable to consult with a good patent attorney to help navigate you through the process, which can be quite complicated.

In essence for the UK you, or your patent attorney, will file a written description of your invention at the UK’s Intellectual Property Office and then at some point you also file some claims. Claims are relatively short written descriptions of the invention. The wording of the claims is of critical importance to the patent owner as they define the ambit of the monopoly granted by the patent

Next, the patent office will check to see if the invention is really new and not obvious by comparing it with previously filed patents and sometimes other sources such as scientific journals: their results are provided to the owner of the patent application in a search report. The patent office will also provide their views on the invention’s patentability in an examination report. There is usually some back and forth between the patent office and the patent attorney, in which the patent attorney attempts to overcome any objections to the patentability of the invention raised by the IPO, often by amending the claims and/or the written description of the invention.

The patent process in the UK typically takes around two to three years but can be speeded up if there is urgency, for example because there is an infringer in the market who must be stopped. The patent application is typically published 18 months after being filed but that can also be speeded up.

How much does it cost to get a patent in the UK?

The cost of a patent depends on the nature of the invention and where you want to obtain patent protection. For example, obtaining patent protection in the UK will cost at least £5 to £10k for a fairly simple invention but typically its between £15k and £40k. Very complex high tech inventions can cost much more.

Worldwide patent protection often costs at least a £100k and is much higher for complex high tech inventions.

In addition to the costs of filing a patent and the professional fees of patent attorneys, annual renewal fees are also payable to keep the patent in force. For a patent in the UK  these are only payable once the patent has been granted and are payable annually from the fourth anniversary of the filing date of the application: they range from £70 (year 5) to £610 (year 20).

Who owns the patent rights in my invention?

Generally the inventor is the owner of the patent rights but if the inventor is employed then the employer will generally own the patent rights if the employee created the invention in the course of their employment, subject to certain exceptions.

Where a third party, such as a consultant, creates an invention pursuant to a commission then the ownership position will depend on the precise nature of the inventor’s commission: for that reason if you are engaging a consultant to assist on a technical project, where an invention might result, then the ownership of any patent rights should always be dealt with expressly in the contract with the consultant before they start work. The paying party will want to own the patent rights in any invention the third party might create.   Our IP Solicitors and Chartered Trade Mark Attorneys are accomplished in all types of issues relating to IP ownership or the rights to use IP rights.

How do I use my patent after it has been granted?

Patents are essentially negative rights: they allow you to stop others from commercialising your new product or process. You can use them in two basic ways: you can force others to leave the market or  you can charge them for being in the market.

  • Forcing third party infringers out of the market

If a third party uses your invention without your consent then you enforce the patent against them. Typically a letter before action is sent first and then if the matter cannot be settled a private civil enforcement action has to be started. Patent infringement actions can be very expensive to fight.

  • Charging third parties to be in the market

If third parties want to use your patented invention then you can alternatively grant them a licence to do so via an IP licensing agreement. Typically the licence is granted in exchange for a royalty, which varies with the scale of the licensee’s exploitation of the licensed patent. The licence should clearly define what rights the licensee has and on what the licensee has to pay royalties.

Can I claim Patent Box relief in the UK?

Another benefit of having a patent is that it can enable you to claim what is known as patent box relief. Patent box relief is a statutory deduction on your corporation tax calculation which reduces the effective rate of corporation tax on income derived from exploiting the patented invention (such as product sales or licence income) from 25% (the large company rate after March 2023) to just 10%.

How do I use patents owned by third parties?

If you use inventions protected by third parties without their consent then they may sue you, seek an injunction and damages or an account of your profits. It is generally possible to quantify this risk by getting what is called a freedom to operate search carried out by your patent attorney or specialist IP solicitor. However such searching and the analysis of third party patents that is required can be very expensive and often there can be significant uncertainties about the scope of third party patents, with the result that there remains some residual risk.

What Sonder & Clay can do for you?

Patents represent a very important tool to protect technical inventions. Sonder & Clay’s accomplished IP Solicitors will help you exploit and enforce your patents to maximise their value. Our team enjoy years of IP experience and will devise a licensing or exploitation strategy to help deliver a return on your research and development investment. We can also help you find a good patent attorney with the right technical expertise to help protect your new product or process. Learn more about our patents service and please get in touch to book a free consultation.

Author: Colleen Washington

Copyright in the UK reaches every aspect of life – the music you listen to on the way to work, the software on your computer or phone, the content and appearance of the apps you use, the newspaper you pick up for the train journey home, and the movie you watch in the evening!  It is likely that they are all protected by copyright, which is an incredibly wide-ranging and useful Intellectual Property Right. However, it is also very easy to overlook copyright and to end up on the wrong end of an allegation of copyright infringement.

In this article, I explain the key points you need to know about copyright in the UK and answer some frequently asked copyright questions from our clients at Sonder & Clay.

What is copyright?

Copyright is an important Intellectual Property Right in the UK and gives a range of exclusive rights to the creators of original works including literary, dramatic, musical and artistic works and also sound recordings, films, broadcasts and the typographical arrangement of published editions.  These rights are all set out in the Copyright, Designs and Patents Act 1988 and enable the copyright owner to control what happens to their copyright work and to prevent others taking unfair advantage of their hard work and expertise.   

Why is copyright so important?

Copyright protection is of great importance to many of Sonder & Clay’s clients and we often receive enquiries relating to copyright protection, particularly from clients in the Tech or IT sectors or in creative industries. Below are some of the key reasons why copyright\ is so important.

  • It is very wide-ranging

Copyright in the UK, protects a very wide range of original creative works, including written works like books and magazines, computer software and software apps, the appearance of webpages and graphical user interfaces, artistic works such as drawings, paintings, sculptures and ‘flat’ designs applied to wallpaper or fabrics, photographs, video clips and films, music and sound recordings, broadcasts…the list goes on. 

  • Copyright protection is automatic

Copyright subsists automatically in the UK, once a work is created and recorded in a permanent form, provided that certain qualifying criteria are met (which in practice they almost always are). There is no need for a copyright work to be registered in order to benefit from copyright protection. There are also long-standing international conventions which extend copyright protection for UK copyright works to most other commercially significant countries. 

  •  Copyright can have a lengthy duration

Copyright can also last a very long time, although the precise length of copyright protection depends on a number of factors, including the type of work. For example, in the case of literary, dramatic, musical or artistic works, copyright in the UK generally lasts from the date when the work was recorded and does not expire until 70 complete calendar years have passed from the end of the calendar year in which the author of the work died.  This means that many apps and other new software products (which are protected as literary works) will likely continue to enjoy copyright protection deep into the next century.    

  • Copyright gives the owner exclusive rights

The copyright owner has the exclusive right to do, and authorise others to do, certain acts in relation to their copyright work; these include (amongst other rights) the exclusive right to make copies the work, to issue copies of the work to the public and to put a protected work on to a website.  It is an infringement of copyright in the UK to do any of those acts without the authorisation of the copyright owner. Importing, possessing in the course of a business and selling items which you know or have reason to believe are infringing copies is also unlawful. There are some exceptions which apply in limited circumstances, but these don’t arise very often. Note also that certain acts that amount to copyright infringement can also give rise to criminal liability on the part of the infringer.

6 copyright FAQs

Copyright can be complex and every situation will raise different issues. Copyright is relevant to many ordinary and everyday business activities and here are a few of the questions that commonly arise.

1. I paid for a design agency to create an illustration for me. Do I own the copyright in the illustration?

Generally, the author of a copyright work is the first owner of the copyright in that work, subject to any contractual provisions to the contrary. 

This is why it is so important to enter into clear written contracts with third parties who create copyright works for you. Those written contracts with third parties, such as design agencies, marketing and PR consultants, and website developers, should contain express provisions that deal with ownership and use of the copyright (and any other intellectual property rights) in the work that they create for you. Typically, if you are asking a third party to create something original for you, you will want to own the copyright in that work, so you will want to ensure that the contract includes an assignment of the copyright (and any other intellectual property rights) in that work.

However, even if you did not enter into a written contract which deals with copyright ownership, all is not lost; in the absence of express contractual terms dealing with ownership, the law will usually imply terms that are necessary to give business efficacy to an agreement. However, this can result in a costly dispute about the precise scope of the rights that should be implied and it is always best to make the position clear in a written contract at the outset.

The position for employee creators is different; if an employee creates a literary, dramatic, musical or artistic work or a film in the course of their employment, the copyright in such works is generally owned by their employer, unless there is an agreement to the contrary.

2. I developed a website for a customer and I incorporated some of my pre-existing software into the development. What happens to my pre-existing software?

Computer software/code is protected as a copyright work in the UK. If you own pre-existing software, you should clearly deal with this in the development contract with your customer. You will want to ensure that you retain ownership of your pre-existing software/code, so that you can use it for other developments and customers.  You might also want to consider whether you can negotiate retaining some of the rights in the developed software, at least on a royalty-free licence basis, so that you are able to use parts of the code that you have developed for other clients in non-competing fields.

3. I am an employee and I have made a copyright work in my own time, outside work. Who owns the copyright in that work?

As mentioned above, if an employee creates a literary, dramatic, musical or artistic work or a film in the course of their employment, the copyright is generally owned by their employer, unless there is an agreement to the contrary. Disputes often arise about precisely what falls within the scope of an employee’s ‘course of employment’ and therefore whether something created by the employee belongs to the employer or the employee. As an employee, if you don’t have an agreement with your employer dealing with ownership of your independent project, make sure that your employment contract is clear about what your role is and what you are engaged to do for your employer and be careful to ensure that your independent project does not fall within the scope of those employment duties. Also, make sure that you work on your independent project wholly outside work hours and that you do not use work computers, work software licences or other work-related information or materials or opportunities that you are only aware of through your employment.  

4. Do I have to register my copyright work in the UK in order to have copyright protection?

No. Copyright subsists automatically once the work is recorded in a permanent form.

5. I only used part of someone else’s copyright work. Is that still an infringement of copyright?

Many people believe (wrongly) that they can avoid copyright infringement by copying just a part of someone else’s copyright work. In fact, copyright is infringed by doing a restricted act (such as copying) in relation to the whole or a substantial part of the copyright work. What amounts to a ‘substantial part’ of a copyright work is not determined by the quantity of the work taken, but rather by the quality of what is taken. What matters is the significance of the part that has been taken.  Each situation will be different, but there is a risk of copyright infringement, even if you take just a part of someone else’s copyright work. There is an old adage in copyright law: if it is worth copying it is worth protecting.

6. I found a photograph on the internet and I want to use it on my website. Does copyright in the UK protect material that the copyright owner has put onto the internet?

Yes. Just because material is posted or available on the internet, or is otherwise widely available, does not mean that it can be copied and used freely. The photograph is likely to be protected by copyright and should not be copied without authorisation.

We specialise in copyright law

Our accomplished Chartered Trade Mark Attorneys and IP Solicitors provide guidance on all aspects of copyright law to maximise commercial value and protect creative works against copyright infringement. With our guidance, you can ensure creative assets are adequately protected to prevent others from taking them, commercialise your copyright by licensing it and add tangible value within your business.

Read more about our Copyright services, meet our team or get in touch to book a free consultation with us.

©2024 Sonder & Clay IP Limited is regulated and authorised by the Intellectual Property Regulation Board (IPReg), Sonder & Clay Legal Limited is regulated and authorised by the Solicitors Regulation Authority (SRA No. 647576).