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Artists today are more aware of rights in their creative works — whether they themselves want to commercialise those rights or prevent their commercialisation. Regardless of the category you fall into, the following are some of the key insights crucial to any venture aimed at the commercialisation of artistic works.
- Trade Mark: A trade mark will protect the brand under which an artistic work may be offered to the public. Trade marks, once registered, give the owner the exclusive right to use such mark in relation to the goods and/or services for which it is registered. This ensures that no one else can sell similar products under your name or a name that is confusingly similar to yours. Therefore, if the mark is registered for, say, “lamps” then only the owner of that mark can use it for lamps and can stop anyone else from using an identical or similar mark for identical or closely related/allied goods and/or services. Further, a trade mark right is territorial in nature, thus if you register a trade mark in the UK, your rights will be limited to the UK for most purposes, unless registered in other territories. Once an application to register a mark is filed in the UK, you will have 6 months to register the same mark in countries that are a part of the Paris Convention while claiming priority from the date of first filing in the UK.
- Before filing a trade mark application, you should conduct an availability search. This will help let you know whether anyone has already applied for or registered a similar mark.
- Once the search comes clear, you should look at filing trade mark applications in the countries in which you sell or intend to sell your works. It is important to bear in mind that a registration obtained on the basis of an intention to sell can come under the microscope once it has been registered for 5 years. A registration that is older than 5 years (from the date of grant of registration) is vulnerable to a non-use cancellation action if it hasn’t been put to use in those 5 years.
- if filing in countries in addition to the UK, you should check with counsel regarding differing rules regarding registering and clearing Trade marks.
- Copyright: An artistic work will automatically be copyright protected — you don’t need to specifically register it — so long as you maintain evidence of its creation. The creator of the copyright protected work is always the first owner unless the work has been created under a term of employment or is a commissioned work. However, there are advantages to registering your artistic work for copyrights that you should discuss with counsel.
- Design right: A registered design right is applicable to the look/ appearance, physical shape, configuration (that is, the manner in which different parts of a design are arranged together) and decoration of an object.
The shape of an object may automatically be protected in the UK as a registered design (for 10 years after it was first sold or 15 years after it was created — whichever is earlier) but to register a design certain criteria must be satisfied, such as newness of the design, whether its character is non-offensive; whether it is the registrant’s own creation, and whether it is non-inventive and non-functional.
A design registration will effectively allow you to stop anyone from copying the registered design and making, for example, bulk reproductions. You can file one application for a series of designs.
“True art is characterized by an irresistible urge in the creative artist.”– Albert Einstein
- Patents: If you believe that the process you have devised to make the artistic work meets the following conditions, then you should consider applying for a process patent:
- the process should be novel;
- the process should involve an inventive step that you have created that did not exist earlier; and
- the process should have industrial applicability.
A patent, when granted, will grant you the exclusive right to use the process. After that, however, the process would be in the public domain and be available to anyone to use — but you would have had years of exclusivity.
Patent filing can be of the best investments that a company can make and so you should consider the conditions carefully before you decide to apply for a patent as well as consider consulting with counsel.
In some circumstances, treating a process as a trade secret is more relevant commercially than registering it as a patent (and thereby opening it to the public domain).
- Non-Disclosure Agreements: As discussed, whenever you reveal your artwork to a third party, please ensure that they sign a Non-Disclosure Agreement (“NDA”). Some companies may not be inclined to do so, but we can help you draft a simple NDA that may be more palatable.
- Standard Terms & Conditions (T&Cs): Since you will be selling the artistic works (either designed yourself or commissioned by buyers), you should have strict T&Cs that apply every time you take an order from a buyer. This will enable you to preserve your copy right protections whilst preventing the buyer from impermissibly duplicating the works.