#ip2life Bringing Intellectual Property to Life
Anna Brewin from Amanya IP and Amanya Design is joined by guests to talk about Intellectual Property (IP) in everyday life. IP can be a boring subject until it becomes personal. Anna is joined by her guests to talk about IP in areas of creativity, business and entrepreneurship, hearing from legal professionals as well as hearing people's stories that involve IP. #ip2life
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#ip2life Bringing Intellectual Property to Life
#ip2life IP Horror Stories & Best Practice Part 1
Welcome to the show where we bring Intellectual Property to life!
This show is about making intellectual property relevant and understandable in everyday life.
In the first show, I, Anna Brewin, from Amanya IP and Amanya Design am joined by a solicitor, Jiri Svorc, where we talk about best practice in IP and he shares some horror stories where things have gone terribly wrong…
www.amanyaipcourses.com
0:00: About the show
1:04: Show excerpt
1:40: Intro about Jiri, getting to know him and his journey into IP
7:26: What is IP - Anna’s take
8:26: What is IP - Jiri’s perspective
9:13: How IP is valuable and a huge part of what businesses pay out for
11:50: Why IP is important
12:55: IP - money and control
14:13: Digital assets & keeping your house in order
15:33: Creation and ownership aren’t always the same
17:20: Introduction to the hotel example
17:43: Trademarking basics
18:18: IP and geography
19:46: Hear about a hotel being challenged by a bigger hotel chain
21:50: Understanding IP in different countries
25:27: Jiri’s top takeaway from the show
Where you can find out more:
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To get in touch with Jiri Svorc
IP Solicitor, SRA Regulated
https://jiri.legal/
Do you want to know more about IP? Check out www.amanyaipcourses.com where you'll be able to discover more about how to become #ipsmart. All the content is checked by legal professionals, but written in everyday language.
Anna's journey in IP started through her protecting her own work as a designer and has grown into her helping adults, young people, students, designers, artists, business owners and entrepreneurs to become IP smart to enable them to protect their dreams.
Welcome to bringing IP to life. I'm Anna from Amanya IP and Amanya Design, and I'm joined by my guests to talk about IP. We're going to hear people's stories of their creativity, business, and entrepreneurship. Intellectual property can be a really dull subject, until it becomes personal. This is aimed to help see the relevance of IP in everyday life. Welcome to the show. Hello everyone. I'm Anna. Welcome to our brand new show, bringing intellectual property to life. I'm so happy that you're joining me. And today I'm joined by my guest, Jiri Svorc. Have I pronounced that right?
Jiri:Yes, you have. Well done.
Anna:Great. Today we're going to talk about intellectual property, and it affects you every day in your business, your creativity, your relationships, and your income. So I'm very glad you're here, Jiri, because you're going to benefit from what he has to share. And in future episodes, you'll learn stuff, so stay tuned. And here's a little snippet of our conversation today, as we're going to be learning all about IP and what things are best practice and some stories about when things go terribly wrong. So listen away.
Jiri:When advising clients, my approach would be to look at 1) money and 2) control, i. e. are you able to stay in control of your IP? Or B, are you making sure that you're getting paid for allowing someone else to use your IP?
Anna:So let me introduce Jiri to you. He's a solicitor, he's fully kosher, and he's authorized and regulated to practice in England and Wales. And he's part of the Solicitors Regulation Authority, and he provides quality advice on IP, tech, commercial contracts, and privacy law. If you want to know more about him, head over to the show notes. He's an absolute superstar, and I'm really glad he's joined with us on the show. So welcome Jiri.
Jiri:Hi Anna. Hi everyone. Thanks very much for the lovely intro, very happy to be here and yeah, looking forward to our talk.
Anna:Great, great. So, Jiri, let people get to know you a little bit. How did you end up in the area of IP? Tell our viewers or our listeners a little bit about that.
Jiri:Yeah, so, to begin with, I always had a great interest in the arts and in creative arts. I mean, when I was a kid, I used to play the piano, and I was also a member of a drama club, back here in Prague, where I currently live and where I'm currently based and where I currently run my solo practice from. When growing up, I went to the English college in Prague, which is essentially an international high school in Prague, quite a prestigious one. And it soon became natural for me to go on and study in the UK, which I did. I applied and got into the, University of Exeter to study law and in my final year, I took a module on IP law. I really enjoyed it. And given my interest in IP law, I even wrote a dissertation on harmonization of copyright rules around the world. I then went on to study post grad at Queen Mary London. This was a master's degree that specialized in IP law. We looked at the subject of IP law from various angles and how IP law applies in various fields. So we discussed, for example, copyright in much more detail, or, we focused on how IP law operates in the area of creative industries, as well as in the digital space or in the world of e commerce. Having done that, it was then time to apply my knowledge in practice. So I moved back to Prague, I joined a big local law firm as a trademark specialist. And I stayed with that firm just over two years over which I learned a tremendous lot about the field of IP from a practical perspective. Then I was offered a place on the European Commission's Blue book Traineeship program in Brussels, which I was glad to accept, and I soon joined DG Connect, which stands for Director General for Communications, Networks, Content and Technology, which in very broad terms is the Commission's Department for Technology. And as you know, technology and IP are kind of quite close to each other. They are very interlinked. And it was in Brussels where I met my future employer, which was a specialist law firm that operates in Amsterdam, the firm focuses on tech and participates in, and leads a number of research and innovation projects for the European Commission in Brussels. And it was in Amsterdam where I fully appreciated where I was and the in-depth knowledge that I had about the fields of technology and IP law and privacy, so I decided to qualify as a legal professional, which given my background meant that I essentially had to move back to England, which I did. So I moved to London, did my legal practice course, which is a prerequisite if you want to become a solicitor, or was back in the day when I was qualifying or trying to qualify. I completed the training with a specialist law firm in Marlow. And then I finally qualified as a solicitor in 22. Now, shortly after qualifying, I decided to set up my solo practice, which was essentially the following year, because I felt that I know my stuff, I have something to offer to clients, whether it's my expertise, the ability to see things from the international perspective, or simply my network. And that's pretty much where I am now. So I currently operate as a freelance solicitor, I specialize and advise clients on matters, related to IP, technology, contracts, and personal data protection.
Anna:Wow. That's a lot. Thank you, Jiri. So Jiri you checked my courses and offered some really practical insights as you did that. And I've really been glad to get you on the show, so my listeners can benefit from your experience as well. You were so helpful in responding to my queries, and I know the listeners are going to get so much value out of you today. So as this is the first show, we're going to start from scratch and find out what the basics of IP actually is: intellectual property, IP, that's what we would term it as. So in a minute, I'm going to ask Jiri to explain from his perspective, about the IP and how it all works. Before we do that, I'm going to share my version of what IP is and what I think it looks like. Not sure what Intellectual Property is? Let's find out. The World Intellectual Property Organization, or WIPO, states about IP as follows: intellectual property refers to creations of the mind, such as inventions, literary and artistic works, designs, and symbols, names, and images used in commerce. Different types of intellectual property include copyright, trade secrets, registered designs, trademarks, patents or patents, moral rights and community designs. Intellectual property impacts lots of different things, including ideas and inspiration, using other people's work, copying and infringement, commissions, selling and income, reputation, branding and licensing, and freelancing. So it has a wide ranging impact. So Jiri, could you start by telling us your take on IP from the legal perspective, please?
Jiri:Yeah, so a couple of points here: to begin with, I think that it's important that we recognize that IP is a very, very wide field. I mean, today we'll be speaking mostly about formal IP, meaning copyright, designs, trademarks, or patents. However, equally as important and very often neglected is informal IP, such as trade secrets, goodwill, and companies or businesses reputation. So that's the first point, IP, huge subject. My second point here is that IP is immensely important and valuable. And businesses are aware of that. I mean, when preparing for our talk today, I came across a study that was published by the UK Intellectual Property Office back in 2014. And unfortunately I haven't been able to find a more recent version of that study. But if any of your listeners or viewers comes across it, please do let me know. Anyway, the study found that UK companies investments in intangible assets amounted to almost 130 billion pounds in 2011. Compared with their investments in tangible assets, amounting to just under 90, billion pounds. Now of those 130 billion pounds, it is estimated that half of it is invested in formal IP. So roughly 65 billion pounds invested by UK businesses in their patents, trademarks, and designs back in 2011. In other words, on IP companies were spending some 70, 75 percent of what they were spending on tangible assets, such as their offices, warehouses, or machinery. I think these figures are very, very significant.
Anna:Are you saying that they were spending 75 percent of that on the IP?
Jiri:That's correct. So they were spent on IP, on IP, they were spending almost as, as much as on their tangible assets, as on their machinery and warehouses and anything you can basically touch. I also came across another statistic and that's from that takes it from, from another angle. And this statistic was, published by the US Intellectual Property Office, and this was carried out back in 2018, so it's a bit more recent, and it shows that sales of counterfeit and pirated goods amounted to between 1. 7 and 4. 5 trillion US dollars, every year, so again, some very significant figures, demonstrating that IP has immense, immense value for businesses. And as I say, most businesses and multi-national corporations are very aware of that. So back to your question, what's my take on IP? I think that there are basically two ways of looking at IP: first of all, there is the doctrinal or the philosophical view, which sees IP as a concept that rewards inventors and creators for their efforts. Okay. Some, some traditional IP academics and writers would often speak about the concept of rewarding creators for the fruits of their labor. Yes. I often see IP from a more practical angle, if you will. I refer to it as a framework which allows you as the creator, to stay in control of the results of your creativity and offers you some monetary reward for it, should you wish to exploit it. Now, this may be either in the form of licensing fees or proceeds of sale. So when advising clients. My approach would be to look at 1) money and 2) control, i. e., are you able to stay in control of your IP or B, are you making sure that you're getting paid for allowing someone else to use your IP? I've got two examples to illustrate these points: in the very early stages of my career, I was involved in advising a global manufacturer and retailer of plastic clogs, now the company came up with the design of their footwear and they registered certain designs for virtually all of their main product lines. This in turn allowed the company to prevent others from making and selling footwear similar to their registered designs. And as a result, they were able to enjoy exclusivity and stay in control of their designs on the market. So this illustrates how IP can help you stay in control of your assets. Yes. My other example, is the following. I was recently involved or recently I advised a client who is a publisher on Kindle Direct Publishing, which is essentially Amazon's online self publishing platform, where the client had published tens of titles. Now, if you're a digital publisher, then the vast majority of assets you have will be IP. They will be either copyright works, they will be your trademarks, your branding, your goodwill associated with your business, the domain names, and so on. Now, this client was very aware of the importance of IP and hence from very early days, they were diligent in keeping proper records of their IP, making sure that their house was in proper order. So when the client then decided to sell their assets to another publisher, which is where I stepped in and where I got involved, they were able to easily produce lists of the relevant IP and attach a price tag to it. So this illustrates how taking care of your IP can help you monetize it efficiently.
Anna:Yes, that's it. That's it. Just cause you create it doesn't mean necessarily that you utilize it in the best way to make the money from it.
Jiri:Absolutely. Correct. Yeah. Yes. So again, when I advise clients, it's always money and control, that I'm advising them to look for. And not just in IP law, I mean, it can be, can be other laws. It can be contract law. Contract law is a very good example for that. You're always looking for you either get money or control or preferably both.
Anna:Yeah. And it's quite something that a lot of people don't realize is depending on how you do the work depends on whether actually as the creator, whether you own it or not, because if you're employed by somebody, the ownership of the creative work is owned by the employer, isn't it? And that's not always known by people they think of just because I'm the designer, or I'm the creator of it, it belongs to me and that's not always the case.
Jiri:Yeah, I think this is, this is a topic that, that we actually tackled when, when reviewing your course material and I don't want to be giving too much away, but there is a distinction to be drawn between an employer employee relationship and, a relationship where you were essentially just a contractor and you produce some, IP asset, in the course of you acting as a contractor for your client.
Anna:Yeah, that's right, that's right. So it does bring up lots of interesting questions. Thank you, Jiri. So Jiri, tell us another example of something that you've found in your working life that, the listeners or the viewers who would like to hear about another example of IP in real life.
Jiri:Sure, so back in the early days of my career, back when I was working as a trademark expert or trademark specialist with this big law firm in Prague, I participated in advising a client who operated a hotel in central Prague, which back then they had freshly rebranded. Now, this was a trademark dispute, so I do need to give you some trademark basics background free of charge. When you register a trademark, you register it for specific goods and services. Now there is an international classification system for this, which allows you to classify your goods and services into one or more of 34 categories of goods and, or 11 categories of services. Also you register a mark or your mark for a specific jurisdiction. Now, as a result, if your mark is registered, you enjoy exclusivity for that mark, for those services or goods and services, and in that jurisdiction.
Anna:So explain to people what jurisdiction is, because they may not know.
Jiri:Jurisdiction is just a geography, it's also a country, but sometimes, what happens is that certain geographic regions share the same regulations or rules when it comes to protecting and enforcing trademarks, which is the case, for example, in the EU, where we have such a thing as the European Union trademark, which is actually, which, which you can file in one country, but it's effective, in the whole region, in the whole of EU in all of the EU. So that's in very, very simple terms. If there are any legal professionals, they will definitely be able to shed some more light on this, but that's essentially what it means. So back to my example: so when you register a trademark, this means that you can prevent others from using your trademark for the goods and services and for the jurisdiction that you registered them from, or you can prevent others from using the mark in relation to the goods and services within that specific region. This is very important for the case, which I'm about to tell you about. Back to the hotel as part of this rebranding process, the client decided to register a trademark for the new hotel name, essentially for their new brand. Now, what happened is that shortly after they filed the trademark application with the local IPO, the application was... intellectual Property Office, do you mean? Yeah, sorry. Yes, the local Intellectual Property Office. So shortly after they filed the application with the Czech Intellectual Property Office, the application was formally opposed, by a third, by a third party. Okay. And they received a formal letter before action from an owner of an earlier trademark. Now this was a US hotel company, who had an early trademark covering the mark, which they had registered for in relation to the services and the jurisdiction where the client was applying for the protection.
Anna:Ouch. So there's a clash.
Jiri:It is indeed.
Anna:Oh gosh, gosh, well before we hear any more about this, we're just going to have a pause for a second and going to tell you a little something for you to look at if you want to know more about IP. Just take a look at this. If you'd like to know more about intellectual property or IP, check out the Amanya IP website at www. amanyaipcourses. com. Courses vary from general basic understanding about IP for adults, young people and students, through to professional courses and courses for the USA market. The courses are aimed to help young people, students, designers, artists, business owners, and entrepreneurs become IP smart to enable them to protect their dreams. Jiri I think at this point, we just need to clarify for people, before we get to the cliffhanger, the understanding that IP is actually a global thing, isn't it? It's not just one country or another country, it is actually a global entity, IP, isn't it? It's not always the same in every country...
Jiri:Yes and no. So IP is, I would say IP is quite a mature system of protecting one's intellectual assets or one's fruits of intellectual labour, in that, there are quite a few international conventions, which are aimed at harmonizing, the rules relating to various IP assets, be it copyright, be it trademarks or patents. So the rules, around trademark protection or copyright are, or tend to be harmonized across, various different countries, various different regions. That's not to say that they are the same everywhere. That's not to say that when you know the copyright or trademark basics and how copyright and trademarks or other IP operates in England, you can rely on this when protecting your IP in the States, for example, that's not the case. So when you seek protection for your intellectual property assets, you should always consult a local IP specialist, be it trademark attorney or a legal professional to advise you on what the options or on what the best form of protection for that specific region would be in your particular case.
Anna:Yes, definitely. I found that out when I was doing a comparison of trademarking in the UK and trademarking in America. And, they're not the same. So let's get back to the story, Jiri. So, the one about the hotel in Prague. So tell us what happened next.
Jiri:We were asked to advise the client who was essentially accused of infringing someone else's trademark. So what we did, first of all, we conducted a trademark search, which essentially revealed that the claim of the U. S. hotel company was legitimate, which wasn't good news for the client, so we then tried to negotiate with the U. S. hotel company, some sort of a coexistence deal, some sort of a coexistence arrangement whereby the client would be permitted or would be allowed to use their new branding in Prague since the US hotel wasn't really active in the region. But nonetheless, they still had their valid, properly registered trademark, which was, which actually covered the whole of EU. So they had every right to oppose the client's trademark application. In the end, the client had to go through the pain of rebranding the hotel, which obviously meant significant costs.
Anna:So in the midst of all of that Jiri, you know, with that conversation with the hotel and trying to sort out something amicably that didn't go the way you'd hoped, what can the listeners and the viewers take away from this example that they can remember?
Jiri:I think from my perspective, the, the lesson to be learned here is very simple. It's just, you know, do your research properly. It's going to be costly, but it's definitely worth doing it at the start, rather than having to retro fit everything.
Anna:Because if this hotel had found this competitor, although they were an American company, if they'd found them and seen that they were doing something almost the same as what they were doing, they would have probably chosen a different name at the beginning is that right?
Jiri:Exactly. It just shows that the trademark search that the client had done at the very beginning before they engaged us, had they done it properly, they would have most likely come across or stumbled upon the existing earlier trademark registration, which, you know, should be a huge red flag and should kind of encourage you to look for another name, for another brand.
Anna:Yeah, because we understand that, you know, in IP, if it's something totally different, and the name is the same, it might not be a problem, but obviously it was two hotel chains, wasn't it?
Jiri:Yes, it was. They literally applied for the same class of services. So as this was the case, their trademark application was literally just, copy paste of what was already on the register.
Anna:Yeah. Which if they found out beforehand, that would have saved them a lot of time and money.
Jiri:Exactly. So always make sure you do your research properly.
Anna:Yeah. Thank you, Jiri. Thank you. So Jiri's sharing so many gems here, we're going to hear from Jiri in the next show, so we can split this between two. Top takeaway from Jiri, I'm going to ask you, what's your best piece of advice relating to IP that you would give to listeners, before you go as a takeaway from today?
Jiri:The top tip, if you're a creator, a designer or a business owner, and you're about to use some intellectual property, which you've taken from elsewhere, or if you're about to start using a trademark, which is similar to someone else's mark, make sure you do your research properly and get the relevant permissions before you start using the relevant mark or the content there's a fair chance that you know the mark, the brand, the content you're about to start using is protected by copyright or by some registered rights of someone else. Now, if you're an IP owner, make sure you document your IP so you have your house in order and so that you can enforce your IP efficiently if need be. And of course, you may find yourself in both positions or in either of those positions at different stages of your business cycle. But I think these are some elementary pieces of advice that I can give you at this stage.
Anna:Great. Thank you, Jiri I think people skip on this part sometimes and think it's not going to be a big deal, but like you say, it can have big repercussions further down the line if it's not done when it's necessary. So thank you very much for joining us today, Jiri, and we're going to hear more from you for next time. So, until next time. As for you, my lovely listeners, we've reached the end of today's show. And so make sure that you follow and subscribe so that you don't miss the next one. Like if you've enjoyed this show and you want to hear more. And give me feedback if there's things you'd like me to do differently. So that's it from today. If you have any questions, please don't hesitate to get in touch, and I'm always happy to hear from you. And have a great rest of your day, and I'll see you next time. Thanks for joining us on the show. Like, follow, and subscribe to make sure you hear about what's coming up next. You can head over to the website www. amanyaipcourses. com to find out more. See you again soon.
