Episode 10: Litigating to protect your intellectual property rights

Synopsis

Part 10 of the 13-part Summit TV series on intellectual property (IP) looks at litigating to protect your intellectual property rights

Transcript

STEPHAN LAMPRECHT: This is the Intellectual Property show on Summit TV. We’ve already covered the need to secure the necessary rights to intellectual property, but how should these rights be protected to maintain a competitive advantage? Chris Job from Adams & Adams is an experienced litigator and he’s at the Summit TV studio to tell us more about this crucial aspect of IP management. Chris, I’ve gone through the whole process of creating new ideas and inventions - I’ve even spoken to someone to secure the necessary IP rights - is that enough?

CHRIS JOB: Definitely not. In the greater scheme of things I think it’s very important to just sit back and consider why you’ve done that - often spending quite a lot of money to achieve those registered rights. Of course let’s not forget the law does give quite a large extent of intellectual property rights without registration - one thinks of copyright for example, and also certain common law rights - so it’s not always a matter of expenditure. But certainly where one is spending money on registering patents, designs or trademarks I think it’s very important to step back and think about what the purpose is. I really see that in two ways. The first purpose if you like is a defensive purpose - it’s very useful to hold rights and to be able to indicate it’s a registered trademark or patent on the product, or in relation to the service. That will often act as a deterrent to would-be infringers. Another aspect of that would be in certain respects - particularly in trademark law for example, where if you’ve registered the trademark - the Trademarks Act allows you to use that as a shield against any allegations of infringement by you, in other words it will protect you against a threat of infringement. But on the more proactive or positive side of things the whole point is to register rights and obtain these rights so that you can enforce them. It’s a very sad fact - and maybe it’s just a comment on society in general, and the whole way that civilisations have developed - because there’s always copying that takes place where one idea leads to another, or a set of first ideas will lead in combination to an innovation…

STEPHAN LAMPRECHT: That’s the creative process…

CHRIS JOB: Exactly. The interesting aspect of this is where does the law draw the line between what can be copied and what can’t be copied? But one thing is certain - that copying will occur. Anybody who innovates - it doesn’t matter what field, it can be highly technical or aesthetic, it can be in the marketing context or any other field of endeavour - innovation is always going to be imitated.

STEPHAN LAMPRECHT: So for example I put up a wall around my house - then I don’t go and maintain this wall and check if there are branches giving access to people and so on - what happens if I’ve got these rights but I don’t enforce them? What is going to happen?

CHRIS JOB: That’s where the big danger comes in and I think in particular in the context of brands and trademarks - if one doesn’t enforce rights dilution starts to occur. By that I mean that if others start using branding elements - it doesn’t have to be a trademark or a word, it can be elements of the appearance of a product or innovation - and that can spread like wildfire as others get on the bandwagon, and you then get almost an exponential increment in the extent of the infringement. The first infringer encourages the second - the second then encourages the third, fourth and fifth so there’s a snowballing effect. Many of my clients and the firm’s clients take a zero tolerance attitude - they understand that even small acts of infringement need to be addressed because they can lead to bigger things, brand dilution and the eventual destruction of the intellectual property right.

STEPHAN LAMPRECHT: So if I think about it a company like Microsoft for example - and there’s lot of discussion currently with regard to the 2010 Soccer World Cup - these are brands where there’s been a lot of effort in terms of the promise made to customers, and now through pirating or counterfeiting there’s the destruction of the brand, value being taken away from the customer promise.

CHRIS JOB: There are two types of damage that occur. The “destruction” of the brand as you call it leads to two things - first you will just lose sales. In any field if you think about selling - whether that’s clothing or footwear, any type of product - if imitation takes place it’s obvious you’re going to lose sales to the infringers. That’s a direct loss in your pocket. The other and far more insidious consequence of infringement is brand dilution - that’s the destruction of the intellectual property itself, the commercial asset that the intellectual property represents becomes undermined and can become valueless.

STEPHAN LAMPRECHT: I can imagine a large company - I mentioned Microsoft, but there’s own companies Sasol and De Beers - they’ve got deep pockets to do this kind of litigation and enforcement. Say for example I’m in the music industry - I’m an artist - how can I make use of these kinds of measures to see my own value protected?

CHRIS JOB: A difficult question obviously. That’s a much larger question than intellectual property and enforcing it because access to the courts is a very topical subject in South Africa today - and a very important one. A lot of people just because of the cost of litigation are excluded from the process. Despite that I think if you’re an innovator or a smaller business for example there are pre-emptive things that you can do. I think you should take advice - even if you don’t spend money on registering your rights or litigating. You should at least know where you stand - and you should learn to recognise these forms of infringement. I think there are things that you can do yourself - you can write letters, you can try and address the infringement issue - although this is not an easy thing to do, and it is best done with professional advice and assistance. But it can be done - I have clients who tend to represent themselves and at least take the first step. An interesting statistic from my firm’s practice - and I have no hard figures on this - but of every 100 cases that we commence or “files we open” about 95% get resolved where 5% will actually become litigious at the end of the day. So one can head off the infringer “at the pass” as it were by trying to nip it in the bud. There is a pro bono policy and practice - one can approach the Law Society if one genuinely is indigent, or doesn’t have the means to litigate. There is an ethical duty on attorneys to assist people who are unable to afford litigation - and certainly my firm and all the other attorney firms are on that programme as it were. So it is possible - one would have to approach the Law Society…

STEPHAN LAMPRECHT: Let’s go to the other side. I’m doing business and suddenly I get a threatening letter claiming that I am infringing - what should I do? In the South African instance - and I’m a small business - how should I respond to that?

CHRIS JOB: I think just look before you leap is my best advice - think about it, and preferably take legal advice. I must say of the statistics I mentioned - of the cases that one commences - in so many cases the proceedings should never have been instituted. It’s often a clear case of infringement of the intellectual property right - there is sometimes a bit of an attitude out there that it’s unfair interference, the Constitution is often brought into a defence strategy or argument - but in point of fact very often it’s ignorance that leads people into deep pocket litigation when it shouldn’t.

STEPHAN LAMPRECHT: So in planning your IP strategy don’t only count the cost and effort of securing the appropriate intellectual property rights - forward plan your ability to enforce and protect those rights.