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Archive for September, 2011|Monthly archive page

The International Landscape: A Broad View on Intellectual Property Protection

In Social Media on September 2011 at 10:08 pm

Despite the harmonization of intellectual property law and policy seen in the numerous international treaties between countries, there is no single copyright or trademark law that protects a work in every country in the world. To avoid legal problems, such as property theft, companies which conduct or seek to conduct business abroad should take the necessary steps to ensure that their IP is safe in every applicable country.

Before proceeding with securing international rights, a company should assess whether filing for protection is appropriate. Circumstances for determining what type of IP protection is best for a certain company vary, so seeking legal counsel is advisable. Several general questions can help guide the decision, such as whether or not you will be selling, distributing or outsourcing your product abroad, and what the likelihood if of your product being copied overseas. International protection is not inexpensive, and affordability should be a deciding factor. While every care and consideration should be taken in the decision, businesses should keep in mind that since certain actions can bar certain types of protection, it’s in a business’s best interest to consider IP protection as early as possible.

Once you have decided to protect your IP abroad, legal counsel can help you develop an overall protection strategy, conduct due diligence of potential foreign partners, record your U.S.-registered trademarks and copyrights with Customs and Border Protection, and secure and register trademarks and copyrights in the appropriate foreign markets.

As trademarks are territorial and a U.S. trademark does not grant protection in other countries, trademarks must be filed in each country where protection is sought. If a business is seeking trademark protection in numerous countries, it may be expedient to file an application under the Madrid Protocol, which offers trademark protection in many countries, including those beyond the European Union (e.g. Turkey, Iran). Another option for businesses seeking protection in several countries is a CTM, which must be applied for and provides protection for a trademark in all member countries of the European Union.

Although there is no such thing as an “international copyright” that will protect a work worldwide, most countries offer protection to foreign works under international copyright treaties and conventions. In the case that the work can’t be brought under an international treaty, a country may still offer protection under its national laws. Examples of international copyright treaties and conventions include the Berne Convention for the Protection of Literary and Artistic Work, the Universal Copyright Convention, the World Intellectual Property Organization (WIPO) Copyright Treaty; the WIPO Performances and Phonograms Treaty, and the Agreement on Trade­Related Aspects of Intellectual Property Rights. Since there are still some countries that offer little or no copyright protection to any foreign works, it may be advisable to consult http://www.copyright.gov for a list of policies specific to each country.

It is important to keep in mind that international protection and U.S. protection can differ in several ways with regards to IP. For example, the U.S. offers arguably less protection of an author’s moral rights than other countries. On the other hand, the fair use defense to copyright infringement under §107 of U.S. copyright law is significantly broader than international fair use exemptions, which have a tendency to be more specific in nature. Since policies can vary between countries, it is always advisable to conduct due diligence for the most up-to-date legal and procedural issues surrounding international protection. Failing to do so may result in product or name infringement and dilution in a jurisdiction where you have no judicial or legal remedies, possibly resulting in devastating economic consequences.

 

by, Sheheryar Sardar, Esq., Sardar Law Firm LLC*

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