Can you prove that you own your IP?

Kirsten Ferguson shares her top tips for obtaining evidence of ownership of your IP during the life of your business.

Intellectual property (IP) refers to new or original innovations and creations of the mind such as literary or artistic works, sound recordings and films.

Despite the degree of creativity that the above definition implies, IP is not limited to Leonardo da Vinci paintings and Pulitzer prize-winning novels. By way of example, a business logo is an “artistic work” and a client list or customer database constitutes a “literary work” for IP purposes.
As a result, whether a business operates in the creative sector or not, it will own IP.
Although intangible (that is, it can’t be touched) it can hold significant value for a business owner when it comes time to exit their business. Alternatively, IP can be a passive income stream for a business, licensed or otherwise, if commercialised.
To obtain value from IP there must be evidence of ownership. Where there is doubt in relation to ownership its value can be significantly diluted.

How can I record evidence of ownership of my IP?
The following are our top 5 tips for obtaining evidence of ownership of your IP during the life of your business:

1. Registration
Register whatever IP you can. Formal registration provides un-disputable evidence of ownership.
Not all IP is able to be registered – for example, Copyright, Trade Marks, Designs and Patents are the most common forms of IP that can be registered in New Zealand. The register is administered by the Intellectual Property Office of New Zealand (“IPONZ”) and a Certificate of Registration once registered is an almost full-proof way to record evidence of IP ownership.

2. Documentation
Copyright works are not able to be formally registered in New Zealand. Therefore it is crucial that your business takes steps itself to document evidence of ownership.
Works such as your client database, software, manuals etc are all copyright works. We recommend keeping an IP register to not only record what IP your business has, but also the dates your IP works were created.

3. Commissioned Works
In New Zealand, when you pay for IP, the default position is that you then own it. However, contractual arrangements can circumvent this default position. Therefore, you must be careful that any agreements governing the creation of IP works for you by a third party do not allocate any or all IP rights in the work to that third party.
This may even include employees and regular contractors. Your Employment and Contractor Agreements should make it clear that you own any IP created by your workers.

4. Notice
A copyright notice is not mandatory to ensure protection but it can be crucial to helping prove evidence of ownership and date of creation quickly and cost-effectively.
There is no standard form of copyright notice – the copyright owner can decide on the wording used. However, a simple copyright notice usually appears in the following format:

In terms of the inclusion of a date, the general rule is to include the year of first publication of the work. “First publication” is when the work was first made available to the public without restriction.
While proving ownership and date of creation, a copyright notice is also useful as it puts third parties on “notice” that you take your ownership rights seriously and will enforce them if your copyright work is misappropriated.

5. Licencing
In the event that you decide to “share” or commercialise your IP, make sure that you document the scope of the sharing, including but not limited to expressly recording that there is no transfer of IP ownership as part of the sharing arrangement.

Kirsten Ferguson is a partner at Rainey Collins.