Foundations of IP Strategy

IN ORDER TO OBTAIN COPYRIGHT PROTECTION, SOME TESTS NEED TO BE MET

1. TEST 1: ORIGINALITY

   

   First, the work you create must be original. It must have originated from you and it must reflect skill and judgment in its creation. This test may be described differently and may differ in its application in different countries. However, in all cases, there is a threshold test that must be met in order for a work to qualify for copyright protection.

   example

   Do compilations of facts such as telephone directories or online databases meet the legal threshold for protection? Databases, especially electronic databases, can be an important commercial asset for a business, so strategies for protecting them must figure into any sound IP strategy. In such cases, copyright law will be the first form of IP to consult.

   If the database meets the test for originality in that it involves some authorial effort or skill and judgment in the selection and arrangement of the data, then it will likely be protected by copyright. However, routine compilations of data or facts such as, for example, the alphabetical listing in a telephone directory would not likely attract copyright protection.

   In countries such as Australia, Canada and the United States, among others, a database that does not attract copyright protection is not protected by any form of IP law, although contractual agreements might be used to fill this gap. By contrast, in EU countries, in cases where databases do not meet the copyright tests, there is a separate database right that offers protection in cases where the database was the result of “substantial investment in obtaining, verifying or presenting the contents.”²

   ² Copyright and Rights in Databases Regulations 1997 (UK), online: <www.legislation.gov.uk/uksi/1997/3032/contents/made>.

   “You cannot copyright a word.”

   Copyright protection is very difficult to obtain in single words or titles on their own, although there are exceptions, which vary from country to country. Some jurisdictions deny copyright as a matter of principle.

   Example

   The oil and gas company Exxon Corp. was unsuccessful in a copyright infringement claim against Exxon Insurance. The English Court of Appeal found that there could be no copyright in a name or single word, even if coined or invented. However, certain jurisdictions might still recognize copyright protection in short expressions if they are sufficiently original.

   If the word in question is the trademark of a company (for example, Exxon), then the most relevant recourse to consider would be under trademark law, instead of copyright, as we will see later in this module.

2. TEST 2: FIXATION

   

   In some jurisdictions, especially common law countries, works must be fixed in some material form (i.e., written down or recorded in some way) in order to be protected by copyright. For example, improvised works that are delivered spontaneously are likely not protected in Canada.

   In contrast, in civil law jurisdictions where this element of fixation is not required, the creator of the improvised routine would be able to stop someone who sees the routine and copies all or a substantial part of it.