We have recently advised on two very different matters involving difficult copyright questions.

One involved an “old world” issue in which a major copyright publishing company was seeking to challenge our client’s use of the publishing company’s works alongside its trademarks and the so-called “image rights” of the creator of the works. The publisher had purchased the creator’s library some years before.

In the other case, our client was seeking to establish joint ownership of copyright in software code over which another development company was asserting sole ownership. This was very much a “new world” instruction where only a software engineer would be in a position to begin to see, let alone understand, the existence of the asset in question.

On the face of it, there was no overlap between these two matters. However, in both cases, there was a major issue of proof or “evidence”: how to demonstrate a party’s rights in copyright.

In order to make a case as a claimant in an intellectual property dispute, a number of key arguments must be won. First, ownership must be proven. This is not always simple for a copyright library when the moment of creation occurred before the owner acquired the asset. For software aggregators, creation may have occurred outside their own organization (for example, under a development contract or outsourcing arrangement). Then, the focus shifts to use of the asset. What use has really been made of an asset if it is offered in a catalogue and how will the owner prove what use has been made? What does the law say about infringement of rights in software when it is only usable in context (for example, for the purpose for which it was created) and does not stand alone to be copied and exploited independently? The burden of proof (the task of proving the case) is with the claimant and so these are the claimant’s challenges, not the defendant’s.

Litigation may not be a cost-effective way of enforcing an owner’s rights. And litigation risks are significant in the intellectual property sphere: it is often difficult for a claimant to assess the quality of their case at the outset when they have little transparency as to what the counterparty is doing or may have done with the asset.

To be smart at managing rights, you have to dig deep and to understand how they were acquired and what makes them valuable. Nothing that we have written above should discourage clients from pursuing the huge commercial opportunities arising from owning well-managed intellectual property. But it is also clear in many cases that owners of intellectual property, including some of the largest corporations, have trodden too heavily without first understanding the basis of their rights and how they will defend them in a dispute.

MDS Advisory supports clients in transactions, in managing their general business and in disputes. We draw on a network of experts – technical and legal – where necessary to achieve the outcomes that our clients seek for their intellectual property.