When dealing with real estate, intellectual property (IP) may be at the bottom of the ladder, or not even a consideration. However, IP plays a role in all business operations, including real estate, and there are a number of IP issues that are worth exploring.
We will focus on trade marks, copyright and domain names, covering our top tips for taking advantage of potential IP rights and examples of where IP issues may arise.
A trade mark is the way that you stand out from the competition – it can cover various forms, i.e. words, devices, shapes etc and identifies the owner as the only source of that product or service. They are a public record of your brand choice, which can help steer competitors away from using something too similar.
Trade marks are not limited to big retail brands, but can even protect the name of a development or building. A few examples of buildings with registered trade marks are:
- The Shard
- The Cheesegrater
- The Gherkin
Trade mark registration means that, whilst the owners cannot prevent third parties from referring to the building address, e.g. 30 St Mary Axe, they can prevent unauthorised third party use of the building name – both identical and confusingly similar marks. A great tool for ensuring these brands are protected. Also, something to bear in mind if you are marketing space in a well-known building, or if you own a well-known building.
The owners of these marks also know that trade mark protection is an asset which can add significant value to the balance sheet as it can be monetised. It is key if you intend to franchise and licence use of the brand in the future.
For example, should a landlord of a shopping centre want to use its tenants’ brand, or even house style, then they will need explicit consent to do so. Otherwise, they may well fall foul of trade mark infringement (if the tenant has registered trade marks) and/or passing off (this protects the goodwill of a business/individual from misrepresentation where they have unregistered trade mark rights). This includes use on the website or app for the shopping centre. Ideally, this consent would be granted within the lease but a separate written agreement can be used. Again, it would be best if this were part of a formal agreement, but an email may be legally binding if it is sufficient and clear – it all depends on the facts.
Logos and device marks can also be extremely valuable and, in some cases, have the power to denote a brand without further clues, i.e. on mobile app icons. When protecting your logo and device marks, care must be taken to ensure that you are the copyright owner in the image (more on that below).
Copyright allows the owner to protect against others copying or reproducing their work and is a complex area of IP. In the UK, it is an automatic right which is triggered on the creation of the relevant work and, typically, lasts for the life of the creator plus 70 years (there are some variations on this depending on the exact nature of the work) – a lengthy period of time!
In relation to real estate, copyright is most likely to be relevant to, and subsist in:
- description of a property (assuming it is creative);
- website content;
- architectural plans;
- artistic renderings;
- property layout plans;
- virtual tours;
- models of buildings;
- (potentially) the building itself; and
- trade mark logos.
Generally, the owner of the copyright is considered to be the creator of the work, unless that work is created during employment and in which case the owner is the employer.
It is not unusual for a website developer, architect, photographer etc to be contracted to provide services in real estate matters. Therefore, who owns the copyright in the various elements should be a real consideration in real estate transactions as it can have serious consequences. We previously discussed where planning permission could not be implemented because the new owner had not acquired the copyright in the plans. Purchasing a site with planning permission? Buyer Beware! Dangers of copyright infringement for property developers – Wedlake Bell
Therefore, the terms of business should be carefully reviewed to determine who owns the copyright as, typically, the original owner will retain copyright ownership and simply licence your use for that particular purpose. This may be satisfactory if you only wish to use such works in relation to that particular purpose. However, if use extends beyond that agreed, it could lead to conflict and you risk being liable for copyright infringement (as in the case above).
In terms of branding, should you wish to register the logo or device as a trade mark, you will need to ensure that the copyright sits with you before applying to register the mark.
Domain names are not necessarily true IP rights but are often dealt with as an IP asset – typically containing the trade mark within the domain name – so are worth discussion. Also, it is highly likely that you will have at least one domain name, if not several, pointing to the main website.
When it comes to domain names, it is important for all businesses to:
- ensure that the domain names are renewed in good time to ensure that they are maintained – you do not want to lose your website;
- check who owns the domain name and ensure this is up to date. It may be in the name of an individual, rather than the company (where relevant), and should that individual leave the company then it could result in the domain name being lost. Likewise, if the domain name is in the name of the web developer, this may result in a loss later down the line. It is worth taking time to ensure that the domain name is in the hands of the correct owner;
- consider whether you have/should have trade mark protection for the mark contained within the domain name. Equally, check that the mark contained within the domain name does not belong to a third party, as you might be liable for infringement if someone has a registered trade mark that is similar or identical to your domain name; and
- finally, it is also worth considering whether there are any domain names available for purchase that could be owned for defensive purposes to prevent third parties owning and using that domain name. Likewise, you may want to consider purchasing different variations of your domain, for example .com, .org, .net.
- Protect your brand / company name as a registered trade mark.
- Consider whether protection is required for a word only, device only or a combination.
- Ensure you are not making reference to a third party trade mark without appropriate permission.
- Understand who owns the copyright in the relevant works.
- It is extremely important to be aware that it may be an infringement of copyright to copy plans and design drawings, including redrawing, scanning, photocopying, reuse photographs etc without the original copyright owners explicit consent to do so.
- Review your domain names and ensure they are in the correct name for renewal / maintenance.
- Consider whether defensive domain names are necessary.
- Check that your domain name does not infringe third party trade mark rights.