Overlapping IP rights pose tough challenges

It can be challenging to manoeuvre through Intellectual Property (IP) rights when two or more rights overlap. While this is a factual and legal reality, it is a phenomenon that is not yet fully analysed. Due to development of new hybrid technologies that defy the established structure of the IP system, the issue of overlapping IP rights has increasingly become significant.

As a result of new technological developments and other factors some intellectual property rights very rarely occur independently. It is possible, for example, for one creative output to be protected by multiple intellectual property rights such as trademark or industrial design and copyright at the same time. Trademark law seeks to govern the use of a device (such as a word, phrase, symbol, product shape, or logo) to identify goods and to distinguish those goods from those made or sold by another. Industrial design law seeks to protect the visual design of objects and consists of the shape, configuration or composition of pattern or colour, or combination of pattern and colour in three-dimensional form containing aesthetic value. Copyright law, on the other hand, seeks to preserve the rights of artistic creators, and protects the expression of ideas. All these IP rights are intended to protect different aspects of creativity. It may occasion a legal and practical challenge when these rights overlap.

Generally, Intellectual Property Protection is protection for inventions, literary and artistic works, symbols, names, and images which are a result of mental creativity. From an economic perspective, the most commercialised forms of intellectual property are trademarks, patents, trade secrets and copyrights. There are however other forms of intellectual property such as, industrial designs, service marks, plant breeders rights and geographical indications. Each of these IP is peculiar in its own way. However, different aspects of the same product can be protected by different types of IP at the same time.

A modest example would be a drug which may have a patent on the actual drug molecule while a later developed formulation of the same drug may be kept as a trade secret. The brand name of the drug may be protected by trademark and the logo and advertisements by copyright. The unique pill shape may even be protected as an industrial design or as an artistic work in copyright.

Consider a new computer game with a guitar interface that teaches simple guitar skills. The underlying software and graphics are protected by copyright allowing the owner to prevent unlicensed copying. The special guitar-like controllers sold with the game may be protected by trade secret or patent. The patent will allow the owner to prevent competitors from making any guitar-like controller that falls within the scope of the patent claims. The owners will protect the game name and the logo as a trademark. The logo may also be protected as an artistic work under copyright. Trademark protection is a great complement to copyright protection, because trademark infringement is easily identifiable, whereas reviewing the source code for evidence of copyright infringement may be an onerous task for court.

On the same note, a machine can be protected under patent law while drawings of the machine enjoy copyright protection. Consequently, owners of intellectual creations can potentially rely on more than one intellectual property to protect a single intellectual creation. In the example of the patented machine, once the patent expires, the patent holder might attempt to invoke copyright to prevent production of the machine by competitors, thus, in effect, extending duration of the patent monopoly beyond what can be granted under patent law. The patent owner might also use both patent rights and copyrights concurrently. In Kenya the term of patents protected is 20 years after which it falls into public domain. Copyright subsists for fifty years after the end of the year the owner dies in Kenya after which it falls into public domain.

From the examples above, it is obvious that it would create a legal and practical challenge when various forms of intellectual property are used simultaneously and allowed to overlap. Overlapping IP protection not only means that the owner receives all the benefits flowing from all the selected regimes, but also means that many of the benefits that would otherwise flow to the public are withheld.

Historically, the sphere of the different IP law was clearly defined and each IP protected very different types of works. There was little or no overlap between them. It was generally understood that for any particular creative or inventive work only one type of protection was available. Over time, some of these distinctions have eroded. As the scope of IP protection has expanded, the owners of IP have pressed for, and in most cases received, greater protections. This outward pressure has resulted in the availability of multiple forms of protection for certain works. Further, as new subject matters are added to the different IP regimes, and definitions of their protected subject matters remain vague, a number of creations will inevitably fall under the protection of two or more segments of intellectual property system.

This overlapping of IP rights protection is problematic for different reasons. One of the main problems of subsequent uses of overlapping rights is that it may extend the duration of a monopoly over an intellectual creation granted in one segment with rights that belong in another. Ideally, when protection expires, the intellectual property rights should vest in the general public.