Commercial IP

Commercialisation holds the key to unlocking the maximum potential value of intellectual property assets – and Spoor & Fisher has an in-house team of specialists in this field.

The commercial aspects of copyright, trade marks, technology transfer, technology development and licensing, sport and entertainment law, book publishing agreements, software agreements and franchising all form part of the Commercial Department’s area of expertise. Fashion law and the protection of privacy in cyberspace are among the recent developments in the IP environment covered by the team’s in-depth knowledge base and skills set.

Our commercial IP services include:

Copyright

While it is true that copyright exists automatically, the mere establishment of ownership does not leverage the value of the work as an IP asset – or always discourage other parties from making unauthorised use thereof. It is therefore prudent to obtaining sound legal advice regarding:

  • Copyright subsistence and ownership
  • Sale (assignment) of copyright agreements
  • Exchange control requirements and approval
  • Anti-competitive / anti-trust behaviour
  • Non-disclosure and non-circumvention agreements

Trade marks

Trade marks and brands form the public identity of your IP, and some of the most significant commercial implications include:

  • Licensing of trade marks / brands
  • Sale (assignment) of trade marks / brands
  • Advice on exchange control requirements and applications for exchange control approval
  • Distribution agreements
  • Anti-competitive / anti-trust behaviour
  • Promotional competitions
  • Non-disclosure and non-circumvention agreements
  • Parallel importation / grey goods
  • Determination of appropriate licensing royalties

Technology Transfer, Technology Pooling and Cross Licensing

IP can be leveraged where technology is commercialised in a collaborative effort with others. We specialise in:

  • Ensuring freedom to conduct business in a technology field without infringing on third party rights
  • Assessing the validity of IP contributed to a joint venture
  • Structuring and implementing technology-pooling arrangements
  • Structuring and implementing technology licence and cross-licence arrangements

Intra-Group Licensing and Exchange Control Regulations

Group companies may require assistance to put intra-group licences in place.

  • We specialise in determining appropriate royalty rates between related companies
  • We prepare and submit applications for exchange control approval that may be required before implementing an IP transaction

IP Management

We can assist companies to properly manage their IP portfolios. In this regard, we offer the following services:

  • IP and technology audits
  • IP policies and management guidelines
  • Advice on IP risks and gaps in protection
  • Participation on IP steering committees to guide businesses in deriving optimal benefit from their IP

IP Due Diligence

An IP portfolio can be a key factor influencing an investment decision. We conduct IP audits, advise on the status and validity of IP rights, the scope of protection afforded by the rights and the value of the rights in the context of the proprietor’s business.

Public-Private Technology Development

We advise on the implications of developing technology with a public institution or with public funds in light of legislation pertaining to such development. In particular:

  • We are experienced in drafting technology development agreements between private companies and universities/science councils
  • We prepare and submit applications to the National Intellectual Management Office (NIPMO) for approval required for various IP transactions or development terms

Development, Production, Supply and Distribution of Hi-Tech Products

We assist businesses to commercialise technical products from their manufacture through to licensing and distribution. For example we can assist with:

  • Technology development agreements, either through collaborative effort or as a supply of services
  • Manufacturing, licence, supply and distribution agreements
  • Software development, licence and reseller agreements
  • Open source licensing

Sport & Entertainment Law

Sports and entertainment each has a massive public following, with concomitant commercial potential:

  • Sport
    Teams and individual sportspeople are brands in their own right, and here the focus is on: 
    - Sponsorship agreements
    - Endorsement agreements
  • Film Rights
    Contractual arrangements form an essential part of the pre-production process, and these include: 
    - Option agreements
    - Chain of title
    - Scriptwriting agreements
    - Clearances for personal appearance
    - Life story permission agreements
  • Music
    The department can advise and assist clients in the drafting of: 
    - Publishing, licensing & distribution agreements
    - Artist’s appearance agreements
    - Backing musician agreements
    - Mechanical reproduction, broadcast & public performance agreements

     

Book publishing agreements  

Whether in printed or electronic form, books are assets whose value can be protected and unlocked through:

  • Co-author agreements
  • Publishing & distribution agreements
  • Litigation

Privacy

Technology has had a significant impact on privacy and the commercial exploitation of identity. These aspects are covered in terms of:

  • Privacy on the Internet & social media
  • Defamation
  • Databases & personal information

Franchising

Franchisors and franchisees can obtain advice regarding:

  • Franchise agreements
  • Disclosure documents

Fashion law

This is relatively recent development, covering IP and commercial aspects of the industry.

Software agreements

Software authors, vendors and end-users can obtain advice regarding:

  • Software development & licensing agreements
  • Privacy notices
  • Terms of use of websites

South Africa’s Consumer Protection Act

South Africa’s Consumer Protection Act has far-reaching implications for consumers, vendors and manufacturers alike, affecting:

  • Consumer rights
  • Labelling
  • Marketing
  • Promotional competitions

contact us for further information.

The Team

Dina Biagio

Pretoria, South Africa

Partner

d.biagio@spoor.com

+ 27 12 676 1112

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John Foster

Cape Town, South Africa

Partner

j.foster@spoor.com

+ 27 21 673 4441

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Duncan Maguire

Jersey, Channel Islands

Director

d.maguire@spoor.co.uk

+ 44 1534 838 089

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John McKnight

Johannesburg, South Africa

Partner

j.mcknight@spoor.com

+ 27 11 994 5102

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Wayne Meiring

Jersey, Channel Islands

Managing Director

w.meiring@spoor.co.uk

+ 44 1534 838 042

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Hugh Melamdowitz

Pretoria, South Africa

Partner

h.melamdowitz@spoor.com

+ 27 12 676 1222

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Danie Pienaar

Pretoria, South Africa

Partner

d.pienaar@spoor.com

+ 27 12 676 1014

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Tshepo Shabangu

Pretoria, South Africa

Partner, Chairperson of the Partnership

t.shabangu@spoor.com

+ 27 12 676 1126

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Jeremy Speres

Cape Town, South Africa

Partner

j.speres@spoor.com

+ 27 21 673 4401

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Marco van der Merwe

Pretoria, South Africa

Partner

m.vdmerwe@spoor.com

+ 27 12 676 1218

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Herman van Schalkwyk

Pretoria, South Africa

Partner

h.vanschalkwyk@spoor.com

+ 27 12 676 1113

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Eben van Wyk

Cape Town, South Africa

Partner

e.vanwyk@spoor.com

+ 27 21 673 4439

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