In this episode of Stories of Change, we sit down with Rachna Bakhru, an expert in intellectual property (IP), to uncover the often-overlooked world of IP in the social sector.
Rachna brings decades of experience to the discussion, offering practical insights on protecting trademarks, copyrights, patents, trade secrets, and donor databases.
Rachna talks about how organisations like Greenpeace and WWF have proactively managed their IP. Herein, discover actionable steps for smaller nonprofits to safeguard their creative and operational assets. From understanding the nuances of Creative Commons to exploring the implications of AI-generated content, this conversation is packed with guidance for anyone in the nonprofit space. Whether you’re managing a small NGO or simply curious about the intersections of law and social impact, this episode is a must-listen.
Transcript:
Simit: Thank you so much Rachna for joining this podcast. It’s really a pleasure to have you here.
Rachna: Thank you Simit for having me here. I’m so happy and excited to share my knowledge about IP.
Simit: Yeah, absolutely. This has been long due. I’ve been wanting to do this for quite some time, but I’m glad that we had the chance to do it now because IP is one issue, which I feel is often kind of neglected, especially in the social sector. And I’m glad that we can talk about it and explore a bit in detail, the issues around it.
Rachna: Yeah, absolutely. I completely agree with you. Not many people take IP seriously, so let’s go ahead with the issues that the not-for-profits face and what are the benefits they can get by securing their IP rights.
Simit: Absolutely. You’ve been working in this space for many decades now. What are the typical sort of common IP-related issues that come up, like in general and probably you could also talk about specifics in the social sector as well.
Rachna: So, I mean, before I explain about the common issues that not-for-profits face in this area, I would like to explain a little about the significance of IP and what are actually the basics of different IP rights that can be protected and how they are structured under the law. Because I feel that there is a lack of awareness.
Most people only understand trademarks as IP rights, but there are a few more IP rights which are important. It is significant to understand what those are. The most popular and commonly understood IP rights are the trademarks or the brand names, and Not-for-profit organisations often rely on brand names, logos, and other distinguishing signs and symbols that represent them or identify them and distinguish them from others.
Trademarks, brand names, and logos are the most commonly understood IP rights.
Nowadays, we also have non-conventional trademarks, which are like colour marks, smell marks and sound marks as well, which can be registered. So, these can be protected as trademarks under the new trademarks law. Trademarks actually help non-profits and other companies or individuals to distinguish themselves from others. And if they are not protected, they can be misused by third parties and cause consumer confusion and deception.
So, this impacts the credibility and reputation of the not-for-profit entity, as the consumers are misled into believing that the proceeds are benefiting the not-for-profit that they trust, but actually, they are not. So, it kind of shakes the trust of the donors. To give you an example of this not-for-profit organisation, which I think everybody’s aware of, called Missionaries of Charity, which is a religious and charitable organisation. They had to file three trademark applications for their logo, a blue and white striped saree, to protect against misuse. And the reports state that there were some unauthorised individuals who were using this logo to sell mementos and books and misleading the public into thinking that the proceeds were being directed to the Missionaries of Charity, whereas that was not true.
So, that’s an example of how IP or trademarks can actually be misused. Then, there are other examples of organisations, which everybody’s familiar with, like Oxfam and Greenpeace. They registered their IP and their trademarks. There was another case with the Worldwide Fund for Nature, WWF, a trademark infringement suit filed against the World Wrestling Federation, which I abbreviated as WWF, over the right to use the initials WWF.
This also reminds me of an NGO that we were supporting at the time of the Covid 19. They were actually doing incredible work, and they became so popular we cannot name them. But, they had taken a huge piece of land. And they were supplying oxygen cylinders at the time to those who needed them.
And they saved numerous lives at that time. So, due to the popularity, they started to get funds not only from the nation, across the nation, but also from overseas as NRIs wanted to help their families, who needed the oxygen cylinders. So, as a result of the popularity, there were some third parties who started to use their name illegally.
They set up a bank account and projected it as being a part of their organisation. They made it with the intention to make unlawful gains. So, overall, trademark protection is vital for nonprofits, as much as it is for the profit businesses to safeguard their brand authenticity so that they can send a strong message that the trademark belongs to them and they are able to enforce their rights against unauthorised use, dilution and reputational damage.
Trademark protection is essential for nonprofits, just like for-profit businesses, to safeguard brand authenticity and enforce rights against unauthorised use, dilution, and reputational damage.
So, although India recognises unregistered trademark rights as well, however, registration does help. It does make things easier to enforce rights. In the absence of a registration, the onus, the burden of proof is on the brand owner to prove its ownership. Like, we have the physical properties where if you’re staying in an apartment for many years, but you haven’t got it registered with the MCD, and one fine day, you have to prove the ownership, then you’ll have to prove that, yes, you’re the owner of that apartment.
So, similarly, for intellectual property rights as well, it is not mandatory to register. India is a common law country, so it does recognise unregistered trademark rights as well. However, it does help to kind of prove your ownership in case there is a dispute or is, therefore, an infringement by a third party.
A registration helps enforce IP rights, but without it, the brand owner must prove ownership.
Then, we have copyrights. Copyright protects literary, artistic, dramatic, sound recording and cinematographic films, for example, books, and music. Then, we have poems, scripts, movies, dance sequences, content in the current times, paintings, sculptures, etc. There are some NGOs that we support, who are into the education space and they create content, like books and materials. So, they’re quite particular about registering every piece that they create. Although, again, copyright registration is not mandatory. India is a signatory to the Berne Convention and there is a signatory to the Berne Convention, whereby copyright registration is not compulsory, and you can also enforce unregistered copyright. But again, as I said, for the trademarks, it helps to enforce your rights if you have a copyright registration.
And then it again depends on this strategy followed by each organisation, whether it is a not-for-profit or for-profit, whether they would like to invest in the protection of the creative works, and how it can be exploited. So, maybe in the case of the NGO that I’m talking about, who registers every piece of creative or literary work, the content that they create or the books that they write, maybe because they have the risk of it being copied by third parties. They are suspecting that.
So, it is the internal strategy of every organisation. Then, the third IP, which is also popular, but maybe not so much for nonprofits, only those who are in the technical field, is patents. So, nonprofits can also protect their inventions or technologies by filing patents, especially when they develop innovative solutions for social impact.
Nonprofits can protect their inventions or technologies by filing patents, especially when developing innovative solutions for social impact. So, examples include healthcare and environmental technologies that can be licensed to promote global development.
Nonprofits can protect their inventions or technologies by filing patents.
Simit: Right.
Rachna: And it helps to register a patent. For example, nonprofits in the global health sector, such as the World Health Organization, WHO, often work with organisations like the Medicines Patent Pool to enable licensing of lifesaving drugs to low-income countries at affordable prices. So, it does help to protect the inventions well in time. The fourth type of IPR rights, which is not much talked about, is trade secrets.
So, there are certain rights which are not covered under the conventional ideas, patents, trademarks, copyrights, and designs, so they can be covered, especially in the current era we live in. There are new types of content and new types of creative works, which are not covered under those headings. Then, there are trade secrets, and there is a lack of awareness of what qualifies as a trade secret and how it can be protected in the absence of a dedicated statute. But then trade secrets are quite useful because they protect the valuable proprietary information that nonprofits and for-profit organisations can protect to maintain a competitive edge, which includes, in the case of not-for-profit organisations, operational processes, donor databases, and proprietary strategies. So, one example that I can give, because we worked with them, was a healthcare-focused not-for-profit that had developed a specialised method for distributing medical supplies to remote areas with a temperature-controlled environment for injections in Vermont.
So, protecting this method as a trade secret would give the organisation a competitive advantage by ensuring that others cannot replicate its efficient service delivery. Then, there are these donor databases, where there is a high addition rate. They copy the donor databases and take with them crucial information. It happens with for-profit organisations as well.
Trade secrets protect valuable proprietary information, such as donor databases and innovative methods, providing a competitive edge for nonprofits and for-profit organisations. It is a common problem. So, those databases as well can be protected as a trade secret. Provided certain protocols are followed to label it as a business secret, trade secret information or confidential information, then only it can be protected. So, those are important. Then, there are proprietary strategies, which I mentioned that sometimes the organisations with unique strategies can achieve their social missions. These could be in the areas of fundraising, marketing, and community engagement. And those are unique to an organisation. And they want to protect it.
Trade secrets protect valuable proprietary information, such as donor databases and innovative methods.
Organisations feel bad when those strategies are being copied. Although, till a time they’re not copied, they feel it’s okay. If anyone else is also using them, it’s fine. But when they are actually copied, then no one likes it. So, I think it is important to protect trade secrets as well. And overall, I spoke about the different kinds of IP rights that exist and how a not-for-profit organisation can identify and capture the IP that they’re producing and decide which category are they going for that an IP consultant can advise, but these are the basic heads of IP rights. And there are, of course, numerous benefits.
Simit: Right. Oh, that was very elaborate. And there are so many issues that you talked about. I’ll pick up one of the things that you mentioned, which is very relevant to organisations in the social sector, which is about protecting their donor databases. So, one is obviously the employees within the organisation, who have access to that kind of data.
But the other is also the service providers that they’re working with, whether it is a website person or the mailing service providers, for example. So, they are dealing with a lot of data, and there are times when organisations have to share that. And in my earlier roles, I’ve seen these issues being brought up by organisations where there is a kind of lack of clarity in terms of how it could be protected.
Can you delve a little deeper into that issue as to how an organisation can protect this?
Rachna: The protection of databases is partly also covered under copyright law. As I said, trademark trade secrets do not have a separate dedicated law for protection. So, the only way to protect trade secrets or business secrets and databases, donor databases or any database like we have client databases in a law firm that we need to protect.
So, the best way to protect them is through contracts and through creating awareness internally amongst the employees, and amongst the contractors that this is confidential information and no one is authorised to copy it and use it to their advantage. Then, there are agreements with the employees at the time of joining. It can be one of the clauses that we have an agreement, kind of a pop-up that comes when people log into the systems, that they will not copy any content or any databases.
And we have a system where employees cannot send any information on their Gmail IDs. So, those kinds of mechanisms are important to be in place. But the most important thing is to create awareness and kind of send a message around that this is important to us. And this is a subject matter of copyright. This is our business secret or trade secret and any copying of this will cause us to take action in case of any violation of that. The same goes for the contractors. An agreement has to be in place, which should be robust and then create awareness. So, those are the two main areas.
The best way to protect trade secrets is through contracts and raising internal awareness.
Simit: Yeah. And also as you rightly mentioned, like at the start of the conversation, a lot of times within the sector and even outside, there is this common tendency, wherein when something happens or when something is being infringed upon, only then do you kind of realise that this is an important issue and that it should have been protected.
But by that time it is too late. And there is either because of lack of awareness or you just don’t feel that that is important at that time. You realise the importance of IP issues only when something happens.
Rachna: Yeah.
Simit: So, I want to ask as to what are the steps that organisations can take to make sure that, first of all, that IP is not infringed upon. And if it is, what is it that they can actually do?
Rachna: Yeah. So, the not-for-profits need to have an IP policy in place, which involves, first of all, creating awareness, as I mentioned earlier as well, internal kind of an awareness about what IP exists in their system. Then, consider their own activities, the not-for-profit activities and the IP needs that they have.
So, the type of IP protection varies based on the non-profit organisation (NPO)’s mission. For example, an NPO focused on creating educational content will likely have a stronger need to protect copyright for its materials. While there is another one that develops technology or software that may need to address patent protection and software licensing.
Nonprofits need an IP policy that includes internal awareness and addresses their specific IP needs.
So, that has to be aligned. The mission and vision of the NPOs with the IP requirements. Then, identify and track the type of IP, which I explained that there are various heads: trademarks, corporate patterns, and trade secrets. There are also geographical indication designs, a few other IPs, and lesser-known IPs.
So, they need to identify and track the type of IP that the NPO was creating, and then define ownership of IP. That has to be very, very clear. There are a number of issues around the definition of ownership of IP. The fact “who owns the IP,” is a common problem for NPOs as well as for-profit organisations.
This is especially for the IP, which is created internally by the employees during the course of their employment working hours. Then, in the case of NPOs, there are volunteers who are creating IP, there are third-party contractors or external collaborators as well. So, there needs to be formal ownership and agreements stating who owns the IP.
There are so many lawsuits, where an organisation had outsourced, for example, making an advertisement from a third party. There was no agreement in place. So, the creator will claim that they have a copyright on it, whereas you have paid for that work. So, ideally, you should own the IP.
Nonprofits need to clearly define ownership of IP created internally by employees, volunteers, or external collaborators.
But in the absence of an agreement or a formal agreement, the IP rights will go to the one who creates it. So, there has to be clarity in terms of who owns the IP, whether again, from the employees as well, the organisations, who do create IP on a day-to-day basis, they get agreements signed at the time of employment that any IP created during the course of their employment or during the working hours will belong to the employer.
So, those agreements will necessarily clarify who or what the ownership of the IP is.
In the absence of a formal agreement, IP created by employees during employment belongs to the employer.
Simit: There are so many issues that have been covered by you while talking. But I’ll pick up one of the things that you mentioned. In the earlier part, you mentioned Greenpeace and WWF and other larger organisations as to how they have been proactive in making sure that their IP is protected.
So, are there any lessons that you think smaller nonprofits could take? From them in terms of when it comes to protecting the IP? You also talked about having a policy. Could you outline a little bit in terms of what that policy needs to entail or what it typically entails?
Rachna: NPOs, although their ultimate aim is not-for-profit, when they are preparing, crafting content, or making a poster, for example, or any digital media content or creative work that they’re creating, the purpose of it is also to raise funds. It is not exactly a not-for-profit, noncommercial use of it. Noncommercial use would technically mean for educational purposes, like if you’re using it for a lecture or educating someone. If I make a presentation and I use brand names and logos, or articles from the public domain, which is just to educate students, then it is okay to do that which will constitute fair use. But if I’m using it for commercial purposes, then it does not amount to fair use.
NPOs can use content for educational purposes, but commercial use does not constitute fair use.
Simit: Very interesting because this is something that I have seen as well, especially with organisations in the social sector. When they have to make a presentation, for example, or use it in a pitch deck, there is a normal tendency to use photos from Google images directly without checking whether it falls under Creative Commons, for example, or whether it can be used.
That brings me to the point about Creative Commons as well. Could you share what exactly is Creative Commons and why should organisations use or probably go for material or photographs, which are under Creative Commons?
Rachna: So, as I understand from your question, sometimes the source is not identified. So, what should we do? Scenarios?
Simit: Correct
Rachna: Yeah. So, if you ask me, I would avoid using that. Why take the risk?
Simit: All right. Okay. But related to that, and you covered that because a lot of times organisations, because they are registered as a not-for-profit, there is a belief or a tendency that because we are a not-for-profit, it’s okay to reuse someone else’s content and share it on our social media, for example.
And I don’t know, is there like a grey line or is it like a clear black and white in this case, or can there be exceptions?
Rachna: So, yeah. So, as I said, there are exceptions under the copyright law. But there are at the same time, there are ugly areas, like in the current times, there are issues related to AI, where courts have actually appointed an amicus curiae to find out what exactly constitutes fair use for the training that is given to the AI models. So, there is a dispute over whether or not if copyrighted content that is being fed into the AI models constitutes fair use
So, there are grey areas such as the one that I discussed, and it is for the courts to interpret in certain cases, but broadly, as I covered, there are personal use, noncommercial use, use for research purposes and education purposes. Those are the four common heads which constitute fair use.
So, those are quite clear. But there are certain areas which are quite grey and it is for the courts to interpret. So, it’s better to avoid those areas and mitigate risk by using those.
There are grey areas in copyright law, especially with AI.
Simit: In fact, I remember one case when an organisation had come to us. So, this organisation works on women and girls and on their empowerment. And like many years back, about 10 or 15 years back, they had created a bunch of songs. They had recorded songs of various artists that they had commissioned.
And the songs were now available in a cassette form, and it was not in any digital version. So, they wanted to, first of all, convert that into a digital file and then put that out. But they were unsure as to how to protect that because their fear was that if they put it out, then others could use it without giving proper credit and so on.
So, in this case, is it important to kind of register the contracts and all of that in place, or is it the recording that makes you the actual owner?
Rachna: Yeah. So, I mean, as I said, it’s not mandatory to register it as a copyright, but it helps to enforce the rights. Like if there is a dispute, they have to kind of show that I’m the owner and you got to pay me the royalties, then it helps. But for getting the royalties for the music, well, then, you need to join the societies and the associations and they help you enforce your rights. So, a similar situation will apply in the example that you’ve given about the recording that is going to be played on YouTube. And he’s kind of apprehensive that he may not get the payment that he should get.
While not mandatory, registering copyright helps enforce rights and collect royalties.
Simit: Right. I am coming to the final part of this podcast in terms of understanding what are the trends that you have seen, as far as IP is concerned. Maybe like in India or outside, are there any trends that you have seen that organisations in the social sector need to be aware of in the coming decade or so?
Rachna: Yeah. The growing use of AI and digital tools to create content technology and, say, other products. It is presenting new challenges as well as opportunities. AI-generated works raise new questions about authorship and ownership, as I also discussed in another example. Therefore, not-for-profits that rely on digital content heavily, such as educational materials, datasets, or creative assets, may need to adjust their IP policies to address AI-generated books and software development. So, it will be crucial to ensure clear ownership in those cases, that who has the right to use AI-generated content. So, that’s going to be crucial in the trends that you’re asking about.
Then, nonprofits are increasingly operating in a globalised environment, and therefore, understanding international laws, IP laws, and protecting their assets across borders is also becoming important. Every country has their own different IP laws. So, nonprofits should also consider being aware of international laws and have global strategies in place for registering and enforcing their IP rights in other countries.
Then, another trending thing is blockchain technology. The use of blockchain is also prevalent now. For NPOs, it depends on the scale of their operations, but they can look at blockchain as a tool for managing and protecting their IP, especially digital art publications and creative content, which can get copied, which is a more secure way to protect all tracking the ownership and ensuring that the creators are duly compensated for their work.
Nonprofits need to develop global strategies to protect and enforce their assets across borders.
Simit: Oh, thank you so much. I think we covered quite a bit of issues. It was good that you talked about different sorts of IP mechanisms, whether it is trademarks and patents and copyrights, trade secrets, donor databases and so on. Yeah. I think it was a fantastic discussion.
And thank you so much for your time and for doing this. I’m sure organisations who are working, especially in the social sector, will find this useful in their work. And this is something that will make them reflect and take note of what are the things that they need to protect. What are the IPs that they already have and something that they need to protect. So, thank you so much for this.
Rachna: Thank you so much Simit.
