In through the outfield

7 August 20136 August 2013

Rihanna wins rights to her image over Topshop

Rihanna_(6777125510) — By Eva Rinaldi CC-BY-SA-2.0], via Wikimedia Commons

No, this isn’t about a tabloid newspaper controversy involving the rather racy Barbadian pop star. Instead it is about a recent High Court case where Rihanna took on the high street fashion chain Topshop over the use of unauthorised photos of her on their T-shirts.

The dispute centred on the issue of ‘passing off’, a fascinating aspect of Intellectual Property law due to the way it depends, not on some arcane legal technicality, but on what an ordinary person would think.

During my seven years working in the Business & IP Centre I have learnt that Intellectual Property can be immensely technical and complex, but also has aspects that rely on good old-fashioned common sense.

The test for passing off is quite simple, would an ordinary person think the item they are buying was either produced or authorised by someone other than who they thought it was. Wikipedia defines it as; The law of passing off prevents one person from misrepresenting his/her goods or services as being the goods and services of the claimant, and also prevents one person from holding out his or her goods or services as having some association or connection with the plaintiff when this is not true.

Not surprisingly the most frequent cases of passing off tend to involve household brands. In April Which? magazine conducted a survey that found ‘a fifth of Which? members have bought an own-label product by mistake because it looked so much like a big brand. They found more than 150 own-label products they thought borrowed elements of their packaging from branded competitors. Own-label ‘copycat’ products: can you spot the difference?

One of the most well-known involves the best-selling dandruff shampoo brand Head & Shoulders. They have taken numerous supermarket chains to court for producing own label shampoos which are too similar to the their brand. The supermarkets tend to mimic the shape of the Head & Shoulders bottle, their colours and font styles. Each time the supermarkets lose the case, they go back to their designers and make slight changes to their bottles, leading to another round of court action.

Next time you are in a supermarket, have a look along the shelves and see if you can see any ‘look alike’ packaging from own label brands. In my experience cereal boxes make for rich pickings. Put yourself in the shoes of the busy shopper (or in my case reluctant shopper) rushing along the aisles with only time to glance at the packages as they zoom past. It is all too easy to grab the ‘wrong’ one and drop it into your basket.

In the case of the T-shirt with Rihanna’s photo, the judge Mr Justice Birss said the “mere sale” of a T-shirt with an image of a celebrity did not automatically amount to passing off. But in this instance he thought that a “substantial number” of buyers were likely to have been deceived into buying it because of a “false belief” Rihanna had authorised it.

He said it was damaging to her “goodwill” and represented a loss of control over her reputation in the “fashion sphere”. It was for Rihanna not Topshop to choose what clothes the public thought were endorsed by her.

3 January 20133 January 2013

The perfect Christmas present – the gift of time

I guess in this ‘time poor’ era we could all do with an extra couple of hours a day, but in the meantime for me, a new watch will have to do.

For some years I have aspired to own a Mondaine watch. Based on the iconic official Swiss Railways clock-face, they are simple and elegant. The design with its distinctive red second-hand have indicated the famously punctual Swiss trains at their stations for more than 60 years.

So I was more than a little surprised, and extremely happy to be given one as a Christmas present from my partner. Especially as I hadn’t mentioned my interest in owning one.

If you want to see an example ‘in the flesh’ in the UK there is a little cluster of them at Canary Wharf in London Docklands.

My intellectual property expert colleague Phil mentioned that the design was the cause of court case between Mondaine and the giant Apple computer company. The story was covered by the Daily Mail website in October and November of last year.

Bet Apple wish they could turn the clock back: Swiss firm accuses iPhone 5 of copying their iconic face design.

Apple ‘paid £13million to Swiss national rail operator’ after using its iconic clock design without permission

There is some irony here, as this was the same time that Apple was suing Samsung in the United States for copying elements of the iPhone screen design.

Mondaine clock face — Image from DailyMail.co.uk

27 November 201227 November 2012

Disney forces ‘Passing off’ company to destroy ‘mockbusters’

A whole half-page story in tonight’s Evening Standard about a firm who have been creating poor imitations of Disney blockbuster films.

Brightspark Productions Ltd (not to be confused with Brightspark Studios who have updated their homepage with the message below) have been forced by the courts to destroy their infringing films.

Passing off is nicely defined by Wikipedia:

The law of passing off prevents one person from misrepresenting his or her goods or services as being the goods and services of the claimant, and also prevents one person from holding out his or her goods or services as having some association or connection with the plaintiff when this is not true.

In this case parents were buying DVDs such as Tangled Up and Braver below, and finding their children were disappointed with the films inside the cases. They didn’t come close to the Disney level of quality of storyline or animation.

Brightspark’s managing director Jeremy Davis seemed relatively unrepentant when he said: “I really believed no one in their right mind would buy Braver thinking it was Brave. It was on sale for £2-something in Tesco. You’ve never seen a Disney title for anything near that. I obviously wouldn’t want any kids upset, but the feedback we get is our titles are cheap and cheerful.”

15 November 201212 October 2015

Yamasaki YM125 motorbike – the ultimate in brand flattery

They say imitation is the sincerest form of flattery, and I think the Yamasaki YM125 may well be the ultimate expression of that in the biking world. Yes, I’m back on my favourite topic of motorbikes again, but this story is all about trademarks and branding.

This rather unexpected brand name takes me back to my early youth, when the British Bike industry still ruled the world, but Japanese imports to the UK were just beginning. Needless to say the old British Bikers would have nothing to do with these young upstarts from Yamaha, Kawasaki, Suzuki and Honda. Their short-sighted criticisms would often be expressed in dismissive pithy phrases such as ‘I wouldn’t be seen dead on one of those Jap-crap Yamasakis’.

So it is something of an irony that China is beginning its inroad to the established Japanese market hegemony with this portmanteau word based on two of the biggest Nipponese brands. Even more so, the bike spearheading the attack is a copy of the best-selling Honda CG 125. You can make your up own mind how much of a facsimile the YM125 is, by looking at the photos below.

Although not yet available in the UK, Bike Magazine recently imported one in ready-to-build crated form. After two hours putting it together they weren’t entirely impressed by the build quality, but they were by the on the road price of £896, and the 95 miles a gallon fuel consumption.

Certainly Richy1986, who posted this critical review on Review Centre listing 25 faults, was not impressed with his bike. Yamasaki YM125-3 – Cheap Rubbish!!!

28 May 201219 February 2013

Inspiring Entrepreneurs event – Going for Gold – report

Many thanks to my colleagues Michael Pattinson and Gail Mitchell for reporting on this successful event.

Last Wednesday evening the British Library hosted the latest in the series of Inspiring Entrepreneurs events called Going for Gold which featured an audience with the Business & IP Centre’s new entrepreneur in residence Stephen Fear.

Stephen has 50 years of business experience and is involved in our new Innovating for Growth Programme which nurtures existing businesses and helps them grow over a 12 month period. He was joined on stage by two of the participants in the programme, Mandy Haberman, inventor of the Anywayup Cup and Cate Trotter, Head of Trends at Insider Trends.

Following a brief introduction from Frances Brindle, Head of Marketing at the British Library, chair Matthew Rock started proceedings by asking Stephen about the origins of his entrepreneurial spirit. He talked candidly about his early childhood spoke about his first business venture as a teenager which involved sourcing the formula for an oven cleaning solution from the US and enlisting the help of friends on the estate where he grew up to make up the product. He famously used a telephone box as his office and managed to charm the telephone operator to pose as his secretary.

After much deliberation about which job title to award himself on his business cards, he finally decided that trainee salesman was more appropriate than president or chairman considering he was so young, he set out to make his first sale. After being ejected by the receptionist at Hovis he managed to convince one of the managers who was outside having a cigarette to see a demonstration of the product. He was duly impressed and placed an order. How did he convince him? He told him that he would lose his job if he didn’t get to demonstrate it to someone.

There were several lessons to the story. Always believe in your product and make sure it works; use whatever ‘guerrilla’ tactics you can to market the product; and make sure you approach the decision makers, don’t waste your time trying to sell to the receptionist.

Stephen proved to be a very engaging speaker, down-to-earth and keen to share his entrepreneurial know-how with the audience.

Mandy Haberman joined Stephen on stage and spoke about the initial success of her Anywayup cup. She has some new products in the pipeline which she is going to manufacture herself with the help of funding including a baby feeder which emulates breast feeding. After talking about how difficult it was to secure funding Stephen told the audience that businesses will always face such challenges but it’s how you react to those challenges that matters. Matthew Rock asked him if he had any tips for businesses looking for funding. He recommended the British Bankers Association’s Business Finance for You website as a good starting point.

Cate Trotter from Insider Trends was up next. Cate runs a trend spotting service which includes trend tours and talks for clients ranging from large corporations like Marks & Spencer to SMEs. She is currently expanding from being a sole trader. Stephen made the point that this can be a dangerous time as you need to entrust parts of the business to other people who may not share your passion and commitment.

Stephen urged the audience to spend carefully when you are building up a business and to avoid what he called unnecessary fixed overheads such as an expensive office space or a company car. If you put a set of BMW keys on the table people assume you have a BMW, so just get a set of keys!

Mandy pointed out that you can mock up packaging to save money. Stephen came up with a very useful tip called “tacking on.” Some packaging companies may be prepared to package your products cheaply at the end of a run for another client, especially if they think you might be putting more business their way in the future.

Matthew Rock thanked the guests for their insight and then asked the audience if they had any questions. Somebody asked if having a limited company was preferable to operating as a sole trader. Stephen felt that aside from the issue of liability, the legal status of the business was not that important because it was the individuals involved that were important.

Someone else asked for advice about trading overseas. Pick an English speaking country or at least a country where you are familiar with the language and culture, said Stephen. Mandy suggested using international distributors who know the market and have the infrastructure in place already.

Nick Nair at the back of the auditorium told Stephen that if he didn’t use this opportunity to give him a bottle of his product, Flavour Dash, his boss, (ie his wife) would give him the sack. To applause from the audience, he ran down the steps and presented Stephen with a free sample, employing the very same guerilla marketing tactics that Stephen had recommended earlier in the evening.

16 June 2011

Hello Kitty – Goodbye Cathy

I have to admit that children’s characters are not something I have spent much of my time thinking about since my kids left primary school some years ago. Despite this, the distinctive Hello Kitty brand has successfully impinged itself on my consciousness.

Such strong and simple designs obviously have a wide appeal. However, the lesson is that you need to ensure that yours are truly unique to avoid potentially damaging copyright wrangles.

A recent story from the Evening Standard about Cathy from the Hello Kitty range illustrates this problem (Hello Kitty waves goodbye to friend Cathy).

There have been months of legal bickering between the Dutch firm Mercis who own Miffy, the well known Dutch character created by Dick Bruna, and Sanrio, the Japanese owners of the Hello Kitty brand.

In the resulting settlement Sanrio promised to drop the character Cathy. And both will donate £135,000 to the victims of the earthquake in Japan, rather than spend more money on legal fees.

8 March 2011

An innocent clash of trademarks?

I’ve been thinking a lot about branding and trademarks recently (Logos with customer appeal – Apples and Marmite).

So this story in yesterday’s Evening Standard caught my eye (I’m innocent over trademark clash, says children’s vitamins maker).

Innocent Vitamins was started by Dawn Reid in July 2010, based in the tiny village of Ashurst Wood in East Sussex, close to where I grew up. According to the Standard article, Mrs Reid claims that her brand was not inspired by Innocent Drinks, and that her customers do not get the two brands mixed up.

However, the smoothie company, founded in 1999, and now with a turnover of £128 million, sees things differently. They say their customers are confused by this new brand, and that using such a distinctive name in a similar category is not an appropriate thing for another company to do.

“We have given the company a way out by respectfully asking them to stop using the brand name, which we believe is more than reasonable, and doubt that most other companies would be so tolerant. We have to protect our brand and everything we have stood for over the past 12 years.”

It seems that Mrs Reid is planing to fight to keep the Innocent Vitamins brand, so this one could run and run.

“I genuinely believe that my company can peacefully coexist with Innocent smoothies, and I would be delighted to meet up with them as we have already offered.”
http://innocentvitamins.blogspot.com/2011/03/innocent-vitamins-refutes-innocent.html

My limited knowledge of trademark law includes the topic of passing-off, and the deciding factor in many court cases is whether a reasonable person would get the two brands confused side by side on a supermarket shelf.

However, as the Intellectual Property Office IPO points out, it can be very difficult, and as a result, expensive to prove a passing off action. http://www.ipo.gov.uk/t-protect-passingoff

If you register your mark, it is easier to take legal action. This allows you to take legal action against infringement of your trade mark, rather than using passing off. Further information is available under Benefits of registered trade mark protection.

I know what I think, but have a look at the photos below and decide for yourself.

The IPO have a nice summary page on Trademarks on their website.

In summary:

A trade mark is a sign which can distinguish your goods and services from those of your competitors. It can be for example words, logos or a combination of both.
You can use your trade mark as a marketing tool so that customers can recognise your products or services.
A trade mark must be distinctive for the goods and services you provide. In other words it can be recognised as a sign that differentiates your goods or service as different from someone else’s.
A registered trade mark must be renewed every 10 years to keep it in force.

Fortunately the IPO make it very simple to search their database of registered here http://www.ipo.gov.uk/types/tm/t-os/t-find.htm

4 March 2011

IP for Innovation and Growth at the RSA London

Last night was my first event at the Royal Society for the encouragement of Arts, Manufactures and Commerce or RSA for short.

Recently they invited me to become a Fellow of the organisation which is actually a charity which dates back to 1754. So I thought I would pop along after work to one of their events. The topic was right up my street, as it was concerned with reviewing the Independent Review of IP and Growth, which is being led by Professor Ian Hargreaves.

Matthew Taylor, the chief executive of the RSA had assembled a panel of experts to consider the not insignificant challenge of how the UK can develop a technology neutral IP Framework which will drive innovation and growth by serving consumer-led markets, technology companies, and research and education, as well as the creative industries.

The RSA is particularly interested in this topic as in 2005 it published the Adelphi Charter, which called for a new deal on IP for the digital age.

Given the immensely complex nature of copyright (which was the dominant theme of the evening) and the strongly held opposing views of the audience, I was impressed by how Mathew Taylor managed to keep the event in good humour and to time.

Here are my notes from the evening:

Ian Hargreaves, professor of digital economy, the Cardiff School of Journalism

The Adelphi Charter calls for a balance between commercial interests and public rights. This should be preserved.
The digital market-place is a troubled place, and a single government review will not be able to calm the waters.
The Government’s aim is to boost the digital economy, but economics should not be the only consideration.

John Howkins, chairman, BOP Consulting and past director of the Adelphi Charter on Creativity, Innovation and Intellectual Property

Historically, the study of copyright has been seen in terms of legal rights rather than commercial ones.
6 months is too short a time to undertake an effective enquiry.
The emphasis on economic matters is in danger of pushing out social and cultural interest.
We require a strong body which can take a view on IP issues.
Governments should stop using ‘bungee jump’ approaches to IP policy. Copyright is just too important to be managed in this way.
The IPO needs to do more research into IP on a sustained basis.
We are in danger of being overtaken by WIPO.
We used to be a pioneer, but no longer seem interested in taking an international lead.
We are moving to a post platform world in terms of broadcasting. Digital media transcends platforms.

Dame Lynne Brindley DBE, chief executive, The British Library

Text and data mining – an important contribution to scientific research, but currently excluded by IP law.
Media neutral research exceptions – we need to ensure existing exceptions for analogue content are extended to digital. Many other countries already allow it.
Extend fair-dealing exceptions for print, to audio and film – the UK is behind other countries on this.
Mass digitisation – The British Library is not able to make copies of technically in copyright material. But in practice most is out of commercial interest, and often orphan works, where the owners can not be traced.
A study in the library shows as that for each ten year increment back in time the rate of orphan works increases towards 70%.
French and German governments are ahead of the UK on tackling orphan works.
The proposed orphan works bill should be re-introduced

Sarah Hunter, head of UK public policy, Google

Google thinks copyright law in the UK needs fixing – not just for Google but in the public interest.
Fair use law in the USA is relatively transparent, whereas in the UK the situation is much less clear.
Google would not have been launched in the UK, because of the copyright complexity we have.

Simon Juden, head of public policy, Pearson Plc

How to solve copyright problems?
We could introduce fair-use laws from Europe or the US.
Suggests a registry for copyright works for both books and music. This idea could be extended to all creative content.
Use metadata to mark up digital content with its copyright information. The metadata would travel with the content. So users would not need to negotiate licences with the owners.
If we could get this right, market opportunities would open up.
Technological solutions are the best approach to technical challenges rather than constantly updating the law.

Alison Wenham, chairman and chief executive, Association of Independent Music

Doesn’t believe IP is the problem. Lack of funding for high-risk ventures in the UK is where the problem lies.
IP has never been valued in the UK by the investment world.
An imbalance in safe harbours and fair-use in the last 10 years, between the US and the rest of the world.
We need a marriage of great content and great innovation.
Music industry has been unfairly criticised for lack of innovation.
Solution to music pirating: Take down illegal sites, stop pirate sites appearing on search results, stop advertising on illegal sites.

Q&A

The British Library should take responsibility for copyright in the UK, as it has experts who understand the issues.
We need to experiment with the issues to see which work best – e.g. Ideas Markets
Yahoo handed back their music licences because it was not commercially successful.
Disparaging the nature of free content on the internet is unhelpful.
We need numbers to show the impact of IP on the economy.
How do you value IP content?
What is the economic and social impact of creative content.

IP for Innovation and Growth at the RSA London 2 March 2011Last night was my first event at the Royal Society for the Arts, Manufactures and Commerce ??? or RSA for short. Link???

Recently they invited me to become a Fellow of the organisation which is actually a charity which dates back to ???. Link??? So I thought I would pop along after work to one of their events. As it turned out the topic was right up my street, as it was concerned with reviewing the Independent Review of IP and Growth, which is being led by Professor Ian Hargreaves.

The RSA is particularly interested in this topic as in 2005 it published the Adelphi Charter, which called for a new deal on IP for the digital age. Link???

Here are my notes from the evening:

Ian Hargreaves, professor of digital economy, the Cardiff School of Journalism
    The Adelphi Charter calls for a balance between commercial interests and public rights. This should be preserved.
    The digital market-place is a troubled place, and a single government review will not be able to calm the waters.
    The Government’s aim is to boost the digital economy, but economics should not be the only consideration.

John Howkins, chairman, BOP Consulting and past director of the Adelphi Charter on Creativity, Innovation and Intellectual Property
    Historically, the study of copyright has been seen in terms of legal rights rather than commercial ones.
    6 months is too short a time to undertake an effective enquiry.
    The emphasis on economic matters is in danger of pushing out social and cultural interest.
    We require a strong body which can take a view on IP issues.
    Governments should stop using ‘bungee jump’ approaches to IP policy. Copyright is just too important to be managed in this way.
    The IPO needs to do more research into IP on a sustained basis.
    We are in danger of being overtaken by WIPO.
    We used to be a pioneer, but no longer seem interested in taking an international lead.
    We are moving to a post platform world in terms of broadcasting. Digital media transcends platforms.

Dame Lynne Brindley DBE, chief executive, The British Library
    Text and data mining – an important contribution to scientific research, but currently excluded by IP law.
    Media neutral research exceptions – we need to ensure existing exceptions for analogue content are extended to digital. Many other countries already allow it.
    Extend fair-dealing exceptions for print, to audio and film – the UK is behind other countries on this.
    Mass digitisation – The British Library is not able to make copies of technically in copyright material. But in practice most is out of commercial interest, and often orphan works, where the owners can not be traced.
    A study in the library shows as that for each ten year increment back in time the rate of orphan works increases towards 70%.
    French and German governments are ahead of the UK on tackling orphan works.
    The proposed orphan works bill should be re-introduced

Sarah Hunter, head of UK public policy, Google
    Google thinks copyright law in the UK needs fixing – not just for Google but in the public interest.
    Fair use law in the USA is relatively transparent, whereas in the UK the situation is much less clear.
    Google would not have been launched in the UK, because of the copyright complexity we have.

Simon Juden, head of public policy, Pearson Plc
    How to solve copyright problems?
    We could introduce fair-use laws from Europe or the US.
    Suggests a registry for copyright works for both books and music. This idea could be extended to all creative content.
    Use metadata to mark up digital content with its copyright information. The metadata would travel with the content. So users would not need to negotiate licences with the owners.
    If we could get this right, market opportunities would open up.
    Technological solutions are the best approach to technical challenges rather than constantly updating the law.

Alison Wenham, chairman and chief executive, Association of Independent Music
    Doesn’t believe IP is the problem. Lack of funding for high-risk ventures in the UK is where the problem lies.
    IP has never been valued in the UK by the investment world.
    An imbalance in safe harbours and fair-use in the last 10 years, between the US and the rest of the world.
    We need a marriage of great content and great innovation.
    Music industry has been unfairly criticised for lack of innovation.
    Solution to music pirating: Take down illegal sites, stop pirate sites appearing on search results, stop advertising on illegal sites.

Q&A
    The British Library should take responsibility for copyright in the UK, as it has experts who understand the issues.
    We need to experiment with the issues to see which work best – e.g. Ideas Markets
    Yahoo handed back their music licences because it was not commercially successful.
    Disparaging the nature of free content on the internet is unhelpful.
    We need numbers to show the impact of IP on the economy.
    How do you value IP content?
    What is the economic and social impact of creative content.

IP for Innovation and Growth at the RSA London 2 March 2011

Last night was my first event at the Royal Society for the Arts, Manufactures and Commerce ??? or RSA for short. Link???

The RSA is particularly interested in this topic as in 2005 it published the Adelphi Charter, which called for a new deal on IP for the digital age. Link???

Here are my notes from the evening:

16 September 2010

Understanding the value of your intellectual property – one day event

An almost universal issue for both start-up and existing businesses who we see in the Business & IP Centre, is their lack of awareness and understanding of the value of their intellectual property (IP).

Whatever your business, you will almost certainly have more assets than you know of. What about your name and logo, your brand, maybe even the design of your products. Having a proper understanding of your IP means you can make it work for you as your business grows.

So my colleague Clare Harris has created a one day event designed to give practical advice on commercialising, financing and selling your IP.

Speakers range from legal experts to successful inventors, with a key note speech from Julie Meyer.

Julie is the Founder and Chief Executive of Ariadne Capital, an investment company which backs entrepreneurs. Ariadne’s recent successes include Espotting [now MIVA], Kashya [sold to EMC], and Skype [sold to Ebay]. Before founding Ariadne, Julie founded First Tuesday, the leading network of entrepreneurs. Julie is a World Economic Forum Global Leader for Tomorrow, an Ernst and Young Entrepreneur of the Year and a BBC ‘Dragon’.

The day will be chaired by Real Business magazine editor and business guru Matthew Rock.

Programme:
Patents, Trademarks, Copyright – What IP strategy should you adopt? – Robert Pocknell, Keystone Law

IP support services offered without charge by the British Library – British Library

IP support services offered by the Intellectual Property Office (IPO) – IPO

From invention to commercial success; a case study – Jim Shaikh inventor of the award-winning Yoomi bottle

Lunch
Selling IP to big business – Michael Addison, Proctor & Gamble

IP and investment – Julie Meyer, Ariadne Capital and BBC ‘Dragon’

Panel discussion, chaired by Real Business Editor, Matthew Rock