The High Court has ruled that Marks & Spencer (M&S) was liable for trade mark infringement when in 2008 it began using the name of “Interflora”, an international flower delivery network, as an online advertising keyword to direct internet users to its own competing service. When users typed “Interflora” into Google, they were presented with the ads for the M&S flower delivery service.
The practice of using a rival’s trade marks as online keywords to attract the customers and potential customers of that rival was, and remains, a common commercial strategy – and yet it is now also a risky one. According to the High Court, M&S had infringed the “origin function” of the Interflora trade mark because its advertisements “did not enable reasonably well-informed and reasonably attentive internet users, or enabled them only with difficulty, to ascertain whether the service referred to in the advertisements originated from [Interflora or M&S]”.
Traditionally, it has been extremely difficult for trade mark owners to prove infringement in cases such as this. However, the Interflora case has lowered the bar somewhat by confirming that in double-identity claims – which concern the use of a mark which is identical to the registered mark in respect of goods or services which are identical to those covered by the registered mark – the burden of proof falls not on the claimant to prove infringement, but on the alleged infringer to prove that its ad did not cause confusion.
How might such confusion be avoided in the first place? One option would be to make a direct comparison between the services of the two businesses in the online ad itself, perhaps by claiming that the advertised service is better value than the one offered by the trade mark owner. A more simple option would be to state expressly that the two businesses are not connected. However, neither approach is particularly attractive – quite apart from the prospect of devoting valuable advertising space to a rival, the advertiser would also need to comply with European comparative advertising laws (Directive 2006/114/EC) by ensuring amongst other things that the ad is not misleading, does not create confusion and that any comparison can be backed up.
The ruling in Interflora is no doubt a boon for trade mark owners. However, potential claimants must recognise that Interflora’s case was strengthened by the peculiarities of its business model. Interflora is a network which relies on large numbers of local florists to fulfil customer orders around the country. It is therefore quite possible that reasonably well-informed and reasonably attentive internet users would form the view that M&S was part of this network. However, this scenario is rare; it is far more likely that claims such as this will be fought between businesses which are well-known competitors and, in these circumstances, the potential for confusion is far more limited.
Furthermore, the standard of sophistication of the reasonably well-informed and reasonably attentive internet user is a significant factor in these cases. In the Interflora case, the court considered that 2008 internet users did not understand the nuances of keyword advertising. One could argue that users in 2013 are far more sophisticated than in 2008, and are only likely to become more so. Theoretically, therefore, cases which turn on the sophistication of internet users may be harder for claimants to make out in future.
We live in the age of the citizen journalist. Sharing news and opinions with the world on Twitter is the norm. But in the eyes of the law, there's no difference between a professional journalist and an amateur, which is a potentially scary thing.
If you retweet a story that turns out to be untrue and defamatory you can be found liable for publishing the defamation. And contrary to popular belief, adding "allegedly" does not exonerate you.
Famously, Lord McAlpine, who was the subject of a libel, threatened to sue Sally Bercow (the wife of the speaker of the House of Commons), comedian Alan Davies and about 20 other Twitter users for "publishing" the story. Defamation can occur even if you do not mention the subject by name. Neither do you have to repeat the substance of the allegation. You can be liable for what's known as "defamatory innuendo". In the McAlpine matter, Sally Bercow's tweet was "Why is Lord McAlpine trending? *innocent face*". Ms Bercow has since deleted her Twitter account.
Libel is not the only danger. Inappropriate Tweets have landed people in hot water for numerous offences including incitement of racial hatred, sending a "menacing electronic communication", breach of confidence, copyright infringement and contempt of Court (for revealing matters made secret by a Court Order).
If you are to encourage those you work with to tweet in their professional capacity, a social media policy is therefore essential. Such a policy needs to strike the appropriate balance between permissiveness and restriction. The balance may weigh differently according to the culture of the organisation and the nature of its services, but even so, the policy needn't be a long and complicated document. Microsoft's Social Media Policy is, reportedly, just three words long. It reads "DON'T BE STUPID".
Imagie supplied by: freedigitalphotos.net
Hidden amongst the Enterprise and Regulatory Reform Bill, in between provisions relating to Cartels, Mergers and Anti-Trust, lies a fundamental change to copyright law and the protections of designs. This provision deletes Section 52 of the Copyright, Designs and Patents Act 1988 which limits the copyright protection given to artistic works which have been produced through an industrial process to 25 years. With its deletion, those designs, like all other artistic works, will now benefit from copyright protection for 70 years after the end of the calendar year in which the designer dies - quite some extension.
Unsurprisingly, designers (and even more so, the estates of recently deceased designers) are thrilled with the extended protection this change would give their designs. Not so happy are the many small businesses that make their living from reproductions of designs whose copyright protection has expired. Fans of reproduction "retro" from designers recreating vintage clothing to retailers of replica designer lamps will be dramatically affected. The reproduction furniture industry will also be particularly hard hit by the changes being tabled. These businesses make their money by producing furniture based on classic designs over 25 years old. Under the new rules, the works they will be able to replicate will have to be truly timeless with the designs now needing to be appreciated 70 years later at the very least.
An interesting aspect of these changes will be the, as yet unpublished, transition provisions. The Government has said that they will phase in the new rules if the Bill is passed, but what will happen to the replica Charles Eames chair sitting in pride of place in the furniture showroom across the street from my office? If it doesn't sell quickly, will a licence now need to be sought from Eames' estate? The impact on other artistic works is also interesting to ponder. Would a photograph of an old chair now become an infringing reproduction of the chair's design?
The Enterprise and Regulatory Reform Bill contains other potential revisions to our copyright law, not least because it opens the door to a number of new exceptions to infringement. Those changes have attracted more press attention than the abolition of section 52, but this measure will have a direct impact on many businesses, with losers and winners on both sides.
A near unanimous voice of dissent towards the controversial Anti-Counterfeiting Trade Agreement (“ACTA”) agreement echoed through the corridors and hemicycle of the European Parliament in Strasbourg yesterday afternoon following the final discussions and debate before the highly anticipated vote today at noon.
The usual divide along bloc lines was near invisible. In fact, it is rare that an important agreement such as this garners an overwhelming cry of ‘no’ from nearly all the parties represented at the EP, with a majority of Members of the European Parliament expressing serious concerns about the anti-counterfeiting treaty.
There are valid concerns that can be seen once you take a closer look at the treaty; after all, the devil is in the detail. There is a fear that Internet Service Providers will be turned into sheriffs that are forced to spy on their users, having to monitor their customer’s every movement; a fear that customs officers will be allowed to rummage through our bags and go through our computers and that search engines could be closed for aiding and abetting. Many support the aim of the treaty but not the detail.
The multinational treaty has also been criticised as being the product of decisions made behind closed doors and for its vagueness. Any ambiguity in the text of the agreement could not of course guarantee protection against an abuse of European Union citizen’s civil liberties. With the text of the agreement open to uncharitable interpretation, the majority opinion has been that it would be irresponsible to give ACTA the green light as it stands.
Parliament’s rapporteur David Martin pointed out that there is significant opposition towards the treaty amongst two predominant groups: 1) the under 25s - the internet generation - who believe that the treaty does not adequately reflect their concerns and 2) from people in central and eastern Europe, who know what it means to have their freedoms curtailed.
Another valid point raised yesterday was, why has this treaty ignored China & India, the two largest sources worldwide of counterfeit goods? ACTA excludes 95% of countries that counterfeit goods, which is why some critics talk of the treaty as an ‘empty cloud’.
Most significantly, the treaty has been criticised for jeopardizing freedom of expression and privacy of communications with the text of the treaty explicitly prioritizing private sector measures aimed at copyright protection. The treaty places the interests of rights holders ahead of free speech and privacy. In addition, parties have voiced concern that ACTA imposes unduly harsh obligations that far from reflect the EU’s founding principles of free market exchange, democratic government and the protection of civil liberties. As Niccolò Rinaldi (ALDE, Italy) said this afternoon “the internet is a public good, like biodiversity and water. It is an area of individual freedom that should not be threatened by any type of rules”.
We live in a digital age where we need to find a solution - other than ACTA - so that individuals and businesses, both small and large that are based on defending IP and those that are based on sharing IP can coexist
Image by: www.freedigitalphotos.net
I had an interesting conversation with my marketing colleague (Clare Adshead-Grant) the other day. She was talking about the difficulties of service based organisations have in truly differentiating themselves. “Ten years ago,” she said, “something like over 85% of law firm's corporate colour was blue. That's not the case now - they have differentiated themselves by changing colour! Pinterest has hooked my interest as a tool where a company could visually represent what that company is really like, both from a client and an internal perspective. You could appeal to both new clients and potential employees.” As a marketer she was clearly interested in this idea. “The only problem is – what about the copyright issues?” she asked.
My response was that I wouldn't want to see my firm on Pinterest unless its use was very carefully controlled. It encourages its users to reproduce other people’s images and then lays the blame at their feet if their actions turn out to be infringing. Unless you have the permission of the copyright owner in the images you Pin you are likely to be infringing copyright in the images by making an unauthorised reproduction. US users might have a defence under US “fair use” provisions, but the UK has “fair dealing” which is much narrower and unlikely to provide a defence.
“Ahhh, but how about if we used images that we had the copyright to and/or copyright free images where we could link to the creator?” she counteracted.
In my view, this raises two issues:
Images that we have the copyright to
Copyright free images
Most of what people think of as “copyright free” actually isn’t. An artistic work is only copyright free if copyright has expired. Copyright in an image lasts for the life of the creator plus 70 years after the end of the year in which they die. Also, the process of touching up and scanning an old image to put it online may create a new copyright in the digital image, so you are highly unlikely to find truly copyright free images on the Internet.
However, there are “royalty free” images available online (images that can be purchased for a one-off cost without paying usage based fees) and images where permission is granted to use them entirely free, such as under a Creative Commons licence. But you have to be careful with those licences as they often do not allow every kind of use. In particular, if the licence prohibits “commercial use” you will have to determine whether your use on Pinterest to promote your business is a “commercial use”. It may be.
Conclusion is that if you are in the UK, then you do need to be mindful of the potential copyright infringement that you could be making on behalf of your company. Whilst I agree that this platform has the potential to help service based companies better articulate and represent themselves in a way that is more accessible by the general public and their target market, the use of it really does need some tight controls in place.
Image from www.FreeDigitalPhotos.net
A tiny island is taking the lead.
The Bailiwick of Guernsey, an island 30 miles off the coast of France, is home to just 65,000 people. It is loyal to the British Crown, but is not part of the U.K. or a member of the European Union. That independence gives its legislature a degree of freedom which has allowed it to become a successful off-shore tax haven. Now, it is seeking to establish the world’s first registry of image rights.
The full article is published in Inside Counsel and can be viewed here.
Robert can be found on Twitter @tweetlands
Image from Free Digital Photos.
It’s Crunch Time: The deadline for “Cookie Law” compliance is upon us – are you ready?
The new EU Directive on Privacy and Electronic Communications came in on 26th May 2011 but the Information Commissioner’s Office granted a one year grace for compliance. Website owners therefore have until 26 May 2012 to ensure their sites are compliant.
The new rules focus on cookies and their ability to track user behaviour. Under the old (2003) rules websites merely had to warn that cookies were being used. That is no longer enough.
In order to comply with the new directive, all websites must obtain the consent of users to store cookies on their device before any cookies are downloaded, unless certain limited exemptions apply. There is currently some debate about how businesses should interpret the new rules.
Have you taken steps to ensure your website is compliant?
If not, FSI can assist with practical, commercial legal advice. We are advising clients daily on how to navigate the new rules.
For assistance please contact Robert Lands on firstname.lastname@example.org or 020 7344 7664.
Robert can also be reached at @tweetlands
Image by Paul.
Officials are carefully watching for all forms of infringement at London’s summer games.
The Olympics are coming to London this summer and everyone wants a piece of them. Back in 2007, local butcher Dennis Spurr decorated his "Fantastic Sausage Factory" with a sign featuring "2012" and sausages in the shape of the famous Olympic rings. But his signage didn’t survive long, as he was ordered to remove it soon after. The full article can be seen on the Inside Counsel's website.
Robert can be found on Twitter @tweetlands
Image by chanpipat.
Companies that are too aggressive in enforcing their IP rights may suffer negative publicity.
Lawyers like to keep busy. But sometimes a good lawyer will advise his or her client to back off, no matter how strong the claim might be. This is undoubtedly the case in IP litigation, where a misjudged cease and desist letter can be disastrous. In the remainder of the article, I explore the different approaches that can, and have been, taken by IP rights owners. The full article can be found on the Inside Counsel's website.
Robert can be found on Twitter @tweetlands
Image by Phaitoon.
Is the U.S. fashionably late to the party?
Contrary to popular opinion, fashion is not just about branding. Believe it or not, the style, quality and originality of the product are actually quite important too. Is it not therefore important that we should have laws to protect a product’s uniqueness that are comparable to the trademark laws that protect the brand? In the remainder of the article (which was published in Inside Counsel), I explore the differences between the U.S. and EU approaches, as well as whether design protection in the U.S. would cripple the industry as opponents are suggesting. To read the full article follow the link to the Inside Counsel website.
Robert can be found on twitter @tweetlands
Imagery by DomDeen.