You’re likely to be thinking about a name, commissioning a website and logo to launch it, and considering how you will market it and so on.

Relatively few people think about the legal aspects until they’ve already chosen a name, created a website and maybe even finalised their branding. When they do turn to a lawyer it’s typically to register a trade mark, or perhaps because they wonder whether there’s anything they can do to protect their business concept.

I often ask myself why do people assume lawyers should be approached at the END of a branding or website project?  It’s so strikingly different to what happens in other areas of business life. If you were about to build a house, you’d first contact a lawyer to check that you could buy the plot of land. You wouldn’t simply commission builders and take your chances that you might later secure rights to the land. The risk that someone might pop up to claim better title to the land and throw you off their turf wouldn’t be one most people would willingly entertain. Also, you’d want to know whether other people have lodged planning permission to construct buildings or roads, and whether you have all the rights of access that you need and so on.  You’d know to first sort out all these ownership issues.

Maybe because intangibles are invisible people don’t really understand that there are laws – called intellectual property or IP – which govern their branding projects.  The name you choose is the branding equivalent of your plot land, while other branding elements such as website projects are like the buildings you construct on the land.  Intangibles are every bit as important, if not more important than physical assets of your business.

While the likes of Coca Cola have access to large branding or advertising agencies and highly specialist legal teams when making their branding decisions, small and medium size businesses don’t often have the benefit of timely proactive advice to help them to make good branding choices.

I suggest you take the time to understand the basics of IP law relating to brands so you find a suitably qualified lawyer to help you to achieve a strong brand.  The requirements for powerful intellectual property rights and powerful brands are typically the same.

A specialist IP brand solicitor can advise whether the name is a good one from a legal perspective because they’ll have day to day experience of trade mark registration work, copyright issues and website projects. To get value for money from an IP brand lawyer consult them BEFORE you pick your brand name, logo and tagline or commission your website.  Nothing protects a brand better than a well-chosen name or tagline. This is unfortunately not well understood that it’s the choice that determines how easy or difficult you will find it to protect your brand, and how costly it will be.

Most people assume their branding or internet professionals know all the necessary law relating to brands and websites, but they don’t. That’s not their focus or expertise. Just as you wouldn’t engage architects expecting them to also check that you can own the land on which you intend to build your house, or to know what type of locks you need to install to burglar-proof it, so it’s inappropriate to expect non-lawyers to take care of your IP rights.

The legal issues around brands and names are surprisingly complex.

Branding and internet professionals are primarily thinking about marketing, communications, and visual identity when creating websites or selecting brand elements like names and taglines for you. They may be able to do some rudimentary checks themselves to see whether a proposed name or logo is already registered by someone else, but their focus is on whether the name, tagline, logo or other component would be effective as marketing tools. An IP branding lawyer would know whether it’s a strong name which could support your business plans, as well as what checks are necessary both in the UK and elsewhere if your plans include an international dimension. It’s certainly not as straightforward as searching to see whether the same name or logo is already registered.  Similar names or logos could also pose problems, and there are a host of other considerations which your lawyer is well placed to advise upon.

A real separation exists between the worlds of branding and the law. To get a powerful brand that’s legally effective involves a close collaboration between IP brand lawyers and branding professionals. Currently it is not the norm at the smaller agency end to have such collaborative working. So whether you yourself choose your name or get a branding agency to help you, make sure you don’t end up with a weak brand name. This reduces its value as a long term IP asset.

Some name choices would be the equivalent of building a house which others could regularly break into and steal from.  I’ll explain why by taking the dance called ZUMBA as an example. The business that created this dance has given it a distinctive name and trade marked it in many countries worldwide. This means that anyone wanting to provide ZUMBA classes will need to be accredited by the business. Had the company instead chosen a descriptive name for their dance, such as NEW LATIN DANCE, they probably wouldn’t have a business now. Even if they’d managed to register this name as a trade mark in one country they’d have a tough time registering it in another and ultimately no matter how much money they spent, they would have not be able to prevent other people from offering classes featuring their invented dance.

So, for a business such as ZUMBA it would have been a bad idea to choose a descriptive name.  Instead of collecting revenues, they’d have been spending a fortune on litigation.  So, if you’ve got big plans for your business, don’t leave it till the end of your branding project to consult an IP brand lawyer.  That would reduce the legal input to one of registering and protecting your IP rights, such as they are.  It would be too late to give you effective advice.  Registering your own trade mark and not getting any legal advice at all is an even worse decision because few people manage to properly cover the full scope of their business when they do their own registration.  Your trade mark is important, so consult a specialist brand lawyer.  Contact me at Azrights or look out for my book Legally Branded out in the spring of 2012.

Many people assume copyright does prevent the copying of ideas.  However, copyright in written materials only prevents others from copying your text word for word.  It does not stop them using the ideas embodied in your text and communicating them  in their own words.

For example, copyright law cannot be used as a tool to stop your competitors setting up a similar line of business.   So writing down your business ideas will not stop others using those ideas.  Only a patent can give you a monopoly over ideas (assuming those ideas take the form of a product that is capable of being patented).

It’s important to note that while copyright does not prevent others using ideas embodied in your materials, there are some forms of copying which though not word for word copying, could nevertheless amount to infringement of other people’s copyright.  For example, if you take so much detail from a work that it could be argued that you have copied a substantial part of it.

The Ipkat today reported ‘The soccer side and the flip side: copying biographical works’ a copyright decision (Jodgon and Jarvie v Isaac and Notting Hill Movies (2011)) which helps illustrate this concept of substantial copying well.   The question in that decision turned on whether a film script of the book Flipper’s Side was an adaptation of it.

Only the copyright owner has the right to create an adaptation of a work.  It is worth reading the details of the case on Ipkat In deciding this question Judge Birss said

‘When the book and the DADM script are each considered as a whole, the DADM script is in fact very closely related to the book in terms of its plot, characters and the striking incidents and events which take place. The text is almost entirely different but nine episodes in the DADM script revolve around striking events present in Flipper’s Side and five more include notable events from Flipper’s Side as important parts of the episode. In as much as it is possible or meaningful to quantify such things, in my judgment roughly half of the dramatic incidents in the DADM script derive from Flipper’s Side.’

So having read both texts, the judge decided the script amounted to a substantial copy of the book because the main characters, many of the settings and contexts in which the events took place and good number of the incidents themselves were featured in the script.

In conclusion, if you consider that someone has copied your work it’s worth noting that even though there may not be word for word copying, if a lot of detail has been copied  you may want to take legal advice.

Limitation periods control the length of time a claimant has to bring legal action, for example following an infringement of their copyright, and these periods vary from country to country.  In the UK, the relevant period is 6 years from the date on which the cause of action accrued for copyright infringement.  The upshot of this is that claims for compensation will only stretch back 6 years – so if you wrote a book in 2003, and it was copied and resold without your permission until the end of 2005, by the end of this year it would no longer be possible to bring a claim for the profits made from that infringement.  If the infringement continues, compensation will only be available in relation to a rolling 6 year period.  What is important is to remain vigilant.  Services like Copyscape allow you to scan the web for reproductions of your content; for images the equivalent is available through Google Similar Image Search, or Tineye; but for works sold offline, it may be less straightforward.

A recent dispute between Georgia-Pacific and Kimberly-Clark highlights the importance of these issues when it comes to securing protection.   The case involved alleged infringement of trade marks held by GP relating to the quilted design of toilet paper, a product they have been selling for over 100 years, and which they had improved with a diamond-shaped quilted design 20 years ago when also rebranding it as Quilted Northern.  In addition to trade mark protection, GP had also obtained utility and design patents for their innovative tissue, a strategy which would arguably be their undoing.

Notable here is that some of the IP protection secured by GP had expired by the time the dispute arose, however, as rights which can be renewed indefinitely, their trade marks continued to be in force.

In the early 1990s, Kimberly-Clark also added a quilted design to its toilet paper, sparking a dispute between the two companies involving 675,000 documents and more than 12 witnesses.  Crucial in determining the existence of trade mark infringement was whether the subject of the trade marks was functional.   Trade marks are used to distinguish the origin of goods, and under US law a defence is available to alleged infringers of a trade mark if they can show that the mark is functional.  In this instance the Court found clearly in favour of KC.

The Court’s finding that there was no trade mark infringement rested in part on Georgia-Pacific’s proprietorship of several utility patents covering the quilted design.  These operated as evidence that the design was in fact functional.  In case law cited by the Judge, it was explained that a design is functional:

‘if it is essential to the use or purpose of the article or if it affects the cost or quality of the article’

In GP’s utility patent, the quilted design was claimed to improve the perception of softness and bulk, and reduced ‘nesting’ and ‘ridging’.

The Court stated that ‘if a design is functional the owner cannot trademark the design and block innovation. Georgia-Pacific, whether intentionally or not, patented their Quilted Diamond Design and claimed it to be functional. They must now live with that choice and can benefit only under the protection of a patent, not that of a trademark.’

Another key factor in the decision was the advertising strategy employed by GP.  The Court looked queried whether the advertising ‘tout[ed] the utilitarian advantages of the asserted design’, finding evidence of functionality in GP advertising, which included the following claims:

-          Quilted to Absorb;

-          Quilted to create thousands of places for moisture to go;

-          Our two softest layers of premium tissue are gently quilted together to give you and your family exceptional softness and comfort; and

-          Quilted Northern Ultra with a unique new quilted design for more quilting and comfort than ever before.

This case offers an important lesson about patents and trade marks products.  By filing patents covering or related to the functionality of the quilted designs, the company made it far more difficult to argue a case for trade mark infringement.  Similarly, by marketing the product based on the functionality of the quilted diamond design, GP further weakened its argument.

While some might argue that GP effectively shot itself in the foot, on the other hand could it not simply be the case that irrespective of the IP registration strategy adopted, protection of the quilted designs belongs in the realm of patents.  That the utilitarian properties of the design render them subject to more time-limited protection than the indefinite security offered by the trade mark regime.

Either way, the dispute is a timely reminder that marketing, design and legal professionals need to cooperate in order to manage risk effectively, make informed decisions, and succeed in the marketplace and the courts.

The pair founded the Pirate Bay back in 2003, and the site quickly became infamous as a place to find and illegally download copyrighted content including music and movies.  The site relied on BitTorrent, a protocol making it possible for thousands of users to share the burden of distributing files, and meaning that the Pirate Bay did not need to host any copyrighted material itself.   Instead it simply offered a search facility allowing users to find out what content was being shared, and where to get it.

In contrast, Bayfiles aims to provide users with faster downloads and increased reliability through the HTTP protocol.   HTTP is used when retrieving webpages and the vast majority of other material found by typical users on the world wide web.  It involves downloading files straight from a server.  So, unlike with the Pirate Bay, BayFiles intends to directly host the files being shared.  An oft cited argument against alleged infringement of services like the Pirate Bay is that they do not store or transmit infringing content; should Bayfiles be used by pirates this will not be the case, and it might seem therefore that there is an increased risk of liability for infringement.  Out of the frying pan and into the fire perhaps?

Co-founder Fredrik Neij explains the choice of HTTP saying ‘BitTorrent is increasingly throttled or even filtered by ISPs, HTTP usually is not’.  On the subject of copyright infringement, BayFiles have said that they will follow potential complaints and take down files that might infringe copyright when identified. They intend to comply with the Digital Millennium Copyright Act (DMCA) and have registered DMCA officers on board to handle complaints.  Their terms of service explicitly provide that content which violates third party copyrights will not be accepted, and that they will terminate without notice and without recourse, accounts of holders who are repeat infringers of copyright.  The site will log the IP addresses of uploaders, and disclose these if legally obliged to do so, but details of downloaders will not be retained.

A variety of similar services exist, such as MegaUpload and RapidShare, and perhaps through diligent compliance with copyright law, and prompt action in response to notices of infringement they continue to operate despite hosting a range of copyright content.   That is not to say that they haven’t come under fire – as illustrated by actions in both the US and Germany.

The founders have described that their ultimate goal as making sharing effortless and efficient while maintaining privacy.  They note:

‘Storage and transfers on Bayfiles also preserve users’ privacy. And another advantage is that users can be sure that content stays up, which is important for personal backups. It also guarantees that other personal files such as your MP3 collection are always accessible; so users are able to stream it live to any device.’

Admirable goals, copyright compliance and easy file sharing for all.  Despite the founder’s aims, some remain skeptical that the site will avoid infringement.  A lawyer with legal firm Cobbetts told the BBC “I suspect what they’re concentrating on is the idea that if it can be shown that they’re infringing or facilitating the infringement of an identifiable copyright work, they will comply with the requirement to notice and take down in time ….  So there will be a lot of infringement – but they are basically saying if you catch us we will cough’.

Nevertheless, the new venture is a far cry from a site which took a somewhat less positive view of the rights of copyright owners, and the work of their lawyers [see here].

Image by Si McMahon, click for Flickr

Further progress was made in the Newzbin saga last week when the High Court ordered BT to prevent its subscribers from accessing the website.  You may recall that the site had hopped abroad to the Seychelles, escaping the reach of the UK courts (or so it thought).  However, despite its emigration, the Motion Picture Association has succeeded in finding another way to attack its user base.

The blocking order, the first of its kind in the UK, requires BT to implement technology similar to that used to block sites featuring child abuse.  The technology works via a mechanism similar to email SPAM blockers you might use yourself, or web browser plugins used by many to hide adverts on web pages.  The ISP will return to the courtroom in October to iron out the details, but in the meantime the case is suggested by commentators to have been partly behind a recent Digital Economy Act (DEA) u-turn.

One of the significant provisions of the DEA, heralded by some as a key weapon for copyright holders, was intended to allow the blocking of infringing websites.  Not implemented in full by the DEA, the details were still to be finalised by secondary legislation.  However, following an announcement by the Business Secretary Vince Cable it seems this may never happen, as Ofcom is to review the policy.  Echoing the not-uncommon opinion that the DEA is outdated before it has even had an impact, Mr. Cable said “We’ve discovered that the drafting of the original laws, which took place a year or so ago, were not tight”.

A real problem with the intersection of copyright law and technology is the phenomenal pace at which technology develops, in stark contrast with the gears of the legislature.  A mixed bag all round, with the film industry cheering the result of the Newzbin case on the one hand, but unhappy with the possible loss of the DEA’s teeth on the other, some believe that blocking measures may not even be feasible with BT’s current technology.

James Blessing, a member of the Internet Service Providers’ Association remarked that “Trying to put Newzbin and other sites into the same blocking technology would be a bit like shutting down the M1. It is not designed to do that.”

Popular concerns include flood-gates and censorship – “What will qualify a site to be worthy of blocking? Who makes the decisions about what people are allowed to see online?” asks Peter Bradwell, a campaigner for the Open Rights Group, who says of the ruling: “if the goal is boosting creators’ ability to make money from their work then we need to abandon these technology naive measures, focus on genuine market reforms, and satisfy unmet consumer demand”.

While Mr. Blessing’s statement may be true as far as CleanFeed goes, the technology will likely be available to implement the blocks in the near future. However, as with most DRM (even DRM applied to an entire country) those with enough determination will find a way through the wall.

In the meantime, it seems that the internet, an invention aimed at breaking down barriers, is slowly becoming cluttered with ‘walls’ – firewalls (not criticising virus protection); pay-walls; the ‘great firewall of China’; and now this.  Where next?

Under ss.51 and 52 of the Copyright Designs and Patents Act 1988: copyright in a design document is not infringed by making articles to that design provided that they are not themselves artistic works (51); and, where a design is exploited through the (licensed) manufacturing of articles derived from it, a period of 25 years from the first exploitation this is no longer an infringement (52).  However, if the helmets themselves were sculptures, artistic works, then any copying of them might be classed as infringement even 30 years after Star Wars’ release.

On this crucial point an analogy was drawn with the use of prop military helmets in film portrayals of historic wars, the difference in the instant case being that the war was entirely fictional.  However, despite the imaginary nature of the Stormtrooper characters, The Court explained that the work of art created by the appellants was the Star Wars film, and the helmets were ‘utilitarian in the sense that [they were elements] in the process of production of the film’ rather than artistic works in their own right.

Some commentators observe that the defences mentioned above set the UK apart from other jurisdictions, and allow for less substantial protection of creative works created in the course of producing a film.  An important distinction here is between the typical duration of copyright protection, lasting for 70 years from the death of the author, and the much shorter period where derivative works are commercially exploited – 25 years following their being marketed.

Aside from the characterisation of Stormtrooper helmets as utilitarian, another interesting finding emerged from the decision – that claims for infringement of foreign copyright are justiciable in UK courts.  Although Ainsworth succeeded in his defence against infringement of UK copyright, the Supreme Court held that the UK are entitled to take jurisdiction over a UK defendant in a claim for infringement of foreign copyright, and the eventual fallout of the case on this point remains to be seen.

The case was referred to the Court of Justice by Mr. Justice Arnold for a preliminary reference.  Now the European Court has ruled that eBay may be responsible for trademark breaches on its websites.

Specifically eBay would be liable if it ‘played an active role’ that would ‘give it knowledge of or control over the data relating to the offers for sale’.

The court said ‘When the operator has played an ‘active role’… it cannot rely on the exemption from liability, which EU law confers, under certain conditions, on online service providers such as operators of Internet marketplaces’.

Currently eBay only blocks ongoing auctions if suspicious activity is reported, but now eBay and other companies like it will have to be more vigilant.

L’Oreal originally complained about trademark infringements of their brand in 2007, when they sent a letter articulating their concerns about sales of counterfeit products on eBay’s websites.  They asked eBay to address the issue.  When eBay did not do enough to satisfy L’Oreal, the cosmetic manufacturer sued.

L’Oreal argued that eBay should be liable due to its active engagement with the sale of goods.  eBay used L’Oreal’s name as a sponsored link to lead users to cosmetics that infringed L’Oreal’s trademarks.

The case has been described as ‘one of the most exciting and potentially important trade mark law disputes to be heard in England and Wales in recent times’.

This new ruling by the European court will have an impact on both brand owners, and those selling goods online.  L’Oreal said in a statement that it is ‘a step towards effectively combating the sale of counterfeiting brands and products via the Internet’.

The decision means it will no longer be purely the responsibility of trademark owners to protect their own brands online,  as online market operators will also have a role to play.

It should be noted that now it is up to the referring court to apply the EU court’s ruling to the facts of the case.  As Jeremy Phillips puts it: ‘It is likely that the decision will then be appealed whatever that court does’.

These difficulties are widely acknowledged and understood, but there is another feature of information which seems set to cause further difficulties for rights owners.  New and varied ways of using it.  While the bandwidth available to the public has had a substantial impact on the prevalence of copyright infringement online, another, similarly important factor has been the introduction of new formats, new ways of using data.  An early illustration is the availability of home video recorders, allowing members of the public to record and share video content.  Ubiquitous adoption of the  MP3 format made it easier for people to share music online.  Now, 3-dimensional printing promises to allow the public to copy actual physical goods.  New 3D printers are coming down in price, and give users the ability to print out products which have been downloaded from the internet, or scanned in.  A recent article by the Economist notes that this technology is likely to make it ‘easier for imitators as well as innovators to get goods to market fast‘ as good ideas will be more readily reproduced.  one website, Thingiverse.com, has already been issued a take down notice for offering the means to print out a 3D ornament, and the recent  Hargreaves report raised concerns over the possible implications of 3-D printing as convenient engines of piracy, but simultaneously vital tools in many trades, recommending further investigation.

Another interesting development is increasing interest in DIY genetics, an esoteric field traditionally restricted to specialist laboratories, but where more affordable technology may enable the public to develop their own biological products, or copy existing ones.  It is also not far fetched to envisage affordable machinery becoming available which enables the public to develop, produce and share pharmaceuticals.

These emerging technologies have the potential to revolutionise accessibility to treatments, drugs, and products where cost was previously prohibitive, but they also mean new challenges for rights owners who may find it increasingly difficult to protect their intellectual property.