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Yosemite National Park- A Cautionary Tale

A case in the US caught my eye this week. It involves the Yosemite National Park and a third party contractor who, for over 20 years, provided catering and other services to the park and its famous hotels and restaurants.

The contract went to tender last year and the incumbent lost and then promptly sued the park and the newly appointed service provider for trade mark infringement. The claimant argued that when it first won the contract it paid a significant premium to obtain various trade marks owned by park, including the name of the park itself.

It now values these rights at $51 million and is preventing any other party from using them until this sum is paid. Yosemite is strongly denying the claim. For fuller details see here

Unfortunately the legal outcome won’t be known for some time but it does raise the key issue of Intellectual Property ownership.

When advising clients on contracts with third parties the first question I always asked was ‘who will own the IP?’ It might seem obvious but as Yosemite’s problems highlight, confusion can reign.

Whether you are collaborating to create IP, partnering to promote it or sharing to monetise it, it is crucial the contract is crystal clear on who owns which rights and in what capacity.

Fighting over IP is an expensive business, so don’t get caught out.

 

Unhappy Birthday -Addendum

Following on from my earlier post and, as you may have read, Warner Chappell have lost their rights to the copyright in ‘Happy Birthday’. They can no longer extract a license fee for its public use and, in fact, could have to pay back millions of $ in royalties it has received over the years. A jolly good outcome for lovers of the song around the world.

Expect the famous refrain to pop up in numerous films and TV shows over the coming months…

How strategically do you think about your IP?

The Times has today published an extensive supplement on IP. It is well worth a read and can be found at https://raconteur.uberflip.com/i/570481-intellectual-property

Safeguard IP’s contribution can be found on page 4, where we comment on what you need to do to maximise the value of your IP.

 

Unhappy Birthday

Happy Birthday’ is probably one of the best known songs in the world. Sung at parties for young and old, the familiar lyrics and catchy tune repeatedly ring out in homes around the world. But if you think about it, it is surprising how uncommon it is to hear the refrain included in films, TV programmes or on the radio.

The reason for this is simple to explain.

For decades, Warner/Chappell the huge music publishing house has been charging a licence fee to those wanting to perform the song publically. How can this be so, you might ask? Well, Warner/Chappell says it acquired the copyright in the song as part of a $25 million acquisition in 1988. This claim has allowed it to earn millions of dollars each year in royalty payments as a result.

However, their claim is finally being challenged in the US courts.

A film maker making a documentary about the song (I can imagine a lot of birthday parties being involved) was asked to pay Warner/Chappell a $1500 fee for using the song. Failure to do so would have led to a claim for copyright infringement. Believing that the song, the origins of which are over 100 years old, should be in the public domain, the film maker Jennifer Nelson took the brave decision to challenge Warner/Chappell rights.

The case, which is nearing its conclusion has not been kind to Warner/Chappell. Initially the legal debate centred around whether title had been passed correctly to Warner/Chappel but midway through case, its lawyers were forced to disclose a document it had previously ‘forgotten’ to disclose which appears to shoot a huge hole through its rights. The document, a songbook dating from 1927 (see extract below courtesy of TechDirt) shows the lyrics, melody and also a “special permission” notice that appears instead of the (c) notice that would be required to preserve the copyright:

This extract indicates that the original 1922 copyright in the song had already expired by 1927, which would mean that Warner/Chappells has no rights in the song.

This smoking gun has been put before the Judge who is considering whether to throw out Warner/Chappells defence. If it chooses to do so its gravy train is over and you can expect to hear the familiar song ring out in public ad nauseam.

Such a ruling would be welcome, but it does raise the serious question of whether it is right that a song which is almost 100 years old can be protected by copyright. Copyright Law is, in theory, about incentivising creativity but this case shines a light on how it can have the completely opposite effect.

 

Meet Safeguard iP at BIBA

Safeguard IP will be attending the annual BIBA conference and exhibition at Manchester Central on 13 & 14 May 2015.

Please come and visit us at stand D69.

We would be delighted to talk to you about our insurance solutions for broking intellectual property.

For further information, please contact David Bloom at dbloom@safeguardip.com

The benefits of IP insurance explained

Safeguard iP director, David Bloom will be speaking at a conference hosted by the UK Intellectual Property Office on IP Insurance and how it builds confidence to innovate. The conference which is for insurance industry professionals and IP specialists is taking place on 2nd July 2015 at the Association of British Insurers, 51 Gresham Street, London, EC2V 7HQ. If you would like to attend please email: sme@ipo.gov.uk

Content: the conference will help business representative organisations understand:

  • The various types of IP insurance available;
  • The low-cost alternative dispute resolution options that are available including Mediation and Expert Opinions;
  • The insurance claims process and;
  • How the various insurance products may help license rights, protect revenues and even improve access to finance

 

We look forward to seeing you there.

 

Dragons Den -It’s all in the name

Dragons Den does more to promote the value of Intellectual Property than any other programme. Wisely, the Dragons tend only to invest in ideas that are IP rich. If a business doesn’t have trade mark, copyright or patent protection there is nothing to stop competitors copying it and devaluing the investment.

For this reason Rajan Jerath, who recently appeared on the show must have been confident. His company, iGlove had registered the name as a trade mark and had applied for a patent to protect its key product, a glove that allows users to operate touch screen devices without baring their hands in the cold. During these cold winter months the Dragons agreed it was a good idea but, ironically, the stumbling block to investment was the trade marked name.

Peter Jones was of the view that iGlove was too close to Apple’s iconic ‘i’ trade marks (iphone, ipad etc) and that there was a serious risk of being sued. Duncan Bannatyne disagreed, arguing that as the entrepreneur had registered iGlove as a trade mark there was little Apple could do. Jones declared himself out, Bannatyne decided to invest £75k into the business.

So who was right?

The bad news for Bannatyne is that there is a real risk of iGlove being sued by Apple. Having a registered mark does not mean you cannot be sued for use of that mark. There could be any number of reasons why the name was allowed to be registered but given its use of the very distinctive ‘i’ and the fact that the product will be used in conjunction with Apple products, provides Apple with a very strong case for infringement. Even if iGlove went out of its way to disassociate itself from Apple, there is still a serious risk of customers being confused into thinking the iGlove is an Apple product.

Add to this the fact that Apple is hugely protective of its IP and spends $millions  each year enforcing it and I would say iGlove could have a real problem. If Apple decide iGlove are riding on its coat-tails,  I expect lawyers will be instructed.

After the show I tweeted Duncan Bannatyne to suggest he consider purchasing IP insurance to hedge against the cost of any possible litigation. I suspect this would be a sound investment.

If you would like further information on our innovative insurance solutions for IP owners, please give us a call.

A fishy tale from Aldi

Ever since Asda launched its Puffin chocolate bar the battle between brands owners and the supermarket’s cheaper look-a-like products has raged. The Puffin bar looked remarkably similar to United Biscuit’s Penguin bar and the brand owner thought Asda were taking the biscuit. It sued for passing off and won.

This has not stopped a decade of skirmishes between two parties who cannot live without each other. On the one hand supermarkets need to stock brands and of course, brands need supermarkets. This has led to an uneasy truce, but occasionally the line is crossed. The most recent example is a fishy tale from Aldi.

The Saucy Fish Co is a fast growing, highly successful brand. So much so it was recently placed in a list of the coolest brands in the UK. Although the product wasn’t sold in Aldi, the supermarket decided to launch its very own range of saucy fish in packaging which, in a certain light, could be described as similar to the Saucy fish Co’s packaging (see below).

Unsurprisingly, The Saucy Fish Co took offence to what it perceived as Aldi’s attempt to ride on its coat tails and issued proceedings for trade mark infringement.

The case is at a very early stage but the first skirmish has gone the way of The Saucy Fish Co, with Aldi agreeing to stop selling its saucy fish until the dispute is resolved.

What’s your view, have Aldi over stepped the carp or have the Saucy Fish Co got in a (fish) stew over nothing?

The erosion of design protection

I have written previously on how all companies no matter how large or small are at risk from IP litigation. One company that was forced to take legal action was Magmatic Ltd, better known as the manufacturer of Trunki, the ubiquitous ride-on children’s suitcase.

The business is a real British success story with the owner, Robert Law persevering against the odds to turn an idea into a multi million pound business. He even got rejected by the dragons along the way.

Unfortunately, as is the case with many successful ideas a competitor, PMS International Ltd sought to gain a commercial advantage by copying the Trunki design. The photographs below show the extent to which the products look the same. The first column reproduces Trunki’s Community Registered Design (CRD) as filed, the second column shows the Trunki suitcase itself and the third column reproduces pictures of PMS’s product, the Kidee Case.

Following launch of the Kidee Case, Magmatic took legal action to prevent further sales and to recover damages for infringement of its CDR. At trial the court heard how PMS had seen a gap in the market for a cheaper Trunki style suitcase and had even admitted that, to some extent at least, the Kidee Case had been inspired by Trunki.

CRDs protect any aspect of the appearance of the whole or part of a product resulting from its lines, contours, colour, shape or texture or the materials from which a product is made and at trial Trunki successfully argued that the Kidee Case infringed this right. In coming to his decision, the judge rightly followed previous case law and disregarded all decoration on the Kidee Case (which, as can be seen, was designed to look like a tiger as opposed to Trunki’s horned animal).

PMS promptly appealed and in an important judgement, the Court of Appeal overturned the judge’s findings. The Court of Appeal concluded that:

“it was wrong for the judge to eliminate the decoration on the accused design from his consideration entirely because it significantly affects how the shape itself strikes the eye, and the overall impression it gives”

And that, when taking surface decoration into consideration the overall impression of the two designs was different. As a result, PMS were found to be non-infringing and Trunkie has been left with a sizeable legal bill and copycat manufacturers lining up to take advantage of the decision.

Unsurprisingly, this judgement has caused some disquiet amongst designers and IP practitioners. By relying on the decoration of the Kidee Case, the Court of Appeal seems to have altered the test for assessing infringement of such rights. Third parties could now be able to claim that subtle differences in surface decoration render CDR protection invalid which raises uncertainty about the scope of protection afforded by these rights.

Following the decision, Mr Law and other notable designers have begun a campaign to improve protection for UK designers. The campaign #protectyourdesign may take some time to bring about the desired change but is important. If you are a designer, we encourage you to support these efforts.