Category Archives: Disputes

TV Show Mad Men faces potentially mad IP battle over photos and likeness rights

When using photographs or images in a commercial context, getting an IP lawyer to assess the copyright situation is an obvious move. However, as the producers of hit TV show ‘Mad Men’ recently discovered, it may not be enough to check the copyright position.  It may also be necessary to check whether there may be problems in using the identities of the persons represented in the image or photo that is being used.

Mad Men, an American drama set 1960s New York, follows the lives of protagonist Don Draper, and his team of high powered advertising executives, whilst simultaneously reflecting the darker sides of the American dream. The show has won numerous awards, including 7 Emmys, and famously counts Barack Obama as a fan.

However, for Lionsgate Entertainment executives, the dream recently turned slightly sour, as it emerged that Gita Hall May, a former actress and glamour model, was suing the show for using her image in the opening credits, without her consent. The image appears 11 seconds into the credit sequence, for a period of 2 seconds, and shows Gita’s face on the advertising board of an animated Madison Avenue skyscraper.

Although Gita had no claim over the image copyright, she objected to her face and likeness being exploited without her consent. The original photograph was taken by Richard Avendon for a Revlon hairspray advertisement. Gita May argues that she only consented to the use of her photographic likeness in that particular advert.

Ms. May, originally from Sweden, was allegedly surprised and angry to discover that, over 40 years later, her image had been “cropped from the photo, in secret, and inserted as a key element in the title sequence of a cable television series, without her consent and for commercial purposes.”  Her legal team is demanding compensation, based on the value the image has contributed to Madmen’s revenue and profits. Clearly this will be a complicated calculation. But considering the show has now run for 6 seasons, spanning 70 episodes, across worldwide territories, any final figure may be lucrative for Gita May.

Likeness Rights

In the UK where the laws governing consent to use of images or photographs are less strict, the US rules which allow for individuals, whether famous or otherwise, “to protect against the misappropriation of their likeness” seem surprising. Essentially, this means that in the USA individuals can object to non-consensual use of their identities.

There is a still a slight caveat — likeness rights do not apply to all images featuring individuals, even if used in a commercial context. To qualify, the images must be used to represent an idea, product, service or thing. Thus in the present IP case, Ms. May asserts her rights over the image by arguing that its use in the Mad Men trailer is integral to demonstrating the authentic ‘feel’ of the show.

To expand this concept further, if for example, a photo was taken of an individual, and then used to promote a specific political party which the person did not want to be associated with, they could refuse to allow their likeness to be deployed in this way. Therefore, businesses should always be wary when using images to promote their interests, for example through product advertisements.

In the case of Mad Men, Ms. May only realised her image was being used, and consequently launched her IP claim, 5 years after the show was originally aired. This demonstrates how such claims can crop up at unexpected and potentially awkward times for businesses.

Lionsgate will undoubtedly feel frustrated that the issue has only emerged recently, when the financial stakes are much higher than say, in 2007, when the original pilot episode was aired. The moral of this story, is one can never be too careful when it comes to clearing IP rights.

Do you need to bother with trade marks?

Since writing my book, Legally Branded, a number of business owners have thanked me for making this fundamentally important subject of intellectual property (particularly trade marks) understandable.

Some entrepreneur friends have even  suggested I emphasise the risks, and danger of ignoring intellectual property advice.  However, I’ve always tried to steer clear of scare mongering as a tactic to raise the profile of intellectual property, preferring to work with those clients that “get” the importance of intellectual property.  Our clients are the ones that get it, even if they’re not in industries where IP is obviously critical to their success.  They value their IP from the moment they start their businesses as did our client Headspace, for example, who are doing great things to make meditation accessible.

I recently attended a meeting with a business owner whose mind was firmly made up that there was no point paying expensive lawyers to give advice on IP.  I had agreed to meet with him at the request of his marketing manager who understands the importance of IP and hoped that someone more aware of the ins and outs of IP may be able to persuade his boss.  However, this business owner’s views did not shift one bit as a result of our meeting mainly because he talked far more than he was willing to listen, and his mind was already made up.  So, I know better than to try to address those whose minds are already made up that they know all they need to know about IP.

This is for readers who are curious, or undecided

This post is for those who may be curious, or who are still on the fence about whether it’s worth bothering with trade marks.  While it’s never a good idea to generalise about who does or does not need IP, I will stick my neck out and say that if you’re a lifestyle business (by which I mean you’re aiming to earn a livelihood and are not trying to build a big business or one you can ultimately pass on or sell) you can ignore trade marks.  You’re unlikely to come to anyone’s attention, or pose a threat to existing trade mark owners such that they would want you to rebrand for infringing on their rights.  Even if someone did require you to rebrand, chances are it will just be an inconvenience to change your marketing materials and rename the business.  You won’t have a name that attracts business, so could rename the business without suffering a drop in activity.  Similarly, if you’re setting up a business and want to first see if it will take off, then you MAY, depending on your business idea, be able to use a temporary name, or take a chance with the name you want to use (provided you’re willing to change it if the advice is that you would do better to choose an alternative name), and see if you can get anything off the ground before worrying about trade marking.  But for everyone else, it would be really foolish not to get trade mark advice from a specialist lawyer on the name you’re using.

Trade marks may be revoked

Trade marks can be cancelled, so even if you’ve secured a trade mark registration it doesn’t mean you’re alright to use that mark.  That’s why it’s misguided to do your own registration work, just to save on legal fees.  You may end up getting a registration, but it may not be for a mark that is capable of generating brand value.  You may not have an adequate scope of coverage, so that although you’re registered, it may not protect you if someone were to challenge your rights.  For example, registering a logo with a totally descriptive name – that is, one that describes what the business does – is easy enough to secure.  However, it’s an extremely poor choice of branding.

The law protects businesses against various unfair competitive practices, and helps you fight off competitors who use similar marks to yours, but you have very limited recourse with a descriptive name.  Using a descriptive name or a name that is otherwise incapable of being owned by you as a trade mark, leaves you wide open.  You will lose business that may have been intended for you, and you will have a business that is far less valuable than it might have been had you selected a legally powerful name.  This is the reason you should always consult your own IP lawyer on any name your branding professionals help you to choose, unless they are willing to take responsibility for its legal effectiveness.

Keyword rich names probably best avoided 

Also, take a look at the blog I wrote about Google’s recent algorithm change, which makes it even more of a poor decision to use descriptive names now online.  The writing is on the wall, so I would avoid choosing keyword rich names too when branding your business online.  The slides from my talk at Make It Big in 2013 also discuss descriptive names more.

Get legal advice

Even though you get some protection in this country just by using a name, don’t let that lull you into a false sense of security.  For example, if someone registers a Community Trade Mark they can stop you using a name you’ve been using, or limit you to using it only in a certain geographical area.  Why court the vagaries of litigation with all the cost implications when you can secure your rights in a name you’re getting recognition with, by paying ten times less?

Trade marks and legal advice should not be dismissed as too expensive to bother with for anyone who has a viable business.  They are an investment, and are the foundation for licensing and other ways of monetising your products and services.  In particular, don’t wait till you have reached certain turnover targets, because trade marks are fundamentally relevant to any business that aspires to be more than a lifestyle business.  Your business name is what the law protects when competitors behave unfairly.  So, trade marking is good business practice and isn’t just about whether you intend to become a brand, or think that if you sold your company whoever bought it would want to use your brand name.

Misunderstanding IP

There is a lot of misunderstanding about the relevance of IP, and huge generalisations are made about its costs.  But given that there are many different IP rights, of which trade marks are just one type, it’s foolish to dismiss them all as too expensive.  Knowing how to implement procedures to protect just one of these rights may be the critical element to your business success after all.

I think the problem is down to the complexity of IP law.  We are still in a transitional period between an industrial economy and a knowledge economy.   Consequently knowing how to deal with the physical things, the tangibles comes easy while intangibles that you can’t feel or touch, are less well understood. Intangibles are our knowledge, our brands, our digital content, and more.  By their very nature, they are easy to lose. Being transient, and non-physical, their legal significance can sometimes be overlooked or misunderstood.

Scrabulous and other high profile cases

The fact is that it can be difficult for lawyers to point out the benefits of IP except by pointing to situations where there have been well known incidents, such as with Scrabulous, which I discussed in a post recently.  Those of us IP lawyers who prefer to focus on the positives, won’t therefore want to keep pointing out the dangers, but I have outlined a number of scenarios in my book Legally Branded, which should help you better understand the risks.  Don’t assume that just because big businesses like Apple resolve their IP issues, that you will do so too.  People should know that for smaller businesses, the scenarios they hear about in the news about the Googles, Microsofts, Apples of this world would put them out of business because they would not have the resources to get themselves out of trouble.

So the moral is if you are a small business without access to huge sums of money to litigate your way out of  trouble then you absolutely need to make sure you avoid the problem in the first place by getting professional advice to register your trade mark.

Also, if you’re going to ignore IP protection, you need to know what you’re doing.  It could in some cases be rather like deciding not to bother with the foundations of a house you’re building.  In television programs like Grand Designs, the participants who overspend may end up not having enough money to do all the fine design details they had wanted.  Their  lack of funds means they have to compromise on the surface issues like designs.  They can’t compromise on the very structure and foundation of a building.  Unfortunately, the opposite approach happens in business when IP is ignored.  People can spend a fortune on the surface things like branding and websites while ignoring the fundamentals.

Distinguish IP from other legal work

While there are some legal issues you can and should skimp on in the early days of a business, IP isn’t one of them.  Note that IP is very often a contractual matter, and isn’t just about registrations.  So, take advice to see how to minimise your IP expenditure in a safe way if you think spending on IP may seem a waste.  Some business owners question any expenditure which doesn’t enable them to make money (such as learning a new marketing trick would increase their  chances of generating revenues).  However , think of IP as what enables you to keep the money you make, and in some cases to continue to earn revenues. So at the very least you absolutely have to take advice in order to develop your strategy for IP.

Can You Trademark A Colour? Cadbury Secures The Rights To The Colour Purple

Last month Cadbury managed to secure a trademark for its signature purple colour after a lengthy battle with Nestle. The outcome means that Cadbury now has the exclusive rights to use its own distinctive colour on its confectionary items.

Cadbury is not the first company to seek a trademark in a colour. Their court victory closely follows Christian Louboutin’s successful trademark of the distinctive red it uses on the soles of its shoes, Heinz has a trademark in the turquoise colour used on its baked bean tins, and Orange has a trademark in, you guessed it, orange.  

Should a business be able to own a colour?

Some people are sceptical about whether companies should have the ability to own a particular colour, believing the idea to be ridiculous. However the idea is not as ridiculous as it might seem. Firstly, despite Cadbury’s successful trademark registration, it by no means ‘owns’ the colour purple. Rather it owns that particular creamy purple that is associated with Dairy Milk (Pantone 2685C) and even this only covers milk chocolate products and within this category, chocolate bars and tablets, chocolate for eating, and drinking chocolate.

Secondly, a company’s right to trademark a particular colour boils down to one very important factor- brand recognition. The whole purpose of a trademark is to protect the identifying signs that can help customers determine the origin of a particular good or service. A name and logo are obvious identifiers, but colours and even shapes can also become a unique distinguishing factor for a brand.

What can colour add to your brand?

In the case of Cadbury, the colour purple used on its packaging was hugely indicative of the company itself. Take for example one of its most successful adverts.

The advert is very simple, featuring a Gorilla beating the drums to Phil Collins’s ‘In The Air Tonight’. Despite the fact that the product itself does not get featured till the very end of the advert, the ad displays the trademarked purple as a backdrop in the studio set.

This use of the colour perfectly demonstrates, not only how Cadbury was trying to tie the colour to its product in the minds of its customers, but also how it was able to immediately evoke its own brand in people’s minds simply through the use of colour.  Through this it was able to create an advert that was unusual as it lacked any obvious attempts to sell a particular product, only subtle visual symbols, but that still drove customers to buy its product due to the lingering feeling of happiness the ad created which was associated with the Cadbury brand.

The use of colour and visual identities can really be a great communicator of a brand’s values and messages that speak without any need for words.

The importance of visual identity

Think about when you go to do your weekly shop at the supermarket as an example. What are you drawn by when you pick up your purchases? The visual image of a product often plays a really important factor in driving a customer to buy something.

As Brand Republic states, ‘[visual] brand identity is more than a corporate label, it is a neurological mnemonic that influences what we think and how we behave’ It cites how some people show a preference for Coca-Cola purely on packaging alone, when in a blind taste test these same people might find the taste of Pepsi to be preferable. Therefore colour, when put into context, can be powerful in its ability to draw customers to one particular product over another. (If you want to explore this topic in more detail the book Visual Hammer by Laura Ries (Kindle, 2012) is a useful read for understanding the interaction between visual and verbal communication.)

How well-known are these brands’ colours?

See for yourself if you can identify some of these trademarked colours. (Answers listed at the end of the article)

Can you tell which department store uses this green?

 

 

 

 

Which luxury brand uses this blue?

 

 

 

 

Or on whose home-supplies would you find this yellow?

 

 

 

 

How can you secure an unusual trademark?

However, trademarking a colour is by no means a simple procedure. Whilst it is relatively easy to secure a trademark in a name or logo, more unusual trademarks, such as colours, shape or music can be difficult to secure as you need to prove that the element in question is synonymous with your brand in the mind of your customers.

Although a brand is much more than purely a logo, colour or even a name- these are the identifiers that can carry certain associations in customers’ minds.

We will be writing in a future blog post about the difficulties of obtaining unusual trademarks, and how Coca Cola managed to trademark its iconic bottle.  In the meantime our 7 Mistakes Book gives some tips to help inform you how to make the most of intellectual property assets.  Even if you get just one idea from it, it could prove invaluable, so why not downloaded it here.

Answers: Green= Harrods; Blue= Tiffany; Yellow= Post-it

3D printing- the next challenge for IP?

3D printing is a technological advance that has been getting a lot of press recently due to the sense of excitement about the possibilities it might hold. The implications of this advance are being speculated as huge, with the BBC asking if it will spark a ‘new industrial revolution’, The Economist announcing the benefits for third world countries, and others hoping that it might soon have promising implications for the medical industry.

Although 3D printing has been accessible to engineers and designers for a number of years, it has recently become much more affordable to the general public due to a decrease in the cost of technology.

What exactly is 3D printing?

3D printing works much like 2D printing, but in this case it enables solid objects, which otherwise are limited to mass production, to be printed and produced on an individual basis through the use of computer-aided design. These printers work by building an object layer by very thin layer, and in this way building an entire object through stacking these multiple layers of material.

3D printers are designed to enable inventors to make ideas, which would otherwise never go beyond anything more than a concept, into something substantial. The labs could mean that the power of production is no longer limited to the big businesses, but rather could be passed into the hands of the consumers themselves.

Although currently 3D printing can only print objects using one type of material at a time and can only use certain types of material, such as plastic, the future of 3D printing is looking at being able to recreate electronical devices through printing multi-material components.

What will 3D printing mean for the law?

However, alongside any technological advance, a host of legal difficulties generally also tends to arise. So, with production made more easily accessible, what implications will this have on the law? And specifically how can intellectual property be protected?

Although the idea behind 3D printing is to enable people to make their own ideas into an actuality, if 3D printing does become the way of the future, designs produced by other companies and manufacturers can be used to print certain items, and there is also the fear that in some cases they might be illegally replicated. Michael Weinberg, a senior staff attorney with Public Knowledge, warns that ‘printing in 3D is a disruptive technology that raises a lot of intellectual property issues’

The potential for piracy

The fear is that anything in the world will be able to replicated and reproduced without license- from iPhones and computer parts to chairs, shoes and much more. The question is- could the manufacturing industry go the same way as the music and film industry? Will they have to start worrying about BitTorrent sites leaking copies of design files for people to print cheaply and easily in the convenience of their own homes?

The backlash could lead to manufacturing companies seeking more restrictive protections on their products to prevent illegal copying. Weinberg warns that the implications could mean that ‘useful objects could be protected for decades after creation. Mechanical and functional innovation could be frozen by fears of massive copyright infringement lawsuits. Furthermore, articles that the public is free to recreate and improve upon today (such as a simple mug of bookend) would become subject to inaccessible and restrictive licensing agreements’

So could an invention that is designed to produce innovation really lead to the stifling and diminishing of just the very thing it seeks to promote?

A Possible Solution

However, there have been some moves to help fight against piracy on manufactured goods which should avoid a decrease in innovation and restrictive protections. The BBC announced last month that a patent has now been developed that would act much like DRM did on games and music. It will embed copy controls on 3D design files to ensure that they can only be printed by those with the correct authorization.

Whilst this may provide some solution, DRM for music and games by no means eliminated piracy, and proved hugely unpopular.

How do you protect a physical object?

Aside from an anxiety about piracy- another complication is that there is no set intellectual property protection that completely protects physical objects. Whilst there are some steps that can be taken to protect a physical object, none of these will actually protect the mold and shape of a physical object.

Trademarks protect names and therefore any logos on an object, designs protect the look of the object, patents protect how things work, and copyright might protect artistic patterns, but does not cover the actual physical object or the idea it expresses.

Another problems is that 3D printing also does not just allow objects to be replicated, but also allows for them to be altered making it much more unclear how and when a product’s intellectual property has been infringed.

What Next?

For now 3D printing has yet to become mainstream and it will probably be a while before every household owns a 3D printer alongside their 2D one- but these are some implications to bear in mind. This looks to be yet another area where the law will have to adapt to catch up to the ever changing world of technology.

Motorola, Microsoft patent war rages on

The Xbox 360 risks being banned in America if the US International Trade Commission (ITC) agrees with the initial findings of its Judge David Shaw, handed down in April.

Image of contract and a pen.Shaw found that Microsoft, owner of the Xbox brand, had violated 4 patents owned by Motorola Mobility.  His decision will be reviewed by the ITC in August, and if the commission agrees, sales of the Xbox 360 could be banned throughout the US, with potentially disastrous consequences for Microsoft.

The alleged infringements relate to technology used by the Xbox 360 S platform to transmit and compress video, purportedly covered by patents held by Motorola Mobility, a company that was recently acquired by Google.

Serving the public interest?

Microsoft argued that the ban would not serve the public interest, in that it would leave the Sony PS3 and Nintendo Wii as the only home consoles available for sale in the US.  In his recommendation of  7 May, Shaw disagreed, noting there was no allegation or demonstration “that Sony or Nintendo would fail to meet the demand for consumer video gaming consoles”, that “there is a strong public interest in enforcing intellectual property rights”, and that not to enforce those rights in light of a potential economic impact is appropriate only in exceptional circumstances.

In addition to the ban, Shaw also recommended that Microsoft be ordered to post a bond equal to 7% of the wholesale value of all unsold consoles in the country.  In argument, Microsoft advocated that no bond was necessary, while Motorola went after the full 100%.

Next steps in the process

The Xbox is not yet subject to a ban, and will remain on shelves until a final ruling has been made.  The ITC commissioners have until 23 August to decide whether the initial ruling should stand, be amended, or rejected. If they agree with Shaw, the Obama Administration will have a further 60 days to review the decision, and make the final call.

Despite Shaw’s recommendations, Microsoft remains confident that the commissioners will rule against the ban.  A company spokesperson said the ruling:

‘is the first step in the process leading to the Commission’s final ruling and has no immediate effect on the availability of Xbox 360 in the U.S. We remain confident the Commission will ultimately rule in Microsoft’s favour in this case and that Motorola will be held to its promise to make its standard essential patents available on fair and reasonable terms’ quoted in PC Mag.com 23 May 2012.

The bigger picture

This is just one of the recent engagements in a much wider patent battle, which has also seen rulings against Motorola, for example in Germany in relation to Microsoft’s patented technology enabling longer SMS text messages to be split up and reassembled.  In May, the ITC also sided with Microsoft in a dispute over Motorola’s use of patented technology for ‘generating meeting requests and group scheduling from a mobile device’, which, if approved by the Obama administration could see a ban imposed on the import of Motorola smartphones into the US unless the feature is removed from the Android software shipped with the devices.

Earlier in the year, Motorola was also granted an injunction against the distribution of the Xbox, Windows 7, Internet Explorer and Windows Media Player in Germany, after a ruling that Microsoft was infringing two Motorola patents.  A subsequent ban against sales of its games consoles in the US could have a significant impact on Microsoft’s bottom line.  Still, whereas Microsoft might suffer losses in connection with one of its more successful product lines, Motorola Mobility faces a potential exclusion order covering a huge segment of its business.

Pinterest and Copyright

Pinterest, a new social media site that allows users to ‘pin’ digital pictures on virtual pin boards, has recently faced a number of concerns regarding potential copyright infringement.

An American lawyer Kirsten Kowalski blogged about the social media site’s Picture-sharing boards as infringing copyright, announcing that she had deleted her Pinterest account when she realised that her use of the photo-sharing site could potentially make her break the law.  The blog post sparked a lot of attention, and spread fears about these potential legal issues.

The main problem was to do with the terms and conditions of the site, as they explicitly say that should there be any copyright infringement for reposting a copyrighted picture, it would be the user and not the site that would be culpable. The way the law works is that even if users are unaware they may be infringing copyright, this does not absolve them from legal action.

Despite their terms, which clearly state that users who ‘pin’ images they do not hold the rights to may be liable, the site itself seems to actively encourage sharing images. As Kowalski puts it ‘their lawyers say you can pin anything that you don’t own… but the site is saying that you can’. The site makes it very simple to repost (or rather pin) pictures from other sites around the web, which has irritated some photographers.

However, the question still remains, why is Pinterest facing these problems when other social media sites have not? As Technollama points out, Pinterest’s terms and conditions are similar to those of other social media sites such as Twitter and Facebook. However, the primary difference between these sites, as discussed here, is that Pinterest’s whole business model surrounds the sharing of images. Although Facebook and Twitter do allow people to post images, this is not the main feature of either site.

Jonathan Klein, the CEO of Ghetty images, emphasizes this point. As TechCrunch noted, Klein is ‘not concerned about people playing with Getting photos, teenagers using them for school projects, and folks putting them up on their personal blog’.  However, despite this he has highlighted the fundamental problem with Pinterest: ‘We’re comfortable with people using our images to built traffic. The point in time when they have a business model, they have to have some sort of license.’ It is the very fact that Pinterest’s business model heavily encourages not only for people to upload their own images to the site, but to share others images that has become cause for concern. So far Pinterest is not making any money, however as Techcrunch noted, as soon as they do they will be liable to have to either pay or remove copyrighted images.

Pinterest’s approach to these concerns has been similar to sites such as YouTube. The company believes that it is protected by the Digital Millennium Copyright Act, and says that it will respond quickly to any copyright issues that might arise. Pinterest has been keen to listen to feedback from its users and has addressed any issues by updating its terms of service, details of which can be seen here.  On top of this Pinterest has also made it easier for people to notify the site about any copyright or trade mark infringements.

This means if you object to an image you own being pinned on the site, it should not be too difficult to persuade the site to take it down, assuming you have proof that it is your copyright.

Why Resolving Disputes Costs Ten Times More Than A Contract

Lawyers are expensive, particularly if you are in dispute with someone.  However, because prevention does not sell, many small business owners tend not to use lawyers except when they are unfortunate enough to face litigation.  In the meantime, rather than use lawyers to draft any agreements for them, even important ones like terms of business. they are turning to the burgeoning industry of contract templates and buying standard precedents to use.

The problem is many of the contract templates on sale are every bit as lengthy and complicated as legal precedents used by contract lawyers. Unless you’ve got seven years of legal training under your belt, these so called “simple templates‟ can be an overwhelming place to start for the layperson!    

Even where the templates ARE written in plain English they have a fundamental flaw: It is difficult to know how to use or alter them because it’s the details of the commercial transaction which will determine how you should tailor the document. If you lack an understanding of the business context and the dynamics that would entail the need to alter a standard template how can you properly adapt it to your situation? Rarely are transactions so standard that a general legal document is adequate.  As I explained in my blog  Why use a lawyer when you can buy a legal agreement? last week entrepreneurs would do far better to just use plain English and avoid any legalese when writing their own agreements.

If you’re left to grapple with complex drafting alone and then there’s a dispute on that agreement,  you are unlikely to be well positioned to contest the dispute, and it will cost you a lot more than it need do to resolve it.

You do not need to sign a piece of paper to be bound by its terms.

There are many misconceptions about contracts, including the belief that it’s necessary to sign a piece of paper in order to have a contractual relationship. That’s not the case.

When you engage someone to perform a service for you, or agree to sell something to someone, a contract exists between you and the other party whether you realise it or not. The exception is if it’s purely a domestic relationship, which the law treats differently.

If either of you put forward written terms at the right time during your discussions you would have a contract on those terms even though nothing was signed.

It’s important to realise that your email discussions, and telephone conversations are enough to create a binding contract.  If you don’t document the agreement then it will be quite messy and expensive to resolve any disputes later.

In my blog I explained how to document your own agreements informally using plain English instead of relying on bought templates. Here I just want to explain what happens if you can’t negotiate a solution with the other side and need to involve a lawyer to help you resolve the dispute.

Resolving disputes using lawyers

Lawyers start by gathering background information to try to work out the legal answers to the issues in dispute between you.  They will question you on the oral and written discussions you had with the other party before the contract was formed. Details of who said what and when will be relevant to shed light on your mutual intentions and what you “signed up to”, as will any written terms either of the parties put forward.

After building a picture of the background circumstances, the lawyers would apply their knowledge of contract law principles to your situation to pin point the time when the contract was formed in the eyes of the law.  This date would also give an indication of what terms were incorporated within it.  Your discussions or documents sent after that date are generally unlikely to have contractual effect.  It can happen that the contract is formed before people  realise it and the  legal agreement they used had no effect!

Say your dispute is about an ecommerce website being delivered late. You had engaged a PR company and incurred various other expenses relying on the web developer’s promise to deliver your site on time.  The delays left you considerably out of pocket.

Your lawyers decide you have an arguable case to claim that the other side broke the contract.  So, they would write a letter claiming compensation on your behalf.  There has to be a lot of posturing to get the other side to want to conclude the matter without resort to court.  So, the dispute will generally mention legal actions and remedies that the parties could avail themselves of if the other side fails to agree to their demands.  It can therefore be quite unpleasant to be involved in a dispute.

The other party’s lawyers will hopefully give advice along similar lines. So if you have a good case, it’s likely they will suggest their clients be ready to make an offer of compensation to you.  They may not do this straight away, but they will advise their client of the strength of your case.  When the offer is made it will probably be lower than the sum you claimed.  That’s just the way negotiations tend to go.  However, you never know whether the other party is serious or just bluffing, and risk losing the chance of a settlment each time you reject their offer.  Some correspondence will ensue before a final compromise is reached or the matter is escalated to issue of legal proceedings (which is not to say you will end up in court).

If the other side’s lawyers glean some information which they think weakens your claim, they will respond to say you contributed to the delay because of something you did (such as changing the brief) or failed to do (such as providing a list of requirements by a set date), and therefore are not entitled to any compensation, or as much compensation as you claimed and so on.   Generally, after some correspondence back and forth the matter is resolved. Only a tiny number of disputes end up in court. 

That’s not to say it doesn’t matter what document you use.  The better your documentation, the cheaper it will be to resolve disputes, and the less likely you will be to be to need lawyers to help you resolve matters.  The real purpose of a legal agreement is to achieve clarity.  It’s not just to have a piece of paper.  The reason for having a legal agreement is to encourage you to think through the details and discuss them with the other side before the contract between you is formed.  Hopefully if you are like minded you will do a deal and if you’re not, the pre-contract negotiations will highlight it so you walk away from the deal.

Premier League loses first round over cheaper TV football

The Premier League is the world’s most watched and most lucrative football league in terms of revenue.  So, revenue from television rights is vitally important to it.

The Football Association Premier League ltd. (FAPL) sells its rights in the broadcast of matches individually on a territory by territory basis. In order to access the service one needs a territorial decoder card from a licensee such as Sky. This is enforced by contractual provisions prohibiting the licensee from providing decoders and decoder cards outside the licensed territory.

This approach was challenged by intermediaries who have been offering decoders and decoder cards in the UK that had been obtained abroad, but not directly from the licensees. The rates were lower than those of the official UK licensee. This has now led to various prosecutions. Two test cases which are still pending could have far-reaching ramifications for sport, broadcasting and consumers.

Background

Karen Murphy (the landlord of the Red White & Blue in Southsea) was taken to court by Media Protection Services Ltd over her decision to import a Greek decoder to show the league games to her customers rather than using a Sky decoder, despite the fact that Sky holds the licence rights to show these games in UK.

The UK courts held that Murphy committed a criminal copyright infringement by circumventing the exclusive rights of the Premier League’s authorised domestic broadcasters (Sky). Karen Murphy thought this unjust and took her case to the highest European Court claiming that the prohibition against foreign decoders in the UK violates the European competition and free movement of goods legislation.

The second case focuses on the companies which supply publicans such as Karen Murphy with the decoder cards that enable them receive and view foreign broadcasts. The Football Association Premier League ltd. brought an action against QC Leisure & ors claiming that QC’s supply of decoder cards in the UK would infringe its copyright. The central point of the legal dispute was whether FAPL could enforce its licence terms to protect its copyright in the broadcasts. This case is now pending on the EU’s highest court as well.

Pubs win first round

According to the advice of the general Advocate of the European Court of Justice Juliane Kokott Karen Murphy as well as QC Leisure & ors will win the court battle over cheaper TV football. She held that the FAPL’s territorial exclusivity agreements of Premier League football matches are contrary to European Union law, because it is a “serious impairment of freedom to provide services”.  She added that the “economic exploitation of the [broadcast] rights is not undermined by the use of foreign decoder cards as the corresponding charges have been paid for those cards”.

However, this opinion is not binding. It remains to be seen if the court follows her advice.  Generally, in 80% of cases they do.

These cases are of huge significance for the Premier League and any incumbent UK broadcaster and could change the European landscape for the way right holders sell their rights. The cases underline how even well established businesses are facing new challenges through technology developments and changes in the legislation in connection with the protection and exploitation of their intellectual property rights.

Facebook Facing ‘Frivolous’ Lawsuit?

The popular social networking site Facebook, valued in the billions of dollars, is facing legal action brought by a plaintiff who claims to be entitled to the lion’s share of the business.  The claim alleges that Paul Ceglia paid Facebook co-founder Mark Zuckerberg to develop the site in exchange for $1,000.  The contractual agreement which forms the basis of the action incorporates terms that would entitle Ceglia to an 84% stake in the company, and in addition he is seeking a cut of company profits from the last 7 years.  Facebook were slapped with an injunction preventing disposal of their assets, and responded by taking the case to federal court, requesting that the injunction be dissolved and the case dismissed. Currently Facebook has an estimated value of $6 billion,  and if successful Ceglia could stand to receive not only equity worth in the region of $5 billion, but a share in the revenues brought in by the business since its inception.

Facebook described the case as ‘frivolous’ and made clear that they plan to fight on a variety of grounds, including that since the contract was signed over 6 years ago in 2003, it is void according to the Statute of limitations in New York. The question is also raised as to why Ceglia waited so long to file his suit? FaceBook currently has hundreds of millions of users.  It seems that it was only when the site proved to be truly successful that the plaintiff decided to file his case.  

It has also been suggested that Ceglia’s claim does not add up based on the site’s history.  Facebook’s domain name was not registered until January 2004, and according to the official history of the site Zuckerburg did not come up with the idea of creating the site until after 2003.

In light of Facebook’s success it is not surprising that they have been the subject of various claims, often by people asserting that they have had some input into the site’s development, and therefore deserve financial recognition.  The case illustrates one of the most important considerations when taking a business online, the nature of the contractual relationship between the parties involved.

If you are having a website or part of a website commissioned, be sure to agree upon and set out clearly in writing, how rights to the different elements are apportioned, and what each party is entitled to.  Make sure this is done early, and done well, and you can avoid facing the type of lawsuit that will cost a business like Facebook a huge waste of time and resources to fight, even if there is no merit to the claim.