Category Archives: infringement

Ignorance not Bliss – Avoiding liability for infringing pay-per-click advertising activity

Often, businesses treat intellectual property just as something they need to own and register, without giving enough thought to the risk of infringement.  Even where the risk of infringement is considered, business owners don’t often realise that they could be liable for the actions of their contractors or employees, even if they are unaware of them.

This is increasingly a problem when it comes to social media and online marketing, and a recent dispute illustrates the risks involved.  Ayesha Vardag, a prominent divorce lawyer, discovered that, unbeknownst to her, the marketing agency her firm had engaged was bidding on the name of her previous employer in order to generate enquiries through Google AdWords.  Following negotiations, Vardag agreed to settle for over £40,000, as reported by The Lawyer.

SkyDrive

SkyDrive Set for a Skydive? – Cloud computing service faces dispute over similar trademark

SkyDriveA recent decision of the High Court provides a useful illustration of the breadth of the rights granted by trademark registration.  In that ruling the use of SKYDRIVE by Microsoft for its cloud storage solutions, was found to infringe the trade mark SKY, used in connection with, among other things, broadband internet.  For context it is worthwhile getting a better picture of the rights you receive in exchange for successfully registering a trademark.

When you register a brand name as a trademark, you might assume that the law will simply prevent others from using that name in their business. However, the position is somewhat more complex, and the protection you receive is in a sense both broader and narrower than that.

Regular readers of our blog are likely already aware that when registering a trademark, that registration is restricted to certain specified goods and services.  For example, you might register YOURBRAND for use with clothing and accessories.  While this limits the exclusivity of your rights to a certain extent, such that another business might be entitled to sell cars, or make a TV show called YOURBRAND, you may still be able to take action if another business uses the same brand with goods or services which are similar to your own.  But what if the name they use isn’t exactly the same, just similar?

In fact, there are a number of situations when you might be able to take action upon discovering your registered trademark, or a similar trademark, being used without your permission.  This is because the law looks in detail at whether the marks are in fact identical, or just similar, and whether they are intended to be used in connection with identical or similar goods or services.

Even if someone uses just a similar brand, with similar goods or services, you can nonetheless take action if you can show that the public is likely to be confused.  If your trademark has a reputation and a similar or identical mark has been used without permission in a way which takes unfair advantage of, or is detrimental to, the reputation or distinctive character of your mark, that may also constitute infringement.

So, the strongest case arises when an identical trademark is used for identical goods or services, but neither of these elements are essential.

Returning to the recent dispute over use of SKYDRIVE on the basis of the registered trademark SKY, the court found that although the two trademarks were not identical, there was sufficient similarity between the two marks, and between the goods and services for which they were used, that a claim for infringement should succeed.

The court also found that there was infringement on the basis that Sky’s reputation in the UK is strong, that use of SKYDRIVE would reduce the distinctiveness of the SKY brand, and that Microsoft was not compelled, or otherwise had due cause to use that particular wording.

There are a vast range of factors which influence such a decision, for example in this case the fact that the word “Drive” is arguably descriptive of the service Microsoft provides, that the core goods and services provided by each business were complementary, and that third parties have created apps based on SkyDrive, such as SkyWallet, all supported the court’s judgment.

Serious repercussions can arise from unjustified claims so, given the wide range of factors that are relevant when assessing whether trademark infringement has taken place, it is important to seek specialist advice before taking action yourself.

Microsoft have said that they will appeal the decision, so the dispute is far from over, and it will be interesting to see if the company chooses to continue using the brand name despite this ruling, in the hope that they are ultimately successful.

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.

Copyright Protection: How to Manage Copyright in an Unregulated Space

‘I have endeavoured in this Ghostly little book, to raise the Ghost of an Idea, which shall not put my readers out of humour with themselves, with each other, with the season, or with me. May it haunt their houses pleasantly, and no one wish to lay it.’ – Charles Dickens

Dickens’ ‘A Christmas Carol’ is a tale of generosity, giving, and a story often attributed to reigniting the Victorian Christmas spirit at a time when it had started to wane. Indeed, it has been attributed as being partly responsible for the way we celebrate Christmas today.

Dickens and ‘Piracy’

When it was published the book was an immediate success, selling six thousand copies on the first few days of sales. However, despite the book’s success, Dickens did not make much money out of it in part because his work suffered at the hand of ‘pirates’.

Unlike today, copyright laws in the Victorian times did not give protection in countries outside of where a work was first produced and created. Therefore after ‘A Christmas Carol’ was published, copies started popping up abroad in America, produced by publishing houses very cheaply.  They gave Dickens absolutely no financial benefit.

Berne Convention

As the world continues to change, laws, and in this instance copyright laws, sometimes take a while to adapt to the new problems these changes present. It was not until 1893, 50 years after the publication of ‘A Christmas Carol’, that the Berne Convention was created to give authors copyright protection over their work abroad as well as in the country in which the work was created

Copyright in the Internet Age

However, even though nowadays owners of copyrighted work no longer have to worry about the lack of control over work being produced abroad, there is a new challenge that has not yet been solved by current copyright laws: the Internet.

Your company might not be looking to create the next ‘A Christmas Carol’, but content your company produces may still be extremely valuable for the business – yet the Internet can make it difficult to ensure that people don’t misuse your copyrighted content.

Sometimes when the laws have not caught up with advances in technology, it is an unfortunate reality that there is little you can do in practice to tackle infringement, beyond prevention.

You can campaign for changes in the law (as Dickens tried to do in the Victorian times), or hope that there will be a way for the law to better protect your work or content.  However, sometimes the best that you can do is to understand how to benefit from the work you produce in the unregulated world of the Internet, despite the fact that some people may take advantage of your work and infringe your copyright.

The ‘Freemium’ Business Model

An important factor in building success online is attracting customers to your website. And in this Internet age one of the main things people are looking for is information, meaning that freely available and useful online content can be vital in achieving online success.

Giving information away for free can actually prove financially beneficial in unexpected ways. For Dickens, despite the fact he did not make money in the US from selling copies of his book, when he went over there to visit he discovered that he had a large fan base, and managed to make a good amount of money from giving readings of his works.

This just goes to show that just because the law might not adequately protect your copyrighted content from pirates; it does not always mean your company will suffer. Some successful bands have also profited from giving material away for free.  For example, Radiohead decided to allow customers to decide how much they paid for their album ‘In Rainbows’. And The Grateful Dead managed to create a devoted following and generate $60 million a year through their unorthodox approach to protecting their intellectual property, such as by allowing audiences to tape their concerts.

Managing Your Copyright Online

However, if you are concerned about keeping your copyright protected, here are some tips that might help:

  • Before publishing content online, evaluate what the consequences might be for your business if someone copied your content
  • Consider using measures like backlink, Google Alerts or copyscape.com to help you track down people who copy your site’s content.
  • If you know the Internet Protocol (IP) address of a copyright infringer, you can ban them from using your website (although they could still get round this by changing their IP address).

If you want to learn more about how to protect copyright or other IP online, buy a copy of Legally Branded. You can download free chapter of the book here.

This post was co-authored by Chloe Smith

Trade mark registration and brand extension in China

Trademark registration and brand extension in China - Chinese FlagChina is now the second largest economy on the planet, and has become a key market for businesses worldwide. So, securing ownership of your brand in China should be an important part of your plans.  While the Chinese system of trade mark registration shares many common elements with the European regime there are subtle differences that can be a trap for the unwary, and in this blog post we are going to take a look at two of them.

Classification

Throughout much of the world, trade marks are categorised according to the Nice Classification. This system sets out 45 classes of goods and services for which a given trademark will be used, for example class 25 covers clothing, class 9 covers software, and class 41 covers education, among other things.  The same trademark name can be registered in different classes by non-competing businesses, and you can find out more about trademark classification here.

Although the Chinese trademark system does make use of the Nice Classification, it further divides these classes into narrower subcategories. This means  the same mark can be registered in the same international class, for similar goods or services, provided that the registrations fall within different subclasses.  For example, general footwear, and football boots, would fall in different subclasses, and the same trademark might be registered by different companies in each.

A cost effective, and efficient way to protect trademarks abroad is by using the Madrid Protocol system of international trademark registration. This mechanism lets you extend an existing application or registration into a number of different countries in one go, rather than filing in each individually.  However, the international applications must be filed in the same classes, and against the same goods and services. Typically this is not a problem, but in China, while it may be cost effective at first to file using the Madrid system, you may find that you also need to file an application directly to ensure  you are protected in the correct subclasses. In fact, where you have the resources available, registering a national Chinese mark may be the priority.

Translation, transliteration and Chinese characters

While in the UK, and Europe generally, you often only need to consider the English language trademarks that you use with your products, there are several dimensions to securing trademark protection in China.  The original brand name may be a priority, but your business, products or services will also become known by a name in a local dialect.  Unless you develop a strategy early on, you may find that the market has chosen a brand name for you.  This is what happened in the early 1990s, when Chinese businesses began using Chinese characters to approximate the sound “Coca-Cola”.  Unfortunately, though the wording used may have had a similar pronunciation, actual translations of the text included “female horse fastened with wax” and “bite the wax tadpole”.

So, well in advance of taking steps to extend your brand into China, you should decide how you would like to be known. Beyond your domestic branding, you will need to consider translation or transliteration of your name, whereby you either use words in a local dialect to approximate the sound, or translate the meaning of your trademark into Chinese.  Coca-Cola were lucky to find a Mandarin pronunciation which had a positive meaning (“Ke Kou Ke Le”, roughly “permitting the mouth to rejoice”), but you may not find it so easy.  You will also need to consider registering your trademark in Chinese characters, and the position is further complicated by the fact that many different  characters have the same pronunciation, so the best approach will depend on the particular name you choose.

Timing and Manufacturing

IP squatting, whereby trademarks are registered by a local entity which then trades on your success, or which tries to sell the rights back to you, is a problem in China, where it can sometimes be big business.  So, timing is  important. If you wait for your plans to mature, you may find  it’s too late, and a local Chinese business has already adopted your branding, as happened to Starbucks.  While the coffee giant eventually won its legal battle with the Shanghai coffee corporation, it could have avoided the costly dispute if it had registered its own brand in good time.

It is typical for businesses to outsource manufacturing of their products to China, and in doing so license their Chinese partner to use their trade mark for that purpose.   In some cases, the Chinese manufacturer, or another entity in China, will hijack the brand, registering it as a trade mark and securing ownership of the rights to it in China.  Case law on this point is developing, but there is a risk that such a hijacker might bring an action against the manufacturer for trade mark infringement, stopping production in its tracks.  So, even if you manufacture but don’t sell your products in China, it is crucial to secure local trade mark protection.

Though not relevant to every business, if in the longer term you hope to manufacture or sell in China, it is prudent to take steps quickly to protect your interests.

To find out more about trademark registration in China and elsewhere, please submit an enquiry.

Trademark Infringement- M&S vs. Interflora

Yesterday the IPKat wrote about an interim judgment handed down by the Court of Appeal in the dispute between Interflora and M&S.  The case revolves around the question of whether competitors should be able to bid on a registered trademark in Google Keywords, and you can read more about it in our earlier post, which covers Internet Marketing and Keywords in Search Engine Advertising.

This particular decision didn’t focus on keywords, trademarks or advertising as such, but answered a question never before posed to British courts about how evidence should be gathered and used in cases of trademark infringement.  The court had to decide whether evidence from witnesses who were selected via a survey should be admitted, when the survey itself is not to be relied on.  

Far Reaching Implications

The decision ought to interest anyone involved in a case of trademark infringement. Often, a critical issue when proving trademark infringement is demonstrating evidence of public confusion. However, there are inevitably hurdles to gathering this kind of evidence: is any particular witness indicative of the sentiment of the general public? How many witnesses should be called to give an accurate view of public opinion? How do you go about finding those witnesses? This last question in particular was at the heart of the decision yesterday.

The Court’s Decision

In short, though the judgment was not as dismissive of survey evidence as courts have been in the past, it makes clear that if you want to use surveys to identify witnesses, you should be ready to justify your methodologies.  The IPKat wisely observes that this could be an added incentive for people who don’t like surveys, perhaps spurring them on to attack methodologies, and devalue surveys in legal proceedings.

The judgment also serves to illustrate how careful you need to be when gathering evidence of trademark infringement.  Integrity and reliability are paramount, and you might need to be particularly careful if your aim is to describe the ability of a hypothetical ‘reasonably well-informed and observant internet user’ to glean whether two businesses are connected. 

First Sale Doctrine being called into Question

You buy a book, finish it, sell it second hand via Amazon marketplace- for many this approach to buying goods has become fairly common practice. Especially with sites such as Ebay, Preloved and Gumtree, it has become easier and more frequently practiced for people to re-sell their old goods. After-all once you have bought something its yours to do with what you like, right? Well, it might not be any more…Currently in the U.S. this style of ownership is being put into jeopardy due to a number of court cases that have called into question people’s rights to re-sell their goods.

First Sale Rights

The first sale doctrine, allows the purchaser of a copyrighted work to re-sell it, lend it, rent it, or destroy it, without having to seek explicit copyright permission. This law means that copyright only applies to a product being sold for the first time. Without it free-markets allowing for the distribution of CDs, DVDs, used phones etc. would be deemed illegal, as would rental places such as Blockbuster, Love-film or Libraries unless they had specific authorization from the copyright holders. Fundamentally, the law allows people to do with their goods, pretty much everything we are accustomed to do, even down to lending a CD to a friend.

So what is the problem?

The first sale doctrine applies to any copyrighted good ‘lawfully made under the [Copyright Act]’. However, what has currently become the subject for debate is what exactly constitutes a product made lawfully under the Copyright Act?  Although it has been established that this covers any product manufactured in the U.S. what is now being questioned is whether it applies to those goods manufactured outside the U.S as well?

Omega vs. Costco

The issue was first raised in 2010, in a case involving Omega and Costco. Omega was selling watches only for distribution in South America, yet Costco was managing to sell Omega’s watches in the United States for a cheaper price than the suggested re-sale price there. Costco defended its distribution right using the first sale doctrine. The federal district court ruled in Costco’s favour, but the Ninth Circuit Court ruled in Omega’s favour declaring that the Doctrine did not apply to goods manufactured outside the U.S. The case was then moved to the Supreme Court, which remained in a 4-4 deadlock and the issue was never fully resolved and therefore can provide no precedent.

John Wiley & Sons, Inc. v. Kirtsaeng

The case that currently is being addressed by the Supreme Court involves an international student from Thailand reselling textbooks that were manufactured in both the United States and Thailand. Textbooks were also sold in both places; however the ones being sold in Thailand were made in lower quality materials, and therefore were cheaper than their American equivalents. In order to finance his way through University, the student, Supap Kirtsaeng, decided to buy these cheaper textbooks in Thailand and then sell them to his fellow students at a cheaper price than they would otherwise have had to pay when buying the more expensive American editions. On learning about this, the publisher Wiley, sued for copyright infringement. The trial court ruled in favour of the publisher, awarding them $600,000 in damages, with the Second Circuit Appeal court upholding the ruling, declaring Copyrighted works manufactured abroad were not works lawfully made under’ Copyright Act… and thus are not subject to  first sale doctrine’

So what now?

The case is now being moved to the hands of the U.S. Supreme who will be charged with the ultimate decision. If they do rule in favour of the Second Circuit, then it looks like the flexibility of distributing products will be severely altered.  This means that any products manufactured abroad, even if they might have been designed in the U.S, will no longer be able to be re-sold freely without fear of infringing copyright. This very concept would mean that people would no longer truly own what they buy, where products are leased rather than sold to you, which as Techdirt points out, would be a ‘massive encroachment on individual’s property rights’

On top of this, some fear that this will encourage companies to manufacture their goods abroad in order for them to have greater control over the distribution of their products, and have sustained copyright over the products. With many companies, such as Apple, already manufacturing their products abroad in places like China, what will this mean for people who, say, want to resell their old iPhone?

Feeling the Pressure?

Ebay is clearly feeling the threat that this impending case poses, and has given its support for the Citizens for Ownership Rights to help collect signatures for a petition urging the Obama administration to support ‘the rights of Americans to purchase legitimate goods, resell these goods, give them away, or use them in any legal manner as they see fit’

Library Associations have also stepped in to defend their rights to lend books printed abroad, feeling that they do not have the legal budgets to risk continuing lending in case they were sued, nor have the time or money to track down all individual rights holders. They claim that U.S libraries have over 200 million books with foreign publishers; not counting those printed abroad, meaning that the implications for libraries would be massive. Therefore, the LCA (Library Copyright Alliance) have asked the court to alter the Second Circuit’s definition as ‘lawfully made under this title’ meaning made ‘in the United States’, to ‘copies manufactured with the lawful authorization of the holder of a work’s U.S reproduction and distribution rights’

A Step Backwards

In the Internet age, at a time when it seems likely that we might soon even be able to resell digital music, a decision ruling against first sale doctrine being applied to goods manufactured abroad, seems like a major step backwards.  With the whole definition of first sale doctrine being placed under scrutiny in this case, there seems to be a lot more riding on the Supreme Court’s decision than purely the redistribution of textbooks.

Are copyright owners winning the war against copyright infringement? Pirate Bay Blocking Order.

Tools enabling peer-to-peer (P2P) distribution of music, video, software and other copyright material are continuing to evolve in a way that presents an increasing challenge for the law, and hence for copyright owners who want to enforce their rights. From early bulletin board systems (BBS) to Usenet, P2P networks like Napster, less centralized services like Kazaa, and onion routing ‘darknets’ like Tor, it can be very difficult to track down online infringement and identify theft perpetrators. One of the most popular protocols for file sharing, both legitimate and infringing, is BitTorrent.

To share through BitTorrent, users generally distribute a .torrent file through a tracker (though there are ways to use BitTorrent without using a central tracker).  This tells other users what is available to download and how to access it. A number of websites index these torrent files, allowing visitors to search a library of thousands for the content they are looking for.  One of the most popular torrent search engines is the Pirate Bay. These search engines don’t store the content themselves, simply the torrent files that point to it. However, this is not enough to escape liability when services are used to share copyright material, as was made clear by the UK High Court in April, when it found that the Pirate Bay “sanctioned, approved and countenanced copyright infringement by its users”. As a result of these findings, major ISPs in the UK were ordered to block access to the website, just as they were ordered to block Newzbin last year.

To some extent these decisions broke new ground, as the blocked sites didn’t actually host copyright material themselves, just information about where to find it. They did however go somewhat further than this, and were held to have encouraged infringement by their users. This doesn’t mean you can sleep easy if you avoid actively promoting copyright infringement. If visitors share information through your site it’s important to be aware that you, rather than your users, may find yourself the first target of legal action relating to any infringement.

These are just two incidents highlighting what might happen when copyright owners enforce their rights online. Rights holders have also been active in campaigning for more effective legal protection, contributing to support for legislation such as the Digital Economy Act (DEA), which we have written about on a number of occasions. Interestingly, the success of copyright owners in cases like those mentioned above suggests legal protection is already at the right level, with the government deciding that existing legislation offers enough scope for blocking infringing websites, and declining for now to implement additional mechanisms envisaged by the DEA.

Does that mean copyright owners are winning the war? Probably not. James Ball at the Guardian argues that the Pirate Bay copyright crackdown is unsustainable. Ball suggests that compliance with the blocking order would be a “near impossible task” for ISPs, and this seems correct. To effectively prevent all access to a website from the UK means (at the very least) either taking that website offline (which can be very difficult depending on where it is hosted); or inspecting each and every ‘packet’ of information going in and out of the country. If those packets of information are sent through a network like Tor or otherwise encrypted the problem is compounded even further, and ‘impossible’ is not a stretch. However, it is important to appreciate that while a 100% effective block might be impossible, these steps will certainly make it more difficult to access infringing content.

Another very valid concern raised in Ball’s article is that efforts to curb infringement online risk suppressing legitimate activity. Not all torrents point to infringing material, and many websites (for example: Legit Torrents; Clearbits; and LinuxTracker) allow visitors to search for legitimate video content, creative commons-licensed work, and open source software. Sites like the Pirate Bay also hosted links to legitimate content, and a blanket block of the service means removing access to this along with infringing material. There are also a range of commercial risks when tackling infringement online.  One is the potential damage that can be wrought to your reputation by false accusations.  Some of the techniques used to identify copyright infringers online have led to controversy, and while lawyers have borne much of the brunt of the backlash to widespread legal threats, being overzealous when indentifying infringers can lead to consumer resentment. Tracking online copyright infringement can lead to false positives, and sending warnings to innocent users is not likely to go unnoticed.

There is no panacea here. As the law catches up, technology streaks further ahead. As soon as parts of the web are blocked out by court orders, others spring up in their place, and increasingly sophisticated techniques for hiding activity online mean there could be far more sharing taking place on the ‘darknets’, invisible to copyright owners. For online businesses, and those that want to enforce their copyright, the risks are many and varied. However, so are the opportunities. Just as the law develops to keep pace with evolving technology, I am always interested to see new business models emerging to meet the needs of both users, who want quick and easy access to content, and rights owners, who want to keep control of their creative output.

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.

Do You Know Why Your Brand Could Be Worthless?

In this post I’m going to offer some information that I think might be quite useful to you when you’re establishing a new business or product.

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.