splitting the difference

Another guest post over at IPCopy, this time about "two owners, one trademark".

a brand-free zone

Very happy that the folks over at the IPCopy blog invited me back for another guest blog post.

You can read about what Australia and Cuba have in common here.

the baby blues...

Back in February 2012, this blog reported  on the birth of Baby Blue Ivy, first daughter of Jay-Z and Beyoncé. Recently, there has been a bit of hysterical - and misleading - crowing in the press, saying that the celebrity couple's bid to register their baby's name as a trademark has been "rejected". Much of the crowing seems to have come from a person running a wedding planning business in the US, who has achieved her own registration based on prior use of BLUE IVY for her business.

"Jay-Z and Beyoncé lose bid to trademark daughter's name" yelled the Guardian. The shrill words of Ms Alexander, the wedding planning person, were repeated:

Money doesn't buy everything... If this [hadn't worked], I'd go after both of them...There's no way by way of being a celebrity they should have entitlement [to the name]. Shame on them.

"Beyoncé and husband Jay-Z have lost a battle to trademark the name of their baby daughter Blue Ivy", exclaimed the Telegraph.  Thence followed this piece of mis-information:

But the pair have lost out on trade marking their daughter's name to a small wedding planner based in Boston who had called her company Blue Ivy in 2009. The ruling from the US Patent and Trademark Office means Beyoncé and Jay-Z have no legal right to keep the name to themselves.

Any trademarks attorney reading these press reports would be immediately sceptical. The parents of 'Blue Ivy Carter' (not identical, note, to 'Blue Ivy') are not, presumably, interested in the services of wedding planning, but rather baby goods and entertainment -- a check of their application (made through a company, BGK Trademark, of which Beyonce is the director), shows a long list of claimed goods and services, with plenty of room to distinguish the wedding planner's services.

This simple check also shows that the parents' application to register BLUE IVY CARTER is in fact still pending. It woud surely have taken five minutes to check this, journalists, before repeating whatever rubbish came over the wire about this case.

Luckily, the good folks over at the IPCopy blog have taken a closer look at the matter. As they report, the parents' application has - as do many applications - been back and forth with the USPTO, tweaking the goods and services claimed to differentiate it from other prior marks. An acceptable statement of goods and services seems to have been reached. The next step will be for the application to be advertised for opposition. I wonder if the wedding planning lady will want to "go after them"...

As IPCopy also report:

It is interesting to note that BGK Trademark’s own application also received an objection on the basis that the name would falsely suggest a connection between the applicant and Jay-Z and Beyoncé’s daughter.  However, they were able to overcome the objection by explaining the relationship between BGK Trademark, Beyoncé and Blue Ivy Carter, adding that Beyoncé had her daughter’s consent  to the registration of her own name on record (presumably in the form of a messy handprint).

Perhaps embarrassed by the dodgy reporting earlier, the Guardian Law Blog has now come up with a much more thoughtful analysis of what is going on - and the information that BLUE IVY CARTER has been accepted for registration in the EU as  Community Trade Mark.

a light touch

How much is that doggie in the window?

Very happy to contribute another guest post over at the IPCopy blog.

You can read "A light touch" here.

gone phishing

In the murky underworld of online scams, the phish are dangerous. The phrase ‘phishing’ refers to electronic communications, usually emails, which look like they come from a trustworthy source, but are in fact attempts to acquire information such as credit card details or passwords. We’re all sadly familiar with the dodgy email bearing our bank’s genuine logo, asking us to “click the link” to “update our details”. We know enough - at least, I hope we all do - to delete immediately.

But the phishermen are trying to target bigger phish. ‘Whale phishing’ or ‘spear phishing’ refers to the scenario where a scammer targets an organisation and sends personalised emails to either a group of employees or a specific executive officer or senior manager. 

The emails refer to fake but critical business matters, such as a legal subpoenas or customer complaints. They appear to have been sent from a trustworthy source, such as an employee or staff member within the organisation. The email addresses used may be similar (but not identical) to an address with which the recipient is familiar.

The scammer’s aim is to convince the recipient to follow a link to a fake website or open a malware-infected attachment. When the fake but convincing website is visited, it will ask you to do one or more of the following:

• enter confidential company information and passwords
• provide financial details or enter them when making a payment for a fake software download.

If financial details are provided, the scammer will use them to commit fraud.

Alternatively, if an email attachment is opened it will download malware onto your  computer. Malware can record your key strokes, passwords and other company information, allowing the scammer to access it when you go online.

The waters are dangerous. Be careful while swimming, or even wading. Don’t take the bait.

IPCopy Guest Post

I was very happy to contribute recently to the excellent IPCopy blog.

You can read "Colour Me Blue" here.

Olympic brand protection: draconian or justified?

Two billion pounds are needed to stage the 2012 Olympic Games, and LOCOG has to raise it somewhere.(1) What does it have to sell?  - tickets, broadcasting rights, merchandise, the exclusive right to use Olympic intellectual property (especially brands and symbols) and exclusive rights to ‘associate’ with the Games.

Since the Los Angeles Olympics in 1984(2) sponsorship money has enabled the Games to exist. The event has grown so large that the idea of any one city being able to afford it out of its public’s purse is now impossible. The value of broadcasting(3) and other product sponsorship rights dwarfs the amount of money that can be raised from selling tickets or furry mascots and t-shirts. The value of the sponsorship rights obviously depends on how much “exclusivity” is offered. The more that competitors are locked out of the game (pardon the pun) the higher the marketing value.

And so we have the special extended protection of the time-limited London Olympic Games and Paralympic Games Act 2006 which creates the London Olympics Association Right (the so-called LOAR). The Act was introduced when London won the right to host the Games, and has been the cause of grumblings and assertions of ‘draconian’ ever since, as non-sponsors of the Games assess the strict limits it places on what they can and cannot do.

It is new legislation with no court precedents - LOCOG and its advisors need to test the extent of the law and tread various fine lines between maintaining their undertaking to protect the paying sponsors, warn off smaller operators who inadvertently tread too close, and yet not stifle the community spirit around the Games.

Branding information on the LOCOG website is detailed, and can seem to prohibit just about every utterance of ‘Olympics’ or ‘2012’. That’s not right, of course - to be objectionable under LOAR the use must tend to indicate an affiliation with or sponsorship of the Games which the user does not have (and, unlike the official sponsors, has not paid for). There are also numerous defences.

The big enforcement challenge for the London Olympics is going to be social media. In a mere four years since the Beijing Games the use of social media platforms has skyrocketed, and LOCOG can expect just about every athlete and most of the spectators to be carrying a smart phone with which they can Tweet real-time comments or post photos on Facebook or videos on YouTube. In many ways this should boost the community spirit around the Games and engage people in the event. The IOC is already calling London “the first conversational Games”.(4)

But the undertakings to the sponsors have to be honoured, and LOAR enforced. LOCOG will issue careful instructions to athletes and officials - no Tweeting about non-sponsor brand names, no journalistic reporting, and certainly no videos. The paying public will be harder to control. There is some concern(5) that posting photos of the Games on Facebook might run foul of LOCOG’s rules, but sharing for private purposes is not prohibited.

The grumbling about these laws and regulations often misses some essential points. The policy behind them is driven largely by the International Olympics Committee, and was a clearly stipulated part of the deal when London bid for the Games.

But the most important message that LOCOG needs to convey is: if they can’t raise the £2bn required through generously-enforced sponsorship deals, then either the British public must meet the shortfall or there is no Games. It is a misconception that the public has “paid for the Games” - the public expenditure goes into venues and infrastructure.(6) Presentation of the Games themselves is extra. So let’s hear it for Our Sponsors, and stop grumbling about using IP laws to give them value for their Olympic dollar.

(1) On Olympic fundraising see Kenyon, J  and Palmer, C  (2008) ‘Funding and sponsorship; the commercial impact of the 2012 London Olympic Games — some considerations’  Journal of Qualitative Research in Sports Studies, 2, 1,  29-44
(2) In that year Los Angeles was the only city left bidding for the Games, and to pay for them the IOC allowed it to set up the first private Olympic Organising Committee, creating the model used ever since.
(3) NBC is reported to have paid US$1.2 billion for the broadcast rights to London’s Olympics. Guardian, 6 June 2011
(4) Alex Huot, IOC’s Swiss-based head of social media, reported in the Guardian, 14 April 2012
(5) Guardian, 14 April 2012
( 6) The Olympic Delivery Authority (ODA) is the public sector body responsible for the delivery of the new venues and infrastructure required for the Games. The ODA budget is drawn entirely from the public sector, including the National Lottery. Its budget, reported in March 2007, was £9325 million.


- Annette Freeman


This article appeared in the June 2012 issue of Intellectual Property Magazine

brand cachet

What's in a name?

In fashion, the brand can be everything. Anyone can provide quality, but not many can provide that special cachet. An article in the Independent recently mused about the classic British brands Aquascutum and Burberry - the first struggling to maintain sales and the second re-inventing itself and growing apace. Burberry is now a brand sought-after by a new generation of buyers, while Aquascutum - once worn by Winston Churchill - struggles.  Speculation is that it may go the way of another brand which used to be worn by the Royals, Hardy Amies, which went bankrupt in 2008.

In case you’d like to check if your favoured fashion brand is really delivering the impression you’d like, try this site.  It seems frivolous, but behind it lies a serious issue. Just ask Aquascutum.

As any good trade marks attorney will tell you, it pays to check the meaning of the hot new brand that your creative people have come up with. It as important as searching to make sure that the mark, or something similar, is not already used or registered by someone else. A brand that is cooly elegant in one culture may seem ridiculous in another. You may have heard of POCARI SWEAT, the popular Japanese energy drink; or the story of how NOVO for cars didn’t take off in Spanish speaking countries ( no vo - no go). Then there was CEDRIC, also for cars: it sold big in Japan but for some reason wasn’t as fashionably popular in western countries. 

But of course there’s always an exception to prove the rule. Swedish fashion brand ACNE seems to have defied what might be your expectation, and has overcome the word’s meaning as a skin rash to build a popular trade mark. Apparently ACNE is an acronym for ‘Ambition to Create Novel Expressions’. But despite convincing customers of this, there’s still the occasional reference to that ‘other’ meaning:

The fashion set is afflicted by Acne at the moment: it’s all over their backs, their feet, even their coffee tables. If you don’t have any yourself yet, now’s the time to scratch the itch. (from The Independent)

i guess it’s gucci?

Hmmm....

Two big names in fashion brands are having a slugging match in the courts - Gucci, the maker of expensive upmarket handbags is alleging trademark infringement by Guess, the maker of less-expensive though not really down-market handbags. Gucci is alleging infringement of a whole range of their design marks, including a green and red stripe design, a square G, the designer’s name in flowing script and a diamond pattern with repeating interlocking Gs. They’re asking for US$124 million in damages. If that seems like a lot of handbags, it is. Gucci alleges that 1,495 Guess products infringed. Of course, it is not just limited to handbags - footwear, jewellery, fashion items of all kinds are in dispute.

Apart from an attraction for the fashionistas, the case raises some interesting points;

Guess accuses Gucci of “sitting on its rights” for seven years. The products have co-existed in the marketplace for some time.
The Guess products sell for a lot less than the Gucci products and on that basis alone are arguably unlikely to be confused - they are aimed at quite different market segments. Guess produced some market surveys to show this.  Do they actually deceive?
Was there a deliberate “scheme” to deceive?

There has been some heavy hitting in the evidence stages of the case, with Gucci trying to prove a scheme of deliberate knock-offs by Guess. Guess’s CEO was cross-examined for four hours. If Gucci does manage to prove a lack of good faith by Guess, that will probably put the win in their court. Guess continues to argue otherwise:  “Gucci uses leather, Guess uses plastic.”

The case is Gucci America v. Guess Inc., 09-4373, U.S. District Court, Southern District of New York (Manhattan).  IPKat’s report is here.

a gap in their reasoning

Mind the Gap

In Canada, a war is being waged between an adventure travel company which was named G.A.P. Adventures Inc and the US retail company The Gap, Inc. In dispute is the trademark GAP, and of course the overlap between the services of an adventure travel company and that of a retail clothing giant.

The latest battle in the war threw up some interesting comments from the Federal Court. G.A.P. Adventures argued that “online retail store services” were not encompassed by “retail store services”. After all, a retail store is made of the ubiquitous ‘bricks and mortar’, it has showcases and windows and racks of goods, and live shop assistants. Online retailing is about websites, software, coding, click-throughs and shipping.

The Court was not impressed by the argument. It held that the phrase “retail services” is quite broad enough to mean more than operating a bricks and mortar store. The services of a retail store might well include online advertising, tweeting, emailing, and offering goods for sale over the internet:

The phrase ”retail store services” may reasonably be said to mean more than merely operating a brick and mortar building from which one sells goods and services. The services of a retail store in this day and age may well include online advertising, tweeting, emailing customers and prospective customers, and offering goods over the internet, thus giving the customer the convenience of shopping at home. It is the 21st Century equivalent to the 20th Century catalogue shopping and mail order, which arguably are also retail store services.

It’s encouraging to find a Court which is quite familiar with online selling - and tweeting.

G.A.P. Adventures has also lost out to The Gap Inc in the USA, with a New York federal judge ruling that it must change its name in the USA. The basis of the decision was trade mark infringement, though The Gap Inc was unsuccessful in arguing dilution or tarnishment of its marks, or common law infringement. Still, after a battle that began in 2007 when G.A.P. Adventures opened its first US store, it seems that the armies can collect their wounded and retire from the field - in the US at least. Canada may be an on-going war front. G.A.P. was founded in Canada in 1990, 21 years after The Gap's first store opened.

new gTLD time

String confusion?

Very shortly ICANN will be making its much-anticipated announcement of just who has applied for one of the new top-level generic domain names. Will we see .nike? .coke? .kodak? .fox? Presently it looks like 30th April will be the day of the announcement.

Apart from curiosity, why would you want to keep an eye out for this list? Well, if you are a trade mark owner, you might want to make sure that someone is not planning to use your well-known trade mark as a gTLD. ICANN will have an opposition period - all objections must be filed within seven months from the publication of the applications.

There are a couple of main possible grounds of objection for trade mark owners:

Legal Rights Objections: A trademark owner may object to any gTLD application, even if it has not applied for its own gTLD; and regardless of whether the rights claimed are based on registrations or common law use. Legal Rights Objections will be decided by WIPO using the same criteria as are used to decide domain name disputes. If the trademark owner prevails, the gTLD will not become operational.


String Confusion: A gTLD applicant may object to another proposed gTLD if it believes that the string of letters making up the other gTLD is confusingly similar to its own string of letters. If “string confusion” is found, only one of the gTLDs will be allowed. That will be determined by an auction. Thus, applicants must carefully consider whether to assert such a claim.

It seems certain that the list will cause a certain amount of interest, so keep an eye out for its release soon.

“String confusion”! I wonder if that is anything like “string theory”...chaos?

patently obvious

How does it work?

Australia's favourite economist (yes, really), Ross Gittins, penned a recent article about his thoughts on the patent system. The sub-editor gave it the snappy headline: It's patently obvious that the system is broken.


It's becoming quite fashionable to question the basis of the monopolies given by intellectual property rights. Why should Facebook have a trade mark registration for BOOK? Free culture enthusiasts argue that copyright is too restrictive. And now we have a very thoughtful article questioning the very basis of the patent system. It is a great article - very thought provoking - and I urge you to read it in full. To entice you, here are a few of Gittin's pithy points:

The reason reform of intellectual property should be high on the productivity promoters' to-do it is that we seem to be drifting ever closer to the point where its costs exceed its benefits...

So what's the problem? Much of it is that the whole area has been taken over by lawyers. It's become hellishly legalistic, complicated, loophole-ridden and expensive. In the process, the lawyers have lost sight of the economic object of the exercise. It's become an area of endless battles between businesses arguing over their rights...

It's too easy to get a patent - you can get them for very obvious ideas - and patents can be too broad, covering yet-unthought-of uses. 

You can get a patent for something that's very similar to someone else's patent. But because they're handed out so easily, you often don't know whether a patent is valid - whether his patent beats your patent - unless you spend between $5 million and $7 million battling it out in court. The high cost of litigation means big businesses regularly intimidate small businesses. 

This problem of ''fuzzy boundaries'' to patents is so bad some businesses make a living buying up dodgy patents, then threatening to sue legitimate patent-holders. The victim pays what amounts to protection money to avoid the higher cost of a court battle...

It's got so bad in the US that, according to the calculations of a leading campaigner for patent reform, James Bessen, of Boston University school of law, for all US patents bar those for chemicals and pharmaceuticals, earnings from their patents are more than exceeded by the cost of litigation to protect those patents. He calls this a ''patent tax''. 

If he's right, the intellectual property system has degenerated to the point where it's actually inhibiting innovation. We're being forced to pay higher prices, but getting nothing in return.

Them's fighting words, but  as we watch the Battles of the Giants over patents - Apple v Samsung, Yahoo v Google - it's not a bad thing to go back to basics and examine the public policy reasons behind the whole set-up. The granting of patents is supposed to protect the inventor for a short period of time (14 to 20 years usually) from anyone else copying and exploiting the invention. This undoubted monopoly and market advantage is granted to allow the inventor to get a head start on commercialisation and reap some benefits from his/her inventiveness - and increasingly not only inventiveness, but also a great deal of money spent on R&D. The cost of bringing a new drug safely to market, for example, is astronomical.

But in return, the inventor is required to disclose exactly how the new invention/chemical/software etc. actually works. The inventor thus adds to the pool of human knowledge, and - as a practical matter - saves many other busy souls from having to reinvent the wheel. Others cannot exploit the patented invention (until its monopoly expires) but they can take the new knowledge and run with it to find even better ways of doing things or making things. And this is often what happens.

Gittins makes some useful points, but - for an economist - he does skate lightly over the very high cost of developing a new drug or new software to commercial usefulness. Why should the drug companies invest massive sums in R&D if they can't reap a commercial reward? If we insist they share their inventions for free, commercial reality surely says that they will just, er, stop.

This is a greatly simplified summary of the important policy issues surrounding the patent monopoly, but so is Gittins' article. There are several sides to the story, and a bit of lawyer-bashing is not enough to disguise that. If patent law has become too uncertain and complicated, by all means reform it. But...something about babies and bathwater...?

Here's a techdirt article on James Bessen, the US 'patent reformer' Gittins refers to. It looks like Bessen has been urging action for some years - his book Patent Failure came out in 2008. His main theme seems to be that while the patent monopoly does encourage innovation and investment in it, the return isn't fair because the rights granted by patents are too fuzzy and difficult to enforce. Gittins makes the same point - then blames the lawyers. Ho-hum.

Let's lower the level of rhetoric and examine patent law reform. Without forgetting why we have patents in the first place.

australia raises the bar: guest post

not that kind of bar...

Long time listener, first time caller...

Hi, I'm Dan Wilson. As a brief introduction, I'm a Sydney-based Australian Trade Marks Attorney currently working in private practice. I had the pleasure (short time though it was) of working with Annette for the better part of a year. So I was naturally flattered when asked to provide a guest post for her IP blog.

I am a diligent Twitter follower and blog reader, but this is my first venture into the world of trade mark blog writing, so please be kind and I hope you enjoy.

The Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 has now been passed (awaiting Royal Assent) and will come into force in Australia in a little over 12 months from now. Although concerned principally with patents, the Act also affects trade marks. The following is a brief summary of some of the important changes the Bill will introduce to the Trade Marks Act 1995.

A presumptive return...

Section 41 of the Act (dealing with registrability) is to be repealed and replaced to ensure that the 'presumption of registrability' is extended to the entire section.

The Trade Marks Act 1995 was introduced with the intention that there would be a 'presumption of registrability' applied to all applications, that is, an application must be accepted by the Registrar unless there are definite grounds for rejecting it. In other words, if in doubt, accept the mark and allow the market (through the opposition/removal process) to determine if the mark should, in fact, be accepted. Then came Blount. The Federal Court of Australia handed down a decision in the Blount case which altered the interpretation and application of the presumption of registrability by the Trade Marks Office.

Following Blount, the Office took the view (as stated in the Examiners' Manual) that "the onus reverts to the applicant to demonstrate that the trade mark is, or may be taken to be, capable of distinguishing the applicant's goods or services."

Now, much to the relief of those involved in running skirmishes with the Office regarding the capacity of various marks to distinguish (one of Annette's previous posts will shed some light on these frustrations for those fortunate enough not to know the pain first hand), the amendments will make it clear (once again) that the 'presumption of registrability' is alive and well and applies to all applications.

It took just over two years for the Blount case to turn the 'presumption of registrability' around. One wonders how long it will take the courts and/or the Office this time.

Dis(op)posed to cost efficiency...

State Your Grounds
When filing  Notice of Opposition, current Australian practice usually (and almost always) sees an opponent nominate all the available grounds for opposing a trade mark. Under the new provisions, when filing a notice of opposition an opponent will be require to outline the particular grounds upon which it will rely. The exact details of 'the how' remain unknown until the associated regulations are released (at which tine, I may be invited back to provide another update...). We do, however, know 'the why' and 'the wherefore'. The Explanatory Memorandum accompanying the Bill indicates that this is an attempt to help reduce the time and costs associated with defending and/or pursuing an opposition.

On Guard!
A notice of intention to defend an application or registration against opposition will need to be filed or the opposed mark will be deemed lapsed/abandoned. This move makes sense and has been widely (as far as I have read) accepted as a sensible and logical amendment, designed to save opponents time and money pursuing oppositions that the owner of the opposed mark has no intention of defending. The Kimberly-Clark v Goulimis matter is a perfect example of the need for this amendment. Again, we will not know the full workings until the regulations are released.

Short and sweet...

Punishment Fitting the Crime
There will be an introduction of summary offences, increases in the maximum penalties for offences, and the courts may award additional damages. Here is a win for trade mark owners. Making it easier to prove fault (summary offences), higher penalties for infringers (raising penalties) and the court having the power to hand out punitive damages (additional damages) should all mean greater deterrents to would-be infringers.

Border Security
Inspection of seized goods by the trade mark owner will be allowed for in the Act. This will enable trade mark owners to determine potential infringement first hand.

Trade Marks Attorneys, Inc.
Legal privilege for Trade Marks Attorneys will be extended to include communications to overseas associates; and the registration of companies as incorporated Trade Marks Attorneys will be allowed.

What is the collective noun for a group of trade marks attorneys?


Daniel Wilson, Australian Trade Marks Attorney

olympic fever

Merchandising the Olympics

Having lived - and worked in an intellectual property practice - through the Sydney 2000 Olympic Games, it is interesting to see the same issues playing out in London as the 2012 Games approaches (please, no one sue me for using “2012” and “Games” in the same phrase).

There are many articles around which give a detailed look at the issues that face the legal team of the Olympic Committee of a host country, when the Games are almost upon them. First you have to negotiate all those license agreements with the sponsors whose funds make the Games possible; then you have to enforce them. This means everything from watching for sophisticated ambush marketing, to calling the small kebab shop to tell them that they can’t use the Olympic Rings on their sign. Even if they will be selling to Olympic tourists in the Olympic city of summer 2012.

One thing that often surprises the uninitiated is the very draconian levels of protection that are given to Olympic trade marks and logos. For example, the date “2012” is registered in all 45 classes of goods and services as a Community Trade Mark by the IOC. There are strict parameters, strictly enforced, about using “Games”, “London”, and “2012” as well as “Olympic” and the famous coloured rings.

But the truth of the matter is two-fold. Firstly, after the 2012 Games are done and dusted, the registration for “2012” will be worth nothing and will probably languish, as will many other temporary rights.

Secondly, such draconian measures are needed to protect the turf of the people who make the Games possible. No, not the athletes - the sponsors. Since sponsorship became a mainstay around the time of the Los Angeles Olympics, it has become the only way the expensive, slick, wonderful modern Olympics can possibly exist. Yes, host countries contribute enormous amounts, especially to infrastructure which will hopefully be of lasting value to their communities. But without the sponsors, no Games. And without protection for their trademarks, no sponsors.

hot topic: to pin to not to pin?

A collection of images.

If you’re a follower of IP blogs and Twitter feeds, it will not have escaped your attention that one of the trending topics is the copyright implications of ‘pinning’ images on Pinterest. There doesn’t seem to be much agreement, which could be a bad thing or a good thing. Bad, because we’d all like to know where we stand, right? (all we pinners, that is). But good, because it could mean that a new interpretation of current laws is in the wind - it’s always fun watching established law catch up with current technology - a real tortoise and hare thing. First the law gets a grip, then technology dashes out in some unexpected direction again...

So what’s with Pinterest and copyright? Well, as many blog posts will remind you - here's one, for example  - most images on the internet are NOT in the public domain, and you probably are infringing someone’s copyright if you have a presence on Pinterest. Of course, as the blog post says, you can carefully ensure that every image you pin is either public domain or you have permission...yah, yah - lawyer talk, eh? How many Pinterest users go down this route? Many such comments are directed as cautions to businesses who might be looking to use Pinterest to promote their business. It is true that if there’s commercial advantage involved, copyright owners might have stronger reasons to object to the wholesale flouting of their rights. 

Let’s not belittle the potential problem. For every owner of an image who is thrilled to see it going viral on Pinterest, there is a professional photographer who’s income is dependent upon reimbursement for use of the images they have created. 

Then there’s the boys of the Wild West, the early-adopters, who see Pinterest as the next great marketing opportunity. Here's one  who has instructions for just the right sized graphic to pin up there, and claims to have attracted 14,000+ re-pins with one graphic, which resulted in massive traffic to the client’s site.

There are lawyers who shake their virtual heads and warn that Pinterest is the next Napster - and others  who claim that the hoo-ha is a storm in a teacup.

There’s a lot of comment on whether pinning an image is sufficient to invoke the ‘fair use’ defence in copyright law - this blogger  suggests that Pinterest should change the words ‘describe your pin’ to ‘comment on your pin’ to help bring it within this defence. A truly lawyerly response. 

So we all watch with fascination to see how this plays out. The Pinterest people themselves have provided a bit of code that can be used to prevent pinning - Flickr has provided this for use by people who put their photographs up on that site. Disgruntled copyright owners can have access (in the USA, or equivalents elsewhere)  to the DCMA take-down provisions. 

The most interesting thing of all will be to see how the law evolves to deal with this latest digital communications phenomenon. For example, since it is possible now to add some “no pin” code (just as it is possible to prevent “embedding” from YouTube) - if you put an image on the internet without utilising that freely available protection, could it be argued that you’ve given an implied consent to its free use? 

Then there’s the point, sometimes rising to the surface through all the sound-and-noise, that an image on Pinterest (unlike on Facebook) retains the metadata pointing to its source. If you see an image on Pinterest, you can click through and find the site it came from. That’s the whole point of using Pinterest to drive traffic to websites, the very thing that makes it valuable to potential commercial users. Is Pinterest use then more like making a collection than making a reproduction? There are lobbying efforts out there urging broader interpretations of exceptions to copyright. Expect to hear more on this topic.

There’s certainly an argument that if you’re a commercial image-maker putting your valuable high-quality images out on the web without any sharing-disabling code, you’re really playing in the traffic. 

My favourite find in the last week is a virtual law firm who has joyfully embraced the Pinterest ethic, and has a wonderful selection of Pinterest boards, including lovely office lobbies, a legal book collection, legal ads and an art collection.

what does KIWI mean to you?

Famous mark?

The fraught problem of distinctiveness was forefront in a recent New Zealand decision of the NZ Intellectual Property Office (Pankhurst v Saramar LLC ([2012] NZIPOTM 2, January 16 2012). The applicant wanted to register KIWISOLES for flip flops (called by the generic name ‘jandles’ in New Zealand), and was opposed by the owned of the long-established and well-known mark KIWI Logo, registered and used for shoe polish and shoe laces.

According to the case report, the KIWI brand was chosen by an Australian originally, back in 1906. The shoe polish was used by the British and US armies in World War I and the brand has been so extensively used since then that it is said to be one of the world’s best-selling brands of shoe polish. But this was not enough, in the view of the assistant commissioner, to indicate a likelihood of confusion. After all, the word KIWI is so iconic in New Zealand that it is often used to describe New Zealanders themselves, as well as the flightless bird that is the symbol of the country. It is also common to find the word KIWI used to describe goods and services of all kinds which emanate from New Zealand.

In this situation, the assistant commissioner seems to have felt that the owner of the KIWI shoe polish mark has only very restricted rights - restricted to the specific goods in relation to which it has used the mark, and for the specific mark for which it holds registration. KIWISOLES was not too close to the KIWI Logo.

However, she was prepared to grant registration to KIWISOLES, finding it distinctive enough, despite rather obviously referring to footwear from New Zealand.

In another aspect of the decision, the assistant commissioner decided that shoe polish and flip-flop footwear were not goods of the same description, nor likely to be confused. After all, wearers of flip-flops are not likely to use shoe polish on them. Despite the razor sharp logic here, can we just ask whether New Zealand flip-flop wearers might sometimes own and polish more formal footwear? Or if they have ever heard of brand extension?

Read the full decision here. 

dot brand - fasten your seatbelts

A wild ride.

The thorny question of just how far a commercial enterprise needs to go in registering domain names has become just that bit more thorny, with the imminent launch of the dot brand gTLD (generic Top Level Domain). Unlike a second-level domain, this will turn a brand owner into something akin to a domain registrar. Think .freemanip instead of freemanip.com

INTA, which represents trademark owners, has a full explanation here, and on the subject of whether you should apply, says:

The ICANN application fee alone for a new gTLD is US $185,000; completing the application will also require specialized technical, business and legal knowledge. If more than one applicant has a legitimate interest in a certain new gTLD string, the string may be auctioned to the highest bidder. Successful applicants will become part of the domain name system, will be required to execute a 10-year registry agreement with ICANN, and must meet various ongoing ICANN compliance requirements.

There has been a lot of hand-wringing over ICANN’s plans, but a recent survey by the registry services provider Afilias found that 44 percent of large companies in the USA and UK plan to apply to register dot brand domain names, although there was still some lack of awareness, especially of the up-coming deadline. ICANN is now accepting applications for new dot brand TLDs, but applications in the present window close on April 12, 2012, with no indication of when the next opportunity to apply will come - it may be several years away.

The application for a dot brand domain name apparently contain about fifty in-depth questions, many of a technical nature, so companies wanting to apply should be well into the process by now.

This commentator at the distilled blog was rather surprised that ICANN actually managed to move on this, and predicts confusion and that

Brands will rush to buy nonsense like .cocacola and then realize that they can’t use it as http://cocacola – so instead http://www.cocacola will just get redirected to their main .com site.

If the dot brand TLD is as popular as this survey indicates, there is likely to be quite a scramble for names, which puts more pressure on dispute resolution procedures. ICANN met this past week in Costa Rica, and so far has not given much detail on progress with the proposed trademark clearinghouse, an initiative designed to reduce conflicts with trademark owners. Here’s a report on ICANN’s lack of detail from a World Trademark Review blog.

A wild ride ahead.

why do you need a trade mark strategist?

Have you got a strategy?

So you have a few trade marks. You used an attorney to help you obtain registration, although it seemed pretty straightforward. You didn’t run into any problems, but maybe that was because you used a good attorney who steered you clear of the pitfalls. But now it is just a matter of sitting back - the job is done, right?

If you think that maintaining a trade mark portfolio is just a matter of keeping an eye on the renewal dates, consider just a few points....

• Are you sure that you have the protection of registration for all of the marks your enterprise uses?
• So you’re considering having products made in China, but you won’t sell there. Do you still need to register your trade marks in China?
• Is it better to register a Community Trade Mark that covers the whole of the EU, or just the one European market of interest to you?
• How do you effectively monitor the marketplace to make sure no one uses a mark too similar to yours? 
• What do you do if you find a competitor using your mark?
• How do you keep renewal costs under control?
• You’ve increased your product or service range. Do your existing registrations still provide sufficient protection?
• Should you register domain names incorporating all your trade marks?
• Is it necessary to register the words, logos and different coloured versions of your marks separately?
• You want to launch into the US market in a couple of years. Should you register there now?
• A company acquisition has brought you a whole swag of trade mark properties in different countries. How do you make sure you know what you’ve bought and that the registrations are all valid and current?
• The colour you have used on your products for several years is becoming well recognised. Can you stop others from using the same colour?
• Your marketing people have come up with some variations on your house trade mark. is it a good idea to use these?
• Speaking of your marketing people, do they have a basic grounding in best practice for correct trade mark selection, use and protection?

So here we have a blog post full of questions but no answers. The real take-away is: managing a trade mark portfolio may not be rocket science, but it can  be far more complex that you first think. Find an expert.

superbrands

Starbucks: No. 152

My ‘Guardian’ was recently enlarged by the inclusion of a substantial insert put out by a company called Superbrands UK - see their website here. Their research for this year has produced a list of the UK’s “strongest” brands, based on the opinions of marketing experts, business professionals and British consumers.

Such league tables measure a number of factors, the most prominent being the visibility of the brands and their perception as trustworthy and/or as indications of quality. These elements presumably equal “strength” -- the word that Superbrands UK uses to indicate a real brand winner. They separately survey “Consumer Brands” (B2C) and “Business Brands” (B2B). The impressive newspaper insert and the website do not dwell too much on how exactly these surveys are conducted, but on delving further we find this (for the Consumer Brands survey):

The annual Consumer Superbrands survey is independently administered by The Centre for Brand Analysis (TCBA). Brands do not apply or pay to be considered; rather, the
selection process is conducted as follows: TCBA researchers compile lists of the UK’s leading business-to-consumer brands, drawing on a wide range of sources, from sector reports to blogs to public nominations. From the thousands of brands initially considered a final shortlist is created. For 2012, just over 1,700 brands were shortlisted...The remaining brands are voted on by the consumers of those brands, accessed via a YouGov panel. For Consumer Superbrands, a nationally representative sample of more than 2,000 British consumers (aged 18 and above) was surveyed. 

And the definition of  a “Superbrand”? -

‘A Superbrand has established the finest reputation in its field. It offers customers significant emotional and/or tangible advantages over its competitors, which customers want and recognise.’ In addition, the voters are asked to judge brands against the following three factors: Quality. Reliability. Distinction. 

I find the ranking process a little nebulous - “distinction”? However, there is no doubt that a brand is the face of a business, and for it to successfully draw and retain customers it needs to be memorable, attractive and a sign of quality. So congratulations to the Superbrands.

And who were the winners? Superbrands UK were pleased to report that “Nearly half of the top 20 Consumer Superbrands hail from Blighty, while 11 of the top 20 Business Superbrands are British business heroes.”

(“Business heroes”?)

The full lists can be found on Superbrands UK’s website, but here’s a taste:

Consumer Superbrands 2012

Rolex

Coca-Cola

Google

Mercedes-Benz

BBC

BMW

Duracell

Dulux

Jaguar

 Royal Doulton

Business Superbrands 2012

Rolls-Royce Group

Google

GlaxoSmithKline

Apple

British Airways

Virgin Atlantic

London Stock Exchange

Bosch

Visa

PriceWaterhouseCoopers

In possibly the biggest brand come-back, I was interested to note that British Airways was up 43 places on last year, leaping from 48th to 5th. Will there be some bubbly flowing at BA’s marketing and promotions department? Or do these league tables really mean very little?

olympic brands: reputation

A rough road...

I’m often looking out for news stories about brands and trade marks in the daily press. Recently an unfortunate one surfaced.

Headline on a story in The Guardian the other day: “Olympic brands caught up in abuse scandal”. If you’re a brand owner who has paid a hefty sponsorship dollar to sponsor a national team or particular athletes or sports at the London 2012 Olympic Games, the word “scandal” is no doubt not one you’d be happy to see associated with your name. In fact, Olympics or no Olympics, this is not a pretty story.

The Guardian article concerns an investigation into conditions at Bangladeshi sweatshops where underpaid and allegedly abused workers, mainly women, make the expensive and high quality sports clothes and shoes sold under flagship brands such as Adidas, Nike  and Puma. The companies have responded, saying that they have regular audits, monitoring visits, codes of conduct and a hotline for complaints.

The organisation War on Want claims that this is not ensuring fair conditions, and has released its own report on the Bangladeshi situation, entitled ‘Race to the Bottom’. A War on Want spokesman described the companies as “soiling the Olympic flag”, which is rather  melodramatic, but he’s mad as hell. Rightly so, if the allegations are correct, and despite all the Codes of Conduct in the world, women in poverty are being slapped, verbally abused, harrassed, under-paid and over-worked while they make runners and Team GB sports clothes.

This is not the only story around about luxury western products being produced in third world sweat shops. Apple (and Microsoft, Dell and Hewlett Packard) have had to fend off similar allegations about inhumane conditions in the factories in China which manufacturer its iPad and iPhone products.

What a disconnect there is here. Big brand companies spend so much money and effort in trying to ensure their brand is recognised as a symbol of trust, reliability, great design and superb quality. And then their business model of cheap production in China and the Third World shows up this symbol for the lie it is. What is wrong with this picture? Aren’t the manufacturing pipeline people talking to the marketing and PR people? Answer: they are now.

But there’s a bigger picture too. It is possible to be in business profitably and maintain decent ethical standards. Isn’t it? Time for some philosophical thinking and ethical leadership.

reasons for lawyers to blog

Be heard....

Reasons for lawyers to blog, in no particular order:

1.Attract new clients: yes, occasionally a potential new client will find you via a blog post. This may be rare, but will happen, especially if you become somewhat if an expert or go-to authority for your particular niche.

2. Become a recognised expert - if you become the person who is always commenting, early and often, about trending topics in your field, then you acquire a valuable reputation.

3. Bring your expertise to the attention of media, get approached for comments, get quoted.

4. Raise your ranking in the search engines. This involves understand the best use of keywords and SEO (search engine optimisation), but it also needs regular blogging with lots of fresh new content. It’s value? You’re found first (or at least sooner) in searches, and searches are the new Yellow Pages, folks.

5. Drive more traffic to your web site, where you keep the more in-depth stuff that will give a full picture to prospective clients or media people.

6. Be in the ballgame with IT clients, sophisticated corporates and social media-savvy clients, who are probably all blogging themselves.

7. Brand awareness - have people heard of you? Like publishing an authoritative book, a good blog will bring you to the attention of your peers, the media and potential clients.

8. Provide a resource for your existing clients and your general audience. Your blog posts can become an archive of valuable, easy to access advice. Posts with more depth and longevity can be kept in a ‘vault’ on your website for easy searching by topic.

9. Don’t just tell people you’re an expert - show them.

10. The discipline of keeping up to date and writing fluently about your interests in your field is remarkably good for you!

for your Pinterest

Pinning..

Just as your marketing people were starting to figure out how to use Facebook, Twitter and LinkedIn effectively in business, along comes Pinterest. You may have read recently that Pinterest is now attracting more unique visits than Google+, hit 11 million unique visitor in the US, and increased its traffic by 68% in January alone - and Mark Zuckerberg has set up his own Pinterest page.

What does Pinterest look like? Click here

Now sit down, take a deep breath: it’s not really that scary. Pinterest is an online bulletin board for images found while trolling about the web. It has been described as “Twitter with pictures”, or the online equivalent of the fridge magnet collection. Do you need to immediately integrate it into your business marketing plans? Well, maybe not today. On Pinterest there is presently a preponderance of recipes, wedding dress ideas, travel, arts and crafts, and so on - just the sort of things you would expect to find in a virtual scrapbook. But that is not to say that we won’t soon see a transformation of the ways in which Pinterest is used. Already some businesses are scrambling to find ways to access all that web traffic.

For example, a marketing team responsible for boosting visitors to a city or state can set up a Pinterest page with gorgeous pictures of the location: ideal for that type of promotion. Pinterest has obvious applicability for companies selling lifestyle products and services. Mashable has a topic thread devoted to Pinterest, with a million and one ideas on how to use it.

Pinterest could also be about more than marketing. Lawyers and other service providers, especially in IP, might want to keep their own Pinterest account just to check on the activities of clients using the site. What are they doing with their brands? What reactions are they getting? For solo practitioners, it could also be a tool for networking with other lawyers, and with clients, since its main focus is sharing interesting information. Think office products, travel destinations, new restaurants...get creative. Everyone else is.

I've seen suggestions that an attorney firm might want to have its own page, with people shots, powerpoint slides, firm events and so on. But at this stage of Pinterest's evolution, keep it casual. Potential clients are unlikely to go to Pinterest to look for an attorney. Having said that, potential clients might like to know that you understand Pinterest, especially if they are in the IT or social media field themselves. And the site is becoming something of a search engine itself, so you never know where that will go.

And here’s something to ponder: Pinterest is said to be generating more traffic to websites than YouTube, Reddit, Google+, and LinkedIn combined. So merely for driving traffic to your website, Pinterest could be worth investigating. Here’s a Techcrunch article by Reggie Bradford with some smart techie ideas for leveraging Pinterest in your social media marketing strategy. As Reggie says:

“Content is king, and anything that makes it easier for your teams to identify and curate great content represents a competitive advantage. The Pinterest “Pin It” button works quite well for consumers. Unfortunately it wasn’t designed for marketers and is therefore missing some features that would let you include analytics tracking as a simple part of the “Pin It” process. This won’t last long, as tools to fill this gap are already under development. 

Pinterest is still in its infancy, and time will tell if it continues its rapid growth or plateaus. But it certainly exhibits the potential to provide visually engaging experiences for consumers that marketers can weave into their social communities. Brands can start simple, then evaluate for effectiveness along the way. Being able to experiment with new and innovative platforms is part of the fun and excitement of social. And brands should start experimenting today.”

Happy pinning.

to tweet or not to tweet...

Tweeting

...that is the question. Whether ‘tis nobler in the mind to suffer the stings and scorns of outrageous fortune, or to take arms against a sea of troubles, and by opposing, end them.

(with apologies to the Bard). (And, sorry, that’s 205 characters).

Anyone who hasn’t used Twitter is usually quick to call those who do “twits”. It’s a worn-out pun now, folks. With Twitter claiming 175 million registered users, it’s surely time to at least consider it seriously. It has also been around long enough for us to make a few observations on the way it has changed, enhanced or undermined the way we communicate.

With only 140 characters in which to express yourself, it seems to some that a tweet is a quintessential example of the dumbed-down sound bite. There are others to whom it is a thing of beauty. Yoko Ono is a keen tweeter who was recently quoted as saying:

“it’s almost like a haiku, but involving other people in a participation act”.

Speaking of haiku, there are those who set themselves the challenge of writing poetry or a prose poem in 140 characters - and there’s an app for that: TwiHaiku. Check out Unfold Press: “the most poetic 140 characters you’ll read today”. Think I’m kidding? Consider the exquisite little poems on their site.

Then of course there is the cacophony that you can encounter when launching into Twitter.  It may seem less like haiku and more like the noisiest cocktail party you’ve ever attended. But, as with a cocktail party, the key is to engage with the conversation that interests you and add your own comments. If the subject is enticing, those first comments may lead you to a blog or a website or an article that warrants your undivided attention. Or the subject might just be part of the stream of daily culture that passes you by, maybe or maybe not leaving impressions or information in its wake. Just like a regular conversation. And unlike television, or even a book, you get to respond. Yes, you are included in the conversation.


Here's what a recent conference speaker Tom Bedecarré  had to say about using Twitter in business:

"One important question is, how to understand the change from a push model to a collaborative discussion. I find that clients struggle with that change. The good thing is, whatever is new and interesting gets a lot of attention. For a brand, last year it was the iPhone application, this year it is the Facebook page ... 

Twitter is used for a lot of different things – that is one of the interesting things about it. People are creating business opportunities, use it to communicate with friends, publish something or tell the people out there about a brand. This is why I don't understand Twitter haters. There is something really exiting about Twitter. This is going to be a platform that will lead to great ideas."

Twitter may be just the thing for 175 million people, but not for you. That’s fine. But it's certainly interesting to observe just what it can and does do to our communications.  

the end of email?

end of the road?

More articles are emerging about the end of email. This may seem almost as momentous as the end of history. But before you go buy some carrier pigeons, the discussion so far is only about internal company email.

For such email, the future is looking less and less secure. Personally, I don’t mind email for business - for me it is quick, leaves a paper trail, is date stamped automatically...and, importantly, I have the guts to delete now and delete often, where appropriate.

But the people doing the research are telling us that many inside companies, including CEOs, are spending up to 20 hours a week doing nothing but dealing with email. There is a plethora of advice about how to stay on top of email, how to ration the time you spend on it, email etiquette and so on, but still the tool (and that’s all it is) more often produces inefficiency than the reverse.

One of my biggest bugbears with inter-company or inter-firm email is that someone can spend ten valuable minutes sitting on her or his butt carefully composing an email to me, when I’m just a few steps away. How about some old technology folks? Like walking and conversing? It would help your health.

This article in the The Sydney Morning Herald says that French company Atos (74,000 employees) aims at banning internal email completely by 2013.

CEOs are looking at new ways of doing things. Using micro blogging for short announcements to multiple people (that don’t need an answer), electronic scheduling tools for getting people together without the discussion, instant messaging for a quick word with someone on a different floor, and Facebook-style interfaces for more efficient conversations.

This article by Jill Duffy  makes a case for the superior utility of social media style communication tools within companies: “brevity by design”, a team ethos, actually including more people across departments in discussions.

While this is about internal company email, not email generally, you never know how these things can spread. Futurists might indulge in some wild-seeming speculations about this trend -- and who’s to say what the future of email will be? Watch this space.

the rat race

Office life: can you stand it?

Business people are not all the same just because they all sit at desks. 

Not that they all do just sit. In a recent New York Times report, an article by Eric Copage highlighted the health dangers of sitting all day, and promoted the benefits of getting up from your chair and moving about during the working day. It seems that exercising out of office hours is not enough on its own to combat the risks of sitting on your butt all day. 

Copage reports that a firm in Minneapolis, hoping to help matters, has introduced walking meetings. Yep, you read that right. In their conference room they have set up “treadmill desks” with height-adjustable working surfaces. Employees have also been provided with treadmill desks with computers. Then there’s wireless headsets for walking about while talking on the phone.

As someone who spent a lot of years sitting down in an office, I fully endorse any efforts to change that dynamic and get people moving during their working day. Taking the stairs between floors instead of the lift is great. Going to talk to someone instead of sending yet another rambling email can be good. A small gym within the office is convenient. Breaks for activity would be innovative. I’ll even endorse sitting on a balance ball.

But those guys walking on the treadmill while they work -- that just defines “rat race” for me. 

creativity: group think or solo activity?

'I just want to be alone'

Creative people are famously loners, at least in stereotype. But in business, there is a view that ‘brain-storming’ in a group, and being constantly connected with others in an open-plan office is the way to unleash new ideas and allow people to access their inner Steve Jobs. 

In an interesting article recently for the New York Times, Anita Patil reviews some of the current thinking on this topic. She says that recent research has shown that brainstorming may be inefficient:

“The problem? Well, other people. In a group, people can tend to fixate on one idea, blocking out other possibilities, or they sit back and let others do the work. Eventually...group members start to mimic others’ opinions and conform.”

Sound like a meeting near you? 

Patil also points out that the creative process can have “a quiet part”. Smart ideas don’t always come from the people with the dazzling charisma. And even those people may need some contemplative time out to recharge and connect with their best ideas.

As for open plan offices, Susan Cain, author of “Quiet: The Power of Introverts in a World That Can’t Stop Talking” is rather scathing:

“...corralled into endless meetings or conference calls conducted in offices that afford no respite from the noise and gaze of co-workers. Studies show that open-plan offices make workers hostile, insecure and distracted.”

I think that the point here is that there is no one-size-fits-all when it comes to the psychology of those who work in offices. Some may thrive on interaction and others may cringe at the constant barrage of people. A wise manager will play to an individual's strengths, and not try to force round pegs into square holes. And with that flurry of cliches, I'll leave you to think about it. Quietly.