Friday, March 30, 2012

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.

Monday, March 26, 2012

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.

Friday, March 23, 2012

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. 

Wednesday, March 21, 2012

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

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.

Sunday, March 18, 2012

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.

Wednesday, March 14, 2012


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

 Royal Doulton

Business Superbrands 2012

Rolls-Royce Group
British Airways
Virgin Atlantic
London Stock Exchange

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?

Saturday, March 10, 2012

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.

Thursday, March 8, 2012

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!

Monday, March 5, 2012

for your Pinterest


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.

Friday, March 2, 2012

to tweet or not to tweet...


...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.