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)