Wright, Johnston & Mackenzie Solicitors

Advertiser allowed to offer Stella McCartney prizes

The UK advertising regulator, the Advertising Standards Authority, has held that an advertiser did not need the permission of Stella McCartney Ltd to use its products as prizes in a competition.

A sales promotion for Bodyform products advertised the opportunity for their customers to win £100 worth of Stella McCartney underwear. The promotion consisted of two magazine adverts and one online advert.

Stella McCartney Ltd (SMC) complained to the ASA that the promotions adversely affected the reputation of the SMC brand by implying an association between SMC and Bodyform. SMC also argued that the promotions were misleading in implying that SMC had endorsed the Bodyform product and that the adverts did not make it clear that SMC did not endorse the promotion.

In its defence, Bodyform claimed that they were simply offering another manufacturer’s product as a prize in a competition - Bodyform claimed that this was a common accepted practice.

Bodyform also argued that the adverts did not imply a connection between SMC and Bodyform and that offering SMC products as a prize did not adversely affect the SMC brand, as it did not attack or attempt to discredit SMC.

The ASA decided that, in the absence of any disparaging claims by Boydform, the offering of SMC’s product as a prize in a competition did not in itself discredit SMC. In addition, because the advert did not state that SMC had endorsed the promotion, the Advertising Code did not require Bodyform to obtain prior permission for the advert.

The ASA also held that the adverts had not suggested an endorsement by SMC of Bodyform - the adverts did not state that SMC had endorsed the promotion, so readers would not think that they had.

As a gesture of goodwill Bodyform amended the adverts to add a qualification that SMC had not endorsed the promotion, despite the decision in their favour.

To protect your business from challenges from competitors or third parties under the advertising code, it is essential to ensure that your adverts comply with the terms of the code and ensure that all necessary consents have been obtained.

For further advice on your obligations and potential liabilities when advertising, please contact a member of the iTech team.

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Technology big-guns sued for patent infringement

Paul Allen, the billionaire co-founder of Microsoft, has filed a lawsuit in America against 11 tech giants accusing them of infringing patents that he acquired from his former company, Interval Research. 

Interval Research was a market-leader in the development of information systems, communications and computer science in the 1990s and was awarded more than 300 patents before closing its doors in 2000. At that point the patents in question were transferred to Vulcan Patents LLC and then on to Interval Licensing, which remains a Paul Allen company. 

The most notable patents which Allen alleges have been infringed are entitled “Browser for use in navigating a body of information, with particular application to browsing information represented by audiovisual data”, and “ Alerting users to items of current interest”.  The lawsuit alleges that AOL, Apple, eBay, Facebook, Google, Office Depot, OfficeMax, Staples, Yahoo!, and YouTube have all violated these patents.

If successful Allen’s company could be awarded millions of dollars in damages and force the accused parties to licence the products from them – charging huge sums of money.

The complaint does not suggest that any of the defenders copied the invention from Allen’s company, nor that they were aware of the patents before the complaint.  The lawsuit simply alleges that the technology giants had breached the company’s patents.

Importantly, a patent owner does not have to show that his patent was copied to prove infringement and damages can be back-dated even when the infringement occurred or without the alleged infringer having knowledge of the patent.

The case highlights the importance of patenting your inventions, to ensure that your invention is fully protected and ensure that you reap the full benefit of your work – whether through licensing your invention to third parties or suing third parties for unauthorised use of your invention.

For advice on licensing, patents or other aspects of Intellectual Property, please contact a member of the iTech team.

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UK and China in copyright breakthrough

A potentially major breakthrough for companies trading in China was reached in September, as the UK and China signed a ‘Memorandum of Understanding’ agreeing to work together to co-ordinate policies on tackling copyright infringement.

Under the Memorandum, the two countries have agreed to work together to share ideas and best practice on copyright protection and enforcement and also promote the importance of intellectual property rights in both the UK and China.

The Memorandum will also see both countries look for opportunities for development and training in copyright laws in both the UK and particularly China.

Whilst the Memorandum will not in itself increase either country’s obligations under international copyright agreements or change domestic laws, it is hoped it will assist in the development and refinement of China’s copyright laws and the enforcement of them.

China has long been criticised for its apparently lax attitude to copyright infringement and other breaches of intellectual property rights and it is hoped that China’s entering into the Memorandum and a similar agreement with Japan in March marks a change in this attitude.

It is hoped that the Memorandum will benefit those companies already trading or wishing to trade in China, as China’s copyright laws will be more easily accessible and understandable and China’s courts become more willing and able to enforce these laws.

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Lego hits trademark brick wall

Danish toy manufacturer Lego has lost a 14 year trade mark battle to protect its plastic bricks in the European market.

The European Court of Justice (ECJ) has held that the Lego brick was a functional, technical shape and as such could not be registered as a Trade Mark. The ruling will allow competitors to continue selling plastic building blocks similar to Lego’s in the EU.

The modern Lego brick first appeared in the 1950s and Lego had previously secured a trade mark for its brick in 1999. However the EU Trade Marks Office cancelled it five years later after an appeal by rival toy maker, Canada’s Mega Brands Inc, which makes similar blocks. Lego had one appeal rejected in 2008 and so appealed to the ECJ for a final decision.

Shapes can be trade marked just as words, logos, sounds or even smells! However it is well established that items whose shape merely performs a technical function, cannot generally be trade marked, because to give someone a trade mark over the shape would give them a perpetual monopoly over that function.

Lego argued that only shapes which create a monopoly on a technical solution should be barred from trade mark protection. The ECJ disagreed, saying that a shape could still be barred from registration as a trade mark even if the function of the shape could be achieved by other means.

The ECJ further said that Lego bricks would not escape the rule on functionality just by adding non-essential characteristics and added “the functional shape itself must be available to everyone”.

However, Lego’s fight may not be completely over as the ECJ left open the possibility that Lego could take action under unfair competition laws to object to copies of its bricks. The iTech team will keep you updated with any progress.

If you wish any advice on trade marks or intellectual property rights in general, please contact a member of the iTech team.

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Train advert pulled for not being fast enough

An advert which claimed that the Stansted express train would get passengers from Stansted Airport to London city centre “within 35 minutes” has been criticised by the Advertising Standards Agency (ASA) for being misleading.

The National Express poster shows various famous landmark images of London with arrows pointing towards them stating that the Stansted express train will get you to London city centre within 35 minutes.

However, the train journey referred to in the advert in fact only takes passengers to the outskirts of London and a further 10 minute train journey is required to reach the city centre.

The ASA said that the combination of the text ‘35 minutes’ alongside the images of iconic central London landmarks implied that travellers would reach central London within 35 minutes and that because this was not the case, the advert was misleading.

It is important to ensure that all information contained in your business’ adverts and promotions is correct, accurate and not misleading. If the information proves not to be correct and is misleading your business could be forced to withdraw the advertising campaign and face a fine.

If you wish any further advice on the rules regulating advertising and the obligations you must comply with, please contact a member of the iTech team.

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BBC wins gameshow copyright battle

The BBC has been cleared of copyright infringement after a man claimed that they had “stolen” his idea for a new game show.

In 2002 Robin Meakin sent his proposal for a game show named “Cash Call Challenge….Live!” to the BBC and Celador Productions. The concept behind Meakin’s programme was that was viewers at home would be able to use their phone to participate in a live quiz against the teams in the TV studio.

Subsequently, the BBC launched a new programme called “Come And Have A Go…If You Think You Are Smart Enough” (“CHG”). The BBC’s programme also made use of audience participation by interactive television, computers and live videophones. 

Meakin claimed that the BBC programme was based on his concept and breached the copyright contained in his proposal. He said that audience participation aspect of both shows proved that the BBC had copied his proposal.

The BBC and Celador said that Meakin’s claim was little more than a conspiracy theory.

In reaching a decision, Mr Justice Arnold in the High Court agreed with the BBC and Celador and found that Meakin’s case was not strong enough to validate his claim. He said that the similarities between the programmes were very general and therefore did not amount to copyright infringement. He also highlighted that the concepts in Meakin’s programme were not new or innovative - many other shows now utilised viewer participation by a variety of means. As a result, the BBC and Celador had not breached Meakin’s copyright.

If you wish any further advice on copyright or intellectual property rights in general, please contact a member of the iTech team.

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