Intellectual Property
Protecting your brand and
profiting from it
Introduction
1. Social Media
-
Issues related to corporate use
Issues related to third party/employee use
2.Protecting Copyright in the Digital Age
-
Rights in data
Copyright in software
Copyright and anti-circumvention laws
3.Brand Protection
-
Colour as a trade mark
Practical issues from an in-house perspective
4.Patent Box
5.Questions?
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1. Social Media
Social Media
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SOCIAL MEDIA??
Over 1 billion social media users globally
Over 400million people use FACEBOOK every day
Avg FACEBOOK session is 37 mins. TWITTER 23 mins.
Smart phones = 51% of UK mobile market (30% in Q1 2012)
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(i) Corporate use of Social Media
1. TERMS & CONDITIONS
a. Barclays [and B&B] publish news, photos and other
material to Twitter or Facebook.
b. The sites' use of this material is governed by terms
and conditions.
c. Facebook's T & Cs grant them a licence of the IP in
any content posted.
d. Facebook allows only restricted use of data gathered
through advertising (eg cannot sell to third party).
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(i) Corporate use of Social Media
•
Last year the online photo and social networking site
Instagram introduced the following condition of use:
"to help us deliver interesting paid or sponsored
content or promotions, you agree that a business
or other entity may pay us to display your
username, likeness, photos, and/or actions you
take, in connection with paid or sponsored
content
or
promotions,
without
any
compensation to you."
•
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Instagram eventually clarified that selling its 100
million users' photos was not its intention.
(i) Corporate use of Social Media
So beware site’s TERMS & CONDITIONS and have your own
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(i) Corporate use of Social Media
2. Advertising generally
a. Consumer Protection from Unfair Trading Regs
– General – unfair commercial practices
– Specific – misleading actions – or in some way
deceitful
– Blacklist – 31 (eg advertorials)
b. Code of Non-broadcast advertising... (CAP)
– Legal, decent, honest and truthful
– Communications must not materially mislead or
be likely to do so.
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(i) Corporate use of Social Media
Complaint against Katie Price Tweet
"You're not you when you're hungry
@snickersUk #hungry #spon"
Advertising
Standards
Agency –
NOT
UPHELD
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(i) Corporate use of Social Media
3. Multiple jurisdictions (FSMA)
a. Authorised persons & financial promotions
4. Market abuse (FSMA)
a. Speed – inside information
b. Accuracy - creating a false or misleading impression.
5. FSA Handbook
a. Non-promotional communications
b. Financial promotion (COBS4, BCOBS2, ICOBS, MCOB3)
c. Image advertsing
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(i) Corporate use of Social Media
6. FSA – practical matters
a. New media may date more quickly than traditional
media
b. Suitable method for the type of communication. For
example, Twitter limits the number of characters
– Misleading?
– Risk information to be displayed prominently and
fairly?
c. Geoblocking
d. Complaints
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(ii) Third Party/Employee use of Social
Media: Nestlé KitKat
● Greenpeace released a fake Kit-Kat commercial on Youtube
accusing Nestlé of the use of palm oil and deforestation
● Nestlé attempted to get the video removed from Youtube
● Youtube accepted the removal of the video but the video was
reposted by others
● Greenpeace used Twitter to criticise the censorship attempt
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Online criticism: Nestlé KitKat
Every 15 minutes a tweet regarding “palm oil” appeared
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Online criticism: Nestlé KitKat
Meanwhile the anti-Nestlé discussions moved away from activist
blogs and appeared on Nestlé’s Facebook page
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Online criticism: Nestlé KitKat
Nestlé responded to the
criticism on their wall by…
● Threatening to delete
comments left by
individuals using modified
versions of their corporate
logo as avatars…
● Answering ‘fans’ in an
aggressive way
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Online criticism: Nestlé KitKat
Do you believe in coincidence?
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Policing use of your brand and reputation in
social media
● Identify which social media platforms your customers use and
which are most relevant to your business
● Do not overreact
● Be proactive and implement clear policies and procedures
● Install a monitoring program
● Leverage tools offered by the social network
● Be creative – threatening litigation may lead to a backlash
(Freedom of speech versus the protection of reputation/brand)
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2. Protecting Copyright in the Digital Age
(i) Rights in Data
● Sui generis database right
-
Protects databases not data
Where investment in obtaining verification or presentation
Infringed by acts of extraction or reutilisation of substantial part
Also infringed by repeated extraction/reutilisation of
insubstantial parts
● Database Copyright
- Protects databases
- Higher originality threshold – selection or arrangement of data
has to be author's own intellectual creation
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(i) Rights in Data
Forensic Telecommunications Services Limited v the Chief Constable of
West Yorkshire Police and Stephen Hirst [2011] EWHC 2892 (Ch)
• Compilation or table of mobile phone permanent memory absolute (PM
abs) addresses (used to recover evidence for criminal investigations)
•Copyright did not subsist in individual PM addresses
•Copyright did also not subsist in the database of addresses as selection
and arrangement not authors' own intellectual creation
•Database rights did subsist as there had been considerable investment
in the obtaining of the addresses
•Confidential information subsisted. Commercially valuable information.
Ds should have been aware that had an obligation to keep confidential.
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(ii) Copyright in Software
Legal background
• Copyright subsists in "original" literary and artisitc works
• Software Directive, Article 1(3) provides that a computer
program shall be protected "if it is original in the sense that it is
the authors own intellectual creation"
•Copyright can subsist in:
• Computer program itself – source code and object code
• Preparatory materials and manuals
• Other copyright works incorporated into computer programs eg
design and layout of a screen, embedded sound and film, etc
• The architecture of a computer system
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(ii) Copyright in Software
Copying ?
• Copyright prevents the whole or "substantial part" of copyright work
being copied
• Copying does not need to be intentional
• Unconscious recollection of code by programmer who then
reproduces it would infringe in the same was as if intentionally
memorised
• Indirect copying
•Work does not infringe just because it is similar so long as no copying
has taken place.
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SAS Institute Inc ("SAS") v World Programming
Ltd ("WPL") CJEU C-406/10 2nd May 2012
• Software created by WPL emulated functionality of SAS software.
Enable users to execute application software written in SAS specific
coding language.
•SAS claimed that in creating its software – WPL infringed copyright in
SAS manual and indirectly infringed copyright in the software.
•SAS claimed that WPL's manual infringed copyright in the SAS manual.
•SAS claimed that in studying, observing and testing the SAS learning
edition software WPL had breached the terms of its licence to use it.
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SAS Institute Inc ("SAS") v World Programming
Ltd ("WPL") CJEU C-406/10 2nd May 2012
CJEU Decision:
• The functionality of a computer program, its programming
language nor format of data files protected by copyright because
not forms of expression for purposes of Article 1(2) Software
Directive
• BUT did not necessarily mean that SAS language and format of
SAS data files were not protected as works.
•Article 5(3) Software Directive allows a licensee to observe, study
and test programme to determine the ideas and principles behind
it so long as acts covered by the licence.
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SAS Institute Inc ("SAS") v World Programming
Ltd ("WPL") CJEU C-406/10 2nd May 2012
• CJEU also held that infringement occurs where elements from a
user manual are reproduced in another manual or computer
programme
• So long as reproduction constitutes expression of the intellectual
creation of the author of the copyright protected user manual
•Decision still to be considered/applied by the English High Court
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(ii) Copyright in Software
Open Source Software ("OSS")
• 80% of organisations expected to have OSS within their own
software code base.
•Potential for conflicts between OSS licences and traditional
proprietary licences.
•Risk of core product portfolio becoming subject to T&Cs of an
OSS licence.
•Companies such as Black Duck can audit software to determine
how much OSS is used.
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(ii) Copyright in Software
Ownership/Copying
• Software developed by a contractor who is not an employee will
belong to the contractor in the first instance.
•Company should ensure it takes an assignment.
• Risk of copying by third party developers/competitors.
•Include "sleepers" – lines of code with no function which can
identify the origin of the software.
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(iii) Copyright and Anti-Circumvention
Laws
• Copyright law prevents the circumvention of technological
barriers for using computer programs in ways which the right
holders do not wish to allow.
Sony Computer Entertainment v Paul Owen and Others [2002]
EWHC 45 (Ch)
• Use of Messiah chips in Playstation 2s enabled users to play
games which had been copied or which were from other countries.
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3. Brand Protection
(i) Colour as a Trade Mark
• Colour is registrable as a trade mark if capable of distinguishing
goods/services of one business from those of another
• It can be difficult to establish that colour (on its own) identifies a
particular business…
Société des Produits Nestlé SA v Cadbury UK Ltd [2012] EWHC 2637
• Evidence demonstrated that the public associated the colour purple
itself with Cadbury's chocolate and therefore Cadbury were entitled to
a registered trade mark for that colour for chocolate.
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(i) Colour as a Trade Mark
Some other examples, which companies have trade
marks for these colours?
Tiffany and Co.
Jewellery and various
other items made of
precious metal
UPS
Transport; packing and
storing of goods; services
with relation to delivery of
letters
3M (Post it notes)
Stationery notes containing
adhesive on one side for
attachment to surfaces
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John
Deere
Various
domestic
and
industrial
machinery
(i) Colour as a Trade Mark
" German savings banks see red over Santander logo"
• November 2011 the German saving banks federation (DSGV)
asked Santander to stop using the colour red in the German
domestic banking sector and to remove it from their 350 branches.
•This was followed up by a formal application for an injunction
which was granted by the Hamburg court last February. Santander
have appealed the decision
• According to Die Welt,
“recent surveys confirm that the German people identify the
colour red not only with love, but also with the savings banks.”
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(ii) Practical Issues - an In-House Perspective
•
Who is responsible?
•
MONITORING
•
Scorched earth policy?
•
What to cover? e.g online, Mobile Apps etc
•
Use of external monitoring company
•
Company's position vs behaviour
•
Internal education as to policy
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4. The Patent Box
Are you ready?
10% Corporation Tax - outline principles
• Effectively reduces corporation tax from 23% to 10% on
profits attributable to patented innovation
• Patent must be granted in UK, EPO (& some other EU
countries)
• Retrospectively covers 6 years when pending grant
• Applies to Worldwide profits on Relevant IP Income (RIPI).
NB Includes income from selling patented products or
products incorporating patented invention or spare parts
• BUT must offset (1) Routine Return & (2) Marketing Return
• Must satisfy Development & Active Ownership conditions
• Little correlation to patent scope
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Who can benefit?
• Company must be liable to UK corporation tax
• Own IP or be the exclusive licensee
• Have undertaken "qualifying development", ie:
• creating, or significantly contributing to creating invention; or
• performing a significant amount of activity to develop the
patented invention, any product or any process incorporating
the patented invention.
• Beware of pitfalls:
• 'Significant'
• Change of ownership
• Group Companies & the 'Active Ownership' condition
• Anti-avoidance
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How to calculate? Income ratio to profits
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Considerations & Practical Issues?
• Need to map patents to products
• Are systems in place to capture Patent Box
requirements?
• NB Company structure – who holds the rights and who
makes the trade?
• Is your subject matter patentable? Impact on trade
secrets?
• Speed to grant & narrowing claims
• Monitoring competitors?
• What if revoked?
• Extension of the ‘Nuisance factor’...?
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5. Any Questions?
Thank you
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