Brand protection – it’s not child’s play

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Two children’s toy manufacturers have gone head to head in a trade mark dispute heard before the Federal Court of Australia.

The dispute arose when Australian company Playgro alleged its PLAYGRO trade marks were infringed contrary to s 120(1) of the Trade Mark Act 1995 (Cth) by Playgo Art & Craft Manufactory and Playgo Toy Enterprises, both incorporated in Hong Kong.

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During 2013 and 2014, Playgo sold and delivered in China toys bearing its PLAYGO Device Mark to Myer and to a subsidiary of Woolworths, for sale to customers in Australia. The toys were then sold to Australian consumers at Myer, Woolworths and Big W stores.

The key issues in the case turned upon two main questions:

  1. Was the PLAYGO Device Mark substantially identical with or deceptively similar to Playgro’s registered trade marks?
  2. Did the Playgo companies ‘use’ as a trade mark in Australia the Playgo Device Mark, when the toys were in fact sold by the various retailers?

One of the PLAYGRO trade marks and PLAYGO Device Mark are reproduced below:

   PLAYGROPLAYGO

The court ultimately found that the PLAYGO was not ‘substantially identical’ to Playgro’s trade marks, but it was ‘deceptively similar’. Playgo also ‘used’ as a trade mark the PLAYGO Device Mark in relation to toys in Australia and therefore infringed the Playgro trade marks.

Substantially identical or deceptively similar

To determine whether the PLAYGRO and PLAYGO trade marks were substantially identical, the Court examined the marks side-by-side, noting their similarities and differences. The Court ultimately found that the marks could not be substantially identical because the PLAYGO device mark, with its white lettering on a red background and the words PLAY and GO on separate lines, had a distinct appearance from the PLAYGRO mark.

When considering deceptive similarity, however, the Court does not carry out a side-by-side comparison, but rather compares the trade marks from the perspective of the ordinary person’s imperfect recollection of an applicant’s mark and their impression of a respondent’s mark. The Court found that the marks were deceptively similar because the first syllable ‘Play’ in each mark was identical, the last syllable was almost identical and was visually and phonetically very similar (i.e. ‘GRO’ and ‘GO), varying only through the presence of the letter ‘R’, and, when considered as a whole, the marks looked and sounded very similar. On this basis, the Court considered it was likely that there was a real danger of confusion arising from the imperfect recollections of an ordinary person, particularly the imperfect recollections of consumers who only occasionally purchase children’s toys. Such consumers might very well be caused to wonder whether the two products in fact come from the same source. Playgro was thus successful on the ground of deceptive similarity.

Use as a trade mark in Australia

The issue of whether the PLAYGO Device Mark was used as a trade mark in Australia arose in circumstances where Playgo actually sold and delivered the toys bearing the mark to Myer and Woolworths in China, but knowing that they were ultimately for sale to customers in Australia. Notwithstanding that Playgo sold the products in China, the Court found that Playgo had used the PLAYGO Device Mark in Australia because it was used as a ‘badge of origin’ to indicate a connection in the course of trade between the goods and Playgo. Playgo did not cease to use the PLAYGO Device Mark upon delivery of the goods to Myer and Woolworths in China; rather, the mark was being used by Playgo so long as the goods were in the course of trade and it was indicative that they were the Playgo’s products. The goods remained ‘in the course of trade’ until their ultimate sale to customers in Australia by the various retailers and, as such, infringement was established.

The rematch

This month, the Court made further orders in the dispute because the parties were unable to agree on orders to give effect to the Court’s first judgment. One of the key bones of contention in these new proceedings was whether the declaration of infringement should extend to the use of the word ‘Playgo’ in addition to the PLAYGO Device Mark.

In this case, Playgo argued that using the word ‘Playgo’ in the fine print on their packaging was not ‘use as a trade mark’, but merely use as a legend to refer to the Playgo Device Mark. The Court was not moved by this argument and found that the use of the word ‘Playgo’, even only in the fine print on product packaging, was ‘use as a trade mark’ because it would have appeared to consumers to indicate a connection in the course of trade between Playgo and the products. This view was supported by the fact that Playgo had used the word ‘Playgo’ immediately followed by the letters ‘TM’ and the words “is a trade mark of, which were strong indicators the word was being used as a trade mark.

Having established that the use of the word was ‘use as a trade mark’, the Court considered whether the word ‘Playgo’ was deceptively similar to ‘Playgro’. For the same reasons given in the first case, the Court found that the words were deceptively similar and therefore made a declaration of infringement in relation to the word in addition to the Playgo Device Mark.

Lessons for brands & their agencies

In a crowded market such as children’s toys, it is not surprising that conflict arises as companies try to protect their valuable brand assets and intellectual property. This dispute is another reminder to brands and their agencies that a trade mark does not have to be strictly identical to an existing trade mark in order to be found to infringe that trade mark. It is therefore essential that brands and their agencies carry out proper checks and due diligence for potentially infringing trade marks before launching their products in Australia. This due diligence should include exhaustive searches for existing trade marks along with reputational searches for any common law trade marks, to determine whether or not there are likely to be any barriers to the registration or use of your proposed trade mark in Australia.

For assistance with trade mark and brand protection matters, contact us on (02) 8221 0933.

UPDATE: Copyright dispute between Seven and Nine reaches mutually-agreed settlement

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 In a blog post last year we discussed The Seven Network’s (Seven) failed attempt to obtain an interlocutory injunction against The Nine Network (Nine), alleging that The Hotplate infringed Seven’s copyright in My Kitchen Rules. The crux of the dispute was the similarity in format, with Seven arguing that it owned the copyright separately in both the original format and production elements of My Kitchen Rules, as well as in the physical production “bibles” and related documents.

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Now, Seven and Nine have reportedly reached a mutually-agreed settlement. Nine has agreed to not produce any further series of the program, nor to ever broadcast or redistribute its first series; and both sides will pay their own legal costs. Whilst both parties purport to be pleased with this outcome, the result appears to be more favourable for Seven.

It is notoriously difficult to establish copyright infringement in Australia when it comes to TV formats and the mere fact that two programs have the same premise, or similar features, is unlikely to be sufficient to demonstrate infringement. The Courts have considered the question on several occasions, including in Green v Broadcasting Corporation of New Zealand [1989] All ER 1056 and Nine Film & Television Pty Ltd v Ninox Television Ltd [2005] FCA 1404. For more information and practical tips on protecting formats, see our original post.

Metawhat? The new Data Retention Regime

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On Tuesday 13 October 2015, the amendments to the Telecommunications (Interception and Access) Act 1979 came into effect. The amendments are more commonly known as the “Data Retention Regime” and were passed as a security measure to aid in the investigation of terrorism and serious crimes.

Binary Metadata

How does it affect your business?

The Data Retention Regime applies to telecommunications companies (telcos) and certain internet service providers (ISPs). Telcos and ISPs are required to store a range of metadata for up to two years. The metadata that is required to be stored includes data associated with communications via email, mobile phones and landlines. Web browsing history is specifically excluded from the regime and data associated with third-party services (e.g. Facebook, Skype and WhatsApp) are also excluded.

Unless you are a telco or ISP, you are not under any data retention obligations as a result of the Data Retention Regime.  Agencies in the communications space do not have any new obligations as a result of the introduction of the Data Retention Regime. However, if you are a telco or ISP, we recommend that you seek legal advice in determining the extent to which you have data retention obligations under the regime and the most effective way to comply with the amendments to the law.

The metadata collected by telcos and ISPs will include metadata contained in business communications. But what exactly is metadata? There is currently no definition provided in the Telecommunications (Interception and Access) Act 1979 and it is difficult to provide a definition that covers all types of metadata. It can be described as a set of data that is created when electronic communications and other activities over the internet and phone lines are conducted. It is a set of data that creates a map or a log of activity rather than data that provides detail of the contents of communications.

The metadata required to be retained by telcos and ISPs under the Data Retention Regime is grouped into six categories of information:

  1. type of communication;
  2. identity of the customer involved in a communications service;
  3. source of the communication;
  4. destination of the communication;
  5. date, time and duration of the communication; and
  6. location of the equipment used in the communication

The metadata to be retained will be protected as personal information under the Privacy Act 1988 and the Australian Privacy Principles (APPs) if the organisation has the capacity and resources to link that information to an individual/identify an individual.

Reminder: obligations under the Privacy Act 1988

Although your business may not be under any requirement to retain data as a result of the Data Retention Regime, this is an opportune time for a refresher on business obligations in regards to storage and security under the Australian Privacy Principles (APPs).

The APPs do not provide any time limits on the length of time personal information should be retained for. However, APP 11 –security of personal information, places an obligation on an APP entity to take reasonable steps to destroy or de-identify personal information that is no longer required. Exceptions to this destroy or de-identify obligation include personal information contained within a Commonwealth record and compliance with a court/tribunal order. APP 11 also places an obligation on APP entities to take reasonable steps to protect personal information from misuse, interference, loss, unauthorised access and unauthorised disclosure.

What steps are considered to be reasonable will depend on the circumstances which may include the entity’s size, resources, the sensitivity of the personal information, possible consequences of a breach and practicality. The Office of the Australian Information Commissioner (OAIC) has placed a large focus on governance, culture and staff training and it is important that a good compliance program is in place within your organisation.

There is currently no mandatory reporting for data breaches under the Privacy Act 1988 however the Federal Government has indicated that they plan to introduce a mandatory data breach notification scheme in the near future. In the meantime, the OAIC has provided a breach notification guide which is useful in shaping your corporate policies and compliance framework.

If you have questions about how privacy or data retention affect your business, please do not hesitate to get in touch on (02) 8221 0933.

It’s a food fight! Nine roasts Seven in copyright battle

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There is nothing new about television executives complaining that rival network has ripped-off one of their shows. But getting a court to agree is another story altogether, as Channel 7 recently found out!

In a high ‘steaks’ legal stoush, Channel Seven tried to have Channel Nine’s new cooking show The Hotplate taken off the air on the basis that the show infringed Seven’s copyright in My Kitchen Rules. But the Court judged Seven’s arguments to be underdone, again highlighting the difficulties that networks and producers face when trying to protect the ‘format’ of a television show.

With Season 1 of The Hotplate now wrapped up, we look back at the court’s reasoning in the dispute between Seven and Nine.

Copyright in television formats

So what are formats and why are they so hard to protect?

A format is essentially the underlying idea and branding that makes up a television show. For networks, formats are also big business. Securing the rights to an exciting format can be the key to ratings success and the advertising dollars and licensing revenue that follows. So it is little wonder that TV execs opt for lawyers at 20 paces when someone starts muscling in on their ratings turf!Article Lead - wide998893433gipq9kimage.related.articleLeadwide.729x410.gipr3t.png1438494078684.jpg-620x349

But formats can be notoriously difficult to protect through copyright arguments, and the reason boils down to one of the fundamental principles of copyright law, namely that copyright protects only the expression of “ideas” in a material form, rather than the ideas themselves. In the absence of a specific “format” right at law (which does not exist!), the mere fact that two programs have the same premise or features is unlikely to be sufficient to demonstrate copyright infringement.

The Hotplate v MKR cook-off (Seven Network (Operations) Limited v Endemol Australia Pty Limited [2015] FCA 800), is not the first time the question of copyright in TV formats has been considered by the courts. In fact, in 2005 Nine was accused of ripping off another program. In Nine Film & Television Pty Ltd v Ninox Television Ltd [2005] FCA 1404, the makers of television show Dream Home alleged that Nine had infringed its copyright by creating The Block. The court held that the broad similarities were not sufficient to constitute copyright infringement, and since then The Block has gone on to become a ratings winner for Nine. However, it was a different story in Zeccola v Universal City Studios Inc (1982) 46 ALR 189, where the court held that the makers of a killer shark movie, The Great White, infringed the copyright of Jaws, in the film, screenplay and book. The judge held that the film substantially reproduced several situations and characters from Jaws.

Out of the frying pan, and into the courtroom

Of course, as Hotplate and MKR are both so-called ‘reality’ TV shows, Seven was not able to point to a script or screenplay that was clearly copied. Instead, Seven claimed that it owned the copyright in:

  • various literary works associated with My Kitchen Rules, including the format pitch, format presentation and production bible; and
  • various dramatic works consisting of the combination and series of incidents, plot, images and sound reduced to a material form in certain episodes and series of My Kitchen Rules.

At this interlocutory stage, Seven wanted the court to grant an injunction preventing Nine from broadcasting The Hotplate until the matter had been decided.

When deciding whether or not to grant the injunction, the court must undertake two enquiries. Firstly, it needs to consider the strength of the applicant’s claim (i.e. is there a sufficient likelihood of success at the hearing). Secondly, it must consider the ‘balance of convenience’, which involves an assessment of the risk of doing an injustice by either granting or withholding the relief sought.

Seven argued that The Hotplate was a clear rip-off, pointing to similarities like the fact that both were cooking competitions amongst pairs of contestants, there are two ‘expert judges’, the teams take turns to cook in ‘Instant Restaurants’ in their homes, etc.

Nine, of course, highlighted the differences between the shows, including the fact that The Hotplate was based on professional restauranteurs, whereas MKR involved amateur cooks. Nine also argued that many of the key elements of MKR’s format were themselves unoriginal and had been used in other food reality programs such as Masterchef and non-food reality programs such as The Block.

Nicolas J noted that to reproduce in a material form elements of a dramatic work which themselves are unoriginal will not normally constitute an infringement of copyright because what has been taken will not be a ‘substantial part’ of the copyright work. However, he also said that, as with a compilation, a dramatic work which consists of a combination of stock elements “brought together by the exercise of skill, judgment or labour may constitute an original dramatic work even through some, or perhaps even most, of the elements would themselves individually be unprotectable due to lack or originality”. Where some elements are taken, or they are combined with different elements, the question of whether the original dramatic work was infringed becomes very difficult to answer.

Ultimately, Nicholas J found that, despite the differences between the programs, the format seemed to be “very similar”. The court was satisfied that Seven had a reasonably arguable case that the formats were similar and that the close similarity was the result of copying. However, whether a ‘substantial part’ was reproduced in the relevant episode of The Hotplate will depend on the quality of the elements allegedly taken. While the case was reasonably arguable, Nicholas J did not accept that Seven had a ‘strong prima facie case’.

On the question of the balance of convenience, the Court considered Seven’s arguments that allowing the program to continue on air would interfere with its commercial relationships and diminish the strength and value of these arrangements and the MKR brand. However, the Court found this was unlikely, noting that Seven would have the opportunity to vindicate its rights fully at an early final hearing. Seven also suggested that Nine could recommence broadcasting at a later date if a permanent injunction was not granted, but the Court found that this would likely not be as simple as suggested.

Nine, on the other hand, argued that Hotplate was a key piece of programming to be broadcast in prime time with a view to obtaining good ratings for the show itself and other programs. The court found that the balance of convenience fell in Nine’s favour, and refused to grant the injunction.

Lessons for producers and networks

Protecting copyright in formats can be difficult, especially for unscripted and ‘reality’ style shows.

Practical tips include making sure you have proper confidentiality agreements in place before pitching new formats or shows, ensuring that pitch and concept materials are as detailed as possible (and therefore attract copyright protection!) and registering slogans and brand names as trade marks.

Graffiti and copyright

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You may remember Katy Perry wearing a Moschino-designed ‘graffiti’ dress at the Met Gala earlier this year?

Katy-Perry

Or maybe you remember Gigi Hadid wearing it at the 2015 Moschino runway show?

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Last month, an American street artist known as ‘Rime’ (aka Joseph Tierney) filed a copyright infringement claim in a federal Californian court against both Moschino and designer of the dress Jeremy Scott. Tierney believes that the printed design on the dress is taken from his mural in Detroit entitled ‘Vandal Eyes.’

The basis for Tierney’s claim is that Moschino and Scott used his artwork without obtaining a license from him and without properly crediting him, particularly because of the high publicity the Met Gala and the Moschino runway show would have received. Tierney has been approached previously to have his work used under a licence by Disney, but has declined on numerous occasions. This would suggest that he doesn’t want to commercialise his IP, particularly with big corporations.

Whilst it must be noted that this lawsuit is presently occurring in America, Australia has specific laws regarding copyright in street art and graffiti. In Australia, it is generally held that if you are the artist who has created a work of street art, you are the copyright owner of the artwork in question. Artistic works are protected under Copyright Act 1968 (Cth) (‘The Act’), so long as it is expressed in material form. Section 10 of The Act classifies ‘material form’ as ‘any form (whether visible or not) of storage of the work or adaptation, or a substantial part of the work or adaptation. ’Material form’ does extend to murals, graffiti, posters and tag, even though graffiti as an art form is generally transient in nature.

It is important to remember that if you take a photo of a graffiti artwork and use or modify commercially, you may be infringing the copyright and the moral rights of the graffiti artist. In these circumstances, licenses of the copyright in the image, as well as moral rights consents should be obtained. Additionally, street artists may also have a claim to moral rights over their work, specifically the right of attribution, that is, to have their name referenced anytime a substantial amount of their work is reproduced.

Celebrity endorsements can leave brands seeing stars

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Celebrity endorsements can be a powerful tool to strengthen a brand’s reputation and recognition with consumers. However, trying to steal or borrow a celebrity’s limelight without permission can be a costly mistake, as an aged-care company that used Ita Buttrose’s image recently discovered.

Original photograph: Laney Griner

Original photograph: Laney Griner

The media doyenne and former Australian of the Year last year sued The Senior’s Choice and its director Andrew Philpot, arguing that they illegally used her image and content from an ABC interview on their website and SEEK page to promote their business. Ms Buttrose, the National President of Alzheimer’s Australia, claimed that she suffered loss “to her very substantial and reputable” public standing after The Senior’s Choice failed to pay her $75,000 endorsement fee.

In the Federal Circuit Court, Judge Jones found that Senior’s Choice had no prospect of defending their claim and that the conduct constituted misleading and deceptive conduct under s.18(1) and s.29(1) of the Australian Consumer Law, as well as copyright infringement and passing off. Senior’s Choice was required to pay Ms Buttrose’s legal fees, which were rather extensive (Buttrose & Anor v The Senior’s Choice (Australia) Pty Ltd & Anor [2013] FCCA 2050).

Philpot said that The Senior’s Choice had been “steamrolled” by the decision, and suffered a significant financial loss from a mistake they claim was unintentional. The decision stands as a strong warning about the risks of linking brands to celebrities without their permission.

Other celebrity cases:

There are many examples of brands or companies getting into trouble for claiming that they have an affiliation with a particular celebrity or using images of celebrities without permission.

Famous legal examples include Hogan v Koala Dundee Pty Ltd (1988) 83 ALR 187, which involved a company registered as ‘Koala Dundee Pty Ltd,’ deriving their name from the hugely popular film ‘Crocodile Dundee’. The company used the name ‘Dundee’ and an image of a koala wearing a bush hat and sleeveless vest, and holding a knife similar to Paul Hogan’s character in the famous films. The judge held the range of merchandise was “strongly reminiscent of Hogan’s role in the film” and that Koala Dundee passed it off as being in connection with Crocodile Dundee when no such association existed. The company was ordered to cease using the name immediately.

Another well-known example involved the prominent rugby player Andrew Ettinghausen, who brought a defamation action against Australian Consolidated Press (ACP) for publishing explicit nude photos of him without permission. ACP-owned magazine GQ obtained images of Ettinghausen showering the dressing rooms, taken by a cameraman with backstage access, which showed Ettinghausen’s genitalia. Without his knowledge or approval, GQ published the photos, alongside text which implied that the publisher had obtained permission to take the photographs of his genitalia for the purpose of widespread distribution.  A jury found ACP guilty of defamation and Mr Ettinghausen was awarded $250,000 in damages. (Ettingshausen v Australian Consolidated Press Limited [1995] NSWSC 176 (28 December 1995).

Earlier this year actress Katherine Heigl sued a New York pharmacy chain who retweeted a photo of her carrying shopping bags with the pharmacy’s logo on them. Duane Reade’s tweet read: “Love a quick #DuaneReade run? Even @KatieHeigl can’t resist shopping #NYC’s favourite drugstore” with the paparazzi’s image attached.  Ms Heigl sought $6 million in compensatory and punitive damages for the use of her image in an advertisement without her permission. In August the two parties came to a mutual, confidential agreement which reportedly required Duane Reade to donate to a charity founded by Ms Heigl.

Lessons for advertisers

Star power can put your brand firmly in the spotlight, but as the above examples (and many others!) demonstrate, brands that use celebrities or their images without permission expose themselves to a wide variety of legal risks.

In particular, brands should be aware of the risk of misleading and deceptive conduct and the tort of passing off.  While for the majority of people the simple use of their image in connection with a brand or product is unlikely to be misleading or deceptive, where the person is a celebrity or a well-known endorser of products, falsely suggesting that they have endorsed a brand or product or that there is a connection that does not actually exist has the potential to land advertisers in hot water.

Brands should also be aware of the copyright issues that may arise if an image of a celebrity is used without the permission of the copyright owner, while actions for defamation may be available to celebrities if a brand’s use of their image or likeness exposes them to hatred, contempt or ridicule, causes them to be shunned or lowers the public’s opinion of them.

Using celebrities in advertising can be a legal minefield, so if in doubt make sure you get the proper legal advice so you can keep the spotlight on your brand for the right reasons.

Making a monkey out of copyright law

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A ‘selfie’ snapped by a mischievous macaque who stole a photographer’s camera has demonstrated once again that there is no monkeying around when it comes to copyright law.

Image credit: http://goo.gl/ylfmy4

Image credit: http://goo.gl/ylfmy4

Wildlife photographer David Slater was understandably miffed when Wikipedia denied his request to take down the photograph – which has since gone viral – on the grounds that the photo was not subject to copyright as US copyright law does not extend to animals.

So who exactly does own the copyright in selfies? Monkey business aside (monkeys can’t own copyright in Australia), a brief analysis of Australian copyright law can lead us to the answer without going bananas.

It is not unusual for marketers and advertisers to attempt to capitalise on our love of selfies (and our love of memes) to push their products or services, like asking people to snap and upload a selfie in order to enter a competition or promotion. Utilising this social trend can be a powerful marketing tool.

In Australia, photographs are protected by copyright from the moment the shutter falls. Section 10 of the Copyright Act 1968 (Cth) defines the ‘author’ of a photograph as the person who took the photograph. This means the photographer owns the copyright – even if they don’t own the camera. So to all those people who lent their iPhones to Kevin Rudd for a selfie during the last election campaign, sorry, but there’s an argument that he owns them!

Of course, like any good legal principle, there are exceptions. Where the photograph is taken in the course of the author’s employment, for example, the employer owns the copyright. A slightly different rule applies to newspaper and magazine photographers, who own the rights in their photographs for the purpose of including them in a book or for photocopying, while all other rights are owned by their employer.

Section 35(5) of the Act also contains exceptions for commissioned photographs taken for private or domestic purposes, such as wedding or family photos. In these circumstances, the person who commissions the work is the owner. But does this mean that if you ‘commission’ a friend to take a selfie that the picture belongs to you? The answer, unfortunately, is no. The Act also requires “valuable consideration” in order for this exception to apply. So unless you’re paying them, your friend probably owns the pic.

Of course, where someone lends their phone to another person for the purpose of taking a ‘selfie’ (noting, of course, that a ‘selfie’ by definition is a photo taken by yourself), it could also be argued that there is an implied licence for the owner of the phone to use the photograph for whatever purpose they want, including capitalising on the image commercially using a sub-licence. But in the absence of a written agreement (and let’s face it, there is almost never going to be one), the validity of such an argument would ultimately be a matter for the courts to decide.

Identifying the owner of a photograph is important because of the exclusive rights that copyright confers, including the right to reproduce, publish and communicate the image to the public (such as placing it on a website). Marketers who want to publish or share selfies therefore need to ensure that they have the rights to do so, such as by including an assignment of rights in their competition terms and conditions.

Other issues to bear in mind when thinking about selfies include moral rights, which are separate to copyright and can only be held by the creator of a work. Moral rights include the right of attribution of authorship, the right not to have authorship falsely attributed, and the right to of integrity of authorship (which protects the creators from having their work subjected to derogatory treatment).

Case Study

Three teenagers head across town in the hope of spotting their favourite celebrity. And there he is, sitting on a bench alongside ANOTHER famous face! The teenagers, of course, start snapping selfies and sharing them on social media. The best picture goes viral, bringing fame to one of the teens. The question is who owns the ‘selfie’?

Most people will recognise this scenario as that involving three US teenagers who snapped a photo featuring ex-Beatle Paul McCartney and billionaire Warren Buffett. The shot was featured in news publications internationally, rocketing one of the group to fame. Under Australian copyright law, if the now-famous teen had taken the ‘selfie’ himself, he would be the owner. However, as one of his friends actually took the photo in question, the copyright would vest in the friend even though it wasn’t his camera.

Key points for Brands & Advertisers  

It is important to recognise that content that is freely viewed does not correspond to content that can be freely used. As such, brands and advertisers should seek to obtain the necessary consents from copyright owners to allow them to use selfies or other images in the way they want, such as in marketing materials or by editing or changing them. If you run a promotion and collect contestants’ images, be sure to include permission to use the image in your terms and conditions if you wish to use those images for your firm’s marketing. Whilst finding the original creator of works may present a challenge, it is the best way to avoid future liability issues. When the images are ‘orphan works’ (i.e. you cannot find the creator of the image), it is important to manage your copyright risks and perhaps seek legal advice.

 

 

Trademarking the Rainbow

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From Cadbury’s purple to Tiffany & Co’s robin egg blue, distinctive colours have become synonymous with the brands they represent. Branding – in particular colour – is a powerful form of consumer recognition and brand distinction.  Thus, the legal protection of colours has on a number of occasions become a hot-headed issue as companies aggressively try to protect their brand identity from competitors. The issue of whether you can trademark a colour arose again recently when British Petroleum (BP) tried to trademark a shade of green.

Image credit: www.visioncreation.co.uk

Image credit: www.visioncreation.co.uk

When can you trade mark a colour?

Trademarking of colours has traditionally been a shady area, with resistance from authorities to recognise them as the legal property of a brand. To use a colour as a trade mark, the colour must be specifically identifiable with a company’s goods or services and distinguishable from others.  Just as authorities won’t grant a monopoly on words or expressions which are likely to be needed to describe goods and services, they are unwilling to do the same for colours. IP Australia, the body who regulate trademarks, has stated that a single colour “will generally be regarded as being devoid of inherent adaption to distinguish.” Thus, it requires continual use (as a trademark), colour recognition by consumers, and distinct parameters of use for colour trademarks to be granted. We’ve outlined some examples of where the trademark of colours has been successful, and where it has failed.

 BP Green with Envy:

IP Australia rejected BP’s application in July this year to trademark a shade of green known as Pantone shade 348C. BP faced resistance from Woolworths who hold a trademark for a similar colour for their well-known apple-shaped logo.  IP Australia said that if the colour was used alone it would fail to be distinguishable and was not indelibly linked in the average petrol consumer’s mind to BP. Just think, would you recognise BP’s shade of green if it wasn’t accompanied by their brand name or logo? The finding concludes 12 years since BP original filed for the colour trademark in Australia. However, BP has successfully obtained colour trademarks for the same shade of green in the United Kingdom and Europe.

Other Trademarked colours:

In Australia and abroad, there have been companies which have successfully trademarked their colours. Here are a few examples:

Red:

Fada bananas, the supplier of ecologically-grown bananas, successfully trademarked their distinctive red wax tip. The ecologically grown bananas were held to be recognisable to consumers and easily distinguished from traditional bananas. Whilst this isn’t an example of colour per se, it reflects how the distinct use of colour can be trademarked.

Louboutin successfully trademarked their famous red soled high heels in the USA after a long uphill battle with reluctant courts. The exception to the trademark is for other shoes which are monochromatically red and wish to include a red sole.

Purple:

Cadbury successfully trademarked their distinct purple shade, Pantone 2685C, in the UK in 2012. The British colour trademark emerged as Cadbury were embroiled in an Australian litigation against competitor Darrell Lea. The five year litigation ended in 2008 when the Federal Court held that Darrell Lea had not breached the Trade Practices Act or engaged in misleading or deceptive conduct by using purple. The Court noted that a “cause to wonder” is not adequate to amount to misleading or deceptive conduct, and the name Darrell Lea on a purple chocolate wrapper could not confuse a consumer to thinking it was a Cadbury product. The colour purple was never used in isolation without some branding or script, allowing other competitors, such as Darrell Lea and Nestlé for Violet Crumble bars, to use other shades of purple.  In Australia, Cadbury was not able to trademark the colour purple in general, however it was able to protect the specific shade it has used on its packaging since 1914.

Yellow:

Telstra was unable to trademark the word “YELLOW” for their online telephone directories, as competitors or other traders would use the word honestly and commonly for similar phone directory products. The Federal Court of Australia emphasised that they would not grant monopolies lightly, and in the circumstances of Telstra it was not appropriate.

Caterpillar Inc, known for their tractors and other agricultural equipment, were able to trademark “Caterpillar yellow.” The difference here was the distinct colour not closely associated with the agricultural machine industry, and the bright yellow shade was accompanied with the brand name Caterpillar. Of course, the trademark only limits other machinery companies from using the same or a similar shade, not an overall ban on the use of yellow.

Other trademarked colours include Barbie pink, UPS brown and Tiffany blue. The trademarking of colours limits the protection to competitors in the same industry and therefore the companies discussed do not hold the boundless exclusive rights to the use of the colour. An application to legally trademark a colour will be an uphill battle for any brand with high evidentiary burdens and an overall reluctance to monopolise the use of colours. It’s important to remember that each case will turn on its own facts and factors such as the combination of distinct colours will more likely be successful. Therefore it is always favourable to take a vigilant approach when branding or rebranding as competitors will seek to protect their brand identity. Choose colours which are not closely associated with competitors or with the product itself, or use a distinct combination of colours. The failure to think about competitors and trademarks may result in expensive and time-consuming litigation, regardless of whom the Court holds as the winner.

For any questions you may have in relation to brands and trade marks, please feel free to give our team a call: 02 8221 0933.

BITTER TWEET – DEFAMATION IN SOCIAL MEDIA:

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140 defamatory characters posted in the Twitter-sphere could cost tens of thousands of dollars in damages, the New South Wales District Court has held. The case reignites the complexities of defamation law in a world where everyone is a publisher and information is disseminated across the globe at the click of a button.

In the recently handed down court decision of Mickle v Farley, 20 year old Andrew Farley was sued by Ms Christine Mickle, a highly-regarded music teacher who taught at the same school. Mr Farley believed Ms Mickle was responsible for his father (the previous head teacher of music) leaving the school, and posted multiple allegations on both Twitter and Facebook. The comments were false, as his father had left the school in 2008 “in order to attend to personal issues.” The suggestion that she was responsible for the harm or ill-health of the father caused distress to Ms Mickle, who subsequently took a year of sick leave.

The case itself is unremarkable in regards to the current state of defamation law in Australia except that it’s the first Twitter judgement. Judge Elkaim awarded $85,000 in compensatory damages. He commented:

“when defamatory publications are made on social media it is common knowledge that they spread. They are spread easily by the simple manipulation of mobile phones and computers. Their evil lies in the grapevine effect that stems from the use of this type of communication.”

Judge Elkaim additionally awarded $20,000 for aggravated damages for Mr Farley’s uncooperative behaviour. The case shows the accountability of social media users for their actions, even when Mr Farley only had a mere 60 Twitter followers and 50 Facebook friends.

 

The Social Media Legal Landscape in Australia:

Photo by Rosaura Ochoa used under CC BY 2.0.

Whilst Andrew Farley’s case was the first Twitter judgement in Australia, it’s not the first to hit the courts. In 2012 music reviewer Joshua Meggitt sued Marieke Hardy and Twitter, but settled out of court. This otherwise unremarkable case demonstrated the law responding to technological change.

Companies too must, of course, be careful as there is a history of liability for the failure to remove posts on their Facebook pages written by others. This is important, as the control and responsibility of the page rests on the company – even for content which it did not produce.  Even Google couldn’t escape publisher liability when the search engine failed to remove defamatory search results after several requests from a Mr Trkulja, who was defamed and Google found to be liable in late 2012.

 

Defamation Law in Australia and Beyond:

As defamation law us is usually more concerned about where content is downloaded, rather than uploaded, the internet has made the law more complex. As content can be viewed or downloaded anywhere, amateur and professional writers can now be exposed to defamation laws across the globe. In Australia, a person can sue for defamation in the state or territory where his reputation is established, even when the content was published overseas. This pick-and-choose system provides advantages for people who believe they’ve been defamed. By bringing an action in countries with stricter freedom of speech laws increase the chances the material will be held defamatory, whilst it’s lower in countries which strongly promote free speech. In reality, most potentially defamatory comments never eventuate into law suits because of the cost and time to do so, and many won’t be across multiple jurisdictions.

 

Looking Forward:

Defamation has always been a topical issue, but as the law and evolves to meeting the challenges of the social media age, it has become more relevant to everyday people. There is a misconception that social media is treated differently from traditional forms of media. In reality, this isn’t entirely true, and whilst people may let their guard down with what they say on their Facebook page, it can have unintended ramifications. Judge Elkaim’s words should be a warning to those with a propensity for hot-headed tweeting, or perhaps even a careless fib. For the young Andrew Farley, he found himself owing more than $100,000 plus significant legal costs in circumstances where he was unlikely to have considered this a likely outcome at the time of his tweeting.

Kicking Goals in Ambush Marketing

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With the FIFA World Cup fast approaching, the issue of ambush marketing is again at the forefront of discussion. Forming a key concern for event organisers, partners, sponsors and fans, ambush marketing is an attempt by a third party to create a direct or indirect association with a sport event or its participants without their permission. Major sports events, including the upcoming FIFA World Cup, present excellent opportunities for international brand exposure, so it comes as no surprise that entities engage in ambush marketing in an attempt to reap the associated commercial benefits of such coverage.

Image: Dirk Vordestrasse

Image: Dirk Vordestrasse

The last decade has seen a broad range of ambush marketing techniques come into play around major sporting events, with non-official sponsors striving to have their brands in the limelight. Colourful examples include the 2006 FIFA World Cup which left official sponsor, Budweiser outraged after the mass provision of bright orange lederhosen by Bavarian Brewery to fans attending games, or the more recent targeting of professional athletes by Beats Electronics at the London Olympics, where the recognisable oversized Beats headphones were given to athletes for free and as a result appeared extensively in Olympic television coverage.

The popularity of ambush marketing lies in its cost effectiveness. A successful ambush marketing campaign after all, will leverage a popular major event by suggesting an association with it, thereby achieving its intended marketing objectives – be it to attain exposure, increase brand profile or gain credibility through an implied relationship with the targeted event – and do so for a fraction of the cost of actually sponsoring or being otherwise aligned with the targeted event.

New legislative steps: Major Sporting Events (Indicia and Images) Protection Bill 2014 (Cth)

Recognising the commercial concerns over ambush marketing practices, Australian legislators introduced the Major Sporting Events (Indicia and Images) Protection Bill 2014 (Cth) earlier this year. The Bill, enacted on 27 May 2014, embodies the Australian Government’s desire to provide statutory protection to the organisers and sponsors of major Australian-Pacific sporting events. It will commence on 1 July 2014.
The Act is consistent with previous legislative moves prior to the Sydney 2000 Olympic Games and again at the Melbourne 2006 Commonwealth Games in that it is event specific. It offers protection for three upcoming major sporting events: the Asian Football Confederation (AFC) Asian Cup 2015, the International Cricket Council (ICC) Cricket World Cup 2015; and the Gold Coast 2018 Commonwealth Games. However, unlike previous Commonwealth attempts, the explanatory memorandum of the Bill indicates that there is potential for the scope to be widened to account for future major events.

Under the legislation, use of “protected indicia or images” of a major sporting event for “commercial purposes” is prohibited for non-authorised bodies and persons.

The Act indicates the Commonwealth support for “staging of the events to showcase Australia as a host of world class major sporting events and build trade, tourism and event legacy opportunities” (Major Sporting Events (Indicia And Images) Protection Bill 2014: Outline). Recognising the importance of commercial rights protection as being integral to the success of major sporting events, the Act is an attempt to more thoroughly protect the commercial interests of sponsors, upholding their rights and preventing other entities from unfairly cashing in on associations with major events. The Act also requires the online publication of a Register of authorised entities for each major event by the event-holders, which provides added transparency and openness to the procedure.

Key features of the Act include:

  • Each listed event having a list of agreed words and phrases.
  • The Act will exempt the use of certain indicia and images for each event where the use is for the purpose of the provision of information, or the purpose of criticism or review.
  • The Act provides a range of potential remedies including injunctions, damages, corrective advertisement and the seizure of goods.
  • It will be based on existing provisions within the Trade Marks Act 1995 (Sections 131-144) that relate to the importation of goods infringing Australian trade marks to avoid confusion for business, consumers and those administering the measures.
  • The measures in the Act will protect the existing contractual agreements between the relevant for State and Territories and the authorising bodies.
  •  It is proposed that the Act will not include any criminal offence provisions as these can be dealt with through existing legislation such as the Trade Marks Act 1995 and the Copyright Act 1968.

 

While this Act formally recognises and seeks to curb ambush marketing surrounding major events, it must be noted that this sort of practice always potentially been subject to existing Australian laws. Ambush marketing has had (and continues to have) the potential to fall within the scope of the legal action of passing off (which can arise where a trader’s reputation has been detrimentally affected by a misrepresented association with another trader or brand) and/or breach Section 18 of the Australian Consumer Law (which centres upon consumer protection), as misleading or deceptive conduct and generally under the Trade Marks Act 1995.

Ambush Marketing and the FIFA 2014 World Cup

Later this month, the FIFA 2014 World Cup will take place across twelve host cities in Brazil. With 32 countries participating, there is no doubt that the World Cup forms one of the biggest global sporting events on the calendar, expected to be broadcasted to billions of viewers worldwide. Naturally a sporting event of this scale is extremely attractive to a wide range of businesses as a platform to promote their brand. However, sponsorship is a pricey option and at this level, is simply out of reach of many promoters. Thus, marketing strategies (including various ambush marketing tactics) have come into play for those companies wishing to profit from the popularity and pervasiveness of the World Cup. As established above, this is no new trend.

 

FIFA are correct in their assertion that the “World Cup” brand is an integral part of their financial success but equally, this should not give the FIFA brand complete control over all football / soccer related activities in 2014. Thus, a market balance needs to be created which recognises the extent of the FIFA brand without limiting the rights of others involved. Naturally this involves a respect for the official FIFA trade marks – which there are many, ranging from “2014 FIFA World Cup Brazil” and “Copa 2014” to “Mundial de Futebol Brasil 2014,” ensuring that they are not used for marketing purposes without the consent of FIFA.

Australian Position

The Major Sporting Events (Indicia and Images) Protection Bill 2014 (Cth) makes no reference to the FIFA 2014 World Cup, instead choosing to offer protections for major events in the Australia-Pacific region. Thus, this will offer no specific protections for FIFA in an Australian context. However, there are existing protections in Australian law which protect FIFA’s commercial rights.
Consumer protection laws

Pursuant to the Australian Consumer Law in Schedule 2 of the Competition and Consumer Act 2010 (Cth), which replaces the Trade Practices Act 1974 (Cth) as well as certain provisions of State and Territory fair trading legislation, any marketing activity that falsely or deceptively suggests or implies an association, sponsorship or affiliation between a brand and an event may constitute misleading or deceptive conduct (section 18) and/or contain false or misleading representations (section 29).
The distinction must however be made between a marketing activity that indirectly implies an affiliation with an event, which may only lead to confusion and may not give rise to a cause of action under the Australian Consumer Law, and a marketing activity that makes direct and misleading claims of association with an event, which may result in deception or a misrepresentation under the Australian Consumer Law.

Additionally, ambush marketing may be actionable under the common law action of passing off if it causes damage to the reputation or goodwill of an official sponsor or supplier to an event or wrongful appropriation in the sense of causing potential customers to associate the product or business of an official sponsor or supplier with that of the marketed brand, where no such connection exists.

 

Intellectual property laws

Ambush marketing may infringe the intellectual property rights of an official sponsor or supplier to an event, such as the unauthorised use of logos, names, symbols or imagery as part of the overall marketing campaign. For instance, copyright infringement may arise if the marketing activity substantially reproduces original components of the branding of an official sponsor or supplier or of the event itself, for instance its logo, tagline or theme song.

Trade mark infringement may also arise where a marketing activity contains a sign that is substantially identical or deceptively similar to the registered mark of an official sponsor or supplier or of the event itself, if the sign is used as a trade mark to indicate the origin of goods or services that fall within or are similar to the classes of goods or services in which the trade mark of the official sponsor or supplier or of the event itself is registered.

Looking ahead…

Ambush marketing has always been a risky practice, but as specific legislation is introduced to curb its popularity, it is becoming even more risky. While exposure, risk and controversy can sometimes be inherent aspects of a brand’s marketing strategy, the new legal intervention in Australia is likely to cause marketers to rethink their existing approaches to this form of marketing to overcome these new legal challenges. With controversial ambush marketing strategies historically an entertaining feature of major sporting events, we eagerly anticipate what strategies will emerge later this month.