Talking Olympic advertising

January 26, 2012 Leave a Comment

In a recent post, I discussed the laws prohibiting advertising activity round Olympic venues in the summer.

One of the affected venues is the Ricoh Arena in Coventry, which will be renamed the City of Coventry Stadium for use in Olympic football matches. Shane O’Connor from BBC Radio Coventry & Warwickshire interviewed me at 7.40 this morning to talk about the law behind these advertising restrictions. Here’s a recording of our conversation:

Filed under Regulatory Issues Tagged with , , , , ,

Photographic copyright: higher but wider?

January 25, 2012 Leave a Comment

The IP Kat blog has an interesting discussion of copyright infringement of photographs.

To cut a long story short, the High Court was asked to judge on whether copyright in the following image (created by a Mr Fielder, with the copyright owned by Temple Island Collections):

was infringed by the following image (used by New English Teas on the packaging for one of their products):

The court decided that the answer was yes, since the creators of the second image has been aware of the existence of the first image, and were unable to show they hadn’t copied it.

The case highlights a couple of points of general application.

1. Copyright in photographs

The court confirmed that a photograph will only attract copyright if it is the photographer’s own “intellectual creation”, and the judge suggested three aspects which could make a photograph “original”:

  • “specialities of angle of shot, light and shade, exposure and effects achieved with filters, developing techniques and so on”;
  • “creation of the scene to be photographed”;
  • “being in the right place at the right time”.

In this case, the court had no difficulty finding that the first image was Mr Fielder’s own intellectual creation, by reason of its composition and the visual contrasts involved. However, this is a long way from the traditional English law approach in which (as one IP textbook puts it) “pointing the camera at a subject and pressing the shutter” was considered enough to gain copyright protection.

This suggests that many photographs over which copyright is asserted may in fact fall outside the scope of its protection – though elements such as “being in the right place at the right time” would still seem to cast the net quite widely.

2. Infringing copyright in photographs

Again the traditional approach has been that infringing copyright in a photograph involved actually reproducing that photograph (or a substantial part of it). There was nothing to stop you taking your own photograph which happened to incorporate the same features as another image. As the IP Kat observes, this does seem to extend the scope of protection for photographs to include “an idea, a lay-out or a scheme for such a photograph”.

For this reason, it may be that the losing party in this case will hop on the next bus (sorry…) to the Court of Appeal. In the meantime, though, this case highlights some interesting issues in what can be a very sensitive area for photographers: on the one hand confirming that the bar for copyright protection is higher than previously thought, but on the other suggesting that the scope of protection, if acquired at all, may be wider than previously thought.

Filed under Intellectual Property Rights Tagged with , , ,

Olympic advertising ban: a pre-emptive ambush?

December 12, 2011 Leave a Comment

One of the key measures proposed to protect the interests of sponsors for the 2012 London Olympics and Paralympics is a prohibition on unauthorised advertising, including “ambush advertising”, around Olympic event sites.

The regulations imposing this advertising ban have now been implemented, as The London Olympic Games and Paralympic Games (Advertising and Trading) (England) Regulations 2011, and the LOCOG website has guidance on the regulations and how to comply with them. Crucially, this includes the maps of the “event zones” where advertising will be banned around the time of the Games.

The ban will apply for different periods for each event zone, as listed in Schedule 2 to the regulations, with the longest ban being around the Olympic Park itself: from 23 July to 13 August (for the Olympic Games), and then from 28 August to 9 September (for the Paralympic Games).

Anyone wishing to display advertisements within event zones during the relevant period (including existing traders) will need prior authorisation from LOCOG.

The types of “advertising activity” banned under the regulations are very broad, ranging from conventional billboards and signs to leaflet distributions and even the wearing of “advertising attire”.The thoroughness of the regulations is perhaps best shown by their express application of the ban to:

(i) an advertisement to be displayed on an animal, or

(ii) an apparatus by which an advertisement is displayed to be carried or held by an animal.

The mind boggles.

There is an exemption for people (though not for animals!) wearing clothes which carry advertisements, provided this isn’t part of an ambush marketing campaign, and also for “not-for-profit bodies”.

The regulations have been attacked by both advertisers and campaigners as “draconian” and an assault on freedom of expression. LOCOG, however, argues that the rules will “not only help protect the investment of sponsors”, but are also intended to ensure “a welcoming environment for spectators”.

Filed under Regulatory Issues Tagged with , , , ,

How distinctive is the App Store?

March 23, 2011 Leave a Comment

Amazon has launched an “Appstore” selling applications for the Android mobile phone operating system. In response, Apple is suing Amazon in the US claiming that Amazon’s Appstore will “confuse and mislead customers” due to the similarity in name with Apple’s own App Store.

Apple has not yet been able to register App Store as a trademark in the US (and its application to do so is being opposed by Microsoft). However, APP STORE is registered as a European Community trade mark, effective from 21 July 2008. If Amazon were to launch their Appstore in the EU – and currently there is no information on if and when this will happen – then Apple would presumably want to bring trade mark infringement proceedings against Amazon.

To be honest, I’m amazed that Apple were able to register APP STORE as a trade mark. A mark must be distinctive in order to be capable of registration as a Community (or for that matter EU national) trade mark. In the words of the Community Trade Mark Regulation, it must be “capable of distinguishing the goods or services of one undertaking from those of other undertakings”. In particular a mark cannot be registered if it:

consist[s] exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service.

To register APP STORE for the sale of computer software applications (that is, “apps”) is, to my mind, on a level with registering SHOE SHOP for the sale of footwear. No doubt Amazon’s defence to a claim would consist (in part) of a vigorous assertion that the mark should be revoked.

Against that, it is sometimes argued (though not, as far as I’m aware, by Apple itself) that Apple invented the word “app” in relation to software. There are two responses to this:

  1. Who invented the word isn’t relevant to whether it’s a valid trade mark. Even if Apple invented the word “app” for software, it is still widely used (even by Apple!) in a generic sense.
  2. It’s not true that Apple invented the word anyway: it’s not hard to find examples from before 2008 of the word “app” being used for software, particularly in the free/open source software world.

I do need to add a lawyerly disclaimer here. I am emphatically not arguing that readers of this blog post should rush out and start using the name “App Store”, confident in the knowledge that Apple’s trade mark registration is invalid. Apple could still run other arguments (such as a “passing off” claim), and would argue with equal vigour that their trade mark should stand (for example, on grounds of “acquired distinctiveness”). If you want to take on the world’s second largest company on an issue like this, be my guest – but take legal advice first…

Filed under Intellectual Property Rights Tagged with , , ,

Don’t send a licence agreement to do a service agreement’s job

February 3, 2011 Leave a Comment

In recent years, many software vendors have changed over from a traditional licensing model (where software is installed on their clients’ computer systems) to a “cloud” model in which they provide a hosted service.

However, I regularly see contracts from these “traditional-to-cloud” vendors that have clearly not changed from the days when they were licensing locally-installed software. The agreements continue to read as if customers will have the software installed on their own systems, and fail to address the fact that the software is now being provided as a hosted service.

This has a number of consequences:

1. Service levels aren’t clearly agreed

A traditional software licence will not cover issues such as availability and uptime. This can lead to disputes where there is a mismatch between the customer’s expectations of a 100%, 24 x 7 x 365 service, and what the service provider can actually deliver.

In short, the contract fails at one of its fundamental purposes: setting out what the supplier has agreed to provide and the customer has agreed to pay for.

2. Customer misuse isn’t addressed

A traditional licence will often require the customer not to reverse-engineer or decompile the software or not to install it on unauthorised hardware – actions that are literally impossible with a cloud-based service. However, it may not concern itself with the everyday use the customer makes of the software: whether the customer is breaching data protection laws or third-party intellectual property rights.

However, a hosted service provider is taking responsibility for holding customer data. That data may infringe other people’s rights. Even if it doesn’t, the provider is still exposing itself to liability for taking proper care of its customer’s data, in a way in never did previously.

The customer’s users may also engage in other misuse, using the system to transmit illegal or unethical material that can cause reputational damage or legal liability for the service provider.

If the contract fails to take account of these issues, the service provider could face significant legal exposure.

3. Liability may not be limited

Limitation of liability is a critical contract provision for most suppliers. In order for the supplier to be protected as intended, any limitation of liability provisions need to be drafted so they actually cover the type of liability that might arise, and in most cases they need to be reasonable in their scope.

The risks to the supplier under a service provision arrangement are very different from those in a software licence. The supplier will be hosting the customer’s data and will be responsible for maintaining continuity of access, in a way that is unlikely to have been the case under a software licence.

If the limitation of liability do not take all that into account, the supplier could end up facing unlimited liability should any problems arise.

4. Deals are delayed

Where a contract is inappropriate, customers are more likely to question the terms and push back for changes. The process of agreeing the contract becomes more protracted – it may even result in the service provider carrying out large amounts of work “on risk”, as the contract continues to be negotiated.

Setting out reasonable terms that reflect the reality of what is being provided are the best way to ensure that contracts can be concluded quickly, without the legal tail wagging the commercial dog.

5. It just looks bad

If you went to rent a house, and the landlord produced a contract saying that they were selling it to you, you’d object. The difference between licensing software and provided a hosted service is no less fundamental, and a contract that fails to recognise this can leave both the service provider and client exposed.

As a result, using the wrong type of contract can cause reputational damage to a service provider. Customers are left with the impression that the service provider doesn’t really understand the business that they’re operating.

Conclusion

Whether software is being licensed or provided as a hosted service, agreeing the contract should be neither box-ticking nor an exercise in legal pedantry.

What counts is making sure that the contract reflects reality and deals appropriately with the key risks for each party – and that the process of agreeing the contract (often at least as important as the contract itself) flushes out issues that might otherwise cause problems down the line, and doesn’t become an obstacle to concluding the deal.

Filed under Contracts and T&Cs Tagged with , ,

easyDispute over trade mark

July 21, 2010 Leave a Comment

My colleague Ed Weeks (on his Boardroom Disputes blog) has written a number of times over the past couple of years on the dispute between Sir Stelios Haji-Ioannou and the easyJet board.

This dispute has now developed an intellectual property angle, with Sir Stelios threatening to terminate the airline’s licence to use the “easyJet” trade mark. The trade mark is owned by Sir Stelios’ company easyGroup IP Licensing Limited, and is licensed to easyJet Airline Company Limited under an agreement which Sir Stelios is now threatening to terminate.

easyGroup has issued a “cure notice” to easyJet threatening to terminate the licence agreement unless there is an improvement in easyJet’s punctuality record within the next 90 days. This follows newspaper reports that fewer than 50 per cent of easyJet flights from Gatwick were on time in June.

Should easyGroup proceed to terminate easyJet’s licence, the result would undoubtedly be a huge court battle, given the importance of the easyJet name for the airline. I doubt that the licence agreement contains an express right to terminate for poor punctuality performance: presumably easyGroup are relying on more general obligations, as typically found in trade mark licences, for the licensee to provide services under the licensed mark to a high standard and not to bring the trade mark (or its owners) into disrepute.

Given the risks to both sides of this course of action, I would be very surprised if the licence were terminated. More likely this is being used by Sir Stelios as leverage in his long-running battles with the easyJet board.

Sir Stelios’ ire has no doubt only been increased by the way in which his own personal name and image have been dragged into the controversy over easyJet’s punctuality (and its reluctance to release its performance figures) by easyJet’s main competitor, Ryanair. Ryanair apologised for its ads referring to him as “easy Jet’s Mr Late Again”, but its newspaper ads printing this apology provided another opportunity for it to take a dig at easyJet.

As a final observation, I notice that the Telegraph news item refers to Sir Stelios threatening to remove “the easy brand name”. easyGroup – which owns a large number of trade marks which include “easy” as a prefix – has made a number of attempts over the years to claim the name “easy” itself as a trade mark, without success. I wonder if easyGroup have taken the opportunity themselves to provide a small boost for their claim to “easy” as a brand name.

Filed under Intellectual Property Rights Tagged with , , , ,

“I have read, understood and agree to… unfair treatment?”

July 9, 2010 Leave a Comment

Go to almost any website selling goods or services online, and at some point in the transaction process you are likely to find a statement along the following lines:

I confirm that I have read, understood and agree to the terms and conditions [link].

The FSA has released a guidance note (PDF) stating that, in their view, this declaration is “unfair” under the Unfair Terms in Consumer Contracts Regulations 1999 (“Unfair Terms Regulations”). As the FSA put it:

Firms should draft contracts in plain and intelligible language and must also give consumers a proper opportunity to read all the terms of the contract. Consumers should check the details of the contracts they enter into. But a contract term requiring consumers to declare that they have read and understood the terms of the contract is likely to be unfair because it binds customers to terms which, in practice, they may not have any real awareness of.

While this guidance relates specifically to financial services, it is consistent with the OFT’s guidance on consumer contracts generally. Online sellers, especially those dealing with consumers rather than business customers, should therefore consider wording along the lines of the FSA’s proposed alternative for such declarations. For an online seller this might read:

These are our standard terms and conditions [link] upon which we intend to rely. For your own benefit and protection you should read these terms carefully before signing them. If you do not understand any point please ask for further information.

Sellers should also ensure that they review their online consumer contracts carefully to ensure the terms themselves comply with the Unfair Terms Regulations. To assist in this, the OFT has produced a number of guidance documents. These include their Unfair Contract Terms Guidance (PDF) and its annexes giving specific examples of unfair terms (PDF), as well as specific guidance for a number of sectors.

Filed under Contracts and T&Cs Tagged with , , ,

Competition closed?

February 23, 2010 3 Comments

Apple has upset the developers (and users) of thousands of adult-themed apps, which it has pulled from its iPhone app store in the past few days.

One developer accused Apple of “experimenting with our livelihoods” and said the iPhone ecosystem was being “run by puritans”. However, Apple argued that it had received thousands of complaints from customers, in particular women and parents, objecting to material such as “Wobble” – an app which displayed pictures of women’s breasts.

This story demonstrates the effects of one of the growing trends in computing over the past couple of years: the adoption of closed platforms for mobile computing. Apple has led the way in this, but other platforms – such as Moblin, Android and Nokia’s Ovi store – are now encouraging (or even requiring) users to obtain their software from official app stores.

The point is not whether those who control these platforms are puritans or libertarians: rather, it is that (unlike “traditional” open computing systems) the applications which users can install and run on their devices are under that control in the first place. This is a significant change in computing practice, and the rows such as that over adult iPhone apps may be what propels this from being a “geek” issue to one of wider concern. (What happens when China, say, requires Apple to block politically-unacceptable apps?)

I wonder also how long it will be before someone brings a challenge against Apple and other gatekeepers under competition law. In the context of UK and EU competition law, there would seem a good case for saying that Apple has a “dominant market position” in the iPhone apps market – after all, setting aside “jailbroken” iPhones, its app store has a 100% market share for iPhone apps.

Developers finding themselves locked out of the iPhone app store may well consider Apple to be abusing that dominant position, in breach of competition law – especially given the rather different treatment of apps for “established” adult entertainment brands, such as Playboy, whose own app apparently remains available.

It would be interesting if the European Commission ended up forcing Apple (and others) to open up their platforms – though perhaps the market will take care of it in the meantime, as platform owners decide the risks of relaxing their grip on their devices are outweighed by the consequences of having to get involved in controversies such as that over Wobble and its fellow apps.

Filed under Competition Law, Legal Issues Tagged with , , , ,

“Independently safeguarding” children’s websites

September 11, 2009 Leave a Comment

The new Independent Safeguarding Authority is attracting a lot of media coverage today, with news stories focusing in particular on compulsory registration for those regularly giving children lifts to social/sports clubs.

However, those operating websites (and other “interactive communication services”) for children should be aware that their activities may also fall within the ISA’s remit when the new regime becomes fully operational in just over a year’s time. The Safeguarding Vulnerable Children Act 2006 (PDF) defines the “regulated activities relating to children” for which ISA-registration is required. These include:

moderating a public electronic interactive communication service which is likely to be used wholly or mainly by children

(see paragraph 2(1) of Part 1 of Schedule 4, on p.67 of the linked PDF).

So if you are operating a website for children, anyone involved in “moderating” that site will need to be registered with the ISA. “Moderating” involves any function relating to:

  • monitoring content;
  • removing or blocking content; or
  • controlling access to, or use of, the service,

for the purposes of protecting children, where individual concerned either has access to the content involved or contact with users of the service (see paras 2(4) and 2(5), Sch.4 Part 1).

Equivalent provisions apply to those operating websites and other interactive services for vulnerable adults.

Employers who engage people who are not ISA-registered, or who are recorded by the ISA as being barred from working with children or vulnerable adults, could face a £5,000 fine or even imprisonment. The ISA website summarises employers’ obligations in more detail.

Paid employees will need to pay a £64 fee to register with the ISA (registration is free for volunteers). For existing employees, in all likelihood it will be the employers who end up paying these fees. Any barred individual is committing a criminal offence by being engaged in any regulated activity, even as a volunteer.

This new regime is still some way off from coming fully into force. The ISA will start the registration process in July 2010, and the legal requirement on employers to check employees’ status will only come into force in November 2010. However, businesses involved in regulated activities – including children’s websites and interactive services – should be making plans to ensure their staff are registered in a timely fashion next summer.

Filed under Regulatory Issues Tagged with , , ,

Disclaimed?

July 29, 2009 Leave a Comment

One of the most unloved (and unread) features of commercial websites, the “disclaimer”, may have been given a new lease of life by a recent court decision which appears to have endorsed a disclaimer as a means of avoiding liability for inaccurate statements made on a website. However, in my view this case is not an endorsement of website “small print” so much as a sensible refusal by the courts to impose costly duties of care on websites providing information to the public.

Gary and Karen Patchett were suing the Swimming Pool and Allied Trades Association (SPATA) after their swimming pool contractor – whose details they had obtained from SPATA’s website – ceased trading. The Patchetts claimed that SPATA’s website had failed to make it clear that the contractor was only an “associate member”, and thus not covered by SPATA’s insurance scheme.

The court held that SPATA did potentially owe a duty to the Patchetts, as the site was directed only to those planning to have swimming pools installed rather than the general public at large. However, SPATA was not liable, because (as Lord Clarke put it in his judgment), “when the website is read as a whole, it urges independent enquiry” before people made a buying decision.

In particular, Lord Clarke singled out the following statement on the site:

“SPATA supplies an information pack and members lists which give details of suitably qualified and approved installers in the customer’s area. The pack includes a Contract Check List which sets out the questions that the customer should ask a would-be tenderer together with those which must be asked of the appointed installer before work starts and prior to releasing the final payment.”

Had the Patchetts requested the information pack and members list, they would have seen that their contractor was not a full member of SPATA, and hence SPATA were not liable for the inaccurate statement on their website.

What are the implications of this for businesses with websites providing information to the public?

1. Don’t panic

Many lawyers will be taking this opportunity to encourage their clients to review their website “disclaimers”, warning them of the dangers this case poses to those who fail to do so.

However, the first lesson to draw from this case is the courts’ reluctance to impose a duty of case on website owners to those using their sites, even where a website is directed towards a specialised audience who are likely regard it as authoritative (as in the case of SPATA).

2. Be alert

That said, the case does show the need to ensure information on commercial websites is kept accurate. SPATA may have fought off the Patchetts’ claim, but the inaccurate and misleading information on their website will have cost them dearly in legal costs (not all of which they will be able to recover from the Patchetts), lost management time and adverse publicity.

SPATA were not saved by a legalistic disclaimer buried on an obscure corner of their website. Looking at their 2006 site on the Internet Archive, the statement about their information pack was set out on the first-linked page from their welcome page. There is every reason (including a famous Lord Denning judgment) to believe that the courts will look less favourably at the sort of small-print verbiage lurking on many sites behind the “Terms and conditions” link.

The lesson is not “rely on your lawyers” but “make sure you are clear and accurate in the first place”.

3. Follow the money

A final practical observation. The reason SPATA ended up in court was, in the end, because the Patchetts’ contractor had gone bust and had no money with which to compensate them. SPATA did have resources to meet a claim, and hence the Patchetts (quite reasonably) sought redress from them.

Even if your involvement in a transaction is pretty tangential – there was no direct contact between the Patchetts and SPATA, beyond Mr Patchett’s accessing their website – if you are the “last person standing” with any money, then you may well be a target for legal action. As observed above, this is a far from pain-free experience even if you eventually win.

This should concentrate businesses’ minds on making sure they get their website content right. It is notable that, looking at SPATA’s current website, they appear to have concentrated on removing room for misunderstanding rather than adding legalistic disclaimers.

That strikes me as the right approach – but (and you knew this was coming, didn’t you?) my firm’s insurers will want me to emphasise that (like everything else on here) this is my personal view and should not be relied upon as legal advice!

Filed under Contracts and T&Cs Tagged with , ,

← Older posts

Follow

Get every new post delivered to your Inbox.

Join 352 other followers