Chair‟s Introduction Giles CrownPartner, Head of Media, Brands and Technology +44 20 7074 8090 email@example.com
New Media Simon Entwistle Cliff Fluet Simon Morrissey Partner Partner Partner+44 20 7074 8114 +44 20 7074 8000 +44 20 7074 8221 simon.entwistle cliff.fluet firstname.lastname@example.org @lewissilkin.com @lewissilkin.com
Blue Cow and Bintendo – the IP issues• “Collaboration” as a commercial joint venture (JV)• Background rights of each party• Foreground rights created by the parties• Consequences of termination/expiry of JV
Licence of Background Rights• Scope of licence What is included in licensed rights? Purpose of use of licensed rights? Exclusive, sole or neither?• Maintenance and protection of licensed rights• Ownership of related foreground rights• Duration: will licence survive termination of JV?
Licence of Background Rights (cont)• Issues particular to: Trade Marks Copyright/rights in software Data
Foreground Rights• Definition• In this case, trade marks (Wacky Races), copyright/rights in software and data• Owned by JV parties jointly or separately?• Licences from owner to JV partner?
Joint Ownership of IP Rights• Default position Exploitation rights Rights to sue for infringement Rights to license third parties Rights to use as security for loans Uncertainty over maintenance and enforcement• Issues specific to jointly-owned trademarks Co-existence agreement Dilution of rights Domain name registration and use
Protection of Foreground IP• Maintenance and enforcement• Non-compete• Non-solicitation• Restriction on attempts to register similar IP
IP Consequences of termination of JV• Termination of licences – automatic or right to terminate?• Continuation of licences – any variation of terms?• Assignment of jointly-owned IP to one party to third party (sale of JV assets - the “Wacky Races” game)
Revenue Sharing• What revenues/cash inflows• What costs/cash outflows• How will revenues be shared?• Miscellaneous issues• Top tips
Revenue Sharing• What revenues/cash inflows? Direct Indirect > arms length or connected parties
Revenue Sharing• What revenues/cash outflows? Direct Indirect > arms length or connected parties?
Revenue Sharing• How will revenues be shared? Gross profits > pros and cons Net profits > pros and cons Recoupment?
Revenue Sharing• Miscellaneous Issues Audits Bank accounts
Revenue Sharing• Top Tips Identify all one off costs, recurring costs and revenues before deciding on a revenue model Identify who is better placed to collect revenues Consider the complexity of net profit accounting early on
Blue Cow – Digital Media• Contracting with Lord GoGo and his “people”• Clearing the music rights to enable the performance to be exploited• Filming the event for Blue Cow to have broadcast as an advertiser-funded programme
Key areas for the Audio & Audio-VisualAspects 1. Talent/Endorsement Agreements 2. Music Rights 3. Advertiser-funded Programming & Broadcast
Talent/endorsement agreements• Fee: paid upfront? sum withheld for approvals? inclusive of clearances, riders and production?• Role: performance and endorsement? promotional activity & promotional materials?
Talent agreements• Availability and prioritisation• Does he have the relevant rights to grant and which are right contracting entities?• Barring agreements and exclusivity• Warranties in respect of convictions/past behaviour• Warranties in respect of good behaviour and reputation
Music Rights considerations• The concept of multi-layered rights Recording rights & Record Company Exclusivity Rights in the composition One or several music publishers Dubbing and Mechanical rights Synchronisation Rights Performing Right and Public Performances
Music Rights considerations• Territorial nature of rights• Non-territorial nature of digital platforms• Existing arrangements• Holdbacks & reversion of rights• Access to „free downloads‟ and streaming content
Advertiser-funded programming• Contracts between production company, broadcaster, agency and clients• Talent rights and broadcast regulation issues• Product Placement & undue prominence• No guarantee of success or transmission• No guarantee of brand placement• Investment loses editorial control
Advertiser-funded programming –Production Company issues• Who will own the new material created?• Will the agency/brand retain some level of ownership?• What are the limits on territories and platforms?• Who and what needs to be cleared?• Who will clear (and pay for) underlying rights (examples including talent, photography, commissioned art, designs and formats)?• What happens to international rights?• Will the brand make available online?• What happens to the revenues in the new materials
The Issues• Road Race Event• Sponsorship of Event• Celebrity Issues• Ambush marketing and the Olympics• Hospitality and the Bribery Act
Road Race Event• Who is running the Race? SPV?• Race Rules & Participation Agreements• Venue Agreement• Liaising with relevant authorities• Related agreements : catering, hospitality, ticketing, security, merchandise• Broadcast and other media coverage• Sponsorship
Sponsorship - Key Commercial Terms• Parties Has representative body full authority to enter the agreement• Term Year/Season/Event Consider post event publicity – Olympics 2004• Fee Cash Payment in kind Timing of payments• Sponsor‟s rights
Sponsorship -Key Commercial Terms• Naming rights to reflect level of association – „proud partner‟, „official supplier‟, etc• Advertising opportunities• Hospitality• Public appearance• Merchandising• Presentation• Content creation• Consultation/control over event organisation• Sector exclusivity• Option to renew/announcements
Sponsorship -Key Commercial Terms• Termination Change of key aspects of event Relegation Disrepute• Boilerplate Force majeure• Compliance with regulations Loi Evin in France - Budweiser, Heineken Tobacco, alcohol, fast food, advertising to children, health products
Celebrity Disrepute• A real concern with celebrities Adrian Mutu / Nike / Pepsi Tiger Woods / Nike / AT&T/ Gatorade / Tag Heuer Vic Reeves / Churchill• The difficulties of defining „disrepute‟ and similar terms• Morality/disrepute issues can bite sponsors Harlequins “Bloodgate” Sweatshops Fredi Kanoute „888‟ Cycling / doping
Ambush Marketing• What is ambush marketing? Why does it matter?• IOC definition – “All intentional and unintentional attempts to create a false or unauthorised commercial association with the Olympic Movement or the Olympic Games”• Ambush marketing techniques: Ambush by intrusion Ambush by association Ambush by parallel event
Examples• Atlanta / Reebok & Linford Christie / Puma
Ambush by association• Reference/allusion in advertising• Competitions/tickets as prizes• Sponsorship of athletes/teams• Sponsorship of/advertising around media coverage
Examples• Lillehammer – Games• Visa Official Sponsor• Amex advert: “If you’re travelling to Norway this winter you’ll need a passport but you don’t need a visa”• Post Games survey of sponsor recall conducted• 66% recall
Ambush Marketing• How is ambush marketing prevented?• Obligation on event holder to:- Deliver clean stadiums Establish and promote brand protection programme and actively enforce its rights• Terms and conditions on tickets Euro 2004 UEFA/Dominos• Event specific legislation
Olympic-specific legislation• Olympic Symbol etc. (Protection) Act 1995• London Olympic Games and Paralympic Act 2006
Olympic Symbols Act• Prevents unauthorised use, in the course of trade, of: the Olympic/Paralympic Symbols the Olympic motto “Citius, Altius, Fortius”/ the Paralympic motto “Spirit in Motion” OR anything similar to these to create an association with them the words “Olympic(s)”, “Olympian(s)” and “Olympiad(s)”/”Paralympic(s)”, “Paralympian(s)” and “Paralympiad(s)”
LOCOGs guidance on “association”• Overall impression. Context is key Past conduct Nature of product and manner normally promoted Timing• Use of Olympic style torch/flame• Use of colours of Olympic Symbol• Use of images of 2012 games venues• Depiction of Olympic and/or paralympic sports especially when a number of sports are represented• Use of words which capture the essence of the 2012 games and/or qualities associated with Olympism (example, spirit, endeavour, friendship, winning, determination)• Use of “XXX” or “30th”
London Olympics ActA BGames GoldTwo thousand and twelve Silver2012 BronzeTwenty Twelve London Medals Sponsors Summer
Defences• Honestly made statement• Incidental usage• Editorial journalistic use• Use in a context not likely to suggest an association
Bribery Act 2010• Three core offences Bribing Being bribed Bribing a foreign official• Relevant commercial organisations can be found guilty where they have failed to prevent bribery by adequate measures• Up to 10 years / unlimited fine
Bribery Act 2010• Presuming no foreign official, prosecuting authority has to show was intended to „induce a person to perform improperly a relevant function or activity‟• Difficult to quantify – subjective and objective views• High standard of proof to show hospitality obviously excessive/disproportionate• Private sector – less public interest in enforcement• Be aware : Safeguards and „Please‟ vs „Thank you‟
Trade Marks Steven Jennings Simon Chapman Partner Partner +44 20 7074 8000 +44 20 7074 email@example.com firstname.lastname@example.org
WACKY RACES as a global brand• Which classes are to be covered/searched? Races are entertainment in Class 41 Online game (non downloadable) Class 41 Online game (downloadable) Class 9 Computer & video games generally Class 9 BUT handheld consoles Class 28 Online services Class 38 Computer programming Class 42
Types of Brand Clearance Searches• Screening search Immediate location of obviously fatal prior existing trade marks Effective for conducting a „first cut‟ on a raft of potential names• Full trade mark search Comprehensive risk analysis that is usually relied of for commercial decisions Greater focus on similar marks and analysis of risk
Types of Brand Clearance Searches• Common law search Minimise risk of passing off Trawl of available information – websites, business directories Not conclusive – cannot prove a negative• Company names• Domain names• Strapline search Global database of advertising slogans/lines Useful since many are not registered as trade marks
Types of Brand Clearance Searches• Foreign searches Overseas agents Overseas IP offices Multi-jurisdictional search databases• Investigations Used to provide a deeper level of risk analysis Owner may no longer exist Mark may not have been used, or be liable to cancellation Owner likely to coexist due to divergent business operations
Types of Brand Clearance Searches• Cultural searches What does your mark mean Translation Transliteration
Analysing the search resultsTrade mark No./ Dates Trade mark Information Goods/services Owner No rights are given toUK 700234 the exclusive use of the Class 9: Audio & video recordings. HANNA-BARBERA PRODUCTIONS, INC.App: 3 Aug 1971 word RACES or the Class 16: Books; printed matter; stationery. 15301 Ventura Boulevard,Sherman Oaks,California 91203Reg: 13 Sep 1972 letters and numeral HB6 Class 41: Television entertainment. US (UNITED STATES OF AMERICA)Expiry date: 3 Aug 2012M 301815 Class 28: Toys, games and playthings. Generale BiscuitReg: 30 Aug 1965 Class 29: Meat, fish, poultry and game; eggs, milk and other 3 rue Saarinen,Designated UK: 4 Jan 2010. milk products; pickles. Bâtiment SaarinenPending. WACKY Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sauces, F-94150 Rungis ices. France Class 31: Agricultural products; fresh fruits, .UK 2124328B Class 9: Computer hardware / software; audio and video Paul BeadenApp: 19 Feb 1997 recordings; electrical apparatus. 17 East LaneReg: 21 Apr 2000 Class 41: Live entertainment services.. Romford Wacko Jacko Essex Games Workshop Ltd.CTM 631622 RA:CES . Class 9: computer games; video games; computer joysticks 7 Greens Road, Blairlinn, Cumbernauld,App: 29 Aug 1997 and trackballs. Glasgow, United Kingdom, G67 2TU Class 9: Audio & video recordings. Hanna-Barbera Productions, Inc.CTM700234 Class 16: Books; printed matter; stationery. 15301 ventura Boulevard,ShermanApp: 3 Mar 1994 Class 41: Television entertainment. Oaks,California 91203Reg: 13 Sep 1996 Us (united States of America)Expiry date: 3 Aug 2014 WACKY RACES
.bluecow (the new gTLDs)• Opportunity Submissions from Jan – April 2012 - go live 2013 .brand and .generic Objection procedure Costs > circa £175k year 1 > Circa £150k following years
.bluecow (the new gTLDs) cont ...• Threat 100,000‟s of new domains File Objection Trade mark clearing house Monitor File complaints where necessary
Keywords cont ..• Interflora v M&S (Sept 2011) Follows earlier judgment in Google case Article 5(1)(a) and 5(2) 5(1)(a) > Functions of mark Origin/Quality/Communication/Investment/Advertising Investment = ability to acquire/retain customers No infringement if only consequence is that proprietor must adapt efforts to acquire/preserve reputation
Keywords cont .. Art 5(2) > Detriment to distinctive character (dilution)/unfair advantage (free riding) > If use will contribute to mark becoming generic then dilution, but not if advert obviously not connected to proprietor > If keyword used to promote imitation goods then unfair advantage > Where not used for imitation and does not dilute or tarnish, use is fair competition
Threats• Best Buy v Worldwide (2011) Threats provisions Without prejudice rule Would a reasonable recipient understand the letter as threatening legal action. Invitation to enter settlement negotiations, is not a settlement proposal
Advertising and Marketing Jo Farmer Brinsley Dresden Partner Partner +44 20 7074 8111 +44 20 7074 email@example.com firstname.lastname@example.org
Blue Cow‟s marketing plans• Online competition for a member of public to participate in race• Public to vote on the best entries• Competition to be run on Facebook• Inviting UGC about competition and Blue Cow products• Celebrity to endorse the competition and tweet about Blue Cow products
Competition• Always have clear terms and conditions• Set out key terms and restrictions in promotional materials: open to GB residents aged 18+ Closing date Cost of entry Method of entry See [link] for full t‟s and c‟s FULL DETAILS of prize and any restrictions must be clear
Competition – Facebook issues• Compliance with Facebook Promotion guidelines• Terms must release Facebook from liability and make it clear that the promotion is in no way endorsed by Facebook• Using “like” button as a voting mechanism ?• Using other Facebook functionality for entry into competition or for communications about competition?
Inviting UGC onto Blue Cow website andFacebook page• ASA has jurisdiction over: claims made by Blue Cow on Blue Cow‟s website in other non-paid-for space online under Blue Cow‟s control > UGC if adopted & incorporated into marketing; > and Social Media e.g. Facebook and Twitter• What is a “marketing communication”? A communication that primarily sets out to sell something – intended to distinguish editorial content on a website
When will UGC be caught by new remit?• UGC = content created by consumers, but may be caught by CAP Code if it is “adopted and incorporated” within marcomms.• What does „adopted and incorporated‟ mean? Not clear• If a website is fully moderated, does that mean that all posts become adopted and incorporated? Not necessarily• What about if you only have a notice and take down policy? No, but moderation is still advisable
Product description? Availability?Price? Free delivery? Does price match illustration?
What about foreign websites?• Current rule re marcomms in Foreign Media• “Advertisements in paid-for space that are published on non-UK- registered websites, if targeted at UK consumers, are subject to the jurisdiction of the relevant authority in the country from which they originate if that authority operates a suitable cross-border complaint system.• If it does not, the ASA will take what action it can. Most members of the EU, and many non-European countries, have a self- regulatory organisation that is a member of the European Advertising Standards Alliance (EASA). EASA co-ordinates the cross-border complaints system for its members (which include the ASA).”
How are ASA decisions enforced?• Existing ASA sanctions: Adverse publicity via adjudications Ad Alerts Withdrawal of trading privileges Pre-publication vetting Legal Backstop: Referral to the Office of Fair Trading
Specific sanctions for digital communications• New sanctions: Details of offending ads/advertisers posted to a heavily publicised ASA micro site Sponsored links to offending specific page removed, with the cooperation of the relevant search engines Placing paid-for ads on search engines to highlight continued non-compliance of an advertiser‟s marketing communication (not an initial sanction – only after warnings)
Blue Cow‟s celebrity tweets• Athena Waldorf tweeting on Blue Cow‟s behalf, both about Blue Cow products and the competition• paid for editorial without disclosure = illegal under CPRs• First ever case in Dec 2010 – Handpicked Media got in trouble for not disclosing paid for promotional content• OFT has confirmed that paid for blogs and tweets must make it clear to the consumer that the content has been paid for• CPRs enforced through Trading Standards, and CAP Code
Transparency on Twitter and blogs?• What guidelines does Blue Cow need to give Athena Waldorf?• Transparency is key – use Twitter profile of Athena Waldorf?• US FTC guidelines on endorsements and testimonials• Likely to harmonise with the US over time• #ad; #spon; #paid?
Defending the ASA Adjudication Brinsley Dresden Brinsley.email@example.com
1. ASA receives complaint: 2. Letter sent to advertiser Reject or Formal / Informal & agency setting out complaint investigation (Seek advice now!) 9. Independent review? 3. ASA assesses response8. Publication on ASA website and decides whether toNegative publicity; Search results refer to expert 7. Signed assurance? 4. Draft recommendation sent Copy advice? Media to complainant and advertiser alert? for comment. 6. Council adjudication and 5. Consider reference to notification General Media Panel
The „Complaint Notification‟• Sets out factual background and describes claim press ad claimed that Blue Cow “helps you concentrate” made unauthorised health claims?• Describes the complaint or „Issue‟ Complainant challenged whether advertiser could substantiate complaint• Identifies relevant provisions of the Code Helps to find precedents and analysis of complaint• Identifies number of complainants, and names them if competitors
The covering letter• Identifies investigator at ASA Executive Have you dealt with them before? Do you have a rapport?• May contain clues about their main concerns and the evidence which is being sought• Does it offer an informal resolution? Can you drop or amend your claim? Do you agree that the claim is flawed?• Sets timetable for response
The Strategy for Response• More than ever, imperative to front load defence ASA now threaten time and word limits• Consider immediately whether a time extension will be needed• Substantiation key for Blue Cow concentration claim Double blind tests on humans with placebos published in peer-reviewed journals Tests on Blue Cow‟s specific formula, not just on the ingredients• ASA expert‟s will pick holes in scientific studies
The Strategy for Response• Collate and submit all relevant substantiation• Best chance of successful outcome is at start: Very difficult to reverse an adverse draft recommendation• Check the complaint in remit: PR? Foreign Media?• Advertiser‟s stationary? Or lawyers?• Work with Clearcast for TV commercials• Refer to any CAP Coy Advice and Precedents• Don‟t be aggressive with the ASA Executive!
The Strategy for Response• Consider interpretation by the average reasonable consumer – is the way the ASA or the complainant has interpreted it• Is the claiming „misleading‟ or not accurate on one interpretation?• Consider what has not be claimed e.g. “scientifically proven….”• Cite recent, positive precedents; distinguish negatives
New Lucozade Alert Plus: 22 Oct „10• Man driving on dark, snowy road as deer cross• “New Lucozade Alert Plus with energy-releasing B vitamins and caffeine, it‟s proven to boost mental performance….Sharpen up in a shot.”• 120mg of caffeine in 60ml shot; ASA had accepted previous evidence from GSK for positive effect of caffeine on mental performance• MHRA had approved relief of tiredness claims for caffeine products sold as medicines not foods. Clearcast had approval from a metabolic expert.• Complaint not upheld!!!
The Comparative Ad Dispute• Advert names a competitor Therefore may be trade mark issues Unnamed comparison – likely to be ASA route• Compares (a) Price and (b) Flavour• Television commercial already on air• Now receive cease & desist letter• Injunction has been threatened
Comparative advertising: 8 Conditions• Use of a third party trade mark in an advert is not an infringement when 8 conditions are met. In summary:• Comparison is not misleading• Compares goods/services meeting the same needs or intended for the same purpose• Objectively compares one or more material, relevant, verifiable and representative feature;• Is not a replica, or confusing or denigratory• Does not take unfair advantage of the mark
Comparative Advertising• How can a taste comparison be objective? Costa / Starbucks ASA complaint Robust market research results justified claim that 8 out of 10• How can verifiability be achieved? Publication of data on websites• Focus on issues for injunction application Damages an adequate remedy Balance of convenience: already on air Cross undertaking in damages
Practical tips for Comparative Ads• Compliance with CAD is key to avoiding trade mark infringement – so substantiation is crucial• Think about all interpretations, not just what you intend• Ensure the substantiation will stand up to scrutiny• Obtain a licence to publish proprietary information if needed for substantiation• Arrange a mechanism for consumers to verify comparison