Lewis Silkin Brand Academy 2011 Supplementary Document


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This document contains the supplementary documentation for the Lewis Silkin Brand Academy 2011 event held at the Imagination Gallery on the 13th October 2011.

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Lewis Silkin Brand Academy 2011 Supplementary Document

  1. 1. The Lewis SilkinBrand Academy13 October 2011The Imagination Gallery, London, WC1E 7BL www.lewissilkin.com
  2. 2. AgendaWelcome to Lewis Silkin’s Brand Academy 2011.8.45-9.15 Registration & Coffee9.15-9.25 Chairman’s Introduction Giles Crown9.25-10.10 New Media Simon Entwistle, Simon Morrissey and Cliff Fluet10.10-10.40 Reputation Management Rod Dadak and Jonathan Coad10.40-11.10 Coffee and networking11.10-11.40 Sponsorship Dominic Farnsworth11.40-12.20 Trade Marks Steven Jennings and Simon Chapman12.20-13.00 Advertising and Marketing Brinsley Dresden and Jo Farmner13.00-15.00 LunchCPD DetailsCourse length: 3 hoursCPD Points: 3 pointsCPD Ref: DHP/LESIAccredited by the Solicitors Regulation Authority.www.lewissilkin.com
  3. 3. Brand Academy Fact PatternWe are instructed by our client Blue Cow Plc. They are a UK based business, manufacturing and selling via aglobal distribution network, their fizzy drink. They promote their product heavily on the claim that it improvesconcentration as a result of its caffeine content.They are planning a substantial new promotion based around a car race which will be run on the roads around theIsle of Dogs in May 2012 and in other cities around the world in successive years.The race will be supported by an online car game which will be launched on Blue Cow’s website in collaborationwith the games manufacturer Bintendo. The launch of the game and announcement of the race will take place ata public event and they hope to book the big new name in music, Lord GoGo, to perform. The event will be filmedand made available to broadcasters.They hope to gain an advantage by associating the race with the Olympics which will be held in London shortlyafterwards. They intend to sign up world rally champion Luigi Amilton, but have concerns because he hassomething of a reputation for being a heavy drinker. Blue Cow will be entertaining a number of their biggestcustomers at the event with no expense spared!The event and the game will need to be branded and Blue Cow’s agency has come up with several suggestions,but the preferred choice is ‘Wacky Races’. Blue Cow are looking to protect the brand globally, however theirpreferred selection would appear to have been registered as a trade mark by another party around Europe. Theyalso wish to protect the selected brand online and are also contemplating registering .bluecow as a new gTLD. Aspart of the analysis of their presence online, they have found that a number of their distributors and competitorsare bidding on their name as Keywords on various search engines, and as a result they do not appear at the top ofthe rankings and wish to stop this.An employee working in the R&D department of the company has left the company under a cloud. Blue Cow havereason to believe that he has left with documents belonging to the company including a confidential internalreport which indicates that there might be a problem at one of their manufacturing plants which is causingproduct to be contaminated. The existence of the report, although not its content, has leaked onto a blogging siteand Blue Cow wish to prevent any further publication.Blue Cow intend to run a competition on Facebook, with the winner being trained to participate in the race. Theywant to sign up the ‘it’ girl Athena Waldorf to promote the competition and Blue Cow products generally, in herTweets. The competition will rely heavily on participants uploading videos of themselves.A complaint has been filed with the ASA in which a challenge has been made regarding Blue Cow’s claims that itsproduct improves concentration. In addition, a letter has been received from a competitor’s solicitors regarding aTV advert run by Blue Cow in which it compared its product to the competitor’s on both price and flavour. Theletter threatens an interim injunction if the advert is not immediately pulled.www.lewissilkin.com
  4. 4. Chairman’s IntroductionGiles CrownPartner, Head of Media, Brands and TechnologyT: +44 20 7074 8090E: giles.crown@lewissilkin.comwww.lewissilkin.com
  5. 5. New MediaSimon EntwistlePartnerT: +44 20 7074 8114E: simon.entwistle@lewissilkin.comSimon MorrisseyPartnerT: +44 20 7074 8221E: simon.morrissey@lewissilkin.comCliff FluetPartnerT: +44 20 7074 8000E: cliff.fluet@lewissilkin.comwww.lewissilkin.com
  6. 6. Reputation ManagementRod DadakPartnerT: +44 20 7074 8000E: rod.dadak@lewissilkin.comJonathan CoadPartnerT: +44 20 7074 8115E: jonathan.coad@lewissilkin.comwww.lewissilkin.com
  7. 7. Reputation ManagementWhat to do in a crisis - Top Ten Tips Reputation Management Remedies 1. Having identified a crisis get together a team In situations where the brand is threatened damages and share the problem. Time is of the essence. are usually inadequate. You need to act before not 2. The team must include your PR and an after the event. In those circumstances the most experienced media lawyer, in or out of house. drastic remedy is that of the injunction. 3. Exchange mobile and 24 hour contact numbers. 4. Appoint one representative to speak to the Injunctions media but be prepared anyway. 5. Get all the facts, good or bad. An injunction is an order of the court that either: 6. Agree a script just in case so that you know what to say if approached. Say less not more • Requires a party to do a specific act or acts and avoid speaking to the media-let your PR or - a mandatory injunction; or Media lawyer do that. • Requires a party to refrain from doing a 7. Have a press release prepared. Be positive. Be specific act or acts - a prohibitory forward thinking. injunction. 8. Ensure confidentiality is observed in the company. In the scenario of publication of damaging information 9. Be one step ahead of the media. it is the prohibitory injunction which is what should be 10. Be in control. Panic measures create panic sought. reactions. Cool minds encourage calm responses. An injunction can be granted after a trial ("a final injunction") or before a trial to protect the rights of a person until a trial can take place ("an interim injunction") and it is an interim injunction is what is used where you are trying to stop something being published. An injunction is a remedy, not a cause of action. It is the best way of stopping action which could cause irretrievable damage to the brand and is sought where damages wouldn’t be an adequate remedy. Undermining the reputation of a brand can destroy it. In defamation if there is a defence of truth to allegations made an injunction will not be granted. Injunctions can only be granted if the applicant has a substantive cause of action. It carries a sanction of contempt of court if it is disobeyed. That means you can be sent to prison if you are in breach.www.lewissilkin.com
  8. 8. What do you have to produce to the Court? The guidance provides, amongst other things, that: • Any interference from the general principle ofApplications for an injunction are normally made to open justice can only be justified in exceptionalthe High Court. The applicant will need to submit an circumstances, when they are strictly necessaryapplication notice together with supporting evidence to secure the proper administration of justice.normally in the form of a detailed witness statement Circumstances need to be wholly exceptional.and a draft order which sufficiently describes the • The burden of establishing this interferencefacts, the relief sought and why it is appropriate for an with open justice lies with the applicant.injunction to be granted. • The court will have regard to the respective and competing European Convention Article 10 and Article 8 rights of the parties. The approach toSuper Injunctions this balancing exercise is: (i) neither Article as such has precedence over the other; (ii) whereA "super-injunction" is an injunction which restrains a the values under the two Articles are in conflict,person from: (i) publishing information which an intense focus on the comparative importanceconcerns the applicant and is said to be confidential or of the specific rights being claimed in the individual case is necessary; (iii) theprivate; and (ii) publicising or informing others of the justifications for interfering with or restrictingvery existence of the order and the proceedings. The each right must be taken into account; and (iv)latter part comprises the ‘super’ element of the order. the proportionality test (ultimate balancing test)Most people remember the super injunction obtained must be applied to each. Do the principles ofin the Trafigura case which led to an outcry in press freedom make it necessary to deny theParliament over the threat to freedom of expression it company or the individual his right to privacy? If the information affects the population thecreated. Next down from the super-injunction is the question is whether there is a sufficient publicnon-disclosure injunction where the facts are given- interest in that particular publication to justifypossibly in limited form to avoid jigsaw identification- curtailment of the conflicting right.but the names of the parties are anonymised to avoid • The court will consider the general publicidentification. This is given in circumstances where the interest in open justice.publication of the names of the parties or all of the • It will only be in the rarest cases that a super injunction will be justified on grounds of strictfacts would “give the game away”. necessity being situations in which “tipping off” is likely.Guidance now issued by the Master of the Rolls • Applicants must provide advance notice of anconfirms that injunction applications to restrict the application to media organisations whom thepublication of confidential information are founded on applicant intends to bring within the terms ofrights guaranteed by the European Convention on the order, save only in exceptional circumstances such as blackmail.Human Rights being the right to freedom of • Information will only be provided to non-partiesexpression (Article 10) and right to privacy (Article 8). if they sign a standard form of irrevocableAll such orders seek to restrict the exercise of the undertaking not to use the information said toright to freedom of expression through prohibiting the be private.disclosure of information. • The parties need to provide full and frank disclosure of all material matters of fact and law. Costs Applying for an injunction can be very costly. Not only will there be court fees and legal fees to consider but the costs consequences of ‘losing’ should also bewww.lewissilkin.com
  9. 9. taken into account. In normal proceedings, costs flow details of wrongdoing or criminal activities or potentialwith the case i.e. the loser pays the winners fees. With harm to the community.injunctions, in addition to this, the applicant will beexpected to provide what is called a cross- To establish a breach of confidence the informationundertaking. must have been disclosed to others or used for an unauthorised purpose.A court will in most cases require an applicant to givea cross-undertaking in damages prior to granting an A successful claim for misuse of information willinterim injunction. In effect, this undertaking means entitle the claimant to either an account of profits orthat the applicant will be required to pay the damage an inquiry into damages.caused to the defendant arising from the grant of theinjunction, if it transpires that the injunction should Injunctions and super injunctions can be obtainednot have been granted. If the brand is seriously in before a breach of confidentiality occurs. Injunctionsdanger there is usually little choice but to act. are of no use once the information has been disclosed and used as it has lost its secrecy. There is noDefamation/ Misuse of Private or Confidential guarantee of an injunction being successful because itInformation is always at the discretion of the court to grant. The court will consider damages as an appropriateDefamation is the publication of words or gestures in substitute for an injunction where:writing, electronically or verbally which serve toundermine the reputation of the individual or the • the injury to the claimant’s legal rights iscompany by lowering them in the eyes of “right small;thinking people”. There are various defences including • the injury is one which is capable of beingtruth in respect of the allegations, honest comment estimated in monetary terms;and the media defence of qualified privilege where the • the injury is one which can be adequatelypublication is in the public interest and there was a compensated by a small money payment;duty to publish and an interest in receiving the andoffending item. There is also a defence open to • the case is one in which it would bewebsite owners and ISP’s where the publication was oppressive to the defendant to grant annot known to be defamatory and was published injunction.innocently. This is important in situations whereanonymous individuals post material on websites Time is always of the essence in actions to protect thewhich is defamatory. brandThe law of private or confidential information is also a For further information please contact:vital tool in order to protect commercially sensitive Rod Dadak, Partner, Head of Defamationinformation which cannot be protected by other rod.dadak@lewissilkin.comintellectual property rights. 0207 074 8080To have protection the information must (i) be orconfidential in nature (information which is not publicproperty, not public knowledge and is novel or Jonathan Coad, Partneroriginal) and (ii) be disclosed in circumstances where jonathan.coad@lewissilkin.comthere is an obligation of confidence (through contract 0207 074 8115or implied by the relationship between the partiessuch employer and employee) so that he should be Both are experienced media lawyers who are used toprevented from disclosing it. obtaining injunctions against newspapers and the media. Both are experienced in acting on behalf ofIt should be noted that the need to keep information brand owners.confidential can also be outweighed by the publicinterest in disclosure, for example, where it revealswww.lewissilkin.com
  10. 10. Defamation & Malicious FalsehoodWhat is defamatory?Who is able to sue?Defences to defamation claimsMalicious falsehood
  11. 11. The law of defamation is about an unincorporated associations, such individual, firm or a company’s right to as a sports clubIntroduction have their reputation or goodwill protected and is balanced with the > members of central or localReputation protection right to freedom of speech. government (eg. MPs)which embodies our law English law recognises that every adult Who can’t sue? > dead people, or their relativesof defamation has has a reputation, and the right to have that reputation protected against false > unincorporated associations, suchbecome increasingly statements and imputations. The law as sports clubs assumes that everyone has a goodimportant. Together with reputation, until proved otherwise. > central or local government (collectively, rather than asthe law of privacy, Defamatory statements individuals who can sue)including confidentiality, If the statement is written or is in any other permanent form, such as areputation protection is a picture or on television or on the What must be proved to succeed in an internet, it is libel. action for defamation?vital right for individuals If it is spoken, it is slander. > publication to a third partyand corporations, > of defamatory words or actionsespecially the advertising What is defamatory? > which are reasonably understood toindustry where image and A statement about a person is refer directly or indirectly to the defamatory if it tends to do any one ofcelebrity rights attract so the following: claimant A claimant does not have to prove thatmuch attention. > lowers him in the estimation of the statement is false but he does have right-thinking members of society to prove the words are defamatory of generally him. If a statement is defamatory, it is > disparages him or it in their assumed that it is false until proved business, trade, office or profession otherwise. e.g. to suggest that a company The claimant does not have to prove carries on its business in an intent so he can sue even if the incompetent, improper or publication was an innocent mistake. dishonest way. Nor does he have to prove any damage. He only needs to show that the How should words be interpreted? statement defames him. He may sue for defamation even though the people Many statements are capable of having to whom the statement was published more than one meaning. In defamation knew it was untrue. cases, a Jury or Judge must decide on the meaning of the publication to the average reasonable person. What is ‘publication’? The “natural and ordinary” meaning is Publication to a third party is the the meaning of the publication on its communication of a defamatory face, excluding any extraneous statement other than the person/ matters outside the publication itself. company claiming to be defamed. An apparently harmless statement Every time a defamatory statement is may carry an inference or innuendo published, it amounts to a that is defamatory. “publication” giving rise to a fresh complaint. The “publisher” can be anyone who Who can sue? assists in the publication: the magazine journalist who writes an Not everyone can sue. Those who can article is liable and his sub-editor, are: editor and magazine. Likewise a claim > living individuals brought against those responsible for an advertisement could involve as > a company for damaging its trading “publisher” the advertiser, the agency reputation and goodwill and/or the media owner involved > non-trading organisations (eg. (which is why warranties are charities can sue e.g. over a important). publication which discourages Magazine printers, distributors and subscribers, or impairs its ability to broadcasters are “publishers” but they carry out objectives) can avail themselves of the defence of > individual members of innocent dissemination by proving they
  12. 12. were not the author, or editor of the dirty tactics if untrue invite a libel able to establish a breach of privacy.statement complained about - and action. The fact that you are not thetook reasonable care in relation to its author and are merely repeating what Fair comment - It is a defence to apublication and did not know that their you have heard is irrelevant. defamation action for the defendant toactions contributed to publication establish that the words complained of It is important, therefore, to remember(Section 1 Defamation Act 1996). were comment on a matter of public that companies like individuals are interest. The burden of proof is entitled to recover damages and they therefore on the defendants.Meaning do not have to prove loss as it is A defence of fair comment requires the presumed though evidence usually hasThe meaning is that of a “reasonable author to prove that what he said was: to be provided. A company’s goodwillperson” who is not unduly suspicious and reputation is regarded as being as > comment as opposed to abut who is willing to read between the important as that of an individual. statement of factlines. This is generally known as the“natural and ordinary meaning”. The > on true facts which an honest Defamation on the Internetdefamatory statement will be read as a person could make The law of defamation also applies towhole together with words and the Internet. The parties involved in > a matter of public interestpictures, rather than only a few lines. publication, apart from the author, can be the Internet Service Provider and > made without any maliceIn addition to the natural and ordinarymeaning, an apparently harmless the website owner. Given its almost Privilege - There are situations wherestatement can carry an inference that limitless potential to reach people all the public interest requires an abilityis defamatory where those with special over the world, defamation on the to speak fully and frankly aboutknowledge of particular facts or internet throws up other issues, matters without raising the risk ofcircumstances understand the including jurisdictional ones. legal proceedings for defamation.defamatory meaning. Where there is Through chat rooms, bulletin boards Such situations are treated assuch a hidden meaning this is known and social networking sites, rumours privileged.as an “innuendo meaning”. It is of can spread swiftly, and as soon as a The defence of privilege is split intocourse important to remember that story disappears from one website it two parts: absolute privilege andstatements are frequently capable of can pop up on another. Each time the qualified privilege.more than one meaning. But the jury offending webpage is accessed it Absolute Privilege - This is a completemust decide what the “sting” of the constitutes a fresh “publication”. defence provided by statute andwords is or the principal meaning. Internet Service Providers have long protects statements made in judicial been susceptible to defamation actions proceedings (or similar) such asWhat is ‘identification’? despite the protection afforded to them evidence given in court and statements by English legislation and the EU E- made for the police. It is effectiveA claimant must show that he has regardless of whether the defamatorybeen or can be identified. Commerce Directive. They are easily identifiable and are assumed to have statement was made maliciously. ItIdentification does not mean there has deep pockets, and are therefore an also protects fair and accurateto be a name. It can be made in order obvious target. contemporaneous reports of courtways. These include identification: by proceedings and decisions. It providesname or picture; by description; by Whilst S1 Defamation Act can provide complete immunity. The law extends todirect reference; or by reference to an innocent discrimination defence, tribunals with quasi judicial functions.small groups. It can also be done by great care should be taken.“jigsaw identification”. Qualified Privilege - Qualified privilege is a defence available in circumstances What are the defences to a where it is considered important thatSpecial Cases defamation claim? facts should be freely known and The main defences to an action for publication is in the public interest andDefamation of a businessIt is not actionable to merely disparage defamation are: for “the general interest of society”.a product (for example “our burgers The purpose of the defence at common > justification law is to allow a person with a duty orare better than theirs”) but it is todisparage business methods, > fair comment obligation to publish informationcompetence, judgment, honesty and/or where there is a corresponding > privilege interest in receiving it without risk ofuncreditworthiness (eg. “their burgersare made from beyond sell-by date > offer of amends being successfully sued formeat” and/or “that firm is a bunch of defamation, where the publication is > limitation (i.e. the expiry of time) untrue. A reference given by ancrooks – they have ripped me off”). Itcan damage goodwill and in the case of > consent etc employer is an obvious example.corporations their share price. The Media qualified privilege defence Justification - Justification is aThe publication of unsubstantiated defence of truth. It can be successfully is available, if it can be shown to haverumour is dangerous because of the relied upon if a statement made, or at behaved responsibly and compliedobvious risk it may be false. The least the essential elements of it (the with some, if not all, of the guidelinessuggestion that a business is in “sting”), can be proved to be true. laid down by the courts.trouble, or laying people off or going Intention is irrelevant. If what isbust, are obvious examples. Likewise, alleged is true then the claimant hasallegations of using sweated labour or no reputation to defend but he may be
  13. 13. the claimant must prove that theOther defences Remedies statement was untrue and publishedOffer of Amends - This is a statutory Damages - In libel damage is maliciously. It is important to note thatdefence which requires the offer of an presumed and in slander there are this is different from the position inapology and payment of compensation certain categories where damage is defamation, where the claimant doeswhich can be decided by the court. It is also presumed. Damages are “at not have to prove that the statement isnot a defence in the true sense of the large”. That means that a jury will false or malicious.word but can halt legal proceedings as award what they think is appropriate,if not accepted it is a complete defence though tariffs are now applied.unless the claimant can show it was What you have to prove Injunction - This is a restraintmade in the knowledge that it was Unlike defamation, a claimant has to preventing publication by order of thefalse. It must be an offer in writing and prove that he/she has suffered actual court, breach of which is a contempt. Ifserved before service of the Defence. damage/loss in order to be able to a matter goes to trial and the action is bring an action for maliciousLimitation – one year limit - The law of won a claimant usually gets adefamation is there to protect permanent injunction. falsehood, subject to certain exceptions EG It is not necessary toreputations. Proceedings must If an injunction is applied for at an prove actual damage/loss if the wordsgenerally be commenced within one early stage it is called an interim in dispute are:year of publication. Each new injunction. Where a defendant intendspublication will give rise to a fresh > calculated (i.e. likely) to cause to justify the alleged defamation anone-year limitation period. This is pecuniary (i.e. financial) damage to application for an injunction will notparticularly an issue with regard to the the claimant and are published in succeed. Likewise, if in the absence ofinternet and archives on the internet writing or other permanent form malice, a qualified privilege defence iswhere republication can occur many pleaded. > calculated to cause pecuniaryyears later as a result of an archivesearch by a user. damage to the claimant in respect Apologies and Statements in open of his office, professional calling, court - A claimant will often seek anConsent - You can’t complain about a trade or business (whether apology either publicly or privately. Ifpublication to which you have published in writing, orally or publicly, it is by seeking to make aexpressly or impliedly consented. otherwise) statement in open court which isResponse to attack - If you are usually done by mutual agreement The time limit for bringing an action isdefamed you can respond in similar with the defendant and is made to a the same as for defamation.terms about your attacker, and in judge.certain circumstances, about third The Defamation Billparties. But you must make sure the What is malicious falsehood?reply is relevant to the attack and its A bill was introduced in May which, ifcirculation proportionate. The defence It is possible that a false statement passed may make radical changes incan also extend to statements made by made about an individual or business, the law. However, it is likely to takeclose family or associates of the although it is not defamatory, may still some time before any change is made,person attacked. This is part of a be damaging. if at all.qualified privilege defence. For example, to say an opera singer For further information on this subject,Abuse of process - A defamation claim has retired from performing could please contact:cannot be brought if the cost of the cause financial loss through lostcomplaint is out of all proportion to the bookings etc, if it is a false statement.damage or likely vindication of the However it is not defamatory because Rod Dadakcomplainant. Equally, a claim cannot it does not suggest anything bad about Head of Defamationbe brought to “get your own back”. the singer. T: +44 (0) 20 7074 8080The purpose of the proceedings must In a comparative advertisement, a E: rod.dadak@lewissilkin.combe to protect your reputation, not to false statement about a competitor’srubbish someone else’s. products, price or attributes is unlikely to be defamatory, but if false may give rise to an action for malicious falsehood. For malicious falsehood, © July 2010
  14. 14. Protect against Defamation and Privacy actionsProtection and PreventionPrevention ChecklistPublications at RiskWhat to do if a complaint is made
  15. 15. product.Introduction Protection and Prevention What is in the public interest coversThe law of defamation and In both defamation and privacy “protection” and “prevention” are most things which are in the public eyealso the law of privacy is at watchwords. and which are important because of political, moral or other reasons. Thea watershed. Since the In the event of a claim speedy action debates over parliamentary expensesbeginning of 2010 the must be taken. What follows are some hints and reminders as to what to do in or assisted suicide are obvious examples.media have stepped up the event that potentially defamatory But the public interest does nottheir campaign for a material may be published or if rights to privacy may be breached. necessarily cover those whose privatechange in our laws, for When looking to publish an article or if lives are being investigated; we all have our own private space and amore flexibility and a you are a PR agency, trying to promote reasonable expectation of privacygreater ability for freedom your client, the first question to ask yourself is what are you trying to say, which can be protected. In assessing rights to privacy the golden rule is toof expression to be what point are you trying to make? It is carry out a balancing exercise betweenparamount. This has been vital that if you are using facts that your facts are accurate. freedom of expression on the one hand and privacy on the other. The wellmuch more evident since With regard to research being carried known model Naomi Campbell wasthe Human Rights Act out through the use of a cuttings photographed attending a drug rehabilitation clinic. Such an occasion1998 incorporated the service, or on the internet, try to ensure that you establish some degree was obviously protected as it was anEuropean Convention of of corroboration and do not lift a quote occasion when she could have expected privacy.Human Rights. without double checking it. Responsible journalism is a defence in The internet is now frequently used as defamation actions but beingThis inbrief is intended to a source of material and contains a lot responsible is not confined to justshow how best to try and of false and misleading information e.g. Wikipedia has in the past been journalists.avoid a letter before action subject to false entries because of the Whatever you write think about what you are saying and how it will be, orand a claim, when legal free ability to edit information. could be, interpreted.advice is appropriate and Reliance on somebody else’s material is not a defence to any libel action This is particularly so when you writewhat to do when you get a because your use of the other an email, use Twitter or go on a blog. Think before you write!complaint. information amounts to repetition. That means all you are doing is Never assume that because it has republishing the libel and the fact that been said somewhere else that it must you were not the original author is be correct. irrelevant. It may serve to mitigate damages if your innocence is If it is a potential privacy matter, check established but was it responsible to whether this information is sensitive, republish without checking? in the public domain, or otherwise in breach of the PCC (the Press In defamation justification - what you Complaints Commission) Code. have said is true - is a complete defence to any claim in defamation but Where possible keep not in privacy. The truth of what is contemporaneous records of all revealed is not the issue but whether it telephone and face-to-face interviews. is appropriate in the circumstances You should be careful in actually and is in the public interest. recording conversations made without Qualified privilege is a defence open to consent and remember that the publication in the public interest where speaker does have copyright rights. there is said to be a “duty and interest” relationship e.g. publishing information about giving financial support to terrorists. Fair comment is a defence available when you are ‘expressing’ an opinion e.g. in a restaurant review or about a
  16. 16. be aware of these protocols but tryChecklist Action to familiarise yourself with them. IfDo you want to express an opinion or What to do if a complaint is made they are not followed there couldmake an allegation? be costs implications. > Don’t panic. A lawyer’s letter is A complaint should set out in detail the> What are you saying and is what intended to create it but keep calm. objections that have been raised and you are writing the best way of the remedy that is sought. It should saying it? > Remember time is of the essence. stand on its own and be able to be Where the offending material is taken as the basis upon which any> Are the facts correct? available online you should action might be taken.> Are the sources honest and can consider removing that material they be corroborated? from your website immediately To state the obvious, as soon as you pending investigation. It may prove get a complaint you should read it> Have you kept all the relevant through carefully and draft a response to be unnecessary but it is prudent. documents? (Pictures, texts, paper to each and every point to the best of Better playing safe than sorry. work, telephone recordings.) your ability, whilst the complaint is > Check whether or not you are fresh in your mind to assist your> Always keep interview notes, tapes, insured for libel/privacy lawyers before carrying out further emails, drafts and source infringement. You must inform your investigations. This will be privileged materials. (Not just for your use but insurers immediately if you are. on the basis it is done in anticipation of because they will be subject to Does the insurance cover the legal action. disclosure if the case proceeds.) defence of all proceedings? Is there> Always check your copy as if you an excess? > The fact that a complaint is made might have to defend it in court. does not mean that it is justified or > Create a line of communication and that it cannot be defended.> Always be careful with reliance on responsibility within your others’ material. Remember organisation, and a strict procedure > Contact your defamation/privacy repetition is republication. to follow. Make sure that the left lawyer. An experienced lawyer will hand knows what the right hand is give you immediate guidance, will> Check sensitive data and whether doing. doubtless get a “feel” straightaway information is in the public domain. and could be far more effective as Remember the terms of the Data > Before responding to a well as saving you far more money Protection Act 1998 which gives complainant, consider and discuss and time than your handling the wide protection for sensitive data with colleagues and if in doubt take matter yourself. e.g. matters of medical and sexual legal advice at the earliest information. opportunity. Too much litigation Defamation and privacy actions are results from inadequate action frequently used as a device by those> Ensure allegations made are put to being taken at an early stage. It is who wish to conceal the truth or to the subject before publication. generally cheaper to take action defend inappropriate or unacceptable> If expressing an opinion is it an sooner rather than later. conduct. Responsible companies and honest opinion that someone else individuals should have nothing to fear > Note and acknowledge the if their article or publication has been could hold or are you making a complaint but do not make any statement of fact? carefully researched and published in admissions. a balanced manner. ResponsiblePublications at risk > Do not agree to any demands made behaviour is the best defence of all without first giving full against any libel action.> Letters consideration to the facts. Privacy is different because the truth> Articles > Check the offending words about of the publication is not the central> Emails – internal or external which the complaint is made to see issue. Only the public interest or if they are factually accurate. freedom of expression can justify its> Blogs; Bulletin boards; YouTube; breach and the requirements are Facebook; Twitter > Retain all documentation becoming more difficult to satisfy. concerning the publication> Press statements (including drafts). Defamation and privacy actions can be like a game of poker. The stakes can> Conference calls > If a formal complaint is made be very high.> TV and radio through solicitors, remember that there are “Pre-Action Protocols” > Don’t play the game without an> The Internet generally which apply to defamation claims, expert by your side. and which set out the procedure > Always refer to a lawyer that should be followed in relation experienced in media law if in to a complaint and a response to doubt. such a complaint. Your lawyer will
  17. 17. > The money spent in the short term the lower court but fortunately the will reap dividends in the long term Court of Appeal found in his favour and and save much executive time and allowed an appeal on the basis that he effort. was expressing an honest opinion as opposed to making a statement of fact. The case proved very expensive andAuthors Comment the doctor may well not recover all his costs (it is always more important toChanges may come with the new remember that, unfair though it is, youCoalition Government. If they do there rarely recover all your costs even ifmay be changes to the success fee in you win).Conditional Fee Agreements and therecovery of After the Event Insurance Defamation lawyers seek to minimiseas recommended in Jackson Report the risk of litigation by the use ofbut, given the state of the nation, it will prudent language. If in doubt getclearly not be a priority. advice.There is a strength of feeling that It all goes to underline the importancemore needs to be done to control costs of not taking risks, and being careful inin defamation and privacy actions and what you say and what you do.to stop so called “jurisdictionshopping” where foreigners startproceedings in this country for libels For further information on this subject,published abroad. please contact:Be that as it may, or in any event, thereis, more than ever, every reason to be Rod Dadakvigilant so that defamation and privacy Head of Defamationlawsuits can be avoided. In hard times T: +44 (0) 20 7074 8080there is a greater willingness to E: rod.dadak@lewissilkin.comlitigate.There is no doubt that costs inlitigation are at the root of theproblem. The recent furore overallegations made by a scientist is agood example of why it is important toget proper legal advice beforepublishing allegations which couldresult in a lawsuit.In a libel action brought by the BritishChiropractic Association, it wasalleged in a newspaper article that theAssociation was happily promotingbogus treatments. The writer did notqualify his language and he was suedby the Association for libel. He lost in © July 2010
  18. 18. SponsorshipDominic FarnsworthPartnerT: +44 20 7074 8088E: dominic.farnsworth@lewissilkin.comwww.lewissilkin.com
  19. 19. Ambush MarketingWhat is Ambush Marketing?Examples of Ambush MarketingHow does UK law currentlyprotect against AmbushMarketing?Olympic GamesSteps to Counter AmbushMarketing
  20. 20. specific legislation has been broughtIntroduction What is Ambush Marketing? into force to prevent unauthorised commercial association with theWith businesses at times Ambush marketing is an attempt by an unauthorised party, through deliberate Olympic Games in general and also thepaying many millions to marketing activity, to take advantage of 2012 Olympic Games in particular). Up to now, where event organisers andassociate themselves with the high media profile of an event, team or individual at the expense of their official sponsors have feltan event it is not another company’s (usually a rival’s) aggrieved by the ambushing of events by third parties, they have generallysurprising that their official association with them, without paying any licence or sponsorship fees. sought redress through the morecompetitors engage in The International Olympic Committee traditional forms of intellectual property protection, such as passing‘ambush marketing’. (“IOC”) has defined ambush marketing off, trade mark infringement or of the Olympic Games as “all copyright infringement. intentional and unintentional attempts to create a false or unauthorised Passing Off commercial association with the In order to ground an action in passing Olympic Movement or the Olympic off, broadly, the event organiser would Games”. need to show all of the following: Ambush marketing is clearly a very it has established a reputation effective marketing tool for brand or goodwill in the event in owners as it attracts consumers at the question; expense of competitors and at little cost to the brand owner. However, it the third party has made a also has damaging effects, not only for misrepresentation which has those ambushed competitors, but also led to confusion in the minds of for the integrity of the event, team or the public as to whether there is individual concerned and their a connection with the event potential to attract future sponsors. organiser; and the event organiser has suffered or is likely to suffer Examples of Ambush Marketing damage. At the 1984 Olympics in Los Angeles, Registered Trade Marks Kodak sponsored TV broadcasts of the Where the event organiser has a Games, as well as the US track team, registered trade mark for the name of despite Fuji being an official sponsor of the event itself (eg, World Cup, London the Games themselves. 2012, etc) or logos, mascots, Visa was an official partner to the 1994 expressions, etc associated with it, and Lillehammer Winter Olympics. that trade mark or a similar mark has American Express released TV been used by a third party in its commercials featuring the strap line; advertising, the event organiser may “if you are travelling to Norway this be able to bring action against the third winter, you will need a passport but party for trade mark infringement. you don’t need a visa”. Copyright At the 1996 Atlanta Olympics, Nike (not The event organiser may have created an official sponsor) handed out Nike a logo to represent the event. If this flags for fans to wave at cameras. logo is sufficiently original to attract Nike also bought up all the outdoor copyright, reproduction of the logo by poster sites in Atlanta and set up its an ambush marketer may also own Nike village next to the official constitute copyright infringement. Olympic sponsor’s village. Advertising Codes and CPRs Event organisers may also have How does UK law currently protect recourse to the advertising self- against Ambush Marketing? regulatory regime, the CAP and BCAP Codes to combat ambush marketing. There is currently no specific These Codes require (among other legislation in the UK, which outlaws things) that all adverts are honest and ambush marketing per se (although truthful and that they should not be
  21. 21. misleading. number of defences including: obligations on media organisations to restrictAmbush marketers may also fall foul honestly made statements; advertising and promotionof the Consumer Protection from registered trade mark/design or during broadcasts or webcastsMisleading Marketing Regulations other unregistered private to official sponsors. The2008 (the ‘CPRs’) if they constitute an rights; restrictions could be extended“unfair commercial practice”, due to to cover the period immediatelythem being misleading. use of a person’s or business’ prior to or after the sponsored own name or address; event.Recourse to the Codes and the 2008Regulations will be of limited value to use indicating the kind, quality, Event organisers should put inbrand owners wishing to take action quantity, intended purpose, place effective licensingthemselves as both involve making value or other characteristics of arrangements. Sponsorscomplaints to the Advertising goods or services; should ensure that eventStandards Authority/Trading editorial/journalistic use; organisers not only own andStandards for them to investigate have made effective licensingthemselves. However, some other incidental inclusion; arrangements for the relevantjurisdictions in the EU (eg, Ireland, exhaustion of rights; intellectual property rights, butGermany, etc) provide for a direct right that they are contractuallyof action for breach of their equivalent continuous use; bound to take action againstversions of the 2008 Regulations and no association suggested. ambush marketers within a setso event organisers should bear this in period of time after such activitymind when faced with an ambush is brought to their attention.campaign which spans more than justthe UK. Event organisers and sponsors Steps to Counter Ambush Marketing should take steps to minimise There are a range of practical steps the effect of online ambush which event organisers and sponsors marketing, which could beOlympic Games may take in order to help prevent carried out through activitiesThe Olympic Games present a number ambush marketing occurring including such as the use of similarof legal pitfalls for the uninformed the following: website names or unauthorisedpromoter. The Olympic Games symbol linking or framing to the official In order to prevent ambushis one of the most protected logos in website or to the sponsor’s marketing occurring in andthe world and has been registered as a website. around the sports stadiaCommunity trade mark in every themselves, event organisers Event organisers and sponsorscategory of goods and services. In may want to consider may want to consider mountingaddition, the Olympic five ring symbol negotiating contractual terms official sponsor awarenessand the Paralympic symbol, the obliging stadia owners to take a campaigns so that the publicOlympic and Paralympic mottos and proactive approach to know which sponsors arethe words “Olympic”, “Olympia”, preventing ambush marketing, official. Indeed, sponsors may“Olympiad”, “Paralympic”, by fully controlling advertising seek to contractually oblige“Paralympia” and “Paralympiad” are in the vicinity. Organisers event organisers to run suchgiven special protection under the could, for example, oblige campaigns and ensure that theyOlympic Symbol (Protection) Act 1995 owners to hand over stadia as are prominently identified as(the “1995 Act”) as amended by the clean sites (meaning that they the only official sponsors in allLondon Olympic Games and would have to be cleared of all literature and advertisingParalympic Games Act 2006 (the “2006 advertising by all unofficial surrounding the event.Act”). sponsors), to rename the stadia Sporting bodies are increasinglyThe 2006 Act extends the scope of the for the duration of the event or cracking down on the running of1995 Act to prevent any unauthorised to control access to the stadia unofficial promotions whichuse in the course of trade of any grounds, including the air space offer tickets to sporting eventsrepresentation in a manner likely to above. as prizes in competitions. Forcreate an association between goods/ Event organisers could also buy example, only official sponsorsservices and the London Olympics. up all of the billboard and other and partners of the World CupUse of the words “games”, “two advertising space in the vicinity are permitted to runthousand and twelve”, “2012”, “twenty of the event and then resell only competitions or promotions intwelve”, “gold”, “silver”, “bronze”, to official sponsors. Indeed, relation to tickets for the World“London”, “medal”, “sponsor” and sponsors may wish to Cup. The same is true for the“summer” may be taken in account by contractually oblige event Olympics.the Court when considering whether organisers to do this.there has been any infringement. Event organisers may imposeThe 1995 and 2006 Acts provide for a
  22. 22. For further information on this subjectplease contact:Dominic FarnsworthPartner, Media Brands & TechnologyT: + 44 (0) 20 7074 8088E: dominic.farnsworth@lewissilkin.comPauline DoreSenior Associate, Media Brands &TechnologyT: + 44 (0) 20 7074 8224E: pauline.dore@lewissilkin.com © November 2010
  23. 23. SponsorshipHow is the sponsorship marketevolving?What are the key commercialissues?What is ambush marketing?Olympic alertThe growth of naming rights
  24. 24. cameras.Introduction Key commercial issues Hospitality : This often forms aSponsorship is booming. It is important for both sponsors and the owners of properties to conclude a significant part of the packageAs brandowners comprehensive contract protecting providing the sponsor with tickets and hospitality access for both staff and forincreasingly understand their respective interests. A bad fit between sponsor and property carries promotional purposes. The numberthe power of well a significant risk of devaluing the and positioning of tickets, the choice of events for which tickets are available,executed sponsorship not future commercial value of the property and of damaging the the level of service of catering, parkingonly are fees on an sponsor’s brand. The negotiation of facilities and specifications for boxes and lounges need to be considered.upward trajectory but also these contracts is critical both from a legal and commercial perspective in Tours of the grounds are oftenthe opportunities. Those that it is often the moment when the included.involved in this area need operational blueprint is drawn up between the parties and the risk of Public Appearance : The sponsor may wish to use players in its advertising,an understanding of the potential future problems allocated. to give post match interviews in thekey contractual and Many of the following points will need to be addressed: sponsor’s lounge or have them present in-house motivational talks for theirintellectual property Term : Not just how long, but also what employees.issues. happens at the end? Options, lock-out Merchandising : Will a sponsor wish to periods, matching rights, fee be able to distribute free premiums as recalculation formulas. Also, what part of its marketing campaign? How events could give rise to early are these sourced and priced and do termination? they compete with the property’s own merchandising operations. Territory : Whilst sponsors generally require global rights, developments in Content Creation : A sponsor may wish technology such as virtual advertising to create its own content, eg interview now provide events owners with the players for management training opportunity to split packages by videos, or include footage of players in territory. With the appropriate its advertising or on its website. technology the displays on billboards Data : A club’s or a band’s database of on event broadcasts can be altered to fans can provide a valuable mine of carry different branding in different customer information. A sponsor will territories. often want the right to be able to use Naming Rights : Is the sponsor’s brand that database to send direct marketing going to become part of the property’s communications. name such as “Barclays Premier Presentation : Presentation rights may League”, or will it be ‘sponsored by’, include the right to present the trophy ‘partnered by’, ‘in association with’, and medals to winners, or to the man ‘official supplier to.’ of the match, and possibly the right to Fee : The key considerations are how feature the trophy or use it for much is to be paid, how are the marketing purposes in the future. payments to be staged, whether there Exclusivity : A sponsor will generally is any payment in kind and whether require a ‘clean venue’. Not only payments may be adjustable against should the sponsor be the only partner promotion/relegation or other within the relevant product category, evaluation criteria. consideration should also be given to Advertising Opportunities : How and an obligation on the property to use the where will the brand be seen? sponsors product/services (eg car Perimeter boards, big screens, flags, fleet, power supply, telecoms services) on pitch branding, programmes, and a restriction incorporated tannoy, website, the list goes on… Can preventing the use of those of a property secure TV advertising competitors. surrounding the broadcast of an event, can it secure billboards outside the venue? For broadcast events a sponsor should ensure that branding is within Intellectual Property Rights the unimpaired view of the principal A sponsorship agreement will
  25. 25. generally result in both sides being Whilst it was not a sponsor of these advertisers need to ensure that anyable to use the other side’s intellectual Olympics it achieved notoriety through commercial communications thatproperty and in particular their trade buying advertising space surrounding reference the upcoming games, evenmarks. This requires a cross licence of the stadia, painting murals, handing obliquely, are given carefulIP with strict controls over the other out Nike Swoosh flags free to consideration.party’s use of that IP to avoid any attendees at Atlanta which werebrand denigration. Both sides will want subsequently waved at the camerasapproval rights over the use of any during the events as well as building amaterials featuring their IP. Nike centre overlooking the Olympic Our expertise stadium itself. The Sports Law Group at Lewis SilkinIn certain circumstances when asponsor obtains the right to have its A property may have devised its own has a deep knowledge of sponsorshipname actually form part of the event brand protection programme. This will issues having advised bothtitle, a new mark is created comprised involve notifying potential ambush rightsholders and leading brands inpartly of the sponsor’s name and marketers that ambush marketing will the utilities, automotive,partly of the event itself. Think not be tolerated, informing them of the telecommunications, apparel and‘Barclay’s Premier League’. This is a relevant IP and regulatory protections entertainment industries on some ofcomposite mark. Composite marks are and that a team of lawyers are on the highest value sponsorship dealscommonly applied for jointly in the stand by to take immediate action. struck in the UK.name of both parties and careful Stewards and trading standardsconsideration needs to be given to the should also be briefed to assist.treatment of the mark following theexpiry of the sponsorship contract. For further information on this subject Olympics alert please contact: There has been specific legislation in Dominic FarnsworthWhat is Ambush marketing? the UK for many years preventing third Partner, Media Brands & TechnologyWith businesses at times paying many parties from using the Olympics namemillions to associate themselves with and rings for certain commercial T: + 44 (0) 20 7074 8088an event it is not surprising that their purposes. However the UK’s E:competitors engage in ‘ambush successful bid for the 2012 Olympics dominic.farnsworth@lewissilkin.commarketing’. This is an attempt by an has lead to this legislation beingunauthorised party to take advantage supplemented by the more draconianof the high media profile of an event at London Olympic Games andthe expense of another business’s Paralympic Games Act 2006. With(usually a rival) official association with concerns that even a seemingly benignthe event without paying any licence or strap line such as “Come to London insponsorship fees to the organisers. 2012” could potentially give rise to criminal liability brandowners andSome examples of effective ambush advertisers need to ensure that anymarketing campaigns include: commercial communications thatAtlanta Olympics – Reebok and reference the upcoming games, evenLinford Christie/Puma : The British obliquely, are given carefulsprinter Linford Christie attended a consideration.press conference wearing contactlenses that prominently displayed thePuma logo, thereby generating Stadium naming rightsconsiderable media buzz for the brand,much to the chagrin of Olympic There has been specific legislation insponsor Reebok. the UK for many years preventing third parties from using the Olympics nameNew York Marathon 1997 - Toyota and and rings for certain commercialMercedes Benz : Five aeroplanes purposes. However the UK’sappeared and wrote MERCEDES BENZ successful bid for the 2012 Olympicsin the sky over New York during this has lead to this legislation beingToyota sponsored event. supplemented by the more draconianLos Angeles, Barcelona, Salt Lake City London Olympic Games andand Atlanta Olympics : Now more Paralympic Games Act 2006. Withmainstream (and sometimes itself the concerns that even a seemingly benignvictim of the ambush marketing strap line such as “Come to London incampaigns of others), Nike was 2012” could potentially give rise toformerly adept at ambush marketing. criminal liability brandowners and
  26. 26. © May 2010
  27. 27. Trade MarksSteven JenningsPartnerT: +44 20 7074 8000E: steven.jennings@lewisislkin.comSimon ChapmanPartnerT: +44 20 7074 8266E: simon.chapman@lewissilkin.comwww.lewissilkin.com
  28. 28. Article 5 Trade Marks DirectiveArticle 5 Rights conferred by a trade mark1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: a. any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; b. any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark.2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.Simon ChapmanPartnerT: +44 20 7074 8266E: simon.chapman@lewissilkin.comwww.lewissilkin.com
  29. 29. Letters before action in IP claims require extremecaution – for now...In Best Buy Co Inc and another v Worldwide Sales Corporation Espana S.L [2011] the Court of Appeal ruled that aparty could be subject to an action for unlawful threats of trade mark infringement, despite the fact that theletter containing the threat was part of ongoing ‘without prejudice’ discussions with a view to resolving thedispute. The test to be applied is whether a reasonable recipient would have understood the correspondence asan intention to initiate proceedings.BackgroundUnder various UK intellectual property statutes, where a party has been threatened with an action forinfringement, an aggrieved party (which may be the party threatened or someone else who is affected by thethreat) may bring an action against the maker of the threat and seek a declaration that the threat was unjustified,an injunction to prevent the continuance of the threat and damages in respect of any loss sustained. Usually,where a party makes statements in a genuine attempt to settle a dispute, the ‘without prejudice’ rule dictates thatthose statements will generally be privileged and non-admissible in legal proceedings.In this case Best Buy Co Inc had developed plans to open a chain of consumer electronics shops in the UK andother European countries under the ‘Best Buy’ name. Best Buy Co had previously used this name extensively inthe United States and had a significant reputation there. Worldwide Sales Corporation Espana S.L is a Spanishcorporation and the proprietor of numerous Community trade marks and national registered trade marksincluding the words ‘Best Buy’. Best Buy Co had applied for a Community trade mark incorporating the words‘Best Buy’ and Worldwide opposed it on the basis of two earlier Community trade mark registrations that it held.Best Buy Co subsequently filed a revocation action against one of those marks on the grounds of non-use.Solicitors for Best Buy Co wrote to Worldwide and indicated that their client wished to enter into without prejudicediscussions, and would be willing to enter into a co-existence agreement as a way of settling the dispute. Theyindicated that Best Buy Co would agree to an extension to the compulsory two month cooling-off period foropposition actions in relation to Community trade marks, to allow further time to discuss an agreement.Worldwide’s written response outlined its rights to the words “Best Buy” and indicated that these rights could beasserted against Best Buy Co through legal action. Their letter stated that the use by Best Buy Co of the mark inEurope and in particular in Spain, as well as in media advertising, would represent a conflict with Worldwide’sintellectual property rights which would entitle the company to take the appropriate legal action to defend itsinterests . However, the last few paragraphs of the letter indicated that Worldwide would be prepared to reach asettlement with Best Buy Co over their use of the mark, but until then requested that Best Buy Co refrain fromusing the “Best Buy” mark. Worldwide’s response was not marked ‘without prejudice’.After negotiations broke down between the parties, Best Buy Co launched proceedings against Worldwide for thegroundless threat of infringement proceedings pursuant to Section 21 of the Trade Marks Act 1994 (the “Act”).There are exceptions under the Act, including under section 21 (1) (c) which excludes a threat by one party withproceedings for infringement of a registered trade mark relating to the supply of services under the mark.First instance decisionAt first instance Floyd LJ found that Worldwide’s letter contained a threat of infringement proceedings undersection 21 of the Act. Worldwide’s letter had set out that its marks were "reputed and distinctive", that Best BuyCo’s actions were "causing irreparable and irreversible damage" to it and that the company was thereforewww.lewissilkin.com