Christmas feels like it’s rolled round unusually quickly this year. Love Actually is back on the Netflix agenda and the manic hurry to cram in all present shopping is well and truly in count-down mode. But before the holiday season begins, we thought we’d leave you with some final thoughts and observations about Christmas and intellectual property (IP). We’re surrounded by examples of IP at Christmas whenever we leave our house. Just think of when Christmas carols fill the air and as all the big and small brand names push their products, designs and labels to careworn consumers on the hunt for purchases. A large proportion of these brands will be protected by trademarks, which generally strengthens and enforces a brand’s reputation and pushes up its value. We recently wrote about the value of trademarks in protecting the value of your business and brand.
Believe it or not, even ‘Christmas’ and ‘Happy Christmas’ are protected in the UK as trademarks. Does this mean you are committing trademark infringement by displaying this wording on your products/branding in the course of trade? Probably not, since these marks are protected as distinctive logo marks (see below) in specific classes (broadly software, media, games and entertainment). Unless those marks are reproduced in an identical or confusingly similar format for use in that field, there wouldn’t be grounds for a claim as those parties do not have monopoly rights over those words alone. One unlucky trademark applicant found this out the hard way in 2012, as is evident by a refused trademark application for the plain word mark ‘Christmas’ covering e-commerce and advertising services. Generic marks like these which have become customary in the festive trade will not be registrable unless they are sufficiently distinctive. This is because they must be capable of being viewed as a trademark in order to show the origin of those goods/services. The plain word mark for ‘Christmas’ was presumably refused by the trademark office on the basis that it would simply be viewed as a seasonal greeting. For further insight on how to make sure you get that all-important trademark application absolutely right take a look at our blog post on the subject - 5 Tips to Get it Right.
IP rights also surround us at home at this time of year, one example being in Christmas TV adverts which inevitably roll into our living rooms on an annual basis and often feature songs by famous artists. Most people understand that songs can’t be used without the owner’s permission, as there is copyright in not just the melody but also in the lyrics and sound recording. And there are big bucks to be made in these collaborations, with Elton John reportedly having been paid a six-figure sum for his part in this year’s John Lewis Christmas ad featuring his international hit single ‘Your Song’.
Publishing other's content - case study
But not all artists get their fair dues for performances and publication of their music. One very recent case in point is the copyright infringement suit brought by Spandau Ballet concerning its hit songs ‘Gold’ and ‘True’. The case centred around a holiday cruise operator’s use of extracts from these songs (with neither consent nor a licence) as part of its promotional video for its “Back to the 80’s” cruise. As well as posting the clip on its website, the defendants also uploaded it to a filesharing platform and sent a link to the platform to 257 travel agents, encouraging them to use the clip. We recently commented on the latest developments in Copyright Law which will come into play with the EU's passing of the new Copyright Directive which directly impacts on the use of third-party content online. Whilst communicating a work to the public is one of the acts expressly forbidden by copyright law, the judge here held that the link did not constitute a "communication to the public" since the travel agents were not an indeterminate number of people. This got them off the hook in respect of the link, but there was still copyright infringement in respect of the appearance of the video on their website. On being notified of the infringement, the defendants promptly removed the video from the website, where it had remained for a period of 5 days. The judge had to decide what damages to award the claimants, which were eventually assessed on the basis of the reasonable hypothetical licence fee that would have been negotiated between the parties, for the period of the infringement. The judge concluded that a reasonable licence fee for 1 year for both songs would be £155,000 (which factored in a discount to reflect the fact that the licence would have covered two tracks and have been for internet and point of sale use only and not for television). Instead of pro-rating this figure to reflect the length of the 5-day infringement, the damages were instead assessed at 25% of the 1-year licence fee on the basis that ‘any significant use of iconic songs of this stature would attract a substantial fee’. This was then further uplifted by £25k for flagrancy, to reflect the seriousness of the infringement given that the defendant’s experienced agent should have understood the need to clear the publishing rights as well as the rights in the recordings. Moral of the story? If you’re not sure what you can and can’t use commercially, play safe and seek advice. We’ve now strayed far from the Christmas track but we are often asked by clients how compensation is assessed in infringement cases. The above summary serves as a useful insight into the type of logic judges will apply when calculating damages, especially where big iconic brands or IP is involved.
When you are looking to register your distinctive branding elements (be it words, logos, slogans, designs, even shapes, colours, sounds or smells),...
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