Although the aticle appears in a publication that deals with business to business marketing (the clue is in the title!), many of the issues highlighted are equally applicable to B2C (ie consumer) apps.

Here are some of my top tips:

• know the rules of the platform – Apple in particular has extensive rules that you need to adhere to when developing for iOS.
• decide what you want the app to do – is an app genuinely the best way to deliver your idea, or would you be better creating a mobile optimised version of a website? Has it been done before? Can it be easily copied?
• Make sure you own/are properly licensed to use the IP in your app – there is no presumption that you will own the copyright in code developed for you. Also, make sure that third party IP is properly licensed (and on wide enough terms to avoid future problems further down the line – if your third party licence specifically references the iPhone then it won’t allow you to distribute the same app on the iPad).
• Make sure you think about brand protection (ie trade marks) – and remember that the app market is generally global. A number of apps have had to rebrand because their brand infringes the rights of a third party in another country where the app is available. So think about your brand before you launch it – the more distinctive the better.
• Think about your charging model – remember that Apple and Google take a 30% cut of revenue in return for hosting the app stores and processing payments, and they are also now demanding a cut of in-app purchases. You might even want to make the app free – some of the highest grossing iOS apps are free and make money purely through in app advertising.
• Think about data protection – are you collecting personal data/utilising geolocation functions on the device (eg mobile phone triangulation/GPS/wifi data)?
• Apps are licensed directly to the end user – Apple etc just acts as an agent in the sale. Do you want to use its standard EULA, or should you have specific licence terms that better reflect your app?

Unsurprisingly then, the sitcom Father Ted was a big hit with my family when it was broadcast in the mid-nineties. I was therefore amused to read yesterday about the legal problems facing Father Ted: The Dinner Show, which is due to be staged in Edinburgh in August as part of the Fringe. Attendees to the show will be given their dinner whilst being “entertained by the much loved and extravagant Father Ted Crilly who has a habit of getting into awkward situations, the young, dim witted Father Dougal McGuire and famously drunk since 1936, and the alcoholic swear machine Father Jack Hackett!”

However it’s not clear if the show is going to go ahead at all. A brisk legal analysis would be that the use of the character names and/or their physical characteristics infringes both copyright and trade mark rights, and various rights holders don’t appear to be impressed.

The author of the scripts for the Father Ted sitcom, Graham Linehan, has publicly denounced Laughlines as “a bunch of chancers” and is proposing that they should donate some of the profits to charity.  It’s unclear if Linehan actually still owns the copyright in the characters (he may have assigned the rights to whoever produced the sitcom for television), but he may still retain the moral right to object to derogatory treatment of them.

Further, “Father Ted” is also a registered trade mark of television production company Hat Trick Productions Limited, in several classes of goods, including “printed matter”. It’s understood that Hat Trick are considering whether the dinner show unfairly copies the Father Ted mark, or is “passing off” as a show created by Hat Trick.

There is of course an attempt to exclude any liabilty on the Laughlines website: “The Laughlines Father Ted Dinner Show is a tribute act and does not copy any of the scripted writing created by Graham Linehan & Arthur Matthews [sic] / Hat Trick Productions. The peformers [sic] are impersonators only”.

This reminds me of the classic episode where Father Dougal inadvertently gives away his house. Father Ted runs out of options to reclaim it, and before going to sleep in a tent in the back garden he leaves out a pad of paper and a pen.

Father Ted: “It’s a long shot Dougal, but maybe in the morning God will have written out what we should do.”

Father Dougal: “That is a long shot, Ted”

Royal Wedding hype is now in overdrive, and the list of incredible Royal Wedding tat on sale is almost as ridiculous as Prince Phillip’s legendary gaffes. Dobbies is selling the essential Royal Wedding rose, for patriotic gardeners everywhere (let’s hope the wedding outlasts the flowers). Heritage Condoms Limited is punting special royal prophylactics, which “combine the strength of a Prince with the yielding sensitivity of a Princess-to-Be”. And, in what is surely a dreary publicity stunt, mugs are onsale which “accidentally” star Prince Harry.

Is it legal?
This got me wondering about whether or not this tat – the “Royal Rubbish”, if you will – infringes any rights of the Royals. Official merchandise personally approved by Prince William and Kate is being overseen and sold through the Royal Collection, which looks after the Queen’s extensive art collection and arranges public exhibitions.

But what about all the other Royal Rubbish?  If it’s not official, does that mean that it’s illegal? Certainly, the use of royal arms, emblems and representations of a member of the royal family on souvenirs is prohibited by the Trade Marks Act 1994, unless permission has been obtained from the Royal Family. Selling unlicensed goods can lead to a criminal prosecution. (I’m not sure if it also qualifies as treason – if so, there is a sentence of life imprisonment!)

Temporary relaxation of rules
Happily, in the run-up to the wedding, Prince William has approved a “temporary relaxation” of the rules governing the commercial use of royal photographs and insignia on souvenirs. This allows the use of approved photographs of the royal couple and the full Coat of Arms of Prince William. Such use must be in “good taste”, carry no implication of royal approval and must make it clear they are commemorative items. There are also tough restrictions on what constitutes “souvenirs”, and all sales must cease by the start of October.

Overall this “temporary relaxation” seems sensible, especially in light of the disastrous attempts by the Diana Princess of Wales Memorial Fund charity to control the use of Diana’s image. In 1998, The charity was unhappy about companies using Diana’s name and/or likeness on memorabilia, and took particular issue with the Franklin Mint Co, which was producing plates, dolls and other memorabilia bearing Diana’s name and likeness. The charity tried to use the Californian district courts to sue the Franklin Mint Co for false endorsement and false advertisement, violation of California’s “post-mortem right of publicity” statute, violation of trade marks, and unfair competition.  The Court of Appeals’ judgement provides a good summary of why the Californian courts were not impressed with these claims, the principal problem being that Diana had been a resident of the UK, and UK law did not (and still does not) recognise a post-mortem right of publicity. The litigation continued for years, with an unwelcome twist being that the Franklin Mint counter-sued The charity for malicious prosecution of the first lawsuit!  At the start of this year the parties finally reached a $25 million settlement, and all settlements linked to the case were given to charity anyway.

False endorsement
How does this square with the British Chancery Court decision in Irvine v Talksport, in which it was held that false endorsement claims could be brought under the “passing off” doctrine, and that celebrities/public figures have a property right in their goodwill which they can protect from false claims or suggestions of endorsement of a third party’s goods or business? Well, in his judgement Justice Laddie emphasised, more than once, that the defendant had not actually sold merchandise bearing the celebrity/public figure’s name and/or likeness, and that the opinion did not address the question of whether UK law prohibits the unlicensed manufacture and sale of merchandise bearing celebrity/public figures names and/or likenesses.

So, enjoy the Royal Wedding, and use that tea towel which you bought down the Barras safe in the knowledge that whoever manufactured it is unlikely to end up in the Tower!

But owners of other businesses might wish to pay attention too.

As with other new TLD launches, to counter any cybersquatting there will be a short sunrise period for legitimate trade mark holders to register domain names before the domains go on general sale. However, unlike previous TLD launches, this sunrise period will have three phases – two for the adult entertainment industy, and one for other businesses.

New sunrise procedure
Usually, brand owners will have a large estate of domain names (covering various TLDs and spellings/phrasings) that all point to the same website. When a new TLD is launched, the brand owner will pre-register that domain name and simply add it to its estate.

The reason for the dual track process for .xxx registrations is that if a .xxx domain points to another website, then web-filtering software designed to block .xxx domains might also block the other website (on the basis that it is obviously linked). Clearly, this could cause problems for brand owners who defensively register the .xxx version of their domain name, only to find that their main website is also blocked.

To get around this, the registry responsible for running the new TLD, ICM Registry, will be allowing non-adult entertainment industry brand owners to pre-register their domain through a specific sunrise process. Once registered, the domain name will display a page which says that the domain name has been registered under ICM’s brand protection programme. This will ensure that there is no third party cybersquatting/brand hijacking, whilst also ensuring that there is no link through to the brand owner’s main website.

It is expected that the sunrise periods will commence in September this year, with the new domain name becoming publicly available in November. You can follow progress and pre-register at the ICM Registry website.

Of course, it is presumably possible for brands with a reputation for more risque advertising to utilise the new TLD for specific marketing campaigns. I wonder if Castlemaine Breweries will be one of them?

The result of an appeal in that case has just been published.

The makers of Vodkat argued that the right to prevent an imitation of a product category (such as Vodka or Champagne, as opposed to a particular brand such as “Smirnoff”) only exists for “premium” products. Its case was that Vodka is not a premium product but rather just an “alcohol delivery device”. Nice!

The Court agreed that Vodka is not a premium product, but said that didn’t matter, i.e. Vodka producers could prevent the sale of Vodkat because a punter might buy it thinking he/she was buying a “proper” Vodka.

During the case various examples were given such as whether a manufacturer of butter could prevent a margarine producer using the word “butter” in its product name. According to the Vodkat appeal the answer is “probably yes”.  This interested me.

What about the product “Utterly Butterly”. It’s not butter, but is that clear to all the punters who buy it? If not then a butter manufacturer could probably attack it.

Contrast that with “I Can’t Believe it’s not Butter”. That brand name makes it clear the product isn’t butter (thus removing any risk of passing off) while still making the average punter think of butter (at least by association). Genius.

So what the Vodkat people need to do is rebrand their product as “I can’t believe its not Vodka” and then make sure its retailers don’t put it too close to “real” Vodka on its shelves.

Douglas “I can’t believe he is not a High Court Judge” Mathie

What an amazingly valuable trade mark.

Because it is a registered mark the City of New York can prevent its use (misuse), and also get a royalty payment for every T-shirt, mug etc. sold that carries the logo.

Interestingly it seems that charging royalties for use of the logo on merchandise is a relatively new thing, and that when the logo was first launched in 1976 it was available for use free of charge. This makes sense – the logo was created to prmote New York and not as a revenue generator. However, now the brand is so well known it can do both at once.

Interesting Fact – In researching this article I found out that New York has an official state muffin. It’s apple.   

This will include a review of how a lender can take security over a borrower’s Intellectual Property such as patents or copyrights.  By “security” I mean getting some right to the asset where the borrower defaults.

This is a bit of a hobby horse of mine, and I have quite a lot of experience in drafting and enforcing securities over IP.

At present the only cast iron* way for a lender to have security over IP owned by a Scottish Company, i.e. one with its registered office in Scotland, is for the lender to take ownership of the IP (with a promise to return it to the borrower when the loan is paid off).  This is consistent with the Scots law doctrine of “no security without possession”.

English law is more relaxed about security over IP – you can get pretty good security under a English law debenture. 

However, English lawyers should be aware that if the IP is owned by a Scottish Company then the debenture may not offer the required protection.   This is not just theoretical.  I have seen English lawyers fall into this trap a couple of times, and one time it was very costly. 

So if any English lawyers are reading this, and your client is taking security over a Scottish Company with significant IP assets, e.g. a Whisky company that has a lot of registered trade marks, then give me a call.

* For the law geeks out there a floating charge that includes the IP assets does give the lender some protection, but does not protect the lender against the risk of pre-crystallisation alienation of the assets by the borrower.

When Gmail was first launched by Google, a number of organisations in a number of countries around the world claimed that they already had rights in the “Gmail” mark, and that Google’s new service would infringe those rights. In the UK, that organisation was a company called Independent Investment Research (IIR), which claimed that it had been using the mark (albeit in an unregistered form) since 2002 in relation to an online information tool. Although Google launched the service as a beta in April 2004, it did not seek community trade mark protection (CTM) in the European Union until March 2005.

In October 2005, following a failure to reach a settlement, Google announced that it was rebranding its UK service as “Google Mail”, and that new users would receive an “@googlemail.com” email address, rather than an “@gmail.com” address.

It appears that Google and IIR have now resolved their differences (or IIR has agreed an acceptable settlement fee with Google), and that Google Mail will now be rebranded once again as Gmail. Perhaps uncoincidentally, I see from the IPO‘s website that four and half years after the initial application “Gmail” was finally registered as a CTM on 22 December 2009.

Interestingly, although Google publicly rebranded Gmail in the UK in 2005, behind the scenes nothing really changed. This is because Google still owned the core gmail.com domain name (the ownership of which was not being challenged), and its systems are built around email addresses being allocated to @gmail.com – it does not allow separate users to have john.smith@gmail.com and john.smith@googlemail.com. I have had my Gmail address since 2004, and throughout the dispute continued sending and receiving email to my “@gmail.com” email address. Similarly, whilst when signing up in 2006 Joe Bloggs may have been given the email address joe.bloggs@googlemail.com address, and the webpage he used to access his account was branded “Google Mail”, he could still receive email sent to joe.bloggs@gmail.com – it just wasn’t promoted. From a passing off perspective, would probably have struggled to make a claim stick, as Google had ceased actively offering a service in the UK under the “Gmail” mark.

In the end, both parties have probably got what they want, but it is unlikely to have come cheap. Whilst Google may have decided from the outset to play the long game in its dispute with IIR, what the case does do is show the importance of carrying out diligence on your proposed brand name before you launch, and in each country where you intend to trade. The fact that you have secured the .com domain name does not mean that you are automatically entitled to use that mark in every country around the world. Local diligence is crucial.

http://www.bbc.co.uk/blogs/thereporters/rorycellanjones/2010/04/the_google_political_ad_war.html

So both Labour and Anne Summers appear to be bidding for the search term “David Cameron”.

I have thought of about 10 Anne Summers jokes to use here – but I am self censoring. Feel free to add your own in the comments (although I reserve the right not to publish these).

This also reminds me of the huge part Google and Youtube played in the last US presidential election.  No doubt each party will  have its own team search engine optimisers and web spinners (spiders?) working on this election.

Also as an aside one of my contacts from the pub (cutmustard.tv) tells me that your Google ranking shoots up if you have a link to a properly tagged youtube video. I don’t know if this is true but given that Google owns Youtube it sounds credible.

Have a good weekend.

I have been mucking around with Adwords in order to drive traffic to this Blog site partly because I got a free £50 credit from Google in a magazine flyer, partly because it’s something I need to understand in order to advise clients, and partly because there are interesting legal aspects to it.

Here is an example of my advert (click on the image to see it in a better resolution)

The words/phrases I bid for were all fairly dull –  ”technology law”, “intellectual property law”. But imagine I had bid for a competitor’s brand name. I might get more traffic but I don’t think my competitors would be that impressed. 

This is what happened in Interflora v. Marks and Spencer. M&S bid for its flower delivery advert to be displayed if anyone Googled “Interflora”.  Interflora are going after M&S for trade mark infringement and passing off. The case is working its way through the Courts. Watch this space for the result.

In a parallel series of cases in the European Court of Justice (the highest court in Europe), the brand owners, including Luis Vuitton, sued Google (as opposed to the person who purchased the Adword).  Last week the ECJ held that Google was not liable because it was just a conduit for the infringement and not the author of the infringement.  While I think that decision is questionable, the upshot is clear – if you are the brand owner you have to go against the person who purchases the Adword, and not Google.

Hmmm!

Based on this I thought it would be funny for my advert to be displayed whenever anyone searched  for “Google” or  “Adword”. Surprisingly, Google seemed prepared to let me do this. However, in the end I got cold feet. (I had visions of trying to explain to the Brodies’ managing partner why Google was suing Brodies.)