Red All-Over: A Simple Distinction in Black and White

Photo by JamesRoseUK, some rights reserved

David Allen Green, new media legal darling and sedulous blogger at Jack of Kent (as well as approximately one hundred and one other places these days) wrote last week of another example of “Bad Law” – press articles which misrepresent or misunderstand the law to the extent that they serve only to undermine the public’s image of what the law is, and the excellent legal news reporting of the rest of the industry.

This theory of Bad Law reached the forefront of my mind again this week when a prime example cropped up in the Indy’s little sister, Itheir report on the latest twist in the Christian Louboutin v Yves Saint Laurent trade mark infringement case.

In brief, the case relates to a claim by Louboutin that YSL’s use of a red-painted sole on its posh (but not as posh as the claimant’s) high-heeled shoes is an infringement of his US registered trade mark (number 3,361,597 in case you’re wondering) for the use of red lacquer on the soles of women’s shoes.

Photo by Mr. Donut, some rights reserved.

I got itself into a right muddle over some simple intellectual property terminology and fell into the common trap of thinking all IP cases relate to copyright.  After initially making the right call and referring to Louboutin’s claim that a colour can be trade marked (ok they used the American trademarked, but we can let them off seeing as everyone seems to do that these days), the paper went on to say that Louboutin had claimed that YSL’s use of red infringed his copyright.  In fact, the excellent fashion law blogs at Styleite and Law of Fashion make no reference to copyright in their considerations of the case – presumably because it is not the same as trade mark infringement and therefore quite irrelevant to this case.

Bad Law reporting in relation to intellectual property has a long pedigree, and you only have to go back to mid-September to find another prime example in the national press.  In this article, the Daily Mail went full-throttle (the default setting for Mail news reportage) against British copyright law for banning the estimable British Sugarcraft Guild from allowing any Olympic imagery in their 2012 cake-baking competition.  All well and good (so long as you can stomach the Daily Mail’s firebrand style of writing) apart from the fact that LOCOG’s grounds for objecting to the cake contest were rooted in trade mark law and the specially enacted (and largely ridiculous) London Olympic Games and Paralympic Games Act 2006.

Photo (& cakes) by Micala, some rights reserved.

So why has copyright become a catch-all term for all intellectual property rights?

Are modern journalists really unable to get their heads round the distinction between the classes of intellectual property rights?  If so, they’re not alone.  Most lawyers outside of technology/media teams struggle to tell the difference, so why should the newspaper reading public be expected to know any better?  Especially if they are being spoon-fed by Bad Law news reporting.

As someone who works in the mysterious world of IP law on a daily basis, and who has been called upon to give training to lawyers, marketers and IT-bods, I now take it upon myself to offer up the following simple explanation:

TRADE MARKS (two words in the UK, please)

These protect any sign capable of graphic representation which distinguishes one business’s goods or services from another’s.  These include names (such as “Christian Louboutin”), logos (such as Apple’s apple), catchy slogans (like Audi’s “vorsprung durch technik”), colours (like Cadbury’s purple), or sounds (like the MGM lion’s roar).

Christian Louboutin has a US trade mark registration for the use of red soles in relation to ladies’ shoes.

Photo by verbeeldingskr8, some rights reserved.

PATENTS (that’s pah-tunts not pay-tents in the UK, please)

These protect inventions (processes or ways of doing things) and must be new and involve an inventive step.  UK patents cover things like Dyson’s bagless vacuum cleaner, Dunlop’s pneumatic tyre, Atkinson’s classic mousetrap and Churchman’s manufacturing process for chocolate (although strictly speaking the last three of these at least have expired).

For the avoidance of doubt, you cannot patent red-soled shoes (unless you have an innovative way of getting red paint onto the soles of shoes) – the concept of shoes is generally well-known.

Photo by Chen Hao Hsuan, some rights reserved.

REGISTERED DESIGNS

These aren’t as well-known as their brothers, and cover the visual appearance of a product, perhaps the contours of a Coca-Cola bottle.

Christian Louboutin has a design registration for a style of zip used on a shoe.

Photo by MCaveen, some rights reserved.

COPYRIGHT (never copywrite or copyrite anywhere in the world, please)

This protects the expression of an idea, be it a literary, dramatic, musical or artistic work.  It covers, well pretty much anything, and arises automatically upon creation.  It can be recognised by the use of the © symbol.

Christian Louboutin will have copyright in his shoe designs assuming they can be considered an artistic work (and Miss HotShot certainly believes this to be true), but if he doesn’t raise this in his court case, it is not accurate to describe it as a claim of copyright infringement.

Photo by Sam Teigen, some rights reserved.

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Give a Good Account of Yourself

Photo from thinkpanama, some rights reserved.

Jeremy Phillips venerable scrivener-in-chief of the IPKat tweeted on Thursday about a meeting with his new bank manager:

Professor Phillips went on to explain that:

 

Now, my role often exposes me to the early stages of product naming at HotShot Bank Inc and should put me in a position to fully understand the reasoning behind bank policy on branding and product naming.

We have a branding policy which provides that all new product names should be descriptive, and a trade mark policy which provides that all new product names should be cleared and registered as trade marks where appropriate.

The keen-eyed among you may have noticed a dichotomy here.  Descriptive names cannot be registered as trade marks.  This is a well accepted principle of trade mark law, and prevents the Rubbery Tyre Company from registering “RUBBERY” as a trade mark in relation to its tyres.

For many years, as Professor Phillips points out, consumer banks in the UK have got round this issue by applying for trade mark which mask the descriptive nature of their account names with some distracting distinctive element – usually an existing house mark.  This enables them to obtain registration for names like “Fancy Bank Current Account” and “Fancy Bank Gold Card” despite the fact that “current account” and “gold card” are clearly generic in the industry, and potentially purely descriptive.

This practice has also relied on a whole world of unspoken co-existence between the banks as they all sit back and allow their competitors to register effectively identical marks, so long as they are preceded by a differentiating house mark.  As a result Fancy Bank will turn a blind eye to the “Posh Banking Corp Current Account” and “Posh Banking Corp Black Card” (let’s face it, Posh Banking Corp would be a little more exclusive, wouldn’t it?).

So what effect does this have on brand recognition?  Well I would wager that most banking customers couldn’t tell you the name of their main bank account.  Or at least not the name that their bank knows it by.  They will know which bank it is with (we hope), but they will most likely just refer to it as their “current account with My Bank”.  They may, if they hold a premium account with a bank refer to it by its full name, (perhaps the Fancy Bank La-di-da Account?) or just generically as one of those premium accounts with Fancy Bank.  Either way they will see it as their current account or premium account with Fancy Bank, not their Fancy Bank Current Account® or Fancy Bank La-di-da Account®.

Photo from Robert Stokes, some rights reserved.

So how do the banks differentiate their accounts?  They might spend millions on getting sports stars to endorse them and appear in posters, they might spend hundreds of thousands on TV and poster advertising, but really all this does is push the house mark.  I would wager that the majority of new customers who walk into a branch of Fancy Bank having seen their fancy new poster campaign will just ask to open “a new account”, or maybe “that new account with whatshisface in the ads”.  Not many of them will ask to open a “new Fancy Bank Exploso-Account”.  Of course many of them will ask to open “a new current account”, but importantly they are asking for this in a generic sense rather than the ® sense.  So to an extent the trade mark of “Fancy Bank Current Account” has already served its purpose as an indicator of the source or the services when the customer walks into the bank.

So to what extent does the registration of “Fancy Bank Current Account” serve any purpose?  Well it doesn’t.  Does it even act as a trade mark?  No it doesn’t.  Does that mean banks with stop registering these names?  No it doesn’t.  The risk adverse will still go ahead and assume they get some protection for their use of “Fancy Bank Current Account” despite the fact that it really offers no more protection that their hundreds of other registrations for Fancy Bank, but to use an old law school analogy, in a game of Ring of Fire, no one wants to be the first to break the circle.