Archive for March, 2010

Mucking Around with Adwords and Using a Competitor’s Brand as an Adword

Google Adwords is a system where you can buy a good screen position for your advert in the results of a Google search for a word or a phrase you choose.  So for example I could bid up to £2 for a Brodies’ advert to be displayed when a user Googles “Outsourcing Law Scotland”.  (Actually you only pay Google if someone clicks-through on your advert.)

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.


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.)

See EMI(ly) Pay – thoughts on Pink Floyd v EMI

You may have read that Pink Floyd recently won a legal case against their record company EMI. The case was decided a few weeks ago, but I delayed reporting it for reasons I shall explain.

The facts were that the band claimed EMI was breaching a 1999 Master Licensing Agreement by “unbundling” Pink Floyd albums and making individual tracks available for download, despite an express contractual prohibition against selling “albums in any configuration other than the original configuration”.

Pink Floyd said that the aim of this contractual prohibition was to “preserve the artistic integrity of the albums” and therefore had to extend to digital sales. EMI submitted that the word “album” in the contract referred to a physical object and there was nothing in the contract to suggest that “album” applied to on-line distribution. (A third viewpoint not raised in the High Court, but amusingly advanced by Jeremy Telman, Professor of Law at Valparaiso University, is that Pink Floyd albums were usually enjoyed in their entirety because listeners were never in any condition to get up off the couch and move the needle to individual tracks.)

In judgement Sir Andrew Morritt held that there was a presumption that the provisions of the contract were to extend to digital sales unless something in the nature of the product suggested otherwise. Accordingly EMI was not allowed to “unbundle” album songs for individual download. (Intriguingly part of the hearing, relating to a challenge over the level of royalties paid by the record company, took place in private – excluding the public and media – after EMI made an application citing commercial confidentiality. The relevant part of the judgement was also held to be confidential.)  EMI are expected to try to appeal the judgement, or at least aspects of it.

I held back on writing this post as I had a feeling the decision would be portrayed as some sort of artistic victory for the album format in the face of today’s download culture. And that’s exactly what has happened, with respected musicians such as Guy Garvey delivering gushing praise

I’m not sure I agree.

Does it not seem curious that a bunch of normally cash-obsessed rock musicians such as Pink Floyd (who let’s not forget are also arguing about royalty rates as part of their case) would seek to defend the “original configuration” of their recordings at the likely expense of sales? Could it be that, rather than defending the concept of the album (or indeed the “concept album”), they are actually seeking to improve their bargaining position with a view to agreeing on the sale of individual tracks at some point in the future?  “Do you think you can tell?”

2014 Games logo: some lessons in corporate branding

Last week saw the unveiling of the logo for the 2014 Glasgow Commonwealth Games. Amid the fanfare, it was quickly observed that the 2014 logo is very similar to a logo produced by the same design agency for The Common Guild, a Glasgow based arts organisation.

There is no suggestion that the organisers are anything but very happy with the 2014 logo. The explanation which appears on their site, of the thinking behind it, suggests it has been very carefully thought out to meet the design brief.  But this example does provide a good reminder of some basic issues which should be addressed by any purchaser of graphic design work.

1. Make sure that you have a written contract with the design agency, which expressly deals with ownership of copyright (and other intellectual property rights) in your new designs.  If there is no contract, or the contract doesn’t deal with this, the design agency will own the copyright in the designs and your right to use them will be an implied licence. (This leads to uncertainty as to what use is licensed (permitted). For example, the design agency may demand payment of additional fees to consent to e.g. an amendment to the original logo.)

2. As the client commissioning the designs, you should ask the design agency to assign (transfer) the copyright in the designs to you. If the design agency refuses to do so, then make sure that you have a clear licence to use the logo, for no additional payment (other than the fee which you have paid for the design work), for all the purposes that you can reasonably foresee at the time of commissioning.

3. If the design agency retains ownership of the copyright in “your” designs, remember that it could validly make the same or similar designs available to another client or clients. Consider including a contractual restriction to prevent this. You may also want to ask for a warranty (a contractual promise) that the agency has not already supplied the designs to someone else – i.e. that your logo is not second hand.

4. As well as intellectual property rights in the logo itself, consider the trade mark issues arising from using your new logo. Look carefully at what your contract with the design agency says about this. Is it your responsibility to have a trade mark clearance search carried out, to check that your use of the logo in respect of your goods and/or services won’t infringe anyone else’s trade mark? If it is, then remember that you will have to budget separately for that clearance search.

In summary, just because you have paid for your logo, does not mean that you own the rights in it or that it is exclusive to you.  It is important, therefore, to address these issues in the design contract, to avoid difficult discussions (and possible additional costs) at a later date.

Salmon Association seeks o-fish-al EU protection

Following on from last month’s post about EU “indicators of geographical origin”, it has leapt to my attention that the Scottish Government is consulting on an application by the Salmon Net Fishing Association of Scotland to have “Scottish Wild Salmon” registered as a Protected Geographical Indication (PGI).

The application covers Scottish Wild Salmon caught solely in Scotland and makes reference to the unique qualities of Scottish salmon: “Fresh Scottish Wild Salmon are bright silver, with a dark blue back and firm, with scales intact….The fish are in peak physical condition and are recognised as excellent for eating fresh or smoking to make the famous Scottish wild smoked salmon recognised by many of Europe’s top chefs and restaurants.” The Scottish Government’s consultation requests that interested organisations mullet over and provide comments (or objections) by June 4, 2010.

In related “indicators of geographal origin” news, Yorkshire Forced Rhubarb has successfully gained Protected Designation of Origin (PDO) status. The rhubarb, grown by candlelight, is grown at 12 farms in West Yorkshire’s vaguely sinister sounding ‘Rhubarb Triangle’ between Morley, Wakefield and Rothwell (near Leeds). Yorkshire Forced Rhubarb is the 41st British product to become an EU Protected Food Name, and all 41 products can be viewed here.

Janet Oldroyd, of the Yorkshire Rhubarb Growers Association, said: “Awarding PDO status to Yorkshire Forced Rhubarb is fantastic news for British food. The public will be certain that our product is exactly of the quality and flavour expected of Yorkshire Forced Rhubarb as all producers must not only be in the designated area, but will be extensively audited, ensuring traditional production methods are maintained.”

To find out why rhubarb was once more sought after than opium – and lots of other rhubarb facts – you can visit Ms Oldroyd’s website.

Germany, ISPs, Data Protection and Anti Terror Laws

Under euro wide anti-terror laws ISPs and Telecomm providers are required to retain connection data for a minimum of six months *. 

 By “connection data” I mean records of, e.g. what number called what number, or what email accounts have been communicating, and not the actual content of the communications. 

However, it is reported that the German constitutional court has ruled that this requirement to retain connection data is incompatible with the country’s fundamental law, and has ordered the immediate destruction of all current connection data held by ISPs etc. 

Now I am not qualified to talk about German law.  However, in some ways this is not a huge surprise because Germany is the birthplace of modern data protection law (laws preventing misuse of data about individuals).  From memory, and just to prove I was listening in Law School, the first dp laws were enacted in the state of Hess in the mid seventies.

Why is Germany so hot on dp?  I suspect this may be (at least in part) a reaction to what happened in WWII.

Now I am not the biggest fan of dp law – I have in the past described it as anti-business.  However, if you think about how personal data was used (misused) by the Nazis in WWII in order to persecute people on ethnic, religious, political and/or sexual grounds then dp laws make a lot more sense.

* – At time of posting the wikipedia entry is not entirely up to date about the UK law in this area.  The requirement to keep connection data is now statutory in the UK and is for 12 months.

ps – I am not the Brodies dp guru, so if you have any detailed questions about dp I am going to pass them to Eleanor.

Wordcloud showing recent Brodies’ experience..

A client asked for a list of all the interesting work the Brodies’ Technology Information and Outsourcing Group had carried out in the last 12 months.

We listed it all in a document. That was OK, but a bit dull. So we put the document through a word cloud generator and came up with this

I know it looks a bit janky at this resolution, but still, it is pretty cool.

Update – Click on the picture to see it at a better resolution.

We put the word cloud at the front of the document. It looks fantastic.  I think I’ll be using word clouds a lot more from now on.

Libel Law Reform

The Culture, Media and Sport Select Committee has published a Report on “Press standards, privacy and libel”.

The Report was prompted by concerns about the balance between personal privacy, libel law and press freedom, and also by the failure of the Press Complaints Commission to address persistent libelling by the UK press of the family of Madeline McCann.

It is 167 pages long and extremely wide-ranging. Besides containing a curiously under-reported allegation that the News of the World obscured the truth about the extent of illegal phone hacking by its journalists, the Report also considers the hot topic of libel tourism. 

“Libel tourism” describes the practice of claimants (in Scotland “pursuers”) choosing to bring libel suits in jurisdictions more likely to give a favourable result, even if hardly anybody in that particular jurisdiction has read the alleged libel.  Avid readers of Brodies Tech Blog will recall that back in August I discussed how a defamation action against a Dubai newspaper brought by a Dubai property developer regarding business events in Dubai came to be heard in the English High Court.  Libel tourism has become so prevalent that the US Congress is considering legislation to protect their citizens from the enforcement of libel settlements made in foreign jurisdictions. The Report concludes that: “it is a humiliation for our system that the US legislators should feel the need to take steps to protect freedom of speech from what are seen as unreasonable incursions by our courts.”

Secretary of State for Justice Jack Straw’s position a few months ago was that he didn’t see libel tourism as being a problem. However he has had a rethink, and it will now be specifically examined by the Ministry of Justice’s working group on libel. The terms of reference of the group are “to consider whether the law of libel, including the law relating to libel tourism, in England and Wales needs reform, and if so to make recommendations as to solutions.” A full list of members of the working group can be found here.

In stark contract to the Select Committee of MPs which produced the report, the working group is composed largely of newspaper editors and lawyers. Media law consultant David Banks is involved in the working group and reported on his blog at the start of the year that it was scheduled to meet 3 times in January, February and March, before reporting its recommendations to Jack Straw by mid-March.

It will be interesting to see how the recommendations of the working group compare to the recommendations of the Report.

Sony and the phantom 29th of February 2010 – why date compliance clauses are still relevant

It appears that Sony has been hit by a Y2K bug style programming error, which brought down its PlayStation Network online gaming platform. According to reports, the PSN thought that 2010 was a leap year, causing millions of PS3 consoles to crash and reset their internal clocks to 1 January 2000, and no doubt some red faces at Sony HQ. Oops!

As Douglas has previously mentioned, it’s still worth including a date compliance clause in your contract.

When suppliers see a Y2K style date compliance clause, they tend to act surprised, make a joke about 1999, and then tell you that it is unnnecessary and over the top. But, as this story goes to show, new software date processing errors do continue to happen from time to time, and when they do they can cause havoc.

Amusingly, there was no excuse for this error, as the PSN didn’t even come into being until 2006. Have we now reached a point where the programmers working on cutting edge projects are too young to remember Y2K?

Twitter: @BrodiesTechBlog feed

March 2010
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