Archive for June, 2011

All change at the Assembly Rooms – but what happens to the brand?

I see that the City of Edinburgh Council has announced a new operator for the historic Assembly Rooms on George Street.

For those not familiar with the background to this story, the Assembly Rooms is one of the big venues for the Edinburgh Fringe Festival, and is currently undergoing major renovations. As part of the project, the Council put out to tender the right to operate a venue at the Assembly Rooms during the Edinburgh Fringe Festival.

From next year, the venue will be run by a company called Salt n Sauce Promotions* – better known for running The Stand comedy clubs in Glasgow and Edinburgh.

Why is this interesting?
Well, for the past 30 odd years, the Assembly Rooms has been the home of a competitor of The Stand, Assembly Theatre Ltd – which has traded under the shortened name “Assembly”. Assembly was the first promoter to hold events at the Assembly Rooms, and has since expanded to run a number of other Fringe venues under the Assembly brand – such as Assembly George Square and Assembly Hall (a Church of Scotland building on The Mound and, coincidentally, the home of the General Assembly of the Church of Scotland).

From next year it will be someone else that will be promoting comedy, theatre and other events at the Assembly Rooms.

But guess who has applied for a registered trade mark for the mark “Assembly”? That’s right, Assembly.

So what will happen?
Interestingly, the trade mark application (dated Dec 2009) is currently marked as opposed. It’s not clear what the grounds of opposition are, or who is opposing it, but if the application is successful then it could stop the new operator of the Assembly Rooms prominently using the word “Assembly”, even though the operator called “Assembly” no longer promotes shows there (are you still with me?).

Just to further confuse matters, articles celebrating the 30th anniversary of the “Assembly Rooms” show that the venue and its former operator are very much entwined in the mind of the public (this is unsurprising; there has only been one operator), which means that even if the trade mark application isn’t successful then Assembly might still argue that it has goodwill in the word, and that prominent use of “Assembly” by Salt n Sauce is passing off.

I wonder whether the Council’s contracts with Assembly reserved the IP and goodwill in the “Assembly” brand, or deal with some form of co-existence? If they didn’t, and the new operator is unable to fully exploit the goodwill in the venue’s name, then one suspects that the rental value will be much lower than it would have been had the new operator been entitled to trade under “Assembly”.

It shows the importance of ensuring the IP is considered in all commercial arrangements, even in such mundane things as property leases.

Given all this, it will be interesting to see how Salt n Sauce will brand its new venue – Stand @ The Assembly Rooms makes it sound like they forgot to order enough chairs.

*Salt n sauce is what Edinburgh people like on their chips. The “sauce” is an odd concoction of brown sauce and vinegar. I prefer just salt and vinegar.

Article in B2B Marketing magazine on legal issues and apps development

I have an article in this month’s B2B Marketing magazine. The article looks at some of the legal issues to bear in mind when developing apps for platforms such as iOS, Android, and Blackberry.

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?

Do you fancy paying 10% tax? – Patent box proposals published

Do you fancy paying 10% tax?

Assuming the answer is “yes” then there are two options. You could move to Hong Kong, or you could investigate the new “patent box” tax proposal from the UK Government.

Before you get too excited the patent box proposal is only at consultation stage, and is unlikely to become law before 1 April 2013.

However, if it becomes law then it will provide significant tax breaks for businesses that have patent based income. Here is a link to the consultation paper.

From my perspective here are the key points:

  • It applies to patent protection and plant breeders’ rights (a fairly obscure IPR), but not to other forms of IP protection such as copyright.
  • The 10% tax doesn’t apply to turnover, or profit, but rather is restricted to profit that is derived from the relevant patent.
  • Profit derived from the patent means any profit over and above the “standard margin” of 15% (!!!!).
  • The proposed regime is separate from, and will be in addition to, the R&D tax credit scheme (which is already fairly widely used, and which is being expanded).

I think the proposals are good news for UK business, and are absolutely excellent news if you are a patent attorney or a tax accountant.

I know from talking to SMEs that many doubt the value of patent protection.  The theory is that a patent gives you a monopoly over your invention for about 20 years. However, they are becoming increasingly the domain of huge corporations because it can be hard (expensive) to enforce your patent, and conversely quite easy for somebody who is throwing enough money at the litigation to burst your patent. Hopefully the patent box will make patents a more obviously worthwhile investment for SMEs.

So what do you do now?

The consultation document is a fairly difficult read, and unless you are a in technology heavy industry, or an accountant, I suggest you don’t wade in right now.

Brodies (meaning me) is responding on a few of its questions.

So the short answer is “Watch this space”. We will write updates on the patent box when the proposals are more mature.

In the meantime dream of 10% tax.


Soutwark v. IBM – New Article in Supply Management

I have an article about the recent Southwark v. IBM case in this month’s edition of Supply Management. Its good reading if you ever buy or sell software (especially in relation to the public sector).

Here is a link to the on-line version.

Supply Management is the journal of the Chartered institute of Purchase and Supply (CIPS) – it is typically read by procurement professionals (and the odd lawyer).

By the way I much prefer the five-year old photo below to the much newer photo used by Supply Management. Time and tide has not been that kind to me, and yes it was me who ate all the pies.

Happy reading.

Father Ted: Dinner sinners

I grew up in a busy Irish household and there were always loads of priests popping in. Most of them were hilarious. There was Father Morris, who was crazy about horseracing, there was Father Bonner, who liked to try out sports cars by “giving them the ton” (driving them in excess of 100 miles per hour), and a very glamorous priest who wore shades – even at night time. It turned out that “Father Orbison”, as we referred to him, had glaucoma (or so he said).

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”

Data protection – it’s not just about encrypting laptops and the cloud

I know that Douglas thinks that data protection is boring, but a press release from the ICO earlier today provides a timely reminder that data protection is about more than just stolen laptops and CDs, Web 2.0 and data going missing in the cloud.

Whilst no fine has been imposed by the ICO, the latest undertaking to be given by a data controller to the ICO relates to the good old fashioned theft of papers containing sensitive personal data from the “unlocked” bag of a home support worker at North Lanarkshire Council.

Following an investigation, the ICO found that the Council’s procedures and staff guidance were indequate.

Ken MacDonald, the Assistant Commissioner for Scotland said:

Organisations have a responsibility to make sure that any personal information used by their workers outside of the office remains secure. It is never acceptable for papers containing sensitive personal information to be left in an unlocked bag without necessary precautions. The council’s guidance on the handling of this type of information was inadequate and failed to advise staff on the best means of keeping information safe.

The undertaking emphasises the importance of ensuring that appropriate procedures in place to deal with the removal of files and paperwork from the office, and off-site working.

Whilst I’m not sure how much difference a lock on the bag would have made (in my experience, these sorts of locks are pretty flimsy and hardly equivalent to the sort of encyrption that the ICO now expects to be installed on laptops), I’m not surprised that the ICO is taking enforcement action in this area. I am constantly amazed at how often you see people openly working on confidential/senstive papers on trains, seemingly oblivious to the fact that their fellow passengers can see and/or (in the case of one lawyer that was dictating a letter across the table from me on the Edinburgh to Glasgow train recently) hear every word.

Dave’s Dabble or The Future of IP? The Hargreaves Report Reviewed

During a recent presentation I found myself referring to “our increasingly knowledge based economy” with a smile, because I was aware that phrases such as “knowledge based economy” still sounds like something Del Boy Trotter might say whilst trying to flog you some digital watches.

However, the truth of the matter is that creative, digital and information technology industries are amongst the biggest contributors to the UK economy in terms of employment and exports. In November 2010 Prime Minister David “call me Dave” Cameron commissioned Professor Ian Hargreaves of Cardiff University to carry out an independent review of “intellectual property and growth”.

Entitled Digital Opportunity, the report was published on Wednesday, and mostly contains commendable and commonsense suggestions.

For example, the Professor recommends that a “digital copyright exchange” should be established to make licensing transactions as straightforward as possible, and that a switch to the wider US law understanding of “fair use” should be resisted (save for works of parody).

I found the chapters on patents a bit more difficult to wholeheartedly agree with, because the “patent thickets” which the report criticises (where a particular technology is beset by overlapping patent claims) are sometimes an unavoidable result of important research by competing parties. Furthermore, calls for a unified EU approach to patent litigation already look out of date, given that the Court of Justice of the European Union ruled decisively against a unified patent-litigation system just two months ago.

Personally, the part of the report which really struck a chord was in relation to design rights – in my opinion a fairly confusing and frankly unhelpful area of the law. I was pleased to see Professor Hargreaves refer to the current design rights regime as a “patchwork”. While his reference to “polymer fabrication through 3D printing” (I paraphrase) may well be a dreaded case of name dropping a trendy technology which then instantly becomes obsolete, I nevertheless applaud his sentiment that a big overhaul of design right is needed, and the UK Intellectual Property Office should conduct an evidence-based assessment of the relationship between design rights and innovation.

So, overall it’s a thumbs up for Professor Hargreaves. However, all these changes he’s recommending are going to require pretty unconditional support from the government. Does David Cameron genuinely have the inclination? Back in November the commission was derided as Dave’s “Google Report”, so it’s now up to him to prove that he wasn’t just flirting with change.


Twitter: @BrodiesTechBlog feed

June 2011
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