Digital Revenue and New Media Technology Law

Gingell 2.0

2011-02-21T14:41:00.000Z

A new year and a new me..... Gingell 2.0

After 5+ years of private practice with Foot Anstey I am leaving on the 25th of February to take up the position of Head of Legal Affairs at the Mike Burton Group.

As such my blog will be taking a break whilst things re-focus and I would like to thank all those who have contributed over the last few years.

Wishing you all the best for 2011 and beyond.

Social Media in Regulated Sectors

2010-12-23T15:55:00.000Z

An article I wrote for Money Marketing magazine, first published on 9th December 2010:

Much is being written about the potential rewards of social media, but after some high-profile PR slip-ups, many are addressing the risks associated with business and employee participation in social media, particularly if you operate in regulated sectors. The first complaint that refers to a firm’s Twitter messages or Facebook page may not yet have hit the headlines but it cannot be too far away.

In a business context, social media is a communication tool that helps with conversations between a business and individuals who may or may not be customers, so it can be a promotional and a customer relationship management tool. The potential for communicating with new audiences is huge, particularly for a service sector such as IFAs where this relatively low-cost medium is a great opportunity to communicate quickly and cheaply with previously difficult to reach potential customers

The FSA has stated its rules and guidance apply in a way that is “media-neutral”, so the rules will apply to mobile phone apps and any future new media as they do to more traditional methods of communication. Issues of risk must be covered and the overall principle of “fair, clear and not misleading” applies.

All businesses need to bear in mind that characteristics of social media platforms can serve to increase risk if not managed correctly. These multipliers include immediacy of communication, the viral nature of the platforms, transparency and ability to search for conversations and the global and open nature of the communications.

On Twitter, for example, you can only message in 140 characters or fewer. Does this give you sufficient space to cover all issues? If you retweet a message from a bank’s social media profile about its new mortgage product, are you recommending that product, or do you even have space to make it clear you are not?

With increasing complexity and particularly searchability of social media, users need to realise these communications, although perhaps not designed for wider public viewing, often end up that way. Tweeting is quicker and more casual than sending an email but has a potentially wider audience and can present greater risks.

If the potential rewards of social media for IFA businesses are to be fully realised, these risks must be managed through a combination of empowering the right people within the business, training these people to appreciate the risk points and the etiquette, putting in place internal and external procedures for problem management and if you are outsourcing these services to a third party, make sure your have robust and clear terms in place.

My top tip before jumping into the social media melee is to take a step back and set clear objectives about what you want to achieve. This will allow you to determine if the time investment required and increased risk represent a good deal for your business.

Which is King - Data or Content?

2010-12-10T16:14:00.000Z

~~Content~~ Data is King?

The saying used to be that 'content is king' in the media industry. Content is of course important, but has it's throne been taken by data that is generated by users and readers of that content?

Image: jscreationzs / FreeDigitalPhotos.net

In a previous post "Data is the new Oil" I mentioned that social media platforms and profiles are a goldmine of data for an advertiser or a business undertaking research. Users input their preferences, likes and other habitual comments all of which is valuable data to an advertiser. This may even extend to a users location on platforms like Foursquare and Gowalla.

Obviously, this data has a value and will be exploited by the platforms that collect it (that is the basis on which they provide users with a "free" service) but this will stir emotions with the users who provide the data - think Facebook and privacy settings.

With the value of data apparent and on the edge of mass exploitation, the battle lines will be drawn to protect these assets.

These battles will be between the platforms that collect and commercialise data with others that look to exploit it without being part of their revenue model. There may also be civil wars between apps for platforms where data is being extracted at no cost via APIs.

Whether copyright or database right will be the WMD of choice in battle remains to be seen and a number of questions have been recently referred to the European Court of Justice to clarify the legal protection for databases. The case is: FOOTBALL DATACO LTD & 5 ORS v (1) YAHOO! UK LTD (2) STAN JAMES (ABINGDON) LTD (3) STAN JAMES PLC (4) ENETPULSE APS (2010)

I have speculated why people (including myself) provide all this valuable data to these platforms. My view is that they provide it so that we can create content, interact with content (think youtube, pictures of Flickr and Facebook) and utilise a free communication tool. For me, the quality of the content will determine the data that I provide - ie if 'Like' something it will have to be good!

Therefore, content and data can seen to be symbiotic and equally important. Good content will drive data and in return the revenue generated should increase investment in content.

So in summary I think it is fair to say that data (filtered and distilled) is the key to monetising web £2.0 and beyond but that useful data is only generated when people interact with, and generate content.

Traditional media (if there is such a thing anymore) still produces some of the best content in the web space and they are finding that traffic is driven through social media. These organisations look well placed to increase digital revenues by exploiting content and data together.

Outsourcing and Social Media

2010-11-11T17:16:00.000Z

Outsourcing of business processes and activities can cut costs, spread risk and allow access to best industry practice. Whatever the business motivation or objective there are number of key considerations, not all of them contractual.

Typically IT services and Customer Service centres have been the first to be outsourced but now there are a new breed of real-time web based services that are being handed over to third party providers.

One of the most interesting of these services being outsourced is a business’ Social Media communication.

Social Media is in essence a communication tool that facilitates conversations between a business (or its employees) and individuals who may or may not be customers. In that respect social media can be seen to be a Customer Relationship Management (CRM) tool.

If a business outsources social media and allows the service provider to communicate with customers and potential customers on its behalf, it is trusting the supplier with both the reputation and voice of the company. This creates to challenge of how to extend your corporate voice, and even corporate culture to a third party service provider?

Setting boundaries and communication guidelines for the provider will assist but I suspect ‘due diligence’ in relation to corporate values or culture will be much more important than the traditional commercial due diligence. Perhaps appointing a provider with similar corporate values/culture training should be the primary criteria with joint training and recruitment a close second.

The other uncertainty is how you cost such an arrangement and measure its success. Key performance indicators and usage models are used but more frequently the question is being asked should charges be focussed on defined outcomes rather than quantifiable usage. Obviously, defined service levels and outcomes can be difficult in the social media context particularly if the platform is discontinued or unavailable. Twitter often crashes (and displays the ‘Twitter whale’) when it is over capacity – this would play havoc with defined response times using that medium.

Whilst it may seem pessimistic to discuss it at the outset, exit is still one of the most important contractual areas in outsourcing. For example, do you receive the username and passwords for the social media profile on exit and will there be an automatic transfer of the outsourcing providers employees on migration to a second generation supplier? Such an event could easily happen under employment law.

Behind the scenes outsourcing is all about relationships, managing change and commitment to making it work. The really successful ones work as a partnership with continuous communication – the agreement should set the expectations and understandings out clearly. Of course, there will be a terms to apportion risk and set out who is responsible for what, but there is a wider commercial and brand alignment picture that can not be ignored in the online world.

Copyright, the Prime Minister and Likeminds

2010-11-05T15:32:00.000Z

This time last week I was attending the Likeminds conference concerning creativity and curation during the digital age. Andrew Dubber was speaking and giving a rousing call to change copyright laws to prevent hoarding of works without publication and to create an online digital archive. A 'use it or lose it' kind of approach with a central repository for the greater good. It was difficult to disagree with the majority of his argument and made me consider "licences of right" that can be granted under design and patent laws if they are not used. The problem with copyright in the UK is that it is created automatically without the need for registration - administering such a scheme would be a huge burden.

Image: Nicholas Tarling / FreeDigitalPhotos.net

Then on Thursday Prime Minister, David Cameron, announced (as reported on the BBC website) that

"... I can announce today that we are reviewing our IP laws, to see if we can make them fit for the Internet age. I want to encourage the sort of creative innovation that exists in America."

This is a positive statement and I agree that the UK must increase its innovation economy but I don't think that simply changing IP laws is enough. The UK needs to create the right mentality, financial incentives, working environment and support networks to foster not just innovation but entrepreneurship.

In relation to Copyright my view is similar to Laurence Kaye's who says that the current copyright regime is 'fit for purpose'. He adds that we need technology solutions rather than changes to the law to enable quick and cost effective clearance searches and licensing.

It seems to me that to facilitate such a solution we would need a system of registration or perhaps "tagging" for digital copyright works that could have a searchable database. This would also allow a system of "licences of right" to be implemented for copyright. My view is that we need a mixture of technological and legislative developments to make Intellectual Property laws not just fit for the Internet but for all digital platforms such as mobile apps.

This is going to be a tricky balancing act for the government with numerous competing interests and a new generation of consumers who are undergoing a psychological shift in attitude to copyright piracy. I also think that any changes will need to be global rather than UK specific. There is little point in changing UK laws if any start up company can not take advantage of this change in the global market.

I am watching this space carefully as any radical change in IP laws would hopefully create a flood of new and exciting start ups.

Viral Marketing - the boring legal answer is ....

2010-10-27T20:11:00.000+01:00

There are lots of reasons why viral marketing campaigns do not pass go when it comes to legal. It could be
copyright and trade mark infringement, passing off, defamation or any number of other reasons why the campaign would not get legal sign off.

From March there will be even more reasons for UK legal teams to say no to viral campaigns with the application of the CAP code to online space controlled by a brand including social media communities. At the cornerstone of the code is the requirement that the advertising must be legal, decent and honest. It also states that an advertisement must not mislead or offend.

Can anyone say that some of the more "edgy" viral marketing campaigns would comply with the code?

Obviously every campaign has to be looked at on a case by case basis and if the legal answer is "no" or "don't do it" then this is likely to be technically correct, but is it the commercial answer?

I am not advocating ignoring sound legal advice or breaking laws but there is a bigger commercial picture when it comes to viral and what is needed is participation, understanding and communication between legal and creative from concept on. This will help guide the creative process but also allow the account teams to manage the client's expectations.

Online Brand Protection determined by Return on Investment?

2010-10-01T11:02:00.000+01:00

This week I attended a conference concerning Online Brand Protection. The speakers and panelists where in-house lawyers from some of the biggest brands in the worlds including Coca-Cola, Mars and Cisco.

Image: Boaz Yiftach / FreeDigitalPhotos.net

It was fascinating to hear how some of the most valuable brands in the world protect their assets in the ever expanding digital and online spheres.

One of the main themes I distilled is that most of these brand guardians appreciated that there was, in part, a loss of brand control created by the internet revolution and that there is no way to stop all abuse. I believe this is a shift in attitude concerning how online brand abuse is approached.

The focus for many at the conference was to identify and remedy the brand abuse that is causing damage to the company's bottom line. In effect calculating the return on investment for taking action to remedy online brand abuse as a means of justification and prioritisation. The speaker from MarkMonitor provided some simple equations for calculating lost sales which can be used to show what the financial benefit would be from a successful remedy. If legal action or advice does not add value to a business why is the contract being negotiated or legal action being taken? This is a question I always ask. The calculation of return on investment also allows a business to match the remedy to the damage being done allowing it to take a considered and proportionate action.

The traditional remedies for brand abuse were discussed at length but there were some interesting alternatives being thrown into the frying pan of options. One of the most interesting approaches is being taken by GHD (the hair straightener company) who are attempting to educate consumers about brand abuse and counterfeits via their website and digital presence. They have a counterfeit information page on their website which includes a list of websites selling fakes!

I don't know if this shift in attitude towards online brand abuse and the focus on return is being driven by austerity measures and budget cuts but innovation in technological and PR solutions rather than traditional legal solutions should be encouraged as an extra string to the bow.

One question that does spring to mind is whether it will be easier or more difficult to monitor and remedy brand abuse as we move away from traditional web pages to "Apps"? Will a brand have to participate and use all relevant Apps to monitor abuse?

Advertising Standards will cover Social Media Campaigns!

2010-09-02T20:29:00.000+01:00

All UK advertising agencies, companies and other organisations using social media for advertising take note: from the 1March 2011 the Advertising Standards Authority remit has been extended to include websites and social media!

This means that the UK Code of Non-broadcast Advertising, Sales Promotion and Direct Marketing (Yawn - we know it as the CAP Code for short) will automatically apply to all social media and real time web campaigns.

http://www.freedigitalphotos.net/images/view_photog.php?photogid=851

For me this is the first obstacle faced by the boom in new digital marketing that has grown out of the social media bubble. The CAP code places various very real obligations on advertisers. The most important for me are the obligations not to mislead and to protect children! This begs the question how do you protect children from certain advertising in an open, transparent and viral community? Does there need to be a virtual watershed.....

Keeping the theme of my blog running - the risks caused by the code will be no different to traditional advertising, the only difference being the risks are multiplied because you are advertising without restriction to huge cross sections of the population. Thinking out loud - how would you take down a tweet that offends the CAP code if it is being retweeted by thousands of users? Answers on a postcard....

Before March 2011 all agencies, companies and organisations should be making themselves familiar or refreshing their understanding of the CAP code in the context of social media. Agencies should also be making it clear to their clients that edgy campaigns run the risk of breaching the CAP code. If the agency has full control of the campaign, has it sufficiently excluded CAP code compliance from its T&C's? Conversely, if a company is paying for a campaign have you received a warranty from your agency confirming that the campaign they run will comply. An interesting risk question and I wonder how many organisations have discussed this with their insurers?

A new Outlook for LinkedIn?

2010-07-19T12:28:00.001+01:00

Contact ownership?

It is established law that Outlook and other business contacts can belong to the employer not the employee. One of the main cases on this point is Pennwell Publishing (UK) Ltd and others v Ornstien in which the judge said:

Image: Michal Marcol / FreeDigitalPhotos.net

".........where an address list is contained on Outlook or some similar program which is part of the employer's e-mail system and backed up by the employer or by arrangement made with the employer, the database or list of information ......... will belong to the employer"

So this is pretty certain, right? Well what happens if an employee uses a social network such as LinkedIn to invite contacts to join their network (publicly viewable) using email addresses sucked through from Outlook? See how to do it here

Should these contacts also belong to the employer and has the employee just given away valuable information that is searchable by competitors?

Unsurprisingly there has already been some clarification on this in Hays Specialist Recruitment and others v Ions [2008] that case said that because the contacts had been migrated to the social network and invitations had been accepted the information could no longer be considered confidential. Such a breach of confidence may be actionable but would the employee be worth suing?

Interestingly, in the ' Hays' case Ions argued that he had been encouraged to join the social network by his employer.

Comment: if you want your employees to engage in social networking on behalf of the business under what circumstances may this occur. Do their employment contracts and policies make clear who owns the contacts (as well as the profiles) and where they can be used? This is particularly poignant for recruitment agencies and sales teams where contacts are very valuable.

Even if the confidentiality of contacts is preserved social networks such as LinkedIn make it easier to reconnect as a former employee can simply search and reconnect for contacts. Where this is the case breach of a restrictive covenant may be a more valuable action although often not practical.

Restrictive covenants and LinkedIn

Social Media platforms have very powerful search functionality and with certain applications allow companies to trend sentiment towards their business and brands. The open and searchable nature of social networks makes this analysis possible and led me to think what other uses could be made of these tools.

The one that stuck in mind was monitoring restrictive covenants. Many employees (including lawyers) will have restrictive covenants in their contracts, for example the employee shall not:

".....solicit or endeavour to entice away from the Company the business or custom of a customer with a view to providing goods or services to that customer in competition with the business of the Company......." (PLC)

What better way to monitor compliance with such a clause than searching social media networks and in particular LinkedIn? Status updates and lists of connections could be used to both monitor and prove breach of such restrictions. The options available to an employer who discovers a problem will always be situation specific......but finding and proving a problem could be easier.

The searchability of Social Networks leads me the believe that Social Media is leading to more monitoring and consequently a "big brother" information society? Who needs CCTV when you have social media?

"Opting In for Privacy " for Location Based Social Networking?

2010-07-14T12:58:00.000+01:00

Image: graur razvan ionut / FreeDigitalPhotos.net

Location based social networking apps and sites such as Gowalla, Foursquare and Google Lattitude allow the tracking of an individuals location via mobile communication devices. This augmented information has the potential to be very valuable by profiling and targeting consumer behaviour, but to me also raises questions about privacy and data protection that have yet to be answered. I have had a quick read of the rerespective privacy policies.

Gowalla's privacy policy states:

"To provide Gowalla, we collect, maintain, use, and display your personal data and the geographic location of your mobile device (we call this location fix of your mobile device “location information”)."

I don't have a problem with the collection and use of this information per se, particularly when it is required to provide a service that the user has opted to use. Moreover, both Gowalla and Foursquare allow the user to set privacy settings to control the publication of their personal data. However, there are some exceptions to where privacy can be controlled with one of the most notable being stated in Foursquare's privacy policy:

"While the Service does allow you to note your location at restaurants, bars, stores (and so) throughout your community, at no time does Foursquare ask you to provide your home address. You should be aware that if you or your friends add your home as a new venue in the Service database and that information is published on the Service (for example, via a user checking in to that home venue), that information may be published by third parties without our control."

So it seems that certain personal information can be published without control via privacy settings. Does this breach the Human Rights Act Art 8 which 'provides a right to respect for one's "private and family life, his home and his correspondence. (Ref Wikipedia)".

The main question I want to pose is should users of these sites have a reasonable expectation of privacy? My own thinking is that we are undergoing a cultural shift in attitudes towards data protection and privacy with the understanding that social network services have to be paid for by the users supplying valuable data about themselves that the operators can then levergae. Users making decision that the benefit to them of engaging outweighs their concerns about their data being used.

If these location driven service providers make it clear to me when my information is collected and used and how it might not be controllable then I can make an informed decision as to whether I opt in and participate. That said I wonder how may people read the privacy policies before signing up.

The moral of the story is to think carefully about privacy settings, privacy issues and (like life in general )who your friends are.

For the businesses providing the services I think more could be done to bring these issues to the notice of users when they are signing up. Does an "I agree to the terms and conditions and privacy policy" check box cut it when they are dealing with locational data?

It is of course a matter of fine balance between making it simple to sign up and giving clear information on privacy and data protection that people of all ages can digest.

Watch this space for the first privacy story to break.

Casual Tweets Cost ......Lots!

2010-06-28T17:03:00.000+01:00

In an update to my post on social media risk multipliers it seems that the "Casual" and "Open" nature of real time web interaction are the key multipliers that gets both individuals and organisations into trouble.

( Image: Chris Sharp / FreeDigitalPhotos.net )

Having reviewed a number of the high profile Twitter and Facebook mistakes it is clear that real time web 'slip ups' are not restricted to one sector of society. Private individuals, celebs, employees, businesses and even local councillors have all run into hot water using this transparent and casual communication medium.

For example:

1.Celebrities

As reported in the Guardian, Chris Evans recently had to apologise for retweeting a joke about poverty in Africa. Evans is quoted as saying he "had not read it properly" before retweeting. It is this split second decision to re-tweet with properly reading or thinking that caused Evans' embarrassment.

Think: how many times have you re-tweeted without looking at the link in the original tweet. What if it were pornographic?

On this topic, I can see link hijacking as a growing problem and trend.

2. Brands

Habitat is probably the best known example of a brand having a social media PR problem. The story goes that an intern casually promoted habitat products via a hashtag discussing the Iranian election. This resulted in negative PR and a twitter backlash.

Think: how many times do you use a hashtag without looking at the conversation that it is being used for?

3. Employees

As reported by the BBC, Vigrin Atlantic sacked 13 staff for calling passengers as "Chavs" on facebook. No doubt the social side of Facebook led to these employees communicating with their guard down.

Think: how many times do you interact on facebook and how many people can see those updates and posts? How will your personal thoughts reflect on you and your business?

4. Businesses

Businesses often discuss new client wins or client work to show off their credentials and as part of their PR strategies, but they do so via the real time web at alarming speed and often without sanction from a client.

Conversely, I have seen businesses get into trouble for their staff tweeting opinions and promoting content that is contrary to the interest of their clients. They have done this without thinking and again it comes back to the casual nature of the RTW.

Think: what will my client think if they see this post/tweet/status update. Can I afford to upset them?

Don't forget clients will be trending their names and sectors!

5. Political Animals

Stuart McLennan was the labour candidate who was sacked after making casual remarks using twitter. He is quoted as describing old people as "coffin dodgers" and obviously didn't realise or was relaxed about his informal comments.

Think: are my comments appropriate, they will be published to the world.

Whilst I can't confess to have discussed these issues personally with the parties involved it appears from the reports that casual and open communication has cost jobs, careers, brand image and trust.

For me the key is to only tweet, post, like, retweet or interact in a way that you do not mind the rest of the world knowing about.

However, whilst we can think, plan, trend and create policies and strategies to manage and prevent these situations, nothing prepares you for a disgruntled employee. For example Vodafone apologised to its followers after a tweet was sent from its account saying "VodafoneUK is fed up of dirty homo's and is going after beaver".

How would you manage such a situation?

"Data is the new Oil"

2010-06-16T12:05:00.003+01:00

I was following a twitter stream from the Future of Digital Marketing conference using #fodm at which Gerd Leonhard talked about Data as being 'the new oil'.

This analogy struck a chord with me as many of my clients who generate significant digital revenue view their data and databases as their prize assets. Continuing Gerd's analogy with some thoughts of my own:

Most data starts life as a crude mass but similarly to oil, Data can be refined and distilled to create a multitude of products and resources. Oil can be used in this way because of its diverse hydrocarbon structure and it is no different to data. Having a database structure that is robust, diverse and flexible enough to be used for various purposes is a must.

Refined and reliable data normally means there are more opportunities to exploit the data, leverage existing revenue streams, enter into collaborative arrangements and means that the data and databases are more coveted and thus more valuable.

However, similar to oil there are safety concerns and avoiding leaks will be key.

Ownership - who owns the data and the database rights from which digital revenue is derived? Who has a right to extract the data and who has a right to refine it? Buying any new data reserve requires careful surveys!

Leakages - does the data contain personal data? what happens if there is a data spill? who pays for the clear up? do you have consent to use the data in the way you intend? would you lose your competitive advantage if your competitors had the same data?

Back up - back up and business continuity plans for data access and data provision are critical. Particularly if you rely on third parties to extract or refine the data for you.

There is the start of a "data rush" at the moment with a great deal of data mining and prospecting. Three of the greatest data reserves have been discovered Twitter, Facebook and Google, but I believe only a small percentage of the value of these reserves has been exploited. I expect with the move to the Internet of things that the tap to these reserves and others will be fully open.

7 Sins of Social Media

2010-02-24T22:00:00.009Z

Reflecting on some recent social media issues highlighted in the press and from a recent focus group I attended, I thought I would set out the seven sins of social media. These are mainly reflecting on legally compliant activities but those which are sinful when committed by service company's on the real time wed. Such activities are linked to serious legal and brand risks.

Wrath - Do not send a sarcastic or dismissive reply if your brand is attacked through derogatory comments made via a social media platform. Take a considered and managed response - do not inflame a situation in public. You might be surprised that your brand advocates will come to your defence.

Sloth - replying slowly to service complaints sent via the social web is a sin. The immediacy of the interaction is causing a shift in consumer expectations. Even a quick "we will look into that for you" is better than nothing.

Pride - never so apt was the saying "pride comes before a fall" with social media. I have seen many businesses become over confident (or oblivious to the risks) that they stop thinking sensibly when they have a small success. This can often set up a brand for a fall so thinking objectively and keeping to structure plans and policies is key.

Lust - hard selling or lusting after people's business via social media is for many unwelcome and against the ethos of web 2.0. Focused advertising may be the price we pay for free services but any hard sales push is likely to lose a brand some followers or fans.

Envy - treating other brands in the way you would like your brand to be treated. Do not have brand envy, or at least not in a public arena.

Gluttony - Having as many contacts and friends may seem like a good idea but there can be friend gluttony. I have heard a story of a businessman that was called up by a journalist as he was a 'friend' of someone via facebook who had been arrested for a pretty serious crime. The 'friend' was only a vague acquaintance also from the business community.

Greed - don't get greedy and try to monetise an offering or services too early. There will simply be no adoption. The real time web is all about participation and collaboration and is almost anti greed.

In addition to avoiding these sins I would add to two tips:

1) Don't have conversations or Tweet when a client is expecting a deliverable from you.

2) Don't Tweet about your clients without them knowing about it. They are likely to be trending their brand and will pick up on it.

Avoiding these sins is relatively straight forward and one of the key pointers is to consider the real time web, and in particular social media, as a customer relationship tool rather than a marketing or business development tool. (Thanks to Olivier Blanchard aka the brandbuilder for that one).

For me, Proper Platform Etiquette (PPE) training and guidelines are as important as awareness of some of the legal implications for businesses and employees.

Although, a recent survey by leading e-moderator, Tempero, showed that 81% of organisations rate their knowledge of social media marketing law as limited or non-existent

What a knowledge gap!

A Social Media Bubble - Web £2.0

2010-01-27T21:05:00.004Z

The more I think about it the more the current social media buzz and pre-revenue investment activity has worrying parallels to the dot.com bubble bursting. Add to that businesses spending time and resource on social media without a strategy or purpose and I think there is potential for another burst.

Many businesses including Twitter (don't forget it is a business) have operated for substantial times with huge net loss to gain market share. Large scale investments (Twitter are rumoured to have received $55m in investment) in pre-revenue Internet businesses to gain market share was one of the main pre-cursors to the dot.com bubble bursting and I believe that many social media start ups and service providers who are pre-revenue are precariously placed.

Look at video streaming start up Floobs, great name and great service but they are rumoured to be filing for bankruptcy despite signing up major Spanish football clubs.

There is also momentum towards paid for content on the web, which will inevitably have an impact on social media. The NY Times becomes the latest news and media company to start charging for content - showing that monetisation is critical to the future of web 2.0. Moreover, the Mirror becomes the latest newspaper has recently blocked a news aggregator from linking to its site and it is all about protecting revenue.

In addition organisations are re-thinking what they allow people to access via their networks. For example Oxford Uni bans Spotify from its network. This will not please the owners (or investors) who rely on advertising to fund the royalty licences to make the service legal.

So if Twitter fails to sufficiently monetise without alienating all of its dedicated users then this may be the tipping point for another .com decline. There are also other signs of a bubble under pressure: ebay sales are in decline: google is facing challenges on its Adwords platform in the ECJ and Twitter user registration growth has a slight dip.

The push must be to monetize web 2.0 so that the platforms we know and love are maintained and innovation is fostered and keeps developing.

Monetisation and revenue protection is critical to the maintenance of Web 2.0 and the move to Web 3.0 and the Internet of things. Which is why I am coining the phrase Web£2.0 or Web $2.0.

Social Media Service Levels

2010-01-20T16:27:00.002Z

Today twitter was unavailable for a noticeable amount of time simply diverting users to a whale saying "Over Capacity"

The fact that the service was unavailable for a period of time actually trended on the site immediately after under the hashtag #whentwitterwasdown.

This made me think of service levels and in particualr uptime availability for certain software applications. Twitter is imminently about to commercialise its service and for me this changes the relationship with its users with regard to the level of service expected.

Should there be guaranteed uptimes for example. If a business relies on social media services, particularly online marketing firms what service levels do they promise their clients and is this reflected in the levels provided by Social Media Platforms.

Moreover, if you are an advertiser who has paid for prime time social media exposure and the service is unavailable what is your remedy. If there are no service levels then there is no remedy for the downtime. Normally service credits are offered but is this really good enough compensation?

Continuity and availability are the key for most businesses that rely on software as a service provided via the Internet. Of which Twitter and Facebook are two such examples.

Social Media to co-ordinate class legal actions?

2010-01-07T12:35:00.002Z

This week I have been thinking about social media in the legal services arena.

Whilst the parallels and opportunities for an intellectual property and IT lawyer such as myself are easy to identify there are so many areas of law such as litigation where the opportunities of social media are lost on many.

For example one of the most lucrative areas for law firms is advising and prosecuting class action litigation or "class suit" litigation in the US and I think social media could transform this area.

Wikepedia sums up class actions more succinctly here but it means suing on behalf of a number of people who have been wronged in the same way by the same defendant. Or they all have the same complaint of the same defendant which has caused them loss. The coal miners in the UK is one example of class action with 30,000 claimants suing the government.

Firstly, social media could be used by law firms to identify claimants who have similar complaints thus creating the class and increasing the number of clients it is representing. This could be facilitated by setting up groups on facebook or using trending applications in twitter to identify people having conversations about similar problems.

Secondly, social media could be a way of disseminating non-confidential updates or case progress to a large number of people in a collaborative way. As a by-product a group of claimants on a social media platform may have the effect of acting as a support group for like minded people who have suffered the same loss or damage.

There will of course be risks with this kind of transparency but various social media platforms allow for different levels of accessibility although management of these could be burdensome.

Interesting times.

IP Threats eroded by Social Media?

2009-12-18T16:18:00.007Z

I recently had a fascinating chat with a contact of mine (obviously unnamed and not a client) regarding the possibility of trade mark infringement. They had identified a third party registered trade mark with prior rights in the name they have started using but felt the services/goods they were supplying were not competitive with or detrimental to the distinctive nature of the existing mark, despite overlapping in classes. Nothing new so far.....

We chatted some more about the risks of opposition and infringement but my contact was relatively relaxed. The reason for this relaxed state of mind to what is normally a brand crunch point was social media. Social Media I hear you ask? Yes, my contact believed that if things got "heavy" (meaning litigation) they would start a social media campaign to gain support and PR for their plight, thus exerting pressure on the existing rights owner to give in to permit co-existence or better.

Of course if there were an injunction granted by the prior rights owner it would be a criminal offence not to comply but that injunction would and could not apply to all the users of Twitter for example.

This lead me on to thinking about the Trafigura case which has been seen as a 'PR own goal' by many. To paraphrase; Trafigura issued a superinjunction preventing reporting of a question in parliament. The Guardian newspaper complied with this injunction but a leak created an enormous amount of chatter via social networks and trended for several days on Twitter. This was the exact opposite of the intention of the superinjunction.

So what next should competing brands use social media as a defence to trade mark infringement. I would suggest this is dangerous ploy because there are so many unknowns and such an action could exaggerate any damage to the existing rights owner. Of course such a movement could only be orchestrated by individuals with large followings or a great deal of social influence. Negotiation a deal both parties can live with is always the best way!

I have so many questions to which as yet have no answers including:

Could influential socialites set up a business or be sponsored to start a campaign to aid a defence;
Should there be a law prohibiting "the incitement of negative PR for commercial benefit" who would police it - it would be very difficult to enforce and who do you enforce it against?;
How will the courts react to this type of activity and how useful will an injunction be given the Trafigura matter.

Fascinating times!

Copyright Hippies

2009-12-18T16:02:00.012Z

Copyright Hippies is the term I am giving to those who share or facilitate illegal file sharing of copyright works such as music, films or books with complete ambivalence.

The P2P generation seems to have had a profound psychological shift in what is acceptable behaviour with regard to copyright works in digital format. Despite attempts to educate and discourage through litigation, illegal music downloads are not decreasing.

Even copyright authors who have profited from these rights such as Jamie Cullum openly admit to illegally downloading music. Albeit to try the music before buying it legally.

Interestingly despite illegal downloads, legitimate purchases in the UK of music singles has increased with the itunes generation.

My reaction to all this is to ask: What is your favourite film? What was the production cost? Do you think this film would have been made if the producer did not think they would make a return on the investment from copyright royalties? My answer is that it probably would not and I have never had a conflicting answer. What is their incentive?

I went to see Avatar before Christmas and it was outstanding but there is no possible way that this could have been made (or rather financed) if copyright hippies were allowed to propagate.

The French government seem to be the most anti-copyright hippie introducing a new law which will allow the disconnection of users from the Internet if they are found to be illegally downloading three times. Enforcement will be the issue here - will this extend to Internet enabled smart phones for example.

For me it is a simple trade off. Respect copyright to ensure the creation of good content. The BBC is good example we pay the licence fee each year but the content we get (I believe) is strong.

I also believe that illegal downloads hurt the film/TV industry much more than the music industry because of the initial investment required. Music will always be made but big budget films may not.

Will copyright hippies stop in the same way as the flower power movement? My guess is that they are here to stay and only a technology solution will lead to copyright yuppies replacing the hippies.

Copyright, Patents and Technology the Pre-Budget implications

2009-12-11T16:40:00.003Z

Well in an active week on my blog I thought I would conclude with some thoughts on Alistair Darling's pre-budget report.

Broadband

The government intends to push ahead with a 50p a month tax on broadband to fund the upgrade to enable super-fast access. Whilst a commitment to faster communications should be applauded will the future be access via wires or will it all be wireless in the ether? I question whether these plans are future proof.

Patents

A lower rate of corporation tax of 10% for income derived from patents was announced. Whilst this is a welcome boast for those who invest in technology and patent applications this will not be introduced until 2013 and is bringing the UK in line with other EU countries. It is a shame the relief does not apply to other IP such as copyright in software (non-gaming) which from my practice seems to be one of the major UK exports. The introduction of this relief is also too slow!

R&D

AD announced that one of the major hurdles to claiming tax relief on R&D expenditure will be abolished. Currently a company has to own all IP deriving from R&D before the relief can be claimed. This is a welcome announcement and should aid much needed collaboration within small to medium high tech businesses which may have been hindered by this test.

To summarise I think there were positives moves in the pre-budget report in relation to IP and technology revenue but I do not think enough to engender a world leading knowledge based economy in the UK, clearly needed to shrug off the effects of one of the worst recessions of modern times.

Social Media Risk Management

2009-12-09T17:58:00.010Z

Social Media Risk Management (3 of 3)

In my previous two posts I have identified a number of risks concerning business participation in social media as well as the factors that exaggerate these risks.

As financial return on investment seems to be difficult to ascertain with any accuracy it is difficult to determine whether a risk is worth taking. Therefore, it is important to mitigate risks as much as possible.

As with all business risks they can normally be:

1. Managed - terms and conditions, including disclaimers, can assist in managing risk. In a recent case a disclaimer on a website excluded liability when a visitor to the site tried to rely on content published on that site to sue its operators. Arguably the same will apply to a disclaimer on a Twitterback for example. Following Social Media etiquette is also key to managing risk.

2. Insured - it may be possible to insure risks associated with Social Media. I am not qualified to advise on insurance coverage so would recommend speaking to your broker.

3. Considered and Risk Taken - it may be that if the risks have been discussed and a strategic decision taken to accept them. Given the rapidly changing social media landscape such a decision would need to be under constant review.

4. Ignored - many choose to take the head in the sand approach with risk on the Internet until there is a problem. This will change when some of the legal risks are tested in court.

5. Avoided - Risk training for those who are participating in Social Media on behalf of the business will mean that they should appreciate the risks and more easily spot content that could incur liability. Having an acceptable content and participation policy would also assist participators with avoiding risk.

Every business will be different and should consider the normal risk v reward conundrum. Training and awareness is one way of making this decision easier as well as an appreciation of the technology and its potential.

As the social media landscape changes rapidly (seemingly on a week by week basis) this question will need to be kept under constant review.

My view is that risk can be reduced by a mixture of empowering the right people, disclaiming liability, training them on the risks and setting guidelines (perhaps with example posts of what is and isn't acceptable from the business' point of view) for acceptable participation.

Social Media Business Risks

2009-12-09T12:55:00.014Z

Social Media Business Risks (2 of 3)

Social Media would seem to be affecting the way businesses view risk.

Businesses large and small appear to be participating in social media across numerous platforms without question or hesitation. The potential brand reach and return on investment appears to be blinkering many from the real risks that seem to jump out.

The social media platforms themselves disclaim themselves of liability in their terms and conditions and would rely heavily on the innocent conduit defence.

I have set out below a non-exhaustive list of the most apparent risks that are applicable to a UK business. In my previous post I explained how these risks are exaggerated as a result of Social Media Risk Multipliers.

I initially came up with 30 possible risks but have tried to distill these into general headings. I think that these risks can usefully be split into legal and strategic/commercial risks but the two, of course, are inextricably linked (please feel free to add to this list by leaving comments):

Legal

Contractual - Are your Social Media participators accidentally creating or varying contracts using Social Media - has this been excluded from your terms and conditions?
References and Testimonials - are your Social Media participators providing references or testimonials via Social Media platforms . If so what happens if these are incorrect/negligent and someone relies on them?
Regulated Activity - is your business regulated? - ie are required to comply with Financial Services Legalisation when using SM to promote services?
Product - are your SM participators making unauthorised representations or warranties about products or services that bind your business.
Country Specific Rules - is their legislation in other countries that you might breach if people can access your content or follow you from those countries?
Professional - does the use of SM breach Professional Codes of Conducts - ie for Solicitors is the person participating in SM holding themselves out as a solicitor when they are not?
Data Protection - when you tweet an individuals name or contact details or retweet the same or discuss one of your employees via Social Media does this comply with data protection processing obligations?
Criminal - are your employees discriminating via their tweets or inciting criminal behaviour?
Consumer Protection Legislation - does your Social Media participation fall foul of consumer protection legislation - in particular with respect to misleading advertising. Sometimes all you have is 140 characters of text so it could be easy to mislead.
Ownership - of the profile and the following built up by employees as part of the business - what if the employees leave?
Advertising - do your business tweets or other participation comply with the ASA Codes?
Intellectual Property Infringement- do your Tweets or other content infringe copyright or trademarks? 140 characters can still represent copyright infringement. It is quality not quantity!
Defamation/Privacy - are you staff defaming people or other businesses via social media platforms? Are they breaching a persons right to a privacy?
Breach of Terms and Conditions - Each SM Platform will have its own terms and conditions of use. Does the way your business uses that platform breach those terms?

Strategic

Less my area but the obvious ones are:

Brand Dilution over numerous platforms
Brand degradation- how will your customers react to participation in SM
Off Brand Message being disseminated
Diversion of resources - SM participation is time consuming. Is it diverting resources form other useful activity?
Next SM Platform Syndrome - what next. Twitter is en vogue in the US and UK but will it be the same in two years time? Will Xing acquire LinkedIn or vice versa?
Profile/Brand squatting - is your business name available for a vanity url or otherwise? Did someone beat you to the name?

Given the numerous risks my big three big questions for any business participating in Social Media or putting together a Social Media Strategy are:

Who are you empowering to participate in Social Media on behalf of your business and do they appreciate the risks?
How do you intend to manage risks and risk multipliers?
How are you going to maintain control over content and dissemination?

My next blog will consider what can be done to manage risks. Of course if a risk can be managed it is more likely that a business decision will be made to take that risk.

Intellectual Property & Technology Law: Social Media Risk Multipliers

2009-12-08T16:51:00.000Z

Intellectual Property & Technology Law: Social Media Risk Multipliers

Social Media Risk Multipliers

2009-12-07T20:08:00.020Z

Social Media Risk Multipliers (1 of 3)

Much is written and discussed about the rewards (potential or otherwise) of Social Media and return on investment, but more and more people are asking (as I have done myself) what are the risks to my business if it participates (or rather its employees participate) in social media.

Having considered a number of risks such as copyright infringement, brand dilution, defamation, data protection, misrepresentation, fraud, implied warranties, amongst others (more to follow in my next blog), I consider the business risks to be no different in the social media era to those of the offline and web 1.0 world. In fact I am assured that the same risks were debated at length when email was first introduced. However, social media is different because of factors that exponentially increase risk, which I am coining "Social Media Risk Multipliers".

My working list of Social Media Risk Multipliers includes:

A. Participation - in a move away from one-way dissemination of information in static form, social media allows participation and interaction on an unprecedented scale. The ability to have conversations at all levels is one of the main draws of social media but increases the risks of the wrong brand message being portrayed or misstatements being made.

B. Immediacy - social media is all but instantaneous. This increases the risk of problems being created and compounded quickly. It also makes containing problems once they occur difficult.

C. Viral - any mistake can quickly be reproduced all across the world in a matter of minutes. Consider a defamatory comment made via twitter. If it is published to only a few individuals the damage may be minimal but if this is retweeted by 10 people who in turn retweet the offending tweet, the damage becomes worse with the publication self perpetuating and almost impossible to contain.

D. Openness - Many of the social media interactions on the web are open and public. Moreover, trending software allows monitoring and aggregation of these public posts which means that mistakes are made publicly and are more likely to come to the attention of people that have been wronged. Therefore, the risk of mistakes or wrongs being picked up is higher and evidence will be easier to obtain via trending software.

E. Casual - the vast majority of social media interaction is casual and especially when content limits are as low as 140 characters. I believe that in this relaxed atmosphere employees are more likely to make statements that they would not if they were using the phone or email. Without guidance this increases the risk of customers potentially being misled, mis informed, provided with unauthorised warranties/offers or worse.

F. No Boundaries - Social Media knows no boundaries. Does you Social Media activity comply with local laws in all countries? For example online gambling in the United States is prohibited. Will promotion via social media be illegal in a particular country and can you choose not to target it? Immediate world wide reach increases the risk of breaching laws.

As with all business risks they can normally be:

1. managed;
2. insured;
3. considered and taken;
4. ignored; or
6. avoided,

but is this the case when the Social Media Risk Multipliers are applied?In a later blog I will consider this non exhaustive list further

From a strategic management point of view it is critical (like any new business venture) to understand and appreciate the risks so that a decision can be made as to whether any return on investment from Social Media activity outweighs the risks to your business.

In an interesting dichotomy many of the key benefits and opportunities provided by social media are also the same features that are multiplying the risk to businesses. More than ever risk versus reward needs to be considered!

As a final question regarding business asset risk: if an employee creates a social media profile and uses it to promote the business, who has the right to the profile followers or connections when that employee leaves - or does it matter? The business or the employee? Arguably a social media profile which has a number of brand followers will be a valuable asset to the business in the long term. In fact a twitter profile disseminating news has recently being purchased in the US for a significant sum.

Google Wave - Issues and Opportunities

2009-11-17T17:22:00.003Z

Google Wave - Issues and Opportunities

A colleague of mine, James Goodwin, has been given one of the prized beta log-ins for the Google Wave project. He has very kindly invited me and I have had a play - starting a few waves and pings.

My initial thoughts are that the Wave may replace email as the main mode of communication in businesses. The tag system may also replace the need for a document management system if it is carried out in a systematic way. However, this will create immediacy problems with instant collaboration that was usually reserved for meetings and conference-calls.

I also think there may be copyright issues in relation to instant collaboration on projects. If you are working with a third party on a document or idea using a wave then you are likely to be considered joint authors (if the contribution can not be distinguished) of the work and as such you will be restricted in the autonomy you have over the work created.

The other normal issues of Software as a Service still remain - who back ups your waves? How secure are the waves and what levels of service (ie availability) do you expect.

It will be interesting to see if adoption is fast once full access is rolled out. I believe there will need to be a critical mass of users before the wave pervades the business environment in the same way Twitter is now doing.

The ability to create applications for the Wave will provide businesses with lots of opportunities so, as always, there will be some that adopt early and lead the way.

I guess the wave project is evolving and my comments and opinions are likely to evolve with it. I will try and keep pace and keep playing.

Twitter ID Squatting - What to do if you are a victim

2009-11-11T17:05:00.006Z

Jeffrey L. Cohen has written a clear and concise post on how not to Fall Victim to B2B Twitter Squatting. Click Here.

I have considered what can be done should a business fall victim:

There are two main courses of action available to victims of B2B Twitter Squatting.

Firstly, you can contact Twitter to report a breach of the terms of use. to report an impersonation or you can report trade mark violation.

Secondly, you litigate based on your trade mark or rights of passing off. The first step is to normally to send a cease and desist letter to the owner of the offending Twitter account requesting that they delete or transfer the offending profile and provide undertakings not to do similar in the future.

Finding the impersonator can often be difficult if they hide behind the anonymity afforded by social media but there are options including service via Twitter!

Practically, the reporting route is going to be less expensive than instructing lawyers and may ultimately be more fruitful. Litigation can be even more costly and difficult if the ID squatter is resident in a country where it is difficult to enforce judgements.

However, Twitter et al may ask you to prove that you have rights in the ID name before suspending an account and indeed Twitter asks for the trade mark registration number when complaining of trade mark violation/infringement. The easiest way to show you have rights in a name is to obtain a registered trade mark.

As SM grows and new platforms are used it will be interesting to see if there will be the need be a uniform dispute resolution procedure for SM ID's similar to domain name disputes. Logically, the ID squatters on Twitter et al will try to extort money for the transfer of the profile account.

The moral of the story is, as Jeffrey L. Cohen says, be there first.

I would add that this is especially important if there are other brands or businesses who have equal entitlement to an ID

ie Polo

Think Nestle, Ralph Lauren and Volkswagen.

Software Patent v Copyright

2009-11-05T09:47:00.000Z

Will the rise of the software patent eclipse copyright as the predominant way of protecting and enforcing proprietary rights in software?

This maybe the case in the US where software patents are more easily obtainable but in the EU and particularly the UK there is still substantial resistance to the granting of software patents unless they have a technical effect.

Software patents will probably rise with cloud computing. With applications hosted in a third party server which is accessed by users there is unlikely to be "copying" of a substantial part of the source or object code so copyright will become less important. The patent will become more important because if a rival develops software which falls within the "claims" of a registered patent it will infringe. A patent being a monopoly right.

Copyright will, of course, still be very relevant to the data and content held within and displayed by the software. These will still be capable of being copied and copyright will be still be the right used to enforce.

Patents are expensive to prosecute and will preclude the small software developers from obtaining them particularly when you need a patent in each country you want protection.

Do we need a global software patent to safely protect investment in cloud applications?

Company Names Tribunal - 1 year on

2009-11-03T16:56:00.000Z

One year on and the Company Names Tribunal (CNT), which was set up to provide a remedy against opportunistic company name registrations, has so far been good news for brand owners.

So called opportunistic company name registrations are similar to ‘cyber squatting’ where domain names are registered in the hope that the brand owner will purchase the domain from the squatter.

The same practice occurs in the registration of company names where the squatters try to take advantage of a brand in the hope of extorting some money. The brand owner having to use traditional trade mark and business name remedies to have the offending company struck off or forced to change its name.

The CNT can order these squatters to change the name of their company within a specified time as well as order the payment of costs. This can be a valuable addition to the brand protection arsenal of all companies.

The CNT procedure is a formal legal process initiated with an application made to the CNT. The Company Names Adjudicator will assess evidence submitted, then decide a case and award costs if appropriate.

Out of the 39 cases that have been reported so far, 35 applicants have been successful in requiring squatters to change the company name. The first successful applicant was Coco-Cola but there are numerous smaller corporations who have taken advantage of this useful tool.

However, the scope of remedies is limited to the changing of the name so it will not provide a solution to a company where the infringing company changes its name but continues to use the name as a trading name. This illustrates that merely having a company name registered with Companies House gives few rights in itself and that companies will still have to use trade mark and passing off laws. A registered trade mark giving the strongest rights of all.

If you find a company that you think has a name which is an opportunistic registration then you will need to consider the position carefully. The circumstances in which the CNT will make decisions are limited and there is a cost involved in making the application and also cost penalties if the application is not successful.

There is also the ability to appeal the decisions of the CNT to the High Court with even higher costs implications. Therefore the CNT, whilst a useful alternative to litigation and trade mark infringement action, can be seen as another formal legal process and should be used with caution and under advisement.

That said, given the high percentage of successful applications if used correctly, this is another string to the bow of brand owners to defend their much coveted brands.

Directors liable for infringing patent!

2009-11-03T10:31:00.001Z

Boegli-Gravures SA v (1) Darsail-Asp Ltd (2) Andrei Ivanovich Pyzhov [2009] EWHC 2690

This case is a warning for all directors and shareholders of a company which may be infringing a third party’s intellectual property rights.

This case concerned a patent for embossing foil for packaging. The claimant brought a claim against the company and a director/shareholder of the company on a joint liability basis.

The patent was held to be infringed and that because the director had taken a personal involvement in the act of infringement, outside of his role as a director, that he was jointly liable with the company.

In this case the Defendant had negotiated with the Claimant on a personal level and took the decision to supply the infringing products.

There are two important points to note here:

1) all directors should undertake negotiations on behalf of the company and take important decisions at board level;

2) conversely if bringing infringement action against a company with no assets it may be worth pursuing the directors if they are acting in person and not within the powers given to them by the company.

Windows 7 - Snipping Tool

2009-10-21T14:26:00.003+01:00

Just had a look at the Windows 7 snipping tool via a first review on the BBC website. Looks like a really nice tool to snip a section of a website. Simply select the text and images you want to snip (similar to cropping in picture editors) and your selection is displayed in a separate window to do with as you want. Whilst this is a nice to have tool my view is that this is likely to increase copyright infringement.

Whilst individuals who use the material 'snipped' or copied may be able to rely on a personal use exemption other businesses users may not. An employee may snip a useful article and distribute a modified version within their company. This is likely to
amount to copyright infringement if there is no consent.

Whilst there is nothing currently to stop users from copying the text and images from websites and using it elsewhere the ease of the snipping tool may start a proliferation.

My other thought is: will this affect the image tracking software of the large image banks such as Getty and Corbis. ie Will the snip format prevent them from tracking use of their images?

What are the best ways to prove you came up with the next best idea?

2009-10-20T16:45:00.000+01:00

Traditionally sending a letter to yourself was the best, if not the only, way to demonstrate that you created a copyright work first.

Now there is a new service being offered at http://protected.cc/ which does the same thing but electronically.

But does this assist? My view is that this will be a great help in the U.S where they operate a first to invent system of patent registration. In the UK we operate a first to file policy so for new inventions this does not assist other than to prove the defence of concurrent invention.

This system may help a bit with copyright infringement cases where you are trying to demonstrate that the idea was original at a given point in time. However, it doesn't stop copying but may act as a deterrent to would be infringers.

If there was such a system which helped a person prove that information was imparted in an air of confidentiality this may be very useful given the amount of time that is put into non-disclosure agreements.

Intellectual Property & Technology Law: #LikeMinds Event

2009-10-19T17:34:00.000+01:00

Intellectual Property & Technology Law: #LikeMinds Event

#LikeMinds Event

2009-10-19T17:20:00.003+01:00

I spent Friday afternoon at the first ever LikeMinds event which was set up to discuss return on investment from use of social media.

Follow the conversation on twitter #LikeMinds

A lively event with a mixture of presentations and panel interaction. An engaged audience asked numerous difficult questions of the panel who were being streamed live.

The event was attended by circa 200 people and circa 600 watched online. The only marketing for the event was via social media!!

For me it shows what the power of social media can be if applied correctly and in the right context. Whether it will be ubiquitous in all business sectors such as the notoriously stuffy and private legal industry remains to be seen.

My view is the more transparent the better.

For me Twitter is (at the moment) far more applicable to owner managed businesses who are engaged at the coal face rather than for individual employees with a hierarchical structure.

Controlling the voice of your company can be fraught with danger and one of the morals from Like Minds was to choose your social media champions with care.

Wider protection for Databases?

2008-10-10T15:37:00.002+01:00

The European Court of Justice has, by a recent decision, seemingly given wider protection to the owners of databases.

Databases are big business these days with almost all websites interacting with a database. The European Database Directive was set up to protect these valuable assets based on the existing copyright regime. 'Screen scraping' of website database information is now fairly common and this should assist database owners from protecting their rights.

A person infringes a database right if, without consent, they extract or re-utilise all or a substantial part of the contents of a database. The Directive prevents "extraction" which in this recent decision was interpreted widely. Thus protection can be seen to be wider.

Proving the copying of a database right is always difficult though. There are technical (coding) ways to demonstrate copying but the best and most practical way is to insert "Ghost" (made up) entries or insert deliberate mistakes or grammatical errors that others are unlikely to have made. The chances of two people making the same mistakes and making up the same "Ghost entries" is highly unlikely.

Trade Mark Applications – Faster, Cheaper, More Efficient?

2008-10-10T15:33:00.001+01:00

Since October last year there have been numerous changes to the UK rules the govern UK trade mark applications. On 1 October 2008, the next changes came into force.

The main change is the reduction of the opposition period from three months to two. The opposition period is the time allotted for objections to a trade mark application. For example if a brand owner considers that an application is too similar to theirs they may oppose.

This combined with the option of fast tracking an application could mean that trade mark applications could proceed to registration in 4 months. This is great news for businesses looking to protect their brands, especially if they are rushing to protect a new product prior to launch.

Since October 2007 brand owners and not the trade mark registry must ‘police’ applications that they consider are too similar. Consequently, market vigilance will have to be heightened to ensure that oppositions are actioned sooner.

There is some comfort - where a need to oppose an application is identified, it will be simple and free to extend the period to three months. In addition trade marks can still be revoked or invalidated post registration if you miss the opposition period, but this is more costly and difficult.

An opposition requires formal legal proceedings with cost implications should a party lose. From October there are numerous procedural amendments to this system that are designed to streamline the trade mark tribunal system.

It is best to avoid oppositions by drafting the application correctly at the outset and assessing the risk of an opposition by carrying out searches to identify possible conflicting marks.

From October it will also be critical to get your application in order before you file it because the time period to correct application deficiencies and classification will be reduced to one month. If this is exceeded the application will have to be re-filed and a further application fee incurred.

Nominet DRP gets easier and cheaper....

2008-09-11T17:11:00.005+01:00

Sorry I have been on my hols - now back and blogging away.

Nominet is the registrar for all domains ending in co.uk. They have the power to order transfers of domain names that are in dispute. This is a large amount of power particularly when domain names can be transfered for a great deal of money on the open market. Recently Tell.com sold for around £200,000.

Understanbly, given the potential value of some domians you get disputes over who should be the proper registrant of the domain name. Many organisations have been frustrated by registrants squatting on their domains and turn to the Nominet Dispute Resolution Procedure for assistance. This policy which provides a formal procedure to resolve ownership disputes changed from August 08. To have a domain name transferred a claimant should prove that the registrant has either abused the registration system or abused the use of the domain following registration. (This is different to ICANN, which regulates top level domains where you have to prove both)

The main change since August is the introduction of a summary decision from an expert where there has been no response from a defendant. This costs £200 plus VAT as opposed to the full mediation cost of £750 plus VAT. In addition much of the dispute resolution procedure can now be followed online including the submission of evidence. www.nominet.org.uk/disputes/drs/policyprocedurechanges

Nominet have also clarified point on what amounts to abusive registration including where are domian name is likely to confuse people that a domian is associated with a brand owner or even threatening the same.

These changes are welcome and the clarification reflects the recent cases.

Weak Trade Marks can leave a sour taste

2008-08-01T15:30:00.002+01:00

A recent case (June 2008) has highlighted why you should always assess the strength of your trade mark before enforcing your rights.

Devon County Council were sued for copyright and trade mark infringement by a local businessman. The Businessman had registered "Devonshire Flavour" as a trade mark in relation to certain foods and drinks.

DCC counterclaimed by arguing that the trade mark should not have been registered in the first place and as such was invalid. There argument was that the mark was not distinct as it described the characteristics of the goods that are being supplied under the trade mark. The judge agreed and was particularly damming saying the mark was "hopelessly invalid".

The judge also agreed with the argument that the mark was used by DCC in relation to different goods and services to those registered so that there was no use of the trade mark.

Therefore, the claimant has wasted an application fee for the trade marks and is likely to have a significant costs award against him for losing to DCC.

It shows that you have to think very carefully what mark you are going to use and which classes of goods and services it will be used for.

You may get a trade mark registered but that does not mean it gives you any rights or is enforceable.

Obviously living in Devon this case is of local interest to me and shows the breadth of registrations that a new product or business has to negotiate.

WOW

2008-07-24T11:16:00.002+01:00

Look what I stumbled upon......

Google now has a patent search facility

www.google.com/patents

A central and translatable patent search facility could be very useful for companies developing new technologies to check what already exists.

However this is still a 'beta' version and is not in a position to replace Patent Attorney searches.

In my opinion Google's services just keep improving!

ICANN means YOU CAN!

2008-07-24T09:54:00.003+01:00

On the 26^th June 2008 ICANN (Internet Corporation for Assigned Names and Numbers) decided that it would open up Top Level Domians (TLDs) so that anyone could apply to operate a TLD. In theory you will be able to have nearly anything as a TLD for example a www.xybc.law domain, .firm or .brand.

The expectation is that the first applications will be received in the second quarter of 2009 and the first sunrise periods will occur at the beginning of 2010.

A sunrise period is the period before a new TLD goes live when Trade Mark owners and well established businesses have a preferential rights to purchase a domain name which incorporates that trade mark/name. However, this is still a first come first served basis. Ie Nestle, Volkswagen and Ralph Lauren all want ‘polo’ domain names.

Most commentators are of the view that .com will remain the TLD of choice and is still the best brand for companies. However, new TLDs will mean there will be further similar domains coming into existence and brand owners should look to acquire new domian names for their brands utilising the Sunrise Periods to prevent others from registering them and thus diluting their brands.

I expect you will have read about the much publicised www.narnia.mobi dispute.

Pro-Patent decision a warm welcome.

2008-07-23T16:10:00.002+01:00

The House of Lords has recently passed down a decision that will help UK patent owners. The case has given guidelines on the test for obviousness when the validity of a patent is being attacked.

A quick recap: in the UK something is patentable if it is novel, has an inventive step (ie it is not obvious), is capable of industrial application and is not excluded by law (ie discoveries or games)

In nearly all claims of patent (or other intellectual property for that matter) infringement the defendant will always counter claim with an attack on the validity of a patent. There argument will be that the patent is not new because of the following prior art and that the in any case the patent is obvious and therefore should not have been granted in the first place.

The case in question should mean that it is more difficult to attack a patent on grounds of obviousness which is good news for patent owners. Of course if there is prior art that anticipates the patent then validity will still be attacked.

This is good news as many commentators were questioning the value of patents because they are always attacked in counterclaims.

Any patent litigation is still very expensive.

Astroturfers are sent off?

2008-06-19T17:14:00.003+01:00

Astroturfing is the process where by a retail or service provider leaves fake and very favourable feedback about their own goods and services. From people I have talked to this is a wide spread practice and concumers are aware not to fully trust very positive feedback.

However, new legislation may have made this practice illegal. The Unfair Commercial Practices legislation says that you are not allowed to deceive or make false represenations about products. This would seem to encompass astroturfing.

Don't panic though. The OFT have to police the legislation and are unlikely to investigate such practices.

Commuinty Trade Mark to become cheaper?

2008-06-09T09:01:00.002+01:00

Apparently the Office of Harmonisation for the Internal Market, which oversees Community Registered Trade Marks and Registered Designs, has a surplus of €300m from application fees.

As a result there are plans to reduce the cost of a Community Trade Mark Application. On the face of it this seems like a good thing but if the application becomes cheaper, logically, more people will apply. However, with more applications, presumably, there will be more oppositions, registrations and potentially a dilution of marks. So I would question whether this reduction in fees will be beneficial?

We will see if, during the difficult economic climate, whether such a reduction ever comes to fruition....

Community Design Rights - a further erosion?

2008-06-05T16:47:00.003+01:00

Following the narrow interpretation of what consitutes a "different overall impression" earlier this year there appears to be a further erosion of the strength of a Community Registered Design (CRD).

A recent case regarding plastic balls for tumble dryers has clarified that any pre-dating design, no matter what field of industry, can be used to destroy the novelty of a design and thus provide an opportunity to invalidate the registered design.

Obviously, this widens the scope of what represents prior art and is compounded by the numerous states that the CDR encompasses. In this case a massage ball was used to invalidate the CDR for the tumble dryer ball.

I believe this makes product clearence searches for pre-existing designs almost impossible to do without significant risk.

However, if a Patent is not available or is too expensive then CDR and UK registered designs are still the next best protection despite the erosion.

Data Protection - a new era

2008-06-05T15:58:00.003+01:00

After a number of Data Protection 'boobs' including the high profile child benefit data scandal, the Information Commissioner is being given new powers. The Data Protection Act is overseen in the UK by the Infomation Commissioner who is responsible for enforcing the DPA. The DPA requires businesses to comply with the 8 Data Protection Principles which includes the duty to keep personal data secure.

On the 8th May 2008 the Criminal Justice and Immigration Act was passed by parliament ammending the Data Protection Act 1998 (DPA). This legislation facilitates a new system of fines that can be levied on businesses that knowingly or recklessly disclose personal information.

These powers do not come into force until secondary legislation is brought in to give effect to it so do not panic just yet.

However, adverse publicity can still be seen to be the most powerful deterrant to non compliance.

New Legislation could help intellectual property owners to enforce their rights.

2008-06-03T16:30:00.006+01:00

The Consumer Protection from Unfair Trading Regulations (CPUTR) and The Business Protection from Misleading Marketing Regulations came into force on the 26 May 2008 with the aim of protecting consumers and suppliers from unfair commercial practices.

One of the most interesting prohibited activities provided in the legislation is "Faking Goods" ie "Promoting a product similar to a product made by a particular manufacturer in such a manner as deliberately to mislead the consumer into believing that the product is made by that same manufacturer when it is not" (Schedule 1, para 13 CPUTR). This activity is considered 'unfair' in all circumstances.

This could be equated to a 'passing off action' for similar get up or a design right infringement action. However, the main difference is that the rights owner cannot enforce this legislation themselves. The Office of Fair Trading has been given the power to enforce this legislation so all a rights holder can do is to report an offender to the OFT.

There will also need to be some case law to interpret what is meant by 'deliberatly mislead' as this is not included in the definitions contained within the legislation. I suspect that this will, in practice, be difficult to prove.

The sanctions for breach of these laws includes a maximum of 2 years imprisonment and a £5,000 fine so are not to be taken lightly.

Obviously having the OFT taking action against a third party infringer is cheaper than enforcing the rights yourself. However, the OFT's ability to investigate and enforce is limited to the resources they have available and so any action could be too late to prevent irreparable damage to your products or goodwill.

However, this is an extra weapon to be used in the war on piracy and counterfeiting and is probably something that should be considered in conjunction with civil action.

Nominet joins the 21st Century

2008-06-03T16:08:00.002+01:00

On 25 June 2008 Nominet (the body that oversees .co.uk domains) will be replacing the laborious system of paper based domain name transfers with an online system. This brings Nominet in line with the transfers of top level domians. (ie .com)

The fee will be the same (£10 per transfer) but the administration burden should be dramatically reduced without the need for letters of confirmation from the assignor and assignee. The bulk transfer fee is also being reduced from £22 to £10.

This move is to be welcomed and not before time.

Online content ratings

2008-06-02T15:24:00.002+01:00

There is a new voluntary classification scheme for online content run by the British Board of Film Classification http://www.bbfc.co.uk/bbfcOnline/bbfcOnline.php

Many of the major studios have signed up already.

I would question whether this offline classification system is transferable to an online environment with content being accessible anywhere in the world.

Piracy - a new gamekeeper?

2008-06-02T13:36:00.004+01:00

The general rule is that IP owners have to police and enforce their own rights through the civil courts, but a recent case brought by Hertfordshire County Council under money laundering legislation showed that criminal proceedings can be just as effective.

In that case the directors of a company were found guilty of money laundering because they received rent which was paid from the proceeds of selling pirated and counterfeit goods on the market stalls.

This also acts as a warning to landlords who receive rent from tenants they consider to be "dubious". The maximum prison sentence if found guilty is 14 years!

This is a very new area of law and there is an appeal underway. So watch this space!

Trade Mark Law - A New Amendment

2008-05-22T14:36:00.002+01:00

The 'snapily' titled "The Trade Marks (Earlier Trade Marks) Regulations 2008" has recently come into force.

Does it change the face of trade mark law in the UK? Not likely. It merely amends the procedure of "use conditions" for Madrid applications designating a Community Trade Mark.

Social Networking, Profile Portability and the Law

2008-05-21T12:48:00.007+01:00

As so called Facebook and Myspace fatigue sets in there are numerous 'niche' social networking sites setting up and taking hold.

These start ups concentrate on particular industries or activities that people have in common but with each comes different and unique legal risks. Apart from Data Protection the main risks lie in the User Generated Content (UGC) that is usually the key to the success of the site. Some of the main copyright issues of UGC have been addressed by the big players but there are risks beyond copyright infingement.

For example www.forkd.com (which I really like) provides culinary networking - allowing users to share and amend recipes. Immediate questions that spring to mind include what happens if someone has an allergic reaction to the ingredients in a recipe or worse they are maliciously poisonous?, what if the recipes are copied from the latest Gordon Ramsey or Jamie Oliver? I could go on....... I am sure that forkd's lawyers have already considered these issues in detail and this is by way of example only.

Apart from the classic tale of how to monetise these businesses there are very different problems associated with the user generated content that is being published depending on the type of content.

My view is that these risks can be managed effectively in the terms and conditions of membership but with a global membership there may be different jurisdictional and dietary problems.

One problem that has not currently been addressed is whether profile portability (whereby I can log onto other social networks using the information in my existing profile) will incorporate acceptance of these additional terms and conditions.

For example if I sign up to Myspace and then port my profile to Forkd have I accepted the Forkd terms and conditions of use?

No doubt this will work on a practical level but it always seems to be that the legal position is always following the real life position. As with all new enterprises the directors will have to balance risk versus reward.

No Trade Mark Protection for Keywords in the UK and Ireland

2008-05-20T16:14:00.005+01:00

May the 5th can be seen as a seminal point in trade mark history in the web 2.0 epoch. No longer does Google have a policy of disabling keywords for registered trade marks following a substantiated complaint.

All previously disabled keywords will now be enabled allowing competitors to purchase each others brand or trade names as keywords.

Google has provided an explanation for this change in policy here:
https://adwords.google.com/support/bin/answer.py?answer=92877

My personal view is that this is in response to the Mr Spicy case (see previous Blogs on this) which held that a search engine was not liable for selling keywords that were registered trade marks as they were using the mark in relation to different goods and services. Obviously, the administration burden on Google in dealing with these complaints is dramatically reduced.

A number of commentators have suggested that this re-enablement will increase the cost of advertising via keywords because the brand owner will have to bid against their own trade marks with competitors.

All is not lost however as Google will still be providing a courtesy investigation into complaints where registered trade marks are used in the wording of the actual advert but not the keyword.

What is untested is whether a trade mark owner can take civil action against a competitor (leaving Google out of the picture) who purchases a keyword for that trade mark. Logic would dictate that such a claim would be successful if the competitor is using an identical trade mark for a keyword in the course of trade (ie to further its business).

Whether the purchase of a keyword infringes a trade mark for similar marks that confuse the public is another matter, especially where keywords are hidden from the public in the coding.

This is a very uncertain area of IT and trade mark law. There must be a test case in the pipeline to determine whether a competitor is infringing a trade mark by purchasing it as a keyword........

Until then...... watch this space!

Software as a Service - Law as a Product

2008-05-19T08:44:00.003+01:00

I was sat drafting a service agreement for the provision of a database service and noticed that there is a reciprocal change in attitudes to the way software and legal services are provided.

Software as a service is not a new concept but it requires a very different legal framework compared to your standard shrink-wrap or click-wrap licence agreements. Software as a service is nearly always a hosted service and therefore a click-wrap licence is required, normally with a service level agreement (ie what is the uptime and fix-time etc) rather than your normal product warranties and specification agreement. The Software Service agreement will not require a maintenance agreement as the supplier is the host and therefore maintains the servers etc. This avoids at least one legal agreement but, I believe, puts a lot more emphasis on the software service supply agreement and the warranties that are given under it.

Conversely, there is a move, in forward looking law firms, to "productise" their services and move away from the by the hour charges to fixed fee products. ie we will provide you with E-commerce terms and conditions for £[x]. This is obviously a world a way from the normal hourly rate basis but it can be seen to be making legal services or products more accessible, more transparent and more affordable. Transparency can be seen as a USP with law firms and this might repair the view that lawyers are "ambulance chasers". Transparency in the Software Industry can be equated to interoperability and API access and, I believe, this improving consumer relations. Therefore, these changes in supply, in the main, should be welcomed.

Unfortunately/Fortunately, depending on your point of view not all legal products will be capable of being productised and, at present, not all Software can be provided as a service.

What's next? Licence free software - oh I forgot we are already there : )

Glossary for Intellectual Property

2008-05-13T15:29:00.003+01:00

I thought it would be useful to compile a list of commonly used abbreviations used in Intellectual Property and Technology Law.

Feel free to add additional abbreviations:

IP - Intellectual Property

IPR - Intellectual Property Rights

TM - Trade Mark

WIPO - World Intellectual Property Organisation

EPO - European Patent Office

Madrid - a worldwide trade mark application under the Madrin Convention

CTM - Community Trade Mark

UKIPO - UK Intellectual Property Office

OHIM - Office of Harmonisation of the Internal Market (administrate CTM and CDR)

CDR - Community Design Right

There are many more.

Trade Mark Trolls and Trade Mark Poaching

2008-05-13T15:18:00.003+01:00

Trade Mark Poaching – A New Trend?

Trade marks and trade names are valuable commercial assets that instantly distinguish your goods or services from your competitors. As people become more savvy in intellectual property we are seeing an increasing number of businesses attempting to unfairly acquire trade marks by using “Trade Mark Poaching”. Others are calling these operators "Trade Mark Trolls".

These unscrupulous operators want to steal or takeover your trade name/mark and piggy back on your hard earned goodwill.

This takeover usually occurs in the first few years of a business using a new trade name or unregistered trade mark, often with a web presence.

Typically the business is contacted by a third party, often via a trade enquiry requesting information.

The third party then uses this information to set up their own business with the same or very similar name and applies to register the name as a trade mark.

Once registered the third party writes to the original business with a claim of registered trade mark infringement and a request to stop using the mark.

Few people would argue that this practice is fair and, unsurprisingly, there is remedy under trade mark law. A registered trade mark can be invalidated for ‘prior early rights’ or ‘bad faith’.

Unfortunately, both of these invalidity provisions are inherently difficult and costly to prove and it is up to the trade mark/name owner to act as the “Game Keeper”. The police are unlikely to be interested unless you have proof of fraud or deception.

More useful, are the steps any business can take to lessen the risk of trade mark poaching. The best step is to register a trade mark with the UK Intellectual Property Office at the outset. The registry operates a ‘first come first served’ basis so once you have a ‘filing date’ it is far more difficult for a third party to register your name for the same goods or services.

In addition employing trade mark watching services on your trade marks or trade names allows you to identify predatory trade mark applications prior to registration. You can then object to the application during the formal 3 month opposition period.

Of course, keeping records of the development and use of the trade mark/name is good practice and a way of showing earlier rights to a name/mark.

Trade mark law is still relatively young and the boundaries are constantly changing, so there is always plenty of room for legal argument about the validity of registered trade marks.

Poachers are aware of these grey areas and the cost of challenging the validity of a registration so unfortunately Trade Mark Poaching continues to be a real problem for hard working business entrepreneurs.

What is Intellectual Property Worth?

2008-05-13T15:16:00.002+01:00

Here is an article I wrote on the value of Intellectual Property (IP):

A business’ intellectual property (IP) is always seen as hugely valuable as IP represents 7% of the national economy, approximately £60 billion. It can certainly give you the competitive edge to stand out in an ever crowded market place.

IP rights are now coming to the forefront of the Government’s economic strategy with Alistair Darling mentioning the creative industries twice in the first 5 minutes of his recent budget speech.

There is even a Minister for Intellectual Property, Baroness Morgan of Drefelin who said recently “The government is committed to safeguarding the intellectual property rights of those who make a living from their creativity, ensuring the long term economic viability of our creative enterprises”

Creative industries rely heavily on IP rights to protect their output and allow commercial exploitation of their endeavours. They appreciate the importance of IP rights, especially the protection of trade marks in a global market.

I think the United Kingdom Intellectual Property Office which oversees registration of IP rights in the UK sum up IP nicely as the “ingredient that turns knowledge into assets”.

Adding IP assets “Can account for as much as 80 per cent of the value” of a business.

IP rights are mainly national and range from trade marks and patents to know-how and design rights.

It is critical for any business to identify their main commercial markets, and if practicable, apply for protection in these areas.

I see IP in three stages:

creation and development,
exploitation and
enforcement

But IP is more than just an asset for the balance sheet. It can:

attract investment or suitors
provide something tangible in commercial agreements
recoup money spent on R&D
create and maintain brand identity
and secure and preserve market share.

However the value of any IP is determined by who owns it and your ability to enforce your rights. There are various types of legal ownership, with many grey areas and importantly joint owners have restricted rights.

However, enforcement is critical otherwise word will spread to competitors that you are a soft touch.

Intellectual Property in the UK

2008-05-13T14:59:00.003+01:00

Hello and welcome to my blog on all things relating to intellectual property and technology law in the UK.

For those that don't know intellectual property relates to the law that turns your ideas into commercial assets. You can not protect the idea itself only the elements that make up or give effect to this idea.

I will be commenting on the latest developments in UK copyright, patent, trade mark, design, e-commerce and technology law. Some of these rights require registration and a great place to get further information is the UK Intellectual Property Office. http://www.ipo.gov.uk

Already this year there have been a myriad of developments, with major changes to interpretation of design law and domain names. The UK government is also undertaking a comprehensive review of copyright laws for the digital age.

Rather than watch this space it is a matter of "WATCH THIS BLOG"

Here is a quick link to my online profile:
http://www.foot-ansteys.co.uk/index.cfm/solicitors/People.Details/staff_id/120