Using case IP studies: from Colin the Caterpillar to my own business copyright conundrums - Marcus Simmons Lecturer in Enterprise and ...

Using case IP studies:
        from Colin the Caterpillar to my own
           business copyright conundrums

                             Marcus Simmons
               Lecturer in Enterprise and Entrepreneurship
Where opportunity creates success

In this presentation

• Protecting IP from an entrepreneurs perspective

• Some IP basics

• Some IP examples used in teaching

  • Legal Disclaimer! - General guidance only – NOT LEGAL EXPERT!

  • Students need to know the basic concepts

  • Always seek help / advice from a solicitor specialising in IP

M&S legal action against
  Aldi for infringing copyright
  (April 2021)

• Colin the Caterpillar was launched by M&S 30 years ago.
• Many similar products from Aldi (Cuthbert), Co-op (Charlie), Asda (Clyde), Tesco
  (Curley), Morrison’s (Morris), Waitrose (Cecil), Sainsbury’s (Wiggles)
• PR successful but legal case may not be, partly due to length of time others available
  without challenge.
• With IP, things are never simple but often expensive
• https://www.bbc.co.uk/news/business-56812445

Intellectual property in the
  news (June 2018) – High
  Value, Specific & Expensive

• Apple and Samsung settle seven-year-long patent fight over copying the iPhone
• Legal case started in 2011 with a $1billion ruling in Apple’s favour.
• Followed by years of appeals, while millions of new phones still being produced by Samsung
• Case revolved around design and utility patents for basic functions of a smartphone, like tap to
  zoom and the home screen app grid, but NOT overall design.
• Apple say “Apple ignited the smartphone revolution with iPhone and it is a fact that Samsung
  blatantly copied our design.”
• https://www.theverge.com/2018/6/27/17510908/apple-samsung-settle-patent-battle-over-copying-iphone

Enforcement is Expensive

https://www.fedbar.org/wp-content/uploads/2019/12/Panel-1-PPT-pdf-1.pdf

Small firm faces legal threat
over ‘Naked’ name (2017) –
Ignorance no defence

• Naked Soap Company makes & sells bath bombs
• L'Oreal believes it owns the trademark for the use of the word ‘naked’ (ref: Urban Decay
  Naked make-up range)
• Owner Mr Rushforth believes there is no similarity between the products.
  • "We produce bath bombs, not eye shadow or make-up, so there can be no confusion
    for customers"
• But registered trademark ‘naked’ within same industry SIC category
• The name “Naked Soap Company” no longer exists – dissolved July 2018
• http://www.bbc.co.uk/news/uk-scotland-edinburgh-east-fife-41349809

Same name – different sector, but then…

• Five legal disputes between 1978 to 2007

• All regarding music production e.g. recording &
    producing sounds on PCs etc.

• iTunes saw Apple enter the music industry with an
    eventual out of court settlement reached, estimated to
    be $500m.
•   https://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer

Check names and sectors (class)
•    https://www.gov.uk/get-information-about-a-company
•    Basic name check

•    https://trademarks.ipo.gov.uk/ipo-tmtext - words
    • Macdonald
    • EEUK

•    https://trademarks.ipo.gov.uk/ipo-tmowner - owner
•    Enterprise Educators
•    iknow
    • Check classes & list of services
    • Agreed amendment to class 35 wording

iknow name example

  Advertising services provided on the Internet in relation to promoting temporary and
  permanent accommodation.

My experience of protecting IP
                                              High Value                                 Processes and
                                                                                         products

        Company
        Name

                                                       Registered
                                                       trademark®       Patents
                                                       UK, EU, US etc   UK, EU, US etc
Low Inherent                          Customer
                                      contracts                                                          High
Cost design                                                                              Enforcement
                                                                                                         Cost
     copyright©                       & NDAs

              Company     Staff
              Structure   contracts

     Claim
                                                                                          Do nothing
     trademark™
                                                  Low Value

Intellectual Property Quiz

  • A web designer is commissioned to produce a website.

  • It is designed & built for £5,000

    • Who owns the copyright?

  • Blackpool hotelier vs iMakeWebsites Ltd. and Marcus Simmons

  • Claimed copyright over hotel directory in 2004

  • Settled through mediation in 2005 with copyright retained

Protecting IP is time consuming & expensive

Intellectual Property Quiz 2

• iknow uk vs iknow-Dorset 2006             Domain name infringement

• iknow-uk vs iknow-London 2008             Domain name infringement

• iknow uk vs iknow limited 2008            Domain purchase

• Iknow uk vs Getty Images vs Customer      Photo copyright

• iknow Yorkshire vs Hello Yorkshire 2009   Design & Processes

iknow-Yorkshire vs hello-Yorkshire

   Same structure and SEO process
   Not same code, images or text

IP Summary
• Protect the basics – name, contracts, trademarks

• Be alert for infringements

• Be prepared to take action where appropriate

• Evaluate risk vs reward

• Biggest benefit for business value, not legal disputes

That’s it …

… any questions?

Where opportunity creates success