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If your brand’s important, protect it

The New Zealand Herald recently reported on claims by two café owners that they are victims of "corporate bullying" by Coca-Cola.

Claire Rientjes and Egemen Yeter, owners of Innocent Foods, have received a cease and desist letter from the drinks company’s lawyers, alleging that the use in their branding of the word “Innocent” infringes a trade mark registration owned by one of Coca-Cola’s subsidiaries.

Whether Coca-Cola are being “bullies” is open to argument. A trade mark owner’s failure to enforce its rights, even against small-scale infringers, can potentially lead to a weakening of its marks and a loss of distinctiveness over time. So Coca-Cola may have decided that letting things slide wasn’t an option, and that protecting its brands was more important than avoiding some bad publicity.

The owners of Innocent Foods are like so many small business owners. They come up with a great idea and a great name, and then launch without checking if there is a problem with that name. Had they undertaken a search of the New Zealand trade marks register at an early stage, they may have been spared a lot of pain.

They have spent thousands of dollars creating branding, signage and a website and, unless they are prepared to fight (almost never a viable option for a small business against a corporate giant), will have to rebrand and find a new name for their business.

For many businesses the brand is their most important asset. And yet many businesses will spend thousands of dollars to prepare marketing and branding materials, including websites and social media presences, but never check whether they even have the right to use the brand. They will also often fail to spend even a small amount of money to secure trade mark protection for their key brand.

If you are starting a new venture, make sure you have protected your brand and that someone else doesn’t already have the rights to it. A simple check at the IPONZ website, as well as some basic Google searching, may be enough to indicate if there is an issue. A trade mark attorney can also undertake a more comprehensive search for you. If everything looks good, you can then file a trade mark application which (all going well) will be registered six months later. Once you have your registration, you should be well placed to stop others from taking your brand as their own.

Bowie Yorke offers a full trade marks service. We can assist with all aspects of trade marks protection, including strategy, searching, filing, and enforcement.

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Eminem wins copyright case against New Zealand's National Party

The National Party has been hit with a large damages bill, after being found to have infringed copyright in Eminem’s song Lose Yourself.

In Eight Mile Style v New Zealand National Party [2017] NZHC 2603 [25 October 2017], the High Court awarded the musical artist’s publishing company $600,000 in damages, plus interest.  And there may be more pain to come, with a costs award also likely.

As has been widely reported, the National Party used a song called Eminem Esque in its 2014 election campaign. Eminem Esque was clearly inspired by Lose Yourself (as the track name indicates), but the similarities between the two tracks are striking. It would have been surprising if copyright infringement had not been found. It can only be assumed that the National Party did not settle this matter before it went to a hearing because it could not do so on terms it was able to accept.

The National Party had received assurances from professionals within the advertising and music licensing industries that Eminem Esque did not infringe copyright and was free to be used. That advice was clearly wrong, and the National Party may now have legal remedies against those professionals, as well as against the publisher of Eminem Esque and the royalties collection agency APRA AMCOS.

But the extent to which the National Party can seek recovery against others will depend on the licences and other agreements it entered into. Did those agreements include warranties or indemnities covering copyright infringement? And if they did, were they subject to any limitations or exclusions of liability? While it is common in a copyright licence for the licensor to indemnify the licensee in the event of an infringement claim, it is also common for the licensor to limit its liability to the licence fees payable under the licence.

 The Eight Mile case is a good reminder that when it comes to musical copyright infringement, if it sounds like a copy it probably is. It seems surprising that more than one person signed off on the use of Eminem Esque, given the clear similarities between it and Eminem’s famous song.

It is also a reminder that even an “innocent” infringement (i.e. the National Party had sought assurances it could use the track without infringing copyright) will not save you if you copy someone else’s work. It is not a defence to copyright infringement to say “I didn’t know it was an infringing copy”. So if you are taking a licence of a copyright work, do your homework, and get legal advice if you are unsure. Make sure you have warranties and indemnities from the licensing parties, and that any exclusions or limitations of liability in those licences do not cover copyright infringement claims.

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We have moved

After three years in Parnell, we’ve decided to make the move into Auckland’s CBD.

As of 1 March 2017, our offices are located at Level 17, The Shortland Centre, 55 Shortland Street, Auckland (opposite the Vero Centre).

Our postal address and other contact details have not changed. And we will continue providing legal services to clients all around the country.

Stop by for a coffee if you’re in the area.

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