This is the Lewis Silkin Brand Academy presentation from the event on the 13th October 2011 held at the Imagination Gallery.

1. Brand Academy 2011
13 October 2011
#LSBA2011

2. Chair‟s Introduction
Giles Crown
Partner, Head of Media, Brands and Technology
+44 20 7074 8090
giles.crown@lewissilkin.com

3. New Media
Simon Entwistle Cliff Fluet Simon Morrissey
Partner Partner Partner
+44 20 7074 8114 +44 20 7074 8000 +44 20 7074 8221
simon.entwistle cliff.fluet simon.morrissey
@lewissilkin.com @lewissilkin.com @lewissilkin.com

4. Blue Cow and Bintendo – the IP issues
• “Collaboration” as a commercial joint venture (JV)
• Background rights of each party
• Foreground rights created by the parties
• Consequences of termination/expiry of JV

5. Background Rights
• Definition
• Identification and verification
• Pre-contractual protection (NDA/binding heads)

6. Licence of Background Rights
• Scope of licence
 What is included in licensed rights?
 Purpose of use of licensed rights?
 Exclusive, sole or neither?
• Maintenance and protection of licensed rights
• Ownership of related foreground rights
• Duration: will licence survive termination of JV?

7. Licence of Background Rights (cont)
• Issues particular to:
 Trade Marks
 Copyright/rights in software
 Data

8. Foreground Rights
• Definition
• In this case, trade marks (Wacky Races), copyright/rights in
software and data
• Owned by JV parties jointly or separately?
• Licences from owner to JV partner?

9. Joint Ownership of IP Rights
• Default position
 Exploitation rights
 Rights to sue for infringement
 Rights to license third parties
 Rights to use as security for loans
 Uncertainty over maintenance and enforcement
• Issues specific to jointly-owned trademarks
 Co-existence agreement
 Dilution of rights
 Domain name registration and use

10. Protection of Foreground IP
• Maintenance and enforcement
• Non-compete
• Non-solicitation
• Restriction on attempts to register similar IP

11. IP Consequences of termination of JV
• Termination of licences – automatic or right to terminate?
• Continuation of licences – any variation of terms?
• Assignment of jointly-owned IP
 to one party
 to third party (sale of JV assets - the “Wacky Races”
game)

12. Revenue Sharing
• What revenues/cash inflows
• What costs/cash outflows
• How will revenues be shared?
• Miscellaneous issues
• Top tips

13. Revenue Sharing
• What revenues/cash inflows?
 Direct
 Indirect
> arms length or connected parties

14. Revenue Sharing
• What revenues/cash outflows?
 Direct
 Indirect
> arms length or connected parties?

15. Revenue Sharing
• How will revenues be shared?
 Gross profits
> pros and cons
 Net profits
> pros and cons
 Recoupment?

16. Revenue Sharing
• Miscellaneous Issues
 Audits
 Bank accounts

17. Revenue Sharing
• Top Tips
 Identify all one off costs, recurring costs and revenues
before deciding on a revenue model
 Identify who is better placed to collect revenues
 Consider the complexity of net profit accounting early on

18. Blue Cow – Digital Media
• Contracting with Lord GoGo and his “people”
• Clearing the music rights to enable the performance to be
exploited
• Filming the event for Blue Cow to have broadcast as an
advertiser-funded programme

19. Key areas for the Audio & Audio-Visual
Aspects
1. Talent/Endorsement Agreements
2. Music Rights
3. Advertiser-funded Programming & Broadcast

20. Talent/endorsement agreements
• Fee:
 paid upfront?
 sum withheld for approvals?
 inclusive of clearances, riders and production?
• Role:
 performance and endorsement?
 promotional activity & promotional materials?

21. Talent agreements
• Availability and prioritisation
• Does he have the relevant rights to grant and which are right
contracting entities?
• Barring agreements and exclusivity
• Warranties in respect of convictions/past behaviour
• Warranties in respect of good behaviour and reputation

22. Music Rights considerations
• The concept of multi-layered rights
 Recording rights & Record Company Exclusivity
 Rights in the composition
 One or several music publishers
 Dubbing and Mechanical rights
 Synchronisation Rights
 Performing Right and Public Performances

23. Music Rights considerations
• Territorial nature of rights
• Non-territorial nature of digital platforms
• Existing arrangements
• Holdbacks & reversion of rights
• Access to „free downloads‟ and streaming content

24. Advertiser-funded programming
• Contracts between production company, broadcaster, agency
and clients
• Talent rights and broadcast regulation issues
• Product Placement & undue prominence
• No guarantee of success or transmission
• No guarantee of brand placement
• Investment loses editorial control

25. Advertiser-funded programming –
Production Company issues
• Who will own the new material created?
• Will the agency/brand retain some level of ownership?
• What are the limits on territories and platforms?
• Who and what needs to be cleared?
• Who will clear (and pay for) underlying rights (examples including
talent, photography, commissioned art, designs and formats)?
• What happens to international rights?
• Will the brand make available online?
• What happens to the revenues in the new materials

26. Thank you

27. Reputation Management
Rod Dadak Jonathan Coad
Partner Partner
+44 20 7074 8000 +44 20 7074 8115
rod.dadak@lewissilkin.com jonathan.coad@lewissilkin.com

28. Thank you

29. Brand Academy 2011
13 October 2011
#LSBA2011
@LewisSilkin

30. Sponsorship
Dominic Farnsworth
Partner
+44 20 7074 8088
dominic.farnsworth@lewissilkin.com

31. The Issues
• Road Race Event
• Sponsorship of Event
• Celebrity Issues
• Ambush marketing and the Olympics
• Hospitality and the Bribery Act

32. Road Race Event
• Who is running the Race? SPV?
• Race Rules & Participation Agreements
• Venue Agreement
• Liaising with relevant authorities
• Related agreements : catering, hospitality, ticketing, security,
merchandise
• Broadcast and other media coverage
• Sponsorship

33. Sponsorship - Key Commercial Terms
• Parties
 Has representative body full authority to enter the
agreement
• Term
 Year/Season/Event
 Consider post event publicity – Olympics 2004
• Fee
 Cash
 Payment in kind
 Timing of payments
• Sponsor‟s rights

34. Sponsorship -Key Commercial Terms
• Naming rights to reflect level of association – „proud
partner‟, „official supplier‟, etc
• Advertising opportunities
• Hospitality
• Public appearance
• Merchandising
• Presentation
• Content creation
• Consultation/control over event organisation
• Sector exclusivity
• Option to renew/announcements

35. Sponsorship -Key Commercial Terms
• Termination
 Change of key aspects of event
 Relegation
 Disrepute
• Boilerplate
 Force majeure
• Compliance with regulations
 Loi Evin in France - Budweiser, Heineken
 Tobacco, alcohol, fast food, advertising to children, health
products

36. Celebrity Disrepute
• A real concern with celebrities
 Adrian Mutu / Nike / Pepsi
 Tiger Woods / Nike / AT&T/ Gatorade / Tag Heuer
 Vic Reeves / Churchill
• The difficulties of defining „disrepute‟ and similar terms
• Morality/disrepute issues can bite sponsors
 Harlequins “Bloodgate”
 Sweatshops
 Fredi Kanoute „888‟
 Cycling / doping

37. Ambush Marketing
• What is ambush marketing? Why does it matter?
• IOC definition –
“All intentional and unintentional attempts to create a false or
unauthorised commercial association with the Olympic
Movement or the Olympic Games”
• Ambush marketing techniques:
 Ambush by intrusion
 Ambush by association
 Ambush by parallel event

38. Examples
• Atlanta / Reebok & Linford Christie / Puma

39. Examples
• FIFA World Cup 2010

40. Examples
• Ryder Cup

41. Ambush by association
• Reference/allusion in advertising
• Competitions/tickets as prizes
• Sponsorship of athletes/teams
• Sponsorship of/advertising around media coverage

42. Examples
• Lillehammer – Games
• Visa Official Sponsor
• Amex advert:
“If you’re travelling to Norway this winter you’ll need a
passport but you don’t need a visa”
• Post Games survey of sponsor recall conducted
• 66% recall

43. Ambush Marketing
• How is ambush marketing prevented?
• Obligation on event holder to:-
 Deliver clean stadiums
 Establish and promote brand protection programme and
actively enforce its rights
• Terms and conditions on tickets
 Euro 2004 UEFA/Dominos
• Event specific legislation

44. Olympic-specific legislation
• Olympic Symbol etc. (Protection) Act 1995
• London Olympic Games and Paralympic Act 2006

45. Olympic Symbols Act
• Prevents unauthorised use, in the course of trade, of:
 the Olympic/Paralympic Symbols
 the Olympic motto “Citius, Altius, Fortius”/ the Paralympic
motto “Spirit in Motion” OR
 anything similar to these to create an association with them
 the words “Olympic(s)”, “Olympian(s)” and
“Olympiad(s)”/”Paralympic(s)”, “Paralympian(s)” and
“Paralympiad(s)”

46. LOCOG's guidance on “association”
• Overall impression. Context is key
 Past conduct
 Nature of product and manner normally promoted
 Timing
• Use of Olympic style torch/flame
• Use of colours of Olympic Symbol
• Use of images of 2012 games venues
• Depiction of Olympic and/or paralympic sports especially when a
number of sports are represented
• Use of words which capture the essence of the 2012 games and/or
qualities associated with Olympism
(example, spirit, endeavour, friendship, winning, determination)
• Use of “XXX” or “30th”

47. London Olympics Act
A B
Games Gold
Two thousand and twelve Silver
2012 Bronze
Twenty Twelve London
Medals
Sponsors
Summer

48. Defences
• Honestly made statement
• Incidental usage
• Editorial journalistic use
• Use in a context not likely to suggest an association

49. Real Examples
“Olympic Removals”

50. Real Examples
Olympic sausages!

51. Bribery Act 2010
• Three core offences
 Bribing
 Being bribed
 Bribing a foreign official
• Relevant commercial organisations can be found guilty where
they have failed to prevent bribery by adequate measures
• Up to 10 years / unlimited fine

52. Bribery Act 2010
• Presuming no foreign official, prosecuting authority has to
show was intended to „induce a person to perform improperly
a relevant function or activity‟
• Difficult to quantify – subjective and objective views
• High standard of proof to show hospitality obviously
excessive/disproportionate
• Private sector – less public interest in enforcement
• Be aware : Safeguards and „Please‟ vs „Thank you‟

53. Thank you

54. Trade Marks
Steven Jennings Simon Chapman
Partner Partner
+44 20 7074 8000 +44 20 7074 8266
steven.jennings@lewisislkin.com simon.chapman@lewissilkin.com

55. WACKY RACES as a global brand
• Which classes are to be covered/searched?
 Races are entertainment in Class 41
 Online game (non downloadable) Class 41
 Online game (downloadable) Class 9
 Computer & video games generally Class 9
 BUT handheld consoles Class 28
 Online services Class 38
 Computer programming Class 42

56. Types of Brand Clearance Searches
• Screening search
 Immediate location of obviously fatal prior existing trade
marks
 Effective for conducting a „first cut‟ on a raft of potential
names
• Full trade mark search
 Comprehensive risk analysis that is usually relied of for
commercial decisions
 Greater focus on similar marks and analysis of risk

57. Types of Brand Clearance Searches
• Common law search
 Minimise risk of passing off
 Trawl of available information – websites, business directories
 Not conclusive – cannot prove a negative
• Company names
• Domain names
• Strapline search
 Global database of advertising slogans/lines
 Useful since many are not registered as trade marks

58. Types of Brand Clearance Searches
• Foreign searches
 Overseas agents
 Overseas IP offices
 Multi-jurisdictional search databases
• Investigations
 Used to provide a deeper level of risk analysis
 Owner may no longer exist
 Mark may not have been used, or be liable to cancellation
 Owner likely to coexist due to divergent business operations

59. Types of Brand Clearance Searches
• Cultural searches
 What does your mark mean
 Translation
 Transliteration

60. Analysing the search results
Trade mark No./ Dates Trade mark Information Goods/services Owner
No rights are given to
UK 700234 the exclusive use of the Class 9: Audio & video recordings. HANNA-BARBERA PRODUCTIONS, INC.
App: 3 Aug 1971 word RACES or the Class 16: Books; printed matter; stationery. 15301 Ventura Boulevard,Sherman
Oaks,California 91203
Reg: 13 Sep 1972 letters and numeral HB6 Class 41: Television entertainment. US (UNITED STATES OF AMERICA)
Expiry date: 3 Aug 2012
M 301815 Class 28: Toys, games and playthings. Generale Biscuit
Reg: 30 Aug 1965 Class 29: Meat, fish, poultry and game; eggs, milk and other 3 rue Saarinen,
Designated UK: 4 Jan 2010. milk products; pickles. Bâtiment Saarinen
Pending. WACKY Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sauces, F-94150 Rungis
ices. France
Class 31: Agricultural products; fresh fruits,
.
UK 2124328B Class 9: Computer hardware / software; audio and video Paul Beaden
App: 19 Feb 1997 recordings; electrical apparatus. 17 East Lane
Reg: 21 Apr 2000 Class 41: Live entertainment services.. Romford
Wacko Jacko Essex
Games Workshop Ltd.
CTM 631622 RA:CES . Class 9: computer games; video games; computer joysticks 7 Greens Road, Blairlinn, Cumbernauld,
App: 29 Aug 1997 and trackballs. Glasgow, United Kingdom, G67 2TU
Class 9: Audio & video recordings. Hanna-Barbera Productions, Inc.
CTM700234 Class 16: Books; printed matter; stationery. 15301 ventura Boulevard,Sherman
App: 3 Mar 1994 Class 41: Television entertainment. Oaks,California 91203
Reg: 13 Sep 1996 Us (united States of America)
Expiry date: 3 Aug 2014 WACKY RACES

61. .bluecow (the new gTLDs)
• Opportunity
 Submissions from Jan – April 2012 - go live 2013
 .brand and .generic
 Objection procedure
 Costs
> circa £175k year 1
> Circa £150k following years

62. .bluecow (the new gTLDs) cont ...
• Threat
 100,000‟s of new domains
 File Objection
 Trade mark clearing house
 Monitor
 File complaints where necessary

63. Keywords

64. Keywords cont ..
• Interflora v M&S (Sept 2011)
 Follows earlier judgment in Google case
 Article 5(1)(a) and 5(2)
 5(1)(a)
> Functions of mark
Origin/Quality/Communication/Investment/Advertising
Investment = ability to acquire/retain customers
No infringement if only consequence is that proprietor
must adapt efforts to acquire/preserve reputation

65. Keywords cont ..
 Art 5(2)
> Detriment to distinctive character (dilution)/unfair
advantage (free riding)
> If use will contribute to mark becoming generic then
dilution, but not if advert obviously not connected to
proprietor
> If keyword used to promote imitation goods then unfair
advantage
> Where not used for imitation and does not dilute or
tarnish, use is fair competition

66. Threats
• Best Buy v Worldwide (2011)
 Threats provisions
 Without prejudice rule
 Would a reasonable recipient understand the letter as
threatening legal action.
 Invitation to enter settlement negotiations, is not a
settlement proposal

67. Thank you

68. Advertising and Marketing
Jo Farmer Brinsley Dresden
Partner Partner
+44 20 7074 8111 +44 20 7074 8000
jo.farmer@lewissilkin.com brinsley.dresden@lewissilkin.com

69. Blue Cow‟s marketing plans
• Online competition for a member of public to participate in race
• Public to vote on the best entries
• Competition to be run on Facebook
• Inviting UGC about competition and Blue Cow products
• Celebrity to endorse the competition and tweet about Blue
Cow products

70. Competition
• Always have clear terms and conditions
• Set out key terms and restrictions in promotional materials:
 open to GB residents aged 18+
 Closing date
 Cost of entry
 Method of entry
 See [link] for full t‟s and c‟s
 FULL DETAILS of prize and any restrictions must be clear

71. Competition – Facebook issues
• Compliance with Facebook Promotion guidelines
• Terms must release Facebook from liability and make it clear
that the promotion is in no way endorsed by Facebook
• Using “like” button as a voting mechanism ?
• Using other Facebook functionality for entry into competition
or for communications about competition?

72. Inviting UGC onto Blue Cow website and
Facebook page
• ASA has jurisdiction over:
 claims made by Blue Cow on Blue Cow‟s website
 in other non-paid-for space online under Blue Cow‟s
control
> UGC if adopted & incorporated into marketing;
> and Social Media e.g. Facebook and Twitter
• What is a “marketing communication”?
 A communication that primarily sets out to sell something –
intended to distinguish editorial content on a website

73. When will UGC be caught by new remit?
• UGC = content created by consumers, but may be caught by
CAP Code if it is “adopted and incorporated” within
marcomms.
• What does „adopted and incorporated‟ mean? Not clear
• If a website is fully moderated, does that mean that all posts
become adopted and incorporated? Not necessarily
• What about if you only have a notice and take down policy?
No, but moderation is still advisable

74. Product description? Availability?
Price?
Free delivery? Does price match illustration?

75. Testimonials – Within Remit

76. Customer Reviews: Not caught (?)

77. TV style content on Facebook caught

78. Dialogue with users not caught

79. What about foreign websites?
• Current rule re marcomms in Foreign Media
• “Advertisements in paid-for space that are published on non-UK-
registered websites, if targeted at UK consumers, are subject to
the jurisdiction of the relevant authority in the country from which
they originate if that authority operates a suitable cross-border
complaint system.
• If it does not, the ASA will take what action it can. Most members
of the EU, and many non-European countries, have a self-
regulatory organisation that is a member of the European
Advertising Standards Alliance (EASA). EASA co-ordinates the
cross-border complaints system for its members (which include
the ASA).”

80. How are ASA decisions enforced?
• Existing ASA sanctions:
 Adverse publicity via adjudications
 Ad Alerts
 Withdrawal of trading privileges
 Pre-publication vetting
 Legal Backstop: Referral to the Office of Fair Trading

81. Specific sanctions for digital communications
• New sanctions:
 Details of offending ads/advertisers posted to a heavily
publicised ASA micro site
 Sponsored links to offending specific page removed, with
the cooperation of the relevant search engines
 Placing paid-for ads on search engines to highlight
continued non-compliance of an advertiser‟s marketing
communication (not an initial sanction – only after
warnings)

82. Blue Cow‟s celebrity tweets
• Athena Waldorf tweeting on Blue Cow‟s behalf, both about
Blue Cow products and the competition
• paid for editorial without disclosure = illegal under CPRs
• First ever case in Dec 2010 – Handpicked Media got in
trouble for not disclosing paid for promotional content
• OFT has confirmed that paid for blogs and tweets must make
it clear to the consumer that the content has been paid for
• CPRs enforced through Trading Standards, and CAP Code

83. Some celebrity tweets are not paid for

84. Disclosure of relationship?

85. Transparency on Twitter and blogs?
• What guidelines does Blue Cow need to give Athena Waldorf?
• Transparency is key – use Twitter profile of Athena Waldorf?
• US FTC guidelines on endorsements and testimonials
• Likely to harmonise with the US over time
• #ad; #spon; #paid?

86. Defending the ASA Adjudication
Brinsley Dresden
Brinsley.dresden@lewissilkin.com

87. 1. ASA receives complaint: 2. Letter sent to advertiser
Reject or Formal / Informal & agency setting out complaint
investigation (Seek advice now!)
9. Independent review?
3. ASA assesses response
8. Publication on ASA website and decides whether to
Negative publicity; Search results refer to expert
7. Signed assurance? 4. Draft recommendation sent
Copy advice? Media to complainant and advertiser
alert? for comment.
6. Council adjudication and 5. Consider reference to
notification General Media Panel

88. The „Complaint Notification‟
• Sets out factual background and describes claim
 press ad claimed that Blue Cow “helps you concentrate”
 made unauthorised health claims?
• Describes the complaint or „Issue‟
 Complainant challenged whether advertiser could
substantiate complaint
• Identifies relevant provisions of the Code
 Helps to find precedents and analysis of complaint
• Identifies number of complainants, and names them if competitors

89. The covering letter
• Identifies investigator at ASA Executive
 Have you dealt with them before?
 Do you have a rapport?
• May contain clues about their main concerns and the evidence
which is being sought
• Does it offer an informal resolution?
 Can you drop or amend your claim?
 Do you agree that the claim is flawed?
• Sets timetable for response

90. The Strategy for Response
• More than ever, imperative to front load defence
 ASA now threaten time and word limits
• Consider immediately whether a time extension will be needed
• Substantiation key for Blue Cow concentration claim
 Double blind tests on humans with placebos published in
peer-reviewed journals
 Tests on Blue Cow‟s specific formula, not just on the
ingredients
• ASA expert‟s will pick holes in scientific studies

91. The Strategy for Response
• Collate and submit all relevant substantiation
• Best chance of successful outcome is at start: Very difficult to
reverse an adverse draft recommendation
• Check the complaint in remit: PR? Foreign Media?
• Advertiser‟s stationary? Or lawyers?
• Work with Clearcast for TV commercials
• Refer to any CAP Coy Advice and Precedents
• Don‟t be aggressive with the ASA Executive!

92. The Strategy for Response
• Consider interpretation by the average reasonable consumer –
is the way the ASA or the complainant has interpreted it
• Is the claiming „misleading‟ or not accurate on one
interpretation?
• Consider what has not be claimed e.g. “scientifically proven….”
• Cite recent, positive precedents; distinguish negatives

93. New Lucozade Alert Plus: 22 Oct „10

94. New Lucozade Alert Plus: 22 Oct „10
• Man driving on dark, snowy road as deer cross
• “New Lucozade Alert Plus with energy-releasing B vitamins
and caffeine, it‟s proven to boost mental
performance….Sharpen up in a shot.”
• 120mg of caffeine in 60ml shot; ASA had accepted previous
evidence from GSK for positive effect of caffeine on mental
performance
• MHRA had approved relief of tiredness claims for caffeine
products sold as medicines not foods. Clearcast had approval
from a metabolic expert.
• Complaint not upheld!!!

95. The Comparative Ad Dispute
• Advert names a competitor
 Therefore may be trade mark issues
 Unnamed comparison – likely to be ASA route
• Compares (a) Price and (b) Flavour
• Television commercial already on air
• Now receive cease & desist letter
• Injunction has been threatened

96. Comparative Advertising: Checklist
• Trade mark infringement
• Comparative Advertising Directive
• Copyright infringement
• Passing off
• Malicious falsehood
• Self-Regulation: CAP & BCAP Code
• Consumer Protection Regulations 2008

97. Comparative advertising: 8 Conditions
• Use of a third party trade mark in an advert is not an
infringement when 8 conditions are met. In summary:
• Comparison is not misleading
• Compares goods/services meeting the same needs or
intended for the same purpose
• Objectively compares one or more material, relevant, verifiable
and representative feature;
• Is not a replica, or confusing or denigratory
• Does not take unfair advantage of the mark

98. Costa Coffee

99. Comparative Advertising
• How can a taste comparison be objective?
 Costa / Starbucks ASA complaint
 Robust market research results justified claim that 8 out of 10
• How can verifiability be achieved?
 Publication of data on websites
• Focus on issues for injunction application
 Damages an adequate remedy
 Balance of convenience: already on air
 Cross undertaking in damages

100. Practical tips for Comparative Ads
• Compliance with CAD is key to avoiding trade mark
infringement – so substantiation is crucial
• Think about all interpretations, not just what you intend
• Ensure the substantiation will stand up to scrutiny
• Obtain a licence to publish proprietary information if needed for
substantiation
• Arrange a mechanism for consumers to verify comparison

101. Thank you

102. Closing Remarks
Giles Crown
Partner, Head of Media, Brands and Technology
+44 20 7074 8090
giles.crown@lewissilkin.com

103. Brand Academy 2011
13 October 2011
#LSBA2011
@LewisSilkin