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Week 3: Legal and IP Frameworks. Comparing Different Case Studies, Media Use and Equity Ownership

Updated: Sep 27, 2023

Weekly Objectives:

  1. Research and analyse the basic pitfalls of illegal practice;

  2. Imagine and communicate the key areas that may infringe copyright or require IP protection in relation to a chosen designed object;

  3. Manage your independent learning effectively.

LECTURE //

This week talks about Legal Frameworks in Design Practise, which wouldn't fit into my consultancy business, however, I do in tend to use this for the community platform; people will use this platform to share ideas. I suppose this would also need to be considered when creating promotional brand content.

  • Use the United Kingdom Property Office to check the name you created.

  • Document and date the creative process

  • Tokyo 2020 logo scrapped due to the public or design outcry around it.

  • Call out culture on social media creates external pressure. Social media is on a global scale and goes beyond jurisdictional boundaries because you can't limit where images will go on the internet.

  • Its more effective to name and shame if they are unable to financially justify legal action. It's important to know what you want to achieve from this? A collaboration? Payment? A licence? Have a legal strategy in place but make sure to get legal advice from the right people.

  • The theatre's case gave them more publicity than when the identity was first released.

  • Infringement of third-party IP for clients to gain more comfort in the originality. The extreme terms for creatives would be to pay legal fees of the client.

  • Co-existence agreement


Case Study: Tokyo 2020 & Theatre De Liege

“The black colour of the central column represents diversity, the combination of all colours,” said the Olympic organisers. “The shape of the circle represents an inclusive world, in which everyone accepts each other. The red of the circle represents the power of every beating heart.”


However, graphic designer Olivier Debie pointed out the similarities between Sano’s Olympic emblem and his own logo for the Théâtre de Liège in Belgium, which he started work on in 2011 (Rob Alderson, 2015).

Another logo that was accused of plagiarism was the Tatíl Design studio’s logo for the 2016 Games in Rio, which was accused of being similar to the Telluride Foundation, a Colorado-based community trust.


Cuthbert the caterpillar case study

Listening to this podcast reminded me of Aldi's recent caterpillar cake and how they changed their marketing strategy to get past M&S's intellectual property claim to the High Court. Aldi launched a campaign called #freethecatepillar, mocking up packaging where the caterpillar 'serves 12 years', and reached out to other retailers to join them in donating profits to charity.

Mandy Robertson is a specialist in commercial disputes, who advises businesses to incorporate a communications plan because this is valuable to handling a dispute and to protect their reputation (which is often more important than the outcome of a single dispute). The focus is often on what to say, who to tell, when and how best to say it. This may include having a variety of narratives or alternative angles ready to utilise at a critical moment in the litigation or simply getting a message out before an opponent takes charge of the narrative.


The lecture talks about how financial growth in a brand or company can open up cases, and looking at this case study makes me wonder whether M&S was waiting until the supermarket grew.


Colin the Caterpillar has been a registered trademark since 2008. M&S has multiple trademarks registered with the UK Intellectual Property Office in respect of the cake including Colin’s name and appearance (the latter being in issue presently).



Chris Do

An interesting point made in the lecture regarding how social media makes it difficult to control where your images will go on the internet. It reminded me of a post made by Chris Do asking his fans not to copy his designs from YouTube tutorials, which is a predicament because there are too many people doing this to take legal action.

As a business, Chris Do uses 'Futur' to teach people how to create their own creative business for free, but one-to-one lessons has a fee. In response to his fans/pupils copying the style of his design, he created a post that told people exactly how to copy his post and then explains that being someone else isn't a good business.

Instagram post: Jan 2021

As my design and carousels evolve, I can’t help but notice how other “influencers” are making similar changes. I even tried “ugly” colors like pink, salmon, persimmon, hunter green and celery. Color combos I thought no one would use. And then... copy. Paste.

It’s gotten to a point that I’m feeling a little crowded like I can’t breathe. I’m not telling you that I own any of this, or that it’s original. It’s not. But it did get me to think: being like someone else isn’t good branding. It’s not good business. It’s not good for personal growth. Why not choose another color, typeface or illustration style?

So next time you are at the ice cream parlor, try going a little crazy. Try French Vanilla. Add some nuts. Find your own take on design. It’s actually really fun.

If not, I’ve included every color, typeface and even the illustrator that I use. I want to make it easier to rip off. If anything it’ll force the conversation, if everyone is doing what you do, what will you do? Better to be an imperfect you than a perfect someone else.


RESEARCH //

Guidebook to intellectual property by Robin Jacob

Patents

Protect a service or product that is better in some way than what went before or a better way of making it. This would probably apply to my own service because it isn't an original idea, its just a different method of advising employers by gaining perspective from both employee and employer. Again, a dyslexic community is known on Facebook, however, this doesn't encourage collaboration. The originality of my business comes from combining both platforms to improve the workplace.


Patents last 20 years from the date of filling in the application, however, publication usually takes place 18 months after the application, which means 7.5% of the fee you are paying is wasted. So it is important for me to be aware that publishing my business before the patent is approved can led to vulnerability, so this would give the chance to develop the marketing strategy whilst that was being approved and gain more work experience in the meantime. It also means I need to make sure my idea is something that would appeal to people in the future - would my mission statement still be valid?


Unregistered Design Right

Free but should invest in ways of recording or documenting the creative process. This only prevents copying, so if others come up with the same design independently, they cannot be stopped.

A copyright is created as soon as a person writes 'original' on their work.



Registered Designs

Fees apply. Placing a copyright symbol does serve as a warning to competitors, however, this only shows the right to prevent copying. Patents allow you to create more of a monopoly.


I would also need to consider this in my business to protect the brand identity.


Copyright through history

Works are protected but ideas are not. So do Graphic Designers constantly at risk because the practise is known to 'borrow' elements of work? What about modern Cubism?


Tom Kulik, an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, shares some interesting insights into copyright laws when social media and art collide. Pinterest, YouTube and TikTok enable users to download, share and even copy posts from these platforms. Original images are repurposed into Facebook memes.

  • Prince's rephotographing of other artist's work

  • From Pablo Picasso’s “synthetic cubism” in the use of newspaper clippings to create forms

  • Andy Warhol's reimagine of Campbell’s Soup can labels

When movable type first came out, printers where cheap and available for poor people. However, once the European governments set up systems of licensing controls over printers, printers couldn't produce the same work and forced prices up - benefiting the printer and the author.


Mary I granted the Stationers' Company to decree who could print books and the right to cease pirated books. This had a Monopoly effect. After the public protest over The Licensing of the Press Act 1662, the Stationers Company agreed to focus on the author's right of ownership rather than publishers - this was when the first copyright act was born, 'the statute of Anne (The Copyright Service, 2021).


Do charities and non-profit sectors have IP issues?

  • Non-profits seeking protection for their intellectual property can raise barriers to exchanging ideas; non-profits can't afford it.

Is it Wrong to sue a Charity?

I decided to look more into the Charity Sector because at the moment I am working within it, so I think it is important to protect both the client and myself.


Dan Pallotta is an expert in nonprofit sector innovation and a pioneering social entrepreneur. He is the founder of Pallotta TeamWorks, which invented the multiday AIDSRides and Breast Cancer 3-Days. He is the president of Advertising for Humanity and the author of Charity Case: How The Nonprofit Community Can Stand Up For Itself and Really Change the World.


Whilst I don't agree with Dan's metaphor of Business being male and Charities being Female as a way of explaining the conflict between justice and social good, I do understand the breach of contract involved.


In 2001, Susan G. Komen used the event concept without permission after signing a contract not to do so: a 7-day, 600-mile bike ride from San Francisco to Los Angeles. The charity won the case. This led another client 'the Avon Products Foundation' to believe the contract wasn't enforceable and they used an event concept without their permission. This charity wasn't so lucky, however, both judges made it clear that the strong societal interest in connection with these brands either impacted their decision or made it harder to enforce the law.


According to 'The Legal Team USA', Susan G.Koman for the Cure changed their name in 2007 to fit their slogan 'for the cure', which they trademarked and sent out cease and desist letters for fellow charities to stop using this language with their branding. They also trademarked the pink ribbon, which led to sending out more letters asking charities to not use pink in their marketing. This reminds me of the Cadbury brand suing for using their trademark colour. Wall Street's Journal questioned how much of the organisation's money is actually going to the cause rather than copyright protection, however, Komen claimed it necessary because donors were getting confused with which organisation was which. Question still remains, those other charities have the same cause as Koman, so why is it important to protect a trademark when you can potentially collaborate.


This research has shown me that charities are competitive, which is shocking to hear. My business idea also fights towards a social cause and I am aware there are many charities out there that do the same, so I need to make sure I am more educated on this subject.


According to Max Ottignon, Co-founder of Ragged Edge (Campaign, 2019), brands can own colours because it is an asset to a brand identity. He uses Cadbury and Coca-cola as an example of recognising brands based on the colour combination. Orlaith Wood, Senior Writer at Reed Words mentions that Colgate and Cocoa-cola don't sue each other despite having the same colours because they are in different sectors, which would explain why Koman was so protective over their use of pink.


Macmillan Cancer Support- green and purple

Cancer Research - Pink, blue and Purple

Breast Cancer Now - Pink and Orange

Children with Cancer - Blue and red

Teenage Cancer Trust - Red and 2 shades of Blue


Ian Armstrong

Iam Armstrong is the founder of Lead Feed Ltd since 2018, which is a consultancy service. The service is designed to be remote based to keep costs down for the client and is very transparent as they confidently display their pricing on the website.


I like this structure they've created with their service and is something that I will inspire how layout pricing in my own business; listing all the services you get with the pricing makes it easier to justify the pricing. The pricing itself doesn't seem overly cheap or expensive, so they are more accessible to startups but still professional looking. Additionally, by creating a monthly quote, they are giving clients the freedom to leave if they choose as well as giving them a guideline on how long the service will take.


Speaking with Ian, like me he is very passionate about using his skills for good as he specialises in helping VCSEs (charities, public service mutuals and social enterprises) grow their business through marketing strategy.



Me - Hi Ian, Lovely meeting you today! You mentioned you have your own business? As someone that is currently studying the business world I am intrigued to know more. Do you manage the businesses on your own or do you have help? How much time is dedicated to marketing vs managing clients? At the moment Im having trouble with quoting and my tutors seem to think my prices are too low, any tips on how to get to the right mindset in doing this(how do you justify a higher price?) Kind regards, Tramaine


Armstrong - Hi Tramaine, the pleasure was all mine! I have been involved in quite a few businesses over the years but my most recent is based primarily around lead generation and marketing automation. I chose this area for a couple of key reasons, namely: Subject matter expertise & home working Ie I didn’t have to think too hard, I could spend more time with my family and get more actively involved in helping others, whilst generating an income. I wanted something that was a bit more “set and forget” so I could free up time. Ironically all of my clients come through recommendations so they know that I’m quite pragmatic and prefer to spend my time delivering as opposed to talking ;-) If I sense a client is going to be a drain on time I have historically upped the price… but I usually get frustrated and bin them off anyway! It’s taken me a while but You need to know yourself and be happy in your own skin. Quoting is always a challenge, especially in a commoditised market. Even more so if you haven’t got a buffer to tough out a “premium” offering. I would play devils advocate with your tutors and challenge them to defend a premium cost against fiverr, let’s say, especially if you don’t have a network to leverage. That said, and understanding that might not be a healthy thing to do, I do have a REALLY DRY book on pricing, which changed my mind set significantly. If you, like me, get off on stuff like that I’ll dig it out. Or, if it’s easier I’ll see if it’s on Audible or I could skim read it and we could get a call in. Typically, higher pricing, for me at least, comes delivering greater value. That is easy for me as I can put a cost and £ benefit against all I do. In a more creative setting there is a Leap of faith on behalf of the purchaser - and without provenance that can be a real challenge. It all depends on your motivations and money, as they say, doesn’t bring you happiness ;-) Not sure if that helps but I’ll put some more thought to it over the next day or so. Wishing you a great night. ATB, Ian


Value-based Fees by Alan Weiss, PH.D

Ian was kind enough to recommend Weiss' book to me, which is perfect for my business plan because it is consultant specific rather than design practise.

  • 'The Ultimate Consultant Book'

  • Value-based pricing: Focus on the long term impact of your service on the client.

  • Alan Weiss has a consulting Firm, Summit Consulting Group, Inc.

  • You can't help others until you help yourself' unless you are secure financially, its difficult to engage in pro-bono work, to contribute to charities, etc. This is important for me to hear because I think Im basing my price on the fact that I want to be more accessible to small businesses that do good in the world. Donating a service requires time and resources, which costs money - if my business grows into a team, I would be in a better position to take on pro-bono work.

  • Pioneered 'Value based' billing since the late 1980s. Its more ethical and productive for the clients.


IDEAS WALL //

  • Typefaces are ineligible for copyright registration, but are eligible for patent protection through a design patent. The first-ever design patent was actually granted for a typeface. Finally, a font name can be trademarked—for example, the name of the commonly used typeface “Palatino” is a registered trademark. A trademark protects what a typeface is called, a copyright protects how a font program is written,protect words, names, symbols or devices that are used in commerce to identify the source of goods or products. A design patent protects letter design—how the letters appear.

  • Read licensing agreement for typefaces before using it. Make sure to look at type foundries with a good reputation because many free fonts are pirated: use Font Bureau, Fonts.com, Typotheque, Hoefler & Frere-Jones, MyFonts and FontShop.

  • When NBC used the typefaces in marketing TV shows “Saturday Night Live” and “The Tonight Show with Jay Leno,” it exceeded this one-computer license. The suit, which sought damages of $2 million, eventually settled for an undisclosed amount.

  • A typeface license for the desktop is not the same as one licensed for web use

Ive checked Adobe font licensing just to see whether any of my past designs would get clients into trouble. You don't need to credit or apply for any license for these fonts, and you could even register for copyright using the font any design.


Tattoo Art

The tribal ink-job on the face of a main character in the film may have been made famous because it is the twin of a tattoo sported by former heavyweight champion Mike Tyson. but it was the tattooist's permission that the filmmakers needed in order to use it. While the two parties ultimately reached an ‘amicable’ resolution to the dispute, Warner Bros was reportedly so concerned when the legal claim was brought that it said in a court filing that the studio would digitally alter the facial design for the DVD release


My business

What are the risks involved in remote workshops? People recording content without permission (copyright)?


WEBINAR //

TM symbol - unregistered design

R symbol - registered design

Why would you add TM to your design for everyone to see?

  • In employment, it's the employer that holds the copyright for the creative work of the employee.

  • For published, copyrighted works, it’s important to give notice that the work is copyrighted and provide the date the copyright began.

  • This is so that the original creator of the work, a photograph or font for instance, gets proper credit first. Otherwise, you run the risk of infringing the rights of someone else and facing unnecessary legal trouble.

  • Conduct a thorough trademark clearance search to make sure the mark you’ve created isn’t already in use.

  • Kunvay is used to transfer copyright and IP ownership to clients. A client is often willing to pay you more for your work when you offer them the option to receive full copyright and IP ownership so they own their work and own their future.

A contract template



Looking at Paul's contracts made me think of Fiver and how you don't need to sign things. Is that better for the designer? Is it lack of protection for the client - they are more at risk of the designer copying someone else's work?


According to the Creative Genius Law, online marketplaces like Fiver use payment as a form of contract, which means the designer owns he copyright until the client pays for the service: ' when the work is delivered, and subject to payment, the buyer is granted all intellectual property rights'. However, they also state sellers on these marketplaces charge extra for when their designs are being used for business.


I think the key focus in this video for me was justifying the price you charge. Even though I have been bringing resources into account, my prices are still too low and I was having trouble justifying a higher quote, however, Roberto Blake points out that design is an investment - if you want to be a professional business, you need a professional designer that gives you certainty over the process and quality of their work.


Miki Hicke's blog explains that Fiver services are legally questionable in terms of IP. Some designers openly provide services where they remove watermarks from stock photos, which are clearly other people's work. Miki even challenged Fiver, asking them how they protect the client if the designer's work isn't their own, and they refuse to claim any responsibility due to being too busy to monitor everything. Small businesses turn to fiver because they are on a budget, and when designers infringe someone else's work, they are putting those small businesses at risk of losing more money.


Tart Beauty Studio as an example, they were sued by Tarte Cosmetics for trademark infringement. https://www.king5.com/video/news/local/seattle/ballard-salon-shares-trademark-warning/281-2349713?jwsource=cl



Tips from tutors:

  • Be organised: consider touch-ups or redos

  • Don't take a style or imagery: Paul's first employee after 5 years of having his studio resulted in his employee using an image from the internet without permission.

  • Re-use fee: Sometimes you can resell your illustration after 3 months of being commissioned (depends on the contract).

  • Look up designs on Google Images before publishing your own design.


WORKSHOP CHALLENGE //

Select a designed object and highlight the key areas that may infringe copyright or require IP protection.



Aldi’s business model

Aldi’s business model is built around lookalikes, hence its long-running advertising campaign: “like brands, only cheaper”. This model sees it as a regular defendant in intellectual property (IP) claims. The UK court’s online filing portal shows that Aldi was a defendant to two sets of IP proceedings issued in 2020. In 2019, five cases were issued against it. Six of those are no longer active and have presumably settled. This leaves two active cases: the present one about Cuthbert and one case issued in 2020. Another way of considering the numbers is that, despite its business model, Aldi is rarely sued and, even when it is sued, it usually settles.



Does Aldi have their own products, and if so, would this need protecting?

According to the Harvard Business School, Aldi's reliance on private label brands gives them more control over the supply chain and allows them to use a business plan called the "just-in-time" inventory model. What that means is that they can order stock when they know they're going to need it without having to worry about whether or not it's going be there on time. As a result, they don't have to keep capital tied up in stock that's just sitting around waiting to be put on shelves (Debra Kelly, 2019).


According to Frozen & Refrigerated Buyer (via RetailWire), millennials are gravitating towards private label brands an average of 32 percent, which explains why higher brands like M & S have started seeing them as a threat and picking up on similarities.


Intellectual property partner Jeremy Hertzog, of law firm Mishcon de Reya, says: ‘Brands are cautious about taking legal action in situations like this.

The brand would need to prove that the copycat product is deliberately out to confuse the buyer into believing that the similar-looking product is actually connected economically to the original in some way.’


Aldi is a German company, so will there be different laws? https://wipolex.wipo.int/en/text/229699


In 2014, Aldi won against a brand called MIL because they couldn't find any direct evidence to suggest that their customers made false assumptions about their product. In the Moroccanoil case “initial interest confusion” of any kind was not established so another dispute must be awaited to provide guidance as to whether it may in some circumstances be actionable as passing off. Aldi showed that a consumer can recognise the difference in the packaging provided once examined, therefore, material transactions would not be influenced by initial interest confusion.


When initially confused consumers realise a lookalike product that caught their eye is not the product they set out to purchase, might they sometimes go on to purchase the lookalike anyway? If such initial interest confusion does result in sales of lookalikes it may be arguable that these sales would otherwise be open to and, in at least some cases, achieved by the referenced products.


In the 2018 Charlotte Tilbury case, Aldi lost as they were being brought to court for copyright infringement, rather than trade mark infringement. When designing their own product, Aldi was aware of the product. In comparison to MIL, MIL held a trademark infringement case against Aldi, which explains why they lost the case.


  • Look at past court cases for Aldi to predict caterpillar case results.

From what Ive learnt from Koren cancer, it doesn't matter whether Aldi offers to fight for the same cause because if you are in the same sector, you cannot appear similar.


M & S has filed a trademark infringement against Aldi, making the claim unlikely to succeed.


REFLECTION //

This week has shown me that even the non-profit sector is competitive despite fighting for the same cause, which has disrupted my idea of collaboration between dyslexia charities.


REFERENCES //

Lecture

Tokyo Olympics Case study

F1 Case study

Zara Case Study



Aldi case study

Chris Do

Research

Charity


Ideas Wall

Webinar


Workshop Challenge


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