Passing Off / Copyright

[jampot]

I know this is slightly Off Topic for this particular forum, but I've given some time to contribute, and wondered if there was anyone with basic experience who could lend an ear to this particular issue.

 

Someone I know started a business this year making and selling handmade jewellery. I won't go into the specifics here, but there are other people (and companies) in the market making similar items - some were around already, some have started since.

 

The key player is actually a company which sells franchises for other people to make their products and resell them locally. Face to face.

 

This week, the person in question received a solicitors letter from this company alleging about 3 different things:

 

1) they suggest that 1 sentence in this person's website is "similar" to 1 sentence in theirs. Each site is probably hundreds of words - so it is highly strange to quibble about 1 sentence (IMHO) - and other websites selling similar products word things in a similar way.

 

2) one of the colours used in this person's website is "similar" to one of the colours in theirs. The colour doesn't form part of their trademark (like Orange!) and isn't even an integral part of either site. Quite laughable really.

 

3) the photography style used for the jewellery is very similar. I'll agree on this point, but if you are selling similar items, it stands to reason that photographs will be similar. The photos for this person's site were done by a professional company and are standard silver metal against a washed out white background which is perfect for both web and printed display. Industry standard way of photographing, but combined with the overall look of the products, I can see why they look similar.

 

Now... the claiming company has requested:

 

1) all photographs be taken down

2) wording be changed on the website

3) colours be changed on the website

4) reasonable legal costs (ie writing the nasty letter) be paid (at least that's what I understood that part to mean)

5) a signed undertaking not to do any of it again

 

The products ARE very similar, but the claiming company knows there is nothing that can be done about that. They can't be trademarked or protected. The wording on the website can be easily changed, and the whole site is due a redesign anyway. It was done quickly to launch the business and is functional but not snazzy.

 

The person has contacted a lawyer for advice and has been told it will cost at least £500-£750 to begin to defend the claim. We all think it is simply posturing by the claiming company, who know they are losing sales to other people selling similar things, but can't do anything except go after trivial things. I should repeat - the photos aren't copies, but are original photos done by a reputable specialist product photography company. The website isn't a copy - it was created using a standard template (colours and all) in a Microsoft package. The text which bears a resemblence is limited to 1 sentence over the entire website.

 

They are claiming that this person is infringing their copyright and passing off as them. Despite this person having a full "about me" section on their website, and no mention of this other company, no shared logos etc.

 

ANYWAY... ENOUGH BACKGROUND

 

As the website is going to be redesigned shortly, it has been decided to amend the wording, the colourscheme will be redone anyway (won't be using a template, but a proper web design service) and if necessary, will send some of the products back to the photographer and have them shot from a slightly different angle.

 

In the meantime, as the lawyer wants at least £500 to even write a letter back (!) I think I would like to send one myself.

 

I wish to partly refute their claims, refuse to sign their undertaking, refuse to admit ANY liability, but also (if necessary) explain that the website will be revamped over the coming month or so, and their comments will be taken on board.

 

The claiming company (which sells franchises) only sells face to face. The other person sells via mail order, through some reputable gift company retailers, and also face to face. Never have they pretended to be the other company and any similarities in website and product photography are linked to the similarities of the product design. It is bullying, basically, but at the rates the lawyer wants to charge, it is impossible to defend.

 

Do you think such a response would be sufficient? They aren't claiming share of profit or damages - just an undertaking to stop doing it. The person feels that she doesn't have to stop, but as it is easier to redesign (and was intending to do so anyway) feels this is the best course BUT doesn't want to accept any liability in case they later decide to take this change as an admission and press a case for damages - ie it wouldn't look good if the website changed overnight with no explanation and no denial of liability.

 

Does this make sense - and is there anyone here versed in this particular branch of civil law that can offer me some quick assistance.

 

Forgive me for being vague with detail but obviously I don't wish to put the websites into the public domain in this fashion when there is obviously an ongoing problem.

 

I thought if I set out a response beginning "Without Prejudice" then disagreed with their terms BUT put forward an alternative suggestion - a redesign of the website is due anyway - do you think this is enough?

[doompixie]

Well that sounds rather petty. I'm currently working on setting up something similar (selling handmade jewellery) so I'd be interested to hear how this works out.

 

You seem to be on the right track, but I have no expertise in this area, so good luck!!

[jampot]

It is rather petty.

 

I think the claiming company is rather worried - it makes its money from selling a small amount of jewellery, but I daresay a larger amount for sellign the franchises (a 5 figure sum) and who is going to want to buy a franchise for that money, when it is possible (if you already have the skills) to do it on your own.

 

Without a strong brand or a unique product, I fail to see what they can actually "franchise"... but that isn't my problem, or that of the person I'm talking about.

 

I guess what we should be looking for is the best way to make the situation just go away with no more anxiety or stress, but also without just backing down - purely out of principle - but certainly without appearing to admit any liability. There has been no attempt to copy, trade off their goodwill, or pretend to be them in any way.

 

I think theres a fine line to tread, and I want to make sure anything I write doesn't inflame the situation - yet at the same time, makes it clear that this person isn't to be walked all over.

[bed32]

I assume you are sure that whoever built your site did not copy elements.

 

If so then a simple letter telling them to get lost would be most appropriate.

[Movingon]

Dear Sir

 

I am in receipt of your letter dated regarding your client's copyright. I can confirm that:

 

1. My website bears no similarity to your client's despite selling broadly similar products.

 

2. The photographs are © 2007 and in no way intended to bear any similarity to anything but my products.

 

3. I will not be making any payments to yourself or your client.

 

4. I will not be signing any undertakings in relation to this matter.

 

5. Nothing in this letter constitutes either an admission of liability or agreement with any of the terms of your communication.

 

I now consider this matter closed and will not enter into any further correspondence thereunto.

 

Yours faithfully

[Movingon]

I reckon if you send this they'll be advised not to proceed any further due to the cost and the unlikelyhood of a win. Just my opinion you understand

[jampot]

I reckon if you send this they'll be advised not to proceed any further due to the cost and the unlikelyhood of a win. Just my opinion you understand

 

Cheers!

 

Its certainly short and to the point.

 

Do you think there is any mileage gained in expressing an opinion as to "why" the site isn't similar?

 

And not worth some "nice" information to them, saying the website will be redesigned shortly?

 

I did a very simple website to begin with, no shopping cart, no order database - just Paypal button integration and a standard template - and the main reason for the redesign is to "upgrade" it to a proper e-commerce sort of level - shopping cart, merchant facilities, reseller password-protected pages, backend order database etc. It isn't in response to their letter, but is it worth mentioning its going to happen, just to appease them - or do you think saying as little as possible, denying everything and waiting for their comeback is best?

[Movingon]

I did put in about a redesign coming up, but it looked weak and like you were trying to do what they asked so I took it out. I would leave it out of yours IMO.

 

By the way - if you put the bit about not entering any correspondence, then DON'T enter into any! Don't reply to ANY more of their letters, even an LBA. It will drive you crazy wanting to answer but you shouldn't.

 

The next thing you should reply to is a Claim - Notice of Issue; where you will acknowledge the claim and state your intention to defend all of the claim. You are under NO OBLIGATION to them and they are simply sabre-rattling; and I doubt you will hear any more. In the meantime your already planned redesign wil go ahead. The single sentence can be left alone if you wish; especially if it's not directly related to describing or marketing the product... they can't copyright a single sentence in a random context!

[Movingon]

By the way; gather evidence from other sites that the photography is pretty standard in this type of market - print it off and also keep the URL's to make sure you can demonstrate that it is a reasonably widespread format.

 

No, don't express what would be purely opinions as to why you don't think the sites are similar. That would be for a court to decide.

[jampot]

By the way; gather evidence from other sites that the photography is pretty standard in this type of market - print it off and also keep the URL's to make sure you can demonstrate that it is a reasonably widespread format.

 

No, don't express what would be purely opinions as to why you don't think the sites are similar. That would be for a court to decide.

 

Already looked into the photography angle. I did a quick google for "silver jewellery" and the first 2 sites I found had similar photography styles - the product (silver metal, obviously) photographed against an invisible white background, blending into the white background of the website.

 

It is probably how it has been done since the first camera was invented. You may as well try and copyright a "passport" photograph on the basis that it shows the head and shoulders of a person against a manky curtain.

 

Cheers again...

[jampot]

Tom,

 

I put together a letter over the weekend. I did deviate slightly from your template, as I decided that the best course of action for the person I was writing on behalf of would be for the other company to drop the matter well before court, as we suspect that they are "fishing" and had they thought they had a valid claim, they'd be trying to go after loss of profit or another financial remedy. So I did put in some counter arguments suggesting that, as far as we were reasonably aware, their client doesn't hold the copyright to photograph a piece of jewellery from a particular angle, nor on a particular background. There are similarities in the silver "findings" used, but we've no evidence that their client has an exclusivity agreement with any supplier (they're widely available in Hatton Gardens!).

 

They also complained that "pale blue" was used on the website, but not only are the 2 blues on this website totally different to theirs, blue doesn't form a feature part of EITHER website. Furthermore, they don't own copyright to any pantone (as far as I'm aware) and certainly not to a an entire primary colour.

 

Their solicitor had the gall to suggest (I think accidentally because it didn't form part of their argument!) that the products were identical. As far as I'm concerned, this is a grave misrepresentation. Each of this person's pieces are totally unique and no 2 of her own pieces are "identical", so how they could be "identical" to the work of their client is a mystery. I've asked them to refrain from using the word " identical" as I believe it conveys a very specific meaning, but I'm sure it was an oversight on their part. They also claim that the methods used to produce the jewellery are the same. Wrong again. Their clients know full well that the methods are totally different, and even go to great lengths to explain so on their OWN website.

 

Anyway, that's all just filler before the main course. Here's the interesting information.

 

The solicitors they have "employed" are a large firm. So large, when my friend contacted a solicitor for free advice, she was told "they must be serious if they're using XYZ".

 

But isn't it amazing what google can tell you. One of the directors of the client company, on whose behalf the letter was sent, is employed by this firm of solicitors, although isn't a solicitor themselves. As far as I am concerned, this puts matters into a completely different light. I now strongly feel that there is something underhand going on here.

 

I did some background checking at the weekend, and it seems that there is no current guidelines from the regulatory body regarding doing work for an employee, however this IS added in regulations which come into force in July 2007.

 

So... I rebutted all of the points regarding copyright and passing off, I did manage to word (but practically hide. why make a big deal of it?) a paragraph stating that the website was undergoing redesign to add additional E-Commerce functionality, but finished with what I hope to be a trump card:

 

*********************************

"It has also come to my attention that there is a direct link between XYZ and its client, ABC. I understand that XXX XXX is both a director of ABC and a Blah Blah Blah at XYZ. Should this information be correct, it is sufficient to raise clear concerns regarding the conduct of XYZ in dealing with this matter, particularly in light of some of the points raised in your letter dated 4th April. As XYZ is regulated by the Law Society, I should like to draw your attention to The Law Society’s “Regulations and Professional Conduct” guidelines, specifically Chapter 17.01, entitled “Fairness”:

Solicitors must not act, whether in their professional capacity or otherwise, towards anyone in a way which is fraudulent, deceitful or otherwise contrary to their position as solicitors. Nor must solicitors use their position as solicitors to take unfair advantage either for themselves or another person.”

I also would like you to clarify XYZ's own policy regarding their suitability (or otherwise) to act on behalf of their own employees, particularly where the matter does not relate to, or arise out of the work of that employee.

Relating to this specific issue, I will give you 7 days to respond, and look forward to hearing from you by 4pm on 24th April. If I do not receive a satisfactory response by this time, I shall pass any correspondence onto the Law Society and escalate the matter further within XYZ.

 

*********************************

 

Further googling reveals that the solicitor who wrote the letter is barely more than a trainee, if that.

 

It is reasonable to assume that ABC is using his position withing XYZ, and using this "trainee" solicitor to gain an unfair advantage.

 

Certainly the tenuous (at best) nature of some of the points they raise, coupled with using such phrases as "identical" (which clearly have no basis in fact) make it clear that, if this were pressed, there may be a case to answer.

 

Certainly, if I were the solicitor who wrote that letter, I'd be making doubly sure I sent the next letter (if, indeed, there is one) perfectly.

 

I would suggest, however, that unless ABC is considered to have a watertight case (and in a grey area of law, this is unlikely) that XYZ won't wish to act any further in this matter - and maybe the Senior Partners might like to know what their staff are up to.

 

I'd appreciate any comments. The letter gets posted to them today and emailed tomorrow, as those are the methods they used to send the original correspondence.

[Movingon]

Wow... you've gone far beyond what I thought you would but I think that you have large cojones to be taking this on so thoroughly. I agree that the information you've found leads to an amount of suspicion and I also agree that they have absolutely no basis for this letter. We're getting into areas I'm not experienced in though; certainly I've nothing against sending this but I may be missing some implications. Unless you're 100% certain of the strength of your position already I would seek some additional advice from either rosiecotton, zootscoot, Richard Spud or JonCris before you send.

As I say, entirely up to you though!

[jampot]

Ok, so how about another angle of attack...

 

Am I right in thinking that copyright "protection" is similar to trademark and patent stuff, where I BELIEVE that you have to take every possible steps to protect your IP? So lets say I owned the copyright to something and knew of a handful of people who were allegedly infringing. To show that I was serious (in law) about protecting my IP, would I have to defend it against all of these other people?

 

I ask, because the photographs in question have been used elsewhere, by genuine, well respected online Retailers. The photographs which this company alleges infringes their copyright are, in fact, used on one particular internet retailer who sell, amongst other things, these items of jewellery.

 

What is interesting - my friend received an order last week (probably after the action had already begun) placed by the very person who is both a directory of ABC and employed by XYZ - via this internet retailer. There's no attempt to "hide" who is making the order. Obviously the motives were questioned, but it was agreed with the retailer to go ahead with the order - which will arrive in their packaging (not that of my friend).

 

There could be any number of reasons why this person would wish to place an order - but to receive a piece of jewellery isn't really one of them. My gut feeling is, they want to check out their "competition" - but the fact that they've ordered indirectly was interesting in itself.

 

But what IS now clear - this person MUST know, because they've placed an order, that another website is using images which they already feel infringe their copyright. As far as we know, they haven't (and won't) begin action again this retailer. I wonder why.

 

But if, to protect what they believe is their IP, they HAVE to go after anyone using similar images, they don't have a choice, do they?

[louiboy]

Been trying to avoid this thread Intellectual property is one of my favourite topics.

 

Intellectual Property matters usually require specialist solicitors. It's a minefield of rules regulations and concepts.

 

Copyright protection is different from trademarks and patents.

 

Copyright starts at the conception of the work. It is automatic.

 

Trademarks and patents require evidence of the individuality. Lots of hoops to jump through some fee's to pay. Intellectual Property Office

 

Examples copyright:

Take a picture the image is mine I own the copyright.

Create a logo it's mine I own the copyright.

Create a painting, same as above.

 

A copyright can be protected (warned off) by adding the name of the owner and/or year of creation. The © character can be used.

 

In the pictures/images there lies the minefield. If you take an image/picture and alter/manipulate it substantially. The copyright on the new image belongs to you. It is now an original creation.

 

Trademarks:

You can create a logo and declare it a Trademark by adding the ™ quite legally. It's your to do that. When it is a registered Trademark the rules change. The copyright and patents office will examine the Trademark for uniqueness and originality. Make an assessment. If it passes assessment then it becomes a registered trademark and protected. ®

 

 

I don't think there much to worry about. If they are that concerned have they sent cease and desist notices to everyone else. One of the sites on the first pages of Google belongs to people I deal with and they get this problem from time to time. Usually a small company acting in ignorance.

 

1) Photographs. Your photographer took them, original works. Copyright automatically assigned. it doesn't matter if they are similar. Still classed as original work.

 

2) Wording similar. This only applies if your are Mr Kippling. "Makes exceedingly good cakes" Mr K has registered trademark for these words but only as the strap line for the box in relation to his baking venture. Anyone not selling cakes can use them as they see fit.

 

3) Colours. Some colours can be part of registered Trademarks. Coca Cola have the red as part of their trademark. Same as Mr Kippling Coca Cola can use the red with their black fizzy drink. Other drinks manufactures cannot. Everyone else can paint the world in a similar shade of red. Coca Cola mixed their own shade of red and have it patented.

 

If your colours are not the same rgb values, pantone colours, CMYK values as theirs. They are not the same. I believe there are over 200,000 shades of the same colour. Theres more than 1 black.

 

4) legal costs. What legal costs they have proven nothing.

 

5) Signed undertaking. What for?

 

I don't think the people who have sent the letter have fully understood the time and expense required to purse for copyright/trademark infringement.

[jampot]

louiboy,

 

A huge thanks for your detailed response. It does put into words some of the things I was thinking.

 

Can you confirm that when you say:

 

If they are that concerned have they sent cease and desist notices to everyone else.

 

Presumably sending cease and desist notices to ANYONE using those photographs would be seen as a REQUIREMENT, and if they didn't do so, they would find it hard to justify a single instance?

 

I don't think the people who have sent the letter have fully understood the time and expense required to purse for copyright/trademark infringement.

 

I agree. However, the (just out of short trousers) solicitor DOES specialise in IP - the caveat being, she's acting on behalf of another employee in the firm, so I feel it is unlikely to be a serious attempt at anything other than "creative bluff and bluster".

 

Whilst I totally agree that my friend hasn't infringed on their copyright (if, as you say, original photograhs can't infringe the copyright of someone else's similar photos) I think the case they are making is that, when you add up a few little things, the whole impression is "passing off"...

 

Not only do I utterly refute this, I also believe that pursuing a "passing off" infringement is even harder than copyright! Especially as there is nothing even remotely to suggest that my friend has used (or traded off) their name, own images, logo, customers, suppliers etc.

 

I could reasonably expect a solicitor specialising in IP law to be clear about what is copyright infringement and what isn't. Depending on the response to the letter I have written, I may press this further with the Senior Partners and with the Law Society, as I think they've gone way beyond what a solicitor should be doing, particular as the relationship with the client is so interwoven.

 

The new guidelines which come into force in July appear to make it very difficult (if not impossible) to "charge" an employee if you do work on their behalf, and although I couldn't find anything specific on the current Law Society guidelines, I would guess if they're bringing that in, it is something which is currently frowned on.

 

So I'd love for my friend to agree to pay their charges, ask for an invoice, and then shop them to the regulator.

[Movingon]

Nice one Louiboy - this has effectively fleshed out my letter of above with a nice bit of experiential background.

[louiboy]

Presumably sending cease and desist notices to ANYONE using those photographs would be seen as a REQUIREMENT, and if they didn't do so, they would find it hard to justify a single instance?

Cease and desist is the copyright equivalent of a Letter Before Action. Normally it outlines the breach and what is required to remedy the breach. (default notice) and a time-scale to comply.

 

The cease and desist can be bypassed and straight to legal action. Just depends on the scale of the infringement.

 

Three main point need to be considered for Passing Off Taking Action

Reckitt & Colman Ltd v Borden Inc’ (1990)

 

I popped few of the Silver Jewellery sites open and it appears to be a standard industry practise to photograph against a white/off white back ground. Most of them have the words silver or Jewellery in the name. Several sites using the same page template for layout. Yet each was was distinctly different.

 

Passing Off requires that the visitor is fooled into believing they are elsewhere.

[jampot]

Cease and desist is the copyright equivalent of a Letter Before Action. Normally it outlines the breach and what is required to remedy the breach. (default notice) and a time-scale to comply.

 

The cease and desist can be bypassed and straight to legal action. Just depends on the scale of the infringement.

 

Three main point need to be considered for Passing Off Taking Action

Reckitt & Colman Ltd v Borden Inc’ (1990)

 

I popped few of the Silver Jewellery sites open and it appears to be a standard industry practise to photograph against a white/off white back ground. Most of them have the words silver or Jewellery in the name. Several sites using the same page template for layout. Yet each was was distinctly different.

 

Passing Off requires that the visitor is fooled into believing they are elsewhere.

 

Thanks louiboy - so the Cease and Desist letter should be sent to any website using the images, that the claimant knows about?

[louiboy]

Thanks louiboy - so the Cease and Desist letter should be sent to any website using the images, that the claimant knows about?

In theory yes. The claimant should be sending Cease and desist letters to any company/website that they feel are infringing their copyright/IP. Why single out 1 when they all use similar images.

 

I suspect your friend may be singled out for special treatment. Do they live/trade within a reasonable distance of the claimant. Otherwise, how are they effecting the claimants business?

 

The other jewellery website was based within 20 miles of a local store that took offence that their customers used the shop to view jewellery and then bought online.

[jampot]

That's good news then. The claimant is singling my friend out because it appears that they fear competition. Their revenue appears to be generated mainly out of the sale of franchises to make this specific jewellery, and if there isn't one close to my friend, I'm sure they'd like there to be. Haven't checked to be frank, as they market purely "offline", face-to-face (not even from a store) whereas my friend sells mail-order (directly and indirectly) as well as travelling to various contacts she already has, and selling that way.

 

I would imagine she is affecting the claimant's ability to sell more franchises, as well as affecting their franchisees' sales (and hence their own royalties).

[WormHasTurned]

Is your friend already aware of this organisation ACID - Anti Copying In Design ?

 

As your friend is creating unique designs it is worth them having a look at.

 

As for 'similar colours' - what about all the supermarkets and their own products which just happen to have similar colours to market leaders - whether cornflakes or soap powder?

[Movingon]

I think we've already established that the claims made by this other firm are nonsense... what we need to do now is get the letter sent and await the response.

[jampot]

I think we've already established that the claims made by this other firm are nonsense... what we need to do now is get the letter sent and await the response.

 

It has been sent...

[jampot]

Quick Update...

 

Their solicitors wrote back quite quickly, with exactly the response I expected.

 

They note the 1 sentence (in about 4 well worded pages) where I mention the redesign, and appear to have backed down.

 

"We note your comments in relation to copyright and passing off, however, given your decision to redesign your website we reserve our client's rights pending the completion of the re-design. We assume that the changes to your own website will be reflected in the photography provided for use to third party on-line retailers such as..."

 

So on that score, fair enough. I like how she can't choose whether to use "redesign" or "re-design". I like her assumption, also. No mention was made of changing ANY photography, so its a bit silly of them to assume that, but that's down to them...

 

In answer to the quote I outlined in a previous post:

 

"We do not understand the relevance of your reference to the Guide to the Professional Conduct of Solicitors given that we have at all times acted in good faith on our client's behalf. In any event, XYZ left his position as XXX XXX XXX in October 2006."

 

So what? The new SRA guidelines apply equally (if I'm reading them correctly) to both current AND ex-employees.

 

As the guidelines come into force in 3 months time, it isn't unreasonable to expect one of the largest law firms in the UK to already have a policy which takes them into account.

 

I think I'll put together a follow-up letter this weekend. I'll acknowledge their response to the copyright / passing-off, but make no other statement about that. Its pretty obvious they aren't considering further action. I didn't give any dates when the redesign will be complete, and they haven't asked for any. It is likely to be at least 3-5 weeks.

 

But I *will* press for their own internal policy regarding acting on behalf of ex-employees.

 

So - thanks to all who gave advice on this. I actually enjoyed writing to them, and was looking forward to their squirming response. I wish I could have been a fly on the wall when they opened the first letter...

[Movingon]

Hehehehe!! Nice one! Obviously as your photography is © then no changes to it will be appropriate or required. They can assume what they like and you need neither confirm nor deny their assumptions.