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Copying without infringing: conference report 1

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

"Copying without infringing" is the annual conference run in London by CLT and which tackles the borders of acceptability of third party activity which involves the use of the IP of others: how can liability for infringement be avoided? A small but select gathering met at the Prudential Building's Holborn Bars conference suite to address this question.

The Pru: often admired but never copied ...

Paul Joseph (Reynolds Porter Chamberlain), using as his model the invention of a "Rasberry" (sic) keyboard-enabled smartphone, opened by considering how this product, so redolent of the BlackBerry", could be made without infringing the various IP rights in the copied product. Options ranged from taking a licence (which might not be granted and which causes problems if, after a licence is refused, the would-be licensee uses the IP anyway), through purchasing the rights in question to blatant infringement. Paul pointed out the dangers of "IP creep", where a licence spreads to cover subject-matter that runs wider than the IP itself, such as the licensor's materials.

Workarounds are also a way of avoiding incurring liability for infringement, said Paul.  Successful workarounds enable the developer to retain all the profits safely, but they can go wrong and might look like rubbish. There is tension here between the legal imperative (stay far enough away to avoid infringement and save money) and the market imperative (get as close as you can in order to meet consumer expectations and make money). Other marketing techniques under review included comparative and referential advertising as well as parallel importation. These too have their problems, as European Court of Justice case law has indicated.

Mars ice cream: others have entered the same market, but there's no need to copy

Brand warrior Dawn Franklin (BrandRight) then tackled lookalikes.  Three questions fell to be answered: (i) is product imitation the sincerest form of flattery? (ii) what are the legal and commercial issues? (iii) can lookalikes be developed into successful brands? Dawn distinguished between me-too products, which offer consumer choice because they can be easily distinguished from one another, and me-too branding and packaging, which is a parasitic use of the design and investment of an original product.  The introduction of lookalike brands on the supermarket shelves may have short-term advantages for the shopper, but in the long run they are detrimental, since they displace genuine competitor products.

If this read 'Complete', would you think it was still Colgate? It's easy to err ...

Dawn drew on British Brands Group figures (April 2009) showing that 33% of shoppers admitted to making mistakes when shopping for brands, a significantly high figure.  Why is this figure so high in the UK? One reason is that the effect of the Trade Marks Act 1994 is limited -- it concentrates on whether a consumer is confused into thinking one trade mark is, or is related to, another one rather than looking at the consumer's decision-making process and the manner in which messages from goods displayed on sale are received by the consumer.

The prospects for lookalikes developing as brands in their own right are not great, Dawn explained. They generally have nothing to offer but their price-competitiveness -- though major retailers can deploy them as a means of boosting their retail brands, though the subtle shift of their own-brand lookalikes from cheap alternatives to premium products.

Full post as published by IPKat on November 17, 2010 (boomark / email).