Dua Lipa is being sued by Intergral Images for posting a photo of herself, taken by Integral Images, in February 2019 on her Instagram page. Intergral Images has stated that the basis for the claim is that Dua Lipa has profited from the photo as her Instagram page is also a marketing platform for her music and the photo was shared without their consent. Integral Images applied to register copyright for the image, and the request was granted in February 2021 by the US Copyright Office.

Photo by Brett Sayles from Pexels

Copyright is a legal right, giving the owner exclusive control over their work and how it is used. Copyright infringement in the UK is largely governed by the Copyright, Designs and Patents Act 1988. In relation to copying work, the key test is whether a substantial part of the work concerned has been copied as stated in section 16(3) of the Act and in determining substantiality the test is qualitative not quantitative. The courts will look at the quality of the parts taken, not necessarily the amount.

It is important to protect your work and prevent others from using your work without your permission. If you require legal assistance in relation to copyright or copyright infringement contact Christopher Buck, Associate Partner in our Business Services Department who will be happy to assist.

Photo by Sora Shimazaki from Pexels

The Commercial Agents Regulations 1993 (‘CAR93’) regulate the relationship between a commercial agent in the UK, and their principal. The CAR93 derives from an EU directive, namely, the EU Commercial Agents Directive. CAR93 defines a commercial agent at Article 2(1) as: “…a self-employed intermediary who has continuing authority to negotiate the sale or purchase of goods on behalf of another person (the “principal”), or to negotiate and conclude the sale or purchase of goods on behalf of and in the name of that principal…”.

For commercial agents in the UK whose agreements are governed by English law, there will not be any significant change in the short term. However, if the UK Parliament decides to modify or repeal the CAR93 in the future, then this could affect how agents whose agreements are governed by English law will be treated.

For further information see Commercial Agency Agreements or contact Christopher Buck, Associate Partner and Solicitor, on 01908 660966 / 01604 828282 or by email at Christopher.Buck@franklins-sols.co.uk.

Photo by Pexels

Passing off and trade mark(s) are both important to businesses. Passing off is a common law tort, which helps businesses protect goodwill that they have generated in their business and which is accrued to them, which is generally done by the provision of goods or services to consumers.  Goodwill is said to be the attractive force which brings in customers and helps return them and passing off protects against misrepresentation, whether intentional or not, by third parties which could damage that goodwill.

In contrast, a registered trade mark is a property right that is granted by statute upon application in respect of certain indicia for certain goods or services and its purpose is to distinguish the goods or services of one undertaking from another undertaking.  The right that is granted is not a positive right to use that trade mark on the market.  Instead, it is what is termed a negative right – being a right to prevent others trespassing within the scope of that registration.

Why are they important for businesses?

The reason that trade mark rights and the ability to sue for passing off are important for businesses is it relates back to what drives revenue to a business.  Every business will supply goods and/or services to customers to make money and generally they will be supplied to customers under a distinctive name, typically a brand, so the customers can recognise them when they see them on the market and repeat that experience.  Therefore, being able to protect the revenue stream by preventing competitors trespassing within your market space not only helps to maintain market share but can help the business grow.

Another reason why they are important is that, if your business is looking to raise investment or even sell the business, they can be very valuable, saleable assets.  As such, if you are doing due diligence on a business, one of the things that gets asked quite a lot by investors or buyers is the position with the intellectual property – for example: do you have registrations and are things protected?  Generally, the more complete that portfolio, the better the investment or price will be.

How are they different from each other?

The key differences between passing off and trade mark infringement relate to the constituent elements to what a claimant has to prove and what the court will look at. 

In passing off, a claimant will have to demonstrate that it has protectable goodwill and that might also include the geographical scope of that goodwill and the type of scope that that goodwill relates to in terms of the type of product or service that is being provided.  It will then need to demonstrate that the defendant has made a misrepresentation, again whether intentionally or not intentionally, and that it has then suffered damage as a result of that.

With registered trade mark infringement, you start off with the claimant’s trade mark.  You then take the claimant’s trade mark and the defendant’s sign and compare them.  You then compare the claimant’s goods and services covered by the specification with what the defendant’s good and services are.  From there you move on to see whether it fits into one of the types of infringement listed below: 

Why is having a registered trade mark preferable?

The advantages of having a registered trade mark as opposed to only relying on passing off are that a registered trade mark automatically covers the full territorial scope, so for example if you have a United Kingdom trade mark it will cover all of the United Kingdom, whereas at the moment you may only be trading in a limited area of the territory.  Whereas in respect of passing off, if you are only trading in a limited area, it is possible that your rights, the goodwill you have accrued, might be limited to that area.

The next reason is that the evidence in passing off matters can be quite onerous in that you have to have cogent evidence of goodwill and a misrepresentation.  Generally, the courts will be looking for clear evidence that people have actually been deceived by the misrepresentation.  Whereas with trade marks, the court is really looking as to whether in its mind there could be a likelihood of confusion.

The other advantage of a registered trade mark is that for trade marks which have gained a reputation, so they have been used for a certain period of time and people recognise them, they can rely on not only people who are selling similar or identical goods and services but also potentially dissimilar ones, in a way that their use by the third party takes unfair advantage of its reputation or is detrimental to it.

The interrelation between the two

The way that passing off and registered trade marks interrelate is that quite often claimants will plead both causes of action, so a claimant may have a protectable goodwill through its trade but it may also have a trade mark registration.  So it is quite common to see both being pleaded.

Where they further interrelate is that generally with registered trade marks it is a first-to-file system.  So if you are the first on the file, registered, you own the trade mark.  However, that trade mark can be attacked as to its validity through passing off.  The way that works is that someone else can file for a declaration of invalidity of the registered trade mark on the basis that at the filing date of the mark they had a protectable goodwill and notional and fair use of that trade mark would amount to passing off.  So passing off can often be used to attack a registered trade mark.

Contact Us

If you require legal assistance regarding any intellectual property matters, please do not hesitate to contact Christopher Buck, Associate Partner in our Business Services Team, on 01908 660966 / 01604 828282 or by email at christopher.buck@franklins-sols.co.uk who will be happy to assist.

How might your commercial contracts be affected by the end of the Brexit transition period, and what can you do to protect your position?

On 30 December 2020, the UK government and the European Commission signed the EU–UK Trade and Cooperation Agreement (TCA) which now governs the trade relationship between the UK and the EU following the end of the transition period on 1 January 2021. The following checklist sets out some of the key provisions of a commercial contract that will need to be considered.

Click here for a downloadable PDF version.

For legal advice and assistance, contact Christopher Buck, Associate Partner & Corporate Solicitor, at Franklins on 01908 660966 or email christopher.buck@franklins-sols.co.uk.

To describe 2020 as a rollercoaster would be an understatement. In the course of a year we have faced two national lockdowns, a series of local lockdowns and continue to face restrictions on our daily lives. Health and wellbeing is paramount, but naturally the impact on businesses has been unprecedented and never has it been more important to ensure that your business is up to date and compliant with the current regulations and best practice. Doing so not only can avoid claims and unwarranted disputes, but it can protect and maintain the value of your business for the future.

Key things that you should consider are:-

Employees

‘Furlough’ is the buzz word of 2020 when it comes to employment, with many taking advantage of the government backed scheme to retain staff and maintain livelihoods. Ensuring that your scheme is compliant and that communication with staff is clear can avoid claims and disputes.

Premises

With a nationwide-shift to working from home where you can, it is only natural to consider the use of your premises and if it is still required. Many are finding that their employees are equally as efficient from home and prefer the flexibility. If you find yourself in this situation, you should review your Lease to know where you stand on effecting any changes necessary – possibly saving costs in the long-run.

Contracts

With supply chains disrupted and consumers heavily reliant on quick deliveries, making sure that you have robust contracts in place to deal with the impact of lockdown and the changes in how we do business is fundamental.

Governance

Whether you operate a company or are in a partnership, you should ensure that the documents governing the relationship between your business owners are up to date and properly address the ‘what if’ scenarios that, unfortunately, more recently many have been forced to face. How you deal with the incapacity or, in the worst case, death of a business owner can have a substantial impact on its continuity and ability for the business to survive. If you haven’t reviewed your Articles of Association, Shareholders Agreement or Partnership Agreement recently, undertaking this exercise is key to ensure that not only are the relevant concerns covered off, but that the parties clearly understand the documents in order to avoid a dispute in the future.

These are just a few key areas that can have a big impact on your business that you need to consider; this is both in terms of your commercial operations but also in avoiding claims and disputes. But looking at the bigger picture, fundamentally ensuring that your operations are up to date and compliant underpins the value of your business and any potential sale.

As you look to 2021 and the future for your business, you may be considering your own exit strategy. Many businesses do continue to adapt and thrive despite the pandemic and you may find yourself negotiating a sale of your business. Whether this is in 3 months or 3 years’ time, your buyer is going to scrutinise your operations from a commercial, accounting and legal perspective. The question is, will you come up to par? Your offer price would be subject to due diligence and if your buyer unearths legal issues in the course of negotiations, you may find your purchase price reduced or that you become exposed through onerous indemnities to get the deal over the line. To avoid this, you need to ensure that the decisions that you make today ultimately are in your businesses’ best commercial interests, and therefore can still stand to benefit you tomorrow.

The sales process can be daunting, but if you plan your exit and prepare you and your business for the sales process you can address issues in advance and put yourself in the best position necessary and maximise on your sale. Therefore by scrutinising your operations now and ensuring that you are adapting to the pandemic in a compliant manner you are protecting not only your business, but also your own interests in the future.

For information on all our Corporate services, contact Holly Threlfall and our Business Services team on 01604 828282 / 01908 660966 or email BusinessServices@franklins-sols.co.uk.

The Commercial Services Team here at Franklins have been working closely with our clients to help alleviate business pressure during the Coronavirus pandemic.

These unprecedented times have, undoubtedly, placed undue constraints on business relationships and the Commercial Services Team are here to help those seeking to manage their contractual liabilities and obligations at this difficult time.

Christopher Buck, Associate Partner in the Commercial Services Department here at Franklins has been providing effective and diligent legal advice to both businesses and consumers alike during the Coronavirus outbreak. Just some of the legal support he has provided to date includes advising wedding venues and caravan parks as to their contractual position with the aim to provide them with the advice they need in order to make informed decisions about how to continue to maintain and, if required, how they may terminate, any existing contractual relationships

Our Commercial Services Team can also provide advice and support in the following areas:

• Understanding your contractual position, obligations and liabilities in the context of the law of England and Wales;
• How you may seek to terminate a contract, including an analysis of any force majeure provisions contained within a contract, or in the absence of such provisions the doctrine of frustration and how this may apply;
• Your ability to suspend or postpone services and/or payments that may be due now or in the near future; and
• An analysis of directors’ duties in light of coronavirus and how to ensure you avoid personal liability should your business be in financial difficulty.

In light of these ever-changing circumstances, it is crucial to act now rather than later! If you require any legal advice on commercial contracts or insolvency issues, please do not hesitate to contact Christopher Buck on 01908 660966 / 01604 828282 or via email at Christopher.Buck@franklins-sols.co.uk.

The United Kingdom along with the rest of the world is currently in unchartered territory. Extensive travel bans have been implemented, schools have been closed and the stock markets are in freefall with the FTSE 100 falling to levels not seen since the financial crisis.

It has become apparent that no government was adequately prepared for a pandemic of this nature and it is undeniable that the uncertainty is worrying for all sectors of the economy.

With that being said, it is inevitable that commercial contracts are being delayed so it is worthwhile taking the time to assess what your legal options are if you are unable to fulfil your contractual obligations.

A contract is a legally enforceable agreement that creates rights and obligations between those who agree to be bound by its terms, provided that certain key elements are present (namely, offer, acceptance, consideration, intention to create legal relations and certainty of terms).

Each party is entitled to expect the performance of a contract which has been agreed. If you terminate a contract without a common law or contractual right to do so, this would normally amount to repudiation, which in itself attracts significant consequences for the benefit of the ‘innocent party’. It is therefore pertinent to be aware of the two key exceptions to a breach of contract, these are force majeure and the common law doctrine of frustration, both of which are considered in turn below.

Force Majeure

Force Majeure is a phrase derived from French civil law which means ‘superior force’. You will find that most commercial contracts include an express force majeure clause tucked away at the back as it is not an automatic right. It is intended to suspend or terminate contractual obligations following the occurrence of certain events which are outside the parties’ reasonable control and that prevent them from performing their obligations. You will need to carefully asses the specific wording of the relevant clause, normally it will contain a non-exhaustive list of circumstances which would be deemed as a ‘force majeure event’ as there is no statutory or common law definition.

It is important to check whether a pandemic or epidemic is specifically covered as the World Health Organisation has recently declared that the outbreak of Covid-19 has reached pandemic levels. In the event that neither pandemic nor epidemic is listed it may be worth considering whether “any law or any action taken by a government or public authority” is included and indeed applicable instead, especially if the government move to enforce a mandatory lockdown.  In any event, it is likely that any counterparty will resist reliance on such a clause leading to the possibility of litigation.

In comparison, a short form force majeure clause would normally contain wording to the effect of “neither party shall be in breach of this agreement nor liable for delay in performing, or failure to perform, any of its obligations under this agreement if such delay or failure result from events, circumstances or causes beyond its reasonable control…..”. Obviously, this is a much wider definition and in the absence of a list of specified events, it means it is open to interpretation on whether this clause would extend to cover Covid-19.

Once it has been established that a force majeure event has occurred, causation also has to be established, i.e. that the outbreak of Covid-19 has prevented, hindered or delayed a party from performing any of its contractual obligations. If performance has only been made more difficult or expensive then the protection is unlikely to apply. A party seeking to rely on the force majeure clause should also be able to demonstrate the use of reasonable endeavours to mitigate any loss.

There may also be a process to follow in that the affected party has to serve notice on the other party within a certain number of days to notify them that a force majure event has occurred. Time is therefore potentially of the essence. 

If you can successfully establish that a force majure event has occurred the clause will typically provide that the parties’ obligations under the contract are suspended until the force majeure event ceases. At this point, the contract will be ‘resurrected’. Alternatively, you may find that a more commercially attractive option has been drafted which states that so long as the performance of your obligations are continuously prevented, hindered or delayed for a certain number of weeks or days the agreement may be terminated by both parties. In terms of costs, unless the clause specifically details recovery provisions the general position is that any costs incurred or payments made will not be recoverable.

Frustration

In the absence of an express force majeure clause in a commercial contract, the common law doctrine of frustration may assist a party who is unable to fulfil its contractual obligations. You would need to demonstrate that a frustrating event has occurred after the contract was formed which, due to no consequence of your own, has made it impossible for you to carry out your contractual obligations or that they have become radically different.

Whilst this may seem like an attractive alternative, each case will be assessed on its own merits and case law has shown that a very high threshold must be met before the court will deem that a contract is truly frustrated. This is so parties are not released from their contractual obligations too easily. Please note in the past it has been deemed that a contract is not frustrated where:-

• a force majeure clause in the agreement covers the situation instead (unless such clause is incomplete);
• the contract is more difficult or expensive to perform;
• there are changes in economic conditions; and
• the frustrating event should have been pre-empted or is due to the conduct of one of the parties.

These are only a few examples, but seem particularly relevant in the context of this article.

If a contract has been frustrated, all parties will be released from their future (not past) obligations immediately and the contract will be automatically brought to an end. Neither party may sue for breach. The allocation of loss is then decided by the Law Reform (Frustrated Contracts) Act 1943. Under the Act payments can be recovered in full or in part, in a manner deemed equitable by the courts.

Insurance

Finally, you should also check your business insurance or speak to your broker to see what risks are covered. Standard commercial insurance policies typically only provide cover against a wide range of day-to-day risks, therefore unless you have put specific cover in place which protects your business against interruption arising from a infectious disease or forced closure by the authorities it is unlikely that you will be able to make a claim. Even if your policy covers such perils you may find that a claim can only be made in relation to specific diseases named in the cover.

If you require legal assistance regarding contracts, please do not hesitate to contact Christopher Buck, Associate Partner in our Business Services team on 01908 660966 / 01604 828282 or at christopher.buck@franklins-sols.co.uk who will be happy to assist.

Following the instruction from our Prime Minister yesterday that we must all stay home to stay safe; never has it been so evident that health and wellbeing is paramount. We take our duty of care to our clients and staff seriously and as such we have adapted our working practices following the outbreak of COVID-19. However, rest assured that our Business Services’ Team of expert-solicitors are still available to support you, your business and customers through this difficult time.

Fortunately, we live in a connected world and with the support of technology we are able to continue to provide you with the high-standard of service and care that our clients expect of us. Although regrettably we cannot offer face-to-face meetings at this time we are of course happy to advise you via Face-Time, Skype or other means of video-conference. As many of our new clients are aware, our on-boarding process is entirely remote and does not require you to attend at our office or leave the safety of your home. Therefore, whether a returning or new client we can still assist and provide you with the quality legal services that you need.

As you may expect we have been putting in place a contingency plan over the past weeks and the majority of our teams are now working remotely. In this digital age many of our services are already provided electronically therefore there will be minimal disruption to your matter with us. However, unfortunately there may be some unavoidable disturbances as we overcome new challenges and adjust to a new way of working, but please bear with us as we will rise to the challenge and move forwards as must we all. Although our doors may be closed, we are open for business and willing, ready and able to assist you.

If you have any queries or concerns then please don’t hesitate to contact me directly on 07879464500.

Thank you once again for your patience. Please stay home and stay safe.

Andrea Smith,

Head of Business Services

 Katy Perry, her co-stars, label producers and songwriter face a hefty $2.78 million fine following a jury’s ruling that all parties were found to be liable for copyright infringement in the making of her infamous hit ‘Dark Horse’. Judgment was granted in favour of Flame, a Christian rapper, following the jury’s verdict that elements of Flame’s song, “Joyful Noise”, had been copied by Katy Perry and her co-stars, including the electric beat of “Joyful Noise”, therefore constituting a form of primary infringement. The damages awarded to Flame have been apportioned between the parties with Katy Perry being ordered to pay just over $550,000, and her record label, Capitol Records, having to pay $1.3 million!

The fine issued to Katy Perry and her co-stars highlights the repercussions faced by those seeking to use the work of others and claim it as their own. In the UK, the primary piece of legislation that seeks to provide a creator of work with protection in relation to their original work produced is the Copyright, Designs and Patents Act 1998. This Act outlines two different classes of infringing acts, namely primary infringement and secondary infringement. Primary infringement involves a direct form of infringement, including a person copying the work of the copyright owner, and either issuing, performing or playing the copyright work to the public. Interestingly, ignorance to this type of infringement is no defence. In contrast, secondary infringement involves the infringing party having some specified knowledge, or reasonable grounds for having such knowledge, when committing the act.

Copyright seeks to protect a work, its key aim being to prevent others from using it without the owner’s permission. If you require any legal assistance regarding copyright, or have reason to believe that someone may be committing copyright infringement in respect of your own work, then please do not hesitate to contact Christopher Buck, Associate Partner in our Commercial Services Department who will be happy to assist.