uk-netmarketing Archive (2011-2015)

Great questions 
 
There are exceptions in the Copyright Designs and Patents Act 1988 (and
similar legislation in other countries) that provide that it is not
copyright infringement where copying is done for the purposes of
criticism and review, provided that the "reviewer" acknowledges the
owner of the copyright. So therefore your client may have a defence to a
claim of copyright infringement.
 
Insofar as the name is concerned there are a few considerations
including whether there is a registered trade mark. However if what you
are saying is correct and you client isn't giving undue prominence to
the name and is not using the name in a way that "affects the inherent
function of the trade mark, namely to distinguish the good and services
of one entity from those of another" then it is likely that it may have
a defence to trade mark infringement  / passing off etc. I realise that
the statement "affects the inherent function of the trade mark, namely
to distinguish the good and services of one entity from those of
another" is a bit technical so let me explain more. Recently the Courts
have clarified what is an what isn't "trade mark use". Trade mark
infringement only occurs where a trade mark is "used" in an "trade mark
sense". So writing a book in which you say "I went to a shop and bought
a can of Coke" is not "trade mark use" because the sense in which you
are using the trade mark is not a way that identifies any element of
your book or distinguishes it from other books in any way. 
 
The rationale is that you are actually using the trade mark to identify
the goods that the trade mark owner wants to be identified by its trade
mark - not those of anyone else - and you should be allowed to. You are
using the trade mark for the purpose for which it was created.
 
Applying it to this case to use the name of a website in the same way as
you would if you are reviewing a CD, film, game etc may not therefore be
considered "trade mark use".
 
The reference to 'in accordance with honest practises in industrial and
commercial matters' is something that comes from the UK Trade Marks Act
which was an earlier codification of this principle. It has been
subsequently developed by the courts.
 
In each each case is stress the word "may" - because of course I don't
know all the facts - but I would be very happy to speak with your client
about it.
 
Also your client needs to think about defamation etc if the reviews are
likely to damage the web site owners and tare unjustified.
 
However in that case if the reviews are from the public i.e UGC then
your client just has to act expeditiously to remove offending cobntent
on being informed of them.
 
So in summary
1) Can my client continue to use a screenshot from the site?
- Yes - so long as they do it in accordance with the criticism and
review exception under CDPA 1988
 
2) Can they force my client to a) not use the site name and b) have to
amend the review system?
- not if your client's use of the name etc falls within the permitted
types of use I have explained.
 
Thanks
 
Alex
 
 
 

Alex Chapman

SHERIDANS SOLICITORS | WHITTINGTON HOUSE | ALFRED PLACE | LONDON | WC1E
7EA 

TEL: +44 (0)20 7079 0145 | FAX: +44 (0)20 7079 0235 |
WWW.SHERIDANS.CO.UK <http://www.sheridans.co.uk/> 

 

________________________________

From: uk-netmarketing-bounces at mm.chinwag.com
[mailto:uk-netmarketing-bounces at mm.chinwag.com] On Behalf Of Mark
Johnson
Sent: 14 November 2011 09:43
To: uk-netmarketing
Subject: [uk-netmarketing] legal advice please on use of logos
andscreenshots


One for the legal eagles on NM please.
 
A client of mine runs a website which is a reviews directory of sites in
a market sector. As part of the reviews directory, which lists every
single site in the market (irrelevant of whether or not they are a
client), the directory listing uses screenshots from each site. It's
similar to Rotten Tomatoes.
 
One of these sites has had a falling out with a site who is an affiliate
client (they dont like the fact that people are posting negative
reviews) and has been told that they must remove the screenshots.
They've received a snotty letter from the lawyers stating;
 
".. you have no right or license to reproduce these screenshots"
 
They also go on to state that my client may only use the site name 'in
accordance with honest practises in industrial and commercial matters'
but that the sites review system is '....significantly misleading and in
contrary to the provisions of the Business Protection from Misleading
Marketing Regulations 2008'.

So, two questions I suppose;
 
1) Can my client continue to use a screenshot from the site?
 
2) Can they force my client to a) not use the site name and b) have to
amend the review system?
 
I think the client feels he's being bullied here when he's not really
doing anything wrong, just that the site doesnt like the bad reviews.
 
Thanks
 
Mark

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