The holly and the IP

In the spirit of the holidays, Claire Jones examines Christmas-themed IP issues and sets out requirements to consider in order to avoid them.

Controversial Christmas copyright

Kevin the Carrot features in the new Aldi advert which spoofs the famous Coca-Cola red truck advert. Many viewers noticed the advert’s similarities to the Coca-Cola adverts, prompting Aldi to respond on Twitter: ‘Our parody Christmas advertising campaigns are famous for capturing the anticipation of the season.  This year is no exception using our trademark sense of humour and well-loved character, #KevinTheCarrot to capture of the magic of families prepping for Christmas.’ But is the advert a parody?

In the UK, the right to parody is covered by the UK’s Copyright and Rights in Performances (Quotation and parody) Regulations 2014. In October 2014, the UK implemented the EU Copyright Directive and amended the Copyright, Designs and Patents Act 1988 to add a new Section 30A (Caricature, parody or pastiche). The section states:

• ‘Fair dealing with a work for the purposes of caricature parody, or pastiche does not infringe copyright in the work.’
• ‘To the extent that a term of a contract purports to prevent or restrict the doing of any act which, by virtue of this section would not infringe copyright, that term is unenforceable.’

In other words, ‘fair dealing’ for the purposes of non-commercial research or study, criticism or review or reporting of current events for example, provides an exception to copyright. While the statute does not give guidance on what ‘fair dealing’ is defined as, in this instance it is important to consider that the Kevin the Carrot advert is for commercial use and has to take into account the potential economic impact on the copyright holder Coca-Cola.

While Aldi’s advert parodies the Coca-Cola advert, there are clear differences so Aldi has not directly copied the iconic advert. It is also difficult to see how Coca-Cola would suffer loss; the Coca-Cola truck advert is so firmly associated with Coca-Cola and the festive season by consumers, it is unlikely that anyone would have the mistaken belief that Kevin the Carrot advert is associated with Coca-Cola. Thus, although Aldi is close to the line on parodying such a famous advert, the issue may be more moral in nature rather than a breach of IP rights.

Aldi is not the only retailer with a controversial Christmas advert this year. John Lewis has come under fire from creative agency Fold 7, as it stated that the 2018 advert featuring Elton John has a number of similarities with an advert they created for online platform Gumtree back in 2016. Fold 7 has even mashed the two adverts together to prove their point, uploading it to Twitter with an accompanying response: ‘We hope you don’t mind, we hope you don’t mind, that we put down in words, how wonderful it is, that you were inspired by our work.’

That was not the only issue that the partnership faced this year. Back in June 2018, Waitrose found itself in a dispute with Hotel Chocolat in which they were accused of copying Hotel Chocolat’s chocolate slabs. Following discussions between the parties, an amicable resolution was reached, with Waitrose agreeing to stop producing the slabs and being given a short period of time in which to dispose of remaining stock.

Fa-la-la-la-la-la-la-la-licensing carols

In the lead up to the festive season, Christmas music seems to be playing in every shop and high streets are occupied with people singing Christmas carols to spread Christmas cheer, so it suffices to say Christmas music goes hand-in-hand with the festive season. But what are the copyright and licence issues around this?

If recorded music is to be played in public, including shops, offices, shops, cinemas, hotels, restaurants, pubs, clubs and sports clubs, a licence is usually required, otherwise it can be found to be infringement of copyright and damages would need to be paid (unless the music is royalty-free).

Much of the music played in public is licensed through PPL PRS, the UK’s music licensing company, and it provides guidance and FAQs on licensing on its website.

Well-intentioned carol singers also need to be aware of the licensing rules. A licence is not usually required for carol singing, unless it’s for regulated entertainment i.e. a concert with an audience. In addition, if the entertainment is being performed in a public venue, it should be checked whether the premises already holds a Premises Licence. If the carol singing has the intention of fundraising for charity, it is likely that this will also require a licence, so checking the most current licence information with the charity should be prioritised.

‘Pass Go’ and retain trademark

Hasbro, the makers of the popular source of festive fun and fury over properties and rent, has successfully defended a UK trademark revocation action from Kreativni Dogadaji. The UK trademark for ‘MONOPOLY’ has been registered in respect of board games since 1954, with the game first released in 1935 by Parker Brothers and acquired by Hasbro in 1991. As evidence, The Intellectual Property Office of the United Kingdom (UKIPO) was provided with the considerable number of £7.1 million for Hasbro’s annual sales of the game in 2016 and was therefore left in no doubt as to Hasbro’s continued use.

Kreativni failed to properly claim the correct dates under Section 46(1)(a) of the Trade Marks Act 1994 as it claimed an effective revocation date of 4 November 1957. Kreativni had incorrectly claimed an effective date less than five years after the date that the trademark completed its registration procedure. The UKIPO noted that the earliest possible date for revocation was 13 August 1959. As this date was not met, the revocation failed on this point alone. However, the UKIPO did proceed to note that even if the pleadings had been amended to correct the date, it would not have had an impact on the outcome of the proceedings.

The decision was not surprising given the notoriety of ‘MONOPOLY’ and the evidence provided by Hasbro in the proceedings. However, it is a good reminder that even well-known marks are not invulnerable to attack, and brands should ensure that they continue to market their products where they have trademark protection, as well as maintaining accurate records and stores of evidence in preparation for use to be provided when required.

For additional guidance or recommendations on Christmas-themed IP issues, or general IP issues, please speak to your Novagraaf attorney or contact us below.

Claire Jones is a Trademark Attorney at Novagraaf in the UK.