What we can learn from Rihanna

Last week the singer Rihanna saw off an appeal by Top Shop against a decision of the High Court ordering the retailer to stop selling t-shirts reproducing her likeness in a way that suggested that she approved or endorsed Top Shop's products. If you want to understand the legal issues you can read my case notes in my law blog on the original decision in 2013 and the appeal.

"Very interesting" you may say "but what's it to do with ballet?" Well quite a lot actually because if more money is to come into dance and the other performing arts it will have to come from merchandising and endorsements. As I said in Ballet as a Brand? How to bring More Money into Dance for Companies and Dancers 13 March 2013 there is a limit to how much the long suffering British public will pay for the arts whether in the form of ticket prices or subsidies from the Arts Council.

Sports stars and performers in other art forms such as Rihanna have long known that there is a lot of money to be made from advertising, endorsement, merchandizing and sponsorship. As the Court of Appeal noted, Rihanna runs very large merchandizing and endorsement businesses. Over the years has had endorsement deaks with Nike, Gillette, Clinique and LG Mobile. She has also been very active in fashion in her own right and has made considerable efforts to associate herself in the public mind with that industry.

As I noted in my article last year:

"A few companies are already making a little extra money from advertising. The Royal Opera House shop offers a wide range of merchandise bearing the Royal Ballet name and crest such as books, calendars, greeting cards, t-shirts and videos. Other companies sell t-shirts. A website called Balletgifts, which appears to be based in New Cross. markets various items of clothing and other merchandise for the Birmingham Royal Ballet, the Bolshoi and the Mariinsky. Many companies hire out rooms in their studios or their orchestras. Most also have schemes by which businesses and individuals can become friends or patrons of a company or sponsor individual productions or dancers."

Also, a few dancers are also beginning to exploit their value as brands:

"A few superstars like Carlos Acosta and Darcey Bussell have websites through which they market branded merchandise. Acosta offersclothing and posters and advertises his book with links to Amazon and Waterstones. Bussell markets a range of children's dancewear, books and games and DVDs from her site."

However, much more can be done. You don't have to be the Royal Ballet or Carlos Acosta to make money from advertising, endorsements, merchandising and sponsorship. Every company - even quite small ones has its following - and it is not just ballerinas and premiers danseurs nobles who have fans. Look how I gush over Brill, Coracy, DePrince, Gillespie, Kundi and other favourite artistes as well as the principals of their companies.  And it's not just performers who have brands. So, too do studios, dance schools and even individual teachers.

I made some suggestions as to what companies, theatres, dancers and increasingly individual teachers can do to protect their goodwill in  Branding and Ballet - Ten Top Tips 13 June 2014. The Rihanna case is likely to be discussed at a seminar at St Pancras on the law relating to branding and fashion and luxury goods at which I shall be speaking on 10 Feb 2015. If you want to attend the seminar you can book on-line.

Branding and Ballet - Licensing the Brand

In "Ballet as a Brand? How to bring More Money into Dance for Companies and Dancers" 13 March 2014 I argued that more could be done to raise funds and indeed dancers' incomes by harnessing the enormous goodwill enjoyed by companies, theatres and individual dancers. In "Protecting the Brand" 31 March 2014 I counselled companies, theatres and dancers to protect their goodwill by registering their names, logos or other signs as trade marks. In this article I discuss the legal instrument by which the goodwill is monetized. That is to say the licence.

Watch the Spelling
In the UK and most other English speaking countries the noun licence is spelt with a "c" and the very "to license" with an "s".  In the United States, however, both the noun and the verb are spelt with an "s". The distinction between the verb and the noun is a very convenient one but some people including, sadly, even a few lawyers find it confusing and get mixed up.

What is a Licence?
A licence is another word for permit or consent. A familiar example is a TV licence that allows us to watch television. Without such a licence it is unlawful to watch a live broadcast in the UK however it is transmitted. There are also licences that permit us to do something for which we would otherwise be sued like park a car on someone's land. The sort of licences that we are talking about are intellectual property ("IP") licences.

What is IP?
IP is the collective name for the bundle of rights that protect investment in intellectual assets. Intellectual assets are such things as books, goodwill, inventions, performances and software that have been made by creative or inventive people.  Examples of IP rights are patents for inventions, trade marks for the signs by which the public recognize a supplier or his or her products in the market place, copyright for literary and artistic works and rights in performances for the right to film, tape or broadcast an actor, dancer or musician's performance.

What is an IP Licence?
That is a licence to do an act such as sell a product or supply a service under a trade mark or film or broadcast a performance by a dancer that is restricted to the IP owner.  Without such a licence, such a person can be sued by the trade mark owner or dancer.  Licences can be oral or written and they can arise expressly or impliedly. However, most IP licences are in writing and drafted by specialist lawyers.

Types of Licence
Licences can be exclusive, non-exclusive or sole.

Exclusive licences are those in which an IP owner ("the licensor") transfers all his or her rights in the IP including the right to prevent others from exploiting the IP to the person to whom those rights are granted ("the licensee") with the result that the licensee can prevent anyone in the world including the licensor  from exercising those rights. Many agreements to make and sell goods bearing a company's name, logo or coat of arms in a specified location are exclusive licences.

Non-exclusive licences are those in which more than one licensee (and, of course, the licensor) can exercise the rights that are granted but only the licensor can prevent third parties from exercising the rights. Software is usually supplied to end-users under a non-exclusive licence known as a "EULA" (end user's licence agreement").

Sole licences are non-exclusive licences in which the licensor agrees to grant only one licence.

Licensing your IP
Before you enter negotiations for a licence it is a good idea to read the Intellectual Property Office ("IPO")'s booklet on Licensing IP in the IP Health Check series. The IPO has also published a Skeleton Licence or check list of the terms commonly found in licence agreements. The provisions to which you should give particular attention are as follows:

• What exactly are you licensing and how is the licence to be exercised? For instance, is this to be a non-exclusive licence to print you logo or image on t-shirts and sell those t-shirts in the UK. Do you want your licensee to be able to make other products or export them? If so, how will that affect your agreements with licensees elsewhere? Also, are those foreign licensees allowed to export their goods here in competition with you or your British licensee?
• Quality Control. You have put a lot of effort into building up a national and international reputation and you don't want it trashed or trivialized. Any goods bearing your name or logo must be made of good quality materials with high standards of workmanship and they must be packaged attractively. But how do you make sure that is done? And what are the consequences if it isn't?
• Defending and Enforcing the IP? Which party is responsible for the legal fees if a third party infringed the IP or challenges its validity. Legal fees can mount quickly in litigation, particularly in the UK.
• How are you to be paid? When? Where? In what currency? How can you be sure that the right amount is paid? Do you have the right to audit your licensee's accounts? What happens if he or she does not pay you on time?
• What happens if your licensee under-performs? Do you have the right to appoint another licensee or even terminate the licence?
• What happens if your licensee becomes insolvent? Do you really want to be dealing with a liquidator or the licensee's creditors?
• There are bound to be disputes and differences but how are they to be resolved and under which legal system?

Professional Advice

On all those matters you will need professional advice not just from lawyers but also accountants and maybe patent or trade mark attorneys. The Institute of Chartered Accountants of England and Wales has a searchable database of their member firms by geography and specialization. So, too, does the Law Society for solicitors, the Institute of Trade Mark Attorneys and the Chartered Institute of Patent Attorneys. You can now access the Bar direct and you can consult the Intellectual Property Bar Association for a barrister specializing in IP. The corresponding association for solicitors is the Intellectual Property Lawyers Association.

Further Information
As I said in my previous article I am making this information available to the ballet world pro bono as a thank you for all the pleasure dancers, companies, theatres and schools have given me throughout my life.  I will answer any questions that anyone has by phone or email. My number is 020 7404 5252 and you can contact me through my contact form, twitter, Linkedin, G+. Facebook or Xing.

Protecting the Brand

The United Kingdom Intellectual Property Office

In "Ballet as a Brand? How to bring More Money into Dance for Companies and Dancers" 13 March 2014 I argued that if dancers are adequately to be paid and companies and theatres properly to be funded they should learn from sport and indeed the other performing arts and tap the potentially enormous sums that could be released from harnessing their goodwill. In order to do that they need to protect that goodwill. The best way of doing that is by registering the names, logos and other signs under which they are recognized by their audiences as trade marks. As I said in my previous article I made a search of the UK Intellectual Property Office trade mark database and was surprised to find how few dancers or even ballet companies and theatres had taken that step.

What is a Trade Mark?
The UK Intellectual Property Office defines a trade mark as

"a sign which can distinguish your goods and services from those of your competitors ........... It can be for example words, logos or a combination of both."

It can be an actual name like "W H Smith", an invented name like "Microsoft" or indeed a logo such as the three red arrows against a black background in the shape of a triangle of the National Westminster Bank.  It can be just about anything that can be the recorded on paper or other medium. In ballet English National Ballet's white stripe against a red background and the words ENGLISH NATIONAL BALLET are good examples.

Protection of a Mark without Registration
You can have a trade mark whether you register it or not and there is a limited degree of legal protection for trade marks in the UK and many other countries under a doctrine that we call "passing off" and other countries "unfair competition" ("concurrence déloyale"). In England and Wales (and similarly in Scotland, Northern Ireland and most other English speaking countries) this doctrine has been developed by the judges in a series of decisions over many years. Essentially, it means that you cannot offer your goods or services under a name, logo or other sign that is the same as or similar to that of another trader. If you do, even inadvertently, that trader can sue you for an injunction (order by a judge to do or refrain from doing something upon threat of punishment if you disobey), damages (compensation) and other remedies. To win such an action the complainant must show that he or she is recognized in the market by his name or other sign, that you have misled his or her customers or potential customers by using a similar sign and that he or she has suffered as a result.

Trade Mark Registration
The trouble with passing off is that it takes a lot of time and costs a lot of money to prove those three things. Moreover the doctrine will not help a new or very small business that has not yet established itself in the market. To avoid those difficulties the UK and most other countries provide a service by which businesses can register their names, logos or other signs and the goods or services for which they use or intend to use those signs with a national or supra-national registry. The registry for the United Kingdom is part of the Intellectual Property Office in Newport (also the home town of Ballet Cymru) but businesses can if they so wish register their mark for the whole of the European Union at the Office for Harmonization in the Internal Market ("OHIM") in Spain. By registering a mark the registered you can prevent anyone else from using the same mark in relation to the same goods or services, the same or similar mark in relation to the same or similar goods or services where by reason of the similarity there is a likelihood of confusion including association with yourself. Registration avoids the need to prove reputation, misrepresentation and damage as is required for an action for passing off.

Why bother to register?
If you have a trade mark you have something to license. A registered trade mark is much more manageable, tangible and substantial than a right merely to sue for passing off. Registration makes it much easier to negotiate deals with major clothing, stationery, toys and games, food and drink and other manufacturers and distributors of those products and thus gain royalties on sales of branded products as a result of such deals. Registration also makes it easier to control the quality of such products because you can insert conditions on materials and workmanship into the contract. A trade mark registration will make it easier to prevent cyber-squatters from registering domain names that incorporate your mark under the Uniform Domain Name Dispute Resolution Policy or Nominet Dispute Resolution Service. If you do have to go to court to prevent others from supplying goods or services that incorporates your mark it is considerably easier and cheaper to do that if you have registered your mark.

What Sort of Sign can I register?
The first thing you need is a trade mark that is capable of registration. S.1 (1) of the Trade Marks Act 1994 defines a "trade mark" as

"any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."

Although this is a British statute it implements an EU directive which has to comply with a number of international agreements so there are broadly similar requirements at OHIM and in most other countries. The sign has to be capable of distinguishing your goods or services from those of others. Clearly you can't register "ballet" or "dance" simpliciter because those are activities that everyone in the dance world perform but you can usually register the name of a nation, town or other region for a ballet company associated with that town. Similarly there are some national emblems that you need permission to use. Her Majesty allows the Royal Ballet and Birmingham Royal Ballet to use the royal coat of arms but nobody else has that right.

Secondly, you can't register a trade mark that someone else already uses or is about to use for the same or similar goods or services. As there are many registered marks some of which you are unlikely to have heard of it is always a good idea to carry out a search of prior registrations and applications. You can do some of that work yourself but it is always better to commission a search by a specialist librarian or other professional.

As unregistered marks do not show up on a search it is also sensible to scour the internet and specialist magazines and publications to see whether anyone else is using the same or similar sign as an unregistered mark.

How to register your Mark
As there is a lot of help on the "Applying for a trade mark page" on the Intellectual Property Office website I won't go into too much detail here. You will find all the information you need on the articles linked to that page. There are a few extra points that I would stress. The first is that although there is nothing to prevent you from applying for a mark yourself and plenty of people do it is probably more cost effective and certainly safer to instruct a trade mark agent (also known as "trade mark attorneys"). They will carry out the necessary searches, draft the application in the correct way, deal with queries from the examiners and generally shepherd your application through to grant. They will charge only a few hundred pound extra for their services. Trade Mark agents (like patent agents) and regulated by the Intellectual Property Regulation Board ("IPReg") so if you have a problem with your agent IPReg will investigate it and if necessary correct it. If you do not know any agents you can find one through IPReg's "Find an attorney" page. Secondly, you must be sure that you will use the mark in respect of the goods or services for which you register it within 5 years or you could lose it. Thirdly, there are a lot of sharks who prey on unrepresented applicants demanding money for listing and other services that you don't need and often never get. Be on your guard. The Intellectual Property Office gives loads of warnings about those practices but it is amazing how many businesses fall for this trick.

How much does it cost?
It depends on how many goods or service you want to register, whether you use an agent, what extras you need and whether your application is opposed. Goods and services are grouped in classes and you can register your mark in any number of them. The basic cost for a UK mark is £170 which includes one class and £50 for each additional class. Agents usually charge a few hundred pounds for preparing and filing the application.  They would probably advise you to commission a search which will be another £100. If your application is opposed you will have to spend a lot of money on legal representation if you want to fight though you may get some of that back. Once you get your mark I would recommend your subscribing to a watch service which looks our for applications that are similar to your registration so you can challenge it in good time. Unless you have plenty of money I would also advise you to take out IP litigation insurance so that you can afford to take an infringer to court.

Further Information
I am making this information available to the ballet world pro bono as a thank you for all the pleasure dancers, companies, theatres and schools have given me throughout my life. I have offered to give a free half day seminar on IP relating to dance to Middlesex University which has a very successful dance programme in its performing arts department. I have already lectured on IP in the law school and I hold an IP clinic there once a month. If my offer is accepted I will ask for the University to admit dancers, administrators and others to the seminar free of charge. In the meantime I will answer any questions that anyone has by phone or email. My number is 020 7404 5252 and you can contact me through my contact form, twitter, Linkedin, G+. Facebook or Xing.

Ballet as a Brand? How to bring More Money into Dance for Companies and Dancers

Degas, Class                                                           Source Wikipedia

On 20 Nov 2013 The New York Times published an article by Michael Cooper and Roslyn Sulcas entitled "Ballet Dancers as Brands". The opening sentence was as follows

"A wave of international ballet stars are increasingly leaping from company to company, creating their own brands and becoming more like world-traveling conductors and opera stars."

Alina Cojocaru was quoted as saying:

"Ballet careers are relatively short and require years of training that pose the risk of injury, yet the world’s top dancers earn far less money than their counterparts elsewhere in show business."

Less money? Well according to Cooper and Sulcas only three dancers at American Ballet Theatre earned more than US$190,000 and  the étoiles at the Paris Opera earn on average, around US$125,000 a year. Now bearing in mind how long it takes to become a principal and how few dancers actually reach the top that is not a lot of money. It may allow a reasonably comfortable standard of living for a few years while the dancer is at the peak of his or her career but it does not allow him or her to plan, save and invest for a comfortable retirement or other priorities like private education for his or her children.

What to do about it? Well I don't think dancers can expect very much more from  their companies. The arts in the United Kingdom at any rate rely on grants, ticket receipts and corporate and individual sponsorship for their income. Can that be increased? A bit perhaps but not by much.  There is a limit to what the public will pay whether as taxpayer or theatre goer. Especially in hard times.

So is there anything else that can be done? Well perhaps. As the Bailey's Nutcracker commercial showed last Christmas ballet can sell. Maybe advertising, merchandising and endorsement. A few companies are already making a little extra money from advertising. The Royal Opera House shop offers a wide range of merchandise bearing the Royal Ballet name and crest such as books, calendars, greeting cards, t-shirts and videos. Other companies sell t-shirts. A website called Balletgifts, which appears to be based in New Cross. markets various items of clothing and other merchandise for the Birmingham Royal Ballet, the Bolshoi and the Mariinsky. Many companies hire out rooms in their studios or their orchestras. Most also have schemes by which businesses and individuals can become friends or patrons of a company or sponsor individual productions or dancers.

What about individual dancers? A few superstars like Carlos Acosta and Darcey Bussell have websites through which they market branded merchandise. Acosta offers clothing and posters and advertises his book with links to Amazon and Waterstones. Bussell markets a range of children's dancewear, books and games and DVDs from her site. But not every principal of the Royal Ballet does that and a few do not even have websites or social media accounts. I think more could be done in that regard by other dancers because many ballet goers are loyal almost to the point of obsession referring to artists whom they hardly know and in most cases have never met or are ever likely to meet by their first names. Ballet tickets are not cheap yet some fans see the same work albeit with different casts in the same season. Moreover the audience for ballet and thus the fan base will expand massively with HDTV broadcasts to cinemas around the world.

If companies or dancers want to exploit such goodwill they have to protect and manage it in the way that sports stars and indeed other entertainers do. Company names and indeed the names of individual dancers are valuable assets and should be protected by trade mark registration. Last night I made a number of searches on the Intellectual Property Office databases and was surprised to find that not every major company in the United Kingdom let alone every dancer had registered their names and logos as trade marks. They really do need good advice on IP and licensing strategy and no doubt tax planning and pension advice as well.  If there is sufficient interest from dancers and their companies to discuss these issues I would be very happy to organize one and speak for free as my gift to those who have given me so much pleasure in the past.