- Brabners

Issue 2
November 2013
Welcome
Welcome to the second edition of Insight – the commercial law update brought to you by Brabners
LLP. In this issue of Insight we have articles on a number of recent and developing topics in
commercial law which we believe may be of interest and relevance to you. Please let us know if there
are any particular topics which you would like us to cover in future editions.
Our next edition of Insight is due to be issued early 2014. You don’t have to wait that long however to
keep up to date with the Commercial team or the world of Commercial, IP or IT law. You can join us
on our twitter page @BrabnersIPCom and through our website team page.
If you wish to put faces to names, there is the Commercial Meet the Team page on our website.
RIHANNA KNOCKS TOPSHOP OFF THE TOP SPOT
Rihanna has recently won a legal battle against
Topshop’s parent company Arcadia, over a Tshirt bearing her image. This is an interesting
decision for its confirmation of the law of passing
off in relation to image rights in the UK.
Although the judgment has reaffirmed that there
is no such thing as a registrable image right, per
se, in the UK, this does not prevent a claim from
successfully being made for the unauthorised
use of image rights. In the UK, celebrities and
sportspersons who are suitably famous and have
a reputation, particularly in the area concerned
(in this case fashion), may rely on the laws of
passing off to protect their image rights.
Background
The case concerned a T-shirt featuring a head shot of Rihanna, which was being sold both in Topshop
stores and online. The photograph featured on the T-shirts was a photograph taken during the 2011 ‘We
Found Love’ video shoot which took place in Northern Ireland (and was the subject of significant media
attention) and the image also bared a resemblance to the promotional material surrounding her 2011 ‘Talk
That Talk’ album. The image used on the T-shirt was not taken directly from the video itself; Topshop had
acquired the copyright in the image from the photographer and there was therefore no copyright
infringement.
Rihanna’s lawyers told the High Court that, by selling the T-shirt without Rihanna’s authorisation, Topshop
had misled fans and may have damaged the star’s reputation. It has not gone unnoticed that Rihanna has a
very successful range with River Island, one of Topshop’s high street rivals.
Judge Mr Justice Birss ruled that a “substantial number” of buyers were likely to have been deceived into
buying the T-shirt because of a “false belief” that it had been approved by the singer. He said it was
damaging to her “goodwill” and represented a loss of control over her reputation in the “fashion sphere”.
Topshop’s lawyers had claimed the 25-year-old was making an unjustifiable bid to establish a “free standing
image right” over use of her picture in the UK.
The Law of Passing Off
The law protects the goodwill of the trader (an individual in this case) and prevents one person from
misrepresenting his/her goods or services as being the goods and services of another, and also prevents
one person from holding out his or her goods or services as having some association or connection with
another when this is not the case.
For a ‘classic’ passing off claim to be successful, there are three elements which must be fulfilled – goodwill
owned by a particular trader, misrepresentation and damage to goodwill.
An extended version of passing off has developed and is actionable where there is:
1.
2.
3.
4.
A misrepresentation
Made by a trader in the course of trade
To prospective customers of his or ultimate consumers of goods or services supplied by him
Which is calculated to injure the business or goodwill of another (in the sense that this is a
reasonably foreseeable consequence)
5. Causes actual damage to a business or goodwill of a trader by whom the action is brought or (in an
injunction action) will probably do so.
This extended form of passing off is used by famous individuals as a means of enforcing their image rights in
common law jurisdictions which do not recognise image rights as rights of property. Accordingly, individuals
whose images or names have been used can successfully sue if there is a representation that a product or
service is being endorsed or sponsored by that individual or that the use of the likeness of the individual was
authorised when this is not true. The Rihanna case has brought the British passing off law up to date and
restates the principle in Irvine v Talksport [2002] FSR 60 in respect of false endorsements.
Damages in this case are yet to be assessed and it is likely that, if the decision is not appealed, the parties
will settle the amount between them. In the Irvine case, the court held that that it would often be appropriate
to assess damages in false endorsement cases on the basis of the licence fee which would have been
agreed by a notional willing endorser and endorsee (Irvine was awarded £25,000 by the court).
High Court Judgment
The key point from the decision was the fact that the image on the T-shirt was clearly reminiscent of the
video and album and this was significant to the finding that this was more than just a picture of Rihanna but
amounted to passing off.
The Judge stated that:
‘This image is not just recognisably Rihanna; it looks like publicity shot for what was then a recent
musical release… I think this particular image might well be thought to be part of the marketing
campaign for that project.’
‘The nature of the image itself seems to me to be a fairly strong indication that this may be an
authorised product, an item approved by Rihanna herself… The public links between Topshop and
famous stars in general, and more importantly the links to Rihanna in particular, will enhance the
likelihood in the purchaser’s mind that this garment has been authorised by her.’
‘For [Rihanna fans] the idea that it is authorised will be part of what motivates them to buy the
product… She is their style icon. Many will buy a product because they think she has approved of it.
Others will wish to buy it because of the value of the perceived authorisation itself. In both cases they
will have been deceived.’ ‘The mere sale by a trader of a t-shirt bearing an image of a famous person
is not, without more, an act of passing off. However the sale of this image of this person on this
garment by this shop in these circumstances is a different matter. I find that Topshop’s sale of this
Rihanna t-shirt without her approval was an act of passing off. ‘
Conclusion
Topshop have released a statement stating that they are “surprised, disappointed and perplexed” by the
High Court decision. “There was no intention to create an appearance of an endorsement or promotion” it
said. “We feel that the fact that Rihanna has shopped, worn and had a relationship with Topshop for several
years appears to have been detrimental to our case.”
However, the decision appears to be a well reasoned and sensible one.
Whilst reaffirming the decision in Irvine and the fact that there is no such thing as a registrable image right in
the UK per se, the case is good news for celebrities and sportspersons. Today’s culture of fame and
celebrity has resulted in a proliferation of personal endorsement arrangements, where celebrities and
sportspersons can earn vast sums of money from licensing their image rights to brands who seek to be
associated with them. The case demonstrates that, in certain circumstances where individuals are suitably
famous and have a reputation, particularly in the area concerned, they are able to use the law (in this
instance the law of passing off) to protect themselves against the unauthorised use of their image rights,
thereby increasing the value of their image rights and their opportunities for exploiting the same. This is also
good news for brands, like River Island, who enter into highly lucrative endorsement deals with famous
individuals, as it reduces the opportunity for their competitors to able to use the image rights of such
individuals to ‘ambush’ their promotional campaigns.
A key point in determining whether an individual, like Rihanna, will win a case like this will be whether they
are found to suffer damage to their business or goodwill. This is less likely if the individual is not involved in
the relevant sector concerned, although not impossible.
It is worth noting that some jurisdictions do specifically recognise image rights as a registrable intellectual
property right. For example, it is possible to register image rights in Guernsey, as they are a recognised
proprietary right there. Presumably the T-shirts were available and sold in Guernsey. Accordingly, if Rihanna
had decided to register her image there, she may well have had a more straightforward infringement claim in
that respect in Guernsey at least.
Interestingly, a recent court decision in Dusseldorf found in favour of golfer Martin Kaymer after “pop art
style” portraits were offered for sale on the defendant’s website. The court found that the defendant had
infringed Mr Kaymer’s right in his own image or likeness (which German law expressly protects in § 22 of the
German Act on the Protection of the Copyright in Works of Art and Photographs (Kunsturhebergesetz)
resulting in an injunction and damages.
The full decision in Robyn Rihanna Fenty v Arcadia [2013] EWHC 2310 (Ch) can be read here.
For further information and advice in respect to any image rights and endorsement related issues
please contact us.
Laura Miller
Solicitor
Tel: 0161 836 8806
Email: laura.miller@brabners.com
KREIS DUREN – AN EXAMPLE OF HOW THE PRIVATE SECTOR BENEFITS
FROM EU PUBLIC PROCUREMENT LAW
Private sector companies which have attempted to
contract with public sector bodies will doubtless be
frustratingly familiar with the application of EU public
procurement law. However, procurement law may also
provide an opportunity to private sector companies as
the law clearly states which types of contract should be
put out to tender by contracting authorities. Where
contracting authorities do not put such contracts out to
tender, private sector companies may challenge that
decision, as seen in an ECJ decision in June 2013.
EU public procurement law is incorporated into UK
legislation by the Public Contracts Regulations 2006
(the “Regulations”) and applies to public sector bodies
(“contracting authorities”), which must comply with the
Regulations when entering into contracts to acquire
goods, works or services above certain financial thresholds (“public contracts”). The Regulations require fair,
transparent and competitive tendering of public contracts to allow all interested economic operators within
the EU an opportunity to tender for them.
Contracting authorities may attempt to avoid the application of public procurement law by contracting with
other contracting authorities or with other members of their group of companies. When this occurs, a private
sector company may challenge said decisions as seen in the recent case of Kreis Duren.
The Exemptions
Cases in the EU courts have established two exemptions – the ‘In-House (‘Teckal’) Exemption’ and the
‘Hamburg Waste Exemption’.
The In-House Exemption exempts a contract between a contracting authority and an external company from
procurement law where the external company satisfies two tests, the ‘control test’ and the ‘function test’. The
contracting authority must be able to control the external company as if it was an internal department (the
control test).
The Teckal entity must also provide the majority of its services to the contracting authority (the function test).
If it meets the requirements of both tests, the ‘Teckal entity’ is considered to be an internal department of the
contracting authority and therefore contracts which the contracting authority enters into in the Teckal entity
are not considered public contracts for the purposes of the Regulations.
The Hamburg Waste Exemption was established where Hamburg Council and four other German authorities
entered into a not for profit agreement where the authorities sent waste to Hamburg Council for incineration
while Hamburg could use the authorities unused landfill. As the arrangement was for the carrying out of the
parties’ public service task of waste disposal and did not disadvantage private sector organisations, the
contract was ruled not to be a public contract and was therefore exempt from procurement law.
The Kreis Duren Case
Both exemptions were raised by the contracting authority as a possible defence in the case, which was
referred from a German court to the ECJ on the issue of whether a contract between two local authorities
constituted a public contract for the purposes of EU public procurement law. One local authority (KD) had
transferred to the other (SD) responsibility for providing building cleaning services. In return KD, agreed to
cover SD’s expenses. The ECJ ruled that that this contract did constitute a public contract and that neither
exemption applied. Accordingly, the public contract should have gone out to tender in line with public
procurement law.
With regard to the attempt by the authorities to raise the exemptions, the ECJ concluded:
1. Both authorities were separate entities. KD’s contractual right to supervise the cleaning service did
not constitute a sufficient degree of control over SD to the extent that it could be considered one of
KD’s own departments. Therefore, the arrangement failed the control test. Both the control and
function test must be passed to establish the In House Exemption including genuine control of the
service provider as if it was an internal department. Therefore the In-House Exemption did not
apply.
2. The transfer of responsibility between KD and SD did not amount to genuine co-operation with a
view to carrying out a public service task. The cleaning of KD’s buildings was not considered to be a
public service task. Further the contract utilised the services of a third party for the accomplishment
of the contract task, which meant that the third party might be placed in a position of advantage in
relation to other undertakings active on the same market. Accordingly, the Hamburg Waste
Exemption did not apply.
Private sector organisations which may have provided or wish to provide a service to contracting authorities
but who find that the contracting authority has entered into an arrangement with another contracting authority
or with a group company may wish to scrutinise the arrangements and take legal advice to see if the contract
should have been put out to tender.
If you need any legal advice about contracts going out to tender please contact us.
Michael Winder
Solicitor
Tel: 0151 600 3085
Email: michael.wineder@brabners.com
HOW SHOULD I HANDLE SUBJECT ACCESS REQUESTS?
The Information Commissioner's Office (ICO) has recently
released a new code of practice to assist organisations faced
with requests from individuals seeking to obtain their personal
information (subject access requests).
As well as conferring rights on individuals, the Data
Protection Act 1998 also places obligations on organisations
when handling subject access requests. Organisations
tasked with responding to subject access requests should
review their existing practices and align them with the recent
ICO guidance by considering the following points:

Ascertain whether the request for information is in fact a subject access request. Any written request
by an individual asking for their personal information is a subject access request.

The request must therefore be in writing. This does not necessarily mean that the request must in
letter form and includes email requests and those made via social media.

The request must also be in pursuit of the individual's personal data i.e. that which can enable an
individual to be identified e.g. bank account details, employment particulars etc.

Confirm the requester's identity. Depending on your organisation’s relationship with the person
making the request, you should, acting reasonably, assess whether verification of the requester’s
identity (and to what extent) is necessary.

Promptly clarify any confusion as to the data being sought and ask for any other information you
reasonably require so that you can retrieve the requested information without delay.

If you charge a fee for dealing with subject access requests, you should clearly convey this to the
requester from the outset. In most cases, the maximum fee which can be charged is £10. You can
refuse to supply the requested information until the fee has been paid.

Given the 40 day time limit for responding to subject access requests, you should ensure that you
have measures in place to facilitate the efficient sourcing and retrieval of data. Even where
information is difficult to access, this does not constitute grounds to exclude it from a response within
the statutory time limit.

You are allowed to make routine amendments to a person’s data between the receipt of the subject
access request and sending your response. However, you are not allowed to make changes to the
data as a result of receiving the request, if for example you consider the information held about the
requester is misleading, inaccurate or embarrassing.

Ascertain whether the information requested contains information relating to another individual.
Unless you consider that it is reasonable to supply the requested information without the other
individual’s consent or the other individual has provided his or her consent to the release of the
information, there is no requirement for you to comply with those aspects of a subject access request
which would simultaneously give rise to the unavoidable disclosure of a third party's personal data.
You are still required to disclose as much information as possible by redacting references to the
affected third parties.

Make sure that the information supplied is in an intelligible and, where appropriate, permanent form.
In many cases, this will mean giving a copy of the document containing the personal data and
explaining any complex or business terms/codes.

Finally, consider whether any exemptions from disclosure apply and, if relevant, weigh up whether
they should be used.
If you would like any advice regarding access requests please do not hesitate to contact us.
Richard Hough
Associate
Tel: 0151 600 3302
Email: richard.hough@brabners.com
THREE DIMENSIONAL DILEMMAS – IP AND 3D REPLICATION TECHNOLOGIES
A number of technology commentators believe that the
increasing availability of affordable 3D scanning and
printing devices will bring about a revolution in the way
physical objects are created.
Traditional commercially viable design and manufacturing
processes generally require significant capital investment
and large-scale product runs. By contrast, 3D scanners
and printers allow consumers themselves to capture
create and/or produce on demand any object they need.
It is now more important than ever for manufacturers to
ensure that they have suitable legal protection in place to
protect the intellectual property rights in their products.
How 3D printing works
A 3D printer builds up a physical object by releasing layer-upon-layer of materials. Consumer-targeted
printing materials generally comprise photopolymers, thermoplastics or metals inks.
3D blueprints of objects can be created from scratch using specialist CAD (computer aided design) software
and can be saved as a digital file. Alternatively, all three dimensions of an object can be captured as a CAD
files using a 3D scanner. As with other forms of digital files, CAD files are easy to copy and it is therefore
possible to take a digital 3D copy of a physical object and then produce multiple copies or share the resulting
CAD file via the Internet. Indeed, a plethora of CAD files can already be downloaded from a number of online
CAD “libraries”.
Aside from allowing consumers to create bespoke physical objects for personal use, the technology can also
be used to create large scale moulds or castings which, in turn, could be used to mass-produce products for
the public market.
Advantages and Disadvantages
Proponents of consumer-targeted 3D scanning and printing technologies argue that they will bring about a
new age of “mass personalisation” which will fuel innovation, lead to a more efficient use of resources and
transform the way physical objects are manufactured. An example of such mass personalisation is the
public release by Nokia of CAD files for the case of its “Lumia 820” mobile phone, so that consumers can
create their own case designs and print them using their own 3D printers.
However, critics argue that the commercialisation of 3D scanning and printing technologies will instead result
in a new culture of “3D piracy”. As with the challenges previously faced by the music and film industries as a
result of peer-to-peer file sharing of audio-visual media files, critics fear that the increase in abundance of 3D
modelling is likely to result in similar dilemmas being faced by the manufacturing and retail industries in
relation to the sharing of CAD files.
Legal issues relating to 3D technologies
3D scanning and printing technologies essentially rely on acts of copying. Scanning a physical object using a
3D scanner to create a digital model is an act of copying by digitally reproducing the three dimensions of the
object in the form of a CAD file. Each subsequent replication of this CAD file (such as saving, emailing, or
uploading the file) will also be an act of copying. If the CAD file is then printed, a further act of copying will
then take place.
Copyright protection may subsist in the object which is copied. For example, if the object in question is a
sculpture, it is likely to be an “artistic work” and therefore would benefit from copyright protection. Copying of
such an object would therefore constitute copyright infringement (unless authorisation from the copyright
owner had been obtained). In the same way that other digital media files benefit from copyright protection,
copyright may also subsist in the digital CAD file used to reproduce the original object.
Registered or unregistered design rights may also protect the original object. Design rights protect the
appearance, shape, colour and other aesthetic qualities of an object. Copying of an object using a 3D
scanner and its subsequent reproduction using a 3D printer will necessarily result in the appearance, shape,
colour and/or other aesthetic qualities of the object being replicated. To the extent that any design rights
subsist in the original object, then any such copying without permission from the owner of the design right
will be an infringement. Interestingly, the law currently states that copying of design rights for noncommercial purposes will not constitute an infringement. Therefore, if consumer adoption of 3D printers
continues, it becomes more likely that amateur “home copiers” may replicate goods (such as designer
goods) for their personal use, which could drastically lessen demand for the authentic goods.
Registered trademarks, which protect distinctive signs such as brand names and logos, may also be
infringed by the reproduction of an object. Infringement of a trade mark most commonly occurs where a
person uses that sign (or a confusingly similar sign) in relation to the same or similar goods or services
without permission of the trade mark owner. If the original object bears a brand name or logo then the
reproduction of such object (bearing the same brand name or logo) without permission could amount to trade
mark infringement. In some circumstances, trademarks may also protect the shape of the object which, if
copied, could also amount to an infringement. Once again, however, the amateur home copier will avoid
liability if they are merely reproducing goods for their own personal use (rather than in the course of trade).
Patents in original objects are less likely to be infringed by using commercially available 3D scanning and
printing technologies. This is because patents protect technical innovations rather than the appearance of a
product. That said, if the object being reproduced contains the patented innovation, it will infringe the patent.
As the sophistication of 3D technologies continues to improve to allow for more intricate details to be
increased it is likely that the relevance of patents in this field will also increase.
Conclusion
At present, intellectual property law offers limited protection against the amateur home copier or hobbyist
who merely reproduces physical products for their own personal use. That said, manufacturers can and
should take preventative action now by ensuring that they have fully protected the intellectual property rights
in their products so that they are suitably equipped to tackle any instances of commercial copying or
counterfeiting.
If you would like to discuss any concerns you may have or with any IP requirements we can help
with, please contact us.
Peter Jones
Solicitor
Tel: 0151 600 3122
Email: peter.jones@brabners.com
INTERNATIONAL TRADEMARK ASSOCIATION COMMITTEE APPOINTMENT
Hayley Hall, a member of the IP Team, has been selected to join a
subcommittee of the International Trademark Association (INTA).
INTA is a global association of trade mark owners and professionals
dedicated to supporting trade marks and related intellectual property. The
Association was founded in 1878 with a view to protecting consumers and
promoting fair and effective commerce.
Headquartered in New York City, INTA also has offices in Shanghai, Brussels and Washington DC and
representatives in Geneva and Mumbai. Today, they have a global presence with representation from more
than 6,000 member organisations in 190 countries.
Member organisations comprise professionals and academics and a large number of trade mark owners
including Google, Jaguar Land Rover and Pfizer. Members of INTA find true value in the Association’s global
trade mark research, policy development and education and training.
One of INTA’s most important assets is the talented and dedicated group of 2,700+ individual volunteers who
serve on its committees and project teams. The committees fall into three Group Councils – Education and
Services, Policy Development and Advocacy and Law & Practice Resources – but there are more than 25
sub-committees.
Hayley has been selected to join the Association News Subcommittee of the INTA Bulletin Committee (01
January 2014 – 31 December 2015). The INTA Bulletin Committee is responsible for writing the majority of
articles that make up the 21 issues of the INTA Bulletin each year. The Bulletin is published in electronic
form on INTA’s website, and an email summarizing each issue’s contents is distributed to approximately
20,000 trade mark professionals who work for INTA member organizations. The INTA Bulletin has been
consistently named by INTA members as one of the most popular and useful benefits of INTA membership.
Participation on the committee offers Hayley a unique and rewarding opportunity to contribute to the
advancement of the Association's objectives, network among her peers and raise her, and the firm’s, visibility
further within the international trade mark community. Hayley’s roles will include communicating with her
committee through conference calls and emails as well as attending INTA’s 136th Annual Meeting which
next year will be in Hong Kong.
If you would like more information about the INTA please do not hesitate to contact Hayley at
hayley.hall@brabners.com or on 0151 600 3466.
DID YOU KNOW?

If you wish to use someone’s personal data for unsolicited
marketing purposes via email, fax, telephone or SMS you need
his/her explicit consent to do so via an appropriately worded optin. It is not sufficient to rely on that person failing to opt-out by
ticking a box or other means. Bear this in mind when collecting
personal data which you may wish to use for marketing
purposes.
 Domain name disputes do not have to result in expensive or
costly litigation. Nominet runs a free dispute resolution service for all domain names ending “.co.uk”.
Bear this in mind if you believe someone has registered a “.co.uk” domain name in bad faith,
for example where it matches the name of your business.

Draft legislation is due to be agreed by the European Parliament before Christmas on the wording of
three new Procurement Directives which will soon thereafter be adopted into English law. Bear this
in mind as the rules and timescales regarding the bidding for tenders from local authorities
and other public bodies will be changing in due course.
If you would like more information regarding any issues raised in this newsletter or any commercial
law matters in general please do not hesitate to contact either:
Nik White
Head of Commercial
Liverpool
Tel: 0151 600 3103
E: nik.white@brabners.com
Jason Smith
Head of Commercial
Manchester
Tel: 0161 836 8813
E: Jason.smith@brabners.com
John Boydell
Head of Commercial
Preston
Tel: 01772 229 805
E: john.boydell@brabners.com
This bulletin is for general guidance purposes only and should not be used for any other purpose. If you wish to receive
this bulletin please let us know by contacting Jeanette Jackson at: Jeanette.jackson@brabners.com. Brabners is a
Limited Liability Partnership.