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Is it Time for a New Approach to IP Enforcement in Scotland?

Is it Time for a New Approach to IP Enforcement in Scotland?

Is the landscape of IP enforcement in Scotland changing?   It’s a question which, at first glance, might seem curious.  There have been no seismic changes to the legislation that governs the enforcement of IP rights and no landmark cases in the Scottish courts which might justify that question being asked.

However, digging a little deeper reveals a growing trend of potential IP infringers fighting back through the mainstream media and social media.  Their angle is that the “big bad” IP rights holder is trying to “bully” the small business owner into giving up a business name or product, by threatening court action.  Whilst there is no doubt some element of truth in some of these cases, it must give brand holders (and their lawyers) reason to have second thoughts when deciding whether or not to take action against potential IP infringers.

There have been a number of instances in Scotland recently involving right holders being on the wrong end of press attention for taking “overly aggressive” steps to enforce their IP (see recent stories involving  Scottish brands BrewDog and Glencoe) and Scottish based “infringer” in relation to proposed action by L’Oreal.  

Whilst this is certainly not solely a Scottish problem (see the story involving Sainsburys – something which my colleague Megan Briggs has recently written about) there does seem to be a growing trend of these stories gaining traction in the Scottish media.

This is causing some rights holders (and their advisors) to reconsider sending any correspondence to potential infringers.  PR is playing an increasingly significant part in IP enforcement and the negative PR/reputational issues have to be carefully thought through before any action is taken by rights holders.    There is no doubt that the advent of social media has led to an increase in these kinds of letters being shared widely - despite the fact that lawyers often mark “cease and desist” letters as “Strictly Private and Confidential”, this is often disregarded when posting them on social media. 

Mindful of the possible negative connotations associated with what might be perceived as overly aggressive tactics by rights holders, Netflix’s recently unorthodox approach to enforcing their rights in the “Stanger Things” programme has gone viral (see the following link).  Netflix sent a “Stranger Things” themed letter to the potential infringers in an attempt to avoid appearing heavy-handed, perhaps even cool.  The approach taken by Netflix has received wide-spread praise for dealing with a potentially difficult issue, in a light-hearted way.  Rather than be portrayed as the big bad rights holder trying to stifle the little guy, Netflix has come out of this situation with a lot of goodwill.  One might question however, whether Netflix would take the same approach had the bar in question not been a “pop up” or if the operators of the pop-up bar do not agree to the settlement terms proposed by Netflix.  That said, Netflix deserves a lot of credit – enforcing IP rights is not something one would ordinarily associate with humour, so to be able to take action whilst still being perceived as the “good guy” is not an easy thing to achieve and ought to be applauded.  Having said that, if the letter is ignored it may be questioned whether that provided the alleged infringer sufficient notice of Netflix’s complaint.  Perhaps a less fun version follows that, if it doesn’t achieve the desired response.

The fact that infringers (perhaps more so in Scotland than elsewhere) appear so willing to tell their side of the story to the Press (and indeed the fact that the Press appear keen to run with these stories) does put a new spin on how we advise rights holders.   Whilst doing nothing is very often the wrong move (and indeed can cause issues in terms of trying to assert IP rights in the future) the traditional approach of issuing a standard “cease and desist” letter could well cause reputational issues for the rights holder.  That said, brand holders will often spend significant time and money in growing their brand and others should not be allowed to ride on their coat-tails without any action being taken. 

There are no easy answers to these difficult issues but part of the challenge is to get the counter-story out to the media explaining why it is so important that IP rights are protected, perhaps explaining the importance of a particular brand or product to a local economy. 

When all of the relevant considerations are taken into account, and as you’ll no doubt see again on social media soon - it is likely the “Netflix approach” will be something that we see more of in the future. 

Nerraj Thomas

Senior Associate

This article first appeared in The Times on 12 October 2017 

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