Disturbing the Universe

David L Clements, science and science fiction

Royal Institution: Crowdfunding the opposition?

17 Comments

Having had further discussion with my friend the IP lawyer, it seems the chances of invalidating the RI’s trademark claim on Christmas Lecture are rather good. But there would be costs and the need for a contingency if it goes to court and the RI win and are awarded costs.

So – anybody interested in crowdsourcing the costs? A sum of about 3k would be needed.

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Author: davecl

Astronomy, science, science fiction

17 thoughts on “Royal Institution: Crowdfunding the opposition?

  1. I’d certainly chip in. Their trademark claim is absurd, and worth overturning.

  2. Good idea. Pretty sure enough people find this trademark claim unacceptable and would help out to get the 3k together.

  3. I really don’t think that the legal approach is the way to go if there is any way to avoid it, as the whole story is bad for science outreach, and I would much rather support the RI than sue it.

    Advice from University IP team is that it is highly unlikely that anyone describing their lecture at Christmas as a “Christmas lecture” would infringe the trademark (since it is being used in a simple descriptive manner — a “Christmas lecture” delivered in June would). I have tried to convince the contact at the RI that they have been given dud advice, and that they should issue a clear statement that any individual or educational establishment faces no threat if it continues to use the phrase, thus effectively parking the issue without further fuss. Hopefully they will do so.

    • Thanks for your comments.

      I agree that the best way to progress is for the RI to give up on this matter, but, given what they have said and done so far, I have no confidence that they will. Moreover, if the RI relent at this point in the way you suggest, but do not abandon the trademark, there is no guarantee that they will not choose to start charging a fee for its use in the future. Moreover, the longer the trademark is allowed to stand without challenge, the better case they have to retain it. The very point your IP team is making about the term ‘Christmas Lecture’ being simply descriptive is why the trademark must be invalidated. To let it stand is mute acceptance that it is *not* simply descriptive, and that the RI has a case for ownership.

      The only way to sort this out, if the RI are not prepared to drop the trademark themselves, is to have their trademark invalidated. My friend is going to prepare a briefing on this so that everyone has a clearer view what this would involve and how it might progress. My understanding at this point is that having the trademark invalidated would be a cheaper legal solution than fighting an individual case of infringement at some future date.

      More broadly, this kind of trademark squatting is becoming more common after various changes in trademark law across Europe in the last 5 to 10 years. It is not a good development for those of us in education and outreach as this case demonstrates. To allow this trademark to stand would set a bad precedent more broadly.

      I’m also not certain you’re correct in saying that a case would be bad for public outreach. I think it might appear far worse if the science outreach community is seen to give mute acceptance to IP bullies. Yes, the RI has been given bad advice, but that advice will stand unless they either accept that it is bad, or if it shown to be bad in law. And if we allow them to squat on ‘Christmas Lecture’ what will they go after next, ‘Friday Evening’?

      • That seems unlikely: if they were to try to activate the trademark at some future date, the fact that they have held the trademark but not enforced it while others continued to use the phrase “Christmas lecture” actually weakens their argument rather than strengthening it.

        To be honest, I don’t have a problem with the RI holding a trademark on the term “Christmas Lectures” — as I said, if anyone were to start giving “Christmas Lectures” in June, it would be clear that they were not using the term descriptively, and the RI would have a sensible case if they really wanted to pursue it. Under the current law, it seems to be apparent to everyone (apart from the RI’s lawyers who presumably have the vested interest of feeling obliged to justify themselves having got the RI into this mess in the first place) that a lecture given at Christmas can still be described as a Christmas lecture, without any need to invoke or revoke the trademark.

        What I think would be bad for public outreach would be any kind of legal squabble if it can be avoided: we end up looking as petty as the RI, and money that could have been spent on outreach ends up in the pockets of lawyers. Hence my preference for getting a clear statement from the RI reflecting the actual legal position that they propose to hold, rather than the ludicrous “land grab” of requiring everyone giving a Christmas lecture to acknowledge a non-existent debt that they owe to the RI.

      • At this stage I don’t think anybody is going to spend outreach money on this. I can’t give any details, but so far all offers have been of personal funds, not anything from an outreach grant. Indeed, I would suspect using grant money for a trademark invalidation claim would probably not be an allowable expense.

        If the RI does make a clear statement that they aim to hold this trademark in perpetuity to protect the outreach community that might be acceptable. But that is *not* what they are currently saying. Instead they are requiring this ludicrous registration system for anybody deigning to use the term, but this is actually the kind of thing they have to do to protect the trademark, so I’m not sure there’s any escape from having to invalidate the whole thing. Of course, since they were only granted the trademark in March they’ve not had much opportunity to enforce it.

        However, I’m not a lawyer, so I’m unclear on a lot of these issues. This exactly why we need someone like my friend to produce a briefing on the legal issues involved.

  4. It’s largely a matter of perception: infighting between the RI and others involved in outreach would, as I said, make us look petty and money-wasting, irrespective of where the wasted money originated.

    Anyway, the legal advice seems very clear: anyone who wants to can call a lecture at Christmas a Christmas lecture without infringing this trademark, even without jumping through the RI’s bureaucratic nonsense hoop, because the Trade Mark Act (1994) has an unequivocal exemption for such descriptive use. The only reason I hope that the RI will put out a statement to this effect is to put everyone’s mind at rest and start to dispel the unpleasant reputation they have created for themselves by this ridiculous behaviour.

    • It’s largely a matter of perception: infighting between the RI and others involved in outreach would, as I said, make us look petty and money-wasting, irrespective of where the wasted money originated.

      This isn’t something we started – that’s down to the RI, whose reputation is already a bit dodgy. We’re just responding to an unreasonable land grab. As I understand it, this doesn’t require days in court, ranks of photographers and high powered judges, and could be sorted very quietly and cheaply.

      The problem with just assuming that the 1994 act protects you is that the trademark authority has already, in accepting the RI’s trademark application, deemed that this is *not the case*, and in making their application the RI makes it clear that they do not believe that this is the case. They say this in the email blogged below and that I’m sure you have a copy of as well.

      Under the more recent pan-european changes to trademark in the early 2000s this kind of thing is possible and means that, unless it is opposed, it will stand.

      • I am sorry Dave, but I think that that argument is simply wrong: the fact that the IPO accepted the trademark means that the trademark is, by definition, then covered by the legal framework of the Trademark Act. As such, the use of the words in the trademark in a descriptive sense is explicitly exempted from infringing the trademark. This actually gives us clearer more explicit protection than if the trademark were not registered, and the whole thing were covered under the common law tort of “passing off.”

        You can find this point made at http://www.thetrademarkhelpline.com/trade-mark-misconceptions/ — note that they don’t say that it would not be possible to trademark the term “Scotland Roofers,” simply that anyone else can use the phrase if they happen to be roofers based in Scotland “regardless of whether or not it is a trade mark.”

        This is the clear steer I have received from the University’s IP office, so there really doesn’t seem to be an issue, and the RI has simply been badly advised. Taking this off to court is therefore unnecessary and potentially reputationally damaging to both the RI and science outreach more widely.

      • Neither of us are lawyers so it’s largely pointless arguing on the basis of what our different advisors say. My friend reads this blog and will no doubt address this point when he circulates a summary of his understanding.

        I would say that the RI clearly doesn’t agree with your view since they require people wanting to use the term Christmas Lecture to register with them and to add location or organisation name, or to use a different term altogether.

  5. Hmm, on reflection, a preemptive legal challenge from bunch of academics might indeed be unwise at this stage. There will be a perception that should all be working together, not fighting in the courts.

    It might be better to leave the ball in the RI’s court for now, and hope that they see sense. If they start throwing their weight around again (e.g. issuing more threatening legal letters against organisers of christmas lectures) then I’m sure you will gain a ton of support for a crowd-funded counter-challenge.

  6. Reblogged this on In the Dark and commented:
    Not long ago I posted an item about the Royal Institution’s daft attempt to trademark the title “Christmas Lectures”. Here’s a possible way to challenge it…

  7. I would certainly be extremely interested to see any documents prepared by somebody who actually knows something about the relevant law.

    The one thing I wish so much is that Ri would realise how much we are all on their side. The people who this has upset are people who love Ri Christmas Lectures and other Christmas Lectures too. We understand the Ri is in financial trouble.

    I agree very much with those who say it would be a terrible waste of time and money to challenge the trademark. But if Ri sent threatening emails to anyone not in their festival running a Christmas Lecture, it would seem to be the obvious response. I.e. the easiest way to prove you are not infringing is to show the relevant parts of the trademark is invalid.

    If they can’t bring themselves to withdraw the ridiculous parts of the trademark, even the public statement that they accept Mike’s advice would be welcome.

    If the Ri just maintain their current radio silence, what do we do. What does a conscientious science communicator do? Somebody who has not been following the ins and outs or talking to lawyers will assume that they can’t give a Christmas Lecture without Ri’s permission, unless Ri make it clear that they can.

    So if push comes to shove, yes I would donate to a crowdfund to invalidate this – indeed from personal funds.

  8. Also noticed the other day that they keep insisting that they are not out to stop people giving science lectures at Christmas. E.g. this from current version of pdf

    “First and foremost, it was never our intention to dissuade anyone from organising an event
    celebrating science, nor to ask organisers to stop running events.”

    To the best of my knowledge, *nobody* has suggested that is what the Ri want to do. We have said things to the effect that they want to ban “Christmas Lectures.”

    If anybody inside or outside the Ri thinks this means that they want to ban science lectures at Christmas, it’s pretty much QED on the fact that people don’t equate “Christmas Lectures” with Ri.

  9. Personally I would be delighted to donate to an either/or fund. Meaning that if Ri withdrew to defensible position money would be donated to Ri, maybe in return for a credit on the Ri Christmas Lectures show or just on the website. E.g. “Ri gratefully acknowledges donation from Friends of Ri Christmas Lectures”.

    Or to kickstart something where Ri Christmas Lectures could be simulcast. My daughters would love to go to the lectures but we are hundreds of miles away. If they could be simulcast to Dundee or somewhere while the recording is happening, how great would that be? Maybe even have the chance for somebody remote to volunteer for one of the activities.

  10. I’m the lawyer who Dave has been referring to. As I’m not formally instructed in this matter, I’ll emphasise that what I’m about to set out are my personal views (albeit informed by training and experience) and not legal advice.

    Although the RI seems to have refined its position somewhat it still seems clear to me that it is asserting its right to its trade mark. The RI’s recent position statement describes how it has developed a process for allowing other people to use its trade mark. That process involves completion of a questionnaire which is submitted for approval by the RI. Now, if you offer a process to grant someone permission to do an act you have the power to control, you are certainly not indicating that you won’t exercise that power. Quite the opposite, in fact: you are asserting your right to do so, because otherwise the whole approval and permission process would be pointless. Any IP lawyer or judge would look at the RI’s process and recognise it for what it is: a process for granting licences to use the RI’s trade mark. It is in no way a waiver of the right to enforce the trade mark itself.

    If I go to a bit of common land with a path across it any put up a fence, then people who use the path are likely to complain. If I put a gate in the fence and say that I am in principle willing to give a key to people who ask in advance provided that they fill in a form saying why they want to walk across the common, that’s unlikely to assuage the concerns of the people who want to do so.

    It is certainly true that any attempt by the RI to enforce its trade mark against someone using the term ‘Christmas Lecture’ in relation to a lecture given at Christmas would run into s.11(2)(b) Trade Mark Act 1994. A purely descriptive use of a trade mark does not infringe it, as TV production company AETN found out recently when it tried to enforce its trade mark ‘The History Channel’ against Discovery History (see A & E Television Networks v Discovery Communications Europe [2013] EWHC 109 (Ch) at paragraphs 21 to 31.

    But, just because there is a good arguable defence does not mean that there is not a problem. You will only find out if the defence actually works when if the RI decides to sue you for trade mark infringement. That may be an expensive exercise; even if you are fairly confident of winning, it is by no means common to get all of your costs back from the other side. Also, being sued is a very unpleasant and stressful experience. Do we really want to reassure science communicators by saying “it’s OK, if you do get sued you’ve got a good chance of winning and you won’t be too far out of pocket”?

    If ‘Christmas Lecture’ is indeed so descriptive a term that use of it is unlikely to infringe the RI’s trade mark then there is a good argument that the trade mark should itself not have been registered on the basis that it is too descriptive under s.3(1)(c) TMA 1994. It appears that the RI relied upon the exception under s.3(1) for trade marks that have already acquired a ‘distinctive character’ as a result of their use. And, as other bloggers have pointed out, there are numerous documented uses of ‘Christmas Lecture’ going back years or decades.

    I question the wisdom of accepting that the RI should act as self-appointed and self-regulating gatekeeper on whether uses of ‘Christmas Lecture’ will be authorised. If this isn’t acceptable, and if the RI maintains its position, then perhaps consideration should be given to asking the Comptroller-General of Patents, Designs and Trade Marks to reviewing the validity of ‘Christmas Lecture’ as a trade mark.

    Simon Bradshaw

  11. Many thanks for that post Simon. Extremely informative.

    I haven’t come across anyone in this debate who doesn’t wish the Ri extremely well, not least because we want to see and our children to see many wonderful Ri Christmas Lectures for years to come.

    I do so wish that the Ri would accept they made a mistake and backtrack. Even as Michael said earlier, make an unequivocal statement that you can walk across the common without even having to ask for the gate to be opened. If everyone can walk across the common freely, we can even live with their being an unlocked gate there.

    It is clear that if they do not do this or some alternative (my own preference is for them to voluntarily surrender at least the parts of the trademark claim on public lectures), they are putting the scicomm community in the position of choosing between waiting to be sued or not, or whether to spend their money and that of the Ri’s on a trademark invalidation attempt.

    So so sad that we are in this position.

    But that in no way reduces my admiration for your post, which is extremely clear and informative.

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