Showing posts with label IP. Show all posts
Showing posts with label IP. Show all posts

31 Oct 2020

Small Packages - Great Idea

The University of California, Irvine

 













Jane Lambert

The University of California is a federal university with campuses spread across a wide geographical area rather like the University of Wales.  I was at the University of California, Los Angeles (UCLA) which has recently celebrated its 100th anniversary.  Another campus of the University is the University of California, Irvine (UCI)   Graduates of the several campuses of the University living in the United Kingdom are kept in touch with their almae matres and with each other by the University of California, Trust (UK).

Yesterday the Trust sent me an email headed "University of California Events - Oct 30-Nov 13, 2020". One of those events was an interview with a UCI graduate called Julie Schecter entitled "Entrepreneurship with Julie Schecter - UCI" at 20:00 UK time that very evening.  It continued:

"Learn the challenges and rewards of starting a new business with Julie Schecter '07, founder of Small Packages during this Campuswide Honors Alumni Chapter webinar."

As I specialize as an intellectual property lawyer in advising startups and other small and medium enterprises on protecting their intellectual assets (brands, designs, technology and works of art and literature) with intellectual property rights and also on exploiting and enforcing those rights I registered for the webinar.  I wanted to see what I could learn and also whether I could contribute to the discussion.

Although I am many decades older than Julie, we have two things in common.  We are both lawyers and we share a love of dance.  Julie read law at Harvard Law School which is one of the best in the United States and probably the world whereas I read for the English Bar at Lincoln's Inn in London.  She was a dance major at UCI.  I studied economics, modern and medieval history and moral philosophy at St Andrews graduating with honours in US history(which is why I went to graduate school in the USA). However, I helped to found the University Dance Club some 50 years ago and learned how t do my first pliĆ© as an undergraduate. I still attend ballet class several times a week at age 72 and I blog about dance in Terpsichore. 

Julie's business is called "Small Packages".  She founded it in 2018.  It is basically a gift service for those who want to congratulate their friends, relations and acquaintances when something good occurs in their lives such as an engagement, birth or birthday, or commiserate when something unpleasant happens like a bereavement or illness.  Gift boxes come in three sizes: US$35 (£27.04),  US$55 (£42.48) and US$100 (£77.25),  The US$35 birthday box, for example, contains a handwritten card, candles, sweet and salty crackers (wafer biscuits), Elizabeth Gilbert's Big Magic and a "happy mask",  The US$100 "This is the worst" box contains a handwritten card, chocolate shortbread, hair turban, Mari Andrew's Am I There Yet?, fuzzy socks, a key chain, candles and tea.  

Julie describes her mission as "Take a huge bite out of the loneliness epidemic" which is a lovely idea, particularly in a country as big as the USA when a close friend or relation may be many thousands of miles away.  Her service must be especially welcome with current travel and contact restrictions.  Indeed, one of her gift box range is designed for folk in quarantine.  

I had intended to ask Julie about raising capital as that is a problem for many of my clients who have similar businesses to Julie's.  However, someone asked that question just as I was about to type mine.  Her initial investment came from friends and family. More recently she has raised money through crowdfunding.  I did, manage to ask her a question about intellectual property,  I asked her whether she had incorporated intellectual property into her business plan.  She replied that she had.

The reason I asked that question is that a Mr Trademan of the US Trademark and Patent Office (yes that really is his name) posed it to an audience of entrepreneurs at a videotaped lecture entitled Basic Facts 01: What Every Small Business Should Know Now, Not Later (USPTO),  Mr Trademan asked his audience of entrepreneurs and business owners how many of them had a business plan. There was a forest of raised hands.  He then asked how many had incorporated trade marks into their business plans.  Not a single person raised his or her hand.  Julie had been very prudent in incorporating IP into her business plan right from the start but such prudence is very rare on this side of the Atlantic as it was in Mr Trademan's audience.

Julie's company has a lot of policies that I like.  For instance, she sources at least 10% of her supplies from businesses owned by African Americans.  Rather than hire expensive consultants and contractors she teaches herself some basic skills.  She taught herself digital marketing to conduct social media campaigns.  As she says (and as I tell my clients) there is an enormous amount of information on the internet on business topics and much if it is free or inexpensive.  In this country, I recommend the Business and IP Network at the British Library and its regional partners.

The chair, Arlene Ho, asked Julie why and how she changed from law to business.  She worked for a good law firm and enjoyed her job but she wanted a different challenge,  Her first business was actually in dance but it did not develop as expected.

I thoroughly enjoyed the webinar and I am very grateful to Arlene or her colleagues for announcing it in the UC Trust (UK) newsletter thereby allowing graduates of other UC campuses in the UK to attend. Not much good has come out of this murderous pandemic but perhaps the opportunity to attend webinars such as this (which I would not otherwise have attended) is part of a very threadbare silver lining.  I wish Julie every success with her venture and Arlene and her colleagues at UCI all the best with their future webinars.

1 Jun 2017

What to do if you find a knock off on your competitor's stand at an exhibition

Manchester Central Convention Complex
Photo Stephen Richards
Creative Commons Attribution-Share Alike 2.0 Generic Licence
Source Wikipedia






















Jane Lambert

The European IPR Helpdesk has just published two fact sheets on intellectual property and trade fairs which I discussed this morning in Resolving IPDisputess at Trade Fairs in NIPC Law. The reason the Helpdesk published those fact sheets is that a lot of disputes occur at trade fairs. That is because new products are often unveiled at trade fairs and IP owners get an idea opportunity to examine them.

English law provides a full range of remedies for IP infringement including interim and pre-action injunctions but, as I said in Resolving IPDisputess at Trade Fairs,  they are expensive to obtain and come with onerous conditions. It would be unwise for a small business to seek such relief unless it has a sound case in law and is properly funded.  If you intend to exhibit at an international trade show here are the steps that I would advise you to take first.

Tip #1   Ensure optimum legal protection for your intellectual assets 

Make sure that you have appropriate legal protection for your brands, products and business in each of the markets in which you intend to operate including the country in which you the trade show is to take place.  This should be part of your IP strategy and integrated into your long term business plan.

Tip #2    Make sure you have the funding for any enforcement proceedings you want to take and any revocation or invalidity proceedings others may bring against you.

Except for proceedings in the Intellectual Property Enterprise Court ("IPEC") small claims track IP litigation will cost you money. There's a limit to how much you can be made to pay the other side in IPEC but no limit at all to the amount you have to pay your own solicitor and counsel. In the rest of the Chancery Division and County Court, the only limit to your potential liability is what the costs or applications judge decides. That can run into the hundreds of thousands or even millions.

For small most companies, the best solution is before-the-event insurance. I have written a lot of articles on the topic the latest of which is IP Insurance: CIPA's Paper 1 May 2016 NIPC Inventors Club. I recommend your reading the IPO's Intellectual property insurance guidance of 24 March 2017. You will find a list of specialist brokers on the Chartered Institute of Patent Attorneys' website.

Tip #3 Don't lose your temper

Even though you may have spent a shedload of money on R & D and marketing only to find the spitting image of your flagship product on your competitor's stand you must be very careful what you say to the other side. English intellectual property statutes provide an anomalous cause of action called a "threats action".  If you threaten to sue for patent, trade mark, registered design and unregistered design right infringement in the UK and you can't make good that threat any person aggrieved by those threats (who may not necessarily be the person to whom your threats were made) can sue you under s.70 of the Patents Act 1977, s.21 of the Trade Marks Act 1994, s.26 of the Registered Designs Act 1949 and s.253 of the Copyright, Designs and Patents Act 1988 for declarations, injunctions and damages. The law is about to be reformed by the Intellectual Property (Unjustified Threats) Act 2017 which I discussed in The Intellectual Property (Unjustified Threats) Bill 24 Apr 2017 NIPC Law, but it is not in force yet.

Tip #4  Collect the Evidence

Your best bet is to keep stum and pick up any brochures, data sheets and other documentation that may be around. Ask for technical and sales information on the product and whether you can take any pictures. As soon as you have got all that you can get, send all that documentation to your IP adviser and ask for an urgent appointment with him or her.

Tip #5   Take Appropriate Action

After reading your documentation, your IP adviser should set out your options which will range from a without notice application for an injunction to remove the infringing goods from display to an action in the IPEC small claims track or indeed doing nothing and the likely risks and costs. You should plan litigation very much as you plan any other business operation with clear aims, budgetary controls and milestones.

Should you wish to discuss anything in this article, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.