In this article, Jane Randell looks at the branding of historic houses, and the benefits of guarding and nurturing one's brand. This article was published in the Spring issue of Historic House: The Historic Houses Association Magazine and is reproduced by kind permission.
By design or accident, and to varying degrees, most historic houses will have their own 'brand'. In the strict legal sense, the 'brand' of a historic house will be a combination of its name, the associated goodwill and reputation and any brand 'get-up' (visual artistic elements, such as a logo and marketing / promotional material).
These intangible elements are protected via a range of legal rights: principally common law rights which protect goodwill (passing-off) and reputation (libel, and malicious falsehood) as well as statutory rights such as registered trade mark rights (where marks are registered), and copyright.
The more one can do to promote one's brand, the stronger and more valuable it will become. Of course, the stronger the brand and the more it is used, the more important it becomes to protect it. Collaborating with others and becoming part of a joint promotional activity (for example to celebrate a particular location, historical figure
or the anniversary of a key event) can be a great way to boost a historic house's brand while relying on the economies of scale that collaborations can bring. The remainder of this article focuses on a few IP / brand aspects that should be borne in mind when collaborating in this manner.
When seeking to commercialise a property’s brand or to expand its reputation by working with third parties it is important that these rights are clearly defined and protected. Property owners will also need to be clear on the scope of any licence granted in respect of the constituent elements of the property’s brand and related intellectual property rights.
We would suggest that a robust contract is put in place clearly documenting the rights and responsibilities of the other party or parties. If you are contracting on another party’s standard terms, as well you might in a large-scale collaborative project, it is important to read and assess the proposed contract carefully to ensure that you are not giving away more rights than is intended or appropriate in the circumstances. Helpful tips include:
Use of your property's name and logo
Whether your property's name (and logo, if any) is a registered trade mark or not, it is sensible to include controls over any other party's use of your name and logo, especially when that other party is suggesting an association or connection with your property. You will probably want the other party's use of your name and logo to come to an end of the collaborative programme (or, if this isn't practical or possible,ensure that any subsequent use is limited or controlled).
Press releases / publicity
Having approval rights over any public statement or press release relating to your involvement in the collaboration is a good way to ensure that your property, and its involvement in the collaboration, is publicised correctly, in a way that builds on and positively reflects your brand.
Use of your pre-existing copyright
If you are licensing third parties to use any copyright material owned by you, be careful that the licence is limited in scope. Again you will probably want such licence to an end at the end of the collaboration.
Copyright created in the course of the collaboration
Be careful when jointly producing copyrighted material in the course of the collaboration – the contract should be clear on which party owns the copyright, and the scope of the other party’s ability to use it. Avoid jointly owning the copyright if you can help it, as co-ownership can be fraught with practical and legal complexities.
Consider IP warranties and indemnities
When one party to a contract is granting the other party or parties a licence to use its intellectual property rights, it is quite standard for the parties receiving the licence ask for a warranty that the other party owns or is entitled to licence the IP in the manner anticipated in the agreement. This can also be backed up with an indemnity in the event that the proposed use of the IP provided amounts to an infringement of a third party’s IP rights. While these sorts of provisions can be helpful if you are the party relying on them, just remember that if you are the party granting such warranties and indemnities you will need to be sure that you are able to licence the IP in the manner stated in the contract.
If you require further information on anything covered in this briefing please contact Jane Randell(firstname.lastname@example.org; 020 3375 7198) or your usual contact at the firm on 020 3375 7000.
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Farrer & Co LLP, March 2016