Last year Ali
Gregg founder of the SleepOut™
cause in South Africa invited this blogger to be a trustee of the CEO SleepOut™ Trust which is appointed by her company to monitor the SleepOut™ record-breaking
philanthropic concept in South Africa. Part of this responsibility entails
preserving the intellectual property associated with that cause, a task that
requires one to carefully navigate the business of brand building in the
philanthropic space.
On Tuesday the CEO SleepOut Trust reports at the media
launch for the 2016 event. Well over 200 people have signed up to
attend and that daunting fact alone is causing me to reflect a little deeper on
the nuances associated with the role. Why was it that a trade mark lawyer was the very first person that
Ali called when she returned from Australia to launch her brand in South Africa? True story. Oh and then, I am almost certain, followed up by a
call to her priest.
The front page headline in the Wall Street Journal a few
years ago stated boldy “Charity
Brawl: Nonprofits Aren’t So Generous When a Name’s at Stake” referring to the stinging criticism received by a celebrated charity for enforcing their rights over part of their name. The palaver prompted a retort from Dan Pallotta, renown
philanthropist who is evangelical about the
need to change the mindset about how we see charity and for charities to change
their perception of themselves (see his post in Harvard Business Review entitled
“Is it Wrong To
Sue a Charity?” and his fabulous Ted Talk here).
His post was followed by an insightful article published in Boston College Law
Review by Lauren
Behr entitled Trademarks
for the Cure: Why Nonprofits Need Their Own Set of Trademark Rules.
In short, the WSJ and its commentary illustrate the
difficulties of protecting a brand name built up through sheer hard word in the
philanthropic space, both from a legal and PR point of view. Without the brand,
the philanthropic’s ability to communicate, mobilise and ultimately do good,
can be severely compromised. Yet protecting it could ultimately threaten the
integrity of the philanthropic altogether.
“To say that public
reaction was vitriolic would be an understatement. To give you a flavour one
anonymous critic wrote to me that I was evil, adding, “No wonder your partner
killed himself.” (My partner had committed suicide a year and half earlier.)”
Dan Pallotta in his post in HBR, referring to reaction when his business decided
to take legal action against another charity.
...enough to turn anyone to prayer.
It’s not just an issue in the States, last last year the UK
IP court adjudicated
on who had rights in the name OPEN COLLEGE NETWORK and OCN between two
educational charities. Prof
Jeremy Phillips emotively describes the spat as “..the most perfect example of a disgraceful waste of utter
stupidity in branding and squandering of charitable funds for no constructive
purpose this Kat has yet to see it. While this Kat is a keen supporter
of charities in general and educational charities in particular, he would be
most reluctant to see so much as a penny's worth of his hard-earned cash go to
any charity that adopted a logo as confusingly similar to that of another
charity, whatever its alleged reason or justification.”
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| www,wrestlingforum.com |
The lethargic but acrimonious fight between the WWF
(wrestlers and the wildlife fund) over the last decade (and more) has been well
documented and in Romania recently an international charity
offering guidance and assistance in the areas of religion and relationships had
to step in and protect its ALPHA trade mark against ALPHA CLINICS. In Israel, a
recent decision
not to recognise the goodwill in a charity because it was not “in business” illustrates some of
thinking that Dan Pallota is guarding against and closer to home the position
is no different.
Not long ago, it was not possible to register a trade mark
in South Africa for a charity because trade marks had to be capable of being
used in trade, and a charity was not considered a trade. This has changed but
there still exists a responsibility for the charity to police and protect the
trade mark. The National Lottery Board’s failures to manage the use of their
trade mark by others lead to a Supreme Court of Appeal decision in 2009,
invalidating their LOTTO trade mark for becoming generic (see Afro-IP here).
The repercussion of this decision may well be that someone gaming with a
different lotto on the assumption
that some of their funds are going to a charity.
This is why Behr in her article advocates for greater
protection for trade marks in the non-profit sector “because the work of these organisations affects the greater public as
well as both potential donors and recipients”. I would agree with that.
Back to the CEO SleepOut™ event, the rights in the trade marks SLEEPOUT and
its associated marks eg CEO SLEEPOUT, RISE TO THE CHALLENGE, #SOUTHAFRICAMUSTRISE,
STUDENT SLEEPOUT, SCHOLAR SLEEPOUT and others are protected through the CIPC, the Advertising
Standards Authority, through an application to the DTI for the event to be
determined a protected event and at common law. The sponsor’s rights are
protected through their own trade marks and the Sponsorship Code
against ambush marketing. These rights are in the hands of a tremendous IP Commercialisation team at Adams
& Adams including Lita Miti-Qamata,John Ndlovu, Ian Learmonth Maureen Makoko, and Nicholas Rosslee,
So, not everything’s on a wing or a prayer.
Here’s wishing
Ali - Africa's Pallotta - a fantastic launch on Tuesday. It’s truly time for the SLEEPOUT™ brand get charity brands
out of their purple rain.
Oh and here's also a formal challenge to all IP firms in South Africa to participate....
Oh and here's also a formal challenge to all IP firms in South Africa to participate....
