African intellectual property law, practice and policies. This weblog provides news, information and comment on IP law, practice and business deals right across Africa. Ce blog propose des actualités, informations, et commentaires sur la législation et la pratique en matière de propriété intellectuelle et de droit des contrats d'affaires en Afrique. For some insight into the origins of this blog click here.
Sunday, 24 April 2016
Philanthropy's Purple Rain as Africa's Pallotta Launches 2016 SleepOut™ Event
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
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
Alicalled 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.
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 (left) 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.”
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
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.