What a week for fans of UK trademark law!! In case you missed the news, BBC Creative used a trademarked slogan (from 2018 book Slay in Your Lane: the Black Girl Bible by Yomi Adegoke and Elizabeth Uviebinené) in a billboard featuring black athlete Dina Asher-Smith. Fast-forward to Tuesday, and Yomi tweeted about how she’d privately contacted the BBC with a quick ‘hey, you know that’s our phrase right?’. One of the creative directors involved in the project reportedly deleted tweets he sent about it, and the BBC stood behind their decision on the grounds that "the use of the headline was sufficiently far removed from the goods and services covered by the trademark registration in place". Yomi wrote a whole Guardian column about it, and as she tells us over email, the BBC have yet to apologise or admit any wrongdoing.
Since writing her column, Yomi says she’s experienced both support and “derailing, unsurprisingly – people questioning whether things should be trademarked at all, disputing if we were the first people to ever use the term etc. The point is, we had never come across 'Slay in your lane' before.” Luckily, given Elizabeth’s background in marketing and Yomi’s studying law, they were in a good position to defend themselves. “Not everyone has this privilege, and this is what big corporations bank on. It is important for young black creatives at any and every level to try and be as aware as possible of their rights and what they can do to protect their work.”
Legally, though, how did we end up in this situation? How could the BBC have weighed up their advice and gone ahead with the billboard anyway? We rang up Jonathan Hassall, from Myerson Solicitors (FYI: the same firm that helped sort the Cronut trademark, so fair play) to find out.
VICE: Hi Jonathan! Could you explain a bit about trademark law?
Jonathan Hassall: Trademark law is a world of registration and there is a registry where you can search, for free, on the government website. It’s very easy to check out if someone has a registered trademark. It takes a few seconds on the Intellectual Property Office website. If you were to fill out an application, that’s examined by the trademark office. They would do some searches to check that mark isn’t already out there. When the examiners are satisfied that the mark appears available, a statutory ad that goes in a publication called the London Gazette, which gives the world at large notice. There’s a two or three stage process to get a trademark.
How would you expect a group like BBC Creative to have checked whether there is a trademark before putting it out in an ad?
I would have thought that they would be accustomed to doing that routinely. Any kind of journalist, and in my experience, people, do seem to check these things out because of brand or reputation is everything these days.
Based on your experience with past cases, how likely is it that BBC Creative will have to pay a fine?
Well this isn’t the criminal sector where a court might impose a fine. I’ll speak generically, if the ladies [Yomi and Elizabeth] wanted to claim through a court process that their trademark has been infringed, they could do so. If infringement is made out, then any losses which arise from that infringement might have to be compensated. But it depends on the level of losses that can be demonstrated. BBC Creative have already given a comment haven’t they?
Yes. They said in a statement that they sought legal advice and "the use of the headline was sufficiently far removed from the goods and services covered by the trademark registration in place".
So they’re denying it and saying what they’ve registered has not been offended by the BBC billboard.
But is that true?
That is a question which I’ve spent most of my career working on. Trademarks have to be registered in certain classes. So if you imagine ‘Smiths the bookshop’ would be registered in a different space to ‘Smiths the cleaners,’ or ‘Smith’s the airline’ or ‘Smith’s the online retailer.’ So it is not possible to have trademark registration based on you having an absolute monopoly – in this case, ‘Slay in Your Lane’ – across every single commercial activity going. It is not possible to do so when you apply to register a trademark; you have to state the classes in which you’d like to register your trademark.
It looks like from the search, that the ladies have done so. The definition of class that they’re registered in goes for 29 pages. It’s a long massive list, but it starts; Class 25...They’ve registration in two classes, 25 and 35 for ‘Slay in Your Lane’, which is a registration that they got last summer. So it starts with; “after ski boots, akedo boots, aikido uniforms, aloha shirts…” This is in alphabetical order.
So they’ve covered a huge amount of things?
They’ve registered very specific areas. Class 25 – clothing – runs for six and a half pages. Class 35 are broadly speaking commercial trading utility; and it starts again alphabetically - accountancy services, bookkeeping services, all kinds of administration marketing services, so broadly kind of soft and fluffy business advisory services, consultancy services, all kinds of professional business services.
When we think about what the complaint be for the ladies then it is the BBC have used their trademark words. It’s in the background of a photo; the foreground is a lady runner and the background is the trademark term. So if we remind ourselves of what the BBC say about distancing themselves, they say the use of the headline was sufficiently far removed. So what the BBC are saying, I think, is that the activity the BBC used on the trademark does not fall within the 29 pages sub-defined classes under the trademark. In other words it’s not registered activity under the mark. The trademark clearly defines the services and they must be saying, it isn’t directly covered with the registered activity.
It sounds like it’s a cut-and-dry legal issue. They have infringed on their trademark, so why are they having to call people out on Twitter rather than it being settled in a straight-forward way?
Well the BBC could have engaged differently to any complaint, but they’ve not done. It’s by no means cut and dry. Although what is interesting is that on page 18 of all these registrations under the mark is the category of news and current affairs clippings services, news clipping services, newspaper advertising, newspaper subscriptions services.
As a lawyer in the field, if I was asked to analyse this I would need to delve into the subcategories of the classes and decide whether there had been an infringement or if any losses have been caused by this activity. It might be that “all news is good news or whatever.” I don’t know whether the ladies might suggest that it’s harmful to them.
Is it not enough for the billboard to look like it’s linked to Yomi and Liz’s book, when it’s not?
There’s got to be a practical aspect to it – what would be the point in taking on the might of the BBC and spending thousands on a court case, when you might at the end of it not be able to demonstrate loss? Because all the courts can do is stop any infringing activity – so stop the BBC from rerunning this – and a court can reward you damages in the form of compensation. That’s the compensatory system we have in the western world for legal wrongs that are committed against you. It’s all that’s available, but I don’t know if the ladies will be able to demonstrate that they’ve suffered loss.
How much does it matter that a state-affiliated institution with massive reach, used an idea essentially stolen from two young black women?
They can by all means complain. But the question will be asked ‘what practically do [Yomi and Elizabeth] want to achieve? Do they want to just stop it happening again? Or will they try to identify that their own reputations have suffered because of this?
Well, that sounds messier than I thought. Thanks for your time, Jonathan.