From: Russell Gray
Date: 22 April 2010 12:08:48 GMT+01:00
To: “Rechtman, Felix”
Subject: Re: UNAUTHORISED USE OF SOUTHWARK COUNCIL LOGO // LETTER BEFORE LEGAL ACTION

Felix

Thank you for your email.   My copyright expert is familiar with the law of passing off.  I am told that your email suggests that you personally have little experience or knowledge of intellectual property law.  May I suggest you take specialist advice.

The reason why my last email did not address the issue of passing off was because I understood from your previous emails that this issue had been resolved to your satisfaction.  In particular you accepted that there could be little or no confusion provided that the leaflet was simultaneously displayed with the letter from the council.   I have not suggested to you that I will not continue to do so.   Therefore, you can have no realistic hope of getting an interim injunction in relation to such matters.   In which case your continued threats to seek such an injunction either portray an ignorance of the law or alternatively are a naked attempt at trying to bully a campaigner whose views you find objectionable.

As to damages, again if you were aware of the law in this area, there are very limited circumstances in which a business can obtain damages for lost time.   The suggestion that a court would award such damages in respect of the time of counsel employees is wholly unrealistic.  It again suggests an ignorance of the law or a knowing attempt to bully a member of the public.

Next, again as is apparent to anyone who knows the most basic provisions of copyright law, mere use of logo does not provide ownership of any copyright in the same.   You could have used it for 30 years and this still does not mean you own it.   I note that you have refused despite my request to substantiate your claim to ownership in this case.    Unless and until you do so, I will assume that the council is incapable of doing so.    I would add that the fact that you cannot do so is disturbing.   It suggests that your initial letter to me threatening an interim injunction was sent without any proper investigation of the rights held by the council.   It is disturbing that the council considered it proper to behave in this manner and raises serious questions as to the council’s true motivations for pursuing this matter.

As to your comments on section 171(3) they confuse the issue of copyright and passing off.    As you are already aware the issue of confusion has already been dealt with.  Therefore, I note your confidence, but given the basic ignorance of intellectual property law displayed in your correspondence, I would suggest that this  confidence is misplaced.

Regards

Russell Gray

From: Rechtman, Felix
Date: 21 Apr 2010, at 15:25 BST
To: Russell Gray
Subject: RE: UNAUTHORISED USE OF SOUTHWARK COUNCIL LOGO // LETTER BEFORE LEGAL ACTION

Dear Sirs,

We refer to the above matter and your email dated 20th April 2010 received at 8.43pm.

Firstly, we are pleased to note that you have sought legal advice from a copyright expert although we note that in your email you fail to deal completely with the tort of passing off.  Presumably your copyright expert was unable or unwilling to deal with that area of law.

As far as the tort of passing off is concerned, a cause of action for passing off is a form of intellectual property enforcement against the unauthorised use of a mark which is considered to be similar to another party’s registered or unregistered mark.  Further, the law of passing off is designed to prevent misrepresentation to the public and is aimed to prevent a situation in which one party does something so that the public is misled into thinking the activity is associated with another party.  In this case the poster that you have put up clearly displayed the Southwark logo at the bottom without any identification that these posters had been produced by your Company, Shiva Ltd.  Therefore it is clear that members of the public had been misled into thinking that the said posters are associated with Southwark Council.  We have sufficient evidence by way of emails from members of the public showing that a number of members of the public had been misled into thinking that the said posters were produced by Southwark Council when in fact they were not.  We therefore have a clear case for an Injunction as against your Company should you continue misleading the public as per above.

As far as damages are concerned, the Council has suffered loss and damages in wasted officers’ time in dealing with members of the public who have been misled and misinformed by the said posters.

As far as copyright is concerned, the Southwark Council logo had been used exclusively by the Council since the late 90’s for more than 10 years now and is well established as the Council’s official logo. We are confident that any Court of law will find that this is so.

As far as Section 171(3) of the Copyright Design and Patterns Act 1998 is concerned, with respect, it is simply absurd to argue that public interest would be served by misleading the public.  Clearly the defence of a public interest in the Act is not aimed to misleading the public but is aimed to maintain freedom of expression.  With respect the use of Southwark Council logos on your posters is not freedom of expression nor is it in the public interest to mislead members of the public into thinking that these posters were produced by the Council. We therefore deny that the said defence of public interest will apply in this case and we are confident that any court of law will agree with our view in that respect.

In the circumstances, in view of the above, we repeat that should you choose to ignore this email as well as our letter dated 15th April 2010 and proceed to remove the duct tape from the posters and reveal the Southwark Council logo and thereby continue misleading the public, we reserve the right to proceed for an Injunction as against your Company without further notice.  In such circumstances we will seek all legal costs as against your Company as well as damages.

For the avoidance of any doubt, it is not the Council’s aim to prevent you from expressing your views in public or otherwise nor wish to prevent you from seeking to persuade others to support your view as long as you do so without seeking to mislead or misinform members of the public.

Yours faithfully

Felix Rechtman
Senior Lawyer- Communities, Law & Governance
Southwark Council

From: Russell Gray
Date: 20 April 2010 20:43:18 BST
To: Felix Rechtman
Cc: Simon Bevan, Michael Carnuccio
Subject: Re: UNAUTHORISED USE OF SOUTHWARK COUNCIL LOGO // LETTER BEFORE LEGAL ACTION

Felix

Since my last email I have taken advice from  copyright expert in relation to the your letter of 15 April 2010.   I have been informed that it is normal practice when sending a letter  before action claiming copyright infringement to explain why it is that the entity claiming infringement owns the copyright in question.    I note that in your letter of 15 April 2010 you fail to do so.

Further, I am told that the circumstances of this case are unusual.  In particular, the public interest factors in this case raise an issue as to whether section 171(3) of the Copyright Designs and Patents Act 1988 (as interpreted in light of the subsequent provisions of the Human Rights Act 1988) are engaged so as to provide a complete defence to copyright infringement in any event.   This is particularly so given the fact that the Council can have suffered no loss as a consequence of my actions.

In your letter of 15 April 2010 you required my response by 9am on 16 April 2010.  You therefore clearly believe that the issues in this case  can and should be dealt with by the parties on very short notice.  In the circumstances, I require you to respond by no later than 6pm on 21 April 2010 explaining:

(a)    why as a matter of fact and law the Council is the owner of the relevant copyright; and
(b)     why it is that section 171 (3) of the CDPA does not apply.

In the case of (a) above, you should identify the date of the creation of the logo and if you rely on the work of an employee of the council, the employee should be identified.  If you instead rely upon the terms of a contract with a contractor, a copy of that contract should be provided.  Given your initial threats of injunction you no doubt already have that information to hand.

In the absence of an adequate explanation in relation to these issues by the deadline imposed by this email, I  will proceed to remove the duct tape currently obscuring the Southwark logo from the poster presently on display at Globe House on Bermondsey Street and Crucifix Lane.

I also reserve the right, should I consider it appropriate, without further notice to you, to commence proceedings against the Council seeking a declaration of non-infringement.

I look forward to hearing from you.

Russell Gray

From: Rechtman, Felix
Date: 19 April 2010 10:00:18 BST
To: Russell Gray
Subject: RE: UNAUTHORISED USE OF SOUTHWARK COUNCIL LOGO // LETTER BEFORE LEGAL ACTION

Dear Sirs?

We refer to the above matter and our letter dated 15 April 2010.?

We have now inspected the Global House area and note that you have blocked out the Southwark Council logo on all the offending posters.?

The posters themselves are still misleading but as you have put up next to all the posters a copy of our letter before action this will minimise confusion among members of the public. Therefore as long as the said posters remain up so should our letter before claim.

In view of the above we shall continue to monitor the situation and will revert to you should further infringement occur and in the meantime reserve the right to seek damages for past and future copyright infringement and passing off.?

We also reserve the right to take action as against the company for breach of the Advertisement Regulations or any other legislation.

Yours faithfully

Felix Rechtman
Senior Lawyer- Communities, Law & Governance
Southwark Council
From: Russell Gray
Date: 16 April 2010 09:43:36 BST
To: Rechtman, Felix
Subject: Re: UNAUTHORISED USE OF SOUTHWARK COUNCIL LOGO // LETTER BEFORE LEGAL ACTION

I shall address my correspondence to whoever I consider appropriate.  Obviously the culture of secrecy prevailing over Southwark’s decision making process – and especially its collaboration with Sellar’s off-shore companies – sometimes makes this a difficult decision.

Meanwhile, I hereby repeat my invitation to attend Globe House so that I can explain how your objections are being met and to ensure you are entirely satisfied.  It is unfortunate that you declined this invitation on the telephone a short while ago.  It invites the suspicion that you might be more interested in stifling consultation on the SPD than anything else.

Russell Gray

From: Rechtman, Felix
Date: 16 April 2010 09:06:34 BST
To: Liz Ruffell, Russell Gray
Subject: UNAUTHORISED USE OF SOUTHWARK COUNCIL LOGO // LETTER BEFORE LEGAL ACTION

Dear Sirs

We refer to the above matter and your email below addressed to Mr Bevan.

As the issue of the unauthorised use of Southwark’s logo is now being
dealt with by Legal Services, please address all future correspondence
in relation to this matter accordingly to me and not to Mr Bevan or any
other planning officer.

We will inspect the posters at Global House and other buildings later on
this morning and will write to you thereafter.

Kind regards

Felix Rechtman
Senior Lawyer- Communities, Law & Governance
Southwark Council

From: Liz Ruffell
Sent: 15 April 2010 17:59
To: Bevan, Simon
Cc: Gray Russell
Subject: Invitation

Dear Simon,

Following your legal threats regarding passing off and breach of
copyright, you are invited to attend the Globe House notice board to
advise us if you are satisfied with the amendments we have made – and
possibly to meet the press at 9am on Friday 16 April.

Regards

Liz Ruffell


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One comment

  1. JH says:

    Any chance Southwark Council can be threatened with legal proceedings for NOT consulting widely with the local community about the change for the area as they have patently lied about doing so?

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