This issue is filled with great insights and expert commentary on areas that are relevant to the legal landscape and highlight how the business community is embracing technology, media and telecommunications. There are various topics covered, from new ways of working and digital transformation in the finance sector to data protection regulatory updates and guidance. We also have a series of articles that focus on e-commerce across a number of jurisdictions.
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Bachir Abou Chakra - Senior Associate - Intellectual Property
With Expo 2020 on the horizon, businesses are marshalling their resources, skills and expertise to ensure that their participation in this universal exposition reaps the benefits sought. Preparations are well underway with entrepreneurs, start-ups, SMEs and conglomerates, from across the globe, working ceaselessly to host and make their events at Expo 2020 a success story. Yet in their haste to join in on all the action, some businesses, big and small, may be overlooking a fundamental corner stone in their event planning and preparations. The cost of this oversight can undermine a business’s effort, hard work and financial expenditures and compromise key assets of their organisation – even before launch. How can this be?
The Goals, Shortfalls & Missing the IP Point
Like any other activity, businesses want their event to be prosperous, successful and most importantly profitable. Businesses will want their event at Expo 2020 to generate publicity to promote their products, identify new market opportunities and attain/maintain sustainable growth in their sectors. To achieve those goals, businesses will want to host an event that is unique, leading and, hopefully, innovative. This is where intellectual property (IP) comes into context. Whether their event entails—the launch of a new product, a new solution to an existing problem or the introduction of the business itself—the event must stand out. For the event to be all that and more, the business must invest the time and effort in the creation, and more importantly, the protection of the IP that goes into planning, preparing and executing a project. This, in turn, is where some businesses fall short, and end up asking themselves what went wrong and dealing with the consequences.
Businesses sometimes fail to recognise the value of the intellectual effort, creative ideas, concepts, designs, branding and formatting they put into planning and hosting their events. Although indispensable, daily operational concerns should not compromise strategic planning. While sometimes abstract, intangible and therefore difficult to recognise, some elements of strategic planning are legally protectable in the form of IP. A failure to identify and protect relevant IP created as part of the event can cause adverse consequences, which can be costly to an event.
To understand the underlying causes for potential mishaps, understanding what constitutes IP is necessary. So, what is IP all about? To help answer this, the following quote from an article, the author wrote for the Dubai Multi-Commodities Centre last year, is useful: “IP represents the value of hard work, of creation and what the future might be. It’s the culmination of a thought and effort based development of something entirely new. It also represents vast fortunes that have been made by other people because clever people failed to protect what they own.” The preceding statement about IP ought to be a universal constant to all businesses. It applies unchangingly to any activity – especially so for event planning and hosting. IP in short can cover every unique aspect of an event, from concept, theme, design, decoration, artwork, animation, branding, whatever products the event intends to launch, to the entire event itself. Therefore, safeguarding relevant IP is vitally important to the success of an event. Without securing that IP, an event will be prone to several risks. In the next paragraphs, we will identify risks an event may face and go over a checklist of some of the most important safeguards.
Some IP Safeguards
Copyright to the Event Concept
The first building block of the intellectual effort that goes into planning an event, is the idea. Under IP law an idea cannot be protected so long as it remains unexpressed. Arguably, the verbal expression of that idea/concept ought to be subject to IP protection if the idea/concept is novel. However, quite often, proving that an event idea belongs to an individual or entity may be quite difficult. In absence of witnesses, idea theft, especially in the event planning and hosting business, is unfortunately quite common and goes unchecked/unpunished. Idea theft as such is the first pitfall to avoid.
Accordingly, recording an idea/concept in written form in absence of others would be one safeguard to resort to in planning for the event and avoiding idea theft. This recording secures your copyright to claim authorship to the written work, thus preventing others from taking credit for that work. If the idea is a novel one, then the event plan/concept would be more valuable and the IP in it would require forms of protection, which are stronger than copyright (more on this below).
Parallel to the copyright, planning for the development and disclosure of the event plan/concept to others is a key consideration. In this respect, one important safeguard to consider is that relating to secrecy. Try to treat everything about the event, before its launch, as a trade secret. Avoid the pitfalls accompanying premature publicity, press leakage and dissemination on social media channels. These can devalue your event at a very early stage by for example sabotaging planned surprises/novelties which would have best remained a secret. Even if certain aspects may come as no surprise as they are already known or the concept lacks innovation or is not creative enough, maintaining secrecy at this early stage is paramount as very few will know how the event planning may unfold in reality. As innovations may come about at any later stage (concept development, form and formatting, lay outs and designs, etc.), secrecy helps to protect the IP right to the entire process from the onset. Although, the UAE has yet to enact a federal trade secret law, many provisions exist in several UAE laws (the Penal Code, the Civil Code, the Commercial Code, the Patent & Designs Law (specifically the know-how provisions), the Cyber-Crime Law, the Labour Law and the Electronic Transactions Law). If you maintain secrecy, then these laws can help protect your secret from unauthorised forms of disclosure.
So how do you maintain secrecy? One obvious way is to keep the secret safely hidden and use all electronic and physical means available to safeguard it. Next, you must ensure that everyone who needs to know about the event plan/concept signs appropriate non-disclosure agreements (NDAs) before disclosing the event to them. The NDAs should not only require recipients of the information to keep whatever they hear and see a secret but they also require them not to use that secret to their own benefit or the benefit of others. To this end, the NDAs must be suitable for the purposes of the disclosure as well as for what is being disclosed – in this case an event concept/plan. Seeking legal counsel on drafting an appropriate NDA at this point would be quite helpful and prudent. Without having proper NDAs in place, enforcing your rights to a trade secret under UAE law will be quite difficult. As an event planner, you will therefore want to avoid this shortcoming at all costs.
As a further safety measure to maintain secrecy, before disclosing the event plan/concept, by way of a pitch or presentation for example, consider dividing and phasing out the disclosure. If you split up the pitch or presentation into smaller ones (if possible or practical) so that no one audience has, the entire picture of the event, you maintain secrecy and control over the information. For that purpose, you may want to consider dividing your event management into smaller teams and assigning different individual tasks to each of them so that they become part of the process but lack the oversight to the entire process. On this point, from a corporate perspective, the only person with complete oversight and control may be the business executive. As such, to safeguard a company’s interests, that person must also be bound by a robust agreement that requires them to not only acknowledge the company’s right to maintain secrecy but also refrain from using that secret to compete with the company at a later date.
Determining & Clearing Novelty
Another important safeguard to consider is that of novelty. If certain aspects of your event plan/concept seem innovative then seek a patent lawyer’s counsel on filing a patent application before doing anything else – even signing the NDAs in some cases. Under the UAE Patent & Designs Law, disclosing a secret innovation before filing for patent and/or design protection may cause you to lose the claim to the patent or design right in question. If innovations unfold at later stages and/or the signed NDAs are sufficient for the time being, then consider filing for a provisional patent under the UAE Patent & Designs Law, shortly before or at the very latest, the time of Expo 2020. Here as well, a patent lawyer’s input on such a filing is essential as further discussed below in the IP ownership section. Failing to pay attention to novelty may be a significant drawback to legally protecting your event from an IP perspective and may therefore result in losses.
In tandem with novelty (and even before filing any IP applications), one must also consider prior IP clearance searches. Though the event may appear to be leading and creative/innovative, you can never be certain that none of its components match or are confusingly similar to those of other works belonging to third parties. If the event is not innovative, then all the more reason for the prior IP clearance searches. Again, the involvement of an IP attorney at this stage is crucial. An attorney will be able to advise you what searches are necessary to ascertain if you are infringing anyone else’s existing IP rights to some or all aspects of your event concept. Clearing the IP rights to every component, based on the search results, will minimise the risk of an IP infringement claim that would cripple your event further down the road. Failing to conduct thorough clearance searches has been the shortfall of even large international corporate entities. Nike’s failed ‘LNDR’ ad campaign in the United Kingdom is a case in point. Because the right to the brand LNDR remained unclear, the prior registered owner of the brand successfully prevented Nike from using it. As a result, Nike had to scrap its ad campaign and with it any planned events for launching its new products, incurring substantial costs in the process (estimated at £10 million).
IP Ownership & Registration
If the IP rights are clear then one more very important safeguard is that relating to IP ownership. As the owner of a business that is overseeing and managing the event concept development and planning, you will want to secure all IP rights in favour of your company. This means everyone involved in the event preparations, from brand development to theme and concept creation to planning and executing, must assign their IP rights to the company. Everyone must also provide IP waivers where necessary to the company. Seeking such protections should apply, without exception, to serve the best interests of the company. Vesting all IP rights in the company minimises the risk of having those rights dispersed, unidentified and undervalued, especially so if the event is successful. You will want to avoid having former employees, prior experts, consultants and contractors you hired in the course of the event-planning, claim any IP rights against you because they are retaining ownership of those rights.
Additionally, under UAE IP laws, you will want to register your ownership of the IP before anyone else does. Therefore, consider with your IP counsel, filing to register the IP with the UAE Ministry of Economy immediately after or in tandem with having secured all necessary assignment and waivers and securing any domain name rights online as well. Without such registrations, enforcing your IP rights in respect of the event with the UAE authorities will be extremely difficult. Lastly, if the event is a success after its launch, consider at that point assigning all those registered IP rights again to a separate IP holding company to isolate the IP from any liability claims. Again, here, seek an IP counsel’s advice on the suitable corporate vehicle for that purpose.
Documenting and Recording
One further safeguard relates to document retention. Best practice dictates every major milestone leading up to the event should be documented and recorded (preferably also audio-visually when possible/feasible), from conception to disclosure, to planning/preparation and to event execution/hosting. Having a record of what transpired during the entire process, what was disclosed, what was agreed, how it was planned and executed and what made the event a success, ensures you accurately capture all the facts on which you would claim your IP rights under UAE law. Such a record will come in handy at later stages for various purposes including but not limited to IP due diligence exercises, IP valuations and evidentiary requirements.
The above checklist of safeguards serves only as a general overview and guidance for what to look out for when planning an event. These safeguards are by no means an exhaustive list of all the steps necessary for determining how best to proceed or in what order to follow them. They also surely do not replace proper legal advice and counsel as much depends on the details of each event and all the variables surrounding the project. Nonetheless, the foregoing checklist is a good starting point to consider the various issues at stake going into the event planning and preparations for Expo 2020.
Al Tamimi & Company’s IP team regularly advises on the full spectrum of IP matters and provides key support to our Expo 2020 practice group. For further information, please contact email@example.com).