Analysis: You can protect a name - but not the idea itself

Charities naturally want to keep their fundraising ideas to themselves, but when a slogan or a concept goes viral, enforcement can be hard. Annette Rawstrone reports

The ALS Association wanted to patent the ice bucket challenge
The ALS Association wanted to patent the ice bucket challenge

How can charities prevent their best fundraising ideas from being used by others? This question came to the fore recently because of the ice bucket challenge, which is said to have begun in New Zealand before being taken up by the ALS Association in the US and Macmillan Cancer Support and the MND Association in the UK.

At one point the ALS Association, a charity that researches motor neurone disease, attempted to register the term "ice bucket challenge" with the US Patent and Trademark Office, claiming that for-profit businesses were attempting to capitalise on the campaign. But it withdrew the application after a public outcry.

Using a trademark – which prevents other organisations from using the same name for a product, business or service – can give charities limited protection. Andy Clemson, trademark attorney at the specialist intellectual property firm Cleveland, says a trademark can be used to protect the name of a fundraising initiative. "But the actual idea – such as chucking a tub of water over your head – is not something that can be protected by trademark or copyright," he says.

Clemson says that Macmillan, for example, could not stop anyone from holding a coffee morning, but it could prevent another organisation from calling a coffee morning "The World's Biggest Coffee Morning", because the charity has already trademarked the name and people would think that the event was associated with Macmillan when it was not.

Clemson believes that if the ALS had applied to register the "ice bucket challenge" in the UK on the first day, it probably would have been successful, but because the trend spread online so quickly, and was used by so many charities, it became generic and could no longer be seen as a trademark. "It would have had more chance of success in registering the 'ALS ice bucket challenge' because the inclusion of ALS makes a solid connection with its organisation," he says.

An example of a generic campaign is one that asks people to abstain from alcohol and give a donation or the money they save to a charity. Cancer Research UK, Alcohol Concern and Macmillan run such campaigns – called respectively Dryathlon, Dry January and Go Sober for October. All three were asked to comment on the subject for this article, as were Breast Cancer Campaign and the British Heart Foundation – but none would.

Jo Coleman, a partner in the charities team at IBB Solicitors, says: "When a number of charities jump on a fundraising bandwagon, it will be very difficult for any of them to show that they are the originator of the use of a name, strapline or logo and have established clear rights in that name.

"Given the speed with which a social media campaign can spread, this is even more difficult to establish online. If, however, the charity has registered the trademark, it will be the owner of any rights to that mark, unless another entity demonstrates that it has an earlier right to continue using a mark that it would otherwise be infringing."

If it is seen to be acting aggressively to protect its campaign, that might have an adverse effect on the charity's reputation

Jo Coleman, partner in the charities team at IBB Solicitors

Trademarks can be registered at the Intellectual Property Office, which protects the name in the UK, or the Office for Harmonization in the Internal Market (Trade Marks and Designs), which is more expensive but protects the name throughout Europe. Coleman warns that the process can take more than six months so, in the case of viral campaigns that have limited lifespans, a charity "may not find out if their application has been successful until the campaign has long since died and the trademark is no longer relevant".

She says charities should consider whether it is worth spending funds to protect current and future fundraising brands. "Some charities spend a significant sum on brand protection and will register new names or logos before a new project launches so that if a fundraising initiative does take off, they have a registered trademark to protect it," she says. "Others don't see it as a sensible way to spend their funds because they consider that they would be highly unlikely to take action to enforce their rights. It can be difficult for charities to find the right balance and a decision on whether it is sensible to spend money on trademark registration can be a difficult one for trustees to make."

While it is the duty of charity trustees to protect their assets, including intellectual property, Coleman says that the charity must also "have regard to its reputation with its donors, supporters and the public. If it is seen to be acting aggressively to protect its campaign, that might have an adverse effect on the charity's reputation."

Clemson agrees: "It's a tightrope, which was demonstrated by the ALS withdrawing its application. Given the situation at the time the ALS ice bucket challenge trademarks were filed in the US, the value of continuing with the trademark application process was likely to have been quite low in the face of the public objection."

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