Copyright/Trademark Infringement in Vaping

[Imperator]

I’ve seen innumerable threads on various forums regarding the “cloning” of liquids and of mods. There is actually a case in the Netherlands which has allowed for copyright to extend to the actual taste of a substance (cheese dip haha). Although this is pretty interesting and the impact on the vaping industry could be pretty traumatic, I think it’s important to discuss another issue in the vaping industry: that of the unlicensed use of logos, images and protected content for labels, websites and advertising. It may seem trivial to some and sure “as long as the juice is good I’m happy” may apply to others but, in the U.S and Europe, big companies are starting to take action against the infringers.

Unfortunately the e-liquid industry seems to be a hotbed of copyright and trademark infringement. I’ve noticed quite a few companies here that have simply taken images off of the internet and used it for their own purposes (reverse image search your favourite company’s logo, branding or website content). No doubt some of these companies have actually paid for the right of use or are simply using royalty free content (which is a great idea for any new start-up companies that can’t afford to pay a designer) but, in some cases it seems highly unlikely. And let’s be honest: nothing says “in it for a quick buck” like IP theft.

What’s worse is that if a smaller company (especially one that has failed to incorporate) gets caught out for something like this it will be incredibly expensive to defend against. The big companies in the U.S seem to track down the infringers and then send them cease and desist letters. The result is that the infringer has to change the labels accordingly. Why go through all of that? Why not just use an original design or license free content? Plus, it makes the community look bad.

We’ve been fortunate, at least for now, in that companies haven’t started to use packaging and labels that appeal to children (childish characters, the use of fruit loops or pirate crunch etc.)

Still, the interest of the Department of Trade and Industry (who are incompetent at best) is the last thing we want for the South African vaping industry. Moreover, how can we claim that we successfully self-regulate and comply with our own internal/uncodified laws when we can’t even comply with codified state law?

This was a bit of a rant so here, have some Funta.

 

[Neal]

Interesting post @Imperator (cool avatar by the way. Just to add a little to what should be an interesting debate, are vendors doing the industry a disservice by openly selling clones bearing the logo of a company who have invested in and developed that mod/atty etc? Also, are we correct in using the term "clone" to describe something that in other fields would be termed "fong kong" or "dodgy knock off"? Just for the record I own a couple of clones so I am not trying to take any higher moral ground here, I am just interested in hearing other members views.

 

[Imperator]

Interesting post @Imperator (cool avatar by the way. Just to add a little to what should be an interesting debate, are vendors doing the industry a disservice by openly selling clones bearing the logo of a company who have invested in and developed that mod/atty etc? Also, are we correct in using the term "clone" to describe something that in other fields would be termed "fong kong" or "dodgy knock off"? Just for the record I own a couple of clones so I am not trying to take any higher moral ground here, I am just interested in hearing other members views.

So, I think generally we can refer to them as counterfeit goods. Products are being sold under the trademark owner's name without the trademark owner's permission. In any other industry this would have resulted in law suit after law suit (think about the Pep Adidas styled shoes).

Although, I guess clone would mean a direct copy but, and I'm not sure about this, most clones are of an inferior quality. It's probably bad for the community as, eventually, claims are going to be made and people are going to end up in court. Vendors, if they knowingly sell copyright infringing goods will be liable too (for indirect infringement) and that won't be good for anyone.

 

[Duffie12]

An interesting topic, and as usual it is probably more complicated than it may appear at first. I've always had an interest in IP law but I am no lawyer and hopefully one can pipe in. What people do often confuse though is the difference between copyright, trademark and patent.

Patent is rights over a certain invention being a product or process. For example someone could have patented a "smokeless non-tobacco cigarette" and, in fact, someone did. That was Herbert Gilbert in 1965. This patent has since lapsed and because of it the companies we know today can all make electronic cigarettes as long as they don't infringe on someone else's patent. There are other patents, and the largest argument against enforcement thereof is that Gilbert's original patent is in fact "prior art."
http://www.economist.com/blogs/schumpeter/2014/03/e-cigarette-patent-wars
Of course companies can still patent their own inovations. Hypothetically, assuming they were the first to do it, Joytech could patent their "cup design" assuming it is considered novel enough to warrant its own patent.
A patent has to be registered and awarded, it is not automatic and you cannot patent something if it already exists (difficult to prove). Oh, and patents expire or lapse. That was the whole initial point of a patent. Show the world your great invention and how you achieved it. In return you are given rights for a certain period of time after which everyone else is free to improve upon or in other ways use your patent.

A clone atty is potentially infringing on someone's patent if it uses some of their patented designs.

A Trademark is a logo, design, phrase etc. which identifies a something as "yours". A trademark can be registered (the R in a cirle) or unregistered (usually just TM). The legal rights over trademarks can be very complex, differ in various countries and are not necessarily automatically "cross-border". Famous local example is that while the brand "Polo" and the pony design is a registered trademark of "Ralph Lauren" because the trademark was not registered in South Africa and during that time some bright sparks created the "Polo South Africa" brand and registered Polo locally as well as the same pony design but facing the opposite direction. There has been some hoo-ha about it but generally because it has been operating in South Africa for so long, when Ralph Lauren decided they did want to enter our market it was too late.
http://www.timeslive.co.za/lifestyle/2014/03/10/polo-sa-not-polo-ralph-lauren
What does this have to do with e-cigarettes, well, if you want your label and logo protected it might be a good idea to get the trademark registered, you can rely on the protection of an unregistered trademark, but speak to a lawyer...

Also, if you blatently copy someone else's logo or brand name, you can get sued. I'm looking at you "Funta"

Also here is where clones are most likely to fall foul if it uses another company's logo or trademark then it is infringing on someone else's trademark.

Finally copyright is the most nebulous of them all. It exists over almost any "art" or "creative works of expression", that is to say if you write a book, paint a picture, compose a piece of music then it is your copyright. You also don't need to register it, it is automatically yours. Proving that you did it first may be difficult, previously people would mail themselves trancripts of their novel and never open the stamped and dated envelope which would sit in a cupboard somewhere until needed in court. These days with digital everything things are a little different.

It's also difficult to define because theoretically if you design a new atomizer the shape or design of it could be your copyright. Coca-cola even went so far as to trademark their curved bottle design. Nestle tried to trademark Kit-Kat's four finger bar design but failed because it was too generic. Also it is difficult to clearly define which aspects of the design would be copyright and which would be a patent. For example if someone created a great five post double sided reverse RDA which completely solved all spitback and dry hit problems for ever, it wouldn't be a copyright because it isn't an artwork, it is an invention.

For e-juices I think it is somewhat difficult. Can someone claim a copyright over, say, strawberries and cream flavoured e-juice? Probably not because it is a) very generic and b) prior art exists. If you had a super unique flavour then maybe (as per the Wiches Cheese mentioned above) but this probably isn't enforceable everywhere.

Okay, so I have no idea where I was going with this and/or why I even started typing this but hey.. here it is.

Oh, and here's another silly piece of info, if you don't enforce your rights you can actually lose them. This is why you sometimes here of these silly stories of some large US corporation suing a 12 year old for using their logo at the local church fund raiser. It isn't because they're trying to be mean but because if they don't they could actually lose their rights.

 

[Imperator]

An interesting topic, and as usual it is probably more complicated than it may appear at first. I've always had an interest in IP law but I am no lawyer and hopefully one can pipe in. What people do often confuse though is the difference between copyright, trademark and patent.

Patent is rights over a certain invention being a product or process. For example someone could have patented a "smokeless non-tobacco cigarette" and, in fact, someone did. That was Herbert Gilbert in 1965. This patent has since lapsed and because of it the companies we know today can all make electronic cigarettes as long as they don't infringe on someone else's patent. There are other patents, and the largest argument against enforcement thereof is that Gilbert's original patent is in fact "prior art."
http://www.economist.com/blogs/schumpeter/2014/03/e-cigarette-patent-wars
Of course companies can still patent their own inovations. Hypothetically, assuming they were the first to do it, Joytech could patent their "cup design" assuming it is considered novel enough to warrant its own patent.
A patent has to be registered and awarded, it is not automatic and you cannot patent something if it already exists (difficult to prove). Oh, and patents expire or lapse. That was the whole initial point of a patent. Show the world your great invention and how you achieved it. In return you are given rights for a certain period of time after which everyone else is free to improve upon or in other ways use your patent.

A clone atty is potentially infringing on someone's patent if it uses some of their patented designs.

A Trademark is a logo, design, phrase etc. which identifies a something as "yours". A trademark can be registered (the R in a cirle) or unregistered (usually just TM). The legal rights over trademarks can be very complex, differ in various countries and are not necessarily automatically "cross-border". Famous local example is that while the brand "Polo" and the pony design is a registered trademark of "Ralph Lauren" because the trademark was not registered in South Africa and during that time some bright sparks created the "Polo South Africa" brand and registered Polo locally as well as the same pony design but facing the opposite direction. There has been some hoo-ha about it but generally because it has been operating in South Africa for so long, when Ralph Lauren decided they did want to enter our market it was too late.
http://www.timeslive.co.za/lifestyle/2014/03/10/polo-sa-not-polo-ralph-lauren
What does this have to do with e-cigarettes, well, if you want your label and logo protected it might be a good idea to get the trademark registered, you can rely on the protection of an unregistered trademark, but speak to a lawyer...

Also, if you blatently copy someone else's logo or brand name, you can get sued. I'm looking at you "Funta"

Also here is where clones are most likely to fall foul if it uses another company's logo or trademark then it is infringing on someone else's trademark.

Finally copyright is the most nebulous of them all. It exists over almost any "art" or "creative works of expression", that is to say if you write a book, paint a picture, compose a piece of music then it is your copyright. You also don't need to register it, it is automatically yours. Proving that you did it first may be difficult, previously people would mail themselves trancripts of their novel and never open the stamped and dated envelope which would sit in a cupboard somewhere until needed in court. These days with digital everything things are a little different.

It's also difficult to define because theoretically if you design a new atomizer the shape or design of it could be your copyright. Coca-cola even went so far as to trademark their curved bottle design. Nestle tried to trademark Kit-Kat's four finger bar design but failed because it was too generic. Also it is difficult to clearly define which aspects of the design would be copyright and which would be a patent. For example if someone created a great five post double sided reverse RDA which completely solved all spitback and dry hit problems for ever, it wouldn't be a copyright because it isn't an artwork, it is an invention.

For e-juices I think it is somewhat difficult. Can someone claim a copyright over, say, strawberries and cream flavoured e-juice? Probably not because it is a) very generic and b) prior art exists. If you had a super unique flavour then maybe (as per the Wiches Cheese mentioned above) but this probably isn't enforceable everywhere.

Okay, so I have no idea where I was going with this and/or why I even started typing this but hey.. here it is.

Oh, and here's another silly piece of info, if you don't enforce your rights you can actually lose them. This is why you sometimes here of these silly stories of some large US corporation suing a 12 year old for using their logo at the local church fund raiser. It isn't because they're trying to be mean but because if they don't they could actually lose their rights.

Nice sumary! Kit-kat actually managed to enforce their trademark rights over the 4 finger wafer bar after it went on appeal to the Supreme Court. I actually do IP law so it's nice to see someone who doesn't do it have an interest in it.

As I said, I'm more concerned about the copyright and trademark infringements going on with the labels and branding. (One would have copyright over the original work that went into the label and then be able to register it as a trademark) The issue with flavours and taste is incredibly interesting though. I'd love to see a court grapple with it

 

[YeOldeOke]

Registered patents, company logos and similar aside, the marketplace has become so dynamic since globalisation and international trade has taken off - especially in the small to medium sized sector - that copyright is effectively a dying relic of easier to control trade.

I know it is hard for many to accept this stark fact, but fighting a roaring fire with a leaky bucket is a waste of valuable trading time. Anyone who has spent any amount of time in the East will know this is simply unstopable.

In the vaping industry, things change so fast now that todays mod or tank is an unwanted relic by next month. Cloning gained momentum when one had to pay $120 for a Kayfun, and $20 for a clone. This forced the industry to reduce prices and move faster. A good thing, which in the end brings them more sales - see the new tank today vs last month's relic. It is also squeezing out most clones because the price difference has dropped dramatically. So in effect the cloners have done everybody a favour.

Websites using copyrighted material is about as old as the internet. Won't be stopped either. Cease and desist is sometimes effective. most times not. I have been running ecommerce sites for a long time and have sent plenty cease and desist notices. But at the end of the day it is more efficient to acknowledge that the game has changed, permanently, and roll with the waves than to fight a losing battle for days gone by.

Regulation is getting harder and harder, as all the above unfold. Sometimes I'm of the mind that it is a good thing, the big corps love regulation to keep the bar to entry high. Buyer beware is more my view on life than being protected - and locked out.

 

[Imperator]

Registered patents, company logos and similar aside, the marketplace has become so dynamic since globalisation and international trade has taken off - especially in the small to medium sized sector - that copyright is effectively a dying relic of easier to control trade.

I know it is hard for many to accept this stark fact, but fighting a roaring fire with a leaky bucket is a waste of valuable trading time. Anyone who has spent any amount of time in the East will know this is simply unstopable.

In the vaping industry, things change so fast now that todays mod or tank is an unwanted relic by next month. Cloning gained momentum when one had to pay $120 for a Kayfun, and $20 for a clone. This forced the industry to reduce prices and move faster. A good thing, which in the end brings them more sales - see the new tank today vs last month's relic. It is also squeezing out most clones because the price difference has dropped dramatically. So in effect the cloners have done everybody a favour.

Websites using copyrighted material is about as old as the internet. Won't be stopped either. Cease and desist is sometimes effective. most times not. I have been running ecommerce sites for a long time and have sent plenty cease and desist notices. But at the end of the day it is more efficient to acknowledge that the game has changed, permanently, and roll with the waves than to fight a losing battle for days gone by.

Regulation is getting harder and harder, as all the above unfold. Sometimes I'm of the mind that it is a good thing, the big corps love regulation to keep the bar to entry high. Buyer beware is more my view on life than being protected - and locked out.

I'm of two minds with this approach. First, open source and license free stuff is great for industry and development as whole. Big thumbs up. It's almost impossible to effectively regulate commerce and the day-to-day infringements that take place so it's likely going to start heading that way. It will only be the incredibly large companies that enforce their rights while the rest move to a more modern approach. However, I can't help but feel for the artists and designers who lose out as their material is stolen from them. What's worse is that companies get away with it while other companies put time and effort (not to mention money) into creating a legitimate and original brand.

I posted this thread because I think that as soon as such infringements occur and the rights holders actually enforce their rights, we suddenly see "e-liquid company" or "vape" in our court records or brought to the public eye in a negative way. All that adds up to investigations and acknowledgment by the boards and departments who deal with regulation. That's a big thumbs down for me.

 

[YeOldeOke]

I'm of two minds with this approach. First, open source and license free stuff is great for industry and development as whole. Big thumbs up. It's almost impossible to effectively regulate commerce and the day-to-day infringements that take place so it's likely going to start heading that way. It will only be the incredibly large companies that enforce their rights while the rest move to a more modern approach. However, I can't help but feel for the artists and designers who lose out as their material is stolen from them. What's worse is that companies get away with it while other companies put time and effort (not to mention money) into creating a legitimate and original brand.

I posted this thread because I think that as soon as such infringements occur and the rights holders actually enforce their rights, we suddenly see "e-liquid company" or "vape" in our court records or brought to the public eye in a negative way. All that adds up to investigations and acknowledgment by the boards and departments who deal with regulation. That's a big thumbs down for me.

I'm with you, from a - I won't call it moral - traditional point of view. But I'm also very much an accept-and-move-on type of guy. Something that helped me stay abreast, if not ahead, of the curve all my life.

Yes, the artists, writers etc. that relied on making a living from royalties etc. is a sad story, but then so are the coal miners'. The world moves on, it is always a case of adapt or die.

I find that vapers tend to worry too much about their and the industry's image. The fight going on at the moment will be won or lost for other reasons, not image. Big money vs citizen's rights, basically. This is however true in many areas, including politics. Vaping won't be outlawed or severely restricted because people have a bad perception of it. Money and vested interests drive laws. Period.