This Guide is designed to assist Insight Providers who are producing content for Smartkarma by providing legal guidance on the use of materials in which third party intellectual property rights subsist.
It has been prepared with a focus on Insight Providers' producing content to be published on and communicated via Smartkarma's website and/or emails and social media. It is intended to inform and empower Insight Providers by assisting them in ensuring they avoid infringing third parties' intellectual property rights when producing content.
This Guide provides a practical framework within which Insight Providers may anticipate potential intellectual property right issues, minimise risk and identify when specific legal advice should be sought.
Table of Contents
Third Party Images and Text
Third party names and logos
Overview Of Relevant Intellectual Property Rights
Intellectual property rights (IPRs) are a type of property right that can protect innovation and creative outputs. IPRs are territorial, which means protection is limited to the territory(ies) where the right is protected. The main types of IPRs relevant to Smartkarma's Insight Providers are described in this document. IPRs can overlap, so an item such as an article on a third-party website (or aspects of it) may be relevant to some or all of the following IPRs.
If an Insight Provider infringes a third party's IPRs, the consequences can be severe for both the Insight Provider and Smartkarma. The potential consequences include adverse publicity, reputational damage, damages to their relationships with investors or others in the financial industry, liability to pay damages and legal costs, and the cost of replacing the infringing material. It is therefore important to be aware of the different types of IPRs that arise in third party material that Insight Providers may be using to create content for publishing on Smartkarma.
Section I: Trade Marks TM / ®
Trade Marks: Protection
A trade mark is a 'badge of trade origin' i.e.,a 'sign' which distinguishes one business from another.
A trade mark 'sign' can be a name, word, logo, symbol, slogan, 3-dimensional shape, colour, sound or smell, position mark, pattern, motion, multi-media mark or hologram.
A registered trade mark allows the owner to prevent identical goods or services being offered under an identical sign (whether or not there is any risk of confusion in the mind of the public).
Where the other party's sign is not identical to the registered mark, but merely similar, or the goods and services are not identical, then the trade mark owner must prove that there is a likelihood of confusion. The owner can also argue that the other person's use of an identical/similar sign is taking unfair advantage of or causing damage to the reputation of the registered trade mark even where it is used for different goods and services.
Registered Trade Marks: Requirements
A trade mark can be registered. The TM symbol and ® symbols are often used by brand owners to indicate that they are using the name, logo, etc. which the symbol is next to as a trade mark. The TM symbol can accompany unregistered or registered trade marks whereas the ® symbol should only accompany registered marks, i.e., this indicates that the mark has been registered with the Intellectual Property Office.
To be registered, a trade mark must be distinctive and therefore capable of distinguishing one business from another (whether inherently or because it has acquired distinctiveness over time).
Trade marks are registered for specific classes of goods and/or services, so it is possible for two different companies to register the same word as a trade mark if they are using it for different goods or services.
Registered Trade Marks: Ownership & Duration
Registered trade marks last for as long as they are registered. The owner of the trade mark is the registering entity. However, if there is also copyright in the trade mark (e.g. a logo) (refer to point 18), then the copyright might be owned by a person or entity distinct from the trade mark owner. This copyright will then usually last for the life of the author plus 70 years.
You can search for whether a trade mark is registered on the Intellectual Property Office website.
Exception to infringement where using Trade Marks to describe goods/services when done in accordance with honest practices
A third party's trade mark can be used without amounting to infringement where it is being used for the purpose of identifying or referring to products or services as those of the trade mark owner, provided such use is done in accordance with 'honest commercial practices'.
Use will not be honest if the the trade mark is used in a way that might create the impression that there is a commercial connection or other affiliation between the Insights Provider and the trade mark owner. Use of a trade mark should be in an informative rather than misleading way.
If Insight Providers do not need to use the trade mark because, for example, readers of the content would be able to ascertain the intended purpose of the products/services described without reference to the third party's trade mark, then do not use it. It will only be necessary to do so where it constitutes the only means of providing the public with comprehensive and complete information on the intended use of the product/service.
If necessary to use trade marks, you should use words, as opposed to logos e.g., SMARTKARMA as opposed to
Unregistered Trade marks: Passing Off
Unregistered trade marks are protected by the law of 'passing off' (equivalent to 'unfair competition' in other jurisdictions).
Passing off can conceivably protect any name, mark or get-up concerning a business, including a brand name, a person's image, a logo, products, and product packaging.
To be protected by passing off, three elements must be established by the owner of the name, mark or get-up in issue:
goodwill and reputation in the UK;
misrepresentation (i.e., confusion, including a likelihood of association); and
damage (or a likelihood of damage).
No intention to misrepresent to consumers is required; it is enough to show that there has been a misrepresentation.
Section II: Copyright ©
Copyright protects literary i.e. written, artistic, musical and theatrical works, as well as film, sound recordings and broadcasts.
Copyright will exist, for example, in a logo, table of statistics/database, photograph or video, report, flow diagram, a chart or in the text or images of an article. Copyright will also exist in web content: the words, design, graphics, data, layout and any music, video, software and images on a website, and potentially in hyperlinks if they meet the criteria of protection.
Copyright protects the expression of an idea, not the idea itself. Copyright allows the owner to prevent a third party from doing any of the following in respect of the whole or a substantial part (which is assessed qualitatively not quantitatively) of a work, either directly or indirectly:
copying a copyright work (reproducing it in any material form, including storing it in any medium by electronic means);
issuing copies of the work to the public (i.e. putting it into circulation);
renting or lending the work to the public;
performing, showing or playing a work in public;
communicating the work to the public (broadcasting and/or making the work available to the public by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them i.e. on the internet); and/or
making an adaptation of a work or doing any of the aforementioned acts in relation to an adaptation.
Copyright exists automatically upon creation (i.e. it is recorded in writing or another medium) of an 'original work' without the need for registration. There is no requirement to use the © symbol or any other copyright notice on the work, although in some countries outside the UK absence of a copyright notice and/or registration of the work can limit the level of damages for infringement. If in doubt, seek specific advice.
'Original work' means the creation must be the result of independent creative effort and 'not copied'. Depending on the specific example, headlines in articles are capable of being an original literary work and qualifying for copyright protection (provided they are the result of the independent creative effort of the author and are more than just a few words).
Copyright: Ownership & Duration
The owner of the copyright is the 'author' (i.e. creator), unless it was created in the course of employment, in which case it will be owned by the employer. If you commission the creation of a work, the copyright will remain with the author unless they sign an agreement transferring copyright to you.
The author will also own the 'moral rights' in the work: this entitles them to be named as the author whenever the work is reproduced in public, and to object to derogatory treatment of the work.
Derogatory treatment can include manipulating or adapting the work or reproducing the work in a different medium.
Moral rights are not property rights and cannot therefore be transferred. However, they can be waived and will not be infringed if there is consent to the act in question.
Most copyright (subject to some exceptions) lasts for the life of the author plus a further 70 years from the year of the author's death. Works produced outside of the UK may have different durations of copyright protection. If in doubt, seek specific advice.
Exception to infringement where fair dealing in copyright work for the purpose of criticism, review, news reporting or quotation
A third party's copyright work can be used in certain circumstances without needing to obtain the copyright owner's consent. You are entitled to use a copyright work for the purpose of:
criticism or review;
reporting current events; or
you deal with the work fairly (see below);
it is accompanied by a sufficient acknowledgment (unless this would be impossible e.g. for practicality reasons); and
the work has been made available to the public (e.g. it has been published and is not behind a paywall).
Criticism or review: In relation to criticism or review and reporting current events, the meaning of the words is given wide interpretation. However, it is not enough for e.g., a journalist to rely on a misguided belief that they were criticising a work or reporting current affairs when they were not, otherwise this would give them an undesirable incentive to give implausible evidence as to their intentions.
Reporting current events: For reporting current events, the work must be used for reporting current events and not for editorial or other purposes. The reporting must consist of reporting to the public at large in some general sense and not the reporting to a closed circle for some commercial purposes.
For example, there was a case where short 8 second clips of cricket matches were loaded by users to a website (with the users being required to add at least 70 characters of commentary). Whilst the Court accepted that reporting current events could be done in a non-traditional manner and could extend to 'citizen-journalism', it decided that the use made of the copyright works was not for the purposes of reporting current events, i.e. to inform the audience about a current event. Instead, the clips were presented for consumption because of their intrinsic interest and value and the publisher's objective was purely commercial and not genuinely informative.
Quotation: A quotation should be as short as it can. Do not use a whole document when limited quotations will suffice.
Fair dealing: Whether the use of the work amounts to 'fair dealing' will depend on whether a fair minded and honest person would have dealt with the copyright work in the same manner for the relevant purpose. It will always be a matter of fact, degree and impression in each case. The three most important factors to be taken into account when considering whether a copyright work has been dealt with fairly are:
The degree to which a use competes with exploitation of the copyright work by its owner. If the use competes commercially with the exploitation of the copyright work, this may make reliance on the fair dealing defence difficult.
Whether a work has been published or not – if it has not yet been published or is published behind a paywall, then dealing with it is unlikely to be fair.
Whether the amount of the work taken is reasonable and appropriate and if it was necessary to use the amount that was taken. The amount of the work used should be no more than is required by the specific purpose for which it is used.
Sufficient Acknowledgement: For there to be a 'sufficient acknowledgement', it means there must be an acknowledgement identifying the copyright work, by its title or other description, and the author (unless the work is published anonymously or it is not possible to ascertain the identity of the author by reasonable inquiry).
The less of the work you rely upon in the above circumstances the more likely the defence of fair dealing is to succeed.
For example, an advertisement which featured copies of a TV listings magazine’s cover and logos did not amount to fair dealing for the purpose of criticism or review of the magazine. All that was required to make the desired criticism of the magazine was to identify the product, rather than to reproduce the logos or front covers.
Section III: Other Rights
A database is a collection of independent works, data or other materials which:
are arranged in a systematic or methodical way; and
are individually accessible by electronic or other means.
Databases include websites, document management systems and electronic archives of contact information, e.g., a database of horseracing statistics.
Databases may be protected by copyright as written works. Copyright in a database will be infringed if a person copies all or a substantial part of the contents of the database (e.g. a page of a website) without the owner's permission.
A further, non-copyright database right may apply if there has been a substantial investment in obtaining, verifying or presenting the contents of the database. The database right will be infringed both
when a person extracts or reutilises all or a substantial part of the contents of the database, and
when there is repeated and systematic extraction and/or reutilisation of insubstantial parts of the contents of the database.
Third Party Images And Text
For all images and text that you intend to use and which you have not created, you must obtain appropriate permission from the creator/author or other copyright owner which covers your intended use, subject to the exceptions below.
You should also bear in mind whether the image or text contains third party brand names or logos (for more information on copyright see Section II).
The fact that an image or text is publicly available or has been uploaded to the internet and does not identify a copyright owner, does not mean that it is ‘copyright free’. Further, the absence of a copyright notice (the © symbol) does not mean an image or text is ‘copyright free’.
Exceptions to infringement where fair dealing in third party images and text for the purpose of criticism or review
The quotation, criticism or review using third party images and text with copyright protection is permitted provided it is ‘fair dealing’ with that work.
Whether use amounts to fair dealing will always be a matter of fact, degree and impression in each case. Relevant factors will be:
whether the use made of the work affects the market for the original work,
whether the amount taken is reasonable and appropriate, and
whether it was necessary to use the amount that was taken.
It must be done with sufficient acknowledgement or attribution of the copyright owner and the creator (if different), although this requirement does not apply to sound recordings, films or broadcast.
The work must also have been made available to the public (i.e. it must not be an unpublished work).
Be aware that the exception relating to reporting of current events does not apply to photographs, i.e, you are not entitled to use a photograph for the purpose of reporting current events without seeking the copyright owner's consent.
There will always be risks associated with using images or text which you have not created or which you do not own when you do not have permission to use them. It is important to weigh up those risks, make suitable changes to reduce risk where possible, and if in doubt seek specific legal advice.
Example of Images and Copy Protected by Copyright
Third Party Names And Logos
Trade mark infringement, passing off and copyright infringement are all relevant legal claims to bear in mind when dealing with material that features third party names and/or logos. If practical, to avoid any risks associated with using material that features brand names and logos, permission from the brand owner should be sought or you should not use it.
Regardless of the merit of any potential legal claims, if you do not have permission from the brand owner to use the material, here are some practical considerations you should keep in mind:
Beyond practical considerations, no owner consent also warrants some technical considerations:
See previous subsections (third party images and text) and (third party names and logos) for rules regarding usage of website content generally.
It is not infringement to include a hyperlink on a website to a copyright work which is freely available on another website.
It may be copyright infringement to hyperlink to a copyright work on another website if you bypass restrictions such as a paywall.
It may be infringement to link to a copyright work that is on another website without the copyright owner's consent (this depends on knowledge that the material is not displayed with consent, which may be presumed).
Section IV: Third Party Terms And Conditions Of Use
You should look at the terms and conditions on a website where you are obtaining information from to see whether they have placed restrictions on how the information contained on their website can be used. Examples of such restrictions are:
"You must not republish, redistribute or recreate any content on this website other than for your own personal and non-commercial use";
"You must not use the content on this website for the basis of any financial services or products or in any compilation of data"; and/or
"You must not use the content on this website to create derivative works or create any other data without our prior permission".
If a website's terms and conditions seek to prevent or restrict an act which is permitted under copyright law, e.g. the fair dealing exception, and those terms are governed by English law (it should be stated in the terms and conditions if they are), then they cannot seek to restrict such use. Therefore, if you fall within e.g. the quotation exception under copyright law (see Section II), and the terms and conditions are governed by English law, then you can use that information. If in doubt, seek specific legal advice.
There is obviously a level of risk with using third party information to create articles and this will depend on the extent to which that information appears in the article. The more it is simply used as background information to inform what you write (with appropriate acknowledgement/attribution if applicable) and is not contained in the article, the lower the risk.
Equally, just because there are no restrictive terms and conditions on a website, this does not mean that copyright infringement may not arise.
To avoid any risk, you should seek the appropriate permission/licence from the third party to use their information/data or not use it. Often, websites require you to take out a licence with them in order to use their material. You should consider whether it would be worth doing so and ensure that the licence enables you to use any information obtained via the licence for your own commercial purposes.
Section V: Tips To Help Create Infringement-Free Content
Obtain consent from any identifiable individuals.
Check that the permission covers you for:
All intended uses (i.e. online or hard copy articles, internal or external, etc.)
All intended countries or territories
The entire duration of your use
Obtain permissions that are as wide as possible, to allow you to reutilise the material or content for other purposes or in other mediums.
Keep comprehensive records regarding the images/text/logos, etc. you use and the permissions you obtain for their use.
Use quotation marks and acknowledge the author or source if quoting text from a published source (attribution).
Keep quotations short (like this sentence).
Check terms and conditions on a website before using information from it to check how you are permitted to use that information.
Assume the person granting permission has the appropriate authority to do so. Check that they have authority to give you permission for use of the materials in question.
Think that material is free to use just because it is in the 'public domain' or accessible on the internet, or because it does not have a copyright © notice. It is likely to be subject to (at least) copyright protection.
Use logos where the word version of a brand 's name will suffice.
Copy word for word large portions of text from third party materials.
Use information from behind a paywall. This will usually have additional restrictions. Do not use it unless authorised to do so.
Use screenshots of information/images/data tables, etc. from third party websites as this is likely to infringe copyright.
Example Drafts to Assist in Seeking Content Permission
Draft wording for a general and broad form of permission
You hereby grant [analyst/Smartkarma] permission to use and reproduce your
[logo/photograph/imagery/identify the precise material] in connection with [analyst/Smartkarma] promoting, marketing and otherwise undertaking its business and commercial activities [throughout the world and in any media].
You confirm that you have appropriate authority to grant this permission on behalf of [name of company]
Example wording for general forms of copyright attribution
© [year] [name of copyright owner or author]" e.g. © 2023, Smartkarma
"Photo courtesy of [name photographer or copyright owner, linking to their website if appropriate]"
"Permission to use this [image., text or other type of material] has been granted by [rights holder's name]"
Assessing Risk: Asking the Right Questions
In the absence of the appropriate permission covering the material you want to use and the nature of the proposed use, ask the following questions in order to determine whether the use exposes you to a high, medium or low risk. Consider the risk associated with the type of use of the work.
Where will the material be used? Is the brand owner likely to become aware of the use?
If used in a social media campaign, the reach will be unlimited, the duration potentially forever, and the exposure to risk medium-to-high.
If used on your website for reporting purposes, for a limited duration, the risk will be medium.
If used for internal purposes e.g. for a presentation to a closed room of people, the reach will be small, the duration fixed, and the risk will be low.
What is the nature of the use? How prominent is the material in the content in which it has been used? Is the brand owner likely to object to the use?
If used for a high-profile marketing feature and the material features prominently, the risk of a third-party objection will be high.
If used for reporting purposes and/or as a subtle part of general imagery or wording, the risk will be medium.
If used for internal purposes e.g. for internal training or for another non-income generating purpose, the risk will be low.
If it is high risk, consider obtaining the appropriate permission, deploy alternative materials or use the material in a different way in order to reduce your risk. With medium-low risk, whilst best practice is to obtain the appropriate permissions, you may be unlikely to face significant adverse consequences by using the material without permission. However, consider carefully whether the benefits of using the material without permission outweigh the risks and/or if any lower-risk alternatives are available.
It is very important to keep records of where you have obtained the information from and what the content of the information was which you used in or for your article. Also keep records of any permissions obtained.
It may be necessary at a later date to prove what use was made of that information if there is an allegation of e.g. copyright infringement or breach of website terms and conditions.