A few years ago, the front page headline of the Wall Street Journal stated boldly “Charity Brawl: Non-profits Aren’t So Generous When a Name’s at Stake” referring to the stinging criticism received by a celebrated charity for enforcing their rights over part of their name.
The palaver prompted a retort from Dan Pallotta, a renowned philanthropist who’s evangelical about the need to change the mindset of how we see charity, and for charities to change their perception of themselves. His response was followed by an insightful article published in Boston College Law Review by Lauren Behr entitled Trademarks for the Cure: Why Non-profits Need Their Own Set of Trademark Rules.
In short, the Wall Street Journal and its commentary illustrated the difficulties of protecting a brand name built up through sheer hard work in the philanthropic space, both from a legal and PR point of view. Without the brand, the philanthropic’s ability to communicate, mobilise and, ultimately, do good, can be severely compromised. Yet protecting it could threaten the integrity of the philanthropic altogether.
As Pallotta said in his response, referring to a reaction when his business decided to take legal action against another charity: “To say that public reaction was vitriolic would be an understatement. To give you a flavour, one anonymous critic wrote to me that I was evil, adding: ‘No wonder your partner killed himself.’ My partner had committed suicide a year-and-a-half earlier.”
It’s not just an issue in the US. Last year, the UK IP court adjudicated on who had rights in the name Open College Network and OCN between two educational charities. Prof Jeremy Phillips, respected IP academic, emotively describes the spat as: “The most perfect example of a disgraceful waste, of utter stupidity in branding and squandering of charitable funds for no constructive purpose. While I am a keen supporter of charities in general, and educational charities in particular, I would be most reluctant to see so much as a penny’s worth of my hard-earned cash go to any charity that adopted a logo as confusingly similar to that of another charity, whatever its alleged reason or justification.”
The lethargic but acrimonious fight between the WWF (wrestlers and the wildlife fund) over the last decade has been well documented and, in Romania recently, an international charity offering guidance and assistance in the areas of religion and relationships had to step in and protect its Alpha trade mark against Alpha Clinics. In Israel, a recent decision not to recognise the goodwill in a charity because it was not “in business” illustrates some of the thinking Pallota is guarding against and, closer to my own home, the position is no different.
Not long ago, it wasn’t possible to register a trademark in South Africa for a charity because trademarks had to be capable of being used in trade, and a charity was not considered a trade. This has changed, but there still exists a responsibility for the charity to police and protect the trademark. The National Lottery Board’s failures to manage the use of its trademark by others led to a Supreme Court of Appeal decision in 2009, invalidating its “lotto” trademark for becoming generic. The repercussion of this decision may well be that someone is gaming with a different lotto on the assumption that some of their funds are going to a charity.
This is why Behr, in her article, advocates for greater protection for trademarks in the non-profit sector because “the work of these organisations affects the greater public, as well as both potential donors and recipients”. I would agree with that.
So how exactly does one protect a brand in the philanthropic space?
Well, traditional forms of IP protection should be considered not only in protecting the brand, but also the creativity and innovation within the non-profit. Care should be taken in deciding where to house the IP because of the possible tax and structural challenges and advantages in using a non-profit or trust. Vigilance and deftness should be key in communicating, licensing and enforcing IP both from a legal and PR point of view. One needs to remember that the philanthropic may be in the business of giving, but that does not mean it’s for others to take.
It’s time for the non-profit brands, especially in the philanthropic space, to step out from the purple rain.
ABOUT ADAMS ON AFRICA | ISSUE 1
This article is part of a new quarterly digital publication, Adams on Africa. The publication aims to provide you with the necessary information and updates on developments in business and the law in Africa. We welcome your feedback. Articles in this issue: