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What IP rights might preside in the iconic JENNERS name?

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United Kingdom

The removal of the iconic lettering of the Jenners sign on the historic department store in Edinburgh made headlines recently. Beyond these headlines, we consider the possible intellectual property implications.
 

Background

The iconic Jenners building has occupied a prime location in Edinburgh for 183 years. The building was originally known as "Kennington & Jenner" after the original owners, Charles Jenner and Charles Kennington, who opened the store in 1838 as a drapery business. After Kennington retired in 1861, Jenner eventually removed Kennington's name in 1874 (11 years after Kennington had died). Jenner retired in 1881 and left the store to his junior partner, and the store remained the property of the junior partner's descendants, the Douglas-Miller family, until they sold it in 2005.

Residents and visitors alike will now recognise the distinctive gold-coloured letters making up the Jenners name that normally sit atop the 6-storey early Renaissance department store.

Instead of in their usual place overlooking the corner of Princes Street and South St David Street, these signs were in storage for a few weeks after the current tenant of the Jenners building, Mike Ashley's Frasers Group, had them removed in April 2021. This was done without permission from the owner of the building, Anders Holch Povlsen, a Danish billionaire and one of the largest private landowners in the UK.

While Frasers Group reportedly owns the commercial rights to the Jenners trading name, the City of Edinburgh Council issued a building enforcement notice requiring that the Jenners lettering nevertheless be reinstated to its original position on the Jenners building (see the notice here). The Jenners building is a category 'A' listed building, and while the Council noted that the lettering itself is not specifically mentioned in the description of the listing, it came to the conclusion that it is, nevertheless, a fixture on the building which is synonymous with the name Jenners. The enforcement notice refers to photographic evidence that the lettering has been in place since, at least, 1950 (see photos here) and as such predates the date of listing on 14 December 1970 and notes that the original Jenners signage was designed by the building's architect as part of the fa├žade treatment.

The enforcement notice took effect on 14 May 2021 and gave the Frasers Group three months to comply from that date. The lettering was subsequently reinstated over the course of a few days from 16 May 2021.

Commentary

The fact that the Jenners building is listed and therefore protected makes the conclusion to this story fairly straightforward: the listed buildings regulations override any intellectual property (IP) rights that may be found in the JENNERS name. It would appear as though listed buildings regulations could also protect other iconic style names beyond the Jenners building. If the Oxo Tower was classed as a listed building, for example, it would follow that, as the OXO name strongly contributes to the building's architectural and cultural significance, that the regulations would protect both the building and the name itself. Beyond building regulations, there are many buildings around the world that have commercial names that no longer relate to the current businesses being run out of them. The Chrysler Building in New York, for example, was originally constructed by Walter Chrysler, the head of the Chrysler Corporation, but it was quickly leased out after its completion and now contains a variety of tenants including a law firm, an arts agency and co-working spaces.

If the Jenners building was not listed, however, would Frasers Group have had the right to take down the JENNERS lettering?

As the owner, Anders Holch Povlsen, did not want the lettering removed, this would have been a question of whether the JENNERS name belonged to him, as owner of the building, or to Frasers Group, as tenant?

While the commercial rights to the Jenners trading name belong to the Frasers Group, it is more likely that the physical signage belongs to the building and to the owner.

To what degree, then, can an owner of a building protect the IP found in that building's features? We explored this issue in depth in a previous blog post (see our blog, The London Skyline - an IP view), but we will revisit some of those IP rights here and analyse them in the context of the Jenners building.

Intellectual property in JENNERS

Copyright

The Copyright, Designs and Patents Act 1988 ("CDPA") states that copyright may subsist in works of architecture, which include "buildings" as an "artistic work". A building is defined as including "any fixed structure" or "a part of a building". While copyright arises automatically, the work must be deemed original, in the sense that it is the author's own intellectual creation (reflecting the personality of its author, as an expression of free and creative choices) and recorded which have fairly low thresholds. Under this definition, it appears as though copyright is likely to subsist in the Jenners signage, either within the copyright of the building itself, or as its own entity as "a part of a building".

In this case, copyright would last for the life of the architect plus 70 years. If the copyright in the Jenners signage is considered to be within the copyright of the building itself, we would look to the architect of the building as a whole—William Hamilton Beattie. Mr Beattie died in 1898, so any copyright in the Jenners building has been expired for some time.

If, however, the actual lettering of the Jenners sign was considered to be "a part of a building" and have copyright separate from the building itself, then we would have to consider the creator of those iconic letters. It is also possible that the lettering could be considered a "sculpture", or a "work of artistic craftsmanship"; (other types of "artistic work" under the CDPA). Although both these types of work were given a narrow definition in Lucasfilm Limited v Andrew Ainsworth  this case was before the recent CJEU ruling in Cofemel in 2019, which has arguably widened the scope of copyright protection.

While it's unknown who exactly was tasked with designing and creating the original signage, it is possible that copyright would still exist if the creator has not died more than 70 years ago. While the architect is generally the owner of any copyright in the "part of the building", it is very likely here that there would be an agreement to the contrary that would assign the copyright to the then-owners, the Douglas-Miller family.

If there is any existing copyright in the Jenners lettering, it likely lies with the current owner, Mr. Povlsen, as it is probable that it was assigned to him when he bought the Jenners building in 2017. 

Trade marks

There are currently three active trade marks related to the word JENNERS, and all are owned by House of Fraser Brands Limited, which is a subsidiary of the current tenant of the Jenners building, Frasers Group. Two of them are word marks for the word JENNERS and one is a figurative mark comprising of the words JENNERS EDINBURGH. The trade marks, UK00003587981, UK00002391239 and UK00002391773, cover goods and services in Classes 25, 35, 36 and 43 between them. The most recent trade mark (ending 7981) was only applied for on 1 February 2021 and has yet to be registered, while the older two trade marks (ending in 1239 and 1773) were both registered in 2005, which coincides with the 2005 sale of Jenners from the Douglas-Miller family to the House of Fraser.

As the House of Fraser has remained involved in Jenners since 2005, either as owner or as tenant, it follows that there were likely terms of the contract of the 2017 sale to Mr. Povlsen that persevered the ownership of the 2005 trade mark for the House of Fraser and its parent company, Frasers Group.

It has been reported that Frasers Group has said that it would be quitting the Jenners building in the near future after it has been unable to come to an agreement with Mr Povlsen over the removal of the Jenners signage, so it is likely that the trade marks will be assigned or licensed to Mr Povlsen or a new tenant in the event that this does occur.

Final word

This is a unique scenario, as despite Frasers Group having ownership of the JENNERS trade mark, it is unable to control the use of that mark on the building that it rents due to its listed status. So while the Jenners lettering saga appears to be, for the time being, fairly straightforward thanks to the City of Edinburgh's Council issuing its enforcement notice, it is still interesting to consider any underlying IP rights in a building or a brand name that could be further protected. 

With special thanks to trainee Kristina Holm for her contribution to this blog.

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