Paula Williams is an associate at law firm Veale Wasbrough Vizards

Prevention is better than cure

When devising their marketing strategies, schools need to think carefully about the legal ramifications, advises Paula Williams

Posted by Dave Higgitt | October 01, 2014 | School life

• #veale-wasbrough-vizards
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• #independent-schools-marketing
• #trade-mark
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Few schools can be confident of maintaining high levels of interest from prospective pupils and their parents without a good marketing and brand strategy. However, there are a number of legal, commercial and reputational traps and pitfalls that need to be avoided. 

Trade mark protection

The protection and maintenance of a school's reputation is vital to its long-term success. Marketing efforts will be wasted if there are reports in the press, on the internet and via social media of another school with a confusingly similar name that is the subject of a scandal or educational failings.

Although your school will build up unregistered rights in its name and crest (or logo) through use, these unregistered trade mark rights are geographically limited in scope and are notoriously complex and expensive to enforce under the law of passing off.

As is so often the case, prevention is better than cure and the cost of pre-emptive trade mark registration is likely to be significantly lower than the legal costs and management time that can accrue in trying to protect your school's reputation from damage when an unregistered trade mark is abused.

School reputations can be damaged by third parties in a variety of ways. Online abuse is becoming more common, through social media (e.g. fake Facebook profiles) or through the use of the school name in a domain name operated by an unconnected entity.

Trade mark registration for the school name and crest (or logo) provides an effective tool against such damaging use and will also deter would-be infringers. It will enable the school to stop third parties from using identical or similar trade marks in connection with education or similar services.

It makes commercial sense to protect the assets and reputation of your school, but trustees of charitable schools have a legal duty to do so. As evidenced by the significant franchise fees paid in connection with international school projects, trade marked names, crests or logos can be valuable assets, but if they are not protected they are open to abuse by third parties. In the same way that buildings should not be left uninsured, so should the school's public reputation be protected. As part of this duty, charity trustees are expected to take reasonable steps to protect the school's trade marks and should consider registration carefully.

If you are considering an overseas franchising project, then trade mark protection is a vital step to take as soon as possible. Trade mark protection laws differ around the world, and in many overseas territories if a third party applies to register the school name before the school does, then the third party will have the exclusive right to use the school name in that territory, even to the exclusion of the school itself. Trade mark protection will enable the school to control the use made of its trade marks in the particular territory and to retain control over the use made of its valuable reputation. 

Copyright pitfalls

Copyright issues associated with the engagement of photographers, website developers and prospectus designers often arise. There is a common misconception that if a school pays a contractor to take photographs or to create a website or prospectus, then the school will automatically own the copyright in those photographs or that website. This is not the case.

In the absence of a written agreement to the contrary, the legal presumption is that the photographer, designer or developer will own copyright in the photographs, prospectus or website, even though the school paid for the work to be done. In practice, this means that: 

• the school may not re-use the photographs without the photographer's consent (for example, if the photographs were taken specifically for the prospectus, the school may not use the photographs on its website without the photographer's consent)
• the school may not update or reprint its prospectus without the designers' consent
• the school may not update or make changes to its website without the developer's consent 

Photographers, designers and developers often charge a large fee for providing the appropriate consent. It is often at this stage that schools seek legal advice, but by then the options are limited. Whilst there are a number of commercial steps that schools can take to try to minimise this consent fee (offering inducements such as repeat work, for example), it is far better to avoid the situation arising in the first place by, for example: 

• ensuring that you fully understand the copyright position before signing up to the photographer, designer or developer's standard terms
• ensuring that the school obtains copies of the artwork or electronic files, to enable the school to use the work as it wishes. This will also provide the school with protection should the photographer, designer or developer cease to trade. 

The agreed terms should also address data protection and child protection issues arising from the taking and use of photographs. 

Photographs of minors

If not used correctly, the use of photographs of minors (or any individual) in school marketing materials has the potential to breach the Data Protection Act. An image of an identifiable individual is considered to be that individual's personal data. The act imposes obligations to process this personal data fairly. Therefore, before any such image is used in the school's marketing materials (e.g. prospectus, website or social media), the school should have made pupils (or, depending on the pupils' age, their parents) aware that photographs may be taken and used in this way. This is best covered off in a privacy notice given to pupils, parents and guardians. A privacy notice is a requirement under the act and should outline in general terms how the school will use and store the individual's personal data. It should also make specific reference to the use of images in marketing materials. Such a privacy notice provides an opportunity for a parent or guardian to notify the school if they are unhappy for their child's image to be used for marketing purposes. In practice the privacy notice should be made easily available to pupils and parents, for example on the school's website and in the pupil handbook, and referred to in the contract with parents.

The consequences of breaching the Data Protection Act may include parental complaints, investigation by the Information Commissioner's Office, the payment of fines and compensation and damage to the school's reputation. The school will also need to take action to remove the offending photograph from its marketing materials and this will usually involve the expense of reprinting materials such as the school's prospectus.

Photographs taken for personal use (e.g. taken by a parent at a Christmas play or sports day) will fall under the domestic purposes exemption and so there is no need to provide a privacy notice in these circumstances. 

Failing to avoid these school marketing pitfalls can lead to unnecessary cost and hassle, and can even cause damage to the school's valuable reputation. It is recommended that anyone concerned about any of these situations seeks legal advice, especially as prevention is far better than cure in each case. 

Paula Williams is an associate at leading education law firm Veale Wasbrough Vizards T: 0117 314 5616 E: pwilliams@vwv.co.uk W: www.vwv.co.uk