HK talent agency slaps brands with legal letters for IP rights infringement

One of the owners of a talent agency Valkyrie Agency is demanding for brands to stop using the internet lingo "見字飲水" (When you see this word, drink water) as it was registered by his agency in 2020 with the Intellectual Property Department of the Hong Kong government.

Several brands in Hong Kong have already received emails or letters of demand from Valkyrie Agency, requesting for them to compensate for intellectual property rights infringement. According to emails seen by MARKETING-INTERACTIVE, Valkyrie Agency has made a compensation claim, demanding for brands to pay a five-figures sum. In the email, Valkyrie Agency also said it will file a lawsuit against the brand, including but not limited to the expense of the lawsuit and the removal of materials that infringe intellectual property rights, if the brand fails to reply within seven days.

Information from the Intellectual Property Department of the Hong Kong government unveiled that the internet lingo "見字飲水" was registered in class 32 and class 35. According to the department's website, Class 32 contains various types of beverages; while Class 35 is about many types of professions and services. In addition, the internet lingo was also registered in Class 21 and 28. These classes are in relation to household or kitchen utensils and containers, as well as toys, games, playthings and novelties respectively. The department said the applicants need to provide proper classification and clear descriptions of goods and/or services in the form that he or she submits.

Terence Nam, founder of Valkyrie Agency, told MARKETING-INTERACTIVE that he created the Facebook page "見字飲水協會 See this and Drink water Association" several years ago. Nam said that he was approached by a company specialised in trademark registration after the internet lingo gained popularity, and was told that given the popularity of the term, he should have it registered. The company also advised him that such traction should not just be a free trendjack as many brands are using the term "見字飲水".

Currently, Nam is demanding brands, except micro-businesses, to compensate for his losses. Nam added that on the same Facebook page, the registered trademark symbol "®" is right next to the internet lingo in the "About" section. The page also welcomes business collaborations as stated in the same section.

Nam said that he is currently sending emails to brands that infringe the copyright. He will also issue demand letters and file a claim with the Small Claims Tribunal.

A report from HKET said that in response to an online message, the "See this and Drink water Association" said it registered the trademark two years ago. In response to an Instagram account known as HKPR_memes, the page said, "Regardless of business practices, if you wish to use this phrase you need to reach out to us."
 
The Facebook page "見字飲水協會 See this and Drink water Association" regularly publishes posts with photos, talking about trending topics in Hong Kong from around the world. Nam claims that he sources memes on the internet or photos from news outlets before putting in extra information. He explained that memes are secondary creation, which is not protected by any intellectual property rights regulations.

A seasoned creative agency practitioner told MARKETING-INTERACTIVE under anonymity that many in the industry are shocked by the incident with the legal letters sent out. He added that the move will definitely warn brands to stay away from the popular internet lingo and as such, could see it reducing in popularity. Subsequently, with reduced usage, the owner will not be able to bank on the popularity for monetisation purposes, as the public will avoid using it.

Another digital marketing practitioner in the industry believed that as the amount of money demanded by Valkyrie Agency is affordable, and it will be compensated for the losses as brands have "really used the internet lingo for commercial purposes".

According to Intellectual Property Department of the Hong Kong government, the Hong Kong government is in the midst of consulting the public on “parody” but not on “secondary creation”. It said that “secondary creation” is not a term commonly used in copyright jurisprudence and it is difficult to ascertain its actual coverage, adding that "the provision of a copyright exception solely based on the rather ambiguous concept of 'secondary creation' may blur the line between infringing and non-infringing works, create uncertainty and increase opportunities for abuse."

Additionally, over the past decades, newspaper on.cc sued Apple Daily several times for using its photos without permission, infringing its intellectual property rights. The Hong Kong government said it will not insist on prosecuting the copyright offence without involving the copyright owner. It explained on the department's website, "The most fundamental element of copyright offences is that the relevant acts have been conducted without the consent of the copyright owner and thereby constitute copyright infringement. If the copyright owner does not object or pursue the matter any further, there is no basis for the enforcement agency to follow up any criminal investigation, not to mention laying a prosecution."

On 25 March, the Facebook page "見字飲水協會 See this and Drink water Association" and the Instagram account "seethisdrinkwater" cannot be found.

(Photo courtesy: 123rf)