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Put a clip on YouTube – nek minnit, someone stole my IP

All it took to turn Levi Hawken into an internet phenomenon was a nine-second YouTube clip in which he coins the phrase "nek minnit".

Sarah Chapman, Simpson GriersonThe video showed Hawken talking to camera: "Left my scooter outside the dairy…nek minnit…" and pointing to the remains of his scooter on the ground.

It then became apparent from the footage that someone had taken all but the board of the scooter. Hawken was, understandably, less than impressed.

What Hawken managed to do in these nine seconds was to essentially coin a phrase that is the mispronunciation of the phrase "next minute". Nothing amazing about that, you may say. However, society saw it differently. With the internet and social media being what they are, within a very short time the "nek minnit" phrase had passed the tipping point of social popularity and people from all sectors of society were soon incorporating the phrase into their daily conversations.

The clip has now received millions of hits and the phrase has become part of the vernacular. The phrase's popularity is evidenced by the fact that definitions for the phrase can be found on urbandictionary.com and the media are also taking advantage of the phrase. News site stuff.co.nz recently included the phrase in the headline of an unrelated news story about a driver who passed her driving test and 15 minutes later got stopped by police for speeding ("Got my licence ... nek minnit, speeding ticket"), and the phrase has even been used by politicians and talk show hosts.

However, with all this popularity it was, perhaps, inevitable that someone would take advantage of Hawken and his newfound fame. Supre, the Australian fashion retail chain, has recently been the subject of public criticism for selling a t-shirt bearing the words nek minnit, without acknowledging Hawken (financially or otherwise) or his connection to the public interest in the phrase.

But did they need to? Does, or indeed, can, anyone own the rights to the phrase "nek minnit" and its alternative spellings (for example "negg minute" and "nek minute")?

This particular situation highlights the power of the internet to create a brand even where there may have been no real intention to do so. It is not clear why the video clip was made or even why it was uploaded to YouTube. Although Hawken has admitted that he did not invent the phrase, he certainly brought it to the attention of the world, or at the very least, made it popular. So can he own it? Can it be "his" brand?

If the words were already in use by the public albeit in a limited manner, the real question is whether the public, upon seeing the phrase, would associate its use with Hawken. From what we have seen, I think there is a strong argument they would. Certainly, at least a substantial portion of the public would, and that is all that is needed.

It is almost certain that Supre would not have considered making and selling a t-shirt bearing the words "nek minnit" were it not for Hawken’s YouTube clip. Nor would the public have any interest in a t-shirt bearing those words, but for Hawken’s clip.

He may, at the least, have an action for breach of the Fair Trading Act 1986 (FTA) available to him. Under section 9 of the FTA, no one can engage, in trade, in conduct that is misleading or deceptive or likely to mislead or deceive. While the terms "mislead" and "deceive" are not defined in the FTA, they are generally described as meaning to lead into error.

It is not unreasonable to assume that a substantial proportion of the relevant Supre t-shirt buying public would be aware of the YouTube clip and as a result would be "led into error" by believing that the t-shirts are in some way associated with, or endorsed by, Hawken.

The law is not all in his favour though. Hawken may not have rights to the phrase for all goods and services. While there will be particular areas where the association with him would be inevitable, such as for skateboards, scooters and maybe even clothing and goods such as soft drinks and energy drinks, there will be plenty of other goods and services where no such connection is likely. In relation to certain goods and services the relevant public would not even be aware of the phrase or the phenomenon (retirement village services for example), and therefore Levi would be unlikely to have rights in the phrase for these types of products.

Obtaining trade mark protection is a way that Hawken could attempt to protect his phrase for a broad range of goods and services. However, he has been beaten to this by another applicant. A search of the Intellectual Property Office of New Zealand (IPONZ) trade mark database reveals another example of someone trying to cash in on the "nek minnit" craze. A company called Makan Distiller Ltd has filed an application for NEK MINNIT in class 32 for soft drinks. A month or so later an application was filed in Hawken’s name in 18 classes for a range of different goods and services from cosmetics to cars, clothing to café services. It seems Hawken was not going to get caught out twice.

Unlike an action under the FTA, Hawken does not need to prove a connection to all the goods and services covered by his trade mark application in order for the application to be accepted. All Hawken will need to show is that the phrase is not descriptive or non-distinctive in relation to the goods and services covered by the application, or that if it does have some meaning, that meaning is as a result of him. However, if the phrase is so common that it has become a part of everyday New Zealand slang, the question remains whether or not the mark would be capable of distinguishing the goods of one trader from another at all.

While we will have to watch this space to see how it plays out for Hawke, this situation provides valuable lessons. The internet, as we all know, is a powerful social tool that can be used, not just by business owners to promote their brands, but by the general public to create brands. However, the challenge presented by the internet and social media generally is one of speed. A phenomenon can be created, and taken advantage of, in very little time. The advice – seek protection immediately, or nek minnit, the opportunity's gone.

Sarah Chapman is a senior associate at Simpson Grierson