The brief

Wasted Talent Limited (Wasted Talent) asked us to advise on the purchase from Bauer Media of Kerrang!, the rock magazine (in both printed and digital form). Bauer Media wanted to keep the other two components of the Kerrang! business – Kerrang! TV and Kerrang! radio.

Wasted Talent has a background in re-energising brands online, bringing them into the modern age and, in particular, using social media to enhance their digital presence.

What were the challenges and how were they overcome?

The key challenge was that Bauer Media was maintaining ownership of the Kerrang! TV channel and radio station. Wasted Talent would not be acquiring the entire Kerrang! operation, just the magazine and associated online presence, as well as its physical archive. This raised significant commercial and legal issues.

IP was at the heart of the deal, and the terms upon which the various Kerrang! businesses could co-exist were fundamental to the success of the various businesses.

Each party would, of course, have preferred to have complete ownership of all Kerrang! trademarks, granting the other side a licence to use them within the scope of their respective business arms.

Working with Wasted Talent, Bauer and their advisers, we created a structure under which the existing Kerrang! trademark portfolio (20+ registrations worldwide) was assessed for relevance to the respective businesses, and then each mark was split into separate ‘magazine’ and ‘TV/radio’ specifications. The ‘magazine’ part was assigned to Wasted Talent, with the ‘TV/radio’ part being retained by Bauer.

To manage ongoing use and expansion of the respective businesses, a Trademark Co-Existence Agreement was negotiated. This was the key document in the whole transaction: without a clear approach on how both parties could use the same brand, and develop it in the future, the transaction could not have proceeded.

Why us?

Wasted Talent approached us as a result of our legacy in helping creative individuals, and also for our IP and digital expertise.

What made us stand-out?

It was hugely important that this was a transaction conducted in a manner which would engender a positive ongoing commercial relationship; both parties would use the same brand going forward and would have to work together on an ongoing basis.

We were focussed on completing the deal in an amicable and speedy fashion. Our industry knowledge was crucial in meeting the key objectives, as of course was our intellectual property expertise. Also, it was very helpful that we have an internal trademark portfolio team, who could manage the assessment and split of the trademark portfolio.

Outcome

The deal completed successfully within four months, and the parties have been in operation effectively since then.

The team

The team was led by partners Dan Tozer (Digital and Technology) and Rhys Llewellyn (Corporate), with support from partner Yvonne Gallagher (Employment), and associates Emily Miles (Corporate) and Charlie Thompson (Employment).

Our trademark portfolio team managed the trademark separation and included partner Shireen Peermohamed and paralegal Nicola Schwartz.

Client testimonial

“We were hugely impressed with the team at Harbottle & Lewis. Not only did their legal expertise shine through but their knowledge of the creative industries was second to none. Working with a team of lawyers who could translate intricate IP issues into something easily understandable made what was a complex deal, a straight-forward transaction.”

Jerry Perkins, Chief Executive, Wasted Talent