Friday, 27 February 2009
Thursday, 26 February 2009
I will be offering subscriptions to the monthly production at £200 plus VAT per year, starting with the January edition. That will get most of the CPD you need, and painlessly I hope. Please register your interest if you'd like to subscribe - leave a comment or send me an email - or just watch this blog.
Sunday, 22 February 2009
I also love the Wavefinder that converted my computer into a digital radio, the best part of ten years ago. It also lit up in attractive colours, aolthough reception was pretty unreliable.
Like with VHS, we have to accept Windows Mobile on our handheld devices (and indeed Windows on our personal computers - so much software is, regrettably, Windows-only. And lawyers, and no doubt others, have to live with Word as a de facto standard for word processing). At least Psion bequeathed the Symbian operating system to the world, and that's a valuable legacy.
Before they moved out of consumer products - in fact, as long ago as 1996 - Psion also made a device that they ill-advisedly called the Netbook (and which, also perhaps ill-advisedly, ran Windows CE). They registered trade marks for it, though I don't quite see how they got that round the relevant registrars - after all, it's phonetically very close to "notebook", and alludes to the Internet, which was well-enough known by the time the product was on the market and to which the device gave access. So, a pretty weak brand to start with.
Yesterday I found myself in the unusual position of being in an office supplies emporium. (I realised I didn't know quite what to call it - not a shop, because it was too big, but "store" is American usage, and "superstore" doesn't seem right at all.) I was looking for a scanner. There was a display of "netbooks", and I suddenly understood the controversy that I had been reading about. (What a sheltered life I must lead.) There were products from Asus, Acer, Dell, Toshiba and perhaps others, all what I would call - in my ignorance - sub-notebooks, or perhaps "ultra-portables".
The vociferous lobby that wants the word "netbook" to be free for all to use argues that Psion hasn't used the name since it stopped making its netbook computer in 2003. However, it looks as i f the Netbook computer was replaced by the Netbook Pro computer, and as Psion Teklogix as they now are argue in a statement available from their site (here is the link) they continue to supply accessories and to service the things. There are several for sale on Ebay, ooffered by American sellers. Sadly, I find myself unconvinced, the more so because it's such a weak-looking trade mark to start with. Why couldn't they just have kept making them in the first place? I'd have one to replace the 5mx.
Thursday, 19 February 2009
Well, at least it shows that the Data protection Act does sometimes get enforced!
Jones Day, I'm not surprised to see, is getting a lot of stick for this particular piece of absolutism. The expression "studpidest law suit ever" seems to be achieving some currency in this connection, although I reckon there is some fairly hot competition.
Tuesday, 17 February 2009
The British Computer Society has expressed severe doubts about the changes, reported here. I particularly like the expression of concern about what might happen under a less benevolent government. It's becoming harder and harder to imagine such a thing: how can a government be less benevolent than one that puts this sort of legislation in place? Stella Rimington no less argued just today (well, it appeared in print today) that the government was in danger of creating a police state, using fear of terrorism to justify curtailment of civil liberties.
Monday, 16 February 2009
The IPKat has bemoaned the lack of English translations of opinions and decisions many times, and apparently it is down to a shortage of interpreters. I recently edited a contribution to The Trademark Reporter, on Community trade mark developments, and when I consulted the original court decisions I found none of them available in English.
So, whether or not they invented the definition:
"Informal usage in vocabulary and idiom adopted by sailors and more widely by navy personnel. Naval slang. He was talking Jack Speak."
it's a purely descriptive expression composed of two utterly non-distinctive words. But the site also tells us:
"JACK SPEAK is a UK trade mark application belonging to the Secretary of State for Defence.
What? Not only is this sloppy use of language - it's not a trade mark application, although it was evidently the subject of one - there is no way that it should ever have been. It's descriptive, and doesn't identify the Royal Navy as the origin of anything. Moreover, it proprely belongs to someone else. So why should the Navy wish to register it as a trade mark in the first place?
The site also invites us to:
"Check out JACKSPEAK: A guide to British Naval slang and usage by Rick Jolly. Available online and in most bookshops.
So I did - check it out, that is. Well, I assume I did as instructed: I have idea what "check it out" means, though I didn't realise it was English English - perhaps it's Jack Speak, or Jackspeak. Anyway, I interpreted this as an instruction to search for it on the Internet: thank goodness they didn't say "Google it". The book was published by Maritime Books in 2000. That business was established by a former RN officer, Mike Critchley, as long ago as 1979. There's no limited company of that name on the Register, and the site displays the usual ignorance of the E-Commerce regulations and the Business Names Act, but that's not relevant to my point.
In fact, the trade mark is registered (number 2488700) and has been since last May, in classes 9, 16 and 38. What hope for us if our armed forces can't even keep a web site up to date? But more than that, what hope for us if the trade marks system is used to enclose parts of the English language in this way? There was, I fear, bound to be an increase in this sort of thing when the Registry stopped refusing applications on relative grounds, but they should surely have picked up the non-distinctiveness point.
Saturday, 14 February 2009
One aspect that doesn't appear in the story is the extent of the due diligence carried out by the Beeb before they used the image. It's pretty obvious that an image on the Internet will be protected by somebody's copyright. If it's old, then perhaps copyright will have expired, but this was the Birmingham skyline. (That's Birmingham in the West Midlands, England's second city, not Birmingham, Alabama, though people who should know better do get the two confused: see this report - the fact that it's from the BBC appeals to my sense of irony.) Even if it's old, of course, perhaps one should assume that Getty or Corbis owns the copyright. And if it's Getty, a further irony is that a large part of its holdings was the Hulton Picture Library - which once belonged to the BBC ...
So what were the BBC doing reproducing someone else's copyright work at all, even (as they plead) off-air, without ensuring that all the boxes were ticked? Don't they have any images of their own?
We are now being exposed to another intrusion into our privacy, with the government tracking the movements of Britons in and out of the coutry. They say it is in the interests of fighting crime: they would, wouldn't they? No doubt it will help that, but at what cost?
And here is another commentator writing on much the same theme. I'm putting these links in so that i can easily find this material again later, but it also serves to enable readers (of whom it seems I have a few) to see it for themselves. I don't see so much comment in favour of stronger intellectual property rights: rights owners, especially corporate or institutional ones, are being sucked into the IP vortex, while users increasingly ask what the point is. And if the point of intellectual property law is lost sight of, it will really be out of control.
I like the description of IP as "the mercantilism of our time" - another useful phrase that I can employ. However, I recall that back in the early eighties a return to mercantilism was seen by many as an attractive solution to a number of political problems - I remember it being seen a a panacea for the problems of British shipping, and as a candidate in an election in a port, that had a certain resonance for me. Maybe i was wrong then, but I certainly don't see the trend towards IP absolutism as any sort of panacea for our present problems.
More to the point, perhaps, is the Competition Act which dates like the DPA from 1998. The Office of Fair Trading has draconian powers to investigate infringements of the competition rules. What on earth possessed the legislature (and we should probably blame the European Council and its directive) to omit such an important element? No wonder data protection laws are so rarely taken as seriously as they should be. I can't see why they should be any less rigorous, in their field, than the competition laws.
Parliament is considering legislation that will give the ICO powers to investigate, and when they come along - which won't be very soon - they will be very welcome, except to those who don't take the trouble to comply: like government departments, although their abysmal record is now becoming matched by that of the private sector.
Richard Thomas, the Information Commissioner, retires in the summer, and could be excused for counting the days. I wonder what his successor is thinking? Perhaps I'll see him on the train before long and ask him ...
It's a prospect that I find deeply repugnant.
Saturday, 7 February 2009
The accusations were raised at a meeting of the World Trade Organisation, and concern in particular the seizure in The Netherlands of a shipment of Indian-made generic blood pressure drugs en route for Brazil. The use of intellectual property to inhibit access to affordable medicines is not the law's finest moment, and it shows strikingly how the pressures on intellectual property owners - the need, I suppose, to provide profits for shareholders - can manifest itself as blind avarice. Of course, nothing in this world is ever that simple - but when it comes to life-saving medicines, it's not very difficult, either.
Journalism.co.uk tells us that Ben Goldacre, another person of many accomplishments, among them being a doctor and a Guardian columnist, has been forced by LBC to remove "an extract of [sic] a radio broadcast" from his blog. LBC's legal team contacted him as, according to the broadcaster, "he did not have the necessary permission". LBC's legal team might do well to read section 30 ... though I'm not going to stick my neck out very far on the strength of one blog entry. I am however forever indebted to Dr Goldacre for introducing, perhaps for coining, the expression "intellectual property absolutists" to describe his nemesis. I'll credit him with the authorship of the phrase here, and reuse it several times a day hereafter. Without prejudice to the question whether he has copyright in it in the first place (see Exxon Corp v Exxon Insurance Consultants  Ch 119.
Now I have the phrase I have been looking for, I've got another two items about IP absolutism which Google Alerts has thrown up in the last 24 hours. First, a report of a presentation by Prof Sunder of Chicago Law School, who seems to be calling for new thinking about what IP is trying to do, and second a feature about Antarctic patents - no, not that there's a new patent office in the world, nor that my old friend Charles Stewart's visit to run the Antarctic Marathon last year led him to start practising IP law there - just the old, old story of corporate greed.
Maybe the absolutists are behind the small battle raging in Canada over the use of the word "Glen" (in the brand Glen Breton) for Canadian whisky. The Scotch Whisky Association has challenged Glenora Distillers' trade mark registration or application (not clear where it has got to from this report) but without success so far. This report tells us that the Federal Court of Appeal has found for the applicant (respondent) on a particular interpretation of the law. I wonder whether they referred to the Wee McGlen case  RPC 115 - or Wotherspoon v Currie, the Glenfield Starch case, (1872) LR 5 HL 508?
Friday, 6 February 2009
The report indicates that Cadbury's are not getting very far, although the appeal was only on one point to do with judicial impartiality. The claim is brought under the Trade Practices Act, and Cadbury's haven't yet managed to register the colour purple as a trade mark in Australia although they are getting close to doing so - for chocolate, though that's probably enough to give protection against what Darrell Lea is doing: but presumably even if Cadbury get the registered trade mark, the senior user will have protection for its vested rights.
The effort deserves the widest possible readership, in my opinion!
Thursday, 5 February 2009
How does it seek to do this? By ensuring that what is alreaady in the state of the art can't easily be overlooked. This involves three strategies (and here I quote from the program's website
- “Defensive Publications” that codify ‘known’ inventions that have not previously been patented so that they can be brought to the attention of the patent office to ensure that later developed patent applications claiming such inventions do not issue. In general, defensive publications are a vehicle which allows the Linux and broader open source community to create valuable prior art that enables Linux and freedom of action/freedom to operate for those active in utilizing Linux to drive innovation in products, services, and applications;
- “Peer to Patent” which solicits prior art contributions from the Linux and broader open source community to ensure patent examiners are aware of prior art relevant to published applications that are currently under review. In this way, the patent office is alerted to relevant prior art and only the most innovative and novel ideas are actually patented.
- “Post-Issue Peer to Patent” which solicits prior art contribution from Linux and the broader open source community to permit the invalidation of previously issued patents that were issued in error because of the patent office’s lack of awareness of relevant prior art.
Wednesday, 4 February 2009
At the same time, there is another controversy about the way that alleged file-sharers are being pursued by a London firm of solicitors. They have been sending out letters, having obtained names and addresses from ISPs who have been required to hand over the information by a court order, offering to settle for £500 - a figure which is bound to go up if the initial offer is not accepted. The trouble is that the accusations of infringement have been levelled against some pretty unlikely people, who have been understandably indignant. Which?, the organisation formerly known as the Consumers' Association (under which name we all knew what it was), has taken the matter to the Solicitors' Regulatory Authority, although it does look as if the problem is more to do with the quality of IP address data than misconceived attempts to recover compensation, and that's a shortcoming that will probably be overcome with time.
At least what's happening there is grounded in copyright infringement. What the picture agencies seem to be doing is finding (through the agency of a webspider) websites using its copyright images, then issuing an invoice for the fee it would have charged had it been asked. That means that any legal action is not going to be a high court claim, but a small claims court action for an unpaid bill, which is cheaper and easier and more likely to produce the desired result. I imagine that summary judgment would often be given, if these cases came to court at all - which I also imagine they don't.
If a user of an image was sued for copyright infringement, they might have a defence against a claim for damages on the basis that they were innocent infringers - section 97(1) of the Copyright, Designs and Patents Act. But this requires them to show that they did not know, and had no reason to believe, that copyright subsisted in the work. Given that copyright arises automatically, that defence would seem to require ignorance of the copyright system: it would not suffice to argue that there is no watermark or other indication of copyright ownership. In the States, it's probably important that few photographers will have bothered to register, and damages claims will therefore be restricted (to actual damages, and no legal costs): we, like the rest of the world, have no registration requirements, so the absence of any sort of copyright claim is unlikely to assist the infringer.
It's a big enough issue for there to be a whole website dedicated to Getty's settlement letter here, and links from that helpful (but American) site to many other sources, some in this country. I'm interested to see whether any of the threats are ever followed through in the courts. Recipients of the letters tend to refer to "extortion", although strictly speaking that's probably not accurate: "bullying" seems to be an appropriate word, and I'm grateful to one of my clients for pointing out that it is an offence under Section 40 of the Administration of Justice Act 1970 and Section 1 of the Malicious Communications Act 1988 to harass debtors with a view to obtaining payment including the issue of letters which convey a threat or false information with intent to cause distress or anxiety. That might resonate with recipents of these letters - but it wouldn't help with threats of proceedings for infringement of copyright (and of course there's no groundless threats action in copyright law - perhaps it's time to introduce one).
There is no need to pick images up from other places on the Web. Most people have the necessary equipment to create their own digital images these days, and for better results could no doubt hire a professional photographer to produce a unique image for their website at much lower cost than settling the demands of a photo library. Anyone incorporating images in a website (and that includes anyone hiring a cheap, perhaps overseas, website designer to do it for them, perhaps with little knowledge and no appreciation of copyright) needs to be very careful, do some due diligence, and consider getting original artwork created.
And rather than assuming that images on the Internet are free to use, perhaps assume that the copyright belongs to one of the large agencies!
npower seem to have several registrations for "juice" trade marks, for various goods and services, and often with added matter. The story says that it is "npower juice" that they allege has been infringed - and they have it registered, in stylised form, in no fewer than 14 classes (which looks rather like attempted monopolisation), dating back three years. But Westminster are not using the trade mark, only a descriptive word which forms part of the trade mark, and the story does not suggest that they have adopted a similar style for their sign.
I fail to understand why the Registry allowed npower to register any "juice" trade marks at all for a list of goods that includes electricity or any other power source, at least without a disclaimer over the descriptive word "juice". For goodness' sake, it's part of the dictionary definition of the word! I hope they do sue the Council (not being a Council tax payer there any more, I can say that) and one of Her Majesty's learned High Court judges has a chance to invalidate it and perhaps say a few choice words about corporate greed, which seems sometimes to be the only thing the Trade Marks Register exists for.
Tuesday, 3 February 2009
Out-Law reports today that Google has been fined in France for allowing trade marks to be used as Adwords, though from the report it sounds as if they have in fact been ordered to pay damages - another example, perhaps, of allowing a journalist too much liberty to write about intellectual property.
The Tribunal de Grande Instance de Paris (why is it conventional to use the English definite article rather than thr French?) ordered Google to pay €200,000 to Voyageurs du Monde and
€150,000 to Terres d'Aventure, even though the judge did not think the damage had been significant. I can't find anything on the TGI website, though: however, Le Monde (hang on, why isn't that "The Monde"?) has the story, with a dateline of 19 janvier, and says:
"Pour la première fois, un tribunal français a remis en cause le service de publicité en ligne Google Ads, jugeant que celui-ci détournait une partie de la clientèle des voyagistes Terres d'aventure et Voyageurs du monde vers des sites concurrents. C'est une première dans la jurisprudence de la publicité sur Internet. Le moteur de recherche Google a été condamné à payer un total de 410 000 euros aux voyagistes Terres d'aventure et Voyageurs du monde pour avoir "détourné une partie de leur clientèle vers des sites concurrents par des liens commerciaux".
I thought the French courts had already established this principle, and there appear to be cases (mostly in lower courts) going back to 2005 on the subject. However, there's one that has gone on appeal to le Cour de Cassation - this is getting ridiculous: should I write "au Cour de Cassation"? I think not) from where it has been referred to the Court of Justice of the EC. Le Monde sees something novel in the latest decision. Perhaps someone with better knowledge of French law will be able to enlighten me. I'll send some emails ...
A piece on Lexology this morning, from CMS Cameron McKenna, on the three outstanding references to the Court of justice on this topic is worth reading.
"The firm noted that the European Patent Office showed trade marks filings in 2008 were marginally lower than the previous year."
I very much doubt that Murgitroyds said anything of the sort, and given the chance I would suggest that the writer of the piece have a go at the IPO's IP Armour game. It's simplistic and probably insults the intelligence of many visitors to the site, but it should help those journalists who treat patents, copyright, trade marks and designs as synonyms to by employed almost in rotation.
Monday, 2 February 2009
Business attitudes to IP report
Service by facebook: article
File sharing litigation
Case C 52/07, Kanal 5 Ltd and TV 4 AB v Föreningen Svenska Tonsättares Internationella Musikbyrå
The Marknadsdomstolen stayed the proceedings and to referred the following questions to the Court for a preliminary ruling:
‘(1) Is Article 82 EC to be interpreted as meaning that a practice constitutes abuse of a dominant position where a copyright management organisation which has a de facto monopoly position in a Member State applies to or imposes in respect of commercial television channels a remuneration model for the right to make available music in television broadcasts directed at the general public which involves the remuneration being calculated as a proportion of the television channels’ revenue from such television broadcasts by those channels?
(2) Is Article 82 EC to be interpreted as meaning that a practice constitutes abuse of a dominant position where a copyright management organisation which has a de facto monopoly position in a Member State applies to or imposes in respect of commercial television channels a remuneration model for the right to make available music in television broadcasts directed at the general public which involves the remuneration being calculated as a proportion of the television channels’ revenue from such television broadcasts by those channels, where there is no clear link between the revenue and what the copyright management organisation makes available, that is, authorisation to perform copyright-protected music, as is often the case with, for example, news and sports broadcasts and where revenue increases as a result of development of programme charts, investments in technology and customised solutions?
(3) Is the answer to Question A or B affected by the fact that it is possible to identify and quantify both the music performed and viewing?
(4) Is the answer to Question A or B affected by the fact that the remuneration model (revenue model) is not applied in a similar manner in respect of a public service company?’
The Court of Justice gave its answer:
"1. Article 82 EC must be interpreted as meaning that a copyright management organisation with a dominant position on a substantial part of the common market does not abuse that position where, with respect to remuneration paid for the television broadcast of musical works protected by copyright, it applies to commercial television channels a remuneration model according to which the amount of the royalties corresponds partly to the revenue of those channels, provided that that part is proportionate overall to the quantity of musical works protected by copyright actually broadcast or likely to be broadcast, unless another method enables the use of those works and the audience to be identified more precisely without however resulting in a disproportionate increase in the costs incurred for the management of contracts and the supervision of the use of those works.
2. Article 82 EC must be interpreted as meaning that, by calculating the royalties with respect to remuneration paid for the broadcast of musical works protected by copyright in a different manner according to whether the companies concerned are commercial companies or public service undertakings, a copyright management organisation is likely to exploit in an abusive manner its dominant position within the meaning of that article if it applies with respect to those companies dissimilar conditions to equivalent services and if it places them as a result at a competitive disadvantage, unless such a practice may be objectively justified".
The Intellectual Property Office issues paper
the challenges posed when seeking to recognise creative input - the IPO asks whether the current system strikes the correct balance between commercial certainty and the rights of creators;
the issues related to accessing work - the IPO questions whether the current system is too complex (for example, in relation to the copyright exemptions) and whether the existing enforcement system works in the digital age;
the problems encountered when seeking to incentivise investment and creativity among creative artists and rights-holders in relation to both physical works and online exploitation; and
the difficulties in authenticating and protecting works, particularly in the digital environment.
Copyright term extension
Andrew Gowers’s view: Copyright Extension is Out of Tune with Reality
Mobile and iPhone locking v. the DRM (Digital Millennium Copyright Act)
Trading standards officers use new powers to investigate software licence compliance
Government seeks further derogation for droit de suite
Amendments to Hague Agreement
Prospective costs order
US CA Fed Cir ruling in Qualcomm Inc v Broadcom Corp on IP rights and industry standards
IPO publishes results of fast-track processing consultation
Case C 276/05, The Wellcome Foundation Ltd v Paranova Pharmazeutika Handels GmbH.
The Austrian court referred the following questions to the Court for a preliminary ruling:
"1. (a) Are Article 7 of … Directive 89/104 … and the case-law of the Court … which has been pronounced on it to be interpreted as meaning that proof that reliance on the trade mark would contribute to an artificial partitioning of the market must be furnished not only as regards the repackaging itself, but also as regards the presentation of the new packaging? If the answer to that question is in the negative:
(b) Is the presentation of the new packaging to be measured against the principle of minimum intervention or (only) against whether it is such as to damage the reputation of the trade mark and its proprietor?
2. Are Article 7 of Directive [89/104] and the case-law of the Court … which has been pronounced on it to be interpreted as meaning that the parallel importer fulfils his duty of notification only if he informs the proprietor of the trade mark also of the State of export and the precise reasoning for the repackaging?"
The European Court of Justice ruled as follows:
"1. Article 7(2) of Council Directive 89/104 ... is to be interpreted as meaning that, where it is established that repackaging of the pharmaceutical product is necessary for further marketing in the Member State of importation, the presentation of the packaging should be assessed only against the condition that it should not be such as to be liable to damage the reputation of the trade mark or that of its proprietor.
2. Article 7(2) of Directive 89/104 ... is to be interpreted as meaning that it is for the parallel importer to furnish to the proprietor of the trade mark the information which is necessary and sufficient to enable the latter to determine whether the repackaging of the product under that trade mark is necessary in order to market it in the Member State of importation".
Case C-16/06 P Les Éditions Albert René Sàrl v Office for Harmonisation in the Internal Market, Orange A/S.
Joined Cases T-225/06, T-255/06, T-257/06 and T-309/06 Budějovický Budvar, národní podnik v Office for Harmonisation in the Internal Market, Anheuser-Busch, Inc.
Case C 442/07, Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’: ECJ rules on genuine use of trade mark by not-for-profit organisation
C 59/08 Copad SA v Christian Dior couture SA e.a.
The court referred the following questions:
"1. Must Article 8(2) of First Council Directive No 89/104 ... to approximate the laws of the Member States relating to trade marks be interpreted as meaning that the proprietor of a trade mark can invoke the rights conferred by that trade mark against a licensee who contravenes a provision in the licensing contract prohibiting, on grounds of the trade mark's prestige, sale to discount stores?
2. Must Article 7(1) of that directive be interpreted as meaning that a licensee who puts goods bearing a trade mark on the market in the European Economic Area in disregard of a provision of the licensing contract prohibiting, on grounds of the trade mark's prestige, sale to discount stores, does so without the consent of the trade mark proprietor?
3. If not, can the proprietor invoke such a provision to oppose further commercialisation of the goods, on the basis of Article 7(2) of that directive?".
The Court of justice answered:
"1 Article 8 paragraph 2 of Directive 89/104 ... should be interpreted in the sense that a trade mark owner can invoke the rights conferred by that mark against a licensee who has breached a clause of a licence agreement which prohibits sales to discount stores, if that sale so damages the prestige/image of a product that it calls its quality into question.
2 Article 7 paragraph 1 of Directive 89/104 should be interpreted in the sense that a licensee who commercialises products under a mark in breach of a clause of the licence agreement only acts without the consent of the owner of the trade mark if the licensee at the same time by such commercialisation infringes the rights conferred by the mark in the sense of Article 8 paragraph 2.
3 Article 7 paragraph 2 of Directive 89/104 does not permit the owner of the trade mark to oppose the commercialisation of products bearing its mark through a discount store through the mere fact that a clause in the licence agreement prohibits sale of the products to discount stores".
Company Names Tribunal issues first decision
Four countries opt out of national search system for CTM applications
WIPO announces new rules for Madrid trade marks
As before, let me know if there are any IP blawgs that you know of and I don't!
Sunday, 1 February 2009
Information about the Promise can be found here on the Commissioner's website. It has an impressive list of signatories, but oddly absent are the government departments whose laxity in protecting data was the reason for doing this in the first place. No doubt they will take the pledge soon.