Monday, 20 December 2010

Domain name leasing

Is this some new, unnecessary, dodgy activity? That was my first thought when a client asked me for my advice the other day. How do you lease something so nebulous as a domain name? The very idea of it brought out the grumpy old man in me.

Domain names have enough of the attributes of property to stop me, now, from complaining when people treat them as a type of it - though lawyers need to think carefully about how they treat them, especially when they lump them in an omnibus definition of IP and give covenants about ownership. So what about leasing them?

A lease is an agreement governing the use, for a fixed period, by the lessee - so says my oracle in these matters, the late Stanley Berwin (in case you are too young to recognise the reference, it's to The Economist Pocket Lawyer, published in 1987 and never matched as a source of pithy definitions of legal terms - which reminds me of a friend at university, cramming on the morning of one of his final exams from a copy of Law Made Simple. He got a 2:2, but that was a different age, one in which a 2:2 was worth having and before my university ever gave out a third, let alone a pass degree. I wonder whether a new edition of this work - the Berwin, I mean, not the Made Simple - has ever been considered?)  Mr Berwin talks of the agreement being about the use of goods, equipment or land, and about the tax and cashflow advantages of leasing as opposed to outright purchase. My recollection of property law is that a lease of land creates a legal estate in it, so it's rather more than a mere agreement to permit use - which, he confirms, is what a licence is.

Well, domain name leases are also called licences, sometimes, but calling them leases resonates with those who like to think in terms of internet real estate. If it sounds better, and provided terms are properly defined so we know what we are talking about, what's the difference? Whatever - I'll use the word "licence" so I don't get tied up in conceptual problems in my own mind. Which brings to mind one of the most satisfying of the definitions in my Dictionary of Intellectual Property Law - of "bare licence" - but you'll have to wait to get hold of a copy to read it. And just as in the market for real property there is a place for arrangements which separate ownership and use, so too in the market for Internet property.

Developers can invest in domain names - perhaps have the good fortune to grab one nice and early, create some Google juice and make it an attractive proposition for a start-up business. The real estate that people want to occupy on the Net is very different from where they want to be in the real world of business (I should say, where they ought to want to be) - the valuable property on the Internet is in generic domain names, sex.com and so on. In the real world there's nothing to stop you using a name like "Sex" for your business, and of course Malcolm McLaren and Vivienne Westwood did it years ago - and I think I might have just disproved what I was about to say, namely that you can use it but you'll have a hard time stopping anyone else doing so - so let me refine that proposition a little ... it's unusual, and counter-productive, to see words used in that sort of fanciful way on the Internet - a generic domain name works when it is used for the goods or services that it identifies, whereas a generic business name or trade mark is as much use as a sheet metal handkerchief - as we used to say. And a non-generic domain name will either be unattractive or a trade mark infringement.

So, there are good reasons why people might have domain names to let, and fairly good reasons why people like the client who asked me in the first place might want to rent them. There are some model leases available on the Net - though they look a bit American to me. But the drawbacks of taking a licence to use someone else's domain name are manifold.

If I were to open a shop, which I could quite enjoy doing, selling books or records - but I digress - though better than selling myself by the 6 minute unit - I might rent premises for it. Unlikely that I'd be able either to come up with the wherewithal to buy somewhere, though I suppose for some it would be possible to borrow the money and buy freehold. Anyway, the point is that renting shop premises is likely to be the way to go. I put up my sign over the door, advertise in the appropriate places, and the world beats a path to my door (in my dreams). Soon I need bigger premises - one of those situations in which size matters - so when there's a convenient break point in the lease I up sticks and move somewhere bigger. Perhaps I leave a notice in the window telling customers where they can find me, and in any case if they see someone else's business name above the window, or just notice that it's now a butcher's shop or something, they will guess what's happened.

What has happened in that situation is, of course, that I have moved my business, with the goodwill, to a new location. Which I couldn't easily do if I were occupying someone else's domain name rather than their commercial freehold investment. So, dear client, if you're reading this, it seems to me that you need:
  • A long-term agreement, perhaps even perpetual, though the lessor is going to need some way of getting you out.
  • A rent that isn't based on your turnover or profit, or footfall, or anything else - a fixed sum, with a formula for increasing it year-on-year.
  • An option to purchase the domain name.
  • A transitional period at the end of the "lease" during which the lessor will put up a notice directing visitors to your new website, and not let anyone else (and least of all a competitor, though who else is going to want to use the same generic domain name?) have the domain name for a certain period.

Whether any of that is palatable to the lessor is another matter. I imagine it pretty well trashes the business model they are working from. If (dear client) you're thinking of a business that will flourish for a couple of years and they disappear for ever (as, now I think about it, most online businesses do) then it might work, otherwise all you are doing is creating capital value for the owner who is going to get your hard-earned goodwill, or most of it, however hard you try to prevent that happening.

Monday, 13 December 2010

Copyright trolls

In a world in which everything has to be counted, measured, sold and bought, there will be trolls. The patent species is well-known, though distinguishing them from genuine operators might be difficult sometimes. Attempts at trade mark trollery are generally doomed to failure, foundering on the rocks of non-use or lack of bona fide intention. Copyright is another matter.

Reports that trolls are buying up copyright and then searching the Internet for infringing uses have become more and more common recently, but there are other ways to become a copyright troll, or something rather like one. Inheritance is one, and a friend told me recently of how she'd used some photos in a presentation that she'd already used with permission in a book, and now faced a substantial claim for royalties. The sum involved seemed to have been plucked out of the air, and certainly bore no relation to the (charitable) use to which the works were put. The troll had, of course, inherited the copyright from an ancestor.

Of course the first thing about this is that my friend hasn't done very well here. The original permission was limited, and if it were foreseeable that the photos might be needed in a presentation (and with the ubiquity of what people are pleased to call PowerPoint, though they should be using Open Office Impress and calling the result by a generic name, which means that reproduction is taking place) that should have been included at the time. Limiting that to use for promoting the book might well help close any gap between the parties. What's really depressing is the avaricious attitude of the copyright owner - which is why I am using the "troll" epithet - though I have only heard one side of the story. That's why my retelling of it is short on details, of course.

My suggestion? Take out the photos and replace them with the legend "photo removed because [name of troll] wanted £[outrageous demand]". Clearly copyright allows the owner to demand a royalty, though whether the demand has any market-based validity I don't know. It sounds like a lot, though if the photos were rare it might be justified. If they are reproduced in a book, though, it's not as if they can't easily be seen.

Friday, 10 December 2010

New monthly IP podcast

- available for subscribers to download. Features the first sighting of initial interest confusion in England plus lots more - nearly an hour and a quarter. Consult the podcasts page if you'd like to subscribe! CPD accredited (by SRA).

Wednesday, 8 December 2010

No summary judgment in peer-to-peer filesharing cases

Eight filesharing cases could not be dealt with by summary judgment, the very active Judge Birss ruled on 1 December in the Patents County Court. In Media C.A.T. Ltd. v A and others [2010] EWPCC 17 (01 December 2010) the claimant, saying it represented the owners of copyright in several movies of a type that you won't find on sale in your local DVD shop, asked for summary judgment against eight defendants. they had either failed to acknowledge service or failed to file a defence, so the requests for judgment said, but the judge found that two of the defendants had filed defences. In four other cases there was no evidence of proceedings having been served on the defendants, save that one who instructed solicitors and filed a defence, which rather indicated that service had taken place. In two cases judgment in default was possible, but in all eight of the cases the claimant had asked for an injunction and hadn't done enough to satisfy the judge that the remedy sought had subsequently been limited to damages, so that in itself precluded summary judgment under CPR Part 12.

The judge left no-one in any doubt that he was glad not to have to dispose of the cases summarily. The claims raised controversial issues about the application of copyright law, and he also pointed out defects in the way the law had been pleaded - this is not a simple matter. It was not apparent how the claimant was entitled to bring the actions, as there was no evidence to show that it was either owner of the copyright or exclusive licensee.

Many will be pleased to see the claimant's solicitor, whose handling of industrial volumes of filesharing litigation has itself been highly controversial, fail in these requests, but that's not really the point. There seem to be an inordinate number of requests for summary judgment coming before the courts at present: in Virgin Atlantic Airways Ltd v Delta Airways Inc [2010] EWHC 3094 (Pat) (30 November 2010) the defendants got summary judgment, but it's clear that this is a rare event in the patent world (and, perhaps, by extension the IP world). I seem to have read several judgments recently which go into the rules about summary judgment in great depth. The costs of IP litigation being what they are, even in the new regime in the PCC, shortcuts to a decision (like interlocutory injunctions in the good old days) will be taken wherever possible.

Sunday, 5 December 2010

Protecting products by patents: a great way to spend a Saturday afternoon

To St Catherine's College, Oxford, to attend a seminar on patent law. Daniel Alexander QC, giving the opening scene-setting presentation, talked of his wife's scepticism about the wisdom of turning out to speak at such an event, at which surely the audience could be counted on the fingers, if not the thumbs, of one hand: but the room was full, with 40 or 50 enthusiasts (I think it's fair to assume that the description fits) present.

I thought protecting products was what patent law was largely about, except when it is about protecting processes. We heard a great deal about that interesting area where the two cross over - product-by-process patents - and the hook on which it was hung was the recent Monsanto case (Case C-428/08, Monsanto Technology LLC v Cefetra BV and Others, featured in my July podcast) in the Court of Justice (which speakers still called the ECJ).

Daniel Alexander's presentation, my notes on which filled seven pages of my notebook, was a formiddable tour d'horizon, considering the nature of the tribunal (no notable IP specialisation being apparent among the judges or advocates general). The court is asked to do relatively little in the patent field, few cases and no choice about which to entertain. The four big areas of patent law which are within the purview of the court are biotechnology patents, SPCs, remedies (by virtue of the enforcement directive) and controls on exploitation such as competition law.

References come, of course, from national courts, and are of uneven quality. The UK courts do a good job of presenting references, though often at the expense of length. the Court of Justice must work with one round of written observations from the parties and 20 minutes of submissions (compared with only 15 minutes in SCOTUS). The Advocate General has great influence over the outcome of a case, and AG Mengozzi in Monsanto was no exception. He is a distinguished professor of administrative and public law from teh University of Bologna - but no patent man.

Mr Alexander also mentioned the role of the juge rapporteur to whom the drafting of the opinion is entrusted, no dissents being allowed under a French law doctrine that considers the court as the depersonalised mouthpiece of the law. Whoever thought that up, said the speaker, had never met - hmm, perhaps I won't mention any judges by name in this blog.

Monday, 29 November 2010

Apostrophe abuse and neglect

I'm reading a recent judgment - no need to mention which one - which quotes at some length from correspondence passing between the parties' solicitors. I am appalled that neither side manages consistently to use apostrophes correctly. There are possessives that lack apostrophes and a possessive form of the neuter third person singular pronoun with one in. At least that partly restores the number of apostrophes present, even if they are not in the right places.

I have worked in busy offices where dictation has come back - often in a ready-to-sign form - with errors in it, and I have probably taken the view that trying to correct them all would be beyond Sisyphus. Sometimes the letter (or fax, or whatever) just has to go, and there is no time to correct it. We are dealing with what is possible here, not trying to achieve perfection. I suspect that the solicitors involved were in such a situation. In any event, I will be charitable. I will also be charitable to the persons who abused and neglected the apostrophes, as I don't think the education system imparts a sufficient understanding of the rules of grammar, though bearing in mind that JK Rowling and others have caused a huge increase in the amount of reading done by young people, and therefore in their exposure to the correct use of apostrophes, the education system's failings are a feeble excuse.

What has struck me is that any temptation to cut corners when correcting correspondence, or other documents, must be resisted. It's one thing getting it wrong when only the other side will see: it's quite another to have your work uploaded to BAILII.

Saturday, 27 November 2010

US Government seizes domains

The US Government - to be precise, the Department of Homeland Security - has seized a load of domain names used for file-sharing (or suspected file-sharing) sites. Thanks to Dan Ballard (Twitter: @ballard_ip, http://www.sequoiacounsel.com/) for explaining that this was following a court order pursuant to a seizure request by the DOJ in furtherance of its criminal investigations into counterfeiting, nothing to do with the Combating Online Infringement and Counterfeits Act (COICA) (another entry for the second edition of my Dictionary of Intellectual Property) which has not yet become law.
However, my understanding is that COICA will allow a Web site's domain name to be seized if it "has no demonstrable, commercially significant purpose or use other than" offering or providing access to unauthorised copies of copyrighted works. The Attorney General will be given extensive powers to do all this.
I had fondly (in the "foolishly" sense of the word, as in that wonderful north-eastern expression which my parents used to apply to me from time to time, fond gonniel, meaning silly fool, or worse) imagined that the DHS was exclusively concerned with preventing terrorist outrages, but it seems its writ runs further than that.

Read more here.

Friday, 26 November 2010

Meltwater fails to wash NLA away

I'm glad I'm not the Newspaper Licensing Agency. Collecting societies are rarely loved, but the NLA must be the least loved (or most unloved) of the lot. It exists because, after the Copyright, Designs and Patents Act 1988, it became easier to set up a body to licence the copying of press cuttings, which is what was was hurting the newspaper proprietors at the time. Now the way in which the products of the newspaper proprietors are consumed has changed again, as have the activities of press cuttings agencies (for which there's a new generic name which escapes me for now): they distribute links to the stories in the online editions of the papers, and PR companies pass them on to their clients.

The question in The Newspaper Licensing Agency Ltd and Ors v Meltwater Holding BV and Ors [2010] EWHC 3099 (Ch) (26 November 2010) was whether subscribers to a news aggregation service needed a licence from the NLA (which had enterprisingly devised a new form of licence to cover precisely this). Does merely following a link require the copyright owner's consent? And, in addition, do the end users need permission to receive the compilation of news items made by Meltwater (and, more particularly, what it contains, which includes headlines), and what if, being a PR company, the end user passes Meltwater News or its contents on to its clients?

The matter is going to the Copyright Tribunal, which has jurisdiction over licensing schemes, anyway, but it seems that there is enough bad blood between the parties (not including Meltwater, who undertook to pay for a licence anyway) to fuel a High Court case too.

The judge had to consider whether the activities of the end users are comprised in the grant of the licence to Meltwater. Interesting: this raises questions about non-derogation from grant, a useful fall-back when things get complicated (as in BL v Armstrong), exhaustion, and whether there is in fact only a single copy which is treated like a press cutting used to be in ancient times. Once Meltwater is licensed to provide services, its clients must be licensed to receive them - so the PRCA argued. But, given that when something is received in electronic form and passed on to clients there are unavoidably going to be more copies made - incidental and transient ones, true, but copies nonetheless - the end users couldn't rely on this analysis.

What does copyright protect here? The judge had to consider whether the headlines that were reproduced could be literary works in their own right. Were they, as the PRCA contended, integral with the articles themselves, in which case perhaps they would not be substantial parts of the works, or did they have an existence of their own? They did in Shetland Times Limited v Wills [1997] FSR 604, but that was a Scots case and only at an interim stage. Now, however, there's the Court of Justice decision in Case C-5/08, Infopaq, which at least lends weight to the argument that headlines are literary works and capable of being protected by copyright.

What about the websites' terms and conditions? There's precious little law on these, so this case is interesting for that alone. Generally, online newspapers prohibit access to their websites for commercial purposes - which involves, as the judge pointed out, an "element of circularity", because you have to access the site to read the terms and conditions. Not that anyone ever does anyway, but if everyone knows they say that, perhaps there's no need to read them. The judge was not impressed by the lack of authority and the fact that she was being asked to adopt a "broad brush approach" to this part of the case. The arguments presented contained inconsistencies, like that element of circularity, and in the end she moved on from the terms and conditions point leaving it hanging a bit.

There was however clearly prima facie (albeit technical) infringement of copyright. Did any permitted acts assist the defendants? Temporary copying? No, not here, because to be "enjoyed" by the end users something more than temporary copies were needed. Fair dealing for criticism or review or reporting current events? That was NLA's nemesis in earlier litigation ... However widely she interpreted "criticism and review", the judge declared herself unable to bring the defendants' activities under that head. "Reporting current events" did not appeal to her as an appropriate rubric to cover showing clients what coverage they had received in the media - it was not reporting to the public. In any event she seems underwelmed by the evidence adduced to support a defence under this head, as she had not been shown how the material was actually used.

Whatever was happening, it probably didn't constitute fair dealing anyway, the overriding test of which reporting current events and criticism and review are specific types. The scale of the use was too great, and the fact that end users could look at the headline and some text before deciding whether to access the whole article on the paper's site meant that they were detracting from the normal exploitation of the copyright works, which Berne, TRIPS and the Information Society directive all say makes it not fair dealing.

Then there's the acknowledgement point. The only thing the defendants could put up on that was the argument that the link served the purpose, like a footnote - but that can't have sounded very convincing even to them, and it certainly didn't wash with the judge.

So now we wait for an appeal or the Copyright Tribunal. It's good to have these matters out in the open, but they serve more to highlight the desirability of looking carefully at the fair dealing exceptions, perhaps with a view to introducing a true fair use exception, which is exactly what the government is threatening.

Here are links to an interview on paidcontent:UK with the CEO of Meltwater and with the NLA plus a piece on computerworld.co.uk.

European Parliament approves ACTA

The Anti-Counterfeiting Trade Agreement has been nothing if not controversial - once, that is, the world learnt of its existance. At first it was that most undemocratic-sounding thing, a secret treaty. The fact that MEPs were kept in the dark about it for a long time was reflected in the small majority given for it in the European Parliament, but now the Commission has a mandate to go to Sydney from 30 November to 3 December and agree to it. The EP still wants assurances from the Commission that it will not affect existing basic freedoms under EU law, which already exceeds international standards in this area. It seems that the latest draft wouldn't require any changes to law in the EU for this reason.

The agreement deals with enforcement of intellectual property rights and combatting online piracy and unlawful software. It will also deal with circumvention devices and software, which must form part of any joined-up approach to online infringements. It leaves it open to signatories to impose a three-strikes rule, though that is no longer mandatory as it was in earlier versions of the agreement.

The agreement has been negotiated between Australia, Canada, Japan, South Korea, Singapore, Switzerland, Mexico, the USA and the EU. The omission of China has been perceived as a significant weakness - likewise, I suppose, the absence of the other BRICs.

Enhanced co-operation the key to EU patent?

It will be a bad day when I don't learn at least one new thing. Enhanced co-operation is a new one on me, but it's many years since I purported to teach EC law (and wrote a book on it to help myself get to grips with the subject - not always the best reason to write a book, but it worked for me). They have messed about with the treaties since then.

The story (reported by Euractiv, who seem to have a hazy grasp of what patents are all about, as some people might say about me, here) is that a group of Member States, including the UK because this is a matter in which our government is comfortable being more coommunitaire than some, has decided to find a way forward with the project senza Italy. The problem with the EU patent has always been connected to language, and at one stage Poland put the kybosh on the project because of the language issue. It was thought then that the Polish stance was terminal, but this thing keeps bouncing back -  Italy (with suport from Poland) was unhappy with French, German and English being the official languages. (Incidentally, Euroactiv is quite wrong to call these the official languages of the Union!) Even Spain seems to have overcome its objections, perhaps having made its point.

Commissioner Barnier has promised a proposal on enhanced co-operation in this area for the Competitiveness Council on 10 December. It's only the seocnd time the procedure has been used - the other being last July, when 14 countries got together to agree simplied divorce rules for couples of differnt nationalities. Then Italy was on the side of the angels: this time its minister, the magnificiently-named Signor Pizza, argues that it will undermine the internal market. I can see that divorce rules lack the ability to do that.

If it is agreed on the basis of enhanced co-operation, it will need 9 Member States to go ahead with it. Approbal by a qualified majority in Parliament and Council would be required, too, but only participating Member States would be allowed to vote in Coucil.

Copying without infringing conference

It was, I'm afraid, over a week ago, but it has only recently occurred to me that I should provide a link to the nearly-live report of my talk at the Copying without infringing conference last week. Somehow Jeremy managed to blog the whole thing on the IPKat as the conference proceeded - not for the first time, either, although as he remarked to me it was the first time he had heard me give a talk - afterwards, when I asked, confirming that he hadn't been disappointed.

I should point out that I specifically said I wasn't going to quote from H2G2, taking my theme instead from Dirk Gently's Holistic Detective Agency ... so perhaps Jeremy wasn't paying quite so much attention. But that's nitpicking.

French for plagiarists

Who needs format rights? Here from Transparent Language's French blog is American talk show host (well, the show is American, he doesn't sound as if he is) Craig Ferguson drawing attention to the cloning of his CBS show by a French self-proclaimed “enfant de la télé”.

I draw this to your attention, gentle reader, for two reasons. First, it seems to me to show that there is no need for any special protection for formats, in such egregious cases as this. (OK, three reasons: I wanted an excuse to use the word "egregious".) To my mind, less egregious cases probably require no remedy - but I know others don't necessarily agree with that .... Second (or, now, third) because I happen to have heard Mr Ferguson's name many times in the last few months. He and I (and numerous others) share an enthusiasm for Stackridge, and he takes it so far as to perform The Last Plimsoll in his stage show - see the embedded clip, and Stackridge performing it at Cropredy a couple of years ago. The band - my clients, in a small way - have just been to LA to record it for him, their first visit to the States in their 40+ year history, and it will be broadcast in January.

But will they play it at the Borderline this evening? And will I be in the audience? Why not get along there yourelf and see ...

'Tis pleasant, sure, to see one's name in print

So wrote Lord Byron in English Bards and Scotch Reviewers, which I don't think was about whisky tasters, going on "A book's a book, although there's nothing in it".  There's not much of substance in my latest published work, a book review in the Journal of Intellectual Property Law & Practice (full reference 2010; doi: 10.1093/jiplp/jpq171, which can be found here though perhaps not unless you have a subscription) under the title The most penetrating of criticisms, which I found in Point Counter Point. No, I didn't, I found it on-line in some collection of quotations, but that's the same thing these days, isn't it? As it happens, I bought a complete set of Huxley at a village fete some 25 years ago. The vicar, a great friend though one I have lost touch with, complimented me on the bargain I had got. (I bought a Soft Machine LP, too, and still haven't made time to listen to it. Just as I haven't read Point Counter Point, or any of the others).

Even though there's not much in it, I hope it might bring a little amusement to readers - and illuminate the debate about copyright and parodies just a little.

Wednesday, 24 November 2010

Tip of the Day: Protecting book titles part II

If you can register a book title as a trade mark, you've put yourself in a very strong position. Copyright in the book will expire 70 years after the death of the author, whereas a trade mark can keep going for ever. However, a trade mark's life can be cut short if it stops being distinctive: the Registry's own examination guide explains that the name of Sherlock Holmes has been used over the years by too many traders for it still to function as a trade mark. It distinguishes Spiderman, which is not only the name of a fictional character but is also capable of identifying the goods of one trader. So, as with other trade marks, it's important to take care of book titles that you might wish to protect this way.
And other people might well have registered literary trade marks for their own purposes. "Ulysses" is registered in class 16 (the appropriate class for books) - but not by the Joyce estate: it's the trade mark of H-D Michigan, Inc., who also sell motorcycles and related goods. They own many more trade marks too, mostly showing the full name by which they are better known, Harley-Davidson. Should it ever come to it, the Joyce estate would have rights to carry on using the name for books, although whether that use would be considered trade mark use is a moot point. That does show the importance of checking for other people's registered trade marks before you choose a title for your book, though.

Face the music

Here's a report that Facebook, Inc., is joining the ranks of the absolutists - trying to, anyway - by registering FACE as a trade mark. Trademark, I should write, because it's in the US. It puts me in mind of Red Bull's RED Community trade mark - by which I mean, it's not actually their trade mark, it's part of it, and to register it as a trade mark is a bit of monopolisation that would be unjustified save for the compelling argument that if the law gives you the opportunity you'd be well-advised to grab it, especially before someone else does. So - IMHO - the law is wrong to permit this sort of thing.
Of course (he writes patronisingly - not intended to sound that way) in the US they have this sensible rule that you have to file a statement of use, and if Facebook, Inc. is using it only as part of FACEBOOK that won't (shouldn't be) possible. No such thing in the UK or EU - but it's about time there was (again, IMHO) to stop this sort of nonsense. I'll be writing to my MP about that - as soon as he stops making a fool of himself in the British Museum.

Community design infringement reference

On Class 99, Jeremy reports a reference in a designs case to the Court of Justice. It seems it's hard to track down, but David Musker has found a Dutch version and suggests using Google Translate on it. I did as he suggested, verified the translation (ha, ha) using Babel Fish and then tried a bit of guesswork, and came up with this:

C-488/10 Emparanza Celaya y Galdos International
November 19, 2010

The applicant (CEGASA) holds a community model for a bollard / column. It brought proceedings against the trading company Proyectos Integrales SL Balizamiento (PIB) for alleged violation of its rights. The defendant denies this because the traffic pole is a reproduction of a registered Community design in its name. Parties have for some time been discussing with each other about the existence of an infringement. PIB has always challenged, but changes made to the draft legal proceedings. Now CEGASA for the second time submit a request to amend PIB has refused to respond.

Regardless of whether the PIB column creates a different overall impression on the informed user from the applicant's registered Community design, the Spanish national court seeks further explanation of Article 19 of Reg. 6 / 2002, particularly as regards the term 'third'. It refers the following questions:
1. In a proceeding for infringement of a registered Community design exclusive right, does the right to prevent third parties to use it as provided for in Article 19, paragraph 1 of Regulation (EC) No 6 / 2002 of the Council of 12 December 2001 on Community designs extend to all third parties who use designs that do not give the informed user a different overall impression, or does a third party that uses a later Community design registered in his name as contrary not until that model not be annulled [or: does a third party who uses a RCD registered in its own name have a defence until that registration is annulled]?
2. Does the answer to the previous question depend on the intention of the third party, or will it vary depending on his behaviour, which shows that the third party has applied for and registered the subsequent community model after he had been requested by the proprietor of the earlier Community design after the product had been placed on the market to stop infringement of the rights attached to that older design?
Perhaps that's not much more helpful than the machine translations, and of course I might have introduced all sorts of errors of my own. Translated from Dutch into Double Dutch. But it sounds as if the Spanish court is asking whether it's a good defence to a RCD infringement action to say you're using your own registered design, and if so does it matter if that RCD was only applied for after the defendant was told by the senior rights owner that it was infringing? Put another way, perhaps, should the claimant have attacked the junior registration first? That might have been a better way to deal with the matter.
UKIPO wants comments by 29 November, which is difficult if you can only read it in Dutch - there's still nothing on the Curia website.

Monday, 15 November 2010

Tip of the Day: Protecting book titles

A friend asked me today about protecting a book title, and it's a good subject for a general tip. Book titles - and similar things, such as song titles - won't usually be protected by copyright. A great deal of thought might go into them, but it's not enough to make them original literary works. But the law of passing-off might give them protection, and they might be registrable as trade marks. A bit of lateral thinking might well get you the protection you hope for.
Trade marks are, however, supposed to be badges of origin, and book titles aren't. They often refer to what's in the book rather than indicating the commercial source of the book, which is usually done by identifying the publisher separately or in the name of a series, such as the Rough Guides. As trade marks, titles that describe what the book's about will be pretty useless.
With time, a descriptive trade mark can become registrable: it might also be protected under the law of passing off. Marketing activities and evidence of sales revenue will help show that the title has broken through the barrier and acquired the features of a trade mark. So too will ancillary products, commercial spinoffs, and merchandising: they might exist at a distance from the book, but they will help make the title an indication of origin. "Gone With The Wind" has been a UK registered trade mark since 1993, "The No 1 Ladies detective Agency" since 2004, though that title could be considered to have attached itself to a series of novels.

Colour combination: Deutsche Bahn does not have exclusive rights

In cases T-404/09 and T-405/09 (12 November 2010, reported here by Class 46) the General Court has confirmed that the criteria applied for assessing the distinctive character of colour trademarks is the same whether the proprietor is supplying goods or performing services. It rejected Deutsche Bahn’s argument that the supply of services does not inherently involve the use of a colour, so the colour performs no function in connection with services and colour trademarks can therefore be registered (see case T-173/00 KWS Saat AG v OHIM).

The Court decided that the two colours lack distinctiveness individually, and in combination they presented no perceptible difference from the colours commonly used for railway services. As the OHIM Board Appeal had noted, light grey is commonly used for technical equipment used on railways, and red is used for warning signs and other situations in which the aim is to make people notice something, including advertising. The Board of Appeal also noted that grey could be seen as dirty white, the combination of which with red is commonly found on barriers and similar devices, including those at railway crossings. Looked at overall, red and "dirty white" was functional, not an indication of the origin of the services.

Sunday, 14 November 2010

Local significance?

Article 8(4) of the CTM Regulation tells us that relative grounds for refusal of registration of a Community trade mark may exist where a senior user has common law or similar rights. Those rights, however, must be "of more than mere local significance". Only the European Community could have come up with such a vague expression, and used it in legislation. What is it supposed to mean?

In Case T-318/06 to T-321/06, Alberto Jorge Moreira da Fonsecal OHIM - General Optica, the General Court thought that an assessment of this condition required a consideration of not only the geographical dimension but also the economical dimension of the sign's significance, in the light of how long the sign has fulfilled its function in the course of trade and the degree to which it has been used.

Case T-430/08 Grain Millers, Inc. v Office for Harmonisation in the Internal Market involved opposition proceedings between Grain Millers GmbH & Co. KG and Grain Millers, Inc. The opposition succeeded, and the General Court rejected Inc’s appeal. Arguing that the General Court failed to follow that earlier case, the applicant has appealed to the Court of Justice (Case C-447/10 P). It contends that the General Court had erroneously held that Article 8(4) does not require proof of genuine use of the sign in support of the opposition, as required by Article 43(2) of the Regulation.

The CTM register, and national and regional trade mark registers, are becoming more crowded all the time. The stock of available trade marks is becoming depleted. It is already hard – perhaps too hard – to obtain registration in the face of local or distant oppositions, one of many ways in which the trade mark system of the European Union is failing businesses. This is another aspect of the problem highlighted in the Pago case (reputation in one Member State) and (on the other hand) ONEL in Benelux and City Hotel in Hungary. The court’s view will be eagerly awaited – and perhaps this is a subject for the Max Planck Institute too?

I'll be coming back to this topic - it might be heretical, but I'm on the side of Benelux and Hungary.

Saturday, 13 November 2010

EU trade mark study extended

The Max Planck Institute is currently carrying out a study on the functioning of the trade mark system in the EU, at the behest of the European commission. It was originally given a year in which to report: that expired yesterday, and it has been granted an extension - rather appropriate, given the importance of extensions in the trade mark world - of a month.

I am keen to see what it says about some of the pressing issues in the trade mark world: whether use of a Community trade mark in only one Member State is sufficient (I hope it will be deemed not sufficient, as the Benelux and Hungarian offices have decided, but I fear that pro-integration correctness will prevail over common sense), whether a Community trade mark will be deemed to have a reputation if it is largely unknown except in one Member State (another situation in which the national trade mark system is the one that should be engaged), and lots of other exciting things.

I am not holding my breath.

Friday, 12 November 2010

The perils of naming new cars

Bamboo and Bees, a French business law blog that I don't read as often as I should, reports on a matter that I'd been vaguely aware of - the trouble Renault have run into as a result of a decision to call their new small car Zoé. Not, presumably, to be confused with Zoë, or even Zoe (sans accent). What about the dignity and image of members of Renault familes (of which there are many in France) a member of which might have been given the forename Zoé? Two such families took the car manufacture to court recently, and had the case thrown out.

B&B's report says that this was the juge de référés, who is a judge of fact or evidence, which sounds as if it might not actually be his or her job: and the cases were thrown out because the families had chosen the wrong jurisdiction.

B&B then explains in some detail the jurisdiction of the référés, which is supposed to be for cases of urgency. The cases were brought under Article 809 of the Civil Procedure Code, which is a conservatory jurisdiction - designed to prevent threatened damage occuring. The parties argued that there was imminent damage, in the form of the risk of mockery, attacks on the dignity of the Zoé Renault, and a breach of the principle that forenames are for humans. Renault argued that they had been using the name, sans accent, for some years, and that there wer plenty of other examples of forenams being used as product names. This, they argued, negated any urgency in the case, which was all they had to do.

The families' lawyer says they will appeal - so we haven't heard the last of this yet.

TfL monopolises Routemaster bus design

It seems from reports that TfL (that's Transport for London, in case you haven't encountered it before: the successor body to London Transport, so I suppose it had to distinguish itself somehow) has applied to register the design of the new Routemaster bus that's supposed to be on our streets, replacing those horrible, completely unsuitable and lethal-to-cyclists "bendibuses", in 2012. Why?

What does TfL need registered design protection for, and how can it justify taking the rights in a design created by a participant in a competition? It's not an in-house design: if it were, that would make the situation a little more understandable. I expect the terms of the competition insisted on an assignment of all rights - I have drawn up competition rules containing such a clause, though not on this sort of scale - but, again, why? Because everyone believes in the magic properties of intellectual property, and are determined to have as much of it as possible.

Mayor Boris thinks that there will be demand from elsewhere for these new buses, so TfL should be able to earn some nice royalties. Some commentators seem to doubt that: other cities are a bit more suited to bendibuses, for example. What if someone starts making a bus that looks like the Boris Bus (as it might yet be called), so similar that it doesn't create a different overall impression - TfL will sue for infringement of their registered design, I suppose, and perhaps fares will have to go up to fund the litigation. Either that or they'll have to take out before the event insurance, and the fare-paying public can pay the premiums.

Why didn't they leave the rights with the designer, and let him enforce them if anyone should happen to make a lookalike double decker bus (no small undertaking, I imagine!). Then they might have struck a better price for the work, given that the designer has the expectation, however optimistic, of selling the design elsewhere.

Why are emanations of the state such as TfL paying good money to collect intellectual property rights anyway? If the design work has been paid for by the public, what's the justification for enclosing it, bringing it into a form of private ownership? To enable TfL to exploit it? But TfL should get on with the task of running an acceptable level of transport services in London, not indulge in some ridiculous sideshow. They need to keep their corporate eye on the ball. It's like those Royal Marine Commando Community trade marks I commented on a while back, or the re-branding of the Patent Office - all completely unnecessary, and done (I imagine) at the taxpayer's expense. What we need to protect matters like those is something like Canada's "official marks" - the Patent Office already had something rather like that, which was almost surrendered when they rebranded. That deals with the need for these public bodies to register trade marks: as for bus designs, I see no justification whatsoever.

There's one ray of light, though. To be validly registered, the new design has to make a different overall impression compared with the prior art. It looks so like a real, much-lamented Routemaster that it might well fail to clear that hurdle.

Monday, 1 November 2010

Initial interest confusion comes to the UK

Initial interest confusion has always, since I first came across it in the Movie Buff case (Brookfield Communications, Inc v West Coast Entertainment Corp 174 F. 3rd 1036 (9th Cir., 1999)), appealed to me as a useful extension of trade mark protection. If you lure someone to your business by making a reference in some way to another's trade mark, you have at least got part of the way to taking a customer off that other trader by means of a deception. The deception stops there, but you have taken advantage of the other trader's trade mark to get that far, and that isn't fair - especially when the other trader is a competitor.

Since then trade mark protection has grown in so many ways, many of them quite regrettable beside IIF, but in the Google Adwords case the Advocate General was adamant that there was no such doctrine (though he didn't mention it by name)  in European Union trade mark law (nor, if it is a different thing, in the approximated laws of the Member States). Now, however, it seems that the English courts have imported it anyway, in Och-Ziff Management Europe Ltd & Anor v Och Capital LLP & Anor [2010] EWHC 2599 (Ch) (20 October 2010). The claimants are part of an asset management group and the defendants are an independent investment house. The claimants have Community trade marks, while the defendants have adopted their founder's nickname as the "trade marky" part of their corporate name. Some people might be able to distinguish the services they provide, but they could be lumped together under the heading "financial services", which is enough to raise a likelihood of confusion. But the claimants argued that they didn't have to prove a likelihood of confusion in the normal way, but only had to show initial interest confusion.

The judge - Arnold J, waiting patiently for the CJEU to answer his questions on Adwords in the Interflora v M&S case - carefully fits the case into the existing body of case law, referring to English, Irish and European Union cases. Even so, to have an infringement where the likelihood of confusion is dispelled before a transaction takes place, so the customer is in no doubt about with whom he or she is doing business, is a radical step. In the real world it might have its applications, but online it is revolutionary - and the very opposite of what the Advocate General suggested in the Google France case. There has, however, long been a "bait-and-switch" doctrine in English trade mark law, so perhaps it's not Arnold J who is being revolutionary, it was the Advocate General and Arnold J is the counter-revolutionary. Anyway, it's likely to be in the field of Internet searches and keywords that the doctrine finds its application, and it will bring a whole new dimension to trade mark infringement.

Monday, 25 October 2010

Intellectual property insurance

Intellectual property insurance is a topic that fascinates me, one that we don't hear or read enough about. Jane Lambert is one of the few people talking or writing about it, and she posted this very interesting piece on one of her blogs the other day. I'll come back to the subject sometime but I am pleased to be able to provide a link to this for the time being.

Wednesday, 13 October 2010

The right to own DVDs

A report on bizlawcentral.com picks up on an article in the Malaysian paper, The Star, about penalties for having illegal DVDs, even for private use. That sliding feeling again ...
Pirate copies of publicly-available films on DVD are clearly wrong. It must be unlawful to copy a DVD version of the film, to record it off-air (except for whatever limited purposes the law might allow, as our copyright law does for time-shifting - which sounds as if it might be related to what Phaedrus experienced ...) or to use a camera to grab a copy in the cinema. On holiday in Spain in recent years, I have noticed that the DVDs available to rent (within the expat English community at least) are all copies, and I suspect I might find something similar in England if I ventured into the right part of the underworld - but I have little interest in watching the latest from Hollywood, anyway.
What about when the film is not available? That seems to be the argument in Malaysia. There's also an argument based on the price at which it's available. Of course, illegal copying of anything would disappear immediately if the anything were available free of charge - or even for a modest cost. Film producers, and record companies, must set their prices at the level at which they expect to maximise profits (or do they? Why are CDs and DVDs priced so uniformly? Is a CD from one artist really worth the same as a CD from another artist? The selling price might be identical - but market clearing or profit maximising might call for a different price). Just because one can't afford the DVD, or CD, doesn't mean one can procure an illegal copy.
Well, back in the days when (as I just defined the era) Frank Zappa was unknown to FT readers and there was an Iron Curtain to show how different various political and social systems could be, I had an extensive collection of tapes made from friends' LPs. I also had no grasp of copyright law - but that's another matter. I am wiser as well as being older. I couldn't afford to buy all those LPs - after all, they cost as much as £2, sometimes even £2.50, each - so I taped them, and my friends taped my records, or would have done except that my collection was so eclectic that they probably didn't want to bother. I had some rarities on tape, which couldn't be obtained any other way, but mainly I admit it was sheer volume, not scarcity, that drove me. And others.
I still have some rarities on tape, somewhere - old Dylan bootlegs. There's the scarcity argument. 30 years ago his 1966 concerts were only available in bootleg form. The people who made the records could face prosecution but the fans who bought them did no legal wrong. Nearly everyone (excluding the Grateful Dead) takes a much more prorietary view of their rights now: plus, record companies and film studios are rather bigger entities, with more shareholders to satisfy. The people who make copies of music and films that they cannot afford are and must always be infringers: they should never be criminals. People who make unlawful copies on a commercial scale are and must always be infringers: whether they are also criminals is another matter, and I would say let the industry enforce civil rights before hastening to criminalise the activity, which often forms part of a wider range of activities which is clearly criminal anyway.
And price the product to make it available to all!

Russian president calls for reform of international IP treaties

Sometimes I get that sense of the world sliding away from me - as it did for Phaedrus in Zen and the Art of Motorcycle Maintenance. I vividly recall reading Frank Zappa's obituary in the Financial Times: that still epitomises for me how radically the world had changed in a few years, eliding the passing of an iconic cultural figure, the fact that he might qualify for an obit in that newspaper (a few years before, few of its readers would have recognised his name) and indirectly the disappearance of the Iron Curtain (brought to mind because of his appointment by Vaclav Havel as a special ambassador to the West - what a tribute for a fan to pay to a musician!).
The news that President Medvedev was talking to musicians at the Rhythm and Blues Café in Moscow might have caused similar feelings. The fact that there is such an establishment in Moscow might alone have been enough once to produce that sliding feeling, but I am reconciled to the fact that times have changed. The fact that he was arguing for reform of international IP conventions, singling out Berne and Geneva (the phonograms convention, I assume, not the red cross one), could also prompt the same sensation.
His point that those conventions are stuck in a different era, before the Internet allowed faithful copies to be sent around the world in the blink of an eye, when Frank Zappa was unknown to FT obituary writers, is well-made. The notion that downloading needs to be treated "like any other crime" is a bit worrying ... fortunately Russia is a different place from what it was in Vysotskiy's day.

Friday, 8 October 2010

The costs of patent litigation

I haven't had a lot of time for blogging recently, for several reasons. One is that I have spent the day being a corporate finance lawyer. Another is that the Oxford IP seminars (advertised elsewhere on this page) have taken some of my time. At the first one this week, Jane alluded to a famous case on the costs of patent litigation, and I think it will be a service - a small one, but a service nonetheless - to humankind if I post the relevant paragraphs here for all to see.The case was Ungar v Sugg (1892) 9 RPC 113 at 116-117 and the judge Lord Esher MR.
"Well, then," his Lordship said (not words you see much in the law reports these days), "the moment there is a patent case one can see it before the case is opened, or called in the list. How can we see it? We can see it by a pile of books as high as this [holding up the papers] invariably, one set for each Counsel, one set for each Judge, of course, and by the voluminous shorthand notes: we know ‘Here is a patent case.’
"Now, what is the result of all this? Why, that a man had better have his patent infringed, or have anything happen to him in this world, short of losing all his family by influenza, than have a dispute about a patent. His patent is swallowed up, and he is ruined. Whose fault is it? It is really not the fault of the law; it is the fault of the mode of conducting the law in a patent case. That is what causes all this mischief.”

Tuesday, 28 September 2010

The Coca-Cola Company sues to protect bottle shape in US

I’m not passing comment here on what The Coca-Cola Company is doing with its trade marks: I don’t know enough about this story, and it’s many years since I bought orange juice in a US grocery store. In fact, I might never have done so at all. But I think there are lessons in this story about the company’s spat with Aldi over a bottle shape.
The bottles look pretty mundane to me (and I recall in the Round Imports v PML Redfearn Ltd [1999] CIPA 725 design right case yonks ago that the judge (Rattee J) thought that differences a bottle designer might consider significant could well be lost on inexpert consumers – in other words, bottle designs have an inherent tendency to look pretty similar), but The Coca-Cola Company has been selling juice in bottles of this shape for some nine years. That might be long enough to create a reputation in the shape, I suppose, if the shape is ever going to get to the stage of having a reputation. Certainly this is what The Coca-Cola Company claims is what has happened: it claims its rights in the trade dress of the product have been infringed. That’s essentially a trade mark point, but there is a design patent point too – the bottle shape is protected by several of these volatile rights. Volatile, because like a UK or Community registered design, design patents are readily granted, and frequently invalidated. Round Imports, though of absolutely no significance in a case in the US, is concerned with the limitations of design protection for mundane designs.
Aldi is selling a similar drink in a bottle which is very similar – perhaps, in Round Imports terms, identical. Maybe The Coca-Cola Company is right to claim it is damaged by this, although I’d have thought the consumer would pay attention to a lot more elements of the get-up than the bottle shape alone (indeed, might ignore the bottle shape and look at the name and other indicia). Be that as it may, and (as I said) not wishing to comment on the particular case (which also involves design patent claims), there are plenty of other cases around like this where businesses have tried to “leverage” their trade mark rights and create out of them a true monopoly. And if trade mark and design owners are able to do this, to my mind it’s a good indication that the system is broken.

Monday, 13 September 2010

Copyright absolutists revisited: The Royal Opera House

The Lawyer carries a strange story about the excesses of intellectual property, or rather its exercise: the Royal Opera House intimidating the proprietor of an opera blog, Intermezzo with threats of legal action over photographs reproduced on the blog.

Apart from the completely OTT threats of legal proceedings, the ROH has brought ridicule upon itself because of the misspellings - "copywrite" and "consul" - and other errors in the correspondence emanating from its legal department. We all write emails in haste, but not that sort of email. As far as the merits are concerned, it seems - contrary to initial impressions - that it's not photos produced by the ROH for the use of the press the reproduction of which it objects to (surely an implied licence, if there is no express one, would cover that), and in the end it's only a couple of photos of sets, in which the set designer presumably owns the copyright, that are in dispute. Even so, fair dealing for criticism and review or reporting current events should deal with that (though reporting current events doesn't get you off the hook if the work is a photo). For criticism and review, acknowledgements are required, and perhaps Intermezzo has fallen down here too - but that's easily remedied. And by the way, Intermezzo, should you happen to read this, "fair use" is an American copyright concept - don't given your opponents a chance to have have a cheap shot back at you!

I'm reminded of another story about which I posted some time ago, where a copyright owner behaved as if copyright (I think they could at least spell it) was some sort of absolute monopoly. I suppose I should be pleased that there is still such ignorance about basic principles of intellectual property law: it might keep me gainfully employed.

Of course, the most bizarre aspect of the whole episode is an institution - one that is trying to persuade the world that it isn't stuck-up and elitist - hammering one of its most effective supporters. Judging by the comments, it could have lost itself a lot of custom. I've patronised the place once, back in the days before we had school fees to pay: now that I might be able to afford an occasional night at the opera I'll be inclined to find another house, or stick to orchestral or chamber music, just as I will avoid buying the products of others whose use of their intellectual property is oppressive, anticompetitive or avaricious.

Thursday, 9 September 2010

August monthly IP update podcast

I've now completed the August programme and uploaded to audio file and the notes to the server. Among the topics covered are teh Specsavers case, the Honda spares exhaustion case, the opinion of the Advocates General on the European and European Union Patent Court, the idea of appointing an IP Tsar, a patent office hearing in Manchester, and much more. I have included a little Russian but have not tried to pronounce it. Subscribers can now download them and get another hour CPD - I hope you like it.

Friday, 3 September 2010

Convictions for trade mark offences

Two recent stories on convictions under the criminal provisions of the Trade Marks Act. I must still confess to being unconvinced about the merits of enforcing private property rights through criminal offences, especially where the IP rights owners are multinational behemoths who can afford to enforce their own rights. The cases come from Edinburgh and Leicester respectively, involving in the first case Microsoft software and some print cartridges and in the second DVDs, and do not apparently involve copyright. In the Scottish case, the trader has been rosecuted and assets have been seized (reading between the lines a bit) under the Proceeds of Crime Act, and now Microsoft is quite rightly seeking damages. In Leicester, the re-offending shopkeeper has been sent to prison pour encourager les autres though who can tell whether les autres will take note.

Coincidentally, the IPKat has a report of the experiences of an unfortunate trade mark owner, Christine Watson, who found that the criminal provisions of the Trade Marks Act didn't assist her much. Another illustration of how the trade mark system in this country, and in the European Community, is badly broken. Enforcement by trading standards departments is always going to be uneven, as differnt authorities will have differnt priorities, different budgets, and different levels of experience. It does look from the scant evidence of these three items as if trading standards departments might be more receptive to complaints from Microsoft or Hollywood studios than from the small businesses who need their help, though it would be nwise to draw many conclusions from the press stories.

Because trade marks have - still! - an important consumer protection dimension, trading standards departments need to be involved in their enforcement, even where the rights owner could afford to take the matter to court. That dimension is clear enough in counterfeiting cases, less clear in "ordinary" infringement situations. But as the IPKat also reported a few days ago, an EU report has (reportedly: the Kat's source is the Telegraph) an EU-funded study (for which, as the Kat points out, read tax-payer funded study) has concluded that fakes are OK. Well, that's a simplisitc generalisation: one might read it as saying that we should be worried about counterfeit parts for cars and aircraft, and drugs, before we worry about counterfeit handbags, and that sounds perfectly reasonable. I don't agree that counterfeits produce a beneficial effect by speeding up the fashion cycle, and I certainly don't see how they raise brand awareness - the brand awareness is surely a necessary pre-condition for a flourishing counterfeit industry.

If however they destroy the artificial cachet of expensive brands, and cause people to focus instead on real virtues like quality and - dare I say - durability, which at present are subsumed into the brand and lost to sight behind the more superficial aspects, then that sounds like a good thing.

Wednesday, 25 August 2010

The Stig and breach of confidence

When I hear the name Stig, it brings back memories of Stig of the Dump, which only goes to show how old I am. Although it is a common enough Scandinavian forename, to me it is inextricably linked with dumps - not a great connotation. For whatever reason, the makers of BBC's unaccountably popular programme Top Gear chose it as the designation of the anonymous racing driver who features in the show. Now he (the real driver, that is) is writing his autobiography, and the BBC is trying to stop it from being published. The title of this post links to to the story on the BBC website.

It strikes me as a very unedifying dispute for several reasons - but presumably the legal analysis is simple enough: the contract surely contained a confidentiality clause, as secrecy lies at the heart of the whole scheme. If it doesn't, it must surely be implied, or an equitable obligation must exist. But there's another twist to it.

The Stig's identity appears to be widely suspected, because it is laid almost bare in the annual return of a company owned by a certain (far from household name) racing driver. Presumably this is one of those companies set up to hire out the individual concerned, who is under an exclusive contract to his company. In which case, presumably the BBC contracted with the company not the individual - indeed, if it were otherwise there would be no disclosure of dealings with the BBC in the company's accounts. It is hard to imagine that obligations of confidentiality would not be imposed on the company and the driver, but didn't the BBC see a public filing of the company's accounts and its directors' report coming? Now, I don't think there's anything in company law that requires the amount of detail that seems to have been disclosed, so that in itself ought to be a breach of confidence: but the BBC say that the programme and that company have lots of dealings anyway.

The BBC's report presents this not so much as a breach of confidence and of contract, but an attempt to take advantage of the reputation attaching to the Top Gear brand - a very modern analysis, I think, to emphasise the brand above other matters, and not a particularly convincing one.

All in all, a very strange affair - perhaps more will be revealed one day.

UKIPO sets out research plans

Following the demise of SABIP, the institution formerly known as the Patent Office has announced its plans to gather information to support its policy-making. Does this mean anything more than that it is taking over SABIP's role? There's no mention of formal consultation, so I don't know whether I can send them my views about the inadequacies of the trade marks system - on the other hand, I can see why they don't want to be inundated with ill-informed representations against software patents and other controversial subjects.

Tuesday, 24 August 2010

Ansel Adams as composer

When I heard that some lucky guy in California had bought a load of negatives by renowned photographer Ansel Adams, whose work I have loved for years, in a garage sale for $45, it seemed too good to be true. Now it seems as if it might be. According to AP  The Ansel Adams Publishing Rights Trust is taking legal action to stop the owner of the negatives (but not the copyright) from making reproductions from them and selling them.

It's not, however, a straightforward claim of copyright infringement, because the Trust maintains that they aren't Adams's work. There appears to be evidence that they are the work of one Earl Brooks, a little-known amateur photographer (though he must have been pretty talented to produce something that could be mistaken for an Adams). Even so, the claims for trade mark infringement, false advertising, dilution, unfair competition and who knows what else are easy enough to understand, and no doubt in due course a court will find one way or the other.

What particularly intrigues me is that the Trust says even if the negatives are Adams's work, the prints cannot be sold as his:
Mr. Adams was fond of likening a negative to a composer's score and the prints to its performance — each performance differs in subtle ways," the lawsuit said. "The photographic prints and posters offered for sale by defendants ... are not an Ansel Adams 'performance.'
Indeed. Whenever I  have printed photographs from my own negatives they have come out differing in ways that could never be called "subtle". Mr Adams had infinitely greater darkroom skills than mine, so his subtle differences are immensely important: but whatever market there is for prints made by the great man these days is sure to be small, and the prices stratospheric. The calendars and postcards and posters that we see on sale today are presumably reproduced from prints made by the great man, but I can't conceive of them as an Ansel Adams performance. At best, they are someone else's recording of an Ansel Adams performance, and even if not a bootleg performance then one that doesn't faithfully capture every nuance of the performance itself: that's inherent in the process of recording and reproduction. Like a piece of music - Rhapsody in Blue, say: same period (approximately), same country (wrong coast) - there are different interpretations and different performances, by different conductors, different performers and different orchestras. Like an Ansel Adams performance, there are records of it played by George Gershwin - here on YouTube, with the Paul Whiteman Orchestra for which he wrote it, and here in a modern recording in which the composer is present vicariously, by piano roll. I don't think they render otiose recordings by others - but I think that reveals the limitations of Mr Adams's metaphor rather than proving it wrong. There are advantages to being able to use modern technology, whether to record a performance of Rhapsody in Blue or to make a print from an original Adams photograph - and in each case the "performer" can choose to imitate the "composer" instead of giving free rein to their own creativity.

As for prints from the garage sale negatives, the important matter here seems to be their authenticity. If they are Adams negatives, it seems to me to be legitimate to call prints made from them Adams photographs, so long as they are not held out as being the products of his own darkroom. Rhapsody in Blue remains Gershwin's composition whoever plays it, and even if they play it atrociously. And if the negatives cannot be authenticated, surely there is a form of words like "attributed to" which, though they will not keep everyone happy, will at least avoid litigation?

Friday, 20 August 2010

Off-piste - competition law treatment of land agreements

The Competition Act 1998 excluded land agreements from the Chapter I prohibition. It didn't just exempt them, as some commentators are saying, it excluded them altogether, as it originally did with vertical agreements too. Vertical agreements were later brought back into the fold, but since they enjoyed exemption it didn't actually make a huge difference. Now the land agreements exclusion is going to be discontinued (though not until next April).
The expression "land agreement" meant "an agreement between undertakings which creates, alters, transfers or terminates an interest in land, or an agreement to enter into such an agreement". The concept of an "interest in land" is deliberately wide, and neutral. It had no pre-existing meaning in English or Scots law, to start with. It is defined as including "any estate, interest, easement, servitude or right in or over land (including any interest or right created by a licence), and in Scotland also includes any interest under a lease and other heritable right in or over land including a heritable security". Restrictions on the use of commercial property, restrictions on to whom properties may be let, restrictions on to whom land may be sold, and requirements that tenants buy services from particular suppliers (for example, cleaning services or insurance) were all removed from the purview of competition law by the exclusion.
Not that they will now automatically be prohibited. Only if there is an appreciable effect on competition will the prohibition apply anyway (unless price-fixing or market-sharing is involved), and even if it does there's always the possibility of exemption. These days, exemption is, initially at least, a matter for the parties to the agreement, so landlords (and the paradigm case is probably that of the shopping centre, where for various understandable reasons it is not thought desirable to have several mobile phone suppliers next door to one another) have to assess their own restrictions and decide whether they deliver a benefit to the public. A good mix of retailers in a shopping centre would probably be just such a benefit.
In any case, property lawyers are going to have to become more familiar with competition law than they have been up to now.

Confidentiality in divorce proceedings

Confidential information takes many different forms, but it usually makes no difference whether the information concerned is a trade secret or something private. Prince Albert v Strange is still a case of fundamental importance in this area. In Tchenguiz v Imerman [2010] EWCA Civ 908 it was personal financial information. The defendants, whom the Master of the Rolls, Lord Neuberger, described (in the judgment of the Court) using the wonderful phrase as being "in a substantial way of business", shared an office with the claimant, their brother-in-law, who was divorcing their sister, each of whom he described as "independently rich". They thought they might protect her interests by extracting information from the computer system in the shared office. It was not only the premises that were shared: it was also the server, and the most important practical lesson from this case is that this isn't a great arrangement.
The Court of Appeal held that the information had been obtained in breach of confidence, and the information could not be retained and used in the divorce proceedings. As for confidentiality between husband and wife:
The notion that a husband cannot enjoy rights of confidence as against his wife in respect of information which would otherwise be confidential as against her if they were not married, seems to us to be simply unsustainable. The idea that a husband and a wife should be regarded as a single unit in law was a fiction which the law has been abandoning for a long time.
The correct thing to do would have been for the wife to get an Anton Pillar order, enabling a search to be carried out, although the Court noted that such an order was almost - perhaps completely - unheard of in the Family Division.

Monday, 16 August 2010

Cups and saucers, Patent Office opinons, and costs, in Manchester

I have been reading the report of a case before the Hearing Officer called Wragg v Donnelly, involving a claim for a declaration of non-infringement and arguments about validity based on obviousness. The technology concerns a device for allowing steam to escape from a boiler and be safely conveyed to the outside world. This is technology that I can understand.
The clever thing here is that the steam does not just blast straight out from the outlet pipe, which might remove the skin of anyone unfortunate enough to be passing. Nor does it resort to the rather primitive solution of a Yorkshire Bend, or a Y-joint, directing the steam back towards the wall. A Yorkshire Bend appears to be a simple length of copper pipe with a 90 degree bend in it, and therefore not very exciting - not even something that merits a fancy name.
The invention replaced whatever was used to direct the emission back on itself with a "substantially cup-shaped" cap to catch whatever came out of the pipe. The use of a cup-shaped device to reverse the flow of fluids was known in other fields of plumbing - and I imagine, though it isn't mentioned in the decision, jet engines.
The case provides a nice example of how contributory infringement may be important. The claim (there being a single independent one) required a conduit that would be attached to the boiler's pressure relief valve and pass through a wall to the outside world, then an attachment on the end of conduit to reverse the flow safely. The alleged infringement provided a cowl (and tellingly the manufacturer was a maker or chimney cowls) to reverse the flow, but not the conduit. The cowl was saucer-shaped rather than cup-shaped, did not present a concave inner surface to the stream of fluid (it was flat, which is not uncommon in the centre of a saucer) and lacked an end open to the environment, as the fluid was allowed to escape through holes.
Is a saucer substantially cup-shaped? The inclusion of the word "substantially" probably doesn't qualify to be referred to as inspired - but it certainly makes a big difference. Perhaps the drafter of the specification is in the habit of drinking his or her tea out of the saucer ... and perhaps the Hearing Officer was, too, because applying a purposive construction to the words he declined to make a declaration of non-infringement.
He also declined to award costs greater than those provided for in the published scale. The patentee's costs were said to be in the order of £10,000, and as there had been two opinions from the Patent Office both of which had gone against him, his counsel (Jane Lambert) argued that the defendant should not have to bear the brunt of the costs. The opinions should be regarded as a form of alternative dispute resolution, which the parties are generally obliged to try, she argued: but the Hearing Officer preferred the view put by Alistair Wilson, QC, for the claimant - that if costs were awarded in this way parties would be deterred from exploring the issues in a manner simply not possible as part of the opinion process, with cross examination and all the other trappings of a hearing.
Most important of all, perhaps, is that the hearing was conducted in Manchester, the first time this has happened as far as I know. Perhaps in due course there will even be hearings in the North!

Sunday, 15 August 2010

Spending cuts impact on trade mark system

No area of government spending is to be spared from the cuts necessitated by the country's present predicament. In the intellectual property world - or worlds, I should say, to emphasise that the subject isn't a neatly defined unity - we have already seen the demise, to no discernable sorrow, of the Strategic Advisory Board for Intellectual Property. Now, paradoxically, the Patent Office has announced that it will continue to give Community trade mark owners the option to be alerted to conflicting UK trade mark applications.
The reason for public spending cuts resulting in the retention of a service that is very little used is the reduction in spending on government IT projects. To do away with the notifications (which presumably are self-financing, as there is a fee to be paid if you want to receive them) is all tied up with the replacement of the Patent Office IT system, and the future of that project will remain uncertain until after the deadline for making a decision about the future of the opt-in. It was introduced in October 2007, and opt-ins last for three years, so come October this year renewals will fall due unless it is discontinued. So, the cuts will result in the Office retaining a service that people seem to consider is superfluous.
The UK is apparently the only Member State that offers such a service, and given the importance of trade mark owners maintaining watching services these days there can't be much need of it. Ironic that it should be public spending cuts that are keeping it alive.

Thursday, 12 August 2010

Intellectual Property and EU Competition Law

A while ago, I had the impertinence, when posting reviews of three books that OUP had sent me, to suggest that a copy of Jonathan Turner's book would be welcome. It duly arrived. I must therefore review it, especially bearing in mind the flattering comments Jonathan has made about my Dictionary. In the meantime, I have written another review of one of those OUP books (Amanda Michaels's Practical Approach to Trade Mark Law) for the Trademark Reporter, and that was published online yesterday - though "published" is perhaps not quite the right word, given the lengths even INTA members have to go to to get to it, and the fact that it is simply unavailable to non-members.
The launch party for Jonathan's book was a highly enjoyable affair, a few months ago now. I took the unfortunate LPC student who was assigned me as her mentor, and we practised our networking skills. We also enjoyed trying the quiz that Jonathan had devised, offering pictorial clues to well-known cases in which intellectual property and EU competition law collided. I failed to identify Pronuptia and Consten/Grundig: ridiculous. I am not spending enough time thinking about EU competition law.
I did think about it a bit recently, though, because Jones v Ricoh (reported elsewhere on this blawg) almost brings the two subjects together. The reason for saying "almost" is that it's a confidential information case, and that is arguably not in the IP world (as comments on the IPKat's report of the case have argued). Jonathan Turner includes a little about confidential information in his book, but that isn't the point. To my mind the important thing is that what we know as intellectual property isn't really property anyway, although the metaphor is convenient: but that's not the point either. The Kat observes that this is a rare instance of an English court dealing with a point of European Union competition law rather than trying to pretend it hasn't been raised.
If that happens more in the IP field (as it is sure to do), Jonathan Turner's book will be essential reading for all those practitioners likely to be exposed to the two fields of law. That they are related is no revelation, although their relationship isn't as simple as it might at first look. Intellectual property rights, despite their monopolistic character, are not inherently anticompetitive - in fact, on the contrary, they should be seen as pro-competitive.
The book adopts the slightly unusual approach of treating the subject in chapters devoted to technology; culture, media and sport; and branding. With an introductory chapter (nearly half the book), that makes only four chapters spread over 300 pages, and lengthy chapters cause footnote numbers to exceed 1000. Not that this in any way detracts from the quality of the content: it does however seem an odd way to construct a book - a point I made when reviewing Amanda Michaels's, too.
Although it's aimed squarely at practitioners (who else would be interested?), and it contains a large amount of black letter law (it would not be possible to do other than to describe the cases, the block exemption regulations, the Notices and other sources) it is not a dry exposition of legal rules. Notwithstanding the length of the chapters, it's easy to find one's way around in and contains the answers - even, in some cases, in tabular form - to all the questions that might need answering. Well, all the questions I have thought up, anyway.
In an emerging area of law like this, it's important to know that you're right up to date, which means it would be desirable to have a note of the date at which it was up to date - accepting the inevitable, that no book remains up to date for long. The Union's Court and the Commission are not known for their alacrity in moving the law forward, so the author will have been able to see developments ocming, and this handsomely-produced tome should therefore enjoy a reasonable shelf-life - at £145 one would wish that to be the case.

Wednesday, 11 August 2010

IP Dictionary on the way

This is a uniquely satisfying thing to see when checking one's email in the morning: my book has put in an appearance on the publishers' website, here - and the best part of it is a very nice endorsement from Jonathan Turner. I still have to contain myself until February, though, according to the page - and indeed am waiting for page proofs, which are promised for September.

Article on Henry vacuum cleaner case in Journal of Intellectual Property Law and Practice

My article on the Henry case, noted on this blawg a few weeks ago, is now available online here and will shortly be in print too.

Friday, 6 August 2010

A close run thing: Specsavers beat Asda

Specsavers International Healthcare Ltd v Asda Stores Ltd [2010] EWHC 2035 (Ch) involved allegations that the supermarket had infringed Specsavers' word and figurative trade marks and that they had committed a passing off. Interesting, because in the Penguin v Puffin case (aka United Biscuits v Asda) years ago there were trade mark infringement and passing off claims, and they went different ways. That case was also invoked here as an indication of the defendants' general attitude to matters of trade mark law - interesting to see their past record of "living dangerously" come up in new proceedings.
Asda advertised its in-store opticians using signs that took certain elements from the claimant's get-up, including several that featured in registered trade marks. The main thing was the two ovals - a highly stylised representation of a pair of spactacles, perhaps, though crucially in the claimant's mark they overlapped and Asda's didn't. The colour green was also chosen, in a very similar shade, though the trade mark was not registerd in colour so this could not affect the infringement case. Asda also used the slogans "be a real spec saver at Asda" and "spec savings at Asda". Their original intention had been to parody Specsavers' advertising, blatently inviting the public to compare the two, and they took legal advice to judge just how dangerously they could live.
The trade mark claim was that Asda were using a similar mark for identical services, creating a likelihood of confusion, and that they took unfair advantage of the reputation of the earlier marks. Mann J held for Specsavers, but not entirely: the first of those claims failed because colour was an important element but was not protected by the registered trade mark, and take away the colour and there were enough differences (especially the non-overlapping ovals). The ovals alone were an important element of the mark but not dominant, and the introduction of the wording within the ovals made a very significant difference. Indeed, the overall impression was different - and although "different overall impression" is the test for infringement of a design, the Court of Justice imported it into trade mark law in SA Société LTJ Diffusion v SA Sadas [2003] FSR 1. The judge thought that a reasonably circumspect consumer (the Court of Justice invoked a "reasonably well informed, reasonably observant and circumspect" consumer (Lloyd Shuhfabrik Mayer v Klijen Handel BV [2007] FSR 77 at para 27), which might have allowed the claimant to introduce considerations about the eyesight of a prospective customer - had they been sufficiently mischievous) would not be confused by the ovals if they were the only element in common.
The unfair advantage claim succeeded only in respect of teh first slogan. the words "spec saver" in it clearly called the claimant to mind and intentionally gained an advantage by drawing on their reputation. This was not the case with the second slogan. As for the logo, the "living dangerously" evidence showed that Asda had aimed at "resonance", and the logo brought Specsavers to mind but not enough to amout to unfair advantage.
There was no misrepresentation, so the passing off claim fell at the first hurdle: there was too much Asda branding associated with the material for that claim to fly. And, to add to the claimant's presumed discomfiture, one of its non-verbal logo marks was revoked on grounds of non-use.
So, a victory, though with heavy losses, and interestingly the mirror image of the Puffin v Penguin case where United Biscuits lost on infringement but won on passing off.

Parallel imports of motorbike spares

The IPKat reports Honda Motor Co Ltd and another v David Silver Spares Ltd [2010] EWHC 1973 (Ch), a 28 July 2010 ruling by George Leggatt QC, sitting as a deputy judge of the Chancery Division (England and Wales), only available on Lexis Nexis at present so until there's a freely available version, [there is now: http://www.bailii.org/ew/cases/EWHC/Ch/2010/1973.html] which might shed light on why such a hopeless cause got to court at all, I'll leave the detail to the Kat and summarise (and ensure I don't plagiarise) here.
It's one of many cases involving parrallel imports of motorbikes and spares. Honda sued for infringement of their CTM and UK trade marks, claiming that the defendant was trading in spares that had not been placed on the market in the EEA by Honda or with their consent. The defendant sought to strike the claim out or to have summary judgment, arguing that it was entirely speculative and lacking in particularity
The deputy judge dismissed the claim, reiterating the well-worn principle that even when the goods have been placed on the market outside the EEA by the trade mark owner the rights can be asserted to stop importation into the EEA. I thought any student of trade mark law would have been able to work that out, which is why the full report must surely reveal that there is more to the case than meets the eye.
Where consent is argued to establish that the trade mark rights are exhausted, it must relate to every individual item in respect of which exhaustion is pleaded (onerous) and must be positively expressed (the Kat notes that it may be implied, provided it is unequivocal, so again the report of the case appears to be a bit lacking). The trader alleging that there has been consent must prove it: it is not for the trade mark owner to show an absence of consent. The burden of proof is only reversed if there is a real risk of partitioning of markets.
The defendant had not shown that Honda's claim lacked any reasonable basis or had no real prospect of success. Honda did not have to show that the parts the defendant was selling were placed on the market outside the EEA: it only needed to assert on reasonable grounds that the defendant had used the trade marks in the EEA for goods for which they were registered and that Honda had not consented.
It will be interesting to see later how the gaps in this account are filled! I hope there'll be a full transcript of the judgment in time for the next podcast.
[Now that I have found the judgment on BAILII, I'll revisit this posting when I have time.]
 

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