Friday, 29 June 2012

Rock group seeks photographers' copyright

An unedifying story of copyright absolutism from the BBC: the Stone Roses, who seem to me to belong to such a recent period of rock history that they cannot possibly be holding a reunion, appear to have caused considerable offence to photographers hoping to cover that reunion. Or perhaps it's just their management that has done so. As a sometime aspiring (and in a small way practising) photographer in that same field, though long before the Stone Roses, I sympathise with the practitioners of the art, who are reportedly being asked - nay, required - to sign contracts under which the copyright in images they make will become the band's (or the management's?) property. One of them, Ian Tilton, is reported to be asking colleagues to boycott the event.
A far cry from the time when I'd approach the performers after a gig at university and ask if they'd like copies of the photos I had taken for the student newspaper. Even, come to that, the time when I would come home from a gig at Newcastle City Hall with a roll of film of Elvis Costello or Talking Heads - I'd probably find stern warnings about taking photos at all now, and risk having my camera taken away from me. But those were the days before you could use a camera to make phone calls ... 

Wednesday, 20 June 2012

IP Translator

The Court of Justice handed down its decision in the IP Translator reference yesterday. The case, an expedition to Luxembourg initiated by the Appointed Person who heard the applicant's appeal against refusal by the Registrar of Trade Marks, was contrived to explore the important issue of using class headings in trade mark applications, and whether using the class headings means you have specified all the goods and services in the class - what might be termed a purposive approach - or whether it means you have just bagged those goods or services in the list - the literal approach. The application, filed by CIPA, specified the services set out in the class heading for class 41 - which don't include translation services, though it seems to be common ground that translation services are proper to that class. So, if the class heading automatically includes all the goods in the class, the application is dead in the water because of descriptiveness. Such is the process of working out what the law means. What a quaint idea that it might have been written clearly in the first place.

The problem is exacerbated by two factors, maybe more. First, online application forms (the OHIM one in particular) encourage the use of class headings. OHIM takes the view that class headings include all the goods or services in the Nice Agreement's alphabetical list for that class. Nine national offices do likewise. 17 national offices, by contrast, use the literal approach. (OHIM has a page on its website dedicated to the convergence of class headings.) Second, trade mark owners want the widest possible protection, not necessarily because they want to sue for infringement (though they might bully their way to the desired result) but more to enable them to mount spurious oppositions based on indefensibly wide specifications. Neither factor is desirable, IMHO: both lead to what the Max Planck Institute's largely weak and self-serving review characterised as "cluttering".

The Court begins by telling us what we already know, but of course it always does that:
Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark. [Emphasis added.]
It goes on to say that the use of class headings is not precluded. Hard to imagine that it might have been, and of course that's not the question. The important thing is what to read into the class headings. The Court adds, of course, "provided that such identification is sufficiently clear and precise".
An applicant for a national trade mark who uses all the general indications of a particular class heading ... to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.
So what do you do if you want to cover all the goods and services in the class? You can't (as I understand it)  use the old formula "all goods in class X", because that is neither clear nor precise. But what is? Or does the judgment mean that we shouldn't be so lazy, that we must set out in so many words what we want protection for? That would be a good thing, even if it led to much longer specifications. And remember (if your memory of these things goes back to pre-1994) that we have the great benefit of a system that regards as infringement something that involves mere similarity between the parties' goods or services (provided, of course, that there is a likelihood of confusion). This contrasts with the literal interpretation of the scope of protection under the 1938 Act. You don't need to sweep up all those goods and services: it's only if you want to make your trade mark as much as possible like copyright that you'll do that, and the system should resist any attempt to do that.

Finally, another gem I have uncovered in my reading on this topic. OHIM's Project Brief on the convergence of class headings says, discussing whether it would be better to wait for the judgment we got yesterday:
... a consensus between all of the IP offices is preferable to reliance on court rulings, which in any case are not expected before middle 2012. It might also not provide the legal certainty and clarity that is required.
Well, it seems that they were right about the legal certainty and clarity that flows from the decision of the court. But in the nature of a reference under Article 267 (Article 177 as was - what sort of inflation rate is that?) that's what you get. But how can a consensus between national offices be better than court rulings? More practical, perhaps, but the supreme authority on the interpretation of EU law is the Court of Justice, and it's rather disconcerting to find another institution disregarding this.

CIPA intellectual property debate

To London, for a debate on the motion: "This house believes that political pressure and a few loud business voices are making the IP systems in Europe less and less relevant to the needs of small enterprises". Organised by the Chartered Institute of Patent Agents, the motion was proposed by Michael Wilcox, a small businessman and serial inventor, and seconded by Vicki Salmon, one of a small number of people who are solicitors and patent agents (so use of the title "attorney" is certainly justified in her case). I remember a small passing-off dispute in which, fairly newly-qualified, she was on the other side - getting on for 20 years ago now. Opposing it were Sean Dennehey from the Patent Office, with whom I once spent a train journey after I encountered him on the Tube when I left my then-office one evening and naturally fell into conversation with the fellow-passenger carrying a souvenir shoulder bag from a patent conference, and James Nurton, editor of Managing Intellectual Property (and INTA Daily News, a publication rather closer to my heart given the coverage afforded to the Capital City Marathon four annual meetings ago, thanks to James).

Thanks to the combined efforts of First Great Western and London Underground, I arrived rather late, but the proposer had not started anyway. I was immediately put on my guard when I saw the screen was displaying a Microsoft PowerPoint window, as opposed to a slide-show in which the functional parts of the interface are removed ... Mr Wilcox admitted to a lack of facility with the technology. Oh, dear. But his story about how the patent system had failed him and his business, and small and medium-sized enterprises throughout the country, was well worth hearing. No matter how often one hears that a patent does not exclude others from using your invention, merely enables you (should you be as well-resourced as, say, Croesus) to sue those who infringe, it's worth being reminded. And applying for a patent puts the results of your research in the public domain, and vulnerable to being taken without permission: big business, he suggested, does little research, but picks up its new ideas from other people. He quoted Joshua Shapiro, whom he described as holding some senior position at IBM:
Large companies routinely infringe intellectual property of start-ups or individual inventors. They will not sign non-disclosure agreements to protect others’ IP. When shown relevant patents, they need to license, they literally say “Sue us”, knowing that deeper pockets trump a valid claim.
He also mentioned several other people from IBM, to demonstrate that big business alone had the ear of the law-makers. But I find that Mr Shapiro was no longer with IBM when he made that comment in this letter to the FT - so was he repeating something he said earlier, when he did work for IBM? It seems unlikely. And the comment is an observation, not a manifesto. So with the benefit of a little research, I find myself less well-disposed towards Mr Wilcox's argument than I was at the time. The fact that he simply ignored the need to keep to time, an essential feature of any debate (for the sake of fairness, apart from anything else) also told against him - though the chairman, Professor Sir Robin Jacob (who else could it possibly be?), should perhaps have been less lenient. As a friend remarked afterwards, he has mellowed.

Vicki's shorter speech (the chairman decreed that both speakers for should go first, like leader and junior in court) rehearsed the arguments against the EU patent and the uniform patent litigation system as it stands, and I must say they become more compelling the more I hear them. Whose interest will reform serve? But we hadn't heard much about anything but patents so far. Sean Dennehey preferred to take the motion apart, arguing that one could not possibly agree with the proposition that political pressure could make the system less relevant to small enterprises, because to do so would be to speak against democracy. No, Sean, with respect, to do so is to recognise the democratic deficit. After all, who voted for you? (I hasten to add that I would have done, given the chance.) James offered a great many statistics to support the proposition that small business makes considerable use of the various systems of protection, but seemed to assume that more patents, trade marks and registered designs was A Good Thing.

The chairman took the opportunity, before opening the floor to contributions, to observe (with the aid of props - a boxful of metal bolts and channels) that Ancon Ltd v ACS Stainless Steel Fixings Ltd [2009] EWCA Civ 498 (16 June 2009) had been fought on a conditional fee arrangement, which he thought might offer one solution to the problem of the cost of patent litigation - but not, I think, for small-scale legal practitioners: you need to be able to carry the people doing the work for which you will be paid only after the case is over, and then not necessarily in full. You can accumulate an awful lot of work in progress with no  immediate prospect of being able to bill it: would it be secure enough to impress the bank, I wonder?

A speaker from the floor, Sabine McNeill of 3D Metrics, drew attention to Shift Happens which she suggested members of the audience should find using Google (other search engines, I should add, are available). I hadn't seen it, so I did, and for the benefit of readers who also haven't seen it I'll embed it below. I'm not sure what it proves as far as this debate was concerned, and for all that the information in it is interesting it's interesting in a tabloidy sort of way ... Sabine stressed how keeping trade secrets confidential is a better to protect your intellectual property (in the widest sense) than applying for a patent and revealing what you have invented to the world at large. This is not necessarily the advice dispensed by the profession, which makes its money from filing applications: "Five patent agents", she said, "would take the money I don't have." A short discussion ensued about the ethics of professional advisers taking an equity stake in lieu of fees: Sir Robin was hard-pressed to see where a conflict might arise, others disagreed, no-one (except perhaps Tibor) seemed to know what the rules say, and Dennis Crouch who happened to be in the audience said that US rules allowed lawyers to take stakes in clients. (I would comment on what the SRA says, but their website won't load so I can't consult the new handbook. Oh, for the days when the Guide to Professional Conduct was a book.)

Mr Justice Arnold's contribution to the debate was to say that copyright also needed to be considered, that the 1988 Act was technologically obsolescent and so much amended under the European Communities Act as to resemble a patchwork quilt - great stuff. He was unimpressed by the Regulatory Reform Bill's attempts to hack it about still further, though restating the exceptions chapter ("permitted acts", surely?) on the basis of the Information Society Directive wasn't a bad idea. (But still no-one had really mentioned trade marks, and I had missed the chance to have my say - even though I was prepared, as I did the other way round at my first Party Conference in - when would that have been? 1978? - to deliver my "for" speech against the motion.)

One other contribution I noted (which is not to say that nothing else was said that was worth paying attention to): Tibor on the Z sections of the Registered Designs Act - "more suitable for labelling sewing machine parts". Excellent stuff. The chairman asked for a show of hands, decided that a count was needed, announced that there were "about 35" in favour, and declared the motion carried in time for the kick-off in the England v Ukraine match, though like most people he stuck around for refreshments afterwards.

Discussion of new copyright legislation was a little off-piste, but it made me wonder whether anyone remembers what it was like back when the 1988 Act was being created. It was very difficult to find enough parliamentary time for the legislative behemoth, which set a record (probably since surpassed) for the number of amendments tabled to it, so it's hardly surprising that the same excuse is trotted out today. Government is the art of the possible (isn't it?) - actually, it's politics that was said to be the art of the possible, by Bismarck no less, but I think the point still stands - so government will try to make necessary amendments to intellectual property laws by using delegated powers, implementing EU directives and making rules to patch up the floundering vessels. I don't expect to see another copyright act in the near future.

Tuesday, 19 June 2012

Interconnection of business registers

Business registers of various sorts are of great importance - the Register of Companies being the obvious example in the UK and in fact the only one since the Register of Business Names disappeared in Mrs Thatcher's first cull of what were deemed to be unnecessary impediments on the ability to do business, notwithstanding that it performed a valuable consumer protection function, sorely missed in a world in which you can rarely tell with whom you are doing business on-line. Within the European Union, with more and more trans-border business going on, co-ordinating business registries is a pretty important thing to do (and I hope it might show how woeful is the UK system). Whether as the Commission claims
Linking business registers across Europe will stimulate cross-border trade and save up to 70 million euro a year
I don't know, and it certainly sounds optimistic, but that does not mean it isn't worth doing.

Directive 2012/17/EU of the European Parliament and of the Council of 13 June 2012 is the instrument to do the job, amending Council Directive 89/666/EEC and Directives 2005/56/EC and 2009/101/EC of the European Parliament and of the Council. The Commission's press release is here.

Those Games again

EBay is awash with items of uniform which were distributed only yesterday to volunteers who'll be working at the events. There are probably no branding issues - but it's not an unreasonable assumption that the organisers, who have nailed down every conceivable legal issue connected with with their activities, will have done so here before handing out thousands of outfits which must have cost them the best part of £100. And indeed they have: the uniforms remain the organisers' property until after the games have finished, when the volunteers can retain them as souvenirs.

So what action, I wonder, is being taken to deal with the myriad crimes now being committed on eBay?

Thursday, 14 June 2012

Patent Office consults on opinions, mediation

Opinions on patent validity and infringement have been offered for some time by the Patent Office, whose examiners are well-qualified to give them (after all, it's just applying the skills they use in their examining work to a different aspect of the same problem). The service has been well-used. Less well-used - indeed, hardly used at all, it seems - is the Office's mediation service, despite the excellent value for money it offers compared with other mediation options. Now the Government proposes to extend the opinion service and is seeking views on what to do with the mediation service. Here is the press release on the Department for Business, Innovation and Skills website.

The opinion-giving service will be extended to cover more questions about validity and also to include SPCs. The Government also proposes - logically enough - to give the Office powers to revoke a patent if it delivers an opinion saying that the patent is invalid. It's not satisfactory to have a patent remaining in force if the Patent Office thinks it's invalid - that's the worst conceivable type of cluttering.

As for mediation, the purpose of the exercise (which seems to have come from the Office itself) is to find out what people would like it to be doing - how it could be made more popular. Hard to say, in my view: mediation is a great way to resolve many disputes, but the sort of problem that arises in the intellectual property field is often unsuitable. Ownership disputes, yes, but infringements and validity? Not so much - they tend to require an unequivocal answer, reinforced by a power to revoke.

Tuesday, 5 June 2012

A liberal approach to IP

That's the way to encourage innovation, even if you're a publicly funded body. Having spent many hours dealing with a project funded by a public authority which in a classic piece of boilerplate drafting initially demanded the intellectual property rights in what it commissioned - plus the objects themselves - when I can't believe they would be set up actually to do anything useful with what they were trying to grab, it came as a breath of fresh air to read that CERN is happy to grant royalty-free licences to partners prepared to work on technology it has developed. Their initiative is based on the Easy Access Initiative and if you're interested you can see what technologies are available here. You can also read the terms of the exclusive and non-exclusive licences on offer.

Living with those Games

A couple of items in the press this long weekend draw attention to the draconian laws protecting any trade reference to those Games taking place not only in the capital but also in various other places around the country this year. I'm not avoiding mentioning them by name because I fear the consequences of writing prohibited words, but as a small indication of how appalled I am at what small businesses are having to put up as a result of the event being visited on them. I'm also appalled, thought this is of marginal relevance, at the news that Chiltern Railways, usually the best in the country, were unable to convey all those who wanted to come to London to mark the Jubilee, and indeed had trains departing from their starting point already full and therefore unable to pick up more passengers along the way. Bodes well for later this summer ...

Anyway, there's a nice piece in the Oxford Times about a local baker who's providing bread for the benefit of spectators - who will be a captive audience for the official catering, as they will apparently be prohibited from taking in their own provisions. As the piece explains, the baker can't even tell anyone he's doing it because the exclusive rights to claim any sort of commercial connection with the event have been sold, for vast sums of money (necessary, no doubt, to finance the very expensive bureaucracy that is evidently necessary to facilitate sporting competitions), to a handful of sponsors with no visible connection to sport.

The Financial Times examines the position of businesses which already had That Word in their names. If they can show that they were using the name before 1995, they'll be OK, but in this age of data retention policies and expensive storage for old papers that might be easier said than done. The FT piece also suggests that not much is being done about opportunists who have added the Forbidden Adjective to their business names. No matter that no-one in their right minds would suffer a  moment's confusion: this is not a crypto-trademark law, it's a pretty complete monopoly.

I'm looking forward to several weeks of great sport - on my television. I have a feeling even getting to the office in London is going to be out of the question, and that is not going to improve my opinion of the commercial interests which have blown what should be a wonderful event up into a colossal, and - as the laws on the use of what should, except in very narrow contexts, be part of the great common of the English language, illustrate - ludicrous folly.

Saturday, 2 June 2012

Trader gaoled for trade mark offences

The public needs protection against sellers of falsely marked goods. Arguably. The proposition explains the existence of criminal penalties in the trade marks legislation, giving extra protection to private property rights: I don't like it, but I can see the importance of protecting the public. The problem is that, in cases like this one reported in our local paper The Oxford Times, the public usually doesn't need protection as they know very well that they are buying zhing zhong (look it up in my Dictionary of Intellectual Property Law). They just like the idea of having what look like designer labels on the cheap.

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