Thursday, 3 December 2015
Wednesday, 2 December 2015
Thursday, 15 October 2015
The intellectual property assets of Matchchat, a company specialising in fan engagement, are for sale from Metis Partners, an award-winning, commercial intellectual property consulting firm.
Matchchat is a leading fan engagement solution provider that has been developing and offering a suite of software tools relating to user interaction and native advertising. It has achieved around 2 million page views a day and 50-60 million impressions per month at its peak. With around 30,000 registered users, Matchchat has successfully established a loyal following amongst sports fans.
Originally established as a fan engagement platform, Matchchat’s five products enable fans to read and comment on web content about their favourite sports teams, as well as vote on sports-related polls. The Company has expanded into the native advertising market segment by launching its Now Native brand.
Matchchat’s products have made the experience of serving an online ad much more technically reliable, improved the ease of navigation as well as the overall user experience and increased the time users spend on webpages. High-quality source code has helped to create a seamless experience for the user, and it has been developed in an incredibly efficient manner.
Assets linked to Matchchat include software source code and intelligent recommendation algorithm, goodwill in the brand and reputation, databases and data, branded domain names and website content and organisational knowledge including a codebase wiki guide.
Nat Baldwin, Head of Brokerage Services at Metis Partners, said: “This is a unique opportunity to purchase the IP assets behind Matchchat’s exciting fan engagement software, which have already attracted considerable interest. Matchchat’s IP assets present an attractive commercialisation opportunity for a potential purchaser.
We believe that Matchchat’s IP assets are likely to hold appeal for companies involved in media, sport, entertainment, social media, software development, e-commerce and advertising and marketing industries.”
All offers, notes of interest and /or requests for further information should be directed to Morven Fraser of Metis Partners by Thursday 22nd October at noon, firstname.lastname@example.org or on 0141 353 3011. Website: www.metispartners.com.
The sale of Matchchat’s IP assets reinforces Metis Partners’ position as a vendor of IP assets from leading software and technology companies. Metis Partners has had recent success selling IP assets from a range of widely-recognised social media, software and app businesses, including the IP assets of businesses such as Polaroid Blipfoto, Weeworld and Blinkbox Music.
Monday, 5 October 2015
Sunday, 4 October 2015
-- via my feedly.com reader
Monday, 21 September 2015
The provision in question says:
1. Until such time as amendments to this Regulation enter into force on a proposal from the Commission on this subject, protection as a Community design shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance.
This remains, however, a topical issue with the Trunki appeal on its way to the Supreme Court. There, the Court of Appeal took the view that the striking colour combination which was shown in the RCD was significant, and not present in the accused products. If only they had filed in B&W. But the Court of Justice's decision in the KitKat case (a trade marks case, though a shape trade mark and therefore right on the boundary of the designs field) tells us that features of a product may only be protected by trade mark registration if they are used by the consumer, to the exclusion of other indicia, as an indication of origin, which strikes me as being on all fours with the Trunki design case. However, I am perhaps digressing a little, and the KitKat case is exciting enough to merit separate consideration.
Thursday, 3 September 2015
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Tuesday, 11 August 2015
Nearly everyone has heard the oft-repeated statistic that 50% of all marriages end in divorce. But what about creative marriages? The odds are no better. Pity the poor expert, celebrity, author, playwright or screenwriter who enters into a creative partnership without thinking about the financial, emotional and practical challenges ahead of them. If the relationship falters, a well-drafted collaboration agreement (written during the romance stage of the relationship) can be consulted. If the relationship fails, that agreement will help for a clean break-up.
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Thursday, 6 August 2015
NIPC Law: Copyright in Commissioned Works: Atelier Eighty Two Ltd v Kilnworx Climbing Centre CIC and Others
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I was delighted to see (not having appreciated it before) that the trial judge was Templeman J. A few years later, "Syd Vicious" was one of the Lords of Appeal who dealt BL a major blow in their litigation with Armstrong Patents Ltd - knocking a huge hole in copyright protection for designs, and paving the way for the New Deal in the Copyright, Designs and Patents Act 1988, the introduction of design right (now necessarily referred to as UK unregistered design right) and the near-exclusion of copyright from the designs field. But the reasons that drove the BL judgment, about spare parts, were not relevant to the Shadow case: there was no issue about the spare parts market.
The DN9 had been designed by Tony Southgate, who had been BRM's designer in their golden period between 1970 and 1972. The BRM P160, designed by him, held the distinction for 30 years of winning the fastest Grand Prix ever (Italy, 1971, driven by Peter Gethin, still the closest-ever finish) and exactly the same car (chassis no 1) also won the following year's Monaco Grand Prix, driven by Jean-Pierre Beltoise, who died last January. That remains, I think, the third-slowest grand prix since the advent of the World Championship in 1950, save for recent rain-delayed races where waiting for the rain to stop destroys the average speed. In 1972 the rain didn't delay the start, only the finish ...
When Mr Southgate designed the Arrows FA1, he reproduced the drawings he had made for the DN9 and the judge held (in what must have been a fairly easy case to decide) that the differences between the designs were insufficient to provide a defence. The defendants argued that they were innocent infringers, and should not be liable to damages, but the judge observed that to sustain this argument they had to believe that they were not infringing, and in fact they only hoped that they weren't. Actually, because of the flagrancy of the infringement, he awarded additional damages, as well as an inquiry as to damages and an injunction which effectively obliged Arrows to produce a new car. Fortunately for them, they had foreseen the outcome of the case and designed and built a complete new car in 53 days, launching it only three days after the judgment, so didn't even miss a race. I suppose that back in the bad old days of Cosworth-Hewland kitcars that was possible, but still impressive.
Several years later, the inquiry as to damages having proceeded at a very leisurely pace (partly, no doubt, because Shadow had folded in the meantime), the matter came to the Court of Appeal: but that's another story, and not one that involves intellectual property.
Saturday, 25 July 2015
Sadly, this doesn't mean that the government has seen sense. The website goes on to say:
The Government will launch a fresh consultation on revised transitional arrangements, including the date for implementing the repeal. A further announcement will be made when the new consultation is published.I'll keep an eye open for it ... Pity if we don't the promised judicial review: that would have been much more interesting.
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Sunday, 19 July 2015
First, the patentee has to alert the alleged infringer to the alleged infringement, and then it has to present a FRAND licensing proposal. If the alleged infringer carries on regardless, it will not be regarded (in the court's phrase) as having responded diligently to the proposal. It can only claim that there is an abuse of the patentee's dominant position if it has responded with a counter-proposal, offering FRAND terms (or, you might say, terms which are more FRAND, or FRANDER - there's a nice neoligism) of its own - because, of course, the only matter that can be in dispute is whether the purported FRAND terms qualify as such. Although that makes it sound far easier than it is: FRAND is not a binary, yes-or-no, matter - a wide range of terms might fall within the scope of what is fair, reasonable and non-discriminatory.
The court's approach, within its limits, nevertheless makes perfect sense: if your patent becomes the basis for a standard that everyone has to use, you have to accept that it is no longer a right to stop others from using it, merely a right to remuneration (which may be substantial). Everywhere in the IP field you can observe this shift from exclusive rights to a right to be paid for use: it happened in copyright even before the 1988 Act, when collective licensing suddenly took off with the creation of the CLA, and it was built into design right under Part III of the 1988 Act right from the start.
However, like all references to the Court of Justice, it leaves questions unanswered (usually because the questions weren't posed in the first place, which in turn is usually because they didn't arise in the case concerned so the referring national court had no reason to ask them). Can (as Laëtitia Bénard of Allen and Overy in Paris said to WIPR, that astonishingly inaccurate publication mis-spelling her surname) an injunction be blocked merely because the alleged infringer challenges the FRAND-ness (my word, not Ms Bénard's) of the offer? Will holding an SEP always place the patentee in a dominant position (a point made to WIPR by Axel Walz of King and Wood Mallesons, Munich)? How detailed does that "irrevocable undertaking" have to be (my own thought)? Given the growing frequency with which patents are already becoming standard-essential, which is likely to accelerate rapidly in the future, these are probably questions that we will see coming up before very long.
Friday, 17 July 2015
Copies made since the permitted act was created in October last year will not become automatically unlawful, though it seems that any action brought in respect of such copies may proceed on the basis that they were not authorised. There will be no expedition to Luxembourg at the this stage. The government will presumably now try to work out how to pass legislation that will hold water - it will need to define what it means by de minimis, for one thing. Policy-based evidence-making won't cut it, and a good thing too.
Meanwhile, the record industry (which is the area principally affected by all of this) will continue not to take action for infringement when users "format shift" recordings. They have taken this view, as I understand it, for several years, which makes it odd to my mind that the government should have wasted time on legislation in the first place. Keep it as a threat, by all means, so that the industry is not tempted to rescind that concession, but surely that is enough.
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Wednesday, 15 July 2015
The trial judge, Birss J, interpreted this (using the conventions that I thought I had remembered from school maths lessons) to mean between 0.95 per cent and 25.5 per cent. But the Court of Appeal knew better (or at least they picked up on the argument).
Of course, like all interpretations of patent claims, the right approach is that set out in the Protocol on Interpretation of Article 69 - which requires us to consider what the person skilled in the art would think the claim was intended to mean.
It came down to whether the right approach was a "whole number" approach or a significant figure approach. The whole number approach would say that 1 per cent means all figures greater than or equal to 0.5 per cent and less than 1.5 per cent - or to put it another way, all values that round to 1 per cent when expressed in a whole number. The significant figure approach was explained by Kitchin LJ, who started by noting that the rules formed part of the common general knowledge:
- i) non-zero digits are always significant;
ii) zeros between non-zero digits are always significant;
iii) leading zeros are never significant; if a decimal point appears in a number then trailing zeros are significant (before or after the decimal point);
iv) in the absence of a decimal point, trailing zeros are not generally significant unless stated otherwise either expressly or with a bar over the zero.
Why, oh why, didn't the person who drafted the claims (and the description, of course, as it has to support the claims) either write "up to 25 per cent" or "1.0 to 25 per cent" (especially when the teaching of the patent was that as little as 0.01 per cent would do the trick)? I'm sure they had their reasons, just as the patent agent who wrote the Catnic patents had his reasons for writing "vertical" (or was it "vertically"?). However, in neither case are the reasons known, while in both of them the effect was significant, indeed determinative, in the patentee's favour in both cases, though only just in the earlier one. Cases like these cause me to reflect on the received wisdom about patent claims, that they are technical documents written for technical people and not suited to the sort of legal scrutiny that a conveyance should get (I forget the precise quote). But in fact they are complicated legal documents (often incredibly so) written by highly-trained professional patent agents (soi disant attorneys, indeed) and to my mind that means that meticulous verbal analysis (there, I remembered the words!) is entirely appropriate. And the Protocol is wrong!
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The true successor to TVR's business opposed the application, and the Italian company demanded evidence of use. The opposition was rejected in relation to the goods for which use had been shown - which was not all the goods in the application, but it was the important ones. The Italian company appealed, and then filed for revocation. The appeal was stayed while that was sorted out. The Cancellation Division rejected the application for revocation on the grounds that genuine use had been shown, and the Italian company appealed against that, but out of time so the opposition proceedings then went ahead: the appeal was upheld, on the basis that genuine use from 28 January 2003 to 27 January 2008 had not been proved.
The case was based on the non-use of the TVR trade mark, although there appears to be no allegation that such non-use had lasted for five years: and in any case one of the trade marks involved had not even been registered for five years at the time. It received short shrift from the Court, which took a rather different view of what constitutes "genuine use" in relation to specialised, low-volume motor cars, making me wonder how the case ever got to Luxembourg in the first place.
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The soi-disant Intellectual Property Office has published the results of the consultation here.
Transitional provisions, should the need arise, will protect those who have made copies taking advantage of the permitted act. The implementing legislation, when it comes, will give them an indefinite period of time after commencement in which to sell off existing copies, but prevent the manufacture or importation of new unlicensed copies. The legislation will leave people free to deal with existing copies after commencement. Sounds to me as if the first and the third cover similar territory, and the second is what the repeal is all about so hardly needs to be said.
So there will be protection for what I recall were referred to as vested rights back when the duration of copyright was increased, in the mid-nineties. It doesn't sound as if a date is going to be set from which you won't be able to stockpile what would be infringing copies if made or imported after the repeal - does this mean that one will be able to accumulate shedsfull of ersatz Arco lamps right up to the commencement date, and remain free to dispose of them thereafter? If so, it sounds like a daft arrangement. I will have to read more ...
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Monday, 13 July 2015
Thursday, 9 July 2015
What is .sucks?
.sucks is a new domain name launched by a Cayman Islands based entity called Vox Populi Registry Ltd., which is a subsidiary of Ottawa based Momentous Inc. In 2014, Vox reportedly paid over US$ 3 million to ICANN for the rights to manage the .sucks domain.
As per John Berard, Founder-Vox Populi; the .sucks domain is a platform for legitimate critical commentary, which is definitely not being considered true by others. In fact, in a recent statement, California Republican Darrell Issa termed it as “legalized extortion”.
Why the fear?
In today’s socially connected Internet era, bashing of brands (entities or individuals) is becoming more common and trust me, just like any of us, no one likes criticism of any kind. Therefore, entities and celebrities too find it hard to take the criticism that is hurled at them (even if it is a constructive one). A common practice by most of the entities is to troll social media platforms and other web sites to keep a tab on the criticism and handle it in a best possible manner. Since it is almost impossible to keep a track of all the social media sites to handle criticism, time and again it has gone out of control and ended up damaging brands and personal images mainly due to lack of a timely response or mishandling of the same.
With the launch of the .sucks domain, the public and media (including customers and potential customers) will get a specific platform to post their experiences, concerns, opinions and sometime vent out their anger (of course). However, the scary part of this solution would be that someone, other than you (the brand owner), owning that specific platform (www.yourbrand.sucks), would leave you with virtually no control over it!
The pricing controversy
Generally, a new domain is launched through a sunrise period before it is opened to the general public. In this case, Vox fixed the sunrise period price at $2499 which was considered exorbitantly high. The sunrise period was extended by a couple of months which added more fuel to the fire which finally ended on 19th June 2015.
From 21st June 2015 onwards this domain is open for regular registrations with reduced price, however, it is still considered to be high by many, as Vox has created various categories such as “Premium” and “General” under which the “big names” are still selling at the price of $2499.
Role of ICANN (Internet Corporation for Assigned Names and Numbers) and Slip ups
As you all would know, ICANN is the only authority in the world controlling the domain names. It has launched over 400 new domain extensions such as .CEO, .consulting, .social, .menu, .tech etc. in past year or so. However, the .sucks was the only domain which got more attention and criticism across the world for various reasons. Faced with mounting criticism and controversy, ICANN made failed attempts appealing to the U.S. Federal Trade Commission (FTC) and Canada’s Office of Consumer Affairs (OCA) seeking review of the legality of the .sucks domain extension1.
ICANN seems to have made a statement to the effect that it approved the .sucks domain because no one objected to it. The statement goes on to say that ICANN lacks the authority to block the domain or control its pricing.
What are big organisations and celebrities doing?
As of now, several large and well-known organisations like Google, Amazon, Microsoft, Yahoo, eBay, WhatsApp, have registered different variants of the .sucks domain. Similarly, many celebrities such as Taylor Swift, Justin Bieber, Oprah Winfrey, Rihanna, Mark Zuckerberg, Hillary Clinton etc. have registered their own .sucks domains. However, there are still many organisations (such as Twitter, LinkedIn and Indian biggies like Infosys and Wipro) that have apparently not yet taken any action against the potential threats of .sucks domain2.
What should you do?
If you are an organisation of repute or a celebrity and worried about uncontrolled criticism, you must consider registering .sucks domain. Even if you do not wish to have a website with the .sucks domain, Vox provides an option of blocking the domain so no one else can do it. This option actually costs about 25% less!
How to go about it?
If you are lucky or if your brand/name was not considered valuable enough by others, you may check the availability of your .sucks domain at https://www.registry.sucks/ and register or block it.
The domains have been classified as standard, premium, market premium etc., some of which are:
Standard: It includes names that don’t fall under premium or market premium categories and are available on first come first served basis. Registration and annual renewal cost is currently $ 249.
Premium: Vox has created a list of names which it thinks has a high market value. These premium names such as LinkedIn, Twitter, Infosys, Wipro are priced at a much higher cost i.e. $ 2499.
Amidst the raging .sucks controversy, it is expected to gain momentum going forward and drag many entities and celebrities into it. Where a handful of organisations have been proactive in registering this domain as a defensive step, others are either not aware of it or do not consider it to be a potential threat.
Friday, 3 July 2015
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The Ukulele Orchestra of Great Britain v Clausen & Anor (t/a the United Kingdom Ukulele Orchestra)  EWHC 1772 (IPEC) (02 July 2015)
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Tuesday, 30 June 2015
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Monday, 29 June 2015
Although copyright does not protect information, combined with paywalls it can result in an extremely restrictive environment.
For her trouble, the creator of the site is getting sued, a rather predictable outcome: but perhaps it's a precursor of a change in the way information of this sort is disseminated.
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Thursday, 25 June 2015
2. Member States may provide for exceptions or limitations for the reproduction right provided for in Article 2 in the following cases:
(b) in respect of reproductions on any medium made by a natural person for private use and for ends that are neither directly nor indirectly commercial, on condition that the rightholders receive fair compensation which takes account of the application or non-application of technological measures referred to in Article 6 to the work or subject-matter concerned;
5. The exceptions and limitations provided for in paragraphs 1, 2, 3 and 4 shall only be applied in certain special cases which do not conflict with a normal exploitation of the work or other subject-matter and do not unreasonably prejudice the legitimate interests of the rightholder.
The government had concluded that little or no harm would be caused to the rightholder. The judge took the view that there was not enough evidence for them to reach this conclusion. While he rejected the applicants' other contentions, on this point he found in their favour, and back to the drawing board goes the government.
Does this make sense? It seems to be predicated on the "normal exploitation" including selling new formats instead of allowing format-shifting. Of course, once the private copying snowball starts to roll there are sure to be copies being made for friends and family, but that doesn't seem to me to be reason to reject a limited private copying permitted act (or "exception" as the Directive will call it). The fact that such copying might take place is quite outside the scope of the permitted act, and doesn't affect the case for permitting what is permitted. Format-shifting should be a neutral event, and the copyright owner should not be allowed to think that his or her legitimate interests or the normal exploitation of the work extend to format-shifting. No-one in the real world imagines that it does, and the law must acknowledge this.
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*You may also like to read the summary provided by the ICLR:  WLR(D) 268. In many ways it is preferable to the 318-paragraph, 107-page, blockbuster which is Green J's judgment.
I have written elsewhere recently about the undesirability of hero-worship. I think an old friend, with whom I have regrettably lost touch, might once have numbered Chief Judge Alex Kozinski among his heroes (but I won’t put words into his mouth). One day many years ago he left a message with my secretary in which he purported to be the judge. Not knowing the name, I was unimpressed.
I did learn the name not long afterwards. I came across his dictum in EffectsAssociates,Inc. v. Cohen 908F.2d 555 (9th Cir. 1990) in which he pithily summed up the defendant’s argument about the lack of documentation to support the existence of a copyright assignment: ‘Moviemakers do lunch, not contracts’. He also decided (if I remember correctly) Kremen v Cohen, in which a domain name was treated a property. Later I encountered him as the computer games reviewer for the Wall Street Journal, and of course the author of many impressive opinions.
I have, and need, only a passing acquaintance with US law, but Judge Kozinski looms large in what I do know. Perhaps that is at least in part because he sits in the Court of Appeals for the 9th Circuit, or the Hollywood Circuit as he apparently would have it, or the Internet circuit, or the fun circuit, according to the first chairman of the evening, Daniel Alexander QC (standing in for Sir Robin Jacob, who had another commitment and arrived only at the end of the lecture): the largest Circuit in the USA, with a population equal to that of the UK, and an area the size of India.
Kozinski is not only a judge but a prolific, gifted and careful author (and indeed a sometime blogger, though I recall his blog disappearing under mysterious circumstances). In one article, Lawsuit Schmawsuit, he (and Eugene Volokh – the chairman omitted to identify the co-author) discusses the use of the term chutzpah in litigation and the replacement of Latin with Yiddish in legal usage. (A questioner later asked how to translate chutzpah into Latin: “confidentia” seems to be the most likely candidate word.)
His Sir Hugh Laddie Memorial Lecture last night was accompanied by a comprehensive selection of images, and even musical excerpts, which illustrated one of his main themes (of which more in a moment). To begin with he showed us the Pasadena courthouse where he has his chambers and which is close to Hollywood, and the San Francisco one close to Silicon Valley, geographical facts which go a long way to explaining the reputation of the Circuit.
Remarking that IP in general is growing, and has become a bread and butter area for law firms and no longer an obscure speciality, he observed that while at one time patent attorneys had been merely geeks and wierdos they were now (and I’m paraphrasing slightly as my typing could not always keep up with his delivery, which at times was not as clear as I would have liked either) in the mainstream, although still geeks and wierdos. (Maybe if Sir Robin had been present we might have had a discussion about nerds, too.) It has always provided challenging and exciting cases for judges and they now also enjoy high visibility.
Much of the lecture jumped about in a slightly disjointed way. The judge spent a lot of the time talking about some of the most famous cases on which he say, beginning with his opinion in Facebook v Connectu (2011), which you can watch on YouTube here, the main importance of which seemed to be the thousands of cites and quotes of his opinion, including some in Romanian so he said he hoped his old schoolmates were eating their hearts out.
Presenting complicated arguments
Passing quite swiftly over the Bratz case, Mattel v MGA – the law in which he described as “dull stuff” which nevertheless received a great deal of publicity, and remarking (according to my imperfect transcibing) that “Blogs and tweets speak much more loudly than [pious] sentiments” (anyone with a better recollection please clarify – it seemed like a phrase that should be recorded for posterity, though the context has become lost), he came to the first big point in his lecture. The subject matter of these cases is often complicated, and it is difficult for the judges to grasp the facts, so:
The judge pointed to Lewis Galoob Toys, Inc. v. Nintendo of America, Inc. 964 F.2d 965 as an example of how to simplify matters for the judge (though I think the brief to which he referred must have been prepared for the trial judge, and indeed Judge Kozinski did not sit on the appeal as far as I can see). In that case, Galoob made a device called the Game Genie which could be used to change the rules of a computer game (in suit, Super Mario 3). Nintendo sued for copyright infringement. In a brief which Judge Kozinski showed the audience on the screen but which I can’t find to show you, Jerry Faulk, counsel for Galoob, told the story of Debra, an 11 year old girl, who starts her afternoon reading Charlotte’s Web but cannot resist the temptation to jump to the end to check how the story ends: then watches Casablanca on a VCR (these cases are not new), fast-forwarding through the bits that don’t interest her, then finally (her brothers being at the beach) manages a rare computer game session, in which she chooses (using the Game Genie) to start in World 3 rather than at the beginning of the game. Why, counsel asked, should this last act infringe copyright when the others didn’t? Thwarting the author’s chosen order of events should not be an infringement – and the court (and the appeals court) held that indeed it wasn’t. But the speaker’s point, of course, was concerned with the story-telling not the outcome.
Moving on to Fisher v. Dees, 794 F.2d 432 (9th Cir. 1986), which concerned the song ‘When Sunny Gets Blue’ made famous by Johnny Mathis (described by Kozinski as “on the saccharine side of sweet”) and what claimed to be a parody, ‘When Sonny Sniffs Glue’, he asked: “What good is it being a federal judge if you have to hum your own music?”. You can, it seems, despatch a law clerk to obtain recordings for you. (They can also write your opinion for you, once you have decided what the outcome ought to be.) He played extracts from both for our delectation.
The Fisher case led the speaker into the second big question of the evening: Why sue? Fisher was after someone who he thought had despoiled his creation. “He wanted us,” said the Judge, “to spank the guy”. Corporations are no better: take Mattell v MCA where the toy-maker sued for trade mark infringement in the song Barbie Girl by Aqua, a piece of music which was doomed to obscurity until Mattel gave it a boost. Judge Kozinski said there were several ways in which Mattel could have dealt with the upstart song: They could have sent round a large bottle of Dom Pérignon – thanking the group for keeping the Barbie name in the public eye. They could have bought up all copies of the sound recording for less than the cost of a lawsuit. Or they could have bought the rights to the song and ensured it was never heard again. But they sued: “The whole Megillah”, as he described it, bringing Hebrew into legal parlance and contributing to my education. (I’d noted it originally as “Magill”, for which any European IP lawyer of a certain age can surely be excused, and which rather baffled me at the time.) And at the end of the court’s opinion, after a summary of other steps the parties had taken in puruance of the dispute, the judge added famously: “The parties are advised to chill”. A few years later Mattel came out with a new commercial using a version of the song. “Why couldn’t they have done that to begin with?” Kozinski asked.
His explanation certainly resonated with me, and with many others I suspect: IP rights holders tend to be total control freaks. At every turn they fear the worst. Our speaker recommended a reading of an article entitled “Is the sky falling on the content industries?” by Mark Lemley, which I will do because he’s always an entertaining writer, although I do loathe the expression “content industry” (and indeed the use of the word “content”). Rightsholders, Kozinski pointed out, have opposed every technical advance since Gutenberg – photography, player pianos, gramophones, over-the-air tv, photocopying, and the VCR (in the Betamax case, Sony v Universal Studios – the link is to EFF’s resources page from which you can find the judgment). The studios feared that recording films off TV would lead to the death of cinema (or “theatre”, as they call it in the US). Then Hollywood discovered that VCRs were actually a goldmine for them – much bigger than the theatre market.
A similar fear lay behind another case,Vestron v HBO, involving the Oliver Stone film ‘Platoon’ (how much more apposite had it been Apocalypse Now). Vestron held the rights to home distribution but the studio decided nevertheless to distribute it through HBO. An injunction ws granted despite HBO saying it would destroy the market. Three months later the case settled, and the injunction was lifted. Variety reported that the pent-up demand created by the injunction would actually result in increased sales – the sky had not fallen. Kozinski observed that parties to litigation often make doomsday predictions and the judges have to keep them in check. A more recent example was Garcia v Google. Google argued that to uphold the plaintiff’s claim would be to destroy the internet and copyright law (though Google seem to me to do a pretty good job of the latter already, but that’s another story). Garcia argued she risked being killed. Neither has happened. (She lost because she had no copyright in her performance: Sir Robin Jacob later pointed out that English law would have provided her with better protection.)
Publicity rights and controlling thought
Moving on to talk about the right of publicity, a matter of State not federal law and particularly strongly protected in California, he explained that his dissent in White v Samsung had been designed to get into case books – his aim being “to get to law students before the professors get to them”. In Wendt and Ratzenberger v Host International two actors from the series Cheers sued a company that ran themed bars in airports and included in the get-up two animatronic figures supposed to resemble the plaintiffs. However, a copyright licence from the people who made the TV show weakened the case, Judge Kozinski failed to prevail over the other judges and the court supported actors. Some time later, during a layover at Kansas City airport, he called in at a Cheers bar. The animatronic figures were still there and looked nothing like the actors: the defendant’s lawyer should have brought them into court, he suggested (reverting to the “simplify, simplify, simplify” theme).
Mentioning Douglas v Mattel (the Beverley Hill Billies case), about which I noted very little, Judge Kozinski observed that these cases show the plaintiffs trying to control speech, and therefore indirectly and inevitably to control thinking. “The plaintiffs want people to pay money just to think about them.” A robust copyright law and free speech are difficult to reconcile, as the Gay Olympics case (SF Arts and Athletics v US Olympic Committee) of 1982 shows. It goes beyond normal trade mark law, conferring ownership of the word Olympic on the US Committee. The Court supported the US Olympic Committee, with Judge Kozinski dissenting. That this was an attempt to control thought was reinforced by the fact that use had been permitted for police Olympics, dog Olympics, and handicapped Olympics: to prohibit this new use amounted to controlling talking about gay rights. But the Supreme Court affirmed.
Nominative fair use
He turned next to what he called his single greatest contribution to IP law, New Kids on the Block v News America Publishing. The defendant had asked questions about the band and its members (which one would you most like to move in next door, and such like). Was this an infringement of the trade mark? While copyright (in the US at any rate) had exceptions for parody and fair use trade mark law did not, so there was no easy way out. But the name was not being used as a trade mark: it caused people to think about the band but was not trade mark use, a position which he found was supported by no case law. So how to get the case to come out right? His law clerk suggested calling it nominative fair use, and the judge said “Sounds good to me”. They wrote the opinion and the other two judges signed on. Twenty years later he came back to it and found a whole body of case law.
The Streisand effect and the limits of the law
Finally, he spoke of the limits of the legal system in resolving disputes. There might be a clear infringement but no way to get remedy. Bringing a lawsuit might do more harm than good – Barbie Girl was a case in point. So too is Monster v Vermonster (or more correctly I think Hansen Beverage Co v Rock Art Brewery). The husband and wife team who made the beer went to the court of public opinion: the video from which the judge showed us an extract is here (I had to restrain my inclination to applaud them when the clip finished) and they gained 17,000 Likes on Faacebook before Monster backed off. “Electronic pebbles”, as Kozinski called these weapons, “in hands of modern day Davids aimed at corporate Goliaths.”
The same could be said of the mock Kit Kat commercial which sought to force Nestlé to top buying palm oil: the company asked YouTube to take it down, and instead of the desired result it went viral. This is what is known as the Streisand effect, after the actress and singer took exception to having photos of her house shown on the Internet. Initially hard to find, her actions caused copies to pop up all over the internet. The same effect can be observed in the Plesner case, in which a Danish art student sought to draw attention to the gap between rich and poor with a tee-shirt design featuring a starving child with a Louis Vuitton bag. Not only did the infringement action fail, the bad publicity for the trade mark owner was huge – it would have been better had they embraced it and adopted the campaign (though perhaps they thought it was in part at least aimed at them, and their customers).
Part of the job of IP lawyers is to persuade clients to accept infringements. Often they are better off that way. They should move on (or chill?) and make the best of it.
Wednesday, 17 June 2015
So far there appears only to have been a preliminary hearing, The London Taxi Corporation Ltd. v. Frazer Nash Research Ltd. & Anr, High Court of Justice, Chancery Division, HC14B01502. (It turns out, now that the judgment is available - see below - that it was an application relating to survey evidence, which the judge Spearman J was not inclined to allow.) Bloomberg reports that London Taxi alleges that Metrocab "breaches its trademarks", which they would not have written had they paid attention. The verb is "infringe" not "breach" and trade mark is two words ... But London Taxi Corporation has several registered trade marks covering the shape and appearance of their product (for example this one), so potentially there is infringement. Are the trade marks vulnerable to attack on the grounds that the design is generic, I wonder? And is the Metrocab similar enough for there to be a likelihood of confusion? It certainly looks significantly different to me, but I might not be an average user of London cabs.
Update: The London Taxi Corporation Ltd (t/a the London Taxi Company) v Frazer-Nash Research Ltd & Anor  EWHC 1840 (Ch) (03 July 2015)
Friday, 12 June 2015
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Friday, 5 June 2015
"On 17 December 2012, following a complex negotiation which lasted 12 years, theEuropean Parliament adopted Regulations (EU) 1257/2012 and 1260/2012 and the text of the Agreement on a Unified Patent Court (UPC Agreement). These instruments institute the ‘European patent with unitary effect’, the first unified system for the protection of inventions within the European Union. The two Regulations will be applicable after the entry into force of the UPC Agreement, which was signed on 19 February 2013 by 24 Member States of the European Union. This book traces the evolution of the idea behind the institution of the European patent with unitary effect, including a comparative analysis of the existing parallel regional and international procedures for the protection of inventions. It presents a synthesis of the different phases of the negotiations which led to the adoption of the first unitary patent system within the European Union. In addition it examines the provisions of the two Regulations, of the UPC Agreement and of the jurisdictional system under Brussels I Regulation. Finally, it reproduces in the Appendix the texts of Regulations (EU) 1257 and 1260/2012 and of the UPC Agreement."But the subject-matter is important, whatever it might be called. A brief glance t the book, however, showed me that the author (as you might expect) takes a rather historical approach, so it might be a bit short on substance: not a practitioner's book, I suspect. And as if to demonstrate the difference between the practical and the academic, which I always tell students are more closely-related in the IP field than in other areas of law, the author extols the virtues of the Community trade mark system. I cannot refrain from responding. To my mind the CTM is an almost unmitigated disaster, a bully's charter, encouraging foreclosure and depletion to such an extent that new entrants are hard-pressed to find a mark to use and established businesses from outside the EU can find their established trade mark useless in the face of ludicrously wide registrations that can only be challenged for lack of good faith (for which read, cannot be challenged). If the Unitary patent turns out the same way, it will not be a Good Thing by any measure except that of the multinationals who will find it conducive to the arrogation of market power.
My brief perusal of the book also took in what I always check for in law books: how many pages are real book, and how many mere stuffing (legislation and the like)? At 164 pages (hardback) it's not unreasonably short, but more than half of it comprises appendices of one sort or another. It makes it very expensive, per page of text, especially nowadays when the legislation is freely available online and in any event is mostly not yet final and likely therefore to change. I may be doing it an injustice: I had only a brief look at the book, and if the UPC will be your stamping ground once you are allowed to stamp in it, this book will surely be essential reading. So too, and perhaps more practical, will be Hugh Dunlop's "European Unitary Patent and Unified Patent Court", the second edition of which was pubished last year by CIPA and which is about one-third (90 pages) text and the rest appendices, probably the same ones as in the Hart book. Now I've got it down from the high shelf where it had rested since I received it, I'll have a look at it and write a review. That's easier when you have a copy of the book ...
Friday, 29 May 2015
“Creativity is impossible without a rich public domain. Nothing today, likely nothing since we tamed fire is genuinely new: Culture, like science and technology grows by accretion, each new creator building on the works of those who came before. Overprotection stifles the very creative forces it’s supposed to nurture.”Creative people not only don't need a public domain, Mr Carlisle argues, but it actually holds them back from being truly creative. Copyright doesn't protect ideas (or, you might say, ideas are firmly in the public domain), and that is what creative people need to work with. Great stuff. Copyright might be over-powerful, but what is needed (to my mind - this is not Mr Carlisle speaking) is not the present constant process of erosion - death by a thousand permitted acts, or "exceptions" as the philistines in government prefer - but a fundamental reappraisal of some key issues, like the worthless originality test.
In an earlier posting, which I found following a link from the artist's Facebook page (in the modern world that is how these things happen), Mr Carlisle had criticised the decision of Judge Jesse Furman in Dean v. Cameron, 2014 WL 4638355, Southern District of New York, 2014, to dismiss Roger Dean's claim against the director of the motion picture Avatar. Read his explanation of where the court went wrong by considering individual Dean artworks rather than the "total concept and feel" of his oeuvre - which no-one could deny is original and distinctive, and which many commentators also feel is reflected in the Cameron film. Even Mr Cameron seems to admit that Dean's work was a major influence (but then again, who could visualise a fantasy world without paying homage to the master?).
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Wednesday, 27 May 2015
In defence of my use of the same headline as Jane, of course it was coined originally by a famous fellow West Hartlepudlian, who as well as being an author was also a founder of the SNP - reinforcing, perhaps, the argument that northern England should be allowed to choose whether to go with its close neighbours on the other side of the border rather than its more remote neighbours in London.
Tuesday, 26 May 2015
H&M's underwired bras get no support from Court of Appeal, reports Jeremy under a typically inspired headline on PatLit: the patent litigation weblog. No point in my repeating what he has already done so well ...
What was this all about? An infringer squirming uncomfortably, trying to grasp at the one straw within its reach, perhaps - it certainly looks like it. Interesting to note (though it is perfectly logical if you stop to think about it) that if the patent holder establishes that the settlement agreement precludes a validity challenge by the infringer, it loses the possibility of alleging infringement and is left with an action for breach of the settlement agreement. Also interesting to note that the court will adopt a fairly broad view of what the agreement means - as it did not specify what test should be used, any conventional test could be applied. That surely accords with what the patentee must have had in mind when the agreement was made, and the infringer should have realised that they would not be let easily off the hook by agreeing to terms that favoured them.
Monday, 25 May 2015
Ask any lawyer what “IRAC” means, and s/he will instinctively recite this law school mantra: Issue. Rule. Analysis. Conclusion. Identify the multitude of issue(s) that are present in a fact pattern; identify the applicable rules or regulations; analyze the respective facts against said rules; and voila– a legal conclusion. - See more at: http://blog.legalsolutions.thomsonreuters.com/corporate-counsel/what-law-school-didnt-teach-you-observations-from-accs-corporate-counsel-university/#sthash.R5d8MOR7.dpuf
Saturday, 23 May 2015
The European Patent Office offers "virtual classroom lessons" on Commercialisation of IP. Why, I don't know - it's a worthy enough subject, but why should a public institution be moving outside its core function to provide education in competition with many private-sector organisations, which pay the taxes that (presumably - though perhaps it is run entirely out of operating revenue) keep the EPO going? And even if you think it is legit for such an institution to be running courses, why commercialisation rather than something that the institution actually does? You'd have thought it would concentrate first on ensuring that people understood its own operations, how to draw up applications, and the substantive law of the Convention and supporting instruments. Still, it could be interesting and is certainly not expensive.
Monday, 18 May 2015
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Saturday, 16 May 2015
Thursday, 14 May 2015
Wednesday, 13 May 2015
Originally a trade mark infringement (and validity) and passing-off case, by the time it reached the Supreme Court (which has now handed down its judgment:  UKSC 31 (13 May 2015)) it was only concerned with passing off and in particular whether it is good enough for the claimant to have international goodwill. That's a very important point in the law of passing off, so this is an interesting and (sad to admit) exciting case.
However, the outcome doesn't appear to be as exciting as I would have liked. Because they didn't actually have any paying customers in the UK, the claimants have no goodwill to protect (and having goodwill is essential for a passing-off action to lie, of course - part of Lord Oliver's classic trinity from the JIF Lemon case, Reckitt & Colman Products Ltd v Borden Inc  1 WLR 491). Old cases show that sometimes a foreign trade can generate some goodwill in this country - taking bookings, for example - but making its TV programmes available online in the UK amounted to nothing more than advertising and created no protectable goodwill.
I am disappointed that the court should have taken such a narrow view of what constitutes goodwill. It is, of course, a tricky thing to define (and you should read my Dictionary of Intellectual Property Law to learn more on that score), but in the modern age (by which I mean on the Internet) surely businesses create what most people would recognise as goodwill by promoting their services in other jurisdictions. Goodwill is, certainly, local in nature, but I think it is time to move on from the old view of goodwill and to embrace the idea that a trade reputation (is it the same thing?) can exist without money changing hands. It is a small step from making the TV programmes available to online viewers in the UK and charging them even a small amount to watch, and it should not be on such small steps that these things turn. (But perhaps when I read the judgment carefully I will find the answer to that.)
It need not even make any difference to the final result. The court could have distinguished the old cases and held that there was protectable goodwill, but gone on to hold that no damage had been suffered. To my mind, that would be a more logical place for the law to have ended up in. I certainly don't say that the court was wrong in any way, and those old cases can't just be wished away, but I do think the ratio does not reflect what people who commonly use the world wide web expect, and the alternative route to the same result might have given a more satisfactory ride.
You can conveniently watch the hearing using these links, which I have copied from the Supremes' website:
|25 Mar 2015||Morning session||Afternoon session|
|26 Mar 2015||Morning session||Afternoon session|
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Tuesday, 5 May 2015
Lidl Stiftung v OHMI - Horno del Espinar (Castello) (Judgment)  EUECJ T-715/13 (05 May 2015) is a weird case in the General Court. The German supermarket applied for a figurative trade mark in which the dominant element was the word, Castello, for various comestibles in classes 29, 30 and 31. It was opposed by the owner of a Spanish trade mark, also figurative and also with the dominant element being a single word, in its case Castelló. As I have learned when trying to communicate with Spanish people, that accent makes a world of difference (shifting the stress from the "e" to the "o"): I recall struggling to tell the Hertz representative from whom I had hired a car at Jerez airport the name of the village, Gaucín, to which I would be driving it, oblivious to the fact that the stress lay on the second syllable - and I was so proud of pronouncing the soft "c" correctly. I was also anxious because the Renault Grande Espace to which they had "upgraded" me (for which read, it's the only car we've got at the moment) was not much smaller than the village.
No-one, from OHIM and the Board of Appeal to the General Court, thought that they two were not similar: only Lidl tried to argue the contrary, and they were rather obliged to give that a whirl. Thank goodness for a bit of common sense somewhere in the EU trade mark system. But still, Lidl got what they wanted and the decision was annulled. How come? Simple, really, although the story is somewhat hidden in the turgid prose of the judgment (it is always so difficult to work out what happened, and why, in an EU case). It turned out that a failure by OHIM to provide Lidl wth information about the opponent's filings meant that the applicant was unable to mount its defence properly. (I think that's a fair summary). So, a procedural irregularity on the part of the office - hard to believe, with everything being so thoroughly automated in Alicante, but there it is, nothing is perfect.
It is an interesting contest between two weak but fairly well-known (not necessarily in the Article 6bis sense) trade marks. Allowing registration of a word mark like SKY, irrespective of any distinctiveness acquired through use, contributes greatly to the twin problems of depletion and foreclosure - the processes which make it increasingly difficult to coin a new trade mark. Although the word SKY is present in the word SKYPE (and it is not actually word trade marks anyway - there is some figurative content, which didn't help the applicant) surely that added bit at the end makes a difference, and is unlikely to be lost in aural use, short of the most extreme glottal stop ever. So I am not convinced that there is a likelihood of confusion, even before considering how well-known the trade marks are: and the better-known, the less likely members of the public are to become confused. At least, that's how I think it should be.
Since posting this, I have done an interview with the BBC World Service (using, of course, Skype). Preparing for that caused me to dig a little more deeply into the case, which made me realise that the applications were filed in 2005 and the oppositions in 2006, at which time Skype (first release August 2003) would have been much less well-known than it is now. Sky, on the other hand, was already well-known by then (having been founded in 1990). That suggests to me that there would still be little chance of confusion arising from any similarity between the names, given that people knew Sky and would notice that Skype was different; but also that the market for VOIP back then was much much smaller than now (indeed, I suppose that Skype created the market) and people who might be interested in obtaining services from Skype would be switched-on types who would understand that it was nothing to do with Mr Murdoch's empire. So it doesn't alter my view of the likelihood, or lack thereof, of confusion: a well-known trade mark should receive less protection because it is less vulnerable to confusion.
Because there were three Skype trade marks, there are three reported appeals, though the judgments might involve a lot of copying and pasting. Here are links to the BAILII reports: Skype v OHMI - Sky and Sky IP International (SKYPE) (Judgment)  EUECJ T-184/13 (05 May 2015), Skype v OHMI - Sky and Sky IP International (SKYPE) (Judgment)  EUECJ T-183/13 (05 May 2015), and Skype v OHMI - Sky and Sky IP International (skype) (Judgment)  EUECJ T-423/12 (05 May 2015).