How White a Shade of Pale?

Frances Gibb reports in The Times that A Whiter Shade of Pale is now the first piece of popular music to be considered by the House of Lords (House of Lords business here) - as well as being officially the most-listened-to song of the last 75 years, according to PPL who should know. (I like the outfits.)

It's probably not my most-listened-to song, but it's not far off, and while this is a story that's only going to become interesting when their Lordships hand down a judgment (well, the arguments could be interesting, but I'm not proposing to go to hear them - although I could, I suppose) it does give me an excuse to publish photos of the protagonists that I took on one of the last occasions that they shared a stage (Cropredy, 2003).


For those of you who are interested: I can't remember the technical details, except it was on Ilford HP5 Plus, pushed rather further than was really wise. They look better at this size ...

Do you want to learn more about intellectual property?

If you're reading this, you might be interested in a course on IP ... and, by coincidence, taht's exactly what I am presenting next week, for Central Law Training. Well, not a whole course on IP, but half days on copyright, designs and trade marks: details can be found a click away from here. Lorna Brazell, of Bird & Bird, does the patents bit.

Three hours CPD for each half day, too. Can't be bad. I hope I'll see you there - or send a friend ...

Information Commissioner's new powers arriving late: meanwhile UK fails to give all the protection it should

The two stories aren't related, but it has emerged today that the Commissioner's new powers to impose financial penalties (properly not called "fines", but hard to distinguish) on people who fail to comply with the Data Protection Act 1998 won't be in place very soon, and also that the European Commission has sent a complaining letter to the UK on account of the government's failure to change the law to deal with a particular problem.

The new power to not-fine requires secondary legislation to be made under the Criminal Justice and Immigration Act 2008. This is not the obvious place to look for a piece of law doing this: it has nothing (well, very little) to do with immigration and is definitely not criminal (which is why it is not a fine but a civil penalty), but we haven't had a nuanced approach to government in this country for many years. Of course, the Act itself doesn't do the job, it merely empowers a Minister to make the regulations, which almost certainly won't get anything remotely like Parliamentary scrutiny. This is British - or rather, New Labour - democracy in action: or, in this case, inaction, as it is reported that we aren't atually getting there anyway.

The second issue concerns the use of technology called Phorm to monitor what people get up to on line, with a view to exposing them to targeted advertising. The law has not, apparently (according to this article in the Wall Street Journal), been changed to deal with this, though I'd have thought the law already did what was necessary and it was enforcement that was failing.

2d Cir CA holds Adwords are use in commerce

The Court of Appeals for the Second Circuit held the other day that Google's Adwords scheme does amount to use in commerce, and therefore can be an infringement when the keyword sold corresponds to a registered trade mark. Here is a link to The Register (which itself reproduces the Out-Law report).

Keywords, or Adwords, are conrtoversial things, and there is a German case before the Court of Justice of the EC at present.

When is a chocolate rabbit in good faith?

Having just posted about a Swiss bad faith case, here is another one with a Swiss dimension: this the first to arrive in Luxembourg, for an opinion from the Court of Justice of the EC. Advocate General Sharpston, with immaculate timing, has given her opinion in Case C-529/07, Chocoladefabriken Lindt & Sprügli AG -v- Franz Hauswirth GmbH, concerning the bad faith (or otherwise) of an application to register the shape of that traditional Easter delicacy, the chocolate rabbit. In her view, bad faith cannot be narrowly defined and that all relevant circumstances need to be assessed; and bad faith can in some circumstances include an intention to prevent others from using similar signs on similar products.

Lindt had made chocolate Easter Bunnies in Switzerland since the 1950's, and Hauswirth had made them in Austria since 1962. Lindt introduced their product to Austria in 1994, aware of the fact that there were already bunnies (including Hauswirth's) on the market there, and in 2000 it applied to register a 3-D CTM.

During the 90s, developments in the technology of wrapping machines had dictated that the shapes of different manufactures' bunnies had become more and more similar.
Lindt sued Hauswirth for infringement of its Austrian trade mark, and Hauswirth counterclaimed for invalidity on the grounds of bad faith. The Austrian Supreme Court referred the case to the Court of justice, asking for guidance on what was meant by bad faith.

AG Sharpston confirmed that bad faith is a ground for invalidity distinct from grounds based on conflicting prior rights. While it could not be precisely defined, it can be said that it involves conduct that departs from accepted principles of ethical behaviour or honest commercial and business practices: it is not confined to situations where the application is made purely to stop someone else using a mark, with no intention on the part of the applicant to use it. This was the Commission's take on the matter, and looks as if it would let Lindt off the hook (though of course it is not the court of justice's job to decide whether the registration is valid or not).

Should he test be subjective or objective? The AG thought a bit of both - there has to be some sort of dishonest intention or sinister motive, which is normally established by reference to objective factors. In the absence of direct evidence of the trade mark owner's state of mind, evidence of the common state of knowledge n the relevant sector will be taken into account.
Bad faith therefore falls to be considered on a case-by-case basis, and must take account of the historical context. If the applicant intends to stop others using signs that they have used in the past, this indicates bad faith, but the intention might be justifiable and for that, all the circumstances have to be considered.

The fact that this case involves a shape mark, and that the technology limited the choice of shapes available to competitors, introduces an important additional dimension that will be lacking in cases involving less exotic trade marks. The more limited the choice available, the less likely the trade mark is to be valid. The AG's conclusion was:

In order to determine whether ‘the applicant was acting in bad faith when he filed the application for the trade mark’ within the meaning of Article 51(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, a national court must take account of all the available evidence from which it is possible to conclude that the applicant was or was not acting knowingly in a manner incompatible with accepted standards of honest or ethical conduct. In particular:

– an intention to prevent others from using similar signs in respect of similar products may be incompatible with such standards if the applicant was, or must have been, aware that others were already legitimately using similar signs, particularly if that use was substantial and longstanding and enjoyed a degree of legal protection, and if the nature of the sign was dictated to some extent by technical or commercial constraints;

– however, such an intention would not necessarily be incompatible with those standards if the applicant himself had enjoyed similar or greater legal protection in respect of the mark applied for and had used it in such a way, to such an extent and over such a time that the use by others of their similar signs could be considered to derive unjustified benefit from the applicant’s sign, and if those others were not constrained in their ability to choose dissimilar signs.

IPRED

The Intellectual Property Rights Enforcement Directive (IPRED) obliges Internet service providers to give details of users of their services who are infringing intellectual property rights. Hot from their court success in the last suit brought against them, The Piratebay has announced that they are introducing a service called IPREDator, which avoids storage of any identifying details of the users - see the IPREDator website - so if copyright owners come sniffing around, they are going to be told there's nothing for them. Brilliant! That will be the next thing for the copyright industries to attack.

Defensive trade mark registrations in Switzerland

I don't hold myself out as an expert on Swiss law (or Swiss anything, come to that), but a Supreme Court case on the (defensive) registration of GMAIL has come to my attention courtesy of an article on Mondaq, which you'll only be able to read if you're registered (free, and worth it, although it doesn't filter out the stuff you might be intersted as well as you might wish). The article comes from Froriep Renggli and is written by Laurent von Niederhäusern.

You can catch up wth the details yourself, if you care to do so, but suffice for our purposes to say that the way that trade mark registration systems all around the world are set up is intended to make defensive registrations impossible. The big surprise here is that it was the Supreme Court that had to say the registration will ill-conceived, the lower court having let it go because there hadn't been five years non-use. A clearer case of a bad-faith registration would be hard to imagine - although I do have one at the moment ...

Creative commons

Once again, I'm noting items that I will want to look at myself again, and at the same time sharing with any readers this blog might have (more, I hope, than the two who have declared themselves!).  This article reports the arrival of creative commons licensing in Singapore, and includes a handy summary of what CC is all about.

It also contains a nice quote: “For him that stealeth or borroweth and returneth not this book from its owner, let it change into a serpent in his hand and rend him.” I'd prescribe the same justice for the students who used to tear out pages from the law reports or journals, presumably to prevent their classmates having access to them, a practice which appalled me when I discovered it (how naive I was) back in the days when I taught at a decidedly third-rate university.  (I was also appalled at colleagues who gave students long reading lists comprising articles in copies of journals they had taken out of the library, invoking staff privilege, and failed to return: when I remonstrated with one, she shrugged and remarked "life's a bitch".)

Actually, there's more to the quote than that, and the source (all this according to the result of a Google search, so it must be true) is so ancient and anonymous that no copyright (inclduding moral right) considerations arise (although the translator might have somethng to say about that):

For him that stealeth,or borroweth and returneth not,this book from its owner, let it change into a serpent in his hand and rend him.
Let him be struck with palsy, and all his members blasted.
Let him languish in pain, crying aloud for mercy, and let there be no surcease to this agony till he sing in dissolution.
Let bookworms gnaw his entrails in token of the worm that dieth not, and when at last he goeth to his last punishment, let the flames of hell consume him for ever.

Curse on book thieves, from the monastery of San Pedro, Barcelona, Spain.

Very personal data rights, and an apology to Bill Patry

That's the title of an article by David Bradley, in his sciencebase blog, commenting on an article by Yue Liu of the Norwegian Centre for Computers and Law. Yue suggests that biometric information should be treated as personal property rather than merely (my choice of word) "data acquired" (why not "acquired data"?). See Yue Liu (2009). Property rights for biometric information – a protection measure? International Journal of Private Law, 2 (3), 244-259: I haven't read it, and I'm not sure where to find it - probably not online, at least not for free.

So far, so interesting. Liu takes care, rightly in my view, to say she doesn't mean that it should be regarded as intellectual property: "I think it may make sense to regard it as a property of an individual since it is so intimately linked with our body.” I'm fascinated, because this seems to bring into play another meaning of the word "property" - and it raises, in my mind, a host of fascinating possibilities. But Bradley, who might perhaps have drunk too deeply at the well of "intellectual property", thinks otherwise, and makes the point that if someone steals the shirt off your back, you no longer have the shirt: if someone makes an "unlicensed generic version" (a concept with which I am struggling a little) of a patented invention, they have stolen the intellectual property: and he thinks that stealing biometric data is more like that than it is like stealing a shirt.

So it is, but that doesn't necessarily mean that it should be assimilated to intellectual property. Reliance on the doctrine of intellectual property theft gets us nowhere. Theft involves an intention permanently to deprive the rightful owner of their property, and that simply isn't possible with so-called intellectual property. That's why I am becoming more and more convinced that talking about intellectual property is misleading, even downright wrong. Trying to understand the rights that we lump together under this heading by analogy to, well, shirts, to take the example mentioned earlier (though using it for a different purpose), leads us badly astray: it leads us into talking about logical impossibilities like copyright theft.

But shirts are tangible property, whereas copyright, patents and the rest of them are intangible rights. Shouldn't we compare them with other choses in action, like all those wonderful financial instruments that have brought the world to the brink of disaster? I think the answer is still "no", because the assets underlying those instruments can be appropriated by a dishonest person. It's possible to "steal" a patent, registered trade mark or registered design, by forging the papers to transfer it, but isn't that a very different matter?

I'm sure I'll want to come back to this topic time and again, but for now I just need to say sorry to Bill Patry for querying his characterisation of copyright being a property right as a metaphor. I now see what you mean, and the fact that our copyright law says that copyright is a property right cannot be the end of the story.

Before prassing the "publish" button, I'll add one more point to which I will want to refer (and what good is a blog if you can't fill it with memos to oneself?). According to the Bloomsbury Dictionary, not my favourite dictionary but the one I can reach from my chair, "property" has seven meanings, of which the fourth is "a characteristic quality or distinctive feature of something" - spot on, for Yue Liu, although I have a feeling that the coincidence in terminology doesn't conclusively prove her right. The first definition is headlined "something owned" in nice bold block capitals: but it goes on to say "something of value such as land" (OK so far) "or a patent ..."

Recession good for IP?

Perhaps recruiters have a vested interest in talking it up: but AE Feldman, the US executive search firm, tells us in its blog that IP asset management teams are being expanded and becoming more sophisitcated.  "As a result," we learn, "demand for IP talent is growing".

It's predictable that in difficult times businesses will be more protective about their patents and other rights.  (It does seem to be patents that the piece mostly talks about.)  They will want to get patents, though they won't necessarily spend more on doing so - they'll be selective about the countries in which they seek protection, and they will make full use of mechanisms like the EPC (Norway's adherence to which has caused domestic patent business to decline, though how shoarly seems to be a matter of debate).  And they will be buying and selling patents more than ever: it's a good time to be a troll.

Ownership of patents is also a good defence against claims of infringement, so with enforcement also likely to boom in the recession there's another reason to build an armoury of rights.  But I can't help feeling that this is all taking place against the backdrop of a bloated "intellectual property" system in which "owners" try to minimise the inconvenience of limited monopolies, and make their rights go further than they should: another aspect, I'm sure, of the economic situation in which business finds itself.

Copyright in news?

Intriguing news in the FT that Associated Press are exercised about the use of their members' news reports online, without authorisation. All sorts of interesting points arise, including the possiblity of charging consolidator sites for their use of AP reports.

“We can no longer stand by and watch others walk off with our work under misguided legal theories. We are mad as hell, and we are not going to take it any more,” Dean Singleton, chairman of the AP and chief executive of Media News told the AP annual meeting in San Diego, the FT reported. I wonder, are those midguided legal theories the ones expounded by the Supreme Court of the United States as recently as 1918, in International News Service v. Associated Press, 248 U.S. 215?

That case was about the defendant using facts gleaned from AP's reports from Europe on the progress of the First World War rather than about the reproduction of the stories themselves, and is therefore rather different from the present situation (I think). It's authority - near-universal authority, in fact - for the proposition that there is no copyright in news. Changes in technology might marginalise the 91 year old case. But the irony of AP trashing one of the most important cases in US copyright law is delicious: of course, it was AP who won it.

Here is some more information on the case from the Citizen Media Law Project.

A Tale of Two ...

Reuters reports: "EU [sic] court upholds trade mark ruling against AB Inbev". On actualne.cz, the same story is headlined "Americans lose Budweiser trade mark in EU".

They are both referring to the Judgment of the Court of First Instance in Case T-191/07
Anheuser-Busch / OHIM.

A case on SPCs!

They don't come along very often - though it's not as if they are like London buses when they do, or at least I have seen no evidence yet that they might exhibit such behaviour.

Synthon v Merz Pharma [2009] EWHC 656 (Pat) is a judgment of Mr Justice Floyd. It raises some interesting points - commented on by other blogs. First, PatLit remarks on the use of the Patents Court's new accelerated procedure - and the fact that this means a case can go through the High Court like a dose of salts, then grind at snail's pace through the Court of Justice of the European Communities (references take a couple of years).

The point at issue in the case is the meaning of Article 2 of the SPC regulation, Council regulation 1768/92. the judge observed: "If Synthon is right as to the effect of Article 2, it would be bizarre if it did not provide a ground of invalidity of the SPC. On the other hand if Merz is correct, Article 2 is otiose." A tough choice.

Second, The SPC Blog stresses how important this reference is for the whole SPC world. The idea of an SPC is that it gives some extra protection for certain types of patents (pharmaceutical patents being the area concerned here), whch take a long time to get to market so that the effective term of patent protection is reduced. That's a perfectly sensible idea, it seems to me (and has seemed to me since patent term extension was first legislated for n the Copyright, Designs and Patents Act 1988). But how should it apply where the product didn't suffer any delay in getting to maret? That's what we now have to wait for the Court to tell us.