When I hear the name Stig, it brings back memories of Stig of the Dump, which only goes to show how old I am. Although it is a common enough Scandinavian forename, to me it is inextricably linked with dumps - not a great connotation. For whatever reason, the makers of BBC's unaccountably popular programme Top Gear chose it as the designation of the anonymous racing driver who features in the show. Now he (the real driver, that is) is writing his autobiography, and the BBC is trying to stop it from being published. The title of this post links to to the story on the BBC website.
It strikes me as a very unedifying dispute for several reasons - but presumably the legal analysis is simple enough: the contract surely contained a confidentiality clause, as secrecy lies at the heart of the whole scheme. If it doesn't, it must surely be implied, or an equitable obligation must exist. But there's another twist to it.
The Stig's identity appears to be widely suspected, because it is laid almost bare in the annual return of a company owned by a certain (far from household name) racing driver. Presumably this is one of those companies set up to hire out the individual concerned, who is under an exclusive contract to his company. In which case, presumably the BBC contracted with the company not the individual - indeed, if it were otherwise there would be no disclosure of dealings with the BBC in the company's accounts. It is hard to imagine that obligations of confidentiality would not be imposed on the company and the driver, but didn't the BBC see a public filing of the company's accounts and its directors' report coming? Now, I don't think there's anything in company law that requires the amount of detail that seems to have been disclosed, so that in itself ought to be a breach of confidence: but the BBC say that the programme and that company have lots of dealings anyway.
The BBC's report presents this not so much as a breach of confidence and of contract, but an attempt to take advantage of the reputation attaching to the Top Gear brand - a very modern analysis, I think, to emphasise the brand above other matters, and not a particularly convincing one.
All in all, a very strange affair - perhaps more will be revealed one day.
Wednesday, 25 August 2010
Tuesday, 24 August 2010
Ansel Adams as composer
When I heard that some lucky guy in California had bought a load of negatives by renowned photographer Ansel Adams, whose work I have loved for years, in a garage sale for $45, it seemed too good to be true. Now it seems as if it might be. According to AP The Ansel Adams Publishing Rights Trust is taking legal action to stop the owner of the negatives (but not the copyright) from making reproductions from them and selling them.
It's not, however, a straightforward claim of copyright infringement, because the Trust maintains that they aren't Adams's work. There appears to be evidence that they are the work of one Earl Brooks, a little-known amateur photographer (though he must have been pretty talented to produce something that could be mistaken for an Adams). Even so, the claims for trade mark infringement, false advertising, dilution, unfair competition and who knows what else are easy enough to understand, and no doubt in due course a court will find one way or the other.
What particularly intrigues me is that the Trust says even if the negatives are Adams's work, the prints cannot be sold as his:
As for prints from the garage sale negatives, the important matter here seems to be their authenticity. If they are Adams negatives, it seems to me to be legitimate to call prints made from them Adams photographs, so long as they are not held out as being the products of his own darkroom. Rhapsody in Blue remains Gershwin's composition whoever plays it, and even if they play it atrociously. And if the negatives cannot be authenticated, surely there is a form of words like "attributed to" which, though they will not keep everyone happy, will at least avoid litigation?
It's not, however, a straightforward claim of copyright infringement, because the Trust maintains that they aren't Adams's work. There appears to be evidence that they are the work of one Earl Brooks, a little-known amateur photographer (though he must have been pretty talented to produce something that could be mistaken for an Adams). Even so, the claims for trade mark infringement, false advertising, dilution, unfair competition and who knows what else are easy enough to understand, and no doubt in due course a court will find one way or the other.
What particularly intrigues me is that the Trust says even if the negatives are Adams's work, the prints cannot be sold as his:
Mr. Adams was fond of likening a negative to a composer's score and the prints to its performance — each performance differs in subtle ways," the lawsuit said. "The photographic prints and posters offered for sale by defendants ... are not an Ansel Adams 'performance.'Indeed. Whenever I have printed photographs from my own negatives they have come out differing in ways that could never be called "subtle". Mr Adams had infinitely greater darkroom skills than mine, so his subtle differences are immensely important: but whatever market there is for prints made by the great man these days is sure to be small, and the prices stratospheric. The calendars and postcards and posters that we see on sale today are presumably reproduced from prints made by the great man, but I can't conceive of them as an Ansel Adams performance. At best, they are someone else's recording of an Ansel Adams performance, and even if not a bootleg performance then one that doesn't faithfully capture every nuance of the performance itself: that's inherent in the process of recording and reproduction. Like a piece of music - Rhapsody in Blue, say: same period (approximately), same country (wrong coast) - there are different interpretations and different performances, by different conductors, different performers and different orchestras. Like an Ansel Adams performance, there are records of it played by George Gershwin - here on YouTube, with the Paul Whiteman Orchestra for which he wrote it, and here in a modern recording in which the composer is present vicariously, by piano roll. I don't think they render otiose recordings by others - but I think that reveals the limitations of Mr Adams's metaphor rather than proving it wrong. There are advantages to being able to use modern technology, whether to record a performance of Rhapsody in Blue or to make a print from an original Adams photograph - and in each case the "performer" can choose to imitate the "composer" instead of giving free rein to their own creativity.
As for prints from the garage sale negatives, the important matter here seems to be their authenticity. If they are Adams negatives, it seems to me to be legitimate to call prints made from them Adams photographs, so long as they are not held out as being the products of his own darkroom. Rhapsody in Blue remains Gershwin's composition whoever plays it, and even if they play it atrociously. And if the negatives cannot be authenticated, surely there is a form of words like "attributed to" which, though they will not keep everyone happy, will at least avoid litigation?
Friday, 20 August 2010
Off-piste - competition law treatment of land agreements
The Competition Act 1998 excluded land agreements from the Chapter I prohibition. It didn't just exempt them, as some commentators are saying, it excluded them altogether, as it originally did with vertical agreements too. Vertical agreements were later brought back into the fold, but since they enjoyed exemption it didn't actually make a huge difference. Now the land agreements exclusion is going to be discontinued (though not until next April).
The expression "land agreement" meant "an agreement between undertakings which creates, alters, transfers or terminates an interest in land, or an agreement to enter into such an agreement". The concept of an "interest in land" is deliberately wide, and neutral. It had no pre-existing meaning in English or Scots law, to start with. It is defined as including "any estate, interest, easement, servitude or right in or over land (including any interest or right created by a licence), and in Scotland also includes any interest under a lease and other heritable right in or over land including a heritable security". Restrictions on the use of commercial property, restrictions on to whom properties may be let, restrictions on to whom land may be sold, and requirements that tenants buy services from particular suppliers (for example, cleaning services or insurance) were all removed from the purview of competition law by the exclusion.
Not that they will now automatically be prohibited. Only if there is an appreciable effect on competition will the prohibition apply anyway (unless price-fixing or market-sharing is involved), and even if it does there's always the possibility of exemption. These days, exemption is, initially at least, a matter for the parties to the agreement, so landlords (and the paradigm case is probably that of the shopping centre, where for various understandable reasons it is not thought desirable to have several mobile phone suppliers next door to one another) have to assess their own restrictions and decide whether they deliver a benefit to the public. A good mix of retailers in a shopping centre would probably be just such a benefit.
In any case, property lawyers are going to have to become more familiar with competition law than they have been up to now.
The expression "land agreement" meant "an agreement between undertakings which creates, alters, transfers or terminates an interest in land, or an agreement to enter into such an agreement". The concept of an "interest in land" is deliberately wide, and neutral. It had no pre-existing meaning in English or Scots law, to start with. It is defined as including "any estate, interest, easement, servitude or right in or over land (including any interest or right created by a licence), and in Scotland also includes any interest under a lease and other heritable right in or over land including a heritable security". Restrictions on the use of commercial property, restrictions on to whom properties may be let, restrictions on to whom land may be sold, and requirements that tenants buy services from particular suppliers (for example, cleaning services or insurance) were all removed from the purview of competition law by the exclusion.
Not that they will now automatically be prohibited. Only if there is an appreciable effect on competition will the prohibition apply anyway (unless price-fixing or market-sharing is involved), and even if it does there's always the possibility of exemption. These days, exemption is, initially at least, a matter for the parties to the agreement, so landlords (and the paradigm case is probably that of the shopping centre, where for various understandable reasons it is not thought desirable to have several mobile phone suppliers next door to one another) have to assess their own restrictions and decide whether they deliver a benefit to the public. A good mix of retailers in a shopping centre would probably be just such a benefit.
In any case, property lawyers are going to have to become more familiar with competition law than they have been up to now.
Confidentiality in divorce proceedings
Confidential information takes many different forms, but it usually makes no difference whether the information concerned is a trade secret or something private. Prince Albert v Strange is still a case of fundamental importance in this area. In Tchenguiz v Imerman [2010] EWCA Civ 908 it was personal financial information. The defendants, whom the Master of the Rolls, Lord Neuberger, described (in the judgment of the Court) using the wonderful phrase as being "in a substantial way of business", shared an office with the claimant, their brother-in-law, who was divorcing their sister, each of whom he described as "independently rich". They thought they might protect her interests by extracting information from the computer system in the shared office. It was not only the premises that were shared: it was also the server, and the most important practical lesson from this case is that this isn't a great arrangement.
The Court of Appeal held that the information had been obtained in breach of confidence, and the information could not be retained and used in the divorce proceedings. As for confidentiality between husband and wife:
The Court of Appeal held that the information had been obtained in breach of confidence, and the information could not be retained and used in the divorce proceedings. As for confidentiality between husband and wife:
The notion that a husband cannot enjoy rights of confidence as against his wife in respect of information which would otherwise be confidential as against her if they were not married, seems to us to be simply unsustainable. The idea that a husband and a wife should be regarded as a single unit in law was a fiction which the law has been abandoning for a long time.The correct thing to do would have been for the wife to get an Anton Pillar order, enabling a search to be carried out, although the Court noted that such an order was almost - perhaps completely - unheard of in the Family Division.
Monday, 16 August 2010
Cups and saucers, Patent Office opinons, and costs, in Manchester
I have been reading the report of a case before the Hearing Officer called Wragg v Donnelly, involving a claim for a declaration of non-infringement and arguments about validity based on obviousness. The technology concerns a device for allowing steam to escape from a boiler and be safely conveyed to the outside world. This is technology that I can understand.
The clever thing here is that the steam does not just blast straight out from the outlet pipe, which might remove the skin of anyone unfortunate enough to be passing. Nor does it resort to the rather primitive solution of a Yorkshire Bend, or a Y-joint, directing the steam back towards the wall. A Yorkshire Bend appears to be a simple length of copper pipe with a 90 degree bend in it, and therefore not very exciting - not even something that merits a fancy name.
The invention replaced whatever was used to direct the emission back on itself with a "substantially cup-shaped" cap to catch whatever came out of the pipe. The use of a cup-shaped device to reverse the flow of fluids was known in other fields of plumbing - and I imagine, though it isn't mentioned in the decision, jet engines.
The case provides a nice example of how contributory infringement may be important. The claim (there being a single independent one) required a conduit that would be attached to the boiler's pressure relief valve and pass through a wall to the outside world, then an attachment on the end of conduit to reverse the flow safely. The alleged infringement provided a cowl (and tellingly the manufacturer was a maker or chimney cowls) to reverse the flow, but not the conduit. The cowl was saucer-shaped rather than cup-shaped, did not present a concave inner surface to the stream of fluid (it was flat, which is not uncommon in the centre of a saucer) and lacked an end open to the environment, as the fluid was allowed to escape through holes.
Is a saucer substantially cup-shaped? The inclusion of the word "substantially" probably doesn't qualify to be referred to as inspired - but it certainly makes a big difference. Perhaps the drafter of the specification is in the habit of drinking his or her tea out of the saucer ... and perhaps the Hearing Officer was, too, because applying a purposive construction to the words he declined to make a declaration of non-infringement.
He also declined to award costs greater than those provided for in the published scale. The patentee's costs were said to be in the order of £10,000, and as there had been two opinions from the Patent Office both of which had gone against him, his counsel (Jane Lambert) argued that the defendant should not have to bear the brunt of the costs. The opinions should be regarded as a form of alternative dispute resolution, which the parties are generally obliged to try, she argued: but the Hearing Officer preferred the view put by Alistair Wilson, QC, for the claimant - that if costs were awarded in this way parties would be deterred from exploring the issues in a manner simply not possible as part of the opinion process, with cross examination and all the other trappings of a hearing.
Most important of all, perhaps, is that the hearing was conducted in Manchester, the first time this has happened as far as I know. Perhaps in due course there will even be hearings in the North!
The clever thing here is that the steam does not just blast straight out from the outlet pipe, which might remove the skin of anyone unfortunate enough to be passing. Nor does it resort to the rather primitive solution of a Yorkshire Bend, or a Y-joint, directing the steam back towards the wall. A Yorkshire Bend appears to be a simple length of copper pipe with a 90 degree bend in it, and therefore not very exciting - not even something that merits a fancy name.
The invention replaced whatever was used to direct the emission back on itself with a "substantially cup-shaped" cap to catch whatever came out of the pipe. The use of a cup-shaped device to reverse the flow of fluids was known in other fields of plumbing - and I imagine, though it isn't mentioned in the decision, jet engines.
The case provides a nice example of how contributory infringement may be important. The claim (there being a single independent one) required a conduit that would be attached to the boiler's pressure relief valve and pass through a wall to the outside world, then an attachment on the end of conduit to reverse the flow safely. The alleged infringement provided a cowl (and tellingly the manufacturer was a maker or chimney cowls) to reverse the flow, but not the conduit. The cowl was saucer-shaped rather than cup-shaped, did not present a concave inner surface to the stream of fluid (it was flat, which is not uncommon in the centre of a saucer) and lacked an end open to the environment, as the fluid was allowed to escape through holes.
Is a saucer substantially cup-shaped? The inclusion of the word "substantially" probably doesn't qualify to be referred to as inspired - but it certainly makes a big difference. Perhaps the drafter of the specification is in the habit of drinking his or her tea out of the saucer ... and perhaps the Hearing Officer was, too, because applying a purposive construction to the words he declined to make a declaration of non-infringement.
He also declined to award costs greater than those provided for in the published scale. The patentee's costs were said to be in the order of £10,000, and as there had been two opinions from the Patent Office both of which had gone against him, his counsel (Jane Lambert) argued that the defendant should not have to bear the brunt of the costs. The opinions should be regarded as a form of alternative dispute resolution, which the parties are generally obliged to try, she argued: but the Hearing Officer preferred the view put by Alistair Wilson, QC, for the claimant - that if costs were awarded in this way parties would be deterred from exploring the issues in a manner simply not possible as part of the opinion process, with cross examination and all the other trappings of a hearing.
Most important of all, perhaps, is that the hearing was conducted in Manchester, the first time this has happened as far as I know. Perhaps in due course there will even be hearings in the North!
Sunday, 15 August 2010
Spending cuts impact on trade mark system
No area of government spending is to be spared from the cuts necessitated by the country's present predicament. In the intellectual property world - or worlds, I should say, to emphasise that the subject isn't a neatly defined unity - we have already seen the demise, to no discernable sorrow, of the Strategic Advisory Board for Intellectual Property. Now, paradoxically, the Patent Office has announced that it will continue to give Community trade mark owners the option to be alerted to conflicting UK trade mark applications.
The reason for public spending cuts resulting in the retention of a service that is very little used is the reduction in spending on government IT projects. To do away with the notifications (which presumably are self-financing, as there is a fee to be paid if you want to receive them) is all tied up with the replacement of the Patent Office IT system, and the future of that project will remain uncertain until after the deadline for making a decision about the future of the opt-in. It was introduced in October 2007, and opt-ins last for three years, so come October this year renewals will fall due unless it is discontinued. So, the cuts will result in the Office retaining a service that people seem to consider is superfluous.
The UK is apparently the only Member State that offers such a service, and given the importance of trade mark owners maintaining watching services these days there can't be much need of it. Ironic that it should be public spending cuts that are keeping it alive.
The reason for public spending cuts resulting in the retention of a service that is very little used is the reduction in spending on government IT projects. To do away with the notifications (which presumably are self-financing, as there is a fee to be paid if you want to receive them) is all tied up with the replacement of the Patent Office IT system, and the future of that project will remain uncertain until after the deadline for making a decision about the future of the opt-in. It was introduced in October 2007, and opt-ins last for three years, so come October this year renewals will fall due unless it is discontinued. So, the cuts will result in the Office retaining a service that people seem to consider is superfluous.
The UK is apparently the only Member State that offers such a service, and given the importance of trade mark owners maintaining watching services these days there can't be much need of it. Ironic that it should be public spending cuts that are keeping it alive.
Thursday, 12 August 2010
Intellectual Property and EU Competition Law
A while ago, I had the impertinence, when posting reviews of three books that OUP had sent me, to suggest that a copy of Jonathan Turner's book would be welcome. It duly arrived. I must therefore review it, especially bearing in mind the flattering comments Jonathan has made about my Dictionary. In the meantime, I have written another review of one of those OUP books (Amanda Michaels's Practical Approach to Trade Mark Law) for the Trademark Reporter, and that was published online yesterday - though "published" is perhaps not quite the right word, given the lengths even INTA members have to go to to get to it, and the fact that it is simply unavailable to non-members.
The launch party for Jonathan's book was a highly enjoyable affair, a few months ago now. I took the unfortunate LPC student who was assigned me as her mentor, and we practised our networking skills. We also enjoyed trying the quiz that Jonathan had devised, offering pictorial clues to well-known cases in which intellectual property and EU competition law collided. I failed to identify Pronuptia and Consten/Grundig: ridiculous. I am not spending enough time thinking about EU competition law.
I did think about it a bit recently, though, because Jones v Ricoh (reported elsewhere on this blawg) almost brings the two subjects together. The reason for saying "almost" is that it's a confidential information case, and that is arguably not in the IP world (as comments on the IPKat's report of the case have argued). Jonathan Turner includes a little about confidential information in his book, but that isn't the point. To my mind the important thing is that what we know as intellectual property isn't really property anyway, although the metaphor is convenient: but that's not the point either. The Kat observes that this is a rare instance of an English court dealing with a point of European Union competition law rather than trying to pretend it hasn't been raised.
If that happens more in the IP field (as it is sure to do), Jonathan Turner's book will be essential reading for all those practitioners likely to be exposed to the two fields of law. That they are related is no revelation, although their relationship isn't as simple as it might at first look. Intellectual property rights, despite their monopolistic character, are not inherently anticompetitive - in fact, on the contrary, they should be seen as pro-competitive.
The book adopts the slightly unusual approach of treating the subject in chapters devoted to technology; culture, media and sport; and branding. With an introductory chapter (nearly half the book), that makes only four chapters spread over 300 pages, and lengthy chapters cause footnote numbers to exceed 1000. Not that this in any way detracts from the quality of the content: it does however seem an odd way to construct a book - a point I made when reviewing Amanda Michaels's, too.
Although it's aimed squarely at practitioners (who else would be interested?), and it contains a large amount of black letter law (it would not be possible to do other than to describe the cases, the block exemption regulations, the Notices and other sources) it is not a dry exposition of legal rules. Notwithstanding the length of the chapters, it's easy to find one's way around in and contains the answers - even, in some cases, in tabular form - to all the questions that might need answering. Well, all the questions I have thought up, anyway.
In an emerging area of law like this, it's important to know that you're right up to date, which means it would be desirable to have a note of the date at which it was up to date - accepting the inevitable, that no book remains up to date for long. The Union's Court and the Commission are not known for their alacrity in moving the law forward, so the author will have been able to see developments ocming, and this handsomely-produced tome should therefore enjoy a reasonable shelf-life - at £145 one would wish that to be the case.
The launch party for Jonathan's book was a highly enjoyable affair, a few months ago now. I took the unfortunate LPC student who was assigned me as her mentor, and we practised our networking skills. We also enjoyed trying the quiz that Jonathan had devised, offering pictorial clues to well-known cases in which intellectual property and EU competition law collided. I failed to identify Pronuptia and Consten/Grundig: ridiculous. I am not spending enough time thinking about EU competition law.
I did think about it a bit recently, though, because Jones v Ricoh (reported elsewhere on this blawg) almost brings the two subjects together. The reason for saying "almost" is that it's a confidential information case, and that is arguably not in the IP world (as comments on the IPKat's report of the case have argued). Jonathan Turner includes a little about confidential information in his book, but that isn't the point. To my mind the important thing is that what we know as intellectual property isn't really property anyway, although the metaphor is convenient: but that's not the point either. The Kat observes that this is a rare instance of an English court dealing with a point of European Union competition law rather than trying to pretend it hasn't been raised.
If that happens more in the IP field (as it is sure to do), Jonathan Turner's book will be essential reading for all those practitioners likely to be exposed to the two fields of law. That they are related is no revelation, although their relationship isn't as simple as it might at first look. Intellectual property rights, despite their monopolistic character, are not inherently anticompetitive - in fact, on the contrary, they should be seen as pro-competitive.
The book adopts the slightly unusual approach of treating the subject in chapters devoted to technology; culture, media and sport; and branding. With an introductory chapter (nearly half the book), that makes only four chapters spread over 300 pages, and lengthy chapters cause footnote numbers to exceed 1000. Not that this in any way detracts from the quality of the content: it does however seem an odd way to construct a book - a point I made when reviewing Amanda Michaels's, too.
Although it's aimed squarely at practitioners (who else would be interested?), and it contains a large amount of black letter law (it would not be possible to do other than to describe the cases, the block exemption regulations, the Notices and other sources) it is not a dry exposition of legal rules. Notwithstanding the length of the chapters, it's easy to find one's way around in and contains the answers - even, in some cases, in tabular form - to all the questions that might need answering. Well, all the questions I have thought up, anyway.
In an emerging area of law like this, it's important to know that you're right up to date, which means it would be desirable to have a note of the date at which it was up to date - accepting the inevitable, that no book remains up to date for long. The Union's Court and the Commission are not known for their alacrity in moving the law forward, so the author will have been able to see developments ocming, and this handsomely-produced tome should therefore enjoy a reasonable shelf-life - at £145 one would wish that to be the case.
Wednesday, 11 August 2010
IP Dictionary on the way
This is a uniquely satisfying thing to see when checking one's email in the morning: my book has put in an appearance on the publishers' website, here - and the best part of it is a very nice endorsement from Jonathan Turner. I still have to contain myself until February, though, according to the page - and indeed am waiting for page proofs, which are promised for September.
Article on Henry vacuum cleaner case in Journal of Intellectual Property Law and Practice
My article on the Henry case, noted on this blawg a few weeks ago, is now available online here and will shortly be in print too.
Friday, 6 August 2010
A close run thing: Specsavers beat Asda
Specsavers International Healthcare Ltd v Asda Stores Ltd [2010] EWHC 2035 (Ch) involved allegations that the supermarket had infringed Specsavers' word and figurative trade marks and that they had committed a passing off. Interesting, because in the Penguin v Puffin case (aka United Biscuits v Asda) years ago there were trade mark infringement and passing off claims, and they went different ways. That case was also invoked here as an indication of the defendants' general attitude to matters of trade mark law - interesting to see their past record of "living dangerously" come up in new proceedings.
Asda advertised its in-store opticians using signs that took certain elements from the claimant's get-up, including several that featured in registered trade marks. The main thing was the two ovals - a highly stylised representation of a pair of spactacles, perhaps, though crucially in the claimant's mark they overlapped and Asda's didn't. The colour green was also chosen, in a very similar shade, though the trade mark was not registerd in colour so this could not affect the infringement case. Asda also used the slogans "be a real spec saver at Asda" and "spec savings at Asda". Their original intention had been to parody Specsavers' advertising, blatently inviting the public to compare the two, and they took legal advice to judge just how dangerously they could live.
The trade mark claim was that Asda were using a similar mark for identical services, creating a likelihood of confusion, and that they took unfair advantage of the reputation of the earlier marks. Mann J held for Specsavers, but not entirely: the first of those claims failed because colour was an important element but was not protected by the registered trade mark, and take away the colour and there were enough differences (especially the non-overlapping ovals). The ovals alone were an important element of the mark but not dominant, and the introduction of the wording within the ovals made a very significant difference. Indeed, the overall impression was different - and although "different overall impression" is the test for infringement of a design, the Court of Justice imported it into trade mark law in SA Société LTJ Diffusion v SA Sadas [2003] FSR 1. The judge thought that a reasonably circumspect consumer (the Court of Justice invoked a "reasonably well informed, reasonably observant and circumspect" consumer (Lloyd Shuhfabrik Mayer v Klijen Handel BV [2007] FSR 77 at para 27), which might have allowed the claimant to introduce considerations about the eyesight of a prospective customer - had they been sufficiently mischievous) would not be confused by the ovals if they were the only element in common.
The unfair advantage claim succeeded only in respect of teh first slogan. the words "spec saver" in it clearly called the claimant to mind and intentionally gained an advantage by drawing on their reputation. This was not the case with the second slogan. As for the logo, the "living dangerously" evidence showed that Asda had aimed at "resonance", and the logo brought Specsavers to mind but not enough to amout to unfair advantage.
There was no misrepresentation, so the passing off claim fell at the first hurdle: there was too much Asda branding associated with the material for that claim to fly. And, to add to the claimant's presumed discomfiture, one of its non-verbal logo marks was revoked on grounds of non-use.
So, a victory, though with heavy losses, and interestingly the mirror image of the Puffin v Penguin case where United Biscuits lost on infringement but won on passing off.
Asda advertised its in-store opticians using signs that took certain elements from the claimant's get-up, including several that featured in registered trade marks. The main thing was the two ovals - a highly stylised representation of a pair of spactacles, perhaps, though crucially in the claimant's mark they overlapped and Asda's didn't. The colour green was also chosen, in a very similar shade, though the trade mark was not registerd in colour so this could not affect the infringement case. Asda also used the slogans "be a real spec saver at Asda" and "spec savings at Asda". Their original intention had been to parody Specsavers' advertising, blatently inviting the public to compare the two, and they took legal advice to judge just how dangerously they could live.
The trade mark claim was that Asda were using a similar mark for identical services, creating a likelihood of confusion, and that they took unfair advantage of the reputation of the earlier marks. Mann J held for Specsavers, but not entirely: the first of those claims failed because colour was an important element but was not protected by the registered trade mark, and take away the colour and there were enough differences (especially the non-overlapping ovals). The ovals alone were an important element of the mark but not dominant, and the introduction of the wording within the ovals made a very significant difference. Indeed, the overall impression was different - and although "different overall impression" is the test for infringement of a design, the Court of Justice imported it into trade mark law in SA Société LTJ Diffusion v SA Sadas [2003] FSR 1. The judge thought that a reasonably circumspect consumer (the Court of Justice invoked a "reasonably well informed, reasonably observant and circumspect" consumer (Lloyd Shuhfabrik Mayer v Klijen Handel BV [2007] FSR 77 at para 27), which might have allowed the claimant to introduce considerations about the eyesight of a prospective customer - had they been sufficiently mischievous) would not be confused by the ovals if they were the only element in common.
The unfair advantage claim succeeded only in respect of teh first slogan. the words "spec saver" in it clearly called the claimant to mind and intentionally gained an advantage by drawing on their reputation. This was not the case with the second slogan. As for the logo, the "living dangerously" evidence showed that Asda had aimed at "resonance", and the logo brought Specsavers to mind but not enough to amout to unfair advantage.
There was no misrepresentation, so the passing off claim fell at the first hurdle: there was too much Asda branding associated with the material for that claim to fly. And, to add to the claimant's presumed discomfiture, one of its non-verbal logo marks was revoked on grounds of non-use.
So, a victory, though with heavy losses, and interestingly the mirror image of the Puffin v Penguin case where United Biscuits lost on infringement but won on passing off.
Parallel imports of motorbike spares
The IPKat reports Honda Motor Co Ltd and another v David Silver Spares Ltd [2010] EWHC 1973 (Ch), a 28 July 2010 ruling by George Leggatt QC, sitting as a deputy judge of the Chancery Division (England and Wales), only available on Lexis Nexis at present so until there's a freely available version, [there is now: http://www.bailii.org/ew/cases/EWHC/Ch/2010/1973.html] which might shed light on why such a hopeless cause got to court at all, I'll leave the detail to the Kat and summarise (and ensure I don't plagiarise) here.
It's one of many cases involving parrallel imports of motorbikes and spares. Honda sued for infringement of their CTM and UK trade marks, claiming that the defendant was trading in spares that had not been placed on the market in the EEA by Honda or with their consent. The defendant sought to strike the claim out or to have summary judgment, arguing that it was entirely speculative and lacking in particularity
The deputy judge dismissed the claim, reiterating the well-worn principle that even when the goods have been placed on the market outside the EEA by the trade mark owner the rights can be asserted to stop importation into the EEA. I thought any student of trade mark law would have been able to work that out, which is why the full report must surely reveal that there is more to the case than meets the eye.
Where consent is argued to establish that the trade mark rights are exhausted, it must relate to every individual item in respect of which exhaustion is pleaded (onerous) and must be positively expressed (the Kat notes that it may be implied, provided it is unequivocal, so again the report of the case appears to be a bit lacking). The trader alleging that there has been consent must prove it: it is not for the trade mark owner to show an absence of consent. The burden of proof is only reversed if there is a real risk of partitioning of markets.
The defendant had not shown that Honda's claim lacked any reasonable basis or had no real prospect of success. Honda did not have to show that the parts the defendant was selling were placed on the market outside the EEA: it only needed to assert on reasonable grounds that the defendant had used the trade marks in the EEA for goods for which they were registered and that Honda had not consented.
It will be interesting to see later how the gaps in this account are filled! I hope there'll be a full transcript of the judgment in time for the next podcast.
[Now that I have found the judgment on BAILII, I'll revisit this posting when I have time.]
It's one of many cases involving parrallel imports of motorbikes and spares. Honda sued for infringement of their CTM and UK trade marks, claiming that the defendant was trading in spares that had not been placed on the market in the EEA by Honda or with their consent. The defendant sought to strike the claim out or to have summary judgment, arguing that it was entirely speculative and lacking in particularity
The deputy judge dismissed the claim, reiterating the well-worn principle that even when the goods have been placed on the market outside the EEA by the trade mark owner the rights can be asserted to stop importation into the EEA. I thought any student of trade mark law would have been able to work that out, which is why the full report must surely reveal that there is more to the case than meets the eye.
Where consent is argued to establish that the trade mark rights are exhausted, it must relate to every individual item in respect of which exhaustion is pleaded (onerous) and must be positively expressed (the Kat notes that it may be implied, provided it is unequivocal, so again the report of the case appears to be a bit lacking). The trader alleging that there has been consent must prove it: it is not for the trade mark owner to show an absence of consent. The burden of proof is only reversed if there is a real risk of partitioning of markets.
The defendant had not shown that Honda's claim lacked any reasonable basis or had no real prospect of success. Honda did not have to show that the parts the defendant was selling were placed on the market outside the EEA: it only needed to assert on reasonable grounds that the defendant had used the trade marks in the EEA for goods for which they were registered and that Honda had not consented.
It will be interesting to see later how the gaps in this account are filled! I hope there'll be a full transcript of the judgment in time for the next podcast.
[Now that I have found the judgment on BAILII, I'll revisit this posting when I have time.]
Thursday, 5 August 2010
July podcast now available
Now available: the July edition of the IPso Jure IP update podcast, featuring (inter alia)
- The Court of Appeal’s judgments in the Schlumberger patent case, producing a interesting synthesis of tests for obviousness,and in the Vodkat passing off case
- Dyson losing a registered design infringement case against Vax
- The Court of Justice giving further guidance on Adwords, this time where secondhand goods are involved
- The General Court finding that a patent holder abused its dominant position
- The High Court setting limits to a threats action
- A confidentiality clause and a restrictive covenant breaching and enjoying exemption from (respectively) competition rules.
Tuesday, 3 August 2010
Confidentiality clause anticompetitive
It seems like a slightly odd collision of legal principles, and surely one that should never have been allowed by the parties to happen - Jones v Ricoh UK Ltd [2010] EWHC 1743 (Ch) (14 July 2010) concerns the use of a clause protecting confidential information to try to prevent the other party to the agreement from tendering for business. It goes to show that care has to be taken when drafting confidentiality agreements, just like with restrictive covenants (as in my earlier posting on the Pirtek case), because it can only go as far as necessary to protect the confidential information. In the Pirtek case the Competition Act 1998 was invoked against the no-competition clause: in the Ricoh case Article 101 of the Treaty on the Functioning of the European Union applied - the same principle, but an effect on trade between Member States was present because Mr Jones sought to apply the clause to business dealings in Germany and Sweden, and in a later transaction throughout the EU.
The clause, in a letter agreement initially drafted by Mr Jones's company's then solicitors, read:
So, as long as any confidential information remained in Ricoh's possession, it would be in breach of contract if any of its group companies made or accepted any approach to or from or any contact with any client of Mr Jones's company, CMP, any government body or regulatory or other authority or any other person to Ricoh’s knowledge “has any actual prospective connection” with CMP. Ricoh tendered for work that Mr Jones's company (in liquidation by the time of the action, the cause of action having been assigned to him) had formerly had, prior to the takeover of the client concerned. He contended that this was in breach of the obligations contained in that confidentiality clause, and indeed on the face of it that seems incontestable. But Ricoh argued that it was caught by the prohibition in Article 101, because of its unlimited geographical and temporal scope and the fact that it applied to dealings by any Ricoh group company - of which there were 150.
Because the clause effectively prevented any of those 150 companies competing with CMP as long as the defendant (or another Relevant Person, widely defined) held Confidential Information (very widely defined) it went beyond what was needed to protect confidences: its object was to restrict competition. It also meant that Ricoh - one of the largest companies in the field - would be precluded from doing business with many customers, thus insulating other companies in the field from competition.
Such restrictions can sometimes work (though it is odd to find them in confidentiality agreements): if they are found in vertical agreements, they could benefit from a block exemption. However, the Court found that the parties were not vertically disposed in relation to one another (they were not manufacturer and distributor) but operated at the same level in the distribution chain, and the block exemption did not save the arrangement. Nor was there any mileage in arguing that Article 101 was not prohibited insofar as it applied to extra-EU deals: the claim related to invitations to tender that included EU countries - although in a case in which there was no inter-Member State trade Article 101 might well not apply.
The clause, in a letter agreement initially drafted by Mr Jones's company's then solicitors, read:
“no approach or contact direct or indirect in connection with or during our discussions or whilst any Confidential Information remains in the possession or under the control of any Relevant Person [and connected company] shall be initiated, accepted or made by or on behalf of any Relevant Person to or with any employee, client or supplier of yours or any government body or regulatory or other authority or to or with any other person who to our knowledge has any actual prospective connection with you without your prior written consent.”The letter in which this clause appeared also contained two important definitions - important, because of their breadth:
For the purpose of this letter “Confidential Information” means documents and information of whatever nature and in whatever form relating to [CMP] or its businesses, business practices, finances, affairs, dealings, clients, suppliers, agents or employees disclosed or otherwise received by any Relevant Person whether before or after the date of this letter directly or indirectly by or from [CMP] or any of its employees, agents or professional advisers but excluding information which at the time of being disclosed or received is within the public domain or which comes into the public domain otherwise than as a result of a breach of the undertakings or other obligations set out or referred to in this letter.
“Relevant Person” means and includes each of us and any company which is or which is associated with:
(i) Ricoh (U.K.) Limited and in each case any of their employees, agents or professional advisors.
…
So, as long as any confidential information remained in Ricoh's possession, it would be in breach of contract if any of its group companies made or accepted any approach to or from or any contact with any client of Mr Jones's company, CMP, any government body or regulatory or other authority or any other person to Ricoh’s knowledge “has any actual prospective connection” with CMP. Ricoh tendered for work that Mr Jones's company (in liquidation by the time of the action, the cause of action having been assigned to him) had formerly had, prior to the takeover of the client concerned. He contended that this was in breach of the obligations contained in that confidentiality clause, and indeed on the face of it that seems incontestable. But Ricoh argued that it was caught by the prohibition in Article 101, because of its unlimited geographical and temporal scope and the fact that it applied to dealings by any Ricoh group company - of which there were 150.
Because the clause effectively prevented any of those 150 companies competing with CMP as long as the defendant (or another Relevant Person, widely defined) held Confidential Information (very widely defined) it went beyond what was needed to protect confidences: its object was to restrict competition. It also meant that Ricoh - one of the largest companies in the field - would be precluded from doing business with many customers, thus insulating other companies in the field from competition.
Such restrictions can sometimes work (though it is odd to find them in confidentiality agreements): if they are found in vertical agreements, they could benefit from a block exemption. However, the Court found that the parties were not vertically disposed in relation to one another (they were not manufacturer and distributor) but operated at the same level in the distribution chain, and the block exemption did not save the arrangement. Nor was there any mileage in arguing that Article 101 was not prohibited insofar as it applied to extra-EU deals: the claim related to invitations to tender that included EU countries - although in a case in which there was no inter-Member State trade Article 101 might well not apply.
Monday, 2 August 2010
Vax Mach Zen vacuum cleaner does not infringe Dyson registered design
Last week, the High Court decided that Vax had not infringed Dyson's registered design for a bagless cylinder vacuum cleaner when it made its Mach Zen model. Following the ruling, Simon Lawson, MD of Vax, made this statement to the press:
"We are really pleased with today's decision as it confirms what we've known all along – that the Vax Mach Zen is different to any other vacuum cleaner people can buy.
"Mach Zen is 70% quieter than other vacuum cleaners and more powerful than anything else of its kind. It leaves your home spotlessly clean and that’s why people love it so much.
"This outcome means that the achievements of our young, talented British design team have been recognised." [Footnotes omitted.]
Mr Lawson does seem to be stressing features of the Vax machine that are not a matter for design protection at all. And I don't like the use of "different to" - a solecism, according to HW and FG Fowler, although even in 1931 they thought that "different from" would give way to "different to" quite soon. The press section of Dyson's website is silent - no updates of any description since June: they are reported to be appealing. The Telegraph (which has a photo of the two machines side-by-side - take a look on their page) call it "this most ridiculous of High Court decisions": clearly their man Damian Reece knows better than the judge (whose identity I haven't yet learnt - even the Patents Court list is out of date). Forresters, Vax's patent attorneys, have published what seems to be the most detailed report here - having won, they would, wouldn't they?
Dyson described the outcome, with notable understatement, as "a bit of a travesty". The company said 'For Dyson, this case was about pure aesthetic design, not function. What is the point of UK Registered Design law if not to protect novel and striking designs such as the DC02 design?' It wasn't about pure aesthetic design rather than function just for Dyson, I hope: that's what the judge needed to think about too.
As for infringement, the question is, does the Vax design make a different overall impression from that made by the registered design? The court thought that the Vax machine was “rugged, angular and industrial” compared with the “smooth, curving and elegant” cleaner shown in the Dyson registration, and if the registered design is anything like the photo (I can't work out which of the many registered designs is the appropriate one, and all seem to differ from the photo) that does seem reasonable. There are important "design freedom" issues here too - any cylinder machine has to be provided with certain features, like wheels and a connection for a hose. I imagine that the cyclone technology (much of which must now be out-of-patent) dictates much of the configuration of the machine, too.
So I think I beg to differ from the Telegraph's assessment of the case ... As for Dyson, they say: “There are plenty of other shapes that TTI could have chosen…Large round wheels, the angle of the clear bin, the line of the handle; does TTI’s Vax-badged machine resemble Dyson’s design?”
A spokesperson for Dyson added: “We’re disappointed, but we want to throw it out to people to see what they think.” So there's an online poll, or perhaps several - which Dyson, who no doubt command vastly more brand loyalty than Vax, appear to be winning hands-down.
"We are really pleased with today's decision as it confirms what we've known all along – that the Vax Mach Zen is different to any other vacuum cleaner people can buy.
"Mach Zen is 70% quieter than other vacuum cleaners and more powerful than anything else of its kind. It leaves your home spotlessly clean and that’s why people love it so much.
"This outcome means that the achievements of our young, talented British design team have been recognised." [Footnotes omitted.]
Mr Lawson does seem to be stressing features of the Vax machine that are not a matter for design protection at all. And I don't like the use of "different to" - a solecism, according to HW and FG Fowler, although even in 1931 they thought that "different from" would give way to "different to" quite soon. The press section of Dyson's website is silent - no updates of any description since June: they are reported to be appealing. The Telegraph (which has a photo of the two machines side-by-side - take a look on their page) call it "this most ridiculous of High Court decisions": clearly their man Damian Reece knows better than the judge (whose identity I haven't yet learnt - even the Patents Court list is out of date). Forresters, Vax's patent attorneys, have published what seems to be the most detailed report here - having won, they would, wouldn't they?
As for infringement, the question is, does the Vax design make a different overall impression from that made by the registered design? The court thought that the Vax machine was “rugged, angular and industrial” compared with the “smooth, curving and elegant” cleaner shown in the Dyson registration, and if the registered design is anything like the photo (I can't work out which of the many registered designs is the appropriate one, and all seem to differ from the photo) that does seem reasonable. There are important "design freedom" issues here too - any cylinder machine has to be provided with certain features, like wheels and a connection for a hose. I imagine that the cyclone technology (much of which must now be out-of-patent) dictates much of the configuration of the machine, too.
So I think I beg to differ from the Telegraph's assessment of the case ... As for Dyson, they say: “There are plenty of other shapes that TTI could have chosen…Large round wheels, the angle of the clear bin, the line of the handle; does TTI’s Vax-badged machine resemble Dyson’s design?”
A spokesperson for Dyson added: “We’re disappointed, but we want to throw it out to people to see what they think.” So there's an online poll, or perhaps several - which Dyson, who no doubt command vastly more brand loyalty than Vax, appear to be winning hands-down.
In the courts - July 2010
With the next monthly podcast in mind, here's a brief summary list of judgments in July. To this will be added several General Court decisions on appeals from OHIM, no doubt.
Court of Appeal:
General Court:
Court of Appeal:
- Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819 - skilled person
- Diageo North America Inc & Anor v Intercontinental Brands (ICB) Ltd & Ors [2010] EWCA Civ 920 (30 July 2010) - registrability of Vodkat trade mark
- Dyson v Vax (29 July)
- Alan Nuttall Ltd v Fri-Jado UK Ltd & Anor [2010] EWHC 1966 (Pat) (30 July 2010) - payment on account of damages
- Leo Pharma A/S & Anor v Sandoz Ltd [2010] EWHC 1911 (Pat) (27 July 2010) - limitations of slip rule
- Yeda Research and Development Company Ltd v Comptroller General of Patents [2010] EWHC 1733 (Pat) (12 July 2010) - SPCs
- Fosroc International Ltd v WR Grace & Co - Conn [2010] EWHC 1702 (Pat) (12 July 2010) - added matter and intermdiate generalisations
- Abbott Laboratories Ltd v Medinol Ltd [2010] EWHC 1731 (Pat) (01 July 2010) - application for specific disclosure in patent revocation action
- Experience Hendrix Llc & Anor v Times Newspapers Ltd [2010] EWHC 1986 (Ch) (30 July 2010)
- SAS Institute Inc v World Programming Ltd [2010] EWHC 1829 (Ch) - software copyright - reference to CJEU
- Best Buy Co Inc and another v Worldwide Sales Corporation Espana SL [2010] EWHC 1666 (Ch) - groundless threats of TM infringement action
- Case C-428/08, Monsanto Technology LLC v Cefetra BV and Others - effect of biotech patent
- Case C 558/08 Portakabin Ltd and Portakabin BV v Primakabin BV - Adwords - when use legitimate
- Case C 214/09 P, Anheuser-Busch Inc. v Office for Harmonisation in the Internal Market, Budějovický Budvar, národní podnik - registration of Budweiser trade mark
General Court:
- Case T-321/05 AstraZeneca v Commission - abuse of dominant position
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