Patent wars heating up

Nowhere is intellectual property taking on the characteristics of an end in itself rather than a means to an end than in the mobile phone world. Enforcing patents must be taking as much time and effort as making the phones in the first place. Last week The Guardian reported another development, with IPCom (frequently cast as perhaps the biggest villain of the piece) taking action against retailers selling HTC smartphones in Germany. The report is impressively coherent for a newspaper: the author (Charles Arthur, the paper's technology editor) clearly knows more than a little about patent law. Most journalists would have made this into a story about copyright and trade marks too.

HTC said it knew nothing about any complaints against retailers and that the patent it is alleged to be infringing is in fact invalid. One good reason for having infringement and validity dealt with in the same court? Not in this case, it seems (though the principal remains) because the challenge to the patent takes the form of an opposition in the EPO, the outcome of which is expected on 24 April 2012. By which time an awful lot of HTC handsets will have been sold, or not.

Tougher data protection laws on the way

The European Commission has long been concerned about how Internet businesses treat personal data. Its proposals for a new data protection regulation (to replace the present directive and overcome the problems that arise from the need to transpose the rules into national law) are due to be published on 25 January. The Commission aims to give consumers the power to control the way their personal data are processed by companies, and to impose a bit more discipline on data controllers by introducing fines of 5% of global turnover for businesses who are found to be in breach of data protection laws.

The draft also proposes to introduce obligatory data protection officers for all public sector bodies and private sector bodies with more than 250 employees. The directive made that something that Member States could choose to have: Germany already had it when the directive came into force, hence its inclusion, but the UK government always said it would not be taking up the option. Now it seems it will have no choice - but what organisation of that size doesn't already have a data protection officer, even if they have a load of other responsibilities too?

Fair dealing as a user's right

In this fascinating post on his blog, Ariel Katz of the University of Toronto explains a number of facts about the fair dealing "exception" which have been lost to sight in the century since the Copyright Act 1911 received Royal Assent - on 16 December, a milestone that I was too preoccupied with other stuff to notice. I'll have to be more alert for the centenary of the 1956 Act.

I have been musing on intellectual property rights and corresponding obligations since at least yesterday, after something the IPKat said, and Ariel Katz's piece fits very neatly with that. Fair dealing as a user's right, not a mere exception to the owner's rights. This is how US and UK copyright laws came to diverge, then: this is the difference, exiguous as it might be, between fair dealing and fair use.

And what an excellent title for the piece.

Limiting Blackberrying to working hours

I was struck by this item from Automotive News: VW is going to ensure that having a BlackBerry does not intrude into its executives' private lives - by craftily ensuring that they shut off email at the end of the working day and start it up at the beginning of the next one. Isn't technology fantastic? Oh, to be able to survive without email being pushed at you all the time. My BB shuts off at 11 pm and starts up again at 6 am: I set it to do that, and I guess a VW executive could do the same - however, setting mine to shut down completely does mean that the phone doesn't ring either - not a bad thing in the middle of the night ...

Nervousness about access to licences stymied SAAB deal

Anyone with an interest in the automotive industry will have been watching with horrified fascination as SAAB moved inexorably towards bankruptcy. It had that sense of seeing a massive accident unfold in slow-motion. Various saviours were lined up, including latterly several Chinese companies: and it seems that SAAB's parent, of which a colleague once memorably remarked that he'd worked in the motor industry since General Motors was a corporal, was reluctant to let any of them have it because they would acquire licences to use GM technology. Here is the story on the Motor Trade Insider website, though it acknowledges that it came first from the BBC. Other media will no doubt have the same story.

A novel(ish) reason for a deal to fall through, and one that makes it even more regrettable that an innovative and long-established carmaker with an attractive line of products (I still have very fond memories of attending a SAAB day at Silverstone years ago, with Erik Carlsson and Barrie Williams as my chauffeurs in then-new 9000s) should have ended up as part of the GM behemoth in the first place. It has now ended in tears. It probably would have done anyway - but on the other hand an MG-style rescue might have been possible.

Penalties for breach of Data Protection Act

The Information Commissioner's Office has had the power to impose financial penalties (not fines) since April last year. Already there have been several examples of this new power being used. Now comes news of the biggest so far: on a local authority, for £130,000, for sending sensitive information about a child protection case to the wrong recipient. Unfortunately, data breaches don't come much worse than that (though there are plenty of examples that are about as bad, but different). The same authority had already had a formal warning from the ICO after to a similar breach. The ICO has also ordered that the authority's staff should be trained in the proper implementation of the authority’s data protection policy.

Do anything you want to do

The Internet is a highly democratic medium. Anyone can publish whatever they like, subject to the laws of libel, trade mark and copyright infringement, and trade descriptions (no longer under that evocative name), and other laws, none of which anyone can afford to enforce. Nor is there any quality control. Which is why you encounter rubbish like this:

For a trade mark to be successfully registered it must be a unique word or stylised word which is used to represent specific categories of goods or services.

The firm of solicitors who uttered that piece of nonsense should stick to doing whatever they do best, and not try to take trade mark work away from people who actually understand it. I am constantly appalled at the inaccurate material put out by lawyers trying to market themselves. In a rational world, prospective clients would reject that firm and seek out a lawyer with a more harmonious relationship with the English language, but that might assume critical faculties which our education system has not bothered to cultivate in its charges for many years.

It reminds me of an occasion, ten or twelve years ago now, when I took an unexpected call from my firm's professional indemnity insurers. They had received a claim from a high street firm which had applied to register a trade mark for a client: no search had been carried out, and when the application hit the rocks the client claimed against the solicitors. The insurers didn't know whether there was a hint of negligence in this, so enterprisingly they phoned someone they insured who might know. I was rather flattered. It all depended, I suggested, on the terms of the retainer: had they advised the client about searching? Certainly just because no search was carried out the solicitors could not automatically be said to be negligent - but it was a lesson to me in the importance of sticking to what you know. Given that I am doing an inordinate amount of employment law at present, it might be a lesson I ought to revisit, but it seems there's a firm of solicitors somewhere that needs to learn it too.

What does that sentence say? What's wrong with it? First, a trade mark cannot be unsuccessfully registered. Second, there are many signs that can be registered - successfully registered, indeed - other than words, stylised or otherwise, and certainly not necessarily unique. Are some little bits of patent law creeping in here? And third, even though a trade mark might be coming (as Mr Justice Floyd said in introducing a lecture I attended a few weeks ago) to resemble one of those multifunction tools one sees advertised in the Sunday supplements, I have never seen it suggested that a trade mark might be used to "represent specific categories of goods or services". Used to distinguish the sources of specific goods or services, yes, but if that is what the writer meant that is what the writer should have written. After all, using words to convey precisely one's meaning is the essential skill of the lawyer - isn't it? That, and knowing a bit of law.

Mitchell v British Broadcasting Corporation (BBC) [2011] EWPCC 42

Mitchell v British Broadcasting Corporation [2011] EWPCC 42 (21 December 2011) shows a couple of things that we knew already, though until someone like HHJ Birss QC tells us that they apply to the facts of a particular case there is enough uncertainty to justify playing the forensic lottery. Independent creation is always a defence to a copyright infringement action, and subconscious copying is extremely difficult to prove. In fact, I'd say impossible, except with the assistance of presumptions, which didn't help here. Mr Mitchell thought that the BBC had ripped off an idea he had for an animated TV series for children, and, more importantly because copyright could protect them, a group of characters he devised for it. 147 paragraphs later the judge held that they hadn't.

Word and/or phrase

Talking the other day to a former colleague and professional pedant (in the best sense of the word: indeed, there should be no bad sense of it) I bemoaned the use of the expression "and/or". Of course, he had a relevant quote, but he rattled it off so quickly that I missed it. I spent a few minutes in the Law Society Library subsequently trying to find what he had been talking about, and came up with some great material - but not what I was after ...

"... that befuddling, nameless thing, that Janus-faced verbal monstrosity, neither word nor phrase, the child of a brain of someone too lazy or too dull to express his precise meaning, or too dull to know what he did mean, now commonly used by lawyers in drafting legal documents, through carelessness or ignorance or as a cunning device to conceal rather than express meaning ..." Employers Mut. Liab. In.s Co. v Tollefsen, 263 N.W. 376, 377 (Wis. 1935), per Fowler J.

And (or or, or both):

"To our way of thinking the abominable invention and/or is as devoid of meaning as it is incapable of classification by the rules of grammar and syntax." American Gen. Ins. Co. v Webster, 118 SW 2d 1082, 1084 (Tex. Civ. App. Beaumont, 1936) per Combs J.

Excellent stuff. The American courts always get there first, and usually say it very well. There are instances over there of statutes being struck down for uncertainty because of their use of the monstrosity. All I found from the English courts - all that merited repeating, anyway - was Lord Reid in John G Stein & Co v O'Hanlon [1965] AC 890, saying that the expression was "not yet part of the English language". In fact, it could be argued - couldn't it? - that he was wrong, by the mere act of uttering it himself. But 21 years earlier Viscount Simon had formulated the most powerful denunciation of the usage - too strong, perhaps, for judicial repetition:

"... the bastard conjunction ... which has, I fear, become the commercial court's contribution to basic English."

Bonito v Fuerst Bros [1944] AC 75, which Robert directed me to after I asked him to repeat it. It's good to know that even with a world war in progress the then Lord Chancellor could find time to try to keep the language on the straight and narrow. A pity that his judgment isn't required reading in law schools.

Oh, and you'll find the sources explored at some, entertaining, length in Miscellany-At-Law by the great Sir Robert Megarry. A book that should be on the shelves of every lawyer - why have I never had a copy?

For anyone looking for a steer: the abomination can usually be replaced just with "or", and if necessary the formulation "A or B, or both" (or, I suppose, "any one or more of A, B and C") can be deployed without damaging the language, or offending a pedantic reader. And it will be clearer what is meant.

Court closes Norwich Pharmacal loophole

A Norwich Pharmacal application can be made to the court against innocent third parties to obtain information to enable proceedings to be brought against a wrongdoer. The original case, Norwich Pharmacal Company & Ors v Customs And Excise [1973] UKHL 6,  [1973] 3 WLR 164, [1973] FSR 365, [1973] 2 All ER 943, [1974] RPC 101, [1973] UKHL 6, [1974] AC 133 (26 June 1973) was about patent infringement. The principles laid down there were refined in the later case of Bankers Trust v Shapira [1980] 1 WLR 1275. The power of the court to make such orders was preserved in CPR 31.18.

The applicant for a Bankers Trust/Norwich Pharmacal order must provide a collateral undertaking that they will only use the documents disclosed in the case for the purposes of that litigation. This is covered by CPR 31.22.

Until now there has been no reported case on the interaction between the collateral undertaking and the use in subsequent proceedings of documents which were obtained from a third party following a Norwich Pharmacal application. The leading textbooks disagree on whether the collateral undertaking applied in Norwich Pharmacal cases.

Now, in Shlaimoun & Infina Fund v Mining Technologies (Queen's Bench Division, 13 December 2011, not yet on BAILII) Mr Justice Coulson has found that the collateral undertaking does apply but, when it makes a Norwich Pharmacal order, the court is implicitly giving permission to the applicant to make use of the documents in subsequent proceedings.

CJ Jones Solicitors LLP acted for Mining Technologies and instructed Charles Douthwaite of 4 New Square. Thanks to Chris Jones for a copy of the judgment and this note.

What to do with a redundant definition in your document?

Although it's a case involving banking documents, Rayford Homes Ltd v Bank of Scotland Plc and Anor [2011] EWHC 1948 (Ch) (23 July 2011) raises points of more general application. It concerned a strange situation: there was an unused definition (of the expression "BoS Priority") in a document that had been based on the bank's standard form, and it should have had a number inserted to give it any meaning anyway. What was the court to make of it?

The correct thing to do is to adopt the "Chartbrook approach", after Chartbrook Ltd v Persimmon Homes Ltd [2009] AC 1101: "there is not, so to speak, a limit to the amount of red ink or verbal rearrangement or correction which the court is allowed. All that is required is that it should be clear that something has gone wrong with the language and that it should be clear what a reasonable person would have understood the parties to have meant" (per Lord Hoffmann). The purpose of the definition, even without a connection to an operative provision in the agreement, was clear enough, and the later insertion (by the bank) of a figure in the space provided. It looked as if it limited the bank's priority to the amount stated, although the bank argued that it didn't because the definition wasn't actually used in a provision of the loan agreement. Not a very attractive argument when it was the bank that had, first of all, deleted the provision which the definition should have been connected to, and second, inserted a figure that placed a limit on its own priority. And adopting a Chartbrook approach the court took the view that the bank was indeed bound by what it had written into the definition. The fact that all that was needed to give the definition effect was to add a few words to an operative provision was not determinative, but it seems to me that it indicates that little ink would be needed to make the agreement work as it looked as if it should work.

Hodgson v Isaac: how to show copyright infringement

In Hodgson & Anor v Isaac & Anor [2010] EWPCC 37 (5 December 2011) HHJ Birss QC had to compare the claimant's book against the defendants' film script. If the book had been fictional, the matter would have been quite easy to decide: there would either have been copying, or there wouldn't, and we could then go on to consider exciting issues of whether taking facts only amounted to an infringement. But here the book was Mr Hodgson's biography, which Mr Isaac had not read: however, he had heard that history from Mr Hodgson's own mouth.

Interestingly, Mr Isaac offered to submit to arbitration by the Writers' Guild to determine the question of copyright infringement. An appropriate order was made by the court initially seised of the matter (Newcastle County Court) but the Guild said it was not equipped to carry out the task. (I wonder what the Society of Authors would say? I doubt they are any better equipped to carry it out - the expertise is there, as it probably is at the Guild, but not the time.)

So the judge compared them, and came to the conclusion that the screenplay reproduced a substantial part of the book. He considered plot, characters and incidents. Mr Isaac had had a copy of the book but claimed not to have read it. The judge took the view that there had been copying, and then that the defendant had taken a substantial part - a part in which the elements reproduced are the expression of the intellectual creation of their author, in line with the Court of Justice's judgment in Case C‑5/08, Infopaq.

Copying functions of computer program is not copyright infringement

That's supposed to be how the law always worked, and Pumphrey J said as much in his judgment in Navitaire v easyJet [2004] EWHC 1725 (Ch) (30 July 2004).  Advocate General Bot has now largely endorsed this approach in his opinion in Case C-406/10, SAS Institute v World Programming, a reference from the High Court (Arnold J, who posed eight very detailed questions) which has provided an invaluable and rather overdue opportunity for an explanation of how the earliest European Community effort in the field of copyright, the software directive, works."The functionalities of a computer program and the programming language are not eligible, as such, for copyright protection," he said. But the functionality of the program might be a substantial part of the copyright work, and it's a matter for the High Court to decide whether that's the case.

The program in suit emulates the software environment created by SAS, allowing programs written to operate in that environment to operate without it, using a much cheaper alternative. The software directive distinguishes copyright purposes between "ideas and principles which underlie any element of a computer program, including those which underlie its interfaces" and the expression of those ideas. Given the nature of the software in this case it would be hard to imagine a case which involved more "idea".

Advocate General Bot said that the possible workings of a computer program and the language used to create it is not in itself copyrightable because they constitute ideas without "concrete expression". Ideas on their own are not copyrightable.

The AG defined the functionality of a computer program as "the set of possibilities offered by a computer system, the actions specific to that program," going on:

In other words, the functionality of a computer program is the service which the user expects from it. In my view, the functionalities of a computer program cannot, as such, form the object of copyright protection under Article 1(1) of Directive 91/250. 

... Where a programmer decides to develop a computer program for airline ticket reservations, that software will contain a multitude of functionalities needed to make a booking. The computer program will have to be able, in turn, to find the flight requested by the user, check availability, book the seat, register the user’s details, take online payment details and, finally, edit the user’s electronic ticket. All of those functionalities, those actions, are dictated by a specific and limited purpose. In this, therefore, they are similar to an idea. It is therefore legitimate for computer programs to exist which offer the same functionalities.

There are, however, many means of achieving the concrete expression of those functionalities and it is those means which will be eligible for copyright protection. ... [C]reativity, skill and inventiveness manifest themselves in the way in which the program is drawn up, in its writing. The programmer uses formulae, algorithms which, as such, are excluded from copyright protection because they are the equivalent of the words by which the poet or the novelist creates his work of literature. However, the way in which all of these elements are arranged, like the style in which the computer program is written, will be likely to reflect the author’s own intellectual creation and therefore be eligible for protection.

Remarking that this was consistent with  the express purpose of the Directive, he went on:

To accept that a functionality of a computer program can be protected as such would amount to making it possible to monopolise ideas, to the detriment of technological progress and industrial development.

But then, in almost the next paragraph, he said:

In my view, as is the case with other works that may be protected by copyright, the fact of reproducing a substantial part of the expression of the functionalities of a computer program may constitute an infringement of copyright.

The distinction between ideas and expression is necessarily very nuanced, and reproducing the source code that expresses the functions of a computer program could infringe copyright. The Infopaq judgment (Case C‑5/08 [2009] ECR I-6569) tells us that parts of a work enjoy copyright protection, provided that they contain some of the elements which are the expression of the intellectual creation of the author of the work.  A computer program must be regarded as a literary work in its own right, so "the same analysis must be adopted in relation to the elements that constitute the expression of its author’s own intellectual creation".

The question of infringement concerns whether the reproduction is of "a substantial part of the expression of the functionalities of a computer program". This analysis takes no account of the "nature and extent of the skill, judgment and labour expended in devising the functionality of a computer program". The way that computer programs are written will determine whether they are protected by copyright: that's a matter of the degree of originality in the writing of the program. So copying the functions of a program is not infringement, but copying the expression of those functions might well be, according to the Advocate General (and, in due course, probably according to the Court): and the task of drawing the line, as it had to be, is left to the referring court. I wonder whether Arnold J feels he's got value for the effort he put in to posing the questions in the first place?

Class headings do not cover all

Advocate General Bot has given his opinion in the IP Translator case, Case 307/10, Chartered Institute of Patent Attorneys indicating that he doesn't think that an application that repeats the class heading from the Nice Classification does cover all the goods or services in the class. If that sounds arcane, consider the application in suit - which was designed, and filed, with a view to getting an authoritative statement of the law in this area: CIPA filed for the UK trade mark IP TRANSLATOR in Class 41, the class for translation services, for "education; providing of training; entertainment; sporting and cultural activities" - the class heading for that Class, to which translation services are proper, but which does not include them.

The AG says that the goods or services have to be stated with sufficient precision and clarity as to enable the competent authorities and "economic operators" (are they related to stakeholders, perhaps?) accurately to determine the scope of the trade mark. Exactly. The appropriate level of generality will vary from case to case - that sounds like a bit of a cop-out, but at the level at which the Court of Justice operates statements like that are surely unavoidable. The class headings might, says the AG, suffice for this purpose, so they could be used - but subject to that comment about precision and clarity (and it seems to be lacking in class 41).

Then he comes to the nub of the problem, Communication 4/03 of the President of OHIM, which established the "class headings cover all" principle. This does not satisfy the requirement for precision and clarity, whether for Community trade marks or national ones - and this leads to cluttering, because there are too many over-broad registrations. Moreover, there is the interesting paradox (all tied up with the difficult question of how this mess can be fixed) that specifications will have to be amended by being limited (maybe the addition of the time-honoured formula, "all being translation services", if that's still permissible, to the IP TRANSLATOR specification) but the limitation will have the effect of adding goods or services that weren't included in the first place. Only the European Union could create chaos like this.

The fact that Nice is periodically amended, and new goods and services slotted into the existing classes, which often retain unchanged class headings, is another demonstration of the absurdity of allowing registrations on this basis. Precision and clarity are absolutely essential, not the lazy, thoughtless approach encouraged by OHIM's ruling, and moreover we need something that links registrations more closely to the actual use made of the trade mark, otherwise the registers - national and regional - will become more cluttered, the range of available trade marks will become more depleted, and businesses will find markets foreclosed to them just because they cannot use the trade marks they want (or need) to be able to use. Let's hope the Court of Justice recognises these problems and imposes some commonsense on the trade mark system.

Computer simulations patentable

In Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat) (05 October 2011)  the Patents Court (HHJ Birss QC) held that computer simulations of designs are not just mental acts (and therefore unpatentable). The IPO had wrongly applied patent law when it assessed four applications for patents for computer simulations of designs for the working of drill bits for the oil industry. The IPO had wrongly asked whether the inventions were capable of being performed mentally: the right question was whether they were in fact merely performed mentally. This had caused the IPO to fail to recognise that the claims were make only in relation to the simulations themselves and were therefore not subject to the exclusion for mental acts. The examiner had applied the exclusion on too broad a basis.

“The claimed invention cannot be performed by purely mental means and that is the end of the matter. Put another way, the contribution is a computer implemented method and as such cannot fall within the mental act exclusion.”

The judge said that the inventions were not subject to any of the other exceptions to patentability. They merged mathematical calculations with computer software and were sufficiently technical to be patentable. The invention was more than just a computer program: it was a method of designing a drill bit, and it did not fall solely within the excluded territory.

The problem with the application had been that it was very broad. It did not not tether the claims to simulations on a computer, or to actually manufacturing improved drill bits, but this was deliberate as the draftsman wanted to catch such matters as consultants designing drill bits as well as bits which had been manufactured. However, the skilled reader of the patent would understand that the simulations would be carried out using a computer, so the complicated wording might have been unnecessary.

As for the mental act exclusion, this is very narrow and covers only calculations which are actually performed mentally. It does not catch calculations carried out using a computer.

Second-hand software

There's a lot of it around, but is it legal? Can the licence be transferred to a buyer? That was the issue in  Vernor v. Autodesk, in which Mr Vernor offered unopened, authentic, copies of AutoCAD for sale on eBay. When challenged he applied to the District Court for the Western District of Washington for declaratory relief (that link takes you to a piece published by Foley Hoag) and he got summary judgment. On appeal from the District Court, the Court of Appeals for the Ninth Circuit held that Autodesk's customers were licensees and not owners so the sale of the AutoCAD software to Vernor, which was prohibited by the AutoCAD license, was invalid. Mr Vernor was neither a licensee nor an owner and the first sale doctrine was of no assistance to him.

On 3 October the US Supreme Court declined a request to grant certiorari. This means that the Ninth Circuit's three-prong test for determining whether a software user is a licensee or an owner is the law, at least in the Ninth Circuit. This raises the intriguing and very US question whether other circuits will follow the Ninth, and if differences emerge the Supreme Court might well have to take the matter on. Meanwhile, the original claim is back with the District Court, and at the same time an expedition to Luxembourg is under way (from the Bundesgerichthof) in Case C-128/11 Oracle International Corporation v usedSoft GmbH, which might of course produce a completely different answer ... Given that the terms of the licence are crucial in these cases, that might be quite possible and perfectly correct. In any event, it's an interesting area.

Canadian copyright law and digital locks

Here's an interesting posting by Michael Geist about the proposed Canadian copyright law changes, which would deal with (among other things) breaking digital locks. Canada would fall into line with the USA and its Digital Millennium Copyright Act, a piece of legislation which Draco would probably find quite to his taste (although he'd surely find the omission of the death penalty inexplicable), and as one would expect the chattering classes have a lot to say about this piece of cultural imperialism and the Conservative government's craven submission to Big Copyright - here, for example.

A particularly obscure branch of metaphyiscs

Not my phrase: that's what Jacob LJ called design law, in Dyson v Qualtex five years ago. Earlier this week, I spent a day presenting a course on IP infringements and enforcement - someone else's course, so I was using materials I hadn't prepared, though I don't think I'd have covered the subject any differently. I found myself having to explain to the audience that designs featured less in real, practising, life than any other area of intellectual property law, but that the law was so complicated - such a mess - that it demanded a large chunk of such a course.

I've been explaining the same thing to my Russian students, and my American student, all studying for external London University LLB degrees, the American one having done her resit yesterday. The examiner demonstrates what might be thought to be an unhealthy interest in designs - worse than that, in fact, because the Community system isn't part of the syllabus and copyright seems to loom large, which makes it all seem highly artificial. But it's certainly an area of law in which, right now, there's quite a lot going on, with the Court of Justice handing down its judgment in the Pogs case last week and now the Court of Appeal deciding Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206 (27 October 2011).

The story so far is that last year Mr Justice Arnold held that Vax's Mach Zen vacuum cleaner did not infringe Dyson's UK registered design, much to some people's surprise and Sir James Dyson's dismay. Dyson appealed.

To succeed in such an appeal, the appellant would have to show that the judge had gone wrong in principle. That's a big ask, and I don't think Mr Justice Arnold is the sort of chap to do that very often. The case was based on Article 9(2) of the Community design directive, which refers to the degree of freedom of the designer in developing his design, and that (as Jacob LJ observed) plainly refers to the registered design, not the accused object. Dyson complained that the judge had referred several times to the freedom of Vax's designer. Jacob LJ thought that it mattered not, there being no change in the degrees of design freedom between the date of the design and that of the design of the Vax machine.

Dyson's counsel (Henry Carr QC) also stated his case as being that the judge had effectively decided (as paraphrased in the Court of Appeal by Lady Justice Black) that the better the design the more people would say that it is only going to be worse if I do it a different way, so the less the design freedom, and ingenious and innovative designs would be penalised. Jacob LJ did not read the judgment this way. Indeed, the judge specifically held that the registered design was "strikingly different" from the existing "design corpus": Dyson argued that he had however failed to apply the principle that where this is the case the new designi s likely to have a greater overall visual impact than if it is "surrounded by kindred prior art", as HHJ Fysh pithily put it in Woodhouse. The Court of Appeal rejected this approach, holding that the judge was still entitled to find that the Vax machine did produce on the informed user a different overall impression from that produced by the Dyson design.

Sir James Dyson is clearly unhappy, according to this report, though I don't think he has taken full account of the rile of the Court of Appeal. I am disappointed that he should have launched such a diatribe, although I can understand that he feels miffed. He ought however to be directing his ire against a design law which seems more hopeless the  more I think about it.

Men at Work case won't go to appeal

That interesting Australian copyright case involving the song Down Under by Men at Work, which was held to infringe copyright in the well-known, or "iconic" as it was called in the litigation, Kookaburra, has come to a halt with the High Court rejecting EMI's application to appeal. Mallesons have the story on the IP Whiteboard blog, which is always full of good stuff.

I'm not only old enough to recall the song, I am old enough to consider it new, in the sense that it is post-New Wave. And I couldn't remember anything in it that sounded like Kookaburra. Seems I was right, because the court needed expert assistance to find the bits that had been copied: there was no "ready aural perception" of the copied bars but they were there. But that does seem difficult to square with the notion of a musical work, which is intended to be enjoyed by being listened to (a literary work, by contrast, being enjoyed by being read). If you can't hear the similarity, is music copyright really engaged?

Any electronics patent attorneys out there?

My good friend Pete Fellows, whose recruitment firm sponsors my IP podcasts and blawgs, tells me that he is looking for patent attorneys (including part-qualified ones) with a background in electronics, physics or computer science. It seems they are in short supply, and he's even offering a Samsung Galaxy fondleslab (original version) if they place a candidate you introduce to them. See here for more information.

Thomas More and the European Union?

Reading - as I should have done many years ago, having bought it in August 1980 - Paul Johnson's absorbing history of Britain, The Offshore Islanders (Penguin, 1972), this sentence strikes me:

But equally he [More] can be seen as upholding an ancient and ramshackle structure, whose reality had never corresponded to its ideals, and which was now breaking up under the stress of nationalism ...

The next three words are, of course, "the Catholic Church", but it does sound remarkably like the European Union, of which  the Catholic Church (and before it the Roman Empire) was a precursor in the limited sense that it created a union of a sort among the nations of Europe. I particularly like the "reality never corresponding to ideals" bit, which to me seems especially apposite as a description of trade mark law in the European Union. To that perhaps one should add designs, and prospectively patents too.

An Australian Feist

Copyright in compilations remains a thorny issue, and if I needed reminding of it the other week explaining it to Russian law students certainly worked. Databases that aren't compilations, and vice versa - we are into the realm of metaphysics here.

Feist, SCOTUS's last word (as far as I know) on the subject of copyright in compilations (in suit, an alphabetical telephone directory for part of rural Kansas where I imagine telephones are few and far between, people likewise), was the death-knell for the "sweat of the brow" test, one of those graphic expressions that American lawyers use to the delight of legal dictionary-writers. In Telstra Corporation Limited & Anor v Phone Directories Company Pty Ltd & Ors [2011] HCATrans 248 (2 September 2011) the High Court of Australia has taken what seems to be a similar step, and given the close connection between Australian and English law this might be more important for us than Feist was.

The case raises interesting points about the need to identify the author or authors, and about the effect of using a computer. It has always struck me that making an alphabetical list using a computer is extremely unlikely to result in any sweat on one's brow. Read the interesting review of the points on Mallesons' IP Whiteboard blawg.

Troll trounced: Righthaven loses out

It built its business on acquiring copyrights from newspapers and going after bloggers and others who used photos and the like on the web, but the model appears to have been flawed, reports Washington College of Law's Intellectual Property Brief. Righthaven sued one Leland Wolf for using a photo from the Denver Post, but the defendant successfully challenged the Colorado Dostrict Court's jurisdiction, which being based on copyright infringement was inextricably bound up with the merits of the claim. The judge held that the copyright assignment agreement had not transferred any real ownership interest to Righthaven, who could not therefore sue as owners.  He dismissed the case and awarded Mr Wolf costs.

So what went wrong? I think that will have to await sight of the judgment, which doesn't appear to be on the web just yet, but the Brief on the Motion to Dismiss (which I am pleased to see was co-drafted by my friend Marc Randazza) gives us a good clue: the assignment, such as it was, gave Righthaven no rights to use the copyright works, just to sue for infringement. The rights were assigned "solely to coat its lawsuits with the veneer of legitimacy" - nice turn of phrase there. Here is the Strategic Alliance Agreement (see clause 7 in particular).

The excellent Electronic Frontier Foundation filed an amicus brief in the case and have more information about it here.

Wolf is one of over 50 cases brought by Righthaven in the Colorado court, so from their point of view a lot hangs on it.

Database protection in Argentina

There are criminal sanctions attached. I get worked up about the offences that have been bolted onto our IP laws, but they don't come close to this. Perhaps some businesses would like them to.

According to a newsletter from Marval O'Farrell & Mairal, a recent case was brought by a corporate event planning company against two former employees who had made off with the database and set up in competition. This database, among other things, contained the distilled wisdom and experience of the organisation on how to organise such events. The Court of First Instance indicted both defendants on charges of intellectual property fraud, pursuant to Section 71 of Intellectual Property Law No.11,723 (which covers databases by virtue of Law No. 25,036). They appealed, arguing that they were only re-using ideas not expression, but the Court of Appeals upheld the trial court. This database, far from being a mere compilation of information, was the result of careful data selection and classification, designed to support a specific working methodology, tailored to the specific needs of a particular company.

Intellectual property fraud. A concept to conjure with.

Register a Community design within 48 hours

You can, according to President Campinos of OHIM (reported here by MIP). You have to pay the application fee using a current account with the office because other payment methods such as credit cards and bank transfers cause delays (the banks taking the opportunity to put the money into Greek bonds or something overnight, I suppose) and submit a high-quality application, which means email not a smudged fax. Ideally you won't claim priority, but if you do you must submit all the priority documents at the outset. These details appear to have been added by MIP as they don't appear in the published version of the President's speech - he might have been ad-libbing.

Of course, the speed of processing is down to the fact that there is no substantive examination, perhaps no human intervention at all, which makes me wonder why it can't be done within 48 seconds. The Community registered design system is a deposit system in all but name, so what you get at the end of the process, however quick it might be, has to be heavily discounted because of the lack of scrutiny. Registered designs are, of course, virtually impossible to assess for novelty, because the prior art is not organised in a searchable form.

Personally, I'd rather the process took longer and resulted in the grant of a reliable registration. A quick process for obtaining a right that stands a good chance of being worthless is the ultimate triumph of form over substance, making the Community registered design an end in itself. It also makes the application fee little more than a tax on businesses to fund a pointless institution. Excellent nonsense.

The web should have been patented

So said WIPO DG Francis Gurry. He might be thought not to be the most impartial commentator on the desirability of patents ... For some reason his comments have only now achieved wide circulation, thanks largely to Cory Doctorow who posted a commentary here. The video is on YouTube (naturally).



My mind is boggling - though I can see something in rationing the web, which would be one effect of giving the underlying ideas patent protection. It would be much more manageable, wouldn't it, if there were less stuff on it? You'd be able to find what you wanted more efficiently. Unless what you wanted was what happened to have been rationed out of existence: like this blog, I reckon. Maybe the world would be a better place for that. It would give governments a much better chance of controlling what's on it, too: all that tedious free speech stuff would go. Mr Gurry seems to base his argument on the investment that would come in, which (a) ignores the amount of investment that there is in the technology without basic patent protection and (b) would probably put control in the hands of the Disney Corporation, News International and a vast array of pornographers. Much better.

Doctorow says that this could only possibly come from "a blind adherence to the ideology that holds that patents are always good, no matter what", and it's hard to disagree. Gurry says that IP is a very flexible system - a sweeping generalisation, I'd say, when he's trying to commend patent protection - and draws a comparison with the invention of the saxophone, which he said is the only instrument in the classical orchestra which has ever been patented. Well, I don't know whether there is a precise definition of a classical orchestra, but I doubt it would include a saxophone, which is a rare addition to what most people would understand as a classical orchestra: and as we are now discussing exotic additions to the classical orchestra, the ondes martenot was (were?) patented in 1928, and indeed there seem to be quite a few patents surrounding that instrument.

Gurry argues that patent protection for the saxophone meant that others (in addition to Adolphe Sax, who must be in the top seven of famous Belgians: Ickx, Merckx, Magritte, Rubens, Hergé, ... Plastic Bertrand - does Rubens count, if Belgium did not exist as such in his lifetime? And is it really appropriate to include Audrey Hepburn just because she was born in Brussels of an English father and a Dutch mother?) were able to make improvements to the instrument, unlike the violin the secrets of which died with a handful of individuals in Cremona centuries ago. I don't think there's much danger of the secrets of how the web works suffering the same fate. What the intellectual property system needs is less of this hyper-inflation.

Trade marks and public policy

The General Court has also decided that, as a trade mark, PAKI is contrary to public policy or to accepted principles of morality: T-526/09, PAKI Logistics GmbH v OHIM. The court remarked that the word was a racist expression and therefore unacceptable as a trade mark. This notwithstanding that the applicant is a reputable German logistics company and the mark is used in the form PAKi. (I can see the connection between the PAK element and logistics - and they have been around since 1974.) Pakistan, incidentally, is called Pakistan in German.

For those unfamiliar with English racist slang, the expression was commonly used, is used less often now, with a considerable measure of ignorance as well as malice to denote just about anyone from the Indian sub-continent. I don't believe it was, or is, used exclusively with malice, and it can sometimes be intended neutrally - we have an "Indo-Pak" restaurant not far away from home, although there is a big difference between using the term for a whole people and using it for an individual. Often people use expressions like this with the best of intentions, unaware of the hurt they cause.

The court also noted that protection against discrimination is a fundamental value of the EU, provided for in Articles 2 and 3, paragraph 3 of EU Treaty and Articles 9 and 10 of the Treaty on the Functioning of the European Union, and Art.21 of the Charter of Fundamental Rights of the European Union.

Well, the measure of what should be acceptable is easy enough: if people don't like it, we should all respect their wishes, not use the word, and not allow it to be registered as a trade mark. The court was presented with evidence that the word is used in the Pakistani community, and is not necessarily offensive to them: but even if the law is protecting the sensibilities of the chattering classes, perhaps that's reason enough to refuse registration. But it does seem an unfortunate side-effect of the Community trade mark system that a German company should find its name unprotectable at EU level.

Because it involves the same provision of the regulation, and because I have only recently caught up with it, and because of my visit to Russia last weekend, I'll also add a reference to Case R 1509/2008-2 Couture Tech, a decision of the OHIM Second Board of Appeal in an appeal against a decision to refuse registration of the old Soviet Union symbol of hammer, sickle, globe, red star, and "workers of all countries, unite!" in 15 languages (none of them English, rather like a General Court judgment). The board noted that the Soviet Union - which the board seems to treat as interchangeable with the Soviet Communist Party, perhaps rightly - was

... a totalitarian state that massively violated human rights, under the leadership of the Soviet Communist party, committed crimes against humanity, including summary executions, torture, sending innocent people to labour camps, involuntary settlement and stripping of citizen’s rights. It is commonly  accepted that the ethnicity-targeted population transfers in the Soviet Union led to million deaths due to inflicted hardships. For example, 10 percent of the entire adult Baltic population was deported or sent to labour camps, as can bee seen from Wikipedia printouts.

Allow me in passing to exclaim - "Wikipedia???". But the historical facts are beyond dispute, even if there might be arguments about the details, and the Board's conclusion that the trade mark the subject of the application would cause offence in countries which suffered under the Soviet regime, some of which ban such signs as some countries do Nazi insignia.

Good call: but what baffles me is why anyone would think this a suitable sign to use as a trade mark in the first place?

B&O loudspeaker shape cannot be registered as trade mark

The directive and the regulation both say you cannot register as a trade mark a shape that gives substantial value to the goods to which it is applied. In Case T-508/08 Bang & Olufsen v OHIM the General Court applied this rule to uphold the Office's refusal to register the shape of its speakers.

And quite right too. That provision has always caused me a little worry, as the whole point of applying a trade mark - any sort of trade mark - to goods is to enhance their value. A plain unmarked bottle of brown fizzy liquid is worth little: make the bottle curvaceous and apply a Coca-Cola (or Pepsi) label and it's a different story. But just because the law might be difficult to apply in extreme cases doesn't mean it is wrong.

The B&O case has a long history. Their application, filed in 2003, was refused as being devoid of any [sic] distinctive character. (This "devoid of any" formation grieves me - surely the "any" is redundant, as "devoid" means having none at all, without the need to reinforce it.) The Court then upheld their appeal, sending the case back to Alicante, where it was refused again but this time on the grounds that the shape gave substantial value to the goods. You have to acknowledge the applicants' persistence, because they set off on another expedition to Luxembourg to get that straightened out too.

Except that the court did not oblige:

The Court finds that in the present case the shape for which registration was sought has a very specific design. In the Court’s view, that design is an essential element of Bang & Olufsen’s branding and increases the value of the product concerned. Furthermore, it is apparent from extracts from distributors’ websites and online auction or second-hand websites that the aesthetic characteristics of that shape are emphasised first and that the shape is perceived as a kind of pure, slender, timeless sculpture for music reproduction, which makes it an important selling point. Accordingly, the Court holds that OHIM did not make any error in finding that, independently of the other characteristics of the product at issue, the shape for which registration was sought gives substantial value to that product.

The court also noted that it was perfectly OK for the Office to work through the absolute grounds for refusal one after the other, as they are independent. The result: no trade mark protection for the shape. I know it looks pretty distinctive, and B&O thrive on the appearance of their products, but the interface between design protection and trade mark protection is one that has to be guarded carefully. These same loudspeakers - the designs for them - can be protected for 25 years as designs, and if that is considered to be the right period of protection then whose interest would be served by permitting them to be protected by the trade mark system too, potentially for ever?

High Court remits software patent matter to Comptroller

Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat) is an appeal from the Comptroller. HHJ Birss, sitting as a High Court judge, allowed the appeal and remitted the case back for the Patent Office to try again. The Deputy Director, Mr Thorpe, acting for the Comptroller had rejected four applications, on the grounds that they were within the "mental acts" exclusion or were computer programs. The claims were to methods of simulating drill bit performance, without going on to deal with manufacturing the things once they had been simulated.

The law in this area was laid down by the Court of Appeal in Aerotel v Telco / Macrossan's Application [2006] EWCA Civ 1371 (in which Jacob LJ gave the judgment of the court) and Symbian v Comptroller [2008] EWCA Civ 1066 (in which he didn't, though the judgment of the Court which Lord Neuberger gave presumably contained a lot of Jacob). But there remains a great deal of dispute about the rules, with differences between UK Office practice and the EPO, complicated by the change of law in EPC 2000 (implemented in the Patents Act 2004, which came into operation after Aerotel: and there are other cases, including Kapur [2008] EWHC 649 (Pat) before Floyd J, which touch on the subject (and Kapur, which is more relevant than Symbian to the facts of the present case, was not brought to Mr Thorpe's attention.

In the present case, regarding the mental act exclusion, the judge decided that:

... the correct scope of the mental act exclusion is a narrow one. Its purpose is to make sure that patent claims cannot be performed by purely mental means and that is all. The exclusion will not apply if there are appropriate non-mental limitations in the claim.

He also decided that, applying the Aerotel  judgment, the invention was not excluded as a computer program. So the case was decided without having to go into some of the more exotic questions before it: but the judge had a quick go at them anyway. He did not agree that the 2004 Act permitted him to depart from the Court of Appeal judgments. He thought that, correctly applied, the different approaches in the UK and the EPO should not lead to different results (so the outcome would be right, just the route to it would differ, a matter mentioned by Pumphrey J in Cappellini and Bloomberg [2007] EWHC 476 (Pat). And he rejected the "familiar and illegitimate" argument (which he merely "detected" in counsel's submissions) that the EPO approach to patentability should be taken but in combination with the UK's approach to inventive step, which he said would lead to very different results in the two offices.

An interesting case, from which the judge concludes that

... as a matter of law computer implemented inventions are just as patentable in the UK as in the EPO.

Really? That sounds as if it might spoil the fun! 

WIPO 'British Day' for Patents

WIPO is holding a day of discussions for UK patent practitioners on 13 October - next Thursday. At least it will if enough people sign up for it. The IPKat publicised it this morning, and I'm doing my bit too - having signed up to it myself. Details from http://www.ipo.gov.uk/whyuse/events/events-calendar/events-britishday.htm.

Free movement of televised football

I can think of few things short of violence and some types of music more likely to keep me out of a pub than a widescreen TV showing a football match. In fact any widescreen TV showing a sporting event that seems to involve abnormally short, fat men. Why is the image always distorted?

The Court of Justice has decided, agreeing with the Advocate General, that Karen Murphy is within her rights to show Premier League matches using a decoder obtained from Greece: the story is on the BBC News website and here is the judgment in Joined Cases C-403/08, C429/08 Football Association Premier League and Others, Murphy. The Court says that national legislation which prohibits the use of overseas decoders could not "be justified either in light of the objective of protecting intellectual property rights or by the objective of encouraging the public to attend football stadiums". So what is going to happen now? Sky can't carve up the European market and charge much more in the UK than in Greece, which frankly makes very little sense to me: the market for broadcasts of English football matches, even allowing for the fact that the Premier League is the most popular in the world and commands attention far, far from England, is not a single one within the EEA, and the broadcasts command a lower price in some countries than in others. (I wonder how much they cost in Scotland?) It is another instance of the Court, and European Union law, imposing on the EEA a rule that only makes sense if the EEA is something that it is not and probably never will be. The same lack of logic applies to old parallel import cases: I am reminded of the Silhouette case, with the suggestion that designer sunglasses should be sold at the same price in pre-accession Bulgaria and in affluent Austria. How many Bulgarians were going to buy at Austrian prices? And what are the chances of prices being reduced to Bulgarian levels in other countries?
Profit maximisation demands that different prices be charged in different markets, and pretending that there are no different markets makes a nonsense of that. I don't imagine that Sky is going to be reducing its prices to English pubs (doesn't seem the Murdoch way), so the effect of this undoubtedly soundly Communitaire judgment will be to deprive Greeks of Premier League football.
Actually, now I think of it ... I'm not sure they need much sympathy.

A trade mark dispute to follow with Glee

Finding a trade mark you can use without invading someone else's comfort zone is increasingly difficult. It is one of the side-effects of globalisation: a multi-national player has the name registered everywhere you can think of, and probably has an extensive comfort zone so is inclined to take a dim view of a newcomer whose business, or sign, or both, is by anyone else's standards very different from what the trade mark protects. I've had several such cases in the last few years, and it tells me that the trade mark system isn't just cluttered (per the Max Planck Institute) but well and truly broken. Often it resembles nothing more than a tax on businesses, especially small ones, who are obliged to register trade marks that (a) they don't want or objectively need to register or (b) shouldn't be within any sensible person's definition of distinctive signs anyway. As a tax, it is regressive, which of course makes it worse: small businesses pay a higher proportion of their income on silly trade mark applications than large ones. Because of the magical properties that all IP is generally thought to possess, it is rapidly developing into a protection racket.

It isn't always like that, though. Here is a refreshing story of the small business (a comedy club called the Glee Club - not the strongest of trade marks, but the established meaning in the US shouldn't affect its validity here) taking on a multinational juggernaut (Twentieth Century Fox), and with a strong chance of winning. A small business that, unlike many, had the foresight to register its trade mark a long time ago (though a glance at the UK register shows at least two Glee Club trade marks). The report describes an open-and-shut case of infringement, though a newspaper article isn't ever a very reliable source, and I'm looking forward to seeing this one going further. Damages perhaps for the false suggestion that the club is associated with News International?

Spotify and free access

Interesting piece in the Guardian, particularly topical in light of increasing copyright protection for sound recordings.

Dylan and copyright

The great man has always worked with images as well as with words, but it seems that he might not bring the same originality to his painting as he does to his writing. Michael Gray's Bob Dylan Encyclopedia blog today shows a photo by Dmitri Kessel (died 1995) and a painting from Dylan's "Asia" series. You won't even have to dig out the report of Bauman v Fussell [1978] RPC 485 to work out that this needs the copyright owner's permission - and if you go a little deeper into Mr Gray's blog you will find other examples, such as this photo by the Danish photographer, Jacob Aue Sobol (born 1976), and a painting visible in this group.


This, from a musician who stands to benefit now from the extension of copyright in his sound recordings! I hope he got permission ...

For copyright enthusiasts on Project Gutenberg

Het Auteursrecht by Henri Louis de Beaufort, nearly 500 pages in Dutch dating from 1909, available since yesterday. Six downloads so far - yes, including me, sad git that I am: but my Kindle is still the same size and weight, so why not?

Martin Kretschmer on copyright term extension

An excellent comment on the cost of extending the duration of record companies' rights.

Facebook at work: leading by example?

That excellent and generous source for all things relating to law, Pinsent Mason's Out-Law, tells us that according to a written answer given by employment minister Chris Grayling staff working for the Department for Work and Pensions in its JobCentre Plus offices (which might be what used to be called labour exchanges, or at any rate might be functionally equivalent to them) are given access to LinkedIn (surely essential for anyone involved in matching people with jobs, and I don't just mean matching themselves with jobs) and Twitter (less obviously useful) but not Facebook, which is barred. The minister did not say whether this was simply to stop them wasting time - but I would imagine that with the the economy the way it is, JobCentre Plus staff don't have much chance to waste time even if they wanted to.

Orphan works - IFRRO has its say

The Commission published its proposals on orphan works some time ago, and the International Federation of Reproduction Rights Organisations has now put in its observations which can be found here. No surprise that they advocate a solution based on licensing, and argue that conditions for use of orphan works need to be decided on by authors and publishers. They also invoke the principle of subsidiarity to support a call for Member States to be permitted to legislate for different solutions at the national level.

The Commission's page on the proposal is here.

More copyright for sound recordings: Does the Directive pass the Stackridge Test?

Well, longer, anyway. The Council has accepted the record industry's special pleading, led by Sir Cliff Richard after whom the law is already unofficially being named, and adopted the long-mooted directive to harmonise copyright protection for sound recordings at a higher level than the 50 years provided for previously. They did not go up to 95 years as the lobbyists had wanted - harmonising the term with the US, which would have ignored the lack of protection in that country for performers's rights - and kept it to 70 years. The Press Release on the Council's decision is here and it links to the new directive.

Should we be welcoming this development, or ruing it? In many ways it depends on where you stand, although one thing that has to be said (as the IPKat pointed out the other day) is that this legislation fails to pass the Hargreaves test of evidence-based policy-making. It's good for record companies, of course, but they don't attract a huge amount of sympathy these days. It doesn't make any direct difference to songwriters, because their copyright already lasts for 70 years PMA - although it's possible that records will remain available for longer under the new law, so they might earn more for their musical and literary works. What about the performers?

I have posted on this subject before. When the topic first came up, it seemed to be driven by the record industry trying to get extra protection for some valuable properties. They got the performers to lobby for their cause, of course, because the public would be more sympathetic to them than to the industry - producing that memorable full-page ad in the papers with 2,000 signatures, including those of two deceased performers. In working out where I stood on the proposal, I adopted the Stackridge Test: would the benefit accrue to the musicians whose pension funds could do with a little topping up, or would the record companies clean up?

The answer I got (thanks to Mike Tobin, and through him Peter Purnell of Angel Air Records) was that the terms of recording contracts provided for the rights in the recordings to pass to the artists when the record company decided to remove the disc from the catalogue. So the musicians whose work I enjoyed back in the seventies get the right to arrange for new editions of their work, like the Stackridge back-catalogue on Angel Air. The extra term can benefit them, not invariably the record companies. And their pensions get a boost. On that basis, I decided that this was an OK law: not great, but certainly not altogether bad - perhaps a bad law with redeeming features.

What we have now is an increase in the duration of protection to seventy years from release, with a proviso that if the phonogram is not being offered to the public the performer can terminate his or her rights in the fixation of the performance - using the rights performers have in their performances as levers to take over the copyright in the sound recordings, thus neatly overcoming the problem that those rights can't simply revert to the artists because they never owned them in the first place. So the directive satisfies the Stackridge Test up to this point.

Where it looks to me as if it will fall down is that there is no need any longer for a phonogram (which includes a recording made available in immaterial form) ever to be deleted from the catalogue. The record companies can, if they are so minded, ensure that copies are always available to the public. The "reversionary" rights might never come into play, and while Stackridge won't lose what they already have musicians who haven't already gained control over the copyright in their sound recordings might find the new law has little to offer them.

Or am I wrong?

The Right to Privacy

Writing as I was the other day about Project Gutenberg, I was particularly struck to see today that the seminal work on the subject, The Right to Privacy by Louis D. Brandeis and Samuel D. Warren, is now available. It'll be on my Kindle very shortly, now I have finished reading Tolstoy's The Kreutzer Sonata (my advice is don't bother).

US patent reform: or the universal story of intellectual property?

 Dennis Crouch's always-interesting Patently-O blog gives us this today, from Senator Maria Cantwell. In fact, all Dennis gives us is the quote, so I am cheekily reposting the whole thing, but as it was a quote in the first place there can't be any doubt that it is fair use (US) and fair dealing for reporting current events (UK). The Senator was talking - obviously - about the reform of patent law in the US:

This is not a patent reform bill. This is a big corporation patent give away that tramples on the rights of small inventors.

I don't propose to get into the controversy about this piece of legislation, other than to observe that it does smack of protectionism - but I am going to remember that turn of phrase, which seems to describe so much that goes on in the world[s] of intellectual property. I'm thinking of the move to a totally opposition-based trade mark system in the UK, and the increase in the term of protection for sound recordings, for two things.

Project Gutenberg founder Michael Hart

I was moved to learn that Michael Hart, who did humankind a gigantic service by creating Project Gutenberg (http://www.gutenberg.org), died a couple of days ago. Project Gutenberg - or PG: I share initials with it - was a boon to me even before I was given a Kindle for my last birthday: I read Tolstoy's Resurrection on my trusty (but no more) Psion Series 5MX, one small screen at a time, then when I got a BlackBerry I tried Ulysses - about 8 lines at a time, absolutely hopeless. Now I have it, and a selection of other classics, as well as some of my own writing that I might need to look at, important reading like the Max Planck Institute's report, and a friend's first novel, all immediately to hand.

I did once contribute a work to PG, obtaining a copy of Browning's complete poems from Oxford City Library and scanning Pheidippides - what did you expect? - then working through the OCR output to make it as it should be. PG - Mr Hart himself, I think - was unimpressed that I had provided them with only one poem. Well, I now have it as part of an e-book of Browning's shorter poems. And enough other classic stuff to last me for the rest of my life, I suspect. All copyright-free.

Smartphone patent wars

Proving just how difficult it can be to tell a troll apart from a practising patent-holder, the FT reports today that Google has come to the aid of major Android-user HTC in its struggles with Apple. How? By transferring some patents to the handset manufacturer to bolster its position in the Apple litigation. These are not patents that it picked up from Motorola in that well-publicised deal a little while ago, but some that it had already acquired - not obtained - from elsewhere. Not a tremendously edifying spectacle, but in a fight like that you have to use what weapons you can get your hands on to try to achieve something like parity with the other side.

Another instance, perhaps, of the intellectual property tail wagging the business dog.

Patent documents may be made available to the public

The Patents Act 1977 (Amendment) Regulations 2011 (SI No 2059) are, paradoxically, to do with copyright - but copyright in patent documentation, for which they carve out an exemption:

Regulation 2 inserts a new section 118A into the Act which contains an exception from copyright. This provides that copyright is not infringed in a copyright work when a document is copied or made available electronically to the public for the purpose of inspection in accordance with section 118 of the Act. The exception from the right to communicate the work to the public does not extend to broadcasting the work.

It seems perhaps a little late in the day to slip that in - under the provisions of the information society directive, which dates from 2001.

Domain names as property

They are in California (Kremen v Online Classifieds Inc (2003) 337 F 3rd 1024), and now also in Ontario, although the English courts have been more sceptical (notwithstanding that in OBG Ltd. v. Allan, [2008] 1 A.C. 1 (H.L.), Lord Hoffman for the majority observed at para. 101, “I have no difficulty with the proposition that a domain name may be intangible property, like a copyright or trademark”: that remark appears to be completely obiter). Does it matter? Yes, for one thing because I've seen many agreements in which domain names have been included in the definition of "intellectual property" and the agreement has gone on to give warranties about the intellectual property being owned by one party, and often dealing with the transfer of that class of assets. It's a bad idea to warrant that you own something that probably isn't property, and to promise to transfer something that can't be transferred.

In Tucows.Com Co. v. Lojas Renner S.A.,2011 ONCA 548, the Court of Appeal for Ontario held that a domain name was property and that it was situate in that province, which meant that the Ontario courts had jurisdiction in a trade mark infringment case involving it. Getting over the first hurdle involved the court cosidering cases from a number of jurisdictions along with the academic literature, which they concluded pointed to domain names being a new form of intangible property. It was probably a conclusion they had to reach along the way to the right decision on the case, but it doesn't strike me as entirely convincing - at a philosphical level property can be whatever you want it to be, and of course statute can make something property (as is the case, for example, with copyright and trade marks in this country). But a domain name remains an entry on someone else's database which registration can be re-registered in someone else's name according to the registrar's rules, but which doesn't otherwise look much like property to me.

Copyright does not belong in the fashion world

Hat tip to Ed Grey (@EditorPatentEd) for the link to this piece on TechDirt, which perfectly encapsulates so much of what I find baffling about the fashion world, and presents a pretty good case for keeping copyright out of it. Thank goodness, at least, that over here we don't allow copyright to get involved very much any more - not since 1989 - and UK UDR is short, Community UDR fleeting.

Protecting trade secrets - to the maximum

An interesting piece from the FT about Cosworth, the racing engine manufacturers (inter alia). Once upon a time they supplied engines to most of the teams taking part in the World Championship, and indeed so long as you had a Cosworth DFV engine, a Hewland gearbox and some fabrication skills you could build yourself a Formula 1 car - as Peter Connew did. How scathing we who learned about motor racing by reading Denis Jenkinson's reports in Motor Sport used to be about "Cosworth kit-cars". But Cosworth are still going, albeit not under the same ownership, while the other Formula One engine manufacturers from back in the DFV days have all gone, except for the perennial Ferrari.

Followers of Formula 1 motor racing are familiar with the teams' efforts to keep their technical secrets to themselves. They try to get a peek at each others' machines on the grid, and if a stricken car has to be lifted by crane to be recovered, there's a rush to see the underside. As for the engines, the FT story tells us that Cosworth don't sell their products, only hire them out, and they are fitted and maintained not by the constructors' mechanics but by the engine maker's. A far cry from the old days, when the team probably had about half-a-dozen people at a race.

The engines are sent back to the Cosworth factory for servicing and repair (which was also the case 40 years ago), and when they are finished with secrecy is preserved by casting all 4,000 individual parts (maybe more parts than in a cooking road car, although I remember that Rolls-Royce used to assemble their products, back in the Crewe days when I had friends there, visited the factory, and even counted them among my clients, from 20,000 individual bits and pieces) into a furnace. The ultimate in recycling, perhaps.

Limits claims for competition infringements

The Competition Appeal Tribunal has restricted the scope of "follow on" claims, on a narrow (but perfectly proper) interpretation of Section 47A of the Competition Act 1998, which was added by the Enterprise Act 2002.

This provides a mechanism for “follow-on” claims for damages – following on, that is, from a finding by the authorities that the competition rules had been breached. But in Emerson Electric v Le Carbone (Great Britain) Limited the Competition Appeal Tribunal held that the claim was ill-founded because Carbone had not been an addressee of the European Commission's decision. It did not follow on: it was a new matter, and Emerson would have to go to all the trouble of proving a breach, which is what section 47A tries to short-circuit.

The decision was that there had been an illegal carbon and graphite products cartel which included Le Carbone-Lorraine SA, the GB company's parent. Emerson were not simply naïve in getting the wrong company, though: they based their case on the argument that the two Carbone companies formed a single undertaking and the parent had been named in the decision in a representative capacity.

The British Carbone company applied to strike out the claim, on the grounds that it was not an addressee of the decision. The CAT rejected Emerson's argument about representative capacity, partly because there was nothing in the decision to suggest that the British company had been involved in the infringement. The decision did, it was true, refer to a British subsidiary, but the defendant was not the only one at the time of the infringement. There was nothing to suggest that the Commission meant the defendant, nor was there anything to suggest that the two companies formed a single undertaking. Even if the company was indeed the UK subsidiary referred to, that would not mean that the Commission had found it to be infringing the rules. There might be evidence to support a decision that it too had infringed the competition rules, but that was a completely different matter.

Although the decision to strike out the claim is hardly surprising in the circumstances, it does show us that section 47A has very limited scope. The option of bringing a follow-on claim before the CAT will be available to a very small class of claimants, very different from the High Court's approach (as shown in Cooper Tire and National Grid) which tends to make it the forum of choice for cartel claims.

Time limits in the Patents Rules

There's a statutory instrument just out amending the Patents Rules, to take account of recent decisions about when time limits prescribed in legislation start. The Patents (Amendment) Rules 2011 (SI 2011 No 2052) amend a whole raft of rules, in the words of the explanatory note, to

... amend the various time periods prescribed ... by substituting a reference to “beginning immediately after” for the references to “beginning with” so that when computing a period of time by reference to a relevant event, the date on which the relevant event occurred is not included.

Stallman on unitary patent

As I just observed on my Dictionary of IP Law blawg, Richard Stallman talks a lot of sense, though perhaps the message gets confused because a lot of rather hysterical people follow him. But each day I am less convinced of the benign effect of any part of what we know as the intellectual property system, and I certainly don't believe that software patents should be encouraged, so I lean some way towards his position. And the reason I was posting to the other blawg this morning was because of an absolutely spot-on comment about the utility of the portmanteau expression "intellectual property" appended to a recent piece in the Guardian about the dangers of patent inflation if and when we get CRAP, or the Unitary Patent as it is officially known. I think the unitary patent litigation system also plays an important role in this.

He makes the very good point that granting software patents will be the preserve of the EPO (with national offices also banging out national patents, which will probably become pretty unimportant especially for the sort of undertaking that goes in for gigantic software patent portfolios with which to beat up competitors, whether as first strike or retaliation). National courts will lose the ability to strike them down, but will the unified litigation system be rigorous enough to keep them in check?

A software patent that produces a genuine novel technical effect that itself is a patentable invention doesn't seem to me to be objectionable. What we are talking about here is a machine doing something new, and software controlling it. A patent for such an invention isn't actually a software patent at all, because the software itself is not the subject of the protection. Not an easy line to draw, as we know, but at least we have an idea of the territory in which the border lies.

Mr Stallman makes the interesting point - which, forgive my ignorance, I have not seen expressed so clearly anywhere else - that the EPO searches for such a technical effect in the invention itself, not in the inventive step that makes the invention patentable. The software operating a computer does not have to result in a new machine, just an existing machine doing something new, and there is a world of interesting difference between the two. But I'm not here to explore that, just to draw your attention to an interesting piece on the subject - which I will go away and think about.

Trolls and tolls

Interesting piece by Tim Harford (The Undercover Economist) in the FT about patent trolls. He says:

The three pillars that enable patent trolling are: the existence of absurd patents; the forbidding cost of the legal process; and the business model of buying up patents as assets in their own right, rather than building blocks for innovation.

Concludes that more transparency in the market, better information about the prices at which deals are done, would help. It shows how tricky it can be to tell a troll from a legit toll collector - which is why that third pillar cannot simply be removed. But it does all come back to the widespread malaise of treating IP as an end not just a means to an end.

As for the first of those pillars, if only we could get away from stupid patents, how much better the world would be - but if the patent system is there, people are surely going to keep trying to get them.

Red Shoes

Can the colour of the sole of a shoe be protected as a trade mark? Christian Louboutin has registrations in the EC system and in the US, and probably lots of other places too. And the colour appears to be pretty distinctive. It's been in use for years, though apparently Valentino has produced shoes with red soles since the ’60s.

The other week Louboutin failed to convince a Federal judge in New York that it stood a good enough chance of winning an infringement case against Yves St Laurent, and was refused an injunction pending trial  (Christian Louboutin S.A. v. Yves Saint Laurent America, Inc.). Read all about it on my friend Mike Atkins's Seattle Trademark Lawyer blog here. Or on my friend Ron Coleman's Likeihood of Confusion blog, here (posting by Matthew David Brozik, another EC fan). Or (a late addition) Fox Rothschild's Fashion Law Blog, written in a very engaging style by Staci Riordan - who sets out three reasons why Louboutin failed, including its "awful" trade mark.

Now, there are big differences between trade mark laws here and on the other side of the Atlantic, not all down to the malign (in the case of trade marks) influence of the European Union. In both, a colour may be registered as a trade mark, but it will have a hard time demonstrating sufficient distinctiveness, and rightly so. Before exclusive rights can be granted in something as mundane as a colour, which then becomes unavailable to others in the same business, a stern test must be passed. Establishing sufficient distinctiveness will often entail limiting the scope of protection, perhaps by specifying a Pantone® number. "Red" will rarely be enough. In the US, Qualitex Co. v. Jacobson Prods. Co. established that a non-functional colour can acquire distinctiveness, but it must be easier for dry cleaning equipment than for fashion items. Dry cleaning companies probably don't get too hung up about the colour of the equipment they use. Pink for glass fibre insulating material (Corning, if I remember correctly) is also acceptable - an arbitrary choice of colour, serving as a badge of origin, not interfering with the commercial free speech of the competition. Maybe one test would be, if the question "why?" comes immediately to mind, it's a strong trade mark ...

Colour plays a much more important role in the fashion industry than it does in the dry cleaning equipment or home insulation sectors. It will accordingly be harder to register one as a trade mark. Indeed it should be very, very difficult, especially when it's an unspecific term like just "red", and the judge, the Honorable Victor Marrero of the United States District Court for the Southern District of New York, who reportedly cracked every shoe- and foot-related joke known to humankind in the course of his judgment, was not convinced that the trade mark owner would succeed at trial. I'd like to think the same thing would happen here: not that I expect the generosity of the relevant trade mark office to become exhausted, although they should be taking steps to keep rubbish off their registers, but at least if it came before a judge.