Saturday 29 January 2011

Trade mark depletion and foreclosure

Two similar stories on the web today (or not long ago): first, Managing Intellectual Property asking whether Apple is a trade mark bully for trying to register App Store as a trade mark (or trademark, I should write, as we are considering the United States here), and second a Minnesota-based maker of Scandinavian-style clogs by the name of Ugglebo challenging Deckers' controversial registrations of UGG for footwear.

There are important differences between them, I believe. The whole UGG thing smacks of avarice, and will have a central place in the book I might one day write about intellectual property absolutism. It seems well-established that the name was widely used in a generic way in Australia, and Deckers should not (on that basis) have been allowed to enclose it as a trade mark (or trademark). There might be more to it than that, but from what I know of it UGG simply should not have been registered as a trade mark.

Apple, on the other hand, do operate an online retail facility known as the App Store, which gives them a legitimate reason to wish to register that name as a trade mark. It is relevant that the name of the store reflects the first part of Apple's corporate name, but probably more to the point is that given the success of its iPhone and iPad the App Store has probably achieved widespread renown in a very short time. If so, it functions as an indication of source - in other words, it is a trade mark. I guess Apple will have to argue that it is distinctive enough, and that it isn't merely descriptive or generic, but if they can, they should have the trade mark. Their application is not a bid for world domination so much as an attempt to protect an important sign in its corporate portfolio - and (here's the point) if the law gives it a chance to register it, the company owes it to its shareholders to do so. Especially if, were it to hold back, someone else might grab it first.

That being the case, I beg to differ from what appears (from the summary) to be the thesis of the MIP article. The writer of that article, Eileen McDermott, notes that under the Trademark Technical and Conforming Amendment Act of 2010, the US Patent and Trademark Office asked stakeholders for comment on a number of questions relating to two topics: "(1) the extent to which small businesses may be harmed by litigation tactics the purpose of which is to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner; and (2) the best use of Federal Government services to protect trademarks and prevent counterfeiting." I know of plenty of examples of such bullying, from the UK and EU (and I would be surprised if the same thing did not go on in the US), but I don't see the Apple case as one - and as for UGGs, the problem there surely is that someone (at the USPTO) has permitted an undeserving trade mark to be registered. Both highlight defects in the system, which are not limited to the US, but not the defect identified by MIP.

Sunday 23 January 2011

32RED CTM infringed Adwords don't compromise registration of trade mark

I've never understood roulette, or indeed gambling in general. It mystifies me why rational people should throw their money away in that fashion. Perhaps it's just that people aren't always particularly rational.

I did however once spend an evening in a casino, in the company of the doyenne of law lecturers, that remarkable man Ray Snow. He's the man who woke me from my reverie on my 21st birthday, the first time in my life I had been obliged to present myself for education on my birthday:having been born in August, school and university had never sullied the big day, but the College of Law was not so forgiving back in the days of Part IIs (a concept which few now seem to remember). Later I found myself recording lectures with him and then delivering some face to face. We were in Leeds, speaking about the reform of UK competition law, and after the gig he repaired to a nearby casino where it seemed he was well-known.

These days there would be no need to wander the mean streets of downtown Leeds: one would simply go online to throw away one's money, though (as with all manner of online activity) one would lose the human interaction that seemed to me to be the best reason to go to a casino. 32Red Plc (A Gibraltar Company) v WHG (International) Ltd & Ors [2011] EWHC 62 (Ch) (21 January 2011) is a trade mark case arising out of precisely this sort of online activity.

Why 32Red? It is (I now know!) a roulette score, so when it comes up the croupier will call it out. The numbers on a roulette wheel (invented, in a primitive form, by no less a person than Blaise Pascal, better known for his wager than for his gambling) appear on a red or black background. 32 happens to be the number next to zero but otherwise has no special properties - it is an arbitrary choice for a trade mark. Indeed, given that offers more games than just roulette (as do other operators) the allusion to roulette is itself somewhat arbitrary.

The claimants had a successful business (indeed, from reading the judgment of Mr Justice Henderson in the Chancery Division, a very successful and well-known) operated from Gibraltar but aimed at punters in the UK. They also had registered Community trade marks for the 32RED word mark and a figurative mark containing the same textual material. When another business started up as 32VEGAS, regulated first in Antigua and then in the Canadian Mohawk Territory of Kahnawake but prohibited from advertising in the UK, 32 Red wrote to them and to the Kahnawake Gaming Commission but, concluding that it wasn't going to cause them much damage anyway, they didn't pursue the matter.

That changed when the William Hill group acquired the business, and started to compete head-on. 32Red sued, claiming infringement under Article 9(1)(b) and (C). The judge concluded that the 32 element of the trade marks was the important part, so they were similar, and that there was a likelihood of confusion between the two. This was not so much because punters would find themselves playing on the wrong site, but that they would assume there was an association between the two - whether a positive one, encouraging them to use 32Vegas because they thought it was associated with 32Red, or a negative one, a bad experience with 320Vegas causing them to avoid 32Red.

Counterclaims for invalidity of the registrations based on descriptiveness and non-distinctiveness were rejected as hopeless by the judge, but more interesting is the argument that by bidding for Google Adwords comprising 32 and a further element (including 32Vegas) the claimants had made their CTMs deceptive under Article 51(1)(c), so they should be revoked. The Adwords had created a link between the claimant's business and other "32" marks or names. Had this argument been accepted, it would have changed the legal landscape in which Adwords operate - but it wasn't. The judge thought that Adwords were well understood by consumers, who would not be confused when their search directed them to they would understand the difference. What he didn't do, though, was consider the doctrine of initial interest confusion, which the Court of Justice told us did not exist in EU trade mark law (in the Google Adwords case), but which the High Court admitted a little later, in the Och-Ziff case (which I noted here) - judgment in which was handed down on the last day of the hearing in the 32Red case, so although he quoted from it (though only to enhance the authority of an earlier Appointed Person decision) it's entirely understandable that he didn't go for initial interest confusion - and of course neither did the parties.

Finally, there is the small matter of a UK trade mark for 32, applied for only after proceedings had been issued (necessitating an amendment to the pleadings). This strikes me as rather like the sort of absolutism that so often offends me, but in this situation it is a legitimate attempt to strengthen the case against the defendant. It is clear from the judgment that the 32 element in the CTMs was considered distinctive, and for much the same reasons the challenge to the validity of the registration of the simple 32 UK trade mark was rejected. Perhaps it does foreclose and deplete the stock of available trade marks, but it seems from the case that no other online casino can have a legitimate reason to use that arbitrarily-chosen number as or in a trade mark.

Sunday 16 January 2011

Dramatising the ethics of intellectual property

If I find this intriguing, it might be a reflection of nothing more than my ignorance of the theatre in general, but a review of  Ira Lewis's Chinese Coffee at the Flight Theatre in Los Angeles caught my attention this morning as I enjoyed my first cup of coffee and did a little gentle Internet surfing. The review says that the play is "a weighty examination of a heated argument that treads a range of themes including the blurred boundaries of an old friendship, poverty for the sake of art, regret, and the ethics of intellectual property through the lens of two perpetually disagreeable and jealous old friends."

It also goes on to say that the dialogue (this is me paraphrasing) is pretty lame, but that the actors' "meta-communication" (nice expression, new to me) makes up for that. Judging by the extract here, the writing does seem to lack something - and presumably, by reason of its selection this must be a good bit. But for Al Pacino to have acted in and made a film of it is quite a compliment.

The plot turns on one of the character's latest novel, which he has shown to the other who realises that it is the story of their relationship. Quite a promising theme, but am I alone in thinking that to analyse it in terms of intellectual property shows a somewhat unhealthy obsession with the subject? The second character might well feel miffed at the first's use of the story, but where's the IP - except in the broadest sense? This sort of thing should, I think, be kept in the field of human relationships without reviewers starting IP hares like that running.

Tuesday 11 January 2011

Intellectual Property Theft

So obviously impossible. An oxymoron. It has its uses as a rhetorical tool, perhaps, but it's one of the many things that drove me to write a Dictionary of Intellectual Property.

Doonesbury has taught me more than just about anything in my entire life (until last week, at any rate) and this morning I came across the verb "to bogart". The fact that it has taken me until now to do so shows that I was in fact really quite young and innocent in the sixties, and didn't listen to the right music. Nor did I see Easy Rider until rather later. I'm still innocent, but have become rather older since then - though I'm in the process of becoming younger just now, as my half-Marathon performance demonstrates - and I do sometimes listen to the right music, though the journey back through time often disappoints, falling short of the uplifting experience I hope for.

The expression derives (according to impeccable sources such as Wiktionary) from Humphrey Bogart's tendency to keep a cigarette between his lips rather than taking drags and removing it in between, apparently to avoid continuity problems. In the sixties it came to mean failing to pass on a joint as promptly as good manners dictated (see Don't Bogart That Joint, by Lawrence Wagner (lyrics) and Elliot Ingber (music), the original version of which appeared on the soundtrack of "Easy Rider" performed by Fraternity Of Man, subsequently covered by Little Feat) and from that it has developed the meaning of stealing - perhaps appropriating is a better word, though the Oxford English Dictionary, in a surprisingly lengthy entry, does give "steal".

As for Doonesbury - the usage is not in the strip (though I bet it's there somewhere, in the 40 year old archive) but in the answer to a FAQ on the website - appropriate, since the question is about that memorable character from the strip, Mr Jay, an  anthropomorphic joint. The answer provides a (broken) link to a cartoon in which he features, with the plea: " Just don't bogart the strip."

With the connotations of wrongful appropriation, greed, and sharing, this is a much more complex notion than that of theft, and therefore a perfect expression to apply to what people intend when they speak of intellectual property theft. I'll be writing a definition shortly, and cross-posting this to the Dictionary of Intellectual Property Law blawg in the meantime.

Monday 10 January 2011

On the burning of books

So, they are burning books in China - again.This time it's counterfeit ones, but the story stirred something in my memory: I managed to mention the Burning of the Books in my first book, giving it a spurious air of scholarship and erudition - spurious because, in those pre-Wikipedia days, it would have been too time-consuming to find out more.

Back in the days of the Qin Dynasty, between 213 and 206 BC, books were burnt because the ideas in them had (it was believed) to be suppressed. Now they are burnt to take the copies out of circulation so that real copies might thrive, and pour encourager les autres. Alarmingly, the second part of the Qin Dynasty policy's name is the Burying of the Scholars: I haven't heard of the Burying of the Counterfeiters yet, but who knows what might be on the agenda at the US Department of Commerce - at whose behest, I have little doubt, China is doing at least some of this book-burning (and its modern equivalent, CD burning, though that phrase already has a somewhat different meaning).

A friend who writes English as a Foreign Language books once told me that if he had only a fraction of a penny for each illicit copy of his books that is circulating in China, he would be a very rich man. But I have a suspicion that the beneficiaries of this official biblioclasm (or libricide) are likely to be multinational publishers rather than hard-up authors (not that the friend I mentioned ever seemed hard-up). There's something deeply disturbing about the idea of burning books, whatever the motives - it isn't likely to lead to greater respect for books in general.

Sunday 9 January 2011

Dictionary of Intellectual Property Law

The proofs have been checked and a new blawg created to act as an updater and forum for suggestions. I have already posted a handful of new definitions, and there are more waiting in draft. Do go and look, and return to it frequently. I'm looking forward to receiving feedback from readers, once there's something to read - which should be the end of next month. Order your copy now (use the link over there on the left of the page).

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