New copyright regulations coming next year

The government has published a statement  giving details of the changes to copyright law that will come into effect in the first half of next year, mostly concerning exceptions to protection (permitted acts, as the government should call them, to be consistent with the scheme of the legislation). It mentions 'relatively small but important' changes, which will remove 'up to' 45 pages of unnecessary rules and regulations from the statute book. Unnecessary? I find it impossible to understand how legislation can be regarded as 'unnecessary'. Undesirable, obsolete, unwanted, unduly complicated, perhaps, but never unnecessary.

The changes, of course, are inspired by the Hargreaves Review, which seems to have inspired more nonsense every time I look at it. Hargreaves it was who proposed new permitted acts to enable parodists to ply their trade without fear of being sued for infringement - as if good parody needs such a privilege, and as if it did not amount to removing a perfectly legitimate revenue stream for the copyright owner. The problem is that what passes for 'creativity' these days is less about making something pretty much from scratch (of course nothing is ever completely from scratch) but reusing and adapting what others have already created. Soon there won't be anything original to be found - perhaps that will remove the need to modernise copyright law.

The problem isn't that copyright works can't be reused, the problem is that too much is protected by copyright to begin with, and it would be far more constructive to raise the threshold for protection by making the originality requirement a bit more demanding - to require true originality, rather than mere independent creation. But that's another story.

In addition to the parody thing, the legislation will make some useful changes to Chapter III of Part 1 of the much-hacked-about Copyright, Designs and Patents Act 1988. The existing permitted act for archiving and preserving will be applied to all types of media, and to museums and galleries as well as libraries and archives. There will be new rights to copy material for private use and to conduct data analysis for non-commercial research. There will also be a new permitted act to quote copyright-protected content for purposes extending beyond criticism, review or news reporting.

The Department for Business, Innovation & Skills claims that businesses stand to save more than £25 million as a result of the planned changes to copyright exceptions, which is the sort of magical figure that I cannot take without a huge pinch of salt. In the audit society, everything has to be measured and costed, and Hargreaves stressed that policy in this area must be evidence-based, but I find it hard to see how figures like this can possibly be regarded as evidence. I don't think they would satisfy any legal test by which evidence is judged. No, the fact surely is that it suits the government to encourage the sort of ripping-off that can be cloaked with the title 'parody', because it's trendy and looks as if it amounts to modernisation.

At the same time, the government is legislating to support the idea of regulating the conduct of collecting societies by means of Codes. The idea is that the collecting societies should regulate their own activities with voluntary codes, but if this does not work the Government is giving itself powers to intervene.

Patent Erosion 2013: What Would the Founding Fathers Think? - IPWatchdog.com | Patents & Patent Law

Here  is an interesting review of developments in patent law in the US over the past year, by Gene Quinn. I am pleased to be reminded of some of those quotes, and introduced to others that I haven't seen before. Gene's posting reads on its face like a plea for stronger patent rights, but on deeper reflection it's more a call for a better balance, which is what the entire intellectual property universe could do with. His observations about the relative roles of large and small businesses in innovation are thought-provoking (or perhaps they just show that I haven't really thought enough about this?): if innovation comes mostly from small businesses, universities, and the like, and large corporations merely pick up the fruits of others' labour, what constitutes a troll is a subtle matter - although the key element in the definition of a troll is the 'non-practising' part.

What is clear, from Gene's comments and those of many other people, is that the intellectual property systems (and I use the plural deliberately) need to be adapted to the needs of smaller businesses, yet everywhere I look the trend seems to favour big IP owners. To reverse that trend is a huge challenge, but as long as the balance is tipped in favour of big business there will be calls for revolutionary changes in intellectual property protection. Is radical reform the way to stave off revolution? I am sure that legislators everywhere need to think carefully about their presumptions, which too often come down to the simple proposition that intellectual property is a Good Thing and therefore more of it is even better.

Thanks, Gene, for an valuable piece. I would have added that you ought to review and rewrite and correct before pressing 'publish', but the beam in my eye prevents me from drawing attention to the mote in yours (Matthew 7: 3-5).

Fix Copyright!

Fix Copyright!  is a campaign umbrella which seems to have been formed in response the the European Commission's consultation on copyright (on which, see separate posting although I haven't posted anything of substance on the topic yet). It assumes that copyright is broken, which I think might be a slightly extreme view of things but isn't far out. That begs the question, though, if copyright is broken, should we be asking the Commission to fix it?

Fix Copyright! brings together a number of organisations which, broadly, could be described as pro-user. Which is far from saying they are anti-copyright, but they probably take a saner view of copyright than many other organisations - rights owners and their associations.

Plans to modernise trade mark legislation backed by Legal Affairs MEPs

Plans to modernise trade mark legislation backed by Legal Affairs MEPs says this press release from the European Parliament: by no means an unqualified Good Thing, especially for the small businesses for whom the trade mark system is little more than an unwelcome tax.

IPse Dixit: Copyright in ideas

If there is no copyright in an idea (which, in fact, is not true, but has enough validity for my purpose), how do we account for Elanco v Mandops [1979] FSR 46?

I can't point you to a readily-accessible online copy of the judgment. As it predates the world wide web (1980, at the very earliest) there is virtually no commentary on it, yet it looms large in undergraduate IP courses, where it causes confusion. That probably makes it worth jotting down my thoughts on it: part of a series of postings on topics of general interest for students of intellectual property, perhaps. I should try to think of a snappy label for the series ... how about IPse Dixit (literally, 'he said it himself', although figuratively it means a dogmatic assertion - never mind, it's good enough, and in fact the figurative meaning is pretty good anyway!).

In the case, the plaintiff had invented a new herbicide. It had a patent for the herbicide, but as patents do it expired, and the defendant started making its own herbicide to the same recipe.

When you sell something like herbicide you have to make sure buyers know what to do with it. Not only do you want to make sure they appreciate what plants it will deal with, you don't want them poisoning themselves, or livestock, or wildlife. The instructions provided with the plaintiff's products (on the side of the barrel) contained information drawn from public sources, including the results of field trials carried out by the plaintiff itself and by independent research institutes. The instructions were apt to be referred to as a compilation - which of course is a species of literary work.

To start with, the defendant produced instructions for its product using the plaintiffs' material. The plaintiff objected that it was too similar, and the defendants recast their instructions several times. It did not work. On an interlocutory application, the judge took the view that the final version of the instructions was arguably infringing because the defendants had not returned to public sources but simply drew their information from the plaintiff’s instructions. The Court of Appeal, refusing the appeal, accepted that the instructions were a copyright literary work, and noted that a great deal of time and labour had been spent in putting the compilation together. It stressed the skill and labour expended in developing the compilation, protecting not only the expression of the information but also the process by which that expression of the information came into existence.

Copyright lawyers are often asked, 'how much do I have to change to avoid infringing copyright?': and the answer is always that you will never avoid infringing copyright if you start from that point.

It is often said that Elanco effectively secured a monopoly over the information contained in their instruction despite it being in the public domain. But in fact they only secured exclusive rights over their compilation of material collected from the public domain, and that is a very different matter. Copyright does not prevent others using the same sources, but it certainly prevents others from saving themselves the trouble of consulting those sources by taking material from someone else's compilation. In his judgment, Goff LJ. cited with approval a passage from the judgment of the Vice-Chancellor in Scott v Stanford (1867) L.R. 3 Eq. 723: "No man is entitled to avail himself of the previous labour of another for the purpose of conveying to the public the same information".

So how, you might ask (especially if you are an examiner), can this be reconciled with Green v Broadcasting Corporation of New Zealand [1989] 2 All ER 1056 (PC)?  The answer seems pretty simple: Hughie Green's problem was that he could not point to a copyright work in which his rights had been infringed. The defendant convinced the Privy Council that all it had taken was ideas. There was no dramatic work to copy, and as for copyright in a broadcast, they had made their own programme. Contrast this with the Elanco situation where the Court of Appeal was satisfied that the plaintiff had made a compilation.

It remains difficult to distinguish between ideas and expression, or as Lloyd LJ said in Baigent and Leigh v Random House [2007] EWCA Civ 247 (28 March 2007), no clear principle 'is or could be laid down ... to tell whether what is sought to be protected is on the ideas side of the dividing line, or on the expression side.'

Iron Maiden Tracks Down Pirates…. And Gives Them Concerts | TorrentFreak

TorrentFreak  reports a variation on the frequently-heard theme that either illegal downloading actually enhances sales of legit music, or it doesn't. Unfortunately, it is now recognised as inaccurate: it seems that it's more in the nature of speculation about what Iron Maiden (or anyone else) could do with the data that they can get hold of about downloading, and Iron Maiden were merely used as an example - but chosen for the very good reason that they have a record of going where the fans are, even if those fans are downloading illegal material. The CiteWorld article tells us that the band has played some very profitable gigs in South America.

It's hardly surprising that the people who download illegal stuff are often supplementing spending on legitimate stuff, including concert tickets - it's not that people buy the illegal stuff and trade up to the real thing, in the way that I used to tape friends' LPs (and allow them to tape mine) before buying a copy of the record if I liked it (and wanted to hear it properly). It's also not far removed from buying bootlegs when you've already got all the albums the record company sees fit to release, and it's also not far removed from allowing fans to tape gigs, as the Grateful Dead always did and Robyn Hitchcock (to name one) does now.

So they would be identifying where's a good place to go on tour by using data about downloading. Clever, huh? As you'd expect from a band with a Hartlepudlian guitarist. I didn't knowingly go to junior school with him.

Perhaps now that it's had so much exposure, Iron Maiden or someone else will think of actually doing it. That would be a Good Thing.

BBC News - Oxford University wins claim against Oxford Law School

BBC News has this entertaining story which deserves a wide audience. The Oxford Law School was located in Eastleigh, Hampshire, a railway town 62 miles down the A34 and before it became a seat of legal learning famous for the first flight of the Spitfire (manufactured nearby in Southampton), as the place where Benny Hill had his first job (on Woolworth's, and his second job, as a milkman), and as the constituency of Chris Huhne before he became Steward of the Chiltern Hundreds.

The case is not yet reported on BAILII but rest assured I will let you know when I see it there. It is a judgment of Judge Janet Lambert in the trendily-renamed Intellectual Property Enterprise Court (the 'enterprise' part allowing the audit-obsessed government to tick a box somewhere, I assume). The defence seems to have been that even a moron in a hurry would not have been deceived (the BBC report elides trade mark infringement and passing off, so it is  not clear what cause of action was involved: perhaps both), which indicates that the principal ought to attend some of the School's lectures - that hypothetical individual plays no part in determining whether deception or confusion occurs. As I wrote of that phrase in my Dictionary of Intellectual Property Law:

A regrettable expression in this day and age, first used by Foster J in Morning Star Cooperative Society v Express Newspapers Limited [1979] FSR 113 (a different day and age, perhaps). The publishers of the Communist Party newspaper sought an injunction to prevent Express Newspapers from launching a new tabloid newspaper under the name The Daily Star, which was light on politics (especially of the left-wing variety) and heavy on the sort of photographic works not seen, for ideological as well as aesthetic reasons, in the Morning Star.

The judge asked whether the plaintiffs could ‘show a misrepresentation express or implied that the newspaper to be published by the defendants is connected with the plaintiffs’ business and that as a consequence damage is likely to result to the plaintiffs’ and stated that ‘if one puts the two papers side by side I for myself would find that the two papers are so different in every way that only a moron in a hurry would be misled.’

Study: EU Citizens Value IP, Yet Find Some Infringement Acceptable | Intellectual Property Watch

Study: EU Citizens Value IP, Yet Find Some Infringement Acceptable | Intellectual Property Watch

EUROPA - PRESS RELEASES - Press release - Licences for Europe: industry pledges solutions to make more content available in the Digital Single Market

EUROPA - PRESS RELEASES - Press release - Licences for Europe: industry pledges solutions to make more content available in the Digital Single Market

EUROPA - PRESS RELEASES - Press release - Copyright –Commission launches public consultation

The Commission has launched a public consultation  about its plans to extend its copyright empire. In fact, it did so earlier this month, when I was otherwise engaged, and I have just got round to making something of it here. You might have noticed that I have taken to posting links to matters of interest and then coming back to write them up later (or not, as the case may be). I hope that at least makes this blog fairly comprehensive, if a bit thin on comment.

Something about the Commission proposing further incursions into the copyright field makes me uncomfortable. They have given us until 5 February to tell them what we think, and Fix Copyright! (see separate posting) has conveniently provided online assistance to those who wish to make comments: I hope I'll have time to make my views known, to the Commission and on this blog.

Review of the EU copyright rules - Consultations - The EU Single Market - European Commission

Review of the EU copyright rules - Consultations - The EU Single Market - European Commission

Russia and US join TMview

I guess TMview  must be a whole lot more useful now, as two big countries have joined it. You can now search Russian and US trade marks using the TM View portal. The announcement from Rospatent is here. So I had to give it a try - and looked up the trade mark for my favourite Russian product, Velle, best described (I think) as very fine porridge with fruit flavours - perfect nourishment for long-distance runners, but as far as I know unavailable in the UK.

NIPC Law: Clause 13 of the Intellectual Property Bill

An excellent critique of the intellectual property world's equivalent of the Dangerous Dogs Act - an analogy that hadn't occurred to me before - from Jane Lambert on her NIPC Law blawg. The Dangerous Designs Act, perhaps.

The government, committed as it is to the audit society, claims to make policy on evidence-based grounds: at least that's what the last inexpert (non-lawyer, even) reviewer of intellectual property law recommended, and the government seems to have swallowed his line (and hook, and sinker): but just about all the evidence shows that this is as bad an idea as any government has ever had. I don't know whether even the axe-grinders at ACID think it's a good idea, but accommodating their views would be as clever as having the IP lawyers at Ford draft Part III of the Copyright, Designs and Patents Bill back in 1987. I'm sure Bob Drakeford and Peter Orton would have loved to do it, but the government wouldn't even have looked at the result. Why is ultra-strong protection for designs now seen as a Good Thing?

BBC News - Wensleydale cheese granted protected status

BBC News reports that my favourite food (after tiramisu) has been given protection - or, rather, to be precise and pedantic, its name is now protected. But actually the story reveals that the protected geographical indication is in fact the tautology (or perhaps pleonasm) 'Yorkshire Wensleydale.' According to Food Manufacture UK (which sounds to me like an oxymoron, or at least it should be) back in 2006 when an application for a protected designation of origin was made, the applicants went for the tautology because it would give them a 'quick win'. The PGI application can be read here, complete with egregious comma splice - why can whoever commissions these documents not find someone familiar with the rules of English grammar, and with some notion of style, to do the work? And the application as published in the Official Journal C231 09.08.2013 (without comma splice) is here. But it looks to me as if the application that was originally made (dated 2007) was for a PDO and has resulted in the registration of a PGI. (It's not as if a PDO has been cancelled: the distinction of being the only UK registration to be cancelled is the Newcastle Brown Ale PGI, which became necessary when brewing was moved to what might be called the wrong side of the Tyne, though having been born in County Durham and raised there until the implication of the Redcliffe-Maud Report I would never use that expression). So they went for the more exclusive right and settled for the weaker one.

Conference Report- Hot Topics in IP (23rd October 2013)

Lexis Nexis gathered together a formidable group of speakers to provide an over view in their respective field of knowledge and authority. and called it Hot Topics in IP. The venue was the Thistle Hotel, Marble Arch London, and in the chair was Phil Sherrell, Partner at Bird & Bird.

Hats off to Lexis Nexis for putting this together. Unusual not to fall asleep in a seminar of this length but trust me there wasn’t a drooping eyelid in sight the whole day, the standard of each seminar was impeccable and packed with information and only brief snippets are provided here. Definitely worth attending the next series of seminars the first being IP for in-house Lawyers scheduled for December 2013.

Mark Owen (Taylor Wessing) gave some insight on the latest changes to UK copyright law and touched on impending legislation in the form of the IP Bill 2013 and the Enterprise Reform Act 2013 and that the exception for Private copying being a definite inclusion; Fair use (USA) vs Fair dealing (EU); the impact of the parody exception and how fair dealing will apply to it; quotation (draft legislation) and infringement with some useful suggestions on what might result in infringement and also the question of data and content mining with examination of s29A CDPA and the interpretation of words such as research, non-commercial and lawful access. He considered data and content mining and posed the question “are exceptions turning into rights”? There appears to be no case law!

Martin Howe QC from 8 New Square in his presentation titled “Are image rights now protectable in English law?” illustrated the law of passing off as summarised by J Laddie in Irvine v Talksport [2002] and considered amongst other cases, Rihanna’s passing off case - which he won!

Dr Birgit Clark, Senior Trade Marks Practitioner, Baker & McKenzie gave a presentation entitled “Recent developments in trade mark law", giving some insight on keyword advertising in Interflora v Marks & Spencer and elaborating on origin function and dilution. She considered other European and domestic legislative developments and concluded that there is still a lot of fine tuning to be done by the National courts in interpreting CJEU’s guidance.

Neville Cordell from Allen & Overy took a walk through development in design rights and illustrated comprehensively why in Lucas Film v Ainsworth Lucas film was successful in suing Ainsworth both in the US and English courts for copyright infringement although Ainsworth denied that copyright existed in 3D articles and asserted a defence under s51 CDPA 1988 to the design drawings. The Supreme Court in its policy considerations recognised an emerging legislative purpose in protecting 3D objects in a graduated way.

In his overview of the Intellectual Property Bill he drew attention to what he considered the most controversial proposed change, that to s13 of Registered Design rights which makes the deliberate copying of a UK or Community registered design a criminal offence.

Mark Ridgeway, Allen & Overy LLP in his illustration of recent developments in breach of confidence/trade secret cases, considered Force India v Aerolab. In the first instance Arnold J held Aerolab was entitled to work for team Lotus because by that time it had accepted a repudiatory breach of contract on the part of Force India. However, Aerolab was in breach of the contract (alternatively liable in equity) because confidential material belonging to Force India had been misused but that the extent of copying was not as great as Force India had claimed; and resulted in an award of damages of €25,000. On appeal, €25,000 was upheld as a reasonable licence fee by the courts which considered that little other benefit had actually been gained.

Guy Burkill QC of Three New Square gave a brief summary on key developments in mobile phone patent litigation and patentability of computer programmes - a burgeoning field! He also considered that a further issue that may affect many patents in the field of smart phones is “excluded subject matter” particularly with the rise in “apps and firmware”. Some hilarity was caused by the notable squabble between the UK and EPO as to the meaning of words.

Paul Gardner (Osborne Clarke) did a remarkable job of providing an overview of the developments in IP law and practice in the interactive entertainment business. He focussed on the question, what is a computer game? He described the multiple copyrights involved and the myriad questions this raises, not least of which is the headaches it is all causing for publishers today, and asked who knows what the future holds?

Duncan Ribbons from Redd gave a much welcomed overview of IP litigation in the wake of the Jackson reforms. The upshot is: apply the cost benefit analysis to each stage of litigation, make sure you plan rigorously at the outset and expect tougher application of the rules. We will all wait to see if these reforms do indeed lead to faster and cheaper litigation. A perfect distillation much welcomed at the end of a day full of information and questions.

UK Government Funds Anti-Piracy Outfit With Taxpayer Money

UK Government Funds Anti-Piracy Outfit With Taxpayer Money, reportsTorrentFreak, not the most objective of sources but frequently a saner one than some on the protectionist side. Am I right to be appalled that the government should be diverting some of my taxes to subsidise a private business offering services to well-off foreign businesses, to facilitate the enforcement of their private property rights? Of course I am. If I have to evict squatters from a piece of land that I own, can I expect support from publicly-funded services? In some circumstances, the police could become involved, but not in a straightforward civil dispute, so why should the government be wasting public money in this way when much more deserving causes are suffering cuts?

Cadbury colour bar indefensible?

Cadbury has lost its five year battle to register a distinctive shade of purple (Pantone 2685C) as a trade mark for its milk chocolate bars. Cadbury’s argument that registering a specific colour would not give them unfair competitive advantage was rejected by the Court of Appeal, which ruled in Société Des Produits Nestlé S.A. v Cadbury UK Ltd [2013] EWCA Civ 1174 (04 October 2013) that Cadbury’s formulation does not comply with the requirements for trade mark registration, lacking ‘the required clarity, precision, self-containment, durability and objectivity to qualify for registration’. Specifically, the definition of the ‘predominant colour’ of its packaging fell short of ‘necessary precision’ as demonstrated by the attempt to register ‘multiple signs’ using the purple shade in a variety of permutations rather than as a consistent single block of colour. Sir John Mummery added that a colour trade mark would give Cadbury a ‘competitive advantage’ and place its competitors at a disadvantage.

Cadbury, trying perhaps to salvage something from the exercise, says the right to protect the colour from those seeking to pass off their products as Cadbury chocolate remains unaffected. Nor does the judgment make colour trade marks in general unregistrable: Cadbury could have succeeded with a slightly different application, although the commercial value of doing so might explain why they went the way they did.

The application (number 2376879) dates back to 2004. The Examiner rejected it as devoid of distinctive character: however, on production of evidence application was accepted and published in Trade Marks Journal on 30^th May 2008. The mark applied for was the block purple rectangle and the description read:

The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, as being the predominant colour applied to the whole visible surface, of the packaging of the goods. [Emphasis added: we will come back to those words later.]

The goods specified were in Class 30:

Chocolate in bar and tablet form, chocolate confectionery, chocolate assortments, cocoa-based beverages, preparations for cocoa-based beverages, chocolate-based beverages, preparations for chocolate-based beverages, chocolate cakes.

Nestlé opposed, and the Hearing Officer rejected their claims which were based on arguments that what was applied for was not even a sign, let alone a trade mark, and that it could not be represented graphically. On appeal to the High Court (see our note here) Judge Birss QC upheld the Hearing Officer, and Nestlé appealed to the Court of Appeal. Nestlé also submitted that, if the issues on the interpretation of the Directive were not acte clair in Nestlé's favour, there should be a reference to the Court of Justice under art 267.

At paragraphs [20] and [21] of his judgment, Judge Birss QC had referred to the classic dictum of Cozens-Hardy MR which explains so pithily why trade marks must be kept in their box:

Wealthy traders are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure.

(Joseph Crosfield & Son's Appn ("Perfection") (1909) 26 RPC 837 at page 854.)

In the Court of Appeal Sir John Mummery endorsed the judge’s observations about the problems with exotic marks at paragraph [13]:

The judge recognised that unconventional or ‘exotic’ marks, such as colours, sounds and smells, give rise to conceptual problems, which are not encountered with more conventional trade names and logos. As the registration of a trade mark creates a form of intellectual property conferring a potentially perpetual monopoly in the mark and excluding everybody else from use in various ways, the point of principle has some public importance.

Sir John reviewed the case law which had also been gone over by the Hearing Officer and the judge: Libertel,  Case C-273/00 Sieckmann v. Deutsche Patent –und Markenamnt [2002] ECR 1-11754, Case C-49/02 Heidelberger Bauchemie GmbH v. Bundespatentgerich  ECR 1-6129 and  C-321/03 Dyson v. Registrar of Trade Marks ECR 1-687. He distilled the series of principles from them, set out at paragraph [15] of his judgment, which is worth repeating here:

"The conditions

(1) An application to register a trade mark must satisfy three conditions for the purposes of Article 2:-

(i) there must be a sign;
(ii) it must be capable of graphical representation;
(iii) it must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.

Purpose

2) The purpose of the requirements is to prevent abuse of trade mark law in order to obtain an unfair competitive advantage.

Identification

(3) Identification requirements for entry of a trade mark on the public register of trade marks include clarity, intelligibility, specificity, precision, accessibility, uniformity, self-containment and objectivity.

Multitude of forms

(4) The identification requirements are not satisfied, if the mark could take on a multitude of different appearances, which would create problems for registration of the mark and give an unfair competitive advantage over competitors.

Colour without a message

(5) Colours are normally a simple property of things, or a means of decorating things. They are not normally capable of being a sign. A sign conveys a message. The sign is capable of being registered as a trade mark, if the message is about the source of goods or services.

Colour as a sign conveying a message

(6) Depending on the facts and circumstances of the case, colours, or combinations of colours, designated in the abstract and without contours and used in relation to a product or service are capable of being "a sign."

Graphic representation of colour

(7) As for the second condition of graphical representation, in a mark consisting of two or more colours designated in the abstract and without contours, qualities of precision and uniformity are required. The colours must be arranged by associating them in a predetermined and uniform way.

Colour without form/in a multitude of forms

(8) Those requirements are not met by the mere juxtaposition of colours without shape or contours, or by reference to colours in every conceivable form, so that the consumer would not be able to recall or repeat with certainty the experience of a purchase. The scope of protection afforded by such a mark would be unknown both to the competent authorities responsible for maintaining the register and to economic competitors. Registration would confer unfair competitive advantages on the proprietor of the mark."

Those words in the verbal description of the mark, emphasised above, turned out to be crucial. Sir John held that both the judge and hearing officer had misinterpreted the verbal description. The use of the word "predominant" opened the door to a multitude of different visual forms:  over what might the colour purple might predominate? The application was for the registration of a shade of colour plus other, indeterminate, material: it was not just for a constant single colour, as in Libertel. The colour could not therefore constitute a sign for the purposes of art 2 of the Directive or section 1 of the Act. If it were otherwise:

[t]he result would not be an application to register ‘a sign’, in the accepted sense of a single sign conveying a message, but to register multiple signs with different permutations, presentations and appearances, which are neither graphically represented nor described with any certainty or precision, or at all.

Sir John concluded at paragraph [52]:

The appearance and number of such other signs would be unknown both to the Registrar, who is responsible for the proper functioning of the registration system and is faced with the decision whether or not to register it on a public register, and to competitors, who would not be able to tell from inspecting the register the full scope and extent of the registration. To allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. It would also offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage.

The other two judges, Sir Timothy Lloyd and Lord Justice Lewison, concurred (the first at a little length, the second in five words), and no need was found for a preliminary reference to the Court of Justice. The three Court of Appeal judges have done those who value the commons a favour, putting down a marker to deter would-be absolutists from trying to enclose more than they should be allowed to have. Whether they can stem the incoming tide remains to be seen, but this is an important attempt to do so.

---

Previously on IPso Jure: 2012/10 Cadbury can register colour purple as trade mark

European Commission leaflet: "Intellectual Property Rights - Europe's asset, Europe's priority

I came across this leaflet via an RSS feed, I think, and rather wish I hadn't bothered. Why on earth is the Commission churning out guff like this at taxpayers' expense? It looks like a rather oversized tri-fold leaflet, and I cannot begin to imagine what the audience for it is supposed to be. It doesn't have a lot of words in it, consistent with modern attention-spans, but those that it does have are rubbish. Commissioner Barnier, who should know better, seems to be saying:

Intellectual property (IP) is the backbone of a competitive European economy, creating jobs and bringing innovative products and services to consumers and companies.

Let's just deconstruct that ... Well, the first thing to annoy me is that the author (and let us assume that the Commissioner did not write it himself) subscribes to the defined-terms-in-brackets school of drafting, even when what goes into the brackets is an abbreviation that no-one is ever going to mistake for something else. Not sure about the backbone metaphor, but let's not fall out over that - especially when once we are past that we are into serious, industrial-strength nonsense.

Consider those claims for intellectual property:

• '... creating jobs...' How does that work? Jobs can only be created by employers. Those employers might have businesses that rely, to a greater or lesser extent, on intellectual property, but that is at least one stage removed from the IP creating the job. IP can't create anything: it just is. By being, it might contribute to an environment in which jobs are created. Equally, abolishing intellectual property would create a lot of jobs, but they wouldn't be created by the absence of IP, they would be created by enterprising businesses making all the things that intellectual property rights previously prevented them from making: pharmaceuticals, DVDs, handbags and the like. Not an attractive proposition, but possibly as effective (or more so) as a job creation measure as strong IP rights.
• '... bringing innovative products and services ...' Here's a classic illustration of the dangers of generalising about IP. Trade marks have an effect on how goods and services get to market, and what happens when they get there, but there is no way in which they affect how innovative the goods and services are. And of course copyright has nothing to do with innovation, though we can concede, can't we, that creativity is not a million miles removed from innovation, so in a piece of non-legal writing it might be allowed. But that still leaves my biggest objection, the allusion to the magical powers of any legal right to deliver anything to anybody. No, the mere existence of intellectual property rights doesn't do that. It takes a James Dyson to innovate, and the business he built to bring new vacuum cleaners to the market. Without intellectual property rights he might never have started, or he might have contented himself with his Hoover Junior vacuum cleaner modified to generate cyclones and therefore much more effective than it had been when it left the Hoover factory - but to ascribe to IP the magical power to do all that: well, it's a bit of an insult to inventors, isn't it? Actually, more than a bit of an insult.
• '... to consumers and companies.' The problem is, you start off something like this and it just has to be a three-part list. I think it's a well-known fact in rhetoric, and I remember reading it in Max Atkinson's 1984 book, Our Masters' Voices, which also taught me about the value of the pause in a speech - a literal claptrap, an indication to the audience that you have reached a point when applause would be appropriate - and which I used to telling effect in a speech to Conservative Party conference in 1983, except for the fact that I hadn't paused to invite applause, I had paused while I worked out what to say next. But it certainly worked. Anyway, this third part of the three-part list is here to make up the numbers, though it's worth observing that any benefit that does not trickle down to consumers is hardly worth having.

The stuff inside the leaflet reads like a conventional justification for the intellectual property system, adapted perhaps to the purpose of justifying the continued and expensive existence of the European Commission - it can hardly be said that without the Commission there would be no IP - nor even that without the EU it would be lacking. But that leads me to the last thing that irritates me about this leaflet: its title refers to 'Europe's asset, Europe's priority'. Another instance of the expansionist Commission speaking for all those countries which aren't part of the Union. It could almost make me wish the UK was among them.

IPse Dixit: On the meaning of originality

The best way to learn something, I am sure, is to write a book about it. Perhaps these days people would choose instead to blog about it, or record podcasts, but if so, the idea isn't all that different. And the best way to learn about recent developments in a field is to update a book you've already written, as I am doing at present - or produce regular podcasts, as I have done in the past.

When I wrote my first book, back at the end of the eighties (it came out in 1991, and I was convinced that along with my PhD which I received at about the same time it would secure fame and fortune and a flourishing legal practice), the requirement for originality in a copyright work was dead easy. As the hero of every law student of my generation (and the bane of the lives of more experienced lawyers such as The Master), Lord Denning, said in the debates on the Bill that became the Copyright, Designs and Patents Act 1988, the word "original" is "fairly simple" to understand: it "means that the author has written it himself and not copied it from someone else" (HL Debs vol 491 col 815). A work did not have to be novel or unique: it was only necessary that the author should have created the work independently and in so doing exercised a sufficient degree of skill, knowledge, creative labour, taste or judgement to justify protection. (This summary of the case law at the time was helpfully provided by the government in its Notes on Clauses, an extremely helpful commentary on the Bill to which I had access as part-time research assistant to Rt Hon Sir Geoffrey Pattie MP.)

Perhaps the problem with Lord Denning was that everything was simple to him. That was certainly a major attraction of his judgments. If he took a (refreshingly) simple view of things, so too did Peterson J in the famous University of London v University Tutorial Press case [1916] 2 Ch 601 (I am always intrigued when I cite a case decided during one of the great wars of the 20th century, which give a telling indication of how life went on throughout), when he said "what is worth copying is prima facie worth protecting", a proposition which, even with the important Latin words, is usually discounted by judges as soon as they have quoted it although they often go on to give it a great deal of credence.

Without the Latin, Peterson J's dictum would conveniently answer every question about copyright infringement: the fact that copying had taken place would automatically mean that an infringement had been committed. That is certainly a nice simple approach, so thank goodness the "prima facie" adds some uncertainty, otherwise there would be no point in being a copyright lawyer. Whatever its use as a test for copyright protection or infringement, though, the judge's words from nearly a hundred years ago reveal one important fact - that the subsistence of copyright and what constitutes infringement are in some respects the same question. An infringement requires that the defendant has taken (I deliberately use a word that is neutral as far as concerns the quality of the act) a substantial part of the work, and to be substantial that part must certainly be original.

It doesn't stop there. Not only are originality and substantiality mixed up with each other, but closely associated with those concepts are the infamous idea-expression dichotomy and the whole notion of what is a "work". So there might be some simple propositions to play with, but this is a complicated area where several different concepts meet - a bit like the bottom of the A-pillar of a motor car, the biggest challenge facing the designer because so many lines meet at the one point.

But what the law said in 1988 (and the Act didn't change that) is no longer the end of the story. First of all there came the software directive (Directive 91/250/EEC) which imposed a special originality test: a computer program had to be its author's own intellectual creation. Later the database directive (96/9/EC) said the same thing, and more recently still Article 6 of Directive 93/98/EEC (now 2006/116/EC) on the term of protection of copyright and certain related rights stipulates that an identical test should apply for photographs. However, that is a minimum standard of originality, and Member States may provide for the protection of other photographs. On the face of it, the 1988 Act does just that, allowing less original photographs to be protected. (incidentally, you will search the 1988 Act, as amended, in vain for mention of the special tests for originality of computer programs or photographs, although the wording from the database directive is there.)

At this point, let me pause to observe, perhaps rather unfashionably, that to my mind the low standard of originality required in English (or UK) copyright law leads to the regrettable situation that all sorts of undeserving stuff gets protection. It leads in the field of copyright to the sort of intellectual property hyper-inflation that can be observed elsewhere - huge numbers of over-wide trade marks, patents covering the most exiguous  advance in technology, designs protecting subject-matter with no eye-appeal - and it ought to be curbed before it is too late. Imposing a requirement for something to be the author's own intellectual creation would conveniently put copyright back in the box in which it belongs.

The Court of Justice's judgment in Infopaq put the cat among the pigeons. By the time of the judgment, of course, the legislative framework had been extended by the addition of Directive 2001/29/EC, the so-called information society directive, and although that instrument says nothing about the test for originality the court concluded that to be consistent with the big idea of harmonisation of those bits of copyright law which could cause problems for the single market the same level of originality was required of all manner of literary, dramatic, musical and artistic works, not only those subject to specific rules: and it found justification for this approach in the use of the word "work" in the directive. Copying part of a copyright work would be an infringement if that part contains elements which are the expression of the author's own intellectual creation. As far as the Court is concerned, substantiality has nothing to do with it (quite rightly, I suppose, as that isn't something dealt with in EU law). Questions of infringement fall to be decided by reference to originality: subsistence and infringement are different sides of the same coin, perhaps.

Hooray! I have often thought that the expression "original work" was a tautology. If it's your work, it is original to you. It would be nice if we could drop the unnecessary adjective, because (as the world ought to know, but usually fails to appreciate) lawyers - good ones, anyway - abhor unnecessary words. A harmonised approach requires the stronger test, borrowed from German and Dutch law, a matter that I have repeated so many times that I really ought to go and find authority for it. (Here we are: §2(2) of the Gesetz über Urheberrecht und verwandte Schutzrechte: 'Werke im Sinne dieses Gesetzes sind nur persönliche geistige Schöpfungen', and according to Wikipedia on Dutch copyright law, 'the Dutch Supreme Court has ruled that to be considered a work, it should have its own, original character with the personal imprint of the author (HR 4 januari 1991, NJ 1991, 608 (Van Dale/Romme))', which indicates that the requirement is implied by the use of the word 'work'. And while I am digressing, and to give myself a little language lesson, the Russian Civil Code, Article 1259(7) uses the expression самостоятельным результатом творческого труда автора - 'independent result of the creative work of the author'.)

Even so, there's a considerable distance between the position of the Court of Justice in Infopaq and what the English courts have been saying for years. Both approaches could dispense with the adjective, because the meaning of the word 'work' alone would do the job in both systems. It still depends on the nature and quality of the work. In the English courts, a bead of sweat on the author's brow would do, whereas the continental courts (including the one in Luxembourg) look beyond the sweat, at the inside the author's head. So we still have to go back to the meaning of 'work' and the principle of harmonisation to reach the conclusion that the requirement for intellectual creativity is implied.

In Public Relations Consultants Association Limited v The Newspaper Licensing Agency Limited and others [2013] UKSC 18 the Supremes referred questions about transient and incidental copying (permitted under the Directive) to Luxembourg, but didn't even mention originality, on which the last word remains that of Mrs Justice Proudman in that case at first instance (the Court of Appeal having agreed with her analysis).

HTC Corp v Nokia Corp [2013] EWHC B16 (Ch) (12 September 2013)

HTC Corp v Nokia Corp [2013] EWHC B16 (Ch) (12 September 2013)  is a skirmish in the mobile phone wars that seem to have been raging since time immemorial, but are actually of more recent origin. HTC challenged two Nokia patents, and Nokia counterclaimed for infringement. No different from any number of similar dust-ups over the past few years. The judgment here, however, was concerned with steps taken to secure evidence from two companies in the USA who were not party to the litigation, Qualcomm and Broadcom (some inspired brand creation has been going on here). Only the Qualcomm evidence caused any problems.

Nokia made a third party disclosure application to the District Court for the Southern District of California, and that court made a protective order to ensure that the information disclosed went no further than the parties' legal advisers. Fair enough: the information was described as 'the crown jewels', though it is not clear by whom. (My guess is that it was an American.) Recipients would have to sign a prescribed form, and there lay the problem. HTC's counsel, while having no reservations about the obligations themselves, were not willing to submit to the jurisdiction of the District Court or to rick becoming personally liable for a breach. As their instructing solicitors had already signed up, they (the solicitors) were unable to show the evidence to counsel, which was, as the judge (Norris J) put it, an untenable position. What were they going to do? Bring in additional counsel, for that part of the claim?

The case was all about HTC's application for an order against Nokia for disclosure and inspection of the documents, which of course pursuant to the California order had been disclosed to Nokia with a view to them sharing them with HTC. Except that the documents were actually in the hands of Nokia's lawyers. But the Civil Procedure Rules (rule 31.8, to be precise) talk about 'control', and if something is in the hands of your agent it is in your control, isn't it?

Of course the problem could be solved by going back to the District Court and asking for the protective order to be made just a little less protective - though whether Qualcomm would be prepared to go along with that might be another matter. And that's exactly what HTC are engaged in doing, or were at the time of the application: so Norris J refused the order applied for, saying he didn't believe that Nokia had control of the documents for the purposes of CPR 38.1. He wasn't prepared to adjourn, because the date for trial was rapidly approaching: better that the time available be spent in appealing against his refusal, or going to court in California.

All in all, a fun little sideshow to the war.

CMS Committee criticises copyright 'erosion' | The Bookseller

The Bookseller reports that the Culture, Media and Sport committee of the House of Commons has criticised  copyright 'erosion'under the  proposals in the Hargreaves Review.

"Hot topics" conference

IP is always a hot topic - so it must be the white hot stuff that's on the programme of Lexis Nexis's conference on 22 October, in London (venue "to be advised": shall I check if the Jarvis Suite is available? Perhaps a bit late). Looking at the Agenda for the day, there's certainly some very hot stuff there, even if "Recent developments in ..." as the title for a session (or three) is a bit of a cop-out. But who knows what might be hot in a month's time?

Regular readers of this blog will recall that I am not impressed by the hyper-inflation that has affected the intellectual property world of late: indeed, it will not have escaped the attention of diligent readers that I am not enamoured of the expression "intellectual property", which tends to obscure the variety of different legal rights that make up this rich and fascinating area of law. I have the good fortune to have entered the profession at a time when one could still be an intellectual property generalist, and for a generalist this review of the hot topics will be invaluable. There are plenty of us generalists still around, and if the IP departments of larger firms have salami-sliced the subject into narrow specialisations there are still plenty of in-house lawyers and small and solo practitioners who will be attracted by an authoritative update on what's hot in the IP world.

Authoritative they certainly are ... For example, Martin Howe QC will be answering the question, "are image rights now protectable in English law?" (at least, that's the title of his session - whether he ventures an answer or not remains to be seen). As leading counsel for Rhianna, he is well placed to judge whether the law of passing off is doing a good job in this area or whether, following the example of Guernsey, we should clutter up the landscape with a new mini-IP right. Later in the day Guy Burkill QC - 'unbelievably clever, extremely funny and technically superb' (per his chambers' website, a description which must make him the favourite of every IP conference organiser wondering what to do with the graveyard slot after lunch) - will talk about the phone wars, in which he has served with some distinction, and that frequently-encountered oxymoron, software patents (actually the programme says "patentability of computer programs", but I claim poetic licence). "IP litigation in the wake of the Jackson reforms" will also be a very interesting topic (I single it out as not being "recent developments in ..." session), presented by Duncan Ribbons, a partner in Redd Solicitors LLP, the only IP boutique I know of to have appeared in the law reports as a claimant

Nowadays, prospective delegates often look first to see how many CPD hours they can score: and at this time of year, this is the first consideration for most solicitors. The answer is six - not bad at all. The price is not at all unreasonable, either, but to make it irresistible the organisers are generously offering members of the IPso Jure LinkedIn group a 20 per cent discount - to book email alicia.sprott@lexisnexis.co.uk and quote code IPL20. Will I see you there? Sadly no, but only because I have to be elsewhere that week - teaching some less hot IP topics to my students in Moscow.

Fast-track opposition procedure coming soon

The Trade Marks (Fast Track Opposition) (Amendment) Rules 2013 will come into operation on 1 October. While "primarily aimed at improving SMEs [sic] access to justice at  a cost proportionate to the complexity of the dispute at stake" (according to the Patent Office's propaganda sheet here) it will no doubt facilitate the sort of bullying-by-spurious-opposition that is often the bane of SMEs' [sic!] lives.

The Civil Procedure (Amendment No.7) Rules 2013

The Civil Procedure (Amendment No.7) Rules 2013  are the instrument by which the Patents County Court will, from 1 October, become the Intellectual Property Enterprise Court and its judge(s) will become "enterprise judges". OK, I understand the government's addiction to the meaningless expression "intellectual property", so while regrettable that much of the change is at least logical. But where does the "Enterprise" bit come from, and what is it supposed to mean? And why is an IP judge to be called something completely unrelated?

Another pointless renaming exercise, which will benefit few apart from signmakers and stationers.

Revised and updated: Red Bull no longer pursues Redwell brewery in Norwich over name

A few days ago, BBC News  reported that a Norwich microbrewery was being threatened with a trade mark infringement action by Red Bull, who in my experience (acting for an applicant who faced an opposition from them) are among the most egregious trade mark bullies in the world. However, a few days later The Independent reported that Red Bull had backed down, and it is worth looking at the story for what they had to say about the matter. Good.
It is therefore right that I should delete all the critical things I said about Red Bull (except those that are historical fact, mentioned above). It does not change my view of the trade mark system ...
The trade mark system was designed to allow people to use similar, even identical, trade marks for different goods. The less inherently distinctive a trade mark is, the less different the goods should have to be. The degree of naming freedom depends on the distinctiveness of the mark and the degree of similarity of the goods. A trade mark system that grants exclusive rights over an ordinary adjective that, as far as I know, is not used as a trade mark other than with a specific noun, is a broken trade mark system - but we already knew the CTM system is pretty badly broken, and through trying to keep up with it so is the UK one. Red Bull rely heavily on the trade mark system - so they need to learn to treat it with respect, and not behave as if a registered trade mark gave them exclusive rights to parts of the language.

Copyright agency catches up with councils

That's the title of the story in the Local Government Chronicle  (registration required). But here, on the assumption that press releases are made to be re-used, is what the CLA themselves have to say:

Twenty new councils have taken a copyright licence following legal action by CLA against one of Britain’s largest city councils. 

 

Earlier this year (April 2013), Brighton & Hove City Council agreed to pay CLA an undisclosed sum to cover legal costs and retrospective licence fees as well as agreeing to take a licence for the future.

 

Lawyers acting for Brighton & Hove had originally told CLA that it was not at risk of copyright infringement as it operated a ‘no copying’ policy, but evidence gathered by CLA showed that the policy had not worked and infringement was taking place.

 

Following the settlement with Brighton & Hove, 5 councils that had previously cancelled their licence have contacted CLA following internal reviews that showed they were at risk of copyright infringement – and consequential legal action. 

 

Martin Delaney, CLA’s Legal Director said: “I am pleased to see that councils are recognising their legal requirement for a CLA licence. This will help us to protect the UK creative industries, worth more than £36.2 billion to the UK economy .”

 

Mr. Delaney emphasised CLA’s continuing determination to investigate reports of copyright infringement and pursue councils that do not have a licence, but should have one:

 

“All of CLA’s licensed councils are surveyed on a rolling program and our data shows that copying is widespread during the course of day-to-day activities. There is no reason to doubt that these practices occur in all of the remaining unlicensed local authorities as well.”

 

CLA monitors councils where it is believed that copyright infringement is taking place and investigates reports of copyright infringement in the workplace provided by individuals. If a council is found to be infringing copyright, then in some cases, its officers and employees can be held individually liable.  

 

140 of 450 UK councils remain unlicensed when it is likely they are copying from digital and print publications covered by CLA.

I would have thought that it was patently obvious by now that there's really no way to get round the need for a licence. It's easy to think of the CLA as avaricious and unnecessary, if you are a user of photocopiers, and a burden on taxpayers, if the user is a public body: but from the point of view of an author whose work may be photocopied rather than bought, it's a godsend.

Microsoft Censors OpenOffice Download Links

DMCA takedown notices are baffling things. They can so easily and rapidly (and indiscriminately) be generated, the scattergun approach can hit all sorts of unintended targets. Torrentfreak carries the remarkable news that in its enthusiasm to protect its (inherently pathetically weak) OFFICE trade mark, Microsoft has issued takedown notices citing download links for that excellent open-source alternative to the Microsoft offering, OpenOffice: Microsoft Censors OpenOffice Download Links. And it adds that Microsoft has even managed to impugn its own website in this way. You could not make it up.

Letters of Note: Arkell v. Pressdram

I have previously posted links to material on the Letters of Note website. This one is legendary: the basis for Private Eye's stock response to any accusation that they had defamed someone.

Missing the forest for the trolls

What is sure to be an interesting article by Mark Lemley, to be found via the Antitrust & Competition Policy Blog: Missing the Forest for the Trolls.

Avoiding genericide: Ogooglebar

French, they say, is the language of diplomacy; English, the language of business; Italian, the language of love; and Swedish, the language of secrets. That last may have been made up by a former colleage of mine, married to a Swede, who would engage her Swedish opposite number in incomprehensible conversation at international meetings. But it's also a language with a sense of humour.

I didn't know until now that there is a Swedish Language Council, functionally equivalent to the Academie Française, something which we could do with here: I was reading a consultation paper from our so-called Intellectual Property Office this morning (on designs, from last year), although it was only with a huge effort of will that I proceeded past the first split infinitive (which occurred in the list of contents). Whoever wrote such appalling rubbish - that split infinitive was the start of a litany of grammatical errors of one sort or another - needs some compulsory re-education, not necessarily in the sense in which the word was understood by various communist regimes, a bit more humane.

A while ago I read that the word "ogooglebar" had been coined in the language of secrets to mean something that cannot be found on the Internet using a search engine. Of course, to use the verb "to Google" (or, worse, "to google") to mean to conduct an Internet search is inexcusable, though common, and Google no doubt have to work hard to avoid genericide. They have taken exception on the same grounds to the new Swedish word, according to The Week (thanks to Sarah for sending me the cutting), and back in March (no, this is not really news) it was removed from the list of new Swedish words, the first time this has happened. "Henifiera", a very useful word and equally useful concept, meaning to use the pronoun "hen" to mean "he or she" (or, often, "they" in studiedly neutral prose, or "he/she" or "(s)he" in the work of authors of doubtful literacy), remains.

You can read the official statement here, but don't tell anyone what it says.