Thursday 31 January 2013

Benelux: Porsche prevail over independent "specialist"

From the Marques Class 46 blog comes this unedifying tale of trade mark absolutism (I shall steer clear of the pejorative expression "bullying", because often these excessively protective cases are driven by considerations of shareholder value rather than the sort of vindictiveness that that word implies) courtesy of my friend Gino van Roeyen (Banning). The story is hardly novel: there have been plenty of cases of independent specialists overstepping the mark when referring to what they specialise in. Two important, related, questions arise: where is that mark, and what does the infamous proviso to Artice 6(1) of the trade marks directive ("honest use in industrial and commercial matters") mean in the independent aftermarket?

Please, read Gino's account of the case, because I do not propose to write it all again. I do not enjoy typing enough for that. Initially I found it encouraging: here, at last, was a court taking a sensible view of what the designation "specialist" might be taken to mean in a situation such as this. At first instance, the specialist, Mr van den Berg, had succeeded. Calling yourself a specialist with reference to someone else's trade mark does not imply a special connection with the owner of the trade mark. He seemed to have done enough to avoid confusion in the marketplace. But on appeal the trade mark owner won: the court, as in previous cases (different courts), held (if I may paraphrase) that calling yourself a Porsche specialist amounted to holding yourself out as an official dealer. As it was once explained to me: a manufacturer's official dealers are specialists, and they are independent. (On the other hand, I will always remember Trevor Finn at a Motor Law conference some years ago alluding to the fact that Wilberforce and he came from the same town, and likening the manufacturer-dealer relationship to slavery.)

Now, I think there are some important differences between different parts of the market. In the mass-market sector, it might be fair enough to say that holding yourself out as a Ford specialist might confuse customers. (OK, I know confusion is not the test here, but it is a reasonable way to look at the impact of the proviso.) Owners of such cars have a different sort of approach to all things to do with motoring than those of specialist cars. My point is that the owner of a Porsche motor car might reasonably be thought to be enough of an enthusiast to understand the nature of the trader with whom he or she proposed to do business. To a petrolhead, the expression "specialist" has a meaning quite distinct from "dealer" or "authorised repairer", and the courts should recognise that the relevant public is not a single body of people but several different groups.

Mr van den Berg was described as great Porsche lover. He might think otherwise now.

Tuesday 29 January 2013

Learning new words - Gebrauchsmuster

As an avid reader of the blog may have guessed, the brief voyage into intricacies of German language made in the previous post is not accidental. Last week Freshfields hosted the JIPLP/GRUR seminar on secondary protection for innovation in Germany. In the centre of scrutiny was the Gebrauchsmuster, or utility model as non-German speakers may call it – a separate patent-like IP right offered for new inventions in Germany.

For an English lawyer the Gebrauchsmuster may seem alien and mysterious – no comparable right existing in English law. However, similar protection is available not only in Germany, but also in other 57 countries.

The idea behind the Gebrauchsmuster and utility models in other jurisdictions, explained by the first speaker Wolrad Prinz zu Waldeck und Pyrmont of Freshfields Bruckhaus Deringer LLP, is that there are ‘small’ inventions which are unlikely to become the centre of a billion lawsuit between two international smartphone manufacturers. The life period of such inventions is shorter than that of ‘normal’ inventions and the legal monopoly in this case is deemed less dangerous. Small and medium enterprises should have easier and cheaper access to the protection of small inventions.

At first sight, a Gebrauchsmuster is in many ways similar to a patent. It can be granted for an invention which is novel, involves an inventive step and is capable of industrial application. An inventor will have to submit an application containing claims, description and drawings. If a Gebrauchsmuster is granted, its owner will acquire a time-limited protection and will be able to claim all remedies which are usually awarded to patent owners (injunctions, damages, destruction and recall of infringing products, etc.).

However, a closer inspection reveals many differences between the Gebrauchsmuster and patents. Substantive requirements for protection are much more easily satisfied in the case of a Gebrauchsmuster. When assessing the novelty of an invention, the German Patent and Trademark Office will only consider written publications and public use in Germany. Possible oral disclosures, secret use or public use outside Germany will not form part of the prior art. Furthermore, the applicants are awarded a 6-month grace period in respect of written disclosures or public use made by them or their predecessors in title. In effect, this means that it is possible to acquire a Gebrauchsmuster for an unpatentable invention (e.g. when there was public use outside Germany). Historically, the Gebrauchsmuster required less inventiveness than the patent. The idea was that there are small inventions which cannot be protected by a patent, but can become a subject matter of a Gebrauchsmuster. However, in 2006 in the case of Demonstrationsschrank the German Federal Court of Justice held that inventions protectable by a Gebrauchsmuster do not deserve special treatment and must show the same level of inventiveness as required in patent law: in some countries, however, utility models are not expected to measure up to the same level of inventiveness. The requirement of industrial applicability for the Gebrauchsmuster is the same, but the list of items excluded from protection is slightly longer. Gebrauchsmuster cannot be granted for biotechnological inventions and processes. Additional exclusions are explained by the difficulty of representing a process in the application.

The registration procedure for a Gebrauchsmuster is also slightly different. The German Patent and Trademark Office will only conduct a formal review of the application, making no examination of its substance. The lack of substantive examination is offset by a shorter length of protection – 10 years from the date of registration (compared to 20 years offered by a patent) and by availability of opposition proceedings which can be started by any person. The application and maintenance fees for a Gebrauchsmuster are smaller than those relating to a patent. In practice, though, this advantage is negated by the fees paid to lawyers and patent attorneys. Despite the fact that applications for a Gebrauchsmuster can be shorter, the claims still need to be drafted with the utmost precision. Should the opposition to a Gebrauchsmuster be successful, the opposing party will usually be able to claim the costs of representation. Even if the court awards only part of the costs, the amount can still be significant. As there is no substantive examination, a Gebrauchsmuster is usually granted faster than a patent (usually within 3 months). Yet again, this may not help the inventor if his or her Gebrauchsmuster is caught in an opposition action started by a watchful competitor. 

The scope of protection offered by the Gebrauchsmuster is similar to a patent protection. One rather important difference was highlighted by the second speaker, Karsten Koeniger of Harmsen Utescher – it is very difficult to persuade a court to grant a preliminary injunction when a Gebrauchsmuster is allegedly infringed.

Having considered the main differences between the Gebrauchsmuster and the patent, it would be interesting to see how these two interact with each other. A Gebrauchsmuster can be granted in parallel with a patent. Additionally, if there is a pending patent application, one or more of its claims can be ‘branched off’ and become a subject matter of a separate Gebrauchsmuster. This creates interesting opportunities in protecting inventions. For example, if a patent application is ‘stuck’ at the examination stage or it is necessary to challenge competitors as fast as possible, the inventor can branch off a claim from a patent and apply for a Gebrauchsmuster instead or together with a patent.

So, is a utility model protection a good thing to have? There is no agreement about this. German practitioners would be happy with the Gebrauchsmuster as it allows more flexibility in litigation and increases their revenue. It is difficult to say though that SMEs can substantially benefit from secondary protection. If the same standard of inventiveness is required, the inventor might as well apply for a patent. Smaller costs are often offset by lawyers’ fees. The attitude of English lawyers was aptly summarised by Darren Smyth during the panel discussion. It may be unnecessary and misleading to create special secondary protection, which would be liable to lead to multiplication of patent (Gebrauchsmuster?) trolls and thickets. A better idea may be to try to improve the patent system as a whole with a view to making it more friendly and affordable to SMEs.

Whatever side the reader may feel obliged to take, it should be noted that according to the information provided by Wolrad Prinz zu Waldeck und Pyrmont more than 96,000 Gebrauchsmuster were issued in Germany in 2011 with only 104 cancellation proceedings concluded in the same year. This suggests that the system is working adequately in Germany. On the other hand, it seems unlikely that the countries which do not provide secondary protection will decide to implement it. Further evidence to this view is the negative reaction of the majority of EU member states to the prospect of creating the Community utility model.

More information about the seminar is available on the JIPLP website (here). It also contains insightful presentations made by Wolrad Prinz zu Waldeck und Pyrmont and Karsten Koeniger on which this text is largely based.

The author wants to say a big thank you to Peter Groves for this delightful opportunity to contribute to the blog.

Thursday 24 January 2013

German for IP enthusiasts lesson 1

Who am I to purport to teach anyone German? No-one. But I have an idea. Language lessons that use subject matter that the learner can relate to are much more likely to convey something useful. So I will now proceed to teach you how to decline the noun Gebrauchsmuster.

It's the inflexion in German that is one of the most challenging aspects of the language. That, and the compound words, of which my favourite (which I made up with the help of an online translation engine) has to be Kragenschenkelfestknöpfenhemdtragenamerikanischerjurist. Gebrauchsmuster is another. Compound nouns take the gender of the last noun in the word, which is one thing I did learn in all those German classes I went to years ago: what I don't know is whether it's permissible to bolt together several nouns as well as adjectives and prepositions - my word might break every rule in the book. Anyway, "Muster" (I also happen to know that nouns always need a capital initial in German) is neuter, so when we preface the noun with an article it is ein or das Gebrauchsmuster. And as I worked out this afternoon, the plural is die Gebrauchsmuster. Those articles are pretty important in German.

In fact, Gebrauchsmuster is a fairly easy noun to work with. Of course, being German, we have to worry about four cases in the singular and plural numbers, but actually it doesn't change a lot, so here you are and I hope you learn it easily (and if I have got it wrong, I hope someone will let me know):

ein/das Gebrauchsmuster
die Gebrauchsmuster
ein/das Gebrauchsmuster
die Gebrauchsmuster
eines/des Gebrauchsmusters
der Gebrauchsmuster
einem/dem Gebrauchsmuster
den Gebrauchsmustern

A tale of two exotic intellectual property rights

I received an email in the middle of the JIPLP/GRUR seminar on secondary protection of innovation in Germany, on Tuesday. I replied to the sender, who had tried moments earlier to phone, that I was in a seminar on utility models and his message had woken me up. It struck me as amusing, but it was far from the truth. Gebrauchsmuster, or utility models, or perhaps petty patents, have interested me ever since I read the Nicholson Report - although it has always been a source of relief to me that they have not yet come to the UK.

A report of that seminar will follow. The day after (that is yesterday) I also went to a seminar, this time on the much more recent and rather more exotic new intellectual property right that Guernsey has introduced, giving protection to image rights. I quickly felt like a grumpy old intellectual property lawyer (although my first impression was that I had strayed into a parallel universe where I did not belong, as the audience seemed to comprise financial types and fiduciaries, which I guess make up a large proportion of the population of Guernsey. I felt more at home when I found some lawyers, many of whom, naturally, I knew). The event was put on by the Guernsey International Financial Centre, with much of the talking being done by Elaine Gay of Carey Olsen - who facilitated the panel discussion most impressively.

If you want to learn the details of the new law, don't rely on me for an explanation (but you'd probably have attended the seminar anyway). And, cheekily (because I assume it was written by a competitor of the people whose seminar I attended) let me point you to a post on my friend Jane Lambert's IP blog. It is a subject with which we will all need a passing acquaintance, though the creation of a new, specialised property right makes me despair.

Why, do I hear you ask? Well, for starters, I find it highly regrettable that what people are has come to eclipse what they do. Intellectual property laws protect the creations of people's minds (OK, I admit, that's not a very sound way to characterise trade marks, but it can be made to work). Patents protect useful things (please don't waste time trying to find those words in the legislation: I paraphrase), registered designs and unregistered design rights protect things that look good (again, I paraphrase, with even more licence) and copyright protects things that inform or entertain, or perhaps improve. They have human creators, whose contribution to the well-being of humankind, small though it may be in the great scheme of things, is recognised by giving them property in it.

Protecting image rights places the cultivation of an image, a nebulous entity if it's an entity at all - on the same footing as the invention of a new pharmaceutical or the design of a new mechanical device. IP laws are already widely criticised for protecting too much - stuff which by most objective standards does not merit it - to the detriment of consumers with no countervailing encouragement to create or produce more for the benefit of society. Where is the evidence-based justification for property rights in one's image?

It seems to me that there are two possible justifications for such a property right. First, and most importantly, substantial sums of money are already changing hands for the use of someone's image. The Eddie Irvine case (Edmund Irvine and Tidswell Ltd. v Talksport Ltd. [2002] EWHC 367 (Ch) (13th March, 2002) and on appeal [2003] EWCA Civ 423 (1 April 2003)) demonstrates that, while also demonstrating a lack of appreciation on the part of the judge of the sums involved. Irvine was of course a passing-off case, and the law of passing-off is an expensive place in which to protect one's rights (cheaper now the Patents County Court has been remodelled), and one could point to many other cases if one were less lazy than I feel at the moment - all that cutting and pasting and inserting links. Anyway, Fast Eddie is my preferred example for many reasons, especially given that Dave Bedford did not pursue his claim against The Number far enough to give us the benefit of a judgment.

I don't like the idea of image rights as a form of property (oh, you noticed?) but neither do I like the way the image of the athlete who more than any other inspired me when I took up running being badly treated. However, he didn't challenge The Number's use of his likeness for some six months, having been advised that he had no grounds for doing so. Although OFCOM found there had been a breach of its code, that did not bring compensation, only publication of the decision, and £60,000 lighter he did not care to risk going to court where he might well have been told that his reputation had little value some 30 years after his heyday. Suing for passing off in the wake of Irvine, he might have been awarded a sum to reflect the fee he could have charged for the endorsement - which would not have been great. Had he been able to register his image, the outcome would have been at least easier, though presumably the quantum of damages would not have been very different from that available in a passing-off action.

The second justification for the new right is much more mercenary. It will be a nice earner for the Intellectual Property Office in Guernsey, and for the local legal profession - or, more precisely, the profession of image rights agents. It therefore serves as a Guernsey Lawyers' Welfare Ordinance and as a tax on vanity. Neither are noble goals, but the legislation achieves them extremely well. If an individual be prepared to pay £1,000 for registration in Guernsey, then, how much might a UK image rights register be able to charge?

The law itself, running to 117 sections, adopts much from copyright and trade mark law - fair dealing provisions and moral rights, a likelihood of confusion test and remedy against groundless threats. I picked up from one of the talks that the creator of a personality would be the first owner of rights in that personality, which seemed to raise interesting theological questions, but it transpires that this is only in the case of fictional characters. Nevertheless, I remain extremely uncomfortable with this legislative recognition of, and support for, cults of personality and celebrity - an intellectual property right with no intellectual content. No doubt it will be coming here soon.

Muck Truck UK Ltd & Ors v Helps (t/a Paul Helps Muck Truck Sales) & Anor [2013] EWHC 74 (Ch) (24 January 2013)

Sunday 20 January 2013

An accident waiting to happen

Actually not an accident at all: perhaps a ticking time-bomb. Extensions of International trade marks to the US commonly run the risk of "overclaiming". The EU system is notorious for encouraging applicants to apply for registration for extremely wide ranges of goods and services, even including the kitchen sink, and the absolutists who would prefer trade marks to be more like copyright (a fortiori, registered designs) leap at the chance. The EU's use, or intent to use, requirements are pathetic. By contrast, the US has very demanding standards, and the problem that can arise when the two approaches collide is summed up neatly in this posting by my friend Marty Schwimmer - to which I don't need to add anything.

Parallel imports: consent under Australian law

In Australia, the Full Federal Court has confirmed the trend of recent decisions by reading restrictively the defence of "consent" available to the importers of grey or parallel goods (Paul's Retail Pty Ltd v Lonsdale Australia Limited [2012] FCAFC 130). There is a note of the case here courtesy of Clayton Utz.

Section 123 of the Australian Trade Marks Act is a statutory embodiment of the well established principle in the United Kingdom case, Champagne Heidsieck [1930] 1 Ch 330, which stated that trade marks were badges of origin, designating a genuine source, not badges of control. Just as in modern EU parallel import cases, the important question is whether the goods have been put into circulation by or with the consent of the trade mark owner.

In this case, Lonsdale Australia was a mere licensee, and the principle of implied consent when dealing with related companies had not been definitively accepted into Australian law for the purposes of parallel importation. The Australian licensee was not on the evidence linked to the goods and there was no evidence to suggest that it played any role in the application of the trade marks to any of the imported goods. The Full Court held that it was not necessary to decide the issues considered by the trial judge, because even if Paul's Retail could establish that Lonsdale Australia was bound by its related company's consent, the evidence showed that there was in fact no consent by that related company. But it's interesting to know that those abstruse arguments in which our courts have been obliged to involve themselves are just as important on the other side of the world.

Idea and expression

I am (I wrote originally a month or so ago) marking essays. It's part of the price I pay for two trips a year to Moscow, and actually I'd be happy to pay a far higher price to visit such a fascinating city. It's just a shame that I spend so much of my time there in a soulless block in Novie Cheryamushki, which notwithstanding its fame (thanks to Shostakovitch) is a pretty boring area. Also a pity about the driving. I have gone through this looking for our regular driver, but he seems to have got away.

I set my students an assignment, using a quote which came straight out of the University of London subject guide, but before that straight out of the third edition of Cornish. In the sixth edition (Cornish and Llewellyn by now) it's a little different - it speaks of commentators, rather than "our leading authors" - that proprietorial tone of voice strikes a strange note. Moreover, it now quotes Hugh Laddie's excellent 1995 Stephen Stewart lecture, "Copyright: Over-strength, Over-regulated, Over-rated", published in (1996) 18 European Intellectual Property Review 253 as an example of such a commentator - the only commentator quoted, as it happens. And Cornish was himself quoted by the Court of Appeal in Designers Guild Ltd v Williams (Textiles) Ltd [1999] EWCA Civ 1104. Anyway, I thought it might be useful, as an aid to marking the students' work, if I wrote an essay myself - and perhaps it will help the students, too ... If any reader cares to comment on my effort (which I am not going to spend a lot of time over - after all, it was originally an exam question - although that said I have left several weeks between starting it and finishing) I would be very pleased.

Here's the question (it says "discuss" after the quote):
The imprecision of any line between idea and expression causes our leading authors to castigate the whole notion. Why then does the distinction survive such disparagement? Why, indeed, is it seized on as the basis of international accord?
[First of all, let me note that this seems to me to be a strange use of the verb "to castigate", which I always thought needed a human object.]

And here is my attempt at an answer:

In the terminology of copyright, what is protected are referred to as "works", and in the case of literary, dramatic, musical and artistic works they are protected only if they are original. From this starting point, it follows that to define the scope of copyright protection we must identify what the author has created and filter out what he or she has copied from elsewhere or has included out of necessity, or which constitutes an idea to which the author has brought his or her own expression.

The problem, commented on - "castigated", according to Professors Cornish and Llewellyn (para 12.06) - by (inter alia) Laddie in his 1995 Stephen Stewart lecture, "Copyright: Over-strength, Over-regulated, Over-rated" (1996) 18 EIPR 253, and by M.Spence and T. Endicott in “Vagueness in the Scope of Copyright” [2005] LQR 657, is that it is rarely a simple matter to distinguish an author's original work from the idea or ideas that underlie the work. In the United States, Judge Learned Hand put it nicely in Nichols v Universal Pictures 45 F (2d) 119 (1930):
[U]pon any work ...... a great number of patterns of increasing generality will fit equally well, as more and more incident is left out. The last may perhaps be no more than the most general statement of what the [work] is about, and may at times consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the [author] could prevent the use of his ‘ideas’, to which, apart from their expression, his property never extended ......Nobody has ever been able to fix that boundary, and nobody ever can.
We must however beware of importing the jurisprudence of the American courts into UK copyright law, because Section 102(b) of the Copyright Act 1976 in the US expressly excludes ideas from copyright protection. UK copyright law excludes ideas by implication from the use of expressions such as "work" and "original" (although it must be noted that the software directive mandated the exclusion of the ideas underlying a computer program, an exclusion which nevertheless does not appear on the face of the amended statute), and the so-called "idea-expression dichotomy", which can be traced back to the great US Supreme Court case Baker v Selden 101 US 99 (1880) (see Samuels, 56 Tenn. L. Rev. 321 (1989)), comes into play in UK law only when judging whether copyright has been infringed by the taking of a substantial part of the protected work. Ideas cannot logically constitute a substantial part of a copyright work, and distinguishing them from expression therefore has to be done at a different stage of the proceedings under UK law compared with US law. The hazards of following American cases are well illustrated in John Richardson Computers Ltd v Flanders and Chemtec Ltd [1993] FSR 497 (Falconer J), which was criticised in the later case IBCOS Computer Ltd v Barclays Mercantile Highland Finance Ltd. [1994] FSR 275 in which Jacob J (as he then was) preferred a "home grown" approach which recognised the lack of an express exclusion from protection for ideas:
For myself I do not find the route of going via U.S. case-law particularly helpful. As I have said, UK copyright cannot prevent the copying of a mere general idea but can protect the copying of a detailed "idea". It is a question of degree where a good guide is the notion of overborrowing of the skill, labour and judgement which went into the copyright work. 
However, as Lord Hailsham of St. Marylebone said in L.B. (Plastics) Ltd v. Swish Products Ltd. [1979] R.P.C. 551, 629, "as the late Professor Joad used to observe it all depends on what you mean by 'ideas.'" As Jacob J also observed in Ibcos:
The true position is that where an "idea" is sufficiently general, then even if an original work embodies it, the mere taking of that idea will not infringe. But if the "idea" is detailed, then there may be infringement. It is a question of degree. The same applies whether the work is functional or not, and whether visual or literary. In the latter field the taking of a plot (i.e. the "idea") of a novel or play can certainly infringe—if that plot is a substantial part of the copyright work.
In Designer's Guild v Russell Williams Textiles Ltd [2000] 1 WLR 2416, Lord Hoffman says at 2422:
Plainly there can be no copyright in an idea which is merely in the head, which has not been expressed in copyrightable form, as a literary, dramatic, musical or artistic work. But the distinction between ideas and expression cannot mean anything so trivial as that. On the other hand, every element in the expression of an artistic work (unless it got there by accident or compulsion) is the expression of an idea on the part of the author. It represents her choice to paint stripes rather than polka dots, flowers rather than tadpoles, use one colour and brush technique rather than another, and so on. The expression of these ideas is protected, both as a cumulative whole and also to the extent to which they form a "substantial part" of the work. Although the term "substantial part" might suggest a quantitative test, or at least the ability to identify some discrete part which, on quantitative or qualitative grounds, can be regarded as substantial, it is clear upon the authorities that neither is the correct test. Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964] 1 W.L.R. 273 establishes that substantiality depends upon quality rather than quantity (Lord Reid, at p. 276, Lord Evershed, at p. 283, Lord Hodson, at p. 288, Lord Pearce, at p. 293). And there are numerous authorities which show that the "part" which is regarded as substantial can be a feature or combination of features of the work, abstracted from it rather than forming a discrete part. That is what the judge found to have been copied in this case. Or to take another example, the original elements in the plot of a play or novel may be a substantial part, so that copyright may be infringed by a work which does not reproduce a single sentence of the original. If one asks what is being protected in such a case, it is difficult to give any answer except that it is an idea expressed in the copyright work.
My Lords, if one examines the cases in which the distinction between ideas and the expression of ideas has been given effect, I think it will be found that they support two quite distinct propositions. The first is that a copyright work may express certain ideas which are not protected because they have no connection with the literary, dramatic, musical or artistic nature of the work. It is on this ground that, for example, a literary work which describes a system or invention does not entitle the author to claim protection for his system or invention as such. The same is true of an inventive concept expressed in an artistic work. However striking or original it may be, others are (in the absence of patent protection) free to express it in works of their own: see Kleeneze Ltd. v. D.R.G. (U.K.) Ltd. [1984] F.S.R. 399. The other proposition is that certain ideas expressed by a copyright work may not be protected because, although they are ideas of a literary, dramatic or artistic nature, they are not original, or so commonplace as not to form a substantial part of the work. Kenrick & Co. v. Lawrence & Co. (1890) 25 Q.B.D. 99 is a well known example. It is on this ground that the mere notion of combining stripes and flowers would not have amounted to a substantial part of the plaintiff's work. At that level of abstraction, the idea, though expressed in the design, would not have represented sufficient of the author's skill and labour as to attract copyright protection.
Generally speaking, in cases of artistic copyright, the more abstract and simple the copied idea, the less likely it is to constitute a substantial part. Originality, in the sense of the contribution of the author's skill and labour, tends to lie in the detail with which the basic idea is presented. Copyright law protects foxes better than hedgehogs. In this case, however, the elements which the judge found to have been copied went well beyond the banal and I think that the judge was amply justified in deciding that they formed a substantial part of the originality of the work. 
Copyright may find its philosophical justification in several theories, but whether one subscribes to the natural rights approach, to an incentive-based theory, or to a Utilitarian analysis, there is little or no support for extending protection beyond the author's expression to the ideas used. To do so would have a chilling effect on creativity: copyright would overreach into places where public policy does not, must not, encourage it. So while commentators may criticise the lack of precision in the distinction, described so eloquently by Judge Learned Hand, it remains essential if we are to ensure copyright does its job - or any, or all, of its jobs - properly.

Google settles Belgian papers' copyright dispute, seeks arbitration of dispute with GEMA

Reuters reported last month that Google had  settled a six-year dispute over copyright with Belgian newspaper publishers.  It hopes will be a model for resolving similar disputes elsewhere in the world.

Reuters characterised the settlement as an agreement by Google to help boost online revenues for the papers and authors.  Publishers have been trying to get Google to pay them for showing their online content in Web searches as more and more readers of the printed word defect to online media. Now Google will help them ensure that readers pay for news, using paywalls and subscriptions, while Google will not pay for the content itself.

Meanwhile, GEMA, the German music copyright collecting society, says that negotiations with Google, whihc gives access through You tube to 1,000 unlicensed tracks from GEMA's catalogue and owes €1.6 million, have failed. GEMA has therefore turned to the Arbitration Board of the German Patent and Trademarks Office to resolve the dispute.

USA: Record labels explore what lies beyond takedown notices

Music Week reported a few days ago that a bunch of major record labels have filed in a US court for summary judgment in a long-standing claim against Vimeo, described by Digital Music News (which also has the court papers on its site) as "the cleaner cousin of YouTube that never played the copyright game as slickly."

Following last April's appeal judgment in Viacom v YouTube, which made clear that copyright owners are not hidebound by the notice and takedown procedure set out in the Digital Millennium Copyright Act, the labels claim that Vimeo knew, encouraged, and facilitated widespread infringement of musical copyright on a recurring basis. Capitol, which seems to be the lead label in this action, asserts in its filing that Vimeo failed a list safe harbor tests, and is not therefore eligible for immunity under the DMCA. Their statement goes on:
Confining the DMCA to a 'notice and takedown' statute places the burden entirely on the copyright owner and ignores the remaining safe harbor requirements. That is not what the statute says, nor is it the construct reiterated in Viacom. Congress made clear that copyright owners need never provide takedown notices, an often futile process.

Lego use IP law to control use of their products

The Torrent Freak blog reports that the Pirate Party in the Czech Republic has been sued by Lego not for copying its designs or infringing its trade marks but for using Lego figures in a video. And Lego got their injunction. Lego claimed copyright and trade mark infringement, but surely no rational intellectual property law should allow rights owners to overreach in this way. But if the Pirates' appeal to their supporters to embarrass Lego by photographing Pirate flags and so on outside Lego shops and theme parks succeeds, they might wish they hadn't. One can only hope.

Friday 18 January 2013

Extending the term of copyright protection

For sound recordings, that is. Directive 2011/77/EU requires us (and the other Member States of course) to extend the length of copyright term in sound recordings and performers' rights in sound recordings from 50 to 70 years. It also makes specific provision for performers and provides for harmonisation of the copyright term for co-written musical compositions with words.

The government, through the agency of the Patent Office, has issued a consultation document seeking the views of "stakeholders" on how this should be achieved - although at one level there is no surprise about it: there will be a statutory instrument under section 2(2) of the European Communities Act 1972 and the Enterprise and Regulatory Reform Act 2013. The precise wording is what the consultation is about.

The draft SI proposes to make some changes (of course) and insert some new sections - sections 191HA and 191HB, which always makes me feel uneasy. There must come a time when inserted sections like this attain critical mass and a new statute is passed - mustn't there? I suppose not, because we must have passed that point long ago. Perhaps a response to the consultation making the point that a consolidating and amending statute would be more to the point, but there's a fat chance of ever getting that, at least not for the foreseeable future.

There is also a new section 10A, which deals with works of co-authorship, which are not to be confused with works of joint authorship. The latter are collaborations in which the different contributions cannot be separated: the former, the new creation of the Directive, are songs, or other works comprising words and music. The composer and the lyricist or librettist are constituted co-authors, and are treated for copyright duration purposes in the same way as joint authors. Often, songs are co-authored by two or more people: although Lennon and McCartney put their joint names to the songs they wrote one or other would be the principal author, so that's not the best example, and I don't know how that other classic partnership Jagger/Richards works - but take a classic example of how copyright can become confused (and a composer whom I once met, as it happens), West Side Story. Leaving Shakespeare out of it, the co-authors are pretty clearly Leonard Bernstein and Stephen Sondheim, although there are enough other people involved to make it too difficult for the BBC to clear the rights for a performance at last year's Proms (a matter which I wrote about at the time). So I think the outcome of the amendment to the law will be that copyright in, say, America will last for 70 years after Sondheim dies, doing Lennie's estate a considerable favour for, it has to be said, no clear and compelling reason.

As for copyright in sound recordings, the new law will - much as the 1995 extension of copyright term worked - give the additional period of protection to sound recordings that are protected when it comes into force (should I be using a subjunctive there somewhere?). At present, a sound recording is protected for 50 years from when it is made or from first release if that takes place during that 50 years. Record companies are not in the habit of investing in having sound recordings made and then sitting on them for that long, so one might think (and I believe I have told people attending training courses this) that the second part of that rule is hardly ever going to come into play.

Well, that used to be true (I think) - but it isn't now. What if someone - a great singer-songwriter, perhaps - made recordings early in his career that remain unreleased as he approaches, say, his 72nd birthday (and the recordings attain the magical age of 50, and he also approaches the milestone of 2,500 shows in the so-called Never Ending Tour which started in 1988)? Well, what would happen is that someone at Sony would realise that those old recordings had better be released while they can still benefit from the second part of rule about duration of protection: and the result would be a limited edition, 4CD set, ostensibly marketed as The 50th Anniversary Collection but widely known as The Copyright Extension Collection. The story is on the Rolling Stone website, and lots of other places.

There are probably few other artists whose 50-year-old outtakes are quite so valuable. Most of the stuff on the new set has circulated in bootleg form for decades, but I guess that for a small outlay which is probably covered many times over from sales revenue Sony secure the copyright in these recordings which otherwise would soon have been appearing all over the place. In so doing, they have created a collector's item which is already selling on eBay for well over $1,000 a copy (it was not, naturally, released in the US, only in the EU).

What I don't know is whether Dylan will see much benefit from the latest release, and my greatest reservation about the extension of copyright in sound recordings is that it will not benefit many of the musicians who might need it. The money is likely to go to the record companies. But a lot of musicians will have taken ownership of the copyright when their record companies deleted the LPs from the catalogue, which is how companies like Angel Air thrive. So copyright extension might not be too much of a bad thing - although it seems that Norway doesn't like it, as this article in Aftenposten makes clear, for the well-rehearsed reason that it will tie up cultural material without encouraging the creation of anything new. I suppose that at least that argument does not apply to Dylan - he is still creating, although he is also accused of plagiarism from time to time - but he doesn't actually seem to need the encouragement.

Friday 11 January 2013

Overreaching copyright: an old problem getting bigger every day

An interesting piece from the Electronic Frontier Foundation about how the "content industry" (a nicely disparaging name for them, unless that is the first word is an adjective - but they are clearly discontent, or perhaps they are malcontents) can use the DMCA as a tool of censorship, by banging out takedown notices with no regard for fair use. They can get stuff that offends them taken off-line for quite a long time - well, in internet terms, in which time moves more rapidly than usual, a very long time, effectively for ever in some cases. It shows how important exceptions are to the copyright system, to prevent over-reaching or the sort of absolutism of which I and many others have written before. And the US notion of "fair use" is so much wider than our "fair dealing" exceptions!

Thursday 10 January 2013

Chinese copying of architectural works

Last Monday's Guardian contained the story of a building being errected in Chongqing that bore an uncanny resemblence to a building (or actually three buildings) being built near Shanghai, the work of Zaha Hadid, the Iraqi-born British "starchitect" as featured on Dream Builders on BBC World Service radio not long ago - or so I thought: it doesn't get a mention on the BBC website's Dream Builders pages.

The Guardian - the article is by Oliver Wainwright - sets this latest bit of copying in the context of other Chinese copies, including Hallstatt, a village in Austria, Dorchester (the Dorset one), and the Eiffel Tower. Another interesting commentary on the phenomonen is to be found in Foreign Policy, by Jack Carlson, here (a few months old, and not covering the Hadid work). It's also reported in Spiegel, and the Art and Artifice blog has the story too. So there's not much I need to say, except that I was very impressed with what Hadid had to say about the line between copying and taking inspiration: "It is fine to take from the same well – but not from the same bucket."


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