Thursday 27 June 2013

Levy for reproduction of protected works can be imposed on the sale of a printer or a computer

An important judgment from the Court of Justice today, described in a press release which I quote here as I don't have time right now to write it up. The Judgment is in Joined Cases C-457/11 to C-460/11 Verwertungsgesellschaft Wort (VG Wort) v Kyocera, Epson Deutschland GmbH, Xerox GmbH, Canon Deutschland GmbH and Fujitsu Technology Solutions GmbH, Hewlett-Packard GmbH v VG Wort GmbH.
According to Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10). , Member States should grant, in principle, to authors and the holders of related rights, the exclusive right to authorise or prohibit reproduction of their protected works or other subject matter. However, Member States may provide for exceptions or limitations to that exclusive right. Accordingly, they may permit, in particular (i) the making of private copies and (ii) reproductions on paper or any similar medium, using any kind of photographic technique or by some other process having similar effects. A Member State which avails itself of this option must, however, provide that the copyright holders receive ‘fair compensation’. That compensation is to compensate authors for the reproduction, without their authorisation, of their protected works.
The Bundesgerichtshof (Federal Court of Justice, Germany) is called on to give judgment in proceedings concerning the fair compensation owed for the reproduction of protected works made with the use of a chain of devices, including, in particular, a printer and a personal computer, principally where the two are linked together. In those proceedings, VG Wort, the authorised copyright collecting society representing authors and publishers of literary works in Germany, requests that Canon, Epson, Fujitsu, Hewlett-Packard, Kyocera and Xerox be ordered to provide information to it on the nature and quantity of printers that they have sold since 2001. In addition, VG Wort claims that Kyocera, Epson and Xerox should be ordered to pay it remuneration by way of a levy on personal computers, printers and/or plotters marketed in Germany between 2001 and 2007. In those circumstances, the Bundesgerichtshof has requested the Court of Justice to provide it with an interpretation of the relevant provisions of EU law.
In today’s judgment, the Court of Justice, in response, states that the concept of ‘reproductions on paper or any similar medium, effected by the use of any kind of photographic technique or by some other process having similar effects’ includes reproductions made using a printer or a personal computer where the two are linked together. In this case, it is open to the Member States to put in place a system according to which the fair compensation is paid by the persons in possession of a device contributing, in a non-autonomous manner, to that single reproduction process of the protected work or other subject-matter on the given medium in so far as those persons have the possibility to pass on the cost of the levy to their customers, provided that the overall amount of fair compensation owed as recompense for the harm suffered by the author at the end of that single process must not be substantially different from the fixed amount owed for the reproduction obtained through the use of one single device. 
Moreover, the Court finds that an act by which a rightholder may have authorised reproduction of his protected work or other subject-matter has no bearing on the fair compensation owed. 
The Court states that, in addition, the non-application of the technological measures designed to prevent or restrict unauthorised reproduction cannot have the effect that no fair compensation is due for private copying. The application, by the rightholders, of such measures is voluntary. Nevertheless, it is open to the Member State concerned to make the actual level of compensation owed to rightholders dependent on whether or not such technological measures are applied, so that those rightholders are encouraged to make use of them and thereby voluntarily contribute to the proper application of the private copying exception. 
Lastly, the Court holds that the relevant legislation ‒ a directive which came into force on 22 June 2001 and which the Member States had to transpose into national law by 22 December 2002 at the latest ‒ does not apply to the acts of using protected works or other subject-matter which took place before that date.

General Court: Dialdi v Aldi - likelihood of confusion

In Case T-505/11 (25 June) Dialcos SpA applied to register the "slightly figurative" Community trade mark DIALDI for goods in Classes 29 and 30, including predominantly gluten free foods. Aldi GmbH & Co. KG opposed on the basis of their earlier CTM ALDI registered (in the OHIM tradition) for all the goods in the headings for those same classes.

The Opposition Division found that, notwithstanding that the goods were identical, there were sufficient differences between the mark and sign that there was no likelihood of confusion. The earlier mark could perhaps be considered highly distinctive but that makes no difference to the analysis (though one might argue that if the opponent's mark were highly distinctive, or otherwise easily recognised by consumers, the junior sign would not have to be as different as would be the case if there were less consumer recognition of the senior one - consumers would be less likely to be confused if they knew and recognised the senior mark). The Board of Appeal upheld that decision.

The General Court considered that the Board of Appeal had been correct to consider that the goods were intended for all consumers, notwithstanding that some of them were intended for a particular group. The goods are not hazardous, like pharmaceuticals, such that a higher level of attention might be expected from consumers. But the General Court still upheld the appeal.

It took the view that (contrary to the Board's view) you cannot assume that the relevant public will see the DIAL part of the applicant's sign as a separate element from the two final letters, which if they did would make the signs quite different: the public will not necessarily appreciate the "split" nature of the sign. The visual and aural differences did not counterbalance or outweigh the similarities. The Court therefore sent the case back to the Board of Appeal.

Malaysia Dairy Industries Pte. Ltd v Ankenavnet for Patenter og Varemarker [2013] EUECJ C-320/12 (27 June 2013)

The concept of "bad faith" in trade mark law is notoriously slippery, and in my experience unlikely to help much even in some pretty egregious factual situations. According to the Court of Justice last week in Malaysia Dairy Industries Pte. Ltd v Ankenavnet for Patenter og Varemarker [2013] EUECJ C-320/12 (27 June 2013) Article 4(4)(g) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted in the following way ...
  • The concept of ‘bad faith’, within the meaning of that provision, is an autonomous concept of European Union law which must be given a uniform interpretation in the European Union;
  • In order to permit the conclusion that the person making the application for registration of a trade mark is acting in bad faith within the meaning of that provision, it is necessary to take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration. The fact that the person making that application knows or should know that a third party is using a mark abroad at the time of filing his application which is liable to be confused with the mark whose registration has been applied for is not sufficient, in itself, to permit the conclusion that the person making that application is acting in bad faith within the meaning of that provision; and
  • Member States may not introduce a system of specific protection of foreign marks which differs from the system established by the directive and is based on the fact that the person making the application for registration of a mark knew or should have known of a foreign mark.
I hope I can be forgiven for only slightly paraphrasing the last few paragraphs of the judgment: it tells you what you need to know. There is a lot of doubtful, if not out-and-out bad, faith about in the trade mark system, and this doesn't look as if it is going to help a lot - although like all utterances of the Court of Justice it is insulated from the facts, and when national courts come to apply the interpretation it might turn out to be useful in dealing with this particular problem.

Case Search

Wednesday 26 June 2013

Nonsense in contract drafting

Just read a term in a contract which says:
[Party A] undertakes to [Party B] that it will:
(a)  not do or omit to do any act that may damage the reputation of [Party B] ...
How can they both do and omit to do the same act? And why should Party B agree to Party A doing acts that may damage its reputation (even if it undertakes not to do them as well)?

It also contains an indemnity which specifically mentions proceedings brought under the Trade Descriptions Act 1968 - of which, to be fair, a couple of provisions creating offences still remain in force. And there is a completely standalone clause that says;
The provisions contained in this clause shall survive the termination of this Agreement.
That's OK, then!

Tuesday 25 June 2013

Brandstrike launch index to track websites responsible for losses

Here's a press release that just arrived - I assume I have been given it in order that I might share it with my reader(s) ... The heading was rather long and breathless so I have removed all the bits that served only to stake claims to intellectual property. Note the patent pending and the (unregistered) trade mark, which looks to me as if it might take a while to acquire a strong enough secondary meaning to justify the TM symbols.
Businesses frustrated with an inability to pinpoint websites responsible for revenue and reputation loss will get a helping hand this month as brand protection services company, Brandstrike launches its revolutionary Revenue and Reputation Risk Index™ (RRRI™).  [Should there not be another R in there, for "Revolutionary"?]

The patent pending technology behind Brandstrike’s RRRI™ is the first of its kind to give rights holders the information they need to be able to focus on those websites that are actually causing real revenue and reputation loss. It transforms the current approach, which calls for a mass targeting of thousands of sights [such as the Tower of London, the Palace of Westminster, and other places that attract sight-seers, no doubt] in the hope of catching the culprits in the net, with a seamless, integrated and speedy solution.
Part of Brandstrike’s new IPCurator online brand protection solution, the Revenue and Reputation Risk Index™ (RRRI™) does all of the hard work for the rights holder, working out which infringing sites are getting the most traffic and then ranking them accordingly. It assigns a number to each website based on their search engine ranking results, making it possible to identify which infringing web sites are being visited by the largest number of consumers. This means enforcement resources can be appropriately and quickly directed at the offenders.
Damian Croker, CEO of Brandstrike said, “Marketing departments spend large sums of money to ensure that their company’s web site appears at the top of search engine results, so that consumers buy their products rather than those of their competitors.  It is well-known that the higher a brand’s rank on a search engine page, the more website visits it will get.  A whole industry has sprung up around this concept, called Search Engine Optimisation (SEO).
“Counterfeiters that [or "who", as we say in British English] sell on the Internet have developed very good SEO skills and can register a domain name one week and be on the first page of a large search engine, such as Google, the next. Those counterfeiters are increasingly moving away from .com top-level domains (TLDs) and are now moving to country-code TLDs (ccTLDs) such as, making monitoring and enforcement on generic TLDs (gTLDs), such as .com registrations, only a part of the challenge.”
Performing a search using a local search engine does not reveal which websites are appearing in the search results of consumers in other countries, because search results are specific to the geography of the searcher.  Therefore, the counterfeit web sites that a brand owner is able to remove or force to a lower rank on a given search engine are not necessarily the ones causing lost revenue and reputation in other parts of the world.
Current online brand protection solutions are mostly based on ranking engines, such as Alexa, coupled with search results from a single search engine such as Google.  Some might employ algorithms that include other factors, but until Brandstrike’s RRRI™, none could accurately identify which websites are receiving the most visitors around the world and are therefore the ones causing the most revenue and reputation loss.
The cutting-edge Revenue and Reputation Index™ is one element of Brandstrike’s new IPCurator online brand protection solution. The system is designed to focus limited resources to get the maximum return on effort. By making monitoring easier, IPCurator and The Revenue and Reputation Index™ facilitate better policing of brand infringement and faster response times to infringements, reducing the revenue and reputation risk potential. Suitable for companies large and small, IPCurator includes a domain name watch function which acts as an early warning system. This system alerts brand holders if anyone attempts to register a domain name anywhere in the world containing the brand itself, further reducing the risk of lost revenue and reputation.
To find out more about Revenue and Reputation Index™ and IPCurator, visit
It sounds like a very useful tool for trade mark owners working out how to deploy their resources. The press release also tells us a little about the company, including:
We have the largest associate law firm network in the world spanning over 200 countries/territories. This enables us to investigate and enforce our client’s [sic] rights wherever abuse is detected.
That sounds like a lot of trouble to go to when you only have one client. Presumably they have paid good money to a PR agency to give me some entertainment.

The right sort of confusion

On 31 July last year, Hildyard J found the defendants, Okotoks Ltd, liable for passing off and infringement of a Community trade mark (not available on Bailii, as far as I can see): the contest was FINE & COUNTRY v FINE for estate agents. The defendants are better known under the name "haart" which we must all have seen on estate agents' boards, and (if you are anything like me) wondered about. In Okotoks Ltd & Anor v Fine & Country Ltd & Ors [2013] EWCA Civ 672 (14 June 2013) the Court of Appeal upheld that judgment.

The defendants argued that, even if (as the judge had found) there was a likelihood of confusion between the CTM and their sign, it was a type of confusion that public policy tolerates - "good confusion", if you will, as I certainly do, because that looks like quite a nice turn of phrase - because it refers to the quality of what the business concerned has to offer. It is laudatory: it tells you that they are selling high-quality properties (though if they are new and have one bedroom they will be smaller than elsewhere in Europe). For several reasons the judge did not think that the confusion was tolerable, and the Court of Appeal agreed. It also agreed on the passing off point.

The leading judgment (that of Lewison LJ) runs to 125 paragraphs, 40 pages, and I haven't found anything in it that I need particularly to draw to your attention - all good stuff, but nothing earth-shattering, even just the slightest bit of shattering. However, I should point you to the IPKat, who picks up on the point that the trial judge was said by the Court of Appeal to have got some things wrong, and who asks some questions about when the Court of Appeal may substitute its understanding of the facts for those of the judge (especially in the light of the recent Lumos judgment, in which Lloyd LJ also sat). See here where there is also a link to the Kat's report of the first instance judgment.

Interflora gets general EU-wide injunction

Interflora Inc & Anor v Marks and Spencer Plc & Anor [2013] EWHC 1484 (Ch) (12 June 2013)  is the latest in a saga with many chapters. Last month Arnold J held that Marks & Spencer had infringed Interflora's trade marks, through keyword advertising: this month he  has granted a general injunction - as opposed to one that deals only with specific infringing acts - across the whole EU.

Such a general injunction might be thought to be disproportionate, and therefore contrary to the enforcement directive. It could have a chilling effect (something that in the depths of an English summer might almost go unnoticed) because the threat of content proceedings would be hanging over the party injuncted: but (on the basis of Hotel Cipriani Srl v Fred 250 Ltd [2013] EWHC 70 (Ch), [2013] EMTR 18 the fact that declaratory relief is available mitigates this undesirable possibility. In other words, you don't need to worry so much about going to gaol for contempt if all it takes is an application to the court to be guided on what you can and can't do. Then all you have to worry about is your lawyers' bills, although they will be smaller than they would be if a fresh application were needed or if you were hauled up for contempt.

The defendant had not managed to convince the court that the its infringement would not or was not liable to affect the functions of Interflora's CTM in other Member States, so the court applied the general rule that an injunction in a CTM case should apply throughout the Union (applying Case C-235/09, DHL v Chronopost [2011] ECR I-2801).

Distinctiveness in slogans

Case T‑515/11, Delphi Technologies, Inc. v OHIM, involved an application to register the distinctly unpromising sign INNOVATION FOR THE REAL WORLD as a CTM for certain motor vehicle components (the application actually calls them "motor vehicle products", but the only products of a motor vehicle are the thrill of speed, which these days is hard to capture, the pleasure or at least utility of getting from A to B, and a mixture of unpleasant gases, none of which are what was intended by the applicant) and, curiously, specialised medical apparatus. Perhaps the two groups use related technology. The Court took the view that a mere advertising slogan,  if it were likely to be perceived by the relevant public as nothing more than a promotional formula, had to be regarded as devoid of distinctive character. There was no word-play, nothing imaginative, surprising or unexpected which might confer on the slogan some distinctive character. It was (my assessment, not the Court's) lazy trade mark creation. There are far too many mundane slogans registered as trade marks already, and it is good to see the Court (and the Board of Appeal, whose decision the Court upheld) setting the bar reasonably high.

General Court thinks NICORONO is too similar to NICORETTE (and who can argue?)

Case T-580/11, McNeil AB v OHIM, involved an application to register the word mark NICORONO as a CTM, for aids to help smokers stop. In opposition proceedings, the Board of Appeal had decided that there was no likelihood of confusion although the goods were identical. The Court found (agreeing on this with the BoA) that the relevant public was professionals and consumers, and that the consumers involved, given that their health was at stake (should they have taken judicial notice of the fact that so many are in denial about this, I wonder?) would be particularly attentive.

The Court also agreed with the BoA that the "NICO" part of the mark, although not descriptive, as "highly evocative" of a characteristic of the goods and therefore only weakly distinctive. (To some of us, the name is highly evocative of the late Christa Päffgen, or even of Mr Ladenis and his excellent restaurants, but that's another matter, although I suppose it does go to the suitability of the word for trade mark purposes.) Where the Court differed from the Board was in its assessment of the power of the first four letters of the trade mark to attract the attention of the relevant public. Its length and leading position meant that it would do so as much as the "RONO" or "RETTE" part (and perhaps it is also worth noting that it's actually the first five letters that the marks have in common, although it's certainly the NICO element that carries the meaning). The similarities outweighed the differences, and visually, phonetically and conceptually the marks were similar. Which demonstrates the dangers of incorporating descriptive elements into your trade mark - taking the lazy route to creating a trade mark, perhaps, or trying to convey information about what the goods do not just who makes them.

Small differences in designs may not be insignificant

In Case T-68/11, Kastenholz v OHIM, the General Court confirmed that this registered Community design:

Image not found

representing watch dials was valid over earlier designs protected by German copyright law (which I won't bore you with). The earlier designs changed colour or intensity according to the time: the registered design's dials were coloured uniformly, which amounted (according to the Court, and I suspect to most sensible people) to a significant difference between the designs. The Court therefore decided that the registered design possessed the necessary quality of novelty (but was the novelty in the appearance of the design, or in the function of the watches? We are on tricky ground here, where form and function are difficult to distinguish). The Court also rejected the argument that the design lacked individual character.

The interesting point to note, I think, is the Court's observation that even though the differences were small the informed user would attach a great deal of importance to the appearance of articles like this and would not regard even small differences as insignificant.

Factsheet on orphan works and extended collective licensing

The Patent Office has published a Factsheet, Orphan Works Licensing Scheme and Extended Collective Licensing, which should help dispel some misconceptions about how the new law (in the ominously-nicknamed ERR Act) will operate. A good idea: copyright has for many years been more a matter of urban myth than solid legal understanding among many people, and of course the press lead the way in this.

Further details of the system have to await implementing regulations, on which we the public will be consulted (but in which no doubt only Big IP will be listened to).

The Factsheet explains about the criteria which that applicants will have to fulfil before they can use orphan works: a diligent search for the copyright owner, and paying an "up-front" licence fee (surely we are not going to see the expression "up-front" in British legislation?). It tells of the register that the authorising body will be required to keep, explains what a collecting society will have to do before it can operate an extended collective licensing scheme, and assures us that individual rights-holders will be able to opt out of such schemes, without charge. Wow, you won't have to pay not to be a member of something! That is magnanimous.

The Factsheet also says that as far as artistic works are concerned (and here we are talking almost exclusively about photographs - indeed, they are surely the largest category of orphan works) the orphan works licensing scheme is expected to be used for historical photos for which there are no substitutes, not contemporary digital photos found online (from which data enabling the copyright owner to be identified has so often been stripped - making this a rather optimistic-sounding statement).

Friday 21 June 2013

New Exceptions to Copyright, part II

Now the Patent Office has published a second bunch of proposals to implement the exceptions which the Hargreaves Review thought should be carved out of copyright protection:
New Exception for Data Analysis for Non-commercial Research (70Kb)
Amendments to Exceptions for Education
Amendments to Exceptions for Research, Libraries and Archives
Written comments may be made up to 2 August.

Satco Plastics Ltd v Super Pack Ltd & Anor [2013] EWPCC 29 (05 June 2013)

Another PCC case, another UKUDR case: they are getting more and more numerous. It's Satco Plastics Ltd v Super Pack Ltd & Anor [2013] EWPCC 29 (05 June 2013), in which Mr Recorder Baldwin QC explains that manufacturing something in China, even when it was with the intention of importing it into the UK, does not infringe UK unregistered design right. Actually importing the articles would probably be a different matter, but that isn't what the claimant pleaded. Strange.

Tuesday 18 June 2013

Intellectual Property Bill

The Intellectual Property Bill  is hardly news any more, and plenty has been written not only about it but about proposed amendments too. At 23 sections, it's a pretty short bill, and its brevity is closely associated with my first gripe about it - in fact, my first two gripes: why does it use the increasingly anachronistic appellation "intellectual property" in the first place, and secondly why use in the title an expression which already causes so much damage and confusion when in fact it touches on only two of the four main legal rights that fall under the very flexible heading, "intellectual property"? Why could it not have been called the Patents and Designs Bill, so its title would have reflected its subject matter? I was about to write that we had a Patents and Designs Act not long ago, and fortunately checked before I committed myself on that - fortunately, because I find that the only Patents and Designs Act on the statute book in fact dates from 1907, which even by my extensive definition cannot be considered "not long ago". Ah, there was another - in 1919 - which appears in the table of statutes in my copy of Morris and Quest, but I don't think that makes a big difference.

That gives away a large part of what I wanted to say about the Bill, too. Part 1 is headed "Designs" and Part 2, "Patents". Part 3, as is pretty usual with these things (it's probably in a word-processing template in Parliamentary Counsel's office) is headed "Miscellaneous" and Part 4 is "General".

Turning first to Part 1 (and I don't propose to say much about the other Parts), design law has been the worst can of worms in the intellectual property area (see, in the right context the expression has its uses) since at least Jill Knight MP's Design Copyright Act 1968, which cannot even be found on - and at the same time my favourite. Repealing section 52 of the 1988 Act, one of the keystones in the dam which held back copyright and stopped it flooding the field of designs, was bad enough - I sense a classic bit of special pleading, and a lack of evidence-based policy-making, but then the same could be said of Part 3 of the 1988 Act which was written to keep car parts makers happy. Now the new Bill will mess about with some of the key concepts of Part 3, and the rules about ownership, and also tinker with infringements of registered Community designs.

First of all, the meaning of design. The Bill will delete the words "any aspect of" from the definition that is found in section 213(2) and also in section 51(3) (another important part of that dam), which tells us that the word "design" means "the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article." Shouldn't the words "the design of" be omitted too, to make the definition vaguely grammatical?

My good friend Jane Lambert, on her excellent NIPC blog, explains the ramifications so there is no point in me doing so too. Suffice to say that the government apprehends that design right owners tend to overstate the extent of their protection, which on the wording of the definition covers the design of trivial elements as well as important ones. If that's a problem, it's one that has been around since 1988. I can see why it might be desirable to tighten up the wording: I have always found the scope of UKUDR, as we should now refer to it, confusing, focusing as it does on the whole design of an article (by contrast with registered designs which protect novel features of a design) but then inviting us to look at parts of the article. But I do think the way to deal with the problem would have been to take out that reference to "part", and leave it to the courts to decide whether an infringer has taken a substantial part of the design.

Moving on, we come to the definition of "original", which the 1988 Act tells us does not include anything that is commonplace. Sounds reasonable, doesn't it? If something is commonplace, it can't be original. Whether a design be commonplace will now be determined by looking at qualifying countries, not the whole world: the definition will, after amendment, read
A design is not “original” for the purposes of this Part if it is commonplace in a qualifying country in the design field in question at the time of its creation and "qualifying country” has the meaning given in section 217(3).
Paragraph 10 of the Explanatory Notes (a document which, back in 1987 when the Copyright, Designs and Patents Bill was before Parliament, was worth its weight in gold, but now thanks to the Internet is instantly downloadable and indeed weightless) says that "there remains confusion as to the geographical coverage over which that meaning applies", a grammatically highly suspect proposition - and obviously composed by someone with a dangerous addiction to compound prepositions. "The amendment", it goes on, anthropomorphising it quite unnecessarily, "aims to remove that confusion by specifying that the meaning of “commonplace” applies to those countries defined under section 217 (3)". The Impact Assessment indicates that the rationale for this change is to achieve consistency with the Registered Designs Act 1949 (version 3). But the RDA deals with novelty, not originality (that, you may remember, was one of the big problems with version 1, which purported to deal with both), and “novelty” is measured across the whole of the European Economic Area. UKUDR applies to the EEA, and not many other places, so the Bill will achieve a degree of consistency in the geographical extent of the measurement: but because the measurement is of different attributes, making the geographical area the same is as pointless as comparing Cheddar chalk with Cheddar cheese.

Next, ownership of the design. UDR always differed from copyright in that when a design was commissioned UDR would belong to the commissioner - unlike in the copyright world, where the rights would remain with the creator. Given the nature of design work, this arrangement always seemed to me to make sense. Now, however, designers are the darlings of the IP system, and policy (evidence-based, I hope) demands that they retain the rights to their work. Well, things change over the course of 25 years, and we are no longer talking about designs for Morris Marina exhaust pipes (OK, we never were in the context of UDR, but you see what I mean), we are talking about designs for cool tablet computers. Perhaps this is a valid development.

There are also changes to some exceptions to infringement provisions: design right will not be infringed by private acts, experiments and teaching, and for things done on visiting ships and aircraft. I fear that allowing experimental use will open Pandora's box, as designs don't have to be used in experiments in the same way that patents do - unless, for example, you're trying to build a bouncing bomb, but who does that these days? Perhaps I am wrong, but I can't get very excited about these provisions. The provisions about registered designs are a bit boring too, and it's late, so I will leave them to another time - if indeed I think it's worth telling you more.

The Impact of Lookalikes

One of my least favourite IP issues. The soi disant Intellectual Property Office has released a report on the impact of lookalikes, because everything must be measured and quantified in the interest of evidence-based policy-making (notwithstanding which, section 52 has been done away with). What this means is that the special pleading that started about the time of the Bill that became the Trade Marks Act 1994 is still going strong - and what that means is that nearly 20 years on the special pleaders haven't convinced anyone, but still hope to do so. Well, it worked with copyright in sound recordings ... What a way to build a legal system.
The issue of lookalikes is one that has been on the policy and business agenda for at least two decades. Well-known brands, and brand-owners' groups, have long advocated [for which read "pleaded for"] specific and adequate protection against lookalikes under United Kingdom law, particularly in the context of possible business-to-business harm. More recently, the issue has also become more prominent on the agenda of the European Union both in the context of so-called "freeriding" in relation to trade mark law, and with respect to possible unfair commercial practices.
 Maybe it's the fact that the EU is now seized of the matter that gives it a new lease of life, and leads to the waste of taxpayers' money on trying to collect some evidence that will convince someone instead of trying to reform trade mark law so it works for small businesses. But at least the evidence adduced here is at worst inconclusive, and at best pretty clear that on balance lookalikes aren't a problem for consumers, and not even much of one to brand owners. Excellent! Even better: the Consumer Protection from Unfair Trading Regulations 2008 already fill any need for legislation, or at least most of it.

The report is available from the Intellectual Property Office - 2013 web page.

Legal Writing Prof Blog: overcoming procrastination

The Legal Writing Prof Blog offers a couple of articles on overcoming procrastination which are obviously required reading for me: some of my readers might also benefit from them - but if your procrastination takes the form of reading my blog, or blogs, please don't allow me to interrupt you.

It strikes me that reading an article on overcoming procrastination is a bit of an oxymoron ...

Agreement on a Unified Patent Court, Cm 8653

The Agreement on a Unified Patent Court has been published by the government, as Cm 8653. A mere 66 pages, which these days wouldn't be long for a judgment: in the shops it would cost you £11.75, but as a download it costs nothing - the wonders of the Internet ...

I am intrigued to see the copyright notice on the inside cover: "Crown copyright 2013", it says. Section 163 tells us that Crown copyright subsists in a work made by Her Majesty or an officer or servant of the Crown in the course of his duties. Her Majesty can be ruled out as a possible maker of this work, but so too I imagine can officers and servants of the Crown - except in the very limited sense that someone has created the typographical arrangement of this published edition. Surely this is a European Union text, but the various Copyright (International Organisations) Orders do not mention the Union, any of the Communities. Interesting. No doubt there is a simple answer, just not one that is very obvious.

Saturday 15 June 2013

SDL Hair Ltd v Next Row Ltd & Ors [2013] EWPCC 31 (14 June 2013)

SDL Hair Ltd v Next Row Ltd & Ors [2013] EWPCC 31 (14 June 2013)  is a judgment of Mr Recorder Richard Meade (not another debutant intellectual property judge?) and concerns a patent for heating hair rollers. There is a lot in the 44-page judgment about inductive heating, which is quite interesting but not knowledge that many lawyers will be able to put into regular use. The upshot of the consideration of the physics was that there was no infringement, but there were also points to be considered about whether the claimant was an exclusive licensee and therefore entitled to sue, and whether certain threats were actionable (they were) and if so who was liable for some of them (an individual who had made a threat was held to be personally liable).

Destra Software Ltd v Comada (UK) LLP & Ors [2013] EWHC 1575 (Pat) (11 June 2013)

Destra Software Ltd v Comada (UK) LLP & Ors [2013] EWHC 1575 (Pat) (11 June 2013)  is a decision of Norris J in the Patents Court, concerning that old favourite ownership of copyright in computer programs. At 53 paragraphs, it feels short, and the impression is reinforced by the fact that it has no table of contents as so many judgments have these days. The question, as so often happens, was whether copyright in the software had been assigned to the commissioner, or whether the commissioner only had a licence to use it in certain ways (including, in this case, allowing customers to instal it on their servers, which is a bit of a novel issue).

The recorder held (highlights added to make it more comprehensible, but really you have to read the whole thing to get it):
  1. I am in no doubt that under the contract that predated the Consultancy Agreement it was implicit that the copyright belonged to the commissioning entity and not to the contractor. I so conclude for the following reasons:-

  2. a) The very foundation of the venture conducted by Comada (later Comada Cayman) was the MAT:ware software. The idea that the actual copyright in the MAT:ware software should not belong to Comada/Comada Cayman makes no more commercial sense than it did in IBCOS. MAT:ware is not a tool that is deployed in Comada's business: it is the very business itself. It is what the whole enterprise was about.
    b) The object of the business was that MAT:ware should be exploited in whatever way proved to be beneficial. If an informed bystander had been asked "Does anyone have a veto over the way in which Comada Cayman exploits the software?" he or she would have said "Of course not: it is up to the company through its directors and shareholders what they do. Everyone's efforts in establishing the enterprise are reflected in their shareholdings and their individual contractual arrangements".
    c) One of the principal means of exploiting the software was by licensing: it was necessary for Comada Cayman to have full rights of enforcement in multiple jurisdictions. That is secured by assignment but not by licensing.
    d) The ultimate aim of the project was to dispose of the enterprise to the maximum advantage of the participants: it is necessary to the attainment of that goal that Comada Cayman should own the intellectual property rights and be able to dispose of them freely without requiring any purchaser of the business to negotiate with multiple Claimants to the copyright in the core product in order to gain complete control.
    e) The MAT:ware software was a collaborative effort: it makes no sense for individual team members to retain property rights of any sort in what that member produced.
    f) There cannot be any special implied term relating to what Mr Hughes produced because Mr Hughes never disclosed to any other participator either that he was creating something called "the Destra platform" or that he was incorporating part of it in the work that he was doing on the MAT:ware software. Implied terms are based on what is obvious given the common knowledge of the parties. You cannot create an implied term out of secret knowledge held by one party alone. That was the view I expressed in Burrows v Smith [2010] EWHC 22 (Ch) at paragraph [44]: and I adhere to it. That is why the actual decision in Clearsprings does not assist in this case: in Clearsprings it was common knowledge that in performing the commission the contractor would be using software that already existed.

Artistic performers to get stronger intellectual property protection

Artistic performers to get stronger intellectual property protection, a press release from the Patent Office announces, the medium for this stronger protection being a WIPO treaty that the UK signed on 12th inst.

Friday 14 June 2013

Enterprise and Regulatory Reform Act commencement

The Government has announced when the copyright provisions of the Act will come into effect, or at least given some indicative dates. Sections 75 to 78 and Schedule 22 already came into force on 25 April 2013. BIS proposes that regulations to implement section 76 (Power to reduce duration of copyright in transitional cases) will be in force by April 2014, and that regulations to implement sections 77 (Licensing of copyright and performers’ rights) and 78 (Penalties under provision implementing Directive on term of protection) and Schedule 22 (linked to section 77) will come into force by October 2014.

As for section 74, which will repeal section 52 of the Copyright, Designs and Patents Act 1988, that requires further consultation, though the new Intellectual Property Bill looks as if it will make that otiose (on which subject, see David Musker's posting on the Class 99 blog the other day.

Friday 7 June 2013

New Exceptions to Copyright

On 7 June, the Patent Office published details of the legislation that is intended to bring into force several of the copyright exceptions proposed by the Hargreaves Review. It seeks comments by 17 July. Here are links to the consultation documents:
New Exception for Private Copying
New Exception for Parody
New Exception for Quotation
Amendments to Exception for Public Administration

Thursday 6 June 2013

If the United Kingdom were to leave the EU ...

An interesting posting here on Mills & Reeve's technology law blog, even if the use of the subjunctive seems a bit hit and miss (and this is a very subjunctive topic): if the United Kingdom were to leave the European Union, which with a referendum promised no-one can say is impossible, what would happen to Community trade marks and Community registered designs? I sometimes think that nothing bad enough could happen to those two sub-species of intellectual property, which have done so much to clutter the place up with dubious rights, to the detriment of IP's reputation as a whole, such that even I might favour leaving the EU if we could be rid of them. But that's just me, perhaps. However, I think it's at least arguable that CTMs and CRDs, like the EU itself, have turned out to be big disappointments - bloated, elitist, and of little relevance to the small person or business. They all promised so much, and have delivered so little.

M&R - in fact, their Richard Plaistowe, although he didn't post the piece himself, curiously: perhaps in Biglaw you have someone to post stuff to your blog for you? - look at the precedent of Irish independence, which shows just how novel the dilemma is. Holders of UK trade marks and registered designs at that time were given 6 months in which to re-register in the State and retain existing priorities. Something similar might happen if we leave the EU.

Something similar might also happen if Scotland were to leave the UK - but that's not going to happen, is it? Ah, if only someone had listened to those who called for a federal Britain in a federal Europe back in the seventies.

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