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.

Volkswagen Aktiengesellschaft v Garcia & Ors [2013] EWHC 1832 (Ch) (25 June 2013)

Car security isn't what it was when I was young. Leaving aside the fact that my old Frogeye didn't even have door locks (although there was a lock on the bonnet, so that might have foiled a thief, who'd have had to be pretty mad to go for a bright orange car in the first place)  let alone an immobiliser, even the locks on cars of that era left a lot to be desired. On a camping holiday with a schoolfriend and his family, he locked the keys to his Cortina GT in the boot, but his father (who ran a Ford dealership, although he himself drove a very exotic BMW 3.0CSi) opened it with the key to his caravan.

Nowadays, although there are still mechanical aspects to vehicle security, it's an area which has a great deal more to do with electronics. It was to protect the algorithm that lies at the heart of the security system it uses (along with several other manufacturers), the Magamos Crytpo chip, that Volkswagen found itself in court last week (Volkswagen Aktiengesellschaft v Garcia & Ors [2013] EWHC 1832 (Ch) (25 June 2013)).

The facts were quite simple. A handful of academics had "attacked" (as they say in the field) that security system, and discovered some flaws. The vehicle manufacturers who stood to be embarrassed by those flaws might, you'd think, be grateful, but the academics proposed to deliver a paper at a conference, and in doing so would reveal the key algorithm to the world. In the name of "responsible disclosure" they had not simply gone ahead and done this: they had talked to the proprietor of the confidential information concerned. But they hadn't talked to VW, not until much nearer the date of the conference (which was last week, hence VW's need to seek an interim injunction).

To do this, the academics used a program called Tango Programmer, produced by an organisation called Scorpio, which is based in Bulgaria, and purchased by the academics for €1,000. There is some discussion in the judgment of how the program was devised, and where its authors found the Megamos Algorithm, which they might have arrived at by "chip-slicing" - cutting open the chip and examining the gates under a microscope. The important question was whether the software was legitimate or not. As the judge observed, "Just because it comes from Bulgaria does not mean it is illegitimate." And the fact that the website (not available when I went looking for it the other day, but back on line now) was written in "broken English" did not persuade him. In fact the website looks plausible, and the products shown on suggest that this is a business of some substance; it appears to be a limited company, and the strangest thing about it is its location bang in the middle of Bulgaria.

There was an issue about VW's right to sue. The algorithm was devised by Thales, who were not initially a party to the action, but the judge added them as a "proper and necessary" party, saying that it was likely within the meaning of Cream Holdings Ltd & Ors v. Banerjee & Ors [2004] UKHL 44 (14 October 2004) that "the confidentiality in the Megamos Crypto algorithm belongs to them", which is an interesting way to express it. This point did not stand in the way of an injunction being granted: Thales had standing to sue, but the judge held that VW did too, as they had a legitimate interest in being a co-claimant.

There is an old Jacob J case, Mars UK Ltd v Teknowledge Ltd [1999] EWHC 226 (Pat) (11 June 1999), [1999] 2 Costs LR 44, [1999] EWHC 226 (Pat), [2000] FSR 138, on reverse engineering, in which he held that it was not a misuse of confidential information to reverse engineer a product you had bought even to obtain information encrypted for security. The present case was argued on the basis that that case had been correctly decided, though that is in dispute, and (of course) it was the claimants' submission that it did not apply because the Scorpio Programmer software was not legitimate. The judge ended up relying on the "murky" origins of the program and the lack of effort on the part of the defendants to ascertain whether it had been produced by legitimate reverse-engineering or otherwise, and on that basis he held that there would be a breach of confidence. Should an injunction be granted to prevent publication? Not merely to save VW's blushes, said Mr Justice Birss, considering Article 10 of the European Convention, section 12(3) of the Human Rights Act, and the Cream Holdings judgment (but not American Cyanamid, which he said was clearly not the right test in the circumstances), which gave the guidance that the standard for not allowing publication is a flexible one, and that the court should be "exceedingly slow" to make interim orders if it is not satisfied that the claimant will probably succeed at trial.

Thales or VW would, he thought, probably succeed at trial, so that hurdle was cleared. Then the balance of public interest and the public interest defence fell to be considered. Freedom of expression and academic freedom were very important, but the epidemic of car crime that would be unleashed if the algorithm were published was more important. The software is sold by someone who understands that it can facilitate crime: there's a disclaimer that says (sic)

All devices and software developed by Scorpio-LK Ltd. are designed and sold with legal purpose to enchance and help people working in the sphere of car repairs and maintenance. The company doesn't take responsibility for any misuse of our products for illegal purpuses. Hence persons misusing our products for illegal purpuses bear their own responsebility for such acts.

And elsewhere:

Scorpio-lk Ltd accepts no responsibility for misuse of software for illegal purposes. The purchased softawre can only be used to repair vehicle immobilisers. On purchase of software client accepts responsibility for software use rendering Scorpio-lk Ltd unaccountable for illegal use.

The English, incidentally, seems no more broken than that of many native speakers. But the judge concluded that the claimants would probably be able to show that the software was not legitimate, and the defendants should have appreciated that.

The judge granted the injunction sought by VW, requiring "redaction" (the trendy alternative to "editing") of the paper they had written. They could still impress their peers by showing that they had derived the algorithm, and the claimants could remedy the problem identified with it: win win. The judge clearly came to the view that the defendants' protestations about "reasonable disclosure"  were nothing more than self-justification, and not the actions of responsible academics - a harsh view, but consistent with their reluctance to take even a few simple steps to ascertain where Scorpio-Lk Ltd had found the algorithm.

Fenty and other v Arcadia Group Brands Ltd and otehrs [2013] EWHC 2310 (Ch)

Once upon a time, I had a Lindisfarne tee-shirt of which I was rather proud. I imagine this was about the time of Fog on the Tyne - nearly as good as, though much more successful than, Nicely out of Tune. It never occurred to me that there might be some commercial connection between the band and the tee-shirt - after all, the band was in the music business, not the rag trade. Nor did the resemblance of the design of the tee-shirt to a Newcastle Brown Ale label concern me. After all, there was a significant overlap between rock music and the drinks industry - related fields of activity, to my teenaged self - and S&N (as it then was) sponsored Lindisfarne, at least to the extent of a crate of beer from time to time, so it seemed perfectly natural to mark the connection in this way.Merchandising, as we have come to know and love it, was more apparent in my other great area of interest, motor racing. Already, Colin Chapman had brought in commercial sponsorship, and at the British Grand Prix one could buy all manner of regalia from Gold Leaf Team Lotus and Yardley BRM - though most of the other teams back in the early seventies still limited their sponsorship to companies which actually supplied stuff they used in the cars, like petrol and spark plugs. So the idea of a connection between the subject and the tee-shirt must have been planted in my mind by then.
Times change. Rock bands do sponsorship deals for more than just a few bottles of beer. In motor racing, the sponsor's name usurps that of the maker of the cars. And as the world knows, in Fenty v Arcadia Group Brands Ltd [2013] EWHC 2310 (Ch) (31 July 2013),  or Rihanna v Topshop as it is better known, the popular singer succeeded in her passing off claim against the retailer which was offering garments bearing her image. In fact, it looks to me like a particularly unflattering image, but that doesn't seem to have been raised in the trial, although there might well have been a remedy had that been proved. On the other hand, it might simply be fashionable to look like that, though I cannot understand why that might be the case. And a fortiori I cannot understand why anyone might wish to hang such an image on their chest. But some people might have said the same about my Lindisfarne tee-shirt (my parents probably did, which may account for why I have no idea what became of it) so I will say no more on that topic.

As I tell my students, every passing off case (and therefore every passing off exam answer or essay) starts its legal analysis with either Advocaat or Jif Lemon, usually the latter because Lord Oliver's explanation is so much more comprehensible than Lord Diplock's. In Fenty the judge, Birss J, chose Jif. Then, very quickly, for obvious reasons (and if they aren't obvious to you read the case) it's on to Irvine v Talksport [2002] FSR 60 (at first instance, before Laddie J: the appeal is at [2003] EWCA Civ 423 (01 April 2003)). There it was established that a claim for passing off could be made out on the basis of a false endorsement: Eddie Irvine had valuable goodwill which he was entitled to protect when Talksport used his image without permission. The appeal concerned only the quantum of damages, or (looking at it the other way) how much he could have charged had they asked for his endorsement. The judge put this at about the cost of an hour of a good intellectual property QC's time: the Court of Appeal raised him by a factor of twelve-and-a-half (to £25,000), which is a pretty significant matter. The higher figure was at the bottom of the scale of what Eddie said he would expect to charge for an endorsement, famously averring (through his counsel) that he wouldn't get out of bed for less.

It probably takes a great deal more to persuade Rihanna to shake a leg. But the whole endorsement thing is still present: as the judge observed, her fans are influenced by her views on matters of fashion, and follow her lead, so that her endorsement of a fashion item will be very influential, and therefore valuable - which is why she has struck a number of deals with clothing manufacturers and others to give such endorsements, usually in the form of her name or a stylised letter R being attached to the goods.

Topshop argued that there was no misrepresentation. In the judge's words, "Customers buy it because they like the product and the image for their own qualities". I find that hard to believe: it is quite contrary to my experience that anyone would wear a garment depicting a celebrity who they did not like. Tee-shirts and the like (and the garment in suit, described as "a 'boyfriend style tank' (i.e. an oversized sleeveless t-shirt)"is probably best categorised as "like" a tee-shirt) usually convey some sort of message, like this one or the shirt currently in that shop's window, which reproduces a letter to the Governor of the Bank of England about the proprietor's difficulties in securing a bank loan.
In the present case, it was important that the image used was from a particular photo-shoot which meant that it resembled one of Rihanna's album covers. It was also relevant that Topshop courted celebrities, and had put on promotional events with Rihanna in the past - so the public would be receptive to the idea that there might be an endorsement here. The garment and its swing tag were completely lacking in any reference to Rihanna (although the garment had been sold online under the rubric "RIHANNA TANK", a point which the judge regarded as making no difference). Customers would, the judge decided, buy the garment having been deceived into thinking that it was duly authorised by their icon. He went on to conclude:

75. The mere sale by a trader of a t-shirt bearing an image of a famous person is not, without more, an act of passing off.  However the sale of this image of this person on this garment by this shop in these circumstances is a different matter.  I find that Topshop’s sale of this Rihanna t-shirt without her approval was an act of passing off.  I find for the claimants. 

Mishcon de Reya, Topshop's solicitors, say  that their client will be seeking leave to appeal. Leave, one might think, to throw more good money after bad. It seems to me (a safe distance from the case, of course, and therefore unaware of all sorts of things that might make me think otherwise) that in the light of Irvine Topshop's defence was doomed to failure. Birss J's judgment is not a major development of the law of passing off: it seems to me to be a smaller step from Irvine than Irvine was from the cases that had gone before. Of course the judgment is fact-specific, and the sale by a trader of a garment bearing the image of a famous person will not always be passing off. But it seems to me that you could change the facts quite a lot and still be in the passing-off zone.
This strikes me as a clear-cut case of passing off, and one which happily makes arguments for the introduction of some ludicrous new image or personality right, like the Guernsey Lawyers' Welfare Ordinance, less compelling than otherwise they might have been.