Thursday 31 October 2013

UK Government Funds Anti-Piracy Outfit With Taxpayer Money

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

Sunday 13 October 2013

Cadbury colour bar indefensible?

Cadbury has lost its five year battle to register a distinctive shade of purple (Pantone 2685C) as a trade mark for its milk chocolate bars. Cadbury’s argument that registering a specific colour would not give them unfair competitive advantage was rejected by the Court of Appeal, which ruled in Société Des Produits Nestlé S.A. v Cadbury UK Ltd [2013] EWCA Civ 1174 (04 October 2013) that Cadbury’s formulation does not comply with the requirements for trade mark registration, lacking ‘the required clarity, precision, self-containment, durability and objectivity to qualify for registration’. Specifically, the definition of the ‘predominant colour’ of its packaging fell short of necessary precision’ as demonstrated by the attempt to register ‘multiple signs’ using the purple shade in a variety of permutations rather than as a consistent single block of colour. Sir John Mummery added that a colour trade mark would give Cadbury a ‘competitive advantage’ and place its competitors at a disadvantage.
Cadbury, trying perhaps to salvage something from the exercise, says the right to protect the colour from those seeking to pass off their products as Cadbury chocolate remains unaffected. Nor does the judgment make colour trade marks in general unregistrable: Cadbury could have succeeded with a slightly different application, although the commercial value of doing so might explain why they went the way they did.
The application (number 2376879) dates back to 2004. The Examiner rejected it as devoid of distinctive character: however, on production of evidence application was accepted and published in Trade Marks Journal on 30th May 2008. The mark applied for was the block purple rectangle and the description read:
The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, as being the predominant colour applied to the whole visible surface, of the packaging of the goods. [Emphasis added: we will come back to those words later.]
The goods specified were in Class 30:
Chocolate in bar and tablet form, chocolate confectionery, chocolate assortments, cocoa-based beverages, preparations for cocoa-based beverages, chocolate-based beverages, preparations for chocolate-based beverages, chocolate cakes.
Nestlé opposed, and the Hearing Officer rejected their claims which were based on arguments that what was applied for was not even a sign, let alone a trade mark, and that it could not be represented graphically. On appeal to the High Court (see our note here) Judge Birss QC upheld the Hearing Officer, and Nestlé appealed to the Court of Appeal. Nestlé also submitted that, if the issues on the interpretation of the Directive were not acte clair in Nestlé's favour, there should be a reference to the Court of Justice under art 267.
At paragraphs [20] and [21] of his judgment, Judge Birss QC had referred to the classic dictum of Cozens-Hardy MR which explains so pithily why trade marks must be kept in their box:
Wealthy traders are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure.
(Joseph Crosfield & Son's Appn ("Perfection") (1909) 26 RPC 837 at page 854.)
In the Court of Appeal Sir John Mummery endorsed the judge’s observations about the problems with exotic marks at paragraph [13]:
The judge recognised that unconventional or ‘exotic’ marks, such as colours, sounds and smells, give rise to conceptual problems, which are not encountered with more conventional trade names and logos. As the registration of a trade mark creates a form of intellectual property conferring a potentially perpetual monopoly in the mark and excluding everybody else from use in various ways, the point of principle has some public importance.
Sir John reviewed the case law which had also been gone over by the Hearing Officer and the judge: Libertel,  Case C-273/00 Sieckmann v. Deutsche Patent –und Markenamnt [2002] ECR 1-11754, Case C-49/02 Heidelberger Bauchemie GmbH v. Bundespatentgerich  ECR 1-6129 and  C-321/03 Dyson v. Registrar of Trade Marks ECR 1-687. He distilled the series of principles from them, set out at paragraph [15] of his judgment, which is worth repeating here:
"The conditions
(1) An application to register a trade mark must satisfy three conditions for the purposes of Article 2:-
(i) there must be a sign;
(ii) it must be capable of graphical representation;
(iii) it must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.
2) The purpose of the requirements is to prevent abuse of trade mark law in order to obtain an unfair competitive advantage.
(3) Identification requirements for entry of a trade mark on the public register of trade marks include clarity, intelligibility, specificity, precision, accessibility, uniformity, self-containment and objectivity.
Multitude of forms
(4) The identification requirements are not satisfied, if the mark could take on a multitude of different appearances, which would create problems for registration of the mark and give an unfair competitive advantage over competitors.
Colour without a message
(5) Colours are normally a simple property of things, or a means of decorating things. They are not normally capable of being a sign. A sign conveys a message. The sign is capable of being registered as a trade mark, if the message is about the source of goods or services.
Colour as a sign conveying a message
(6) Depending on the facts and circumstances of the case, colours, or combinations of colours, designated in the abstract and without contours and used in relation to a product or service are capable of being "a sign."
Graphic representation of colour
(7) As for the second condition of graphical representation, in a mark consisting of two or more colours designated in the abstract and without contours, qualities of precision and uniformity are required. The colours must be arranged by associating them in a predetermined and uniform way.
Colour without form/in a multitude of forms
(8) Those requirements are not met by the mere juxtaposition of colours without shape or contours, or by reference to colours in every conceivable form, so that the consumer would not be able to recall or repeat with certainty the experience of a purchase. The scope of protection afforded by such a mark would be unknown both to the competent authorities responsible for maintaining the register and to economic competitors. Registration would confer unfair competitive advantages on the proprietor of the mark."
Those words in the verbal description of the mark, emphasised above, turned out to be crucial. Sir John held that both the judge and hearing officer had misinterpreted the verbal description. The use of the word "predominant" opened the door to a multitude of different visual forms:  over what might the colour purple might predominate? The application was for the registration of a shade of colour plus other, indeterminate, material: it was not just for a constant single colour, as in Libertel. The colour could not therefore constitute a sign for the purposes of art 2 of the Directive or section 1 of the Act. If it were otherwise:
[t]he result would not be an application to register ‘a sign’, in the accepted sense of a single sign conveying a message, but to register multiple signs with different permutations, presentations and appearances, which are neither graphically represented nor described with any certainty or precision, or at all.
Sir John concluded at paragraph [52]:
The appearance and number of such other signs would be unknown both to the Registrar, who is responsible for the proper functioning of the registration system and is faced with the decision whether or not to register it on a public register, and to competitors, who would not be able to tell from inspecting the register the full scope and extent of the registration. To allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. It would also offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage.
The other two judges, Sir Timothy Lloyd and Lord Justice Lewison, concurred (the first at a little length, the second in five words), and no need was found for a preliminary reference to the Court of Justice. The three Court of Appeal judges have done those who value the commons a favour, putting down a marker to deter would-be absolutists from trying to enclose more than they should be allowed to have. Whether they can stem the incoming tide remains to be seen, but this is an important attempt to do so.

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

Friday 11 October 2013

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

I came across this leaflet via an RSS feed, I think, and rather wish I hadn't bothered. Why on earth is the Commission churning out guff like this at taxpayers' expense? It looks like a rather oversized tri-fold leaflet, and I cannot begin to imagine what the audience for it is supposed to be. It doesn't have a lot of words in it, consistent with modern attention-spans, but those that it does have are rubbish. Commissioner Barnier, who should know better, seems to be saying:
Intellectual property (IP) is the backbone of a competitive European economy, creating jobs and bringing innovative products and services to consumers and companies.
Let's just deconstruct that ... Well, the first thing to annoy me is that the author (and let us assume that the Commissioner did not write it himself) subscribes to the defined-terms-in-brackets school of drafting, even when what goes into the brackets is an abbreviation that no-one is ever going to mistake for something else. Not sure about the backbone metaphor, but let's not fall out over that - especially when once we are past that we are into serious, industrial-strength nonsense.

Consider those claims for intellectual property:
  • '... creating jobs...' How does that work? Jobs can only be created by employers. Those employers might have businesses that rely, to a greater or lesser extent, on intellectual property, but that is at least one stage removed from the IP creating the job. IP can't create anything: it just is. By being, it might contribute to an environment in which jobs are created. Equally, abolishing intellectual property would create a lot of jobs, but they wouldn't be created by the absence of IP, they would be created by enterprising businesses making all the things that intellectual property rights previously prevented them from making: pharmaceuticals, DVDs, handbags and the like. Not an attractive proposition, but possibly as effective (or more so) as a job creation measure as strong IP rights.
  • '... bringing innovative products and services ...' Here's a classic illustration of the dangers of generalising about IP. Trade marks have an effect on how goods and services get to market, and what happens when they get there, but there is no way in which they affect how innovative the goods and services are. And of course copyright has nothing to do with innovation, though we can concede, can't we, that creativity is not a million miles removed from innovation, so in a piece of non-legal writing it might be allowed. But that still leaves my biggest objection, the allusion to the magical powers of any legal right to deliver anything to anybody. No, the mere existence of intellectual property rights doesn't do that. It takes a James Dyson to innovate, and the business he built to bring new vacuum cleaners to the market. Without intellectual property rights he might never have started, or he might have contented himself with his Hoover Junior vacuum cleaner modified to generate cyclones and therefore much more effective than it had been when it left the Hoover factory - but to ascribe to IP the magical power to do all that: well, it's a bit of an insult to inventors, isn't it? Actually, more than a bit of an insult.
  • '... to consumers and companies.' The problem is, you start off something like this and it just has to be a three-part list. I think it's a well-known fact in rhetoric, and I remember reading it in Max Atkinson's 1984 book, Our Masters' Voices, which also taught me about the value of the pause in a speech - a literal claptrap, an indication to the audience that you have reached a point when applause would be appropriate - and which I used to telling effect in a speech to Conservative Party conference in 1983, except for the fact that I hadn't paused to invite applause, I had paused while I worked out what to say next. But it certainly worked. Anyway, this third part of the three-part list is here to make up the numbers, though it's worth observing that any benefit that does not trickle down to consumers is hardly worth having.
The stuff inside the leaflet reads like a conventional justification for the intellectual property system, adapted perhaps to the purpose of justifying the continued and expensive existence of the European Commission - it can hardly be said that without the Commission there would be no IP - nor even that without the EU it would be lacking. But that leads me to the last thing that irritates me about this leaflet: its title refers to 'Europe's asset, Europe's priority'. Another instance of the expansionist Commission speaking for all those countries which aren't part of the Union. It could almost make me wish the UK was among them.

Tuesday 8 October 2013

IPse Dixit: On the meaning of originality

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

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

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

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

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

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

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

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

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

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

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

Thursday 3 October 2013

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

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

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

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

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

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

CMS Committee criticises copyright 'erosion' | The Bookseller

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

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