Duran Duran and reversion of copyright

BBC News reports that the popular music combination Duran Duran have lost a claim in the High Court in which their music publishers sought to prevent them from serving notice to recover their U.S. copyright. Gloucester Place Music Ltd v Le Bon & Ors [2016] EWHC 3091 (Ch) (02 December 2016) is a relatively short (45 paragraph) judgment of Mr Justice Arnold, in his own words 'not without hesitation'. But there was little that he could do: the contract seems pretty clear. The various copyrights (and I don't like using the plural, though it seems appropriate here) were assigned for their full term, and to try to use section 203 of the U.S. Copyright Act to reclaim the rights after the statutory 35 years was contrary to the terms of the contract and amounted to a derogation from grant (reminding me again of BL v Armstrong, which I have been making my students in Nottingham read recently - it's good for the soul).

But surely (I hear you say) the statute overrides the contract? The right to a reversion of the copyright can't be contracted out of, can it? It seems that it can't - at least, on my reading of the provision, and perhaps a friend in the States will comment on this - but the parties went off to court under Part 8 on the basis that there was no dispute about the facts of the case, and the effect of the foreign law is a question of fact: and accordingly the defendants did not seek to adduce evidence evidence about U.S. law. Arnold J was asked only to interpret the contract, and that didn't create much difficulty for him.

It seems from the judgment that the defendants also failed to raise in the proper way a public policy point - although the learned judge indicated that he wasn't receptive to it anyway. There seems some merit in saying that an English-law contract, in which the parties agreed that the English courts should have jurisdiction, should not be allowed to interfere with the operation of a foreign statute.

Finally, the band members, quoted by the BBC, were miffed that they were suffering under a contract signed when they were young and innocent - a common complaint in the entertainment business, so much so that by 1980, when they signed up with the publisher, lawyers would take great care to make the contracts bulletproof. Their argument loses a lot of force, though, when you read the opening paragraphs of the judgment and learn that the 1980 contract had been terminated in 1983 and replaced with contracts with the band members' service companies. They might have been young still in 1983, but they were less innocent and presumably well-advised.

European Parliament committee supports cross-border portability of online films

The Legal Affairs Committee (Press Release) of the European Parliament has supported a proposed regulation that will allow subscribers to online film services to watch them wherever they are in the European Union. Another of those benefits of EU membership that some of the 17 million will miss when it's gone, I expect.

Dictionary of Intellectual Property Law, second edition

I am about to start in earnest on a second edition of the Dictionary - so this is your opportunity to let me know what I should include. Headings only thank you - I am not seeking complete entries. Writing the definitions is my job - and it's what gives me enjoyment, especially when someone says to me "I didn't realise you were so funny!". I can't think of anything that any other person has ever said to me that has given me so much pleasure ...

Rubik's Cube shape trade mark invalid

Rubik's eponymous Cube, surely one of the most well-known and distinctive shapes on the planet, has been deprived of protection - if you believe what you read in the press. Even The Guardian, which in an age of increasingly unreliable journalism has become the source of my regular fix (not being paywalled like the FT, which would otherwise be my preference), has succumbed. In fact the Court of Justice's decision seems like a perfectly good application of the rules that are designed to ensure that trade mark protection does not protect function. The Court of Justice ruled: “In examining whether registration ought to be refused on the ground that shape involved a technical solution, EUIPO and the General Court should also have taken into account non-visible functional elements represented by that shape, such as its rotating capability.”

You might argue that it leans a little too far in the direction of liberality (that is, excluding shapes from protection), as I think I would - should the internal workings of the article really be taken into account? - but the basic rule is a good one. It is also, I think, relevant to ask whether the shape performs a trade mark function - is it an indication of source or origin, or merely the shape of the object? The argument (mentioned in The Guardian's article) that the rights owners should rely on patent protection is also sound, but as the Cube was invented over 40 years ago this suggestion does little but draw attention to the fact that patent protection might be too short (and an arbitrary 20 year term is sure to be too short for some inventions, too long for others).

Actually, were the patent system to give Ernő Rubik's invention that much protection, it would be failing in its main purpose - to encourage innovation. It works, paradoxically, by giving innovators limited exclusive rights, after which anyone who wants to do so can work the invention. During the lifetime of the patent the inventor can make a lot of money (or, of course, none at all) but once it has gone, it has gone. Others must be free to make their own cubes - the interests of society would not be served if cheap alternatives were not available.

Where the commentators err is in treating the loss of the shape trade mark as a disaster. In fact it is a bit of evergreening too far. The trade mark system should not be used to protect technical shapes: they should be freely available to other manufacturers once patent and design protection has expired. We should all be able to buy alternative cubes. What we cannot do - because a large portfolio of trade marks still ensures this - is buy Rubik's Cubes from any other source. And that is how it should be.

Should've refused it

So the Trade Marks Registry has accepted Specsavers' application number 3175246 to register SHOULD'VE and (even more bizarrely) SHOULDVE (series of two: see here). And of course in line with modern (absolutist) practice it covers several classes of goods and services, some of them fair enough but others (retail services, printed matter), unqualified by reference to any particular sector, far too wide - tending towards patent-type monopoly protection over an ordinary English expression.

It's not as if Specsavers BV were short of protection. They have EU trade mark no 4694551 already, for SHOULD'VE GONE TO SPECSAVERS. Even taking account of the lunacy of Brexit, or "Eurocide" as I saw it called in The Guardian this morning, which will require proprietors of EU trade marks to obtain (by some mechanism about which we are yet to be told) separate UK protection, this new application would be wholly unnecessary in any truly rational trade mark system. Indeed, if the system worked rationally rather than promoting trade mark fetishism, the application would have been rejected out of hand. Not only can the word - whether correctly punctuated or not - never be distinctive enough to function as a trade mark: the applicant simply isn't using it as one. It is not the trade mark. It is one of the four or five words (depending on how you count contractions) which together comprise their trade mark. Alone, it should not have received more than a couple of nanoseconds' attention from the Registry.

I don't criticise the applicant for trying to get protection if the law will give it: nor do I criticise the agents who filed the application, who are obliged to serve their clients to the best of their ability. Specsavers has shareholders who will demand the strongest possible protection for its assets, including trade marks. I will however criticise both the applicant and the agent for making a series of two marks by adding an incorrect variant - especially given that, if an infringer used it, a judge would surely hold it so similar to the correctly-punctuated contraction as to cause a likelihood of confusion. In fact, the apostrophe might even be considered to be an insignificant detail which would not be noticed by the average consumer, so SHOULDVE would be treated as identical with SHOULD'VE. Given that "its" and "it's" are commonly treated as identical, that appalling possibility seems very real.

I do however criticise the law, which should never countenance granting exclusive rights like this. It panders to the wishes of the absolutists, who want the strongest possible protection for all their intellectual property, and fails to strike a balance between their interests and those of new entrants trying to find a trade mark which they can use, and ultimately of consumers too. The EU had an opportunity recently to make some repairs to a broken system, but with this acceptance the Trade Marks Registry has (IMHO) broken it a bit more.

Philip Glass on copyright

An insight into the importance of copyright to creative people, specifically composers (or at least one composer) but applicable to others whom the copyright legislation refers to as "authors". Read it here.

Repair clause referred to Court of Justice

My great friend David Musker reports on the Class 99 blog that a court in Milan has referred to the Court of Justice (how nice to see the institution being identified by the correct name!) for an interpretation of the repair clause (Article 110 of the EU designs regulation, No 6/2002). The questions asked - of which there are two - are (as is so often the case, partly I suspect as a result of their having been translated into English) pretty incomprehensible. Why do these questions so often have to ask if something is "precluded"? In BMW v Round and Metal, to which David's article refers, Arnold J, in a judgment that epitomises the adjective "Arnoldian", rejected the proposition that the defendant's alloy wheels fell within the scope of the repair clause: they were sold not as straight replacements but as alternatives, with different dimensions - and tellingly they were usually supplied in sets of four. What a misfortune to damage all the wheels of your car at once! Although it reminds me of a client who found her Boxster (this was probably 20 years ago) completely devoid of wheels one morning ...

An interesting point in the reference is that it appears to try to establish a connection between the "complex product" (the car) and the replacement part by reference to the fact that the wheels are approved under UNECE Regulation No 124 for use on that particular model of car. I'm looking forward to seeing what the court makes of that. I'm also trying to find some more enticing prospects to look forward to.

Monkey selfie: Animal charity Peta challenges ruling - BBC News

BBC News reported a while ago that Peta, the animal rights charity, with which I usually have complete sympathy, is arguing in a court in California that copyright in the now-famous macaque self-portrait belongs to the photographer. It sounds as if there is some dispute about which monkey took the photo (by which I mean pressed the shutter release or whatever it's called on a digital camera, as I can't imagine that he or she had the faintest idea what the action would lead to), but that leaves the main point that the charity argues that "[n]othing in the Copyright Act limits its application to human authors…".

I claim no particular expertise in U.S. copyright law, and am prepared to accept that there is at least an arguable case to support that proposition. Whether that justifies Peta spending charitable funds on a lawsuit which most would consider frivolous is another matter. Ever since I read Peter Singer's "canonical" (nice word - thanks Wikipedia) book Animal Liberation (here on Amazon), one of the many ways in which I distracted myself from the grinding boredom of articles of clerkship (1978-1980), I have tried to be as conscious of speciesism as of racism and sexism. I haven't perfected it, but I hope I have got close.

I can't put my hands on my well-worn copy (the paperback version of the first (1975) edition, published 1977) just at the moment, but I don't think it contains anything about animals' copyright. [later: I have found it now, and there is no entry in the index for "copyright" or "intellectual property", or even just "property", which isn't conclusive but will do for now.] In UK copyright law, the author of a work (and therefore, usually, the first owner of copyright in it) is the person who creates it. A person is (this from the Oxford Companion to Law) typically defined as "a being, entity or unit which can bear legal rights and duties". The word "being" without the adjective "human" seems to leave open the possibility of animals being authors. However, legal personality, the article in the Companion goes on, has to be distinguished from legal status, citing as an example that we can say the legal status of an animal [a non-human animal, I would add, not for the avoidance of doubt but to highlight the ambiguity or inaccuracy of the original statement] is that of property and that of a human is a person.* Professor Singer might, I imagine, take issue with the narrow definition of "person", especially as the whole point of his thesis is, as I understood it, that we should regard animals as having rights (though not necessarily accompanying duties). However, that is clearly the way the law works and I don't see any way for Peta to put forward a case for an alternative interpretation in the English courts, even if the Charity Commission would let them.

Now that I have found my copy of the book again, I'll search it for any suggestion that animals' rights should extend to owning property, and in particular intellectual property. I'm fairly confident that, however proprietorial some animals might be, Professor Singer didn't advocate extending legal personality to them to that extent.

Not Lucy's book

*See further, R. Tur, 'The "Person" in Law', in A Peacocke and G Gillett (eds), Persons and Personality: A Contemporary Inquiry (Oxford: Basil Blackwell, 1987), 121, and N Naffine, 'Who are Law's Persons? From Cheshire Cats to Responsible Subjects' (2003) 66/3 Modern Law Review 346. Professor Naffine is also the author of the article in the Oxford Companion to Law to which I referred and from which I repeat these two references.

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Visibly Faster Turnarounds By Indian Trademark Registry

This morning, when I opened my inbox, one email in particular surprised me. The email contained our first ever “e-certificate” for a trademark application filed just about one year ago! In the past, such prompt action by Indian IP Offices was almost unheard of. But clearly, the technology-enabled procedural changes introduced over the past year or so have begun to bear fruit.

The issues faced by the Registry in printing and dispatching hard copy (Registration Certificates) are quite well-known. On many occasions, the certificates did not reach the intended recipients. This not only caused delay and inconvenience to stakeholders but also imposed needless cost on the Registry as well as Applicants (who had to apply for a duplicate certificate).

About a month ago, the Indian Trademark office, via its notification dated 28^th July 2016, had notified the new system of sending only e-certificates (Registration), and doing away with the century old system of sending hard copies. This was made effective from 1^st August 2016 for all trademark applications:

• published in the Trade Marks Journal on or after November 23^rd, 2015;

• where no request for amendment filed on behalf of the applicant is pending disposal;

• where Trade Mark registry’s database contains the original application;

• where no compliance requirement is pending on part of the applicant; and

• which have not been specifically prohibited for registration by the order of any court, IPAB or any competent authority.

With the adoption of the new system it appears that the Registry is taking every possible step to eliminate the root cause for delay and thus expedite the registration process and deliver on the higher standards outlined in India’s new IP Policy.

Letters of Note: Mark Twain on copyright

Letters of Note - which is highly recommended reading at all times - has reproduced this letter by Mark Twain about US copyright law - more specifically about its failure to deal with cheap imports from Canada, and an early example I think of an international exhaustion rule. I think he should have been complaining about Canadian copyright law (which at the time was presumably Imperial copyright) - or perhaps about his own country's Declaration of Independence, or USexit as we might now call it. Which reminds me: one of the many, many disastrous effects of the UK leaving the EU (should it ever actually happen) will perhaps be the revival of the argument that exhaustion should happen globally - and without the constraints of EU law (and the more general constraint of the EU project) it will be harder to resist ... no doubt it would be hard to go the international exhaustion route if we remain in the single market, but that looks like an increasingly less likely outcome: if we want the single market we have to accept free movement, so the outcome is virtually identical to what we already have, and no doubt those who believe we are better off out of the EU will prefer to go for broke and cast the UK adrift in the stormy seas of global trade under the auspices of the WTO.

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Trade secrets directive becomes law (but will we have to implement it?)

The European Commission proposed a directive to harmonise protection of trade secrets throughout the European Union in 2014. The directive was unanimously adopted by the Council and three weeks later published in the Official Journal on 15 June 2016, and came into force on 5 July (Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.) Between publication and entry into force, of course, the UK's referendum on EU membership reduced the importance of the directive to this country.
Being a directive, the new law has to be implemented by the Member States. In the general confusion about how the UK will effect its exit, no one knows whether the directive will be implemented. Member States have two years in which to do is that, and two years is also the interval after giving notice under article 50 of the treaty when the UK will leave. However long passes before the UK gives notice, will determine how long the UK will be required to comply with the directive. That could be only a few months.
As with other areas of intellectual property law, however, it does seem quite likely that the UK will continue to ensure that its laws are aligned with those of the European Union. Depending on the future relationship with the EU, the UK might be obliged to comply with the directive anyway. In any event, it is hard to imagine that Parliament could possibly find time to replace more than a tiny part of our EU-derived law. The trade secrets directive is likely to remain important. However, the detailed shape of the Directive is likely to emerge only once the Court of Justice is seised of some cases in which it can give its interpretation of the law – and its rulings will cease, at some point, to apply to the UK.
Article 2 defines a trade secret as information that

• Is secret in the sense that it is not generally known among or readily accessible to persons within the circles that normally deal with this kind of information;
  
• Has commercial value because it is secret; and
  
• Has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.
  

While the first and third of these requirements are at least similar to English law, the requirement for commercial value narrows the scope of the definition – which is hardly surprising, as the Directive is seeking to define a narrower class of information than the broad class of confidential information which our law protects.
The acquisition of a trade secret is unlawful when it is carried out by unauthorised access to materials, or any other conduct which is considered contrary to “honest commercial practices”. Where the trade secret is acquired from a third party and the person who acquired it knew or should have known that the third party was acting unlawfully, that acquisition will also be considered unlawful. Using or disclosing a trade secret will be considered unlawful when it is in breach of a confidentiality agreement or some other duty not to disclose the trade secret or to limit its use.
Remedies are dealt with in Article 11. They include the usual remedies in intellectual property cases – damages, interim and final injunctions, destruction of unlawful goods. There are no criminal offences, but Member States remain free to introduce their own.
The Directive has been criticised as “a threat to public interest and democracy” because of the perceived threat it poses to whistle-blowers and the press. The Panama Papers scandal in 2016 highlighted these concerns. The Directive does provide some protection for whistle-blowers and the press, so the question is whether the exceptions are sufficient. They are set out in Article 5 and cover disclosure of a trade secret for:

• exercising the right to freedom of expression and information as set out in the [European] Charter [for Fundamental rights], including the respect for freedom and pluralism of the media;
  
• revealing misconduct, wrongdoing or illegal activity, provided that the respondent acted for the purpose of protecting the general public interest.
  

Recital 20 says that “the measures, procedures and remedies provided for in this Directive should not restrict whistle-blowing activity. Therefore, the protection of trade secrets should not extend to cases in which disclosure of a trade secret serves the public interest insofar as directly relevant misconduct, wrongdoing or illegal activity is revealed.” Nevertheless, critics argue that the burden for showing that disclosure is in the public interest will fall on the whistle-blower or journalist, and there have been calls for a further directive to give more extensive protection to them.
English law on breach of confidence, non-statutory as it is, gives narrower exceptions to protect whistle-blowers and the like. The changes demanded by the Directive would not be great, but some extension of the public interest rule (covering, remember, only trade secrets) might well be needed.

Lending of electronic books is comparable to the lending of traditional books

Lending a digital book to a reader must be the equivalent of lending a physical copy: it hardly seems to need thinking about, does it? But in the copyright world things are often not as simple or logical as they first appear. When an e-book is lent to a reader, is that the restricted act of lending (or perhaps rental, if money changes hands) or is it making available to the public? And should it fall within public lending rights schemes, which it would if it were regarded as lending? Which act it is, determines whether authors are remunerated for the activity. In the UK it has been treated as "making available", and therefore outside the scope of public lending right, a matter of concern to my trade union the Society of Authors - but perhaps not for much longer.

In Case C-174/15, Vereniging Openbare Bibliotheken v Stichting Leenrecht, Advocate-General Szpunar has indicated that the activity should be treated as a form of lending. Provided it is on the "one copy, one user" basis (the library lends the e-book to one person, and can't lend it to another until it has been "returned") this is economically no different from lending a hard-copy book. The Advocate-General considered that the fact that the 2006 rental and lending directive was silent on the matter of e-books indicated no more than that the technology was in its infancy - a bit of a feeble excuse, because although the Kindle was launched in November 2007, less than a year after the Directive was passed, Sony had produced the Librie in 2004 and the Reader in 2006. More to the point, perhaps, e-books have been around since at least 1971 when Michael S Hart set up the very wonderful Project Gutenberg, so why didn't the directive take into account what was already pretty old technology?

Whatever the answer to that, the Advocate-General thinks that the directive should be read so as to cover e-books. This is exactly the sort of judicial activism that gives the Court of Justice a bad name - not reason to vote Out tomorrow, but certainly (for me) a reason to be with Jeremy Corbyn - about 70 per cent "remain". If the EU produced half-decent legislation to start with, I might be up to 75 or 80 per cent.

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Garage's use of carmaker's trade mark

It's rather hard to see why a case in which an unauthorised repairer, sued by the manufacturer for trade mark infringement, would even justify the expense of going to court. Nevertheless in Bayerische Motoren Werke AG v Technosport London Ltd and Anor [2016] EWHC 797 (IPEC) (13 April 2016) that is exactly what happened, and the defendant won on one count of trade mark infringement. But it lost on another two, and on passing off, so had a bad day overall.

BMW alleged infringements of their BMW trade mark, the roundel device and the "M" device which denotes certain high-performance models in their range. Perhaps I should write "extra-high performance".

The first two are Community or now EU trade marks, and the third an International designating the EU, so the legislation which was engaged in the case was Council Regulation (EC) No. 207/2009. In each case the claimant invoked art.9(1)(a) (double identity) and (b) (likelihood of confusion) and in the case of the "M" device art.9(1)(c) (unfair advantage) as well, and all three infringements had associated passing off claims. That seems pretty comprehensive.
 The uses of the trade marks were all the things that one expects of an unauthorised repairer. There was the use of the description "BMW Specialist" on the fascia on the garage premises, which it was accepted was not liable to affect any of the functions of the trade mark (Case C-63/97, Deenik): it was an accurate message about the services offered by the defendant, and was not even pleaded. The roundel also appeared on the fascia, which was another matter: and it was on a van, business cards and a banner inside the premises. The "M" logo appeared on the website.

The novel allegations of infringement concerned the fact that Mr Agyeton, the proprietor of the defendant, wore a shirt with the initials "BMW" on it and he or the defendant operated a Twitter account with the handle @TechnosportBMW. That claim did not succeed, but the others did. The fact that the roundel featured on the packaging of parts which were supplied (through the authorised dealer network) to the defendant, as the law requires them to be, made the claim a little more complicated. In addition, promotional items bearing the roundel were provided to dealers as part of the manufacturer's efforts to encourage the sale of genuine parts, and would be passed on to non-authorised dealers, who would pass them on to customers, which further complicated the matter. In the end, however, the judge was satisfied that the average consumer would not understand the roundel on the packaging to indicate that the garage was an authorised repairer. But where the roundel was displayed on or in the premises, the average consumer would assume that this indicated a connection between the garage and BMW, or (if that was not the case) at least it would cause consumers to wonder about the connection.

The use of the roundel also amounted to taking unfair advantage of the reputation of the trade mark (art.9(1)(c)), although that won't have added anything to the remedies (and, being an IPEC case, the amount of damages available was limited anyway).

The use of the "M" device would also have those effects, so that too amounted to an infringement. But the use of the BMW signs conveyed no suggestion that the defendant was an authorised repairer, partly because the evidence provided didn't get BMW far enough, so this line of attack is hardly foreclosed by this judgment.  There is an interesting argument that, because BMW dealers commonly include "BMW" in their business names, the addition of the defendant's name could actually made it seem more like a representation that there was a connection: the judge thought that too subtle for the average consumer, but it should definitely not be discounted in future. A manufacturer might well find a way to make that approach work in their favour.

Where, you might wonder, do the art.12 defences feature in this case? The answer is that the defendant accepted that art.12 added nothing to the defence to the infringement claim, namely that "the defendant's use of the signs was not liable to affect the functions of the Trade Marks.  This was because the signs as used by TLL would in each case have conveyed to the average consumer that TLL was a specialist in the repair and maintenance of BMW vehicles, using genuine BMW spare parts." I expected to see detailed consideration of the "honest practices in industrial and commercial matters" proviso, as in Volvo v Heritage, but the judge wasn't asked to get into that.

Regarding the passing-off claims, these stood or fell with the trade mark claims, and the judge explained the connection between the two which strikes me as an interesting point:

 Had I found that the message conveyed by TLL’s use of its roundel and the M logo signs in each case did no more than render the average consumer unable to determine whether there was an economic link between TLL and BMW, as opposed to causing the average consumer to take the view that there was such a link, on that evidence I would have concluded that there had been no passing off by TLL, see Reed Executive plc v Reed Business Information Ltd [2004] RPC 40, at [111] and Phones 4U Ltd v Phone4U.co.uk.Internet Ltd [2007] RPC 5, at [16].

"Unable to determine" and "caused to wonder" amount to the same thing (so it appears from this judgment), so the test for passing off is somewhat stricter than that for trade mark infringement.

Copyright in digitally remastered recordings

I read recently (here in Billboard and Music Law Updates) about a case in the USA in which it was argued that when a digitally-remastered recording was broadcast, it was not a broadcast of a much older recording (originally in analogue form) and therefore escaped the need to pay. It turns on a point of US law, at the intersection of State and Federal law, which makes the status of pre-1972 recordings debatable. That goes beyond the scope of this blog - but it led me to some thoughts about how copyright works when sound recordings are remastered.

I don't like the basis on which that court in California decided its case: which is not to say that I think the judge was wrong, because it's their law and it's not for me to say what is and isn't the legal position. But I do think that, if the principle is that a remastered recording of an earlier recording is a new copyright work, that's not right.

I've thought this instinctively for some time. Now I think I know why I feel that way. The way I see it, a recording is what is made of a performance of some sort. I know that the law doesn't define a sound recording in that way but perhaps it should - perhaps it's the definition of a sound recording that's wrong. Take, for example (because I happen to be listening to it), Kind of Blue. Some might say not the best example because the 1992 digital remastering changed the key of the music - but I don't think it makes any difference. Miles Davis and the other members of the sextet played the music in 1959 and a recording was made. No new recording was made in 1986, 1992, 1997 or 2005. To my way of thinking, there is only one recording, one copyright work: subsequent productions are just that, new productions of the same recording. No separate copyright should subsist in the remastered version. That isn't, apparently, the state of US copyright law, and it probably isn't the state of UK copyright law - but I think it should be.

China: JLR sue Landwind over Evoque look-alike

According to Reuters, Jaguar Land Rover has become the first western car maker to sue a Chinese rival, Jiangling Motor, in China for copying its design. Although copying is rife, the difficulty of enforcing intellectual property rights in China has usually deterred manufacturers from taking such a step - Honda took action to protect the CR-V design from copying by a little-known Chinese company, and were in court for 12 years before winning far smaller damages than they had sought.

The JLR suit is based (it seems) on copyright and unfair competition law. Jianling's Landwind X7 - the latest version of which was announced last November - bears a striking resemblance to the Evoque. It has softer, more rounded angles on the front, but cheap kits enable the owner to modify the look to make it more like an Evoque, which costs three times as much.

In the UK, JLR have applied to register the appearance of the Evoque as a trade mark. The application is still under examination, but there are many precedents for vehicle shapes being registered as trade marks - though how effective they are has not yet been shown in litigation.

Who owns a Banksy mural?

The late Sir Hugh Laddie famously became a bit fed up with having to deal with general Chancery Division business, like landlord and tenant matters, when he was the Patents Court judge. But he'd probably have been perfectly happy with a dispute over the ownership of a wall, as in The Creative Foundation v Dreamland Leisure Ltd & Ors [2015] EWHC 2556 (Ch) (11 September 2015).

Separating intellectual property from the concrete items in or on which it is carried or displayed is a big conceptual problem for anyone coming fresh to the topic. A literary work is an abstract matter, separate from but related to the book in which it is printed. A painting likewise: ownership of the canvas does not confer ownership of the copyright, though provided the legal formalities are observed the two can certainly stay in the same ownership. However, this analysis rather assumes that the artist owned the canvas at the time - or at least had the right to apply paint to it. What if she didn't? And what (if it makes any difference) if it wasn't canvas, but a wall?

The growth of street art, and the growth of the respectability of street art too, has resulted in new challenges to the law. The intersection of intellectual property and landlord and tenant law would surely have appealed to Mr Justice Laddie, as it seems to have done to Mr Justice Arnold. The topic is discussed in greater detail in this article on the City University blog, by Enrico Bonadio.

Banksy (because of course it was he) created the mural in suit in Folkestone during the town's triennial arts festival in 2014. The organiser of the festival, The Creative Foundation, acquired the rights to the painting from the landlord, but the tenant removed it, arguing that this was an incident of its obligations to maintain the premises. It further argued that it had become the owner of the painting, but instead of disposing of  it at the local tip as one might expect the repairer of a defaced wall to do, they shipped it to the United States where it was to be auctioned.

Mr Justice Arnold had no difficulty in deciding that the painting had become part of the fabric of the building and therefore was the property of the landlord (who had transferred ownership to the Foundation). On being removed from the building, the claimant argued, the bricks and mortar (and paint) became once again the chattels which they had been before they were made into a wall and incorporated into a piece of real property, and section 2 of the Torts (Interference with Goods) Act 1977 came into play, allowing the court to order delivery up. Without referring expressly to the 1977 Act, the judge did just that.

The judgment should make it more difficult for people to remove murals from property they do not own - although in practical terms it is surely significant that Banksies, one removed from their original sites, seem to cross the Atlantic pretty quickly to be sold by auction beyond the effective reach of the English courts.

As for copyright, Mr Justice Arnold also had no difficulty in recognising that Banksy owned it in the work in question. Given that he is in the habit of painting on other people's canvasses, an activity which in the law's humourless way could be counted as criminal damage (though I doubt it would ever give rise to a complaint), that is a relevant point. Glyn v Weston tells us that copyright will be withheld on public policy grounds from immoral works, and works the creation of which involves the commission of an offence might well be treated the same way - although the new owner of the painting (the owner of the newly-painted wall) will usually give retrospective permission for it. In the US, as Dr Bonadio (who incidentally calls Arnold J "Justice Arnold", thus promoting him to the Supreme Court) notes, graffiti artists would probably be denied copyright protection under the "clean hands" doctrine.

A graffiti-sprayer with dirty hands - there's an interesting idea ...

Glee for the lawyers?

I hesitate to use the word "bullying" in the context of trade mark litigation of doubtful merit, because bullying is not something about which to speak or write lightly. But the expression "trade mark bullying" has entered common parlance, at least among trade mark practitioners, and I suppose that as a lexicographer - a label which I can't really fail to acknowledge - I am committed to accepting the way language is used, although under no obligation not to be critical about it.

Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 455 (25 May 2016) is as unedifying a case of a big trade mark owner trying to overcome a small one irrespective of the strengths of their case as one could hope not to see. Reading this morning that the unsuccessful claimants (and unsuccessful respondents) are seeking to take the case to the Supreme Court, which one might imagine would be making lawyers rub their hands with glee, actually adds to the unedifyingness of the whole thing and makes it look more like bullying.

On 16 February the Court of Appeal dismissed Fox's appeal against a decision of Roger Wyand QC (sitting as a deputy judge) that they had infringed the claimant's earlier trade mark, leaving an appeal against the deputy judge's refusal to revoke the claimant's trade mark to be resolved. The Court of Appeal has now dismissed that appeal too. (A passing-off claim was unsuccessful at first instance, and the claimant's cross-appeal on that claim was dismissed.)

Essentially, the claim is about reverse confusion. The claimant opened the first of its (primarily) stand-up comedy clubs in 1994, and filed a trade mark application in 1999. The application was for registration of a series of two device marks, in which the word "Glee" was prominent and the difference lay in the colours. This proved to be the claimant's Achilles heel, leading to the claim that the registration was invalid.

The defendant produced a television show entitled "glee" [sic], perhaps hoping that if they didn't give the title a capital initial they might be able to argue that it wasn't trade mark use. Fat chance of that. It was first broadcast in the UK in December 2009, so the claimant's registration gave them a head start of over a decade. The claimant's registration was wide enough to cover the defendant's activities, or many of them - including merchandising and concerts. It looks like an open-and-shut case, and as far as infringement goes it is hard to see why on earth it should even have got to court let alone the Court of Appeal.

The answer lies in the fact that the likelihood of confusion - necessary, because the trade mark and the defendant's sign are merely similar,  not identical - provided an opportunity to mount a defence. Not a strong one, perhaps, but at least there was a possibility. The odd thing here is that the confusion goes in the opposite direction to what is normal. The senior mark was being confused with the (better-known) junior one. But that didn't matter: there was a likelihood of confusion, there were witnesses to attest to the fact that they had thought the club and the television programme were connected, or came from the same source, and that was all that was needed. Reverse confusion, like reverse passing off (as in Bristol Conservatories)?

Better, though, was the argument that the trade mark was invalid, that it didn't qualify as a series or even that such a series trade mark could not be registered under the terms of the directive. But that's another story which I don't have time to write at the moment. I was pleased to note from the first instance judgment that the extract from the Registry's manual shows as an example a trade mark for which I filed the original application - though it wasn't, and apparently still isn't, a series (the Registry might have adapted it to illustrate the point they wanted to make).

Steal This Riff: How To Fix Copyright Law And Set Musicians Free - MTV

I'm always rather unconvinced by "how to fix copyright" articles, but here is an interesting contribution to the debate about sampling, proposing a compulsory licensing solution. Paradoxically (I think) the new technologies that make this a problem also hold the key to collecting micro-payments in return for use of a copyright work, so rendering collective licensing potentially redundant. And why should any licensing scheme be compulsory? That might have been the best way to strike a balance between owners and users a few years ago, but the technology now puts rights owners in charge of the use of the own rights, and if they don't want to grant licences they shouldn't have to, provided of course that they don't simply discriminate on bad grounds. Usually, I imagine, they would be happy to have the money: that after all is what motivates most people to create copyright works.

Coincidentally, this appeared in my feed reader the same day that the BBC reported (here) that a copyright infringement suit brought in Germany by [a member of] Kraftwerk, over a two-second sample of the drum part of the band's 1977 song Metall auf Metall. I never got Kraftwerk, as it happens, or any other Kraut-rock bands from that era (though I think I might find Tangerine Dream interesting if I had the time to try). But I digress. The German courts have been on Kraftwerk's side, up to and including the Bundesgerichtshof, but now apparently the Federal Constitutional Court - Bundesverfassungsgericht - has come to the conclusion that the decision could affect the defendant's (Moses Pelham's) constitutional rights, making it impossible to create music in a particular style (since when was that a constitutional right?) and has sent to case back to the BGH to reconsider.



If this is what they are complaining about, I can't identify the offending drum track: nothing original to my ears. Sounds quite pleasant - but that isn't always a good thing to say about music.



The drums sound quite original here, and nothing like on Nur Mir. I think it might become a little boring before it finishes, though. Much more interesting to listen to Steve Reich if you want Drumming.




'via Blog this'

Council adopts trade secrets directive

The EU Council has adopted the trade secrets directive. The Council's press release is here. The Directive comes into force 20 days after publication in the Official Journal and Member States have two years in which to implement it.

It follows hot on the heels of similar legislation in the US, prompting me to think about a short comparative study of the two - but not today.

Instagram v Littergram

BBC News reports how Instagram has insisted that a UK anti-littering campaign called Littergram change its name. The UK site, and the associated app, encourages people to take photos of litter and report it to their local authority - taking advantage of the power of social media for a socially useful purpose. Unfortunately being all about photo-sharing, it trod on Instagram's toes too heavily for the comfort of Instagram's owner, Facebook, who seem to be emerging as one of the biggest bullies in cyberspace.

Why on earth should there be the slightest problem between Instagram and Littergram? What possible likelihood of confusion is there? It's a prime example of a big trade mark owner seeking to turn the limited rights granted by trade mark law into something more like copyright - or even a patent-style monopoly. Essentially their argument boils down to the proposition that they own exclusive rights in the suffix "-gram", because there's certainly no similarity between "Insta-" and "Litter-" except the number of syllables and the sound of the second one of them.

But hang on a moment - "-gram" has nothing to do with photography anyway. It refers to writing (e.g. epigram) or drawing (e.g. diagram). So what are they getting so proprietorial about? And why doesn't Littergram go for something more relevant - - "Littergraph" strikes me as rather better. Or did the founder perhaps deliberately choose to make the allusion to the better-known photo-sharing service?

Press release: Metis Partners unveils the top performers in the UK's only IP League Table

As they've kindly sent me the press release, I will pass it on:

Metis Partners is proud to present the latest update in the IP League Table. Over 30 new entrants have been added in the last four months, many of whom made it to the top 20, suggesting that some of the larger, more sophisticated and IP-rich companies now see the benefits of entering the IP League Table. The results also show that the recognition of IP on the balance sheet is one of the features linked to some of the best scoring companies, suggesting that acquired IP assets, as a result of M&A, has encouraged companies to take IP management more seriously.
Kromek Group, a County Durham based radiation detection solution provider has topped the 2016 Intellectual Property League Table (IP100). The company has over 247 patents covering medical, nuclear, and security industries. Kromek has developed an end-to-end process for the fabrication and use of cadmium zinc telluride (CZT) crystals to detect traces of radiation.
Just after Kromek was Aberdeen based COREX, a provider of specialist services primarily in the analysis of geological samples for the oil and gas industry. COREX has over 35 years’ experience in this field.
In third place is Cambridge based B2B software specialists, Metail, who design 3D modelling software for the fashion industry, allowing online retailers to provide customers with a 94-96% accurate model of their bodies to facilitate online clothes shopping.
The IP League Table, sponsored by Clydesdale and Yorkshire Banks, Murgitroyd and Jumpstart, and in association with BE Group and Metis Partners, is based upon the assessment of five IP asset classes – Brand & Reputation, Patents, Critical Databases, Software, and Trade Secrets.
The IP League Table profiles and ranks innovative companies within the UK’s private sector, highlighting those which have significantly invested in their IP in the form of IP creation, IP management policies, R&D activities and IP commercialisation. Top performing entrants are published in the IP100, an annual ranking of companies that are considered to be the most effective at commercialising their IP assets.
Stephen Robertson, director and founder of Metis Partners, the award-winning IP advisory firm, said: "IP is a vital measure of the strength and viability of a business. The IP100 is providing a barometer of the importance businesses place on IP, and can be used by lenders and investors to judge the robustness and scalability of companies they might invest in.
"Clydesdale and Yorkshire Banks, headline sponsors of the IP League Table, have long recognised the value of IP, and lend to businesses with strong IP assets. We are excited to be able to highlight the advantages that effective IP management can bring to a successful fundraising or exit.
“This was clearly put to good effect by Touch Bionics, an IP-rich Scottish business funded by Clydesdale Bank which was sold for £27.5m earlier this week. This builds on the recent exit of and fundraising of IP100 entrants SwiftKey, eeGeo and Sphere Fluidics.
“The companies taking part in the IP100 will now be able to identify areas for improvement in their IP management and to focus on maximising returns from their IP, thanks to the increase in granularity of detail in the report.
“By shining the spotlight on IP-rich SMEs, the IP League Table is providing companies with a much-needed platform to promote IP recognition, IP management and benchmarks them as IP-savvy. It has become a hotbed of innovation and has created a community where IP-rich companies can share their experiences and successes in breaking into international markets, fundraising, gaining a valuation for their IP and even securing an exit at generous multiples!”
As well as exposure and recognition, entrants of the IP League Table receive membership to the IP100 Club, an exclusive network of IP-savvy companies who lead the way in promoting a culture of innovation and IP creation within the UK. The IP100 Club consists of the top performing 100 companies of the IP League Table, IP100 Champions, sponsors and potential investors. It provides exclusive access to monthly events across the UK which provide information on how to better manage and exploit IP assets, and also give IP-rich companies a chance to network and learn from each other. These events will also give companies an opportunity to meet the Clydesdale and Yorkshire Banks, IP100 sponsors and even investors who are looking for new, innovative companies to invest in.

INDIAN TRADEMARKS REGISTRY ABANDONS PENDING APPLICATIONS – GIVES GRACE PERIOD TO REVIVE

The Controller General of Patents, Designs and Trademark of India (CG) vide its notification dated 4^th April 2016 has given an opportunity to all Applicants and authorised Agents of Trademark Applications which were recently abandoned by the Indian Trademark (TM) Registry to (re)submit their responses or make submissions (where response was not submitted earlier) by 30th April 2016.

This action will benefit the several thousand pending Trademark applicants whose applications were abandoned by the Indian Trademarks Registry due to lack of responses.

For the last several years, the Indian TM Registry had stopped sending Office Actions through the postal service. Instead, they uploaded them online on the TM Registry website. However, there were always delays and other issues in the process. It appears that due to discrepancies and mismanagement, several files and documents were misplaced and the TM Registry could not locate the filed responses which apparently caused a chaos at the Registry. However, instead of attempting to trace the missing documents, the Registry took the decision to simply abandon all applications where the Office Actions were issued (on/off line) and the TM Registry could not trace the responses submitted.

After much ado, the TM Registry has granted a grace period of 3 weeks (until 30th April 2016) allowing all applicants who had filed their responses to re-send copies of their responses. The same grace period also applies to those who did not submit responses because they did not receive the Office Action even though it was uploaded / sent through post. All applications that do not receive responses by 30th April 2016 shall be treated as abandoned.

On the one hand, the move to abandon the applications has been criticised widely as a sign of the Registry not holding itself accountable. On the other, it is also seen as a smart move to clear off the overload that is sometimes caused by non-serious applications.

If you or any of your clients have filed any trademark application in India, you may wish to check the status with your concerned Attorney. If it has been “abandoned”, you still have time till 30^th April 2016 to take remedial action and submit a response.

If you are a Fox Mandal client, be assured that we are checking the status of your applications and shall be reaching out to the TM Registry to take necessary actions. Also, if your application has been examined, you must send your instruction to file a response immediately so a suitable response can be drafted and filed on or before 30th April 2016.

PS: As per the latest news, as a result of several writ petitions being filed before different High Courts, on 5^th April 2016, the Delhi High Court vide its Interim order has stayed the order of CG. We await the final order and shall keep you informed. 

AP Racing Prevails in Brake Technology Patent Case

From a press release issued for AP:

In a landmark legal case, AP Racing has been awarded £570,660 in damages, costs and interest following a ruling that Alcon Components Limited infringed the company's patent protecting the innovative Radi-CAL™ concept for motorsport brake calipers.

As the highest ever level of damages awarded in the Intellectual Property Enterprise Court, the case centred around a range of brake calipers introduced and patented in 2007. This Radi-CAL™ design made a major innovative step forward in brake caliper technology within the motorsport industry, and was used by teams in Formula 3, NASCAR® and subsequently Formula 1®. However, rival Alcon Components introduced a similar design in 2009.

As one of the world's leaders in brake technology, AP Racing has a history of design and innovation that dates back to the 1960s, and the company believes the ruling underlines the value of investment in research and development. AP Racing will always look to protect its intellectual property against infringement by competitors, using the support of the courts if necessary.

Following an initial trial in 2012, and a subsequent hearing in the Court of Appeal in 2013, a ruling was made in January 2014 confirming that the patent was valid and infringed, allowing the UK based company to pursue financial compensation and stop Alcon manufacturing more of the calipers.

Commenting on the award AP Racing managing director, Charles Bolton, said: 'Innovation is vital for the development of new technology, and patent infringement is always an uncompetitive answer. The Court's decision sends a clear message to the industry that the courts will not tolerate intellectual property infringement. AP Racing will always act to protect its intellectual property rights around the world, in order to safeguard our research and development work going forward'. 

Offering less mass, improved rigidity and better cooling characteristics than conventional brake caliper designs, the Radi-CAL™ concept represented a major innovation in braking technology when it was introduced. The patented design was first developed by AP Racing in 2007, since then the company has produced over 80 different Radi-CAL™ caliper designs. AP Racing continues to refine the design, and the concept is protected by patents across Europe and in numerous other countries including the USA, China and Japan.

The History of Patent Annuities

Who'd have thought patent annuities could be so interesting? I was fascinated when my old friend and running companion James Olcott launched a blog telling a weekly story about his father, Bernard. Readers of this blog will of course have little or no interest in Bernard's many marriages, the family history, the Third Avenue El or many of the other matters with which James has regaled readers - well, actually, you will be interested in all those things, but as we are approaching this from the intellectual property side they should be put to one side ... and you should read about patent annuities. Having met Bernard, who died a few years ago, I have been reading avidly and waiting eagerly for the new week's instalment (which appears on Thursday evenings UK time).

James has been extremely informative about New York in the fifties and sixties, long before I visited the place, and he's made me realise how much has changed in the world during my lifetime. Anyone with an interest in the patents field will also learn (from some of the postings) how much has changed in the past 50 or 60 years. Bernard was a serious inventor, and it was his technical background that brought him (via evening classes) to the law, to patent practice, to computers and thence to automating the payment of patent annuities. Intellectual property aficionados will enjoy reading about his discussions with Marks & Clerk, which led not to collaboration but to the creation of CPA with which Olcott International remains in competition (or vice versa), and other reminiscences about the patent world of years ago. When I teach students, or train lawyers, about intellectual property, I constantly remind myself that newcomers to the subject are picking it up as it is: I feel a duty to ensure that they understand also what it used to be like, so they can understand how it came to be what it is now - and, I hope, to recognise not only those respects in which it is superior but also those respects in which it used to be better. James's work also serves to maintain that important perspective.

There's more to write about this subject - but it's for a different blog, I think ... let's try to keep this one for intellectual property.

NIPC Inventors Club: Joy

My good friend Jane Lambert has written an excellent review of the film, Joy, about the trials and tribulations of an inventor trying to get her idea to market, on her NIPC Inventors Club blog. Go and read it, then go to see the movie!

What Could Have Entered the Public Domain on January 1, 2016?

What Could Have Entered the Public Domain on January 1, 2016?  asks the Electronic Frontier Foundation, in a piece designed to highlight the harmful effects of the extension of U.S. copyright protection from 56 years to life-plus-70 which happened as recently as 1978, the year in which I passed my Law Society Part II exams (well, most of them in the August of that year, after one attempt which was a complete failure in the February). That was when the 1976 Act came into operation, finally bringing the U.S. into the Berne Convention family.

My eye was caught by the reference to one of my favourite records,  Kind of Blue, recorded in 1959, so copyright would have expired this year if the old rules had still applied. Extending the copyright term is always contentious, and it seems to be accepted that it has to be back-dated so that existing works get the benefit of the longer protection, notwithstanding that the generally-accepted justification for copyright (that it encourages copyright owners to create more) is hardly served by increasing protection for things that have already been created, indicating that there was already sufficient incentive at the time; and in some cases the author, being dead, is in no position to respond to a new incentive anyway.

The EFF article doesn't make it absolutely clear whether it refers to copyright in the music or the phonogram. It seems to be more about the music, but copyright in the recording is also important, certainly in our copyright law - and, intriguingly, there's a very close relationship between the two, because Kind of Blue is a sustained piece of improvisation, so the sound recording in a sense is the musical work.

Here, the Copyright Act 1956 would have given the recording protection for 50 years from release, so it would have expired at the end of 2009. The music, notwithstanding its improvisatory nature, would have been protected for the life of the composer plus fifty years, a much longer term already than that provided for in U.S. copyright law. According to the sleeve notes, all the pieces on the album were written by Miles Davis, except two attributed to Miles (died 1991) and Bill Evans (died 1980), so even before the idiotic extension of copyright protection in the mid-90s copyright in the music would have run until 2041 and will now run for 20 years longer. The EFF's point, that if you wanted to use a Davis piece in a film you'd have been free to do it in the U.S. had it not been for the 1976 Act, never had legs in the U.K. (But if you want to use it that way, what's wrong in principle with paying for it?)

As for copyright in the phonogram, that would have expired 50 years after the end of the year of release - 2009. That's just a little too early to have been caught up in the ludicrous Cliff's Law extension of copyright in sound recordings, and clearly too late to give Miles any incentive to get his trumpet out again.

None of this, however, has stopped it from being available on YouTube.