Wednesday 22 June 2016

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.

'via Blog this'

Friday 17 June 2016

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 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.

Wednesday 15 June 2016

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.

Monday 6 June 2016

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.

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