Transformative use

In trying to explain when a substantial part of a copyright work has been taken (and therefore an infringement might have taken place), I came up with what I thought was a great illustration. It helped, perhaps, that I was doing the teaching in Moscow, so Rachmaninov came easily to mind. Leaving aside the fact that there is no extant copyright to worry about in practice (in any case, Paganini died in 1840, 94 years before the Rhapsody was written), would it ever be thought that Sergei Vasilievich's Rhapsody on a Theme of Paganini (Opus 43) infringed Paganini's copyright, or that it was anything other than a completely original work?

To start with, listen to the last of Paganini's 24 caprices, which is where Rachmaninov got the Theme from, played here by Hilary Hahn:


Then listen to Rachmaninov. There are 24 variations in his Rhapsody, starting with a fairly literal statement of the theme (you can hear that in the last of these three clips). Maybe he would have had to clear that with the Italian virtuoso, had modern copyright law applied at the relevant time. But the point of variations is that they transform the theme, and by the time you reach the glorious and impossibly romantic variation 18 (played in this clip by Valentina Lisitsa with the London Symphony Orchestra conducted by Michael Francis) it has changed beyond recognition, turned upside-down by Rachmaninov to produce one of his greatest tunes (and I write "his" quite deliberately: it's no longer Paganini's).

The great pianist Stephen Hough explains what is going on in this clip.


Of course there are many other examples of authors (in the broad copyright sense) taking someone else's work and transforming it into something utterly original (in the copyright sense as well as the ordinary one), but I think this is a particularly good one as well as being a beautiful piece of music.

Note: "transformative" is not a word used in the Copyright, Designs and Patents Act 1988. It is mentioned as a description of a type of fair use in the US legislation, and it featured in the Gowers Review a decade or so ago - where it was suggested that there should be an "exception", created by by an amendment to Directive 2001/29/EC, in favour of "creative, transformative or derivative works" which would benefit what the Review called "the Hip Hop industry".

Passing-off lecture launches IPso Jure channel on YouTube

It's now over two years since a memorable dinner over which, among other things, the idea of making YouTube videos on intellectual property came up, and finally I have managed to complete the first in what I hope will be a series. It's good that one thing has now worked out well from then.

You can find the YouTube channel here and I will put a link on this blog to make it easy to find. I called this first video a brief guide to passing off, but my old friend Godfrey pointed out that 54 minutes hardly counts as brief so I amended the description (although considering the size of Christopher Wadlow's great book on the subject, 951 pages in the 4th edition and no doubt more in the 5th edition which was published last year but the publisher's website doesn't reveal how many, I think under an hour counts as brief). There's only one possible response to that, and I am delighted that Pascal is the man to quote: "Je n'ai fait celle-ci plus longue que parce que je n'ai pas eu le loisir de la faire plus courte." (Pretentious? Moi?)

I made the video using the Movie Maker program that comes as part of Windows these days (or perhaps it's an app that you have to download). It was very clunky, and I hope I can find an alternative that will make it easier to adjust the time each slide remains on screen - surely there must be a program that allows you just to drag the end of that image along the timeline to coincide with the right point in the audio file. If you're interested I will share my findings in future posts. And if you're not interested, I'll still do that but you can ignore me. If you have suggestions for suitable programs, I'd like to know!

Now that I have broken the logjam that had been building up for a long, long time, I hope I will find it easier to be briefer in future presentations. Certainly I already have several ideas for improving this video, although my next task will be to address trade marks, responding to a request I received a few months ago. But briefly!

Confused in Spain if not in the UK

Co-existence agreements have become routine in trade mark practice in the last few years (by which I now find I mean at least a decade - since 2005, in fact, when the Trade Marks Registry stopped refusing applications on relative grounds, meaning because someone already had a similar or identical trade mark already registered for the same or similar goods). Parties who would otherwise be locked in opposition proceedings can draw lines between their trade marks and the respective goods and services so as to avoid consumers becoming confused. But an agreement that overcomes problems in the UK won't necessarily help when a conflict arises elsewhere.

In a recent case, Ornua Co-operative Limited, formerly The Irish Dairy Board Co-operative Limited v Tindale & Stanton Ltd España SL the European Union's Court of Justice had to deal with a conflict between two Irish dairy companies, the owners of the well-known KERRYGOLD trade mark and the owners of the less well-known KERRYMAID trade mark. KERRYGOLD is registered as a European Union trade mark, while KERRYMAID is registered in Ireland and the UK.

It's not very surprising that the parties had struck an agreement to enable the trade marks to co-exist peacefully in the UK and Ireland. It's possible to argue that there's no likelihood of confusion on the basis that the common part of the trade marks is the name of an Irish county famed for dairy products, so the question whether GOLD and MAID are confusingly similar: but the fact that the KERRY part of the trade marks is the beginning makes them more confusing, and perhaps KERRYGOLD is well-enough known that consumers seeing KERRY-anything on the supermarket shelf would get muddled.

Leaving the co-existence agreement aside, problems arose when KERRYMAID was introduced to the Spanish market. No registered trade mark there, no co-existence agreement. KERRYGOLD sued for infringement (throwing in a dilution claim too), and the Spanish court decided that because the similarity lay in the KERRY element of the trade marks which was just a geographical location, and there was a co-existence agreement covering the UK and Ireland, there was no likelihood of confusion. KERRYGOLD appealed and the Spanish appeal court set off on an expedition to Luxembourg - in other words asked the Court of Justice for a preliminary ruling.

The Court, unsurprisingly, said that you can't assume that because there is a co-existence agreement in two Member States, there won't be a likelihood of confusion in other Member States. If the Spanish court had been persuaded that there was no material difference between the UK, Ireland and Spain, that might have justified a finding that there was no infringement, but that hadn't happened. Indeed, I would go on to say that the fact that there is a co-existence agreement in two Member States indicates that there is a likelihood of confusion in other Member States where the parties haven't struck a deal to prevent it.

I would also have made sure that the UK co-existence agreement made clear that if the junior trade mark owner wanted to enter the Spanish market, there would have to be a new agreement. I'm dealing with exactly the same problem for a client at the moment: the fact that the junior trade mark owner only has a UK trade mark struck me as pretty conclusive about the matter of using their name outside the UK. It would not be use of the UK trade mark in a third country, it would be the use of something identical to the UK trade mark, and therefore the agreement has to stop the junior trade mark owner doing anything outside the UK. Co-existence involving a UK trade mark can't amount to co-existence outside the UK.

Why You Should Register Your (Well-Known) Marks in India- Now!

The enactment of the Trade Marks Rules, 2017, has paved the way for formal registration of “well-known” Marks in India. Although India did recognise Well-Known marks earlier (through its Trade Marks Act, 1999, which came into force on September 15, 2003), there was no provision for their formal registration. After the 1999 Act, the Indian Trademark Registry made efforts to consolidate marks that, over a period of time, were recognised as “well-known” by various Courts, Tribunals, Registrar etc. and made available this list online which has 81 “well-known” marks. 

Going by the list, Trademark “Philips” seems to have been the first trademark that was recognized as a well-known mark in India back in 1983. However, it was the famous case of “BENZ” by Delhi High Court which made Well-known marks concept well known and accepted in India (1994 PTC 287).

WHY WELL-KNOWN MARKS?

Almost every brand is created with the aim of making it a top brand; however, only a few survive the test of time and of those few, just a fraction makes it to the big league.

Looking back in history reveals that brands such as Toyota, Microsoft and Apple, that are today globally-recognised, took several years to enter the league. By contrast, brands such as Google, Facebook and WhatsApp made it to the list in much shorter timelines. Of-course, the nature of their business, the increasing pervasiveness of the internet and the era of rapid globalisation also played a role in these brands achieving global recognition much faster.

There surely are certain benefits of “well-known marks”, the most important of them perhaps being protection from dilution, provided of course, that they continue to deliver superior, differentiated products and services.

WHAT IS A WELL-KNOWN MARK?

Section 2(1)(zg) of The Trade Marks Act, 1999, defines a “well-known trade mark” in relation to any goods or services, as  “a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.”

What that means is - well-known marks are generally those that are acknowledged to have a high degree of reputation even beyond the areas of business of the proprietors of the marks. Such marks have attained such a degree of goodwill amongst general public (within a particular jurisdiction or even beyond) that even the use of such mark in relation to goods/services it is not generally associated with, would remind general public of the original source/product/service/proprietor. 

WHY DID INDIA AMEND ITS LAW TO PROVIDE PROTECTION TO WELL KNOWN MARKS?

India being a signatory to the TRIPS Agreement was obligated to amend its Trademark law by providing protection to well-known marks.

Articles 16.2 and 16.3 of the TRIPS Agreement contain certain provisions on well-known marks, which obligate member States to refuse or to cancel the registration, and to prohibit the use of a mark conflicting with a well-known-mark.

PROCEDURE FOR REGISTRATION OF WELL-KNOWN MARKS

Below we try to address a few questions like 'how to register a well known mark' and 'how much does it cost' to register a trademark.

Application for registration of Trademark:

As per Rule 124 of the Trade Marks Rules, 2017, any person may file a request for determination of a trade mark as well-known (interesting to note that here it has been avoided using the term “registration”, using instead the word “determination”). Each such request shall be accompanied by:

1. A statement of case describing the applicant’s rights and claim over such mark being a well-known mark;
2. Evidence in support of applicant’s rights and claims;
3. Details of a court order, if any in which such mark was recognised as a well-known mark; and
4. Requisite fee (INR 1, 00,000.00).

The Registrar may call for further such documents/information as he thinks fit for the determination of a mark as “well-known”.

Prosecution & Registration:

If the application is found in order, the Registrar may, before determining a trade mark as well-known, also invite objections from the general public. Such objections must be filed within thirty days from the date of invitation.

Notwithstanding the above, if it is found that a trade mark has been erroneously or inadvertently included in the said list, the Registrar may, at any time, remove a trade mark from the list of well- known marks, after hearing the concerned party.

WHO SHOULD REGISTER?

All proprietors who believe their marks to be “well-known” marks must consider making an application for determination of their mark as a well-known mark.

Further, proprietors of the marks that have been recognised by a Court of Law or Registrar as a well-known mark must also consider this registration with the Trademark Registry.

WHY TO REGISTER?

Once a trademark is determined by the Indian Trademark Registry to be as a well-known mark, the proprietor can be assured that no one else can register an identical or a similar mark in any of the 45 classes of goods and services in India. Registration would definitely safeguard the proprietors (of well-known marks) from the trouble of opposing every identical/similar mark every time a third party tries to register or to contest the registration of marks which may have been erroneously registered in any of the 45 classes.

HOW IS DETERMINATION/REGISTRAION OF A “WELL-KNOWN” MARK MADE?

As per Section 11(6) of the Trade Marks Act, 1999, The Registrar shall take into account several factors in determining whether a mark can be recognised in India as “well-known”. Such factors include the following:

1. the knowledge or recognition of that mark amongst the relevant sections of the public in India as a result of promotion of the trade mark;
2. the duration, extent and geographical area of promotion/use of the trade mark;
3. the duration and geographical area of any registration/application of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;
4. successful enforcement of the trade mark to such an extent that such trade mark has been recognised as a well-known trade mark by any court or Registrar.

Further, Section 11(7) of the Act states that the Registrar shall, while determining whether a trade mark is a “well-known” mark for the purposes of sub-section (6), also take into account:

1. the number of actual or potential consumers of the goods or services;
2. the number of persons involved in the channels of distribution of the goods or services; and
3. the business circles dealing with the goods or services, to which that trade mark applies.

Section 11(8) of the Act provides that where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any court of Law or the Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.

CONDITIONS NOT NECESSARY FOR DETERMINATION AS A WELL-KNOWN MARK

Certain myths and misconceptions prevail that in order to be a well-known mark, the mark has to fulfil various other criteria- for example, it should be registered/used in India etc. However, Section 11(9) of the Act clarifies that for determination of a mark as a well-known mark in India, the following conditions are NOT necessary to be fulfilled:

1. that the trade mark has been used in India;
2. that the trade mark has been registered;
3. that an application for registration of the trade mark has been filed in India;
4. that whether the trade mark is well known in; or has been registered in; or in respect of which an application for registration has been filed in, any jurisdiction other than India; or that the trade mark is well-known to the public at large in India.

CONCLUSION

By making provisions for registration of well-known marks, India has made it easier for entities with well-known marks to safeguard their rights. As many other countries are still contemplating to bring about such legislations by this amendment India has definitely taken the lead here. Although a few organisations have questioned the validity of the provisions relating to registration of well-known marks, none has yet challenged them in a court of law. Proprietors of reputed brands now have an opportunity to register their marks as “well-known” marks in India in order to not only safeguard their marks against unauthorised and unlawful use but also to protect them from the risk of dilution by inferior product/services. 

This article was originally published at http://www.foxmandal.in/why-you-should-register-your-well-known-marks-in-india-now/.   Please visit http://www.foxmandal.in/blog/ for more interesting reading.

David v Goliath in the trade marks world

Bentley Motors has been involved in a trade mark dispute for many years, the other party being a company called Brandlogic which owns a number of trade marks of which the important verbal part is BENTLEY 1962, which have been registered for clothes since as long ago as 1982.

Bentley Motors has been using its trade mark on a small range of clothes for nearly 20 years. The prices of the clothes are, other things being equal, comparable to the price of the cars - a polo shirt will set you back £75, according to the Financial Times. Not happy about someone else using the name, Bentley Motors sought to have the Brandlogic trade marks declared invalid or revoked on grounds of non-use for five years. Although they succeeded in part, they were unable to clear the way entirely, and even an appeal (to the Appointed Person) left Bentley Motors in difficulties.

Now Bentley Motors have filed an EU trade mark application. They might have been hoping that this way they might do without Brandlogic noticing, because on the face of it their earlier trade marks will be a barrier to the new application. I've done it myself, usually the other way round - applying for a UK trade mark so the owner of an earlier EU trade mark wouldn't notice. If so, it hasn't worked. The reason the matter has been in the press recently is because Brandlogic's trade mark attorneys have switched sides, in a perfectly proper manner within the rules (although that's not to say that the rules, or the regulator, are right). Inevitably, they will want to act for the client with the biggest chequebook - that's the way the legal industry works (oh, you thought it was a profession?).

What is deplorable here is not that a company should be trying to maximise the power of its trade marks. As car companies go into making clothes - as everyone goes into making clothes, I suppose - trade mark registrations have to get wider. Often these conflicts are dealt with in a very heavy-handed way - the Goliath tries to bully David. I've seen it happen to my own clients and it isn't nice. But Goliath is answerable to its shareholders, and they are going to insist on trying every trick in the book to overcome the nuisance earlier trade mark, regardless of the merits. Often might alone (or at least a big chequebook) is enough. And that isn't a sound basis for a just trade marks system.

Nottingham Law School graduation

I enjoyed the hugely gratifying experience of seeing many of my students from this past year receive their degrees a few weeks ago. Thanks to the wonders of modern technology it's all there on YouTube. And the vote of thanks at the end is great.

I can't begin to say how much they taught me!

Ferrari's TESTAROSSA trade mark under threat

According to international IP firm Novagraaf, Ferrari face a challenge to their registration of the trade mark TESTAROSSA. Autec AG of Nuremberg has applied to register an identical trade mark (in Germany, presumably) for bicycles (including e-bikes), and Ferrari's opposition has been rejected by the German courts on the grounds that the Italian manufacturer has not used its trade mark for more than five years. Non-use for five years or more makes a trade mark registration liable to revocation, and Autec is now seeking to have Ferrari's German and EU trade marks revoked.

Ferrari had argued that the trade mark was in use, as it was providing maintenance and repair services for the Testarossa - which it stopped making in 1996. But the court, crucially, held that in fact those services were marketed under the Ferrari brand not TESTAROSSA.

That seems quite correct to me. Trade marks perform several functions, not just the traditional origin-indicating one, but essentially a trade mark owner must use a trade mark to indicate the origin of its goods and services. TESTAROSSA in connection with servicing and repair is an indication of the purpose of the services, and should not support the registration of the trade mark for cars. There are 11 various registrations in Ferrari's name for TESTAROSSA (and quite a few in other people's names, hardly surprising given that the word could just as well be used for many different goods), but none of them are for services. Replacement parts are covered, but I suspect that the objection that they are sold under the Ferrari name not TESTAROSSA (and, if it be used at all, that designation is purely descriptive of the purpose of the goods) would apply here too.

A cautionary tale for owners of "heritage" (that is to say, old) trade marks. In the UK, perhaps they don't need to worry so much because an action for passing off might lie even if the trade mark were liable to revocation, but far better and cheaper to keep the trade mark in use, somehow. When the modern Testarossa was launched in 1984 its chosen name harked back to the 1957 Ferrari 250 sports racing car, and the name could similarly be recycled now to maintain protection. 

Intellectual property and competition law

Always an interesting topic ...

Hemphill, C. Scott, Intellectual Property and Competition Law (May 9, 2017). Forthcoming, Oxford Handbook of Intellectual Property Law (Rochelle C. Dreyfuss & Justine Pila eds. 2017). Available at SSRN: https://ssrn.com/abstract=2965617 or http://dx.doi.org/10.2139/ssrn.2965617

And another article of interest:

Lim, Daryl, Retooling the Patent-Antitrust Intersection: Insights from Behavioral Economics (April 14, 2017). 69 Baylor Law Review 124 (2017). Available at SSRN: https://ssrn.com/abstract=2953031

"The Great Intellectual Property Trade-Off"

Tim Harford ("The Undercover Economist") is, I find, always worth reading, and here is his take on the intellectual property system via the BBC (the website article is based on a programme on the World Serve). Nothing new in saying that there is a trade-off involved in the intellectual property system, of course, we have known that for a long time, but it's good to see it aired in this way. The chilling effect of James Watt's steam engine patents is interesting, and I hadn't fully appreciated that before (nor that Watt also suffered because of other patents). Remember though that the patent system was in its infancy in those days, and modern patent legislation is unlikely to allow this to be repeated.

Mr Harford cites "the economists Michele Boldrin and David Levine". ("The economists"? Surely there are more than two?) Their book Against Intellectual Monopoly can be downloaded from here. They are from Washington University of St. Louis, Economics Department, and have done a lot of work on the economics of intellectual property (though what bears a date seems to be ten or more years old). The idea of the book is intriguing, but I am somewhat concerned about the lack of information about publishers - of course self-publication is perfectly respectable, but I'd like to see something objective to enable me to judge whether to spend time reading it (or to suggest my students read it). At first glance, it looks like a popular rather than a scholarly work. It lacks footnotes, though there are extensive notes at the end of each chapter. I would also like to know when it was written - I haven't found a reference to a source later than 2005 yet. Mr Harford should give his readers a bit more information, although I don't expect high levels of academic rigour in his work (that's one of its attractions). When I read more of the book I will write more about it.

And while I am writing about the BBC - "The Bottom Line" on Radio 4, presented by Evan Davis, had a recent episode entitled "Corporate Espionage". It's currently available to download as a podcast here. It features serial inventor and entrepreneur Mandy Haberman, patent attorney Vicki Salmon and investigator-cum-author Chris Morgan Jones. Different intellectual property rights get a little confused but it's definitely worth listening to.

Google in record fine for abuse of dominant position

Google has been fined a record €2.42 billion (more than twice as much as expected, and indeed twice as much as the "bung" given by the UK government to persuade the DUP to maintain it in office) for abusing its dominant position, contrary to Article 102 of the Treaty on the Functioning of the European Union. The Commission found that the search engine gave illegal prominence to Google's comparison shopping service. Unless it terminates the abuse within 90 days, the company will become liable to daily penalty payments up to 5% of the global turnover Google's parent, Alphabet.

The competition Commissioner Margrethe Vestager said:

Google has come up with many innovative products and services that have made a difference to our lives. That's a good thing. But Google's strategy for its comparison shopping service wasn't just about attracting customers by making its product better than those of its rivals. Instead, Google abused its market dominance as a search engine by promoting its own comparison shopping service in its search results, and demoting those of competitors.
What Google has done is illegal under EU antitrust rules. It denied other companies the chance to compete on the merits and to innovate. And most importantly, it denied European consumers a genuine choice of services and the full benefits of innovation.

The Commission keeps imposing record fines on technology companies. In 2009 it fined a record Intel €1.06 billion for paying manufacturers and a retailer to favour its products over those of AMD, surpassing the €497 million penalty imposed on Microsoft in 2004. There's a brief survey of the eight biggest fines imposed on technology companies for breaches of EU competition rules on the Computer Business review website here. And there is, I think, an outstanding investigation into another abuse by Google involving Google Play and the Google search engine being installed on smartphones. There's also the Commission's state aid case involving the Irish tax authorities and Apple. So many that commentators write about the EU being at war with Silicon Valley - which just happens to be where many of the dominant firms come from (and incidentally a long way from Redmond, WA). The fact remains, however, that there is an interesting phenomenon here as the law on abuse of dominant position (and the penalties for breaches) develops. The fact is, the technology sector offers huge scope for abuses of one sort or another.

There's too much to do to write more about the Google decision right now but I will get back to the story later. If you want to know more here is the Commission's press release. There's also an interesting Fact Sheet. And, with a hat-tip to Warwick Rothnie's IPwars.com blog, Ben Thomposon's comments on Stratechery.com are also well worth reading. I found them very eye-opening.

India: Balancing Competition - SEP Injunctions

SEP Injunctions and the Balance of IPRs and Competition in India is a posting on the IP finance blog by Mike Mireles, linking to an article in the Financial Express by Professor V.K. Unni of the Indian Institute of Management, Calcutta entitled 'Promoting Innovation: Moving Towards a Better Intellectual Property Regime'. 

The balance between IP rights and competition law is of course a crucial one to lawyers in either of (or, more likely, both) those disciplines. The learned Professor notes that the the Delhi High Court has recently considered whether the competition authorities are entitled to consider possible abuses of dominant positions by owners of standards-essential patents, and has concluded that they can, which sounds rather like the process that the Court of Justice went through many years ago to reconcile the provisions of the (then) Treaty of Rome with national intellectual property laws. But it's not for me to tell you what IP Finance, or Prof Unni, said - follow the link and read it for yourself. As my students might find themselves doing next year ...

'via Blog this'

Theft: A History of Music

Thinking about how to engage students coming to intellectual property law for the first time is something that occupies my thoughts quite a lot these days. A copyright comic might be just the answer - and if it deals mostly with the law from that other common law jurisdiction across the Atlantic, that's not necessarily a disadvantage if the purpose of the exercise is to kindle interest rather than teach hard law. And if it has "theft" in the title I will be prepared to suspend my usual reaction to the connection of that concept with intellectual property.

A large part of grabbing a student's attention is finding a route into intellectual property law from somewhere they already know and like. Music provides an excellent entrée into copyright law - probably not Mozart, but possibly some of the more recent and high-profile cases, the two most celebrated of which were US cases (but there are many from the UK too). Music copyright is precisely what James Boyle and Jennifer Jenkins’ new scholarly comic book tells us about. It is (the blurb tells us) 'a celebration of these and other musicians and composers who crossed barriers and built the playlist of extraordinary Western music from ancient Greece to classical to hip-hop. Published by the Duke Center for the Study of the Public Domain, “Theft: A History of Music,” brings these artists’ musical borrowings to the forefront, saying that instead of stifling creativity, such “thefts” were essential to musical cross-fertilization and creation of new genres.'

The blurb continues: 'But the book also comes with a warning: At every point of new musical innovation, there was resistance and efforts to control music, whether it was from philosophers, the church, or politicians.'

You can read the full article here, and listen to James Boyle discuss the comic on NPR's The State of Things. The mere fact that it's the work (partly) of Jim Boyle is enough to sell it to me: he's an excellent writer and lecturer and I have enjoyed his work in the past, although this is the first comic book of his that I have read (the first comic book of any kind that I've read, since I gave up "war bluds" at school). I read it, pretty much in one sitting, and found it stimulating, entertaining and informative. It's going to be an ideal introduction to copyright concepts in courses I teach in the future, and best of all (coming as it does from individuals and an institution committed to the furtherance of the public domain) it's a free download. What  more could you ask?

Positional goods

Many things bother me about the state of the world. One idea that made a deep impression on me when I first read about it in "Social Limits to Growth" by the  late Fred Hirsch is what he called positional goods. I took a couple of Prof Hirsch's courses at Warwick, and learnt a great deal from them (I could have learnt a great deal more, but a memo from him tucked inside my copy of "Social Limits" explains why I didn't: it starts "I don't seem to have been seeing you at the seminar lately ..."). I bought his books, and remember struggling to read "Social Limits" during a sleepless night at the British Grand Prix at Brands Hatch, when camping in a tent brought on an attack of asthma and I spent several hours sitting in the Hillman Avenger in which my brother and I had travelled to the event. But I digress - except that this explains why my attempt to read the book were less than successful.

I did, however, take on board the idea that there are limits to growth. If everyone moves to the countryside because it's pretty and quiet, it will cease to be pretty and quiet. This is happening right now all around me. And contemplating what I think JK Galbraith identified as the problem of private affluence and public poverty (highlighted by the appalling death toll in the Grenfell Tower fire, which must have at least something to do with the public sector being starved of money), I wonder how the super-rich imagine they will derive any pleasure from their wealth if, as they travel between their City base and their place in the country, they have to negotiate traffic jams and potholed roads, or a rail system brought to a halt by defective signals or a "jumper" (a "person under a train", in official language). Even if they fly, they will see plumes of smoke from burning tower blocks. Not every day, of course, but once in a decade is much too often.

So, houses in the countryside are positional goods. They rely for their value on scarcity. This thought brought me to something else which has troubled me for years (though it is not something that would ever bring about the end of the world*), namely parallel imports of luxury goods. Trade mark owners resist parallel imports because they interfere with their pricing strategy, which is based on maintaining exclusivity, which means that luxury branded goods are positional goods like country cottages. Consumers - some of them, anyway - want to be able to buy them cheap from Tesco, but the whole point about positional goods is that if they are available cheap from Tesco they are no longer worth having.

Hirsch also wrote about the commercialization effect (and yes, he did spell it with a "z"), under which supplying something commercially diminishes the quality of a good or service. Or, to put it another way (as Wikipedia does) "market exchange ... diminishes the inherent value of the transaction by subordinating social well-being to the commodification impulse." And that leads me to think about commodification (a topic on which Marx had a lot to say), which seems to me to be what intellectual property law is all about - taking intangible creations and turning them into something that can be traded. There's a lot to think about here, and I think it is now high time I read the book (which I notice I bought in 1980 at the bookshop at Conservative Central Office, and that in itself raises some interesting questions).

* Although as my old friend - as in, he was a friend a long time ago, but I have not seen him for many years - Sir Michael Fallon once said, "it's not the end of the world - but you can see it from there". No, I won't tell you of where he was speaking.

The Oxford Comma

Although it is certainly not a point of interest only to intellectual property lawyers, this cautionary tale is as relevant to us as it is to any other species of lawyer. The Oxford (or "serial") comma is often considered to be of interest only to the worst sort of pedant (though "pedant" isn't actually a bad thing to be at all, not on the proper meaning of the word). It can however be crucial to the interpretation of a piece of writing - as a company in Maine found out recently.
Relying on a statute which exempted from an obligation to pay overtime to employees engaged in “canning, processing, preserving, freezing, drying, marketing, storing, packing for shipment or distribution" of certain perishable products, it did not pay overtime to employees engaged solely in distribution. The District Court decided that distribution was a "stand-alone exempt activity", but the Court of Appeals for the First Circuit found that the lack of a serial comma to mark off the last listed activity meant that the provision was ambiguous. The state's default rule of construction required the court to resolve the ambiguity in favour of the beneficiaries of the exemption, namely the drivers. So, for want of an Oxford comma, the drivers got their overtime payments.
It wasn't that the court decided that the absence of the comma was in itself determinative: and I think it would clearly have been wrong had it so decided. To give the words the meaning contended for by the employers, it would have been necessary to obey the rules about parallel construction, inserting a conjunction (in this case "or") between "storing" and "packing", to make clear that "packing for shipment or distribution" was one activity. But how often do you see that rule obeyed?
Thanks to Thomson Reuters Legal Solutions Blog for alerting me to the story.

Eminem in dispute about use of music in NZ party's election campaign

The amount of trouble that using popular music for election campaigns causes seems to be limitless. Not every party can rely on Lord Lloyd Webber to arrange some conveniently out-of-copyright Purcell for the occasion (though the Rondeau from Abdelazar is better known as the theme used by Benjamin Britten for his Young Person's Guide to the Orchestra, which makes it a strange choice for a Conservative Party campaign tune though it's certainly stirring enough). It features at the end of this election broadcast from 1992 - which is worth watching in itself, I think, reminding us of a very different political era.

New Zealand's National Party, for a campaign in 2014, didn't try Lord Lloyd Webber, but instead went for a piece called "Eminem-esque", which it bought from a stock music purveyor. An odd choice of artist, and genre, for a centre-right party to associate with, you might think, and it gets worse because unfortunately for the Nationalist Party it sounds very like Eminem's song "Lose Yourself" - an even more unwelcome association, you'd have thought: alluding to any song with the word "lose" in the title can't be a good idea. As the BBC reports, it has led to a copyright infringement suit. You can hear both pieces played in court here. Neither has the judge dancing in the aisle, and I'm left with the feeling that I would want to punish any political party that inflicted either piece on me. But that's not the point.

There are more and more cases like this coming to the courts - not the English courts, necessarily (I can't think of any cases like this) but there are plenty of others from elsewhere, whether involving politicians or not. There's a recent piece about it on IP Watch which mentions a new "scholarly comic book" (what an interesting concept) by James Boyle and Jennifer Jenkins, about which I am going to post separately.

In the last couple of years there's been Led Zeppelin v Spirit and Marvin Gaye (the estate of) v  Robin Thicke and Pharrell WilliamsAs a recent programme on BBC Radio 4 showed, there is a lot of activity in the area - with a new profession of forensic musicologist emerging as an important part of the picture. The fear of being sued for copyright infringement has a significant chilling effect on creativity, and especially on improvisation. A consequence of the fact that control doesn't lie with the musicians, but with the suits of the record company, and an illustration of how big business isn't content with the limited exclusive rights given by the copyright system, but strives to turn them into a true monopoly.

But back to the story ... The Nationalist Party seems to have taken the view that, if there were a copyright problem, it was the stock library's problem rather than theirs. I doubt New Zealand copyright law is different enough from ours to make that proposition any less risible than it would be if trotted out by an infringer here. Whether "Eminem-esque" does infringe copyright in "Lose Yourself" is another matter, but it does seem like a strong possibility.

Debate rages over controversial copyright standard for the web

New Scientist reports that a new standard that is intended to enable web browsers to deal with digital rights management software is proving controversial. The Encrypted Media Extensions mechanism replaces browser plugins, which have a bad track record for security. The World Wide Web Consortium (W3C) is seeking to standardise EME, to avoid compatibility problems across different browsers.

The controversy stems from fears that EME might introduce security flaws into browsers, and as tampering with DRM systems is illegal under many countries' laws (including the USA and EU Member States) researchers will not be able to check for bugs.

With the widespread use of DRM, without which film studios would not make their products available on services such as Netflix and Amazon, take-up by the browser-makers is unavoidable, and W3C's approval almost inevitable. But standardisation is often the enemy of innovation: and in this case, it might also be the enemy of security.



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How much intellectual property is a good thing?

The World Intellectual Property Organisation tells us that it was a Record Year for International Patent Applications in 2016 and that there was "strong demand" for international trade marks and registered designs. Applicants from the U.S. led the patents field, as they have done for 39 years, with Japan second and China third. “In an interlinked, knowledge-based global economy, creators and innovators are increasingly relying on intellectual property to promote and protect their competitive edge around the world,” said Director General Francis Gurry, which actually strikes me as such a bland statement that it was hardly worth saying. Of course there is no way of measuring success qualitatively, so a crude quantitative measure is the only one available, but even so it is surely a mistake to consider more patent applications to be unequivocally a good thing.

The days when patents protected big inventions passed a long time ago. I doubt that any of last year's PCT applications were for today's equivalent of the steam engine or the hovercraft, or even the dual-cyclone vacuum cleaner. There might be a blockbuster drug in there somewhere, and that should be a matter for celebration when (and if) it becomes apparent, but the mere fact that thousands of patent applications have been filed is meaningless in terms of technological development and benefit to human kind (although one can understand why patent agents, patent attorneys and patent office bureaucrats might be pleased). Please don't confuse the number of patent filings with the amount of innovative activity in the world - much of it is probably mobile phone companies building their portfolios, the better to defend themselves (or counter-attack) when they are sued for infringement by their competitors. Not an edifying use of the intellectual property system, IMHO. But applauding the number of applications rather than the real achievements of patent protection is another symptom of the modern disease of confusing means and ends.

One interesting fact emerges from reading to the end of the press release: the Hague Agreement is most-used for furniture designs, and the leading user of it is a Dutch company. Who'd have thought? But then again, who'd bother with a registered design to start with? What is there in furniture design that's truly novel? No doubt I am missing something ...

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Famous Hartlepudlians

When I was an articled clerk (for the benefit of young people, this was what we used to call trainee solicitors) in Teesside (not, trademarksandbrandsonline.com note, "Teeside"), and many of the firm's clients frequented the crown court there, it was scarcely imaginable that it would be the venue for a copyright case. But there was nothing criminal in the copyright law in those days, so no reason for the idea to cross our minds.
Now a man from my home town - indeed, a short distance from my old family home, from a road down which we walked the dog every evening - has been convicted of an offence under (presumably) section 297A of the Copyright, Designs and Patents Act 1988, having advertised and sold adapted IPTV boxes - which were designed to enable users to receive encrypted broadcasts without paying the broadcaster for the privilege. As well as a ten-month "bender", as I recall suspended sentences were called in the days of my articles (his sentence being suspended for 12 months), a Proceeds of Crime Order required him to pay £80,000 and costs of £170,000 were also awarded against him. Painful.
The prosecution was brought by Hartlepool Trading Standards department, following an investigation by the National Trading Standards North East Enforcement Team. The original referral came from FACT, which appears now to be the full name of what was the Federation against Copyright Theft - one of those organisations whose names make me cringe but who do, at least sometimes, a good and useful job. Mr Mayes, the defendant, had been caught selling these boxes to pubs and clubs all over the place, placing advertisements which claimed they were "100% legal". He charged £1,000 each, which is probably an attractive price compared with the fee a broadcaster would charge for the sort of public showing licence a pub or club would need. The FACT report (https://www.fact-uk.org.uk/seller-ordered-to-pay-250000-for-illegal-tv-boxes/) says that often they didn't even work - perhaps his business model relied on the customers not going legal over something which was pretty clearly illegal, whatever his advertising stated.
Trademarks and Brands Online's report, which is where I first read about the case but which contains nothing not in FACT's press release except the misspelling, is here.

India: The Trademark Rules, 2017: Process made simpler, Faster, Start-up friendly but dearer

In a constructive attempt to streamline, simplify and expedite the trademark registration processes, the Trade Mark Rules, 2017 have been notified and came into effect from March 6th 2017. In consonance with the National IPR Policy, 2016, the Rules also introduce specific provisions for Start-Ups and Small Enterprises to stimulate and promote innovation and creativity among such entities.

The Salient Features of the Rules are as follows:

GENERAL:

• Definition of Start-Ups and Small Enterprise introduced.
• Number of Forms has been reduced from 74 to 8. 
• Procedures relating to registration as Registered User of trademarks have been simplified. 
• Provisions have been introduced to serve all applications, notices, statements and other documents electronically - from applicants to the Registry and vice-versa.

OFFICIAL FEES:

• Government Fee applicable for various trademark registration related activities has been simplified by reducing the number of entries to just 23. 
• Filing fee of a new application has been increased by about 125 %. (INR 9,000.00).
• Renewal fee increased close to 100% (INR 10,000.00). 
• Fee for expedited registration process increased by 100% (INR 40,000.00).
• Handling fee for Madrid Applications increased by 150% (INR 5,000.00).
• 50% discount on the new filing fee for Individuals/Start-Ups/Small Enterprise. 
• To promote e-filing, the fee for online filing has been kept 10% lower as compared to fees for physical filing.
• Fee for extra characters (beyond 500 characters) in the description of goods/services has been done away with.

EXPEDITED PROCESSING OF APPLICATIONS:

Provisions laid down for expediting the registration from filing through registration on payment of higher fees. Earlier, only examination of application could be expedited.

REPRESENTATION OF SOUND MARKS:

Sound marks applications to be also accompanied by reproduction in MP3 format (not exceeding thirty seconds’ length).

EXPEDITE OPPOSITION PROCEEDINGS:

• Provision to file counter statement to the notice of opposition as soon as it is made available online. 
• The requirement of serving a copy of opposition notice shall be dispensed with if a counterstatement has already been filed based on electronic copy of notice available online. 
• No scope for seeking extensions in case of filing evidences. 
• The number of adjournments for hearings reduced to 2 for each party and each adjournment shall not be allowed for more than 30 days.
• Mandatory costs up to INR 10,000.00 to be awarded to either the Applicant or the Opponent (depending on the case) for not contesting opposition proceedings thereafter. 

WELL-KNOWN TRADEMARKS:

• Modalities for determination of a trademark as a well-known mark have been introduced for the first time. 
• Application to be filed with an exorbitant fee of INR 1,00,000.00 per mark and only through e-filing.

VIDEO-CONFERENCING OF HEARINGS:

Provisions have been laid down to hold personal hearing through video- conferencing or other audio-visual communication devices.

RENEWAL OF REGISTRATION:

The window for renewal of registration now opens one year prior to the date of expiration as against six months under the old Rules.

EXTENSION OF TIME:

Any extension of time, as specifically allowed under the Trademarks Act, 1999, shall not exceed one month.

ASSIGNMENT OF TRADEMARKS:

• Providing a duly certified copy of original document, instrument or deed purporting to transfer the title will suffice; an original instrument or deed is no longer necessary. 
• Filing of Affidavit along with the application for recordal of assignment is no longer required. 

STATEMENT OF USE:

• All applications (except with the intent to use) shall contain a statement of use with respect to ALL goods or services mentioned in the application.
• An affidavit testifying such use (if application claimed prior user date) along with the supporting documents has to be filed.

Land Rover defends the DEFENDER trade mark

There are few vehicles as iconic and instantly recognisable as the classic Land Rover. It has captivated car enthusiasts for decades, and has appeared in several mainstream action films such as The Expendables, Lara Croft: Tomb Raider, and in somewhat of a modified form in James Bond: Spectre. It is no coincidence that the vehicle has appeared in such films, as its heavy duty, military like structure gives an impression of assertiveness, functionality, efficiency and reliability.

To the dismay of many, Jaguar Land Rover discontinued production of the Land Rover Defender in January 2016. However, it did not discontinue the trade mark registrations which protects the model name. Instead, it is working on a replacement, although traditionalists are expressing doubts about whether it will be worthy of bearing the same name.

Jaguar had registered two trade marks for DEFENDER, these being a UK mark registered in 1989 for ''motor land vehicles and parts and fittings therefor; all included in class 12'' and an EU trade mark registered in 2014 for ''land vehicles; motor vehicles; motor land vehicles''.

A Canadian Company called Bombardier marketed a recreational off-road vehicle under the name ''Defender''. Jaguar alleged that this infringed their trade mark under Regulation 207/2009 art.9(2) of the Trade Marks Act 1994, on the basis that it would lead to a position of (1) double identity and (2) likelihood of confusion.

Bombardier only defended the former claim as they had no defence to the infringement action. They issued a counterclaim for partial revocation on the ground of non-use for five years under Section 46(1)(a) of the Trade Marks Act 1994.

They also argued that the trade mark was invalid under Regulation 207/2009 art.52(1)(b) and Section 47, as its scope contained too wide a specification of goods and services. The purpose of this argument was to establish that the trade mark had been registered in bad faith, a tactical move on Bombardier's part.

Issue 1 - Partial Revocation for Non-Use

Bombardier began by arguing that Jaguar Land Rover had only used the DEFENDER mark for part of the class in which it was registered, namely on the single Defender series only, despite being registered for ''Land Vehicles; Motor vehicles; motor land vehicles; parts and fittings for vehicles''.

However, the defendant could not attack the EU trade mark for non-use. It was filed in 2014 and the five-year period had not elapsed. The judge therefore did not consider the matter any further, as even if the UK trade mark were to be revoked the EU claim would still lie.

Issue 2 - The UK Act vs the EU Regulation - Partial Revocation on grounds of bad faith

Bombardier alleged that Jaguar Land Rover had made their application in bad faith, on the basis that they did not intend to use the mark DEFENDER for any other land or motor vehicle except to the models they had applied it to.

Unlike the domestic Trade Marks Act 1994 which requires an applicant for registration of a UK trade mark to make a declaration of use or intention under Section 32(2), the EU Regulation does not require that the applicant must be using or have a bona fide intention to use a trade mark. Therefore, invalidity on the grounds of bad faith could not be established in respect of the EU trade mark.

Nugee J clearly felt somewhat constrained as there was a conflict between the UK Act and the EU regulation. He referred to comments made by Jacob J, who in Laboratoire De La Mer Trade Marks [2005] EWCA Civ 978 said that ''there is simply no deterrent to applicants seeking very wide specifications of goods or services…with all the greater potential for conflict that may give rise to''. He then went on to say that it would be a strange position for somebody to be able to ''register a mark when he has no intention whatsoever of using it''.

However, Nugee J went on to say that because the matter was concerned with the Regulation, the Court was bound by it by virtue of Section 3(1) and Schedule 1 of the European Communities Act 1972 and Article 19(1) of the Treaty on the European Union.

Issue 3 - Was Jaguar in bad faith?

Nugee J analysed the legislation and the relevant authorities, and arrived at the conclusion that ''neither the Regulation nor the case law provides a basis that would enable the court to find that there is bad faith in view of the size of the list of goods and services in the application''. There, the partial revocation claim on the grounds of bad faith failed, affording no defence to the double identity infringement.

Issue 4 - Was the EU application made in bad faith?

Due to the ''expressions of disquiet'' of other judges, Nugee J then felt he had to consider what is exactly is meant by bad faith for the purposes of EU trade mark law, and particularly whether Jaguar was in bad faith in this respect.

In the case of Trillium (Case C000053447/1, March 28, 2000), the Cancellation Division helpfully defined bad faith for these purposes as ''the opposite of good faith''. Although that provides an inadequate consolation as to its meaning, they went further, explaining that it ''generally implies or involves, but is not limited to, actual or constructive fraud, or a design to mislead or deceive''.

Nugee J then went on to highlight the severity of a claim of bad faith and that the burden is on the defendant (the accuser) to prove it. Where a defendant seeks to establish that a claimant has acted in bad faith by applying for an unduly broad specification but is unable to establish a narrower specification which the claimant should have registered, the accusation will be ''manifestly unsustainable''. Despite attempts to do so, Bombardier could not establish a narrower specification, and as a result their claim failed.

Jaguar Land Rover Ltd v Bombardier Recreational Products Inc [2016] EWHC B37 (Ch) (08 November 2016)

The National Guild of Removers And Storers Ltd v Bee Moved Ltd & Ors; why the court couldn’t Bee Moved on both parts of the claim

In December last year, the Intellectual Property Enterprise Court gave judgement in proceedings for passing off brought by the National Guild of Removers and Storers against ex Guild member, Bee Moved Ltd and its two director-shareholders ([2016] EWHC 3192 (IPEC)). The claim had two parts. The first concerned an alleged misrepresentation on the defendant’s website which led customers to believe that the defendant was a Guild member. This impression was created through a ‘moving checklist’ featured on the defendant’s website targeted directly at customers. The checklist gave customers advice which included to ‘check the fine print in your moving insurance’ but most importantly, ‘use a removal company who is a member of the National Guild of Removers and Storers.’ The defendant was unable to identify anything on the website which clarified this bullet point and showed that first defendant was not a member of the claimant.

The defendants relied on evidence given by the claimant in cross-examination accepting that all Guild members either expressly state membership or use the claimant’s logo to convey membership. The defendants sought to argue any member of the public would notice the absence of the claimant’s logo and therefore not conclude any trade connection had been established. The court held that it hadn’t been established that the public would even notice the absence of such logo on the defendants’ advertising. The judge could not Bee Moved on this part of the claim and held the implied representation was damaging to the claimant’s business and goodwill.

The court dismissed the second part of the claim showing they could Bee Moved in relation to this issue. The claim related to a further advertisement that was published on a third party’s website. The difference was that this advertisement expressly stated the defendant’s membership of the Guild. However, this statement had appeared by accident as a system failure caused the website to replicate itself from an earlier version. The judge accepted that when the advertisement was initially submitted to the website, the defendant was a Guild member. Therefore, as the defendants didn't intend for the third party to show the advertisement or even be aware the advertisement was being shown, they couldn't be held liable.

The claimant’s case on passing off succeeded against all three defendants in relation to the first part of the claim and failed on the second.

Unified Patent Court Agreement under threat?

It had to happen: the xenophobic press has noticed (courtesy of Douglas Carswell MP, the sole UKIP member in the House of Commons, who has tabled an Early Day Motion) that however hard Brexit may be it presently does not involve trashing the Unified Patent Court Agreement. Now that the Daily Express is reportedly on the case (see Intellectual Asset Management's report - I could not bring myself to investigate that rag's website, still less to drive traffic to it), I don't give much for the Agreement's future. I am amazed that, after all the hard work creating the Agreement (and all the other good stuff that has come out of the EU - of which even its sternest critic, if apprised of the facts, would surely agree there is some, even if it's only compensation for delayed flights), anyone should think it is a good use of scarce resources to undo it all and recreate something new that probably won't look very much different. Although, of course, the Unified Patent Court, by definition, isn't something the UK could do by itself.

Bulgarian radio in licensing dispute, relying on out-of-copyright music

Copyright spat forces Bulgaria radio to play old tunes, reports BBC News. Musicautor, the collecting society, is reported to be demanding three times as much in royalties as before - to bring it into line with other EU countries, it claims. The broadcaster says it can't afford to pay that much without damaging the service it offers.



Not all copyright music is off the air in Bulgaria, though. Dancho (or is it Jordan?) Karadjov, frontman of Bulgarian rock band Signal, isn't a member of Musicautor and hasn't been since 1990, and is letting the station broadcast his latest solo album, a copy of which he gave to the radio station's director. He obviously feels a debt to the radio station for the help it gave the band decades ago - in the 80s when I imagine that it wasn't very easy to be a Bulgarian rock musician. Although listening to my first piece of Signal music (https://www.youtube.com/watch?v=2U5jSxxUCWc - the title translates as "Farewell" which might indicate that I should have found somewhere else to start) I'm not sure that "rock musician" is quite the right expression. Perhaps I should dig deeper - but do I really want or need to become familiar with Bulgarian rock?



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