No copyright protection for design dictated by function - Advocate General

Having commuted into London by train for so much of my life, I have long been familiar with the Brompton folding bicycle - the advantages of which it's a little hard to appreciate when the crowded train carriage is full (OK, that's hyperbole) of them. What is the point of a machine for moving, when it is folded up and carried in a larger moving machine? When Brompton cycles became available for hire at my local railway station, but apparently with the intent that people would hire them to take to London rather than on arriving from London or elsewhere, I had one of those moments of clarity that comes to me when I realise I no longer understand how the world works (another instance of which is when I was reading Frank Zappa's obituary in the Financial Times).

A friend I made in the course of commuting - one of many, including a Chancery master and the future Information Commissioner - didn't clutter the train up with a Brompton cycle, although she might have done later, on a different line: but in 2010 and 2011 she was the female Brompton World Champion, which is quite an achievement. But I digress.

Be that as it may, they are a great product and a great success, although I'll stick to the mountain bike I bought from our neighbour a few years ago - a Brompton would not cope well with the track I use to get to the station. It's not surprising that such a successful design should have attracted the attention of copyists. While the folding mechanism was still protected by patents (the original one of which, EP0026800, was filed in 1979, so now long gone) these could be dealt with quite easily, but latterly Brompton (in which I include Mr SI) has had to rely on copyright and design law.

One such case is before the Tribunal de l’entreprise de Liège, which embarked on an expedition to Luxembourg with questions about whether a product with an industrial application whose shape is exclusively dictated by its function may attract copyright protection.  Advocate General Campos Sánchez-Bordona has today given an opinion in SI, Brompton Bicycle Ltd v Chedech/Get2Get (Case C-833/18) EU:C:2020:79: I'm baffled about the "SI" part of the case name, as the Opinion clearly describes the founder of Brompton, Andrew Ritchie, who owns much, perhaps all, of the intellectual property in the design, but in deference to the legal documents I will call him Mr SI until someone tells me to do otherwise.

There are two questions for the Court:

(1) Must EU law, in particular Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, which determines, inter alia, the various exclusive rights conferred on copyright holders, in Articles 2 to 5 thereof, be interpreted as excluding from copyright protection works whose shape is necessary to achieve a technical result? 

(2) In order to assess whether a shape is necessary to achieve a technical result, must account be taken of the following criteria: 

– The existence of other possible shapes which allow the same technical result to be achieved? 

– The effectiveness of the shape in achieving that result? 

– The intention of the alleged infringer to achieve that result? 

– The existence of an earlier, now expired, patent on the process for achieving the technical result sought?

The AG observes that:

The referring court only asks the Court of Justice for an interpretation of Directive 2001/29.

I beg to differ - the words "in particular" say the very opposite. But maybe that Directive - which, let's not forget, is concerned with copyright in the information society, according to its title to which the Court seems to have less and less regard - is the only one that matters.

As for the shape being necessary to achieve a technical effect, the referring court had made a finding of fact about this: the shape was necessary in that sense. It would not be a matter for the Court of Justice anyway, but it had to be taken as read. The Advocate General advises the Court that it should not be protected by copyright.

It is not long since the Court gave its opinion in Cofemel (Case C‑683/17), EU:C:2019:363, and the Advocate General had nothing to add to the review of the case-law there. To be original, a work must reflect the personality of its creator. Cofemel tells us that aesthetic considerations play no part in determining whether a work is original. That indicates pretty clearly the direction in which the Opinion is going: if a design is dictated by function, it doesn't reflect the personality of the designer, and therefore cannot be original so copyright will never subsist in it. A digression to draw lessons from trade mark law (exclusion of shapes which achieve a technical function), which seems a bit left-field, reinforces the Advocate General's view.

There's more to the Opinion, but that will have to suffice for now.

Originality requirement is the same for all works – including applied art

In a case involving the design of jeans and tee shirts, referred by the Portuguese Supreme Court, the Court of Justice has extended the scope of its Infopaq decision and held that the Euro-originality test, that a copyright work be its author’s own intellectual creation, applies to all types of copyright work including works of applied art. It is not open to Member States to protect works of applied art on the basis that they have some aesthetic appeal in addition to their utilitarian appeal: the only criterion is originality.

To be protected by copyright, a work must be the author’s own intellectual creation, reflecting the author's freedom of choice and personality. If the subject matter was dictated by technical considerations, rules or other constraints, which left no room for creative freedom, it would not be original. Only the elements that were the expression of creation in this sense would be regarded as a work - which sounds very much like the Court applying the "abstraction-filtration-comparison" test propounded by the Second Circuit in Computer Associates v Altai to determine what is protected rather than the English courts' approach of looking at the copyright work as a whole and filtering out unprotected subject-matter when applying the "substantial part" criterion for infringement.

Looking for an aesthetic effect to decide whether copyright applied was, the Court observed, subjective, and did not mean that the subject-matter of protection existed and could be identified with sufficient precision and objectivity. Aesthetic considerations were important in creative activities, of course, but a design's aesthetic effect did not in itself make it possible to decide whether the design was the author's own intellectual creation.

Clothing designs will perhaps rarely pass the higher originality test. In the UK this would not be a problem, as copyright is not the most apt way to protect them: they are more properly protected by design right, and in any case s.51 should exclude the use of copyright to protect the designs except where the item of clothing is itself an artistic work – which means it only works if the garment is a work of artistic craftsmanship, which it often will be but not if it is a tee shirt, or probably a pair of jeans. But the case raises the interesting question for the UK, does the Euro-originality test apply now to design right? The courts were always clear that they were not going to invent a new originality test for design right when they could just adopt the well-established copyright one, but that was before the Court of Justice drive a coach and horses through that test in Infopaq.

The judgment raises other important questions about EU copyright law – which almost with each passing day seems to be the way we now have to regard copyright, as based on EU directives. How the activist Court of Justice brought us to this position, developing the Information Society directive (which it seems always to refer to simply as "the Copyright Directive") into a comprehensive harmonisation of copyright law, is another story on which a lot has already been said and much remains to say.

Case C-683/17, Cofemel – Sociedade de Vestuário SA v G Star Raw CV EU:C:2019:721 (12 September)

No copyright in taste: Outbreak of common sense at Court of Justice

The Court of Justice has today handed down its judgement in Levola Hengelo [2018] EUECJ C-310/17 (13 November 2018), holding that the taste of cheese spread is not a copyright work. Why should it even have had to consider the matter? In UK copyright law it would surely have been disposed of very quickly, as taste does not fall into any of the categories of copyright work set out in the 1988 Act. But the UK is unusual among EU Member States in having a "closed list" approach to copyright works - more often, in the civil law world, the scope of copyright protection is not so constrained, which is how perfumes have achieved copyright protection in come countries. The Court of Justice has previously threatened (in Case C-393/09 Bezpečnostní softwarová asociace –Svaz softwarové ochrany v Ministerstvo kultury ("BSA")) to make the open approach EU-wide, so that whatever an individual might create will receive protection, but the present judgment neatly sidesteps that issue (or perhaps more accurately does not have to consider it) - of which more later.

The concept of a "work" is used in EU copyright legislation (in particular in the Information Society directive, 2001/29), but not defined. This invites an activist court to make up its own definition: "Accordingly, in view of the need for a uniform application of EU law and the principle of equality, that concept must normally be given an autonomous and uniform interpretation throughout the European Union (see, to that effect, judgments of 16 July 2009, Infopaq International, C-5/08, EU:C:2009:465, paragraphs 27 and 28, and of 3 September 2014, Deckmyn and Vrijheidsfonds, C-201/13, EU:C:2014:2132, paragraphs14 and 15)."

In the two cases it cites there, the Court decided that copyright works must be their authors' own intellectual creation, thus at a stroke making copyright much narrower than it had been - in the UK, at least. Not a bad outcome, to my mind, although the reasoning might not convince you. Here, the Court could have interpreted the word "work" widely: the only guidance it had was from Berne, which extends copyright protection to authors' literary and artistic works, and the TRIPS agreement and the WIPO copyright treaty, which tell us that expression not ideas is what copyright protects (which is IMHO another way of saying that copyright protects works).

However, very sensibly, the Court was not about to bring tastes within the scope of copyright protection. It told us that there are two cumulative conditions for something to be considered a "work":

36      First, the subject matter concerned must be original in the sense that it is the author’s own intellectual creation (judgment of 4 October 2011, Football Association Premier League and Others, C-403/08 and C-429/08, EU:C:2011:631, paragraph 97 and the case-law cited).
37      Secondly, only something which is the expression of the author’s own intellectual creation may be classified as a ‘work’ within the meaning of Directive 2001/29 (see, to that effect, judgments of 16 July 2009, Infopaq International, C-5/08, EU:C:2009:465, paragraph 39, and of 4 October 2011, Football Association Premier League and Others, C-403/08 and C-429/08, EU:C:2011:631, paragraph 159). [Emphasis added.]

The idea/expression dichotomy, which dictates that only expression can be protected by copyright, means that a work must be "expressed in a manner which makes it identifiable with sufficient precision and objectivity" - language adopted for the present case by Advocate General Wathelet from the Court of Justice's landmark decision in Sieckmann. The Court refrained from mentioning that case by name, which (as it is of course a trade mark case - although it was smell trade mark, so there is a connection) is a blessing - it gives us one less thing to worry about. Conceptually it's a sound approach, I think, but the idea that it rests on a precedent from another area of law is a bit uncomfortable.

Taste, like olfactory trade marks, cannot be pinned down with sufficient precision and objectivity and therefore cannot be a copyright work. Thank goodness. And thus the Court avoids the issue of closed and open lists of copyright works. It didn't even have to mention BSA, which remains a threat to our approach to copyright but not one that will allow cheese flavours to enter the copyright system.

Court of Justice rejects Spain's objections to UPP

The IPKat reports that what he insists on calling the CJEU has rejected Spain's objections to the Unitary Patent Package: you can read the Court's press release here.

Svensson

The Court of Justice decision in Case 466/12, Svensson v Retriever Sverige, came just before the cut-off date for University of London exams and probably those of other institutions too, so (apart from its inherent importance) I need to alert my students to what it says. Here is a link to the press release  on the Curia website and here's the headline from it:

The owner of a website may, without the authorisation of the copyright holders, redirect internet users, via hyperlinks, to protected works available on a freely accessible basis on another site.

The question in the case was whether there was a communication to the public when the defendant provided a hyperlink on its website to the work of the copyright owners. The Court said yes, providing a hyperlink did amount to a communication and it was to a public, but it was not a new public in the sense of being a public that had not been in the copyright owners' contemplation when they authorised the original communication to the public. (The copyright owners were journalists whose work was communicated to the public initially via a newspaper's site.)

So far so good, with one big reservation which I'll mention in a moment. The Court then considers whether it makes a difference if clicking on the link brings up the copyright work in such a manner that it appears to be on the defendant's website rather than the newspaper site where it was originally published (if I may use the word loosely). No, it says, no difference: which must also be right, as the copyright work remains the same and the context in which it appears is irrelevant to that. My only reservation about that is that the original communication was to readers of the Göteborgs-Posten, and we are now asked to equate that with communication to users of Retriever Sverige. Surely that calls into question whether the public is the same in each case? And it looks to me as if people will go to the Retriever website (assuming I have found the right one) for rather different purposes - individuals looking for news would go to the GP website, displaying a preference for that particular avowedly liberal newspaper, whereas Retriever seems to be collecting news stories for its clients (who I imagine are probably corporate) from across a wide spectrum of sources. In other words it might introduce readers of, say, Dagens Industri to stories in GP which they otherwise wouldn't read. Just like in England, a reader of the Financial Times might find his or her way to a story in The Guardian which they would not normally read, via such a website.

Then, the Court asks whether it would be different if the original website proprietor restricts access. I can't tell whether GP does - my knowledge of Swedish is quickly exhausted (utan bilen stannar Sverige, as the sticker given to me by a Swedish friend many years ago said is about the extent of it. I find to my surprise that the slogan is still in use, at www.utanbilenstannarsverige.se, and I did spell it correctly! But say the newspaper were a notorious paywall-user, like The Times, and Retriever took you round the end of the paywall, or through a hole. Or suppose, like the FT, the paper offers visitors to the website a monthly ration of free articles, after which they have to pay for a subscription. Then, the Court says, the new readers would not be among those to whom the story was originally communicated. (My FT example is not a good one, though, because it would all depend on whether members of the group had used up their monthly ration - that would make it very complicated.)

Finally, the Court addresses the question whether Member States can make the concept of 'communication to the public' wider than it is in the Information Society directive. To which the answer is 'of course they can't', in rather more diplomatic language.

Let's go back to the Court's reasoning that there are different 'publics' to be considered. The plural form of the word does appear in the Oxford English Dictionary, but either as an abbreviated form of 'public houses' (which is not what the Court had in mind) or as sociological gobbledegook. Rather than concern ourselves with that, let's look for usages of the word 'public' in the intellectual property universe.

First, it appears in the copyright legislation. There is, for example, a definition in Part 1 of the CDPA of 'public library', and here the adjective is the opposite of 'private'. That raises interesting questions about libraries which you have to pay for, such as the London Library: could it be said to be open to the public? (Like the law courts, which are said to be open to everyone in the same way as the Ritz Hotel, in an aphorism unreliably attributed to Darling J, or LJ according to some references). But section 18 is more relevant to the present matter: the issue to the public of copies of a work is an act restricted by copyright. The fact that this is closely related to section 18 (communication to the public) suggests that this is the right place to look. And there a work is either communicated to the public, or it isn't: it's a straightforward binary thing, which doesn't require any consideration of which public. It assumes that the public is a single unitary entity. This view seems to be supported by the Court's earlier decision in Case C-5/11, Donner, in which advertising was directed to local members of the public and a delivery and payment method was made available to them amounted to issuing copies to them. In other words, the important thing seems to be that the work be issued to members of the public, which makes it unnecessary to consider whether there be in fact a plurality of publics.

Consider also the Patents Act 1977, section 2. The state of the art consists of everything that has ever been made available to the public, anywhere, anyhow (I paraphrase). 'Made available' is passive where 'issued' is active, but the notion of 'the public' is surely the same. There is no need to ask 'which public?'. Either the public has it, or it remains private. I think the Court's analysis, based as it is on there being a plurality of publics, is misguided: there is only one public, and if copies have been made available or a work has been communicated to members of it that is all that matters. There is no new public to whom the work may be made available. It might have been communicated to a limited group, not to the public (behind a paywall, perhaps, though the mere fact that it has to be paid for does not necessarily change whether it is available to the public), in which case providing hyperlinks would amount to communicating to the public, but that is very different. The directive talks about communicating to the public: to read it as if the indefinite article were used is quite wrong. And it's likely to mystify people whose native language has neither definite nor indefinite articles! К сожалению, студенты!

Private copying levy may be legal - Court of Justice

In Case 521/11, Amazon.com International Sales and Others, the Court of Justice holds that the indiscriminate collection of a private copying levy on the first sale of recording media may, under certain conditions, be compatible with EU law. Press release here.

Levy for reproduction of protected works can be imposed on the sale of a printer or a computer

An important judgment from the Court of Justice today, described in a press release which I quote here as I don't have time right now to write it up. The Judgment is in Joined Cases C-457/11 to C-460/11 Verwertungsgesellschaft Wort (VG Wort) v Kyocera, Epson Deutschland GmbH, Xerox GmbH, Canon Deutschland GmbH and Fujitsu Technology Solutions GmbH, Hewlett-Packard GmbH v VG Wort GmbH.

According to Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10). , Member States should grant, in principle, to authors and the holders of related rights, the exclusive right to authorise or prohibit reproduction of their protected works or other subject matter. However, Member States may provide for exceptions or limitations to that exclusive right. Accordingly, they may permit, in particular (i) the making of private copies and (ii) reproductions on paper or any similar medium, using any kind of photographic technique or by some other process having similar effects. A Member State which avails itself of this option must, however, provide that the copyright holders receive ‘fair compensation’. That compensation is to compensate authors for the reproduction, without their authorisation, of their protected works.
The Bundesgerichtshof (Federal Court of Justice, Germany) is called on to give judgment in proceedings concerning the fair compensation owed for the reproduction of protected works made with the use of a chain of devices, including, in particular, a printer and a personal computer, principally where the two are linked together. In those proceedings, VG Wort, the authorised copyright collecting society representing authors and publishers of literary works in Germany, requests that Canon, Epson, Fujitsu, Hewlett-Packard, Kyocera and Xerox be ordered to provide information to it on the nature and quantity of printers that they have sold since 2001. In addition, VG Wort claims that Kyocera, Epson and Xerox should be ordered to pay it remuneration by way of a levy on personal computers, printers and/or plotters marketed in Germany between 2001 and 2007. In those circumstances, the Bundesgerichtshof has requested the Court of Justice to provide it with an interpretation of the relevant provisions of EU law.
In today’s judgment, the Court of Justice, in response, states that the concept of ‘reproductions on paper or any similar medium, effected by the use of any kind of photographic technique or by some other process having similar effects’ includes reproductions made using a printer or a personal computer where the two are linked together. In this case, it is open to the Member States to put in place a system according to which the fair compensation is paid by the persons in possession of a device contributing, in a non-autonomous manner, to that single reproduction process of the protected work or other subject-matter on the given medium in so far as those persons have the possibility to pass on the cost of the levy to their customers, provided that the overall amount of fair compensation owed as recompense for the harm suffered by the author at the end of that single process must not be substantially different from the fixed amount owed for the reproduction obtained through the use of one single device. 
Moreover, the Court finds that an act by which a rightholder may have authorised reproduction of his protected work or other subject-matter has no bearing on the fair compensation owed. 
The Court states that, in addition, the non-application of the technological measures designed to prevent or restrict unauthorised reproduction cannot have the effect that no fair compensation is due for private copying. The application, by the rightholders, of such measures is voluntary. Nevertheless, it is open to the Member State concerned to make the actual level of compensation owed to rightholders dependent on whether or not such technological measures are applied, so that those rightholders are encouraged to make use of them and thereby voluntarily contribute to the proper application of the private copying exception. 
Lastly, the Court holds that the relevant legislation ‒ a directive which came into force on 22 June 2001 and which the Member States had to transpose into national law by 22 December 2002 at the latest ‒ does not apply to the acts of using protected works or other subject-matter which took place before that date.

Case C-604/10, Football Dataco Ltd v Yahoo! UK Ltd, Stan James (Abingdon) Ltd and others

Back in the mists of time - as long ago as an expedition to Luxembourg takes - I wrote about the early rounds of this litigation (The Trouble with Databases). The Court of Appeal decided, on the basis of the BHB case, that the fixture lists in suit were not protected by database right (or sui generis protection, as it would be known to the ancient Romans were they still with us), but asked the Sages of Kirchberg whether they might be protected by copyright. Well, I always thought that the directive had all but done away with copyright in databases, and replaced it with the Latin right, but one must always expect the unexpected. (Be aware that the sui generis right is also the subject of a reference to the Court of Justice in another Football Dataco case, C-173/11, also from the Court of Appeal.)

Of course, we cannot expect a straight answer from Luxembourg - not because the judges are unreliable in any way, but because they are there to interpret the law for us and it is definitely not for them to apply it to the facts. They say that a database will be protected by copyright if the selection or arrangement of the data which it contains amounts to an original expression of the creative freedom of the author, which of course is a matter for the national courts. The intellectual effort and skill used in creating the database are not relevant, and neither is whether the selection and arrangement includes 'the addition of important significance to the data' [sic] - what that means is anyone's guess. Finally, 'the significant labour and skill required for setting up that database cannot as such justify such a protection if they do not express any originality in the selection or arrangement of the data which that database contains.'

I'd take that as a 'no'.

IP Translator

The Court of Justice handed down its decision in the IP Translator reference yesterday. The case, an expedition to Luxembourg initiated by the Appointed Person who heard the applicant's appeal against refusal by the Registrar of Trade Marks, was contrived to explore the important issue of using class headings in trade mark applications, and whether using the class headings means you have specified all the goods and services in the class - what might be termed a purposive approach - or whether it means you have just bagged those goods or services in the list - the literal approach. The application, filed by CIPA, specified the services set out in the class heading for class 41 - which don't include translation services, though it seems to be common ground that translation services are proper to that class. So, if the class heading automatically includes all the goods in the class, the application is dead in the water because of descriptiveness. Such is the process of working out what the law means. What a quaint idea that it might have been written clearly in the first place.

The problem is exacerbated by two factors, maybe more. First, online application forms (the OHIM one in particular) encourage the use of class headings. OHIM takes the view that class headings include all the goods or services in the Nice Agreement's alphabetical list for that class. Nine national offices do likewise. 17 national offices, by contrast, use the literal approach. (OHIM has a page on its website dedicated to the convergence of class headings.) Second, trade mark owners want the widest possible protection, not necessarily because they want to sue for infringement (though they might bully their way to the desired result) but more to enable them to mount spurious oppositions based on indefensibly wide specifications. Neither factor is desirable, IMHO: both lead to what the Max Planck Institute's largely weak and self-serving review characterised as "cluttering".

The Court begins by telling us what we already know, but of course it always does that:

Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark. [Emphasis added.]

It goes on to say that the use of class headings is not precluded. Hard to imagine that it might have been, and of course that's not the question. The important thing is what to read into the class headings. The Court adds, of course, "provided that such identification is sufficiently clear and precise".

An applicant for a national trade mark who uses all the general indications of a particular class heading ... to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.

So what do you do if you want to cover all the goods and services in the class? You can't (as I understand it)  use the old formula "all goods in class X", because that is neither clear nor precise. But what is? Or does the judgment mean that we shouldn't be so lazy, that we must set out in so many words what we want protection for? That would be a good thing, even if it led to much longer specifications. And remember (if your memory of these things goes back to pre-1994) that we have the great benefit of a system that regards as infringement something that involves mere similarity between the parties' goods or services (provided, of course, that there is a likelihood of confusion). This contrasts with the literal interpretation of the scope of protection under the 1938 Act. You don't need to sweep up all those goods and services: it's only if you want to make your trade mark as much as possible like copyright that you'll do that, and the system should resist any attempt to do that.

Finally, another gem I have uncovered in my reading on this topic. OHIM's Project Brief on the convergence of class headings says, discussing whether it would be better to wait for the judgment we got yesterday:

... a consensus between all of the IP offices is preferable to reliance on court rulings, which in any case are not expected before middle 2012. It might also not provide the legal certainty and clarity that is required.

Well, it seems that they were right about the legal certainty and clarity that flows from the decision of the court. But in the nature of a reference under Article 267 (Article 177 as was - what sort of inflation rate is that?) that's what you get. But how can a consensus between national offices be better than court rulings? More practical, perhaps, but the supreme authority on the interpretation of EU law is the Court of Justice, and it's rather disconcerting to find another institution disregarding this.

Class headings do not cover all

Advocate General Bot has given his opinion in the IP Translator case, Case 307/10, Chartered Institute of Patent Attorneys indicating that he doesn't think that an application that repeats the class heading from the Nice Classification does cover all the goods or services in the class. If that sounds arcane, consider the application in suit - which was designed, and filed, with a view to getting an authoritative statement of the law in this area: CIPA filed for the UK trade mark IP TRANSLATOR in Class 41, the class for translation services, for "education; providing of training; entertainment; sporting and cultural activities" - the class heading for that Class, to which translation services are proper, but which does not include them.

The AG says that the goods or services have to be stated with sufficient precision and clarity as to enable the competent authorities and "economic operators" (are they related to stakeholders, perhaps?) accurately to determine the scope of the trade mark. Exactly. The appropriate level of generality will vary from case to case - that sounds like a bit of a cop-out, but at the level at which the Court of Justice operates statements like that are surely unavoidable. The class headings might, says the AG, suffice for this purpose, so they could be used - but subject to that comment about precision and clarity (and it seems to be lacking in class 41).

Then he comes to the nub of the problem, Communication 4/03 of the President of OHIM, which established the "class headings cover all" principle. This does not satisfy the requirement for precision and clarity, whether for Community trade marks or national ones - and this leads to cluttering, because there are too many over-broad registrations. Moreover, there is the interesting paradox (all tied up with the difficult question of how this mess can be fixed) that specifications will have to be amended by being limited (maybe the addition of the time-honoured formula, "all being translation services", if that's still permissible, to the IP TRANSLATOR specification) but the limitation will have the effect of adding goods or services that weren't included in the first place. Only the European Union could create chaos like this.

The fact that Nice is periodically amended, and new goods and services slotted into the existing classes, which often retain unchanged class headings, is another demonstration of the absurdity of allowing registrations on this basis. Precision and clarity are absolutely essential, not the lazy, thoughtless approach encouraged by OHIM's ruling, and moreover we need something that links registrations more closely to the actual use made of the trade mark, otherwise the registers - national and regional - will become more cluttered, the range of available trade marks will become more depleted, and businesses will find markets foreclosed to them just because they cannot use the trade marks they want (or need) to be able to use. Let's hope the Court of Justice recognises these problems and imposes some commonsense on the trade mark system.

Second-hand software

There's a lot of it around, but is it legal? Can the licence be transferred to a buyer? That was the issue in  Vernor v. Autodesk, in which Mr Vernor offered unopened, authentic, copies of AutoCAD for sale on eBay. When challenged he applied to the District Court for the Western District of Washington for declaratory relief (that link takes you to a piece published by Foley Hoag) and he got summary judgment. On appeal from the District Court, the Court of Appeals for the Ninth Circuit held that Autodesk's customers were licensees and not owners so the sale of the AutoCAD software to Vernor, which was prohibited by the AutoCAD license, was invalid. Mr Vernor was neither a licensee nor an owner and the first sale doctrine was of no assistance to him.

On 3 October the US Supreme Court declined a request to grant certiorari. This means that the Ninth Circuit's three-prong test for determining whether a software user is a licensee or an owner is the law, at least in the Ninth Circuit. This raises the intriguing and very US question whether other circuits will follow the Ninth, and if differences emerge the Supreme Court might well have to take the matter on. Meanwhile, the original claim is back with the District Court, and at the same time an expedition to Luxembourg is under way (from the Bundesgerichthof) in Case C-128/11 Oracle International Corporation v usedSoft GmbH, which might of course produce a completely different answer ... Given that the terms of the licence are crucial in these cases, that might be quite possible and perfectly correct. In any event, it's an interesting area.

TV Catch Up case for Luxembourg

It probably had to happen. ITV Broadcasting Ltd & Ors v TV Catch Up Ltd [2010] EWHC 3063 (Ch) (25 November 2010) (on an application to strike out, which was refused) has now been referred to the Court of Justice for a ruling on the meaning of "communication to the public" and whether streaming is a variety of that restricted act. That excellent service Out-Law has the story - read it there, while I write it up for the next podcast. But I will just mention that Out-Law tells us that the judge (Floyd J), who thinks that streaming is a form of communication to the public, is asking the Court of Justice whether he is right. Nicely put, but I doubt it's exactly how the expedition to Luxembourg is actually characterised.