"Hot topics" conference

IP is always a hot topic - so it must be the white hot stuff that's on the programme of Lexis Nexis's conference on 22 October, in London (venue "to be advised": shall I check if the Jarvis Suite is available? Perhaps a bit late). Looking at the Agenda for the day, there's certainly some very hot stuff there, even if "Recent developments in ..." as the title for a session (or three) is a bit of a cop-out. But who knows what might be hot in a month's time?

Regular readers of this blog will recall that I am not impressed by the hyper-inflation that has affected the intellectual property world of late: indeed, it will not have escaped the attention of diligent readers that I am not enamoured of the expression "intellectual property", which tends to obscure the variety of different legal rights that make up this rich and fascinating area of law. I have the good fortune to have entered the profession at a time when one could still be an intellectual property generalist, and for a generalist this review of the hot topics will be invaluable. There are plenty of us generalists still around, and if the IP departments of larger firms have salami-sliced the subject into narrow specialisations there are still plenty of in-house lawyers and small and solo practitioners who will be attracted by an authoritative update on what's hot in the IP world.

Authoritative they certainly are ... For example, Martin Howe QC will be answering the question, "are image rights now protectable in English law?" (at least, that's the title of his session - whether he ventures an answer or not remains to be seen). As leading counsel for Rhianna, he is well placed to judge whether the law of passing off is doing a good job in this area or whether, following the example of Guernsey, we should clutter up the landscape with a new mini-IP right. Later in the day Guy Burkill QC - 'unbelievably clever, extremely funny and technically superb' (per his chambers' website, a description which must make him the favourite of every IP conference organiser wondering what to do with the graveyard slot after lunch) - will talk about the phone wars, in which he has served with some distinction, and that frequently-encountered oxymoron, software patents (actually the programme says "patentability of computer programs", but I claim poetic licence). "IP litigation in the wake of the Jackson reforms" will also be a very interesting topic (I single it out as not being "recent developments in ..." session), presented by Duncan Ribbons, a partner in Redd Solicitors LLP, the only IP boutique I know of to have appeared in the law reports as a claimant

Nowadays, prospective delegates often look first to see how many CPD hours they can score: and at this time of year, this is the first consideration for most solicitors. The answer is six - not bad at all. The price is not at all unreasonable, either, but to make it irresistible the organisers are generously offering members of the IPso Jure LinkedIn group a 20 per cent discount - to book email alicia.sprott@lexisnexis.co.uk and quote code IPL20. Will I see you there? Sadly no, but only because I have to be elsewhere that week - teaching some less hot IP topics to my students in Moscow.

Fenty and other v Arcadia Group Brands Ltd and otehrs [2013] EWHC 2310 (Ch)

Once upon a time, I had a Lindisfarne tee-shirt of which I was rather proud. I imagine this was about the time of Fog on the Tyne - nearly as good as, though much more successful than, Nicely out of Tune. It never occurred to me that there might be some commercial connection between the band and the tee-shirt - after all, the band was in the music business, not the rag trade. Nor did the resemblance of the design of the tee-shirt to a Newcastle Brown Ale label concern me. After all, there was a significant overlap between rock music and the drinks industry - related fields of activity, to my teenaged self - and S&N (as it then was) sponsored Lindisfarne, at least to the extent of a crate of beer from time to time, so it seemed perfectly natural to mark the connection in this way.Merchandising, as we have come to know and love it, was more apparent in my other great area of interest, motor racing. Already, Colin Chapman had brought in commercial sponsorship, and at the British Grand Prix one could buy all manner of regalia from Gold Leaf Team Lotus and Yardley BRM - though most of the other teams back in the early seventies still limited their sponsorship to companies which actually supplied stuff they used in the cars, like petrol and spark plugs. So the idea of a connection between the subject and the tee-shirt must have been planted in my mind by then.
Times change. Rock bands do sponsorship deals for more than just a few bottles of beer. In motor racing, the sponsor's name usurps that of the maker of the cars. And as the world knows, in Fenty v Arcadia Group Brands Ltd [2013] EWHC 2310 (Ch) (31 July 2013),  or Rihanna v Topshop as it is better known, the popular singer succeeded in her passing off claim against the retailer which was offering garments bearing her image. In fact, it looks to me like a particularly unflattering image, but that doesn't seem to have been raised in the trial, although there might well have been a remedy had that been proved. On the other hand, it might simply be fashionable to look like that, though I cannot understand why that might be the case. And a fortiori I cannot understand why anyone might wish to hang such an image on their chest. But some people might have said the same about my Lindisfarne tee-shirt (my parents probably did, which may account for why I have no idea what became of it) so I will say no more on that topic.

As I tell my students, every passing off case (and therefore every passing off exam answer or essay) starts its legal analysis with either Advocaat or Jif Lemon, usually the latter because Lord Oliver's explanation is so much more comprehensible than Lord Diplock's. In Fenty the judge, Birss J, chose Jif. Then, very quickly, for obvious reasons (and if they aren't obvious to you read the case) it's on to Irvine v Talksport [2002] FSR 60 (at first instance, before Laddie J: the appeal is at [2003] EWCA Civ 423 (01 April 2003)). There it was established that a claim for passing off could be made out on the basis of a false endorsement: Eddie Irvine had valuable goodwill which he was entitled to protect when Talksport used his image without permission. The appeal concerned only the quantum of damages, or (looking at it the other way) how much he could have charged had they asked for his endorsement. The judge put this at about the cost of an hour of a good intellectual property QC's time: the Court of Appeal raised him by a factor of twelve-and-a-half (to £25,000), which is a pretty significant matter. The higher figure was at the bottom of the scale of what Eddie said he would expect to charge for an endorsement, famously averring (through his counsel) that he wouldn't get out of bed for less.

It probably takes a great deal more to persuade Rihanna to shake a leg. But the whole endorsement thing is still present: as the judge observed, her fans are influenced by her views on matters of fashion, and follow her lead, so that her endorsement of a fashion item will be very influential, and therefore valuable - which is why she has struck a number of deals with clothing manufacturers and others to give such endorsements, usually in the form of her name or a stylised letter R being attached to the goods.

Topshop argued that there was no misrepresentation. In the judge's words, "Customers buy it because they like the product and the image for their own qualities". I find that hard to believe: it is quite contrary to my experience that anyone would wear a garment depicting a celebrity who they did not like. Tee-shirts and the like (and the garment in suit, described as "a 'boyfriend style tank' (i.e. an oversized sleeveless t-shirt)"is probably best categorised as "like" a tee-shirt) usually convey some sort of message, like this one or the shirt currently in that shop's window, which reproduces a letter to the Governor of the Bank of England about the proprietor's difficulties in securing a bank loan.
In the present case, it was important that the image used was from a particular photo-shoot which meant that it resembled one of Rihanna's album covers. It was also relevant that Topshop courted celebrities, and had put on promotional events with Rihanna in the past - so the public would be receptive to the idea that there might be an endorsement here. The garment and its swing tag were completely lacking in any reference to Rihanna (although the garment had been sold online under the rubric "RIHANNA TANK", a point which the judge regarded as making no difference). Customers would, the judge decided, buy the garment having been deceived into thinking that it was duly authorised by their icon. He went on to conclude:

75. The mere sale by a trader of a t-shirt bearing an image of a famous person is not, without more, an act of passing off.  However the sale of this image of this person on this garment by this shop in these circumstances is a different matter.  I find that Topshop’s sale of this Rihanna t-shirt without her approval was an act of passing off.  I find for the claimants. 

Mishcon de Reya, Topshop's solicitors, say  that their client will be seeking leave to appeal. Leave, one might think, to throw more good money after bad. It seems to me (a safe distance from the case, of course, and therefore unaware of all sorts of things that might make me think otherwise) that in the light of Irvine Topshop's defence was doomed to failure. Birss J's judgment is not a major development of the law of passing off: it seems to me to be a smaller step from Irvine than Irvine was from the cases that had gone before. Of course the judgment is fact-specific, and the sale by a trader of a garment bearing the image of a famous person will not always be passing off. But it seems to me that you could change the facts quite a lot and still be in the passing-off zone.
This strikes me as a clear-cut case of passing off, and one which happily makes arguments for the introduction of some ludicrous new image or personality right, like the Guernsey Lawyers' Welfare Ordinance, less compelling than otherwise they might have been.

Individual has no right to domain name

In Maiken Hvidbro-Mitchell v Wendy Croxford (Full Decision _No Action) [2013] DRS 12276 (01 March 2013) the independent expert, Andrew Clinton, appointed under Nominet's Dispute Resolution Service, decided that as between two non-celebrity individuals (in suit, a third party's ex-wife and new wife) the person whose name corresponded to the domain name in issue had no special claim to it. There were no registered (or unregistered, come to that) trade marks involved, and no image rights or anything exotic like that (it pre-dated Guernsey's ludicrous foray into pandering to celebrity vanity), and the domain name system treats as equal the ex-wife who wishes to publish material detrimental to the new one, and the new wife anxious not to have her name attached to the website where that material is published.

Were the person after whom the domain name was named a celebrity (a status which these days exists independent of fame) it would be a different matter, of course, but within the limits of how domain names work the outcome is clearly the right one. A transfer of the domain name might be a matter for the exclusive attention of the matrimonial courts.

A tale of two exotic intellectual property rights

I received an email in the middle of the JIPLP/GRUR seminar on secondary protection of innovation in Germany, on Tuesday. I replied to the sender, who had tried moments earlier to phone, that I was in a seminar on utility models and his message had woken me up. It struck me as amusing, but it was far from the truth. Gebrauchsmuster, or utility models, or perhaps petty patents, have interested me ever since I read the Nicholson Report - although it has always been a source of relief to me that they have not yet come to the UK.

A report of that seminar will follow. The day after (that is yesterday) I also went to a seminar, this time on the much more recent and rather more exotic new intellectual property right that Guernsey has introduced, giving protection to image rights. I quickly felt like a grumpy old intellectual property lawyer (although my first impression was that I had strayed into a parallel universe where I did not belong, as the audience seemed to comprise financial types and fiduciaries, which I guess make up a large proportion of the population of Guernsey. I felt more at home when I found some lawyers, many of whom, naturally, I knew). The event was put on by the Guernsey International Financial Centre, with much of the talking being done by Elaine Gay of Carey Olsen - who facilitated the panel discussion most impressively.

If you want to learn the details of the new law, don't rely on me for an explanation (but you'd probably have attended the seminar anyway). And, cheekily (because I assume it was written by a competitor of the people whose seminar I attended) let me point you to a post on my friend Jane Lambert's IP blog. It is a subject with which we will all need a passing acquaintance, though the creation of a new, specialised property right makes me despair.

Why, do I hear you ask? Well, for starters, I find it highly regrettable that what people are has come to eclipse what they do. Intellectual property laws protect the creations of people's minds (OK, I admit, that's not a very sound way to characterise trade marks, but it can be made to work). Patents protect useful things (please don't waste time trying to find those words in the legislation: I paraphrase), registered designs and unregistered design rights protect things that look good (again, I paraphrase, with even more licence) and copyright protects things that inform or entertain, or perhaps improve. They have human creators, whose contribution to the well-being of humankind, small though it may be in the great scheme of things, is recognised by giving them property in it.

Protecting image rights places the cultivation of an image, a nebulous entity if it's an entity at all - on the same footing as the invention of a new pharmaceutical or the design of a new mechanical device. IP laws are already widely criticised for protecting too much - stuff which by most objective standards does not merit it - to the detriment of consumers with no countervailing encouragement to create or produce more for the benefit of society. Where is the evidence-based justification for property rights in one's image?

It seems to me that there are two possible justifications for such a property right. First, and most importantly, substantial sums of money are already changing hands for the use of someone's image. The Eddie Irvine case (Edmund Irvine and Tidswell Ltd. v Talksport Ltd. [2002] EWHC 367 (Ch) (13th March, 2002) and on appeal [2003] EWCA Civ 423 (1 April 2003)) demonstrates that, while also demonstrating a lack of appreciation on the part of the judge of the sums involved. Irvine was of course a passing-off case, and the law of passing-off is an expensive place in which to protect one's rights (cheaper now the Patents County Court has been remodelled), and one could point to many other cases if one were less lazy than I feel at the moment - all that cutting and pasting and inserting links. Anyway, Fast Eddie is my preferred example for many reasons, especially given that Dave Bedford did not pursue his claim against The Number far enough to give us the benefit of a judgment.

I don't like the idea of image rights as a form of property (oh, you noticed?) but neither do I like the way the image of the athlete who more than any other inspired me when I took up running being badly treated. However, he didn't challenge The Number's use of his likeness for some six months, having been advised that he had no grounds for doing so. Although OFCOM found there had been a breach of its code, that did not bring compensation, only publication of the decision, and £60,000 lighter he did not care to risk going to court where he might well have been told that his reputation had little value some 30 years after his heyday. Suing for passing off in the wake of Irvine, he might have been awarded a sum to reflect the fee he could have charged for the endorsement - which would not have been great. Had he been able to register his image, the outcome would have been at least easier, though presumably the quantum of damages would not have been very different from that available in a passing-off action.

The second justification for the new right is much more mercenary. It will be a nice earner for the Intellectual Property Office in Guernsey, and for the local legal profession - or, more precisely, the profession of image rights agents. It therefore serves as a Guernsey Lawyers' Welfare Ordinance and as a tax on vanity. Neither are noble goals, but the legislation achieves them extremely well. If an individual be prepared to pay £1,000 for registration in Guernsey, then, how much might a UK image rights register be able to charge?

The law itself, running to 117 sections, adopts much from copyright and trade mark law - fair dealing provisions and moral rights, a likelihood of confusion test and remedy against groundless threats. I picked up from one of the talks that the creator of a personality would be the first owner of rights in that personality, which seemed to raise interesting theological questions, but it transpires that this is only in the case of fictional characters. Nevertheless, I remain extremely uncomfortable with this legislative recognition of, and support for, cults of personality and celebrity - an intellectual property right with no intellectual content. No doubt it will be coming here soon.

Forum shopping: you can't have your cake and eat it

An interesting posting on the always-worth-reading IP Whiteboard blog from King & Wood Mallesons here,  Marilyn Monroe's estate finding that the protection given to publicity rights under Californian law would be handy, but being stuck with the long-ago decision to rely on her residence in New York to establish domicile and avoid the estate taxes that would have been due had she been domiciled in California. Another nice illustration of a point about intellectual property law: the fundamental interconnectedness of all things means that there are always interesting interfaces and overlaps with other areas of law.