Repair clause referred to Court of Justice

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

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

Intellectual property protection for Russian armaments

The Moscow Times reports that:

The [Russian] Defense Ministry is working on a system to keep track of Russian military innovations at home and abroad in an attempt to wrestle [sic] control of copyrights on Soviet-era equipment away from a global industry of imitators, state news agency RIA Novosti reported Wednesday.

Compared with other events in Russia, that's not really very worrying but it certainly gave me pause for thought. Do they really mean 'copyrights' (or even 'copyright')? Copyright is of course a feeble way to protect industrial designs these days, in the UK and in most other countries too. But patents would be even weaker, because the end of the Soviet era is more than a patent's lifetime ago ... To my surprise, though, I discovered that MT Kalashnikov (who died only in 2013, at the age of 94) was applying for patents with priority dates as recent as 1997 (this one for example - but why did a Chinese patent come up first on Espacenet?) and his son Viktor seems to be keeping up the - er - good work. So perhaps it's the words 'Soviet-era' in that quote that are questionable.
Lieutenant-General Kalashnikov has seemingly been responsible for arming most of the world. His inventions must constitute a large part of the production of the world's second-biggest arms exporter, albeit presumably at the lower end of the price scale: you have to sell a lot of assault rifles to make as much money as you would from a single jet fighter sold to, for example, India. It's probably not the jet fighters the Russians are worried about, though I recall that there were a lot of Chinese reproductions of Soviet aircraft around some time ago (just like the reproductions of various vehicle designs which the Chinese motor industry specialises in these days). Indeed, the Moscow Times story makes clear that the problem the Russians face is that sanctions mean they can't sell AK-47s like they used to, and that production in former Warsaw Pact countries, and China, where fraternal munitions factories were established during the Cold War (the First Cold War, as we might soon be calling it) is filling the gap. A large part of the market is probably in the USA, which is a nice paradox. (The manufacturer's website tells me, interestingly, that its Saiga-12 Mod. 340 sporting shotgun is widely used by law enforcers in the US, which may be a more significant piece of information: and Saiga hunting rifles are apparently very popular in the US too). Maybe Lenin's theory of imperialism could explain Russia's territorial expansionism, creating new markets for weapons among the little green men ...
Let's get back, as quickly as possible, to intellectual property. There might be some relevant patents: there might be some relevant copyright, in some countries: there might be some of the more exotic intellectual property rights like gebrauchsmuster. Design right in the UK would be no help, because it would have expired and in any case the designer was not an EU citizen nor was he habitually resident in the EU, and articles to his designs were not first marketed here. Registered designs are apt to protect the appearance but not the function of an article, so while they could be of some help (the appearance of the AK-47 is certainly important) it will be small - and even if relevant registrations were ever obtained they are likely to have expired long ago. Perhaps, unlikely as it seems, copyright is the manufacturer's strongest suit.
Unless ... what about trade marks? Both the surname of the inventor and the familiar designation of the weapon are highly distinctive. They meet all the requirements here for registration as a trade mark, leaving aside the question of public policy and morality I suppose, although the fact that 'AK' stand for Автома́т Кала́шникова (Kalashnikov automatic) might create a descriptiveness problem, against which 66 years' use might be an effective counterargument. But there's nothing I can find on the UK or EU registers that might assist, which is a rather surprising omission. Of course it is possible that the Polish, Bulgarian, Romanian, Serbian and Chinese manufacturers referred to in the Moscow News article are not using either trade mark - but I bet the retailers in the US are. Which makes me wonder whether Russian-owned US trademarks can easily be enforced. I think that in the English courts an order for security for costs could put a spanner in the works - is there something similar in the US?
All of this highlights the important point, that it is the activities of foreign undertakings that are worrying the Russians. No point in bringing an infringement case in Syria or Iraq against whoever is supplying ISIL: this is a problem that can only be dealt with at the manufacturer level, and that won't affect the huge second-hand trade. Perhaps the Russians could persuade some of the offending manufacturers to stop, although unless they have a lot more legal protection in Poland, Bulgaria and Romania than they seem to have here they will be hard-pressed. Maybe the Serbs will be more open to the Russians' blandishments. The chances of stopping production in China are, one assumes, at best negligible.
If there were any point in trying to use legal steps to stop this trade in fake firearms in the UK, an action for passing off would seem to be the logical way to go, in the absence of anything better: and it could stand an excellent chance of success. But I don't think the UK is really their main worry, notwithstanding that the manufacturer's website mentions that it exports products to us. Precisely what, I don't know, but Izhmash, the distinctly Soviet-era name of the manufacturer (Izhevsk Machinebuilding Plant, or Ижевский Mашиностроительный Завод) before it merged with Izhmech (don't ask) to become a wonderful double entendre, the Kalashnikov Concern, made motorcycles which were sold here under the Cossack and Neval brands, along with motor vehicles and other mechanical items. The company's motorcycle (dating from 1928), the IZh 1, "owed a little" to contemporary motorcycles made by the German company DKW, according to Andy Thompson's Cars of the Soviet Union (Haynes Publishing, Somerset, UK, 2008), p.180, which rather brings us back to the start of this story: what goes around comes around, or Как ау́кнется — так и откли́кнется. And intellectual property law is not, I submit, the place to look for a solution, even if they do have any useful rights.

Chnges to copyright law: industrial designs, orphan works, collecting societies

Significant changes to the copyright law will happen now that the Enterprise and Regulatory Reform Act 2013 has become law.  It received Royal Assent on 25 April 2013.  Probably the most significant thing it does is repeal Section 52 of the Copyright, Designs and Patents Act 1988, so industrially-exploited artistic works will benefit from copyright protection for the full term of life plus 70 years instead of having the term cut short to 25 years, to match the protection available under the Registered Designs Act.  The change seems to have been considered necessary to comply with the Designs Directive.

The 2013 Act will also lead to the introduction of a system for licensing orphan works, as well as a clearance procedure for using individual orphan works.  As far as the Act is concerned, it only empowers the Minister to make regulations to do these things, so we must wait to see the form of regulations, but in the meantime right holders and photographers in particular are anxious about what this change in the law will mean for them.  One important matter that worries everyone who will be affected by this change is what exactly will be required in the way of a “diligent search” before advantage can be taken of the new rules.

The Act also gives the Secretary of State power to introduce a code of practice for collecting societies.  But one thing it does not do is enact provisions to make it much easier to amend the exceptions to copyright protection which the Hargreaves Review recommended.  The provisions originally included in the Bill were watered down by Parliament, and a good thing too. 

Section 52 on the way out?

I refer, of course, to that section in the Copyright, Designs and Patents Act 1988. Under the Enterprise and Regulatory Reform Bill, introduced the other day (23 May to be precise), section 52, beloved of students of copyright law and those who set exams on the subject (it seems to crop up every year in the external London LLB papers, but, students, please don't rely on that as a guaranteed bit of question-spotting) will be repealed.

Whast does section 52 do? According to the Information Notice on the website of the soi-disant Intellectual Property Office:

This exception currently limits the term of protection for artistic works which have been produced through an industrial process.

Which not only reveals a lack of familiarity with the section itself, it reveals a lack of comprehension of the way copyright works. How, pray tell, can an artistic work be produced "through" an industrial process? And what  makes you think that "through", rather than "by", is the appropriate preposition to use, anyway? And why is taxpayer money being wasted on such ineptitude? I would prefer to see my taxes spent on educating people so they attain a reasonable standard of literacy.

Section 52 actually says (in subsection (1)):

This section applies where an artistic work has been exploited, by or with the licence of the copyright owner, by—
(a) making by an industrial process articles falling to be treated for the purposes of this Part as copies of the work, and
(b) marketing such articles, in the United Kingdom or elsewhere.

It is concerned with exploitation, not with production. Had the Information Notice said "production of copies" I would not have been moved to play the grumpy old man - but for the sake of a couple of words, and a few moments thought before putting pen to paper (or fingertip to key) accuracy has been cast aside. Anyway ...

What will it mean in practice? Section 52 does not feature frequently in litigation. In fact, all I got from a search of the cases on BAILII is Blayney (t/a Aardvark Jewelry) v Clogau St. David's Gold Mines Ltd & Ors [2002] EWCA Civ 1007 (16 July 2002), and that case only comes up because my Boolean search was, as my old maths teacher could have predicted (had he not passed away a couple of years ago), rubbish: it so happened that there were 252 lost sales involved in a case, Watson, Laidlaw & Co Ltd v Pott, Cassels and Williamson (1914) 31 RPC 104, cited by the Court of Appeal, and also an odd 52 pence in the calculation of the profit that the claimant would have made. So make that no cases on section 52, a number confirmed by the first IP textbook that comes to hand when I reach towards my bookcase.

But section 52 does an important job, or at least it did and I am not convinced that it doesn't still. The fact that it doesn't feature in litigation matters not, just as the argument that a speed camera that catches no speeding motorists is redundant: in fact, it could simply be doing what it's there for. It goes back, dear reader, to the good old days when copyright was the preferred means of protection for industrial designs, because it gave protection for 50 years (yes, it was that long ago) post mortem auctoris, whereas if you troubled to register a design under the Registered Designs Act 1949, v1 (you will appreciate that we are now on v3), you would get 15 years' protection. Where was the incentive to pay money to the Designs Registry (part of the Patent Office, but don't get me started on silly names, read my Dictionary under "Gowers", or go straight to the judgment of Jacob LJ in EI Du Pont Nemours & Co v United Kingdom Intellectual Property Office [2009] EWCA Civ 966 (17 September 2009) where the learned judge talks of 'the trendy but pointless "operating name"' behind which the agency now hides) when you got longer protection by not doing so? Of course, registration would have given stronger protection, but was it sufficiently stronger to make the difference?

Nowadays, registration will give 25 years' protection and a registered design won't be of quite such doubtful validity as it was in those days. But the principle of section 52 seems to me to hold: if the law offers two forms of protection (and there is no reason why it shouldn't), it is entirely right that the rights concerned should be made coterminous. If the right period of protection for an industrial design is 25 years, copyright should not give longer. If the UK is different from other EU countries by not allowing full copyright protection for such artistic works, but EU law does not mandate harmonisation (and it doesn't), what reason is there to change? Professor Hargreaves recommended evidence-based policy-making, so where is the evidence on this matter?

The Press Notice from BIS (have I mentioned my aversion to trendy names? But this isn't just an "operating name" for the Department of Trade) hints at what the evidence might show. One of the aims of the current Bill is:

Deterring the importation and sale of unauthorised replicas of classic designs which qualify for copyright protection and extending copyright protection for mass-produced artistic works to life of the creator plus 70 years. These measures will promote innovation in the design industry and encourage investment in new products, while discouraging unauthorised copies.

Which seems to me to be saying that the period of protection afforded by the registered design system clearly isn't enough, given the longevity of some designs (and the fact that until recently no-one bothered very much with registering designs anyway). Far from promoting innovation, though, removing the restrictions on copyright term will encourage the use of classic designs. That might be a good thing in itself, but the professed policy goals appear to be the complete opposite ...

At least section 51 has removed the biggest problem caused by copyright interfering in the field of industrial designs - there might be copyright in the design of an exhaust pipe (if embodied in an artistic work) but making the article won't infringe copyright in the artistic work. So perhaps abolishing section 52 won't be an unmitigated disaster. It just seems totally misguided and contrary to the evidence.

The Information Notice then goes on, without drawing breath (and therefore suggesting that this is part of the same thought process):

Currently, when section 2(2) of the European Communities Act 1972 is used to amend the exceptions to copyright and performance rights, this can cause difficulties as its use may require a downwards adjustment of criminal penalties in copyright legislation. 

An order making power to allow amendment of any exceptions to copyright and performance rights (via secondary legislation) will enable the Government to preserve the level of penalties which are set out in the substantive copyright legislation. In some cases this includes penalties of up to ten years for copyright infringement on a commercial scale. It would not allow any reduction or increase in penalties.

Excuse me, but that first paragraph requires some explanation. I just don't see how that happens, though I am quite prepared to accept that it does. As for the second paragraph, the ineptitude of the author again becomes glaringly apparent: what is the "order making power" referred to? It clearly means an order that makes power: had the author intended to mean a power to make orders he or she should have written "an order-making power", and that seems to be what was intended. OK, so after a little thought I worked out the meaning, but no reader should be obliged to think through what the author intended to write. The whole point is to make the meaning clear by means of the words (and punctuation) used. Especially where the author purports to be a professional writer.