15 years of Community Trade Marks

Was April Fool's Day an appropriate day on which to start the CTM system? I was never convinced that the Community trade mark system was an unqualified Good Thing, and not only because I was making a decent living out of UK trade mark work and getting friends abroad to deal with national applications in their countries for my clients and vice versa.

OHIM, unsurprisingly, has issued a press release (or actually what now seems to be called a media release) to mark the CTM's 15th birthday. Equally unsurprisingly, it claims that the project has been a success. More applications were filed on Day 1 than they had expected for the whole of year 1. Since then the pace hardly seems to have slackened. "Since then almost 320,000 companies or individuals in 190 countries have made 940,000 CTM applications, of which more than 713,000 have been registered, making the CTM a true European success story" to release tells us.

Leave aside the fact that calling a European Community or Union project "European" smacks of imperialism and must surely be highly offensive to Norwegians, Icelanders, Swiss, Serbs, Croats, Ukranians, Russians, Byelorussians, Moldovans and all the other non-EU Europeans. On what level is it a success?

It has generated immense revenues for OHIM, of course, and if you count a public institution making lots of money a success then that's a good start. It has also given important protection to the identifiers used by a lot of businesses.

But the money in OHIM's coffers has come from somewhere, and much of it has come from businesses which have little alternative but to register a trade mark before someone else registers one that conflicts with theirs. Because in the Community system what matters isn't how businesses are recognised in the market place but who first applied to get a CTM registered, there are a lot of trade marks registered that in a better system (like the one we used to have in the UK, perhaps) wouldn't have to be registered in the first place. To businesses that have to file applications for purely defensive reasons, the CTM system is little more than a tax.

It has also enabled some trade mark owners to build sprawling empires, by registering trade marks for all manner of goods and services that they don't have any real interest in, by registering elements of their trade marks instead of only the composite sign which is what identifies them and which is what trade mark law should protect, and by grabbing exclusive rights for the whole European Union area when in fact they are only trading in a small part of it. Foreclosure and depletion are becoming (indeed, probably have become) big problems, yet the Benelux and Hungarian trade mark offices are considered "off-message" when they demand evidence of use at something approaching Community level.

And that's before we even get onto the costs imposed on businesses of opposing applications that conflict with their registrations - because notwithstanding the hefty fees charged by OHIM, they don't presume to keep the register clear of conflicts. no, that's another cost for the trade mark owner.

And ... to add insult to injury the register contains completely ridiculous trade marks of which my favourites
are 005338959 and 005238399 - for which nonsense (double nonsense - why two apparently identical trade marks, unless there's some small difference in the goods and services that I haven't spotted?) we taxpayers have swelled OHIM's coffers. What sort of trade do these represent? Why the vast range of goods and services (watercolours, for goodness sake! And artificial flowers!)? And why a CTM? Is an invasion planned? Wouldn't trade mark protection in Afghanistan, Iraq and perhaps Libya be more useful?

I don't blame the trade mark owners: if there's a possibility to register something they need to take it and if they let someone else get it their shareholders or other owners will want to know why. If the system allows them to register daft trade marks, then register them they must, until they run out of money. If the system doesn't give emanations of the state the sort of protection they get in Canada (where, I know, "official marks" are overstrong, so any other country's law that tries to go the same way needs to be carefully limited) we will have government departments, police forces, universities and others registering trade marks - because, like it or not, all these bodies are now engaged in some form of trade. No, the fault for this bloated, over-inflated trade mark system lies with the institutions and the politicians who created the laws.

Another day, another misuse of trade mark protection?

There are too many descriptive trade marks registered these days. Too many over-wide trade marks, too many registrations of parts of a trade identity which don't seem to me to constitute trade marks by themselves, as I have remarked before: and too many that simply don't seem to me to be capable of distinguishing one source from another.

These thoughts came to me when I read about a developing trade mark dispute over the expression "urban homesteading" - reported in the Sacramento Bee here. Because it's in the States I won't comment on it specifically, and perhaps the registration as a US trade mark of that expression is perfectly legitimate. The fact that others are using it descriptively might make no difference, as the trade mark owners claim use back to 2001 and have trade marks dating back to 2007: but "The Urban Homesteading Assistance Board" trade mark dates back to 1979 ... and suggests a purely descriptive (though a bit different) meaning.

This episode reveals the chilling effects of trade mark registrations which enclose expressions that others might have a legitimate interest in using. Of course anyone who wants to use the expression can challenge the registration or simply put their heads above the parapet and, when sued, file a counterclaim (at least, they could here): but it's when Facebook (as reported by the Sacramento Bee) starts taking down pages because someone is asserting trade mark rights that the chill really sets in. Too much power over free speech has been placed in the hands of private interests who provide the media through which free speech is exercised - and they should  be obliged to assume responsibility for examining the merits of these claims before cutting people off. IMHO.

Mind you, no trade marks registry in the world should be allowing this sort of thing to happen in the first place. And if (as is often the case) it's because they are applying the law, then the law is plain wrong. No trade mark law should permit this to happen - and providing a means to challenge it when it does happen is no substitute.

Postscript: There's now a Facebook group  Take Back Urban Home-Steading(s) (I bet I know why that hyphen is there) and perhaps the start of a Cooks Source-type campaign.

How long to get a patent?

http://invntree.com/blogs/how-long-does-it-take-get-patent - a very interesting bit of research.

December podcast up now

Featuring the Advocate General's opinion in L'Oréal v eBay, questions for the Court of Justice in Football Dataco, the Court of Appeal's judgment in the Pink Floyd case and the Court of Justice giving Bavaria to the Dutch.

Plus lots of General Court trade mark cases and all the usual stuff. I'll get January done by the end of the week, I hope.

Sydney Water: you couldn't make this up

... or could you? This story from the Sydney Morning Herald seems stranger than fiction. An entrepreneur - am I right in thinking that this word, like so many others ("celebrity" springs to mind), has become devalued in recent years? - proposes to sell bottled Sydney Water worldwide. He seems to think that the utility of the same name has inadequately wide trade mark rights to do anything about it, but they are suing him - not for infringement but for money he's received that they say he shouldn't have. Have you lost track yet? I certainly have.

The really entertaining part of the story is that the defendant has demanded that the judge stand down. The defendant suspects a Masonic conspiracy because the New South Wales Treasurer, one of two shareholders in the utility company (but ex-officio,one assumes, not personally) was photographed in a pose that indicated to the defendant that he is a Mason. No, not with a trouser leg rolled up, but with his eyes looking up. Of course, that can't be more than prima facie evidence, can it? Anyway, the judge refuses to say whether he's a Mason. He also refuses to say whether he's Jewish, and the defendant thinks that's relevant because Jewish law doesn't recognise intellectual property. Nothing about the fact that Australian law does - and this is reportedly a trial in the Supreme Court, not the Beth Din (where intellectual property disputes are, I believe, regularly and efficiently dealt with anyway, and Sydney apparently has a particularly eminent one, although it doesn't promote itself as a forum for IP disputes - its London equivalent deals with all manner of litigation).

The Sydney Morning Herald has several pieces about his unfolding story - see also here if you feel so inclined.

Photographing farms in Florida

That might soon be a criminal offence, if legislation currently being considered becomes law. Which I hope it doesn't, not that it would make much difference to my life if I had to abstain from the above alliterative activity. My friend Marc Randazza has the story on his always-entertaining Legal Satyricon blog, along with some his trademark disparaging remarks about what he always refers to as Flori-duh (and a very disparaging illustration for the appreciation of which a schoolboy sense of humour is required - be warned). Not just a criminal offence: a first-degree felony, like murder. As Mark Meyer says in his excellent, erudite and whatever-the-opposite-of-vulgar-is posting:

So if this bill passes and you want to photograph a cow, you are better off breaking into the barn, stealing it and photographing it off-site, a crime for which you might only get five years rather than thirty.

Force India: motor racing becoming a breach of confidence competition

Soon it will be possible to do a one-day course on IP using nothing but examples from the world of motor racing. The Formula One casebook used to contain only Nichols Advanced Vehicle Systems v Rees, Oliver and others [1979] RPC 127, but it's grown (like all legal textbooks) in recent years. The bread-and-butter motor industry is the same, as I noted on my Blog Exemption blog not long ago (and of course Renault are embroiled in a strange story of industrial espionage involving electric vehicles which I'll write up soon).

Now Force India are claiming that an aerodynamics company who did work for them passed on information to the then-new (but distinctly retro) Lotus team about their designs. Fat lot of good it did Lotus - but then again, where might they have been without it? Anyway, this report from Crash.com tells the story and links though to another interesting piece by Tim Lowles of Collyer Bristow, asking why there aren't more IP disputes in F1. Perhaps because they have to devote what little time remains to actually racing? The Force India case is down for trial next January, and in the world of Formula One a lot might have happened by then.

Mr Lowles explains that the intellectual property system moves too slowly to be of much help in such a fast-moving field. It's also pertinent that the disputes over technology are breach of confidence ones: filing an application for a patent wouldn't produce protection within a useful timescale (chances are the rules would have changed and your invention would be useless by the time you got the patent) and making the details public is exactly the opposite of what's needed. However, when several years ago I was involved in a due diligence investigation of a F1 team I did see a patent, for part of the transmission - a novel clutch assembly, I think. But it will be a sad day when IP litigation replaces racing as the way to win in motor sport.

Of course, Team Lotus are also making a contribution to the trade marks chapter of the notional casebook, locked in a dispute over the name with Group Lotus which is backing Renault's F1 team. And Ferrari have just settled a really daft trade mark claim by Ford, noted elsewhere on this blog and on The Blog Exemption here.

Latest podcast

The latest podcast is now available for download - but I am clearing a backlog, and it covers last November. December will be quicker and easier and soon I'll be up to date ... If you'd like to subscribe,and get your CPD this way, get in touch!

Something rotten in the Indian trade marks registry?

"CBI kept a watch on Trade Marks official" reports the Times of India, but it's nothing to do with my one-time employer the Confederation of British Industry - this is the anti-corruption branch of the Central Bureau of Investigation, who arrested the Deputy Registrar of Trade Marks in the Guindy office of the Indian IPO for allegedly "possessing assets disproportionate to her known sources of income". (The story has also been covered by the Spicy IP blog here.)

How on earth can that be an offence? It might be evidence of some criminal wrongdoing, but plenty of people - throughout history, and all over the world - have had much more in assets than income. I've just been reading  The Little Stranger by Sarah Waters (until I found myself identifying too closely with Roderick and decided I'd better give it up half-finished) in which precisely that lies at the heart of the story.

The Times of India goes on:

The CBI had seized Rs 33 lakh in cash, fixed deposits for a value of Rs 85 lakh and gold ornaments weighing about 3.8 kg from her house.

That gives me an excellent opportunity to share with you, dear reader, my recently-acquired knowledge that a lakh is a hundred thousand in the Indian numbering system. (Oh, you knew already? Please move on to another part of my blog, then.) I can see considerable merit in using this system in preference to what we use at present - it will deal with any ambiguity about the meaning of "billion", originally coined in France in the 16th century to denote the second power of a million (which explains the "bi-" prefix), adopted by us later, then for some reason I haven't yet fathomed but which might be the flip side of the subject of 1000 Years of Annoying the French by Stephen Clarke) changed by French arithmeticians, who decided that numeration would be better divided into groups of three rather than six. The perfidious Americans then followed the French, who decided (the French, that is) in 1948 to switch back to the way they'd organised numbers before. Perhaps that had something to do with post-war hyperinflation? Maybe the Americans stuck with their definition of a billion so they could move on more quickly from being mere millionaires.

The Indian system goes straight from the lakh (the fifth power of 10 - I don't know how to do superscript here) to the crore (the seventh power), so there's no direct equivalent of the million. The ninth power is an arab (an American billion) and again, because after 1,000 (sahasra) the numbers go up in groups of two there's nothing to correspond to a real billion (the twelfth power of 10).

Anyway, it's definitely a lot of rupees, but I still don't understand how it can be an offence to be rich. Actually, on second thoughts ...

Conviction for downloading films

A man in Scunthorpe has been convicted of copyright and trade mark offences after being caught downloading films, according to the This Is Scunthorpe website. He made copies for himself and for family and friends, and made no profit from it: 4000 is the total number mentioned. For some reason he doesn't seem to have understood that there was anything wrong about it, and even a warning from the trading standards department didn't give him pause for thought.

I thought the sole redeeming feature of these criminal offences was that they are squarely aimed at activities that have a commercial dimension to them - where consumers are being ripped off, and perhaps where organised crime is involved. Those features justify the expenditure of public money and the use of public resources. They appear to be wholly lacking in this case. And why the trade marks prosecution too? Kitchen-sink pleading?

First to file or first to invent?

Nearly all the world awards patents to the first person to file a satisfactory application for one. There are exceptions, as in the Asahi case which reached the House of Lords a few years ago - OK, [1991] RPC 485 - in the days when I thought I knew everything and did a programme about it (and the Ninja Turtles case) for TEN which at the time was producing CPD videotapes. They got in high quality presenters (I don't necessarily count the lawyers, although Clive Thorne was also involved): I was interviewed by Jill Dando.

The main exception to this principle is the United States, where patents have always been awarded to the first to invent. This results in much litigation, which goes under the colourful name of "interference proceedings". Why don't we have such nice terms in English law? Well, I guess we do - just think earth closet order ...

The Senate has recently rejected a challenge to a bill that would bring the US into step with the rest of the world (there's a report here and I'm sure there will be plenty of other sources if I had the time to point you to them - like Dennis Crouch's excellent Patently-O blog, starting with this posting and including several more recent ones). I had glibly thought that the Americans were simply incapable of understanding that if they do something one way and everyone else does it another way then perhaps they are wrong. Having a copyright registry falls under the same rubric. I have previously put it down to arrogance, but I'm beginning to appreciate the potential utility of a copyright register: as for the "first to invent" rule, something I read the other day (and can't find now) drew my attention to the fact that the Constitution allowed Congress to pass legislation to give exclusive rights to inventors. So there's more to the first-to-invent/first-to-file controversy than meets the eye - and there's a lot to be said for a system that regards inventors as more important than their employers.

Every day I write the book

At last, I have a copy of my book in my hands. Not that it matters that I have it: what matters is that other people have it ... At least I know it really exists.

Could Formula One be a trade mark?

Gone are the days when you could build a Formula One car in an Essex garage, like Peter Connew did in 1971, hire a competent driver (François Migault in this case) and turn up to take part in a Grand Prix (which actually the Connew didn't do very much). I'm not going to wax lyrical about those days, when one could expect three or so drivers to be killed in the course of a season, but that's not to say I like the commercial circus that grand prix motor racing (or "F1") has become.

Too much is fought out not by the drivers but by the lawyers these days, and the latest case was in the General Court last week when Formula One Licensing failed in opposition proceedings based on their "F1" trade marks against the figurative mark F1 LIVE. I don't know (it's 35 years since I used to read it regularly, and indeed sent off my first ever job application to it) whether Autosport carries regular law reports yet, but here's their story about the case. You might prefer - you might consider more authoritative - the judgment published on the Curia website, T-10/09 Formula One Licensing BV v OHIM.

The story is that Formula One Licensing took exception - several years ago - to F1 LIVE. It based the opposition on the word mark F1 and a figurative mark familiar to anyone who's watched a race on the TV in the past few years. The word mark, the court thought, was going to be perceived as an abbreviation of Formula One, and therefore descriptive, although in these proceedings it couldn't do much about it except to hold that there was no likelihood of the public getting confused. The figurative mark was what the public had been educated to recognise, but it wasn't very like the mark applied for - so again no likelihood of confusion.

I'm afraid it's all Colin Chapman's fault, since he brought commerce into the sport in 1968 with Imperial Tobacco sponsorship and renamed the team Gold Leaf Team Lotus - a trend that continues today with Red Bull not only being the name of a drink but also of a racing team - whose 2009 car (or probably a non-working display model) appeared in the foyer of the RAC on the day of this year's Motor Law conference, taking the place of Jim Clark's 1961 Lotus 18 which had been there the previous night.

Who'll buy a business with no trade mark?

From Ireland comes this cautionary tale (though it could equally have come from just about anywhere): the publishers of the Sunday Tribune newspaper, Tribune Newspapers Plc, went into receivership on 1 February 2011. Publication of the paper and its online edition (what should we call an online newspaper? A newsnonpaper?) was suspended while the administrators tried to find a buyer for the business. Last Sunday, the Irish Mail on Sunday produced a special edition with a front page layout described by The Guardian as a "fake" Sunday Tribune front page.

That shouldn't be more than a minor irritant, surely. Can't the administrators sue for trade mark infringement? Well, no, they can't, for the simple reason that the Tribune didn't have a registered trade mark. Like lots of other people and companies. So they could sue for passing off or put together a somewhat contrived claim for copyright infringement (while simultaneously rushing off to the trade marks registry with an urgent application), but that doesn't really do the job. Anyway, what administrator is going to stump up the price of a passing off action, perhaps the most expensive form of litigation known to humankind?

Quite apart from the direct damage done by the Irish MoS, the Tribune must have suffered considerable indirect damage. The search for a trade purchaser is made rather more difficult now the world knows the paper's title isn't protected, or not very well. There might be questions about the conduct of the directors of a plc who allow this sort of situation to arise (though I couldn't possibly comment on Irish company law). Trade mark registrations might be expensive to get (though not very, in the great scheme of things) and involve the owner in continuing expense (watching services, oppositions, renewals, and indeed infringement actions) but businesses need them, and badly. The law enables you to obtain this protection: it's desirable, and for many essential, to take up the offer.

Use of key words may be infringement in US

A federal court in California has held that a legal practice that bought a Google Adword corresponding the name and registered trade mark of a competitor was liable for infringement. The case is  Binder v. Disability Group Inc., C.D. Cal., No. 07-2760 and the story is here (and probably lots of other places too).

Of course, many courts in the US and elsewhere have held that in selling Adwords, Google is not infringing trade mark rights. Like it or not, and I certainly don't that's the legal position. But the advertisers who bid on the Adwords, well, that's another matter - even the Court of Justice has indicated that they might be infringing. The problem is that trade mark owners hoped to get to the root of the problem by stopping Google, and save the trouble of having to pick off lots of troublesome little infringers. So there's not much surprise that the advertisers are infringing, though it's good to have it confirmed, even by a distant (geographically and jurisprudentially) court.

Where's the beef?

The spat over Ferrari's use of the designation F150 for this year's Formula One car,  reported in the US press (WSJ here), is about dilution. Dilution, would you believe, of Ford's F-150 registered trade mark, used for pick-up trucks.

In fact Ferrari weren't using "F150" as the designation of the car, but calling it the F150th Italia, a rather convoluted reference to the unification of Italy in 1861. So they settled on the basis that they would use the full designation only. Whether TV commentators will or not is, I suppose, another matter, but there's not often much need to quote model numbers - there will only be one Ferrari model taking part in the races, after all. The print media might be a different story.

I still don't see how a claim of dilution could hold water. Are Ferrari taking some sort of advantage of the repute attaching to Ford's trade mark? Are you joking? How many examples of this model do you think they plan to sell, anyway? Are they doing something detrimental to it? Quite the opposite, I'd have thought. Does anyone in the US pay any attention to Formula One, especially since that farce at Indy that called itself the US Grand Prix a few years ago?

So (as Garibaldi might have said), where's the beef?

Trade mark depletion and foreclosure

Two similar stories on the web today (or not long ago): first, Managing Intellectual Property asking whether Apple is a trade mark bully for trying to register App Store as a trade mark (or trademark, I should write, as we are considering the United States here), and second a Minnesota-based maker of Scandinavian-style clogs by the name of Ugglebo challenging Deckers' controversial registrations of UGG for footwear.

There are important differences between them, I believe. The whole UGG thing smacks of avarice, and will have a central place in the book I might one day write about intellectual property absolutism. It seems well-established that the name was widely used in a generic way in Australia, and Deckers should not (on that basis) have been allowed to enclose it as a trade mark (or trademark). There might be more to it than that, but from what I know of it UGG simply should not have been registered as a trade mark.

Apple, on the other hand, do operate an online retail facility known as the App Store, which gives them a legitimate reason to wish to register that name as a trade mark. It is relevant that the name of the store reflects the first part of Apple's corporate name, but probably more to the point is that given the success of its iPhone and iPad the App Store has probably achieved widespread renown in a very short time. If so, it functions as an indication of source - in other words, it is a trade mark. I guess Apple will have to argue that it is distinctive enough, and that it isn't merely descriptive or generic, but if they can, they should have the trade mark. Their application is not a bid for world domination so much as an attempt to protect an important sign in its corporate portfolio - and (here's the point) if the law gives it a chance to register it, the company owes it to its shareholders to do so. Especially if, were it to hold back, someone else might grab it first.

That being the case, I beg to differ from what appears (from the summary) to be the thesis of the MIP article. The writer of that article, Eileen McDermott, notes that under the Trademark Technical and Conforming Amendment Act of 2010, the US Patent and Trademark Office asked stakeholders for comment on a number of questions relating to two topics: "(1) the extent to which small businesses may be harmed by litigation tactics the purpose of which is to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner; and (2) the best use of Federal Government services to protect trademarks and prevent counterfeiting." I know of plenty of examples of such bullying, from the UK and EU (and I would be surprised if the same thing did not go on in the US), but I don't see the Apple case as one - and as for UGGs, the problem there surely is that someone (at the USPTO) has permitted an undeserving trade mark to be registered. Both highlight defects in the system, which are not limited to the US, but not the defect identified by MIP.

32RED CTM infringed Adwords don't compromise registration of trade mark

I've never understood roulette, or indeed gambling in general. It mystifies me why rational people should throw their money away in that fashion. Perhaps it's just that people aren't always particularly rational.

I did however once spend an evening in a casino, in the company of the doyenne of law lecturers, that remarkable man Ray Snow. He's the man who woke me from my reverie on my 21st birthday, the first time in my life I had been obliged to present myself for education on my birthday:having been born in August, school and university had never sullied the big day, but the College of Law was not so forgiving back in the days of Part IIs (a concept which few now seem to remember). Later I found myself recording lectures with him and then delivering some face to face. We were in Leeds, speaking about the reform of UK competition law, and after the gig he repaired to a nearby casino where it seemed he was well-known.

These days there would be no need to wander the mean streets of downtown Leeds: one would simply go online to throw away one's money, though (as with all manner of online activity) one would lose the human interaction that seemed to me to be the best reason to go to a casino. 32Red Plc (A Gibraltar Company) v WHG (International) Ltd & Ors [2011] EWHC 62 (Ch) (21 January 2011) is a trade mark case arising out of precisely this sort of online activity.

Why 32Red? It is (I now know!) a roulette score, so when it comes up the croupier will call it out. The numbers on a roulette wheel (invented, in a primitive form, by no less a person than Blaise Pascal, better known for his wager than for his gambling) appear on a red or black background. 32 happens to be the number next to zero but otherwise has no special properties - it is an arbitrary choice for a trade mark. Indeed, given that 32red.com offers more games than just roulette (as do other operators) the allusion to roulette is itself somewhat arbitrary.

The claimants had a successful business (indeed, from reading the judgment of Mr Justice Henderson in the Chancery Division, a very successful and well-known) operated from Gibraltar but aimed at punters in the UK. They also had registered Community trade marks for the 32RED word mark and a figurative mark containing the same textual material. When another business started up as 32VEGAS, regulated first in Antigua and then in the Canadian Mohawk Territory of Kahnawake but prohibited from advertising in the UK, 32 Red wrote to them and to the Kahnawake Gaming Commission but, concluding that it wasn't going to cause them much damage anyway, they didn't pursue the matter.

That changed when the William Hill group acquired the business, and started to compete head-on. 32Red sued, claiming infringement under Article 9(1)(b) and (C). The judge concluded that the 32 element of the trade marks was the important part, so they were similar, and that there was a likelihood of confusion between the two. This was not so much because punters would find themselves playing on the wrong site, but that they would assume there was an association between the two - whether a positive one, encouraging them to use 32Vegas because they thought it was associated with 32Red, or a negative one, a bad experience with 320Vegas causing them to avoid 32Red.

Counterclaims for invalidity of the registrations based on descriptiveness and non-distinctiveness were rejected as hopeless by the judge, but more interesting is the argument that by bidding for Google Adwords comprising 32 and a further element (including 32Vegas) the claimants had made their CTMs deceptive under Article 51(1)(c), so they should be revoked. The Adwords had created a link between the claimant's business and other "32" marks or names. Had this argument been accepted, it would have changed the legal landscape in which Adwords operate - but it wasn't. The judge thought that Adwords were well understood by consumers, who would not be confused when their search directed them to 32Red.com: they would understand the difference. What he didn't do, though, was consider the doctrine of initial interest confusion, which the Court of Justice told us did not exist in EU trade mark law (in the Google Adwords case), but which the High Court admitted a little later, in the Och-Ziff case (which I noted here) - judgment in which was handed down on the last day of the hearing in the 32Red case, so although he quoted from it (though only to enhance the authority of an earlier Appointed Person decision) it's entirely understandable that he didn't go for initial interest confusion - and of course neither did the parties.

Finally, there is the small matter of a UK trade mark for 32, applied for only after proceedings had been issued (necessitating an amendment to the pleadings). This strikes me as rather like the sort of absolutism that so often offends me, but in this situation it is a legitimate attempt to strengthen the case against the defendant. It is clear from the judgment that the 32 element in the CTMs was considered distinctive, and for much the same reasons the challenge to the validity of the registration of the simple 32 UK trade mark was rejected. Perhaps it does foreclose and deplete the stock of available trade marks, but it seems from the case that no other online casino can have a legitimate reason to use that arbitrarily-chosen number as or in a trade mark.

Dramatising the ethics of intellectual property

If I find this intriguing, it might be a reflection of nothing more than my ignorance of the theatre in general, but a review of  Ira Lewis's Chinese Coffee at the Flight Theatre in Los Angeles caught my attention this morning as I enjoyed my first cup of coffee and did a little gentle Internet surfing. The review says that the play is "a weighty examination of a heated argument that treads a range of themes including the blurred boundaries of an old friendship, poverty for the sake of art, regret, and the ethics of intellectual property through the lens of two perpetually disagreeable and jealous old friends."


It also goes on to say that the dialogue (this is me paraphrasing) is pretty lame, but that the actors' "meta-communication" (nice expression, new to me) makes up for that. Judging by the extract here, the writing does seem to lack something - and presumably, by reason of its selection this must be a good bit. But for Al Pacino to have acted in and made a film of it is quite a compliment.


The plot turns on one of the character's latest novel, which he has shown to the other who realises that it is the story of their relationship. Quite a promising theme, but am I alone in thinking that to analyse it in terms of intellectual property shows a somewhat unhealthy obsession with the subject? The second character might well feel miffed at the first's use of the story, but where's the IP - except in the broadest sense? This sort of thing should, I think, be kept in the field of human relationships without reviewers starting IP hares like that running.

Intellectual Property Theft

So obviously impossible. An oxymoron. It has its uses as a rhetorical tool, perhaps, but it's one of the many things that drove me to write a Dictionary of Intellectual Property.

Doonesbury has taught me more than just about anything in my entire life (until last week, at any rate) and this morning I came across the verb "to bogart". The fact that it has taken me until now to do so shows that I was in fact really quite young and innocent in the sixties, and didn't listen to the right music. Nor did I see Easy Rider until rather later. I'm still innocent, but have become rather older since then - though I'm in the process of becoming younger just now, as my half-Marathon performance demonstrates - and I do sometimes listen to the right music, though the journey back through time often disappoints, falling short of the uplifting experience I hope for.

The expression derives (according to impeccable sources such as Wiktionary) from Humphrey Bogart's tendency to keep a cigarette between his lips rather than taking drags and removing it in between, apparently to avoid continuity problems. In the sixties it came to mean failing to pass on a joint as promptly as good manners dictated (see Don't Bogart That Joint, by Lawrence Wagner (lyrics) and Elliot Ingber (music), the original version of which appeared on the soundtrack of "Easy Rider" performed by Fraternity Of Man, subsequently covered by Little Feat) and from that it has developed the meaning of stealing - perhaps appropriating is a better word, though the Oxford English Dictionary, in a surprisingly lengthy entry, does give "steal".

As for Doonesbury - the usage is not in the strip (though I bet it's there somewhere, in the 40 year old archive) but in the answer to a FAQ on the website - appropriate, since the question is about that memorable character from the strip, Mr Jay, an  anthropomorphic joint. The answer provides a (broken) link to a cartoon in which he features, with the plea: " Just don't bogart the strip."

With the connotations of wrongful appropriation, greed, and sharing, this is a much more complex notion than that of theft, and therefore a perfect expression to apply to what people intend when they speak of intellectual property theft. I'll be writing a definition shortly, and cross-posting this to the Dictionary of Intellectual Property Law blawg in the meantime.

On the burning of books

So, they are burning books in China - again.This time it's counterfeit ones, but the story stirred something in my memory: I managed to mention the Burning of the Books in my first book, giving it a spurious air of scholarship and erudition - spurious because, in those pre-Wikipedia days, it would have been too time-consuming to find out more.

Back in the days of the Qin Dynasty, between 213 and 206 BC, books were burnt because the ideas in them had (it was believed) to be suppressed. Now they are burnt to take the copies out of circulation so that real copies might thrive, and pour encourager les autres. Alarmingly, the second part of the Qin Dynasty policy's name is the Burying of the Scholars: I haven't heard of the Burying of the Counterfeiters yet, but who knows what might be on the agenda at the US Department of Commerce - at whose behest, I have little doubt, China is doing at least some of this book-burning (and its modern equivalent, CD burning, though that phrase already has a somewhat different meaning).

A friend who writes English as a Foreign Language books once told me that if he had only a fraction of a penny for each illicit copy of his books that is circulating in China, he would be a very rich man. But I have a suspicion that the beneficiaries of this official biblioclasm (or libricide) are likely to be multinational publishers rather than hard-up authors (not that the friend I mentioned ever seemed hard-up). There's something deeply disturbing about the idea of burning books, whatever the motives - it isn't likely to lead to greater respect for books in general.

Dictionary of Intellectual Property Law

The proofs have been checked and a new blawg created to act as an updater and forum for suggestions. I have already posted a handful of new definitions, and there are more waiting in draft. Do go and look, and return to it frequently. I'm looking forward to receiving feedback from readers, once there's something to read - which should be the end of next month. Order your copy now (use the link over there on the left of the page).

Domain name leasing

Is this some new, unnecessary, dodgy activity? That was my first thought when a client asked me for my advice the other day. How do you lease something so nebulous as a domain name? The very idea of it brought out the grumpy old man in me.

Domain names have enough of the attributes of property to stop me, now, from complaining when people treat them as a type of it - though lawyers need to think carefully about how they treat them, especially when they lump them in an omnibus definition of IP and give covenants about ownership. So what about leasing them?

A lease is an agreement governing the use, for a fixed period, by the lessee - so says my oracle in these matters, the late Stanley Berwin (in case you are too young to recognise the reference, it's to The Economist Pocket Lawyer, published in 1987 and never matched as a source of pithy definitions of legal terms - which reminds me of a friend at university, cramming on the morning of one of his final exams from a copy of Law Made Simple. He got a 2:2, but that was a different age, one in which a 2:2 was worth having and before my university ever gave out a third, let alone a pass degree. I wonder whether a new edition of this work - the Berwin, I mean, not the Made Simple - has ever been considered?)  Mr Berwin talks of the agreement being about the use of goods, equipment or land, and about the tax and cashflow advantages of leasing as opposed to outright purchase. My recollection of property law is that a lease of land creates a legal estate in it, so it's rather more than a mere agreement to permit use - which, he confirms, is what a licence is.

Well, domain name leases are also called licences, sometimes, but calling them leases resonates with those who like to think in terms of internet real estate. If it sounds better, and provided terms are properly defined so we know what we are talking about, what's the difference? Whatever - I'll use the word "licence" so I don't get tied up in conceptual problems in my own mind. Which brings to mind one of the most satisfying of the definitions in my Dictionary of Intellectual Property Law - of "bare licence" - but you'll have to wait to get hold of a copy to read it. And just as in the market for real property there is a place for arrangements which separate ownership and use, so too in the market for Internet property.

Developers can invest in domain names - perhaps have the good fortune to grab one nice and early, create some Google juice and make it an attractive proposition for a start-up business. The real estate that people want to occupy on the Net is very different from where they want to be in the real world of business (I should say, where they ought to want to be) - the valuable property on the Internet is in generic domain names, s*x.com and so on (I bowdlerised the domain name because Google just informed me that they have rated this as an adult-only post, which just shows how clever AI is). In the real world there's nothing to stop you using a name like "S*x" for your business, and of course Malcolm McLaren and Vivienne Westwood did it years ago - and I think I might have just disproved what I was about to say, namely that you can use it but you'll have a hard time stopping anyone else doing so - so let me refine that proposition a little ... it's unusual, and counter-productive, to see words used in that sort of fanciful way on the Internet - a generic domain name works when it is used for the goods or services that it identifies, whereas a generic business name or trade mark is as much use as a sheet metal handkerchief - as we used to say. And a non-generic domain name will either be unattractive or a trade mark infringement.

So, there are good reasons why people might have domain names to let, and fairly good reasons why people like the client who asked me in the first place might want to rent them. There are some model leases available on the Net - though they look a bit American to me. But the drawbacks of taking a licence to use someone else's domain name are manifold.

If I were to open a shop, which I could quite enjoy doing, selling books or records - but I digress - though better than selling myself by the 6 minute unit - I might rent premises for it. Unlikely that I'd be able either to come up with the wherewithal to buy somewhere, though I suppose for some it would be possible to borrow the money and buy freehold. Anyway, the point is that renting shop premises is likely to be the way to go. I put up my sign over the door, advertise in the appropriate places, and the world beats a path to my door (in my dreams). Soon I need bigger premises - one of those situations in which size matters - so when there's a convenient break point in the lease I up sticks and move somewhere bigger. Perhaps I leave a notice in the window telling customers where they can find me, and in any case if they see someone else's business name above the window, or just notice that it's now a butcher's shop or something, they will guess what's happened.

What has happened in that situation is, of course, that I have moved my business, with the goodwill, to a new location. Which I couldn't easily do if I were occupying someone else's domain name rather than their commercial freehold investment. So, dear client, if you're reading this, it seems to me that you need:

• A long-term agreement, perhaps even perpetual, though the lessor is going to need some way of getting you out.
• A rent that isn't based on your turnover or profit, or footfall, or anything else - a fixed sum, with a formula for increasing it year-on-year.
• An option to purchase the domain name.
• A transitional period at the end of the "lease" during which the lessor will put up a notice directing visitors to your new website, and not let anyone else (and least of all a competitor, though who else is going to want to use the same generic domain name?) have the domain name for a certain period.

Whether any of that is palatable to the lessor is another matter. I imagine it pretty well trashes the business model they are working from. If (dear client) you're thinking of a business that will flourish for a couple of years and they disappear for ever (as, now I think about it, most online businesses do) then it might work, otherwise all you are doing is creating capital value for the owner who is going to get your hard-earned goodwill, or most of it, however hard you try to prevent that happening.

Copyright trolls

In a world in which everything has to be counted, measured, sold and bought, there will be trolls. The patent species is well-known, though distinguishing them from genuine operators might be difficult sometimes. Attempts at trade mark trollery are generally doomed to failure, foundering on the rocks of non-use or lack of bona fide intention. Copyright is another matter.

Reports that trolls are buying up copyright and then searching the Internet for infringing uses have become more and more common recently, but there are other ways to become a copyright troll, or something rather like one. Inheritance is one, and a friend told me recently of how she'd used some photos in a presentation that she'd already used with permission in a book, and now faced a substantial claim for royalties. The sum involved seemed to have been plucked out of the air, and certainly bore no relation to the (charitable) use to which the works were put. The troll had, of course, inherited the copyright from an ancestor.

Of course the first thing about this is that my friend hasn't done very well here. The original permission was limited, and if it were foreseeable that the photos might be needed in a presentation (and with the ubiquity of what people are pleased to call PowerPoint, though they should be using Open Office Impress and calling the result by a generic name, which means that reproduction is taking place) that should have been included at the time. Limiting that to use for promoting the book might well help close any gap between the parties. What's really depressing is the avaricious attitude of the copyright owner - which is why I am using the "troll" epithet - though I have only heard one side of the story. That's why my retelling of it is short on details, of course.

My suggestion? Take out the photos and replace them with the legend "photo removed because [name of troll] wanted £[outrageous demand]". Clearly copyright allows the owner to demand a royalty, though whether the demand has any market-based validity I don't know. It sounds like a lot, though if the photos were rare it might be justified. If they are reproduced in a book, though, it's not as if they can't easily be seen.

New monthly IP podcast

- available for subscribers to download. Features the first sighting of initial interest confusion in England plus lots more - nearly an hour and a quarter. Consult the podcasts page if you'd like to subscribe! CPD accredited (by SRA).

No summary judgment in peer-to-peer filesharing cases

Eight filesharing cases could not be dealt with by summary judgment, the very active Judge Birss ruled on 1 December in the Patents County Court. In Media C.A.T. Ltd. v A and others [2010] EWPCC 17 (01 December 2010) the claimant, saying it represented the owners of copyright in several movies of a type that you won't find on sale in your local DVD shop, asked for summary judgment against eight defendants. they had either failed to acknowledge service or failed to file a defence, so the requests for judgment said, but the judge found that two of the defendants had filed defences. In four other cases there was no evidence of proceedings having been served on the defendants, save that one who instructed solicitors and filed a defence, which rather indicated that service had taken place. In two cases judgment in default was possible, but in all eight of the cases the claimant had asked for an injunction and hadn't done enough to satisfy the judge that the remedy sought had subsequently been limited to damages, so that in itself precluded summary judgment under CPR Part 12.

The judge left no-one in any doubt that he was glad not to have to dispose of the cases summarily. The claims raised controversial issues about the application of copyright law, and he also pointed out defects in the way the law had been pleaded - this is not a simple matter. It was not apparent how the claimant was entitled to bring the actions, as there was no evidence to show that it was either owner of the copyright or exclusive licensee.

Many will be pleased to see the claimant's solicitor, whose handling of industrial volumes of filesharing litigation has itself been highly controversial, fail in these requests, but that's not really the point. There seem to be an inordinate number of requests for summary judgment coming before the courts at present: in Virgin Atlantic Airways Ltd v Delta Airways Inc [2010] EWHC 3094 (Pat) (30 November 2010) the defendants got summary judgment, but it's clear that this is a rare event in the patent world (and, perhaps, by extension the IP world). I seem to have read several judgments recently which go into the rules about summary judgment in great depth. The costs of IP litigation being what they are, even in the new regime in the PCC, shortcuts to a decision (like interlocutory injunctions in the good old days) will be taken wherever possible.

Protecting products by patents: a great way to spend a Saturday afternoon

To St Catherine's College, Oxford, to attend a seminar on patent law. Daniel Alexander QC, giving the opening scene-setting presentation, talked of his wife's scepticism about the wisdom of turning out to speak at such an event, at which surely the audience could be counted on the fingers, if not the thumbs, of one hand: but the room was full, with 40 or 50 enthusiasts (I think it's fair to assume that the description fits) present.

I thought protecting products was what patent law was largely about, except when it is about protecting processes. We heard a great deal about that interesting area where the two cross over - product-by-process patents - and the hook on which it was hung was the recent Monsanto case (Case C-428/08, Monsanto Technology LLC v Cefetra BV and Others, featured in my July podcast) in the Court of Justice (which speakers still called the ECJ).

Daniel Alexander's presentation, my notes on which filled seven pages of my notebook, was a formiddable tour d'horizon, considering the nature of the tribunal (no notable IP specialisation being apparent among the judges or advocates general). The court is asked to do relatively little in the patent field, few cases and no choice about which to entertain. The four big areas of patent law which are within the purview of the court are biotechnology patents, SPCs, remedies (by virtue of the enforcement directive) and controls on exploitation such as competition law.

References come, of course, from national courts, and are of uneven quality. The UK courts do a good job of presenting references, though often at the expense of length. the Court of Justice must work with one round of written observations from the parties and 20 minutes of submissions (compared with only 15 minutes in SCOTUS). The Advocate General has great influence over the outcome of a case, and AG Mengozzi in Monsanto was no exception. He is a distinguished professor of administrative and public law from teh University of Bologna - but no patent man.

Mr Alexander also mentioned the role of the juge rapporteur to whom the drafting of the opinion is entrusted, no dissents being allowed under a French law doctrine that considers the court as the depersonalised mouthpiece of the law. Whoever thought that up, said the speaker, had never met - hmm, perhaps I won't mention any judges by name in this blog.

Apostrophe abuse and neglect

I'm reading a recent judgment - no need to mention which one - which quotes at some length from correspondence passing between the parties' solicitors. I am appalled that neither side manages consistently to use apostrophes correctly. There are possessives that lack apostrophes and a possessive form of the neuter third person singular pronoun with one in. At least that partly restores the number of apostrophes present, even if they are not in the right places.

I have worked in busy offices where dictation has come back - often in a ready-to-sign form - with errors in it, and I have probably taken the view that trying to correct them all would be beyond Sisyphus. Sometimes the letter (or fax, or whatever) just has to go, and there is no time to correct it. We are dealing with what is possible here, not trying to achieve perfection. I suspect that the solicitors involved were in such a situation. In any event, I will be charitable. I will also be charitable to the persons who abused and neglected the apostrophes, as I don't think the education system imparts a sufficient understanding of the rules of grammar, though bearing in mind that JK Rowling and others have caused a huge increase in the amount of reading done by young people, and therefore in their exposure to the correct use of apostrophes, the education system's failings are a feeble excuse.

What has struck me is that any temptation to cut corners when correcting correspondence, or other documents, must be resisted. It's one thing getting it wrong when only the other side will see: it's quite another to have your work uploaded to BAILII.

US Government seizes domains

The US Government - to be precise, the Department of Homeland Security - has seized a load of domain names used for file-sharing (or suspected file-sharing) sites. Thanks to Dan Ballard (Twitter: @ballard_ip, http://www.sequoiacounsel.com/) for explaining that this was following a court order pursuant to a seizure request by the DOJ in furtherance of its criminal investigations into counterfeiting, nothing to do with the Combating Online Infringement and Counterfeits Act (COICA) (another entry for the second edition of my Dictionary of Intellectual Property) which has not yet become law.
However, my understanding is that COICA will allow a Web site's domain name to be seized if it "has no demonstrable, commercially significant purpose or use other than" offering or providing access to unauthorised copies of copyrighted works. The Attorney General will be given extensive powers to do all this.
I had fondly (in the "foolishly" sense of the word, as in that wonderful north-eastern expression which my parents used to apply to me from time to time, fond gonniel, meaning silly fool, or worse) imagined that the DHS was exclusively concerned with preventing terrorist outrages, but it seems its writ runs further than that.

Read more here.

Meltwater fails to wash NLA away

I'm glad I'm not the Newspaper Licensing Agency. Collecting societies are rarely loved, but the NLA must be the least loved (or most unloved) of the lot. It exists because, after the Copyright, Designs and Patents Act 1988, it became easier to set up a body to licence the copying of press cuttings, which is what was was hurting the newspaper proprietors at the time. Now the way in which the products of the newspaper proprietors are consumed has changed again, as have the activities of press cuttings agencies (for which there's a new generic name which escapes me for now): they distribute links to the stories in the online editions of the papers, and PR companies pass them on to their clients.

The question in The Newspaper Licensing Agency Ltd and Ors v Meltwater Holding BV and Ors [2010] EWHC 3099 (Ch) (26 November 2010) was whether subscribers to a news aggregation service needed a licence from the NLA (which had enterprisingly devised a new form of licence to cover precisely this). Does merely following a link require the copyright owner's consent? And, in addition, do the end users need permission to receive the compilation of news items made by Meltwater (and, more particularly, what it contains, which includes headlines), and what if, being a PR company, the end user passes Meltwater News or its contents on to its clients?

The matter is going to the Copyright Tribunal, which has jurisdiction over licensing schemes, anyway, but it seems that there is enough bad blood between the parties (not including Meltwater, who undertook to pay for a licence anyway) to fuel a High Court case too.

The judge had to consider whether the activities of the end users are comprised in the grant of the licence to Meltwater. Interesting: this raises questions about non-derogation from grant, a useful fall-back when things get complicated (as in BL v Armstrong), exhaustion, and whether there is in fact only a single copy which is treated like a press cutting used to be in ancient times. Once Meltwater is licensed to provide services, its clients must be licensed to receive them - so the PRCA argued. But, given that when something is received in electronic form and passed on to clients there are unavoidably going to be more copies made - incidental and transient ones, true, but copies nonetheless - the end users couldn't rely on this analysis.

What does copyright protect here? The judge had to consider whether the headlines that were reproduced could be literary works in their own right. Were they, as the PRCA contended, integral with the articles themselves, in which case perhaps they would not be substantial parts of the works, or did they have an existence of their own? They did in Shetland Times Limited v Wills [1997] FSR 604, but that was a Scots case and only at an interim stage. Now, however, there's the Court of Justice decision in Case C-5/08, Infopaq, which at least lends weight to the argument that headlines are literary works and capable of being protected by copyright.

What about the websites' terms and conditions? There's precious little law on these, so this case is interesting for that alone. Generally, online newspapers prohibit access to their websites for commercial purposes - which involves, as the judge pointed out, an "element of circularity", because you have to access the site to read the terms and conditions. Not that anyone ever does anyway, but if everyone knows they say that, perhaps there's no need to read them. The judge was not impressed by the lack of authority and the fact that she was being asked to adopt a "broad brush approach" to this part of the case. The arguments presented contained inconsistencies, like that element of circularity, and in the end she moved on from the terms and conditions point leaving it hanging a bit.

There was however clearly prima facie (albeit technical) infringement of copyright. Did any permitted acts assist the defendants? Temporary copying? No, not here, because to be "enjoyed" by the end users something more than temporary copies were needed. Fair dealing for criticism or review or reporting current events? That was NLA's nemesis in earlier litigation ... However widely she interpreted "criticism and review", the judge declared herself unable to bring the defendants' activities under that head. "Reporting current events" did not appeal to her as an appropriate rubric to cover showing clients what coverage they had received in the media - it was not reporting to the public. In any event she seems underwelmed by the evidence adduced to support a defence under this head, as she had not been shown how the material was actually used.

Whatever was happening, it probably didn't constitute fair dealing anyway, the overriding test of which reporting current events and criticism and review are specific types. The scale of the use was too great, and the fact that end users could look at the headline and some text before deciding whether to access the whole article on the paper's site meant that they were detracting from the normal exploitation of the copyright works, which Berne, TRIPS and the Information Society directive all say makes it not fair dealing.

Then there's the acknowledgement point. The only thing the defendants could put up on that was the argument that the link served the purpose, like a footnote - but that can't have sounded very convincing even to them, and it certainly didn't wash with the judge.

So now we wait for an appeal or the Copyright Tribunal. It's good to have these matters out in the open, but they serve more to highlight the desirability of looking carefully at the fair dealing exceptions, perhaps with a view to introducing a true fair use exception, which is exactly what the government is threatening.

Here are links to an interview on paidcontent:UK with the CEO of Meltwater and with the NLA plus a piece on computerworld.co.uk.

European Parliament approves ACTA

The Anti-Counterfeiting Trade Agreement has been nothing if not controversial - once, that is, the world learnt of its existance. At first it was that most undemocratic-sounding thing, a secret treaty. The fact that MEPs were kept in the dark about it for a long time was reflected in the small majority given for it in the European Parliament, but now the Commission has a mandate to go to Sydney from 30 November to 3 December and agree to it. The EP still wants assurances from the Commission that it will not affect existing basic freedoms under EU law, which already exceeds international standards in this area. It seems that the latest draft wouldn't require any changes to law in the EU for this reason.

The agreement deals with enforcement of intellectual property rights and combatting online piracy and unlawful software. It will also deal with circumvention devices and software, which must form part of any joined-up approach to online infringements. It leaves it open to signatories to impose a three-strikes rule, though that is no longer mandatory as it was in earlier versions of the agreement.

The agreement has been negotiated between Australia, Canada, Japan, South Korea, Singapore, Switzerland, Mexico, the USA and the EU. The omission of China has been perceived as a significant weakness - likewise, I suppose, the absence of the other BRICs.

Enhanced co-operation the key to EU patent?

It will be a bad day when I don't learn at least one new thing. Enhanced co-operation is a new one on me, but it's many years since I purported to teach EC law (and wrote a book on it to help myself get to grips with the subject - not always the best reason to write a book, but it worked for me). They have messed about with the treaties since then.

The story (reported by Euractiv, who seem to have a hazy grasp of what patents are all about, as some people might say about me, here) is that a group of Member States, including the UK because this is a matter in which our government is comfortable being more coommunitaire than some, has decided to find a way forward with the project senza Italy. The problem with the EU patent has always been connected to language, and at one stage Poland put the kybosh on the project because of the language issue. It was thought then that the Polish stance was terminal, but this thing keeps bouncing back -  Italy (with suport from Poland) was unhappy with French, German and English being the official languages. (Incidentally, Euroactiv is quite wrong to call these the official languages of the Union!) Even Spain seems to have overcome its objections, perhaps having made its point.

Commissioner Barnier has promised a proposal on enhanced co-operation in this area for the Competitiveness Council on 10 December. It's only the seocnd time the procedure has been used - the other being last July, when 14 countries got together to agree simplied divorce rules for couples of differnt nationalities. Then Italy was on the side of the angels: this time its minister, the magnificiently-named Signor Pizza, argues that it will undermine the internal market. I can see that divorce rules lack the ability to do that.

If it is agreed on the basis of enhanced co-operation, it will need 9 Member States to go ahead with it. Approbal by a qualified majority in Parliament and Council would be required, too, but only participating Member States would be allowed to vote in Coucil.

Copying without infringing conference

It was, I'm afraid, over a week ago, but it has only recently occurred to me that I should provide a link to the nearly-live report of my talk at the Copying without infringing conference last week. Somehow Jeremy managed to blog the whole thing on the IPKat as the conference proceeded - not for the first time, either, although as he remarked to me it was the first time he had heard me give a talk - afterwards, when I asked, confirming that he hadn't been disappointed.

I should point out that I specifically said I wasn't going to quote from H2G2, taking my theme instead from Dirk Gently's Holistic Detective Agency ... so perhaps Jeremy wasn't paying quite so much attention. But that's nitpicking.

French for plagiarists

Who needs format rights? Here from Transparent Language's French blog is American talk show host (well, the show is American, he doesn't sound as if he is) Craig Ferguson drawing attention to the cloning of his CBS show by a French self-proclaimed “enfant de la télé”.

I draw this to your attention, gentle reader, for two reasons. First, it seems to me to show that there is no need for any special protection for formats, in such egregious cases as this. (OK, three reasons: I wanted an excuse to use the word "egregious".) To my mind, less egregious cases probably require no remedy - but I know others don't necessarily agree with that .... Second (or, now, third) because I happen to have heard Mr Ferguson's name many times in the last few months. He and I (and numerous others) share an enthusiasm for Stackridge, and he takes it so far as to perform The Last Plimsoll in his stage show - see the embedded clip, and Stackridge performing it at Cropredy a couple of years ago. The band - my clients, in a small way - have just been to LA to record it for him, their first visit to the States in their 40+ year history, and it will be broadcast in January.

But will they play it at the Borderline this evening? And will I be in the audience? Why not get along there yourelf and see ...

'Tis pleasant, sure, to see one's name in print

So wrote Lord Byron in English Bards and Scotch Reviewers, which I don't think was about whisky tasters, going on "A book's a book, although there's nothing in it".  There's not much of substance in my latest published work, a book review in the Journal of Intellectual Property Law & Practice (full reference 2010; doi: 10.1093/jiplp/jpq171, which can be found here though perhaps not unless you have a subscription) under the title The most penetrating of criticisms, which I found in Point Counter Point. No, I didn't, I found it on-line in some collection of quotations, but that's the same thing these days, isn't it? As it happens, I bought a complete set of Huxley at a village fete some 25 years ago. The vicar, a great friend though one I have lost touch with, complimented me on the bargain I had got. (I bought a Soft Machine LP, too, and still haven't made time to listen to it. Just as I haven't read Point Counter Point, or any of the others).

Even though there's not much in it, I hope it might bring a little amusement to readers - and illuminate the debate about copyright and parodies just a little.

Tip of the Day: Protecting book titles part II

If you can register a book title as a trade mark, you've put yourself in a very strong position. Copyright in the book will expire 70 years after the death of the author, whereas a trade mark can keep going for ever. However, a trade mark's life can be cut short if it stops being distinctive: the Registry's own examination guide explains that the name of Sherlock Holmes has been used over the years by too many traders for it still to function as a trade mark. It distinguishes Spiderman, which is not only the name of a fictional character but is also capable of identifying the goods of one trader. So, as with other trade marks, it's important to take care of book titles that you might wish to protect this way.
And other people might well have registered literary trade marks for their own purposes. "Ulysses" is registered in class 16 (the appropriate class for books) - but not by the Joyce estate: it's the trade mark of H-D Michigan, Inc., who also sell motorcycles and related goods. They own many more trade marks too, mostly showing the full name by which they are better known, Harley-Davidson. Should it ever come to it, the Joyce estate would have rights to carry on using the name for books, although whether that use would be considered trade mark use is a moot point. That does show the importance of checking for other people's registered trade marks before you choose a title for your book, though.

Face the music

Here's a report that Facebook, Inc., is joining the ranks of the absolutists - trying to, anyway - by registering FACE as a trade mark. Trademark, I should write, because it's in the US. It puts me in mind of Red Bull's RED Community trade mark - by which I mean, it's not actually their trade mark, it's part of it, and to register it as a trade mark is a bit of monopolisation that would be unjustified save for the compelling argument that if the law gives you the opportunity you'd be well-advised to grab it, especially before someone else does. So - IMHO - the law is wrong to permit this sort of thing.
Of course (he writes patronisingly - not intended to sound that way) in the US they have this sensible rule that you have to file a statement of use, and if Facebook, Inc. is using it only as part of FACEBOOK that won't (shouldn't be) possible. No such thing in the UK or EU - but it's about time there was (again, IMHO) to stop this sort of nonsense. I'll be writing to my MP about that - as soon as he stops making a fool of himself in the British Museum.

Community design infringement reference

On Class 99, Jeremy reports a reference in a designs case to the Court of Justice. It seems it's hard to track down, but David Musker has found a Dutch version and suggests using Google Translate on it. I did as he suggested, verified the translation (ha, ha) using Babel Fish and then tried a bit of guesswork, and came up with this:

C-488/10 Emparanza Celaya y Galdos International
November 19, 2010

The applicant (CEGASA) holds a community model for a bollard / column. It brought proceedings against the trading company Proyectos Integrales SL Balizamiento (PIB) for alleged violation of its rights. The defendant denies this because the traffic pole is a reproduction of a registered Community design in its name. Parties have for some time been discussing with each other about the existence of an infringement. PIB has always challenged, but changes made to the draft legal proceedings. Now CEGASA for the second time submit a request to amend PIB has refused to respond.

Regardless of whether the PIB column creates a different overall impression on the informed user from the applicant's registered Community design, the Spanish national court seeks further explanation of Article 19 of Reg. 6 / 2002, particularly as regards the term 'third'. It refers the following questions:
1. In a proceeding for infringement of a registered Community design exclusive right, does the right to prevent third parties to use it as provided for in Article 19, paragraph 1 of Regulation (EC) No 6 / 2002 of the Council of 12 December 2001 on Community designs extend to all third parties who use designs that do not give the informed user a different overall impression, or does a third party that uses a later Community design registered in his name as contrary not until that model not be annulled [or: does a third party who uses a RCD registered in its own name have a defence until that registration is annulled]?
2. Does the answer to the previous question depend on the intention of the third party, or will it vary depending on his behaviour, which shows that the third party has applied for and registered the subsequent community model after he had been requested by the proprietor of the earlier Community design after the product had been placed on the market to stop infringement of the rights attached to that older design?
Perhaps that's not much more helpful than the machine translations, and of course I might have introduced all sorts of errors of my own. Translated from Dutch into Double Dutch. But it sounds as if the Spanish court is asking whether it's a good defence to a RCD infringement action to say you're using your own registered design, and if so does it matter if that RCD was only applied for after the defendant was told by the senior rights owner that it was infringing? Put another way, perhaps, should the claimant have attacked the junior registration first? That might have been a better way to deal with the matter.
UKIPO wants comments by 29 November, which is difficult if you can only read it in Dutch - there's still nothing on the Curia website.

Tip of the Day: Protecting book titles

A friend asked me today about protecting a book title, and it's a good subject for a general tip. Book titles - and similar things, such as song titles - won't usually be protected by copyright. A great deal of thought might go into them, but it's not enough to make them original literary works. But the law of passing-off might give them protection, and they might be registrable as trade marks. A bit of lateral thinking might well get you the protection you hope for.
Trade marks are, however, supposed to be badges of origin, and book titles aren't. They often refer to what's in the book rather than indicating the commercial source of the book, which is usually done by identifying the publisher separately or in the name of a series, such as the Rough Guides. As trade marks, titles that describe what the book's about will be pretty useless.
With time, a descriptive trade mark can become registrable: it might also be protected under the law of passing off. Marketing activities and evidence of sales revenue will help show that the title has broken through the barrier and acquired the features of a trade mark. So too will ancillary products, commercial spinoffs, and merchandising: they might exist at a distance from the book, but they will help make the title an indication of origin. "Gone With The Wind" has been a UK registered trade mark since 1993, "The No 1 Ladies detective Agency" since 2004, though that title could be considered to have attached itself to a series of novels.

Colour combination: Deutsche Bahn does not have exclusive rights

In cases T-404/09 and T-405/09 (12 November 2010, reported here by Class 46) the General Court has confirmed that the criteria applied for assessing the distinctive character of colour trademarks is the same whether the proprietor is supplying goods or performing services. It rejected Deutsche Bahn’s argument that the supply of services does not inherently involve the use of a colour, so the colour performs no function in connection with services and colour trademarks can therefore be registered (see case T-173/00 KWS Saat AG v OHIM).

The Court decided that the two colours lack distinctiveness individually, and in combination they presented no perceptible difference from the colours commonly used for railway services. As the OHIM Board Appeal had noted, light grey is commonly used for technical equipment used on railways, and red is used for warning signs and other situations in which the aim is to make people notice something, including advertising. The Board of Appeal also noted that grey could be seen as dirty white, the combination of which with red is commonly found on barriers and similar devices, including those at railway crossings. Looked at overall, red and "dirty white" was functional, not an indication of the origin of the services.

Local significance?

Article 8(4) of the CTM Regulation tells us that relative grounds for refusal of registration of a Community trade mark may exist where a senior user has common law or similar rights. Those rights, however, must be "of more than mere local significance". Only the European Community could have come up with such a vague expression, and used it in legislation. What is it supposed to mean?

In Case T-318/06 to T-321/06, Alberto Jorge Moreira da Fonsecal OHIM - General Optica, the General Court thought that an assessment of this condition required a consideration of not only the geographical dimension but also the economical dimension of the sign's significance, in the light of how long the sign has fulfilled its function in the course of trade and the degree to which it has been used.

Case T-430/08 Grain Millers, Inc. v Office for Harmonisation in the Internal Market involved opposition proceedings between Grain Millers GmbH & Co. KG and Grain Millers, Inc. The opposition succeeded, and the General Court rejected Inc’s appeal. Arguing that the General Court failed to follow that earlier case, the applicant has appealed to the Court of Justice (Case C-447/10 P). It contends that the General Court had erroneously held that Article 8(4) does not require proof of genuine use of the sign in support of the opposition, as required by Article 43(2) of the Regulation.

The CTM register, and national and regional trade mark registers, are becoming more crowded all the time. The stock of available trade marks is becoming depleted. It is already hard – perhaps too hard – to obtain registration in the face of local or distant oppositions, one of many ways in which the trade mark system of the European Union is failing businesses. This is another aspect of the problem highlighted in the Pago case (reputation in one Member State) and (on the other hand) ONEL in Benelux and City Hotel in Hungary. The court’s view will be eagerly awaited – and perhaps this is a subject for the Max Planck Institute too?

I'll be coming back to this topic - it might be heretical, but I'm on the side of Benelux and Hungary.

EU trade mark study extended

The Max Planck Institute is currently carrying out a study on the functioning of the trade mark system in the EU, at the behest of the European commission. It was originally given a year in which to report: that expired yesterday, and it has been granted an extension - rather appropriate, given the importance of extensions in the trade mark world - of a month.

I am keen to see what it says about some of the pressing issues in the trade mark world: whether use of a Community trade mark in only one Member State is sufficient (I hope it will be deemed not sufficient, as the Benelux and Hungarian offices have decided, but I fear that pro-integration correctness will prevail over common sense), whether a Community trade mark will be deemed to have a reputation if it is largely unknown except in one Member State (another situation in which the national trade mark system is the one that should be engaged), and lots of other exciting things.

I am not holding my breath.

The perils of naming new cars

Bamboo and Bees, a French business law blog that I don't read as often as I should, reports on a matter that I'd been vaguely aware of - the trouble Renault have run into as a result of a decision to call their new small car Zoé. Not, presumably, to be confused with Zoë, or even Zoe (sans accent). What about the dignity and image of members of Renault familes (of which there are many in France) a member of which might have been given the forename Zoé? Two such families took the car manufacture to court recently, and had the case thrown out.

B&B's report says that this was the juge de référés, who is a judge of fact or evidence, which sounds as if it might not actually be his or her job: and the cases were thrown out because the families had chosen the wrong jurisdiction.

B&B then explains in some detail the jurisdiction of the référés, which is supposed to be for cases of urgency. The cases were brought under Article 809 of the Civil Procedure Code, which is a conservatory jurisdiction - designed to prevent threatened damage occuring. The parties argued that there was imminent damage, in the form of the risk of mockery, attacks on the dignity of the Zoé Renault, and a breach of the principle that forenames are for humans. Renault argued that they had been using the name, sans accent, for some years, and that there wer plenty of other examples of forenams being used as product names. This, they argued, negated any urgency in the case, which was all they had to do.

The families' lawyer says they will appeal - so we haven't heard the last of this yet.

TfL monopolises Routemaster bus design

It seems from reports that TfL (that's Transport for London, in case you haven't encountered it before: the successor body to London Transport, so I suppose it had to distinguish itself somehow) has applied to register the design of the new Routemaster bus that's supposed to be on our streets, replacing those horrible, completely unsuitable and lethal-to-cyclists "bendibuses", in 2012. Why?

What does TfL need registered design protection for, and how can it justify taking the rights in a design created by a participant in a competition? It's not an in-house design: if it were, that would make the situation a little more understandable. I expect the terms of the competition insisted on an assignment of all rights - I have drawn up competition rules containing such a clause, though not on this sort of scale - but, again, why? Because everyone believes in the magic properties of intellectual property, and are determined to have as much of it as possible.

Mayor Boris thinks that there will be demand from elsewhere for these new buses, so TfL should be able to earn some nice royalties. Some commentators seem to doubt that: other cities are a bit more suited to bendibuses, for example. What if someone starts making a bus that looks like the Boris Bus (as it might yet be called), so similar that it doesn't create a different overall impression - TfL will sue for infringement of their registered design, I suppose, and perhaps fares will have to go up to fund the litigation. Either that or they'll have to take out before the event insurance, and the fare-paying public can pay the premiums.

Why didn't they leave the rights with the designer, and let him enforce them if anyone should happen to make a lookalike double decker bus (no small undertaking, I imagine!). Then they might have struck a better price for the work, given that the designer has the expectation, however optimistic, of selling the design elsewhere.

Why are emanations of the state such as TfL paying good money to collect intellectual property rights anyway? If the design work has been paid for by the public, what's the justification for enclosing it, bringing it into a form of private ownership? To enable TfL to exploit it? But TfL should get on with the task of running an acceptable level of transport services in London, not indulge in some ridiculous sideshow. They need to keep their corporate eye on the ball. It's like those Royal Marine Commando Community trade marks I commented on a while back, or the re-branding of the Patent Office - all completely unnecessary, and done (I imagine) at the taxpayer's expense. What we need to protect matters like those is something like Canada's "official marks" - the Patent Office already had something rather like that, which was almost surrendered when they rebranded. That deals with the need for these public bodies to register trade marks: as for bus designs, I see no justification whatsoever.

There's one ray of light, though. To be validly registered, the new design has to make a different overall impression compared with the prior art. It looks so like a real, much-lamented Routemaster that it might well fail to clear that hurdle.

Initial interest confusion comes to the UK

Initial interest confusion has always, since I first came across it in the Movie Buff case (Brookfield Communications, Inc v West Coast Entertainment Corp 174 F. 3rd 1036 (9th Cir., 1999)), appealed to me as a useful extension of trade mark protection. If you lure someone to your business by making a reference in some way to another's trade mark, you have at least got part of the way to taking a customer off that other trader by means of a deception. The deception stops there, but you have taken advantage of the other trader's trade mark to get that far, and that isn't fair - especially when the other trader is a competitor.

Since then trade mark protection has grown in so many ways, many of them quite regrettable beside IIF, but in the Google Adwords case the Advocate General was adamant that there was no such doctrine (though he didn't mention it by name)  in European Union trade mark law (nor, if it is a different thing, in the approximated laws of the Member States). Now, however, it seems that the English courts have imported it anyway, in Och-Ziff Management Europe Ltd & Anor v Och Capital LLP & Anor [2010] EWHC 2599 (Ch) (20 October 2010). The claimants are part of an asset management group and the defendants are an independent investment house. The claimants have Community trade marks, while the defendants have adopted their founder's nickname as the "trade marky" part of their corporate name. Some people might be able to distinguish the services they provide, but they could be lumped together under the heading "financial services", which is enough to raise a likelihood of confusion. But the claimants argued that they didn't have to prove a likelihood of confusion in the normal way, but only had to show initial interest confusion.

The judge - Arnold J, waiting patiently for the CJEU to answer his questions on Adwords in the Interflora v M&S case - carefully fits the case into the existing body of case law, referring to English, Irish and European Union cases. Even so, to have an infringement where the likelihood of confusion is dispelled before a transaction takes place, so the customer is in no doubt about with whom he or she is doing business, is a radical step. In the real world it might have its applications, but online it is revolutionary - and the very opposite of what the Advocate General suggested in the Google France case. There has, however, long been a "bait-and-switch" doctrine in English trade mark law, so perhaps it's not Arnold J who is being revolutionary, it was the Advocate General and Arnold J is the counter-revolutionary. Anyway, it's likely to be in the field of Internet searches and keywords that the doctrine finds its application, and it will bring a whole new dimension to trade mark infringement.