Copyright is slippery stuff

It can be tricky to work out who has what rights, as a report in The Guardian last week makes clear. The BBC had to halt the planned transmission of a new television adaptation of John Braine's novel, Room at the Top, after a problem emerged over the broadcasting rights. Hardly surprising that this sort of thing can happen, given that copyright is not a type of property that is recorded on a register. As the article explains, copyright owners can hand out licences and options as the mood takes them, and it becomes impossible to work out whether the rights you think you've acquired now are actually worth a thing.

Perhaps the surprising thing is that this doesn't happen more often. In the US, copyright owners and their heirs are given a chance to take back rights that might have been unwisely alienated at some time in the past (see this article by my good friend Lloyd Jassin). The Intellectual Property Foresight Forum has suggested to the Hargreaves Review that there should be a 10-year reversion rule so copyright comes back to the author or his or her heirs. The Forum's paper (written by Prof Martin Kretschmer) observes that a 10-year investment horizon for the cultural industries is quite generous. It certainly seems as if it might have saved the BBC some problems.

Advocate General rejects Belgian file-sharing law

Last week, in Case C-70/10, Scarlet Extended SA v. Société Belge des auteurs, compositeurs et editeurs (SABAM) Advocate General Pedro Cruz Villalon has indicated that an ISP cannot be obliged by national law to block users from illegal file-sharing. A Belgian measure ordering an ISP to install a system for filtering and blocking electronic communications in order to protect intellectual property rights in principle infringes the Charter on Fundamental Rights, in the AG's opinion.

The Court's press release contains more information and the Opinion (in French only) is here.

Using trade marks to fence off the commons

Some IP owners seem to be insatiable. That modern copyright law has been adapted to serve the purpose of corporate interests is trite - why else would the United States have a piece of legislation known colloquially as the Mickey Mouse Protection Act? And why would we be considering increasing the duration of protection for sound recordings in Europe, to avoid the obviously undesirable consequence of early Elvis recordings losing copyright protection? (And what about Kind Of Blue?)

Here is news that Disney is trying to obtain a trade mark (actually a US one, so "trademark") for PRINCESS AURORA. She's a character in Sleeping Beauty, and seems to have been since 1697, but of course that makes no difference for trade mark purposes. In a similar vein, The True Snow White - a site set up to promote a new book telling the old story - rails against Disney's applications to register the heroine's name as a trademark, although it seems to be a bit late - the US register seems to have quite a few Snow White trade marks on it, not all Disney's. Ron Coleman has a posting about the same matter on his Likelihood of Confusion blog.

As I have said, and written, before, the problem isn't with the large corporations that are filing these applications to enclose what everyone believed to be in the public domain. It's a form of evergreening, though it has more to do with bringing back to life intellectual property which has been dead for years - perhaps never lived to begin with. The fault lies with the laws that allow this sort of thing to happen, and if protection of this nature can be obtained it's no surprise that corporate trade mark owners avail themselves of what is on offer. Failure to do so could be a failure by the directors of the company to do their duty, and shareholders could become understandably upset - especially if someone else grabbed the property because the "right" owner hadn't done so themselves.

The fallacy in this argument is, however, that the reason the law permits this sort of thing to go on is because those same corporate IP owners have persuaded the legislature that it should. There is, I think, a simple answer to this problem - and problem it certainly is, because it leads to foreclosure and depletion in the trade mark field and has chilling effects on creativity - which is to force the trade marks genie back into the bottle labelled "indication of origin". Let trade marks do what they were designed to do, and stop this excessive, harmful monopolisation. There's a lot of anger about concerning the excessive strength and reach of copyright and patents - it is high time the trade mark system came in for the same criticism. And we ought to get started on designs, too.

February podcast now available

The February edition of the IPso Jure podcast is now available in the usual way - along with the notes. It includes:

• Various Advocates General’s opinions in the FA Premier League case (about territorial licensing), Nokia (about the counterfeit goods regulation) and Budweiser (about acquiescence) 
• The Court of Appeal reversing the summary judgment in Virgin v Delta – the airline seats patent case 
• The High Court on PLAY DOH and (in another case) on misleading advertising and (in yet another case) on post-sale confusion 
• The Patents County Court refusing to allow the claims in the Media CAT litigation to be withdrawn, on the grounds that it would be an abuse of process 

Can anyone confirm how to construct the possessive form of the plural of Advocate General?

Details of how to subscribe available by following the links on this site.

Fair use? Don't confuse matters!

An article in the Independent this morning (available here) challenges received wisdom about the Hargreaves Review's job. Coverage of the Review has given the impression that it was set up to foist fair use on us, whereas it seems that not all of the small businesses that the government is trying to encourage - by reforming copyright law and designating the area around my firm's office as a centre for all things digital - it hardly qualifies as Silicon Valley, and Silicon Roundabout doesn't have quite the right ring to it. "East London Tech City" somehow doesn't sound like a desirable destination. Just plain Hoxton or Shoreditch seems to have quite enough kudos nowadays.

Anyway, when the PM announced the new initiative (in the old Trumans brewery in Brick Lane) he remarked that Google couldn't have contemplated starting their business in the UK because of the copyright laws. Strange, because they aren't exactly beyond the reach of UK copyright law anyway. Or any other country's copyright law. But they are so big, perhaps, that it's not want the law says that matters, more the way Google want to deal with it. Which might be the same as saying that by constantly challenging existing copyright laws Google is keeping up the momentum of reform.

All this talk about reusing other people's work depresses me. If it's so like someone else's work that there might be a copyright problem, it should be discouraged. People can create their own stuff that tips its hat to others' works, but even parody and caricature is possible without running the risk of copyright infringement - indeed, it's better for it, surely. If the copyright owner feels he or she has a claim for infringement, that might indicate that the rules about infringement need attention, not that we should carve out a huge copyright-free "fair use" area. Perhaps the Court of Justice's Infopaq judgment, raising the originality test to the heights of "author's own intellectual creation", will bring about the necessary changes.

Which isn't to say that the present exceptions can be left alone. They are too vague and not well-enough understood (as I noted a while ago in connection with Ben Goldacre's problems with LBC): they give the absolutists too much power. Which brings me to the point in the Independent's story that really caught my eye: a business set  up to help academics share and manage research papers online, which has problems with universities owning copyright. It seems to me there's a very simple solution there: these universities are, in this country at least, substantially funded out of the public purse, and I believe the same is true of other countries too - even in the US many universities are public ones. By what right do they claim to be entitled to exclusive rights in the work for which the taxpayer has paid? The same paradox in the field of Crown copyright was addressed some years ago - the minister responsible for it being David Clark, whose seat in Parliament I once tried to take from him and came closer than he probably expected - and if universities' copyright is a problem now, let's do something about it. Stop at least one group of absolutists!

Sub-prime patents

An interesting critique of the US patent system and inflationary trends, from The Independent by Stephen Foley, its Associate Business Editor. I like the expression "sub-prime patents", and also "Mutually Assured Litigation" though it's a shame the original acronym couldn't have been preserved. Still, especially for French-speakers, MAL isn't half bad.

Statutory definitions

There are no fewer than 20 definitions of this expression on the statute book, none of them in a statute devoted to intellectual property. They are listed in Gray v News Group Newspapers Ltd & Anor [2011] EWHC 349 (Ch):

i) Section 8(2) of the Atomic Energy Authority Act 1986. 

ii) Section 92A(9) of the Building Societies Act 1986. 

iii) Section 88(10) of the Clean Neighbourhoods and Environment Act 2005. 

iv) Section 861(4) of the Companies Act 2006. 

v) Section 712(3) of the Corporation Tax Act 2009. 

vi) Sections 129(2) and 29(6) of the Finance Act 2000. 

vii) Section 8(3) of the Forestry Act 1967. 

viii) Section 9(1A) of the Income and Corporation Taxes Act 1988. 

ix) Sections 195(6) and 306(6) and 536(4) of the Income Tax Act 2007. 

x) Sections 456(1) and 19(6) of the Income Tax (Earnings and Pensions) Act 2003. 

xi) Section 579(2) of the Income Tax (Trading and Other Income) Act 2005. 

xii) Section 15 of the Law Reform (Miscellaneous Provisions) (Scotland) Act 1985. 

xiii) Sections 33B and 35(3C) of the National Heritage Act 1983. 

xiv) Section 72(5) of the Senior Courts Act 1981. 

xv) Paragraph 2 of the Personal Accounts Delivery Authority Winding Up Order 2010/911. 

xvi) Paragraph 9(6) of the Overseas Companies (Execution of Documents and Registration of Charges) Regulations 2009/1917. 

xvii) Paragraph 2 of the Scientific Research Organisation Regulations 2007/3426. 

xviii) Paragraph 1(2) of the Education (Qualifications and Curriculum Authority and Qualifications, Curriculum and Assessment Authority for Wales) (Transfer of Property and Designation of Staff) Order 1997/2172. 

xix) Paragraph 5 of the Employment Tribunals Extension of Jurisdiction (England and Wales) Order 1994/1623. 

xx) Paragraph 5 of the Employment Tribunals Extension of Jurisdiction (Scotland) Order 1994/1624.

One day I will work through them and see what they all say. Numbers iv and xiv are quoted in the Dictionary.

Trolls becoming respectable?

An IP bank is being set up in Taiwan, reports Taiwan Focus. It won't merely help fund defences against infringement claims - increasingly, the report says, one way in which businesses compete with each other - but will buy up patents and either licence or sell them to Taiwanese businesses. It seems like an entirely laudable enterprise - and it shows just how complicated is the whole non-practising entity/Troll thing. There is no "bright line" test to tell good from bad, although it's usually not difficult to work out which is which.

And perhaps we need another term to apply to IP owners who engage in litigation in the ordinary course of business - as part of competing, perhaps making life difficult for the other side, rather than for the sake of protecting their important assets. Another instance of IP becoming an end in itself rather than a means to an end.

Copyright in a 23-word listserv message?

Only if it's highly original. A California court made clear that there's no copyright in a short listserv posting, in  Stern v. Does, 09-cv-01986 (C.D. Cal.; Feb. 10, 2011) (see Eric Goldman's blog here) which merely sought information about others' experience of a firm of forensic accountants. It took the court 30 pages to do so, a degree of thoroughness that seems disproportionate to the triviality of the claim. The point is made that the first stanza of Jabberwocky (not, as the Goldman blog says, the whole poem) comprises 23 words but displays more than enough originality to qualify for the protection of the copyright laws. I can't imagine an English court would approach the matter very differently - indeed, if a copyright work must be its author's own intellectual creation (per the (EU) Court of Justice in Infopaq) a claim like the one in this case would be a complete non-starter.


As the court said, though in the original with the translation in a footnote, “He will win who knows when to fight and when not to fight.” Sun Tzu, The Art of War 32-33(Lionel Giles trans., Ulysses Press 2007). Perhaps there might even be copyright in a 13 word sentence. Perhaps more important in this day and age, a 57-character sentence. 125 characters (by my count) in the first stanza of Jabberwocky, suggesting there's every reason to believe that copyright can subsist in a Tweet: the listserv message in suit would require a little condensing as it comes in at 152 characters. So, one-fifth longer than Lewis Carroll's fragment but without much more that an iota of originality.

The blogger, Venkat Balasubramani, observes:

A court will not argue with an artist over whether something he or she did was sufficiently creative. Are courts more likely to do this when it comes to written material?

I think that depends what you mean by "artist". The use of that word implies a greater degree of originality - a stronger claim to copyright protection - than anyone's doodle. My creativity in the artistic field is probably on a par with the literary creativity shown by the plaintiff in this case, but I would not consider myself an artist nor would I have the nerve to claim copyright in my "work". No need that I can see to apply different levels of creativity in those two fields.

How long does it take for prior art to become common general knowledge?

Merck Sharp & Dohme Corp v Teva UK Ltd, [2011] EWCA Civ 382 is a case in the Court of Appeal for England and Wales concerning the validity of a patent for an invention for treating glaucoma. Last Thursday the Chancellor of the High Court, Sir Andrew Morrit, handed down his judgment with which Richards and Patten LJJ agreed. At first instance, Floyd J had held the patent invalid for obviousness and for containing added matter ([2009] EWHC 2952 (Pat)). Only the obviousness question was before the Court of Appeal.


The problem was that the prior art that appeared to make the claimed invention obvious had been published only six days before the priority date. The appellant based its argument on the superficially logical and attractive proposition that this wasn't long enough for the skilled person (in this case a team) to do anything with it. In determining whether there is an inventive step the judge must assume the mantle of the skilled addressee - and if he did so, MS&D argued, he would still have been blundering about in the dark trying to make sense of this latest piece of art when the application was filed. (The fact that the paper in which the prior art was published was written by a team three of whom were connected with MS&D doesn't seem to have made any difference.) The Chancellor rejected this approach, saying at para 36:

There is no additional time requirement… If by reference to the relevant state of the art the invention is obvious then it matters not that it may take time to perform the necessary routine tests. It is a matter of simple comparison between the relevant art and the claimed invention.

The rules governing who can get a patent for an invention are necessarily a little arbitrary. The "first to file" rule involves a bit of tough justice - but no workable alternative would be any better, although some might prefer the uncertainty of "first to invent". The novelty test doesn't look at what the inventor actually knew, or even what he or she (or they) might reasonably have known: what matters is what is in the state of the art.

But when it comes to inventive step, it is a matter of considering the skilled addressee's knowledge. Importing the notion of the skilled addressee necessarily means that not everything in the state of the art is relevant. Perhaps on the facts of this case it made no difference that this piece of prior art would take some time to percolate through to the notional skilled addressee, but it seems to me that in determining what that person might know the time it could take to assimilate some new learning might logically postpone the inclusion of that learning in the individual's knowledge, and to deem that to happen immediately is a bit of rough justice too far.

European Commission to propose unitary patent protection for Europe

As baffling as having two football database cases proceeding in parallel is the whole Community patent thing. UPLS is dead in the water but the Community Restricted Area Patent (per the IPKat) lives on, now under the official title Unitary Patent Protection (UPP, not nearly as good as CRAP) subject to the previously almost unknown enhanced co-operation procedure. Conor Maguire, of Brussels Matters Ltd, drew my attention (and the attention of many others on LinkedIn!) to the following, which I have extracted from the Commission's Agenda:

On 13 April 2011, the European Commission will present proposals for a unitary patent protection for the EU and the applicable translation arrangements under enhanced cooperation. 

The proposals will ensure that:

• The holders of European patents can apply for one single patent protection for the territory of 25 Member States at the European Patent Office (EPO); this will ensure the same level of protection for the inventions for 25 EU countries.
• Patent applications can be submitted into any official language of the EU. However, building on the EPO's existing language regime, the applications continue to be examined and granted in English, French or German. The patent claims, defining the scope of the protection, will have to be translated to the other 2 official  languages of the EPO.

The background:
...
Commission proposals for a unitary patent protection have been under discussion for over a decade, but there has been stalemate in the Council over language rules. The Commission tried to unblock this with its June 2010 proposal on the EU Patent’s language requirements (see IP/10/870). However the EU's Council of Ministers was not able to find a unanimous agreement on this. Under a proposal from the Commission (see IP/10/1714), 25 EU countries have decided to move forward on this issue. At this stage, the two remaining countries, Italy and Spain, do not wish to participate but they have the possibility to join in the future.

Unreliable Evidence on Intellectual Property

I listened with interest to Clive Anderson's programme, Unreliable Evidence, on the subject of intellectual property: it's available on the BBC website here. My good friend Filemot has written it up on the SoloIP blog too.

It was an interesting tour d'horizon of the IP world, and did well to bring out the diverse nature of intellectual property rights instead of making the usual media mistake of treating it as a single subject. Clive Anderson's previous career at the Bar no doubt helped. I have always found him faintly irritating as a presenter, but I enjoyed this programme - and will listen to more in the series, if I remember.

His guests were an interesting bunch too, particularly Michael Fysh QC who several times sought permission to introduce something that was in danger of being overlooked - "Can I put in a word for the law of passing off?" The revelation, which I find a little hard to believe, that when he started in practice the Patent Bar comprised himself, Robin Jacob (as he then was) and Max Moseley, was worth listening for the whole 45 minutes for.

One point that merits further research - section 40 of the Patents Act was attributed (blamed on or credited to, whichever you prefer) the then Labour government. Surely it was not a government initiative at all, but the work of the late Lord Lloyd of Kilgerran? Maybe someone will read this and tell me ... Given the criticism there has been recently of that case (Jacob LJ in Shanks v Unilever, with his reference to Thomas Blanco White's comment about "sewing the fly buttons on the statute - and come to think of it wasn't Blanco White at the Bar when Michael Fysh started? Was he only listing the juniors, perhaps?) the world should be told who created it. Or is the world going to be interested?

Football Dataco v Sportradar: jurisdiction

Because the point in this case about jurisdiction, which lies at the heart of the questions referred to Luxembourg, is rather illuminating (and the light it sheds is on what is to me a rather dark corner of EU law), I thought it worth elaborating as a separate posting. Article 27 of the Brussels Regulation (44/2001/EC) provides that:

"1. Where proceedings involving the same cause of action and between the same parties are brought in the courts of different member states, any court other than the court first seised shall of its own motion stay its proceedings until such time as the jurisdiction of the court first seised is established.
2. Where the jurisdiction of the court first seised is established, any court other than the court first seised shall decline jurisdiction in favour of that court."

Jacob LJ referred to Article 27 of the Brussels Regulation and subsequent case law which showed that for this Article to apply three identities had to be present: the same parties, the same cause and the same object. These had wide meanings, not narrow meanings as the defendants had argued. He also held that the English court had jurisdiction under Article 5(3) of the Brussels Regulation too, being the place where the harmful event in the claim for joint-tortfeasorship occurred.

The trouble with databases

The first problem I have with databases at the moment is that there are two cases going through the courts, both of which have produced references to Luxembourg from the Court of Appeal, and in both of which the first claimant is Football Dataco (and the other claimants are mostly the same, too). Football Dataco Ltd & Ors v Yahoo! UK Ltd & Ors [2010] EWCA Civ 1380 is the first and Football Dataco v Sportradar [2011] EWCA Civ 330 the second: the expeditions to Luxembourg began respectively on 9 December last year and 29 March this year.

Of course, that's not the only trouble with databases. Other problems stem from the uncertain language used in the European Community's directive on the legal protection of the things, 96/9/EC, implemented in the UK by the Copyright and Rights in Databases Regulations 1997 (SI 1997/3032). The directive harmonises copyright protection for databases by requiring that to secure protection they must, "by reason of the selection or arrangement of their contents, constitute the author's own intellectual creation". Whether the stuff in the database is protected by copyright doesn't come into it: the directive gives that stuff no protection, though it might well have it anyway, and the directive (Article 1(2)) defines a database in terms that envisage a collection of material that has its own copyright protection as well as mere data that don't (and always remember, dear reader, that "data" is a plural, and resist the process by which usage is making it a singular noun, because where would that leave the word "datum", as in "Ordnance Survey Datum" and how would we then know whether sea levels were rising?):

... a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means.

In Case C-444/02, Fixtures Marketing Ltd v Organismos prognostikon agonon podosfairou AE (OPAP), the Court of Justice held that "independent" means "separable from one another without the value of their contents being affected", or alternatively (and it is not clear where the Court got this from, and it doesn't appear in the ruling at the end of the judgment) it means that the data have "autonomous informative value". Given that all these cases involve databases of football fixtures, let's be specific: there are dates, times, and names of teams in the database, along with venues perhaps and in due course scores (though at the stage in which the gambling industry is concerned those are obviously in the future).

So, I think it's fair to say that date, time and teams constitute independent materials when taken together. What isn't clear from the Fixtures Marketing case is whether that material constitutes data, but it's hard to see what else it might be. It's certainly not copyright works, and once the directive had specifically enumerated works and data the addition of other materials seems to serve little purpose - other than to allow the Court to leave us partly in the dark at this point.

What also isn't clear is whether the date, the time, and the teams are themselves data or  materials, and if so (and surely they have to be one or the other) whether they are independent. They have autonomous informative value, surely, although taken singly they convey no information about actual football matches.

In the Yahoo reference, the Court of Appeal asks whether the intellectual effort and skill of creating the data should be excluded when applying the "own intellectual creation" test. However, that test looks at selection and arrangement rather than creation per se - so there's a subtext here, with the court asking whether the creation of data (and perhaps it should have said "independent data", although it has left it open for the Court of Justice to elaborate on the difference) might constitute selection and arrangement. How about: selecting and arranging odd little bits of data with no autonomous informative value of their own, like dates and names of teams, so as to create what the Court of Justice has identified as independent data, can satisfy the test? There's a further complication, because the legislation talks at one moment about contents and at another about independent data, but I see no insuperable problem there - the database contains independent works, data or other materials (and the adjective seems, on the basis of the Fixtures Marketing case, to qualify all three nouns). But if it contains independent data it must logically contain non-independent data too, so perhaps the question boils down to whether selecting and arranging the non-independent data so as to create independent data can satisfy the "own intellectual creation" test.

Then finally there's perhaps the most important question of all:  "does 'author’s own intellectual creation' require more than significant labour and skill from the author, if so what?". In Case C-5/08, Infopaq International A/S v Danske Dagblades Forening, the Court of Justice stated that a work would only be protected by copyright if it was its author's own intellectual creation, a proposition which it took not from Directive 2001/29 but from the simple use of the word "work". That seems a shallow foundation on which to build a challenge to a fundamental principle of copyright law - but perhaps it will cut back some of the excesses of copyright protection that have grown up in the recent past. Crucial to determining what the scope of this newly-found requirement is, will be the answer to that question. If the "author's own intellectual creation" test is more rigorous than what we are used to in the UK if not elsewhere (as it surely must be) the answer to the Court of Appeal's question will show us the future of copyright law.

The Sportradar case involves another part of the directive, the one that created a sui generis right to protect databases - which in the UK we called "database right", the use of legal Latin being malum prohibitum. (But calling it a sui generis right, using a generic term for a particular example of the genre, is so extraordinarily unhelpful that one has to prefer the UK's approach.) The right covers unauthorised extraction and re-utilisation of the contents of the database, and re-utilisation means "any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies, by renting, by online or other forms of transmission" (Article 7(2)(b)). The key issue in the case is jurisdiction, as there are proceedings on foot in Germany and the UK, and where the contents of the database are being made available determines which court can proceed with the case: is it Austria or Germany, where the servers are situated, or the UK where punters log on to the Internet to interrogate the data on the servers?

"Making available to the public" is also an important concept in copyright law, so the answer to this question will be important for more than just database right - and might be as revolutionary for the copyright system as the earlier question about intellectual creations.

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.