Bloggers need to take due care to avoid writing anything defamatory - it's certainly something that I worry about, and which constrains me sometimes from publishing what I really think. But if I merely report what other people are writing, and link to the source material, will I have a defence? Perhaps, if I am careful about exactly what I say ... Eric Goldman reports on his internet law blog a California case which deals with this very issue. Well worth reading, even if (a) the case is unreported and (b) it won't necessarily cut much ice in the UK anyway.
Sunday, 12 August 2012
South Africa: design protection for car spares (or not)
Reading a case about protection of designs for car spares takes me back to the days of my youth. There haven't been enough since BL v Armstrong. But you have to go quite a long way to find them these days: this one comes from South Africa, whose Designs Act no 195 of 1993 (available here, from the Japan Patent Office, oddly enough) is another exercise in nostalgia: there are many phrases that bring back fond memories of the original version of the Registered Designs Act 1949, on which presumably it was based. One important thing about the South African Act, though, is that it protects both aesthetic and functional designs, with different criteria for protection of the two categories. The requirements for protection of functional designs will also ring bells for readers familiar with Part III of the Copyright, Designs and Patents Act 1988 (and who isn't?). It's a real trip down memory lane. The most significant thing is that there is an exclusion from protection for functional designs where the article is a spare part (section 14(6)).
Like us, the South Africans have been wrestling with the problem of intellectual property protection for spare parts for some time: three decades, according to the AfroIP blog, starting with a boat-building case called Schultz v Butt 1986 (3) SA 667 (A) in which the defendant used a hull made by the complainant to make a mould from which to make hulls which it then sold in competition with the design owner, a case which might be considered to be rather clear-cut. The most recent case dates from 25th ultimo.
That case is BMW AG v Grandmark International (Pty) Ltd and another [2012] ZAGPPHC 139 and the judgment of the North Gauteng High Court, Pretoria, should you wish to read it in all its glory, is available from the South African Legal Information Institution, the equivalent of BAILII, here. There's a claim that the defendant was in contempt of an earlier court order, plus claims of registered design infringement and trade mark infringement. It's the design claim that's interesting, as the contempt case seems to have gone off at half cock and the trade mark case was defeated, ironically, by earlier cases in which BMW was the claimant.
Four registered design for the model known by its BMW code as the E46 but better known as the 3 Series (fourth generation, 1998-2005) were involved. This model was assembled in eight places around the world in addition to Munich, including a site in South Africa, where BMW has been the favourite premium brand of car for some time: in 2012 it held 7.9 per cent of the overall market, 33.9 per cent of the premium segment, so there's a significant parc of BMWs needing spares.
The registrations were for aesthetic designs, namely a bonnet, headlight, grill and fender [sic]. Surprisingly, the court took the view that the designs were in fact functional, and that they had been craftily registered as aesthetic designs just to circumvent section 14(6). How could that be? The court applied what a scholar of our 1988 Act would recognise as a "must-fit" and "must-match" analysis, and concluded that the designs all served a specific purpose – they had to look and fit a certain way to serve their purpose. The Act defines a functional design as one ""having features which are necessitated by the function which the article to which the design is applied, is to perform" - language more related to the concept in our law of "dictated solely by function" than the "must-fit" and "must-match" exceptions. I don't find it very convincing - but not being a South African lawyer, what I think probably doesn't count for a lot.
Moreover, the court decided that the designs failed the novelty test applicable to aesthetic designs, because they were anticipated by previous designs for BMW body parts. They were nothing more than developments of previous BMW body part shapes. That approach could deprive the vast majority of designs for spare parts, especially visible ones, of protection. But it sounds as if there will be an appeal - there almost has to be, given what's at stake - so perhaps we'll learn in due course that this is not in fact what the law means. Still, a very interesting case for design enthusiasts!
Friday, 3 August 2012
Book review: A Practical Guide to Working with TRIPS
A step back again in time as I get to grips with outstanding book reviews. This is an interesting little paperback by Antony Taubman, who as Director of the World Trade Organisation Intellectual Property Division (I assume the OUP website erred when it referred to the World Trace Organisation) is uniquely well-placed to write it.
The publisher's blurb tells us that this book "avoids extended legal analysis", an odd virtue in a book about law. But perhaps that is the point: it isn't a law book really, it's a guide to the topic for policymakers. Tellingly, the publishers don't reveal for whom it is thought to be essential reading (and publishers usually manage to make up a list that includes most literate members of the human race): they merely tell us who would be interested in this book. They include "legal practitioners operating in the international intellectual property field", but given the lack of heavy black-letter law in this slim (256 pages) and not-too-expensive (£44.95 - everything is relative: I just paid that for a pair of shoes) volume they are likely to need something a bit more substantial.
Nevertheless, I found it really interesting, which might tell you more about me than about the book but I hope counts as some sort of endorsement. And it's written with a light touch and entertaining style. Unlike most review books that come my way, this is one to read through from start to finish: it has something of a story to tell. And for most IP practitioners, TRIPS is an important part of the context rather than a substantive concern, something you need to know a bit about but the detail of which you can safely leave aside.
Of course, TRIPS is an instrument of absolutely central importance in the intellectual property world, the first attempt to create something coherent to replace what the author refers to as the "makeshift diplomatic assemblage" of GATT, and to replace diplomatic wrangling with a judicial process. It recognised properly for the first time the place of intellectual property in international trade law, but leaves the question (which I think remains unanswered) whether this approach would supplant the traditional IP model embodied in Berne, Paris and WIPO. The author asks whether the marriage of IP and trade law is one of convenience, or a shotgun affair. Is it a natural expression of policy convergence? Read Mr Taubman's book, and make up your own mind.
Another important question is whether TRIPS is a burden for developing countries with little benefit. The author ventures the opinion that because it sets out public policy goals for intellectual property it should be considered a Good Thing. Well, he doesn't say Good Thing, that was another pair of authors altogether, but that's the gist of it.
The TRIPS agreement also brings a bunch of other issues into the trade arena - traditional knowledge, human rights, property law. It has already led to a richer jurisprudence of international intellectual property, and as the original TRIPS agreement was never intended to be final word - it could hardly be that - it will continue to inform this area of law. IP enthusiasts, including most if not all practitioners, will continue to have an interest in where it takes us.
Wednesday, 1 August 2012
Copyright has adverse effect on investment in cloud
A recent economic study entitled “The Impact of Copyright Policy Changes in France and Germany on Venture Capital Investment in Cloud Computing Companies” by Professor Josh Lerner of Harvard Business School, reported by IP Watch a while ago here, finds that changes in copyright law in Europe have had a negative impact on investments by venture capitalists in cloud computing businesses. The study, for the Computer and Communications Industry Association (CCIA), blames a handful of court decisions in France and Germany on the scope of copyright, which sounds like a rather narrow range of scapegoats. The CCIA looks beyond those scapegoats, and its Vice President Matthew Schruers posted this blog post asserting that effects identified by the study provide evidence of a bigger trend in copyright concerns undermining investment.
Was it really necessary to carry out a study to conclude this?
Was it really necessary to carry out a study to conclude this?
Book review: EU Electronic Communications Law
Subtitled "Competition & Regulation in the European Telecommunications Market", this is another second edition from OUP. The authors are Paul Nihoul, of the University of Louvain (a town with a particular place in my affections) and Peter Rodford, formerly of the European Commission. There are 536 pages and the prices is the same as the Fawcett and Torremans book reviewed earlier, £195. That makes it look rather less good value, doesn't it, half as many pages for the same money, but that's probably not the way to look at it - if EU telecommunications law floats your boat, an expression I can't resist on this great day for British Olympic rowing, the other work won't represent better value to you.
As it happens, EU electronic communications law doesn't do much for me, but that's not the way to look at it, either: as a practitioner, I generally deal with what comes along rather than what turns me on. I noticed (because it's something a decent reviewer needs to include) that it was published on 25 August 2011 - which means that my reviews are becoming just slightly more timely, but also causes me to wonder where the last year has gone. I don't know, except that exactly a year ago I added a part-time job to the existing portfolio, since when I have been acutely conscious of how one deals with the legal problems that come along rather than those one would like to handle. I guess my work tends to be client-led rather than confined to a particular area - and being in-house for a couple of days a week, that's certainly client-led.
None of my workload has anything to do with telecommunications law, though. Except in the sense in which many lawyers frequently encounter it, the area of what can broadly be called data protection and privacy, and that features in this book. And increasingly there is an important interface between competition law and regulation and the protection of intellectual property - the duties of carriers and service providers to take steps to prevent infringements. In short, in an era of convergence, the field described in this book is pretty close to the centre of things. So it's going to be something a lot of lawyers are likely to need.
Indeed, we all have online lives which become more and more significant, and electronic communications law in the broad sense is going to carry on growing like topsy. Quite apart from the legal side of things, though, we should try to keep a sense of proportion - to keep our online lives in the right place, as I was reminded by this excellent posting on John Hull's What about Clients? blog recently.
Regardless of the subject matter, though, this is a heavy piece of work. For one thing, it has only five chapters, plus an introduction sub-titled (ominously) "How to use this book". It is rich in headings of different levels, making it (as one of my lecturers at university, later editor of Newsweek, said of Karl Llewellyn's work) like reading a knitting pattern. But its purpose is to provide information, not to narrate or entertain, so while I might prefer more readable prose it's not a valid criticism of a utilitarian piece of writing. If you need a book to guide you through this particular legal maze, this is it, and if you don't think you need a guide to this maze you might have to think again.
As it happens, EU electronic communications law doesn't do much for me, but that's not the way to look at it, either: as a practitioner, I generally deal with what comes along rather than what turns me on. I noticed (because it's something a decent reviewer needs to include) that it was published on 25 August 2011 - which means that my reviews are becoming just slightly more timely, but also causes me to wonder where the last year has gone. I don't know, except that exactly a year ago I added a part-time job to the existing portfolio, since when I have been acutely conscious of how one deals with the legal problems that come along rather than those one would like to handle. I guess my work tends to be client-led rather than confined to a particular area - and being in-house for a couple of days a week, that's certainly client-led.
None of my workload has anything to do with telecommunications law, though. Except in the sense in which many lawyers frequently encounter it, the area of what can broadly be called data protection and privacy, and that features in this book. And increasingly there is an important interface between competition law and regulation and the protection of intellectual property - the duties of carriers and service providers to take steps to prevent infringements. In short, in an era of convergence, the field described in this book is pretty close to the centre of things. So it's going to be something a lot of lawyers are likely to need.
Indeed, we all have online lives which become more and more significant, and electronic communications law in the broad sense is going to carry on growing like topsy. Quite apart from the legal side of things, though, we should try to keep a sense of proportion - to keep our online lives in the right place, as I was reminded by this excellent posting on John Hull's What about Clients? blog recently.
Regardless of the subject matter, though, this is a heavy piece of work. For one thing, it has only five chapters, plus an introduction sub-titled (ominously) "How to use this book". It is rich in headings of different levels, making it (as one of my lecturers at university, later editor of Newsweek, said of Karl Llewellyn's work) like reading a knitting pattern. But its purpose is to provide information, not to narrate or entertain, so while I might prefer more readable prose it's not a valid criticism of a utilitarian piece of writing. If you need a book to guide you through this particular legal maze, this is it, and if you don't think you need a guide to this maze you might have to think again.
Book review: Intellectual Property and Private International Law
I have not been as diligent about writing book reviews as I should have been, so I have a bit of catching up to do. I'll begin with the second edition of Intellectual Property and Private International Law, by the highly distinguished duo James Fawcett and Paul Torremans, published by OUP last year but up to date to June 2010, and offered by them for the princely sum of £195. (Why, I wonder, do we use "princely" to mean "substantial" in that context? Are princes assumed to be rich, or merely profligate? Is a King's ransom much greater, and therefore outside the prince's budget?) The first edition, which was the only treatment of this subject (the second edition retains this distinction), dated from 1998, and since then there have been several important changes in the law - the Brussels Convention has given way to the Brussels I Regulation, the Rules of the Supreme Court to the Civil Procedure Rules, and the Rome Convention on Applicable Law to the Rome I Regulation. Private international law has become, more and more, a matter of European Union law. The Court of Justice has explored the territory in the Roche and GAT cases (and more recently in DHL v Chronopost), and domestically the Court of Appeal has considered it in the Lucasfilm case (which the authors describe as "disappointing"). The Supreme Court judgment, of course, came too late to be covered, which is a shame because it presumably overcomes the authors' disappointment.
Back when I first studied intellectual property law - the Patents Act 1977 was not yet fully in force, the Trade Marks Act dated from 1938, and the Copyright Act from the year of my birth, and the Registered Designs Act 1949 was still in its first iteration - its interface with international law was vanishingly small. National rights were enforced in national courts, and even the European Community kept a respectful distance from the area. There were international conventions in the field, but they were concerned with the acquisition and content of intellectual property rights, not with their enforcement.
Now, since the first edition of this book, the Internet has introduced us to the notion of "ubiquitous infringement". Other factors have also combined to give intellectual property law a substantial international dimension, including the activities of parallel traders - indeed, the process of globalisation has opened up all kinds of cans of worms that had previously remained safely sealed, or even buried out of sight.
The law is being brought up to date - in so far as the law ever gets up to date with technology: Brussels I is being reformed, with intellectual property high on the agenda, and (at the time of writing of the book - this part has certainly been overtaken by events) there was much talk of unitary patent protection and the UPLS. The international exploitation of intellectual property rights is responsible for a bunch of new problems, because legislation is sparse and international treaties have (the authors say) failed unspectacularly. There have been scholarly initiatives such as the ALI principles in the US and the CLIP principles in the EU, which influence the suggestions for reform put forward by the authors.
The book - a staggering 1,056 pages (I use the word advisedly - not only does it describe what I think about the authors' achievement but it also serves to characterise the experience of carrying a copy) - falls into three sections, the last of only one chapter. These cover jurisdiction, applicable law and recognition and enforcement of foreign judgments. Further details of what's in each section appear on the publisher's website (follow the link at the top of this posting). It doesn't, as intellectual property textbooks once used to do far too often, lead the reader by the hand through the well-known gardens of basic intellectual property law before heading off into the undergrowth of private international law, and thank goodness for that: it is too easy, too tempting, to bulk up a book by including egg-sucking instructions that one's grandmother would find redundant. It's all good, solid, meaty stuff and essential reference (the implication that it is not a book to sit and read through from cover to cover is quite intentional) for the practitioner interested in this little area, and who among IP practitioners is not interested in it these days?
Back when I first studied intellectual property law - the Patents Act 1977 was not yet fully in force, the Trade Marks Act dated from 1938, and the Copyright Act from the year of my birth, and the Registered Designs Act 1949 was still in its first iteration - its interface with international law was vanishingly small. National rights were enforced in national courts, and even the European Community kept a respectful distance from the area. There were international conventions in the field, but they were concerned with the acquisition and content of intellectual property rights, not with their enforcement.
Now, since the first edition of this book, the Internet has introduced us to the notion of "ubiquitous infringement". Other factors have also combined to give intellectual property law a substantial international dimension, including the activities of parallel traders - indeed, the process of globalisation has opened up all kinds of cans of worms that had previously remained safely sealed, or even buried out of sight.
The law is being brought up to date - in so far as the law ever gets up to date with technology: Brussels I is being reformed, with intellectual property high on the agenda, and (at the time of writing of the book - this part has certainly been overtaken by events) there was much talk of unitary patent protection and the UPLS. The international exploitation of intellectual property rights is responsible for a bunch of new problems, because legislation is sparse and international treaties have (the authors say) failed unspectacularly. There have been scholarly initiatives such as the ALI principles in the US and the CLIP principles in the EU, which influence the suggestions for reform put forward by the authors.
The book - a staggering 1,056 pages (I use the word advisedly - not only does it describe what I think about the authors' achievement but it also serves to characterise the experience of carrying a copy) - falls into three sections, the last of only one chapter. These cover jurisdiction, applicable law and recognition and enforcement of foreign judgments. Further details of what's in each section appear on the publisher's website (follow the link at the top of this posting). It doesn't, as intellectual property textbooks once used to do far too often, lead the reader by the hand through the well-known gardens of basic intellectual property law before heading off into the undergrowth of private international law, and thank goodness for that: it is too easy, too tempting, to bulk up a book by including egg-sucking instructions that one's grandmother would find redundant. It's all good, solid, meaty stuff and essential reference (the implication that it is not a book to sit and read through from cover to cover is quite intentional) for the practitioner interested in this little area, and who among IP practitioners is not interested in it these days?
Friday, 20 July 2012
An offer they can't refuse?
I love the ambiguity in the title of this article from Canadian IP firm, Bereskin & Parr: Dealing With Inventors Who Refuse To Cooperate Or Disappear. In case the suspense is too much for you, I can tell you that it's concerned with employee inventors who become unavailable, not those who decline to make themselves scarce. As you guessed, of course.
Tuesday, 3 July 2012
The second-hand software market
The Court of Justice has decided in Case C‑128/11, UsedSoft GmbH v Oracle International Corp., that there can legitimately be a second-hand market for software licences, going in the opposite direction from that taken in the US (see my earlier posting about the Autodesk case, here). You can sell a licence for which you have no further use, but the one thing you can't do is sell excess user rights if you have paid for more users than you actually have working for you. The decision - a preliminary ruling on a reference from the Bundesgerichtshof - is based on the principle of exhaustion: the copyright owner's rights are exhausted once the software has been supplied on disk or downloaded from the Internet, so they cannot control subsequent sales.
No great surprise there, as the doctrine of exhaustion is central to the way intellectual property rights work in the European Union: but it seems at odds with the widely-used software distribution model that gives the end user only a licence. While it has been common practice to treat software as a good rather than a service (it doesn't fit happily into either category, does it?), assimilating software to audio CDs for certain purposes, the fact is that because "sales" of software are licensing transactions it isn't always appropriate to take this view. Of course, when a physical carrier is supplied there is a sale of goods involved too, but it's only an incidental part of the transaction, and focussing on that aspect gives a distorted idea of what the deal is all about. I think people take different views according to whether they are buying software or music: if I buy a CD I expect to be able to resell it, but if I buy a piece of software I'm not so sure about it - even if it's on disk, although clearly plenty of people do buy and sell software on disk. The Court directs us not to make such fine distinctions.
No great surprise there, as the doctrine of exhaustion is central to the way intellectual property rights work in the European Union: but it seems at odds with the widely-used software distribution model that gives the end user only a licence. While it has been common practice to treat software as a good rather than a service (it doesn't fit happily into either category, does it?), assimilating software to audio CDs for certain purposes, the fact is that because "sales" of software are licensing transactions it isn't always appropriate to take this view. Of course, when a physical carrier is supplied there is a sale of goods involved too, but it's only an incidental part of the transaction, and focussing on that aspect gives a distorted idea of what the deal is all about. I think people take different views according to whether they are buying software or music: if I buy a CD I expect to be able to resell it, but if I buy a piece of software I'm not so sure about it - even if it's on disk, although clearly plenty of people do buy and sell software on disk. The Court directs us not to make such fine distinctions.
What is the software industry to do? There are technical solutions to part of the problem, of course, but it's not going to be possible to claw back those exhausted rights by technical means without getting into a whole new load of trouble. Perhaps more promising is the idea of granting licences for a limited time - most software licences, certainly the non-bespoke sort, are perpetual, which is only logical when a large sum of money is changing hands. But making licences expire and require renewal might be a good way forward - and can also assist customers along the upgrade path that software houses wish them to take rather faster than, left to their own devices, they would consider appropriate.
Unified Patent Court: progress - if that's the right word
Reports last week suggested that the UK government had successfully brought the EU patent behemoth to a grinding halt. More careful examination of what happened shows otherwise. There will be a Unitary Patent Central Court, and there will also be two sector-specific courts, one for mechanical engineering and the other for chemistry and "human necessities". I must be missing something, but patent agents used to divide the world into mechanical, chemical and electronic, and the last of that trio seems to be missing.
Munich gets mechanical patents, London gets chemical and that other category, and Paris gets the central division. Maybe I am missing something, but a classic piece of EU horse-trading hardly justifies celebration, does it? The so-called Intellectual Property Office is clearly happy, saying in its highly uninformative press release:
Munich gets mechanical patents, London gets chemical and that other category, and Paris gets the central division. Maybe I am missing something, but a classic piece of EU horse-trading hardly justifies celebration, does it? The so-called Intellectual Property Office is clearly happy, saying in its highly uninformative press release:
The Prime Minister has today secured a great result for UK business at the European Council on single unitary patent valid in up to 25 European countries and secured London to be the host for the unified patent court. (If one had to say one city was the host, surely Paris would be the candidate? But it's quite wrong to say that there is one host.)The heads of state have suggested the deletion from the Regulation of the provisions dealing with enhanced co-operation, a typical EU-euphemism (a EUphemism, perhaps?) for a form of co-operation which does not include all Member States, which most people would consider to be a failure of co-operation rather than an enhanced version of it. It is a steamroller that nine or more Member States can drive, to the exclusion of the others. Of course, in the patents field (apparently, according to Wikipedia so this must be correct, divorce law is the other area in which enhanced co-operation is being used) Spain and Italy are the outsiders. The suggestion that enhanced co-operation should not be used here is a welcome development as far as most people in the patents world are concerned - as the PatLit blog observes:
The Prime Minister, David Cameron said:
"A vital part of the Court covering the pharmaceutical and life sciences industries, in which Britain excels, will be coming to London. This brings millions of pounds and hundreds of jobs. (The litigation, or the industries? If the latter, which I imagine is the case, how is this remotely relevant to the situation of the sector court?)
"And I secured the changes to the nature of the patent system that businesses were demanding." (I don't think there is much agreement among businesses about what changes were needed - and it seems abundantly clear that the vastly increased expense of obtaining patent protection and litigating at the EU level is as far from the interests of small businesses as one can possibly get. See that FT article a link to which I posted earlier ...).
... the constant criticism by the experts in the field (see e.g. Professor Krasser's opinion and Sir Robin Jacob's opinion) has been successful despite of the deplorable lack of transparency (see J. Pagenberg's letter here).
FT on vanity patents
Patents as means in themselves rather than ends - a Nobel Prize-winning scientist puts the patent system in its place, brilliantly. Though patents can still serve a useful function ...
I hope this is accessible to all on the FT website: http://www.ft.com/cms/s/0/071a7a40-c3aa-11e1-966e-00144feabdc0.html#axzz1zUoMrW1e.
I hope this is accessible to all on the FT website: http://www.ft.com/cms/s/0/071a7a40-c3aa-11e1-966e-00144feabdc0.html#axzz1zUoMrW1e.
Friday, 29 June 2012
Rock group seeks photographers' copyright
An unedifying story of copyright absolutism from the BBC: the Stone Roses, who seem to me to belong to such a recent period of rock history that they cannot possibly be holding a reunion, appear to have caused considerable offence to photographers hoping to cover that reunion. Or perhaps it's just their management that has done so. As a sometime aspiring (and in a small way practising) photographer in that same field, though long before the Stone Roses, I sympathise with the practitioners of the art, who are reportedly being asked - nay, required - to sign contracts under which the copyright in images they make will become the band's (or the management's?) property. One of them, Ian Tilton, is reported to be asking colleagues to boycott the event.
A far cry from the time when I'd approach the performers after a gig at university and ask if they'd like copies of the photos I had taken for the student newspaper. Even, come to that, the time when I would come home from a gig at Newcastle City Hall with a roll of film of Elvis Costello or Talking Heads - I'd probably find stern warnings about taking photos at all now, and risk having my camera taken away from me. But those were the days before you could use a camera to make phone calls ...
A far cry from the time when I'd approach the performers after a gig at university and ask if they'd like copies of the photos I had taken for the student newspaper. Even, come to that, the time when I would come home from a gig at Newcastle City Hall with a roll of film of Elvis Costello or Talking Heads - I'd probably find stern warnings about taking photos at all now, and risk having my camera taken away from me. But those were the days before you could use a camera to make phone calls ...
Wednesday, 20 June 2012
IP Translator
The Court of Justice handed down its decision in the IP Translator reference yesterday. The case, an expedition to Luxembourg initiated by the Appointed Person who heard the applicant's appeal against refusal by the Registrar of Trade Marks, was contrived to explore the important issue of using class headings in trade mark applications, and whether using the class headings means you have specified all the goods and services in the class - what might be termed a purposive approach - or whether it means you have just bagged those goods or services in the list - the literal approach. The application, filed by CIPA, specified the services set out in the class heading for class 41 - which don't include translation services, though it seems to be common ground that translation services are proper to that class. So, if the class heading automatically includes all the goods in the class, the application is dead in the water because of descriptiveness. Such is the process of working out what the law means. What a quaint idea that it might have been written clearly in the first place.
The problem is exacerbated by two factors, maybe more. First, online application forms (the OHIM one in particular) encourage the use of class headings. OHIM takes the view that class headings include all the goods or services in the Nice Agreement's alphabetical list for that class. Nine national offices do likewise. 17 national offices, by contrast, use the literal approach. (OHIM has a page on its website dedicated to the convergence of class headings.) Second, trade mark owners want the widest possible protection, not necessarily because they want to sue for infringement (though they might bully their way to the desired result) but more to enable them to mount spurious oppositions based on indefensibly wide specifications. Neither factor is desirable, IMHO: both lead to what the Max Planck Institute's largely weak and self-serving review characterised as "cluttering".
The Court begins by telling us what we already know, but of course it always does that:
The problem is exacerbated by two factors, maybe more. First, online application forms (the OHIM one in particular) encourage the use of class headings. OHIM takes the view that class headings include all the goods or services in the Nice Agreement's alphabetical list for that class. Nine national offices do likewise. 17 national offices, by contrast, use the literal approach. (OHIM has a page on its website dedicated to the convergence of class headings.) Second, trade mark owners want the widest possible protection, not necessarily because they want to sue for infringement (though they might bully their way to the desired result) but more to enable them to mount spurious oppositions based on indefensibly wide specifications. Neither factor is desirable, IMHO: both lead to what the Max Planck Institute's largely weak and self-serving review characterised as "cluttering".
The Court begins by telling us what we already know, but of course it always does that:
Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark. [Emphasis added.]It goes on to say that the use of class headings is not precluded. Hard to imagine that it might have been, and of course that's not the question. The important thing is what to read into the class headings. The Court adds, of course, "provided that such identification is sufficiently clear and precise".
An applicant for a national trade mark who uses all the general indications of a particular class heading ... to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.
So what do you do if you want to cover all the goods and services in the class? You can't (as I understand it) use the old formula "all goods in class X", because that is neither clear nor precise. But what is? Or does the judgment mean that we shouldn't be so lazy, that we must set out in so many words what we want protection for? That would be a good thing, even if it led to much longer specifications. And remember (if your memory of these things goes back to pre-1994) that we have the great benefit of a system that regards as infringement something that involves mere similarity between the parties' goods or services (provided, of course, that there is a likelihood of confusion). This contrasts with the literal interpretation of the scope of protection under the 1938 Act. You don't need to sweep up all those goods and services: it's only if you want to make your trade mark as much as possible like copyright that you'll do that, and the system should resist any attempt to do that.
Finally, another gem I have uncovered in my reading on this topic. OHIM's Project Brief on the convergence of class headings says, discussing whether it would be better to wait for the judgment we got yesterday:
... a consensus between all of the IP offices is preferable to reliance on court rulings, which in any case are not expected before middle 2012. It might also not provide the legal certainty and clarity that is required.Well, it seems that they were right about the legal certainty and clarity that flows from the decision of the court. But in the nature of a reference under Article 267 (Article 177 as was - what sort of inflation rate is that?) that's what you get. But how can a consensus between national offices be better than court rulings? More practical, perhaps, but the supreme authority on the interpretation of EU law is the Court of Justice, and it's rather disconcerting to find another institution disregarding this.
CIPA intellectual property debate
To London, for a debate on the motion: "This house believes that political pressure and a few loud business voices are making the IP systems in Europe less and less relevant to the needs of small enterprises". Organised by the Chartered Institute of Patent Agents, the motion was proposed by Michael Wilcox, a small businessman and serial inventor, and seconded by Vicki Salmon, one of a small number of people who are solicitors and patent agents (so use of the title "attorney" is certainly justified in her case). I remember a small passing-off dispute in which, fairly newly-qualified, she was on the other side - getting on for 20 years ago now. Opposing it were Sean Dennehey from the Patent Office, with whom I once spent a train journey after I encountered him on the Tube when I left my then-office one evening and naturally fell into conversation with the fellow-passenger carrying a souvenir shoulder bag from a patent conference, and James Nurton, editor of Managing Intellectual Property (and INTA Daily News, a publication rather closer to my heart given the coverage afforded to the Capital City Marathon four annual meetings ago, thanks to James).
Thanks to the combined efforts of First Great Western and London Underground, I arrived rather late, but the proposer had not started anyway. I was immediately put on my guard when I saw the screen was displaying a Microsoft PowerPoint window, as opposed to a slide-show in which the functional parts of the interface are removed ... Mr Wilcox admitted to a lack of facility with the technology. Oh, dear. But his story about how the patent system had failed him and his business, and small and medium-sized enterprises throughout the country, was well worth hearing. No matter how often one hears that a patent does not exclude others from using your invention, merely enables you (should you be as well-resourced as, say, Croesus) to sue those who infringe, it's worth being reminded. And applying for a patent puts the results of your research in the public domain, and vulnerable to being taken without permission: big business, he suggested, does little research, but picks up its new ideas from other people. He quoted Joshua Shapiro, whom he described as holding some senior position at IBM:
Vicki's shorter speech (the chairman decreed that both speakers for should go first, like leader and junior in court) rehearsed the arguments against the EU patent and the uniform patent litigation system as it stands, and I must say they become more compelling the more I hear them. Whose interest will reform serve? But we hadn't heard much about anything but patents so far. Sean Dennehey preferred to take the motion apart, arguing that one could not possibly agree with the proposition that political pressure could make the system less relevant to small enterprises, because to do so would be to speak against democracy. No, Sean, with respect, to do so is to recognise the democratic deficit. After all, who voted for you? (I hasten to add that I would have done, given the chance.) James offered a great many statistics to support the proposition that small business makes considerable use of the various systems of protection, but seemed to assume that more patents, trade marks and registered designs was A Good Thing.
The chairman took the opportunity, before opening the floor to contributions, to observe (with the aid of props - a boxful of metal bolts and channels) that Ancon Ltd v ACS Stainless Steel Fixings Ltd [2009] EWCA Civ 498 (16 June 2009) had been fought on a conditional fee arrangement, which he thought might offer one solution to the problem of the cost of patent litigation - but not, I think, for small-scale legal practitioners: you need to be able to carry the people doing the work for which you will be paid only after the case is over, and then not necessarily in full. You can accumulate an awful lot of work in progress with no immediate prospect of being able to bill it: would it be secure enough to impress the bank, I wonder?
A speaker from the floor, Sabine McNeill of 3D Metrics, drew attention to Shift Happens which she suggested members of the audience should find using Google (other search engines, I should add, are available). I hadn't seen it, so I did, and for the benefit of readers who also haven't seen it I'll embed it below. I'm not sure what it proves as far as this debate was concerned, and for all that the information in it is interesting it's interesting in a tabloidy sort of way ... Sabine stressed how keeping trade secrets confidential is a better to protect your intellectual property (in the widest sense) than applying for a patent and revealing what you have invented to the world at large. This is not necessarily the advice dispensed by the profession, which makes its money from filing applications: "Five patent agents", she said, "would take the money I don't have." A short discussion ensued about the ethics of professional advisers taking an equity stake in lieu of fees: Sir Robin was hard-pressed to see where a conflict might arise, others disagreed, no-one (except perhaps Tibor) seemed to know what the rules say, and Dennis Crouch who happened to be in the audience said that US rules allowed lawyers to take stakes in clients. (I would comment on what the SRA says, but their website won't load so I can't consult the new handbook. Oh, for the days when the Guide to Professional Conduct was a book.)
Mr Justice Arnold's contribution to the debate was to say that copyright also needed to be considered, that the 1988 Act was technologically obsolescent and so much amended under the European Communities Act as to resemble a patchwork quilt - great stuff. He was unimpressed by the Regulatory Reform Bill's attempts to hack it about still further, though restating the exceptions chapter ("permitted acts", surely?) on the basis of the Information Society Directive wasn't a bad idea. (But still no-one had really mentioned trade marks, and I had missed the chance to have my say - even though I was prepared, as I did the other way round at my first Party Conference in - when would that have been? 1978? - to deliver my "for" speech against the motion.)
One other contribution I noted (which is not to say that nothing else was said that was worth paying attention to): Tibor on the Z sections of the Registered Designs Act - "more suitable for labelling sewing machine parts". Excellent stuff. The chairman asked for a show of hands, decided that a count was needed, announced that there were "about 35" in favour, and declared the motion carried in time for the kick-off in the England v Ukraine match, though like most people he stuck around for refreshments afterwards.
Discussion of new copyright legislation was a little off-piste, but it made me wonder whether anyone remembers what it was like back when the 1988 Act was being created. It was very difficult to find enough parliamentary time for the legislative behemoth, which set a record (probably since surpassed) for the number of amendments tabled to it, so it's hardly surprising that the same excuse is trotted out today. Government is the art of the possible (isn't it?) - actually, it's politics that was said to be the art of the possible, by Bismarck no less, but I think the point still stands - so government will try to make necessary amendments to intellectual property laws by using delegated powers, implementing EU directives and making rules to patch up the floundering vessels. I don't expect to see another copyright act in the near future.
Thanks to the combined efforts of First Great Western and London Underground, I arrived rather late, but the proposer had not started anyway. I was immediately put on my guard when I saw the screen was displaying a Microsoft PowerPoint window, as opposed to a slide-show in which the functional parts of the interface are removed ... Mr Wilcox admitted to a lack of facility with the technology. Oh, dear. But his story about how the patent system had failed him and his business, and small and medium-sized enterprises throughout the country, was well worth hearing. No matter how often one hears that a patent does not exclude others from using your invention, merely enables you (should you be as well-resourced as, say, Croesus) to sue those who infringe, it's worth being reminded. And applying for a patent puts the results of your research in the public domain, and vulnerable to being taken without permission: big business, he suggested, does little research, but picks up its new ideas from other people. He quoted Joshua Shapiro, whom he described as holding some senior position at IBM:
Large companies routinely infringe intellectual property of start-ups or individual inventors. They will not sign non-disclosure agreements to protect others’ IP. When shown relevant patents, they need to license, they literally say “Sue us”, knowing that deeper pockets trump a valid claim.He also mentioned several other people from IBM, to demonstrate that big business alone had the ear of the law-makers. But I find that Mr Shapiro was no longer with IBM when he made that comment in this letter to the FT - so was he repeating something he said earlier, when he did work for IBM? It seems unlikely. And the comment is an observation, not a manifesto. So with the benefit of a little research, I find myself less well-disposed towards Mr Wilcox's argument than I was at the time. The fact that he simply ignored the need to keep to time, an essential feature of any debate (for the sake of fairness, apart from anything else) also told against him - though the chairman, Professor Sir Robin Jacob (who else could it possibly be?), should perhaps have been less lenient. As a friend remarked afterwards, he has mellowed.
Vicki's shorter speech (the chairman decreed that both speakers for should go first, like leader and junior in court) rehearsed the arguments against the EU patent and the uniform patent litigation system as it stands, and I must say they become more compelling the more I hear them. Whose interest will reform serve? But we hadn't heard much about anything but patents so far. Sean Dennehey preferred to take the motion apart, arguing that one could not possibly agree with the proposition that political pressure could make the system less relevant to small enterprises, because to do so would be to speak against democracy. No, Sean, with respect, to do so is to recognise the democratic deficit. After all, who voted for you? (I hasten to add that I would have done, given the chance.) James offered a great many statistics to support the proposition that small business makes considerable use of the various systems of protection, but seemed to assume that more patents, trade marks and registered designs was A Good Thing.
The chairman took the opportunity, before opening the floor to contributions, to observe (with the aid of props - a boxful of metal bolts and channels) that Ancon Ltd v ACS Stainless Steel Fixings Ltd [2009] EWCA Civ 498 (16 June 2009) had been fought on a conditional fee arrangement, which he thought might offer one solution to the problem of the cost of patent litigation - but not, I think, for small-scale legal practitioners: you need to be able to carry the people doing the work for which you will be paid only after the case is over, and then not necessarily in full. You can accumulate an awful lot of work in progress with no immediate prospect of being able to bill it: would it be secure enough to impress the bank, I wonder?
A speaker from the floor, Sabine McNeill of 3D Metrics, drew attention to Shift Happens which she suggested members of the audience should find using Google (other search engines, I should add, are available). I hadn't seen it, so I did, and for the benefit of readers who also haven't seen it I'll embed it below. I'm not sure what it proves as far as this debate was concerned, and for all that the information in it is interesting it's interesting in a tabloidy sort of way ... Sabine stressed how keeping trade secrets confidential is a better to protect your intellectual property (in the widest sense) than applying for a patent and revealing what you have invented to the world at large. This is not necessarily the advice dispensed by the profession, which makes its money from filing applications: "Five patent agents", she said, "would take the money I don't have." A short discussion ensued about the ethics of professional advisers taking an equity stake in lieu of fees: Sir Robin was hard-pressed to see where a conflict might arise, others disagreed, no-one (except perhaps Tibor) seemed to know what the rules say, and Dennis Crouch who happened to be in the audience said that US rules allowed lawyers to take stakes in clients. (I would comment on what the SRA says, but their website won't load so I can't consult the new handbook. Oh, for the days when the Guide to Professional Conduct was a book.)
Mr Justice Arnold's contribution to the debate was to say that copyright also needed to be considered, that the 1988 Act was technologically obsolescent and so much amended under the European Communities Act as to resemble a patchwork quilt - great stuff. He was unimpressed by the Regulatory Reform Bill's attempts to hack it about still further, though restating the exceptions chapter ("permitted acts", surely?) on the basis of the Information Society Directive wasn't a bad idea. (But still no-one had really mentioned trade marks, and I had missed the chance to have my say - even though I was prepared, as I did the other way round at my first Party Conference in - when would that have been? 1978? - to deliver my "for" speech against the motion.)
One other contribution I noted (which is not to say that nothing else was said that was worth paying attention to): Tibor on the Z sections of the Registered Designs Act - "more suitable for labelling sewing machine parts". Excellent stuff. The chairman asked for a show of hands, decided that a count was needed, announced that there were "about 35" in favour, and declared the motion carried in time for the kick-off in the England v Ukraine match, though like most people he stuck around for refreshments afterwards.
Discussion of new copyright legislation was a little off-piste, but it made me wonder whether anyone remembers what it was like back when the 1988 Act was being created. It was very difficult to find enough parliamentary time for the legislative behemoth, which set a record (probably since surpassed) for the number of amendments tabled to it, so it's hardly surprising that the same excuse is trotted out today. Government is the art of the possible (isn't it?) - actually, it's politics that was said to be the art of the possible, by Bismarck no less, but I think the point still stands - so government will try to make necessary amendments to intellectual property laws by using delegated powers, implementing EU directives and making rules to patch up the floundering vessels. I don't expect to see another copyright act in the near future.
Tuesday, 19 June 2012
Interconnection of business registers
Business registers of various sorts are of great importance - the Register of Companies being the obvious example in the UK and in fact the only one since the Register of Business Names disappeared in Mrs Thatcher's first cull of what were deemed to be unnecessary impediments on the ability to do business, notwithstanding that it performed a valuable consumer protection function, sorely missed in a world in which you can rarely tell with whom you are doing business on-line. Within the European Union, with more and more trans-border business going on, co-ordinating business registries is a pretty important thing to do (and I hope it might show how woeful is the UK system). Whether as the Commission claims
Directive 2012/17/EU of the European Parliament and of the Council of 13 June 2012 is the instrument to do the job, amending Council Directive 89/666/EEC and Directives 2005/56/EC and 2009/101/EC of the European Parliament and of the Council. The Commission's press release is here.
Linking business registers across Europe will stimulate cross-border trade and save up to 70 million euro a yearI don't know, and it certainly sounds optimistic, but that does not mean it isn't worth doing.
Directive 2012/17/EU of the European Parliament and of the Council of 13 June 2012 is the instrument to do the job, amending Council Directive 89/666/EEC and Directives 2005/56/EC and 2009/101/EC of the European Parliament and of the Council. The Commission's press release is here.
Those Games again
EBay is awash with items of uniform which were distributed only yesterday to volunteers who'll be working at the events. There are probably no branding issues - but it's not an unreasonable assumption that the organisers, who have nailed down every conceivable legal issue connected with with their activities, will have done so here before handing out thousands of outfits which must have cost them the best part of £100. And indeed they have: the uniforms remain the organisers' property until after the games have finished, when the volunteers can retain them as souvenirs.
So what action, I wonder, is being taken to deal with the myriad crimes now being committed on eBay?
So what action, I wonder, is being taken to deal with the myriad crimes now being committed on eBay?
Thursday, 14 June 2012
Patent Office consults on opinions, mediation
Opinions on patent validity and infringement have been offered for some time by the Patent Office, whose examiners are well-qualified to give them (after all, it's just applying the skills they use in their examining work to a different aspect of the same problem). The service has been well-used. Less well-used - indeed, hardly used at all, it seems - is the Office's mediation service, despite the excellent value for money it offers compared with other mediation options. Now the Government proposes to extend the opinion service and is seeking views on what to do with the mediation service. Here is the press release on the Department for Business, Innovation and Skills website.
The opinion-giving service will be extended to cover more questions about validity and also to include SPCs. The Government also proposes - logically enough - to give the Office powers to revoke a patent if it delivers an opinion saying that the patent is invalid. It's not satisfactory to have a patent remaining in force if the Patent Office thinks it's invalid - that's the worst conceivable type of cluttering.
As for mediation, the purpose of the exercise (which seems to have come from the Office itself) is to find out what people would like it to be doing - how it could be made more popular. Hard to say, in my view: mediation is a great way to resolve many disputes, but the sort of problem that arises in the intellectual property field is often unsuitable. Ownership disputes, yes, but infringements and validity? Not so much - they tend to require an unequivocal answer, reinforced by a power to revoke.
Tuesday, 5 June 2012
A liberal approach to IP
That's the way to encourage innovation, even if you're a publicly funded body. Having spent many hours dealing with a project funded by a public authority which in a classic piece of boilerplate drafting initially demanded the intellectual property rights in what it commissioned - plus the objects themselves - when I can't believe they would be set up actually to do anything useful with what they were trying to grab, it came as a breath of fresh air to read that CERN is happy to grant royalty-free licences to partners prepared to work on technology it has developed. Their initiative is based on the Easy Access Initiative and if you're interested you can see what technologies are available here. You can also read the terms of the exclusive and non-exclusive licences on offer.
Living with those Games
A couple of items in the press this long weekend draw attention to the draconian laws protecting any trade reference to those Games taking place not only in the capital but also in various other places around the country this year. I'm not avoiding mentioning them by name because I fear the consequences of writing prohibited words, but as a small indication of how appalled I am at what small businesses are having to put up as a result of the event being visited on them. I'm also appalled, thought this is of marginal relevance, at the news that Chiltern Railways, usually the best in the country, were unable to convey all those who wanted to come to London to mark the Jubilee, and indeed had trains departing from their starting point already full and therefore unable to pick up more passengers along the way. Bodes well for later this summer ...
Anyway, there's a nice piece in the Oxford Times about a local baker who's providing bread for the benefit of spectators - who will be a captive audience for the official catering, as they will apparently be prohibited from taking in their own provisions. As the piece explains, the baker can't even tell anyone he's doing it because the exclusive rights to claim any sort of commercial connection with the event have been sold, for vast sums of money (necessary, no doubt, to finance the very expensive bureaucracy that is evidently necessary to facilitate sporting competitions), to a handful of sponsors with no visible connection to sport.
The Financial Times examines the position of businesses which already had That Word in their names. If they can show that they were using the name before 1995, they'll be OK, but in this age of data retention policies and expensive storage for old papers that might be easier said than done. The FT piece also suggests that not much is being done about opportunists who have added the Forbidden Adjective to their business names. No matter that no-one in their right minds would suffer a moment's confusion: this is not a crypto-trademark law, it's a pretty complete monopoly.
I'm looking forward to several weeks of great sport - on my television. I have a feeling even getting to the office in London is going to be out of the question, and that is not going to improve my opinion of the commercial interests which have blown what should be a wonderful event up into a colossal, and - as the laws on the use of what should, except in very narrow contexts, be part of the great common of the English language, illustrate - ludicrous folly.
Anyway, there's a nice piece in the Oxford Times about a local baker who's providing bread for the benefit of spectators - who will be a captive audience for the official catering, as they will apparently be prohibited from taking in their own provisions. As the piece explains, the baker can't even tell anyone he's doing it because the exclusive rights to claim any sort of commercial connection with the event have been sold, for vast sums of money (necessary, no doubt, to finance the very expensive bureaucracy that is evidently necessary to facilitate sporting competitions), to a handful of sponsors with no visible connection to sport.
The Financial Times examines the position of businesses which already had That Word in their names. If they can show that they were using the name before 1995, they'll be OK, but in this age of data retention policies and expensive storage for old papers that might be easier said than done. The FT piece also suggests that not much is being done about opportunists who have added the Forbidden Adjective to their business names. No matter that no-one in their right minds would suffer a moment's confusion: this is not a crypto-trademark law, it's a pretty complete monopoly.
I'm looking forward to several weeks of great sport - on my television. I have a feeling even getting to the office in London is going to be out of the question, and that is not going to improve my opinion of the commercial interests which have blown what should be a wonderful event up into a colossal, and - as the laws on the use of what should, except in very narrow contexts, be part of the great common of the English language, illustrate - ludicrous folly.
Saturday, 2 June 2012
Trader gaoled for trade mark offences
The public needs protection against sellers of falsely marked goods. Arguably. The proposition explains the existence of criminal penalties in the trade marks legislation, giving extra protection to private property rights: I don't like it, but I can see the importance of protecting the public. The problem is that, in cases like this one reported in our local paper The Oxford Times, the public usually doesn't need protection as they know very well that they are buying zhing zhong (look it up in my Dictionary of Intellectual Property Law). They just like the idea of having what look like designer labels on the cheap.
Tuesday, 29 May 2012
Games hype
It seems as if half the country is already sick to death of the games taking place in London (and other venues) later this summer. The draconian IP-style protection given to the event's own signs, compounded by the ludicrous degree of protection given to the main sponsors, is a huge turn-off. Such a pity, as the sporting events will be wonderful and I will enjoy watching many of them - on the television.
What I will not enjoy doing is trying to get to work. At Paddington the other evening I was offered a leaflet explaining alternative forms of transport (which, in the modern age, include Shanks's pony), but I prefer to telecommute if I can. Thanks to this excellent piece by Philip Stephens in the FT I now understand that this is what the powers-that-be want me to do.
What I will not enjoy doing is trying to get to work. At Paddington the other evening I was offered a leaflet explaining alternative forms of transport (which, in the modern age, include Shanks's pony), but I prefer to telecommute if I can. Thanks to this excellent piece by Philip Stephens in the FT I now understand that this is what the powers-that-be want me to do.
Monday, 28 May 2012
Cool branding
In the local branch of Tesco the other day, I was taken with the idea of doing a comparative review of energy drinks, precisely the sort of thing for which I maintain another blog ... especially as I can't write about running on it at present, and writing about running injuries isn't so much fun. Perhaps partly because injury prevents me from running, my energy levels have been low and energy drinks (and foods) have been on my mind. There are limits to how many cappuccinos one can take in a day, although anyone who knew my mother and her daily intake of coffee would wonder how I can have failed so massively to inherit the smallest part of her capacity for the stuff.
Of course, I could just go for the market leader, but (a) I have a predisposition, in all matters, towards the underdog and (b) the leader of this particular market, by dint of certain opposition proceedings directed against a client's Community trade mark application, has forever lost me as a customer (and, pleased though I was at Mark Webber's victory yesterday (that underdog thing again, perhaps), it was very much about his achievement and not that of the team for which he drives). So I picked up four of those oddly small cans in which energy drinks are presented, which perhaps merely serves to emphasise their potency, and have been trying them out and writing tasting notes as I go. In due course I will publish the results on the appropriate blog. But what I want to comment on here is the branding of one of the products.
Now clearly I am not an average consumer, because I don't pick up the look-alike own-label products mistaking them for the branded ones (generally I pick them up because I don't want to pay the prices commanded by the branded ones). Only when I took the third of my sample energy drinks from the fridge did I notice something strange about it. The name on the can was "P***y", and I don't think (before it was bowdlerised for Tesco) it was intended to allude to the IPKat. According to the maker's website, www.pussydrinks.com (Bowdler has no role to play on the Internet), "The drink's pure - it's your mind that's the problem". Indeed it does seem to be made exclusively from natural ingredients, and I can vouch for the fact that it tastes good - none of the medicinal flavour of the established energy drinks, though without the kick of the competition from Zen Republic (where do they get these names from?) which contains chili and ginger.
Of course, trade marks cannot be registered if they are contrary to public policy and morality, and the caselaw on this provision makes entertaining reading. How can anyone have ever thought some of those trade marks would ever attract customers? But Pussy Drinks (Holdings) Limited have a CTM registration for Pussy Natural Energy (here) and an honourable mention in Marketing Week, in an article on how cool brands can keep their coolness - FCUK being a classic instance of how not to do this. For my part, I love the product but I love better the fact that the competition - the second healthiest energy drink in the UK, its website proclaims, in a "we try harder" moment - contains no taurine, the very sound of which makes me want to avoid it, and is approved by the Vegetarian Society, making me wonder what's in Pussy that might prevent a similar endorsement, or did they just never ask? The branding, to me, is neither here nor there (so long as there are no off-colour bovines involved), and once again I find myself wondering about the way trade marks are used in the modern world. I guess it's all about fashion, and I am put in mind of a quote from Oscar Wilde which I read the other day: "Fashion is a form of ugliness so intolerable that we have to alter it every six months."
Of course, I could just go for the market leader, but (a) I have a predisposition, in all matters, towards the underdog and (b) the leader of this particular market, by dint of certain opposition proceedings directed against a client's Community trade mark application, has forever lost me as a customer (and, pleased though I was at Mark Webber's victory yesterday (that underdog thing again, perhaps), it was very much about his achievement and not that of the team for which he drives). So I picked up four of those oddly small cans in which energy drinks are presented, which perhaps merely serves to emphasise their potency, and have been trying them out and writing tasting notes as I go. In due course I will publish the results on the appropriate blog. But what I want to comment on here is the branding of one of the products.
Now clearly I am not an average consumer, because I don't pick up the look-alike own-label products mistaking them for the branded ones (generally I pick them up because I don't want to pay the prices commanded by the branded ones). Only when I took the third of my sample energy drinks from the fridge did I notice something strange about it. The name on the can was "P***y", and I don't think (before it was bowdlerised for Tesco) it was intended to allude to the IPKat. According to the maker's website, www.pussydrinks.com (Bowdler has no role to play on the Internet), "The drink's pure - it's your mind that's the problem". Indeed it does seem to be made exclusively from natural ingredients, and I can vouch for the fact that it tastes good - none of the medicinal flavour of the established energy drinks, though without the kick of the competition from Zen Republic (where do they get these names from?) which contains chili and ginger.
Of course, trade marks cannot be registered if they are contrary to public policy and morality, and the caselaw on this provision makes entertaining reading. How can anyone have ever thought some of those trade marks would ever attract customers? But Pussy Drinks (Holdings) Limited have a CTM registration for Pussy Natural Energy (here) and an honourable mention in Marketing Week, in an article on how cool brands can keep their coolness - FCUK being a classic instance of how not to do this. For my part, I love the product but I love better the fact that the competition - the second healthiest energy drink in the UK, its website proclaims, in a "we try harder" moment - contains no taurine, the very sound of which makes me want to avoid it, and is approved by the Vegetarian Society, making me wonder what's in Pussy that might prevent a similar endorsement, or did they just never ask? The branding, to me, is neither here nor there (so long as there are no off-colour bovines involved), and once again I find myself wondering about the way trade marks are used in the modern world. I guess it's all about fashion, and I am put in mind of a quote from Oscar Wilde which I read the other day: "Fashion is a form of ugliness so intolerable that we have to alter it every six months."
Saturday, 26 May 2012
Section 52 on the way out?
I refer, of course, to that section in the Copyright, Designs and Patents Act 1988. Under the Enterprise and Regulatory Reform Bill, introduced the other day (23 May to be precise), section 52, beloved of students of copyright law and those who set exams on the subject (it seems to crop up every year in the external London LLB papers, but, students, please don't rely on that as a guaranteed bit of question-spotting) will be repealed.
Whast does section 52 do? According to the Information Notice on the website of the soi-disant Intellectual Property Office:
This exception currently limits the term of protection for artistic works which have been produced through an industrial process.Which not only reveals a lack of familiarity with the section itself, it reveals a lack of comprehension of the way copyright works. How, pray tell, can an artistic work be produced "through" an industrial process? And what makes you think that "through", rather than "by", is the appropriate preposition to use, anyway? And why is taxpayer money being wasted on such ineptitude? I would prefer to see my taxes spent on educating people so they attain a reasonable standard of literacy.
Section 52 actually says (in subsection (1)):
This section applies where an artistic work has been exploited, by or with the licence of the copyright owner, by—It is concerned with exploitation, not with production. Had the Information Notice said "production of copies" I would not have been moved to play the grumpy old man - but for the sake of a couple of words, and a few moments thought before putting pen to paper (or fingertip to key) accuracy has been cast aside. Anyway ...
(a) making by an industrial process articles falling to be treated for the purposes of this Part as copies of the work, and
(b) marketing such articles, in the United Kingdom or elsewhere.
What will it mean in practice? Section 52 does not feature frequently in litigation. In fact, all I got from a search of the cases on BAILII is Blayney (t/a Aardvark Jewelry) v Clogau St. David's Gold Mines Ltd & Ors [2002] EWCA Civ 1007 (16 July 2002), and that case only comes up because my Boolean search was, as my old maths teacher could have predicted (had he not passed away a couple of years ago), rubbish: it so happened that there were 252 lost sales involved in a case, Watson, Laidlaw & Co Ltd v Pott, Cassels and Williamson (1914) 31 RPC 104, cited by the Court of Appeal, and also an odd 52 pence in the calculation of the profit that the claimant would have made. So make that no cases on section 52, a number confirmed by the first IP textbook that comes to hand when I reach towards my bookcase.
But section 52 does an important job, or at least it did and I am not convinced that it doesn't still. The fact that it doesn't feature in litigation matters not, just as the argument that a speed camera that catches no speeding motorists is redundant: in fact, it could simply be doing what it's there for. It goes back, dear reader, to the good old days when copyright was the preferred means of protection for industrial designs, because it gave protection for 50 years (yes, it was that long ago) post mortem auctoris, whereas if you troubled to register a design under the Registered Designs Act 1949, v1 (you will appreciate that we are now on v3), you would get 15 years' protection. Where was the incentive to pay money to the Designs Registry (part of the Patent Office, but don't get me started on silly names, read my Dictionary under "Gowers", or go straight to the judgment of Jacob LJ in EI Du Pont Nemours & Co v United Kingdom Intellectual Property Office [2009] EWCA Civ 966 (17 September 2009) where the learned judge talks of 'the trendy but pointless "operating name"' behind which the agency now hides) when you got longer protection by not doing so? Of course, registration would have given stronger protection, but was it sufficiently stronger to make the difference?
Nowadays, registration will give 25 years' protection and a registered design won't be of quite such doubtful validity as it was in those days. But the principle of section 52 seems to me to hold: if the law offers two forms of protection (and there is no reason why it shouldn't), it is entirely right that the rights concerned should be made coterminous. If the right period of protection for an industrial design is 25 years, copyright should not give longer. If the UK is different from other EU countries by not allowing full copyright protection for such artistic works, but EU law does not mandate harmonisation (and it doesn't), what reason is there to change? Professor Hargreaves recommended evidence-based policy-making, so where is the evidence on this matter?
The Press Notice from BIS (have I mentioned my aversion to trendy names? But this isn't just an "operating name" for the Department of Trade) hints at what the evidence might show. One of the aims of the current Bill is:
Deterring the importation and sale of unauthorised replicas of classic designs which qualify for copyright protection and extending copyright protection for mass-produced artistic works to life of the creator plus 70 years. These measures will promote innovation in the design industry and encourage investment in new products, while discouraging unauthorised copies.Which seems to me to be saying that the period of protection afforded by the registered design system clearly isn't enough, given the longevity of some designs (and the fact that until recently no-one bothered very much with registering designs anyway). Far from promoting innovation, though, removing the restrictions on copyright term will encourage the use of classic designs. That might be a good thing in itself, but the professed policy goals appear to be the complete opposite ...
At least section 51 has removed the biggest problem caused by copyright interfering in the field of industrial designs - there might be copyright in the design of an exhaust pipe (if embodied in an artistic work) but making the article won't infringe copyright in the artistic work. So perhaps abolishing section 52 won't be an unmitigated disaster. It just seems totally misguided and contrary to the evidence.
The Information Notice then goes on, without drawing breath (and therefore suggesting that this is part of the same thought process):
Currently, when section 2(2) of the European Communities Act 1972 is used to amend the exceptions to copyright and performance rights, this can cause difficulties as its use may require a downwards adjustment of criminal penalties in copyright legislation.
An order making power to allow amendment of any exceptions to copyright and performance rights (via secondary legislation) will enable the Government to preserve the level of penalties which are set out in the substantive copyright legislation. In some cases this includes penalties of up to ten years for copyright infringement on a commercial scale. It would not allow any reduction or increase in penalties.Excuse me, but that first paragraph requires some explanation. I just don't see how that happens, though I am quite prepared to accept that it does. As for the second paragraph, the ineptitude of the author again becomes glaringly apparent: what is the "order making power" referred to? It clearly means an order that makes power: had the author intended to mean a power to make orders he or she should have written "an order-making power", and that seems to be what was intended. OK, so after a little thought I worked out the meaning, but no reader should be obliged to think through what the author intended to write. The whole point is to make the meaning clear by means of the words (and punctuation) used. Especially where the author purports to be a professional writer.
Saturday, 19 May 2012
Happy St Ivo's Day!
St Ivo, as everyone who has ever met my former colleague Robert Venables will know, is the patron saint of lawyers. You can learn more about him (St Ivo, that is, not Robert) on Wikipedia here - and no, I didn't create that entry.
Friday, 11 May 2012
Shooting up the Amazon charts
Just back from INTA, handing out business cards in the form of a bookmark advertising the Dictionary, and up the charts it shoots - number 78,686 in books, up from somewhere in the mid-two millions, and - even more satisfying - fourth among legal dictionaries. This probably reflects a handful of sales, but I'm not quibbling.
Saturday, 28 April 2012
One of the worst IP systems for consumers
That's how Consumers International rate the UK, in a recent report, which places only Thailand and Brazil (out of 30 countries) below us. Hat tip to Out-Law (of course!) for alerting me to it. The report seems to focus - naturally enough - on matters like home copying, on which UK law is found badly wanting. There is also criticism for the increase in copyright term for sound recordings - the complete antithesis of evidence-based policy-making. the lack of pre-grant opposition system in patent law is another area - showing that this isn't only about copyright. I hope they might have a go at trade marks in the future, too!
Copyright protects what?
The self-styled Intellectual Property Office's "IP Insight" offers a piece on how to protect a recipe, which includes this remarkable paragraph:
But copyright has never protected literacy, though on this showing it certainly needs protection from somewhere ...
I have said before, and will keep on saying, that it is not and should not be the Patent Office's job to give advice on intellectual property matters. If there is an unmet need for such advice, there are other ways of providing it and thousands of professionals ready and willing to give it. I do not approve of the use of taxpayers' (or applicants'!) money to create a state-funded rival to professional advisers - and when they offer misinformation of this standard, the case against surely becomes overwhelming.
Copyright is the area of Intellectual which protects: literacy, dramatic, musical and artistic work; it provides the owner with control over how the work is issued to the public, reproduced, performed, published, adapted or broadcast.Even if you're trying to dumb your message down for the benefit of a lay audience (which doesn't have to mean patronising them, incidentally) it's unhelpful to omit the essential adjective "original" from that list of what copyright protects. It's also misleading to say that a patent will protect a concept - where do they get this rubbish from?
But copyright has never protected literacy, though on this showing it certainly needs protection from somewhere ...
I have said before, and will keep on saying, that it is not and should not be the Patent Office's job to give advice on intellectual property matters. If there is an unmet need for such advice, there are other ways of providing it and thousands of professionals ready and willing to give it. I do not approve of the use of taxpayers' (or applicants'!) money to create a state-funded rival to professional advisers - and when they offer misinformation of this standard, the case against surely becomes overwhelming.
Saturday, 21 April 2012
Standardised packaging for tobacco products?
I read the consultation paper - a short and easy read - on what the Department of Health is pleased to refer to as "standardised packaging" for tobacco products, courtesy of my old friend Mike Jewess, when we found ourselves on the same train the other day. Clearly, there are trade mark implications for any law that might come along limiting what cigarette manufacturers (and that of course is whom this is aimed at) may put on their packaging. We aren't talking plain packaging here (though that's how it is often referred to), because they'll still be able to put their name and the name of the product on the packet - along with the dire health warnings the ineffectiveness of which makes me doubt that standardised packaging will make much difference.
Well, of course, if you have a trade mark and don't use it, you risk losing it. If the law says you can't use it, you probably have good reason which would overcome a non-use challenge, so perhaps that argument doesn't get you very far: and I guess it has happened in the past, with Olympic signs, red cross and red crescent, and even the word ANZAC. Anyway, if you can't use the trade mark what's the point of maintaining it? The tobacco industry has resorted to arguing that the UK's international treaty obligations prevent it from legislating to require standardised packaging, because of the trade marks aspects, which seems to me like grasping at straws.
If people aren't put off buying tobacco products by the health warnings, how likely is it that making the packaging less glamorous is going to stop anyone? A fortiori, how is going to help smokers kick the habit? Even if cigarettes were sold in plain brown cardboard packets I can't imagine it would be much of a deterrent, and the manufacturers would save on manufacturing costs which can't be an intended consequence. The consultation paper raises questions about cross-border shopping (a concept which, helpfully, it explains to readers) and illicit imports (I don't think the word "contraband" is too strong, though the consultation paper doesn't use it), which led me to the idea that standardised packaging would actually help HMRC and brand owners because imported packets would stick out like sore thumbs.
If the government stipulated that health warnings had to be of a certain minimum size, though, they could require a packet of 20 cigarettes to be so large you'd need a van to move it. Now that might be a deterrent. Even so (assuming that brilliant suggestion won't be taken up) I take the view that if standardised packaging stops one person from smoking, it's justified. I just know, however, that no smoker I have ever known would give up so easily. They need more than that to help them to do so.
Well, of course, if you have a trade mark and don't use it, you risk losing it. If the law says you can't use it, you probably have good reason which would overcome a non-use challenge, so perhaps that argument doesn't get you very far: and I guess it has happened in the past, with Olympic signs, red cross and red crescent, and even the word ANZAC. Anyway, if you can't use the trade mark what's the point of maintaining it? The tobacco industry has resorted to arguing that the UK's international treaty obligations prevent it from legislating to require standardised packaging, because of the trade marks aspects, which seems to me like grasping at straws.
If people aren't put off buying tobacco products by the health warnings, how likely is it that making the packaging less glamorous is going to stop anyone? A fortiori, how is going to help smokers kick the habit? Even if cigarettes were sold in plain brown cardboard packets I can't imagine it would be much of a deterrent, and the manufacturers would save on manufacturing costs which can't be an intended consequence. The consultation paper raises questions about cross-border shopping (a concept which, helpfully, it explains to readers) and illicit imports (I don't think the word "contraband" is too strong, though the consultation paper doesn't use it), which led me to the idea that standardised packaging would actually help HMRC and brand owners because imported packets would stick out like sore thumbs.
If the government stipulated that health warnings had to be of a certain minimum size, though, they could require a packet of 20 cigarettes to be so large you'd need a van to move it. Now that might be a deterrent. Even so (assuming that brilliant suggestion won't be taken up) I take the view that if standardised packaging stops one person from smoking, it's justified. I just know, however, that no smoker I have ever known would give up so easily. They need more than that to help them to do so.
Gmail in Germany too now
Google has been unable to use the name Gmail for its email service, because one Daniel Giersch had an earlier trade mark registration. They had a similar problem in the UK which was resolved a bit more than a year ago. Now, papers filed with the German trade mark office indicate that they have sorted something out with Mr Giersch, too. The story is here on the CIO website (no, I don't know who they are but it's a good report).
Where do you think Stilton cheese is made?
If you thought it comes from Stilton, you'd be wrong. The PDO allows eight producers, none of them in Stilton, to produce the cheese, so a cheesemaker in Stilton cannot call their product Stilton cheese. It was, apparently, given the name because it was supplied in coaching inns there.
Cheese names are a complete mess, with Cheddar coming from anywhere in the world, not just Cheddar (in other words, the name has become generic for a particular type of cheese - indeed, a pretty generic type of cheese) and other abominations (IMHO) like Somerset Brie - and Danish Feta, if I remember correctly ... Whatever the reasons for Stilton being called Stilton, no-one is going to be deceived if cheese made there bears the name of the village, and the system is only going to be brought into disrepute if the present situation is allowed to pertain.
The Telegraph reports that DEFRA is being asked to change the rules, and if it accepts that there is a case for change the matter will go out to consultation for twelve weeks. Watch this space!
Cheese names are a complete mess, with Cheddar coming from anywhere in the world, not just Cheddar (in other words, the name has become generic for a particular type of cheese - indeed, a pretty generic type of cheese) and other abominations (IMHO) like Somerset Brie - and Danish Feta, if I remember correctly ... Whatever the reasons for Stilton being called Stilton, no-one is going to be deceived if cheese made there bears the name of the village, and the system is only going to be brought into disrepute if the present situation is allowed to pertain.
The Telegraph reports that DEFRA is being asked to change the rules, and if it accepts that there is a case for change the matter will go out to consultation for twelve weeks. Watch this space!
Monday, 16 April 2012
Android copyright infringement case in California
Today, Oracle and Google face each other in court in San Francisco. Here is the story on the FT website. Oracle allege that Google needed a licence to use Java in its Android operating system, so it has infringed copyright. Java is even available as open-source software, so Google did not need even to pay a licence fee - except that the viral effect of open-source licensing would have infected (in the nicest possible way) Android.
Google prefers to keep the Android "ecosystem" (another of those ubiquitous metaphors!) closed, so developers can (as Lex puts it in the FT today) check in but they can't check out. It goes against the ethos of Java, which was designed to work across platforms - in many ways, a paragon of openness. Commentators (again, Lex) find it odd that Oracle of all people should be banging the openness drum - a view that needs to be updated, surely, now that Oracle is the provider of OpenOffice, a superb piece of software that should overturn the world order ... Even so (again, as Lex observes) Google have surely done the Java community a huge favour by providing such a popular platform for which they can develop apps that will be readily adapted to "proper" Java. A strange basis for a law suit.
Google prefers to keep the Android "ecosystem" (another of those ubiquitous metaphors!) closed, so developers can (as Lex puts it in the FT today) check in but they can't check out. It goes against the ethos of Java, which was designed to work across platforms - in many ways, a paragon of openness. Commentators (again, Lex) find it odd that Oracle of all people should be banging the openness drum - a view that needs to be updated, surely, now that Oracle is the provider of OpenOffice, a superb piece of software that should overturn the world order ... Even so (again, as Lex observes) Google have surely done the Java community a huge favour by providing such a popular platform for which they can develop apps that will be readily adapted to "proper" Java. A strange basis for a law suit.
Sunday, 15 April 2012
Trade marks - indefinite copyright?
If your copyright expires, how about using a trade mark instead? I was interested, and rather pleased, to read this posting on a blog entitled IP in the Digital Age, "the class blog for CPSC 182: IP in the Digital Age at Yale College" - not sure why that doesn't say "University", but maybe it's one of those transatlantic things: the link on the blog certainly leads to Yale University's website. Anyway, the point is that this business of using trade marks to supplement copyright protection is widespread, unduly restrictive and undesirable. At least, I think it is.
What's the solution? Not to try to make the two rights mutually exclusive, that's for sure. Tempting, but doomed to failure. That's a road you can only set off down if you haven't grasped the fact that trade marks and copyright are distinct pieces of property. It's easy to get hung up on the way that both rights protect seemingly-identical subject-matter, but the fact is that they don't. In the example cited in the Yale blog, there is copyright not in the cartoon character Popeye but in artistic works depicting him, and if you don't get that you're going to be floundering in the sea that is called intellectual property.
Likewise, a trade mark does not protect Popeye: rather, it protects the trade reputation or goodwill that attaches to the name or image or whatever. A trade mark is an indication of origin, even if nowadays it performs several other jobs - like (as Floyd J remarked at a seminar I went to last autumn) one of those multi-function tools you see in the Sunday supplements which enable you to do whatever you need to do to your bicycle. But the advertising function and the investment function - I can't remember any others off-hand - are linked as much as the source-indicating function to goodwill, so I think the statement at the beginning of this paragraph still holds. The problem is that trade mark owners are trying to extend the scope of trade mark protection, and trade mark offices are letting them get away with it. The problem is one of over-reaching trade mark protection (which is not to say that there's nothing wrong with copyright) and the solution is to put trade marks back in their box.
Discuss.
What's the solution? Not to try to make the two rights mutually exclusive, that's for sure. Tempting, but doomed to failure. That's a road you can only set off down if you haven't grasped the fact that trade marks and copyright are distinct pieces of property. It's easy to get hung up on the way that both rights protect seemingly-identical subject-matter, but the fact is that they don't. In the example cited in the Yale blog, there is copyright not in the cartoon character Popeye but in artistic works depicting him, and if you don't get that you're going to be floundering in the sea that is called intellectual property.
Likewise, a trade mark does not protect Popeye: rather, it protects the trade reputation or goodwill that attaches to the name or image or whatever. A trade mark is an indication of origin, even if nowadays it performs several other jobs - like (as Floyd J remarked at a seminar I went to last autumn) one of those multi-function tools you see in the Sunday supplements which enable you to do whatever you need to do to your bicycle. But the advertising function and the investment function - I can't remember any others off-hand - are linked as much as the source-indicating function to goodwill, so I think the statement at the beginning of this paragraph still holds. The problem is that trade mark owners are trying to extend the scope of trade mark protection, and trade mark offices are letting them get away with it. The problem is one of over-reaching trade mark protection (which is not to say that there's nothing wrong with copyright) and the solution is to put trade marks back in their box.
Discuss.
Friday, 6 April 2012
The Utility of Design Law
The Patent Office has commissioned research into the utility of design law, to be carried out by Speechly Bircham (for whom, once upon a time, I worked in my first job in private practice) and Mountainview (www.mountainview.co.uk, is it?). I guess this must be a very short questionnaire, because our design law was carefully crafted to give no worthwhile protection to spare parts, particularly those for cars but also those for white goods - areas of technology which at the time were converging, as it happens, courtesy of Sir Clive Sinclair, though that has nothing to do with it - and, as an unintended consequence, no worthwhile protection to anything else either. Well, I exaggerate a little, and in 1988 the Registered Designs Act was made a bit better but still nobody bothered with it very much.
The questionnaire is available until 20 April according to the press release, so log on and have some fun.
The questionnaire is available until 20 April according to the press release, so log on and have some fun.
IP support for SMEs from the civil service
The Hargreaves Review recommended that ways should be found to give SMEs access to affordable advice on intellectual property, which of course is great news for those of us trying to make our living from doing precisely that. How are we supposed to be able to do so if civil servants are doing it for nothing? Of course, civil servants aren't the right people to give advice - they can educate, sure, but not more. The Patent Office and Companies House have now announced a series of events to promote knowledge of intellectual property.
Trade Marks and Trade Marks (Fees) (Amendment) Rules 2012
These Rules amend the Trade Mark Rules 2008. According to the Explanatory Notes:
Rule 2 amends Rule 14 to remove the ability of the proprietor of a Community trade mark or international trade mark entitled to protection in the European Union under the Madrid Protocol to request to be notified of the results of searches under article 4 of the Trade Marks (Relative Grounds) Order 2007. Rule 2 also amends article 27 of the 2008 Rules to remove the procedure for the merger of trade mark applications before any trademarks have been registered pursuant to those applications. It also provides that an application for merger of trade marks can only be made in respect of trade marks that have the same renewal date. The amendments made by Rule 2 also prohibit an application for merger of trade marks which are the subject of proceedings for revocation or invalidation or which are the subject of an international registration pursuant to the Madrid Protocol.
Thursday, 5 April 2012
Commission investigating allegations about Motorola patents
Hat tip to Out-law.com for this piece about the European Commission launching an investigation into Motorola's patent licensing activities. In the fraught world of mobile telecommunications patents, which often cover technology that needs to be available for others to use because standards are based on them, FRAND rules - or should.
ACTA's expedition to Luxembourg
Reuters reports that the widely-unloved Anti-Counterfeiting Trade Agreement, the antithesis (per Bill Patry, into whose mouth I am putting words but I hope not entirely the wrong ones) of evidence-based IP policy-making, has been referred to the Court of Justice by the Commission, to see whether it breaches citizens' fundamental rights including that of free speech. Reuters describe it as a treaty on copyright theft, which sloppy language ought to be grounds for rejecting it without further ado - except that I doubt the agreement actually uses that horrible, in accurate and unnecessary neoligism. Why, if commentators can't use the correct words, couldn't we have an international agreement on copyright bogarting?
Patents or copyright?
Hat tip to Sandrine Hilaire, avocat, of Strasbourg, "capital of Europe" according to her firm's website, who shared this on Facebook: a somewhat depressing story in which the patents seem to have become the end, not the means, but also depressing for the inability of the journalist to tell his copyright from his patents - despite having both in the headline. "Un sérieux bémol" as she says, giving me my French word of the day (a couple of days ago it was "chienlit", which perfectly describes a big-city Marathon). Literally, un bémol is a flat sign in musical notation, which seems an excellent metaphor for a journalist's failure to distinguish one legal right from another.
Tuesday, 3 April 2012
Patry on leadership
I hate to think how long ago I went to Bill Patry's Stewart Memorial lecture, found it disappointing, blogged to that effect, and some months later received an email from him saying he was sorry but I had missed the point. As the bard sang, I was so much older then, I'm younger than that now. I took exception to his treating copyright as a metaphor, because statute told me it was more than that. Now I understand how true what he said, back in 2007, was.
He still has much to say - critical stuff - about the way copyright laws are made. This evening, at the end of a day spent going from one copyright audience to another (sadly I missed a breakfast event, my running injury making travel earlier in the day out of the question) he was hugely complimentary of the evidence-based approach which supposedly informs all UK IP policy (and Prof Hargreaves was in the audience to hear him say so). Sir Robin Jacob, playing the chat show host to Bill Patry's guest, challenged him on what this meant, and we were treated to a lively discussion which I shall have to write up later, having spent half an hour exploring the limitations of the virtual keyboard on my office Playbook and only managed to produce this much.
I wondered where the introduction to his talk was taking us - especially after Sir Robin suggested that after a 15 minute opening he'd start asking questions: not very long to lay out what you have to say, and thankfully Mr Patry took about twice as long as that, so the introduction had settled into its context in good time. It was, however, given the title of the event ("What would leadership in copyright policy look like?"), appropriate to explore notions of leadership, even in the strained terms in which the expression is used in the US Congress.
The introduction led to the way copyright law - indeed, almost all law - in the US is made, coming not from the executive branch but from Congress, and in the case of copyright from the Judiciary Committees. Not, I admit, a matter to which I had ever given much thought: the differences between the US system of government and ours are greater than I'd really appreciated. He talked about regulatory capture, and gave examples of how it affected the way that the law was made - the DMCA being a paradigm example to illustrate many of his points, with the Commerce Committees prevailing on the issue of safe harbors.
Copyright law, if I understood his thesis correctly (and perhaps he'll correct me if I am wrong!), is a product of ideology, or one might even say religion, rather than a rational process based on evidence. Legislators do not want to understand what the evidence suggests. I think there are plenty of instances of laws being made as a knee-jerk reaction to the pressures from lobbyists. Is that not how we came to have such a disastrous law on design protection, which the Hargreaves Review criticised as being no use (I paraphrase) to the design industry? Perhaps, but it suited the car spares industry in 1988 and they were the ones making the noise! It even flew in the face of the evidence - I remember Ford making a presentation to MPs, showing how an infringing, or spurious (or, in Ford-speak, counterfeit) bonnet (hood, if your preferred language is American English) could decapitate the occupants of the front seats in a head-on accident because, unlike the original, it was not designed to fold in the same way, or even at all. There's no shame in not knowing everything, Mr Patry told us - oh, if only I'd been told that back in the late 80s - and legislators, leaders, have to be prepared to learn. Indeed: lobbyists consider themselves to be the source of information for backbench members of parliament.
The laws that the lawmakers make must be ones that people are prepared to obey. The top down approach has never worked, he said, ever since the Ten Commandments. The rules have to match the way people want to behave. Indeed. Our previous government - not that I notice the Coalition doing much different - put in place a vast body of laws that people see no need to obey: legislation clearly has not stopped drivers using handheld mobile phones. The sheer volume of legislation calls the legitimacy of the government into question, makes low-level law-breaking routine, an accepted form of behaviour. Witness this from the excellent Charles Crawford's Blogoir.
Examples of IP legislation that lack legitimacy because they are so far removed from ordinary human behaviour - because they are not based on evidence - include ACTA and, in the US, SOPA. The US lacks the evidence-based approach to policy recommended by Prof Hargreaves: so does most of the world, including the EU. As Sir Robin observed, EU copyright law emerges from a very untransparent (sic, but an excellent word for it) process.
So, if the purpose of copyright is to encourage the creation of more works, using the "but for" argument that without copyright the supply would be sub-optimal, we need more. But does the evidence bear this out? Does extending the term of protection lead to the creation of more copyright works? Of course not, especially by dead authors. Does extending protection to mundane stuff like business letters increase human happiness? No, they exist for reasons quite unconnected with copyright. This evidence-based approach argues (to my mind, anyway) for a drastic reduction in the scope of protection - for an originality test which requires the author's own intellectual creation, for one thing.
There is an evidence base for a lot in the copyright field: it is the low level of renewals after 28 years that took place in the US, before it acceded to Berne and fell into step with the rest of the world - which perhaps looks now increasingly like the wrong way for the countries of the world to get into step. Mandatory formalities, including renewal, separated the wheat from the chaff - even if the renewal fee were only $3 it would ensure useless copyrights withered away. The system we have is an ideological, or religious, approach which obliges people to have copyright whether they want it or not - an approach which Mr Patry traced back to Rousseau, opening up a whole new line of reading for me - time to visit Project Gutenberg with my Kindle again, another topic which came up in the course of the evening ...
A fantastically thought-provoking evening. Someone needs to do the same for trade marks - and I might try to make a start: do they satisfy any sort of evidence-based policy? As for Party on copyright, I've bought a copy of "How to Fix Copyright", just out from OUP, had it autographed by the author, and will let you know what I think of it when I have read it - soon(ish). I expect it will be excellent.
He still has much to say - critical stuff - about the way copyright laws are made. This evening, at the end of a day spent going from one copyright audience to another (sadly I missed a breakfast event, my running injury making travel earlier in the day out of the question) he was hugely complimentary of the evidence-based approach which supposedly informs all UK IP policy (and Prof Hargreaves was in the audience to hear him say so). Sir Robin Jacob, playing the chat show host to Bill Patry's guest, challenged him on what this meant, and we were treated to a lively discussion which I shall have to write up later, having spent half an hour exploring the limitations of the virtual keyboard on my office Playbook and only managed to produce this much.
I wondered where the introduction to his talk was taking us - especially after Sir Robin suggested that after a 15 minute opening he'd start asking questions: not very long to lay out what you have to say, and thankfully Mr Patry took about twice as long as that, so the introduction had settled into its context in good time. It was, however, given the title of the event ("What would leadership in copyright policy look like?"), appropriate to explore notions of leadership, even in the strained terms in which the expression is used in the US Congress.
The introduction led to the way copyright law - indeed, almost all law - in the US is made, coming not from the executive branch but from Congress, and in the case of copyright from the Judiciary Committees. Not, I admit, a matter to which I had ever given much thought: the differences between the US system of government and ours are greater than I'd really appreciated. He talked about regulatory capture, and gave examples of how it affected the way that the law was made - the DMCA being a paradigm example to illustrate many of his points, with the Commerce Committees prevailing on the issue of safe harbors.
Copyright law, if I understood his thesis correctly (and perhaps he'll correct me if I am wrong!), is a product of ideology, or one might even say religion, rather than a rational process based on evidence. Legislators do not want to understand what the evidence suggests. I think there are plenty of instances of laws being made as a knee-jerk reaction to the pressures from lobbyists. Is that not how we came to have such a disastrous law on design protection, which the Hargreaves Review criticised as being no use (I paraphrase) to the design industry? Perhaps, but it suited the car spares industry in 1988 and they were the ones making the noise! It even flew in the face of the evidence - I remember Ford making a presentation to MPs, showing how an infringing, or spurious (or, in Ford-speak, counterfeit) bonnet (hood, if your preferred language is American English) could decapitate the occupants of the front seats in a head-on accident because, unlike the original, it was not designed to fold in the same way, or even at all. There's no shame in not knowing everything, Mr Patry told us - oh, if only I'd been told that back in the late 80s - and legislators, leaders, have to be prepared to learn. Indeed: lobbyists consider themselves to be the source of information for backbench members of parliament.
The laws that the lawmakers make must be ones that people are prepared to obey. The top down approach has never worked, he said, ever since the Ten Commandments. The rules have to match the way people want to behave. Indeed. Our previous government - not that I notice the Coalition doing much different - put in place a vast body of laws that people see no need to obey: legislation clearly has not stopped drivers using handheld mobile phones. The sheer volume of legislation calls the legitimacy of the government into question, makes low-level law-breaking routine, an accepted form of behaviour. Witness this from the excellent Charles Crawford's Blogoir.
Examples of IP legislation that lack legitimacy because they are so far removed from ordinary human behaviour - because they are not based on evidence - include ACTA and, in the US, SOPA. The US lacks the evidence-based approach to policy recommended by Prof Hargreaves: so does most of the world, including the EU. As Sir Robin observed, EU copyright law emerges from a very untransparent (sic, but an excellent word for it) process.
So, if the purpose of copyright is to encourage the creation of more works, using the "but for" argument that without copyright the supply would be sub-optimal, we need more. But does the evidence bear this out? Does extending the term of protection lead to the creation of more copyright works? Of course not, especially by dead authors. Does extending protection to mundane stuff like business letters increase human happiness? No, they exist for reasons quite unconnected with copyright. This evidence-based approach argues (to my mind, anyway) for a drastic reduction in the scope of protection - for an originality test which requires the author's own intellectual creation, for one thing.
There is an evidence base for a lot in the copyright field: it is the low level of renewals after 28 years that took place in the US, before it acceded to Berne and fell into step with the rest of the world - which perhaps looks now increasingly like the wrong way for the countries of the world to get into step. Mandatory formalities, including renewal, separated the wheat from the chaff - even if the renewal fee were only $3 it would ensure useless copyrights withered away. The system we have is an ideological, or religious, approach which obliges people to have copyright whether they want it or not - an approach which Mr Patry traced back to Rousseau, opening up a whole new line of reading for me - time to visit Project Gutenberg with my Kindle again, another topic which came up in the course of the evening ...
A fantastically thought-provoking evening. Someone needs to do the same for trade marks - and I might try to make a start: do they satisfy any sort of evidence-based policy? As for Party on copyright, I've bought a copy of "How to Fix Copyright", just out from OUP, had it autographed by the author, and will let you know what I think of it when I have read it - soon(ish). I expect it will be excellent.
Sunday, 25 March 2012
D and G: David and Goliath?
I just posted this on the Motor Law blog and thought it merited exposure here too ...
Motor Law's friends at Auto Retail Network report how two partners in a Fife-based garage business received a notice of threatened opposition from Dolce & Gabbana when they tried to register their trading name, D + G Autocare. The Italian fashion house claimed that the business, which has nine branches in Scotland, could be confused with it if the trade mark application were allowed to proceed. Are they serious?
The garage business is run by George Simpson and David Hunter, hence the name. Mr Simpson told the Daily Record (which has the story here): ‘it was outrageous. How on earth could a garage that knocks out £35 MoT tests be confused with a company known for its £735 handbags?’ (I see that Mr Simpson spotted the "David and Goliath" analogy - I can only say that I thought up the title of this post before I read the Daily Record website.) Their lawyers replied with what Auto Retail Network called "a stiff rebuttal", leading to a sensible compromise: so long as the garage kept ‘Autocare’ as part of its trading name, the fashion house would withdraw its objections. I can't find the trade mark application online, but I bet that it corresponded to the company name and therefore the "Autocare" part was there anyway, which makes Dolce & Gabbana's threats even less justifiable.
There is protection in the Trade Marks Act 1994 for businesses that just use their own name, even if that name is invented. However, they can only do so if it is in accordance with honest practices in industrial and commercial matters - which would exclude trying to take a free ride on the reputation of an earlier business. Hard to see how the Italians' reputation could help with car servicing in Fife ... Perhaps they just want to monopolise the style "D&G", like so many big brand owners. The Act also protects companies with a local reputation, who can't be forced out of business by trade mark bullies, but they don't have a right to register their trade mark. Fortunately, common sense seems to have prevailed here, but it's such a shame that they should have been put to the trouble and expense. The trade mark system consistently fails the small business community.
Friday, 23 March 2012
Princess Caroline's right to privacy
Having just recorded another in my series of short lectures to accompany the London University External LLB subject guide, I have had privacy cases on my mind. In particular, the pronouncements of the European Court of Human Rights in cases brought by Princess Caroline von Hannover (formerly of Monaco) are a bit confusing.
First of all we have VON HANNOVER v. GERMANY - 59320/00 [2004] ECHR 294 (24 June 2004) (the ECHR seems to shout the names of its cases) followed a year later by VON HANNOVER v. GERMANY - 59320/00 [2005] ECHR 555 (28 July 2005). The second judgment is concerned only with the "friendly settlement" of the case which gave rise to the first judgment. Then last month along came (much quieter) Von Hannover v. Germany (no. 2) 40660/08 [2012] ECHR 228 (7 February 2012), and the court seems to have watered down its earlier judgment. It had decided that freedom of expression (Article 10) does not prevail over privacy (Article 8) unless the individual concerned held some public office. Has the complainant a reasonable expectation of privacy, assessed objectively? If they do, there can be liability for misuse of personal information.
So far, so good, and very vague. The new case arose out of the same episode, in which the Princess and her husband complained about the German courts not granting them an injunction against photographers who took pictures of them without consent. The ECHR decided that the German courts' failure had breached the princess's human rights. The new proceedings involved photographs of the couple on a skiing holiday. This time the court took the view that they had to be regarded as public figures and that provided the media struck the right balance (which it believed they had done) the right to privacy was not infringed. The earlier judgment had attracted considerable criticism from the media, and from anti-censorship groups: the new one has been received as redressing the balance. The difference lies in the fact that in the later case the photos were used in articles which discussed the behaviour of the children of the late Prince Rainier, who at the time was seriously ill, and this elevated the press coverage to a matter of public interest. That strikes me as a rather feeble excuse, but a product of modern celebrity-obsessed journalism perhaps. Were the photos in any way essential to the telling of the story? Hard to imagine that they were. The fact that the photos were all taken in public places also had a bearing on the outcome.
Zara apologises for misuse of Harris Tweed
My school uniform included a Harris Tweed jacket, so I was introduced at an early age to the protection given to that designation - although I don't believe I understood what it was all about at that time. I did, however, appreciate the qualities of the tweed itself - it stayed looking remarkably smart despite boarding school life. I have never since had any desire to wear a herringbone-pattern tweed jacket, though. School can do that sort of thing to you.
The Harris Tweed Authority owns four certification trade marks, one dating back to 1909. The Harris Tweed Act 1993 empowers the court to grant an injunction (or, in Scotland, and interdict) against anyone dealing in non-authentic - "authentic" meaning hand woven, in the Hebrides, from virgin wool - "Harris Tweed". That's a powerful supplement to a certification trade mark, although there are no criminal penalties under the 1993 Act. It seems recent in time, at least to one of my age, but of course it predates the Trade Marks Act and the criminal sanctions introduced there.
The Authority has recently, according to The Lawyer, been busy extracting an apology from Zara, the fashion house, which had been marketing through its online arm a garment which it described using the expression "Harris Tweed". Not a good idea, though they seem to have got off with just making an apology. With a brand like that, the Authority has to be on-the-ball and ready to take
The Harris Tweed Authority owns four certification trade marks, one dating back to 1909. The Harris Tweed Act 1993 empowers the court to grant an injunction (or, in Scotland, and interdict) against anyone dealing in non-authentic - "authentic" meaning hand woven, in the Hebrides, from virgin wool - "Harris Tweed". That's a powerful supplement to a certification trade mark, although there are no criminal penalties under the 1993 Act. It seems recent in time, at least to one of my age, but of course it predates the Trade Marks Act and the criminal sanctions introduced there.
The Authority has recently, according to The Lawyer, been busy extracting an apology from Zara, the fashion house, which had been marketing through its online arm a garment which it described using the expression "Harris Tweed". Not a good idea, though they seem to have got off with just making an apology. With a brand like that, the Authority has to be on-the-ball and ready to take
Monday, 19 March 2012
Support for old software
Rob Addy, on his Gartner blog, raises an interesting question about extended support fees for software. We are talking here about support for old versions of software, and the way support and maintenance fees are structured has always looked to me like a racket designed to push reluctant users into upgrading. I am annoyed when my new computer, running Windows 7, won't speak to an old inkjet printer or run ViaVoice Millennium Edition. What's that all about? It's about Lexmark and IBM (and others) trying to make me buy stuff I don't need (because I have stuff that works fine for me) and can't afford. Thank goodness Windows 7 has an XP emulator.
A client of mine, or rather of my old firm's, or rather of the firm where I used to work, always argued that maintenance charges should go down over time, not up as they invariably do. When you're talking about old versions, the case must be even more compelling - the bugs have been ironed out, the users know their way around the program, the cost of keeping it running is minimal.
But don't read me rambling on about it - read his original posting.
A client of mine, or rather of my old firm's, or rather of the firm where I used to work, always argued that maintenance charges should go down over time, not up as they invariably do. When you're talking about old versions, the case must be even more compelling - the bugs have been ironed out, the users know their way around the program, the cost of keeping it running is minimal.
But don't read me rambling on about it - read his original posting.
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