Arnold J on copyright law reform: the Herchel Smith lecture

I first attended the Herchel Smith lecture on intellectual property law in about 1980 – probably one of the first things I went to after I qualified. I have no idea how many I have attended since, but this evening I had the pleasure of hearing Sir Richard Arnold talking about copyright reform, and in terms that I could relate to. That means that he went right back to the Whitford Report, and indeed a great deal further than that.

His thesis was that copyright reform, which is long overdue (I thought there was a 30-year rule, with a bit of latitude to accommodate parliamentary timetables: 1911, 1956, 1988 …, but on that basis we have a few years to wait), ought to be holistic rather than incremental. Would 'iterative' be the right word for the way copyright law is developing? I favour 'gestalt' instead of 'holistic', but I might be missing something, or just trying to be pretentious. Anyway, root and branch reform is called for.

Whitford was a root and branch review of copyright law, and the 1988 Act a (or 'an'?) holistic reform. So was Gregory, and the 1956 Act. I didn't know about what had gone before, so I found Sir Richard's speech very educational, but Whitford remains for me the essential starting point of modern copyright law, simply because it was current when I first came to the subject – followed by Nicholson and then green and white papers. Copyright neophytes now presumably have the same relationship with Hargreaves, or perhaps Gowers, or Gowreaves as it suddenly occurred to me we should refer to the process of copyright reform between 2005 and 2012.

Since Whitford and the 1988 Act which eventually put into law many of that committee's suggestions (but not all of them, especially on designs, a subject on which the Whitford Committee was split but the government hatched its own ideas) reform has been piecemeal at best. Sir Richard suggested that comparisons with a patchwork quilt were an insult to the art of quilting, which I thought a nice turn of phrase, or an 'obsessively reused palimpsest' which is something I need to think about (with a big dictionary to help me appreciate the nuances). If palimpsest it be, the over-writing must have been getting progressively smaller and would now be barely legible.

Whitford, I remember, compared the 1956 Act to an elegant Queen Anne house to which there had been Georgian, Victorian, Edwardian and finally Elizabethan (the second, that is) additions: an architectural hotchpotch, and a legal one too. The 1988 Act, as it now stands, much amended, probably has new wings which dominate the original building, including modernist, brutalist, neo-classical and goodness knows what else: shards, cheesegraters and gherkins grafted on to the modest 18^th century original. Sir Richard listed seven problems with the 1988 Act, which I neglected to note down, but if I were to say that one of them was complexity that would not be far out. (Obsolescence, or actually being obsolete, in the face of technological progress was another,and a failure to conform to the structure of EU copyright law, or what I was horrified to hear him call 'European legislation', was another, and I guess we can work out what the others might be.) Anyway, he made the important point that the seven problems had not been addressed by Gowreaves, which is not surprising given their terms of reference (and the fact that if you want IP law thoroughly reviewed it would be a good idea to get an IP lawyer to do it, rather than ex-editors of the FT, knowledgeable though such men no doubt are). Hard to argue with that, I thought, though on the way to drinks after the lecture (there being no question-and-answer session, to my disappointment) I had precisely that argument with an acquaintance: he was of the view that it will always require highly-trained specialists to understand copyright, whereas I believe that unless you can make the law comprehensible to non-specialists the urban myths which already abound will just carry on growing. I don’t know which of us is right, but root-and-branch reform could easily take the rest of my lifetime, and that is perhaps sufficient argument against the ‘holistic’ or ‘gestalt’ approach.

The Patents (Supplementary Protection Certificates) Regulations 2014

The Patents (Supplementary Protection Certificates) Regulations 2014

Copyright in actor?

The Evening Standard, organ of the Russian opposition, reports that theatre goers have been ordered (by whom it doesn't say) to delete photos of actor Martin Freeman playing Richard III. They are being told that doing so breaches theatre etiquette (quite right) and copyright. Presumably the allegation is of an infringement of copyright - but in what? Idiots who fore off accusations like deserve to be required to cite the law on which they rely rather than trust to urban myth. It brings copyright, and the law in general, into disrepute. 

Protecting trade secrets: Max Planck Institute on Commission's proposals

I still haven't got my head round the proposed directive on the protection of trade secrets. I thought there wouldn't be much exciting in it - but whether that turns out to be a fair assessment or not, there is a lot in Max Planck's comments on it to excite me. (Yes, I know they are not actually Max Planck's comments - see the entry in my Dictionary about the institute, or more accurately institutes as there are as many as 80 of them under the auspices of the Max Panck Gesselschaft) named after the man, and indeed the entry in it for the man himself.) What excites me is the suggestion that the directive should extend protection to prevent reverse engineering.
What? This is the most outrageously protectionist idea I can recall ever hearing of. The MPI has often struck me as viewing intellectual property as a Good Thing without considering whether a lack of protection might be a better thing. So the Institute says:

The use without restrictions of trade secrets obtained through reverse engineering appears problematic, in particular in sectors where – other than in the case of software – no intellectual property protection is available, although considerable investments are made in the development of new products. Notable examples include the cosmetic industry, which regularly invests quite heavily in the development of perfumes, but where the know-how generated thereby can be decoded with relative ease through reverse engineering.

The unrestricted use of such know-how raises concerns that it could pose a substantial threat to the companies concerned, eventually leading to market failure whereby such goods would no longer be produced. Accordingly, it must be assessed whether the existing (quite problematic) prohibition on advertising such products as imitations or replicas should be replaced by other measures that are directly aimed at protecting the relevant interests.

Perfumes? What a lousy example to use. As Ian Connor of Pinsent Mason says in Out-Law's commentary on the MPI paper, the evidence in the smell-alike cases showed that it was impossible to achieve an identical fragrance by reverse-engineering (and the fact that a cheap imitation couldn't use the expensive ingredients no doubt contributes to that). If there is an element of unfair competition in imitating fragrances, then it has to be dealt with as unfair competition: for goodness sake, don't try to bring trade secrets law to bear on it. In so far as trade mark law is part of the law of unfair competition, that approach has been tried, but just because it has failed doesn't mean that we need to try something else. And just because something isn't protected doesn't mean that there is a hole in the system that needs to be repaired.

I first encountered the idea of reverse-engineering in the context of the good old Morris Marina exhaust pipe - in other words, in the dispute that eventually gave us BL v Armstrong. Copyright was used to try to stop reverse engineering, because (unlike a smell-alike) you could  make a perfectly serviceable and accurate copy of an exhaust pipe by measuring the relevant dimensions. Did the House of Lords say "oh, here's something that isn't protected, let's see if we can find a way to make the law apply?" Not at all. In fact the starting point was the opposite: here was something that copyright did protect, even against reverse engineering, and their Lordships were pretty clear that they thought this was wrong. (Lord Templemann and Lord Bridge, as I recall, to the fore: two judges who for several years resisted every attempt to expand the scope of intellectual property protection, whether in exhaust pipes, bottle shapes (as trade marks: Re Coca-Cola), sound recordings (CBS Songs v Amstrad), plastic toy bricks (Lego v Tyco), or television show formats (Green v Broadcasting Corporation of New Zealand). The majority in the House of Lords (Lord Griffith going about it in a different way, if I remember correctly) resolved the problem in the consumer's favour by reference to the "non-derogation from grant" principle known to landlord and tenant law - an even more egregious example, it has to be said, of using one law to solve a deficiency in another than the MPI's wish to use trade secrets law to solve an unfair competition problem.

The law should only give protection where there is a good reason for it. That, I think, is the "evidence-based policy-making" that Hargreaves was so keen on, and which the government seems to have forgotten about even before the ink was dry on the Professor's work (hence the increase in copyright term for sound recordings, and perhaps likewise the latest bunch of copyright "exceptions", or permitted acts as they ought properly to be called). There are limits to intellectual property protection for good reason. Some matter remains unprotected deliberately - for the simple reason that there is no justification for protecting it. There would be no incentive for anyone to do anything that they were not already doing, just a supernormal profit to be taken at the expense of the consumer. Consumer welfare in the strict economic sense is not the be-all and end-all of the matter: when you analyse this stuff as property, human rights become engaged, and a property owner should not lightly be deprived of it. But in the case of reverse engineering we are talking about matter which is not protected by property rights, and which is in the public domain where anyone can use it. It is not confidential, and to impose a confidentiality-style obligation on would-be users would be a huge retrograde step and one that takes absolutism in intellectual property to new heights.

FILING A TRADEMARK APPLICATION GETS COSTLIER IN INDIA

Guest post from our man in Bangalore, Santosh Vikram Singh of FoxMandal ...


The Government of India, vide its notification dated 1^st August 2014 has amended the existing Trademark Rules, 2002, and the amended Rules are now referred to as the ‘Trade marks (Amendment) Rules, 2014’. The proposed amendments were initially notified and made available to public on 26^th August 2013 inviting objection and suggestions from the public likely to be affected. Since, no objections or suggestions were received by the Govt. of India the proposed amendment were accepted and subsequently notified.

The salient features of the ‘Trade marks (Amendment) Rules 2014’ are:

1. The official filing fees for filing a trademark application in one class has been increased from INR ‘3,500.00’ to INR ‘4,000.00; and;
    
2. The official fees to expedite the examination of an application for the registration of a trademark, has been increased from INR ‘12,500.00’ to INR ‘20,000.00’.

It may be pertinent to note that during the Trademarks (Second Amendment) Rules, 2010, the application fee was increased from INR 2,500.00 to INR 3,500.00, however the fee for filing an application for expediting the examination which should have been proportionately increased five times of the application fee (INR 17,500.00), was inadvertently missed out which lead to a great confusion and until the latest notification it was not clear whether the fee was five times of filing fee i.e. INR 17,500.or INR 12,500.00 as mentioned in first schedule of the Trademark Rules.

Therefore, it may be seen that the current amendment is also to rectify the earlier mistake.

Since the notification came to effect since August 1^st 2014, the Controller General of Patents, Designs & Trademarks, India issued a public notice dated 7^th August 2014 stating that any applicant/agent who has filed the application on or after 1^st August 2014 and not paid the revised fee, shall have time until 30^th September 2014 to pay the balance fee failing which the application shall not be processed.

It may further be noted that if the balance fee is not paid within the afore-mentioned date, the filing date shall shift to the date of actual payment of the balance fees. Needless to mention that the date of filing an application is crucial, however, it is further important that if the application has priority of a convention application, paying the balance fee on or before due date becomes more crucial.

It may be noted that only as recent as 2010, the Government amended the official filing fees from 2,500.00 to 3,500.00, therefore, this increase by the Government can only be seen as a measure for the Trademark Office to increase their resources to ensure the long pending backlogs of applications are expedited, and on the other hand to ensure that the applicants choose their trademarks more wisely, before filing the same and to further lessen frivolous applications. 

Software support SLAs | SEQ Legal

SEQ Legal  seems to have a lot of useful stuff - including this piece on software SLAs which I am bookmarking for future reference, and sharing with my readers in case any of you (either of you?) are interested.

Sarah Lund's jumper is exhibit A in a legal battle | World news | The Observer

The Observer 
reports a copyright case over the design of the iconic jumper worn by
Danish TV detective Sarah Lund (actress Sofie Gråbøl) which the Faroe
Islands-based manufacturer has lost. The court took the view that the
design was a traditional pattern hundreds of years old. That sounds
quite plausible: I don't know what evidence might have been offered, but
to claim that the design is an original one is a bit of a stretch.





The
report digresses into a discussion of a report in Vogue on Fair Isle
sweaters, which in fact are a completely different matter (by
definition, multi-coloured). And then, incredibly, the paper places the
Faroes equidistant from Scotland, Iceland and Denmark: two-thirds
correct, but where do they think Denmark is? Or have they forgotten that
Norway is no longer part of Denmark (and hasn't been since 1814).
Moreover, since the Faroes are part of the Kingdom of Denmark, it is
pretty pointless measuring the distance between the two - rather like
asking how far it is from Scotland to the United Kingdom (pending the
forthcoming referendum, of course).

European Case Law Identifier (ECLI)

The European e-Justice Portal  sets out details of a newly-devised method of citation which I suspect will become important in the future. It explains how it works, in the process exposing the imperialism which lies at the heart, it seems, of everything the European Union does - this is not a European case law identifier, nor is the e-Justice Portal a European thing: Europe is a continent, and the legal entity with which we are concerned here is the European Union. I remain surprised that Mr Putin has not taken violent exception to these frequent attempts to apostrophise his country. (The Swiss, Norwegians and others might be expected to take less violent exception.) More to the point: lawyers work all the time with words, and giving them precise meanings (and using those precise meanings correctly) is key to our work. How on earth can we tolerate this sloppy usage of a geographical term to identify a smaller political unit? Yet every time a lawyer refers to the European Court of Justice they commit this cardinal sin.


Anyway, back to the citation system. Here's what it says:

ECLI is a uniform identifier that has the same recognizable format
for all Member States and EU courts. It is composed of five, mandatory,
elements:

• ‘ECLI’: to identify the identifier as being a European Case Law Identifier;
• the country code;
• the code of the court that rendered the judgment;
• the year the judgment was rendered;
• an ordinal number, up to 25 alphanumeric characters, in a format that
  is decided upon by each Member State. Dots are allowed, but not other
  punctuation marks.

The elements are separated by a colon. 

It gives a non-existent example of an ECLI. More useful would be to give a real one. How about ECLI:UK:SC:2013:18. Case number 18 of 2013 in the court formerly known as the House of Lords, or SCOTUK as we might call it, taking a leaf out of the American book (and perhaps demonstrating suitable contempt for New Labour's wanton destruction of tradition - but I digress). That would be Meltwater. I note that BAILII does not seem to have adopted the 'European' approach yet.

BP loses colour trade mark battle - IP Whiteboard - KWM

Mallesons' excellent IP Whiteboard  blog tells us that BP last month lost its latest attempt to register a shade of green, identified as Pantone (R) 348C, as a trade mark in Australia, there being no evidence to show that consumers identified the source of the goods from the colour alone. Being embroiled myself in opposition proceedings, where a client has fallen foul of another company's sweeping colour trade mark registration, I wish we took a similar approach in Europe: without added matter, a colour trade mark should be registered only if it constitutes the brand (Orange, for example), not just an ancillary part of it. Of course it may be that in the UK BP meet this requirement, but there are other colour trade marks that don't come close and which therefore constitute unjustified monopolies, and insurmountable barriers to entry for overseas businesses trying to enter the UK market.

The Intellectual Property Act 2014 (Commencement No. 2) Order 2014

The Intellectual Property Act 2014 (Commencement No. 2) Order 2014  brought section 23 of the Act into operation, from 1 August. Section 23 is not a substantive provision: it merely contains power for the Secretary of State to make consequential or transitional provisions in connection with the Intellectual Property Act 2014. But a great deal of mischief could follow!

The Legislative Reform (Patents) Order 2014 introduces Bolar exception

The Legislative Reform (Patents) Order 2014  introduces an exception into our patent law for acts done for certain purposes connected with obtaining marketing authorisation for pharmaceuticals. This is basically what has existed in US law for some time, where it is called the Bolar exception: if you haven't already bought a copy of my Dictionary of Intellectual Property Law, get one now to read the definition! We now have new subsections 60(6D) to (6G) in the Patents Act 1977 (or to be more precise we will have from 1 October, when the change comes into operation).

Tesla settles trade mark squatting problem in China

World Intellectual Property Review reports Tesla settles row with Zhan Baosheng over trademark in China (but at what cost?).

The case reinforces what we probably all know - leaving your trade mark unprotected, enabling an opportunist to get in first and register it, can be an expensive mistake. Unfortunately, registering all the trade marks you might need is also expensive. Interesting, however, to note that the squatting problem has moved from the field of domain names (a few pence each) to trade marks (several hundreds of pounds each, at least). And while trade mark laws commonly contain use and good faith requirements, they are not cheap and easy to invoke.

 

Thomas Pink wins infringement case against Victoria’s Secret Pink line

No report on BAILII or elsewhere yet but the Telegraph reports that the High Court (Birss J) has held that the American company infringed the shirtmaker's CTM. Pink v Pink for very similar goods - with evidence of customers trying to return the defendant's products to the claimant's shops - should be an open-and-shut case. What's hard to understand is how the defendants could have imagined it was a good idea to try to come to Europe with a trade mark that so clearly conflicted with an existing one - did they think their product was sufficiently different, or did they just not do a clearance search? Or is it just arrogance, of which there is too much in the trade mark world?
Thomas Pink Ltd v Victoria's Secret UK Ltd [2014] EWHC 2631 (Ch)

EUROPA - PRESS RELEASES - Press release - Protecting Intellectual Property Rights: Customs authorities detain nearly 36 million fake goods at EU borders in 2013

EUROPA - PRESS RELEASES - Press release - Protecting Intellectual Property Rights: Customs authorities detain nearly 36 million fake goods at EU borders in 2013

Actavis Group PTC EHF & Anor v Pharmacia LLC [2014] EWHC 2611 (Pat) (24 July 2014)

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Russia: proposed changes to protection of descriptive trade marks

Бизнесу запретят патентовать изображения и категории товаров says Izvestia (Известия - the font it uses for the masthead, which looks unchanged from Soviet times, is beautiful), committing the journalist's inevitable sin when writing about intellectual property, because that third word is part of the word 'to patent' and this is clearly a trade mark story. It concerns a proposal to stop the registration of trade marks comprising descriptive words or images of products themselves - a crispbread manufacturer registered a picture of their product as a trade mark and allegedly used it to create a monopoly, and other similar instances are cited in the article, which Google Translate can help you understand. There is also a blog entry from World Trademark Review here which is in English.

At present this is just a proposal before the Federal Council, the upper house of the Federal Assembly of the Russian Federation (you might be surprised to find that the word for 'Council' is 'Soviet' - they should surely have found a synonym), but it is interesting to see another country grappling with overstrong trade mark protection. An interagency working group is being set up to consider the problem. Its conclusions might be something from which the European Union could learn.

Review of EU copyright rules - result of public consultations

The result of the public consultations on the Commission's review of EU copyright rules has been published here. More information about the consultation itself can be found here.

Survey evidence allowed in trade mark litigation

I had  it in the back of my mind that Enterprise and Europcar were related undertakings, the impression dating back to when a friend was a senior executive with Enterprise in Florida - and I realise that we are talking about when INTA met in Orlando, which was probably about 1997. So it would not be surprising if things were now different in the car rental world. Indeed, back then Enterprise were not themselves in the European market.

In Enterprise Holdings Inc v Europcar Group UK Ltd & Anor [2014] EWHC 2498 (Ch) (22 July 2014) the survey evidence related to the distinctiveness of the claimant's trade marks. In issue was the use of a stylised letter 'e'. Mr Justice Morgan considered the case-law (in particular, the Interflora cases) and judged that, despite criticisms raised of the survey in this case, it should be allowed. A useful review of the authorities, not a case that makes any new law.

US: Ford and General Motors Sued Over 'CD Ripping Cars'

TorrentFreak reports that copyright owners in the USA are suing Ford and GM on the basis that they are selling cars on which they should be paying a levy - because the cars contain equipment which can 'rip' recordings from CDs and store them internally. Under the Audio Home Recording Act 1992, originally introduced to deal with the problem of cassette recorders, manufacturers and importers have to pay a levy, and the car makers aren't. But the law contains (as you'd expect) exceptions to cover personal use and recording devices that form part of a larger piece of kit, which should be helpful to the car makers.

In the UK, the government has historically sets its face firmly against imposing such a levy, so it isn't a problem that car makers here are ever likely to face. Some continental European countries have levy systems, though. How they will deal with cars remains to be seen.

Yellow Van Company Ltd v Driver [2014] EWHC 2135 (IPEC) (27 May 2014)

Yellow Van Company Ltd v Driver [2014] EWHC 2135 (IPEC) (27 May 2014)

Aga Medical Corporation v Occlutech (UK) Limited [2014] EWHC 2506 (Pat) (22 July 2014)

Aga Medical Corporation v Occlutech (UK) Limited [2014] EWHC 2506 (Pat) (22 July 2014)

Embracing the open opportunity

In a speech yesterday, Commission Vice President Neelie Kroes  welcomed the development of 'open knowledge' and called for urgent reform of copyright law: here's the Press release. 


Her beef about copyright law concerns the effect it can have on teaching and the dissemination of knowledge: educational resources should, she thinks, be free to share. Which sounds fine in theory, but who's going create them without the protection of copyright to ensure that they stand a chance of earning a living from their work?


'It’s a crime', she said, 'when teachers are prevented from freely sharing open educational resources.' On the contrary: it is more likely to be a crime when teachers do share, if they infringe copyright. It's arguably a shame when that happens, but she's got a bit carried away there - and introduced an unfortunate metaphor.


She went on to insist that copyright needs changing: “Those rules were designed for a different age, more about limitationand control than creativity and freedom. Holding back ideas from open education to data mining: copyright needs urgent reform.” Well yes, it does, but wouldn't it be better to get copyright back in its box so that there is no danger that ideas receive protection? So generous and indiscriminate is copyright that it's far too easy for its owners to oppress people who do to their work acts that have not the slightest impact on their economic interests - and the best way to deal with that is to make copyright more discriminating, not to punch holes in the fabric of protection. Introduce a sensible test for originality!

FIFA object to design of Rosberg helmet

According to Die Welt,  FIFA has taken exception to Nico Rosberg's tribute to his country's football team's victory in the World Cup (it has always struck me as slightly odd that the son of the first Finnish world champion should be German, but stranger things have happened). FIFA, who should have learned from the Golden Ball  affair not to take such an absolute view of these matters, asserted that including a representation of the trophy on the helmet infringed its intellectual property rights. Really? Which ones? It doesn't look to me like a trade mark infringement - not the slightest impact on the ability of the trade mark (I assume there is one) to identify the source of anything - and anyway FIFA don't sell World Cups, do they? - and if anything the investment function and advertising function will surely be enhanced by such use. By a substantial majority, readers of MarkenBlog agree that this isn't infringing use.



And even if there is a potentially infringing act, it's only actually infringing if done without the owner's consent. Not to give that consent is remarkably churlish, and makes the owner look pretty stupid. But FIFA already looked pretty stupid after Golden Balls, so I suppose they had nothing to lose.

That Redskins decision: guest post from Chad Smith

In a precedential decision on June 18, 2014, the United States Trademark Trial and Appeal Board (TTAB) granted a petition for cancellation of six registrations for marks comprising or containing the word REDSKINS, for entertainment services, as used by the Washington Redskins professional football team. Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh v. Pro-Football, Inc., Cancellation No. 92046185.  The Board found that the registered marks disparaged Native Americans in accordance with Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a). Judge Bergsman dissented, concluding that the petitioners had failed to prove disparagement by a preponderance of the evidence.

 

The determination of a disparagement claim under Section 2(a) involves a two-part inquiry: 1) What is the meaning of the term in question, as it appears in the mark and as the mark is used in connection with the identified goods and services identified in the registrations?; 2) Is the meaning of the marks one that may disparage Native Americans?

 

As to the first question, the Board concluded that “the evidence overwhelmingly supports a determination that the term REDSKINS as it appears in the marks retains the meaning Native American.” As to the second question, the petitioner needed to show that the term REDSKINS was disparaging at the time each mark was registered between 1967 and 1990.  The Board concluded that  "a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent's services during the relevant time frame of 1967-1990.”

 

Having concluded that the six registrations must be cancelled as required by Section 2(a) of the Trademark Act, the Board next turned to the laches defense which was successfully raised by respondent in an earlier related case in 1999. In the first case, Harjo v. Pro Football, Inc., the federal courts overturned the TTAB’s decision to cancel the marks and ultimately ruled that the claims of the Native American petitioners were barred by laches. (Pro-Football, Inc. v. Harjo, 90 USPQ2d 1593 (D.C. Cir. 2009)).  Here, the D.C. Circuit Court of Appeals found that because the first of the Redskin’s trademarks had been registered back in 1967, the petitioner was time-barred from bringing suit finding that the delay was "unusually long by any standard" and "unreasonable in light of the undisputed facts in this case.” The court therefore granted Pro-Football’s renewed summary judgment motion to dismiss the case based on its laches defense.

 

After a brief summary of the previous case and a general discussion of laches, The Board noted that in the current case, each of the petitioners had recently reached the age of majority, the age from which, according to the D.C. Circuit Court of Appeals, laches began to run.  After stating that the petitioner’s “were entitled to assess the situation and determine whether it was in their best interest to file the petition for cancellation and then act in accordance with that assessment,” the Board held that “respondent has shown nothing more than a minimal delay in seeking cancellation” and such a minimal delay was insufficient to support a defense of laches.

 

The decision quickly gained notoriety and much was written about the continued validity and control over the Washington Redskins name.  However, soon after the Board’s decision, the United State Patent and Trademark Office issued a Media Fact Sheet outlining, among other things, 1) the Board does not have the jurisdiction to stop a business from using a mark that has been cancelled; 2) the Board’s decisions are subject to review in federal court, and no canceled trademark is removed from the register until after such a review is complete. Attorneys for The Washington Redskins have already stated that they plan to appeal the Board’s decision so a final ruling on the fate of the six registrations is still many years away.

 

Until then, the Washington Redskins will certainly continue to claim common law protection over the marks and enforce their rights to the exclusive use and ownership over the Redskins name.  However, public opinion is clearly turning against the continued use of the name.  A majority of the United States Senate is already on record opposing the name, as is the President, Minority Leader of the House of Representatives, both co-chairs of the Congressional Native American Caucus, Civil rights and religious leaders, media figures and NFL reporters, as well as high-profile current and former players.

This post was contributed by Chad M. Smith  of Ironmark Law Group PLLC, Seattle, a fellow-member of the international IP-PG network.

Case C-117/13, Technische Universität Darmstadt

So the Sages of Kirchberg will still trouble an Advocate General in a copyright case. According to Advocate General Jääskinen's opinion in Case C-117/13, Technische Universität Darmstadt, is that a Member State may authorise libraries to digitise, without the consent of the rightholders, books they hold in their collection so as to make them available at electronic reading points.

Pre-exam nerves

This is the third year in which I've prepared students for the external London University LLB exam in intellectual property, and I realise to my surprise that it's the first year in which I have been aware of the date of the exam. I haven't just turned up for a couple of weekends and marked some essays and mock exams: I've had a couple of students apart from those at the Academy this year, which has made matters different, and have also had a lot more contact with at least a couple of the Muscovites than I had in the previous two years. Well, it's all over now: I can't teach them anything new, can't go through any more practice exam questions or record any more mini-lectures. They are on their own - and whether I have helped them get there or not, they are all well-prepared for tomorrow. I trust their pre-exam nerves aren't as bad as mine - it's difficult worrying about an exam when you're not the person sitting it ... Good luck to all of them, although I don't think they need it.

Shanks v Unilever (from Weekly Law Reports)

Here  is the ICLR's report of this important (because one of very few) case on employee inventions, and here is a short summary culled from the report which I believe falls within the permitted act of fair dealing for reporting current events:

‘The time value of money received by an employer following the
vesting of an invention by an employee was not a benefit derived by the
employer for the purposes of section 41(1) of the Patents Act 1977.’

WLR Daily, 23rd May 2014

Corpora

In the course of writing the last post on here - in other words, I suppose, when I was reading the Moroccanoil case, I came across a mention of enTenTen12, a very large corpus of words which was used in the litigation to produce evidence about the use of the word Moroccanoil - and to prove that overwelmingly it was used to indicate the claimant's product. As this was a new and intriguing (the second time I have written the word 'intriguing' today - perhaps I am too easily intriged?) idea to me, I went looking on the Web. I didn't find as much as I had expected, but I did follow a lead to The Sketch Engine, a corpus query system. If I add a bookmark to my browser I probably won't be able to find it if ever I need it, and if I put it here it might assist others too. But I need to educate myself a bit more, because I don't know enough about it.

Moroccanoil v Miracleoil: no passing off

Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686 (IPEC) (29 May 2014)  is a decision of Judge Hacon in what I still prefer to think of as the Patents County Court - although I need to get over that, as the change of name reflects also a change of substance. The somewhat oxymoronically-named claimant sued the supermarket for passing off when it introduced a hair oil (competing with the claimant's MOROCCANOIL hair oil) under the name ‘Miracle Oil’.
 
What's the problem? Surely the names are far enough apart? Well, it wasn't just the name: there was a word-only CTM, but claims relating to that were dropped early on for fairly obvious reasons. In the passing-off claim, the claimant alleged that the get-up and name of Aldi’s product were, in combination, too similar to those of their product. Just look at the photos in the annexes to the judgment! A substantial
number of consumers would mistake Miracle Oil for Moroccanoil, or assume that they shared a common manufacturer or that there was some other trade connection between them.


The evidence showed that the name ‘Moroccanoil’ was distinctive of the claimant's product in the UK: but the get-up without the name could never have become distinctive because it had never been before the public on its own. It was not a Jif Lemon type of case in which the public would not notice the brand name - although clearly it was an attempt to protect get-up rather than product name. The name was the important element, so that was where the goodwill in the business would be found, although the get-up also played a  part.

There was nothing to show that members of the public might assume that Miracle Oil and Moroccanoil were the same thing, that they came from the same manufacturer, or that they were otherwise commercially linked, for example by a licence. Even if any members of the public would be confused there would be too few of  them for the claimant's goodwill to be damaged.


The defendant had intended that Miracle Oil would bring Moroccanoil to mind. The judge considered it had succeeded. That it had done did not make it passing off. There might be problem with rights in the design, and the public might think the way the packaging of the one brought the other to mind to be cheeky, but that wasn't unlawful. There would be no relevant false assumption in the mind of the purchasers, not even initial interest confusion (which I thought didn't exist in European Union trade mark law anyway). Without evidence of a misrepresentation the claim failed, illustrating (if illustration were needed) of the impotence of passing off law to protect against supermarket own-brands. Perhaps copyright and designs law (especially if there had been a registered design) would have filled the gap, and a trade mark registration for the particular colour of the label would have been pretty conclusive, but on the facts of the case these items were not in the claimant's armoury. It shows how important it is, in this day and age, to ensure you collect the widest possible range of intellectual property rights - if the claimants here thought a word trade mark was going to do the job, they were sadly mistaken, and Aldi could easily what Americans might call an end run round the one distinctive mark the claimants did have.

'New exceptions to copyright reflect digital age'

A number of trendy 'exceptions to copyright', additional fall-out from the Hargreaves Review, come into force today, as this Press release from the IPO (now in fact from Big Brother's GOV.UK site, which smacks of everything a Conservative or Liberal government, let alone a coalition of the two, should stand for) reminds us. To my mind it is inaccurate to call them exceptions to copyright: the Act calls them 'permitted acts', and the government should be consistent. The trouble is that there are too few lawyers among our lawmakers these days: professional politicians who have never worked in the real world deal in simple concepts (and probably struggle with more than 140 characters), not nuanced language.


The 'exceptions' do not affect the subsistence of copyright, just its enforceability: they provide defences rather than creating holes in the fabric of copyright, which remains omnivorous. It's a way of rearranging the deckchairs when the real problem is that the ship is sinking under the weight of mundane, not-original-in-the-more-appropriate-sense-of-the-word, copyright 'works'. It hits the wrong target: making 'exceptions' (especially if you wrongly apply that label to them) creates false expectations about how copyright works, especially when they are the product of special pleading.


Still, we all have to know about them (unless your interest in copyright law is limited to passing an examination in the next few days, in which case you probably need to know only the law as it stood on or about 14 February). The new regulations, which you can read by following the links, are:

• Copyright and Rights in Performances (Disability) Regulations 2014
• Copyright and Rights in Performances (Research, Education, Libraries and Archives) Regulations 2014
• Copyright (Public Administration) Regulations 2014

The Patent Office (I will continue to use its proper name) has published a series of 8 targeted guides
about what the changes mean for groups including teachers, researchers,
librarians, disability groups, artists, museums and consumers. Given that they can surely have no value in legal proceedings, and certainly do not constitute legal advice, I wish they would stop wasting public funds (even if it is not taxpayers' money) like this. It would be far, far better if they were in some way to subsidise the small businesses that need advice on these matters but cannot readily afford it (though no doubt they find it possible to afford many other less essential goods and services).


Further changes, concerning private copying and parody and quotation, remain stalled in the legislative process: a small relief, though they are only likely to be delayed, not lost.

Government webpage forSPCs

If you need to apply or extend a supplementary protection certificate  you can now do so online, and also find associated resources. This new services is part of the gigantic and Big Brother-ish (to my mind) GOV.UK website. I am sure it will prove extremely popular. Thanks to the SPC Blog for the information: read their story here.

Intellectual Property Act receives Royal Assent

Lords Hansard text for 14 May 2014 (pt 0002) reveals that the Intellectual Property Act has received Royal Assent, which is probably a good moment to write about it. Watch this space and I will write some thoughts here later.

Intellectual Property Act receives Royal Assent

Lords Hansard text for 14 May 2014 (pt 0002) reveals that the Intellectual Property Act has received Royal Assent, which is probably a good moment to write about it. Watch this space and I will write some thoughts here later.

Online IP textbook: patents chapters updated

The five chapters on patents in my online book (click on the heading in the left-hand sidebar) are now up-to-date. There is some more polishing to do on them but all the material, except a lot of probably unnecessary detail on exclusions, is now included.

Interested in learning a bit about the Unitary Patent and the Unified Patents Court?

If so, listen to the 'Run Through' lecture I have just recorded, and if appropriate claim half-an-hour CPD (for which you'll have to request the multi-choice questions and pay a very reasonable £10 plus VAT).

Solicitors, do your CPD here

You can satisfy some of your SRA-imposed CPD obligations here, by listening to my recorded intellectual property lectures and completing and submitting to me a short multi-choice questionnaire, so I have a record of who's used the service if the SRA want to see it. The lectures themselves remain free to listen to, but if you want to claim CPD points for listening to them there is a modest charge - £20 plus VAT, making £24 in total, for each session, payable the easiest way possible, through PayPal. Accreditation isn't cheap! The lectures mostly qualify for an hour's CPD, though some of the specialised ones will be shorter (and perhaps cheaper).
This service is provided through Motor Law Publications Limited, which is accredited as a CPD provider with the SRA. Barristers are able to claim credits for unaccredited CPD activities, so it should work for them too - but please satisfy yourself that it meets your requirements. If you are regulated by IPReg, please check with them.
I will be resuming my monthly podcasts in the near future so there will be further opportunities to earn CPD points here.

A Run Through Patents Part 2 now available

I've now recorded the second part of the Run Through Patents lecture - follow the links from the sidebar to the Run Through page where you can download the MP3 file (about 42MB, and 45 minutes). Please let me have any comments (good or bad) if you listen to it!

Svensson

The Court of Justice decision in Case 466/12, Svensson v Retriever Sverige, came just before the cut-off date for University of London exams and probably those of other institutions too, so (apart from its inherent importance) I need to alert my students to what it says. Here is a link to the press release  on the Curia website and here's the headline from it:

The owner of a website may, without the authorisation of the copyright holders, redirect internet users, via hyperlinks, to protected works available on a freely accessible basis on another site.

The question in the case was whether there was a communication to the public when the defendant provided a hyperlink on its website to the work of the copyright owners. The Court said yes, providing a hyperlink did amount to a communication and it was to a public, but it was not a new public in the sense of being a public that had not been in the copyright owners' contemplation when they authorised the original communication to the public. (The copyright owners were journalists whose work was communicated to the public initially via a newspaper's site.)

So far so good, with one big reservation which I'll mention in a moment. The Court then considers whether it makes a difference if clicking on the link brings up the copyright work in such a manner that it appears to be on the defendant's website rather than the newspaper site where it was originally published (if I may use the word loosely). No, it says, no difference: which must also be right, as the copyright work remains the same and the context in which it appears is irrelevant to that. My only reservation about that is that the original communication was to readers of the Göteborgs-Posten, and we are now asked to equate that with communication to users of Retriever Sverige. Surely that calls into question whether the public is the same in each case? And it looks to me as if people will go to the Retriever website (assuming I have found the right one) for rather different purposes - individuals looking for news would go to the GP website, displaying a preference for that particular avowedly liberal newspaper, whereas Retriever seems to be collecting news stories for its clients (who I imagine are probably corporate) from across a wide spectrum of sources. In other words it might introduce readers of, say, Dagens Industri to stories in GP which they otherwise wouldn't read. Just like in England, a reader of the Financial Times might find his or her way to a story in The Guardian which they would not normally read, via such a website.

Then, the Court asks whether it would be different if the original website proprietor restricts access. I can't tell whether GP does - my knowledge of Swedish is quickly exhausted (utan bilen stannar Sverige, as the sticker given to me by a Swedish friend many years ago said is about the extent of it. I find to my surprise that the slogan is still in use, at www.utanbilenstannarsverige.se, and I did spell it correctly! But say the newspaper were a notorious paywall-user, like The Times, and Retriever took you round the end of the paywall, or through a hole. Or suppose, like the FT, the paper offers visitors to the website a monthly ration of free articles, after which they have to pay for a subscription. Then, the Court says, the new readers would not be among those to whom the story was originally communicated. (My FT example is not a good one, though, because it would all depend on whether members of the group had used up their monthly ration - that would make it very complicated.)

Finally, the Court addresses the question whether Member States can make the concept of 'communication to the public' wider than it is in the Information Society directive. To which the answer is 'of course they can't', in rather more diplomatic language.

Let's go back to the Court's reasoning that there are different 'publics' to be considered. The plural form of the word does appear in the Oxford English Dictionary, but either as an abbreviated form of 'public houses' (which is not what the Court had in mind) or as sociological gobbledegook. Rather than concern ourselves with that, let's look for usages of the word 'public' in the intellectual property universe.

First, it appears in the copyright legislation. There is, for example, a definition in Part 1 of the CDPA of 'public library', and here the adjective is the opposite of 'private'. That raises interesting questions about libraries which you have to pay for, such as the London Library: could it be said to be open to the public? (Like the law courts, which are said to be open to everyone in the same way as the Ritz Hotel, in an aphorism unreliably attributed to Darling J, or LJ according to some references). But section 18 is more relevant to the present matter: the issue to the public of copies of a work is an act restricted by copyright. The fact that this is closely related to section 18 (communication to the public) suggests that this is the right place to look. And there a work is either communicated to the public, or it isn't: it's a straightforward binary thing, which doesn't require any consideration of which public. It assumes that the public is a single unitary entity. This view seems to be supported by the Court's earlier decision in Case C-5/11, Donner, in which advertising was directed to local members of the public and a delivery and payment method was made available to them amounted to issuing copies to them. In other words, the important thing seems to be that the work be issued to members of the public, which makes it unnecessary to consider whether there be in fact a plurality of publics.

Consider also the Patents Act 1977, section 2. The state of the art consists of everything that has ever been made available to the public, anywhere, anyhow (I paraphrase). 'Made available' is passive where 'issued' is active, but the notion of 'the public' is surely the same. There is no need to ask 'which public?'. Either the public has it, or it remains private. I think the Court's analysis, based as it is on there being a plurality of publics, is misguided: there is only one public, and if copies have been made available or a work has been communicated to members of it that is all that matters. There is no new public to whom the work may be made available. It might have been communicated to a limited group, not to the public (behind a paywall, perhaps, though the mere fact that it has to be paid for does not necessarily change whether it is available to the public), in which case providing hyperlinks would amount to communicating to the public, but that is very different. The directive talks about communicating to the public: to read it as if the indefinite article were used is quite wrong. And it's likely to mystify people whose native language has neither definite nor indefinite articles! К сожалению, студенты!

Law Commission reports on remedies for groundless threats

Intellectual property law – achieving a balance between the right to enforce and protecting innovation - Law Commission is the title of the Law Commission's report on remedies for groundless threats. The Commission says on its website:

In our report, we recommend that:

• the protection against groundless threats of infringement proceedings should be retained, for patents, trade marks, registered and unregistered design right but it should be reformed;
• a threats action may not be brought for all threats made to a primary actor; this is already part of patent law but should also apply for the other rights. Primary actors are those who have carried out primary acts, such as the importation of goods or the application of a mark to packaging. Primary acts can cause the greatest commercial damage to a rights holder;
• it should be possible to communicate with secondary actors, that is those who have not carried out primary acts.  This will be where there is a legitimate commercial purpose behind the communication and where there are reasonable grounds for believing that the information provided is true. Guidance as to what may be said should be provided by the legislation;
• for patents, it should no longer be possible to avoid liability for making threats by showing that at the time the threat was made the threatener did not know, or had no reason to suspect, that the patent was invalid; and
• a lawyer, registered patent attorney or registered trade mark attorney should no longer be jointly liable for making threats where they have acted in their professional capacity and on instructions from their client.

A Run Through Patents - part 1

I have uploaded the first of two recorded lectures on patents - download if from the Run Through page on this site. It covers obtaining patent protection, including patentability: next I will deal with ownership, employee inventions and infringement.

No lien over database

In Your Response Ltd v Datateam Business Media Ltd [2014] EWCA Civ 281 [2014] WLR (D) 131 (14 March 2014) the Court of Appeal (Moore-Bick, Davis, Floyd LJJ) held that, because there is nothing about a database that can be possessed, it is not possible to exercise a lien over it - as a mechanic would over a car he has repaired and not been paid for.

Not surprising: but someone must have thought it was worth a try!

The Copyright (Regulation of Relevant Licensing Bodies) Regulations 2014

The Copyright (Regulation of Relevant Licensing Bodies) Regulations 2014 came into force on 6 April. The Regulations support relevant licensing bodies' self-regulatory codes of practice. As the Explanatory Memorandum says:

The Secretary of State may direct a relevant licensing body to adopt a code that complies with the specified criteria if three circumstances are met. These are that the relevant licensing body is not a micro business; that it has no code of practice or the one that it has does not comply in material respects with the criteria specified in the regulations; and that it has not amended its code of practice within 49 days of being informed by the Secretary of State of the noncompliance. The Secretary of State may then impose a code on a relevant licensing if the body fails to adopt an appropriate code within a further 49 days of having been directed to amend its code. The Regulations also enable the Secretary of State to appoint an independent code reviewer and an ombudsman, and to impose sanctions in the form of financial penalties on the relevant licensing body for certain breaches of the Regulations.

You can read the  platitudinous press release here, and from there you can follow a link to official 'legal guidance'. Not advice, I note.

'Internal' distribution does not mean GPL is not invoked

Chicago software licensing attorney Evan Brown  notes an interesting case, XimpleWare Corp. v. Versata Software, Inc., 2014 WL 490940 (N.D.Cal. February 4, 2014), one of very few which address the workings of the General Public Licence (in suit, GPLv2) - a document which becomes more and more important every day.
The plaintiff (as they still call them over there - how quaint! Oh, sorry, I forgot that British irony would be completely lost on any American readers) wrote an XML parser and made it available under GPL v2. The defendant acquired software from another vendor that included the code, and allegedly distributed that software to parties outside the organization. The plaintiff argued that the defendant did not comply with the conditions of the GPL (no attribution, no copyright notice, no reference to the plaintiff's source code, no offer to 'convey' as the GPL puts it the source code), and sued for copyright infringement.
The defendant's argument was that its 'distribution' of the software was merely internal, mainly to its own financial advisers, so the GPL's requirements were not triggered. The court rejected defendant’s argument, looking to the allegations in the complaint that defendant distributed the software to vendors in India, as well as providing it to 'thousands of non-employee financial advisers.'

A clean and pleasant trade - revisited

Legal Futures reports that the most senior judge in the Isle of Man, no less, has told Applebys, the international law firm, that they do indeed have to join the local profession's indemnity scheme even though they have their own insurance cover. Nothing for this blog there - but what did interest me was that the judge (or Deemster, as they call them there) made some comments - perhaps somewhat unfashionable comments, but to my mind all the better for that - on the obligations of professional people. And to support him he cited no less an authority than Karl Marx (1818-1883, if you'd forgotten), whose 1835 work Reflections of a young man on the choice of profession suggested that the “chief guide which must direct us in the choice of a profession is the welfare of mankind and our own perfection”.

Dishonesty does not necessarily preclude claim

In Lloyds TSB Insurance Services Ltd and Halifax General Insurance Services Ltd v James Michael Shanley [2014] EWCA Civ 407  the appellants failed to get the judgment of Pelling J (unreported) overturned despite the fact that the claimant had lied in the course of the proceedings. The claim was for infringement of copyright in a software tool and for breach of confidence, and the defence was that Halifax had a licence and that Lllyds had a sub-licence under it.

The case against Halifax failed because the evidence (such as it was, even after the claimant had demonstrated himself to be unreliable) showed that there was an oral agreement allowing the bank to use the software tool in question (although a forged written licence quite rightly cut no ice). The question was whether Halifax had been entitled to grant a sub-licence to Lloyds to use it, too, and the judge had little difficulty in finding that they didn't. Just because the claimant had told lies did not mean that Lloyds' claim that they had the benefit of a licence would succeed. 

Amount of private copying levy may not take account of unlawful reproductions - Court of Justice

The Court of Justice has held that the amount of the levy payable for making private copies of a protected work may not take unlawful reproductions into account, in Case C-435/12, ACI Adam BV and Others v Stichting de Thuiskopie, Stichting Onderhandelingen Thuiskopie vergoeding (the link is to the press release). The Court took the view that the law should not tolerate unlawful reproductions, so the law has to draw a distinction between private copies from lawful sources and others. National legislation which does not distinguish between lawful and unlawful private reproductions cannot ensure a proper application of the private copying exception. The levy system must ensure that a fair balance is maintained between the rights and interests of authors and users, and if it does not distinguish between lawful and unlawful reproduction that balance is not struck.

A Run Through Intellectual Property Law

If only there were more hours in the day. I have finally launched the lecture series I have been talking about for years, under the general title A Run Through Intellectual Property Law. This link will take you to the page from where the recordings can be downloaded. I envisage nine lectures to cover the basics, of which I have recorded three so far: they are each about an hour in length.

Feel free to listen, and download the files to listen to on your choice of device if you wish. Just don't share them with your friends, as I would prefer you to send them to this site to download their own copies. If you have any requests for subjects I might cover in the future, please let me know - leave a comment or email me at peter@ipsojure.co.uk. If you have comments on the content, including corrections, please let me know too, but bear in mind that these lectures reflect the law on a specific date and won't be updated very frequently.

Going home: Coleman on legal education

Ron Coleman, of Likelihood of Confusion fame, is one of the most perceptive legal writers (and probably the most perceptive legal blogger) I know, although when he gets onto politics I find my hackles rising ... well, it would if I were the sort of animal that had hackles in the first place, and if I were a dog or a cat I wouldn't know much about politics, or be able to read what Ron writes on the subject. Oh dear, this seems to be getting complicated. Let's see if I can get back to the point.

Although it seems to be a post from a couple of years ago, leading eventually to a 19-year-old article, 'Go Home ...' is horribly relevant today. Back in '95 when Ron wrote the original article I was teaching would-be (or as people might say now, and perhaps would have said even then, 'wannabe') solicitors who were attracted by the notion that it was a 'clean and pleasant trade' (follow his links and allow Ron to educate you about that phrase, if, like mine, your upbringing didn't already make it familiar). And I was wondering why on earth many of them had ever thought they might stand a chance.

I found my way easily - too easily - into the legal trade. At the time, I thought it was a profession, and perhaps it was, until about 1984 when advertising restrictions were lifted. After that it quickly turned into a business, which at first seemed progressive and exciting, but perhaps the deficiencies of my route into the law were brought into sharp relief by that change. Although my father couldn't teach me the clean and pleasant trade, he could arrange for his best friend to do it, and in due course, after three years at university during which I learnt a great deal about politics, photography, journalism and real ale but very little about law, followed by a very miserable six months at the College of Law studying the new wave music that was sweeping the country at the time, followed inevitably by another six months cramming to resit the Law Society Qualifying Examination, Part II (an examination of such stunning mindlessness that has surely never been surpassed, although from what I hear the Multistate Bar Exam might run it close), I became articled to him. If you lost track of that sentence, as I did, the 'him' to whom I was articled was my father's best friend, senior partner in the equal-largest firm in Teesside, which in those days meant six partners: there were three other behemoths with the same number of partners in the area.

I realise now that my articles were a further period during which I learnt no law (but did learn even more about politics). It wasn't a great start to a career in a learned profession, but once I'd qualified I did begin to learn some law, not only on the job but also by pursuing a formal part-time course of study which led first to being awarded a Masters degree in business law, then in due course to a doctorate, and finally to a (still part-time) position at the institution that had finally given me some legal education, teaching those would-be solicitors on the new Legal Practice Course, the successor to the Law Society Finals which had replaced the unlamented Part IIs. By this time - the mid-nineties - it was firmly in the business of law student farming, in Ron's apt phrase. The parallel with the fermiers who played such an important part in causing the French Revolution is striking.

Between the late seventies and the mid nineties, legal education shifted from being a system that one could negotiate with little effort, coming out with a 'gentleman's degree' and scant knowledge of the law and moving comfortably into a clean and pleasant profession, to one which demanded hard work, much learning, and considerable expense, the end of which was admission into a far-from-clean and definitely unpleasant trade. But there remained several hurdles, even for those who had passed the LPC (and the fermiers certainly saw no advantage to failing any of their students). First, the aspiring solicitor needed a training contract.

A large number of students only embarked on the LPC after securing an offer of a training contract. Often they would be sponsored by the firm with which they would complete that final stage of their training. But many didn't, and for years after they moved on I was still writing references for students who needed to persuade a solicitor to take them on. One of them tragically succumbed to breast cancer shortly after qualifying, having secured a training contract several years after passing her exams. And to this day there is still a colossal mismatch between the production of aspiring solicitors and the capacity of the profession to absorb them. A friend who had completed her LPC a few years ago searched for a long time for a training contract, finally accepting the only one offered which was quite unsuitable and made no use of her impressive qualifications and experience; now having qualified she faces a difficult search for a job.

Ron - if I may be permitted to return to the point of this rambling discourse - remarks at some length on the vicissitudes of applying for jobs. A 'gentleman's degree' is an immediate disqualification, no matter that it be supplemented with a doctorate: the way applications are filtered takes no notice of what follows one's first degree unless it is at least an upper second. I like his comment about the 20 'top ten' law schools ... A similar dilution of the quality of legal education has taken place here, and his comments about how attractive a law school is to a fermier is as relevant in the UK as in the US. The best are excellent, but the bulk of them offer less value - but, however good the legal education they offer, none of them can offer entry into a clean and pleasant trade. Or any trade, for that matter.

Enough, already. I will feel inclined to return to this topic another time. This is a good point at which to stop, for now.

Greek yoghurt means yoghurt from Greece

Fage UK Ltd & Anor v Chobani UK Ltd & Anor [2013] EWHC 630 (Ch) (26 March 2013)  is what aficionados call an extended passing-off case. The claimant had been selling Greek yoghurt in the UK for some time, while the defendant introduced what it had previously sold in the USA as 'Greek yoghurt' to the British market sometime later. I sampled it at a running bloggers' conference last year - it seemed OK but with what I know now I'd certainly taste the thickening agent - and even came away with a pair of laces, branded with the Chobani name. I certainly won't be using them: not the sort of brand values I wish to be associated with. Anyway they won't fit my huaraches. Anyone want them? Drop me an email.



Nothing surprising about the passing-off claim here: FAGE won. A bit more interesting is the malicious falsehood sideshow, a counterclaim arising from the claimant's approach to Camden trading standards. The judge noted in particular that as he didn't imagine the trading standards department would take action without investigating the allegations first, there was little chance of the defendants (counterclaimants) suffering any damage.

Border detentions - new manual for rights owners

The European Commission has published a new manual  for rights owners wanting customs to stop infringing goods.

Rights of audience: Law Society secures rule change for IP solicitors - The Law Society

Solicitors will have the same rights of audience in the ultra-trendy Intellectual Property Enterprise Court* as they had in the Patents County Court, the Law Society  says, claiming that its lobbying has brought about this outcome. (I wish it would work equally hard to prevent the unqualified, which as I understand it remains unlawful, use of the title 'attorney' by patent and trade mark attorneys).

Although it was the Chancellor of the High Court who announced that judges would allow solicitors to appear, our too-big-for-its-boots regulator had to stick its oar in:

The SRA has also confirmed that it will not regard solicitors appearing in the IPEC as being in breach of the rules and will change the regulations to make it clear that solicitors have rights of audience.

How kind of it.

*The utterly spurious word 'Enterprise' is what makes it ultra-trendy, although I should make clear that it's the name not the court that I am describing thus.

OHIM's new examination guidelines

News  of revised guidelines from OHIM on the examination of CTM and RCD applications, which have now been published in the Official Journal.

UK Patent Office discontinues Patents Form 10 Reminder letter

The Patent Office, to give it its proper name, has announced in this statement  that it won't in future be sending out letters reminding patent applicants to file Form 10 and cross their palm with silver to request a substantive examination. For applicants with switched-on agents who have what Americans in general and patent lawyers everywhere call 'docketing systems', this won't matter, but for those who represent themselves it will be another matter. They will be told in the letter informing them of the A Publication that they have to file Form 10 and pay the fee within six months after that publication, as they already are: but the reminder which until now has been churned out two or three weeks before the end of that period will no longer be sent. The Office says it sends out about 3,000 of these letters per year, presumably many of them to agents who know perfectly well what is going on but who are either leaving it to the last minute or waiting for their client to get their act together.

3,000 letters is, these days, quite a lot, and producing a letter costs  much more than the cost of the paper and postage stamp, even in the computer age. So I can see the attraction of cutting out an unnecessary communication, though one might have thought that (again, in the computer age) some sort of automated reminder system for applicants in person could be devised - perhaps at a modest extra charge.

Advertising Standards Authority Adjudication on Trademark Office Ltd

Back in October 2013, the ASA published the result of an adjudication in which it came down as much like the proverbial ton of bricks on one of the leading producers of what I think it is fair to call misleading renewal notices: the adjudication is here. Unfortunately the ASA is not set up to do 'ton of bricks' very well, and it ends up being more like a couple of pounds of feathers, but even so ... Given that the respondent did not even take the trouble to reply to communications from the ASA, one cannot be optimistic about the chances of the parasites giving up, but I suppose that every little helps.

Two things might help more. First, the rogues use (on patent renewal 'notices') the designation 'Patent and Trademark Office'. (I pause to note that the American spelling of 'Trademark' ought to be a bit of a give-away, but will be lost on many people, who apart from anything else have for too long been exposed to far too much American 'culture' - like the contestant on Celebrity Mastermind the other day who referred to the London A-Z pronouncing the last letter 'zee'.) That includes the designation 'Patent Office' and to use that is an offence. If anyone thinks that perhaps the offence is not committed because other words are included, consider the efforts of the Architects Registration Board - and its prosecution of Ronald Baden Hellard, reported at (1998) 14 Const LJ 299. (The Court of Appeal accepted that using the affix RIBA amounted to using the style 'architect', although to be fair to the Court of Appeal there was little argument to persuade them otherwise.) Second, and this will require a change in the law which I acknowledge is as likely as an English winter without widespread flooding, as a consumer protection measure this sort of work needs to be reserved to the professions who will do it properly - and at far, far lower cost than the rip-off rates charged by the purveyors of confusing non-invoices.

There must also be an argument that they are committing a fraud, misrepresenting themselves to the inexpert or merely inattentive recipients. In which case the banking system should reject them as customers. I recently had no end of trouble when a bank with which I maintained an account detected suspicious activity on my account, to wit a payment from HMRC by way of a rebate of income tax. Unusual, perhaps, but suspicious? So why when my bank refuses to handle those funds are other banks (or perhaps even the same one) handling the proceeds of deceptive advertising?

Arbitrating licence agreements: interim relief

The mysteriously-named  AB v CD [2014] EWHC 1 (QB) (03 January 2014)  concerns not, as one might expect, a badly-behaved professional footballer or television presenter but two businesses with a licensing agreement. The agreement concerned an electronic marketplace, but no software was supplied. The claimant faced big problems when threatened with termination the licence to use a facility which was an essential part of their business, and sought an interim injunction to stop the termination until arbitration had been completed. Because the dispute was subject to arbitration, and there were obligations of confidence in addition to what one would normally expect to be inherent in arbitration proceedings, the names of the parties were not disclosed.

Why was the agreement going to be terminated? First, because in breach (it was alleged) of the licence the claimant had failed to stick to a sales and marketing plan which the licence required it to agree with the defendant (the licensor). But no such plan had actually been agreed, so there was at least an issue to be tried there. Likewise the second ground, that the claimant's business had developed in a different direction from that of the defendant, because the judge (Stuart-Smith J) thought it was arguable that the core business remained the same.

Would damages be an adequate remedy? The judge, perhaps slightly surprisingly, thought so. It looks like a clear case of a situation in which the claimant will suffer too much damage if the defendant is allowed to do what they propose to do. The situation is further complicated by the fact that the parties had agreed to limit the damages available for breach. The case-law left the judge feeling somewhat uneasy with the result, and consequently have gave leave to appeal. So, an interesting case which highlights a legal issue that's novel to me, but not, I suspect, the last word on it.

The cult of the NDA

The cult of the NDA makes for interesting reading - even though it is over ten years old. I can't remember how I got to it, following a link from somewhere, nor is it apparent who wrote it, but it's still worth a few minutes of anyone's time who's concerned about intellectual property and start-up businesses. It chimes with one of my recurrent themes, observable throughout the IP world: that intellectual property is just a means to an end, not the end itself. Even if you're a troll.