Green Party sustains gunshot wound to foot over copyright, of all things

Who would have imagined that the biggest policy gaffe of the election would be over the duration of copyright? Well, go back a few years and it could have been "New" Labour swallowing the "Cliff's Law" argument hook, line and sinker, but actually this goes completely the other way. The Green Party, which had already ensured that it would not be getting my vote* by accepting the endorsement of the dreadful Russell Brand, announced that if elected ("if" being a very important word here, as the Greens had a single MP, their first, in the last Parliament) they would take us back to 1709 or 1710 (it always depends on whose calendar you use) and reduce copyright to 14 years. From creation or publication, it was not entirely clear, but certainly not PMA which might have been a bit more comprehensible.
It transpires - allegedly - that 14 years came from a Cambridge University postgrad student. Isn't that how the Iraq war started, too? To be fair to the Green Party (and of all the political parties they are the only one to which one should have any reason to be fair) this is mentioned in the same breath as their "Citizen's Income" idea, although the two policies seem to be associated because the latter would ensure people had time to devote to cultural activities which would (they imply) somehow justify reducing the term of copyright protection (the total volume of copyright, works multiplied by years protected, would remain much the same, on my reading of the policy). Had they said that because everyone will have the Citizen's Income there will be less need for people to earn money from copyright, it might have made a little sense: but as it is there is no logic underlying it at all, except for Mr (or presumably Dr now, as his work seems to date back to 2007) Pollock's thesis.
I have found myself participating in a couple of discussions on Facebook about this crazy idea, and it is clear that the Greens have upset a lot of creative people who might otherwise be more-than-averagely likely to favour them. And in addition to the damage they have done to their own support, how do they imagine it could be achieved? 14 years would not comply with the Berne Convention, so the UK would have to denounce (I think that's the right verb) that, and other international instruments. TRIPS probably isn't the Greens' favourite international agreement anyway, and certainly it has plenty of questionable things about it, but this is surely not the issue on which to challenge it. What about the directive? Copyright duration would be an odd reason for a Brexit. Then there would be inevitable claims under the European Convention on Human Rights, that copyright owners had suffered the loss of property. At least Cliff's Law would be a thing of the past.
There is plenty wrong with copyright, but anyone proposing to reform it would do best to consider its breadth rather than its depth. It is the omniverous nature of copyright, the indiscriminate way in which it confers protection on works with minimal originality, permitting big businesses to bully small users and reap super-normal profits, that should be addressed, and to my mind the way to do that is to reconsider the originality requirement (along with the notion of what constitutes a copy of an earlier work, in the case of sound recordings and films: given that "original" means, basically, "not copied", this amounts to the same thing). But I don't think that presses the right buttons in a general election.
The Greens also propose to legalise peer-to-peer filesharing where it is not commercial, and to "liberalise" the rules about fair use (which of course are absent from our copyright law entirely at present - "fair dealing" being rather different, a distinction which seems to have escaped the Greens). They claim they want it to apply outside academia, which - correct me if I am wrong - I thought was one of the places where fair dealing didn't run very far anyway. Still, we needn't worry too much: few people will vote Green just because of these policies, and they aren't within sight of even holding the balance of power in Parliament (are they?).

*I plan to support whoever is most opposed to the desecration of the North Wessex Downs AONB by massive housing developments, as per the draft Local Plan which the Conservative Group on our District Council voted through without demur. Unless that's the Greens, who won't get my support because of this copyright gaffe and the Brand thing. My local MP also alienated me by "cutting" me at the All Party Writers' Group winter party in December, and lost any possibility of getting my vote. Just so you know.

Art and Artifice: The dirty side of artistic copyright: septic tank ...

Art and Artifice reports on a case in the Privy Council, not something we come across every day, or even every decade: apart from Lego and Opportunity Knocks, which are now almost ancient history, I can't remember any in my time as a lawyer.


This is Gold Rock Corp Ltd & Anor v Hylton (The Bahamas) [2015] UKPC 17 (20 April 2015), a case which demonstrates (if the point needed demonstrating) that design protection often involves some rather unpleasant subject-matter - pig fenders (not too bad), slurry separators (a great deal more distasteful), and now septic tanks. Although we are in the realm of copyright here, so we are not considering septic tanks but rather designs for them, which is a much cleaner and more pleasant proposition.


Bahamian copyright law, in the form of the Copyright Act 1998 (amended in 2004, though not in a way material to the present case) bears some similarities to our law in the way it treats copyright in designs, but the wording is significantly different and as far as I can see there is no unregistered design protection, only a registered design system (under the Industrial Property Act 1965) which borrows heavily from the Registered Designs Act 1949 v1, allowing applicants to request a grant of "design copyright" (remember that?) and imposing an eye-appeal test. Oh, those were the days!


As for copyright protection, technical drawings are expressly included in the definition of artistic works, which is one significant difference from our law (though perhaps a difference of words only). The Bahamian Act then goes on (in section 2(3)) to restrict copyright in a design for a useful article:

the design of a useful article ... shall
be considered an artistic work only if, and only to the extent that,
such design incorporates artistic features that can be identified
separately from and are capable of existing independently of, the
utilitarian aspects of the article.

That seems, on the face of it, to be intended to deny copyright protection for designs for utilitarian things. Back in the heyday of copyright protection for designs, we might have expected an interesting debate about septic tanks in various fanciful and artful shapes, as I remember discussing the possibilities of conrods cast in the shape of the female human form: in each case a completely pointless exercise, because no-one in their right minds would think to copy the crazy design. Here, though, we get an extraordinarily narrow interpretation of those words, turning on a distinction between design (abstraction) and technical drawing (piece of paper: I almost wrote "concrete", in contradistinction to abstract, but concrete is precisely what the septic tanks were, so I would have confused the issue no end). The Board (well, Sir Kim Lewington, at any rate, speaking for all of them) said:

A “useful article” is ... a three-dimensional physical artefact. A technical drawing which gives instructions about how to make such an artefact is not itself a “useful article”; not least because its function is merely to convey information about how to make it. In the Board’s view the “design” of a useful article is a reference to the physical aspects of the article itself, rather than a technical drawing conveying instructions about how to make it. Any other interpretation would mean that it was almost impossible for any technical drawing to be protected by copyright, even though technical drawings are specifically included in the primary definition of “artistic works.”

So the drawings remained protected, and the PC advised Her Majesty that the appeal should be allowed, and no doubt she will take that advice rather then try to work out whether a better solution might be available. I find it hard to believe that this is the result the draftsman intended, although it is no doubt a correct reading of the words (especially in the light of all the experience we have of copyright and designs): but if the draftsman's intentions have been thwarted, we can all console ourselves by remembering that this whole area of law developed quite by accident, mostly as a result of the law of unintended consequences (the same law which I imagine will make the repeal of section 52 a disaster - but I digress ...).

Intel bullies home improvement company into name change

Intel trademark letter prompts UK business re-brand,  World Intellectual Property Review reports. The UK business, which seems to be the division of the Intelligent Home Improvement Group that deals in windows, had the temerity to use the now name, Intell Windows. Well, Intel had to stop that, didn't they? The window company complains that it cost £1,800 just for lawyers to send a letter back to Intel (either someone is being economical with the truth or a lawyer is having a laugh) and rebranding cost £15,000.

A humourless spokeswoman for the semiconductor maker is quoted as saying: "As with any other asset, we have an obligation to our shareholders to protect the value of our brand." If that statement could be reduced to a single word, Dr Johnson's definition of patriotism could nicely be applied to it. Unfortunately it explains (even, perhaps, sometimes excuses) a lot of trade mark bullying, but here it looks pathetic: would the shareholders really feel sufficiently threatened to have the company spend their money threatening the window company? There is clearly not the slightest risk of confusion - oh, Intel chips are capable of running Microsoft Windows(R), huh? - and if there is any possibility of dilution, tarnishment or unfair advantage it is vanishingly small. Shareholders might well ask themselves whether the legal bills, let alone the damage to the company's reputation, were worth it. They might be less humourless than the spokeswoman.

Had it been a fish and chip shop, it might have been a different story.

Assos, Asos and the "own name" defence

According to WIPR, Assos (a Swiss clothing manufacturer) is appealing against the Court of Appeal's April Fool's Day judgment (Maier v Asos [2015] EWCA Civ 220) holding that although the marks in suit were similar, and there was a likelihood of confusion and damage to the claimant's mark, Asos (an online retailer) could rely on the "own name" defence under section 11 of the Trade Marks Act. Read the WIPR report: there is no point in my paraphrasing it here, and I cannot direct you to the BAILII report because it is not online yet. At the same time, marvel at the WIPR's author's inability to identify members of the judiciary by their correct titles. What amateurs!
Assos are proposing to appeal to the Supreme Court, according to their solicitors Bird and Bird, and one can see why they might. Surely, despite cases which say otherwise, the "own name" defence was never intended to apply to company names which can so easily be invented to suit a particular purpose. However, that particular point (subject to what I find in the judgments in the Court of Appeal when they are published) seems to have become part of the corpus of trade mark law.
Of course, the defence is subject to the proviso that the use has to be in accordance with honest practices in industrial and commercial matters. That must be the key issue in this case, notwithstanding that Sales J seems to have based his dissenting judgment on logical restrictions on the scope of the defence.

The Washington Post: YouTube’s copyright system has taken Rand Paul’s presidential announcement offline

This report of a spectacular own goal almost made me laugh (but the excesses of modern intellectual property law and practice will never get past that "almost" - they are more likely to make me cry). The headline tells you everything.

I suppose it illustrates the importance of clearing rights for all the uses to which a copyright work might be put in the modern age. Perhaps Senator Paul, or at least his people, had obtained the myriad permissions (or the omnibus permission) needed but YouTube's robots, acting as WMG's agents, took it down anyway.

The reference in the article to huge music companies (the expression "Big Copyright" comes to mind) being able preemptively to apply copyright law encapsulates the problem in a way I have not read before: I will try to file that expression away for future use, although I think it is better called pre-emptive (my dictionary tells me that the hyphen is correct in the adjectival form but not in the adverb) enforcement, not application, which is too imprecise a term for lawyers to use (acceptable, though, for journalists, I think). Maybe it is a synonym for bullying. And read in the context of the Senator's attack on the power of special interests, the story becomes even more powerful.

Jeremy Phillips talks to Law Vox by Oxford Academic (OUP)

I am hugely enjoying this podcast, an interview with Jeremy Phillips produced by the publisher of so many IP books (including many of Jeremy's). It's highly informative and a great explanation of the importance of intellectual property law, although there are some themes that he might have explored such as the immense growth in the power of intellectual property rights ... although he does say that most trade marks are not intellectual property, a very useful proposition. When I have listened to it fully, and perhaps a couple of times, I might post more.
(Actually, is it right to call it a podcast if it cannot be downloaded?)

Intellectual property protection for Russian armaments

The Moscow Times reports that:

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

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

My favourite passing-off case

In an area of law where the cases are, almost by definition, often highly amusing, Rolls-Royce Motor Cars v Dodd [1981] FSR 519 is in a class of its own. John Dodd, the proprietor of an automatic transmission repair business, built his own car - actually taking over a rolling chassis which someone else had started and building a body on it - powered by a second-world-war vintage Rolls-Royce Merlin engine. The first iteration used an engine from a Centurion tank, rather less romantic than had it come from a Spitfire, the most celebrated machine in which the Merlin was used: the second car (its predecessor having been destroyed in a fire) had an engine from a bomber (a Mosquito, apparently). It also had a very different body style. Both cars featured a Rolls-Royce radiator grille and Spirit of Ecstasy mascot, at least until the manufacturer (whose company secretary at the time happened also to be called John Dodd) took him to court where Walton J granted an injunction to prevent passing off (referring to the car as a Rolls-Royce) and infringements of the company's trade marks.

Following the case, Mr Dodd started referring to the car as The Beast. When he promised the judge that he would change the name, Walton J asked where was Beauty. Perhaps in the eye of the beholder?

Thanks to the Internet, I find that Mr Dodd, who moved to Spain after he had breached the injunction within a couple of days (Whitford J fined him £5,000), is still running his automatic transmission repair business. Better still, YouTube has several clips of The Beast in action, including this one from an old edition of Top Gear. The embedded one below includes Mr Dodd executing a doughnut in it, sadly filmed from inside the car so you have to rely on his daughter's commentary.

Danish designers face problems in UK

Kluwer Copyright Blog reports that a Danish Court has issued a website blocking ruling concerning the illegal distribution of replica products. What is particularly interesting - to me, anyway - is that Danish designers of particularly furniture are facing problems with copyists making replica products in the UK and selling them over the Internet to Danish consumers. Is our design law really that pathetic? Yes, and it has been for years, although for good reason and car manufacturers must bear most of the blame: but for their excess of enthusiasm for trying to use copyright to control the spare parts market we might never had had the 1988 New Deal. Will repealing section 52 (which pre-existed the new deal, incidentally) make things any better? Perhaps it will bring our copyright law more in line with continental ones, but as critics of repeal have pointed out it was part of a sophisticated system of checks and balances, and removing it will throw the whole system into confusion.

Rihanna tee shirt case: Topshop lose on appeal

Fenty v Arcadia Group [2015] EWCA Civ 3  just appeared on BAILII. The Court of Appeal has upheld the decision of Birss J that the defendants committed a passing-off when they sold tee shirts bearing the image of the singer Rihanna without her consent - exacerbated by the fact that she has previously had a commercial relationship with the retailer, so there was greater scope for deception of the public than usual. It's a very important case for the developing law on character merchandising and celebrity endorsement. I will comment a bit more when I have read the judgmemt, but the BBC's report of the case is worth a look.

India: Government sets up IPR think-tank

By Santosh Vikram Singh, Partner, Fox Mandal, Bangalore 

The Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce & Industry, Government of India, through a press release dated 22 October 2014 announced setting up an IPR Think Tank to draft a National Intellectual Property Rights Policy and to advise it on IPR issues. The committee will also give its views/opinions on possible implications of demands placed by negotiating partner countries. This becomes essential especially when India and the US are trying to find a common ground on the prickly IPR issues in the working group to be set up under the bilateral trade policy forum.
IPR Think Tank is a six member committee chaired by Justice (Retd.) PrabhaSridevan, who had in 2012 figured among the 50 most influential persons in the world in the IPR field, Ms. Pratibha Singh (Senior Advocate)-Member, Ms. Punita Bhargava (Advocate)-Member, Dr. Unnat Pandit of Cadila Pharmaceuticals-Member, Sh. Rajeev Srinivasan (Director Asian School of Business, Thiruvananthapuram)-Member and Sh. Narendra K. Sabarwal (Retired DDG, WIPO)-Member and Convener.

This move comes at a time when the Government of India has launched a ‘Make In India’ campaign in order to raise the capabilities of the country’s manufacturing sector while also generating employment. A strong and favorable IPR regime will doubtlessly augment this programme by attracting foreign investment. Most large western pharma majors already have a manufacturing base in India; they are ready to set up additional units and invest in R&D facilities provided India amends its IPR regime suitably.

India’s move to constitute this think tank must also be seen in the backdrop of recent Patent Judgments in the pharmaceuticals sector, where Indian Courts prevented frivolous patenting as well as the extension of patents held by pharma companies just by tweaking existing drugs and passing them off as innovations. The US pharma industry has not taken kindly to these judgments and many companies have again attacked India’s IPR regime.

DIPP’s move is thus welcome, as it is in this context of growing concerns voiced by developed countries over India's level of protection to intellectual property rights over drug and agricultural products, and Prime Minister Modi’s promise (during his recent visit to the USA) to create a more investment and business friendly environment in India.

The think tank is expected to highlight instances where India has respected innovation in patent cases, while deciding to fast-track and finalize the policy road map by early next year. In its first meeting held on October 29, the committee decided to finalize the draft IPR policy by March 2015. The committee will advise the government on best practices to be followed in trademark offices, patent offices and other government offices dealing with IPRs to create an efficient and transparent system of functioning. The committee will also keep the government regularly informed of developments taking place in IPR cases that are likely to have an impact on India’s IPR policy. It will examine the current issues raised by industry associations and those that may have appeared in media and advice the government on addressing issues.

Copyright: new permitted acts

Two new statutory instruments came into operation on 1 October 2014, creating new permitted acts under the Copyright, Designs and Patents Act 1988, which is now so heavily amended that demands for a complete new codification and root-and-branch reform of copyright law are getting louder and louder (recently being added to in Mr Justice Arnold’s Herchel Smith lecture). They have exciting (that’s irony, incidentally), but admirably descriptive, titles: the first is the Copyright and Rights in Performances (Quotation and Parody) Regulations 2014 (SI no 2356). The words in brackets in the title of the second (SI no 2361) are ‘(Personal Copies for Private Use)’. Although they do similar jobs, they work in subtly different ways, and it is yet to be seen whether the private copying regulations comply with the relevant EU directive (the so-called information society directive) and therefore whether they are legal: interested parties are considering their position and a legal challenge may follow.

There are already many permitted acts, often inaccurately referred to as ‘exceptions’, in UK copyright law. Several of them fall under the general heading ‘fair dealing’, creating the impression that perhaps they are similar to the ‘fair use’ exception in US copyright law. Far from it: whereas ‘fair use’ is a powerful and widely-usable ‘get out of jail free’ card, the UK law’s notion of ‘fair dealing’ is inherently more limited and restricted to certain specific activities. Fair dealing must be for private study, non-commercial research, ‘criticism and review’ (must it be simultaneously for both?) or reporting current events. Recent grafts onto this limb of the Act (Chapter III of Part 1) deal with making versions of certain works adapted to the requirements of visually-impaired people. Now they are joined by provisions allowing parodies and quotations, provided they amount to r dealing.

How do you know what amounts to fair dealing? First, it is important to note that it is not the same as fair use. When the law uses a different word, it is safe to assume that it intends to say something different. One might argue that it is fair use, for example, to show a film to a small invited audience who do not pay for the privilege, but perhaps make a donation to charity. The charitable aspect immediately reveals possible arguments that the use of the film is fair: the promoter is not making a profit from the activity. But that is not the question we have to answer under our law: we have to ask whether it amounts to fair dealing. Has it interfered with the normal exploitation of the copyright by its owner? Has it deprived the owner of the opportunity to earn remuneration from the activity? It is perfectly possible that the owner would, had they been asked, have given permission to show the film in exchange for a payment which they would themselves donate to charity – paying the money straight to charity effectively makes the decision for the copyright owner that a particular charity will benefit from a showing of the film, and whether it might be classified as ‘fair use’ it is not ‘fair dealing’. The English courts have developed tests for fair dealing, asking whether the act complained of adversely affects the market for the work, and in appropriate cases whether the amount of the work used is reasonable and appropriate. The law tries to strike a balance between the interests of the copyright owner and users of the copyright work.

The first of the new fair dealing provisions permits acts done for purposes of parody, caricature or pastiche. The three expressions were not previously known to UK copyright law, but a recent Court of Justice decision, in Case C-??/???, Deckmyn, tells us (making unfortunate use of the word ‘original’, in a different sense from its normal copyright sense) that a parody must ‘fulfil a critical purpose; … display humorous traits; seek to ridicule the original work; and not borrow a greater number of formal elements from the original work than is strictly necessary in order to produce the parody’. So parody is concerned with poking fun at (or what in my childhood we would have called ‘macking gam’ of) a work rather than its creator.

The UK Intellectual Property Office has published guidance on the new regulations in which it states:

In broad terms: parody imitates a work for humorous or satirical effect. It evokes an existing work while being noticeably different from it. Pastiche is musical or other composition made up of selections from various sources or one that imitates the style of another artist or period. A caricature portrays its subject in a simplified or exaggerated way, which may be insulting or complimentary and may serve a political purpose or be solely for entertainment.

The Hargreaves Review concluded that the uncertainty about whether parody, caricature or pastiche required the copyright owner’s permission was restricting the activity of creative people and businesses. But there was little uncertainty: under the law as it stood then, these activities required the copyright owner’s consent if the whole or a substantial part of a work were taken. If the parody did not take enough of a work to amount to infringement, there would be no infringement. Why should a parody ever take a substantial part of a copyright work? If the parodist is doing their job properly, the parody will put the reader, listener or viewer in mind of the work being parodied but without taking anything from it in a way that might constitute and infringement.

The scope of the exception will depend to a great extent on the interpretation placed on certain expressions by the courts – the Regulations have done little to create legal certainty. In particular, the judges’ view of what amounts to ‘fair dealing’ and how they balance the interests of the copyright owner and the user. The wording of the provision does not expressly exclude commercial use, so one interesting matter will be the extent to which the courts permit commercial activities under this head: if the use deprives the copyright owner of income, it is unlikely to be treated as fair dealing.

Quoting from a copyright work is permitted provided a number of conditions are met. First, the work must have been made available to the public. The use of the quotation must amount to fair dealing with the work, the extent of the quotation must be no more than is necessary for the specific purpose for which it is used, and the quotation must be accompanied by a sufficient acknowledgement. The last requirement, which reflects conditions attached to other fair dealing uses and for which the courts have developed detailed rules, will not apply if ‘impossible for reasons of impracticality or otherwise’. To treat something which is merely impracticable as an impossibility stretches the point: this is a new meaning of the word ‘impossible’, perhaps. At least the ‘otherwise’ bit is vague enough that it is qualified by the ‘impossible’.

The rule about quotations from a performance or sound recording (in the modern world, one of the most important areas for quotation) is much the same, but there is no ‘sufficient acknowledgement’ requirement.

Private copying by an individual is now permitted provided that they have lawfully and permanently acquired the copy from which the copy is made. The new copy must not be made for commercial ends – which surely hardly needs to be stated expressly, as it would not be a private copy if it were. Private copies of computer programs will not be permitted under this provision.

The new private copying provisions have been controversial. The relevant EU directive stipulates that there must be a mechanism for compensating the copyright owner in any system for private copying introduced by a Member State. A parliamentary committee warned earlier this year that the UK might be in breach of its treaty obligations if it did not include such a mechanism, but the government after further reflection went ahead without one, claiming it is unnecessary. It relies on the fact that the directive says no mechanism is needed if the harm done to rights owners would be ‘minimal’. The government seems to be taking an optimistic view of how the new permitted act might work – and UK Music, claiming that musicians will lose £58 million in revenue, is considering whether to launch a legal challenge to the new legislation.

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.