The New European Patent by Alfredo Ilardi

There is an endless stream of interesting intellectual property events in Oxford, to which I always intend to go. Unfortunately, even living a mere 20 miles away, getting into the city is far from simple. Those medieval town planners failed completely to make the place car-friendly, and the profusion of bicycles with particularly (on average) idiotic riders makes driving an unattractive option. There is a bus from the village, but not necessarily a bus back at a convenient time. The train from Didcot is a good choice, but the station is five miles away and parking often ludicrously expensive. So, to cut a long story short, I haven't been to more than a couple of IP events in Oxford in all the time I have lived here.

Receiving an invitation to a book launch, for Alfredo Ilardi's "The New European Patent", published by Hart, Oxford's smaller legal publisher, stiffened my resolve. Meeting the Hart people, especially the founder Richard Hart (a noted runner), was an attraction, and who knows who else might be there? Very few people, turned out to be the answer, and only one member of staff from the publisher, the founder being at another launch party. I learnt from her that the company is now part of Bloomsbury, still presumably spending the Harry Potter millions on acquisitions.

Alfredo Ilardi, former Head of the Collection of Laws and Treaties of the World Intellectual Property Organization, has produced a worthy book. I take issue with its title, as its subject is not a new European patent but a new European Union patent, as the blurb makes clear:

"On 17 December 2012, following a complex negotiation which lasted 12 years, theEuropean Parliament adopted Regulations (EU) 1257/2012 and 1260/2012 and the text of the Agreement on a Unified Patent Court (UPC Agreement). These instruments institute the ‘European patent with unitary effect’, the first unified system for the protection of inventions within the European Union. The two Regulations will be applicable after the entry into force of the UPC Agreement, which was signed on 19 February 2013 by 24 Member States of the European Union. This book traces the evolution of the idea behind the institution of the European patent with unitary effect, including a comparative analysis of the existing parallel regional and international procedures for the protection of inventions. It presents a synthesis of the different phases of the negotiations which led to the adoption of the first unitary patent system within the European Union. In addition it examines the provisions of the two Regulations, of the UPC Agreement and of the jurisdictional system under Brussels I Regulation. Finally, it reproduces in the Appendix the texts of Regulations (EU) 1257 and 1260/2012 and of the UPC Agreement."

But the subject-matter is important, whatever it might be called. A brief glance t the book, however, showed me that the author (as you might expect) takes a rather historical approach, so it might be a bit short on substance: not a practitioner's book, I suspect. And as if to demonstrate the difference between the practical and the academic, which I always tell students are more closely-related in the IP field than in other areas of law, the author extols the virtues of the Community trade mark system. I cannot refrain from responding. To my mind the CTM is an almost unmitigated disaster, a bully's charter, encouraging foreclosure and depletion to such an extent that new entrants are hard-pressed to find a mark to use and established businesses from outside the EU can find their established trade mark useless in the face of ludicrously wide registrations that can only be challenged for lack of good faith (for which read, cannot be challenged). If the Unitary patent turns out the same way, it will not be a Good Thing by any measure except that of the multinationals who will find it conducive to the arrogation of market power.

My brief perusal of the book also took in what I always check for in law books: how many pages are real book, and how many mere stuffing (legislation and the like)? At 164 pages (hardback) it's not unreasonably short, but more than half of it comprises appendices of one sort or another. It makes it very expensive, per page of text, especially nowadays when the legislation is freely available online and in any event is mostly not yet final and likely therefore to change. I may be doing it an injustice: I had only a brief look at the book, and if the UPC will be your stamping ground once you are allowed to stamp in it, this book will surely be essential reading. So too, and perhaps more practical, will be Hugh Dunlop's "European Unitary Patent and Unified Patent Court", the second edition of which was pubished last year by CIPA and which is about one-third (90 pages) text and the rest appendices, probably the same ones as in the Hart book. Now I've got it down from the high shelf where it had rested since I received it, I'll have a look at it and write a review. That's easier when you have a copy of the book ...

Details of the Hart book: ISBN 9781849468336. RSP: £65 / US$130 / CDN$130.
http://www.hartpub.co.uk/books/details.asp?ISBN=9781849468336

Copying Is Not Creativity! Why Creative Artists Don’t Need the Public Domain - Office of Copyright

Copying Is Not Creativity! Why Creative Artists Don’t Need the Public Domain is a very interesting and thought-provoking blog post by Stephen Carlisle JD, Copyright Officer of Nova Southeastern University in Fort Lauderdale, Florida. Refuting the oft-cited dictum of either Stravinsky or Picasso, to the effect that great artists steal (he cites evidence that they didn't say it, which actually seems to be more like a lack of evidence that they did, along with a quote from TS Eliot that is supposedly what people think they are referring to, which became somewhat distorted because it really extols the virtues not of copying but of transforming an inferior piece of work), he takes issue with Judge Alex Kozinski (a brave move) who expressed the view (in his dissenting opinion in White v. Samsung Electronics America, 969 F.2d 1512, Ninth Circuit Court of Appeals, 1993 at page 1513) that everything in history has relied on copying:

“Creativity is impossible without a rich public domain. Nothing today, likely nothing since we tamed fire is genuinely new: Culture, like science and technology grows by accretion, each new creator building on the works of those who came before. Overprotection stifles the very creative forces it’s supposed to nurture.”

Creative people not only don't need a public domain, Mr Carlisle argues, but it actually holds them back from being truly creative. Copyright doesn't protect ideas (or, you might say, ideas are firmly in the public domain), and that is what creative people need to work with. Great stuff. Copyright might be over-powerful, but what is needed (to my mind - this is not Mr Carlisle speaking) is not the present constant process of erosion - death by a thousand permitted acts, or "exceptions" as the philistines in government prefer - but a fundamental reappraisal of some key issues, like the worthless originality test.

In an earlier posting, which I found following a link from the artist's Facebook page (in the modern world that is how these things happen), Mr Carlisle had criticised the decision of Judge Jesse Furman in Dean v. Cameron, 2014 WL 4638355, Southern District of New York, 2014, to dismiss Roger Dean's claim against the director of the motion picture Avatar. Read his explanation of where the court went wrong by considering individual Dean artworks rather than the "total concept and feel" of his oeuvre - which no-one could deny is original and distinctive, and which many commentators also feel is reflected in the Cameron film. Even Mr Cameron seems to admit that Dean's work was a major influence (but then again, who could visualise a fantasy world without paying homage to the master?).

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Whisky Galore

Whisky Galore - Whyte and MacKay Ltd v Origin Wine UK Ltd  is another piece I am reposting (well, just posting a link to: rather different) by Jane Lambert. One of those problems that is inevitable with the use of weak trade marks I think.

In defence of my use of the same headline as Jane, of course it was coined originally by a famous fellow West Hartlepudlian, who as well as being an author was also a founder of the SNP - reinforcing, perhaps, the argument that northern England should be allowed to choose whether to go with its close neighbours on the other side of the border rather than its more remote neighbours in London.

Court of Appeal will not interfere with settlement agreement, adopts broad(ish) interpretation

H&M's underwired bras get no support from Court of Appeal, reports Jeremy under a typically inspired headline on PatLit: the patent litigation weblog. No point in my repeating what he has already done so well ... 

What was this all about? An infringer squirming uncomfortably, trying to grasp at the one straw within its reach, perhaps - it certainly looks like it. Interesting to note (though it is perfectly logical if you stop to think about it) that if the patent holder establishes that the settlement agreement precludes a validity challenge by the infringer, it loses the possibility of alleging infringement and is left with an action for breach of the settlement agreement. Also interesting to note that the court will adopt a fairly broad view of what the agreement means - as it did not specify what test should be used, any conventional test could be applied. That surely accords with what the patentee must have had in mind when the agreement was made, and the infringer should have realised that they would not be let easily off the hook by agreeing to terms that favoured them.

Issue. Rule. Analysis. Conclusion.

Legal Solutions Blog What Law School Didn’t Teach You: Observations from ACC’s Corporate Counsel University

Ask any lawyer what “IRAC” means, and s/he will instinctively recite this law school mantra: Issue.  Rule.  Analysis.  Conclusion.  Identify the multitude of issue(s) that are present in a fact pattern; identify the applicable rules or regulations; analyze the respective facts against said rules; and voila– a legal conclusion. - See more at: http://blog.legalsolutions.thomsonreuters.com/corporate-counsel/what-law-school-didnt-teach-you-observations-from-accs-corporate-counsel-university/#sthash.R5d8MOR7.dpuf

Online course on commercialisation of IP from EPO

The European Patent Office offers "virtual classroom lessons" on Commercialisation of IP. Why, I don't know - it's a worthy enough subject, but why should a public institution be moving outside its core function to provide education in competition with many private-sector organisations, which pay the taxes that (presumably - though perhaps it is run entirely out of operating revenue) keep the EPO going? And even if you think it is legit for such an institution to be running courses, why commercialisation rather than something that the institution actually does? You'd have thought it would concentrate first on ensuring that people understood its own operations, how to draw up applications, and the substantive law of the Convention and supporting instruments. Still, it could be interesting and is certainly not expensive.

NIPC Law: Be careful for what you wish for when seeking an interim injunction.

Another reposting from Jane Lambert's blog: NIPC Law: Be careful for what you wish for when seeking an i...: Jane Lambert Whenever a court grants an interim injunction, or a respondent offers an undertaking, to do or refrain from ...

Monopoly power in the Eighteenth Century British Book Trade

As much to ensure I don't overlook it as to bring it to your attention, here is a link to an interesting-looking paper by David Fielding (Department of Economics, University of Otago, New Zealand) and Shef Rogers (Department of English and Linguistics, University of Otago, New Zealand) entitled Monopoly power  in the Eighteenth Century British Book Trade and therefore deeply involved with the origins of copyright law.



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NIPC Law: Wrapped up: Everseal Stationery Products Ltd v Document Management Solutions Ltd

Another reposting from my friend Jane Lambert's excellent NIPC Law blog.  Everseal Stationery Products Ltd v Document Management Solutions Ltd. and Others  [2015] EWHC 842 (IPEC) (1 April 2015) is a patent case from the Intellectual Property Enterprise Court, following a hearing a couple of years ago in which the defendant failed to get a declaration of non-infringement. No new law in it, as Jane observes, but a good illustration and possibly a case to mention in a skeleton argument. As my task for today involves working on the IP module of the University (formerly College) of Law's LPC, that has given me an idea ...

Appropriation art: weekend reading

"On Art Attacks: At the Confluence of Shock, Appropriation, and the Law" is a paper by my friend and fellow runner, Rachel Buker (see My Running Friends in the Law in the sidebar) which I just came across (via her posting in the Art and Artifice blog) and am looking forward to reading, but which I wanted to draw to the attention of my reader ...

NIPC Law: Red Berries - Bodo Sperlein Ltd v Sabichi Ltd

Assessing whether copyright has been infringed in the absence of direct evidence: Reposting from NIPC Law: Red Berries - Bodo Sperlein Ltd v Sabichi Ltd [2015] EWHC 1242 (IPEC) (8 May 2015).

Starbucks (HK) v British Sky Broadcasting Group (Supreme Court)

One thing that baffled me about this case when I saw the first instance judgment ([2012] EWHC 3074 (Ch) (02 November 2012), on appeal [2013] EWCA Civ 1465 (15 November 2013)) was the claimant's name. It turns out that I should have read Arnold J's judgment more carefully, because a footnote tells the reader that "Starbucks HK’s name came from the bucks raised by the sale of Star [a Chinese-language TV station] by Richard Li’s Pacific Century group to Rupert Murdoch’s News Corporation", who of course were the parent company of the defendants in the present case. So the claimant is nothing to do with the purveyor of what my great friend Markus, from Munich, is pleased to refer to as "brown liquid", a generic beverage which he maintains is drunk on every occasion by every American, whether its is masquerading as coffee, tea, or beer or is some sort of soft drink.
Originally a trade mark infringement (and validity) and passing-off case, by the time it reached the Supreme Court (which has now handed down its judgment: [2015] UKSC 31 (13 May 2015)) it was only concerned with passing off and in particular whether it is good enough for the claimant to have international goodwill. That's a very important point in the law of passing off, so this is an interesting and (sad to admit) exciting case.
However, the outcome doesn't appear to be as exciting as I would have liked. Because they didn't actually have any paying customers in the UK, the claimants have no goodwill to protect (and having goodwill is essential for a passing-off action to lie, of course - part of Lord Oliver's classic trinity from the JIF Lemon case, Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491). Old cases show that sometimes a foreign trade can generate some goodwill in this country - taking bookings, for example - but making its TV programmes available online in the UK amounted to nothing more than advertising and created no protectable goodwill.
I am disappointed that the court should have taken such a narrow view of what constitutes goodwill. It is, of course, a tricky thing to define (and you should read my Dictionary of Intellectual Property Law to learn more on that score), but in the modern age (by which I mean on the Internet) surely businesses create what most people would recognise as goodwill by promoting their services in other jurisdictions. Goodwill is, certainly, local in nature, but I think it is time to move on from the old view of goodwill and to embrace the idea that a trade reputation (is it the same thing?) can exist without money changing hands. It is a small step from making the TV programmes available to online viewers in the UK and charging them even a small amount to watch, and it should not be on such small steps that these things turn. (But perhaps when I read the judgment carefully I will find the answer to that.)
It need not even make any difference to the final result. The court could have distinguished the old cases and held that there was protectable goodwill, but gone on to hold that no damage had been suffered. To my mind, that would be a more logical place for the law to have ended up in. I certainly don't say that the court was wrong in any way, and those old cases can't just be wished away, but I do think the ratio does not reflect what people who commonly use the world wide web expect, and the alternative route to the same result might have given a more satisfactory ride.
You can conveniently watch the hearing using these links, which I have copied from the Supremes' website:

Watch hearing
25 Mar 2015	Morning session	Afternoon session
26 Mar 2015	Morning session	Afternoon session

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Failure to tell applicant about renewal of earlier trade mark infringes CTM rules

Lidl Stiftung v OHMI - Horno del Espinar (Castello) (Judgment) [2015] EUECJ T-715/13 (05 May 2015) is a weird case in the General Court. The German supermarket applied for a figurative trade mark in which the dominant element was the word, Castello, for various comestibles in classes 29, 30 and 31. It was opposed by the owner of a Spanish trade mark, also figurative and also with the dominant element being a single word, in its case Castelló. As I have learned when trying to communicate with Spanish people, that accent makes a world of difference (shifting the stress from the "e" to the "o"): I recall struggling to tell the Hertz representative from whom I had hired a car at Jerez airport the name of the village, Gaucín, to which I would be driving it, oblivious to the fact that the stress lay on the second syllable - and I was so proud of pronouncing the soft "c" correctly. I was also anxious because the Renault Grande Espace to which they had "upgraded" me (for which read, it's the only car we've got at the moment) was not much smaller than the village.

No-one, from OHIM and the Board of Appeal to the General Court, thought that they two were not similar: only Lidl tried to argue the contrary, and they were rather obliged to give that a whirl. Thank goodness for a bit of common sense somewhere in the EU trade mark system. But still, Lidl got what they wanted and the decision was annulled. How come? Simple, really, although the story is somewhat hidden in the turgid prose of the judgment (it is always so difficult to work out what happened, and why, in an EU case). It turned out that a failure by OHIM to provide Lidl wth information about the opponent's filings meant that the applicant was unable to mount its defence properly. (I think that's a fair summary). So, a procedural irregularity on the part of the office - hard to believe, with everything being so thoroughly automated in Alicante, but there it is, nothing is perfect.

IP Draughts pans Google patent contract

Do no evil …drafting is a typically robust piece of work from Mark Anderson, whose IP Draughts blog should be essential reading for anyone with any aspirations to write contracts, whether relating to intellectual property or not. In it he demolishes a badly-drafted contract the terms of which are intended to govern the acquisition by Google of any US patent you might wish to sell to them - the rest of the world, typically, not existing for the purposes of their mindset. Google's professed aim is to prevent unwanted patents falling into the hands of trolls - in the pursuit of which Google will become potentially the biggest troll in the world. Just as well that its well-known slogan (quoted by Mark in the title of his posting) rejects any possibility of trollery!

General Court: Likelihood of confusion between SKYPE and SKY

The General Court (one of the constituent parts of the Court of Justice of the European Union, as I have pointed out many times, another part being confusingly called the Court of Justice) has handed down its judgment on whether there is a likelihood of confusion between SKYPE and SKY, and has decided - to no-one's surprise, I imagine - that there is. The press release is here. I see that the Court refers to itself as "the General Court of the European Union", which is not the title given to it by the Treaty.
It is an interesting contest between two weak but fairly well-known (not necessarily in the Article 6bis sense) trade marks. Allowing registration of a word mark like SKY, irrespective of any distinctiveness acquired through use, contributes greatly to the twin problems of depletion and foreclosure - the processes which make it increasingly difficult to coin a new trade mark. Although the word SKY is present in the word SKYPE (and it is not actually word trade marks anyway - there is some figurative content, which didn't help the applicant) surely that added bit at the end makes a difference, and is unlikely to be lost in aural use, short of the most extreme glottal stop ever. So I am not convinced that there is a likelihood of confusion, even before considering how well-known the trade marks are: and the better-known, the less likely members of the public are to become confused. At least, that's how I think it should be.
Since posting this, I have done an interview with the BBC World Service (using, of course, Skype). Preparing for that caused me to dig a little more deeply into the case, which made me realise that the applications were filed in 2005 and the oppositions in 2006, at which time Skype (first release August 2003) would have been much less well-known than it is now. Sky, on the other hand, was already well-known by then (having been founded in 1990). That suggests to me that there would still be little chance of confusion arising from any similarity between the names, given that people knew Sky and would notice that Skype was different; but also that the market for VOIP back then was much much smaller than now (indeed, I suppose that Skype created the market) and people who might be interested in obtaining services from Skype would be switched-on types who would understand that it was nothing to do with Mr Murdoch's empire. So it doesn't alter my view of the likelihood, or lack thereof, of confusion: a well-known trade mark should receive less protection because it is less vulnerable to confusion.
Because there were three Skype trade marks, there are three reported appeals, though the judgments might involve a lot of copying and pasting. Here are links to the BAILII reports: Skype v OHMI - Sky and Sky IP International (SKYPE) (Judgment) [2015] EUECJ T-184/13 (05 May 2015), Skype v OHMI - Sky and Sky IP International (SKYPE) (Judgment) [2015] EUECJ T-183/13 (05 May 2015), and Skype v OHMI - Sky and Sky IP International (skype) (Judgment) [2015] EUECJ T-423/12 (05 May 2015).

Court of Justice rejects Spain's objections to UPP

The IPKat reports that what he insists on calling the CJEU has rejected Spain's objections to the Unitary Patent Package: you can read the Court's press release here.

"IP and Other Regulations" by Mark Lemley

Only a short article, an introduction to a set of conference papers, but for anyone interested in the justification for, and theoretical basis of, intellectual property, IP and Other Regulations by Mark A. Lemley is a great read, and contains several pointers to more detailed discussions of the same topic.

Another Chinese clone, this time with a retro feel

Automotive news reports that Mercedes G-Wagen is the latest victim in China's clone wars. At least the Evoque is a new design - it seems strange to go back to such an old vehicle as the G-Wagen, which I remember driving as a battle-bus in Enfield North in the 1987 general election. Could it really have been so long ago? It had a turning circle comparable to that of an oil tanker.

JLR gave up on the Evoque copy as a bad job, noting that there was nothing in Chinese law which would help them. Mercedes, presumably, have less ground for complaint because the have to assume that even if there ever had been any rights in the design, they would have expired by now. Unless they could rely on copyright, of course, but that is an unreliable way to protect designs of anything, but especially motor vehicles, and particularly functional-looking ones.

This time the copyist is Beijing Automotive, which is where the story becomes complicated - they are Mercedes's local joint venture partner in China. Imitation may be the highest form of flattery, but it doesn't seem that Mercedes see it that way, and the problem is as much a political one as a legal one.

 

NIPC Law: Damages for Infringement of Database Rights

Damages for Infringement of Database Rights is the latest posting by my friend Jane Lambert on her excellent NIPC law blog - essential reading about an apparently minor intellectual property right which seems to become more important every time we hear about it.

Reposting from NIPC Law: Damages for Infringement of Database Rights: Inter...

NIPC Law: Damages for Infringement of Database Rights: Inter...: Jane Lambert The first claimant.  Intercity Telecom Limited ( "Intercity" ) , is one of the largest independent com...

Right to repair a four-wheeled computer

According to this story in WIRED (hat-tip to Warwick Rothnie for posting it on Facebook) John Deere and General Motors are trying to change the very idea of ownership, of tractors and cars at any rate. Actually, personal leasing plans in the motor sector (and, no doubt, similar arrangements in the agricultural machinery sector) have already years ago changed the ownership equation, but in a rather different and direct way than what is described here.

The simple fact is that, because vehicles rely increasingly on software to operate them, the owner of the hardware is beholden to the owner of the copyright in the software running on it. As with computers, so with tractors and cars. To characterise this as the manufacturer retaining ownership of the hardware is at best hyperbole, at worst downright wrong. But it nevertheless appears to pose problems for owners in the USA.

Would it happen here? I think not. First, an owner deprived of the ability to repair his or her car or tractor (or anything else) would be able to refer to the House of Lords decision in that great case, British Leyland Motor Corp & Ors v Armstrong Patents Company Ltd & Ors [1986] UKHL 7 (27 February 1986) where their Lordships (or at least a majority of them) held that the owner of a motor car had the right to repair it as economically as possible, and that to use intellectual property rights to thwart the owner was a derogation from grant which the courts would refuse to uphold. And since 1986, the software directive has introduced several provisions (in particular section 50A and 50C of the Copyright, Designs and Patents Act 1988) to permit "reverse engineering" of software and the fixing of problems with it. So, between those two pieces of law, one judge-made and the other statutory, I don't see much to worry about: except, of course, for the fact that if a large multinational leans on an individual car-owner or farmer there is a good chance that they will prevail regardless of the merits of their legal case.

For more see Autoblog.com, Automakers to gearheads: Stop repairing cars

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