Letters of Note: Mark Twain on copyright

Letters of Note - which is highly recommended reading at all times - has reproduced this letter by Mark Twain about US copyright law - more specifically about its failure to deal with cheap imports from Canada, and an early example I think of an international exhaustion rule. I think he should have been complaining about Canadian copyright law (which at the time was presumably Imperial copyright) - or perhaps about his own country's Declaration of Independence, or USexit as we might now call it. Which reminds me: one of the many, many disastrous effects of the UK leaving the EU (should it ever actually happen) will perhaps be the revival of the argument that exhaustion should happen globally - and without the constraints of EU law (and the more general constraint of the EU project) it will be harder to resist ... no doubt it would be hard to go the international exhaustion route if we remain in the single market, but that looks like an increasingly less likely outcome: if we want the single market we have to accept free movement, so the outcome is virtually identical to what we already have, and no doubt those who believe we are better off out of the EU will prefer to go for broke and cast the UK adrift in the stormy seas of global trade under the auspices of the WTO.

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Trade secrets directive becomes law (but will we have to implement it?)

The European Commission proposed a directive to harmonise protection of trade secrets throughout the European Union in 2014. The directive was unanimously adopted by the Council and three weeks later published in the Official Journal on 15 June 2016, and came into force on 5 July (Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.) Between publication and entry into force, of course, the UK's referendum on EU membership reduced the importance of the directive to this country.
Being a directive, the new law has to be implemented by the Member States. In the general confusion about how the UK will effect its exit, no one knows whether the directive will be implemented. Member States have two years in which to do is that, and two years is also the interval after giving notice under article 50 of the treaty when the UK will leave. However long passes before the UK gives notice, will determine how long the UK will be required to comply with the directive. That could be only a few months.
As with other areas of intellectual property law, however, it does seem quite likely that the UK will continue to ensure that its laws are aligned with those of the European Union. Depending on the future relationship with the EU, the UK might be obliged to comply with the directive anyway. In any event, it is hard to imagine that Parliament could possibly find time to replace more than a tiny part of our EU-derived law. The trade secrets directive is likely to remain important. However, the detailed shape of the Directive is likely to emerge only once the Court of Justice is seised of some cases in which it can give its interpretation of the law – and its rulings will cease, at some point, to apply to the UK.
Article 2 defines a trade secret as information that

• Is secret in the sense that it is not generally known among or readily accessible to persons within the circles that normally deal with this kind of information;
  
• Has commercial value because it is secret; and
  
• Has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.
  

While the first and third of these requirements are at least similar to English law, the requirement for commercial value narrows the scope of the definition – which is hardly surprising, as the Directive is seeking to define a narrower class of information than the broad class of confidential information which our law protects.
The acquisition of a trade secret is unlawful when it is carried out by unauthorised access to materials, or any other conduct which is considered contrary to “honest commercial practices”. Where the trade secret is acquired from a third party and the person who acquired it knew or should have known that the third party was acting unlawfully, that acquisition will also be considered unlawful. Using or disclosing a trade secret will be considered unlawful when it is in breach of a confidentiality agreement or some other duty not to disclose the trade secret or to limit its use.
Remedies are dealt with in Article 11. They include the usual remedies in intellectual property cases – damages, interim and final injunctions, destruction of unlawful goods. There are no criminal offences, but Member States remain free to introduce their own.
The Directive has been criticised as “a threat to public interest and democracy” because of the perceived threat it poses to whistle-blowers and the press. The Panama Papers scandal in 2016 highlighted these concerns. The Directive does provide some protection for whistle-blowers and the press, so the question is whether the exceptions are sufficient. They are set out in Article 5 and cover disclosure of a trade secret for:

• exercising the right to freedom of expression and information as set out in the [European] Charter [for Fundamental rights], including the respect for freedom and pluralism of the media;
  
• revealing misconduct, wrongdoing or illegal activity, provided that the respondent acted for the purpose of protecting the general public interest.
  

Recital 20 says that “the measures, procedures and remedies provided for in this Directive should not restrict whistle-blowing activity. Therefore, the protection of trade secrets should not extend to cases in which disclosure of a trade secret serves the public interest insofar as directly relevant misconduct, wrongdoing or illegal activity is revealed.” Nevertheless, critics argue that the burden for showing that disclosure is in the public interest will fall on the whistle-blower or journalist, and there have been calls for a further directive to give more extensive protection to them.
English law on breach of confidence, non-statutory as it is, gives narrower exceptions to protect whistle-blowers and the like. The changes demanded by the Directive would not be great, but some extension of the public interest rule (covering, remember, only trade secrets) might well be needed.

Lending of electronic books is comparable to the lending of traditional books

Lending a digital book to a reader must be the equivalent of lending a physical copy: it hardly seems to need thinking about, does it? But in the copyright world things are often not as simple or logical as they first appear. When an e-book is lent to a reader, is that the restricted act of lending (or perhaps rental, if money changes hands) or is it making available to the public? And should it fall within public lending rights schemes, which it would if it were regarded as lending? Which act it is, determines whether authors are remunerated for the activity. In the UK it has been treated as "making available", and therefore outside the scope of public lending right, a matter of concern to my trade union the Society of Authors - but perhaps not for much longer.

In Case C-174/15, Vereniging Openbare Bibliotheken v Stichting Leenrecht, Advocate-General Szpunar has indicated that the activity should be treated as a form of lending. Provided it is on the "one copy, one user" basis (the library lends the e-book to one person, and can't lend it to another until it has been "returned") this is economically no different from lending a hard-copy book. The Advocate-General considered that the fact that the 2006 rental and lending directive was silent on the matter of e-books indicated no more than that the technology was in its infancy - a bit of a feeble excuse, because although the Kindle was launched in November 2007, less than a year after the Directive was passed, Sony had produced the Librie in 2004 and the Reader in 2006. More to the point, perhaps, e-books have been around since at least 1971 when Michael S Hart set up the very wonderful Project Gutenberg, so why didn't the directive take into account what was already pretty old technology?

Whatever the answer to that, the Advocate-General thinks that the directive should be read so as to cover e-books. This is exactly the sort of judicial activism that gives the Court of Justice a bad name - not reason to vote Out tomorrow, but certainly (for me) a reason to be with Jeremy Corbyn - about 70 per cent "remain". If the EU produced half-decent legislation to start with, I might be up to 75 or 80 per cent.

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Garage's use of carmaker's trade mark

It's rather hard to see why a case in which an unauthorised repairer, sued by the manufacturer for trade mark infringement, would even justify the expense of going to court. Nevertheless in Bayerische Motoren Werke AG v Technosport London Ltd and Anor [2016] EWHC 797 (IPEC) (13 April 2016) that is exactly what happened, and the defendant won on one count of trade mark infringement. But it lost on another two, and on passing off, so had a bad day overall.

BMW alleged infringements of their BMW trade mark, the roundel device and the "M" device which denotes certain high-performance models in their range. Perhaps I should write "extra-high performance".

The first two are Community or now EU trade marks, and the third an International designating the EU, so the legislation which was engaged in the case was Council Regulation (EC) No. 207/2009. In each case the claimant invoked art.9(1)(a) (double identity) and (b) (likelihood of confusion) and in the case of the "M" device art.9(1)(c) (unfair advantage) as well, and all three infringements had associated passing off claims. That seems pretty comprehensive.
 The uses of the trade marks were all the things that one expects of an unauthorised repairer. There was the use of the description "BMW Specialist" on the fascia on the garage premises, which it was accepted was not liable to affect any of the functions of the trade mark (Case C-63/97, Deenik): it was an accurate message about the services offered by the defendant, and was not even pleaded. The roundel also appeared on the fascia, which was another matter: and it was on a van, business cards and a banner inside the premises. The "M" logo appeared on the website.

The novel allegations of infringement concerned the fact that Mr Agyeton, the proprietor of the defendant, wore a shirt with the initials "BMW" on it and he or the defendant operated a Twitter account with the handle @TechnosportBMW. That claim did not succeed, but the others did. The fact that the roundel featured on the packaging of parts which were supplied (through the authorised dealer network) to the defendant, as the law requires them to be, made the claim a little more complicated. In addition, promotional items bearing the roundel were provided to dealers as part of the manufacturer's efforts to encourage the sale of genuine parts, and would be passed on to non-authorised dealers, who would pass them on to customers, which further complicated the matter. In the end, however, the judge was satisfied that the average consumer would not understand the roundel on the packaging to indicate that the garage was an authorised repairer. But where the roundel was displayed on or in the premises, the average consumer would assume that this indicated a connection between the garage and BMW, or (if that was not the case) at least it would cause consumers to wonder about the connection.

The use of the roundel also amounted to taking unfair advantage of the reputation of the trade mark (art.9(1)(c)), although that won't have added anything to the remedies (and, being an IPEC case, the amount of damages available was limited anyway).

The use of the "M" device would also have those effects, so that too amounted to an infringement. But the use of the BMW signs conveyed no suggestion that the defendant was an authorised repairer, partly because the evidence provided didn't get BMW far enough, so this line of attack is hardly foreclosed by this judgment.  There is an interesting argument that, because BMW dealers commonly include "BMW" in their business names, the addition of the defendant's name could actually made it seem more like a representation that there was a connection: the judge thought that too subtle for the average consumer, but it should definitely not be discounted in future. A manufacturer might well find a way to make that approach work in their favour.

Where, you might wonder, do the art.12 defences feature in this case? The answer is that the defendant accepted that art.12 added nothing to the defence to the infringement claim, namely that "the defendant's use of the signs was not liable to affect the functions of the Trade Marks.  This was because the signs as used by TLL would in each case have conveyed to the average consumer that TLL was a specialist in the repair and maintenance of BMW vehicles, using genuine BMW spare parts." I expected to see detailed consideration of the "honest practices in industrial and commercial matters" proviso, as in Volvo v Heritage, but the judge wasn't asked to get into that.

Regarding the passing-off claims, these stood or fell with the trade mark claims, and the judge explained the connection between the two which strikes me as an interesting point:

 Had I found that the message conveyed by TLL’s use of its roundel and the M logo signs in each case did no more than render the average consumer unable to determine whether there was an economic link between TLL and BMW, as opposed to causing the average consumer to take the view that there was such a link, on that evidence I would have concluded that there had been no passing off by TLL, see Reed Executive plc v Reed Business Information Ltd [2004] RPC 40, at [111] and Phones 4U Ltd v Phone4U.co.uk.Internet Ltd [2007] RPC 5, at [16].

"Unable to determine" and "caused to wonder" amount to the same thing (so it appears from this judgment), so the test for passing off is somewhat stricter than that for trade mark infringement.

Copyright in digitally remastered recordings

I read recently (here in Billboard and Music Law Updates) about a case in the USA in which it was argued that when a digitally-remastered recording was broadcast, it was not a broadcast of a much older recording (originally in analogue form) and therefore escaped the need to pay. It turns on a point of US law, at the intersection of State and Federal law, which makes the status of pre-1972 recordings debatable. That goes beyond the scope of this blog - but it led me to some thoughts about how copyright works when sound recordings are remastered.

I don't like the basis on which that court in California decided its case: which is not to say that I think the judge was wrong, because it's their law and it's not for me to say what is and isn't the legal position. But I do think that, if the principle is that a remastered recording of an earlier recording is a new copyright work, that's not right.

I've thought this instinctively for some time. Now I think I know why I feel that way. The way I see it, a recording is what is made of a performance of some sort. I know that the law doesn't define a sound recording in that way but perhaps it should - perhaps it's the definition of a sound recording that's wrong. Take, for example (because I happen to be listening to it), Kind of Blue. Some might say not the best example because the 1992 digital remastering changed the key of the music - but I don't think it makes any difference. Miles Davis and the other members of the sextet played the music in 1959 and a recording was made. No new recording was made in 1986, 1992, 1997 or 2005. To my way of thinking, there is only one recording, one copyright work: subsequent productions are just that, new productions of the same recording. No separate copyright should subsist in the remastered version. That isn't, apparently, the state of US copyright law, and it probably isn't the state of UK copyright law - but I think it should be.

China: JLR sue Landwind over Evoque look-alike

According to Reuters, Jaguar Land Rover has become the first western car maker to sue a Chinese rival, Jiangling Motor, in China for copying its design. Although copying is rife, the difficulty of enforcing intellectual property rights in China has usually deterred manufacturers from taking such a step - Honda took action to protect the CR-V design from copying by a little-known Chinese company, and were in court for 12 years before winning far smaller damages than they had sought.

The JLR suit is based (it seems) on copyright and unfair competition law. Jianling's Landwind X7 - the latest version of which was announced last November - bears a striking resemblance to the Evoque. It has softer, more rounded angles on the front, but cheap kits enable the owner to modify the look to make it more like an Evoque, which costs three times as much.

In the UK, JLR have applied to register the appearance of the Evoque as a trade mark. The application is still under examination, but there are many precedents for vehicle shapes being registered as trade marks - though how effective they are has not yet been shown in litigation.

Who owns a Banksy mural?

The late Sir Hugh Laddie famously became a bit fed up with having to deal with general Chancery Division business, like landlord and tenant matters, when he was the Patents Court judge. But he'd probably have been perfectly happy with a dispute over the ownership of a wall, as in The Creative Foundation v Dreamland Leisure Ltd & Ors [2015] EWHC 2556 (Ch) (11 September 2015).

Separating intellectual property from the concrete items in or on which it is carried or displayed is a big conceptual problem for anyone coming fresh to the topic. A literary work is an abstract matter, separate from but related to the book in which it is printed. A painting likewise: ownership of the canvas does not confer ownership of the copyright, though provided the legal formalities are observed the two can certainly stay in the same ownership. However, this analysis rather assumes that the artist owned the canvas at the time - or at least had the right to apply paint to it. What if she didn't? And what (if it makes any difference) if it wasn't canvas, but a wall?

The growth of street art, and the growth of the respectability of street art too, has resulted in new challenges to the law. The intersection of intellectual property and landlord and tenant law would surely have appealed to Mr Justice Laddie, as it seems to have done to Mr Justice Arnold. The topic is discussed in greater detail in this article on the City University blog, by Enrico Bonadio.

Banksy (because of course it was he) created the mural in suit in Folkestone during the town's triennial arts festival in 2014. The organiser of the festival, The Creative Foundation, acquired the rights to the painting from the landlord, but the tenant removed it, arguing that this was an incident of its obligations to maintain the premises. It further argued that it had become the owner of the painting, but instead of disposing of  it at the local tip as one might expect the repairer of a defaced wall to do, they shipped it to the United States where it was to be auctioned.

Mr Justice Arnold had no difficulty in deciding that the painting had become part of the fabric of the building and therefore was the property of the landlord (who had transferred ownership to the Foundation). On being removed from the building, the claimant argued, the bricks and mortar (and paint) became once again the chattels which they had been before they were made into a wall and incorporated into a piece of real property, and section 2 of the Torts (Interference with Goods) Act 1977 came into play, allowing the court to order delivery up. Without referring expressly to the 1977 Act, the judge did just that.

The judgment should make it more difficult for people to remove murals from property they do not own - although in practical terms it is surely significant that Banksies, one removed from their original sites, seem to cross the Atlantic pretty quickly to be sold by auction beyond the effective reach of the English courts.

As for copyright, Mr Justice Arnold also had no difficulty in recognising that Banksy owned it in the work in question. Given that he is in the habit of painting on other people's canvasses, an activity which in the law's humourless way could be counted as criminal damage (though I doubt it would ever give rise to a complaint), that is a relevant point. Glyn v Weston tells us that copyright will be withheld on public policy grounds from immoral works, and works the creation of which involves the commission of an offence might well be treated the same way - although the new owner of the painting (the owner of the newly-painted wall) will usually give retrospective permission for it. In the US, as Dr Bonadio (who incidentally calls Arnold J "Justice Arnold", thus promoting him to the Supreme Court) notes, graffiti artists would probably be denied copyright protection under the "clean hands" doctrine.

A graffiti-sprayer with dirty hands - there's an interesting idea ...

Glee for the lawyers?

I hesitate to use the word "bullying" in the context of trade mark litigation of doubtful merit, because bullying is not something about which to speak or write lightly. But the expression "trade mark bullying" has entered common parlance, at least among trade mark practitioners, and I suppose that as a lexicographer - a label which I can't really fail to acknowledge - I am committed to accepting the way language is used, although under no obligation not to be critical about it.

Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 455 (25 May 2016) is as unedifying a case of a big trade mark owner trying to overcome a small one irrespective of the strengths of their case as one could hope not to see. Reading this morning that the unsuccessful claimants (and unsuccessful respondents) are seeking to take the case to the Supreme Court, which one might imagine would be making lawyers rub their hands with glee, actually adds to the unedifyingness of the whole thing and makes it look more like bullying.

On 16 February the Court of Appeal dismissed Fox's appeal against a decision of Roger Wyand QC (sitting as a deputy judge) that they had infringed the claimant's earlier trade mark, leaving an appeal against the deputy judge's refusal to revoke the claimant's trade mark to be resolved. The Court of Appeal has now dismissed that appeal too. (A passing-off claim was unsuccessful at first instance, and the claimant's cross-appeal on that claim was dismissed.)

Essentially, the claim is about reverse confusion. The claimant opened the first of its (primarily) stand-up comedy clubs in 1994, and filed a trade mark application in 1999. The application was for registration of a series of two device marks, in which the word "Glee" was prominent and the difference lay in the colours. This proved to be the claimant's Achilles heel, leading to the claim that the registration was invalid.

The defendant produced a television show entitled "glee" [sic], perhaps hoping that if they didn't give the title a capital initial they might be able to argue that it wasn't trade mark use. Fat chance of that. It was first broadcast in the UK in December 2009, so the claimant's registration gave them a head start of over a decade. The claimant's registration was wide enough to cover the defendant's activities, or many of them - including merchandising and concerts. It looks like an open-and-shut case, and as far as infringement goes it is hard to see why on earth it should even have got to court let alone the Court of Appeal.

The answer lies in the fact that the likelihood of confusion - necessary, because the trade mark and the defendant's sign are merely similar,  not identical - provided an opportunity to mount a defence. Not a strong one, perhaps, but at least there was a possibility. The odd thing here is that the confusion goes in the opposite direction to what is normal. The senior mark was being confused with the (better-known) junior one. But that didn't matter: there was a likelihood of confusion, there were witnesses to attest to the fact that they had thought the club and the television programme were connected, or came from the same source, and that was all that was needed. Reverse confusion, like reverse passing off (as in Bristol Conservatories)?

Better, though, was the argument that the trade mark was invalid, that it didn't qualify as a series or even that such a series trade mark could not be registered under the terms of the directive. But that's another story which I don't have time to write at the moment. I was pleased to note from the first instance judgment that the extract from the Registry's manual shows as an example a trade mark for which I filed the original application - though it wasn't, and apparently still isn't, a series (the Registry might have adapted it to illustrate the point they wanted to make).

Steal This Riff: How To Fix Copyright Law And Set Musicians Free - MTV

I'm always rather unconvinced by "how to fix copyright" articles, but here is an interesting contribution to the debate about sampling, proposing a compulsory licensing solution. Paradoxically (I think) the new technologies that make this a problem also hold the key to collecting micro-payments in return for use of a copyright work, so rendering collective licensing potentially redundant. And why should any licensing scheme be compulsory? That might have been the best way to strike a balance between owners and users a few years ago, but the technology now puts rights owners in charge of the use of the own rights, and if they don't want to grant licences they shouldn't have to, provided of course that they don't simply discriminate on bad grounds. Usually, I imagine, they would be happy to have the money: that after all is what motivates most people to create copyright works.

Coincidentally, this appeared in my feed reader the same day that the BBC reported (here) that a copyright infringement suit brought in Germany by [a member of] Kraftwerk, over a two-second sample of the drum part of the band's 1977 song Metall auf Metall. I never got Kraftwerk, as it happens, or any other Kraut-rock bands from that era (though I think I might find Tangerine Dream interesting if I had the time to try). But I digress. The German courts have been on Kraftwerk's side, up to and including the Bundesgerichtshof, but now apparently the Federal Constitutional Court - Bundesverfassungsgericht - has come to the conclusion that the decision could affect the defendant's (Moses Pelham's) constitutional rights, making it impossible to create music in a particular style (since when was that a constitutional right?) and has sent to case back to the BGH to reconsider.



If this is what they are complaining about, I can't identify the offending drum track: nothing original to my ears. Sounds quite pleasant - but that isn't always a good thing to say about music.



The drums sound quite original here, and nothing like on Nur Mir. I think it might become a little boring before it finishes, though. Much more interesting to listen to Steve Reich if you want Drumming.




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Council adopts trade secrets directive

The EU Council has adopted the trade secrets directive. The Council's press release is here. The Directive comes into force 20 days after publication in the Official Journal and Member States have two years in which to implement it.

It follows hot on the heels of similar legislation in the US, prompting me to think about a short comparative study of the two - but not today.

Instagram v Littergram

BBC News reports how Instagram has insisted that a UK anti-littering campaign called Littergram change its name. The UK site, and the associated app, encourages people to take photos of litter and report it to their local authority - taking advantage of the power of social media for a socially useful purpose. Unfortunately being all about photo-sharing, it trod on Instagram's toes too heavily for the comfort of Instagram's owner, Facebook, who seem to be emerging as one of the biggest bullies in cyberspace.

Why on earth should there be the slightest problem between Instagram and Littergram? What possible likelihood of confusion is there? It's a prime example of a big trade mark owner seeking to turn the limited rights granted by trade mark law into something more like copyright - or even a patent-style monopoly. Essentially their argument boils down to the proposition that they own exclusive rights in the suffix "-gram", because there's certainly no similarity between "Insta-" and "Litter-" except the number of syllables and the sound of the second one of them.

But hang on a moment - "-gram" has nothing to do with photography anyway. It refers to writing (e.g. epigram) or drawing (e.g. diagram). So what are they getting so proprietorial about? And why doesn't Littergram go for something more relevant - - "Littergraph" strikes me as rather better. Or did the founder perhaps deliberately choose to make the allusion to the better-known photo-sharing service?

Press release: Metis Partners unveils the top performers in the UK's only IP League Table

As they've kindly sent me the press release, I will pass it on:

Metis Partners is proud to present the latest update in the IP League Table. Over 30 new entrants have been added in the last four months, many of whom made it to the top 20, suggesting that some of the larger, more sophisticated and IP-rich companies now see the benefits of entering the IP League Table. The results also show that the recognition of IP on the balance sheet is one of the features linked to some of the best scoring companies, suggesting that acquired IP assets, as a result of M&A, has encouraged companies to take IP management more seriously.
Kromek Group, a County Durham based radiation detection solution provider has topped the 2016 Intellectual Property League Table (IP100). The company has over 247 patents covering medical, nuclear, and security industries. Kromek has developed an end-to-end process for the fabrication and use of cadmium zinc telluride (CZT) crystals to detect traces of radiation.
Just after Kromek was Aberdeen based COREX, a provider of specialist services primarily in the analysis of geological samples for the oil and gas industry. COREX has over 35 years’ experience in this field.
In third place is Cambridge based B2B software specialists, Metail, who design 3D modelling software for the fashion industry, allowing online retailers to provide customers with a 94-96% accurate model of their bodies to facilitate online clothes shopping.
The IP League Table, sponsored by Clydesdale and Yorkshire Banks, Murgitroyd and Jumpstart, and in association with BE Group and Metis Partners, is based upon the assessment of five IP asset classes – Brand & Reputation, Patents, Critical Databases, Software, and Trade Secrets.
The IP League Table profiles and ranks innovative companies within the UK’s private sector, highlighting those which have significantly invested in their IP in the form of IP creation, IP management policies, R&D activities and IP commercialisation. Top performing entrants are published in the IP100, an annual ranking of companies that are considered to be the most effective at commercialising their IP assets.
Stephen Robertson, director and founder of Metis Partners, the award-winning IP advisory firm, said: "IP is a vital measure of the strength and viability of a business. The IP100 is providing a barometer of the importance businesses place on IP, and can be used by lenders and investors to judge the robustness and scalability of companies they might invest in.
"Clydesdale and Yorkshire Banks, headline sponsors of the IP League Table, have long recognised the value of IP, and lend to businesses with strong IP assets. We are excited to be able to highlight the advantages that effective IP management can bring to a successful fundraising or exit.
“This was clearly put to good effect by Touch Bionics, an IP-rich Scottish business funded by Clydesdale Bank which was sold for £27.5m earlier this week. This builds on the recent exit of and fundraising of IP100 entrants SwiftKey, eeGeo and Sphere Fluidics.
“The companies taking part in the IP100 will now be able to identify areas for improvement in their IP management and to focus on maximising returns from their IP, thanks to the increase in granularity of detail in the report.
“By shining the spotlight on IP-rich SMEs, the IP League Table is providing companies with a much-needed platform to promote IP recognition, IP management and benchmarks them as IP-savvy. It has become a hotbed of innovation and has created a community where IP-rich companies can share their experiences and successes in breaking into international markets, fundraising, gaining a valuation for their IP and even securing an exit at generous multiples!”
As well as exposure and recognition, entrants of the IP League Table receive membership to the IP100 Club, an exclusive network of IP-savvy companies who lead the way in promoting a culture of innovation and IP creation within the UK. The IP100 Club consists of the top performing 100 companies of the IP League Table, IP100 Champions, sponsors and potential investors. It provides exclusive access to monthly events across the UK which provide information on how to better manage and exploit IP assets, and also give IP-rich companies a chance to network and learn from each other. These events will also give companies an opportunity to meet the Clydesdale and Yorkshire Banks, IP100 sponsors and even investors who are looking for new, innovative companies to invest in.

INDIAN TRADEMARKS REGISTRY ABANDONS PENDING APPLICATIONS – GIVES GRACE PERIOD TO REVIVE

The Controller General of Patents, Designs and Trademark of India (CG) vide its notification dated 4^th April 2016 has given an opportunity to all Applicants and authorised Agents of Trademark Applications which were recently abandoned by the Indian Trademark (TM) Registry to (re)submit their responses or make submissions (where response was not submitted earlier) by 30th April 2016.

This action will benefit the several thousand pending Trademark applicants whose applications were abandoned by the Indian Trademarks Registry due to lack of responses.

For the last several years, the Indian TM Registry had stopped sending Office Actions through the postal service. Instead, they uploaded them online on the TM Registry website. However, there were always delays and other issues in the process. It appears that due to discrepancies and mismanagement, several files and documents were misplaced and the TM Registry could not locate the filed responses which apparently caused a chaos at the Registry. However, instead of attempting to trace the missing documents, the Registry took the decision to simply abandon all applications where the Office Actions were issued (on/off line) and the TM Registry could not trace the responses submitted.

After much ado, the TM Registry has granted a grace period of 3 weeks (until 30th April 2016) allowing all applicants who had filed their responses to re-send copies of their responses. The same grace period also applies to those who did not submit responses because they did not receive the Office Action even though it was uploaded / sent through post. All applications that do not receive responses by 30th April 2016 shall be treated as abandoned.

On the one hand, the move to abandon the applications has been criticised widely as a sign of the Registry not holding itself accountable. On the other, it is also seen as a smart move to clear off the overload that is sometimes caused by non-serious applications.

If you or any of your clients have filed any trademark application in India, you may wish to check the status with your concerned Attorney. If it has been “abandoned”, you still have time till 30^th April 2016 to take remedial action and submit a response.

If you are a Fox Mandal client, be assured that we are checking the status of your applications and shall be reaching out to the TM Registry to take necessary actions. Also, if your application has been examined, you must send your instruction to file a response immediately so a suitable response can be drafted and filed on or before 30th April 2016.

PS: As per the latest news, as a result of several writ petitions being filed before different High Courts, on 5^th April 2016, the Delhi High Court vide its Interim order has stayed the order of CG. We await the final order and shall keep you informed. 

AP Racing Prevails in Brake Technology Patent Case

From a press release issued for AP:

In a landmark legal case, AP Racing has been awarded £570,660 in damages, costs and interest following a ruling that Alcon Components Limited infringed the company's patent protecting the innovative Radi-CAL™ concept for motorsport brake calipers.

As the highest ever level of damages awarded in the Intellectual Property Enterprise Court, the case centred around a range of brake calipers introduced and patented in 2007. This Radi-CAL™ design made a major innovative step forward in brake caliper technology within the motorsport industry, and was used by teams in Formula 3, NASCAR® and subsequently Formula 1®. However, rival Alcon Components introduced a similar design in 2009.

As one of the world's leaders in brake technology, AP Racing has a history of design and innovation that dates back to the 1960s, and the company believes the ruling underlines the value of investment in research and development. AP Racing will always look to protect its intellectual property against infringement by competitors, using the support of the courts if necessary.

Following an initial trial in 2012, and a subsequent hearing in the Court of Appeal in 2013, a ruling was made in January 2014 confirming that the patent was valid and infringed, allowing the UK based company to pursue financial compensation and stop Alcon manufacturing more of the calipers.

Commenting on the award AP Racing managing director, Charles Bolton, said: 'Innovation is vital for the development of new technology, and patent infringement is always an uncompetitive answer. The Court's decision sends a clear message to the industry that the courts will not tolerate intellectual property infringement. AP Racing will always act to protect its intellectual property rights around the world, in order to safeguard our research and development work going forward'. 

Offering less mass, improved rigidity and better cooling characteristics than conventional brake caliper designs, the Radi-CAL™ concept represented a major innovation in braking technology when it was introduced. The patented design was first developed by AP Racing in 2007, since then the company has produced over 80 different Radi-CAL™ caliper designs. AP Racing continues to refine the design, and the concept is protected by patents across Europe and in numerous other countries including the USA, China and Japan.

The History of Patent Annuities

Who'd have thought patent annuities could be so interesting? I was fascinated when my old friend and running companion James Olcott launched a blog telling a weekly story about his father, Bernard. Readers of this blog will of course have little or no interest in Bernard's many marriages, the family history, the Third Avenue El or many of the other matters with which James has regaled readers - well, actually, you will be interested in all those things, but as we are approaching this from the intellectual property side they should be put to one side ... and you should read about patent annuities. Having met Bernard, who died a few years ago, I have been reading avidly and waiting eagerly for the new week's instalment (which appears on Thursday evenings UK time).

James has been extremely informative about New York in the fifties and sixties, long before I visited the place, and he's made me realise how much has changed in the world during my lifetime. Anyone with an interest in the patents field will also learn (from some of the postings) how much has changed in the past 50 or 60 years. Bernard was a serious inventor, and it was his technical background that brought him (via evening classes) to the law, to patent practice, to computers and thence to automating the payment of patent annuities. Intellectual property aficionados will enjoy reading about his discussions with Marks & Clerk, which led not to collaboration but to the creation of CPA with which Olcott International remains in competition (or vice versa), and other reminiscences about the patent world of years ago. When I teach students, or train lawyers, about intellectual property, I constantly remind myself that newcomers to the subject are picking it up as it is: I feel a duty to ensure that they understand also what it used to be like, so they can understand how it came to be what it is now - and, I hope, to recognise not only those respects in which it is superior but also those respects in which it used to be better. James's work also serves to maintain that important perspective.

There's more to write about this subject - but it's for a different blog, I think ... let's try to keep this one for intellectual property.

NIPC Inventors Club: Joy

My good friend Jane Lambert has written an excellent review of the film, Joy, about the trials and tribulations of an inventor trying to get her idea to market, on her NIPC Inventors Club blog. Go and read it, then go to see the movie!

What Could Have Entered the Public Domain on January 1, 2016?

What Could Have Entered the Public Domain on January 1, 2016?  asks the Electronic Frontier Foundation, in a piece designed to highlight the harmful effects of the extension of U.S. copyright protection from 56 years to life-plus-70 which happened as recently as 1978, the year in which I passed my Law Society Part II exams (well, most of them in the August of that year, after one attempt which was a complete failure in the February). That was when the 1976 Act came into operation, finally bringing the U.S. into the Berne Convention family.

My eye was caught by the reference to one of my favourite records,  Kind of Blue, recorded in 1959, so copyright would have expired this year if the old rules had still applied. Extending the copyright term is always contentious, and it seems to be accepted that it has to be back-dated so that existing works get the benefit of the longer protection, notwithstanding that the generally-accepted justification for copyright (that it encourages copyright owners to create more) is hardly served by increasing protection for things that have already been created, indicating that there was already sufficient incentive at the time; and in some cases the author, being dead, is in no position to respond to a new incentive anyway.

The EFF article doesn't make it absolutely clear whether it refers to copyright in the music or the phonogram. It seems to be more about the music, but copyright in the recording is also important, certainly in our copyright law - and, intriguingly, there's a very close relationship between the two, because Kind of Blue is a sustained piece of improvisation, so the sound recording in a sense is the musical work.

Here, the Copyright Act 1956 would have given the recording protection for 50 years from release, so it would have expired at the end of 2009. The music, notwithstanding its improvisatory nature, would have been protected for the life of the composer plus fifty years, a much longer term already than that provided for in U.S. copyright law. According to the sleeve notes, all the pieces on the album were written by Miles Davis, except two attributed to Miles (died 1991) and Bill Evans (died 1980), so even before the idiotic extension of copyright protection in the mid-90s copyright in the music would have run until 2041 and will now run for 20 years longer. The EFF's point, that if you wanted to use a Davis piece in a film you'd have been free to do it in the U.S. had it not been for the 1976 Act, never had legs in the U.K. (But if you want to use it that way, what's wrong in principle with paying for it?)

As for copyright in the phonogram, that would have expired 50 years after the end of the year of release - 2009. That's just a little too early to have been caught up in the ludicrous Cliff's Law extension of copyright in sound recordings, and clearly too late to give Miles any incentive to get his trumpet out again.

None of this, however, has stopped it from being available on YouTube.

SOLO IP for sole and small IP practices: A tribute to Jeremy Phillips by Peter Groves

SOLO IP for sole and small IP practices: A tribute to Jeremy Phillips by Peter Groves: On Wednesday 25th, I had the honour of speaking at Jeremy’s penultimate event before his retirement, the annual IP editors and publishers lu...

Is this the worst brand name in the world? - BBC News

Is this the worst brand name in the world?  asks the BBC in a piece by Justin Rowlett whom I dealt with many years ago over a Panorama programme about price fixing in the motor trade in which I appeared. The piece highlights the lack of portability of some trade marks (I think it's the wrong use of the word "brand", actually). Nothing new, except that the example he starts with is a new one, and one of the most egregious ones I can remember seeing. I used to have a book full of such disasters, a freebie from an INTA annual meeting, but I lent it to a client many years ago and never got it back - nor did I get anything else from the client, for that matter.

Press release: Intellectual property assets of Matchchat are for sale

I receive occasional press releases on IP topics, and usually I ignore them because they don't strike me as being what people come to my blog to see. Indeed, often they aren't the sort of thing that I want people to come to my blog for. However, this one seemed more potentially relevant to readers, and as cutting and pasting is not hard work I thought I'd share it - and I have a couple of clients who might find it interesting too.

The intellectual property assets of Matchchat, a company specialising in fan engagement, are for sale from Metis Partners, an award-winning, commercial intellectual property consulting firm.

Matchchat is a leading fan engagement solution provider that has been developing and offering a suite of software tools relating to user interaction and native advertising. It has achieved around 2 million page views a day and 50-60 million impressions per month at its peak. With around 30,000 registered users, Matchchat has successfully established a loyal following amongst sports fans.

Originally established as a fan engagement platform, Matchchat’s five products enable fans to read and comment on web content about their favourite sports teams, as well as vote on sports-related polls. The Company has expanded into the native advertising market segment by launching its Now Native brand.

Matchchat’s products have made the experience of serving an online ad much more technically reliable, improved the ease of navigation as well as the overall user experience and increased the time users spend on webpages. High-quality source code has helped to create a seamless experience for the user, and it has been developed in an incredibly efficient manner.

Assets linked to Matchchat include software source code and intelligent recommendation algorithm, goodwill in the brand and reputation, databases and data, branded domain names and website content and organisational knowledge including a codebase wiki guide.

Nat Baldwin, Head of Brokerage Services at Metis Partners, said: “This is a unique opportunity to purchase the IP assets behind Matchchat’s exciting fan engagement software, which have already attracted considerable interest. Matchchat’s IP assets present an attractive commercialisation opportunity for a potential purchaser.

We believe that Matchchat’s IP assets are likely to hold appeal for companies involved in media, sport, entertainment, social media, software development, e-commerce and advertising and marketing industries.”

All offers, notes of interest and /or requests for further information should be directed to Morven Fraser of Metis Partners by Thursday 22nd October at noon, morven@metispartners.com or on 0141 353 3011. Website: www.metispartners.com.

The sale of Matchchat’s IP assets reinforces Metis Partners’ position as a vendor of IP assets from leading software and technology companies. Metis Partners has had recent success selling IP assets from a range of widely-recognised social media, software and app businesses, including the IP assets of businesses such as Polaroid Blipfoto, Weeworld and Blinkbox Music.

NIPC Law: Cross Border Litigation: Tech 21 UK Ltd v Logitec...

 Another instance of shameless reblogging, or not re-inventing the wheel. When it's been done so well already, why do it again? A very interesting case on jurisdiction in the designs field. NIPC Law: Cross Border Litigation: Tech 21 UK Ltd v Logitec...: Logitech Europe SA is a Swiss company which makes a protective case for iPads called "Big Bang" . This YouTu...

Glenn Gould and the case for moral rights in sound recordings

Shamelessly linking to the IPKat, but it's such a good piece you need to know about it: Glenn Gould and the case for moral rights in sound recordings
http://ipkitten.blogspot.com/2015/10/glenn-gould-and-case-for-moral-rights.html

 -- via my feedly.com reader

Alloy wheels

Bayerische Motoren Werke Aktiengesellschaft (BMW) v Round And Metal Ltd [2012] EWHC 2099 (Pat) (27 July 2012)  is old hat but I haven't given it the attention it merits. In that case, Arnold J held that Article 110 (1) of the Community designs regulation (the freeze-plus compromise) should be interpreted as being restricted to component parts which are dependent on the appearance of the complex product - which wheels aren't. Nothing very startling there, and indeed the whole thing smacks of desperation on the part of the car maker - a class of rights-owner notorious for protecting their intellectual property to the utmost, for which of course they cannot be blamed as otherwise shareholders would ask awkward question.

The provision in question says:

Article 110

Transitional provision

1. Until such time as amendments to this Regulation enter into force on a proposal from the Commission on this subject, protection as a Community design shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance.

RCDs are colour-blind (and quite right too)

A recent case in The Netherlands shows an important difference between trade mark practice and registered designs. Controversially, OHIM treats black-and-white trade marks as just that (whereas most practitioners used to believe that a registration in black-and-white covered all colours), but a registered Community design presented in black-and-white protects the owner against use of the design in any colour: Case T-68/10 Sphere Time v OHIM, para 82 (General Court), followed on 2 September by the District Court in The Hague in Wibit-Sports GmbH v Aquaparx (thanks to the Class 99 blog for the information). That seems hardly surprising, and is only really noteworthy because of the stupid rule about trade marks. It's another matter if colour is important for the novelty or individual character of the design (in other words, it's a feature of the design that the owner wants to protect), and if the design is filed in colour it is right to assume that the colour is important and to limit protection accordingly, in line with 'traditional' trade mark practice. But if the registered design protects the shape of the product (which traditionally is what design protection has done, of course) the colour used by the infringer should make no difference. Actually, an infringer trying to use this as a defence is grasping at straws, rather like a design owner who claims that unregistered Community design right has been infringed ....
This remains, however, a topical issue with the Trunki appeal on its way to the Supreme Court. There, the Court of Appeal took the view that the striking colour combination which was shown in the RCD was significant, and not present in the accused products. If only they had filed in B&W. But the Court of Justice's decision in the KitKat case (a trade marks case, though a shape trade mark and therefore right on the boundary of the designs field) tells us that features of a product may only be protected by trade mark registration if they are used by the consumer, to the exclusion of other indicia, as an indication of origin, which strikes me as being on all fours with the Trunki design case. However, I am perhaps digressing a little, and the KitKat case is exciting enough to merit separate consideration.

TTIP: more US market access, reform investment protection, retain EU standards

TTIP: more US market access, reform investment protection, retain EU standards: "An EU-US trade deal should deepen EU access to the US market, but must not undermine EU standards or the right to regulate in the public interest, say Trade Committee MEPs in draft recommendations voted on Thursday. Tools for resolving disputes between investors and states should be reformed and improved, they add."



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Copylaw: Publishing & Entertainment Law: Making Sense of Collaboration Agreements

My good friend Lloyd J. Jassin has written an interesting piece entitled "Making Sense of Collaboration Agreements: Double the Trouble or Half the Work?" on his Copylaw Publishing & Entertainment Law blog. Here's the first para and you can go to Lloyd's blog to read the rest:

Nearly everyone has heard the oft-repeated statistic that 50% of all marriages end in divorce. But what about creative marriages?  The odds are no better. Pity the poor expert, celebrity, author, playwright or screenwriter who enters into a creative partnership without thinking about the financial, emotional and practical challenges ahead of them.  If the relationship falters, a well-drafted collaboration agreement (written during the romance stage of the relationship) can be consulted.   If the relationship fails, that agreement will help for a clean break-up.

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Why India is not inventing

An interesting piece about innovation in India, by my great friend Santosh Vikram Singh of Fox Mandal in Bangalore. He writes: "Recently, while speaking at the convocation ceremony at Indian Institute of Science, (IISc) Bangalore, unarguably one of India’s most prestigious institutions, Mr. N.R. Narayana Murthy, Chairman Emeritus, Infosys, touched upon something that made many people uncomfortable. He asked if India’s premier academic institutions (specifically the IISc and IITs) had contributed in making our society and the world a better place? He did not shy away from asking directly if there was one invention from India that had become a household name across the globe" Read the rest here.



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NIPC Law: Copyright in Commissioned Works: Atelier Eighty Two Ltd v Kilnworx Climbing Centre CIC and Others

Jane Lambert has written at some length about Atelier Eighty Two Ltd v Kilnworx Climbing Centre CIC and Others, in which the ownership of copyright in commissioned works is explored. No point in me repeating it.



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History lesson: Design protection in motor racing

An assignment I am busy with at the moment has reminded me of the 1978 case, Nichols Advanced Vehicle Systems, Inc. v Rees, Oliver and others [1979] RPC 127 (Chancery Division, Templeman J as he then was), on appeal [1985] RPC 445. (As the dates indicate, the appeal concerned various delays that had taken place in the proceedings.) It could alternatively be called Shadow v Arrows. Several disgruntled employees, and their financial backer Franco Ambrosio, left Shadow (whose debut in Formula 1 I remember, though I can't put a precise date on it from memory - in the early seventies - 1973, it turns out) and set up their own team, making up the name from the initials of their surnames, including that of their financial backer (Ambrosio, Rees, Oliver, Wass and Southgate completing the set. Alan Rees had been one of the founders of March a decade earlier, and that company also formed its name from the initials of its founders, the "M" being Max Mosley, but no intellectual property point arises from that coincidence). Unfortunately, they made up the design of their first car, the FA1, from the design of the Arrows DN9, and intellectual property points did arise from that.

I was delighted to see (not having appreciated it before) that the trial judge was Templeman J. A few years later, "Syd Vicious" was one of the Lords of Appeal who dealt BL a major blow in their litigation with Armstrong Patents Ltd - knocking a huge hole in copyright protection for designs, and paving the way for the New Deal in the Copyright, Designs and Patents Act 1988, the introduction of design right (now necessarily referred to as UK unregistered design right) and the near-exclusion of copyright from the designs field. But the reasons that drove the BL judgment, about spare parts, were not relevant to the Shadow case: there was no issue about the spare parts market.

The DN9 had been designed by Tony Southgate, who had been BRM's designer in their golden period between 1970 and 1972. The BRM P160, designed by him, held the distinction for 30 years of winning the fastest Grand Prix ever (Italy, 1971, driven by Peter Gethin, still the closest-ever finish) and exactly the same car (chassis no 1) also won the following year's Monaco Grand Prix, driven by Jean-Pierre Beltoise, who died last January. That remains, I think, the third-slowest grand prix since the advent of the World Championship in 1950, save for recent rain-delayed races where waiting for the rain to stop destroys the average speed. In 1972 the rain didn't delay the start, only the finish ...

When Mr Southgate designed the Arrows FA1, he reproduced the drawings he had made for the DN9 and the judge held (in what must have been a fairly easy case to decide) that the differences between the designs were insufficient to provide a defence. The defendants argued that they were innocent infringers, and should not be liable to damages, but the judge observed that to sustain this argument they had to believe that they were not infringing, and in fact they only hoped that they weren't. Actually, because of the flagrancy of the infringement, he awarded additional damages, as well as an inquiry as to damages and an injunction which effectively obliged Arrows to produce a new car. Fortunately for them, they had foreseen the outcome of the case and designed and built a complete new car in 53 days, launching it only three days after the judgment, so didn't even miss a race. I suppose that back in the bad old days of Cosworth-Hewland kitcars that was possible, but still impressive.

Several years later, the inquiry as to damages having proceeded at a very leisurely pace (partly, no doubt, because Shadow had folded in the meantime), the matter came to the Court of Appeal: but that's another story, and not one that involves intellectual property.

Change to transitional arrangements for the repeal of section 52

A news story on GOV.UK tells us that the statutory instrument to implement the repeal of section 52 - that's the section of the Copyright, Designs and Patents Act 1988 which shortens certain aspects of copyright protection when the work is applied industrially - has itself been repealed. It's only a few days since I posted a comment about the extended timescale for the repeal to come into operation (April 2020), remarking that it even allowed time for the repeal to be repealed. I doubt this has come about because someone read this blog. In fact, the official reason is that judicial review proceedings were being threatened, challenging the compatibility of the regulations with EU law, which of course is where this whole sorry episode started (with the copyright term directive and the perceived significance of the Arco lamps case, Case C-169/08 Flos v Semeraro).



Sadly, this doesn't mean that the government has seen sense. The website goes on to say:

The Government will launch a fresh consultation on revised transitional arrangements, including the date for implementing the repeal. A further announcement will be made when the new consultation is published.

I'll keep an eye open for it ... Pity if we don't the promised judicial review: that would have been much more interesting.



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Creative Commons for Patents

Creative Commons is usually associated - perhaps always associated - with copyright. But it goes further than that: I just happened across this Model Patent License, the title of which gives away its American origins although that's not a fatal flaw by any means. I thought readers might find the link useful, and so might I one day. I was tempted to include it in the IP module I am working on for the College of Law's Legal Practice Course, but it might be a bit left-field for that purpose.



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Remedies for infringements of Standards-Essential Patents

In a nicely-balanced judgment in Case C‑170/13, Huawei Technologies Co. Ltd v ZTE Corp. and ZTE Deutschland GmbH (judgment here) (16 July) the Court of Justice held that the holder of a Standards-Essential Patent (or SEP, a term of art that is gaining currency very rapidly in this SEP-reliant age) can only have an injunction against an infringer if it has previously offered a licence on FRAND (a better-established term of art) terms. If the patentee has given an irrevocable undertaking to grant such a licence, it is not an abuse of a dominant position to seek an injunction and that would be prohibited by Article 102 TFEU, but the patentee has to get over a few hurdles before it is in the clear, to make sure that the right balance is struck between the interests of the patent owner and the would-be user.

First, the patentee has to alert the alleged infringer to the alleged infringement, and then it has to present a FRAND licensing proposal. If the alleged infringer carries on regardless, it will not be regarded (in the court's phrase) as having responded diligently to the proposal. It can only claim that there is an abuse of the patentee's dominant position if it has responded with a counter-proposal, offering FRAND terms (or, you might say, terms which are more FRAND, or FRANDER - there's a nice neoligism) of its own - because, of course, the only matter that can be in dispute is whether the purported FRAND terms qualify as such. Although that makes it sound far easier than it is: FRAND is not a binary, yes-or-no, matter - a wide range of terms might fall within the scope of what is fair, reasonable and non-discriminatory.

The court's approach, within its limits, nevertheless makes perfect sense: if your patent becomes the basis for a standard that everyone has to use, you have to accept that it is no longer a right to stop others from using it, merely a right to remuneration (which may be substantial). Everywhere in the IP field you can observe this shift from exclusive rights to a right to be paid for use: it happened in copyright even before the 1988 Act, when collective licensing suddenly took off with the creation of the CLA, and it was built into design right under Part III of the 1988 Act right from the start.

However, like all references to the Court of Justice, it leaves questions unanswered (usually because the questions weren't posed in the first place, which in turn is usually because they didn't arise in the case concerned so the referring national court had no reason to ask them). Can (as Laëtitia Bénard of Allen and Overy in Paris said to WIPR, that astonishingly inaccurate publication mis-spelling her surname) an injunction be blocked merely because the alleged infringer challenges the FRAND-ness (my word, not Ms Bénard's) of the offer? Will holding an SEP always place the patentee in a dominant position (a point made to WIPR by Axel Walz of King and Wood Mallesons, Munich)? How detailed does that "irrevocable undertaking" have to be (my own thought)? Given the growing frequency with which patents are already becoming standard-essential, which is likely to accelerate rapidly in the future, these are probably questions that we will see coming up before very long.

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Private copying regulations quashed

Back to the unfamiliar territory of the Administrative Court, where last month the regulations that made private copying of certain works (those of which the copier had lawfully acquired a copy) were unlawful. Now in British Academy of Songwriters, Composers and Authors Musicians' Union & Ors, R (on the application of) v Secretary of State for Business, Innovation and Skills & Anor [2015] EWHC 2041 (Admin) (17 July 2015) the same court has quashed the regulations, having left open after the first judgment what would be done.



Copies made since the permitted act was created in October last year will not become automatically unlawful, though it seems that any action brought in respect of such copies may proceed on the basis that they were not authorised. There will be no expedition to Luxembourg at the this stage. The government will presumably now try to work out how to pass legislation that will hold water - it will need to define what it means by de minimis, for one thing. Policy-based evidence-making won't cut it, and a good thing too.



Meanwhile, the record industry (which is the area principally affected by all of this) will continue not to take action for infringement when users "format shift" recordings. They have taken this view, as I understand it, for several years, which makes it odd to my mind that the government should have wasted time on legislation in the first place. Keep it as a threat, by all means, so that the industry is not tempted to rescind that concession, but surely that is enough.



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Rounding conventions: what is the value of 1?

Smith & Nephew Plc v Convatec Technologies Inc [2015] EWCA Civ 607 (24 June 2015) is a patent case which turns on how to read a numerical range. The patent related to wound dressings in which silver - a known antimicrobial agent - was applied to the fibres. To prevent discolouration, the patent specified the use of a binding agent, at a concentration between 1 per cent and 25 per cent.

The trial judge, Birss J, interpreted this (using the conventions that I thought I had remembered from school maths lessons) to mean between 0.95 per cent and 25.5 per cent. But the Court of Appeal knew better (or at least they picked up on the argument).

Of course, like all interpretations of patent claims, the right approach is that set out in the Protocol on Interpretation of Article 69 - which requires us to consider what the person skilled in the art would think the claim was intended to mean.

It came down to whether the right approach was a "whole number" approach or a significant figure approach. The whole number approach would say that 1 per cent means all figures greater than or equal to 0.5 per cent and less than 1.5 per cent - or to put it another way, all values that round to 1 per cent when expressed in a whole number. The significant figure approach was explained by Kitchin LJ, who started by noting that the rules formed part of the common general knowledge: 

i) non-zero digits are always significant;
ii) zeros between non-zero digits are always significant;
iii) leading zeros are never significant; if a decimal point appears in a number then trailing zeros are significant (before or after the decimal point);
iv) in the absence of a decimal point, trailing zeros are not generally significant unless stated otherwise either expressly or with a bar over the zero.

Applying these rules, 1 per cent indicates a range from 0.95 per cent to 1.5 per cent. It is asymmetric because the values that round to 1 must comprise two significant figures: if there's only one significant figure, you can't round it up or down. This is how Birss J got to the conclusion that the defendants' 0.77 per cent concentration did not infringe. He reckoned that the skilled person would use the significant figures approach. The Court of Appeal preferred to think that the skilled person would assume that the values were expressed to the nearest whole number, so there was an infringement.

Why, oh why, didn't the person who drafted the claims (and the description, of course, as it has to support the claims) either write "up to 25 per cent" or "1.0 to 25 per cent" (especially when the teaching of the patent was that as little as 0.01 per cent would do the trick)? I'm sure they had their reasons, just as the patent agent who wrote the Catnic patents had his reasons for writing "vertical" (or was it "vertically"?). However, in neither case are the reasons known, while in both of them the effect was significant, indeed determinative, in the patentee's favour in both cases, though only just in the earlier one. Cases like these cause me to reflect on the received wisdom about patent claims, that they are technical documents written for technical people and not suited to the sort of legal scrutiny that a conveyance should get (I forget the precise quote). But in fact they are complicated legal documents (often incredibly so) written by highly-trained professional patent agents (soi disant attorneys, indeed) and to my mind that means that meticulous verbal analysis (there, I remembered the words!) is entirely appropriate. And the Protocol is wrong!



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TVR Automotive v OHMI - TVR Italia (TVR ITALIA) (Judgment) [2015] EUECJ T-398/13 (15 July 2015)

In TVR Automotive v OHMI - TVR Italia (TVR ITALIA) (Judgment) [2015] EUECJ T-398/13 (15 July 2015) the General Court held that the OHIM Board of Appeal had been wrong to conclude that there was no genuine use of the TVR trade mark at the material time (February 2007) when the application in suit was filed by the applicant, an Italian company claiming somehow (and very optimistically) to be the successor to the business of the then-defunct British sports car manufacturer. Its trade mark comprised a TVR logo (in familiar form) with the word "Italia" appended in smaller letters.


The true successor to TVR's business opposed the application, and the Italian company demanded evidence of use. The opposition was rejected in relation to the goods for which use had been shown - which was not all the goods in the application, but it was the important ones. The Italian company appealed, and then filed for revocation. The appeal was stayed while that was sorted out. The Cancellation Division rejected the application for revocation on the grounds that genuine use had been shown, and the Italian company appealed against that, but out of time so the opposition proceedings then went ahead: the appeal was upheld, on the basis that genuine use from 28 January 2003 to 27 January 2008 had not been proved.


The case was based on the non-use of the TVR trade mark, although there appears to be no allegation that such non-use had lasted for five years: and in any case one of the trade marks involved had not even been registered for five years at the time. It received short shrift from the Court, which took a rather different view of what constitutes "genuine use" in relation to specialised, low-volume motor cars, making me wonder how the case ever got to Luxembourg in the first place.


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Repeal of Section 52 CDPA

The misguided repeal of section 52, a paradigm case of policy-based evidence-making, now has a date (and has done for several months, but I only just got round to telling you): happily, it's not until 6 April 2020, which even leaves time to repeal the repeal, if the government ever sees sense.

The soi-disant Intellectual Property Office has published the results of the consultation here.

Transitional provisions, should the need arise, will protect those who have made copies taking advantage of the permitted act. The implementing legislation, when it comes, will give them an indefinite period of time after commencement in which to sell off existing copies, but prevent the manufacture or importation of new unlicensed copies. The legislation will leave people free to deal with existing copies after commencement. Sounds to me as if the first and the third cover similar territory, and the second is what the repeal is all about so hardly needs to be said.

So there will be protection for what I recall were referred to as vested rights back when the duration of copyright was increased, in the mid-nineties. It doesn't sound as if a date is going to be set from which you won't be able to stockpile what would be infringing copies if made or imported after the repeal - does this mean that one will be able to accumulate shedsfull of ersatz Arco lamps right up to the commencement date, and remain free to dispose of them thereafter? If so, it sounds like a daft arrangement. I will have to read more ...



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Implied covenants in assignments of intellectual property

For reasons too complicated to mention here, I found myself thinking about the implied covenants in assignments, covenants invoked by the magic words 'full title guarantee' or sometimes 'limited title guarantee'. The Law of Property (Miscellaneous Provisions) Act 1994 explains (at some length) what these ritual incantations mean in practice. I won't bore you with it all here, but I will post this link to the legislation for the benefit of anyone (like me) who needs to find it.

Guest post: .sucks me not: Why organisations & celebrities are afraid of this domain!

During a recent trip to San Diego for one of the world’s biggest IP conferences, I, alongside of over 10k IP lawyers from over 100 countries, came across a newly launched gTLD (generic top level domain) named .sucks. The unique launch campaign which involved mainly students who stood around the city holding banners with just .sucks written on it and giving away condoms in nicely wrapped packets with .sucks printed on the wrapper. Mobile signage vans making the rounds across the city captured people’s attention and the curiosity grew because all the signage said was .sucks.

What is .sucks?
.sucks is a new domain name launched by a Cayman Islands based entity called Vox Populi Registry Ltd., which is a subsidiary of Ottawa based Momentous Inc. In 2014, Vox reportedly paid over US$ 3 million to ICANN for the rights to manage the .sucks domain.

Why .sucks?
As per John Berard, Founder-Vox Populi; the .sucks domain is a platform for legitimate critical commentary, which is definitely not being considered true by others. In fact, in a recent statement, California Republican Darrell Issa termed it as “legalized extortion”.

Why the fear?
In today’s socially connected Internet era, bashing of brands (entities or individuals) is becoming more common and trust me, just like any of us, no one likes criticism of any kind. Therefore, entities and celebrities too find it hard to take the criticism that is hurled at them (even if it is a constructive one). A common practice by most of the entities is to troll social media platforms and other web sites to keep a tab on the criticism and handle it in a best possible manner. Since it is almost impossible to keep a track of all the social media sites to handle criticism, time and again it has gone out of control and ended up damaging brands and personal images mainly due to lack of a timely response or mishandling of the same.

With the launch of the .sucks domain, the public and media (including customers and potential customers) will get a specific platform to post their experiences, concerns, opinions and sometime vent out their anger (of course). However, the scary part of this solution would be that someone, other than you (the brand owner), owning that specific platform (www.yourbrand.sucks), would leave you with virtually no control over it!

The pricing controversy
Generally, a new domain is launched through a sunrise period before it is opened to the general public. In this case, Vox fixed the sunrise period price at $2499 which was considered exorbitantly high. The sunrise period was extended by a couple of months which added more fuel to the fire which finally ended on 19th June 2015.

From 21st June 2015 onwards this domain is open for regular registrations with reduced price, however, it is still considered to be high by many, as Vox has created various categories such as “Premium” and “General” under which the “big names” are still selling at the price of $2499.

Role of ICANN (Internet Corporation for Assigned Names and Numbers) and Slip ups
As you all would know, ICANN is the only authority in the world controlling the domain names. It has launched over 400 new domain extensions such as .CEO, .consulting, .social, .menu, .tech etc. in past year or so. However, the .sucks was the only domain which got more attention and criticism across the world for various reasons. Faced with mounting criticism and controversy, ICANN made failed attempts appealing to the U.S. Federal Trade Commission (FTC) and Canada’s Office of Consumer Affairs (OCA) seeking review of the legality of the .sucks domain extension1.

ICANN seems to have made a statement to the effect that it approved the .sucks domain because no one objected to it. The statement goes on to say that ICANN lacks the authority to block the domain or control its pricing.

What are big organisations and celebrities doing?
As of now, several large and well-known organisations like Google, Amazon, Microsoft, Yahoo, eBay, WhatsApp, have registered different variants of the .sucks domain. Similarly, many celebrities such as Taylor Swift, Justin Bieber, Oprah Winfrey, Rihanna, Mark Zuckerberg, Hillary Clinton etc. have registered their own .sucks domains. However, there are still many organisations (such as Twitter, LinkedIn and Indian biggies like Infosys and Wipro) that have apparently not yet taken any action against the potential threats of .sucks domain2.

What should you do?
If you are an organisation of repute or a celebrity and worried about uncontrolled criticism, you must consider registering .sucks domain. Even if you do not wish to have a website with the .sucks domain, Vox provides an option of blocking the domain so no one else can do it. This option actually costs about 25% less!

How to go about it?
If you are lucky or if your brand/name was not considered valuable enough by others, you may check the availability of your .sucks domain at https://www.registry.sucks/ and register or block it.

The domains have been classified as standard, premium, market premium etc., some of which are:

Standard: It includes names that don’t fall under premium or market premium categories and are available on first come first served basis. Registration and annual renewal cost is currently $ 249.

Premium: Vox has created a list of names which it thinks has a high market value. These premium names such as LinkedIn, Twitter, Infosys, Wipro are priced at a much higher cost i.e. $ 2499.

Conclusion
Amidst the raging .sucks controversy, it is expected to gain momentum going forward and drag many entities and celebrities into it. Where a handful of organisations have been proactive in registering this domain as a defensive step, others are either not aware of it or do not consider it to be a potential threat.

In my personal view, it is just a matter of time before disputes over the .sucks domain start, as cyber squatters are out there to make a quick buck and create trouble for valuable brands. In light of the above and without questioning ICANN’s authority or pre-empting what would be the future of this domain, it is recommended that you buy or block the .sucks domain, subject to your brand having market value and also if you believe that someone else might misuse it, if left unregistered. You may also consider blocking/buying it (of course, subject to availability), to avoid paying cyber squatters a hefty price and to give you the option to use this domain in the future if you so wish.

1: https://www.wxnetwork.com/the-controversial-sucks-domain-and-how-to-protect-your-brand/

2: http://marketingland.com/big-brands-sports-teams-celebrities-tech-companies-among-3400-early-sucks-domain-registrants-133621

3: https://www.registry.sucks/products

Charles Dickens and copyright

Authors’ Licensing and Collecting Society has published an interesting article on Charles Dickens's copyright campaigns by my Society of Authors management Committee colleague Lucinda Hawksley who happens to be the novelist's great great great granddaughter, and a patron of the Dickens Museum where there is currently an exhibition devoted to the subject. I have long intended to go to the museum, so perhaps with this incentive I will achieve this aim - as I failed to do recently when the RAF Museum had an exhibition of Biggles-related paintings. Although as I can find no mention of any such exhibition on the website, perhaps I am already too late. Curiously, one of the few references to copyright is to the Museum's archive of images, which they claim is "the world's most extensive copyrighted range of images connected with the author." The term of protection has increased since his lifetime, but not that much.



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The Ukulele Orchestra of Great Britain v Clausen & Anor (t/a the United Kingdom Ukulele Orchestra) [2015] EWHC 1772 (IPEC) (02 July 2015)

According to BBC News, the Ukelele Orchestra of Great Britain has won in court against the UK Ukelele Orchestra, a German band albeit composed of British uklelists. The judgment is on BAILII: The Ukulele Orchestra of Great Britain v Clausen & Anor (t/a the United Kingdom Ukulele Orchestra) [2015] EWHC 1772 (IPEC) (02 July 2015). It's a trade mark infringement (the claimants, a partnership albeit only of two people, not much of an orchestra, have a CTM), passing off and copyright infringement case. The case illustrates the importance of the action for passing off even given the breadth of protection given to a registered trade mark under the modern law, because the validity of the CTM was successfully challenged and therefore the infringement claim never got off the ground (which might be the reason for the confused report on the BBC website). The claim for copyright infringement also failed, but it was a slightly optimistic-looking claim relating to dramatic works. The passing-off claim, however, succeeded, as it should.

Coincidentally, the same court declared a CTM invalid in The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC), on 29 June 2015, on the basis that the trade mark had not been used in more than a single EU member state. And again, the claimant succeeded on passing off.

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The 1709 Blog: When claimants stand up for copyright, defendants can get sent down

The 1709 Blog: When claimants stand up for copyright, defendants can get sent down: the sad story of a Mr Fletcher, who (reminding me of his namesake in the Ronnie Barker TV show, Porridge) ended up being sentenced to 28 days' imprisonment, suspended for a year, after displaying considerable reluctance to pay for the music he played in his nightclub. PPL, the relevant licensing body, seems to have been fairly generous in allowing him time to pay, but the summary of the case (which is only available to Lawtel subscribers, being an ex tempore judgment by Arnold J) shows that he allowed ever opportunity to slip through his fingers.



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