Intellectual property insurance

Intellectual property insurance is a topic that fascinates me, one that we don't hear or read enough about. Jane Lambert is one of the few people talking or writing about it, and she posted this very interesting piece on one of her blogs the other day. I'll come back to the subject sometime but I am pleased to be able to provide a link to this for the time being.

The right to own DVDs

A report on bizlawcentral.com picks up on an article in the Malaysian paper, The Star, about penalties for having illegal DVDs, even for private use. That sliding feeling again ...
Pirate copies of publicly-available films on DVD are clearly wrong. It must be unlawful to copy a DVD version of the film, to record it off-air (except for whatever limited purposes the law might allow, as our copyright law does for time-shifting - which sounds as if it might be related to what Phaedrus experienced ...) or to use a camera to grab a copy in the cinema. On holiday in Spain in recent years, I have noticed that the DVDs available to rent (within the expat English community at least) are all copies, and I suspect I might find something similar in England if I ventured into the right part of the underworld - but I have little interest in watching the latest from Hollywood, anyway.
What about when the film is not available? That seems to be the argument in Malaysia. There's also an argument based on the price at which it's available. Of course, illegal copying of anything would disappear immediately if the anything were available free of charge - or even for a modest cost. Film producers, and record companies, must set their prices at the level at which they expect to maximise profits (or do they? Why are CDs and DVDs priced so uniformly? Is a CD from one artist really worth the same as a CD from another artist? The selling price might be identical - but market clearing or profit maximising might call for a different price). Just because one can't afford the DVD, or CD, doesn't mean one can procure an illegal copy.
Well, back in the days when (as I just defined the era) Frank Zappa was unknown to FT readers and there was an Iron Curtain to show how different various political and social systems could be, I had an extensive collection of tapes made from friends' LPs. I also had no grasp of copyright law - but that's another matter. I am wiser as well as being older. I couldn't afford to buy all those LPs - after all, they cost as much as £2, sometimes even £2.50, each - so I taped them, and my friends taped my records, or would have done except that my collection was so eclectic that they probably didn't want to bother. I had some rarities on tape, which couldn't be obtained any other way, but mainly I admit it was sheer volume, not scarcity, that drove me. And others.
I still have some rarities on tape, somewhere - old Dylan bootlegs. There's the scarcity argument. 30 years ago his 1966 concerts were only available in bootleg form. The people who made the records could face prosecution but the fans who bought them did no legal wrong. Nearly everyone (excluding the Grateful Dead) takes a much more prorietary view of their rights now: plus, record companies and film studios are rather bigger entities, with more shareholders to satisfy. The people who make copies of music and films that they cannot afford are and must always be infringers: they should never be criminals. People who make unlawful copies on a commercial scale are and must always be infringers: whether they are also criminals is another matter, and I would say let the industry enforce civil rights before hastening to criminalise the activity, which often forms part of a wider range of activities which is clearly criminal anyway.
And price the product to make it available to all!

Russian president calls for reform of international IP treaties

Sometimes I get that sense of the world sliding away from me - as it did for Phaedrus in Zen and the Art of Motorcycle Maintenance. I vividly recall reading Frank Zappa's obituary in the Financial Times: that still epitomises for me how radically the world had changed in a few years, eliding the passing of an iconic cultural figure, the fact that he might qualify for an obit in that newspaper (a few years before, few of its readers would have recognised his name) and indirectly the disappearance of the Iron Curtain (brought to mind because of his appointment by Vaclav Havel as a special ambassador to the West - what a tribute for a fan to pay to a musician!).
The news that President Medvedev was talking to musicians at the Rhythm and Blues Café in Moscow might have caused similar feelings. The fact that there is such an establishment in Moscow might alone have been enough once to produce that sliding feeling, but I am reconciled to the fact that times have changed. The fact that he was arguing for reform of international IP conventions, singling out Berne and Geneva (the phonograms convention, I assume, not the red cross one), could also prompt the same sensation.
His point that those conventions are stuck in a different era, before the Internet allowed faithful copies to be sent around the world in the blink of an eye, when Frank Zappa was unknown to FT obituary writers, is well-made. The notion that downloading needs to be treated "like any other crime" is a bit worrying ... fortunately Russia is a different place from what it was in Vysotskiy's day.

The costs of patent litigation

I haven't had a lot of time for blogging recently, for several reasons. One is that I have spent the day being a corporate finance lawyer. Another is that the Oxford IP seminars (advertised elsewhere on this page) have taken some of my time. At the first one this week, Jane alluded to a famous case on the costs of patent litigation, and I think it will be a service - a small one, but a service nonetheless - to humankind if I post the relevant paragraphs here for all to see.The case was Ungar v Sugg (1892) 9 RPC 113 at 116-117 and the judge Lord Esher MR.

"Well, then," his Lordship said (not words you see much in the law reports these days), "the moment there is a patent case one can see it before the case is opened, or called in the list. How can we see it? We can see it by a pile of books as high as this [holding up the papers] invariably, one set for each Counsel, one set for each Judge, of course, and by the voluminous shorthand notes: we know ‘Here is a patent case.’

"Now, what is the result of all this? Why, that a man had better have his patent infringed, or have anything happen to him in this world, short of losing all his family by influenza, than have a dispute about a patent. His patent is swallowed up, and he is ruined. Whose fault is it? It is really not the fault of the law; it is the fault of the mode of conducting the law in a patent case. That is what causes all this mischief.”

The Coca-Cola Company sues to protect bottle shape in US

I’m not passing comment here on what The Coca-Cola Company is doing with its trade marks: I don’t know enough about this story, and it’s many years since I bought orange juice in a US grocery store. In fact, I might never have done so at all. But I think there are lessons in this story about the company’s spat with Aldi over a bottle shape.

The bottles look pretty mundane to me (and I recall in the Round Imports v PML Redfearn Ltd [1999] CIPA 725 design right case yonks ago that the judge (Rattee J) thought that differences a bottle designer might consider significant could well be lost on inexpert consumers – in other words, bottle designs have an inherent tendency to look pretty similar), but The Coca-Cola Company has been selling juice in bottles of this shape for some nine years. That might be long enough to create a reputation in the shape, I suppose, if the shape is ever going to get to the stage of having a reputation. Certainly this is what The Coca-Cola Company claims is what has happened: it claims its rights in the trade dress of the product have been infringed. That’s essentially a trade mark point, but there is a design patent point too – the bottle shape is protected by several of these volatile rights. Volatile, because like a UK or Community registered design, design patents are readily granted, and frequently invalidated. Round Imports, though of absolutely no significance in a case in the US, is concerned with the limitations of design protection for mundane designs.

Aldi is selling a similar drink in a bottle which is very similar – perhaps, in Round Imports terms, identical. Maybe The Coca-Cola Company is right to claim it is damaged by this, although I’d have thought the consumer would pay attention to a lot more elements of the get-up than the bottle shape alone (indeed, might ignore the bottle shape and look at the name and other indicia). Be that as it may, and (as I said) not wishing to comment on the particular case (which also involves design patent claims), there are plenty of other cases around like this where businesses have tried to “leverage” their trade mark rights and create out of them a true monopoly. And if trade mark and design owners are able to do this, to my mind it’s a good indication that the system is broken.

Copyright absolutists revisited: The Royal Opera House

The Lawyer carries a strange story about the excesses of intellectual property, or rather its exercise: the Royal Opera House intimidating the proprietor of an opera blog, Intermezzo with threats of legal action over photographs reproduced on the blog.

Apart from the completely OTT threats of legal proceedings, the ROH has brought ridicule upon itself because of the misspellings - "copywrite" and "consul" - and other errors in the correspondence emanating from its legal department. We all write emails in haste, but not that sort of email. As far as the merits are concerned, it seems - contrary to initial impressions - that it's not photos produced by the ROH for the use of the press the reproduction of which it objects to (surely an implied licence, if there is no express one, would cover that), and in the end it's only a couple of photos of sets, in which the set designer presumably owns the copyright, that are in dispute. Even so, fair dealing for criticism and review or reporting current events should deal with that (though reporting current events doesn't get you off the hook if the work is a photo). For criticism and review, acknowledgements are required, and perhaps Intermezzo has fallen down here too - but that's easily remedied. And by the way, Intermezzo, should you happen to read this, "fair use" is an American copyright concept - don't given your opponents a chance to have have a cheap shot back at you!

I'm reminded of another story about which I posted some time ago, where a copyright owner behaved as if copyright (I think they could at least spell it) was some sort of absolute monopoly. I suppose I should be pleased that there is still such ignorance about basic principles of intellectual property law: it might keep me gainfully employed.

Of course, the most bizarre aspect of the whole episode is an institution - one that is trying to persuade the world that it isn't stuck-up and elitist - hammering one of its most effective supporters. Judging by the comments, it could have lost itself a lot of custom. I've patronised the place once, back in the days before we had school fees to pay: now that I might be able to afford an occasional night at the opera I'll be inclined to find another house, or stick to orchestral or chamber music, just as I will avoid buying the products of others whose use of their intellectual property is oppressive, anticompetitive or avaricious.

August monthly IP update podcast

I've now completed the August programme and uploaded to audio file and the notes to the server. Among the topics covered are teh Specsavers case, the Honda spares exhaustion case, the opinion of the Advocates General on the European and European Union Patent Court, the idea of appointing an IP Tsar, a patent office hearing in Manchester, and much more. I have included a little Russian but have not tried to pronounce it. Subscribers can now download them and get another hour CPD - I hope you like it.

Convictions for trade mark offences

Two recent stories on convictions under the criminal provisions of the Trade Marks Act. I must still confess to being unconvinced about the merits of enforcing private property rights through criminal offences, especially where the IP rights owners are multinational behemoths who can afford to enforce their own rights. The cases come from Edinburgh and Leicester respectively, involving in the first case Microsoft software and some print cartridges and in the second DVDs, and do not apparently involve copyright. In the Scottish case, the trader has been rosecuted and assets have been seized (reading between the lines a bit) under the Proceeds of Crime Act, and now Microsoft is quite rightly seeking damages. In Leicester, the re-offending shopkeeper has been sent to prison pour encourager les autres though who can tell whether les autres will take note.

Coincidentally, the IPKat has a report of the experiences of an unfortunate trade mark owner, Christine Watson, who found that the criminal provisions of the Trade Marks Act didn't assist her much. Another illustration of how the trade mark system in this country, and in the European Community, is badly broken. Enforcement by trading standards departments is always going to be uneven, as differnt authorities will have differnt priorities, different budgets, and different levels of experience. It does look from the scant evidence of these three items as if trading standards departments might be more receptive to complaints from Microsoft or Hollywood studios than from the small businesses who need their help, though it would be nwise to draw many conclusions from the press stories.

Because trade marks have - still! - an important consumer protection dimension, trading standards departments need to be involved in their enforcement, even where the rights owner could afford to take the matter to court. That dimension is clear enough in counterfeiting cases, less clear in "ordinary" infringement situations. But as the IPKat also reported a few days ago, an EU report has (reportedly: the Kat's source is the Telegraph) an EU-funded study (for which, as the Kat points out, read tax-payer funded study) has concluded that fakes are OK. Well, that's a simplisitc generalisation: one might read it as saying that we should be worried about counterfeit parts for cars and aircraft, and drugs, before we worry about counterfeit handbags, and that sounds perfectly reasonable. I don't agree that counterfeits produce a beneficial effect by speeding up the fashion cycle, and I certainly don't see how they raise brand awareness - the brand awareness is surely a necessary pre-condition for a flourishing counterfeit industry.

If however they destroy the artificial cachet of expensive brands, and cause people to focus instead on real virtues like quality and - dare I say - durability, which at present are subsumed into the brand and lost to sight behind the more superficial aspects, then that sounds like a good thing.

The Stig and breach of confidence

When I hear the name Stig, it brings back memories of Stig of the Dump, which only goes to show how old I am. Although it is a common enough Scandinavian forename, to me it is inextricably linked with dumps - not a great connotation. For whatever reason, the makers of BBC's unaccountably popular programme Top Gear chose it as the designation of the anonymous racing driver who features in the show. Now he (the real driver, that is) is writing his autobiography, and the BBC is trying to stop it from being published. The title of this post links to to the story on the BBC website.

It strikes me as a very unedifying dispute for several reasons - but presumably the legal analysis is simple enough: the contract surely contained a confidentiality clause, as secrecy lies at the heart of the whole scheme. If it doesn't, it must surely be implied, or an equitable obligation must exist. But there's another twist to it.

The Stig's identity appears to be widely suspected, because it is laid almost bare in the annual return of a company owned by a certain (far from household name) racing driver. Presumably this is one of those companies set up to hire out the individual concerned, who is under an exclusive contract to his company. In which case, presumably the BBC contracted with the company not the individual - indeed, if it were otherwise there would be no disclosure of dealings with the BBC in the company's accounts. It is hard to imagine that obligations of confidentiality would not be imposed on the company and the driver, but didn't the BBC see a public filing of the company's accounts and its directors' report coming? Now, I don't think there's anything in company law that requires the amount of detail that seems to have been disclosed, so that in itself ought to be a breach of confidence: but the BBC say that the programme and that company have lots of dealings anyway.

The BBC's report presents this not so much as a breach of confidence and of contract, but an attempt to take advantage of the reputation attaching to the Top Gear brand - a very modern analysis, I think, to emphasise the brand above other matters, and not a particularly convincing one.

All in all, a very strange affair - perhaps more will be revealed one day.

UKIPO sets out research plans

Following the demise of SABIP, the institution formerly known as the Patent Office has announced its plans to gather information to support its policy-making. Does this mean anything more than that it is taking over SABIP's role? There's no mention of formal consultation, so I don't know whether I can send them my views about the inadequacies of the trade marks system - on the other hand, I can see why they don't want to be inundated with ill-informed representations against software patents and other controversial subjects.

Ansel Adams as composer

When I heard that some lucky guy in California had bought a load of negatives by renowned photographer Ansel Adams, whose work I have loved for years, in a garage sale for $45, it seemed too good to be true. Now it seems as if it might be. According to AP  The Ansel Adams Publishing Rights Trust is taking legal action to stop the owner of the negatives (but not the copyright) from making reproductions from them and selling them.

It's not, however, a straightforward claim of copyright infringement, because the Trust maintains that they aren't Adams's work. There appears to be evidence that they are the work of one Earl Brooks, a little-known amateur photographer (though he must have been pretty talented to produce something that could be mistaken for an Adams). Even so, the claims for trade mark infringement, false advertising, dilution, unfair competition and who knows what else are easy enough to understand, and no doubt in due course a court will find one way or the other.

What particularly intrigues me is that the Trust says even if the negatives are Adams's work, the prints cannot be sold as his:

Mr. Adams was fond of likening a negative to a composer's score and the prints to its performance — each performance differs in subtle ways," the lawsuit said. "The photographic prints and posters offered for sale by defendants ... are not an Ansel Adams 'performance.'

Indeed. Whenever I  have printed photographs from my own negatives they have come out differing in ways that could never be called "subtle". Mr Adams had infinitely greater darkroom skills than mine, so his subtle differences are immensely important: but whatever market there is for prints made by the great man these days is sure to be small, and the prices stratospheric. The calendars and postcards and posters that we see on sale today are presumably reproduced from prints made by the great man, but I can't conceive of them as an Ansel Adams performance. At best, they are someone else's recording of an Ansel Adams performance, and even if not a bootleg performance then one that doesn't faithfully capture every nuance of the performance itself: that's inherent in the process of recording and reproduction. Like a piece of music - Rhapsody in Blue, say: same period (approximately), same country (wrong coast) - there are different interpretations and different performances, by different conductors, different performers and different orchestras. Like an Ansel Adams performance, there are records of it played by George Gershwin - here on YouTube, with the Paul Whiteman Orchestra for which he wrote it, and here in a modern recording in which the composer is present vicariously, by piano roll. I don't think they render otiose recordings by others - but I think that reveals the limitations of Mr Adams's metaphor rather than proving it wrong. There are advantages to being able to use modern technology, whether to record a performance of Rhapsody in Blue or to make a print from an original Adams photograph - and in each case the "performer" can choose to imitate the "composer" instead of giving free rein to their own creativity.

As for prints from the garage sale negatives, the important matter here seems to be their authenticity. If they are Adams negatives, it seems to me to be legitimate to call prints made from them Adams photographs, so long as they are not held out as being the products of his own darkroom. Rhapsody in Blue remains Gershwin's composition whoever plays it, and even if they play it atrociously. And if the negatives cannot be authenticated, surely there is a form of words like "attributed to" which, though they will not keep everyone happy, will at least avoid litigation?

Off-piste - competition law treatment of land agreements

The Competition Act 1998 excluded land agreements from the Chapter I prohibition. It didn't just exempt them, as some commentators are saying, it excluded them altogether, as it originally did with vertical agreements too. Vertical agreements were later brought back into the fold, but since they enjoyed exemption it didn't actually make a huge difference. Now the land agreements exclusion is going to be discontinued (though not until next April).
The expression "land agreement" meant "an agreement between undertakings which creates, alters, transfers or terminates an interest in land, or an agreement to enter into such an agreement". The concept of an "interest in land" is deliberately wide, and neutral. It had no pre-existing meaning in English or Scots law, to start with. It is defined as including "any estate, interest, easement, servitude or right in or over land (including any interest or right created by a licence), and in Scotland also includes any interest under a lease and other heritable right in or over land including a heritable security". Restrictions on the use of commercial property, restrictions on to whom properties may be let, restrictions on to whom land may be sold, and requirements that tenants buy services from particular suppliers (for example, cleaning services or insurance) were all removed from the purview of competition law by the exclusion.
Not that they will now automatically be prohibited. Only if there is an appreciable effect on competition will the prohibition apply anyway (unless price-fixing or market-sharing is involved), and even if it does there's always the possibility of exemption. These days, exemption is, initially at least, a matter for the parties to the agreement, so landlords (and the paradigm case is probably that of the shopping centre, where for various understandable reasons it is not thought desirable to have several mobile phone suppliers next door to one another) have to assess their own restrictions and decide whether they deliver a benefit to the public. A good mix of retailers in a shopping centre would probably be just such a benefit.
In any case, property lawyers are going to have to become more familiar with competition law than they have been up to now.

Confidentiality in divorce proceedings

Confidential information takes many different forms, but it usually makes no difference whether the information concerned is a trade secret or something private. Prince Albert v Strange is still a case of fundamental importance in this area. In Tchenguiz v Imerman [2010] EWCA Civ 908 it was personal financial information. The defendants, whom the Master of the Rolls, Lord Neuberger, described (in the judgment of the Court) using the wonderful phrase as being "in a substantial way of business", shared an office with the claimant, their brother-in-law, who was divorcing their sister, each of whom he described as "independently rich". They thought they might protect her interests by extracting information from the computer system in the shared office. It was not only the premises that were shared: it was also the server, and the most important practical lesson from this case is that this isn't a great arrangement.
The Court of Appeal held that the information had been obtained in breach of confidence, and the information could not be retained and used in the divorce proceedings. As for confidentiality between husband and wife:

The notion that a husband cannot enjoy rights of confidence as against his wife in respect of information which would otherwise be confidential as against her if they were not married, seems to us to be simply unsustainable. The idea that a husband and a wife should be regarded as a single unit in law was a fiction which the law has been abandoning for a long time.

The correct thing to do would have been for the wife to get an Anton Pillar order, enabling a search to be carried out, although the Court noted that such an order was almost - perhaps completely - unheard of in the Family Division.

Cups and saucers, Patent Office opinons, and costs, in Manchester

I have been reading the report of a case before the Hearing Officer called Wragg v Donnelly, involving a claim for a declaration of non-infringement and arguments about validity based on obviousness. The technology concerns a device for allowing steam to escape from a boiler and be safely conveyed to the outside world. This is technology that I can understand.
The clever thing here is that the steam does not just blast straight out from the outlet pipe, which might remove the skin of anyone unfortunate enough to be passing. Nor does it resort to the rather primitive solution of a Yorkshire Bend, or a Y-joint, directing the steam back towards the wall. A Yorkshire Bend appears to be a simple length of copper pipe with a 90 degree bend in it, and therefore not very exciting - not even something that merits a fancy name.
The invention replaced whatever was used to direct the emission back on itself with a "substantially cup-shaped" cap to catch whatever came out of the pipe. The use of a cup-shaped device to reverse the flow of fluids was known in other fields of plumbing - and I imagine, though it isn't mentioned in the decision, jet engines.
The case provides a nice example of how contributory infringement may be important. The claim (there being a single independent one) required a conduit that would be attached to the boiler's pressure relief valve and pass through a wall to the outside world, then an attachment on the end of conduit to reverse the flow safely. The alleged infringement provided a cowl (and tellingly the manufacturer was a maker or chimney cowls) to reverse the flow, but not the conduit. The cowl was saucer-shaped rather than cup-shaped, did not present a concave inner surface to the stream of fluid (it was flat, which is not uncommon in the centre of a saucer) and lacked an end open to the environment, as the fluid was allowed to escape through holes.
Is a saucer substantially cup-shaped? The inclusion of the word "substantially" probably doesn't qualify to be referred to as inspired - but it certainly makes a big difference. Perhaps the drafter of the specification is in the habit of drinking his or her tea out of the saucer ... and perhaps the Hearing Officer was, too, because applying a purposive construction to the words he declined to make a declaration of non-infringement.
He also declined to award costs greater than those provided for in the published scale. The patentee's costs were said to be in the order of £10,000, and as there had been two opinions from the Patent Office both of which had gone against him, his counsel (Jane Lambert) argued that the defendant should not have to bear the brunt of the costs. The opinions should be regarded as a form of alternative dispute resolution, which the parties are generally obliged to try, she argued: but the Hearing Officer preferred the view put by Alistair Wilson, QC, for the claimant - that if costs were awarded in this way parties would be deterred from exploring the issues in a manner simply not possible as part of the opinion process, with cross examination and all the other trappings of a hearing.
Most important of all, perhaps, is that the hearing was conducted in Manchester, the first time this has happened as far as I know. Perhaps in due course there will even be hearings in the North!

Spending cuts impact on trade mark system

No area of government spending is to be spared from the cuts necessitated by the country's present predicament. In the intellectual property world - or worlds, I should say, to emphasise that the subject isn't a neatly defined unity - we have already seen the demise, to no discernable sorrow, of the Strategic Advisory Board for Intellectual Property. Now, paradoxically, the Patent Office has announced that it will continue to give Community trade mark owners the option to be alerted to conflicting UK trade mark applications.
The reason for public spending cuts resulting in the retention of a service that is very little used is the reduction in spending on government IT projects. To do away with the notifications (which presumably are self-financing, as there is a fee to be paid if you want to receive them) is all tied up with the replacement of the Patent Office IT system, and the future of that project will remain uncertain until after the deadline for making a decision about the future of the opt-in. It was introduced in October 2007, and opt-ins last for three years, so come October this year renewals will fall due unless it is discontinued. So, the cuts will result in the Office retaining a service that people seem to consider is superfluous.
The UK is apparently the only Member State that offers such a service, and given the importance of trade mark owners maintaining watching services these days there can't be much need of it. Ironic that it should be public spending cuts that are keeping it alive.

Intellectual Property and EU Competition Law

A while ago, I had the impertinence, when posting reviews of three books that OUP had sent me, to suggest that a copy of Jonathan Turner's book would be welcome. It duly arrived. I must therefore review it, especially bearing in mind the flattering comments Jonathan has made about my Dictionary. In the meantime, I have written another review of one of those OUP books (Amanda Michaels's Practical Approach to Trade Mark Law) for the Trademark Reporter, and that was published online yesterday - though "published" is perhaps not quite the right word, given the lengths even INTA members have to go to to get to it, and the fact that it is simply unavailable to non-members.
The launch party for Jonathan's book was a highly enjoyable affair, a few months ago now. I took the unfortunate LPC student who was assigned me as her mentor, and we practised our networking skills. We also enjoyed trying the quiz that Jonathan had devised, offering pictorial clues to well-known cases in which intellectual property and EU competition law collided. I failed to identify Pronuptia and Consten/Grundig: ridiculous. I am not spending enough time thinking about EU competition law.
I did think about it a bit recently, though, because Jones v Ricoh (reported elsewhere on this blawg) almost brings the two subjects together. The reason for saying "almost" is that it's a confidential information case, and that is arguably not in the IP world (as comments on the IPKat's report of the case have argued). Jonathan Turner includes a little about confidential information in his book, but that isn't the point. To my mind the important thing is that what we know as intellectual property isn't really property anyway, although the metaphor is convenient: but that's not the point either. The Kat observes that this is a rare instance of an English court dealing with a point of European Union competition law rather than trying to pretend it hasn't been raised.
If that happens more in the IP field (as it is sure to do), Jonathan Turner's book will be essential reading for all those practitioners likely to be exposed to the two fields of law. That they are related is no revelation, although their relationship isn't as simple as it might at first look. Intellectual property rights, despite their monopolistic character, are not inherently anticompetitive - in fact, on the contrary, they should be seen as pro-competitive.
The book adopts the slightly unusual approach of treating the subject in chapters devoted to technology; culture, media and sport; and branding. With an introductory chapter (nearly half the book), that makes only four chapters spread over 300 pages, and lengthy chapters cause footnote numbers to exceed 1000. Not that this in any way detracts from the quality of the content: it does however seem an odd way to construct a book - a point I made when reviewing Amanda Michaels's, too.
Although it's aimed squarely at practitioners (who else would be interested?), and it contains a large amount of black letter law (it would not be possible to do other than to describe the cases, the block exemption regulations, the Notices and other sources) it is not a dry exposition of legal rules. Notwithstanding the length of the chapters, it's easy to find one's way around in and contains the answers - even, in some cases, in tabular form - to all the questions that might need answering. Well, all the questions I have thought up, anyway.
In an emerging area of law like this, it's important to know that you're right up to date, which means it would be desirable to have a note of the date at which it was up to date - accepting the inevitable, that no book remains up to date for long. The Union's Court and the Commission are not known for their alacrity in moving the law forward, so the author will have been able to see developments ocming, and this handsomely-produced tome should therefore enjoy a reasonable shelf-life - at £145 one would wish that to be the case.

IP Dictionary on the way

This is a uniquely satisfying thing to see when checking one's email in the morning: my book has put in an appearance on the publishers' website, here - and the best part of it is a very nice endorsement from Jonathan Turner. I still have to contain myself until February, though, according to the page - and indeed am waiting for page proofs, which are promised for September.

Article on Henry vacuum cleaner case in Journal of Intellectual Property Law and Practice

My article on the Henry case, noted on this blawg a few weeks ago, is now available online here and will shortly be in print too.

A close run thing: Specsavers beat Asda

Specsavers International Healthcare Ltd v Asda Stores Ltd [2010] EWHC 2035 (Ch) involved allegations that the supermarket had infringed Specsavers' word and figurative trade marks and that they had committed a passing off. Interesting, because in the Penguin v Puffin case (aka United Biscuits v Asda) years ago there were trade mark infringement and passing off claims, and they went different ways. That case was also invoked here as an indication of the defendants' general attitude to matters of trade mark law - interesting to see their past record of "living dangerously" come up in new proceedings.
Asda advertised its in-store opticians using signs that took certain elements from the claimant's get-up, including several that featured in registered trade marks. The main thing was the two ovals - a highly stylised representation of a pair of spactacles, perhaps, though crucially in the claimant's mark they overlapped and Asda's didn't. The colour green was also chosen, in a very similar shade, though the trade mark was not registerd in colour so this could not affect the infringement case. Asda also used the slogans "be a real spec saver at Asda" and "spec savings at Asda". Their original intention had been to parody Specsavers' advertising, blatently inviting the public to compare the two, and they took legal advice to judge just how dangerously they could live.
The trade mark claim was that Asda were using a similar mark for identical services, creating a likelihood of confusion, and that they took unfair advantage of the reputation of the earlier marks. Mann J held for Specsavers, but not entirely: the first of those claims failed because colour was an important element but was not protected by the registered trade mark, and take away the colour and there were enough differences (especially the non-overlapping ovals). The ovals alone were an important element of the mark but not dominant, and the introduction of the wording within the ovals made a very significant difference. Indeed, the overall impression was different - and although "different overall impression" is the test for infringement of a design, the Court of Justice imported it into trade mark law in SA Société LTJ Diffusion v SA Sadas [2003] FSR 1. The judge thought that a reasonably circumspect consumer (the Court of Justice invoked a "reasonably well informed, reasonably observant and circumspect" consumer (Lloyd Shuhfabrik Mayer v Klijen Handel BV [2007] FSR 77 at para 27), which might have allowed the claimant to introduce considerations about the eyesight of a prospective customer - had they been sufficiently mischievous) would not be confused by the ovals if they were the only element in common.
The unfair advantage claim succeeded only in respect of teh first slogan. the words "spec saver" in it clearly called the claimant to mind and intentionally gained an advantage by drawing on their reputation. This was not the case with the second slogan. As for the logo, the "living dangerously" evidence showed that Asda had aimed at "resonance", and the logo brought Specsavers to mind but not enough to amout to unfair advantage.
There was no misrepresentation, so the passing off claim fell at the first hurdle: there was too much Asda branding associated with the material for that claim to fly. And, to add to the claimant's presumed discomfiture, one of its non-verbal logo marks was revoked on grounds of non-use.
So, a victory, though with heavy losses, and interestingly the mirror image of the Puffin v Penguin case where United Biscuits lost on infringement but won on passing off.

Parallel imports of motorbike spares

The IPKat reports Honda Motor Co Ltd and another v David Silver Spares Ltd [2010] EWHC 1973 (Ch), a 28 July 2010 ruling by George Leggatt QC, sitting as a deputy judge of the Chancery Division (England and Wales), only available on Lexis Nexis at present so until there's a freely available version, [there is now: http://www.bailii.org/ew/cases/EWHC/Ch/2010/1973.html] which might shed light on why such a hopeless cause got to court at all, I'll leave the detail to the Kat and summarise (and ensure I don't plagiarise) here.
It's one of many cases involving parrallel imports of motorbikes and spares. Honda sued for infringement of their CTM and UK trade marks, claiming that the defendant was trading in spares that had not been placed on the market in the EEA by Honda or with their consent. The defendant sought to strike the claim out or to have summary judgment, arguing that it was entirely speculative and lacking in particularity
The deputy judge dismissed the claim, reiterating the well-worn principle that even when the goods have been placed on the market outside the EEA by the trade mark owner the rights can be asserted to stop importation into the EEA. I thought any student of trade mark law would have been able to work that out, which is why the full report must surely reveal that there is more to the case than meets the eye.
Where consent is argued to establish that the trade mark rights are exhausted, it must relate to every individual item in respect of which exhaustion is pleaded (onerous) and must be positively expressed (the Kat notes that it may be implied, provided it is unequivocal, so again the report of the case appears to be a bit lacking). The trader alleging that there has been consent must prove it: it is not for the trade mark owner to show an absence of consent. The burden of proof is only reversed if there is a real risk of partitioning of markets.
The defendant had not shown that Honda's claim lacked any reasonable basis or had no real prospect of success. Honda did not have to show that the parts the defendant was selling were placed on the market outside the EEA: it only needed to assert on reasonable grounds that the defendant had used the trade marks in the EEA for goods for which they were registered and that Honda had not consented.
It will be interesting to see later how the gaps in this account are filled! I hope there'll be a full transcript of the judgment in time for the next podcast.
[Now that I have found the judgment on BAILII, I'll revisit this posting when I have time.]