The benefits of allowing copying

I'm rather belatedly in the middle of reading Moral Panics and the Copyright Wars by Bill Patry, and an excellent book it is - which I will review in due course. The message that a liberal approach to downloading actually - perhaps counter-intuitively, at least to the record and film industries - leads to increased sales is echoed in a posting by the author Paulo Coelho on his blog which is worth reading.

Years ago, before I knew a thing about copyright, when I copied friends' LPs onto tape (and permitted them to do the same with mine) I did so with the aspiration of "upgrading" in due course by buying my own copy of the disc. If I didn't like the music I wouldn't bother, but neither would I listen to the tape. Far from meaning lost sales, I am sure it meant I bought more than I otherwise would. OK, albums were desirable possessions in their own right in a way that CDs aren't and downloads couldn't possibly be - though LPs do take up a lot of space. And the tape recordings were pretty rough. There were compelling reasons to buy the LP if you could.

And there's such a lot of music available, legally, for free download anyway - including so much of The Grateful Dead's oeuvre, recorded with their blessing by their fans - further proof, if proof were needed, that allowing copies to be made does not necessarily hurt the rights owner.

The Hargreaves Review: Can we be told what is happening?

The Hargreaves Review should be the biggest piece of IP news this month. We have been promised all along that it will report in April 2011 and there's not much time left. I have had plenty of other things to think about recently, but there's a small break from the relentless flood of pressing obligations and anyway I need to be ready to cover Hargreaves in my next podcast - so I went looking for news of progress.

First I went to the (independent) Review's pages on the Intellectual Property Office website. Obviously my understanding of the word "independent" in this context is somewhat old-fashioned. I assume that the IPO is just generously providing a facility for the Review, which is exactly the sort of public-spirited activity that I always thought we had a government for rather than all the superficial promotional work the IPO does to raise awareness of the intellectual property system ... not to mention its ridiculous name-changing and the attendant waste of taxpayers' money on trade mark applications that should be completely unnecessary ...

The Review pages on the IPO website are not very informative about where it's got to and when the report will be out. Indeed, the home page hasn't been updated since 25 March - and the rest of the site is older still. There's a blog attached to it (which I mentioned in a recent podcast) but that too is up to date to 25 March - which is to say, not up to date at all. And the blog invites us to follow the Review on Twitter - which I find I was already doing, but hadn't noticed because there have been no Tweets since 25 March.

With all those social media resources at its disposal, it's inexcusable for a publicly-funded review to put out so little information about its work. Had the blog and the Twitter account not been set up in the first place, and my expectations therefore raised, I'd just be waiting for the words of wisdom to emerge - standing patiently outside the HMSO bookshop, perhaps. This dearth of information, though, is pathetic, and a bit of an insult to all who will feel the impact of what the review recommends - and to the taxpayers who have funded the exercise.

World IP Day - spreading the word ...

I spent yesterday doing my bit for IP education - talking to entrepreneurs, inventors, small business people and the like about the subject, and also plugging my book - though that's not a natural constituency for it, really. (Here's a picture of me in action, though I don't really look like that at all, do I?) I do hope that Leeds Central Library will consider it a worthwhile investment - and other designated patent libraries, too.

Also doing her bit - with much more style than me - for IP education is Hope London, which I'm afraid I thought at first must be a charity for down and outs in the capital. She's an artist who has chosen to use her talents to promote the message that intellectual property, and of course copyright in particular, is important for graphic artists. This article about her appeared in The Scotsman, because she's based in Wigtown, where you can see her works as part of a festival called Spring Fling. Her mission is, using the medium of a graphic novel, to get the IP message in a across painless and amusing way (my mission in the Dictionary of Intellectual Property Law, too, though the medium is rather different and I didn't exercise my cartoon-drawing skills, such as they are, which have lain dormant since my contributions to the Warwick Boar in 1977) - a very promising idea, as you'll see if you follow that last link - though being a boring, literal minded, male, English lawyer the American usage of "Esq" does grate on me ... However, it's a universal message so I won't go on about it. I'll just wish her luck and hope to see more of her work in the future - Wigtown is not, unfortunately, on my itinerary in the near future. Leeds and Bradford yesterday was enough for now.

Book review: Working Within the Boundaries of Intellectual Property

I am a very fussy reader. I remember decades ago being appalled at a sentence in a best-selling book that, lacking a verb, made no sense. Years later, I had been enjoying Captain Corelli's Mandolin until Mr de Bernieres suggested that the Cyrillic alphabet was used in Greece. And more recently a friend's novel was spoilt for me by a mistake ("taught" instead of "taut") on the first page - his prose also turned out to be purple enough to make an Anglican bishop's outfit look colourless, which further detracted from a rather good story.

So when, also on the first page, in fact the third line, of this book - once I'd skimmed through the preliminaries, including endless pages of biographies of the contributors - I read that patents granted to American universities had "grown almost in order of magnitude" from 434 in 1983 to 3,259 in 2003, I knew all I wanted to know. The inclusion of the word "almost" makes it complete and utter mathematical rubbish. The fact surely is that the statistic has increased by an order of magnitude, no more and no less: you simply cannot have partial orders of magnitude. It has gone up from 4.34 x 10² to 3.259 x 10³ - an order of magnitude.

Why on earth use a concept like orders of magnitude anyway? Because it sounds learned? "Almost tenfold" would have worked (though it would have been very approximate). At least we were spared the misuse of the term "exponential".

My own writing is far from perfect, and I already know of entries in my recently-published Dictionary that I would write very differently with hindsight, so of course I risk attracting brickbats by picking fault with the work of others. The publisher should be ashamed of this one, though, and I think I am justified in mentioning it in connection with a work of scholarship such as this. If intellectual rigour is lacking there, might it also be lacking elsewhere? I have found nothing to suggest that it is - but one does not read books like this because one already knows the subject-matter but to learn something new. And this has a great deal to teach us.

Subtitled "Innovation Policy For The Knowledge Society", it was published on 4 March 2010 and is edited by Rochelle C. Dreyfuss, Diane L. Zimmerman, and Harry First, all from New York University School of Law. It is a follow-up to the same editors' Expanding the Boundaries of Intellectual Property, published by Oxford University Press in 2001.  At 568 pages and £85.00 it is a substantial piece of work, and its focus on the expansion and strengthening of intellectual property laws is a subject of huge importance which certainly doesn't get enough attention from practitioners, who often resemble turkeys enjoying an indefinite postponement of Christmas. I have a feeling that few practitioners are going to be reading this, though - their time is money - but I hope that the learning contained within it will percolate down from the realms of academe and generate more debate about whether intellectual property rights have become too strong.

March podcast now available

The March podcast is now available to subscribers for download from the usual place. The notes will follow shortly. In this month's programme:

• The Max Planck Institute’s study of European [sic] trade mark law is published 
• The Court of Justice kills off the uniform patent litigation system 
• EPO appeals board agreeing with English courts about the Medinol stent 
• Advocate General Jääskinen on the application of the private-copying levy to distance selling (and several other things - he's a busy man)

And lots more besides. If you're not already a subscriber, see the Podcast page of this site for more information.

Clutter: Planck's New Constant

The Max Planck Institute’s Study on the Overall Functioning of the European Trade Mark System was published on 8 March. It has taken me a while to get to this – and I haven’t yet read all 278 pages – so these thoughts are liable to be added to, changed, or dropped. Watch this space!

It was commissioned (appropriately enough) by the European Commission, and it is one element of the Commission’s overall evaluation of what it insists on calling the European trade mark system. (See my separate posting on that.)

The purpose of the Commission’s evaluation of the trade mark system is to provide an assessment of how the system is working and to identify potential areas for improvement. It also considers the potential for enhanced co-operation between OHIM and the national offices, and evaluates the distribution of a proportion of the renewal fees paid for CTMs – a particularly touchy subject between national offices and the Community one. The Commission is free to choose not to follow recommendations in the Study, and some of them are certainly controversial: it will bring forward its ideas for legislative change in the autumn. The general tone of the Study, and its recommendations, would lead to greater cohesiveness between the Community and national trade mark systems – and several recommendations involve making optional provisions in the Directive mandatory (including the extended anti-dilution protection afforded to marks with a reputation).

The Study begins by canvassing the views of relevant stakeholders in the Community and national systems (I will call them collectively the systems, to save me becoming over-excited about the misuse of the word “European”). I’m glad they didn’t waste time with irrelevant stakeholders, though if they are stakeholders surely they are relevant by definition. The MPI organised two hearings with representatives of these stakeholders – but I have a feeling that when you examine the identities of the stakeholders you’ll find that they all have a vested interest in the continuation of the trade mark system pretty much as it is.

It also collected information from national trade mark offices, and the Benelux regional office (BOIP) which I hope will not feel offended if I don’t single it out for special mention every time I use the expression “national offices”. Finally, a representative survey among users of the CTM system was conducted by the Institut für Demoskopie Allensbach in February and march 2010.

The Study draws a number of conclusions from its survey of the field and makes many recommendations. A recurring theme throughout the study, and an expression for which I for one am indebted to the Institute, is “cluttering”. Such is the extent to which it is used that it should be regarded as a new Planck’s Constant.

The recommendations include:

Dividing up the spoils

Sharing out the half of OHIM’s renewal fees that had already been earmarked for the national offices, so all national offices get a minimum plus a top-up amount depending on the number of applications and international registrations dealt with by them. With a surplus of €400 million, this is a significant issue, especially as national offices might feel that this is money that has been taken from them by the parallel system in Alicante.
The requirement for graphical representation should be removed from the Directive and the Regulation. This will allow the development of new types of representation, while not detracting (although it’s not clear how you could do that without detracting) from the level of certainty for “non-traditional” marks prescribed by the Court of Justice (not, note, the European Court of Justice, though it it commonly so-called) in Case C-273/00, Sieckmann.

Classification

This is a hot potato currently before the Court in Case C-307/10, IP TRANSLATOR. The main problem in this area is that OHIM will insist on treating an application for everything in a class heading as covering everything in the class, even though there will be stuff in the class that isn’t mentioned in the class heading. Practices in national offices vary (and one of the Study’s most useful contributions is to tell us what each national office is doing). Overwide specifications, whether using class headings or otherwise, lead to cluttering of the register and firmer action than recommended by the Study should be taken. The Study offers a classic SOTBO: OHIM and national offices should agree a common approach. It suggests (more helpfully) that applicants should be required specifically to claim goods or services which might not be understood to fall under a class heading – giving the example of “software” in class 9.

How many classes?

This sort of cluttering could also be reduced if the Community system were not so generous as to allow applications in three classes for the basic fee. The Study suggests that separate fees – application and renewal fees – should be payable for each class.

Acquired distinctiveness

This should be assessed not on a state-by-state basis, as the General Court requires at present, but across the EU. The result will be to allow more marginal trade marks onto the register, which is hardly a step forward and will lead to cluttering. This appears to apply only to non-traditional marks. Why not all? The study also recommends "in accordance with the spirit underlying Article 6quinquies(C) of the Paris Convention, the length of time of an unchallenged and substantial use of a sign should be taken into account for the establishment of acquired distinctiveness”.

Relative grounds

There should be no change from the way OHIM deals with relative grounds – conflicts between registered trade marks and new applications – because it doesn’t have the resources to carry out a proper examination (as opposed to just a search) and work out whether to refuse applications. How can this be squared with the €400 million surplus? This despite 48 per cent of proprietors favouring the change – not an absolute majority, but more than were of the opposite view.

Prior unregistered rights

Relative grounds based on unregistered rights should be limited to nationwide rather than purely local rights.
The mandatory search of the OHIM register for prior registrations should be retained. The Study reports that many stakeholders like it. However, OHIM should be free to offer pre-filing search services in co-operation with national offices – on payment, naturally, of a fee.

Bad faith

OHIM should not start examining bad faith ex officio as a ground for refusal, but it should be a mandatory ground for refusal or cancellation in national offices – which cannot possibly promote consistency.
Even fewer proprietors wanted to change the opposition period from three to two months (as the UK has already done), and the Study thought this was not enough to warrant a change.

Non-use

Should the period of non-use after which a registration is vulnerable to challenge be reduced from five years to three? A trade mark which clutters up the register depletes the stock of available trade marks and may even foreclose the market to new entrants. Although there is an almost infinite variety of trade marks available to be used, the CTM system is already up to number 9 million and something (not all granted trade marks, certainly, but it’s still a very large number which tends towards infinity) and in any case an entrant to the market from outside the EU with an established brand is hugely vulnerable to foreclosure.

The Study also rejects the introduction of declarations of use, despite the fact that they would have massive decluttering power.

Promotional activities outside he core area of a trade mark’s registration should be regarded as a form of genuine use.

Infringement

Clutter is also the product of the extension of what amounts to infringement, but far from reversing this trend the Study suggests rewriting the Regulation and the Directive to accommodate the Court’s lawmaking in cases like Case C-292/00 Davidoff v Gofkid.

Genuine useGenuine use requirements are the second big area of controversy (along with classification issues – probably the bigger of the two) and also before the Court in ONEL/OMEL . The Study recommends that there should be no requirement that a CTM be used in more than one Member State: but by what logic can it be called a Community trade mark if it is in fact nothing of the sort? The Study recognises that there will be difficulty in enforcing a CTM against a later national trade mark in a distant part of the internal market from where the CTM is in use – a co-existence rule to deal (under carefully defined conditions) with conflicts between CTMs and later national trade marks is suggested.

Priority claims

The present system of "confining the examination [of priority claims] to requiring the necessary documentation for inclusion in the files and the congruence between what is documented and what is claimed" is not up for change, because it keeps costs down.

Extended protection

Trade marks that meet the criteria for extended protection, against dilution, based on their reputation – which are now coming to be referred to as “reputation trade marks” - should be regarded as well-known trade marks and accorded the protection of Article 6bis of the Paris Convention. That might be helpful, because no-one has ever had the faintest idea what constituted a well-known mark before. If you are lucky to have a well-known mark, it will enjoy protection against likelihood of confusion as well as against unfair use of, and detriment inflicted on, their reputation or distinctive character, irrespective of whether they are registered or not in the territory where protection is sought.

The meaning of “unfair advantage” is also something that could usefully be clarified, leading to more certainty about the extended protection for reputation marks.

Transit

For the purposes of infringement, use of a trade mark should include use anywhere in the territory of a Member State or (for a CTM) the EU – including custom-free zones, which means a change from the current position. If goods are counterfeit within the meaning of the TRIPS agreement and would be infringing in the country of transit (or the EU) it should be possible to take action against them. This is another controversial matter currently before the Court in Cases C-446 and C-495, Nokia and Philips.

Sanctions
The Regulation might benefit from saying something about sanctions for infringement, but perhaps (the Study concludes) that’s a matter for the Enforcement Directive (2004/48) which is currently under review. However, it does say that it thinks that Community Trade mark Courts should be able to grant Community-wide injunctions in all cases where they are requested – on which, see the DHL case.

Empire-building
The report also recommends that a role for OHIM in the counterfeiting field be considered. This seems to be part of an inexorable and undesirable process by which intellectual property offices arrogate to themselves roles well outside their natural jobs of maintaining registers of who owns what (and, perhaps, making sure that no-one claims what someone else owns, or has rights over something that they shouldn’t have).

Consistent decision-making
The study found substantial room for improvement in consistency of decision-making between OHIM and the national level, evidenced by the proportion of users who expressed dissatisfaction.

A misnomer - or trade mark imperialism?

The Max Planck Institute’s Study on the Overall Functioning of the European Trade Mark System is misnamed. It is not about any - "the" or "a" - European trade mark system: if it were, it would be a work of fiction and the whole project would be ultra vires and the UK Independence Party or someone would be challenging it in the Court of Justice (not, note, the European Court of Justice, nor the Court of Justice of the European Union, which institution includes the Court of Justice in which such a constitutional challenge would be brought). It is concerned with trade marks in the European Union, a large part of Europe but by no means its entirety; and a political unit, not a geographical or cultural one.

I find it extraordinary that the Commission, who should know a great deal better, should continue - arrogantly? -  to refer to it as European, when it is about trade mark law in the European Union. Are there expansionist forces at work here? Or is it just sloppiness? What do the Swiss think, or Icelanders, Norwegians, Belorussians, Ukrainians, Moldovans, Serbs, Croatians, Albanians – even Manxmen, Monegasques, Channel Islanders, and all the other non-EU Europeans? I hope to see some comments posted here ... even if they tell me I am wrong.

Good. Now I can get on with looking at what the Study says about trade mark law.

Max Planck's English

Before I comment on the Max Planck Institute’s Study on the Overall Functioning of the European Trade Mark System, I have to get two things off my chest, and if I do it now I might be more constructive with what I say about the substance of the document. Also, as separate comments they stand a better chance of coming to the attention of those to whose attention they should come. 

First, I am frankly appalled at the quality of the writing, about which I haven't seen anyone else say anything. As a taxpayer, I should not be expected to accept work of this quality. And my dismay is compounded by the discovery that the English version is the only version offered on the French and German-language versions of the Commission's website. So, a German institute prepared the document in English, in which form it is offered to speakers of all the other European Union languages. If only it were good English.

Brits must take great care before criticising the linguistic skills of other nationalities, I know, but this document is so badly rendered into English that there are points at which its meaning disappears. Apparently it came in below budget, but how much better if that money had been spent on a professional translation. It would surely have been perfectly practicable to have a literate native English-speaker polish it up before publication. Sentences like:

Development of IT tools dedicated to support national authorities in the fields of the combat to counterfeiting such as image searchable IT tools (para 1.57)

are inexcusable, but we can read past the incorrect prepositions, wrong parts of verbs and lackof punctuation to uncover the meaning. Likewise:

The Hungarian office has indicated that despite of …

Words like “trasferreded” should not have slipped through the net, “do” does sound like “due” if you learnt English from Hollywood films, “easy-friendly” might be a useful neologism, and the battle to preserve the word “datum” by ensuring “data” remains plural has probably been lost already. “Eventually” is a false friend to most non-native speakers of English.

When a document is so badly presented, one begins to wonder whether it is equally slipshod in substantive areas. I don't think it is - although there is much to criticise - but it would have greater credibility if it were written in good English. At least - so far - I have not been unable to understand what it is trying to say.

Book review: Trade Mark Registrations in Bad Faith by Alexander Tsoutsanis

The law on this topic is surprisingly diverse, even between the UK and the Community trade mark system, and indeed expressed in diverse ways. When applying for a UK trade mark you have to declare that you are using or have a bona fide intention of using the trade mark: there's no such requirement in the Community system. The subject of the work is the requirement - common to the UK and the CTM system - is that a trade mark can be invalidated if it were applied for in bad faith.

This book is a handsome hardback production, as one would expect from OUP. It's 424 pages long, including preliminaries and index, with none of the flab - regurgitated legislation - that one often finds bulking out legal texts. Its scope is not world-wide, though, which isn't clear from the title - it covers the Community trade mark system and the laws of several Member States (including the UK), the country chapters varying greatly - 15 pages on the UK, 17 on Germany, one on Portugal. The CTM regulation gets 55.

Considering its origin as Dr Tsoutsanis's thesis (defended in 2005, which perhaps partly explains why the new EU Member States are dealt with quite briefly) this is far from being a dry, unreadable exposition. The author, who is an Associate with Klos Morel Vos & Schaap in Amsterdam and a lecturer at the University of Leiden, has brought the work up-to-date although to what date is not stated. It was published on 11 November last year, and presumably it took a while to get into print after he finished writing.

On the other hand, having begun life as a thesis it naturally contains everything that the world's greatest enthusiast for the subject thought worth including. That's not intended remotely as a criticism - more like a reflection of my own experience of preparing a doctoral thesis - but it does mean that there is probably more in this work than you'd ever need in practice, more probably than an academic researcher might need either. But if we only ever bought law books that we knew would be 100 per cent, or even a lesser percentage, useful, we would buy very few: and how can we know what we are going to need before something lands on our desks? For the practitioner, I guess the point is that the country chapters about those jurisdictions about which to give advice would cause our PI insurers sleepless nights are for interest only, but the UK and CTM chapters are sufficiently valuable to make this a useful addition to any practitioner's library.

Further details are on the publisher's website here.

Morrison, Manzarek, Krieger, Densmore ... Albeniz: a little non-copyright story

I have known large parts of Asturias by Isaac Albeniz (which I have just heard on Radio 3 played, I think, by Miloš Karadaglić, although the playlist on the website doesn't confirm anything as it's The Gramophone's chart that Rob Cowan's working through) for years. Ever since I bought Weird Scenes Inside the Gold Mine, in fact, which was in about 1973. But notwithstanding my wide musical taste (and Mr Fender's music culture classes at school) I didn't know of Albeniz - and The Doors didn't enlighten me.

Spanish Caravan, the Doors song that (being generous) quotes extensively from Asturias, is credited to the four band members. Albeniz died in 1909, so even in 1968 when The Doors recorded Spanish Caravan (on the album Waiting for the Sun) it was out of copyright, probably everywhere but certainly in the UK and the USA. For the UK, the right to be identified as the author only raised its ugly-or-not-depending-on-where-you-stand head in the Paris Act of the Berne Convention in 1972, and we took 19 years to get it into law, by which time Albeniz had been in Montjuic cemetery for 80 years and his rights had expired before even being conferred. If only the UK had acted more promptly on that change to the Berne Convention! Even so, because the government was so ungenerous about it, the right has to be asserted, so Albeniz's right to be identified as a co-author of Spanish Caravan would not have been secure automatically.

And my point is? An interesting illustration and history lesson, I suppose, and four celebrated rock musicians in a morally suspect place because they didn't name the other composer. There's a pile of literature on the subject, some of which claims that it was Paco de Lucia's Spanish Dance #5, and also that the song was Robbie Krieger's work - not surprising given the subject and the prominence of the guitar, and he plays it very well - and it seems he happily acknowledges Paco de Lucia, but not Albeniz. But who wrote the lyrics? They certainly sound like Morrison's work.

The way forward for Community patents

Last week, the Commission published its proposals on enhanced co-operation to break the decades-old logjam that has denied users the possibility of getting a single patent for the whole of the European Union. Its two-pronged approach comes as part of a package of measures under the rubric "Single Market Act" (doesn't that sound reminiscent of Maastricht?).

Whether users actually feel the lack of a single EU patent is perhaps a moot point - it was generally acknowledged back in the eighties that the European patent system (which was, ironically, built on the foundations originally intended for the Community patent) gave users pretty much everything they wanted. The big issue these last twenty or more years has been patent litigation, addressed unsuccessfully in the European Patent Litigation Agreement and the Uniform Patent Litigation System. This aspect is not dealt with in the latest proposals: the Commission will be coming back to the litigation issue next month.

The two new proposals deal with the creation of unitary patent protection and with the applicable translation arrangements. As with other areas of intellectual property law, and indeed with many aspects of the European project since the 1950s, language issues have been to the forefront, despite 15 Member States creating the London Agreement to reduce the need to translate European patents quite so much.

There are, naturally, massive problems in turning a filing-and-prosecution system like the European Patent system (which ends up with the grant of a bundle of national patents) into a true unitary patent system. The problem is exacerbated if some Member States are't willing to be part of the new initiative. How to deal with validity problems in the new unitary-but-not-quite-unitary system is a major headache, for example. Plenty more to discuss on this topic - but later ...

Even this much isn't certain - Spain has until 8 May to challenge the decision to proceed on the basis of enhanced co-operation. For the creation of unitary patent protection, under Article 118(1) TFEU a qualified majority of the 25 member states involved must vote in favour, as must the Parliament. For the language arrangements, governed by Article 118(2) TFEU, there must be unanimous agreement among the 25 Member States, after consultation with the Parliament.

The proposed language regime will enable applicants to file in any language, but if the language chosen is not English, French or German, the filing must be accompanied by a translation into one of those three languages. The patent would then be granted in whichever of these three languages the applicant chooses. For a transitional period of up to 12 years, patents granted in French or German will need to be translated – at the patent holder's expense – into English, and those granted in English will have to translated into another EU official language.

Copyright is slippery stuff

It can be tricky to work out who has what rights, as a report in The Guardian last week makes clear. The BBC had to halt the planned transmission of a new television adaptation of John Braine's novel, Room at the Top, after a problem emerged over the broadcasting rights. Hardly surprising that this sort of thing can happen, given that copyright is not a type of property that is recorded on a register. As the article explains, copyright owners can hand out licences and options as the mood takes them, and it becomes impossible to work out whether the rights you think you've acquired now are actually worth a thing.

Perhaps the surprising thing is that this doesn't happen more often. In the US, copyright owners and their heirs are given a chance to take back rights that might have been unwisely alienated at some time in the past (see this article by my good friend Lloyd Jassin). The Intellectual Property Foresight Forum has suggested to the Hargreaves Review that there should be a 10-year reversion rule so copyright comes back to the author or his or her heirs. The Forum's paper (written by Prof Martin Kretschmer) observes that a 10-year investment horizon for the cultural industries is quite generous. It certainly seems as if it might have saved the BBC some problems.

Advocate General rejects Belgian file-sharing law

Last week, in Case C-70/10, Scarlet Extended SA v. Société Belge des auteurs, compositeurs et editeurs (SABAM) Advocate General Pedro Cruz Villalon has indicated that an ISP cannot be obliged by national law to block users from illegal file-sharing. A Belgian measure ordering an ISP to install a system for filtering and blocking electronic communications in order to protect intellectual property rights in principle infringes the Charter on Fundamental Rights, in the AG's opinion.

The Court's press release contains more information and the Opinion (in French only) is here.

Using trade marks to fence off the commons

Some IP owners seem to be insatiable. That modern copyright law has been adapted to serve the purpose of corporate interests is trite - why else would the United States have a piece of legislation known colloquially as the Mickey Mouse Protection Act? And why would we be considering increasing the duration of protection for sound recordings in Europe, to avoid the obviously undesirable consequence of early Elvis recordings losing copyright protection? (And what about Kind Of Blue?)

Here is news that Disney is trying to obtain a trade mark (actually a US one, so "trademark") for PRINCESS AURORA. She's a character in Sleeping Beauty, and seems to have been since 1697, but of course that makes no difference for trade mark purposes. In a similar vein, The True Snow White - a site set up to promote a new book telling the old story - rails against Disney's applications to register the heroine's name as a trademark, although it seems to be a bit late - the US register seems to have quite a few Snow White trade marks on it, not all Disney's. Ron Coleman has a posting about the same matter on his Likelihood of Confusion blog.

As I have said, and written, before, the problem isn't with the large corporations that are filing these applications to enclose what everyone believed to be in the public domain. It's a form of evergreening, though it has more to do with bringing back to life intellectual property which has been dead for years - perhaps never lived to begin with. The fault lies with the laws that allow this sort of thing to happen, and if protection of this nature can be obtained it's no surprise that corporate trade mark owners avail themselves of what is on offer. Failure to do so could be a failure by the directors of the company to do their duty, and shareholders could become understandably upset - especially if someone else grabbed the property because the "right" owner hadn't done so themselves.

The fallacy in this argument is, however, that the reason the law permits this sort of thing to go on is because those same corporate IP owners have persuaded the legislature that it should. There is, I think, a simple answer to this problem - and problem it certainly is, because it leads to foreclosure and depletion in the trade mark field and has chilling effects on creativity - which is to force the trade marks genie back into the bottle labelled "indication of origin". Let trade marks do what they were designed to do, and stop this excessive, harmful monopolisation. There's a lot of anger about concerning the excessive strength and reach of copyright and patents - it is high time the trade mark system came in for the same criticism. And we ought to get started on designs, too.

February podcast now available

The February edition of the IPso Jure podcast is now available in the usual way - along with the notes. It includes:

• Various Advocates General’s opinions in the FA Premier League case (about territorial licensing), Nokia (about the counterfeit goods regulation) and Budweiser (about acquiescence) 
• The Court of Appeal reversing the summary judgment in Virgin v Delta – the airline seats patent case 
• The High Court on PLAY DOH and (in another case) on misleading advertising and (in yet another case) on post-sale confusion 
• The Patents County Court refusing to allow the claims in the Media CAT litigation to be withdrawn, on the grounds that it would be an abuse of process 

Can anyone confirm how to construct the possessive form of the plural of Advocate General?

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Fair use? Don't confuse matters!

An article in the Independent this morning (available here) challenges received wisdom about the Hargreaves Review's job. Coverage of the Review has given the impression that it was set up to foist fair use on us, whereas it seems that not all of the small businesses that the government is trying to encourage - by reforming copyright law and designating the area around my firm's office as a centre for all things digital - it hardly qualifies as Silicon Valley, and Silicon Roundabout doesn't have quite the right ring to it. "East London Tech City" somehow doesn't sound like a desirable destination. Just plain Hoxton or Shoreditch seems to have quite enough kudos nowadays.

Anyway, when the PM announced the new initiative (in the old Trumans brewery in Brick Lane) he remarked that Google couldn't have contemplated starting their business in the UK because of the copyright laws. Strange, because they aren't exactly beyond the reach of UK copyright law anyway. Or any other country's copyright law. But they are so big, perhaps, that it's not want the law says that matters, more the way Google want to deal with it. Which might be the same as saying that by constantly challenging existing copyright laws Google is keeping up the momentum of reform.

All this talk about reusing other people's work depresses me. If it's so like someone else's work that there might be a copyright problem, it should be discouraged. People can create their own stuff that tips its hat to others' works, but even parody and caricature is possible without running the risk of copyright infringement - indeed, it's better for it, surely. If the copyright owner feels he or she has a claim for infringement, that might indicate that the rules about infringement need attention, not that we should carve out a huge copyright-free "fair use" area. Perhaps the Court of Justice's Infopaq judgment, raising the originality test to the heights of "author's own intellectual creation", will bring about the necessary changes.

Which isn't to say that the present exceptions can be left alone. They are too vague and not well-enough understood (as I noted a while ago in connection with Ben Goldacre's problems with LBC): they give the absolutists too much power. Which brings me to the point in the Independent's story that really caught my eye: a business set  up to help academics share and manage research papers online, which has problems with universities owning copyright. It seems to me there's a very simple solution there: these universities are, in this country at least, substantially funded out of the public purse, and I believe the same is true of other countries too - even in the US many universities are public ones. By what right do they claim to be entitled to exclusive rights in the work for which the taxpayer has paid? The same paradox in the field of Crown copyright was addressed some years ago - the minister responsible for it being David Clark, whose seat in Parliament I once tried to take from him and came closer than he probably expected - and if universities' copyright is a problem now, let's do something about it. Stop at least one group of absolutists!

Sub-prime patents

An interesting critique of the US patent system and inflationary trends, from The Independent by Stephen Foley, its Associate Business Editor. I like the expression "sub-prime patents", and also "Mutually Assured Litigation" though it's a shame the original acronym couldn't have been preserved. Still, especially for French-speakers, MAL isn't half bad.

Statutory definitions

There are no fewer than 20 definitions of this expression on the statute book, none of them in a statute devoted to intellectual property. They are listed in Gray v News Group Newspapers Ltd & Anor [2011] EWHC 349 (Ch):

i) Section 8(2) of the Atomic Energy Authority Act 1986. 

ii) Section 92A(9) of the Building Societies Act 1986. 

iii) Section 88(10) of the Clean Neighbourhoods and Environment Act 2005. 

iv) Section 861(4) of the Companies Act 2006. 

v) Section 712(3) of the Corporation Tax Act 2009. 

vi) Sections 129(2) and 29(6) of the Finance Act 2000. 

vii) Section 8(3) of the Forestry Act 1967. 

viii) Section 9(1A) of the Income and Corporation Taxes Act 1988. 

ix) Sections 195(6) and 306(6) and 536(4) of the Income Tax Act 2007. 

x) Sections 456(1) and 19(6) of the Income Tax (Earnings and Pensions) Act 2003. 

xi) Section 579(2) of the Income Tax (Trading and Other Income) Act 2005. 

xii) Section 15 of the Law Reform (Miscellaneous Provisions) (Scotland) Act 1985. 

xiii) Sections 33B and 35(3C) of the National Heritage Act 1983. 

xiv) Section 72(5) of the Senior Courts Act 1981. 

xv) Paragraph 2 of the Personal Accounts Delivery Authority Winding Up Order 2010/911. 

xvi) Paragraph 9(6) of the Overseas Companies (Execution of Documents and Registration of Charges) Regulations 2009/1917. 

xvii) Paragraph 2 of the Scientific Research Organisation Regulations 2007/3426. 

xviii) Paragraph 1(2) of the Education (Qualifications and Curriculum Authority and Qualifications, Curriculum and Assessment Authority for Wales) (Transfer of Property and Designation of Staff) Order 1997/2172. 

xix) Paragraph 5 of the Employment Tribunals Extension of Jurisdiction (England and Wales) Order 1994/1623. 

xx) Paragraph 5 of the Employment Tribunals Extension of Jurisdiction (Scotland) Order 1994/1624.

One day I will work through them and see what they all say. Numbers iv and xiv are quoted in the Dictionary.

Trolls becoming respectable?

An IP bank is being set up in Taiwan, reports Taiwan Focus. It won't merely help fund defences against infringement claims - increasingly, the report says, one way in which businesses compete with each other - but will buy up patents and either licence or sell them to Taiwanese businesses. It seems like an entirely laudable enterprise - and it shows just how complicated is the whole non-practising entity/Troll thing. There is no "bright line" test to tell good from bad, although it's usually not difficult to work out which is which.

And perhaps we need another term to apply to IP owners who engage in litigation in the ordinary course of business - as part of competing, perhaps making life difficult for the other side, rather than for the sake of protecting their important assets. Another instance of IP becoming an end in itself rather than a means to an end.

Copyright in a 23-word listserv message?

Only if it's highly original. A California court made clear that there's no copyright in a short listserv posting, in  Stern v. Does, 09-cv-01986 (C.D. Cal.; Feb. 10, 2011) (see Eric Goldman's blog here) which merely sought information about others' experience of a firm of forensic accountants. It took the court 30 pages to do so, a degree of thoroughness that seems disproportionate to the triviality of the claim. The point is made that the first stanza of Jabberwocky (not, as the Goldman blog says, the whole poem) comprises 23 words but displays more than enough originality to qualify for the protection of the copyright laws. I can't imagine an English court would approach the matter very differently - indeed, if a copyright work must be its author's own intellectual creation (per the (EU) Court of Justice in Infopaq) a claim like the one in this case would be a complete non-starter.


As the court said, though in the original with the translation in a footnote, “He will win who knows when to fight and when not to fight.” Sun Tzu, The Art of War 32-33(Lionel Giles trans., Ulysses Press 2007). Perhaps there might even be copyright in a 13 word sentence. Perhaps more important in this day and age, a 57-character sentence. 125 characters (by my count) in the first stanza of Jabberwocky, suggesting there's every reason to believe that copyright can subsist in a Tweet: the listserv message in suit would require a little condensing as it comes in at 152 characters. So, one-fifth longer than Lewis Carroll's fragment but without much more that an iota of originality.

The blogger, Venkat Balasubramani, observes:

A court will not argue with an artist over whether something he or she did was sufficiently creative. Are courts more likely to do this when it comes to written material?

I think that depends what you mean by "artist". The use of that word implies a greater degree of originality - a stronger claim to copyright protection - than anyone's doodle. My creativity in the artistic field is probably on a par with the literary creativity shown by the plaintiff in this case, but I would not consider myself an artist nor would I have the nerve to claim copyright in my "work". No need that I can see to apply different levels of creativity in those two fields.