That Redskins decision: guest post from Chad Smith

In a precedential decision on June 18, 2014, the United States Trademark Trial and Appeal Board (TTAB) granted a petition for cancellation of six registrations for marks comprising or containing the word REDSKINS, for entertainment services, as used by the Washington Redskins professional football team. Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh v. Pro-Football, Inc., Cancellation No. 92046185.  The Board found that the registered marks disparaged Native Americans in accordance with Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a). Judge Bergsman dissented, concluding that the petitioners had failed to prove disparagement by a preponderance of the evidence.

 

The determination of a disparagement claim under Section 2(a) involves a two-part inquiry: 1) What is the meaning of the term in question, as it appears in the mark and as the mark is used in connection with the identified goods and services identified in the registrations?; 2) Is the meaning of the marks one that may disparage Native Americans?

 

As to the first question, the Board concluded that “the evidence overwhelmingly supports a determination that the term REDSKINS as it appears in the marks retains the meaning Native American.” As to the second question, the petitioner needed to show that the term REDSKINS was disparaging at the time each mark was registered between 1967 and 1990.  The Board concluded that  "a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent's services during the relevant time frame of 1967-1990.”

 

Having concluded that the six registrations must be cancelled as required by Section 2(a) of the Trademark Act, the Board next turned to the laches defense which was successfully raised by respondent in an earlier related case in 1999. In the first case, Harjo v. Pro Football, Inc., the federal courts overturned the TTAB’s decision to cancel the marks and ultimately ruled that the claims of the Native American petitioners were barred by laches. (Pro-Football, Inc. v. Harjo, 90 USPQ2d 1593 (D.C. Cir. 2009)).  Here, the D.C. Circuit Court of Appeals found that because the first of the Redskin’s trademarks had been registered back in 1967, the petitioner was time-barred from bringing suit finding that the delay was "unusually long by any standard" and "unreasonable in light of the undisputed facts in this case.” The court therefore granted Pro-Football’s renewed summary judgment motion to dismiss the case based on its laches defense.

 

After a brief summary of the previous case and a general discussion of laches, The Board noted that in the current case, each of the petitioners had recently reached the age of majority, the age from which, according to the D.C. Circuit Court of Appeals, laches began to run.  After stating that the petitioner’s “were entitled to assess the situation and determine whether it was in their best interest to file the petition for cancellation and then act in accordance with that assessment,” the Board held that “respondent has shown nothing more than a minimal delay in seeking cancellation” and such a minimal delay was insufficient to support a defense of laches.

 

The decision quickly gained notoriety and much was written about the continued validity and control over the Washington Redskins name.  However, soon after the Board’s decision, the United State Patent and Trademark Office issued a Media Fact Sheet outlining, among other things, 1) the Board does not have the jurisdiction to stop a business from using a mark that has been cancelled; 2) the Board’s decisions are subject to review in federal court, and no canceled trademark is removed from the register until after such a review is complete. Attorneys for The Washington Redskins have already stated that they plan to appeal the Board’s decision so a final ruling on the fate of the six registrations is still many years away.

 

Until then, the Washington Redskins will certainly continue to claim common law protection over the marks and enforce their rights to the exclusive use and ownership over the Redskins name.  However, public opinion is clearly turning against the continued use of the name.  A majority of the United States Senate is already on record opposing the name, as is the President, Minority Leader of the House of Representatives, both co-chairs of the Congressional Native American Caucus, Civil rights and religious leaders, media figures and NFL reporters, as well as high-profile current and former players.

This post was contributed by Chad M. Smith  of Ironmark Law Group PLLC, Seattle, a fellow-member of the international IP-PG network.

Case C-117/13, Technische Universität Darmstadt

So the Sages of Kirchberg will still trouble an Advocate General in a copyright case. According to Advocate General Jääskinen's opinion in Case C-117/13, Technische Universität Darmstadt, is that a Member State may authorise libraries to digitise, without the consent of the rightholders, books they hold in their collection so as to make them available at electronic reading points.

Pre-exam nerves

This is the third year in which I've prepared students for the external London University LLB exam in intellectual property, and I realise to my surprise that it's the first year in which I have been aware of the date of the exam. I haven't just turned up for a couple of weekends and marked some essays and mock exams: I've had a couple of students apart from those at the Academy this year, which has made matters different, and have also had a lot more contact with at least a couple of the Muscovites than I had in the previous two years. Well, it's all over now: I can't teach them anything new, can't go through any more practice exam questions or record any more mini-lectures. They are on their own - and whether I have helped them get there or not, they are all well-prepared for tomorrow. I trust their pre-exam nerves aren't as bad as mine - it's difficult worrying about an exam when you're not the person sitting it ... Good luck to all of them, although I don't think they need it.

Shanks v Unilever (from Weekly Law Reports)

Here  is the ICLR's report of this important (because one of very few) case on employee inventions, and here is a short summary culled from the report which I believe falls within the permitted act of fair dealing for reporting current events:

‘The time value of money received by an employer following the
vesting of an invention by an employee was not a benefit derived by the
employer for the purposes of section 41(1) of the Patents Act 1977.’

WLR Daily, 23rd May 2014

Corpora

In the course of writing the last post on here - in other words, I suppose, when I was reading the Moroccanoil case, I came across a mention of enTenTen12, a very large corpus of words which was used in the litigation to produce evidence about the use of the word Moroccanoil - and to prove that overwelmingly it was used to indicate the claimant's product. As this was a new and intriguing (the second time I have written the word 'intriguing' today - perhaps I am too easily intriged?) idea to me, I went looking on the Web. I didn't find as much as I had expected, but I did follow a lead to The Sketch Engine, a corpus query system. If I add a bookmark to my browser I probably won't be able to find it if ever I need it, and if I put it here it might assist others too. But I need to educate myself a bit more, because I don't know enough about it.

Moroccanoil v Miracleoil: no passing off

Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686 (IPEC) (29 May 2014)  is a decision of Judge Hacon in what I still prefer to think of as the Patents County Court - although I need to get over that, as the change of name reflects also a change of substance. The somewhat oxymoronically-named claimant sued the supermarket for passing off when it introduced a hair oil (competing with the claimant's MOROCCANOIL hair oil) under the name ‘Miracle Oil’.
 
What's the problem? Surely the names are far enough apart? Well, it wasn't just the name: there was a word-only CTM, but claims relating to that were dropped early on for fairly obvious reasons. In the passing-off claim, the claimant alleged that the get-up and name of Aldi’s product were, in combination, too similar to those of their product. Just look at the photos in the annexes to the judgment! A substantial
number of consumers would mistake Miracle Oil for Moroccanoil, or assume that they shared a common manufacturer or that there was some other trade connection between them.


The evidence showed that the name ‘Moroccanoil’ was distinctive of the claimant's product in the UK: but the get-up without the name could never have become distinctive because it had never been before the public on its own. It was not a Jif Lemon type of case in which the public would not notice the brand name - although clearly it was an attempt to protect get-up rather than product name. The name was the important element, so that was where the goodwill in the business would be found, although the get-up also played a  part.

There was nothing to show that members of the public might assume that Miracle Oil and Moroccanoil were the same thing, that they came from the same manufacturer, or that they were otherwise commercially linked, for example by a licence. Even if any members of the public would be confused there would be too few of  them for the claimant's goodwill to be damaged.


The defendant had intended that Miracle Oil would bring Moroccanoil to mind. The judge considered it had succeeded. That it had done did not make it passing off. There might be problem with rights in the design, and the public might think the way the packaging of the one brought the other to mind to be cheeky, but that wasn't unlawful. There would be no relevant false assumption in the mind of the purchasers, not even initial interest confusion (which I thought didn't exist in European Union trade mark law anyway). Without evidence of a misrepresentation the claim failed, illustrating (if illustration were needed) of the impotence of passing off law to protect against supermarket own-brands. Perhaps copyright and designs law (especially if there had been a registered design) would have filled the gap, and a trade mark registration for the particular colour of the label would have been pretty conclusive, but on the facts of the case these items were not in the claimant's armoury. It shows how important it is, in this day and age, to ensure you collect the widest possible range of intellectual property rights - if the claimants here thought a word trade mark was going to do the job, they were sadly mistaken, and Aldi could easily what Americans might call an end run round the one distinctive mark the claimants did have.

'New exceptions to copyright reflect digital age'

A number of trendy 'exceptions to copyright', additional fall-out from the Hargreaves Review, come into force today, as this Press release from the IPO (now in fact from Big Brother's GOV.UK site, which smacks of everything a Conservative or Liberal government, let alone a coalition of the two, should stand for) reminds us. To my mind it is inaccurate to call them exceptions to copyright: the Act calls them 'permitted acts', and the government should be consistent. The trouble is that there are too few lawyers among our lawmakers these days: professional politicians who have never worked in the real world deal in simple concepts (and probably struggle with more than 140 characters), not nuanced language.


The 'exceptions' do not affect the subsistence of copyright, just its enforceability: they provide defences rather than creating holes in the fabric of copyright, which remains omnivorous. It's a way of rearranging the deckchairs when the real problem is that the ship is sinking under the weight of mundane, not-original-in-the-more-appropriate-sense-of-the-word, copyright 'works'. It hits the wrong target: making 'exceptions' (especially if you wrongly apply that label to them) creates false expectations about how copyright works, especially when they are the product of special pleading.


Still, we all have to know about them (unless your interest in copyright law is limited to passing an examination in the next few days, in which case you probably need to know only the law as it stood on or about 14 February). The new regulations, which you can read by following the links, are:

• Copyright and Rights in Performances (Disability) Regulations 2014
• Copyright and Rights in Performances (Research, Education, Libraries and Archives) Regulations 2014
• Copyright (Public Administration) Regulations 2014

The Patent Office (I will continue to use its proper name) has published a series of 8 targeted guides
about what the changes mean for groups including teachers, researchers,
librarians, disability groups, artists, museums and consumers. Given that they can surely have no value in legal proceedings, and certainly do not constitute legal advice, I wish they would stop wasting public funds (even if it is not taxpayers' money) like this. It would be far, far better if they were in some way to subsidise the small businesses that need advice on these matters but cannot readily afford it (though no doubt they find it possible to afford many other less essential goods and services).


Further changes, concerning private copying and parody and quotation, remain stalled in the legislative process: a small relief, though they are only likely to be delayed, not lost.

Government webpage forSPCs

If you need to apply or extend a supplementary protection certificate  you can now do so online, and also find associated resources. This new services is part of the gigantic and Big Brother-ish (to my mind) GOV.UK website. I am sure it will prove extremely popular. Thanks to the SPC Blog for the information: read their story here.

Intellectual Property Act receives Royal Assent

Lords Hansard text for 14 May 2014 (pt 0002) reveals that the Intellectual Property Act has received Royal Assent, which is probably a good moment to write about it. Watch this space and I will write some thoughts here later.

Intellectual Property Act receives Royal Assent

Lords Hansard text for 14 May 2014 (pt 0002) reveals that the Intellectual Property Act has received Royal Assent, which is probably a good moment to write about it. Watch this space and I will write some thoughts here later.

Online IP textbook: patents chapters updated

The five chapters on patents in my online book (click on the heading in the left-hand sidebar) are now up-to-date. There is some more polishing to do on them but all the material, except a lot of probably unnecessary detail on exclusions, is now included.

Interested in learning a bit about the Unitary Patent and the Unified Patents Court?

If so, listen to the 'Run Through' lecture I have just recorded, and if appropriate claim half-an-hour CPD (for which you'll have to request the multi-choice questions and pay a very reasonable £10 plus VAT).

Solicitors, do your CPD here

You can satisfy some of your SRA-imposed CPD obligations here, by listening to my recorded intellectual property lectures and completing and submitting to me a short multi-choice questionnaire, so I have a record of who's used the service if the SRA want to see it. The lectures themselves remain free to listen to, but if you want to claim CPD points for listening to them there is a modest charge - £20 plus VAT, making £24 in total, for each session, payable the easiest way possible, through PayPal. Accreditation isn't cheap! The lectures mostly qualify for an hour's CPD, though some of the specialised ones will be shorter (and perhaps cheaper).
This service is provided through Motor Law Publications Limited, which is accredited as a CPD provider with the SRA. Barristers are able to claim credits for unaccredited CPD activities, so it should work for them too - but please satisfy yourself that it meets your requirements. If you are regulated by IPReg, please check with them.
I will be resuming my monthly podcasts in the near future so there will be further opportunities to earn CPD points here.

A Run Through Patents Part 2 now available

I've now recorded the second part of the Run Through Patents lecture - follow the links from the sidebar to the Run Through page where you can download the MP3 file (about 42MB, and 45 minutes). Please let me have any comments (good or bad) if you listen to it!

Svensson

The Court of Justice decision in Case 466/12, Svensson v Retriever Sverige, came just before the cut-off date for University of London exams and probably those of other institutions too, so (apart from its inherent importance) I need to alert my students to what it says. Here is a link to the press release  on the Curia website and here's the headline from it:

The owner of a website may, without the authorisation of the copyright holders, redirect internet users, via hyperlinks, to protected works available on a freely accessible basis on another site.

The question in the case was whether there was a communication to the public when the defendant provided a hyperlink on its website to the work of the copyright owners. The Court said yes, providing a hyperlink did amount to a communication and it was to a public, but it was not a new public in the sense of being a public that had not been in the copyright owners' contemplation when they authorised the original communication to the public. (The copyright owners were journalists whose work was communicated to the public initially via a newspaper's site.)

So far so good, with one big reservation which I'll mention in a moment. The Court then considers whether it makes a difference if clicking on the link brings up the copyright work in such a manner that it appears to be on the defendant's website rather than the newspaper site where it was originally published (if I may use the word loosely). No, it says, no difference: which must also be right, as the copyright work remains the same and the context in which it appears is irrelevant to that. My only reservation about that is that the original communication was to readers of the Göteborgs-Posten, and we are now asked to equate that with communication to users of Retriever Sverige. Surely that calls into question whether the public is the same in each case? And it looks to me as if people will go to the Retriever website (assuming I have found the right one) for rather different purposes - individuals looking for news would go to the GP website, displaying a preference for that particular avowedly liberal newspaper, whereas Retriever seems to be collecting news stories for its clients (who I imagine are probably corporate) from across a wide spectrum of sources. In other words it might introduce readers of, say, Dagens Industri to stories in GP which they otherwise wouldn't read. Just like in England, a reader of the Financial Times might find his or her way to a story in The Guardian which they would not normally read, via such a website.

Then, the Court asks whether it would be different if the original website proprietor restricts access. I can't tell whether GP does - my knowledge of Swedish is quickly exhausted (utan bilen stannar Sverige, as the sticker given to me by a Swedish friend many years ago said is about the extent of it. I find to my surprise that the slogan is still in use, at www.utanbilenstannarsverige.se, and I did spell it correctly! But say the newspaper were a notorious paywall-user, like The Times, and Retriever took you round the end of the paywall, or through a hole. Or suppose, like the FT, the paper offers visitors to the website a monthly ration of free articles, after which they have to pay for a subscription. Then, the Court says, the new readers would not be among those to whom the story was originally communicated. (My FT example is not a good one, though, because it would all depend on whether members of the group had used up their monthly ration - that would make it very complicated.)

Finally, the Court addresses the question whether Member States can make the concept of 'communication to the public' wider than it is in the Information Society directive. To which the answer is 'of course they can't', in rather more diplomatic language.

Let's go back to the Court's reasoning that there are different 'publics' to be considered. The plural form of the word does appear in the Oxford English Dictionary, but either as an abbreviated form of 'public houses' (which is not what the Court had in mind) or as sociological gobbledegook. Rather than concern ourselves with that, let's look for usages of the word 'public' in the intellectual property universe.

First, it appears in the copyright legislation. There is, for example, a definition in Part 1 of the CDPA of 'public library', and here the adjective is the opposite of 'private'. That raises interesting questions about libraries which you have to pay for, such as the London Library: could it be said to be open to the public? (Like the law courts, which are said to be open to everyone in the same way as the Ritz Hotel, in an aphorism unreliably attributed to Darling J, or LJ according to some references). But section 18 is more relevant to the present matter: the issue to the public of copies of a work is an act restricted by copyright. The fact that this is closely related to section 18 (communication to the public) suggests that this is the right place to look. And there a work is either communicated to the public, or it isn't: it's a straightforward binary thing, which doesn't require any consideration of which public. It assumes that the public is a single unitary entity. This view seems to be supported by the Court's earlier decision in Case C-5/11, Donner, in which advertising was directed to local members of the public and a delivery and payment method was made available to them amounted to issuing copies to them. In other words, the important thing seems to be that the work be issued to members of the public, which makes it unnecessary to consider whether there be in fact a plurality of publics.

Consider also the Patents Act 1977, section 2. The state of the art consists of everything that has ever been made available to the public, anywhere, anyhow (I paraphrase). 'Made available' is passive where 'issued' is active, but the notion of 'the public' is surely the same. There is no need to ask 'which public?'. Either the public has it, or it remains private. I think the Court's analysis, based as it is on there being a plurality of publics, is misguided: there is only one public, and if copies have been made available or a work has been communicated to members of it that is all that matters. There is no new public to whom the work may be made available. It might have been communicated to a limited group, not to the public (behind a paywall, perhaps, though the mere fact that it has to be paid for does not necessarily change whether it is available to the public), in which case providing hyperlinks would amount to communicating to the public, but that is very different. The directive talks about communicating to the public: to read it as if the indefinite article were used is quite wrong. And it's likely to mystify people whose native language has neither definite nor indefinite articles! К сожалению, студенты!

Law Commission reports on remedies for groundless threats

Intellectual property law – achieving a balance between the right to enforce and protecting innovation - Law Commission is the title of the Law Commission's report on remedies for groundless threats. The Commission says on its website:

In our report, we recommend that:

• the protection against groundless threats of infringement proceedings should be retained, for patents, trade marks, registered and unregistered design right but it should be reformed;
• a threats action may not be brought for all threats made to a primary actor; this is already part of patent law but should also apply for the other rights. Primary actors are those who have carried out primary acts, such as the importation of goods or the application of a mark to packaging. Primary acts can cause the greatest commercial damage to a rights holder;
• it should be possible to communicate with secondary actors, that is those who have not carried out primary acts.  This will be where there is a legitimate commercial purpose behind the communication and where there are reasonable grounds for believing that the information provided is true. Guidance as to what may be said should be provided by the legislation;
• for patents, it should no longer be possible to avoid liability for making threats by showing that at the time the threat was made the threatener did not know, or had no reason to suspect, that the patent was invalid; and
• a lawyer, registered patent attorney or registered trade mark attorney should no longer be jointly liable for making threats where they have acted in their professional capacity and on instructions from their client.

A Run Through Patents - part 1

I have uploaded the first of two recorded lectures on patents - download if from the Run Through page on this site. It covers obtaining patent protection, including patentability: next I will deal with ownership, employee inventions and infringement.

No lien over database

In Your Response Ltd v Datateam Business Media Ltd [2014] EWCA Civ 281 [2014] WLR (D) 131 (14 March 2014) the Court of Appeal (Moore-Bick, Davis, Floyd LJJ) held that, because there is nothing about a database that can be possessed, it is not possible to exercise a lien over it - as a mechanic would over a car he has repaired and not been paid for.

Not surprising: but someone must have thought it was worth a try!

The Copyright (Regulation of Relevant Licensing Bodies) Regulations 2014

The Copyright (Regulation of Relevant Licensing Bodies) Regulations 2014 came into force on 6 April. The Regulations support relevant licensing bodies' self-regulatory codes of practice. As the Explanatory Memorandum says:

The Secretary of State may direct a relevant licensing body to adopt a code that complies with the specified criteria if three circumstances are met. These are that the relevant licensing body is not a micro business; that it has no code of practice or the one that it has does not comply in material respects with the criteria specified in the regulations; and that it has not amended its code of practice within 49 days of being informed by the Secretary of State of the noncompliance. The Secretary of State may then impose a code on a relevant licensing if the body fails to adopt an appropriate code within a further 49 days of having been directed to amend its code. The Regulations also enable the Secretary of State to appoint an independent code reviewer and an ombudsman, and to impose sanctions in the form of financial penalties on the relevant licensing body for certain breaches of the Regulations.

You can read the  platitudinous press release here, and from there you can follow a link to official 'legal guidance'. Not advice, I note.

'Internal' distribution does not mean GPL is not invoked

Chicago software licensing attorney Evan Brown  notes an interesting case, XimpleWare Corp. v. Versata Software, Inc., 2014 WL 490940 (N.D.Cal. February 4, 2014), one of very few which address the workings of the General Public Licence (in suit, GPLv2) - a document which becomes more and more important every day.
The plaintiff (as they still call them over there - how quaint! Oh, sorry, I forgot that British irony would be completely lost on any American readers) wrote an XML parser and made it available under GPL v2. The defendant acquired software from another vendor that included the code, and allegedly distributed that software to parties outside the organization. The plaintiff argued that the defendant did not comply with the conditions of the GPL (no attribution, no copyright notice, no reference to the plaintiff's source code, no offer to 'convey' as the GPL puts it the source code), and sued for copyright infringement.
The defendant's argument was that its 'distribution' of the software was merely internal, mainly to its own financial advisers, so the GPL's requirements were not triggered. The court rejected defendant’s argument, looking to the allegations in the complaint that defendant distributed the software to vendors in India, as well as providing it to 'thousands of non-employee financial advisers.'