For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Wednesday, 31 December 2003

NEW YEAR BOOST FOR THE PUBLIC DOMAIN

What’s so special about 1 January, asks the IPKat? No, it’s nothing to do with the New Year ― it’s the date on which you can copy all the stories, paintings, musical compositions and other works that fell outside the scope of copyright protection at the stroke of midnight on 31 December. This is because the copyright term does not expire on the anniversary of an author’s death but at the end of the year in which he or she dies.

In countries which protect authors’ works until the end of the 70th year following the year of death, the following are now out of copyright and their oeuvres may be copied with impunity:

John Galsworthy (born 1867): British Nobel Prize winning novelist and author of the forerunner of all today’s soap operas, The Forsyte Saga;

Calvin Coolidge (born 1872): 30th President of the United States, Coolidge was the author of some of the greatest sound-bites ever coined and also wrote a syndicated column of political commentaries after his retirement;

Adolf Loos (born 1870): influential Austrian architect some of whose works can be seen here, here and here

Stefan George
(born 1878): German poet who was influenced by classicism and by Nietzsche;

In those countries which still protect authors’ works until the end of the 50th year following the year of death, the following are now out of copyright:

Sergei Prokofiev (born 1891); Russian composer of works such as Peter and the Wolf, as well as much orchestral, ballet and chamber music (click here http://www.bbc.co.uk/music/profiles/prokofiev.shtml for audio clips);

Raoul Dufy (born 1877): French artist and “the granddaddy of modern chic”;

Django Reinhardt (born 1910): Belgian gypsy jazz guitarist and founder member of the Hot Club de Paris quintet (discography and some audio clips here;

Dylan Thomas (born 1914): Welsh poet and playwright, author of the celebrated radio play Under Milk Wood ;

Eugene O’Neill (born 1888): American playwright and Nobel Prize winner, author of Mourning Becomes Electra.

There is something missing from this list: women. The IPKat invites readers to post, below, the names and details of significant women whose works are now freely available in life-plus-70 or life-plus-50 countries.

GOING DOWN IN HISTORY

The IPKat’s masters, Jeremy and Ilanah, are preparing a research paper called “Going Down in History: Does History Have Anything to Offer Today’s Intellectual Property Lawyer?”. We are set to deliver this paper at a Research Seminar funded by the Economic and Social Research Council on Friday 23 January. It is our contention that the discipline of history, if used properly, may shed valuable light on our understanding of intellectual property law and practice, but that its utility is limited by methodological and other issues. We’d quite like some feedback on the first draft so, if you’d like to read it, email us and we’ll send you a copy of the text as it stands so far.

Tuesday, 30 December 2003

OPEN ALL HOURS

Don’t those plucky people at the Patent Office ever take a holiday? Like the IPKat, they’ve been hard at work and today they’ve posted the new directions for filing patent applications by electronic means as well as a new trade mark inter partes hearing booking form.

Workaholics click here, here and here


Monday, 29 December 2003

NEW DOG ON GUARD, SO TAKE CARE HOW YOU COMMUNICATE

Today in the United Kingdom the Office of Communications (Ofcom), the new super-regulator for the television, radio, newspaper and telecommunications industries, assumed its full powers. Ofcom has been formed through the merger of five separate watchdogs: the Office of Telecommunications (Oftel), the Radio Communications Agency, the Broadcasting Standards Commission, the Radio Authority and the Independent Television Commission. The new body, which will wield great power over Britain's communications sectors, publishes its first annual plan on 19 January. Even before doing so, Ofcom has already commenced a review of public-service broadcasting before the renewal of the BBC charter. This review will decide whether the BBC should continue to be sole recipient of the compulsory licence fee which is levied on all UK TV owners whether they watch the BBC or not. A further review could result in a market to buy and sell airwaves for mobile phones, radio and TV broadcasting, two-way radios and pagers.

The IPKat agrees that the previous five-way split between industry-specific supervisory bodies stopped making sense once media convergence set in and the same content could be disseminated through different communications channels. Ofcom will however be judged by its performance, which we all await with eager anticipation.

More on media convergence here, here and here
Media regulation in the United States: click here for the FCC

CANADIAN LIBERAL CANDIDATE ILLIBERAL WHEN IT COMES TO PARODISTS

There’s a storm brewing in Canada. The IPKat learns (via boingboing) that the writers of PaulMartinTime.ca, a site parodying Paul Martin, the Canadian Liberal prime ministerial candidate, have been threatened with legal action by the webmaster of paulmartintimes.ca. The people behind the official site, while acknowledging the parodists’ free speech rights, have said that the parodists have gone too far because, in basing the design of their site on the official site, they have appropriated Paul Martin’s copyright-protected art work, graphics and the style sheet. They have told PaulMartinTime.ca that its writers are free to express their opinions but this freedom does not stretch to the right to invade other peoples’ property rights. The parodists were told to make the necessary changes by 5pm on 24 December or face legal action.

The IPKat notes that the appearance of the two sites is very similar, but the parody would not work nearly as well if they weren’t. He thinks that free speech will sometimes justify encroaching on the property rights of others. It’s not just important to get the content of the message across, but also to bring it to the public’s attention. This may be achieved more effectively by a parody of the object of the parody’s style, even if this means allowing the parodist to copy copyright-protected code that lies behind the way a website looks.

Learn more about Canadian politics here
Other parodies here and here


FRENCH AUTHOR FINDS SOMETHING FISHY ABOUT DISNEY’S NEMO

The Telegraph reports that a young French author, Franck le Calvez, is suing Disney, claiming that it copied his idea for a lovable cartoon fish in its hit film Finding Nemo. Le Calvez says that Disney’s clown fish bears an uncanny resemblance to his creation, Pierrot Le Poisson-Clown, which he claims he conceived in 1995. He is now suing for damages for copyright and trade mark infringement, demanding the withdrawal of all Nemo books and merchandise from French shops. Disney has hired five lawyers to fight the case.

Le Calvez, who is also a marine lawyer, suspected infringement after he learned of the Disney movie's release in the US earlier this year. There was a striking similarity between Nemo and Pierrot, which he created when he was a student and aspiring film-maker. This wasn’t surprising, given that one clown fish looks much like another. But the plot seemed strangely familiar, too. In Finding Nemo, the fish lives in an anemone and loses his mother when she is swallowed by a predator. Pierrot also lives in an anemone; his life is blighted when his father falls prey to a scorpion fish. One of the characters Pierrot encounters is a cleaning prawn. A cleaning prawn also turns up during Nemo's odyssey.

Le Calvez maintains that French bookshops have stopped stocking his work, saying it is too similar to Disney's version or that it is he who has plagiarised the Disney work. When he created Pierrot, he took a screenplay featuring the character to a number of production companies in France but could not arouse any interest. In 2000 he gave up, deciding instead to turn Pierrot into the hero of a children's book. He invested £40,000 in publishing 2,000 copies, which sold out in November 2002. He then brought out a second book and, in February this year, registered his clown fish as a trade mark in order to produce Pierrot souvenirs. Disney denies plagiarism and says Nemo is 100 per cent original. An initial hearing before a French judge has been scheduled for February.

The IPKat wonders how far the ripples of this dispute can spread. The trade mark issue is local to France, since trade marks are territorial in their nature. But if there’s been an infringement of copyright, it could affect Disney’s ability to market Finding Nemo in all Berne Convention countries.

Clown fish here and here
What Finding Nemo character are you? Click here to have your intelligence insulted
Other Nemos here, here and here
Pierrots here, here and here
Squirrel fishing here

Sunday, 28 December 2003

CHILDREN’S PHOTOS? ONLY KIDDING

BBC reports that, after staff placed the spy camera inside an office clock in an attempt to stop a series of weekend thefts, the head teacher of Walton High School, Stafford, has written to parents to reassure them that children were not being filmed. Under local authority guidelines, schools are not allowed covert filming without permission. Although the camera, discovered by contractors working at the school, was focused upon the office, there were concerns that an adjacent classroom was in view. Staffordshire County Council's Department for Education and Lifelong Learning said that permission for the camera had not been obtained from the head teacher, but that no pupils had been recorded. Said a nameless functionary of the Department: "We are satisfied that the staff involved were not aware of this and that their actions were well-intentioned but misguided. They have been told that there must be no repetition. No formal disciplinary action has been taken".

The popular British pastime of covert filming has recently been savaged by the European Court of Human Rights in Perry v United Kingdom as an infraction of Article 8 of the European Convention on Human Rights (now part of the UK’s complex web of privacy laws which makes up for a single right of privacy). Is it not ironic, muses the IPKat, that the person who gets into trouble isn’t the people responsible for the thefts but the man who is trying to do something to detect the wrongdoers.

Smile, you’re on Candid Camera
Candid Camera for criminals
How to shoot children here
Spy cameras here

WHAT'S THE SECRET?

BBC reports that Celebrity biographer Cliff Goodwin hoped to release his book Catherine Zeta Jones: The Biography in time for Christmas. However, after spending months researching the project, he was forced to abandon the idea after solicitors acting on behalf of the actress threatened him and Virgin Publishing with legal action. Goodwin, who had previously written biographies of thespians Richard Harris and Sid James, had already encountered problems when Zeta Jones' parents, who rarely speak to the media, refused to cooperate.

The IPKat wonders what information in Goodwin's book concerning the publicity-conscious actress made her instruct her lawyers to threaten legal action. He also wonders what the lawyers wrote to produce a dramatic last-minute climb-down by the publishers. The usual prize is offered for the best speculation as to what specific information the actress was anxious to suppress.

Saturday, 27 December 2003

POP GOES THE TRADE MARK

The BBC reports that the pop star Robbie Williams has registered his name as a trade mark for “goods ranging from videos and CDs to crayons and napkins.
He is also protected for "printed matter", which includes calendars”.

The IPKat is a little puzzled. Thorough mouser that he is, he paid a visit to the Patent Office website and searched for Mr William’s trade mark. Lo and behold, he found both a CTM registration and a UK registration. To his surprise though, while the BBC’s story was dated 26 December 2003, the registrations were dated 11 September 1998 and 19 June 1998 respectively. The IPKat suspects that either: (i) the BBC were trying to “create” some news over the quiet festive period or (ii) that the Patent Office has been trying to drum up trade by issuing a press release explaining how the trade mark system works and has used Robbie Williams as an example to attract people’s attention. The IPKat notes that the story does go into a great degree of detail about the workings of the system, though perhaps not enough since, according to the BBC, “The 29-year-old is covered for a wide range of music and video recordings as well as clothing merchandise under the terms of the patent”. (Yes – the IPKat is a pedant, and what’s more, he’s proud to be one).

The IPKat also doubts that Robbie Williams will get a particularly wide scope of protection. There are many people whose names are variations of the underlying name Robert Williams who, even in the case of confusion, will be able to rely on the own name defence to trade mark infringement.

Let him entertain you here, here, here
Potential infringers here, here, here, here and here


Friday, 26 December 2003

UP AGAINST THE WAL-MART

Never having shopped at Wal-Mart, the IPKat prefers to send his human owners out to do his shopping for him. Nonetheless his whiskers are sensitive to the word in the street, which is why he’s always on the look-out for neologisms. And he’s just found a fresh one: the Word-Spy website reports on an unflattering use of the WAL-MART brand name in common parlance: “the Wal-Mart effect”. Word-Spy defines this as follows: “The economic effects attributable to the Wal-Mart retail chain, including local effects such as forcing smaller competitors out of business and driving down wages, and broader effects such as helping to keep inflation low and productivity high”. This effect, which was described in powerful terms by Naomi Klein in No Logo, may be feared and hated by small traders but is presumably music in the ears of Wal-Mart’s private and institutional shareholders, for whom it is synonymous with prosperity and financial success. The pejorative term “Wal-Mart effect” may be contrasted with the previous neologism incorporating WAL-MART, the use of the somewhat cuddly endearment “Wal-Martian” to describe people who shop (or work) there.

The IPKat thinks brand owners can learn a lot from the way the public incorporate brand names into their everyday speech. McDonalds didn’t get the hint when the “Mc-“ prefix they so vigorously defended became attached to terms like “McJobs” and now they are facing an uphill task in regaining their former public popularity. Will Wal-Mart be the next brand to go from hero to villain? If the presence of hostile websites is anything to go by, the Beast from Bentonsville has left it rather late to salvage its former image.

Visit Wal-Mart here
Visit Wal-Mart’s critics here, here, here, here, here, here, here and here
Work for Wal-Mart? Looking for a career move? Click here

Thursday, 25 December 2003

IT’S NOT JUST CHRISTMAS DAY …

…but also the day the Madrid Protocol and the Madrid Agreement take effect in Iran, making the Islamic Republic the 74th to join the Madrid system. The new Iranian trade mark law to implement Madrid at national level still awaits the approval of the Iranian Assembly.

The IPKat is pleased to see Iran join the two Madrids, but wonders about the chances of Iran acceding to another significant IP treaty.Under current Iranian law the registration of trade marks for beer in Class 32 and other alcoholic beverages in Class 33 is strictly prohibited. Iran has not yet become a Member of the World Trade Organization: to do so it would have to accept Article 15(4) of the TRIPs Agreement, which states: “the nature of the goods or services to which a trademark is to be applied shall in no case form an obstacle to registration of the trademark”.

Alcohol and Islam here, here and here
Arguments in favour of banning alcohol here and here
Arguments against banning alcohol here and here
Re-enact the Prohibition here

NON-DENOMINATIONAL SEASONAL GREETINGS

The IPKat and his masters wish all their readers a happy Christmas, Chanukah, or whatever else you're celebrating.

Ho, ho, ho here, here, here and here
Oy va voy here and here

THE SOURCE 2

Founded in 1887, Simpson Grierson is one of New Zealand's leading law firms, with 170 lawyers and a substantial, thriving intellectual property practice. The IPKat, who has enjoyed perusing the firm’s newsletters, has just received a copy of the first issue of its new twice-yearly magazine, Source. In appearance it’s like a glossy, upmarket lifestyle magazine, though the text is dedicated to the firm’s legal and commercial achievements in recent months. Cover girl, partner Shelley Cave, shows an elegant pair of legs. Source also boasts food and wine pages, a rare event for any law firm’s promotional issue.

The IPKat is a little surprised at the choice of the name Source. The Source, as is well known to readers of this blog, is the name of the magazine that has had a recent spat with Eminem over the distribution of some old, racist raps. Source is also the name of a leading photography magazine, a media magazine and the magazines for Queensland-based IT professionals, the Eagle Brook church and Newtonabby Council. Doubtless the firm is better equipped than most to defend itself against any charges of title-copying or confusion, but it would have been easier to use a name no-one else was using in the first place.

The Source of Wisdom? Try here, here, here, here and here

THE SOURCE 1

On 22 December the IPKat reported on Eminem’s success in blocking the release of one of his early recordings in The Source. Now mtv.com has reported that Judge Gerald E. Lynch, the same judge who conducted last week’s copyright infringement hearing, has now allowed the magazine to go forward with limited excerpts. This Monday Lynch authorised The Source to release up to 20 seconds of the recording, according to a spokesperson for the magazine, saying it fell within the magazine's right to fair use for the purpose of criticism. In a statement The Source applauded the judge's decision as a victory. The magazine has yet to decide which 20-second segment of the nearly six-minute freestyle it will use.

United States statutory provision on fair use here; commentaries on fair use here, here and here

What can you do in 20 seconds? Click here, here, here or here to find out. 20 Seconds of Pleasure here

COPYRIGHT FOR BIRD-BRAINS

The BBC reports that shoppers in Wakefield, Yorkshire have had the dubious pleasure of some rather unusual motivational “music” as they finish off their Christmas shopping. Once an hour, the sound of gobbling turkeys is piped from the city’s media and creativity centre. In fact, the recording is part of an “audio sculpture” entitled “what do people in Turkey call turkey?" by Jay Jones, a Californian artist. The work replaces another “audio” sculpture - "Countryside? Ceci, une vache", which comprised the sound of two cows mooing.

The IPKat has been pondering how such recordings of everyday noises can be protected by copyright. Certainly there will be rights in the sound recording but it may be hard for Jones to show that the meat of his “audio sculpture” fits into any of the classes of works listed as being eligible for protection. The artist may have a hard job convincing a court that his piece actually is a sculpture. He may have more luck arguing that it is a musical work. Musical works are defined in s. 3(1) of the CDPA as "a work consisting of music, exclusive of any words or action intended to be sung, spoken or performed with the music”. What exactly is meant by music isn’t considered. For example, must it be capable of being depicted on a stave? Can everyday noises, or at least an arrangement of them be considered music? Proving copying may also be difficult though since the sounds are so commonplace. As with much conceptual art, the original aspect is not so much the execution as the idea of calling the item in question “art”. The IPKat though is rather keen on the idea of performer’s rights for chickens.

How to prepare turkey here
How to drink turkey here and here
Talk turkey here, here and here


Wednesday, 24 December 2003

MATTEL BURY GHOST OF 1964 BARBIE SETTLEMENT

According to a Reuters news item on findlaw.com the US 9th Circuit Court of Appeals has told Mattel it can press ahead with a lawsuit to enforce an agreement made in 1964 with German company Greiner & Hausser that settled charges that Mattel had copied the design for the Barbie doll. In 1961 Greiner & Hausser had accused Mattel of infringing its “Bild-Lilli” doll design, which was based on a comic-strip character. The dispute was settled in 1964 by the payment of a nominal sum but Greiner & Hausser brought fresh proceeding in Germany in 2001, claiming it had been defrauded by Mattel when it entered into the earlier deal and seeking royalties that could amount to hundreds of millions of dollars. Mattel’s response was to file its own lawsuit in Los Angeles in order to get a court to enforce the terms of the original settlement. A lawyer for Mattel was reported as saying that this week’s decision could be the last word in the case because the German courts have already rejected the new lawsuit seeking royalties.

The IPKat marvels at the frequency with which parties to freely negotiated agreements to settle IP disputes seek to avoid compliance with them. The bust-up between the former World Wrestling Federation and the World Wide Fund over use of the talismanic WWF trade mark is another dramatic example.


Some other Lillis: Lilli Hill, Lilli Lux and Lilli Burlero
Click here for a pretty picture on the Trademark Blog

DeCSS LEGAL SAYS NORWEGIAN COURT

Reuters reports that an Oslo appeal court has found that Jon Johansen, the youthful Norwegian writer of the DeCSS computer program that unlocks the anti-copying protection on DVDs, has not broken any laws. Johansen, who claimed that his code was to enable Linux-users to play DVDs, also disseminated it over the internet. Additionally, the court found that there was no copyright infringement where consumers made back up copies of DVDs (and by analogy CDs) that they owned in case the originals were scratched for example. The claimant now has two weeks to appeal to the Norwegian Supreme Court.

The IPKat welcomes the decision in as far as it opens the way for DeCSS to be used to decode technological protection measures where the reason for wanted to copy the DVD is legitimate e.g. the creation of back-up copies of DVDs. However, he does not condone the use of DeCSS by those who just want to copy DVDs to avoid paying for the copyright work themselves.

Fancy yourself as a code-cracker? Click here, here, here and here
More crackers here, here and here


Tuesday, 23 December 2003

TIME TO BE AN INFRINGER

The Register reports that i-Desk Solutions, a British company that builds computers into desks, has won an injunction against Time Computers' parent company to prevent the PC supplier from offering a desk-integrated computer of its own. i-desk's injunction was granted last week after the judge, Mr Justice Patten, ruled that the Time Group had "deliberately" and "disgracefully" attempted to copy and pass off its own systems as i-Desk products. The i-desk system, aimed at colleges and businesses, bolts a slimline PC into the desk's metal frame. An LCD monitor is mounted on to the tabletop. Each desk is designed to connect to others, jigsaw-fashion, for greater stability and in the classroom. Patent protection was sought in 1999 but has not yet been granted. The Court ordered the Time Group to pay an initial £200,000 towards i-Desk's legal costs pending a full damages hearing early next year. The judge also ordered Time Computers to provide i-Desk with the names and addresses of all customers who bought its product. This case, under the name Intercase UK Ltd and i-Desk Solutions Ltd v Time Computers Ltd and another, will be reported in full in either the March or May 2004 issue of the European Copyright and Design Reports .

The IPKat notes that, although patent protection was not yet available, i-desk could sue for infringement of its unregistered design right and for passing off. This shows the extent to which intellectual property rights are capable of overlapping with each other. If the European Court of Justice had taken a more liberal line in Linde, i-desk would have been able to register the desk’s shape as a three dimensional trade mark for itself, which would have handed the desk makers a choice of four different species of IP right to sue on in respect of the same infringing acts.

Other (non-infringing) designer desks here and here
Desk toys here, here and here

US DECISION TAKES A (DOWN)LOAD OFF ISPS' MINDS

The New York Times reports that the US Court of Appeals has held that copyright owners cannot force internet service providers to disclose information about downloaders without a court order approved by a judge. A previous district court decision had allowed owners to compel the disclosure of downloaders’ information after presenting a subpoena submitting to a court clerk without the need for a judge's approval. RIAA has condemned the decision, saying that it will no longer be able to warn people that it is considering bringing action against in advance, giving them the opportunity to settle. Instead, it claims that it will have to bring John Doe cases against anonymous downloaders and only actually make personal contact once court proceedings are under way and their identities are unmasked.

The IPKat welcomes the decision. He things that downloading copyright-protected music isn’t a good (or legal) idea, but that this doesn’t justify the suspension of due process of law in tracing downloaders.

Full text of the decision (via the Trademark Blog) here
John Does isn’t as anonymous as he’d like – meet him here, here, here and here


Monday, 22 December 2003

BRITISH GAS BLAMES DATA PROTECTION ACT AS COUPLE DIE AFTER GAS IS CUT OFF

The BBC reports on the sad case of an elderly couple who died after their gas was cut off, leaving them with no central heating. The couple had fallen into arrears on their bill and owed British Gas £140.62. British Gas claims that it could not alert the social services to their plight because, under the Data Protection Act, it is not allowed to reveal details to peoples’ debts to third parties without the permission of the debtors. The coroner in the case, Dr Paul Knapman, has said that he will write to the Information Commission, informing him of the circumstances of the couple’s death and inviting him to take such action as he feels fit. British Gas has called for a review of the law and Help the Aged has expressed concern about the current system.

The IPKat, while acknowledging the importance of privacy, is unhappy about the prospect of the requirements of the Data Protection Act preventing bodies from communicating potentially life-saving information to other interested bodies. He wonders if an exception where there is a risk to the life or well-being of the data subject or third parties can be incorporated into the act. He notes the similar ongoing controversy concerning the failure of the police force to disclose details of the previous allegations against the convicted child murderer Ian Huntley on Data Protection Act grounds (BBC report here).



FORMERLY ANTI-ESTABLISHMENT STAR SAVED BY THE COURT

In New York last week, acoring to mtv.com, a Federal court judge granted white rap star Eminem (Marshall Mathers) an injunction against The Source, blocking the hip-hop publication from releasing a CD containing a controversial freestyle. The magazine's owners, Ray "Benzino" Scott and David Mays, held a press conference last month to publicise an old recording in which a young Marshall Mathers talks disparagingly about black women. They promised that a CD of the freestyle would be included in their February issue, due on newsstands on 13 January. An apologetic Eminem conceded he made the song in anger: "I did and said a lot of stupid s**** when I was a kid, but that's part of growing up. The tape of me rapping 15 years ago as a teenager that was recently put out by The Source in no way represents who I was then or who I am today". Attorneys for Eminem and his label, Shady Records, filed suit in Manhattan last Monday, citing copyright infringement and seeking both an injunction and unspecified damages.

The IPKat notes that the United States is a member of the Berne Convention for the Protection of Literary and Artistic Works, Article 6bis of which requires signatory states to protect authors and artists against attacks on their moral rights. If the public exposure of this skeleton in Eminem’s cupboard constitutes “derogatory action … which would be prejudicial to his honour or reputation”, he would be entitled to protection even if the economic rights in the copyright were not infringed. What's more, damage to his moral rights would be the subject to separate compensation apart from the usual damages for making unauthorised reproductions. Also, as a good European moggie, the IPKat also wonders if there isn’t a free speech and public interest issue at stake here: are Eminem’s past opinions, even if he disowns them, a matter of public interest and concern, given the performer’s huge influence on the minds of the young.

Rapping, English-style here, here and here
Give your favourite rapper a big hand
You too can be a rapper: click here and here

KAZAA NOT LIABLE FOR COPYRIGHT INFRINGEMENT SAYS DUTCH SUPREME COURT

Findlaw reports that the Dutch Supreme Court has ruled that the makers of Kazaa, the file-sharing program, cannot be held liable for copyright infringement regarding music, films and other files that are swapped on its network. The action was brought by Buma/Stemra, which protects the interests of the Dutch music industry and had demanded that Kazaa either close down or be forced to pay $124,000 for every day that it operated. According to Australian IT, Buma Sterma has now intimated that it may now go after consumers instead, as part of its attempts to crack down of file-sharing.

The IPKat would be upset if, following this decision, the Dutch music industry chose to target individual file sharers. So far action against individuals has been limited to the US. While file sharing is clearly copyright infringement, there was a time when the general belief was that that copyright would never be enforced. However, this is not the case anymore and few people can be ignorant of the music industry’s intention to enforce its rights. Present-day file sharers are perhaps somewhat less deserving of the our sympathy. Nonetheless, if the Dutch music industry does take action against individual file sharers, it can expect a great deal of negative publicity.

Learn to share here, here and here



Sunday, 21 December 2003

MILL CHUCK PATENT: JUDGE WON’T CHUCK OUT DEFENDANT’S APPLICATION

In Nikken Kosakusho Works Ltd and another v Pioneer Trading Co Ltd (19 December) the Patents Court faced a curious little local dispute with potentially international consequences. Nikken sued Pioneer in the UK, the US and Germany for infringing their patent for a mill chuck used in engineering processes. In the UK, Nikken discontinued their claim after the application for an interim injunction was refused on the ground that, on the evidence, there was no arguable case. Pioneer then asked Nikken to acknowledge that the chuck did not infringe the patent. Nikken refused, so Pioneer applied for permission to amend their counterclaim to enable them to seek a declaration under s.71 of the Patents Act 1977 that they were not infringing Nikken’s patent. Nikken resisted that application on the grounds that (i) they had offered binding undertakings neither to threaten nor to bring proceedings against Pioneer and (ii) in the light of that offer, the Pioneer’s wanted the declaration so that it could use it in the other proceedings. Mr Justice Lewison allowed Pioneer’s application, holding that there was no reason for refusing it. Nikken’s fear that a declaration would be used by Pioneer for collateral purposes presupposed that Pioneer would actually obtain such a declaration.

The IPKat commends this decision. For goodness’ sake, if whatever it is that Pioneer is allegedly doing is not a patent infringement, it might save everyone a lot of time and trouble if the court was given the opportunity to say so, even if it did influence the outcome of parallel litigation elsewhere.

Famous chucks here, here and here


Friday, 19 December 2003

NON-CONVENTIONAL TRADE MARKS AND COMMUNITY LAW

Non-Conventional Trade Marks and Community Law is the title of an attractive and topical book by Stefano Sandri and Sergio Rizzi. Although they still represent only a tiny proportion of trade mark applications in Europe and elsewhere, non-conventional marks such as shapes, sounds, smells, colours and tastes have preoccupied both private practitioners and their clients a great deal of late, which is why Thomas P. Arden's little book on the same subject in the United States has proved popular even among practitioners who do not regularly find themselves filing applications to register weird and wacky marks.

Published by MARQUES, from whom the book may be purchased online, this volume is excellent value for money: its nearly 350 pages are still on offer from MARQUES at the pre-publication price of €35 (£25), plus a postage and packaging charge of €5 (£3.50). The full cover price is €50 (£30). Stefano Sandri will be known to many IPKat readers as the first chairman of OHIM's Third Board of Appeal. A colourful character and a lively thinker, Professor Sandri is currently Intellectual Property consultant to the Italian Ministry of Industry. His co-author, Sergio Rizzi, practises as an attorney in the local Alicante office of Spanish law firm Garrigues. Between them they have put together a thoroughly useful collation of primary legal sources, cases and decisions, together with some cogent writing on the problem areas relating to non-conventional marks. The authors address not just Community trade mark issues but also the approaches taken in leading national jurisdictions within the European Union. Their analysis extends beyond the “traditionalâ€� non-conventional marks to cover such issues as the registrability of light marks, tactile marks and sequences of images. What the book does not do -- possibly because at this stage in European jurisprudence the issue is largely speculative -- is to tackle issues relating to infringement and defences to infringement. It is hoped that, with the growth of case law and of our own practical experience, a second edition of this book will be able to encompass such topics.

No book on the subject of non-conventional trade marks is ever going to be current by the time it is published and this book went to press before the late September OHIM decision on sonograms in "Roar of the Lion"was published. The book was also too early for last month's ECJ judgment in Shield Mark , but that is no hardship since the book addresses the Opinion of the Advocate General, which the court followed. Nonetheless, the worth of books on trade mark law in this era of rapid change is not to be measured by their currency but by the quality of their writing. In this regard, the two authors have made a valuable contribution to debate on the registrability of non-conventional marks and should be congratulated for it.

More strange marks here and here
What Strange Marks sound like

THREE MORE SAUSAGE NAMES ATTAIN PROTECTED STATUS

The Official Journal of the European Commission records in Commission Regulation 2206/2003 that the names of three German sausages have been elevated to the status of protected geographical indications. The lucky three are THÜRINGER LEBERWURST (Thuringian Liver Sausage), THÜRINGER ROTWURST (Thuringian Red Sausage) and THÜRINGER ROSTBRATWURST (Thuringian Rib Steak Sausage). Trifle with these sausages at your peril, for their appellations are now protected by Council Regulation 2081/92. And don’t dare feed them to your dogs, since the Annex to the Regulation 2206/2003 stipulates that the all three delicacies are intended for human consumption.

History of sausages here
Fun and fantasy with sausages here, here and here
Sausages that grow on trees here

REPUTATION AND TRUST SELLS THE GOODS

Tom Blackett, writing on brandchannel.com, emphasises the importance of reputation in purchasing decisions. He argues that once a consumer has experienced a brand and has found it to be satisfactory, he will trust that brand and will continue to purchase it, even if there are cheaper alternatives available (hence the notion of “trust marks”). He gives the example of a market in Soweto where, despite the poverty of the inhabitants, only expensive major brands are available because consumers can’t afford to make a purchasing mistake and so only buy brands they know to be OK. He sees the visual element of a brand as acting as a proxy for a mark’s reputation, triggering off the consumer’s recollection of a mark’s reputation and celebrates “how wonderfully enlightened is the law, which allows brand owners to protect their trade marks subject to tests that are none too onerous”. Of particular interest to trade mark lawyers is his statement that the ® sign gives consumers extra confidence because it suggests that the goods have statutory approval.

The IPKat thinks it’s a little odd that the fact that a civil servant has found a sign to be distinctive enough to be entered on the register should add to the confidence of consumers. This suggests that consumer’s don’t really understand what the ® symbol means. Blackett’s ultimate message though is however nifty your trade mark protected product features, names, indicia etc, the mark is only as good as the reputation that it is a proxy for. Trust marks seem a little different from the concept of love marks blogged by the IPKat on 30 November 2003. While love marks inspire fierce loyalty, the feeling felt about trust marks are more docile. Instead of passion, something altogether more gentle and perhaps more easy to sustain is felt.

Marks you can trust here, here, here and here


Thursday, 18 December 2003

DOUWE STIRS UP COFFEE ROW

The IPKat has received further word on the Advocate General's Opinion in Douwe Egberts NV v Westrom Pharma NV, Souranis Christophe and FICS-World BVBA, Case C-239/02 (blogged on IPKat, 11 December 2003). This Opinion, which has still not been rendered into English, now appears to deal with honest advertising practices rather than trade marks as such. Douwe, who made and sold DOUWE EGBERTS coffee in Belgium objected to the sale of Westrom's product "DynaSvelte Cafe". That product, composed of instant coffee, fructose and chromium, was marketed as a slimming aid. The jar, label and instructions mentioned the "weight control" or "slimming" qualities of the product as well as a statement that it had been developed by a "Dr Ann Wees Allen of the Glycaemic Research Institute". Douwe claimed that such endorsement breached various provisions of national law on marketing and labelling of such products. The Belgian court stayed the proceedings and referred questions to the ECJ relating to the interpretation of Directive 99/4 on the labelling of coffee extracts and chicory extracts, Directive 2000/13 on the approximation of the laws relating to the labelling, presentation and advertising of foodstuffs and Art.28 of the EC Treaty.

Advocate General Geelhoed advised the ECJ as follows: (i) Art.2 of Directive 99/4 means that the sale descriptions listed in its annex could be exclusively used for the products listed in that annex, while other descriptions (such as a commercial or a made-up name) can be used alongside those sale descriptions on the condition that they are not confused with them; (ii) Art.18 of Directive 2000/13 precludes the application of non-harmonised national provisions which prevent the use of references to weight loss, medical declarations and declarations of approval; (iii) Arts.28 and 30 of the EC Treaty prevents the application, to foodstuffs imported from other Member States, of non-harmonised national advertising laws which do not allow the use of references to weight loss and to recommendations, attestations, medical declarations or opinions or declarations of approval. Taking into account the links between the rules on labelling and those on advertising, it was for the national court to determine the extent to which advertising rules could be applied to the same references in respect of national products.

The IPKat thinks he'll stick to milk in future. Meanwhile he thinks that the AG's Opinion, which is a good deal more permissive than Douwe Egbert would like, has a corollary -- if producers are allowed to use all manner of terms and endorsements to market their products, consumers must take full responsibility for knowing what the terms used in advertising products actually mean. He suspects though that very few consumers carry a copy of Directive 99/4 around with them when they visit the supermarket.

Slimming and coffee here, here and here
Ersatz coffee here, here and here
More on chicory here here and here

BUT WILL THEY HAVE TEN GREEN BOTTLES?

Ananova reports that Coca Cola is to go into the online music business. Next month it will launch mycokemusic.com with 250,000 tracks from 8,500 artists, though details of who the performers will be have not been released. This comes hot on the heels of the news last week that Coke is to sponsor the UK singles and album charts. Said the Coca-Cola marketing director:

“Consumers have told us that downloading music is confusing and complicated and what they want is an easy, simple-to-use downloadable service from a trusted brand.”

The IPKat is interested to see whether a reputation and trust that has been built up in a brand and a trade mark used on soft drinks will transfer successfully to something as hi-tech as music downloads. He can foresee though that the image that has been built up around Coke the drink could lead quite nicely to a range of music that will reinforce that image and that will be attractive to those who approve of the image of Coke the drink.

History of Coca-Cola here
Coke bottle collectors click here or here
Alternative use for Coke bottles here



Wednesday, 17 December 2003

ANOTHER ANTI-PATENT RANT: WHAT GOOD DOES IT SERVE?

The Daily Telegraph has published an anti-patent rant by Terence Kealey. The author states: “The myth is that intellectual property provides the incentive to invent; in fact, inventors use patents to block others from inventing. If Wilbur and Orville had had their way, aviators today would still lie over the lower wing of biplanes, open to the elements and lacking in-flight entertainment”. Later he adds “The grotesque consequence of the Uruguay Round was to price modern medicines - especially anti-Aids treatments - so expensively that, in the words of James Orbinski of Medecins Sans Frontieres, "millions of people are dying and will die because trade is privileged over the dignity of human beings". Kealey later concludes: “When they are threatened by war or disease, Western governments are quick to recognise patents as a manufacturers' conspiracy against the public, so it is tragic that the West is loath to give the Third World and the WTO a break”.

The IPKat reminds readers that there is another side to the story. 90 per cent of the drugs on the WHO’s most-wanted list are not even the subject of patent protection but people still can’t afford them. Also, both Article 5 of the Paris Convention and Article 31 of TRIPs contain surprisingly generous compulsory licence provisions to enable a patented invention to be used where its proprietor is unwilling to use or license it. And what but the patent system has resulted in the disclosure of literally millions of technical documents into the public arena where they can be studied and consulted by everyone, including a patent owner’s competitors. The patent system may not be perfect (no system can be better than the people who operate it), but it’s got a lot going for it too. The IPKat wonders therefore what sort of constructive benefit is derived from writing tirades like this.

Why are patents good? Click here, here , here and here
Why are patents bad? Click here, here, here and here

GUIDELINES BY DESIGN

OHIM has brought the European Community Design Examination Guidelines into force. The Guidelines are designed to explain how the Community Design Regulation, the Implementing Regulation and the Fees Regulation will be applied by the Office and spell out the process from the receipt of the application by OHIM to the registration and publication of the design. Particular emphasis is placed on: the unitary nature of CDs, the need to maintain a register and the need for user-friendliness (including as regards small and medium sized enterprises and individual designers) on the part of OHIM.

The IPKat welcomes any measures which are going to make the workings of the Office clearer and looks forward to following how they will be put into practice.

Good office practice here, here, here and here


Tuesday, 16 December 2003

NEW SOUND BUT SAME OLD STORY: ISRAELI, SAUDI COMPANIES FIGHT FOR THE RIGHT TO CONTROL THE ROTANA TRADE MARK

Our thanks to Gadi Oron for sending us a note on a recent Israeli case, New Sound v Master Cassette. New Sound, an Israeli manufacturer and distributor of audio tapes, registered ROTANA in for goods in Class 9. Master Cassette, another Israeli company, made and sold audio tapes in the name ROTANA under an exclusive distribution agreement with a Saudi company called Rotana (which had registered ROTANA in Saudi Arabia). The parties agreed that the ROTANA mark was used by the Saudi company extensively in some Middle East countries and was advertised in Arab TV broadcasts which were popular among Arab Israelis. The mark as used by New Sound was identical to the mark as registered in Saudi Arabia. New Sound sued for infringement and Master Cassette counterclaimed for invalidity (note: the Saudi company did not appear in these proceedings; it however gave Master Cassette power of attorney to act on its behalf). After considering the doctrines of well-known marks and dilution the court held that, although Master Cassette had only a contractual right to use the Saudi company's mark, it should not be restricted from using it at present in Israel. The judge however stated that the claimant's Israeli registration, although obtained in a lawful way, may be open to challenge in the light of the contractual relationship between the Saudi company and its local Israeli distributor. However, since Master Cassette filed a cancellation action with the Israeli Trade Marks Registrar, alleging the mark was filed in bad faith, the judge decided that both parties could continue to use the ROTANA mark until the Registrar gives a ruling in the striking out action.

The IPKat notes that both parties were using the same mark for the same goods. Accordingly he wonders why, in proceedings in which the court limited its ruling to the issue of relief pending a ruling on the validity of the Israeli ROTANA registration, it was necessary for the court to consider issues relating to well-known marks and dilution, rather than sticking to the narrow issue of the balance of convenience between the parties before the trade mark’s validity was affirmed or cancelled.

How to get a New Sound: click here, here or here
Find out how tape recorders work

WHAT GOES DOWN MUSTN'T COME UP SAYS CANADIAN COPYRIGHT BOARD

Friend of the IPKat the MediaBeak (who said cats and birds don’t get on?) brought the decision of the Canadian Copyright Board (reported on news.com) to the IPKat’s attention. The Board decided last Friday that uploading of P2P files is outlawed by Canadian copyright law. However, because the Copyright Act allows the public to make copies for personal use and does not address the source of those copies or whether the original has to be an authorised or non-infringing version, in certain circumstances at least, downloading P2P files may be permissible. The Board also imposed a levy on MP3 players, similar to the levy payable on the purchase of other recording devices, to make up for the revenues lost by artists through personal copying. The decision has not been welcomed by recording industry interest groups such as RIAA and remains to be tested in the courts.

The IPKat is puzzled by this approach. Allowing downloading but not uploading makes as much sense to him as legalising the taking of drugs but not allowing drugs to be sold – how are the users or downloaders expected to obtain the items that the law has said they are entitled to use? In the long run though, downloaders will still have to pay for the privilege of downloading, only they are paying in advance through the levy on the equipment that enables them to make use of their downloads.

More logic problems here, here and here


Monday, 15 December 2003

NEITHER SNOT NOR SPINACH

The IPKat raised a furore last week when he told Ilanah’s favourite joke (“Do Trade Marks Get Up Your Nose?”, 8 December). In an urgent attempt to make amends by telling a joke in somewhat better taste, he is pleased to bring you a tale which masquerades as a true story (sub nom. “Actual Australian Court Docket 12659: the Case of the Pregnant Lady”). The story, which has actually been doing the rounds on the internet for some time, goes as follows:

A lady about 8 months pregnant got on a bus. She noticed the man opposite her was smiling at her. She immediately moved to another seat. This time the smile turned into a grin, so she moved again. The man seemed more amused. When, on the fourth move, the man burst out laughing, she complained to the driver and he had the man arrested.

The case came up in court. The judge asked the man (about 20 years old) what he had to say for himself. The man replied, "Well your Honour, it was like this: When the lady got on the bus, I couldn't help but notice her condition. She sat under a sweet sign that said: "The Double-Mint Twins are Coming" and I grinned. Then she moved and sat under a sign that said, "Logan's Liniment will reduce the swelling" and I had to smile. Then she placed herself under a deodorant sign that said, "William's Big Stick Did the Trick", and I could hardly contain myself. BUT, your Honour, when she moved the fourth time and sat under a sign that said, "Goodyear Rubber could have prevented this Accident", I just lost it". Case dismissed.

The IPKat is impressed at the role played by brand advertising in this joke. Doubtless the killjoys in the European Court of Justice will consider that the inclusion of a registered trade mark in the script of a joke interferes with its "essential function" and thus constitutes an infringing act.

Travel during pregnancy here
Get your rubbers here
Make your own liniment and deodorant here
Twin gum wads here
Transport tune here


Sunday, 14 December 2003

MOCK THE MONOGRAM?

Mock the Monogram, argues fashionUK. The site berates the ubiquity of the Louis Vuitton logo, present on every celebrity’s luggage, and proposes two solutions. For the more affluent it suggests doing one’s own thing and purchasing high-quality luggage made by an indigenous UK firm, rather than the usual LV-patterned cases. Alternatively, it promotes the wares of Red Dot, which sells clothing spoofing the Louis Vuitton logo (in fact, its entire Autumn/Winter Catalogue is comprised of Star Wars and Gold’s Gym spoofs).

The IPKat opines that a degree of public backlash is often the price paid by a highly successful brand. It may be counterproductive to take legal action against such spoofers, a course of action which will just draw attention to their activities. Anyway there’s a good argument for saying that, once a mark becomes a cultural icon, the public should be given a degree of latitude in the use it is allowed to make of it for free speech purposes.

Who was Louis Vuitton? Biographical data here and here
Expensive British luggage here and here
Some other controversial cultural icons: Barbie, Betty Crocker, Frank Sinatra and Mickey Mouse

SNAP! SAYS SINGAPORE COMPANY TO LACOSTE

The China Law Blawg and Yahoo report on the 40-year trade mark battle that’s been going on between Lacoste and the Singapore company, Crocodile International. Most recently, Lacoste had lost in its attempt to register its mark for cosmetics in China. Crocodile International claims that its mark was drawn by Tan Hiantsin in 1947 and was registered as a trade mark in Singapore in 1951. For its part, Lacoste points to a French registration dating back to 1933. Additionally, Lacoste registered in China in 1980, while Crocodile International waited until 1998. Now Lacoste’s right-facing crocodile is taking on Crocodile International’s left-facing crocodile in trade mark suits across China, the rest of Asia and the Middle East.

The IPKat thinks that there should be room for both marks to co-exist of the market. Crocodiles are a well-known member of the animal kingdom and a common theme and as such should only be entitled to a narrow scope of protection. A similar conclusion has been reached in cases involving the registrability of lions as trade marks.

Singing crocodiles here
Sick crocodiles here
Miserable crocodiles here
Snap up some croc a la carte here


"QUICK" MAY NOT BE DESCRIPTIVE OF PRODUCTS PRODUCED SLOWLY, BUT CFI STILL REJECTS APPLICATION

The IPKat nearly missed a trick when he didn't tell you about one of last month's Court of First Instance (CFI) Community trade mark (CTM) cases that wasn't available in English: Case T-348/02 Quick Restaurants SA v Office for Harmonisation in the Internal Market . But never mind - here it is.
Quick applied to register the figurative mark QUICK as a CTM for goods in Classes 29 to 32 and 42. The application was refused under Art.7(1)(b) and (c) of Regulation 40/94 for all the goods and services designated by the mark on the grounds that (i) the mark was composed exclusively of the term "quick", which designated the quality of the applicant's products and services and (ii) that it was devoid of any distinctive character in respect of those goods and services. Although Quick's appeal to the Board of Appeal was successful for some goods and services, Quick appealed further to the Court of First Instance in respect of the rest.

The CFI dismissed the application. Following the court's own decision in Case T-219/00, Ellos v OHIM Art.7(1)(c) prevented signs or indications from being reserved to a single undertaking if it was necessary for them to be freely used by all. Also, signs that were not distinctive were incapable of carrying out the essential function of a trade mark since they didn't allow the consumer to repeat or avoid the experience of buying those products or services. A mark's "descriptive character" had to be assessed with regard to (i) the products or services which it designated and (ii) the perception of the relevant public. Since "quick" was an English word and the products at issue were intended for general consumption, the relevant public was the average English speaking consumer. For such a consumer the mark QUICK would immediately evoke the idea that those products could be quickly prepared and served. Some products included in the trade mark application (eg "coffee, tea, cocoa") could be provided in conditions which did not imply quick preparation and service: for them, "quick" would not be descriptive. However, since Quick sought registration for each of the categories of products it designated, without any distinction, the Board of Appeal's decision, as based on goods categories in their entirety, had to be upheld.
The IPKat notes that even words which are inherently descriptive or laudatory can still achieve registration as CTMs on the basis that they have acquired distinctive character, as happened in the case of the word IDEAL. He also wonders whether the use of the word QUICK in respect of products which were not produced quickly would be deceptive, hence unregistrable.

Quick Restaurants: not to be confused with QuickDine, DineQuick, Quickfood or Quicksnack
"Slow, slow, quick, quick, slow", as it relates to traffic jams, particle turbulence, internet access and dancing

TRUSTY THE TRAFFIC LIGHT NOT INFRINGED BY ‘DREAM STREET’ CHARACTERS

In Miles v ITV Network Ltd (Chancery Division, 8 December) Mr Justice Laddie was asked to review the master’s summary decision to dismiss a claim on the ground that he had improperly conducted a mini-trial. Miles sued television company ITV Network for breach of confidential information and infringement of copyright in relation to a cartoon television programme. Miles alleged he supplied ITV Network in 1998 with promotional material that was designed to interest the company in taking on his cartoon, 'Trusty and friends'. The main character, Trusty, was a set of traffic lights; his friends were pieces of traffic equipment like bollards and traffic cones. He alleged that this material, which included a short cartoon showing those characters, had been taken and used to produce another programme, 'Dream Street', in which the characters were items of traffic equipment but the main character was a yellow recovery truck. ‘Dream Street’ became a commercial success. In his pleadings, Miles claimed that the similarities between some of the characters in ‘Dream Street’ and the concept of using traffic equipment was sufficiently close to give rise to an inference of copying. The second defendant, who created ‘Dream Street, produced evidence that the designs for the programme had been in existence since December 1997 and argued that the allegations of copying were not only untrue but also impossible. The defendants applied for summary judgment before the master, who dismissed Miles’ case on the ground that the inference of copying was not strong. Miles appealed to Laddie J on the ground that the master had engaged in a mini-trial contrary to recommended guidance in such cases.

Laddie J dismissed the appeal, holding that Miles’ case could not be justified. The fact that the master should not indulge in mini-trials did not mean he was not supposed to understand the facts in issue. On the evidence the only similarity between the two programmes was the use of traffic equipment. Accordingly, the inference of copying was hopelessly weak. In those circumstances the master had not engaged in a mini-trial but had considered whether Miles had raised a sufficiently triable case. The master had arrived at the right conclusion and there was no arguable claim.

The IPKat thinks the review in this case was a waste of time. Even though the master is not supposed to conduct a mini-trial in an application for summary judgment, it would be absurd if a hopelessly weak claim such as Miles’ was allowed to go to full trial simply because the master was not allowed to consider evidence that was so strong that it would appear pretty well determinative of the issue by itself. If Miles’ application were successful he would still almost certainly have lost at trial, it would mean that it would have taken three goes before Miles’ case was dismissed.

Another Dream Street here; Dream Street Prose here;Down on Dream Street here
More on summary judgments in general, in the United States and in Canada
Special properties of traffic lights here, here and here

Friday, 12 December 2003

PUTTING THE BOOT IN: DOC MARTENS FLATTEN LOGO COPYRIGHT ASSIGNEES

In R Griggs Group Ltd, R Griggs & Co Ltd and Airware Ltd v Ross Evans, Raben Footwear Pty Ltd, Ronny Leopold Lewy and Garry Lewy [2003] EWHC 2914 (Ch), on 2 December, Deputy Chancery judge Peter Prescott QC had to tackle the question of ownership of copyright in a trade mark-protected logo. Griggs made and sold "Dr Martens" boots. These boots all bore the DR MARTENS trade mark (which Griggs used under licence) as well as a second trade mark AIRWAIR, which Griggs owned. In 1988 a combined logo was designed, incorporating both DR MARTENS and AIRWAIR. The combined logo was designed by Evans, a freelance graphic designer for the advertising agency retained by Griggs. The other defendants took an assignment of copyright from Evans on the basis that he, not Griggs, was the first owner of the copyright. Griggs sued for a declaration that it was the beneficial owner of the copyright in the combined logo. Peter Prescott QC upheld Griggs’ claim. When a freelance designer was commissioned to create a logo for a client but the commissioning contract was silent, a term could be implied on the basis of business efficacy that the copyright should be assigned to the client so that he could prevent others using the logo. Although Evans was the legal owner of the copyright in the combined logo when he created it, he was not entitled to beneficial ownership of it. He received his normal hourly rate to create the combined logo and it was not shown that the amount he expected to be paid would be materially affected by the use to which the combined logo was put. In the circumstances it was obvious that the right to use the logo and to exclude others from using it was to belong to Griggs, not Evans. The defendants did not agree. Said one of them: “We were shafted”.

The IPKat agrees. The defendants who took an assignment of the legal interest in the copyright were competitors of Griggs, who could not lawfully have used the combined logo in any of the countries in which Griggs traded. Business that commission logos, badges etc should however make sure they take an assignment of the copyright up front and that, where they hire a design agency that uses freelance talent, the design agency’s contract with any independent designer reflects the commercial reality. Otherwise all that happens is that, as here, the parties become embroiled in fruitless litigation as to which of them owns a copyright work which only one of them can profitably use.

Other copyright infringement involving Raben Footwear here
Airwair here and here
Other much loved doctors here, here, here and here

DOES PROGRAMME NAME-CHANGE DEFAME PARTICIPANT?

Peter Watt, a student and one of 12 unemployed men who agreed to participate in a reality TV documentary called “Back to Work”, is threatening to sue programme makers after the title of the show was changed to “Born Idle”. The 12 were to be filmed as they attempted to return to employment. But Watt, of Jarrow, South Tyneside, says he was horrified to receive a letter from makers Lion TV saying that the title had been changed to “Born Idle”. The programme involved the 12 being taken to a "boot camp" which was run by a group of trainers dressed as US marines. Watt is consulting lawyers in an attempt to prevent the programme's transmission on 6 January. Watt, now a catering student at South Tyneside College, said: "What chance will I have of getting a job after being labelled born idle on national TV? It's a disgraceful slur". David Upsal, the programme's executive producer, admitted the title had been changed after negotiations with the BBC and conceded that it was "provocative". He said: "It was chosen because it is snappier and more likely to attract the attention of potential viewers". He added that six of the participants had found work as a result of the experience.

The IPKat feels that any consent obtained for the inclusion of Mr Watt’s performance in “Back to Work” in a recorded work, which is required under the Copyright, Designs and Patents Act 1988, would be vitiated by virtue of the programme’s name change. The name-change might make the programme more popular, but it does a disservice to its participants.

“Back to work” here and here and here
“Born idle” here; bone idle here; lazy-bones here

DIAL S FOR SPY

The New York Times reports on the growing apprehensiveness towards camera phones. The fear is that they will be used to invade the privacy of unsuspecting members of the public through the taking of unsolicited photographs. Chicago City Council is to vote on the 17th as to whether to ban such phones from public bathrooms, locker rooms and showers. Other areas have successfully taken similar measures, some even going as far as banning all mobile phones from changing rooms, the argument being, why would a person need a phone in those areas and that public safety should come first.

The IPKat states that while the pictures created by camera phones are no more invasive than any other pictures, the small size of camera phones, the speed that pictures can be disseminated and the fact that people carry them with them the whole time means that they could be a serious threat to privacy. However, the IPKat notes that the picture quality on such phones may not be as good as conventional photos.

Camera phones here
Invade someone’s privacy the hi-tech way here
Invade someone’s privacy the low-tech way here


Thursday, 11 December 2003

CONGRATULATIONS JEREMY

I'd like to say a big well done to my IPKat partner, Jeremy, whose book - Trade Mark Law: A Practical Anatomy - is being launched today. It was a privilege and a pleasure (and a not inconsiderable amount of fun) working on it with you. Enjoy your day (and consider the embarrassment arising from this blog as revenge for Monday's spinach/snot blog).


YET ANOTHER UNTRANSLATED ECJ CASE

The IPKat would bring you coverage of the Advocate General's Opinion in the Douwe Egbert case (concerning Article 2 of Directive 89/104) but once again, it hasn't been translated into English, so he can't.

The case in lots of other languages here


FROM HERE TO MATERNITY

The IPKat, while scouring the web, found this rather odd little registry decision. Casa Damiani applied to register its international registration of the MATERNITY mark for precious metals and stones and jewellery etc. in the UK under the Madrid Protocol. The Registry refused the application. As well as deciding against the applicant on a procedural point, it also found that the mark was descriptive under s.3(1)(c) of the Trade Marks Act 1994 as it could not distinguish Casa Damiani’s goods from those of other undertakings. The relevant consumer would perceive the mark as used in relation to the goods in question as an indication that the goods sold bearing the sign were suitable to be offered as gifts or tokens of love and devotion in response to the news that the recipient is pregnant, or that the recipient has given birth. They would perceive the mark in same way as they would see the words ETERNITY, WEDDING or ENGAGEMENT. In other words, consumers would see the mark as an indication that the goods were suitable for that particular event, rather than as a sign denoting trade origin. For the same reason, the mark was devoid of distinctive character under s.3(1)(b).

The IPKat thinks that although it sounds strange at first to think of maternity as describing jewellery, why would that mark have been chosen, except to designate the occasions on which the jewellery is to be given. While it does not describe the goods themselves, it does describe an aspect of their intended purpose.

Joys of maternity here, here and here


TRADE MARKS HEARING OFFICER SHOWS HOW TO MAKE NO-ONE HAPPY

In the High Court’s Chancery Division this Tuesday, Mr Justice Lloyd affirmed in Mars UK Ltd v Société des Produits Nestlé SA (transcript not yet available) something that everyone except Nestlé already knew: you can’t make significant amendments to a trade mark midway through application proceedings. In this instance Nestlé had sought to register as a three dimensional mark the shape of the popular "Polo" mint, but without the word "Polo" on it. Mars filed an objection to the application on the grounds that (i) it was devoid of any distinctive character for the purposes of s.3(1)(b) of the Trade Marks Act 1994, and that (ii) it was in common usage and therefore not registrable under s.3(1)(d) either. The Hearing Officer ruled that the application should be amended so as to specify that the shape was (i) coloured white and (ii) of the same size as the "Polo" mint, including its distinctive hole in the middle. Mars appealed, objecting that the amendments allowed by the Hearing Officer were material changes to the mark applied for and accordingly permissible under neither s.13(1) and s.neither necessary or appropriate in order to define the distinctiveness of the mark it originally applied for. Lloyd J allowed Mars’ appeal but dismissed Nestlé’s. He pointed out that the power to amend a mark in mid-application is much narrower now than it used to be under the old Trade Marks Act 1938. He also ruled that the amendment allowed by the Hearing Officer significantly altered the mark applied for and was accordingly prohibited under s.39(2) of the 1994 Act.

The IPKat agrees with this ruling, which should warn trade mark applicants not to start out with applications to register sub-distinctive signs in the hope that the Hearing Officer will substitute what he believes to be the minimum level of distinctiveness and thus “complete” the application for the applicant.

More on Polos here, here
and here
Other ongoing trade mark litigation between Mars UK Ltd and Société des Produits Nestlé SA here


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