For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Thursday, 31 July 2003

COPYRIGHT BODIES PREPARE TO LOCK HORNS

A dispute between the British Phonographic Industry Limited (BPI) and the Mechanical-Copyright Protection Society (MCPS) will soon be heading for the UK's Copyright Tribunal. BPI, a record industry trade association, represents a variety of different manufacturers, producers and sellers of audio and audiovisual recordings of music and other data. Anyone who wants to perform any reproductive copying of musical works for defined products in DVD video format has to get a BPI licence. Meanwhile, MCPS -- which collects and distributes "mechanical" royalties to composers and music publishers who are its members -- grants recording licences under its current scheme and may grant licences under a further proposed scheme. The BPI has complained that both the current scheme and the proposed scheme are unreasonable and has asked the Copyright Tribunal to adjudicate. In particular the BPI is objecting to a "very substantial and unjustified proposed increase in licensing fees". In the spirit of brotherly love neither the BPI nor the MCPS have put details of their dispute on their websites. The IPKat would like to hear on theipkat@yahoo.co.uk from anyone who can tell us more.

Learn more about DVD video format here

COURT OF APPEAL TAKES ITS PICK

Wednesday was a bumper day for Court of Appeal IP decisions. The IPKat will be bringing you the highlights over the next few days. On the trade mark side of things, the court decided Inter Lotto v Camelot, an appeal from Laddie J’s decision of last month. Inter Lotto had chosen the name HOTPICK in July 2001 and started using it in August of that year. By 17 October 2001 it had signed up 424 pubs for its operation although the game didn’t start until 28 November. Meanwhile, Camelot applied to register HOTPICKS as a trade mark on 17 October 2001, but Camelot’s game was not launched until April 2002.

Inter Lotto sued Camelot for passing off. Camelot responded that Inter Lotto could only base its passing off claim on goodwill that had accrued to it before the date of Camelot’s application for trade mark registration (which wasn’t much because Inter Lotto's game was not properly launched until the month after the application). Inter Lotto on the other hand claimed that, under passing off principles, its goodwill fell to be determined at the date Camelot launched its HOTPICKS game in April 2000. By that time, Inter Lotto’s game had been operating a lot longer and had had more time to build up a reputation. The court had to decide between applying passing off principles as Inter Lotto wanted or Camelot’s registered trade mark-inspired argument. Affirming the decision of the trial judge, the Court of Appeal accepted Inter Lotto’s submission and held that Camelot’s launch date was the relevant date. Passing off lives on in this context, even where there are registered trade marks involved, because section 2(2) of the Trade Marks Act 1994 states that “nothing in this Act affects the law relating to passing off.” However, this won’t be the case where the law has been expressly changed so that it is inconsistent with passing off principles, as is the case for example with loss of rights by acquiescence under s.48 of the TMA.

Learn about Camelot here, here and here
A song to sing at (k)night here

Wednesday, 30 July 2003

THE TWEENIES STRIKE BACK

Yesterday The Daily Telegraph reported that the BBC was coming under fire from the Food Commission for allowing popular, clean-living children's TV characters The Tweenies to be used to promote junk food: In its report the Food Commission charged that the Tweenies had effectively been prostituted through their enforced sale for use by Heinz, McDonalds and even Marks & Spencer.

The IPKat can reveal that, in what will be a ground-breaking action, The Tweenies are to sue Britain’s iconic broadcasting institution for damages and injunctive relief. This will be the first action brought by fictional characters for infringement of their rights to freedom of thought, conscience and religion under Article 9 of the European Convention on Human Rights (ECHR) as well as their right of freedom of expression under Article 10 of the same convention.

In an interview this morning on White City Radio, Ms Lou Biloux for the BBC has described the proposed action as vexatious and as trivialising the notion of human rights. Mr Andrew Pandy, acting for The Tweenies, however points out that human rights protection has already been given to fictional bodies such as corporations and media personalities and that the European Court of Human Rights could usually be expected to give a favourable ruling if the respondent was part of the British establishment. Pandy commented that fictional character abuse is rife within the BBC, adding that this case may become a class action.

Find out what The Tweenies are doing today
Show your solidarity with the White City Seven by organising a public rendition of their campaign song
Get your Tweenies ringtones here
For a rant about The Tweenies click here and scroll down to 25 April.

Tuesday, 29 July 2003

COPYRIGHT WORK CREATED BY ACCIDENT

Dannii Minogue, known for her contributions to the musical life of this and other countries, may well have bestowed a copyright-protected dramatic work on the world without even trying. Ananova reports that, during a recent concert, Ms Minogue started pointing at a lake behind the arena to alert the audience that a sailor was in trouble after his boat capsized. However, the audience mistook this noble-hearted gesture for a new dance and began pointing back at her. The IPKat wonders whether this dance would be protected by copyright had it been performed in the UK. The notion of a dramatic works is said in section 3 of the CDPA 1988 to include dances, but can such gesticulation be considered a dance? Must a dance be intentionally created to count as a dance? It probably doesn’t matter because mimes are also expressly said to be dramatic works and, in any event, there is no exhaustive list of works that can be considered dramatic works. For the copyright protection to kick in, Minogue would have to show that the work had been recorded but presumably someone in the audience was videoing the concert – the concert may even have been recorded for commercial or broadcasting purposes. It might be a little bit more difficult for her to assert her moral rights. To enforce her right to be identified as the author she’d have to assert her right first and the IPKat is unsure how the court would view a derogatory treatment claim when the subject of the claim arose by accident.

Learn how to rescue sailors in trouble here
Learn how to cook Dannii Minogue’s favourite dish here

"VOTE - OR THE BEANZ GET IT"

Writing in The Daily Telegraph today, Campaign editor Caroline Marshall identifies a leitmotiv in Heinz's brand marketing: the endangered species. A few years ago Heinz warned consumers it would shelve its SALAD CREAM concoction if they kept buying mayonnaise instead. This sparked off a "save our Salad Cream" campaign in the national press. SALAD CREAM was saved, relaunched with a price rise and now sponsors the ITV soap Emmerdale. Now the same strategy is being employed for Heinz' baked beans. Two weeks ago Heinz announced it was considering ditching what Marshall calls the most celebrated piece of dyslexia in British advertising: "Beanz Meanz Heinz". In its new campaign Heinz is urging consumers either to "save our slogan" or "vote for change". It will be showing a series of historical bean TV ads to help viewers make their decision. Bean fanatics can vote via Sky's interactive TV platforms, by text message or by visiting the website beanzmeanzheinz.com where there are daily updates on the results.

Most consumers have voted to keep the slogan even though it was last used 13 years ago. This shows how well Heinz has manipulated nostalgia for a line that a whole generation of teenagers has never heard to spin a media story.

For the Emmerdale Salad Cream ad lick here and scroll down till you get it
Make your own salad cream here
On the history of baked beans click here
Make money here from archival baked beans
For jokes about baked beans, try some other blog

OCH AYE THE NO

The BBC reports that it has conclusive proof that the Loch Ness monster does not exist. This got the IPKat to thinking (after rejoicing – lack of sea-monsters means more fish for felines). If there’s no Loch Ness monster, then the photographs which supposedly show it must be fakes. Certain of those fakes are doctored photographs (in other words, someone has added detail to the original photograph at a later date). This has copyright implications.

First, what type of work are we talking about for the purposes of the subsistence of copyright if we have a photograph which someone has drawn on and reproduced? Both photographs and drawings are classed as artistic works under Section 4(1)(a) of the Copyright Designs and Patents Act 1988. More interesting though is who owns the copyright in the doctored photo? Assuming that the photograph was doctored by a person other than the author of the photograph, has the person who touches up the photo created a new original work or has he just infringed the photographer’s copyright in the photograph. In Frank Searle’s case, he seems to have taken an element from a postcard and superimposed this onto a photograph so he may also have infringed the copyright of the creator of the postcard. Finally, in the UK at least, the original photographer may be able to claim an infringement of his moral rights under s.80 CDPA. Under this section, an author can object to derogatory treatment of his work. One of the tests of whether treatment is derogatory is whether it will damage the author’s reputation. Involvement in a photo-faking scandal would be pretty damaging to a serious photographer (or even just someone taking holiday snaps).

According to this site, the Loch Ness monster is long dead.
All things Nessie-inspired here
See if you can track down the monster here
Meet the only humans to have met the Loch Ness monster here. Here’s the tartan you need to make your Loch Ness kilt.
Read about Nessie’s little sister in Loch Lochy here
Another doctored photo scandal here

Monday, 28 July 2003

OBELIX BAR BRAWL IN PORTUGAL

The subscription service World Trademark Law Report has recently brought news of a colourful little spat in the Portuguese courts between French publishers Les Editions Albert René Sarl and a bar-owner called Madaleno. Albert René, having registered the word mark OBELIX in Portugal for a variety of goods and services, was displeased to discover that Madaleno's business was trading as the Obelix-Bar. The Court of Golegã ruled that the bar infringed the mark, but what was interesting was the question of damages. Normally you can't get trade mark infringement damages in Portugal ― or indeed in most other places ― without showing some evidence of loss. In this case however the court said, in a decision which trade mark owners will welcome, that four years' unauthorised use of the OBELIX trade mark was per se evidence of loss. The level of damages was only around 1,500 euro though.

Make friends with Obelix here
For a Korean recipe Obelix would allegedly have loved, view here
This is where you buy your full colour high-density plastic figurine of Obelix carrying a menhir
Visit the Menhir Sanctuary here

Sunday, 27 July 2003

MICROSOFT PATENT CASE

Earlier this month, Microsoft lost in the pre-trial stage of a lawsuit brought against it in the Northern California District Court by InterTrust Technologies. InterTrust claims that 85% of Microsoft’s product range infringes its digital-rights management and trusted systems patents.

Background to the case here
Read about another of Microsoft’s less successful patent cases here

HAVE A BREAK CASE GOES TO ECJ

Société des Produits Nestlé SA v Mars UK Ltd is the latest UK trade marks case to go to the European Court of Justice (ECJ) in Luxembourg. Nestlé's slogan "Have a break ― have a KIT KAT" was extremely well known in the UK, where it had been used extensively for many years in adverts for KIT KAT chocolate bars. When Nestlé applied to register the words HAVE A BREAK as a trade mark, Mars opposed on the grounds that the mark was not distinctive. The Hearing Officer held that HAVE A BREAK had not acquired distinctive character through use made of it before the date of the application. The sticking point was that he was not prepared to accept that extensive use of "Have a break ― have a KIT KAT" constituted evidence of the distinctiveness of the words HAVE A BREAK by themselves.

Nestlé's appeal to the High Court having failed, the company appealed further to the Court of Appeal, which has asked the ECJ whether the distinctive character of a mark referred to in Article 3(3) of Council Directive 89/104 (to approximate the laws of the member states relating to trade marks) and Article 7(3) of Council Regulation 40/94 (on the Community trade mark) may be acquired following or in consequence of the use of that mark as part of or in conjunction with another mark.

If the ECJ answers "yes", the decision of the judge and the hearing officer will be set aside and the matter remitted to a different hearing officer. If the ruling is in the negative, the conclusions of the judge and the hearing officer will be held to be correct as a matter of law.

To discover why The Guardian thinks Ethiopia should have a break from Nestlé click here
Looking for someone to have a break with? Click here
For the dietary benefits of having a break click here
To make Kit Kat ® bars click here
To make generic kit kat bars click here

Friday, 25 July 2003

TOP 100 BRANDS

Interbrand and Business Week have published their list of the top 100 most valuable brands of 2003. The rankings were based on projected profits, discounted to reflect how likely those profits were to materialise. In order to be eligible, the brands had to be valued at over $1 billion. They had to derive at least a third of their sales from outside their home countries and have a significant distribution throughout the Americas, Europe and Asia (although presumably not Africa and Australasia and in fact there are no brands from those two continents on the list). The need for the brands to have publicly available marketing and financial data also knocked some major brands out.
Not surprisingly, COCA COLA is top-dog, with MICROSOFT second and IBM third. Top non-US brand is NOKIA at number 6, which is Finnish. For the parochially-minded, 5½ British brands made it on to the list: HSBC (37); BP (69); REUTERS (76); SMIRNOFF (85); JOHNNIE WALKER (99) and SHELL (which is joint British and Dutch owned) (83).

Learn about effective branding here.
Utterly irrelevant site found while searching for information about branding here.

IPKAT GUEST BLOGGER OF THE MONTH

Each month Ipkat invites a prominent member of the intellectual property community to contribute a guest blog. Our first guest blogger is London-based barrister Ashley W. Roughton of Hogarth Chambers. Ashley’s practice covers a wide variety of IP topics and he is a co-author of The Modern Law of Trade Marks. He has recently appeared in Arsenal v Reed. Ashley’s chosen subject is file wrapper estoppel, a US legal concept which is being spoken of in UK courts with increasing frequency. If you have any comments on Ashley’s guest blog, please mail them to us at theipkat@yahoo.co.uk.

File wrapper estoppel (where a patent applicant is absolutely bound by representations made to the Patent Office) is unknown in the UK. However it seems wrong that an applicant can get his patent by telling the Patent Office that his patent specification or claims mean one thing and later tell the court something quite different in order to catch an alleged infringer. How much, asks the law, can this sort of behaviour enlarge the defendant’s rights? In the UK the answer is not at all: it is not the defendant’s rights which are enlarged but those of the claimant which are diminished. A patent claim not drafted in good faith and in need of a narrowing amendment may not be amended without the discretionary permission of the court, which takes into account, among other things, shifts in the applicant’s position. But at trial the applicant is not held to his representations to the Patent Office. There is some sense in this: if file wrapper estoppel becomes a UK doctrine, the overall patent specification essentially comprises the finally granted claims and specification as well as the Patent Office file held in Newport and, possibly, any oral representations which can be established in evidence. So instead of having one document to seek and construe, you have two and perhaps some hearsay. The Comptroller is not obliged to maintain her files but just to maintain the register.

Imagine now that the CEO of Largeco, a pharmaceutical company, announces that "our latest patent will stop nobody producing pain killers containing proprionic acid derivatives". Smallco produces a proprionic acid derivative pain killer and Largeco sues. Smallco argues that (i) what the CEO said is a public statement that strict legal rights will not be enforced, which Smallco relied upon to its detriment (a classic estoppel situation) and (ii) that what the CEO said amounts to a licence. The second argument is difficult because a bare licence can be withdrawn on reasonable notice, say 6 months, when Smallco wants to produce. The first defence is, however, upheld. Plenty of authorities support this proposition and many defences have succeeded along these lines, though UK courts will not construe a patent’s claims and specifications by reference to what others say about it - even if those others own it.

Now, what is the difference between the CEO making his statement public or writing it down on paper and depositing it in a publicly accessible Patent Office file? Superficially the answer seems to be none, though UK law might not regard this as estoppel unless Smallco shows it read that document before it embarked upon production. Estoppel arises because what is said is simply a statement that Largeco will not insist upon its strict legal rights ― but it must be clear and unequivocal and it must be intended that Smallco will act upon it. The difference between this and file wrapper estoppel is huge. The latter imposes no apparent requirement of reliance ― the doctrine can be relied upon even if the prosecution file was not read before the infringing acts took place.

Do we need file wrapper estoppel in the UK? Mr Justice Jacob in the recently reported Celltech Chiroscience case justifiably advises caution. The European prosecution file would be in any one of three languages and, if US experience is anything to go by, many US patent infringement proceedings are taken up with arguments about what the prosecution file actually meant. Conversely UK courts have faced little real criticism of the way they construe patent claims and specifications.

Thursday, 24 July 2003

NEW GEOGRAPHICAL INDICATIONS

The following products have been registered as protected geographical indications by the European Commission recently:

Molise (Italy)
Welsh Lamb (United Kingdom)
Nürnberger Bratwürste/Nürnberger Rostebratwürste (Germany)
Pane di Altamura (Italy)
Finki Lakonais (Greece)

The EU’s protected geographical indications homepage here.
Read about Welsh Lamb here.
Find out about Molise here. Typical products from Molise here
Useful information for when you get lost in Alto Crotonese (and can speak Italian).
When in Nürnberg, eat your bratwurst here http://www.bratwurst-gloeckl.de/.
Follow the fortunes of Altamura’s football team here.
International Olive Oil Council here.

BECKHAM AND HULK RISE BUT ROYALS FALL

The extent to which celebrity status is a human right and/or a purely commercial right has been the subject of much recent speculation in the UK, following the decision of the High Court that Michael Douglas and Catherine Zeta-Jones had a right of privacy in their wedding photographs which they could then sell by commercialising to the highest bidder. David and Victoria Beckham are well aware of the commercial value of their celebrity status, which is why they have signed a deal with pop idol creator Simon Fuller to turn BECKHAM into a global brand. The deal will take the name BECKHAM "across music, fashion and TV" according to a spokesman for Fuller's 19 group of companies, which is reputedly worth £300 million according to an article on web news site Ananova.

Meanwhile the word is out that British royal family members Prince Andrew, Prince Edward and Princess Anne are becoming ex-celebrities, now that the London headquarters of waxworks attraction Madame Tussaud International is to melt them down to make room for more attractive faces. The Queen Mother and Diana, Princess of Wales have been retained for the time being but there is no space among the dummies for Opposition leader Ian Duncan Smith. Good news for the Incredible Hulk is that he too will be joining the exhibits. This is no doubt proof of his enduring star status.

For the sad tale of David Beckham and a dummy click here. To beat Beckham click here. For some Beckham jokes click here. For a seriously critical review of some of 19's contract terms click here

RUM RUMPUS IN BRITISH PUBS

UK public house chain JD Wetherspoon, the ninth-fastest growing company in Europe, has shocked the world’s Bacardi and Coke drinkers by instructing its pubs to stock rival brands of white rum in place of Bacardi. Bacardi is insisting that Wetherspoons tells drinkers who ask for a Bacardi and Coke that what they are being served up with isn’t actually Bacardi. Wetherspoons don’t rate this as a big problem. According to their company chairman “Most of the time, [customers] don’t actually know what they’re drinking, most of the time it’s just another white rum”.

Click here to prepare Bacardi and Coke. Learn here about Bacardi’s challengers in the white rum market. To see how rum and cola crystallites of the cocktail appear under a polarised light microscope click here. For the words of the calypso Rum & Coca-Cola click here

Wednesday, 23 July 2003

IT'S ART - BUT IS IT IN GOOD TASTE?

Yesterday IPKAT posted its thoughts on a meeting at the ICA at which there was some discussion as to the unsuitability of copyright as a means of protecting some modern art forms, for example conceptual art. the problem of what constitutes an "artistic work" is tricky and will not go away. Thirty years ago the Tate Gallery's purchase of Carl Andre's Equivalent VIII caused a storm, with many critics asking why public money had been spent on a pile of bricks. But now 24 year old Londoner Dave Ball has used 10,500 pink wafer biscuits to copy the infamous exhibit for an exhibition called The Joy of Kitsch at Carmarthen's Oriel Myrddin Gallery. Ball is one of 19 artists from across Europe putting their talents on show, though whether his is an original talent or an infringing one remains to be seen.

Gallery manager Rolande Thomas said it could prove tricky to ensure the work stays intact. "We are not too worried about anyone eating it," he said. "But he has left us some spares in case a mouse gets in and takes a nibble. "I'm more worried about people accidentally kicking it with their feet."

Says Ball: "I don't actually like pink wafer biscuits so I haven't been tempted to eat any along the way. As long as it brings a smile to people's faces then I think it will be a success. It is not intended as a satirical stab at minimalist art - its aim is more philosophical than that".

For details of the historical city of Carmarthen and its surrounding area click here. To view Carl Andre’s Equivalent VIII click here. Read about Carl Andre here. Buy your Nibble Mouse here. Pink wafer data here.



US COPYRIGHT BILL

Two Democratic Congressmen, John Conyers, Jr., and Howard Berman, have introduced the Author, Consumer, and Computer Owner Protection and Security Act of 2003 (the ACCOPS Act for short). Most significantly:

1. The Bill clarifies that uploading a single copyright-infringing file to a publicly-accessible computer network counts as a felony under United States copyright law.
2. It requires file-trafficking software distributors to obtain consent from consumers who download their software if the software takes over the consumers’ computers to search other peoples’ computers for content or to store files.
3. It makes it a federal offence, punishable by fine and up to 5 years imprisonment to provide false contact information when registering a domain name if the registrant has knowledge that the information is false and has fraudulent intent.
4. The Bill would make it a federal offence to video films at cinemas.

Don’t know if the Bill will get passed yet, but if it does (1) will bolster the attempts of copyright owners to crack down on individuals who download copyright-protected work while (3) should in theory make it easier for disgruntled companies to track down cybersquatters.

Read the Congressmens’ press release here.

SURFING, TRADE MARK STYLE

Have a look at www.inta.com and www.marques.com. You may be surprised by what you find...

(INTA is an international trade mark owners' interest group, MARQUES is a European brand owners' association.)

IPKAT VISITS THE ICA

The IPKAT (and its masters) paid a visit to the Institute of Contemporary Arts to hear Hogarth Chambers barristers Ashley Roughton and Simon Malynicz conduct a mock trial over whether Honda’s “Cog” car advert infringes Fischli and Weiss’ film Der Lauf der Dinge (The Way Things Go). Fischli and Weiss’ film consists of a series of everyday objects falling in a domino effect, while Honda’s two minute advert involves parts of a Honda Accord falling in similar fashion, eventually causing a complete Honda Accord motorcar to roll off a slope and unfurl a banner. The argument centred on whether copyright subsisted in Fischli and Weiss’ film as a dramatic work and whether, if it did, there was a taking of a substantial part of their work (as is necessary for copyright infringement) by Honda in its advert.

Honda "won" because they had not taken enough of the original work to have infringed it, although their activities did not meet with approval. A few points stand out though:

 The protection of contemporary art by copyright is a new and controversial area. Many examples of such art do not fit easily (if at all) into the taxonomy of works that are listed in the statute as being eligible for copyright protection and so may not be protected by copyright. With the exception of Norowzian v Arks (No. 2) [2000] ECDR 205 there’s also very little precedental authority in this area.

 Contemporary art v. advertising cases are a two-way street. Sometimes advertisers are inspired by and imitate art works but often it’s the other way around and it’s the artists who take off adverts. The legal issues can be different though because the later case may be viewed as a parody while the former case is more clearly commercially driven.

 Simon suggested that works of art that are intended to parody other works of art or adverts may benefit in the UK from the fair dealing for the purposes of criticism or review defence to copyright infringement. This is an intriguing prospect, although the artist may have a hard time proving this because the criticism of the earlier work is generally implied and left for the viewers to figure out for themselves.

 Honda’s advert has been parodied in another advert (be patient and click on the top TV) for 118 118 phone directory services. If Honda’s advert was found to be infringing, would the parody advert also have infringed Fischli and Weiss’ film?

Tuesday, 22 July 2003

BARBARA TAYLOR BRADFORD LOSES INDIAN COPYRIGHT CLAIM

Barbara Taylor Bradford has lost her copyright claim against Sahara TV and has been fined 150,00 rupees for every week that she held up the screening of the defendant’s television series. The author claimed that the television company had plagiarised her novel A Woman of Substance in its 260 part soap Karishma, The Miracle of Destiny. However, the court said that Taylor Bradford could not have a monopoly on the idea of a woman’s rags-to-riches story.

Visit one of the many websites about Karishma Kapoor, the star of Karishma, The Miracle of Destiny.
Another rags-to-riches story here.

UK GOVERNMENT SLAMMED FOR FAILURE TO PROTECT SMEs

In a letter to The Times legal supplement today 268 signatories -- including clockwork radio inventor Trevor Bayliss OBE -- pillory the UK government’s attitude towards patent enforcement, particularly with regard to the plight of SMEs (small and medium-sized enterprises). “If Government set out to design a patent system that failed to meet the needs of SME inventors and discouraged innovation, then the one in place would be close to it”, they complain. In place of the current system they advocate compulsory arbitration of patent disputes as well as the establishment of a patent defence union and the introduction of additional damages for infringement. “It is high time that the Government delivered on its promise to support Britain’s innovative businesses and individuals” by introducing the changes outlined in their letter.

Click here for the EU’s CORDIS programme on innovation and SMEs. Find out here how clockwork radios work. Learn here how ideas21 can help SMEs.

A LETTER TO THOSE WHO HAVE EARS THAT SEE

An interesting example of viral advertising from across the Pond. Nissan is pirating its own advertisements for Nissan Almeiras. Ordinary advertisements for Almeiras are posted but overnight they are seemingly graffitied with, for example, stereo speakers and the address www.electricmoyo.com. Other adverts are fly-posted and are meant to look like “street art” and Nissan radio adverts are supposedly hijacked by the voice of Electric Moyo (examples here). A visit to the Electric Moyo website reveals that, underneath all the “cool jargon”, it’s all a Nissan publicity stunt. On entering the site, the following message appears:

"Much respect to Nissan for allowing us to use their billboards and radio commercials as works of art, representing the kultcha of Electric MOYO and promoting our message of freedom, access and respect. These works of artistic messaging would not have been possible without Nissan's permission, and as a result our works are more powerful and farther reaching. The message of Electric MOYO is not about vandalism and does not promote it. My message is about harnessing the power of responsible artistic expression with corporate participation to bring about more freedom, access and respect for myself and the people of Electric MOYO."

Nissan’s senior manager for youth and urban communications has been quoted as saying: “We've been looking for innovative ways to communicate with forward-thinking, media-savvy multicultural youth”. This looks a bit like an attempt to get as many buzz-words as possible in a single sentence and I’m not really how the “multicultural youth” will take to a car company pretending to be a cultural collective.

Read more about the story here and here.

The title of this piece is taken from the Electric Moyo site. Need I say more?


IPKAT'S NEW HOME

We've had some technical difficulties with the blogging software that we've been using so we've switched to Blogger - hence the new look. Unfortunately though we've lost the ability for people to leave comments. We're working on it, but until we managed to sort something out please e-mail any comments to theipkat@yahoo.co.uk or either Jeremy or Ilanah.

Monday, 21 July 2003

ELVISLY PROFITABLE

Elvis entrepreneur Sid Shaw has announced that he is looking for a financial partner to expand his Elvisly Yours merchandising business. Shaw’s business is built on his 1999 Court of Appeal victory against Elvis Presley Enterprises Inc. At the trial Laddie J upheld the right of every person to call his house or even his dog Elvis without fear of legal reprisal. The Court of Appeal added that it could not be assumed that “only a celebrity or his successors may ever market his own character”.

At present Sid has granted more than 300 licences for the use of his ELVISLY YOURS trade mark for Elvis memorabilia. “My trade marks give official status to my products and I believe they give a licence to print money”, the Sunday Telegraph Business News reports him as saying: “I would like to find a financial partner with balls, drive and imagination to help me rock and roll, developing a worldwide Elvis business”.

Will Elvis return to assert the rights in his name and likeness? Click here for recent sightings.
For Elvis-style weddings and religious experiences click here and here respectively
Get your blue suede shoes here
To tickle Elvis, click here and wiggle your mouse


Saturday, 19 July 2003

PARALLEL PACKAGING IN COLOUR

In Glaxo and others v Dowelhurst and others the claimants were all companies which made original pharmaceutical products and the defendants were all parallel importers of the claimants’ products from elsewhere in the European Economic Area into the UK. In a complex action involving different types of repackaging of several different trade mark-protected products, the claimants objected to the way in which their products had been repackaged or relabelled without their consent and sued for trade mark infringement. After questions concerning the lawfulness of repackaging and relabelling had been referred to the European Court of Justice, the parties came back to the High Court in England so that Laddie J could decide the issue of liability.

This February Laddie J issued guidance as to how the issue of liability should be dealt with. The defendants subsequently applied to the High Court for a declaration that their packaging, used for two particular drugs, did not infringe any trade mark rights. The claimants argued that the use of colour might provide them with grounds for objection and that, for repackaging purposes, only black and white livery was permissible. It was the defendants’ contention that they were entitled to use any packaging as long as it minimised collateral damage to the claimants’ trade marks.

On 11 July Laddie J allowed the parallel traders’ application. To decide if the packaging was prohibited, one must consider the parallel trader’s livery carried unnecessary trade mark significance which would have an adverse impact on the claimants’ trade mark rights. Laddie J’s original guidance did not actually say that only packaging which did not use colour was permissible. Nor could it be said that all colour, used in any way, had trade mark significance. In this case, the disputed packaging liveries were very simple and there was no reason to suspect they had trade mark significance. No objection could accordingly be taken to them.

Friday, 18 July 2003

A RUBBISH STORY

The London Metro lists the Garbage Pail Kids as one of its candidates for “Ultimate Retro Toy Heaven.” However, the trading cards featuring unsavoury characters such as Varicose Wayne are unlikely to make a comeback because in the US case of Original Appalachian Artworks, Inc. v. Topps Chewing Gum Inc. they were found to infringe Original Appalachian’s copyright and trade mark rights in the Cabbage Patch Kids. Topps, the makers of the Garbage Patch Kids were also found to have tarnished the Cabbage Patch Kids trade mark. So much for the innocence of youth…

Cabbage info here, here and here

Things not to do with cabbage here

Little-known fact: World Cabbage Day is 17 February.

SHOULD NATIONS BE BRANDED? [posted by Ilanah and Jeremy]

Writing in Design Week (10 July 2003) Wolff Olins director John Williamson argues that countries should develop their own national brand identities. Only by “branding” can a country project its own national flavour and personality. If this isn’t done, countries are perceived by their leading international brands. Examples of brands which appear to personify their countries of origin are not hard to find: McDONALDS and NIKE may be said to epitomise the US, MERCEDES and BMW summarise Germany, CHAMPAGNE and DIOR will do for France while ARMANI and GUCCI typify Italy. Williamson urges countries to devote at least 1% of their annual gross domestic product on national branding programmes. Simon Anholt (Place Branding Institute director) disagrees: brands are about simplicity, while countries are complex and contradictory.

However, Anholt’s theory may be a little difficult to put into practice. In a sense most countries already do have a “brand” in the national stereotypes that abound (none of which need to be repeated here!) It is doubtful whether any amount of directed branding would be able to surplant these national stereotypes and so any country following Anholt’s advice would be wasting money that would be better spent elsewhere.

For more on place branding, look here
Alternatively, why not go the whole hog and let branding permeate every aspect of national life, however distasteful? see for example the debate surrounding the branding of the recent Iraq war here and here
.


KOOL KAT OF THE MONTH - JULY

Each month Ipkat will nominate a Kool Kat who has made a big impact on intellectual property law. We start this month with Jacopo (or Giacomo) Aconcio, an Italian cleric who served many years as clerk to the Bishop of Trento, in northern Italy. Aconcio, who lived in the 16th century, was a man of great versatility and compassion. After suffering a crisis of conscience over his religious faith he left the service of the Catholic Church and moved to Switzerland, where the Reformation had taken hold. But he did not stay there long.

In the 1550s he emigrated to England, where he was engaged in assessing the fortifications of Berwick Castle, some remnants of which can still be seen today. Later he moved to London where he became an inventor and devised a method for the draining of Plumstead Marshes. In 1559 he wrote to Queen Elizabeth and asked for a monopoly in an invention he had made, to stop others copying it unfairly after he had spent so much time and effort perfecting it. Although patents had been granted in England since 1331 this was the first time anyone had asked for a patent because he was an inventor. The Queen, realising that Aconcio was an old man by that time, did not give him a patent monopoly but granted him a pension for life. Nonetheless, the idea that patents should be given as rewards for invention began to gain popularity at that point and, by the Statute of Monopolies in 1624, had become the chief justification for patent grants.

Aconcio did not live long on his pension and his end was sad. Having written a powerful tract urging tolerance of Protestant groups by the Catholic church, and vice versa, he was rejected by both and died a religious outcast. But without his petition to the Queen, the patent system in England would not have gained its early impetus.

On Aconcio himself click here
For sources on the Reformation click here
To find out about Queen Elizabeth, the Virgin Queen, click here, here or (for the Bette Davis version) here
Find out more about Plumstead here

Thursday, 17 July 2003

UK COURTS GET FAMILIAR WITH US PATENT DOCTRINE

UK company Celltech obtained a patent for humanised antibodies from the USPTO. Before it was granted, Celltech licensed a US corporation, Medimmune, to develop, make, use and sell antibodies. Medimmune, who developed a humanised antibody which it sold under the trade name SYNAGIS, claimed that since its antibody would not have infringed Celltech’s patent it did not have to pay licence royalties. Celltech disgreed and sued for patent infringement, relying on the doctrine of equivalents, a rule of US patent law by which there might be infringement even if a product or process fell outside the literal meaning of the words of the claim when understood in their context.
Medimmune argued that Celltech could not invoke the doctrine of equivalents because of another feature of US patent law, the doctrine of prosecution history estoppel. Medimmune sought to rely on two types of prosecution history estoppel: (i) ’amendment estoppel’, which precludes a patentee from seeking protection for subject matter that was relinquished or distinguished in the course of the patent application and (ii) ’argument estoppel’, holds an applicant to the USPTO bound by unequivocal assertions he makes about the scope or meaning of his claims.
The trial judge, Jacob J, dismissed the infringement claim, holding that Celltech was bound by argument estoppel but not by amendment estoppel. Both parties appealed. The Court of Appeal today dismissed Celltech’s appeal but, by a 2-1 majority, allowed Medimmune’s cross-appeal. What is interesting here is the way the UK courts are gradually making themselves more at home with significant features of US patent law doctrine.

CHINESE COPYRIGHT CASE

The China Blawg reports that Chinese calligrapher Guan Dongsheng has sued Dow Jones for infringing his copyright by taking calligraphy he drew and using it as the Dow Jones logo. Guan is seeking US$602,400 for moral and economic damage. The work consists of the “dao” character (meaning virtue and pronounced “dow”) accompanied by a few words and a seal added by Guan. The work was given to the Dow Jones CEO in 1994. Guan claims it was a gift but Dow Jones claims that he had agreed to create it for them and so they are free to use it.

More on the story here
Chinese copyright law here.
Depiction of the “dao” symbol here
Learn about Chinese calligraphy here
Learn to write Chinese calligraphy here

ORANGE AND GREY NOT REGISTRABLE AS A CTM

On 9 July in Case T-234/01 Andreas Stihl AG & Co. KG v. OHIM the Court of First Instance of the European Communities (CFI) affirmed OHIM’s decision to reject an application to register as a Community trade mark a combination of two colours, orange and grey, with specified Pantone™ numbers, for a range of machines and tools in Class 7. The CFI accepted that in principle colours or combinations of colours could constitute a CTM to the extent that they were capable of distinguishing the goods or services of one undertaking from those of another, citing its earlier decision in Case T-316/00, Viking-Umwelttechnik v OHIM (“Green and grey”).
The CFI then went on to repeat its own formulation of the objection under Article 7(1)(b) CTMR, “devoid of distinctive character”. Such marks are those that do not permit the identification of the original of goods or services and thus do not permit the relevant public to repeat a positive purchase experience or to avoid a negative purchase experience when considering a subsequent purchase for the goods or services in question, see Case T-79/00 Rewe-Zentral v OHIM (LITE).

The CFI emphasised that Article 7(1)(b) does not distinguish between different types of marks but confirms its holding that the perception of the relevant public is not necessarily the same for all types of marks; in particular, there is a big difference between colour marks and word marks because colour marks are not normally used to identify origin, see the Viking case. The CFI agreed with the OHIM Board of Appeal that grey is often used as the colour of metal or plastic of which tools are commonly composed. When it comes to the combination of grey and orange, the mark as represented was a pure colour combination without reference to where precisely or how precisely it would be applied to the surface of a product or its packaging, without providing a concrete example of the “distribution” of the two colours. The CFI also stated that the particular combination of colour would not be recognised as a sign because the distribution of the two components was not given systematically on the products and could be used in very numerous different arrangements, which would not permit the consumer to apprehend and memorise a particular combination that would then be utilised to re-iterate and repeat a purchase experience, in an immediate and certain manner. The relevant public would not consider this particular colour combination as a sign indicating that thus-coloured products have the same provenance of a particular enterprise, but rather would consider it to be a simple element of finish of the products. Thus rejection under Article 7(1)(b) was amply justified.

A strange feature of this decision is that it made no mention of the European Court of Justice’s recent landmark decision in Case C-104/01 Libertel.
The Andreas Stilh decision is available in all EU official languages except English and Italian. This article has been prepared from a note by Tibor Gold.

BRANDED FROM A YOUNG AGE

In an article in the New York Times reminiscent of certain parts of Naomi Klein’s No Logo (tie-in website here), Alissa Quart (reviews of her Branded here and here) has slammed the encroachment of brands into pretty much every aspect of school life in the United States. The issue has been brought into focus by the decision of certain school boards to ban junk foods from vending machines in the school grounds because of the link between such foods and teenage obesity. Quart goes one further, arguing that the pupils “soak up” the branding on such products. However, this is only the tip of the iceberg, with sponsorship taking many forms, including advertising in corridors, educational materials sponsored by companies, field trips to shopping centres and Channel One a school television network that shows advertising.
For example, Quart reports:

“One teenager from Texas who attends a school sponsored by a soda company recently told me that she was not allowed to drink other sodas in school and then was coerced into covering her textbooks with paper bearing the logo and the image of that brand of soda.”

Should IP lawyers feel guilty? Well, at least a little. The branding gets into schools through sponsorship deals and someone has to draw up those deals. Also, the tangible symbol of the brand ideals that are being foisted on to schoolchildren is our good friend the trade mark -- but please feel free to differ…

Channel One, the US TV network for schools here.
Field Trip Factory, which sends children on field trips to the shops of its corporate sponsors here.

Wednesday, 16 July 2003

NAMED AND SHAMED

The UK Patent Office, concerned by certain cases where the loser in inter partes trade mark opposition cases has failed to pay his share of the winner’s costs, has published a list of defaulting losing parties in an attempt to encourage them to pay up without the need for further legal action. The Registrar doesn’t actually have the power to enforce the cost orders but can impose security for costs on parties engaged in proceedings if he believes that they will not honour any costs orders made against them. A survey to investigate the extent of the unpaid costs problem has also been launched.

Tuesday, 15 July 2003

IFPI NAMES TOP TEN HOST NATIONS FOR CD PIRACY

IFPI, the International Federation of the Phonographic Industry (IFPI), has listed the top ten markets for pirated CDs in its new publication, the Commercial Piracy Report 2003. In alphabetical order they are Brazil, China, Mexico, Paraguay, Poland, Russia, Spain, Taiwan, Thailand and the Ukraine. The criteria for inclusion in this list include the value of the pirate market in each country, the total size of the legitimate market and the year-on-year growth of the pirate and legitimate market from 2001 to 2002.
According to the report, sales of pirated CDs have more than doubled since 1999, from 510 million to more than one billion copies in 2002 with an estimated value of $4.6 billion in 2002, a 7% increase over 2001. The worst offending nation is China, according to the report, where more than 90% of all its recordings were pirated. China’s illegal music market is said to be worth more than $530 million.

To see the full report click here. For details of counterfeit CDs in China click here and here.

STAND AND DELIVER, MY PRECIOUS FLOWER

London law firm Mischon de Reya has launched TuLIP (short for “Turning Losses into Profits”). The stated aim is “recovering money and lost profits directly from the counterfeiters using all the weapons available in the civil courts”, which the firm claims is more efficient than seizing counterfeit goods and sending out cease and desist letters. Curiously, they advertise this service as an investment opportunity claiming that “For every pound invested, TuLIP aims to produce a return of at least 2 to 3 times that investment”. Certainly there’s money to be made from IP litigation (as long as you’re successful!) but would anybody describe measures against counterfeiter as an investment? (Although it’s one way of beating low interest rates…)
A source from the firm rather charmingly describes the target defendants as “brand bandits” (quoted in the Times - free registration required) which makes a change from the usual “pirate” label.

Tulip info here.

Bandits at high noon here.

Go head to head with your favourite pirate here, here or here.

I'M MIDDLE CLASS...AND I'VE GOT THE T-SHIRT TO PROVE IT

Today Jacob J delivered a decision partially revoking certain ANIMAL marks. The revocation was the result of a counter-claim brought by Medici Limited when H Young (Operations) Limited, the owner of the ANIMAL mark for certain surfing themed items and clothing challenged Medici’s use of ANIMALE for sedate clothing for more mature ladies.
The judge said that partial revocation must be judged according to a fair description that would be used by the average consumer for the products in which the mark has been used by the proprietor (following ESB). In order to determine this one should assume:

“that the average consumer is told that the mark will get absolute protection ("the umbra") for use of the identical mark for any goods coming within his description and protection depending on confusability for a similar mark or the same mark on similar goods ("the penumbra"). A lot depends on the nature of the goods – are they specialist or of a more general, everyday nature? Has there been use for just one specific item or for a range of goods? Are the goods on the High Street? And so on. The whole exercise consists in the end of forming a value judgment as to the appropriate specification having regard to the use which has been made.”

As a result, an attempt to limit the surfing company’s mark by image to “surf-type goods” to younger consumers was rejected because consumers would not distinguish between types of clothes in such a way. Similarly, consumers do not make a distinction between types of garments (e.g. jeans v. dresses) for this purpose so a claim for “clothing” without further qualification was fine.
Certain of the other claims were narrowed however. Most interesting is the claim for boxes and packaging containers. The judge said that use of the mark on the packaging which goods bought by the trade mark owner’s customers does not count as trade mark use because there is not trade in the packaging and so the registration for those items was removed.
The judge’s keen fashion sense demonstrated in describing Medici’s clothing is worthy of note:

“The garments are simultaneously elegant and casual, the sort of thing that might be worn at a wedding, a casual dinner party of the middle class, perhaps particularly in summer or on the promenade in Nice or Torquay. Much of the range is designed to be coordinated, that is to say one item may well go with another, though of course many women buy clothes which can be used either individually with other garments. The garments are not very expensive.”

Visit the surfing lawyer here.

Monday, 14 July 2003

THEY’RE ALL GOING ON A SUMMER HOLIDAY

The European Court of Justice is on vacation from today (Monday 14 July) to 5 September 2003. If you want to know about legal implications of chickens, trainers or chewing gum you’ll just have to wait.

Get into the holiday mood here.

CATCH IT WHILE YOU CAN

The BBC that DVDs that self-destruct within 48 hours are to be launched next month by Flexplay Technologies. The DVDs won’t do anything as exciting as exploding. Instead they slowly turn black two days after they first come into contact with air, meaning that they can no longer be read by the laser equipment within the DVD player. The attraction is that they can be sold cheaply in place of rented films. However, the BBC points out that this technology could prove a cheap source of material for pirates as they do not have any extra copy-protection compared to ordinary DVDs.

INCIDENTAL INCLUSION” COPYRIGHT INFRINGEMENT DECISION UPHELD

Last Friday in Football Association Premier League Ltd and others v Panini UK Ltd [2003] EWCA Civ 995 the Court of Appeal for England and Wales dismissed Panini’s appeal against a ruling that it had infringed the claimants’ artistic copyright. Panini sold unofficial football sticker albums together with photos of footballers from the Premier League clubs. Almost every player was depicted wearing a football shirt which featured thes logo of his club and of the Premier League. The League, acting on behalf of the clubs, had previously granted to Panini’s rival Topps the exclusive rights to use and reproduce the official team logos in its official Premier League sticker collection.
The League, Topps and the clubs sued Panini for infringement of artistic copyright in their logos and sought an injunction. Panini denied infringement, arguing that the inclusion of the logos in its photos was “incidental” and that the incidental inclusion of a copyright work in another work was not an infringement under the Copyright, Designs and Patents Act 1988, section 31. The trial judge held that the use of the logos in the sticker photographs was not incidental: that word meant “casual or of secondary importance” while the inclusion of the logos was not “incidental” since it showed that the players’ photos were current.
The Court of Appeal dismissed Panini’s appeal. In its view the question was not one of what might have been in the mind of the photographer when he took the photos but what were the circumstances in which the photos were created. To test whether the use of one work in another was incidental one should ask why the one had been included in the other, considering commercial as well artistic reasons. Applying that test it was clear that the use was not incidental. The Court added that the sticker albums themselves were probably literary works and not artistic works to which the “incidental inclusion” defence could apply.

Sunday, 13 July 2003

SUCCESSFUL SPURS OPPOSITION

Tottenham Hotspur Football Club has successfully opposed an application by Patricia Hard O’Connell and Michael O’Connell to register TOTTENHAM for metal ornaments and badges, flags and various items of clothing. The applicants’ sign was identical to that owned by the football club and the goods applied for were either identical to those for which Tottenham Hotspur owned registrations or were very similar (the football club’s specifications of goods were subject to certain limitations) leading to a likelihood of confusion.
The applicants argued that their registration should go ahead on grounds of honest concurrent use but the Hearing Officer said that honest concurrent use cannot be argued in Section 5(1) identical marks/identical goods cases because the protection granted to the registered mark proprietor in such cases is absolute. However, he thought that it could be argued in Section 5(2) cases because a history of third parties using the mark would make confusion less likely.

Get your Spurs kit here.

RUBBER DUCK FLOTILLA BOOSTS BRAND IDENTITY

According to the Telegraph website, in 1992 around 29,000 rubber ducks, bound for America, spilled into the sea when their steel container broke. After drifting in circles with many tons of other lost cargo in the Pacific, they eventually floated north to the Bering Sea. It took three to four years for them to inch their way through the ice packs of the Arctic Ocean before emerging into the Atlantic. Some of these ducks are believed to have floated south past the British Isles in 2001, on their way to warmer tropical waters. But most floated south by south-west with the currents and are expected to make landfall in Canada within the next few weeks - by now bleached white from their original yellow, but their survival a testimony to the durability of plastic.
Some of the ducks, which have been tracked by oceanographers studying the flow of tides and currents, still have traces of the name of the company that made them, The First Years, across their chests. A company spokesman said that the company was "surprised" at the durability of the product.
For information about Soft Ducky, quack here. For an index of duck recipes, click here. If you find a rubber duck, click here.

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