"LET MY WINDSCREENS GO"

The European Court of Justice (ECJ) ruled last week that national customs authorities in European Union Member States can't detain goods at their borders if those goods were lawfully manufactured in another EU country and are only in transit through a country where they infringe while on their way to another country in which they can be lawfully sold. This is the case whether the country of destination is an EU Member State or, as in this case, a non-EU country such as Poland. This decision follows a complaint by Spanish glass makers Rioglass and transhipment agents Transremar that the French had unlawfully detained car windows and windscreens made in Spain for sale in Poland. The goods bore Peugeot, Citroen or Renault logos or trade marks as well as those of the maker and the French authorities seized them, alleging they infringed national trade mark rights. The ECJ said French law shouldn't allow this: the principle of free movement of goods within the EU was protected under Article 28 of the EC Treaty and the derogation in favour of intellectual rights found in Article 30 did not apply unless it operated so as to safeguard rights which constitute the specific subject-matter of such property. That was not the case here, where the goods in transit were not intended to be put on to the market in France (or anywhere else in the EU) and did not therefore affect the "specific subject-matter" of French trade mark law.

The IPKat recognises that the principle enunciated by the ECJ is a correct expression of EU law, but is nonetheless concerned. Poland and another nine countries become members of the EU next May. When that happens, how will intellectual property owners in the 15 current Member States be able to monitor the movements of goods such these windows and windscreens, which cannot currently be sold in France but which will be effectively able to circulate without restriction within the enlarged European Union after next May?

The current and future (from 1 July 2004) EU IP customs seizure Regulations
Websites of European customs authorities here
More on European customs here, here and here

ONE PATENT OFFICE, TWO PRESIDENTS

On Wednesday 29 October Alain Pompidou and Alison Brimelow were elected as the next two Presidents of the European Patent Office (EPO). Pompidou is a member of the French government; Brimelow is chief executive office of the UK Patent Office. The plan is that they will split the presidency of the EPO between them. Pompidou will take up office on 1 July 2004, when Ingo Kober steps down, remaining in office until 30 June 2007 at which point Brimelow will carry on until 30 June 2010. This compromise resolves months of debates and political lobbying, following two failed rounds of votes in March and June at which no candidate reached the required three-quarter majority of the votes cast by the 27 member states of the European Patent Organisation.

The IPKat is relieved that the protracted spat over the EPO presidency has been resolved, but he is saddened that the direction of one of the world's "big three" trilateral patent offices (along with the USPTO and JAPIO) should be vulnerable to political considerations which have nothing to do with the needs and requirements of the patenting community.

Some previous European experiments in power-sharing here, here and here
Follow my leader here, here and here (to read lyrics and listen to song)

IPKAT'S OCTOBER PATENT OF THE MONTH: I LOVE LUCY

Thinking of commissioning a new home or office but afraid that all those tasteful modern glass buildings are a bit “samey”? Are you looking for a house or HQ that will ensure that you stand out from the herd? Then the IPKat’s October Patent of the Month is just what you’ve been looking for. Granted to James V Lafferty in 1882, the claim is for:

“A building having the form of an animal, the body of which is constructed with floors divided into apartments, provided with windows and stair, and supported on hollow legs, one or all of which contain stairs, and supported on hollow legs, which afford access to the body…”

It seems that novelty requirements were less strict a century ago as Lafferty had already had a building in the shape of an elephant built the previous year in South Atlantic City. This building, affectionately known as Lucy, still stands today in what is now known as Margate NJ. However, Lucy’s sister pachyderms, the Light of Asia and Elephantine Colossus, did not survive. As well as being a building of “unique appearance”, as the patent specification points out, there is a functional aspect to Lucy. The elevation provided by the legs allows air to circulate beneath the body, resulting in “a building which is well ventilated and lighted”.

The IPKat is rather keen on this idea and feels that the City of London would definitely benefit from a building in the form of an IPKat.

Visit Lucy here
Visit Margate here
Fun you can have with an elephant here and here

ADIDAS JUDGMENT FINALLY ONLINE

The European Court of Justice decision in Case C-408/01 Adidas-Salomon AG and Adidas Benelux BV v Fitnessworld Trading Ltd, blogged yesterday by the IPKat, is now available online. Says the IPKat, "About time too!".

CONGRATULATIONS, RUTH

It's a red-letter day for Ruth Soetendorp, who delivers her inaugural lecture, "Food for Engineers", at Bournemouth University today. Ruth, who holds degrees from Southampton and a Diploma in IP from Queen Mary and Westfield College, is a pioneer in the field of intellectual property teaching techniques. She is currently Head of Knowledge Transfer and Professor of Intellectual Property Education in the School of Finance and Law. Ruth, the IPKat congratulates you on your achievements.

IPKAT CHALLENGE: SPOT THE TRADE MARK

The IPKat found this rather charming font to download via a link from boingboing. It is composed entirely of letters and symbols from well-known trade marks and trade names. The site proudly proclaims: “Corporate pirates, this is the tool for you!”

The IPKat offers the usual prize to the person who is most successful in identify the trade marks to which the letters and symbols belong before next Monday. Send your answers to theipkat@yahoo.co.uk

View the font here

Corporate pirates ahoy here
More fun fonts here
Corporate fonts here

UN'S "GLOBAL IMPACT" NAME AND LOGO GET THE PARIS TREATMENT

The World Intellectual Property Organisation has advised the UK Trade Marks Registry that the names and emblems of the United Nations Global Impact are to be protected under Article 6ter of the Paris Convention for the Protection of Industrial Property.

The IPKat wonders how much of an impact the UN's Global Impact initiative has made. Even after mousing his computer into action he couldn't find a sample of the logo on the internet.

Global Impact initiatives here and here
Not such global impacts here, here and here
You too can make an impact: click here, here and here

LAST ORDERS FOR CARDHU?

The BBC reports on a storm brewing in the Highlands. Diageo, the distillers of Cardu whisky have started using the Cardhu name and label on a mixture of vatted malts sourced from various distilleries. Previously the name had only been used on a single malt produced exclusively by the Cardhu distillery in Knockando. Whisky-lovers and rival distillers are unhappy, claiming that the continued use of the name is misleading and damages the reputation of single malt whiskies. Diageo explains that it is necessary to use the name on blends because stocks of Cardhu are running low, thanks to the popularity of the product in countries such as Spain, Italy, Greece and France. It claims that any confusion will be averted because it has been transparent about making the change and will sell the blends as “pure malt” rather than “single malt”.

The IPKat has been known to enjoy a wee dram but he cautions that trade marks are liable for revocation under s.46(1)(d) of the Trade Marks Act 1994 if they are used in a way that is liable to deceive the public. This provision is expressed in broad terms and does not explain what sort of use is regarded as being deceptive.

Drinkers of CARDHU whisky have been taught to expect a whisky that comes from a single distillery,by the use of the accompanying term "single malt". It may therefore be argued that, by using the CARDHU mark on a whisky different to that which the public has been taught to expect, the use of the same mark in relation to a blended whisky will mislead the public. This argument depends on the assumption that deception is established through the context of the use to which a mark is put rather than through the nature of the mark itself. If this argument holds true, then trade mark owners might find it difficult to change any product which is known to have certain specific qualities or to come from a single source.

Whether Diageo’s use is deceptive will depend on whether the public previously perceived the whisky as coming from a single distillery and whether they still perceive it as coming from that distillery or if the use of the term “pure malt” has dispelled this perception.

Learn about whisky here
How to visit Cardhu distillery here
Music to drink Cardhu to here (track 15) and here (track 3)
Seeing whisky in your sleep? Click here

STRIPE WHILE THE IRON'S HOT - ADIDAS v FITNESSWORLD (AT LAST)

Up until late on Monday evening, the IPKat was a frustrated feline. He just couldn’t bear the tension. Last Thursday morning he leapt out of his basket, filled with expectation. It was the day he’d been waiting for – the day the ECJ issued its Adidas v Fitnessworld decision. Imagine his disappointment when he visited the website and found a press release but no judgment. Despite his numerous visits to the ECJ website, the case refused to appear. His mood was not improved when he found the case was not posted on Friday either. When it came to the end of the working day on Monday and it still wasn’t there he was tearing his fur out. Luckily though, friend of the IPKat Tibor Gold managed to obtain a copy and put the IPKat out of his misery. Here’s what he found.

Adidas is the proprietor for various items of clothing of a figurative mark made up of three vertical stripes of equal width running parallel which appear on the side and down the whole length of clothing in a colour that contrasts with the basic colour of the clothing. Fitnessworld marketed fitness clothing bearing two parallel stripes of equal width which contrasted with the main colour of the clothing. Adidas claimed that this constituted infringement because the public might associate Fitnessworld’s clothing with Adidas’, allowing Fitnessworld to take advantage of Adidas’ repute and damage the exclusivity of Adidas’ repute. The Hoge Raad der Nederlanden referred various questions to the ECJ including (i) whether Member States were entitled to provide Article 5(2) (the ‘dilution’ provision of the Trade Mark Directive) protection against use on similar and identical goods; (ii) whether likelihood of confusion was the criterion to be applied under Article 5(2) or whether there were some other relevant criteria and (iii) how a sign viewed by the public purely as an embellishment should be treated under Article 5(2).

According to the ECJ, the question of whether the Member states were entitled to provide Article 5(2) protection for similar or identical goods had already been affirmatively answered by the Court in Davidoff (Case C-292/00) [2003] ECR I-389. Therefore the ECJ thought it would be more helpful if it answered the question of whether Member States had to provide Article 5(2) protection if they opted to include that article in their national trade mark law. Once again, the answer was yes. The overall scheme of Directive 89/104 is such that marks with a reputation used on identical or dissimilar goods should not have less protection that marks with a reputation used on dissimilar goods. Under EU law, national courts are required to interpret national legislation that transposes directives as far as possible in accordance with the wording and purpose of the directive. In this case, that means that national courts must interpret legislation designed to implement Article 5(2) as requiring the protection to be granted against use on similar and identical goods as well as use on dissimilar goods.

Under Article 5(2), similarity between the mark and the sign requires the existence in particular of elements of visual, aural and conceptual similarity. The injury under that article is the result of the public establishing a link between the sign and the mark and is not conditional on the public confusing them. This link must be appreciated globally, taking into account all the factors relevant to the circumstance of the case.

The fact that a sign is viewed as an embellishment by the relevant section of the public does not mean of itself that the sign is ineligible for protection under Article 5(2), as long as the degree of similarity is such that the public make a link between the mark and the sign. However, where a national court finds that a mark is viewed by the public purely as an embellishment, it does not establish any link between the mark and the sign and therefore is not considered to be infringement under Article 5(2).

The IPKat feels that this case raises more questions than it answers. Although the ECJ has given clear guidance on the application of Article 5(2) to similar and identical goods, the concept of a link between a sign and a mark is new and is undefined. It also seems to pay little attention to the types of injury detailed in Article 5(2) (detriment and unfair advantage). Concepts that are familiar from confusion case law feature heavily, notably the similarity of signs test and the concept of a global appreciation but should they be applied in the same way in Article 5(2) cases. Finally, unlike the Advocate General, the ECJ has failed to comment on the general question of whether trade mark use is necessary for trade mark infringement, limiting its comments to embellishment cases.

Explore the world of fitness here, here and here
Things worth waiting for here, here and here
All you need to know about impatience here
Curb your impatience here

DOES YOUR WARHOL IMITATE LIFE, OR IS IT JUST FAKING?

The Sunday Telegraph has reported that more than 20 art dealers and collectors are preparing to sue the Andy Warhol Authentication Board, which oversees Warhol's $700 million (£413 million) legacy. They allege the Board is deliberately refusing to verify allegedly new genuine works by the artist because it wants to ensure that the price of existing works remains high. Many of those whose claims have been turned down by the board claim that they were given the works by Warhol while he was still alive. The campaign against the board is led by Joe Simon, the producer of the film “Richard the Third”. Simon, who lives in London, has had a number of works turned down, including a Warhol silkscreen self-portrait that he bought 14 years ago for $195,000. That work, he said, had been previously sold by Christie's. It was verified both by Warhol's manager, Paul Morrissey, and by Fred Hughes, Warhol's executor and the late chairman of the Andy Warhol Foundation. But when Simon presented it to the Board three years ago, however, with the intention of selling it for £2 million to a buyer who wanted proof it was genuine, he was told that it was "not the work of Andy Warhol". "I felt very angry”, Simon said, “largely because they had encouraged me to submit it so the picture might be included in the catalogue that the Board are involved in editing", he said. "To my utter disbelief, my twice previously officially authenticated painting was returned to me denied, without any explanation. To this date they still refuse to give any reason".

The Board however faces a serious problem. Warhol, having come up with the concept for a work, often delegated the manual labour to other people, thereby making it difficult to ascertain who "made" the piece. John Paul Russell, his printer during the 1980s, said: "I had never seen Andy Warhol even once come down to the studio in Tribeca to watch his work being printed". Many of his instructions to the printers were by telephone. Ron Spencer, the Board’s lawyer, said that its role was to ascertain the "intent" of the artist. He told this month's Vanity Fair magazine that even if a work were printed by a number of other people the Board would still classify it as genuine: "If Warhol conceived the idea and he then directed someone else to prepare a silkscreen, supervised the process of production and, in effect, signed off on it, as long as he said, 'That's good, that's what I wanted', Warhol created that work". Many dealers claim, however, that this definition does not hold in practice and that some screen prints in a series are accepted as genuine by the board while identical works are refused.

The IPKat notes that UK copyright law is clear. Merely conceiving an idea which is executed by others does not constitute an act of authorship in relation to the work which those others have created. This is not the case, though, in the unusual situation in which the person who executes the work is a mere amanuensis, who exercises no independent judgment whatever in how the work is to appear. Some of Warhol’s works may thus be authenticated by the Board as genuine Warhols but nonetheless be regarded as his works for UK copyright purposes.

Andy Warhol, “silver screen: can’t tell them apart at all” here
Resale royalty rights: what happens if you resell your real Warhols in the European Union, California and Australia
How to tell if a work is a fake here, here and here

IT’S THE STORY OF YOUR LIFE -- BUT YOU CAN’T HAVE IT BACK

The IPKat’s previous blog was the first time we featured the British prison authorities, whom the House of Lords held not liable for an alleged invasion of prison visitors’ privacy. Well, would you believe it, they’re back on the blog again, this time having been accused by British serial killer Dennis Nilsen of refusing to return him the unfinished manuscript of his autobiography. Nilsen, now 57, sent the manuscript to his former lawyers in 1996 but, when his current lawyers tried returning it to him last year, the prison authorities stepped in and told him he couldn’t have it on the ground that prisoners shouldn’t have “a public platform to glory in their crimes”.

Nilsen, who admitted killing and dismembering 15 young men, mainly homeless homosexuals, was jailed for life in 1983. He was told he would never be released, unlike his autobiography which may well be coming out sooner than the prison authorities think. This is because, according to Alison Foster QC who represented him in court, several copies of the manuscript are in the hands of Nilsen’s friends and one copy is believed to be in the hands of an unspecified Sunday newspaper.

The IPKat notes that the rules that are supposed to prevent prisoners cashing in on their crimes by selling their stories or publishing their memoirs do not actually affect the ownership of copyright in their writings. When Nilsen dies, the copyright in his manuscript will pass to his executors along with the rest of his estate. It is not clear whether the Home Office can influence the extent, if any, to which the posthumous publication of a literary work based on a prisoner’s crimes may be restricted or prevented to the extent that it will benefit his estate.

Dennis Nilsen’s crimes here, here and here
Law on prisoners’ earnings in the UK here
Profit from writing about one’s crimes: the position in Oregon

INVASION OF PRIVACY? DON'T ARGUE IT HERE, SAY THE LAW LORDS

When Patrick O'Neill was remanded in prison, his mother (Mary Jane Wainwright) and his half-brother (Alan Wainwright) wanted to visit him. The prison governor, who suspected that O'Neill was dealing in drugs, gave instructions under the Prison Rules 1964 that anyone visiting him had to consent to a strip search. The Wainwrights reluctantly agreed but later sued, alleging they had suffered emotional distress and (in Alan's case) post-traumatic stress disorder. The trial judge held that the search, not being conducted in accordance with the prison's own rules, was an invasion of privacy. Since the search exceeded what was necessary and proportionate to deal with drug smuggling, there was no defence based on statutory authority. The judge gave damages to Alan for battery and to both Mary Jane and Alan on the basis that (i) it was a form of trespass to the person to ask them to take off their clothes and (ii) they were entitled to relief against any kind of distress caused by an infringement of the right to privacy protected by Article 8of the European Convention on Human Rights (ECHR), although at the time of the incident the Human Rights Act 1998 -- which implemented the ECHR in the United Kingdom -- had not come into force. The Court of Appeal did not agree that trespass to the person covered the case of someone who was induced to take their clothes off and which, in the case of Mary Jane, did not suffer any recognised psychiatric injury. It set aside the judgments in favour of Mary Jane and Alan, with the exception of the damages for the admitted battery to Alan.

The House of Lords dismissed the Wainwrights' appeal. First, they said, there was no general cause of action in English common law for invasion of privacy. Douglas v Hello! Ltd (2001) QB 967, which was cited in support of the proposition that a privacy tort existed, was just a case of regular breach of confidence. Secondly, compliance with Article 8 of the ECHR did not require the adoption of a tort of invasion of privacy: if a person's rights under Article 8 were infringed, the Human Rights Act 1998 provided a statutory remedy. Further, Article 8 might justify a monetary remedy for an intentional invasion of privacy by a public authority, even if no damage was suffered other than distress for which damages were not ordinarily recoverable -- but this did not mean that a merely negligent act should, contrary to general principle, give rise to a claim for damages for distress merely because it affected privacy rather than some other interest.

The IPKat considers that the notion of "invasion of privacy" is a fuzzy one. "Privacy" as a concept does not clearly distinguish between the invasion of a person's physical privacy by strip-searching and the communication to others of private information. Yet one is a matter of individual's personal integrity, the other a matter of restricting the circulation of information which may be personally sensitive or commercially valuable. Should the law treat strip-searching and the publication of the details of one's bank statement, for example, as activities which are dealt with in the same manner by the same legal action?

Different aspects of privacy here, here and here
Privacy fetishes here and here
Smuggling into and out of prisons? Click here, here and here

SOUTH AFRICAN COMPETITON AUTHORITY CALLS FOR PATENT LICENSING FOR HIV DRUGS

The BBC reports that the South African Competition Commission has advised that GSK be fined 10% of its annual AIDs drug revenue in the country as a penalty for failing to make the drugs available to the poor. Additionally, it has recommended that GSK and Boehringer be made to grant compulsory licences in return for royalty payments to generic drug-makers, the aim being to promote competition between the patent holders and generics companies. The ruling was made on 3 grounds:

1. Denial of access to an essential facility
2. Excessive pricing
3. Exclusionary activities

The case will now be passed on to the Competition Tribunal which has the power to enforce it.

The IPKat notes with interest that this has been treated as a competition law problem rather than a patent law problem, though he observes that the case was referred to the Commission in 2002, before the measures to guarantee access to drugs introduced this year in Cancun. Traditionally there has been somewhat of an antagonism between the two areas of law. However, the ultimate aim of competition law is to benefit consumers by providing a competitive market while patent law also protects the public interest by providing for compulsory licences of patents. Nevertheless, whichever field of law the issue of access to drugs for the less well-off is tackled under, the outcome means the difference between life or death for millions of people.

Competition Commission press release here
Information on the AIDs problem in South Africa here and here
Information on AIDs drugs and IP here

UK OFFICIAL GUIDANCE ON COLOUR MARKS

The UK Trade Marks Registry has announced that it is going to apply the Libertel criteria for the graphic representation of colour trade marks to applications to register colour as applied to defined surface areas. This practice amendment comes even though the comments in Libertel were limited to applications to register colours in the abstract. As of yesterday, marks consisting of colour alone

♦ may not just be provided as colour samples on paper;
♦ may be presented as a written description of the colour together with the relevant code from an internationally recognised colour identification system;
♦ may be presented by other means that meet the Sieckmann criteria of being clear, precise, self-contained, easily accessible, intelligible, durable and objective.

Colours can be submitted by e-filing or by fax, although in the latter case a description in words will be necessary and it is safe to also refer to an internationally recognised colour code.

The IPKat welcomes this advisory notice but wonders why the Registry has confined its guidance only to colours as applied to a defined surface area. If an application to register a colour which lacks such a defined area is refused on the basis that it falls outside the scope of this notice, applicants should remember that Trade Marks Registry advisory notices are not the same as statute law: they are there to ensure consistent treatment of applications by different examiners and to let applicants know how to process their applications, not to define the absolute grounds upon which an application is refused.

Learn about colours here and choose your Pantone shades here
Songs about colours here, here and here
Sing a rainbow here

IPKAT RIDDLE: A STICKY PROBLEM

In OHIM v Wrigley, the European Court of Justice (ECJ) remitted Wrigley's application to register the word mark DOUBLEMINT as a trade mark for chewing gum and other goods to the Court of First Instance (CFI), after ruling at paragraph 35 that the CFI had failed to consider whether the word "doublemint" was "capable of being used by other economic operators to designate a characteristic of their goods and services". The phrase "other economic operators" attracted the IPKat's attention since the ECJ has not told us which economic operators it means. Presumably it includes other chewing gum manufacturers, but who else is included in this august category -- and how do we know which economic operators to consider? Should we just look at undertakings that deal in identical goods? Similar goods? Complementary goods? All goods?

The usual prize will be sent to the first reader who can give us a good answer to this little puzzle.

What to do once you've chewed your gum here
More than you wanted ever to know about chewing gum here, here, here and here
Another chewing gum trade mark controversy here

KEELING REGISTERS A NOTE OF CAUTION ON UNUSUAL TRADE MARKS IN EUROPE

OHIM Board of Appeal member David Keeling delivered an entertaining and highly sensible talk on unconventional trade marks to the Competition Law Association in London last week (writes Jordgubbar, an IPKat mole). Keeling contrasted various successful and unsuccessful attempts to register ‘non-traditional’ or ‘unconventional’ signs such as 3-D marks, colour marks, olfactory marks, gustatory marks, sounds marks, slogans, action marks, holograms and position marks. The message was: “look for an underlying consistent train of legal reasoning and you’ll be disappointed”. By juxtaposing “accepted” and “refused” signs for which Community trade mark (CTM) registration had been sought, Keeling left the clear impression that there was no certainty in this area and that potential CTM applicants might as well be advised to “have a go”.

Keeling warned that two big hurdles facing applicants for unconventional marks are (i) graphical representation of the sign and (ii) distinctiveness (Article 2 of the Trade Mark Directive and Article 4 of the Community Trade Mark Regulations). And don’t forget public policy considerations -- granting authorities don’t usually like to grant a potential monopoly right over a sign where a patent or design application may be more relevant, particularly given the potential life of a trade mark.

In conclusion Keeling stated that, with the exception of applications to register smell or taste marks, which seem doomed to fail, the jurisprudence of the European Court and Court of First Instance suggest that registration may be available for many types of unconventional marks. The most common reasons for the more unconventional marks failing to meet the criteria for registration were lack of distinctiveness and difficulties in graphically representing signs. Even if a sign did overcome these obstacles and was registered, their scope of protection would usually be very narrow.

The IPKat welcomes David Keeling’s candour in addressing the consistency of OHIM decisions and the likelihood of an applicant succeeding in obtaining registration. The conceptual problems raised by these trade mark oddities are not inconsiderable and, although such marks are infrequently applied for and often rarely used in commerce, the difficulties they cause reflect fundamental issues in trade mark law, issues such as (i) what a trade mark truly is, (ii) how do you know what the applicant has registered and (iii) how can you determine the scope of protection which registration confers.

Leading European cases on the registration of shapes: Procter & Gamble v OHIM (soap shape, 16 February 2000); Philips v Remington ECJ judgment of 18 June 2002 (shape of shaver heads); Linde, Winward and Rado (ECJ judgment of 8 April 2003: 3-D fork-lift truck); Procter & Gamble v OHIM (CFI (19 September 2001 (shape of a washing tablet) and Unilever v OHIM (5 March 2003: another shape of a washing tablet); DaimlerChrysler v OHIM (6 March 2003: shape of a car radiator grill).
Cases on the registration of colour marks: Libertel (ECJ Judgment of 6 May 2003), KWS Saat v OHIM (9 October 2002)
Smell and taste marks: Sieckmann (ECJ, 12 December 2002), Eli Lilly & Co.’s Application (OHIM Board of Appeal, 4 August 2003, taste of artificial strawberries for pharmaceutical products)
Sound marks: Shieldmark v Kist (3 April 2003, Advocate General’s Opinion, ECJ).

DOUBLEMINT - A CASE TO CHEW OVER

It's a bumper IP day for the ECJ. The court has ruled on the registrability of DOUBLEMINT in OHIM v Wrigley. The CFI had previously said that DOUBLEMINT was registrable for chewing gum because it was not exclusively descriptive of the applicant's goods since it had at least two possible meanings: this product contains 2 types of mint or this product contains twice the usual amount of mint. However, the ECJ has said that the CFI applied the wrong test to determining whether the mark is descriptive under Article 7(1)(c) of Regulation 40/94. Instead of looking at whether the mark is exclusively descriptive, the court should have looked at:

"whether the word at issue was capable of being used by other economic operators to designate a characteristic of their goods and services".

The focus of Article 7(1)(c) should be on whether, in the public interest, the mark should remain freely available for other traders to use. To this end, "A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned" (emphaisis added by the IPKat).

Therefore, the case was referred back to the CFI so that it can apply these principles.

The IPKat notes that this judgment focuses on the impact that the registration of a mark will have in the future on other traders, should they decide at some stage that they want to use it and on how the mark could be used, rather than concentrating on the way that the applicant is using the mark now. However, the DOUBLEMINT mark is almost certainly safe, whatever the outcome of this case before the CFI, since Wrigley has acquired distinctive character in the mark through use. (Acquired distinctiveness was not at issue in this case, only inherent distinctiveness was). The IPKat also points out that the ECJ did not directly address the impact that this case has on its earlier BABY-DRY decision.

ECJ DECIDES ADIDAS v FITNESSWORLD DILUTION CASE

The ECJ's judgment in Adidas-Salomon v Fitnessworld is out today. The full judgment isn't available on the ECJ's website yet but a press release is, saying:

"The Court has found that it is not necessary for there to exist a likelihood of confusion between the sign and the mark with a reputation in order to claim infringement of that mark. It is sufficient if the relevant section of the public establishes a link between the sign and the mark even though it does not confuse them.

However, the Court has specified that where, according to a finding of fact by the national court, the relevant section of the public views the sign purely as an embellishment, it does not necessarily establish any link with the mark with a reputation. It follows that the proprietor of the mark with a reputation cannot prevent the use of that embellishment by a third party."

Sadly the press-release doesn't give any article numbers so it's hard to know if the ECJ is talking about Article 5(1)(b) or Article 5(2). Watch this space - more from the IPKat as and when it becomes available.

CFI CASE PROVES GALLING EXPERIENCE FOR ASTERIX

Hot off the press, a trade mark case from the CFI involving everyone’s favourite cartoon Frenchman. Trucco sistemi di telecomunicazione SpA applied to register a figurative mark, consisting of the word STARIX and a red oval as a Community trade mark for certain types of equipment in Class 9 and for telecommunications in Class 38. Éditions Albert René opposed the application, based on its ASTERIX mark, particularly on its registrations in Class 9 for certain types of equipment and Class 41 for certain film and intellectual property-related exploitation services, as well as amusement parks and production of orchestral and spoken-word performances. The application was turned down in part in a separate set of proceedings but in this set of proceedings, the Opposition Division and later the Board of Appeal rejected Éditions Albert René’s opposition based on Article 8(1)(b) of Regulation 40/94 (similar marks, similar/same goods and confusion) because the marks were not sufficiently similar. Éditions Albert René applied to the CFI, arguing that the Board should have found confusion both because the marks were similar and because of the notoriety that the ASTERIX mark had acquired in relation to the French cartoon character should have been taken into account by the Board even though Éditions Albert René had not proved it since Trucco had not disputed it. Éditions Albert René also argued that the application should be blocked under Article 8(5) (unfair advantage/detriment to an earlier mark’s distinctive character or repute).

The CFI dismissed the appeal. Regarding Article 8(1)(b), primarily because the two marks were not similar. They were visually dissimilar because the graphical representation of an oval and the italic typography used in Trucco’s sign meant that the overall impression given by both signs was different. The marks were phonetically dissimilar. Trucco’s mark began with a consonant and consisted of six letters, whereas Éditions Albert René’s mark began with a vowel and contained one more vowel that Trucco’s mark. The two only had one syllable in common – the final “rix” syllable. They were also conceptually dissimilar. Neither mark had a common meaning in any EU language. Though ASTERIX was close to the word asterisk this would only be perceived by those who conducted a detailed analysis of the mark and the test for similarity of signs set out by the ECJ assumes that consumers would form an overall impression of the marks only. Finally, the fact that the average consumer would associate ASTERIX with the cartoon character also made confusion unlikely.

Since the marks were dissimilar, the fact that Éditions Albert René’s mark was very distinctive per se and was widely known had no bearing on the application of Article 8(1)(b) to the case. There was also no need to consider Éditions Albert René’s arguments on whether certain of the goods in question were similar since there could be no Article 8(1)(b) case without the signs being similar.

Éditions Albert René’s plea that Trucco’s sign would dilute its mark contrary to Article 8(5) was inadmissible since Éditions Albert René had not asked OHIM to apply that provision at any time. Article 74 of Regulation 40/94 limits OHIM to examining facts, evidence and arguments provided by the parties and while the CFI has the power to annul or alter contested Board of Appeal decisions, this is only the case where there is a lack of competence of the part of OHIM, an infringement of an essential procedural requirement has taken place, there has been an infringement of the Treaty, Regulation 40/94 or EU law or where there has been an abuse of power. This limits the scope of review open to the CFI to issues of law raised before the Board of Appeal.

The IPKat wonders how the opponent would have got on with the Article 8(5) claim if it had been ruled admissible by the CFI. That article requires that the two marks in question be similar as a starting point however in this case, the marks were found to be dissimilar in the Article 8(1)(b) analysis. This raises the question of whether similarity of marks for the purposes of Article 8(5) means the same as similarity of marks for Article 8(1)(b). While the same language is used in both articles, the reason for requiring similarity is different in each case. In Article 8(1)(b) similarity must be shown with a view to establishing confusion but this is not the case in Article 8(5) where the aim is to show unfair advantage or detriment. The IPKat would be very grateful for any insight anyone has on this point and advises his readers to watch out for the imminent Adidas v Fitnessworld case on this point.

Click here, here and here for a gauling experience

CREAMS FOR DREAMS, PROMISES STATE-FUNDED WITCH

Ananova reports that Lena Skarning, a Norwegian witch, has won a 53,000 kroner (£5,000) business grant from the Norwegian Industrial and Regional Development Fund to make and sell magic potions and elixirs to residents around the forest of Nord-Odal, 93 miles north of Oslo. Skarning’s specialty products include night creams for vivid dreams, a day cream to combat indecisiveness and a foot cream to change a user's bad habits. Skarning said that she has always been a witch, but needed seed money for her business to take root. She attended a seminar on entrepreneurship and then applied for the grant.

A spokesman for the Norwegian Industrial and Regional Development Fund said that money was awarded for applications that were "exceptional, very innovative, and very importantly, offered a new service or created a job". He added that the notion of a witch getting a grant may seem out of the ordinary, but her business plan was "pretty reasonable and well thought out". Last year, the agency gave out 3.8 billion kroner (£319 million) for some 8,000 projects to help develop and promote small business.

The IPKat assumes that Lena’s potions and elixirs will not face the stringent requirements demanded by the European Medicines Evaluation Agency and its national analogues for the market approval of proprietary medicinal products. He also assumes that Lena will be prudently preserving the confidentiality of her products’ formulae, the better to ward of unhealthy ailments such as competition.

Problems with nightmares? Click here, here and here
Treatments for indecisiveness here and here
Deal with bad habits here, here and here
Practical witchcraft here, here and here

ECJ FINDS BELGIANS REMISS IN INCORPORATION OF PUBLIC LENDING DIRECTIVE

Last week, the ECJ found that Belgium had failed to fulfil its obligations under Articles 1 and 5 of Council Directive 92/100/EEC of 19 November 1992 on rental right and lending right and on certain rights related to copyright in the field of intellectual property . Article 1 requires Member States to recognise that authors have the exclusive right to authorise the public lending of various copyright works. However, Article 5 allows for a derogation from this exclusive right, but only if a remuneration is made to the author. The EU Member States were meant to have implemented the Directive into their national laws by 1 July 1994. The exclusive lending right was recognised under Belgian law but a derogation was created under Article 23 of the Belgian Loi relative au droit d'auteur et aux droits voisins for “lending [that] is organised for an educational and cultural purpose by institutions recognised or organised officially for that purpose by the public authorities”. Article 62 of the law envisaged authors being remunerated in those circumstance and Article 63 stated that the King would fix the relevant amount by decree. However, no such decree was ever issued and so no rate of remuneration was fixed for derogation cases because, according to Belgium, of opposition to the lending right by the Belgian federated entities, which are responsible for cultural matters in Belgium and the European Commission brought this action.

Belgium had argued that Articles 1 and 5 of the Directive were not precise enough to be incorporated into its national law but the ECJ was not impressed, finding that where directive obligations are unclear, states must determine the relevant criteria in their own territory rather than just completely refusing to implement what is called for by the directive. Here also the Directive authorised Member States to exempt certain categories of undertaking from paying but did not require them to do so. In so far as it was unclear which undertakings this authorisation applied to, the states should have just not exempted any undertakings rather than completely failing to implement. The fact that, according to the Belgians, no remuneration was paid in France, Greece, Luxembourg and probably other Member States was irrelevant because a state cannot justify its failure to perform its obligations under ECJ law by pointing to similar failings on the part of other Member States. The hostility of the federated entities provided no excuse because a Member State rely on provisions, practices or circumstance in its internal legal order to justify failure to comply with obligations and time-limits laid down by a directive.

The IPKat is broadly in favour of this decision. The ECJ’s approach advocates requires states to make a sensible attempt to work through any interpretational problems in directives, rather than just ignoring the issue and using the uncertainty to justify a state of legislative paralysis. The IPKat also welcomes the ECJ’s failure to let the Belgian Government deflect from its own shortcoming by highlighting internal regional problems and failings on the part of other states, although he notes that a failure by more than one Member State to implement legislation may suggest that there are drafting or other problems with the legislation making it difficult to implement.

Do some public lending of your own here
Find out how to borrow from Belgians here, here and here

ADVOCATE GENERAL ADVISES IN IMS CASE -- BUT NO ENGLISH TEXT YET

Advocate General Antonio Tizzano has now delivered his Opinion in Case C-418/01, IMS Health GmbH & Co. v NDC Health Gbmh & Co., a reference to the European Court of Justice (ECJ) from the Frankfurt District Court. This case is a battle between IMS, which claims copyright in a 1,860 square grid into which all German pharmaceutical retailers are divided for the purposes of collating and analysing marketing data, and NDC, which claims that IMS’ refusal to grant it a licence to use that grid is an abuse of IMS’ dominant position in the market and therefore contrary to Article 82 of the EC Treaty. This argument is based on “essential facilities doctrine” -- that NDC cannot compete with IMS in the supply of pharma information because the tool which enables it to do so (the 1860 square grid) is withheld from it. AG Tizzano has apparently restated existing EC law and has advised that the ECJ has in the past only held there to be an abuse of a dominant position where the copyright owner, by refusing to license a third party, has prevented that party from trading in a secondary market rather than specifically in the market in which the copyright owner is itself trading.

The IPKat cannot be more specific in his comments on what the Advocate General said, given the regrettable absence of an English text of this Opinion.

Text of Advocate General’s Opinion in Spanish, German, French, Italian, Portuguese, Finnish and Swedish
Find out here, here and here what the ECJ said about abuse of a dominant position by a copyright owner in the Magill case.
Essential facilities doctrine here, here and (in the US) here
Do you wish to adopt a dominant position? Click here , here or here to find out how

FOOTBALL SPONSORSHIP TAKES A KICKING

The BBC reports that Umbro, one of five sponsorship “partners” working with the FA in the run-up to the 2006 World Cup has condemned recent alleged rape and drugs scandals involving players. Although Umbro has confirmed that it will continue to sponsor the game, an Umbro spokesman said "It is not good news for Umbro as a football brand, if the image of football is tarnished in any way". In fact, the company has a policy of only working personally with footballers who have clean-living reputations. The other four sponsorship “partners”, Nationwide building society, McDonalds, Carlsberg and Pepsi have either said that they are unconcerned or had no comment. However, Umbro is particularly disturbed by the alleged bad behaviour because it considers itself "as a football brand, inherently part of the game".

The IPKat says that a brand owner looking for sponsorship opportunities should ensure that there is good synergy between his brand and the activity he is sponsoring. It would be foolish for a brand owner to get himself involved with an activity that is going to damage the reputation of his brand by attaching negative associations to it rather than enhancing it. This would effectively be an example of self-tarnishment – after all, the brand owner has consented to his trade mark being used in relation to the offending goods or services and so it is highly unlikely to be classed as actionable trade mark dilution. However, things are not so simple for Umbro. Unlike the other sponsorship “partners” who can cut their links with football and choose to sponsor another sporting or cultural event, as a producer of footballing clothing and equipment, it (and its reputation) is inextricably linked to the game, whether it sponsors it or not.

Want to get involved in football sponsorship? Click here, here and here

CAN COPYRIGHT CONSPIRATOR CLAIM HE TOO WAS THE VICTIM OF A CONSPIRACY?

Lexis-Nexis’ All England Direct subscription service has thrown up an unusual case which reflects the interplay between criminal and civil provisions for dealing with copyright infringement. In Sony Music Entertainment (UK) Ltd and others v Stewart and another (16 October 2003) Stuart was involved in selling counterfeit CDs from a stall at a car boot sale. The sale site managers notified the police and trading standards officers, whose investigation resulted in the discovery at Stuart’s stall of CD cases and counterfeit CDs bearing the hand-written names of artists and album titles. At Stuart’s home they found blank CDs, printed copies of artwork requiring cutting to fit CD cases, a notebook containing orders and CD duplicating equipment. Along with others Stuart was convicted of conspiracy to defraud the producers of the recordings. In subsequent civil proceedings Sony sought summary judgment, seeking an inquiry as to damages. Section 11(2) of the Civil Evidence Act 1968 provided that, in civil proceedings in which a person had been proved to have been convicted of an offence, he should be taken to have committed that offence unless the contrary was proved. Stuart contended that he had himself been the victim of a conspiracy to procure his conviction.

In the Chancery Division, Sir Donald Rattee gave summary judgment in favour of Sony since there was no real prospect that Stuart would be able to discharge the burden of proof imposed upon him by s 11(2) of the 1968 Act. Apart from the presumption raised by s 11, the evidence of material found in his possession was such that an overwhelmingly clear inference could be drawn that Stuart had infringed Sony’s rights.

The IPKat notes that the burden of proof in criminal proceedings, where conviction depends upon proof “beyond reasonable doubt” is very much heavier than in civil proceedings, where proof need only be established on a “balance of probabilities”. This being the case, if Stuart could not escape prosecution, the odds of his persuading a civil judge that he had an arguable defence would appear to be very long indeed.

Car boot sale information here, here and here
Does crime pay? Click here, here and here to find out

RIAA PROVES THE ART OF LETTER-WRITING IS NOT DEAD

The New York Times reports that RIAA is about to launch a second wave of lawsuits against suspected music downloaders. This time however, letters have been sent out before the suits are filed, warning those who are due to be sued of this fact. RIAA President Cary Sherman has said that the aim of the warning letters is to enable those on the receiving end to negotiate a solution without going to court, adding:

"Our objective here is not to win lawsuits — it is to foster a business environment where legal online music services and bricks-and-mortar retail stores can flourish.”

The IPKat welcomes such an approach as long as (i) genuine efforts are made by RIAA to negotiate with the recipients of such letters and (ii) the letters are sent to people who are credibly downloaders. However, the IPKat will be disappointed if it transpires that this is just an attempt to get double the publicity for RIAA’s action against downloaders – one round of media coverage when the letters are sent out and a second round when papers are actually filed with the courts.

Inspired by RIAA’s example? Get to grips with letter-writing here, here, here and here

A BIT OF A PASH? THAT'S TOTALLY BASS

Earlier this week, the CFI decided a second trade mark case – Phillips-Van Heusen v OHIM . This time an application to register BASS as a CTM for footwear and clothing was opposed by the owner of a German registration of PASH for leather goods and clothing, belts, footwear and headgear. In September of 2001,the Board of Appeal had that the marks were confusingly similar. However, a complication arose in the active part of the Board’s judgment. While the opponent restricted the scope of its opposition to the registration of BASS for clothing, the operative part of the original Board judgment stated that the Board “rejects the application for a Community trade mark” without limiting the rejection to clothing, even though the limitation to clothing was made explicit in the non-operative part of the judgment. The Board sought to correct this on 18 February 2002 by adopting a decision amending the offending paragraph of the September judgment by limiting the rejection of the CTM application to clothing.

The CFI held that the Board’s initial decision was unlawful because the Board can only reject a CTM application to the extent that the opponent argues for in his opposition. Here the opponent had based his opposition only on clothing so the Board could only reject the CTM application for clothing. However, because the Board had issued a correction of this error on the 18 February 2002 and because the applicant had withdrawn its objection to the scope of the Board’s decision, the action to annul the Board’s September 2001 decision was now devoid of purpose and did not need to be ruled upon.

The CFI also annulled the substance of the Board’s decision, holding that BASS and PASH were not similar enough to lead to a likelihood of confusion between the two parties’ goods. While visually the two marks had the same number of letters and same two central letters, the public were not more likely to focus on the central letters than any of the other letters and the similarity between the letters B and P was limited. Aurally, though B and P are pronounced very similarly in some regions of Germany and the only vowel contained in both signs was identical and even though “sh” sound is not used in German, a sufficient part of the German public was familiar enough with the pronunciation of English words ending in “sh” that they would not mispronounce PASH as “pass”. Conceptually, BASS called to mind the voice of a singer of musical instrument while PASH was likely to be associated with the German dice game Pasch. This clear difference in meanings counteracted any visual or aural similarity, even though there was no connection between those meanings and the goods. Therefore, while the goods of the two parties were either similar or identical, the marks were not similar enough on a global appreciation for there to be a likelihood of confusion leading to the registration of BASS being barred under Article 8(1)(b) of the Regulation 40/94.

The IPKat notes that when he first read this case, his immediate thought was that the applied for mark should be pronounced “bass” with a short, sharp “a” as in "act", rather than as “base”, which is how the voice of a singer would ordinarily be pronounced by native English speakers. This is because there is an English brand of beer named BASS which is pronounced with a short "a". This goes to show that a person’s (or feline’s) perception of a trade mark in registration case can be shaped by previous exposure to it or even to a similar mark owned by another undertaking. The case also got him thinking about the operative parts of CFI and ECJ judgments. He realised that one of his masters goes straight to the operative part of such judgments because, at the end of the day, this is the binding part, while the other pays more attention to the reasoning that comes beforehand since this tends to be more detailed and to include a discussion of issues that do not make their way into the operative part. The IPKat would be interested to hear which part of judgments his readers focus on and why. Please tell the IPKat by email or by posting a comment below.

Want to sing bass? You’re in good company – click here, here and here

NAMIBIA JOINS PCT -- BUT WILL ANYONE NOTICE?

On 1 October Namibia became the 123rd Contracting State of the Patent Cooperation Treaty (PCT) when it deposited its instrument of accession at WIPO. The Treaty will enter into force for Namibia on 1 January 2004. In any international patent application filed on or after that date, an applicant may designate Namibia. Additionally, nationals and residents of Namibia may themselves file PCT applications as of the same date.

The IPKat wonders if the whole exercise is worthwhile. WIPO’s own patent filing statistics for 1997-2001 do not give any records of any Namibian patents having been applied for or granted (apparently Namibia has notched up only around five patents a year since 1990). It would be nice if a better means could be found for helping countries such as Namibia to atttract technology and industrial growth.

General information about patenting in Namibia here
Namibia’s current economic prospects here
A taste of Namibia here

DAIRY MARK LOOKS TOO MUCH LIKE A GEOGRAPHICAL INDICATION, COURT RULES

In Case T-295/01 Nordmilch eG v Office for Harmonisation in the Internal Market (Trade Marks and Design) (Court of First Instance of the European Communities, 15 October 2003) Nordmilch applied unsuccessfully to register the word OLDENBURGER as a Community trade mark for goods in classes 29, 30 and 32 (various milk and dairy, ice cream and confectionery products and drinks). The OHIM Board of Appeal dismissed Nordmilch’s appeal since OLDENBURGER could serve as an indication of geographical origin for a German region which produced those goods and there was a public interest in that word remaining freely available. Nordmilch then appealed to the Court of First Instance, which dismissed the appeal.

The court recited Article 7(1)(c) of the CTM Regulation, which provides that trade marks consisting exclusively of signs indicating geographical origin were not to be registered. That aim was in the public interest, in that descriptive signs and indications relating to the categories of goods or services in respect of which registration was applied for might be freely used by all. Article 7(1)(c) did not however preclude the registration of geographical names which were unknown to the relevant class of persons or of names in respect of which such persons were unlikely to believe that the category of goods concerned originated there. In this case, since Germans who well knew that Oldenburg was the capital of a dairy region might perceive OLDENBURGER as an indication of the geographical origin of those goods. The court noted that the purpose of Article 12(b) of the same regulation was to ensure, inter alia, that use of an indication relating to geographical origin which also formed part of a complex trade mark was allowed if it was used in accordance with honest practices in industrial and commercial matters. If Article 12(b) were to apply there had, therefore, to be a prior finding that a trade mark had been validly registered. In this case, as the applicant’s mark had not been registrable, Article 12(b) of the regulation was inapplicable.

The IPKat welcomes this decision. Unless they have achieved such a high degree of secondary meaning that they are no longer viewed as place names, signs which masquerade as protected geographical indications perform no valuable market function and merely get in the way of honest commercial trade.

What else is Oldenburg known for? Horses, pop sculpture, science networking, tourism and immaculate conception
Dairy recipes here, here and here

GHETTOPOLY GAME UPSETS HASBRO

According to Findlaw, Hasbro, owners of the rights in the board game Monopoly, have threatened to sue David Chang for creating a new game, Ghettopoly, in which "playas" build crack houses on Cheap Trick Avenue instead of hotels on the Boardwalk. According to Hasbro, who describe the game as “reprehensible”, claim that Ghettopoly violates its intellectual property rights. Hasbro has licensed many variations of Monopoly, but it says Chang never sought the company's approval. Ghettopoly has outraged black leaders with its "playas" acting like pimps and game cards reading, "You got yo whole neighborhood addicted to crack. Collect $50”. Properties in the game include Westside Liquor, Harlem, The Bronx and Long Beach City.

On his website, Chang and promises that more games -- Hoodopoly, Hiphopopoly, Thugopoly and Redneckopoly -- are coming soon: "It draws on stereotypes not as a means to degrade, but as a medium to bring together in laughter", Chang said. "If we can't laugh at ourselves ... we'll continue to live in blame and bitterness".

The IPKat accepts that Hasbro has every right to protect itself against attacks on the integrity of its Monopoly, but wonders whether Ghettopoly should even be construed as such an attack. The names are different; the games are different and it does not appear that the one is any sense a substitute for the other. How well would Ghettopoly in the marketplace -- and for how long – without the publicity generated by Hasbro’s complaint?

NEW DEVELOPMENT: On 22 October Hasbro commenced legal proceedings. Details from the Trademark Blog here

What they say about Ghettopoly here, here, here and here
Creating a new game? Click here
“In the Ghetto”? Click here, here or here

MICROSOFT IN PATENT BATTLE

ZD News reports that New York company, E-Data has filed a patent suit in Germany against Microsoft, Tiscali and OD2 (a digital music company). E-Data claims that the companies’ downloading services (MSN Music Club and Tiscali Music Club) which enable consumers to download music off the internet and record it on to a CD for a fee, infringe a patent it was granted in 1985 that is valid in Germany, England, France, Austria, Switzerland, the Netherlands, Italy, Luxembourg, Belgium and Sweden. The patent covers the sending of information to a remote point-of-sale, where information is then transferred to a material object such as storage media. A US case on the patent previously held that while recording music on to a computer’s hard drive is not within the teaching of the patent, recording on to physical media such as a CD at an in-store music kiosk is. E Data is seeking to equate a person’s home computer with a remote kiosk and is arguing that a CD or MP3 player constitutes transference to a physical object.

The IPKat is more accustomed to seeing copyright disputes, rather than patent cases, in the field of music downloads. As the case stands, E-Data are trying to draw an analogy between today’s technology and the state of technology in 1985, long before the days of the Internet Revolution, let alone music downloads. The analogy seems like a bit of a stretch – for example, can a person’s home computer really be equated with a music kiosk based in a conventional shop?

For the wonderful world of kiosks click here, here and here

RECIPE FOR COPYRIGHT PROBLEMS: TAKE SOME SWEDES AND BUTTER

Ananova reports that a Swedish couple hunting on a remote mountain in Sweden's far northern province of Jaemtland have found 70 pairs of shoes, all filled with butter. The footwear included trainers, high heels, boots and tap shoes, each of which was stuffed with half a kilo of butter. The shoes had been spread out across the landscape. This find is reminiscent of artist Yu Xiuzhen's "Shoes With Butter", an exhibit which was laid out in the Tibetan mountains surrounding Lhasa in 1996. Said a local spokesman: "It's not going to be pretty when the butter starts to rot. And we have to wait for the snow so we can get up there with the snowmobile".

The IPKat observes that once again the issue of conceptual art is raised. Is the notion of arranging butter-filled shoes a sufficiently defined and delineated work of art in its own right to attract copyright protection as an original artistic work? The IPKat thinks not. To the extent that copyright is invoked in protection of conceptual art, it is invoked in order to protect the underlying idea -- which is not the subject-matter of copyright -- and not a specific reification of that idea.

Yu Xiuzhen's "Shoes with Butter" here; Tibetan butter art here
More on art and butter here, here and here
Other types of butter here and here

LOVE LOVE ME DON'T

The BBC reports that the Beatles are not planning to place their back-catalogue of songs on any of the “legitimate” licensed online music websites. The reason for this decision, taken by the band’s record label, Apple Corps, is unclear. Neither the label nor the Beatles’ publisher EMI profess to know the reason and the Apple Corps spokesman has said, rather improbably: “I do not think there is any reason for it at all”.

The IPKat wonders whether this is an implicit message from the Beatles that they are not bothered by unauthorised downloading of their music from unlicensed sites, that regardless of whether or not they object to such downloads they are acknowledging that they can’t realistically put a stop to them or, more likely, they are trying to make time stand still and are attempting to cling on to CD sales of their music. Whatever the reason is, this will leave a giant hole in the range of music make available by authorised music downloading sites.

Spanish Beatles here, German Beatles here, cosmopolitan Beatles here
The wrong sort of beetles here, here and here

IPKAT RANT: STEREOTYPING INVENTORS

New Scientist (4 October 2003, p. 92) reports:

"Overheard from a weary patent attorney talking about one of the organisations that represents inventors: "It's probably the only body where the lunatic fringe extends right to the centre".

The IPKat has also met some pretty strange inventors, but any group of like-minded people (football fans, cat-fanciers and even lawyers) is likely to seem abnormal to those on the outside. Inventors long have been stigmatised both individually and collectively for their weirdness -- but isn't their unorthodox way of viewing things to be viewed as a virtue rather than as a reason for locking them up? Let's be nice to inventors and give them some respect. If we do, they may feel less threatened by so-called normality and spend less time and effort getting up patent attorneys' noses.

Google hits for "mad inventor" - around 10,900. Google hits for (possibly partially) "sane inventor" - just one
Invention jokes here. Stereotypes of the mad inventor here, here and here
Useful information about sane inventors here

MAMA MIA

The European edition of TIME Magazine reports on the work of DNV, the certification company hired by the Italian Ministry of Agriculture and the International Association of Italian Restaurants to audit Italian restaurants located outside Italy. The company investigates the training of the chef and the origins of the ingredients and the recipes used. Also, at least one staff member must speak Italian. The inspection system is to be rolled out to France, Germany, the UK, Scandinavia and the Netherlands after a successful pilot protect in Belgium and Luxembourg. Tasting however is not part of the inspection as it is considered too subjective.
The IPKat notes this regime with interest. A scheme of inspection of the method for food preparation according to a traditional formula that takes place abroad was approvingly considered by the Advocate General (but not the ECJ) in the Parma Ham case, to the displeasure of the Consorzio del Prosciutto di Parma. The Italian restaurant experience will show whether it can be made to work.

Inspired to open your own Italian restaurant? Click here, here and here

COMMON FRENCH NAMES REGISTRABLE AS UK TRADE MARKS

The Trade Marks Act 1994 has been in force in the United Kingdom since 30 October 1994. The occasional item of litigation under the old law, the Trade Marks Act 1938, still crops up. EI du Pont de Nemours & Co v ST Dupont is a case in point. US fabrics manufacturer EI du Pont de Nemours applied to register DU PONT in class 25 (clothing); French company Dupont opposed on the basis that the mark was not, and could not be, distinctive; Dupont later sought to amend the opposition by pleading that DU PONT was also a common French surname. A further ground of opposition was that use of the DU PONT trade mark would be deceptive since Dupont had used it for a long time. Before the Registry the Hearing Officer dismissed the opposition and refused to allow the amendment. On appeal Neuberger J allowed both the amendment. In parallel proceedings between the two parties Dupont applied to register the single word DUPONT, also for clothing in class 25. Reversing the decision of the Hearing Officer, Neuberger J rejected EI du Pont de Nemours’ opposition.

The Court of Appeal restored the Hearing Officer’s decision for a variety of reasons, largely evidential. In particular it held that Neuberger J should not have taken notice of the fact that Du Pont was a common French surname which was listed more than 800 times in the Paris telephone directory: the fact that a surname was common in Paris was irrelevant to the question whether it could serve as a surname in the United Kingdom. Also, given the extent of EI du Pont de Nemours’ use of the DU PONT trade mark in relation to fabrics, it could not be said that its use of the same mark in relation to clothing would be deceptive.

The IPKat applauds the Court of Appeal’s reasoning on the frequency of French names and notes that the current criteria for absolute bars to registration as a trade mark under the Trade Marks Act 1994 do not expressly include the fact that a trade mark is also a common surname. When the ECJ’s ruling on the registration of surnames comes out in Nicholls’ case , we will all be the wiser for it.

More on French surnames here, here and here
Lyrics to Monsieur Dupont here

IPKAT COMES TO INTA

The International Trademark Association's Worldwide Forum on Trademark Protection will be held in Geneva, Switzerland, on 1 and 2 December 2004 and the IPKat will be there to report on it. If you are going to be there too and want to say hello to the IPKat, just send us an email. If not, don't worry: we will be blogging from the Forum on a daily basis.

Click here for programme and booking details. And here's some information on Geneva in English and in French.

COPYRIGHT: ETRE ET AVOIR?

The Daily Telegraph reports on a copyright dispute that has arisen out of the successful French film “Etre et Avoir”. The film recorded a year in the life of a one-class school in the Auvergne mountains and its teacher Georges Lopez. Now Monsieur Lopez is claiming that he has copyright in the lessons that were featured in the film as they were his own original creations. However, the film’s director, Nicolas Philbert has said that the film was made with Lopez’s complete cooperation and that, in any event, any copyright would be owned by state education system.

The IPKat makes the following comments: (i) before embarking on a project of this nature, the parties should ensure that their respective rights are clearly agreed on and recorded in writing; (ii) from a legal point of view the fact that the film was made with Lopez’s complete cooperation would not appear to have any bearing on the issue of ownership of the copyright, although presumably M Philibert means to say that M Lopez consented to the waiving of any rights that he had; (iii) since a “lesson” in itself is not a recognised category of copyright-protected work, Monsieur Lopez is presumably claiming that it is a literary or dramatic work (since he did not make the film and the film is in any event a free-standing work apart from the lessons, his rights would presumably vest in the film’ subject-matter only and not the film itself); (iv) nothing has been said about the role of the pupils in the lessons. To the extent that their participation was required, could they be said to be either performers or joint authors of the work ultimately performed?

Find out about the Auvergne region here
Learn to tell your etre from your avoir here
Go back to school here

MY NAME’S “MICROSOFT” BUT YOU CAN CALL ME “MIKE”

First trade marks are simply badges of origin for goods or services. Then they become aspirational lifestyle icons. Finally trade marks achieve the ultimate level of adoration when, just as people used to name their children after much-loved saints or heroes, now they name them after their best-loved brands. News.com.au relates tales of children called Timberland (six American Timberlands were born in 2000), Canon (45 kids), Bentley (9 kids), Jaguar and Xerox. More tasteful names include Bologna (as in sausage) and Gouda (as in cheese). Several boys have been called Camry, after the Toyota car, while Chanel is used for girls. Apparently at least 10,000 different forenames are now in use in the United States, two-thirds of which were largely unknown before World War II.

The IPKat hopes that the brand-naming of children will not be considered an infringing or dilutionary act and that the courts will not order them to be delivered up to trade mark owners for disposal or destruction.

Strange forenames here, here and here
Is it wise to give your baby an unusual name? Find out here and here
American Name Society here
Molecules with names that parents are unlikely to call their children here

IPKAT INVENTION OF THE MONTH: THE HUMAN FREE-FLIGHT CATAPULT

Have you ever felt down in the dumps? In need of a bit of a lift? If so, Theodore F. Wiegel’s Human Free-Flight Catapult (United States patent 5,769,724) may be just the thing for you. Wiegel’s device, which is intended as an amusement ride, catapults a human rider into the air in much the same fashion as ancient armies would hurl large boulders over the walls of castles. As the abstract puts it:
“the ride provides many of the sensations and thrills encountered by fighter pilots launching from the decks of aircraft carriers without the requirement for flight training or the associated dangers”.

The ride essentially consists of a siege type catapult and a releasably connected launch pod. When in the launch position, a release mechanism is triggered by the operator and the rider is catapulted into the air at a physiologically safe rate of acceleration along a predictable free-flight arc. When an acceptable elevation is reached, the rider is separated from the capsule and gently brought back to earth using an automatically deploying parachute or similar device. An alternate embodiment envisions the use of a similar device to project a conveyance vehicle along a horizontal track similar to a stone skipping across the water.

The IPKat does not wish to be IPKatapulted anywhere and finds it hard to understand what pleasure may be gained from this pastime. But he can think of one or two people whom he'd quite like to watch as they sail up, up and away ...

Other catapults here, here and here
Click here to find out how catapults work and here or here to build one
Other free-flight techniques here, here and here
Catapult culture: here’s the catapult in humour, in song and in literature

LOCATION, LOCATION, LOCATION

Brandchannel’s featured article focuses on the link between a brand’s identity and the country in which goods sold under that brand originate. Ron Urwin of the University of Cape Town focuses on the practice of outsourcing to countries with cheaper labour costs, even by firms whose brand image is strongly associated with the country in which they are based. Under this model, “Italian” shoes made in Romania, Kenyan roses and Chinese Major League baseball equipment promoted as being an “American Classic” is put on sale on both sides of the Atlantic. Consumers it seems are, for the most part, unperturbed and just don’t really know or care about where the goods they are purchasing come from. According a public relations executive at Geox, an Italian footwear company “outsourcing to cheaper locations does not challenge the integrity of the company itself, which keeps all logistics, marketing and financial departments in Italy, so that ‘the brain and soul [of Geox] is Italian, [while] the body is foreign’”.

The IPKat says that as long as the undertaking is not using its mark in a way that deceives consumers as to the geographical origin of its goods, there is no conflict between this practice and trade mark law. In fact, the definition of trade mark infringement is flexible enough in both the EU and the US to accommodate this practice since there is no requirement that consumers know the source of the trade marked goods they are buying, as long as they think that the quality of all goods bearing the mark are under the inspection of a single undertaking, even if the goods in fact come from different physical locations.

Learn more about Kenyan roses here
More American Classics here, here, here and here

EASYJET DO IT AGAIN

Only a few months after easyJet got away with using photos of David and Victoria Beckham in its advertisements, the cheap airflight specialists have escaped censure for their use of a photograph of Major Charles Ingram and his wife without their permission. The Ingrams were convicted in April this year of winning the “Who Wants to be a Millionaire?” TV quiz show's £1 million top prize by setting up an accomplice, Tecwen Whittock (IPKat 7, July), to guess the right answers and then transmit information to the Major by means of coded coughs. The Ingrams complained to the Advertising Standards Authority (ASA) after easyJet ran a newspaper advertisement with the headline "Need a cheap getaway?" above a photograph of the couple and the wording "No Major fraud required". This, they said, was an invasion of their privacy and was “offensive and distressing" to them. EasyJet said the promotion was "one of a series of humorous topical advertisements, all using celebrities who had recently been in the public eye". They admitted they had not asked permission to use the photograph but said it was already in the public domain.

The ASA rejected the Ingrams’ complaint saying that, while companies were urged to get permission before they used an individual in an advert, they were not required to obtain it. What’s more, the advert "portrayed the complainants in a way that was consistent with the verdicts in their recent court case and not in an unfairly adverse way". Since the Ingrams had chosen to appear on “Who Wants To Be A Millionaire?” and were convicted of trying to defraud the show, the advert could not be said to have caused further distress since it "had not unfairly portrayed them adversely or offensively and was consistent with the general media depiction of them".

The IPKat wonders why anyone bothers complaining to the Advertising Standards Authority. It’s not as if it has the power to make any order or grant any relief. At best, the offending advertiser is given a gentle rap over its well-padded knuckles. At worst, in cases such as this, all the embarrassments of the original advertisement are drawn again to the public’s attention when the ASA’s decision is made public. If however Ingram could persuade a court that he had lost the opportunity to earn endorsement income by virtue of a false apparent endorsement, he could have collected substantial damages, as racing driver Eddie Irvine did.

Anagram of Major Charles Ingram here
How to get on a game show here and here …
… and how to be a winner here and here

AOL TIME WARNER TO RECRUIT EUROPEAN ANTI-PIRACY COUNSEL

In today’ Times, AOL Time Warner is advertising to recruit a dedicated “European Anti-Piracy Counsel.” The position has arisen “due to a significant increase in internet and hard goods audio-visual piracy.” The lucky appointee will have a varied diet of work, including “negotiating” with offending parties and their lawyers, developing “technology-driven anti-piracy systems and solutions” (in other words, anti-circumvention devices) and lobbying for the protection of Warner Bros’ rights throughout the European region.

Although “piracy” hasn’t reached the same level in Europe as in the US because fewer Europeans have access to high-speed internet access, the IPKat suspects that the creation of this position foretells a US-style approach to combating the problem. This is after all an American company creating a job with an American-sounding name. The idea of “negotiating” with infringers reminds the IPKat of the approach that has been adopted in the States, particularly RIAA’s “Clean Slate” programme (where downloaders own-up and undertake to remove illegal downloads from their hard-drives in return for a promise that RIAA will not prosecute them) and the series of settlements that have come out of the 261 cases that RIAA has filed against alleged illegal downloaders. The IPKat also wonders if lobbying for Warner Bros’ rights will essentially mean lobbying for US-style protection to be extended to Europe.

View some of Warner Bros’ valuable intellectual property here, here, here and here
Thinking of applying for the job? Essential background info here and here

IPKAT RANT: THE PERILS OF INVISIBILITY

The IPKat is intrigued and frustrated in equal measure by the UK Trade Marks Registry Hearing Officer’s decision in James Gilbert Ltd’s Trade Mark Application. The application, which was refused for lack of distinctiveness, seems to have consisted of a pattern for games, footballs and sporting articles. More than this is not revealed. What is particularly unhelpful is that the pattern is not depicted graphically on the version of the decision that appears on the Patent Office’s website. The document goes under the uninformative moniker “Form only mark (three dimensional)” and although it contains two appendices which are meant to depict the pattern, these are blank.

The IPKat wonders what the point of posting such a decision is. If readers can’t tell what the mark at issue is, how can it help them in their future decision making?

More invisible items here, here, here, here and here

FORMER ATHLETE TO SUE OVER USE OF SOCKS AND FACE FURNITURE

The Sunday Telegraph has reported that British company The Number, which provides directory enquiry services for telephone users, is being threatened with legal action by former athletics star David Bedford. The Number has been promoting its services which are accessed through the 118 118 phone number; its advertisements feature two joggers with droopy moustaches who wear 1970s sports gear and red socks. David Bedford, who broke the 10,000 metres world record in 1973, claims that the characters are based on him and seeks compensation of up to £200,000 for trading on his image without payment. The Number denies using Bedford’s image, claiming that its characters were based on the American runner Steve Prefontaine, who died in a car crash in 1975. Couchman Harrington Associates are acting for Bedford. The case is expected to get to court before the end of the year. There may be further litigation if Prefontaine’s estate gets in on the act.

The IPKat recalls that the 1970s were a long time ago and that they are a foreign country to a large number of consumers (in particular telephone users) today. How many people would still recall David Bedford’s appearance and red socks? And how much recall would David Bedford need to prove in order to show he still had identifiable goodwill in his appearance? The IPKat is also curious as to whether the fact that The Number uses two alleged Bedford look-alikes instead of just one would lead to double the damages.

Runners that The Number can exploit without being sued here and here
Get yourself a moustache and retro sportswear
More on red socks here and here

IPKAT RIDDLE NO. 7

Michael Edenborough has kindly supplied the IPKat with a copy of the Hearing Officer’s decision in Virgin Oil Ltd’s application to register VIRGIN OIL for various types of oils in Class 4 and filters for engines and motors in Class 7. Virgin Enterprises (Richard Branson’s company) successfully opposed the application, arguing likelihood of confusion under s.5(2) of the Trade Marks Act 1994 and detriment to distinctive character under s.5(3) of the same Act.

What caught the IPKat’s attention was the Hearing Officer’s consideration of whether the applicant had “due cause” to use the mark (if an applicant does have due cause then the mark can be registered, even if it would otherwise fall under s.5(3), the UK’s version of “dilution”). He noted that the term “virgin” is sometimes used to describe high quality oil. However, he said that even if this was the case with industrial oil (such as the applicant’s) the applicant could not argue due cause because this would mean that the mark was not distinctive and there would be a compulsion for other traders to use it and thus the term would not be registrable as a trade mark. The IPKat wishes to know, what then, if anything, is the role of the “due cause” provision under s.5(3) in application cases. Previously, the Lucas Bols definition has been followed and due cause had only been recognised where the applicant has a prior right to the term or he cannot reasonably be expected not to use it. However, it is hard to imagine a situation that would fit into the second category but where the term in question would remain distinctive rather than e.g. descriptive and hence be registrable as a trade mark.

E-mail your answers to the IPKat or leave them as comments below. Once again, a small prize is on offer to the best answer.

UK SUDDENLY ABOUT TO IMPLEMENT EU COPYRIGHT DIRECTIVE

Unless there is a revolution within the next few weeks, the Copyright and Related Rights Regulations 2003 (2003 No. 2498) will become law in the United Kingdom on 31 October. These Regulations represent the British attempt to implement Directive 2001/29/EC of the European Parliament and of the Council on the harmonisation of certain aspects of copyright and related rights in the information society. Most of the Directive’s contents are optional, which means that EU Member States’ copyright laws may actually be more diverse after the Directive is implemented than it was before.

The Regulation is unintelligible unless you also have a current copy of the Copyright, Designs and Patents Act 1988 on your lap, since all it does is list a multitude of amendments to it. Some are big, some are small. All are potentially important if you want to avoid liability for infringement.
The main changes are as follows:

* One of the types of works protected by copyright in the United Kingdom is a “cable programme”. This concept, introduced when cable TV was first recognised as being economically significant in its own right, is now being subsumed within the new definition of a “broadcast”. In legal terms, Cable TV has thus become the first fatality of technological convergence.

* The infringing act formerly known as “broadcasting or inclusion in a cable programme service” (s.20) now amended to the “communication to the public” of any work.

* A new “marking available” right is introduced (s.182CA) in respect of making a performer’s performance available to the public by electronic transmission even if the public can choose when to gain access to it. This is a real right which is not subject to the principle of “help yourself and pay equitable remuneration”.

* The making of a temporary copy of a literary work (other than a computer program or a database) or of a dramatic, musical or artistic work, a typographical arrangement of a published edition, a sound recording or a film, is not infringed by the making of a temporary copy which is transient or incidental. This only applies when the transient copy is an integral and essential part of a technological process that facilitates (a) a transmission of the work in a network between third parties by an intermediary or (b) a lawful use of the work. Additionally, the temporary copy must have no independent economic significance (s.28A).

* The old “fair dealing for research and private study” provision of s.29(1) has been trimmed down. Now, the fair dealing is only for “research for a non-commercial purpose” and must be accompanied by a sufficient acknowledgement, where practicable. However, a new s.29(1C) confirms that “fair dealing with a literary, dramatic, musical or artistic work for the purposes of private study does not infringe any copyright in the work".

* S.30 will now provide that “fair dealing” for the purposes of criticism or review will apply only to works made available to the public, thus depriving law professors of one of their staple questions for discussion among copyright students.

* A new s.50BA provides that it is not an infringement of copyright for a lawful user of a computer program to observe, study or test the functioning it in order to determine the ideas and principles which underlie any element of the program, if he does so while performing any of the acts of loading, displaying, running, transmitting or storing the program which he is entitled to do. This freedom cannot be taken away by the terms of a software licence or other contract.

* A new s. 70(2) makes your lawful time-shifted copies of broadcast programmes unlawful if you subsequently deal with them commercially.

* There are extensive new provisions (from s.296 to s.296ZG) dealing with circumvention of anti-copying devices for computer programs and other works, for criminal sanctions, court powers and search warrants, as well as the protection of rights management information.
* If you are an Internet Service Provider, watch out for ss97A and 191JA, which gives the courts power to grant injunctions against any ISP that has actual knowledge of copyright infringement or of the infringement of a performer’s rights.

* A new s.101A makes infringements actionable even by a non-exclusive licensee (with the express permission of copyright owner), if the allegedly infringing acts are directly related to the prior licensed acts of licensees.

The IPKat marvels at the magnitude of the Copyright and Related Rights Regulations 2003 which, in true British fashion, are a good deal longer than the Directive itself. He is relieved to see that fair dealing for the purpose of private study has remained unscathed, though he wonders what sort of damages the courts might award in respect of the making of a single unfair copy of a work for the soon-to-be infringing purposes of commercial research.

For the Campaign for Digital Rights click here
More on digital copyright here, here and here …
… and copywrong here, here and here

PUBLISHERS’ POINTS

* Law publishers Globe White Page have just sent the IPKat a free copy of issue two of Intellectual Asset Management (September/October 2003). The cover story is “Microsoft gets serious about IP”. This may be startling news for those of us who have just returned from a distant galaxy, but for the rest of us it's about as surprising as "Rain sometimes falls in England". The article is however quite informative, giving a good account of how Marshall Phelps plans to rework Microsoft’s IP strategy in the coming years. Ed Kahn’s piece on patent mining and Joff Wild’s review of the nanotech patent market are also worth a read.

* Thomson’s UK imprint Sweet & Maxwell is running a “fire sale” of 30% off more than 110 titles, in areas including intellectual property. Bargains include Copinger & Skone James on Copyright (reduced from £460 to £322), Terrell on the Law of Patents (from £285 to £200) and Gerald Paterson’s European Patent System (from £205 to £144). The IPKat is not impressed by this sale. In terms of the books’ overall value, the reduced prices probably reflect the length of time they have lost currency while they were sitting in the publisher’s warehouses. More to the point, when books are more sensibly priced and are not bloated with hundreds of pages of appendices, more people will buy them while they’re still relatively up-to-date.

IPKAT GUEST BLOG: THE LEFT AND RIGHT OF IP POLITICS

IPKat’s guest blogger this week is John Cahir. John is a doctoral associate at Queen Mary Intellectual Property Research Institute, where he is doing research into the jurisprudence of copyright. In this blog he had written about what should be considered left-wing and right-wing in intellectual property theory:

Thank you IPKat for inviting me to your blog. My chosen topic for discussion is the status of intellectual property in political/economic theory. In particular, I want to tackle the tricky question of where on the right-left axis of political views one places support for, and opposition to, IP protection. I think this is an important question in view of the increased politicisation of IP law.

Use of right-left wing labels may seem somewhat passé. However they still serve, I believe, a useful lexical function. Here I will focus primarily on their economic connotations. In simple terms, a right wing policy is one that favours economic liberty, i.e. respect for private property, freedom of contract and the efficient operation of the market economy. A left wing policy, on the other hand, is one that favours government intervention in the market place for the purpose of redistributing wealth (normally, though not necessarily, from the rich to the poor). There are, of course, numerous intermediary positions.

As a preliminary aside, there exists an interesting historical coincidence between the use of right-left wing labels and the development of authors’ rights in continental Europe. The political meaning of these labels has its origins in the seating arrangements of the pre-1789 French National Assembly, where the First Estate (nobles) sat on the right wing of the chamber and the Third Estate (revolutionaries) sat on the left. The same assembly, purged of its right wing, also passed the first authors’ rights law in 1791 and hence laid the foundations for one of the most influential modern day approaches to IP.

Notwithstanding the revolutionary origins of authors’ rights, I suspect that most people nowadays would regard strong IP protection as pursuing a distinctly right wing economic agenda. Is IP after all not simply a type of private property? Certainly, the greatest advocates of IP rights in Geneva, Brussels and Washington are large private businesses and their friends in government. One should not, however, confuse partisan support for a particular policy with a consistent political/economic outlook. Public choice theory teaches us that governments are more likely to respond to influence than reason.

We should instead look to the works of political writers to resolve the issue. The great political economists of the 18th and 19th century, being dogmatically opposed to monopolies of any kind, and therefore approached IP with considerable scepticism. Nevertheless Adam Smith, JS Mills, Jeremy Bentham and even Lord Macauley, being adherents of utilitarianism, were prepared to countenance temporary monopolies for the purpose of stimulating creative and inventive activity. They treated IP as a necessary evil, not as a natural right.

In more recent times, IP has been criticised by left wing scholars in the post-structuralist school – they argue that IP is based on the misconception of romantic authorship/inventiveness. However, the most serious charge against IP has come from libertarians - a group that most definitely resides on the right side. One of its best known members, Frederick Hayek, dismissed the idea that patents and copyrights were authentic forms of private property. Libertarian scholars like Tom Palmer, Randy Barnett and Tom Bell have built on his work and have called for the effective abolition of patents and copyrights (but not trade marks).

In many ways theirs is the most persuasive critique that there is of IP. They start with the standard liberal proposition that government should not sanction interference with bodily integrity, justly acquired tangible property or the freedom to contract. IP law violates each of these bedrock principles in non-trivial ways. Copyright law impinges on bodily integrity by restricting an individual’s capacity to sing, read or act in public. It also interferes with the free exercise of property rights by the owners of printing presses, computers and other copying/communication devices. Similarly patent law prevents the owners of industrial plants from using their machinery for productive purposes like the manufacture of drugs. Libertarians do not object to authors and inventors making commercial gain from their creations through shrinkwrap licences or confidentiality agreements: what they oppose is governments imposing blanket restrictions on the peaceable enjoyment by individuals of their bodily and tangible property rights.

When viewed from this perspective IP protection is, in effect, a government-sanctioned transfer of bodily and tangible property rights from dispersed individuals to the beneficiaries of IP protection. The owner of a tangible object prospers economically by using that object for productive ends, whereas the beneficiary of IP rights acquires an economic advantage by being able to prevent other people from using their bodies, minds and tangible property as they see fit. The argument that a property right in ideas and expression is logically equivalent to a property right in tangible objects is therefore mistaken.

In conclusion, I think a strong case can be made that advocates of IP (excluding trade marks) are in fact pursuing a left-leaning political/economic programme and that IP law is a category of corporate/creator welfare. One may of course, depending on one’s political outlook, favour such a policy, but in so doing one should not overlook the encroachment on individual rights and liberties that IP law condones.

Thank you IPKat, I hope my comments provoke further discussion!

Can’t tell which side of the political debate you’re on? Click here
If you’re left-leaning click here
If you’re right on click here

CELIBATE IN THE CITY

Advertising Age reports that TBS Superstation (part of the Turner Broadcasting empire) will be showing an edited version of “Sex in the City” without nudity and bad language but with extra scenes in order to make it more attractive to advertisers. In fact, the producers of the programme shot a number of parallel fully clothes scenes for syndication purposes when they were filming the original episodes.

In a strong candidate for the IPKat’s comment of the week, David Levy, president of entertainment sales and marketing at Turner Broadcasting enthused:

"This is virgin territory…for advertisers. This show has never had any commercial attachments to it until now."

While the IPKat is not a fan of gratuitous nudity or bad language, he is disturbed by the idea of expression being suppressed in order to avoid “tarnishing” the trade marks of advertisers. This reminds him of Naomi Klein’s observations in No Logo about the effect that Wal-Mart and Blockbusters can have on free expression by refusing to carry publications or films that conflict with their “wholesome” family values.

He recalls fondly his debate with Marty Schwimmer of the Trademark Blog over ABSOLUT vodka’s ABSOLUT HUNK campaign, where the vodka manufacturer was very keen to associate itself with “Sex in the City.” At the end of the day, different brands espouse different values – some will be enhanced by the nudity and other goings on in the programme, while others will find the programme in conflict with their image. The IPKat questions whether the latter group of advertisers will be willing to advertise in a “cleaned up” version of “Sex in the City.” After all, as the title suggests, this is a programme with a very specific and controversial attitude.

No sex in the city? Click here and here
No swearing in the city? Click here
Things to do with your clothes on here

DRAFT YOUR OWN EPITAPH

The IPKat was reviewing a book publishing contract yesterday for a friend who, unable to afford a real lawyer, gets all his legal advice from a fictional cat. He was very excited about being offered the contract for this, his first novel, but he was also worried. Was he going to sign away the fruits of several years' toil and find he had little or nothing to show for it in return?

Perusing the terms of the contract, the IPKat got the unmistakeable impression that it had not been drafted by a team of legal beagles. Indeed, it resembled a patchwork quilt of boilerplate legal clauses cemented together with a few samples of homegrown draftsmanship. There was no formal assignment of copyright to the publisher; nor was there even an exclusive licence. But the author was required to extend to the publisher nothing more than "the right to publish" the novel in Europe and publish and the right "to exploit the manuscript in any other form and locale".

This sort of drafting gives the publisher nothing more than a non-exclusive right to publish. It also appears to confer a right to publish the original manuscript rather than the literary work it contains. The term "Europe" is dreadfully imprecise: is it a geographical, economic, political or cultural concept? And what entitlement does the right to publish in a "locale" actually confer upon the publisher?

If the book fails to sell, no-one will suffer. But if it becomes a raging success, the IPKat is certain that from this clause there will sprout a veritable cornucopia of litigation. Sometimes going to a lawyer, or at least reading a law book, isn't such a very terrible option.

Problems with publishing contracts here and here
How to understand, explain and negotiate your own publishing contracts
Publish your own book here, here or here

MORE TRADE MARK DECISIONS REPORTED

Issue 10 (October 2003) of the subscription-based European Trade Mark Reports has now been published. Among the cases made available in English translation are

• System 3R International v Erowa, where the Stockholm District Court ruled that a company’s use of another’s trade mark for allegedly “descriptive” purposes was not honest commercial use where the “description” was as part of its own trade mark;

• The Polish Administrative Court’s “Bottle” case, where it held that the invalidation of a design registration had no impact on the validity of the registration of that design as a trade mark;

Other cases reported in this issue include the English Court of Appeal decision in Arsenal v Reed , the ECJ’s ruling in Van Doren on the burden of proof when exhaustion is pleaded and the same court’s ruling in Linde as to whether three-dimensional products can be trade marks for themselves.

If there any interesting European cases you’d like to see made available in English in the ETMR, click here to alert the IPKat.

DO IP RIGHTS DAMAGE THE THIRD WORLD?

This was the motion debated tonight by the Global Development Forum in St James’s, Piccadilly. Yes they do, said Ruth Mayne, a TRIPs researcher with leading charity OXFAM GB and a specialist on access to patented medicines. No they don’t, replied Sir Dominic Cadbury, Executive President of the Wellcome Trust and former CEO of Cadbury Schweppes. A second speaker in support of the motion was Dr Ken Shadlen, Lecturer in Development Studies at LSE.

Opening the debate, Ruth Mayne contrasted the high prices charged for patented medicines and the big profits made by pharma giants with the suffering and poverty of the sick in some of the world’s poorest nations. She argued that WTO membership and TRIPs compliance had forced poor countries to adopt standards of IP protection which benefited only the rich. She criticised the proprietary drug companies for their position in opposing compulsory licensing of HIV AIDS treatments in South Africa and maintained that developing countries spent some US $20 billion a year for the privilege of using IP-protected goods and services. Patents might provide incentives to invent, but they still didn’t give poor people purchasing power.

Sir Dominic Cadbury defended the expensive nature of patented drugs by reference to the extraordinarily high cost of developing new products and the 90% plus failure rate in coming up with successful products. He pointed out that ill health in the Third World cannot be blamed solely on IP rights when 90% of drugs listed as essential by the World Health Organization were not patent-protected. Protection was necessary if investment in new products was to be stimulated. He added that TRIPs was not a straitjacket (it permitted compulsory licensing and parallel importation, for example) and that developing countries which joined the World Trade Organization and agreed to adopt its IP norms did so voluntarily.

Ken Shadlen conceded that IP rights were not “good” or “bad” in themselves. They were merely tools of development policy, along with many others, and it was how they were used which made them good or bad. He reminded the audience that pharma patents constituted only around 10% of patents and that there were lots of other IP rights apart from patents. The processes of industrialisation and technology transfer could be helped by the protection of IP rights in developing countries, but only where those IP rights had to be exploited there. TRIPs permitted the compulsory licensing of IP rights where there was a national emergency or health crisis, but not where it was merely industrialisation that was at stake. This was a failing which TRIPs should address.

The IPKat notes that the moral argument in favour of widening access to medicines is a strong one – peoples’ lives and well being depend on it (this is not so much the case with industrial technology transfer). In so far as this access it not forthcoming, the blame cannot be placed solely at the door of IP rights. Issues such as distribution mechanisms and infrastructure and poverty must also be addressed, but this does not mean that problems with the patent rights granted under TRIPs and the way in which they were negotiated can be ignored.

Granting strong IP rights in developing countries immunises patent owners from competition from legal generic versions of drugs for which they own patent rights and thus means that there is no competitive limit on the price that the patent owner can charge (the essence of a patent “monopoly”). The ability to charge high prices is meant to act as an incentive for pharma companies to invest in research. This incentive can’t work vis-à-vis developing countries though if the drugs are priced so highly that those in developing countries cannot afford them because pharma companies will simply be unable to obtain any revenue from their invest activities in those markets. In response, pharma companies can either refuse to supply those markets and rely on their TRIPs-based IP rights, which would have disastrous effects on access to medicines or lower their prices.

The IPKat realises though strong IP rights can be of assistance to developing countries. They can be used by pharma companies to stop the sale of counterfeit drugs. Additionally, strong IP rights in developed countries can make a significant contribution to developing countries if the developed countries by their patent or trade mark laws prohibit the parallel import of drugs from developing countries. This prevents the medicines from “flowing” back to developed countries where it can raise a higher price than the price that they were put on the market in the developing country for and allows them to remain on the market in the developing country.

More on generic drugs here, here and here
How generic drugs affect pricing in the pharmaceutical industry here
Generic drugs and developing countries here and here
IP rights and the HIV-AIDS issue here
Do IP rights confer any significant benefit on developing countries? Click here and here