ROLLING BACK IP RIGHTS?

Yesterday the IPKat attended Peter Maggs’ seminar at the Queen Mary, University of London, Intellectual Property Research Institute. Professor Maggs took as his theme the question of whether intellectual property rights are being “rolled back” (i.e. limited) in the US and used the previous year’s case law to prove his point.

There was a definite “roll back” in trade mark law. This could be seen from the Victoria’s Secret case (requiring actual dilution rather than a likelihood of dilution to succeed in a federal dilution claim) and Dastar (placing the focus of an enquiry into confusion under §43a of the Lanham Act, which is the unfair competition provision, on deception as to the physical source of goods, rather the source of ideas contained within those goods). Also, in barcelona.com the court refused to apply Spanish trade mark law that may have granted the city of Barcelona trade mark rights in Barcelona, instead applying US law, which emphatically did not grant such rights. The only exception was California Innovations, where the court widened the conditions under which geographically misdescriptive marks can be registered.

Copyright however was more of a mixed bag. Eldred v Ashcroft (where the Supreme Court upheld the Sonny Bono Act, which extends the term of copyright in the US to 70 years) definitely “rolled forward” IP rights, as did Verizon Internet Services (where the ability of RIAA to get the details of downloaders from ISPs on demand was upheld). However, a “roll back” was visible in Veek, where it was held that a privately written model building code that was subsequently passed into state law was freed of its copyright and could be posted on the defendant’s website without giving rise to copyright infringement. He also pointed to 2 conflicting Digital Millennium Copyright Act (DMCA) anti-circumvention cases. In Chamberlain, generic garage door openers that circumvented access controls to a computer program in the plaintiff’s opener were found not to infringe the DMCA. However, a violation of the DMCA was found in Lexmark where the defendant, in order to make his refilled computer cartridges work with Lexmark’s printers circumvented programming in the printers that enabled them to only work with Lexmark cartridges. He pointed out that a different result was likely in the EU because of the directive that bans non-refillable cartridges.

The IPKat notes that while these cases suggest that there has been something of a judicial “roll back” of IP rights, the trend has been for the US legislature to “roll forward” IP rights, with the Federal Trademark Dilution Act, the Anticyberpiracy Consumer Protection Act, the DMCA and the Sonny Bono Act being a few prominent examples from the last decade. In the EU, the “roll forward” has been judicial as well as legislative with a number of ECJ decisions (all available here) that have pushed IP rights forward – take for example the wide definition of “trade mark use” in Arsenal v Reed, the favouring of regional rather than international exhaustion in Levis v Tesco, and the extension of dilution-style protection to similar and identical goods in Davidoff II and the Advocate General’s decision in Adidas v Fitnessworld. The position in the US is somewhat different to that in the EU because the Supreme Court and the lower courts do not rely on IP rights as a source of their jurisdiction, whereas in the EU, if the case in question is outside the scope of IP rights, jurisdiction defaults back to the Member States and the ECJ is deprived of its role.

The cases Professor Maggs referred to are available here
See some other “roll back” attempts here, here , here and here
An attempt to “roll forward” here