KERLY; NOVA SPEND POCKET MONEY ON HIGH COURT LITIGATION

Kerly on trade marks

The IPKat has been studying the new edition of one of the longest-standing intellectual property books for trade mark practitioners in the UK and countries with similar legal systems, Kerly's Law of Trade Marks and Trade Names. This epic is now crafted by a team of genuine experts: David Kitchin, QC (below, left, now elevated to the High Court), solicitor/academic David Llewelyn, barristers James Mellor, Richard Meade and Tom Moody-Stuart and OHIM Board of Appeal guru David Keeling.

According to the publisher's blurb,

"Kerly is the most respected practitioner text on the law of trade marks and trade names. It provides practitioners with a comprehensive analysis of trade mark law, through a mix of commentary, case law and legislation. Described as "one of the classic textbooks of English law", the 14th Edition puts the English law into its European context, discussing relevant European case law and legislation".

In recent weeks the IPKat has had on several occasions to dip into this vast sea of trade mark wisdom in order to retrieve a few drops of knowledge on specific issues (and on one occasion he had to look for some support for a proposition he knew to be true but didn't quite know why). He was pleased to see that, despite its length, the text is not at all prolix and is indeed remarkably user-friendly. He greatly appreciates the efforts made to incorporate reference to decisions from the UK Trade Mark Registry and the various OHIM instances which, despite having no precedental force and often little doctrinal value, do reflect what happens in reality - which is useful for businesses that have to make real-life decisions and don't want to go to court to vindicate a position taken by their legal advisers. As usual there are too many appendices, which are available free to anyone with a computer, but there seems to be no way to persuade publishers to offer two versions of IP books - one with all the statutes and conventions, the other without.

Bibliographic details: ISBN 0421860804; price £255.00; number of pages: cx + 1,600 pages; rupture risk - high.


... and talking of Mr Justice Kitchin ...

Here's the new Patents Court judge's mega-ruling in Nova Productions Ltd v Mazooma Games Ltd and others [2006] EWHC 24 (Ch), handed down on 20 January 2006. It's a whopper, about 27,000 words long, involving two separate copyright infringement actions. So what was it about?

In the first action Nova, a UK company, designed, made and sold arcade video games including 'Pocket Money'. Nova said that another game, 'Jackpot Pool', infringed its copyright in 'Pocket Money'. 'Jackpot Pool''s software was designed by Mazooma, who supplied it to Games Network, who copied and supplied it to Gamestec. Gamestec ran installed 'Jackpot Pool' on its coin-operated terminal. Mazooma also supplied the same software to Inspired, who copied and supplied it to the Leisure Link, who installed it on their coin-op terminal. In the second action Nova said 'Pocket Money' was infringed by a coin operated video game called 'Trick Shot', which Bell-Fruit put into its own machines.

Nova did not accuse any of the defendants of copyinh the software code of 'Pocket Money', but maintained that the various defendants infringed their copyright by copying their game's screen appearance (the 'outputs'). When asked to identify each particular similarity relied upon and to say how it was the result of an infringing act, Nova served a schedule of similarities and marked up screen shots to identify the relevant features.

The court had to determine whether the defendants copied 'Pocket Money' when they made 'Jackpot Pool' and 'Trick Shot' and, if so, whether that action involved the reproduction of a substantial part. However, it seems the real issue was whether the defendants’ programmers and designers, when programming their respective computers to produce allegedly infringing visual effects, actually reproduced any of Nova's copyright work.

Kitchin J dismissed all Nova's claims on the basis that there had been no reproduction of any of its work.

* There was no substantial taking of any artistic skill and effort, program code or program architecture and the mere fact that there were similarities in the game's outputs did not raise an implication that there were similarities in the software.

* What had been taken was a combination of a limited number of general ideas that were reflected in the output of the program, but those ideas did not form a substantial part of Nova's computer program itself.

* The visual appearance and the rules of the games were all very different. Even though there were some similarities, each of the games looked and played (felt?) in a very different way.

The IPKat notes that this is the second major piece of fruit-machine IP litigation to come to court in recent times (the first being Electrocoin v Coinworld). The length and complexity of these disputes shows how valuable the UK gaming market has become.

How to play fruit machines for profit here
Gamblers' Anonymous here
E-advice for gambling problems here