Fun with fundamentals, US-style; a tale of three Thursdays

Fun with fundamentals, US-style

Right: the seal of the United States Patent and Trademark Office

The IPKat, still behind with his Christmas reading, has at last had the chance to examine Fundamentals of United States Intellectual Property Law: Copyright, Patent, Trademark, the second edition of which was published by Kluwer Law International towards the close of 2006. This work is put together by a triumvivate of academic authors - Sheldon W. Halpern, Craig Allen Nard and Kenneth L. Port, from the Albany Law School, the Case Western Reserve University Law School and the William Mitchell College of Law respectively.

What the publishers say:

"This ... work offers in one volume a comprehensive review of United States copyright, patent, and trademark laws. It provides thorough and sophisticated treatment of this complex material in a form both less cumbersome than a treatise and considerably deeper and more sophisticated than a study outline or "nutshell."

With its detailed citations, and readily accessible and complete subject coverage, this book will be a useful quick reference or deskbook for intellectual property practitioners, students, law professors, and librarians, as well as for anyone interested in understanding American intellectual property law".

What the IPKat says. The publishers' claim is true - this is a halfway house between the irritating brevity of the nutshell and the rampant compendiumism of the authoritative treatise. However, lacking tables of cases and statutes and possessing a relatively slight index, the book is obviously intended to be read from cover to cover, ideally by the student who is about to embark upon a full-scale study of US IP and needs a good overview, than to be consulted by a reader in search of an answer to a specific point.

The text addresses the middle-of-the-road reader who is familiar with basic legal concepts and whose need is for clearly-presented information rather than in-depth analysis of Supreme Court jurisprudence. Roughly half the book is taken up by copyright, which probably reflects that subject's complexity and spread of issues. Patents and trade marks each occupy more or less a quarter each. While 'minor' rights, such as semiconductor chip and plant varieties protection and geographical indications, do not fall within the scheme of things, the IPKat hopes that the third edition might carry a short chapter that enumerates those rights and gently explains their relationship to the rights that constitutes the book's core.

Bibliographic details. ISBN: 904112599X. US price $122.00; Euro Price €95.00. Paperback (though the website says 'hard cover'). xxiii + 419 pages. Rupture factor - negligible.


A tale of three Thursdays

This Thursday, 11 January, the European Court of Justice gives its ruling in Case C-175/05 Commission v Ireland. Essentially, the Commission asks the ECJ to declare that, by exempting all categories of public lending establishments from having to pay for lending right under Council Directive 92/100 on rental right and lending right, Ireland is in breach of its obligations under that Directive.

Left: From the library of Trinity College Dublin, an illustration from the Book of Kells, much admired - but never lent

The Irish authorities rely on the excemption under Article 5(3) of the Directive the scope of which (they say) is so wide that it permits all public educational and academic institutions to which the members of the public have access to engage in public lending with the result that all public lending institutions, being exempt from the lending right, are absolved from payment of remuneration. The IPKat (see post on 13 July last, on Case C-61/05) recalls that Portugal got taken apart by the ECJ not so very long ago on a similar issue and doubts that the Court will take a different view vis-à-vis Ireland.

On Thursday 18 January the Advocate General gives an Opinion in Case C-17/06 Sarl Céline v SA Céline, a reference for a preliminary ruling from the Cour d'appel de Nancy, France. The question before the Court is this:

"Must Article 5(1) of Directive 89/104 be interpreted as meaning that the adoption, by a third party without authorisation, of a registered word mark, as a company name, business name or style in connection with the marketing of identical goods, amounts to use of that mark in the course of trade, which the proprietor is entitled to stop by reason of his exclusive rights?"

Right: a Céline handbag

Says the IPKat, the answer is a clear, crisp, decisive "it all depends". Expect a long, complex opinion.

Then on Thursday 25 January we have two treats:

* judgment in Case C-48/05 Adam Opel AG v Autec AG, Deutscher Verband der Spielwaren-Industrie e.V. in a reference from Germany for a preliminary ruling on the following questions:

"Does the use of a trade mark registered also for 'toys' constitute use as a trade mark for the purposes of Article 5(1)(a) of the Trade Mark Directive if the manufacturer of a toy model car copies a real car in a reduced scale, including the trade mark of the proprietor of the trade mark as applied to the real car, and markets it?

If the answer to Question in 1 is in the affirmative: is the type of use of the trade mark described in Question 1 an indication of the kind or quality of the model car within the meaning of Article 6(1)(а) of the Trade Mark Directive?

If the answer to Question 2 is in the affirmative:

In cases of this type what are the decisive criteria to be applied in assessing whether the trade mark corresponds to honest practices in industrial or commercial matters?

4. Is this in particular the case if the manufacturer of the model car applies to the packaging, and to an accessory required in order to use the model, a mark recognisable to the trade as its own trade mark together with its company name and the address of its seat?"

Scandalously, the Advocate General's Opinion has been translated into what seem to be dozens of other European languages but NOT English (IPKat note, via Eversheds' translation procured by Simon Malinycz, here).

* Case C-321/03 Dyson, on a reference for a preliminary ruling by the High Court of Justice (England and Wales) on the following questions:

"1.In a situation where an applicant has used a sign (which is not a shape) which consists of a feature which has a function and which forms part of the appearance of a new kind of article, and the applicant has, until the date of application, had a de facto monopoly in such articles, is it sufficient, in order for the sign to have acquired a distinctive character within the meaning of Article 3(3) of Directive 89/104, that a significant proportion of the relevant public has by the date of application for registration come to associate the relevant goods bearing the sign with the applicant and no other manufacturer?

2.If that is not sufficient, what else is needed in order for the sign to have acquired a distinctive character and, in particular, is it necessary for the person who has used the sign to have promoted it as a trade mark?"

The IPKat's not expecting the ECJ to stray far from the "abandon hope" message sent out by the Advocate General here (see IPKat's comment here).