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Tuesday, 14 October 2014

Arnold J on copyright law reform: the Herchel Smith lecture

I first attended the Herchel Smith lecture on intellectual property law in about 1980 – probably one of the first things I went to after I qualified. I have no idea how many I have attended since, but this evening I had the pleasure of hearing Sir Richard Arnold talking about copyright reform, and in terms that I could relate to. That means that he went right back to the Whitford Report, and indeed a great deal further than that.
His thesis was that copyright reform, which is long overdue (I thought there was a 30-year rule, with a bit of latitude to accommodate parliamentary timetables: 1911, 1956, 1988 …, but on that basis we have a few years to wait), ought to be holistic rather than incremental. Would 'iterative' be the right word for the way copyright law is developing? I favour 'gestalt' instead of 'holistic', but I might be missing something, or just trying to be pretentious. Anyway, root and branch reform is called for.
Whitford was a root and branch review of copyright law, and the 1988 Act a (or 'an'?) holistic reform. So was Gregory, and the 1956 Act. I didn't know about what had gone before, so I found Sir Richard's speech very educational, but Whitford remains for me the essential starting point of modern copyright law, simply because it was current when I first came to the subject – followed by Nicholson and then green and white papers. Copyright neophytes now presumably have the same relationship with Hargreaves, or perhaps Gowers, or Gowreaves as it suddenly occurred to me we should refer to the process of copyright reform between 2005 and 2012.
Since Whitford and the 1988 Act which eventually put into law many of that committee's suggestions (but not all of them, especially on designs, a subject on which the Whitford Committee was split but the government hatched its own ideas) reform has been piecemeal at best. Sir Richard suggested that comparisons with a patchwork quilt were an insult to the art of quilting, which I thought a nice turn of phrase, or an 'obsessively reused palimpsest' which is something I need to think about (with a big dictionary to help me appreciate the nuances). If palimpsest it be, the over-writing must have been getting progressively smaller and would now be barely legible.
Whitford, I remember, compared the 1956 Act to an elegant Queen Anne house to which there had been Georgian, Victorian, Edwardian and finally Elizabethan (the second, that is) additions: an architectural hotchpotch, and a legal one too. The 1988 Act, as it now stands, much amended, probably has new wings which dominate the original building, including modernist, brutalist, neo-classical and goodness knows what else: shards, cheesegraters and gherkins grafted on to the modest 18th century original. Sir Richard listed seven problems with the 1988 Act, which I neglected to note down, but if I were to say that one of them was complexity that would not be far out. (Obsolescence, or actually being obsolete, in the face of technological progress was another,and a failure to conform to the structure of EU copyright law, or what I was horrified to hear him call 'European legislation', was another, and I guess we can work out what the others might be.) Anyway, he made the important point that the seven problems had not been addressed by Gowreaves, which is not surprising given their terms of reference (and the fact that if you want IP law thoroughly reviewed it would be a good idea to get an IP lawyer to do it, rather than ex-editors of the FT, knowledgeable though such men no doubt are). Hard to argue with that, I thought, though on the way to drinks after the lecture (there being no question-and-answer session, to my disappointment) I had precisely that argument with an acquaintance: he was of the view that it will always require highly-trained specialists to understand copyright, whereas I believe that unless you can make the law comprehensible to non-specialists the urban myths which already abound will just carry on growing. I don’t know which of us is right, but root-and-branch reform could easily take the rest of my lifetime, and that is perhaps sufficient argument against the ‘holistic’ or ‘gestalt’ approach.

Monday, 1 September 2014

Copyright in actor?

The Evening Standard, organ of the Russian opposition, reports that theatre goers have been ordered (by whom it doesn't say) to delete photos of actor Martin Freeman playing Richard III. They are being told that doing so breaches theatre etiquette (quite right) and copyright. Presumably the allegation is of an infringement of copyright - but in what? Idiots who fore off accusations like deserve to be required to cite the law on which they rely rather than trust to urban myth. It brings copyright, and the law in general, into disrepute. 

Wednesday, 27 August 2014

Protecting trade secrets: Max Planck Institute on Commission's proposals

I still haven't got my head round the proposed directive on the protection of trade secrets. I thought there wouldn't be much exciting in it - but whether that turns out to be a fair assessment or not, there is a lot in Max Planck's comments on it to excite me. (Yes, I know they are not actually Max Planck's comments - see the entry in my Dictionary about the institute, or more accurately institutes as there are as many as 80 of them under the auspices of the Max Panck Gesselschaft) named after the man, and indeed the entry in it for the man himself.) What excites me is the suggestion that the directive should extend protection to prevent reverse engineering.
What? This is the most outrageously protectionist idea I can recall ever hearing of. The MPI has often struck me as viewing intellectual property as a Good Thing without considering whether a lack of protection might be a better thing. So the Institute says:
The use without restrictions of trade secrets obtained through reverse engineering appears problematic, in particular in sectors where – other than in the case of software – no intellectual property protection is available, although considerable investments are made in the development of new products. Notable examples include the cosmetic industry, which regularly invests quite heavily in the development of perfumes, but where the know-how generated thereby can be decoded with relative ease through reverse engineering.
The unrestricted use of such know-how raises concerns that it could pose a substantial threat to the companies concerned, eventually leading to market failure whereby such goods would no longer be produced. Accordingly, it must be assessed whether the existing (quite problematic) prohibition on advertising such products as imitations or replicas should be replaced by other measures that are directly aimed at protecting the relevant interests.
Perfumes? What a lousy example to use. As Ian Connor of Pinsent Mason says in Out-Law's commentary on the MPI paper, the evidence in the smell-alike cases showed that it was impossible to achieve an identical fragrance by reverse-engineering (and the fact that a cheap imitation couldn't use the expensive ingredients no doubt contributes to that). If there is an element of unfair competition in imitating fragrances, then it has to be dealt with as unfair competition: for goodness sake, don't try to bring trade secrets law to bear on it. In so far as trade mark law is part of the law of unfair competition, that approach has been tried, but just because it has failed doesn't mean that we need to try something else. And just because something isn't protected doesn't mean that there is a hole in the system that needs to be repaired.

I first encountered the idea of reverse-engineering in the context of the good old Morris Marina exhaust pipe - in other words, in the dispute that eventually gave us BL v Armstrong. Copyright was used to try to stop reverse engineering, because (unlike a smell-alike) you could  make a perfectly serviceable and accurate copy of an exhaust pipe by measuring the relevant dimensions. Did the House of Lords say "oh, here's something that isn't protected, let's see if we can find a way to make the law apply?" Not at all. In fact the starting point was the opposite: here was something that copyright did protect, even against reverse engineering, and their Lordships were pretty clear that they thought this was wrong. (Lord Templemann and Lord Bridge, as I recall, to the fore: two judges who for several years resisted every attempt to expand the scope of intellectual property protection, whether in exhaust pipes, bottle shapes (as trade marks: Re Coca-Cola), sound recordings (CBS Songs v Amstrad), plastic toy bricks (Lego v Tyco), or television show formats (Green v Broadcasting Corporation of New Zealand). The majority in the House of Lords (Lord Griffith going about it in a different way, if I remember correctly) resolved the problem in the consumer's favour by reference to the "non-derogation from grant" principle known to landlord and tenant law - an even more egregious example, it has to be said, of using one law to solve a deficiency in another than the MPI's wish to use trade secrets law to solve an unfair competition problem.

The law should only give protection where there is a good reason for it. That, I think, is the "evidence-based policy-making" that Hargreaves was so keen on, and which the government seems to have forgotten about even before the ink was dry on the Professor's work (hence the increase in copyright term for sound recordings, and perhaps likewise the latest bunch of copyright "exceptions", or permitted acts as they ought properly to be called). There are limits to intellectual property protection for good reason. Some matter remains unprotected deliberately - for the simple reason that there is no justification for protecting it. There would be no incentive for anyone to do anything that they were not already doing, just a supernormal profit to be taken at the expense of the consumer. Consumer welfare in the strict economic sense is not the be-all and end-all of the matter: when you analyse this stuff as property, human rights become engaged, and a property owner should not lightly be deprived of it. But in the case of reverse engineering we are talking about matter which is not protected by property rights, and which is in the public domain where anyone can use it. It is not confidential, and to impose a confidentiality-style obligation on would-be users would be a huge retrograde step and one that takes absolutism in intellectual property to new heights.

Tuesday, 26 August 2014


Guest post from our man in Bangalore, Santosh Vikram Singh of FoxMandal ...

The Government of India, vide its notification dated 1st August 2014 has amended the existing Trademark Rules, 2002, and the amended Rules are now referred to as the ‘Trade marks (Amendment) Rules, 2014’. The proposed amendments were initially notified and made available to public on 26th August 2013 inviting objection and suggestions from the public likely to be affected. Since, no objections or suggestions were received by the Govt. of India the proposed amendment were accepted and subsequently notified.

The salient features of the ‘Trade marks (Amendment) Rules 2014’ are:
  1. The official filing fees for filing a trademark application in one class has been increased from INR ‘3,500.00’ to INR ‘4,000.00; and;
  2. The official fees to expedite the examination of an application for the registration of a trademark, has been increased from INR ‘12,500.00’ to INR ‘20,000.00’.
It may be pertinent to note that during the Trademarks (Second Amendment) Rules, 2010, the application fee was increased from INR 2,500.00 to INR 3,500.00, however the fee for filing an application for expediting the examination which should have been proportionately increased five times of the application fee (INR 17,500.00), was inadvertently missed out which lead to a great confusion and until the latest notification it was not clear whether the fee was five times of filing fee i.e. INR 17,500.or INR 12,500.00 as mentioned in first schedule of the Trademark Rules.
Therefore, it may be seen that the current amendment is also to rectify the earlier mistake.

Since the notification came to effect since August 1st 2014, the Controller General of Patents, Designs & Trademarks, India issued a public notice dated 7th August 2014 stating that any applicant/agent who has filed the application on or after 1st August 2014 and not paid the revised fee, shall have time until 30th September 2014 to pay the balance fee failing which the application shall not be processed.

It may further be noted that if the balance fee is not paid within the afore-mentioned date, the filing date shall shift to the date of actual payment of the balance fees. Needless to mention that the date of filing an application is crucial, however, it is further important that if the application has priority of a convention application, paying the balance fee on or before due date becomes more crucial.

It may be noted that only as recent as 2010, the Government amended the official filing fees from 2,500.00 to 3,500.00, therefore, this increase by the Government can only be seen as a measure for the Trademark Office to increase their resources to ensure the long pending backlogs of applications are expedited, and on the other hand to ensure that the applicants choose their trademarks more wisely, before filing the same and to further lessen frivolous applications. 

Sunday, 10 August 2014

Software support SLAs | SEQ Legal

SEQ Legal  seems to have a lot of useful stuff - including this piece on software SLAs which I am bookmarking for future reference, and sharing with my readers in case any of you (either of you?) are interested.

Sarah Lund's jumper is exhibit A in a legal battle | World news | The Observer

The Observer 
reports a copyright case over the design of the iconic jumper worn by
Danish TV detective Sarah Lund (actress Sofie Gråbøl) which the Faroe
Islands-based manufacturer has lost. The court took the view that the
design was a traditional pattern hundreds of years old. That sounds
quite plausible: I don't know what evidence might have been offered, but
to claim that the design is an original one is a bit of a stretch.

report digresses into a discussion of a report in Vogue on Fair Isle
sweaters, which in fact are a completely different matter (by
definition, multi-coloured). And then, incredibly, the paper places the
Faroes equidistant from Scotland, Iceland and Denmark: two-thirds
correct, but where do they think Denmark is? Or have they forgotten that
Norway is no longer part of Denmark (and hasn't been since 1814).
Moreover, since the Faroes are part of the Kingdom of Denmark, it is
pretty pointless measuring the distance between the two - rather like
asking how far it is from Scotland to the United Kingdom (pending the
forthcoming referendum, of course).

Friday, 8 August 2014

European Case Law Identifier (ECLI)

The European e-Justice Portal  sets out details of a newly-devised method of citation which I suspect will become important in the future. It explains how it works, in the process exposing the imperialism which lies at the heart, it seems, of everything the European Union does - this is not a European case law identifier, nor is the e-Justice Portal a European thing: Europe is a continent, and the legal entity with which we are concerned here is the European Union. I remain surprised that Mr Putin has not taken violent exception to these frequent attempts to apostrophise his country. (The Swiss, Norwegians and others might be expected to take less violent exception.) More to the point: lawyers work all the time with words, and giving them precise meanings (and using those precise meanings correctly) is key to our work. How on earth can we tolerate this sloppy usage of a geographical term to identify a smaller political unit? Yet every time a lawyer refers to the European Court of Justice they commit this cardinal sin.

Anyway, back to the citation system. Here's what it says:

ECLI is a uniform identifier that has the same recognizable format
for all Member States and EU courts. It is composed of five, mandatory,
  • ‘ECLI’: to identify the identifier as being a European Case Law Identifier;
  • the country code;
  • the code of the court that rendered the judgment;
  • the year the judgment was rendered;
  • an ordinal number, up to 25 alphanumeric characters, in a format that
    is decided upon by each Member State. Dots are allowed, but not other
    punctuation marks.
The elements are separated by a colon. 
It gives a non-existent example of an ECLI. More useful would be to give a real one. How about ECLI:UK:SC:2013:18. Case number 18 of 2013 in the court formerly known as the House of Lords, or SCOTUK as we might call it, taking a leaf out of the American book (and perhaps demonstrating suitable contempt for New Labour's wanton destruction of tradition - but I digress). That would be Meltwater. I note that BAILII does not seem to have adopted the 'European' approach yet.

BP loses colour trade mark battle - IP Whiteboard - KWM

Mallesons' excellent IP Whiteboard  blog tells us that BP last month lost its latest attempt to register a shade of green, identified as Pantone (R) 348C, as a trade mark in Australia, there being no evidence to show that consumers identified the source of the goods from the colour alone. Being embroiled myself in opposition proceedings, where a client has fallen foul of another company's sweeping colour trade mark registration, I wish we took a similar approach in Europe: without added matter, a colour trade mark should be registered only if it constitutes the brand (Orange, for example), not just an ancillary part of it. Of course it may be that in the UK BP meet this requirement, but there are other colour trade marks that don't come close and which therefore constitute unjustified monopolies, and insurmountable barriers to entry for overseas businesses trying to enter the UK market.

The Intellectual Property Act 2014 (Commencement No. 2) Order 2014

The Intellectual Property Act 2014 (Commencement No. 2) Order 2014  brought section 23 of the Act into operation, from 1 August. Section 23 is not a substantive provision: it merely contains power for the Secretary of State to make consequential or transitional provisions in connection with the Intellectual Property Act 2014. But a great deal of mischief could follow!

The Legislative Reform (Patents) Order 2014 introduces Bolar exception

The Legislative Reform (Patents) Order 2014  introduces an exception into our patent law for acts done for certain purposes connected with obtaining marketing authorisation for pharmaceuticals. This is basically what has existed in US law for some time, where it is called the Bolar exception: if you haven't already bought a copy of my Dictionary of Intellectual Property Law, get one now to read the definition! We now have new subsections 60(6D) to (6G) in the Patents Act 1977 (or to be more precise we will have from 1 October, when the change comes into operation).

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