Saturday, 18 February 2017

Unified Patent Court Agreement under threat?

It had to happen: the xenophobic press has noticed (courtesy of Douglas Carswell MP, the sole UKIP member in the House of Commons, who has tabled an Early Day Motion) that however hard Brexit may be it presently does not involve trashing the Unified Patent Court Agreement. Now that the Daily Express is reportedly on the case (see Intellectual Asset Management's report - I could not bring myself to investigate that rag's website, still less to drive traffic to it), I don't give much for the Agreement's future. I am amazed that, after all the hard work creating the Agreement (and all the other good stuff that has come out of the EU - of which even its sternest critic, if apprised of the facts, would surely agree there is some, even if it's only compensation for delayed flights), anyone should think it is a good use of scarce resources to undo it all and recreate something new that probably won't look very much different. Although, of course, the Unified Patent Court, by definition, isn't something the UK could do by itself.

Saturday, 7 January 2017

Bulgarian radio in licensing dispute, relying on out-of-copyright music

Copyright spat forces Bulgaria radio to play old tunes, reports BBC News. Musicautor, the collecting society, is reported to be demanding three times as much in royalties as before - to bring it into line with other EU countries, it claims. The broadcaster says it can't afford to pay that much without damaging the service it offers.

Not all copyright music is off the air in Bulgaria, though. Dancho (or is it Jordan?) Karadjov, frontman of Bulgarian rock band Signal, isn't a member of Musicautor and hasn't been since 1990, and is letting the station broadcast his latest solo album, a copy of which he gave to the radio station's director. He obviously feels a debt to the radio station for the help it gave the band decades ago - in the 80s when I imagine that it wasn't very easy to be a Bulgarian rock musician. Although listening to my first piece of Signal music ( - the title translates as "Farewell" which might indicate that I should have found somewhere else to start) I'm not sure that "rock musician" is quite the right expression. Perhaps I should dig deeper - but do I really want or need to become familiar with Bulgarian rock?

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Friday, 2 December 2016

Duran Duran and reversion of copyright

BBC News reports that the popular music combination Duran Duran have lost a claim in the High Court in which their music publishers sought to prevent them from serving notice to recover their U.S. copyright. Gloucester Place Music Ltd v Le Bon & Ors [2016] EWHC 3091 (Ch) (02 December 2016) is a relatively short (45 paragraph) judgment of Mr Justice Arnold, in his own words 'not without hesitation'. But there was little that he could do: the contract seems pretty clear. The various copyrights (and I don't like using the plural, though it seems appropriate here) were assigned for their full term, and to try to use section 203 of the U.S. Copyright Act to reclaim the rights after the statutory 35 years was contrary to the terms of the contract and amounted to a derogation from grant (reminding me again of BL v Armstrong, which I have been making my students in Nottingham read recently - it's good for the soul).

But surely (I hear you say) the statute overrides the contract? The right to a reversion of the copyright can't be contracted out of, can it? It seems that it can't - at least, on my reading of the provision, and perhaps a friend in the States will comment on this - but the parties went off to court under Part 8 on the basis that there was no dispute about the facts of the case, and the effect of the foreign law is a question of fact: and accordingly the defendants did not seek to adduce evidence evidence about U.S. law. Arnold J was asked only to interpret the contract, and that didn't create much difficulty for him.

It seems from the judgment that the defendants also failed to raise in the proper way a public policy point - although the learned judge indicated that he wasn't receptive to it anyway. There seems some merit in saying that an English-law contract, in which the parties agreed that the English courts should have jurisdiction, should not be allowed to interfere with the operation of a foreign statute.

Finally, the band members, quoted by the BBC, were miffed that they were suffering under a contract signed when they were young and innocent - a common complaint in the entertainment business, so much so that by 1980, when they signed up with the publisher, lawyers would take great care to make the contracts bulletproof. Their argument loses a lot of force, though, when you read the opening paragraphs of the judgment and learn that the 1980 contract had been terminated in 1983 and replaced with contracts with the band members' service companies. They might have been young still in 1983, but they were less innocent and presumably well-advised.

Friday, 18 November 2016

Dictionary of Intellectual Property Law, second edition

I am about to start in earnest on a second edition of the Dictionary - so this is your opportunity to let me know what I should include. Headings only thank you - I am not seeking complete entries. Writing the definitions is my job - and it's what gives me enjoyment, especially when someone says to me "I didn't realise you were so funny!". I can't think of anything that any other person has ever said to me that has given me so much pleasure ...

Thursday, 6 October 2016

Should've refused it

So the Trade Marks Registry has accepted Specsavers' application number 3175246 to register SHOULD'VE and (even more bizarrely) SHOULDVE (series of two: see here). And of course in line with modern (absolutist) practice it covers several classes of goods and services, some of them fair enough but others (retail services, printed matter), unqualified by reference to any particular sector, far too wide - tending towards patent-type monopoly protection over an ordinary English expression.

It's not as if Specsavers BV were short of protection. They have EU trade mark no 4694551 already, for SHOULD'VE GONE TO SPECSAVERS. Even taking account of the lunacy of Brexit, or "Eurocide" as I saw it called in The Guardian this morning, which will require proprietors of EU trade marks to obtain (by some mechanism about which we are yet to be told) separate UK protection, this new application would be wholly unnecessary in any truly rational trade mark system. Indeed, if the system worked rationally rather than promoting trade mark fetishism, the application would have been rejected out of hand. Not only can the word - whether correctly punctuated or not - never be distinctive enough to function as a trade mark: the applicant simply isn't using it as one. It is not the trade mark. It is one of the four or five words (depending on how you count contractions) which together comprise their trade mark. Alone, it should not have received more than a couple of nanoseconds' attention from the Registry.

I don't criticise the applicant for trying to get protection if the law will give it: nor do I criticise the agents who filed the application, who are obliged to serve their clients to the best of their ability. Specsavers has shareholders who will demand the strongest possible protection for its assets, including trade marks. I will however criticise both the applicant and the agent for making a series of two marks by adding an incorrect variant - especially given that, if an infringer used it, a judge would surely hold it so similar to the correctly-punctuated contraction as to cause a likelihood of confusion. In fact, the apostrophe might even be considered to be an insignificant detail which would not be noticed by the average consumer, so SHOULDVE would be treated as identical with SHOULD'VE. Given that "its" and "it's" are commonly treated as identical, that appalling possibility seems very real.

I do however criticise the law, which should never countenance granting exclusive rights like this. It panders to the wishes of the absolutists, who want the strongest possible protection for all their intellectual property, and fails to strike a balance between their interests and those of new entrants trying to find a trade mark which they can use, and ultimately of consumers too. The EU had an opportunity recently to make some repairs to a broken system, but with this acceptance the Trade Marks Registry has (IMHO) broken it a bit more.

Philip Glass on copyright

An insight into the importance of copyright to creative people, specifically composers (or at least one composer) but applicable to others whom the copyright legislation refers to as "authors". Read it here.

Tuesday, 13 September 2016

Repair clause referred to Court of Justice

My great friend David Musker reports on the Class 99 blog that a court in Milan has referred to the Court of Justice (how nice to see the institution being identified by the correct name!) for an interpretation of the repair clause (Article 110 of the EU designs regulation, No 6/2002). The questions asked - of which there are two - are (as is so often the case, partly I suspect as a result of their having been translated into English) pretty incomprehensible. Why do these questions so often have to ask if something is "precluded"? In BMW v Round and Metal, to which David's article refers, Arnold J, in a judgment that epitomises the adjective "Arnoldian", rejected the proposition that the defendant's alloy wheels fell within the scope of the repair clause: they were sold not as straight replacements but as alternatives, with different dimensions - and tellingly they were usually supplied in sets of four. What a misfortune to damage all the wheels of your car at once! Although it reminds me of a client who found her Boxster (this was probably 20 years ago) completely devoid of wheels one morning ...

An interesting point in the reference is that it appears to try to establish a connection between the "complex product" (the car) and the replacement part by reference to the fact that the wheels are approved under UNECE Regulation No 124 for use on that particular model of car. I'm looking forward to seeing what the court makes of that. I'm also trying to find some more enticing prospects to look forward to.

Friday, 2 September 2016

Monkey selfie: Animal charity Peta challenges ruling - BBC News

BBC News reported a while ago that Peta, the animal rights charity, with which I usually have complete sympathy, is arguing in a court in California that copyright in the now-famous macaque self-portrait belongs to the photographer. It sounds as if there is some dispute about which monkey took the photo (by which I mean pressed the shutter release or whatever it's called on a digital camera, as I can't imagine that he or she had the faintest idea what the action would lead to), but that leaves the main point that the charity argues that "[n]othing in the Copyright Act limits its application to human authors…".

I claim no particular expertise in U.S. copyright law, and am prepared to accept that there is at least an arguable case to support that proposition. Whether that justifies Peta spending charitable funds on a lawsuit which most would consider frivolous is another matter. Ever since I read Peter Singer's "canonical" (nice word - thanks Wikipedia) book Animal Liberation (here on Amazon), one of the many ways in which I distracted myself from the grinding boredom of articles of clerkship (1978-1980), I have tried to be as conscious of speciesism as of racism and sexism. I haven't perfected it, but I hope I have got close.

I can't put my hands on my well-worn copy (the paperback version of the first (1975) edition, published 1977) just at the moment, but I don't think it contains anything about animals' copyright. [later: I have found it now, and there is no entry in the index for "copyright" or "intellectual property", or even just "property", which isn't conclusive but will do for now.] In UK copyright law, the author of a work (and therefore, usually, the first owner of copyright in it) is the person who creates it. A person is (this from the Oxford Companion to Law) typically defined as "a being, entity or unit which can bear legal rights and duties". The word "being" without the adjective "human" seems to leave open the possibility of animals being authors. However, legal personality, the article in the Companion goes on, has to be distinguished from legal status, citing as an example that we can say the legal status of an animal [a non-human animal, I would add, not for the avoidance of doubt but to highlight the ambiguity or inaccuracy of the original statement] is that of property and that of a human is a person.* Professor Singer might, I imagine, take issue with the narrow definition of "person", especially as the whole point of his thesis is, as I understood it, that we should regard animals as having rights (though not necessarily accompanying duties). However, that is clearly the way the law works and I don't see any way for Peta to put forward a case for an alternative interpretation in the English courts, even if the Charity Commission would let them.

Now that I have found my copy of the book again, I'll search it for any suggestion that animals' rights should extend to owning property, and in particular intellectual property. I'm fairly confident that, however proprietorial some animals might be, Professor Singer didn't advocate extending legal personality to them to that extent.

Not Lucy's book
*See further, R. Tur, 'The "Person" in Law', in A Peacocke and G Gillett (eds), Persons and Personality: A Contemporary Inquiry (Oxford: Basil Blackwell, 1987), 121, and N Naffine, 'Who are Law's Persons? From Cheshire Cats to Responsible Subjects' (2003) 66/3 Modern Law Review 346. Professor Naffine is also the author of the article in the Oxford Companion to Law to which I referred and from which I repeat these two references.

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Visibly Faster Turnarounds By Indian Trademark Registry

This morning, when I opened my inbox, one email in particular surprised me. The email contained our first ever “e-certificate” for a trademark application filed just about one year ago! In the past, such prompt action by Indian IP Offices was almost unheard of. But clearly, the technology-enabled procedural changes introduced over the past year or so have begun to bear fruit.

The issues faced by the Registry in printing and dispatching hard copy (Registration Certificates) are quite well-known. On many occasions, the certificates did not reach the intended recipients. This not only caused delay and inconvenience to stakeholders but also imposed needless cost on the Registry as well as Applicants (who had to apply for a duplicate certificate).

About a month ago, the Indian Trademark office, via its notification dated 28th July 2016, had notified the new system of sending only e-certificates (Registration), and doing away with the century old system of sending hard copies. This was made effective from 1st August 2016 for all trademark applications:
  • published in the Trade Marks Journal on or after November 23rd, 2015;
  • where no request for amendment filed on behalf of the applicant is pending disposal;
  • where Trade Mark registry’s database contains the original application;
  • where no compliance requirement is pending on part of the applicant; and
  • which have not been specifically prohibited for registration by the order of any court, IPAB or any competent authority.

With the adoption of the new system it appears that the Registry is taking every possible step to eliminate the root cause for delay and thus expedite the registration process and deliver on the higher standards outlined in India’s new IP Policy.

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