Thursday, 11 December 2008

Longer copyright for sound recordings

So the government has swallowed the line about extending copyright for sound recordings, and the minister has announced this morning that they are thinking about 70 years - at least not as long as the 95 years that the European Commission has fallen for.

No explanation is offered for this most flagrant u-turn, not yet anyway: and it seems as if one of the few sensible things in the Gowers review is going to be ignored. Well, that's politics.

As I have noted before, somewhere, if the extended rights come to the performers my objections to the extension of protection are diluted a bit - but there is no indication about how that is to be dealt with, and copyright in sound recordings usually belongs to the record company. Contracts might contain something to make the rights pass to the artist if the recording is deleted (but just as with print-on-demand, knowing when a recording is no longer available is now impossible) but that's not enough to rely on when extending these rights. Far better, I would have thought, to create some sort of moral right to allow performers to control their work whoever owns the copyrigt - which is largely already provided for in part II of the Copyright, Designs and Patents Act as amended: can't we increase the period of protection for rights in performances instead?

Let us hope this is not the dead hand of copyright being placed on these copyright works on behalf of the record companies (who largely don't need it anyway), and that instead it's an enlivening hand that will keep performers performing and recording instead of having to earn their livings as bricklayers or petrol-pump attendants ...

Cipriani: using your own name

Hotel Cipriani SRL have, I find, been in the law reports before, in fact just last month. The day before yesterday Mr Justice Arnold gave judgment in a major trade mark infringement and passing off case involving the same company, Hotel Cipriani SRL and others v Cipriani (Grosvenor Street) Ltd and others [2008] EWHC 3032 (Ch), not yet on Bailii, although there are state aid cases and other exciting reports of Cipriani litigation). It's an old story: family sets up business, sells out to another (usually larger, multinational, corporate) party with little sense of history and none of humour, then another member of the family sets up another business (perhaps a long way away) under the family name, and gets sued by the humourless multinational.

Humour and trade mark ownership, of course, rarely go together. I often tell my audiences on training courses that trade mark owners must suspend their senses of humour: if you have a well-known trade mark (and I don't mean that in the specialised Paris Convention sense, necessarily, especially because no-one really knows what that means anyway) you have to wield a big stick at every pizza restaurant, night club, escort agency, one-man building firm or teenage computer programmer who threatens the distinguishing function or (which is sometimes different) value of your trade mark. So I am not criticising the Italian company (actually, that should be plural as there were three claimants in the action, according to the IPKat), rather the mindset that places the protection of every little bit of intellectual property above more conventional forms of competition.

Well, perhaps that isn't happening here, but it's not a case where I feel instinctively that the IP owner was in the right. Maybe that's because I was acting a couple of years ago in a similar dispute - also in the hospitality industry, as we should now call it - and my client was on the receiving end. There, the nasty corporate had a Community trade mark but no discernible intention of trading in the Community. They were carving out an exclusive position that they might never wish to exploit: and meanwhile there were businesses in the Community with legitimate reasons to use the same name - indeed, like the Cipriani case, there was a "common origin" issue.

In the present case, the defendant's restaurant was called Cipriani London and usually referred to (there being little need most of the time to identify the city) as just Cipriani (as its website does this morning, though probably not for long). The claimants were companies in the Orient Express group. Both the Venice and the London establishments were set up by members of the family, though the Venice hotel had been sold on some time ago (on terms that don't seem to have protected the family's rights to carry on using its name, though perhaps that was just not on offer at the time) and the London restaurant is owned by a group of companies of which the most important was Cipriani (Grosvenor Street) Limited.

The defendants conceded that their activities were prima facie infringements, but that they could use their own name (section 11 of the Trade Marks Act 1994). The judge held that there was an infringement as the distinctive element in the defendant's sign was the name Cipriani, and then went on to say that the "own name" defence was not available because Cipriani was the company's trading name, not its own name. This is difficult to grasp without the full judgment: would the answer have been different had the company been Cipriani Limited? Surely if Cipriani is the distinctive part of the trading style ("London" adding nothing), it is also the distinctive part of the company name, "(Grosvenor Street)" adding nothing (though the address is Davies Street, incidentally) and "Limited" not making a ha'porth of difference. Had the defence applied, the judge didn't think it would extend to the trading name anyway.

The claimants also won on passing-off, as they had customers here when the restaurant opened and had foreign customers who booked direct (although i don't understand quite what difference that makes). They had a substantial reputation her, and more importantly they had valuable goodwill too.

There is a lot about this case that will require careful thought when the judgment becomes publicly available. It is more than an example of David losing out to Goliath, though it does not seem to be one of those cases of over-reaching intellectual property rights that trouble me so often. Perhaps what my reaction comes down to is an instinctive sense that customers will patronise all the four establishments concerned on the strength of the Cipriani name, and the connection between the family and the Orient Express businesses will never go away completely. The parties, like parties to similar disputes including that of my former client, should learn to live with it: no-one needs a monopoly over a mere name.

The Court of Appeal [2010] EWCA Civ 110 upheld Arnold J’s judgment (24 February 2010), though Lloyd LJ expressed some reservations about the ‘direct bookings’ test, which he thought might in the Internet age be outmoded although the case before him did not provide an opportunity to deal with the matter.

Three cyclones or two?

I thought cyclones were dangerous things, until Sir James Dyson (as he now is) tamed them and applied them to the tricky business of extracting foreign bodies from carpets. Perhaps that opened up a new set of dangers: one friend needed a replacement power cable for his Dyson vacuum cleaner, and was horrified at the price and the fact that the spare part was an integrated assembly comprising much more than just the cable.

Dyson (the company as well as the man) have been generous to anyone presenting courses on intellectual property. The Hoover patent infringement litigation is based on a relatively easy-to-understand patent, the infringement is fairly clear-cut, and the issue of inventiveness demonstrates how there is nearly always some scope for challenging a patent. The designs case against Qualtex rehearses all those old points about spare parts, and there is trade mark litigation to which an audience of lay people can relate. Now we have an instance of the boot being on the other foot: Dyson is challenging the patentability of Samsung's "triple cyclone" design. Dyson's counsel, Piers Acland, told the court that Samsung's claims were "largely verbiage" (a criticism that could perhaps be levelled against nearly all patent claims) and (deconstructing the report in The Daily Telegraph, which talks rather more about "trademarks" than one would normally expect in a story about a patent case) argued that adding a third cyclone to the two in the Dyson patent did not amount to an inventive step.

It sounds as if the contribution to the art is at best small. If two cyclones do the job, why not three? This might be another illustration of the unhealthy and anticompetitive trend of large businesses who can afford the bills collecting more and more marginal, borderline invalid, pieces of intellectual property to extend their competitive advantage. Thank goodness that there is a comparatively resourceful challenger in this case.

Perhaps I'll have a nice new case on obviousness to refer to when next year's training course season comes around.

Marks & Spencer - of all people - test the law on Google keywords

Woolworth's and Marks & Spencer are connected in my mind by virtue of the fact that both were in Lynn Street when I was a child. That was before Lynn Street was demolished, and I well remember sitting in a pub one lunchtime in my student days with an old schoolfriend while the buildings around us were flattened. Now Woolworth's is undergoing a corporate demolition, while Marks & Spencer finds itself on the wrong end of a lawsuit arising from its use of Google keywords.

Selling keywords that might be someone's registered trade mark always struck me as a strange and dangerous thing to do. In fact selling exclusive keywords to anyone is a bit dodgy. But there seems to be a tendency for the rules on intellectual property to be rewritten by Internet businesses (and others too) with little regard for the fact that the law has developed, imperfectly to be sure, over many decades.

So M&S bid for Google keywords including Interflora and Inter-Flora. So too (according to press reports - I have a cutting from the Telegraph here) did Flowers Direct Online. Interflora says this is a trade mark infringement. Marks & Spencer - who went to the House of Lords a few years ago arguing that they could copy press cuttings without paying the Newspaper Licensing Agency, remember - thinks otherwise. Perhaps the reinvention of one of the oldest names in British retailing is complete: they are at the cutting edge of intellectual property law.

Am I showing my age and conservatism by thinking that this is as egregious a form of trade mark infringement as any other? It serves to divert customers from the business they were looking for - and while it does not mislead customers into believing that they are dealing with the trade mark owner (though there must be some scope for confusion, especially with the amount of consolidation going on at the moment, and with the tendency for businesses to develop separate on-line brands), and it does so using the trade mark owner's reputation.

The monopolisation of generic or descriptive keywords is another worrying and highly anti-competitive development. If one online retailer grabs the word or words most apt to describe what it sells, it makes it harder for others to sell those goods ... But that is a story for another day.

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