Turtles all the way down

It has been a good day for learning new things. I had never read Green Bag before, not heard of Orin S. Kerr's "A Theory of Law" (cite as Orin S. Kerr, A Theory of Law, 16 GREEN BAG 2D 111 (2012): and cite it you must, because that is what it is for).

If you are as intrigued as I was, follow this link to a "micro-symposium" on the subject. The second thing I learnt was what that reference to turtles all the way down signifies - an infinite regression. Which is what you get when you start citing articles from Green Bag. Which I shall be doing as often as I can get away with it from now on.

Individual has no right to domain name

In Maiken Hvidbro-Mitchell v Wendy Croxford (Full Decision _No Action) [2013] DRS 12276 (01 March 2013) the independent expert, Andrew Clinton, appointed under Nominet's Dispute Resolution Service, decided that as between two non-celebrity individuals (in suit, a third party's ex-wife and new wife) the person whose name corresponded to the domain name in issue had no special claim to it. There were no registered (or unregistered, come to that) trade marks involved, and no image rights or anything exotic like that (it pre-dated Guernsey's ludicrous foray into pandering to celebrity vanity), and the domain name system treats as equal the ex-wife who wishes to publish material detrimental to the new one, and the new wife anxious not to have her name attached to the website where that material is published.

Were the person after whom the domain name was named a celebrity (a status which these days exists independent of fame) it would be a different matter, of course, but within the limits of how domain names work the outcome is clearly the right one. A transfer of the domain name might be a matter for the exclusive attention of the matrimonial courts.

Meet the Bloggers, INTA, Dallas

I'll be at Meet the Bloggers IX in Dallas on Monday, 6th May, during the INTA Annual Meeting. See you there, perhaps?

And if anyone attending the AM wants to meet up for a coffee, or a meal, or just a chat, please get in touch. You could also meet me with the IPRun group on the Katy Trail at 0630 on each morning of the Annual Meeting, from Sunday to Wednesday.

Oxford IP Moot: Part 2 - Trade mark use in double identity infingement - rethinking L'Oreal v Bellure

This post continues the coverage of the Oxford Intellectual Property Moot, but approaches the task from a different angle.

The moot provides an interesting opportunity to revisit the landmark decisions made by the Court of Justice of the European Union with the benefit of hindsight and reference to other jurisdictions.

Oxford IP Moot: Part 1

Last Thursday on 14^th of March the Oxford Intellectual Property Research Centre (OIPRC) opened its doors to welcome students, academics and practitioners from home and abroad taking part in the International Intellectual Property Law Moot 2013 (more information about the moot is available on its website).

The moot problem was argued under the law of imaginary country of Erewhon. Participants were expected to prepare an appeal against the first-instance judgment and argue the application and interpretation of law before the appellate court. The competition has two stages – participants have to prepare a written submission by December and then short-listed teams are invited for oral proceedings in Oxford in March.

The particular branch of IP law is rotated every year. This year the problem was built around trade mark law and passing off. The problem explored the limits of trade mark and passing off protection available for a producer of original drug when a patent for that drug expires and generic versions come around. Or to approach the same issue from the other side – to what extent competitors are allowed to copy the get-up of the original drug and market it using comparative advertising?

The moot is international – this year teams from 9 different countries (including the UK) took part in the competition. International participation is encouraged – according to the rules of the moot no national law is binding, participants are allowed to rely on authorities from any jurisdiction. The only binding law is the TRIPS Agreement and the Paris Convention.

On the other hand, the problem was drafted in a way favourable to the teams from the EU and common law jurisdictions. Part of the problem was argued under provisions very closely resembling EU Trade Marks Directive and Regulation. Another part was concerned with the passing off claim which is usually not available in civil law countries. For this reason it was especially pleasant to meet at the moot the team from the Goethe University Frankfurt. The German team deservedly left Oxford with the Professor David Vaver Spirit of the Moot Award.

The moot lasted for 3 days (14-16 March, Thursday to Saturday). Thursday and Friday were devoted to preliminary rounds – each team had two rounds per day arguing for the appellant and for the respondent. Based on the results 8 teams were shortlisted for the final rounds which were held on the last day of the moot. The teams which did not make it to the finals were able to have a proper night's rest (or engage in other proper nightly activities) and enjoy Saturday morning in Oxford in peace. The less lucky teams which survived preliminary rounds proceeded to the finals on Saturday.

The moot culminated in the Grand Finale where the teams from the University of Ottawa and National Law University, Delhi faced each other in front of the bench comprised of Kitchin LJ, Mummery LJ and Floyd J. After an hour long battle of wit and knowledge the team from Ottawa emerged victorious.

However, the moot was not focused on winning and losing. It was also an opportunity for IP enthusiasts from different countries to meet, chat and enjoy the company of each other. This was especially apparent at the Grand Finale which went in an atmosphere of cheerfulness and mutual respect that are sometimes lacking in the real appellate courts. The teams and judges were able to transform the discussion about the dry points of law into a good-humoured performance much to the pleasure of the audience.

This skill is perhaps worthy of learning. One of the reasons for many problems in intellectual property law is the lack of interest in it on the part of non-lawyers. People tend to dismiss intellectual property as something too unearthly and complicated until they receive complaints about illegal music downloads or see the difference in price between branded and no-name goods. Politicians are often too busy for intellectual property legislation and are prone to give their attention to a more pressing agenda dictated by the economic crisis or social unrest. It is sometimes overlooked that intellectual property is connected to both of these issues.

It falls to IP enthusiasts to popularise intellectual property law. The moot did a great deal in teaching students how to present IP issues in a straightforward, clear and catchy way.

It seems appropriate at this point to express gratitude to the Oxford Intellectual Property Research Centre for organising the moot and especially to Mummery LJ who has been judging the final rounds for many years. This was the last moot judged by Mummery LJ, since His Lordship is retiring this year.

W.S. Foster & Son Ltd v Brooks Brothers UK Ltd [2013] EWPCC 18 (21 March 2013)

You snooze, you lose is the moral of the fox and boot device story in W.S. Foster & Son Ltd v Brooks Brothers UK Ltd [2013] EWPCC 18 (21 March 2013). I feel that a brief history lesson is necessary in order to explain how the action came about. 

The claimants, W.S. Foster & Son Limited, are long-established bootmakers dating back to 1840s with premises in Jermyn Street in London. The defendants, Brooks Brothers, are the parent company of the well-known menswear group which started business from Madison Avenue in New York. They have both used the fox and boot device logo on the boots they make. The claimants brought an action for passing off as they have used the logo since 1965. It has previously been used by an English bootmaker, Peal & Co who supplied shoes to Brooks in the USA. Peals sold their business and its goodwill to Brooks in 1964. And here is where things got complicated: a former employee of Peals started to work for Foster & Son (the claimants, in case you last track) and suggested using the fox and boot device as Foster's logo. Brooks opened their first stores in the UK in 2005 and started selling shoes with the same logo. 

Brooks Brothers submitted and lost 3 main arguments, namely: 

1. That Foster's goodwill is insubstantial, it does not cover the whole of the UK and the logo itself is not distinctive enough to distinguish Foster's business in customers' minds. The Judge, Iain Purvis Q.C. disagreed with the reasoning and ruled that:

The Claimant may trade from a single set of premises. However, those premises are in Jermyn Street, the premier site in London for the sale of men's shoes and clothing. Trade from such store is not ‘local’ in the sense that it only attracts customers from the immediate locality. Furthermore, on the undisputed evidence the Claimant has customers in 75 different countries in the world.

2. That the entire sign should be taken as a whole, together with Peals' name. This argument was rejected by the Judge, who decided that the vast majority of customers would not recognise the name 'Peals', which ceased to exist in 1965. There was no evidence of actual confusion. 

3. That Brooks have built up their own goodwill in the logo since their purchase of Peals. In the Judge's opinion Brooks had failed to preserve Peal's goodwill by not using the mark immediately after taking over the business and consequently the defence of 'honest concurrent use' by Brooks cannot succeed as the fox and boot device has not been used by them since 1964.

[Written by Marta Safin but not posted by her for technical reasons!]

International arrangements: two new SIs

The Patents (Convention Countries) (Amendment) Order 2013 adds Samoa and Vanuatu to the list of countries covered by the principal Order, following their accession to TRIPS.

The Copyright and Performances (Application to other countries) Order 2013 is a bit bigger in scope, and contains a complete consolidated list of all the countries with which the UK has relations in the relevant fields. For the first time the list includes - you guessed! - Samoa and Vanuatu, and also the Lao People's Democratic Republic.

“Making” and repairing

Last week, we bought an intermediate bulk carrier, or IBC as they are affectionately known. It comprises a plastic container, suitable for holding fluids, within a metal cage which makes it a good deal more rigid and durable than would otherwise be the case. You can stack them on top of one another - though we won't be doing that, as it is only needed to hold water for the horses.

The very next day, the Supreme Court gave judgment in Schütz (UK) Ltd v Werit (UK) Ltd (Rev 1) [2013] UKSC 16 (13 March 2013). The case arose from the activities of a company which replaced the plastic bottles (if "bottle" is an apt word for something that contains 1,000 litres) when they reached the end of their useful lives. Did this amount to "making" IBCs, which would infringe the patent, or was it permitted as repairing?

The Supremes decided that replacing the plastic container does not amount to infringement of the patent for the whole article, reversing the Court of Appeal (a late Jacob judgment, if I remember correctly).

Although the court was careful not to get too deeply into the distinction, observing that there might be an overlap between making and repairing, it nevertheless gives us useful guidance on the difference between making and repair, which has not occupied judicial minds much since United Wire Ltd v Screen Repair Services (Scotland) Ltd, [2000] 4 All ER 353, [2001] RPC 24 (was that really so long ago?) and before that the Solar Thompson case: was the bottle a subsidiary part of the IBC, such that its replacement did not involve making a new article?

Obiter, the Supreme Court also talked about the interpretation of section 68 on the effect on infringement actions of non-registration of transactions with a patent which section 33 says must be recorded.

Unintended meanings

As I am applying my mind, such as it is, to legal writing, another matter crosses it: the use of words to mean something other than their correct meaning. However, the word that causes me to embark on this particular rant (and, note, I don't think I am embarking on anything here, in the strict sense of the word, or strictu sensu as lawyers used to say, thus giving the lie to their reputation for verbosity, because I am not boarding a ship) has already acquired a wider meaning than it originally had. As has "embark".

I read in The Lawyer that Oxford Brookes University has discontinued its legal practice course. It has left part-time students feeling anxious half-way to qualifying (half-way being, in this context, nowhere) although no doubt the Solicitors Regulation Authority will ensure they get to complete their course somehow. It is the latest of a bunch of institutions that have done likewise, facing a decline in the number of people wanting to become solicitors. That in itself is an interesting trend. The main reason this resonates, as they say, with me is that I used to teach there back in the days when the Oxford Institute of Legal Practice was a joint venture between Brookes and Oxford University. Then it was based in a city-centre office block, intended to replicate the atmosphere of a solicitors' office (it never seemed very successful in that aim, I must say): latterly it moved to Headington Hill Hall, part of the Brookes estate, formerly and notoriously a council house in the occupation of one Robert Maxwell.

Anyway, that's one LPC fewer, but on the same web page up pops an advertisement offering an LPC course at a "prestigious" law school. It turns out to be one that, to my mind, is a prestige-free zone, but leaving academic snobbery aside, I was amused at the idea that a law school might be proficient at conjuring tricks. I am however a bit too late to laugh about that one, because "prestigious" has lost that meaning and acquired the one the university in question had in mind. So my reference books tell me. However, the noun form "prestige" comes from the same Latin source (and incidentally has become an adjective too along the way - "prestige car", for example), where I had assumed without thinking about it much that the two words had quite different etymologies.

It is not, however, such a big change, I realised. From a conjuring trick to an illusion or impression of glamour is a short step, and the meanings are surely appropriate for a former polytechnic now entitled to call itself a university. There is, however, a serious point here, and it has taken me a long time to get to it: as professional wordsmiths, lawyers need to be alert to nuances of meaning. It is not possible to prevent the development of language, and indeed it is hardly desirable either. It is not the job of lawyers to hinder that process, but it is their job to achieve clarity in their work and to avoid ambiguity, and often that will mean we have to eschew the neoligism or changeling (can I use the word in this context? Provided the meaning is clear, I think so). "Prestigious" has undergone the big change and could probably be used safely, though I can't see why it might ever be necessary in legal writing, but other words do not have a sufficiently precise definition.

On writing well: or notes from a glass-house dweller

I have occasionally bothered you, dear reader, with diatribes about bad writing, criticising motes while happily ignoring any number of beams in my own eye. I hope not. A coincidence of several quite separate matters - a confluence of different streams, perhaps - this morning causes me to initiate a new theme for this blog. Not to the exclusion of intellectual property, otherwise why the name for it, but in addition.

Yesterday my wife read to me a sentence from the opening page of the book she had just started to read. It is about, or at least set during, the Second World War, and it began by describing civil defence measures, including the distribution of 38 million gas masks to every [sic] person in the country. Why, when they could only wear one at a time?

And then this morning, reading through some excellent legal writing blogs (not all American: the exception is Mark Anderson's excellent IP Draughts) which I should have been reading for years, I thought about a letter I was recently asked to give an opinion on, a document in which the organisation on whose behalf it was written offered funding for a project run by the addressee. It used the formula "through A and through B", where both A and B were dedicated sums of money (though in the case of B no precise figure was placed on it: the amount in the addressee's contemplation was very close to being the same as A, which may have accounted for some of the confusion). The addressee expected to receive A and B (or in value approximately 2A). The writer contends that it was intended to offer the sum only once: that A+B added up to what the addressee had in mind for A. In which case, it seemed to me, the correct form of words would have been "through A and B", although that preposition does trouble me and whether it would convey the intended meaning is arguable.

The letter in question was written by a person with an education far superior to that of most people in the country: a head teacher, as it happens. But lawyers are not immune from the failure to use the right words to convey accurately what they wish to say (or, looking at it a rather different way, using words that convey something other than what they intend). There are lengthy discussions on some of those blogs about the time needed to write well, arguing that clients should not be charged for the time lawyers spend turning out good prose: but clients certainly should not be charged for writing that's bad not in the sense that it's inelegant but in the sense that it's ambiguous or downright wrong. "Right first time" used to be a common watchword (I remember it being peddled by the managing partner of a a firm I worked for years ago, who rarely got anything right first time himself), and surely what the legal profession should be aiming at is producing writing that conveys the correct sense first time, regardless of whether several redrafts wouldn't make it read even better.

On which note, without re-reading what I have just written, I will press the "publish" button and be damned.

Case C-604/10, Football Dataco Ltd v Yahoo! UK Ltd, Stan James (Abingdon) Ltd and others

Back in the mists of time - as long ago as an expedition to Luxembourg takes - I wrote about the early rounds of this litigation (The Trouble with Databases). The Court of Appeal decided, on the basis of the BHB case, that the fixture lists in suit were not protected by database right (or sui generis protection, as it would be known to the ancient Romans were they still with us), but asked the Sages of Kirchberg whether they might be protected by copyright. Well, I always thought that the directive had all but done away with copyright in databases, and replaced it with the Latin right, but one must always expect the unexpected. (Be aware that the sui generis right is also the subject of a reference to the Court of Justice in another Football Dataco case, C-173/11, also from the Court of Appeal.)

Of course, we cannot expect a straight answer from Luxembourg - not because the judges are unreliable in any way, but because they are there to interpret the law for us and it is definitely not for them to apply it to the facts. They say that a database will be protected by copyright if the selection or arrangement of the data which it contains amounts to an original expression of the creative freedom of the author, which of course is a matter for the national courts. The intellectual effort and skill used in creating the database are not relevant, and neither is whether the selection and arrangement includes 'the addition of important significance to the data' [sic] - what that means is anyone's guess. Finally, 'the significant labour and skill required for setting up that database cannot as such justify such a protection if they do not express any originality in the selection or arrangement of the data which that database contains.'

I'd take that as a 'no'.