Transformative use

In trying to explain when a substantial part of a copyright work has been taken (and therefore an infringement might have taken place), I came up with what I thought was a great illustration. It helped, perhaps, that I was doing the teaching in Moscow, so Rachmaninov came easily to mind. Leaving aside the fact that there is no extant copyright to worry about in practice (in any case, Paganini died in 1840, 94 years before the Rhapsody was written), would it ever be thought that Sergei Vasilievich's Rhapsody on a Theme of Paganini (Opus 43) infringed Paganini's copyright, or that it was anything other than a completely original work?

To start with, listen to the last of Paganini's 24 caprices, which is where Rachmaninov got the Theme from, played here by Hilary Hahn:


Then listen to Rachmaninov. There are 24 variations in his Rhapsody, starting with a fairly literal statement of the theme (you can hear that in the last of these three clips). Maybe he would have had to clear that with the Italian virtuoso, had modern copyright law applied at the relevant time. But the point of variations is that they transform the theme, and by the time you reach the glorious and impossibly romantic variation 18 (played in this clip by Valentina Lisitsa with the London Symphony Orchestra conducted by Michael Francis) it has changed beyond recognition, turned upside-down by Rachmaninov to produce one of his greatest tunes (and I write "his" quite deliberately: it's no longer Paganini's).

The great pianist Stephen Hough explains what is going on in this clip.


Of course there are many other examples of authors (in the broad copyright sense) taking someone else's work and transforming it into something utterly original (in the copyright sense as well as the ordinary one), but I think this is a particularly good one as well as being a beautiful piece of music.

Note: "transformative" is not a word used in the Copyright, Designs and Patents Act 1988. It is mentioned as a description of a type of fair use in the US legislation, and it featured in the Gowers Review a decade or so ago - where it was suggested that there should be an "exception", created by by an amendment to Directive 2001/29/EC, in favour of "creative, transformative or derivative works" which would benefit what the Review called "the Hip Hop industry".

Passing-off lecture launches IPso Jure channel on YouTube

It's now over two years since a memorable dinner over which, among other things, the idea of making YouTube videos on intellectual property came up, and finally I have managed to complete the first in what I hope will be a series. It's good that one thing has now worked out well from then.

You can find the YouTube channel here and I will put a link on this blog to make it easy to find. I called this first video a brief guide to passing off, but my old friend Godfrey pointed out that 54 minutes hardly counts as brief so I amended the description (although considering the size of Christopher Wadlow's great book on the subject, 951 pages in the 4th edition and no doubt more in the 5th edition which was published last year but the publisher's website doesn't reveal how many, I think under an hour counts as brief). There's only one possible response to that, and I am delighted that Pascal is the man to quote: "Je n'ai fait celle-ci plus longue que parce que je n'ai pas eu le loisir de la faire plus courte." (Pretentious? Moi?)

I made the video using the Movie Maker program that comes as part of Windows these days (or perhaps it's an app that you have to download). It was very clunky, and I hope I can find an alternative that will make it easier to adjust the time each slide remains on screen - surely there must be a program that allows you just to drag the end of that image along the timeline to coincide with the right point in the audio file. If you're interested I will share my findings in future posts. And if you're not interested, I'll still do that but you can ignore me. If you have suggestions for suitable programs, I'd like to know!

Now that I have broken the logjam that had been building up for a long, long time, I hope I will find it easier to be briefer in future presentations. Certainly I already have several ideas for improving this video, although my next task will be to address trade marks, responding to a request I received a few months ago. But briefly!

Confused in Spain if not in the UK

Co-existence agreements have become routine in trade mark practice in the last few years (by which I now find I mean at least a decade - since 2005, in fact, when the Trade Marks Registry stopped refusing applications on relative grounds, meaning because someone already had a similar or identical trade mark already registered for the same or similar goods). Parties who would otherwise be locked in opposition proceedings can draw lines between their trade marks and the respective goods and services so as to avoid consumers becoming confused. But an agreement that overcomes problems in the UK won't necessarily help when a conflict arises elsewhere.

In a recent case, Ornua Co-operative Limited, formerly The Irish Dairy Board Co-operative Limited v Tindale & Stanton Ltd España SL the European Union's Court of Justice had to deal with a conflict between two Irish dairy companies, the owners of the well-known KERRYGOLD trade mark and the owners of the less well-known KERRYMAID trade mark. KERRYGOLD is registered as a European Union trade mark, while KERRYMAID is registered in Ireland and the UK.

It's not very surprising that the parties had struck an agreement to enable the trade marks to co-exist peacefully in the UK and Ireland. It's possible to argue that there's no likelihood of confusion on the basis that the common part of the trade marks is the name of an Irish county famed for dairy products, so the question whether GOLD and MAID are confusingly similar: but the fact that the KERRY part of the trade marks is the beginning makes them more confusing, and perhaps KERRYGOLD is well-enough known that consumers seeing KERRY-anything on the supermarket shelf would get muddled.

Leaving the co-existence agreement aside, problems arose when KERRYMAID was introduced to the Spanish market. No registered trade mark there, no co-existence agreement. KERRYGOLD sued for infringement (throwing in a dilution claim too), and the Spanish court decided that because the similarity lay in the KERRY element of the trade marks which was just a geographical location, and there was a co-existence agreement covering the UK and Ireland, there was no likelihood of confusion. KERRYGOLD appealed and the Spanish appeal court set off on an expedition to Luxembourg - in other words asked the Court of Justice for a preliminary ruling.

The Court, unsurprisingly, said that you can't assume that because there is a co-existence agreement in two Member States, there won't be a likelihood of confusion in other Member States. If the Spanish court had been persuaded that there was no material difference between the UK, Ireland and Spain, that might have justified a finding that there was no infringement, but that hadn't happened. Indeed, I would go on to say that the fact that there is a co-existence agreement in two Member States indicates that there is a likelihood of confusion in other Member States where the parties haven't struck a deal to prevent it.

I would also have made sure that the UK co-existence agreement made clear that if the junior trade mark owner wanted to enter the Spanish market, there would have to be a new agreement. I'm dealing with exactly the same problem for a client at the moment: the fact that the junior trade mark owner only has a UK trade mark struck me as pretty conclusive about the matter of using their name outside the UK. It would not be use of the UK trade mark in a third country, it would be the use of something identical to the UK trade mark, and therefore the agreement has to stop the junior trade mark owner doing anything outside the UK. Co-existence involving a UK trade mark can't amount to co-existence outside the UK.