24 August 2005

Trade Marks: They do things differently in America

US trade marks lawyer, Martin Schwimmer, has an interesting post on the Trademark Blog today. It concerns a complaint by a well known parcel delivery company against a young man who made a suite of furniture out of the complainant packaging materials. The young man appears to have been so proud of his work that he uploaded photos of it onto a website. Probably, that is why he raised a hornets' nest. The first 5 letters of his domain name are the corporate name of the complainant. It is important to add that he does not advertise or offer his furniture for sale on his site.

Mr Schwimmer's post links to recent correspondence between the complainant in-house legal advisor and the Executive Director of the Stanford Law School Centre for the Internet and Society.
A letter from a member of the complainant legal department argues that: his employer's registered trade marks and copyrights had been infringed and that it had been induced to supply its packaging by a representation that such packaging would be used for wrapping parcels.

The law school's website shows that the complainant had caused the young man's website to be removed from the internet by a notice under the US federal Digital Millennium Copyright Act. He seems to have consulted Stanford Law School which made representations that resulted in the site's restoration. It appears from the last paragraph of the complainant letter that the complainant alleged trade mark infringement and conversion which falls outside the scope of that Act. It was conceded that that notice had been misconceived.

Could anything like this happen here? Having practised IP in the North of England for the last 20 years I would have to say that it probably could. People can be just as cussed on this side of the Atlantic as they can over there. Indeed, a large company might actually have a better chance of intimidating its opponent because costs (lawyers' fees) follow the event in this country while an award of attorneys' fees is exceptional in the USA. The young man would probably have been entitled to legal aid up to April 2000 but that entitlement was abolished by Sched. 2 to the Access to Justice Act 1999. This is where law schools like Stanford perform a valuable public service. We have FRU here. BPP law school has a pro bono scheme. But we could certainly learn something from the Americans in this regard.

However, were someone in the furniture maker's shoes to hold his nerve, it is hard to see how any of the complainant's arguments would succeed here. None of the first 3 sub-sections of s.10 of the Trade Marks Act 1994 applies. Even if copyright can subsist in "packaging" (as opposed to artwork for packaging) there has been no reproduction. An attempt to re-assert title to the packaging on grounds of misrepresentation or breach of a provision of the standard conditions would not be entertained for a moment. The best case I could think of would be in passing off. Even there, the complainant would probably struggle.

One important difference between our law and that of the Americans' is that we have threats actions and they do not. At least one American company, Prince Sports, learned about s.21 of the Trade Marks Act 1994 the hard way. I've done my bit to bring threats actions to the attention of Americans in my article "Consider the Implications of Foreign Laws Before Sending a Cease and Desist Letter" which appears on a US colleague's website.




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