29 April 2006

Trade Marks: Case C-145/05, Levi Strauss & Co. v Casucci SpA

The European Court of Justice has just held that in determining the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, a court must take into account the perception of the public at the time when the allegedly infringing sign began to be used rather than rather than the time the registered mark first began to be used.

This was a reference under art 234 of the Treaty of Rome from the Belgian Cour de Cassation in a trade mark infringement case originally launched by Levi Strauss & Co. against Casucci SpA in the Brussels Commercial Court. The battle was over stitching on the rear pocket of a pair of jeans. The claimant had registered what it called the "seagull" design resembling a lance-corporal stripe's in the British army in Benelux in respect of clothes within class 25 in 1980. Some years later, the defendant marketed jeans with a stitching device on the back pocket which looked rather more like one of the stripes of Sergeant Bilko. The claim failed at first instance and on appeal in part because the court found that a stitching pattern had ceased to be distinctive. On further proceedings in the Court de Cassation the claimant argued that the seagull stitching pattern had been highly distinctive when it was first used and that that the court should disregard similar stitching patterns of other jeans manufacturers.

That argument was enough to persuade the court to refer the following questions to Luxembourg:
"(1) For the purposes of determining the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, in accordance with Article 5 (1) of Directive 89/104, must the court take into account the perception of the public concerned at the time when use was commenced of the mark or similar sign which allegedly infringes the trade mark?
(2) If not, may the court take into account the perception of the public concerned at any time after the commencement of the use complained of? Is the court entitled in particular to take into account the perception of the public concerned at the time it delivers the ruling?
(3) Where, in application of the criterion referred to in the first question, the court finds that the trade mark has been infringed, is it entitled, as a general rule, to order cessation of the infringing use of the sign?
(4) Can the position be different if the claimant's trade mark has lost its distinctive character wholly or in part after commencement of the unlawful use, but solely where that loss is due wholly or in part to an act or omission by the proprietor of that
trade mark?"

The Court's response was as follows:
1. Article 5(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that, in order to determine the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, the national court must take into account the perception of the public concerned at the time when the sign, the use of which infringes that trade mark, began to be used.
2. Where the competent national court finds that the sign in question constituted an infringement of the mark at the time when the sign began to be used, it is for that court to take such measures as prove to be the most appropriate in the light of the circumstances of the case in order to safeguard the proprietor's rights deriving from Article 5(1) of Directive 89/104; such measures may include, in particular, an order to cease us of that sign.
3. It is not appropriate to order cessation of the use of the sign in question if it has been established that the trade mark has lost its distinctive character, in consequence of acts or inactivity of the proprietor, so that it has become a common name within the meaning of Article 12(2) of Directive 89/104, and the trade mark has therefore been revoked."

The message of all that seems to be use it or lose it, but that will be the subject of another post mes chers amis et confreres.

28 April 2006

Copyright: Da Vinci Code Case - absolutely my last mention of this case unless there is an appeal

Yesterday, I mentioned the Hon Mr Justice Peter Smith's secret code (Copyright - The Da Vinci Code: ho ho! 27 Apr 2006). Well now we have the decryption - "Judge's own Da Vinci code cracked" (BBC 28 Apr 2006). His message in "Smithy code" reads "Smithy Code Jackie Fisher who are you Dreadnought." So desu.

I reported yesterday that his lordship remarked that he didn't see why a judgment should not be a matter of fun. Quite so, especially after detailed assessment. But another quotation occurs to me, this time from A P Herbert:

"People must not do things for fun. We are not here for fun. There is no reference to fun in any act of Parliament."

On quite a different point I knew the judge when he was at the Manchester bar and even appeared against him once or twice. I don't recall anybody calling him "Smithy" then. Should I ever find myself in front of him I certainly shan't start now.

27 April 2006

Patent Conventions: Latest List of Members

The EPO has just published in this month's Official Journal an up to date list of contracting parties to every conceivable patent treaty and convention. The treaties covered include:
  • Paris Convention
  • Patent Co-operation Treaty
  • Patent Law Treaty
  • Budapest
  • Vienna Convention on the Law of Treaties
  • World Trade Organization
  • European Patent Convention, Munich Act, London Agreement on art 65 et cetera.

I noted two things. First, HMG is party to a relatively large number of treaties - more than the USA and many EC member states. Secondly, 16 states have now ratified Munich 2000 which means that the EPC will be amended from 31 Dec 2007 at the latest.

Copyright - The Da Vinci Code: ho ho!

According to the BBC website, the Honourable Mr Justice Peter Smith has brought a touch of levity to the Da Vinci Code case - as if that case needed it (see "Copyright: "Da Vinci Code Case" - No Surprises"). His lordship has apparently hidden his own secret code in his judgment:

"Seemingly random italicised letters were included in the 71-page judgement given by Mr Justice Peter Smith, which apparently spell out a message."

The learned judge is quoted as saying:
"I can't discuss the judgement, but I don't see why a judgement should not be a matter of fun."

Quite so! A sense of humour is a very good thing in a judge (see "Dispute Resolution: Judicial Humour from across the Pond"). A pretty good repository of it (proving that the words "American humour" are not quite an oxymoron) is "The Green Bag". I may not agree with Mr Justice Scalia's politics but I do like his wit.

First Attempt and Animated Presentation

I have attempted my first animated online PowerPoint presentation. It consists of the slides and handout of a talk that I gave last week at Leeds Civic Hall on information security law. I have a full report of it in my other blog. I also intend to try some more podcasts over the May day bank holiday. Cave.

26 April 2006

Happy World Intellectual Property Day

Today is world intellectual property day. According to WIPO press release 445 of 24 April 2006, member states decided to designate this day
"to raise awareness of the role of intellectual property in our daily lives, and to celebrate the contribution made by innovators and artists to the development of societies across the globe."

This date was chosen because it is the anniversary of the day on which the WIPO Convention came into force in 1970. WIPO and its member states have celebrated World Intellectual Property Day every year since its inception in 2001.

Because of pressure of work nipc, have not done much to mark this date this year. Last year, we presented a lunch time event to launch the NCC's copyright deposit service and the year before I won a Dyson in the Ideas21 raffle at its do at the Melton Mowbray in Holborn. We shall certainly do something next year. For those who want to know what is happening today around the world there is a list of events on the WIPO website.

Anyway, happy intellectual property day to one and all.

Trade Marks: Relative Grounds Consultation

I attended a presentation by David Morgan of the Patent Office at the Leeds Hilton yesterday as part of the consultation on relative grounds of refusal. Having attended the very popular roadshow on software implemented inventions last year (which would have affected only a small number of people and in the event came to nothing) I expected an even bigger turnout as this proposal almost certainly will come to something and will affect thousands of SME in the North of England.

I couldn't have been more wrong. There were 8 of us in the meeting room. That was, however, one more than they were able to muster for Birmingham on 20 April. The presentation did not add much to the materials on the Patent Office website. Mr Morgan outlined the present practice where the Patent Office does consider relative grounds and the OHIM practice which does not and set out the options. These are all on the consultation page of the Patent Office website. These are essentially variations on keeping the present practice or adopting the EC practice. Two possible refinements to the present practice for dealing with what the Patent Office calls the non-use issue brings and one possible variation from the EC practice brings the total up to 5.

One thing that was pointed out to me yesterday was that a change of the system will probably abolish honest concurrent user in the abvsence of primary legislation to reinstate it. S.7 (3) of the Trade Marks Act 1994 defines "honest concurrent use" as "such use in the United Kingdom, by the applicant or with his consent, as would formerly have amounted to honest concurrent use for the purposes of section 12(2) of the Trade Marks Act 1938." However, that sub-section is subject to s.7 (5) which provides that s.7 does not apply where there is an order in force under s.8. The significance of that provision is that s.8 (1) confers power on the Secretary of State to make an order to provide that a trade mark shall not be refused registration on a ground mentioned in s.5 (relative grounds for refusal) unless objection on that ground is raised in opposition proceedings by the proprietor of the earlier trade mark or other earlier right.

I have forgotten the legislative history of the bill and cannot for the moment recall why we preserved the concept of honest concurrent user in the first place and why we tied its survival to secondary legislation under s.8 but I am sure it is all in Christopher Morcom's book which I shall try to find time to look at when next in chambers.

23 April 2006

Happy St George's Day

In case anybody is interested, today is St George's Day and Shakespeare's birthday. St George is the patron saint of England so today is our national day. Our national flag is St George's cross, that is to say a simple red cross on a white background which became the centre piece of our union flag (see Julian Wiseman "How to draw the Union Jack — accurately").

Australians, New Zealanders, Hawaiians and many other states and territories around the world have incorporated into their own flags. Possibly the licence fees on all those reproductions would make a good little earner for HM Treasury - if, Gordon is reading, I am sure a lot of barristers at the London patent bar would be happy to consider getting them in for you on a CFA.

Anyway getting back to St George I was agreeably surprised to learn from the BBC yesterday that St George - who was part Turkish and part Palestinian - is highly regarded in the Muslim community. Apparently the day will be marked by a style magazine for young upwardly mobile Muslim professionals. The editor said that the saint's origins made him a perfect symbol of modern Britain and in the generous spirit in which the remark was intended I would happily agree.

For most of my life the St George's cross was hardly ever flown. The only time I ever saw it was on Hampton church across the Thames from Molesey Hurst on special festivals. Now we see it everywhere - particularly when there is an important football tournament. I don't like that development for two reasons. First, a red cross was marked on the doors of victims of bubonic plague during the 17th century. Secondly, like our other national emblem the red rose which New Labour has adopted, the red cross has been adopted by other political parties for which I have even less time than I do for New Labour.

When I lived in the USA, I was a bit miffed that 17 March was almost a national holiday there but 1 March, 30 Nov and 23 April were not celebrated at all. The appearance of all those plague crosses everywhere today has persuaded me that things were better as they were.

Brands: Geographical Indications and Community Trade Marks Pages updated

As promised yesterday, I have just updated my Community Trade Marks page to take account of the new Community Trade Mark Regulations 2006 which come into effect on 29 April 2006. I have also updated my Geographical Indications page to take account of two new Council regulations, Council Regulation No 510/2006 and Council Regulation 509/2006.

The new Council regulations replace regulations 2081/92 and 2082/92. Their purpose is to comply with a recent WTO panel decision and introduce specific rules aimed at simplifying relevant registration procedures. An important change is that applications and objections from third countries may now be made directly to the Commission and eliminates the need for reciprocal and equivalent protection.

22 April 2006

New Community Trade Mark and Enforcement Regulations to come into Effect on 29 April 2006

Two new statutory instruments will require practitioners' attention from 29 April 2006:
(1) The Community Trade Mark Regulations 2006 (SI: 2006 No. 1027); and
(2) The Intellectual Property (Enforcement, etc.) Regulations 2006 (SI 2006 No. 1028).

The first of these replace the Community Trade Mark Regulations 1996 (SI 1996/1908) and will require me to update my article on the Community trade mark pretty soon. The new regulations are a bit longer. The main changes so far as I can see are that they accommodate the EC's accession to the Madrid Protocol and the designation of the Manchester, Leeds and other chancery county courts as Community trade mark courts in reg 12 (2) ("ye gods" I hear many metropolitans - and not just metropolitans - sigh).

The enforcmement regulations are much more significant in that they implement the Enforcement Directive (Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ L 157, 30.4.2004)). The big practical changes for us practitioners are:
(1) Reg 3 which makes the following provisions for wilful infringement:
"Where in an action for infringement of an intellectual property right the defendant knew, or had reasonable grounds to know, that he engaged in infringing activity, the damages awarded to the claimant shall be appropriate to the actual prejudice he suffered as a result of the infringement"';
(2) Sched 1 which makes extensive changes to the Registered Designs Act 1949, particularly with regard to remedies; and
(3) Sched 2 which makes various changes to the Patents, Copyright, Designs and Patents and Trade Marks Acts.
Many of the changes affect Scotland which my old china Richard Aird will no doubt gladly discuss ........ for a fee (he is Scottish after all).

Euro Defences: Sportswear appeal allowed

In my post of 6 Oct 2005 "Euro Defences: Another one bites the Dust", I noted Mr Justice Warren's decision in Sportswear Company Spa and another v Ghattaura [2005] EWHC 2087 (Ch) (3 Oct 2005) in which the judge struck out a Euro defence. The defendants appealed that decision and I must now report that the Court of Appeal has allowed the appeal (see Sportswear SpA and another v Stonestyle Ltd [2006] EWCA Civ 380 (11 April 2006).

As I have already set out the issues in my earlier post, it is enough for me to summarize the reasoning of the Court of Appeal. Lord Justice Lloyd said at paragraph [71]:
"it seems to me that the judge was wrong to conclude that the defence was bound to fail, on the basis that there was no arguable case of an adequate nexus between the anti-competitive agreement alleged, on the one hand, and the issue whether the Respondents have legitimate reasons to oppose further distribution."
Lord Justices Longmore and Waller agreed. The tragedy of this case was that it was due to come on for trial in May. Reinstating the deleted paragraphs will require more evidence at greater cost. The Lord Justices were very careful to stress that the issue was not whether the point would succeed but whether it was doomed to fail. It may therefore be irrelevant to the eventual outcome. However there was more at stake in the appeal than that particular Euro defence. Someone else may make something of the point in another action.

21 April 2006

What I have been doing over the Last Two Weeks

In case anyone has been wondering why I have not added anything to the blog since 8 April 2006 it is because I have been working on my chambers website. I have added a lot of new material and integrated it with the IP/IT Update, Huddersfield Intellectual Property and Huddersfield, Liverpool and Sheffield Inventors' sites. It is less a vanity site (if indeed it ever was) and more of a portal to a range of resources in intellectual property aimed primarily at SME and their professional advisors in Northern England and North Wales.

Two new sub-webs which took most of the time is the indexing and uploading of many of the slides and notes of the presentations and also many of the newsletters, guidance notes and other publications that these chambers have published since 1996. Presentations are indexed by date, speaker and topic and publications by date and type. It is amazing how much we have done over the last 9 years and we have left out most of the Y2K, EMU and Woolf stuff.

Since a set of chambers is not a corporate entity but a collection of individual service providers I have linked through to individual members' sites. I have also put links to useful services offered by other people such as inventors clubs, patent libraries, patent clinics and IPCEX. I am toying with the idea of panels of recommended solicitors and patent and trade mark agents but have decided against it for the time being for marketing reasons. The people who get my referrals know who they are. The only exception is that I have a link to Toni Tease who has a similar practice to mine in a small town in Montana and I recommend her without hesitation because she offers very good service. I will probably add other US and foreign lawyers and patent agents later. I have also featured some of our special services such as ADR and Arbitration, domain name dispute resolution and training as well as our popular supervising solicitors panel and forthcoming events pages.

In case folk get lost we have a navigation page which is accessible from most parts of the site. Our phone number and Skype links are everywhere. For the future, I am still experimenting with podcasting and avatars and I will try that out with one of my presentations later.

08 April 2006

Copyright: "Da Vinci Code Case" - No Surprises

Having been called by a TV station from Seattle at the start of this trial because a local journalist believed that one of us was in it, we could hardly ignore Baigent and Another v The Random House Group Ltd [2006] EWHC 719 (Ch) (7 April 2006). Had the claimants succeeded the case would have been sensational. In the event, Mr Justice Peter Smith's judgment reached what was probably the right answer though he made somewhat heavy weather of it on the way.

The basic issue is summarized conveniently at para 140 of his judgment:
"the claim is for infringement of copyright in a literary work HBHG ["The Holy Blood and The Holy Grail"] by the writing of another literary work DVC ["The Da Vinci Code"]. The claim is about applying existing established principles of UK copyright law to the facts as they have emerged. The claim is of non-textual infringement in literary work. It is conceded that such a claim is unusual and because of its nature presents a greater difficulty of analysis than a textual infringement claim."

Non-literal copying cases may be rare in literature but not in other areas of copyright. They have been particularly common in software over the last 20 years ever since the Third Circuit's landmark decision in Whelan v Jaslow 797 F.2d 1222. Probably the classic case in English law (at least for balletomanes) is Massine v De Basil (1938) 173 Macg Cop Case.

While the judgment itself came as no surprise to most people, the the judge approach was laboured, to say the least. He allowed himself to become ensnared in the so-called ideas expression dichotomy. As Sir Hugh Laddie, Michael Prescott and Mary Vitoria once rather controversially put in (para 2.73 of the 2nd edition of "The Modern Law Of Copyright"), the simple proposition that there is no copyright in an idea as such "has frequently been stated in a more extreme form that there is no copyright in ideas and information but only in the form in which they are expressed." The authors added that like all pithy catchphrases, this is liable to lead to confusion that copyright law protects form - language for instance - but never substantive content. Alas, Sir Peter became ensnared in the confusion though in that trap he kept very good company (see Judge Learned Hand's judgment in Nichols v. Universal Pictures Corporation et al.(1930) 45 F.2d 119).

Copyright is essentially about conduct. A copyright is infringed by copying not by similarity. Similarity may evidence copying but making a work similar to the copyright work otherwise than by copying is perfectly permissible. If there was any nexus between the copyright work and the putative copy there is an infringement and it matters not whether the thing that is taken is a line of text, a plot or a character. Copying is established by showing objective similarity between the copyright work and putative copy and an opportunity to copy (see Francis, Day & Hunter v Bron [1963] Ch 587). If the defendant can show a reason for the objective similarity such as functional exigency (e.g. there is only one way to express the thought) or derivation from a common source he can exonerate himself but, otherwise, he is presumed on the balance of probabilities to have infringed.

I have not yet had an opportunity to read either Holy Blood and Holy Grail or the Da Vinci Code (though summer holidays are approaching) but from what I can fathom from the evidence mentioned by the judge, there was simply not enough to shift the tactical burden of proof. The tragedy is that the judge didn't actually say so. If there is ever an appeal from that judgment, that will be the reason why.

05 April 2006

Patents: Miles Rees's Talk Uploaded

The excellent presentation that Miles Rees of the Patent Office to Sheffield Inventors' Club on Monday has now been uploaded to the Club's website together with a lot of other information including the names and contact details of 8 new service provider members.

Miles didn't get round to make the announcement trailed to him on Saturday. However, it looks as though his management were serious. He complained to me today that he had been asked questions about the Patents Court move to Wales by his senior management and the setting up of a special Intellectual Property Division or Chamber of the new UK Supreme Court on the lines of the proposed IP Chamber to the ECJ should the Community patent ever get off the ground (see "Proposal for a Council Decision conferring jurisdiction on the Court of Justice in disputes relating to the Community patent"). Perhaps we have stumbled on something that is really going to happen.

Remember you read it here first.

Patents: Re Macrossan's Application - Guest Contribution by Simon Hart

Simon Hart
B Com LLB (Uni of Qld)


The decision of Mr Justice Mann in the Macrossan case [2006] EWHC 705 (Ch) handed down on 3rd April 2006, appears to have significant implications for software patenting in the UK.

The case concerned the patentability of an automated method of producing the documents necessary to incorporate a company. The system has been deployed on the internet since May 2003 at www.ukcorporator.co.uk. A Patent Office Hearing Officer had rejected the patent application in March 2005, relying on all three of the commonly raised exclusions in the context of software patents, namely,
- the mental act exclusion,
- the computer program exclusion and
- the business method exclusion.
Mr Macrossan sought to counter all three exclusions and also raised an allegation of ‘apprehended bias’ against the Patent Office Hearing Officer. The bias allegation was based upon an alleged secret submission made to the Hearing Officer by the Patent Office examiner and was also based upon a Patent Office internet publication (still appearing at http://www.patent.gov.uk/about/ippd/issues/softpat.pdf ). The internet publication refers to the Patent Office’s “ … strong tradition of rejecting patent applications for software … “ and goes on to say that “… this tough approach has ensured that only patents with a ‘high presumption of validity’ are granted.”

The Court ruled against Mr Macrossan on two of the three exclusions and also on the bias point. Interestingly however, the Court ruled in Mr Macrossan’s favour on the ‘business method’ exclusion point. The Patent Office has, for years, been relying on the business method exclusion to assist it in denying all manner of patent applications, for example –· a method for facilitating online payment transactions between participants in a network based transaction facility (eBay case BL O/314/04), an automated food ordering system for cafeterias (Fujitsu case Applic. No. 9912296.2), a web-based on-line user interface for enabling a customer to custom configure a computer system (Dell USA’s case),· an automated reminder and actioning system for use in a patent attorney’s office (Venner case BL O/106/04), and· an automated system for machine translation of a foreign language communication (Wordlingo case BL O/110/04).

But the Court in Macrossan’s case accepted Mr Macrossan’s argument that the business method exclusion does not apply to ‘partial methods’ of doing business. Mr Macrossan argued that the business method exclusion was directed to entire methods of doing business, such as a method of running a particular franchise business. He drew a parallel with the telephone, submitting that a telephone, assuming for the argument that it was a new invention, would hardly be excluded from patentability merely because it may be used in business. It is merely a ‘tool’ for use in business, rather than an entire business method. The Court accepted these arguments and ruled against the Patent Office on this point.

The bias point has rarely, if ever, been considered previously in the context of a Patent Office Hearing and unfortunately the judgment only partly clarifies the law on this point. Mr Justice Mann at one point said
“ … I do not consider that the full bias rule, as such, applies to a hearing of this nature.”

It is apparent from this remark that His Lordship thought the rule has at least some application, but unfortunately His Lordship did not elaborate. In the final analysis, the Court found that the rule against apprehended bias did not assist Mr Macrossan on the facts of the case. One is left wondering as to the precise scope of rule’s operation, as the case for apprehended bias in the Macrossan case seemed quite strong.

Note - This contribution came in the form of a comment to an earlier post. I thought it was so good that it ought to be displayed more prominently. Simon, thanks very much and if you can supply me with your email address I should be glad to invite your as a permanent contributor. John Lambert

04 April 2006

Search Orders: Rothwell joins Supervising Solicitors Panel

Charles Rothwell of Ramsdens has joined the nipc Supervising Solicitor Panel. He had previously been on the Panel when he was at Keeble Hawson and we have worked very well together both as client and counsel and counsel and supervising solicitor on several occasions. It is good to see him back. Charles has also agreed to support Huddersfield Intellectual Property Forum and the Huddersfield Inventors Club and his firm is now listed on that website.

Ramsdens is a very long established local firm. Indeed, Charles tells me that one of its forebears is the Ramsden in the famous case of Ramsden v Dyson (1866) LR 1 HL 129.

Charles has re-joined the panel at an opportunity time for, as we say in one of our latest guidance notes "Search Orders are Back in Style",

Freedom of Information Act 2000: Tracey and Hasan's Presentations

About a year ago there was much discussion on IPR Talk about the Freedom of Information Act 2000. Several contributors feared that public funding bodies and even the Patent Office might make patent applications and related documents available to persons seeking information under the Act. When Assistant Information Commissioner Gerrard Tracey and Ibrahim Hasan gave their presentations to the IP Centre of Excellence for the North on "Lessons learned from the First Year of the FOI" and "Freedom of Information 15 Months on" in Manchester on 30 March 2006 I put that question to the speakers. Both believed that such information fell within the commercial interests exception under s.43 (1) and that other exemptions might apply such as future publication under s.22.

This is not the only aspect of the Freedom of Information Act 2000 that concerns IP lawyers. There is a broad interface with data protection and confidentiality which affects computer contracts and electronic commerce. This is an area that anyone drafting software licences, terms and conditions of trade and other agreements must keep constantly under review. Despite the Court of Appeal's decision in Durant v Financial Services Authority [2003] EWCA Civ 1746 (8 Dec 2003) it is by no means safe to suppose that the combined effects of the Freedom of Information Act 2000 and the Data Protection Act 1998 can have no impact on disclosure in civil litigation.

03 April 2006

Sheffield Inventors Club: Miles Rees to Speak

Today at 6 pm at Sheffield Central Library, Miles Rees, Business Development Manager, Awareness, Information & Media at The Patent Office will cast his pearls of wisdom. One announcement of his has already been trailed in Saturday's edition of this blog. Come along to listen to what else the great man has to say. Be there!

Copyright: Incidental Inclusion" Exception Case Note Updated and Transposed

To ease myself into the idea of earning my living again after a super weekend in Edinburgh, I have updated and transposed a case cote on Football Association Premier League Ltd and others v Panini UK Ltd [2003] EWCA Civ 995 which I wrote when the case was first reported.

The significance of the case is that it considers the meaning of the words "incidental inclusion" in s.31 (1) of the Copyright Designs and Patents Act 1988. The section provides:
"Copyright in a work is not infringed by its incidental inclusion in an artistic work, sound recording, film or broadcast."

It is of obvious importance to podcasters, webmasters, broadcasters, publishers and just about everybody else using electronic media. The issue in this case was whether a picture of famous footballers in their games kit which necessarily included their club crests or logos infringed the artistic copyright and indeed other IPR such as trade marks in those insignia. In the note, I suggested parallels between the concept of incidental inclusion and substantiality.

Scotland: First Site of Scottish Parliament

My wife and I visited Edinburgh this weekend. There were roadworks everywhere one of which closed the Royal Mile just outside St Giles' cathedral. As we approached the centre looking for our hotel, the resulting deviation combination drove us down the Mound and along the railway tracks to the Canongate. At the foot of the Canongate where we had expected to find the Scottish & Newcastle brewery we found a massive concrete structure with bamboo sticks everywhere. "Good Lord!" What on earth is THAT?" exclaimed my wife. "No idea!" said I "but my guess is that it is the new Scottish Parliament". We decided to investigate it in the morning and that is exactly what it turned out to be.

I have to say that I was very pleasantly surprised. For a start it is open to the public on Sundays. There is a cafe and gift shop selling such well known Caledonian delicacies as cabernet sauvigon (imported from Chile) and latte (brewed on the spot). There always were a lot of Italians in Scotland. I've never had a better ice cream than Jannetta's of St Andrews even in Italy though the Grande Cascade in the Bois de Boulogne runs it close. The debating chamber was closed to the public but I was able to peep into a couple of the committee rooms and was impressed by the wide screen monitors and other technology available. Above all, the parliamentary staff were friendly and welcoming.

Not being a Scot I am not going to comment on the expense. My wife thinks we have helped to pay for it but I am not sure that she is right but, even if we have, I would not resent it. The openness and informality are things that I would like to see transposed to the Palace of Westminster. I didn't have time this trip for a guided tour but I am certainly up for one next time.

Copyright: Cross-Border Enforcement

I have updated and transposed some case notes on cross-border jurisdiction and remedies onto the IP/it Update site. Some of them appear to be reported only on my site. These include Pearce v Ove Arup Partnership [1999] EWCA Civ 625 (21 Jan 1999) which confirmed that the English courts had jurisdiction to hear claims for the infirngement of foreign copyrights, the Canadian case NFL Enterprises LP v Sotiros and Peter Restaurant Company Ltd FCT T-2328-95 (1997-02-10) FCA A-103-97 (1998-07-03) on liability for broadcasts and PG Mavros (Private) Ltd. and another v Ponter, an unreported decision of Lawrence Collins as he then was.





02 April 2006

Other Bloggers' Funnies

I have spent the last five minutes looking through the other IP Blogs to find out whether any of my colleagues came up with anything like the legendary Panorama spaghetti harvest yesterday.

IPKat came up with the WIPO's announcement that it is to launch its first unmanned mission into space. According to the post "the programme, run in conjunction with NASA and the WTO, aims to educate extraterrestrials about the importance of strong intellectual property rights as part of an economically viable market economy."

April Balatro of Patent Baristas came up with something even better: "Google to acquire Patent Baristas for $1.3 billion".

01 April 2006

Patents Court to move to Wales

In his wide ranging paper "Doing Law Differently" published yesterday, Lord Falconer, Secretary of State for Constitutional Affairs, wrote:
"In order to sustain our justice system a number of changes are necessary. We need to preserve the aspects of the system that work well and reform those areas that are poorly designed, ineffective or restrictive. Reforms are being taken forward, but in a way that is very different from what has gone before."

One of the reforms commended by the Lord Chancellor is purposeful co-operation between the courts and other public service agencies. In the criminal system he commends the North Liverpool Community Justice Centre which brings together a multi-jurisdictional courtroom that has the sentencing powers of Magistrates’, Youth and Crown Courts, with a range of ‘on-site’ services including victim support and services dealing with drug addiction, debt and housing.

On the civil side, the report continues, there is a similar opportunity for intellectual property. HM Court Service has earmarked a site on the A468 Carerphilly Road for an integrated hearing centre for the Patents Court, Patents County Court and hearing officers for Patent Office and Trade Marks Registry hearings. "This will be an excellent opportunity to bring all the resources of the Patent Office onto one site" enthused Miles Rees, Business Development Manager, Awareness, Information & Media at The Patent Office " I shall be able to give full details at my talk to the Sheffield Inventors Club on Monday."

The new site will also house Intellectual Property Division of the new UK Supreme Court (to be known as "UKID") modelled on the US Court of Appeals for the Federal Circuit which will hear appeals from the Courts of Appeal of England and Wales and Northern Ireland and the Inner House of the Court of Session. There are rumours flying around that one ex-judge who recently retired from the bench to become a consultant to a firm of patent agents has been approached to preside over this new tribunal. No doubt we will learn whether there is any truth in them from Times jounralist Nicola Laver (a normally impeccably accurate source) when her next column appears.

E-Commerce: OFT v Lloyds TSB Bank Plc

The Court of Appeal's decision in the Office of Fair Trading v Lloyds TSB Bank Plc and others [2006] EWCA Civ 268 is likely to have far reaching consequences for the development of e-commerce in the UK and beyond. This was an appeal from the judgment of Mrs Justice Gloster ([2004] EWHC 2600 (Com)) that s.75(1) of the Consumer Credit Act 1974 does not apply to foreign contracts, where the contract between the debtor and the supplier of goods or services was made wholly outside the UK, the contract was governed by a foreign law; and the goods delivered, or the services were supplied, outside the UK. Reversing Mrs Justice Gloster, the Court of Appeal held that the section applies to all transactions using credit cards regulated by the Consumer Credit Act 1974, whether they take place within the UK or elsewhere.

The significance of this judgment is that s.75 (1) of the Consumer Credit Act 1974 provides that if "the debtor under a debtor-creditor-supplier agreement falling within section 12(b) or (c)" - that is to say a cardholder - "has, in relation to a transaction financed by the agreement, any claim against the supplier [that is to say a "merchant"] in respect of a misrepresentation or breach of contract, he shall have a like claim against the creditor, who, with the supplier, shall accordingly be jointly and severally liable to the debtor." Thus, if I use a Barclaycard to buy furniture from a retailer that proves not be of satisfactory quality within the meaning of s.14 (1) of the Sale of Goods Act 1979, I have a complaint against Barclays Bank Plc which as well as against the retailer and as the bank is richer and possibly easier to find than the retailer it is as often as not the first port of call.

Banks can and do protect themselves against that sort of liability by insurance and obtaining indemnities from their merchant customers but what happens when one of their customers uses his or her card in some souk or bazaar or, for that matter website, thousands of kilometres from these shores where there is no equivalent to s.14 of the Sale of Goods Act 1979 and no business relationship between the card issuer and the merchant? When the Consumer Credit Act 1974 was passed there were effectively only two card issuers in the UK, namely "Barclaycard" which was issued by Barclays Bank and "Access" which was issued by all the other clearing banks (see APACS "History of Plastic Cards"). They were not interchangeable and the use of plastic cards abroad was restricted severely by exchange controls.

Electronic fund clearing associations like VISA International (for whom I used to work many years ago as the first UK based legal advisor) and MasterCard International were set up to clear transactions between the merchant customers in one country and card user customers in another. Every bank or national or regional association of banks that joins the VISA or MasterCard schemes has to subscribe to rules that facilitate the acceptance of cards bearing the VISA or, as the case may be, MasterCard trade marks and the clearance of payments made with those cards. These rules provide for charge backs which can impose onerous burdens on retailers.

Had Mrs Justice Gloster's decision been upheld it would have been possible for banks to limit the risk to British based financial institutions. The Court of Appeal's decision increases their exposure to bad debt. The question for retailers and ultimately consumers is how the banks will deal with this increased liability. Even before the Court of Appeal's decision it was difficult for dealer sites to obtain payment card clearing facilities because they are not the supplier of goods or services. This decision may make such services even harder to get. Merchant discounts - that is to say the amount that a bank charges its customer for clearing a payment - may rise and with them the cost of goods and services to consumers.

The Court of Appeal's decision was a logical and reasonable construction of s.75 but since the world has changed greatly since the publication of the Crowther Report (upon which the Consumer Credit Act 1974 was based) it is arguably time to review the fairness and utility of s.75.