24 May, 2016

I Looked it Up - Original Research Not Protected by Copyright in Canada

Research is incredibly labor intensive, and can take great leaps to achieve a given result (whether intended or not) or to argue a specific line of thinking. This expended effort into creating a work of merit or intrigue can be something that many would want to defend and benefit from, while preventing others from doing the same without putting in the very same work. With that being said, would one therefore be able to protect their research through copyright? This question was answered by the Federal Court of Canada in early May.

The case of Judy Maltz and others v Jennifer Witterick and Penguin Canada Books Inc. dealt with the documentary "No. 4 Street of Our Lady", which delved into the life of Francizska Halamajowa and her daughter Helena, who lived in Polan during World War 2 during the country's occupation by the Germans. During this time Ms. Halamajowa hid three Jewish families from the Nazis for nearly two years, as well as some German soldiers who deserted the Nazi army towards the war's end. The documentary was produced and directed by the claimant (along with her co-claimants), Ms. Maltz, who used her Moshe Maltz's, her grandfather's, diary for the factual background of the work. Jennifer Witterick, the defendant, after learning about the story of Ms. Halamajowa, wrote a book about her (although in a fictional context, incorporating some facts from the documentary in the book) titled "My Mother’s Secret". Ms. Maltz subsequently took the parties to court, asserting copyright infringement in her work.

The Court faced the questions of whether the work is protected by copyright, whether Ms. Maltz's moral rights had been infringed, and if she could claim damages for the same.

An interesting submission by the claimant is the use of 'small facts' versus 'big facts'. This distinction is made on the basis that big facts, such as World War 2 as a whole or other associated major events, cannot be protected by copyright, but the use of small facts, pertaining to very specific, possibly niche or unknown events, would be protectable through copyright.

Justice Boswell, handing down the judgment of the Court, first dealt with the copyright protection of the work. He acknowledged that (which stood undisputed by either parties) that the documentary was indeed a protected work, and Ms. Maltz would have rights to assert against any substantial copying of that work. He further affirmed, as has been accepted since the judgment in CCH (discussed more here on this very blog) that 'sweat of the brow' (work and effort, in other words) is not protected, but a proper exercise of skill and judgment in the creation of any given work. Similarly, this does not extend to mere facts.

Bill just never knew when to stop asking questions
Justice Boswell saw that "Mrs. Halamajowa’s story is not in and of itself covered by the Applicants’ copyright in the Documentary. The factual details of her story are also not covered by the Applicants’ copyright. It is not the story that the Applicants’ copyright protects but, rather, the Applicants’ specific expression of it through the exercise of their skill and judgment". As has been firmly established in copyright, it extends to the expression of ideas and not those ideas alone. Justice Boswell also handidly rejected the claimant's argument in 'small' or 'big' facts, as determined that "[c]opyright law recognizes no such difference or distinction. Facts are facts; and no one owns copyright in them no matter what their relative size or significance". The use of the facts from the documentary therefore would not infringe copyright. Arguably, this makes perfect sense, since facts are always facts, irrespective of their size or notoriety. Allowing for the protection of 'small' or even lesser known facts would create an area where the law would be at odds with itself, and the interpretation of Justice Boswell makes sense in preventing this issue.

The judge then turned to the matter of whether the work had been copied substantially. He emphasised that this would not include any facts presented in the documentary, but only the expression of those facts (as mentioned above). Justice Boswell concluded that there was very little verbatim copying from the book in the documentary, and its impact on the documentary's value would be minimal, or even non-existent, as the documentary's popularity had already been on the wane before the book's publication. He ultimately deemed the works to be wholly different in their expression, and although share the same story, would be separate, protectable works in their own right.

Finally, Justice Boswell addressed the issue of moral rights, and whether the book had infringed on those rights after its publication, which he deemed to be not infringed, due to no evidence existing that supported this notion. He dismissed the claim and awarded no damages to Ms. Maltz as neither her copyright or moral rights had been infringed.

Although the case is a very straightforward application of the law, it still presents an interesting notion on nuanced research or factual knowledge. While being able to present a niche argument, or a very little known story, can be a valuable asset, factual subject matter should not be protected through copyright, which would impede on the dissemination of freely available factual information by those who desire to create a different work entirely. Justice Boswell's judgment is a common sense one, but this writer enjoyed the mental exercise put forth by Ms. Maltz in her case.

Source: The Globe and Mail

16 May, 2016

Hidden Benefit - Use of Trademarks as Google AdWords Allowed in Australia

There are many aspects of the Internet that most of its users are blissfully unaware of, including mountains of code and infrastructure that goes unseen. This is important, since seeing every aspect of a web browsing experience would cause information to be muddled and hard to digest, if not impossible to handle properly, so this 'invisible' network is necessary for the modern experience. Even so, the hidden layers of the Internet could be used for nefarious purposes, or possibly to try and take advantage of the goodwill of businesses or their trademarks, which puts it in a position of some scrutiny. While this blog has discussed metatags before (in a Canadian context), a similar question arose yet again, only this time all the way across the world in Australia.

The case of Veda Advantage Limited v Malouf Group Enterprises Pty Limited dealt with Veda, who are a big credit reporting organization in Australia. Among providing consumer credit reports, they also offer a credit repair service, expunging incorrect or otherwise erroneous listing on a consumer's credit report, therefore improving their credit score (although Veda do not do this proactively, only responding to customer's notices on this information). Malouf Group offer a similar service, although liaising with Veda on their customers behalf (in the process acquiring a copy of their report from them). Veda are also in possession of several registered trademarks over its name, or variants of it, including VEDA, VEDA ADVANTAGE and VEDACHECK. In advertising their business online, Malouf used the name Veda in 86 Google AdWords keywords, which were targeted at those wanting to contact Veda and would be directed to Malouf's services. They were subsequently sued by Veda for trademark infringement for their use of the name (or its variants) in their Google AdWords campaigns, potentially contravening section 120 of the Australia Trade Marks Act 1995.

Under the section above a trademark is infringed when a sign is "...use[d] as a trade mark... that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered". The key questions therefore are whether the name "Veda" was used 'as a trade mark' and whether this was done 'in relation to services' that the marks were registered for.

Judge Katzmann, handing down the Federal Court's judgment, first dealt with the issue of whether the name Veda was used as a trade mark by Malouf in their use of it in their Google AdWords advertising. The use would have to be "...as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods". This has to be done objectively, including taking into account the nature and purpose of the use.

Google AdWords can be questionable at times
She rejected the notion that Malouf were using the signs as trademarks, as, in her mind, the selection of marks used in the Google AdWords platform does not create a connection with the services of the marks' owner, but act as a way to direct possibly interested parties to your own services. They can equally be acquired by any business, including Malouf's competitors, which would add further links in the search results. The marks are also invisible to the user, who will not see them outside of the results and their search query itself.  The invisible nature of the marks would not create an impression on the user that that specific word is what brought up the results, and therefore would not confuse them as to their indication of origin. She distinguished Google AdWords from metatags, which function differently and are possibly visible to the user (although, this writer will contest that many will ever see them), being therefore used as a trademark in the context of the Act. She concluded that "...the use of a sign which is invisible to the consumer is [not] use as a trade mark within the meaning of the Trade Marks Act".

Judge Katzmann then moved onto discussing the marks' use in the sponsored links that appear at the top of results when a keyword or words are searched. What is worth also noting is the use of the name Veda (and other words) in custom headings that appear within these sponsored results. Judge Katzmann saw that in the majority of the instances (all but one) the use of Veda was not a use as a trademark. In her view the use was to "...describe the object to which its services are directed — fixing, cleaning or repairing Veda credit files or reports — not as a badge of the origin of its business and therefore not as a trade mark". To put this into slightly different terms, this meant that the mark was used merely to describe a specific service, and not as an indication that it originated from Veda.

The final point in relation to infringement was whether the marks were used in relation to services in respect of which the trade marks were registered. As the marks were registered for several different classes they encompassed a wide array of services, including consultation, advice and analysis in relation to financial services (with plain financial services not being offered by Malouf). Judge Katzmann rejected Malouf's assertion, and accepted that the marks were used in relation to the services they were registered for, even if the services offered by Malouf were not identical to Veda's. After a very brief discussion, Malouf was also deemed not to have a defence under section 122 of the Act through a use in good faith. In the end Judge Katzmann saw that Malouf only infringed the marks in respect of two search queries (specifically "The Veda Report Centre" and "The Veda-Report Centre"), with the rest deemed not to infringe under the Act.

What was curious in the case is the discussion surrounding the European or UK position in relation to this type of meta-information and infringement of trademarks. Judge Katzmann distinguished both Google France SARL v Louis Vuitton Malletier SA and Interflora Inc and Anor v Marks & Spencer, determining that the wording used in the EU legislation was not an equivalent to the Australian wording, especially with the difference in 'using in the course of trade' (per Article 5 of the first Trade Mark Directive) and 'used as a trademark' under section 120 of the Australian Act. In her view, the use would have to be, contrary to the aforementioned judgments, as a 'badge of origin' and not merely in the course of trade (whether used as a badge or not). The invisibility of the use seems to be key here in an Australian context, whereas in Europe this seems to be mostly irrelevant under previous considerations.

The case also dealt with competition issues under the Australian Consumer Law, and Judge Katzmann deemed that the provisions were only contravened under the above two search queries for which the marks were also infringed.

All in all the case is very interesting, and provides some valuable insight into the nuanced world of the Internet and its hidden facets. Australian law seems to diverge, at least for now, from its cousins in Europe and the UK, and this judgment strongly cements it as such.

Source: K&W IP Whiteboard

05 May, 2016

It's Better than That! - CJEU Allows Compensation for Moral Prejudice for IP Infringement

As many people can imagine, the soul of an artist can be a fragile one, and uses of their works (in what ever particular way they are used in a derivative sense) can be a sensitive topic. Even so, especially in an era where technology has enabled us to use material as we please in a myriad of ways, these uses can be objectionable if used for a contrary purpose or otherwise smear the reputation of the work or the author themselves. Although fair dealing/fair use do allow for some uses of works without infringing them, in the event that the use does infringe, can the owner of the work possibly sue for more than just damages, but also for compensation for moral prejudice? The CJEU set out to answer this question in March this year.

The case of Christian Liffers v Producciones Mandarina SL and Mediaset EspaƱa ComunicaciĆ³n SA dealt with Christian Liffers' movie "Dos patrias, Cuba y la noche" (Two Homelands: Cuba and the Night), which he directed, wrote and produced, discussing six intimate stories about homosexual or transsexual individuals living in Cuba. Mandarina, one of the defendants in the case, produced a documentary on child prostitution in Cuba, utilizing hidden cameras to film candid footage of criminal activity around the topic. Some parts of Mr. Liffers' movie were included in the Mandarina production without any authorization being sought from him to use the material. He subsequently sued the production company and the TV channel for copyright infringement.

Mr. Liffers' action succeeded partially at first instance in Spain, seeking damages for both lost licensing fees (had he done so voluntarily for the purposes of the documentary) and for moral prejudice suffered as a result. On appeal damages were reduced, with payments for moral prejudice being excluded entirely. The Supreme Court of Spain, upon further appeal, referred the matter to the CJEU on the question of damages for moral prejudice under Article 13(1) of the Enforcement Directive.

Moral prejudice is very relative, and painful (Source: SMBC)
The Court summarized the question asked by the Supreme Court concisely: "...whether Article 13(1) of [the] Directive... must be interpreted as not permitting a person injured by an intellectual property infringement, who claims compensation for the material damage suffered as calculated, in accordance with heading (b) of the second subparagraph of Article 13(1) of that directive, on the basis of hypothetical royalties, also to claim compensation for his moral prejudice as provided for under heading (a) of the second subparagraph of Article 13(1) of that directive".

The Court first considered subsection b (which allows for the payment of a lump sum of damages, for, e.g. royalties or other fees due to the owner), and saw that the wording does not exclude the possibility of including other harm as a part of the damages awarded, even if not expressly mentioned. This would, in certain instances, include moral prejudice suffered. However, it has to be "...appropriate to the actual prejudice suffered... as a result of the infringement" (including damage to the reputation of the work, as set out by the Advocate General in his opinion).

They then moved onto subsection a (expressly setting out criteria to consider when affording damages, including moral prejudice), and determined that "In the light of the objectives of [the] Directive... [subsection a] of that directive must be interpreted as establishing the principle that the calculation of the amount of damages to be paid to the holder of the intellectual property right must seek to ensure that the latter is compensated in full for the ‘actual prejudice suffered’ by him, which also includes any moral prejudice". This would, by this writer's assessment, be proved through evidence adduced of actual prejudice, and without such would be difficult to attain, as this would not necessarily qualify as 'actual prejudice'.

What the Court sets is a double-whammy of damages, as one can claim for a lump sum under subsection b for lost royalties and fees (and other factors deemed relevant), and also moral prejudice under subsection a, provided it is actual prejudice.

This is slightly different to the position in the UK, where, according to the decision in Henderson v All Around the World Recordings Ltd, damages for moral prejudice can only be afforded in limited circumstances, where financial loss is minimal (or was not suffered at all), or if the damages would otherwise not be proportionate to the actual damage suffered. The UK position would clearly have to change in subsequent case law to reflect the CJEU's decision.

All in all the case is a peculiar one, and arms IP enforcers with the possibility of claiming for moral prejudice irrespective of the financial damage suffered (provided there is actual prejudice suffered through the copying of the work). This writer sees this as a common sense approach, since financial loss does not in itself encapsulate all possible losses suffered, with future losses possibly suffered through the prejudice to the work or its reputation. The decision will potentially act as a deterrent against those who seek to (wrongfully) exploit works and/or attack their reputation.

Source: IPKat

26 April, 2016

Links A-OK - Hyperlinking to Infringing Material Online is OK, Says AG Wathelet

Since the CJEU's decision in Svensson the fate of hyperlinking in a European context has been up in the air, especially when it comes to copyright infringing materials and directly linking to that content. This is an incredibly important issue, and one that might have ramifications beyond our wildest imaginations, leading to great issues to how the Internet operates in today's world. While the CJEU deliberates its decision in the matter, Advocate General Wathelet provided us with a preview on the potential swing of the CJEU's vote in an opinion that was awaited by many.

The case of GS Media BV v Sanoma Media Netherlands BV dealt with the sharing of images online, specifically linking to images that have been deemed to infringe copyright. Sanoma Media, the publisher of the famous magazine Playboy, had commissioned a photographer to take photos for the magazine of Britt Dekker, a Dutch TV personality. Prior to their publication in Playboy the photos were leaked, and found their way onto an Australian file data storing website Filefactory. These images were then published on the website of a Dutch tabloid magazine, GeenStijl, who linked directly to the photos' location on Filefactory (where they could be downloaded as a zip file). Despite Sanoma's demands to do so, GeenStijl refused to remove the link to the website, although they were eventually removed from Filefactory. After pursuing GS Media through the courts, GeenStijl repeatedly posted new links to the photos in subsequent articles about the litigation, and the matter eventually ended up for the CJEU to decide.

The questions referred to the CJEU essentially dealt with whether the sharing of a hyperlink on another website containing infringing materials would be a 'communication to the public' under the InfoSec Directive.

In his opinion, AG Wathelet summarized the first question asked from the court as "...whether Article 3(1) of [the] Directive... must be interpreted as meaning that the provision on a website of a hyperlink to another website operated by a third party, which is accessible to the general internet public and on which works protected by copyright are made available to the public, without the authorisation of the copyright holder constitutes an act of communication to the public". Additionally, the Advocate General had to give an opinion on whether this question would be impacted by knowledge on part of the sharing party as to the lack of consent to share the content, and whether the previous publication of the work (or lack thereof) is of any relevance.

What remained a point of contention in the case is the findings in both the Svensson and BestWater cases, which the Advocate General first addressed. What both of the cases ultimately boiled down to was that the provision of hyperlinks to works that are freely available would not amount to a 'communication to the public', and therefore escapes infringement. Authorization of the initial publication was never an issue (although not approved in BestWater), or seemed to affect both decisions according to his opinion.

Ultimately, the Advocate General looked at the two criteria set out to establish a communication to a public, meaning looking at whether there has been 'an act of communication', and that it has been done to a 'public' (or a new public, considering Svensson).

Some links can lead to unsavory results
In answering the first criterion, the Advocate General took the position that the provision of a hyperlink to another website containing infringing works would not be an act communication, explaining that: "Although it is true that hyperlinks posted on a website make it much easier to find other websites and protected works available on those websites and therefore afford users of the first site quicker, direct access to those works, I consider that hyperlinks which lead, even directly, to protected works do not ‘make available’ those works to a public where the works are already freely accessible on another website, but merely facilitate the finding of those works". The Advocate General therefore distinguishes between the provision of the materials, and the finding or accessing of those materials, even if they infringe or not. What seems important in his opinion is the initial provision of the works, and not their subsequent sharing even via hyperlinks. He further iterated this position through the decision in Football Association Premier League and Others, where the intervention of the materials (and their subsequent provision for the first time as infringing copies) was key, which a hyperlink would not do, as it does merely facilitate an already available work. He concluded that "...in order to establish an act of communication, the intervention of the ‘hyperlinker’ must be vital or indispensable in order to benefit from or enjoy works". In his opinion GS Media therefore did not communicate the works, as their intervention was not indispensable in order to access the infringing works. He also considered that, as the question was answered in the negative, the question of a lack of authorization (and knowledge thereof) was irrelevant, even through 'nefarious' intentions.

The Advocate General then considered the question of whether the act of communication was done to a 'public'. He outright rejected the applicability of the 'new public' consideration borne in Svensson, deeming it not applicable in this instance (and potentially in other instances as well as a result). This would only be applicable when the work has been authorized, and thus accessed illegally for the benefit of a new public (i.e. from behind a pay-wall). Even if it applied in the event of a lack of authorization, the above intervention considerations would still apply, negating the assessment as the hyperlink would not add to the potential public that already could access the materials. He concluded that question 2 would therefore be answered in the negative.

The Advocate General made general observations as to this issue and the Internet: "...aside from the fact that, in principle, the posting of the hyperlinks in the main proceedings does not, in my view, constitute a ‘communication to the public’... I consider that any other interpretation of that provision would significantly impair the functioning of the Internet and undermine one of the main objectives of [the] Directive... namely the development of the information society in Europe. Such an interpretation could also distort the ‘fair balance of rights and interests between the different categories of rightholders, as well as between the different categories of rightholders and users of protected subject-matter’". He further emphasized the necessity of hyperlinking for the functionality of the Internet, and the lack of ability of Internet users to check sources of materials and whether they were authorized or not. If the posting of hyperlinks were to infringe copyright, users would not post them as readily, which would impede the development of the worldwide web.

The opinion leaves the matter quite open, and departed from the CJEU's previous considerations in Svensson and BestWater. Whether the CJEU follow the Advocate General's opinion remains to be seen, but as he wisely raised in his opinion, hyperlinking is essential to how the Internet works, and a balance has to be struck between the provision of links, but the protection of intellectual property from those seeking to blatantly benefit or even undermine this privilege. This writer will await the CJEU's decision with great intrigue, and hopes they will follow along the lines of the Advocate General.

Source: IPKat 

18 April, 2016

Bowled Away - 8-Second Cricket Clips Infringe Copyright

As a major consumer of North American sports, this writer is very reliant on the provision of highlights for this favorite sports, enabling him to keep on track with the latest developments and just to indulge in great sporting feats. Even highlights, however, are big business, being an important draw for new (and old) viewers to subscribe to TV or on-demand services providing full games in many sports, or just servicing as a vehicle to sell more merchandise through official channels. The emergence of social media has changed this dynamic, allowing for the provision of live highlights or video clips, showcasing sports events as they happen, with or without the blessing of the sporting organizations. With this in mind, would short clips of sports activities constitute copyright infringement or would app creators be allowed to let their users share these moments as they please?

The case of England And Wales Cricket Board Ltd v Tixdaq Ltd dealt with an app called Fanatix, which, among providing sports news, allowed for its users to record clips (up to 8 seconds long) using their smartphones or tablets, and sharing them with like-minded sports fans who might not be able to follow the action live (encapsulating mostly the 'highlights' of an event). The clips could be viewed through the app or on Fanatix's social media pages. The England and Wales Cricket Board own the rights to broadcast all video on cricket matches played in England and Wales, and upon noticing clips of cricket games broadcast via the Fanatix app, took its owner Tixdaq to court for copyright infringement.

Tixdaq argued that their use of the works was within the remit of fair dealing, specifically for the purposes of reporting current events under section 30 of the Copyright, Designs and Patents Act 1988. As such, the substantiality of the copying needed to be assessed, including for the purposes of infringement. Justice Arnold considered both parties' submissions, and saw that substantiality is to be assessed considering "...elements which reflect the rationale for protecting broadcasts and first fixations, that is to say, the investment made by the broadcaster or producer". One should not confuse this with the requirement of originality in relation to other types of works (as the case concerned broadcasts, not e.g. literary works). He summarized the correct test as the consideration of "...the degree of reproduction both quantitatively and qualitatively, having regard to the extent to which the reproduction exploits the investment made by the broadcaster or producer".

In his early consideration of fair dealing, Justice Arnold noted that any use made for the purposes of reporting current events would have to take into account "...whether the extent of the use is justified by the informatory purpose".

Citizen journalism: the backbone of an informed society
Justice Arnold then moved onto the interpretation of the phrase 'for the purpose of reporting current events'. In his judgment, the phrase should be interpreted objectively, yet liberally, so as to allow for the effective facilitation of free speech. The use, even in the remit of free speech and fair dealing, would still have to be assessed to the extent the material is used is justified by the informatory purpose.

In determining whether the 8-second clips were a substantial amount, Justice Arnold saw that they indeed were, as every clip contained highlights and points of interest, and therefore value. Because of this value the copying would be substantial, even though in a quantitative sense it would not necessarily be.

Finally, Justice Arnold addressed whether the use would fall under fair dealing. He briefly accepted that contemporaneous sporting events could be classed as current events for the purposes of section 30(2), however excluding any possible footage of interviews and punditry (within limits). This can also include 'citizen journalism', under which the use within the app does somewhat fall. Justice Arnold deemed that the use of the material was not reporting of current events under the section, as the video clips posted "...were not used in order to inform the audience about a current event, but presented for consumption because of their intrinsic interest and value". The objective of the app was also purely commercial, and designed to utilize the clips to their fullest in the collection of revenues, rather than as a medium for sincere journalism. The copying of the works therefore infringed the copyright owned by ECB.

The case is very interesting, especially in the context of new age media and 'citizen journalism'. Even though the app's use of the works was clearly nothing but an attempt to benefit from the blatant sharing of clips of cricket games, subsequent changes to the app forced users to 'report' more on the action, clearly being driven towards the use under fair dealing. One can think of other social media outlets, such as Twitter or Vine, where extensive commentary might not be possible, as potential candidates that might fall foul of section 30(2) if taken to court. Nevertheless, the case was a curious one, and a lesson for all aspiring app makers to heed copyright when making their apps.

Source: Technollama

06 April, 2016

A Gleeful End - TV Show 'Glee' Infringes Comedy Venue's Trademark

Whether you are old or young you cannot have escaped the phenomenon that was the TV show Glee, which reached its peak popularity some time just before the turn of the first decade in 2000. The show was a teen drama, encompassing musical elements on top of the usual teen drama fare (very much in the spirit of glee clubs in the days of yore). Even with its upbeat style, the show, or rather its name, has not existed in pure glee, but has faced a prolonged challenge in the UK over its name. With that said, would the show have its last song as "Glee", or were they able to defend their moniker?

The recent decision of Comic Enterprises Ltd v Twentieth Century Fox Film Corporation dealt with a series of comedy clubs in the UK called The Glee Club, existing in Cardiff and Birmingham, among other cities. The owners of the clubs, Comic Enterprises, registered the logos of the clubs as UK trademarks in 2001. The marks incorporated the club's name in a stylized fashion, including a spotlight in the background of the name with each constituent part of it being roughly of equal size. The TV show "Glee" (focussing on the antics of a alee club at a fictional US high school) ran between the years of 2009 and 2015, garnering huge success both in and off the TV format, prompting Comic Enterprises to take them to court for trademark infringement and passing off after the clubs' owner noticed the similarities between the two names.

What the Court of Appeal had to address was whether Fox infringed the registered trade mark under sections 10(2) and 10(3) of the Trade Marks Act 1994, and whether they were guilty of passing off.

Under both sections 10(2) and 10(3), infringement is assessed on the basis of six factors: "(i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor; (iv) it must be of a sign which is identical with or similar to the trade mark; (v) it must be in relation to goods or services which are identical with or similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion". The first four factors were not disputed, as the show was indeed shown in the relevant territory (the UK); the mark was used in the course of trade (a commercial TV show); there was no consent over its use by Comic Enterprises; and the mark was identical with or similar to the registered mark (the Glee Club/Glee).

No room for song and dance after Lord Justice Kitchin's judgment
The final two factors look at whether the use of the mark was for similar or identical goods or services (i.e. is a club the same as a TV show in terms of use), and whether, as a result, there would be a likelihood of confusion between the goods and services. This is a matter of assessing, among other factors, "...their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary". Equally, the two marks have to be compared through the perspective of the average consumer. Without similarity there cannot be infringement, so this is very important.

A big point of contention in the assessment of similarity was the trial judge's 'wrong way round' determination through evidence, or in other words, that the registered mark evoked a connection with the TV show, rather than the other way around (the more typical test for similarity). After discussing all submitted evidence anew, Lord Justice Kitchin determined that the evidence did indeed create a likelihood of confusion, however acknowledging some of it having little probative value. This is an interesting point, as the case clearly accepts 'wrong way round' evidence, and as such this could be used in other cases to prove a likelihood of confusion.

Finally, Lord Justice Kitchin turned to the matter of infringement, due to substantial errors made by the trial judge in their initial judgment. He ultimately found that there was indeed infringement under section 10. The two marks were deemed to be similar, even with the fact that the word "glee" was a common word.  Additionally, the goods and services offered by the two parties were sufficiently similar, although the similarity of a TV show and a club were challenged by the defendant. Lord Justice Kitchin specifically mentioned the context of the marks' use, and even though he accepted that the connection between the two was loose on the face of it, there still was a possible connection, especially with a world tour planned for the TV show incorporating a live element to the mark's use. He ultimately found a likelihood of confusion between the two marks. A potential changing of economic behavior by consumers based on this confusion would also cause detriment to the claimant, especially in the light of a need to change their marketing to further distinguish themselves from the TV show.

He also agreed with the trial judge and dismissed the passing off claim made by the claimant, as a likelihood of confusion is to be distinguished from misrepresentation, which is crucial for a passing off claim. As the defendant's use of the name was not to pretend the TV show was associated with the comedy clubs (although the mark was confusingly similar) and thus was not a misrepresentation.

The case is an interesting one, and shows that 'wrong way round' confusion is a legitimate argument, even though one could consider it unorthodox under the letter of the law. Nevertheless, this writer agreed with Lord Justice Kitchin, and wonders whether the case will see a further appeal, especially because of an outstanding issue on the compatibility of section 41 under EU law (specifically Directive 2008/95/EC). This remains to be seen, but it seems that the show will have to be rebranded in the UK, even after its end some time ago.

Source: IPKat

24 March, 2016

IP Iustitia Turns 3!

Yet another year has passed, and IP Iustitia takes a moment to celebrates its 3rd anniversary! Both the year 2015 and early 2016 have been very eventful in the IP space, and this writer for one does enjoy taking a breather to commemorate this great occasion, if only briefly.

In its inception in early 2013, I never imagined this blog being this popular and drawing in this much interest in the IP community as it has today. Through the blog I have gotten to meet some amazing people (virtually or physically) and to share my meager musings with thousands of people; something which I do not take for granted! It has been a thrilling ride, and one that I aim to keep going for years to come.

As in earlier anniversary editions, here are some details on the blog's current numbers, figures and statistics, should you be interested in knowing what three years of active blogging might entail.

  • The blog has been visited by over 110,000 people from dozens of different countries, with the US, UK and other English speaking countries forming the bulk of the visitors. 
  • The blog's Twitter account, @IPIustitia, has amassed an amazing 767 followers (as of today) over these three short years, including a great deal of retweets, likes and discussion surrounding posted articles.
  • The blog also hosts nearly 200 articles discussing a myriad of topics and cases. Should you find that a topic or case that you would want has not been discussed, please email me at jani.ihalainen(a)gmail.com and suggest it.
  • The blog has over 200 subscribers via its Feedburner RSS service, with more subscribing via other services as well. 

But, as always, the reason why I keep writing these articles is above all else you, the reader. Although the blog's beginnings were mainly as a platform to indulge my own academic curiosity (and still is), the feedback, thoughts and connections I have made through it have been what keeps me writing and sharing my thoughts with you all. Whether you are a loyal reader, or merely a casual passer-by, I wanted to say from the bottom of my heart: Thank you! The IP community is a great one, and I am incredibly proud to be a part of it, and to share this topic with many of you who are truly passionate and incredibly knowledgable about IP.

Please keep sending me your thoughts, questions and feedback via email, and do subscribe to the above services if you do enjoy what IP Iustitia has to offer.

Here's to a great 4th year!