30 June, 2016

Goliath v Jury - Google's Use of Java APIs Fair Use, Says Jury

The fight between Google and Oracle over the Java platform, specially the API (Application programming interface) for the program and its copyright protection, has been raging for what feels like aeons. This blog has discussed the Court of Appeals (where Google was found to have infringed the code's copyright protection through verbatim copying into its Android operating system) decision some two years ago, but many have waited for the jury decision in the saga, which was handed down only a month ago.

By way of a short primer for those who have not followed the matter closely, the case dealt with 37 API packages released by Oracle (at the time Sun Microsystems) which pertained to its Java platform. Google sought to implement Java into its budding mobile operating system, Android, but both parties could not agree on a proper licencing arrangement. Nevertheless, Google implemented the APIs into its own platform, Dalvik, which consisted of 160 different APIs (of which 37 were Java APIs). Due their verbatim copying into the Dalvik platform, Oracle took Google to court, asserting copyright infringement.

After the earlier decision in various stages in the US judicial system, Google consistently lost and was deemed to have infringed the copyright in the APIs. The jury in this instance sought to look at whether Google's use amounted to fair use, and thus not infringing the rights in the works. This decision was hugely important, as Google faced damages totalling nearly $10 billion.

Blake couldn't contain himself at the thought of
unlimited, free APIs
Judge Alsup gave extensive instructions to the jury as to their assessment on fair use under US law. The jury decided the matter in three days, reaching a unanimous verdict of a finding of fair use by Google. One could argue against their finding of fair use, with Google's use not being prima facie very transformative (due to the verbatim copying of code); however, building the Android platform using the Java API did change it to something more than just Java. The judge also emphasised the fourth factor, the effect of the copying on the potential market for the work, which, in this writer's mind, could have been the linchpin for the jury's decision. Even though Java is implemented into many systems, it in itself is not an operating system, although its free incorporation into such clearly would impact on its potential market. The jury saw that Google's use was fair, and one can only wonder what persuaded them to reach the conclusion.

Although there is not much to discuss on the substantive side of the case, as is usual in this blog, the decision still is an important development in the world of technology and computer programming. As Google's statement on the win expresses: "Today's verdict that Android makes fair use of Java APIs represents a win for the Android ecosystem, for the Java programming community, and for software developers who rely on open and free programming languages to build innovative consumer products". Arguably, Google does have a point. Java has become night ubiquitous in the computing sphere (although the emergence of HTML5 could, arguably, make it obsolete), and a lack of an ability to use the technology would severely hinder any attempts of building a popular, fleshed-out operating system. On the other side of the coin, this is a blow for reaping from what you've sown, and Oracle has a right to be upset with their loss (and incredibly monetary loss through unacquired licencing fees for the hugely popular Android platform).

Many in the software industry seem to welcome the decision, such as Al Hilwa, who saw that "... most developers would likely prefer not to be burdened by copyrights around APIs". This writer is puzzled with this response, since many programmers might not be so keen to share the fruits of their labor for free. Oracle have indicated that they will appeal the decision, and this writer keenly awaits any new developments in the never-ending story that is Oracle v Google.

Source: BBC News

21 June, 2016

Retrospective - Copyright in Hot News

Information can be very time-sensitive, and that very sensitivity can make it all the more valuable in areas of commerce or activity where quickness is king. The value of stocks can change in an instant, the betting odds of a match adjusted slower than the action allows for and the publication of information can yield a great deal of notoriety and sales for a news outlet or individual using that very information. Although news and facts are not protected by copyright in many jurisdictions, they can still have a great deal of value that might be desired to be protected. Could one therefore protect time-sensitive information? This matter was first addressed by the US Supreme Court in the formative years of the 20th century.

The case of International News Service v Associated Press dealt with two companies in the business of collecting and publishing information through a variety of publications. The Associated Press acted as a gatherer and distributor of news and details on current events to many newspapers within its own member network (over 900 at the time). The cost of International News Service's provision of this news was a substantial sum of $3,5 million per year (over $37 million in today's money), which was assumingly recouped by the members through the exclusive publication of the news and current events in their region. The International News Service similarly distributed details on news and current events to its own network of, at the time, 400 daily newspapers, costing $2 million per year. Although the defendant was deemed to have infringed the Associated Press' rights through bribery and induction of their members to divulge the information to them, the questions that remained were summarized by Justice Pitney: "1. Whether there is any property in news; 2. Whether, if there be property in news collected for the purpose of being published, it survives the instant of its publication in the first newspaper to which it is communicated by the news-gatherer; and 3. Whether defendant's admitted course of conduct in appropriating for commercial use matter taken from bulletins or early editions of Associated Press publications constitutes unfair competition in trade".

Tom was surprised just how hot the news was that day
Justice Putney first discussed whether news could be property, and quickly distinguished between the content of a news article and its specific form and expression. Although articles can possess a literary quality, and potentially be protected by copyright, the content within is a different matter entirely. Justice Putney further clarified this point: "...the news element — the information respecting current events contained in the literary production — is not the creation of the writer, but is a report of matters that ordinarily are publici juris; it is the history of the day", and therefore not necessarily protected by copyright. However, he continued that "The peculiar value of news is in the spreading of it while it is fresh", and thus the distribution of that information between the two companies is imperative, irrespective of the question of copyright.

He determined that the value of the information between the two parties (and by extension, others who might provide the same or similar service) created a property right in the news articles that were distributed: "...news matter, however little susceptible of ownership or dominion in the absolute sense, is stock in trade, to be gathered at the cost of enterprise, organization, skill, labor, and money, and to be distributed and sold to those who will pay money for it, as for any other merchandise... the material out of which both parties are seeking to make profits at the same time and in the same field, we hardly can fail to recognize that for this purpose, and as between them, it must be regarded as quasi property, irrespective of the rights of either as against the public".

Although the Court extended protection over news items as quasi-property, this merely covered the news articles as when there was value in it, meaning at the moment of its sale, distribution or utilization for the benefit of those who spent time, effort and money to gather it. Copyright did not extend to news articles per say, but a different transient property right.

Justice Putney ultimately concluded that International News Services had unlawfully acquired the Associated Press' property, and restricted the publication of news by them appropriated from the Associated Press for a number of hours after its publication, unless proper credit was given.

The current state of 'hot news' and its protection is uncertain, with subsequent cases such as Barclays Capital Inc. v Theflyonthewall.com questioning its existence and/or applicability to factual content. In the UK protecting news would be very difficult, bar an argument through confidentiality (following the case of Exchange Telegraph Co Ltd v Gregory & Co); however, the American position seems to remain an oddity, albeit an interesting one, in the world of IP.

16 June, 2016

Trunki Aftermath - UKIPO Issues Guidance on Design Applications

Since the Supreme Court's decision in Trunki, which this writer somewhat disagreed with, there has been some uncertainty as to the place of designs in the UK, particularly in relation to the question of lack of ornamentation and the illustration of designs in the applications. In the light of this uncertainty, the UK Intellectual Property Office recently sought to give applicants (and their legal advisers) some degree of clarity in this matter.

The UKIPO's note DPN 1/16 ("Guidance on use of representations when filing Registered Design applications") gives guidance on the filing of various illustrations and their implications; something many legal practitioners desperately needed since the above decision. The note is by no means legally binding, but certainly a very persuasive and important document when considering advise being given to potential applicants of registered designs in the UK.

The crux of this issue is the use of more simple designs that aim to protect shape alone, and more intricate ones, which seek to protect the shape and the look and/or ornamentation of the design. The former of the two offers a much wider scope of protection, whereas the more intricate a design is, arguably the harder it is to succeed in a like-for-like assessment of infringement. Case law has not settled this matter entirely, with line drawings possibly protecting only shape or to also include even minimalist ornamentation (as was seen in Trunki, i.e. a lack of ornamentation could be construed as a feature, weighing against included ornamentation in another product). The note does also acknowledge that a lack of ornamentation can be a feature (as opposed to the obiter comments presented in the Trunki decision, as mentioned above), which was a question that needed to be settled due to a lack of a referral to the CJEU by the Supreme Court.

Frustrations over design applications were palpable
Although not discouraging the use of CAD drawings, such as in Trunki, the UK IPO still highlights that "[w]hen using more detailed CAD-type representations, the visible presence of apparently-incidental features such as, for example, shading and light reflection, may still be taken into account by a Court or Tribunal, and may have the effect of limiting protection to shape ‘and more’. Therefore, when seeking to protect shape-only, applicants are advised to use simple line drawings, without any colour or tonal differences, and without any visible surface features or decoration". One can appreciate that, should an applicant want the broadest protection possible, they should seek to use line drawings rather than CAD imagery. The decision in Procter & Gamble does raise the possibility of this being an issue for any additional features, but this writer would hesitate a guess that most would want to aim for shape-only protection over uncertainty as to any 'incidental' features raised in opposition or infringement proceedings.

The UK IPO further highlights the possible use of disclaimers in filings, where features not intended for protection are excluded in the application, which can be done both in "...graphic form (for example, by circling those elements which are intended for protection, or by blurring-out those elements which are not), or in written form (by drafting and submitting a statement which explicitly states what is or is not intended for protection)". This is important in a CAD image context, where shading and color differences (e.g. a black handle) can be issues down the line, but can be remedied using these limitations.

The Office summarises their guidance at the end of the note, which sets out quite clearly that "Applicants should be careful when selecting representations to ensure that they accurately reflect what the design is intended to protect. Designers should always give thought as to how their design might be exploited by others, and ask themselves whether the features disclosed in their chosen representations accurately convey what they are seeking to protect. In all cases, the protection conferred is likely to be assessed by reference to features disclosed in the representation(s) submitted, rather than by reference to the ‘type’ or ‘format’ of representation used". As one can see, the format of the representation (i.e. whether a CAD image is used or a line drawing) will not be the determining factor limiting the protection of the design, but the features it discloses, including possibly a lack of ornamentation in a more fleshed-out image.

This writer applauds the UK IPO for taking on this important question, and offering applicants more guidance on what to do and how to do it, so as to avoid any unwanted decisions like in Trunki. Designs are an often overlooked feature within IP, not helped by many questions such as this swirling in its vicinity, and proactive addressing of issues such as here should help things progress into a more accepted and used space for applicants.

07 June, 2016

Clear Enough? - CJEU Further Clarifies Communication to the Public

The CJEU does not seem to be able to make its mind up on the topic of what amounts to a 'communication to the public', as is perfectly illustrated by the recent decisions in Svensson, C More Entertainment, BestWater and the Advocate General's opinion prior to the decision in GS Media (the very decision so many are waiting for). This difficulty in establishing a firm position on this very important subject has created many headaches for IP practitioners, who, by now, are grasping for any concrete and consistent judgments to this effect. While we have to still wait on the CJEU tackling GS Media, there is potentially some respite in the air via a decision discussing, yet again, what a 'communication to the public' might entail.

The case of Reha Training Gesellschaft für Sport- und Unfallrehabilitation mbH v GEMA dealt with the a rehabilitation center, Reha Training, which provides post-operative treatment to better rehabilitate those who needed it after their medical procedures. The center itself included two waiting rooms and a training room (similar to a gym), where, between June 2012 and June 2013, they showed television programs for the patients who used the facilities in their recovery in installed TVs in the rooms. No permission was requested from GEMA (a German collection society) to display the content for the patients. GEMA then took Reha Training to court, asserting that the display of the TV content amounted to a 'communication to the public' under the InfoSoc Directive.

The referring court essentially asked whether the broadcasting of TV programmes in a rehabilitation center constitutes a communication to the public under several provisions (including the above Directive).

The CJEU first observed that, as the question referred to dealt with two Directives that mention a 'communication to the public', the provision in the InfoSoc Directive applies without prejudice to the application of the Rental Right and Lending Right Directive (which, similarly, offers the exclusive right to the author to communicate to the public a work, though through a more monetary provision). Although the wordings in each of the above Directives differs somewhat from each other, the Court concluded that their interpretation should be the same in order to keep a unified and coherent legal standard. They further clarified this, establishing that "...the different nature of the rights protected under those directives cannot hide the fact that, according to the wording of those directives, those rights have the same trigger, namely the communication to the public of protected works". Arguably, the interpretation of what amounts to a 'communication to the public' should be clear across the board, and this writer would agree that, unless specifically needed, the interpretation should be the same irrespective of the context of a given directive.

The Court then moved onto discussing the actual interpretation of the phrase. As the Court stated, this involves the assessment of several criteria, and the phrase has to be interpreted broadly. The criteria that are looked at are whether there has been an 'act of communication', and if that has been done to a 'public'.

No, Chuck, you can't communicate what you want,
even with a megaphone
In putting things in simple terms, the Court stated, as established, that an 'act of communication' is "...any transmission of the protected works, irrespective of the technical means or process used", and that every such transmission, to be legal, has to be authorized by the author of that work. Following on, the transmission of the work, to be an infringement of the above rights, has to be communicated to a 'public', which is deemed as "...an indeterminate number of potential recipients and implies, moreover, a fairly large number of persons". The public cannot be a restricted, small subset of people, but 'persons in general'. The CJEU has also established that the communication has to happen to a 'new public', meaning people who the author did not take into account when they authorized the communication of the work (i.e. if the content is paywalled, any people who do not have access through said paywall would be, prima facie, a 'new public'). This also involves a clear and calculated part by the person communicating the work to the new public, where their intervention is essential for the user to receive that broadcast. Without the intervention and the clear 'targeting' by the communicator, there would be no communication to a public.

In the earlier decision in SCF v Marco Del Corso the Court discussed this type of communication in a similar context, holding that the broadcast of TV programming in a dentist's office is not a communication to the public, as the patients do not visit the office to primarily watch TV, which in turn does not increase the users of that particular practice (or its attractiveness to a new public).

The Court concluded that Reha Training had indeed communicated the works to a public, as, drawing an analogy to previous case law involving restaurants, spas and hotels "...the operators of... [the] establishment carry out an act of communication where they intentionally broadcast protected works to their clientele by intentionally distributing a signal by means of television or radio sets which they have installed in their establishment". The clientele would not be an insignificant number, and the intervention of the operator of the center is key for their enjoyment of those works, and were not in the contemplation of the original broadcaster as an audience for the works, making them a 'new' public. The communication of the works also makes the center more attractive to prospective clients, giving it a competitive advantage (and thus benefiting from the communication).

The case is a curious development, and further cements the CJEU's position on the concept of a 'new public', which has been somewhat rejected in the Advocate General's opinion in GS Media. As the decision in the case looms in the horizon, it will be interesting to see whether this decision has a big impact on it, and whether the mere provision of hyperlinks would be an intervention that is indispensable for the enjoyment of the works, especially considering the material is freely accessible online to begin with (rather than locked behind a paywall). This writer believes the CJEU will not deem the sharing of hyperlinks to be a communication to the public, but the Court's track record does show that there are no guarantees to this effect.

Source: IPKat

01 June, 2016

Plain as Day - Plain Packaging Regulations In Force in the UK

Plain packaging laws are a controversial topic, and undoubtedly cause quite the wave of discussion between IP professionals, the tobacco industry and even laymen (especially smokers) who will be, one way or another, impacted by the introduction of the regime. Whether you believe stripping cigarette packaging of their signature garb is a good or a bad thing, the trend seems to push towards the introduction of plain packaging worldwide in a systematic fashion. This blog has discussed plain packaging in the Australian context on a few occasions (more on which here and here), but this writer has followed similar developments in Europe with great interest. In the last few weeks plain packaging has taken great leaps in the UK, and The Standardised Packaging of Tobacco Products Regulations 2015 came into force on the 20th of May 2016. This piece will endeavor to give you an overview of the legislation and its effects; however, undoubtedly there will be a few wrinkles in the years to come.

Section 3 deals with the packaging and color thereof of cigarettes, stipulating that all packaging has to be the color Pantone 448 C with a matt finish (already used in Australia), but the use of white is also permitted, more likely on the inside and/or to distinguish the health warnings put on the packaging. The section does permit the inclusion of other elements, set out in Schedule 1, such as the brand of the cigarettes, number of cigarettes in the pack, details of their producer and barcodes (following strict rules on style). This does include the striking health warnings present in packs today as well. Sections 4 and 5 set out rules on the material, shape and function of the cigarette box itself, and the cigarettes contained within. The former is given more allowances, with soft and hard materials being left as a choice, but also on the lid design and its shape. The latter are very much left as they mostly seem to be, with cigarettes only allowed to be a matt white color, but the filter end (or the end that is not intended to be lit) can be colored to resemble cork (as many these days seem to do). The cigarettes can also contain their brand, but under strict design rules. Schedule 2 builds on the above, adding specific rules regarding wrappers, surfaces and inserts in cigarette packs.

Sections 7, 8 and 9 prescribe very similar rules for hand rolling tobacco packaging, allowing only the same Pantone color for the outside and/or for the interior, including plain white. The packaging also allows the inclusion of health warnings or other symbols sanctioned by Schedule 3. The shape of the bag containing the rolling tobacco can also be a variety of shapes, including a cuboid or a cylindrical shape. Similarly to Schedule 2 above, Schedule 4 adds on other provisions regarding the tabs, seals and wrappers in the packaging of rolling tobacco.

Cigarette Lives Matter
Sections 10, 11 and 12 add additional restrictions on packaging for both types, including (through section 10) the denial of any markings that encourage smoking, display information on the chemical composition of the cigarettes and compares favorably a given tobacco product to another. This is in place clearly to further prevent express benefits to any given brand that may, for example, contain less nicotine (or other harmful chemicals) or cost less per cigarette, and to even the playing field for all brands. Sections 11 and 12 prescribe that no packaging can emit smells or noise that is not normally a part of the packaging or product itself, or that the packaging cannot change appearance post purchase.

All of the above changes are quite logical and clearly aim to create an even playing field for all cigarette products, but for many, the question of why these provisions were introduced still remains. The government described the Regulations as a means to "...discourag[e] people from starting to use tobacco products; encourag[e] people to give up using tobacco products; reduc[e] the appeal or attractiveness of tobacco products, the misleading elements of packaging and the potential for packaging to detract from the effectiveness of health warnings; and [to] hav[e] an effect on attitudes, beliefs, intentions and behaviours relating to the reduction in use of tobacco products". The objective is clearly one of policy regarding health, especially targeting more image vulnerable young people and the early days of tobacco use. This writer commends the government for its bold initiative, following its Australian cousins across the way.

The Regulations were challenged in the High Court by all of the major tobacco companies (British American Tobacco (UK) Ltd & Ors, R (On the Application Of) v Secretary Of State For Health), where the companies, as summarized by Mr. Justice Green: "...challenged the Regulations upon the basis of international trade mark and health law, EU law, the European Charter of Fundamental Rights, the European Convention of Human Rights, and the domestic common law. They attack not only the Regulations themselves but also the process by which Parliament came to adopt the legislation". The judge ultimately found that the Regulations were lawful in all respects, and the introduction of plain packaging is almost inevitable.

The looks of products can be hugely beneficial for the sale and mind-share of any goods, and thus the loss of these external attractive features is yet another blow to the tobacco industry, including since the banning of the advertisement of tobacco products in the latter part of the 20th century. This writer thinks the change is nothing but a good one, but the legal professional in him seems to dislike the idea of the removal of all IP in cigarette packaging. Nevertheless, his opinion stays merely a single opinion, and the attitudes of the world have changed and plain packaging will probably spread further after this change.

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