12 December, 2014

Retrospective - Computer Software and Copyright

In a world where everything is becoming more and more digital and reliant on computers to handle most tedious or complex tasks, software is king; it is what executes these tasks and makes things easier to do on the aforementioned devices. With the software business booming, more and more value can be placed on having the right software for the right task in the highly competitive space, and with that the desire to protect your product. Even in the wake of the Alice decision some time ago (discussed on this very blog here and here) the protectability of software still remains, albeit quite hindered. In light of the more difficult protectability of software through patents, copyright shines brighter and as a possible alternative, yet poses a question which might be less glaringly obvious to most: is software protected under copyright?

A fairly recent case in the UK Court of Appeals, SAS Institute Inc v World Programming Ltd, attempted to take on this issue and decide once and for all whether copyright does afford protection to software and its underlying code. The SAS Institute is a software development company well-known for its analytical software, often referred to as the SAS System (or just plainly SAS). A core component of the SAS System is SAS Base; a piece of software which allows the user to easily write and run scripts to analyze and use data. The scripts themselves were written in a programming language developed by SAS called SAS Language. Finally, the SAS Base software can be extended upon by three additional components: SAS/ACCESS, SAS/GRAPH and SAS/STAT respectively. In addition to the software SAS have also written manuals for the use of its software. The SAS environment was quite tightly controlled, and customers had no secondary options which to use in the execution of their developed scripts for the platform (the SAS Language only functioned through SAS' System). Their competitor, World Programming, sought to create an alternative piece of software capable of utilizing the SAS Language, so that any programs written in the Language can be used in both their suite and SAS' - the end-result being a program called the World Programming System. The software endeavored to mimic SAS' System as closely as possible; however they had not accessed SAS' source code in their development, merely copying the outputs and inputs of the System. Due to this, SAS sued WPL, asserting that the company had copied its manuals; through the copying of the manuals they had infringed SAS' copyright in their extension components; WPL had infringed its copyright in a version of its System, the Learning Edition, and breached its terms in its misuse; and WPL had infringed SAS' copyright in its manuals after creating its own version called the WPL Manual.

Being 'creative' in programming can be difficult
Confusion in terms of acronyms aside, the court was therefore faced with the ultimate determination of whether copyright exists in SAS' software, and whether WPL had infringed that copyright. Under EU legislation, more specifically Directive 91/250/EEC (now governed by Directive 2009/24/EC with no substantive differences), computer programs are wholly protected by copyright as a form of expression; however the underlying principles of those programs are not. To put this into more simple terms, the code executing a specific function in its particular expression can be protected, but the idea of that execution is not, allowing anyone to create a program doing the same thing, so long as the expression of that execution is not the same as other expressions of it (i.e. different code, same result). Computer programs have since been included in the UK Copyright, Designs and Patents Act 1988, under section 3.

To look at things further, the scope of what is protectable under the above Directives was left quite open, but was subsequently added to in the case of Infopaq International v Danske Dagblades Forening, where the European Court of Justice saw that copyright protects an author's "...intellectual creation" (the wording used in the Berne Convention), potentially encompassing programs quite readily if it can be seen as such a work - supplanting this definition in the Directive's interpretation. What is important in this term's application, in the Court's judgment, lies within whether a computer program can be seen as an 'intellectual creation', and in assessing this the court must decide that if the expression within the computer program is purely a technical one (i.e. derived from necessity for things to work right), the work cannot be seen as an intellectual creation under this definition. To put things in more simplistic terms: "...the author [has to be] able to express his creative abilities in the production of the work by making free and creative choices". If a programmer, in the creation of a specific application, can express his or her creativity and choices in how the program works, it can be protected by copyright. Even if the program has very specific functionality, or combines several different functional approaches to the execution of its desired task, the law does not protect it under copyright. In the court's view the copyrightability of functions or functionality, no matter how well used or combined, would be tantamount to the copyrightability of an idea, and therefore is not within the remit of copyright.

Finally, the court had to assess whether the manuals created by SAS are protected as works, and whether WPL had infringed those manuals' copyright protection.Their content was largely informative, and therefore would encompass most of the 'ideas' expressed in the aforementioned programs, or as expressed by Lord Justice Lewison: "...what counts as an idea, for the purposes of a computer program, also counts as an idea for the purposes of a manual". With this in mind, should the manual express the idea in a way which can be seen as protectable, it can fall within the remit of the law. His Lordship dismissed both claims on the manuals, effectively dismissing their protection due to a lack of any protectable expression, as they merely described the function of the programs without adding anything original on the author's part.

In the end SAS lost their appeal and the Court of Appeal closed the door on the copyright protection for programs, at least for the most part. The case was appealed to the UK Supreme Court, however leave was not given, solidifying the law's position through the Court of Appeal's judgment. The position presented in the case differs drastically to what has been discussed in the United States, where programs can be protected by copyright. Nevertheless the case is without a question an important milestone in relation to copyright and computer software, and this writer for one believes it will stay as such for a while.

05 December, 2014

Words in Action - Trademarks as Verbs

This writer, for one, will fully admit to often using very well-known brands as the descriptive term for all such items, for example calling all plasters Band-Aids and all cotton-tipped plastic cleaning things (a technical term, undoubtedly) as Q-Tips, regardless of all of those terms having been, or still being, registered trademarks. While my misstep in potentially diluting these valuable brands in using them in this way can be seen as a small error, or even wholly unnoticeable in the grand scheme of things, it still brings light to an issue all trademark holders face; the potential of losing your mark to genericization. While this topic has been discussed on this very blog before quite extensively, the use of trademarks as verbs specifically has been left a bit in the dark, yet is illustrative of a newer problem technology companies especially will face. Who hasn't said they will 'Google' something, or if they will 'Facebook' their aunt Mary; a grave threat the holders of those particular marks will lose sleep over. One such giant facing a recent challenge to its widely recognized trademark is Google, which posed an interesting question to all trademark holders.

The case in question is Elliot v Google Inc, where the claimant, David Elliot, registered over 760 different domain names combining the word 'Google' and another brand or a famous person, for example googledisney.com, or with generic terms such as googletvnews.com. As you might have guessed, Google has trademarked the term 'Google' in a number of variants; two of which were at issue in the case: US trademark 2884502 and 2806075. These two marks encompass the word 'Google' in several categories, such as web indexes and computer software - promptly leading to Google pursuing the domain names through the Uniform Domain-Name Dispute-Resolution Process (UDRP). In his defense Mr. Elliot asserted that the term 'Google' had become generic and could therefore be used by him (and others) without infringing on Google's marks. The domain names Mr. Elliot had registered were transferred to Google in the UDRP, which prompted Mr. Elliot to pursue the matter further in the US District Court of Arizona.

What Mr. Elliot's argument largely states, and what the court had to assess, was whether the term 'Google' had effectively become ubiquitous with the verb 'googling' - defined by the Oxford Dictionary as "[s]earch[ing] for information about (someone or something) on the Internet using the search engine Google" - rendering it generic rather than distinctive as to Google and/or Google's services. As trademarks need to specifically distinguish the origin of goods or services, becoming a generic verb can be the mark's end.

Stacy was unnerved after 'googling' herself
What the court had to determine was whether the mark's "...primary significance" was that of distinguishing the goods or services from other similar ones. The test was phrased well by Justice Brandeis in Kellogg v National Biscuit: "...the primary significance of the term in the minds of the consuming public is not the product but the producer". This is highly important, as if a product is named as the major brand (i.e. if you refer to all plasters as 'Band-Aids') in general terms, the mark loses its status as the seal of origin for that brand, or as stated by Justice O'Scannlain in Filipino Yellow Pages: "...if the primary significance of the trademark is to describe the type of product rather than the producer, the trademark is a generic term and cannot be a valid trademark".

Using a trademark as a verb does not automatically change the primary significance of that mark, and a mark, such as 'Google', can be used for both the designation of an origin for goods and services and as a term describing the searching of information via the search engine - noted by the court in the case. This synecdochian dual-functionality of a mark is wholly valid; however, should the perception of the public change drastically as to the meaning of the word, i.e. if most people would believe and/or use the term "to google" to mean using any search engine online to seek information, then the mark can be determined to be compromised, even with this accepted dual-functionality. This was phrased well by Justice McNamee (the name seems more than appropriate considering the case's subject matter): "It is thus contrary to both the letter and spirit of trademark law to strip a mark of legal protection solely because the mark—cultivated by diligent marketing, enforcement, and quality control—has become so strong and widespread that the public adopts the mark to describe that act of using the class of products or services to which the mark belongs". Arguably this argument holds well, and this writer for one agrees wholeheartedly with the court's view, as the stripping of a mark's distinctive nature the moment it becomes even partially descriptive of a class of products or services would run contrary to the value given by trademarks to brands and their place in a given class.

In the end the action failed, as Mr. Elliot failed to demonstrate how the mark 'Google' had turned generic, as the public still strongly perceived it as part and parcel to the company, not just internet search engines or internet searching at large. The case does bring light an important issue, and often something that the general public will not think about; how our daily use of terminology, especially trademarks, can alter their value. Some examples include 'Xerox' (become a term for all photocopying) and 'Thermos' (used as a term for all heat-retaining drinks containers), which have become generic due to their use as the identifying term in a given class. Due to this the International Trademark Association has even issued guidelines on the proper use of trademarks, which most of us will find potentially excessive, yet is quite important. As can be seen, trademarks are a dangerous beast, especially when they become famous to the point of ubiquity; however for most this risk is quite worth it.

Source: JDSupra

01 December, 2014

Genetic Patents Saga Continues - Next Stop, Canada

After the Myriad Genetics saga has been experienced on both sides of the world, in the US and Australia (both discussed on this very blog quite extensively: US here and here; Australia here), the fight seemed to be over and the decision, at least for now, settled. With the Australian case having been appealed to the High Court of Australia, most IP practitioners and academics awaited the conclusion of the patent's road in Australia, a new challenge in the field of genetic patents has begun in the colder of the North American powerhouses; Canada. The Myriad Genetics patents have not been challenged in Canada, although the Provinces themselves have rejected them and refuse to enforce the patents, and this case would be an important stepping stone in completely answering the question of the patentability of genetic material, at least in North America.

The challenge is being mounted by Children's Hospital of Eastern Ontario (more commonly known as CHEO), however taking the fight to (finally) someone else but Myriad Genetics. The question relates to patents covering the testing and/or assessment of Long QT Syndrome, which, as explained by the Mayo Clinic: "...is a heart rhythm disorder that can potentially cause fast, chaotic heartbeats. These rapid heartbeats may trigger a sudden fainting spell or seizure. In some cases, your heart may beat erratically for so long that it can cause sudden death". One does not catch Long QT, as it is a genetic disorder, which requires identification prior to treatment. CHEO were prevented from conducting their own genetic analyses on-site, as the University of Utah holds the patents for the testing of this genetic disorder, much akin to the Myriad Genetic Patent (Canadian patents 2240737, 2336236, 2337491, 2369812 and 2416545 respectively). Due to the mandatory outside testing at the University of Utah, CHEO's costs to diagnose this disorder are nearly double when compared to internal testing, resulting in increased costs and potentially even diagnosis times; again, very similar to the problems with the Myriad Genetics case.

The Canadian Patent Act reflects the US legislation quite heavily in relation to patentable subject matter. Under section 2 of the Canadian Patents Act an 'invention' is defined as "...any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter". A nearly identical definition is set out in 35 USC section 101 in the United States. The relevance of this is very important, as the Supreme Court's rejection of genetic patents in the US will undoubtedly influence the Canadian courts going forward.

Even genes have it tough under today's beauty standards (Source: Dan Collins)
Under the Canadian Patents Act section 27 both scientific methods and abstract theorems are not patentable, although an application of such can potentially be patented. One has to note the omission of an express exclusion of naturally occurring subject matter, which is included in many other jurisdictions. The argument raised by CHEO therefore hangs on whether a naturally occurring phenomena can be patented under section 2, if it is deemed to be a sufficiently marked departure from the naturally occurring thing itself. One has to wonder why the Canadian legislature has left this exclusion out of the law, as it is very much the standard all over the common law.

As for potentially applicable case law the pickings are quite slim. The case of Harvard College v Canada (Commissioner of Patents), the Canadian Supreme Court saw that, even though section 2 is very broad in its wording, it does not include "....anything under the sun that is made by man", and can be therefore limited in its scope. The Harvard case effectively dismissed the patentability of 'higher lifeforms', which has been argued to encompass plants as well as animals, such as the genetically modified mice in question in the case itself, it still remains a useful examination of some of the wording the Federal Court will face. Whether one can include genes in the term 'higher lifeforms' remains to be seen, and in this writer's opinion, it will be a tough argument to press, but a possible one due to the complexity and higher level of function which genes serve in the human body. In Monsanto Canada Inc. v Schmeiser the Supreme Court looked at patents relating to genetically modified crops. The case largely focused on infringement, rather than the patentability of genetically modified crops, but as the Supreme Court did briefly bring the fact to light, it still might be used as a starting point to defend the patentability of other genes; even human genes.

This writer for one will await the emergence of this case in the courts, and wonders if the decision will be different to that of the US Supreme Court. Arguably the Canadian courts should hold that patents are not eligible for patent protection; however, as recently seen in the Full Federal Court of Australia as mentioned above, things are not always as straightforward as you might think. Yet, due to the sheer similarities of the Canadian and US law, and the significant influence of its North American brethren in the South, one can imagine things going CHEO's way on this one. As the case was filed in the very early parts of November a judgment will be a long ways away, but this will be one to look forward to in 2015.

Source: Ars Technica

20 November, 2014

One Taste to Rule Them All - Can You Trademark a Flavor?

Tastes and preferences are as varied and as complex as there are people, yet some distinct combinations truly are above everything else (should you take this writer's word as gospel - which you shouldn't): basil and tomato; chocolate and chili; milk and tea - the list goes on and on. With that in mind, a distinct and successful flavor combination can be the ticket to prosperity for a lot of restaurants or food-related businesses, and locking that combination down quite valuable as well. Although recipes were discussed on this blog in more depth not too long ago, a recent case has emerged dealing with the question that's on everyone's lips: can you trademark a flavor?

The case involving the flavor-fight was New York Pizzeria Inc. v Syal, in which the subject matter near-and-dear to many New Yorkers' hearts (i.e. arteries), pizza, was disputed. New York Pizzeria, a franchising company for pizzerias, brought this lawsuit against their former employee, Adrian Hembree (although against his alleged co-conspirator, Ravinder Syal), who had acted as the company's Vice-President and as a franchisee in its restaurant business. Mr. Hembree's term of employment was ended, and he subsequently went on to found a competing chain of restaurants; Gina's Italian Kitchen. Mr. Hembree had brought a lawsuit against NYPI for an alleged breach of his termination agreement, after which NYPI took on Mr. Hembree for alleged acquisition and transference of internal documents and recipes to Gina's in order to create a knock-off restaurant. Further, NYPI asserted that Mr. Hembree had gained access to NYPI's internal network through another franchisee's account, passing the details onto Mr. Syal, who then downloaded internal documents from said network. The case discussed the matter quite broadly, as many different counts were alleged by NYPI, of which only a few relate to the question posed above.

The beef of the intellectual property argument by NYPI is brought under 15 USC section 1125, as NYPI claim that the defendant infringed its trademark in the flavor of its food, and the trade dress of its goods as to the food's plating. Should a flavor be considered a possible trademark, under section 1125 Mr. Syal could face a civil action for the infringement of that trademark or its possible dilution.

Great flavors can lead to unpleasant results, no matter how delicious
As was seen in Qualitex v Jacobson Products, discussed by Justice Costa in the case at hand, a trademark can potentially be "...almost anything at all that is capable of carrying meaning" - even a flavor, at least prima facie, as long as it indicates a source for the goods: "[T]he essence of a protected mark is its capacity to distinguish a product and identify its source". If a flavor can be so distinct and so unique that it indicates an origin which is undoubtedly a single restaurant or creator, you could argue it is within the remit of trademark protection in the US. Realistically this would be very unlikely, but entertains an interesting thought. Arguably flavors would never reach the requisite secondary meaning, i.e. an impression in the minds of the public as to the origin of a specific good, due to the very vague and hard to pin-point nature of flavors as a whole. Several pizza sauces, for example, even if very different in their composition, will all still taste very similar, albeit with small (or large) differences to them, thus not carrying much of an indication as to the sauce's origin restaurant.

The final nail in the coffin of flavor trademarks is the inability to trademark something which is purely functional. Functionality was seen in Qualitex, to encompass "...[which] is essential to the use or purpose of the article or if it affects the cost or quality of the article,' that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage". Limiting the usability of flavor combinations, especially iconic ones such as pizza sauce, would clearly hinder competition, or even extinguish it entirely within the field of pizza making. As said, this was put to rest in Re N.V. Organon, where the US Trademark Trial and Appeal Board saw that "[flavoring] performs a utilitarian function that cannot be monopolized without hindering competition". In the end Justice Costa dismissed the argument of flavor trademarks.

Justice Costa didn't discuss the plating issue in much depth, as arguing a specific plating as trade dress is very unorthodox, but entertained the thought nonetheless. NYPI claimed that its plating of its baked ziti, eggplant Parmesan and chicken Parmesan carried a distinctive look, warranting protection. NYPI failed to express what they were protecting in the plating of the dishes, and how they were infringed, failing their argument quite early on: "[i]n the trade dress context, a plaintiff must articulate the elements that comprise its protected trade dress in order for the court to evaluate the plausibility of its claim". In the end, as said above, the claim failed due to a lack of demonstration on NYPI's part, but Justice Costa thought the argument could have warranted more discussion: "...NYPI knows how it plates its food, and it could have easily identified what is distinctive about the plating that might warrant trade dress protection".

Similar views have been expressed here in the UK, with an application for a "Taste of Artificial Strawberries" failing to pass the threshold of trademarkability due to its lack of distinctiveness. This echoes US precedent, and arguably would be the right decision in light of the law and public interest in the non-restriction of flavors in the marketplace. In this writer's opinion the future of flavor trademarks seems very grim, but as a connoisseur of all things culinary, I am quite glad that the world of food isn't shackled by commercial interests; at least not unduly.

Source: JDSupra

13 November, 2014

Generic Stuff - Food Packaging and Intellectual Property Law

Remembering back fondly to ones childhood often elicits images of Saturday mornings, watching cartoons and eating cereal poured from colorful cereal boxes. Yet a shadows of this memory is when your parents buy the generic brand, often simply grabbing something from a store shelf thinking it's the brand that their child loves, missing the folly in their ignorance and disappointing their young ones with less flavorful alternatives to their desired sugary morning treats. Thinking back, the disappointment probably was not as palpable as my memory serves me, but this illustrates a point of contention in intellectual property law; how close can you brand your foodstuffs as a generic brand when compared to more popular variants of a given food item? The goodwill and reputation, which many food manufacturers strive for for years, even decades, often seems easily exploited in the sphere of food packaging, yet, at least prima facie, their goodwill and make-up should potentially be well within the sphere of intellectual property law, and therefore quite protectable. The extent of this protection merits further discussion, especially in today's highly competitive world within the shopping jungle of grocery stores.

What prompted this writer's interest in this topic was an article published on the IPKat (originally brought up in an article on Yahoo! News), which discussed the seemingly blatant copying of popular brand items by Aldi in their store brand equivalents, especially in the remit of chips sold in a tubular container, and the mentioned use of similar packaging in cereals. Could Aldi's practices infringe on the brands' rights in the UK or abroad?

Some protection could be offered by copyright, should the packaging contain a work which can be categorized as protectable under the subject matter. Images on packaging, or even more stylistic or intricate designs, could potentially be considered an artistic work under the Copyright, Designs and Patents Act 1988 (and similar laws abroad), and even the writing used on the box (stories, challenges and other items on the back for example). The image has to have no artistic merit to it for it to be protected, but still has to be considered original. Although not the primary avenue for protecting packaging, it can still address the issue at a much shallower level. Arguably most goods will not infringe on copyright, even if they resemble the name brand goods quite a lot, as you would have to make a copy of the work (in simplistic terms), and a mere imitation might not be enough to argue copyright infringement, as a box for foodstuffs would be a long-shot to argue as a form of expression worth protecting.

Trademarks, under the Trademarks Act 1994 (and other similar provisions), are the more 'obvious' choice when it comes to protecting your brands, and certain foodstuffs are covered under the subject matter such as the name "Pringles" or "Froot Loops". Primarily trademarks only assist in the protection of names and logos (such as Captain Rik), and as such are much weaker when the logo, name or other trademark isn't directly copied or a similar variant used. Clearly, should Aldi (or any other business) deviate from those, they would arguably be in the clear.

The darker side of store brands: underpaid mascots
As for design rights, unregistered designs under the Copyright, Designs and Patents Act 1988  protect the shape or configuration of a good; i.e. how it looks like form wise, and not in terms of it's 'get-up'. This would be hard for Aldi (or others) to infringe unless a good has a very specific shape to it, such as a triangle box in stead of the typical box design. Under the registered designs regime through the Registered Designs Act 1949, a design can be registered should the appearance in part or as a whole have a specific look to it, including colors, shapes and even textures. The design has to have individual character, which can be simply said to entail something which is unique to that product, and isn't too generic, while also having to be novel. Arguably this is the hurdle where most foodstuff packaging stumbles in registered designs, as it would be nearly impossible to say that merely a certain color scheme or variation thereof would be novel and individual to that particular item. This in mind it is very possible for generic brands to imitate the look of a cereal box, even if the color scheme would be very identifiable for that particular brand.

In the US there is the concept of what is often referred to as 'trade dress', which is protected under 15 USC section 1125, making it quite usable in this instance, although not in a UK context. Under the Act a product can infringe upon the trade dress of another product under certain circumstances: "[If it] is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or... in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities". Arguably this would be very hard to prove, at least prima facie, but should a brand take the time and effort to compile sufficient evidence as to likely confusion and detriment on their end, trade dress could be a useful tool in the area of consumer goods. In the UK an avenue functioning much akin to the US provision above would be passing off (discussed more in depth on this very blog here); however the threshold of proof required is very hard to overcome, especially in an instance where the passing off isn't obvious and clear.

As one can see the world of consumer goods and foodstuffs is a treacherous and difficult area of law in which to wage your battles, and arguably most brand owners will not benefit in fighting this fight. Superior quality, goodwill and marketing will serve a better purpose than paying your lawyers to take on Aldi for its generic items; however as a legal professional it is a bit of a no-no to admit this. One can still appreciate the impact of generic goods and confusion related to them, with studies indicating that consumers are very likely to buy store brand products when they look like the name brand item, and a relatively high percentage of purchases having been mistakes due to the similarities. In the end this would be a matter which would have to be addressed by the legislature, but in a competitive world having choice and a cheaper option can still be good for business and the consumer - just not necessarily the brand owner.

06 November, 2014

Fake Goods and the Internet - ISPs Face Trademarks

Counterfeit products are big business. Some estimates have put the sale of counterfeit items at a billion dollars in 2013, and anyone who has traveled around mainland Europe has probably seen people sell "authentic" designer bags off pieces of carpet on the street (and who doesn't like purchasing their luxury goods in the great outdoors). The only issue with selling blatantly on the street is the sheer visibility of your transactions, with the added issue of a very limited quantity of items for sale. The more genius members of the business have since moved onto the World Wide Web, pushing their goods to the willing masses on the great waves of the Internet. The law hasn't fully adapted to this change, with a clear difference in the protection of so-called intangible counterfeit goods (piracy etc.) and more physical objects and their intangible attributes such as trademarks. Amidst this uncertainty the protectability of trademarks in this space was brought up in the English courts, and has since been taken on by the UK Court of Appeal.

The case in question was Cartier International AG v British Sky Broadcasting Ltd, which dealt with the company Richemont, which owns several luxury brands such as Cartier and IWC. As Richemont's goods are highly sought after and quite valuable, six websites were started, aimed at selling and advertising goods using Richemont's trademarks in doing so. The website's donned such fantastic domains as www.cartierloveonline.com and www.iwcwatchtop.com, clearly aimed to confuse and befuddle those who are less savvy on the information super highway. As such Richemont wanted to halt the websites' operations, and approached the courts to impose an injunction to block the websites.

What remains the bigger question in this case is whether such a block is possible under the current law, or as was framed by Justice Arnold: "First, does this Court have jurisdiction to make an order of the kind sought? Secondly, if the Court has jurisdiction, what are the threshold conditions, if any, which must be satisfied if the Court is to make an order? Thirdly, are those conditions satisfied in the present case? Fourthly, if those conditions are satisfied, what are the principles to be applied in deciding whether or not to make such an order? Fifthly, applying those principles, should such orders be made in the present case?"

Under section 97A of the Copyright, Designs and Patents Act 1988 the courts can impose an injunction against an Internet service provider; however the issue presented to the court is that under section 97A the courts can impose an injunction only "...where that service provider has actual knowledge of another person using their service to infringe copyright". As such there was no issue of copyright infringement in the case, as only Richemont's trademarks had been potentially infringed, and no provision allowing for injunctions in the event of trademarks being infringed exists in the UK.

The Court of Appeal's message to trademark infringers
This lead to some extreme juggling of current laws and whether such an injunction was possible bar an express mention of such a power, although this was meant to have been implemented by the UK under the Information Society Directive. Justice Arnold was faced to examine whether this omission was supplemented under section 37 of the Senior Courts Act 1981, through which "[t]he High Court may by order (whether interlocutory or final) grant an injunction or appoint a receiver in all cases in which it appears to the court to be just and convenient to do so". Agreeing with precedent, Justice Arnold saw that an injunction under section 37 of the 1981 Act would not contravene the Supreme Court Act 1981, allowing for the High Court to afford the injunction as a final decision should it do so.

Justice Arnold discussed the conditions which have to be fulfilled before a court may award the aforementioned injunction: "First, the ISPs must be intermediaries within the meaning of the third sentence of Article 11 [of the IPR Enforcement Directive]. Secondly, either the users and/or the operators of the website must be infringing the claimant's trade marks. Thirdly, the users and/or the operators of the website must use the ISPs' services to do that. Fourthly, the ISPs must have actual knowledge of this. Each of the first three conditions follows from the wording of Article 11 itself.".

Applying the conditions to the case Justice Arnold quickly saw that all of the requirements had been fulfilled. First, British Sky and the other ISPs acting as defendants can be said to be intermediaries within the meaning of the Directive without much question. Second, as Richemont owns the rights to several infringed trademarks in the case, such as Cartier, IWC and Montblanc, used in in the six websites dealt with in the case, the websites clearly infringed on those rights. Third, due to the ISPs role as intermediaries, although are not prima facie used for the infringement directly, because of their integral role in the conveyance of the infringement to Internet uses they are used for the infringement, irrespective of a contractual relation between the infringer and the ISPs. Finally, through evidence it was easy for Richemont to establish that the ISPs did indeed have actual knowledge of this infringement and chose not to act on it. Because of this the requirements are fulfilled, and Justice Arnold could award the injunction.

The case can be said to be very important in a UK perspective, and potentially as an international precedent. Through the decision rights holders have a remedy to address the infringement of their rights outside of just copyrights online, potentially allowing the curbing of counterfeit sales online (although this writer will admit it seems like a long-shot it would be ever fully eradicated). Nevertheless, this remedy can be argued to have been needed, and in the absence of intervention by the legislature, should stand as an avenue for trademark enforcement on the Web.

Source: World Trademark Review

27 October, 2014

Retrospective - Copyright in Video Games

If you're oblivious to gaming and the strong attraction that a virtual world has on today's people, you will have missed arguably one of the biggest changes in the entertainment landscape since the emergence of the TV. With this great appeal comes great monetary worth, and something which is very desirable to protect, especially on part of the creators of very popular gaming titles. The difficulty in the protectability of video games stems from their complexity and in the fact that most popular games emulate one-another within certain genres of games, making them quite similar to the casual observer. Where does a game's protectability start from and where does it end? This question was answered first when gaming was in its infancy, but still remains quite relevant in today's world of gaming and law.

The case in question was Atari v North American Philips Consumer Electronics, decided by the United States Court of Appeals in 1982. The case dealt with the well-known game Pac-Man, created by Atari and Midway in the sunrise of the 1980s, which sold a staggering (at the time at least) 7 million copies. In the wake of Pac-Man's popularity a similar game, K. C. Munchkin, was created by North American Philips. Due to the incredibly similar styles and mechanics of both games Atari sued North American for copyright infringement, which ultimately was decided by the US Court of Appeals 7th Circuit.

The court initially described the copyrighted work in question, which, to the uninitiated, consists of a maze-like playing area, where the player controls the Pac-Man creature, moving him through the maze collecting pellets and fruits, accumulating points as they go. In addition to this the game contains four characters which pursue the main character, often called ghosts, which try to touch Pac-Man, thus 'killing' the character and having the player lose a life. Pac-Man has the capability to fight back, however, through the consumption of bigger pellets, enabling him to eat the ghosts and thus collect more points and avoid losing lives for a brief period of time. K.C. Munchkin is incredibly similar in its design, with a maze-like playing area, four ghost-type pursuers and the collection of pellets, bigger pellets and fruit. Its board design is slightly different, with the maze being slightly taller, and containing hazard elements such as dead-ends, with a slightly different shaped corral area for the ghosts than in Pac-Man. Finally, K.C. Munchkin contains far less pellets in the playing area, and uses a different style to the look of its main protagonist.

After initial discussion relating to the facts of the case the court turned its attention to the meat of the question; whether a game can be a subject matter protected under copyright, and whether the defendant's work infringed upon that work. The former is a much more straight-forward application of copyright law, yet the test for infringement of that work, if found to be copyrightable, is, as stated by Justice Wood: "...whether the accused work is so similar to the plaintiff's work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff's protectible expression by taking material of substance and value". This test only applies to the parts of that work, which are deemed protected, and not any other included parts, even if infringed.

Even game characters have their issues (Source: The Rut)
As decided in Chamberlin v Uris Sales Corporation: "...copyright protection does not extend to games as such". One has to observe that, even if copyright does not subside in games as such, it still can protect parts of those games, not the 'idea' of a game. At the heart of it, the assessment is an assessment of whether what is sought to be protected is merely an 'idea' or the expression of that idea, which is quite protectable. Should the expression and the idea be nearly indistinguishable from one-another, i.e. it is not possible to express said idea in more ways than one, it is difficult to afford protection for that expression. This was well iterated by Justice Browning in Kalpakian: "[w]hen the "idea" and its "expression" are thus inseparable, copying the "expression" will not be barred, since protecting the "expression" in such circumstances would confer a monopoly of the "idea" upon the copyright owner free of the conditions and limitations imposed by the patent law".

Could you therefore protect the 'idea' of Pac-Man as a game? The court did not see much difficulty in answering this question, quickly determining that the work is mostly not protectable; however its components could very well provide "...new or additional [things] over the idea". How the game is displayed, in graphics and music for example, allows for those particular elements to be protectable, yet the 'idea' of a game where the protagonist is chased in a maze cannot be by itself.

An important point raised by the court in the case are certain elements in the game (or games in general), which can be viewed as scenes a faire, or as explained in Alexander v Haley "...incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic". The maze and the score boards can be said to be indispensable to games such as Pac-Man, and arguably others, and thus not protectable. K. C. Munchkin was viewed by the court to have no infringed those designs, and to have been sufficiently different in its expression. What the court saw infringing Pac-Man's copyright was the character design within K. C. Munchkin. They had copied both the protagonist and the antagonist ghosts nearly identically, infringing on Atari's copyright in the expression of those ideas. Even if slight differences still existed, they will not by themselves preclude the finding of infringement. The court ultimately saw that "[a]lthough not "virtually identical" to PAC-MAN, K. C. Munchkin captures the "total concept and feel" of and is substantially similar to PAC-MAN". The court therefore reversed the previous decision and agreed to grant an injunction against K C. Munchkin.

Similar thoughts have been echoed in the UK, illustrated by cases such as Nova Productions Ltd v Mazooma Games Ltd, where the protected subject matter in a game was deemed to be the expression of the idea of a game, and how a game plays was seen as something which can be copied, as long as the visual and audio of that game was not.

What the above case illustrates is the initial considerations of video games as a protectable subject matter under copyright. As technology advances more and more, and games have surely come a long way since Pac-Man, the differentiation of what is copyrightable in a game and what isn't could be said to become more difficult. Even so, this case remains an important landmark in the development of the area, and shows that even dot eating circle creatures can be an expression worth protecting.