31 December, 2013

Review of 2013

As the year of 2013 comes to a close, I thought it'd be time to give some information about IP Iustitia to my readers and anyone who might be interested in some figures. This blog has been a great way for me to engage in the IP law community, and I'm grateful for the moderate success I have had over the majority of the year.

In under a year of operation the blog has had over 10,000 visits, which went over and beyond any of my expectations. Thank you to those who've visited and enjoyed my work, and hopefully things will improve even more as we move forward. The site also migrated to its current domain (www.ipiustitia.com), which I hope you've firmly bookmarked!

Feedback about the blog and its contents has been almost unanimously positive, but do send me an email should you have any thoughts or even ideas on what to write about. Even though the blog is a one-man operation (for now), community participation is paramount and always appreciated.

The blog's Twitter account also has been a success, with 167 followers as of right now. If you have not followed the blog on Twitter, please do so and you'll receive direct links to all new articles the moment they're published. You can also use this as an alternate method to contact me with any questions, IP law related or not, should you want to do so.

In terms of developments in the area, the year has been eventful. The Myriad Genetics decision in the US Supreme Court was one which was anticipated by many, and one which this writer is awaiting to emerge from the Australian Full Federal Court. The Google Books decision, which barely fit into 2013, was monumental as well. In addition the year has been filled with law reviews galore, with the United Kingdom and Australia looking ahead, while Ireland flashed its copyright future in its released review. Many things have happened, and looking at 2014 one cannot be but hopeful as to the future of copyright especially.

I'd like to wish you all a great coming year, and hope that 2014 will be just as good, or even better, than 2013 has been for you! The blog will continue as usual once the new year comes along, firmly going towards it's first anniversary in March. A big thank you to all of my regular and sporadic readers - you are the ones I do this for at the end of the day.

25 December, 2013

Christmas and Intellectual Property Law

I'd like to personally wish everyone a very merry Christmas 2013, not forgetting those who don't celebrate this holiday, so happy Holidays to you too! In the spirit of the festivities I wanted to take a quick look at Christmas and its relation to intellectual property law. Even though the holiday is incredibly old (with further ties to pagan traditions aside from its religious connotation), it still ties in very deeply with modern intellectual property rights in a lot of ways.

The more notable image of Christmas these days is arguably the Coca-Cola campaigns which hit the scene every year. Some efforts have been made to thwart St. Nick's ties with the popular soda pop brand, with little or no damage done to the association between the two, especially during Christmas. The image of Santa in the Coca-Cola adverts is actually protected as a registered trademark; something which most people will not necessarily think of. The popular image was concocted by Haddon Sundblom in 1931 for the beverage company - having been used for almost a century. For a more Coca-Cola oriented history of old St. Nicholas, please refer to their 5 Things You Never Knew About Santa Claus and Coca-Cola article from 2012.

Some of St. Nick's weight could be attributed to his choice of beverage
Certain songs also evoke feelings of Christmases past, sitting around with your family and enjoying the season in the ways you had done for years, maybe even generations. Classics like "We Wish You a Merry Christmas", dating back to the 19th century, and "The Twelve Days of Christmas", dating all the way back to the 16th century, are a part of the holiday for most cultures which celebrate them all over the world. These songs have long since passed their copyright prime; however newer renditions of older songs or even modern creations still may remain under copyright. For example a very popular song in the US for the Spanish speaking community is the song "Feliz Navidad", and the song "Frosty the Snowman" both remain protected under copyright, limiting their use even during the season. This has very little impact on people overall, but still remains a notable thing for most. A selection of song remain very popular during Christmas, and showcase quite well how important the public domain is, and how profitable it also can be.

As one can see Christmas is still very entwined with intellectual property rights, even in the modern day. This should still not serve as a deterrent for your own personal celebrations. I hope you will all have a great break from work, enjoy some quality time with those who you love and remember, 'tis the season of giving. Have a happy end of the year!

21 December, 2013

Streams of Infringers - Germans Face Infringement Allegations over Adult Material

People's Internet browsing habits can be incredibly personal, especially when it relates to certain materials of an adult nature. As such pornographic materials have been used to coerce people into paying for alleged cases of copyright infringement, mostly because of the potentially embarrassing effect a publicly accessible litigation process would have on those individuals. Recent instances have been noted in Australia and more prominently in the US by Prenda Law (something which will be discussed on this blog very soon in more depth). Although seemingly a much rarer vehicle for short-term profits for some entities, recent times have shown an increase in behavior deemed as "copyright trolling"; much akin to patent trolling discussed on this blog prior.

The Germans are the current recipient of such claims, with thousands of Germans being targeted as alleged copyright infringers after visiting the streaming website RedTube (no affiliation with the more known YouTube I'm sure). With numbers having been reported as high as 30,000 Germans as recipients of these letters, the potential value sought by the firm U+C would be over 7,5 million euros.

As such web streaming has been deemed to not infringe copyright in many jurisdictions due to no copy being created in the process of streaming; however U+C argue that "...watching videos on sites such as Redtube can qualify as a proliferation of copyrighted material as a small copy of the file is created in the memory of the viewer’s computer", thus making a copy of the work and potentially infringing copyright. Commenting on behalf of RedTube Alex Taylor, their Vice-President. stated that "RedTube stands by its firm opinion that these letters are completely unfounded and that they violate the rights of those who received it in a very serious manner".

Many are unsure of how to pay the pizza delivery man, if some videos are any indication
Alongside the potential precedent that could be set by the case should it be taken further, potentially causing web streaming to be deemed to infringe copyright, the issue of whether this does infringe the privacy of German citizens can be raised. As stated by Christian Solmecke for the Guardian "...there was not only no legal basis for the fines, but that it was possible that the law firm behind the letters may have broken the law...[and] [i]t is hard to imagine how the IP addresses of the users could have been obtained on a legal basis". More notably this could be an infringement of the right to a private and family life under the European Convention on Human Rights, in addition to any specific German legislation.

The issue of the temporary copies has been argued by Tim Worstall as being potentially correct, stating that "If the original streaming site hasn’t been paying the right royalties it is possible that the viewers owe them. for that idea of a copy existing in the browser would not be, in at least some jurisdictions, be rejected out of hand". This writer for one can see the potential argument as being valid given the right line of argument or set of facts; however due to the current precedent surrounding web streaming it would be unlikely for it to be deemed a form of infringement.

As it stands the matter has not been taken to court, but due to the sheer visibility of the matter it seems unlikely it would avoid litigation entirely, assuming U+C have belief in their argument and are not simply trying to use peoples' embarrassment as a way to make a quick buck. Whether this will go further will remain to be seen, but this writer for one would love for U+C's argument to be tested in court.

Source: The Guardian

17 December, 2013

Pour Some Infringment On Me

Not often can you put the pop ensemble One Direction and the 1980s metal band Def Leppard in the same sentence. Even though the two styles of music differ vastly, a recent turn of events have placed both bands at odds over potential issues relating to the former's new music and possible similarities to Def Leppard's older productions.

One Direction's song called "Midnight Memories" has perked up the ears of Def Leppard and their legal team, allegedly containing parts which eerily match their 80s hit song "Pour Some Sugar On Me". Arguably as pop music has gone even more generic in recent years similarities to older song will occur even when not intended; however according to The Mirror's source: "...it’s clear the two songs sound alike".

Whether this will result in any legal action will remain to be seen, but others have noted the similarities as well. Nick Catucci mentioned this in his review of their album for Entertainment Weekly, stating that "The title track [Midnight Memories] sounds like Def Leppard's ''Pour Some Sugar on Me,'' criminally de-boogied". As such the similarities are much clearer to merely be one person's opinion, and present Def Leppard with an opportunity to get a piece of the boy band's recent success.

For any who might be interested in making their own conclusions as to any potential infringement on the youngster's part, a mash-up of both tracks can be found here. This writer for one believes this issue will not see the light of day in litigation, and will be settled outside of the courts. As One Direction has exploded in popularity since their rise to relevancy some time ago, surely Def Leppard will be interested in not letting this slide.

Source: MetalHammer

12 December, 2013

Retrospective - Passing Off in the United States

The tort of passing off has been discussed on this blog before, yet the tort primarily exists in that form in some common law countries, such as the United Kingdom and Australia, but takes a different form in the US. The term more commonly used in America is not 'passing off', but 'misappropriation'. Misappropriation falls under the tort of unfair competition in the US, made even more complex through the existence of varying laws in all US States pertaining to unfair competition. The common law origins of misappropriation stem from a decision in the early 20th century.

The milestone case concerning misappropriation was International News Service v Associated Press, decided in 1918 by the US Supreme Court. Both parties in the case dealt with the distribution of news in the US, both of which exist even today as independent news agencies or having merged with others. The Associated Press at the time of the case was a representative organization of 950 newspapers all over the US. News items were shared between its members through a bulletin boards, some of which were taken by the International News Services (in addition to news from early editions of newspapers), rewritten and published in different parts of the US for sale, fully utilizing the time differences in the vast country. The Associated Press did not take to this kindly and took the International News Services to court, finally reaching the US Supreme Court.

The Supreme Court had to look at whether International News Services infringed the Associated Press' property rights in their literary work, and whether this amount to unfair competitive practices in business. The Court shortly touched on the existence of copyright in news, and saw no breach of it in International News Services' practices; however what was paramount to the Supreme Court was whether this would be unfair competition. The Court admitted there was no breach of confidence, although it was speculated that some of the news published by International News Services was obtained through paying some of Associated Press' employees to obtain early copies of news articles.

The work put into news can sometimes be extraordinary
The Court's focus turned to the effort and expenditure used by the Associated Press to acquire their news, stated by Justice Pitney: "Not only do the acquisition and transmission of news require elaborate organization and a large expenditure of money, skill, and effort; not only has it an exchange value to the gatherer, dependent chiefly upon its novelty and freshness, the regularity of the service, its reputed reliability and thoroughness, and its adaptability to the public needs; but also, as is evident, the news has an exchange value to one who can misappropriate it". News as a copyrighted work has very little value, but its main value is in its initial delivery and punctuality; one which was clearly abused by International News Services by obtaining and publishing the Associated Press' news. Due to this expenditure and labor which has been placed into the collection of the current news, and without International News Services actually contributing to it and still using it, they are "...endeavoring to reap where it has not sown", which amounts to "...an unauthorized interference with the normal operation of [Associated Press'] legitimate business precisely at the point where the profit is to be reaped". To further his point, Justice Pitney saw that this was underpinned by the equitable consideration of consideration, or in other words: "...he who has fairly paid the price should have the beneficial use of the property". Clearly the Associated Press should be able to enjoy the fruits of their labor, whereas if International News Services were allowed to swoop in and utilize that work and benefit, it would undermine the Associated Press' equitable interest; making International News Services' actions unfair competition.

Although news in itself is not the property of anyone or any entity, the Court saw it akin to quasi-property through its use. Justice Pitney summarized this well:
"Regarding news matter as the mere material from which these two competing parties are endeavoring to make money, and treating it, therefore, as quasi property for the purposes of their business because they are both selling it as such, defendant's conduct differs from the ordinary case of unfair competition in trade principally in this that, instead of selling its own goods as those of complainant, it substitutes misappropriation in the place of misrepresentation, and sells complainant's goods as its own". 
As such International News Services, by using the quasi-property of the Associated Press, misappropriated that property, and although they did not show any misrepresentation, prevented the Associated Press from enjoying the benefits of their work. International News Services' appeal was therefore unsuccessful.

The current form of misappropriation is slightly more developed since its inception. The requirements were well set-out in the case of National Basketball Association v Motorola, where Circuit Judge Winter set them out as:
"(i) the plaintiff generates or collects information at some cost or expense; (ii) the value of the information is highly time-sensitive; (iii) the defendant's use of the information constitutes free-riding on the plaintiff's costly efforts to generate or collect it; (iv) the defendant's use of the information is in direct competition with a product or service offered by the plaintiff; (v) the ability of other parties to free-ride on the efforts of the plaintiff would so reduce the incentive to produce the product or service that its existence or quality would be substantially threatened... rend[ering] [the] publication profitless, or so little profitable as in effect to cut off the service by rendering the cost prohibitive in comparison with the return".
As one can observe, misappropriation is a much looser, more flexible doctrine than that of passing off. The attitude of both judiciaries is the same however, preventing others from using the work or labor of another for their own benefit.

04 December, 2013

Retrospective - Authorship

The expression of ideas is one of the cornerstones of copyright. The conveyance of ideas is more complex today through the use of various mediums, far from the more simple approaches in latter days. Who has written something can become exceedingly convoluted, especially in a sphere such as the Internet where anyone can claim authorship over others' works with relative ease. Although former expression mediums such as news papers and books provided a much more straightforward identification of the author on the face of it, some questions did remain as to who can be classed as the author of a work when it involves a person conveying their ideas to another for their expression of said ideas.

The more prominent case which deals with authorship is the case of Donoghue v Allied Newspapers Ltd, faced by the High Court in the United Kingdom in 1938. This case concerned a series of articles published in the News of the World newspaper about the then-famous jockey Stephen Donoghue and his experiences in the world of horse racing. Mr. Donoghue was interviewed about his adventures, which were subsequently used by a professional journalist S. T. Felstead. The series of articles published were called "Steve Donoghue’s Racing Secrets, Enthralling Stories of the Sport of Kings", and all articles were approved by Mr. Donoghue prior to publishing. Mr. Felstead wanted to further use the material which was published in these articles by writing a new piece titled "My Racing Secrets. By Steve Donoghue" to be published in the newspaper Guides and Ideas, which used condensed parts from the older articles, effectively creating a new work. Mr. Donoghue did not consent to the publication of new works, yet when the piece was published in the newspaper, Mr. Donoghue took action to prevent any further publications of such articles.

The question for the court was whether Mr. Donoghue could be seen as the author or co-author of the published articles in the News of the World under the then in-force Copyright Act 1911. Justice Farwell summarized the position of the law well as exposition to this question:
"...there is no copyright in an idea, or in ideas. A person may have a brilliant idea for a story, or for a picture, or for a play, and one which appears to him to be original; but if he communicates that idea to an author or an artist or a playwright, the production which is the result of the communication of the idea to the author or the artist or the playwright is the copyright of the person who has clothed the idea in a form, whether by means of a picture, a play, or a book, and the owner of the idea has no rights in that product."
What is important in the court's assessment is not the idea or ideas themselves, but their expression in a particular form. In the case at hand Mr. Donoghue essentially provided Mr. Felstead the ideas for his articles; ideas which were then conveyed through Mr. Felstead's expression. The language used in the articles was accepted to being that of Mr. Felstead's and not Mr. Donoghue's, even though some of the articles contained dialogue arguably taken verbatim from Mr. Donoghue's recollections.

Pete was a man of ideas, not action
Justice Farwell utilized precedent in his judgment, noting the judgment of Justice Tomlin in Evans v E Hulton & Co Ltd. Justice Tomlin expressed the need to produce the "...express matter which is the original literary work, the subject-matter of the copyright" in works to be the author of those works; something which was accepted by Justice Farwell in the case at hand. His Honor, in his mind, saw this as being the "...particular form of language in which the information is conveyed", and saw that although Mr. Donoghue influenced the substance of the works, the language used was Mr. Felstead's, making him the author of the works. Mr. Donoghue therefore failed in his action.

What can be taken away from the decision is yet again the line which authors and contributors tread; the divide between ideas and expression in copyright (something which has been discussed on this blog more extensively). Whether one contributes themes and ideas, as opposed to written material, can sway the pendulum towards either side, potentially impacting future claims should the material be abused by others. Clearly the world of copyright is not for men of pure ideas.

30 November, 2013

Newegg Loses Patent Appeal

Patent trolls have been discussed, not only on this blog before, but all over the IP community in the last several years. Although steps are being taken to address this potential abuse of the patent system, until things are resolved these entities will still attempt to reap the benefits of their unused patents to make quick profits through settlement or litigation. One of the companies which has faced a wave of patent litigation of the past few years is the online retailer Newegg, having beaten Soverain, another patent troll company, on appeal after a tumultuous litigation process. It seems Newegg has yet to end its patent litigation chapter.

In the recent case against TQP Development, a company owned by Eric Spangenberg, Newegg faced a patent infringement case dealing with a patent invented by Michael Jones, which was since bought by TQP. The patent itself covers the usage of common encryption methods (SSL and RC4)  together to protect purchases online for example; although Mr. Jones did not invent the methods themselves.

This case is one which won't be fully cracked just yet
The jury in the case found that Newegg had indeed infringed the patent owned by TQP, awarding them with 2,3 million dollars in damages, and deciding that the patent held by the company was indeed valid. Although the decision has already rattled some cages, Newegg will without a doubt appeal the decision, as it has been their stance throughout all of their patent litigation history.

While the verdict itself is important, the motives behind litigation by not just TQP, but other similar companies as well, shows a blatant and open abuse of the current US patent system. The owner of  TQP Development Mr. Spangenberg openly states on his website for his company IPNav that he will "...[turn] idle IP assets into revenue streams", having sued a over 1600 companies in the last five years alone. Although clearly successful in his endeavors, Mr. Spangenberg's motives are highly questionable and only highlight a need for reform.

Newegg's Chief Legal Officer Lee Cheng took to Reddit and gave encouraging words over the verdit and previous ones, clearly further affirming their intentions to appeal the decision. Whether things will go better for them further down the line will remain to be seen, but at least this writer is optimistic.

Source: Ars Technica

26 November, 2013

Retrospective - Breach of Trust in Intellectual Property

Intellectual property, in essence, carries its worth and value in the knowledge or ingenuity of the inventor, or the creation of the author of a work, not necessarily in the tangible (or at times, intangible) property that is created from that. With this comes a great deal of risk, in modern days in terms of industrial espionage or the accidental or intentional leaking of details related to books etc, which renders the subsequent intellectual property much less valuable or even worthless. Through this one can understand that a great deal of trust is often placed on those with special access to particular information or details, which can be broken and cause potential damage to the creator. The modern doctrine of breach of trust is well-established, but it stems its roots from the mid-19th century.

One of the first cases that dealt with breach of trust in relation to intellectual property was Prince Albert v Strange all the way back in 1849. The case concerned a collection of etchings and drawings made by both Queen Victoria and Prince Albert of various domestic subjects for their own enjoyment, subsequently being commissioned to be printed as a collection. These etchings were made in a private press, due to their personal nature and thus Prince Albert's wish was for them to remain fully private. William Strange was a printer and publisher in London who somehow obtained copies of some of the etchings, allegedly through the aforementioned private press where the etchings were commissioned from. The prints made by Mr. Strange were made from plates held by Prince Albert and Her Majesty, thus bringing their acquisition into question. Mr. Strange (and the other defendants) wished to print a catalog of the etchings under the title of "A Descriptive Catalogue of the Royal Victoria and Albert Gallery of Etchings", which contained detailed descriptions of 63 etchings with additional critique of those works. Mr. Strange argued that he had the right to publish the works, even though disapproved by the Royal plaintiffs, and the Court of Chancery had to decide whether he was indeed entitled to do so, thus dissolving the initial injunction granted to the plaintiffs.

The case brought about the consideration of property and trust in relation to that property. This is best illustrated by the comments of Lord Chancellor Cottenham, where his Lordship stated that "[t]he property of an author or composer of any work, whether of literature, art or, science, in such work unpublished and kept for his private use or pleasure, cannot be disputed". What his Lordship is clearly saying is a property right of trust (or privacy in a sense) in personalty which is created by someone. This applied, prior to the case, for example to personal correspondence in the form of letters. The defendant did not contest the ownership of the property by the plaintiffs, but still argued that any person who obtains such property would still have the right to publish it. Even though the defendant merely intended to publish descriptions of the works, the Court saw that this would be akin to the publishing of the etchings themselves from imprints, which the defendant would not be entitled to do.

Lord Cottenham agreed that the right of privacy in property did exist and that the defendant would not have the right to use and publish them even if he had acquired copies of those works. Although an interesting notion, what is of importance for us in the case at hand is whether there would be a breach of trust should the defendant have published the catalog; this being the need for the injunction itself.

An artist's rendition of the Royals' etchings
The potential breach of trust related to the actual possession of the etchings, which were potentially obtained through illicit means. Mr. Strange's possession of the etchings, in his Lordship's mind, had to have originated in a breach of trust, confidence or contract on part of the printer's employees or the printing press' owner (one of the other defendants in the case). How the etchings were obtained remains unknown, but as his Lordship observed, this would not matter as mere possession by Mr. Strange was enough to establish that fact. This was further expanded on by his Lordship, demonstrating this very point, using the case of Tipping v Clarke: "If the Defendant has obtained copies of [artistic works], it would very probably be by means of some clerk or agent of the Plaintiff; and if he availed himself surreptitiously of that information, which he could not have had except from a person guilty of a breach of contract in communicating it, I think he could not be permitted to avail himself of that breach of contract". Mr. Strange was subsequently denied the dissolving of the injunction due to this breach of trust.

The Court's observations do match a common law notion of copyright in unpublished works (something which even exists today); however the Court's observations could potentially extend to a right of privacy over property of confidential nature, irrespective of it being copyrighted work or not. Although the case is of little relevance in the sphere of modern breach of trust or confidentiality, it goes to show the importance of certain types of works, especially in relation to intellectual property.

22 November, 2013

Google Free to Scan Books - For Now

Google Books is a great resource, especially for books which have gone out of copyright. As a part of their vast repository of both partially available and fully available titles, Google has taken upon themselves the task to digitize millions of books from libraries in their Google Books Library Project. As stated by Google this Project aims to "...make it easier for people to find relevant books – specifically, books they wouldn't find any other way such as those that are out of print – while carefully respecting authors' and publishers' copyrights. Our ultimate goal is to work with publishers and libraries to create a comprehensive, searchable, virtual card catalog of all books in all languages that helps users discover new books and publishers discover new readers". As one can imagine, several publishers did not like this initiative and sued Google over the Project. After a legal battle that has been waged for over 8 years, the matter has come to an end - at least for the time being.

The case of Authors Guild v Google came to its initial conclusion a little over a week ago, and the decision has already shown a clear division of opinions. As briefly explained above, the case concerned Google's attempts to digitize book collections from public libraries in the United States, having digitized over 20 million books since the effort began almost 10 years ago. The main concern for the copyright holders in the case, represented by the Author's Guild as a part of a class-action lawsuit, was the provision of 'snippets' of books which were still under copyright (making the entire book searchable), in addition to a multitude of books no longer under copyright. The plaintiffs in the matter argued that Google was infringing copyright in the digitization of these books and providing the snippets for the public to view as a part of their search results in Google Books.

"Daddy, what's a 'book'? Why isn't it on the computer?"
What Justice Chin had to decide was whether Google's use of the books fell under the US doctrine of fair use. More specifically the Court was concerned as to whether the use would amount to a 'transformative' use, or in other words, adds something new to the old work or alters its expression or meaning. In the Court's view Google's use of the books was indeed transformative, due to the creation of an index of the information which aids readers, scholars and the like in the finding of books. The service also aids libraries in their work in identifying and finding books. Under an overall assessment of the four factors Google's use would fall under fair use. The Court also accepted that the text snippets provided did not infringe copyright as their only provided a mere glimpse into the expressive value of the books.

Justice Chin weighed the benefits that the service provides heavily in Google's favor in his decision, in his mind: "It advances the progress of the arts and sciences, while maintaining respectful consideration for the rights of authors and other creative individuals, and without adversely impacting the rights of copyright holders". In addition to the benefits the service provides the Court saw that Google could not be liable as a secondary infringer, as the libraries themselves do not infringe copyright in their uses of copyrighted material; "...if there is no liability for copyright infringement on the libraries part, there can be no liability on Google's part".The plaintiffs have indicated that they will appeal the decision to the US Court of Appeals, potentially lengthening the proceedings till 2015 if the matter goes all the way to the Supreme Court.

The decision was also criticized by Hillel Parness (a partner at Robins, Kaplan, Miller & Ciresi), where he stated that "[t]he suggestion is that if a particular unauthorized use of copyrighted materials becomes ‘essential’ or ‘important’ to society, the fact that it was brought about by brazen, unapologetic copying becomes far less important... It gives rise to the dangerous idea that allowing society to become accustomed to - or even reliant upon - such widespread commercial copyright infringement will damage the ability of the rightsholders to obtain relief". Whether Mr. Parness' concerns are valid is questionable, as the provision of books as searchable results does not, at least in this writer's mind, provide individuals with an effective route to infringe copyright. Should Google provide full text versions of the books the matter would be different; however a index of books and some of their content fulfills a useful tool for readers, not infringes.

As said the Google Books saga has yet to face its ultimate conclusion, but this writer for one believes the result was right. Whether the decision is upheld on appeal will remain to be seen, but Google should keep optimistic about their chances. As HathiTrust before it, fair use for digital indexes seems to be firmly within fair use.

Source: GigaOM

18 November, 2013

Retrospective - What is an Invention? An Early Australian Perspective

When considering the humongous advances through invention humanity has undergone in its existence in this world, starting from the primitive inventions such as the ability to control fire to more modern marvels such as the Internet, one cannot be nothing but at awe with the collective capabilities of humans. Inventions themselves can cover almost anything when thinking in laymen's terms, but what amounts to an invention under law? In Australia this is judged based on the NRDC case, which has been discussed on this blog prior; however a case nearly 50 years earlier set the stage for NRDC which is often overlooked.

The case in question is Rogers v Commissioner of Patents, decided in 1910 by the High Court of Australia. The invention being dealt with in the case was a device or a contraption designed to burn down standing timber, causing only a segment of the bottom to burn, thus felling the tree once burned sufficiently. The device used kept the burning piece of wood used to burn down the tree in constant contact with the tree through a tripod of sorts (two forked pieces of wood) which rested the burning piece of wood against the base of the tree at an angle. Due to this the smaller burning piece of wood would fall towards the base of the tree as it was heavier, keeping it in constant contact with it as desired. 

Much like the aforementioned NRDC case the question at hand for the High Court of Australia was whether this device would fall under the 'manner of manufacture' requirement in the Statute of Monopolies 1623. Chief Justice Griffith contemplated the phrase's meaning in the majority decision, seeing that the word 'manufacture' can apply both to the product itself or the manner in which it is produced. He further distinguished that mere new ideas themselves will not be sufficient to be patentable, drawing from the case of Harwood v Great Northern Railway Co: "...you cannot have a patent for a well-known mechanical contrivance merely when it is applied in a manner or to a purpose, which is not quite the same, but is analogous to the mariner or the purpose in or to which it has been hitherto notoriously used". His Honor clearly refers to the use of the two forked sticks in the device in question as to whether they would fall under such a definition. In further explaining his position, his Honor referred to the case of Lane Fox v Kensington and Knightsbridge Electric Lighting Co: "A patentee must do something more; he must make some addition, not only to knowledge, but to previously known inventions, and must so use his knowledge and ingenuity as to produce either a new and useful thing or result, or a new and useful method of producing an old thing or result".

Joseph was confused as to how to use the device
As said above, the use of a very primitive device, clearly already known, would be hard-pressed to fall under the definition of a manner of manufacture under his Honor's considerations. His Honor does go into more detail applying the aforementioned precedents in the patentability of new ideas: "There may... in some circumstances be a patentable invention if the discovery involves novelty in the use of a known thing as distinguished from novelty of purpose or if any new modification of the thing or any new appliance is necessary for using it for the new purpose". In his mind a tripod, as the two sticks served as, did not fall under this doctrine, as the device was not a modification of the conventional tripod nor was there a new appliance; the sticks merely served as a tripod even under the new use. His Honor dismissed the appeal on these grounds.

Justice Isaacs showed a different approach, giving a dissenting opinion. In his Honor's mind new uses for old apparatuses could attract patentability, quoting a number of cases, the more illustrative of which is the House of Lords decision of Patterson v Gas Light and Coke Co: "...if by reason of knowing the theory he [the appellant] is enabled to make some improvements he may take out a patent for those improvements, but he cannot take out a patent to prevent others using what they had used before, though only empirically". In his Honor's mind the use of the tripods in this manner would be patentable.

As one can see the old views of what can be considered an invention, or a manner of manufacture, showcase themselves to be incredibly archaic, although still very useful in further considerations. Rogers v Commissioner of Patents was used extensively in NRDC, and therefore merits discussion, but it's application in today's patent law can be said to be minimal at best. Regardless, this case is still overlooked, and does give more insight to the origins of modern patent laws and their application.

15 November, 2013

Irish Copyright Review: Modernizing Copyright

A wave of copyright modernization seems to be sweeping the common law system, with reviews being undertaken in both the United Kingdom and Australia at the moment. Not to be outdone by its common law brethren, Ireland launched its review of its copyright legislation in 2011, with the final report having been released late last month after almost a year's delay in its release. Although arguably a lesser force within the common law system, Ireland's review of copyright does still serve as an indication of where copyright will be potentially headed in the future; both in the common law and elsewhere. As the report's first sentence aptly states: "Copyright reform is in the air".

The report is very extensive, touching upon most contentious areas of copyright and attempting to suggest changes to the currently in-force Irish Copyright and Related Rights Act 2000. While all of the topics discussed merit further evaluation and offer much to the current discourse of copyright not just in Ireland, but also globally, discussion will be left to only parts of the report by this writer.

Fair Dealing

One of the biggest questions in copyright globally is the line where fair dealing (or fair use) should be drawn, and Ireland is no exception to this. Under the current Act Ireland has a very limited fair dealing scheme which allows for the use of copyrighted materials in research and private study and in criticism or review. The report does recognize the incredibly limited nature of the current regime and attempts to remedy its shortcomings under the recommendation "...that the existing exceptions be regarded as examples of fair use, that they must be exhausted before analysis reaches the question of fair use, and that the question of whether a use is fair on any given set of facts turns on the application of up to eight separate factors". These factors would include a very wide scope of consideration, varying from the purpose and nature of the copying to the possibility of obtaining the work legally; a lot of which resemble considerations already used in a number of other common law countries.

The report actively tried to distinguish its approach to fair use from the often used US fair use doctrine, which has been adopted in a number of nations even outside of the common law, but the suggested regime does not differ largely from its US counterpart as presented. It does go further in its considerations and presents Irish courts with more specific factors to use, but one can clearly see the connection with the American provisions. All in all the suggested changes are incredibly welcome, and showcase the importance of fair dealing in copyright; something which this author and others have advocated on a number of occasions. In addition very similar considerations were put forth in the Australian submissions for reform; however their final form is still pending the release of the final report by the Australian Law Review Commission.


The report also deals with the role of intermediaries in potential infringement situations, considering more clear immunity provisions to the ones already provided under Irish law. The report proposes changes which would bring these immunities better in line with the European Union Copyright Directive.

After the tightening up of already existing provisions the report also suggests further protection of potential secondary infringers, especially as "...in the current regime, intermediaries bear a significant burden in implementing monitoring or “notice-and-action” procedures, and there are arguments as to whether this burden is a legitimate cost of doing business as an intermediary or an unjust cost of protecting rightsowners’ rights". This would be a EU matter to further legislate on and provide clarity, as the provisions relating to this are largely of EU origin.

In addition the report suggest a potentially more proactive approach by the Irish legislature to introduce immunity provisions specifically relating to search engines, immunity as a result of the sophistication of internet browsers (in other words, the displaying and caching of copyrighted content, causing the browser to being the primary infringer), and immunity provisions relating to cloud computing. As the report states: "...Irish law should await whatever legislative proposals emerge from the EU consultation. If nothing comes of it, then it may be appropriate at that stage to return to the question of Irish legislative immunities". Immunities over linking to content were also discussed, raising the recent UK Supreme Court decision of Public Relations Consultants Association Ltd v The Newspaper Licensing Agency Ltd as an example of taking these immunities in an express direction.


The extent to which you can use your legally acquired content has been a contested issue in copyright for decades. The report poignantly raises the heart of the issue: "...the centrality of rightsowners in copyright law, but the law recognises other interests as well, and seeks to balance the interests of rightsowners in protecting their monopoly against other legitimate interests in diversity and expression". The balance between expression and creation by the end-user against the rightsowners' interests is paramount, but clearly there have been issues on the balance being swayed towards the rightsowners in recent years.

In addition to the aforementioned fair dealing considerations the report raises the potential to add new exceptions for private use. Private copying is largely supported by both sides, and in itself supports "...users’ reasonable assumptions and basic expectations" relating to the use of their legally acquired content. This has been suggested in the above EU Directive, and the report endorses its introduction into Irish law. Certain reproduction rights relating to different formats and back-ups were endorsed, again reflecting the reasonable assumptions made by users over their material.

An exception for parody, caricature and satire was also suggested, reflecting a much larger introduction of this exception in the common law; one which has been introduced in Australia a while ago. Following the recent changes in Canada the report also suggests the creation of a non-commercial user generated content exception. Although not expressly mentioned in the above EU Directive, the report still recognizes its inclusion in spirit and supports its express introduction into Irish law.


Even though the report is far more extensive than what is discussed above, it showcases a wave of change in copyright globally. This change has been late in its introduction, with still years till the potential changes would even be implemented, but shows a willingness to adapt and mold the law to modern users and spheres. This writer endorses this and highly awaits the final report here in Australia late this month in further assessing where things will go. Right now Ireland is paving the way in the wake of the change in the common law.

11 November, 2013

Using Trademarks to Silence Critics?

The law is a tool often fraught with controversy in its application, especially when this yields results contrary to the wishes of the public or a smaller segment of society more adversely affected. Most areas of law have examples of this, more recently some discussion has been raised about issues such as this relating to copyright. Intellectual property law does run the risk of being used selectively, either maliciously or through attacks to silence or influence others. In this writer's mind a statement made by Lord Denning in the famous case of Combe v Combe encapsulates well the idea in the use of legal protection, more specifically relating to intellectual property rights, even though the case itself pertained to promissory estoppel; "[the law] is a shield not a sword".

That is one snazzy logo
In a recent example of a potential misuse of the intellectual property rights afforded by trademark legislation is the company Canonical's attempt to influence a website operated by Micha Lee called Fix Ubuntu; a website which seeks to remedy alleged shortcomings of the operating system "Ubuntu". The name of the operating itself is a registered trademark owned by Canonical, having been filed in May 2013. Although the company's motives on the outset are purely to protect their trademark, which they are wholly entitled to do and have to do should they want to retain it, what lies underneath their initial steps can be questioned.

The use of trademarks (and other intellectual property rights) as a way to silence critics or to prevent active discussion as to the potential faults of company or a group is nothing new. The Church of Scientology has reportedly used its rights to attempt to take down websites, and Playboy has utilized its trademark rights to take down a website operated by the feminist group FORCE which parodied Playboy's website.

Canonical were not critical of what Mr. Lee had written on his website, but were mainly concerned about the use of their trademarked name and logo, as can be seen through the email sent to Mr. Lee:
"Unfortunately, in this instance we cannot give you permission to use Ubuntu trademarks on your website and in your domain name as they may lead to confusion or the misunderstanding that your website is associated with Canonical or Ubuntu. 
So, whilst we are very happy for you to write about Ubuntu, we request you to remove Ubuntu word from you domain name and Ubuntu logo from your website."
Prima facie the intentions of the company are wholly legitimate, as has been said above; however it has been pointed out that Canonical has been selective in its protection of its trademarks, leaving less critical or even promotional websites not associated with Canonical operational without hindrance. This by itself showcases a potential motive to use trademarks as a sword, not a shield.

The potential misuse of trademarks is a problem, and can be illegal if it hinders the rights of its users under freedom of speech provisions. Even though this writer does accept that companies can, and should, protect their rights, they should be more cautious in their endeavors to do so. Claims over infringement should be thought through and be legitimate; not merely an effort to stifle criticism or commentary.

Source: Ars Technica

08 November, 2013

Retrospective - Copyright in Names

The name of a company, much like the names of people, carries significant weight in the company's identity in the mind of the consumer and in the corporate sphere. Names like Apple, Microsoft and Google tend to evoke the image of certain services or a certain level of quality, making them incredibly important for the companies that carry them. As such, others can strive to use similar names to evoke a similar image, although in the connection of something entirely different. In most cases these names will be protected under various trademark provisions, or under the tort of passing off, but could a company's name be protected under copyright?

The case which dealt with this question was Exxon Corporation v Exxon Insurance Consultants International Ltd back in 1982. The case concerned the name "Exxon" used by the well-known fuel company. The name was registered as a trademark by the company, which formerly traded under the name Standard Oil (also Esso in other countries); of which a passing off claim was also put forth in the proceedings. Although the question of passing off was of full relevance in the case, of interest in this particular case is the fact whether the name "Exxon" would be a literary work under the then in-force UK Copyright Act 1956 or not. Subsequently Exxon Corporation sued Exxon Insurance Consultants International for copyright infringement and passing off for the use of the word Exxon in theirs.

Esso fuel - not to be eaten for breakfast
"Exxon" had been fully created by the company, being a word not existing prior to its creation in the English language. Evidence was put forth as to its careful creation and selection in this process through a large time, expenditure and labor investment in the word's creation, potentially indicating it is an original literary work within the Act. At first instance Justice Graham rejected Exxon's argument as to the word being a literary work, on the basis that "[i]t is a word which, though invented and therefore original, has no meaning and suggests nothing in itself. To give it substance and meaning, it must be accompanied by other words or used in a particular context or juxtaposition"; a position which the Court of Appeal fully accepted. 

The latter court did accept that the word was indeed original and originated from an author, due to the effort and research that was put into the creation of the word. Several cases were brought before the court in argument over both sides; however the Court particularly used the case of Hollinrake v Truswell in its considerations. In the case Lord Justice Davey set out what in his mind a literary work means:  "...a literary work is intended to afford either information and instruction, or pleasure, in the form of literary enjoyment", also mentioning a possible contribution to the stock of human knowledge. Lord Justice Stephens, in the present case, fully accepted this definition to be applicable under the Copyright Act 1956. The Court decided on the basis of this that the word Exxon would not afford any information or instruction, nor would it provide pleasure through literary enjoyment by itself; therefore not being a literary work under the 1956 Act and there was subsequently no infringement of copyright.

Clearly names are not afforded copyright protection by themselves,but they could be protected should they be a part of a larger piece, such as being mentioned in a book. That would not apply to the name in itself, but as a part of the larger work itself. Arguably the proper route to protect names would be under trademark or the tort of passing off, through which Exxon was afforded relief in the aforementioned case. The line of argumentation by Exxon was interesting, and goes to show just how flexible intellectual property law could potentially be.

03 November, 2013

Video Games and Copyright - 21st Century Art

Video games have surged to become the new pass-time of choice for millions of people, with sales of new titles like Grand Theft Auto V reaching a billion dollars in sales in its first three days alone. This clearly demonstrates just how important video games are in the sphere of commerce, and therefore the sphere of intellectual property. Even with its immense popularity video games have still been largely left out, at least in terms of specific protection, in most jurisdictions. In addition to this the sheer complexity of video games as copyrighted works presents some issues.

A recent study prepared for the World Intellectual Property Organization attempted to shed some more light on this matter by looking at a variety of jurisdictions and the protection they offer for video games. The study clearly is weighted towards civil law countries (included were for example Denmark, Germany, China and Russia), but common law countries such as Canada and the United States were included in the study.

Super Mario - a modern literary hero?
Copyright protected subject matter in video games shows exactly just broad the category itself is when dealt with under copyright. Three distinct elements can be found in video games, along with their sub-categories respectively; audio elements (e.g. speech, music, sound effects), video elements (e.g. images, animation, text), and computer code (e.g. game engines, ancillary code, plug-ins). In addition to the above any  literary works would be covered as well, including scripts, maps and characters. However the study does point out that "...the real issue, and one of the objects of this study, involves analyzing the legal protection of video games as single, unique works of authorship, since it is irrefutable that the individual elements included in video games can deserve independent copyright protection". The objective of the study is not to introduce possible legal reform or frameworks to protect video games, but to increase awareness to all possible stakeholders, through which potentially exact change or better protection for video games.

In Canada video games are not protected by themselves under the Canadian Copyright Act, but predominantly as a computer program. This would still include all the other copyrighted parts individually, and potentially as a literary work as well. In addition video games could be protected as a 'collective work' as a sum of several distinct parts by different authors. In the US video games would fall under 17 USC § 102, although not expressly mentioned, should it fulfill its specific requirements. Video games have shown some problems to the American judiciary, as is pointed out by the study, but can be said to fall under the protection of copyright.

Always pointing fingers
So this begs the question: why should there be specific protection for video games? Arguably the protection offered to them as it stands can be said to cause some uncertainty. If a video game is not protected as a whole, if individual elements are not deemed protectable the entire game's integrity as an artistic work would clearly be undermined, as the pieces making the game arguably constitute that very artistic expression as a part of a whole. Even in the case of Brown v EMA, the US Supreme Court saw that "[l]ike the protected books, plays, and movies that preceded them, video games communicate ideas-and even social messages-through many familiar literary devices (such as characters, dialogue, plot, and music) and through features distinctive to the medium (such as the player’s interaction with the virtual world)..."; clearly demonstrating this very point. Video games as a whole are a work which should be protected, not merely a collection of pieces which only merit protection by themselves.

The study is an intriguing and wide-scoped view of the sphere where video games currently reside, and do highlight some issues in a variety of jurisdictions, not to mention their protection in the world as a whole through inconsistencies in approaches. As the medium has become very prevalent, this matter should be addressed further and provided with explicit protection not as a mere collection of different forms of expression, but as a viable form in itself.

30 October, 2013

Goodlatte Innovation Act - Patent Trolls Addressed?

Patent trolls (often referred to as Patent Assertion Entities), the creatures that live underneath the bridge of innovation and profit, attempting to benefit from those who wish to use their patents, all the while never actually using the patents they own. Even if their appearance rarely matches those of the fairy tale variety, patent trolls are a big problem in the modern sphere of innovation and creation. Currently patent trolls take up a whopping 62% of all patent infringement claims; having gone up from a still high figure of 29% only two years ago. This can be acknowledged is a problem, and calls have been made to address this issue. Finally the first step has been taken in doing so.

In the United States a Bill was recently introduced called the Goodlatte Innovation Act, which seeks to remedy the changes introduced in the America Invents Act in 2011. According to the Bill's creator, Bob Goodlatte, the Act "...is designed to eliminate the abuses of our patent system, discourage frivolous patent litigation and keep U.S. patent laws up to date. These important actions will help fuel the engine of American innovation and creativity, creating new jobs and growing our economy".

The CEO of Patent Trolls Inc.
The measures the new Act takes is the introduction of the requirement to present information very early on in litigation, essentially justifying the infringement action. The action would then be assessed and should it not be deemed "substantially justified", the alleged infringing party would not have to pay the award sought by the plaintiff. The Act also introduces more stringent disclosure requirements, making the plaintiff submit more detailed information as to the patent being infringed, which specific claim of that patent is infringed, and how it is being infringed by the defendant. This clearly opens up the process and makes it more transparent for both sides, potentially impacting on vague threats over infringement resulting in quick settlements out of fear; exactly what patent trolls are seeking in their mode of operation.

The Act also introduces joinder provisions which link any parties with a "financial interest" in the patent case, clearly targeting shell companies which are used for infringement claims in lieu of the controlling company. This would make the parent companies liable for any fees which would result in frivolous claims, preventing them from side-stepping them while still benefiting from any awards that could be won by the shell company in their claim. In addition it introduces an exception for any infringements that might occur in consumer use or through manufacturers' use of the patent. The court would have the ability to stay those proceedings until the matter between the main companies is settled.

The Innovation Act is clearly something which the patent sphere has been yearning for in the US for the last couple of years, and with the aforementioned figures proving a clear direction in the abuse of patents through infringement claims, those actions need to be curbed. Although the Bill is a bipartisan creation, due to the divide in the current US government the Bill's passing is still in the air; however one could argue its passage is in the interest of both sides and the industry as a whole. Whether the Bill passes or any changes are made will be monitored by this vigilant writer, and I argue this Bill is an incredibly welcome change to the grand scheme of things.

Source: Ars Technica

26 October, 2013

Retrospective - Genericization of Trademarks

The name of a product can often be an incredibly strong identifier of a certain type of goods. Think of Aspirin, Cellophane, Yo-Yo, Escalator or even Heroin, and you automatically associate them with a particular type of good as opposed to a particular brand of goods. This is called the genericization of a trademark; where the trademark has become so ubiquitous of a type of good it loses its distinctiveness towards a particular brand of goods.

A pillow you can sleep on AND eat
A case which illustrated the genericization of a trademark was the case of Kellogg Co v National Biscuit Company. The case dealt with the sale of a product many are even familiar with today called 'Shredded  Wheat' For the uninitiated, this product is a breakfast cereal consisting of pillow-shaped wheat shreds, which was made by both companies. The product was initially made by a company called the Natural Food Company (which underwent a name change to the Shredded Wheat Company later on) since the early 1900s, which was subsequently bought by National Biscuit Company in 1930. The Kellogg's Company had made their own variant of Shredded Wheat since the late 1920s, although they had a similar product produced before that time. The National Biscuit Company subsequently sued Kellogg's for unfair competition for the use of the name 'Shredded Wheat' due to them producing a similar product and using the same name for that product.

In the case there were two considerations that the Federal Court of Delware had to decide on; one relating to the patent of the manufacture of the products, and the aspect of the use of the name. For our consideration the latter part is of more interest, however the patent does affect this particular point to an extent.

In the Court's decision they saw that the National Biscuit Company had no exclusive right to use the term 'Shredded Wheat' in selling their product. According to the Court the term is merely a descriptive one of a pillow-shaped wheat cereal, and the public recognize the name as an identifier of such products, due to Kellogg's ability to make the product (as the patent for the manufacturing method had expired in late 1912). The product had been sold since the late 1890s under the name of 'Shredded Wheat', and the term had not been trademarked until it was attempted to be trademarked by the Natural Food Company in 1905 - which was subsequently refused.

What makes this case peculiar is the inclusion of the name 'Shredded Wheat' as part and parcel of the patent for its manufacture. As the patent for the product's manufacture had gone into the public domain upon its expiry, so had the term which had been used to identify products which were manufactured in that particular way. According to the Court:
"It equally follows from the cessation of the monopoly and the falling of the patented device into the domain of things public that along with the public ownership of the device there must also necessarily pass to the public the generic designation of the thing which has arisen during the monopoly... To say otherwise would be to hold that, although the public had acquired the device covered by the patent, yet the owner of the patent or the manufacturer of the patented thing had retained the designated name which was essentially necessary to vest the public with the full enjoyment of that which had become theirs by the disappearance of the monopoly."
Eating breakfast can be complicated
In other words, the term 'Shredded Wheat' had become generic in the description of pillow-shaped wheat cereal products, and therefore could be used by anyone wishing to make and sell those products. Kellogg's had to merely distinguish its products from the plaintiffs so as to avoid any confusion, and through which a potential action in passing off. This was done through a distinctive look of the Kellogg's box, which did not resemble the one used by the National Biscuit Company, and the actual product differed both in size and appearance slightly from those made by the plaintiff.

The genericization of trademarks is a complex analysis of both the goodwill of the product in question (its reputation and imagine in the mind of the consumer) and other potential factors. It can be argued that even though the Court saw that the patent contained the use of the term 'Shredded Wheat', this would not be the case today. Arguably the use of the same term by Kellogg's could be an act of passing off the product, regardless of the manufacturing methods employed, as the plaintiff had been selling the product for over 20 years prior to Kellogg's adopting the name for its product. The plaintiff's inability to register the trademark would go against their action; however the motives of Kellogg's in the use of the name can be questioned.

22 October, 2013

Selective Parenting - Patents and Morals

The line between what is 'good' and what is 'bad' is often a very fine one, especially when dealing with humans and human development. The question of when is a fetus a 'person' is one which treads an area often incredibly contentious to some, evoking strong feelings about the sanctity of human life or when a human actually is 'human'. From a lawyer's perspective morals are a thing we're meant to avoid and exclude in our considerations - or in other words; morals have no place in the law. This applies to intellectual property as well, with similar considerations having been discussed on this blog, but a recent turn of events have presented patents with yet another conundrum.

A patent which was recently awarded to 23andMe, a company which deals with genetic testing whose proclaimed mission is to be "...the world's trusted source of personal genetic information", deals with the potential to identify certain characteristics (specifically phenotypes) in sperm and the female egg (if picked from a pool of donated ones for example) and then selecting the ones which will have the higher likelihood of producing the desired characteristics in the subsequent baby. To put into more specific terms: "[t]he recipient is allowed to make a specification of one or more phenotypes of interest in the hypothetical offspring". Traits which can be selected include height, eye color, personality characteristics and potential disease risks.

Little Ethan had no idea he'd been "selected"
As can be seen from the basic description of the patent, this has caused quite the uproar, with people calling the potential selection of babies' traits "unethical" and "treacherous", and understandably so. But one has to pose the question, as so aptly pointed out in the title of this article, do morals play a part in patents? This question, as can be guessed, does not have a straightforward answer.

The US patent legislation does not have an explicit provision for the rejection of patents that contravene 'morals' of any kind, leaving the possibility open for patents such as this, which might skirt the realm of moral objection, to be granted. The European view of this is slightly different, as the European Patent Convention dictates that patents cannot be granted for inventions "...which would be contrary to "ordre public" or morality". This has been adopted in the UK under the Patents Act 1977. What this moral standard is is something that would have to be assessed in each separate instance, as the Convention does not define this in itself. In Australia and Canada there is no morality requirement, much like the US. Even so, in the US decision of Lowell v Lewis, the courts saw that under the requirement of 'utility' (used in both the US and Canada) patentable "...invention[s] should not be frivolous or injurious to the well-being, good policy, or sound morals of society". Whether the selection of babies' potential traits would fall under this remains an unanswered question.

Some 15 years ago a patent application was made for combining non-embryonic cells and human cells in the creation of a "humanoid chimera", which was subsequently rejected by the US Patent Office on the grounds that "...inventions directed to human/non-human chimera could, under certain circumstances, not be patentable because, among other things, they would fail to meet the public policy and morality aspects of the utility requirement". Following the USPTO's reasoning here the selection of human traits could be considered immoral; however it needs to be noted that the combination of human cells and non-embryonic cells is far from the selection of potential traits in a baby from human reproductive cells. Since the aforementioned "chimera" patent was filed and rejected, there has been no action on the American legislature to deal with this issue.

Bebop and Rocksteady don't really comprehend chimeras and patents
There is no definitive answer to questions such as whether patents like the one which was granted to 23andMe should be allowed, and they do present a conundrum for people and medical professionals. Being able to at least influence the health and traits of your future offspring could yield a generation of babies with a much lower risk of hereditary disease or other health related issues. On the other hand it could open the avenue for selection leading to the discrimination of certain 'undesired' traits. Keeping the latter point in mind, how much further would genetic selection go from a normal selection for a mate to reproduce with? After all, we all pick our mates based on physical traits (and other traits subconsciously), at least initially, which do influence the traits of the subsequent baby. If a person sees certain traits in another to be undesirable, they will simply not reproduce with them. In this humble writer's opinion the law would have to be very wary with the overt restriction of subject matters that pertain to morals. This is a concept so subjective that the judiciary would have a hard time deciding on issues which do not have a clear answer as to their morality - what is moral to me could very well be immoral to the person next to me.

As of today 23andMe have not done anything with their patent, but the door is still open for them to develop methods to utilize this patent. Much like the recent genetic patent cases, this will an issue that will have to be challenged if it is utilized, and only then will the judiciary be able to decide whether trait selection is patentable or not. Morals aside, a generation of super  kids sounds both intriguing and terrifying at the same time.

Source: BBC News

18 October, 2013

Retrospective - How Much is 'Substantial'?

An essential component of copyright infringement in all of the common law is that the infringement, be it copying or other restricted acts, has to be done in relation to the work as a whole or a 'substantial' part of that work (Australia, UK, and Canada). The former is more than self-explanatory; however the latter has always been an abstract concept, as what can be deemed to be a 'substantial' amount can be anything between 99% of the work or a fraction of it. Due to this ambiguity the duty to define what a 'substantial' amount would be fell on the courts, being settled in the UK courts in the 1930s.

The defining case of what a 'substantial' amount is is Hawkes & Son (London) Ltd v Paramount Film Service Ltd, which concerned the song "Colonel Bogey". The plaintiffs in the case were the owners of the copyright to the song in question, a march written in 1914, often used in military settings. The song was subsequently used by Paramount Film Service in a newsreel of the opening of the new Naval College. The reproduced part of the march lasted for an approximate 20 seconds in the newsreel, with the entire march being roughly 4 minutes long. The incidental inclusion of the song was also considered; however our main focus would be on whether that 20 second snippet from the song could amount to a 'substantial' part of the song, therefore infringing the plaintiff's copyright.

The UK Court of Appeal tackled the matter after it was initially dismissed by Justice Eve at first instance. In the Court of Appeal's view the matter boiled down to assessing the copied material not merely based on quantity, but other factors as well, or as presented by Lord Hanworth MR: "...we must look into the question of degree and what was the nature of the reproduction". Agreeing with Lord Hanworth, Lord Justice Slesser further developed the Court's view on the matter:
"I agree with my Lord that this reproduction is clearly a substantial part of 'Colonel Bogey', looked at from any point of view, whether it be quantity, quality, or occasion. Any one hearing it would know that it was the march... [and] it is clearly, in my view, a substantial, a vital, and an essential part which is there reproduced."
Not that Colonel
Now what can be taken from Lord Slesser's view is that a 'substantial' part of a work can be any amount, not merely a large part of it through a purely quantitative analysis. His Lordship talks about recognition, and although one can argue that this view is a particularly weak one, one can say this would be much akin to what was stated in Harper & Row Publishers v Nation Enterprises; the "heart" of the work. The part which was copied has to be essential and vital to the work as whole, and recognition plays a part in that. For example a very  recognizable introduction to a song or a particularly memorable riff in the middle can be a substantial part if deemed sufficiently vital to the work as a whole.

As can clearly be seen what is 'substantial' is purely subjective and assessed by the court according to each instance, not providing a clear-cut rule which applies to all works. What is deemed 'substantial' in each instance will vary depending on the type of work in question, how it has been modified (if at all), and whether it is sufficiently important to the work as a whole. Under modern laws there are exceptions aplenty for a variety of uses, which did not exist under the UK Copyright Act 1911 at the time of the case, but the case still remains an important part of the common law system in copyright infringement.

15 October, 2013

Streaming TV Does Not Violate Copyright

In a time when services like Netflix and Hulu are showing the cable companies what's what through convenience, choice and pricing, one would imagine there would be no need for people to stream content outside of a wide array of services enabling you to watch almost what ever you want, when ever you want. This however, is a reality, and access to content is still tough for some either due to monetary or because of regional restrictions.

A website, Aereo, operates by receiving TV signals and then converting them into a different format, allowing subscribers to watch TV shows on-demand through their service via the Internet for a subscription fee. In this manner, the service is much alike Netflix; however allowing you to watch recently aired shows as opposed to entire seasons once on offer via Netflix. Aereo does allow you to watch live TV as well as programs which have been recorded once they have aired. Two media companies, Hearst Stations and WCVB-TV, objected to this and sued Aereo for copyright infringement.

In a recent ruling, the District Court of Massachusetts had to decide whether Aereo's activities would indeed infringe copyright under section 106; more specifically the ability to perform (i.e. transmit) the copyrighted content publicly. The Court in its assessment had to determine whether the service would be a remote recording service, much akin to a DVR in a home, drawing from the case of Cartoon Network v CSC Holdings (Cablevision), where a remote DVR service was seen to not infringe copyright as the recorded programs was not deemed a 'public performance'.

Some love streaming TV a 'bit' too much
Clearly one can draw also from the US view of fair use, more specifically time shifting, where a viewer can record a show to view on a later date and that act would not infringe copyright. Much like the case of Sony Corporation of America v Universal City Studios, the user selects which programs it would like to record on Aereo, therefore arguably time shifting the content they wish to view. The case at hand however did not touch upon this fact. Hearst was also unable to show irreparable harm resulting from Aereo's service, only citing the possibility of harm through the possible loss of cable subscribers and their bargaining position when dealing with cable companies; an argument which was rejected by Justice Gordon, stating that it would "...take several years to materialize".

The Court did consider other factors, but these remain the most relevant. In concluding the Court saw that Aereo did not infringe copyright through their service, although different courts in the US have seen this to be different. The plaintiffs have since sought the right of appeal from the US Supreme Court, attempting to have them finally decide this issue, due to other services like Aereo having been shut down in New York and California. The Supreme Court, should they choose to take the case on, would have to decide "...whether the performance of their copyrighted programming via Aereo is "public" and therefore prohibited by the copyright law, or if Aereo is engaged in tens of thousands of "private" performances to paying strangers".

Source: Gigaom