Radio Musings - My Contribution to BBC Radio on IP and the Right to Repair Movement

This writer recently had the honor and privilege of being interviewed by the BBC World Service for their Business Daily program on the business implications regarding IP on the right to repair movement and its future.

You can find the piece here: https://www.bbc.co.uk/programmes/w3cswgrc

The right to repair movement is incredibly interesting, and undoubtedly something that will impact companies and consumers in the near future. While the exact IP implications of any future legislation is still unclear, you can bet that it will have some effect, potentially even dramatic, on companies' IP and potential innovation.

A New Intelligence - UK House of Lords Releases Report on Artificial Intelligence

Artificial intelligence is absolutely a hot button issue these days, particularly with a focus on what's coming in the near and more distant future and AI's potential impact on people's lives (both in the good and the bad).  This writer is very interested in AI, having recently published an article discussed the same in relation to copyright, and in that vein was quite thrilled with the release of the House of Lords' report on AI last month. The report is very detailed and discusses many facets of the technology and its potential impact, but what potential recommendations does the report give from a legal perspective?

The Report (titled AI in the UK: ready, willing and able?) considers the development, implementation and impact of AI in the UK in the future, and recommends that the government take certain actions sooner rather than later. This article will endeavour to focus on some of the more interesting, potentially IP specific issues, and general law considerations.

A big point in the Report is the mitigation of risks associated with AI. Largely this relates to any assumed liability for an AI's actions, negligence or malfunction, which, as the law stands, is not covered. The Report does recommend that "…the Law Commission consider the adequacy of existing legislation to address the legal liability issues of AI and, where appropriate, recommend to Government appropriate remedies to ensure that the law is clear in this area. At the very least, this work should establish clear principles for accountability and intelligibility". Without accountability, one could imagine AI skirting liability, and causing potential issues for those wishing to pursue any damages resulting from an AI's decisions.

The consideration of liability ties into the matter of whether AI should be treated the same as humans, or have separate legal or non-legal entity status. For example, should IP rights be awarded to the AI, or the AI's creators (more on which here)? Both paths have their issues, but the Report fails to address this aspect in detail.

Another point of contention in the Report is the amassing of data by large corporations, which would therefore, in a way, control the development of AI and the marketplace for the same. The Report encourages that "…publicly-held data be made available to AI researchers and developers" to facilitate AI development for smaller players. Even so, it does highlight a need for "…legal and technical mechanisms for strengthening personal control over data, and preserving privacy" in the light of AI; however, this has been, at least arguably, largely achieved through the introduction of the GDPR this month.

A human future without TPS reports

In an attempt to kerb any misuses of data, or its monopolisation, the Report recommends that "…the Government, and the Competition and Markets Authority, to review proactively the use and potential monopolisation of data by the big technology companies operating in the UK". Clearly this might create a data competition framework, where companies with large swathes of data could be prevented from merging due to competition issues, or simply to prevent the centralization of requisite data for AI creation and/or operation.

The Report does discuss the IP issues with the development of AI in university settings, and the commercialization of research. As was discussed in the Hall-Pesenti Report last year, licencing of technologies could be problematic, and both the Report and Hall-Pesenti have sought to mitigate this. In this vein, the Report recommends that "…universities should use clear, accessible and where possible common policies and practices for licensing IP and forming spin-out companies", and that a policy should be drafted for Universities to enforce the same. Even so, Universities should be able to protect the know-how relating to AI, but within a reasonable framework.

Although not discussed in the House of Lords' report, the Hall-Pesenti Report also highlights a need for the reform of copyright in relation to data published in research, which would infringe copyright. This is problematic since "[t]his restricts the use of AI in areas of high potential public value, and lessens the value that can be gained from published research, much of which is funded by the public". In terms of reform the report suggests that "…the UK should move towards establishing by default that for published research the right to read is also the right to mine data, where that does not result in products that substitute for the original works". In terms of the development of AI this makes perfect sense, but when that data relates to human individuals, particularly in the light of the GDPR that just recently came into force, we should be cautious for giving AI free reign over all data. A balance needs to be struck with the interests of individuals, but the robust development of AI, provided the developments are for the public good.

As one can imagine, AI is a very difficult and potentially thorny subject, and there will be without a doubt many pitfalls we will end up in and will need to play catch-up with. Nonetheless, the potential of the technology could outweigh these issues, but maybe this writer is too optimistic in terms of AI's future.

Plainly Winning - Australia Wins Plain Packaging Challenge at the WTO

Plain packaging seems to be a nigh inevitability in the current legislative climate, especially with countries pushing for stricter laws surrounding cigarettes and their marketing. This blog has discussed the challenge against the Australian Tobacco Plain Packaging Act 2011 in the WTO and in Asia (discussed here and here) by a number of countries, but the conclusion of those disputes has been coming for some years now. While similar initiatives have been introduced in a number of countries, including the UK, the disputes seem to have put a damper on those efforts, if nothing at least for the duration of the cases.

The WTO dispute (including others made by other nations) concerns the TPP Act 2011, which introduced measures to standardize tobacco product packaging, including changing the color to a boring olive green, and prominently displaying graphic warning labels. The arguments presented against the legislation were that it presents a technical barrier to trade under the Agreement on Technical Barriers to Trade (Articles 2.1 and 2.2), and infringing various provisions under the TRIPS Agreement, for example giving other Member countries more or less favorable treatment (Article 3.1) or creating an obstacle for the registration of a trademark due to the nature of the goods it is used for (Article 15.4). Finally, the Act allegedly gives imported products less favorable treatment under The General Agreement on Tariffs and Trade (Article 3.4).

As discussed above, while the judgment hasn't been released yet, sources at the WTO have claimed that the WTO has sided with the Australian government's argument on the measure qualifying as a legitimate public health measure. The restriction of branding, therefore, does not infringe the above Agreements, and is appropriate for the aim sought by the legislation.

The details of the case will be discussed more when the decision is released in July, but it still remains an important signpost in the development of plain packaging legislation worldwide.

Without a doubt, the tobacco companies and the relevant countries will appeal the decision, as has been indicated by British American Tobacco.

'Quitting clearly had no benefits', Alan thought

According to the WTO, a barrier to trade would amount to, for example, any methods that would give domestically produced goods an unfair advantage. Additionally, countries have the prerogative to "...adopt the standards they consider appropriate — for example, for human, animal or plant life or health, for the protection of the environment or to meet other consumer interests". Even if the standards are brought in to protect these legitimate aims, they still cannot be "...applied in a manner which would constitute a means of arbitrary or unjustifiable discrimination between countries where the same conditions prevail or a disguised restriction on international trade".

This writer does not claim to be a master of international trade law, but would argue that the application of a plain packaging standard to protect human life and health would not amount to a barrier on trade, as the standard would apply equally to Australian and foreign tobacco producers, and is clearly not an arbitrary or unjustifiable measure to do so. Plain packaging evens the playing field for all tobacco producers, but also seeks to stop the starting of a smoking habit, lowering the amounts of tobacco products used in that particular country (Australia showing a drop of 6% in smoking rates in adults, and the reduction of sales of tobacco products by nearly $500 million after the law's introduction).

In the end, plain packaging will be a hard fought, long battle, which will clearly go on for years to come. The tobacco industry is also in a state of transition from the old business models to new ones, including vape products, but the core remains the same and the brands equally valuable to that business. This writer is wholly for plain packaging, but its impact on IP will be a milestone for not just tobacco, but for other possibly harmful products in the future.

Source: Sydney Morning Herald

A New Era - What Does the Donald Trump Presidency Potentially Mean for IP?

Now that the dust has settled in the long and arduous process that is the American presidential race, it is time to look ahead to the future and the possible implications of the Donald Trump presidency. While it can be appreciated that the next 4 (or even 8) years will be ones of change one way or the other, this writer is not concerned with the wider implications, but only of those impacting intellectual property law. The 45th president's particular focus on this area of law still remains very murky; however, his position has been stated in some amount of press and campaign materials, which will form a basis for this discussion.

In his own policy manifesto for his campaign, Mr Trump set out that he will "...use every lawful presidential power to remedy trade disputes if China does not stop its illegal activities, including its theft of American trade secrets - including the application of tariffs consistent with Section 201 and 301 of the Trade Act of 1974 and Section 232 of the Trade Expansion Act of 1962". Clearly his approach echoes largely a trade-based plan, rather than the change of laws and regulations surrounding IP in the United States. Arguably, these are quite strong deterrents for the infringement of intellectual property rights in China, but these measures have had little effect before due to the massive presence of Chinese manufacturing in the world stage (although the country has taken significant steps forward to better enforce IP rights). Recent changes to the Chinese IP law landscape have possibly mitigated the current issues highlighted by the Trump campaign, but this will undoubtedly not deter him should the president want to go after China in a more direct fashion.

Aside from legislative or policy changes, his 100 day plan encompasses withdrawal from the Trans-Pacific Partnership and the renegotiation of bilateral trade agreements, many of which will touch on IP in one way or another. This will have drastic effects on US trade relations, but the implications for IP will be minimal.

The face of an uncertain future for IP

Some have argued that, per his close ties to the entertainment industry, that copyright regulations would be tightened and copyright enforcement made stricter, with higher sentencing and easier claims by rightsholders (in this writer's thinking anyway). Similarly, his position on copyright might impact the regulation of the Internet, with broad-ranging implications should it be used as a weapon to combat against those who infringe copyright online. Overall Donald Trump has been quite quiet in his views on intellectual property and what his concrete plans are during his presidency.

This can be compared with Hillary Clinton's Initiative on Technology & Innovation, which set out a myriad of action points in this sphere, but specifically targeted copyright as a sub-point. In her initiative she set out to "...modernize the copyright system through reforms that facilitate access to out-of-print and orphan works, while protecting the innovation incentives in the system.  It should also promote open-licensing arrangements for copyrighted material supported by federal grant funding". Her plan seemed to focus more on accessibility than enforcement, but echoes vagueness, as expected in a political campaign. Similarly, she aimed to take on patents with "...reforms to the patent system to reduce excessive patent litigation and strengthen the capacity of the Patent and Trademark Office". Clearly this was to reduce frivolous patent litigation by patent trolls, but more particular reforms were left to be sorted if she were ultimately elected. Mrs Clinton was overall much more up-front with her plans and vision for IP, but even so it left much to decipher as to what might actually happen, rather than what might.

As one can appreciate the future developments of this coming presidency are unknown, and while candidates often give indications as to their stances or policy intentions, these don't necessarily stick once they reach the Oval Office. This writer will remain optimistic, but does wonder whether a more pro-rightsholder position will become the norm, with a clear reduction in fair use and other legitimate uses of copyright materials, especially in an online environment. Odds are the trajectory that IP legislation was already headed will most likely remain the same irrespective of who the president is, as a swooping overhaul of this would lead to too much uncertainty and possibly a negative impact in IP and innovation as a whole (with the rapid pace of technological development making things even worse if not kept up with). While the media has calmed down after the election, it will surely be quite the next 4 years to come.

Parallel Infringement - Parallel Importation of Rebranded Cigars Okay, Says Australian Full Federal Court

Tobacco packaging has been a popular topic in the last couple of years, including on this very blog (articles on which can be found here, here and here), particularly in the remit of plain packaging. Whether you dislike the initiative or support it, one can still appreciate the sentiment behind it. What the legislation has done is caused severe issues for products like cigarettes that heavily rely on these distinctive markings to indicate their own brand and distinguish its features from the rest. In Australia the law has been in effect since 2011 under the Tobacco Plain Packaging Act 2011, which means all tobacco products must conform to the requirements of the law in their packaging. With that said, could one repackage purchased tobacco products and subsequently resell them in Australia? The Full Federal Court took this question on after an appeal from the Federal Court whose decision was handed down in late 2015.

The case of Scandinavian Tobacco Group Eersel BV v Trojan Trading Company Pty Ltd dealt with the sale of tobacco products in Australia, specifically cigars manufactured by STG Eersel. The company, in relation to the sale of these goods, also holds several trademarks for cigar brands, including Café Créme (No. 761892), Henri Wintermans (No. 179680) and La Paz (No. 643779). The cigars were manufactured in Belgium, Holland and Indonesia, using packaging incorporating the aforementioned marks. The same cigars are packaged differently for the Australian market in order to conform to the plain packaging legislation mentioned above, which is done abroad similarly to the branded products. Trojan is an importer and supplier of cigars and other tobacco products, supplying, among other items, STG's cigars to the Australian market from overseas, repackaging them to conform to the same legislation. At first instance, Chief Justice Allsop saw that Trojan had not infringed STG's trademarks by repackaging their branded products; however, the decision was appealed by STG.

The Full Federal Court firstly sought to establish was whether the trademarks mentioned above had been infringed by Trojan through their parallel importation, i.e. were STG's marks used "as a trade mark" under section 120 of the Trade Marks Act 1995 and if section 123 (allowing for the use of a trademark if the mark has been applied to the goods prior to or with the consent of the rightsholder) of the same Act applied to those uses.

Lewis now doubted the legitimacy of his cigarettes

What constitutes use "as a trade mark" was initially set out by the Court as "...[a] use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods". This use still has to be assessed within its context, including how the marks are used, as "...not every use of a mark which is identical with or deceptively similar to a registered trade mark infringes the right of property which the proprietor of the mark possesses in virtue of the registration".

The Court concluded that "...a person who, in the course of trade, imports and sells goods to which a registered mark was applied by its owner at the time of manufacture will have used the mark as a trade mark". Their conclusion relies heavily on the impact of parallel importation on the original manufacturer, and the existence of section 123, which, if this were not the case, would be largely redundant. This position follows previous Federal Court case law quite well, even with the existence of foreign cases accepting the opposite position.

As the Court had determined that the importation of the branded goods was indeed a use of the marks, they moved onto the question of whether the use amounted to an authorized use under section 123 of the Act. The section is engaged when, in the past or prior to the use under section 120, the rightsholder (or someone authorized by them) has applied the mark onto the packaging of the goods, which are subsequently sold onward by the third-party (i.e. used "as a trade mark" as discussed above). What seems to remain key here is the reapplication of the mark onto the new packaging by Trojan, which, according to the Court, should be covered by the section through a much wider interpretation of it. Ultimately what the Court concluded was that Trojan were protected under section 123 and did not infringe STG's trade marks.

Finally, the Court did briefly discuss issues surrounding a passing off claim and Australian consumer protection laws, and deemed that Trojan had not passed the repackaged cigars off as STG's, nor had they been in breach of any consumer legislation in their repackaging efforts (specifically deceive or mislead consumers).

The case is a very interesting illustration of the possible perils of parallel importation, and shows the differences in the approaches in the UK and Australia (and, to some extent, the EU). As the world and trade have become more and more global, parallel importation will be a bigger issue for the future. Even so, the Full Federal Court's approach is very sensible, considering the packaging environment that exists in the country for tobacco products. It is unclear whether the decision will be appealed to the High Court, but this writer thinks, after two successive losses, STG might have to just accept defeat.

Source: IP Whiteboard

Beyond the Horizon - Intellectual Property Law in Space

Even with the recent success of the Mars Exploration Rover program and the Juno mission, mankind is still quite far from a life outside of our own little blue planet. While we look up at the sky in anticipation, hopefully one day being able to colonize a far-away place (for better or worse, dependant on your perspective), we have to consider the ramifications of this endeavor in terms of the law. 129 nations so far have signed the Treaty on Principles Governing the Activities of States in the Exploration and Use of Outer Space, which dictates that outer space is the common province of mankind, and that all activities conducted therein should be done for the benefit of humanity, not a single nation. That being said, this writer is not concerned with the broader picture, but likes to hone down on the things that matter, namely intellectual property. Therefore, what is the possible position in intellectual property law in our interstellar future?

As there is not much concrete legislation dealing with this area, one can only speculate as to what it might be; however, this writer will aim to share his thoughts on this as best he can on the basis of what exists already.

The closest mankind has reached out into space and inhabited for longer periods of time than hours or days is the International Space Station. The primary legal framework for the ISS is the International Space Station Intergovernmental Agreement, which sets out a "...long term international co-operative frame-work on the basis of genuine partnership, for the detailed design, development, operation, and utilisation of a permanently inhabited civil Space Station for peaceful purposes, in accordance with international law". Further, according to Article 5 of the Agreement, all registered parts of the ISS and its personnel are governed by the laws of their country, which adds a layer of complexity for IP in space. Article 21, however, discusses IP specifically in the context of the ISS. It states that "...for purposes of intellectual property law, an activity occurring in or on a Space Station flight element shall be deemed to have occurred only in the territory of the Partner State of that element's registry". This would indicate that any inventions or findings made would be protectable (given favorable national legislation), although this could still be disputed. The Article also touches on infringement, only allowing for the recovery of damages in one European country, rather than all of them (provided infringement has happened in more registered parts of the ISS).

We're not the only ones seeking our fortune in the stars...

The Treaty on Outer Space also acknowledges the jurisdiction of nations over their registered materials and people, but in the context of Article 1 and 2 of that treaty, all exploration in outer space is for the benefit of all mankind, and no materials or places (including the Moon) can be appropriated by any nation as well. This raises a concern when trying to claim IP rights in findings or materials, and arguably no nation or person could claim them under the treaty.

Most nations do not have provisions dealing with IP in space, or any related issues. The United States, however, has enacted a provision that deals with inventions in space, specifically 35 USC 105. It sets out that "Any invention made, used or sold in outer space on a space object or component thereof under the jurisdiction or control of the United States shall be considered to be made, used or sold within the United States for the purposes of this title, except with respect to any space object or component thereof that is specifically identified and otherwise provided for by an international agreement to which the United States is a party". This would mirror the international agreements above, where US national, space station modules etc. are treated as being under US jurisdiction. One could still envision issues, as discussed above, when it comes to the agreements the US is a party to, but it seems probable that most nations would treat intellectual property in a similar fashion in future legislation.

There remain some issues that do require clarification on a dawning Space Age. As set out in the report of the Workshop on Intellectual Property Rights in Space in 1999 (poignant even after over 15 years) that "More attention should be paid to the protection of intellectual property rights, in view of the growth in the commercialization and privatization of space-related activities... [and to develop] a view to enhancing international coordination and cooperation at the level of both the State and the private sector. In particular, the possible need for rules or principles covering issues such as the following could be examined and clarified: applicability of national legislation in outer space; ownership and use of intellectual property rights developed in space activities; and contract and licensing rules". This writer does agree, although reluctantly, since the inevitable commercialization of space materials, inventions and findings will be a reality in the coming decades, and this needs to be both protected (to incentivize that exploration and invention) yet regulated to retain a high level of openness and freedom for all of mankind and the Universe. For a more in-depth look into other issues, one should consult the WIPO paper on Intellectual Property and Space Activities, which, although a little dated, is a great summary of outstanding questions even today.

Space is indeed in many ways the final frontier, and the law will have to catch up with this new world eventually. While there is no pressure to develop the law in relation to space activities, in the coming decades this will become more and more pertinent, and intellectual property will be at the forefront of this development due to the value of technology, invention and exploration in the field (especially to corporations and other private ventures). It remains to be seen how we treat this future, but one can only hope it'll be a future that holds sharing and equal benefit above individual profiteering.

Rights Resurrected - The Use of Abandoned IP Rights

Intellectual property, much like many other forms of property, can become either useless or worthless to a rights holder, even if that would not be the case as it stands when the rights are let go or forgotten. A good example of this is the recent re-emergence of Crystal Pepsi; a clear Pepsi cola drink that was sold during the 1990s. Pepsi had registered the name Crystal Pepsi as a trademark, which it promptly abandoned when the drink failed to become popular. Due to a surge in demand, Pepsi reintroduced the product, and would, arguably, use the previous goodwill associated with the product to protect it (and they did successfully register the trademark again late last year). This begs the question, can you use any abandoned rights you may have in your goods or services, or any other works?

Copyright

Copyright, by its nature, is automatic, and requires no real action on part of the copyright holder. This means that a lack of use does not impact the rights given to the author of any given work, and thus copyright cannot be 'abandoned' through inactivity. In the US the situation is slightly different, and although rights are afforded through common law, one should still register their copyright in order to fully benefit from the federal protection afforded to authors (although a lack of registration does not lead to an 'abandonment' of rights).

In the UK there is no express provision for the abandonment of copyright, and therefore there is no real case of copyright revival, but one could argue that the copyright holder, in ignoring his rights and allowing for the free use and sharing of his works, could be 'abandoning' their rights to the works. One still has to appreciate that the copyright holder can at any time reassert their rights, and thus the copyright in the works is newly resurrected (although, as evident from the above, was never gone to begin with).

Our cousins in the United States do accept the abandonment of copyrights in works. The current law was explained in Capitol Records, Inc v Naxos of America, Inc, where the Court of Appeals set out that "...[the] abandonment of copyright requires (1) an intent by the copyright holder to surrender rights in the work; and (2) an overt act evidencing that intent". Arguably this could be achieved through a statement or the issuance of a public domain licence, or even through another act that shows a clear intent to abandon the rights you have in any given work (although inaction as to the works' protection would not necessarily be enough). It is unclear whether the rights holder could relinquish their rights post-abandonment, but arguably the parties who have used those works during the period of abandonment would clearly be protected.

Trademarks

As illustrated by the above example involving Pepsi, it is very possible to abandon a trademark and re-apply for it (i.e. an alternative), potentially re-appropriating that mark. What is more relevant in the context of trademarks is the potential loss of goodwill, especially in relation to passing off as a common law right, rather than a right under the Trade Marks Act 1994.

Rodney refused to abandon any invention (Source: Gunshow)

In the case of Star Industrial Co Limited v Yap Kwee Kor the Privy Council considered this question, and reiterated the existing tangible connection between a company and its goodwill; however, the latter cannot exist in a vacuum outside of the company's business activities. If a company, with intention, abandons the goodwill in a given product or company, it cannot use it after the fact. This is not as clear as that, however, as in Maslyukov v Diageo Distilling Limited Justice Arnold saw that "...the test is whether the relevant business has been abandoned so as to destroy the goodwill. Mere cessation of business is not enough... [a] cessation of production of goods or provision of services does not necessarily mean that there has been a cessation of business capable of sustaining goodwill". What his judgment seems to illustrate is a need for an active component of abandonment, rather than just a mere stoppage in trading or production, indicating clearly and without a doubt the company wished to abandon all goodwill in the relevant goods or services.

One can 're-appropriate' goodwill in goods even after the end of their production, provided that some actions have been taken to preserve that goodwill (e.g. conducting business in the area of commerce, retention of the subsidiary or corporate entity that held those rights etc.) and no active efforts have been made to truly abandon those rights. This would enable the party to assert those rights under common law in passing off, as if those rights had never been 'abandoned'.

Patents

One can abandon a patent, or an application for a patent, at any time. This would entail either not paying the requisite maintenance fees on the patent (automatically lapsing the patent), or otherwise surrendering the rights to the invention. This is not, however, the end, as it is possible to seek the restoration of the patent within 13 months of it lapsing, although only in the case of 'unintentional' lack of payment of fees. Once the patent has fully lapsed the rights to the patent expire, and there is no way to reclaim those rights (unlike in copyright or under passing off).

As is clear abandoning the rights in your intellectual property might not pay dividends, although does give the rights holder the flexibility to avoid additional legal costs or fees associated with the rights and asserting them. Nevertheless, it still might be possible to relinquish the rights you have abandoned, in very limited circumstances. This writer is a staunch believer in the retention of ones rights, but has to concede that this might not be the best option for every rights holder.

The Origin of IP - Historical Protection of Intellectual Property

The protection of your rights through intellectual property law is not by any means a modern-day quirk, stemming from hundreds of years of (varying levels of) protection or acknowledgement. Many of us who work with IP within the common law are more than familiar with the Statute of Anne in 1709, which offered the predecessor to today's protection of copyright, and the 'renaissance' of monopolizing intellectual efforts outside of pure monetary exclusion, and the Statute of Monopolies a few decades before it. Even so, one could imagine that there would be more historical, potentially ancient considerations containing IP protection, which begs the question: where are the historical origins of IP protection?

Copyright

As said above, the Statute of Anne was truly the first manifestation of the modern regime of copyright protection in the UK, and subsequently all over the common law, due to its wide-spread adoption within England's (former) colonies. However, the Statute was not the only incarnation of copyright protection in the world up till that date.

According to historical records, one of the first forms of protection for copyright works (as one could argue they were) was in 500 BC when chefs in Sybaris, a Greek colony in Italy, were afforded a monopoly for a year on the creation of specific recipes. Although, indirectly at least, copyright works, this suggests that it could be one of the first instances of copyright protection (more on which can be read here in a modern context). Similarly a few hundred years later, Vitruvius, a Roman author, successfully convicted some poets who had copied and passed off others' works as their own.

Some ancient thinkers were ahead of their time

Both the Romans and the Greeks, especially in the context of comedies, distinguished the appropriation and copying of works by other authors as theft ('furtum'). However, they still allowed for the compilation of two or more plays into one, and even criticism of other works, which were seen as corner-stones of the betterment of knowledge, science and overall the retention of intellectual output.

These examples do not showcase a concrete systematic protection of copyright during ancient times, but illustrates that, even though not protected by law, the unique expression of authors was seen as highly valuable and thus something worth protecting. One can imagine the roots of our current system stemming from ideologies that the Greeks and Romans held dear, and this writer, for one, would like to think this was one of the first steps into the foray of IP in human history.

Trademarks

Trademarks, as many of you will be aware, serve as an indicator of the origin and quality of goods and services, providing an observant consumer the goods and services they have duly paid for. The history of registered trademarks in the UK dates back to the 1800s, with Bass Brewery's iconic triangle being the very first one to be registered under the Trade Marks Registration Act 1875. Even so, our historical predecessors had already used trademarks to great effect before the Act's introduction.

In Ancient Egypt, Greece and Rome, potters often marked their pottery with distinctive signs (referred to as 'potter's marks'), showing who had made it, and undoubtedly, signalling the craftsmanship associated with that particular item and its maker (examples can be seen here). Although these marks did not serve the same purpose as modern trademarks do, one could argue that, even though they were not a legally protected badge of origin, they were akin to their modern counterparts. Seemingly these marks were never enforced, but one can imagine they potentially were a deciding factor for those who would purchase the items.

Patents

The more modern concept of patents derives itself from the 1470s, when the Italian City State of Venice granted 10 year patents to anyone who would make a new and ingenious contrivance in the city of Venice, and notified the State Judicial Office of their invention. The Statute of Monopolies 1623 followed some 150 years later, but the Venetian initiative paved the way for patents as we know it today.

The UK, however, was not entirely outdone by their Italian counterparts, and patents did exist before the enactment of the Statute of Monopolies. Letters of patents could be issued, and duly were, by the Monarchy, and one of the first recorded instances was in 1331. Although not only a way to protect inventions, also conveying monopolies in corporations, titles and other royal grants, they still illustrate the importance of inventions even over 100 years before the enactment of the Venetian patent law.

Conclusion

IP clearly has a long and colorful history, and this only highlights its importance not only in today's world, but for years to come. Whether you are a believer in the common ownership and free dissemination of information, or the protector of the monetary incentives many aspiring (and successful) artists, musicians, inventors and creators often need, you have to appreciate the value that IP gives to all of us. Without our Greek, Roman and Venetian predecessors, who knows what IP laws would look like today.

Retrospective - Groundless Threats in Intellectual Property Law

A big aspect of intellectual property law is the possible threat of infringement, even when you might not know it. With strong legal protective measures comes a great deal of responsibility in wielding that capability, especially in the light of competition. IP can be used to stifle those aiming to compete with you, as well as those who blatantly want to benefit from your hard-work and intellectual output. A balance has to therefore be struck, and certain legal tethers have been placed to restrict the unwarranted use of IP rights without due cause. Groundless threat provisions exist in relation to all registrable IP rights (trademarks, patents and designs) under the Patents Act 1977, Trade Marks Act 1994, Registered Designs Act 1949 and Copyright, Designs and Patents Act 1988. What amounts to a groundless threat is not entirely clear under all of the provisions above (which act fairly similarly to each other), however the High Court endeavored to answer this at the cusp of the 21st century.

The case of Brain v Ingledew Brown Bennington & Garrett (No 3), decided in 1997, dealt with Patrick John Brain, who, in the early 90s, set up a consulting business in an effort to exploit new technologies and inventions all over the world, particularly in the Far East. Upon meeting Jørgen Jensen, the Head of Chemistry at Risø National Labratory (the second defendant), a Danish research company, the pair struck a deal to utilize a patented technology developed at Risø by a number of individuals called "Wet Oxdiation" (e.g. patents US5053142A and EP0284754) in foreign markets. The pair started a company called Intox Corporation Limited, and successfully marketed the process to a company in Canada, which included passing on technical documents attained by Mr. Jensen. Risø found out about Intox Corporations' activities, and initiated court proceedings against Mr. Jensen in Denmark. During the proceedings Risø also instructed UK lawyers, Ingledew Brown Bennington & Garrett, to pursue Intox Corporation. Mr. Brain argued that, in correspondence between him and lawyers at Ingledew, several threats were included, and as a result, the projects incorporating the above technology did not come to fruition, causing him a great deal of monetary loss. He then initiated proceedings for groundless threats under the Patents Act 1977.

Under the above Act, in section 70: "...a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) may... bring proceedings in the court against the person making the threats".

Rory was aggrieved by threats made in relation to his cap

Justice Laddie, handing down the judgment of the High Court, had to therefore first determine whether Mr. Brain was a 'person aggrieved', allowing him to bring forth his claim. For a person to be considered as such there has to be clear damage, not just hurt feelings. As Justice Laddie described it: "...a trader's chosen route to exploitation of his product or process is interfered with by the threat, that is damage in the broad sense and makes him a person aggrieved". Reliance on the threat, and subsequent action causing detriment, is key, not just annoyance or mere displeasure. Even if loss is prevented or mitigated in the event of a threat does not mean the person cannot be seen as a person aggrieved. What the person has to show is "...that his commercial interests are or are likely to be adversely affected in a real as opposed to a fanciful or minimal way". The Court saw that, as the threats were made to Mr. Brain directly, that he would fall under the definition of a 'person aggrieved'.

Justice Laddie then had to assess what the meaning of the letters were, and whether they actually constituted a threat. This assessment has to be done "...in accordance with how they would be understood by an ordinary reader", and what the initial impression would be to a reasonable addressee. In the light of the three letters discussed as a whole, Justice Laddie saw that their purpose would be reasonably understood as a threat to initiate patent proceedings.

Arguments as to the available defence under section 70(4), preventing any proceedings under section 70 for "...a threat to bring proceedings for an infringement alleged to consist of making or importing
a product for disposal or of using a process" (defined in section 60), failed, as the correspondence targets a much broader base of infringement, not just the ones exempted under section 60. Justice Laddie found that the defendants had made groundless threats against Mr. Brain, and ordered an inquiry into damages.

The law in relation to groundless threats has since moved on, and more leeway has been given in terms of bringing information as to any existing IP rights to the attention of the potentially infringing party. The Patents Act 2004 made significant changes to section 70, however the above does still apply to all groundless threat cases, giving the courts the basis for their determination for a cause of action under these provisions.

Music Lost - The Beatles, US Fair Use and Estoppel in the UK

The music industry is a hugely cut-throat business, with the 'little guy' often being dominated by the big companies that control the market and access to the more lucrative avenues within that industry. Due to this drastic imbalance contracts can often be one-sided, take it or leave it types of negotiations, which can lead to contracts, or negotiations for those contracts, that are waged with mainly the interest of the record company as the vocal point. A very interesting case discussing the relationship with UK & US law, utilizing the latter as a fair use defense in the former, and bringing forth an argument on promissory estoppel in relation to contractual negotiations was handed down by Justice Arnold early last month. This writer, in shame, will admit he has not gotten around to discussing the case as promptly as he wanted, but decided it was high-time to address this case in more detail.

The case in question is Sony/ATV Music Publishing LLC v WPMC Ltd, which dealt with the Beatles' first concert on US soil, performed at the (now defunct) Washington DC Coliseum in February 1964. The concert was filmed, although with a very low production value, subsequently being shown in movie theaters across the country to capitalize the new Beatlemania sweeping the country. Through a complex set of events the defendant, Iambic, acquired a copy of the video of the concert, which was then passed onto Iambic's successor WPMC after Iambic went bankrupt. Christopher Hunt, who was the director and sole owner of both Iambic and WPMC, wanted to make a documentary based on the concert footage and sought a licence from the copyright holder to the Beatles' music, Sony/ATV. After long negotiations no license agreement was finalized, but a preliminary version of the documentary was made by Mr Hunt, and advertised on a website for the UK market. Sony/ATV found the website and took Iambic (and then WPMC) to court for copyright infringement.

The Beatles; an outfit of curiosity even for newer generations

The first issue in the case was a rarity in the world of IP; whether a contract had been concluded and if not, whether Sony would be still held to it through proprietary estoppel in their representations that Mr Hunt had relied on. During the negotiations for a synchronization license, emails exchanged between the parties were always headed "SUBJECT TO CONTRACT" or a similar wording, implying that no final contractual relationships have been concluded no matter what the content of the emails themselves. Although Sony/ATV had nearly agreed to a license with Mr Hunt, even concluding some emails with the sentence "...[I am] pleased to advise that I have now received approval for the following non-exclusive use"; however these 'agreements' were made with reservations, such as seeing the final documentary prior to accepting the license for the documentary.

Through their communication, viewed as a whole, Justice Arnold. who presided over the case, saw that no contract had been concluded. As all communication was headed as "subject to contract", which clearly indicated to both parties that no contract had been set pending certain agreed upon terms. This was important as to the estoppel claim, as there could be no reasonable reliance due to this express wording within the communication. Had the above phrasing not been included there potentially could have been a claim under estoppel.

Finally, Justice Arnold had to settle the issue of fair use under US law. As discussed previously on this blog, US fair use is an assessment of four factors (under 17 USC § 107): (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

As the documentary is a commercial work, it would have to be transformative in nature (i.e. adding something new with a different purpose of character) to benefit from fair use under the first factor. Due to the inclusion of the concert in its entirety, and a small amount of commentary accompanying it, Justice Arnold deemed the work to be only partly transformative.

The second factor was agreed upon by all parties as being an expressive work falling under the remit of copyright, adding to a possible finding of a lack of fair use.

Under the third factor, as the use of the copyright material was substantial (as the whole work was used) Justice Arnold did not agree that the use was within reasonable limits. The aim of the documentary could have been achieved by using less, which WPMC did not do, and therefore was a substantial copying in the light of fair use.

Finally, even in the absence of submitted evidence, Justice Arnold saw that the documentary could usurp the market for the copyright holder, as they could have very well used the footage to create a documentary of their own. As there might be a market for audiovisual works of the Beatles (with this writer thinking there definitely is), the documentary would also replace the provision of those types of works from the copyright holder, depriving them of the benefit of the audiovisual works. Also, Justice Arnold decided that, as there is a clear market for synchronization licenses, the market for those licenses would be damaged, as they would not necessarily be sought if one is not needed in all instances. He then concluded with a finding of no fair use.

Ultimately Sony/ATV succeeded in their infringement claim; however, the case is still pending in the US, and whether a different finding there would change the nature of the case remains to be seen. One would imagine the decision will be appealed, and this writer would be curious to see proprietary estoppel to be challenged higher up in the UK courts.

Source: IPKat

Conflicted Owners - Intellectual Property Law and Ownership of Property

Saying something is truly yours is a rare thing these days, especially with the seemingly impossible future of house ownership in a lot of cities (especially for us here in London), and people often derive a huge sense of achievement and gratification from the fact that they've bought something and it is finally theirs to keep. Intellectual property law has rarely concerned itself with the ownership of physical things, but protects the underlying works rather than the tangible object itself, with the exception of counterfeit goods, for example. That said, there often can be confusion among the less IP-savvy of us with this distinction, but after a recent news article this misconception might not be too far off anymore. This begs the question: can intellectual property law interfere with your ownership of your things?

In a recent letter to the US Copyright office, John Deere, one of the largest manufacturers of agricultural, construction and forestry equipment, potentially put in doubt the ownership of individual's or companies in those fields over the equipment they have purchased. John Deere's comments come in the wake of an inquiry into the Digital Millennium Copyright Act, potentially allowing for the circumvention of technological measures, currently prevented under 17 USC 1201, under certain classes, for example software relating to cars or other vehicles or equipment. This exemption would allow for the breaking of software protection to aid in the diagnosis and repair of vehicles using that software, especially when it comes to non-licensed, cheaper mechanics than those licensed by John Deere, or even the modification of said software for your own purposes.

John Deere's position regarding the proposed changes is quite strong: "Circumvention of the TMPs for Class 21 will make it possible for pirates, third-party software developers, and less innovative competitors to free-ride off the creativity, unique expression and ingenuity of vehicle software designed by leading vehicle manufacturers and their suppliers". Admittedly, allowing for tinkering and free access to software does provide risks (malfunctioning of the vehicle etc.), but allowing for cheaper maintenance and possible customization potentially outweighs those issues. As for piracy, traditional copyright would still protect the software from being used by competitors or 'pirates', since the exception would only apply to repair, modification and improvements and not misappropriation or its blatant copying.

Brick was trying to find the software on his car, but couldn't

How does copyright impact, at least in John Deere's argument, ownership of your vehicle? Their argument is that "[a] vehicle owner does not acquire copyrights for software in the vehicle, and cannot properly be considered an "owner" of the vehicle software". From a plain understanding of copyright law, the argument runs true; when you purchase a piece of software, you don't 'own' the software itself per say, but garner a licence to use that software. Even with that in mind, the end-user does, and should, have rights in their use of the software, albeit not be allowed to make illegal copies of it and distribute it as they wish. John Deere acknowledge this: "...the vehicle owner receives an implied license for the life of the vehicle to operate the vehicle", which is true, at least in terms of the software. One could say it prevents the proper use of the car or its auxiliary uses (should the software fail or be irreparable due to age or lack of repair facilities), but one has to remember to distinguish ownership of the tangible from the intangible. Your car is still your car; the software isn't.

The United Kingdom does not have a similar set of broad protective measures against the circumvention of technological protection, although section 296 of the Copyright, Designs and Patents Act 1988 does prevent an individual from using devices to circumvent such protections (for example using 'mod-chips' to play illegal copies of video games on their consoles). Software is very much protected in the UK under copyright (more on which can be found here), and alleged misuses of vehicle software would very much be protectable against.

Copyright is a complex beast, and it does prevent one from enjoying the things you buy in the manner than some would hope to (i.e. as if they own the right to distribute the content etc.), but does not prevent you from using it in a legitimate, allowed fashion. However, do other IP rights prevent you from using your hard-earned items?

Trademarks apply to the sale of products, aiming to identify those of a certain quality or pedigree, and don't lend themselves well to the interference of ownership. Once you buy a bottle of Coca-Cola (or any brand, per your preference), the company cannot prevent you from using it to trick your siblings, or to make a mess; qualities it would possibly not enjoy associating with its brand. There has been an instance where Deadmau5, a popular electronic music producer, was told by Ferrari to remove unwarranted modifications to his Ferrari Spyder (such as changing the logo to a jumping cat one), and even though, on the face of it, it can seem like an interference with his right to use his own property, one could say the issue was probably more contractual than IP related.

Patents, similarly to trademarks, only really apply in a commercial context, and don't provide an avenue through which a patented item could be prevented from being used in a particular way. Even if your vacuum cleaner has a patented method of collecting refuse, you can still vacuum your pets without a worry or fear of interference from your vacuum brand. Any illegal copying or misuse of patented material would clearly be covered, which steps beyond the bounds of everyday use of said items.

That being said, John Deere and the other parties rallying against an exception to circumvent car software are not, as the article cited here would say, interfering with your ownership of your own items or seeking to do so. The protection of your software has been a long-standing ability within the world of IP, and their aim is not to prevent you from using your tractor that you have rightfully purchased. Whether the exception is introduced or not remains to be seen, but this writer would like to assure you your tractor is still very much yours to keep, at least for now.

Source: Wired

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

The Intellectual Property Act 2014 - Thoughts

After a myriad of changes in recent years, more specifically in copyright (more on which on this very blog can be found here, here, here and here), one can seem overwhelmed by the constant updates and tweaking intellectual property law has gone through. Just as things have seemed to settle down new changes have to be discussed, although this writer will wholly admit he is a bit late to the punch on this one (as the law was passed over a month ago). Nevertheless, a new piece of legislation has been passed, the Intellectual Property Act 2014, which is coming into force in a matter of weeks, prompting this writer to expand on its potential impact prior to it becoming solid law. The Act focuses on designs and patents, which shall be discussed separately below.

Designs

By far the bulk of the legislation, designs have been needing some revamping and adding to, even though they are quite well protected under the current Copyright, Designs and Patents Act 1988 and the Registered Designs Act 1949. As explained by the UK IPO: "Design law is often considered messy, complex and confusing, and small businesses, who don’t have the time or resources to disentangle it, can lose out. The IP Act will introduce a number of new measures and make some changes to the law in order to make design law simpler, clearer and more robust".

In terms of unregistered designs the Act changes the definition of a design from (in the CDPA 1988) "...the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article" to one which omits the phrase '...any aspect of'. Although a seemingly minute change, the law now reflects in a more concrete fashion what is considered a design and what isn't as a part of the legislation, whereas should you leave the phrase in it makes things a bit more ambiguous. This clearly reflects the legislature's attempt at making things more straightforward, and arguably they have done so, at least on the face of things.

The Act also changes the default ownership of an unregistered design, allowing for the designer to be the owner of their design should it not be made in the course of their employment. The Act omits the phrase "...in pursuance of a commission or" from the previous provision in the CDPA 1988, which clearly gave ownership to those who commissioned the work, even if rights were not intended to be conferred upon the creation of a design. This will undoubtedly lower any confusion or potential issues of ownership, though does lower the protection of the individuals or entities which commission a work unless specifically assigned to them as a part of the commission contract. Ownership is also extended to persons who reside in the European Union (i.e. a qualifying country) at large, or conduct business in the Union regularly. Previously this was much more narrow under the CDPA 1988.

Finally, in relation to unregistered designs, the Act creates exceptions for infringement of a design right for private acts, experimentation and teaching, and over ships and aircraft. This exception is more relevant to the new form of infringement, which was created to protect registered designs.

Nothing gets a designer's creative juices flowing like new legislation

All of the above changes largely apply to registered designs as well, with some minor differences; however the most important, and discussion inducing, change has been the addition of the aforementioned infringement of registered design rights. Should a person or a business copy a design (without the consent of the rights' holder), doing so intentionally and with knowledge or have reason to believe the design is registered, they can be held liable for infringement. The offense also extends to businesses selling, importing, exporting, or uses items which they know or have reason to believe have copied a registered design. Prima facie the offenses seem quite broad, and with a defense of only reasonable belief to the items' registration status, can be potentially quite wide-reaching, especially in relation to businesses selling or exporting goods. An infringer can face up to ten years' imprisonment and/or a fine. This can be said to be a welcomed change, in that designs have lacked a proper offense provision, which trademarks and copyright have had for years.

In the light of the new offense the Act does allow for third parties to use registered designs, should they have done so in good faith and prior to the work's registration. This is assessed under the light of proper measures taken to ensure the design is or was free to use, preventing others from using this provision as merely a guise to protect themselves from infringement.

Finally, the Act allows for design registrants to finally apply for one single design registration within the remit of the Hague Convention registration system, streamlining and enabling quicker, more efficient registration of designs in a more international scale. 

Patents

The Act makes minor, yet important changes to the current patent regime, explained by the UK IPO in better terms: "The IP Act will introduce a number of changes to patent law, which simplify complex areas and make it cheaper and easier to use and defend patents. This will be beneficial for both patent holders and third parties". 

The IP Act also adds a provision which will add specific powers allowing for the inclusion of the Unified Patent Court as a part of the patent protection scheme in the UK. This will allow for a much quicker, more unified approach to processing any claims of patent infringement, as it spans the entire 25 Member States of the EU in the scheme. In addition to the Unified Patent Court the Act also allows for the sharing of unpublished patent applications with other patent offices through the UK IPO, which would allow for potential issues to be processed quicker and unclog the international system more. 

Conclusion

Overall the IP Act makes some welcome changes, and at least attempts to internationalize and streamline both patents and designs; something which has been, at least on the patent regime, long needed. Whether the new design infringement provision will cause issues will remain to be seen; however this writer for one believes it will strengthen the registered design scheme and potentially deter cases where infringement would be obvious. The Act will come into force in October, giving relevant parties enough time to prepare for any changes that affect them.

Source: Eversheds

Retrospective - The Modern Concept of Breach of Trust in Intellectual Property

As was discussed on this very blog some five months ago, trust is imperative in the sphere of invention. With billions of dollars being put into the research and development of products, services and intellectual output, maintaining the veil behind which the future monetary incentive lies is highly important. Without this companies and individuals would have a hard time gaining from their innovations, and it could potentially cause stagnation within technology and creative output as no real reason exists for the investment. The previous article touched on the early days of breach of trust in such instances where such a fiduciary relationship is broken, but such actions have since evolved and stand far from their origins in the mid-1800s.

Often thought of as the modern basis for breach of trust is the case of Coco v A N Clark (Engineers), decided in 1969 in the High Court of the United Kingdom. The case concerned Marco Paolo Coco, a man who designed an engine to be used in mopeds, subsequently entering into negotiations with Clark for the manufacture of the aforementioned engine. During these meetings Mr. Coco provided the defendant information relating to the engine under the expectation that they would manufacture it once the negotiations had ended. The negotiations broke down eventually and no contract was entered into by the parties. After this the defendant started to develop their own moped engine, the design of which resembled Mr. Clark's engine quite vividly, leading to Mr. Coco arguing the defendant had purposefully broken down the negotiations in order to develop its own engine based on his design; subsequently seeking an interim injunction to prevent the defendant from using the information he had provided them for the production of their engine.

Orville had also developed a moped with more "fantastic" results

In the end the High Court had to decide whether Clark had breached the trust between them and Mr. Coco. Justice Megarry, in his judgment, saw that three elements had to be satisfied for there to be a breach of trust: "First, the information must itself... have the necessary quality of confidence about it; secondly, that information must have been imparted in circumstances importing an obligation of confidence; [and] thirdly, there must be an unauthorised use of that information to the detriment of the party communicating it". Whether the information does possess the quality of confidence was well defined by Lord Greene in Saltman Engineering v Campbell Engineering: "The information, to be confidential, must, I apprehend, apart from contract, have the necessary quality of confidence about it, namely, it must not be something which is public property and public knowledge. On the other hand, it is perfectly possible to have a confidential document... which is the result of work done by the maker upon materials which may be available for the use of anybody; but what makes it confidential is the fact that the maker of the document has used his brain and thus produced a result which can only be produced by somebody who goes through the same process". The latter two requirements are an assessment of whether a reasonable person would see the circumstances are importing a quality of confidence, while the claimant would then have to give evidence as to the unauthorized use of that information and the detriment which resulted from that use.

Having considered all of the aforementioned requirements the claimant's action failed, and no injunction was therefore granted. In Justice Megarry's decision the claimant's case was weak at best, and his Honor saw that where information was given to the other party in the expectation that the claimant would be paid, the Court saw that an injunction would not be an appropriate remedy in that instance. Justice Megarry did, however, order that Clark would have to pay a royalty of 5 cents per engine to the claimant should he intend to manufacture those engines.

The Coco case perfectly illustrates the potential loss and problems which could result from a breach of trust should the other party abuse that information for their own benefit. Although the case failed, it still remains an important hallmark in assessing whether a breach of trust has occurred even today all over the common law. 

Intellectual Property Law and Sports

As an avid fan of a number of sports, this writer for one understands the importance which it carries, not only to individuals who enjoy watching and rooting for their favorite teams and players, but for the organizations who benefit from fans engaging in their sport. Even though sports in general enjoys a massive following all over the world, its relation to intellectual property can allude the layman, and just how much teams and players can have invested in their particular organization or brand.

Probably the clearest example of intellectual property and sports teams being intertwined is their ownership of several trademarks, relating undoubtedly to their name, logos and the like, if possible to register. Such an example is the football club Manchester United, who own trademarks in their logo, name and their respective variations. Issues relating to trademarks and football clubs have gone as far as the European Court of Justice in Arsenal v Matthew Reed, only adding to the clear importance these types of marks carry for teams.

Even the equipment which is used in a variety of sports can be patented. Examples of this are old patents for a basket ball from the 1920s, and a patent for the manufacture of a baseball bat from 1902. As one can imagine, incredibly popular sports such as the above, can produce quite the monetary incentive to lock down the production of a certain essential piece of equipment. In addition to the equipment used in games, apparel used can be, and has been, patented. Basketball shoes and football pants have been patented in the early part of the 20th century. Much like the equipment themselves, the sale of apparel can be quite lucrative, with basketball shoes alone yielding over 2,7 billion dollars under Michael Jordan's name. Something which often does not come to mind as a patentable subject matter in relation to sports are the rules of the sports themselves. The rules of American football were patented in the 1980s, and the game ping-pong was patented as early as 1902.

On a more specific level intellectual property can even protect the personalty of athletes. These are what are called 'personality rights', which exist in the majority of common law countries for example. In the US, States have independent laws which protect personality rights, as opposed to a nation-wide federal law, such as in California. These rights protect the image of a celebrity, which includes the image of professional athletes in sports. This protection can extend to protect the person's image being used without authorization for the sale or promotion of goods or services.

A much lesser known, and more recent, instance of where one can see intellectual property law and sports collide, is in relation to tattoos (something which has been discussed more extensively on this blog before). A very minor issue, and something which will not be noticed by many, but goes to show just how nuanced the relationship between law and society can be, even when talking about sports.

As you can very well see, intellectual property has its place even in sports. What has been said above is only a slight overview, with much more to discuss on a more in depth scale, so if this piques your interest, please do read more about the subject.

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.