That Sounds Good - Do You Have IP Rights in Your Own Voice?

Even though many of us don't like the sound of our own voice (although some way less than others), it is still a very personal aspect of who we are and often a very unique identifier. It can also be very valuable, with some voice actors being incredibly memorable for their characters and thus very compelling through just their voice for viewers (for example, Michael Buffer and his iconic "Lets Get Ready to Rumble" phrase). With that in mind, do you have rights in your own voice?

Copyright

The starting point would be protection under copyright, which clearly would protect any voice acting done by an individual. One could argue that daily, non-performing speech would not be protected, since it's not, on the face of it, a performance of a copyright protected work. Speeches and other oral forms of expression would also be arguably protected, affording the speaker rights in their work, and thus in a way their own voice.

The Copyright, Designs and Patents Act 1988 also affords certain performers' rights under sections 182-184, which, among other things, make it illegal to record a live performance without consent or to make copies of recordings without consent. This has been considered by the UK Court of Appeal to potentially apply to performances by deceased artists in the case of Experience Hendrix LLC v Purple Haze Records Ltd (which dealt with performances by the late Jimi Hendrix). Clearly one could protect their voice through the performances themselves, but their voice in isolation is probably not protected.

In the US voice actors have been confirmed to have certain rights in their works. In Midler v Ford Motor Co., the singer and voice-actor Bette Midler asserted her rights in her voice, which was imitated in an advert by Ford. Although the Court of Appeal stated that "…A voice is not copyrightable. The sounds are not 'fixed'", they did afford her rights under common law for appropriation of identity. They highlighted that "…[a] voice is as distinctive and personal as a face. The human voice is one of the most palpable ways identity is manifested". Arguably this is correct, since just a person's voice in the abstract is not necessarily protectable, but the underlying work, including the recording of that work, could be.

Similarly in Waits v Frito-Lay Inc., the US Court of Appeal determined that a radio commercial that imitated the voice of Tom Waits, a famous singer with a very unique voice, amounted to appropriation of publicity rights under California law and false, implied endorsement under federal law.

Copyright does offer the widest set of rights in one's voice, particularly in the United States, which would be used to protect a distinctive, well-known voice, but it would be unlikely that someone without the notoriety would succeed.

Trademarks

Beyond the protection given to recorded voice works as above, could you register a voice as a trademark to protect it?

Peter loved the sound of his own voice - maybe a little too much

Before the introduction of the new EU trade mark Implementing Regulation in late 2015, all EU trademarks had to be graphically represented so as to be able to be registered. This was difficult for sound marks since they could not be graphically represented in a clear and precise way. Examples of failed sound marks would be Tarzan's yell and the famous MGM Lion's roar (although the yell and the roar were successfully registered in 2006 and 2011 respectively). Applications can now include a sound file as a part of the application, which clearly paves the way for the registration of sounds, potentially including a person's voice.

Sound marks can also be registered in the US, which has had a much longer period of acceptance towards more unconventional trademarks. As per the decision in Re General Electric Broadcasting Co. Inc., so long as the sound creates an association for a particular good or service in the mind of the listener, a sound can be registered as a trademark (discussed in more depth in the case of re Vertex Group LLC). The arrangement, however, needs to be definitive.

Clearly it is possible to register a person's voice as a trademark, but only for a particular phrase or arrangement that is clearly defined in the application, for example, through a sound file. This wouldn't confer rights to your voice in general, but could protect some aspects such as catch phrases.

Patents

Although patents don't offer a clear way to protect a voice, they do offer some interesting applications in terms of voices overall.

In a US patent (US20130151243) Samsung have claimed an invention that can be used to modulate voices. Based on this writer's reading of the patent (wrong or not), the module takes in a voice, processes it for particular properties, and then modulates the voices when used, in a way mimicking the voice it's been listening to. A similar Chinese patent (WO2017059694) looks to imitate a source voice altogether.

As is clear patents are not the way to protect anyone's voice, but as AI and technology develops they will be in the forefront of protecting the technologies that might just copy our voices one day.

Conclusion

Overall protecting one's voice seems to be quite tricky, which leaves someone quite exposed should imitation software and other methods of recreation become more widely used, for nefarious purposes or not. Even so, especially without an image right like in the US, one would hope that the law will see a change , as someone's voice can be an iconic part of their person, which should be protected in some way. Legitimate uses, for example for parody and satire, should of course be allowed, but the misappropriation of one's voice should be prevented. How you would do this, this writer isn't exactly sure, but one could look for direction from the US cases and legislation discussed above.

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

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

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

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

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

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

Google AdWords can be questionable at times

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

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

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

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

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

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

Source: K&W IP Whiteboard

Plain and Simple - Australia Wins Plain Packaging Challenge in Asia

Plain Packaging, the initiative to effectively remove all identifying markings (one could say the only distinctive features in tobacco), is a debate that has been raging on for years, with both sides voicing very valid concerns. Australia has been on the forefront of plain packaging, passing the Tobacco Plain Packaging Act 2011 over 5 years ago, and the Act has not been without its challenges. Currently there still are suspended proceedings at the WTO, initiated by Ukraine, over the legality of the Act (discussed, prior to the suspension, here); however, this has not been the only battleground the Act has been fought over in.

In a recent action in the Permanent Court of Arbitration, Philip Morris Asia Limited (Hong Kong) challenged the legislation under the 1993 Agreement between the Government of Australia and the Government of Hong Kong for the Promotion and Protection of Investments, which sets certain rules for both countries in relation to foreign investments from those countries. These are, inter alia, that "[e]ach Contracting Party shall encourage and create favourable conditions for investors of the other Contracting Party to make investments in its area" and that "[i]nvestors of either Contracting Party shall not be deprived of their investments nor subjected to measures having effect equivalent to such deprivation in the area of the other Contracting Party except under due process of law". The latter of the two is the more important argument, as Philip Morris argued that Australia infringed this Article (Article 6) through its plain packaging law. Additionally Philip Morris argued that the law did not treat their investment fairly and equally (as mandated by Article 2(2)).

Without discussing the merits of Philip Morris' case, Australia argued a lack of proper jurisdiction for the Court of Arbitration, as, among other factors, Philip Morris Asia had only acquired the full shareholding of their Australian counterpart after the introduction of the legislation, leaving them fully aware and accepting of the potential negative influence on their investment by the law's passing.

The Tribunal decided on this late last year (with the decision not having been published as of yet, due to confidentiality reasons, which this writer was waiting for) that it did not have jurisdiction to hear the case, and dismissed Philip Morris Asia's case.

The decision, albeit very low in substance of the intellectual property laws that underpin plain packaging, is an interesting one, and a worthwhile illustration of the power of international trade agreements. The Transatlantic Trade and Investment Partnership (TTIP) and the controversy surrounding it only makes this more pronounced, which could, potentially, afford similar routes for corporations to challenges laws that make like difficult for them. In any event, this writer found the case interesting, although underwhelming in its substance, and would have liked to see things debated in more length as to the actual law and its possible infringement of the Agreement.

Source: Sydney Morning Herald

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.

Taking a Break - Kit Kat Decision Issued by ECJ

For all lovers of confectionery goods the name Kit Kat will undoubtedly be a familiar one, even without its highly memorably slogan. The iconic British chocolate bar has been around since the 1930s, and above all else what many will remember is its shape, comprising of five individual chocolate covered wafer 'fingers' connected at the base by a lawyer of chocolate. As such shapes can be protected through intellectual property law, but whether Kit Kat's design is truly distinctive enough to be protected as a trade mark, has been a contested question here in the UK for several years, ultimately being referred to the European Court of Justice by Justice Arnold nearly two years ago in Société Des Produits Nestlé SA v Cadbury UK Ltd [UK High Court of Chancery]. As a result the ECJ handed down its judgment in September this year.

The case of Société Des Produits Nestlé SA v Cadbury UK Ltd [European Court of Justice] dealt with an application for a trademark by Nestle for a three-dimensional representation of the Kit Kat bar, omitting the embossed words "Kit Kat" from the top of the chocolate bar's individual fingers. After the application's publication Cadbury submitted an opposition against its registration, arguing a lack of distinctive character, initially having the mark rejected by the UK Intellectual Property Office, ending in Nestle's appeal to the UK High Court.

Justice Arnold submitted three questions to the ECJ prior to his later judgment applying the Court's consideration.

The ECJ started by answering the second question posed by Justice Arnold. What was asked was seen as "...whether Article 3(1)(e) of Directive 2008/95... must be interpreted as precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result".

After a very brief consideration of precedent, especially relating to the prevention of any registration monopolizing a technical solution or functional characteristics, the Court determined that "...Article 3(1)(e)... must be interpreted as precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, provided, however, that at least one of the grounds for refusal of registration set out in that provision is fully applicable to the shape at issue". What remains key is the refusal of registration based on a single ground under Article 3(1)(e), even if, predominantly, the shape does not fall under all of the grounds. Public interest in the strict enforcement of the grounds of refusal was important in the Court's view, as a contrary position would allow for the monopolization of the very subject matter the Article seeks to disallow. What is uncertain is how this applies to a shape as whole and its respective components. Would a shape be negated as a whole if it contains a part that would fall under the grounds (negating the registrability of the whole design)? Arguably, this would be the case, but the decision leaves this unclear.

Terry's take on Halloween was more diabetes inducing

The Court then moved on to the third question, which it saw as asking "...whether Article 3(1)(e)(ii)... under which registration may be refused of signs consisting exclusively of the shape of goods which is necessary to obtain a technical result, must be interpreted as referring only to the manner in which the goods at issue function or whether it also applies to the manner in which they are manufactured". As the wording of the sub-section does not discuss the manner of manufacture for the goods, the Court had to decide whether it implicitly does so. They quickly decided against this, setting out that "...that Article 3(1)(e)(ii)... must be interpreted as referring only to the manner in which the goods at issue function and it does not apply to the manner in which the goods are manufactured". The inclusion of manufacturing methods, in this writer's mind, would encroach onto the territory of patents, and how a product is made does not designate its origin; the primary function of trademarks.

Finally, the Court proceeded to question one, which was set out as "...whether an applicant to register a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3)... must prove that the relevant class of persons perceive the goods or services designated exclusively by that mark, as opposed to any other mark which might also be present, as originating from a particular company, or whether it is sufficient for that applicant to prove that a significant proportion of the relevant class of persons recognise that mark and associate it with the applicant’s goods".

Again, considering precedent in brevity, the Court saw that "...in order to obtain registration of a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3)... regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company". What the question therefore requires is that the proprietor of the mark has to prove that the relevant class of people perceive their mark, in this case "Kit Kat", to only originate from them and not other proprietors selling similar goods, even if the goods contain other registered trademarks (or a design, in this case). The onus would be on Nestle to show that the shape of the chocolate bar, regardless of the inclusion of the words "Kit Kat", would be indicative of the source of the bar by itself (i.e. a distinctive feature). The Court did omit Justice Arnold's question on reliance on the mark, focusing on their 'perception' and 'recognition' of the mark. Arguably reliance does not necessarily follow the two, but this writer thinks, in the Court's mind, their intention is to include reliance through perception, as seeing and knowing a mark in conjunction with another would still carry some weight in the purchase decision, effectively creating a level of 'reliance'.

The case has since been referred back to the High Court for ultimate decision, but this writer thinks, based on earlier considerations, that the shape of the Kit Kat bar might not be enough to distinguish it from other similar ones to allow for the registration of the mark. The ECJ's answers to the questions seemed unsurprising, however leaving many things uncertain or somewhat unanswered, but give more nuanced guidance, which is never too abundant in today's legal sphere. How the case will be applied in the future is uncertain, but hopefully this application will manifest even more clarity as a result.

Source: IPKat

Words Hurt - Disparaging Trademarks and Free Speech Collide

Freedom of speech or expression has often been a sore point of contention for those wishing to protect a full freedom of expression (i.e. no restrictions on speech whatsoever) and those who want to limit it within a certain space to ensure a more harmonious society (i.e. the prevention of hate speech, for example, but allowing for a broad freedom of expression nonetheless) - although the former surely does not prevent a harmonious society as a concept itself. With that in mind, intellectual property is no exception, after all, most ways of expression yourself and/or marking your goods to distinguish them often tread the line of good taste and offense in order to further their respective goals. Especially with trademarks there are certain limitations on what you can use as a registered trademark, but does a limitation on your use of said marks prohibit your effective freedom of speech?

This issue was largely brought to light in the recent Washington Redskins trademark litigation, where the offensiveness of a trademark potentially disparaging native Americans was a heavy point of contention, and the Redskins were subsequently stripped of their trademark (although the loss of their mark is not as straightforward as that) due to the disparaging nature of the mark. However, the Redskins never brought a claim under the First Amendment of the US Constitution.

The matter of free speech was brought into the limelight regarding the refusal to register a trademark after a US Court of Appeals decision in Re: Simon Shiao Tam where the Court affirmed a prior decision to refuse the mark "THE SLANTS" due to its offensiveness against people of Asian descent. The mark related to the name of a rock band called The Slants, fronted by Mr. Tam (including several other members of Asian descent as well). The Court also promptly concluded that there was no impairment of Mr. Tam's First Amendment rights, following the precedent set in Re: Robert L. McGinley some 30 years ago, where the United States Court of Customs and Patent Appeals saw that "...the PTO's refusal to register... [a] mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, [the mark's holder's] First Amendment rights would not be abridged by the refusal to register his mark". Arguably, prima facie at least, a refusal of registration does not prevent the use of a mark, but it does, however, prevent its effective protection under trademark law and can cause issues for the proper monetization of a mark in other commercial endeavors should the holder's venture become more successful than its own field allows it. Albeit this does not affect the use or 'expression' in the mark, but mainly the commercial aspects surrounding the mark.

Peter never was a man of consistency

What makes the decision in Re Simon Shiao Tam interesting are the remarks made by Justice Moore, although not dissenting, after the majority's decision to reject the mark (after which the Court of Appeals issued an Order for an en banc hearing to decide the issue). In her Honor's mind: "...it is unquestionably true that trademarks are protected speech under Supreme Court commercial speech jurisprudence" and that "...the government has conceded that “[t]rademarks are a form of commercial speech.”. Because a trademark identifies the source of a product or service for users, it is protected commercial speech". This writer will wholly admit that his knowledge of US trademark law is not as extensive as he'd hope to be, but the argument presented here seems a tad flimsy. The use of a mark in commerce, on the face of it, is not expressing a point or a view, but merely the distinction of a product or service from other similar ones. The more 'offensive' a mark does not correlate to a higher form of expression necessarily, even if it's to utilize or bring to light racial issues. Yet, the US courts will know more of the substantive side of things, so this writer will not address any other jurisprudential issues here, and awaits the en banc decision in Re Tam with interest.

Are there any freedom of expressions issues in the UK in relation to the same subject matter? Under the Trade Marks Act 1994 a mark can be refused registration if it is "...contrary to public policy or to accepted principles of morality". This would, arguably, cover any racial slurs or other content deemed offensive in the public's view (such as the name The Slants, potentially). Also, under the Public Order Act 1986 speech inciting racial hatred is not allowed, although the freedom of expression is sacrosanct under the Human Rights Act 1998. Arguably freedom of expression is narrower than the one protected by our cousins across the pond, and would not allow for the use of negative language even in trademarks, provided the mark is against public morality (and negative racial connotations, even if hidden behind good intentions, would probably be). This view was firmly illustrated by the UK Intellectual Property Office's decision in Basic Trademark SA's Trade Mark Application, where a mark was refused under the Trade Marks Act's morality provision, and was seen to not infringe Article 10 of the European Convention on Human Rights (and therefore, the Human Rights Act above). The case does, however, highlight the need to balance both interests: "...[the] right to freedom of expression must always be taken into account without discrimination under s3(3)(a) [of the Trade Marks Act] and any real doubt as to the applicability of the objection must be resolved by upholding the right to freedom of expression, hence acceptability for registration". The UK does have more questions in terms of freedom of expression and registered trademarks, but the balancing of both interests does take it into account even in this area of law.

All-in-all the line between the protection of a legitimate freedom of speech (or a more open freedom, such as in the US) and the curbing of possible moral outrage is a fine one, and both interests should be balanced in an assessment of the registrability of a mark. Nevertheless, it is hard to draw a strict comparison with EU and US rights due to their big differences, but both jurisdictions do see a clear need for the allowance of expression even in the world of trademarks. This writer for one, as said above, awaits the en banc decision of the US Court of Appeals in the Tam case, and it will be interesting to see whether trademarks are a true form of expression under US law, and therefore protected by the First Amendment.

Source: World Trademark Review

Supreme Goodwill - UK Supreme Court Addresses Jurisdictional Goodwill

In today's business world reputation is everything when selling your goods or services to the masses at large. Goodwill, the inherent reputation of your goods or services, can easily overreach beyond the mere confides of countries, continents, or even the solar system. With this in mind, how far a business' goodwill can, and does, reach is hugely important, especially when it comes to someone passing off their goods or services as a famous brands' equivalents. What makes things even more complex is the nature of the online world we are all a part of, which has a wholly borderless reach (excluding geo-blocking), and in which anyone can pass themselves off as someone or something else without much difficulty. This begs the question: how far does your goodwill extend, even if you have no or very little presence in a given territory, due to your goodwill online? The Supreme Court of the United Kingdom endeavored to answer this question only a little over a month ago.

The case in question was Starbucks (HK) Limited and another v British Sky Broadcasting Group PLC and others, which concerned the use of IPTV, or in more simplistic terms, the streaming of TV via the Internet using dedicated hardware to do so, very much like cable TV but in an online environment. Starbucks (HK) and PCCW Media Ltd, two corporate members of a larger group (referred to as "PCCM" in the judgment as a whole), which operated an IPTV service called "NOW BROADBAND TV", subsequently renamed to "NOW TV", in Hong Kong, being the largest entity in its respective IPTV business in the country. Most of the channels offered through the NOW TV service are in Chinese, and are not accessible in the United Kingdom, although some people in the UK had been identified as being aware of the service. PCCM had since considered expanding internationally, and did so by launching a mobile app called NOW aimed at the Chinese-speaking population in the UK. Prior to the launching of the app in the same year Sky announced its "NOW TV" on-demand service, which went into its beta phase roughly at the same time as the launching of PCCM's mobile app. PCCM subsequently sued Sky under the tort of passing off (more on which can be found here), with the case ending up all the way in the Supreme Court.

Passing off, as has been noted in the article above, hinges on three factors that need to be established in order to prove the tort of passing off: (i) goodwill or reputation in the goods or services provided in the minds of the purchasing public; (ii) a misrepresentation by the defendant to the public that leads or is likely to lead, the public to think the goods or services are provided by the plaintiff; and (iii) the plaintiff suffers, or is likely to suffer, damage as a result of this misrepresentation. PCCM established the latter two requirements at first instances, and therefore the Supreme Court had to decide on whether Sky's service fulfilled the first requirement, amounting to passing off.

The main question therefore to the Supreme Court was whether PCCM had goodwill in the jurisdiction in question, in other words a customer base, meaning the UK. As the court stated, reiterating Lord Justice Oliver in Anheuser-Buch v Budejovicky Budvar NP, that goodwill is very much "localized" and that "...reputation which may, no doubt, and frequently does, exist without any supporting local business… does not by itself constitute a property which the law protects". In other words, even if goods or services have a certain, even strong reputation to them, does not mean it inherently commands it everywhere, irrespective of actual use or not. This line of thinking very much confirms precedent from decades prior, where similar conclusions have been made as to the localized nature of goodwill.

Territorial issues can be dealt with amicably at times

After a presentation as to the law from both sides the Court finally discussed its decision on whether passing off, or goodwill, has a territorial nature to it. As Lord Neuberger remarked: "...I consider that we should reaffirm that the law is that a claimant in a passing off claim must establish that it has actual goodwill in this jurisdiction, and that such goodwill involves the presence of clients or customers in the jurisdiction for the products or services in question. And, where the claimant's business is abroad, people who are in the jurisdiction, but who are not customers of the claimant in the jurisdiction, will not do, even if they are customers of the claimant when they go abroad". To put Lord Neuberger's argument in different words, goodwill can only exist in a jurisdiction if its goods or services are used by actual customers in that jurisdiction, irrespective of foreign users who have emigrated or visit that jurisdiction (although, one would imagine, given a sufficient amount of immigrants this would be acceptable). As said, this is fully in line with older precedent, and also foreign authorities within the common law, as was put forth by Sky in its argument. PCCM had very little presence in the UK, although it did establish some user base did exist.

Finally, Lord Neuberger aimed to settle two questions that remained: "(i) clarification as to what constitutes sufficient business to give rise to goodwill as a matter of principle, and (ii) resolution of the judicial disagreement as to the jurisdictional division of goodwill".

In answering the first question Lord Neuberger quickly settled the matter by largely stating what has already been settled above: "The claimant must show that it has a significant goodwill, in the form of customers, in the jurisdiction, but it is not necessary that the claimant actually has an establishment or office in this country. In order to establish goodwill, the claimant must have customers within the jurisdiction, as opposed to people in the jurisdiction who happen to be customers elsewhere. Thus, where the claimant's business is carried on abroad, it is not enough for a claimant to show that there are people in this jurisdiction who happen to be its customers when they are abroad. However, it could be enough if the claimant could show that there were people in this jurisdiction who, by booking with, or purchasing from, an entity in this country, obtained the right to receive the claimant's service abroad.". Lord Neuberger's answer to the first question further establishes that a business has to have some form of customer base in a jurisdiction it wishes to protect its intellectual property in that jurisdiction, and that business would have to be, mostly at least, permanent in that jurisdiction, rather than just transient.

The answer to the second question leads to a much wider discussion than can be settled in this blog post, and merits reading in its own rights by those who might be interested. What needs to be said, however, is that Lord Diplock's comments in Star Industrial Co Ltd v Yap Kwee Kor further support Lord Neuberger's conclusions and highlight the distinction between goodwill in different jurisdictions through the existence of separation of judiciaries; i.e. not one court can decide an issue of a foreign court.  Allowing for territorial overlap would let businesses simply claim a right in a name in another jurisdiction with a minimal presence, thus restricting business and trade for legitimate entities in that jurisdiction.

Ultimately the Supreme Court dismissed PCCM's appeal, and concluded that their claim in "NOW TV" had no basis in the UK, as they did not have the requisite consuming public in the UK for their service to merit protection under passing off.

This case is an interesting one, and although one could say the decision is very much a common sense approach, it still does answer some question relating to goodwill, especially in a digital age where the Internet permeates nearly every part of the globe. Businesses have to have a legitimate business presence in a given country in the form of a customer base, even in this digital age.

Source: KWM Legal Insights

Tripping the Trapp - Trademarks in the Third Dimention

Trademarks can be an interesting novelty, especially when it comes to what is actually sought to be protected through trademarks. This ranges from trademarking the color of your football field to the phrase "Let's Get Ready to Rumble!", and only illustrates just how complex and varied trademarks can be, while offering a near perpetual right to protect what you have registered. With this kind of longevity, having a strong trademark, especially in an area where it could benefit you beyond just one product or product line, is incredibly valuable and desired by many (a lengthy legal battle over the color purple is a great example of just how much it can mean to a company). Most of the time though, trademarks are registered as one-dimensional items, which poses the question: could you register a three-dimensional trademark? The European Court of Justice aimed to answer this very question in the latter part of 2014, in a case anticipated by many.

The case in question was Hauck GmbH & Co. KG v Stokke A/S, in which the dispute centered around children's chairs. Peter Opsvik, a co-defendant in the case, had designed a children's chair called "Tripp Trapp", being sold under the Stokke brand since the early 1970s. The chair itself consisted of two L-shaped upright pieces, which contained slots, into which platforms and other pieces could be slotted into, forming the chair. The company sought to protect the highly-regarded chairs, and their look, by lodging a trademark application in 2003 (for example application 003514171). Hauck have also been involved with the production and sale of children's articles, including two chairs, Alpha and Beta. Hauck were subsequently taken to court for trademark infringement, due to the sale and manufacture of its Alpha chair in the German courts (with Stokke winning in the German courts), and also in the Netherlands, culminating in the ECJ some years later.

What the Court of Justice faced was a decision under Directive 89/104/EEC, which governs the registration of certain marks within the EU, as to whether the registered mark would be considered invalid under the Directive.

The first question posed to the Court sought to clarify "[d]oes the ground for refusal or invalidity in [the Directive], namely that [three-dimensional] trade marks may not consist exclusively of a shape which results from the nature of the goods themselves, refer to a shape which is indispensable to the function of the goods, or can it also refer to the presence of one or more substantial functional characteristics of goods which consumers may possibly looks for in the goods of competitors?" The question poses, in more simplistic terms, the conundrum of whether the grounds for refusal would encompass either a three-dimensional shape. which is indispensable to the function of the item and exclusively being only that shape, or would it include the functional shape of the item containing one or more parts that are integral to the function of that item, which consumers find desirable in that type of item.

The Court quickly clarified that, for a shape to be ineligible to be registered, due to the shape resulting from the nature of the goods themselves (Article 3), the shape has to be one which would unduly prevent competitors from using a similar shape, effectively giving a monopoly for similar items; or to put in better terms: "...[the Article's aim is to] prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors".  This also applies to efforts in extending protection through trademarks to subject matters, which should be protected through other means (e.g. patents), or have been exhausted prior to the mark's registration. In the end, the Court poignantly answered the first question: "...[the] directive must be interpreted as meaning that the ground for refusal of registration set out in that provision may apply to a sign which consists exclusively of the shape of a product with one or more essential characteristics which are inherent to the generic function or functions of that product and which consumers may be looking for in the products of competitors"; meaning a trademark cannot claim a monopoly on e.g. adjustable children's chairs, through registering that functional shape as a trademark.

Kids should not be placed on all traps.

The second question referred to the Court necessitated the assessment of whether a registered sign, consisting of several elements adding value to the product itself, much like the changeable pieces of the Tripp Trapp chair. Value does not, by itself, only mean aesthetic qualities, and the distinction between aesthetic and functional can often be blurry as well. The Court saw that the Directive must be interpreted "...as meaning that the ground for refusal of registration set out in that provision may apply to a sign which consists exclusively of the shape of a product with several characteristics each of which may give that product substantial value. The target public’s perception of the shape of that product is only one of the assessment criteria which may be used to determine whether that ground for refusal is applicable". The public's perception of the mark is not the sole deciding factor, as was seen by the Court, but is one of a number of factors, such as ones described by the Attorney General: "...such as the nature of the category of goods concerned, the artistic value of the shape in question, its dissimilarity from other shapes in common use on the market concerned, a substantial price difference in relation to similar products, and the development of a promotion strategy which focuses on accentuating the aesthetic characteristics of the product in question". Whether a mark would be rejected as only adding substantial value to the item is a case-by-case assessment, with no clear deciding criteria as the only guidelines in this question.

Finally, the Court faced its third question, essentially asking whether a mark can be rejected based on a combination of the first and third indent in the Article (questions one and two, respectively, deal with the first and then the third indent). The Court put things bluntly, as, even from a prima facie assessment, the three indents are wholly separate from each other, and thus operate differently in each given argument. If a product fails over one indent, it will fail overall; an assessment based on the two other indents is wholly irrelevant past that point, and failing in more than one indent will not make the invalidity any more serious - the mark will fail either way. In the end the question of whether Stokke's mark will fail is up to the Dutch courts, as the answer has since been sent back for a final decision.

The Directive has been applied to domestic UK legislation, within the Trade Marks Act 1994, and thus is fully relevant within a UK scheme of things. In the United States the protection of three-dimensional marks falls under trade dress (defined in 15 USC 1127), and is more mailable than legislation applying purely to registered trademarks.

Overall the world of 3D marks is interesting, but a question filled with a lot of uncertainties. As the regime is not in place to protect patentable subject matter, or even registerable designs, the provisions serve as a protective means for items falling outside of those regimes. Whether a registrant would be successful depends largely on the mark for which protection is sought for, and is an assessment done on a case-by-case basis, with no clear bright line rules to follow.

Source: JDSupra

Names and IP Law - Do You Have a Right to Use Your Name?

Your name is a part of who you are, your own identity, and for a lot of people, a very important indicator of their history and origin. As such, a name carries immense weight and importance to some, even if it is 'generic' such as Smith or Johnson. Often it is simply easy, and identifiable, to start trading under your own name when you start a business, e.g. Ihalainen LLP (I'm a dreamer, what can I say), but should your name conflict with a well-known brand, such as McDonald's, the use of your own name can be tricky. This begs the question: can you use your own name when doing business, or should you refrain from it outright, especially if a more well-known brand uses that very same name in its business?

In the UK a person can use their own name in conjunction with their business under the Trade Marks Act 1994, through the implementation of EU Directive 2008/95/EC, so far as the use "...is in accordance with honest practices in industrial or commercial matters". On the face of it this entails the use of your name, such as Ihalainen LLP, even if there is an existing Ihalainen Ltd with registered trademarks over the name. The name, however, does have to be distinctive in its use as a trademark, irrespective of its unique characteristics (i.e. Ihalainen clearly is more unique in an Anglo setting vis-a-vis a Finnish setting). Surprisingly, at least from a prima facie assessment, the provision applies equally to corporate names, not just natural persons' names.

People, and businesses, can be hurt by mistaken names

One still has to remember that the defense only applies to a bona fide use of one's name in their business, and adopting a name that clearly infringes a well-established and famous mark will not be overlooked only because the person has the very same name. As was stated by Lord Justice Gibson in Asprey & Garrard Ltd v WRA (Guns) Ltd: "...the defence has never been held to apply to names of new companies as otherwise a route to piracy would be obvious". Clearly one can appreciate that the position of the Court of Appeal in the case is correct; however should an individual trade under their own name, at the same time or prior, as one that is well-known, the defense clearly applies, as they have not sought to use the name to illegitimately gain from its notoriety. Even if the use of the name is honest from a subjective point of view, the use might still not fall under the defense, as was elaborated by Lord Justice Gibson further in the case: "I would add that however honest his subjective intentions may be, any use of his own name which amounts to passing off cannot be in accordance with honest practice in industrial or commercial matters".

A similar provision exists in the United States under 15 USC section 1115, through which a defense is given if the "...use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin". This affords someone protection over the use of their own name in business, although with a similar caveat as to its proper and bona fide use. This view is generally accepted within the common law, with similar provisions existing under the Australian Trade Marks Act 1995 and the Canadian Trade-Marks Act.

The defense described above does not detract from the contestable requirements of registering a trademark, and as said above, a name still has to fulfill all requirements for a valid trademark. Should the name used not be distinctive enough it clearly will not merit protection, and potentially will not be registrable from the outset.

Source: JDSupra

Fake Goods and the Internet - ISPs Face Trademarks

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

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

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

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

The Court of Appeal's message to trademark infringers

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

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

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

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

Source: World Trademark Review

Can You Own a Recipe? When Food Meets Intellectual Property Law

Food is quite important to all of us, and not just because of its nourishing quality and necessity for life, but also for the sheer enjoyment of a dish which has been prepared with care and love. This writer for one will freely admit that he loves to both cook and eat (often the latter more than the former), which prompted me with a thought in the process of seeking out recipes to make: can you own a recipe, or if anything, are recipes protectable under intellectual property law? Upon initial thinking the question seems to beg an answer, since recipes are undeniably creations of great creative efforts, planning, knowledge and skill, which, prima facie at least, should afford it some level of protection. This aside, food is ubiquitous to all cultures, peoples, and as said above, a necessity, which would render their protection draconian or even preventative of the enjoyment of cultural aspects for the larger masses should recipes be isolated to only a select few. The question indeed deserves an answer, and I shall endeavor to do so below, separating the matter into each type of intellectual property.

Recipes and Copyright

Often people's first memories of recipes is a dusty old tome which their grandparents have kept and compiled over the years, containing family recipes and secrets from generations ago. Whether it is Gordon Ramsay or your lovely grandma, recipes take effort and skill to create and compile, being put into tangible form either on paper or online. Under the UK Copyright, Designs and Patents Act 1988, and similarly its US, Australian and Canadian counterparts, copyright protection is afforded to original literary works; however this protection is given to the expression of those literary ideas, not the ideas themselves (expanded more on this very blog here and here). Recipes, therefore, potentially could be protected under copyright should they be expressed in a very specific or original manner; however the ideas of the recipes themselves (for example the concept of a pancake) cannot be protected by copyright.

Some recipes are more 'original' than others

This was specifically discussed by the Australian IPO (link leads to an external PDF file), which this writer thinks is an accurate representation of the laws' applicability in most common law countries: "[t]he owner of copyright in a recipe has certain limited rights to control the manner in which their written recipe is used. This does not include, for example, preventing people from making the dish, or from writing their own descriptions of how to make it". To expand on this, the individual or entity can protect their recipe to an extent, but cannot prevent others from making that particular dish or writing down their version of the recipe. As expression is protected, and not ideas, mere techniques, information on ingredients or methods or the 'idea' of an overall recipe cannot be protected.

Copyright leaves recipes quite exposed, but does offer some level of protection should someone try to use your recipe which has been published in a book or in another protectable form. However should they want to publish their own version or efforts, even writing down a specific recipe in their own words after following someone cooking it, they are free to do so.

Recipes and Trademarks

The names of dishes can be quite valuable, especially if they gain a high level of traction. A famous dish can be highly desirable to protect in name, and under the UK Trade Marks Act 1994 (and similarly under its American, Australian and Canadian counterparts) a sign, an indicator of a goods' origin, can be protected, which easily encompasses the names of dishes or recipes. A recent example of this is the fabled Cronut, a mixture between a croissant and a donut, which became seemingly huge overnight. Arguably the recipe for a Cronut can be very valuable, and many have shared their takes on the item, but what truly brings protectability to the doughy foodstuff is its name - something its creator trademarked promptly. As illustrated above the idea of a Cronut is not protectable as is, but the name does prevent others from selling the item under the recognizable moniker, which is very often more valuable than attempting to prevent the use of a recipe. 

This is not to say protecting a dish or a recipe can result in a positive outcome. Last year a Vietnamese restaurant in London faced some backlash after it asserted its trademark on the dish "Pho", albeit used in the restaurant's name rather than as a means to protect a specific recipe. Whether it is a food related name or a distinct recipe with an elaborate or distinct name, trademarks do serve as a great tool to protect recipes, yet are limited to only truly distinct cases, as one cannot simply just trademark a common recipe or dish.

Recipes and Patents

The more interesting choice of the three was an option this writer had never even considered; patenting a recipe. More often than not patents protect inventions, which encompasses a very wide array of things, but one would never think of a recipe as an 'invention' no matter how inventive the approach can be. Nevertheless, this is still quite possible, although any aspiring food patent seeker will be fighting an uphill battle at best.

Intricate methods of cooking often lead to mixed results

Under the UK Patents Act 1977 for an invention to be patentable it has to fulfill certain criteria: it has to be something new; involve an inventive step; and be capable of industrial application. On the face of things a recipe could be exactly that, and fall under each category; however one can imagine this would pertain more to an industrial recipe, rather than a single kitchen in a single restaurant. A good example of a food related patent is Cadbury's patent for chocolate that doesn't melt (and for the sake of balance Nestle's equivalent is here). The recipe clearly calls for a specific method of creation, a way to make the recipe, rather than the recipe itself. Chocolate is way too common for it to be afforded patent protection, but a novel way to produce chocolate could easily be patented if it falls under all of the requirements. For a great in depth look at the matter in the US, please do read Gene Quinn's article, which covers recipe patents under US law very comprehensively.

Patents are a tougher sell as a method for protecting recipes, but are still quite viable and an option should you dish be created in a very unconventional, new way, and possibly include a more industrial approach rather than one which relates to looks or flavor alone. It won't protect the recipe per say, but it will protect the method through which that recipe is produced.

Conclusion

In short, can you own a recipe? Yes and no. To own a recipe in its most truest sense, it seems nearly impossible under current intellectual property laws, and rightfully so, since no nation would want to deprive its citizens of the multifaceted world that is the culinary world. One can easily own an aspect or two to a recipe, for example its name or a specific structure if it entails a strict layering process for example, or even a printed recipe, but the limits the law imposes on those rights are very strict and nuanced. Being able to buy a lasagna outside of a certain restaurant in Italy is truly a blessing for us all, and we can take that availability for granted.

A message to all aspiring chefs and current culinary professionals: focus on the quality of your product rather than its protectability under intellectual property law.