Impulsive Decisions - Reputation of a Trademark in Europe

In the world of trademarks the goodwill, or in other words reputation, of goods and services is paramount for their protection and enjoyment in a relevant territory. As commerce has become more and more global, with other territories seeing goods or services after their introduction to others, jurisdictional issues are even more poignant and relevant, providing a judicial headache for many attempting to benefit from those limitations (for example, in the recent NOW TV case, discussed here). Community Trade Marks, or CTMs for short, are registered as European-wide trademarks, but the goods or services' introduction to all of the Member States can sometimes differ, and potentially leave their registration open to challenge. Could, however, a proprietor prove goodwill in a Member State through use in other Member States, without actually having a commercial presence for that item in the Member State in question? Luckily, the European Court of Justice answered this question over a month ago.

The case of Iron & Smith v Unilever dealt with a national application for the mark "be Impulsive" in Hungary, lodged by Iron & Smith. The application was challenged by Unilever on he basis of their earlier mark "IMPULSE" (CTM 3116233); however they failed to demonstrate goodwill in Hungary, although Unilever had done so, arguably at least, in the UK and Italy.

The Court was asked four questions, the first three of which were distilled down by the Court as "...what conditions, in circumstances such as those at issue in the main proceedings, are to be met in order for a Community mark to be regarded as having a reputation in the European Union, pursuant to Article 4(3) of Directive 2008/95".

Extending beyond one's limitations can be a good thing

After a brief consideration of precedent relating to goodwill the Court quickly saw that "...if the reputation of an earlier Community mark is established in a substantial part of the territory of the European Union, which may, in some circumstances, coincide with the territory of a single Member State, which does not have to be the State in which the application for the later national mark was filed, it must be held that that mark has a reputation in the European Union". What this means is that you don't have to prove reputation all over Europe, but only in a substantial part of it (how ever that might be defined), in order to establish reputation in any Member State. This is a curious finding, as not all nationals of all Member States are aware of goods or services elsewhere in the Union, and effectively creates goodwill in those that have not, and might never, see those goods or services.

The final remaining question for the Court was also put in very succinct terms: "...in what circumstances Article 4(3)... is applicable if the earlier Community trade mark has already acquired a reputation in a substantial part of the territory of the European Union, but not with the relevant public in the Member State in which the registration of the later national mark concerned by the opposition has been applied for".

The Court, again, briefly considered earlier decisions, and concluded that "...if the earlier Community trade mark has already acquired a reputation in a substantial part of the territory of the European Union, but not with the relevant public in the Member State in which registration of the later national mark concerned by the opposition has been applied for, the proprietor of the Community trade mark may benefit from the protection introduced by Article 4(3)... where it is shown that a commercially significant part of that public is familiar with that mark, makes a connection between it and the later national mark, and that there is, taking account of all the relevant factors in the case, either actual and present injury to its mark, for the purposes of that provision or, failing that, a serious risk that such injury may occur in the future". The answer relates heavily to the above, as if goodwill is proved in a significant part of the Union, it is possible to rely on a CTM to invalidate a national mark, provided there is actual or potential damage to the CTM or its owner if the national mark were to be registered.

Overall the decision of the Court seems odd, effectively creating goodwill where none have existed in evidential terms, but aligns itself with earlier precedent. To prove goodwill or reputation in any European Member State one only has to prove it in a 'significant' portion of the European Union, which, to this writer's mind, expands the remit of an unused CTM beyond that for which it is intended (even if the mark is registered in the whole of Europe). Although the Court's rationale aligns itself with earlier decisions, it seems to give rights where no rights existed, potentially even hindering legitimate competition. Nevertheless, this writer will not purport himself to know better than the judges at the Court, but is puzzled by this outcome nonetheless.

Source: IPKat 

Knowledge for All - Google Books is Fair Use

Information, and access to it, is an incredibly powerful tool to create progression, social mobility and to affect even the biggest nations in wondrous ways. True or not, this writer is a firm believer in the dissemination and sharing of knowledge (even through blogging), and many initiatives have strived to give access to knowledge and information to those who cannot do so themselves. One such initiative is Google Books (in some ways), although clearly still laced with the sub-text of corporate gain, allowing for "...people everywhere [to be] able to search through all of the world’s books to find the ones they’re looking for". By no means altruistic, yet quite useful, the project aims to scan all of the world's books into one database, using it to allow people to find information quickly, effectively and inter-connectively (this writer notes this is not a sales pitch, even if it sounds like one). The project came under fire some time ago, prevailing initially, but the case since moved on to the US Court of Appeals, which handed down its judgment only last week.

To give this story some color, the case of Authors Guild v Google Inc dealt with the aforementioned project, where snippets of books (in image form or not) are presented to a user who searches the database for a word, phrase or sentence, with the results containing one or more instances of the search terms used in brief context. Some participating research libraries have also allowed Google to retain digital copies of some works under strict contractual terms. The Authors Guild did not accept this use of its authors' works (many of which act as plaintiffs in the matter), and took Google to court for copyright infringement.

The crux of the case lied in whether Google's use in the provision of its snippets and its search facility in seeking out the relevant content in the books amounted to fair use under 17 USC section 107 (and the four factors used to assess whether a use of a work amounts to fair use). The Court of Appeals proceeded, therefore, to apply the four factors of fair use to Google's service.

Gary struggled to find what he was looking for.
If only there was a better way...

The first factor looks at what the purpose and character of the secondary use of the work was, i.e. whether Google's use of the copyright protected works was in any way 'transformative'. The Court quickly saw that Google's search capability was highly transformative, as "...the purpose of Google's copying of the... books is to make available significant information about those books, permitting a searcher to identify those that contain a word or term of interest, as well as those that do not include reference to it. In addition, through the ngrams tool, Google allows readers to learn the frequency of usage of selected words in the aggregate corpus of published books in different historical periods". What Google's service allows for users to do is very different than the character and purpose of the books themselves, making their use of the works quite transformative. They also saw that the snippets added something more to the search function, and is in itself also transformative, allowing for a more in-depth assessment of context and relevance when searching for information to the user. Google's commercial motivation did not negate this finding.

The Court determined, briefly, that the second factor (nature of the protected work) played very little part in the assessment of fair use.

When looking at the third factor (the amount and substantiality of what was copied), Judge Leval, handing down the majority's judgment, determined that as no full copies were made available to the public by Google of the scanned books, the search function did not copy a substantial amount. The snippets shown in the results did not, in Judge Level's mind, give enough material to the reader to substitute the protected works, as only very small amounts of text are revealed to each individual user.

Judge Leval finally looked at the fourth factor, assessing the effect of the works' use upon the potential market for or value of the copyrighted works. Although the Court did recognize that there could be an impact on the works or their potential market, albeit a small one, it still had to be "...a meaningful or significant effect" for there to be an issue under the fourth factor. Even if the snippets display some facts or information, and thus detract from a need to purchase the works, they still offer very little in the form of a substitute to the original works and would not cause much of an impact in the works' potential market.

Google's Books project was therefore deemed to fall under fair use.

What the decision in hand showed us is a clear need for there to be more direct interference in an author's use of a work, and their monetary gain from it through its intended purpose (loosely said, at least). What Google created was a tool, not a substitute, that by no means superseded the original works, but allowed for them to be searched and reviewed partially, while leaving much to the original that needed to be looked through to understand the bigger, more accurate picture. The decision came as no surprise to this writer, as Google Books is nothing more than that, yet still very useful for those seeking to find a snippet of information or a factoid. Whether the matter will go to the Supreme Court remains to be seen, but the Authors' Guild has promised to take the matter further, and this writer will await the granting (or denial) of certiorari by the Supreme Court with interest.

Source: IPKat

No Cause for Celebration - Happy Birthday To You Deemed to be Out of Copyright

Birthdays are a peculiar phenomenon when fully dissected and thought through, yet they evoke an image of youthful bliss and happiness, along with often copious amounts of presents and sugary foods. Almost every language and culture celebrates birthdays (bar some religions etc.), and wishing someone a happy birthday can be as colorful and varied as the cultures themselves. A big part of Western birthday traditions is the song "Happy Birthday to You" (and other regional variants thereof), which has been held under lock and key by Warner/Chappel Music, and as discussed over two years ago on this very blog, the saga challenging its copyright protection has been a long and arduous one. The case has since reached its newest milestone, which will be cause for celebration for many, and a loss for the few.

For the uninitiated, the case of Rupa Marya v Warner/Chapell Music Inc dealt with the aforementioned song "Happy Birthday to You", which was created by the Hill sisters, Mildred and Patty, in the late 1800s (although only in melody). Their original song, "Good Morning to All", featured the melody we associate with the above song, however the lyrics were only changed some time after the publication of Good Morning to All in a collection of songs by Clayton Summy, who had acquired the rights to the song in the 1890s. The author of the lyrics to Happy Birthday to You is largely unknown. Rupa Marya, as a part of a class-action lawsuit, asserted that Warner/Chappell did not own the copyright in the song, and that "...they should be compelled to return the “millions of dollars of unlawful licensing fees” they have collected by wrongfully asserting copyright ownership in the Happy Birthday lyrics".

The first consideration for the District Court for the District of Central California was whether the copyright in the lyrics to the song actually vested in Warner/Chappell. As the acquisition and transfer of the rights to Good Morning to All, and the creation of the lyrics to the derivative work Happy Birthday, remained unclear, the Court had to discern whether the rights to the work vested in their alleged owner (i.e. who wrote the song Happy Birthday), and if so, whether they were correctly assigned onwards affording Warner/Chappell enforceable rights to the song.

Warner/Chappell had very little to celebrate after the decision

In determining the ultimate author of the song, judge King saw that, even though claiming so under oath in a deposition, Patty Hill had not written the lyrics, as several other authors either directly or indirectly had claimed to have done so, and very little evidence illustrated that Patty Hill had concretely written them. Also, under old US law, an author could lose their rights in a word if they publish it before seeking proper registration or publishing it without proper notice, effectively forfeiting their federal and state common law rights. Judge King saw that, in the absence of authorized publication of the song, the defendant had not divested their rights through publication. Although claimed, the court did not find that the lyrics had been abandoned by Patty Hill, even though evidence was put forth to this effect, as the hearsay evidence provided was non-conclusive. As no author was clear, the motion was denied and the Court moved onto the question on ownership of the rights.

The main focus of the case was then the transfer of the rights to Mr. Summy by the Hill sisters in 1934. Through two separate agreements, neither of which has survived from their drafting in the 1930s, the defendant alleged that it had indeed transferred the rights to the lyrics to Mr. Summy. The Court rejected their arguments, and saw that the only transference that had occurred was for the piano melody of the song Good Morning to All, with no reference to the lyrics or the derivative work Happy Birthday to You being a part of either agreement. Judge King therefore concluded that the rights to the lyrics for the song Happy Birthday to You had not been transferred to Mr. Summy, and ultimately to Warner/Chappell Music. The case leave the ownership of the copyright for the song in doubt, potentially causing for the song to fall into the public domain before the end of its copyright term.

The case shows an important facet of copyright and intellectual property, the importance of the chain of evidence. Should there have been concrete provenance of a transfer of rights, the rights in the lyrics to Happy Birthday would have vested in Warner/Chappell Music. In the end, the uncertainty in evidence and the inception of the lyrics to the song left them with very little recourse to protect their rights, and lost them as a result. No repayment of license fees was discussed by judge King; a point that might be contested in court some time in the future. Whether Warner/Chappell will appeal remains to be seen, but this writer doubts the likelihood of this.

Source: The Guardian

Retrospective - Incidental Inclusion of Copyright Protected Material

Not all infringement is necessarily wilful or intended, whether it is accidentally sharing a copyright protected image to a wider audience when it was intended to be shared to simply a small audience (albeit still, arguably, infringing copyright) or including works in your own that were not duly licensed as a matter of omission. As such the law does exclude liability for potential accidental inclusion, protecting those who have not intended to infringe copyright, but nevertheless have done so. How the law protects those who've incidentally included material in their works has been unclear due to the ambiguity of the provision in the Copyright, Designs and Patents Act 1988, but more clarity was shed on the provision in the early 2000s by the Court of Appeal.

The case dealing with incidental inclusion was Football Association Premier League Ltd & Ors v Panini UK Ltd, which dealt with collectible football stickers; a staple in many persons' youths (although this writer was more of the ice hockey disposition). Panini sold stickers, along with an album that you could collect them into, within the UK. The sticker collection comprised of nearly 400 football players from the English Premier League and other leagues, and the images used in the stickers contained the player wearing their respective club shirt. In many pictures the clubs' logos are fully visible, also sometimes including the Premier League logo on the sleeve of the football shirt. After a licence was issued to Topps Europe Limited (a tendering process that Panini was involved with) they created a similar sticker collection and accompanying album, and the Premier League too Panini to court for copyright infringement in relation to the club logos and the Premier League logo.

The main focus of the case was on whether Panini's inclusion of the logos in their stickers was copyright infringement, or whether it was protected under section 31 of the Copyright, Designs and Patents Act 1988. The provision allows for a finding of non-infringement in the event of a work's "...incidental inclusion in an artistic work, sound recording, film or broadcast"; however, what exactly amounted to an 'incidental' inclusion was uncertain.

Several draft stickers were rejected for good reason

Lord Justice Chadwick saw that the determination of whether a work does or does not infringe copyright has to be made "...considering the circumstances in which the relevant artistic work... was created". The circumstances would involve the relevant artist's mindset and potential reasons for the inclusion of a potentially infringing work in their work, as well as both commercial and aesthetic reasons for its inclusion. Emphasis is placed on the why, which undoubtedly will take into account any inclusions that are done merely feigning an incidental inclusion, when the true reason was to benefit from its inclusion.

In concluding the case Lord Justice Chadwick saw that, as the reason for the inclusion of the relevant club shirt was to make the images, and therefore the stickers, the most attractive to a would-be collector, it would be important for the shirts to be authentic and contain all logos. Due to this their inclusion could not have been purely incidental, as the objective of the images was to display the logos, although not prominently, but visibly enough for an informed collector to note them. His promptly then dismissed the appeal by Panini.

As can be seen incidental inclusion is by no means a straightforward assessment using bright line rules, but involves a more nuanced, objective assessment of a potentially infringing work's inclusion. Should the Premier League logo just have been present in an on-field advertising board in the background, or on a truck outside, arguably its inclusion would have been incidental. The reason why they were in the image was to give an aura of legitimacy, value and to effectively identify each player, team and league in the sticker set. Incidental inclusion doesn't come up often in IP, and this writer would love to see it applied in an Internet context somehow.

A Feast for the Eyes - Food Porn Banned in Germany?

Since the emergence of Instagram and other similar social networks, the power and marketability of pictures, especially of food, has sky-rocketed. This writer fondly remembers a time when he could go to a restaurant without having his friends take pictures of everyone's untouched dishes before tucking in. Alas, those days are gone, and with highly shared pictures comes a great deal of free marketing for the restaurants or eateries featured in those pictures. In other words, as Dominique Crenn, Chef de Cuisine at Atelier Crenn, put it: "Instagram came to give a voice to chefs and to the food they serve". An increase in sales or reservations can make or break a smaller establishment, while providing more established restaurants the financial boost they need among a more focussed, discerning consumerscape, and these images can be the difference between notoriety or infamy. Many would want to control this projected image, so could you exert ownership on photographs of your dishes?

In a somewhat interesting turn of events, albeit some 2 years ago, the German courts extended copyright protection to 'applied arts' under Directive 98/71/EC on the legal protection of designs in case I ZR 143/12 (press release on the decision in German here). This, according to many news outlets, covers food or plate arrangements, so long as they are not merely trivially thrown on the plate, but have an "advanced level" of design to them. This would entail more thought, and clearly is intended to cover those dishes that reflect a more artistic, sensual experience (for the eyes).

Floyd's pièce de résistance: the sad sandwich

As with many other types of artistic works, some dishes can exhibit a great deal of thought, ingenuity and planning, and this writer does appreciate a possible need to protect them under law. Even so, the enforcement of the new German law would be difficult, as many chefs would not sue those seeking to merely spread the name and design of their restaurant's dishes; however, should they want to keep new dishes or experience under wraps from the general public this route would seem much more attractive.

Under UK law it would be difficult to argue a case for the protection of food porn. Under the Copyright, Designs and Patents Act 1988, sculptures enjoy protection as artistic works under copyright. Should a chef make a particularly sculpture-esque food presentation, it would be possible for it to be argued as protectable under copyright, but with the caveat that the food sculpture would have to retain its artistic merit outside of just being sustenance. Similarly in the US their copyright legislation allows for the protection of sculptural works, so far as "...such design incorporates... sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article". This would mean that the sculptural aspect, i.e. the artistic features of the food piece, would have to exist outside of the food or its purpose (to nourish or to be enjoyed taste wise); a fact that would be difficult, albeit not impossible, to prove.

As one can see the protection of food porn is very difficult, even borderline impossible within the common law sans any major changes in the law. One could say this is the correct approach, since the design or food porn quality of any given dish is purely transient; an aspect of visual enjoyment prior to the consumption of the food, and intrinsically a part of the process of enjoyment in conjunction with the taste and feel of the item. Pictures of food are an important aspect of modern marketing, but it will be some time till protection is afforded to something more than the image of the dish.

Source: Eater

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

Tweets Stolen - Further Thoughts on Tweets and Copyright

The impact of social media on today's social interaction is undeniable, with people turning to Instagram, Facebook and Twitter for more and more of their entertainment, social and news needs. As this new interaction space has grown, and seemingly keeps growing, the value of the content within it has grown as well. This writer recently noted newly emerged discussion surrounding Twitter and reusing jokes and/or content lifted from Tweets, especially in the light of having discussed this on a very superficial level some time ago, I thought it merited expanding more in detail.

In a recent development it has come to light that Twitter hides certain tweets it deems to be infringing copyright, pending a response from the copyright holder as to their respective fates. This is expanded on in Twitter's Copyright and DMCA Policy: "Twitter will respond to reports of alleged copyright infringement, such as allegations concerning the unauthorized use of a copyrighted image as a profile photo, header photo, or background, allegations concerning the unauthorized use of a copyrighted video or image uploaded through our media hosting services, or Tweets containing links to allegedly infringing materials". One has to note that, although the policy does focus on images and videos, it does leave its definition of "copyright infringement" as open-ended, potentially catching tweets themselves.

This begs the question, is a tweet protected by copyright? As discussed in my previous article, the UK Copyright, Designs and Patents Act 1988 does not set a limit on what can amount to a copyright protected literary work, which allows for even tweets to be potentially protected under the provision. As long as the work originates from the author and contains a certain level of originality. The ECJ decision in Infopaq International A/S v Danske Dagblades Forening further elaborated on what amounts to originality, with the court deciding that a work is protected by copyright if it is "...the expression of the intellectual creation of [the] author". So long as you have put in effort and some level of choice and creativity into your work, even a tweet, it would arguably be protected by copyright within the UK and the EU, irrespective of the tweet's length (140 characters or fewer).

Twitter can be serious business

In the US things can potentially be a little different. Under 17 USC section 102 copyright protection extends, much like in the UK, to literary works. The provision itself does not prescribe any length requirements no works for copyright to be applicable, and section 101 offers no further assistance in answering the above question. The Electronic Code of Federal Regulations aids somewhat, as section 202 of the Regulations stipulates that works that will not (necessarily) be protected by copyright are "[w]ords and short phrases such as names, titles, and slogans" - although, the CFR merely sets these out as examples, not definitive limitations. Whether a tweet would count as a "short phrase" and therefore is not protected would remain an assessment of its creativity (as was discussed in Arica Institute Inc v Palmer, for example), as if the phrase exhibits a minimal amount of creativity, it would arguably be protected by copyright in the US.

As can be seen Twitter and tweets do pose a challenge to copyright and whether its protection extends to them within the common law. Although literary works are nearly universally protected all over the world, their length and specific content does dictate the protection afforded, especially when its creativity or originality comes into question. One big consideration is the monetization of tweets and whether they would ever merit protection to the point where they would be challenged in court. This writer would love to see a tweet or a series of tweets be evaluated by the courts at some point, but heavily doubts the likelihood of this ever happening. Without judicial consideration one can still very much appreciate the creativity of tweets and their content, as the character limitations present a unique obstacle to comedic delivery; something when achieved can be powerful.

Source: The Verge