For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Saturday, 25 October 2014

Happy to Deliver To You This Trade Mark Infringement in Pizza Flavor Case

New Yorkers love their pizzas and have definitive opinion about them, including the way to eat them. Newly elected New York City Mayor Bill de Blasio even created a controversy when seen shortly after his election eating a pizza with a knife and fork, instead of using the New York method, folding a slice of pizza in half length-way and eating it with one’s hands. One of my proudest moments ever as a New Yorker is to have been asked by a NYC policeman where I had bought the slice I was eating on the street, using the proper New York way, of course!
Nobody Ever Ate a Pizza New York Style  Better than Tony

This method is well adapted to New York-style pizzas, which are pizzas with a thin crust, a lot of cheese, and crunchy edges. The various recipes for tomato sauce are jealously kept by their makers.  
New York pizza is very good, but can a particular pizza flavor be trademarked? A Texan pizzeria thought so, but Judge Gregg Costa from the Southern District of Texas was not convinced, calling Plaintiff’s flavor of its pizza infringement claim “plainly half-baked.” The case is New YorkPizzeria, Inc. v. Syal et al, 3:13-cv-00335.

Plaintiff was New York Pizzeria Inc. (NYPI), a restaurant franchisor. It filed a suit against one of its former employee and against Ravinder Syal, a restaurateur, alleging that Defendants conspired to steal its recipes by using, without permission, the username and password of a NYPI franchisee to log into a site to download NYPI’ s trade secrets, including recipes and manuals.

Plaintiff claimed violation of the Computer Fraud and Abuse Act and the Stored Communication Act, which I will not discuss in this post, and also claimed trade mark infringement for copying NYPI’s “distinctive flavors,” and trade dress infringement for copying NYPI’s “distinctive plating methods.”

Can a Flavor be Trade Marked?

Plaintiff claimed infringement of its trade mark in the flavor of its food and argued that the “specially sourced branded ingredients and innovative preparation techniques contribute to the distinctive flavor” of its products and that, by using the same ingredients and processes, Defendants have infringed its trade mark.

While the Lanham Act provides a trade mark infringement cause of action for using “any word, term, name, symbol or device , or any combination thereof “ which are confusingly similar to a trade mark, the federal law does not mention “flavor.”

Plaintiffs cited the famous Qualitex case, where the U.S. Supreme Court held in 1995 that colors may be trade marked if they have obtained secondary meaning and thus are not merely functional, but, rather, indicate the source of the product.  

Judge Costa agreed that a flavor could be trade marked,  but added that it would have to identify the source of the product. He noted that, just as colors, flavors cannot be inherently distinctive and must acquire secondary meaning to be used as a trade mark.

Judge Costa also noted that flavors are functional and that the functional features of a product are not protectable. The Supreme Court defined in a footnote in Inwood Laboratories, Inc., quoted in Qualitex, that the functionality doctrine “forbids the use of a product's feature as a trademark where doing so will put a competitor at a significant disadvantage because the feature is "essential to the use or purpose of the article" or "affects [its] cost or quality."

Judge Costa noted that “[t]he functionality doctrine is a significant hurdle for any party seeking to protect a flavor as a trademark,” citing the In re N.V. Organon Trademark Trial and Appeal Board (TTAB) case, where the TTAB denied trade mark registration to the orange flavor of a pharmaceutical pill, as the flavor has for function to cover the unpleasant taste of the medicine.

For Judge Costa, the functionality hurdle is even higher for the flavor of a particular food, as “[t]he flavor of food undoubtedly affects its quality, and is therefore a functional element of the product.” He dismissed the trade mark infringement pizza flavor claim.

Can a Particular Way to Present Food on a Plate be a Trade Dress?

Plaintiff also claimed “plating infringement,” that is, infringement of a particular way to present food which amounts to a trade dress. The Court recognized “that there may be some rare circumstances in which the plating of food can be given trade dress protection.” This may occur if a particular way to present food is inherently distinctive or if it has acquired secondary meaning, and if it serves no functional purpose.
Could this Charcuterie Plate be a Trade Dress?

The Court cited a UCLA Law Review article written by Naomi Straus, Trade Dress Protection for Cuisine: Monetizing Creativity in a Low-IP Industry, where the author argued that “signature dishes” could be protected by trade dress (see p. 218 of the article, with pictures of some of these signatures dishes starting p. 221).

Plaintiff’s way to present food was not found, however, to be protectable by trade dress, because Plaintiff had merely described its way to present food as including, but not being limited to “its baked ziti, eggplant parmesan, and chicken parmesan dishes,” but did not explain what exactly made its presentation of the food distinctive.

Just imagine, if the Court would have agreed to protect such way to present food, no other restaurant in the WORLD would have been able to so present baked ziti, eggplant parmesan and chicken parmesan dishes… 

Image is courtesy  Flickr user RBerteig under a CC BY 2.0 license.

Friday, 24 October 2014

Friday fantasies

The Blue-Spotted Australian Mist
Francis Gurry Lecture 2014. "IP in transition: desperately seeking the Big Picture” is the title of this year's Francis Gurry Lecture, which is to be delivered, hot and spicy, by IPKat blogmeister Jeremy.  The lecture will be delivered in Melbourne (12 November), Sydney (17 November) and Brisbane (18 November), courtesy of the Melbourne Law School and the Institute of Patent and Trade Mark Attorneys of Australia [there you are, says Merpel: who dares to say that courtesy is a thing of the past, or that it is a commodity in short supply Down Under!].  Since this is the first time that the Francis Gurry Lecture has been delivered by a fictional feline, Jeremy promises to write it himself rather than crowd-source it to this weblog's readership. If you are in Australia or in its close vicinity, do come and join the fun.  He understands that, even though he isn't buying drinks for everyone, demand for places has been brisk and urges anyone who signs up, but then can't attend, to let the organisers know so that someone else can fill their seat -- at risk of having their names entered in the Naughty Book.  You can get a better idea of what this lecture is about via fellow IP scholar Andrew Christie's website here.  Oh, and since Australia is a fair distance from The Old Nick, Jeremy is planning to organise a couple of "come and say hello" sessions if you can't (or don't want to) hear the lecture but do want to say "hi".  Further details will be posted in due course. 

Final fling for limerick competition.  The competition to compose a suitable limerick, for which the prize is complimentary registration and a free lunch at next Wednesday's IP Round-Up conference for people who don't like patents, closes on Sunday night.  Many entries have been received, ranging from the witty to the woeful, and from people who have clung manically to the rules for writing limericks to those who consider that they only apply to other contestants.  If you've not yet sent in your entry, don't leave it till it's too late! 

Fordham: if you're seriously
interested in having IP fun
Fordham in transit again. On 8 and 9 April 2015 the popular and quite nerve-racking Fordham University International IP Conference returns to Cambridge, England, thus depriving many happy IP enthusiasts of their annual excuse for travelling to New York.  No details are available as yet. When they are published, they will probably be somewhere round here.  This Kat recalls that, on the previous occasion that this wonderful event came to Cambridge, it generated a big split in opinion between those who felt that being in New York was almost part of the conference's DNA and those who regarded the change of venue as an encouragement to participants to reflect at less speed but in greater depth on the momentous issues that fell to be discussed.  Either way, it should be fun [says Merpel, that's the F-word that appears in Fordham's slogan].

Better late than never! Merpel most embarrassed to confess that she has only just noticed this Consultation from the UK Intellectual Property Office, at was apparently published on 15 September 2014 and which -- horror of horrors -- closes on 27 October 2014 (ie this coming Monday, so you have only the weekend to respond). The consultation concerns the repeal of section 52 of the Copyright, Designs and Patents Act 1988 (CDPA). This section currently provides that, where an artistic work is exploited industrially (ie large numbers of copies are made) the copyright period is reduced to 25 years.  This is now considered in breach of EU obligations, and so will be repealed (by a provision of the Enterprise & Regulatory Reform Act 2013, which has however yet to come into force).  There has already been a consultation last year at ( [this is a confusingly similar URL but refers to a completely different consultation] on the principle of the repeal.  The question now is mainly one of how long the transitional period should be. The NIPC blog has a good explanation of the background to all of this.  Merpel is grateful to ACID, whose website is launching a questionnaire of its own and which was the source of the alert for this topic. However, she is concerned that the ACID survey asks the question in a somewhat different manner: 
“Calling All ACID Members. Do you admire and support iconic designers and the integrity of design heritage? How long should those who have built their business models on the sale of unlicensed artistic works be given to adapt their business models following the change of law to protect these iconic brands and their official licensors?”.  
Merpel is concerned that the scope of the issue is much wider, and considerably more nuanced, than this.  The IPO Consultation is not addressed at “brands” and has nothing to do with whether a design is “iconic”.  What's more, the repeal of section 52 will affect all artistic copyright, including that relating to 2D works, and is not (as the ACID website seems to imply) restricted to pre-1989 3D designs for furniture and the like.  Be that as it may, if you wish to respond to the ACID survey, the deadline is TODAY.

Dinner with Dinusha? A 3D treat.  From Katfriend Dinusha Mendis comes news of "3D Printing: A Selection of Stakeholder Perspectives", a sweet little event that is coming up at Bournemouth University's Centre for Intellectual Property Policy & Management (CIPPM) on Friday 7 November.  Details of this event are hereregistration is here. The event is free to attend, but you have to pay for your optional dinner.

Around the weblogs. This Kat is a confirmed admirer of Intellectual Property Watch. Even though he sometimes finds himself at odds with some of its contents, he appreciates its professionalism. Not every blog finds room for discussion of plant variety protection, which is why this Kat was happy to see "Inside View -- the TPP's New Plant-Related Intellectual Property Provisions", here.  Elsewhere, IP Finance spots a chance to webinate with, among others, the man whom coined the term "open innovation" and a view of what looks like a new business model for monoglot journalists. Charles Colman's Law of Fashion blog addresses an interesting tale of parody when Chanel meets Ghostbusters, here. Charles, incidentally, has a bit of track record writing about parody: if you trawl through SSRN you may just stumble across his "Trademark Law and the Prickly Ambivalence of Post-Parodies", here. Finally, Katfriend Dorothea Thompson contributes a guest post on the 1709 Blog on Henderson v All Around the World Recordings, on the assessment of damages for copyright infringement in England and Wales after the coming into force of the IP Enforcement Directive: a good blogpost but, this Kat, thinks, a decision that is open to argument. He may write on it himself later, time and energy permitting ...

(NON-)BREAKING NEWS (and a mystery): video framing not copyright infringement

What's the mystery behind BestWater?
There are two forthcoming decisions of the Court of Justice of the European Union (CJEU) that this Kat has been keenly awaiting following the ambiguities cast by the decision earlier this year in Svensson [here and here].

The first one is C More Entertainment [linking by means of paywall circumvention] and the second one is BestWater [here, framing of videos]

This is why the calendar of CJEU activities has been carefully monitored (in vain) for months, without any hints as to possible dates for these decisions or at least [although less likely, considering that Svensson itself was decided without one] opinions of Advocates General being provided.

Now, via @Loeffel_Abrar, comes the news [with link to the German text] that the CJEU appears to have handed down its decision in BestWater on 21 October last, ruling that video framing is not an infringement of the right of communication to the public within Article 3(1) of the InfoSoc Directve:

"Die Einbettung eines auf einer Website öffentlich zugänglichen geschützten Werkes in eine andere Website mittels eines Links unter Verwendung der Framing- Technik, wie sie im Ausgangsverfahren in Frage steht, allein stellt keine öffentliche Wiedergabe im Sinne von Art. 3 Abs. 1 der Richtlinie 200l/29/EG des Europäischen Parlaments und des Rates vom 22. Mai 2001 zur Harmonisierung bestimmter Aspekte des Urheberrechts und der verwandten Schutzrechte in der Informationsgesellschaft dar, soweit das betreffende Werk weder für ein neues Publikum noch nach einem speziellen technischen Verfahren wiedergegeben wird, das sich von demjenigen der ursprünglichen Wiedergabe unterscheidet."

A more detailed analysis of this decision will follow soon.

In the meantime, a few questions arise:

1) Why was the case not listed in the CJEU calendar?

2) Why, if you search for "Case C-348/13", this entry is listed as non-existent (not even the preliminary questions are available and - no need to say - there are no press releases available either)?
3) Is the one posted the final decision or just a draft?

News from the EPO - Strike Ballot comes out in favour of a strike

Merpel has been sunning herself again in the corridors of the EPO.  Readers may recall that just a few months ago the President of the European Patent Office refused a call for a ballot for a strike.  Well, there has been another call for a ballot, and this time the ballot was held.  Merpel understands that the results were announced last night, and has been informed that the results are as follows:

The total number of votes cast was 3553 (out of 6823 entitled to vote) representing 52% of the employees entitled to vote. The required quorum is 40%, so the quorum was therefore reached.
The result of the vote was as follows:
·        Votes in favour of a strike = 3032
·        Votes against a strike = 353
·        No opinion = 168
Thus 85% of the votes cast were in favour of a strike, so the result was overwhelmingly in favour of s strike.  This is only about six months after the last official strike at the EPO (industrial action took place in March and April 2014, are reported here, here and here).
The ballot took place in accordance with the EPO Strike Regulations, that have themselves been one of the issues in the industrial action.  They were reported by the IPKat here.  Notice of the actual timing of the strike still has to be given to the President of the EPO, at least 5 days before the strike.
In other news it has just been reported that the EPO has told unions (in particular SUEPO, the union in the German offices of the EPO) that they cannot use EPO premises on an ongoing basis, although meetings can continue to be held with permission and advance notice.
And on another related matter, it was first reported that staff representatives from the EPO were excluded from meetings of the Administrative Council for the first time, and then subsequently reported that the EPO had responded that representatives were not excluded as such, rather that the committee of staff representatives had not properly constituted itself.  The EPO spokesman was reported as saying:

 “Since July 1, the newly elected CSC (central staff committee) has not been able to appoint its chair, deputy chair or secretary, nor did the CSC nominate a delegation legitimated by its full members in spite of several meetings and reminders.”

He added: “There was then no appropriate way of knowing which persons should represent the CSC. As soon as they proceed with the nominations according to the rules, they will of course be entitled again to participate as observers to the AC.”
While the true facts are not always apparent, it is clear that the industrial unrest at the EPO is far from over, and the "Social Democracy" reforms of the President continue to provoke opposition.  Merpel hopes to return to this matter soon. in the beginning, there was Mudie ...—if you are a book reader, you probably worship the day that the company began to enable you to order books online; if you are/were a bookstore, probably less so. If you are/were a book publisher, you probably enjoy the distribution power of, but you rue its pricing power, both for hardcopy and e-books. If you are an author, you may enjoy the distribution power of even more than your publisher (if you have one) and you are probably less sensitive than your publisher to the issue of pricing power. Whoever you are in the ecosystem of the book industry, one thing is common to you all— is the 800-pound gorilla.

But is not the first entity to enjoy a leading position in book distribution and pricing. As The Economist reminded us last week in its extended essay on "The Future of the Book", the 19th century in England witnessed its own version of, Charles Edward Mudie's subscription library. The way that Mudie influenced the business of publishing and the act of reading in that century was arguably no less influential than that of today and bears recounting, as a cottage industry has arisen pondering what book -ublishing and reading will look like in years to come.

Mudie's success was built on the model of the commercial circulating library (the "Select Library"). It began in 1842, when he started the business of lending books to students at the University of London. For the annual price of one guinea, these commercial subscribers could borrow one book at a time. The business expanded beyond its original location in London and to other cities as well, such as Manchester and Birmingham. The background to this model was the fact that while an increasing number of 19th century Victorians wished to read books, the cost of purchasing them was prohibitive for many. The pioneering annual subscription fee model, which brilliantly separated reading from ownership of books, enabled readers to overcome that challenge, one book at a time.

But Mudie and the influence of the subscription library went way beyond expanding the scope of book readership. First, it led to the popular adoption of the "three-volume", or "triple decker" format for the novel, which in particular enabled him to realize the vast potential of fiction as a profit centre. Why so? As explained, given the cost of publishing, the aim was for Part I of the novel to whet the reader's appetite to continue on with reading Parts II and III. As well, the amounts received for Part I would cover the printing costs for the later Parts. From the point of view of inventory, it meant that three volumes, instead of one, could be put into circulation among readers. Indeed, Mudie increasingly came to demand from its publishers the triple-decker format for their novels.

The pricing structure for the triple-decker format was a form of publishing gold mine. As explained by Professor George Landow in his review of over 40 years ago of the 1970 book by Guinevere Griest, Mudie's Circulating Library and the Victorian Novel-
"[T]he three-decker novel provided the crucial factor in Mudie's success: by forcing publishers to price their novels at the artificially high price of 31s 6d for three volumes (for which the library paid only 15s), it effectively discourages several generations of British readers from buying novels — so much so that publishers claimed the British were not a book-buying people. Thus, while Moby Dick sold in America for $1.50, it cost the equivalent of $7.80 when it appeared as The Whale in Great Britain. The three-decker novel, in other words, cost at least five times as much as a standard volume of poetry."
Mudie came to dominate his relationship with publishers, enjoying unrivalled market power. He would purchase a large percentage of a publisher's run (this Kat found estimates ranging from 50% to up to 100%) for use by the company's outlets. For the reader, this stocks of books meant that readers did not have to wait for an extended period to obtain a copy of the book. However, the impact of this arrangement on the author could be far less benign. In the words of The Economist, if “Mr. Mudie chose not to stock an author's book, it could become an immediate dud." Mudie leveraged his market power over the purchase of books by advertising what was called "the principal New and Choice Books in circulation". Redolent of 20th century best seller lists, it had the effect of both fashioning the commercial market for books while at the same time having the power to make a reputation for authors fortunate enough to be included.

But Mudie not only changed the face of the book and reading business; he also is said to have been a primary influence on the very contents and structure of the Victorian novel as a literary genre. In the words of Landow:
"…by making sure that almost all novels appeared in three volumes, it had important effects on the structure, plot, style, and even imaginative worlds of the Victorian novel; and… by acting as a censor who demanded fiction suited to the middle-class family, it controlled the subject, scope, and morality of the novel for fifty years."
Moreover, Mudie played an important role in framing Victorian moral sensibilities. Most notably was his refusal to stock what he considered “immoral” books. Mudie and his subscription library model ultimately feel out of fashion by the end of the 19th century, even if the operation continued until the 1930s. Two main culprits were held to blame. The rise of government-funded lending libraries, which made books available for reading at a much lower cost, and the end of the triple decker format (which was apparently an decision made by Mudie).

Reflecting on the rise and fall of Mudie’s subscription library, one cannot help but be struck by the fact that then, as now, market power in the book industry is most powerfully exercised at the distribution level. Writers write, publishers publish and readers read, but the entity that controls how the book gets into the hands of the customer is potentially the primary actor in the commercial ecosystem of the book. Mudie was hardly the first to enjoy this role; even before there was the Statute of Anne, there was the Licensing of the Press Act, which regulated (read restricted) printing and publishing, as enforced by the Stationers' Company. Given the commonality between, Mudie and the Stationers about controlling distribution, it is appropriate to recall the words of the Biblical Book of Ecclesiastes (Kohelet) (1:9)--
“What has been will be again, what has been done will be done again; there is nothing new under the sun.”

Thursday, 23 October 2014

These Shoes are Made for Freely Walking: Copyright Protection & Free Movement of Goods

With this post we are staying with on the topic of shoes and copyright, already discussed here and here, but this recent case from the commercial division of the French Cour de Cassation also raised some European Union (EU) and Berne Convention issues. The Case is Cass.Com.,12-16.844, October 7, 2014.

French catalog retailer La Redoute sold in France a particular model of flip flop shoes which Italian fashion company Tod’s believed was a copy of its own “Fiji” flip flops, which had been sold in France since 2003. The flip flops sold by La Redoute had been manufactured in Italy and sold to La Redoute by the Italian manufacturer.

Tod’s filed a copyright infringement suit against La Redoute in the Paris Tribunal de Commerce (business court) and won. The Paris Court of Appeals confirmed the judgment on October 21, 2011, and La Redoute appealed in cassation (cassation means “breaching”).  

Restriction of Free Movement of Goods in the EU?

La Redoute argued that the principle of free movement of goods within the EU prevents a product lawfully placed on the market in one EU Member State (First Member State) to be deemed infringing a model manufactured in that same Member State by a court from another Member State (Second Member State), even if it is not established that such good was considered counterfeited by the laws of the First Member State.
Tod's Fiji Flip Flops

La Redoute argued that courts of the Second Member State must appreciate whether a copyright infringement claim is valid by applying the law of the First Member State. For La Redoute, French law should not have been applied in this case, but, rather, Italian law. Of course, this would have benefitted the French retailer as French law recognizes that shoes can be protected by copyright but Italian law, the Legislative Decree No. 95 of February 2, 2001, which implemented Directive 98/71/EC on the Legal Protection of Designs, may or may not protect shoes.

La Redoute argued that the ruling of the Paris Court of Appeals should be overturned, as it violated Article 34 of the Treaty on the Functioning of the European Union (TFEU) which prohibits restriction of free movement of goods in the EU, and that the Cour de Cassation should refer this preliminary ruling question to the European Court of Justice (ECJ):

"Doesn’t the principle of free movement of goods within the EU, as established by Article 34 TFEU, impose, while taking into account the disparity in copyright protection provided to works of applied art by the laws of the various EU Member States and Article 5 of the 1886 Berne Convention, in order to avoid that a product lawfully put on the market in a first Member State be deemed infringing a model created in that State by a court in a second Member State, while it is not established that this good is infringing in its state of origin (the First Member State), that the court of the second State must appreciate both the validity of the rights claimed and the existence of facts of infringement by applying the law of the state of origin of the product? " [Exhale now].

Violation of Article 6 of the European Convention of Human Rights?

Article 17 of Directive 98/71/EC addresses the issue of the relationship of design protection laws and copyright protection law and states that “[a] design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State.”

La Redoute claimed that Article 17 thus created legal uncertainty and, as such, violated Article 6 of the European Convention on Human Rights which protects the right to a fair trial. It also asked the Cour de Cassation to refer a preliminary ruling question to the ECJ in that regard.

Cour de Cassation Not Convinced

The Cour de Cassation was not convinced by all these arguments. The court first noted that the European Court of Justice ruled in Case C-5/11, Criminal proceedings against Titus Alexander Jochen Donner [see also here] that Articles 34 and 36 of the TFEU must be interpreted as meaning that they do not preclude a First Member State from prosecuting a copyright infringement case if infringing copies of works protected by copyright in the First Member State are sold to the public in its territory, even if the sale is concluded in a Second Member State where these works are not protected by copyright.
This Cat is All for Free Movement

In the Donner case, an Italian company was selling unauthorized reproductions of furniture which were protected by German copyright law as works of applied arts, but were not at the time protected in Italy. The transporter of these goods had been found guilty of abetting copyright infringement by a German court.

The Cour de Cassation also found that Article 2 of the Berne Convention, which states that the enjoyment and exercise of rights protected by the Convention are independent of the existence of protection in the country of origin of the work, applied to this case.

The Cour de Cassation rejected the argument that Article 17 of Directive 98/71/EC creates legal uncertainty, noting that that the Court of Appeals had held that differences in the protection of copyright protection result from the sovereign right of each Member State to legislate in this particular area. For the Cour de Cassation, such disparities do not affect the right to intelligibility and predictability of the law, “if national law in this area is generally accessible.”

The Cour de Cassation further noted that La Redoute did not argue that French law is confusing, nor did it argue that legal protection in that area, in France or Italy, fluctuates in such a way that legal standards become unpredictable to the point of undermining the free movement of goods between EU Member States.

La Redoute also argued that copyright protection is not provided by the law of the Member States where the damage is suffered, nor where Plaintiff filed suit, but rather by the law of the Member State where the act which generated the infringement occurred. Therefore, French courts should have applied Italian law, since the allegedly infringing shoes had been manufactured there. For La Redoute, by applying French law, the Paris Court of Appealshad violated Article 5.2 of the Berne Convention.

But the Cour de Cassation was not convinced, as under Article 5.2° of the Berne Convention, the enjoyment and exercise of the author’s rights are “independent of the existence of protection in the country of origin of the work” and “the extent of protection, as well as the means of redress afforded to the author to protect his rights, [are] governed exclusively by the laws of the country where protection is claimed.”

La Redoute’s appeal to cassation was dismissed entirely. 

Image of the cat in the box is Dwarfed courtesy of Flickr user Quinn Dombroski  under a CC BY-SA-2.0 license.

Arnold J orders biggest website blocking to date

Fabio pictured while wondering
about the implementation costs
of the blocking order
just issued against him
Following last week's judgment in Cartier v BSkyB [here, a case concerning the possibility of requiring internet service providers (ISPs) to block, or at least impede, access by their subscribers to websites that advertise and sell counterfeit goods] this morning Arnold J returned to the more traditional ecosystem for blocking injunctions in the UK, ie copyright and s97A of the Copyright Designs and Patents Act 1988 (CDPA). As readers will remember, by adopting this provision the UK transposed Article 8(3) of the InfoSoc Directive into its own national law.

What is special about this case is that here Arnold J ordered the biggest website blocking with a single applications to date, with a total of 21 websites (all using the Bittorrent P2P file-sharing protocol) involved.

The claimants were record companies claiming on their own behalf and in a representative capacity on behalf of the members of BPI (British Recorded Music Industry) and PPL (Phonographic Performance Ltd).

The defendants were major UK ISPs that have a market share of some 95% of UK broadband users.

The 21 websites involved were broadly the same in their operation and service as The Pirate and its likes. This means that they provided an organised directory of content which users could search and browse and from which they could select and unlawfully download the sound recordings or other content of their choice.

The judge found that the websites infringed copyright on three grounds: (1) by communicating copyright-protected works to the public; (2) by authorising infringements by UK users; (3) by acting as joint tortfeasors with UK users.

Arnold J ordered the defendants to block access to the infringing websites and, similarly to what he stated in previous judgments (most recently, Cartier), he held that ISPs should bear the costs of implementing the orders.

Artjunkie snatched from the jaws of villainy, but no happy ending

It's unusual for the IPKat to feel disappointed when the party in the right emerges from court as the victor, but here's a case in point: Alison J. Hendrick v Tony Knight (O-323-14), a decision of Appointed Person Geoffrey Hobbs QC back in 17 July on appeal from the UK Trade Mark Registry, is about as depressing a piece of trade mark litigation as anyone might hope to read on this weblog.

In short, the facts as established in this and earlier litigation would lead any reasonable person, in possession of his wits and faculties, to the conclusion that Tony Knight is something of a serial trade mark scoundrel. He has gone to some lengths to undermine IP rights belonging to Dame Vivienne Westwood OBE [see Westwood v Knight [2010] EWPCC 16, noted by the IPKat here, and Westwood v Knight [2011] EWPCC 11, noted by the IPKat here, as well as Katpost here] and this time his victim of choice was Scottish designer Alison Hendrick.

In this instance Geoffrey Hobbs QC was hearing an appeal against decisions to reject Knight's oppositions to Hendrick's applications to register a skull device mark and the word mark ARTJUNKIE. The Hearing Office had held, unsurprisingly, that Knights own skull device mark was invalid and he was ordered to pay costs. Knight appealed on the grounds that the Hearing Officer had failed to carry out a full and proper investigation into the evidence, some of which was lost or wrongly excluded, and that his decisions were influenced by comments made about Knight in an earlier judgment in unrelated proceedings.

The Hearing Officer had found that Hendrick was the senior user of the marks and that Knight had both copied her signs and registered his device in bad faith. As if that wasn't enough, it was held that Knight had flouted rules and directions, been aggressive in his approach to the litigation and had provided both false and unreliable evidence -- to the extent that it was appropriate to order him to pay the costs of the proceedings on an indemnity basis.

Solicitors and counsel acting for Hendrick pro bono sought the costs of the appeal under section 194 of the Legal Services Act 2007.  They argued that, following a determination of the appeal in Hendricks favour, a referral could be made to the court under section 76(3) of the Trade Marks Act 1994 so as to trigger section 194 retroactively and entitle them to costs. Hendrick also suggested that the case be referred to the Director of Public Prosecutions on the basis that Knight had falsified evidence in an attempt to pervert the course of justice.

While the Appointed Person dismissed Knight's appeal, he ordered that the parties were to bear their own costs of the appeal and that no referral would be made by the Tribunal to the Director of Public Prosecutions.

* There was nothing of legal interest in the substantive grounds of appeal. In the absence of manifest error or serious procedural irregularity, the Hearing Officer was entitled to find that Hendrick was the senior user of both the device and word marks, as well as the creator of the device that Knight had invalidly registered. 

* The question of Knight's conduct was more interesting. The Appointed Person agreed that there was ample justification for the Hearing Officers condemnation of Knights approach to the conduct of the litigation, and there was no sign that statements made about Knight in an earlier, unrelated, judgment had influenced the decisions. Regarding the Registry proceedings, the Hearing Officer was justified in concluding that Knights failure to produce originals or better copies of evidence, despite directions to do so, meant it was inevitable that he would be regarded as the source of false and unreliable evidence. In regard to the conduct of the appeal, he had adopted much the same approach. He was tirelessly obstructive, unreliable and aggressive when challenged. Further, his account of the hearing in the proceedings at first instance was substantially inaccurate and unreliable.

Knight had failed to comply with directions to file evidence in the Registry proceedings, which he was then seeking permission to adduce on appeal on the basis that the evidence had been filed but was lost. It was not possible to grant these requests (i) in light of his earlier non-compliance and (ii) in the absence of evidence that he had, in fact, duly filed evidence in the Registry proceedings.

Allegations of document fabrication should be determined following cross-examination and with the safeguards that apply to the giving of expert evidence in High Court proceedings under the Civil Procedure Rules (CPR 35). A failure to do so in the present case did not amount to a serious procedural irregularity, but did require a more detailed review of the decisions on appeal than would have been necessary or appropriate in other circumstances.

* As to costs, there was no power under Rules 67 and 73(4) of the Trade Mark Rules 2008 to make an award for costs incurred by a non-party in Registry proceedings, at first instance or on appeal to the Appointed Person. Nor could the procedural requirements for referral to a court under section 76(3) of the Trade Marks Act 1994 and rule 72 of the Trade Mark Rules 2008, for the purposes of seeking an award for costs where representation was pro bono under section 194 of the Legal Services Act 2007, be satisfied at such a late stage of proceedings.

* Should Knight's conduct be referred to the Director of Public Prosecutions? While anyone who considers that a crime has been committed -- such as an attempt to pervert the course of justice by falsifying evidence -- may raise the matter with the appropriate authorities. However, no special weight is given to a referral made by a tribunal. In the present case, making a referral would only add strife between the parties. Knights behaviour had been condemned at both first instance and on appeal, and in the circumstances, a referral would kill any prospects and possibilities of the parties disengaging from hostilities.

This Kat is pleased that Knight's appeal was dismissed, but there was no serious possibility of it succeeding.  He is however quite distressed that people like Knight, who go around filing other people's trade marks as though they are his own and then trying to grind them down through persistent, dishonest and apparently vindictive litigation, should be allowed to carry on using the trade mark system without any form of supervision. The District Court of The Hague issued an anti-trade mark filing injunction as long ago as 2011 in a comparable case (noted by the IPKat here).

Is this true for
IP rights?
Merpel is puzzled about the reference to the parties "disengaging from hostilities".  Alison Hendrick neither invited nor initiated any hostilities, unless the creation of a new brand can be said to be the initiation of hostilities, and it was never her wish nor her intention to engage in them: she was merely being trying to defend, through the Trade Mark Registry and the Appointed Person, the rights which every British government in recent years has ceaselessly described as being so important to the development and sustaining of a viable enterprise culture.  Merpel feels that a failure to have Knight bound by law -- if not by hand and foot -- to stop him filing other people's IP and then harassing them is an unsightly blot on the fair and improving landscape of IP litigation: if she only knew how to spell pusalliminuous, pusillenanious, pussylanimous pusillanimous she'd be using it right now ...

Some further reading on recent cases involving naughty litigants: 

  • Successful claimants in design infringement action jailed for fabricating evidence: Utopia Tableware v BBP Marketing Ltd [2013] EWHC 3483, noted by the IPKat here
  • Patent owner does enough to merit being sent to prison but runs into a merciful judge: Brundle v Perry [2014] EWHC 979. noted by the IPKat here.

Wednesday, 22 October 2014

BGH decision "Yellow dictionary" colour trade mark dispute

The German Federal Court of Justice (Bundesgerichtshof, short: BGH) has now published the full grounds (in German) of its recent decision in the "yellow dictionary" trade mark dispute between German publishing house Langenscheidt and RosettaStone (case reference I ZR 2284/12 “Gelbe Wörterbücher” of 18 September 2014); please recent IPKat report hereIn its decision the BGH found that the yellow product packaging and advertisements used by RosettaStone, a business which distributes language learning software, infringes the colour trade mark owned and extensively used by Langenscheidt.


What had happened? German dictionary publisher Langenscheidt and language software publisher Rosetta Stone both used different but similar shades of yellow on their products: Langenscheidt mostly for the covers of its bilingual dictionaries, Rosetta Stone mostly for its language learning software.  A conflict ensued and Langenscheidt took the matter to court, alleging trade mark infringement under § 14 (2) No. 2 German Trademark Act. The lower courts agreed (Landgericht of Cologne, case reference 31 O 352/11 of 19 January 2012 and Oberlandesgericht Cologne, case reference 6 U 38/12 of 9 November 2012). They ordered an injunction of Rosetta Stone’s use of the colour yellow and declared it liable for damages and costs. 
Rosetta appealed and applied for a cancellation of Langescheidt’s colour trade mark at the German Trade Mark & Patent Office. Unsuccessful in the first and second instances, this action is currently also pending at the BGH but has so far not been decided; (case reference I ZB 61/13).  The oral hearing in this case is scheduled for tomorrow….

Decision: in its only 60 paragraphs long decision the BGH confirmed the lower courts’ decisions and held that there was likelihood of confusion under § 14 (2) No. 2 German Trademark Act.

The BGH’s headnotes neatly summarise this concise  decision (Kat translation):

(a) A suspension of a trade mark infringement court proceedings with regard to a pending cancellation action against the trade mark on which the infringement proceedings are based will usually not be allowed, where there no utmost probability (“keine überwiegende Wahrscheinlichkeit”) of success in the cancellation proceedings.
(b) A heightened degree of distinctiveness of an abstract colour trade mark is not a necessary prerequisite for an assumption of trade mark use of the colour use objected to.
(c) There is a high product similarity between language learning software and bilingual  dictionaries.
(d) Where consumers regard a colour used on product packaging as a (secondary) sign and not as part of a combined sign, then the colour has to be the basis of a isolated comparison of similarity of the signs.
In more detail:  the BGH decided against a suspension of the infringement proceedings pending the outcome of Rosetta Stones’ cancellation action against Langescheidt’s mark because “its outcome was still uncertain”.  The BGH also found that Rosetta’s use of the colour yellow was “use as a trade mark” but acknowledged that consumers tend to view the use of a colour on products, packaging and advertisements as an ornamental embellishment and would only “in exceptional cases” interpret it as trade mark use. Nonetheless, the German market for bilingual dictionaries was strongly influenced by the use of colours functioning as indicators of trade origin. This not only affected related products, including Rosetta’s language learning software, but also meant that consumers would regard the Rosetta’s extensive use of the colour yellow in its market segment as a sign indicating trade origin. Langenscheidt’s registered colour trade mark had acquired an “average of degree of distinctiveness” due to its long term use.  

Also yellow
Referring in much detail to the CJEU’s recent decisions in the Specsavers (C-252/12) and the Oberbank and Santander cases (joined cases C-217/13, C-218/13), the BGH found a likelihood of confusion. The judges held that the claimant’s and defendant’s goods (bilingual dictionaries vs. language learning software) were very similar: stating that a dictionary was a “helpful and indispensable aid” when learning a language. Furthermore, the shades of yellow used by both parties were highly similar. Even though the defendant had also used its word mark “RosettaStone” and blue stone logo on its products and in advertisements, in an overall impression consumers would nonetheless regard the use of colour as an independent sign so that any comparison of the signs had to focus on the colour in isolation. Overall, and bearing in mind the average degree of distinctiveness of the claimant’s yellow colour trade mark and given the high degree of similarity between both, the signs and the goods, a likelihood of confusion could not be excluded.  

The issue of ‘trade marks and colour’ has been discussed in several recent CJEU decisions, notably Specsavers, Oberbank and Santander cases and is in the centre of OHIM’s recent “Common Communication on the Common Practice of the Scope of Protection of Black and White Marks” of 15 April 2014. The BGH’s decision contributes illustrates that consumer habits and market practices can have a strong impact on the assessment of likelihood of confusion.  It will be interesting to see what the BGH decides in RosettaStone’s cancellation action ...

Wednesday whimsies

"Thank you" 1.  In a world which is as full of anger, resentment and selfishly bad manners as the one in which we sometimes seem to be living, it never hurts to express a little gratitude from time to time.  It is in a spirit of genuine appreciation that the IPKat, Merpel and all the blogging team thank our readers for their continued interest and support.  Yesterday another milestone flashed by when we spotted that this blog had received its 11 millionth page view.  It goes without saying that we will do our best to maintain and improve on our current efforts to bring you a combination of good IP reporting and analysis, entertaining and sometimes provocative comment and stimulating debate.  Thanks!

"Thank you" 2. The IPKat received a very sweet email this morning from Stephen Green (Southampton Solent University), whose request for guidance on reading materials relating to US/UK comparison of character right protection was posted on Friday. Stephen tells us that he has already been rewarded with some helpful responses from readers.  This Kat is happy to pass this expression of gratitude to the blog's readership: as he has often said in the past, in the IP community there are always times when we need one another's help, so it warms the heart to see that help being so swiftly and freely given.  Thanks, again!

Around the weblogs.  The 1709 Blog's Ben Challis has produced yet another colourful CopyKat round-up of topical copyright issues.  Our good friend Laetitia Lagarde writes on Class 46 on an application for revocation of the LAMBRETTA Community trade mark that confronts IP Translator issues; the same blog reminds users of the Office for Harmonisation in the Internal Market that the closing date for the office's user satisfaction survey is the end of this week.  The jiplp weblog lists the contents of JIPLP's November issue and reproduces in full the editorial on the concept of the typical royalty rate for IP licences.

Limerick competition.  The IPKat's limerick competition, for which the prize is complimentary registration for CLT's Intellectual Property Round-Up for Non-Patenty People Conference [not its real name ..] in London next week, has already generated some fascinating entries. The IPKat has also received a good deal of correspondence concerning what constitutes a limerick.  For the avoidance of doubt, do read the explanation of limericks on Wikipedia, here, rather than risk disappointment or, worse ...

Katfriend and IP enthusiast Andrew J. Clay (Squire Patton Boggs) writes to tell him about Sebastian, a 3 ¾ year old boy who, being slightly oxygen starved at birth, lives with cerebral palsy. He can walk – but only on his tip toes as the muscles in his legs are under such tension that his feet are literally scrunched up. The constant muscle tension in his legs is literally bending the bones in his legs which means that, by the time Sebastian is eight, he will be consigned to a wheel chair for the rest of his life. However, if he has a surgical procedure to cut some of the nerves affecting his legs, he has a really good chance of being able to walk, run, play football, and do a whole host of other stuff more or less just like the rest of us [Merpel has never seen Andrew run, let alone play football, but she's prepared to give him the benefit of the doubt ...]. For an optimal outcome he needs to have this operation in the spring of 2015. The operation is not available in the UK on the National Health Service so his parents are raising £75,000 so he can have the operation in the US, performed by a leading specialist for this surgical procedure. So far they have so raised just over £30,000.  Andrew is going to do a sponsored bike ride across the north of England from Morecombe to Bridlington – about 160 miles – on Friday 31 October to raise money for Sebastian’s operation. This Kat thinks this is jolly decent of him and has already sponsored him; he hopes readers will do likewise. You can read Sebastian's full story here and can sponsor Andrew by following this link.

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