IPso Jure - intellectual property blog by Peter Groves

Back on the road again

2012-01-24T19:43:00.000Z

You might have noticed, gentle reader, that I haven't been podcasting lately. There are several reasons. My sponsorship from Olcott International ran out, too many subscribers did not renew, the SRA needed another pound of flesh, and I had taken on a part-time job at the RIBA in addition to continuing to practice law and running a legal publishing company. Something had to give, at least temporarily. At least I could draw encouragement from the fact that the non-renewals liked the product, just didn't get a chance to listen. As one of them wrote:

It's not like listening to a lecture at all, more like sitting having a conversation with a very knowledgeable (and funny) friend ... You have a very clear way of putting things and a very reassuring voice, and I like the way you maintain your enthusiasm throughout.

Now I am ready to get started again. Having a publishing company to assume responsibility for it is a big help (although it makes no difference to who is doing the work - it's still me, with help from the same group of assistants, depending on their other commitments, plus a new one I hope). On the other hand, I have also taken on some tutorial work, at the Russian Academy of Justice in Moscow. In Cheryomushki, to be precise, though it's far removed now from what Shostakovich depicted in his opera set there.

So, the hiatus is over, and I will even try to work back to where I left off - last July. Five missing programmes, if I can manage to reverse-engineer them, but I'll concentrate on getting the new ones recorded and published. I will get January done when I get back from Moscow ...

Revived copyright suddenly becomes less of a problem

2012-01-19T08:53:00.001Z

Every New Year's Day, copyright stops protecting works whose author died during the year seventy years earlier. This year, one of those authors affected by the rule - whose works (the published ones, at least) now fall into what is loosely called the public domain, is James Joyce, and this brings to an end a particularly unfortunate episode in the history of literary copyright. This article in the New Yorker by Mark O'Connell explains, and it's well worth the time of anyone interested in copyright to read it.

The coming war on general-purpose computing

2012-01-19T08:37:00.001Z

That's the title of a great piece, originally a speech to the Chaos Computing Conference in Berlin last December, by Cory Doctorow. It's not as long as it looks at first glance: there are a lot of comments on it.

Bahamas remiss in making copyright payments

2012-01-08T17:45:00.000Z

I'm astonished by this story from The Tribune (no, not the one with the Group, if it even exists any more) about how a fund to pay rights owners for the use of their copyright material in The Bahamas has paid out nothing in the eleven years of its existence. Not a matter of earth-shattering importance, though significant to many of those waiting for their money I dare say: but I thought it was worth passing on.

It's a long-running saga, on the theme of small country being beaten up to make it do what the US film industry wants: see this blog entry from a few years ago. Thanks to Cathy Gellis for pointing out to me this additional (predictable) dimension to the story. Still hard to see why all that money has been sitting there with no mechanism to pay it out, though!

Patent wars heating up

2011-12-30T13:01:00.000Z

Nowhere is intellectual property taking on the characteristics of an end in itself rather than a means to an end than in the mobile phone world. Enforcing patents must be taking as much time and effort as making the phones in the first place. Last week The Guardian reported another development, with IPCom (frequently cast as perhaps the biggest villain of the piece) taking action against retailers selling HTC smartphones in Germany. The report is impressively coherent for a newspaper: the author (Charles Arthur, the paper's technology editor) clearly knows more than a little about patent law. Most journalists would have made this into a story about copyright and trade marks too.

HTC said it knew nothing about any complaints against retailers and that the patent it is alleged to be infringing is in fact invalid. One good reason for having infringement and validity dealt with in the same court? Not in this case, it seems (though the principal remains) because the challenge to the patent takes the form of an opposition in the EPO, the outcome of which is expected on 24 April 2012. By which time an awful lot of HTC handsets will have been sold, or not.

Tougher data protection laws on the way

2011-12-30T12:49:00.000Z

The European Commission has long been concerned about how Internet businesses treat personal data. Its proposals for a new data protection regulation (to replace the present directive and overcome the problems that arise from the need to transpose the rules into national law) are due to be published on 25 January. The Commission aims to give consumers the power to control the way their personal data are processed by companies, and to impose a bit more discipline on data controllers by introducing fines of 5% of global turnover for businesses who are found to be in breach of data protection laws.

The draft also proposes to introduce obligatory data protection officers for all public sector bodies and private sector bodies with more than 250 employees. The directive made that something that Member States could choose to have: Germany already had it when the directive came into force, hence its inclusion, but the UK government always said it would not be taking up the option. Now it seems it will have no choice - but what organisation of that size doesn't already have a data protection officer, even if they have a load of other responsibilities too?

Fair dealing as a user's right

2011-12-30T08:15:00.001Z

In this fascinating post on his blog, Ariel Katz of the University of Toronto explains a number of facts about the fair dealing "exception" which have been lost to sight in the century since the Copyright Act 1911 received Royal Assent - on 16 December, a milestone that I was too preoccupied with other stuff to notice. I'll have to be more alert for the centenary of the 1956 Act.

I have been musing on intellectual property rights and corresponding obligations since at least yesterday, after something the IPKat said, and Ariel Katz's piece fits very neatly with that. Fair dealing as a user's right, not a mere exception to the owner's rights. This is how US and UK copyright laws came to diverge, then: this is the difference, exiguous as it might be, between fair dealing and fair use.

And what an excellent title for the piece.

Limiting Blackberrying to working hours

2011-12-25T19:43:00.001Z

I was struck by this item from Automotive News: VW is going to ensure that having a BlackBerry does not intrude into its executives' private lives - by craftily ensuring that they shut off email at the end of the working day and start it up at the beginning of the next one. Isn't technology fantastic? Oh, to be able to survive without email being pushed at you all the time. My BB shuts off at 11 pm and starts up again at 6 am: I set it to do that, and I guess a VW executive could do the same - however, setting mine to shut down completely does mean that the phone doesn't ring either - not a bad thing in the middle of the night ...

Nervousness about access to licences stymied SAAB deal

2011-12-23T22:03:00.000Z

Anyone with an interest in the automotive industry will have been watching with horrified fascination as SAAB moved inexorably towards bankruptcy. It had that sense of seeing a massive accident unfold in slow-motion. Various saviours were lined up, including latterly several Chinese companies: and it seems that SAAB's parent, of which a colleague once memorably remarked that he'd worked in the motor industry since General Motors was a corporal, was reluctant to let any of them have it because they would acquire licences to use GM technology. Here is the story on the Motor Trade Insider website, though it acknowledges that it came first from the BBC. Other media will no doubt have the same story.

A novel(ish) reason for a deal to fall through, and one that makes it even more regrettable that an innovative and long-established carmaker with an attractive line of products (I still have very fond memories of attending a SAAB day at Silverstone years ago, with Erik Carlsson and Barrie Williams as my chauffeurs in then-new 9000s) should have ended up as part of the GM behemoth in the first place. It has now ended in tears. It probably would have done anyway - but on the other hand an MG-style rescue might have been possible.

Penalties for breach of Data Protection Act

2011-12-23T19:49:00.000Z

The Information Commissioner's Office has had the power to impose financial penalties (not fines) since April last year. Already there have been several examples of this new power being used. Now comes news of the biggest so far: on a local authority, for £130,000, for sending sensitive information about a child protection case to the wrong recipient. Unfortunately, data breaches don't come much worse than that (though there are plenty of examples that are about as bad, but different). The same authority had already had a formal warning from the ICO after to a similar breach. The ICO has also ordered that the authority's staff should be trained in the proper implementation of the authority’s data protection policy.

Do anything you want to do

2011-12-21T19:23:00.001Z

The Internet is a highly democratic medium. Anyone can publish whatever they like, subject to the laws of libel, trade mark and copyright infringement, and trade descriptions (no longer under that evocative name), and other laws, none of which anyone can afford to enforce. Nor is there any quality control. Which is why you encounter rubbish like this:

For a trade mark to be successfully registered it must be a unique word or stylised word which is used to represent specific categories of goods or services.

The firm of solicitors who uttered that piece of nonsense should stick to doing whatever they do best, and not try to take trade mark work away from people who actually understand it. I am constantly appalled at the inaccurate material put out by lawyers trying to market themselves. In a rational world, prospective clients would reject that firm and seek out a lawyer with a more harmonious relationship with the English language, but that might assume critical faculties which our education system has not bothered to cultivate in its charges for many years.

It reminds me of an occasion, ten or twelve years ago now, when I took an unexpected call from my firm's professional indemnity insurers. They had received a claim from a high street firm which had applied to register a trade mark for a client: no search had been carried out, and when the application hit the rocks the client claimed against the solicitors. The insurers didn't know whether there was a hint of negligence in this, so enterprisingly they phoned someone they insured who might know. I was rather flattered. It all depended, I suggested, on the terms of the retainer: had they advised the client about searching? Certainly just because no search was carried out the solicitors could not automatically be said to be negligent - but it was a lesson to me in the importance of sticking to what you know. Given that I am doing an inordinate amount of employment law at present, it might be a lesson I ought to revisit, but it seems there's a firm of solicitors somewhere that needs to learn it too.

What does that sentence say? What's wrong with it? First, a trade mark cannot be unsuccessfully registered. Second, there are many signs that can be registered - successfully registered, indeed - other than words, stylised or otherwise, and certainly not necessarily unique. Are some little bits of patent law creeping in here? And third, even though a trade mark might be coming (as Mr Justice Floyd said in introducing a lecture I attended a few weeks ago) to resemble one of those multifunction tools one sees advertised in the Sunday supplements, I have never seen it suggested that a trade mark might be used to "represent specific categories of goods or services". Used to distinguish the sources of specific goods or services, yes, but if that is what the writer meant that is what the writer should have written. After all, using words to convey precisely one's meaning is the essential skill of the lawyer - isn't it? That, and knowing a bit of law.

Word and/or phrase

2011-12-16T15:52:00.001Z

Talking the other day to a former colleague and professional pedant (in the best sense of the word: indeed, there should be no bad sense of it) I bemoaned the use of the expression "and/or". Of course, he had a relevant quote, but he rattled it off so quickly that I missed it. I spent a few minutes in the Law Society Library subsequently trying to find what he had been talking about, and came up with some great material - but not what I was after ...

"... that befuddling, nameless thing, that Janus-faced verbal monstrosity, neither word nor phrase, the child of a brain of someone too lazy or too dull to express his precise meaning, or too dull to know what he did mean, now commonly used by lawyers in drafting legal documents, through carelessness or ignorance or as a cunning device to conceal rather than express meaning ..." Employers Mut. Liab. In.s Co. v Tollefsen, 263 N.W. 376, 377 (Wis. 1935), per Fowler J.

And (or or, or both):

"To our way of thinking the abominable invention and/or is as devoid of meaning as it is incapable of classification by the rules of grammar and syntax." American Gen. Ins. Co. v Webster, 118 SW 2d 1082, 1084 (Tex. Civ. App. Beaumont, 1936) per Combs J.

Excellent stuff. The American courts always get there first, and usually say it very well. There are instances over there of statutes being struck down for uncertainty because of their use of the monstrosity. All I found from the English courts - all that merited repeating, anyway - was Lord Reid in John G Stein & Co v O'Hanlon [1965] AC 890, saying that the expression was "not yet part of the English language". In fact, it could be argued - couldn't it? - that he was wrong, by the mere act of uttering it himself. But 21 years earlier Viscount Simon had formulated the most powerful denunciation of the usage - too strong, perhaps, for judicial repetition:

"... the bastard conjunction ... which has, I fear, become the commercial court's contribution to basic English."

Bonito v Fuerst Bros [1944] AC 75, which Robert directed me to after I asked him to repeat it. It's good to know that even with a world war in progress the then Lord Chancellor could find time to try to keep the language on the straight and narrow. A pity that judgment isn't required reading in law schools.

Oh, and you'll find the sources explored at some, entertaining, length in Miscellany-At-Law by the great Sir Robert Megarry. A book that should be on the shelves of every lawyer - why have I never had a copy?

For anyone looking for a steer: the abomination can usually be replaced just with "or", and if necessary the formulation "A or B, or both" (or, I suppose, "any one or more of A, B and C") can be deployed without damaging the language, or offending a pedantic reader. And it will be clearer what is meant.

Court closes Norwich Pharmacal loophole

2011-12-16T14:22:00.001Z

A Norwich Pharmacal application can be made to the court against innocent third parties to obtain information to enable proceedings to be brought against a wrongdoer. The original case, Norwich Pharmacal Company & Ors v Customs And Excise [1973] UKHL 6, [1973] 3 WLR 164, [1973] FSR 365, [1973] 2 All ER 943, [1974] RPC 101, [1973] UKHL 6, [1974] AC 133 (26 June 1973) was about patent infringement. The principles laid down there were refined in the later case of Bankers Trust v Shapira [1980] 1 WLR 1275. The power of the court to make such orders was preserved in CPR 31.18.

The applicant for a Bankers Trust/Norwich Pharmacal order must provide a collateral undertaking that they will only use the documents disclosed in the case for the purposes of that litigation. This is covered by CPR 31.22.

Until now there has been no reported case on the interaction between the collateral undertaking and the use in subsequent proceedings of documents which were obtained from a third party following a Norwich Pharmacal application. The leading textbooks disagree on whether the collateral undertaking applied in Norwich Pharmacal cases.

Now, in Shlaimoun & Infina Fund v Mining Technologies (Queen's Bench Division, 13 December 2011, not yet on BAILII) Mr Justice Coulson has found that the collateral undertaking does apply but, when it makes a Norwich Pharmacal order, the court is implicitly giving permission to the applicant to make use of the documents in subsequent proceedings.

CJ Jones Solicitors LLP acted for Mining Technologies and instructed Charles Douthwaite of 4 New Square. Thanks to Chris Jones for a copy of the judgment and this note.

What to do with a redundant definition in your document?

2011-12-15T18:22:00.002Z

Although it's a case involving banking documents, Rayford Homes Ltd v Bank of Scotland Plc and Anor [2011] EWHC 1948 (Ch) (23 July 2011) raises points of more general application. It concerned a strange situation: there was an unused definition (of the expression "BoS Priority") in a document that had been based on the bank's standard form, and it should have had a number inserted to give it any meaning anyway. What was the court to make of it?

The correct thing to do is to adopt the "Chartbrook approach", after Chartbrook Ltd v Persimmon Homes Ltd [2009] AC 1101: "there is not, so to speak, a limit to the amount of red ink or verbal rearrangement or correction which the court is allowed. All that is required is that it should be clear that something has gone wrong with the language and that it should be clear what a reasonable person would have understood the parties to have meant" (per Lord Hoffmann). The purpose of the definition, even without a connection to an operative provision in the agreement, was clear enough, and the later insertion (by the bank) of a figure in the space provided. It looked as if it limited the bank's priority to the amount stated, although the bank argued that it didn't because the definition wasn't actually used in a provision of the loan agreement. Not a very attractive argument when it was the bank that had, first of all, deleted the provision which the definition should have been connected to, and second, inserted a figure that placed a limit on its own priority. And adopting a Chartbrook approach the court took the view that the bank was indeed bound by what it had written into the definition. The fact that all that was needed to give the definition effect was to add a few words to an operative provision was not determinative, but it seems to me that it indicates that little ink would be needed to make the agreement work as it looked as if it should work.

Copying functions of computer program is not copyright infringement

2011-12-01T20:08:00.001Z

That's supposed to be how the law always worked, and Pumphrey J said as much in his judgment in Navitaire v easyJet [2004] EWHC 1725 (Ch) (30 July 2004). Advocate General Bot has now largely endorsed this approach in his opinion in Case C-406/10, SAS Institute v World Programming, a reference from the High Court (Arnold J, who posed eight very detailed questions) which has provided an invaluable and rather overdue opportunity for an explanation of how the earliest European Community effort in the field of copyright, the software directive, works."The functionalities of a computer program and the programming language are not eligible, as such, for copyright protection," he said. But the functionality of the program might be a substantial part of the copyright work, and it's a matter for the High Court to decide whether that's the case.

The program in suit emulates the software environment created by SAS, allowing programs written to operate in that environment to operate without it, using a much cheaper alternative. The software directive distinguishes copyright purposes between "ideas and principles which underlie any element of a computer program, including those which underlie its interfaces" and the expression of those ideas. Given the nature of the software in this case it would be hard to imagine a case which involved more "idea".

Advocate General Bot said that the possible workings of a computer program and the language used to create it is not in itself copyrightable because they constitute ideas without "concrete expression". Ideas on their own are not copyrightable.

The AG defined the functionality of a computer program as "the set of possibilities offered by a computer system, the actions specific to that program," going on:

In other words, the functionality of a computer program is the service which the user expects from it. In my view, the functionalities of a computer program cannot, as such, form the object of copyright protection under Article 1(1) of Directive 91/250.

... Where a programmer decides to develop a computer program for airline ticket reservations, that software will contain a multitude of functionalities needed to make a booking. The computer program will have to be able, in turn, to find the flight requested by the user, check availability, book the seat, register the user’s details, take online payment details and, finally, edit the user’s electronic ticket. All of those functionalities, those actions, are dictated by a specific and limited purpose. In this, therefore, they are similar to an idea. It is therefore legitimate for computer programs to exist which offer the same functionalities.

There are, however, many means of achieving the concrete expression of those functionalities and it is those means which will be eligible for copyright protection. ... [C]reativity, skill and inventiveness manifest themselves in the way in which the program is drawn up, in its writing. The programmer uses formulae, algorithms which, as such, are excluded from copyright protection because they are the equivalent of the words by which the poet or the novelist creates his work of literature. However, the way in which all of these elements are arranged, like the style in which the computer program is written, will be likely to reflect the author’s own intellectual creation and therefore be eligible for protection.

Remarking that this was consistent with the express purpose of the Directive, he went on:

To accept that a functionality of a computer program can be protected as such would amount to making it possible to monopolise ideas, to the detriment of technological progress and industrial development.

But then, in almost the next paragraph, he said:

In my view, as is the case with other works that may be protected by copyright, the fact of reproducing a substantial part of the expression of the functionalities of a computer program may constitute an infringement of copyright.

The distinction between ideas and expression is necessarily very nuanced, and reproducing the source code that expresses the functions of a computer program could infringe copyright. The Infopaq judgment (Case C‑5/08 [2009] ECR I-6569) tells us that parts of a work enjoy copyright protection, provided that they contain some of the elements which are the expression of the intellectual creation of the author of the work. A computer program must be regarded as a literary work in its own right, so "the same analysis must be adopted in relation to the elements that constitute the expression of its author’s own intellectual creation".

The question of infringement concerns whether the reproduction is of "a substantial part of the expression of the functionalities of a computer program". This analysis takes no account of the "nature and extent of the skill, judgment and labour expended in devising the functionality of a computer program". The way that computer programs are written will determine whether they are protected by copyright: that's a matter of the degree of originality in the writing of the program. So copying the functions of a program is not infringement, but copying the expression of those functions might well be, according to the Advocate General (and, in due course, probably according to the Court): and the task of drawing the line, as it had to be, is left to the referring court. I wonder whether Arnold J feels he's got value for the effort he put in to posing the questions in the first place?

Class headings do not cover all

2011-11-29T20:23:00.001Z

Advocate General Bot has given his opinion in the IP Translator case, Case 307/10, Chartered Institute of Patent Attorneys indicating that he doesn't think that an application that repeats the class heading from the Nice Classification does cover all the goods or services in the class. If that sounds arcane, consider the application in suit - which was designed, and filed, with a view to getting an authoritative statement of the law in this area: CIPA filed for the UK trade mark IP TRANSLATOR in Class 41, the class for translation services, for "education; providing of training; entertainment; sporting and cultural activities" - the class heading for that Class, to which translation services are proper, but which does not include them.

The AG says that the goods or services have to be stated with sufficient precision and clarity as to enable the competent authorities and "economic operators" (are they related to stakeholders, perhaps?) accurately to determine the scope of the trade mark. Exactly. The appropriate level of generality will vary from case to case - that sounds like a bit of a cop-out, but at the level at which the Court of Justice operates statements like that are surely unavoidable. The class headings might, says the AG, suffice for this purpose, so they could be used - but subject to that comment about precision and clarity (and it seems to be lacking in class 41).

Then he comes to the nub of the problem, Communication 4/03 of the President of OHIM, which established the "class headings cover all" principle. This does not satisfy the requirement for precision and clarity, whether for Community trade marks or national ones - and this leads to cluttering, because there are too many over-broad registrations. Moreover, there is the interesting paradox (all tied up with the difficult question of how this mess can be fixed) that specifications will have to be amended by being limited (maybe the addition of the time-honoured formula, "all being translation services", if that's still permissible, to the IP TRANSLATOR specification) but the limitation will have the effect of adding goods or services that weren't included in the first place. Only the European Union could create chaos like this.

The fact that Nice is periodically amended, and new goods and services slotted into the existing classes, which often retain unchanged class headings, is another demonstration of the absurdity of allowing registrations on this basis. Precision and clarity are absolutely essential, not the lazy, thoughtless approach encouraged by OHIM's ruling, and moreover we need something that links registrations more closely to the actual use made of the trade mark, otherwise the registers - national and regional - will become more cluttered, the range of available trade marks will become more depleted, and businesses will find markets foreclosed to them just because they cannot use the trade marks they want (or need) to be able to use. Let's hope the Court of Justice recognises these problems and imposes some commonsense on the trade mark system.

Computer simulations patentable

2011-11-29T17:12:00.001Z

In Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat) (05 October 2011) the Patents Court (HHJ Birss QC) held that computer simulations of designs are not just mental acts (and therefore unpatentable). The IPO had wrongly applied patent law when it assessed four applications for patents for computer simulations of designs for the working of drill bits for the oil industry. The IPO had wrongly asked whether the inventions were capable of being performed mentally: the right question was whether they were in fact merely performed mentally. This had caused the IPO to fail to recognise that the claims were make only in relation to the simulations themselves and were therefore not subject to the exclusion for mental acts. The examiner had applied the exclusion on too broad a basis.

“The claimed invention cannot be performed by purely mental means and that is the end of the matter. Put another way, the contribution is a computer implemented method and as such cannot fall within the mental act exclusion.”

The judge said that the inventions were not subject to any of the other exceptions to patentability. They merged mathematical calculations with computer software and were sufficiently technical to be patentable. The invention was more than just a computer program: it was a method of designing a drill bit, and it did not fall solely within the excluded territory.

The problem with the application had been that it was very broad. It did not not tether the claims to simulations on a computer, or to actually manufacturing improved drill bits, but this was deliberate as the draftsman wanted to catch such matters as consultants designing drill bits as well as bits which had been manufactured. However, the skilled reader of the patent would understand that the simulations would be carried out using a computer, so the complicated wording might have been unnecessary.

As for the mental act exclusion, this is very narrow and covers only calculations which are actually performed mentally. It does not catch calculations carried out using a computer.

Second-hand software

2011-10-30T18:20:00.000Z

There's a lot of it around, but is it legal? Can the licence be transferred to a buyer? That was the issue in Vernor v. Autodesk, in which Mr Vernor offered unopened, authentic, copies of AutoCAD for sale on eBay. When challenged he applied to the District Court for the Western District of Washington for declaratory relief (that link takes you to a piece published by Foley Hoag) and he got summary judgment. On appeal from the District Court, the Court of Appeals for the Ninth Circuit held that Autodesk's customers were licensees and not owners so the sale of the AutoCAD software to Vernor, which was prohibited by the AutoCAD license, was invalid. Mr Vernor was neither a licensee nor an owner and the first sale doctrine was of no assistance to him.

On 3 October the US Supreme Court declined a request to grant certiorari. This means that the Ninth Circuit's three-prong test for determining whether a software user is a licensee or an owner is the law, at least in the Ninth Circuit. This raises the intriguing and very US question whether other circuits will follow the Ninth, and if differences emerge the Supreme Court might well have to take the matter on. Meanwhile, the original claim is back with the District Court, and at the same time an expedition to Luxembourg is under way (from the Bundesgerichthof) in Case C-128/11 Oracle International Corporation v usedSoft GmbH, which might of course produce a completely different answer ... Given that the terms of the licence are crucial in these cases, that might be quite possible and perfectly correct. In any event, it's an interesting area.

Canadian copyright law and digital locks

2011-10-30T17:01:00.000Z

Here's an interesting posting by Michael Geist about the proposed Canadian copyright law changes, which would deal with (among other things) breaking digital locks. Canada would fall into line with the USA and its Digital Millennium Copyright Act, a piece of legislation which Draco would probably find quite to his taste (although he'd surely find the omission of the death penalty inexplicable), and as one would expect the chattering classes have a lot to say about this piece of cultural imperialism and the Conservative government's craven submission to Big Copyright - here, for example.

A particularly obscure branch of metaphyiscs

2011-10-29T21:55:00.003+01:00

Not my phrase: that's what Jacob LJ called design law, in Dyson v Qualtex five years ago. Earlier this week, I spent a day presenting a course on IP infringements and enforcement - someone else's course, so I was using materials I hadn't prepared, though I don't think I'd have covered the subject any differently. I found myself having to explain to the audience that designs featured less in real, practising, life than any other area of intellectual property law, but that the law was so complicated - such a mess - that it demanded a large chunk of such a course.

I've been explaining the same thing to my Russian students, and my American student, all studying for external London University LLB degrees, the American one having done her resit yesterday. The examiner demonstrates what might be thought to be an unhealthy interest in designs - worse than that, in fact, because the Community system isn't part of the syllabus and copyright seems to loom large, which makes it all seem highly artificial. But it's certainly an area of law in which, right now, there's quite a lot going on, with the Court of Justice handing down its judgment in the Pogs case last week and now the Court of Appeal deciding Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206 (27 October 2011).

The story so far is that last year Mr Justice Arnold held that Vax's Mach Zen vacuum cleaner did not infringe Dyson's UK registered design, much to some people's surprise and Sir James Dyson's dismay. Dyson appealed.

To succeed in such an appeal, the appellant would have to show that the judge had gone wrong in principle. That's a big ask, and I don't think Mr Justice Arnold is the sort of chap to do that very often. The case was based on Article 9(2) of the Community design directive, which refers to the degree of freedom of the designer in developing his design, and that (as Jacob LJ observed) plainly refers to the registered design, not the accused object. Dyson complained that the judge had referred several times to the freedom of Vax's designer. Jacob LJ thought that it mattered not, there being no change in the degrees of design freedom between the date of the design and that of the design of the Vax machine.

Dyson's counsel (Henry Carr QC) also stated his case as being that the judge had effectively decided (as paraphrased in the Court of Appeal by Lady Justice Black) that the better the design the more people would say that it is only going to be worse if I do it a different way, so the less the design freedom, and ingenious and innovative designs would be penalised. Jacob LJ did not read the judgment this way. Indeed, the judge specifically held that the registered design was "strikingly different" from the existing "design corpus": Dyson argued that he had however failed to apply the principle that where this is the case the new designi s likely to have a greater overall visual impact than if it is "surrounded by kindred prior art", as HHJ Fysh pithily put it in Woodhouse. The Court of Appeal rejected this approach, holding that the judge was still entitled to find that the Vax machine did produce on the informed user a different overall impression from that produced by the Dyson design.

Sir James Dyson is clearly unhappy, according to this report, though I don't think he has taken full account of the rile of the Court of Appeal. I am disappointed that he should have launched such a diatribe, although I can understand that he feels miffed. He ought however to be directing his ire against a design law which seems more hopeless the more I think about it.

Men at Work case won't go to appeal

2011-10-14T16:10:00.000+01:00

That interesting Australian copyright case involving the song Down Under by Men at Work, which was held to infringe copyright in the well-known, or "iconic" as it was called in the litigation, Kookaburra, has come to a halt with the High Court rejecting EMI's application to appeal. Mallesons have the story on the IP Whiteboard blog, which is always full of good stuff.

I'm not only old enough to recall the song, I am old enough to consider it new, in the sense that it is post-New Wave. And I couldn't remember anything in it that sounded like Kookaburra. Seems I was right, because the court needed expert assistance to find the bits that had been copied: there was no "ready aural perception" of the copied bars but they were there. But that does seem difficult to square with the notion of a musical work, which is intended to be enjoyed by being listened to (a literary work, by contrast, being enjoyed by being read). If you can't hear the similarity, is music copyright really engaged?

Any electronics patent attorneys out there?

2011-10-13T08:44:00.000+01:00

My good friend Pete Fellows, whose recruitment firm sponsors my IP podcasts and blawgs, tells me that he is looking for patent attorneys (including part-qualified ones) with a background in electronics, physics or computer science. It seems they are in short supply, and he's even offering a Samsung Galaxy fondleslab (original version) if they place a candidate you introduce to them. See here for more information.

Thomas More and the European Union?

2011-10-13T08:08:00.000+01:00

Reading - as I should have done many years ago, having bought it in August 1980 - Paul Johnson's absorbing history of Britain, The Offshore Islanders (Penguin, 1972), this sentence strikes me:

But equally he [More] can be seen as upholding an ancient and ramshackle structure, whose reality had never corresponded to its ideals, and which was now breaking up under the stress of nationalism ...

The next three words are, of course, "the Catholic Church", but it does sound remarkably like the European Union, of which the Catholic Church (and before it the Roman Empire) was a precursor in the limited sense that it created a union of a sort among the nations of Europe. I particularly like the "reality never corresponding to ideals" bit, which to me seems especially apposite as a description of trade mark law in the European Union. To that perhaps one should add designs, and prospectively patents too.

An Australian Feist

2011-10-12T14:43:00.001+01:00

Copyright in compilations remains a thorny issue, and if I needed reminding of it the other week explaining it to Russian law students certainly worked. Databases that aren't compilations, and vice versa - we are into the realm of metaphysics here.

Feist, SCOTUS's last word (as far as I know) on the subject of copyright in compilations (in suit, an alphabetical telephone directory for part of rural Kansas where I imagine telephones are few and far between, people likewise), was the death-knell for the "sweat of the brow" test, one of those graphic expressions that American lawyers use to the delight of legal dictionary-writers. In Telstra Corporation Limited & Anor v Phone Directories Company Pty Ltd & Ors [2011] HCATrans 248 (2 September 2011) the High Court of Australia has taken what seems to be a similar step, and given the close connection between Australian and English law this might be more important for us than Feist was.

The case raises interesting points about the need to identify the author or authors, and about the effect of using a computer. It has always struck me that making an alphabetical list using a computer is extremely unlikely to result in any sweat on one's brow. Read the interesting review of the points on Mallesons' IP Whiteboard blawg.

Troll trounced: Righthaven loses out

2011-10-12T14:27:00.001+01:00

It built its business on acquiring copyrights from newspapers and going after bloggers and others who used photos and the like on the web, but the model appears to have been flawed, reports Washington College of Law's Intellectual Property Brief. Righthaven sued one Leland Wolf for using a photo from the Denver Post, but the defendant successfully challenged the Colorado Dostrict Court's jurisdiction, which being based on copyright infringement was inextricably bound up with the merits of the claim. The judge held that the copyright assignment agreement had not transferred any real ownership interest to Righthaven, who could not therefore sue as owners. He dismissed the case and awarded Mr Wolf costs.

So what went wrong? I think that will have to await sight of the judgment, which doesn't appear to be on the web just yet, but the Brief on the Motion to Dismiss (which I am pleased to see was co-drafted by my friend Marc Randazza) gives us a good clue: the assignment, such as it was, gave Righthaven no rights to use the copyright works, just to sue for infringement. The rights were assigned "solely to coat its lawsuits with the veneer of legitimacy" - nice turn of phrase there. Here is the Strategic Alliance Agreement (see clause 7 in particular).

The excellent Electronic Frontier Foundation filed an amicus brief in the case and have more information about it here.

Wolf is one of over 50 cases brought by Righthaven in the Colorado court, so from their point of view a lot hangs on it.