Play it again, Sam

Recently, the European Commission announced that it would like to extend copyright protection for performers. Currently a performer’s copyright lasts for 50 years while an author’s or composer’s copyright lasts for their lifetime plus 70 years. The proposal from the European Commission would extend the performance copyright to 95 years. This change would mean that the copyright for sound recordings, for both the performers and directors, would be extended to 95 years.

Many opponents have pointed out that the change will give very few benefits to the majority of performers. According to the report by the Commission the change in law is likely only to bring in less than a £1 a year in royalties to performers. It has also pointed out that the increase is likely to hurt consumers the most causing a rise in prices and then only benefit the most powerful record companies and only the most famous of performers.

A government spokesperson told the BBC that “We are sympathetic to the European Commission’s goal of improving the situation for performers but we don’t believe that the current proposal achieves this aim. The UK believes the proposal is too complex and most of the benefits will go to the record companies rather than the performers. The UK is still considering the detail of this proposal and it will consider future alternatives that come forward.”

Although it is a laudable goal to help musicians earn more in royalties, the Commission needs to address other ways this might be achieved rather than by executing a complicated extension of copyright.

DoS Attacks remain a significant problem

Much has been said about the recent implementation of changes to the Computer Misuse Act 1990, with many blogging on the changes. See here for example.

Much of the attention has surrounded the need to implement legislation to plug the gap where Denial of Service (DoS) attacks were not adequately covered by the legislation. In short, a DoS attack is where a system is flooded with information requests to the point where the system cannot cope with the requests and is rendered unavailable. Read more here.

Under the old law, the question remained whether or not a DoS attack is “unauthorised access” within the definition of the Computer Misuse Act 1990. The changes to the law now define “doing anything without authorisation with intent to impair…the operation of a computer” in order to cover DoS attacks. The changes have increased the maximum jail sentence penalty to up to 10 years.

Whilst the changes are viewed as being long overdue, there are inherent practical problems enforcing the legislation – which the reforms fail to address.

An aggrieved party will have to consider:

• Firstly whether or not the suspected attacker is in the relevant jurisdiction.
• Secondly,  how to locate a police force willing to devote the necessary impetus and resources to pursue a prosecution.
• Thirdly, proving the identity of the suspect – proving beyond reasonable doubt that the particular IP address and the offence itself can be linked to the suspect. Was the offender’s computer system in fact compromised by a third party?
• Fourthly, dealing with the potential adverse publicity generated in revealing that your organisation’s Computer systems are vulnerable to attack.
• Fifthly, and as a consequence of the publicity of the vulnerability of an organisation’s computer system, the potential scrutiny by the Information Commissioner’s Office for failure to maintain adequate security measures in line with the 7th principle of the Data Protection Directive.

the real thing

When finding out his bottle was a possible infringement of the Westmalle Belgian ringed bottle (trademark rights in which had been assigned to the New Belgium Company in Colorado) Mr Hindy, the owner of the Brooklyn Brewery was happy to withdraw the similar bottle design his designer had come up with for the Brooklyn Local 1 bottle.  See here and here

Before and after (Photo: David W. Dunlap/The New York Times)

The bottle featured a double ring around the base of the neck and was amber in colour.   

So, he had a ring free bottle mould created at a cost of over $60,000.  Reportedly he was already involved in a trademark litigation matter and wanted to avoid further litigation.    

What is interesting about this case is how much publicity it has attracted for Mr Hindy’s Brooklyn Brewery.  I would guess that having the story run in places like the New York Times must be worth a lot more than the $60,000 it cost to redesign the bottles.

[Notes: The trademark for the Belgian ringed bottle was registered on 27 February 2007, registration number 3211981 by ABDIJ DER TRAPPISTEN WESTMALLE V.Z.W. CORPORATION BELGIUM Antwerpwesteenweg 496 B-2390 Westmalle BELGIUM :  (LAST LISTED OWNER) W - N BELGIUM, LLC LTD LIAB CO NEVADA 500 LINDEN STREET FORT COLLINS COLORADO 80524]

too dodgy to be goods?

In the recent case of R E G I N A v GARY BOULTER [2008] ( EWCA Crim, 2375, see the case details here ), a man convicted of criminal trade mark infringement for possessing counterfeit goods failed to have his conviction overturned by claiming that he could not have infringed a trade mark because his copy of it was so poor. 

When police and trading standards officers raided his home they found 1,640 DVDs of feature films, 457 DVDs of pornography and 232 music CDs, all of them pirated, and bearing the logos of EMI and other companies.  The man’s defence stated:

“The material bearing the trade marks was of such poor quality that no one could think that its trade origin was that of the trade mark owner.”  Accordingly, the use of the trade marks was not likely to jeopardise the guarantee of origin which constituted the essential function of the trademark rights owned by the trade mark owners.”

The court rejected his defence.  So, he asked the Court of Appeal to consider allowing his defence. It refused on the grounds that a defence based on the quality of the reproduction was not permissible.  The court said:

“In our judgment, it is impossible to read Parliament as having intended that, where there is straightforward counterfeiting of goods and their registered trademark, it is open to a defendant to advance a defence that the quality was so poor as not to give rise to any risk of confusion,”

“In the present case, it is not and could not seriously be suggested that the use of the EMI logo or other logos was anything other than a replication of those badges as signs of origin registered by the proprietors. It had no other rational purpose. Whether the reproductions were poor and whether they were actually likely to deceive is in our judgment neither [here] nor there,” said Lord Justice Toulson.

“The goods in this case did not involve the use of a trademark for a descriptive purpose but, as already stressed, was pure counterfeiting. It self evidently damages the registered proprietor of a trademark if that proprietor is not able to control the use of its logo as a badge of origin and if goods of variable quality bearing that stamp are on the market.”

The ruling of the Court “There is no foundation for this as a defence under the statute or in authority and, as already noted, it would reopen the door to people like the applicant selling their wares as genuine fakes. For those reasons we dismiss this renewed application,”

This case is to be distinguished from the House of Lords decision in a market trader, Robert Johnstone’s case that when he hand-wrote artists’ names on pirated CDs he was not using their trade marks.   The House of Lords accepted the trader was merely indicating the contents of the CD and not using the name as a badge of origin proving their provenance.

The End of Method Patents?

The US has been one of the few jurisdictions which allow methods or ways of doing things to be registered for patent protection. This type of patent might be narrowed significantly by a recent ruling by a US Appellate Court.  We will all be keeping a watch out for the final decision, given that many UK patents are filed with the intention of ultimately being granted as a US patent.

In the case the patent applicant appealed the decision of the USPTO, which had refused to grant a patent for the method of managing risk of sudden movements in energy costs.  The Appellate Court upheld the decision that the method was not patentable using a test given in a previous Supreme Court decision which held that in order to receive a patent a process must either be tied to a machine or result in a transformation.  This case is likely to be appealed to the Supreme Court. The business world will be waiting anxiously for a final decision which will impact the validity of future business method patents as well as ones which have been previously registered as they are now more vulnerable to attack.

Business method patents first became possible in 1998 when the same Appellate Court confirmed their patentability. In recent years there has been an explosion of business method patents being filed. In 1997 the US patent and trademark office only received 120 applications. This number has been rising steadily since then with a record breaking 1,300 filed last year. The most famous of this type of patent is the Amazon one click patent for ordering online.

To view the case click here.

A database right was first introduced in Europe in 1996 though the Database Directive. Under the Directive the maker of a database has the right to prevent the “extraction and/or re-utilisation of the whole or of a substantial part” of a database. Until recently the database right was considered to be less valuable and useful than other IP rights.

The ECJ recently decided on a case that could revive an interest in database protection.  In Directmedia Publishing v. Albert-Ludwigs-Universität Freiburg there was a dispute over the CD Rom entitled “1000 Poems Everyone Should Have” the defendant a Professor at Albert-Ludwigs-Universität Freiburg led a project to compile poetry from 1720 -1933. The project led to the Frieburg Anthology which is a compilation of the most important German poetry between 1700 and 1900. Part of this project included a list of poems put on the internet entitled “The 1,100 most important poems in German literature between 1730 and 1900“ detailed the frequency in which the poem was mentioned, the title, the author, the year of publication and the opening line.

Directmedia began selling a CD Rom in 2002 entitled “1,000 poems everyone should have.” 856 of these poems had appeared in the University Project. They admitted that they used the project as a guide but omitted some of the poems and adding in others. They also obtained the poems through their own sources. The university sued Directmedia alleging that their CD Rom infringed Dr. Knoop’s copyright in the compilation and the Universities database rights. The Court of First Instance found for the University on both issues. At the appellate level the court dismissed the claim of copyright infringement and referred a question on the database right to the ECJ about what the meaning of extraction is within the Database Directive.

The ECJ ruled that within the meaning of the Database Directive extraction is not limited to the physical copying of data and that extraction can occur either electronically or manually. The court ruled:

“The transfer of material from a protected database to another database following an on screen consultation of the first database and an individual assessment of the material contained in that first database is capable of constituting an ‘extraction’, to the extent …operation amounts to the transfer of a substantial part, evaluated qualitatively or quantitatively, of the contents of the protected database, or to transfers of insubstantial parts which, by their repeated or systematic nature, would have resulted in the reconstruction of a substantial part of those contents… it is of little importance that the act of transfer in question is for the purpose of creating another database, whether in competition with the original database or not, and whether the same or a different size from the original, nor is it relevant that the act is part of an activity, whether commercial or not, other than the creation of a database …. Moreover …, the transfer of all or a substantial part of the contents of a protected database to another medium, which would be necessary for the purposes of a simple on screen display of those contents, is of itself an act of extraction that the holder of the sui generis right may make subject to his authorisation.”

This rather enigmatic ruling suggests that a database right can be infringed when someone merely looks at the contents of one database and then uses some of the contents in another database.  Following this referral to the ECJ, the case will now go back to the Federal German court to make a determination in the case.

The problem with this decision by the ECJ is that they did not define the parameters between infringement and legitimate use. The Court may need to distinguish when consulting a database is a legitimate use and when that consultation amounts to extraction in future cases.

Database Infringment?

Registering a design

During the last year several cases have highlighted the current state of flux in Registered Community Designs (RCDs). This area of law remains a frequently overlooked and underrated intellectual property right). RCDs can potentially offer organisations with a very effective tool when faced with infringing copycat designs.

Key to relying on RCDs to attack copycat products is the RCD application itself. Applications should be drafted with infringers in mind – i.e. the goal is to look at ways to represent your designs in ways which most effectively ring fence the most important elements of your designs from copycats.

Using a series of photographs or even just one photograph of a design should nearly always be avoided. Although this approach may well be accepted for registration purposes by the Office for Harmonization in the Internal Market (OHIM), the approach will in many instances allow others to simply ‘design around’ a RCD. It will often fail to encapsulate those features of the design which the organisation wants to prevent others from copying.

The actual representation of the design contained on the registration itself is what is scrutinised when considering alleged infringing designs – not the actual product out in the market. This point is illustrated by the relatively recent design infringement case involving handbags, in which a photograph was used to represent the overall finished product sold to consumers. While it is undoubtedly straight forward and time effective to use a photograph to represent the design at the application stage, a more tactical approach to design applications is likely to give a claimant much greater chances of success when placing reliance on the design.

The best approach to design protection by RCD is to either use fine line drawings, or if budget permits, register each separate element of the design as well as the overall design. Separate registrations will often give a greater chance of successfully preventing copycat designs.

Whilst RCDs cannot guarantee to catch all copycats in all circumstances, the fact is that good representations of designs at the application stage stand a much greater chance of success than reliance on a grainy photograph filed in haste at OHIM.

Building a strong IP portfolio should never involve treating IP rights in isolation of each other, a bundle of registered designs, along with other IP rights such as trade mark registrations amount to a menacing arsenal of protection to any copycat designers.

Also not allowed in Kentucky

Recently the state of Kentucky has moved to seize the domain names of 141 online gambling sites. The move has sent shockwaves throughout the gambling and internet community because it could set a dangerous precedent. Attorneys for the governor of Kentucky is arguing that they have the right to seize the domain names because they are “gambling devices” like a slot machine which can be seized under state law. Attorneys for the governor of Kentucky is arguing that they have the right to seize the domain names because they are “gambling devices” like a slot machine which can be seized under state law.
The problem with this decision is that the online casinos have no physical presence in Kentucky and neither do their domain registrars or their website hosts.

This decision impacts the international quality of the internet and the Kentucky court seems to forget that domain names aren’t merely a U.S. asset. The spokeswoman for the state of Kentucky said that their ultimate goal is not to take away the domain names but to force online casinos to block any potential users in Kentucky.

At a hearing earlier this week, trade groups, domain registrars and gambling advocacy groups voiced their concerns and told the judge to dismiss the case outright. One of the main arguments against the state is that this precedent could harm free speech on the internet throughout the globe and not just in the state of Kentucky. Michael Collins, the spokesperson for the Internet Commerce Association said “What’s to keep Iran or China from doing the same thing? Yet, even China - which tries very hard to control the Internet its citizens use - hasn’t tried to do what Kentucky is trying to do here.”

The final decision in the case could affect internet laws globally and even the management of ICANN.

In a surprise decision in the US, the makers of Splenda have lost their patent for sucralose which is the generic name for Splenda. This means that competitors can now sell the same sugar substitute. At the moment Splenda brings in 25% of Tate & Lyle’s profit.

Although they are probably not happy about the loss, the decision is unlikely to devastate the company. Luckily along with their patent they have built up a significant brand reputation. Consumers are more likely to recognize  the name and the distinctive yellow packaging than their ingredient sucralose. There is already a lot of competition in the artificial sweetner market. Although the various sweeteners taste different their branding is likely to influence the consumer as much as or even more than the taste of the product. Sweet and Lo and Equal, two of the major competitors of Splenda, use Aspartame which has been off patent since 1992 yet both remain successfull based on the power of their brand.

According to the Tate & Lyle company spokesperson, they are going to appeal the decision. It will be interesting to watch the progression of the case to the appellate level.

This news shows the importance of not merely relying on one type of IP protection alone.

Sucralose

....for business?

Ubuntu is a well known free, open source based Linux based operating system. Their business model is to provide software free of charge but to make money by giving support instead. Recently there have been a large number of variants of the program named with *buntu for example the program Ubuntulite. Many of these programs have started receiving letters telling them that naming their programs in this manner is a violation of the Ubuntu trade mark. Ubuntu’s Trade Mark Policy states.”We would strongly discourage, and likely would consider to be problematic, a name such as UbuntuMan, Ubuntu Management, ManBuntu, etc. Furthermore, you may not use the Trademarks in a way which implies an endorsement where that doesn’t exist, or which attempts to unfairly or confusingly capitalise on the goodwill or brand of the project.” Their policy is in accordance with the established norms of trademark law.

 The interesting thing about this story is that tm enforcement is becoming more common in the open source community. Linux seldom issues this type of cease and desist but other open source companies have started doing it like Redhat for example. There has been a lot of controversy about other areas of IP and how it relates to open source. For example the notorious copyright cases from SCO earlier in this decade. It has only been recently that tm concerns are being reported. The problem that many companies realize is that to keep a trade mark you have to enforce your rights making sure that the name is not becoming generic or being diluted.

 Anyone who uses any kind of open source licence should realize that the licence has some strict restrictions. When developing software or anything else under such a licence it is good to assess early on how it will restrict you and if that restriction will conflict with your ultimate goals for example if you want to sell your program.

Most of the time even though open source licences are free they often come at a price.