Many people assume copyright does prevent the copying of ideas.  However, copyright in written materials only prevents others from copying your text word for word.  It does not stop them using the ideas embodied in your text and communicating them  in their own words.

For example, copyright law cannot be used as a tool to stop your competitors setting up a similar line of business.   So writing down your business ideas will not stop others using those ideas.  Only a patent can give you a monopoly over ideas (assuming those ideas take the form of a product that is capable of being patented).

It’s important to note that while copyright does not prevent others using ideas embodied in your materials, there are some forms of copying which though not word for word copying, could nevertheless amount to infringement of other people’s copyright.  For example, if you take so much detail from a work that it could be argued that you have copied a substantial part of it.

The Ipkat today reported ‘The soccer side and the flip side: copying biographical works’ a copyright decision (Jodgon and Jarvie v Isaac and Notting Hill Movies (2011)) which helps illustrate this concept of substantial copying well.   The question in that decision turned on whether a film script of the book Flipper’s Side was an adaptation of it.

Only the copyright owner has the right to create an adaptation of a work.  It is worth reading the details of the case on Ipkat In deciding this question Judge Birss said

‘When the book and the DADM script are each considered as a whole, the DADM script is in fact very closely related to the book in terms of its plot, characters and the striking incidents and events which take place. The text is almost entirely different but nine episodes in the DADM script revolve around striking events present in Flipper’s Side and five more include notable events from Flipper’s Side as important parts of the episode. In as much as it is possible or meaningful to quantify such things, in my judgment roughly half of the dramatic incidents in the DADM script derive from Flipper’s Side.’

So having read both texts, the judge decided the script amounted to a substantial copy of the book because the main characters, many of the settings and contexts in which the events took place and good number of the incidents themselves were featured in the script.

In conclusion, if you consider that someone has copied your work it’s worth noting that even though there may not be word for word copying, if a lot of detail has been copied  you may want to take legal advice.

Many lawyers educate the public about the value of taking legal advice.  So, it is somewhat surprising for a Government funded entity to communicate the message that legal advice may be dispensed with.  For example, on the IPO website it says “some applications may benefit from professional advice” implying not all of them do.

What is really going on here?   IP law is not a straightforward topic, and in my experience all business owners benefit from professional advice.  So why does the IPO put this in doubt?

The IPO offers a wealth of information on its site www.ipo.gov.uk.  As a firm we suggest clients use the resources available for preliminary information, so that their time with us can add maximum value.  But when it comes to drafting, searching, or making informed decisions about trade marks and broader IP issues, we absolutely recommend taking professional advice as does every other IP lawyer I know.

As far as government organisations go, the IPO is fantastically helpful.  They are quick to respond, thorough, and staff are an absolute pleasure to deal with, so it saddens me to find myself levelling criticism in  their direction.  But as a solicitor who advises SMEs on Internet, and IP matters, including trade mark filings, I am absolutely sure that encouraging SMES to file their own trade marks often doesn’t do them any favours.

Some downsides of DIY trade marks

Some people who file their own applications are unsuccessful in securing a registration.  Take a look at the refused marks.  Many either have  fundamental errors which could not be resolved, or if they could be resolved, the business owners didn’t know how to do so or lacked time to deal with it.  Often applications fail because the mark is descriptive and incapable of functioning as a trade mark.

I’m even more worried about those who succeed in securing registration because the scope of the applications is often inadequate to cover the activities of their business.  What is a serious issue is that these entrepreneurs’ success gives them a false sense of security.  Some even go on to file their own Madrid applications via the WIPO website. Filing more widely on the basis of what is often an inadequate UK base application compounds the problem. If their applications are drafted by professionals there may be some recourse if they turn out to be unsuitable, but if they themselves drafted the form as laymen, they have no come back if their business suffers as a result.  Certainly they would not be able to complain that it was the IPO’s fault as the IPO is careful to avoid liability.  It will not review people’s application forms before they file.

Possible clue

The courts don’t suggest parties adopt a DIY approach to advocacy, and the DVLA don’t recommend that you pop the bonnet on your car at home to prepare for your MOT.  Although its heart is in the right place, and there is no disputing that any effort to inform the public about trade marks is worthwhile, the overall approach of the IPO does not seem to be in the best interests of the applicants themselves.  If the IPO’s motivation is really to help start ups then why not give them a discount on official fees instead?

The fact is that it is in the IPO’s interests to encourage SMEs to file trade mark applications.  A couple of years ago the IPO made 100 redundancies due to the reduced number of filings in the recession. So, on the face of it the IPO does have a conflict of interest.  If it  encourages taking advice then people would go to advisers who may not necessarily recommend trade mark registration.

In pushing trade mark registration as it undoubtedly does, the IPO is not helping start ups.  It’s adding to their costs and depriving them of the opportunity to consult lawyers who might suggest that they need not apply for a trade mark at the beginning unless they have a name they want to own (and which is capable of being owned).

Indeed, many start ups choose descriptive names and these are just fine for getting the business off the ground.  The name tells potential customers what the business does, and as it’s descriptive, nobody else will be able to register it.  Later, if the business succeeds, it should brand itself with a good name and have it professionally registered.

You don’t need to register a trade mark

I doubt the IPO is making it clear to start ups that they don’t need to register a trade mark.  Indeed judging from the below case, the IPO is likely helping businesses with descriptive names to find ways to register whatever they can, quite regardless of whether it’s an important brand element for them to register.

When would the IPO suggest taking professional advice then?

One business I know well, chatted to an IPO representative at a business start up fair, and then proceeded to file two trade mark applications for marks they felt would succeed through the registration process.  These were not much used as trade marks within the business, and therefore low priorities for registration.  The names the business did use for its products and services were too descriptive to register as trade marks.  So, these other names were seized on for no better reason than that they might succeed in being registered.

Unbeknown to the business, they have a serious problem on their hands in not having a distinctive brand name they can trade mark.

The business was so successful it had already licensed its format in a couple of countries and was set to expand more widely internationally.  The business simply did not appreciate what it means to not have a name it can own.  Any professional would advise a rebranding in light of the business’ intention to licence globally.  Otherwise, it would be missing out on owning a valuable IP asset.

Independence is key

The fact that this business spoke to an IPO representative and walked away none the wiser about the importance of consulting a professional and instead engaged in wasteful trivial trade mark registrations speaks volumes about the undesirable consequences the IPO’s current policy is having.  Unless the IPO distances itself from helping applicants to file their own marks, it is reducing the quality of its IP awareness raising activities.

This particular business is successful and could easily afford to pay a legal representative for advice.

Cutting costs

So the current IPO policy is not helping entrepreneurs to see there is more value to be obtained from taking advice than just securing a trade mark registration.  For many, registering a trade mark is not essential initially, but, where trade marks are important (for example, for a fashion label applying its brand to clothes) then getting it right is crucial.  Such businesses should be encouraged to get legal help because a professionally drafted trade mark will be better than one they can produce themselves, and it’s an investment they are making in their business.  If they need to cut costs, then let the business itself decide what to cut.  It is not necessarily a smart move to cut out professional legal costs.

And if 80% of businesses fold in year one, then let them decide in consultation with their professional advisers whether a trade mark registration is appropriate for them.  If they don’t even have a suitable name, I’d suggest they cut out expensive branding and websites too until they’re more established.  Starting out cost effectively and thinking carefully about what you spend money on is a sensible approach.  An example of a business that adopted this strategy is Distilled.  It was known by a different name in its first 18 months and rebranded when it knew the business would be viable.

The IPO – A Competitor

Personally I now see the IPO as my competitor.  Sometimes I think: Surely there must be competition rules to protect us against unfair competition from a government funded entity?  An entity that influences businesses not to consult lawyers except in rare cases, and advises them that when they do want to consult someone: “Professionals who belong to the Institute of Trade Mark Attorneys and the Chartered Institute of Patent Attorneys are especially useful in helping you obtain and understand your IP rights”. How does the IPO justify making such a statement.  I would love it if the Law Society took this up with them.

Surely it depends what sort of IP need a business has.  In our knowledge economy where intangible assets are signficant to most businesses, not just to inventors or creatives, it’s likely that many start ups are in need of other types of IP advice.  Those setting up web based businesses (and websites are a bundle of IP rights) have copyright issues and need appropriate contracts and lawyers who understand the internet.  IP Solicitors such as my firm, are probably more able to help them with their typical IP needs than other types of IP professional.  But by directing everyone in need of trade mark or other IP help to ITMA and CIPA the IPO is not necessarily helping people to find the best person for the job.

Solicitors are skilled and experienced professionals.  The IPO does not need to protect the public against them.  The IPO should instead focus its energies on helping the public to distinguish between regulated professionals who are insured and are answerable to professional bodies from others who prey on inventors and creatives with their various IP services.

The UKIPO has a huge responsibility in this area, and should take care when making recommendations that they don’t unintentionally mark out one group of professionals as being more useful than another when they have not offered sufficient explanation to allow readers to choose what is right for them.  So, in my view the IPO needs to make some changes. It should encourage SMEs to take professional advice, and should avoid favouring one profession over another.  This is particularly important in light of the IPO’s impending consultation reported in IPKAT to identify how lower cost IP legal and commercial advice can be provided to SMEs

Limitation periods control the length of time a claimant has to bring legal action, for example following an infringement of their copyright, and these periods vary from country to country.  In the UK, the relevant period is 6 years from the date on which the cause of action accrued for copyright infringement.  The upshot of this is that claims for compensation will only stretch back 6 years – so if you wrote a book in 2003, and it was copied and resold without your permission until the end of 2005, by the end of this year it would no longer be possible to bring a claim for the profits made from that infringement.  If the infringement continues, compensation will only be available in relation to a rolling 6 year period.  What is important is to remain vigilant.  Services like Copyscape allow you to scan the web for reproductions of your content; for images the equivalent is available through Google Similar Image Search, or Tineye; but for works sold offline, it may be less straightforward.

Arguably unique in the personal computer industry, Apple exercises strict controls over every element of its product line.  This control over both the hardware and software used in its computers, peripherals and devices has enabled the company to ensure a consistent user experience worldwide, and to avoid compatibility issues which have in the past plagued other platforms.

However, this monopoly also means less choice for consumers.  Often, PC users choose to buy their own commodity hardware, put it together and install their operating system of choice.  The motivations for this are varied: some users are searching for bleeding edge performance; others are looking for value; and some simply enjoy the experience of building their own PC.

In the past a number of businesses have established themselves as alternative Mac hardware vendors – typically selling cheaper PCs tailored to be compatible with Apple’s OS X.  A recent example of such a business, fighting Apple in the courts for the right to do so, is Psystar.

Some would argue that Apple are shooting themselves in the foot by preventing other vendors from selling compatible packages that might increase the user base of OS X, sell more copies of the operating system and, possibly, sell more devices developed to integrate with that operating system.  However, Apple differs from companies like Microsoft in that it is arguably a hardware business.  Allowing hardware competitors into the marketplace to increase software sales is not good business sense for the company.  Particularly as the strength of Apple’s brand depends upon its ability to exercise strict controls over the user experience – “It just works”.

So, Apple’s software licence for OS X imposes significant restrictions on licensees.  A recent US ruling highlights the utility of software licences in enabling developers to control how their work is used.  At issue was whether the US first sale doctrine applied such that a purchaser could sell on Apple’s software as they saw fit – think buying a car and selling it on second hand.  The court found, unsurprisingly, that customers are not buying the software itself – they do not own the software after they buy a disc holding a copy of OS X, or download it – they are merely granted a licence to use it subject to a range of restrictions.  The terms of the licence they are granted preclude its use on other hardware.

This is bad news for Psystar but, as Groklaw points out, good news for proponents of Open Source Software.  It affirms the (albeit widely accepted) presumption that a US purchaser of open source software is not entitled by way of the first sale doctrine to resell it on their own terms and thereby circumvent an open source licence.

These difficulties are widely acknowledged and understood, but there is another feature of information which seems set to cause further difficulties for rights owners.  New and varied ways of using it.  While the bandwidth available to the public has had a substantial impact on the prevalence of copyright infringement online, another, similarly important factor has been the introduction of new formats, new ways of using data.  An early illustration is the availability of home video recorders, allowing members of the public to record and share video content.  Ubiquitous adoption of the  MP3 format made it easier for people to share music online.  Now, 3-dimensional printing promises to allow the public to copy actual physical goods.  New 3D printers are coming down in price, and give users the ability to print out products which have been downloaded from the internet, or scanned in.  A recent article by the Economist notes that this technology is likely to make it ‘easier for imitators as well as innovators to get goods to market fast‘ as good ideas will be more readily reproduced.  one website, Thingiverse.com, has already been issued a take down notice for offering the means to print out a 3D ornament, and the recent  Hargreaves report raised concerns over the possible implications of 3-D printing as convenient engines of piracy, but simultaneously vital tools in many trades, recommending further investigation.

Another interesting development is increasing interest in DIY genetics, an esoteric field traditionally restricted to specialist laboratories, but where more affordable technology may enable the public to develop their own biological products, or copy existing ones.  It is also not far fetched to envisage affordable machinery becoming available which enables the public to develop, produce and share pharmaceuticals.

These emerging technologies have the potential to revolutionise accessibility to treatments, drugs, and products where cost was previously prohibitive, but they also mean new challenges for rights owners who may find it increasingly difficult to protect their intellectual property.

Hargreaves emphasised the drive for reform should be based on evidence and not lobbying.

His reflection on the Digital Economy Act is that strong online enforcement should be carefully monitored. He highlighted a tough approach on enforcement of copyright should be balanced with education, open and competitive markets in licensing digital content and modernising the law (p10).

In his series of 10 recommendations to the government he encourages the UK to align itself with the EU framework to start to make use of existing exceptions, such as format shifting, non-commercial research, parodies and library archiving. Some welcome this move as being ‘worth considering’; the Wellcome Trust endorses particularly the non-commercial research exception.

Turning his attention to licensing, his ambition is to create the “world’s first Digital Copyright Exchange” (p4). This will allow rights owners to sell licences in their work and to make market transactions faster. The National Union of Journalists already consider this proposal to be problematic.

Hargreaves also seems keen to see the UK support moves by EU commission for cross border licensing and wants to release the “treasure trove” orphan works into the market (this was met with a lukewarm reception by professional photographers).

The recurring theme in his discussions on copyright reform is that more flexibility is needed.  This is neatly summed up with him asserting: “Copying should be lawful where it is for private purposes, or does not damage the underlying aims of copyright” (p8), which is refers  to as “the provision of incentives to creators” (p55).

Of particular interest are his proposals to essentially upgrade the IPO. He wants to develop their role to be able to produce formal opinions to help clarify the law where needed. He envisages the IPO giving evidence based recommendations to competition authorities and statutory opinions for the consideration of judges.

Further, to target the needs of SMEs for low cost quality advice, he suggests the IPO provide advice to individuals and/or accredit ‘lower cost providers of integrated IP legal and commercial advice’ (p104). He suggests models should be followed “elsewhere in the legal world, where paralegal services are offered by individuals less qualified than full scale patent attorneys” (p93).

The report does not provide further detail about how this would work in practice and the criteria the IPO would employ when deciding whether to accredit an IP advice provider. Is this a question of the IPO for example providing “parallel structures [..] for substitution of patent attorneys”? It is nevertheless questionable in view of budget cuts how the role of the IPO could possibly be increased.

‘Because copyright law can be complicated, education is critical to ensure that our users understand the rules and continue to play by them. That’s why today we’re releasing a new tutorial on copyright and a redesigned copyright help center. We’re also making two changes to our copyright process to be sure that our users understand the rules, and that users who abide by those rules can remain active on the site,’ YouTube says.

Users who receive a notification telling them they have been infringing copyright laws, will be required to watch a cartoon that goes over the basics of copyright infringement and helps to show them how they have infringed copyright law and how this affects an industry.

The users will then have to pass an online test to demonstrate they have actually watched the video all the way through in order to be able to return to using the site. Previously YouTube operated a three-strike policy where YouTube users’ accounts would be suspended if they got three copyright notices. Now with the new ‘School’ policy in place, those who complete the YouTube Copyright School will be able to get their strikes removed.

This move was not something Google has been required to do.  Last year Google fought a lawsuit with Viacom over copyright infringement. In the case YouTube insisted they should not be held liable for copyright infringement on the site, and that the Digital Millennium Copyright Act should protect it. The ruling found YouTube was adhering to takedown notices when informed of infringements by copyright holders. Despite winning the case last year, Google has still decided to take steps to help prevent copyright violations. YouTube has taken on board criticisms by the entertainment industry that it was not doing enough to combat copyright violations and has decided to do its bit.

In its blog post YouTube states ‘It’s ultimately your responsibility to know whether you possess the rights for a particular piece of content before uploading it to YouTube. If you’re at all uncertain of your rights or whether a particular use of content is legal under your local laws, you should contact a qualified copyright attorney,’

Whether or not this new copyright policy will work better than their old policy remains to be seen but it marks a move towards education instead of simply punishing people for infringing copyright.

Freedom of Expression
This right is deeply entrenched in law with the European Convention of Human rights (in the UK with the Human Rights Act) and now the EU’s version the Charter of Fundamental Rights.

That is not to say it is an absolute right, rather, it is expected that countries are able to encroach on this when needed.
However the Convention and Charter regulate how this is done and for how long.

One of the main controls is to ensure any encroachment has a solid legal basis (see article 52 (1) ).

Another consideration is that the inroad into an individual’s freedom of expression should be proportionate to the outcome sought (don’t use a sledge hammer to crack a nut).

Practically speaking, with the onset of the Lisbon treaty the CJEU must now consider the Charter to have the same validity as any other EU treaties, meaning when they address a problem, which affects the single market for example and the application of EU laws, they must also consider the effect on the Charter.

It is precisely within this frame that the AG last week considered a measure taken by a Court in Belgium to address illegal file sharing.

Scarlet v SABAM
The SABAM is the Belgian equivalent of PRS, a royalty collecting agency representing music artists.

They successfully applied to the lower court of Bruxelles for an injunction against an ISP named Scarlet.

The scope of the injunction was to monitor, identify, filter and block communications where illegal file sharing was taking place, the duration of the injunction was indefinite and the cost of managing this was to be borne by the ISP entirely.

Scarlet appealed against the legality of this injunction to the Court of Appeal of Bruxelles, who deferred the question to the CJEU.

The particular question put to the CJEU was whether the domestic law relied upon by the judge, set in the context of the Charter and other EU laws including data protection, could legitimise granting such a far-reaching remedy.

Important to note here the lower Court relied upon a domestic law, which allows it to give an order to cease copyright infringement. But even more interesting was that this law was in itself a transposition of EU law (article 8(3) of directive 2001/29 and article 11 of directive 2004/48).

So the question essentially touched on not only whether Belgian law could warrant such an injunction but also whether the underpinning EU law could support this type of action.

The AG’s Opinion
The AG thought not (see in particular section E  of Opinion; currently the opinion is only available in French but can be auto translated by Google Translate ) For the AG, under the Charter, the quality of any law should be sufficiently precise that others can be certain of its effects and adjust their behaviour accordingly. Using the words of the European Court of Human Rights the AG said the law should be “formulated with sufficient precision […]  to foresee […] the consequences which a given action may entail” (para 94)

To expand further on this notion, the AG referred to a Turkish case brought to the European Court of Human Rights where the law in question gave the power to chief prison officers to intercept and retain prisoner correspondence if the officer thought the contents were “embarrassing” (Footnote 85 of the Opinion). It was thought such a law did not indicate with sufficient clarity the scope and conditions for the exercise of this power by those authorities.

So details are crucial if a law is to be in line with the Charter, primarily, so people can foresee the consequences.

In this case, from the point of view of Scarlet, the adoption by the lower court of this injunction was an extraordinary measure, both difficult to foresee and due to the serious economic consequences smacked more of being arbitrary.

The ISP was demanded to achieve the result of blocking illegal file sharing but the solution of how this could be done was completely innovative.

Also the injunction gave no guarantee of how subscribers’ personal data would be protected. Nor did it provide any recourse for appeal by affected subscribers.

On this basis, the AG concluded the national law and by implication EU law could not have given authorisation for such a measure. Essentially there was no solid basis in law for this remedy when read in light of the Charter.

Digital Economy Act
If the Court decides to follow this Opinion then other EU countries who are rolling out new laws to combat internet copyright infringement may take more time to stamp out the details of their laws rather than handing over general powers to the judiciary or executive.

How may this affect the UK and the Digital Economy Act?

The UK is obliged to check compatibility with the Human Rights Act (HRA) when passing any new law.

Lord Mandelson okayed the Digital Economy Bill in the Commons but when the bill reached the House of Lords Joint Committee of Human Rights, concerns were raised about so-called ‘skeletal measures’ where powers are granted under the Act and the detail worked out in secondary legislation.

In fact, the Joint Committee said it was “impossible [to] assess fully” whether the Bill is compatible with the HRA due to the lack of detail. Not a good sign. (see in particular 1.28).

One such example of a ‘skeletal measure’ is Article 18 of the Act which allows for the secretary of state to introduce ‘technical measures’ to limit access to the internet for alleged infringing subscribers.

This particular measure is currently under judicial review by the high court but this SABAM Opinion could be the tipping point for a declaration of incompatibility with the Human Rights Act, or maybe there is a referral to the CJEU in the waiting.

Luckily for the government a referral to the CJEU would not see the Digital Economy Act being scrutinised in the same way as Belgium law has been under the Charter. The UK added a few provisos when giving the Charter the force of law with the Lisbon treaty, one of those was to preclude the CJEU from judging whether a UK law violates the Charter (see article 1 of protocol 7).

Interestingly the Telegraph have noted that the Government are circumventing the need to even rely upon article 18 Digital Economy Act by opening “talks between ISPs and the music industry to encourage a voluntary agreement on a list of websites that would be blocked”.

In conclusion, in the UK, it is understandable for the government to grant some general powers rather than type out every possible detail in the law when addressing copyright infringement. This is particularly true in the field of technology and the internet, where flexibility is needed to adapt to this ever changing environment. But at the same, it is equally important in light of the essence of the SABAM opinion to ensure sufficient precision in the law to ensure its validity when placed under European human rights scrutiny.

Interestingly he is the first to have registered copyrights for the postures (see third post) and enforces these creative works unrelentingly. The aim being to standardise his workout in his licensed schools and prevent any brand dilution.   In June 2002 he sued one of his previous students as the latter had been using music in classes and not heating the room to the prescribed temperature.  Amongst some of the claims against the student was breach of licence as a franchisee, copyright and trade mark infringement. This was settled out of court for an undisclosed sum.

However it is somewhat debatable to what extent a sequence of pre-existing postures may attract copyright. Registering copyright in the US does not necessarily mean it is validated; the act of registration simply ‘establishes a public record of a copyright claim’.

A few years later a collective of yoga practitioners, named the Open Source Yoga Unity, brought an action against Bikram challenging the validity of his copyright in the sequence of postures. Both parties petitioned the court for summary judgment, a legal procedure to request the Court to review the substance of the issues and decide whether either party has a case, but the Court denied both motions. The case was later settled. The judge, when delivering his order on summary judgement, commented in principal on the validity of copyright in a sequence of postures and alluded to the possibility that a compilation of yoga asanas can be ‘protected under the copyright laws in the same manner as other compilations’ (see page 3). The level of protection would be deemed to be ‘thin’ for this type of copyright involving ‘exact or near-exact duplications of his [Bikram’s] yoga sequence’ (page 4).

Due to the settlement, no court has yet had to decide on the actual validity of Bikram’s copyright claims.

Some opined that Bikram yoga is a ‘system’ and, as a result under US law, would not benefit from copyright protection. (page 10 of extract)

The same author also argued had Bikram described his sequence as an ‘expressive dance and accentuated its aesthetic value’ then he could have been accorded maximum copyright protection. This is on the basis that the ‘standard of protection for dance was quite broad’ (page 17).

Rather Bikram has lauded the medical benefits arising from application of the system in its entirety, which makes one consider whether patent registration may be more relevant. This is because the system may be described as a ‘functional process’.

What is of interest here is that the Indian government, reacting to the perceived threat of privatising Indian culture, have been collating all known asanas into a ‘prior art’ database to prevent the patenting of yoga – this database is due to be published over the next couple of months. However this would still not preclude yogi entrepreneurs from creating original compilations of the forms and potentially attracting copyright protection.

Even with uncertain copyright claims, Bikram Chowdury has managed to build a strong global brand. Being the first to franchise yoga he opens possibilities for other health practices to take inspiration. Will we see the next tai chi or shiatsu offshoot relying on the copyright of their particular system to build their business?

Indeed, part of his success may been down to him ‘policing his rights aggresively’ (Judge Hamilton see page 7 ). In particular this approach has benefitted his trademark by preventing it from becoming generic over time. In contrast PILATES, another form of restorative exercise, became unregistrable in the US as a trade mark due to it signifying a type of activity rather than denoting the origin of the services, namely the founder Joseph Pilates. This brings into sharp focus the importance of adopting a proactive stance to trade mark protection.

Hargreaves Review

Terms of reference
The terms of reference of the Hargreaves Review are to propose how UK’s IP framework can further promote entrepreneurialism, economic growth and social and commercial innovation.  It will aim to identify barriers to growth in the IP system, and how to overcome them.

Specifically the subject under examination is barriers to new internet-based business models, including information access, and costs of obtaining permissions from existing rights-holders.

The review was launched by the Prime Minister, David Cameron last month as reported by the BBC.  Apparently the Prime Minister was particularly interested in the fact that the founders of Google had told the government they could not have started their company in Britain.  “Over there, they have what are called ‘fair-use’ provisions, which some people believe gives companies more breathing space to create new products and services”.

What is the position in USA?
It is interesting to find out how the situation differs in the USA in practice, and the extent to which  the differences over there are down to fair use.

Google was on the receiving end of a law suit from AFP, a news agency in 2005.  It won the case partly by arguing that headlines were uncopyrightable.  By contrast, in the Meltwater decision recently it was decided that headlines are copyright.

What might the Hargreaves Review do?
So what might the Hargreaves Review do to alleviate some of the issues the law faces?  As the Review is to make recommendations, among other things, on what short and medium term measures may be taken now within the international framework to give the UK a competitive advantage, their remit is quite broad.  It will include an assessment as to how the IP framework could better enable new business models appropriate to the digital age, in terms of reducing the cost and complexity of enforcing IP rights within the UK and internationally as well as the cost and complexity to SMEs of accessing IP services to help them to protect and exploit IP.

Orphan works
One immediate and well known problem I would mention for internet businesses is orphan works, and whether there are possible ways such as copyright registration to address the problem they pose.

A distinguishing feature of copyright, when compared to other intellectual property rights such as patents and trademarks, is that it does not require the creator to actively register his or her creation. Their work is automatically protected, and remains so until 70 years after the death of the creator, at which point it enters the public domain.

Although, this is seen by many as an advantageous characteristic of the copyright system, encouraging as it does the creation of new works whose authors need not worry about formal registration, on the other hand, it is a disadvantage for doing business online.

In the digital age copying, reworking and remixing work is as common as breathing.  So the lack of any copyright registration formalities makes it increasingly difficult for creators to legally produce derivative works. A derivative work could include a translation, creating a podcast from a written article, or writing a play based on a book, and so on.

The inability to trace the copyright owner in order to acquire permission or agree licensing terms is a serious problem, especially, given the speed that is often essential online.

A famous example of this occurred during the development of the Google Books project, where Google found they were simply unable to establish the identity of copyright owners of numerous texts. What once appeared to be an advantage of an efficient copyright regime requiring no initial formalities has been subsequently rendered a rather cumbersome stumbling block when applied online.

Works whose current copyright owner cannot be identified, have been labelled “orphan works” and the scale of the problem is not small by any means. Indeed, the British Library estimates that 40% of its in-copyright stock is orphaned in this sense.

Practical Consequences
A would-be derivative author in the UK must demonstrate that they have made ‘reasonable efforts’ to trace the current copyright owner. Unfortunately however, this protection only applies to anonymous and pseudonymous works. In reality therefore, there is little leeway for a prospective borrower to do so without infringing copyright. Even if the copyright owner is found, the process is likely to cost time and money and is perhaps not a viable option for a small business.

Other jurisdictions are often more permissive. Under Canadian law for example, a licensing scheme allows licences for orphaned works to be issued following a search of “reasonable efforts” by the prospective user. A similar light-touch system recently proposed in the United States would enable the use of orphan works in a similar manner.

Until such time as the UK identifies reforms for this area of copyright law, which is currently out of step with the internet age, businesses are effectively unable to use orphan works in view of the time likely to be wasted in this pursuit.  What is ideally needed, is something as quick and easy as the solution currently used online – which is to try to identify and use works licensed under the increasingly popular Creative Commons system.