And all that (Pakistani) jazz ...

This Kat has been busily keeping pace with the numerous copyright judgments handed down by the English courts in recent days and she has learnt an awful lot about the finer points of Star Wars helmets, media monitoring services and blocking illegal file sharing websites. This post comes then by way of some lighter relief.

Readers will no doubt be familiar with 'Take Five', a jazz piece written by Paul Desmond and performed by The Dave Brubeck Quartet on their 1959 album Time Out. It has been included in a number of movie and television soundtracks, and even today, some 52 years later, is still played on the radio. Upon his death in 1977, Desmond left the royalty rights to the American Red Cross.

Readers will no doubt be less familiar with classical music in Pakistan. The Pakistani movie industry all but died and the fate of classical music went into rapid decline. Until now. The Sachal Studios Orchestra in Lahore is making a comeback. Their first jazz album Sachal Jazz was released recently and the group's interpretation of 'Take Five' has received considerable attention. Indeed Dave Brubeck, original performer of 'Take Five', described The Sachal Studios Orchestra interpretation as 'the most interesting recording of it he has ever heard'.

The IPKat thinks that, so long as appropriate permissions have been obtained and the necessary attributions made, adaptations such as this one can only be a good thing for the creative process.

Merpel wonders what interpretation the Sachal Studios Orchestra might put on some Lady Gaga tunes ...

'Take Five', Dave Brubek style, below

The Sachal Studios Orchestra's interpretation, below

"To boldly go ..." Supreme Court ventures into Star Wars territory

Star Wars, as the IPKat has previously observed, is a science fiction movie franchise which is famous for its sequels.  In the same way that life imitates art, so too does litigation.  Let the IPKat try to explain

While the House of Lords has
rebranded itself as the Supreme
Court, its judges still seem a
little unworldly to litigants ...

Part I of the Star Wars litigation saga was an action brought in the United States by Lucasfilm Ltd, Star Wars Production Ltd and Lucasfilm Entertainment Co Ltd -- the plaintiffs being the production and licensing companies behind the creation of the Star Wars films and the defendants being, respectively, the man who produced military uniforms for the Star Wars movie and the company he owned. When the plaintiffs first approached Ainsworth in 1976 with a view to him producing some uniforms for use in the film, he was given some drawings and a clay model. He was later hired to produce various items of uniform for the film, and once again he was given drawings of what these items were supposed to look like. After the film was made, Ainsworth kept the molds he had used to create the uniforms and, in 2004, he set up a website from which he started selling replicas, created from the original molds. Once the plaintiffs noticed this, they sued for infringement of copyright under US law and secured a default judgment, Ainsworth taking no active part in the proceedings other than to challenge the jurisdiction of the US court. 

On appeal, one must avoid the
temptation to make light of
the other side's arguments

Part II of the saga crosses the Atlantic to the Chancery Division, England and Wales, where the plaintiffs (now 'claimants', since the plaintiffs can't be called 'plaintiffs' in England and Wales in case someone doesn't understand what the word means).  The claimants again sued for copyright infringement -- this time under UK copyright law --and also sought to enforce the US judgment or, if the court refused, at least get the British court to determine its claims under US copyright law. In an epic 280-paragraph judgment in Lucasfilm Ltd, Star Wars Production Ltd and Lucasfilm Entertainment Co Ltd v Ainsworth and Shepperton Design Studios Ltd [2008] EWHC 1878 (Ch) in July 2008, Mr Justice Mann dismissed virtually every part of the claimants' action, holding that the helmets and other bits of uniform were not copyright-protected: they weren't sculptures, works of artistic craftsmanship or indeed anything else; even if they had been, they were 'design documents' in respect of which, once they were manufactured, unregistered design right and not copyright law would kick in. The only good news for the claimants was that, in Mann J's view, there was no absolute bar against an English court hearing an action to enforce a foreign copyright in respect of infringements that took place abroad. The English courts could, and in appropriate cases should, determine at least the question of infringement of foreign copyright-- and the court should exercise that jurisdiction here. The factual issues in the US action were essentially the same as those arising in the UK, the only specifically US copyright law issue being whether Ainsworth could raise a "functional/utilitarian objects" defence. On the evidence, that defence was bound to fail.

Britain's top judges must
resort to disguise in order
to avoid the adulation
of their admirers

Part III remained in England and Wales, but the litigation was now being conducted above ground level, in the Court of Appeal (Lords Justices Rix, Jacob -- who gave the judgment to which all three judges contributed -- and Patten). That court, whose judgment you can read here, dismissed the claimants' appeal but did allow that of Ainsworth -- in part. As the final paragraph of the 53-page decision concludes:

"There was no copyright in any sculpture. Nor could it enforce its US judgment. Mr Ainsworth’s cross-appeal, on the other hand, partly succeeds and partly fails. It succeeds to the extent that we reject the judge’s direct enforcement of US copyright. In the circumstances, there is no financial remedy for Lucasfilm to compensate it for the modicum of selling which Mr Ainsworth has managed to achieve into the US: but Mr Ainsworth is aware that were he to seek any further selling into the US, he would be in breach of its copyright laws".

Part IV of the saga has gone stratospheric, with an adjudication by the United Kingdom's Supreme Court which, the Court's website tells us, "concentrates purely on the reproductions of the helmet design", it being accepted that Ainsworth has, in the eyes of US law, infringed various US copyrights -- but that it's not accepted that the US law should be enforced in the English courts.  This is the first time the recently-rebranded House of Lords has given an intellectual property ruling, so it was not surprising that the judicial line-up was moderately IP-rich -- though not particularly seasoned in copyright matters. The Fab Five are Lord Phillips of Worth Matravers, Lord Walker of Gestingthorpe, Lady Hale of Richmond, Lord Mance of Frognal and Lord Collins of Mapesbury, of whom one (Lord Walker) has served time on the Patents Court and another (Lord Collins) has presided over a pretty robust bit of patent litigation himself.


Unsurprisingly the Supreme Court this morning affirmed the decision of the trial judge and the Court of Appeal that the helmet was not an artistic work, but has reversed the decision of the Court of Appeal that the action based on infringement of copyright in the United States could not be brought before a court in England and Wales. In its 39-page ruling (in full here), Lords Walker and Collins say:  

"47. We would uphold the judgments below very largely for the reasons that they give. But (at the risk of appearing humourless) we are not enthusiastic about the “elephant test” in para [77] of the Court of Appeal’s judgment (“knowing one when you see it”). Any zoologist has no difficulty in recognising an elephant on sight, and most could no doubt also give a clear and accurate description of its essential identifying features. By contrast a judge, even one very experienced in
intellectual property matters, does not have some special power of divination which leads instantly to an infallible conclusion, and no judge would claim to have such a power [though Lord Dilhorne must have come pretty close to doing so in his speech in Hensher v Restwawile]. The judge reads and hears the evidence (often including expert evidence), reads and listens to the advocates’ submissions, and takes what the Court of Appeal rightly called a multi-factorial approach. Moreover the judge has to give reasons to explain his or her conclusions.

48. There is one other matter to which the Court of Appeal attached no weight, but which seems to us to support the judge’s conclusion. It is a general point as to the policy considerations underlying Parliament’s development of the law in order to protect the designers and makers of three-dimensional artefacts from unfair competition. After reviewing the legislative history the Court of Appeal took the view (para [40]) that there was no assistance to be obtained from the relationship between copyright and registered design right. We respectfully disagree, especially
if the relatively new unregistered design right is also taken into account. It is possible to recognise an emerging legislative purpose (though the process has been slow and laborious) of protecting three-dimensional objects in a graduated way, quite unlike the protection afforded by the indiscriminate protection of literary copyright. Different periods of protection are accorded to different classes of work. Artistic works of art (sculpture and works of artistic craftsmanship) have the fullest protection; then come works with “eye appeal” (AMP Inc v Utilux Pty Ltd [1971]
FSR 572); and under Part III of the 1988 Act a modest level of protection has been extended to purely functional objects (the exhaust system of a motor car being the familiar example). Although the periods of protection accorded to the less privileged types have been progressively extended, copyright protection has always been much more generous. There are good policy reasons for the differences in the periods of protection, and the Court should not, in our view,
encourage the boundaries of full copyright protection to creep outwards". 

The comments concerning the relevance of design law are, it is submitted, puzzling and unhelpful. If nothing else, they will force litigants in copyright infringement cases to waste time, effort and money delving into policy and legal aspects of the design/copyright interface in the hope of twisting their observations into some sort of plausible support for their respective cases. The Court of Appeal got it right. The Supreme Court did not.


On the issue of justiciability of the claim based on infringement of United States copyright, the Court had this to say:

"87. Two important developments in European law have undermined any argument that there is a substantial policy reason for the view that actions for infringement of intellectual property rights cannot be brought outside the State in which they are granted or subsist.  

88. First, article 22(4) of the Brussels I Regulation (formerly article 16(4) of the Brussels Convention) provides that, in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is deemed to have taken place, have exclusive jurisdiction irrespective of the domicile of the defendant. This is an exception to the general domicile rule of jurisdiction, and has to be construed strictly. It applies only to intellectual property rights which are required to be
deposited or registered, and does not apply to infringement actions in which there is no issue as to validity. ...

91. The second relevant piece of European legislation does not apply to the present proceedings because it came into force only on 11 January 2009, but it also shows clearly that there is no European public policy against the litigation of foreign intellectual property rights. Regulation (EC) No 864/2007 of the European Parliament and of the Council on the law applicable to non-contractual obligations (Rome II) applies wherever in the world a tort was committed. It plainly envisages that actions may be brought in Member States for infringement of foreign intellectual property rights, including copyright. Recital (26) states:

Regarding infringements of intellectual property rights, the universally acknowledged principle of the lex loci protection should be preserved. For the purposes of this Regulation, the term ‘intellectual property rights’ should be interpreted as meaning, for instance, copyright, related rights, the sui generis right for the protection of databases and industrial property rights.".

This time the Kat thinks the Supreme Court has got it right in legal terms, and he doubts that this will lead to a sudden rush of US claimants to the British courts.


Official summary of Supreme Court summary here
BBC report on today's decision here
Star Wars/Star Trek confusion here, here and here

Some copyright thingies

First, the Big Debate on whether we come to bury copyright or to praise it, which was hosted in the palatial surroundings of Freshfields Bruckhaus Deringer's auditorium, not too far from London's iconic River Thames ("iconic" in its current meaning, "something you probably wouldn't bother looking at if no-one reminded you that it was there"). Here on the co-sponsoring 1709 Blog is a fairly decent report from two Freshfields trainees, Emmma and Sam. Do take a look if you get the chance!


On the subject of the debate, this Kat fished out some neat lines from each of the debaters.  In favour of praising copyright were Emily Goodhand

• "There is no middle ground: it's thumbs-up or thumbs-down"
• "A world without copyright would simply say 'hard cheese!' -- and move on"
• "This speech is available in the public domain"

and Richard Mollet

• "The creative economy is too important to put at risk by half-baked wishful thinking"
• "Freedom of speech -- is it really restricted to the point at which a file-sharer is protected as a person expressing his political opinion?"
• "Copyright is not unethical, but arguments against it come close to being so".

In favour of not praising it, though not necessarily burying it alive, were David Allen Green

• "What's easy to copy is easy to spot"
• "'If it's worth copying, it's worth protecting' -- so why then do we have defined categories of protected works?"
• "Assignees, sixty years later, have no connection to creativity".

and Crosbie Fitch

• "There's a new cultural guidebook: anyone who wants to engage with it has to fight the copyright cartel ... Disney!"
• "We'll never learn not to copy since to learn is to copy"
• "Copyright is a dead parrot. You can nail it to a perch and keep on praising it -- but it has ceased to be".

This Kat (and, he suspects, the other Kats too) has little opportunity to connect with the Organization for Economic Cooperation and Development, better known by its acronym OECD. The OECD is what might be called a rich country's club and you can't just join it -- you have to be admitted.  Anyway, thanks again to the vigilant Chris Torrero, the OECD's proposed online copyright protection plan has come to the attention of this blog -- and you can check it out here.  Just six sides long (five, if you exclude the cover), the Communiqué on Principles for Internet Policy-Making, June 29, 2011, is presumably something to do with copyright protection, but funnily enough the word 'copyright' doesn't appear even once in it.  However:

"The policy-making principles in this communiqué are designed to help preserve the fundamental openness of the Internet while concomitantly meeting certain public policy objectives, such as the protection of privacy, security, children online, and intellectual property, as well as the reinforcement of trust in the Internet [So far so good: this is what most of want]. Effective protection of intellectual property rights plays a vital role in spurring innovation and furthers the development of the Internet economy [The OECD needs to be told this?]. Internet policy making principles need to take into account the unique social, technical and economic aspects of the Internet environment [The same can be said about all ad-hoc policy-making. Nothing shocking here]. It is clear that the open and accessible nature of the Internet needs to be supported for the benefit of freedom of expression, and to facilitate the legitimate sharing of information, knowledge and exchange of views by users including research and development that has brought about widespread innovation to our economies" [The Kat's feeling is that the problem of legislating for the internet isn't an issue of principle -- it's a set of practical problems in implementation such as who is responsible when things go wrong, who pays, who indemnifies, who gains or loses access -- and for how long and in what capacity. Freedom of speech, access to information, the right to one's property etc aren't something that has just been invented, and striking the right balance between them in a world where both technologies and their uses keep changing is very much a matter of hitting a moving target].

Also unsurprising is the news that the Electronic Frontier Foundation (EFF) has declined to endorse the OECD's Communiqué:

"We oppose legal and policy frameworks that encourage Internet intermediaries to filter and block online content or disconnect Internet users under a “graduated response” system after alleged copyright violations. Civil society calls on OECD member states to defend free expression and support due process and procedural safeguards in the protection of intellectual property rights."

Merpel is amused by the contrast between the OECD and Civil Society. While the first is exclusive, the second is much easier to get into. More to the point, unlike the OECD, where some semblance of consensus usually precedes statements of policy, everyone who is a member of Civil Society is entitled to speak on behalf of everyone else.

When Edge is on the brink ...

Overwhelmed by the sheer excitement of living-- and by the pile of examination scripts which piteously mew "let me pass, let me pass!" -- this Kat has only just got round to writing up the decision of Mrs Justice Proudman, of the Chancery Division (England and Wales) in Future Publishing Ltd v Edge Interactive Media Inc, Edge Games Inc and Dr Timothy Langdell [2011] EWHC 1489 (Ch), the sort of case which makes this Kat at any rate very pleased he doesn't have to deal with litigants in person (as was the third defendant in this case), despite his fabled patience. The Kat would probably have left it for a bit longer, were it not for a nudge from Mike Lynd (Mark & Clerk).

The facts go back a long way, almost to the dawn of computer games.  Future published various computer gaming magazines, one of which was EDGE.  A popular read with the British games community since its launch in 1993, EDGE bore a logo in which the two letters 'E' extended the cross bar on the left hand side, with a corresponding shortening on the right, and there was a sharp scalpel-like point at the edge of the extension (you can see what it looks like here, on the right). EDGE had a large circulation and its website was visited by over 400,000 visitors every month. Many jobs in the computer gaming industry were advertised in its pages, it had many corporate subscribers and it won a number of awards over the years, including Games Magazine of the Year 2008’.

But now we're jumping the gun. Returning to the 1980s and early 1990s one Dr Timothy Langdell -- who exclusively controlled the first and second defendant companies (EIM and EGI) -- ran a business which composed games software initially as Softek and subsequently as Edge. Langdell was at that time well known for pursuing third parties who used the name ‘Edge’ and sought payment of licence fees, failing which he pursued them for damages for trade mark infringement [Says Merpel, are you trying to tell me that there were trade mark trolls even back in the previous century?]. Langdell was a United States resident and the first and second defendant companies were incorporated in the United States.

In 1993 Langdell commenced passing-off proceedings against Future, alleging that he held unregistered rights in the trade mark EDGE and, in 1994, Langdell applied to register the word EDGE in the UK as a trade mark for printed matter, including gaming magazines, in Class 16. The action was stayed pending payment by Langdell of security for costs and the proceedings were settled by an agreement dated 4 December 1996, by which time Future, as well as EIM, had applied to register the word EDGE for printed matter in Class 16.

Under this agreement EIM would keep its registered mark and would be given Future’s trade mark application in return for a royalty-free licence under which Future would be permitted to use the mark EDGE in relation to EDGE magazine in any form; Future was also to pay EIM £20,000. In return, EIM agreed not to publish or license any other party to publish a magazine substantially similar to EDGE magazine under the name EDGE or under any colourably similar mark. In addition, EIM agreed not to assert the existence of any association or connection with EDGE magazine or with Future save that, in response to an unsolicited request, EIM could confirm that it had licensed the mark EDGE to Future in relation to EDGE magazine.

Cat on the edge, or is it the e***?

As the success of EDGE magazine grew, Langdell’s behaviour became increasingly burdensome to Future, which sought to abrogate the licensing agreement and to buy all the necessary trade marks from the defendants. The mechanism for achieving this was a Concurrent Trading Agreement (the ‘CTA’) between Future on the one side and EIM and Langdell on the other, and a separate deed between the same parties. The main effect of these instruments was to assign to Future those parts of the trade marks owned by EIM which included the word EDGE, and which covered EDGE magazine. The assignment included all rights in the agreed part of the trade marks, including all goodwill attaching to the use of the agreed part of the trade marks and all rights of action, powers and benefits arising from ownership of the agreed part. The CTA defined 'trade marks' as including not only registered trade marks but also all unregistered trade mark rights of EIM in relation to those marks. Under Clause 2.4 of the CTA, EIM undertook not to permit the use by any other person of any of the trade marks in a way which was or could reasonably cause confusion with Future’s use of them.

Langdell, EIM and EGI subsequently used three versions of an EDGE logo, each of which was based on a stretched version of the Franklin Gothic or Helvetica fonts. In all three cases, the slashed middle bar of the 'E' was retained, as well as the stretching effect of the letters. Future accordingly commenced proceedings against all three defendants, claiming breach of contract, infringement of copyright and passing off.

In this action Mrs Justice Proudman was asked to determine among other things, (i) whether the breaches of the CTA and the deed by EIM and Langdell were fundamental breaches of contract and, if so, whether Future had accepted the repudiation. That was an important issue since the claimant was restricted by the CTA from using the mark EDGE for any purpose other than the publication of computer game magazines and certain ancillary uses, (ii) whether Future’s passing off claim was justified and (iii) whether all of EIM’s registered trade marks were invalid for non-use under the Trade Marks Act 1994, s.46.

Proudman J allowed all Future's claims.

First, she concluded that the breaches of contract by the defendants were fundamental and entitled Future to repudiate: they had been deliberately calculated to cause confusion, which necessarily caused substantial damage to Future's reputation. The assignment to Future of the goodwill and registered trade mark rights in the name EDGE and the payments made by Future to EIM and Langdell did not prevent termination of the CTA so far as the future (with a small 'f') was concerned: each side was entitled to retain the benefits which it had already received. By its conduct, Future, having accepted the breaches as being repudiatory in their nature, was thus entitled to treat the contract as being at an end on account.

The passing off claim succeded too.  The judge was content to assume the existence of damage where the goodwill associated with Future’s title was being used and eroded by the defendants’ actions. On the facts, Langdell had sought to appropriate for his own business the goodwill associated with EDGE magazine by making statements which led the public to believe that EIM was responsible for that magazine or that EIM’s games were in some way approved or authorised by it.  Accordingly the pleaded breaches of the CTA which were committed within the jurisdiction of the court also comprised acts of passing off as representations which were likely to lead to confusion. Additionally, being associated with EIM was likely to cause serious damage to Future and to EDGE magazine.

The copyright infringement claim was also upheld.  All three versions of the EDGE logo used by the defendants were copies which infringed Future’s copyright. Langdell’s defence was that he had in fact invented the EDGE logo in 1991. That claim would be rejected on the basis that the evidence given by Future’s creative director that he had designed the logo for the magazine in the course of his employment and that he had been unaware of the existence of any logo used by Langdell at that time. This evidence had not been seriously challenged in cross-examination.

Since the defendants' infringing acts had taken place within the jurisdiction of the court and Langdell had continued to threaten to infringe copyright through use of the EDGE logo, an injunction was both justified and appropriate.

Finally, since on the facts there was no cogent evidence that the defendants had any presence in the United Kingdom market during the relevant period for the purposes of non-use of a trade mark over a continuous period of five years, the defendants' mark would be revoked.

The IPKat believes that every creator of a brand or trade name is entitled to protection against its misappropriation by others, but is deeply saddened by litigation such as this which results from the apparent abuse of the mechanism of a concurrent trading live-and-let-live agreement.

Are you living too close to the edge? here
Timothy Langdell and trade mark trolling here, here, here and here

UK university student wanted -- by the US authorities

This Kat is speechless, both from the anonymous person in Waitrose who gave her a throat lurgie and from the attempts by the US Immigration and Customs Enforcement (ICE) to extradite a UK university student for hosting a website which provided links for visitors to download unauthorised copyright material on other sites.

Richard O'Dwyer is a 23 year old undergraduate student at Sheffield Hallam University. He hosted the websites TVShack.net and TVShack.cc which provided links unauthorised copies of films and TV shows which visitors could then chose to download. In late May 2011, he was arrested and accused of conspiracy to commit copyright infringement and criminal infringement of copyright by ICE. The websites have since been taken down and contain the ominous notice that the domain names have been seized by ICE in accordance with the seizure warrant obtained from the US Attorney Office for the Southern District of New York.

Put at its simplest, these offences were allegedly committed by a UK resident, via a website which was created in the UK and hosted in the UK. Accordingly, is there any reason for the case to be determined in the US?

On the face of it, this Mr O'Dwyer's case sounds very similar to that involving TV-Links in the Crown Court in early 2010. The website www.tv-links.co.uk linked to videos hosted on sites like YouTube and itself carried absolutely zero illicit content. His Honour Judge Ticehurst found that TV-links was a mere conduit within Regulation 17 of the The Electronic Commerce (EC Directive) Regulations 2002. Accordingly, TV-Links were not be liable for damages, for any other pecuniary remedy or for any criminal sanction as a result of transmission in a communication network. His Honour also rejected claims that TV-Links had breached section 20 of the Copyright Designs and Patents Act 1988 by making infringing material available to the public.


Although the TV-links case was determined in the Crown Court and did not establish a binding precedent, it is useful for it demonstrates that an argument along these lines could succeed in a higher UK court. Indeed this conclusion makes sense, for most linking makes it easier to locate works which are already available to the public. The result is also consistent with other jurisdictions, such as Australia, where the Federal Court in Universal Music Australia v Cooper (2005) held that a link to files which contained copyright infringing material was not 'making available' (however at first instance and on appeal to the Full Federal Court it was held that Mr Cooper had 'authorised' infringement: see Cooper v Universal Music Australia Pty Ltd (2006)).

It is perhaps for this reason that ICE are attempting to take Mr O'Dwyer's case to the US. However, in doing so, ICE are arguably setting off another jurisdictional time bomb. The extradition disaster involving Gary McKinnon comes to mind. For those unfamiliar with those proceedings, Mr McKinnon was a computer hacker with Asperger syndrome who has been accused of hacking into networks owned by NASA, the US Army, US Navy, Department of Defense, and the US Air Force. A significant difference between the two cases is that Mr McKinnon's case involved accessing computers in the US, whereas Mr O'Dwyer's actions were wholly in the UK. Mr McKinnon claims that he was looking for evidence of UFO cover ups. Mr McKinnon has been fighting the extradition charges for over nine years and has had his case heard by the House of Lords in 2008, the European Court of Human Rights in 2008 and even in a discussion between David Cameron and Barack Obama during the latter's visit to England in 2010.

Against this backdrop, it is timely that today the Joint Committee on Human Rights (comprised of MPs and peers from all three major parties) recommended the government to reconsider its heavily-criticised Extradition Act 2003 which implements treaties with the US and EU so that Britons were not sent overseas for trial over alleged offences committed wholly or mainly inside the UK or without any evidence being offered against them. Only time will tell if the government will implement any of these proposals.

The IPKat asks the inevitable question: should Mr O'Dwyer stay or should he go?

Merpel says that she would prefer to purchase the DVD box sets of Melrose Place rather than fool around with all this linking and downloading malarky ...

Fair compensation for private copying: ECJ says someone has to pay ...

Even if you feel you're being fleeced by having
to pay for private copying, they'll get you in the end ...

Today's the day the Court of Justice of the European Union gave judgment in Case C-462/09 Stichting de Thuiskopie v Opus Supplies Deutschland GmbH, Mijndert van der Lee and Hananja van der Lee, a reference for a preliminary ruling from the Hoge Raad der Nederlanden (the Dutch Supreme Court).

What was the cause of this reference? As the Court explained, Article 16c(1) of the Dutch copyright law made an exception in its national law in favour of copying for private use. However, Article 16(2) adds that a maker or importer of an item used for reproduction [once upon a time this used to be mainly tape recording equipment and photocopiers, but the recent wave of convergence will soon have us taking photos with our toothbrushes ...] has to pay a private copying levy. Stichting de Thuiskopie is the Dutch body responsible for recovering the private copying levy, while Opus -- a German company -- sells blank media online via Dutch-language websites that target Netherlands consumers. Opus's business model was bound to annoy copyright owners:

" The contract of sale established by Opus provides that, where a Netherlands consumer makes an order online, that order is processed in Germany and the goods are delivered from Germany to the Netherlands, on behalf of and in the name of the customer, by a carrier, that carrier however in fact being engaged by Opus. 

Opus does not pay a private copying levy in respect of the media delivered to its customers in the Netherlands, either in that Member State or in Germany.  ...[T]he cost of the reproduction media thus sold by Opus does not include the private copying levy".

Arguing that Opus had to be regarded as the ‘importer’ and, consequently, responsible for paying the private copying levy, the Stichting sued for payment of that levy. Opus denied liability, saying it couldn't be classified as an importer into the Netherlands of the reproduction media which it sold and that it was individual Dutch consumers who must be classified as importers. The trial court and first appellate court agreed with Opus, following which the Stichting appealed to the Hoge Raad. What an interesting dispute, said the Hoge Raaders and decided to pose the following questions to the Court of Justice for a preliminary ruling:

‘(1) Does [the InfoSoc] Directive [2001/29], in particular Article 5(2)(b) and (5) thereof [which allow EU Member States to make exceptions to copyright in exchange for "fair compensation"], provide any assistance in determining who should be regarded under national law as owing the “fair compensation” referred to in Article 5(2)(b)? If so, what assistance does it provide? 

(2) In a case of distance selling in which the buyer is established in a different Member State to that of the seller, does Article 5(5) of Directive [2001/29] require national law to be interpreted so broadly that a person owing the “fair compensation” referred to in Article 5(2)(b) of the directive who is acting on a commercial basis owes such compensation in at least one of the Member States involved in the distance selling?’

The Court ruled today as follows:

"1. Directive 2001/29 ..., in particular Article 5(2)(b) and (5) thereof, must be interpreted as meaning that the final user who carries out, on a private basis, the reproduction of a protected work must, in principle, be regarded as the person responsible for paying the fair compensation provided for in Article 5(2)(b) [i.e. not Opus but its customers]. 

However, it is open to the Member States to establish a private copying levy chargeable to the persons who make reproduction equipment, devices and media available to that final user [so the Dutch can make Opus pay ...], since they are able to pass on the amount of that levy in the price paid by the final user for that service [... and Opus can then charge more]. 

2. Directive 2001/29, in particular Article 5(2)(b) and (5) thereof, must be interpreted as meaning that it is for the Member State which has introduced a system of private copying levies chargeable to the manufacturer or importer of media for reproduction of protected works, and on the territory of which the harm caused to authors by the use for private purposes of their work by purchasers who reside there occurs, to ensure that those authors actually receive the fair compensation intended to compensate them for that harm [this can be more or less inferred from the text of the Directive, but it would have been easier and clearer if the Directive had simply said "Member States must ensure that any fair compensation is received by the author ..." or some such formula]. In that regard, the mere fact that the commercial seller of reproduction equipment, devices and media is established in a Member State other than that in which the purchasers reside has no bearing on that obligation [i.e. the obligation of the Member State to ensure that authors get paid] to achieve a certain result. It is for the national court, where it is impossible to ensure recovery of the fair compensation from the purchasers, to interpret national law in order to allow recovery of that compensation from the person responsible for payment who is acting on a commercial basis."

The IPKat wonders if the duty of the Member State to ensure that authors receive their entitlement is one of those things that is relatively easy to impose in principle but less easy to implement in practice. Where media for the reproduction of protected works enter a country by post in an innocuous little padded envelope, sent from a vendor based in inconveniently distant EU Member State where things are, well, a little more informal than they are in the Netherlands, the identification of both vendor and purchaser and the quantification of the number of levy-payable transactions may prove difficult.

What the world says: 
"Thuiskopieheffing ook op blanco cd's uit buitenland" here
"Los estados deben garantizar siempre el cobro del canon en su territorio" here
"Diritto d'autore: per la Corte di Giustizia, i Paesi Ue che prevedono l’eccezione per copia privata devono garantire l’equo compenso: La sentenza stabilisce che bisogna riscuoterlo anche se il venditore si trova in un altro Stato membro" here
"Sheep on house roof in Pontycymmer escapes unhurt" here

Goodbye Cathy: Hello Kitty and Miffy settle copycat case

This Kat has been a fan of Hello Kitty since discovering her on a high school exchange trip to Japan many years ago. Therefore, she is most interested in the copyright proceedings involving Hello Kitty's friend Cathy the rabbit and the Dutch rabbit Miffy.

Hello Kitty is a popular children's character created by Japanese design company Sanrio. She is a little half-Japanese, half-English cartoon cat: small, rounded with a red bow between her ears and no mouth. She made her debut in 1974 and is now the face of a cartoon series and numerous merchandise spin-offs. Hello Kitty has become such a global phenomenon that she appears on everything from purses, stickers, jewellery and pen sets to toasters, televisions, clothing, credit cards and computer equipment all over the world.

Cathy is one of the friends of Hello Kitty. She debuted in 1976 and has similarly appeared in the cartoon series and on merchandise. Cathy appears as a white rabbit with upright ears, wearing a tunic which is the same colour as a bow between her ears.

Miffy is a small white female rabbit who was created by Dutch artist Dick Bruna. She first appeared in a children's picture book in 1955 with floppy ears and has been in her current form with upright ears since 1963. She is drawn in a minimalist style, with only a few lines and one or two primary colours. She has gone on to appear in approximately 30 more books (selling 85 million copies worldwide) as well as in a cartoon series and on merchandise such as toys, clothes and stationery.

Mr Bruna has made no secret of his disdain for all things Hello Kitty. In an interview in 2008 with The Telegraph, Mr Bruna stated that the Cathy character:

'is a copy [of Miffy], I think. I don't like that at all. I always think, "No, don't do that. Try to make something that you think of yourself".'

It came as no surprise to anyone then that Mr Bruna would eventually bring an action against Sanrio. Proceedings were brought in The Netherlands by Mercis Media BV (Mr Bruna's copyright management firm) on 26 August 2010. Mercis Media alleged that Sanrio's Cathy character infringed the copyright and trade marks of its Miffy character. Mercis Media sought a provisional disposition order for suspension of the manufacture and sale of Cathy character items and other terms.

On 2 November 2010, the Amsterdam Regional Court found in favour of Mercis Media. It ordered Sanrio: (a) to stop to any production, sale and marketing of Cathy character goods in the Netherlands, Belgium and Luxembourg; and (b) to pay €25,000/day if it did not comply, up to a maximum of €2m.

Sanrio appealed the decision. After the ruling in November 2010, it stated that:

'We object to this ruling and do not believe any copyright infringement took place, a view we intend to express legally ... At this point, we believe any impact on company earnings will be limited'.

Further proceedings on the merits were brought by Mercis Media, whilst Sanrio filed a counter claim seeking the Miffy trade mark to be removed from the register.

This Kat has learned that the parties have settled out of court. On 7 June 2011, the companies issued a joint statement announcing they had reached 'a worldwide settlement' of all pending actions. As part of the terms, Sanrio will no longer use the Cathy character and both will donate €150,000 jointly to the victims of the earthquake of 11 March 2011 in Japan rather than spend money on legal fees. Further, both Mercis Media and Sanrio will make considerable efforts to keep a respectful distance from each other’s characters.

The IPKat is saddened by the loss of Cathy, but is glad that the parties were able to reach an amicable settlement with a humanitarian element.

Merpel is all for merchandising and the legitimate exploitation of copyright and trade marks, but suggests that a possible IPKat toaster with a toast 'branding' option would be stretching the friendship ...

Eminem vs Audi: Audi's ad "imported from Detroit"?

From Germany comes the news that US rapper Eminem is suing German car manufacturer Audi for allegedly using parts of Eminem's song "Lose Yourself" in an ad for the Audi A6 Avant car without the singer's permission. A spokesperson for Audi is quoted by German media as having said that the spot was only used "once" at the car's recent launch party in Berlin. Obviously this was once too often for Eminem's taste.

The spot in dispute is available on YouTube and you can have a look and listen by clicking here.

What appears to make the situation slightly more awkward for Audi is that a rather similar spot for US car maker Chrysler using "Lose Yourself" (with Eminem's permission) was recently shown during the US Super Bowl event. This ad is also available via YouTube and you can retrieve it by clicking here.


German website n-tv.de today cites a spokesperson for the Regional Court of Hamburg (Landgericht Hamburg) who confirmed that a law suit has been filed by Eminem's publisher Eight Mile Style (case reference 310 O 185/11). US website Billboard.com cites a spokesperson for Eight Mile Style who reportedly said that Audi's spot "actually feels inspired by elements of Chrysler's commercial campaign." According to the same report Eight Mile Style is seeking a cease and desist order with regard to use of Eminem's music as well as damages. Whether Chrysler is bringing its own claim has not been reported.

Merpel muses: with Chrysler's spot being so well-known, isn't it a trifle surprising that Audi just "imported from Detroit"?

Hargreaves in the wild: The Top 10 Recommendations

Drum-roll please: the Report that we have all been waiting for since a cold November morning on a roundabout in Shoreditch has entered the wild. Entitled “Digital Opportunity”, complete with a picture that Adobe tells me is “cover image showing digital studio” (although it fails to mention that this has been mixed with what looks like a photo of the inside of a PC - still, it beats a lightbulb), the Report weighs in at 130 pages, split into 11 chapters and four appendices.

The work of another Hargreaves –
which is the more apt descriptor of the report?
The choice is yours…

For those short of time, the Executive Summary begins on page 3 and ends on page 9. There are 10 recommendations (pages 8 & 9) running the gamut from International Priorities through Copyright issues to Patent Thickets and the Enforcement of IP.

The Executive Summary notes that:

“Taken together, the Review proposes a clear change in the strategic direction of IP policy direction designed to ensure that the UK has an IP framework best suited to supporting innovation and promoting economic growth in the digital age. This change is modest in ambition and wholly achievable.

The Review’s specific recommendations would support growth of the UK’s increasingly intangibles intensive economy. This requires:

• an efficient digital copyright licensing system, where nothing is unusable because the rights owner cannot be found;
• an approach to exceptions in copyright which encourages successful new digital technology businesses both within and beyond the creative industries;
• a patent system capable of preventing heavy demand for patents causing serious barriers to market entry in critical technologies;
• reliable and affordable advice for smaller companies, to enable them to thrive in the IP intensive parts of the UK economy;
• refreshed institutional governance of the UK’s IP system which enables it to adapt organically to change in technology and markets.”

So what, I hear you ask, are these recommendations? Well, apart from a couple of rather bland statements that: the “Government should ensure that development of the IP System is driven as far as possible by objective evidence”, as opposed, for example, to simply making things up; and “The UK should resolutely pursue its international interests in IP, particularly with respect to emerging economies such as China and India, based upon positions grounded in economic evidence”, the unified EU Patent Court gets a significant endorsement – the Report stating that the Government should “attach the highest immediate priority” to achieving this aim.

Copyright is, as expected, singled out for more extensive developmental opportunity, to coin a phrase. Appointment of a senior figure to oversee the design and implementation of a “cross sectoral Digital Copyright Exchange” framework is suggested (nominations in the comments section please), as is Government support of moves by the European Commission to establish a framework for cross border copyright licensing.

The work of another Hargreaves –
which is the more apt descriptor of the report?
The choice is yours…

Orphan works are also included in the review, with suggestions that the Government should establish extended collective licensing for mass licensing of orphan works, and a clearance procedure for use of individual works. Copyright clearance clearly being the name of the game as far as the Report is concerned.

Continuing the Copyright theme, the Report also suggests that the “Government should deliver copyright exceptions at national level to realise all the opportunities within the EU framework, including format shifting, parody, non-commercial research, and library archiving. The UK should also promote at EU level an exception to support text and data analytics.” For those that are wondering, the wholly fictitious Parody Act of 1852 gets nary a mention (much to Merpel’s consternation).

In the Patent field, the problem of thickets and other obstructions to innovation are the focus of the Report’s ire. With this in mind, the Government is advised to take “a leading role in promoting international efforts to cut backlogs and manage the boom in patent applications by further extending “work sharing” with patent offices in other countries. It is also advised to be vigilant in ensuring that “patents are not extended into sectors, such as non-technical computer programs and business methods, which they do not currently cover, without clear evidence of benefit” – ‘not just for the sake of it’ is a theme running throughout the Report. Finally on the patent side of things, if the Government acts on the proposals then it looks like fees are to rise, as the Report advises the Government to:

“investigate ways of limiting adverse consequences of patent thickets, including by working with international partners to establish a patent fee structure set by reference to innovation and growth goals rather than solely by reference to patent office running costs. The structure of patent renewal fees might be adjusted to encourage patentees to assess more carefully the value of maintaining lower value patents, so reducing the density of patent thickets.”

Designs are not neglected either. The Report suggesting that the IPO should, in the next 12 months, “conduct an evidence based assessment of the relationship between design rights and innovation, with a view to establishing a firmer basis for evaluating policy at the UK and European level”.

The work of another Hargreaves –
which is the more apt descriptor of the report?
The choice is yours…

Despite coming at number 8 in the list, the section on Enforcement of IP rights is noted to contain some “urgent” recommendations. The enforcement regime set out in the Digital Economy Act 2010 (DEA), that much-beloved piece of legislation swept out of Parliament’s door in the wash-up just before its dissolution last year, is targeted for specific monitoring when it comes into force next year. Hargreaves noted that this is “urgent and Ofcom should not wait until [the provisions enter into force] …to establish its benchmarks and begin building data on trends.” The Report also suggests the introduction of “a small claims track for low monetary value IP claims in the Patents County Court” in order to support rights holders in enforcing their rights.

The final two recommendations concern suggestions that the IPO seek to facilitate improvements in the accessibility of the IP system for small companies, and that it “be given the necessary powers and mandate in law to ensure that it focuses on its central task of ensuring that the UK’s IP system promotes innovation and growth through efficient, contestable markets”, including the power to provide “statutory opinions where these would help to clarify copyright law.”

If the recommendation is followed, we can also expect to see an impact report on the measures advocated by the review at some point in 2013.

Summary over, this Kat is now off to read the report in a little more detail.

Update: as the IPKat's friend Mary-Ellen Field has pointed out, the fictitious Act of 1852 is not the only thing to have nary a mention in the Report: she notes that "the words 'trade' and 'marks' are not mentioned" either.

GIPI3: how do you rate?

Recently this Kat was fortunate to attend the launch of the Third Report of the Global Intellectual Property Index (GIPI) at the London office of European law firm Taylor Wessing. After a helpful introduction by team leader Roland Mallinson, there was then a lively discussion of the findings of the survey, with key team members from Taylor Wessing on hand to answer specific questions.

For those unfamiliar with the concept of GIPI, it is an evaluation of the attractiveness of 24 national jurisdictions for obtaining, exploiting, enforcing and attacking the key IP rights (trade marks, patents, copyright and designs). In a new twist, this year the survey also considers personal data requirements for the first time. The survey combines and weights 43 instrumental factors from 14,000 individual responses. It functions to give a better insight on doing business in a particular jurisdiction rather than relying on anecdotal evidence such as ‘trials of patents in Country A take years’ or ‘it is quick to register a trade mark in Country B than Country C’. In doing so, it hopes to create a melting pot of empirical evidence to encourage better laws for doing business in those jurisdictions.

In theory, five kinds of rights, across 24 jurisdictions according to 43 instrumental factors would be enough to strike fear into the hearts of most Kats. However, to their credit, the team at Taylor Wessing has produced a highly readable report. In particular, it provides a number of tables which group jurisdictions into five tiers of competitiveness for each individual right as well as an interesting commentary on significant changes since GIPI2.

The key table is:

Some important insights from this table include:

· Germany scored three 1st positions in the individual IP indices but last for the personal data index.· Russia has pulled away from the other BRIC countries.
· Common law countries made up seven of the top 11 jurisdictions.
· India ranked last overall in three of the five indices.
· Apart from Australia, all six of the top tier jurisdictions ranked consistently well for all individual IP indices except for the personal data index. This in turn raises the concern that data regimes in these countries are weighted too much against business.

In addition to the detailed discussion of the individual IP rights, some general overarching themes also emerged from the survey. These include:

• 62% of respondents said that they had spent more time on IP issues over the last three years.
• 60% of respondents felt that IP law needs updating to keep up with technological and online business developments.
• Value for money is increasingly important for businesses in choosing where to litigate.
• There are improved perceptions of EU harmonisation: 8% decrease in variance between the lowest and highest ranked EU Member States.

The IPKat says that the team at Taylor Wessing are to be congratulated for collating, analysing and presenting such an important and accessible report. He looks forward to GIPI4 to see whether the laws of individual jurisdictions have responded to the interesting questions raised in GIPI3.

Merpel wonders whether the UK could score as highly in the Eurovision Song Contest as it does in the GIPI3.