A weighty trade mark issue for the US courts

The IPKat has learned from Reuters that Weight Watchers is suing Nestle for trade mark infringement in the District Court of Southern New York. Weight Watchers claims that Nestle has displayed trade marks relating to Weight Watchers and its points system on its Skinny Cow ice creams and Lean Cuisine ready meals. Weight Watchers fears that this may confuse consumers into thinking that it has endorsed Nestle's products. Nestle meanwhile runs its own weightloss programme, Jenny Craig Inc.

This looks to the IPKat like a rather unconventional interoperability case. Can you use someone else's trade mark to tell them that you food fits into their diet programme? Even if you can, should you do it in a way which doesn't cause confusion?

Google backs fair use defence

The IPKat has learnt from the Guardian that Richard Sargeant, Google’s Public Policy Manager today called for the UK to have a fair use defence to copyright, similar to that in the US:

“We look with respect at the system of fair use rights that exists in the US. Europe doesn't have anything similar, which makes it much more difficult for people to see what they can and can't do."

The IPKat, stifling the urge to say ‘Well he would say that, wouldn’t he?” can see the advantage of such a defence, rather than the labyrinthine defence Chapter III of the Copyright, Designs and Patents Act 1988. He wonders though whether a broad fair use defence would provide enough certainty for all players.

Judge stops escalation of Alms race

Picked up by Lawtel but probably too insignificant to be noted more widely, Alm Manufacturing & others v ALM Imp Exp Ltd is a Chancery Division (England and Wales) decision of Sir Donald Rattee from last Monday, 9 June. This was an application for summary judgment against ALM Imp & Exp (AIE) and its company director in a claim for trade mark infringement and passing off. Alm was the proprietor of the trade mark ALM for various household products which it made, sold and marketed. Having traded under this mark for several years Alm discovered that AIE had placed an advertisement in a trade magazine for "ALM imports and exports limited", which offered various household and garden products. Alm made enquiries of AIE and found that, though none of the goods it sold were marked ALM, its letterheads and the director's business card were explicitly and prominently marked with the name ALM in one form or another.

Alm sought summary judgment, which AIE's director resisted, maintaining that (i) none of the goods sold by AIE were marked with the brand name ALM and could not be regarded as trade mark infringements; (ii) AIE never used the word ALM alone but only with the further terms "imports" and "exports"; (iii) neither defendant knew of the existence of Alm before they produced their own advertisement and, if there was any infringement, it was entirely innocent; (iv) the range of products which each side dealt with was quite different and did not justify an action for trade mark infringement.

Sir Donald Rattee granted Alm summary judgment. In his view the key question was not whether either defendant intended to infringe or pass off their goods as those of Alm but whether, inadvertently or otherwise, they had actually done so. On the evidence, neither defendant had a realistic prospect of defending the claim. The so-called defences were not so much defences in law as attempts to excuse or justify infringement or passing off. They were therefore irrelevant.

The IPKat is sad that this is yet another case that should never have got to court. The defendant director in this case acted for himself, motivated presumably by his belief that he had done nothing wrong and a degree of wilful blindness as to the outcome of his actions that will have inconvenienced Alm without benefiting himself.

Good excuses here and here
Bad excuses here and here

A nice drop of bubbly from the ECJ

Today the ECJ has ruled on the dispute between O2 and H3G. O2 objected to a comparative advertisement, in which H3G used bubbles in the course of making a price comparison with O2's mobile telephone services. O2 is the proprietor of various trade marks depicting bubbles. A reference to the ECJ from the Court of Appeal of England and Wales ensued.

The court's judgment isn't out yet, but a press release is available on the ECJ's website.

This suggests:

• in contrast to the Advocate General's opinion, the ECJ is of the view that a comparative advertisement CAN infringe a trade mark
• however, the legislature has shown a clear intention to promote comparative advertising, and therefore the rights granted by trade mark law are limited by comparative advertising
• consequently, a trade mark owner CANNOT oppose the use of his mark in comparative advertising where all the condition of Art.3a of the Comparative Advertising Directive are met
• where there is a likelihood of confusion, by definition not all the conditions of Art.3a are met, and therefore the comparative advertiser can be pursued under trade mark law
• four conditions must be met before action can be taken against a comparative advertiser under trade mark law: (1) that use must be in the course of trade; (2) it must be without the consent of the proprietor of the mark; (3) it must be in respect of goods or services which are identical with, or similar to, those for which the mark is registered; and (4) it must affect or be liable to affect the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, by reason of a likelihood of confusion on the part of the public
• in this case, there was no likelihood of confusion and so the fourth condition wasn't met and there could be no trade mark infringement by H3G

The IPKat reckons that it sounds like the ECJ has got pretty close to applying the law to the facts here. The Kat is in two minds about the way the decision seems to have panned out. On the one hand, it makes life a lot simpler conceptually if comparative advertising is taken out of trade mark law, but on the other hand, why as a matter of principle, should comparative advertising be treated differently from other forms of use, particularly since there is no express defence of comparative advertising in the Directive. He is also rather puzzled. What if you don't meet the other conditions of Art.3a, for example if you denigrate the mark? This is also a ground of trade mark infringement - is the ECJ trying to say that Art.5(2) infringement doesn't apply to comparative advertising?

More from the IPKat when the full judgment comes out.

Major consultation on copyright exceptions launched

Lord Triesman has launched the first part of a two-stage consultation on reform of copyright exceptions in the light of the Gowers Review. It’s more than a year since the Gowers Review came out, but the IPKat can see why the consultation took so long. Weighing in at 100 pages and inviting responses on 66 questions, it’s a whoppper.

These are the questions:

Recommendation 2 – exceptions for educational establishments

• What impact would the expansion of the educational exceptions [to cover interactive whiteboards and distance learning] have? What costs or benefits would accrue to right holders and users of copyright works?

• Should section 35 be extended to allow educational establishments to record on-demand communications in addition to traditional broadcasts?

• If so, should the recording of an on-demand service be permitted only where the work in question was subject to an original broadcast? Would this restriction be practical?

• Do you agree that access should be subject to security measures, such as the requirement to enter a secure password in order to access a recording? What other security measures might be appropriate?

• Who should be able to view recordings made by an educational establishment in a VLE [virtual learning environment]? Is the reference to “teacher and pupils at an educational establishment and other persons directly connected with the activities of the establishment” in section 34 sufficient or too widely cast?

• What level of responsibility should an educational establishment have for maintaining the security of a password protected VLE?

• How should onward communication beyond a secure environment be prevented?

• Should limits be placed on the form of communication used by educational establishments to communicate extracts to distance learners?

• Should the expanded exception be limited to communication inside a VLE?

• Should communication by email outside a VLE be permitted?

• Should limits be placed on the form of communication used by educational establishments to communicate extracts to distance learners?

• Should the expanded exception be limited to communication inside a VLE?

• Should communication by email outside a VLE be permitted?

• Should section 36 be expanded to include classes of work other than short extracts from published literary, dramatic and musical works? If so, what classes of work should be included?

• What consequences would such an amendment have on rights holders?

• What benefits would there be for educators?

• If the exception is expanded to other works, what limits should be placed on the size of extracts? Would the application of existing limits to other works be desirable or practical?

Recommendation 8 – format shifting exception

• What impact would the introduction of a format shifting exception have? What costs or benefits would accrue to right holders and users of copyright works?

• Do you agree with the conditions proposed above? [these are for personal private use only, and there would be no right to sell, loan, or give away the copy or share it more widely. There would be no right to retain the copy if the original is given away. Third parties would not be allowed to make the copies on behalf of others.

• Would a requirement to dispose of a format shifted copy if the original was given away or sold or otherwise disposed of, be practical or enforceable? What alternatives can you suggest to address the problem of original copies going back into circulation after copies have been made?

• Should further conditions be imposed? If so, what are these?

• Should the non-infringing acts differ depending on the class of work concerned?

• Should the proposed format shifting exception be limited to recorded music and film or should it also apply to other works? If so, which ones? [the consultation cites the example of a wedding photograph. As things stand at the moment, it would infringe the photographer’s copyright if the happy couple scan it to use as wallpaper on their personal computer.]

• What impact would the introduction of a format shifting exception have on particular sectors of the creative industries?

• How many format shifts should be allowed?

• Should the exception allow additional format shifts to take account of changing technology?

• Should more than one copy be allowed to address the technological process of transferring content?

• Should the exception apply to works:

• published after the date the law changes;

• purchased after the date the law changes; or

• copied after the date the law changes?

• What would be the practical implications of the above options?

• Can you think of any alternatives?

Recommendation 9 – research and private study

• What impact would the expansion of the exception for research and private study have?

• What benefits can the expanded exception be expected to deliver?

• What might be the impact of the expanded exception on rights holders and other affected parties?

• Should the expanded exception cover both research and private study?

• Should all types of work be covered?

• Should the expanded exception cover all fields of study or just specific areas?

• What action, if any, should be taken to address possible concerns about misuse of the expanded exception?

• Do researchers and students experience difficulties getting permission to make copies today?

• Are areas of research and study not being pursued as a result of issues regarding permissions for film, sound recordings and broadcasts?

• What benefits might an expanded exception deliver for researchers and students, for educational establishments and research institutions and for society overall?

• Are there reasons why the expanded exception should be limited to ‘research’ rather than covering both research and private study?

• If the expanded exception is limited to ‘research’ is it necessary to set a clear boundary between research and private study in order to avoid confusion?

· Are there reasons why the expanded exception should not apply to all works i.e. including films sound recordings and broadcasts?

· Are there reasons why the expanded exception should not apply to all works i.e. including films sound recordings and broadcasts?

• Is it necessary to limit the scope of the expanded exception to prevent intentional misuse? If so how should it be limited? For example, would guidance on fair dealing be useful? Should there be a formal link to a course of study or research establishment?

• Are steps needed to make the boundaries of the expanded exception clear to researchers and students so as to prevent misunderstanding? If so, what steps should be taken?

• Should a DRM workaround be provided for all copying under the expanded exception or should the workaround just be limited to scientific research in line with EU law requirements?

• What impact might a broad DRM workaround have on rights holders?

• If a narrower approach is adopted, is it necessary to adjust the current arrangements for literary and other works to ensure consistency in this area?

Recommendations 10A and B – preservation by libraries

• What impact would the expansion of the exception for libraries and archives have? What costs or benefits would accrue to right holders and users of copyright works?

• What are the consequences, for rights holders and beneficiaries, of extending section 42 to cover all classes of works?

• Is it necessary to restrict the number of copies made for preservation purposes?

• If so, why, and how many copies should be permitted?

• What would be the impact on rights holders if section 42 was extended to cover museums and galleries?

• What types of museums and galleries should be included? What criteria should they meet to qualify?

Recommendation 12 – caricature, parody and pastiche

• What impact would the introduction of an exception for parody have? What costs or benefits would accrue to right holders and users of copyright works?

• Could an unlimited exception undermine the interests of owners of copyright in the underlying work by allowing advertising or the endorsement of products which are contrary to their commercial interests?

• If so, would framing the exception as a‘fair dealing’ exception address the problem adequately?

• Should the exemption for parody include a requirement to acknowledge the underlying work and its author?

• Is the ordinary meaning of the terms caricature, parody and pastiche sufficient?

• Is there any reason for excluding particular classes of work from the exception?

• Should the exception only apply to certain exclusive rights of a copyright owner or to all such rights? If the exemption is to be limited, how should it be limited and why?

• Should the exception explicitly state that it only applies where the underlying work has been made available to the public?

• Should the exception explicitly state that it only applies where the underlying work has been made available to the public?

• Is there any reason why section 79(4) should not be extended to exempt parodies from the right of attribution?

• Is there any reason why section 84 should be amended to exempt parodies from the right of false attribution?

The IPKat says that it looks like the UK-IPO has done a thorough job on this, and its preferred answers to certain of the questions suggest that it is willing to seriously consider the needs of consumers and the wider public. There was one false note though. In the section considering the copyright framework, the consultation states ‘The primary relevant ECHR consideration is whether Article 1, Protocol 1 ECHR is engaged’. This is the right to peaceful enjoyment of one’s possessions. What about free speech?

Responses are due by 8 April 2008. The IPKat would encourage his readers to respond – the UKIPO has left most if not all of the questions truly open and does appear to be genuinely seeking responses from all concerned parties.