The latest Laddie, Prescott and Vitoria is available to buy in time for Christmas. Best left under the tree as it will weigh down any stockings! Spread over two bumper volumes this deep dive into copyright law is essential reading for the serious copyright practitioner.
At first glance, the authors list appears to be the whole of 8 New Square, in name order, they are: Michael Tappin QC, Daniel Alexander QC, Charlotte May QC, Adrian Speck QC, Iona Berkeley, Lindsay Lane, James Whyte, Quentin Cregan, Jaani Riordan, Isabel Jamal, Ashton Chantrielle, Maxwell Keay and Tom Jones.
Volume 1 takes you on a full copyright journey from its history and origins to its current international context. The different types of copyright work are considered in detail together with thorny issues such as copyright term. first ownership and assignment, licensing and security. The various exclusive rights are given a chapter each with the communication right no doubt the subject of revision
Volume 1 also includes the table of cases and index.
Volume 2 covers less mainstream issues such as rights in performances, collective licensing, the lending, rental and artist's resale rights. It also looks at moral rights and the overlap with competition law. Volume 2 includes the key bits of legislation that apply to copyright law in the United Kingdom. A very useful resource - just make sure you do some weight lifting to prepare before picking up the book.
No copyright stone has been left unturned. If you have a question about copyright, the answer is highly likely to lie within these pages.
I particularly enjoyed the quotations which are included at the start of many chapters and set the wider context for the chapter. (My personal favourite is the double bill from the start of Chapter 16.) Many of these quotations are from learned judgments including the inevitable quotation from Lord Denning MR - a classic from Rank Film Distributors Ltd v Video Information Centre 2 AC 380:
"It is, it is a glorious thing, to be a Pirate King," said W. S. Gilbert: but he was speaking of ship pirates. Today we speak of film pirates. It is not a glorious thing to be, but it is a good thing to be in for making money."
What the publishers say
Laddie, Prescott and Vitoria is an authority on all issues that are important to those practising in the field of copyright. The well-respected title is replete with worked examples and in-depth discussions, and it contains all the historical and contextual material needed to ensure practitioners are expertly briefed in this complex and fast-moving area of law.
This much anticipated fifth edition of Laddie has been fully edited and revised to focus primarily on the law of copyright. The comprehensive new look 2-volume Work has been extensively re-worked to take into account all the latest developments in EU and UK legislation and case law, and developments in technology and content delivery mechanisms since the last edition. The new structure of the Work facilitates easy navigation of the most topical, fast-moving subjects that are important to practitioners.
Key stats Total pages: 3556 over two volumes Published: October 24, 2018 ISBN/ISSN: 9781474306898 Rupture factor: law Health and Safety warning - do not drop on toes!
Article 8(1) of the Enforcement Directive mandates upon Member States to ensure that, in the context of proceedings concerning an infringement of an IP right and in response to a justified and proportionate request of the claimant, the competent judicial authorities may order that information on the origin and distribution networks of the goods or services which infringe said right be provided by the infringer and/or any other person who was:
found in possession of the infringing goods on a commercial scale;
found to be using the infringing services on a commercial scale;
found to be providing on a commercial scale services used in infringing activities; or
found to be providing on a commercial scale services used in infringing activities; indicated by the person referred to in point (1), (2) or (3) as being involved in the production, manufacture or distribution of the goods or the provision of the services.
But is the right of information compatible with the values that individual Member States recognize in their constitutions?
The IPKat has learned from Katfriend Bohdan Widła (attorney-at-law at Barta&Kalinski) that, recently, the Polish Constitutional Tribunal has ruled (the text is not yet available, but the press release is) that this might not always be the case.
Here’s what Bohdan writes:
Is the right to information about the infringing activities compatible with constitutionally protected values? According to the latest ruling of the Polish Constitutional Tribunal, it might not necessarily be the case if information is requested from a non-infringing party, at least with regard to the Polish implementation of Article 8 of the Enforcement Directive.
The case dates back to 2015, when Grupa Allegro sp. z o.o. (the biggest e-commerce platform in Poland) was ordered to provide information about the origin and distribution of allegedly infringing goods from 2006 onwards. The claim was submitted by a German automobile manufacturer and related to two EUTMs it owned. The proceedings against the alleged infringer had not yet been initiated. Grupa Allegro tried to invoke a number of defences including statute of limitations, safe harbours, protection of trade secrets and protection of personal data. Neither by the Court for the EU Trade Marks and Community Designs in Warsaw nor the Court of Appeal in Warsaw accepted either of them. The latter also refused to refer the case to the Court of Justice of the European Union (CJEU).
Since the decision of the Court of Appeal was final, Grupa Allegro filed a constitutional complaint. Last week, in an unanimous decision, the Constitutional Tribunal declared that Article 286 sec. 1 subsec. 3 of the Industrial Property Law Act, which refers to the right to information against non-infringing parties, is incompatible with freedom to conduct a business as guaranteed under the Polish Constitution.
The full text of the decision has not yet been published, but we can extract some information from the available press release. At first glance, the provision in question appears similar to Article 8 of the Enforcement Directive and its other national implementations (e.g. §140b of the German Patentgesetz). As always, the devil is in the details. Just to name a few potentially problematic aspects:
the rightholder may request information without brining an action against the infringer, even when the infringing activity is neither proven nor obvious, but ‘highly likely’,
it is not explicitly stated that the court should assess the proportionality of the request.
To verify compliance with the Constitution, the Constitutional Tribunal applied a well-established test of proportionality. A statutory provision may limit a constitutional freedom only if it is:
useful (i.e. adequate to achieve its declared goal),
necessary (i.e. there are no alternative ways which are at least equally useful),
proportionate (which requires weighing and balancing opposing interests).
The rationale behind the right to information was not at issue here, nor was the usefulness of the relevant provision. Necessity was a different story. The main problem was that the disclosure of confidential information of the third party is irreversible. However, the rightholder may request and receive such information even if the proceedings against the actual infringer are never initiated. In such circumstances, the right of information loses the connection with the alleged infringement. As a result, the Polish implementation goes beyond what is necessary to enforce IP rights.
Finally, the court considered the protection granted to the rightholder to be disproportionately strong in comparison with the interests of the third party. This was due to the lack of statutory protections against any abuse of the right of information and lack of specific safeguards to ensure proportionality be observed.
The court dismissed the other arguments raised by Grupa Allegro, which mostly referred to the right to a fair trial.
... but also from AngelKats, aka innocent third parties?
Almost all of the parties of the proceedings, including the ombudsman and the Parliament, argued before the Constitutional Tribunal that Article 286 sec. 1 subsec. 3 of IPL was unconstitutional to some extent. The final decision, however, is a bit surprising. Why is that so?
Perhaps most importantly, it seems that the court struck down the entire provision referring to right of information from non-infringing parties, without using any of the tools which would allow it to survive at least to some extent. Some parties suggested a so called partial judgment, which would only invalidate the provision to the extent that it would interfere with the protection of trade secrets or would be detached from actual infringement proceedings. In other cases, the right of information would have remained unchanged. The court did not follow this path. Nor did it postpone the effects of the judgment, something that would have been possible for up to 18 months. As a result, the Constitutional Tribunal pushed Poland into a state of non-compliance with the EU law essentially overnight.
Although this warrants a quick legislative intervention, its direction is not immediately obvious. For example, what safeguards can be created to counterbalance the irreversibility of disclosure? It is hard to imagine an equivalent of the ‘right to be forgotten’. Perhaps linking the right of information more strongly to ongoing (or completed, as the CJEU pointed out in C-427/15 NEW WAVE CZ) infringement proceedings would do the trick. Moreover, there are more issues with the provision in question. It has been criticized by Polish scholars since its introduction in 2007. One can hope that any fixes to the right of information will go beyond what is explicitly stated in the ruling.
The impact is not limited to patents, trade marks and designs. A very similar claim is described in Article 80 sec. 1 subs. 3 of the Act on Copyright and Related Rights. Although it was not struck down here, courts may follow the reasoning of the Constitutional Tribunal and refuse to apply the twin provision in copyright cases. It would not be entirely surprising. After the Polish provision allowing the rightholder to claim triple the value of license fees for a culpable copyright infringement was found unconstitutional, the Polish Supreme Court followed the same reasoning with regard to the provision regarding claim for double the value for non-culpable infringement, and refused to apply it (even though it is compliant with EU law).
One of the most challenging issues that confronts trademark practitioners is how to treat a word that is arguably the dominant portion of a mark. This is especially so when that word is the subject of a registration by another party. The most recent decision involving the "Monster" mark in Singapore is an excellent example. Kat friend Samuel Wee from Yusarn Audrey provides a helpful discussion about this case.
Just how big is the "Monster"? When it comes to trade marks, it does not go as far as "Monster Energy," in the view of the High Court of Singapore.
In the case of Monster Energy Company v Glamco Co, Ltd  SGHC 238, the High Court was faced with the primary question of whether Glamco’s trade mark “SWEET MONSTER” in Class 30 was registrable in Singapore even though Monster Energy had earlier trade mark registrations for the word “MONSTER” (and variations thereof) in several classes in Singapore (section 8(2)(b) of the Trade Marks Act). Monster Energy asserted as well that “MONSTER” was a well-known trade mark belonging to it (under sections 8(4)(b)(i) and 8(4)(b(ii)(A) of the Trade Marks Act) and that there was passing off (under section 8(7)(a) of the Trade Marks Act).
Monster Energy took the position that Glamco’s trade mark “SWEET MONSTER” should not be registered due to its similarity to Monster Energy’s trade mark “MONSTER”. Monster Energy argued that its trade mark “MONSTER” had a high level of inherent distinctiveness; that it should have protection vis-à-vis the family of trade marks for “MONSTER” (due to its use of its trade mark “MONSTER” with other words, such as “JAVA MONSTER”, “X-PRESSO MONSTER”, “MONSTER DETOX”, “MONSTER REHABITUATE” and “MONSTER ENERGY”); and that the word “SWEET” in Glamco’s trade mark “SWEET MONSTER” should be ignored as it is descriptive of goods in Class 30 (resulting in “MONSTER” being the dominant element in Glamco’s trade mark “SWEET MONSTER”).
The High Court was, however, not persuaded by Monster Energy’s arguments. It was determined that Monster Energy’s trade mark “MONSTER” did not possess a high level of technical distinctiveness (this is elaborated on below). First, “MONSTER” was a common word in the English language; second, “MONSTER” has an allusive and laudatory meaning in relation to Monster Energy’s goods in Class 30 (i.e., it suggests that consuming the said goods would provide energy and strength like a ferocious monster); and third, Monster Energy did not provide sufficient evidence to show that it had acquired distinctiveness in the trade mark “MONSTER” through its use (due to a lack of evidence).
This in turn meant that there was no higher threshold to be crossed for Glamco’s trade mark “SWEET MONSTER” to be found dissimilar to Monster Energy’s trade mark “MONSTER”, which would have been the case if “MONSTER” possessed a high level of technical distinctiveness. Since the Singapore Court of Appeal’s decision in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc  1 SLR 911, the comparison of trade marks in Singapore has invariably involved the question of technical distinctiveness.
Technical distinctivness refers to the capacity of a trade mark to operate as a badge of origin. For instance, trade marks comprised of an invented word would be considered to have a higher level of technical distinctiveness. A trade mark that has greater technical distinctiveness enjoys a high threshold before a competing sign will be considered dissimilar to it (i.e. more differentiating factors would have to be present); conversely, a trade mark that has a lower technical distinctiveness would have a lower threshold before a competing sign will be considered dissimilar to it.
The High Court was also not persuaded that Monster Energy should have protection vis-à-vis the family of trade marks for “MONSTER” due to a lack of evidence. In particular, the High Court questioned Monster Energy’s lack of use of the word mark “MONSTER” simpliciter, as the evidence Monster Energy produced generally showed use of “MONSTER” in a stylised form (i.e.).
As a result, the High Court found that Glamco’s trade mark “SWEET MONSTER” was dissimilar from Monster Energy’s trade mark “MONSTER”. Glamco’s trade mark “SWEET MONSTER” had to be viewed as a whole (rather than considering “MONSTER” as its dominant element), and the addition of the word “SWEET” in Glamco’s trade mark “SWEET MONSTER” was sufficient to distinguish it visually, aurally and conceptually, from Monster Energy’s trade mark “MONSTER”.
Monster Energy has been taking active steps to try to prevent the other parties from obtaining registration of trade marks bearing the word “MONSTER” in Singapore. For instance, Monster Energy has gone through other opposition proceedings relating to the trade marks “MONSTER STRIKE” (filed by Mixi, Inc. – see  SGIPOS 12 ); (filed by Chun Hua Lo –see  SGIPOS 17); and (filed by Tencent Holdings Limited – see  SGIPOS ). It is noted that all of Monster Energy’s said oppositions have failed.
One can ask the value of pursuing opposition proceedings? It is obviously important for trade mark owners to take steps to try to protect their trade marks, including commencing trade mark oppositions or other litigation proceedings to prevent third parties from using or registering similar trade marks.
However, trade mark owners should be mindful of the possible negative implications that such actions may have on its business. For instance, failed oppositions may embolden other third parties to use or register trade marks that may bear some arguable similarities to the owner’s trade mark.
This appeal concerned Cadbury's attempt to amend the description of the mark:
The mark consists of the colour purple, as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods. The mark consists of the colour purple (Pantone 2685C) as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.
The Comptroller and John Baldwin QC (sitting as a deputy judge in the appeal to the High Court) both denied the request to amend the description.
Frustratingly for Cadbury's the issue arises because Cadbury's followed guidance from the registrar in 1997 and amended their 1995 mark from a description which read "the mark consists of the colour purple" to the above longer form and more confusing wording. This change was made at the express suggestion of the registrar (Cadbury's application had been to amend the description to "the mark consists of the colour purple as shown applied to the packaging or labelling of goods covered by the registration".
The reason for this application to change the mark was the impact of the decision in Société des Produits Nestlé SA v Cadbury UK Limited  EWCA Civ 1174 ("Cadbury 1") - see the IPKat post here. This case considered whether the description together with the mark defined a sign within the meaning of section 1(1) TMA (it did not). As a result of the Court of Appeal decision, Cadbury's had to revisit its earlier 1995 mark which had the same description and consequently was vulnerable to an invalidity attack. A small ray of hope was glimpsed in the Court of Appeal's analysis and it concluded that it might be possible to remove the "predominant colour" wording from the description, and leave only the "whole surface" wording. If this had been possible, it might have been possible to overcome the Cadbury 1 objection.
There were three grounds of appeal:
The deputy judge wrongly failed to construe the 876 mark as consisting of two descriptions of the mark presented as alternatives: namely (i) the purple colour applied to the whole visible surface of the packaging and (ii) the purple colour being the predominant colour applied to the whole visible surface of the packaging
The deputy judge wrongly considered that the fact that the second alternative covered an unknown number of ways of presenting the colour meant that it failed to satisfy section 41(2) of the Act [i.e. it did not qualify as a series mark]. That was a different question from whether it satisfied section 1(1) of the Act.
Even if it is correct that the 876 mark is wrongly registered as a series, the deputy judge was wrong to consider that this prohibited Cadbury from deleting the second alternative under rule 28(5) of the 2008 rules. Rule 28(5) permits the proprietor to delete any mark which appears on the register as part of a series regardless of whether it qualified to have been registered as a series.
The series argument was an interesting angle but [spoiler alert] it was not successful. Floyd LJ took the lead on this one. Interesting points to note:
Although Cadbury's application was not explicitly for a series mark, Floyd LJ did not consider this determinative as the registrar has a power to register a series of marks in accordance with the Act and rules. "If a fair reading of the register is that he has exercised that power, I would be reluctant to hold that the absence from Form TM3 of a statement of the number of marks in the series would be determinative of whether a series had in fact been registered."
The question was whether the mark was (i) a single mark with an imprecise description, or (ii) two or more marks forming a series. (Put another way, was it a valid mark bundled with an invalid mark or one mark with a flawed description?) This was important as if the mark was part of a series, it could have been possible to delete the invalid mark.
The debate essentially was a question of whether (i) the opening description of the mark ("The mark [singular] consists of the colour purple…") was determinative or (ii) the two alternatives (whole surface or predominant colour) in the second part of the description lead to the conclusion that more than one mark has been registered.
The use of the word "or" was not enough to dissuade Floyd LJ from the conclusion that the description referred to a range: "Taking both parts of the description and reading the description as a whole, what is being described is every conceivable case where purple is the predominant colour, including, for the avoidance of doubt, the case where no other colour is visible." As Floyd LJ noted, "the logical result of Cadbury's argument is... that the registrar has allowed registration not of a series consisting of two marks but a series consisting of an unknown number of marks." The simpler and more obvious conclusion was that the description "were parts of a generalised but imprecise description of a single mark".
The final word
Floyd LJ had the final word: "Whilst one can feel sympathy for Cadbury that it is its adherence to the Guidance which has given rise to the breach of these requirements, it would be a potentially far-reaching step to allow the consequent lack of clarity to be read, instead, as an attempt to register a number of marks. I agree with the registrar that such an approach to interpretation would give rise to grave difficulties for the examination of trade marks. It must be for the applicant to state clearly the type of monopoly for which he contends."
This case could raise questions over adherence to future guidance from the registrar. As always, readers' constructive comments and insights on this and the other issues raised by the case are appreciated.
This was an interesting and novel argument which has provided some clarity around both series marks and the description of colour marks. What next in the chocolate wars? Watch this space.
This is the third and final post in the series on the Second Brand Protection Conference in Frankfurt.
This post is all about Mette Andersen's insights into the LEGO Group. For me, this was one of the most fascinating and informative talks. Whilst it was focused on the LEGO brand protection experience, the lessons that Mette shared provide an excellent framework for all brands on their IP journey. I am sure IPKat readers will find the story similarly inspiring.
The business was aware of the importance of IP rights from the moment they made their transition from wooden toys to plastic bricks with the well known circular connecting tubes that enable everything from the Death Star to Hogwarts to be created with relative ease.
Because the LEGO Group is such an established business, many of these rights have now expired. For example their patent over the tubes and the way in which they interact expired in 1978! Mette took the audience through the five stages and IP strategies which have been essential to the company’s success.
1 You need IP rights
As the patent has long since expired, the main IP focus is on trade marks. In particular, a sound mark and the mini figure 3D mark (see above). There are also several trade marks which protect the classic plastic brick in square and rectangular form in relation to related products and merchandise (the rectangular brick is also protected in red - see left).
The business also has a wide range of registered Community designs for everything from the famous storage container through to specific LEGO elements.
In addition to the trade mark and designs portfolio, the business has a large number of domain names. They are partly in order to protect against third party infringers (and in many instances as a result of past settlements). Inevitably this is an administrative hassle but it is worth it in order to keep the names out of circulation.
2 Enforce the rights
Tyco famously launched a rival product as soon as the patent expired. Since then, the LEGO Group’s IP enforcement experience has slowly developed from competitor counterfeits in the 1980s to the use of a similar but not identical logo in the 1990s (i.e. a red square but with a different brand name).
The 3D trade mark for mini figure is a particularly important part of their portfolio.
As with all brands, the internet has created a range of brand protection problems for the LEGO Group. Facebook and social media sales are some of the problems arising in recent years. This is because the social media ads are only up for a very short period of time so it is difficult to react and do anything about it within the short timeframe.
Mette shared various examples of infringers who use the LEGO trade mark as a description in order to get traffic to their product listing even if the product itself isn't necessarily infringing. She also highlighted the LEGO Group's particular successes in China this year - it was able to rely on infringement of copyright in its models to win against cases against two Chinese companies.
3 Enrich the brand (& then everything is awesome!)
The business has been hugely successful in both its in-licensing of famous franchises such as Harry Potter and Star Wars and its out-licensing for everything from LEGOLAND to computer games and, most recently, the LEGO Movie.
4 Build appropriate social media channels
For obvious reasons, it is extremely important that LEGO social media is child friendly. They have set up a system where chats between children are safe due to being pre-approved by parents. There is a more adult oriented site for over 13 year olds to share their creations. Even on the adult site, no inappropriate creations are allowed!
To improve user engagement, the business has also launched LEGO ideas. This gives members of the public the opportunity to send in ideas for new products. If an idea gets more than 10,000 votes the LEGO Group will seriously consider whether to make a physical product. For example, they made a set with LEGO Birds. The idea originator gets 1% of the royalties - with LEGO sets that can be a substantial amount even for a fairly niche idea.
The LEGO Group recognises the importance of its fans so much that they have their department. With non-commercial fan sites they don’t tend to take action although they may reach out gently to explain the trade mark rules. There is also an element of self policing between the fans.
Nowadays they don't see lots of proper counterfeit LEGO products. They’re mostly knock offs. The customs experience varies hugely with the location. Mette singled out Czech and US customs for being particularly active.
The LEGO Group has invested in training for customs. They have created a dedicated video which explains how to recognise a genuine compared to a fake LEGO product or a mini figure etc. Relatively speaking the LEGO Group has a lot of seizures.
The blocking order application was filed by EPOE, an organization for the collective protection of audiovisual works representing Greek film production and distribution companies Odeon, Seven, Feelgood Entairtainment, Tanweer Alliances and the Greek Film Centre. These entities are the licensees of rights in films produced Warner Bros, 20th Century Fox, Paramount, Walt Disney Pictures, Universal and Sony Pictures for the Greek territory. EPOE requested the blocking of several torrent, streaming and subtitle websites providing access to infringing content.
Following this application and the notification of a blocking request to all Greek internet access providers, the Commission issued three separate decisions. The first two verify the compliance of two specific access provider with the blocking request sent via email, the content of which is however omitted from the text of the decisions. This means that it is unknown to the public which websites were blocked by the providers in compliance with the Commission’s request. Furthermore, the names of the providers have been also erased from the published documents, so it is also unknown which two ISPs complied voluntarily with the blocking request.
The third decision orders all internet access providers, which are registered with the Greek Telecommunications and Post Commision [EETT]as internet access providers and failed to comply with the blocking request (that is over than 200 entities), to block 38 infringing websites, including piratebay.org and popular Greek pirate website gamatotv.me, xrysoi.online, tenies-online.com and liomenoi.com, within 48 hours.
Failure to comply with the order would result in fines of EUR 850/day. The decision does not order any hosting or content providers to remove infringing content, even though in its preamble the decision expressively states that the Commission sent the blocking request to “the hosting providers and to the administrators or owners of the infringing websites, the contact details of which were accessible to the Commission” again without clarifying which specific hosting providers, administrators or website owners received the blocking request.
The Committee rejected EPOE’s request to order the blocking of all future alternate URLs of these websites on the grounds of lack of precision. As a result, most of the blocked websites just changed their top-level domain and can be accessed easily again with a simple online search. Moreover, several websites published walkthroughs for by-passing the blocking measures with the use of VPN and DNS change. As a result, the blocking orders might prevent some traffic to the blocked pirate sites, but tech-savvy users are still able to watch illegal content without any problem.
This is the second in a series of blogs following the Second Brand Protection Conference in Frankfurt. The first is available here. The first blog looked at some of the issues faced by major brands. This blog looks at some of the solutions. The law enforcement perspective
David Hunt from Camden Trading Standards gave a fascinating overview of the long Camden market's long history of counterfeit goods - where the fakes have become a tourist attraction in their own right.
David and his team has successfully implemented a new way of tackling counterfeit goods in co-operation with the Anti-Counterfeiting Group, police and major payment providers. New approaches to landlords who are being made to take greater responsibility for their markets (thanks to money laundering legislation) together with the Real Deal initiativehave been very helpful as well. Following successful prosecutions, Camden High Street is slowly changing and major brands are moving in to take over the previously counterfeit focused premises. Success by Trading Standards is very dependent on co-operation from brands both in terms of funding and intelligence. A more joined up approach from government would be preferable and ensure greater longevity.
A Scandi solution
Johanna Norborg Lilja fromVolvo had more positive news in her talk about how it is possible to make IP infringement into a profit centre (or at least not a loss).
Unsurprisingly, Volvo's primary enforcement focus is around product safety but areas such as counterfeit merchandise are still a problem and can damage the brand. Since the summer, Volvo has been trying a new approach in dealing with these low cost products. First, they carry out a test purchase of potentially counterfeit products sold by a seller and once it is confirmed as counterfeit, a Temporary Restraining Order (TRO) is filed against the seller's online accounts.
One counterfeit product is sufficient to obtain a TRO which can freeze all of the money in the account eg PayPal or Alipay. At this point usually the seller will make contact and it is possible to reach a negotiated solution but in many instances they do not make contact or a settlement is not possible. In these cases, after 21 days, if no response is filed, Volvo can apply for default judgment and get all of the money held in that account transferred it. The total time period taken is 3-5 months so it is not appropriate for items with safety concerns. However, it is good for low cost and non-safety related products.
To date, Volvo has not had an effective defence filed but this is a potential issue which could arise in the future and change the cost calculations.
Designs to the rescue?
Toward the end of the conference there was an interesting presentation from Sky Italia about the ways in which they protect the graphical user interface and the way in which this has been forced to change with the advent of the second screen. Designs were very useful together with copyright and the trusty trade mark. A combination of these rights is generally enough to deal with most GUI copies.
The academic perspective
The moderator on the second day, Carsten Ullrich from the University of Luxembourg, gave a thought provoking and provocative talk about the ways in which intermediary liability have developed since the principles behind what became the eCommerce Directive was first debated back in the mid 1990s.
He pointed out that platforms have the data on the bad sellers and know the profile of listings which are likely to be selling fakes. It is time to change the legal framework and encourage platforms to take a more active role and accept a higher duty of care. European tools
Nicole Semjevski from EU Observatoryon the infringement of IP rights (now part of EUIPO) reminded the room of the fantastic resource that the EUIPO has developed in the form of the Enforcement Database (EDB). The EDB is a platform where a rightholder can add information on their products including details of how to spot fakes and, importantly, who to contact if fake goods are seized. More sensitive information such as the tell tale signs of fakes can be restricted and only made available on request. The link with EUIPO makes everything a lot easier as it pulls data from TMView and DesignView this means that people in law enforcement (including local police and Europol) can immediately tell if there is a valid right. It is also possible to upload details of copyright and patents to the database - but this requires more active engagement from the brands.
Since the EDB was launched in 2013, it now works in 23 languages is linked in to customs and there are over 60 authorities on board and more than 28,000 trade marks represented.
The various presentations regarding tracking and authenticating physical products were similar but with important variations. The key differences were summarised in the following slide.
Did you know there is a global standard to support brand protection? The GS1 global standardsupports brand protection by using a range of standardised codes from barcodes and QR codes through to RFID chips. They try to cover off every stage in the process and are are of the importance of training and educating people in the standards - particularly in healthcare where counterfeit goods can have very serious consequences.
There were various practical implementations which were demonstrated in various presentations. They included:
AlpVision: the use of digital fingerprint technology (i.e. invisible patterns of micro indentations which are embedded into product packaging). This technology uses a smartphone to check if the product is genuine. It can be used on lots of materials at low production cost. Importantly, it doesn’t affect the production chain. Because the feature is invisible, counterfeiters are unaware of the feature so do not copy it. The micro indentations can be used together with QR codes so that consumers can check the product themselves.
Edding: the pen company has diversified into the use of digital ink on swing tags to detect if a product is legitimate or fake. Their design includes a directional marker so it is easy for the consumer, retailers and customs to authenticate products. It is possible to swipe in the opposite direction to get product information or special offers. Essentially there is a conductive layer which is added beneath the artwork.
Verisium: has a more high end solution for luxury goods. They have used their funding from Kaspersky Labs to develop a combination of blockchain and NFC chips. NFC is the method by which a contactless card or smartphone payment is able to work. It works with any smartphone but, unlike RFID chips, it requires very close proximity in order to work. The benefit of using the chips is that it enables the entire product life cycle to be tracked and that information shared with the consumer and the brand. For example, it can be used to demonstrate sustainability credentials and also to track second hand goods and enable effective recycling. The major downside is the relatively high cost, hence the focus on the luxury goods sector.
There were various exhibitors demonstrating their online counterfeiting solutions such as Yellow, Pointer andRed Points. A common theme across the platforms and the conference as a whole was the importance of combining the data led intelligence of platforms with traditional intelligence and evidence gathering. You can have the best platform in the world but if you haven’t got your IP portfolio in order, you are not going to get very far.
The first Counterfeit and Piracy Watch List has been published by the European Commission (EC) today. It identifies marketplaces, registrars and hosting providers located outside the EU which are engaged in facilitating substantial counterfeiting and piracy.
On 22 January 2018, the EC launched the public consultation with the aim to establish its first Counterfeit and Piracy Watch List containing marketplaces located outside the EU.
The Watch List is part of one of the measures adopted by the EU (reported by this Kat here) with the aim of stepping up the fight against counterfeiting and piracy, by raising “consumer awareness concerning the environmental, product safety and other risks of purchasing” on the marketplaces identified on the Watch-List, and encouraging “their operators and owners to crack down on intellectual property abuse”.
The Watch List is divided into four chapters covering online marketplaces offering content protected by copyright, e-commerce platforms, online pharmacies, and physical marketplaces.
The first chapter of the Watch List is dedicated to online marketplaces offering content protected by copyright and services providers that facilitate access to such content. Among others, Sci-hub.tw/#about, ThePirateBay.org, Torrentz2.eu, Popcorn Time and the hosting provider CloudFlare are included.
The chapter of e-commerce platforms was highly expected. Bukalapak, EVO Company Group (Tiu.ru, Prom.ua, Bigl.ua, Deal.by, and Satu.kz), Lazada, Snapdeal, Xxjcy.com, and China-telecommunications.com were listed here. However, Alibaba platforms (Aliexpress, Tmall, Taobao and 1688), Amazon and eBay were not included despite it was reported they offer a “significant volume of allegedly counterfeit goods”. This on the grounds that the platforms are open to cooperate, apply proactive measures to remove infringing content and are signatories of the Memorandum of Understanding on the sale of counterfeit goods via the internet (more about MoU by this Kat here).
The third chapter is focused on online pharmacies in which the domain registrars CJSC Registrar 101, EP1K Inc and ZhuHai NaiSiNike Information Technology Co are listed.
Finally, physical marketplaces located in Argentina, Canada, China, India, Indonesia, Korea, Malaysia, Mexico, Russia, Thailand, Turkey, Ukraine, United Arab Emirates, and Vietnam are included on the Watch List.
Stay tuned, a more detailed analysis of the Watch List will follow!
It was a very interesting event with a wide range of speakers and topics all linked to brand protection. The talks ranged from the various online anti-counterfeiting tools and latest technological developments and intermediary liability through to the various methods that brands have adopted to protect their rights. There were far too many issues discussed for me to go into the detail they deserve but these blogs will cover off the points which I found most interesting (and I hope will be of the most interest to IPKat readers).
The industry perspective
The dangers associated with counterfeits and illicit trade were highlighted in David Luna’s opening keynote. Oliver Fein went on to note that there is a tendency for business teams such as brand protection, security, IT security, IP and trade marks to work in very separate universes. He urged them to work together.
Ken Bonefeld-Nielsen used a ball of wool and a funnel to highlight the importance of planning and prioritisation in crisis management. He reminded everyone that you have plenty of time before a crisis and none when one erupts. Get a standard operating procedure in place now! The key is clear communication in a timely manner. Whilst it may not be the brand’s legal responsibility for damage resulting from brand counterfeits, the brand name is in the news and it is an opportunity to present a positive solution for the public.
Ekaterina Makarova of Sberbank gave us a sneak peak into its cyber squatting problems. The most memorable copycatwas a purported airline (an unusual second line of business for a bank) which mimicked the bank's branding colours, website layout and overall appearance. These issues are being successfully litigated via the Russian courts.
Magdalena Kaput of Oriflame Cosmetics discussed the Protection of image rights. This is particular issue under their direct sales model where social media engagement and photos of Oriflame events are an important part of their business. As Magdalena explained in the world of post GDPR it is important to understand context and consent before using an image. Getting this wrong can create major reputational harm and a large liability under GDPR.
Magdalena highlighted a particular feature of celebrity and model contracts which needs to change - whilst they can be very long regarding location timing, lighting, hair and makeup to be used they do not tend to include specific consent to use of the image. This is a major omission which will need to be resolved in model/celebrity contracts to avoid problems in the future.
Jan de Visser of Philips' brand protection team explained the background to Philips' move into healthcare together with the divestment of its electronics name and many of its white goods and electronics products (which are now sold under licence). Many of the issues Jan raised will be familiar to IPKat readers from the plethora of infringing products sold on online platforms to the varying experiences of IP enforcement in China. A particular complaint concerned the absence of data on the sellers so it is not possible for brand owners to determine whether the goods are being sold by authorised resellers or not.
During questions, an audience member gave the platform perspective and pointed out that not all platforms are created in the same way. She highlighted that not every platform knows the precise origin of the goods sold on the site and whilst the data may technically be available, big data doesn’t equal knowledge. She also noted that brand owners often refuse to do the test purchase so it is impossible for the platform to verify whether or not the goods are counterfeit.
The impact of the track and trace legislation for cigarettes was discussed by Alexandra Munch of Philip Morris International. This means that it is now possible to see the full product route from factory to retail. She also noted that the move to e-cigarettes means that big tobacco is starting to worry more about online sales.
The next post will look at the other perspectives which were covered such as law enforcement, the EU and academia as well as a quick overview of some of the technical solutions which were discussed in the course of the conference.
“There is nothing new under the sun”. In copyright law, this declaration from the Book of Ecclesiastes translates into an awkward tension between the need to limit slavish copying (to prevent free-riding), on the one hand, and the need to allow a degree of derivative creation, on the other (to avoid stifling creativity). But where do we draw the line? This is the fraught question that Omri Rachum-Twaigaddresses in his recentbook, “Copyright law and derivative works”.
The author revisits the right to make derivative works through the lenses of cognitive psychology and genre theory, both of which study creativity. The author argues that copyright law has much to learn from these two disciplines, both in the way that they understand creativity and how to best encourage it.
"Why these two fields", you ask? Perhaps, according to the author, it is because each of them investigates a different aspect of creativity: cognitive psychology focuses on creativity as a process, whilst genre theory centres on the product of the creative process, i.e. the work. (‘Genre theory’ (or ‘genre theories’) stems from the field of literary theory, studying the formation of ‘genres’ of creative expression, “explain[ing] among other things how art develops and how meaning artistic products are created” (p. 57)). The author contrasts the tenets of cognitive psychology and genre theory with the legal doctrines of US copyright law with respect to the right of making a derivative work. (NB: The analysis also references aspects of English copyright law in the latter part of the work regarding the evolution of the reproduction and derivative rights).
Unsurprisingly, Rachum-Twaig concludes that there is a significant degree of mismatch between copyright, cognitive psychology and genre theory. Nevertheless, and more interesting to readers, the author uncovers elements of overlap between them, confirming that the comparison with these disciplines is worth pursuing.
Derivative cat? Catwoman by J Duffy, J Balent & D Giordano
Chapter 1 gives a helpful outline of the main theories of cognitive psychology as it relates to the study of creativity. It is clear from Rachum-Twaig’s account that ‘cognitive psychology’ is an umbrella term that covers a range of different [diverging?]takes on how the creative process is best defined and stimulated. This chapter provides a useful summary of key studies and theories in cognitive psychology.
Still, from the chapters of the book that follow, the real star of this show is genre theory. It seems that the comparison between copyright and genre theory is more productive in re-thinking the concept of a derivative work. In Chapter 2, the author explains that the crux of genre theory rests on the idea that authors need ‘building blocks’ [sounds familiar?] to create. Genre theory recognises that such building blocks often come in the form of constraints or limitations, which may seem paradoxical or counter-intuitive.
Taken together, these conventions or rules form what we identify to be genres of artistic creation (e.g. science fiction writing, poetry, detective, etc.). According to genre theory, these building blocks are essential to stimulate authors’ creativity but also to give the audience a framework within which to make sense of the work. From this angle, the building blocks, or constraints, which form a ‘genre’ serving two purposes: enabling or encouraging the author’s creativity and enabling the audience’s reception of the work.
But how much of genre theory chimes with copyright law doctrines? The author’s conclusion is that there a good level of overlap between genre theory’s definition of ‘building blocks’ and what copyright law regards as creative expressions eligible to protection. This conclusion is reached on the basis of rules pertinent to the idea/expression dichotomy, the scène à faire and the fair use doctrine. What the author identifies as missing from the realm of copyright is the importance that genre theory attributes to derivative creativity, something which copyright seems to overlook. For this reason, Rachum-Twaig concludes that “the right to make derivative works as a legal norm does not match the sociological-philosophical understanding of creativity and should be scrutinized and re-evaluated” (p. 82). The author writes:
Showing a match between genre theories and copyright law would validate current legal rules, as they adequately reflex extra-legal approaches to the enrichment of the creative world/. If, however, there is mismatch between some copyright doctrines and genre theories, then there is reason to re-examine these doctrines.
[T]o the extent that genre theories explain, among other things, the important and significant conditions for the enrichment of the creative world, and to the extent that copyright law aims at such enrichment, I believe any gap between legal rules and extra-legal understanding of the creative world should be bridged.
In the author’s view, copyright law can learn from genre theories to achieve a better definition of the right to make derivative works, so as to give derivative works the place they deserve in the framework of copyright. Rachum-Twaig argues that there should be no overlap between creative (read – useful, productive) derivative works and infringement of the reproduction right. The book puts forward that genre theory can assist in drawing the line between derivative work and infringement.
What would this look like in practice? Here is the author's proposed revision to copyright law that would take into account the tenets of the theories mentioned above (Chapter 5).
First, the law needs to adopt a new definition for ‘derivative work’, which should feature three cumulative characteristics (p. 153):
(1) a derivative work must add a substantial original contribution to the work it re-uses;
(2) taken expression must constitute an “inseparable part” of the derivative work (principle of inseparability);
(3)taken expression cannot “be substituted with a different existing non-protected expression” without affecting, or “undermining the purpose”, of the derivative work (principle of non-fungibility).
However, this revision of the definition of a derivative work alone would not suffice, according to Rachum-Twaig. It would work if it came with a non-exhaustive statutory list of examples, to illustrate common occurrences of derivative works, such as: translations, sequels and prequels, abridgments, improvements of works, disassembly and reconstruction of works (p. 154-6).
Another key part of the book’s proposal is to reform remedies to make sure they encourage the making of derivative works rather than inhibiting them. According to the author, the most promising avenue for reform on this point is compulsory licensing for derivative works, similar to what already exists in music for the production of cover songs in some countries (p. 167). The maker of a derivative work, as defined above, would be able to legally make and distribute his/her work, thanks to the compulsory licensing scheme, but would also be bound to remunerate the author of the pre-existing work on the basis of an appropriate royalty rate.
This book will be useful to researchers and students interested in the concept of derivative works. The author offers a refreshing perspective on this question by pursuing a methodological approach that does not apologize for not using economics. As the author rightly points out at the onset of his analysis, there are things that economic perspectives, however useful they may be, simply cannot address (p. 58). Defining what the appropriate definition for ‘derivative works’ or ‘derivative rights’ might, is, or should be, under copyright law, one of them.