For the half-year to 31 December 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Jani Ihalainen, Nikos Prentoulis and Mark Schweizer.

Birgit Clark is on Sabbatical till the end of the year

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Tuesday, 6 October 2015

Bat-tastic - Batmobile Protected by Copyright in the US

Amongst the very old school and traditionalist judgments here in the UK, it is always refreshing to read ones that step outside of that dusty judicial demeanor, and often our friends across the pond in the US show us that even judges remember their youth with fondness. Seemingly, as was the case in the recent US Supreme Court judgment in Kimble v Marvel [Katposts here and here], this emerges through cases involving superheroes, and a recent Ninth Circuit decision involving Batman was no exception.

The case of DC Comics v Mark Towle 2:11-cv-03934-RSWL-OP (accessible here) dealt with the copyright protection of the Batmobile, ever-present in the Batman saga, and its infringement through the making of replicas of specific versions of the aforementioned Batmobile [of the full-size variety, not merely toys]. As exclaimed by judge Ikuta, delivering the court's judgment; Holy copyright law, Batman!

Quickly, to the Katmobile!
As many will be aware, the Batmobile has been a part of the Caped Crusader's arsenal since the 1940s, often being drawn as a modern, high-tech vehicle containing bat-like features. It has also been features in a myriad of Batman movies and television adaptations, often being depicted as very different to the ones in the comic books. The more relevant ones were the vehicles used in the 1960s Batman TV series and the 1989 movie Batman. For both productions all rights to the recreation of Batman and other intellectual properties related thereto were licensed to the relevant parties for the purposes of merchandising, including the Batmobile. The defendant, Mark Towle, created life-like replicas of the Batmobile features in the TV series and the movie as a part of his business Gotham Garage, selling them to car collectors with a keen interest in Batman. He also sold car modification kits enabling a purchaser to do so themselves. DC Comics then took Mr. Towle to court in 2011 for both copyright and trademark infringement, as he had sold the replicas with clear indication and intention for them to be associated with the Batman brand.

The first claim dealt with by judge Ikuta was whether the Batmobile would be afforded copyright protection under US law ["to the Batmobile!" she exclaimed].

Through an extensive discussion of precedent surrounding comic book characters and protection afforded to them, judge Ikuta laid down a three-part test in assessing whether a character (or in this case, vehicle) would be afforded copyright protection. First, the character must generally have physical as well as conceptual qualities [meaning it has to not simply be a literary idea, but manifest itself in a physical and/or conceptual manner, such as in images, movies etc.]; second, the character must be sufficiently delineated to be recognizable as the same character whenever it appears [this need not be in terms of appearance, but through their character, personality etc.]; and third, the character must be especially distinctive and contain some unique elements of expression [in other words, not be a generic character with generic elements in their representation].

Some Kats have a secret alter-ego...
In applying the test judge Ikuta quickly saw that, as the Batmobile has appeared in many renditions in a variety of forms, it has conceptual and physical qualities. The vehicle has also maintained a sufficient amount of distinct features over the years, even with minor (or more major) difference in some iterations, along with its specific characteristics and features in equipment and technology, making it sufficiently delineated to be recognizable as the same vehicle. Finally, judge Ikuta saw that the vehicle was especially distinctive, containing unique elements of expression through its status as a key part of Batman's crime-fighting repertoire, along with its very distinctive name. The Batmobile therefore was deemed to be protectable under copyright.

As a final step the Court looked at whether Mr. Towle's replicas had in fact infringed on DC Comics' rights in the Batmobile. Both parties had no contentions over whether the cars were actual replicas of the two versions of the Batmobile. Mr. Towle argued that, as the Batmobiles features in the 1989 movie and the 1960s TV show were derivative works, he did not infringe on DC's rights in the underlying work. Judge Ikuta quickly dismissed this, stating that "...if the material copied was derived from a copyrighted underlying work, this will constitute an infringement of such work regardless of whether the defendant copied directly from the underlying work, or indirectly via the derivative work". No rights were transferred as a part of the licence agreements for the two derivative works, and therefore Mr. Towle had infringed DC's copyright through making his replica vehicles. This was deemed to be the case even though the two versions of the Batmobile differed from their depiction in the comic books.

The case was an interesting one, at least to this Kat. The Batmobile has been depicted in a variety of forms over the years, and when comparing the Batmobile in the recent Dark Knight movie, and, for example, the 1960s TV show version, it has hard to say they are cut from the same cloth. Even so, based on a US law argument the decision seems right [although this Kat invites anyone who might disagree to let him know why], and as judge Ikuta ended, quoting Batman: "[i]n our well-ordered society, protection of private property is essential".

Monday, 5 October 2015

Never Too Late: if you missed the IPKat last week

Were you away or just too busy to read the IPKat last week? Do not despair, because our dear friend and colleague Alberto Bellan is back as usual with his Never Too Late feature, now on its 66th edition.

So here's what happened last week:

"Punitive damages" is one of those topics that sharply divide the community of European lawyers. Mark takes a tour through the Court of Justice of the European Union's (CJEU) decisions on this point.

A few weeks ago this blog reported on the latest Opinion of the European Copyright Society (ECS), this time regarding a case currently pending before the Court of Justice of the European Union (CJEU): HP Belgium v Reprobel, C-572/13. IFRRO, the International Federation of Reproduction Rights Organisation, does not fully agree with ECS, Eleonora reports.

On 26 November, the Journal of Intellectual Property Law & Practice celebrates its 10th anniversary with a full day's conferencing, discussion, dispute and debate. Along with stellar speakers, there's another reason why IPKat aficionados should join the event, writes Jeremy.

WIPO, along with researchers at Cornell and INSEAD, recently published the Global Innovation Index. The index ranks countries by their innovativeness and usually grabs a few headlines, particularly in countries who've fared well. Nicola tells all.

Have you ever come across a copyright law that provides that the State automatically acquires ownership of copyright in a certain work upon death of the relevant owner? This appears to be what South African (SA) Government may have in mind (unless all this is just a result of bad inaccurate law drafting) with one of its proposed amendments to this country’s copyright law. IP enthusiast and Katfriend Nedim Malovic (Stockholm University) explains.

Once every three months or thereabouts, the IPKat and Merpel post an update of the goings-on both on this weblog and on other IP-flavoured blogs to which members of the IPKat's blog team contribute. Here's the last edition penned by Jeremy.  

Every year it is the pleasure of the IPKat to invite his friends, colleagues, informants and competitors in the intellectual property media sector to join him for a get-together at which matters of mutual interest are discussed in a friendly and informal atmosphere. This year is no exception, says Jeremy.

Here’s an interesting thought experiment about how patent offices should operate. Two patent applications are pending at the European Patent Office (EPO). Imagine that one was filed several years ago by Microsoft, and the other was filed at the same time by (say) an Italian SME which files “only” 10 patent applications per annum. Nothing much has happened in either case now for several years, but both files are allocated to the same examiner. Which case should the examiner pick up first – the one filed by the “customer” with 750 filings per year, or the one filed by the SME? Here's the first part of this tale, kindly recounted by Merpel.

… and here's the second one.

$100 billion loss per year (emphasis in original). At least. That is the sum of global IP losses due to 3D printing predicted by IT research and advisory company Gartner for the near future”, some say. Really, wonders Neil?

From guest contributor Emma Perot comes this appraisal of a dispute between a giant publisher of valuable and useful scholarly material on the one hand, and those who seek access to that same information on the other. 

Eleonora reports on a case (Tilda Riceland Private v OHMI - Siam Grains (BASMALI), T-136/14) that the General Court (GC) decided on 30 September last, and appears to have some relevant implications particularly as far as that peculiar creature of UK common law known as extended passing off is concerned.

Hyperlinking-loving ALAI (the Association Littéraire et Artistique Internationale) has recently released a new Report and Opinion on a Berne-compatible reconciliation of hyperlinking and the communication to the public right on the internet. Eleonora reports on that and hosts an analysis of a recent Greek decision by Katfriend Yannos Paramythiotis (Paramythiotis and Partners)

Katfriend Mira T. Sundara Rajan -- herself a concert pianist -- has something special to say about one of the most gifted musicians of our generation and an interesting issue in moral rights. 



Never too late 65 [week ending on Sunday 27 September] – Scotch whisky battle in far-off China | CJEU loves KitKat | EPO in Case T 0327/13 | UPC opening in London | Happy birthday copyright case | Goldbear saga | Tatoos and copyright | IP in 2015 – Where we are vs. Where I thought we’d be | PETA litigates over macaque selfie | JIPLIP event

Never too late 64 [week ending on Sunday 20 September] – Adwords in Canada | EU Draft consultation on ISPs | "The UPC: A Panel Debate" | Prince and Mean Music Companies v That lovely baby dancing Prince  Lenz v Universal Music | CJEU in KitKat | Paul Burrell v Max Clifford [2015] EWHC 2001 (Ch) | Economics of Collecting Societies | Who is an 'intermediary' for the sake of Article 11 of the Enforcement Directive? | IP: When innovation is the answer to a spiritual funk

Never Too Late 63 [week ending on Sunday 13 September] - Fair compensation in reprography and private copying: the ECS’ version | Substitute sellers | Teva UK Ltd & Another v Leo Pharma | Evidence-based IP policy | KitKat case | UK IPO’s priorities | UK IPO’s website vs complete copyright legislation | Patent Attorney Qualifications | Mylan and Actavis v Warner-Lambert | Copyright and censorship | Suicide at the EPO | Private copy levies in Austria | Court fees in the UK.

Never too late 62 [week ending on Sunday 6 September] - Copyright and industrial design in Japan | Greek political slogans and trade marks | Moral rights in legal works | Economist v patents | CJEU in Iron & Smith Kft v Unilever NV | Copyright over criminals' works | IPEC in Minder Music & Another v Sharples | Apple’s European slide-to-unlock patent declared invalid in Germany.

Eponia rumours: House Ban, Vienna and under-strength Boards

After a quiet summer, Merpel gets the feeling that the impending meeting of the EPO Administrative Council* (AC) on 14-15 October is causing a flurry of activity, which is giving rise to several rumours in relation to the Boards of Appeal.

House Ban update 

Regular readers of this blog may recall that, 10 months ago, a member of the Boards of Appeal at the European Patent Office (EPO) was escorted from the premises of the Office on the instructions of the President. It was alleged that this Member was guilty of defamation, and in the rush for pitchforks Mr Battistelli apparently forgot that he had no power to discipline a Board Member.

Following interventions from the Enlarged Board, external national judges and many other quarters, the Administrative Council took the matter in hand, formally suspended the Board Member until 31 March 2015, and promised a speedy and thorough investigation of the matter. 'Speedy' means different things in Eponia than where Merpel lives, but six months after that March date it appears that there has been progress of a sort.

Among the items listed on the Agenda for the forthcoming AC  meeting is this disciplinary case. The AC will review the allegations, then review the defence and response submitted by the person involved, and will then apparently review the decision of the Enlarged Board in this matter before coming to a decision.

This could mean what is says, i.e. that the AC will come to a disciplinary decision this month. However, watch this space, as Merpel has reason to suspect that the story will not come to a neat close, or at least not this month.

Oh Vienna!

If Vienna's too close,
what about Columbia ...?
The EPO management has been seeking to reform the Boards of Appeal, and apparently a necessary part of this project is to get them out of Munich. The fact that the more senior members have family ties there, children in school and college, and may ultimately be forced to resign if there is a long-distance move, is neither here nor there (or is that the whole point?).  Regardless, it was long understood that Mr Battistelli favoured sending the Boards to Berlin, but the little birdies hiding from Merpel in the trees along Erhardtstrasse are chirping that the new plan is to send the Boards to Vienna. Nice city to be sure, but it's a long commute after dropping the kids to school in Munich each morning. Merpel will keep you posted.

Under-strength Boards

Conspicuously absent from the AC's agenda (since we are talking about the Boards of Appeal) is any signal that the Council is ready to make the long-overdue appointments required to bring the Boards up to full strength. The AC can only make such appointments on the proposal of the President, but Mr Battistelli has been uncharacteristically remiss** in this regard. It has been suggested that Board of Appeal members who are depending on reappointment might feel that they lack their former zeal if tempted to make a decision against the interests of the administration.

Unless the necessary appointments are made, Merpel understands that no fewer than seven chairperson positions will be vacant at the beginning of 2016, along with seven legal positions and thirteen technical positions.


* Just making sure that you see the footnotes before you close the email or the page. As you were.

** Merpel's kidding, it's not uncharacteristic at all. For example, staff representative posts, which bizarrely depend on Mr Battistelli's imprimatur, have remained unfilled for months at a time even though substitutes had already been elected prior to a position opening. Those substitutes were standing by to attend crucial meetings, but were turned away from the door as not being properly accredited (by Mr. Battistelli, that is). Helpfully, Vice-President Topic who chaired the meetings, steamrolled any objections and carried on regardless, leaving staff in a minority when a vote on downgrading their health package was put to a committee designed to be balanced but engineered to give management an advantage. The absence of a staff rep from the crucial vote allowed Mr Battistelli to present his health reform to the AC as having been "properly approved" when in fact the vote lacked credibility. Fortunately the AC proved to be a vigilant watchdog, scrupulously looking out for the interests of the staff under its care ***.

*** Merpel's kidding again. Despite having been informed of the flawed vote, the AC nodded it through, like always. In fairness, at recent meetings the level of dissent has increased and some delegations have shown some backbone. Time will tell if this is a trend that will grow sufficiently to restore the AC's independence and credibility as a governing body.

Sunday, 4 October 2015

Glenn Gould and the case for moral rights in sound recordings

4 October is a calendar date that has a resonance with many pianists.  In this guest post, Katfriend Mira T. Sundara Rajan -- herself a concert pianist -- has something special to say about one of the most gifted musicians of our generation and an interesting issue in moral rights. This is what she writes:

Today is the 33rd anniversary of the death of Glenn Gould – Canadian pianist and musician extraordinaire, who died in 1982, at the premature age of fifty. One month before he died, Gould completed re-recording the work that had first made him famous, the Goldberg Variations of J.S. Bach. But to say that he revisited an old work in that final recording seems curiously imprecise. The second recording was so utterly novel, so completely reimagined from his first, spectacular, and universally admired, 1955 version of the work that, in its own way, it qualified as a new undertaking. Amazingly, the second Goldberg managed to fascinate and captivate just as fully as the original recording did, but in a completely different way. It holds the work together with what Gould called “a sense of pulse,” and further bolsters Gould’s already stellar reputation as an artist of almost cosmic significance.

In the three decades that intervened between the two recordings, Gould developed what may have been the most remarkable career in the history of Western classical music. He hated live performance. At the age of 32, he decided to live life as he wanted to, and undertook the dramatic and unprecedented step of retiring permanently from the stage. He was warned against doing so by his manager, the legendary Walter Homburger, who told him that audiences were fickle and, once gone, he might never be able to come back. But Gould had a plan – to maintain his presence in the world of classical music through recordings – and proceeded to carry out this feat with extraordinary efficiency and effectiveness.

The secret of Gould’s success was arguably very simple: it lay in the quality of his recordings.  Gould approached recording as no artist had previously done. For him, the goal of recording was not to reproduce his own live performance; rather, it was to create a new, unique work, one that could only have been born in the studio.  Live performances were one-off affairs and, if something went wrong, if anything were different from what the artist truly desired, nothing could be done. The failure was complete – a fatality. He called it the “non-take-twoness” of performance. In contrast, the recording studio represented control – supreme, undeniable, artistic control – the ability not so much to excise and avert mistakes (not an issue for Gould) but to re-think and re-conceptualize every instant of a musical interpretation, to exercise creative control over nearly every dimension of the final musical form.

He learned about the recording process, was fascinated by it, and attempted to use the technologies of recording to serve his vision of a more perfect work of art. His long-time producer, Andrew Kazdin, wrote a fascinating, if at times bitter, account of the 15 years during which he worked with Gould as his regular producer. As Kazdin tells it, Gould would play many interpretations of his pieces for the microphone before he chose his definitive versions, or constructed them out of pieces of each of his own, perfect takes. Any artist who has worked in the studio can attest to the extraordinary stamina, skill, and concentration that Gould’s recording process must have demanded.

Gould loved technology in all its dimensions, admiring Bach as played on the Moog synthesizer, and arguing that the “new listener” of the future would enjoy music by playing it on a sound system that would enable him, or her, to exercise new kinds of manipulation and control. Technology would allow the listener of the future to intervene creatively in the sound, and to take an active part in generating his or her own artistic experience. Ancient Sanskrit thinkers already knew that the human brain, itself, accomplishes this very goal through its experience – individual, shared and transcendent –  of musical consciousness. They called the shared artistic experience rasa, and he or she who enjoys art as creatively as the maker makes it, the rasika. Gould’s vision of technology seems almost spiritualized. By a paradox, the man who sought to efface his presence from the concert stage by physically removing himself from it, managed to achieve an almost limitless expansion of personality through his recordings.

Recording technology is a fast-growing field, and the changes, even since Gould’s latter days, are tremendous. Yet there is still no other artist like Gould – no classical musician, in particular, who has embraced the possibilities of technology for an “alternative” career to the traditional path of exhausting competitions, Carnegie Hall debuts, and concert tours... The goal of classical music production generally remains the re-creation of an idealized version of the concert-hall experience for the listener at home.

Interest in Gould has grown phenomenally since his death. Since the 1980s, there has been an outpouring of work on Gould – but the true explosion of interest in him has taken flight in the internet age. Much of this interest surrounds Gould “the man,” rather than, primarily, the musician. Gould was known for his eccentricities – his solitary lifestyle, late-night phone calls, humorous alter egos, obsessive privacy, terror of illness, and compulsive hand-soaking in hot water, to name only a few of his special “characteristics.” In recent years, Gould’s psychological health has been probed in books, and the secrets of his love life revealed – apparently with the understandable desire to settle public speculation – by his long-time companion.

But his music, of course, cannot fail to command attention. In the post-Gould era, recordings of Gould’s playing have proliferated. His original label, CBS Masterworks, was acquired by Sony in 1987, and Sony Classical has remastered and re-released the original recordings. New CDs have also been issued: works that Gould performed but never made into definitive recordings are now available. Throughout most of his life, Gould was not only charismatic, but handsome and photogenic, and his recordings are frequently issued with covers, or even booklets, featuring striking photos. New video footage of his performances is available. Indeed, there is now such a wealth of recorded matter featuring Glenn Gould on the market that even seasoned aficionados of Gould’s playing would be hard-pressed to identify everything.

To what extent do these recordings represent the versions originally made, with Gould working alongside his producer? What is the effect of re-mastering, and has it faithfully preserved the defining qualities of the original sound? What would Gould think of the variety of other matter, including live recordings, that is now available? ...What would he think of something like the Zenph company’s attempts to re-create the original sound of his playing through sophisticated software that takes into account his every movement and gesture, and “re-performs” it, eerily, on a piano that plays itself?

We can look at it both ways. It’s new technology – Gould would have loved it. And he surely would have loved, and been awed by, the amazing growth of the world’s interest in him and, above all, in his music – to be reaching listeners around the globe through new technology.

But, at the same time, there is no question that Gould loved his recordings, and there can be no doubt about the dedication that he brought to the process of creating them. He exercised control, as completely and comprehensively as he could, to make them works of art. Now, they are awash in a virtual universe of matter and material, afloat on an ocean of works both by and about him. What would he think of an environment where his original creations are becoming increasingly difficult to identify,  and where his recordings are interspersed with works not “made” by him, in this broader sense – although his playing appears in them? And what about those who worked with Gould, including Mr. Kazdin; how would they see these developments?

On September 11, 2015, Sony Classical officially released a remastered set of Gould’s “complete recordings.” The set of 81 CDs is accompanied by a 416 page book. Sony’s website for the project is available at “,” and it notes:
 “The first generation of Goulds’ [sic] recordings were [sic] available on magnetic tape in the Columbia archives, permitting us to ensure maximum sonic authenticity by applying the high-resolution Direct Stream Digital procedure (DSD). Moreover, in one of the most lavish remastering projects of all time, the listening conditions in the studio were so elaborate that the recordings could be heard there with less distortion and greater clarity than Gould himself was accustomed to when listening to his takes.”
These amazing developments raise fascinating questions about the art and artistry of musicians in the digital age. While there are few clear answers, there is an interesting legal dimension that could potentially help to clarify readers’ thoughts. In recent times, the law has come to recognize a moral right of integrity for musical performers. Performers’ moral rights made their first appearance in the WIPO Performances and Phonograms Treaty of 2002 (Article 5; provision first drafted in 1996). However, the right applies to performances; it does not recognize the unique features of a recorded performance, particularly in the sense in which Gould, and his producers, might have understood the term. At the same time, there is no moral right in sound recordings per se. Where a legacy as important as Gould’s is concerned, it is interesting to wonder whether there might be a new and valuable role for the moral right of integrity in the new world of recorded sound – a concept of integrity in recorded music that is totally novel, and adapted to the needs of the technological age (here and here).

If the time ever comes when it is difficult to find Gould’s “original” recordings, there is one place where we know that we can look: the spacecraft Voyager, where at least one of them, his Prelude and Fugue in C Major from Bach’s “Well-Tempered Clavier” (Book II), remains, for the time being, safely stowed. It is hurtling away from us through interstellar space, at unimaginable speed and already at an unimaginable distance, but it is there – as close to forever as anywhere can be.
Glenn Gould's Goldberg Variations recordings here.

Saturday, 3 October 2015

Greek court says that it doesn't matter whether the content you link to is lawful or unlawful

Thinking of linking? 
Did you think that the story with hyperlinks and copyright was over?

Of course it's not.

On the one hand, there is a new case currently pending before the Court of Justice of the European Union(CJEU): GS Media v Sanoma, C-160/15). This Dutch reference is seeking clarification as to how linking to content (leaked Playboy photographs in this case) freely accessible online, but which is communicated to the public without the consent of the copyright holder, should be qualified.

On the other hand, hyperlinking-loving ALAI (the Association Littéraire et Artistique Internationale) has recently released a new Report and Opinion [***WARNING***: this link may be infringing! Why? Keep reading] on a Berne-compatible reconciliation of hyperlinking and the communication to the public right on the internet  [for previous episodes, see hereherehere and here]. In its latest document, 

“ALAI reaffirms its view that deep links and framing links make the referenced work available to the public, and therefore, in the absence of an exception or limitation, would require authorization. These links offer the works to the public in such a way that the members of the public may access the works at a place and time chosen by them. Those who furnish these kinds of links make it possible to bring the works directly to the computer or device screens of the user, or to download them directly to the computer or device, without further intermediation. By contrast, a hyperlink to the home page of a website hosting the contested work is not itself a communication of a specific work to the public because what is communicated is the homepage, not directly the work. Another step, taken on the host site, is needed before the user accesses the work via the linking measure. In that case, there is a communication to the public, but solely by the linked-to site, not also by the linker.” 

Linking to unlawful content? OK
Circumventing a paywall? Not OK
So, by means of an example, this link would be likely an infringement of ALAI's copyright, whilst this might be OK.

In all this, national courts across the EU have been applying the principles set by the CJEU in Svensson [here and here], and its progeny [here and here].

From Katfriend Yannos Paramythiotis (Paramythiotis and Partners) comes the news that the Athens Court of First Instance has recently addressed copyright issues facing links under Greek law

Here's what Yannos writes:

"The website provides deep links to episodes of Greek TV series. All of the linked episodes are freely available to the public, in the sense  that access to them is not subject to any technical restrictions. However not all of them have been initially made available by their respective rights holders or with their authorisation. This means that while some of the links provided by re-direct users to the official websites or YouTube channels of the rights holders, others re-directed them to third-party websites, where the episodes have been uploaded and made available without the authorisation of relevant rights holders.

AEPI (Greek collecting society for composers and lyricists) first attempted unsuccessfully to convince the administrator of to obtain a licence for providing links to audiovisual works that included AEPI’s repertoire. It then filed criminal charges against him for copyright infringement. The administrator responded by filing a declaratory action against AEPI in the civil court for non-infringement of the copyright administered by AEPI. The latter was indeed a smart move: taking the dispute in front of the IP specialised chamber of the Athens Court increased his chances of success and also gave him the right to request that the criminal proceedings be stayed until the issuing of the civil court decision.    

The Athens multi-member Court of First Instance published its decision (5249/2014) on the action of the administrator, ruling that, by linking to the episodes that where already freely available to all internet users, he did not infringe copyright, regardless of the fact that some of the works where unlawfully communicated to the pubic by their uploader. 

A typical Playboy bunny kitten
The decision followed consideration of the CJEU decision in Svensson in regard to those links that re-directed users to episodes uploaded by the rights holders, ie links to official websites or YouTube channels. 

However the interesting part of the decision concerns the links to episodes that where uploaded and made available by third parties, ie without authorisation from relevant rights holders. 

The court referred to the BestWater decision, and concluded that the meaning of that CJEU decision is that the lawful or unlawful of the initial communication to the public is not of legal significance. 

To reach that conclusion the Athens Court took into consideration the fact that in the BestWater case the video that the defendants had framed within their website had been unlawfully uploaded on YouTube. According to the Greek court, circumvention of access restrictions (paywall or even free access only to registered members) should be the sole criterion to consider when determining whether copyright has been infringed by means of a hyperlink. 

The Court concluded that the administrator of could only be found liable, if he had assisted in the copyright infringement of the initial uploader. That would be the case, if for example he had arranged to share advertisement income with him. Such arrangement was however not proven. 

AEPI will most probably appeal [the outcome of the Playboy case will be particular significant in this case. This Kat suspects that, despite the BestWater order, the CJEU will say that it is not OK to link to content first communicated without the authorisation of the relevant rights holder]."

The BASMATI saga: General Court accommodates extended passing off within Community trade mark system

Image not found
Earlier this week Katfriend Nigel Urwin (Lee Bolton Monier-Williams) brought to the IPKat's attention news of a case (Tilda Riceland Private v OHMI - Siam Grains (BASMALI), T-136/14) that the General Court (GC) decided on 30 September last, and appears to have some relevant implications particularly as far as that peculiar creature of UK common law known as extended passing off is concerned.

Before going into the details of the decision, what is extended passing off?

Like the law on passing off, it is a legal construction of UK courts which Danckwerts J first acknowledged in 1960 in Bollinger SA v Costa Brava Wine [this resulted from an action aimed at preventing the defendants from calling their product 'Spanish champagne'], and has more recently excited the minds and hearts (and possibly also the hunger) of passing off enthusiasts with, for instance, the Greek Yoghurt case [here, here and here].

Unlike the classic form of passing off, its extended version has mainly to do with the fact that goodwill (one of the 3 requirements of the action, the other two being misrepresetation and damage) in a name that is distinctive of a particular class of goods is shared between a class or group of traders.

Going back to this recent GC decision, the background was as follows. 

What had happened before

In 2003 Siam Grains submitted an application to register the sign reproduced above as a Community trade mark (CTM) in Class 30 (long rice, more specifically) of the Nice Classification.

United Riceland opposed Siam's application, based on the earlier non-registered trade mark or the earlier sign BASMATI [this being a superior variety of Indian rice, characteristically light and fragrant when cooked], used in the course of trade in relation to rice.
Not quite basmati rice,
but Mildred is equally startled
United Riceland based its opposition on what is currently Article 8(4) of the Trade Mark Regulation, claiming that UK law would prevent, by means of an action for passing off, use [as well as registration, pursuant Article 5(4) of the Trade Marks Act 1994] of the mark applied for.
The OHIM Opposition Division rejected United Riceland's opposition, on grounds that the applicant had failed to prove that it had acquired the goodwill necessary to succeed in a passing off action in the UK.
In 2008 Tilda Riceland unsuccessfully appealed against the decision of the Opposition Division. Among other things the First Board of Appeal of OHIM found that the term BASMATI was not a trade mark or sign covered by proprietary rights, but simply the common designation of a variety of rice. In other words, BASMATI would be a generic term. The Board of Appeal also pointed out that the property protected by an action for passing off does not relate to the sign at issue but to the goodwill. The Board of Appeal concluded that the applicant had failed to show that it had ownership of the term BASMATI and that, accordingly, the opposition did not fulfil the condition provided for in the Trade Mark Regulation, relating to the existence of a proprietary right.
In 2012 the GC annulled the decision of the Board of Appeal, holding that the latter had failed to determine whether Tilda Riceland had acquired rights over BASMATI in accordance with UK law [Katpost here].
The case thus went back to OHIM, but the Fourth Board of Appeal also dismissed Tilda Riceland's appeal, on grounds that the applicant had failed to provide evidence that the name BASMATI had been used as a distinctive sign in the course of trade. In those circumstances, the Board of Appeal did not examine whether the applicant had acquired any rights over that sign according to UK law.
So what happened next? The decision was once again appealed before the GC, and Tilda Riceland submitted that in the UK BASMATI would be entitled to the same degree of protection as CHAMPAGNE or SWISS CHOCOLATE by means of an action for extended passing off.
extended passing off
What the GC said this time
Having recalled Article 5(4) of the Trade Marks Act 1994, the GC founds that (para 22):
"It ... follows from the decisions of the United Kingdom courts that a sign used to designate goods or services may have acquired a reputation on the market for the purposes of the law applicable to passing off, even though it is used by several traders in the course of business ... That ‘extended’ form of passing off, recognised by the United Kingdom courts, accordingly enables several traders to have rights over a sign which has acquired a reputation on the market".
Before annulling the contested decision, the Court reviewed the reasoning of the Fourth Board of Appeal, and concluded that the latter had erred in its interpretation of Article 8(4) of the Trade Mark Regulation. 
In particular the GC noted how Article 8(4) (para 29) "covers non-registered trade marks and any ‘[other] sign’ used in the course of trade. In that context, and in the absence of any indication to the contrary, the function of the use of the sign at issue may, in the light of the nature of that sign, lie not only in the identification by the relevant public of the commercial origin of the goods concerned, but also, inter alia, in the identification of their geographical origin and the special qualities inherent in them ... or of the characteristics on which their reputation is based".

Friday, 2 October 2015

Paywalls and Robin Hoods: the tale of Elsevier and

This Kat sometimes wonders whether every big copyright dispute these days seems to have a major political or philosophical subtext to it -- an example of which can be found below. From guest contributor Emma Perot comes this appraisal of a dispute (reported on TorrentFreak here) between a giant publisher of valuable and useful scholarly material on the one hand, and those who seek access to that same information on the other. Writes Emma:

In a Robin Hood-like manner, has been providing academic articles to researchers in the science and technology community free of charge since 2011. Now Elsevier, one of the largest academic publishers, is seeking to put an end to this open access model. 
Elsevier publishes over 2,000 journals and has an income of more than US$1 billion. Wielding its dominance in the research community, Elsevier charges US$30 to access an article. This is a staggering price when you consider how many articles are needed in order to undertake significant research. In the UK, universities generally pay subscriber fees so that students and staff can access journals. However, this is not the case for everyone. Alexandra Elbakyan is one researcher who could not access Elsevier’s journals because the University of Kazakhstan did not subscribe to the service. In order to progress with her research project, she found forums that facilitated the sharing of articles for free. Elbakyan realised that there were many others like herself who were jumping through hoops for their research. From this necessity sprang the creation of which collects journal articles and makes them available to the public without charge. 
The problem that SciHub is now facing is that the copyright of many of the articles they have published vests in Elsevier.  As stipulated by the terms and conditions of publication, authors assign their exclusive rights (s.106 U.S. Copyright Act 1976) to the publisher. As such, Elsevier is entitled to charge whatever access fee they desire, or to restrict access all together. By reproducing these articles without Elsevier’s permission, Sci-Hub is infringing Elsevier’s copyright and is likely to lose the case against it. Nonetheless, Elbakyan is insistent on fighting for continued open access as she believes that “Everyone should have access to knowledge regardless of their income or affiliation”.  
The author is sympathetic to Elbakyan’s stance and believes that her moral argument is compelling, if not viable under the current capitalist regime. The history of copyright protection reveals an idealistic beginning which better accords with Elbakyan’s philosophy. Copyright protection in the U.S has a foundation in s.8 of the U.S. Constitution which states that
“The Congress shall have power … to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
This clause underpins copyright with utilitarianism by providing an incentive of control to authors. The purpose of this control is to encourage (but not guarantee) the creation of products which will contribute to the growth of society. 
The main criticism of the incentive theory is that people create works even in the absence of intellectual property protection. This seems apparent on the facts before us as authors who publish with Elsevier surrender their copyright protection at the first possible opportunity. Even if the control incentive (there are many other forms of incentive such as reputation building, money, and pure interest) were necessary to encourage research, the utilitarian philosophy does not bode well in a capitalist society where publishers such as Elsevier operate to make a profit rather than to further the altruistic goal of disseminating information. 
Pay wall or ordinary wall?
They're all the same to Hubert
Different approaches can be taken to overcome the barriers presented by legal paywalls. One such approach is to publish in independent, open access journals. The problem with this is that researchers want the benefit of the prestige associated with well-established, peer-reviewed journals. While this may seem like an egotistical issue, researchers spend years trying to develop a reputation of excellence in order to be presented with more opportunities for advancement. Publishing in a well-respected journal ensures quality control standards have been met, thus validating the article. This is particularly so in the science world where research often requires funding to access lab facilities and equipment. 
Alternatively, researchers could boycott publishers such as Elsevier with the aim of reducing access fees. The Cost of Knowledge, which encourages publishing in open access journals, is currently doing this and has attracted over 15,000 signatures to date. Signatories agree not to publish or perform editorial work for Elsevier’s journals. The success of this boycott is dependent on attracting a large enough number of people to damage Elsevier’s profits and reputation, causing them to reduce fees to regain customers. 

While no solution is perfect, the author is open to ideas on how we can facilitate better access to research. The copyright dilemma is easily understood by those with a legal background, but to researchers such as Elbakyan, “…the idea that knowledge can be a private property of some commercial company sounds absolutely weird...” This statement misunderstands the idea/expression dichotomy as Elsevier does not actually own the knowledge but rather the expression of the knowledge in the form of the articles. However, with constrained public access, this dichotomy appears to be legal fiction as those with limited finances will continue to be deprived of knowledge or rely on the less than legal methods of Robin Hood researchers.  

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