Monday, 22 December 2014
Just before the United Kingdom generally shuts down and stops functioning for a few days, Mr Justice Arnold slipped out a decision that is positively anti-Arnoldian. It comes in at slightly less than 100 paragraphs, but retains the characteristic table of contents that is suggestive of a much longer judgment. The reason - well, it is a design case. Relating to ice cream vans, no less. The case is Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd & Ors  EWHC 4242 (Pat) (17 December 2014).
The design of the Mondial was protected by UK Registered Design No. 4,000,395. Despite the concession "Whitby entirely accepts that the design of the Mondial was not revolutionary, but an evolution of earlier Whitby ice cream van designs, and in particular a model called the Millennium", the judge found that the design was novel and had individual character. He considered a number of standard features of ice cream vans in the design corpus, and a number of differences between the Millennium and the registered design, before coming to this conclusion.
UK unregistered design right was found to subsist in a number of aspects of the design: 21 were initially pleaded, 2 were abandoned, all of which were held to be original. One of the remaining aspects was considered commonplace, and a further few designs were excluded by the must-fit/must match exclusions. The designs that valid design right thus subsisted in were found to be infringed - copying was not in the end denied, and the defendants' designs were "very similar".
There was also found to be trade mark infringement deriving from the fact that one of the copied panels had the words "WHITBY MORRISON" moulded onto it.
The largest single issue to be determined was not a validity or infringement matter, but the liability of the fourth defendant, Ghulam Rubani, father of Omar and Amer. All three maintained that he had had no involvement. The judge found, after consideration of the surrounding circumstances, that he had both primary and joint liability for all of the design infringements specifically mentioned in the judgment, but left for the enquiry into damages how many further infringements he may have participated in.
This Kat regrets that so few UK registered design cases result in a finding of infringement. This is a rather sad and messy tale (tail?), but he is at least heartened that it shows that registered designs do provide real protection.
Sunday, 21 December 2014
Jay-Z’s lawyers must be having a busy time, because celebrated rapper and record producer has been embroiled for quite some time in intellectual property law suits (see eg my earlier guest Katpost here). but this recent item has brought him some comfort. TufAmerica Inc v W B Music Corp 13-cv-7847(LAK), heard by the US District Court for the Southern District of New York had to decide whether Jay Z’s alleged sampling and use of the syllable “oh” in an audio recording and music video entitled Run This Town amounted to copyright infringement. Tracks at issue
TufAmerica acquired the rights to Hook and Sling in 1996. The Hook & Sling master begins with Eddie Bo calling out “Are ya ready?” A group responds “Yeah!” At 0:03, Bo calls or shouts “oh!” and then “one, two, a-one, two, three, four.” Percussive music then begins, followed by more lyrics and a guitar melody with bass support. TufAmerica claimed that Run This Town used an unlicensed sample from Eddie Bo’s 1969 funk composition Hook and Sling – Part 1, seeking back-royalties and damages. It would be pertinent to mention here that TufAmerica had previously sued Kanye West for sampling the same song.
The allegedly infringing work Run This Town bears very little and perhaps no similarity at all to Hook & Sling Part I . The melody and lyrics are entirely different. The lyrics do not contain the word “oh.” The alleged “sample” of that word, which appears in Jay-Z’s recording and video 42 separate times, features only in the background and in such a way as to be audible and aurally intelligible only to the most attentive and capable listener. Qualitative and quantitative significance In considering whether two works are substantially similar, the court had to examine whether the copying went to trivial or substantial elements of the original work, asking whether the copying is quantitatively and qualitatively sufficient to support the legal conclusion that infringement (actionable copying) has occurred.
Judge Lewis A. KaplanIndeed, “oh” could have been pmitted entirely without altering the essence of Hook & Sling Part I or Eddie Bo’s performance.
Substantial similarity test
In the US, the ‘substantial similarity’ test (and, in the UK, ‘substantial use’) is the touchstone for finding infringement of a musical work. First, and most importantly, the substantial similarity test in all cases considers only the qualitative and quantitative significance of the copied portion in relation to the plaintiff’s work as a whole. Its significance to the defendant’s work is irrelevant. The fact that the defendants allegedly sampled “oh” 42 times in Run This Town says absolutely nothing about the recording’s qualitative significance to Hook & Sling Part I or to Eddie Bo’s performance in the Hook & Sling Master. The court held that the alleged sampling of “oh” in Run This Town is sufficiently de minimis and is barely perceptible in the allegedly infringing works. Judge Kaplan explained that the plaintiff wrongly assumed that every copying of any part of another artist’s protected work is infringement. He quoted Judge Newman of the Second Circuit, who stated that factual copying and actionable copying are not coextensive concepts. Factual copying requires only the facts that the infringing work copies something from the copyright work, whereas actionable copying requires that the copying is quantitatively and qualitatively sufficient to support the legal conclusion that infringement has occurred.Here, therefore, the plaintiff had erroneously conflated factual and actionable copying.
The leading US decision on copyright infringement of sound recording in respect of music sampling is Bridgeport Music, Inc. v Dimension Films 410 F.3d 792 (6th Cir. 2005), in which the Sixth Circuit held that the unlicensed sampling of a sound recording constituted per se infringement and therefore from Funkadelic’s “Get Off Your Ass and Jam” was held to infringe the band’s copyright in NWA’s “100 Miles and Runnin’”. The present decision has however reached the opposite conclusion, finding that a sample with a duration of a fraction of a second was de minimis or trivial copying which does not constitute actionable infringement.
This decision should receive plaudit for slamming the door on “sample trolls” like TufAmerica that acquire recordings and then use music-parsing technology to seek out famous artists to sue. This decision should therefore give reason for many sampling artists to rejoice. But for how long will the celebrations last, at least for Jay-Z? It has now been reported that a Hungarian folk singer, Mitsou, has accusing Beyoncé and Jay Z of ripping off her old hit “Bajba, Bajba Pelem", this being a folk tune passed on to her by her grandmother.
Katpat to Chris Torrero for providing the original link
Song without words here
Friday, 19 December 2014
|Meow-Meow Explains: A Parody Must Be Funny!|
The CJEU held that the concept of parody is an autonomous concept of EU law and must be interpreted uniformly throughout the European Union. For the CJEU, a parody’s essential characteristics are “to evoke an existing work, while being noticeably different from it” and “to constitute an expression of humour and mockery.”
Managing Intellectual Property has just published an article containing a series of questions and answers, put by Managing Editor James Nurton to EPO President Benoit Battistelli and Chairman of the Administrative Council, Jesper Kongstad.
The questions relate to the recent events leading up to and following the AC meeting covered at length on this blog, and cover topics such as staff unrest, union representation, the independence of the Boards of Appeal, and the allegations that a "reign of terror" exists. The answers provide an insight into the response of those at the top of the EPO management to the criticisms levelled at the organisation.
In the spirit of the current festive season and in view of its importance, Managing IP has made the article free to view. In the spirit of brevity, Merpel will refrain from comment at this time and leave it to her readers to do so.
[on which see earlier Katposts here and here], there is more bad news to come -- though for the efficient and the tidy-minded this news is more likely to be welcomed. From 1 January 2015, the numbering of European Union legal acts will change and a new method attributing numbers to documents published in the L series of the Official Journal will harmonise and simplify the divergent previous practices. Better still, EU legal acts will bear unique, sequential numbers. For a fuller explanation, just click here for the information provided by the EU Publications Office, or here to complain to the EUR-Lex Helpdesk ...
this guest post on the 1709 Blog. Meanwhile, on the PatLit blog, David Berry reports on yet another patent case that the US Supreme Court is happy to hear, Kimble v Marvel Enterprises, which will revisit the rule in Brulotte v Thys and the endearing practice of extracting royalty payments from a licensee after the patent has expired (this patent involves a Spiderman toy, if you were wondering). Finally Class 46 tells us that the Trilogue over the reform of European trade mark law has taken an early Christmas break and won't be reconvening till January ...
Books for sale! The IPKat's friends at Euromoney (publisher of Managing Intellectual Property magazine) are moving out of their cosy Blackfriars offices to new premises off London's historical Fleet Street. In consequence, explains Katfriend and MIP editor James Nurton:
"We have to clear our shelves so we've decided to auction some of the IP books we have to raise money for our charity partner AMREF. Some of the books are old editions and/or review copies but we thought they might be of interest to some lawyers/ academics/ students. Anything you can do to spread the word would be much appreciated -- we have to shift them by 24 December and they should all be listed here on eBay".The books are arranged in four lots. The buyer must collect them from 69 Carter Lane, or James will hand deliver them locally in return for a cup of tea.
lovely little event to commemorate the 20th anniversary of Biogen v Medeva, one of the most influential patent law decisions to have been handed down by the UK's House of Lords (now rebranded the Supreme Court, but we still know who they are ...). Alas, this event was scuppered by industrial inaction on the part of London Underground transport workers -- but the good news is that it has been rescheduled for the same venue on Thursday 5 February (see link above). It's free but you still have to email Tim Coppen here to tell him that you'd like to attend.
Fashion+IP (founded by Rebecca Field, dedicated to IP in the fashion sector and now with getting on for 3,400 members), Retail+IP (dedicated to IP in the retail sector) Automotives+IP (dedicated to IP in the automotive sector) All are quite well policed to avoid spam postings and this Kat, who is a long-term member of all three, has frequently found them very useful).
First a word about “externalities”. As developed by the economists, the notion refers to either “a cost or benefit that affects a party who did not choose to incur that cost or benefit.” As further observed by Wikipedia,
“unregulated markets in goods or services with significant externalities generate prices that do not reflect the full social cost or benefit of their transactions: such markets are therefore inefficient.”The example often brought is air pollution, where the damage caused to people, crops and buildings was for a long time not taken into account in assessing the economic contribution of manufacturing. But negative externalities are not limited to smoke stacks and traditional economic activity.
A graphic example of externalities in the context of innovation was well described in an Associated Press piece that appeared earlier this week. Entitled “LA Traffic is Getting Worse and People Are Blaming the Shortcut App Waze”. Written by John Rodgers, the article recounts how mass use by drivers of the Waze smartphone app for finding the most efficient route to one’s destination is apparently responsible for severe traffic congestion on various side streets in the Los Angeles area that lie along one’s particular Waze-directed car route. For those Kat readers who may not be familiar with Waze, it is an Israeli-developed GPS-based geographical navigation application program for smartphones with GPS support and display screens which provides turn-by-turn information and user-submitted travel times and route details, downloading location-dependent information over the mobile telephone network. Most notable is that “Waze differs from traditional GPS navigation software as it is a community-driven application which gathers some complementary map data and other traffic information from users.” In the words of the AP article, Waze has become “explosively popular” and it is said to be the leading technology of its type.
The problem is that while Waze may succeed in reducing one’s commute, too often the recommended route appears to be taking drivers along previously sleepy LA back roads, much to the anger of local residents, who now confront traffic jams abutting their front yard. The result is described as “a parade of exhaust-belching, driveway-blocking, bumper-to-bumper cars.” A game of cat and mouse has ensued. On the one hand, some local residents have tried to tilt the technology by reporting false accidents. In reply, a Waze spokesperson simply observed that the technology “can’t be outsmarted.” Given the persistence of neighbourhood traffic jams, it would seem that Waze still has the upper hand. What seems undeniable is that one driver’s personal Waze-directed victory is, in the aggregate, the cause of a collective loss of time for neighbourhood drivers suddenly facing traffic jams. In other words, the wild success of Waze has brought about a negative externality for these unfortunate Angelinos. Never was the characterization of negative externalities, by such giants as Milton Friedman and Friedrich Hayek, as “neighbourhood effects”, more spot-on.
What are we to make of this situation? One cannot seriously entertain the suggestion that Waze be shut down. After all, the technology is not breaking the law even as it has improved the lives of countless drivers as they shorten their daily commute to work. In this sense, Waze is not Aereo, which also brought low-priced contents to home viewers, but was ultimately found to be in violation of the copyright laws. Solutions to at least reduce the cost of the negative externalities associated with the use of Waze are being pondered, such as speed bumps, four-way stop signs, and even a reduction in the number of lanes (a so-called “road diet”), but these measures must be thoroughly studied. More generally, the saga of Waze and the side streets of LA points to the fact that our conversation about innovation tends to ignore the cost side of the equation. As such, it can be argued that, until these externalities are adequately accounted for, innovators may be overcompensated for their developments at the expense of the cost being borne more generally by the broader society.
More on Waze here and here.
Thursday, 18 December 2014
|It's Katwards day!|
In this Kat's opinion, surely PRCA (the case about the lawfulness of internet browsing) did not have the same importance as Svensson, notably because at the time of referring it to the CJEU [here], the UK Supreme Court already appeared (rightly) confident to say that, no, you don't need permission to browse the internet.
|Mr Justice Arnold|
|You "purchased" this ebook and |
- thank goodnees -
you have found your cat:
can you resell the ebook?
|If only some copyright commentators |
were this cute and polite!
It is the despicable partisanship employed in the arguments advanced by a number of vocal characters in the copyright debate. Really, sometimes you attend events aimed at copyright professionals and you hear arguments presented in such gross bad faith, that you wonder whether these, rather than attempts to react to their counterparts' arguments, are plain attempts to offend human intelligence.
|A different Interview, |
still starring James Franco
As readers will probably know already, this film is about a fictional plot to kill North Korean supreme leader Kim Jong-un.
Instead of focusing so much on cinema screening or waiting for a hypothetical Netflix deal, Sony could do better and make the film available online for people to watch in the safety of their homes.