Non Parlo Inglese - Australian High Court Takes on Foreign Words as Trademarks

As the world's become evermore global, the mixing of different cultures, conventions and languages is completely inevitable. With this intermingling comes variety and novelty in expression, yet another perspective in this is added confusion and the potential for a well-known foreign brand to be completely overlooked or missed in these new markets with their introduction through immigrants or other people who wish to have access to these goods or services, especially if the mark in question is in a language not commonly used in that new country. This in mind, as trademarks have to distinguish specific goods or services, can a foreign mark achieve this and be considered a trademark, or will the language barrier potentially deter their use in a country? Luckily this matter was recently brought to the Australian High Court, which ultimately decided the fate of foreign marks in Australia, and whether they can inherently distinguish the goods or services provided.

The case in question was Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, which dealt with the ever-loved subject matter of coffee. The claim dealt with two registered trademarks held by Cantarella Bros, an Italian coffee company: Australian Trademark 829098 "ORO" ('gold' in Italian) and 878231 "CINQUE STELLE" ('five stars' in Italian). Modena, an importer of Italian coffee, used similar marks indicating their coffee products, including both of the marks in question, using them in conjunction with their coffee brands as marks of quality.  Modena argued, after being sued for trademark infringement by Cantarella Bros, that the marks are merely signs of quality and cannot inherently distinguish Cantarella's products from others, and therefore be valid trademarks.

The question hinged largely on the Australian Trade Marks Act 1995, more specifically section 41, under which a trademark has to be "...inherently adapted to distinguish the designated goods ...from the goods ...of other persons". If the mark does not do so, due to it being merely descriptive for example, it will be deemed an invalid mark. The High Court saw that the question which needs to be answered, basing their decision quite heavily on UK precedent, is "...an enquiry into the word's ordinary signification and whether or not it has acquired a secondary meaning". To put things in simpler terms, it is an assessment of what the word means ordinarily, and whether that particular meaning has acquired a secondary meaning, indicating a specific origin or quality of product in relation to a brand of goods or services, even if its ordinary meaning can be said to be descriptive or generic.

After a discussion of relevant precedent, the court formulated its final question regarding foreign marks:

Other languages can be very confusing

"The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the "ordinary signification" of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a "direct reference" to the relevant goods (prima facie not registrable) or makes a "covert and skilful allusion" to the relevant goods (prima facie registrable). When the "other traders" test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, "inherent adaption to distinguish" requires examination of the word itself, in the context of its proposed application to particular goods in Australia".

Effectively what the court is saying, is that the mark has to be examined so it does not impair its use unduly from other traders in a similar field (for example, trademarking the word 'fresh' in relation to bubblegum), and the end assessment is whether the public who will buy and consume that product or service will see a connection between that good or service and the provider. The reference to the goods or services has to be covert and skilful, and not a purely direct usage of that word.

Justices French, Hayne, Crennan and Kiefel, in the majority's decision, saw that, on the face of the evidence given that the marks have are not merely descriptive, and Cantarelle got to keep their trademarks. The general public were not seen as understanding the words sufficiently commonly as to convey a signature of quality, rather than an indication of origin, as there are few people in Australia who speak Italian.

To this writer the decision of the Court is an odd one, especially since the marks are, by their definition in Italian, purely descriptive, with the added issue that the marks have been commonly used even before the marks' registration. Nevertheless, the evidence produced was not enough to establish a case for Modena and the common understanding of these words, and it is hard to argue against that.

Source: Lexology

Retrospective - Computer Software and Copyright

In a world where everything is becoming more and more digital and reliant on computers to handle most tedious or complex tasks, software is king; it is what executes these tasks and makes things easier to do on the aforementioned devices. With the software business booming, more and more value can be placed on having the right software for the right task in the highly competitive space, and with that the desire to protect your product. Even in the wake of the Alice decision some time ago (discussed on this very blog here and here) the protectability of software still remains, albeit quite hindered. In light of the more difficult protectability of software through patents, copyright shines brighter and as a possible alternative, yet poses a question which might be less glaringly obvious to most: is software protected under copyright?

A fairly recent case in the UK Court of Appeals, SAS Institute Inc v World Programming Ltd, attempted to take on this issue and decide once and for all whether copyright does afford protection to software and its underlying code. The SAS Institute is a software development company well-known for its analytical software, often referred to as the SAS System (or just plainly SAS). A core component of the SAS System is SAS Base; a piece of software which allows the user to easily write and run scripts to analyze and use data. The scripts themselves were written in a programming language developed by SAS called SAS Language. Finally, the SAS Base software can be extended upon by three additional components: SAS/ACCESS, SAS/GRAPH and SAS/STAT respectively. In addition to the software SAS have also written manuals for the use of its software. The SAS environment was quite tightly controlled, and customers had no secondary options which to use in the execution of their developed scripts for the platform (the SAS Language only functioned through SAS' System). Their competitor, World Programming, sought to create an alternative piece of software capable of utilizing the SAS Language, so that any programs written in the Language can be used in both their suite and SAS' - the end-result being a program called the World Programming System. The software endeavored to mimic SAS' System as closely as possible; however they had not accessed SAS' source code in their development, merely copying the outputs and inputs of the System. Due to this, SAS sued WPL, asserting that the company had copied its manuals; through the copying of the manuals they had infringed SAS' copyright in their extension components; WPL had infringed its copyright in a version of its System, the Learning Edition, and breached its terms in its misuse; and WPL had infringed SAS' copyright in its manuals after creating its own version called the WPL Manual.

Being 'creative' in programming can be difficult

Confusion in terms of acronyms aside, the court was therefore faced with the ultimate determination of whether copyright exists in SAS' software, and whether WPL had infringed that copyright. Under EU legislation, more specifically Directive 91/250/EEC (now governed by Directive 2009/24/EC with no substantive differences), computer programs are wholly protected by copyright as a form of expression; however the underlying principles of those programs are not. To put this into more simple terms, the code executing a specific function in its particular expression can be protected, but the idea of that execution is not, allowing anyone to create a program doing the same thing, so long as the expression of that execution is not the same as other expressions of it (i.e. different code, same result). Computer programs have since been included in the UK Copyright, Designs and Patents Act 1988, under section 3.

To look at things further, the scope of what is protectable under the above Directives was left quite open, but was subsequently added to in the case of Infopaq International v Danske Dagblades Forening, where the European Court of Justice saw that copyright protects an author's "...intellectual creation" (the wording used in the Berne Convention), potentially encompassing programs quite readily if it can be seen as such a work - supplanting this definition in the Directive's interpretation. What is important in this term's application, in the Court's judgment, lies within whether a computer program can be seen as an 'intellectual creation', and in assessing this the court must decide that if the expression within the computer program is purely a technical one (i.e. derived from necessity for things to work right), the work cannot be seen as an intellectual creation under this definition. To put things in more simplistic terms: "...the author [has to be] able to express his creative abilities in the production of the work by making free and creative choices". If a programmer, in the creation of a specific application, can express his or her creativity and choices in how the program works, it can be protected by copyright. Even if the program has very specific functionality, or combines several different functional approaches to the execution of its desired task, the law does not protect it under copyright. In the court's view the copyrightability of functions or functionality, no matter how well used or combined, would be tantamount to the copyrightability of an idea, and therefore is not within the remit of copyright.

Finally, the court had to assess whether the manuals created by SAS are protected as works, and whether WPL had infringed those manuals' copyright protection.Their content was largely informative, and therefore would encompass most of the 'ideas' expressed in the aforementioned programs, or as expressed by Lord Justice Lewison: "...what counts as an idea, for the purposes of a computer program, also counts as an idea for the purposes of a manual". With this in mind, should the manual express the idea in a way which can be seen as protectable, it can fall within the remit of the law. His Lordship dismissed both claims on the manuals, effectively dismissing their protection due to a lack of any protectable expression, as they merely described the function of the programs without adding anything original on the author's part.

In the end SAS lost their appeal and the Court of Appeal closed the door on the copyright protection for programs, at least for the most part. The case was appealed to the UK Supreme Court, however leave was not given, solidifying the law's position through the Court of Appeal's judgment. The position presented in the case differs drastically to what has been discussed in the United States, where programs can be protected by copyright. Nevertheless the case is without a question an important milestone in relation to copyright and computer software, and this writer for one believes it will stay as such for a while.

Words in Action - Trademarks as Verbs

This writer, for one, will fully admit to often using very well-known brands as the descriptive term for all such items, for example calling all plasters Band-Aids and all cotton-tipped plastic cleaning things (a technical term, undoubtedly) as Q-Tips, regardless of all of those terms having been, or still being, registered trademarks. While my misstep in potentially diluting these valuable brands in using them in this way can be seen as a small error, or even wholly unnoticeable in the grand scheme of things, it still brings light to an issue all trademark holders face; the potential of losing your mark to genericization. While this topic has been discussed on this very blog before quite extensively, the use of trademarks as verbs specifically has been left a bit in the dark, yet is illustrative of a newer problem technology companies especially will face. Who hasn't said they will 'Google' something, or if they will 'Facebook' their aunt Mary; a grave threat the holders of those particular marks will lose sleep over. One such giant facing a recent challenge to its widely recognized trademark is Google, which posed an interesting question to all trademark holders.

The case in question is Elliot v Google Inc, where the claimant, David Elliot, registered over 760 different domain names combining the word 'Google' and another brand or a famous person, for example googledisney.com, or with generic terms such as googletvnews.com. As you might have guessed, Google has trademarked the term 'Google' in a number of variants; two of which were at issue in the case: US trademark 2884502 and 2806075. These two marks encompass the word 'Google' in several categories, such as web indexes and computer software - promptly leading to Google pursuing the domain names through the Uniform Domain-Name Dispute-Resolution Process (UDRP). In his defense Mr. Elliot asserted that the term 'Google' had become generic and could therefore be used by him (and others) without infringing on Google's marks. The domain names Mr. Elliot had registered were transferred to Google in the UDRP, which prompted Mr. Elliot to pursue the matter further in the US District Court of Arizona.

What Mr. Elliot's argument largely states, and what the court had to assess, was whether the term 'Google' had effectively become ubiquitous with the verb 'googling' - defined by the Oxford Dictionary as "[s]earch[ing] for information about (someone or something) on the Internet using the search engine Google" - rendering it generic rather than distinctive as to Google and/or Google's services. As trademarks need to specifically distinguish the origin of goods or services, becoming a generic verb can be the mark's end.

Stacy was unnerved after 'googling' herself

What the court had to determine was whether the mark's "...primary significance" was that of distinguishing the goods or services from other similar ones. The test was phrased well by Justice Brandeis in Kellogg v National Biscuit: "...the primary significance of the term in the minds of the consuming public is not the product but the producer". This is highly important, as if a product is named as the major brand (i.e. if you refer to all plasters as 'Band-Aids') in general terms, the mark loses its status as the seal of origin for that brand, or as stated by Justice O'Scannlain in Filipino Yellow Pages: "...if the primary significance of the trademark is to describe the type of product rather than the producer, the trademark is a generic term and cannot be a valid trademark".

Using a trademark as a verb does not automatically change the primary significance of that mark, and a mark, such as 'Google', can be used for both the designation of an origin for goods and services and as a term describing the searching of information via the search engine - noted by the court in the case. This synecdochian dual-functionality of a mark is wholly valid; however, should the perception of the public change drastically as to the meaning of the word, i.e. if most people would believe and/or use the term "to google" to mean using any search engine online to seek information, then the mark can be determined to be compromised, even with this accepted dual-functionality. This was phrased well by Justice McNamee (the name seems more than appropriate considering the case's subject matter): "It is thus contrary to both the letter and spirit of trademark law to strip a mark of legal protection solely because the mark—cultivated by diligent marketing, enforcement, and quality control—has become so strong and widespread that the public adopts the mark to describe that act of using the class of products or services to which the mark belongs". Arguably this argument holds well, and this writer for one agrees wholeheartedly with the court's view, as the stripping of a mark's distinctive nature the moment it becomes even partially descriptive of a class of products or services would run contrary to the value given by trademarks to brands and their place in a given class.

In the end the action failed, as Mr. Elliot failed to demonstrate how the mark 'Google' had turned generic, as the public still strongly perceived it as part and parcel to the company, not just internet search engines or internet searching at large. The case does bring light an important issue, and often something that the general public will not think about; how our daily use of terminology, especially trademarks, can alter their value. Some examples include 'Xerox' (become a term for all photocopying) and 'Thermos' (used as a term for all heat-retaining drinks containers), which have become generic due to their use as the identifying term in a given class. Due to this the International Trademark Association has even issued guidelines on the proper use of trademarks, which most of us will find potentially excessive, yet is quite important. As can be seen, trademarks are a dangerous beast, especially when they become famous to the point of ubiquity; however for most this risk is quite worth it.

Source: JDSupra

Genetic Patents Saga Continues - Next Stop, Canada

After the Myriad Genetics saga has been experienced on both sides of the world, in the US and Australia (both discussed on this very blog quite extensively: US here and here; Australia here), the fight seemed to be over and the decision, at least for now, settled. With the Australian case having been appealed to the High Court of Australia, most IP practitioners and academics awaited the conclusion of the patent's road in Australia, a new challenge in the field of genetic patents has begun in the colder of the North American powerhouses; Canada. The Myriad Genetics patents have not been challenged in Canada, although the Provinces themselves have rejected them and refuse to enforce the patents, and this case would be an important stepping stone in completely answering the question of the patentability of genetic material, at least in North America.

The challenge is being mounted by Children's Hospital of Eastern Ontario (more commonly known as CHEO), however taking the fight to (finally) someone else but Myriad Genetics. The question relates to patents covering the testing and/or assessment of Long QT Syndrome, which, as explained by the Mayo Clinic: "...is a heart rhythm disorder that can potentially cause fast, chaotic heartbeats. These rapid heartbeats may trigger a sudden fainting spell or seizure. In some cases, your heart may beat erratically for so long that it can cause sudden death". One does not catch Long QT, as it is a genetic disorder, which requires identification prior to treatment. CHEO were prevented from conducting their own genetic analyses on-site, as the University of Utah holds the patents for the testing of this genetic disorder, much akin to the Myriad Genetic Patent (Canadian patents 2240737, 2336236, 2337491, 2369812 and 2416545 respectively). Due to the mandatory outside testing at the University of Utah, CHEO's costs to diagnose this disorder are nearly double when compared to internal testing, resulting in increased costs and potentially even diagnosis times; again, very similar to the problems with the Myriad Genetics case.

The Canadian Patent Act reflects the US legislation quite heavily in relation to patentable subject matter. Under section 2 of the Canadian Patents Act an 'invention' is defined as "...any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter". A nearly identical definition is set out in 35 USC section 101 in the United States. The relevance of this is very important, as the Supreme Court's rejection of genetic patents in the US will undoubtedly influence the Canadian courts going forward.

Even genes have it tough under today's beauty standards (Source: Dan Collins)

Under the Canadian Patents Act section 27 both scientific methods and abstract theorems are not patentable, although an application of such can potentially be patented. One has to note the omission of an express exclusion of naturally occurring subject matter, which is included in many other jurisdictions. The argument raised by CHEO therefore hangs on whether a naturally occurring phenomena can be patented under section 2, if it is deemed to be a sufficiently marked departure from the naturally occurring thing itself. One has to wonder why the Canadian legislature has left this exclusion out of the law, as it is very much the standard all over the common law.

As for potentially applicable case law the pickings are quite slim. The case of Harvard College v Canada (Commissioner of Patents), the Canadian Supreme Court saw that, even though section 2 is very broad in its wording, it does not include "....anything under the sun that is made by man", and can be therefore limited in its scope. The Harvard case effectively dismissed the patentability of 'higher lifeforms', which has been argued to encompass plants as well as animals, such as the genetically modified mice in question in the case itself, it still remains a useful examination of some of the wording the Federal Court will face. Whether one can include genes in the term 'higher lifeforms' remains to be seen, and in this writer's opinion, it will be a tough argument to press, but a possible one due to the complexity and higher level of function which genes serve in the human body. In Monsanto Canada Inc. v Schmeiser the Supreme Court looked at patents relating to genetically modified crops. The case largely focused on infringement, rather than the patentability of genetically modified crops, but as the Supreme Court did briefly bring the fact to light, it still might be used as a starting point to defend the patentability of other genes; even human genes.

This writer for one will await the emergence of this case in the courts, and wonders if the decision will be different to that of the US Supreme Court. Arguably the Canadian courts should hold that patents are not eligible for patent protection; however, as recently seen in the Full Federal Court of Australia as mentioned above, things are not always as straightforward as you might think. Yet, due to the sheer similarities of the Canadian and US law, and the significant influence of its North American brethren in the South, one can imagine things going CHEO's way on this one. As the case was filed in the very early parts of November a judgment will be a long ways away, but this will be one to look forward to in 2015.

Source: Ars Technica

One Taste to Rule Them All - Can You Trademark a Flavor?

Tastes and preferences are as varied and as complex as there are people, yet some distinct combinations truly are above everything else (should you take this writer's word as gospel - which you shouldn't): basil and tomato; chocolate and chili; milk and tea - the list goes on and on. With that in mind, a distinct and successful flavor combination can be the ticket to prosperity for a lot of restaurants or food-related businesses, and locking that combination down quite valuable as well. Although recipes were discussed on this blog in more depth not too long ago, a recent case has emerged dealing with the question that's on everyone's lips: can you trademark a flavor?

The case involving the flavor-fight was New York Pizzeria Inc. v Syal, in which the subject matter near-and-dear to many New Yorkers' hearts (i.e. arteries), pizza, was disputed. New York Pizzeria, a franchising company for pizzerias, brought this lawsuit against their former employee, Adrian Hembree (although against his alleged co-conspirator, Ravinder Syal), who had acted as the company's Vice-President and as a franchisee in its restaurant business. Mr. Hembree's term of employment was ended, and he subsequently went on to found a competing chain of restaurants; Gina's Italian Kitchen. Mr. Hembree had brought a lawsuit against NYPI for an alleged breach of his termination agreement, after which NYPI took on Mr. Hembree for alleged acquisition and transference of internal documents and recipes to Gina's in order to create a knock-off restaurant. Further, NYPI asserted that Mr. Hembree had gained access to NYPI's internal network through another franchisee's account, passing the details onto Mr. Syal, who then downloaded internal documents from said network. The case discussed the matter quite broadly, as many different counts were alleged by NYPI, of which only a few relate to the question posed above.

The beef of the intellectual property argument by NYPI is brought under 15 USC section 1125, as NYPI claim that the defendant infringed its trademark in the flavor of its food, and the trade dress of its goods as to the food's plating. Should a flavor be considered a possible trademark, under section 1125 Mr. Syal could face a civil action for the infringement of that trademark or its possible dilution.

Great flavors can lead to unpleasant results, no matter how delicious

As was seen in Qualitex v Jacobson Products, discussed by Justice Costa in the case at hand, a trademark can potentially be "...almost anything at all that is capable of carrying meaning" - even a flavor, at least prima facie, as long as it indicates a source for the goods: "[T]he essence of a protected mark is its capacity to distinguish a product and identify its source". If a flavor can be so distinct and so unique that it indicates an origin which is undoubtedly a single restaurant or creator, you could argue it is within the remit of trademark protection in the US. Realistically this would be very unlikely, but entertains an interesting thought. Arguably flavors would never reach the requisite secondary meaning, i.e. an impression in the minds of the public as to the origin of a specific good, due to the very vague and hard to pin-point nature of flavors as a whole. Several pizza sauces, for example, even if very different in their composition, will all still taste very similar, albeit with small (or large) differences to them, thus not carrying much of an indication as to the sauce's origin restaurant.

The final nail in the coffin of flavor trademarks is the inability to trademark something which is purely functional. Functionality was seen in Qualitex, to encompass "...[which] is essential to the use or purpose of the article or if it affects the cost or quality of the article,' that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage". Limiting the usability of flavor combinations, especially iconic ones such as pizza sauce, would clearly hinder competition, or even extinguish it entirely within the field of pizza making. As said, this was put to rest in Re N.V. Organon, where the US Trademark Trial and Appeal Board saw that "[flavoring] performs a utilitarian function that cannot be monopolized without hindering competition". In the end Justice Costa dismissed the argument of flavor trademarks.

Justice Costa didn't discuss the plating issue in much depth, as arguing a specific plating as trade dress is very unorthodox, but entertained the thought nonetheless. NYPI claimed that its plating of its baked ziti, eggplant Parmesan and chicken Parmesan carried a distinctive look, warranting protection. NYPI failed to express what they were protecting in the plating of the dishes, and how they were infringed, failing their argument quite early on: "[i]n the trade dress context, a plaintiff must articulate the elements that comprise its protected trade dress in order for the court to evaluate the plausibility of its claim". In the end, as said above, the claim failed due to a lack of demonstration on NYPI's part, but Justice Costa thought the argument could have warranted more discussion: "...NYPI knows how it plates its food, and it could have easily identified what is distinctive about the plating that might warrant trade dress protection".

Similar views have been expressed here in the UK, with an application for a "Taste of Artificial Strawberries" failing to pass the threshold of trademarkability due to its lack of distinctiveness. This echoes US precedent, and arguably would be the right decision in light of the law and public interest in the non-restriction of flavors in the marketplace. In this writer's opinion the future of flavor trademarks seems very grim, but as a connoisseur of all things culinary, I am quite glad that the world of food isn't shackled by commercial interests; at least not unduly.

Source: JDSupra

Generic Stuff - Food Packaging and Intellectual Property Law

Remembering back fondly to ones childhood often elicits images of Saturday mornings, watching cartoons and eating cereal poured from colorful cereal boxes. Yet a shadows of this memory is when your parents buy the generic brand, often simply grabbing something from a store shelf thinking it's the brand that their child loves, missing the folly in their ignorance and disappointing their young ones with less flavorful alternatives to their desired sugary morning treats. Thinking back, the disappointment probably was not as palpable as my memory serves me, but this illustrates a point of contention in intellectual property law; how close can you brand your foodstuffs as a generic brand when compared to more popular variants of a given food item? The goodwill and reputation, which many food manufacturers strive for for years, even decades, often seems easily exploited in the sphere of food packaging, yet, at least prima facie, their goodwill and make-up should potentially be well within the sphere of intellectual property law, and therefore quite protectable. The extent of this protection merits further discussion, especially in today's highly competitive world within the shopping jungle of grocery stores.

What prompted this writer's interest in this topic was an article published on the IPKat (originally brought up in an article on Yahoo! News), which discussed the seemingly blatant copying of popular brand items by Aldi in their store brand equivalents, especially in the remit of chips sold in a tubular container, and the mentioned use of similar packaging in cereals. Could Aldi's practices infringe on the brands' rights in the UK or abroad?

Some protection could be offered by copyright, should the packaging contain a work which can be categorized as protectable under the subject matter. Images on packaging, or even more stylistic or intricate designs, could potentially be considered an artistic work under the Copyright, Designs and Patents Act 1988 (and similar laws abroad), and even the writing used on the box (stories, challenges and other items on the back for example). The image has to have no artistic merit to it for it to be protected, but still has to be considered original. Although not the primary avenue for protecting packaging, it can still address the issue at a much shallower level. Arguably most goods will not infringe on copyright, even if they resemble the name brand goods quite a lot, as you would have to make a copy of the work (in simplistic terms), and a mere imitation might not be enough to argue copyright infringement, as a box for foodstuffs would be a long-shot to argue as a form of expression worth protecting.

Trademarks, under the Trademarks Act 1994 (and other similar provisions), are the more 'obvious' choice when it comes to protecting your brands, and certain foodstuffs are covered under the subject matter such as the name "Pringles" or "Froot Loops". Primarily trademarks only assist in the protection of names and logos (such as Captain Rik), and as such are much weaker when the logo, name or other trademark isn't directly copied or a similar variant used. Clearly, should Aldi (or any other business) deviate from those, they would arguably be in the clear.

The darker side of store brands: underpaid mascots

As for design rights, unregistered designs under the Copyright, Designs and Patents Act 1988  protect the shape or configuration of a good; i.e. how it looks like form wise, and not in terms of it's 'get-up'. This would be hard for Aldi (or others) to infringe unless a good has a very specific shape to it, such as a triangle box in stead of the typical box design. Under the registered designs regime through the Registered Designs Act 1949, a design can be registered should the appearance in part or as a whole have a specific look to it, including colors, shapes and even textures. The design has to have individual character, which can be simply said to entail something which is unique to that product, and isn't too generic, while also having to be novel. Arguably this is the hurdle where most foodstuff packaging stumbles in registered designs, as it would be nearly impossible to say that merely a certain color scheme or variation thereof would be novel and individual to that particular item. This in mind it is very possible for generic brands to imitate the look of a cereal box, even if the color scheme would be very identifiable for that particular brand.

In the US there is the concept of what is often referred to as 'trade dress', which is protected under 15 USC section 1125, making it quite usable in this instance, although not in a UK context. Under the Act a product can infringe upon the trade dress of another product under certain circumstances: "[If it] is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or... in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities". Arguably this would be very hard to prove, at least prima facie, but should a brand take the time and effort to compile sufficient evidence as to likely confusion and detriment on their end, trade dress could be a useful tool in the area of consumer goods. In the UK an avenue functioning much akin to the US provision above would be passing off (discussed more in depth on this very blog here); however the threshold of proof required is very hard to overcome, especially in an instance where the passing off isn't obvious and clear.

As one can see the world of consumer goods and foodstuffs is a treacherous and difficult area of law in which to wage your battles, and arguably most brand owners will not benefit in fighting this fight. Superior quality, goodwill and marketing will serve a better purpose than paying your lawyers to take on Aldi for its generic items; however as a legal professional it is a bit of a no-no to admit this. One can still appreciate the impact of generic goods and confusion related to them, with studies indicating that consumers are very likely to buy store brand products when they look like the name brand item, and a relatively high percentage of purchases having been mistakes due to the similarities. In the end this would be a matter which would have to be addressed by the legislature, but in a competitive world having choice and a cheaper option can still be good for business and the consumer - just not necessarily the brand owner.

Fake Goods and the Internet - ISPs Face Trademarks

Counterfeit products are big business. Some estimates have put the sale of counterfeit items at a billion dollars in 2013, and anyone who has traveled around mainland Europe has probably seen people sell "authentic" designer bags off pieces of carpet on the street (and who doesn't like purchasing their luxury goods in the great outdoors). The only issue with selling blatantly on the street is the sheer visibility of your transactions, with the added issue of a very limited quantity of items for sale. The more genius members of the business have since moved onto the World Wide Web, pushing their goods to the willing masses on the great waves of the Internet. The law hasn't fully adapted to this change, with a clear difference in the protection of so-called intangible counterfeit goods (piracy etc.) and more physical objects and their intangible attributes such as trademarks. Amidst this uncertainty the protectability of trademarks in this space was brought up in the English courts, and has since been taken on by the UK Court of Appeal.

The case in question was Cartier International AG v British Sky Broadcasting Ltd, which dealt with the company Richemont, which owns several luxury brands such as Cartier and IWC. As Richemont's goods are highly sought after and quite valuable, six websites were started, aimed at selling and advertising goods using Richemont's trademarks in doing so. The website's donned such fantastic domains as www.cartierloveonline.com and www.iwcwatchtop.com, clearly aimed to confuse and befuddle those who are less savvy on the information super highway. As such Richemont wanted to halt the websites' operations, and approached the courts to impose an injunction to block the websites.

What remains the bigger question in this case is whether such a block is possible under the current law, or as was framed by Justice Arnold: "First, does this Court have jurisdiction to make an order of the kind sought? Secondly, if the Court has jurisdiction, what are the threshold conditions, if any, which must be satisfied if the Court is to make an order? Thirdly, are those conditions satisfied in the present case? Fourthly, if those conditions are satisfied, what are the principles to be applied in deciding whether or not to make such an order? Fifthly, applying those principles, should such orders be made in the present case?"

Under section 97A of the Copyright, Designs and Patents Act 1988 the courts can impose an injunction against an Internet service provider; however the issue presented to the court is that under section 97A the courts can impose an injunction only "...where that service provider has actual knowledge of another person using their service to infringe copyright". As such there was no issue of copyright infringement in the case, as only Richemont's trademarks had been potentially infringed, and no provision allowing for injunctions in the event of trademarks being infringed exists in the UK.

The Court of Appeal's message to trademark infringers

This lead to some extreme juggling of current laws and whether such an injunction was possible bar an express mention of such a power, although this was meant to have been implemented by the UK under the Information Society Directive. Justice Arnold was faced to examine whether this omission was supplemented under section 37 of the Senior Courts Act 1981, through which "[t]he High Court may by order (whether interlocutory or final) grant an injunction or appoint a receiver in all cases in which it appears to the court to be just and convenient to do so". Agreeing with precedent, Justice Arnold saw that an injunction under section 37 of the 1981 Act would not contravene the Supreme Court Act 1981, allowing for the High Court to afford the injunction as a final decision should it do so.

Justice Arnold discussed the conditions which have to be fulfilled before a court may award the aforementioned injunction: "First, the ISPs must be intermediaries within the meaning of the third sentence of Article 11 [of the IPR Enforcement Directive]. Secondly, either the users and/or the operators of the website must be infringing the claimant's trade marks. Thirdly, the users and/or the operators of the website must use the ISPs' services to do that. Fourthly, the ISPs must have actual knowledge of this. Each of the first three conditions follows from the wording of Article 11 itself.".

Applying the conditions to the case Justice Arnold quickly saw that all of the requirements had been fulfilled. First, British Sky and the other ISPs acting as defendants can be said to be intermediaries within the meaning of the Directive without much question. Second, as Richemont owns the rights to several infringed trademarks in the case, such as Cartier, IWC and Montblanc, used in in the six websites dealt with in the case, the websites clearly infringed on those rights. Third, due to the ISPs role as intermediaries, although are not prima facie used for the infringement directly, because of their integral role in the conveyance of the infringement to Internet uses they are used for the infringement, irrespective of a contractual relation between the infringer and the ISPs. Finally, through evidence it was easy for Richemont to establish that the ISPs did indeed have actual knowledge of this infringement and chose not to act on it. Because of this the requirements are fulfilled, and Justice Arnold could award the injunction.

The case can be said to be very important in a UK perspective, and potentially as an international precedent. Through the decision rights holders have a remedy to address the infringement of their rights outside of just copyrights online, potentially allowing the curbing of counterfeit sales online (although this writer will admit it seems like a long-shot it would be ever fully eradicated). Nevertheless, this remedy can be argued to have been needed, and in the absence of intervention by the legislature, should stand as an avenue for trademark enforcement on the Web.

Source: World Trademark Review

Retrospective - Copyright in Video Games

If you're oblivious to gaming and the strong attraction that a virtual world has on today's people, you will have missed arguably one of the biggest changes in the entertainment landscape since the emergence of the TV. With this great appeal comes great monetary worth, and something which is very desirable to protect, especially on part of the creators of very popular gaming titles. The difficulty in the protectability of video games stems from their complexity and in the fact that most popular games emulate one-another within certain genres of games, making them quite similar to the casual observer. Where does a game's protectability start from and where does it end? This question was answered first when gaming was in its infancy, but still remains quite relevant in today's world of gaming and law.

The case in question was Atari v North American Philips Consumer Electronics, decided by the United States Court of Appeals in 1982. The case dealt with the well-known game Pac-Man, created by Atari and Midway in the sunrise of the 1980s, which sold a staggering (at the time at least) 7 million copies. In the wake of Pac-Man's popularity a similar game, K. C. Munchkin, was created by North American Philips. Due to the incredibly similar styles and mechanics of both games Atari sued North American for copyright infringement, which ultimately was decided by the US Court of Appeals 7th Circuit.

The court initially described the copyrighted work in question, which, to the uninitiated, consists of a maze-like playing area, where the player controls the Pac-Man creature, moving him through the maze collecting pellets and fruits, accumulating points as they go. In addition to this the game contains four characters which pursue the main character, often called ghosts, which try to touch Pac-Man, thus 'killing' the character and having the player lose a life. Pac-Man has the capability to fight back, however, through the consumption of bigger pellets, enabling him to eat the ghosts and thus collect more points and avoid losing lives for a brief period of time. K.C. Munchkin is incredibly similar in its design, with a maze-like playing area, four ghost-type pursuers and the collection of pellets, bigger pellets and fruit. Its board design is slightly different, with the maze being slightly taller, and containing hazard elements such as dead-ends, with a slightly different shaped corral area for the ghosts than in Pac-Man. Finally, K.C. Munchkin contains far less pellets in the playing area, and uses a different style to the look of its main protagonist.

After initial discussion relating to the facts of the case the court turned its attention to the meat of the question; whether a game can be a subject matter protected under copyright, and whether the defendant's work infringed upon that work. The former is a much more straight-forward application of copyright law, yet the test for infringement of that work, if found to be copyrightable, is, as stated by Justice Wood: "...whether the accused work is so similar to the plaintiff's work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff's protectible expression by taking material of substance and value". This test only applies to the parts of that work, which are deemed protected, and not any other included parts, even if infringed.

Even game characters have their issues (Source: The Rut)

As decided in Chamberlin v Uris Sales Corporation: "...copyright protection does not extend to games as such". One has to observe that, even if copyright does not subside in games as such, it still can protect parts of those games, not the 'idea' of a game. At the heart of it, the assessment is an assessment of whether what is sought to be protected is merely an 'idea' or the expression of that idea, which is quite protectable. Should the expression and the idea be nearly indistinguishable from one-another, i.e. it is not possible to express said idea in more ways than one, it is difficult to afford protection for that expression. This was well iterated by Justice Browning in Kalpakian: "[w]hen the "idea" and its "expression" are thus inseparable, copying the "expression" will not be barred, since protecting the "expression" in such circumstances would confer a monopoly of the "idea" upon the copyright owner free of the conditions and limitations imposed by the patent law".

Could you therefore protect the 'idea' of Pac-Man as a game? The court did not see much difficulty in answering this question, quickly determining that the work is mostly not protectable; however its components could very well provide "...new or additional [things] over the idea". How the game is displayed, in graphics and music for example, allows for those particular elements to be protectable, yet the 'idea' of a game where the protagonist is chased in a maze cannot be by itself.

An important point raised by the court in the case are certain elements in the game (or games in general), which can be viewed as scenes a faire, or as explained in Alexander v Haley "...incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic". The maze and the score boards can be said to be indispensable to games such as Pac-Man, and arguably others, and thus not protectable. K. C. Munchkin was viewed by the court to have no infringed those designs, and to have been sufficiently different in its expression. What the court saw infringing Pac-Man's copyright was the character design within K. C. Munchkin. They had copied both the protagonist and the antagonist ghosts nearly identically, infringing on Atari's copyright in the expression of those ideas. Even if slight differences still existed, they will not by themselves preclude the finding of infringement. The court ultimately saw that "[a]lthough not "virtually identical" to PAC-MAN, K. C. Munchkin captures the "total concept and feel" of and is substantially similar to PAC-MAN". The court therefore reversed the previous decision and agreed to grant an injunction against K C. Munchkin.

Similar thoughts have been echoed in the UK, illustrated by cases such as Nova Productions Ltd v Mazooma Games Ltd, where the protected subject matter in a game was deemed to be the expression of the idea of a game, and how a game plays was seen as something which can be copied, as long as the visual and audio of that game was not.

What the above case illustrates is the initial considerations of video games as a protectable subject matter under copyright. As technology advances more and more, and games have surely come a long way since Pac-Man, the differentiation of what is copyrightable in a game and what isn't could be said to become more difficult. Even so, this case remains an important landmark in the development of the area, and shows that even dot eating circle creatures can be an expression worth protecting.

Tunneling Through the Internet - VPNs and IP Law

Today's Internet users are more savvy and capable than ever before, and many users' desires for "free" content often leads them to find ways through which to attain that content, even if it's potentially skirting the law using a variety of technological means. Although piracy by itself is a hot topic these days, and often misunderstood (the discussion of piracy and theft on this blog here), the discussion revolving around the subject matter can lead to hyperbolic statements or even the misunderstanding of technological means and their legitimate uses in light of online copyright infringement. One such technology is what are called "Virtual Private Networks", or VPNs, which allow you to create a secure connection through a network service to the public Internet at large, masking who you are and where you are through that service. These connections are also often encrypted and secured through a number of ways, which can be used for both legitimate and questionable uses. Even so, whether the use of VPNs is against the law is not exactly clear-cut, and merits some discussion.

Although sometimes stigmatized, much like in a recent statement by the BBC to the Australian government stating that: "...[suspicious] behavior may include the illegitimate use by Internet users of IP obfuscation tools [such as VPNs] in combination with high download volumes", VPNs do serve a legitimate and arguably useful function. Should an individual wish to mask their Internet traffic from potential government surveillance or the monitoring by any other third parties (irrespective of the nature of your activities online), VPNs handle this quite well. Such an example lies just with are friends in Australia, where new laws have been discussed giving certain bodies potentially free roam in the monitoring of Australians' Internet usage. The proposed law has flared up interests in such services, and one can argue that given such broad tools some level of obfuscation can be said to be reasonable, whether you infringe copyright or not online.

But at the heart of this lies the question of legality, and as said above, this is not wholly straightforward. VPNs enable you to view content which is often not available due to licensing issues beyond certain borders, of which a great example is Netflix, which's offerings vary quite drastically depending on where you are. As such you would not imagine, as a paying subscriber, that accessing said content could infringe any laws, especially since you are paying your dues. Yet those licensing agreements are there for a reason, and weaseling your way to see that content can be a moral and legal grey area.

Some networks are probably not worth accessing  

An argument as to the moral side of things was put forth by Simon Haupt, who argued that "[p]aying for the... service means your money goes to whoever holds the [local] rights for the shows on Netflix. If you're watching [for example] the U.S. service, the rights holders... aren't getting their fair share". This can be argued to be slightly misleading, and as proved by Michael Geist, is indeed disingenuous to an extent, as Netflix for example, pays the same amount for the shows it provides no matter how many times or where they are watched from. Although certain licensing issues can be argued, such as if a show is licensed exclusively to a certain company in country A, but people in that country watch it through Netflix from country B, which was not intended due to the exclusivity of that agreement. This could potentially deprive that party of the commercialization of that work, but is still a hard thing to argue, especially against the users themselves.

Under the UK Copyright, Designs and Patents Act 1988 section 296ZA, a company with an exclusive right to the copying or communication to the public of a work has the same rights of enforcement against a person who circumvents, or attempts to do so, any technological means through which said works are protected. Although, at least prima facie, it is quite hard to argue in terms of geo-blocking, one could potentially argue that VPNs and their use in the viewing of restricted content might infringe copyright through section 296ZA. This can be easily countered by the simple fact that it would only apply to the circumvention of exclusion through non-payment of a subscription fee for example, and not so much regional restrictions.

Similar provisions exist elsewhere in the common law as well. The Australian Copyright Act 1968 prescribes under section 116AN that the circumvention of protection measures infringes copyright, potentially including regional locking. The Australian position on whether regional locking is truly a 'technological measure' is still up in the air, but not an entirely impossible inclusion. In the US the old Computer Fraud and Abuse Act protects content from being accessed from non-authorized computers, potentially including geo-blocked content, although no case law has taken that notion on as of yet.

But as one can see the use of VPNs is a true pickle, and has no clear and easy answer as to its legality. Although mounting pressure is being put on the enforcement of regional restrictions on companies such as Netflix, this writer for one highly doubts it will be a legal battle worth waging unless there is a drastic change in the tides of copyright legislation. As for now we're all able to enjoy our forbidden fruit across the pond through services we enjoy and pay for, but be warned: you might experience restrictions on through the companies themselves eventually.

Source: Lawyers Weekly

Birds Of A Feather - Twitter and Copyright

Social media has changed how we interact with others, both online and to an extent, in real life, but its impact on creativity and the spreading of such materials is unrivaled, with content that goes 'viral' producing unprecedented revenue figures in recent years. With this in mind, capitalizing on such successes for others seems like an easy opportunity to make some money, and using social media to do so gives us all an avenue where it's both effortless and instantaneous. One such platform is Twitter; something which most people are aware of these days (even this blog has its own Twitter account). For the hopelessly uninitiated, Twitter allows you to share content, be it links, statements or quotes, with relative ease to all of your followers (and their followers, should they choose to share - i.e. retweet - your content), but allows you to only do so within the limit of 140 characters. With such restrictions, and the medium itself considered, would a tweet be enough to merit copyright protection? Furthermore, can you infringe copyright by tweeting someone else's content?

Whether tweets are indeed protected by  copyright is an assessment of whether they can be deemed to be literary works under such regimes. The Copyright, Designs and Patents Act 1998 in the UK, and other similar laws within the common law, does not set out any word or character limits to what can be deemed as a literary work. Should the tweet itself be original, and admittedly this writer for one has seen his share of funny or interesting tweets over the years, it could be considered a literary work and thus be protected by copyright. Tweeting about pictures or videos one has made does not in itself afford copyright protection to that particular tweet, but the copyright in those standalone works still quite well exists by its own merits. This question does not have a straightforward answer at the end of things, but should your Twitter output be interesting, funny or creative enough, you can rest easy your 140 character gold will most likely be protectable.

Some tweets are less 'original' than others, quite frankly

Copyright infringement on the other hand is a wholly different beast when it comes to Twitter, and as stated above can be something your average tweeter might not think about in the casualness of the medium. Albeit not exactly a tweet, an advertisement in the New York Times used a tweet by A. O. Scott, a film critic of some note, as a form of endorsement (one which was not approved by the critic himself) landed them in a bit of hot water, and prompted a conversation on whether tweets carry copyright protected subject matter. As can be seen above they arguably do, and this instance further enforces that notion. Some estimates have put a worth of several thousands of pounds on a celebrity's tweet, which only goes to show that even without much literary merit, a tweet can still be quite valuable, and therefore, worthy of protection. Using other people's tweets therefore can be an issue, should one do so without proper authorization.

But getting back to your average Twitter user; can you infringe copyright by retweeting someone else's tweet? Should someone post a tweet which infringes copyright, say an unauthorized excerpt from a famous book, containing an integral part of the story, one could potentially infringe copyright by retweeting that same excerpt. Should that part be deemed substantial enough to infringe copyright under the CDPA 1998, a retweet could very well infringe copyright. Again, retweeting and infringing copyright has no clear-cut answer, and given the length of each tweet, infringement would have a much harder time if dealing with more extensive works and excerpts of those works in the twittersphere.

Albeit a very brief consideration, one can see above that Twitter does provide us with an interesting sphere in which copyright resides. Most users of Twitter are incredibly casual with the medium, and although it will probably not cause any major issues for most copyright holders, some frequently more hilarious tweeters might want to be on their toes when they hear the birds chirping.

Cigarette Smoke and Olive Green - Australian Plain Packaging Law Challenged

Cigarettes and smoking have always been a controversial topic, especially in the last few decades. From misconceptions as to cigarettes' health benefits in the early-to-mid 1900s, to a more modern understanding, the topic often polarizes both sides of the discussion regardless if you smoke or not. Whether it is purely a deterrent ideology or a perspective from which you want to enforce and strengthen individual responsibility, smoking really has no answer for either side. A gallant effort at the reduction of smoking, especially in younger individuals, with nearly a third of 16 year olds having had at least tried smoking, is the plain packaging initiative, which has been either debated or even started in some countries in the last few years. One of these countries, Australia, instated their plain packaging laws, the Tobacco Plain Packaging Act 2011, some few years ago, showcasing a 15% drop in smoking rates between the Act's introduction and the year 2013.

The Act's life, albeit right now in its infancy still, has not been an easy one, and the Act has since been challenged at the WTO by several countries. The dispute, dubbed "Certain Measures Concerning Trademarks and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging" essentially deals with potential damage to the tobacco industry in Australia as a result of the Act, or as put forth in the complaint by the Ukraine: "...erode[s] the protection of intellectual property rights [and] impose severe restrictions on the use of validly registered trademarks". Arguably the Act does just that, but under proper justification; the denial of trademark usage can be balanced with a public interest health wise. This was countered by the Ukraine: "...[it] considers that governments should pursue legitimate health policies through effective measures without unnecessarily restricting international trade and without nullifying intellectual property rights as guaranteed by international trade and investment rules". What the Act does is not nullify the rights guaranteed by the Australian Trade Marks Act 1995, but skirts the law by preventing those marks' use. The marks themselves are still quite valid, just not usable in all instances.

When does 'plain' become 'too plain'?

Australia has protected its plain packaging law by stating that "...[it] is a sound, well-considered measure designed to achieve a legitimate objective — the protection of public health... nor is [it] more restrictive than necessary to fulfill its legitimate objective". Arguably, as said above, this is very true, yet the Ukraine does have a point in its argument, at least in relation to tobacco products. Trademarks, especially those relating to tobacco packaging (for example Marlboro and Camel), are quite valuable as they are predominantly how the products are distinguished among a myriad of similar of even identical flavors (as a non-smoker, this writer has no knowledge whether this holds true or not, so please correct me if I am wrong here). As such, rendering them useless in the sphere where they are used strips them of their usability and does impede on their use; however one has to still emphasize the public health concerns which underpin the legislation. Trademarks are a badge of origin relating to quality, authenticity and expertise, yet most tobacco products cause the same health issues regardless of origin or manufacturer, rendering the badge of origin quite useless in the face of health concerns or causation.

The legality, and the purpose behind the Act, was further defended by the High Court of Australia in JT International SA v Commonwealth of Australia, where the Court stated that "There are and always have been purposive elements reflecting public policy considerations which inform the statutory creation of intellectual property rights... [and] Australian trade marks law has 'manifested from time to time a varying accommodation of commercial and the consuming public's interests'". This varying accommodation is just that; the promotion of legitimate rights, but still keeping them in balance with public interests. Health considerations are one of the bigger interests in the public sphere, and are worth defending, even at the detriment to some commercial interests.

Do trademarks then confer a non-restrictable ability to use them? Arguably no, and this was supported by Justice Grummow in the JT International case: "...the TMA, like other trade mark legislation, does not confer on registered owners or authorised users a liberty to use registered trade marks free from restraints found in other statutes". This can be stated to be correct, but a balance still needs to be struck in the event of new legislation that might or might not impede intellectual property rights.

What the decision does, however, is establish a precedent which can be used for or against future plain packaging laws, such as in Ireland or France. The outcome of the WTO panel decision has yet to emerge, but the possible resolution of the dispute seems to lean towards Australia and the TPPA. As explained by Tania Voon and Andrew Mitchell: "...the law applies equally to all tobacco products from all countries, including Australia and New Zealand. The law is also based on years of research showing that standardised packaging will reduce the appeal of tobacco products and enhance the effectiveness of health warnings. Finally, the law implements Australia’s obligations under the WHO FCTC (Framework Convention on Tobacco Control). All these factors enhance Australia’s position in the WTO dispute". Should Australia lose the dispute, the fate of the TPPA would be suspect, and potentially would have to be repealed entirely, setting a precedent to other countries which are a part of the WTO.

This writer for one is intrigued by the prospects of this challenge, but believes that the TPPA will triumph and plain packaging will become more prevalent in the coming years. Its impact on trademarks will be negligible, bar the tobacco industry, which will have to revamp its approach to marketing. Maybe one day we will all reminisce the fancy cigarette packages of yore, or just recoil at the thought of smoking altogether.

Source: The Guardian

Chuckles or No - European Court of Justice Takes on Parody

European fair dealing is ever so slowly growing into its big boy shoes, and amidst that growth there are some growing pains that need to be sorted out by the guardians, the judiciary. With new fair dealing exceptions only days away from coming into force here in the United Kingdom, it seems only pertinent that the most influential court in Europe deals with an issue that is so close to this new set of fair dealing exceptions; parody and satire. Although the UK's cousins across the pond in the United States and Australia have accepted parody as a form of fair dealing or use prior to the old Kingdom, the UK will face challenges to this new regime in the coming years - for which European consideration is always welcome.

The case in question is Deckmyn v Vandersteen , decided only a few weeks ago, which dealt with a drawing relating to a recent election in Belgium, which was released in a calendar edited by Mr. Deckmyn, who is also a member of the Vlaams Belang party. During an event Mr. Deckmyn handed out the aforementioned calendars, on the cover of which was the picture at issue in the matter; an image which highly resembled that of the book "De Wilde Weldoener", an edition of the famed Suske en Wiske comic books. As explained by the court: "...[the] drawing is a representation of one of the comic book’s main characters wearing a white tunic and throwing coins to people who are trying to pick them up. In the drawing at issue, that character was replaced by the Mayor of the City of Ghent and the people picking up the coins were replaced by people wearing veils and people of colour". Subsequently the Vanderseteens, relatives of the comics' creator and holders of the copyright, among others, brought an action against Mr. Deckmyn asserting copyright infringement.

Under the Belgian Law on Copyright and Neighboring Rights, a copyright protected work is not infringed "[o]nce a work has been lawfully published, its author may not prohibit... caricature, parody and pastiche, observing fair practice". Mr. Deckmyn argued that his use of the comic's cover would be protected from infringement as a fair use under parody, yet the questions posed to the ECJ were:

"1. Is the concept of “parody” an autonomous concept of EU law? 
 2. If so, must a parody satisfy the following conditions or conform to the following characteristics: display an original character of its own (originality); 
display that character in such a manner that the parody cannot reasonably be ascribed to the author of the original work; 
seek to be humorous or to mock, regardless of whether any criticism thereby expressed applies to the original work or to something or someone else; 
mention the source of the parodied work? 
3. Must a work satisfy any other conditions or conform to other characteristics in order to be capable of being labelled as a parody?" 

The ECJ was faced with the definition of what amounts to parody, and whether this concept was truly autonomous within the EU law, more specifically Directive 2001/29.

The court quickly established that the concept of 'pardy' was indeed an autonomous concept in European law, as the Directive made no express mention of any national laws, giving the law a uniform interpretation within the Union, although Member States as still very much able to limit or extend the exception beyond its Union interpretation.

The second and third questions took the bulk of the ECJ's judgment, effectively determining the definition of a parody in European law. The court first established that, as the term is not defined in the Directive, that its interpretation would be "...determined by considering its usual meaning in everyday language, while also taking into account the context in which it occurs and the purposes of the rules of which it is part". This in the court's judgment, while agreeing with the Attorney General's definition, is "...first, to evoke an existing work while being noticeably different from it, and, secondly, to constitute an expression of humour or mockery". This writer would like to further add that, in most cases, national courts would also assess whether the parody itself, or the mockery or humor, is actually a genuine expression of mockery, rather than just a guise to prevent the courts from finding infringement.

Parodies can evoke a multitude of feelings

The court then assessed the conditions posed in the reference to the ECJ and whether they should be treated as a part of the exception in its application. As the provision is there to safeguard legitimate uses of copyrighted content, the court heavily empathizes that its scope "...of that provision... [should not be] restricted by conditions... which emerge neither from the usual meaning of ‘parody’ in everyday language nor from the wording of that provision". A much less restricted interpretation facilitates both the freedom of expression and a public interest in legitimate parody, as noted by the court.

The exceptions application has to be balanced, even in the light of its much less restricted interpretation, as noted by the court: "...the exception for parody... must strike a fair balance between, on the one hand, the interests and rights of persons... and, on the other, the freedom of expression of the user of a protected work who is relying on the exception for parody". This assessment has to take into account all circumstances in each instance, and should not be a mere prima facie 50/50 assessment.

The ECJ then relayed the final decision to the Belgian national courts, but did however express a need to assess the work on potential racial impacts, and negative connotations on such ground, as the work did indeed depict individuals of certain ethnic background in a very compromising light.

The UK government has already issued some guidance on the new exceptions coming into force next Wednesday, which helps in the future assessment of parody in this new regime. In their definition: "[t]he words “caricature, parody or pastiche” have their ordinary dictionary meanings. In broad terms, parody imitates a work for humorous or satirical effect, commenting on the original work, its subject, author, style, or some other target. Pastiche is a musical or other composition made up of selections from various sources or one that imitates the style of another artist or period. A caricature portrays its subject in a simplified or exaggerated way, which may be insulting or complimentary and may serve a political purpose or be solely for entertainment". Yet again this writer would have to point out that the use of a work under such a definition would still entail an assessment of whether the parody, pastiche or satire is well and truly such a work, and not just a faint attempt at parody purely to use the work at no cost.

All-in-all the ECJ's definition makes sense, at least to this humble writer, and does afford genuine parodies a wide shield in protecting their legitimate expression. Should conditions be set on the application of parody, such as in Belgium, the hurdles could become nearly insurmountable, and curb any real interest or willingness to create parody works. How the UK courts will apply this new exception remains to be seen; however the ECJ's considerations will undoubtedly serve as a great starting point.

Source: The 1709 Blog

Can You Own a Recipe? When Food Meets Intellectual Property Law

Food is quite important to all of us, and not just because of its nourishing quality and necessity for life, but also for the sheer enjoyment of a dish which has been prepared with care and love. This writer for one will freely admit that he loves to both cook and eat (often the latter more than the former), which prompted me with a thought in the process of seeking out recipes to make: can you own a recipe, or if anything, are recipes protectable under intellectual property law? Upon initial thinking the question seems to beg an answer, since recipes are undeniably creations of great creative efforts, planning, knowledge and skill, which, prima facie at least, should afford it some level of protection. This aside, food is ubiquitous to all cultures, peoples, and as said above, a necessity, which would render their protection draconian or even preventative of the enjoyment of cultural aspects for the larger masses should recipes be isolated to only a select few. The question indeed deserves an answer, and I shall endeavor to do so below, separating the matter into each type of intellectual property.

Recipes and Copyright

Often people's first memories of recipes is a dusty old tome which their grandparents have kept and compiled over the years, containing family recipes and secrets from generations ago. Whether it is Gordon Ramsay or your lovely grandma, recipes take effort and skill to create and compile, being put into tangible form either on paper or online. Under the UK Copyright, Designs and Patents Act 1988, and similarly its US, Australian and Canadian counterparts, copyright protection is afforded to original literary works; however this protection is given to the expression of those literary ideas, not the ideas themselves (expanded more on this very blog here and here). Recipes, therefore, potentially could be protected under copyright should they be expressed in a very specific or original manner; however the ideas of the recipes themselves (for example the concept of a pancake) cannot be protected by copyright.

Some recipes are more 'original' than others

This was specifically discussed by the Australian IPO (link leads to an external PDF file), which this writer thinks is an accurate representation of the laws' applicability in most common law countries: "[t]he owner of copyright in a recipe has certain limited rights to control the manner in which their written recipe is used. This does not include, for example, preventing people from making the dish, or from writing their own descriptions of how to make it". To expand on this, the individual or entity can protect their recipe to an extent, but cannot prevent others from making that particular dish or writing down their version of the recipe. As expression is protected, and not ideas, mere techniques, information on ingredients or methods or the 'idea' of an overall recipe cannot be protected.

Copyright leaves recipes quite exposed, but does offer some level of protection should someone try to use your recipe which has been published in a book or in another protectable form. However should they want to publish their own version or efforts, even writing down a specific recipe in their own words after following someone cooking it, they are free to do so.

Recipes and Trademarks

The names of dishes can be quite valuable, especially if they gain a high level of traction. A famous dish can be highly desirable to protect in name, and under the UK Trade Marks Act 1994 (and similarly under its American, Australian and Canadian counterparts) a sign, an indicator of a goods' origin, can be protected, which easily encompasses the names of dishes or recipes. A recent example of this is the fabled Cronut, a mixture between a croissant and a donut, which became seemingly huge overnight. Arguably the recipe for a Cronut can be very valuable, and many have shared their takes on the item, but what truly brings protectability to the doughy foodstuff is its name - something its creator trademarked promptly. As illustrated above the idea of a Cronut is not protectable as is, but the name does prevent others from selling the item under the recognizable moniker, which is very often more valuable than attempting to prevent the use of a recipe. 

This is not to say protecting a dish or a recipe can result in a positive outcome. Last year a Vietnamese restaurant in London faced some backlash after it asserted its trademark on the dish "Pho", albeit used in the restaurant's name rather than as a means to protect a specific recipe. Whether it is a food related name or a distinct recipe with an elaborate or distinct name, trademarks do serve as a great tool to protect recipes, yet are limited to only truly distinct cases, as one cannot simply just trademark a common recipe or dish.

Recipes and Patents

The more interesting choice of the three was an option this writer had never even considered; patenting a recipe. More often than not patents protect inventions, which encompasses a very wide array of things, but one would never think of a recipe as an 'invention' no matter how inventive the approach can be. Nevertheless, this is still quite possible, although any aspiring food patent seeker will be fighting an uphill battle at best.

Intricate methods of cooking often lead to mixed results

Under the UK Patents Act 1977 for an invention to be patentable it has to fulfill certain criteria: it has to be something new; involve an inventive step; and be capable of industrial application. On the face of things a recipe could be exactly that, and fall under each category; however one can imagine this would pertain more to an industrial recipe, rather than a single kitchen in a single restaurant. A good example of a food related patent is Cadbury's patent for chocolate that doesn't melt (and for the sake of balance Nestle's equivalent is here). The recipe clearly calls for a specific method of creation, a way to make the recipe, rather than the recipe itself. Chocolate is way too common for it to be afforded patent protection, but a novel way to produce chocolate could easily be patented if it falls under all of the requirements. For a great in depth look at the matter in the US, please do read Gene Quinn's article, which covers recipe patents under US law very comprehensively.

Patents are a tougher sell as a method for protecting recipes, but are still quite viable and an option should you dish be created in a very unconventional, new way, and possibly include a more industrial approach rather than one which relates to looks or flavor alone. It won't protect the recipe per say, but it will protect the method through which that recipe is produced.

Conclusion

In short, can you own a recipe? Yes and no. To own a recipe in its most truest sense, it seems nearly impossible under current intellectual property laws, and rightfully so, since no nation would want to deprive its citizens of the multifaceted world that is the culinary world. One can easily own an aspect or two to a recipe, for example its name or a specific structure if it entails a strict layering process for example, or even a printed recipe, but the limits the law imposes on those rights are very strict and nuanced. Being able to buy a lasagna outside of a certain restaurant in Italy is truly a blessing for us all, and we can take that availability for granted.

A message to all aspiring chefs and current culinary professionals: focus on the quality of your product rather than its protectability under intellectual property law.