King.com Trademarks "Candy" - Discussion About the Mark

Mobile games have become huge in the last 10 years, with app sales having been predicted to reach 26 billion dollars in 2013 alone, making the field of mobile gaming incredibly lucrative. Examples like Angry Birds and Clash of Clans have shown that great monetary incentives lie in the production of simple, time-wasting games for your commute, and many others have succeeded in doing so as well. A recent example of immense success is a game called Candy Crush Saga made by the developer King.com, which in its simplicity consists of the alignment of icons in particular patterns, scoring points by destroying the patters and furthering your progress in the game. The game has been downloaded over 100 million times on the Android platform, while achieving great success on its iOS counterpart as well.

In a recent move, King.com have registered the term "candy" in relation to games and clothing, having been marked for approval in late January. This has created quite the uproar in the mobile gaming community, and I felt it would be appropriate to address the situation from a more legal stand-point given the discussion surrounding the potential mark.

Candy Crush, the analog game

In the US a trademark, under 15 USC § 1127, is defined as "...any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods". The mark has to be subsequently used in commerce, something which King.com clearly have done in using it in the name of a commercial application, and it has to be distinctive in order to distinguish the application from others in the category it is registered in. Distinctiveness has been divided into four categories in relation to trademarks: arbitrary/fanciful, suggestive, descriptive, and generic. How each of the aforementioned categories distinguish the goods or services varies: "If a mark is categorized as either arbitrary/fanciful or suggestive, it is considered to be inherently distinctive and exclusive rights to the mark are determined solely by priority of use. A trademark that is categorized as descriptive is only protectable as a trademark if it has acquired a secondary meaning in the minds of the consuming public. Secondary meaning is also necessary to establish trademark protection for a personal name or a geographic term. Generic terms are never eligible for trademark protection because they refer to a general class of products rather than indicating a unique source. A mark may be generic ab initio and refused registration, or it may become generic over time through use".

As can be observed from the above, King.com's alleged trademark could be seen as legitimate under law, assuming it satisfies all of the requirements. This writer for one would argue that the mark would fall under either a descriptive mark or a generic mark, which leaves the mark under some level of scrutiny should it face litigation. Clearly the term "candy" is not inherently distinctive awarding it clear protection, especially since there are prior instances where the term has been used in conjunction with games. The connection between the mark and the goods or services would have to be assessed by the courts on an individual basis, as there is no set metric to assess this.

So can King.com enforce their trademark, and above all else, should they? This would be yes, at least from a legal stand-point. If an entity does not actively protect their trademarks they will lose them. In the game company's position the enforcement of the marks is the only option. They have already begun to enforce the mark to an extent, at least against other game developers. The mark will undoubtedly be heavily challenged, especially due to its 30-day contest period, and could be revoked as a result.

The discussion around the mark can be argued as being legitimate, and should pose some critique about the laws surrounding trademarks. In the same vein we should not ban all 'generic' terms outright, as they can still easily distinguish goods or services given the right type of goods or services and the right area where they operate. King.com's intentions are legitimate, which is to protect the intellectual property rights they own; however that does not mean they should not be open to criticism as a result. Some of the aforementioned discussion has been riddled with inaccuracies or even outright hyperbole, prompting this writer to give some insight into the matter. Even so, I for one will follow this with curiosity, and enjoy the fact that situations like this bring intellectual priority matters into a more of a public sphere, prompting discussion.

Source: Android Police

Public Consultation on EU Copyright Law

Copyright reform seems to be on everyone's mind, with reviews being or having been undertaken in the United Kingdom, Australia and Ireland in the past year. Even in this writer's mind copyright has been in dire reform in many jurisdictions, and the calls for change are a welcome change of pace. In conjunction with the aforementioned two EU common law jurisdictions' reform thoughts, the Union itself has set up consultations on the review of its copyright rules. The harmonization of copyright across the EU is something that is desired, especially in the current copyright climate, which is seeking to fit the laws with modern uses of copyrighted material.

According to the European Union's press release this is in response to "...the completion of its on-going efforts to review and modernise the EU copyright legislative framework as announced in the Intellectual Property Strategy "A Single Market for Intellectual Property Rights", while facilitating practical industry-led solutions through the stakeholder dialogue Licences for Europe to issues on which rapid progress was deemed necessary and possible". What this revision will change will ultimately be left to the EU; however the consultation does indicate certain desired changes or directions which the Union may take in the future.

In setting out the reasons for the consultation, the EU was very clear in the background and needs for reform:

"Over the last two decades, digital technology and the Internet have reshaped the ways in which content is created, distributed, and accessed. New opportunities have materialised for those that create and produce content... for new and existing distribution platforms, for institutions such as libraries, for activities such as research and for citizens who now expect to be able to access content... regardless of geographical borders... This new environment also presents challenges. One of them is for the market to continue to adapt to new forms of distribution and use. Another one is for the legislator to ensure that the system of rights, limitations to rights and enforcement remains appropriate and is adapted to the new environment."

Indeed the changes in the environment where copyright functions on a day-to-day basis have drastically changed since the emergence of the Internet and a heavier emphasis on the consumption of digital goods as opposed to their physical counterparts. How the aforementioned issues will be tackled leaves a lot of room for discussion in submissions; however this writer will endeavor to give his insight on some of the solutions or questions posed by the Union.

The EU in this process would want to unify the approach to copyright within all of its territories; which currently is a process which takes place in each nation individually, hindering licencing or forcing partial or separate EU-whole licences to be created. Arguably such a licencing scheme would be desirable, but whether this requires legislative action is questionable. The Union should offer an easy way to licence content all over Europe, providing all of its citizens access to the same or most of the content others have access to. The Single Market in this regard needs to be encouraged, not necessarily further legislated on.

The EU also wants to further clarify the position the law holds with digital content; more specifically the making available of content and what that entails; the rights relating to the making available of content (its reproduction and the right to make it available) and their split nature between different parties; the complexity of linking on the Internet and browsing content on it (and issues that might arise relating to temporary copies thereof); and the ownership of downloaded content. Some of these questions, as pointed out by the consultation paper, have been referred to the Court of Justice of the European Union, and those decisions will undoubtedly influence the changes that might be needed after, if at all.

The paper also seeks to further clarify, and potentially unify, the approaches taken by Member States to exceptions in relation to copyrighted content and their use. Although several a Directive has been issued pertaining to exceptions particularly, for example in terms of research and teaching, there is a clear need for uniformity and the extension of new exceptions in this regard, at least in this writer's opinion. A clear and concise regime of legitimate use of copyrighted content all over the EU would be beneficial to users, and enable the Single Market to function more consistently and easier. As the paper points out, user-generated content is an important consideration, which is yet to be legislated on, among a few other exceptions. As said, this is one area where the EU should step up and give further guidance and unification, purely due to the international nature of digital content especially, easing the modern markets and unifying their approaches within the Union.

The consultation paper contains much more than what has been discussed above, and all parties which can participate in this process should voice their opinions. Although the EU has been far from complacent in recent years in terms of copyright review, this process gives the ability for others to directly influence this process, and therefore improve the current Single Market. Copyright has been a hot-button topic, and seems to keep as such for the foreseeable future.

Source: TorrentFreak

Medical Treatments Patentable in Australia

Patents related to medicine or treatments carry quite the oomph when discussed in the public sphere. The recent examples of genetics patents, or even the potential to choose your future child's genetic traits, always spark a conversation about patents and whether certain areas of research should even be allowed to be patentable. In Australia medical treatment methods have been assumed to be patentable, but this has never been judicially tested. Finally, the High Court of Australia had to decide whether this was the case under law.

The case in question was Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd, which concerned the drug Leflunomide, which is used for the treatment of psoriatic and rheumatoid arthritis. A patent for leflunomide's composition and preparation were owned by Aventis, which had expired almost 10 years ago. A subsequent patent was also held by Sanofi-Aventis (after its merger in 2004), which utilized the drug in the treatment of the aforementioned conditions; or as is worded in the application: "A method of preventing or treating a skin disorder, wherein the skin disorder is psoriasis, which comprises administering to a recipient an effective amount of a pharmaceutical composition containing as an active ingredient a compound of the formula I or II". After the expiration of the initial composition and preparation patent, Apotex proceeded to manufacture and sell its generic version of the drug, selling it as a treatment for both psoriatic and rheumatoid arthritis. Subsequently they were sued for patent infringement by Sanofi-Aventis for allegedly infringing their medical treatment patent. 

Some treatments are much more enjoyable than others

What the High Court had to answer was whether medical treatments would fall under the definition of a manner of manufacture in the Statute of Monopolies 1623 (a more in-depth discussion of what a 'manner of manufacture' is can be found here). This entails that the invention would have to be a vendible product, and has to provide economic utility through a possible new function or effect. The current position of the law, as was accepted by the courts, was cited in the case of Anaesthetic Supplies Pty Limited v Rescare Limited by Justice Lockhart: "If a process which does not produce a new substance but nevertheless results in 'a new and useful effect' so that the new result is 'an artificially created state of affairs' providing economic utility (emphasis added), it may be considered a 'manner of new manufacture' within s 6 of the Statute of Monopolies". The Patents Act 1990 does not expressly exclude methods of treatment, and the courts have struggled in distinguishing methods of treatment and the drugs which produce the same results, with Justices Black and Lehane discussing "the difficulty ... of drawing any logical distinction between a method of treatment and a patentable pharmaceutical product that produces the same beneficial results" in Bristol-Myers Squibb Co v F H Faulding & Co Ltd. A method of treatment can introduce a new function of effect which provides economic utility; however the question is not necessarily that easily answered.

The High Court, in its deliberation, came to the conclusion that methods of treatment could be patented under Australian law. Their emphasis was clearly in economic utility: "It could not be said that a product claim which includes a therapeutic use has an economic utility which a method or process claim for a therapeutic use does not have". Finally the Court summarized its position with relation to methods of treatment: "Assuming that all other requirements for patentability are met, a method (or process) for medical treatment of the human body which is capable of satisfying the NRDC Case test, namely that it is a contribution to a useful art having economic utility, can be a manner of manufacture and hence a patentable invention within the meaning of s 18(1)(a) of the 1990 Act". As the Court accepted that these methods can be patented, Apotex's claim for the revocation of Sanofi-Aventis' patent failed. However, the Court did not find that Apotex had infringed Sanofi-Aventis' patent, as they merely provided the generic version of the drug without the provision of the treatment itself.

As one can see the Australian High Court almost unanimously accepted the patentability of methods of treatment, bar the dissenting judgment of Justice Hayne. Patents relating to methods of treatment are important, and do not in themselves necessarily provide a barrier for innovation. Whether the Australian legislature will take the initiative and legislate on this matter in more express terms will remain to be seen.

Source: JDSupra

Retrospective - Is Piracy Theft?

Rhetoric surrounding copyright infringement can often be hyperbolic or just outright incorrect. Whether one would want to call it 'piracy', 'theft' or 'illegal copying', the end result often is a discussion as to what copyright infringement actually is. Is the copying of intangible content theft, even when the owner of the copyrighted material doesn't actually lose the tangible or intangible material in question? This hasn't been addressed directly in most common law courts, purely due to the fact that criminal acts and civil wrongs don't intersect as much when it comes to the infringement of intellectual property rights; however the question was indirectly answered, to an extent, in the House of Lords over 30 years ago.

The decision in question was Rank Film Distributors Ltd v Video Information Centre, decided in 1982. The case concerned the making of video cassettes of films, which the plaintiffs were the copyright holders of, and selling those videos. Under this infringement the plaintiffs had acquired a motion from the court to enter the defendants' premises and to infringe any and all copies of the aforementioned films, while also compelling the defendants to hand over any relevant documents and to answer questions relating to the supply and sale of the videos. The defendants argued, initially unsuccessfully, that should they comply they might expose themselves to criminal proceedings, or in other words, incriminate themselves. Upon appeal they argued further that a copyright action would be able to claim privilege from discovery due to self-incrimination; a question that the House of Lords would have to answer.

Although the case, prima facie, relates to evidentiary matters more so than copyright, the case is important in answering the question posed in the title of this article. Lord Denning, in his judgment for the Court of Appeal prior to the House of Lords' judgment, discussed the potential criminal liability issues, and the court order that was concerned; something which the House of Lords did not dispute in their deliberations. The order in question which was dealt with in the case was an 'Anton Pillar order', one which stems from the case of Anton Piller KG v Manufacturing Processes Ltd. Under the Theft Act 1968 a defendant or defendants are protected from self-incrimination through the provision of evidence that might do so; however the important fact is that it only pertains to offenses under the Act itself, namely theft in this instance. His Lordship distinguishes copyright infringement from the theft of regular property: "[the Theft Act 1968] covers nearly all kinds of property. But it does not cover the form of industrial property known as copyright". Through his Lordship's rationale, one cannot be convicted of theft under the Theft Act, as it does not apply to the 'stealing' of intellectual property. His Lordship put forth several analogies, and finally concluded that "There is no reason why a privilege against self-incrimination should be available in copyright cases when it is not available in cases involving the other forms of industrial property". This is "...because the infringement is not a criminal offence".

Even pirates need to change their business model (Source)

In the House of Lords' majority decision, Lord Wilberforce summarized the issue at hand, and the law's application: "The appellants' submission amounts to a request to the courts, by judicial decision, to extend this statutory provision [under section 31 of the Theft Act 1968] to civil proceedings generally, or at least to these proceedings. But this, in my opinion, the courts cannot do". By refusing to extend the provision to civil cases, more specifically copyright infringement, his Lordship clearly distinguishes copyright infringement from theft, although not in express terms. In the end the House of Lords denied the appeal and rejected the Anton Piller order, and allowed for the protection against self-incrimination to be used in copyright infringement cases. Even though the House of Lords did not discuss theft and copyright in more depth, Lord Fraser did discuss it in his brief judgment. In his Lordship's mind "The risk of prosecution under the Theft Act may, I think, be disregarded as remote, because that Act applies to theft of "property" which is defined in a way that does not appear to include copyright, but only, so far as this appeal is concerned, to the physical objects such as tapes and cassettes which are of small value by themselves". Clearly therefore copyright infringement could not be defined as 'theft', at least referring to the terms used in the United Kingdom Theft Act.

Similar views have been expressed under US case law, more specifically in the case of Dowling v United States, where the Supreme Court of the United States saw that "...interference with copyright does not easily equate with theft, conversion, or fraud... [as the infringer] does not assume physical control over the copyright; nor does he wholly deprive its owner of its use". The US Supreme Court, although arriving to it through a different argument, seems to align itself close to the view of the UK courts, clearly differentiating copyright infringement as a civil action from the criminal action under theft.

As one can see above the question of whether copyright infringement, or more colloquially 'piracy', equates to theft is answered in the negative. This does not mean that copyright holders are not losing monetarily because of copyright infringement, but the rhetoric surrounding copyright infringement is inflammatory should it be placed in the same category as theft. The two offenses need to be distinguished as such.

Sherlock Holmes is In the Public Domain, At Least Partially

As was discussed on this blog a few months ago the famous fictional detective, Sherlock Holmes, had been an issue of contention since a lawsuit had been filed almost a year ago. The matter at hand was whether Sherlock Holmes, or more specifically his characteristics, would exist in the public domain despite still being under copyright in the United States. This was contested by Sir Arthur Conan Doyle's Estate, and the case has reached it's first decision just after Christmas.

In a summary judgment by the District Court of Illinois Justice Ruben Castillo was faced with the task of deciding whether Mr. Holmes would still be protected by copyright in the US. The initial complaint was filed by the plaintiff Leslie Klinger over the payments of licencing fees in discussing the detective in his book "In the Company of Sherlock Holmes"; the fees having been 5,000 dollars.

Mr. Klinger sought to have the court declare "...that the Sherlock Holmes Story Elements are free for public use because the stories where the elements were first introduced have entered the public domain". The counter-argument against Mr. Klinger's view is that the elements have been developed over the course of all of Mr. Holmes' adventures, leading to them only entering the public domain once all of those stories have fallen out of copyright protection. The case was concerned with elements developed both prior and after 1923, the former of which would have more value as they have been out of copyright for Mr. Klinger's purposes.

In discussing pre-1923 elements Justice Castillo his Honor rejected the Estate's argument, calling it 'novel', utilizing the precedent set in Silverman v CBS. Although his Honor did agree that even though the pre-1923 stories do add to the subject matter which is protectable under copyright regarding the Holmes stories, once the works have entered the public domain they are no longer protected under copyright and are free to use by others. The Estate contested that this would create two different versions, a copyright protected and a public domain version, of the Sherlock Holmes works; something which the courts have previously done and was subsequently accepted by the court in question. This would allow the use of stories and characters from the earlier works, while still protecting latter works from free use without a licence fee.

After Justice Castillo's placement of the pre-1923 works in the public domain, his Honor had to further evaluate whether the post-1923 works would fall in the public domain, or remain under copyright. Both Mr. Klinger and the Estate accepted that certain characteristics differed from the pre-1923 works, having only originated from works written past 1923. The court utilized the 'increment of expression' test, set in Schrock v Learning Curve International, to determine which elements would fall under copyright in the latter works. Under this test "...the only 'originality' required for [a] new work to be copyrightable... is enough expressive variation from public-domain or other existing works to enable the new work to be readily distinguished from its predecessors". This principle, although prima facie would seem to apply to wholly new works, has been deemed to apply to derivative works as well; something which the court accepted that the post-1923 written works be. Mr. Klinger's argument failed as no evidence was given to disprove the differences between the pre-1923 works and the post-1923 works, offering protection for the latter even in the absence of protection for the former.

In its final determination the court saw that Mr. Klinger, and others, could use the pre-1923 stories and characters, while still protecting the later works. The Estate's lawyer stated that they are "...exploring an appeal but asserted that the ruling did not imperil any existing licensing agreements or the estate’s separate claims under trademark law". Under his legal victory Mr. Klinger released a statement, seeing that "...people want to celebrate Holmes and Watson. Now they can do so without fear of suppression by Conan Doyle’s heirs".

The decision is very important, not necessarily in terms of legal precedent, but due to the sheer popularity and fame which the Sherlock Holmes name carries in itself and its intricate stories. Even though the court only accepted that the pre-1923 works belong in the public domain, one can imagine the freedom will inspire many to create their own stories involving the famous detective and his sidekick. Whether the Estate will go forward with their appeal remains to be seen, but many will undoubtedly be glad of Mr. Holmes being open for use, at least partially.

Source: Arts Beat