Impulsive Decisions - Reputation of a Trademark in Europe

In the world of trademarks the goodwill, or in other words reputation, of goods and services is paramount for their protection and enjoyment in a relevant territory. As commerce has become more and more global, with other territories seeing goods or services after their introduction to others, jurisdictional issues are even more poignant and relevant, providing a judicial headache for many attempting to benefit from those limitations (for example, in the recent NOW TV case, discussed here). Community Trade Marks, or CTMs for short, are registered as European-wide trademarks, but the goods or services' introduction to all of the Member States can sometimes differ, and potentially leave their registration open to challenge. Could, however, a proprietor prove goodwill in a Member State through use in other Member States, without actually having a commercial presence for that item in the Member State in question? Luckily, the European Court of Justice answered this question over a month ago.

The case of Iron & Smith v Unilever dealt with a national application for the mark "be Impulsive" in Hungary, lodged by Iron & Smith. The application was challenged by Unilever on he basis of their earlier mark "IMPULSE" (CTM 3116233); however they failed to demonstrate goodwill in Hungary, although Unilever had done so, arguably at least, in the UK and Italy.

The Court was asked four questions, the first three of which were distilled down by the Court as "...what conditions, in circumstances such as those at issue in the main proceedings, are to be met in order for a Community mark to be regarded as having a reputation in the European Union, pursuant to Article 4(3) of Directive 2008/95".

Extending beyond one's limitations can be a good thing

After a brief consideration of precedent relating to goodwill the Court quickly saw that "...if the reputation of an earlier Community mark is established in a substantial part of the territory of the European Union, which may, in some circumstances, coincide with the territory of a single Member State, which does not have to be the State in which the application for the later national mark was filed, it must be held that that mark has a reputation in the European Union". What this means is that you don't have to prove reputation all over Europe, but only in a substantial part of it (how ever that might be defined), in order to establish reputation in any Member State. This is a curious finding, as not all nationals of all Member States are aware of goods or services elsewhere in the Union, and effectively creates goodwill in those that have not, and might never, see those goods or services.

The final remaining question for the Court was also put in very succinct terms: "...in what circumstances Article 4(3)... is applicable if the earlier Community trade mark has already acquired a reputation in a substantial part of the territory of the European Union, but not with the relevant public in the Member State in which the registration of the later national mark concerned by the opposition has been applied for".

The Court, again, briefly considered earlier decisions, and concluded that "...if the earlier Community trade mark has already acquired a reputation in a substantial part of the territory of the European Union, but not with the relevant public in the Member State in which registration of the later national mark concerned by the opposition has been applied for, the proprietor of the Community trade mark may benefit from the protection introduced by Article 4(3)... where it is shown that a commercially significant part of that public is familiar with that mark, makes a connection between it and the later national mark, and that there is, taking account of all the relevant factors in the case, either actual and present injury to its mark, for the purposes of that provision or, failing that, a serious risk that such injury may occur in the future". The answer relates heavily to the above, as if goodwill is proved in a significant part of the Union, it is possible to rely on a CTM to invalidate a national mark, provided there is actual or potential damage to the CTM or its owner if the national mark were to be registered.

Overall the decision of the Court seems odd, effectively creating goodwill where none have existed in evidential terms, but aligns itself with earlier precedent. To prove goodwill or reputation in any European Member State one only has to prove it in a 'significant' portion of the European Union, which, to this writer's mind, expands the remit of an unused CTM beyond that for which it is intended (even if the mark is registered in the whole of Europe). Although the Court's rationale aligns itself with earlier decisions, it seems to give rights where no rights existed, potentially even hindering legitimate competition. Nevertheless, this writer will not purport himself to know better than the judges at the Court, but is puzzled by this outcome nonetheless.

Source: IPKat 

Knowledge for All - Google Books is Fair Use

Information, and access to it, is an incredibly powerful tool to create progression, social mobility and to affect even the biggest nations in wondrous ways. True or not, this writer is a firm believer in the dissemination and sharing of knowledge (even through blogging), and many initiatives have strived to give access to knowledge and information to those who cannot do so themselves. One such initiative is Google Books (in some ways), although clearly still laced with the sub-text of corporate gain, allowing for "...people everywhere [to be] able to search through all of the world’s books to find the ones they’re looking for". By no means altruistic, yet quite useful, the project aims to scan all of the world's books into one database, using it to allow people to find information quickly, effectively and inter-connectively (this writer notes this is not a sales pitch, even if it sounds like one). The project came under fire some time ago, prevailing initially, but the case since moved on to the US Court of Appeals, which handed down its judgment only last week.

To give this story some color, the case of Authors Guild v Google Inc dealt with the aforementioned project, where snippets of books (in image form or not) are presented to a user who searches the database for a word, phrase or sentence, with the results containing one or more instances of the search terms used in brief context. Some participating research libraries have also allowed Google to retain digital copies of some works under strict contractual terms. The Authors Guild did not accept this use of its authors' works (many of which act as plaintiffs in the matter), and took Google to court for copyright infringement.

The crux of the case lied in whether Google's use in the provision of its snippets and its search facility in seeking out the relevant content in the books amounted to fair use under 17 USC section 107 (and the four factors used to assess whether a use of a work amounts to fair use). The Court of Appeals proceeded, therefore, to apply the four factors of fair use to Google's service.

Gary struggled to find what he was looking for.
If only there was a better way...

The first factor looks at what the purpose and character of the secondary use of the work was, i.e. whether Google's use of the copyright protected works was in any way 'transformative'. The Court quickly saw that Google's search capability was highly transformative, as "...the purpose of Google's copying of the... books is to make available significant information about those books, permitting a searcher to identify those that contain a word or term of interest, as well as those that do not include reference to it. In addition, through the ngrams tool, Google allows readers to learn the frequency of usage of selected words in the aggregate corpus of published books in different historical periods". What Google's service allows for users to do is very different than the character and purpose of the books themselves, making their use of the works quite transformative. They also saw that the snippets added something more to the search function, and is in itself also transformative, allowing for a more in-depth assessment of context and relevance when searching for information to the user. Google's commercial motivation did not negate this finding.

The Court determined, briefly, that the second factor (nature of the protected work) played very little part in the assessment of fair use.

When looking at the third factor (the amount and substantiality of what was copied), Judge Leval, handing down the majority's judgment, determined that as no full copies were made available to the public by Google of the scanned books, the search function did not copy a substantial amount. The snippets shown in the results did not, in Judge Level's mind, give enough material to the reader to substitute the protected works, as only very small amounts of text are revealed to each individual user.

Judge Leval finally looked at the fourth factor, assessing the effect of the works' use upon the potential market for or value of the copyrighted works. Although the Court did recognize that there could be an impact on the works or their potential market, albeit a small one, it still had to be "...a meaningful or significant effect" for there to be an issue under the fourth factor. Even if the snippets display some facts or information, and thus detract from a need to purchase the works, they still offer very little in the form of a substitute to the original works and would not cause much of an impact in the works' potential market.

Google's Books project was therefore deemed to fall under fair use.

What the decision in hand showed us is a clear need for there to be more direct interference in an author's use of a work, and their monetary gain from it through its intended purpose (loosely said, at least). What Google created was a tool, not a substitute, that by no means superseded the original works, but allowed for them to be searched and reviewed partially, while leaving much to the original that needed to be looked through to understand the bigger, more accurate picture. The decision came as no surprise to this writer, as Google Books is nothing more than that, yet still very useful for those seeking to find a snippet of information or a factoid. Whether the matter will go to the Supreme Court remains to be seen, but the Authors' Guild has promised to take the matter further, and this writer will await the granting (or denial) of certiorari by the Supreme Court with interest.

Source: IPKat

No Cause for Celebration - Happy Birthday To You Deemed to be Out of Copyright

Birthdays are a peculiar phenomenon when fully dissected and thought through, yet they evoke an image of youthful bliss and happiness, along with often copious amounts of presents and sugary foods. Almost every language and culture celebrates birthdays (bar some religions etc.), and wishing someone a happy birthday can be as colorful and varied as the cultures themselves. A big part of Western birthday traditions is the song "Happy Birthday to You" (and other regional variants thereof), which has been held under lock and key by Warner/Chappel Music, and as discussed over two years ago on this very blog, the saga challenging its copyright protection has been a long and arduous one. The case has since reached its newest milestone, which will be cause for celebration for many, and a loss for the few.

For the uninitiated, the case of Rupa Marya v Warner/Chapell Music Inc dealt with the aforementioned song "Happy Birthday to You", which was created by the Hill sisters, Mildred and Patty, in the late 1800s (although only in melody). Their original song, "Good Morning to All", featured the melody we associate with the above song, however the lyrics were only changed some time after the publication of Good Morning to All in a collection of songs by Clayton Summy, who had acquired the rights to the song in the 1890s. The author of the lyrics to Happy Birthday to You is largely unknown. Rupa Marya, as a part of a class-action lawsuit, asserted that Warner/Chappell did not own the copyright in the song, and that "...they should be compelled to return the “millions of dollars of unlawful licensing fees” they have collected by wrongfully asserting copyright ownership in the Happy Birthday lyrics".

The first consideration for the District Court for the District of Central California was whether the copyright in the lyrics to the song actually vested in Warner/Chappell. As the acquisition and transfer of the rights to Good Morning to All, and the creation of the lyrics to the derivative work Happy Birthday, remained unclear, the Court had to discern whether the rights to the work vested in their alleged owner (i.e. who wrote the song Happy Birthday), and if so, whether they were correctly assigned onwards affording Warner/Chappell enforceable rights to the song.

Warner/Chappell had very little to celebrate after the decision

In determining the ultimate author of the song, judge King saw that, even though claiming so under oath in a deposition, Patty Hill had not written the lyrics, as several other authors either directly or indirectly had claimed to have done so, and very little evidence illustrated that Patty Hill had concretely written them. Also, under old US law, an author could lose their rights in a word if they publish it before seeking proper registration or publishing it without proper notice, effectively forfeiting their federal and state common law rights. Judge King saw that, in the absence of authorized publication of the song, the defendant had not divested their rights through publication. Although claimed, the court did not find that the lyrics had been abandoned by Patty Hill, even though evidence was put forth to this effect, as the hearsay evidence provided was non-conclusive. As no author was clear, the motion was denied and the Court moved onto the question on ownership of the rights.

The main focus of the case was then the transfer of the rights to Mr. Summy by the Hill sisters in 1934. Through two separate agreements, neither of which has survived from their drafting in the 1930s, the defendant alleged that it had indeed transferred the rights to the lyrics to Mr. Summy. The Court rejected their arguments, and saw that the only transference that had occurred was for the piano melody of the song Good Morning to All, with no reference to the lyrics or the derivative work Happy Birthday to You being a part of either agreement. Judge King therefore concluded that the rights to the lyrics for the song Happy Birthday to You had not been transferred to Mr. Summy, and ultimately to Warner/Chappell Music. The case leave the ownership of the copyright for the song in doubt, potentially causing for the song to fall into the public domain before the end of its copyright term.

The case shows an important facet of copyright and intellectual property, the importance of the chain of evidence. Should there have been concrete provenance of a transfer of rights, the rights in the lyrics to Happy Birthday would have vested in Warner/Chappell Music. In the end, the uncertainty in evidence and the inception of the lyrics to the song left them with very little recourse to protect their rights, and lost them as a result. No repayment of license fees was discussed by judge King; a point that might be contested in court some time in the future. Whether Warner/Chappell will appeal remains to be seen, but this writer doubts the likelihood of this.

Source: The Guardian