Jejune IP Law

Photo by Odalaigh, some rights reserved

I wrote last month about examples of bad IP law – articles in the press that misrepresent and confuse the various distinctions of intellectual property law.  A couple of articles this week have moved my thoughts on, ever so slightly, to the prevelance of IP myths.

Legal Bizzle has posted today on two Comment is free pieces that appeared on The Guardian’s Occupy Cif pages today.  Bizzle’s ire was mainly (and rightly) directed at Jon Witterick’s piece on defaulting on your debts as a viable economic option.  The cigar chomping bear has already expertly (and with some panache) deconstructed a number of Witterick’s claims regarding debt collectors and fractional reserve banking so I will turn my cannon on one of the intellectual property issues raised instead.

One of Witterick’s recommended alternatives to actually paying off your debts is what he calls “Option 3: Copyright and Trademark Procedure” – he obviously hasn’t read my last post, else he’d know it’s “Trade Mark”, but that’s really the least of our worries.  It is based on a dubious assumption that if the debt collection agency cannot use your name without your permission, they cannot write to you and ask for the money back.  Or if they do, you can sue them for infringement and claim a massive amount of damages (£10m per use is suggested – quantum? What quantum?)

This procedure, it is claimed, “offers a greater level of protection” (than Witterick’s others) against those pesky debt collectors who have had the gall to ask you to pay back some money you’ve borrowed.  All that you need to do is “take control of your Uppercase/capitalised name or Strawman in Common Law and International Treaty” – whatever that means.

Apparently, this taking control just requires you to make a “Declaration of Copyright Trademark” whatever that may be.  Fortunately a quick Google search turns up a number of examples (alternatively you can sign up to Witterick’s website and get access to his own suggested wording for free (or £5 if you need it in a hurry)):

Declaration of Copyright Trademark.
I am known by the name: ©In-house: Hotshot, Creditor, Trustee, Secure Party, Author of the Copyright Name Trademark Claim autograph (IN-HOUSE HOTSHOT™) or any derivative thereof HEREBY ATTEST THAT, I am competent and capable of handling my private and commercial affairs in my full capacity as Agent for the name IN-HOUSE HOTSHOT™ and will enforce with prejudice any Copyright Name Trademark Claim infringements. ALL RIGHTS RESERVED

Now I’ve worked in trade mark and copyright law for a few years (well, long enough to know they’re not interchangeable terms anyway) and strangely this expertly drafted piece of prose has never come up in my studies or practice of IP law.

This may be because it is, in technical parlance, absolute bollocks.

While the freemen of wherever are correct to say that copyright and trade mark rights can arise without the need for registration, they cunningly gloss over the key requirements for each set of rights.

Photo by 917press, some rights reserved

Copyright protects “original literary, dramatic, musical or artistic works, sound recordings, films or broadcasts, and the typographical arrangement of published editions” (Copyright, Designs and Patents Act 1988, section 1) – see any mention of names there?  No, me neither.

More importantly, copyright will only apply to a work of “independent creative effort” where “sufficient skill and labour has been expanded in its creation” – and I’m sure mummy and daddy straw man put a lot of thought into choosing baby straw man’s name, but I doubt it can be considered a high level of skill and labour (bad birthing puns excepted).  And if they did, well, surely the copyright is theirs as original authors, no?

In case you were starting to have doubts, the UK IPO handily provides a note on its copyright pages that (perhaps Meltwater notwithstanding) “names and titles do not have sufficient substantiality to be original”.

So there is no way that you (or your parents) can own copyright in your name.  Unless your name is coincidentally the first twenty pages of Harry Potter and the Deathly Hallows (or any other literary work), and even then I think JK Rowling and Bloomsbury’s lawyers might want a quick word.

Photo by caitlinburke, some rights reserved

So what about trade marks?  We read plenty of news stories about how Lady Gaga (UK TM registration number 2509635), Sarah Palin (US TM registration number 4005353) and David Beckham (CTM registration number 1796721) have registered their names, and if a name can be registered as a trade mark, surely it can exist as an unregistered trade mark too and then you could base a claim for infringement on these rights?

Well no.  Unregistered trade marks can only be protected through the common law wrong of passing off.  To succeed in a passing off claim you need to show the mark is yours and then establish the ‘holy trinity’ of reputation, damage and confusion:

  • The mark is yours – well that’s easy, we have our beautifully erudite Declaration of Copyright Trademark which has been published in the local newspaper and pasted onto our Facebook page.
  • You have built up a reputation in the mark – simple, I’ve been using mine for twenty-seven years now and it’s what everyone from my girlfriend to HMRC know me as.  What renown!
  • Damage – well of course – you’re using this name as a way to try and get me to pay back the money I owe – that’s pure economic loss right there I’d say.

So success right?  Well no.  What about confusion?  In order to prove confusion you need to show that there has been a false representation to the public which has led them to believe that the goods and services of the defendant (i.e. the debt collection agency) are those of the claimant (our Mr Strawman©™ etc).

This therefore requires a connection between the trade of our straw man and the business of debt collection.  This seems unlikely, unless while resisting the repayment of his own debts he operates a business that has been pursuing others for repayment of their own.  That’s beyond even Morissettian levels of irony, but doesn’t scan nearly as well, or rhyme with “dontchathink”.

So you cannot rely on unregistered trade mark rights in your name (though they may exist) to stop the wretched debt collector from calling unless you yourself are a debt collector, who has himself  run up a debt, and you can establish that the debt collector pursuing you has confused you (as a consumer), or potentially the original lender (as a purchaser of debt collection services), into believing that they are actually you and not an independent, completely unrelated debt collection agency, despite (presumably) their use of their own trading name which is in no way similar to your own name, and their use of your name as a way of addressing letters to you.

And what are the chances of that?  Better or worse than rain on your wedding day if you are a weather forecaster, or a traffic jam when you, as chief town planner, are already late for a meeting about alleviating traffic congestion?

Anyway, I’ve mentioned before that Taylor Wessing have published a list of what they term “Dangerous Intellectual Property Myths” and I think that today has shown us that we can add another one to the list, possibly just after the damaging reliance on ‘poor man’s copyright’:

“Because copyright and trade mark rights can exist without registration, all I need to do is say my name is eligible for copyright protection and is also a trade mark and it is so”

Sadly in this case it isn’t true, as Shakespeare almost said, that nothing is either eligible or ineligible for extensive IPR protection, but thinking makes it so.

Red All-Over: A Simple Distinction in Black and White

Photo by JamesRoseUK, some rights reserved

David Allen Green, new media legal darling and sedulous blogger at Jack of Kent (as well as approximately one hundred and one other places these days) wrote last week of another example of “Bad Law” – press articles which misrepresent or misunderstand the law to the extent that they serve only to undermine the public’s image of what the law is, and the excellent legal news reporting of the rest of the industry.

This theory of Bad Law reached the forefront of my mind again this week when a prime example cropped up in the Indy’s little sister, Itheir report on the latest twist in the Christian Louboutin v Yves Saint Laurent trade mark infringement case.

In brief, the case relates to a claim by Louboutin that YSL’s use of a red-painted sole on its posh (but not as posh as the claimant’s) high-heeled shoes is an infringement of his US registered trade mark (number 3,361,597 in case you’re wondering) for the use of red lacquer on the soles of women’s shoes.

Photo by Mr. Donut, some rights reserved.

I got itself into a right muddle over some simple intellectual property terminology and fell into the common trap of thinking all IP cases relate to copyright.  After initially making the right call and referring to Louboutin’s claim that a colour can be trade marked (ok they used the American trademarked, but we can let them off seeing as everyone seems to do that these days), the paper went on to say that Louboutin had claimed that YSL’s use of red infringed his copyright.  In fact, the excellent fashion law blogs at Styleite and Law of Fashion make no reference to copyright in their considerations of the case – presumably because it is not the same as trade mark infringement and therefore quite irrelevant to this case.

Bad Law reporting in relation to intellectual property has a long pedigree, and you only have to go back to mid-September to find another prime example in the national press.  In this article, the Daily Mail went full-throttle (the default setting for Mail news reportage) against British copyright law for banning the estimable British Sugarcraft Guild from allowing any Olympic imagery in their 2012 cake-baking competition.  All well and good (so long as you can stomach the Daily Mail’s firebrand style of writing) apart from the fact that LOCOG’s grounds for objecting to the cake contest were rooted in trade mark law and the specially enacted (and largely ridiculous) London Olympic Games and Paralympic Games Act 2006.

Photo (& cakes) by Micala, some rights reserved.

So why has copyright become a catch-all term for all intellectual property rights?

Are modern journalists really unable to get their heads round the distinction between the classes of intellectual property rights?  If so, they’re not alone.  Most lawyers outside of technology/media teams struggle to tell the difference, so why should the newspaper reading public be expected to know any better?  Especially if they are being spoon-fed by Bad Law news reporting.

As someone who works in the mysterious world of IP law on a daily basis, and who has been called upon to give training to lawyers, marketers and IT-bods, I now take it upon myself to offer up the following simple explanation:

TRADE MARKS (two words in the UK, please)

These protect any sign capable of graphic representation which distinguishes one business’s goods or services from another’s.  These include names (such as “Christian Louboutin”), logos (such as Apple’s apple), catchy slogans (like Audi’s “vorsprung durch technik”), colours (like Cadbury’s purple), or sounds (like the MGM lion’s roar).

Christian Louboutin has a US trade mark registration for the use of red soles in relation to ladies’ shoes.

Photo by verbeeldingskr8, some rights reserved.

PATENTS (that’s pah-tunts not pay-tents in the UK, please)

These protect inventions (processes or ways of doing things) and must be new and involve an inventive step.  UK patents cover things like Dyson’s bagless vacuum cleaner, Dunlop’s pneumatic tyre, Atkinson’s classic mousetrap and Churchman’s manufacturing process for chocolate (although strictly speaking the last three of these at least have expired).

For the avoidance of doubt, you cannot patent red-soled shoes (unless you have an innovative way of getting red paint onto the soles of shoes) – the concept of shoes is generally well-known.

Photo by Chen Hao Hsuan, some rights reserved.

REGISTERED DESIGNS

These aren’t as well-known as their brothers, and cover the visual appearance of a product, perhaps the contours of a Coca-Cola bottle.

Christian Louboutin has a design registration for a style of zip used on a shoe.

Photo by MCaveen, some rights reserved.

COPYRIGHT (never copywrite or copyrite anywhere in the world, please)

This protects the expression of an idea, be it a literary, dramatic, musical or artistic work.  It covers, well pretty much anything, and arises automatically upon creation.  It can be recognised by the use of the © symbol.

Christian Louboutin will have copyright in his shoe designs assuming they can be considered an artistic work (and Miss HotShot certainly believes this to be true), but if he doesn’t raise this in his court case, it is not accurate to describe it as a claim of copyright infringement.

Photo by Sam Teigen, some rights reserved.

Give a Good Account of Yourself

Photo from thinkpanama, some rights reserved.

Jeremy Phillips venerable scrivener-in-chief of the IPKat tweeted on Thursday about a meeting with his new bank manager:

Professor Phillips went on to explain that:

 

Now, my role often exposes me to the early stages of product naming at HotShot Bank Inc and should put me in a position to fully understand the reasoning behind bank policy on branding and product naming.

We have a branding policy which provides that all new product names should be descriptive, and a trade mark policy which provides that all new product names should be cleared and registered as trade marks where appropriate.

The keen-eyed among you may have noticed a dichotomy here.  Descriptive names cannot be registered as trade marks.  This is a well accepted principle of trade mark law, and prevents the Rubbery Tyre Company from registering “RUBBERY” as a trade mark in relation to its tyres.

For many years, as Professor Phillips points out, consumer banks in the UK have got round this issue by applying for trade mark which mask the descriptive nature of their account names with some distracting distinctive element – usually an existing house mark.  This enables them to obtain registration for names like “Fancy Bank Current Account” and “Fancy Bank Gold Card” despite the fact that “current account” and “gold card” are clearly generic in the industry, and potentially purely descriptive.

This practice has also relied on a whole world of unspoken co-existence between the banks as they all sit back and allow their competitors to register effectively identical marks, so long as they are preceded by a differentiating house mark.  As a result Fancy Bank will turn a blind eye to the “Posh Banking Corp Current Account” and “Posh Banking Corp Black Card” (let’s face it, Posh Banking Corp would be a little more exclusive, wouldn’t it?).

So what effect does this have on brand recognition?  Well I would wager that most banking customers couldn’t tell you the name of their main bank account.  Or at least not the name that their bank knows it by.  They will know which bank it is with (we hope), but they will most likely just refer to it as their “current account with My Bank”.  They may, if they hold a premium account with a bank refer to it by its full name, (perhaps the Fancy Bank La-di-da Account?) or just generically as one of those premium accounts with Fancy Bank.  Either way they will see it as their current account or premium account with Fancy Bank, not their Fancy Bank Current Account® or Fancy Bank La-di-da Account®.

Photo from Robert Stokes, some rights reserved.

So how do the banks differentiate their accounts?  They might spend millions on getting sports stars to endorse them and appear in posters, they might spend hundreds of thousands on TV and poster advertising, but really all this does is push the house mark.  I would wager that the majority of new customers who walk into a branch of Fancy Bank having seen their fancy new poster campaign will just ask to open “a new account”, or maybe “that new account with whatshisface in the ads”.  Not many of them will ask to open a “new Fancy Bank Exploso-Account”.  Of course many of them will ask to open “a new current account”, but importantly they are asking for this in a generic sense rather than the ® sense.  So to an extent the trade mark of “Fancy Bank Current Account” has already served its purpose as an indicator of the source or the services when the customer walks into the bank.

So to what extent does the registration of “Fancy Bank Current Account” serve any purpose?  Well it doesn’t.  Does it even act as a trade mark?  No it doesn’t.  Does that mean banks with stop registering these names?  No it doesn’t.  The risk adverse will still go ahead and assume they get some protection for their use of “Fancy Bank Current Account” despite the fact that it really offers no more protection that their hundreds of other registrations for Fancy Bank, but to use an old law school analogy, in a game of Ring of Fire, no one wants to be the first to break the circle.

Same Same but Different: When is Racing Green not Racing Green?

Photo from byronv2, some rights reserved.

Similarity of trade marks is a tricky issue.  After all, one man’s leaping cat is another man’s sleepeh kitteh and either way, there has been a wealth of guidance, legislation and case law regarding what is and is not similar to, well, just about anything else.

But how similar is too similar, and where do we draw the line on colours and shapes?

If a company has a distinctive mark which features a simple symmetrical geometric shape and another company begins using the same shape, in the same colour, I think we can agree we have a pretty clear-cut case of infringement.

If that second company then slices its mark in half, I think most observers would say their new mark (especially if it remains in the identical colour) is still infringing.

But what then if the infringer bows to pressure from the original company and agrees to change the colour of its new half-logo.  How much of a change is reasonable?

Most brand owners I am sure, would want to see a move from one colour to another; two different colours, not two different shades, not just two Pantone numbers apart.

I certainly had a change from green in mind.  To yellow perhaps, or orange?  There are a lot of colours that aren’t green after all.  But no, green it was.  A lighter green sure.  But marginally.  A different-on-screen-but-print-it-out-and-you-can’t-really-tell-the-difference shade of green.

Photo from prorallypix, some rights reserved.

Now colour is tricky.  I’m sure the IT/design purists will tell you that there is no such thing as identical colours when you’re comparing screenshots to posters, to letterheads to multi-million pound rebranding campaigns.

Beyond that, even in real life, we can say that both cars above are green; but are they the same green?  Are they an identical green?  Are they a similar green? Well yes they are, but are they an identical or a similar green for the purposes of s5(2) of the Trade Mark Act 1994?

So here’s the rub, when is a colour not identical?  Is racing green still racing green when it’s Pantone 553, or Pantone 555?

Among the many “Dangerous Intellectual Property Myths” that Taylor Wessing launched this time last year was the oft-quoted “it’s not infringement if it’s two Pantone shades away from a coloured trade mark or design”.  As TW said themselves:

“two shades is not much of a change. It is unlikely to turn a confusingly similar logo into one which does not cause a likelihood of confusion.”

So that clears that up.  But what about three shades?  Five shades?  Ten shades?  Is there a magical dividing line where “confusingly similar” becomes “not at all alike”?  Perhaps known only to a select few Court of Appeal judges and some in-the-know members of OHIM’s Opposition Division?

Of course there isn’t; it is well-received in the UK that marks must be compared on the basis of their visual, phonetic and conceptual similarity.  Consumers might view marks as a whole, but us dispassionate lawyers must focus on the distinctive and dominant components of the two marks.

So while phonetics might not count for much in this instance, we can still see that two marks which consist of an identical shape (cut in half in one representation) in the same shade of dark green will still be confusingly similar for the purposes of European trade mark law.

But will this convince an opponent to substantially change the colour of their mark?  Will it hell.