This part for the question that I have to completely answer The question is about Copyright and Trademark Law

This part for the question that I have to completely answer
The question is about Copyright and Trademark Law
Jane Adams has published a novel. The central character is called Dr Henry Smart: he is a University Professor of Forensics and solves the most mysterious crimes in collaboration with the local police team. Jane’s book becomes a best seller and Movix Pictures Ltd asks her permission to create a film based on her book.
Jane discovers the following activities relating to her work and comes to you for legal advice.
• Dennis Stuart has published a book, using Dr Smart as a central character. He refers to incidents mentioned in Jane’s book but he does not copy her original expression. In his book, he explores the childhood of the man who later became Dr Henry Smart.
• Movix Pictures Ltd has appointed Ed McRury, a screenplay writer, to work on the film adaptation of Jane’s book. In an interview released to Screen International, Ed has expressed his intention to change parts of Jane’s story in the film adaptation of the novel. He will create incidents that are not included in the original plot and indicate that Dr Smart suffers from an unusual psychological condition.
• TV-Fashion Ltd prints mugs and T-shirts bearing the name “Dr Smart” and short sentences from Jane’s book. They have not requested a license from Jane but in their products they attach a label that this is “unofficial” merchandise.
• Dr James Smart, an expert of herbal medicine, registers a trade mark “Dr Smart” under classes 5, 20 and 30, and places his “Dr Smart herbal teas” on the market.
Advise Jane on the available courses of actions to protect her interests.
Remark :
90% of available marks will be allocated to the application of judicial decisions, judicial and academic comments to the topic under discussion and no limited writing style. You may present information in the way that best conveys your ability to analyse and apply your knowledge, understanding, and research.
This part for detail in the program that it may be useful for answer the question
Relevant books:
Paul Torremans, ‘HolyoqkqndTorremans : intellectual property law” (7th end Oxford press 2013
Lionel Bently and Brad Sherman, “Intellectual Property Law” (4th edn Oxford press 2014)
Catherine Colston and Jonathan Galloway, “Modern Intellectual Property Law”(3th ednRoutledge 2010)
University of London Press Ltd v. University Tutorial Press Ltd (1916)
Colston and Jonathan Galloway, “Modern Intellectual Property Law”(3th ednRoutledge 2010)[p34]
Catherine Colston and Jonathan Galloway, “Modern Intellectual Property Law”(3th ednRoutledge 2010)
Core texts:
• Bently& Sherman Intellectual Property Law (OUP)
• Bainbridge, Intellectual Property (Longman)
• Cornish, Llewelyn&AplinIntellectual Property (Sweet & Maxwell)
• Holyoak&TorremansIntellectual Property Law (OUP)
• Waelde, Laurie, Brown, Kheria, & Cornwell Contemporary Intellectual Property: Law & Policy (OUP)
Reports and Law Reviews
As well as the general law reports (e.g. the Weekly Law Reports and the All Englands), there are a number of specialist intellectual property law reports, many of which are available on Westlaw. Also, the European Court of Justice and the Court of First Instance are responsible for a fair number of intellectual property decisions which are reported in the general European Court Reports (ECR) series.
Specialist law reports
ECDR – European Copyright and Design Reports
ETMR – European Trade Mark Reports. N.B. cases are cited by case number, not page number
EMLR – European Media Law Reports
FSR – Fleet Street Reports
RPC – Reports of Patent Cases [though these now include decisions on other IP rights]
Main intellectual property journals (selection)
EIPR – European Intellectual Property Review (available on WESTLAW)
IPQ – Intellectual Property Quarterly (available on WESTLAW)
JIPLP – Journal of Intellectual Property Law and Practice (available through Oxford Journals)
JWIP – Journal of World Intellectual Property
IIC – International Review of Intellectual Property and Competition Law (available on WESTLAW)
EntLR – Entertainment Law Review (available on WESTLAW)
TMR – The Trademark Reporter
QMJIP – Queen Mary Journal of Intellectual Property
Main legislation
National
CDPA 1988 – Copyright, Designs and Patents Act 1988 (as amended)
TMA 1994 – Trade Marks Act 1994
European
TM Directive – Directive 89/104/EEC (consolidated as Directive 2008/95)
CTM Regulation – Regulation (EC) No. 207/2009 on the Community Trade Mark
InfoSoc Directive – Directive 2001/29 on Copyright in the Information Society
International
Paris – Paris Convention for the Protection of Industrial Property, 1883
Berne – Berne Convention for the Protection of Literary and Artistic Works, 1886
Madrid – Madrid Agreement Concerning the International Registration of Marks, 1891
TRIPs – Agreement on Trade Related Aspects of Intellectual Property Rights, 1995
WCT – WIPO Copyright Treaty, 1996
WPPT – WIPO Performance and Phonograms Treaty, 1996
Useful web resources
NAME
LINK DESCRIPTION
The United Kingdom Intellectual Property Office (IPO) www.ipo.gov.uk
Body responsible for IP in the UK
World Intellectual Property Organisation (WIPO) www.wipo.org
UN specialist agency responsible for IP
World Trade Organisation (WTO) www.wto.org
Body responsible for the TRIPs Agreement
Office for Harmonization in the Internal Market (OHIM) www.oami.europa.eu
Body responsible for pan-European trade marks and designs
UK Courts www.hmcourts-service.gov.uk
Details of forthcoming cases and recently handed down decisions
British and Irish Legal Information Institute www.bailii.org
Database of UK and Irish court decisions
European Union Law www.europa.eu
The EU’s portal
European Court of Justice www.curia.europa.eu
Decisions of the ECJ from 1997 onwards
IPKat www.ipkitten.blogspot.com
IP blog
The 1709 blog http://the1709blog.blogspot.com/
Copyright blog
Kluwer copyright blog http://kluwercopyrightblog.com/
Copyright blog
Marques www.marques.org/class46/
Trade mark blog, hosted by Association of European Trade Mark Owners
EDRI – Protecting digital freedom www.edri.org
Digital civil rights in Europe
Out-law www.out-law.com/
Updates on IT and Internet Law
Trade marks
Rationale, international framework, registration
Core reading:
TRIPS, Paris, Madrid
TM Directive 89/104/EEC (consolidated as Directive 2008/95)
CTM Regulation (EC) No. 207/2009
Trade Marks Act 1994
Trade mark registry work manual:
http://www.ipo.gov.uk/pro-types/pro-tm/t-law/t-manual.htm
Further reading:
Rationale
F. Schechter (1927) ‘The Rational Basis of Trademark Protection’, 40 Harvard Law Review 813
‘The Case for Brands’, Economist 8 Sept 2001
Klein, Naomi (2000) No Logo, London: Harper Collins
L’Oréal v. Bellure [2009] Case C-487/07 ECJ; criticized by Jacob LJ in L’Oréal v. Bellure [2010] EWCA Civ 968, CA (function of trade mark, and overlap with unfair competition and free speech)
Philip Hardwick and Martin Kretschmer, The Economics of Geographical Indications, Ch. 3 in Geographical Indications, Edward Elgar (chapter from forthcoming book, uploaded under unit materials)
Classes
Nice Classification: www.wipo.int/classifications/nivilo/nice/index.htm#
Altecnic’s TM Application [2002] RPC 34, CA
Absolute and relative bars
Core reading:
British Sugar v. James Robertson [1996] RPC 281
Further reading:
Sign: “clear precise, self-contained, easily accessible, intelligible, durable and objective” Sieckmann [2002] ECJ C-273/00
Sound
First bars of Beethoven ‘für Elise’ and sound of cockerel
Shield Mark v. JoostKist [2003] C-283/01, ECJ
Colour
Wrigley Jr. Co./Light Green R122/1998-3 [1999] ETMR 214
Third board of appeal at the OHIM: shade of light green for chewing gum may not lack capacity to distinguish, but some trade mark recognition not sufficient
Libertel v. Benelux Merkenbureau (ECJ C-104/01, 6 May 2003; FSR (4) 65)
Colour orange is not per se a sign. Consideration is given to use of the colour, and to other traders’ ability to use colours on similar goods or services.
s.3(1)(c): sign wholly descriptive
BABY-DRY was capable of distinguishing disposable nappies ECJ C-383/99 P [2002] RPC 16 (seen as problematic decision)
Dart Industries Inc v. OHIM (ULTRAPLUS)[2003] ETMR 406
“unusual juxtaposition of words” for plastic ovenware for use in microwave, convection and conventional ovens: thus capable of distinguishing
Wm Wrigley JR v. OHIM (DOUBLEMINT) ECJ C-191/01 (setting aside CFI): “exclusively descriptive” must take account of whether word “was capable of being used by other economic operators to designate a characteristic of their goods and services” (23/10/2003).
Audi AG v. OHIM; ECJ T-16-02: TDI generally stands for Turbo Diesel Injection (descriptive). Audi failed to prove that it had acquired distinctiveness (03/12/2003)
s.3(1)(d): sign generic, describing products regardless of commercial origin
Bach Flower Remedies v. Healing Herbs [2000] RPC 513 (CA)
BACH FLOWER REMEDIES initially capable of distinguishing, had by use become a common trade name for the products in question (employing the teaching of Edward Bach)
“average consumer” criterion: “reasonably well informed, reasonably observant, circumspect” (approved: Lloyd Schuhfabrik Mayer v. Klijsen Handel BV, Case C-342/97 [1999] 2 CMLR 1343)
Wrigley Jr. Co./Light Green R122/1998-3 [1999] ETMR 214
Third board of appeal at the OHIM: shade of light green for chewing gum may not lack capacity to distinguish, but some trade mark recognition not sufficient
Windsurfing ChiemseeProduktions- und Vertriebs GmbH v. Boots- und Segelzubehör Walter Huber [1999] ETMR 585, ECJ
CHIEMSEE: evidence of distinctiveness through use weighted against keeping a geographical sign available to other traders; very well known geographical designations can acquire distinctiveness only through longstanding and intensive use of the mark.
s.3(2)(b): shape necessary to obtain technical result
Philips Electronics NV v. Remington Consumer Products [1999] RPC 809 (CA); Philips Electronics v. Remington Consumer Products [2002] ETMR 82, ECJ
Lego Juris v. OHIM [2010], Case C-48/09 P ECJ (14 Sept 2010)
s.(3)(3)(a) morality, (b) deceptive, (c) bad faith
ORLWOOLA ([1910] 1 Ch 130): either wholly descriptive or deceptive (if goods not 100% wool)
CA Sheimer (M) SdnBhd’s Application [1999] ETMR 519
VISA for condoms: deliberate attempt to cash in on another’s reputation
FCUK [2007] RPC1 (Arnold QC)
ChocoladefabrikenLindt&Sprüngli AG v. Franz Hauswirth GmbH (C-529/07) [2009] ETMR 56, ECJ
Shape mark for chocolate Easter bunnies: Filed in bad faith if applicant knew that third party was already using sign that would infringe, and applicant intended to prevent third party from continuing use.
s.46 revocation; s.47 declaration of invalidity
Imperial Group Ltd v. Philip Morris [1982] FSR 72 (CA)
Imperial were advised MERIT was unregistrable so registered NERIT defensively. When Morris launched a MERIT brand in the US & UK, Imperial distributed 1m cigarettes under NERIT and launched infringement proceedings: Shaw LJ (81-2) “The use of ordinary language should not be inhibited by the adoption of an artificial variant which is the real origine of misidentification of the goods concerned.”
In re Gramophone Company’s Application [1910] 2 Ch 423
Linoleum [1878] 7 Ch 834 (passing off case: no misrepresentation by use of generic term)
Shredded Wheat [1940] 57 RPC 137
Bostich Trade Mark [1963] RPC 183
licensee sold articles of own manufacture without permission of TM owner (TM not revoked)
Scandecor Developments AB v. Scandecor Marketing AB [1998] FSR 500; [1999] FSR 27; 4 April 2001 (HL)
Local subsidiary Standecor Marketing sold off, licence discontinued. Claim: TM had aquired distinctiveness in relation to defendant’s goods. Claimant had allow mark to become deceptive. HL sought ECJ guidance: Does trading relationship constitute single undertaking? TM then would not be misleading (removed from ECJ because settled out of court).
UK TM Registry: Read as many Hearing Officers’ decisions as you can.
Infringement and defences
Core reading:
Hotel Cipriani SRL v. Cipriani (Grosvenor Street) [2008] EWHC 3032 (Ch)
L’Oreal SA v Bellure NV [2010] E.T.M.R. 47 (CA)
Further reading:
Dilution
Adidas-Salomon AG v Fitnessworld Trading Ltd [2003] (C-408/01), ECJ (dilution)
for the degree of similarity to be such that the relevant section of the public “makes a connection” or “establishes a link” between the sign and the mark, and confusion need not arise.
test for the link: a global appreciation of the visual, aural and conceptual similarity between the registered mark and the allegedly infringing sign and must take into account all factors relevant to the circumstances of the case.
O2 v. Hutchison 3G [2006] EWCA Civ 1656, CA (comparative advertising and dilution)
L’Oreal SA v BellureNV [2009] Case C-487/07 ECJ; applied but criticized by Jacob LJ in 2010 EWCA Civ 968, CA (exploitation ‘on the coattails’ of a mark with a reputation can be sufficient to show ‘unfair advantage’ under Art. 5 TM Directive)
Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] E.T.M.R. 17, CA
(taking unfair advantage of the repute or distinctive character of a trade mark was actionable per se without the need to show that the relevant public had been confused or that the mark had suffered detriment)
Intel v. CPM [2007] EWCA Civ 431, CA; and ECJ Dec 2008
(change in economic behaviour of average consumer required for ‘detrimental’ effect under Art. 5 TM Directive)
Optional exercise: How is the European Court of Justice’s guidance on trade mark dilution evolving? Find one relevant Law Review article, and summarise its findings.
s. 10 (6) (UK home grown defence)
“in accordance with honest practices”
s. 11 (2)(c) (copied from TM Directive Art.6 (c))
s.10(6) permitting comparative advertising
use of TM ‘for the purpose of identifying goods or services as those of the proprietor’
‘in accordance with honest practices in industrial and commercial matters’
s.11(2): A registered trademark is not infringed by
(a) the use by a person of his own name and address
(b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production or of rendering of services, or other characteristics of goods or services, or
(c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts)
‘in accordance with honest practices in industrial and commercial matters’
Construction of s. 10 (6) in Barclays Bank v. RBS Advanta [1996] RPC 307
“nothing shall be construed as preventing the use of a registered trade mark for the purposes of identifying goods or services of the proprietor”
[= purpose of section is to permit comparative advertising]
“But any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing”
[= but such uninfringing use must be “in accordance with honest practices”]
“if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark”
[“if” not conditional but explanatory (adding in most cases nothing)]
British Airways plc v. Ryanair Ltd [2001] FSR 541
EXPENSIVE BA____DS (withdrawn)
EXPENSIVE BA
“average consumer” test applied from Cable & Wireless v. BT [1998] FSR 383
consumer used to hyperbole and puff Barclays Bank v. RBS Advanta [1996] RPC 307
s. 11 (2)(b) available as a defence in comparative advertising
Is to advertise your competitor as 6x more expensive (if he is only 3x) unfair and dishonest? In BA v. Ryanair, claim was sufficiently true.
Trade mark use
TMA s. 11(2):
Bravado Merchandising v. Mainstream Publishing [1996] FSR 208
Use of the registered trade mark of the pop group Wet, Wet, Wet in a book title falls within the exception for indications of what the book is about.
BMW v. Deenik [1999] ETMR 339 ECJ
under equivalent term of Directive Art. 5 (1)(a)
Dutch trader allowed to indicate, without BMW’s consent, that he specialised in carrying out BMW repairs
Aktiebolaget Volvo v. Heritage (Leister) Ltd [2000] FSR 253
Lapsed Volvo dealer found to infringe by using the phrase “Independent Volvo Specialist”
use of mark may not create erroneous impression of commercial connection, affiliation or special relationship
Hölterhoff v. Freiesleben ECJ [2002] ETMR 79; ECR 1-4187
Registered marks “Spirit Sun” and “Context Cut” used by alleged infringer in oral sales negotiations to refer to a particular cut of gemstone. This did not fall under concept of trade mark use: Art. 5(1) Directive (but cf. Arsenal case)
Arsenal Football Club Plc v Reed ECJ [2003] All E.R. (EC) 1
Non trade mark use is not a defence
The question is whether the use that affects the functions of TM in particular the essential function (what are other functions?)
Adam Opel AG v Autec AG ECJ [2007] E.C.R. I-1017
Infringement under Art.5(1)(a) if the use of the mark affected the essential functions of the trade mark
Infringement under Art.5(2) if its use took unfair advantage of or was detrimental to the distinctive character of the mark
Exhaustion
Silhouette International v. Hartlauer (Case E-2/97 [1998] 1 CMLR 331
Zino Davidoff v. A. & G. Imports [1999] 3 All ER 711
Levi Strauss v. Tesco [2001] TLR 23/11/200 (ECJ); [2002] EWHC 1556 (Ch)
Bristol-Myers v. Paranova (Joint cases C-427/93 and C429/93) [1996] ECR I-3457, I-3528
Passing off; Exploitation
Core reading:
ErvenWarnink v. Townend [1979] AC 731, HL
Reckitt & Colman v. Borden [1990] 1 WLR 491, HL
Diageo v. Intercontinental Brands [2011] 1 All ER 242, CA
(VODKAT cannot be used for the sale of a non-vodka product: this would be a form of ‘extended passing off’)
Further reading:
Internet searches
Reed Executive plc v. Reed Business Information Ltd [2003] RPC 207
Interflora v. Marks & Spencer [2009] EWHC 1095 (Ch)
Interflora v. Marks &Spencers No. 2, [2010] EWHC 925 (Ch)
(purchased ad-words, revised questions by Arnold J to ECJ
Interflora v. Marks & Spencer [2011] Case C-323/09 ECJ (22 September 2011)
Google France, Google Inc. v. Louis Vuitton Malletier [2010] Joined Cases C-236 to 238/08 ECJ
Domain names
Optional exercise: Go to http://www.wipo.int
Explain the WIPO domain name dispute resolution process to a potential client who is concerned about “cybersquatting”.
Assignments, licensing, franchising, security interests
Character merchandising (text book chapters)
Manual of TM Practice on famous names (ch. 3)
Elvis Presley Trade Marks [1999] RPC 567 (CA); [1997] RPC 543
Application for registration of ELVIS and ELVIS PRESLEY for toiletries, perfumes, cosmetics, soaps refused. Applicants argument: change in public awarness about character merchandising; ELVIS goods felt do be ‘genuine’, i.e. endorsed by Elvis’ estate. Laddie J (approved by CA): people treat name as part of the product which they are purchasing (memorabilia, momentos); rather than indicator of origin differentiating one class of goods from another.
Signature was presumed to be distinctive, but application was refused on relative grounds (other trader traded under earlier registration ELVISLY YOURS).
Irvine v. Talksport [2002] 2 All ER 414 (endorsement)
Linkin Park LLC’s Application [2006] 74 ETMR 1017 (Arnold as Appointed Person)
Posters of rock group are ‘mere image carriers’.
Copyright
1. Subsistence, criteria for protection
Core reading:
TRIPS, Berne Convention, CDPA 1988, sec. 1 to 8 and 12 to 15.
Ladbroke v. William Hill [1964] 1 WLR 273, HL
Interlego AG v Tyco Industries Inc[1989] AC 217 (PC)
British Horseracing Board v. William Hill [2001] RPC 612; [2004] ECR I-10414, ECJ (Case C-203/02); [2005] RPC 35, CA
Infopaq International A/S v. DanskeDagbladesForening [2009] Case C-5/08ECJ
(‘11 words’ can be ‘expression of the intellectual creation of their author’)
Further reading:
Types of works protected
Exxon Corp. v. Exxon Insurance [1982] RPC 69 (single word not a work)
Merchandising Corporation of America v Harpbond[1983] FSR 32 (facial makeup not a graphic work)
Lucasfilms v. Ainsworth [2011] FSR 41, SC (Starwars helmet not a sculpture)
Green v. Broadcasting Corp. of New Zealand [1989] RPC 700; [1989] 2 All ER 1056 (TV format rights)
Creation Records v News Group [1997] EMLR 444 (Arrangement of objects not a work)
Norowzian v. Arks Ltd and others (No.2) [2000] FSR 363 (work of dance and mime)
Forensic Telecommunications Services Ltd v. Chief Constable of West Yorkshire [2011] EWHC 2892 (Ch) (database)
Protection threshold, works of low authorship
Kenrick v. Lawrence (1890) 25 QBD 99 (hand holding pencil)
University of London Press v. University Tutorial Press [1916] 2 Ch 601 (exam questions)
Feist Publications v. Rural Telephone 111 SCt 1282, 1991 (US) (phone directory – ‘sweat of the brow’)
Eva-Maria Painer v. Standard VerlagsGmbH[2011] Case C-145/10 ECJ (Work is original if author makes ‘free and creative choices’)
Authorship and ownership; dealing with rights; moral rights
Core reading:
Sawkins v. Hyperion Records [2004] EWHC 1530 (Ch), CA (performing editions of baroque music)
Matthew Fisher v. Gary Brooker& Onward Music [2006] EWHC 3239 (Ch) (“A Whiter Shade of Pale”); CA 2008; HL July 2009: 4 All E.R. 789
Brighton v Jones [2005] FSR (16) 288 (authorial contribution in joint authorship)
Snow v Eaton Centre Ltd [1982] 70 CPR (2d) (Ontario, CA) (derogatory treatment)
Confetti Records v Warner Music UK Ltd [2003] EMLR 35(derogatory treatment)
Further reading:
Employees
Stevenson Jordan v. MacDonald & Evans [1953] 69 RPC 10 (employed accountant’s public lectures on budgetary controls; accountant could not be ordered to prepare lectures: employee owns)
Missing Link Software v. Magee [1989] FSR 361 (programmer was employed to write programs of the disputed kind: employer owns even if program was produced outside working hours on own equipment)
Robin Ray v. Classic FM [1998] FSR 622 (consultant produced database of recordings; implied licence to Classic FM inferred but not exploitation abroad)
Noah v. Shuba [1991] FSR 14
(even if work was created in the course of employment (eg NHS), courts might imply a term that employee owns; indicator: employee by custom assigns copyright to publisher and/or collects royalties)
Dealing with rights
Griggs v. Evans [2003] EWHC 2914 (Ch)
Doc Martens case: commissioner may achieve equitable ownership (commissioned logo = artistic work) despite failure to obtain assignment (legal title) “if the Client needs in addition to the right to use the copyright works the right to exclude the Contractor from using the work and the ability to enforce the copyright against third parties” (at 35, citingLightman J in Robin Ray v. Classic FM plc[1998] FSR 622)
Defective assignment contracts
Undue influence
O’Sullivan v. Management Agency [1985] QB 428
Restraint of trade
ZZT Records Ltd v. Holly Johnson [1993] EMLR 61
Infringement