Meddle Not in the Affairs of Wizards

As you might notice from the updated profile I am no longer swelling the ranks of the unemployed. (In fact, since for various reasons I wouldn't have qualified for any benefits I never signed on, so strictly speaking never did, but I'm allowed the odd metaphor now and again.) I am now an RA in QMUL's Law Department, working at the Centre for Commercial Law Studies on a project looking at the legal issues relating to cloud computing.

More on that some other time, perhaps, but for now I see that IP is back in the news again with the story of 'Ms Marmite Lover', who is being threatened by Warner Bros for planning to put on a Harry Potter themed dinner. For once we have more than newspaper stories (written, with the best will in the world, by someone who probably doesn't know much about trade marks or copyright*) as Ms M-L has kindly reproduced the cease-and-desist letter in question.

[*I'm not suggesting reporters or staff writers are legally ignorant. However, most are probably hottest on subjects such as defamation and privacy.]

I'm afraid I can see W-B's point. It looks like this is not quite a domestic dinner party, but rather an openly ticketed event, so Ms M-L is arguably using the phrase 'Harry Potter' - a trade mark of Warner Bros - in the course of trade. Now, she understandably claims that from her point of view she is using it purely as a sign of being a fan rather than a suggestion that her food is somehow from, or endorsed by, either Warner Bros or J K Rowling herself. Unfortunately this is a buoy we've all sailed round before during the voyage of Arsenal v Reed, with its ECJ ruling, endorsed by the Court of Appeal, that 'badges of affiliation' can and do infringe trade marks. Having said that, Ms M-L's use seems rather de minimis and there is a risk that Warner Bros' action may be seen as yet another example of Big Business using IP rights to squash what most people would see as harmless fun. As a supporter of and believer in IP I think it needs all the good publicity it can get, but these days it only ever seems to get the other sort no matter how hard the IPO tries to rope in the services of Wallace and Gromit.

Hoffman on Laddie on Trade Marks

I've writter before about the legacy of Sir Hugh (formerly Mr Justice) Laddie, and his contribution to the development of IP law. This evening saw the first Sir Hugh Laddie Lecture at the Institute of Brand and Innovation Law he founded at UCL, featuring Lord Hoffman on the topic of Sir Hugh's dealings with the ECJ on the question of what exactly was the function of a trade mark.

It was a very good talk, and a fitting tribute to Sir Hugh. As Lord Hoffman readily admitted, it did not contain much in the way of radical revelation into trade mark law. Rather, he sought to trace the development of the tension between the English and European courts as to trade mark function via a series of cases in which Laddie J (as he then was) had been involved.

Now, it was clear from this that Lord Hoffman was setting out to tell us a story, and when you are being told a story it's important to bear in mind that the narrator will inevitably be imposing some sort of narrative structure and goal on it, if only to make sure that it is a story. Here, the narrative was very much the doughty English judge defending the traditional view of a trademark purely as a badge of origin against the encroaching European tide of wider trade mark function. This isn't to say that Lord Hoffman is anti-European; rather, he was to an extent telling the story of how a friend of his had done battle to preserve the understanding of what a trade mark was for that had dominated English IP law since the 1938 Trade Mark Act. That Act had made it clear that a trade mark had one role and one role alone: to indicate to a buyer where goods had originated. The 1994 Trade Mark Act, by implementing the common EC Directive on trade mark law, imported a new approach with more than a whiff of the traditional Benelux approach of viewing a trade mark as having aspects more akin to a brand.

Matters came to a head with the famous (or infamous, depending on your point of view) case of Arsenal v Reed. It was clear from Lord Hoffman's summary of the facts where his sympathies lay; as he put it, by selling scarves bearing the word (and trade mark) 'Arsenal', Mr Reed was simply saving his customers from scrawling the club's name on a blank scarf rather than asserting that his goods originated with the Gunners. Laddie J had felt much the same way, but had been obliged to refer the point to the ECJ. The A-G's Opinion had been sympathetic, and the ECJ had seemingly taken it aboard - but then found that in the current case, Mr Reed's actions in fact were trading on the reputation of Arsenal's trade mark. When the case returned to England, Laddie J promptly held that the ECJ had made a finding of fact - which was his job - and for the first and apparently only time anywhere refused to follow the ECJ. The Court of Appeal later took a rather more diplomatic (I've heard other words used) approach, and in the end Mr Reed lost. But Arsenal v Reed - along with cases on repackaging of drugs - brought home how much the 1994 Act had changed trade mark law, and how difficult it was to preserve the traditional narrow interpretation in English law of the function of a trade mark.

So what do we take from this? As I said, Lord Hoffman's narrative was clear. I can imagine of course a corresponding talk by a senior ECJ jurist taking, as its narrative thread, the steady exposure of England's old-fashioned and eccentric interpretation of what a trade mark was for in the face of sensible efforts to harmonise European law in this area. But it's hard to disagree with Lord Hoffman's closing comment that if, in implementing the Trade Marks Directive, Parliament had meant such a fundamental change away from a narrow right towards broader protection of what are in effect brands, then it should have clearly said so. All in all, an interesting and thought-provoking evening, and I hope that the Laddie Lecture goes on the way it started.

Trade Mark Law: It's bigger on the inside

Most law students have probably had the experience of explaining at a party what it is they're studying only to receive in response a pregnant pause followed by the inevitable "I've got this problem with my fence..." Actually, in my case, the fence query was from my mother, although I was able to sort it out. To be honest I don't mind this sort of thing, as long as the people who ask for my thoughts understand that I can't offer them Actual Legal Advice. Sometimes, it can make you look up an unusual or interesting bit of law, and there's nothing better for helping you to understand a legal point than to try applying it to real facts. And, now that I've been studying IP law, my friends have started to cotton on to the fact that there's someone whose ear they can bend for questions on funny points of copyright, patent or trade mark law.

The latest such query came from Ben Jeapes, science fiction author and Thoroughly Nice Chap. (Do go and buy his books.) A little while back Ben was wandering through a well-known London toy store when he noticed, amidst the model railway toys, this item for sale. "Ah," I can hear you thinking, "whilst on the face of it just a piece of period street furniture, this no doubt came to Mr Jeapes' attention because, as one of those 'sci-fi geeks' he saw it an immediately thought 'TARDIS'." Well, as it happens, no such thought was required, for Ben informs me that WKLTS had helpfully labelled as follows:



And this is where Ben's interest was piqued, because (as one of those 'sci-fi geeks') he recalled that the BBC had registered as a trade mark not only the term TARDIS but also the three-dimensional shape of a traditional police box. Indeed, this registration attracted some publicity when it was opposed by the Metropolitan Police. In the event, the Trade Marks Registrar found for the BBC, holding that the police box was not unique to the Met not particularly associated with the services it offered (see here for a PDF of the decision.) So, he asked me, are either Hornby or WKLTS infringing the BBC's trade mark?

At first sight, it is true that by selling a police box when said item is now a trade mark of the BBC both Hornby and WKLTS would infringe the BBC's rights. The BBC has registered the police box as a trade mark in the category of toys, and the model police box is selling an object that is exactly the same as the trade mark in the same category of goods.

But it's not as simple as that. A little while back the European Court of Justice was asked to rule in the German case of Opel v Autec. Autec sold detailed scale model cars, one of which was a replica of an Opel Astra. Being a detailed model, it naturally sported the Opel 'blitz' logo, which is one of Opel's trade marks. Opel had, as it happened, registered the mark for toys as well as actual cars, and sued Autec for trade mark infringement. The ECJ held that anyone buying the model car would naturally hold that the Opel logo was there for verisimilitude rather than to indicate any business connection between Opel and Autec, and so the trade mark was not being used as a trade mark. To hold otherwise would be to give Opel a monopoly in selling models of their cars, which would be anti-competitive.

Now, how far does this apply with the police box? There is a key difference, in that Opel's main business was selling cars, not models of cars, whereas one of the BBC's main businesses is in merchandising, which includes selling models of the TARDIS. On the other hand, Hornby has a completely legitimate business in selling accessories for model railways, in the same way that Autec had legitimate business selling model cars. I would suggest that following Opel v Autec, the courts would side with Hornby in any simple case of alleged trade mark infringement.

At this point I will note that Hornby itself appears to quite scrupulously market the model as purely a model of a police box; it is WKLTS that seems to have added the TARDIS reference. And it may be that WKLTS has muddied the water slightly by advertising the model as also being suitable to be a TARDIS. This might seriously dent any defence of legitimately selling an accurate model of just a police box. TARDIS as a word is also a BBC trade mark, and so its use in connection with sale of toys would almost certainly be a trade mark infringement in its own right. It might also open WKLTS up to a claim for passing off, because the BBC could claim that it enjoys goodwill in the name 'TARDIS' which WKLTS was misleading customers into thinking extended to its goods. However, the BBC would have to show evidence that its own sales of model TARDISes had suffered as a result, and that customers had bought this model from WKLTS believing that it was licensed by the BBC. Given that this model is about an inch tall and costs £4, I suspect that Dr Who enthusiasts will probably want a bit more bang for their buck (unless they are keen to construct scale dioramas of Home Counties chalk pits alien planets).

Now it may well be that this has in fact all been cleared with the BBC, although I would have thought that if this was the case then the BBC would have asked WKLTS to add a note to the effect that "TARDIS is a trade mark of the British Broadcasting Corporation." But it does raise an interesting point of when use of a trade mark is 'use in the trade mark sense'. Is this just use of a trade mark as a form of identification, as in R v Johnstone? To me, the facts seem rather different. In Johnstone, the CDs at stake were unidentifiable without having the (trade mark) names of the relevant artists affixed to them. But anyone who wants to buy a model TARDIS knows what one looks like - there's no need to identify a model police box as a TARDIS by labelling it for such a customer to know what it is.

Anyway, that's enough wibbling on the subject. If I'm not careful, readers will conclude that I only ever blog about sf-related IP cases, and my interests are slightly broader than that...