Posts on this blog represent my opinion. It may be my considered opinion on the basis of my formal study of law and technology. But it is not legal advice. It must not be treated as, or acted upon as, legal advice and no liability is accepted for doing so.

Tuesday, 2 December 2008

Sir Hugh Laddie, 1946-2008

Like many students and practitioners of intellectual property law, I am deeply saddened to learn of the death of Sir Hugh Laddie, formerly Mr Justice Laddie and one of the most influential IP judges of the last few decades. I was tempted to write a more lengthy review of his life, but I see that William Patry has temporarily returned from his blog exile to post a more fulsome and heartfelt tribute than I could ever manage.

I will, however, add a personal note. I became interested in law through supporting my wife in a court case over a very messy inheritance dispute. Such cases, especially where the estate is substantial, are tried by Chancery Division judges of the High Court, the branch of the judiciary that includes the Patent Court and its judges. So, as it happened, the judge who heard our case was none other than Mr Justice Laddie. I was later to read that one of the reasons he resigned from the bench was his discomfort at hearing cases outside what he felt to be his area of specialist expertise. If that was the case here then he showed no sign of it; indeed, as the central legal issue (undue influence) was one where the law is simple but weighing of the evidence is paramount, his incisive mind and firm grip upon proceedings served him well. As, for that matter, did his sense of humour during what was at times a distressing and unpleasant case for all concerned. (I fondly recall his anecdote to counsel regarding the difference between dementia and that common condition, 'male middle-aged inattention'.)

We won our case. It feels odd to say that I am grateful to Sir Hugh for that, as I feel we won because our cause was right. But I am grateful to him for approaching it in a manner that did full justice to our cause, and for igniting in me the spark of interest that led me to start studying law. As my technical background led me to IP, I soon discovered his wider claim to fame. But I'll always remember him best for his decision in Bradshaw v Hardcastle [2002] EWHC 2816 (QB).

Friday, 28 November 2008

The Telecoms Package: What Now and Where Next?

Following on from my previous post about the EU Telecoms Package, the vote in question took place this morning. Monica Horten, who is far more au fait with the minutiae of EU legislative procedure than I am, has given a very good write-up of what happened.

So, this isn't the end of the process. We now have the Council's view of what the Telecoms Package should be, as well as the Commission's view and the EU Parliament's view. All three bodies will now have to try to hammer out a compromise, and it's clear from Monica's report that there is much unease at the Council (i.e. national) as well as Parliament (direct representatives) level as to the way in which both Amendment 138 and its sibling Amendment 166 - which was dropped by the Council some time back - have been expunged. As I noted earlier, Recital 14a remains in the Universal Service Directive to urge proper due process via national legal systems, so with any luck questions will be asked as to why, if the Council is content to leave it in, there isn't some accompanying Article to ensure compliance with it?

As I see it, there are definitely further opportunities for lobbying and action. The Telecoms Package will have to finish its passage through the EU legislative process - Monica suggests this will probably be over the next few months - and the resulting amended Directives will have to be transposed into UK law over the subsequent two or three years. Our MEPs, MPs and Ministers are not off the hook yet.

Wednesday, 26 November 2008

Whatever Happened to Amendment 138?

A couple of weeks ago I posted about my pro bono project for the Open Rights Group, analysing proposed changes to EU Telecoms law that might allow a 'Three Strikes' sanction against alleged file-sharers without recourse to due process of law. As became clear in preparing our final report, a key measure was Amendment 138, inserted by the EU Parliament in an effort to apply the rule of law to such measures. The EU Council is voting tomorrow on the Telecoms Package, but confusion has now arisen about whether Amendment 138 is still in play. What seems to have happened is that there has (in true EU style) been a lot of horse-trading going on as to the final text of the Telecoms Package that the EU Council is going to vote on tomorrow.

It's worth remembering that EU legislation is made in a complex and not very transparent way and that voting by MEPs in the EU Parliament is only part of the process. The final vote at the EU Council is by representatives of member state governments, all of which have their own agendas. Furthermore, it's not as if individual elements such as Amendment 138 get voted on line-by-line; instead, the final text (including amendments made by the EU Parliament) is argued over behind closed doors before a compromise is voted on by the Council. If you think this bears more resemblance to trying to pass a rule change through your local football club committee than getting a Bill through Parliament, you might not be wrong.

Looking at the final versions of the five amended EU Directives that form the Telecoms Package, it seems that yes, Amendment 138 (which made sanctions against 'unlawful content' subject to due process of law) has indeed disappeared. But so have some elements of another part of the Package that said that national telecoms regulators should regulate lawful and unlawful content. What was particularly worrying about those provisions was that they referred to another part of the Package that mandated co-operation between national regulators and telecoms industry providers - i.e. ISPs and the big telecoms carriers.

So, what we were looking at until now was a set of provisions buried within the Telecoms Package that said:

a) National regulators must promote lawful content.
b) National regulators must co-operate with ISPs.
c) Measures to do this must be by due process of law. (Amendment 138)

In the latest version, (c) is gone - but so is (a), leaving (b) more as a general mandate that regulators and the telecoms industry must work together, but not with a set 'stop unlawful content' agenda. In fact, the end result of the latest round of changes is to put much of the underlying legislation back to its current state, as first passed in 2002.

So does the Telecoms Package say anything at all now about due process? Actually, yes. At this point it should be noted that EU Directives work not by making law directly (well, not generally, but for EU law experts I am simplifying here) but instead by giving a template that each member state must then turn into national law. It does this by means of Articles, which must be turned straight into local law, and Recitals, which are more like explanatory notes of what the new law is meant to do. In theory a Directive should contain a list of Recitals explaining what the Directive is trying to do, followed by a set of Articles that lay down the laws to be made that will do it.

Here though, the relevant Articles have been amended or deleted so there is no specific one saying 'make a law guaranteeing due process for telecoms disconnection'. But the related Recital, inserted by the EU Parliament, is still there:

"In the absence of relevant rules of Community law, content, applications and services are deemed lawful or harmful in accordance with national substantive and procedural law. It is a task for the relevant authorities of the Member States, not for providers of electronic communications networks or services, to decide, in accordance with due process, whether content, applications or services are lawful or harmful or not."

In other words, EU member states, when implementing the Telecoms Package, are strongly guided to do so in a way that relies on the rule of law and due process rather than delegating the whole thing to ISPs.

Where are we left after all this? If the current Telecoms Package passes on Thursday, it will have the desired safeguards removed, but it will also be rather watered-down. Instead of clearly laying down a Three Strikes policy, it now gives guidance to say that such measures must be subject to due process. Now this won't on the face of it stop a particular country from passing its own Three Strikes law if it wants to, although it will give a heavy hint that any such law must allow for due process. My own opinion is that the Three Strikes battle hasn't been won or lost this week - instead it's been moved to each EU member state to be fought locally.

But what this whole mess does highlight is the very opaque and convoluted process by which EU law is made. The EU is often described as suffering from a 'Democratic Deficit', with law-making processes that, as I noted above, more resemble those of a club than a nation. Given that the EU started out as a club, albeit of countries, that is not surprising - but if it is now acting like a super-state setting telecoms laws governing the net access of half a billion people, is this really a good way to carry on?

Finally, I'd like to thank Monica Horten at for essential and insightful analysis of the latest changes.

Monday, 24 November 2008

The Onward March of Technology...

... applies even to misconduct in the jury room. Ouija boards (as in R v Young (Stephen) [1995] QB 324) are clearly old hat, as the lazy or delinquent juror now has recourse to Facebook.

Leaving aside the fact that this person now faces the prospect of being charged with Contempt of Court, this once again highlights the way in which Facebook is so often used without any regard to the privacy settings available. My friend Pangloss has many a time lamented the way in which students in particular post all manner of personal details to social networking sites without considering who might see them - either now, or down the road when they're looking for jobs, and prospective employers are liable to make use of Google.

But what happens if and when we have security-conscious web users and genuinely anonymous net access? The current laws on jury process evolved when the only opportunity a juror had to seek outside advice was to go down the pub. How well will they work when user randomjuror53234 posts a query on an anonymised discussion board?

Monday, 17 November 2008

Caught in the Middle

via The Register - which runs the story under the by-line 'Magazine faces legal action for bowing to legal action' - news of how The New Statesman is being threatened with a libel suit via whistle-blowing site Wikileaks for removing, under legal threat, a link to a WikiLeaks article.

This sounds a rather odd course of action to me. For starters, removing a link to a story is a long way short of saying, or even clearly implying, that it is inaccurate. Furthermore, The New Statesman was presumably acting under legal advice and quite possibly in response to an interim injunction, in which case it would have been anything from inadvisable to illegal for it not to take down the link.

If Wikileaks does file a claim, I can see another court hearing coming up - an application for summary judgment and/or striking out.

Friday, 14 November 2008

Opening Up the Telecoms Package for the Open Rights Group

My posting record has continued to be a bit thin of late thanks to the pressures of the Bar Vocational Course. (And if you're reading this in the UK, BBC 2's new series 'The Barristers' starts tonight, featuring the joys of the BVC). However, part of my work of late has been a pro bono project that came my way from the Open Rights Group, via Prof Lilian Edwards (aka Pangloss).

Detailed accounts of the background are given by ORG here and Prof Edwards here, but in a nutshell I was asked to review the latest batch of amendments to the core group of Directives governing EU telecoms law. In particular, my remit was to see what had happened to measures inserted by MEPs to ensure that disconnection sanctions - the so-called 'Three Strikes' measures - could only be implemented via due process of law. I was very helpfully assisted by Monica Horten of, whilst Judith Rauhofer at UCLAN provided useful advice and of course Prof Edwards oversaw the whole effort; I'm especially grateful to her for comments on the text as it developed and for putting together a very clear and forceful summary for our final report.

Our findings? Yes, there are elements of the Telecoms Package as it stands that raise serious concerns. In particular, some of the measures explicitly inserted by MEPs to ensure due process have disappeared, although it does seem that there are efforts being made to keep at least one in place. Also, some of the definitions of the sort of content or threat that would give grounds for communications providers to read traffic (with associated privacy concerns) are potentially very broad.

I feel I should make my own position clear. As an aspiring IP lawyer I think that copyright protection is a good thing - so long as it is properly regulated, clear in scope and applied under the aegis of the courts. To take an analogy with land law, the law of 'real' property, we regulate land ownership under a system that protects land-owners whilst at the same time recognising rights-of-way, providing for boundary disputes and setting legal constraints on how we deal with land-owners. I don't agree with those who scoff at the whole idea of IP, any more than I'd go along with ideas to allow anyone to do what they wanted on anyone else's land. But equally, nor would I support a proposal to allow large land-owners to take over all responsibility for controlling access to their estates, including the power to decide for themselves if a right-of-way or easement existed and to eject with extreme force anyone they considered might be trespassing. The proposed measures could well lead to providers flagging legitimate peer-to-peer filesharing or fair-dealing use of copyright material as being illicit, whilst denying those affected recourse to the courts to prove their legal rights.

From here on, it's over to the ORG to take this matter forward, and I return to the more mainstream BVC joys of the Civil Procedure Rules, sentencing policy and drafting Particulars of Claim. Oh, and with any luck maybe even posting some IP and technology law stories here - there have certainly been plenty of interest lately. But this has been a fascinating project to be involved with, as well as providing an at times alarming insight into the process by which EU law is made.

Wednesday, 22 October 2008

Rebel Without A Trade Mark

I have to take my hat off to the US Bureau of Alcohol, Tobacco and Firearms (as the old joke goes, it sounds like one heck of a fun corner shop) for its efforts to push IP law in bold new directions by seizing the registered trade mark of a biker gang.

“In addition to pursuing the criminal charges set forth in the indictment, for the first time ever, we are seeking to forfeit the intellectual property of a gang,” said United States Attorney Thomas P. O’Brien. “The name ‘Mongols,’ which is part of the gang’s ‘patch’ that members wear on their motorcycle jackets, was trademarked by the gang. ... If the court grants our request for this order, then if any law enforcement officer sees a Mongol wearing his patch, he will be authorized to stop that gang member and literally take the jacket right off his back.”

Of course, US trade mark law is rather different from that in Europe. I can already see the spectre of Arsenal v Reed rising like, er, a rather naff example of biker jacket art, waving the banner of 'badges of affiliation'. After all, exactly what 'service' is a biker gang's logo being used in connection with? And is it in the course of trade?

Monday, 29 September 2008

But Service in Person is still far more satisfying

The latest amendment to the Civil Procedure Rules comes into effect on Wednesday, and amongst other changes the legal system has acknowledged the White Heat of Technology and recognised that SMTP packets travel slightly faster than First Class mail. Current CPR 6.7(1), which says that for electronic methods other than fax, service of a claim is deemed to have taken place on 'The second day after the day on which it is transmitted' is to be replaced EDIT: for a document other than a claim form by new CPR 6.26, which defines service as taking place:

'If the e-mail or other electronic transmission is sent on a business day before 4.30p.m., on that day; or in any other case, on the next business day after the day on which it was sent..'

- in other words, the same as the rule for fax transmissions. Actually, on careful inspection I see that the fax rule has itself been updated to say that service happens on the same day if fax transmission is completed by 4.30p.m. So, if your accompanying Particulars of Claim are 43 pages long, don't send the trainee to the fax at 4.28... 

UPDATE On a more careful read-through I see that the CPR amendment splits out service of Claim Forms from service of other documents. The above rule applies to documents other than claim forms; the revised rules for claim forms themselves actually slow down service, by applying the 'second business day' rule to all forms of service!

Wednesday, 17 September 2008

Why Not To Buy

This BBC report notes how the sudden round of shotgun marriages in the banking and investment world has led some crafty individuals to register domains such as and, presumably in the expectation that the post-merger banks - assuming that they are called that - will then have no choice but to pay whatever is asked in order to have a suitable domain name.

Funnily enough, this has been tried before. Many, many times; indeed, this particular scam predates the spread of the Internet. In Glaxo plc v Glaxowellcome Ltd [1996] FSR 388, a couple of company registration agents noted the announced merger of Glaxo and Wellcome and registered 'Glaxowellcome Ltd' as a company name, which they then offered to sell to Glaxo. Glaxo were unamused and sued successfully for passing off. As Lightman J put it:

"The court will not countenance any such pre-emptive strike of registering companies with names where others have the goodwill in those names, and the registering party then demanding a price for changing the names. It is an abuse of the system of registration of companies' names. The right to choose the name with which a company is registered is not given for that purpose."

The concept that such an abusive registration was an 'instrument of fraud' was seized on with enthusiasm by courts when looking at domain name hijacking, as in the leading case of British Telecom v One In A Million [1998] 4 All ER 476. Moreover, as resolution of domain name disputes has shifted from courts to ICANN-mandated resolution panels, such tribunals have readily adopted the doctrine that such pre-emptive registrations are abusive, as in America Online v Chris Hoffman, where the announced merger of Time Warner and AOL led the defendant to register and other such domains.

Indeed, since the terms of service of domain name registrars invariably include a condition that any dispute is resolved under the ICANN Uniform Domain Name Dispute Resolution Policy, anyone trying this trick is unlikely to even have the chance to argue in court. Instead, they'll have to go to an ICANN-approved tribunal that is, on the evidence of AOL and similar decisions, likely to take such registration as prima facie abusive.

So, I wouldn't bid on if I were you. It's likely to be an even worse investment than Lehman stock turned out to be...

EDIT: I commented on this on BoingBoing when it linked to a similar story. I am indebted to BB user Tubman for pointing out that the value of such speculative sites these days rests on the advertising opportunities they provide. Even if (for example) is doomed to be taken down, it might generate a lot of ad revenue on the way. So maybe such sites are a better bet than I thought - especially now that shorting bank stocks has been banned! In broader terms, this is an excellent example of how the dynamics of e-commerce can change, with measures aimed at protecting the long-term value of a domain becoming irrelevant in the face of its short-term earning potential.

Sunday, 7 September 2008

It's The Data Protection Act, not the Say Nothing To Anyone Act

If you were thinking it had become a little quiet around here then you were right - I've spent the last week in the induction phase of the Bar Vocational Course. After a year doing an LLM that was concerned with specific areas of almost entirely civil law I am having to revisit the whole wider legal spectrum, including that 'criminal' stuff I dimly remember from W201. However, this doesn't mean any less interest in lawblogging on IT and IP law; to the contrary, I am keen to keep myself abreast of my intending area of specialisation.

Something that did catch my eye last week was this story on how Marks & Spencer claimed that the Data Protection Act meant that it could not talk to the mother of a child who had received a defective Superman costume as a gift and insisted on speaking directly to the seven-year-old boy himself. As this item in The Times notes, this is just the latest in a depressingly long line of examples of how the DPA is being misinterpreted and overzealously applied whilst agencies of HM Government - who really should be applying its requirements stringently - repeatedly mislay vast swathes of sensitive personal data. For my part, I would go further; it is hard to avoid the suspicion that the DPA is being invoked to excuse laziness, conceal incompetence and in some cases to indulge in pure administrative bloody-mindedness. In one instance I'm personally aware of, a building management company refused to release financial records on income and expenditure on the grounds of 'data protection' despite the clear statutory requirements of ss.21-22 Landlord and Tenant Act 1985 to do so. In the M&S case, surely common sense should have dictated that the parent or guardian of a minor is the appropriate person to speak to? But no, the bogeyman of Data Protection is offered up instead.

In wider terms, this is symptomatic of a worrying tendency (I almost said 'trend', but I suspect it has long been thus) for people to assume that, because they are dimly aware that a certain area is regulated by law, any conduct impinging on that area is forbidden. The more that the legal regulation is publicised, the more prevalent and extensive this assumption becomes. We see this in the vexed issue of public photography, where anti-terrorism campaigns and hysterical news coverage have had the (I hope) unintended effect of convincing security guards and members of the public that anyone with a moderately decent camera is either a terrorist or a paedophile. Unfortunately, this suggests that the more we see of well-justified news stories about data protection failings, the more we might hear of shop assistants invoking the DPA.

Thursday, 28 August 2008

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...

Monday, 25 August 2008

IBIL Event 11 November

A few months ago I had the pleasure of attending the inaugural event for UCL's Institute of Brand and Innovation Law, which featured such IP luminaries as Lord Justice Jacob, talking about Actavis v Merck and Geoffrey Hobbs QC, discussing the O2 'bubbles' case. IBIL has now announced another seminar, this time on the topic of patent enforcement:

Patent Enforcement - Problems and Possibilities

It is to take place from 4-7pm on Tuesday 11th November, at the UCL Institute of Child Health, just south of Coram's Fields. Registration is free, although places are limited so sign up soon.

Friday, 15 August 2008

"... yet someone is clearly doing their job horribly wrong."

A little quiet here on the blog as I am currently head-down in my LLM dissertation, on the topic of the IP issues arising from the development of low-cost rapid prototyping machines such as the RepRap. But to follow up my last post I am pleased to say that the latest issue of SCRIPTed is now available, again featuring papers on topics as diverse as social pressures on medical ethics in Korea to the privacy issues arising from state access to the location data produced by devices such as mobile phones.

In the mean time, if you haven't come across the webcomic xkcd then I'd recommend checking it out. Usually very humorous for those of a slightly geeky disposition, it quite often excels itself in commenting on our information society, such as this splendid Map of Web 2.0. Today is no exception, as xkcd beautifully illustrates Bruce Schneier's aphorism that security is not a product, it's a state of mind:

Monday, 11 August 2008

A Couple of Plugs

No, not the plugs in Amp v Utilux (I had to sneak a design law case reference in here somewhere!) Rather, I'd like to draw readers' attention both to SCRIPTed and to the forthcoming SCRIPTed Conference in Edinburgh.

SCRIPTed describes itself as 'a journal of Law, Technology and Society'. Having been privileged to serve as one of its editors over the last year, I think it fair to say that it covers these bases very well. The most recent issue (Vol 5 No 1) includes papers on trade mark dilution, user attitudes to P2P services and the ethical issues surrounding 'bionic' athletes. We are interested in prospective contributions for SCRIPTed, and we are also keen to hear from suitably-qualified referees to help peer-review submissions.

Not content with running a journal, our managing committee are organising the SCRIPTed Conference, to take place at the University of Edinburgh from 29-31 March 2009. Taking as its theme 'the Governance of New Technologies', it will focus on evolving and emerging technologies and new-technology-driven practices and their impact on the overlapping fields of healthcare, information technology and  intellectual property. The Call for Papers is open until 15 November, whilst an outline programme is available. So, why not make a date in your diaries for what promises to be a fascinating and enjoyable three days in the beautiful city of Edinburgh?

Wednesday, 6 August 2008

Computer Says Yes, Mr Bin Laden - have a nice trip!

To err is human, goes the saying, but to really make a mess of things requires a computer. Yet everyday experience suggests that we tend to be remarkably trusting of the output of computers - perhaps the most common recent example being the stories of drivers cheerfully following GPS directions the wrong way up one-way streets, or even through floods or onto railway tracks.

All of which makes this story in The Times about cloning of electronic passports all the more worrying. E-passports have been held up as the gold standard of travel security (despite the loudly-voiced concerns of security experts) and there is a risk that airport check-in or security staff, faced with a suspect traveller, will see an e-passport as an unquestionable confirmation of identity. We may laugh at the stereotype of someone who abdicates all responsibility to a computer, but should we be more worried when the response is not "computer says no" but "computer says yes"?

Tuesday, 5 August 2008

A Lost Voice of Reason

I'm very saddened to see that William Patry has decided to close his long-running and very highly regarded copyright blog. Even more depressing are the two main reasons he gives for doing so: that the copyright system has become so overwhelmed by the interests of massive corporate rightsholders as to in his view leave it beyond hope of repair; and that it had become impossible for him to present his own views without them being assumed to be those of Google, his current employer.

More and more, any discussion of copyright seems polarised between ever more extremist positions, with those on one side demanding ever wider and more prolonged protection for anything that can be shoehorned within the confines of 'intellectual property' and those on the other for whom "information wants to be free" has become a mantra to be recited in the face of any suggestion that artists should be able to benefit from their creativity. More than once I have had to explain that just because I am an aspiring IP lawyer it does not mean that I favour unlimited expansion of copyright any more than someone wanting to practise land law would necessarily want to abolish rights of way and enact a right to shoot trespassers on sight. We need IP centrists like Patry to point out that there is a sensible middle ground - even if we seem to be ever more losing sight of it.

I see that many of the people commenting on Patry's final post have implored him to at least make the archives available in some form (he has currently removed them because of what he sees as the ongoing problem of having his opinions cited as those of Google). I've added my voice to this plea; this is too deep a well of good sense to be filled in forever.

Thursday, 31 July 2008

Lucasfilm v Ainsworth: The Copyright is *not* strong in this one...

A few months ago I found myself lucky enough to be able to attend several days of the argument in the copyright case of Lucasfilm v Ainsworth. Cases are often known colloquially by their subject matter (e.g. Jif Lemon); if that happens here, it will go down as the Stormtrooper Armour case. Today, Mr Justice Mann gave the long-awaited judgment, and I was again able to be in court to hear him give a very brief summary.

The full version is available here; I was lucky enough to pick up one of the copies printed out for media and the public (I got the last one) and it's about half an inch thick. In great detail, Mr Justice Mann goes into the question of whether prop-maker Mr Andrew Ainsworth infringed Lucasfilm's rights by making and selling copies of the Imperial Stormtrooper helmets and armour from Star Wars, items he had made for the original film production.

So who won? Think of the end of The Empire Strikes Back; neither side has exactly come out with what it wanted, and everything has been set up for a sequel. Lucasfilm will have been hoping either for a decision that it could sue for all of Mr Ainsworth's production as infringing their copyright under English law, or for the Court to hold that it could enforce the very punitive US judgment it obtained in Ainsworth's absence. It got neither, as Mann J held that Ainsworth's activities in the UK had not been infringing, and that Ainsworth did not have sufficient 'presence' in the US for a court there to have authority over his activities.

But Ainsworth hasn't got what he will have wanted either. To begin with, Mr Justice Mann had decided, as I'll explain below, that under English law there was simply no copyright in the costume designs at all. Whilst this got Ainsworth off the copyright infringement claim (you can't infringe copyright if it doesn't exist) it also meant that his claim to have rights in the costumes equally evaporated. But Mann J went on to note that even if copyright had existed, Ainsworth's legal obligations would have meant that such rights belonged to Lucasfilm, not him. Indeed, on the basis of the evidence presented, he felt that Ainsworth had very much exaggerated the scope of his creative input, and that relatively little of the design had been his. It has to be said that Mr Ainsworth does not come out of the judgment looking too good; although the judge did not see him as dishonest as such, he found that he was very prone to overstate his contribution to 
Star Wars, even to the point of trying to allege that plain evidence to the contrary had been faked.

Most importantly for Ainsworth though, Mann J decided that he could be held liable for copyright infringement under US law, specifically by making items that copied drawings (the design art) that were protected by US copyright. This might seem odd, and perhaps even alarming. But the judge gave long and carefully-argued reasons for why, in this particular instance, a US claimant could ask an English court to apply US law. As well as technical arguments relating to international recognition of copyright, there was also the point that Ainsworth had copied items and sold them into the US whilst refusing to submit himself to the jurisdiction of the US courts. Having decided that Ainsworth could not be forced to submit to that jurisdiction even though he traded with it, Mann J felt that he could not then reasonably object to its claim being heard in the English courts. And, US copyright law differing in some key respects from English copyright law, Ainsworth 
had infringed US copyright. This leaves him facing a further hearing to decide what remedy an English court can or should impose, and this is a subject I can only speculate on. Will damages be assessed on English principles, in proportion to the actual value of infringing goods, or much more punitive US ones? And will they be based on the total scale of infringement, or just Ainsworth's sales into the US? (For the record, I had earlier been under the impression that those were in the £100,000s; it turns out they were more like £8,000 to £25,000.) Thus Mr Ainsworth is still left with a large and undetermined liability hanging over him, not to mention the question of how to allocate the costs of what was in the end a seventeen-day trial in the High Court with leading counsel and numerous specialist witnesses. Extrapolating from other such trials, I would be very surprised if the costs came to less than £500,000 if not twice that, so even if it is held that both sides did equally well and bear their own costs, Mr Ainsworth will have a huge legal bill.

And it doesn't end here. Both sides will want to appeal; Lucasfilm against the decisions on copyright and enforceability of the US judgment, Ainsworth against the decision that he is liable under US copyright law. If permission to appeal is granted - and the legal issues are controversial enough that I would be astonished if it is not - then we are unlikely to see a hearing until the middle of 2009 or so. And the case might even go to the House of Lords, or the new UK Supreme Court as it will then be. Like the 
Star Wars franchise itself, we have more yet to come.

So what does this case do for copyright law in the UK? (It was an English High Court case, but generally the Scottish Court of Session follows the English courts in decisions on interpretation of UK-wide copyright and IP law.) Actually, it is quite interesting and helpful, and to see why we can look at why Mr Justice Mann found that Ainsworth had not infringed copyright in UK law.

The first issue was whether or not the key items, the Stormtrooper helmets, were subject to copyright. In UK law, there are four categories of copyright: literary, dramatic, musical and artistic. Artistic copyright is itself divided into various sub-categories, such as paintings, photographs and, more relevant here, sculptures and a catch-all class known as 'works of artistic craftsmanship' or WACs. For copyright to subsist in the helmets, they either had to be sculptures or WACs; this led Mann J to a lengthy assessment of the history of the relevant legislation and the not always helpful decisions in previous cases. Mindful perhaps that such prior cases had left later judges (not to mention law students such as me) scratching their heads to make sense of what a 'sculpture' is in the eyes of the law, he sought to give a comprehensive and hopefully definitive analysis. which occupies paras 94-123 of his judgment. His final test is given at para 118; to summarise it, the key factor is that visual appeal in its own right be a primary consideration of the creator. To quote a memorable example he gives,

"A pile of bricks, temporarily on display at the Tate Modern for 2 weeks, is plainly capable of being a sculpture. The identical pile of bricks dumped at the end of my driveway for 2 weeks preparatory to a building project is equally plainly not. One asks why there is that difference, and the answer lies, in my view, in having regard to its purpose. One is created by the hand of an artist, for artistic purposes, and the other is created by a builder, for building purposes. I appreciate that this example might be criticised for building in assumptions relating to what it seeks to demonstrate, and then extracting, or justifying, a test from that, but in the heavily subjective realms of definition in the artistic field one has to start somewhere."

He then applied this test to the helmets (be they the final props or the original clay models of them), and decided that whilst their design was doubtless intended to convey something about the Stormtroopers - menace and anonymity - that expression was utilitarian, for the purpose of being a costume prop, not for artistic ends in themselves. Furthermore, he held that the same applied to toy Stormtroopers produced by Lucasfilm, which he found to be primarily for the purposes of play, rather than artistic interpretation.

[Here I must diffidently and respectfully take issue with one of His Lordship's findings. He says, at para 123, 
"While their appearance is obviously highly important ... they are not made for the purposes of their visual appearance as such. While there is no accounting for taste, it is highly unlikely that they would be placed on display and periodically admired as such" Having wandered around the dealers' rooms of several science fiction conventions, and for that matter seen the very expensive Star Wars figurines on sale just up the road from the RCJ in the London branch of Forbidden Planet, I would suggest that there is quite a market in reproductions of Stormtroopers and many other such characters for the purpose of admiration by adult admirers. Indeed, one prominent law-blogger of my acquaintance comes readily to mind, having seen the inside of his office! I am rather surprised that Lucasfilm did not lead evidence of this market, as it might have made Mann J a little more wary in reaching this conclusion. Nonetheless, it does not affect the underlying test he derived.]

If not sculptures, were the helmets instead works of artistic craftsmanship? Here the legal guidance is even vaguer, with the leading case of 
Hensher v Restawile being infamous for having five Law Lords give five different explanations of what a WAC was. Mann J considered various later attempts to draw some common thread from that case, and settled on the test of Tipping J in the New Zealand case of Bonz Group v Cooke :

"for a work to be to be regarded as one of artistic craftsmanship it must be possible fairly to say that the author was both a craftsman and an artist. A craftsman is a person who makes something in a skilful way and takes justified pride in their workmanship. An artist is a person with creative ability who produces something which has aesthetic appeal."

Again, applying this, the helmets were not created as artistic works as such. Indeed, on close examination, they had many characteristics more typical of the props they were, such as apparently three-dimensional details being painted on. Since the helmets were neither sculptures nor WACs, they fell into no category of items in which copyright could subsist under the Copyright, Designs and Patents Act 1988 and so there was no copyright in them for Ainsworth to infringe. (Equally, as noted, this meant that his own claim for copyright in them fell at the start.)

But this was not the only legal point in Mr Ainsworth's favour. Mann J went on to consider the effect of sections 51 and 52 of CDPA 1988, which deal with the relationship between copyright and registered design. Section 51 in particular was introduced to deal with the problem that arose in the 1970s of car manufacturers seeking to stop the sale of third-party spares by claiming that such items infringed the copyright in the original design drawings. Now, it remains generally true that, as stated in the 1940s case of 
King Features Syndicate v Kleeman - the 'Popeye' case - you infringe the copyright in a drawing by turning it into a 3D object. But s.51 says that this is not so if the drawing you are working from is a design document rather than an artistic work in its own right. In other words, if a drawing is one that exists specifically to be made into an item, then nobody infringes its copyright by so making an item based on it. The item in question might be protected by design right, but such rights are both shorter and more constrained than copyright. S.51 also applies to preliminary models, and Mann J held that both the concept art and the original clay models of the helmets fell within its scope. As such, Ainsworth did not infringe any copyright in them (which, as already noted, did not subsist for the models anyway) by making final items based on them. 

Finally, Mann J turned to s.52, which seeks to avoid the anomaly whereby an industrial design would be protected for a maximum of 25 years by design right, but any element of it protected by copyright got the full life-of-creator-plus-70-years of protection. Here, the legal argument becomes extremely complicated, as the events in dispute took place over a period when the law changed substantially and various transitional measures were put into place. But the end result was that even if s.51 had not provided a defence, Ainsworth could rely on s.52 to say that because the helmet design had been mass-produced, it was protected by the shorter term of design right rather than the full term of copyright - and given the timing of events, such rights had expired. Interestingly, Mann J did not hold that the original bulk prop production constituted mass production, as it had clearly only been for internal, rather than commercial, purposes. Instead he held that Lucasfilm's extensive merchandising of Stormtrooper toys was mass production of the helmet and armour design, and that this had the effect of making the design one limited to the shorter (and thus expired) design right rather than copyright protection.

The judgment also goes into other legal issues, such as whether Ainsworth was contractually obliged in any case to assign copyright in anything he made to Lucasfilm (he was, but as seen nothing he made was protected by copyright anyway) or whether he was under an obligation of confidence not to market products based on his work for Lucasfilm (at the time, perhaps, but not now, according to the judge). He was also held not to have passed off his work as that of Lucasfilm, whilst a trade mark claim was dropped by mutual consent.

So, what do we get out of 
Lucasfilm v Ainsworth for IP law? A long-overdue attempt to provide a clear judicial test for the meaning of 'sculpture' and 'work of artistic craftsmanship' within CDPA 1988, which I expect to see being cited and making its way into IP texts before long. We also got a clear assessment of the application of s.51 to the creation of articles from such items as concept artwork for films; it seems to me that this gives a green light to costume hobbyists to turn to their Making Of... books and turn the design art therein into garments and props, as not only does s.51 legitimise doing so, but arguably Mr Justice Mann's decision on copyright means that it simply does not subsist in film props and costumes at all. Such activity may infringe design right in such items if done commercially, but as there is an exemption for acts done privately, making replica costumes for ones own use would not infringe any design right that did exist.

To summarise then: both Lucasfilm and Mr Ainsworth will be looking ahead to the next legal round, Ainsworth probably with a wary eye on his possible legal bill (which is of course fiddling small change to Lucasfilm), whilst Mr Justice Mann's judgment not only provides useful clarification of some famously vague areas of copyright law but on the face of it removes, in the UK at least, copyright protection from very many costumes and props depicted on film and TV, as well as provided exemption for their reproduction even where copyright may subsist. Meanwhile, we await 
Lucasfilm v Ainsworth, Part II: Return of Queen's Counsel.

Welcome to LawClanger

Does the world need another intellectual property law blog? Indeed, does it need another intellectual property lawyer? I sincerely hope so, seeing as how I have recently given up a well-paid and very interesting (albeit often in the 'may you live in interesting times' sense) career to try to become one.

Firstly, a little personal background. I'm what would be termed a mature entrant to the profession. I graduated in 1990 from Imperial College with an MEng in electrical and electronic engineering, and joined the RAF as an engineering officer. I served in roles as varied as project management and satellite mission control, and in locations from the Falkland Islands to Iraq. During this time, I gained an MSc in satellite communications engineering and later, through the Open University, my LLB. Having become increasingly interested in law, and approaching the mid-career option point where I could leave with an early pension, I decided to attempt the transition to law, and, in view of my technical background, intellectual property law in particular. I am currently nearing completion of an LLM in IP and IT law at the University of Edinburgh (although I am back in London to finish off my dissertation) and will be starting the Bar Vocational Course at BPP Holborn in September.

Why a blog? I've posted on legal and IP issues in the past on a personal journal, but much of that is not open to external readers and I also feel I should be wary of treating my friends to too many discussions on the application of s.51 CDPA 1988 - if for no other reason than I want to keep them. Hence a separate law blog.

Why LawClanger? For those of you unfamiliar with UK childrens' television circa 1969-1972, I suggest you look here; I have long had a fondness for the Clangers, and have used some variation of the term as a user ID before.  

So, welcome to LawClanger. My main interest is IP, but information technology, Web 2.0 (including arguments as to what it is), open knowledge and indeed any matters pertaining to the interaction of law, technology and society are all likely to be discussed herein.