For the half-year to 31 December 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Jani Ihalainen, Nikos Prentoulis and Mark Schweizer.

Birgit Clark is on Sabbatical till the end of the year

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Monday, 6 July 2015

Never too late: if you missed the IPKat last week ...

Here once again is our ever-dependable friend Alberto Bellan's take on last week's substantive Katposts, specially designed to facilitate a swift catch-up for those good folk whose professional, academic, commercial or romantic commitments kept them from reading them when they first came out.  This week's collection is the 53rd.  Thanks again, Alberto, for all your hard work!
 Case C 147/14 Loutfi Management Propriété intellectuelle SARL v AMJ Meatproducts NV, Halalsupply NV is a Court of Justice of the European Union (CJEU) ruling regarding trade marks containing both Arabic and Latin letters. It emanates from a reference asking whether the meaning of Arab words should be taken into account and give useful guidance for many trade marks that feature non-Latin script  writes Jeremy.  

* Is UberPOP a transport service? A new reference to the CJEU

Many readers will be familiar with Uber, the on-demand ride-sharing platform which has revolutionised the concept of urban transport and which is in deep trouble in a number of EU countries due to its alleged non-compliance with laws and regulations governing on-demand transportation. Thanks to a Barcelona Court reference, the CJEU has been called on to enter the debate -- which goes far beyond taxis and concern the much broader relation between traditional and sharing economy, explains Katfriend Revital Cohen (Baker & McKenzie, Barcelona).

* Jumpin' through hoops? A copyright claim that never got off the ground

Here's a note from Katfriend and occasional contributor Kevin Winters, who takes a look at a recent US copyright dispute concerning the alleged infringement of Michael Jordan’s iconic ‘”Jumpman” logo by Nike.

* Payment for use of protected barley seeds: when prospects for dodging payment recede ...

Jeremy takes a look at Case C‑242/14 Saatgut-Treuhandverwaltungs GmbH v Gerhard und Jürgen Vogel GbR, Jürgen Vogel, Gerhard Vogel, a request for a preliminary ruling to the CJEU made by the Landgericht Mannheim (Germany), on a Community plant variety matter concerning reasonable compensation and farmers’ freedom to propagating purposes under Article 94(1) of Regulation 2100/94.

* Letter from AmeriKat: Spiderman's web ensnares the US Supreme Court in Kimble v Marvel

Annsley gives an account of US Supreme Court’s decision in Kimble v Marvel, relating to a toy-patent allowing children to role-play as a "spider person" by shooting webs "from the palm of [the] hand" by way of pressurized foam string.

* Patent Déjà vu - Hospira v Genentech and another patent dies

Darren sinks his claws in the latest decision in the apparently endless Hospira v Genentech saga. In this episode (Hospira UK Ltd v Genentech Inc [2015] EWHC 1796 (Pat)), Hospira is seeking to invalidate all of Genentech's secondary patents relating to the cancer drug trastuzumab (Herceptin) so that it can market a generic version now that the SPC for the basic patent has expired.

* Are EU policy-makers fighting the right copyright battles?

Debate is currently being undertaken at the level of EU institutions as to whether the current legislative framework in the area of copyright should be updated, with initiatives characterised by a complete lack of support on the side of the public opinion. Is this the right direction to take, wonders Eleonora.

* The IPKat and his friends: the latest round-up of our IP weblog news

Once every three months or thereabouts, the IPKat and Merpel post an update of the goings-on both on this weblog and on other IP-flavoured blogs to which members of the IPKat's blog team contribute. Here’s your chance to know all the relevant IP places of the blogosphere and to get to know the new guest and resident kats.

* No go for GO: Skechers scupper trade mark applications

In the next few weeks, Jeremy will be posting on a number of cases that are still of interest though they are no longer "hot news", these being decisions on which was unable to comment at the time they were published since he was up to his whiskers in conferencing and foreign travel. The first of these is GO Outdoors Ltd v Skechers USA Inc II [2015] EWHC 1405 (Ch), a 19 May decision of Mrs Justice Rose, sitting in the Chancery Division, England and Wales, on an appeal from a decision of the UK Intellectual Property Office. The point, there, was the inherent distinctiveness of “GO walking” and “GO running” for rucksacks and bags (Nice Class 18) and retail services connected with the sale of clothing and accessories (Class 35). 

* Allfiled allegations and interim relief: balancing the interests of litigants -- and customers

Another in Jeremy's series of not-quite-so-recent cases that he is writing up now because they flashed past him when he was too busy to grasp hold of them a couple of months ago is Allfiled UK Ltd v Eltis & 16 Others [2015] EWHC 1300 (Ch), a 19 May 2015 decision of Mr Justice Hildyard, in the Chancery Division, England and Wales, in an action seeking an interim injunction to stop a total of 17 defendants -- former directors and employees and three companies -- from using its confidential information and intellectual property and from carrying on a trade similar to its own.

* Uninsured -- and unregistrable: the OAEE 'victims' mark in Greece

In his debut post, new guest Kat Nikos tells us of an interesting story involving the (perhaps) first trade mark application refusal by the Greek Patent and Trade Mark Office. The application at stake belonged to an association meant to help lawyers and freelances to comply with (or survive) the Freelancers’ Social Security Organization. Unfortunately, it also included the latter organisation’s trade mark.

* Icons, flags and the Hazzards of intellectual property toxicity

Viacom subsidiary TV Land has just decided to pull the plug on a current re-run on US screens following the tragic Charleston church massacre. While the Confederate flag is not a brand in the commercial sense, both flags and brands attract loyalties and generate passions that are often irrational and difficult, if not impossible, to suppress, reflects Jeremy.

* Why Finland is not Silicon Valley: farewell Matti Makkonen, the "father of SMS"

Matti Makkonen, the Finnish father of SMS, passed away this week. He never patented his revolutionary invention, and diverging approaches to IP might be one of the reasons why creating a Silicon Valley in Europe is as easy as finding a Boldrin/Levine book based on a strict, scientific research. The floor goes to Neil.

* Sofa, so good? How to lose both your two trade marks and still come out on top ...

The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC), is a recent decision of Judge Richard Hacon in the Intellectual Property Enterprise Court, England and Wales. As Jeremy recounts, it deals with genuine use, acquired distinctiveness, infringement, passing-off, and many, many sofas.

* Ukunono, The Battle of the Ukulele Orchestras Plays its Last Tune

Jani introduces himself with The Ukulele Orchestra of Great Britain v Clausen & Another (t/a the United Kingdom Ukulele Orchestra) [2015] EWHC 1772, another trade mark decision regarding “The Ukulele Orchestra of Great Britain” soundly opposing The United Kingdom Ukulele Orchestra.

* Arnold J rules on the Beatles, a documentary on their first US concert ever ... and US fair use

Can the unauthorised use of copyright-protected works amounting to nearly 42' in a 95' film be considered fair use under §107 of the US Copyright Act? This, together with other issues, is what Arnold J had been asked to determine in Sony/ATV Music Publishing LLC & Another v WPMC Ltd & Another [2015] EWHC 1853 (Ch) (1 July 2015), an intriguing case decided earlier this week, having to do with the Beatles and a documentary concerning their first US concert ever. Eleonora tells all.

* Le rouge et le noir: when colour hits the IP headlines

Jeremy pens this post on red roses and black cabs. Red roses are those which are included both in UK Labour and Scottish Labour Party’s trade marks, with the first not so happy with the second using a red rose, so that a dispute arose. The black cabs are those examined by Richard Spearman QC (sitting as a deputy Judge of the Chancery Division, England and Wales) in The London Taxi Corporation Ltd v Frazer-Nash Research Ltd & Ecotive Ltd [2015] EWHC 1840 (Ch), a curious tale of taxi look-alikes and bizarre surveys.

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PREVIOUSLY, ON NEVER TOO LATE 

Never too late 52 [week ending on Sunday 14 June] - EU TM reform | Motivate Publishing FZ LLC and another v Hello Ltd | EPO’s Inventor of the Year: poll results | New network for new IP people | Delfi v Estonia | UPC fees | Smith & Nephew Plc v ConvaTec Technologies Inc Canary Wharf Group Ltd v Comptroller General of Patents, Designs and Trade Marks Actavis v Lilly | Council of Europe v EPO | Freedom of Panorama | TM reputation and brain scan | Case management decisions in the Lyrica case.

Never too late 51 [week ending on Sunday 14 June] - GIs in France | IPBC Global 2015 | EPO recap | EPO and OAPI bff? | 3-D Lego trade mark | Garcia v Google | B+ subgroup | EU trade mark reform and counterfeits in transit | French v Battistelli | US v Canada over piracy | UK Supreme Court in Starbucks |  BASCA v The Secretary of State for Business | Patent litigation, music, politics | Product placement in Japan.

Never too late 50 [week ending on Sunday 7 June] - Swiss claims | Italian-sounding trade marks for cosmetics | “IP litigation and Enforcement” event | Saving WiFi | Spy scandal at the EPO | Rihanna v DC Comics | KitKat trade mark | Taste trade marks in the Netherlands | Connectivity and human rights | Trade secrets, client confidentiality and privilege | 3-d printing and counterfeiting | Ericsson v Apple in the FRAND battlefield.

Never too late 49 [week ending on Sunday 31 May] - Another copyright-exhaustion-and-software reference to the CJEU | ORO trade marks and GC | Patent Reform in EU | Copyright in the Bahamas | More and more references to the CJEU: communication to the public and linking | Trade secrets and the FoMo phenomenon | Independence of EPO’s BoA.

Monday miscellany

Two heads can be more effective than one,
at least if they can think independently ...
"Who are the addressees of the InfoSoc three-step test?" Readers of the 1709 Blog may have noticed fellow Kat Eleonora's excited post this morning which poses this question -- and in which she also announces the forthcoming publication in the Journal of Intellectual Property Law & Practice (JIPLP) of an article with a title suggesting a possible answer: "Are national courts the addressees of the InfoSoc three-step test?", co-authored with leading British intellectual property judge and scholar Mr Justice Arnold.  You can read the abstract on the 1709 Blog.  This Kat, who has to declare an interest as JIPLP's editor, just wants to add one thing: while (i) co-authored articles are always popular since they spread the strain of writing and reduce the incidence of errors, and while (ii) anyone can read a statute, directive, treaty, regulation or legal judgment and draw their own conclusions, an article in which the co-authors do not share the same immediate background or standpoint is always likely to have more to commend it since it is better able to take a more rounded view of its subject-matter. Whether it is a judge writing together with an academic, a private practitioner together with a client, or any other combination of experiences and skill sets, the result is generally far more interesting and enjoyable from the editor's point of view -- and, this editor hopes, from the reader's perspective too. 



Reminding patent in-housers. This Kat's friends at Managing Intellectual Property magazine are running a survey on the current attitude of in-house patent attorneys to the emerging regime for unitary patents and a unified patent court for the European Union. You can find details of this initiative, and the reasons for it, from the PatLit weblog here. If, as a respondent, (i) you don't already have an iPad mini 3 and (ii) you actually want one, you can opt to enter your name in a draw for one. 



News from Eponia. This Kat learns from his ever-vigilant friend Merpel that the Institute of Professional Representatives before the European Patent Office (EPI) is getting aspirant patent attorneys involved in European Patent Office (EPO) governance issues at an early stage.  Apparently, in an email offering an online training course for candidates taking the pre-examination of the European Qualifying Examination in 2016, there were accidentally included three attachments setting out the EPI’s view of the proposed reforms of the Boards of Appeal of the EPO, and the response to the ongoing consultation on the matter [here and here].


Conscientious objectors, take note. "L'Oréal Lawyer Claims Company Fired Him When He Wouldn’t Pursue Problematic Patents" was a headline that this Kat deemed too good to hide away in the "Around the weblogs" feature below. It's a blogpost from Suits by Suits ("A legal blog about disputes between companies and their executives", by US law firm Zuckerman Spaeder LLP), about an action brought by patent attorney Steven Trzaska under New Jersey's Conscientious Employee Protection Act. The allegation is that the company set its New Jersey a quota of 40 patents to file in 2014 but that some of them were of "low or poor quality" in that they were, er, cosmetic ... The Kats hope to hear more about the progress of this case, and wonder whether, on a broad construction of its provisions, the Act would also cover conscientious objections by lawyers to instituting patent infringement proceedings or demanding royalties where they have reason to believe that their employer is indulging in a spot of trolling.


Casting nasturtiums on Nagoya? The Royal Horticultural Society, gaining its first ever mention on this weblog, is running its very own Nagoya Protocol event [if you're not sure what this is about, click here for background and here for Darren's earlier Katpost on a failed legal challenge to it by a consortium of German and Dutch plant growers]

It is key that the response to the Nagoya Protocol is from across the horticulture sector and in collaboration with Defra and NMRO. The RHS, will therefore, over the next few months be engaging with key stakeholders from horticulture, Defra and National Measurement and Regulation Office (NMRO) to raise awareness on the Nagoya Protocol, to formulate a shared response and to work towards informing the process of ‘best practices’. This will include holding a meeting for those with concerns about or an interest in the Protocol and the legislation to share their views with Defra and the NMRO, and this will form the basis of how UK horticulture can respond constructively to the legislation.

This meeting will be held at RHS Garden Wisley on 27 July with representatives of Defra and NMRO being present. Those interested in attending this meeting please contact Laura Robins on scienceadmin@rhs.org.uk with your name and email address.


The 'bad old days' of clean car technology ...
Around the weblogs. "What will happen to the Unified Patent Court (UPC) if the UK leaves the EU?" This question, together with some further questions posed on the same topic, is discussed on the PatLit weblog here. On the 1709 Blog, former guest Kat Marie-Andrée Weiss also poses a question: "Did you RT a © today? Photographer Sues Infringers and Retweeters" -- though her supplementary question about the possibility of small claims copyright courts in the US is the bit this Kat liked the best. Elsewhere a somewhat enigmatic blogpost title comes from SOLO IP's Barbara Cookson: "CIPA as an Entity of Intellectual Property Influence", a post that touches on some sensitive issues for UK patent attorneys. The Washington Post's Innovation blog writes up the virtues of patent portfolios predicated on the notion of open licensing in "Why it’s time to open up our patent system" -- particularly in the automotive industry where "clean car" technology is all the rage (Katpat to Chris Torrero for the link). Finally, the jiplp weblog announces the contents of JIPLP's August 2015 issue, together with the full text of Molly Stech's guest editorial on moral mights and the attribution of artists in the United States. 

The General Court declines to visit Nagoya: challenges inadmissible

This Kat reported that August that German and Dutch associations of plant breeders had challenged EU Regulation 511/2014 (the Regulation implementing the Nagoya Protocol and setting out compliance measures for EU users) before the General Court in order to seek its annulment.

Details at that time were a little patchy, although some helpful comments provided a little more information. Now, our eagle-eyed blogmeister has noticed from an e-Bulletin from Herbert Smith Freehills (to whom a very grateful Katpat) that the General Court has rejected both challenges as inadmissible.

The German action was filed by Ackermann Saatzucht GmbH & Co. KG and 16 other persons; the Dutch action was filed by ABZ Aardbeien Uit Zaad Holding BV and 15 other persons, all active in the plant breeding sector.

The two decisions, T‑559/14 and T‑560/14, are basically the same.  They are quite brief, and you can read them (in English!) here and here.  They are probably of more interest for an understanding of who may admissibly challenge an EU Regulation than for enthusiasts of the Nagoya Protocol, although the evidence is that there are more of the former than the latter among the readership of this blog (somewhat to this Kat's regret).

In both cases Council and Parliament requested that the challenges be ruled inadmissible, and the Court agreed.  The Court noted that the Regulation was a legislative act, and not a regulatory act.  Therefore, there were only two routes by which a person might seek its annulment - either the Regulation was addressed to them (which it was not) or if the "act is of direct and individual concern to them".  The Court considered that

It has consistently been held that persons other than the addressees of decisions can claim to be individually concerned only if that decision affects them by reason of certain attributes peculiar to them, or by reason of a factual situation which differentiates them from all other persons and distinguishes them individually in the same way as the addressee.  
The Court then held:
Thus, it is clear that the applicants are affected by the contested regulation only in their objective capacity as users of genetic resources or traditional knowledge associated with genetic resources, as defined in Article 3 of the contested regulation, in the same manner as any other user coming within the scope of the contested regulation. No particular quality or fact characterises them in relation to other persons coming within the regulation’s scope.
Accordingly, the actions were held inadmissible.

It is hard to see that any other outcome to these challenges was possible, but it is a pity that the result means we have no judicial consideration of the legislation, which would have been interesting and maybe even illuminating.

A reminder to readers: the penalties for non-compliance with the Regulation come into force on 12 October 2015, so you have only three months to become familiar with the Nagoya Protocol before it begins to really affect researchers.

Letter from AmeriKat: No Supreme Court rescue for Google in Oracle dispute and Microsoft/Kyocera settlement

The AmeriKat giving tribute to Old Glory
Although she has spent the bulk of her life in the UK, the AmeriKat is undeniably American.  Her meows have a distinctive American twang, she is generally positive and she refuses to apologize if someone steps on her tail. But over 15 years later, on the eve of the Fourth of the July, Her Majesty's Government finally gave the AmeriKat permission to indefinitely stay in the UK.  The poetry of the timing was not lost on the AmeriKat as she celebrated her right to remain in the UK, but also her right to return to the US.  Although yesterday's celebrations did not see her watching as delicious aromas of charred vegetables and meat wafted over red, white and blue adorned revelers, the AmeriKat was still thinking about her Founding Fathers and the role intellectual property played with the introduction of the Copyright and Patent Clause in the US Constitution in 1787 and the first US patent being issued to Samuel Hopkins on 31 July 1790 .  Almost 230 years later, the US courts are still hard at work in striking the right balance for IP protection and the encouragement of innovation, but not always without criticism.

You say "potato", I say "potash":
the first US Patent
Last Monday, the US Supreme Court denied Google's writ of certiorari to re-examine the 2014 decision of the Court of Appeals for the Federal Circuit (CAFC) in favor of Oracle which held that application programming interfaces (APIs) in Java were subject to copyright protection.  APIs are protocols that allow third-party software to communicate with an application.  The CAFC's decision overturned that of Judge Alsup's in 2012 who had held that APIs were not protected by copyright law (see previous AmeriKat post here).  In referencing the merger doctrine (an exception to the idea-expression dichotomy whereby the courts "will not protect a copyrighted work from infringement if the idea underlying the copyrighted work can be expressed in only one way, lest there be a monopoly on the underlying idea"), Judge Alsup declared that:
"So long as the specific code used to implement a method is different, anyone is free under the Copyright Act to write his or her own code to carry out exactly the same function or specification of any methods used in the Java API. It does not matter that the declaration or method header lines are identical. Under the rules of Java, they must be identical to declare a method specifying the same functionality — even when the implementation is different. When there is only one way to express an idea or function, then everyone is free to do so and no one can monopolize that expression. And, while the Android method and class names could have been different from the names of their counterparts in Java and still have worked, copyright protection never extends to names or short phrases as a matter of law."
No ordinary Joe in
the eyes of the CAFC
The CAFC overturned this decision last May holding that the merger doctrine did not apply as the evidence showed that Oracle had "unlimited options as to the selection and arrangement of the 7000 lines Google copied" (see Elmeownora's piece here).  Google, in utilizing Oracle's APIs as part of the Android mobile operating system it developed, infringed Oracle's copyright in the Java software.  In their petition, Google urged the Supreme Court to limit the the circumstances in which software makers are able to wield copyright law to restrict the use of basic software commands (an argument not out of kilter in the SEP/FRAND patent landscape). This argument would have been critical to the industry as APIs are widely used across the telecoms sector.  A 2014 Forbes article discussed the increasing strategic importance of APIs in the sector (see article here).

There has been an outcry from many commentators that the Supreme Court's ultimate denial, and the filing by the Department of Justice, was based on the CAFC's fundamental misunderstanding of the difference between APIs and software and will allow Oracle and others to "have an unprecedented and dangerous power over the future of innovation" (see the EFF's amicus brief which was signed on behalf of 77 computer scientists).  The case will now return back to federal court in San Francisco where the court will decide whether Google's use of the software was "fair use".

Microsoft has dropped its patent infringement suit against Kyocera which claimed that three of Kyocera's Android smartphones infringed seven of its patents.  The parties have now entered into a agreement which expands upon a previous licencing arrangement with Kyocera which "enables the companies to use a broader range of each other's technologies in their respective products through a patent cross licence" (see Microsoft press release here).  Kyocera follows Barnes and Noble, Foxconn, Invetec and Samsung in the line of companies that have recently settled with Microsoft.

Sunday, 5 July 2015

Le rouge et le noir: when colour hits the IP headlines

When does a red rose look too much like a red rose?  Not everybody spotted this item in the Scottish press last week, but this Kat is surprised that he did not receive the link from one of his many Scottish readers. It's a piece published in heraldscotland with the title "UK Labour tries to block trademark for Scottish Labour Party". This article, in relevant part, reads as follows:  

Labour councillor Dennis Goldie applied last year to secure the name Scottish Labour Party in the hope it would be used by a new stand-alone organisation. Goldie ... wanted to gift the trademark to the leader of Scottish Labour in the event of a general election drubbing [in which the previously dominant party was left with just a single seat]. He admitted the £500 application to the UK Intellectual Property Office (IPO), which was paid for by a local Labour club, would be a "surprise" to HQ, but said it was "done to be helpful". However the UK Labour Party has now raised an objection with the IPO. ...


Goldie ... applied to register the trademark after realising Scottish Labour had never safeguarded its own name. Covering electronic and printed material, clothing, badges, fundraising, and political activity, the trademark was intended to protect the name being hijacked by opponents. But Goldie was clear he also wanted to obtain the name to make it easier for Scottish Labour to break from UK Labour and become fully autonomous. "In the country at large, there probably is a view that the Scottish Labour Party should be independent of the national Labour Party," he told the Sunday Herald at the time. ...

A Labour spokesman said: "The Scottish Labour Party is at its best when we work together with friends and colleagues across the whole of the UK Labour Party. The old trade union slogan applies to our country as much as to our party - unity is strength."
The Labour arty's election manifesto position on recognition of the importance of intellectual property is summarised here. The red rose, as a badge of political affiliation, is much older than the Labour Party, though, being the symbol of the House of Lancaster in the Wars of the Roses.


*****************************************************************


The defendant's taxi
When does a black cab look too much like a black cab? We won't know the answer to this question until November, but in the meantime thanks to a hot-off-the-press decision of Richard Spearman QC (sitting as a deputy Judge of the Chancery Division, England and Wales) in The London Taxi Corporation Ltd v Frazer-Nash Research Ltd & Ecotive Ltd [2015] EWHC 1840 (Ch), we do know that the trial Judge will be making his or her mind up in this passing-off action without the assistance of a survey of the views of 1,000 members of the taxi-hailing public.

The claimant's taxi
The claimant (London Taxi Company, LTC) carried out a pilot survey asking 98 Londoners "Do you think there is a connection between the company that makes this vehicle [above, right] and the company that makes this vehicle [left]?". LTC then sought the Court's permission to roll this out to a full 1,000 person survey. The deputy Judge, applying the Court of Appeal's guidance in Interflora 1, Interflora 2 and Zeebox, concluded that the survey failed both the "real value" test and the cost-benefit test. He said that this was a case involving ordinary services with which a Chancery Judge would be familiar, that the survey question breached the Whitford Guidelines [summarised by Lewison LJ in Interflora I] and that the photographs shown to respondents did not show the differences between the vehicles sufficiently or fairly.

This Kat can't help noticing that the photo of the LTC taxi appears to have been taken at night-time and that the photo of the alleged infringer looks as though it was taken towards nightfall, neither of which is the very best time for enabling consumers to highlight differences between the vehicles. Merpel disagrees: she is more likely to want to keep her fur dry by catching a black cab at night and when it's raining -- conditions in which all cats cabs are said to look alike ...

Le Rouge et Le Noir here

Thanks go to Chris Torrero for the first item, and to an anonymous benefactor for the second. Both receive katpats for their services.

Arnold J rules on the Beatles, a documentary on their first US concert ever ... and US fair use

Here Comes the Sun
also for the defendants in this case?
Can the unauthorised use of copyright-protected works amounting to nearly 42' in a 95' film be considered fair use under §107 of the US Copyright Act?

This, together with other issues, is what Arnold J had been asked to determine in Sony/ATV Music PublishingLLC & Another v WPMC Ltd & Another [2015] EWHC 1853 (Ch) (1 July 2015), an intriguing case decided earlier this week, having to do with the Beatles and a documentary concerning their first US concert ever. This was held at the Washington DC Coliseum in 1964, and is considered the beginning of the Beatlemania in the US. On that occasion the group performed 12 songs, including the lovely All my loving. The 35' concert was videotaped for subsequent exhibition at cinemas and theatres across the US.

The documentary is "a skilfully-edited synthesis of three main types of material: the [c]oncert [v]ideo; other archive films and still photographs; and newly-filmed interviews with a number of interviewees." Its narrative is summarised at paras 17 and 18 of the judgment. As highlighted by Arnold J, "[i]t is important to appreciate that the [d]ocumentary incorporates almost the whole of the [o]ncert [v]ideo[para 19].

Background

In 2009 one of the defendants (Iambic) acquired a copy of the master tape of the concert video with the intention of making a documentary of the concert entitled The Beatles: The Lost Concert. Subsequently the rights to the tape were transferred to the first defendant (WPMC).

Between late 2009 and October 2010 Iambic negotiated with the claimants (collectively SATV, holders of the rights to the relevant Beatles songs) for a licence to reproduce and otherwise exploit the works as part of the soundtrack to the documentary. No synchronisation licence was executed as a result of these negotiations.

In 2012 SATV discovered that the documentary was being promoted by a means of a website and a trailer. 

Among other things, SATV brought proceedings in both the UK (where the documentary had been made, and pursuant to the Supreme Court decision in Lucasfilm) and the US (this being the defendants' principal target market).

The defendants did not dispute that, lacking a licence, they had committed acts that infringe UK copyright (with no defences being available).

What Arnold J had to determine was:

(1) Whether (under English law) a collateral contract to grant a synchronisation licence was concluded during the negotiations; 
(2) Whether (under English law), if no collateral contract was concluded, the claimants were estopped from denying that they had granted a synchronisation licence; 
(3) Whether the exploitation of the documentary in the US would be an infringement of the US copyrights in the works, or whether instead the fair use defence would apply [the point under US law is currently being considered also in parallel proceedings in the US].  

Mr Justice Arnold
The judgment

Arnold J concluded in the negative in relation to all three issues.

In relation to the first point, the judge held that no contract could be considered as subsisting between the claimants and defendants. 

As regards the proprietary estoppel point, Arnold J derived from Motivate Publishing that such defence is not available in a case like the one at hand, ie a 'subject to contract' case.

Fair use under US law

In determining whether the use made of the songs could be considered fair use under §107 of the US Copyright Act, the judge started his analysis by recalling the relevant factors, these being:

"(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work."
Besides the US Supreme Court decision in Campbell, Arnold J also recalled Pierre Laval's influential article entitled Toward a Fair Use Standard, in which he held that "the answer to the question of justification turns primarily on whether, and to what extent, the challenged use is transformative. The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original."
As a preliminary point Arnold J also addressed criticisms of the fair use doctrine as "indeterminate and unpredictable". The judge recalled that "[o]ver the last decade, however, work by scholars such as Pamela Samuelson, Barton Beebe and Matthew Sag has demonstrated that what at first blush may appear to be an amorphous mass of individual decisions can be analysed and categorised in the same way as other areas of common law (negligence, for example)." [para 100]
Then Arnold J turned to individual consideration of the four fair use factors, as considered in Campbell.

Not this time
With particular regard to the first three factors, he rejected the claimants' argument that to succeed in a fair use defence, the defendant must show that no more has been taken of the copyright work than is necessary for the transformative purpose. 

According to the judge, "what the defendant must show is that the amount taken is reasonable, and not excessive. If no more is taken than is necessary, then that will be reasonable. The defendant does not have to show that he has taken the minimum necessary, however." [para 107] 

The judge also accepted WPMC's contention that "it can be fair use to copy the whole of the copyright work where this is justified by the transformative purpose, particularly but not exclusively if the copy is not a high quality one (e.g. where an image is reduced in size)." [para 108]

In considering whether the use made of the copyright works [isn't it just so refreshing to read about fair use without seeing references to 'copyrighted' works?] could amount to fair use, the judge held that:

Factor (1) - The documentary amounted to a commercial use of the works, and was partly transformative.

Factor (2) - The copyright works are fully expressive works falling within the core of copyright protection.

Factor (3) - The documentary reproduced the entirety of each of the copyright works. According to the judge in this case "the amount copied is clearly excessive. If the [d]ocumentary had merely used a number of excerpts from the [c]oncert [v]ideo, and hence of the [c]opyright [w]orks, then that might well have been reasonable having regard to the transformative purpose. As it is, however, the Documentary goes well beyond that ...[W]hat WPMC are presenting amounts to a package of the [c]oncert [v]ideo with additional material. Furthermore, there is substantial additional use of the [c]opyright [w]orks as part of the soundtrack. Not only does the usage exceed what is necessary to illustrate the nature and effect of the Beatles' performances of the [c]opyright [w]orks, it exceeds what is reasonable for that purpose" [para 116]

Factor (4) - Here the defendants failed to establish that the documentary would not damage the market for, or potential value of, the copyright works if permitted as fair use. On the contrary, Arnold J considered "likely that this would damage the market for, or potential value of, the [c]opyright [w]orks." [para 118] 

Hence Arnold J concluded that inclusion of the copyright works in the documentary did not amount to fair use. 

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