13 June 2011

Apples Growing Clouds

Image by Sean MacEntee on Flickr

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Apple officially launched its much-hyped iCloud suite of services, applied for the registration of the trademark “iCloud” and entered the hostile territory of trade mark infringement: the Arizona based iCloud Communications LLC brought legal proceedings against Apple Inc before the Federal District Court for the District of Arizona.

Does it sound familiar? I personally felt reminded of Apple’s dispute with Fujitsu over the iPad trade mark. Indeed, the current situation is similar to the iPad case, but nevertheless distinctive in some important instances.

When I first read about the lawsuit I navigated to the US Patent and Trademark Office’ website and performed a search thereby processing the sign “iCloud”.
And you know what?
Apart from Apple’s numerous applications, there is only one US registered trade mark consisting of the iCloud sign and it is owned by the Swedish company Xcerion AB. The same is true also with respect to the Community Trade Mark  iCloud. Xcerion has registered both, the US and the Community Trade Mark for classes 9 and 42.

What follows is that iCloud Communications’ mark

Is Not A Registered One

Should they then qualify to claim infringement at all?

Yes, however not on the ground of registered trade mark infringement, but on unfair competition and false designation.
Indeed, iCloud Communications’ complaint relies on § 1125 (a) of the Lanham Act as well as on Arizona state law.
Precisely, iCloud Communications claims that Apple infringes upon the iCloud trade mark of iCloud Communications, because

By virtue of iCloud Communications’ long and extensive use of the iCloud Marks, its advertising and promotional campaigns and expenditure of substantial monies thereon, iCloud Communications had, prior to June 6, 2011, established significant goodwill and valuable rights in and ownership to the iCloud Marks in connection with computer telephony and electronic data transmission and storage services.

and

The goods and services with which Apple intends to use the “iCloud” mark are identical to or closely related to the goods and services that have been offered by iCloud Communications under the iCloud Marks since its formation in 2005.

Reads pretty logical, does it not?
Well,

Besides One Thing

Apple’s attempt to register and use the iCloud mark is not the first one: iCloud Communications themselves mention the previous trade mark registration of Xcerion

whose use of the mark post-dates that of iCloud Communications by two years.

So, is there any reason why iCloud Communications omitted to sue Xcerion?

Hmm, from what I read on the Internet, some wagging tongues allege that Xcerion’s Pockets

Were Not Deep Enough

Hence, observing the development of the iPhone and iPad disputes, this one is also likely to end up in a settlement agreement.

In that event Apple will have to pay a (negligible) amount of money to operate a nursery in the clouds.

From a legal point of view, however, the matter involves the (alleged) infringement of an unregistered trade mark by a registration application.
This is not really common place and thus of a greater interest for me.
I will therefore stay focused on it.

Did I miss something? It is now you turn to add -)!

Europe’s Annual Report On Bulgarian Telecommunications – An Example Of Finger-Wagging

Image by World Economic Forum on Flickr

374711646_6f66bdc42d_zI know she is no longer the European Commission’s iron lady responsible for Information Society and I found it a pity when she took over the justice and fundamental rights resort.

Nevertheless, the Information Society‘s 2011 report on the Bulgarian telecommunications market bears her style and, when you read it, you can nearly perceive her wagging finger. So I chose to use her image as a story opener.

Going back to the report,  I could identify three important areas of Commission’s criticism.

Let me start with the

Mobile Termination Rates

While the mobile termination rate („MTR“) levels fell down to 6.65 €-cents per minute for peak traffic and 5.64 €-cents per minute for off-peak traffic in 2010, they still exceeded the EU peaktraffic average of 5.46 €-cents by 22%.

The practice of exempting calls originated outside the territory of Bulgaria from MTR regulation became a major issue of complaints to the European Commission since it led to higher termination charges for international incoming voice calls.
While the Bulgarian national regulator, the CRC, considered this market situation to be consistent with its notified market analysis, the European Commission urged the CRC to remedy the issue by uniformly enforcing regulated MTR levels to all types of calls irrespective of their origin.

Number Portability

The CRC announced the introduction of a one-stop shop procedure for all types of number portability as of 6 August 2010, which also made operational non-geographic number portability.

In effect, customers can submit a single application only to the receiving operator. According to the new procedure, the period to port a single number has been reduced to 7 days (10 days for a non-geographic number of the 700, 800 or 900 range or a group of geographic numbers), compared to the EU average of 7.7 days for fixed and 4.2 days for mobile numbers.
The wholesale charge for porting a single number amounts to € 9.2 (€ 15.9 for a non-geographic number), and a discount of 30% applies when porting a group of at least 500 numbers. A retail charge may be levied by the receiving operator, yet this has not become common practice.

In reality, however, the one-stop shop procedure shows flaws and that results in a comparably low amount of ported numbers – according to the CRC only 139 377 mobile numbers (1.38% of all mobile subscribers) and 60 337 fixed numbers (2.5% of all fixed subscribers) have been ported until the end of January 2011.

Consumer Protection

Do you remember the issue with the automatic prolongation of the individual contracts between consumers and mobile operators?
Well, that together with the number portability troubles became the major topics of the about 1 700 consumer complaints lodged at the CRC.

It is funny, but the CRC did not attempt to enforce an adequate consumer protection by undertaking legal proceedings against the mobile operators  – something to which the CRC would be empowered by law. It attempted to merely persuade the operators instead. This is very likely the reason why the European Commission has made the brief and politically correct statement that

With the endorsement of the CRC, all mobile operators have indicated their consent to remove automatic prolongation clauses from individual contracts.

A large portion (about 460) of the complaints on number portability (about 1000) referred to the new one-stop-shop procedure. Due to technical problems with M-Tel’s billing system delivered by Amdocs, many mobile customers experienced problems with incorrect invoices and inadequate service provision.

Further complaints referred to issues with the scope of universal service (in particular fax), availability of telephony services or invoicing.
The CRC has issued 340 penalties to operators, out of which 168 on number portability.

Wrap-Up

All in all, Bulgaria’s MTR remain among the highest in Europe, the number portability is making only a slow progress, if any, and the regulator is not capable to warrant an adequate consumer protection.

No wonder why the report is a finger-wagging towards Bulgaria.

10 June 2011

Where “Preponderance Of Evidence” Is Not Enough: Microsoft Defeated Before SCOTUS

Image by Matt Wade on Flickr
Supreme Court

The cold war of software patents has reached the status of a nuclear winter: earlier today the Supreme Court of the United States (“SCOTUS”) delivered its ruling in the case of i4i v Microsoft.

Background

Some years ago I blogged on how Microsoft got hit by a software patent.
However, the Redmond company denied infringement and sought a declaration that i4i’s patent was invalid and unenforceable.
Specifically, Microsoft claimed that i4i marketed the software known as S4 more than one year prior to the filing for its statutory protection.

Not surprisingly,  Microsoft contended that a defendant in an infringement action need only persuade the jury of an invalidity defence by a preponderance of the evidence.
In the alternative, Microsoft insisted that a

preponderance standard must apply at least when an invalidity defense rests on evidence that was never considered by the PTO in the examination process.

Nevertheless, Microsoft lost its case before the (patent owners friendly) District Court for the Eastern District of Texas which applied the long-standing jurisprudence of the Federal Circuit according to which

a patent shall be presumed valid and the burden of establishing invalidity rests on the party asserting such invalidity.
Under the Federal Circuit’s reading of §282, a defendant seeking to overcome this presumption must persuade the factfinder of its in-validity defense by clear and convincing evidence.

The Federal Circuit affirmed the decisions of the District Court and granted a certiorari to the Supreme Court which issued the final rejection to Microsoft’s claim of invalidity.

As PatentlyO‘s Dennis Crouch writes, Microsoft will now likely be forced to pay the $250+ million judgment for infringing i4i’s patent.

What Is The Moral Of The Story?

We must not forget that Microsoft was smote and consequently struck down by a patent troll. Since patent trolls are usually interested to sue “infringers” and force them into settlement agreements, I personally wonder why the guys from Redmond did not undertake such an agreement.

I was made aware that the patent troll allegations towards I4I might be unjustifiable.
Indeed and, unlike non-practicing entities, the company appears to have developed a product and established a sizable client base, particularly among pharmaceuticals such as Bayer, Merck and Schwartz Pharma. Obviously, Microsoft had showed an initial interest on I4I’s patented technology, but finally decided not to enter into a commercial agreement. The patent infringement lawsuit was the consequence.

One question remains: why did Microsoft act that way? Did they attempt to establish a new authority with regard to bad patents, since I4I’s patent grant showed some flaws and that remained undisputed before the Supreme Court? Was Microsoft’s challenging of the governing standard of proof, which currently favours patent owners and, their attempt to replace it with a standard more favourable to defendants in patent suits, a part of a larger strategy?

Either way, the creators of Windows failed.

All in all a disappointing decision – the Supreme Court has had a good chance to lower the threshold to invalidate bad patents, but acted pretty much as Pontius Pilate instead:

Congress specified the applicable standard of proof in 1952 when it codified the common-law presumption of patent validity. Since then, it has allowed the Federal Circuit’s correct interpretation of §282 to stand. Any re-calibration of the standard of proof remains in its hands.

7 June 2011

A Single Market For Creativity And Innovation?

Image by Jordanhill School D&T Dept on Flickr

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About two weeks ago the European Commission’s Directorate General for the Internal Market issued its wide-ranging strategy to modernise intellectual property rights.

I could hardly call it a major move, although it claims to present Commission’s

overall strategic vision for delivering the true Single Market for intellectual property that is currently lacking in Europe – a European IPR regime that is fit for tomorrow’s new economy, rewarding creative and inventive efforts, generating incentives for EU-based innovation and allowing cultural diversity to thrive by offering additional outlets for content in an open and competitive market.

Sounds pretty much like a bunch of clichés, does it not?
Indeed, while the majority of writers and commenters seem to have ignored the couple of really

Refreshing Statements

thereby choosing to stay focused on the lots of blah-blah, I decided to discuss the document from a slightly different perspective once I had given those 25 pages of text a careful read.

So what was different?

Let me start with the

Copyrights

The Commission has realised two very important things:

First,  Europe remains a patchwork of national online markets. The ongoing lack of a unified European copyright law disables millions of citizens to use and share published knowledge and entertainment easily and legally across the Union and irrespective of their Member State of residence.

Second, creators of user generated content (UGC) need a recourse to a simple and efficient permissions system to use third-party copyright protected content in their own works, provided that their UGC is created for non-commercial purposes.

This sounds promising as an attempt to foster creativity, does it not?

Unfair Competition

I was amazed to read that the Commission has finally found the guts to address the grey area of unfair competition, albeit limiting it to trade secrets and parasitic copying as examples.
Why a grey area? Simply because it is dealt with by Member States using different concepts and providing different levels of protection.
Thus, while some Member States (e.g. Austria, Germany, Czech Republic, Spain, Belgium, Denmark, Finland) have specific provisions on unfair competition, other Member States’ laws rely on their Civil Code, either in specific provisions (Italy), or by the provisions generally applicable to tort (France, The Netherlands).
Finally, in the United Kingdom there is no law on unfair competition and rather the tort of passing off must be used.

The Commission promises to deliver a comprehensive study to assess the economic benefits that would derive from an EU approach in the area of unfair competition.

Parasitic copying rides on others’ creativity and innovation and must be opposed, preferably on an EU level.
So, I am really curious as to this study’s findings.

Trade Marks

Even though national trade mark registration in the EU Member States has been harmonised for almost 20 years and the Community trade mark was established 15 years ago, the Commission is keen to revise both the Trade Mark Directive and the Community Trade Mark Regulation.

To be honest, I support this move. The Commission has figured out that traders need faster, better and tighter registration systems. Further and following the repercussions of the Court of the European Union’s decision in Louis Vuitton vs Google, the Commission has acknowledged that the marketplace needs an Internet suitable definition of a trade mark and what constitutes a use of it.

Everything Else

For the sake of completeness, I should say that the Commission has also addressed issues relating to the unitary patent, non-agricultural geographical indications and the fight against counterfeiting and piracy.

However, those turned out to be nothing else but an “old wine in a new bottle” and I consequently decided not to comment on them.

Conclusion

All in all the Commission has reviewed the current European framework on intellectual property and has come to the only permissible outcome: the European Union lacks either the necessary harmonisation (in the realm of copyright and unfair competition) or clarification (in the realm of trade marks) and is therefore far away from a single market for creativity and innovation.

The proposed actions are capable of providing some relief, provided, however, that they survive the assumed attacks of lobbyists.

How about you?

What do you think should be done to achieve a single market for creativity and innovation?

5 June 2011

Pause

Image by Eran Finkle on Flickr
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I had a very busy week and that is the reason why I had to pause writing in the Reguligence Weblog.

What had happened?
Well, I travelled to Sofia and had numerous meetings, for the purposes of both business and pleasure.

I also attended the Open Camp Sofia 2011, but I deliberately omit to post a link to the event (Bogo, fix the website please!)

I am currently having blog posts reviewing the recent European Commission’s communication COM(2011) 287 and a UN report on, amongst other things, the three strikes policy and in the pipeline.

See you soon!

29 May 2011

CopyPorn

Image: Bloke Having A Fag Outside A Sex Shop by Mike Serigrapher on Flickr

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“Are porn films copyrightable and hence covered by copyright protection?” a friend asked me yesterday. His concern was that “immoral” films often face statutory limitations with respect to their distribution.

“That is a very good question”, I thought and gave him a short answer.

Basically, my answer relied on that pornographic films are works in the first place, more precisely – cinematographic works and that as such they will very likely qualify for copyright protection. I further opined that any limitations to their distribution should not prejudice their character as works of copyright and hence their protection under copyright law.

In this blog post I will give a more profound answer thereby covering the Berne Convention as well as the national laws of three countries. I chose those countries because they not only have a long-established and prominent copyright protection, but they have also a well-developed entertainment industry and, as a part thereof, production and consumption of pornographic films.

Good, let me will start with the

Berne Convention

Article 2 of this treaty, also referred to as the mother of copyright, reads as follows

(1) The expression “literary and artistic works” shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.

Convention’s Article 2 bis leaves it to the members states to decide whether certain categories of works are to be protected, but limits the categories only to (i) speeches, (ii) lectures and addresses and (iii) collections of (i) and (ii).
Anyway, the convention remains silent on the question whether moral deliberations should prevent a work from copyright protection.

United Kingdom

The United Kingdom (UK) ratified the Berne Convention with effect from 5 December 1887. Even though films have since then represented a single branch of copyright works, courts on the British Islands may nevertheless refuse to recognise copyright protection for policy reason such as immorality.
In a somewhat older case from 1916 Younger J ruled that there was no copyright in a film because it constituted a “sensual adulterous intrigue”. The House of Lords has cited this ruling with approval as far back as 1990, though not necessarily in conjunction with pornography.
In the very recent case of Media C.A.T. that involving the copyright infringement in pornographic films, however, Birss QC did not question the copyright character of the pornographic works in suit.

What remains to say is that there is still some doubt as to the exact effect of immorality under UK law. It is unclear whether immoral works lack copyright at all, or that equity will not enforce the copyright.

USA

Although the United States acceded to the Berne Convention as late as 1989, their federal copyright law has always protected motion pictures and other audiovisual works. However, the same has not always been true with respect to pornographic works.
According to the PrawfsBlawg, “obscene” (=hardcore) pornography could not qualify for copyright protection until 1979. It was the Court of Appeals for the 5th Circuit which declared obscene films protected by copyright law. This ruling led to the FBI copyright warnings now found at the start of videotapes or other media carrying a film.

Germany

With respect to the copyrightability of films, the German Copyright Act more or less repeats Article 2 of the Berne Convention. The Copyright Act likewise remains silent on (im)morality driven exclusions of copyright.
However, Article 184 of the German Penal Code reads as follows:

1) Whosoever with regard to pornographic written materials (section 11 (3))

  1. offers, gives or makes them accessible to a person under eighteen years of age;
  2. displays, presents or otherwise makes them accessible at a place accessible to persons under eighteen years of age, or which can be viewed by them;
  3. offers or gives them to another in retail trade outside the business premises, in kiosks or other sales areas which the customer usually does not enter, through a mail-order business or in commercial lending libraries or reading circles;
    3a. offers or gives them to another by means of commercial rental or comparable commercial supply for use, except for shops which are not accessible to persons under eighteen years of age and which cannot be viewed by them;
  4. undertakes to import them by means of a mail-order business;
  5. publicly offers, announces, or commends them at a place accessible to persons under eighteen years of age or which can be viewed by them, or through dissemination of written materials outside business transactions through the usual trade outlets;
  6. allows another to obtain them without having been requested to do so;
  7. shows them at a public film showing for an entry fee intended entirely or predominantly for this showing;
  8. produces, obtains, supplies, stocks, or undertakes to import them in order to use them or copies made from them within the meaning of Nos 1 to 7 above or to facilitate such use by another; or
  9. undertakes to export them in order to disseminate them or copies made from them abroad in violation of foreign penal provisions or to make them publicly accessible or to facilitate such use,

shall be liable to imprisonment of not more than one year or a fine.

What does it mean? It means that porn films are copyrightable under German law, but their distribution, basically to persons under 18, is criminalised.

Conclusion

It appears that pornographic films are capable of attracting copyright protection under the relevant jurisdictions of the United Kingdom, the United States and Germany.
While the UK and the US have interlinked copyrightability with public morality and their courts have certain powers to determine whether copyright should subsist in obscene films, Germany follows a clear-cut approach stating that even pornographic films are copyrightable, albeit their distribution might be subject to morality or other public policy driven limitations.

Want  to tell how your jurisdiction deals with the copyrightability and/or distribution of pornographic works?
Simply use the comment section below.

26 May 2011

One Breach To Compromise Them All

Image: Demon Dog by Samuel Cockman on Flickr

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This is a watchdog. A very cute one.
Its job is, nevertheless, to bark to alert its owner of an intruder’s presence and scare away the intruder.

France, the country which advertised the three strikes rule on a large scale and did eventually adopt it, has also a watchdog.
A dog to watch for file-sharing and online piracy of any kind.
Not a very cute one.

In fact, the French government represented by HADOPI, the executive agency established to enforce the three strikes rule, has commissioned the private company Trident Media Guard (TMG) to scan file-sharing networks and gather the IP addresses of alleged copyright infringers.

However, this watchdog was hacked and suffered a massive

Data Breach

some ten days ago.

I found the information about the breach on Ars Technica which have been continuously covering (click and click) the issue.
It appears that not only the unguarded servers were TMG’s Achilles’ heel. Their anti-piracy software was full of faults as well.

What a negligence, huh?

But that would not be all!

Imagine that this poorly managed company, empowered by the order of a special government agency and, employing a software that would very likely fail during a diligently conducted acceptance test, has the means to count your three strikes and

Send You Off

the digital playground?

The good news is that HADOPI must have considered this state of affairs unacceptable and has thus (temporarily) suspended TMG’s authorisation to collect the IP addresses of French Internet subscribers.

If the Court of the European Union follows Advocate General’s opinion in Scarlet vs SABAM, it could rule such Internet scanning outdated.

Either way, TMG’s data breach did its deed – it managed to harm the three strikes policy’s image and to (hopefully) ultimately and entirely compromise it.

24 May 2011

Of Superinjunctions, Free Speech And Privacy Protection

Image by Sara Simmons on Flickr
5746811723_c6ee3aa242_oYou will most probably recognise his face if you are a football fan.
This guy must have had a harsh time during the last couple of weeks.
Actually, he must have gone through hell.
What he has reportedly done may be controversial and stay at odds with morality, but this is not the subject of the article you are reading.
It is about his right to private life.

My point is that since the man on the image has not committed any wrong, no public interest should qualify to deprive him of a right provided for by Article 8 of the European Convention on Human Rights.
The forgoing is not to be understood as the advocacy towards a single individual. It is the advocacy towards the right of private life par excellence.

Want to read more? Good,

Let’s Kick It!

Allegedly, the man on the image has had an affair with a model and ex BigBrother contestant. However, after the model had contemplated to disclose their relationship, he managed to obtain a

Superinjunction

(aka gagging order) to prevent potentially embarrassing details about his private life being published.
What you have to know about superinjunctions is that they prevent anyone from publishing information which is said to be confidential or private about the applicant. That not enough, superinjunctions prevent anyone from reporting that they even exist.

The English High Court granted the order.

Nevertheless, the Scottish Sunday Herald

Dared To Publish

footballer’s image claiming that it has no obligations under an English injunction and if anyone wants to prevent the whole of the British media from reporting on a story, then they will need to get separate injunctions in all jurisdictions.

The interesting thing preceding the publication in Scotland is that, as soon as Twitter users had started to tattle about the alleged affair of the footballer, he managed to obtain a gagging order also against Twitter.
Despite any deliberations as to whether Twitter is subject to the jurisdiction of English courts, the superinjunction flopped in meeting its purpose. It not only failed in preventing the spread of information on the microblogging platform, it bestowed Twitter an unprecedented increase in traffic instead. Every user interested in the matter was tweeting said footballer’s name.

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Undoubtedly, this teaches us that

Superinjunctions Have Only Limited Effect

when it comes to Web 2.0 and social media.

The reactions could not come quickly enough.
Lord Chief Justice Judge lamented that “modern technology is totally out of control”. David Cameron added “It’s not fair on the newspapers if all the social media can report this and the newspapers can’t” and announced that “the government considers to legislate on privacy issues in order to catch up with the advent of social media”.

Would you support such legislation efforts?
I would.
I could accept minor limitations and would easily survive the lack of knowledge about whom a celebrity allegedly slept with. Because I know that such a minor concession of the society as a whole, would end up saving said celebrity’s private life.

Filtering Twitter?

I spent a couple of hours on Twitter this Sunday and read as many messages marked with a #Superinjunction hashtag as possible.
My impression was not that the users celebrated the victory of free speechover gagging and censorship. No, their overall message to the footballer sort of read “You think you can hide behind a superinjunction? You cannot, it simply does not work on Twitter”. They seemed happy to have tracked him down. That had nothing to do with free speech, that was hate speech.

Besides, it was in a clear breach with the superinjunction, of which everybody on Twitter already knew.

I delayed the publication of this article, because today I had a little chat with Jane Lambert on Twitter. There she expressed her concern as to whether a foreign social network should be allowed to operate in the jurisdiction of England and Wales if it is in breach of a fundamental right granted by the European Convention On Human Rights and cannot prevent flouting of an English court order.

She opined that networks should develop filtering technologies, but should deploy them only sparingly in democratic societies.

What do you think?

21 May 2011

Tattooing Copyright

Image by shelbysdrummond on Flickr

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I guess that it is needless to introduce the character on the image above. He has the image of a scandalous guy and he was featured in more or less such light in the film The Hangover. Did you watch it? I did and found it entertaining.

By the way, do you belong to those eagerly expecting The Hangover Part II? Well, do not be impatient if this blockbuster takes somewhat longer to come in a theater near you.

You will not believe it, if I tell you why this is likely to happen!
Ok, here I go.  The thing is that Mr S. Victor Whitmill, a tattoo artist, claims that Warner Bros

Have Infringed His Copyright In A Tattoo

Yes, you are reading this correct! Well, it is not just some tattoo – it is the tattoo Mike Tyson is wearing on his face and the same arguably worn by an actor in The Hangover Part II. While Mr Whitmill gave its permission to Mr Tyson to lawfully wear the tattoo, this has not been the case with Warner Bros.
The New York Times has brought this amusing story and it truly deserves a read.

Ok, let me address the main question here: can copyright subsist in a tattoo?

Section 102 (a) of the US Copyright Act 1976 states that

Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.
Works of authorship include the following categories:
(1) literary works;
(2) musical works, including any accompanying words;
(3) dramatic works, including any accompanying music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works;
(7) sound recordings; and
(8) architectural works.

I would say that once Mr Whitmill establishes that his tattoo meets these criteria it will be protected under US copyright law.
What do you think, is this completely impossible? Let us have a closer look at it!

Work

First of all Mr Whitmill will have to prove that his tattoo is a work. I believe this will cause no problems – a tattoo is not different from a painting, which is definitely a (pictorial or graphic) work.

Fixation

Fixation is an essential criterion for protection under US copyright law. Section 101 of the US Copyright Act gives us the definition of what fixation is:

A work is “fixed” in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.

Having read the definition, would you express any doubts as to whether Mr Whitmill’s tattoo is sufficiently fixed in Mike Tyson’s face? In my view, one could hardly speak of a tangible medium that is more stable than that gentleman’s visage.

Originality

Originality is the third main criterion for the copyrightability of a work. It is not defined in the Copyright Act, but can be derived from the plenty of judicial authority.
If the tattoo is a Maori-inspired design, as the NYT newspaper article tells us, can Mr Whitmill have authored it then? Following the leading case of Feist v Rural, Mr Whitmill’s tattoo shall be considered original once he establishes that

the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity

Hmm, could Mr Whitmill succeed on this point? In my view originality will be the very issue, provided, however, that the matter will be eventually fought before a Court of competent jurisdiction.

Final Thoughts

Despite my legal interest in the copyrightability of a tattoo, I would ask the same question as did the Harvard Info Law Blog:

Would this be a lawsuit, let alone a front-page NYT article, if the accused infringer wasn’t a big movie studio with a tentpole summer movie on the brink of release?

What do you think?

Apple’s Appstore Or Tradmarking Descriptiveness

Image by Rudi Riet on Flickr

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Let me ask you a funny question: should a keeper of a greengrocer’s shop be granted the trade mark “greengrocery” for, say, class 31?

I can almost hear you shouting “No, for God’s sake, he should not!”

Well, I was joking, but why actually not? Is it because if the good greengrocer monopolised an everyday’s term for his trading purposes no other greengrocer would be able to run its shop?

Let me address this question in the story and consecutive analysis I am going to present below.

Believe it or not, but Apple managed to register the word marks

Appstore And App Store

with the Office For The Harmonization In The Internal Market (OHIM), which has authority to grant Community Trade Marks (CTM). Appstore bears the number 005554779 and is registered for classes 35 and 42. App Store bears the number 007078314 and is registered for classes 35, 37, 38 and 42.
If you like, you can conduct your own search using OHIM’s search application.

What both marks have in common is the fact that their registrations are pending cancellation.

Funnily, a broad front consisting of large technology companies such as Microsoft, HTC, Nokia and Sony Ericsson each filed formal applications for declaration of

Invalidity

of Apple’s two trade marks with OHIM.
The Intellectual Property Watch has the story and I strongly recommend you to read it.

Anyway, what could have been the reasoning of the tech companies, what could they have claimed? That is easy – what did we talk about at the beginning of this article, huh?
Yes, we talked about the monopolising of an everyday’s term. Everyday’s terms are generally considered descriptive for the purposes of trade mark law.
The CTM Regulation (207/2009) provides in its Article 7 (1) (c) that no registration shall be granted to

trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

In other words, the tech giants have very likely claimed that the Apple’s trade marks are descriptive and therefore should have never been granted. Since OHIM granted them once to Apple, they should now be invalidated.

But wait a minute, what about

Baby-Dry

and what if Apple relied on it as authority?

Indeed, Baby-Dry was the high point of the European Court’s liberal attitude to registrability of descriptive marks. However, if I was to advise Apple in this instant case, I would not recommend them to rely on Baby-Dry.
Because in its later

Doublemint

judgment the Court realised that matters had gone too far in Baby-Dry and needed to be reined in.
In Doublemint the Court referred to the so called principle of availability, which says that there is a public interest that descriptive terms may be freely used by all traders.

Let me wrap it up: Appstore and App Store are (very likely) descriptive and OHIM might rule that they should be free for all.
By the way, have you read about Nokia’s plan to launch a co-branded App Store?

My Conclusion

We must not forget that trade marks provide their proprietor with a limited monopoly over the use of a sign in connection with the marketing of goods and/or services.
However and since Baby-Dry is no longer reliable authority, Apple’s adversaries have a strong case and good arguments to invalidate Apple’s registered trade marks.

Finally, you do not want Apple to trademark the descriptiveness, do you?