Beckingham v. Hodgens et al (Schiemann, Arden L.JJ., Pumfrey J.; 31.01.03)
The claimant failed at first instance ( CIPA 101) to revoke the registered mark, E.S.B. for beers, but had succeeded in limiting the registration to bitter beers. The claimant appealed against the decision on the revocation issue and the defendant cross-appealed against the decision to limit the specification covered by the registration of the mark.
Devoid of distinctive character
The claimant submitted that, at the date of registration, although the mark was distinctive ‘in vacuo’, the use of the mark by Fullers had rendered it incapable of distinguishing the products of Fullers from those of any other brewery. The court found that, as the Judge held that the mark had become distinct through use, it followed that it could not have been devoid of any distinctive character and that the Judge’s finding at first instance could not be challenged.
The court followed the ECJ’s guidance in BABY-DRY  ETMR 22 in holding that the existence of the defences to an allegation of infringement is material to the scope of the prohibition on registration contained in section 3(1)(c). The Judge had discerned four principles which were approved by the Court of Appeal:
(i) Sections 3(1)(b)(c) and (d) are not designed to exclude from registration marks which merely possess an indirect descriptive connotation: the words “devoid of any” in subsection (b) and “exclusively” in (c) and (d) are to be given effect to;
(ii) the fact that some mental activity is necessary in order to discern a reference to the quality of a characteristic of the goods may assist in its registrability;
(iii) uncertainty as to the precise nature of the reference to the quality or character of the goods will also assist;
(iv) a mark which can only refer directly to the quality or character of the goods (BITTER for beer would be an example) must be refused registration. This is because such a mark does not “differ from the usual way of designating the goods or their characteristics” and because it may “serve in normal usage from a consumer’s point of view to designate either directly or by reference to one of their essential characteristics” the relevant goods.
Accordingly, the court upheld the Judge’s decision that the mark was not one which fell under section 3(1)(c). The court emphasised that this new approach marked a significant departure from the old UK law under the 1938 Act.
Non-use except in relation to bitter
On the cross-appeal, the question was what was the correct test when assessing how far the E.S.B. mark’s specification should be limited where use had only been made of some goods within the specification.
The court followed Thomson Holidays v. Norwegian Cruise Line  CIPA 39. Aldous L.J. in that case had held that the task for the court is to inform itself of the circumstances of the particular trade and identify the way the notional average consumer would describe such use. Such a description would be the correct way to refer to the goods. Despite argument that the notional average consumer would refer to E.S.B. as a beer, the court dismissed the cross-appeal by the defendant. The court held that there was no difference in substance between the test applied by the Judge (that bitter was a separate commercial category) and that set out by Aldous L.J. in the Thomson Holidays case.
Infringement - Domain Names
Musical Fidelity Ltd v. David Vickers t/a Vickers Hi-Fi (Ward, Buxton, Arden L.JJ.; 02.12.02)
The Court of Appeal dismissed the appeal from the decision of Rimer J.  CIPA 609. The defendant had, by the design of its web page and use of the domain namewww.musicfidelity.co.uk, passed itself off as connected with the claimant and infringed the claimant’s MUSIC FIDELITY mark registered in class 9 for, inter alia, loudspeakers and compact disc players. The defendant had been an authorised distributor of the claimant until June 2001. He had registered the domain name whilst still an authorised distributor, but without the claimant’s permission or knowledge. The website accessed by the domain name was headed “Vickers’ Hi-Fi”, above which were the words “Welcome to the website of one of Music Fidelity’s oldest retailers”. The court held that use of the domain name would result in conveying to the internet user that the defendant still enjoyed a trade association with the claimant as one of its authorised suppliers and as such was obviously misleading and, inevitably, likely to confuse.
The Court of Appeal also upheld Rimer J. on the copyright issue. Mr Vickers had infringed the claimant’s copyright by publishing the claimant’s solicitor’s letters on his website. Buxton and Ward L.JJ. expressed surprise that copying a solicitor’s letter amounted to copyright infringement, but acknowledged that this was the law. Buxton L.J. commented that if this matter arose in future, it might be wise to consider whether an implied licence to publish such letters was given to the recipient and whether the European Convention of Human Rights had any bearing on the issue.
Glaxo Group & anr v. Dowelhurst and other joined actions (Laddie J.; 06.02.03)
These cases related to the repackaging of authentic drugs and their importation into the UK. Some of the products had been overstickered by the defendants, some had been reboxed, sometimes using the registered trade mark for the product on the outside of the box and sometimes not. There was no question that the quality of the goods had been affected by what the defendants had done, nor was there any evidence of actual damage caused to the trade marks by the defendants’ activities.
Laddie J. took the preliminary view in his first judgment  FSR 529 that, as the defendants had not inflicted real or substantial damage on the specific subject matter of the trade mark rights, the principle of free movement of goods should apply. He referred various questions to the ECJ. The ECJ’s decision  All ER (EC) 581 showed that this opinion considerably over-stated the position. Now applying the ECJ’s decision, Laddie J. held that the claimants’ objections to the repackaging of their products was justified and that their trade marks had been infringed. He reasoned as follows.
The ECJ held that a trade mark proprietor can only interfere with parallel importation of his own goods where it is necessary to do so in order to protect the specific subject matter of those rights. Further, repackaging is prejudicial to the specific subject matter of the trade mark and can be opposed per se. Laddie J. referred to this as an “irrebuttable legal fiction unconnected with the facts”.
Notwithstanding this finding, the ECJ went on to hold that the proprietor can oppose repackaging, but only when relabelling of the product (in contradistinction to repackaging) would achieve effective access to the market. It is up to the national court to determine whether relabelled (or over-stickered) packaging would achieve as effective market access as repacked products. If the former cannot, the latter is necessary and permissible. Since Laddie J. held in his first judgment that there was substantial resistance to over-stickering, the defendants were entitled to repackage.
However, this did not mean that defendants had a free hand to use whatever type or style of packaging they wished. The ECJ held that the repackaging had to be necessary to enable the product to be marketed in the state of import and done in such a way that it respected the trade mark proprietor’s rights. Therefore, Laddie J. held that the repackaging should be as unobtrusive from a trade mark point of view as possible e.g. packaging that imitated the original save in respect of features which had no trade mark significance whatsoever or completely plain boxes which depicted nothing by the claimant’s trade mark.
Thus, de-branding (removing or masking the trade marks on the boxes and contents), if not necessary to enable the importer to access the market, could be prevented by the trade mark proprietor. Similarly, the proprietor could object to co-branding, where the importer used his own trade mark or get-up alongside the proprietor’s mark on new boxes. Even placing the repackager’s name on the box would have to be done in such a way which did not interfere with the proprietor’s interests in his trade mark.
Laddie J. pointed out that the ECJ had drawn a distinction between relabelling and repackaging. The above mentioned “legal fiction” did not apply to the former and therefore the general rule applied. Thus, the proprietor could only interfere with parallel imports of over-stickered products where it was necessary to protect the specific subject matter of the trade mark i.e. the proprietor would have to show the over-stickering caused real harm.
The final issue was that of prior notice. The ECJ held that reasonable advanced notice of the repackaging had to be given by the parallel importer to enable the proprietor to react to the intended packaging i.e. it was an actionable wrong not to give such notice. In each case it was up to the national court to decide whether the notice period was sufficient. The ECJ suggested 15 working days was reasonable. Laddie J. thought that 7 days was more appropriate. Laddie J. held that the rule on notice applied in the same way to over-stickered products when there was a prima facie case of trade mark infringement.
Beckingham v. Hodgens et al (Deputy Judge Floyd QC; C/32/02; 02.07.02)
This was an action concerning the ownership of copyright in the music of a song entitled “Young at Heart”. The Deputy Judge held that the violin part for the song composed by a professional fiddle player hired to assist during the recording of the song was original and made a significant contribution to the final song. Furthermore, the hired fiddler qualified as a joint author and joint owner of the copyright in the final song. He was satisfied that the elements required to be present in a work of joint authorship under section 10 CDPA (i.e. collaboration in the creation, and that the contribution of each author is not distinct from that of the other author) were present in this case.
Finally, on the issue of estoppel, the Deputy Judge concluded that the fact that the claimant had not claimed his authorship and had given a royalty free implied licence did not affect his right to future claims of a share of royalties.
Sony Music Entertainment (UK) Ltd & ots v. Easyinternetcafé Ltd* (Smith J.; 28.01.03)
Smith J. gave summary judgment for the claimants (suing on behalf of themselves and other members of the British Phonographic Industry Ltd). The CD burning service operated by the defendant at its internet cafés was unlawful in circumstances where the owner of the copyright in the relevant sound recording had not licensed defendant.
The defendant did not dispute that, if there had been a downloading by a customer of a sound recording from the internet without a licence, the customer would infringe any relevant copyright in the sound recording under sections 17(1) and 18(1) CDPA, subject to a defence under section 70. However, the defendant denied that it infringed copyright, submitting:
1. The recording could have been uploaded i.e. created from a CD provider by the customer. Smith J. rejected this.
2. The defendant merely facilitated the infringement by providing the means by which the copying was made and therefore could not be liable. Smith J. rejected this argument. The liability for infringement under sections 17 and 18 is strict; there is no defence for a person copying an item to assert that he did not know he was infringing a copy. The fact that the customer’s files were kept confidential by the defendant did not alter the point. Just because the defendant chose not to know, he could not avoid liability.
3. There was a defence under section 70 (the making for private and domestic use of a recording of a broadcast or cable programme solely for the purpose of enabling it to be viewed or listened to at a more convenient time does not infringe any copyright in a broadcast or cable programme or in any work included in it). Smith J. held that this did not provide a defence for the defendant who was copying sound recordings onto CD-ROMs for commercial gain.
Finally, if it had been an issue, which it was not, Smith J. would have followed the decision inThe Shetland Times Limited v. Wills & anr  EMLR 277, in holding that the transmission of the material via the internet would have been a cable programme service within section 70.
The Football Association Premier League Ltd & ots v. Panini UK Ltd (Smith J.; 13.12.02)
A final injunction was granted by Smith J. against the sale of a Football 2003 Album with stickers of football players containing a substantial reproduction of the Premier League’s lion logo or the players’ own club badge logo. The Judge found that the copyright in the designs of the badges had been infringed by their reproduction in the photos of the professional footballers wearing this season’s kit.
Smith J. dismissed the defendant’s argument that the inclusion of the badges was incidental and that the defence under section 31(1) CDPA (copyright in a work is not infringed by its incidental inclusion in an artistic work, sound recording, film, broadcast or cable programme) applied. He concluded that the reproduction of the photographs showing the logos was clearly intentional. Without the badges, the defendant’s would not have had the complete picture which they wished to produce i.e. the picture of the player in his current kit.
Land Hessen v. G. Ricordi & Co. Bühnen und Musikverlag GmbH* (ECJ; C-360/00; 06.06.02)
Ricordi holds the rights of performance in the opera “La Bohème” by Puccini. During 1993/1994, the Staatstheater in Wiesbaden staged a number of performances of the opera without Ricordi’s consent. They claimed that they did not need consent because copyright protection afforded to the work under Italian law (life + 56 years) had expired. Ricordi claimed that the work could benefit from German copyright law (life + 70 years) and thus, at the time of the performance, the copyright had not expired.
Under the Gezetz über Urheberrecht und Verwandte Schutzrechte 1965 (the 1965 German copyright law), a distinction was made between the protection of the work of German nationals and that of foreign authors. Whilst the former enjoyed protection for their works (for life + 70 years), whether published or not, the latter were entitled to protection only for works published in Germany for the first time or within 30 days of their being first published. In other cases, foreign authors enjoyed the protection afforded to their works by international treaties. The ECJ held that, under Article 6 of the EC Treaty (prohibiting discrimination on grounds of nationality), the 1965 German copyright law was discriminatory where it gave the works of foreign nationals a shorter period of protection than it gave to its own nationals. It was irrelevant that the author had died before the EC Treaty entered into force in the member state of which he was a national.
Marianne Creagh v. Hit and Run Music Publishing Ltd (Deputy Judge Kitchin QC; 22.07.02)
The claimant alleged that a substantial part of the copyright subsisting in the literary and musical works embodied in her song “Where were you now” had been copied in a song called “Where are you”. The Deputy Judge established that the literary work (the title, the words of certain lines and the story line) of each of the songs had a general similarity. However, he concluded that the titles were commonplace, the images were not original and that the themes and settings of these images were in any case different.
Regarding, the musical work (the melodic notes of certain lines and the overall similarity between the melodies of the respective songs), the Deputy Judge concluded that the similar notes were not original but commonplace and that, in any case, they did not represent a substantial part of the musical work embodied in the song in question. He concluded that the songs were not sufficiently close and that the similarities were probably the result of coincidence rather than copying.
Comprop Ltd & Perry’s Ltd v. David Moran t/a Adsell (The Royal Court of the Island of Jersey; 20.03.02)
The court held that the defendant had infringed the copyright in Mr Perry’s guide map of Jersey (“Mr Perry’s map”), but that, although copyright in two other maps had been infringed, the actions were statute time barred.
Mr Perry’s map was an original literary work under the Copyright Act 1911 (which is still in force in Jersey). The logic for this classification is that a map is not merely visually significant, it conveys a mass of information. This is to be compared to the position under the CDPA, under which, if necessary, a map could be regarded as both an artistic work and a compilation (Electronic Techniques v. Critchely Components  FSR 401 and Sandman v. Panasonic FSR 651).
In relation to infringement, the 1911 Act defines copyright as the sole right to produce or reproduce a work or any substantial part thereof in any material form whatsoever. There were 12 “fingerprints” where the court held that the similarities between Mr Perry’s map and the alleged infringement were proved to be the result of copying, for example, where the same mistake or distinctive feature was found in both. Taken together with the circumstantial evidence as to the length of time that the defendant had taken to produce his map, the court concluded that there had been copying. Further, the court held that the 12 fingerprints must be the tip of a larger iceberg. This was relevant to the consideration of whether there had been copying of a substantial part of Mr Perry’s map. The court had to identify the elements which had been copied and ask whether those elements formed a substantial part of the original work (Designers Guild v. Russell Williams  1 WLR 2416 (HL)). In the circumstances, although the court could not be sure of the extent of the copying, it was satisfied that the defendant made use of the skill and labour of Mr Perry to a substantial extent.
Note 1: The reader’s attention is drawn to the following reported cases which have not been included in CIPA:
1. Hi-Tech Autoparts Ltd v. Towergate Two Ltd (Floyd QC;  FSR 254 and 270) – regarding copyright in the anti-slip pattern on the underside of rubber mats
2. Universities UK Ltd v. Copyright Licensing Agency Ltd (Copyright Tribunal;  RPC 693) – regarding royalty rates in licences payable by Higher Education Institutions
Note 2: Websites at which those decisions marked with an asterisk can be found are as follows:
I am grateful to my colleagues from Bird & Bird for assisting me in the preparation of this report: Cristina Garrigues for assistance with the copyright section and Ashley Blake (the ESB decision).