Free content in honour of the INTA 2020 Annual Meeting

In honour of the INTA 2020 Annual Meeting, OUP has made available some specially-selected free content. This features several JIPLP articles, along with chapters from key OUP books, including Copyright and the Court of Justice of the European Union by Eleonora Rosati and Enforcement of Intellectual Property Rights in Africa by Marius Schneider and Vanessa Ferguson. The featured content will be free to read until 7 December 2020, so do take a look! See here for more information!

The Authors' Take - Meet My Artificially-Intelligent Virtual Self: Creative Avatars, Machine Learning, Smart Contracts and the Copyright Conundrum

Meet My Artificially-Intelligent Virtual Self: Creative Avatars, Machine Learning, Smart Contracts and the Copyright Conundrum

by Eugene C Lim

Artificial intelligence (AI) technologies have triggered a dramatic paradigm shift in how we conceive of authorship and creation. Intelligent machines, such as those powered by the new GPT-3 neural network technology, are capable of generating human-like creative expressions, composing text, performing translations and producing other creative outputs once thought to be beyond the ability of computers.

This article focuses on intelligent applications (or “creative avatars”) that are programmed to replicate the style of a human author (such as Shakespeare, Rembrandt or J.K. Rowling), and the regulatory challenges flowing from the generation of such works. The challenges surrounding the production of such content relate not only to questions of ownership and authorship, but extend to issues of how, if at all, these works can be treated as copyrightable subject matter.

While much of the literature in the field has proposed significant modifications to traditional copyright rules to accommodate the emergence of AI-generated content, this article highlights the limitations of relying on copyright law in regulating rights in AI-generated derivative works. In developing this argument, the article adopts a novel approach by suggesting that interim solutions, in the form of alternative business and technological models, can be found outside of the “copyright box”. In particular, the article proposes a consent-based contract framework, featuring digital watermarks, Creative Commons licences and blockchain technologies, as part of an interim solution to regulate rights in relation to works generated by “creative avatar” programs. It is suggested that existing contractual and technological tools, drawn from current practices in the software licensing and cryptocurrency industries, can be useful to stakeholders in the AI industry, especially in the early years of emerging neural network technologies. In this regard, the article offers a utilitarian justification for the proposed consent-based framework by explaining how it can help to facilitate the dissemination of AI-generated derivative works in the absence of clearly-defined copyright rules, and promote the eventual enrichment of the public domain.

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

In conversation with... Etienne Sanz De Acedo

In conversation with…

Etienne Sanz de Acedo, CEO of the International Trademark Association

In the first of a new series of conversations, I recently caught up with INTA’s CEO, Etienne Sanz de Acedo, to discuss plans for the upcoming virtual meeting and to hear Etienne’s thoughts on the current IP landscape and the Association’s key policy priorities. The background of the current pandemic was never far from our conversation, but Etienne, ever the optimist, was always keen to highlight opportunity and appears to be facing the situation with calm resolve.

Consumer trust and behaviour and how these have evolved since the start of the pandemic were a key theme of our conversation. According to Etienne, internet usage is expected to rocket by 160% among new or low frequency users alone, whereas consumers are becoming more frugal in their consumption with a shift in focus towards home and family. The online marketplace will inevitably continue to grow, but consumers will increasingly seek to engage with transparent, fair and ethical suppliers – a major consideration for brand owners and their advisors. It seems that the pandemic is either exacerbating or accelerating trends that were already apparent, including increased consumer fatigue around certain brands and trade marks. Consumers are benefitting from better access to information, which is aiding their desire to interact with brands whose ethos lends itself to a relationship of trust and transparency. It is no longer enough for brands to be seen to talk; they also need to act.

We also discussed brand restrictions: advocating for the right of brand owners to use their trade marks and related IP rights where governments seek to prohibit, misappropriate or significantly restrict those rights. Tobacco plain packaging is the most obvious example, but this also now affects other products such as infant formula, and sugary snacks and beverages. There is unease that a desire to address public health concerns has led to unwanted side-effects, impinging on consumer choice, impeding market competition and, perhaps most worryingly, benefitting counterfeiting and other illegal trade. Such restrictions inevitably erode brand value and arguably restrict freedom of expression. Whilst proponents of such measures argue that their aims are beneficial in seeking to reduce exposure to and use of products and services conventionally deemed to be unhealthy, INTA maintains that legislation and regulation restricting branding and use of trade marks must be driven by clear and convincing evidence of efficacy. They support balanced regulation that addresses public health concerns whilst respecting private property rights.

And finally, the burning topic of the Annual Meeting: education, advocacy and business development form INTA’s DNA and the meeting plays a key part. This year would have marked the twentieth anniversary of my first INTA Annual Meeting in Denver, Colorado, in 2000. Sadly, the meeting planned for April in Singapore was not to be and the 2020 Annual Meeting will be held virtually in November. For me, the elephant in the room was always the question of how to tackle diverse time zones but, as Etienne explained, INTA has addressed this with a three-pronged approach. Sessions are mainly timed to start early in the morning on the US East Coast, allowing for the largest number of attendees to participate at a comfortable time. There will also be live sessions in China standard time zone in Mandarin and English, plus on demand sessions and “Watch Parties”, allowing registrants to view recorded sessions with interaction via live chat.

I look forward to catching up with many familiar faces over the virtual platform and thank Etienne for taking the time to share his thoughts with our readers ahead of the meeting. As has been customary in previous years, OUP will soon be launching a free INTA collection of content, including several key articles from JIPLP, so keep an eye out!

Sarah Harris

Managing Editor, Journal of Intellectual Property Law & Practice

Reminder: JIPLP Special Issue on GIs

A few months ago we announced a Call for Articles for our forthcoming special issue on Geographical Indications (GIs), which will be published in 2021.

We would like to remind interested authors to submit articles in the range of 3,500-6,000 words on a topic of their choice within this theme for consideration for publication in JIPLP. The issue will focus on several aspects of GIs with specific emphasis on recent developments in Europe and at the international level. Submissions addressing the topic from a comparative perspective are also welcome.

Relevant articles must be submitted through the online portal, be in accordance with JIPLP house style, and carry the indication that they are for consideration for the special issue of Geographical Indications.

The deadline for submissions is Monday, 30 November 2020. No late submissions will be considered for this special issue.

For authors interested in discussing informally the topic of a possible contribution, please email the Editors of this special issue, Eleonora Rosati and Irene Calboli, and/or Managing Editor Sarah Harris.

The special issue will be available in complimentary open access for a limited period of time after publication. The editors are also considering the possible organization of a conference/meeting with the authors of the special issue in 2021 after the special issue has been published.

The Authors' Take - Beauty and the Brand: Drafting contracts for the commercial use of someone's likeness

Beauty and the Brand: Drafting contracts for the commercial use of someone's likeness

by Kelsey Farish

Brands constantly seek to secure and promote their goodwill and reputation in the hearts and minds of the public. The use of individuals – either as models, spokespeople or other brand ambassadors – is often a key part of that process. But what control does the individual model (professional or otherwise) have over a photograph that depicts them? From a copyright perspective, unless the image is a selfie, the answer is usually, “not very much control at all”.

At law, a photograph’s subject is typically not entitled to exploit the image in question without permission from the relevant copyright owner or its licensees. Even in jurisdictions with strong image (personality) rights regimes, the issue of controlling an image by virtue of being depicted in it is rarely straightforward. Such matters often turn on privacy, commercial context, and the unique circumstances of the person’s public profile.

In addition to the legal complexity, the expectations and practical concerns surrounding control over one’s own likeness seem to be shifting. This is due in part to a growing movement amongst content creators, influencers, and other public personas seeking fair recognition and remuneration over how their likeness is exploited. Furthermore, accusations of cultural appropriation and unfair exploitation of models, as well as airbrushing and manipulation more generally, remain hot-button issues in the world of media and advertising.

Thankfully, freedom of contract provides ample opportunity for a photograph’s subject to exert at least some control over how their image is used. That said, it can be difficult to know where to start when seeking to protect the interests of both the individual and the brand.

The author of the forthcoming Practice Point, entitled 'Beauty and the Brand: Drafting contracts for the commercial use of someone's likeness', hopes that this guidance will be useful for those drafting contracts marketing campaigns and influencer agreements, as well as high-profile celebrity endorsements.

The Authors' Take - Fundamental Rights as External Constraints on Copyright Law: Horizontal Effect of the EU Charter after Funke Medien and Spiegel Online

Fundamental Rights as External Constraints on Copyright Law: Horizontal Effect of the EU Charter after Funke Medien and Spiegel Online

by Daniël Jongsma

It is a well-known characteristic of European copyright systems: limitations and exceptions are exhaustively enumerated, they are precisely defined, and they are historically interpreted strictly or even restrictively. A result of this closed system is that certain uses may not be exempt from infringement even though they constitute an exercise of a fundamental right. For this reason, there has been a decades long debate about the answer to the question whether fundamental rights can serve as an autonomous defence against copyright infringement.

In its judgements in Funke Medien (C-469/17) and Spiegel Online (C-516/17) the Court of Justice of the European Union (CJEU) appeared to resolutely reject the idea of fundamental rights as such “external constraints” on copyright. If this is true, one might conclude that the safeguarding of fundamental rights is to solely occur through an interpretation and application of copyright law itself that is, insofar as possible, consistent with those rights. This begs the question: what to do when a consistent interpretation is not possible, when a use that ought to be permitted from the perspective of fundamental rights nevertheless constitutes a copyright infringement? Has the CJEU placed EU copyright on a collision course with fundamental rights, for instance as protected by the European Convention on Human Rights?

I do not think so. I conclude this on two grounds. First, I suggest that the CJEU did not conclusively rule on the question of so-called “horizontal direct effect” of fundamental rights in copyright cases. Second, and more important, Funke Medien and Spiegel Online only concerned the relationship between substantive copyright law and fundamental rights. They did not address the issue of remedies. Secondary EU legislation does not require that remedies are granted automatically upon a finding of infringement. Moreover, the EU Charter of Fundamental Rights may even require in certain cases that national courts refuse to enforce copyright. The CJEU must elucidate the boundaries set by the Charter. In my contribution to JIPLP I substantiate these conclusions and make some suggestions as to the limits EU law might impose onto national law.

The Authors' Take - Protection of Traditional Art Forms under Geographical Indications Law: A Case Study of Madhubani and Sujini Art Forms of Bihar, India

Protection of Traditional Art Forms under Geographical Indications Law: A Case Study of Madhubani and Sujini Art Forms of Bihar, India

by Akanksha Jumde and Nishant Kumar

Using case studies of two of the oldest art forms practiced in Bihar, India, this article analyses challenges relating to the implementation of the law on Geographical Indications (GIs) in India, to better protect the rights and the craft of its most important stakeholders: the artists. This article is also a critique of the application of the current Indian GI regulatory framework to its traditional handicraft sectors.

To address the relevant research questions, we undertook qualitative interviews with Sujini and Madhubani artists, their representatives and officials from government bodies, supported by field visits to the Muzzafarpur district, Bihar.

We found that the GI label accorded to these art forms has become an effective tool for the artists’ self-expression. However, a GI registration has made limited contribution to ensure an increased economic rationale for their artists, and the reasons for that are manifold. These include, inter alia: lack of adequate government support in post-GI registration stages, ineffective provisions for quality control, discrepancies in the definition of ‘Goods’ and ‘GI’, the anomalous concept of ‘authorised user’, and difficulties in application for registration requirements. Issues with the construction and implementation of the law pose serious limitations to the rights of the artists to ensure economic returns from their artworks.

The findings derived with reference the Sujini and Madhubani artworks are also relevant to the broader question of whether GIs can protect the traditional knowledge (TK/IK) of the stakeholders of the handicraft industry, as well as other types of GI products. Based on some of the recommendations provided by existing studies on other types of GI, we suggest several legislative amendments to strengthen the extant legal framework on GIs in India. We also recommend several practical measures that can be taken by the artists or their associations for a more effective utilisation and enforcement of their GI rights.

The Authors' Take - A question of (e)Sports: an answer from copyright

A question of (e)Sports: an answer from copyright

by Amy Thomas

With a void in live sport events as a result of the COVID 19 pandemic, eSports (a.k.a. competitive video gaming) have been catapulted into the spotlight. The rapid growth and relative youth of the industry mean that regulatory discussions are imminent, but many questions remain about the nature of eSports: are they ‘just’ a video game? A sport? A mix of both? As an industry fundamentally underlain with a creative work, copyright has a high stake in answering this question.

This article uses copyright as an analytical tool to better conceptualise eSports, offering an overview of copyright subject-matter from a UK perspective, both in the statutory provisions of the CDPA and judicial decisions (particularly Nova Productions v Mazooma Games and FA Premiere League v QC Leisure). Through the prism of three of the main eSports actors – the game rightsholder, tournament organiser and professional player – the article reveals a system of unprecedented downstream control facilitated by copyright ownership. This is at odds with the generally accepted conclusion that sports as such cannot be protected by copyright.

This article provokes the conceptualisation of eSports as ‘more than just a game’; instead, it should be understood as a sport which is fundamentally owned. As a result, copyright can be used to legitimate the governance of a game that impacts people’s social, economic and legal realities. Such a conclusion is sub-optimal if it does not take a holistic appreciation of the other eSports actors who contribute their skill and creativity to this industry. But if copyright is part of the problem of downstream control, perhaps it may also hold a solution. To explore this further, the article makes comparative reference to South Korea as the genesis and mecca of eSports, offering an alternative response to the boundaries of rightsholder control in this new industry.

The Authors' Take - The CJEU reaches a controversial compromise on the scope of protection of plant variety rights

The CJEU reaches a controversial compromise on the scope of protection of plant variety rights

by Adrián Crespo

This upcoming article, which follows up on the author's previous article in JIPLP, examines the judgment of the Court of Justice of the European Union (CJEU) in Club de Variedades Vegetales Protegidas (C-176/18), a landmark ruling on plant variety law. In this case, the CJEU tackles a referral from the Spanish Supreme Court which revolves around one of the key issues of European and international plant variety law: the so-called ‘cascade system’ and the enforcement of plant variety rights in respect of harvested material.

In summary, the CJEU has ruled that the activity of planting a protected variety and harvesting the fruit thereof, which is ‘not likely to be used as propagating materials’, requires the authorisation of the holder, provided that the original variety constituents were used without authorisation and the holder did not have a reasonable opportunity to exercise his rights. The author examines this finding critically in the wider policy context of European plant variety law and argues that the CJEU has applied a distinction according to the botanical characteristics of the harvested material and, in particular, the reproductive characteristics. This entails some practical advantages, but -in the author’s view- also raises some issues of its own. Furthermore, the ambiguities in the judgment’s wording may require some clarifications in the future.

The CJEU has also ruled that the holder is not entitled to prohibit performance of any acts such as variety propagation, marketing, importation etc. during the pre-grant, ‘provisional protection’ period. Therefore, performance of such acts does not constitute ‘unauthorised use’ for the purposes of the ‘cascade system’. The practical implications of this finding, which is highly important for breeders, are also examined critically.

The Authors' Take - Love, passion and … IP: When a copyright work goes too far

Love, passion and … IP: When a copyright work goes too far

by Peter Groves

Intellectual property law rarely concerns itself with love and passion, but one case that has those elements, to excess, is Glyn v Weston Feature Film Company [1916] 1 Ch. 261. As every student of copyright knows, the judge (Younger J, later Lord Blanesburgh, never one of our most distinguished judges) denied Elinor Glyn's novel Three Weeks the protection of copyright law because it was "grossly immoral". In fact, he held that the defendants' parodic film was so different from the book that it did not infringe, going on to say that alternatively it would have been permitted as a burlesque. Only then did he make his comments about immorality, which should therefore be seen as obiter - and unsupported by authority.

Three Weeks seems to modern eyes an unremarkable book. When it was published in 1907, however, it was eagerly-anticipated, and the author herself helped hype it, with the publishers pulling it, the author writing that friends had told her it was too racy, then unnamed “persons in the highest position” giving her the green light. Eventually, it was the only book to sell more than 100,000 copies in 1907 and went on to sell millions more. Its author became a global brand, and enjoyed great success as a Hollywood scriptwriter as well as continuing to write novels. Surely it deserves more than a footnote in the IP textbooks, and so does Mrs Glyn.

August guest Editorial - Balance lost: the US Copyright Office finds US copyright safe harbour provisions have been tilted askew

The August 2020 issue of the Journal of Intellectual Property Law & Practice will be published shortly. In the meantime, readers can enjoy this month's guest Editorial (free-to-read), penned by Lauri Rechardt (International Federation of the Phonographic Industry) and discussing the recently released Section 512 Study of the US Copyright Office:

Issue Section:

Editorial

On 21 May 2020, the US Copyright Office published its long-awaited report on the US Digital Millennium Copyright Act (DMCA) section 512 copyright safe harbours.1 The report is the final instalment of a series of studies by the Copyright Office which evaluate the need to update the US Copyright law for the 21st century.

As such, this report (amounting to over 250 pages with Annexes) covering the history and application of the section 512 online copyright safe harbours is required reading for everyone interested in copyright law or policy.

The fundamental conclusion of the report is that the critical balance sought by the US Congress when adopting the DMCA in 1998, has been lost. The report notes that the Congress crafted the section 512 safe harbours so as,

(1) to enable copyright owners to effectively address the infringement of their works online and (2) to facilitate the development of internet-based platforms by clarifying the obligations and limiting the liability of OSPs with respect to infringement committed by third-party users of their systems.

The safe harbours subsequently created by the Congress were intended to incentivize and foster cooperation between right owners and online service providers to achieve these twin goals.

The report finds that this is no longer the case. Instead, the DMCA safe harbour provisions have placed an increasing burden on rightholders while providing enhanced protections to online services “in circumstances beyond those originally anticipated by the Congress”. So, while section 512 has been successful in driving the development and growth of online services, it has left rightholders without sufficiently effective means to protect their rights.

The report seems to put this down to two main factors: online services have developed beyond what the legislators could have foreseen at the time of the adoption of the DMCA, and the courts have not managed to strike the right balance in this changing environment between the twin goals that Congress intended to guarantee.

Broadly speaking, the report finds that in most of the specific areas examined, courts have tended to interpret the section 512 safe harbour provisions in a manner that favours the online services.

For instance, the Office “is unconvinced” that the Congress had intended to extend the hosting service provider safe harbour to online services that go beyond mere storage of content and provide services that are “related” to storage, as the appeals court (2nd Circuit) held in Viacom v YouTube.2 Similarly, the Office considers that the requirement that a service provider must not receive a financial benefit directly attributable to the infringing activity has been interpreted too narrowly. The appropriate test, according to the Office, should be whether infringing material on the site is one of the “primary draws for users, and whether the plaintiff’s works were infringed by being performed or distributed through the site”.

Further, the Office also finds that by requiring the hosting service provider to have knowledge of specific infringements before they have to remove infringing content, courts have set the threshold for constructive (or ‘red flag’) knowledge3 so high that, against the original intention of the Congress, the provision no longer makes a meaningful distinction between actual and constructive knowledge.

The report goes on to make a series of legislative recommendations to the Congress so as to balance the rights and responsibilities of online services and right holders, but it stays within the parameters of the existing section 512, focusing on the shortcomings identified by the Copyright Office. Therefore, the Copyright Office is not recommending, for instance, the much-needed introduction of ‘website blocking’ injunctions against online intermediaries. Instead, the Office considers that further study is needed on that topic.

The report also includes proposals for specific actions by the Copyright Office to prepare educational materials and to promote voluntary cooperation to address infringements, including with respect to “standard technical measures” (measures to identify or protect copyrighted works, with which online services may not interfere under the DMCA).

All in all, the Copyright Office report is not only a study on the US copyright safe harbours, it is an important contribution to the general debate on how the online safe harbour laws should be reviewed to restore fair balance in the relationship between online services and content creators. As such, the report is likely, directly or indirectly, to impact legislative processes and policy discussions at several levels and fora, both in and outside the US.

In the US, the Congress is organizing hearings on the topic and legislative action may follow. It should be difficult for the Congress to remain passive when faced with the clear conclusion of the report – the balance originally sought by the Congress has been lost. Further, unless and until the shortcomings identified by the Copyright Office are addressed, the DMCA section 512 cannot credibly be referred to as a model for fair and balanced safe harbour laws. This applies both in the context of Free Trade Agreement negotiations (including those on-going with the UK), as well as at national level when governments look to introduce or review existing safe harbour provisions. Finally, the report’s findings support the European legislators’ actions to clarify and rebalance online services’ privileges and responsibilities; both within the targeted scope of Article 17 of the Digital Single Market Copyright Directive (2019/790), and more generally within the forthcoming Digital Services Act.

Footnotes

The report is available at <https://www.copyright.gov/policy/section512/> (last accessed 15 June 2020).

Viacom Int'l, Inc. v. YouTube, Inc., 676 F.3d 19 (2d Cir. 2012).

Section 512(c), which introduced the safe harbour for hosting service providers, conditions the enjoyment of the safe harbour on services removing infringing content from their systems after having either gained actual knowledge or becoming aware of “facts or circumstances from which infringing activity is apparent”. The Office also notes that a notice from a right holder is not a prerequisite for actual or ‘red flag’ knowledge.

The Authors' Take - EU General Court ruling opens – partially – the door to the protection of the famous “Damier Azur” of Louis Vuitton

EU General Court ruling opens – partially – the door to the protection of the famous “Damier Azur” of Louis Vuitton

by Pierre Massot

On 10 June 2020, the EU General Court rendered a decision (Louis Vuitton Malletier v EUIPO, T-105/19) which could open the door to trade mark protection of Louis Vuitton famous “Damier Azur”. The case dates back to 2015 when a Polish man challenged successfully before the EUIPO the international registration of this sign by Louis Vuitton Malletier (No 986207) for goods in Class 18:

In a nutshell, the Court annulled the decision of the Board of Appeal. It first held that it was a well-known fact that the chequerboard pattern has always existed in decorative arts and that the Damier Azur pattern did not depart significantly from the norms and customs of the sector. It concluded that it had no inherent distinctive character. Nevertheless, the Court considered that it cannot be excluded that this pattern could have acquired distinctiveness through use in the EU and that the Board of Appeal had failed to examine all the evidence relating to the use of the mark at issue. Interestingly, the General Court underlined that not having physical shops in some Members States does not necessarily prevent the relevant public from becoming familiar with and recognizing the mark in question.

It is therefore a mixed decision for the French fashion house. At the same time, it illustrates how it can be problematic to protect iconic patterns under European trade mark law and could also pave the way for more pragmatism concerning the acquisition of distinctive character of EU trade mark.

This contribution exposes the context of this case and its practical implications, which remain to be confirmed. In particular, it analyses, in a critical way, the consequences of admitting a broad definition of well-known facts and the difficulty for EU trade mark holders to prove the acquisition of distinctiveness. It expresses hope that this decision will help to strike a more balanced system concerning, at least, this last issue.

The Authors' Take - European Court of Human Rights rules that collateral website blocking violates freedom of expression

European Court of Human Rights rules that collateral website blocking violates freedom of expression

by Elena Izyumenko

In a decision in the case of Vladimir Kharitonov v. Russia rendered in June this year, the European Court of Human Rights (ECtHR) has held that an incidental blocking of the applicant’s website as a result of a State agency’s decision to block access to another website which had the same IP address as the applicant’s website violated freedom of expression.

The article exposes the different stages of the Court’s analysis that allowed it to reach this conclusion and assesses the practical significance of the case for copyright enforcement online. With regards to the latter, specifically, the ECtHR had already held in March this year (in the case of Pendov v. Bulgaria) that the limited functionality for a significant period of time of the applicant’s cultural website that had resulted from criminal copyright enforcement proceedings against third parties violated the applicant’s freedom of expression.

The Court of Justice of the European Union had likewise confirmed previously, in a much discussed judgment in UPC Telekabel, the need to assess the effects of the measures blocking copyright-infringing websites upon the fundamental rights of those affected, including the Internet users’ freedom of expression and information.

This is not to say, though, that the ECtHR is necessarily to provide for substantially more extensive guidelines in the area of website blocking for copyright enforcement beyond those already elaborated in Luxemburg and Strasbourg. It worth noting that Kharitonov concerned one specific, particularly intrusive type of website blocking – IP address blocking – that the courts in a number of European jurisdictions had already ruled disproportionate. With regards to other, less aggressive forms of blocking, the ECtHR might feel less at ease to intervene.

Overall, however, the general possibility to test website blocking practices from the human rights perspective can only be approved of, and the recent Kharitonov judgment certainly adds weight to this possibility.

Announcing the JIPLP Special Issue on GIs: Call for Articles!

Tiger the Cat likes to personally research GIs

The Journal of Intellectual Property Law & Practice (JIPLP) is delighted to announce a Call for Articles for its forthcoming special issue on Geographical Indications (GIs), which will be published in 2021.

Interested authors are invited to submit articles in the range of 3,500-6,000 words on a topic of their choice within this theme for consideration for publication in JIPLP. The issue will focus on several aspects of GIs with specific emphasis on recent developments in Europe and at the international level. Submissions addressing the topic from a comparative perspective are also welcome.

The deadline for submissions is Monday, 30 November 2020. No late submissions will be considered for this special issue.

June 2020 Editorial: 'Royal branding and trade marks'

The June issue of the Journal of Intellectual Property Law & Practice has just been released. This month's editorial (free to read) is authored by Nedim Malovic, who reflects on some of the recent IP 'troubles' of Prince Harry and Meghan Markle. Enjoy!

Issue Section:

Editorial

Late last year, media reported that Meghan Markle and Prince Harry had filed two trade mark applications with the UK Intellectual Property office (UK IPO) to have, respectively, ‘Sussex Royal’ and ‘Sussex Royal The Foundation of the Duke and Duchess of Sussex’, registered as UK trade marks. Since then, as Harry and Meghan have taken the decision to drop their royal duties and Royal Highness (HRH) titles, media have also reported that the couple would give up their two pending trade mark applications as well. Amidst all this royal turbulence, an interesting question is whether the couple could still style themselves as ‘royal’, and thus exploit the Sussex Royal brand in doing so, even despite that fact that they would not perform any royal duties.

To start with, the use of certain royal insignia as trade marks is protected internationally under Article 6ter of the Paris Convention. In brief, the provision sets out that all contracting parties undertake not to register trade marks which incorporate or imitate State emblems, armorial bearings, official signs or hallmarks, which are designated as protected emblems under the Convention. The rationale is that country names and identities often function as brands which indicate the origin of the goods and services. A country’s name, flag, emblem or coat of arms can therefore be said to signal to the public that there is a relationship between the nation and the products and services in respect of which it is being used.1 Not only could this become problematic for a nation, which may or may not have control over the products distributed using its identity and goodwill, but it might also damage the reputation and brand value that a nation has built over time.

Adding to the above, attention should also be directed to section 4(1)(d) of the UK Trade Marks Act 1994. In brief, this provision sets out that a trade mark, which consists or contains words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorization, shall not be registered unless consent has been given by or on behalf of Her Majesty or a relevant Member of the Royal Family. Section 4(1)(d) involves an assessment of the impact that the trade mark as a whole would have on the average consumer of the goods and/or services in relation to which the mark would be used, including leading them to believe that the applicant either has or recently has had Royal patronage or authorization. Section 4(1)(d) was applied by the UK IPO in case O/533/182, concerning a trade mark application for ‘Royal Christmas Gala’3 and, prior to that, in O/254/104, concerning a trade mark application for ‘The Combined Armed Forced Federation’. Despite that in the latter case the trade mark applied for did not contain the element ‘Royal’, the hearing officer reasoned that the provision would not be limited to Royal crowns: rather, it is a more general prohibition on the registration of “words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation”.5

Another aspect to consider is also the nature of goods and services envisaged under the mark applied for. In the UK IPO’s Examination Guide, it is specified that not all goods and/or services will prompt a consumer to believe that there is connection between the mark sought for and the presence of a Royal patronage or authorization.6 Examples of goods or services for which ‘royal’ may indicate Royal patronage include high quality porcelain or glassware, luxury foods, organic food, confectionery, alcoholic beverages, clothing, and organization of sporting events. The list is not exhaustive. However, everyday items, insurance or financial services, double glazing services, provision of electricity, or goods which are far enough removed from any association with the Royal family such as skateboards, computers, computer games or T-shirts would likely escape the application of the provision.7

Going back to where we began: could the couple therefore still style themselves as ‘royal’, and thus exploit the Sussex Royal brand in doing so, without performing any royal duties? Ultimately, it appears that the safest solution might be first to consult with … Her Majesty.

Footnotes

Natalie G.S. Corthésy, Trade marks, country names and misappropriation of national identity (2017) 12(4) JIPLP 297, 300. For a recent dispute concerning Iceland (the country) and Iceland (the trade mark), see D Meale – N Walles, ‘The country of Iceland freezes out the eponymous supermarket: ICELAND trade marks invalidated’ (2020) 15(1) JIPLP 4.

UK IPO, decision O/533/18, 28 August 2018.

Ibid, [16].

UK IPO, decision O/254/10, 15 July 2010.

Ibid, [46].

UK IPO, Manual of trade marks practice (2009), p. 206.

Ibid.

About this weblog

The principal contents of this weblog are drawn from the Current Intelligence features which are published monthly in JIPLP.

Current Intelligence articles are designed to analyse recent key cases, legislation and topical matters. Normally they are of between 500 and 1,500 words (though in exceptional cases a greater word length may be agreed with the Editors).

The selected Current Intelligence articles are now posted on this weblog to enable readers to engage with them, posting comments if they so choose. All comments are moderated, which means that they will not appear immediately upon their being posted.

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JIPLP is a peer-reviewed journal dedicated to intellectual property law and practice. Published monthly, coverage includes the full range of substantive IP topics, practice-related matters such as litigation, enforcement, drafting and transactions, plus relevant aspects of related subjects such as competition and world trade law.

The journal is specifically designed for IP lawyers, patent attorneys and trade mark attorneys both in private practice and working in industry. It also aims to be an essential source of reference for academics specialising in IP, members of the judiciary, officials in IP registries and regulatory bodies, and institutional libraries. Subject-matter covered is chosen for its practical relevance and international interest.

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... and authors in search of an article

JIPLP is often approached by prospective authors who would like to write something, but who would appreciate guidance regarding subject-matter, style and so forth. Here are a few pointers:

* Ask yourself what is it that you'd like to read in the journal, since that is handy rule of thumb which probably reflects the interests of your colleagues and your competitors;

* IP law and practice is very much a 'here and now' activity for JIPLP subscribers. The history of a right may be inherently interesting, or even sometimes relevant to the resolution of a specific issue, but would you expect a reader to look for it in JIPLP?

* Recycled Masters' dissertations and university essays make poor articles and are often difficult to convert from a piece that is designed to display erudition and research ability into an article that addresses lawyers, businesses and decision-makers. It's usually easier to start afresh by working out who your readers are and what you want to tell them.

* Please comply with the authors' instructions and note the journal's preferred length for articles. Most authors like to publish long ones, but subscribers tend to prefer reading shorter ones.