Keeping Copyright in Its Place: Copyright as An Industrial

Property Right

Lionel Bently

(Centre of Intellectual Property and Information Law, University of

Cambridge)

What is Industrial Property ?

• Stephen Ladas, Patents, Trademarks, and Related Rights: National and International Protection (1975):

• “a collective name for an aggregate of rights referring to the industrial or commercial activity of a person. With the purpose of furthering his economic interest, a man invents, creates, devises or uses different things. He invents a new product or a new process of manufacture. He creates a new design or model. He adopts a distinctive mark for his goods…It is to all these aspects of a man’s activity that the name ‘industrial property’ is applied.”

Its characteristics

• Patents, designs, utility models: monopolies over goods and processes of production

• Trade marks: rights over signs used in trade to designate source

• Excludes: copyright/literary and artistic property• Key characteristic: the regulation of articles of

trade/manufacture • Books/music/drama: somehow outside trade…

The Impact of the Industrial Property/Copyright divide

• Reflected in the two foundational international Conventions: the Paris Convention on Industrial Property 1883, the Berne Convention on Literary and artistic Works 1886

• Informed resistance to extension of Berne to cover sound recordings/broadcasts – seen by many as industrial property

Overlaps between Copyright and Industrial Property

• Copyright Act 1911 and aesthetic neutrality• The problem of distinguishing between ‘designs’

and copyright• Attempts to regulate the boundary: for an

interesting discussion, see Burge v Swarbrick [2007] HCA 17 (rejecting claim to yacht ‘plug’ – hand-crafted full scale model of hull and deck sections of yacht - as work of artistic craftsmanship)

The UK Solution to the Designs Question

• CDPA, ss. (unregistered design right)

• CDPA, s. 51 (keeping copyright out of industry)

• Flashing Badge Co v Groves [2007] ECDR (17) 308 (Rimer J.)

• CDPA, s. 52 (reducing term)• Gary Fearns t/a Autopaint v

[2007] EWHC

Other ‘Industrial Copyrights’

• Labels, logos: Handi-Craft Co v B Free World Ltd [2007] EWHC B10; Gary Fearns t/a Autopaint v [2007] EWHC 955; Euro-Excellence Inc. v. Kraft Canada Inc., (2007) SCC 37; Griggs v Raben Footwear [2005]

• Instructions: Elanco Products v Mandops [1979] FSR 46 (CA)

• Catalogues• Computer Programs

Willem Grosheide [2001] EIPR 321

• “The advent of entrepreneurial copyright law” over the last 25 years

• “Companies which do not have anything to do with copyright as their core business use copyright law in cumulation and concurrence with trade mark law and patent law as a marketing tool in competition with other entrepreneurs.”

Elanco v Mandops [1979] FSR 46

• Patents expired in E’s herbicide Trifluralin.• M started selling Trifluralin, using a leaflet

which gave instructions. • E objected that infringed copyright. After

several rewrites by M, E brought action• Interim relief granted by CA• Effect: to keep M off the market for some

time.

Euro-Excellence Inc. v. Kraft Canada Inc., 2007 SCC 37 (CanLII)

• Euro-Excellence imported genuine Côte d’Or and Toblerone bars.The Kraft alleged secondary infringement of copyright in logos under s. 27(2)(e).  

• Binnie, Deschamps and Rothstein JJ: K failed to show that Euro-Excellence imported works that would have infringed copyright if they had been made in Canada by the persons who made them.

• McLachlin C.J. and Abella J. dissenting: logos protected and was secondary infringement.

•  Bastarache J:Logos were incidental to product. Thus not within the secondary infringement section.

Potential Problems

• Prevent competition: Elanco v Mandops• Distort law of copyright: Griggs v Raben Footwear

[2005] FSR (31) 706 (equitable ownership of copyright)

• Undermine trade mark rules:football sticker books trade mark use (the Arsenal experience)comparative advertising exhaustion

Football Sticker Cases

• Trebor Bassett v FA [1997] FSR 211 – Rattee J said Trebor did not infringe trade mark rights in football team crests when it reproduced images of footballers on cards: this was not even ‘use’

• FA Premier League v Panini [2004] 1 WLR 1147– CA held Panini infringed copyright and were not entitled to benefit from the s.31 exception for incidental inclusion in another work

• Lose on trade marks, succeed in copyright

Trade Mark Use

• The famous Arsenal v Reed litigation

• Laddie J saw as ‘indication of loyalty’

• ECJ, Case C-206/01: irrelevant; question is whether jeopardises essential function of mark as guarantee of origin

• CA: [2003] • Arsenal FC’s response: to create a

new crest to gain copyright

Comparative Advertising

• TMA 1994, s.10(6), s.11(2)

• Comparative Advertising Directive 97/55

• O2 v Hutchinson [2006] EWCA

• Capacity for copyright to undermine

• IPC Media v News Group Newspapers [2005] EWHC 317 (TV Mag) (no fair dealing defence even if was within CAD)

Exhaustion

• TMA 1994 s. 12 (EEA exhaustion)

• Developed case law on repackaging etc

• But what if try to rely on copyright (including translation right) in leaflets/instructions?

• Or try to use copyright in logos to limit advertising?

Dior v Evora, Case C-337/95 (ECJ) [1998] 1 CMLR 737

• ‘the protection conferred by copyright as regards the reproduction of protected works in a reseller’s advertisement may not, in any event, be broader than that which is conferred on a trade mark owner in the same circumstances.’

• (echoes AG Jacob, para 59)

A. Kur, ‘The “Presentation Right” – Time to Create a New Limitation in Copyright Law’ (2000) 31(3) IIC 308

• “It is submitted that the ECJ [in Dior] did not really intend to create a new paradigm by extending the exhaustion principle to the author’s reproduction right.”

• “...similar to Magill – the problem resulted from the fact that the copyright protection has been extended into areas that until recently were considered to belong in the public domain or, in this case, that were only subject to a different category of rights, namely the law on distinctive signs.”

• Is there a ‘comparison of limitations’ rule?

Should We Think About Reducing The Overlap?

• Exclude from works

• Alter originality

• Develop exceptions

• Demand election

Exclude from ‘Works’

• Is it possible under Berne/TRIPs?

• Article 2 “every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression”

• Ricketson & Ginsburg, International Copyright and Neighbouring Rights: The Berne Convention and Beyond (2d ed. Oxford: OUP, 2006) pp. 510-11 (suggesting slogans/titles a matter for national legislation)

Alter Originality

• Labour, skill and judgment test• Argument in IPC v MGN [1998] FSR 431, 438

that not original rejected by McCombe QC• Traditional approach affirmed by CA in Sawkins v

Hyperion [2005] 1 WLR 3281• Possible adoption of higher test of ‘author’s own

intellectual creation’ (from Directives on Computer Programs 91/250, Duration 93/98 and Databases 96/9)?

The European Dimension

• Harmonisation looks unlikely• Note IViR Report, Recasting Copyright for the

Knowledge Economy (2006) p. 216 (given ‘quasi-acquis’ no clear advantage aligning)

• And even the civil law countries have their own situations where copyright an industrial property

• Perfume cases: Kecofa BV v Lancome Parfums [2006] ECDR (26) 363

Exception• Eg ‘no infringement of copyright in a literary or

artistic work where it has been used, with the consent of the author and copyright owner, as a trade mark’

• But would this contravene eg Art 9(2)? (special case, must not conflict with normal exploitation, must not unreasonably prejudice the legitimate interests of the author); TRIPs, Art 13.

• A. Kur, ‘The “Presentation Right” – Time to Create a New Limitation in Copyright Law’ (2000) 31(3) IIC 308: a more limited exception to allow persons to use a mark to advertise for sale goods bearing the mark cp. CDPA s.63

Special Exhaustion Rule• Copyright Amendment Act (No. 1) 1998 (Cth.), No.

104, Schedule 2• Copyright Act 1968, s.10(1), an infringing work

includes a work that was “imported without the licence of the owner of the copyright, [and] would have constituted an infringement of that copyright if the article had been made in Australia by the importer, but does not include: ... (g) a non‑infringing accessory whose importation does not constitute an infringement of that copyright”.

• “accessory” so as to include the labels and packaging that accompany an article.

Election

• The ECJ in Dior at para 58 (“there being no need to consider the question whether copyright and trade mark rights may be relied on simultaneously in respect of the same product”)

• Suggested election in Catnic v Hill & Smith [1978] FSR 405 (Whitford J.) (patent/copyright)

• Philips v Remington [1998] per Jacob J: ‘The reason that parallel rights can exist is simple: each form of right is created by statute…Unless there is a specific provision preventing rights from co-existing, the they just do.’

Is It Worth Bothering With?

• Dual protection recognises two functions, to protect as creation and as indicator of origin

• On the whole not a serious problem• Judges can use tools at hand, eg extended view of

exhaustion, to avoid serious problems• Attempting to delimit could raise other

problems…