Is there still a hole in this bucket? Confusion and misrepresentation in passing off

Legal context. Passing off is an evolving tort. There may beopportunities to expand the scope of the tort to capture activitiesthat have not previously amounted to passing off. Key points. In Arsenal v Reed, Aldous LJ suggested that thetime has come to abandon the label "passing off" and recognisea tort of "unfair competition". The implication is that certainactivities that would not previously have been censured by thecourts might now constitute passing off. This raises the questionof what circumstances might justify giving claimants greaterrights of action. This article explores the possibility of justifyinga claim in passing off where the misrepresentation does notcause confusion, and dilution of the claimant's trade mark isthe only damage caused. Practical significance. There is no doubt that passing off willevolve still further. The English judiciary is perhaps now moreconscious of the flexibility of passing off than at any timein the recent past. Ambitious – even adventurous –claims may have a chance of success.     

Moving beyond the law: foreign pressure and the politics of piracy in China

‘A book may be good for nothing; or there may be onlyone thing in it worth knowing; are we to read it all through?’(Samuel Johnson) This section is dedicated to the review ofideas, articles, books, films and other media. It will includereplies (and rejoinders) to articles, the evaluation of newideas or proposals, and reviews of books and articles both directlyand indirectly related to intellectual property law.

The Politics of Piracy – Intellectual Property in ContemporaryChina By Andrew C. Mertha, 2005, Cornell University Press Price:US$32.50, Hardback, ISBN: 0801443644. pp. 258   Criticism and proposed solutions surrounding China's ‘intellectualproperty problem’ in many cases have been     

Copyright, continuums and freedom of speech

‘A book may be good for nothing; or there may be onlyone thing in it worth knowing; are we to read it all through?’(Samuel Johnson) This section is dedicated to the review ofideas, articles, books, films and other media. It will includereplies (and rejoinders) to articles, the evaluation of newideas or proposals, and reviews of books and articles both directlyand indirectly related to intellectual property law.

Copyright and Free Speech Comparative and International Analyses ByJonathan Griffiths and Uma Suthersanen, Eds, 2005, Oxford: OxfordUniversity Press Price: £80.00, Hardback, ISBN: 0199276048.pp. 426   If one were to summarize this     

Copyright ownership in university students' academic works

Legal context. The impact of human rights on intellectual property(‘IP’), particularly in the light of the Human RightsAct 1998 and growing criticism of IP by civil society. Key points. There can be a greater legal, as well as political,role for human rights in the development of IP. The place ofhuman rights in IP litigation is established: see decisionsin Levi v Tesco, Ashdown v Telegraph and ITP v Coflexip. However,the impact of human rights has been limited to extreme peripheralcases, without challenging the central priority accorded tothe interests of IP owners. After considering practical applicationsin ‘non commercial’, ‘hybrid’, and ‘commercial’fields, this article argues for a more pervasive and centralrole for human rights, by greater reference to the Human RightsAct 1998, the EU Charter, international human rights instruments,TRIPS and decisions of other jurisdictions. This should enablea more balanced outcome to be reached in many, but not all,cases. Practical significance. IP owners, those challenging IP rights,and those advising them should all consider greater use of humanrights in IP litigation—not just in exceptional cases.Those resisting infringement may increase their prospect ofsuccess; those arguing for infringement will be better placedto counter arguments which may be raised. However, revisionof national, regional and international IP legislation wouldbe required to address all perceived social difficulties withIP.     

Gaining confidence in the law of confidence

Legal context. The recent case of EPI v Symphony has left theUK law of confidentiality in an uncertain state: the extentto which recipients of confidential information may be permittedto ‘use’ mixtures of such information with publiclyavailable material remains unclear. The Court of Appeal in EPIfelt that it was hard to reconcile the principle that any claimin confidence must fail if the material in question is in thepublic domain with the ‘springboard’ doctrine; butis the distinction illusory? Key points. Issues raised in this case include considerationof what precisely is ‘use’ of confidential information,when mixed with public information, and whether a confider shoulddo more than rely on confidentiality obligations to protectthe fruits of his/her disclosures. This article asks how confidentialityobligations may be aligned with the control of statutory intellectualproperty rights. It considers whether the Court of Appeal inMarkem v Zipher has confused the issue and speculates as tohow far the general law of contract can assist the confider. Practical significance. Finally, this article discusses whichlegal tools will best assist the confider seeking to protectits intellectual property.     

Future Developments

July 2006 UK FSA Consultation Paper ‘Implementing MiFID for firmsand markets’ to be published. Consultation period to closein October 2006. 6 July: Deadline for responses to Committee of European BankingSupervisors’ (CEBS) consultation CP02 on its standardsfor outsourcing of     

The Vessel Hull Design Protection Act of 1998: is it still afloat?

Legal context. The Vessel Hull Design Protection Act (‘VHDPA’or ‘Act’) is a unique form of industrial designprotection under US law, part of the Digital Millennium CopyrightAct 1998. Congress provided this sui generis form of protectionin response to the Supreme Court's decision in Bonito Boatsv Thunder Craft Boats, Inc. This statute has been underutilizeddue to the difficulty in proving infringement, as unintendedconsequences were caused by the way ‘hull’ was originallydefined under the Act. A bill is pending in Congress that addresseshow a ‘hull’ is defined, eliminating any inclusionof ‘deck’ features, when passed, registrants shouldbe able to pursue infringers with greater success. Key points. The recreational boat manufacturing industry hasbeen plagued by low-cost boat makers who think nothing of takinga competitor's boat hull design, and using it as a ‘plug’to make a casting for their own unauthorized manufacturing use,a counterfeiting technique known in the trade as ‘splashing’a hull. In the eight years since enactment, the boating industryhas generally overlooked this form of intellectual propertyprotection due to the difficulty in proving infringement—thatis likely to change soon. Practical significance. The Act includes the right to excludeothers from making, having made, importing, offering for sale,or using in any trade, any boat hull embodying the protectedhull design. The Act provides compensatory recovery for damagesas well as injunctive relief. The newly revised Act has thepotential to provide a low-cost and effective form of intellectualproperty protection for recreational boat manufacturers whobuild hulls from moulded fibreglass or similar materials.     

Indirect holdings of securities and exercise of shareholder rights (a Spanish perspective)

The first 150 words of the full text of this article appear below. Key points

• Shareholder rights have been the centre of the debatein Corporate Governance since recently. At the same time, modernsecurities markets have evolved and changed profoundly in recentdecades, both in the way in which the securities are representedand transferred—through electronic book entries held byintermediaries—and in the geographical reach of such transfers:every corner of the world.
• Recent research has thoroughly analysedthe effects of the indirect holding system in those countriesthat have chosen to give legal status to indirect holding systems(where the paradigm is the USA), leading to the conclusion thatin these countries the issuer–investor relationship encountersfar more difficulties than in those that facilitate direct holding.Some scholars have even proposed that countries such as theUSA should move into a direct holding similar to the Spanishone.
• This article analyses whether direct holdings facilitatethe said issuer–investor relationship by reviewing . . . [Full Text of this Article]

 

EU Directive on unfair commercial practices--a UK perspective

Legal context. Lack of any catch-all law of unfair competitionin the UK – difficulty for brand owners in protectingtheir IP rights with regard to look-alike products. UK remediessuch as passing-off and trade mark infringement have provedtoo narrow. EU Directive will add to the remedies availableand may assist brand owners in their battle against look-a-likeproducts. Key points. Legal position on look-a-likes in the UK –objectives of the new Directive. Analysis of the two main waysto establish a commercial practice is unfair in the look-a-likecontext. The likely effect of the Directive in the UK on copycatsyndrome and looking to the future. Practical significance. Brand owners may use the new law alongwith the old to stamp out look-a-like activities. Practicalapplication of the test under the Directive. Remedies includecourt orders to stop and prevent unfair commercial practiceto optional possibility of court-imposed requirement to publisha corrective statement or fine – if latter is introducedinto the UK would be an additional deterrent factor of practicalvalue.     

The trouble with ownership

The Trouble with Ownership: Literary Property and AuthorialLiability in England, 1660–1730 By Jody Greene, 2005,Philadelphia, Penn, USA: University of Pennsylvania Press Price:£32.50, Cloth, ISBN 0-8122-3862-1. pp. 272 (includingindex).   The early, indeed pre-history of copyright continues to attractresearchers, many of them scholars possessed, as Bill Cornishhas put it, ‘of formidable polish’. Jody Greene'sabsorbing book will add her name to the list of such figures,though not all will agree with the conclusions that she drawsfrom her source