Publications
European IP Bulletin, Issue 9, February -
Copyright
Copyright
2. THE MUSIC INDUSTRY TAKES ACTION AGAINST PARALLEL IMPORTS
The great disparity in the prices operated by global companies across
various territories has encouraged online retailers to import CDs from
outside the European Economic Area (EEA), particularly the Far East and
Asia. Indeed, as prices differ between the EEA and other parts of the world,
the obvious tactic is for online CD retailers to buy from the least
expensive country in order to sell in the most expensive country, without
the copyright owner’s consent. To address this imbalance the British Phonographic Industry (BPI) is beginning to take action against online retailers selling CDs
sourced from outside the EEA.
The BPI brought an action against online retailer CD WOW!, which was settled
in January 2004, two weeks before the case was due in court. The record
industry was claiming that CD WOW! was obtaining sound recordings outside
Europe and selling them to UK and Irish consumers. As a result of the
settlement, CD WOW! has agreed that it would stop parallel importing and
change the way it sources its CDs. In the future, CD WOW! will only sell CDs
that have first been placed on the European market to UK and Irish
consumers, instead of CDs that have been first placed on the market outside
Europe. The consequence for CD WOW!’s consumers will be an average price
rise of between £2 and £3 pounds for CDs brought on the internet.
The BPI, which has also recently issued proceedings against Play.com over
parallel imports, is also investigating the US online retail giant
Amazon.com.
The action taken by the BPI against CD WOW! was the music industry’s first
success in its battle against parallel imports. It is likely to open the way
for a number of other legal battles. However, industry insiders believe that
in the near future, record labels will come under increasing pressure to
reduce retail prices of CDs in the UK and to enter the long and complicated
process of standardising prices and royalties globally.
3. GOOGLE DEMANDS BOOBLE CHANGE ITS NAME
Google, the world’s most popular internet search-engine, issued a legal
warning in the US to Booble a pornography-based website for infringement of
trade mark.
Booble is a new internet search-engine dedicated to pornography, and since
its launch on 20 January 2004, the popularity of Booble has increased
considerably. The company reported its site has collapsed twice because of
overuse during that period.
Google said that the adult Domain “Booble” leads to confusion with the
famous trade mark “Google”. The famous search engine launched a legal
warning claiming for a permanent refrain of use of the name of Google, or
any variation that would create confusion or dilution, and claiming for the
cessation and desistance of use of the Google trade dress. Booble has
replied saying its site is a simple harmless parody and recalling the right
to parody is held under the first amendment. In Google’s view the assertion
of the first amendment does not apply, since a parody must not only involve
elements of the previous work, but should also include a new creation and
even comment upon the original work.
While in principle the assertion of Booble that the freedom to create or to
express a parody would seem appropriated to the case, it is undeniable that
both sites are internet search-engines and so compete in the same market, a
fact that would be taken into account by the Court while assessing the
infringement.
4. NELLIE THE ELEPHANT PART 1
On 15 December 2003, the UK Trade Marks Registry delivered its decision
in the request for a declaration of invalidity of the NELLIE THE ELEPHANT
trade mark by Dash Music Co. Limited, Decision O-391-03.
Dash is the proprietor of the copyright in the song ‘Nellie the Elephant’.
Animated Music Ltd took a licence from Dash, to enable it to launch a
cartoon series about a female pink pachyderm, the name of which and the main
character in which was ‘Nellie the Elephant’. Animated subsequently
registered NELLIE THE ELEPHANT as a trade mark in Class 41. Dash claimed
that the registration was invalid because: (i) it had an earlier right for
the purposes of s.47(2)(b) taken in conjunction with s.5(4)(b) of the Trade Marks Act in the form of its copyright in either the phrase NELLIE THE ELEPHANT or in
the lyrics of the song and (ii) Animated had registered the mark in bad
faith under and so the mark was invalid under ss.47(1)/3(6), since Animated
knew of Dash’s rights in the song.
The Registry refused the application for a declaration of invalidity,
rejecting both of Dash’s arguments. First the Hearing Office decided that
under s.5(4)(b), the earlier right must predate the date of the application
for the challenged trade mark. Dash’s copyright in the song satisfied this
requirement. However, Dash could not base its claim on the title to “Nellie
the Elephant” alone. While a title can, in theory, attract copyright
protection, “Nellie the Elephant” did not, as a literary work must “afford
either information and instruction, or pleasure in the form of literary
enjoyment”. “Nellie the Elephant” did not inform or instruct. Nor did it
give pleasure in the form of literary enjoyment when taken on its own, as
opposed to when it was used as part of the lyrics of the song. Any other
view would expand the scope of copyright in relation to song titles.
The use of the phrase “Nellie the Elephant” did not constitute the taking of
a substantial part of the lyrics of the entire song, in which copyright
vested. Substantiality must be assessed qualitatively rather than
quantitatively. Previous case law suggests that the taking of a title of a
song does not constitute the taking of a substantial part of the copyright
work. It was also questionable whether, if the title itself did not attract
copyright, it was possible for it to qualify for protection on the basis
that it was a substantial part of the musical composition.
Finally, Animated’s mark had not been registered in bad faith. Even though
the licence to use “Nellie the Elephant” granted to Animated was
non-exclusive and, therefore, Dash could have granted licences for similar
uses to other undertakings, Dash had made no attempt to do so or to exploit
the intellectual property rights in the composition or name between
acquiring the copyright and Animated’s application to register the mark.
Also, Animated had no obligation to consult Dash about their plans and so it
could not be said to have acted covertly.
This case required a trade marks official to decide on what is essentially a
copyright point. A contrary decision would have recognised copyright names,
something the courts have recognised as possible in theory but have refused
to implement in practice (although it would have no binding force on any
relevant copyright tribunals).
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