There is little consensus internationally as to whether and how the law should respond when celebrities find themselves subjected to unwanted public discussions of their private lives in the media (increasingly on a global basis online), and when their personal attributes are referenced without their consent in certain kinds of advertising and trade. A number of commentators have characterized such intrusions on a celebrity’s personal dignity or autonomy as simply falling among the minor inconveniences of being a celebrity, insufficient to warrant legal protection given important social values such as freedom of speech and cultural pluralism. The lack of consensus is reflected in the uncertain shifting legal lines drawn around celebrity protection, especially in common law jurisdictions which, unlike many civil law jurisdictions, do not adhere to the idea of a full-scale personality right. In this chapter, we canvass the diverse devices that the common law courts have deployed to deal with the grant of celebrity rights. We note and support the messy multivalence we find recognised in common law approaches given the range of dynamic interests that are at play. Such heterogeneity of values might also be relevant to the curtailment of celebrity rights. Thus, we equally support a flexible approach to the limitations, defences and other points at which discretion may be exercised by judges to find a balance between the interests/rights that may be claimed for celebrities (human and otherwise) in controlling the uses of their personal attributes in advertising and trade, and the countervailing interests/rights that others may seek to maintain including in freedom of speech and cultural pluralism.
This is a contribution to a symposium on overlapping intellectual property rights. Trademark law has to address “overlapping” rights in a number of contexts. This Article tackles the territorial overlap of competing trademark rights. One cause of the increasing conflict between overlapping trademark rights is the trend in international trademark law to develop (mostly, but not entirely, administrative) mechanisms designed to extend rights more easily and more quickly beyond the borders of a single nation state. These efforts reflect pressures caused by global trade and digital commerce. But these mechanisms, purportedly prompted by and designed to further international trade, can cause problems that both hinder trade and arguably undermine competing social and economic norms (especially as the normative effects of unthinking internationalisation are increasingly questioned). The difficulties caused are particularly acute when rights have been granted in systems that do not require use in order to secure a trademark registration, and where registrations are of ever greater reach. This is true of the European Union Trade Mark system, which is one such mechanism designed to extend the geographic scope of rights beyond the nation-state. Under that arrangement, a single application can secure a right valid throughout the entire territory of the European Union and that can be enforced in one proceeding via the grant of an EU-wide injunction even without the plaintiff having used its mark. The application can be filed without even an intent to use the mark in question and the territorial scope of the resulting European Union Trade Mark (or EUTM, formerly called a Community Trade Mark or CTM) is defined by the external political boundaries of the EU, which now encompasses twenty-eight member states. Despite this, courts in the European Union have in a number of recent cases resisted some of the innovations of the EU system and have affirmed the enduring pull of a different conception of territoriality. This Article defends many of these acts of resistance, and supports further modifications of the EU model, in part because of the increased problem of overlapping rights. That increased overlap requires a critical reading of these innovative mechanisms and attention to a broader range of values in implementing the model. These propositions are supported both by a more theoretically complex conception of trademark territoriality and a richer normative account of the European project. The Article endorses the role of national (or at least sub-Union) rights not simply as a necessary irritant flowing from the nature of trademarks. Rather, they should perhaps be embraced normatively as part of a trademark agenda that blends regard for economic expansion, free movement of goods, consumer protection, and economic efficiency (encompassing transaction costs) as well as the maintenance of diverse social, cultural, and linguistic traditions within Europe.
This paper discusses the consequences on the main intellectual property rights (patent, copyright, trade marks and designs) as well as on trade secrets of a hard Brexit, namely an exit of the United Kingdom from the European Union which means that it will not longer be bound by EU law.
Reviews the statutory provisions and case law on the detriment to distinctiveness (blurring), detriment to repute (tarnishment) and unfair advantage (free riding) claims in India.
The Essay is a contribution to the volume celebrating the 50th Anniversary of CEIPI. It considers the future to development of the international intellectual property system by looking at how intellectual property is framed in international debates. The Essay contemplates the role of economics, trade, development, culture and human rights, and highlights the different approaches to the relationship between intellectual property and these different fields of knowledge. It argues that we must be pluralistic about the ways in which these five frames or bodies of knowledge interact with intellectual property law. That is because these different frames possess varying characteristics, and will operate effectively in different institutional settings. Indeed, we might not expect or want each frame to have equal weight in every setting.
This chapter provides a legal framework for deciding when a geographical indication (GI) has crossed over the line into generic usage, as the common name for a type of product (such as cheddar cheese). Genericide is a process and one that is highly controversial. While Art 24.6 of TRIPS has emerged as the international reference point, it is remarkably underdeveloped. The question of whether a designation has become the ‘common name’ for a type of product requires an empirically informed answer. However, when setting out the test for genericide, there are opportunities for normative inflections to be introduced. Section 2 sets out the history of this controversial area and the commercial stakes which influence legal determinations. Section 3 identifies the four main structural issues to be addressed (which regime to opt for; who bears the burden of proof; what is the threshold or tipping point for genericide; and how the factors should interact). Section 4 proceeds to analyse the categories of evidence, drawing on comparative experiences with such categories in operation. Here the perception of the target audience (consumers or the general public, as informed by trade and expert opinion) must be gauged against the contextual backdrop of market conditions, legislative or bureaucratic classifications of the term and the actions of the rights holder. Section 5 concludes with a review of the options for preventing generic use in sui generis GI regimes, while also suggesting the avenues for reviving terms that were formerly GIs but have been declared generic. The comparative analysis is offered as a practical resource for decision makers, while also serving as a reminder that the overarching enquiry should remain focused on the public perception of the term, as opposed to the competing commercial interests at stake.
This chapter contributes to a book on the image of the consumer in EU law by exploring the role of the average consumer in European trade mark law. There is in fact a variable concept of the consumer within European trade mark law and the chapter first sets itself the task of mapping these variations. We suggest that for structural reasons European trade mark law may be compelled to work with a differentiated concept of the consumer. However these variations should be approached relationally, with an awareness of the points of difference and their basis. In particular, we suggest that most efforts by courts to identify or construct consumers and the marketplace they inhabit are blended exercises that are part-empirical and part-normative. Explicitly recognising this blend will, we believe, enable a richer debate about the role played by the consumer in European trade mark law and the evidence or considerations to which courts might have regard. It also allows us to explore whether trade mark law in Europe ought either to achieve its own objectives or to contribute to the broader European project to adopt an approach to the consumer that is more empirically or normatively grounded as required by the legal context and whether different national courts are (despite different methodological traditions that survive European harmonisation) converging on a common approach to the trade mark consumer.
Data is increasingly becoming the central focus of a vast number of businesses. Be it in the form of football fixtures, horse racing results or flight information, data of this kind share a common feature – data as such is unprotectable as intellectual property (outside the realm of trade secrets and confidential information). Nevertheless, businesses creating data or depending on existing data to produce value added products routinely employ contracts as part of their business model, to control access and use of data by the end users. Contractual terms are fashioned in such a way as to gain property-like protection over data. This raises on one hand, philosophical questions as to what it means to ‘own’ data, which looks at the issue from a propertisation point of view. There are on the other hand, more practical questions as to whether and to what extent control over the use of data can be exercised through a contract, which looks at the issue from a freedom of contract perspective.
Can the protection of Geographical Indications (GIs) signs which indicate the regional provenance of products such as Prosciutto di Parma, Darjeeling and Cognac be integrated within a cultural rights framework? Since there has been recent interest in GIs as a potential vector for achieving cultural heritage goals, this suggests an affinity with cultural rights. To develop this line of enquiry, this chapter focuses on two threshold issues: (1) To what extent can the notion of cultural heritage act as a bridge or link between GI and cultural rights protection paradigms? (2) Alternatively, moving beyond a conventional human rights framework, are there parallels between GIs and the notion of intangible cultural heritage (ICH) as recognised in international legal instruments by UNESCO in particular which could be more fruitfully developed?
This chapter contributes to a book on the image of the consumer in EU law by exploring the role of the average consumer in European trade mark law. There is in fact a variable concept of the consumer within European trade mark law and the chapter first sets itself the task of mapping these variations. We suggest that for structural reasons European trade mark law may be compelled to work with a differentiated concept of the consumer. However these variations should be approached relationally, with an awareness of the points of difference and their basis. In particular, we suggest that most efforts by courts to identify or construct consumers and the marketplace they inhabit are blended exercises that are part-empirical and part-normative. Explicitly recognising this blend will, we believe, enable a richer debate about the role played by the consumer in European trade mark law and the evidence or considerations to which courts might have regard. It also allows us to explore whether trade mark law in Europe ought either to achieve its own objectives or to contribute to the broader European project to adopt an approach to the consumer that is more empirically or normatively grounded as required by the legal context and whether different national courts are (despite different methodological traditions that survive European harmonisation) converging on a common approach to the trade mark consumer
Online copyright infringement is one of the toughest challenges the content industry has faced in the twenty first century. Article 8(3) of the Information Society Directive, implemented under section 97A of the UK Copyright, Designs and Patents Act, 1988, provides an injunctive remedy in response to such online infringement. Given the elusive nature of the website operators and the sheer number of their users, rights owners have turned to the Internet Service Providers (ISPs) to implement the injunctions granted under section 97A to block websites with infringing content. In their battle to keep pace with online infringers, the UK courts have permitted significant compromises to the procedures while granting these injunctive blocking orders. One of the pioneers in this line of cases in the UK is the Pirate Bay case (TPB case), which ruled as a matter of law that the procedure under Section 97A does not require the alleged infringers to be made parties to those proceedings. TPB case also marks the trend of the ISPs consenting to an order of injunction, and not defending the proceedings. This has resulted in the absence of any adverse party in the proceedings under section 97A. This threatens the basic tenets of procedural fairness and propriety, having adverse consequences on both the substantive and procedural aspects, evident in the cases that followed TPB case. This article examines the aspects of the judgment in TPB case that led to these procedural compromises, whether it had any basis in the pre-existing case law, what the nature of an injunction under section 97A is and how the subsequent line of cases have followed TPB case as a precedent. It further explores the adverse consequences of the procedural compromises and whether any safeguards are available against such compromises.
This response to Barton Beebe explores whether contemporary experience in Europe supports the central arguments advanced by Beebe in The Supressed Misappropriation Origins of Trademark Antidilution Law. The development of E.U. law is largely consistent with the idea that dilution law is in part an effort to install a misappropriation regime, at least insofar as the objects of protection are trademarks with a reputation (increasingly, a smaller caveat as the scope of potential trademark subject matter expands and the reputation threshold falls). This has important local consequences: if dilution law is in truth is a law against misappropriation, the Court of Justice of the European Union has greater scope to contribute to the creation of a nascent European law of unfair competition. But examining recent European case law also suggests that understanding misappropriation as part of a broader system of unfair competition may moderate the formalist critique of misappropriation as wholly indeterminate and unlimited. Understood in its unfair competition milieu, a misappropriation-based concept of dilution retains some potential for measured delineation of the edges of protection.
Bollywood films are known for their songs, and in many cases Bollywood films are known because of the songs. It is not merely in Bollywood films that songs have a significant role, but also in the lives of myriad composers, lyricists, singers and so on, lending an opportunity for their creative expression in addition to serving as a means of livelihood. Ideally, it should be possible for composers to be able to earn an income by composing music for films, as well as by being a member of a collecting society in such a way as to maximize their returns. From the bundle of rights they have, the composers should be able to transact with both the producers and the collecting societies, but with rights that do not overlap. However, in reality the rights could get tangled in a legal quagmire between the collecting society and film producers, as each demands exclusivity. The article is an attempt to show how the rights of composers is meddled with by both the film producers and the collecting societies, leading to gross unfairness in the distribution of the returns from exploitation of their rights. To this end, the article examines the UK Court of Appeal decision in B4U Network (Europe) Limited v Performing Rights Society Limited, which upheld the rights of the collecting society, and compares it with the Indian Supreme Court decision in Indian Performing Rights Society v Eastern India Motion Pictures, where the rights of the film producers was upheld. This article then goes on to examine what it means to the composers if the film producers’ rights trump those of the collecting societies. The article also explores how the amendments introduced to the Indian Copyright Act in 2012 address the situation.
In U.S. law, the term secondary liability is an umbrella term encompassing a number of different types of trademark infringement claim. Its essence is that liability does not turn on the defendant itself using the plaintiffs mark, but rather on the defendant being held responsible for the infringements occasioned by the use of the plaintiffs mark by a third party infringer. Secondary liability claims might be strategically preferable to trade mark owners over bringing actions against the primary infringer. The advent of the Internet has only enhanced some of these strategic benefits. However, secondary liability also creates the spectre of highly intrusive regulation of the business of intermediaries operating in the online environment. In these cases, we must balance the rights of the mark owner with enabling legitimate development of innovative technologies that allow new ways of trading in goods. The online context of many contemporary uses of marks has also, as in other areas of intellectual property law, prompted a demand for international solutions to the potential liability of online intermediaries for secondary trademark infringement. And indeed most countries have long recognised a cause of action for engaging in conduct that U.S. law would call secondary trade mark infringement. This Article assesses the international treatment of these causes of action, first by looking at international law principles conventionally understood, namely, state to state obligations regarding the content of domestic law. There is little of relevance to the secondary liability question if the international landscape is understood in those terms. Thus, the Article proceeds also to analyse commercial practices that are contributing to soft transnational law and to compare the regimes adopted by the United States and the European Union as leading examples of approaches to the secondary liability question. The Article focuses on parallel fact patterns that have been litigated to appellate level in a number of countries. Thus, the paradigmatic cases considered are (1) claims brought against online auction sites, each essentially alleging that the auction site could have done more to stop the sale of counterfeit and other allegedly infringing items by third parties on its web site; (2) claims brought against search engines alleging that the sale of keyword advertising consisting of the trademarks of parties other than the mark owner resulted in infringement (normally, by causing actionable confusion).