Letter from AmeriKat I: Good Day Sunshine (TMs and ©)

The AmeriKat has been watching the English public embrace the change of the season this week. On Friday she slinked outside for her midday patrol and perched on a bench in Gray's Inn, with the new Vogue in paw. (picture, left - the AmeriKat taking a much needed lunchtime Kat nap) Like spring flowers, once the temperature rises above a certain level the English bloom onto any stretch of grass available to them. A sea of students, solicitors, lawyers and miscellaneous office workers were scattered about in the sections of Gray's Inn grass that was unspoilt by any appearance of shade. Once modest workwear suits, worn by males and females alike, were stripped of any sweaters, cufflinks and buttons to expose as much square footage of skin as possible, laughter was echoing off the Inn's buildings, people were chatting with their neighbors, and a general feeling of calm settled throughout. The AmeriKat even spied some IP barristers from 11 South Square joining in on the emergence of spring. There is something about warmer weather in England that makes the general public a little less guarded than normal, in both physical appearance and mentality, which can only ever be welcome.

Louboutin sees red with Yves Saint Laurent

Someone who has seemed to let their guard down, in least where trade mark infringement claims are concerned, is Yves Saint Laurent who last Thursday was sued in Manhattan federal court by the one and only Christian Louboutin. Louboutin is famous for his footwear recognizable by the casual observer by its trade mark red sole. The story goes that one of Louboutin's customers was wearing an amazing red nail polish on her nails which Louboutin adored. She had the coveted nail color in her bag, took it out and Louboutin painted his first sole with the red nail polish. The violent red-lacquered sole would later become his signature maker's mark and would be granted a US trade mark in 2008 (picture, right - Louboutin's famous heel).

Louboutin is now alleging that since January Yves Saint Laurent America, a subsidiary of the Gucci Group, is selling their shoes with the same red sole in store throughout Manhattan. Louboutin's complaint argues that Yves Saint Laurent's use of the red sole is "likely to cause and is causing confusion, mistake and deception among the relevant purchasing public." Louboutin is claiming for $1 million in damages and an injunction to stop Yves Saint Laurent (picture, left) from manufacturing the shoes. Interestingly, Louboutin apprenticed with Yves Saint Laurent in the late 1980s before setting up his own brand.

The AmeriKat is curious, as any Kat should be, to know what evidence of actual confusion (as stated by the complaint to be occurring) Louboutin has. Unlike in the UK, under section 1114 of the Lanham Act US trade mark owners have to prove that the defendant's use of their mark confused consumers. In the Second Circuit, which includes New York, the factors for the test for confusion is that as laid down in the Polaroid Corp v Polarad Elecs. Corp (1961) case. The AmeriKat sets out these factors below with some comments in laden ladenfam's signature comment red:

1. The strength of the mark, i.e. the red soles - It is somewhat undeniable that Louboutin's red soles have indeed become well-recognized as a trade mark for his shoes in the market.
2. The degree of similarity between the two marks - Identical - in so far as they are both red outersoles
3. The proximity of the products and services - Identical - they are both shoes, being sold in the same stores, probably right next to or near each other
4. The likelihood that the senior user will "bridge the gap" into the junior user's product service line - if there even is a 'gap' it is very likely because they are competitors
5. Evidence of actual confusion between the marks - Always hard to come by, but perhaps Louboutin has some faithful customers who will be able to attest to some initial interest confusion?
6. Whether the Yves Saint Laurent adopted the mark in good faith
7. The quality of the Yves Saint Laurent's products - the AmeriKat would love to see Louboutin allege that YSL's products are of a lesser quality, but the fact that they are not and are side-by-side competitors actually makes it more difficult for YSL to squirm out of this one because there is more chance of there being actual, likely or initial-interest confusion.
8. The sophistication of the parties customers -If someone is in the market for $400-$4,000 shoes, one would think you would pay particular attention in knowing what shoe and from whom you were buying, however again, initial interest confusion may be the savior in this confusion battle.

Confusion, as any trade mark lawyer knows in the US and the UK, is notoriously difficult to prove. However, in the US and now thanks to Arnold J in the UK, initial interest confusion is probably the saving grace for Louboutin. Given that the price points of parties' products are so high and the sophistication of the intended consumers is so developed, any confusion present regarding the origin of the shoes on behalf of the consumer is likely to be remedied prior to purchase. What do readers think? Is this an easy fight for Louboutin or does Yves Saint Laurent have it in the (Neiman Marcus) bag?

Need for Congress to address issues with Google Books lawsuit, Pallante says

The AmeriKat has been quiet about the Google Books Settlement, which some may find unusual considering how much she followed and wrote about the litigation (see previous reports here). In fact she even predicted when District Judge Denny Chin (picture, left) was going to issue his damning judgment (just ask @garethdickson). There is little she wishes to say right now about Judge Chin's judgment other than, in her opinion, it was the correct determination given that the revised settlement seemed even worse than the first and again did not adequately address the issue of orphan works, and Google could have saved itself a lot of bother had it been an "opt-in" class than an "opt-out" (albeit probably not as profitable). However, the issue spotlighted how important the issue of digitization of works is in copyright, be it literary or artistic.

Maria Pallante (picture, right), acting Register of Copyrights, feels the same. Last week she told an event hosted by the US Chamber of Commerce that lawmakers need to address the issue of whether the digitization of literary works should be a benefit for the public or become a profit-making endeavour. As reported by the Dow Jones Newswire, Pallante stated that

"The first issue is really, is mass digitization a national goal that Congress feels legislation is warranted for, and if so, for what beneficiaries."

She also stated that

"It isn't that universal libraries aren't important, but there's a difference between universal libraries and universal bookstores."

With orphan works are back where we started, says the AmeriKat, why can't the US government just once and for all pass a bill like the Shawn Bentley Bill? It would allow for digitization of orphan works, but if and when the owner came forward a reasonable royalty would be payable under statute provided the user undertook a reasonable search. Does it need to be more complicated than this? Of course, the problem encountered is that once that copy is digitized the person who digitized it can arguably exclude other digitized copies of the same book being made - thus some of the arguments against Google in the Google Books case. As long as it is clear that the mere digitization of a literary or artistic orphan work does not mean that the digitizer can exclude others from making their own digitized versions of the work, then such problems should not be encountered. But then again, how can this be done but by legislation?

More in Part II.

Global Forum on IP: Report 3

Three weeks ago, following a hearty lunch during the first day of the Global Forum on IP this Kat made her way to the trade mark parallel session, but as she sat down a shadowy realization (picture, left) begun to creep: she knew that as hard as she tried, she could not face another conference session on Google AdWords. After attending about 6 seminars, one of which she herself presented at, how much more could she learn about the CJEU (ECJ) case and would it be any different to what had come before? A cynical voice thundered saying "No, it won't be. Go to the oft-neglected copyright session, instead." So with the voice booming away, she decided that the copyright parallel session would be the best place for her and her report of that balmy Singaporean afternoon is set out below.

Pirate Bay and the Digital Economy Act: Is the time ripe for an overhaul of copyright law?

Although the session had the Digital Economy Act (DEA) in the title very (very) little was said about the actual Act or the fact it was being judicially reviewed. Professor Hughes, the moderator of the session from the Cardozo School of Law, began the session by expounding on the beginnings of ISP liability and peer-to-peer technology culminating in the Napster and Grokster litigation in the US. This litigation was the impetus for the US legislature and courts to examine ISP liability in the US. This issue is still pertinent 10 years later with the extensive litigation that has been seen in the Pirate Bay litigation - whose service was ordered to be cut off by the Danish and Italian courts. The question has now become whether or not ISPs should be involved in graduated responses, and if so what should their level of involvement be in this response.

Jan Rosén, (picture, left) Professor at Stockholm University stated that the UK, like many other countries in the EU, has instruments of graduated response legislation to stop traffic and to ascertain IP addresses of suspected copyright infringers. This has very much been central to the debate on these issues. Professor Rosén asked whether in this growing system of "copyright abolitionism" we have learned something from piracy and the Pirate Bay case. The simple answer, he says, is that copyright has survived and has come out stronger than ever and Professor Rosen cannot see any alternative to this. He does however, note that stopping internet service has deep issues concerning freedom of expression and privacy.

Professor Rosén acknowledged that copyright is a complex area of law and has been so over the years. In recognition of this increasing complexity and in line with what Mr Justice Arnold said earlier in the morning (see report here), Professor Rosen stated that UK copyright should be amended by a new act. The UK Copyright Act, like the Swedish copyright act, is just layer after layer of amendments which it makes it too difficult to understand or interpret.

It may have been sitting under the halogen lights coupled with her jet lag but laden ladenfam tuned out for a bit (picture, right - laden ladenfam warming her whiskers under the lights) and when she looked up again she was staring at a slide entitled ‘Pirate Bays contribution to a contribution…” and that was the end for her for a couple of minutes. She mentally returned to the program when Professor Rosén spoke about whether or not ISPs should benefit from reduced liability due to the social value of their work and business. This argument had been rejected by the the Swedish Court in Pirate Bay. However, the Swedish court did say that liability may be reduced for ISPs because of impassive willfulness due to automation and intense traffic, i.e. being passive and not acting with full responsibility. As laden ladenfam understood it, any kind of ISP service maybe liable for contributory infringement at least according to the Swedish Appeal Court. This may not fall under willfulness, but it could be argued as being grossly negligent in Sweden suggested Professor Rosen.

Professor Ng-Loy Wee Loon of the National University of Singapore stated that Singapore is also looking to a graduated response type legislation. To rightsholders, graduated response mechanisms are just another enforcement measure -they are not actually getting any additional rights. Professor Loon says she can understand why this is an effective means of enforcement of copyright in an area which is ripe with infringement, i.e., the internet. In Singapore there is a separate police force, the IPR Branch in the Criminal Investigation Department, which enforce IP infringement. But a lot of burden is placed on this branch and the tax payers who pay for the enforcement of a private right.


ISPs similarly have a burden by way of their gatekeeping function. But with this burden comes the benefit of safe harbor provisions; the provisions of which in Singapore are similar to the US model (see AmeriKat reports on the Safe Harbor provisions in the DMCA here). Professor Loon questioned how much further copyright enforcement should go in protecting copyright. She thinks there should be a three-strikes law which should be called "balance-balance-and-balance". The RecordTV v MediaCorp TV Singapore (2010) case was cited. The technology involved the ability of any member of the public being able to register with the plaintiff and following registration could use the system to record the TV programs, i.e. time-shifting. This is permitted by the Singapore Copyright Act under section 114. MediaCorp TV Singapore is the main broadcaster in Singapore and produces television programs like documentaries. The issue before the court was the right of communication to the public. When this case went to the Court of Appeal, there were questions about the scope of communication to the public. Where there is a one–to–one translation, i.e., where the streaming of the broadcast is to the user of RecordTV individually, and not to the public, the court looked at the bigger policy picture. Right at the start of the Court of Appeals judgment, the court asked how the court should strike a “just and fair balance” between all the interests of the affected stakeholders, including the interests of consumers, content providers as well as technology and service venders. They said the balance should come down in favor of the wider public interest, and therefore RecordTV’s service did not involve a communication to the public. Professor Yoon says she is not sure about this aspect of the Court of Appeal’s judgment. She believes the court bended over backwards to make this decision make sense in the favor of balance because the parliamentary debate on this issue seemed to indicate that such a case of RecordTV should fall within the definition of communication to the public. Professor Yoon stated that it may not have been the wrong decision, but it was a very alternative route to get there.

The overall point that came out from the two presentations was that from both Singapore and Sweden alike, even when legislatures craft safe harbors for ISPs, if the judge wants to throw the book at an infringement based model or wish to protect an ISP, they will do so regardless of the legislative intent.

Google Book Settlement

The next session discussed the Google Books Settlement. An IPKat favorite and always entertaining speaker, Mr Tilman Lueder, Head of Unit (Copyright) of the European Commission, (picture, left) the moderator of the session, begun by giving background on the Google Book project. Lueder compared the Google Book Search to the EU’s Europeana project which is “falling behind” because, he says, the EU has a strict copyright system without fair use. Mr. Lueder suggested that if we wanted to facilitate large scale digitization we would have to change the laws and could not leave this in the hands of a private party settlement. Meanwhile, he says he is not so sure that this is Europe's only option any more. The European Commission published an impact study on orphan works and there was no forthcoming consensus as the publishers, users, and the like do not seem to speak the same language. One can be excused in thinking, Mr. Lueder continued, that the Google Book Settlement is not so bad – or at least not as difficult as passing legislation.

Professor Rosén said that this issue was very vast. Now that Google Settlement diminished to only a fraction of its previous incarnation, there is still 50 million works that have been digitized. Something will surely happen with these digitized works. The question is whether we want a global player who has a capacity to offer these large catalogues of works in a private capacity? No collecting society can provide such a big repertoire. A detailed discussion then ensued about the Nordic compulsory licensing system, which this IPKat has such strong views on its un-workability throughout the EU that she unfortuantely automatically stops listening. One could even feel the rest of the audience switch-off as soon as the issue of compulsory licensing was brought up.

Professor Wong stated that she thinks that the Google Book Settlement should be approved. She says that the second version is many ways an improvement on the first especially due to the resolution for the foreign rights owners. Leaving aside the anti-trust issues, she does not believe that dragging the copyright issue to trial would be beneficial. Professor Wong also stated that even though a private company is handling these licences, it may be no bad thing for the US to experience a licensing system. There are some cautions going forward beyond the Google Book Settlement which includes the treatment of orphan works. Professor Wong also stated that it has been frustrating for her that the US legislature has started initiatives dealing with orphan works but they have not gone anywhere. Although not mentioned by name this would include the Shawn Bentley Bill, which this IPKat knows intimately being the subject of her LLM dissertation, which was a good bill but never went anywhere. In addition, proposals for the exemption of Section 108 to the Copyright Act -an exemption for libraries and private individuals - which still has gone nowhere. The Google Book Settlement is one elegant solution in addressing the problem of orphan works.

Professor Hughes (picture, left) from the Cardozo School of Law said the seeds of the Google Book project is that they make money from the Google Book Project, a little fact that Google always seems to forget when promoting the Settlement. Although, doctrinally, there may have been an argument for fair use, politically there is no way there could be fair use. The Statement of Interest from the US government filed in 2008 opposed the first settlement. The Statement of Interest focuses on market dominance of Google. The Department of Justice say they should not achieve anything more than first-mover advantage in scanning the books and then obtaining a licence. The settlement should not do anything more in prolonging market dominance. The recent filing in September 2010 characterized the revised Settlement as a “bridge too far”, which includes the issue of orphan works.

Mr. Lueder asked if orphan work legislation is misguided. The Department of Justice says that the Google Book Settlement is a private agreement substituting for legislation of private rights for members who are not present. This troubles Professor Hughes, and, as readers know ,the AmeriKat greatly (see her post here). Professor Hughes says that the wider issue is what does this project say about the system of publishing in the US as well as the role of libraries. Will we be entirely cutting out the middle-man in all of these processes? Professor Hughes says that if he was a librarian, he would be very concerned about the Google Book Project.

Mr. Lueder says that although we have recognized that we should not have private parties legislate on issues, the difficulty in the orphan works experience in Europe makes such private legislation seem attractive. Professor Hughes says that with the Google Book Settlement in the US we may be seeing a mixture of private settlement with the US Government guiding them in a quasi-legislative role of saying whether the settlement is acceptable or not – the “you are getting warmer, warmer. Nope, now you are colder” game.

Mr Justice Arnold (picture, right), in audience, argued that although Mr. Lueder says that legislation like orphan works is challenging the point surely is to balance the interests and make a judgment as to where that balance lies [a judge would say that, says laden ladenfam]. Why, said Mr Justice Arnold, does there have be a complete consensus on the legislative issue before legislation is made? Mr. Lueder says that every time they try to strike a balance in proposed legislation, they receive pressure from stakeholders and this constantly makes this legislative process challenging. He said that at times the rights holder community is so strong, that they feel that any strike of balance is an attack on their rights and this holds back the balance. Likewise with the other side of the camp, laden ladenfam says.

Admittedly, there was one more session in this afternoon but the AmeriKat, having sat under the halogens and suffering from a mean case of jet lag, stalked up to her hotel room to take a 40 minute Kat nap before dinner.