Welcome back to the new term

As the long summer recess draws to a close, and the better heeled amongst the legal fraternity return from their yachts and vineyards to the piles of papers awaiting them on their desks, it's nice to know that some of us have been keeping the machinery of legal information in proper working order, writing up last term's cases ready to be cited in the new term's hearings, and covering the occasional pronouncements of the vacation courts.

That said, all work and no play makes Jack a dull boy and this blogger has not let the summer pass without a visit to the wonderful Yorkshire Sculpture Park, where the above photo of a piece by Henry Moore was taken. Among the many interesting works of art on display in this idyllic location (sheep and peace of mind included free of charge), one thing was, however, noticeable absent:

A stormtrooper helmet from the film Star Wars.

And it wasn't just because the piece in question had been teleported to the Supreme Court, where the above photo was taken (courtesy of the Press Association). It was because -- as their supreme Lordships and one supreme Ladyship have held in Lucasfilm Ltd v Ainsworth [2011] 3 WLR 487; [2011] Bus LR 1211 -- IT IS NOT A SCULPTURE.

The defendant, Andrew Ainsworth, had been commissioned by the claimant film-makers to create a military-style helmet for use as a prop in the sci-fi adventure series. He based his design on paintings and drawings and a clay model supplied by the defendants. When, later, he began making replicas of the helmet for public sale, the empire struck back, contending, inter alia, that the design was protected as a "sculpture" under section 4 of the Copyright, Designs and Patents Act 1988. Mann J [2009] FSR 103 did not agree, saying that since the helmet was primarily utilitarian in function it was not a sculpture and therefore the defendants had a defence under section 51 of the Act, which permits the copying of a design document or model for anything other than an artistic work. The Court of Appeal affirmed that decision [2010] Ch 503; [2010] Bus LR 904, and, in a judgment given at the end of the summer term, the Supreme Court has now agreed.

By section 4(1) of the 1988 Act a "sculpture" can be an "artistic work" "irrespective of artistic quality". The implication in this less than watertight piece of drafting must be that something not intended to be an artistic work, however good its quality, will not be a sculpture. And that seems to have been the answer here. Whether and to what extent such works require or deserve some other form of protection is ultimately a matter for Parliament, as Lord Walker JSC and Lord Collins suggest in para 48.

The case was one of a number the Supreme Court delivered at the end of term, before several of its members went on a historic visit to China. According to a press release they planned to spend five working days visiting the Supreme People’s Court and judges of the District Court in Beijing, the Law School of Beijing University and the Municipal High Court in Shanghai. Then it was off to Hong Kong, to visit the Court of Final Appeal and the High Court.

The trip took place in September, at a time when British courts are still in recess. But in Luxembourg, the Court of Justice of the European Union was busy delivering judgments. As with the Supreme Court, the most interesting in the bunch was about intellectual property rights.

"Say it with flowers" -- not adwords.

A rose by any other name would smell as sweet, according to Shakespeare, but a flower delivery service would not sell as sweet -- if it weren't called Interflora. So that was one of the Google "adwords" that Marks and Spencers bought, to help attract customers to their own, clone flower delivery service.

When internet users entered the word “Interflora” or a similar expression as a search term in the Google search engine, an M & S advertisement appeared under the heading “sponsored links”. Interflora brought proceedings for trade mark infringement before the Chancery Division, where Arnold J decided to stay the proceedings and refer 10 questions to the Court of Justice for a preliminary ruling. These were later whittled down to four, which the Luxembourg court answered on 22 September in Interflora Inc and another v Marks & Spencer plc (Case C-323/09); [2011] WLR (D) 281.

The court held that the proprietor of a trade mark (such as Interflora) was entitled, under article 5(1)(a) of Council Directive 89/104/EEC and article 9(1)(a) of Council Regulation (EC) No 40/94 on the Community trade mark, to prevent a competitor advertising on the basis of a keyword identical to the proprietor's trade mark where such use was liable to have an adverse effect on one of the functions of the trade mark (such as indicating origin of the goods, etc). Moreover, under articles 5(2) and 9(1)(c) respectively, the proprietor was also able to prevent such use where the competitor thereby took unfair advantage of the distinctive character or repute of the trade mark ("free-riding") or where the advertising was detrimental to that distinctive character ("dilution") or to that repute ("tarnishment").

The case is the latest in a series involving different ways in which the use (or perhaps abuse) of Google adwords has annoyed trade mark proprietors, including Google France SARL and another v Louis Vuitton Malletier SA (Joined Cases C-236/08 to C-238/08) [2011] Bus LR 1 and Portakabin Ltd v Primakabin BV (Case C‑558/08) [2011] Bus LR 1339.

Ave atque vale Tom Paine

Finally, a bit of sad news. Solace and refreshment for many of us who cover the Royal Courts of Justice may be found in the Seven Stars, an ancient and eccentric pub in Carey Street, popular with barristers and journalists alike. The pub had, until recently, a resident cat, depicted here in his court attire, and held in great esteem by the regulars. He was a Learned Cat, a worthy namesake of the great 18th century human rights activist. Recently he fell into a decline and has, sadly, passed on. Now he pads among the asphodels in the feline Elysian fields. He will be missed.