and it certainly looks like House of Commons was right to warn database owners to be very afraid.
Gummow J opened with a bouncer to Counsel for Nine Network, the respondent, pointing out that the House of Lords in Ladbroke v William Hill overruled Lord Diplock who was then sitting as Diplock LJ in the Court of Appeal. Followed up with:
GUMMOW J: What I am putting to you is that do not think that in this Court William Hill is the end of a rainbow.
GUMMOW J: There is real question of what this notion of originality means in this “electronic age”, is there not?
Gummow J went on to describe Cramp v Smythson from the 1940s as the “elephant in the room” and then
GUMMOW J: I suppose what I am putting to you is, maybe some of the considerations that underpin the approach in Feist conceivably could underpin an approach to the notion of substantiality at the later stage in our law.
although his Honour did indicate that Counsel’s rejection of the relevance of Feist under our Act “may well be right”. Nonetheless:
GUMMOW J: There will be a grant of a special leave in this matter. The Court will allow one and a half to two days, I think, and we expect to have the assistance of counsel to deal with this matter thoroughly without any reticence in starting at the bottom, so to speak, and we expect counsel to be familiar with the academic writing in this field. They have already been referred, I think, to an article by Dr Deazley in  Intellectual Property Quarterly 121. There is also what may be a useful article by Professor Sterk in Michigan Law Review for 1996, Volume 94, pp 1197 called Rhetoric and Reality in Copyright Law. There is a lot of other material out there as well. I hope the arguments will be informed with all of that, at least in a suitable background.
We’ll have to wait a bit longer to see what the actual questions are.
What do you do when someone registers the domain name [yourbrand]sucks.com? What should you have done before it got registered?
Apparently, more than 20,000 domain names take the form [yourbrand]sucks.com. Sometimes, the person that registers it is just after your money (and lots of it); sometimes, they have a very serious grievance with your company and they want to air all the dirty details out there in cyberspace.
When they’re just after lots of your money, WIPO’s Overview of WIPO Panel Views on Selected UDRP Questions indicates that a majority of panellists will probably find the name is confusingly similar to your domain name (but by no means all), but your chances on the other 2 requirements are very hard to predict. Compare para. 1.3 to 2.4.
In Australia, it is likely that a genuine gripe site won’t infringe your trade mark for the simple reason that the griper is not using your trade mark as a trade mark. (I’m not sure if it would fall within s 122(1)(b), but s 120 specifically requires use as a trade mark and the cases derived from Irving’s Yeastvite v Horsenail indicate that use to refer to the trade mark owner’s own product marked with the trade mark is not use as a trade mark). Of course, the griper might be engaging in defamation or slander of goods or something similar.
Now, Fairwinds Partners, who are Internet Strategy Consultants, have published a report via brandchannel (pdf) on this issue from a marketing perspective. The report looks at what’s happening including the clever, but nonetheless brave, strategy adopted by Loews to use the name to field and address their customers’ concerns.
Brave because there aren’t that many brand owners who are going to want to see that word “sucks” joined with their prized asset; clever because … well, they are doing what the customer wants in the main: finding out about the problem and dealing with it.
IPKat reviews 2 new texts on the “interface” between aspects of IP and anti-trust or competition and an economics “reader”:
(1) Nuno Pires de Carvalho, TRIPS Regime of Antitrust and Undisclosed Information; and
(2) Irina Haracoglou, Competition Law And Patents: a Follow-on Innovation Perspective in the Biopharmaceutical Industry; and
(3) Robert P. Merges (ed), Economics Of Intellectual Property Law.
IPKat’s review here,
and the IP Dragon entices us with news of a new (1 August) anti-monopoly law in China. which, apparently, reserves well-known trade marks and traditional Chinese brands on grounds of national security.
WIPO has established an online simulator for Madrid system trade mark applications.
As it’s name suggests, it steps you through the various stages of making an application to obtain protection abroad. It includes a fee calculator (presumably of the official fees).
Try it out here.
Lid dip, Marty.