Sunday 24 July 2011

Logos and textbooks

Who needs a trade mark when copyright will do? Two recent judgments may be of interest to those for whom the copyright of simple, perhaps unregistered, trade marks could be advantageous.

In March, Vivienne Westwood successfully sued an online clothing seller for passing off, trade-mark infringement and copyright infringement (Vivienne Westwood v Anthony Knight [2011] EWPCC 008). Westwood claimed copyright in five logos. The logos may be distinctive but nevertheless teeter on the edge of copyright protection.

Birss J held that the fancy script plus orb logo was protected by copyright even though its components were not. The orb was not protected (its term having expired under s. 52 CDPA) nor was ‘Vivienne Westwood’ in fancy script. So it must be the juxtaposition of the orb with the type that constitutes the intellectual creation necessary to attract copyright.

Birss J held that an ‘AR’ logo attracted copyright. It was not that Westwood had designed a typeface and that was being infringed. The copyright was in the ‘logo’ or ‘design’. The stylization here is particularly minimal and commonplace – simply squashing two letters together.

Not much more complex is the EDGE logo, the subject of Future Publishing v Edge Interactive Media, [2011] EWHC 1489 (Ch), in which Mrs Justice Proudman held:

‘Dr Langdell submitted that the claimant can have no copyright in its EDGE logo because it is not original over the Franklin Gothic typeface. I do not accept this submission. The stretching of the font was combined with the distinctive slash and projection on the middle bar of the “E”. What is required for artistic originality is the expenditure of more than negligible or trivial effort or relevant skill in the creation of the work: see Copinger and Skone James on Copyright 16th Ed at 3-130 and Ladbroke v. William Hill [1964] 1 WLR 273 at 287. The claimant’s logo is original within this test.’
Last year Proudman J, in NLA v Meltwater, chewed over the impact of the ECJ’s Infopaq judgment on the test for originality, but has now reverted to textbook. Infopaq says that copyright ‘is liable to apply only in relation to a subject-matter which is original in the sense that it is its author’s own intellectual creation’. The 2011 edition of Copinger argues that EU copyright law is unlikely to alter the UK’s approach to originality. But are effort and intellectual creation one and the same thing?

Copinger is unquestionably a very useful book, often cited by judges. But how heavily should textbooks be relied on? In a sense, the doctrine of precedent started out as the doctrine of textbook. It has been argued that it was only when digests of the common law, such as Fitzherbert’s, were published that the doctrine of precedent took shape. In Tudor times, a digest may have been the only source of information about case law. Today we turn to textbooks because there is too much information. That makes them useful starting points, then.


AndyJ said...

Regretably my reaction on getting to the end of this piece was 'And your point is?'
It's long been known that there is considerable overlap between copyright and trade marks (just as there is between copyright and the surface decoration aspects of Registered Design Right) especially where marks are graphical in their form, and it has always been open to the litigant to decide which is the better route to success, based on the facts in the case.
Each route has its merits: substantiality is a relatively high hurdle but once cleared, liability is strict, whereas similarity and likelihood of confusion are lower hurdles but are limited by the class(es) in which the mark is registered, and defences such as honest use, earlier right etc come into play. And of course the tort of passing off can readily support a claim of trade mark infringement but will rarely assist in copyright infringement. The wily litigant will naturally resort to alternative claims in order to multiply the chances of success, as in Westwood.

Anonymous said...

@ AndyJ - I was making a number of points. The main point is that the judgments are worthy of note as additions to the case law on copyright protection of simple trade marks both because of the limitedness and type of creative input in the logos and because of the test of originality that is applied.

AndyJ said...

Thanks for the clarification, Hugo.