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ABSTRACT
How did the nineteenth-century trade marks registration system with its preference for distinctive trade marks accommodate Britain’s newspapers and reading publics, who seemed able to distinguish between newspapers despite their common descriptive names? In this article, it is argued that the situation presents another example of intellectual property law’s ‘negative spaces’, of creativity and innovation thriving in the absence of significant formal protection from intellectual property law. Moreover, it shows, yet again, the place of informal control in what is in other respects a formalised media industry sector. The historical analysis helps to explain the recent decision of an Irish judge that The Times and The Irish Times should continue to ‘co-exist peacefully’ in Ireland, with The Times permitted to launch a digital Times (Irish Edition) over the objection of the similarly named Irish Times, its nineteenth-century counterpart.
KEYWORDS:
Acknowledgements
We are grateful to Sara Bannerman, Lionel Bently, Jennifer Davis, Chris Dent, Peter Jazzi, Betsy Rosenblatt, Will Slauter along with other participants at the International Society for the History and Theory of Intellectual Property workshop in Toronto, 12–14 July 2017 and a Centre for Intellectual Property and Information Law seminar at Cambridge University, 27 November 2017 for helpful comments on earlier drafts of this paper. Research for this article was funded by an Australian Research Council Linkage Grant ‘Testing Trade Mark Law’s Image of the Consumer’ (LP120100249).
Disclosure statement
No potential conflict of interest was reported by the authors.
Notes on contributors
Megan Richardson, Professor of Law and Co-Director, Centre for Media and Communications Law, Melbourne Law School, the University of Melbourne.
Julian Thomas, Professor of Media and Communications, RMIT University, Melbourne.
Notes
1 See Elizabeth Rosenblatt, ‘Intellectual Property’s Negative Spaces: Beyond the Utilitarian’ (2013) 40 Florida State University Law Review 441, 442.
2 See Ramon Lobato and Julian Thomas, The Informal Media Economy (Polity 2015) for a general discussion of the persistent interconnections between formal and informal economic activity in the media industries.
3 The Irish Times Limited v Times Newspapers Limited [2015] IEHC 490.
4 See Brad Sherman and Lionel Bently, The Making of Modern Intellectual Property Law (Cambridge University Press 1999), ch 8; Lionel Bently, ‘The Making of the Modern Trade Mark: The Construction of the Legal Concept of Trade Mark’, in Lionel Bently, Jennifer Davis and Jane Ginsberg (eds) The Making of Modern Trade Mark Law (Cambridge University Press 2008) 1.
5 As to which, see Lionel Bently, ‘The Extraordinary Multiplicity of Intellectual Property Laws in the British Colonies in the Nineteenth Century’ (2011) 12 Theoretical Inquiries in Law 161, 184–87; Amanda Scardamaglia, Colonial Australian Trade Mark Law: Narratives in Lawmaking, People, Power & Place (Australian Scholarly 2015).
6 Bently, ‘The Making of the Modern Trade Mark’ (n 4) 29.
7 Duncan Kerly, The Law of Trade-Marks, Trade-Name, and Merchandise Marks (Stevens and Sons 1894) 25.
8 Patents, Designs and Trade Marks Act 1883, 46 & 47 Vict c 57, s 64(1)(c).
9 Patents, Designs, and Trade Marks Act 1883, s 64(1) (d) & (e), as substituted by the Patents, Designs and Trade Marks Act 1888, 51 & 52 Vict c 50, s 10.
10 Trade Marks Act 1905, 7 Edw 7, c 15, s 9(5) (registration was at the Board of Trade’s discretion).
11 Trade Marks Registration Act 1875, 38 & 39 Vict c 91, s 10.
12 See In Re Joseph Crosfield & Sons, Ltd; In Re California Fig Syrup Co; In Re H N Brock & Co, Ltd [1910] 1 Ch 130, Cozens-Hardy MR at 142 (‘There are some words which are incapable of being so “adapted [to distinguish],” such as “good,” “best,” “superfine.”’); Fletcher Moulton LJ at 148 (‘I do not think, for instance, that any amount of evidence of user would induce a Court to permit the registration of ordinary laudatory epithets such as “best”, “perfect”, etc’); Farwell LJ at 151–52 (‘it is the duty of the tribunal to see that no word not “adapted to distinguish” shall be put on the register in the interests of other traders, wholesale and retail, and of the public’). See also Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624, Lord Parker at 634 (the question is ‘whether the mark itself, if used as a trade mark, is likely to become actually distinctive of the goods of the person so using it’).
13 See Reddaway v Banham [1896] AC 199, Lord Herschell at 210–11
(The name of a person, or words forming part of the common stock of language, may become so far associated with the goods of a particular maker that it is capable of proof that the use of them by themselves without explanation or qualification by another manufacturer would deceive its purchaser into the belief that he was getting the goods of A, when he was really getting the goods of B … [and] I am unable to see why a man should be allowed in this way more than any other to deceive purchasers into the belief that they are getting what they are not, and thus to filch the business of a rival).
14 See Trade Marks Act 1994, c 26, s 3(1) proviso.
15 [1898] AC 571, Lord Herschell at 580. Cf Lord Macnaghten at 583 (‘The object of putting a restriction on words capable of being registered as trade-marks was of course to prevent persons appropriating to themselves that which ought to be open to all’); and Lord Halsbury at 574 (‘Such words of description are the property of all mankind’, quoting the Herschell Committee Report of March 16, 1888).
16 In Re Van Duzer’s Trade-Mark; In Re Leaf, Sons, & Co’s Trade-Mark (1887) 34 Ch D 623, 642.
17 Jennifer Davis, ‘Locating the Average Consumer: His Judicial Origins, Intellectual Influences and Current Role in European Trade Mark Law’ [2005] Intellectual Property Quarterly 183.
18 Per Fry LJ in In Re Dunn’s Trade Marks (1889) 41 ChD 439 at 455; Eastman (n 15) Lord Macnaghten at 583.
19 Davis (n 17) notes that judges tended to assimilate the ordinary Englishman to a middle-class Englishman (adding that this was a feature of the time: and after the Second World War he became more closely assimilated to some judicial idea of the average person). On the other hand, this useful figment might also be relied on to serve other more particular policy objectives in some instances: see further Chris Dent, ‘The “Reasonable Man”, his Nineteenth-Century “Siblings”, and their Legacy’ (2017) 44 Journal of Law and Society 406, 412.
20 Davis & Co v Stribolt & Co (1889) 6 RPC 207 at 212.
21 Dr James Murray (ed) A New English Dictionary on Historical Principles; Founded Mainly on the Materials Collected by the Philological Society (Clarendon Press 1884–1928).
22 Paine’s Trade Mark (1892) 9 RPC 130, Kekewich J at 133.
23 See In Re Van Duzer’s Trade-Mark (n 16) at 643.
24 ibid, Lindley LJ at 643. Contrast the argument of the Comptroller-General that: ‘[t]he word “electric” is not only a dictionary word in common use, but it is a favourite word indicating quality, applied, amongst other things, to brushes, straps, and bells, and to at least one colour, “electric blue”’: ibid, 633.
25 Murray (n 21) Vol III, ‘E’, 1897, 76–77.
26 Perry Davis & Son v Lancashire Harbord (1890) 15 HL (E) 316, Lord Halsbury LC at 320; In Re Dunn’s Trade Marks per Fry LJ (n 18) at 455. (In fact, as the plaintiff in the latter case could not show distinctiveness prior to the 1875 Act he abandoned his claim for infringement, although he successfully relied on his common law reputation to preclude the defendant’s registration for baking powder as ‘calculated to deceive’ under the 1883 Act: Eno v Dunn (1890) 15 AC 252, 253).
27 Although mostly this was on the basis of the interests of other traders rather than the public at large – with the exception or Farwell LJ, who referred to both: see In Re Joseph Crosfield & Sons, Ltd, above n 12.
28 (1902) 2 Ch 282.
29 ibid, 294–95. Recall that by now the law accepted that secondary meaning was sufficient for passing off: see Reddaway v Banham (n 13). Indeed, in Walter v Ashton, there was evidence of ‘several’ individuals contacting The Times office to enquire about its connection with the bicycles, supporting the conclusion of ‘a probability of deception of the public’: (n 28) 290.
30 ibid, at 283.
31 See further The History of The Times: The Twentieth Century Test (Office of The Times 1947), vol 3, 442–59, describing Arthur Walter’s collaboration with an American bookselling syndicate to establish the scheme of selling cheap reprints of the Encyclopedia by instalment, a profitable enterprise until The Times withdrew under pressure from its more conservative advertisers, readers and (most significantly) proprietors.
32 ‘Newspapers and their Nomenclature’, Tit-Bits (11 May 1889) 74.
33 And see Alan Lee, ‘The Structure, Ownership and Control of the Press, 1855–1914’, in George Boyce, James Curran and Pauline Wingate (eds) Newspaper History from the 17th Century to the Present Day (Constable 1978) ch 5, 121–22, pointing out that already by the end of the nineteenth century newspapers including The Times and The Daily Telegraph had developed a national reputation as among the leading liberal newspapers.
34 It might be different if the conduct went further: see Walter v Head (1881) Sol Jnl 742 and 757 brought by the owners of The Times against a defendant who was issuing reprints of The Times with its own advertisements.
35 Walter v Ashton (n 28) 286.
36 See Walter v Howe (1881) 17 ChD 708, although the claim was rejected on the basis that The Times was not registered for copyright in Stationers’ Hall. After that case the newspaper was duly registered for copyright and claim succeeded against the St James’s Gazette in Walter v Steinkopff [1892] 3 Ch. 489 (despite the defendant’s argument of a newspaper copying practice) and against the publisher John Lane in Walter v Lane [1900] AC 539 (complaining about a book publication of articles featuring speeches of Lord Roseberry in The Times).
37 In earlier cases the possibility of relying on copyright had been rejected for newspaper and magazine names: see Maxwell v Hogg (1867) 2 Ch App 307, Sir H M Cairns LJ at 318 (regarding ‘Belgravia’ as the name of the plaintiff’s magazine, registered for copyright, although suggesting that it might be different if ‘some words in the shape of … part of a volume’ had been copied); Licensed Victuallers Newspaper Company v Bingham (1888) 38 ChD 179 (alleged copying of ‘The Licensed Victuallers’ Mirror’ not an infringement of copyright).
38 UK Trade Mark 176706, registered 28 November 1893.
39 UK Trade Mark 170816, 11 February 1893; UK Trade Mark 178098, 8 February 1894.
40 As The Bombay Times and Journal of Commerce in 1838 (becoming The Times of India in 1861): John Merrill and Harold Fisher, The World’s Great Dailies: Profiles of Fifty Newspapers (Hastings House 1980) 330–33.
41 See Elmer Davis, History of the New York Times (New York Times 1921) ch 1 at 18, describing the choice of the name (initially The New York Daily Times, but by 1858 using its present name) for the newspaper that was determined to ‘maintain firmly and zealously those principles … [deemed] essential to the public good’.
42 Established as The Irish Times and Intelligencer (The Irish Times from 1874) the newspaper from its inception was a ‘liberal-conservative’ imperialist unionist voice in the panoply of Irish newspapers, an essentially middle-class newspaper: see Terence Brown, The Irish Times: 150 Years of Influence (Bloomsbury 2015) ch 1, 5–18.
43 Occasionally more unusual names were chosen for particular newspapers rather than following the general copying trend, as for instance with the New Orleans Daily Picayune (‘picayune’ a Spanish word for very small coin) or Melbourne Argus (adopting the name of a giant with many eyes from Greek mythology), but these were rare.
44 The classic example given by Emmanuelle Fauchart and Eric von Hippel, ‘Norm-Based Intellectual Property Systems: The Case of French Chefs’ (2008) 19 Organization Science 187.
45 See Dotan Oliar and Christopher Sprigman, ‘There’s No Free Laugh (Anymore): The Emergence of Intellectual Property Norms and the Transformation of Stand-up Comedy’ (2008) 94 Virginia Law Review 1787.
46 See (also suggesting that medieval guilds fall within this category – although at a time when intellectual property law was itself rather undeveloped) Robert Merges, ‘From Medieval Guilds to Open Source Software: Informal Norms, Appropriability Institutions, and Innovation’ (Conference on Legal History of Intellectual Property, University of Wisconsin Law School Institute of Legal Studies, 2004).
47 See Rosenblatt, ‘Intellectual Property’s Negative Spaces’ (n 1) drawing on an extensive literature to frame a taxonomy of intellectual property’s negative spaces and offer theories for their existence despite the modern expansion of intellectual property rights. See also, in a more utilitarian vein, Elizabeth Rosenblatt, ‘A Theory of IP’s Negative Space’ (2011) 34 Columbia Journal of Law & the Arts 317.
48 Rosenblatt, ‘A Theory of IP’s Negative Space’, 349, 354–355 (giving examples of French chefs who find benefits in sharing their recipes with ‘colleagues in the art’, stand-up comics who treat their skits as open access or ‘use low-IP licenses, such as Creative Commons’, and software writers many of whom find that ‘the most efficient approach is to share their works, in the hope that doing so will foster collaboration and create a better product that profits through first mover advantages and network effects rather than exclusivity’).
49 And see Fauchart and von Hippel (n 44) for shared social norms as a significant factor.
50 See Walter v Steinkopff (n 36).
51 As, for instance, the examples of French chefs who might keep their recipes secret but share them, stand-up comics who fail to record their skits although this would facilitate copyright protection, and software writers who prefer to share their code freely with others, contracting out of copyright protection: see above nn 44–46.
52 (1911) 28 RPC 308.
53 The caricature by ‘Spy’ was published in Vanity Fair (27 November 1907) 264.
54 Outram (n 52) 310. As it turned out, the Scottish newspaper outlived the defendants’ which died the following year according to British Library records: ‘The Evening Times’, <http://primocat.bl.uk/F?func=direct&local_base=ITEMV&doc_number=013902278&con_lng=eng&_ga=2.177629605.1884986527.1513219992-1919862472.1503367733> accessed 31 January 2018.
55 ibid, 209.
56 (1912) 29 RPC 130. Everybody’s Magazine was an American literary magazine which published the likes of O Henry, Jack London and George Bernard Shaw’s Pygmalion before it retired in 1929. By contrast, the defendants’ Everybody’s Weekly was a London penny weekly newspaper.
57 ibid.
58 ibid, Warrington J at 132.
59 ibid, 132. And contrast this statement of judicial policy with Fry LJ’s language of courts setting their face against appropriations of the language in the earlier Dunn’s case (n 18).
60 See, for instance, In Re Joseph Crosfield & Sons, Ltd (n 12) Cozens-Hardy MR at 142
([i]t may be that within a particular area the applicant might succeed in a passing-off action against a trader who used the epithet without sufficiently distinguishing his goods from the goods of the applicant. But that would not justify the Court in giving the applicant a monopoly throughout the United Kingdom);
61 See for the growing concerns about ‘industrial conception of the press’, Lee (n 33) 128.
62 See Reddaway v Banham (n 13).
63 See Trade Marks Act 1905, ss 21 and 39. And note that Warrington J had already considered these new provisions in the 1905 Act in the recent case of In Re Compagnie Industrielle des Pétroles’ Application [1907] 2 Ch 435; and see generally D M Kerly and F G Underhay, The Law of Trade Marks and Trade Name (3rd ed, Sweet & Maxwell 1908) 265.
64 (1888) 37 Ch D 449.
65 The newspaper had a raft of famous contributors, including the leading Romantic poets – and as Samuel Taylor Coleridge’s nephew, Lord Coleridge LCJ said in the case, ‘Everybody is aware of the existence of the Morning Post – an old-established paper of high character – which has existed for a great many years’: ibid, 457. Note that this case was decided eight years before Reddaway v Banham (n 13).
66 Ibid, 461. This may have reflected something of the actual character of contemporary reading publics, and it is not unreasonable to think so given the prerequisite of literacy for newspaper readers, but it was arguably also slightly idealised (as in other newspaper cases, there was little evidence of the perceptions of actual readers).
67 (1885) LJ Ch 1059.
68 ibid, 1062 – although avoiding any suggestion of a common law right per se in the name (as might have been suggested by the very brief report of Jessel MR in Walter v Head, n 34), Cotton LJ stated the relevant principle as being that ‘when a similar newspaper is published with the exact name of a rival newspaper, that is calculated to represent, and does represent, unless there is some marked distinction between the two’: at 1061–62. (Cotton LJ was one of the appeal judges who upheld Walter v Head on appeal: (1881) Sol Jnl 757.)
69 ibid, 1063.
70 ibid, 1065 (‘[in addition to the name], similar type, similar appearance in the papers, every kind of circumstance which tends to confuse, is evidence from which the inference may be drawn that the acts will confuse’).
71 Christopher Wadlow, The Law of Passing Off (Sweet & Maxwell 1990), 343.
72 For instance, Christopher Wadlow, The Law of Passing Off: Unfair Competition by Misrepresentation (5th ed, Sweet & Maxwell 2016) 613–14.
73 James Mellor et al, Kerly’s Law of Trade Mark and Trade Names (16th ed, Sweet & Maxwell 2018) 822. Cf T A Blanco White and Robin Jacobs, Kerly on Trade Marks and Trade Names (12th ed, Sweet & Maxwell 1986) 398.
74 In fact, even quite descriptive newspaper trade marks were not necessarily impossible to register even before the 1994 Act provided for distinctiveness through use: see n 14: see for instance ‘The Ladies’ Home Journal’ and ‘The Saturday Evening Post’: UK Trade Marks 408843 and 408844, registered 18 October 1920; ‘The Guardian UK Trade Mark 809055, registered 5 August 1960 (all without mastheads).
75 See cases noted in the latest edition of Wadlow’s The Law of Passing Off (n 72) 612–15.
76 In ibid, Wadlow notes Associated Newspapers v Express Newspapers [2003] FSR 51 as possibly marking ‘a change in direction’: at 613–14; cf Mellor et al, (n 73) at 822 – but in that case, where an injunction was granted against the defendant’s use of ‘The Evening Mail’ as the name of a free daily newspaper citing the plaintiff’s long-user and registration of ‘Mail’ and ‘Daily Mail’, the circumstances were quite unusual. Laddie J said that ‘[t]his is not a case where the customer will take a lot of time and care over his purchases … the defendant’s product will be given away free’ (at 927). Further, the fact that the parties were locked in a pattern of cut-throat competition was an additional (related) reason not to yield control of one’s ‘personality’ to the other (at 929–30). Finally, the validity of the plaintiff’s registered trade marks was upheld over the defendant’s argument of descriptiveness and common use. Thus the general newspaper naming practice was not under challenge in that case.
77 The Irish Times Limited v Times Newspapers Limited [2015] IEHC 490.
78 ibid, at [6.2] and [6.6] (‘taking into account the long history of peaceful coexistence in Ireland using very similar names … the defendants have at least an arguable case of estoppel against the plaintiff’s case on the basis of their long acceptance of the operation in Ireland of The Times’).
79 Specifically, the defendant argued that ‘[p]ossible customers of The Irish Times are literate and educated readers who know what it is. If they do not, the words “Irish Edition” will denote it as an Irish edition of the defendant’s newspaper’ (ibid, at [5.13]), contra the plaintiff’s argument with some evidence that some readers would be confused (ibid, at [4.14])
80 ibid, at [5.10].
81 ibid, [6.2].
82 ibid, (noting the evidence before the court of ‘a certain measure of confusion’): and see n 79.
83 ibid.
84 The Ireland Edition of The Times (as the edition was subsequently titled) was launched in September of the same year: see <www.news.co.uk/2017/05/the-ireland-edition-of-the-times-available-in-print/> accessed 31 January 2018.
85 See, for instance, Elliott v Google, Inc, 860 F 3d 1151(9th Cir, 2017), upholding the validity of Google’s trade mark in the face of plaintiffs’ claim of genericism; Think Computer Corporation v Facebook, Inc, Case No 92050675-CAN, USPTO Trademark Trial and Appeal Board, 23 July 2013, upholding Facebook’s opposition to Think Computer’s registration of ‘FaceMail’ for email services on the basis of likely confusion regarding its trade marks (leaving open its conclusion on the alternative ground of dilution); Victor Luckerson, ‘Twitpic Is Shutting Down, and It’s Blaming Twitter’ Time (4 September 2014) (popular photo-sharing service Twitpic abandons its trade mark registration applications and closes down after trade mark dispute with Twitter). See also, conversely, TWiT, LLV v Twitter, Inc Case 3:18-cv-00341, USDC (ND Cal), filed 16 January 2018 (TWiT, aka This Week in Tech, suing Twitter, the well-known tech netcaster here claiming that Twitter inter alia would infringe its trade mark with its proposed expansion into streaming video content under a confusingly similar trade mark).