In an article written some years ago, I expressed the concern that those who were in favor of the United Kingdom (UK) and other Commonwealth countries moving to a fair use model of copyright exceptions were not paying sufficient attention to how judges would react to the introduction of such a defense. The universal assumption seemed to be that the problem lay solely with the quality of the legislative tools available to judges. In contrast, I sought to demonstrate that if judges were unable to protect users, this was in large part because they had divested themselves of tools that could have been used to provide such protection. I argued that, viewed over a long sweep of history, judges in the UK had demonstrated a reluctance to protect user interests. My argument was that without a change in judicial attitudes a fair use defense would be applied parsimoniously and hence users would see little, if any, benefit. This argument gained some traction, and the observation that we need to think about exceptions reform not merely in terms of drafting choices, but also in terms of judicial culture, now appears to be broadly accepted.

Historically, common law countries took a restrictive approach to transactions involving trademarks. This restrictive approach was said to flow from the reasons for granting protection for trademarks in the first place. If a trademark communicates information to consumers as to the origin and quality of a particular trader’s goods or services, it was thought that any dealing with a trademark, such as an assignment or the grant of a licence to a third party, would disrupt the source and quality guarantee functions of the mark and potentially cause confusion among consumers. In other words, the very reasons that a trademark receives legal protection were thought to justify constraining an owner’s ability to deal with the mark (in contrast with other personal property, such as an unencumbered chattel or a patent). Initially, these sorts of concerns were highly influential, and the law either proscribed or imposed strict limitations on the exploitation of trademarks. However, over the course of the last century there was a gradual liberalisation of these rules. Consequently, in most common law countries, we have now reached a position where the law recognises registered trademarks to be personal property, which can be exploited with fewer restrictions than in the past. This liberalisation has to a large extent reflected changes in business practices, as brands have come to be recognised as valuable commodities in their own right and as trademark licensing, merchandising and franchising have become large and lucrative industries. Notwithstanding this, the tension between the idea of the mark as “property” and the mark as a badge of origin remains. This tension is reflected in the fact that the law retains restrictions on trademark transactions in cases where marks have been or might be used in such a way as to deceive consumers. Working out when a badge of origin can be transferred to an unrelated third party whilst not falling into the category of a “deceptive transaction” remains difficult.

It is generally assumed that a single theoretical account is sufficient to explain why we protect both registered and unregistered trade marks. Specifically, the need to protect against consumer confusion is said to explain the protection that is afforded to trade marks through both the registration system and through passing off/unfair competition law. Drawing on recent scholarship that sets out to re-examine the role of trade mark registration, this chapter argues that we need to think more seriously about embracing a bifurcated model of trade mark protection, with the two modes of protection underpinned by different justifications and perform different functions. This would allow us to have a clearer idea of how the two systems should interact and when we should prioritise the operation of one over the other.

§ 107. Limitations on exclusive rights: Fair use

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include –

1. (1)the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

2. (2)the nature of the copyrighted work;

3. (3)the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

4. (4)the effect of the use upon the potential market for or value of the copyrighted work.

5. The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

In the last chapter it was seen that the statutory provisions relating to activities such as criticism, review and news reporting are inadequate to safeguard freedom of expression or freedom of information. It is therefore important to consider whether these provisions might be supplemented by a ‘common law’ public interest defence, that is, a defence sitting outwith the statutory regime that would justify the publication of copyright material in certain circumstances. This question is complicated by the fact that two recent Court of Appeal cases reached different conclusions as to whether a public interest defence to actions for infringement of copyright exists at all in the United Kingdom, and even the case that accepted that such a defence does exist indicated that its scope is more limited than earlier authorities had seemed to suggest.

This chapter begins by considering the scope of this defence as it had apparently been established prior to the recent decisions of the Court of Appeal. Our aim in this section is to demonstrate that whilst these earlier authorities indicated (quite rightly) that the public interest defence is relatively limited in scope, in its early form the public interest defence added a degree of flexibility to the statutory scheme. In particular, in its early form the public interest defence provided an important additional safeguard in cases where the user was seeking to place evidence contained in an unpublished work into the public domain.

Having rejected the most commonly prescribed solution to the problems created by the United Kingdom's current approach to protecting users, in this final chapter we outline our vision for reform. As we have indicated at a number of points, we believe that, despite its unpromising history, the Information Society Directive provides a good starting point from which to build a fairer system of exceptions. Although there are aspects of the Information Society Directive that are less than ideal, using the Directive as our starting point has the key advantage that the political obstacles to reform are much less formidable – any other model would almost certainly require amendment or repeal of the Directive in order to be implemented. Our vision of reform has been arranged around four principles. These are: (1) reform must lead to a more flexible system; (2) any new approach must create a workable system; (3) a new system should be restyled as a system of users' rights; (4) in the future there needs to be far more public participation. We begin by explaining and justifying the adoption of these principles before turning to consider what a system of rights for users based around the Information Society Directive might look like.

A flexible system

One principle that we believe should drive reform is that the resulting system must be more flexible than the existing one, which is characterised by an exhaustive list of closely defined exceptions.

The aim thus far has been to demonstrate that the United Kingdom's existing approach to the permitted acts brings copyright into conflict with a number of important rights and interests and causes a range of real difficulties for both individual and institutional users. We hope that this analysis will speak for itself to some extent. In particular, we hope that our exploration of the practical difficulties that users face in various circumstances will give owner representatives pause for thought and will help counteract their natural reflex to oppose measures that would liberalise the exceptions. In the next three chapters we build on this analysis by exploring some of the reasons why the United Kingdom has adopted an overly restrictive approach to the exceptions. We argue that a variety of factors – political, constitutional, institutional and accidental – together with judicial attitudes have to be accounted for. An exploration of these factors reveals that the current approach to the exceptions does not result from the adoption of a coherent or well thought through approach to copyright as a whole. In so far as copyright can be said to have been consciously shaped, our analysis suggests that for the most part it has been crafted to reflect the interests of powerful and well-organised groups that are able to operate effectively at both the national and international level.

A principal theme of the first section of this book is that one of the major difficulties with the United Kingdom's present approach towards the exceptions is that it lacks flexibility. It was seen that in large part this is because the United Kingdom has a list of very specific exceptions, encompassing carefully defined activities. With the benefit of hindsight, it is possible to point to the Copyright Act 1911 as providing the template for this approach. This is particularly significant because the 1911 Act was an imperial measure. Although most former colonies and dominions have now had their own copyright legislation for a considerable number of years, for the most part this legislation has tended to follow the imperial model developed in 1911. Thus Australia, Canada, India, New Zealand, Singapore and South Africa delineate the limits of copyright protection by way of an exhaustive list of specifically defined exceptions. This ‘Commonwealth’ approach is often contrasted with that adopted in the United States. Although US law does contain a number of specific exceptions, it also has a general ‘fair use’ defence, contained in section 107 of the Copyright Act 1976. Although this section provides a list of examples of the types of use that may constitute fair use (including, for example, criticism, comment and research), this list is merely illustrative.