Dr No: a hypothetical

How far might legal protection for short verbal texts have the effect of monopolizing multiple or potential meanings, not all of which may be either a product of the claimant’s creativity (in the case of copyright) or a result of the claimant’s financial investment (in the case of trademarks)? We explore such questions here by means of a hypothetical based on Danjaq LLC v OHIM, T‐435/05 30 June 2009.

In Danjaq, it was held that the signs DR No and DR NO did not indicate the commercial origin of the film/DVDs in question, but rather their artistic origin. The commercial origin of the film was indicated by other signs, such as '007' or 'James Bond'. The court also suggested that in principle some signs might have both trade mark and copyright protection to acknowledge both their originality and their role as a badge of origin:

‘Contrary to the applicant's claim, the distinction between title and trademark is not ‘unrealistic and artificial’. The same sign may be protected as an original creative work by copyright and as an indicator of commercial origin by trademark law. It is therefore a matter of different exclusive rights based on distinct qualities, that is to say the original nature of a creation, on the one hand, and the ability of a sign to distinguish the commercial origin of the goods and services, on the other.’ (para 26)

Part A: trademarks, building blocks of language and the public interest

Suppose, counterfactually…

1) ‘Dr No’ is validly registered as a trademark for a range of James Bond related merchandise

2) The phrase ‘Dr No’ (first word abbreviated, both capitalized) has established reputation in the marketplace, in the L’Oreal trade mark sense

3) The expression ‘Dr No’ has also been adopted, in wider use, as a way of describing a particular, contrary politician (as well as, figuratively, other people with similar characteristics)

Now consider the scenarios listed below. For each, decide whether a judgment of infringement would be likely or not (taking into account recent developments in trademark law as well as the wider circulation of ‘Dr No’ described in [3]).

The allegedly infringing text Situation of use Infringes Doesn’t infringe 1 ‘We’ll never get on our feet Everyday conversation (e.g. financially with Dr No holding about a workplace or the purse strings’ general economic situation)

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2 ‘Dr No‐mark, as Dr No blocks Newspaper headline, defence investigation’ referring to rearguard action by defensive politician 3 ‘Let Dr No back into your life, as Advert for spy film thriller, a reformed character in glorious with vague similarity to the HD and surround‐sound’ Bond movie character 4 ‘In this classic what Dr No Review of director’s cut doesn’t No isn’t worth No‐ing’ Bond re‐release 5 ‘Defeat Dr No’s professional Advert for commercial caution – instant results from healthcare service offering our online self‐diagnosis online medical self‐ software’ diagnosis 6 ‘Don’t vote yes, vote Dr No this Poster promoting candidate Thursday: the man to save our in local election city’ 7 ‘He was Dr No in office, now Advert promoting former he’ll hedge again ‐ but this time stalwart politician’s new to make savings safe’ financial management service

Part B: copyright and limited exceptions: substantial part

Now suppose, also counterfactually, that ‘Dr No’ is held to constitute a substantial part of a longer text in which it is embedded ‐ as ‘Jabberwock[y]’ was considered possibly to warrant, in Exxon ­ perhaps because this verbal formulation displays intellectual creation by conveying a meaning, entertaining, etc.

What exceptions or defences would be available in an action for infringement in each of the same scenarios (1‐7 above)?

Part C: copyright and limited exceptions

Now suppose, still counterfactually, that ‘Dr No’ is held to warrant copyright protection as part of a class of titles, as Mrs J Proudman outlined in Newspaper Licensing Authority v Meltwater [2011].

What defence against infringement would be available in an action taken against the listing of Dr No in a filmography (in a book about cinema)?

Parts A ‐C are all counterfactual: in Danjaq, Dr No was held not to be registrable as a CTM in the absence of evidence of use and reputation; and the Court’s characterization of an alternative possibility, that of copyright protection, seems remote in relation to UK courts. How far do public interest considerations lie behind recent judgments that make our Danjaq hypothetical exactly that – hypothetical?

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