For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Friday, 22 August 2014

How Korea is conquering world pop culture--what can we learn?

To what extent can commercially successful creative contents be managed? Whenever this question is raised, one cannot help but recall the iconic observation by the renowned novelist, playwright and screen writer William Goldman, here (think of the book and movie Marathon Man, but not before your next visit to the dentist, here), who famously observed that
“[n]obody knows anything ... Not one person in the entire motion picture field knows for a certainty what's going to work. Every time out it's a guess and, if you're lucky, an educated one.” 
 Whether this is just so for creative contents other than movies is subject to debate. One need only consider the packaged creation and marketing of the Spice Girls in the 1990’s, here. Perhaps more challenging is the question of the extent to which national policy can actually lead to commercial success of creative contents across national boundaries. This issue is addressed in a recently published book, The Birth of Korean Cool: How One Nation is Conquering the World through Pop Culture by Euny Hong, here. A review of this book in the 9 August issue of The Economist, here, suggests that a national cultural policy can pay big dividends. South Korea’s dazzling success in creating and exporting creative content is summarized by the reviewer at the outset:
From ‘Gangnam Style’ and competitive electronic sports to kimchi-flavored pot noodles, South Korea’s cultural exports are eagerly consumed around the world. Filipinos are hooked on its dramas. The French love its pop music and its films. Last year South Korea raked in $5 billion from its pop-culture exports. It has set its sights on doubling that by 2017….[Noting later] “‘Winter Sonata’, another drama, was a hit in Iraq and Uzbekistan.”
All of this comes from a country which, in the 1980s, censored its musicians and banned busking as an unacceptable expression of protest. The obvious question is how can we account for this? The argument made is that, to a substantial extent, the explanation can be found in direct government support for nurturing creative contents that can then be successfully exported abroad. More particularly, in reaction to the Asian financial crisis of 1997, the Korean government decided to champion the development of content industries, such as film, pop music and computer games (apparently in part due to government’s dissatisfaction with the performance of the large industrial conglomerates in the run-up to the crisis). Such government support included tax incentives and direct funding for enterprises engaged in video games as well as creating a one billion dollar investment fund for supporting the local pop music industry. In the main, Korean creative content exports can be characterized as conservative in nature (as compared, for example with similar types of Japanese contents), but it seems that this has proved to be a competitive advantage in marketing these contents in various foreign countries. Indeed, it appears that the Japanese government has created a $500 million fund to encourage the development of “Cool Japan” to better compete with Korean exports in the creative content industries.

The extent to which this conservative approach flows from conscious decisions made at the governmental level, or from Korean cultural mores more deeply, is an interesting question, but the end result seems to be the creation of content that is commercially palatable to a diverse set of foreign markets. For Western cultural sensibilities resting on the worship of the Avant-garde, which itself rests on challenging authority and the status quo, the linkage between national policy and commercially successful creative content is a challenging one.

As the reviewer correctly points out, it can hardly be claimed that PSY, the rapper behind the “Gangnam Style”, here and its edgy criticism of current Korean society, is part of any explicit governmental policy. Still, writ large, the message that is given by the reviewer is that that government policy can be a substantial instrument in facilitating commercially successful creative contents. This Kat wonders whether the Korean approach to facilitating the production of creative contents can also have greater policy traction in the West. For sure, state governments in the U.S. compete with each other to offer tax and other incentives to film producers to make their next movie in their state. National governments around the globe are providing financial incentives for films and other types of creative contents. Pushing back, however, are arguments that ultimately there is little, or no, net financial benefit to the state or country involved. As well, for some countries, there is a visceral hesitation to having the government involved too deeply in promoting (managing?) the production of creative contents. And yet— if the ultimate concern is the extent to which creative contents can generate increased export revenues, it may be worthwhile considering whether the Korean model, tweaked to local circumstances, should be more closely examined.

Friday fantasies

Kat business 1: "Christopher Rennie-Smith talks to a Kat", our next IPKat event, takes place at the London office of Collyer Bristow on Thursday 4 September (doors open at 5 pm). Christopher is a recently-returned European Patent Office survivor and the Kat in question is patent attorney and Inquisitor-in-Chief Darren Smyth. Darren (right) promises to ask some pertinent and probing questions relating to what really goes on behind the scenes of an EPO Board of Appeal, and there will also be time for discussion. Admission is free, and all are welcome though space is limited so don't wait to book your place. Just click here for further information. As of today, 61 people have signed up to attend -- but there's still room to squeeze in a few more ...



Kat business 2: On Tuesday 16 September, IP Finance and IPKat blogger Neil engages Intellectual Asset Management editor Joff Wild in a dialogue about patent litigation and its impact on the value of individual patents and patent portfolios. This chaired dialogue is being kindly hosted in the London office of EIP, in London's IP-friendly Holborn district. Full details of this lovely little event, which will be followed by discussion and refreshments, can be found here. If you want to attend this dialogue, which is free, don't leave it too late. Space is limited and we already have 29 good souls attending.



Not just a pretty face ...
Monkey business: the 1709 Blog's sidebar poll on the status of the now-famous selfie taken by a charming lady black-crested macaque has now attracted well over 200 responses. If you are one of the kind souls who have voted, thanks!  If not, you've still got more than a week to make your mark. You can find Estelle Derclaye's guest katpost on the original news item here, garnished with nearly 20 comments, and the sidebar poll here.



Studying IP law at university?  In view of the surprisingly high level of interest shown by readers of the recent blogposts (here, here and here, with the prospect of at least one further post in the pipeline) on reading for (and indeed examining) doctorate degrees in intellectual property law, this Kat is contemplating a further post, around the time of the academic year, on how Masters degree students and even undergraduates can get the best out of their IP coursework -- so watch this space!



Nothing to do with patents.  Here at last is the link to the programme for "Intellectual Property: The 'No-Patents' Round-Up For Non-Techie People", an experimental event composed and chaired by IPKat blogmeister Jeremy specially for people who would like a well-informed and entertaining round-up of the past year's key developments in all areas of intellectual property except patents, a topic which is either irrelevant to their work duties or too technical for them.  The event, run by CLT Conferences, also features recent guest Kat Darren Meale. The date? 29 October, which is a Wednesday.  The venue? Somewhere in Central London, to be announced nearer the day.  See you there?



Around the weblogs.  Magali Delhaye has kindly tipped the 1709 Blog off that the draft third edition of the Compendium of Copyright Office Practices, now over 1,200 pages in length, is available for public inspection; it takes effect on or around 15 December unless there's a good reason why it shouldn't. IP Finance's recent posts on financial reporting for IP intangibles have the flavour rejoinder and surrejoinder about them right now, as Janice Denoncourt provides a succinct response to a response to a response.  The SPC Blog has had a brace of posts, here and here, about patent term extensions, marketing authorisations and special approval mechanisms in the wake of the discovery of that rarest of creatures, a request for an advisory opinion from the EFTA Court. Stefano Barazza makes a welcome return to blogging on PatLit with a piece on why the Australian government prefers patents to publications.  Oh, and the SOLO IP blog, courtesy of Sally Cooper, has been asking some literally searching questions about WHOIS ...


Nobody can accuse Gwilym Roberts of being unenthusiastic about patents. That's why this Kat was not at all surprised to read the following paragraph, which mysteriously appeared in his in-box with an apparent allusion to the forthcoming CIPA Congress on 2 and 3 October:
Some folk prefer breakfasts
that are not so interactive ...
"One session that’s shaping up very nicely at the CIPA Congress is the “Prosecution” slot.  Chaired by seasoned veteran Gwilym Roberts of Kilburn & Strode, an international panel representing both private practice and industry perspectives will be deliberating on challenges, changes and best practices.  Chris Palermo of Silicon Valley-based firm Hickman Palermo Truong Becker Bingham Wong [this name is pure poetry, says Merpelwill be talking about changes in the US following recent major cases such as Myriad and Alice, whileTony Rollins (Merck & Co) and Graham Stuart (Novartis) will be giving complementary perspectives on some of the challenges facing industry in managing a global portfolio.  With a little over an hour to cram everything in and a planned breakfast-TV-style interactive panel discussion to close off the session, they are going to be speaking very fast to pass on the sheer amount of information in their heads ..."
One's imagination bubbles over at the prospect of being there in person to witness such fun. 



The Baroness: no Kats were harmed
in making her fancy outfit ...
Baroness heads for the Dragon. The UK Intellectual Property Office has put together a UK/Chinese IP visit for the first week of September, which is ambitious both in its aims and its scope.  Headed by the new IP Minister Baroness Neville-Rolfe and with numerous IPO luminaries [a luminary is a sort of human light-bulb, explains Merpel] together with Mr Justice Birss, the visit is many-pronged, with appearances in Beijing, Hangzhou, Shanghai, Guangzhou, Chongqing, Suzhou, Nanjing and Hong Kong and will take in topics across the IP spectrum.  Among its goals are increased interaction at the highest level between IP policy makers in both countries as well as securing the IP position for UK businesses in China all naturally being done in the most diplomatic manner possible.  Both the Chartered Institute of Patent Attorneys (CIPA) and the Institute of Trade Mark Attorneys (ITMA) have been invited to send along delegates and these include Gwilym Roberts, Catherine Wolfe, Rachel Wilkinson-Duffy and Robert Furneaux, all of whom will be making appearances and saying important things in various cities.  This visit promises to be very interesting, if a little tiring, as the social programme includes receptions at Prince Kung’s mansion in Beijing, Liverpool-Jiaotong University, Suzhou and the Dragon Inn, Hong Kong which is believed to be the name of the British Consulate General Bar. The CIPA and ITMA team members have promised to let the IPKat know how things are going as the excitement develops. Let's all hope that their noble aims are met and indeed exceeded and that, when they call, they find the Dragon Inn ...

Thursday, 21 August 2014

Kidney-Shaped Bra Insert Patent Suit is Pushing Ahead

On August 18, lingerie and accessories company Zephyrs filed a suit in New York Supreme Court (a court of first instance) against its former patent attorney Bernard Codd and his law firm McDermott, Will & Emery, claiming that their “deficient services “while drafting a bra insert patent now prevents Zephyrs to sue competitors selling similar products on the market and to collect royalties. The case is Runberg, Inc. d/b/a Zephyrs v. McDermott, Will & Emery LLP and Bernard P. Codd.

This Kat was confused as to where the kidney-shaped insert should go.

Debra MacKinnon is Zephyrs’ principal and the inventor of a kidney-shaped insert for women’s bras, which is “anatomically designed to conform to and push up the breasts, thereby increasing volume and cleavage, while providing a natural shape.” In March 2008, the company engaged the law firm McDermott, Will & Emery to file a patent and U.S. Patent No. 8,216,021 B1 (the Patent) was issued on July 10, 2012.

According to the complaint, Mr. Codd advised his client “that the best available alternative to describe the Invention in the formal patent application would be through the use of defined “ratios.”“

 Victoria’s Secret has been selling for more than a decade “at least $120 million worth” of Zephyrs’ insert under a sourcing contract. This business relationship went sour in 2012 and Zephyrs filed a suit against Victoria’s Secret, claiming the lingerie retailer intentionally breached the agreement. Litigation was eventually dismissed by both parties with prejudice. The August 18 complaint alleges that Victoria’s Secret has been selling knock-offs of Zephyrs’ bra inserts since then without paying any royalties. Plaintiff estimates its lost royalties to exceeds $4,900,000. Amazon sells a similar product, Envy, on its website, and Zephyrs estimates it lost $1,000,000 in royalties.
This is the stuff dreams are made of.

When Zephyrs discovered that products similar to the one it had patented where sold, it consulted an attorney to file an infringement suit and discovered then that the Patent was defective. Ms. MacKinnon consulted with an independent patent counsel in April 2014 who pointed out what he believed was “substantial errors” in the patent when it describes the ratio of maximum thickness between the first main surface of the insert and its second main surface, and the ratio of a depth of the notch from a straight line connecting the first lobe of the insert and its second lobe along the top side of the bra insert.

Plaintiff claims that these ratios and limitations were “fundamentally incorrectly drafted” and, as such, did not correctly describe the invention which is accurately depicted in the diagrams of the patent application.

Plaintiff then hired another law firm to file a reissue application on its behalf, which is now pending before the USPTO. However, the complaint states that several claims in the Patent were “so fundamentally flawed, that they must be cancelled by the USPTO.”

The complaint states that even as Amazon and Victoria’s are selling similar inserts, Zephyrs cannot sue them as its Patent is defective. The reissue process does not permit “to sue under or assert the original, damaged patent from the date that infringement began until a reissue application is granted.” Even if the Patent is indeed reissued, the complaint points out that the companies selling products similar to the Zephyrs’ insert during this blackout period “may possess a statutory and equitable defense of “intervening rights” to the Reissued Patent. In other words, if a third party begins manufacturing or selling products that incorporate the Invention now (as many already have), they are permitted to keep selling such products even if they would infringe upon a Reissued Patent that is later granted and issued.”

Zephyrs is seeking damages and costs.

A warm Katpat to Chris Torrero who told the IPKat about this case. Thank you Chris!

Taking a selfie inside the National Gallery: a copyright infringement?

From the National Gallery
permanent collection:
E. Manet, Woman with a Kat, ca 1880-82
A few days ago a number of UK newspapers reported that, following similar moves by a number of other UK institutions, also the National Gallery in London has changed its strict no-photos-(please) policy "after staff realised they were fighting a losing battle against mobile phones", The Telegraph explains

In particular, this decision has been motivated by the difficulties that have arisen to distinguish between visitors using the free wi-fi provided by the Gallery "to research paintings" [of course, what else?] "and those trying to take pictures with mobile phones." 

Since late July the new photography policy of this glorious cultural institution has quietly replaced the old one: visitors may now take photos of the Gallery's permanent collection on their own devices for personal, non-commercial purposes. Tripods remain off limits, and visitors will also be “discouraged” from blocking other people’s views while taking pictures. In any case, similarly to the National Portrait Gallery and the Tate, the National Gallery "will maintain restrictions on members of the public photographing their temporary exhibitions, for reasons of copyright" [as well as, presumably, in some other cases for reasons of security or conservation].

So, would the taking of a picture of temporary exhibitions or displays with loans be really a potential copyright infringement? It might well be, provided of course that the particular work photographed is still protected by copyright [which might be the case also for works in the permanent collection, although for those paintings it is likely that the Gallery also owns the copyright]


Kats in panoramic view
No freedom of panorama, darling

The conclusion above is because the so called freedom of panorama under UK copyright does not apply to paintings. Section 62 (Representation of certain artistic works on public display) of the Copyright, Designs and Patents Act 1988 ('CDPA') states: 

(1) This section applies to-
(a) buildings, and
(b) sculptures, models for buildings and works of artistic craftsmanship, if permanently situated in a public place or in premises open to the public.
(2) The copyright in such works is not infringed by-
(a) making a graphic work representing it,
(b) making a photograph or film of it, or
(c) making a broadcast of a visual image of it.
(3) Nor is the copyright infringed by the issue to the public of copies, or the communication to the public, of anything whose making was, by virtue of this section, not an infringement of the copyright.

This means that while taking the picture of, say, a copyright-protected sculpture in the permanent collection [thus excluding loans and temporary exhibitions] of a museum would not be a copyright infringement, the same may not be true for the picture of a painting, no matter whether in the permanent collection, loan display or temporary collection of a museum [see the recent UK IPO's Copyright Notice, p 3].

UK freedom of panorama is narrower than the corresponding provision in Article 5(3)(h) of the InfoSoc Directive, which allows EU Member States to provide for an optional [just think that an art-rich Member State like Italy does not have it] exception or limitation for "use of works, such as works of architecture or sculpture, made to be located permanently in public places".

So freedom of panorama would not apply. 

However, could there be cases in which other copyright exceptions may be invoked successfully by those naughty visitors who happen to take particular types of pictures in front of paintings they are not allowed to photograph? What about portraits or self-portraits (also known as selfies) [Merpel sighs: of course, what else? Ordinary people-free photographs of paintings are not just boring but also so passé, especially considering the quality of one’s own digital reproductions of paintings in comparison to those freely available online]?

Multi-infringement alert:
Jerry Hall posing with Lucian Freud's
representations of her
Can a selfie in front of a painting call for the incidental inclusion defence?

If you pose in front of a copyright-protected painting to take a selfie (as the Guardian journalist did and you may do too, albeit perhaps more skilfully) in one of the Gallery's temporary exhibitions, can you then tell the guard who has just approached you that it was incidental inclusion of copyright material?

Section 31 CDPA states:

(1) Copyright in a work is not infringed by its incidental inclusion in an artistic work [eg a selfie, whose main element is ... yourself], sound recording, film or broadcast.
(2) Nor is the copyright infringed by the issue to the public of copies [eg sharing the selfie via Twitter, Facebook, etc], or the playing, showing or communication to the public, or anything whose making was, by virtue of subsection (1), not an infringement of the copyright.
(3) A musical work, words spoken or sung with music or so much of a sound recording or broadcast as includes a musical work or such words, shall not be regarded as incidentally included in another work if it is deliberately included. 

According to Copinger and Skone James on Copyright [one this Kat's own "As Lessig says" references] the term 'incidental', though not further defined in the statute, bears its ordinary meaning as something casual or of secondary importance. Similarly, Laddie Prescott and Vitoria say: "The Act contains no definition of 'incidental', but this is an ordinary English word with connotations of what is casual, not essential, subordinate, merely background, etc. It is submitted that while what is incidental is a question of fact and degree, an important consideration would be as to whether the taking [semble, what has been copied] enables the work to compete with or act as a substitute for the work which is included."

Could this be the case of a selfie shared on Twitter in respect of, say, a Lucian Freud painting on temporary display at the National Gallery or, as it really happened a couple of years ago, at the National Portrait Gallery? Could your own selfie be considered a competitor of or even a substitute for authorised (and likely professional) digital reproductions of the painting in question? 

In Panini the Court of Appeal of England and Wales had to consider whether inclusion of individual club badges and the Premier League emblem on Panini's collectible stickers depicting well-known football players was tantamount to an infringement of the copyright held by the Football Association Premier League (‘FAPL’) and a number of football clubs or whether, instead, their inclusion was merely 'incidental' as per Section 31 CDPA.

The Court recalled that, when discussing the bill that would eventually become the CDPA before the House of Lords, the minister responsible for its progress (Lord Beaverbrook) put it: "What is incidental will depend on all the circumstances of each case." This also means, said the Court, that "'incidental' was not intended to mean 'unintentional'". Furthermore, 

"in principle, there is no necessary dichotomy between "integral" and "incidental". Where an artistic work in which copyright subsists appears in a photograph because it is part of the setting in which the photographer finds his subject it can properly be said to be an integral part of the photograph: if it is part of the setting in which the photographer finds his subject, it will, necessarily, appear in the photograph unless edited out. In that sense the work in relation to which copyright is said to be infringed (work 'A') is integral to the photograph (work 'B') which is said to constitute the infringement. But that does not lead to the conclusion that the inclusion of work 'A' in work 'B' is, or is not, "incidental" for the purposes of section 31(1) of the Act. That, as it seems to me, turns on the question: why – having regard to the circumstances in which work 'B' was created – has work 'A' been included in work 'B'? And, in addressing that question, I can see no reason why, if the circumstances so require, consideration should not be given as well to the commercial reason why work 'A' has been included in work 'B' as to any aesthetic reason."

Surely thinking where
to take the next selfie
The Court concluded that Panini's inclusion of club badges and the FAPL emblem in its stickers was not incidental because, when creating the image of the player as it appeared on the sticker or in the album it then sold, Panini intended to produce something which would be attractive to a collector. The image of a player in strip without his own club badge and the FAPL emblem would not be perceived as authentic by an informed collector, and therefore it would not be attractive to him/her. For this reason, the Court found it "impossible to say that the inclusion of the individual badge and the FAPL emblem [was] 'incidental'" [whether this conclusion is consistent with the extract from Laddie Prescott and Vitoria quoted above remains questionable in this Kat's opinion]

Things might be different for a portrait or a selfie, as these are often - if not most of the time - taken for non-commercial purposes and simply shared online as a testimony of the fact that one visited the National Gallery. Furthermore, for the defence to apply, in principle it would not make a difference whether posing in front of a certain painting was a deliberate choice or not.

However, considering the in-applicability of Section 62 to paintings and the ambiguities of Section 31, one cannot completely rule out that taking a photograph that, among other things, includes a copyright-protected work outside the permanent collection might be a breach of the National Gallery's own regulations, as well as – in certain cases - a copyright infringement. 

Yet, in an age in which mobile devices are everywhere and have actually forced the Gallery to change its own photography policy, how realistic is it to think that this or other similar institutions would sue their visitors (how many of them, all of them?) for copyright infringement for taking unauthorised pictures in front of their "restricted" paintings?

What do readers think?

Wednesday, 20 August 2014

Your IP PhD: things to do, things to avoid

Over the years this Kat has examined a good many PhD theses -- but not many good ones. This blogpost lists and explains some of his admittedly subjective feelings about what PhD candidates should, or should not do, based on his own experiences.

Here are some things to avoid:

Yes, they are different -- but a PhD
candidate should still explain why
 
* The do-it-yourself comparison. PhD theses with a comparative flavour have long been popular for many reasons. A PhD candidate studying abroad may wish to draw upon the law and practice of both his home country and the jurisdiction in which his university is based. The candidate may also be keeping an eye on the potential for turning his thesis into a book, in which the publisher's commercial risk is reduced where a comparison involving, say, United States law, is concerned. Or, less frequently, the divergent legal doctrines of the countries compared offers a fruitful academic exercise from which potentially valuable conclusions may be drawn. Sadly, while the law and practice of two or more countries may be accurately and even interestingly described, the comparison itself is often missing or exists in a vestigial form alone -- effectively leaving the PhD examiner to do the comparing for himself. I once asked a PhD candidate why his "comparison" of two sets of copyright laws was so perfunctory and was told that he had to leave them out "for space reasons". That is not, in my view, an acceptable explanation since practically every undergraduate can paraphrase and if necessary précis different sets of rules, but a PhD candidate should show some intellectual mettle in drawing out their differences and the significance of that contrast.

Does Lessig mean more ...
* The Larry Lessig Syndrome. This is a condition which can irritate the examiner a good deal even in its milder form, but it can become serious and even irremediable if not promptly treated. Incidentally, it is in no sense caused by Larry Lessig, who (on this occasion at any rate) is quite blameless, but I first noticed it in relation to him, in PhD theses and Masters dissertations and then in articles submitted for publication in the Journal of Intellectual Property Law & Practice. The principal symptom of this condition can be found anywhere in a PhD thesis in which the candidate portentously writes "As Lessig says ..." and then cites a passage of text which may or may not have been what Lessig says but which is often taken out of the context in which it was originally stated and which, by virtue of the fact that Lessig has said it, is beyond criticism, discussion or analysis. In the eyes of the candidate the truth of the words is self-evident and unchallengeable, and there is certainly no need to seek out any further support for their veracity. Other contemporary IP commentators whose words have been similarly treated in recent theses include Sir Robin Jacob, David Kappos and even Neelie Kroes.

Painting a general picture is all very well,
but a PhD should be more than superficial
* The "field of interest" thesis. Ideally a PhD thesis should be capable of expression as one or more questions that are asked and answered, or one or more problems that are posed and then either solved or demonstrated to be insoluble. In my experience this is not always so. I have occasionally been asked to examine theses with titles such as "The Law of the Internet", which appear to have no particular objective other than to aggregate and describe a number of laws, drawn from various disciplines, and to say "look, folks, these laws all have some affect on the internet. The failure of a thesis to have a particular thrust is not usually so obvious, and may result from unfortunate or inconvenient events such as a candidate's decision to terminate research early and "cut-and-run" as a consequence of loss of funding, the departure of a supervisor whose expertise cannot be replaced within the university or the realisation that the candidate's chosen subject has lost much of its relevance and academic interest on account of legislative, jurisprudential or technological developments that were unknown when work on the thesis commenced. Even so, a thesis that merely describes a field of interest but does not penetrate to the level of deep analysis of at least part of that field is a thesis that is likely to be of little benefit to the candidate or to the world at large.

Where does it begin ... or end?
* The Persian carpet text. One of the fascinating things about the decoration of a Persian carpet can be the way it presents itself as a complex interweaving of themes and motifs which may sometimes appear to have no apparent beginning or end. Some PhD theses are a bit like this: their structure is allowed to become over-complex and the text is so overlaid with internal cross-references that, whichever chapter one starts with, one is offered references to other chapters which, one feels, must first be read in order to understand the text at hand. I'm not sure why this happens, since my own writing is generally linear, beginning at the beginning and offering a one-track course to the end, but I wonder whether it might be the unintended consequence of a sort of intellectual enlightenment that comes at the end of carefully revising the text for the severalth time and seeing how many elements of the thesis, previously viewed as being disparate, are actually related to one another.
Here, very briefly, are some things a PhD candidate definitely should do [nb PhD candidates -- there are literally hundreds of pieces of advice awaiting you, of which the items below constitute a token sample. If you want more, ask your supervisor, using the request as an excuse for your next meeting ...]:
* Check carefully the spellings of the names of well-known IP authors, judges, commentators and academics. It will save you the embarrassment of discovering that you have mis-spelled the surname of your PhD's external examiner [two of the three candidates whose theses I've most recently examined were quite upset to discover that they'd done just that].

* Make every effort to help your examiners identify and appreciate those bits of your thesis -- and there are unlikely to be very many of them -- which represent your own independent, original and unaided contributions to the thesis topic.  It's not boasting to flag those bits of your thesis that are genuinely your own invention, and examiners need help --  not only to see how your thinking and your analytical techniques have developed but also to select topics which they can discuss with you in the course of the viva [note to candidates: if I can't easily spot your original ideas, I'll try to get you to discuss mine instead -- and there's a good chance that, while I will have given them some thought, you won't have].

* If you have written different parts of your thesis at different stages of your PhD registration (as is quite commonly done), do look carefully for signs that your latter thoughts might be inconsistent with, or in complete conflict with, your earlier ones. "This is what I think now and that's what I thought then" may be true, but it's not the sort of response to secure you a "Dr".

* Check through your text before submission, to make sure that you have filled in all your blanks.  I've lost count of the number of times I've followed footnotes down to the bottom of the page, only to be greeted by "See XXX at p XXX", "Add reference here", or suchlike.
I have kept both lists short in order to give PhD-sensitive readers a chance to add their own, in keeping with this blog's inclusive and participative ethos. If you have any thoughts or comments, let's here from you [and you don't have to be anonymous unless you really have something to hide, adds Merpel].

Intellectual Property For Economic Development: a new book

Intellectual Property For Economic Development is yet another title from the seemingly inexhaustible source of IP-related literature that is Edward Elgar Publishing.  This tome is edited by a three-person team consisting of Sanghoon Ahn (Fellow, Korea Development Institute, Korea, and Senior Economist, Organisation for Economic Cooperation and Development), Bronwyn H. Hall (Professor of Economics, University of California, Berkeley, and Professor of Technology and the Economy, University of Maastricht, not to mention being a Research Associate of the National Bureau of Economic Research, US, and the Institute of Fiscal Studies, London), not to forget Keun Lee (Professor, Seoul National University, South Korea [and, judging by titles, the only member of the editorial board who seems to managing with just one job, says Merpel, who wonders whether we shouldn't be paying our academics a bit more]).

So what is this book -- part of the KDI Series in Economic Policy and Development -- all about? As ever, the publishers have their say. This is the information from the web-blurb:  
Protection of intellectual property rights (IPRs) serves a dual role in economic development. While it promotes innovation by providing legal protection of inventions [thus suggesting that IPERs here are specifically those that protect inventions, such as patents and utility models], it may retard catch-up and learning by restricting the diffusion of innovations [and therefore embracing copyright too?]. Does stronger IPR protection in a developing country encourage technology development in or technology transfer to that country? This book aims to address the issue, covering diverse forms of IPRs, varied actors in innovation, and multiple case studies from Asia and Latin America. IPRs and their interaction with other factors such as such as the quality of knowledge institutions (e.g. academia, public research institutes or industrial research centres such as science parks), availability of trained human capital [Merpel wonder, in these days of artificial intelligence, should the term 'trained human capital' extend to robotics and cybernetics ...?], and networks for research collaboration or interaction (e.g. university-industry research collaboration or international collaboration) in a development context, is the subject of this book.

Intellectual Property for Economic Development:

• Considers the diverse forms of IPRs and technology transfer and their implications for economic development.

• Analyzes the role of inventors in different contexts including those in universities and in domestic and international mobility and collaborations.

• Presents in-depth analyses of specific issues involving IPRs in the context of countries at different levels of development, including Mexico, China and Korea. Focus is paid to the differences between East Asia and Latin America.

This book will appeal to academics and researchers in the areas of development economics, the economics of IP, law and economics and IP innovation.
Considering that Park is the third most common Korean surname and that he has met many IP-focused Parks over the years, this Kat was amused to spot that only one Park features in this work, this being Walter G. Park, a professor of economics at the American University. His chapter on channels of tech transfer and IP rights in developing countries, co-authored with the OECD's Douglas Lippoldt, is the longest contribution to this collection and, in this reviewer's opinion, the pivotal contribution which provides a solid factual basis and framework for what for many readers might seem an amorphous work and a slightly random, the main thing which the countries selected for analysis have in common is that none of them is in, or near, Africa. Another chapter to commend, if only because it confirms this reviewer's long-held prejudices, is Keun Lee and Yee Kyoung Kim's analysis of the comparative impact of patents and second-tier protection on development in Korea, illuminating the effectiveness of utility model protection when properly deployed. All in all, this is a more informative and interesting book than this Kat feared it might be when he first opened it -- and he's glad he did.

Bibliographic data: 2014 viii + 315 pp. Hardback ISBN 978 1 78254 804 1;  ebook ISBN 978 1 78254 805 8. Hardback price £85 (online from the publishers £76.50).  Rupture factor: low. Book's web page here.

Tuesday, 19 August 2014

Once upon a time, in a faraway time-warp: a Kat relates his IP PhD experiences

Eleonora's earlier post, "It's a wonderful (PhD) life ... Oh wait: is it?", here, promised that this Kat would say a bit about his own postgraduate experiences -- so here they are!  He enrolled for a PhD in October 1973, submitted it in September 1976 and, following a successful viva in May 1977, received his doctorate from what was then branded the University of Kent at Canterbury. Like many things in his life, his experience was very much a one-off. The salient points were as follows (as Jeremy explains):

I intended to pursue a purely academic career (which I did for over 11 years) and saw the acquisition of a PhD as a valuable asset in a generation when law was still seen as a vocational degree and most legal academics in the UK had a professional qualification but no degree higher than a Masters.

The decision to research IP was not made until I had been registered for three months; my supervisor (about whom more will be said later) insisted that I spend time thinking carefully about my subject, bearing in mind that, as an undergraduate, my familiarity with law might be deep but was extremely narrow; many subjects, intellectual property included, were not taught at all to undergraduates in the UK, or were mentioned only en passant in papers such as Personal Property (along with bills of exchange, liens, chattel trespass, trover and detinue). Anyway, I was told to browse the library and look at subjects that I knew nothing about -- particularly those that were adjacent to my initial choice of false trade descriptions -- and ask myself whether those areas wouldn't interest me more. I assumed that this was standard procedure for novice PhD candidates and duly obliged. Once I found the section of the law holdings that contained the IP books, I was hooked.

Fortuitously my arrival at Kent more or less coincided with the short-lived Unit for Legal Research in Computers and Communications, which didn't attract many students or research funds (it was axed after only a few years in favour of more funding for the Law Clinic, on the basis that there was no future for legal research in computers and communications) but it did attract money for lots of books and periodicals.

Although my supervisor, Harry Bloom, was a Senior Lecturer, he held no doctorate of his own and had not previously supervised any PhD candidates. The supervision process therefore developed on an empirical basis. Its salient features were as follows:

Harry Bloom
* Every working day I reported to Harry's office at 11 am, whereupon he would take me for coffee and ask me what I had been reading, thinking and, when relevant, writing, since our previous day's meeting. When Harry travelled to London, as he often did, to deliver a guest lecture or meet a visiting IP personality, I was expected to travel with him. On the train to London we discussed what he was going to be saying; on the train back we would discuss what he had said, what questions had been asked and why, and so on. If time remained, I was expected to complete The Times crossword under his supervision.

* When Harry gave a class, on The Law of Communications (his own invention, embracing media law, IP, dissemination and protection of speech, law and cybernetics), I had to be there for it.  When he wasn't there, I had to fill in for him.

* When any IP dignitary came to visit Harry in Canterbury, I was always expected to join them for coffee and/or lunch. As a special treat I was allowed to drive them back to the railway station in Harry's car, so I could steal a little quality time with them.

* If for any reason I didn't meet Harry for coffee, he would drive over to my flat (most students had no phones in those days) to find out if I was unwell, often bearing some small and edible token of his concern.

* Whatever I wrote was closely examined for content, style, structure and general readability. Harry was the first person to concede that he was not the greatest IP lawyer who had ever walked the Earth, but before he became an academic he was a successful novelist, journalist and scriptwriter: he believed that a PhD that couldn't be understood by its readers was a PhD that wasn't worth writing.

* After a few months, this situation became reciprocal.  Harry would throw a draft article of his own at me and ask me what I thought of it. If I didn't criticise it, he would do so himself.

* Once or twice a term, when my parents came down to visit me, Harry would take them aside and give them an oral report on my progress.

* I was strongly encouraged to pay personal visits to lawyers in private practice, patent attorneys, scholars and in-house IP practitioners, and indeed to anyone who was involved in my topic (the allocation of IP rights between employers and employees) or who wrote on it. His view was that the real world reflects what people write but is not reflected by what they write and that, if you want to understand an argument, you have to understand the people who argue it. Accordingly I spent a good deal of time visiting generally busy and generally bemused IP owners and professionals, to ask them how and why they did or wrote the things that they did.
Not being in contact with other IP PhD candidates, and living in an era when the internet, email, Facebook, Twitter, LinkedIn and the rest of the social media were scarcely imaginable, I had no-one with whom to share my experiences and therefore no idea that my experiences were not typical.

Lord Lloyd of Kilgerran
There were a couple of negative experiences, but neither could be blamed on my supervisor.  The first was when the regulations for registration and upgrade from MPhil to PhD were retroactively amended and no-one told Harry or me. This meant that I had to conjure some draft chapters out of the air in negative time so that they could be examined and approved.  Fortunately this unexpected requirement was mercifully waived, but not before a quantity of nails were vigorously bitten. Another was a communication to the effect that my thesis couldn't be examined because it had proved impossible to identify a willing and suitable external examiner. Eventually one was identified, this being the amiable, jocund and somewhat rotund Lord Lloyd of Kilgerran (a member of the patent bar and editor of the 8th edition of Kerly on Trade Marks).  Fortunately all ended well.  His Lordship was delighted to spot that he had appeared in some of the cases mentioned in my lengthy list of cases cited and, rather than ask me about them, he spent almost all my viva telling me about the background to them. Apart from saying hello, confirming my identity and thanking him for recommending a pass, I scarcely had to utter a word.

In conclusion I can honestly say that my PhD experience was well worth it. In a way it was as much an apprenticeship as anything else. My subsequent life as an academic, editor, publisher, conference organiser, blogger and lots more was very much influenced by my positive, if sometimes onerous, experiences as a PhD candidate.

Passing off wins the day: fake Patent Office scammers pay up, promise not to do it again

Passing off, like the horse-
and-buggy, might look quaint
but can get you there in the end
"Intellectual Property Office succeeds in passing off claim" is surely the news story that sets all hearts a-flutter in government patent offices, trade mark registries and intellectual property offices in common law jurisdictions, as the curious remedy of passing off -- which is to the law of unfair competition what the horse-drawn buggy is to the SUV -- notches up another notable triumph. According to this news item, posted on the chunky and unlovable GOV.UK website which is replacing the elegant and sophisticated UK Intellectual Property Office website (among others):
Two of the most blatant offenders – ‘Patent and Trademark Office’ and ‘Patent and Trade Mark Organisation’ – and the persons behind these organisations, Mr Aleksandrs Radcuks and Mr Igors Villers, have admitted and settled our claims and agreed to be bound by an Order of the Intellectual Enterprise Court [no, says Merpel, it's the Intellectual Property Enterprise Court, England and Wales. Writing blogposts is an intellectual enterprise though ...] prohibiting them from further acts of passing off.

This means that if these people pass themselves off again as the Intellectual Property Office (IPO), they will be in contempt of court and liable to imprisonment.

Part of the settlement is a substantial payment to the IPO which will cover some of our legal costs. Further proceedings are pending against another organisation that is engaged in similar practices, so watch this space.

Background

On Monday 19 May 2014, we filed a claim for passing off at the Intellectual Property Enterprise Court against the persons behind the companies trading as Patent and Trade Mark Office and Patent and Trade Mark Organisation.

These organisations have been issuing official looking ‘renewal’ notices to holders of UK registered patents and trade marks offering to renew the rights for fees greatly in excess of the official renewal fees. We know that some of our customers have been misled into making excessive payments to these organisations because they thought they were paying the IPO for renewing intellectual property rights.

We therefore felt it was necessary to take appropriate action given the evidence that our customers are being misled or confused and that damage is being caused to the office’s good name.
Happy as he is that this has happened, the IPKat is still concerned about the fate of those people who have been induced to pay these pretend-renewal fees.  In each instance that such a payment is made, it may not be economically feasible for them to commence their own legal action to recover the sums so paid, yet he is uncertain if there is any mechanism by which they can be joined in the UKIPO's action, given that theirs is a claim for money paid on the basis of a fraudulent or at least deceptive representation, while that of the Office is based on passing off.  Do the terms of the settlement require Messrs Radcuks and Villers to disgorge their ill-gotten gains, he wonders, and why is this decision not yet available on the BAILII database of judgments, on the page for IPEC judgments in 2014? Presumably it's because the parties settled everything and there was nothing for the court to give judgment on.

A penny for your thoughts? No, a pound for your breach of confidence: no richesse for Richmond

Following six days of hearings, a claimant that succeeds in pinning the defendants down with liability for breach of contract, breach of confidence and breach of statutory duty might expect to be royally rewarded for its trouble. But this is not always the case, as can be seen from the salutary suit in Richmond Pharmacology Ltd v Chester Overseas Ltd, Milton Levine and Larry Levine [2014] EWHC 2692 (Ch), a 1 August 2014 decision of Stephen Jourdan QC, sitting as a Deputy Judge in the Chancery Division of the High Court, England and Wales.

In this action Richmond, a contract research organisation, claimed damages or equitable compensation from Chester and the two Messrs Levine for losses sustained as a result of the disclosure of its confidential information. The saga starts in 2002, when Richmond entered into a shareholders' agreement whereby Chester (a British Virgin Islands company whose shares were held in trust for the Levines, who effectively controlled it) bought 44 per cent of its issued share capital. The remaining 56 per cent stayed in the hands of the three doctors who founded Richmond.  The Levines, representing Chester, were appointed directors of Richmond. While this agreement gave Chester the right of access to detailed information about Richmond's affairs, clause.13 [which is set out in full at para 37 of the judgment] required Chester to treat that information as strictly confidential, save in certain specified circumstances.

Subsequently, in 2009, Chester sought to sell its shares in Richmond and instructed New World Corporate Finance Ltd (NWCF), to advise and assist it in this task. When NWFCstarted to market the shares to third parties, Richmond asserted that, in doing so, it both disclosed confidential information and created the misleading impression that all of the issued shares  in Richmond were for sale. In result, said Richmond, it suffered a reduction in its business.

At trial, the Deputy Judge had to consider the following questions:
(i) did Chester and the Levines owe any duty of confidentiality to Richmond?
(ii) if so, had they breached any such duty by conveying confidential information to NWCF?
(iii) what information did NWCF actually disclosed?
(iv) did NWCF's disclosures to prospective purchasers constitute a breach of confidence by Chester and the Levines of their duties of confidentiality?
(v) did an estoppel arise because Richmond did not initially object to NWCF's disclosures?
(vi) did NWCF's disclosures cause any loss to Richmond?
After tiptoeing through 253 paragraphs, this Kat can report briefly as follows:

* The ordinary and natural meaning of the shareholders' agreement was that Chester had a duty not to disclose Richmond's commercially sensitive information to anybody. However, on that reading, Chester could not realistically expect to sell its shareholding without the board approving the disclosure of confidential information to potential purchasers. It could not be argued that this conclusion was contrary to business common sense, since the commercial reality was that it was always going to be virtually impossible for Chester to sell its shares without the cooperation of the three founding doctors who retained the majority of the shares.

* The Levenes, as directors of Richmond, owed the company a number of statutory duties set out in the Companies Act 2006, ss 172 [duty to promote the success of the company], 174 [duty to exercise reasonable care, skill and diligence] and 175 [duty to avoid conflicts of interest]. Since they had been nominated by Chester they could, in performing their s.172 duty, take Chester's interests into account -- but only provided that they made decisions which they genuinely considered to be in Richmond's best interests.

* In contrast, s.174 and s.175 imposed an objective test and a breach of the s.175 duty to avoid conflicts of interest did not depend on any bad faith on the part of the director, or any awareness by him that his conduct placed him in breach.

* The founders had authorised the Levines to act in a dual capacity so long as Chester complied with its contractual obligations; however, to the extent that the Levines wanted Chester to breach the shareholders' agreement, they would first need the approval of the Richmond board.

* Where there was a contractual duty of confidentiality, equity would not impose any wider, or narrower, duty of confidentiality than that stipulated by the contract. On the facts, therefore, the Levines' equitable duties were identical in scope to those imposed on Chester by the shareholders' agreement. To the extent that the Levines caused Chester to act in breach of that agreement, they would themselves be in breach.

* The Levines were entitled to disclose confidential information to NWCF, since it advised them professionally and such disclosures were specifically authorised by clause 13.2 of the shareholders' agreement. In reality, NWCF probably used that information only to make general statements about Richmond's business and it was unlikely that it had disclosed material of any substance. However, it was likely that it had given the impression that all of the shares in Richmond were, or might be, for sale: the giving of such an impression constituted a breach of clause 13 by Chester. If true, it would have been confidential information falling within the scope of clause 13 and also placed the Levines in breach of their s.175 duty, insofar as their conduct had caused Chester's breach [Merpel's not too clear as to how the impression that all the shares were for sale, if false, would fall within clause 13, but that's another matter].

* there was no estoppel by acquiescence since there was no relevant assumption made by one party which was acquiesced in by the other, where it was unjust for that other party to resile from that assumption. Silence alone was not that sort of assumption; nor had it been shown that the party relying on it had done so to a sufficient extent: the most that could reasonably have been inferred from Richmond's failure to object to NWCF's disclosures was a grudging acceptance that it could do nothing about them, but no way was it capable of being an acceptance that NWCF's conduct was lawful.

* while both Chester and the Levines had acted in breach of their obligations of confidentiality, those breaches had not caused any loss to Richmond. While the amount of business that had been placed with Richmond had decreased after the breaches had occurred, it could not be said on the balance of probabilities that that decrease in business had been caused by those breaches.

* to conclude, while the three defendants did indeed commit some breaches of their contractual, statutory and equitable duties to Richmond, those breaches caused it no loss. Provisionally, it seemed right to award nominal damages of £1 against Chester for breach of contract, and to dismiss the claims against the Levines.

Ever discreet ...
The IPKat, this case is more interesting than it may appear, as are many that deal with damages. Where there are two or more possible reasons why the injured party suffers loss following a breach of confidence, it's clearly not enough for the defendant simply to show damage: causation must be proved too. And the burden of proof remains with the successful claimant to show how the damage was caused. Apart from the difficulty of achieving this, there is also the uncomfortable prospect of having to open one's books, correspondence and records for close scrutiny by a hostile party intent on disproving causation.  Merpel says, with hindsight this was plainly not the best way to proceed; the interesting thing is to map out the best way that Chester could have put its shares in Richmond on the market in the event that the majority shareholders were (i) cooperative and (ii) uncooperative.

Richmond Hill here and here
Lass of Richmond Hill here
Pound-breach here

Monday, 18 August 2014

This is Fiction, not Trademark Infringement: A Cat (Woman) in Need of a Clean Slate

The Seventh Circuit Court affirmed on August 14 that a fictional company or product cannot infringe the trademark of a real company or product. The case is Fortres Grand Corporation v.Warner Bros., no. 12-cv-00535.

Appellant Fortres Grand sells “Clean Slate,” a desktop management program which erases all evidence of user activity on a computer. It holds the registered trademark “Clean Slate” for computer software. Appellee Warner Bros. released in 2012 the Batman The Dark Knight Rises movie which features the fictional software program “clean slate.”

Fortres Grand noticed a decline in sales of the Clean Slate program after the movie was released and filed a trademark infringement suit against Warner Bros., claiming that its use of the words “clean slate” was both a source of consumer confusion and a source of reverse confusion. Warner Bros. moved to dismiss, arguing that a fictional product cannot infringe a trademark. In May 2013, the Northern District of Indiana granted the motion to dismiss. Fortres Grand appealed and the Seventh Circuit affirmed.

In the Batman movie, the character Selina Kyle, which is none other than Katwoman Catwoman, is in dire need of a software program to delete her criminal past. Fortunately, the fictional company Rykin Data has developed such program, which plays an important part in the plot as Bruce Wayne eventually acquires it after Catwoman is betrayed by a criminal organization which had promised her a copy in exchange for her professional and nefarious services. The program is referred to four times in the movie as “clean slate.” The fictional Rikin Data company was featured on social media (here for example), albeit by fans, not by Warner Bros., as specified in its response brief. One of such sites explains that “Rykin Data has developed the methods in which a software-based application can source the total sum of one's personal information archived on all databases and permanently purge this data, effectively granting the subject a clean slate within the digital world.”
My Data And I Are Wiped Out 

Reverse confusion occurs when consumers believe that it is the senior user which is infringing on the junior user’s trademark. In the Seventh Circuit, a plaintiff claiming reverse confusion must prove that the “large junior user [has] saturate[d] themarket with a trademark similar or identical to that of a smaller, senior user.” However, Warner Bros. had introduced a movie on the market, not a piece of software, and the software referred to in the movie was fictitious. The District Court reasoned that Fortres Grand could not have therefore been damaged by Warner Bros.’s saturation of the market. Also, Warner Bros. did not used the words “clean slate” to identify the source of the fictitious software product and, further, “no consumer – reasonable or even unreasonable – would believe that the The Dark Knight Rises itself is connected to Fortres Grand. “ For the Seventh Circuit, Fortres Grand failed to prove that consumers would be confused into thinking that its software “emanates from, is connected to, or is sponsored” by Warner Bros.

There was no likelihood of confusion either for the District Court, as both products were not similar. Fortres Grand argued on appeal that the court should have compared its “Clean Slate” software to the fictitious software developed by Rykin Data. But the Seventh Circuit was not convinced by this argument, quoting the 2003 Supreme Court Dastarv. Twentieth Century Fox case where the Court explained that “origin of the goods” in the Lanham Act means “the source of wares… [i.e.] the producer of the tangible product sold in the marketplace” (at 31). Therefore, it was indeed the movie which had to be compared with Appellant’s software. However, confusion could still be likely if the public would attribute a single source to both products, but the Seventh Circuit noted that both products are “quite dissimilar” and were also sold in different channels of trade.
This Duck Does Not Infringe Any Trademark 

The Seventh Circuit did not address the First Amendment issue, but the Northern District Court had also found that Defendant’s use of “Clean Slate” was protected by the First Amendment, citing the 1989 Rogers v. Grimaldi Second Circuit case. For the Second Circuit, the Lanham Act applies to artistic works “only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” However, First Amendment weights more in the balance if the use of trademark “has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [it] explicitly misleads as to the source or the content of the work.” The District Court found that Warner Bros. had satisfied the two prongs of the Rogers test and thus found its use of “clean slate” protected by the First Amendment.

This is particularly welcome as “clean slate” is such a common expression. The Seventh Circuit noted that it is “commonly used  and ”is just one variation of a phrase (pinakis agraphos in Greek (often translated “unwritten tablet”) or tabula rasa in Latin (often translated “blank slate” or “scraped tablet”)) that traces its origins at least as far back as Aristotle and is often used to describe fresh starts or beginnings.” Allowing a trademark owner to prevent the use in a movie of a common expression would have had a chilling effect on free expression.

Source for the Acme image is The Complete Illustrated Catalog of ACME Products


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