For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Thursday, 24 April 2014

BREAKING NEWS: AGCOM issues the first fastissimo administrative blocking injunction

Less than one month has lapsed since the Italian Communication Authority (‘AGCOM’)’s Regulation on Online Copyright Enforcement [on which see the IPKat’s notes here, here and here, along with this Kat’s keynote at the #HappyKat event here] came into force, and just yesterday AGCOM issued the first administrative blocking injunction against a foreign website [the decision is available here].


As our readers and/or attendees to the Happykat event may recall, the Regulation provides for two different tracks: one “regular”, which may last until 35 working days, and one “urgent” [aka “fastissimo”] in case of massive infringements, lasting a 12 working-day maximum. Further, the Regulation provides two sets of sanctions, the issuance of which depends on the location of the server hosting the allegedly infringing contents. If it is located in Italy, the procedure may end either with an order of selective takedown to the Italian hosting provider or with a blocking order of the whole website issued towards Italian access providers in case of massive infringement. For websites hosted outside Italy, the only measure available is to block the whole website.

The case decided yesterday concerned the website www.cineblog-01.net. According to AGCOM’s investigations, the hosting provider was an American company that used a server located in Holland, while the registrar of the domain name was Panamanian. Notwithstanding this international melting pot, AGCOM alleged that more than 90% of accesses to the website came from Italy, and the language of the website appeared to be Italian.

On 7 and 14 April, FAPAV [the Italian Federation for the Protection of Audio-visual and Multimedia Contents, representing BIM Distribuzione S.r.l., Eagle Pictures S.p.a., Filmauro S.r.l., Lucky Red S.r.l., Notorious Pictures S.p.a.] and the Italian company Inthelfilm s.r.l., filed two different complaints with AGCOM, claiming copyright infringement in eleven movies unlawfully hosted on that website. AGCOM considered the making available of eleven works enough to amount to a massive infringement and gave the green light for the fastissimo procedure to be applied.

After joining the two claims in a single procedure, AGCOM verified the ownership of the claimed copyright, the actual availability of the eleven protected works on www.cineblog-01.net and assessed that no copyright limitation could apply. Thus, on 15 April, AGCOM sent the “website manager” a notice stating the claimants’ requests and the URLs where the infringing works were located, inviting it to take them down or to appear in the proceedings within three days. A public notice was also published on AGCOM’s website to warn the Italian access provider of the pending procedure and allow them to file observations.

One of FAPAV's movies:
not a long way to take down
As the three working days passed without reaction from the website manager or from the access providers, on 23 April [ie, 7 working days after the filing of FAPAV’s claim that convinced AGCOM to apply the fastissimo procedure] AGCOM ordered “the mere conduit providers operating into the Italian territory … to disable access to the website www.cineblog-01.net”. The communication also pointed out that, in case of non-compliance within three days from its service, AGCOM could fine the mere conduits amounts between EURO 10,000 and 258,000, and forward the procedure to the Italian Judiciary Police. The order may be appealed to the Italian Administrative Court within 60 days from its service.

Three things are of interest here.

The first point concerns the threshold for a violation to be considered “massive infringement”, which is of seminal importance as it allows AGCOM to adopt the fastissimo track [lasting 12 working days maximum instead of 35] alongside with blocking orders [instead of orders of selective removal] against websites hosted in Italy. In the case at stake, AGCOM considered “massive infringement” the unlawful hosting of eleven movies. With such a medium/low threshold, the fastissimo track and the disablements of whole websites might not be the exceptional measure that one could expect.

Secondly, the order makes some clarity as to what the Regulation means with “website manager”. Alongside the “webpage manager” and the “uploader”, the “website manager” is one of the subjects who receive the first AGCOM notice and who can either remove the contested contents or appear in the procedure to seek for the dismissal of the claimant’s requests. However, none of these can be targeted by AGCOM’s orders and fines [they only concerns hosting providers and mere conduits]. As the IPKat reported, the EU Commission raised concerns as to the introduction of “website” and “webpage manager” categories, which lack in the E-Commerce Directive, and asked AGCOM to provide for clarifications in this regard. 

From yesterday’s decision, we now know that the “website manager” may be either the person who actually manages the website, to be identified as the person who receives the emails provided in the “contacts” session of the page, or, if there is no “contacts” session, the person indicated in the website’s Whois profile as “admin”. In the proceedings at stake, the www.cineblog-01.net did not provide any email to contact the admin of the website directly . Thus AGCOM considered as “webpage manager” the same Panamanian company that appears both as “registrar” and “admin” of the domain name <cineblog-01.net> in the latter’s Whois. If it is true that the Regulation binds AGCOM to serve the notice upon the uploader, the website and webpage managers only if they are “reachable”, Merpel wonders how generous a Panamanian registrar should be to stand for contents hosted on one of its clients’ websites.

Finally, while writing this note, this Kat tried to access the infringing movies through the links listed in the AGCOM’s order, surprisingly discovering that they have all been removed:


Given that, do Italian mere conduits still have to comply with AGCOM's order? If yes, after a possible block the real webpage manager of cineblog-01.net could ask AGCOM to withdraw the blocking order by providing evidence of the takedown [although it could take a while: the movies in subject of the complaint do not appear to be the only contestable ones on that website]. In any case, quoting George W., AGCOM’s mission is accomplished.

Fordham Report 2014: Trade Mark Law and the CJEU

Katfriend James Nurton (editor, Managing Intellectual Property) chaired the keenly-awaited session on trade marks and the Court of Justice of the European Union (CJEU), which was opened by Allan Rosas -- a judge of the CJEU. Allan started with a confession that he was not an intellectual property expert [isn't that usually the case for CJEU judges, wonders Merpel] and a gentle introduction to the court itself.  Last year the General Court of the European Union heard some 300 Community trade mark (CTM) cases, of which around 10% go on appeal to the CJEU, while only five references for a preliminary ruling were made during that period.  Important cases are heard by the Grand Chamber of that court, particularly those that involve applications of the new technologies.

What does the future hold for the CJEU, Allan wondered. There has been talk of establishing a specialised trade mark court or IP court. Article 19 of the Union Treaty mentions the possibility of specialist courts, but only one exists at present and that's for dealing with staff matters.  There are around 1,400 pending cases before the General Court at the moment, as against some 700 for the CJEU, and the flow of new cases continues to rise.  After careful consideration it was decided to add to the number of General Court judges and use the option of specialised chambers within that court, since there may not always be the same high level of demand and a specialised court, once created, is difficult to get rid off before the judges "are falling from the table".

Allan also spoke of the CJEU's role in hearing appeals on CTM matters from the General Court (these are now processed in about half the time it took when he was appointed in 2002). The possibility of requiring leave to appeal is open, allowing an appeal only where there is a serious issue to be considered.

Four layers: good for cakes,
bad for CTM appeals
Paul Maier (Director, The European Observatory on Infringement of Intellectual Property Rights (OHIM), and a former Board of Appeal chair) was then brought into the fray. Said Paul, four levels of decisions is far too many (that's examiner or cancellation board, Board of Appeal, General Court, CJEU). When proposals for moderating the CTM system were made, this topic was omitted.  Said Paul, the General Court should only deal with appeals on substantive legal issues and not review all the factual elements of the decision too. This should cut down the volume of appeals quite substantially.  The system is also faulty in that the General Court's rulings on procedural issues result in cases being thrown back to the Boards of Appeal with little indication as to their substantive value.  Robin Jacob (Faculty of Laws, University College London, London) added to this by observing that the General Court has been far too lax with regard to submission of late evidence, while the CJEU has failed to control its own dockets, ending up less like a Supreme Court and more (per David Edward) like a very overworked Court of Appeal.

Peter Ruess (International School of Management, Frankfurt) chipped in at this point, observing that CTM appeals involve a colossal degree a delay in respect of matters that are essentially trivial, citing the words of this Kat in Case C‑383/12 P Environmental Manufacturing LLP v Office for Harmonisation in the Internal Market, Société Elmar Wolf:
" Let's not lose sight of reality. This case isn't about liability of billions of euros of bad debt following sub-prime lending. It's not about the contested right to thousands of square kilometers of commercially exploitable land or seabed. It's not about the life or death of human beings. It's about the right to stick a picture of a canine mammal on machines for processing waste. In a more sensible world we should be able to dispose of these matters in a couple of hours and then get on with the important things in life. This is not one of them."
Katfriend Dev Gangjee (Faculty of Law, University of Oxford) added a consumer-oriented point: different areas of law call for different types of consumer. How far should the concept of the consumer be legally defined for the purposes of trade mark law, and how far should he be based in reality and evidence rather than in legal expression? Said Robin, the average consumer is "the top part of the bell curve".

At this point Allan Rosas returned to the discussion, broadly endorsing the comments of Paul and Robin. Right now there was a general reluctance to opt for Treaty changes, though he and some of his colleagues are thinking about the possibility that they might be needed.

James Nurton then raised the role of the Advocate General.  Why were they created in the first place? Explained Paul, it was thought handy to have an independent view to guide the then new court -- and some of their Opinions are of good quality, while others sadly are of less value.  Robin was not keen on the gap between hearing the Advocate General's arguments and getting the Opinion:
"When I've heard a case I want to write the judgment straight away.  Three months later you forget what the bloody case is all about".
Finally, Robin contrasted what appeared to be the very high quality of the legal content and the clarity of the CJEU's decisions on Value-Added Tax, which have never required any degree of clarification or course-correction, with those in the field of trade mark law -- which are of far poorer quality.

Fordham Report 2014: Enforcement issues

Following a hearty lunch, this year's Fordham IP Conference split into streams. Eleonora raced off to the copyright session, while Annsley the AmeriKat committed herself to patents, leaving this Kat to pick up the pieces. The first such piece was a session on IP enforcement chaired bu Michael Schlesinger (Mitchell, Silberberg & Knupp, Washington D.C.). This session was opened by Christian Liedtke, a German-born IP consultant based in Newport Beach, whose talk was entitled "Stop in the Name of Law - How New EU Customs Laws Create Stumbling Blocks For Intellectual Property Owners". Christian offered a list of stumbling-blocks that festoon Customs Regulation 608/2013, the EU's upgraded legal system for tackling counterfeit and other dodgy goods when they enter the portals of the single European market. First, said Christian, the new regulation excludes parallel-traded goods -- even though 16 EU Member States are happy enough to allow for their seizure already. Secondly, he added, there is serious lack of provision for penalties. Thirdly, it doesn't provide for the seizure of product overruns. Fourthly, it may undo the good effects of the Court of Justice of the European Union's recent ruling in Case C-583/12 Sintax [noted here by the IPKat]. Finally, it doesn't take into effect the ruling of the same court in Davidoff.

Harold Knopf (Macera & Jarzyna LLP, Ottawa) spoke next, on the effect of Canadian Bill C-8. This Bill was passed in order to ratify ACTA -- which only Japan has ratified and which looks effectively dead in the water.  Harold ran through the various provisions of the Bill and the Toblerone case and speculated as to what its effect might be on the benefit conferred on the Canadian economy by parallel imports. Harold also raised the question whether the US Supreme Court ruling in Kirtsaeng [noted on the 1709 Blog here] might provide the best solution -- a suggestion that met with little enthusiasm from the session's panellists.

Roxanne Elings (Davis Wright Tremaine LLP, New York) then spoke on "Rogue Website Litigation: Tackling The Onslaught of Internet Counterfeiting through US Courts" then addressed the concerns raised against the Stop Online Piracy Act (SOPA) and the Protect IP Act (PIPA) which caused their opponents to rise up and crush them. Curiously, actions against rogue websites appear to have increased since SOPA and PIPA were dropped, which indicates that IP owners appear to have to navigated around them.  Service by email is now accepted as the most appropriate means of initiating an action, and publication to websites has been accepted too. Third party liability can be added to injunctive relief, where hosts are actively acting in concert, with notice, and where they are participating in the rogue website's actions.

Annette Kur (Max Planck Institute) then offered an account of the decisions of the Court of Justice of the European Union (CJEU) on IP enforcement and jurisdiction. Annette distinguished between cases of territorially unlimited and limited jurisdiction, dealing with the UK Supreme Court decision in Lucasfilm (the Star Wars helmet case), the CJEU ruling in Wintersteiger and Pinckney, leaving us with the question why the jurisdictional rules in the European Union need to be so generous.

Richard Vary (Nokia) was the final speaker in this session. He reviewed the nature and the quality of counterfeit mobile phones, which enjoy a larger market share than some of the smaller legitimate manufacturers.  Speaking on the celebrated Nokia case, here, he observed how long it took the European Union to get to the right solution when it came to dealing with counterfeit goods in transit. Closing, Richard observed how strange it was that injunctive relief now appears easier to obtain in China than in the United States.

Fordham Report 2014: IP Leaders

"IP offices cannot solve
every problem ..."
The second session at Fordham's annual IP conference focused on "Intellectual Property Leaders", indeed starring quite a few of them. Katfriend António Campinos (President of the Office for Harmonisation in the Internal Market, OHIM, Alicante) opened with a review of OHIM's activities and sources of inspiration. António spoke of the value of IP-driven industries to the EU's internal and external trade, and of the discovery that such a large segment of IP-intensive employment related to the design sector. António then mentioned the importance of IP databases, especially when they are compatible with one another, and the need for cooperation between offices in Europe and those in important markets beyond Europe's borders -- and particular in jurisdictions like China and Japan. "We must help search engines do their work", he emphasised. The European Trade Mark and Design Network was singled out for its work in encouraging convergence where there was no standardisation or harmonisation. While IP offices cannot solve every problem, there's plenty they can do -- and free-of-charge searchable design databases fall into this category.

OHIM's credo
Hugh Hansen asked whether the same degree of design creativity and commercial activity would not continue even if there were not a greater level of design protection, since most SME design carries on in situations where the designers don't know of, use or have such protection.  With disarming honesty, António answered that he didn't know, but then gave quite a cogent answer based on the advantages to all sectors of the design community to knowing what prior art already exists. He added that the biggest obstacle to the success of his office is a lack of belief.  Believing is so important, particularly believing that it's better to have 20-odd countries having the same system for their trade mark and design protection than to quibble over the precise minutiae of how the system works.

"Government officials
ARE the IP system ..."
Another katfriend, David J. Kappos (currently of Cravath, Swaine & Moore LLP, New York, but still remembered for his stint at the helm of the US Patent and Trademark Office), managed to avoid telling Hugh Hansen why he left that august post. David's presentation featured a letter to Abraham Lincoln -- the only US President to hold a patent -- which sought to update him on the developments that had taken place since his death, together with the challenges facing the utility of the patent system. Today's Patent Wars are nothing new, he observed, since they have occurred at regular intervals when new and innovative products have been launched. In reality, the rate of patent litigation in the US has remained relatively constant, if statistics are anything to go by.  Right now the Great Patent Debate has been based more on rhetoric and allegation than on the objective assessment of facts.  IP was in truth "a giant investment savings plan, when we all pay a little now in order to get the benefit later".

Capacity-building is important
once an IP right is granted
The third katfriend in this session was Francis Gurry (recently nominated for reappointment as Director General, World Intellectual Property Organization, Geneva). Francis thanked Hugh for inviting him to participate in what he described as "the Davos of intellectual property conferences", then summarised the continued rise in filings and IP-related activities that demonstrates the confidence placed in the system by its users. WIPO's international filing activities provided a firm basis for facilitating international protection within a rule-based system. Encouragingly the rate of increase of use of the Madrid, Hague and PCT systems has outstripped the rate of increase of GDP. WIPO has held its fees constant for the past six years and looks forward to holding them steady.

Global IP rules are necessary in order to establish a shared vision, Francis said [Merpel's a little surprised by this. She thought the best way to get global IP rules was to establish a shared vision ...]. Perhaps this is what is needed for the keenly-awaited Design Convention, which is only a little way short of conclusion, despite the differences that have prevented this happy outcome so far. Francis concluded by (i) identifying trade secrets as "the elephant that is not in the room": high mobility of skilled labour, the increased need for chains through which confidentiality passes and the capacity of modern technology to intercept and obtain secret information make the subject important and topical -- and it's certainly not a subject that should be discussed in secrecy, (ii) mentioning the importance of addressing the needs of developing countries and (iii) the need for capacity-building once an IP right has been granted.

Hugh Hansen wanted to know if WIPO -- ie multilateral reform -- was our best chance for achieving the next level of IP law. Said Francis, "yes" (well, he said a bit more than that), adding that the question was an academic one since it was already happening on an ongoing basis.  We do however need a solution to the issue of technical knowledge if we are to retain the support of developing TK-rich countries in leading normal IP to the next level. "There's something in TK which we're not capturing in the IP system", he added [David Kappos added at this stage that "the economics of TK remain to be worked out"].

It was then the turn of the Designated Audience Members to have their say. Mihály Ficsor (President, Hungarian Copyright Council; International Legal Consultant, Budapest) and Shira Perlmutter joined the discussion. Said Shira: we have to be pragmatic and flexible when we approach our current problems, and not be dogmatic as to ends to achieve or means of achieving them. António Campinos agreed, adding that we have all taken the virtues of IP for granted. Now we have facts and figures to enable us to assess the performance of IP rights,. we can look at the cost of not enforcing it in terms of unemployment, loss of tax revenue and other downsides. Maria Martin-Prat (Head of Unit – Copyright, DG Internal Market & Services, European Commission, Brussels) then spoke about getting to the next level of IP protection: there's nothing wrong with intervening policywise, she said, but it's difficult to do so in a rational manner.

Fordham Report 2014: Multilateral and FTA Law & Policy

On a bright but chilly Thursday morning the Fordham Intellectual Property Law Institute and the Emily C. & John E. Hansen Intellectual Property Institute opened their doors to the 22nd Annual Intellectual Property Law & Policy Conference (click here for everything you ever dreamed of knowing about this magical event). In the university's hallowed portals some 550 intellectual property enthusiasts were assembled, to "learn, debate and have fun", to quote the conference's famous slogan.

After the usual welcome formalities and a few words from IP guru and conference genie Hugh Hansen, the first session addressed "Multilateral / FTA Law & Policy". First to speak was Probir J. Mehta (Acting Assistant, U.S. Trade Representative for Intellectual Property and Innovation, Office of the United States Trade Representative, Washington D.C.)  Said Probir, international trade was an important part of the US's economic recovery, and IP/innovation was a key element in fostering investment in this regard. Probir spoke warmly about the Transatlantic Trade and Investment Partnership (TTIP) and the Trans-Pacific Partnership (TPP), both of which -- when you have a job like Probir's only have a few minutes to speak about them -- are not difficult to characterise as panaceas for the ailments of all stakeholders and interested parties. The need for transparency and due process were also recognised.

Pedro Velasco Martins  (Deputy Head of Unit, Intellectual Property and Public Procurement, DG Trade, European Commission, Brussels) spoke next. Unlike Stanford McCoy (Senior Vice President and Regional Policy Director, Motion Picture Association), who has no nightmares, Pedro still wakes up sweating when ACTA invades his dreams.  Pedro, who is negotiating the TTIP from the European side, stressed the need for stakeholder involvement when seeking to reach international trade deals, especially on their IP content, if they are to succeed, citing ACTA as a precedent from which lessons may be drawn. Pedro also spoke of the need to have decent IP laws of your own before you try exporting your legislation to other countries: the EU, conscious of this, has been revising and upgrading much of its own IP law -- the EU had a smart new Customs Regulation and the new trade mark package was well in hand.

Turning to ACTA, Pedro noted: "there is a need to think before engaging in things like this".  This Kat, who does not dissent from this sentiment, wonders where the perceived need to think disappeared to when ACTA was in its earliest stages, recalling that there was a near-unanimous call for precisely such thought from the IP community, who wondered why this call was never apparently heeded. Questioned by Hugh Hansen, Pedro said he preferred bilateral to plurilateral and international negotiations as a means of achieving the desired end of raising IP trading standards.

Wolf Meier-Ewert (Counsellor, Intellectual Property Division, WTO, Geneva) brought us up to speed on the World Trade Organization's activities since the Bali Ministerial Conference in 2013. IP and TRIPS were not exactly top of the agenda then, so there hasn't been any progress in resolving well-known stand-offs and deadlocks, but all live topics remain on the table for future contemplation. Wolf reminded us that the TRIPS compliancy date for least-developed countries has been extended to 2021 and "non-rollback" has been relegated from a binding requirement to a political commitment. He then rapidly summarised all manner of other positions and developments, assuring us that the WTO and the TRIPS Council still provides "much-needed transparency in the absence of substantive progress". Multilateral, plurinational and bilateral negotiations are not mutually exclusive, he concluded.

Michele Woods (Director, Copyright Law Division, World Intellectual Property Organization, Geneva) was the final speaker in this session. Michele, a Fordham regular, opened by talking about the Marrakesh Treaty on facilitating access to copyright-protected works for the blind and the visually impaired -- a triumph for multilateral negotiations, though it took a while to get there. This involved much cooperation between different regional groups, as well as stakeholder input at all stages of the (unusually open and often informal) negotiations. Success on treaties such as this, and the Beijing Treaty on audiovisual performances is encouraging, though these were both narrow and highly-focused subjects; it's not so easy do to the same with broader, more controversial topics.  Topics such as education, libraries and archives and disabilities other than visual ones are also up for discussion.  Finally, Michele asked whether a new treaty is always the necessary aim of WIPO's pre-legislative work: discussion of norms, information-sharing and obtaining a greater understanding are also important gains that can be achieved even if no new law evolves.

The session now opened up for general discussion, opened by Shira Perlmutter (Chief Policy Officer and Director for International Affairs, United States Patent and Trademark Office, Alexandria).  Shira agreed with Michele's comments on progress on narrow, focused topics but added this: both the Marrakesh and Beijing Treaties were directed at benefiting a class of persons for whom there was general sympathy (visually impaired and performers respectively). Further, WIPO is about more than just normative activities -- its success does not depend solely on creating IP treaties.

Next contribution from the audience came from Howard Knopf, who raised a topic that we'd all been wondering about: secrecy of negotiation. According to Probir, there is no issue: "we are transparent on a daily basis", even on the TPP -- even going as far as having a "TPP stakeholder day".  This all sounds very encouraging  but leaves this Kat puzzled. He still hasn't seen anything that purports to be a current text of the Trans-Pacific Partnership and wonders whether perhaps the words "secrecy" and "transparency" have taken on a different meaning with which he is unfamiliar. A further secrecy issue was raised by Annette Kur: that of enforcement of trade agreements, which also tends to be via non-transparent mechanisms. This is apparently "a key part of the architecture of our trade protection agreements" (per Probit Mehta) and are a common feature of bilateral trade agreements (per Pedro Velasco Martins).  So that's all right, then ...

The EPO Rules on Strikes Revealed to Merpel

This year, Merpel decided to take a combined Passover and Easter vacation touring round the sites of the European Patent Office.  On her travels, she happened across a copy of the EPO Service Regulations and the Circular On Strikes (Circular 347).  Attentive readers will recall that the final demand of the PEACES manifesto which lay behind the EPO strikes in March and April was "withdrawal of Circ. 347 (new strike regulations)".  The problem was, Merpel did not know precisely what the offending circular said.  Now, however, all can be revealed.  Comments in brackets from Merpel in the time-honoured format.

Firstly, Article 30a of the Service Regulations:

Merpel's idea of a strike
Right to Strike

(1) All employees have the right to strike. [that's nice, says Merpel]

(2) A strike is defined as a collective and concerted work stoppage for a limited duration related to the conditions of employment.

(3) A Staff Committee, an association of employees or a group of employees may call for a strike.

(4) The decision to start a strike shall be the result of a vote by the employees. [All, of them, apparently, even the President himself - not only Union members]

(5) A strike shall be notified in advance to the President of the Office. The prior notice shall at least specify the grounds for having resort to the strike as well as the scope, beginning and duration of the strike.

(6) Employees shall inform the Office about their participation in a strike.

(7) The freedom to work of non-strikers shall be respected.

(8) Strike participation shall lead to a deduction remuneration. [That's a pity]

(9) The President of the Office may take any appropriate measures, including requisitioning of employees, to guarantee the minimum functioning of the Office as well as the security of the Office’s employees and property.

(10) The President of the Office may lay down further terms and conditions for the application of this Article to all employees; these shall cover inter alia the maximum strike duration and the voting process.

Pursuant to paragraph 10, the President has issued Circular 347, as follows:

Circular on Strikes

The President of the European Patent Office;

Having regard to the European Patent Convention, and in particular Article 10 thereof;

Having regard to the Service Regulations for permanent employees of the European Patent Office, and notably Articles 30, 30a, 63 and 65 thereof;

Having consulted the General Advisory Committee;

Recognising the right to strike, whilst having regard to the need for specific terms and conditions for its exercise in order to ensure a proper functioning of the Office;

Considering that a strike should be a proportionate action of last resort;

Has decided as follows:


Guidelines applicable in the event of strike

A. Definition

1. Strike

A strike is defined in Article 30a(2) of the Service Regulations.
Industrial actions which are not a collective and concerted work stoppage such as go-slow or work-to-rule actions, shall not be considered as a strike. 
The protection granted by the right to strike does not apply to employees participating in industrial actions other than a strike.  [This seems to mean that no industrial action other than a full strike is permitted at all]

B. Exercising the right to strike

2. Call for a strike

A Staff Committee (Central Staff Committee or a local section), an association of employees, or a group of employees representing at least 10% of all EPO employees may decide to call for a strike.

3. Decision to start a strike

The start of a strike shall be the result of a vote by the employees entitled to vote.
Entitled to vote are the active employees either office-wide or at sites concerned by the strike which has been called for. [As mentioned above, that is all of them, including the President.]
The voting process shall be organised and completed by the Office within a maximum of one month following the decision to call for strike. [In any other institution it would be odd for the employer to organise the strike vote.  But this is the EPO.] The voters’ confidentiality shall be guaranteed. [Merpel is sure that is a relief to employees] Employees not able to vote personally shall have the possibility to vote by proxy. An employee can be given only one proxy vote.
The voting process shall be supervised by a committee composes of two employees designated by the resident and two employees designated by the Central Staff Committee on an ad hoc basis.
To be valid, at least 40% of the employees entitled to vote shall participate in the ballot. The decision to start the strike has to be approved by a majority of more than 50% of the voters. [This seems to set a rather high hurdle to achieve the necessary quorum.  The majority is, however, precisely that - a majority]

4. Prior notice

Pursuant to Article 30a(5) of the Service Regulations, prior notice of a strike shall be given to the President at least five working days before the commencement of the strike action.
As regards the scope of the strike, the notice shall indicate which sites of the Office are concerned.
The duration of the strike shall not exceed one month starting from the date indicated in the prior notice as the beginning of the strike. Beyond this maximum duration, any new strike shall be organised in compliance with Article 30a of the Service Regulations.

5. Declaration of participation in a strike

Employees participating in a strike shall inform their immediate superior and shall register via an electronic self-registration tool made available by the Office. The immediate superior will have access to the self-registration tool. [Voting for a strike may be confidential, but an employee can hardly avoid revealing their participation in the strike]
The registration shall occur before or, at the latest, on the day of the strike.
Employees may be considered on unauthorised absence within the meaning of Article 63 of the Service Regulations if they were not at their workplace during a strike action, did not register and did not inform their immediate superior of their absence from work.

6. Deduction of remuneration

For each working day during which an employee participated in a strike, the Office will apply a deductions of the monthly remuneration, in accordance with Article 65(1)(c) of the Service Regulations.
For participation in a strike for more than four hours in a single working day, the Office will apply a deduction of 1/20th of the monthly remuneration.
For participation in a strike for four hours or less in a single working day, the Office will apply a deduction of 1/40th of the monthly remuneration.
For staff working part-time, the deduction will be adjusted proportionally.
The basis for calculating the deduction is the remuneration defined in Article 64(2) of the Service Regulations.
A strike participant remains covered by the social security scheme during strike and therefore continues to contribute in full to the scheme.

C. Entry into force

This decision shall enter into force on 1 July 2013.



So now we know.  Merpel is very happy that this is clarified.


Wednesday, 23 April 2014

Wednesday whimsies

World IP Day 1. This Kat has heard from his friends at Edward Elgar Publishing that, in honour of World Intellectual Property Day on 26 April, they are offering a 35% discount on books published in the Elgar 'Research Handbooks in IP' series. Anyone wishing to take advantage of the discount price just has to email sales@e-elgar.co.uk with the code WIPD35 and give details of the book they'd like to buy. Books published in the series are below:
Research Handbook on Intellectual Property Licensing (edited by Jacques de Werra)

Criminal Enforcement of Intellectual Property (edited by Christophe Geiger)


The Law and Theory of Trade Secrecy (edited by Rochelle C. Dreyfuss and Katherine J. Strandburg)


Research Handbook on the Future of EU Copyright (edited by Estelle Derclaye)


Trade Mark Law and Theory (edited by Graeme B. Dinwoodie, University of Oxford, UK and Mark D. Janis)


Copyright Law (edited by Paul Torremans)


Patent Law and Theory (edited by Toshiko Takenaka).
If you fancy buying any of these books (details of which can be retrieved from the publisher's website here), this is your golden opportunity to save a bit in the process. There's no clue right now as to when this offer ends, but why take chances?



World IP Day 2.  This is just a reminder that this year's theme for World Intellectual Property Day, chosen by the World Intellectual Property Organization itself, is "A Global Passion", this being a celebration of innovation and creativity in the film industry. Via its dedicated World IP Day website, here, WIPO encourages everyone to mark the day in an appropriately festive manner.  You can also visit the World IP Day Facebook page and follow events on Twitter using the #worldipday hashtag.  Once you've exhausted these delightful prospects, if you are a film buff you can tackle Managing Intellectual Property magazine's World IP Day Movie Quiz, which you can find here.  Merpel says she knew all the right answers really, but just couldn't quite remember them all at the time ...



Bucerius links with Hastings. The new summer programme at the Bucerius Law School, Hamburg, Germany, has just been announced. The subject is Transnational IP Law and Licensing and it takes place from 22 July 22 to 8 August 2014. Details can be obtained here. This year's event is a collaboration between the Bucerius Law School and UC Hastings, San Francisco, so not surprisingly it features faculty from both the US and Europe. According to Dana Beldiman (whom you can mail at dana.beldiman@law-school.de with all your questions):
"It is intended for young practitioners and upper division law students who have had some exposure to IP. The topics cover IP concepts from a comparative perspective, as relevant to licensing, as well as the legal and practical aspects of international licensing transactions, including relevant competition/anti-trust law. It concludes with a negotiation workshop, during which small groups of students negotiate the key terms of a technology licence agreement". 


New podcast coming up. Rolf Claessen has emailed the IPKat with the exciting news that he is launching a new podcast, IP Fridays, which you will be able to enjoy here.  IP Fridays, which goes live on 2 May 2014 -- just before the INTA Annual Meeting -- is co-hosted by Ken Suzan and will address all topics related to intellectual property.


What's on at the Red Hat? The University of Amsterdam’s Institute for Information Law is offering two Summer Courses on International Copyright Law and Privacy Law & Policy, from 7 to 11 July.  The 15th annual International Copyright Law Summer Course focuses on recent developments and broader trends in copyright law. Full details of the course's objectives, faculty and registration are just one click away, here.  As if that's not enough, the 2nd annual Privacy Law and Policy Summer Course tackles privacy law and policy related to the internet, electronic communications and online and social media. Again, full details of the course's objectives, faculty and registration are here.  The venue is  De Rode Hoed (the Red Hat), on the banks of Amsterdam's historic Keizersgracht. If you can't wait for these goodies, the Information Influx conference is being held the week before the two Summer Courses.


“Quentin, come here!” -- a plea for Tarantino’s copyright litigation in Europe


Feeling depressed for copyright infringement?
Many people may know the sad story of Quentin Tarantino’s ‘Hateful Eight’. For those who don’t, ‘Hateful Eight’ is [or might have been] the American director’s next movie. After finishing the first draft of the script, Quentin confidentially gave the document to six trusted friends to find out how much they liked it. Instead of obtaining feedback like “Sergio Leone would have never used so much tomato sauce”, “Japan again? Seriously?!?” or “cartoons: never considered it?”, the American director found his script leaked on an American gossip website named Gawker. Not exactly “on”, actually: indeed, Gawker just provided the hyperlink to another website that hosts Tarantino’s script on its servers. That threw the director into the deepest sadness. He told to the Deadline:

"I'm very, very depressed … I finished a script, a first draft, and I didn't mean to shoot it until next winter, a year from now. I gave it to six people, and apparently it's gotten out today."

As anyone knows, the best therapy against depression is filing lawsuits, and that is what Quentin did. After racking his brains in vain to identify the bad apple that provided the gossip website with the precious script, Quentin cut the Gordian knot and directly sued Gawker for copyright infringement at the US District Court for the Central District of California. If all this sounds sad, even sadder appears to be the first instance Court’s outcome. As Variety reports, some hours ago Judge john F. Walter held that Tarantino had failed to “adequately plead facts establishing direct infringement by a third party or facts that would demonstrate that Gawker had either caused, induced or materially contributed to the alleged direct infringement”, and that

“nowhere in these paragraphs or anywhere else in the Complaint does Plaintiff allege a single act of direct infringement committed by any member of the general public that would support Plaintiff’s claim for contributory infringement … instead, Plaintiff merely speculates that some direct infringement must have taken place. For example, Plaintiff's Complaint fails to allege the identity of a single third-party infringer, the date, the time, or the details of a single instance of third-party infringement, or, more importantly, how Defendant allegedly caused, induced, or materially contributed to the infringement by those third parties”

"Quentin, come here!"
The US Judge, however, allowed Tarantino to file an amendment for his contributory infringement claim, which should be filed by the first of May. This Kat feels deep sympathy for the director’s cause and for depression in general. As a few days remain before the first of May deadline expires, he thus asked Merpel to wear the sexy black dress of Anita Ekberg in Fellini’s ‘La Dolce Vita’, dive into the Trevi Fountain and launch a heartfelt plea:

MARCELLO QUENTIN, COME HERE! COME TO DEFEND YOUR COPYRIGHT IN EUROPE!”

Quentin, we might not have as many surfers as California [which might not necessarily be a bad thing], but we know how to recognise a blatant infringement when we see one. And this is your case! Although you may not know it, thanks to the wisdom of International conventions such as Berne and TRIPs, you own copyright in your script here as well, and from the very moment of its creation [we have never requested registration for art works -- that sounds such a trade mark/patent thing, and the same word “copyrighted” is banned from the Continent]. Under the national treatment principle provided by those Treaties, Quentin, you will be treated like one of us – or even better, considered the proverbial European hospitality.


Not that Svensson.
It might be true that some of us are not familiar with the slippery approach to indirect liability for copyright infringement that you have in the US. But still, who cares -- we have Svensson! As football soccer passionate, Quentin, you will think this is about the Swedish Anders -- but it is not. Instead, it is a rather seminal decision of the Court of Justice of the European Union (‘CJEU’) rendered in February.  In that ruling, the CJEU implicitly held that providing hyperlinks to works whose diffusion was not authorised by the right holder amounts to a communication to the public via the EU exclusive right called “making available” [provided by Article 3(1) of the Infosoc Directive, if you fancy delving into it] and, therefore, to a copyright infringement [all you need to know about it is herehere and here].

Got it, Quentin? We would take your rights extremely seriously -- no need to “allege the identity of a single third-party infringer, the date, the time, or the details of a single instance of third-party infringement” or to explain “how Defendant allegedly caused, induced, or materially contributed to the infringement by those third parties”. Gawker provided the link to the platform that unlawfully hosts your work. You are not fine with that. That’s enough to establish copyright infringement in the EU -- and no need to worry about fair use!

Not that Pinckney.
And if you come to litigate in Europe, Quentin, also normally boring procedural issues may bring some great fun! In a 2013 decision on jurisdiction for copyright infringements committed online [the case is “Pinckney”, on which see here], for instance, the CJEU said that courts have jurisdiction to hear copyright infringement cases whenever the website providing the infringing work is “accessible within the jurisdiction of the court seised”. As the link to your script that Gawker provides for is accessible from all EU Countries, thus, you just have to choose the EU State you like more, sharpen your [juridical] Hattori Hanzo sword and sue your enemies wherever you feel most comfortable [various and diverging natural scenarios, human beings, cuisines and types of weather and Judges available].

Why getting depressed for negative verdicts, after having had your work ingloriously stolen? Quentin, do the right thing! Quentin, come to Europe!


[Join the petition! #QuentincometoEurope, or #QCtEU or #whatsthematterwithJapan]



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