From March to September 2016 the team is joined by Guest Kats Emma Perot and Mike Mireles.

From April to September 2016 the team is also joined by InternKats Eleanor Wilson and Nick Smallwood.

Saturday, 27 August 2016

Do passive hosting providers commit acts of communication to the public in relation to third-party content?

Still on the leaked IA ...
This may not be just a good exam question for undergraduate IP law students [note to self: something for next year], but also lawyers and policy-makers currently discussing EU copyright reform.

As reported by this blog, earlier this week Statewatch leaked a draft version of the Commission Staff Working Document - Impact Assessment on the modernisation of EU copyright rules [it is however unclear whether the one leaked is the version currently being considered by the Commission].

The document is extremely interesting for various reasons. Among the things, the Commission addresses the problem of right holders facing great difficulties, or being unable, "
to negotiate with online service providers that store and give access to large amounts of protected content uploaded by their users. This results in right holders having limited control over the use and the remuneration for the use of their content." [p 124, the so called 'value gap'].

After describing the terms of the problem, the Commission notes [pp 128-129] the following:

"Under copyright law, right holders can exercise their right to authorize and exploit commercially the communication to the public of their works or other protected subject-matter, by the conclusion of licenses in return for payment of remuneration, if they so choose. When content is disseminated online, an act of communication to the public [within Article 3 of the InfoSoc Directive] takes place which may, depending on the circumstances, involve more than one actor. The Court of Justice of the European Union (CJEU) has not addressed the specific case of online services giving access to content uploaded by their users. With some exceptions, national case law is not very clear either as to who engages into an act of communication to the public when content is uploaded on a sharing website. As a result, a case by case assessment is needed for deciding who is communicating to the public."

Is this true however?

In my view [elaborated in this article], the current legislative framework - including at the CJEU level - already provides a response in this respect: passive [in the L'Oréal sense] hosting providers cannot be held primarily responsible for acts of communication to the public in relation to content provided by third parties and made available through their services.

Exercising at Reha Training
The Reha Training decision

With particularly regard to the right of communication to the public, this conclusion (applicable by analogy to other exclusive rights) appears supported by relevant CJEU case law, including the recent decision in Reha Training [here]

There the CJEU held that, in assessing the existence of an act of communication to the public, several criteria – each of which non-autonomous but rather interdependent in nature – should be taken into account. These criteria may come into consideration differently in different scenarios. This said, the concept of 'communication to the public' combines two cumulative elements: (1) an 'act of communication' that is (2) directed to a 'public'.

The first criterion, ie an ‘act of communication’, includes any transmission of a copyright work, irrespective of the medium used or the technical means employed. Each transmission or retransmission of a work that uses a specific technical means should be in principle individually authorised by the relevant rightholder.

Turning to the second criterion (that the communication at issue be directed to a ‘public’), the term 'public' refers to an indeterminate number of potential recipients, and also implies a fairly large number of people (ie above de minimis). In addition, to fall within the concept of 'communication to the public' a work must be directed to a 'new public", ie an audience that was not taken into account by the relevant rightholder when he authorised the initial communication of the work.In this context, it is necessary to take into consideration the indispensable role of the user without whom the ‘new public’ would not have access to the copyright work in question. More specifically,  

“in order for there to be a communication to the public, that user must, in full knowledge of the consequences of its actions, give access to the … protected work to an additional public and that it appears thereby that, in the absence of that intervention those ‘new’ viewers are unable to enjoy the … works”. [para 46]

Although to have an act of communication to the public several criteria should be considered, it appears that the indispensable role of the user may be a conditio sine qua non for Article 3(1) of the InfoSoc Directive to apply, at least in the interpretation of Article 3(1) recently provided by Advocate General (AG) Wathelet in GS Media [here].

GS Media: where it all started ...
The AG Opinion in GS Media

GS Media is a reference for a preliminary ruling from the Dutch Supreme Court, seeking clarification on whether linking to unlicensed content is to be regarded as an act of communication to the public. 

In his Opinion AG Wathelet reviewed the two relevant cumulative criteria under Article 3(1) of the InfoSoc Directive: (1) an ‘act of communication’ of a work, (2) directed to a ‘public’. In relation to the former in particular, according to the AG in order to establish an act of communication, “the intervention of the ‘hyperlinker’ must be vital or indispensable in order to benefit from or enjoy works.”

Hyperlinks posted on a website that direct to copyright works freely accessible on another website cannot be classified as an ‘act of communication’: the intervention of the operator of the website that posts the hyperlinks is not indispensable to the making available of the works in question to users. It is rather the intervention of the operator of the website that posts the protected works that is indispensable within Article 3(1) of the InfoSoc Directive.


Further to the decision in Reha Training and the AG Opinion in GS Media [yet, it is to be seen whether the CJEU agrees with AG ...], it is arguable that – in the case of a copyright work made available through the service of a passive online intermediary (host) – the latter would not commit an act of (unauthorised) communication to the public (potentially giving rise to primary liability for copyright infringement), because the role that is ‘indispensable’ in the whole process is the one of the third-party/uploader, rather than that of the hosting provider. 

A passive hosting provider does not do any of the acts restricted by copyright per se, nor does it usually authorise others to do so. 

This conclusion is in line with relevant case law at the level of individual Member States.

The situation would be different if: (i) the provider at hand authorised – contrary to current practices and content of most terms of service – users to upload and share content independently from whether these acts would infringe third-party rights; (ii) the provider was aware of the infringing nature of the content uploaded; or (iii) the provider played an ‘active role’ in the L’Oréal sense. These scenarios would however lead to situations similar to the ones envisaged – and sanctioned – by the current wording of Article 14 of the Ecommerce Directive.


For those interested, a more detailed discussion is presented in this article of mine. 

Friday, 26 August 2016

The branding and rebranding of infidelity

How far can rebranding take a company after it has experienced a serious challenge to its brand, especially when your branded service
is infidelity. If you are Avid Life Media, Inc., the answer may not be encouraging. Kat readers may not recognize Avid Life Media, but they are more likely to be familiar with the website under which the company used to provide its services—Ashley Madison. Under this brand, the company offered so-called infidelity dating services. Whatever one thinks about the service itself, all would likely agree that the success of the site rests both on discretion of information and the security of the data provided by its customers, and that the company adheres to acceptable standards of business practice. Call this customer credibility. Alas, this credibility has been shattered.

Accompanied by much media attention, Ashley Madison in 2015 suffered the embarrassment of hackers leaking information about 37,000,000 users to the public. After this occurred, there were reports that the site had maintained substandard data security, this despite the fact that the site contained trust marks, including an icon called “trusted security award” (since removed), attesting to the site’s high level of security. Public investigations have followed regarding the operation of the website. If this is not enough, it is reported that class action suits have been filed in the U.S. and Canada alleging that the site made use of computer programs, called “fembots”, to impersonate profiles of real women, presumably to encourage paid membership.

Against this backdrop Avid Life Media announced last month that it would engage in a wide-spread rebranding of the site and service. Start with the name itself. “Ashley Madison” is gone; in its place, the site will be known as “ruby”. As the company stated---
"Modern relationships are multi-faceted and that's why we chose ruby as our new name," says newly appointed President James Millership. "We like that ruby has a sensual, feminine quality, connotes value and fits with the fresh start our company is undergoing," he says.
Moreover, the company has replaced its tagline— “Life is short. Have an Affair”, with the slogan--“Find Your Moment”. As the CEO of the company, Rob Segal explains—
“[Life is Short. Have an Affair] … was a limiting label that's out-dated and doesn't speak to the wide variety of connections people find on Ashley Madison," says Segal. "Close to 45% of our members are single, over 50% are attached and they are interested in a wide range of experiences. While remaining true to our roots, Ashley Madison needs to evolve, grow and attune to modern sexuality in 2016," he says.
One can question just how far rebranding the name and tagline of the service and a pivot in the mission statement of the service can take Avid Life Media in light of the continuing legal and regulatory challenges, and the adverse publicity that it generates. While the circumstances are radically different, it is still worthwhile considering the well-known response by Johnson & Johnson to the commercial survival of the market-leader Tylenol brand in October 1982, in the face of the death of seven people in Chicago reportedly after having taken extra-strength Tylenol pain-killer. The cause of these deaths was the tampering by an unknown person, who put lethal quantities of cyanide into the capsules. The immediate impact as reported was that the market share of Tylenol dropped from 37% to only 7%. The company was faced with how to react to this tragedy without doing permanent harm to both the product and the company brand itself. The steps it took included the following:

1. Immediate recall of the Tylenol product from the shelves.

2. Formulate a strategy to re-introduce the product to the market, under the same product name, to seek and recover consumer confidence by--
(i) Providing for triple-seal tamper resistant packaging (being the first company to do so).

(ii) Offering an easily obtained $2.50 off coupon on the purchase of the product.

(iii) Introduce a new program to provide discounted pricing.

(iv) Send thousands of sales personnel to meet with the medical community.

(v) Be credible in conveying the message that the company’s first duty was to maintain the safety of the public in connection with the company’s products.
The lessons of the J&J Tylenol story have been studied and applied many times, sometimes successfully and sometimes less so. The ultimate
test is whether the company has regained its credibility in the eyes of the consumer. Changing, or maintaining, one’s brand name; changing, or maintaining, one’s mission statement, may help in blunting the negative connotations associated with the company, after a crisis has occurred, but they are not direct instruments for regaining consumer confidence. How ruby/Avid Life Media deals with the more existential elements of reestablishing customer confidence has just begun.

Is hosting providers' safe harbour the real problem of copyright owners? A new article

Finding a safe harbour?
A mission that can wait
The Ecommerce Directive envisages a number of immunities (known as safe harbours) that shield internet service providers (ISPs) from liability for third-party content that they transmit, cache or host.

In the context of its Digital Single Market Strategy [Katposts here] the EU Commission is currently engaged in a discussion of whether the liability principles and rules contained in that EU directive for the benefit of ISPs should be amended [the next EU copyright package is awaited for release in the second half of September - see here for a leaked version].

With specific regard to copyright, one of the principal concerns relates to a particular type of ISP, ie hosting providers. 

Unlicensed hosting providers have been increasingly said to invoke the relevant safe harbour immunity in the EU Ecommerce Directive [Article 14] lacking the conditions for its application. This alleged abuse has led to a distortion of the online marketplace and the resulting 'value gap' indicated by some rightholders.

A proposal has been recently advanced in France advocating the removal – at the EU level – of the safe harbour protection for hosting providers that give access to copyright works. This would be necessary to enable the effective enforcement of copyright and related rights in the digital environment, particularly on platforms that disseminate protected content. In particular, the French document considers that the Court of Justice of the European Union (CJEU) has erred in its interpretation and application of relevant principles of online intermediary liability.

I have recently completed a new article [just released as a CREATe Working Paper and due for publication in the European Intellectual Property Review], in which I address some of the points raised by the French proposal. 

My main conclusions are that:
  • Contrary to the view of the French document, the CJEU has correctly applied relevant provisions in the Ecommerce Directive;
  • The removal of the immunity in Article 14 of the Ecommerce Directive for hosting providers that give access to copyright works would not provide rightholders with significantly greater protection than the one already enjoyed under the existing legislative framework, at least as far as their primarily liability is concerned. This is also because the current understanding of the right of communication to the public within Article 3 of the InfoSoc Directive does not seem to suggest that intermediaries otherwise protected by the Article 14 safe harbour could be held primarily liable for the doing of unauthorised acts of communication to the public.
Overall, the current framework already sets an adequate degree of protection: what is required is a rigorous application by national courts of the principles enshrined in the Ecommerce Directive, as interpreted by the CJEU.

Readers' feedback and views are very welcome! My piece is available here.

Thursday, 25 August 2016

SUPER-BREAKING NEWS: Leaked draft Impact Assessment shows that Commission intends to introduce new mandatory exceptions, address value gap and introduce related right for publishers

Brussels correspondent:
Mystery Kat
What does the EU Commission intend to propose when it releases its next copyright package next month?

This is a question that has been haunting EU copyright enthusiasts for a few months now. 

While we wait for the official documents, Statewatch has just leaked a draft version of the Commission Staff Working Document - Impact Assessment on the modernisation of EU copyright rules [here's the link].

While this draft document is composed of nearly 200 pages and IT IS UNCLEAR WHETHER IT IS THE VERSION CURRENTLY BEING CONSIDERED BY THE COMMISSION, these - in a nutshell - are the possible future moves of the Commission:

Access to content

Ensuring wider access to online transmissions of broadcasting organisations by applying country of origin rule to the clearing of rights for broadcasters' online services ancillary to their initial broadcast [this is not surprising: I had suggested something along these lines a while ago].


Introducing three new mandatory [!] exceptions: 
  1. an exception with a cross-border effect covering digital and online uses in the context of illustration for teaching, with the option for Member States to make this (partially or totally) subject to the availability of licences; 
  2. an exception for text and data mining applicable to public interest research organisations covering text and data mining for the purposes of both non-commercial and commercial scientific research; 
  3. an exception for preservation purposes by cultural heritage institutions.
Value gap

In relation to online services storing and giving access to user uploaded content, imposing an obligation on them to seek, in good faith, to conclude agreements with right holders for the use of their content and to put in place appropriate and proportionate measures, in cooperation with right holders, to avoid unauthorized content in their services.

Rights in publications

Introducing in EU law a related right covering online uses of news publications and introducing the possibility for Member States to provide that publishers may claim compensation for uses under an exception.


A more detailed analysis will follow soon [see here for an early response]: stay tuned!

Linking & Copyright rapid response event on 13 September: come join us!

Where it all started ...
Is linking to unlicensed content a potential infringement of copyright? 

Following the (controversial) decisions in Svensson [here and here] and BestWater [see here for my table summarising the current state of the art], we will know the answer on 8 September 2016, when the Court of Justice of the European Union (CJEU) issues its much-awaited decision in GS Media, C-160/15

This is a reference for a preliminary ruling from the Dutch Supreme Court. It was made in the context of proceedings between Sanoma (the publisher of Playboy magazine) and GS Media, concerning the publication by the latter on a website that it operates (GeenSijl) of hyperlinks to other websites hosting unpublished photographs taken for a forthcoming issue of Playboy.

Litigation ensued before Dutch courts and eventually the Supreme Court decided to make a reference for a preliminary ruling to the CJEU, asking whether the provision of a hyperlink to a work made available on a certain website without the initial consent of the relevant rightholder and where it is freely accessible is to be regarded as an act of communication to the public.

Not to miss a second:
already on the move to the event venue
In his Opinion on 7 April 2016, Advocate General (AG) Wathelet answered in the negative, also holding that it is not important whether the person who posts on a website a hyperlink to another website on which copyright works are freely accessible to the public is or ought to be aware that the relevant rightholder has not authorised the initial communication. More generally, the AG suggested that linking should not fall within the scope of copyright protection.


The IPKat is partnering with Bristows for a free rapid response event to be held on Tuesday 13 September at the London offices of Bristows.

Come join us and a panel of experts, to discuss the impact of the judgment on EU and UK copyright laws!

Here's the programme:  
  • 5:30 Registration
  • 6:00 Panel discussion
  • 7:30 Drinks and canapés
This rapid response event will provide a forum in which to discuss the implications of this important decision. The format will be that of an informal panel discussion, in which panelists and attendees alike will share their views.

Moderated by Mark Brown (Bristows), the panel will feature Eleonora Rosati (University of Southampton and IPKat), Nicholas Saunders (Brick Court Chambers), and Theo Savvides (Bristows).

Click here to register! 

Wednesday, 24 August 2016

Singapore Government launches public consultation on major copyright reform

Beautiful Singapore
Singapore is currently engaged in a significant reform of its Copyright ActIn this context, yesterday Government launched a public consultation [open until 24 October 2016, 5 pm GMT+8] to seek feedback on proposed changes to this country's copyright regime. This is the full consultation paper.

In particular, views are sought on the following issues:

Formalities: whether Singapore should have a voluntary system of copyright registration, and details associated with such a copyright registry [it is important to recall that the no formalities rule contained in Article 5(2) of the Berne Convention only applies in an international - not domestic - context].

First ownership: whether creators of certain commissioned works should have first ownership of the copyright in the works. 
Duration: whether the duration of copyright protection for unpublished works should be limited to : (i) 70 years after the death of the creator for literary, musical, dramatic and artistic works, and (ii) 70 years after first publication for sound recordings, cinematograph films and works with an unknown creator if they are published within 50 years of creation, failing which, they will only be protected for 70 years after creation. 
Moral rights: whether there should be a new right of attribution, and details associated with this right [the answer to this should be yes, at least to comply fully with Article 6-bis of the Berne Convention - Singapore joined the Berne Union in 1998].
Information: whether the relationship between creators and publishers/producers can be helped by an information website for creators. 
Exceptions and contractual override: whether certain exceptions in the Copyright Act should be allowed to be restricted by contractual terms, and which exceptions would those be [UK-based readers will promptly recall that the exceptions introduced into the Copyright, Designs and Patents Act in 2014 - including parodyquotation and the now defunct private copying - prevent contractual override]
Fair dealing [Singapore introduced an open-ended exception akin to fair use, yet called fair dealing, in 2010: see s35 of the Copyright Act]: whether the fifth factor (from the exception of “fair use”), which relates to obtaining a copy of the work within a reasonable time at an ordinary commercial price ["the possibility of obtaining the work or adaptation within a reasonable time at an ordinary commercial price"], should be removed.
Orphan works: whether orphan works should be addressed by a limitation of remedies approach, a registry approach with upfront fees, or a modified registry approach with fees paid direct to the copyright owner. 
Text and data mining [a specific exception for non-commercial uses was introduced into UK law in 2014, and is currently under discussion for introduction at the EU level]: whether there should be a new exception for copying of works for the purposes of data analysis to facilitate text and data mining. 
Billy has already started
working on his responses,
though he has not been 

too productive so far
Education: whether there should be a new exception for giving or receiving instruction in the educational context, and whether the threshold for copying by or on the premise of a non-profit educational institution should be changed from 5% to 10%. 
Libraries and archives: whether the current exceptions for libraries and archives should be simplified and redrafted. 
Museums and galleries: whether there should be new exceptions for museums and galleries.
Disabilities [again, in the UK context, the relevant exception was broadened in 2014; in this article, among other things, I had argued that the previous, limited, scope of the UK exception was contrary to EU law]: whether certain technical amendments should be made in relation to provisions benefiting those who are blind, visually impaired, or otherwise print disabled. 
IPOS: Whether there should be a new exception for use by the Intellectual Property Office of Singapore (IPOS) of non-patent literature in patent search and examination work. 
Government: whether there should be a new exception for materials on official government registers. 
TPMs: whether the current list of allowable circumventions of technological protection measures (TPMs) should be retained, and what new allowable circumventions of technological protection measures should be put in place [this is not a minor point of the consultation: under review by the Singapore Government there is in fact (and among other things) the lawfulness of using VPNs to circumvent geo-blocks to access copyright content; the debate on VPNs is not limited to Singapore, but it is rather being undertaken in several countries, eg - recently - Australia].

Those interested in answering the public consultation can do so here, or by post to the following address:

Intellectual Property Policy Division
Ministry of Law
100 High Street
#08-02, The Treasury
Singapore 179434

Tuesday, 23 August 2016

Never Too Late: If you missed the IPKat last week

Did the last week of IPKat pass you by? Here is the 110th edition of Never Too Late with what you missed.

* Life after Cartier: The future of blocking injunctions – Simmons & Simmons Rapid Response EventKatfriend Jonathan Sharples looks back at our rapid response event discussing the Cartier decision and the availability of blocking injunctions to prevent trade mark infringement.

The InfoSoc Directive was found to introduce changes allowing graduated response systems as a form of injunction - independently of a finding of their liability, said Hogan J in Sony Music Entertainment Ireland Ltd & Ors v UPC Communications Ireland Ltd. Eleonora Rosati explains the judgment and its place in the context of EU law.

* Wednesday Whimsies
New EUIPO research on infringing business models, ITMA's Autumn seminar, UNION-IP events and more...

Andy Lee brings us an example of paying non-monetary issue fees (in relation to infringement) in practice, in this guest post. 

The US Supreme Court refused to review a big case concerning patentability of a diagnostic method - but on the bright side the US Court of Appeals for the Federal Circuit may have just cleared up some uncertainty to the Alice/Mayo test. Mike Mireles explains all.

*  After the split: so is it HP, Hewlett Packard, Hewlett Packard Enterprise or what?
Neil Wilkof ponders the legacy of brands following a corporate split or acquisition. 


Never too late 109 [week ending on Sunday 17 August] EPLAW mock trials | CJEU "flat rate" reimbursement of legal fees in C-57/15 | Transmission or retransmission? | Judgement in Actavis v ICOS | Collective management of copyright for images displayed by search engines | Corporates and #Rio2016 | Global branding

Never too late 108 [week ending on Sunday 10 August] Limerick Competition - the results | UK finally speaks out about the "facts" of IP post Brexit| Is "Deadwood really cluttering up trade mark registers? | Weekly roundup: Friday Fun 

Never too late 107 [week ending on Sunday 31 July] Article 28 declarations |Costs of ISP blocking injunctions |Friday Fantasies, featuring legal challenges to Brexit and  more |Huawei v Samsung |Hospira v Genentech |Questions on Article 3(b) SPC referred to CJEU |Book Review: Trade Secret Protection |Pokémon Go

Never too late 106 [week ending on Sunday 24 July] | Innovation & IPRs in China & India: Book Review Paris Tribunal rejects request to filter 'torrent' searches on Bing | Red colour mark reinstated in Germany | Update on Napp v Dr Reddy & Sandoz Litgation | Patent jurisdiction tussle in Rhodia v Molycorp | Decision on ISP liability from Rome | Copyright in the Animal Kingdom 

Monday, 22 August 2016

New IP law titles: from EU copyright to ISP liability

For some odd reasons, it seems that many good IP titles are being released at a time of the year when - at least in the Northern hemisphere - the attention for anything that relates to IP is increasingly and acutely replaced by a slightly stronger interest for holidays, sunshine, and the outdoors.

This has been also the fate of the following excellent titles:

The much-awaited second edition of Concise European Copyright Law, edited by Thomas Dreier and Bernt Hugenholtz (Kluwer:2016)

Despite the pretty appearance and title that might induce you into thinking that this is just concise overview of EU copyright law, be reassured that it's not [and not just because the tome exceeds 700 pages]

I first encountered this book (at that time in its first edition) as a student. It was hiding on a library shelf, pressed in between much heavier [in every sense] and thicker copyright books. The fame of the editors prompted me to open and read it: the contributors' ability to analyse relevant EU copyright directives in an essential yet thorough fashion left me very much impressed, and made me realise once again how those who truly master a certain discipline are able to say everything in a way that makes you think that the relevant concepts are actually easy to grasp. The truth is instead that it is not concepts per se which are easy, but it is rather their own explanation which possesses the clarity that can follow a complete understanding.

The second edition has retained this distinctive quality, which makes it a pleasure to read and consult. 

Bonus feature: In my own opinion, the commentary to the InfoSoc Directive (by Stefan Bechtold) is probably one of the most comprehensive and interesting ones currently available.

The Liability of Internet Intermediaries by Jaani Riordan (OUP:2016)

As the author observes in his preface, this is the first book dedicated to the doctrines and remedies which regulate the legal liability of internet intermediaries (or ISPs). 

Developed out Riordan's doctoral dissertation at Oxford, this book will appeal to academics and practitioners alike.

Also thanks to its rational and clear structure, the author has succeeded in a fairly challenging task (that few so far have completed successfully), ie explaining the law of ISP liability by showing also a thorough understanding of the functioning and ongoing development of underlying technologies.

Following an inquiry into relevant legal principles, the book also offers specific insights into topical areas of the law, including - amongst others - data protection, copyright, and defamation.

A particularly interesting section is the one devoted to Member States' case law in the area of website blocking. This is a must-read chapter that - if nothing else - shows how fragmented the relevant and seemingly harmonised ISP liability framework [and relevant remedies against ISPs] remains within the EU.  

Friday, 19 August 2016

After the split: so is it HP, Hewlett Packard, Hewlett Packard Enterprise or what?

Sometimes this Kat is puzzled by the selection of a company name (or names) after a corporate split, spin-off or acquisition. This Kat has
previously shared his bemusement over the selection of the corporate name, Mondelēz International, adopted in 2012 in connection with the spin-off of Kraft Food’s global snack and food brands (as reported on Wikipedia, it “… was suggested by Kraft Foods employees and is a combination of the words for "world" and "delicious" in Romance languages”). Uncertain in its pronunciation and difficult to store in one’s long-term memory, this Kat still wonders. One thing, however, can be said in defense of Mondelēz, after sorting out what the company name refers to, there is never any confusion between it and any other Kraft (or indeed any other) entity. The same cannot necessarily be said about the company names that were selected in connection with the 2015 split of the once-known Hewlett-Packard Company.

In that connection, this Kat recently met an acquaintance, who has a long-time connection with the company. Over a cup of coffee, this Kat innocently asked: “So which HP company do you now work for. And who is running the company”? My acquaintance fumbled his response to both questions, before ultimately coming up with the correct answers. As Kat readers may be aware, the former Hewlett-Packard Company has split into two separate companies. The then existing company changed its name to HP Inc. and retained the company’s personal computer and legacy business (with its ticker remaining HPQ), while a new company was created, called Hewlett Packard Enterprise Co. (with its ticker symbol “HPE”) and consisting of four divisions—Enterprise Group, Services, and Software and Financial Services. In May 2016, it was announced that Hewlett Packard Enterprise would sell its Enterprise Services division to Computer Sciences Corporation. This transaction is to be completed by March 2017; in the meantime, it does not appear that a name has been chosen for this new company.

So what we have is that the existing company has discarded the name Hewlett-Packard Company in favor of HP Inc. (“HP” being a name and mark long associated with the company). The second company is called Hewlett Packard Enterprise Company. (Kat readers will carefully note that the hyphen between Hewlett and Packard has been discarded, and its full presentation, it also includes a logo in the outline form of a green rectangle.) The two companies still both roughly share the Hewlett-Packard nomenclature history.

But it does not have to be this way. Consider Accenture, by some metrics the world’s largest consulting company. Accenture began as the business and technology division of the accounting firm Arthur Andersen and then became known as Andersen Consulting. Tension between the consulting and accounting practices led Andersen Consulting to change its name in 2001 to Accenture. In that same year, the Enron scandal broke, implicating Andersen Accounting and leading to its virtual demise. While the Andersen name will forever be associated with the Enron scandal, Accenture (no whiff of the word “Andersen” in its name) was recently recognized by Fortune magazine among the world’s most admired information technology services companies.

For sure, there may have been a bit of luck involved, since one of the terms of the arbitration award in the dispute between the two companies was that the latter could no longer use the Andersen name—leading to Accenture. But it also points to the risk in sharing a common name, when the two entities are separate and independent, and each goes off in its own business direction. One wonders how Andersen Consulting would have played out if it had retained the name Andersen as the accounting company was being dragged through the mud of Enron.

Regarding Hewlett Packard Enterprise (or HP or HPE or whatever), the issue is in no way connected to negative spill-overs, such as Enron, but rather what kind of corporate identities are being created. Truth be told, trying to keep straight the two companies by name and fields of activity is a constant challenge. One gets the sense that, at least for the moment, those concerned at the two companies seem to want a bit of confusion in their identities. Consider the following, which appears on the Hewlett Packard Enterprise website--
“Hewlett Packard has been in the innovation business for more than 75 years. Our vast intellectual property portfolio and global research and development capabilities are part of an innovation roadmap designed to help organizations of all sizes – from global enterprises to local startups – transition from traditional technology platforms to the IT systems of the future.”
Even after the split, what seems most important is that the two companies both continue to recall their common Hewlett Packard heritage, in haec verba. Whether this is an effective naming strategy in the longer term will remain to be seen.

Never Too Late: If You Missed the IPKat Last Week #Nevertoolate

Uber and Netflix: The challenge of becoming a global brand

'Tell JK I'm still rolling, tell Russell I'm a brand'. Becoming a global brand isn't as easy as Tine Tempah makes it sound - in this article, Neil Wilkof considers the difficulties Uber and Netflix have faced in their efforts to expand into new territories.

Are companies allowed to tweet about #Rio2016? 

Katfriend Oliver Löffel (Löffel Abrar) analyses the legal perils of tweeting using the hashtag #Rio2016 and explores how the position varies in different territories.

Compulsory collective management of copyright for images displayed by search engines: a French cultural exception to EU law 

Katfriend Olivia Klimis and Nicolas Lescot (De Gaulle Fleurance & Associés) take a look at new provisions in the French Intellectual Property Code (IPC) that regulate the publication of a plastic, graphic or photographic work by an online communication service. Do the new provisions comply with EU law? The post picks up where Eleonora Rosati left off in her post on the 2012 French legislation that allows  and regulates the digital exploitation of out-of-print 20th century books

BREAKING: Puns at the ready, Mr Justice Birss delivers epic CIALIS judgment 

At an eye watering 113 pages consisting of 491 paragraphs, Justice Birss's decision in Actavis v ICOS [2016] EWHC 1955 is recommended beach reading for those ready to jet off the south of France for their August holidays.

Norwegian Supreme Court: no "retransmission" without "transmission"

The Supreme Court of Norway has ruled that a TV cable distributor was not retransmitting broadcasts when it received content via an encrypted fibre connection and proceeded to broadcast it to the public. Ellie Wilson brings you the story.

CJEU: "Flat-rate" reimbursement for legal fees must cover a significant part of the costs incurred by the successful party 

In Case C-57/15 United Video Properties, the CJEU held that while Article 14 Enforcement Directive does not prohibit flat-rate reimbursement of legal costs per se, it sets limits on how Member States can set the flat-rate. Namely, the costs to be reimbursed by the unsuccessful party must be "proportionate", which means that they must cover "at the very least, a significant and appropriate part of the reasonable costs actually incurred by the successful party". Mark Schweizer explores how this ties in with the UPC's proposed ceilings on recoverable costs. 

Gathering evidence in patent proceedings? EPLAW's Europe/Japan mock trials may be what you need

September seems to be the month of mock trials, with at least three in the works as far as the AmeriKat is aware. An exciting mock dealing with the new world of biosimilars litigation will be entertaining the lucky attendees at this year's AIPPI's World Congress in Milan (more details to come). Only a few days later on 23 September 2016 in Paris, not one but four Mock Trials will be heard before Judges Shitara, Girardet, Grabinski and Hacon, respectively. Each hearing will address the topic close to any patent litigator's heart - gathering evidence in patent proceedings. The AmeriKat brings you the details. 

Never too late 108 [week ending on Sunday 10 August] Limerick Competition - the results | UK finally speaks out about the "facts" of IP post Brexit| Is "Deadwood really cluttering up trade mark registers? | Weekly roundup: Friday Fun 

Never too late 107 [week ending on Sunday 31 July] Article 28 declarations |Costs of ISP blocking injunctions |Friday Fantasies, featuring legal challenges to Brexit and  more |Huawei v Samsung |Hospira v Genentech |Questions on Article 3(b) SPC referred to CJEU |Book Review: Trade Secret Protection |Pokémon Go

Never too late 106 [week ending on Sunday 24 July] | Innovation & IPRs in China & India: Book Review Paris Tribunal rejects request to filter 'torrent' searches on Bing | Red colour mark reinstated in Germany | Update on Napp v Dr Reddy & Sandoz Litgation | Patent jurisdiction tussle in Rhodia v Molycorp | Decision on ISP liability from Rome | Copyright in the Animal Kingdom 

Never too late 105 [week ending on Sunday 17 July] High Court rejects Seretide combination colour mark in Glaxo v Sandos | Conference report: Should you arbitrate FRAND terms? | Friday Foghorn, including UK IPO invitation for IP valuation research bids

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