For the half-year to 30 June 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Suleman Ali, Tom Ohta and Valentina Torelli.

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

Thursday, 26 March 2015

TVCatchup heads back to Luxembourg for a second preliminary ruling

A familiar sight for lawyers
involved in TVCatchup suits
ITV Broadcasting Limited, ITV 2 Limited, ITV Digital Channels Limited, Channel Four Television Corporation, 4 Ventures Limited, Channel 5 Broadcasting Limited and ITV Studios Limited v TVCatchup Limited (in administration), TVCatchup (UK) Limited and Media Resources Limited (a Mauritian company) [2015] EWCA Civ 204 is the latest development in the long-running copyright litigation saga which is usually known by its shorter name of ITV v TVCatchup. It's also a development that pretty well ensures that it'll be running for some considerable time to come. 

This litigation first hit the headlines in July 2011 when Mr Justice Floyd gave a ruling at [2011] EWHC 1874 (Pat) on ITV's allegatgion that TVCatchup ('TVC') had infringed the copyright in its broadcasts by communicating them to the public through a process of electronic transmission. This process consisted of TVC running a website which allowed ordinary viewers to watch live UK television -- including broadcasts by ITV -- on their own computers, smart phones and games consoles. To do this, the viewer had to become a member of TVC, which gave him the option to choose one of 50 or so channels. The viewer, having made a choice, would be taken to a new screen on which TVC provided a stream of the programme being broadcast. 

In case you were wondering ...
ITV agreed that these transmissions to viewers were not "broadcasts" under section 6 of the Copyright, Designs and Patents Act 1988 (CDPA) and that TVC hadn't made ITV's broadcasts available to the public so that they could be accessed from a place and at a time individually chosen by them. However, ITV did feel that TVC’s services, which communicated its broadcasts to the public by means of an electronic transmission were a "communication of the broadcasts to the public by electronic transmission" under section 20 of the same Act. TVC disagreed, arguing that, in order to infringe the copyright in a broadcast under section 20, the alleged infringer's transmission must itself be a broadcast within the meaning of section 6 (which even the ITV agreed it wasn't). 

Floyd J referred the case to the Court of Justice of the European Union for a preliminary ruling on whether streaming constituted a "communication to the public". The CJEU's answer, in short, was "yes" in its 7 March 2013 ruling [noted by the IPKat here]. The case then came back to Floyd J who ruled, in October 2013, that TVC had basically infringed and its defences failed -- except that, to the extent that TVC had streamed ITV, Channel 4 or Channel 5 to members of the public by cable (which included transmission via the internet but did not include transmission to mobile devices via any mobile telephone network) and to users situated in the region to which the original broadcasts were made, it had not infringed the broadcasters' copyright by reason of the defence contained in section 73 of the CDPA [the relevant bits of which are reproduced below]. The judge also declared that it was not possible to interpret section 73 so as to be compatible with Article 5(3)(o) of the InfoSoc Directive (2001/29) which, the broadcasters said, was the only provision of that directive which could provide a proper basis for such a defence. Article 5(3)(o) permits

use in certain other cases of minor importance where exceptions or limitations already exist under national law, provided that they only concern analogue uses and do not affect the free circulation of goods and services within the Community, without prejudice to the other exceptions and limitations contained in this Article.
The parties then appealed against the judge's findings and his order so far as it concerned the scope of the section 73 defence and its application to the facts.  In January 2014 the Secretary of State for Business, Innovation and Skills was permitted to intervene, his interest in these issues being apparent from the declaration of incompatibility made by the judge. 

Today the Court of Appeal (Lady Justice Arden and Lords Justice Kitchin and Underhill) surprised us all by deciding, after dismissing TVC's appeal, that it was necessary to send the case back to Luxembourg for a further preliminary ruling of the CJEU, this time on the section 73 issue. Said Kitchin LJ:
  1. Under Article 267 of the Treaty on the Functioning of the European Union this court may submit a request to the Court of Justice for a preliminary ruling on a question of European Union law if it considers it is necessary to do so in order to resolve the dispute brought before it.
  1. The present case raises a difficult question as to the scope of Article 9 of Directive 2001/29 ["This Directive shall be without prejudice to provisions concerning in particular patent rights, trade marks, design rights, utility models, topographies of semi-conductor products, type faces, conditional access, access to cable of broadcasting services, protection of national treasures, legal deposit requirements, laws on restrictive practices and unfair competition, trade secrets, security, confidentiality, data protection and privacy, access to public documents, the law of contract"] and whether it permits the retention by a Member State of a provision such as s.73 of the CDPA which, in the particular circumstances set out in that section, affords a defence both to an allegation of infringement of copyright in a broadcast and of the copyright in any work included in the broadcast arising from the streaming of public service broadcasts to members of the public where that streaming takes place by wire (a) via the internet (but not including transmission by mobile devices via any mobile telephone network) and/or (b) to users situated in the original broadcast area. ...  I am satisfied that a ruling on this question is necessary for this court to give judgment.
  1. It only remains to consider whether this court should exercise its discretion to request a preliminary ruling from the Court of Justice. I am conscious that none of the parties before us has invited us to take this course. However, as is well established, the court may do so of its own initiative. I have come to the conclusion that it is appropriate to do so. The relevant facts are clear. The issues raised by the question I would refer are critical to our final decision and I do not believe that this court can resolve them with complete confidence without guidance from the Court of Justice. Moreover, they are important issues in relation to which a uniform approach across the European Union is essential. It is regrettable that there needs to be a second reference to the Court of Justice in this case but that is a consequence of the fact that the issues on which this appeal turns were never fully developed before the judge.
  1. I should add that after the hearing and this court having formed the provisional view that it was appropriate to make a further reference, we invited the parties to file further written submissions on this issue. The parties duly did so, but the submissions we received did not alter the provisional view to which we had come. We have also been informed that the European Commission has sent a letter of formal notice to the United Kingdom pursuant to Article 258 of the Treaty on the Functioning of the European Union in relation to s.73, but we have not been provided with a copy of this notice and no party has suggested that it should affect our decision [not even Merpel has seen this letter, but she says it would be good to know what her European servants are writing to her English ones, since she her taxes pay their salaries and this is hardly something worth keeping secret -- is it?]. In all these circumstances and for all of the reasons I have given, I would make a reference and invite the parties to make submissions as to the precise wording of the questions I have identified.
The exact formulation of the questions remains to be fine-tuned by the parties. The Kats will of course keep you informed once they have them. Meanwhile, don't be surprised if one or more of this Kat's more copyright-minded colleagues returns to this case and posts some more scholarly comments on it.

APPENDIX: the most relevant bits of the CDPA, section 73:
Reception and re-transmission of wireless broadcast by cable.

(1) This section applies where a wireless broadcast made from a place in the United Kingdom is received and immediately re-transmitted by cable.

(2) The copyright in the broadcast is not infringed—
(a) if the re-transmission by cable is in pursuance of a relevant requirement, or

(b) if and to the extent that the broadcast is made for reception in the area in which it is re-transmitted by cable and forms part of a qualifying service.
(3) The copyright in any work included in the broadcast is not infringed if and to the extent that the broadcast is made for reception in the area in which it is re-transmitted by cable; but where the making of the broadcast was an infringement of the copyright in the work, the fact that the broadcast was re-transmitted by cable shall be taken into account in assessing the damages for that infringement.

BREAKING: EPO staff union to win formal recognition?

The President of the EPO and Chairman of the Administrative Council (AC) have just published a joint statement following the recent AC meeting. Merpel is pleased to see that the AC is at last starting to address the crisis in staff relations that has developed in recent years and which has come to a head in recent months.

While nothing is promised other than a kick-off meeting, the intention would appear to be to formally recognise the staff union, SUEPO. It remains to be seen if such formal recognition will include the actions that the Hague Court of Appeal ordered the EPO to undertake, including unblocking SUEPO's emails to staff members, abolishing the President's power to dictate the terms of industrial action, and allowing for collective bargaining. We shall see what develops and as always expect that our readers will have strong views to express in the comments below (bearing in mind the rules at the bottom of this post).

Joint statement from the Chairman of the Administrative Council and the President of the Office
26 March 2015

Call for a social dialogue

The Administrative Council acknowledges the results achieved by the Office and its staff which represent the outcomes of the Efficiency and Quality strategy adopted in 2011.

The Administrative Council confirms its clear will to continue the policy of reforms to the benefit of users. It is determined to address with the highest priority the issue of the social tensions which have occurred in this process.

Therefore, the Chairman of the Administrative Council and the President of the Office will launch new initiatives to restore social peace.

To achieve this, they call for a renewed social dialogue.

They consider in particular that the formal recognition of the trade unions within the EPO's legal framework could create the conditions to re-launch the process and to overcome some longstanding issues.

The Chairman and representatives of the Administrative Council, and the President of the Office with representatives of the management invite the trade unions of the EPO to a dedicated kick off meeting on 22 April 2015.

As ever, Merpel welcomes comments, but begs to remind readers of the following:
Henceforth, in respect of all EPO-related blogposts, no comment will be posted if it is merely ascribed to "Anonymous".  Any reader wishing to conceal his or her identity must adopt a pseudonym (which should not be obscene and should not be the name, or the mis-spelling of the name, of a real person).  The pseudonym need not be an actual login name, as long as it is stated clearly at the beginning and/or end of the comment itself. This way, it will be easier for people who post later comments to identify and remember the earlier comment-poster and to recall the discussion string.  Where, as has already happened on occasion, a string carries over from one blogpost to a later one on the same or a related subject, readers will be encouraged to use the same pseudonym for the sake of continuity.

Broccoli & Tomatoes, part deux: more from the Enlarged Board

The Enlarged Board has been busy indeed. Not content with clarifying the law on clarity (see here), it has also now emerged from the garden clutching two prize specimens: G 2/12 (Tomatoes II) and G 2/13 (Broccoli II).

Broccoli & Tomatoes - Jacob Levine
Both cases (they were dealt with in a consolidated hearing) relate to the exclusion from patentability under Article 53(b) EPC for plant or animal varieties or essentially biological processes for the production of plants or animals (with the caveat that the exclusion does not apply to microbiological processes or the products thereof).The decisions are  (pdf download links).

This Kat, who prefers a nice piece of fish to either broccoli or tomatoes, will leave it to a colleague with greener fingers paws to explain the decisions in the coming days. In the meantime, the headnotes are posted below, these being identical other than the addition of a point dealing with process features of a product-by-process claim in Broccoli II (Headnote 2(a)).

Tomatoes II:

1. The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit.

2. In particular, the fact that the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application does not render a claim directed to plants or plant material other than a plant variety unallowable.
3. In the circumstances, it is of no relevance that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC.
Broccoli II:

1. The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts.

2. (a) The fact that the process features of a product-by-process claim directed to plants or plant material other than a plant variety define an essentially biological process for the production of plants does not render the claim unallowable.

2. (b) The fact that the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application does not render a claim directed to plants or plant material other than a plant variety unallowable.
3. In the circumstances, it is of no relevance that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC.

Thanks to our commenters Anonymous and P de Lange for pointing us to the existence of these decisions.

G 3/14: Clarity from the Enlarged Board

Readers who are currently involved in European Patent Office (EPO) opposition proceedings where the patent has been amended (i.e. about 70% of opposition cases) will no doubt be as excited as this Kat to learn that the Enlarged Board has issued its decision in G 3/14, a copy of which can be downloaded (PDF) from here.

The decision is a big one, and the IPKat is only starting to digest it. More detailed analysis may follow but here's the shortish version of a 96 page decision. The one sentence synopsis is that clarity examination in opposition must henceforth be of a much more limited scope than the more recent case law would suggest.

Alleged lack of clarity of the claims (Article 84 EPC) is excluded as a possible ground of opposition, but Article 101(3) says that the opposition division must examine whether the amended patent meets the requirements of the EPC in coming to its decision to maintain or revoke the patent. Whether this latter provision means that the opposition division or board of appeal must examine the amended claims for clarity is a recurring issue, and one which has given rise to two diverging lines of case law, which you can read about in detail in the decision itself, or in the referring decision T 373/12.

The Enlarged Board was asked to give an opinion on whether it was allowable to examine the clarity of amended claims in cases where elements of a dependent claim were added to an independent claim, and if so, to clarify how extensive that clarity examination ought to be.

Surprisingly perhaps, but in a move that practitioners, examiners and appeal boards must welcome for the increased certainty that it brings (even if the actual result is not to one's taste as an examiner or opponent), the Enlarged Board has used this referral as an opportunity to go far beyond the narrow question of combining dependent claim elements (or complete dependent claims) and has reviewed the entire subject of clarity in opposition proceedings de novo in a major judgment which rewrites the law on clarity examination post-grant.

The existing case law
The "conventional" jurisprudence (to use the Enlarged Board's terminology) is exemplified by T 301/87, which is the sort of landmark decision that most young children who yearn to be patent attorneys learnt while sitting on their grandfather's knee. According to this approach when claims are amended in opposition proceedings, objections of lack of clarity cannot be raised if the objections "do not arise out of" the amendments made.
 The "diverging" cases, again using the Board's terminology, are represented by T 1459/05 in its more moderate form and by T 459/09 in its more extreme form. T 1459/05 said that the clarity of a combination of dependent claim 4 with independent claim 1 was to be examined as an exception, due to the fact that the added feature was both unclear and yet was the only possible distinguishing feature over the prior art. In T459/09 the Board held that where claims were amended with a technically meaningful feature, this justified an "unrestricted exercise" of the examination power under Article 101(3).

As regards what it means for a lack of clarity to "arise out of" an amendment, this was initially interpreted (in T 301/87) as follows: a lack of clarity "arises" from an amendment when it did not exist before, so that the effect of the amendment is to give rise to a lack of clarity for the first time. However in T 472/88, the Board went further in a statement that has been followed in many decisions over the years. Here the Board looked to the Oxford Dictionary definition of "arise": "originate, be born, result from, come into notice, present itself". Later decisions both approved this broad definition and extended it to include "concealed" lack of clarity which then was "made visible" after the amendment. Although the referral did not ask the Enlarged Board to look at this aspect of clarity, the Enlarged Board did so.

Three major points from the decision

1. The answer to the referred questions

The Enlarged Board was given a series of questions, the first being:
1. Is the term "amendments" as used in decision G 9/91 of the Enlarged Board of Appeal (see point 3.2.1) to be understood as encompassing a literal insertion of (a) elements of dependent claims as granted and/or (b) complete dependent claims as granted into an independent claim, so that opposition divisions and boards of appeal are required by Article 101(3) EPC always to examine the clarity of independent claims thus amended during the proceedings? 
Questions 2, 3 and 4 explored the implications of a yes or no answer to question 1. The Board noted that the issue was not the interpretation of G 9/91 (as the referring Board had put the question) but rather the proper interpretation of Article 101(3), and it considered that in answering question 1(a), all of the referred questions were also dealt with:
The questions referred to the Enlarged Board of Appeal are answered as follows: 
In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.
2. Which approach is correct: T 301/87 (conventional) or T 1459/05 & T 459/09 (diverging)? 

The Board explicitly says [Reasons, 87]:
The Enlarged Board thus approves the conventional line of jurisprudence as exemplified by T 301/87 (section E(a), points 18 to 26, above), and disapproves [...] the line of "diverging"  jurisprudence (as exemplified in the cases set out in section E(c), points 30 to 43, above).
3. When does a lack of clarity "arise out of" an amendment?

Eagle eyed readers will see that the IPKat edited out some text in the preceding quotation. The missing part deserves its own spotlight:
The Enlarged Board thus approves the conventional line of jurisprudence [...] and disapproves the line of jurisprudence as exemplified by T 472/88 (explained in section E(b), points 27 to 29, above) [...]
T 472/88 was the case where "arises out of" was given a broad construction based on the OED definition, i.e. "originate, be born, result from, come into notice, present itself" . The Enlarged Board enlarged (sorry) on this particular point at [Reasons, 29], saying:
In the Enlarged Board's view, development of the jurisprudence of the Boards of Appeal in this way [interpreting "arise" to include each of the synonyms given in the dictionary definition]  is not legitimate. It is of course appropriate to use a dictionary when interpreting a statute to help elucidate its meaning, but statements in a decision of a court using ordinary words do not require further interpretation in this way: they are to be understood in their context. Given the facts of those cases (see points 18 and 20, above) the Enlarged Board does not consider that the Boards there intended these words to have the expanded meaning given to them in T 472/88 and the later cases which followed this approach. In any event, it is unclear to the Enlarged Board what the test developed on the basis of this construction actually amounts to or when precisely an amendment can be said to bring into notice, highlight or focus attention on a previously existing ambiguity (see further, point 80(k), below). This line of cases has not generally been regarded as belonging to a diverging line of cases (although it was identified as such in T 1577/10).
There's plenty more to digest in this decision, and the IPKat eagerly awaits readers' comments.

BREAKING: CJEU says that live broadcasts are not communication to the public within InfoSoc Directive but Member States can protect them

Did you think that following the decisions of the Court of Justice of the European Union (CJEU) in Svensson [Katposts here] and BestWater [here], the story with copyright and hyperlinks was over? Of course not.

As Tom explained in his post a couple of days ago, today the CJEU was expected to decide yet another case in this area: Case C-279/13 C More Entertainment, a reference for a preliminary ruling from seemingly hyperlinking-loving Member State, Sweden [if you missed what happened in this country following Svensson, you can read it all here]

The Högsta domstolen (Supreme Court of Sweden) referred the CJEU very similar - if not altogether identical - questions to those that the Svea hovrätt (Svea Court of Appeal) had posed in Svensson

As the IPKat reported a couple of months ago, following the very quick order in BestWater, the Högsta domstolen decided to retract all the questions referred but one, ie:

May the Member States give wider protection to the exclusive right of authors by enabling ‘communication to the public’ to cover a greater range of acts than provided for in Article 3(1) of the Information Society Directive?

A question of this kind is particularly dear to this Kat's mind and heart, since - even before Svensson was decided - she investigated this very issue (together with the question of how flexible national implementations of exceptions and limitations in Article 5 of the Information Society Directive) in this piece

At that time this Kat held the view, later confirmed by the CJEU in its decision in Svensson [yet with earlier hints in Luksan, here, and Football Dataco, here], that - also in light of the doctrine of EU pre-emption (which is somehow codified in Article 2(1-2) of the Treaty on the Functioning of the European Union and denotes the actual degree to which national initiatives are to be set aside following EU legislative intervention in a certain area) - Member States may not alter the  the scope of harmonised exclusive rights.

In Svensson the CJEU indeed held that: 

Article 3(1) of [the Information Society] Directive ... must be interpreted as precluding a Member State from giving wider protection to copyright holders by laying down that the concept of communication to the public includes a wider range of activities than those referred to in that provision.

In light of all this, and going back to C More Entertainment - could have the CJEU stated there that Member may actually enable 'communication to the public' to cover a greater range of acts than provided for in Article 3(1)?

Possibly not, and this is indeed what the CJEU apparently said this morning in another decision [not yet available on the website of the Court] achieved without the need for the Opinion of an Advocate General [Eleanor Sharpston in this case] first [on the seemingly fading role of Advocates General in copyright cases, see here].

Cuter forms of linking
(and licking) than those
addressed by the CJEU
According to the press release [not yet available either],

"[The Information Society] [D]irective provides that broadcasting organizations may prohibit the provision to the public fixations of their broadcasts, so that everyone can access them from a place and at a time chosen individually.
In the fall of 2007, the C More Entertainment pay-TV channel transmitted on its website several hockey games on ice, which interested persons could access by paying the sum of 89 kronor (SEK) (approximately 9.70 euros) per game. M. Linus Sandberg has created on its website links to bypass the toll system set up by C More Entertainment. Internet users were able and free access to the transmissions of two live hockey games before C More Entertainment will set up a technical device preventing such access. C More Entertainment filed a lawsuit before the Swedish courts to obtain compensation.
Hearing the case in the end, the Högsta domstolen (Swedish Supreme Court) ask[ed] the Court of Justice whether broadcasters have the right to prohibit a sports event broadcast live on the internet for payment is transmitted to the rest the public.
In its judgment today, the Court recall[ed] that the exclusive right granted to broadcasters by the directive only applies if anyone has access to the transmission at a time individually chosen by them. But this is not the case of live broadcasts on the Internet.

However, the Court note[d] that, with regard to the nature and extent of the protection which Member States may recognize broadcasting organizations, the Directive does not harmonize any differences between national laws, so it does not preclude more protective provisions. Moreover, the Court notes that the Directive is subordinate to another EU directive [the one on rental and lending rights] which explicitly recognizes that Member States may provide more protective provisions regarding the public communication of programs conducted by broadcasters. It follows that broadcasters may prohibit acts of communication to the public of their broadcasts (in the clear provided that such protection does not infringe the copyright).

In summary, the Court consider[ed] that a broadcaster may prohibit a sports event broadcast live on the internet for for payment is transmitted to the rest of the public."
As soon as the decision becomes available, a more detailed analysis will be provided, so: stay tuned!

*** UPDATE at 10:42 am GMT: The decision is now available here ***

Wednesday, 25 March 2015

Wednesday whimsies

Fifty-Fifty, and fizzing. "When I saw the headline, I thought it was about The Simpsons", says Chris Torrero (katpat!), echoing the first thoughts of many of us non-Californians when confronted with the banner "BART Battles Brewer In Trademark Dispute Over Beer Named ‘B.A.R.T.’" The truth is less exciting -- or more exciting if you are into public transport, since the BART in question is the Bay Area Rapid Transit [and that's an acronym according to all opinions, chips in Merpel]. The other BART, or B.A.R.T. if you prefer, is a beer made by Fifty-Fifty Brewing. You can read the item on CBS SF Bay Area here, but don't anticipate massive litigation: this is something that can be sorted out over a beer or two ...

Fifty and interested, but how secure? "Security interests over IP rights" is a seminar masterminded by Katfriend and securitisation scholar Andrea Tosato and hosted by this Kat's colleagues at Olswang in their London office. It's coming up this Friday, 27 March, and has already secured its first 50 registrants. That's pretty impressive for a subject that used to be, not so long ago, whatever might be the opposite of "sexy". Andrea tells us that he's looking forward to seeing everyone on the day and that there might even be room for the occasional late registrant. Details are available here. The event is free to attend.

This too-busy Kat has been meaning for a few days to let everyone know about a report commissioned by the UK Intellectual Property Office and co-authored by Ian Goodyer and Martin Brassell (both of Inngot). With the title “Penalty Fair? A study of criminal sanctions for copyright infringement available under the Copyright, Designs and Patent Act 1988”, the document is summarised as follows:
Inngot’s report for UK IPO compared the sanctions applied to physical and online copyright infringement by studying available Ministry of Justice court data and analysing individual verdicts applied to key cases over an eight-year period. It also took in the views of industry bodies and other stakeholders who had been involved in prosecuting and defending online cases, and conducted a short survey of content creators.

The data summarised in the report indicates that current online penalties are very seldom used, but that even if this were to change, they would not provide access to appropriate and proportionate sentences for serious infringement cases.

Whilst Inngot did not find evidence that higher penalties would deter piracy, it did find that placing online copyright crime outside the category of a serious arrestable offence has had undesirable consequences. In particular, it complicates the process of investigation and prosecution, which is especially problematic when crimes span national boundaries, as is often the case.

Given the comparative ease with which copyright material can be distributed online, the report notes that safeguards may be needed to ensure that any change in the law does not inadvertently affect members of the public or organisations whose copying is not criminally motivated. Similarly, there needs to be scope for experimentation with new business models.
You can read Inngot's media release on the report here and the full 98-page report here.

Around the weblogs. As Merpel reported earlier today, there is a new blog on the block, belonging to AMBA, the European Patent Office's Association of Members of the Boards of Appeal. You can check it out here.  Over on the 1709 Blog, Ben Challis unearths the tale of a lost guitar called Lucille and how it led, as so many things do, to a US lawsuit for copyright infringement. It may be 2015, but it's less than a week since South Africa's Protection, Promotion, Development and Management of Indigenous Knowledge Systems Bill 2014 was published: Caroline Ncube explains what it's all about on Afro-IP. Finally, on the IP Finance weblog, fellow Kat Neil opens our eyes to the concept of the Coding Boot Camp and its possible impact on the IT business.

Costs of a withdrawn patent appeal in Europe: who pays? Back in January this weblog posted an item, "Belgium asks CJEU: does the Enforcement Directive allow cost-capping in IP litigation?" The case in question was Case C-57/15 United Video Properties, a reference from the Hof van beroep te Antwerpen (Belgium) for a preliminary ruling in answer to two questions:
1. Do the terms ‘reasonable and proportionate legal costs and other expenses’ in Article 14 of Directive 2004/48 ... on the enforcement of intellectual property rights ... preclude the Belgian legislation which offers courts the possibility of taking into account certain well-defined features specific to the case and which provides for a system of varying flat rates in respect of costs for the assistance of a lawyer?

2. Do the terms ‘reasonable and proportionate legal costs and other expenses’ in Article 14 ... preclude the case-law which states that the costs of a technical adviser are recoverable only in the event of fault (contractual or extra-contractual)?
Curiously, while the underlying national litigation involves deciding who has to pay the costs following the withdrawal of an appeal on an issue of infringement of a patent, the word "patent" does not appear in the questions referred.  As this IPKat said before, it's plain from the wording of the questions that the referring court contemplates a ruling that encompasses all forms of IP litigation and not merely patent suits. He added
"The CJEU ... has a track record of not giving answers that run wider than the facts of the underlying national litigation. While it is important to take account of considerations of procedural economy and of not extending a ruling beyond points on which the parties are prepared to argue, it seems immediately apparent to this Kat that there is a more important reason for answering the Antwerp court's broad questions quite narrowly. The words "reasonable and proportional legal costs" are likely to measured by quite different yardsticks in patent litigation than in cases involving trade marks, copyright or designs and the relatively short life of the patent and the impact of technological obsolescence may justify additional expenditure. While it is always annoying to have to keep returning to the CJEU to get it to amplify or fine-tune earlier rulings, that may still be more desirable than giving a broad ruling that causes subsequent injustice or inconvenience to national trial courts".
Merpel added in January (and repeats here):
"The words "reasonable and proportional legal costs" in Article 14 will be an invitation to counsel to plead before the CJEU that these concepts should also be measured against the ability to recover costs in actions that are not covered by implementation of the IP Enforcement Directive. For example, Recital 13 leaves it to Member States to choose whether to extend its provisions so as to cover actions for unfair competition, parasitic copying and the like. Will the mandatory recovery of "reasonable and proportional legal costs" in litigation involving the traditional IP rights be treated differently depending on whether that principle does, or does not, extend to other rights, she wonders -- and will a different cost-capping regime determine that, in some countries, breaches of IP licences will be treated as IP infringements rather than breaches of contract?"
All of this suggests that readers might want to make representations to their respective governments in case the latter should want to participate in the proceedings.  In the case of the UK Government, comments should be emailed to by next Tuesday 31 March 2015.  The deadline for the Government to make its submissions to the CJEU is 27 May 2015.

Digital exhaustion: a debate and a (policy) scandal

Eleonora, Mr Justice Arnold
and Hugo Cuddigan QC
Yesterday night The Intellectual Property Lawyers Organisation (TIPLO) hosted yet another fun event devoted to enjoying both the delicious food served (this time) at Lincoln's Inn and some IP-related discussion. 

As regards the latter, this Kat was honoured to have been invited to participate in a debate chaired by The Hon Mr Justice Arnold, meant to address the following question: "Digital Exhaustion: Can downloads be sold second-hand without a licence from the copyright owner?

The first to speak was Hugo Cuddigan QC (11 South Square), who argued against the proposition. 

Before explaining why from a policy perspective there should be no such thing as digital exhaustion (this is also because in principle digital copies are perfect replicas, said Hugo), Hugo recalled recent decisions, at both the levels of US courts (where the key case is ReDigi) and the Court of Justice of the European Union (CJEU), in particular UsedSoft [Katposts here, in which the CJEU held that there is such thing as digital exhaustion under the Software Directive], Nintendo [here, not a case on exhaustion, but relevant in this context because there the Court re-affirmed the lex specialis nature of the Software Directive, which suggests that the conclusions achieved in UsedSoft might possibly be inapplicable analogically to the InfoSoc Directive] and Art&Allposters [here, in which the CJEU stated that exhaustion under the InfoSoc Directive only applies to the tangible support of a work]

Hugo concluded that from both a legal and policy perspective the question at the heart of the debate should be answered in the negative.

A terrified Lucy has just been
that perhaps the law
 prevents her from leaving her
Take That-filled iTunes
library to her kittens
It was not easy to speak after a charming and convincing advocate like Hugo. Nonetheless this Kat embraced the challenge and tried to demonstrate that: (1) it is not yet clear whether the InfoSoc Directive allows digital exhaustion; and (2) from a policy perspective it is right and just to envisage digital exhaustion, also on grounds of the peculiar internal market- building rationale that exhaustion has constantly had in the context of EU IP law. 

With particular regard to the first point, it is worth recalling that Art&Allposters was a decision originating from a very peculiar, analogue, factual background, in which the CJEU [similarly to what Advocate General Cruz Villalon had done in his Opinion, here] drew a pretty unhelpful distinction between the tangible support of a work (the corpus mechanicum, which would be subject to exhaustion), and the work as such (the corpus mysticum, not subject to exhaustion). Why this distinction is unhelpful is not just because it originates from a formal(-istic) interpretation of relevant provisions in the InfoSoc Directive, but also because - when it comes to digital works - it is difficult (if at all possible) to distinguish between the support of a work and the work itself.

Despite diverging views on the merits (and de-merits) of digital exhaustion, it seemed that everybody agreed as to the topicality of this issue, which is something that Mr Justice Arnold also emphasised at the beginning of the debate.

Yet, if one looks at the terms of current EU copyright reform debate [apparently a legislative proposal to reform the acquis should be tabled by the Commission right after the summer], digital exhaustion is mentioned nowhere. 

The fate of digital exhaustion
at the EU policy level?
Despite being one of the numerous questions in the Public Consultation on the review of the EU copyright rules that the previous Commission had last year [here and here], there has been no real follow-up since the last elections, whether at the levels of the new Commission or Parliament [see also draft report by MEP Julia Reda, here]

Is the question whether you should own (and be able to transfer) or not your digital downloads really less important than the question whether you should be able to watch BBC iPlayer while outside the UK, eg on holiday in Greece [but then another question would be why on earth one could possibly want to do that instead of sunbathing on a beach in Santorini]?

Possibly not, yet the latter is currently being considered for policy/legislative intervention, while the former seems to have been confined to oblivion ... at least until the CJEU is called to intervene and rescue once again EU copyright? 

But then is the issue of digital exhaustion something for the Court or - instead (as also both Judge Sullivan suggested in his decision in ReDigi, and US Register of Copyrights, Maria Pallante, indicated in her Columbia Law School lecture on The Great Next Copyright Act last year) - something for policy- and law-makers?

AMBA speaks - with a brand new website

The IPKat likes websites, since he lives in one himself, and is always happy to welcome a new one.

Merpel was interested to hear of an organisation that is perhaps less well known in European patent circles.  AMBA is the Association of the Members of the Boards of Appeal, and is the organisation, independent of the European Patent Office itself, which represents - yes, you guessed it - members of the Boards of Appeal of the EPO.  It has just launched a sparkly new website here:

Since the site is being built from scratch on zero budget, it is expected that there will be bugs and areas for improvement, and error reports and suggestions are solicited on the front page.  Merpel suggests that comments on the site would be better addressed to site's webmaster than to her.

As the website proclaims:

The purpose of the Association is to monitor issues of relevance for the judicial functions of the members of the boards of appeal, especially with a view to safeguarding their independence and promoting their self-government as members of a judiciary, and to gather its members for deliberations on questions of common interest, in order that they will be heard in bodies deciding or making proposals of relevance for these functions.
This website is designed to achieve those aims by:
Highlighting aspects of independence of the judiciary, and
Filling a gap in the information available about the Boards of Appeal.
The site has some useful and interesting links to Jurisprudence and Legal Texts relating to both the EPC and national law, although it appears that some of these link to documents only accessible to EPO insiders and are presumably aimed at members of the Boards themselves.

Of particular interest to those who have been following Merpel's posts about the issues currently facing the EPO, and in particular the independence of the Boards of Appeal (see Merpel's Open Letter here on the issues in general, and  herehere and here for the current proposals to change the administrative arrangements for the Boards of Appeal, embodied in a proposal from the President of the EPO to the Administrative Council (AC) in document CA/16/15) are the following:
  • Publication of AMBA's comments on the proposal in CA/16/15, in a letter to the AC and President dated 19 March 2015).
  • Comparison of independence indicators of the CA/16/15 proposal, the current situation, and the proposals, now apparently shelved since revision of the European Patent Convention itself would be required (see section (4) of this post), of the "Autonomy Project".  This part is interactive, and the reader can play with the parameters, and view them in greater or less detail.
Merpel welcomes that this contribution to the debate is openly available, and hopes that readers will find the website both informative and entertaining.

IMPORTANT UPDATE at 21:40 25 March 2015
P.S. Two kind commenters below have asked for sight of two further documents to assist with the understanding of the issues.  Merpel, ever attentive to the needs of her readers, has obtained the documents requested and posts links to them herewith.  They are:

REMINDER TO READERS: in respect of all EPO-related blogposts, no comment will be posted if it is merely ascribed to "Anonymous". Any reader wishing to conceal his or her identity must adopt a pseudonym (which should not be obscene and should not be the name, or the mis-spelling of the name, of a real person). The pseudonym need not be an actual login name, as long as it is stated clearly at the beginning and/or end of the comment itself. This way, it will be easier for people who post later comments to identify and remember the earlier comment-poster and to recall the discussion string. Where, as has already happened on occasion, a string carries over from one blogpost to a later one on the same or a related subject, readers will be encouraged to use the same pseudonym for the sake of continuity.

A couple of readers have forgotten this rule. Where the comments have appeared to be legitimate and useful to the debate the blog team have assigned pseudonyms for their posts rather than lose their comments completely -- but it's better to choose your own pseudonym, since the blog team risk ascribing two or more pseudonyms to the same reader.

Tuesday, 24 March 2015

Impulse trade mark registration: no sweat, as AG gives his view

The Opinion of Advocate General Wahl was published today in Case C‑125/14 Iron & Smith Kft v Unilever NV, a request for a preliminary ruling by the Court of Justice of the European Union (CJEU) from the Hungarian Fővárosi Törvényszék -- that's the Budapest Municipal Court, if you didn't know ["I knew that", said Merpel ...].

Relying on its earlier Community word mark IMPULSE, leading brand owner Unilever NV opposed an application by Iron & Smith Kft. to register a colour figurative sign featuring the words ‘be impulsive’ as a Hungarian trade mark.  The Hungarian Intellectual Property Office (HIPO) found that Unilever had sold large quantities of and publicised the goods designated by its Community word mark IMPULSE in the United Kingdom and Italy, with that mark enjoying a 5% market share in the United Kingdom and a 0.2% market share in Italy [the product seems to be some sort of perfumed and/or deodorant body spray]. Even though this market share finding did not relate to Hungary, HIPO found that the reputation of the Community mark had been proved in a substantial part of the European Union and refused the application, adding that a risk of the later mark taking unfair advantage could not be ruled out.

Iron & Smith applied to the Fővárosi Törvényszék for annulment of the decision refusing the application for registration. Entertaining doubts as to the correct interpretation of Article 4(3) of European Union's much interpreted and indeed much misinterpreted trade mark directive, the referring court has now requested a preliminary ruling on the following questions:
‘(1) Is it sufficient, for the purposes of proving that a Community trade mark has a reputation within the meaning of Article 4(3)  …, for that mark to have a reputation in one Member State, including where the national trade mark application which has been opposed on the basis of such a reputation has been lodged in a country other than that Member State?

(2) May the principles laid down by [the CJEU] regarding the genuine use of a Community trade mark be applied in the context of the territorial criteria used when examining the reputation of such a mark?

(3) If the proprietor of an earlier Community trade mark has proved that that mark has a reputation in countries other than the Member State in which the national trade mark application has been lodged — which cover a substantial part of the territory of the European Union — may he also be required, notwithstanding that fact, to adduce conclusive proof in relation to that Member State?

(4) If the answer to [Question 3] is no, bearing in mind the specific features of the internal market, may a mark used intensively in a substantial part of the European Union be unknown to the relevant national consumer and therefore the other condition for the ground precluding registration in accordance with Article 4(3) of the Directive not be met, since there is no likelihood of detriment to, or unfair advantage being taken of, a mark’s repute or distinctive character? If so, what facts must the Community trade mark proprietor prove in order for that second condition to be met?’
This morning AG Wahl proposed that the CJEU answer the questions referred by the Fővárosi Törvényszék as follows:
(1) [Answering questions 1 and 2, correctly in this Kat's view] For the purposes of Article 4(3) ...  it may — depending on the specific mark which is described as enjoying a reputation and, accordingly, on the public concerned — be sufficient that a Community trade mark enjoys a reputation in one Member State, which does not need to be the State in which that provision is relied upon. In that regard, for the purposes of determining whether a reputation exists within the meaning of Article 4(3), the principles laid down in case-law in respect of the requirement to show genuine use of a trade mark are not relevant.

A Diary of the Saturdays, sponsored
by Unilever's Impulse
(2) Where the earlier Community trade mark does not enjoy a reputation in the Member State in which Article 4(3) ... is relied upon, in order to prove that, without due cause, unfair advantage is taken of, or detriment is caused to, the distinctive character or repute of the Community trade mark for the purposes of that provision, it is necessary to show that a commercially pertinent proportion of the relevant public in that Member State will make a link with the earlier trade mark. In that regard, the strength of the earlier mark constitutes an important factor for the purposes of proving such association [This Kat thinks that this is right too, though he thinks some big brand owners will not like it. However, he doubts that it will make a practical difference in many cases since, even if no unfair advantage is taken and no detriment inflicted, the chances of there being a likelihood of confusion will generally prevent the later mark being registered].
This Kat expects the CJEU to go along with AG Wahl's Opinion, though he would be the first to agree that many a surprising ruling has emerged from that august body.

What makes people sweat here and here
What makes people smell here and here

As Loginov gets logged out, a Kat mewses: are the new gTLDs a friend or foe?

Readers are again treated today to the thoughts of our very own emeritus Kat, Catherine Lee, who has been taking a look at some of the less enjoyable aspects of the new generic top-level domains that have excited the greed creativity of so many good souls.  This is what she writes:
A songbird is every cat's
must-have item this year ...
It is always a good day for this Kat when intellectual property-related issues somehow make the newspaper gossip pages: this morning she learnt that American singer-songwriter Taylor Swift has apparently registered the domain names and As part of a significant expansion of the internet, hundreds of new generic top level domain names (gTLDs) are coming onto the market place such as .porn, .adult, .bank and .science.  In the coming weeks, this Kat notes that the sunset period for domain names with the level .wedding and .flowers is due to close and the sunset period for domain names with the level .football and .school is due to open.  The calendar for releases is here.  This Kat could not help but wonder: is this development a technical saviour or an unnecessary hassle for trade mark owners? should trade marks owners obtain defensive domain name registrations for their brands in all relevant new gTLDs just in case?  
There are two ways of purchasing domain names in this new gTLD environment: using the Trademark Clearinghouse and doing it yourself. 
The Trademark Clearinghouse approach 
According to ICANN, the Trademark Clearinghouse is a global repository for trade mark data which will verify trade mark data from multiple global regions and maintain a database with the verified trade mark records.  The verified data in the Trademark Clearinghouse will be used to support 'Trademark Claims' and 'Sunrise Services', both of which are required in all new gTLDs.  The Trademark Clearinghouses' 'Sunrise Services' allow trade mark holders an advance opportunity to register domain names which correspond to their marks before domain names are generally available to the public. The Trademark Claims period follows the Sunrise period and runs for at least the first 90 days of an initial operating period of general registration.  During the Trademark Claims period, anyone attempting to register a domain name matching a mark that is recorded in the Trademark Clearinghouse will receive a notification displaying the relevant trade mark information.  If the notified party goes ahead and registers the domain name, the Trademark Clearinghouse will send a notice to those trade mark holders with matching records in the Clearinghouse, informing them that someone has registered the domain name. 
Unfortunately for those of us who have to count our pennies, the Trademark Clearinghouse service is not free.  Each trade mark which is registered with the Trademark Clearinghouse attracts a registration fee (generally US$ 150 for one year, US$ 435 for three years or US$ 725 for five years) ["How literally odd!" exclaims Merpel, who wonders what happens for people who want to register for an even number of years. Can't the computer handle it?].  For each registration, a trade mark owner can then register 10 labels/variations of the trade mark, with each additional label costing US$ 1).  So if The IPKat wanted to register his Community trade mark for the word IPKAT with the Trademark Clearinghouse, he could register labels such as ipkat, ip-kat, i-p-kat.  Importantly, this does not include the registration fee for the domain name itself.  There would therefore be additional annual charges for registering say or 
Do-it-yourself approach  
For those whose motto is
"Do or Diy"
The DIY approach relies on a trade mark owner not using the Trademark Clearinghouse service but registering the domain name itself at the end of the Sunset period.  After the Sunset period closes, the General Availability period opens.  However, the first seven days of General Availability comprise the Early Access Program. There is a fee for registering during this seven day period which is calculated on a sliding scale (ie days closer to the end of the Sunset Period are more expensive than days which are towards the end of the Early Access Program).  Even this can be very expensive, with this Kat having seen prices in the region of thousands of pounds to register domain names within gTLDs on day one of the General Availability phase.  After the Early Access Program closes, it is possible to purchase the domain name through a domain name register in the usual manner. 
The risk of doing nothing 
The dangers of trade mark owners not availing themselves of the Trademark Clearinghouse or doing it themselves approaches can be seen in relation to the recent release of the .lawyer, .attorney and .legal gTLDs.  
Most readers will probably not be aware of Mr Mykhailo Loginov and/or Loginov Enterprises doo (henceforth 'Loginov') in Serbia.  When the Sunset period expired for .lawyer and .attorney gTLDs in early October 2014, Loginov registered either or both of these gTLDs for at least 50 major UK and US law firms. In some instances, the domain names were 'parked', in other instances the domain names were for sale and in further instances, the pages contained links to law firms and legal providers who were not the law firm whose name was contained in the domain name.  
As far as this Kat is aware, three law firms so affected have taken domain name proceedings against to recover the domain names which relate to their trade marks: Gibson Dunn & Crutcher LLP, McGuire Woods LLP and Clifford Chance LLP..  The cases, decided by either the National Arbitration Forum or the WIPO Arbitration and Media Centre, all ran along the same lines.  That is, the law firm asserted rights and interests in the disputed domain name, and asserted that the disputed domain name was confusingly similar to one of its trade marks (ie the trade mark combined with a gTLD which was related to law); Loginov failed to file a response; the law firm argued that Loginov had no legitimate rights in the disputed domain name and that Loginov had registered and used disputed domain name in bath faith (especially in relation to the registration of other law firm names).  In each case the law firm was successful. 
Loginov may have learnt a lesson in that no .legal gTDs (whose Sunset Period ended earlier this month) appear to have been registered in these names.  However, this enterprise may have simply moved on to another industry whose Sunset Period has not expired or a third party may have already registered .legal domain names for other law firms.
The IPKat asks readers: do you think that new descriptive gTLDs serve a valuable purpose in today's crowded internet?  Or do you think that they are a clever ploy to annoy, distract and extract money from trade mark owners, whether it be through Trademark Clearinghouse / Early Access Program registration fees or through arbitration costs/panel fees? Merpel also wants to know: does it matter what your domain name is any more, now that most of us don't use them to find the site we're looking for?

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