The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Thursday, 31 January 2008

More on O2 v H3G

The IPKat has taken a proper read through AG Mezzoni's Opinion in O2 v H3G (see previous post for reference and details).

The case involved use by H3G of bubbles in an advert which compared its phone tarrifs to those of O2. O2 objected, arguing that the use infringed Art.5(1)(b) of the Trade Marks Directive (similar marks; identical goods) and, because it took unfair advantage of its bubbles and/or denigrated them, H3G's advert was unacceptable under the Comparative Advertising Directive as well.

The Court of Appeal referred 3 questions to the ECJ:

‘(1) Where a trader, in an advertisement for his own goods or services uses a registered trade mark owned by a competitor for the purpose of comparing the characteristics (and in particular the price) of goods or services marketed by him with the characteristics (and in particular the price) of the goods or services marketed by the competitor under that mark in such a way that it does not cause confusion or otherwise jeopardise the essential function of the trade mark as an indication of origin, does his use fall within either (a) or (b) of Article 5[(1)] of Directive 89/104?

(2) Where a trader uses, in a comparative advertisement, the registered trade mark of a competitor, in order to comply with Article 3a of Directive 84/450 as amended must that use be “indispensable” and if so what are the criteria by which indispensability is to be judged?

(3) In particular, if there is a requirement of indispensability, does the requirement preclude any use of a sign which is not identical to the registered trade mark but is closely similar to it?’

The AG opined that comparative advertising is harmonised by the Comparative Advertising Directive, and should not be considered under trade mark infringement. However, this did not stop him pointing out that, had trade mark infringement been relevant, it would have been a tricky one to decide since the ECJ's jurisprudence on trade mark use is contradictory.

IPKat comment: it's not quite open season on trade marks (as the anonymous comentator in the previous post suggests, since under the Comparative Advertising Directive, we still look at types of harm which are mighty similar to trade mark infringement. It looks like good old s.10(6) is truly superfluous now.

On the second question, the AG found that the use of the trade mark did not need to be dispensible. Such a requirement wasn't suggested by the wording of the Directive or in previous cases. Also, it would be contrary to the spirit of the Directive, which sees comparative advertising as a good thing.

The favourable approach to comparative advertising meant that it should also cover use of marks which were similar, rather than identical, to the comparee's mark.

The AG then appears to go beyond his remit saying that in the circumstances, it would be hard to see how H3G could have taken unfair advantage ofO2's mark here. The AG says that the whole point of comparative advertising is to gain an advantage for oneself by establishing a link with the compared product. Thus, such a link would only be unfair if it might cuase the public to associate the reputation of the comparee's products with the comparor's. Such a link wouldn't occur here because in addition to the bubbles, H3G had identified O2 by reference to its word mark. The AG also said that while o2 might be able to argue that the distortion of its bubbles denigarted them, it could not raise the issue of whether the use had damaged their distinctiveness because damage to distinctiveness isn't mentioned in Art.3a.

IPKat comment: this favourable approach to comparative advertising is to be welcomed. He cautions readers to avoid using the AG's definitions of unfair advantage in relation to Art.5(2) of the Trade Marks Directive since they seem very much based in the justifications for comparative advertising, and also, appear to introduce a confusion element.

In view of the answer to the second question, the third question didn't need to be answered.

AG'S Opinion in O2 v H3G

Advocate General Mengozzi has delivered his Opinion from the UK reference in Case C-533/06 O2 Holdings v Hutchison 3G (the case concerning comparative advertising using bubbles).

He concludes:

... I propose that the Court give the following answer to the questions referred by the Court of Appeal (England and Wales):

(1) The use of a sign identical or similar to the registered trade mark of a competitor in an advertisement which compares the characteristics of goods or services marketed by that competitor under that trade mark with the characteristics of goods or services supplied by the advertiser is covered exhaustively by Article 3a of Council Directive 84/450/EEC of 10 September 1984 concerning misleading and comparative advertising, as amended by Directive 97/55/EC of the European Parliament and of the Council of 6 October 1997, and is not subject to the application of Article 5(1)(a) or (b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks.

(2) Article 3a of Directive 84/450 is not to be interpreted as permitting the use, in a comparative advertisement, of a sign identical or similar to the registered trade mark of a competitor only when that use is indispensable for the purpose of identifying the competitor or the goods or services concerned.

More from the IPKat when he's had a chance to digest...

Spain condemned for non-implementation of resale rights directive

It's only available in French and Spanish, but the European Court of Justice ruling in Case C-32/07 Commission des Communautés européennes v Royaume d’Espagne makes it plain that the Spanish are in breach of their Euro-commitments by failing to implement correctly the provisions of Directive 2001/84 on droit de suite au profit de l’auteur d’une œuvre d’art originale (the resale right directive).

Right: it's magnificent and it's art -- but can you identify the creature on the left?

Since the judgment is so short, the Kat is reproducing it more or less in full here. If any kind person wishes to post an explanation below, he will be forever grateful.

"1 Par sa requête, la Commission des Communautés européennes demande à la Cour de constater que, en ne prenant pas les dispositions législatives, réglementaires et administratives nécessaires pour se conformer à la directive 2001/84/CE du Parlement européen et du Conseil, du 27 septembre 2001, relative au droit de suite au profit de l’auteur d’une œuvre d’art originale (JO L 272, p. 32, ci‑après la «directive»), ou, à tout le moins, en ne lui communiquant pas lesdites dispositions, le Royaume d’Espagne a manqué aux obligations qui lui incombent en vertu de cette directive.

2 Ainsi qu’il ressort de l’article 1er, paragraphe 1, de la directive, celle-ci a pour objet d’instituer un droit de suite au profit de l’auteur d’une œuvre d’art originale.

3 Aux termes de l’article 12, paragraphe 1, premier alinéa, de la directive, les États membres devaient mettre en vigueur les dispositions législatives, réglementaires et administratives nécessaires pour se conformer à celle-ci avant le 1er janvier 2006 et en informer immédiatement la Commission.

4 N’ayant pas reçu d’informations lui permettant de considérer que les dispositions nécessaires pour assurer la transposition de la directive dans l’ordre juridique espagnol avaient été adoptées dans le délai prescrit, la Commission a engagé la procédure en manquement prévue à l’article 226 CE. Après avoir mis le Royaume d’Espagne en demeure de présenter ses observations, la Commission a, le 4 juillet 2006, émis un avis motivé invitant cet État membre à prendre les mesures nécessaires pour se conformer à cet avis dans un délai de deux mois à compter de la réception de celui-ci.

5 La réponse des autorités espagnoles audit avis motivé ayant fait apparaître que les dispositions nécessaires à la transposition complète de la directive n’avaient pas encore été adoptées, la Commission a décidé d’introduire le présent recours.

6 Dans son mémoire en défense, le Royaume d’Espagne conteste la recevabilité du recours en invoquant un prétendu manque de précision de la requête. Selon cet État membre, la Commission s’est, en fait, bornée à formuler des appréciations générales sur le manquement reproché ne permettant pas au Royaume d’Espagne d’être informé des dispositions précises de la directive nécessitant une transposition en droit interne.

7 À cet égard, il y a lieu d’observer que, ainsi qu’il ressort du dossier, les autorités espagnoles ont reconnu elles-mêmes, dans leur réponse à la lettre de mise en demeure, que certaines dispositions de la directive, précisément identifiées dans cette réponse, n’avaient pas encore été transposées dans l’ordre juridique national. Partant, le Royaume d’Espagne ne saurait utilement prétendre, pour sa défense, qu’il n’avait pas connaissance des articles de la directive nécessitant une transposition dans son ordre juridique.

8 Il convient, par conséquent, de rejeter l’exception d’irrecevabilité soulevée par le Royaume d’Espagne et de déclarer recevable le recours de la Commission.

9 Quant au fond, le Royaume d’Espagne indique que la législation espagnole, notamment l’article 24 du texte codifié de la loi sur la propriété intellectuelle, approuvé par le décret royal législatif 1/1996, du 12 avril 1996, qui régularise, clarifie et harmonise les dispositions en vigueur en la matière (BOE n° 97, du 22 avril 1996, p. 14369), assure une transposition partielle et anticipée de la directive. Toutefois, il ressort du mémoire en défense de cet État membre que l’ensemble des mesures nécessaires à la transposition complète de cette dernière n’ont pas été adoptées dans le délai prescrit.

10 À cet égard, il suffit de rappeler que, selon une jurisprudence constante de la Cour, l’existence d’un manquement doit être appréciée en fonction de la situation de l’État membre telle qu’elle se présentait au terme du délai fixé dans l’avis motivé et que les changements intervenus par la suite ne sauraient être pris en compte par la Cour (voir, notamment, arrêts du 14 septembre 2004, Commission/Espagne, C‑168/03, Rec. p. I-8227, point 24; du 14 juillet 2005, Commission/Allemagne, C‑433/03, Rec. p. I‑6985, point 32, et du 28 juin 2007, Commission/Portugal, C‑410/06, non publié au Recueil, point 10).

11 En l’espèce, il est constant que, à l’expiration du délai imparti dans l’avis motivé, toutes les mesures destinées à assurer la transposition de la directive dans l’ordre juridique espagnol n’avaient pas été adoptées.

12 Il s’ensuit qu’il y a lieu de considérer comme fondé le recours introduit par la Commission.

13 Par conséquent, il convient de constater que, en ne prenant pas, dans le délai prescrit, toutes les dispositions législatives, réglementaires et administratives nécessaires pour se conformer à la directive, le Royaume d’Espagne a manqué aux obligations qui lui incombent en vertu de cette directive".
Spanish art here
Spanish art at auction here

Valencian mandarins in Luxembourg squeeze

It's not often that the IPKat detects a plant varieties case on his radar, but one appeared as if by magic on the Curia website today: it's Case T‑95/06, Federación de Cooperativas Agrarias de la Comunidad Valenciana v Community Plant Variety Office (CPVO), Nador Cott Protection SARL intervening.

What was the story? The case turns on the legal capacity of the Federación (a federation of unions of farming cooperatives in the Spanish provinces of Alicante, Castellón and Valencia), which sought to set aside a decision of the Board of Appeal of the Community Plant Variety Office (CVPO).

Back in 1995, the breeder of the Nadorcott mandarin variety (discreetly referred to as "N") assigned his rights in that variety to an assignee, equally discreetly labelled "M". On the same day, M applied to the CPVO for the grant of a Community plant variety right in that variety. In March 1997 M assigned his rights in the Nadorcott mandarin to a company, Nador Cott (the intervener in these proceedings) and informed the CPVO accordingly. The CPVO finally granted a Community plant variety right in October 2004. In 11 February 2005 the Federación appealed to the CPVO Board of Appeal. It stated that the grant of this plant variety right was of direct and individual concern to it and explained that the plant variety right was invalid for lack of novelty and distinctive character. Nador Cott objected, both arguing that the Federación had no locus standi because, inter alia, it was not directly and individually concerned by the decision granting the right and submitting that the appeal was bound to fail on substantive grounds. The CPVO agreed that the appeal was inadmissible for want of locus standi and that the appeal should be dismissed on its substantive merits.

At the hearing of the Board of Appeal the Federación (i) argued that, pursuant to Article 49 of the implementing regulation, the Board of Appeal should have called upon it, before the hearing, to submit documents establishing that its members were directly and individually concerned by the decision granting the right and (ii) asked for time to return to Spain to assemble and produce complete documentation to that effect, or at least to be allowed to produce at the hearing the incomplete documentation to that effect which its representatives had brought with them. It stated that that documentation included documents empowering it to bring an appeal on behalf of individual mandarin growers and a contract between Geslive (the body responsible for the management and defence in Spain of Nador Cott's rights in the Nadorcott variety) and the Anecoop cooperative (a member of a union of cooperatives affiliated to the Federación) concerning payment by the latter of royalties for cultivation of Nadorcott. The Board of Appeal dismissed the Federación's appeal as inadmissible and rejected its application for leave to produce documents. The Federación then appealed to the Court of First Instance, which dismissed the appeal and awarded costs against the Federación.

The IPKat does not propose to go into the details of the reasoning, which are based on general principles of Community law and do not cast much light on the IP-specific bits of the dispute. He will however observe that, particularly where small businesses are concerned, the formation of bodies such as the Federación makes a lot of sense. This is not a case of global mega-corporations bonding together in order to protect their powerful market position through the increasingly transparent veil of the technical standard-setting cartel; this is a bunch of fruit-growers from a hot, dusty corner of the Iberian peninsula. While the position taken by the CVPO and the CFI may be technically correct as a legal proposition, we may wonder whether the interests of right holders and those who challenge those rights are not better served by the administrative convenience and economies of scale that representative actions can achieve.

Recipes for mandarin marmalade here and here
Mandarin as an aphrodisiac here
how cats miaou in Mandarin here

Wednesday, 30 January 2008

U2 versus YouTube ...?

Courtesy of his good friend Simon Haslam (Abel & Imray), the IPKat reports on the BBC's account that rock band U2 manager's Paul McGuinness has urged internet service providers to help end illegal music downloads, pleading for the disconnection of those who acquire tracks illegally. Speaking at the Midem conference in Cannes, he emphasized that it was time for artists to stand up against what he called the "shoddy, careless and downright dishonest way they have been treated in the digital age". To blame are record labels and governments who "created a thieves' charter" by agreeing that ISPs should not be responsible for what passed along their networks, adding:

"If you were a magazine advertising stolen cars, handling the money for stolen cars and seeing to the delivery of stolen cars, the police would soon be at your door. That's no different to an ISP, but they say they can't do anything about it. If you steal a laptop from a store or don't pay for your broadband service, you'll soon be cut off and nicked".
The Internet Service Providers Association has always maintained that it cannot be held responsible for illegal peer-to-peer traffic because it is "merely a conduit" of such material.

Says Simon,
"If I recall correctly, U2 used to provide tapes (remember those?) with U2 music on one side but blank on the other so that you could tape someone else's music on to the blank side".
U2 position on taping here

London Agreement: 1 May 2008

Further to the IPKat's post yesterday, he has now received reliable information from impeccable sources that the London Agreement will be entering into force on 1 May 2008. The French instrument of ratification, the final hurdle to getting the agreement going, was indeed deposited yesterday (29 January). Expect to see official confirmation shortly from the EPO (and their status page here).

11 Feb update: The EPO have now published a useful list of 'key points' regarding the countries in which the London Agreement will enter into force, and what will be required as from 1 May 2008.

A Victory for Cats (and anonymity) at the UK-IPO

As a cat, I feel it is my right to be able to catch, kill and eat birds as I see fit. Bird tables are usually good places to do this, as humans often use them to attract birds with food. I was therefore startled and disturbed, not to say quite angry (see picture, left, of me looking less than pleased) to see that someone had filed a request for an opinion on a GB patent (GB2339667) titled "Cat Free Extended Feed Bird Table". The patent claimed the following:

"A bird feeding table having more than one feeding container or tray each being supported centrally on a pole, each container or tray being at a different level on the pole, there being at the lowest level, a plastics tray having an upstanding peripheral lip, the plastics tray having a horizontal area larger than the horizontal area(s) of the or each tray or container above."

The bird tables described in the patent (see example, right) emphasised that the purpose of the plastics tray with the upstanding peripheral lip was for "making it impossible for cats to jump on to the table, or see birds that are feeding from within the base lid". Now, of course, if that were to be the case, I would be very unimpressed by such a bird table being placed in my garden.

The requester and patent owner, a Mr John Hadleigh, was alleging that his patent was infringed by products alleged to have been imported into the UK and sold by HHS Trading (UK) Ltd (see picture, below right).

To my eyes, it looked like a fairly easy job to get birds from these allegedly infringing tables. From my feline perspective, if I was standing next to this table I would definitely be able to see the bird standing on the rim and, if feeling energetic enough, would be able to at least make an attempt to get it. Whether I got the bird or not would be a factor of my agility and the bird's fleetness, but not to do with the bird table preventing me.

Obviously, I could not stand idly by while such a patent was being used in this way, largely because I would much prefer to see bird tables of the HHS sort than the ones made by Mr Hadleigh, even if Mr Hadleigh's tables didn't work as advertised (as, I suspect, would be the case).

So, within the 4 week time limit specified by Rule 77F of the Patents Rules 1995 (this was before the new rules came into force, but the new ones are just the same in substance), I filed some observations on the request. I first wondered whether I would be allowed, since Rule 77F specifies that "any person" may file observations. Thinking about it for a little while, I proposed to the examiner the following:

"According to rule 77F, “any person may, before the end of the relevant period, file observations on any issue raised by the request”. I submit that the term “any person” must also include cats, not least because the question of whether the articles submitted by the requester infringe the patent is clearly of vital relevance to animals of the species felis sylvestris.

Furthermore, since my paws are unable to operate keyboards effectively, I have delegated the responsibility of preparing and filing these observations to my servant and amanuensis, who wishes to remain anonymous. On a plain interpretation of rule 77F, the observations have been filed by a person, if this is construed to mean a human
[Tufty comment: the observations were filed by email]. To construe otherwise would be to confer digital manipulation skills that I do not possess.

If the examiner maintains the latter interpretation (i.e. that observations must be filed by a human person), I further contend that there is no reason why anonymous (or pseudonymous) observations should not be taken into account, not least because there are no provisions within section 74A or the associated rules 77A to 77K to prevent this."

I then went on to point out to the examiner that, on a normal construction of the patent claim in line with Kirin Amgen, the claimed bird table would need to have at least an element of being “cat-free”, i.e. constructed such that cats could not easily access birds feeding on the table, even though the claim did not literally specify this. The alleged infringement would clearly not be cat free, particularly if I had anything to do with it. Although this should have been enough to dispose of the matter, I also made the point that the alleged infringement did not have the "upstanding peripheral lip" required by the patent, and even if it could be termed to be upstanding it would not serve the purpose of the lip of the patent claim, which was to prevent cats from jumping up and from seeing birds on the table.

After the usual two month wait, the UK-IPO examiner then issued his opinion (now published as Opinion 24/07), and kindly sent me a copy. The most significant comment came in first, with the examiner saying:
"Observations were filed by an unidentified third party, which asserted that neither of the products infringed the patent. No observations were received from HHS Trading (UK) Limited.

Observations in reply have also been received from the requester. Whilst the requester disagreed with the observer’s conclusions, he supported the right of the third party to file observations anonymously. There are no provisions in section 74A nor rule 96 (formerly rule 77F) that prohibit anonymous observations. Accordingly, I intend to fully consider the observer’s comments in this opinion."

Following the usual Kirin Amgen approach, the examiner then assessed what the skilled person would understand the patentee to mean by the claimed invention, the skilled person in this case being a "manufacturer or vendor of structural garden products used in the care of animal wildlife".

The examiner did not agree with me that the claimed invention should be construed specifically as a “cat-free bird feeding table”, since in his view it would be unrealistic to expect the protection to be absolute (although this was not what I had actually stated). The examiner further stated,
"Like all animals, cats can vary significantly in size and may even use garden or topographical features, such as a fence or elevated ground, to assist in their efforts to reach birds feeding at the table. I agree with the requester, therefore, that the claim should not be construed in the narrow fashion proposed by the observer."

The examiner did, however, agree with me that the "upstanding lip" of the lowest plastics tray should be substantially vertically disposed with respect to a planar base. This was sufficient in itself to rule out the HHS bird table from being an infringement, the examiner agreeing with me that the lower receptacle of the HHS bird table did not comprise an upstanding peripheral lip when the claim was properly construed. A second, slightly different, alleged infringing article was also ruled out of being an infringement on the same claim construction.

Although I am a little upset that the examiner did not choose to recognise my feline rights to file observations, and that he did not in my view get the construction right, the correct result appears to have been arrived at. Probably of more interest to the general patent practitioner is that there is apparently no reason why observations cannot be filed anonymously. For other cats out there, you now know what to do to assert your feline rights.

Tuesday, 29 January 2008

May Day for the London Agreement?

According to the president of the German federal association of patent attorneys (Bundesverband Deutscher Patentanwälte), France is currently in the process of depositing the instrument of ratification of the London Agreement. It is expected that this will be done today (29 January). By the IPKat's calculations, in accordance with Article 6 of the Agreement, it will then enter into force on 1 May 2008.

Thanks to Joff Wild's IAM blog for bringing this to the IPKat's attention.

Proportionality is the key in music copyright pre-dispute

The Court of Justice of the European Communities gave its ruling this morning in Case C‑275/06, Productores de Música de España (Promusicae) v Telefónica de España SAU, this being a reference for a preliminary ruling by the Juzgado de lo Mercantil No 5 de Madrid, Spain.

In short, Promusicae is a non-profit-making organisation of producers and publishers of musical and audiovisual recordings. In November 2005 it sought a preliminary order against Telefónica, a commercial company whose activities include the provision of internet access services, asking that Telefónica be ordered to disclose the identities and physical addresses of certain persons whom it provided with internet access services, whose IP address and date and time of connection were known. According to Promusicae, those persons were users of the KaZaA peer-to-peer file exchange program and provided access, through shared files on personal computers, to phonograms in which the members of Promusicae held the exploitation rights. According to Promusicae the KaZaA users were engaging in unfair competition and infringing intellectual property rights, so it was entitled to disclosure of their personal details so that civil proceedings could be brought against them. The Juzgado de lo Mercantil No 5 de Madrid agreed and ordered the disclosure.

Telefónica appealed, contending that the communication of the data sought by Promusicae was authorised only in a criminal investigation or for the purpose of safeguarding public security and national defence, not in civil proceedings or as a preliminary measure relating to civil proceedings. Promusicae disagreed, arguing that there relevant provisions of Spanish law must be interpreted in accordance with Community law. The Juzgado de lo Mercantil No 5 de Madrid decided to stay the proceedings and referred the following question to the Court for a preliminary ruling:

"Does Community law, specifically Articles 15(2) and 18 of Directive [2000/31], Article 8(1) and (2) of Directive [2001/29], Article 8 of Directive [2004/48] and Articles 17(2) and 47 of the Charter … permit Member States to limit to the context of a criminal investigation or to safeguard public security and national defence, thus excluding civil proceedings, the duty of operators of electronic communications networks and services, providers of access to telecommunications networks and providers of data storage services to retain and make available connection and traffic data generated by the communications established during the supply of an information society service?".
Today the court has given its answer, in a single paragraph which makes up for, in its length, what it loses in its clarity:
"Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’), Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, and Directive 2002/58/EC of the European Parliament and of the Council of 12 July 2002 concerning the processing of personal data and the protection of privacy in the electronic communications sector (Directive on privacy and electronic communications) do not require the Member States to lay down, in a situation such as that in the main proceedings, an obligation to communicate personal data in order to ensure effective protection of copyright in the context of civil proceedings. However, Community law requires that, when transposing those directives, the Member States take care to rely on an interpretation of them which allows a fair balance to be struck between the various fundamental rights protected by the Community legal order. Further, when implementing the measures transposing those directives, the authorities and courts of the Member States must not only interpret their national law in a manner consistent with those directives but also make sure that they do not rely on an interpretation of them which would be in conflict with those fundamental rights or with the other general principles of Community law, such as the principle of proportionality".
Says the IPKat, put more simply, the ECJ means this:
"The various European IP and telecoms directives doe not require the Member States to lay down an obligation to communicate personal data in order to ensure effective protection of copyright in the context of civil proceedings, but they do require those countries to take care that, when transposing directives, they rely on an interpretation of them which allows a fair balance to be struck between the various fundamental rights protected by the Community legal order. National law must be interpreted in a way which is consistent with those directives and the courts should not rely on an interpretation of them that conflicts with those fundamental rights or with the other general principles of Community law, such as the principle of proportionality".

Left: the IPKat faces the reality of proportionality in EU law

Says Merpel, now it's all up to the Spanish courts -- and proportionality is a much easier principle to enunciate than it is to apply to any set of facts, particularly where proportionality can take into account so many different considerations but the result in this case is binary: either the personal details of KaZaA users will be disclosed or they won't.

Music and proportionality here and here
An Equal Music here and here

Monday, 28 January 2008

M-Systems v Trek 2000: USB sticks get stuck

Another judgment from the Honourable Mr Justice Kitchin has just appeared, this time being available in full from BAILII (unlike the one from a couple of days back). The case relates to revocation and (among other things) to whether a patentee should be allowed to amend their patent under section 75.

The patent in question related to high-capacity USB memory sticks, which may now be very familiar to most computer users but which, when the patent was applied for in 2000, were not particularly well known, at least not in the form they are nowadays (above right: a 4GB USB stick available from eBuyer). The granted patent claimed:

A portable data storage device comprising a coupling device for coupling to a computer serial bus, an interface device coupled to the coupling device, a memory control device and a non-volatile solid state memory device; the memory control device being coupled between the interface device and the memory device to control the flow of data from the memory device to the coupling device.
In earlier proceedings before the Comptroller, M-Systems had been successful in their application to revoke Trek's GB patent, citing various prior art disclosures describing plug-in memory devices. Trek then claimed that their devices were actually much smaller, had higher capacity, were limited to USB devices that replaced CD-ROMs and could be plugged directly into a serial socket rather than requiring a cable. They consequently submitted amendments to work around the prior art in an attempt to maintain their patent in some form. The Hearing Officer did not, however, allow them to amend because their proposed amendments did not address the issues, added subject matter and in any case should not be permitted because Trek had failed to establish why the Comptroller should allow them. The issue of discretion to amend revolved around an unresolved argument as to exactly when Trek had become aware of certain prior art disclosures, and whether as a result they should be given discretion to amend, under the provisions then in force. Trek even tried to argue that to be forced to disclose when they knew about relevant prior art would be contrary to the Human Rights Act 1998 [this is the point where the IPKat's credulity in Trek's arguments started to crumble].

After reconsidering the several issues raised during Patent Office proceedings, Kitchin J found that the Hearing Officer had been correct on every single point. On the issue of discretion to amend, however, Kitchin had something else to say that unfortunately (at least for Trek) could have no bearing on the case in point, but will certainly be relevant in the future:
"I have found the proposed amendment is not allowable because it would result in the specification disclosing additional matter. However, the Hearing Officer also rejected it for a further reason, namely that he had not been provided sufficient information to permit him to allow the amendment in the exercise of his discretion. On 13 December 2007, after the conclusion of the appeal hearing before me, the Patents Act 2004 came into force. Section 2(5) amends section 75 of the 1977 Act and reads:

'(5) In section 75 of that Act (amendment in infringement or revocation proceedings), after subsection (4) there is inserted-

"(5) In considering whether or not to allow an amendment proposed under this section, the court or the comptroller shall have regard to any relevant principles applicable under the European Patent Convention."

Section 75(5) applies to all patents (whether UK patents or European patents (UK)) and whether granted before or after 13 December 2007 and it undoubtedly radically alters the approach to be adopted to amendment applications. However, this is an appeal by way of review and not rehearing. Accordingly, it cannot possibly have any impact upon the outcome of this appeal unless I conclude that, under the old law, the Hearing Officer wrongly exercised his discretion so that the exercise of that discretion must be set aside."
This radical altering of the approach to be adopted could only mean that the provisions of Article 105a and associated rules of EPC2000 should now be used when considering post-grant amendments under sections 27 and 75. There is no provision in EPC2000 to allow the EPO to exercise discretion to amend, provided the basic formal requirements are met. The new form of sections 27 and 75 would therefore effectively remove all discretion from the courts and Patent Office hearing officers to disallow amendments on the grounds that the patentee knew about prior art and did nothing about it. Could this, the IPKat wonders, allow patentees with 'dirty hands' to get away with a bit more in future?

Would you like a Patent Pal?

While checking his RSS feed figures, the IPKat recently came across a new useful tool for patent-types that appeared to be boosting his figures by virtue of it becoming popular for checking up on what the Kat is up to. It is in the form of a toolbar add-on for web browsers, called Patent Pal (downloadable from here). It apparently works with both IE and Firefox browsers. It is also, as far as the IPKat can tell, not 'malware' and is ad-free (for now at least).

Patent Pal has been created by Jay A. Wahlquist (right), a registered US patent attorney with the Minneapolis based firm of Fogg & Powers LLC. Jay practices in the areas of electrical and electronic technologies, and clearly knows a thing or two about computers.

The toolbar has various nifty little features, including a blog checking facility that can keep you up to date with many of the more popular patent-related IP blogs (including, of course, the IPKat). It also has plenty of other information about patent law, including links to where to find the patent law of many countries around the world.

The only downside the IPKat could see was the fact that the toolbar is very US-centric, with many links on it to things about US patent law and practice he would rather not have to know about (but nevertheless fears that he should). These can, however, be turned off. Jay also points out that he is happy to include additional links if you email him here.

Lawyer asserts copyright in cease and desist letter

The IPKat has learnt from Slashdot that a lawyer in the US has managed to win a copyright case against a website which posted a cease and desist letter that he sent.

The case is somewhat of an oddity, as rather than being a staightforward infringement case, it is a case under the DMCA in which an ISP was asked to identify an alleged infringer, and so the would-be copyright owning lawyer only had to show prima facie evidence of infringement. The court mentioned, but declined to rule on, whether the letter has the modicum of creativity that is required to qualify it for protection under copyright law. Instead it found that the fact that the lawyer had a certificate of copyright registration was prima facie evidence of eligibility for copyright protection. The entire letter was published online, so there was no problem with showing that an original part of the work was published.

The IPKat notes that this could deprive the 'little guys' of the ability to engage in self-help, and he wonders if it's a bit of an own-goal for a lawyer to show that he's ashamed of what he has written by using copyright law to limit its dissemination. He notes though that in the UK we have actions for unjustified threats of infringement which may protect the 'little guys'.

Extracts from the case here.

Soon they'll be giving it away ...

The BBC (carefully monitored by the IPKat's friend Jim Davies) brings news today that record labels Warner, EMI and Universal have denied signing deals allowing their music to feature on the new Qtrax file-sharing service offering unlimited free downloads. Qtrax claimed it would carry up to 30 million tracks from "all the major labels", adding it expected an agreement to be reached with Warner and that terms had been agreed with the others even if deals had not been formally signed.

Meanwhile, online retailer Amazon has announced the international rollout of its digital music store and claims to be the only retailer to offer DRM-free MP3s for the four major record labels as well as thousands of independent record labels.

The poor, confused IPKat decided to avoid Qtrax since he heard a rumour that the "cost" of this free music was that you have to watch quantities of advertising (not his favourite business model). Instead, he went hunting for the Amazon international rollout but, embarrassingly, couldn't find it on the rather busy screen display. Says Merpel, at the rate at which recorded music is being made available, it won't be long before we're all paid by the copyright owners to download it -- at least that's the way things seem to be going.

Free music here

Recent periodicals

The December/January issue of Euromoney's 10-times-a-year Managing Intellectual Property is looking just great (you can see all the contents of the current issue here). The cover story features "The brand reality of Second Life", a review by staff reporter Emma Barraclough on the delicate and uncertain position regarding the use and abuse of trade marks and related IP in an environment in which, despite its ephemeral nature, there is much to be gained and lost. There's also an extremely handy survey by Taylor Wessing's Roland Mallinson of the extent, if any, to which the national laws of various jurisdictions can render landlords liable for the infringing activities of their tenants. Countries surveyed include China, Korea, the Philippines and the UK as well as a small sprinkling of European nations.

The December 2007 issue of the World Intellectual Property Organization's (WIPO's) bimonthly WIPO Magazine (no.6 of 2007) also looks at Second Life. Unlike MIP's account, WIPO's is written for a more general readership than the fraternity of IP "heavies", which makes it more accessible to the reader who is happier doing business than resolving legal problems. By a curious coincidence, the content of the most recent MIP is mirrored again by an article on making landlords liable for tenants' infringements in China -- this being written by Baker & McKenzie partner Joseph Simone. You can access the current issues of the WIPO Magazine and its archives online here.

The December 2007/January 2008 issue of Copyright World, by an even bigger coincidence, leads with a cover story on ... virtual reality and real infringement, "Copyright in Second Life", by the Covington & Burling team of Kristina Rosette and Mark Young.
This piece focuses a good deal on the significance of the TOS (terms of service) under which Second Life's owners Linden Labs seek to find a happy medium between overregulating behaviour in their virtual environment and losing control of it completely. Also worth a read is the somewhat depressing survey of some recent US case law on the legality of linking by Margaret Esquenet and Danny Awedh (Finnegan, Henderson, Farabow, Garrett & Dunner). Says the IPKat, what we need now is a sort of legal SatNav to guide us through a morass of conflicting or unclear case law in flow-chart format. Any takers? You can see what else is in this issue here.

Trademark World's December 2007/January 2008 issue (see here for contents) doesn't deal with Second Life or making landlords liable. Its cover story comes from Nellie Jackson (Bristows) on the moral highground and how it makes an impact on OHIM (and UK Registry) decisions on trade mark and design registrability. This article was written and published too early to take note of one of the rulings that the IPKat is currently pondering over: Alvito Holdings Ltd's application, Case R 1461/2006-4 (one of two applications to register a sign containing the words "Not made in China": examiner refuses on public policy grounds; Board of Appeal finds mark unregistrable as being descriptive ...)

Sunday, 27 January 2008

Logistep and the Swiss dodge; Japan arrests virus writers -- for what?!

Info World has just informed the IPKat that Switzerland has warned Logistep, a company that tracks file-sharers for copyright infringements, that its tactics violate Swiss telecommunication law. Under Swiss law, the identity of a subscriber to an ISP can only be revealed for the purpose of a criminal case, not a civil one, since the IP address of a computer controlled by a subscriber is considered "personal" information. To protect its position, Logistep has asked Swiss prosecutors to open criminal cases. A civil action is then initiated against the file sharer while the criminal case is ongoing. At this point, it seems that prosecutors usually drop the criminal case and leave everything to the civil action. Logistep has until 9 February to respond to the Swiss Federal Data Protection and Information Commissioner.
Left: starting young - Logistep training its staff on the latest dodging techniques

The IPKat concedes that Logistep's tactics so far have been a neat way of dodging the Swiss telecoms laws. But file-sharing is a neat way of escaping the likelihood of an action for copyright infringement and that's also a sort of dodge.

Meanwhile, the IPKat's friend and fellow blogger Tomasz Rychlicki has sent him this link to an item from Sophos about the first arrest of a computer virus writer in Japan -- for copyright infringement. According to this news item:

"Police in Kyoto have arrested three men, who are said to have been involved in a plot to infect users of the P2P file-sharing network Winny with a Trojan horse that displayed images of popular anime characters while wiping music and movie files. The malware, which has been dubbed Harada in media reports, is believed to be related to the Pirlames Trojan horse which Sophos reported intercepting in Japan last year.

According to Japanese media reports, the three men have admitted their involvement in the crime. Masato Nakatsuji, a 24-year-old student, is said to have written the malware, while 39-year-old Shoji Sakai and Katsuhisha Ikema, 35, are said to have distributed the malicious code via Winny.

The Pirlames Trojan, which is believed to be related to the arrests in Japan, was distributed via Winny and displayed cartoon images.

"Normally you would expect malware writers to be arrested for breaking into computers with their code or damaging data, but in this case he is accused of breaching copyright because he used cartoon graphics without permission in his Trojan horse. Because this is the first arrest in Japan of a virus writer it's likely to generate a lot of attention and there will be many people watching to see the outcome," said Graham Cluley, senior technology consultant for Sophos. "Malware is truly a global menace, impacting on every user of the internet, and it is good to see police around the world doing their bit to tackle the problem." ..."
Noting that the effect of this virus was to erase shared files, the IPKat can't help wondering about the motivation of the virus writers. Were they just seeing what they could achieve, or did they have some inherent moral or economic ground upon which to oppose file-sharing?

Saturday, 26 January 2008

Gola kicks Globe into touch

Fresh from BAILII comes a trade mark ruling on Friday from the Chancery Division (England and Wales), from Mr Justice Etherton: D Jacobson & Sons Ltd v Globe GB Ltd and another [2008] EWHC 88 (Ch). Jacobson acquired the GOLA footwear brand and its associated intellectual property rights way back in 1996. Globe sold and imported footwear into the United Kingdom, including shoes known as 'Globe Finale', 'Globe Wedge' and 'Globe Motto'. Globe's shoes featured a stripe design on the sides known as the 'Globe side design' and the word 'globe'. Jacobson sued for infringement of its UK and Community registered trade marks (above, left and right) for its 'Wing Flash' logo in respect of Globe's markings on its trainers (illustrated below, right). Jacobson also alleged that Globe was passing its footwear off as its own, seeking an injunction and the destruction of the offending products. Globe counterclaimed for a declaration that Jacobson registered trade marks were invalid.

On the validity issue Globe submitted that the Gola trade marks were invalid because the Wing Flash logo was not a sign capable of distinguishing the goods of its proprietor from those of other undertakings. As to infringement, Globe argued that the side design was not intended to be a mark of origin, but rather mere decoration.

Etherton J held for Gola on both issues. In his opinion

* Jacobson's marks were inherently distinctive. Taking the evidence as a whole, including evidence of matters post-registration which might throw light on what the attitude of the average consumer had been at the earlier date of registration, the Wing Flash would have been recognised by the average consumer as a distinctive mark of origin of the shoes, distinguishing their provenance from those produced by other manufacturers.

* infringement had been established, since the consumer was likely to be confused into believing that Globe's and Jacobson's products came from related undertakings.

* Globe was also liable for passing off. Even though there was no evidence of actual loss and damage by reason of the confusion generated by the Globe shoes, the confusion between the two brands put Jacobson's goodwill at risk since it was unable to control Globe's use of its markings.
The disturbing thing in this case, says the IPKat, is not the result or the law, but the very large degree to which expert evidence has been deployed. He seems to remember judicial statements -- admittedly going back to the previous century -- to the extent that likelihood of confusion of the relevant consumer was something that the courts should be able to determine for themselves. Did something change in the meantime?

Friday, 25 January 2008

High Court allows computer program patent claims

In a surprising (to this Kat at least) turn of events, the Honourable Mr Justice Kitchin has ruled today that the current UK Patent Office practice of flatly rejecting patent claims to computer program products is wrong. The judgment, in the matter of several GB patent applications in the name of Astron Clinica and others, is now available from BAILII here. Many thanks go to John Gray of Murgitroyd & Co. for originally passing the news on.

After comprehensively summarising the last couple of decades of legal developments, covering the usual suspects (Gale, the oft-misspelled Merrill Lynch, Fujitsu and various EPO decisions), Kitchin J arrived at the main question in this appeal, which was whether the UK-IPO was correct in construing that the Court of Appeal judgment in Aerotel/Macrossan inevitably prohibited the patenting of all computer programs, or whether the old approach of considering the 'potential' technical effect of a computer program (following the EPO approach) could be taken into account, in a similar way to considering the effect of a method claim that would inevitably be carried out by running a program (which all of the applications under appeal contained). The UK-IPO had concluded that Aerotel/Macrossan ruled out computer program product patent claims, and consequently reverted to its old practice of rejecting such claims.

Kitchin J, however, considered that the point did not actually arise in Aerotel/Macrossan, because the court was not even asked to consider the question of computer program products claims. Although the Court of Appeal had criticised many EPO decisions, it had not criticised the main decisions relating to this point, being T 1173/97 and T 935/97. Also, the new four step test approach should produce the same result as the 'old' approach, and the Court of Appeal had said as much by saying that Merrill Lynch must be followed.

Probably more importantly, Kitchin J recognised that it was highly undesirable to have provisions of the EPC construed differently at the EPO as compared with the courts in the different contracting states, and that decisions of the Boards of Appeal should be highly persuasive. Mention was also made of the contrasting approach taken in Germany, where the EPO line tends to be followed closely.

The apparent approval of the UK-IPO's rejection of computer program product claims in Oneida Indian Nation's Application [see IPKat commentary here] was either rejected by Kitchin J as not actually meaning that, or was in the alternative respectfully disagreed with (as the High Court is allowed to do, in contrast with the Court of Appeal), depending on the different possible interpretations of Christopher Floyd's judgment.

In conclusion then, Kitchin J found that the appeals should be allowed. Each application concerned a computer related invention where the examiner had allowed claims to, in effect, a method performed by running a suitably programmed computer and to a computer programmed to carry out the method. The Hearing Officer had rejected corresponding program claims on the basis that they were necessarily prohibited by Article 52, and in Kitchin J's judgment he had erred in doing so. The cases were remitted to the UK-IPO for further consideration in light of the judgment.

The IPKat is, frankly, quite amazed by the judgment, because he was (apparently quite wrongly) convinced that there was no room for manoeuver after Aerotel/Macrossan, in particular in light of one of the central points of A/M being that the scope of the monopoly must be considered when construing the claim, which appears to have formed the basis of the UK-IPO's change of practice. He wonders whether the story has run its course for now, and if we can simply all go back to falling into line with the EPO, or if the UK-IPO will judge that this one is worth going further on. Will they? Can they? Should they? What would/does the embattled Lord Justice Jacob think? The IPKat would very much like to know, and he suspects his readers may be just about to tell him...

Catch up with the issues from the IPKat's previous posts here, here, here, here, here, here, here, here, here and here (to cite just a few).

28 Jan Update: This post has now been linked to, and commented on, in (at the latest count) Slashdot, I/P Updates, Patently-O, the IAM blog, and IP:Jur, as well as in Greg Aharonian's latest Patnews email. Many thanks to all. Expect something to appear shortly on Out-Law and the Register.

Lords, Ladies ...

Breaking news comes to this weblog in the form of the revelation by Managing Intellectual Property magazine's website that Baroness (originally Sally) Morgan is to become the next British Minister for Intellectual Property, in succession to Lord Triesman.

At the time of writing, it is not known whether she likes Kats.

Alternatively, and contrary to what MIP's website says (but according to one commenter below), the next IP minister is actually Baroness Morgan of Drefelin (left).

The IPKat is now confused...

IFPI: time for ISPs to pull their digitals out...

Ben Challis (Music Law Updates) has tipped the IPKat off that IFPI has published its Digital Music Report 2008. The press release leads with the slogan “2007 was the year ISP responsibility started to become an accepted principle. 2008 must be the year it becomes reality”.

Right: once upon a time, digital music meant THIS

The press release continues, in relevant part:

"Governments are starting to accept that Internet Service Providers (ISPs) should take a far bigger role in protecting music on the internet, but urgent action is needed to translate this into reality ....

Record companies continued their transition into a digital business in 2007. Music sales via online and mobile channels have risen from zero to an estimated US$2.9 billion – 15 per cent of industry sales - over the last five years, making music more digitally advanced than any entertainment sector except games. [says the IPKat, no-one can seriously accuse the recording industry of trying to cling to existing business models now, surely?]

Yet the spread of unlicensed music on ISP networks is choking revenues to record companies and investment in artists [the IPKat wonders whether artists are not themselves becoming more robust in their self-promotion, now that recording companies are becoming more penny-prudent in their budgeting], despite a healthy increase in digital sales in 2007, up approximately 40 per cent on the previous year.

ISP cooperation, via systematic disconnection of infringers and the use of filtering technologies, is the most effective way copyright theft can be controlled. [the IPKat's surprised that systematic disconnection is put first on this little list, when--particularly with continued convergence of technologies--it's so easy to get around] Independent estimates say up to 80 per cent of ISP traffic comprises distribution of copyright-infringing files.

The IFPI Digital Music Report 2008 points to French President Sarkozy’s November 2007 plan for ISP cooperation in fighting piracy as a groundbreaking example internationally. Momentum is also gathering in the UK, Sweden and Belgium. The report calls for legislative action by the European Union and other governments where existing discussions between the music industry and record companies fail to progress.


The report outlines the prospects and challenges for digital music as record companies move from a single format world to one of hundreds of formats and digital products. It shows experimentation with new revenue streams, including advertising-supported models and partnership with social networks. It also outlines the work record companies are doing in artist development and marketing of talent in the digital environment.

Left: paws for thought

There is analysis of the impact of copyright theft on the legitimate music business globally, as well as the strategies of the industry’s anti-piracy actions in disrupting it. The report highlights efforts to develop a legitimate digital music business in China - where digital piracy runs at more than 99 per cent. It also outlines the work done by IFPI to curb pre-release piracy, which threatens producer and artist revenues at the most critical time of an album’s life-cycle.

The report also outlines the hidden dangers to consumers and businesses of illegal downloading, and gives a comprehensive summary of the public education work being done internationally by the record industry to improve awareness of legal online sites and of copyright.

Highlights include:

· The first-ever global music download sales chart is topped by Avril Lavigne, who sold 7.3 million track downloads of her song ‘Girlfriend’ across the world in 2007

· Global digital music sales are estimated at approximately US$2.9 billion in 2007, a roughly 40% increase on 2006 (US$2.1 billion)

· Single track downloads, the most popular digital music format, grew by 53% to 1.7 billion (including those on digital albums)

· Digital sales now account for an estimated 15% of the global music market, up from 11% in 2006 and zero in 2003. In the world’s biggest digital music market, the US, online and mobile sales now account for 30% of all revenues

· The music industry is more advanced in terms of digital revenues than any other creative or entertainment industry except games. Its digital share is more than twice that of newspapers (7%), films (3%) and books (2%)

· There are more than 500 legitimate digital music services worldwide, offering over 6 million tracks – over four times the stock of a music megastore

· Tens of billions of illegal files were swapped in 2007. The ratio of unlicensed tracks downloaded to legal tracks sold is about 20 to 1

· Progress in the digital music market is being hampered by lack of interoperability between services and devices, and lack of investment in marketing of new services [does the lack of interoperability also hamper infringements, the Kat ponders]

· The growth rate of around 40% in digital sales did not offset the sharp fall in CD sales globally, meaning that the overall market for the year will be down on 2006 [says the IPKat, there must be plenty of people around who, having invested their savings in a handsome new mp3, have run out of hard cash to buy new CDs and are thus condemned to spend a year in penury, ripping and burning their existing stock]

· Research by IFPI debunks a myth about illegal P2P services: in fact, fans get better choice on legal sites. IFPI conducted research with a sample of 70 acts on the legal site iTunes and on the copyright infringing service Limewire. In 95 per cent of searches the artists requested had more songs available on iTunes than on the leading P2P service [the IPKat is as surprised as anyone else who has believed the contrary, and wonders what the explanation is]".

Also available: the full report, a summary of the full report and a summary of the quotable bits.

Do you like copyright in wikis and want something to read this weekend?

IPKat team member Jeremy has been composing a chapter for a book on modern copyright law problems in Europe. His chapter deals with issues relating to copyright in wikis. The chapter, which is around 6,000 words and still needs a little tidying up, has to be submitted by this coming Tuesday.

Right: a Google search of 'wiki' + 'cat' yielded this piccie

In the meantime, if there's anyone out there who'd like to read it and send Jeremy some comments -- however critical -- or who can point any European copyright literature that he has missed, he'll be pleased to send it to them to review. Interested? Email Jeremy here.

Thursday, 24 January 2008

Murdoch v Branson in UK TV patent battle

It appears that Richard Branson and Rupert Murdoch are still unable to get along together. After last year's battle over whether or not to broadcast Sky channels on Virgin Media's UK cable television network, Rupert is now (at least indirectly) bringing out his IP lawyers in an apparent attempt to threaten Virgin in other ways.

Gemstar, currently partly owned by the Murdoch-run media business News Corporation (though apparently not for much longer), has announced initiation of patent litigation proceedings against Virgin Media in the English High Court. Gemstar allege that Virgin Media is infringing three of their European patents: EP0969662, EP1377049, and EP1613066.

Samir Armaly, executive vice president, intellectual property and licensing for Gemstar, is quoted as saying:

We have worked diligently to license Virgin Media for their distribution of various set-top boxes that contain IPGs covered by our patents, but negotiations did not lead to a resolution. The substantial value of our European patent portfolio has been recognized by leading service providers as well as leading consumer electronics manufacturers in the UK and throughout Europe. While we would have preferred to reach a commercial solution with Virgin Media, we ultimately have a responsibility to our shareholders, licensees, and other stakeholders to protect the value of our intellectual property.

The patents include claims directed to techniques for providing interactive program guides (IPGs), and for handling recordings from IPGs. Gemstar also claim to have over 200 granted patents and pending applications covering the UK. According to other reports (from the Guardian), a Virgin Media spokesperson is quoted as saying in response:

"We're confident the courts will see Gemstar's action for what it is: a piece of flagrant opportunism. We have been advised by our external counsel that the case is without merit and we will defend it vigorously."

Fighting talk, the IPKat immediately thought. Is the case actually without merit? What are the granted claims actually about? A quick look at the 'B' specifications on the EPO publications server reveals all. The first patent claims, amongst other things, the following:

An electronic program guide comprising:
- television program listings, each listing including title, telecast time, and channel;
- a time and channel grid guide in which some of the television program listings are displayed;
- a moveable cursor that selectively highlights one of the television program listings displayed in the grid guide; and
- means for changing the time and channel grid guide into a single channel guide of the channel of the highlighted television program listing.

So far so good (or bad, depending on whose side you may be on). The second one claims:
A system for allowing a user to select favorite channels in an electronic program guide, the system comprising:
- means for providing a display of a plurality of cells representing a corresponding plurality of channels available for viewing by the user, wherein each cell comprises a channel number and a program service name for a particular channel of the plurality of channels;
- means for allowing the user to use the display to select a channel among the plurality of channels;
- means for changing a status of said selected channel to that of a favorite channel in response to the user selection;
- means for displaying in cells corresponding to the favorite channels a visual indication that the selected channels are favorite channels; and
- means providing program guide information for the subset of channels having said favorite status in response to a user indication to view the program guide information.

That one sounds a bit too US-centric for the IPKat's tastes, and a bit more difficult to figure out, particularly with all those nasty 'means'. It seems to have something to do with personalised ordering of favourite TV channels though. And finally, the third one claims:
An interactive television program guide system for transferring recorded programs implemented on user television equipment, the system comprising:
- means for displaying in a display screen at least one program listing related to at least one program;
- means for enabling a user to select a program entry from the at least one displayed program listing;
- means for recording the selected program related to the at least one displayed program listing on a digital storage device;
- means for displaying at least one recorded program listing for at least one program recorded on the digital storage device, wherein the at least one recorded program listing includes a recorded program entry for the program recorded on the digital storage device;
- means for enabling the user to select the recorded program entry to transfer the recorded program from the digital storage device to a secondary storage device; and
- means for transferring the recorded program from the digital storage device to a secondary storage device.
This one seems to be about recording and then transferring the recording to something else. Perhaps first on to a hard disk recorder, followed by transfer to a DVD? It seems like that would be covered.

As far as he can see, these all look like exactly the sort of things that the IPKat's trusty 'set-top' box (which actually lives underneath, rather than on top of, his television) does, or at least is able to do, from day to day. He would not therefore be very surprised to see at least some of exactly the same sort of things being possible with Virgin Media's boxes.

One possible difficulty for Gemstar, as many IPKat readers will know, is that the English courts are notoriously difficult to please with infringement actions, and will certainly take a long hard look at the validity of the patents (if the proceedings ever get to that stage). As always, the devil will be in the details of what the patents can validly claim, and of course how far each side is willing to go in defending its position.

The IPKat also notices that one of the patents (EP1613066) was only granted quite recently and, surprisingly, nobody has yet opposed it. There are just a few weeks left in which this will be possible, so someone should probably get busy, just in case.

Update (7 May 2008): As if in response to the IPKat's prompting, the patent mentioned now has six opponents, one of which is Virgin Media Limited. A vast amount of material is now available on the epoline register relating to these oppositions. The IPKat does not expect to see this being resolved at the EPO anytime soon...

Independence - will US say ICANN can?

ICANN, the body responsible for overseeing the domain name system has written to the US Government asking for its independence according to the BBC. The organisation was set up under a Memorandum of Understanding with the US Department of Commerce, with eventual aim being to shift the domain name system from US Government control to global control. The memorandum set out a task of objectives for ICANN to achieve, after which it would become independent. ICANN argues that those objectives have been achieved early, and so now is the time to decide on the future of ICANN.

The IPKat finds this a tricky one. In an ideal world, a worldwide system should be run by a public body which is worldwide, but the bureaucracy that would create would most likely be startling.

You're no gent, says Court of Appeal

In October 2006 Mr Justice Mann (Patents Court, England and Wales) gave ruling in Cinpres Gas Injection Ltd v Melea Ltd [2006] EWHC 2451 (Ch) which very greatly upset the IPKat (see here). In short, Cinpres sought a declaration that it was entitled to be registered as owner of a patent for gas injection moulding technology used in the plastics industry. But did the inventor, James Hendry, make the invention when working for Cinpres -- or was he then working for Ladney, an American businessman who set up Melea as a patent holding company? Hendry first worked for Cinpres but left the company after falling out with it in 1985. A year and a quarter later, after entering into a settlement agreement with Cinpres that contained a confidentiality clause, Hendry took up a consultancy with Ladney with whom he worked till 1991. In 2001 Hendry returned to Cinpres, this time as a consultant. Meanwhile in 1996 the UK Patent Office had ruled that Hendry had discovered the invention while working for Ladney, in consequence of which Melea was registered as proprietor. Hendry, who had given evidence before the Patent Office in support of Ladney, subsequently wanted to give evidence that he had discovered the invention while working for Cinpres. Cinpres said it was not barred by the earlier proceedings from seeking a fresh declaration that it was entitled to the patent, since Hendry was willing to admit that he had perjured himself when giving evidence in the earlier proceedings and to testify that Ladney had procured, or taken advantage of, his decision to do so.

Mann J dismissed Cinpres' application. He agreed that Hendry had lied on oath and had both acquired and deployed knowledge of the invention while working for Cinpres. Also, the use of the invention was something that Hendry should have kept confidential under the terms of the settlement agreement with Cinpres; his perjured evidence was therefore relevant to a material matter. However, since Ladney had not actually induced Hendry to commit perjury and did not know of it or take any advantage of it, the decision in the earlier proceedings could not be impeached and it governed the issue of the ownership of the patent. Said Mann J:

"I appreciate that that result might be considered by some as less than satisfactory – the entitlement to the patent is governed by a decision which was reached after receiving and accepting perjured evidence and which might have been different if the truth had been told. However, that is the effect of the requirements of the applicable principles, as to which there was no dispute between the parties".
The Court of Appeal today reversed this decision (text in full on BAILII). The Court (Sir Igor Judge, President of the Queen's Bench Division, plus Lords Justices Jacob and Richards) commented that the parties had taken so many new points that the case was scarcely recognisable as that upon which Mann J originally had to decide.

The anonymous judge giving the decision of the Court of Appeal (the BAILII transcript posted today doesn't mention names, but the IPKat suspects it might just be Jacob LJ -- even though para. 52 mentions him in the third person ...). Anyway, the Court had some interesting things to say about the manner in which an appellate court should consider a finding of dishonesty by a trial judge:
"It is one thing for the Court of Appeal to hold a man a perjurer for the first time on appeal but quite another to hold that an established perjurer was more extensive in his perjury than held by the judge. The real question here is simply whether the Judge was wrong in his evaluation of all the evidence".
In this regard, said the Court,
"We are not satisfied that he reached the wrong conclusion on the facts. Ladney is not shown to have been complicit in Hendry's perjury at the time. It does not follow, however, that he has not himself adopted and relied upon that perjury and Hendry's false story".
The Court then effectively pinned Hendry's evidence on Ladney:
" ... we have come to the conclusion that Hendry's evidence the first time round should be regarded as that also of Ladney and that Hendry's fraud should be treated as also that of Ladney. Both Hendry and Ladney were actually parties to the first proceedings. Hendry was seeking to justify his claim to be the inventor, to be named on the patent as such and to have had the right to have assigned the property in the invention to Ladney. Ladney was claiming to be the owner of the right to apply for the patent by virtue of assignment from Hendry. They had a common foe, Cinpres, and made common, and completely intermixed cause against it. One could not succeed without the other. True it is that Ladney's claim was much the more valuable commercially, but we do not see that value has anything to do with it. Besides even Hendry had a commercial interest in the patent belonging to Ladney for he would be entitled to royalties if that were so. Not so if the patent belonged to Cinpres.

Putting it another way it would be wrong to say that Hendry was a "mere witness" in the first proceedings. He was more than merely a witness for Ladney – he was Ladney's "comrade in arms". His fraud by way of perjury was being adopted by Ladney and should be regarded as Ladney's. Hendry himself clearly could not resist the earlier judgment being set aside on the grounds of his fraud. Given that, the whole judgment is unravelled and should be set aside".
The IPKat notes the genuine indignation of the Court, whose judgment opened with the stern comment that
"Mann J had the unenviable task of deciding, as between two liars and perjurers, what the truth was (or at least what was most likely) about the making and ownership of the invention the subject of the Patent. ... James Hendry was one of the liars. The other was Michael Ladney. Neither deserves the courtesy of a 'Mister'".
Merpel is delighted with the outcome of this appeal. A sensitive Kat, she has suffered for fifteen months from the notion that British patent law could operate in such a manner as to deprive Cinpres of a patent to which it was morally and, in her opinion legally, entitled.

The truth, the whole truth and nothing but the truth here
When truth is fiction here

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