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).

Friday, 31 October 2014

Link and threat? Why the story with hyperlinks and copyright is not over yet

There are links which may be even
cuter than hyperlinks
Besides the terrible, Halloween-related, pun in the title of this post, the question is: do you need permission from the relevant rightolder to link to copyright-protected content? 

This question has haunted the minds of many good copyright souls for a long time, even after the Court of Justice of the European Union (CJEU) issued its decision in Svensson in February last [here and here; the Court confirmed its value as a precedent a few days ago in its quick order in BestWater, a case concerning embedded videos].

The story with copyright and hyperlinks is in fact still far from its conclusion.

During this week alone, there have been at least 3 episodes that will provide food for thought and (endless) discussions also in the coming months. In a nutshell their overall meaning can be summarised as: link at your own peril!

The (new) ALAI Opinion, not necessarily directed at a "new public"

First, this Kat became aware that during its meeting on 17 September last, ALAI (the Association Littéraire et Artistique Internationale) adopted an Opinion on the criterion "New Public", developed by the Court of Justice of the European Union (CJEU), put in the context of making available and communication to the public.

This learned piece builds upon on the earlier statement submitted pending the decision in Svensson [here], in which ALAI took a pretty diverging view from the European Copyright Society and its Opinion on this very topic [here]

The first interesting detail of this new ALAI Opinion is that, unlike its earlier statement, this new document does no longer state that the Opinion was adopted unanimously by the Executive Committe [Merpel wonders why: have people changed their mind? Incidentally, she also notes that some members of ALAI Executive Committee featured also among the signatories of the Opinion of the European Copyright Society].

In any case, what is most remarkable about this document is that ALAI believes that the CJEU got it very wrong in Svensson. In particular, the adoption of the "new public" criterion: 
  1. Is against the understanding of the right of communication to the public in both international and EU laws, as well as earlier CJEU case law; 
  2. Results in the undue exhaustion of the right of communication to the public, contrary to the prohibition in Article 3(3) of the InfoSoc Directive;
  3. Results in the [forbidden: see Article 5(2) Berne] introduction of formalities into copyright: "to the extent that Svensson indicates that the “new public” criterion will not apply if restrictions accompany the work’s making available, the decision risks establishing an obligation to reserve rights or protect works etc. by technical protection measures, in violation of the Berne Convention’s prohibition of  formalities that condition the exercise of exclusive rights."
What ALAI is saying is that any hyperlink would be an act of communication/making available to the public, irrespective of whether or not it is directed at a new public.

[By the way, if you happen to be in London on 13 November, you should not miss this BLACA meeting on linking, featuring very high-profile speakers ...]

Despite her language proficiency
and usual confidence,
Merpel has not been able to understand
everything in the text of the Spanish reform
Do you want to link? Then you should pay ...

Still on the territory of hyperlinks, but in the specific region of newspaper articles, IPKat readers will remember that last year Germany introduced a neighbouring right [see sections 87f, 87g and 87h of the German Copyright Act] that grants press publishers the exclusive rights to exploit their content commercially for 1 year, thus preventing search engines and news aggregators from displaying non-insignificant excerpts from newspaper articles without paying a fee [but see here what happened the same day the new provisions entered into force].

Initiatives similar to the German one were also considered in BelgiumFrance and Spain [but see the criticisms expressed by the Spanish Competition Authority at the end of May, when it said that initiatives like the German one might have anti-competitive effects]. While plans to introduce a new neighbouring right for press publishers were abandoned in both Belgium and France, the same did not happen in Spain.

Yesterday Spanish Parliament adopted in fact the final text of a law that will enter into force in early 2015, and undertakes a very significant reform of Spanish IP system [see here and here]. Further information on the main points of the reform will be provided on this blog soon. 

As regards linking, the new law allows for sanctions of up to €600,000 for linking to unlawful content and introduces an inalienable [so this may mean: no opt-in for Google News, as instead happened in Germany] ancillary right over news content.

According to El Mundo, Google was not thrilled. The US company holds the view that services like Google News help publishers to have traffic re-directed at their websites. While it will continue helping Spanish publishers, the US company will also evaluate options available under the new law.

Günther Oettinger
(disclaimer: NOT Google Glass)
... And this may become the norm at the EU level, too

Is the EU considering adopting initiatives similar to the German and Spanish ones? It looks like Günther Oettinger may be interested. As first brought to this Kat's attention by Katfriend Marc Mimler (University of Warwick) and also reported by The Wall Street Journal, in a series of interviews with German newspapers, the incoming Commissioner for Digital Economy and Society "floated various anti-Google ideas that could take on a more concrete form when he takes office on Nov. 1". 

One option could be for instance to charge Google for "tak[ing] intellectual property from the EU and work[ing] with it". What this does mean is not entirely clear.

What however seems clear is that Mr Oettinger's predecessor, Neelie Kroes, is not impressed. Still according to the WSJ, her spokesman said that the Commission’s job is to solve market failures and enforce rules, not target companies.”


We'll see what happens next month when the term of the new Commission officially starts. Overall, what seems clear from the academic debate and national/EU initiatives alike is that the CJEU decision in Svensson was not the end of the copyright&hyperlinks story. 

If all the patent trolls disappear, can royalty stacking take their place?

This Kat is of the view that when historians take stock of the patent troll/NPE ("non-practising entities") saga, it may rank among the oddest of all IP narratives. More than a decade into the issue, one is hard-pressed to find any consensus on how to define a troll/NPE or how to describe the problems that they have allegedly created. A telling example is that status of universities within the debate. Are they, or are they not, NPEs; is the status of universities in this mix influenced by the fact that most commentators are university faculty members ("Of course universities are not really NPEs")? While articles on the subject are legion, empirical data pro and con the argument is thin and hotly contested.  All of this did not deter support from the Obama White House from identifying NPEs as a central problem confronting the patent system and for efforts to take place to pass legislation in the U.S. to improve the position of the defendant in patent litigation.

There is no better example to demonstrate the swings that have characterized the patent troll/NPE narrative than to consider the reports about the sudden decline in patent litigation activity in the U.S. As Katfriend Joff Wild, the editor of Intellectual Asset Magazine, reported several weeks ago in a blog post, according to research data published by Unified Patents, an outfit that seeks to assist SME's against baseless patent litigation, it appears that for "the third quarter of this year (June to September), there was a 23% drop in the number of suits filed compared to the second quarter, and a 27% year-on-year reduction. The findings come just weeks after data released by Lex Machina showed that there had been a 40% fall in patent suits in September 2014 as compared to the same month in the previous year."

Unified Patent further examined where the decline came from and concluded that it derives primarily from what is called "NPE suits" in the high-tech sector. Thus, "[l]itigation initiated by operating companies fell by just 19 quarter on quarter, but actions launched by NPEs dropped by 301, from 885 in Q2 to 554 - a fall of 35%." Both Professor Mark Lemley of Stanford, the founder of Lex Machina and Shawn Ambwani, the CEO of Unified Patent, suggest that the decline is due in material part to the impact of the U.S. Supreme Court decision given in Jun 2014 in the case of Alice v CLS, which arguably makes it more difficult to obtain business method patents. Ambwani also attributes the result to the America Invents Act, although why its impact should only be acutely felt in Q2 2014 in connection with the filing of patent litigation is not fully clear. Wild reports that Professor Lemley has reacted to these data points by stating that “[t]he need for legislative reform is a lot less right now than it was a year ago and it probably makes sense to wait a bit and see how these cases play out and what the new dynamic looks like before we try to rewrite the rules."

It is interesting to compare Prof. Lemley's cautious observations with the conclusion that he reached in a law review article well worth reading, "Missing the Forest for the Trolls", written together with Douglas Melamed, Intel General Counsel, which appeared in the December 2013 issue of the Columbia Law Review. There, Lemley and Melamed conclude as follows:
Patent trolls are taking the rap for problems with the patent system. That is not to say trolls are not a problem; they are a large and growing one. But they are not the [emphasis in original] problem. Rather, they area a symptom of systematic issues the patent system faces in the IT industry—too many patents interpreted too broadly, a remedy system that routinely awards excessive damages and enables patent holders to bargain for excessively costly settlements, and an enormous patent royalty stacking problem. Practicing entities, as well as trolls, can and do take advantage of these issues. Rather than focusing on the trolls—the symptoms—the law should turn its attention to the disease itself."
Juxtaposing this wide-ranging indictment of the patent system with Lemley's cautious comments, and pondering whether the Alice case is the anti-patent troll wonder drug, one wonders where the patent troll/NPE narrative will now go. In particular, is the grand sweep of the Lemley-Melamed conclusion still relevant; if the answer is "yes", is the patent troll the "symptom" of the "disease" or rather the rhetorical anchor without which popular attention will be very difficult to mobilize? Without the bogeyman of the patent troll, will arguments about the problem of patent stacking interest the legislative machinery on Capitol Hill? One reads that the Obama administration is still committed to patent reform, presumably of the kind described by Lemley and Melamed, but whether the current narrative will support this seems questionable -- yet another twist to be considered when the history of the patent troll phenomenon is ultimately written.

Friday fantasies

Forthcoming events. Please remember to check out the IPKat's Forthcoming Events page! There's always something going on there, and you might even find a pleasant way to pass the time of day with like-minded IP experts and/or enthusiasts.   Here's a reminder that the annual IP Publishers and Editors Lunch on 25 November [see the top of the IPKat's home page sidebar for details] now has nearly 60 registrants -- and there's still room for more. If you are involved in the traditional or online dissemination of IP-related information, or if you edit it or compose it for media release, do join us for what is always a lovely occasion.

Nadeem from Nimblebot [now that's a curious business name, thinks Merpel] has written to tell the Kats that he and his colleagues have been working on patent litigation and patent troll issues for a while and that they are helping the CEA [this could be one of any number of organisations that share this acronym: Cinema Exhibitors' Association? Construction Equipment Association? Centre for Effective Altruism? Do tell!] and a coalition of other companies and legislators in the US with a project to raise awareness—and to petition the senate for Patent Legislation Reform. Readers can check out Nimblebot's video and petition here and follow us on twitter @PatentFix. Judging by the fact that @PatentFix had just 16 followers when the IPKat checked it out this morning, one might imaging that this campaign has yet to take off

Strategy, Kategy! This Kat received an email earlier this week to the effect that he has been nominated for inclusion in the 2015 edition of the IAM Strategy 300, the Intellectual Asset Management (IAM) publication that lists the world’s leading IP strategists. According to the rubric,
"The nomination process is ongoing and only those IP strategists who receive three separate nominations from outside of their own organisation will progress to the next stage of the research process. The nominations period closes ... on Monday November 3 2014. We are sending you this email to see whether you would like to enter your own nominations for the 2015 edition – we have opened up our eligibility guidelines this year to include anyone involved in IP strategy across the globe, including for the first time individuals working in operating companies, universities or research organisations". 
He feels greatly honoured that someone should have taken the trouble to nominate him but suspects that, if he is worth nominating, a large proportion of his friends, colleagues and readers are equally worthy. His main strategy, whether in IP or outside it, has been to get other people to help him with whatever he is doing or, better still, to do it for him. This strategy is flawless, except at the point when one comes to implement it ...

Hmm. Doesn't look very
invisible to this Kat ...
Around the weblogs.  On SOLO IP, Michael Factor muses on whether it's better to spend any financial surplus over one's hard-earned outgoings on spurious awards or on a family holiday. The 1709 Blog features a call for help from an obviously intelligent but perplexed reader who is struggling to understand the import of the recent UK amendments that extend copyright protection to certain design documents following the repeal of section 52 of the world's longest and most non-navigable piece of copyright legislation.  On Afro-IP, Darren Olivier writes up ClearVu, the first South African ruling on passing off and keyword advertising (Darren's note is here; you can access the judgment here).  Finally, the MARQUES Class 46 weblog carries notes on the Bulgarian Supreme Court ruling in VASILKA (occasional jobs taken on by employee do not constitute genuine use of a registered trade mark by an employer) and an unusual German ruling in which two distantly similar marks containing the word "fox" were not found to be confusingly similar [incidentally, MARQUES's Facebook page carries plenty of interesting trade mark-related material: you can find it here].

Nice job if you can get it.  The UK Intellectual Property Office is advertising for a new Chief Economist [details are available here] to succeed the incumbent, Tony Clayton. Congenial Katfriend Tony has led the Economics, Research and Evidence team since 2010, following stints as Director of Economic Analysis (Office for National Statistics) and as a Director of strategy consultancy PIMS Associates. The Kats wish him well in whatever he does next with his time and hopes that whoever follows him will be as cheerful.

Thursday, 30 October 2014

How illegal is illegality? Supreme Court dismisses appeal in Servier v Apotex

Les Laboratoires Servier & Another v Apotex Inc & Others [2014] UKSC 55 is a shorter and less formidable UK Supreme Court decision than this Kat initially feared. This ruling addressed a point of principle that is academically most interesting even though it doesn't crop up in court on a daily basis: does the defence of illegality bar a claim on a cross-undertaking in damages given by a patent owner in order to obtain an interim injunction where his UK patent is held to be invalid but his corresponding Canadian patent is held to be infringed?

Servier made a pharmaceutical product, perindopril erbumine, for which it held a European patent. Apotex imported perindopril erbumine which it made in its Canadian plant. In an action for patent infringement, Servier secured an interim injunction against Apotex and gave a cross-undertaking in damages, in the event that its action should fail and Apotex would suffer lost sales. At trial the Patents Court (Pumfrey J at [2007] EWHC 1538 (Pat) held that Apotex's activities fell within the scope of patent infringement but that the patent itself was invalid both for lack of novelty and obviousness. In parallel Canadian proceedings, Apotex was held to have infringed Servier's Canadian patent. An interlocutory injunction was refused and damages in the Canadian proceedings remained to be assessed.

At this point Apotex claimed lost profits on products it would have sold in the UK but for the interim injunction. Mr Justice Arnold at first instance [[2011] EWHC 730 (pat), noted by Matt the Kat here] found that the ex turpi causa principle applied and that Apotex's claim -- being based on its unlawful manufacture in Canada -- had to fail as being contrary to public policy. The Court of Appeal reversed this decision [[2012] ECWA Civ 593, noted by guest Kat Norman Siebrasse on the IPKat here], with Apotex conceding that credit was to be given for any damages payable in the Canadian proceedings for the infringements committed there.

Servier then appealed against the decision that the infringement of its Canadian patent by Apotex was not a relevant illegality for the purposes of the ex turpi causa defence.

Yesterday the Supreme Court (Lords Neuberger, Mance, Clarke, Sumption and Toulson) dismissed the appeal. In its view:

* The defence of illegality is a rule of law and not a mere discretionary power. What's more, it is based on public policy not on the merits of the respective claims of parties to a dispute.

* Both Arnold J and the Court of Appeal rejected the illegality defence, but both relied on largely subjective judgments about how badly Apotex had behaved, and how much it mattered. This approach was discretionary and thus contrary to established legal principle [Lord Toulson took a rather different view of the Court of Appeal's approach which, he felt, was supported by Hounga v Allen [2014] UKSC 47]. What the court should to is to determine what acts constitute "turpitude" for the purpose of the defence, "turpitude" for this purpose meaning criminal and quasi-criminal acts because those acts alone engage the public interest. Other wrongs -- torts other than those of which dishonesty was an essential element, breaches of contract, and statutory civil wrongs --  offended against private, rather than public interests and there was no reason to depart from ordinary remedies of corrective justice when taking account of them.

It is difficult to fault the Supreme Court's reasoning, says this Kat, and this decision appears to be well founded on the case law cited. A bigger question is whether the decision is a good one in terms of getting the right balance between the sector of the pharma industry that invests in new products and the sector that focuses on the manufacture of generic products. Servier must be feeling more than a bit miffed by the outcome -- but is that sufficient reason for indulging in a little law reform? Readers' thoughts are, as ever, appreciated.

"Almost identical, just with different names": shopping at Aldi

"My first time at Aldi... Should we all be shopping there?" is an article by Felicity Hannah, posted on Yahoo!'s UK & Ireland Finance page with the byline "Our money saving columnist takes her first trip to a discounter to see what all the fuss is about".  The text in red, in the extract below, is enough to make any independent brand owner see red. Felicity writes:

" ...Although my friends rave about the prices and value, and my husband occasionally slips in to buy prize-winning booze, I have not personally shopped in an Aldi, Lidl or any of the discount supermarkets taking Britain by storm.

Yet profits at Tesco have fallen by 92% while Aldi’s profits rose by more than 65% in 2013. There’s got to be a reason for that. A new Aldi has opened just a five-minute drive from my house, so I went to check it out...

I was surprised to see so many brands I regularly buy, such as Kellogg’s. But even more surprising were the many, many lookalike brands. There were crisps in tubes, all in the same colours as Pringles so that you knew exactly what flavour you were buying. There were packets of dishwasher tablets and washing machine powder all with almost identical branding to the big names, just with different names.

The prices seemed impressive, even though I didn’t have any comparisons to hand, so I stocked up and hoped the quality was as good as my friends had promised. ..."
According to the author, Aldi’s profits rose by more than 65% in 2013. There is no doubt that the store, with its "pile-it-high, sell-it-cheap" ethos, has been a huge financial success and that the momentum it enjoyed at the beginning of the recent years of recession has been maintained even once the UK economy has picked itself up. With over 9,000 stores spread across 18 countries, Aldi is likely to exert an increasing influence on consumers' behaviour.

Aldi's origins are German, but its business practices are at odds with that country's position on lookalikes and unfair competition. This Kat thinks that it is doubtful whether any country in the European Union is more critical of lookalikes than Germany [though opinions to the contrary are invited].

Smart clothes, but not much in the way of crisps ...
This Kat is always happy with the thought that IP rights should not be given over-wide protection that inhibits or suppresses competition, but he is disappointed that Aldi should find it necessary to indulge in what appears to be a systematic process of emulating others' brands and misleading consumers.  Merpel thinks there's no problem: she doesn't understand, though, why the brand owners don't fight back by opening their own Aldi lookalike stores and giving the downmarket retail chain a taste of its own medicine ...

  • Aldi renames its cut-price "Beluga" caviare following complaints that it isn't Beluga, here
  • Saucy Fish Co. gets consent injunction against Aldi here
  • Aldi ruthlessly apes the appearance of top brands here
  • Moroccanoil fails in passing-off action against Aldi, but trade mark proceedings are pending here
  • German Law on Unfair Competition (English translation) here

A Katpat to Mrs Kat for drawing this item to our attention

Wednesday, 29 October 2014

How you can rent your own orphan, and why there are 91 million of them

When it comes to media releases this Kat is a sitting target, which may account for the reason why he received the following missive not once but four times over:


The IPO, based in Wales, estimates the number
of orphan works in the UK at 91 million. 
Bale, most expensive footballer in the world,
cost 91m euro. Bale plays for ... Wales
A new licensing scheme launched today could give wider access to at least 91 million culturally valuable creative works - including diaries, photographs, oral history recordings and documentary films [The figure of 91 million sounds huge, but this Kat is certain that it's a serious underestimate.  Merpel thinks it doesn't matter whether the number of orphan works is nine, 91 or 91 million: the important thing is whether the licensing scheme offers appropriate respect for the interests of authors, owners, prospective licensees and the public at large ...].

These works are covered by copyright, but rights holders cannot be found by those who need to seek permission to reproduce them. Under the new scheme, a licence can be granted by the Intellectual Property Office [IPO] so that these works can be reproduced on websites, in books and on TV without breaking the law, while protecting the rights of owners so they can be remunerated if they come forward [so effectively it's a state-administered compulsory licence scheme, the royalty being fixed by the IPO: there's already such a scheme for patents under the UK's Patents Act 1977 s 48 et seq, though it's manifestly different in that (i) patents aren't orphan works, (ii) the grounds on which they may be granted are circumscribed by public interest criteria and (iii ) provision for such compulsory licences is made under two international treaties: the Paris Convention Art.5A and TRIPS Art.31].
The scheme also aims to reunite copyright holders with their works ["You thought you'd never see those old holiday photos again ...!"] and ensure they are paid for their creations, by requiring the applicant to conduct a diligent search [click here for all manner of IPO guidance on diligent research] and allowing the right holder to search the register of granted licences.
Ground-breaking scheme
This ground-breaking scheme builds on UK and international best practice [Wow! But can any reader point to international best practice?] and is the first to use an electronic application system and searchable register of the licences granted [We hope it's not the last. Electronic applications and searchable licences should be mandatory for all IP rights, says Merpel, especially the registered ones]. It is being implemented alongside the EU Orphan Works Directive [which coincidentally roars into life today] that enables cultural institutions to digitise certain orphan works in their collection and display them on their websites. Together these two schemes will help to display more of the UK’s cultural work at home and across Europe.

The UK scheme will be administered by the UK Intellectual Property Office and is part of the wider programme of work to modernise the UK’s copyright system following the Hargreaves Review. Users will pay a fee to obtain a licence to use the work, which will be kept for the copyright owner should they come forward.
Two fees are payable: one is the licence fee, as assessed by the IPO, and the other is an administrative fee [about which no information is currently available].  Visiting the relevant web page, this Kat clicked here and applied for a licence to use a work described as "Photograph of a cat, 1951" for non-profit purposes. The resulting licence, for
  • Free hand outs for live event, exhibition or similar
  • Use in a live event, exhibition or similar
  • In newsletter, bulletin, e-newsletter or e-bulletin 
  • In non-commercial promotional material – print and digital
  • Digitise and make available on-line, including on social media 
  • Preservation purposes
  • Use on stage or in performance
  • Educational purposes – use in learning/ training materials, including e-learning
  • Use in thesis/dissertation
  • Personal use [it would have been comforting to see the word "blog" explicitly stated in this list, but it's clear that use on blogs is covered]
cost a very reasonable 10 pence, plus VAT.  Reappearing orphans click here to claim their booty. The link to guidance concerning EU Directive eligibility is here and you can search the register here ["Your search for 'cat' did not show any matches"].

This Kat thinks this is all quite fun and will make it easier for businesses to use those awkward works with a good conscience.   Merpel however thinks most people won't bother with it, since it costs nothing to help yourself and the basic rule is "once an orphan, always an orphan -- they don't return".

IP: the "no-patents round-up for non-techie people" Session 4

The final session of today's experimental conference, IP: the "no-patents round-up for non-techie people", starred Edward Smith, an accredited mediator as well as being a Hearing Officer with the UK Intellectual Property Office (IPO). Edward spoke on the IPO's mediation service, reminding us that the IPO was not alone: the Office for Harmonisation in the Internal Market (OHIM) has its own service, which operates on a narrower basis and is correspondingly less used.  IPO uses the World Intellectual Property Organization (WIPO) mediation rules, which operate on a confidential basis, both as between the parties and between both parties and the outside world. This confidentiality is one of the biggest advantages offered by the process, which ideally ends with a negotiated agreement.

Mediation focuses on the future, not the past, and deals with reality, not with justice. Said Edward, we all love reading the latest cases -- but in terms of what the law is, we really don't care! Mediators are interested in the outcome, not with the positions adopted by the competing parties.  It's important to get the venue or medium right.  Telephone mediations are dire, and generally don't work well.  A good venue, preferably with coffee and sandwiches, works better.  OHIM's mediations require a trip to Alicante as well as an admissible appeal -- and there are also language issues. Is there an optimal time to mediate? Some people say that, the closer the parties are to the hearing date, the more difficult it is to mediate [this is a little odd, in that settlements so often appear to be made at the door of the court immediately before the hearing ...].

So far the IPO has done 12 mediations, of which six settled on the day, three are "don't knows" (the parties have got together and then gone away, and legal proceedings have been withdrawn, but the precise outcome is made known).  They are far cheaper than litigation and generally far speedier. What's more, the breadth of solutions provided by mediation is far greater than that available in the courts, and people involved in the process are spared the trauma of being cross-examined by hostile counsel.

Some disputes cannot be mediated. Where the participants lack authority or proper preparation, settlement prospects are poor. Likewise, people who turn up only because the judge has told them to, in order to tick the I've-turned-up-for-mediation" box, or those who are aggressive or mentally impaired, do not make good participants in the mediation process.

IP: the "no-patents round-up for non-techie people" Session 3

First to speak after lunch was former guest Kat Darren Meale, on the wonderful world of designs. Designs are usually easy and cheap to register when compared with trade marks, he reminded us, and you don't lose them through non-use.  Better still, if you have an unlimited budget, you can register your designs in lots and lots of different ways. However, they don't last as long as trade marks, which are potentially eternal: they range from just three years for unregistered Community design to a maximum of 25 years for registered designs.

Darren took the audience through the Utopia beer glass case (on which he composed an excellent Katpost here), in which the judge held that the outer shape of the claimant's Aspen glass, with its narrow shape and curved waist, was not merely commonplace and that this shape therefore enjoyed unregistered UK design right. The judge in this case had to do a good deal of comparison between the Aspen glass and its nearest market competitors and to determine whether it conveyed an overall similar impression or not on the part of the informed user of beer glasses. Design freedom was also an important factor here: where there is only limited design freedom, even small changes are likely to produce a different overall impression.  The judge's basic position was that the test was what the judge could see with his own eyes, rather than focusing on a close verbal analysis of the glasses' respective features.

The next case under analysis was the CJEU ruling in Karen Millen v Dunnes Stores [noted by the IPKat here]. This ruling buried the notion that a design could be deemed unoriginal by 'mosaicing' a corpus of different earlier designs.  Prior designs can however be little-known and foreign, in an appropriate case, as the CJEU indicated in Gautzsch [noted by Darren for the IPKat here].

Then Darren turned to Trunki [again noted for the IPKat by Darren here], a decision in which the Court of Appeal for England and Wales overturned what this blogger persists in regarding as a perfectly good trial decision and ruled that the designs of the respective children's cases conveyed an overall different impression. This decision, which is particularly harsh on design owners, is the subject of a petition to appeal to the Supreme Court.

Darren concluded with some observations concerning the design provisions of the UK's Intellectual Property Act 2014, which could land an appropriately villainous infringer in prison. The right to continue prior use of a design that someone else later registers is now protected, and ownership provisions have been tweaked to provide greater protection for the non-employed but nonetheless commissioned designer.

IPEC: a rebranded PCC?
Darren was followed by Matthew Jones (EIP), who abandoned the PowerPoint in favour of the flipchart.  Matthew opened with a review of the Intellectual Property Enterprise Court for England and Wales, which metamorphosed from the highly successful revamped Patents County Court. He explained the cost-capping provisions operated by the IPEC, warning that what the cap caps ("recoverable costs") and what a party actually pays are likely going to be quite different things.

The IPEC has sped up IP litigation considerably, a typical action taking around seven months from issuing the claims form to receiving judgment. Interim applications are heard on paper, disclosure is severely limited by virtue of the fact that there is no standard disclosure. Arguments and facts on which a party intends to rely are "front-loaded", which is certainly not the case with large-scale litigation before the High Court.  There's also a £500,000 cap on IPEC proceedings -- but what exactly does the cap apply to (particularly if there is more than one claim or proceedings are brought against more than one party)?  In Abbott Judge Hacon clarified that the £500,000 cap is pretty well set to cover everything, unless the parties agree to lift it.

The government has been determined to encourage use of the courts by SMEs and litigants in person. This has occurred, though litigants in person have been conspicuously unsuccessful.  Paraphrasing Sam Harris, in Lying: those of us who do not lie have nothing to prepare for, and those who do have much to remember".  This should be borne in mind when filling in Precedent H in drawing up a likely costs budget and in preparing for a costs management conference -- though litigants in person don't have to go through all of this.

IP: the "no-patents round-up for non-techie people" Session 2

Following morning coffee, deep in the bowels of the Grange Fitzrovia Hotel, Christopher Sharp (Herbert Smith Freehills) took up cudgels on behalf of the neglected, unloved subject of database right under the Database Directive. After a brief introduction to that right's conception and birth, he provided a structured scheme for demonstrating the relationship between traditional UK/EU copyright -- which now no longer protects databases -- and the sui generis database right, and between the content of a database and its structure. Examples of databases included football and horse-racing fixture lists, telephone directories, customer lists and collections of law reports.

Databases are protected where there has been "substantial investment" in obtaining, verifying or presenting them -- but not in creating the data in the first place.  What's the difference between obtaining and creating data, bearing in mind that the right covers only objective, not subjective data? The addition of subjective data to objective data does not mean that that subjective data is covered by database right, but neither does it detract from it. Christopher emphasised that the objective of database right is to promote and protect investment in data storage and processing, but not in its creation. The right runs from the date of completion or making publicly available until the end of the 15th year following that date.  New investment generates a fresh new term, which is database right's big advantage.

The structure of a database is protected by copyright, where the author's original creativity has gone into it. This is a criterion which considerably limits the applicability of copyright. The copyright in databases created in the course of an author's employment lies with the employer, he added.

Christopher then ran through the basics of infringement and enforcement, mentioning the recent jurisdictional problems that have cropped up where the re-utilisation of a database occurs in a country other than that in which the database is accessed. He then offered some thoughts on what constitutes the taking of a "substantial part" of a database, which may be a small part of the data by volume but a large part by value.  Turning to defences, the most reliable and best defence is that the alleged infringer is a lawful licensee; the making of irregular, insubstantial use of another's database is unlikely to be applicable very often.  In terms of remedies, infringement of database rights offers all the usual relief -- but do check out the IP Enforcement Directive, which applies to database rights as well as to better known IP rights.

Has the sui generis database right really added anything? Objections have been raised that it comes perilously close to protecting information per se, but this is a right that has been well drafted and makes sense, which is both why it works well and why we hear so little about it.

"I'm the fluff", announced Serena Tierney when introducing herself as the speaker whose bounden duty it was to talk about copyright licensing, business models and the prospects of the Copyright Hub. To those who recall James Tumbridge's earlier comments about passing off involving vacuum cleaners, this might have suggested that Serena was in some danger. Fortunately this was not the case -- and Serena delivered a highly instructive talk about copyright licensing, the problems of getting an appropriate Getty Image for David Cameron (among other things).

Serena recited the famous tale of Google's allegation that it could never have started if it was launched in the United Kingdom, the genesis of the Hargreaves Report. She then asked some very searching questions about the proposed Digital Copyright Exchange and need for reform in light of the bits of the copyright system that was (still) working well. As it turned out, there were already quite a few digital copyright libraries (including collecting societies and photo libraries) around with facilities for licensing -- but there were some loose strings in need of being tied up. For example, prospective licensees needed something to guide them as to which licensing database they needed to approach in the first place, and automatic online licensing and paying procedures could be developed.  This was something that could be done by industry itself -- and this is what is now what is happening with the not-for-profit Copyright Hub.

As for the Copyright Hub itself, much of it, as the website makes plain, is work in progress.  The educational side of its operations are those that have advanced the furthest.  An alpha test of the Hub's  free-to-use image licensing software takes place on 5 November, with a beta test scheduled for March.  The Hub is working with Australia, Singapore and other countries in order to offer seamless and efficient licensing of copyright-protected materials. Community radio ("Radio in a box") licences are among the more promising focal points for frictionless easyclick licences for use that is governed by time, space and subject matter.

IP: the "no-patents round-up for non-techie people" Session 1

IP: the "no-patents round-up for non-techie people" -- today's conference organised by CLT and hosted in London's Grange Fitzrovia Hotel -- was opened by James Tumbridge (Pillsbury), speaking on trade mark and trade dress protection.  James reviewed some of the snags attached to securing trade mark protection in the UK and Europe for single colours and colour combinations, 3D product shapes -- not least of which is the issue of consumer perception and its relationship to distinctiveness and the degree of attention that leads consumers to distinguish goods on the basis of the presence of those signs on relevant products. Special attention was given to the problems of registering Scrabble tiles, torch shapes, Lego bricks -- and the happy outcome achieved by Nestlé in their dispute with Mars over the protection of the shape of the Polo mint.

Moving on to domain names, James noted that, while there is plenty of action before Nominet at registry level, they have generated relatively little reported litigation. James reminded us of Toth v Emirates [2012] EWHC 517 (Ch), which limited the scope for taking Nominet decisions before the courts for a judicial review [on which see brief Katnote here].

Turning to passing off, the Advocaat, Jif LemonHenry vacuum cleaner, Moroccanoil, Swiss chocolate, the FAGE/Chobani Greek yoghurt and Vodkat decisions were also subjected to James' analysis. As for survey evidence, it has become very difficult to get the courts to accept it, which is a shame because it's the best way of demonstrating that one product's get-up is confusingly similar to another. Limerick winner John Boumphrey added, from the floor. that survey evidence is a bit like a lamp-post: it's there more for support rather than for illumination. James, who represented Chobani, had some critical comments regarding the court's approach towards the protection of ill-defined product categories (what precisely is "Greek yoghurt" and do consumers really care where it's potted or how it's made?) and the fact that terms of this nature, which fail to qualify for geographical indication protection under EU law, are protected far more widely in the UK than in the rest of Europe.

Next to speak was Rebecca O'Kelly-Gillard (Bird & Bird), who summarised the mountain of recent Court of Justice of the European Union (CJEU) and domestic cases as "Browse on, internet users, but watch out online retailers and ISPs"; there was also a sub-theme of the CJEU imposing limitations on national legislation in order to encourage European harmonisation. Rebecca had an awesome challenge before her in leading us through the cases, leading with Svennson, Meltwater, Pinckney and Hi Hotel.  The fact that injunctive relief can be secured on a pan-European basis but infringement damages have to be collected on a country-by-country basis was mentioned. James added here that there some wheezes that might help, such as getting freezing orders against infringers' banks -- but even once this is done, the damages still have to be collected.

Copyright and its impact on hotels and pubs was Rebecca's next theme. The CJEU's ruling in OSA confirmed that users of spas were a new "public" to which broadcast works were being made available (hospitals and prisons are much the same from this point of view). Showing football matches in pubs was also touched upon, in the form of FAPL v Luxton (use of Danish domestic satellite card for commercial rather than domestic purposes) and QC Leisure.

The use of copyright material for personal purposes was reviewed in the form of the CJEU ruling in ACI Adam, plus a review of the new UK Copyright, Designs and Patents Act 1988 section 28B exceptions.  Finally Rebecca turned to the CJEU's ruling on parody in Deckmyn, with which readers of this weblog will be familiar, and to the limited right of digitisation of library books in order for users to access them on their premises in Darmstadt.

Tuesday, 28 October 2014

France to Modify its Intellectual Property Code

French Minister of Culture Fleur Pellerin has presented a bill which would implement Directive 2011/77/EU amending Directive 2006/116/EC on the term of protection of copyright and certain related rights, and Directive 2012/28/EU on certain permitted uses of orphan works.

Extending Length of Protection for Music Performers and Music Producers to 70 Years

Directive 2011/77/EU amended the term of copyright protection for performers in the music field from 50 years to 70 years after the first communication of the performance to the public. The Commission wanted to bring the term of protection of these performers “more in line with that of authors” (at 3.3.6), considering that, generally, people are now living longer. If the performance has been fixed other than in a phonogram, the term of protection was not modified by the Directive.

In practice, performers rarely, if ever, retain their rights as they assign them to a phonogram producer, and Directive 2011/77/EU also amended the term of copyright protection for producers of phonograms. Their rights are protected by Directive 2011/77/EU for70 years after the fixation of the phonogram or its lawful publication, so that they could benefit from additional revenue from the sale of music, particularly online.
Patiently Waiting to Exercise the Use It or Leave It Provision 

Directive 2011/77/EU also gave performers the rights to regain their rights signed over  to record producers if the producers failed to market the recording. This is sometimes called the 'use it or lose it' provision. However, performers first have to notify the producer of their intent to regain their rights, and wait for a year before terminating the rights, if the producer does not market the recording again.

France has not implemented Directive 2011/77/EU yet, and is thus late to implement it, as this should have been done by November 1st, 2013, according to article 2 of the Directive. As of now, the rights of the performers are protected in France for 50 years, under article L. 211-4 of the French Intellectual Property Code (FIPC). As an aside, performers also have perpetual moral rights under article L. 212-2 of the L.212-2 FIPC. Article 1 of the bill would modify article L. 211-4 FIPC and extend protection to performers to 70 years.

New “Use It or Leave It” Provision

Article 2 of the bill would also create an article Art. L. 212–3–1. – I in the FIPC, which would implement into French law the “use it or leave it” provision of Directive 22201111/77/EU. After 50 years of the 70 years of protection provided to him by law, a performer would have the right to notify the producer of his intent to cancel the contract, if the producer “does not offer for sale copies of the phonogram record in sufficient quantity or does not make them available to the public so that everyone can access them from a place and at a time individually chosen.

One wonders if such option will be really helpful to performers. New technologies are likely to be used to listen to music in the near future, but even as of today, it is quite easy for a producer to make a particular work “available to the public” online. However, there is such a plethora of music works available online that it seems that only the ones which are carefully marketed by producers, or the works of a few arch-famous performers, are bought in such quantities that the performer may enjoy a peaceful and lucrative retirement.

Orphan Works

The bill would also implemented Directive 2012/28/EU on orphan works by creating a new chapter in the FIPC dedicated to orphan works. Article L. 113-10 of the FIPC already defines an orphan work as a protected work which has been published, but the rights holder for which cannot be identified or found despite diligent, proven and serious research.  

Under the new law, publicly accessible libraries would have the right to digitize orphan works belonging to their collections and make them available to the public. This option would also be also open to museums, archives, and custodians of film or audio heritage, educational  institutions, and public broadcasting organizations.

This could only be done for cultural and educational purposes and should not provide any economic or commercial advantage to these organizations. They could, however, ask users for financial contributions toward the costs of digitization and generally making available the works. Organizations will have to include the names of the rights holders, if identified, and respect their moral rights. The French Minister of Culture would transmit to WIPO the result of the research made by the organizations to identify the authors of the orphan works.

The Commission for cultural affairs of the French lower Chamber, the Assemblée Nationale, will examine the bill on November 12.

Image is courtesy of Flickr user Leslie Henry under a CC BY-SA 2.0 license

Knives, nails and nippers: forging ahead with the Laguiole mark

Here's a guest post by our good friend Valentina Torelli on a very important General Court ruling on a Community trade mark issue which should appeal particularly to lawyers, as will be explained.  The ruling, available on the Curia website, is available in no fewer than 19 languages, including Maltese -- but not English. Merpel (who, it should be noted, is very fond of Malta and the Maltese) continues to believe that it is reprehensible for important decisions to be posted in minority languages if translations into the main working languages of the European Union are not made first. How many Maltese intellectual property practitioners depend on rulings such as this to be translated into Maltese, she wonders, taking note of the fact that the major Maltese IP practices whose websites she has visited all seem be to be in English and offer their clients no Maltese language option at all.

Anyway, this is what Valentina writes: 
Last week the General Court gave judgment in a keenly-awaited decision, Case T-453/11 LAGUIOLE, in which it again discussed the intriguing relationship between Community trade marks (CTMs) and other distinctive signs in the light of the protection afforded by national laws.
Earlier this year, the Court of Justice of the European Union (CJEU) had to determine the scope of protection under Article 8(4) of the Community Trade Mark Regulation (CTMR) in CTM invalidity proceedings under Article 53(2)(c) CTMR. In its controversial ruling in Case C-530/12, OHIM v National Lottery Commission [extensively reported by the IPKat here], the focus was on the probative value of national law: does it need to be considered by OHIM and by the General Court as a matter of fact or as a matter of law?  The CJEU preferred the latter solution, the parties to the proceedings being asked to provide the Office with the particulars of the national law and case-law for the sake of its decisions.
In LAGUIOLE the General Court had the chance to clarify two important issues in relation to the enforcement of national distinctive signs in OHIM invalidity proceedings: (i) how to interpret the four requirements provided in Article 8(4) CTMR according to both the Community and the national law, in order for an earlier distinctive sign to prevail over a CTM [these four requirements are listed and discussed below], and (ii) the applicability of the principle of specialty (here, where the French business name “Forge de Laguiole” was involved, could the French law on business names be invoked to invalidate a potentially conflicting CTM registration?)
Mr Gilbert Szajner – the applicant before the General Court – filed CTM 2468379 for the word LAGUIOLE back in November 2001. In January 2005 the mark was registered for various goods and services in Classes 3, 8, 9, 10, 11, 12, 13, 14, 15, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 34 and 38.  In July 2005 the French company Forge de Laguiole SARL (the intervener in the General Court proceedings) applied for partial invalidity of the LAGUIOLE mark under Article 53(1)(c) in combination with Article 8(4) CTMR, on the basis of its previous business name, used for activities such as “manufacture and sale of all cutlery, cisellerie, gift items and souvenirs — all items related to the art of the table”.  Invalidation was sought for a substantial number of goods and services in Classes 8, 14, 16, 18, 20, 21, 28, 34 and 38.
The French Intellectual Property Code (IPC) provides that a trade mark registration will be refused if it undermines an earlier right, including business names, if there is a likelihood of confusion of the relevant public. 
Consequently, the holder of an earlier right may apply to invalidate a trade mark, unless the latter was filed in good faith or was used as a trade mark for more than five years (Articles L. 711-1 - L. 711-4 IPC) — these being the national provisions relied upon in this case. 
The Cancellation Division dismissed the application for invalidity.  This decision was however reversed by the Board of Appeal which declared the LAGUIOLE mark null and void in respect to all the products listed above (though still valid for services in Class 38). 
The Board of Appeal decision [R 181/2007-1]
First the Board considered that, according to French case-law, a company's business name is in principle protected in relation to all the activities included in its subject matter. Such protection is limited to actual activities as materially undertaken only when the company's subject matter is too vague or it does not encompass those activities. As to the Forge de Laguiole business name, the Board found that the company's subject matter was enough defined for “manufacture and sale of all cutlery, cisellerie”. Regarding the remaining activities (“gift items and souvenirs - all items related to the art of the table”), while the subject matter was considered imprecise, due protection must be afforded to the French company's business name for those activities effectively undertaken. Indeed, The Board observed that, solely for luxury and travel goods, no real activity was apparent and that, for some of the services in Class 38, all the products covered by the LAGUIOLE CTM fell under the scope of protection of the French company's business name.
Secondly, the Board found there might be a likelihood of confusion among French consumers if the LAGUIOLE CTM was used in relation to similar or identical goods to “cutlery, cisellerie, gift items and souvenirs - all items related to the art of the table”, sold to the same Forge de Laguiole consumers through the same distribution channels.

Finally, in the light of the French company's repute, the Board considered that its business name had a strong distinctive character so as to enjoy broader protection in respect to activity sectors other than those covered by the company's subject matter.
Preliminary matter before the General Court 
Szajner appealed to the General Court, which initially had to solve a preliminary matter relating to the admissibility of the French Supreme Court judgment of 10 July 2012 (Coeur de princess/Mattel France no. 8-2012.010), delivered after the Board of Appeal's invalidity decision and cited by Szajner for the first time before the General Court. Although OHIM contrasted the applicability of this French judgment in the present case by means of the well-known CJEU case-law in Case C-263/09 P Edwin/OHIM [noted on this weblog here], this did not stop the General Court taking into account a probative element introduced by a party to the proceeding, namely the French Supreme Court's judgment, in order to demonstrate that the Board of Appeal erred in applying national law. Indeed, Szajner had complied with the CTM Implementing Regulation by providing the particulars of the relevant national case-law, as Edwin suggests.  Accordingly the court applied that French judgment in the light of the principle of retroactivity of case-law interpretation.
Substance of the case before the General Court 
Szajner’s application rested on a sole plea in law, misapplication of Article 53(1)(c) CTMR in conjunction with Article 8(4) CTMR. These combined provisions allow the holder of an earlier sign to apply to invalidate a CTM, provided that the four cumulative requirements pointed out in Article 8(4) are met:

  1. The sign is used in the course of trade;
  1. The sign is of more than mere local significance;
  1. The rights to that sign were acquired prior to the date of application for registration of the Community trade mark or the date of the priority claimed for the application for registration of the Community trade mark;
  1. The sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
Citing Joined Cases T‑318/06 to T‑321/06 GENERAL OPTICA, the first two requirements — use of a sign in the course of trade, this being of more than mere local significance —must be interpreted under the Community law while, as regards the remaining two, Article 8(4) allows invocation of the national law, ie French law in the present case.
The parties agreed that the Forge de Laguiole complied with the first three requirements as set out above, but disagreed as to whether it could prohibit the use of the later LAGUIOLE mark and as to whether business names are subject to trade mark principle of speciality under the relevant French law. 
Applicability of the principle of speciality to business names 
Like the Board of Appeal, the General Court analysed the activities included in the Forge de Laguiole’s subject matter and in particular the clarity of its wording. Companies’ subject matter result from their statues, as provided at the time of their incorporation and, in the specific case of French companies, from their Kbis extracts. Moreover, under French practice, companies’ activities are classified in compliance with the administrative classification of Companies’ Main Activities (Activités Principales des Enterprises, “APE”) which is arranged in accordance with the Classification by Activity Families (Nomenclature des Activités par Famille “NAF”).
In this case, on the basis of its Kbis extract Forge de Laguiole was engaged in the activities of “manufacture and sale of all cutlery, cisellerie, gift items and souvenirs - all items related to the art of the table”. Indeed, the French company claimed to extend the protection of its business name to other activities sectors, such as “household arts”, "world of wine", “items for smokers”, “items for golfers”, “items for hunters”, “leisure or accessories, such as gift boxes, cases, boxes”. In practice, Forge de Laguiole is a French company that can boast an old tradition in the manufacture and sale of knives and among them of the special Laguiole knife type.

However, until the French Supreme Court’s judgment of 10 July 2012 was released, French case-law regarding the applicability of the principle of speciality to business names was controversial.  That judgment clarified that, yes, the scope pf protection of business names was limited to the activities effectively carried out by companies, irrespective of the administrative classifications. This being so, the General Court found that the Forge de Laguiole business name could entitle its holder to prohibit the use of the LAGUIOLE mark only in respect of the activities effectively undertaken by the French company.
Turning to the evidence provided by the intervener that it developed a diversification of its activities, other than just the “manufacture and sale of all cutlery, cisellerie, gift items and souvenirs - all items related to the art of the table”, before the filing of the contested LAGUIOLE mark, the Court held that Forge de Laguiole could furnish such proof only for “knives”, “cutlery” and their related “gift items and souvenirs”. On this basis the Court set aside the Board’s invalidity decision with reference to all the other products falling within other sectors of activity. 
Assessment of the likelihood of confusion

Was there a likelihood of confusion between the business name Forge de Laguiole and the LAGUIOLE CTM in the mind of the average French consumers, taking into account only the activities proved to be carried out by the intervener?
Comparing the signs, the Court found an average visual and aural similarity while the conceptual similarity was high. In particular, no dominant element was found in the Forge de Laguiole denomination, as it comprised only descriptive and generic elements, so that the average consumer would create a link either with the village of Laguiole or with the French company’s activities in the knife and cutlery sector. Moreover, contrary to the Board of Appeal, the Court held that the intervener did not furnish proof of repute of its business name. 
With reference to the identity or similarity between the activities effectively undertaken by Forge de Laguiole and the goods and services covered by the LAGUIOL mark, the Court pruned the number of conflicts found by the Board of Appeal. In particular, the Court argued that a likelihood of confusion was apparent only as follows:
* “tools and implements, hand-operated” and “spoons” in class 8 were identical to the intervener’s activities;  
* “pliers, razors, razor blades; nail files, nail nippers, nail clippers” in class 8, “paper cutter” in class 16, “corkscrew and bottle openers” in class 21, “cigar cutters and pipe cleaners” in class 34 were highly similar to the intervener’s activities;  
* “shaving cases and manicure sets” in class 8 and “shaving brushes and fitted vanity cases” in class 21 were averagely similar to the intervener’s activities. 
Consequently, the General Court upheld the sole plea in law presented by the LAGUIOLE mark holder and annulled the decision of the Board of Appeal in so far it invalidated CTM for all goods other than those listed above.

That said, it would have been interesting if the General Court had accepted the argument of the reputation of the Forge de Laguiole business name, and the possible outcomes to which that factor would have led: we’ll have to wait for the next national judgment to raise the bar in this respect.

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