ACTA back in the news

The controversial Anti-Counterfeiting Trade Agreement (ACTA) is back in the news and matters are as confusing and opaque as ever (see the IPKat's earlier reports here).

Last week 22 of 27 EU countries (including the UK) signed up to ACTA (in Tokyo... of all places) and it is now for the European Parliament to approve the agreement, withhold the agreement or ask the European Court of Justice to check it.

According to news reports there appears to be call for an EU wide Anti-ACTA protest on 11 February 2012 (see report by German news site n-tv.de). The European Commission feels the need to defend its support of ACTA and last week published a document called "10 Myths about ACTA" (read it here), essentially saying that ACTA is good for the EU's competitiveness and that ACTA will not infringe and/or encroach upon privacy, freedom of expression and data protection. ACTA critics maintain that ACTA will do exactly this and are concerned by the secrecy surrounding the ACTA negotiations which were conducted "behind closed doors".

Today, the European Parliament published a press release concerning ACTA (which you can read by clicking here) stating that following ACTA "what was allowed will be allowed". In the meantime, according to a report by CNET, the hacker group Anonymous appears to have decided to target the European Parliament calling ACTA, "Europe's SOPA".


Last week hackers already attacked several Polish government websites. This all follows the news that Kader Arif, the European Parliament's rapporteur ACTA resigned from his position last Friday because of the "never-before-seen manoeuvres" by officials behind the scenes (see a BBC news report here). German news site n-tv also cited German law Professor Axel Metzger of the University of Hanover who is of the view that ACTA does indeed foresee harsher criminal law provision for the infringement of IP rights and diminishes the rights of potential defendants. A detailed interview with Professor Metzger can be found in the respected German legal review Neue Juristische Wochenschrift (in German only, sadly).


Do our readers have any views on ACTA and its consequences? Is it as bad as feared or is this all a storm in a teacup?

What's the use of contraception? Don't ask the EPO ...

Never mind all this patent stuff, says
the IPKat, this suit is the best form
of contraceptive. Wear this and you
should be quite safe ...

Having announced the appointment of Darren Smyth as this weblog's third guest Kat for the first half of 2012  (see Katnews 1, here), this Kat is doing Darren the favour of posting his first piece on his behalf.  From now on, Darren's doing it himself.

Darren's maiden blog contribution focuses on patents and, in particular, on the concept of the use claim:

"This temporary feline has been musing on the European Patent Office (EPO) Board of Appeal (BoA) decision T 1635/09, which was published in OJEPO 11/2011. Ostensibly it is about contraception, but at its heart is a more fundamental question – what is a use claim? 

Practitioners will be aware that the EPO regards claims to certain methods of contraception, namely those “applied in the private and personal sphere of a human being” as lacking in industrial applicability (T 74/93: however, this decision did emphasise that “a method of contraception is not excluded per se from patentability under the aspects of industrial application as stipulated in Article 57” of the European Patent Convention, but only because “in this particular case the method is intended for application by the woman herself”). 

On the other hand, a method of contraception is intrinsically not a method of medical treatment, because pregnancy is not a disease. However, if a claimed method of contraception encompasses prophylaxis against side-effects (for example side effects which may be attendant upon taking a contraceptive pill), then such a method claim does fall within the exclusion of patentability of methods of medical treatment (T 820/92). 

Against this background comes T 1635/09. The invention was concerned with a hormone-based low-dose contraceptive pill, in which a purpose of selecting a low dose of the hormones was to reduce the side effects. The part of the decision concerning the patentability of contraceptive methods is all square with T 820/92, so Headnote I states:

Use as an oral contraceptive of a composition in which the claimed concentrations of the hormone content are selected at such a low level as to prevent or reduce the likely pathological side-effects of such an oral contraceptive is a therapeutic method excluded from patentability under Article 53(c) EPC.

Unsurprisingly, the BoA also held that, in such a case, the therapeutic and non-therapeutic aspects of the use cannot be separated, so the exclusion from patentability cannot be overcome simply be specifying “non-therapeutic” in the claim (See headnote II). 

In contrast to the situation in T 74/93 and T 820/92, which were appeals from the Examining Division, the proprietor was in the unfortunate position that the EPO had granted the patent, which was under opposition, with the offending claims to “Use of ….. [a] ….. dosage form for contraception …”. So when the proprietor tried to change the claims to a Swiss-style form “Use of … to produce … [a] dosage form for contraception …”, it fell to be examined what was the effect of such a change of claim format, and, in particular, whether it constituted an extension of scope of protection under Article 123(3) EPC. 

From this analysis emerges the fascinating (but unfortunate for the proprietor) insight that all use claims are not at all equal. 

So what is a “use” claim? The EPO explicitly recognises “use” as one of the four permitted claim categories (product, process, apparatus, use) in Rule 43(2). However, the national infringement law of patents in European countries recognises only two categories of claim – product and process. So apparatus is a type of product and use is a type of process, right? Well, apparently not.  It turns out that some use claims are process claims, and some use claims are not process claims. How do you tell the difference? It all comes down to whether Article 64(2) EPC applies. Art 64(2) states:

If the subject‑matter of the European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by such process.

The BoA looked at the Enlarged Board of Appeal decisions that recognise Swiss-from use claims (G1/83) and second non-medical use claims (G 2/88), and found a major difference in the way that Art 64(2) would apply. On the one hand, G 2/88 held:

5.1 The Board has considered the effect of Article 64 (2) EPC upon the question whether an amendment involving a change from, for example, a compound claim to a claim to a use of such compound will cause extension of the protection conferred. In particular, it could be considered that such a "use" claim is notionally equivalent to a claim to a "process including the step of using the compound", and that the effect of Article 64(2) EPC is to extend protection to the "product" of such process (whatever it is); thus there would be extension of protection within the meaning of Article 123(3) EPC by reason of the change from a claim to one physical entity (the compound) to a different physical entity (the "product" of the process of using the compound).

In the Board´s view, in relation to such a change of category to a "use" claim, Article 64(2) EPC does not normally have such an effect, however, for the following reason. Article 64(2) EPC is not directed to a patent whose claimed subject-matter is the use of a product to achieve an effect (this being the normal subject of a use claim): it is directed to a European patent whose claimed technical subject-matter is a process of manufacture of a product; the Article provides that for such a patent, protection is conferred not only upon the claimed process of manufacture, but also upon the product resulting directly from the manufacture. 

Thus, provided that a use claim in reality defines the use of a particular physical entity to achieve an "effect", and does not define such a use to produce a "product", the use claim is not a process claim within the meaning of Article 64 (2) EPC.

Thus a “second non-medical use” claim, including a claim to use in contraception, is not a process claim to which Art 64(2) applies. 

On the other hand, G1/83 stated (emphasis from BoA in T1635/09):

It seems justifiable by analogy to derive the novelty for the process which forms the subject-matter of the type of use claim now being considered from the new therapeutic use of the medicament and this irrespective of the fact whether a pharmaceutical use of the medicament was already known or not.

So, according to the BoA in T1635/09, the EBA in G1/83 “deemed the Swiss-type claim to be a process of manufacture the novelty of which, however, exceptionally arises from the intended use of the manufactured product”. This type of use claim therefore was a process claim to which Art 64(2) would apply. 

With relentless and ruthless logic, therefore, the BoA concluded:

It follows from the above finding that the process of manufacture to which claim 1 of auxiliary request 23 [the Swiss-form claim], in view of its content, is directed goes beyond the scope of protection conferred by the use claims as granted: in the case of claims directed to a process of manufacture, the effect of Article 64(2) EPC is to extend protection to the "product" obtained by such process (whatever it might be), whereas a use claim does not encompass the manufacture of the pharmaceutical product (G 1/83, Reasons 11), with the result that its scope of protection does not extend to the directly resulting product. Consequently, the requirements of Article 123(3) EPC are not met.

So the change of claim category from use (not a process) claim to use (really a process) claim was held to enlarge the scope of protection, and was therefore not allowed. 

Having decided this, of course the BoA held an EPC 2000 claim in the form “dosage form … for contraception” likewise to offend Article 123(3) EPC. 

The final result (for these and some other reasons): patent revoked. 

It is quite unlikely that someone will again be in the position that the EPO has allowed an unallowable claim to a method of contraception. So practitioners will probably not be changing the way they go about their business. But for those who have wondered what a use claim is really about, this case finally gives some insight. Merpel thinks that it shows just how right the US patent law is not to recognise use claims at all".

Wednesday whimsies

Katnews 1.  It is with great pleasure that the IPKat informs readers that the third of his guest bloggers for the first half of 2012 has been appointed, with immediate effect. He is none other than Darren Smyth (pronounced "Smyth", right), a patent attorney who is currently a partner in UK-based intellectual property practice EIP and a one-time editorial board member of the Journal of Intellectual Property Law & Practice.  Darren will be posting on all sorts of things, we're sure, but Merpel has discovered that he has an interest in the various goings-on in the European Patent Office and that he quite likes design law too.

Katnews 2. It's a little while since Catherine Lee ("Cat the Kat") found herself roosting, if cats can be said to roost, in the intellectual property practice of UK-based international law firm Osborne Clark -- but it's only recently that Catherine has found a perch, if cats can be said to perch, on the firm's website. Anyway, Catherine is definitely there and she can be found in the firm's Thames Valley office. Her new details can now be found here.

Katnews 3. The IPKat has never formally recorded that Neil Wilkof, who is currently spending a month in India as a visiting IP expert and scholar, is now heading the trade marks department, the technology transfer team and the computer and internet law activity for his new firm, Dr Eyal Bressler & Co., Ramat Gan, Israel.  A man of great tact, versatility and talent, Neil is still also doing some work with his previous firm, Herzog Fox Neeman, of Tel-Aviv: you can check out his HFN web profile here.

Katnews 4.  Our resident Katonomist Dr Nicola Searle has won a number of accolades from readers who have been impressed by her ability to make economics accessible to intellectual property lawyers, her wide-ranging scholarship, her humour and her irresistible spectacles.  Yesterday Doctor Nic won another accolade, when her outrageously enjoyable post on IP valuation and footballers was selected by Legal Week for inclusion in the blog post section of that title's Legal Village.  This Kat thinks it's only the second time in getting on for eight years that any IPKat post has been mentioned in Legal Week. Well done!

The European patent reform
proposals: lots of noise, lots
of hot air -- but all along
the wrong track ...

The AmeriKat meowed at the IPKat yesterday with news that may indicate that the runaway unitary patent train may be slowing down a bit. On Tuesday, following the informal meeting of the European Council in Brussels, a Statement was published which sets out three immediate priorities of the EU: stimulating employment, completing the single market and boosting the financial economy, including SMEs. Under the second heading at point 4 the Council stated that:

"The participating Member States commit to reaching at the latest in June 2012 a final agreement on the last outstanding issue in the patent package."

The AmeriKat tells the IPKat that she does not want to read a great deal into the statement, but it's the first time she has seen something that appears to have given a deadline for reaching an agreement (or not) and. indeed, a deadline that is not absolutely imminent. What effect this statement has on the plenary session approaching in two weeks time, she does not know, but perhaps there is more time to affect the changes that are so desperately needed to make the proposed unified patent system workable.  Thanks to Steve Peers for bringing the Statement to the AmeriKat's attention.

PS This afternoon, at 2.00pm British Winter Time, British Innovation Ministrix Baroness Wilcox is giving evidence before the UK's House of Commons Scrutiny Committee. If you plan to tune in and listen to the session live via the streamed sound-cast, click here a few minutes early so that you can sort yourself out before the session starts.


PPS The AmeriKat also wishes to draw the attention of readers to the fact that the written submissions of CIPA, EPLAW and the IP Bar are now online on the webpage of the Scrutiny Committee here.

Free at last.  Annette Freeman has written to let the IPKat know that, after 33 years with leading Australian law firm Spruson & Ferguson in Sydney, she has relocated to London where she has launched (i) her own IP consultancy, Freeman IP and (ii) more interestingly from the IPKat's point of view, her own weblog, also called Freeman IP.  The IPKat wishes her well in her new surroundings and hopes to see her soon at the Old Nick  .... See and a blog at www.freeman-ip.blogspot.com The consultancy is offering a range of services to help brand owners manage their portfolios and IP attorneys to foster their business.

Eye of Newt, Eye of Tiger: is this Gingrich's Macbeth Moment?

Macbeth's bid for power was thwarted
by ambition, pride and a disregard
for the law.  Is Newt Gingrich about
to follow suit?

The animal kingdom has its musical dimension.  The song of the nightingale, the mysterious music of whales, the mewing of arctic seagulls, even the synchronised barking of dogs, have all been the subject of comment. The world has however heard little of the song of the newt -- till now. In an article for the Telegraph, "US election 2012: Newt Gingrich faces lawsuit for using 'Eye of the Tiger' theme tune", by Amy Willis, the IPKat reads as follows:

"Newt Gingrich, the Republican candidate whose star has been waning in the Florida polls this week, is being sued for his use of the song Eye of the Tiger during political rallies and public events. Court documents were filed in Chicago on Monday by composer Frank Sullivan, a co-writer of the Grammy-award winning anthem, citing copyright infringement. Mr Sullivan registered ownership of the song in 1982. Gingrich has used the tune to whip the campaign crowds into a frenzy as he walks on stage at rallies to address his supporters. ...  The song became a household No 1 in 1982 after the release of the [Rocky III] film, starring Sylvester Stallone.

The law suit, lodged in a federal court by Rude Music Inc, a music company owned by Mr Sullivan, cites copyright infringement by Gingrich as far back as 2009. In addition to Mr Gingrich, the complaint names his campaign, Newt 2012 Inc, and the American Conservative Union, an advocacy organisation, as defendants.

The complaint states that the alleged violation is intentional because Mr Gingrich is "sophisticated and knowledgeable" concerning copyright laws. In the five-page court document, it notes that Mr Gingrich's criticism of the Stop Online Piracy Act during a debate in South Carolina, demonstrated his knowledge of copyright laws [Merpel thinks that some readers of this blog, among others, would suggest that his opposition to SOPA demonstrated how little he knows about copyright -- but that's another matter!]. During the campaign he said: "We have a patent office, we have copyright law. If a company finds it has genuinely been infringed upon, it has the right to sue." 

Rude Music Inc has requested an end to unauthorised use of the song by the Gingrich campaign, and that Rude Music Inc is awarded damages for the infringement. 

A Gingrich campaign spokesman could not immediately be reached for comment".

The IPKat and Merpel will be watching for developments.

More about eyes of newts here
Tiger's eyes here and here
Cat's eyes here

IP Protect Expo: a chance to learn, a chance to chat

Have you heard of the IP Protect Expo? No? Nor had the IPKat, until Ian Shircore told him all about it.  This event is coming up on 28 and 29 March 2012 in the Gallery Hall, Business Design Centre, London.  What's it all about? Let Ian explain:

"IP Protect Expo 2012: Bringing the IP world to London

The problem is The Gulf. Not the geographical one, but the gulf between the theory underlying IP issues and the day-to-day practice of dealing with the fakers, chancers and organised crime gangs who see their life’s work as piggybacking on other people’s creations.

To get the legal experts, the brand or rights owners, the investigators and the police or trading standards people all focused on the same problems at the same time is usually impossible [this is the conventional wisdom -- in the UK at any rate -- and it's not just a matter of there being no convenient interface protocol between them: it's also the result of all of these people having more than one thing to do at a time, and everyone's priorities are different]. Yet there is obviously a great deal to be gained from swapping stories and comparing notes about what the criminals are up to and how they can be stopped.

And it was this simple idea – that there ought to be an international forum where people from every aspect of the intellectual property business could get together and exchange tips, techniques and experiences – that led to plans for the first IP Protect Expo, which takes place in London on 28 and 29 March 2012.

From the germ of an idea 12 months ago, this has already turned into a high profile international event. It will be opened by Baroness Wilcox, the UK government’s Minister for Intellectual Property and it will involve many of the biggest – and most put-upon – global brand owners, from Unilever, Beiersdorf and GlaxoSmithKline to Epson, Tiffany and Estee Lauder.

Many IPKat readers will be aware of the leading role in tackling fakes taken by the UK’s influential Anti-Counterfeiting Group (ACG). The ACG’s involvement, as co-host of IP Protect Expo 2012, has done a lot to help the fledgling event shape a genuinely useful programme of specialist seminars and gain immediate international credibility.

As a result, the organisers are already facing the problems of success – starting a waiting list for would-be exhibitors who want stand space and worrying about whether the excellent balconied hall at the Business Design Centre may have been too conservative a choice of venue. On the other hand, as a new event in an untried format, it was not guaranteed to attract the world’s attention as it has. No-one was seriously expecting to sell stand space to commercial exhibitors from Australia and Eastern Europe, alongside the security technology vendors, investigators and legal firms from closer to home.

By bringing together brands and rights holders from many different industries, as well as law enforcement and anti-counterfeiting experts from around the world, IP Protect Expo puts an important new date in the calendar for the whole industry.

Rubbing shoulders is
always appreciated -- but
first you have to find them

It creates a cost effective networking opportunity for rights holders, brands, industry bodies and associations, technology vendors, online security experts, investigation specialists and enforcement agencies to rub shoulders and build relationships, as well as sharing information. And, unlike conferences, it is cheap enough for whole teams to come along and meet their counterparts from other specialisms. The seminar programme itself is a crash course in IP practice, with contributions from battle-hardened experts like IFPI’s anti-piracy director, Jeremy Banks, barrister Rob Gray, from Bond Solon, Richard Heath of ICC/BASCAP and Shelley Duggan, associate general counsel, global brand protection leader at Procter & Gamble.

Based on confirmed attendances with two months to go, it is clear that IP Protect Expo 2012 has already achieved what it set out to do. It has created a framework within which, for the first time, all those involved in protecting IP are coming together at a cross-functional and cross-industry level to focus on the practical aspects of the task. For more information about the event, go to www.ip-protectexpo.com".

The IPKat likes to see any event that brings people together to share their experiences and learn from one another, and he wishes this event well. Merpel likes the idea too, but does feel that there's scope for coming up with a catchier, less descriptive name than IP Protect Expo. Any ideas?

Sink or Schwim? The legal assault on USA Enterprises begins

The IPKat has been a tireless fighter against the perpetrators of  intellectual property scams and the purveyors of parasitic, worthless quasi-official services and catalogues (see for example earlier posts here, here, here and here). He therefore takes great heart to see that his transatlantic friends at Leason Ellis LLP are taking the initiative described in the media release which they issued yesterday and which, in relevant part, is reproduced here:

"Leason Ellis LLP, an intellectual property law firm located in White Plains, New York, has filed a Complaint against USA Trademark Enterprises, Inc. of Sarasota, Florida, and its principals Timea Csikos and Andras Nemeth, with the United States District Court for the Southern District of New York, White Plains Division. The case, 12-cv-0620, has been assigned to the Honorable Edgardo Ramos. A copy of the Complaint is available at www.trademarkblog.com

The multi-count Complaint alleges that defendants have engaged in false advertising and unfair
competition by marketing a catalog of trademark registrations, which offers no value as the published information is freely available in the online records of the U.S. Patent and Trademark Office. Defendants are further confusing consumers into thinking that the catalog is legitimate by sending unsolicited notices designed to make it appear as though USA Trademark Enterprises, Inc. is an official government enterprise or otherwise affiliated with any entity associated with the trademark registration process.

According to [the IPKat's friend and initial inspiration for launching this weblog] Martin Schwimmer, lead counsel for Leason Ellis in the case, and author of the well-known Trademark Blog, “our clients are routinely receiving bogus notices from companies like USA Trademark Enterprises. Unbelievably, USA Trademark Enterprises even sent a notice to us when we registered our firm’s logo. They are obviously mining the records of the USPTO and targeting novice trademark registrants who can be mistakenly led to believe that the catalog has any legitimate public notice value.”

Adds Schwimmer, “We are concerned that U.S. trademark registrants receiving these solicitations have actually handed over money for what amounts to mere public notice services – a benefit already bestowed upon a U.S. trademark registrant as a matter of law. Anyone who has done so should immediately contact competent trademark counsel concerning those transactions. Of course, we are also interested in speaking with them about their experiences as they are likely relevant to our case.”

David Leason, Managing Partner of Leason Ellis, said “by targeting our clients and us, USA Trademark Enterprises has interfered in our business [this is presumably why it is the law firm, and not a scam-victim, which is bringing this action under the New York General Business Law, Articles 349 and 350, seeking an injunction, an account of profits, the tripling of punitive damages and practically every dreadful fate short of being chained to a rock and made to listen to Pachelbel's Canon till the end of time] and cast a shadow over the legitimacy of trademark-related communications. In filing suit, we are out to protect our clients, our business, and the integrity of the trademark process from predatory and deceptive marketing.” ...".

The IPKat says, if you are a trade mark proprietor or applicant, or someone who acts for one, who has been adversely affected by the activities of  USA Trademark Enterprises, do please email Peter Sloane or Cameron Reuber at Leason Ellis LLP, or call 914-288-0022.   Merpel says, if you can bear a little 1970s nostalgia, see what else comes from White Plains.

Breaking news: Specsavers v Asda goes to European Court of Justice

Snowy never could decide whether
she needed glasses for reading Court
of Appeal decision ...

The Court of Appeal for England and Wales has just given judgment in Specsavers International Healthcare Ltd, Specsavers BV, Specsavers Optical Group Ltd and Specsavers Optical Superstores Ltd v Asda Stores Ltd [2012] EWCA Civ 24.  This Kat, who said that Specsavers must have felt pretty sore about the trial decision of Mr Justice Mann (see earlier post here), is not surprised to see that the Court of Appeal -- for whom IP specialist Lord Justice Kitchin delivered the judgment -- has upheld two of its grounds of appeal and has stayed a third, pending a reference to the Court of Justice of the European Union for a preliminary ruling on the following five questions:

A. Where a trader has separate registrations of Community trade marks for
(i) a graphic device mark;
(ii) a word mark;
and uses the two together, is such use capable of amounting to use of the graphic device mark for the purposes of Article 15 of Regulation 40/94? If yes, how is the question of use of the graphic mark to be assessed?

B. Does it make a difference if:
(i) the word mark is superimposed over the graphic device?
(ii) the trader also has the combined mark comprising graphic device and word mark registered as a Community trade mark?

C. Does the answer to A or B depend upon whether the graphic device and the words are perceived by the average consumer as (i) being separate signs; or (ii) each having an independent distinctive role? If so, how?

D. Where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours such that it has become associated in the mind of a significant portion of the public (in a part but not the whole of the Community) with that colour or combination of colours, is the colour or colours in which the defendant uses the sign complained of relevant in the global assessment of (i) likelihood of confusion under Article 9(1)(b) or (ii) unfair advantage under Article 9(1)(c) of Regulation 40/94? If so, how?

E. If so, is it relevant as part of the global assessment that the defendant itself is associated in the mind of a significant portion of the public with the colour or particular combination
of colours which it is using for the sign complained of?

This Kat has not had time to read the 187 paragraph judgment yet (at the time of posting, it wasn't yet on BAILII but you can read it here), but will return to it tonight unless one or other of his colleagues kindly gets there first and writes the decision up for him.

Katonomics 10: IP valuation again --how much is a footballer worth?

You can't keep a good Katonomist down -- particularly on a date like 31 January.  That's the closing date for the English and Danish "transfer windows" within which football clubs can sell their overpaid, under-performing players to their rivals and use the money to buy overpaid, under-performing players from clubs that have to sell them because they need the money to cover the debts incurred by overpaying their under-performing football players in the first place.  Anyway, sensitised to the transfer market for professional footballers, the IPKat's treasured expert on matters pertaining to the point of contact between intellectual property law and economics Dr Nicola Searle takes a look this week at the question of the moment: how much is a footballer worth?

"When the IPKat first suggested this football related post, my first reaction was panic. I know next to nothing about football. Indeed my knowledge of professional sports in general ranks only slightly above my knowledge of aglets. However, the IPKat pointed out that lack of knowledge about football is actually a qualification for discussing the topic. Limited knowledge of a subject has not dissuaded economists before, so I pressed on.

To begin with, let’s look at some economic properties of the market for footballers. I would argue that footballers share many characteristics with performers such as actors and dancers. Footballers, like artists, are intrinsically motivated to play football. This suggests that footballers would continue to play football even if they weren’t paid. However, tennis player Serena Williams recently professed that she doesn’t like sports and prefers shopping, so perhaps intrinsic motivation isn’t as relevant as I thought. 

Vertical -- but are their skills differentiated?

In which case, it’s all about the cash! Like the arts, the market for footballers exhibits vertically differentiated skills. Put differently, it’s an A list/B list, winner-takes-all market. For footballers, being top tier means that they are more skilled or more popular than those below. That potentially small difference means winning more games and generating more ticket sales than second tier players. Losing teams don’t fare as well financially, so it’s in a club’s interest to have the best players. Players know this and successfully bargain to capture some of the club’s benefits from winning.

The A list/B list structure of the market means that some players earn a lot of money, but the majority don’t. For baseball, a slight difference in overall skill level means that American baseball player Alex Rodriguez earned US$27M in 2007 whereas his teammates at the bottom of the payscale made $327k. Don’t forget, these are the athletes that made it to the big leagues. Consider all the other wannabe athletes and lower league players that earn nothing or considerably less. Like law graduates who hope to make partner and drug dealers who dream to be gang leader, the economics of athletic careers mean that aspiring athletes take on a lot of risk. 

We could also look at the market for footballers as husbands and partners (economics of marriage), but that involves far too much fake tan for my taste. 

So, how do you a value a player? You could use this American patent. Or, follow British based researchers Tunaru, Clark and Viney, use of the options-based analysis I discussed last week (here). They also note that much of the recent wealth of clubs comes from television contracts, which are increasing due to the sport’s popularity. 

However, what about the brand value of players? French researchers Villemus and Gurău note here that the brand value of the player and the club are interrelated. They’re the ying and yang of football. After all, what would the Wimbledon Football club be without Pelé Best? And H&M FC without David Maradona? (I hope I’m managing to offend as many readers as possible.) 

The brand value of the athlete rests firmly on the base of the player’s athletic value. It is that athletic value and ability to win that attracts fans and builds up a brand value. Being good looking or sufficiently interesting/charming will increase value. Here, the income and market models play a role. As the stakes (television contracts, licensing deals) grow higher, so the cash flow associated with a player increases. Competition between clubs drives up the market price for footballers as they bid against each other for the best players. 

However, where do athletic value and brand value diverge? Pinpointing it exactly is difficult. Given that the spectacle of a football match is a performance, I would argue that nearly all the value of a footballer is in the brand. You don’t go to a match to watch generic skilled athletes, you go to watch those players for that club. Ancillary revenues from merchandising and advertising benefit from the higher prices associated with branded goods and the large fan base. Athletic ability may be the key to stardom, but it is the brands and fans that make it so profitable.
So readers, how did I do? Where do you think the value of footballers lies?".

The IPKat notes that it's not just footballers that have a market value and an economic impact. The same is true of football club managers. This Kat thanks Shmuli Phillips for this link to this recent piece in the Financial Times on that very topic.

Monday miscellany

Wanted! The IPKat has been asked to find a work experience placement, either in a law firm or in the legal department of a company, for a bright and interested 15 year old schoolboy from North West London. He is available from 2 to 13 July inclusive.  If you have a space in your office and are prepared to share it with him, please email the IPKat here and let him know, with the subject line "Work Experience".

The IPKat's Danish-based friend and colleague Matthew Elsmore has been wondering if anyone has ever put together a guide on intellectual property issues arising out of the writing and publication of textbooks and educational materials. This Kat can't think of one offhand, though he can clearly recall various battles with publishers over the content of some of his own books. The legal department of one publisher expected him to get permission for the reproduction of a lengthy quote from Charles Dickens (died 1879), and he also had some fairly vigorous correspondence over the question whether the reproduction of a figurative trade mark in a chapter on trade mark registration constituted a trade mark infringement. It is quite possible that other authors have had similar experiences, so perhaps a legal guide would be quite handy. Can anyone point Matthew in the direction of such a work -- or would they like to write it?

Around the blogs.  Afro-IP's Kingsley Egbuonu's A to Z tour of national IP office sites takes him this week to Mauritius, where he has some highly encouraging news to report.  Neil J. Wilkof, on IP Finance, has posted a fascinating piece on "Loss Leaders and Bait and Switch: Marks and Brands in the Auto Industry". Rick Sanders, writing on his law firm's blog, has some interesting insights on ReDigi in the US in "Music Industry v. ReDigi: The Problem with Phonorecords: Copyright".  Still on copyright and the US, Eleonora Rosati has posted a punchy little piece on the controversial Research Works Act. There's a good Current Intelligence note by Riccardo Sciaudone on the Advocate General's Opinion in Case C-461/10 Bonnier Audio, which you can find here on the jiplp weblog and which addresses the uncomfortable relationship between IP enforcement and respect for personal data.

The 1709 Blog's "Red Bus" copyright seminar on Tuesday 21 February, which was launched only last Thursday, now has a remarkable 61 registrants already signed up for it -- even though the details of who else will be speaking apart from Michael Edenborough QC have yet to be finalised.  If you'd like to join them, you've not much time to lose!

"Today I opened the TMView database", reports the IPKat's Bulgarian friend Ventsi Stoilov, "and I discovered that there are many changes". First, he spotted that the trade mark search criteria have increased. Even better, you now have the opportunity to receive a mail signal in the event of various changes in trade mark status --oppositions, updates, etc.  If you are so minded, you can transform your search results directly into pdf., Excel or html format. Three new states are now TMView-searchable: Romania, Lithuania and Sweden. For those who are constitutionally equipped to live in an atmosphere of continuing feverish excitement, Ventsi reports that there are even more changes coming in March. Ventsi's overall assessment: "I think this is good news for all of us, because it will allow us more conveniently and easily to search for marks".

Doing its best to extend a hand to prospective users, the UK's Intellectual Property Office is excitedly asking "Have you joined our IPO LinkedIn group where IP news/issues can be discussed?". If you already have, you can skip to the next item on this blog post. If not, details of the group can be found here.

Those who both love European patent law and have a high tolerance for loose-leaf publications will be pleased to note that the latest release -- Release 36 -- of Sweet & Maxwell's European Patent Decisions (EPD) has now been, well, released.  This publication, authored by the IPKat's friends Noam Shemtov and Florian Leverve, is updated four times a year, the next release being expected this coming April.

IP and Entrepreneurs: Going, Going, Gone

How are IP rights presented to budding entrepreneurs? I had another enlightening glance at the answer to that question quite by serendipity over the weekend. While taking a walk on the IIT-B (India Institute of Technology Bombay) campus, I passed signs for "The Entrepreneurship Summit 2012". The conference was put together by ECell, which seems to be a student-initiated entrepreneurship group that enjoys IIT-B faculty support. It also had various high-profile sponsors, including Nokia, CNBC and ESET. I introduced myself, explained what I was doing on campus, and the organizers graciously invited me to come in. I eagerly accepted the offer and took in part of the afternoon sessions. 

Of particular interest were the talks by James Beach, co-founder School for Start-Ups and a serial founder of successful businesses,  and Mr. De Neef f.  Each speaker seems to be prominent in his field and each had come quite a distance to take part in the program, Mr Beach from the U.S. and Mr. De Neef from Belgium.

The the two speakers seemed to agree on very little (said Mr. Beach, you don't need to be creative to be an entrepreneur, it's all about finding an opportunity and executing, while Mr. De Neef emphasized the importance of creativity as a linchpin in the innovation enterprise). What they did agree on, each in his own way, was on the unimportance -- bordering in irrelevancy -- of IP.

Let's start with Mr. Beach. His message was clear and succinct. Not only is creativity irrelevant ("Ï have never had a creative idea", I think he said), but copying is good, he stated and restated. Granted, he seemed to be referring to the copying of "ïdeas", but at no point did he mention IP. A self-styled salesman, he maintained that entrepreneurship is all about execution--anyone has it in him to be a salesman too. While I have to believe that Mr Beach would counsel against trespassing on the IP rights of others, the reason is wholly pragmatic--to do so would interfere with execution of the venture. Except for that, IP was nowhere to be found in his rousing 45-minute address.

 Mr. De Neef was described as an engineer by training; his words were about the future. In his view, the digitized future will have the following interrelated characteristics. First, copyright will cease to exist (at one point he also included patents, although he was less dogmatic on that). Secondly, ownership of intellectual property will be irrelevant; indeed, it seems that the very notion of intellectual property as property will be outmoded. Thirdly, all content will be free. He referred to his teenage child as a example of a consumer of digitized contents with the expectation that they will be available without cost. Fourthly, creation will all be about collaboration (presumably, in his view of the brave new collaborative world, copyright, ownership and even copyright itself will cease to exist).

This is not the first time that I have commented on the virtual absence of IP in presentations that are made by leading figures speaking before elite audiences of budding entrepreneurs (see here). I have looked assiduously for recurring examples in which IP is presented as a material component of an entrepreneur's plan. Not only have my searches come up short, but the opposite seems to be true. IP (save perhaps mention of the need for patent protection) is simply not part of the young entrepreneur's prospective skill set.

 There are a couple of different ways to look at this. The fact may be that, in Mr. De Neef's brave new world, IP and especially copyright, will largely disappear and there is not much that anyone dealing with copyright can to change it. Sooner or later, copyright as we know it, or indeed, copyright at all, will cease cease to exist. Or it may be the case that IP still has a central role to play in the discourse about entrepreneurship, but we have not yet found a way to package the narrative in a rhetorically effective manner. Or it maybe that the terms of the discourse are distorted; not every new business is a start-up, much less a hi-tech start (although social media seems a particularly ripe candidate for the "death of copyright")--"real start-ups and real entrepreneurship" will continue to rest on IP. Or it may be that IP is simply too narrow a term; the proper focus should be on innovation, whether or not it falls under the category of subject matters that enjoys IP protection.  Whatever view you choose, the fact remains--whether by design or omission -- that IP is simply not part of the entrepreneur's (and our potential clients of the future) set of considerations as he develops its business.

Students at an elite school such as IIT-B can be expected to create "real start-ups". Even for them, however, IP is treated as a matter of only marginal importance. Since none of us know what the future will bring for IP, I would have thought that the best we can do for prospective entrepreneurs is to enable them to be aware of the various possible outcomes and to reach an informed decision. As an IP community, we do not seem to have succeeded.

There is one more aspect to take into account. In an environment where the IP aspects of many kinds of content may decline or disappear, a premium will then be paid for control of distribution and the harnessing of network effects. In such a world, with copyright on the way out and patent law being forced to re-create itself to adjust to the collaborative model of invention, trade marks will only increase in importance. Goodwill and trust in products and service will become perhaps the most valuable form of IP asset, partially by default but partially also due to the changed circumstances.