Under-age celebrities and personality rights: the German Federal Constitutional Court speaks

Herr Ochsenknecht (the father)

Privacy and personality rights: should there be different rules when it comes to media reports about people that are under-age? Some cases appear very clear-cut, such as the case of intrusive media reports about J.K. Rowling's child (see also Katpost here) -- but what about media reports about teenagers that are well-known in their own right, such as young actors or under-age offspring of famous parents that are starting their own careers?

Such a case concerning a media report about the questionable nocturnal behaviour of two young German actors and sons of a well-known actor father, recently made it all the way to Germany 's highest court, the Federal Constitutional Court (Bundesverfassungsgericht, in short: BVerfG). The publisher of such a media report had filed a constitutional complaint based on an infringement of its right to freedom of expression and reporting under Article 5(1) German Constitution ("Grundgesetz") after Germany's courts decided in favour of the young celebrities when they tried to prevent (further) publication(s) by obtaining an injunction enforced by penalties against the publisher (case references: BVerfG, 1 BvR 2499/09, 1 BvR 2503/09 of 25 January 2012)

In a decision of 25 January 2012, which was recently published, the BVerfG decided that, in cases of media reports about persons under 18 years of age, the relevant German civil courts have been applying too strict an assumption in employing the rule that, when it comes to media reports, the personality rights of an under-age person should as a rule and in principle outweigh the right of freedom of expression of the reporting media outlet/publisher. The BVerfG found that this assumption insufficiently differentiated the facts of each similar case, it being necessary to balance properly the conflicting rights of freedom of expression/press on the one hand and the general personality right on the other in each case -- including each specific instance of media reports about celebrity teenagers and adolescents.

What actually happened? The sons of well-known German actor Uwe Ochsenknecht, Wilson Gonzalez and Jimi Blue, had been watched by interested bystanders while they were damaging bicycles during "Freinacht" or "Hexennacht" (in English: free night or witches' night, the night between 30 April and 1 May, an increasingly annoying German tradition where young people play little or no- so-little tricks, a bit like Halloween). During the same night the young Ochsenknechts were also seen tearing out plants from gardens and destroying a public phone booth. This rather juvenile behaviour was reported in a media report on the complainant's website together with the editorial comment that the police had only taken the personal details of the young Ochsenknechts but had not started any criminal investigations into their behaviour. In particular, a report on the complainant's website stated (this Kat's translation) "the two young actors and singers had been questioned by police after a wild riot in Munich's city centre".

In its decision the BVerfG stressed that (like all other cases) cases relating to under-age celebrities required a case-by-case balancing of the conflicting rights (freedom of expression v personality right). In this particular case the judges took the view that the lower courts had not adequately considered that the encroachment upon the young actors' personality rights was alleviated by the young actor's "public image" (Öffentlichkeitsimage) as "wild youth" (Junge Wilde) and the fact that their behaviour would be seen as a mere petty offence. The BVerfG found that the lower courts had misinterpreted the scope and the importance of the human right of freedom of expression (Article 5(1)) insofar as they had not assessed the specific circumstances affecting scope of the young actors' personality rights and thus had given the personality right precedence over freedom of expression when balancing both rights. Consequently, the BVerfG annulled the lower court's decisions and send the cases back to the Regional Court for a new decision.... and rightly so says Merpel.

The court's press release can be retrieved here (in German).

Katonomics 18: more on IP and economic growth

Just like cats, countries come in two
different styles: the developed and
the developing

In this week's Katonomist column, experienced IP-flavoured economist Dr Nicola Searle continues her quest to make economics intelligible to intellectual property folk. This week she returns to last week's theme -- IP, economics and growth, and develops it:

IP and Economic Growth – La Segunda Parte

Last week, I looked at the relationship between IP and growth. A sub-theme of the post was the concept that IP might affect growth different in developing versus developed nations. What can developing nations expect from increasing the strength of their IP regime?

First, a note on the vocabulary of economics of development. Terms like North-South divide  or First and Third world have fallen out of favour due to their perceived biases. The generally preferred terms are developed and developing countries. Again, these are somewhat controversial as ‘developing’ implies inferiority, but they are widely used [as an aside, the IPKat wonders why there's no term for countries that have finished developing and are now heading back the other way; after all, there seem to quite a few of them around. Words such as 'declining' and 'disintegrating' would seem quite handy but, again, they may have problems with perceived biases]. A second note is to clarify, in response to reader comments, what I mean by “IP regime strength.” The term represents an overall measurement of IP and bundles together enforcement, the quality of institutions, and the legal structure of IP policy. The use of this measurement allows for policy analysis of IP but potentially conflates issues.

History offers insight into the relationship between IP and development. As countries develop, their interest in IP increases. For example, the US was slow to recognise foreign-owned copyrights. The American film industry relocated to Hollywood to escape patent enforcement actions. The “father of the American Industrial Revolution,” Samuel Slater, started his career by memorising (export was banned) British machinery designs. Now considered developed, the U.S. is in the position of owning a lot of economically relevant IP and is a proponent of stronger IP regimes.

The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is a defining moment in the relationship between IP and economic development. It sets an international standard for IP regimes and is compulsory for members of the World Trade Organization (WTO). Membership is desirable as it stimulates economic growth and promotes free trade. Despite criticisms that the WTO favours developed countries, the perceived benefits of membership to developing countries outweigh the perceived costs. Are strengthened IP regimes a cost or a benefit?

The benefits of stronger, standardised IP regimes internationally are relatively straightforward for developed countries. As the owners of economically relevant IP, an increase in the international strength of IP could mean increased profits. For example, over 70% of the world music market is owned by UK and US based companies. The top 15 pharmaceutical companies (http://en.wikipedia.org/wiki/Pharmaceutical_industry#Industry_revenues) are also based in developed countries. New markets in developing countries with sufficiently strong IP protection are an attractive proposition. For the developing country, strengthened IP regimes should attract foreign investment, increase the diffusion of knowledge (known as technology transfer) and encourage innovation. However, the relationship is not straightforward. Most economic research finds that stronger IP regimes do attract foreign investment.

For example, Oxford economist Javorcik finds that foreign investors in technology intensive sectors are sensitive to IP regime strength. If the regime is weak, investment in all sectors favours distribution projects over production. American-based Maskus has an accessible summary of economic papers on this topic.

However, as Makus argues, investment eventually gives way to licensing as IP regimes strengthen. American economist McCalman notes that foreign revenues outweigh domestic revenues for Hollywood films. He finds that moderate IP regimes are associated with higher licensing but that the picture is less clear with stronger or weaker IP regimes. Overall, it appears that stronger IP regimes do increase activity by foreign firms in markets.

The same is true for technology transfer and the spread of innovation. Maksus’s summary catalogues research which supports a positive relationship between IP regime strength and technology transfer. National Bureau for Economic Research (NBER) economists Branstetter, Fisman and Foley find that American companies increase technology transfer when IP regimes strengthen. The promise of TRIPS to bring in new investment and technology from developed countries to developing countries appears to be holding up. However, that relationship still implies dependency. Countries are also interested in creating their own innovation. Some authors argue that innovation in developing countries is largely imitative – meaning that it imitates IP owned elsewhere. When IP regimes increase, this innovation is shut down as it infringes on the IPR of others. Would Hollywood be as successful if it had respected patents from the start?

Another issue to consider is global pricing. This international report argues that a factor exacerbating piracy is that copyrighted material is priced internationally. When you adjust for income, the price of legitimate copies in developed countries matches that of pirated copies in developing countries. For example, the U.S. price of $24 for a DVD of The Dark Knight, is equivalent to the $25 price of the pirated copy in Russia (this comparison uses the technique of purchasing power parity which adjusts prices to match purchasing power based on incomes. The Economist has a fun example of this called The Big Mac Index.) Similar arguments can be made in the pricing of pharmaceuticals.

Finally, there are considerations about access to medicines, traditional knowledge and bio-piracy that may not be captured by looking at economic development as a whole.

So, we do not have a clear picture on how IP affects development. A colleague recently reminded me of a Winston Churchill joke about how economists never agree: “If you put two economists in a room, you get two opinions, unless one of them is Lord Keynes, in which case you get three opinions.” IPKat readers will have their own opinions -- are stronger IP regimes good for development?

Monday miscellany

Despite decades of European harmonisation, the Belgian academic
community has never departed from its traditions, including
the ever-popular Professorial Retirement Procession (above)

Retirement launch. The IPKat's scholarly friend Frank Gotzen's retirement is to be excitingly launched by a commemorative conference, "Harmonisation of European IP Law: From European Rules to Belgian Law and Practice".  In case you didn't know,

"Frank Gotzen, the founding father of the Centre for Intellectual Property Rights, displayed a vivid interest in IP law and the European harmonisation movement throughout his academic life. At the beginning of his career in 1970 the European harmonisation movement was negligible. During the many years of his research and teaching, a whole body of harmonised rules came into being in the sector of IP rights in the EU. It is widely known that this field of law and the gradual emergence of a ‘true’ European IP system always was, and still is, at the heart of Frank Gotzen’s interests.  

Undoubtedly, his lectures and publications have contributed to the shaping of European IP law, and to the modification of Belgian IP law after the European model. Frank Gotzen’s superannuation constitutes an exquisite moment for giving an echo to the achievements – and failures – of this ambitious European project of harmonising IP law". 

This Kat remembers the first meeting of the International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP), back in the mists of the last century when there still lots of continental IP scholars who didn't speak a word of English: Frank did, so this Kat had the benefit of his wisdom -- which he very much appreciated. Merpel is quite amused at the title of the conference: "Harmonisation of European IP Law: From European Rules to Belgian Law and Practice". She wonders if, had this been a Dutch professor who was retiring, the title would have been "Harmonisation of European IP Law: From Belgian Law and Practice to European Rules" .... Anyway, further information concerning this event, which is "followed by an academic celebration", can be sought from Linda Mees or from the Leuven CIR (Centre for Intellectual Property Studies) website here.

Memory in need of a jog.  One of the Kat's oldest friends has emailed him to ask about the identity of a passing-off case.  He describes this case as "one in which it was held lawful for a trader to claim (truthfully) that he was formerly employed by or otherwise associated with another, even if his intent was to benefit himself by the association". He asks: "do you remember the name of the case and the judge?"  Of course I do -- in general terms, says the IPKat, but not quite at this moment.  Merpel suggests that the Kat asks his readers, who may remember the specifics and be kind enough to post them below.

Around the weblogs.  The 49th country in Kingsley Egbuonu's pan-African tour of official intellectual property office websites is Tanzania: you can read his findings on Afro-IP here. Remember the days when three strikes was the preferred formula for dealing with copyright-infringing file-sharers? Well, the discussion in the US now is all about six strikes, explains Eleonora Rosati on the 1709 Blog here.

Sympathy for Dahlia -- but the skort goes back to court

This is a tale of two garments, unregistered design rights, allegations of infringement and an unsuccessful application for summary judgment -- all told by Judge Birss QC in the Patents County Court, England and Wales, in Dahlia Fashion Co Ltd v Broadcast Session Ltd [2012] EWPCC 23 (16 May 2012). Dahlia claimed that Broadcast infringed its unregistered design rights when it sold copies of the Dahlia Skort Playsuit and the Dahlia Betty Dress (for those not familiar with the lingo, a ‘skort’ is a garment which looks like a skirt but is actually a pair of shorts).

In relation to the Dahlia Skort Playsuit, Broadcast challenged the subsistence and ownership of Dahlia's rights and alleged several differences between the Dahlia Skort Playsuit and the version it sold. Dahlia believed these points would fail at trial, but accepted that summary judgment in its favour could not be granted in respect of the Dahlia Skort Playsuit.

In relation to the Dahlia Betty Dress (left), Broadcast did not admit the subsistence nor ownership of the rights claimed by Dahlia. Judge Birss QC stated that Broadcast’s version was ‘plainly virtually identical to the Betty Dress’ (at [3]). In response to the allegation of flagrant infringement by Dahlia, Broadcast contended that they had no reason to believe that the dress was copied from or infringed any rights in the Betty Dress. Dahlia sought summary judgment of its claim in respect of the Betty Dress.

Judge Birss QC would have had ‘no difficulty giving summary judgment for Dahlia’ except for one point (at [9]): both the Betty Dress and the Dahlia Skort Playsuit were the result of a commission to the same freelance designer Katherine Graziano. In relation to the Dahlia Skort Playsuit, Broadcast challenged the subsistence and ownership of Dahlia’s rights by alleging that Ms Graziano did not in fact design the garment, but only made minor modifications to an existing design sourced from China. Dahlia denied this and argued that Broadcast simply had no defence in relation to the Betty Dress.

Although Judge Birss QC had ‘considerable sympathy’ with Dahlia, he declined to grant it summary judgment in relation to the Betty Dress because it would have been ‘wrong to do so’ (at [12] and [15]). His Honour stated that Broadcast’s defence in relation to the Betty Dress was weak (at [14]). On the material before him, he believed that it was much more likely that Dahlia than Broadcast would win at trial. However, he noted that if the argument about the Dahlia Skort Playsuit did succeed, which was possible but unlikely, it was also conceivable but unlikely that that result would have a knock on effect on the Betty Dress as it was designed by the same person working as a freelance designer for Dahlia in the same circumstances.

Not all was lost for Dahlia. Taking into account the weakness of Broadcast’s defence and the proportionality of costs in defending the claim (Broadcast had only sold £477 worth of its Betty dresses), Judge Birss QC ordered that Broadcast pay £10,000 into court as security for Dahlia’s costs (at [20]).

The IPKat, noting the judge's sympathies, his views as to the weakness of the defence and the large sum which the defendant has been asked to produce by way of security for costs, suspects that these proceedings may mark the end of this litigation.

Merpel is very excited about the judge said about this being a paper hearing (at [5]):

"It seemed to me the summary judgment application could be dealt with on paper. I directed that the parties should consider whether they accepted the application should be dealt with on paper once the evidence was complete. Written evidence was exchanged and the parties agreed to the application being determined that way. The defendant wanted to file written submissions and I directed that brief written submissions should be filed, limited to four pages each".

She has often heard people talking of an action folding; now she knows why ...

The big copyright debate – in Germany

Copyright and the protection of IP rights is a topic that is hotly debated in many countries.  With Die Piratenpartei (The German Pirate Party) increasingly gaining seats in more and more German state parliaments, the debate is becoming more heated in Germany too. 
One of Die Piratenpartei’s political aims is a reform of Germany’s patent laws (keywords: “fewer monopolies and open markets”) and copyright legislation (keywords: “no copy restrictions and free use”, “fair balance between rights owners and the public”].  All rather progressive and controversial stuff -- that is, rather appealing to the young(ish) and free spirits of the Internet Age but downright scary for some rights owners and creators.

The German magazine Focus now reports that these recent developments now prompted an open letter by more than 100 well-known German writers and other artists asking for better protection of intellectual property, the biggest concerted effort in this field so far.  They start their open letter by defending copyright protection with the following sentence (translated by this Kat with a lack of elegance):  

“As authors and artists, we follow the public attacks against copyright laws with concern and a lack of understanding.  Copyright laws are a historical achievement of civic freedoms against feudal dependency, they grant the material basis for individual intellectual creation”.

In a society based on the sharing of labour, artists have to trust publishers, galleries, producers or collecting societies with the marketing of their works, insofar as these look to and defend their interests.  The new realities of the internet and digitalisation do not justify the profane theft of intellectual property nor require the legalisation of such theft.  The open letter further demands a strengthening of copyright and IP laws and an adjustment of these laws according to the modern requirements of fast and mass access to such intellectual creations.

This Kat sometimes wonders whether these at first very opposite opinions are really that irreconcilable...  

When unity creates division: A Kat patent recap

The unitary patent's countdown clock
has the same face as Big Ben....coincidence?

The AmeriKat cannot say whether the hands on the unitary patent clock that are ticking away as she types are counting down to an expected implementation of the patent proposals that have preoccupied the patent community for the past year or to yet another legislative death when the proposals for the Utopian ideal of a unified European patent system fail to bring fruit. Nor does she know when the time on the clock will run out: Will it be on 30 May when the Competitiveness Council is scheduled to meet again to discuss the package? Will it be sometime in June when EU leaders called for a final agreement on the EU patent package? Or will it be after that, as suggested earlier this year by Baroness Wilcox?

President Van Rompuy's message to
the Competitiveness Council:
"Don't make me come back there...."

Indeed, even the President of the European Council, Herman Van Rompuy in a letter written three weeks ago to members of the European Council did not seem quite sure when the actual deadline for agreement was. He wrote:

"I really appeal to each of you to instruct your Ministers responsible for these files to show the necessary sense of compromise to help the Presidency achieve results on what are key elements for growth in Europe. I would like to say a particular word on the Unitary Patent. This important file has been discussed for many years and we are now very close to a final deal, albeit only at 25. This deal is needed now, because this is an issue of crucial importance for innovation and growth. I very much hope that the last outstanding issue will be sorted out at the May Competitiveness Council. If not, I will take it up at the June European Council."

But the questions of "if" and "when" are not new. If anything, they have become familiar friends during the unitary patent saga. With each passing day that the profession and industry know and are told nothing concrete about the status and future of the proposals in Brussels, these - the most important questions - are pushed to the sideline. Instead we trudge ahead with our ever maddening debates on the defects of the substantive provisions, feverish lobbying and letter writing by industry, and drafting Rules of Procedure for the yet-to-be (or never-to-be) Unified Patent Court.

As a welcome treat in our unitary patent proposal routine, a few weeks ago, after months of evidence from patent lawyers, judges, industry and Baroness Wilcox, the House of Commons Scrutiny Committee published their evidence on the unitary patent proposals (see IPKat post here). Although the Committee's report was mostly predictable given the lines of questioning and cross-examination taken by the MPs (see AmeriKat posts   here, here, here, here, here and here  on the hearings), there did contain one surprise – that on the controversial Articles 6 to 8 of the Proposed Regulation. Although the Committee strongly agreed, as a matter of patent law, with the majority who oppose the inclusion of Articles 6 to 8 in the Regulation, they nevertheless recognized the "inevitability to their inclusion" as a matter of EU law despite the opinions of Sir Robin Jacob and Professor Kraßer. This, they said,

"calls into question whether incorporating a unitary patent regime within the EU will ever be practicable."

What the academic Utopia looks like where
CJEU referrals are fast, quick and cheap

Readers will be familiar with the two camps of thought in respect of whether the inclusion of Articles 6 to 8 in the Proposed Regulation which involves the Court of Justice of the European Union (CJEU) on matters of the interpretation of what constitutes patent infringement, is necessary under EU law (see arguments here). Recently proponents of the inclusion of Articles 6 to 8 in the Proposed Regulation could find solace in an article published last month by competition professor Hanns Ulrich entitled "Harmonizing Patent Law: The Untameable Union Patent" who convincingly argued that the inclusion was necessary – albeit convincing from a non-practising and purely academic viewpoint.  ["Spend some time in a CJEU trade mark referral", says Merpel, "and watch how much easier it is to argue the contrary position!"]. In this and many proponent's arguments, it seems that purely academic technicalities seem to outweigh the practical implications for the patent industry who require fast and certain protection and enforcement of their patents.  [Merpel also wonders what Professor Kraßer, the Intellectual Property Judges Association and Professor Sir Robin Jacob would make of Professor Ulrich's footnote 148 where he calls them a "lobby initiative"?  Any comments from these, our distinguished Kat friends?]

Not endorsing Dr. Tilmann's views

Professor Ulrich is not alone, of course. He joins the only other big named proponent of the inclusion of Articles 6 to 8 - Unified Patent Court's Rules of Procedure committee member, Dr. Winfried Tilmann. Readers may recall that Dr. Tilmann, who is an adviser to the German Ministry of Justice and is Of Counsel at Hogan Lovells, submitted this letter (scroll down) to the House of Commons Scrutiny Committee arguing that Article 118 TFEU demands that Articles 6 to 8 are included in the Proposed Regulation and that in respect of trade mark law, the CJEU's practice is "impressively good". With comments like these, it came as little surprise that on 12 April, after it was reported by the IPKat in February that Dr. Tilmann's letter referred to his position at Hogan Lovells, the firm wrote to the Chair of the House of Commons Scrutiny Committee making it clear that his letter contained

"his own personal views. The views he expresses are not those of the Hogan Lovells intellectual property practice and are not endorsed by us. It is regrettable that the presentation of his opinion did not make this clear."

Duck Tape - the quick fix solution to all of life's problems,
but perhaps not for the unitary patent proposals

For the proponents of the inclusion of Articles 6 to 8 and to answer the concluding concerns of the Scrutiny Committee, the quick fix solution for those who wish to have uniform substantive patent law part of EU legal order should be to limit the scope of unitary patent system only to the unitary patent and not to the current European patent.  Those users who wish to use the EU unitary patent system will then be subject to references to the CJEU while the rest of the users who chose not to partake in the system sit back and watch how many references are made and how long it takes.  Of course under the current proposed system, the transitional measures which allow owners of European patents or applications to opt-out within seven years is considered to be too short a transitional period given that most patent infringement suits are brought at the end of the life of a patent. After seven years, the Unified Patent Court assumes exclusive jurisdiction over unitary and European patents which is why many commentators have proposed permanent opt-out provisions or opt-in provisions and/or that the Unified Patent Court only have exclusive jurisdiction over unitary patents.  These types of proposals were mooted by patent professionals, namely CIPA, during the House of Commons Scrutiny Committee hearings, and as the AmeriKat understands were recently proposed, together with the deletion of Articles 6 to 8 of the Regulation, by sections of German industry to the German Justice Department.

The AmeriKat does not think she is overstating this when she says, despite the industry's tireless efforts in raising these serious problems of the proposals with their respective national and European governmental ministers, that the profession and industry is worried that it may still nevertheless be bounced into a situation like the one they experienced last December. The AmeriKat fears that next week when the Competitiveness Council meets will she again be watching press conferences of European officials boasting that "everything has been agreed" as various gob-smacked professional patent organizations scramble to figure out who has and what has been agreed.  She hopes this is not the case, but one thing that has been consistent throughout this process is the lack of transparency and certainty as to exactly what is going on at the national and European level in respect of the patent proposals. ["If anything, the slogan for the European legislative process should be "Surprise!", says the AmeriKat]

The Unitary Fairy's wand - with one
flick all of the unitary patent's problems
are fixed and we we are finally
unified....

But before the Competitiveness Council meets, the AmeriKat wonders if the unitary patent fairy could grant her and the patent profession three wishes:

(1) Can we please finally see the unredacted version of the Opinion of the Legal Service (document here) on the compatibility of the draft agreement with the CJEU's Opinion 1/09? The AmeriKat notes that someone who shares her insistence on this filed a request for the document in December.  The request was rejected by the Council in January with the excuse that issue was too "complex" and "sensitive".  Then the same individual - whose identity the AmeriKat has deduced - requested a confirmatory application under Regulation 1049/2001 (see chain of correspondence curiously, or not, found on the Austrian Parliament's website here) No word if that request has been responded to...

(2)  Can we have some news of Italy and Spain's cases regarding the enhanced cooperation procedure?  ["If it is taking this long to get a judgment from the CJEU on these, surely basic, procedural European law questions, it doesn't bode well for any substantive patent referrals", says the AmeriKat.

(3)  Although publishing a beautiful and thorough report, can the UK's Scrutiny Committee make sure that after this they do not fail to exercise their powers to ensure that the voices of UK industry are not disregarded by UK negotiators in Brussels next week?  

And on that note, the AmeriKat lays her head down to sleep wishing that when she awakes the unitary patent fairy will have paid her and the patent profession a visit....

Letter from AmeriKat: Brought to you by the Letters 'A', 'W' and 'R' and the numbers 50 million and $100 million

The AmeriKat and her niece kitten
watching hours of the wonderful
Sesame Street

Over the past 18 months or so, the AmeriKat has delved back into the once familiar world of Sesame Street, hardback books with impossibly cuddly kittens in them and little jars of applesauce.  As she is shaping herself into the fashionable and fun aunt, the majority of her skills have been honed in teaching her kitten niece key life skills, such as 100 % cotton - good, polyester-blend - bad, silver - good, gold -better, platinum - even better, and trying to convince her that Elmo is just not on the same intellectual level as Grover (i.e. character over beauty).  The latter belief, however, cannot be budged as it is cute red baby-faced Elmo that grabs her and many young kittens attention over the more accident-prone, blue spindly Grover. But while watching about 84 episodes and clips of Sesame Street this last Christmas to convince the little one of her mistaken allegiance, the AmeriKat was reminded of how seamless and congruous Sesame Street's episode production is.  Centered over a theme, a number and a letter every clip effortlessly teaches you, with a little humor, the building blocks of knowledge and human interaction.  So on that theme, today's post is brought you by the following numbers and letters.....

You won't be finding any Cuban-made Havana Club rum
in the Supreme Court Justices' Conference Room

The letter 'R': The letter that stands for the AmeriKat's spirit of choice - rum - and subject of Monday's Supreme Court decision (not "decision decision") not to intervene in the on-going dispute over the rights of the HAVANA CLUB name in Empresa Cubana v Department of Treasury.  The AmeriKat has previously written on a separate but similar strand of the trade mark infringement dispute relating to the Puerto Rican and Cuban rum saga between Pernod Ricard and Bacardi (here and here) over the HAVANA CLUB mark.  Pernod Ricard who has an agreement with Cuba state-owned company, Cubaexport, is permitted to sell the Havana Club rum in every country under its US trade mark name - HAVANA CLUB- save for the U.S. where the Cuban trade embargo on goods produced in Cuba is still alive and kicking.  Barcardi has made and sold Puerto Rican made rum under the Havana Club name since 2006 in the U.S..  However, the subject of the current case is the US Treasury Department's Office of Foreign Assets Control's recent refusal to renew Cubaexport's trade mark citing section 211 of the WTO-disputed Appropriations Act which makes trade marks confiscated by the Cuban government, such as by Cubaexport, unenforceable.   The Court of Appeals for the District of Columbia (i.e. Washington) upheld the decision (see decision here).  The decision by the Supreme Court not to grant the writ of certiorari leaves their decision in tact.  Pernod stated that should the American embargo be lifted, it would start selling a new rum under a new mark - Havanista:

"In light of this decision, Pernod Ricard announces the registration of the trademark Havanista® with the USTPO. Produced and bottled in Cuba, Havanista® is a premium Cuban rum specifically aimed at the U.S market, which will be launched if the embargo is lifted. Havanista® will be a celebration of Cuban taste and culture in a genuine Cuban rum. It will benefit from the same high-level production processes and quality requirements as the Havana Club range."

 For more information see Pernod's Press Release on the decision here.  

The number 50 million:  The number of people in the US since 1997, that have taken Bristol-Myers Squibb's blood-thinning drug Plavix.   Plavix made $7.09 billion dollars in 2011.  Even with the expiry of Plavix's patents last Thursday their market share is not predicted to change, according to Barbara Ryan, an analyst with Deutsche Bank as reported by Bloomberg.  On the face of it, Plavix's patent expiry may have arguably paved the way for Eli Lilly & Co's and AstraZeneca's own blood-thinning drugs, Effient and Brilinta respectively, to gain more market share but the expiry of the patent does not mean that increasing the market share of their competitor drugs will be easy.  In the pharmaceutical industry, once you have carved out your monopoly with patent protection and your drug has proved safe and effective in a patent's care plan, it is difficult for subsequent and competitive drugs to overtake that established market share even when your patent protection expires.  Instead, Effient and Brilinta, as well as several new generic drugs, will have to concentrate on developing their new patient market. According to Seamus Fernandez, an analyst with Leerink Swan, Effient sales will peak in 2017 at $865 million and Brilinta may reach $1.77 billion, as compared to Plavix's 2011 sales of $7.09 billion.  So perhaps, our little limited monopoly incentive ideals in patent and IP law aren't as limited as they may first appear....For more information see this New York Times article here and see guest Kat Norman's post on the recent Canadian litigation involving Plavix here.

The view of Director Kappos from the AmeriKat's
computer this afternoon as she listed to almost
2.5 hours of testimony....exciting times...

The letter 'A':  The letter that starts the American Invents Act (AIA) (see previous posts here) which formed the subject of US Patent and Trade Mark Office (USPTO) Director David Kappos's testimony to the House Judiciary Committee last week (watch the full hearing here).   Director Kappos reported to the Committee regarding the status of the implementation of the AIA of which seven provisions have been implemented and where the USPTO has published rules for a further nine provisions. Joining Director Kappos was the Senior Vice President and General Counsel of Eli Lilly, Robert Armitage (read his written testimony here), General Electric's Chief IP Counsel, Car"l Horton (read his written testimony here), President and Chief IP Counsel of 3M Innovative Properties, Kevin Rhodes (read his written testimony here), Richard Brandon, Associate General Counsel of the University of Michigan on behalf of the Association of American Universities (written testimony here) and Eliot Williams of Baker Botts LLP on behalf of several financial and banking associations (written testimony here).

As as well as outlining the continued work on the Trial Rules and various international arrangements such as the Patent Prosecution Highway, Director Kappos stated that with the adoption fo the AIA:

"the U.S. is now able to implement an optimal 21st century harmonized patent system – one that international negotiations have anticipated for the last 25 years. Congress has enabled the USPTO to not only act, but to lead in realizing a vision of an IP world in which national and regional patent systems are coordinated to create an optimal environment for technological innovation and diffusion. Passage of the AIA has provided an opportunity to restart long-stalled discussions with our foreign counterparts toward substantive harmonization that will help U.S. businesses succeed in the global business environment.  

 The USPTO is working to capture this opportunity, reaching out to our stakeholders and our counterparts in patent offices throughout the world, to work toward substantive patent law harmonization. During the first week of April, I visited several of our foreign counterparts to discuss this unrivalled opportunity for substantive patent law harmonization. During these conversations I stressed that a key issue to realizing international harmonization is European adoption of a modern grace period. The grace period has been adopted in many patent systems throughout the world and is recognized as a global best practice. We look forward to continuing these discussions."

[Merpel imagines that Baroness Wilcox will be taking note of such beautiful political soundbytes on the merits of "international patent harmonization" in case she is ever called back before the House of Common's Scrutiny Committee to give evidence on the European unitary patent proposals.]

Director Kappos also stated that the recent spate of mobile phone and technology patent disputes was not a by-product of a flawed patent system.

Congressman Watt
(D-North Carolina)

Congressman Watt:  "Based on recent press accounts, technology companies seem to be engaged in a so-called patent arms race. Tech companies are spending a lot of money to buy patent portfolios and suing to block technologies in every conceivable venue...Over the course of this Congress we frequently heard representatives of the tech community argue that copyright infringement suits brought against tech companies by content owners stifle innovation. By that logic the rash of patent cases brought against tech companies by tech companies might stifle innovation. Can you give us your take on this and does litigation to protect intellectual property rights stifle innovation? Is there any reason to think that copyright litigation against tech companies stifles technological innovation any more or less than patent litigation?   

Director Kappos:  No, I don't think there is any reason to believe that any copyright or patent lawsuits of the kind that we are seeing in the so-called smart phone wars are a sign of stifling technological innovation. In fact much to the contrary... We've seen this movie many times before. We saw it when Boulton and Watt got into their fights in the 18th Century in England over the patents that started the Industrial Revolution...We saw it when the sewing machine was invented and then we saw it when the telegraph was invented...It starts with fundamental technology innovation that is transformative in nature.  Then others come along and want to do incremental innovation on top of it. The original innovators, let's say the Apples of the world, as an example...have intellectual property positions resulting from massive investments, they seek to enforce those investments to level the playing field in some way and you have a dust-up as we are seeing right now. I don't believe its a sign that there is anything wrong with the innovation environment in the US, in fact I think it is a by-product of a very healthy overall innovation environment. These things happen, they sort themselves out over time -its a strength of our system that we have strong and balanced intellectual property rights that lets folks play their hands out in the way they are...I don't think its in any way a sign that there is some fundamental problem with patents across the board. It would be different if we were talking about non-innovators involved in these patent wars, but we are talking about some of the most innovative companies on the planet...I see it as a market reaction to a market development...in a tremendously competitive market."

Is Director Kappos correct or is it reasonable to point some blame on some arguably improperly granted patents?

The label she wishes she could
find in a new raincoat....dreams...

The number $100 million:  The amount in damages that Manhattan federal court awarded British heritage label Burberry last week in a trade mark infringement lawsuit brought by the label against several Chiense websites using the Burberry trade mark and selling counterfeit Burberry goods.  The court also awarded Burberry the domains from where the goods were being sold - yesburberryision.com and buyburberry.com.  More importantly, it is reported that the judge also decided to afford Burberry the election to "hold third-party hosts; payment processors; search engines, such as Google, and social media sites such as Facebook and Twitter, accountable for associating with the infringing sites"  such third-party services not being permitted to provide services or links to the sites.  (The AmeriKat has not been able to hunt down a copy of the decision to ascertain exactly what the judge said, so if any kind readers find it please let her know.)   The AmeriKat doubts that proving actionable "association" between third-party services and such links will be easy and may just prove to be rhetoric from the judge, District Judge Thomas Griesa.  The Burberry decision is the third in a trio of robust trade mark counterfeit decisions this month in the U.S. which includes Judge Denise Cote's $100 million award to Hermes against similar counterfeit outfits trading on sites such as HermesBagsOutlet.org and HermesBirkin-Bags.org and Judge Ronald Guzman of the Northern District of Illinois's award of $686 million to Uggs's parent company Deckers Outdoor Corp in their lawsuit against 3,000 China-based websites.  Under the US Immigration and Customs Enforcement's Homeland Security Investigations and the National Intellectual Property Rights Coordination Center's initiative - Operation In Our Sites - the US Department of Justice can recover defendants' monies collected by third-party sites, i.e., through payment processors, which makes it easier for rightsowners suing in the US to enforce their judgments against foreign defendants.  

World Industries's skate shoe subject to Adidas's
complaint

The letter 'W':  The letter which features on the side of the upper sole of World Industries's skater shoe (and which also stands for "World") which is the subject of a trade mark complaint brought by Adidas against the California based manufacturer.  Adidas, whose famous three-stripe logo, filed its claim in Oregon federal court last week alleging that World has made unauthorized use of its three-stripes trade mark.  Adidas's North American headquarters are located in Portland, Oregon.  Adidas also sued Big 5 Sporting Goods which featured the offending shoe in a full-page ad.  In the ad, an Adidas "Tip Off 2" basketball shoe with three stripes was positioned next to World's "Major" skate shoe.  According to Adidas's complaint, the retailer also positioned the shoes next to each other in their stores.  To Merpel and the AmeriKat, both can see, not three stripes, but the tip of King Triton's trident.  According to World Industries' parent's president, Scott Chantos "we cap the top of our W so it looks like a pitchfork.  And one of our logos is a devil holding a pitchfork."  "Ahh...so not quite Greek mythology reference we were hoping for", says the AmeriKat.  Do readers see or associate Adidas's three stripes with the shoe?  

Shall We Thuuz Today? Only the Trade Mark Knows For Sure

One of my podcast staples is the hour-long lecture as part of the DFJ Entrepreneurial Thought Leaders Seminar here, under the auspices of Stanford University and the Stanford Technology Ventures Program here. Each week (well, weekly as long as classes are in session at Stanford) the Seminar brings a speaker of note with some connection to innovation and entrepreneurship. In addition to trying to get an ongoing feel for the culture and narrative from "entrepreneurship ground zero", this Kat listens to the broadcasts with a particularly idiosyncratic content fetish -- he pounces on every mention of IP. Despite the techie focus of most of the lectures (the Seminar is hosted by the Stanford Engineering Department), and the emphasis on how to turn monetize innovation, this Kat is continually surprised by the paucity of mention of IP topics. Rare indeed is a discussion on trade marks.

I was intrigued, therefore, by the brief Q&A exchange that took place between a lecturer, Warren Packard, a successful VC type in Silicon Valley, and a student in connection with Mr. Packard's 8 February address to the seminar. Mr Packard is currently the CEO of a start-up company named Thuuz, here. The company is described on their website as "revolutionizing sports entertainment" as follows:

"Thuuz alerts you to the most exciting sporting events as they're happening, so you never miss the action. We'll even tell you where to tune into these games, whether you're in front of your TV, computer, mobile phone or tablet. How does it work? Analyzing hundreds of factors, Thuuz rates the excitement of all live games on a scale of 0-100 so you can see which games are trending as most exciting. You can also find exciting games by seeing what your friends are watching. We'll even alert you when games reach a certain excitement level or when friends share games."

I suspect that the Thuuz algorithm worked overtime for a few minutes last week at the conclusion of the Manchester City v Queens Park Rangers English Premier League match. Indeed, it would be interesting to compare my sense of "exciting" with the scaled value generated by the Thuuz algorithm. In any event, in listening to Mr Packard's lecture, I was struck that IP was not mentioned, his two main themes being that: (i) the world of entrepreneurship is better characterized by the uncertainty of statistics than the certainty of calculus; and (ii) at least at the outset, staffing is the most important variable.

But what about the company's underlying technology, I wondered. Not unlike most of the lectures in this series, there was far less mention of the technology per se and no mention of how the company seeks to protect it. The closest the lecture got to addressing IP was a brief mention of the company's interest in reaching agreement to obtain more non-U.S. sports contents, e.g., the Indian cricket league.

"Well, there is one last IP chance", this Kat said to himself, as the Q&A begun. "Certainly there must be at least one member of the audience who is curious how the company views and protects its IP." I was right, but in an totally unpredictable way. The first question was straight out: how did the company choose its name (Thuuz)? Nothing about its algorithm or related technology, or about the challenges of copyright and broadcasting right clearance, but rather the simple question of how the company's name was chosen. The response by Mr. Packer was, as I recall, short and to the effect that the word, with a double "u", was available and that the mark suggests the word "enthusiasm.". Whether he meant the domain name or the trade mark is not clear; I assume the former, although I note that the company has also registered the mark THUUZ. Answer given and with no follow-up to it, the Q&A went on to consider other issues, none of which was connected with IP.

All of this reminded me once again that, more often than not, IP protection is a secondary concern in the world of entrepreneurs, whereby it is taken for granted that adequate IP protection will somehow be found. That said, the name THUUZ was seen sufficiently creative that it merited a question from the audience and that the selection of the mark was "successful". This further points to the conclusion that the decision to adopt the THUUZ trade mark was a reasoned one. As such, this albeit brief focus on trade marks in connection with the broadcast is interesting. As we discussed previously in our blogpost of 25 March here), surveys show that businesses value value trade marks more than they do all other IP rights. This brief exchange regarding the THUUZ mark suggests that there may be more of a role in providing trade mark advice to entrepreneurial ventures than we sometimes think.

Friday fantasies

The best way to preserve
old blogposts? Turn
them into paper!

Old blog posts: still of value.  The current (May/June) Internet Newsletter for Lawyers carries a neat piece by co-editor Nick Holmes entitled "Keeping up with IP law", which lists some twenty IP-flavoured intellectual property law blogs. After gazing intently for slightly too long at the bit which featured the word "IPKat", this Kat took a peep at some of the other sites listed. These include Abbe Brown's IPEdinburgh which, though silent since December 2010, contains a good deal of fascinating archived material reaching back to May 2005. Also silent, though only since December 2011, is law firm Bonallack & Bishop's Intellectual Property Lawyer blog.  Over the years a number of other IP blogs have ceased production, of which two of the most notable and high-profile examples are those of Lawrence Lessig (hibernating since August 2009) and Bill Patry (occasional lapses into consciousness since August 2010 but no stirrings since March 2010; contains fine memorials of Barbara Ringer and Sir Hugh Laddie). All of this has set the Kat wondering: can any reader tell him what archival measures, if any, have been made for preserving old legal blogposts (i) in the UK and in other jurisdictions and (ii) by public sector and privately funded initiatives?

IP education for non-lawyers in Ireland: can you help? "Hello Kats!", exclaims our friend Laura Prado. She continues [after the usual paean of praise, deleted on account of the Kats' inherent modesty], "Since I have no formal law training (I graduated in journalism and have half of a graduate diploma in IP - but this is a long story), I'm looking for recommendations of places where a non-law degree holder could go to continue her studies in intellectual property, in Ireland.   Perhaps taking a full law degree would be more useful, regardless or my specific interest? My searches online didn't return good results, so I'm going to the best source I know. I don't intend to become a lawyer, but I'm looking to grow as a consultant for companies with IP-related issues. Any help will be very appreciated".  Are there any courses? Or, if not, is there enough demand to make it worth running one? Comments, please!

... to this?

From this ...

IPO on the move. We all know that public sector bodies in Europe are a bit short of money these days. Can it be for this reason that the UK's illustrious Intellectual Property Office is moving its London premises? As of 21 May 2012 [that's next Monday, for the uninitiated], the IPO is packing its bags and moving to first floor premises at 4 Abbey Orchard Street, London SW1P 2HT. for those readers who still use telephones as their preferred means of making contact with civil servants, news is that there will be no change to the telephone numbers for the office, so you can still listen to the IPO's much-loved alphanumerical voicemail recording: "press 'P' for patents, 'T' for trade marks, 'D' for designs, 'W' for Wallace and Gromit ..."

Like confectionery, legislative
amendments are often more
palatable when they're
all mixed up together

Legislative assortment. The Crime and Courts Bill was laid before the United Kingdom Parliament earlier this week. It's a mixed bag of provisions, which include the repeal of bits of the Copyright Designs and Patents Act 1988 so that the Patents County Court can be reconstituted as a free-standing court within the Chancery Division. The changes will not affect the service provided by the court at present, which means that its procedures, special cost rules and limits, financial limits and (not-yet-operative) small claims track will remain unscathed. Don't read this if you're coming up for retirement, since the changes won't take effect till 2013/14 [katpat to Graham Titley for the link].

Little-known fact:
Scotland developed
the world's first bellows-
powered portable
computer ...

Jobs for the lads -- and lasses.  There's a IP lectureship which is being advertised for the School of Law in Edinburgh, somewhere near the frozen wastes of Northern Britain.  If you fancy taking a shot at it, or even if you're just curious to know all about the terms and conditions under which Scottish academics operate [there are not many institutions in the world that offer lecturers a quart of whisky and half a ton of coal a month on top of their ordinary pay and increments, says Merpel], just click here.  And if you'd like to try Edinburgh out for a couple of days and see if it agrees with you, there's a jolly SCRIPT conference coming up between 6 and 8 June.  The link is here but be warned, they sometimes turn the central heating off in June ...


They can't do worse than Hargreaves ...The IPKat's friend Professor Ruth Soetendorp has written to tell him that, as from this morning, students at UK universities and colleges have been given the opportunity to express their views as to what they think about intellectual property. She explains:

iPan and docking unit

"A survey, initiated and steered by IPAN (Intellectual Property Awareness Network), funded by the IPO, and designed and administered by the National Union of Students Services Research Department, has gone out to students in all faculties at all levels. Questions are designed to elicit students' current attitudes to IP, their experience (if any) of IP learning and teaching, and their expectation of the role IP will play in their future careers. Through careful dissemination the research is expected to benefit students and their union, higher education institutions, professional bodies and governmental policy makers. We look forward to sharing the findings in due course". 

Will over-exposure set in? A postscript to the "Mein Kampf" copyright saga

As an aside, Charlie Chaplin's
movie The Great Dictator was
banned in several countries

Our readers may recall the copyright dispute over Adolf Hitler's infamous Mein Kampf ("My struggle") between a British publisher who had planned to publish selected excerpts of Mein Kampf in Germany and the Bavarian state government which is the copyright holder and who pulled all legal stops to prevent the publication (see earlier IPKat posts here, here and here).

By way of background: contrary to popular belief (in Germany), Mein Kampf is not banned in Germany but can be freely re-published when the copyright held by the Bavarian State government (more precisely the Finance Ministry) is set to expire in 2015 - 70 years after Hitler's death. The Bavarian State government took over the rights of the main Nazi party publishing house Eher-Verlag after the end of World War II as part of the Allies' de-Nazification programme.

The Regional Court of Munich I (LG München I) in March 2012 confirmed its preliminary injunction of 25 January 2012 and stopped the publication of this annotated version (see Monika Bruss's excellent summary of this decision on the 1709 Blog here. Subsequently, in what appears to be a never ending story, Bavaria's Finance Minister Markus Söder in April then announced that the Munich-based Münchener Institut für Zeitgeschichte (Institute of Contemporary History, "IfZ") would soon publish an annotated version of the book as well as an edition for use in (Bavarian) schools.  This was reported before (see the IPKat here) but Mr Söder's approval of this edition is newsworthy.

Not this is not enough, it appears.  Now the magazine Der Spiegel reports that the German Bundeszentrale für politische Bildung (BPD), a governmental political education organisation, plans to prepare a special annotated edition of Mein Kampf to be used in German schools.  The BPD's director, Thomas Krüger, is cited as saying that today's youth would most likely stop reading the book after a few pages and would wonder "what kind of weirdo" the author was (presumably if the book was written today, Merpel feels obliged to add). 

Some German commentators argue that all this is going too far and that the book is receiving far too much publicity, with potentially negative consequences bearing in mind its underlying ideology.  Others argue that whoever wanted to read the book will have found a way to do so by now.

While this Kat one the hand thinks it may not be a bad a idea to demystify the book, she is still very much against having its content spread. Having said that, this Kat also noticed that, while she got excited about Mr Söder's announcement in April when she first read about it ("hey, another development!"), she very soon forgot about it completely and never finished her initial IPKat posting … maybe all this publicity has another effect on potential readers: overexposure, leading to consequent fatigue.