For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Wednesday, 30 June 2004

IT WORKS LIKE A DREAM


Ananova reports that a Japanese toymaker claims to have invented a gadget that can help people control their dreams. Tokyo-based Takara Co says its Dream Workshop can be programmed to help sleepers choose who or what to dream about. In a study on a group of men and women aged 20 to 40, it had a success rate of 22% in inducing dreams in which one of the prompt words appeared.

This is how it works: while preparing for bed, the user mounts a photograph on the device of who should appear in the dream, selects music appropriate to the mood and records word prompts, such as a name. Placed near the bedside, the Dream Workshop emits a special white light, relaxing music and a fragrance to help the person nod off. Later, it plays back the recorded word prompts, timed to coincide with the part of the sleep cycle when dreams most often occur. It even helps coax the sleeper gently out of sleep with more light and music so the dreams are not forgotten. Takara spokeswoman Mayuko Hasumi says the Dream Workshop will go on sale in Japan in August for about £110.

The IPKat wonders whether the Dream Workshop has been the subject of a patent application. If so, how would infringement damages be assessed in respect of wrongfully induced dreams?

More induced dreams here
Forgotten dreams here, here and here
Stolen dreams here and here; unwanted dreams here and here
Dream patents here, here and here

Tuesday, 29 June 2004

RECENT PUBLICATION


The June/July issue of Legalease's Advertising, Marketing & Branding Law Journal contains some good contributions. Hugh Latimer (Wiley, Rein & Fielding) explains how class actions against false advertising in the US pose a threat to advertising as we know it, while Giles Crown and Pauline Dore (Lewis Silkin) add some thoughts on the latest changes to design protection law in the UK and Europe.

For more information concerning the Advertising, Marketing & Branding Law Journal click here.

IPKAT TRANSLATION WATCH (AGAIN)


The IPKat isn't usually a gambling cat, but today he proposes to make an exception. He proudly announces the opening of the "Translation Watch Sweepstake". Submit your guess as to the date on which the ECJ will make an English translation of Anheuser-Busch to theipkat@yahoo.co.uk. The person whose guess is closest to the actual date will receive a lavish yet tasteful gift from the IPKat. (There's a special bonus prize for the person who correctly guesses the date on which the Maltese translation will appear).

IPKAT TRANSLATION WATCH CONTINUED


French, Finnish and Spanish have been added in the last 5 mins - this is getting exciting:-)

IPKAT TRANSLATION WATCH: ANYONE OUT THERE ITALIAN AND KEEN ON BEER?

Today Advocate General Tizzano delivered in opinion in Case C-245/02 Anheuser-Busch. Sadly, the decision is only available in Italian, German, Portuguese and Swedish. According the the ECJ Diary, the following issues were raised in the opinion:

Interpretation of Community law concerning trade marks - Whether the TRIPs Agreement applies to an alleged infringement commenced before the entry into force of the Agreement and continuing after that date - Interpretation of Article 16 of the TRIPs Agreement - Collision of a trade mark and a trade name - Interpretation of the reference to existing prior rights - Whether protection of the trade name under Article 8 of the Paris Convention included and if so under what conditions - "Budweiser" and "Bud"

ECJ AFFIRMS LIBERTEL PRINCIPLES IN HEIDELBERGER COLOUR COMBINATION CASE


On Friday 25 June this blog mentioned Case C-49/02 Heidelberger Bauchemie, the latest European Court of Justice ruling on the registration of colours as trade marks. Unlike the earlier ruling in Case C-104/01 Libertel, which dealt with the registrability of a single colour undelineated by shape, Heidelberger Bauchemie concerned a two-colour combination which was equally undelineated. The ECJ affirmed its earlier ruling and stated, in short, that colours were capable of being registered as trade marks either on their own or in combination with each other so long as (i) they constitute a sign and (ii) there is some systematic arrangement for using them in a uniform way. If this were not the case, registration of Heidelberger's undelineated blue-and-yellow livery as a trade mark could give protection against the use of both blue and yellow by themselves.

The active part of the ECJ's ruling reads as follows:

"Colours or combinations of colours which are the subject of an application for registration as a trade mark, claimed in the abstract, without contours, and in shades which are named in words by reference to a colour sample and specified according to an internationally recognised colour classification system may constitute a trade mark for the purposes of Article 2 of Council Directive 89/104 where:
―it has been established that, in the context in which they are used, those colours or combinations of colours in fact represent a sign and
―the application for registration includes a systematic arrangement associating the colours concerned in a predetermined and uniform way.
Even if a combination of colours satisfies the requirements for constituting a trade mark for the purposes of Article 2 of the Directive, it is still necessary for the competent authority for registering trade marks to decide whether the combination claimed fulfils the other requirements laid down, particularly in Article 3 of the Directive, for registration as a trade mark in relation to the goods or services of the undertaking which has applied for its registration. Such an examination must take account of all the relevant circumstances of the case, including any use which has been made of the sign in respect of which trade mark registration is sought. That examination must also take account of the public interest in not unduly restricting the availability of colours for other traders who market goods or services of the same type as those in respect of which registration is sought".
The IPKat thinks the court has got it right. He notes that the applicant for registration sought to support his case by citing Article 15(1) of TRIPs, which specifically mentions colour combinations as falling within the scope of a potentially registrable sign. The ECJ did not address this issue in detail, largely because it did not need to.

Blue and yellow here, here , here and here
Not to be confused with yellow and blue here, here and here

Monday, 28 June 2004

IPKAT TRIPS THE LIGHT FANTASTIC


While Jeremy was living it up in Warsaw, the other half of the IPKat (Ilanah) attended the “TRIPs – Ten Years Later” conference in Brussels arranged by the European Commission in conjunction with Queen Mary Intellectual Property Research Institute. As the title suggests, the aim was to mark the tenth anniversary of the TRIPs agreement, which is part of the WTO agreement that was completed in Marakesh in 1994. The organisers claim that TRIPs is “the basis for a truly globalised intellectual property regime”. However, those attending the conference could be forgiven for thinking otherwise. Much of the debate centred around the conflicting demands made by developing and developed countries. There were a number of major flashpoints:

Patent rights in drugs – those representing the interests of developing countries argued for a more lenient compulsory licensing regime and for more exceptions to be made to allow major health problems to be combated. Those representing developed countries countered that such exceptions were already in place but were not being adequately utilised by developing countries. In any event, many health problems can be treated with non-patented drugs. The real problem is lack of funds to buy those drugs.
Enforcement issues – developed countries called for developing countries to make more of an effort in enforcing IP rights, as they are obliged to do under TRIPs. The developing countries recognised that they have obligations, but highlighted the difficulty of enforcing those rights and the resources required for effective enforcement. They also called for greater technical assistance to back up their efforts.
Biodiversity issues – the developing countries expressed their fears about the patenting of genetic resources, particularly that registries in developed countries would grant rights in the genetic resources of developing countries, limiting their availability to those in developing countries and pushing up the prices of seeds which were previously available for next to nothing.

In an attempt to address these problems, the TRIPs agreement was said to be sufficiently flexible to take into account the needs of developing countries, though the two sides took different approaches to how this flexibility can be used.

For much of the time, the IPKat wasn’t entirely sure he’d come to the right place. He could have been forgiven for thinking that he’d stumbled into an international relations conference. What was at issue wasn’t the nitty-gritty of IP rights and obligations under the TRIPs agreement as much as how much each side was prepared to give up to recognise the other side’s interests. While certain important issues were at stake, notably public health, it’s doubtful whether an IP conference is the best place to solve them. At the end of the day, the real issue is whether developed countries are prepared to give special dispensations to developing countries to take into consideration their special problems. This has to be decided at a more fundamental level before it can be applied to the details of an IP treaty. Also, ever-present in the background was the fact that TRIPs is part of a larger trading agreement, and that the compromises that have been reached involve more than just IP.

What was also noticeable was that comparatively little attention was paid to developed countries’ obligations under TRIPs, though there was some discussion about whether the balance between IP rights and the public domain should be altered within the copyright and research and development arenas.

Learn about TRIPs here
What a difference a decade makes – click here, here, here, here and here

LATEST REPORTED EUROPEAN TRADE MARK CASES


The July-August 2004 issue of the Sweet & Maxwell series The European Trade Mark Reports has now been published. Packed with 190 pages worth of recent trade mark judgments from European national and EU sources, it features two decisions that are available in English for the first time:
* Kellogg's/Kelly's (Bundesgerichtshof, Germany): a consequence of unification of Germany, when suddenly the West German KELLOGG'S and East German KELLY'S trade marks found themselves together on the same register.
* Lego System A/S v Mega Bloks Inc (Swiss Federal Court, Lausanne): whether the LEGO three-dimensional block shapes are (i) devoid of distinctive character or (ii) functional.
This issue also contains the controversial appellate judgment of Lord Justice Jacob in Reed v Reed, in which doubt is cast upon some cherished assumptions relating to the assessment of damages for infringement on a "willing licensor/willing licensee" basis.

If you know of any cases that you think should be reported in the ETMR, please email the IPKat and let him know.

EUROPEAN UNION ACCEDES TO MADRID


According to a MARQUES newsflash, on 21 June the European Union submitted to WIPO its instrument of accession to the Madrid Protocol on the international registration of trade marks. The accession will establish a link between the Madrid Protocol and the Community trade mark. This link will enable businesses to benefit from the advantages of the Community trade mark through the Madrid Protocol system and vice-versa.

By filing an International Registration an applicant can designate both national trade marks and the Community trade mark. This facility will simplify the process of obtaining international trade mark protection covering the EU along with other Madrid Protocol countries. If a Community trade mark application made through the Madrid Protocol fails, it is still possible to convert back to national designations under the same Protocol. The accession will take effect as of 1 October 2004.

The IPKat welcomes this move, regretting only the very long time that has elapsed between the commencement of the CTM and Madrid Protocol systems (both of which came into operation in 1996) and the EU's accession to the Protocol.

WIPO's Madrid website here
Real Madrid here; fake Madrid here

Sunday, 27 June 2004

PRINCESS CAROLINE WINS ECHR PRIVACY CASE

Friday’s Daily Telegraph reports that Princess Caroline of Monaco has won her action against Germany before the European Court of Human Rights. She challenged the German Constitutional Court’s decision that those in the public eye must put up with photographs appearing that show them in public places, even while they were engaged in everyday activities, rather than public duties. The Princess, relying on her Article 8 rights under the European Convention of Human Rights, went to the Strasbourg court, arguing that the law in Germany should be more zealous in guarding privacy, even if the subject of the intrusion is a celebrity.

The European Court agreed. It recognised that even those who are in the public eye have a right to stop photographs being published if the pictures made no contribution to a debate of general public interest. Said the court:

"The court considers that the public does not have a legitimate interest in knowing where [Princess Caroline] is and how she behaves generally in her private life - even if she appears in places that cannot always be described as secluded and despite the fact that she is well known to the public.”

and

"Even if such a public interest exists, as does a commercial interest of the magazines in publishing these photos . . . those interests must, in the court's view, yield to the applicant's right to the effective protection of her private life."

The IPKat welcomes this sensible decision. The court has blocked needless intrusion into the everyday life of the famous while at the same time leaving the door open to enabling the press to comment on their activities when it is truly in the public interest to do so.

More on Princess Caroline here and here
More on Monaco here and here

Friday, 25 June 2004

ECJ COLOUR COMBINATION CASE

The ECJ decided the Heidelberger case on the registrability of combinations of colours as trade marks on Thursday. More to follow from the IPKat soon. In the meantime, here's a link to the case.

OPEN SOURCE FOR IRAQ?

The BBC reports that certain Iraqi computer experts that make up the Iraqi Linux Users’ Group are calling for Linux to be used as the basis of computer systems during the rebuilding of Iraq. From their point of view, the advantages of using an open-source system are two-fold: (i) it’s cheaper, which is particularly important considering the large amount of work that has to be done to bring Iraq’s basic infrastructure up to scratch and (ii) it could leave the path clear for the development of indigenous Iraqi technology – as Ashraf Hasson of the user group said, "That might help establish a solid base for Iraqi technology, and help not constrain the country with proprietary software and prevent monopolisation over Iraq by such major companies." It won’t all be plain sailing though – most of the software currently used in Iraq consists of illegal copies of proprietary software such as Microsoft’s programs.

The IPKat thinks that this is an interesting possibility, though he hopes that whatever is chosen will be the software that is best suited for the job and that it will be compatible with that in use in other countries.

More on open source in Iraq here, here and here

STUDENTS' RESEARCH: WORTH EXPLOITING?


Today Jeremy gave his paper at the conference, "Intellectual Property in a Changing Society" (see previous blog). When he spoke about university IP policy, he mentioned that it wasn't just academic employees such as professors, lecturers and research fellows who generate potentially valuable and commercially exploitable IP: students also generate work that can be commercially exploited, though their legal positition is often unclear and their work is sometimes abused by supervising staff and universities alike. This comment triggered off a heated discussion of the situation in Poland, where students have apparently had quite a raw deal. The IPKat would like to hear from any visitors to this blog if they know of any real live cases of students' research being misappropriated by their teachers or by the university at which they are registered. Please post your comments below.

Wednesday, 23 June 2004

GREETINGS FROM WARSAW


One half of the IPKat (Jeremy) is in Warsaw, Poland, right now, where he is participating in a conference, "Intellectual Property in a Changing Society". This event is organised by TAIEX (the Technical Assistance Information Exchange Office), a branch of the European Commission's Directorate General for Enlargement, in conjunction with WIPO and the Polish Patent Office. Jeremy is speaking on Friday about the protection and exploitation of inventions and other subjects of IP protection that are created in the milieu of universities. If you'd like to see his paper, email him and he'll send you a copy on his return. The paper is very much work in progress (he had only a fortnight's notice of his participation in the conference) and it may get developed into something more substantial in the fullness of time. The conference, incidentally, is has some 250 Polish participants, drawn from government, industry, academe and private practice.

Polish inventors here , here and here
Polish inventors who don't come from Poland here and here

AND GALAXIA MAKES TWO ...


While the IPKat was bringing you yesterday's Court of First Instance decision in Picaro/Picasso, the CFI was craftily slipping through another decision: Case T-66/03 Koffiebranderij en Theehandel 'Drie Mollen sinds 1818' BV v OHIM. The applicant sought to register a figurative mark containing the word GALAXIA for coffee; the opponent resisted, since it held the earlier GALA word mark in Greece, the Benelux and elsewhere, also for coffee. The CFI agreed with the Opposition Division and the OHIM Board of Appeal that the two marks were dissimilar. And so indeed they were: you can compare them here.

Tuesday, 22 June 2004

IPKAT RIDDLE: COPYRIGHT, YOUR NUMBER IS UP


The IPKat has seen details of a case on BoingBoing that was (from his point of view) unfortunately settled. Irdial, a small US record label released a CD containing recordings that it made of “numbers stations” which are “radio stations where a neutral voice recites mysterious numbers and codes, presumed to be part of the international espionage system”. Another label, WEA, sampled Irdial’s recordings. Irdial claimed that WEA has infringed its copyright in its recordings. They based their entitlement to copyright on 3 grounds: (1) radio interference in their recording made it unique; (2) they edited the recording to make it interesting and (3) they processed the recording to make it clearer. WEA gave in to Irdial’s claim but what the IPKat wants to know is, how would this claim have been decided under UK law? The usual prize to the person who provides the best answer.

More radio-inspired copyright works here and here
More on numbers stations here, here and here

PICARO ROLLS PAST PICASSO ESTATE IN RACE FOR THE EUROPEAN VEHICLE MARKET


The Court of First Instance (CFI) has just published its ruling in Case T-185/02, Claude Ruiz-Picasso and others v OHIM. The Picassos, ably represented by leading European trade mark lawyer Charles Gielen (NautaDutilh), opposed an application by DaimlerChrysler AG to register as a Community trade mark the word PICARO for motor vehicles and their parts. The opposition, based on the Picassos' registration of the word mark PICASSO for various vehicles, was dismissed by OHIM's Opposition Division and then by the Board of Appeal, following which the Picasso clan appealed to the CFI. All three tribunals were united in their agreement that there was no likelihood of confusion between the words PICASSO (an immensely famous artist) and PICARO (an old word meaning "rogue"). The CFI affirmed that, whatever the European Court of Justice might have said about famous marks being entitled to greater protection against confusion than less well-known marks, that principle certainly could not apply here where Picasso's name was so widely-known that people wouldn't mistake a word such as "picaro" with it. The CFI said:

"57 The word sign PICASSO has a clear and specific semantic content for the relevant public. Contrary to the applicants’ submissions, the relevance of the meaning of the sign for the purposes of assessing the likelihood of confusion is not affected in the present case by the fact that that meaning has no connection with the goods concerned. The reputation of the painter Pablo Picasso is such that it is not plausible to consider, in the absence of specific evidence to the contrary, that the sign PICASSO as a mark for motor vehicles may, in the perception of the average consumer, override the name of the painter so that that consumer, confronted with the sign PICASSO in the context of the goods concerned, will henceforth disregard the meaning of the sign as the name of the painter and perceive it principally as a mark, among other marks, of motor vehicles."
It added:
"61 Moreover, the applicants are wrong to rely, in the present case, on the case-law which states that trade marks which have a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (SABEL, cited in paragraph 35 above, paragraph 24, and Case C-39/97 Canon [1998] ECR I‑5507, paragraph 18). That the word sign PICASSO is well known as corresponding to the name of the famous painter Pablo Picasso is not capable of heightening the likelihood of confusion between the two marks for the goods concerned".
The IPKat thinks this decision is absolutely correct. It is an absurd fiction to suggest that well-known marks are more in need of protection against likelihood of confusion if the very fact of their well-known nature causes them to stand out in the eyes of the relevant consumer as conveying the sort of powerful message or image that "Picasso" does. The public is more likely to confuse MUFFINS with MUGGINS for sausage meat than PICASSO with PICARO for motor vehicles simply because it has heard of neither of them.

Real Picassos here and here; fake Picassos here and here
The IPKat's favourite Picassos here, here and here; the IPKat's favourite fake Picasso here

THE TEMPERATURE'S RISING IN FILM TITLE DISPUTE


Ananova reports that Ray Bradbury, author of the novel Fahrenheit 451, is objecting to documentary maker Michael Moore's use of Fahrenheit 9/11 as the title of his film about the "war on terrorism". Bradbury chose that temperature because it's the heat at which paper burns and Moore has explained that Fahrenheit 9/11 is the "temperature at which freedom burns". Bradbury is seeking an apology and wants to avoid legal action. He has said that he is "hoping to settle this as two gentlemen, if he'll [Moore] shake hands with me and give me back my book and title".

The IPKat doubts whether legal action would be possible in such a scenario in the UK. Although in theory simple phrases such as the titles of books and names may qualify for copyright as literary works, the courts and other legal authorities have been reluctant to recognise copyright in names and titles in individual cases. Perhaps though some sort of passing off action would be possible if it were shown that Bradbury has goodwill in the title and that consumers were deceived by Moore's use of his title into believing that the film had in some way been endorsed by Bradbury. In any event, he's not impressed by the notion of Moore "giving back" the title to Bradbury. Though he may have benefited from the association with the title of Bradbury's book, he has in no way deprived Bradbury of the use of the title for his own work.

Fahrenheit 451 here
Fahrenheit 9/11 here and here
Fahrenheit here and here

BOURNEMOUTH IP WORKSHOP COMING UP


The IPKat has heard that there's an interesting workshop coming up at Bournemouth University on 6 July 2004, from 11:00-15:30 at the Talbot Campus. The Centre for Intellectual Property Policy & Management is organising a workshop on some current intellectual property issues in world trade, with a focus on empirical methodologies.

The programme includes a paper by Dr Dwijen Rangnekar (Centre for the Study of Globalisation and Regionalisation, Warwick University) on Geographical Indications: "Origin Labels as Club Goods: The organisation and governance of supply chains", as well as one by Prof. Philip Hardwick & Prof. Martin Kretschmer (CIPPM) on "Origin Labels: An economic model". After lunch, Prof. Paul Heald (University of Georgia) is speaking on "Foreign Direct Investment and IP Enforcement: A critique of Edwin Mansfield's 1994 study". the Finale is an open forum on empirical methodologies with contributions by Prof. Stuart Macdonald (Sheffield University) on researching SMEs, Prof. Ruth Soetendorp (CIPPM) on patent databases and Dr Puay Tang (SPRU, Sussex University) on the hazards of interviewing. Other named contributions are invited: please contact Martin Kretschmer.
To book a place, contact Jane Gwizdala.

Monday, 21 June 2004

IPKAT TRANSLATION WATCH: FIRST THE GOOD NEWS ...


As of last week, decisions of the European Court of Justice and the Court of First Instance are now being offered in a choice of all 20 official EU languages, not just the previous 11. Alas, none of the cases sampled by the IPKat this morning appear to have been translated into any of the nine accession languages (in alphabetical order: Czech, Estonian, Hungarian, Latvian, Lithuanian, Maltese, Polish, Slovak, Slovene). What's worse, in Case C-64/02 OHIM v Erpo Möbelwerk, the Advocate General's Opinion on the appeal from CFI as to the registrability as a Community trade mark of the slogan DAS PRINZIP DER BEQUEMLICHKEIT hasn't even been translated into English, the language the accession states can probably cope with best.

CLASH OF PATRIOTS HEADS FOR A FULL TRIAL


In Bayer Cropscience SA v Agropharm Ltd (18 June, noted in the subscription-only LexisNexis All England Reporter Bayer Cropscience, a French company, owned the registered mark PATRIOT for goods designed to kill weeds and vermin. Bayer argued that since 1991 it had continuously and extensively used the mark in the UK. From 1993 Agropharm sold public health insecticide under the name Patriot Flying and Crawling Insect Killer, as well as two other products called Patriot C and Patriot P. Bayer sued for trade mark infringement, alleging either same-mark/same-goods (Trade Marks Act 1994, s.10(1)) or similar-marks/similar-goods-plus-likelihood of confusion (Trade Marks Act 1994, s.10(2)), seeking summary judgment. It was accepted that, if a decisive decision could not be arrived at under s 10(1), consideration of the likelihood of confusion of the average consumer under s 10(2) was not appropriate for summary judgment.

Mr Justice Patten dismissed the application for summary judgment. Although the court could approach the Patriot C and Patriot P signs on the basis that one letter did not make much difference, it was wrong and unwise to decide the case definitively on a summary judgment application when, in order to do so, the court would have to assume what the average consumer would have in mind.

The IPKat agrees that the state of mind of the consumer cannot be second-guessed in summary proceedings, but notes that there has been a spate of cases recently in which, for perfectly goods reasons, the courts have refused summary judgment: this is either because claimants keep applying for it where they shouldn’t or because the courts have become increasingly reluctant to grant it.

Pests here, here and here
Patriots here and here
Patriotic pests here and here

Sunday, 20 June 2004

ARE YOU LOVIN' BRAND JOURNALISM


“Brand journalism” is the future according to McDonald’s chief marketing officer, Larry Light. AdAge reports his speech at the the AdWatch: Outlook 2004 conference in New York. Mass marketing, based on single adverts, is old hat according to Light. "We don't need one big execution of a big idea" he said, speaking of the McDonald’s strategy. “We need one big idea that can be used in a multidimensional, multilayered and multifaceted way”. This is where “brand journalism” comes in. It communicates "‘what happens to a brand in the world,’ and create ad communications that, over time, can tell a whole story of a brand”. In other words, instead of communicating one message about the brand it, it shows how different people are using the brand in lots of different ways. As an example, Light cited McDonald’s “I’m Lovin’ It” campaign, which is based around four “cultural languages”: sports, fashion, music and entertainment and employs a variety of media to get its message across.

The IPKat can see the wisdom in such an approach. Different aspects of the campaign will appeal to different consumers, enabling the message to reach the widest possible audience. At the end of the day though, all the strands are brought together by a single trade mark which enables consumers to know where to get the goods or services being provided.

Are you lovin’ it? If so, click here, here, here and here

MUSIC GIANTS' MERGER GOES ONE STEP FURTHER


The BBC reports that the Mario Monti, the EU’s Competition Commissioner, is willing to allow Sony-Music and BMG to merge. The merger of the two music companies, whose artists include Aerosmith, Beyonce, Britney Spears, and George Michael, would leave 80% of the world’s music market in the hands of 4 companies. However, independent record labels have objected, claiming that it will lead to the space available to them in music shops being limited and ultimately, a narrower range of music being available to consumers. The merger still has to be approved by the US competition authorities though.

The IPKat hopes that the combined company will utilise the copyright that it holds wisely. He notes that BMG is behind Napster and hopes that the merged company won’t be tempted to restrict access to its portfolio to other online music providers.

EU Competition Commission here
More about the music business here, here and here

Friday, 18 June 2004

TRUANCY PATENT GOES MISSING IN PART


This came out yesterday from the subscription-only LexisNexis All England Reporter.

Frontline registered a patent in the UK entitled ‘Attendance Registration System by Radio Link’, which was filed with a priority date of 7 October 1992. The patent was for a schools attendance record-keeping system of student attendance at school using portable data collection units, such as laptop or palmtop computers, equipped with transceivers that communicated with a central computer via a wireless network. Claims 1 and 2 were broadly conceptual, while claim 7 related to the use of radio frequency transceiver units (RTUs) which could control the traffic data flowing between the portable units and the central computer.

It subsequently transpired that K, a purpose built school that opened before the patent’s priority date, operated networked PCs. This network was used for teaching and administrative purposes, including collecting data in relation to student attendance. The Secretary of State therefore sought revocation of the patent.

David Young QC, sitting as an additional judge, upheld the patent in part. Claims 1 and 2 were obvious and lacking in an inventive step in view of K’s prior use. Claim 7 was not however obvious in the light of either the cited prior art or any use or disclosures. The concept of a wireless network system using portable laptops or palmtops in place of wired PCs was no more than a logical alternative to K’s system, as would have been obvious at the material time, to a team of persons skilled in the IT education field and a to general systems analyst considering K’s system. However claim 7, relating to the use of intelligent RTUs, was something that those skilled in the art with the assistance of a radio frequency IT specialist could have arrived at only with hindsight.

The IPKat marvels at how clever everyone seems to be after the event. Lack of inventive step must be a real pain for small scale inventors, whose investment is always at risk of a key patent being found to be obvious many years after the event. At least in this case Claim 7 survived, but not all patentees are so lucky.

School attendance and truancy here, here, here and here
Some unusual truants here and here; skiving off here and here

FOURTEEN QUESTIONS FOR THE ECJ FROM PHARMA REPACKAGING CASE


Yesterday saw the latest development in the protracted and keenly fought group of cases that goes under the handy banner of Boehringer Ingelheim v Swingward. This was the setting out by Lord Justice Jacob (for the Court of Appeal) of the questions which are to be referred to the European Court of Justice relating to the legitimacy of reboxing and overstickering pharmaceutical products that are bought in one EU country and then imported into another in which the language, or market preferences, are different. The package for the ECJ includes five questions on repackaging, five on overstickering and a further four on the requirement of the parallel importer to give notice to the trade mark proprietor (the original pharmaceutical manufacturer) before doing either of those things.

The questions are as follows:

(1) Reboxed products: Where a parallel importer markets in one Member State a pharmaceutical product imported from another Member State in its original internal packaging but with a new exterior carton printed in the language of the Member State of importation (a “reboxed” product): (a) does the importer bear the burden of proving that the new packaging complies with each of the conditions set out in Joined Cases C-427/93, C-429/93 and C-436/93 Bristol-Myers Squibb v Paranova or does the trade mark proprietor bear the burden of proving that those conditions have not been complied with or does the burden of proof vary from condition to condition, and if so how? (b) does the first condition set out in Bristol-Myers Squibb v Paranova as interpreted in Case C-379/97 Upjohn v Paranova and Case C-143/00 Boehringer v Swingward, namely that it must be shown that it is necessary to repackage the product in order that effective market access is not hindered, apply merely to the fact of reboxing (as held by the EFTA Court in Case E-3/02 Paranova Inc v Merck & Co Inc) or does it also apply to the precise manner and style of the reboxing carried out by the parallel importer, and if so how? (c) is the fourth condition set out in Bristol-Myers Squibb v Paranova, namely that the presentation of the repackaged product is not such as to be liable to damage the reputation of the trade mark or its owner, only infringed if the packaging is defective, of poor quality or untidy or does it extend to anything which damages the reputation of the trade mark? (d) if the answer to question 1(c) is that the fourth condition is infringed by anything which damages the reputation of the trade mark and if either (i) the trade mark is not affixed to the new exterior carton (“de-branding”) or (ii) the parallel importer applies either his own logo or a house-style or get-up or a get-up used for a number of different products to the new exterior carton (“co-branding”) must such forms of box design be regarded as damaging to the reputation of the trade mark or is that a question of fact for the national court? (e) if the answer to question 1(d) is that it is a question of fact, on whom does the burden of proof lie?

(2) Overstickered products: Where a parallel importer markets in one Member State a pharmaceutical product imported from another Member State in its original internal and external packaging to which the parallel importer has applied an additional external label printed in the language of the Member State of importation (an “overstickered” product): (a) do the five conditions set out in Bristol-Myers Squibb v Paranova apply at all? (b) if the answer is question 2(a) is yes, does the importer bear the burden of proving that the overstickered packaging complies with each of the conditions set out in Bristol-Myers Squibb v Paranova or does the trade mark proprietor bear the burden of proving that those conditions have not been complied with or does the burden of proof vary from condition to condition? (c) if the answer to question 2(a) is yes, does the first condition set out in Bristol-Myers Squibb v Paranova as interpreted in Upjohn v Paranova and Boehringer v Swingward, namely that it must be shown that it is necessary to repackage the product in order that effective market access is not hindered, apply merely to the fact of overstickering or does it also apply to the precise manner and style of overstickering adopted by the parallel importer? (d) if the answer to question 2(a) is yes, is the fourth condition set out in Bristol-Myers Squibb v Paranova, namely that the presentation of the repackaged product is not such as to be liable to damage the reputation of the trade mark or its owner, only infringed if the packaging is defective, of poor quality or untidy or does it extend to anything which damages the reputation of the trade mark? (e) if the answer to question 2(a) is yes and the answer to question 2(d) is that the fourth condition is infringed by anything which damages the reputation of the trade mark, is it damaging to the reputation of a trade mark for this purpose if either (i) the additional label is positioned so as wholly or partially to obscure one of the proprietor’s trade marks or (ii) the additional label fails to state that the trade mark in question is a trade mark owned by the proprietor or (iii) the name of the parallel importer is printed in capital letters?

(3) Notice: Where a parallel importer has failed to give notice in respect of a repackaged product as required by the fifth condition of Bristol-Myers Squibb v Paranova, and accordingly has infringed the proprietor’s trade mark(s) for that reason only: (a) is every subsequent act of importation of that product an infringement or does the importer only infringe until such time as the proprietor has become aware of the product and the applicable notice period has expired? (b) is the proprietor entitled to claim financial remedies (i.e. damages for infringement or the handing over of all profits made by infringement) by reason of the importer’s acts of infringement on the same basis as if the goods had been spurious? (c) is the granting of financial remedies to the proprietor in respect of such acts of infringement by the importer subject to the principle of proportionality? (d) if not, upon what basis should such compensation be assessed given that the products in question were placed on the market within the EEA by the proprietor or with his consent?

The IPKat wonders whether the ECJ will answer all these questions, or whether it will just shrug its shoulders and say that the answer to them is somehow implicit in its earlier ruling and that the Court of Appeal should be able to work them out for themselves.

Court of Appeal’s earlier judgment of 5 March 2004 here; IPKat blog on it here
European Court of Justice’s earlier ruling here

Thursday, 17 June 2004

US ANTITRUST LIMITED

The US Supreme Court has put a limit on the reach of US antitrust law outside the US reports the New York Times. In an 8 to 0 decision, the court held that Sherman Antitrust Act only covers effects of behaviour that are felt abroad if the defendant’s behaviour that caused these effects took place in the US. The case clarifies that where the behaviour in question took place outside the US AND its effects are felt outside the US, the Sherman Act will not apply. This ruling was made in the context of a private lawsuit concerning alleged price-fixing by companies in Australia, Ecuador, Panama and Ukraine on behalf of purchasers of the products produced by those companies who were based outside the US.

The IPKat says that the possible extra-territorial reach of US antitrust law should be of interest to EU IPR holders, as well as those in the US so that they know if the way they use their rights are likely to offend against US antitrust law. This case though makes a conflict between IPR holders outside the US and US antitrust enforcement a little less likely.

Sherman Act here and here

CUNNING DUTCH ROYALTY AVOIDANCE PLAN HITS TROUBLE


The Register reports that a Dutch company's cunning plan to deliver DVD movies to customers' TV sets digitally, without having to pay additional performance rights has already run into trouble. DVDStream's partner Homelink - the Danish manufacturer of the Palmbutler 600 set-top box - has gone into receivership and may not be able to deliver the hardware on time. DVDStream was planning to deliver movies through Palmbutler 600, a set-top box that streams digital media to TVs and stereos in the home. The Dutch start-up claimed that by adopting a DVD rental sales model, it wouldn't have to pay for royalties that are imposed on regular streaming video or video-on-demand services. The idea was that customers would purchase a DVD movie digitally and make a copy of it for their personal use (which is apparently legal in the Netherlands). After watching the movie, the customer would sell the movie back to DVDStream. This way, the payments for the movies would have been only temporary deposits, the company claimed, and the service would not have to pay extra royalties. Although experts found it highly doubtful that the service would remain online for long, it may not now happen after all. DVDStream says it is looking for alternatives, including products from Hauppauge or Pinnacle, but none of these have been able to deliver the features the Palmbutler set top-box was able to offer. DVDStream still hopes it can launch in August.

The IPKat is most impressed at the ingenuity of this scheme, the legitimacy of which DVD producers will be sure to test in the courts once it's introduced. Even if copyright is not infringed, there is no guarantee that this scheme would not fall foul of the law of unfair competition.

Video streaming here and here
Videos about streams here, here, here and here

Wednesday, 16 June 2004

TRADE NAMES? YOU MUST BE JOKING


New Scientist's Feedback column for 1 June lists some deliciously (in)appropriate business names, or "antinyms" as they have considered dubbing them. They include the Impact driving school, two airlines (Penguin and Emu) named after flightless birds, a security company named Lowe Security and the Nessun Dorma (the Italian for "no-one sleeps") guest house.

The IPKat suspects that the public finds these names not merely memorable but sweetly enduring. Choice of antinyms such as these is also less likely to draw a business into name conflicts with its competitors than the endlessly allusive/descriptive names that many industries seem to favour these days (despite the frequently-experienced difficulty in registering them as trade marks).

Funny (and not-so-funny) names for people and businesses here, here and here

Funny names for molecules and places

Tuesday, 15 June 2004

WHY T&T TRADE MARK REGISTRY CAN’T MAGIC REGISTRATIONS INTO EXISTENCE


The Privy Council ruled yesterday on an appeal from Trinidad & Tobago in Cigarrera Bigott SUCS v Phillip Morris Products Incorporation and another [2004] UKPC 28. This case arose after Phillip Morris Inc applied to register the word BELMONT as a trade mark for tobacco products. After the application was refused and following an internal reorganisation, Phillip Morris Inc assigned various assets to PMP asked the registrar to substitute it as applicant in respect of that application. The registry staff, accepting that request as an ordinary request for registration by an assignee of the mark, didn’t spot that there was no registered mark to assign and issued a certificate of assignment stating that PMP had been entered on the register as proprietor of the mark by virtue of the assignment. Under the law of Trinidad and Tobago, that certificate served as prima facie evidence of the entry in the register which it recorded. However, PMP continued to believe that the mark had not been registered and that the application remained pending. Bigott later applied successfully to register BELMONT. PMP filed an opposition to the application within the extended period allowed to it by the registrar and Bigott sought a determination that PMP was irretrievably out of time in seeking to oppose the application. The deputy registrar found in Bigott’s favour whereupon PMP appealed, arguing that it was the registered proprietor of the mark. This appeal was upheld and that judgment was affirmed by the Court of Appeal of Trinidad and Tobago.

Bigott’s appeal to the Privy Council succeeded. That court ruled that, on its true construction, the register did not evidence registration of the mark in PMP’s name. The register contained no entry of the actual registration, but only an entry of an assignment and it was clear that the entry was concerned only with an assignment of the application, not with an assignment of a registered mark. It was also apparent that the original application had been neither accepted nor advertised. That being so, the registrar had no jurisdiction to register PMP as proprietor. Accordingly, Bigott should be registered as BELMONT’s proprietor instead.

The IPKat notes that, even in the post-colonial era, the Privy Council can come up with some pretty effective and sensible reasoning when righting wrongs perpetrated in far-flung colonies by trade mark registries who can magic a trade mark registration into existence via the certification of the assignment of an application.

Why Tobago is called Tobago here und hier

KAZAA DEEMED CONFUSINGLY SIMILAR TO CASA


The Register reports that Sharman License Holdings, the company behind the controversial P2P utility and search engine Kazaa, has been unable to obtain the registration of its trade mark under the Community trade mark system. Kazaa may even have to change its name in Germany. FastTrack, the company that developed Kazaa and then sold its rights to Australian company Sharman, had previously lost a Community trade mark opposition against German company SpeedWare Software GmbH, which claims that in the German language the name Kazaa is phonetically similar to Casa, the trade mark it uses for (database) search software.

FastTrack applied to register KAZAA back in 2000 with OHIM, the Office for Harmonisation in the Internal Market, which registers Community trade marks and Community designs. SpeedWare Software GmbH (which now operates under the name of Nemetschek CREM Solutions) vigorously opposed the Kazaa application, claiming that a likelihood of confusion existed as the marks were phonetically the same and the goods/services for which Kazaa was sought to be registered were identical or similar". Sharman disagreed, arguing that the second syllable of CASA started with the letter 's', while the mark applied for KAZAA contained the quite unusual letter 'z', Sharman argued. Moreover, the double letter 'a' was atypical in the German language. From a phonetic point of view, CASA is pronounced as the Spanish word 'casa', with the emphasis on the first syllable 'ca' and a soft and short sound for the second syllable. OHIM, however, concluded that the trade marks were indeed phonetically similar in the German language. Now that FastTrack/Sharman’s CTM application has failed, the company may now have to apply its brand name individually in each member state. More importantly, it can expect opposition from Nemetschek CREM Solutions in Germany.

The IPKat understands how frustrated FastTrack/Sharman must be, given the fact that the KAZAA brand name is hugely known around the world, while the prior-registered CASA mark is not. He wonders whether FastTrack/Sharman will appeal on the basis that it is too famous a mark to be likely to be confused with the earlier mark.

Confusion here, here and here
ConFusion here and here; Confucius here and here

DO PARALLEL IMPORTS POSE A RISK TO UK PATIENTS?


A brief note in the Metro (no link available) reports that a Social Market Foundation report that came out on Monday claims that the NHS practice of parallel importing drugs from other European countries could put UK patients at risk for 2 reasons: (1) it’s more difficult for medicines to be recalled if a problem is found with a particular batch and (2) human error is possible where a foreign language on the original packaging is translated when the product is repackaged to enable it to penetrate the UK market.

The IPKat has had a look at the Social Market Foundation’s website, but could not find the paper, though he did find this event which took place on Monday. While he hasn’t seen the paper, his instinct is to treat the report with a slight degree of scepticism until it is shown that the risk of the negative consequences identified outweighs the benefits to be obtained from more people gaining access to the medicine because it is more cheaply priced.

More mistranslations here, here, here and here

Monday, 14 June 2004

FAT CATS FLY SOUTH ON BURGER SPONSORED GRAVY TRAIN


Ananova reports that a group of British Members of Parliament has come under fire for going on a free trip to see the Euro 2004 football tournament, courtesy of McDonald's. The group of 17 MPs ― 16 Labour and one Conservative ― includes Alan Simpson, who recently called for a tax on fast food. The £20,000 trip comes just days after MPs called on the Football Association to drop McDonald's as a sponsor. According to the Sunday Mirror others in the group include Trade Minister Gerry Sutcliffe and Ed Owen, a close ally of Foreign Secretary Jack Straw.

The MPs, part of the All-Party Parliamentary Football Group, are paying the face value of the two matches they are seeing, which include the highly prized England-France match. The cost of the flights and four-star hotel accommodation is being split by McDonald's and the Portuguese authorities. The MPs are reported to be playing a charity game of football against Portuguese politicians, from which McDonald's charities will benefit. Dr Steve Watkins, of the British Medical Association's public health committee, said:

“For members of parliament to allow their names to be linked to promote fast food is seriously irresponsible."
The IPKat feels that, whatever the health impact of their products on Britain’s obese youth, McDonald’s can hardly be blamed for using brand sponsorship to maximum commercial and political effect. At present, only cigarette sponsorship of sports events is strictly regulated, but there must be plenty more things that are bad for your health: will the sports be discouraged from taking their money too?

McDonald’s here; I’m lovin’ it here and here; I’m not lovin’ it here, here and here
Things that are bad for your health here, here and here

Sunday, 13 June 2004

THE SOURCE TAKES THE RAP AS EMINEM SUES AGAIN


The rapper Eminem seems to be turning into a voracious litigant. His latest foray into the wonderful world of copyright proceedings has resulted in hip-hop magazine The Source being found in contempt of court for publishing the full lyrics to two of the rapper’s songs, according to the BBC. The songs, which allegedly have racist overtones, were written by an eighteen year-old Eminem. He claims that they were composed as a foolish and hot-headed response to breaking up with a black girlfriend. However, the magazine claims they are racist and offensive to black women. In December, Judge Lynch found that The Source could rely on a fair-dealing defence, but that this only entitled them to reproduce eight lines of the song. Nonetheless, the magazine reproduced all the lyrics on its website and the recordings and Eminem sued for copyright infringement. On Thursday, Judge Lynch found in Eminem’s favour. It is claimed that the litigation is part of an ongoing spat between Eminem and the founder of the source who is also a rapper.

The IPKat feels that while it’s a good idea for the quoting of sections of a work to be allowed to enable it to be credibly reviewed, he wouldn’t want to see the fair-dealing defence used as a cover for someone to reproduce the work to enable him to compete with the original author.

Eminem lyrics here
Eminem here
M&Ms here

Friday, 11 June 2004

IPKAT TRANSLATION WATCH: KEEP TAKING THE TABLETS

Anyone who wants to read the ECJ's decision in the Henkel dishwasher tablets cases (C-456/01 and C-457/01) and has been frustrated to find that it's still not available in English on the ECJ website will be glad to know that the IPKat has found an English version on the OHIM website - click here to go through to it.

Thursday, 10 June 2004

BEATLES INTERNET DEAL IN THE OFFING


The Telegraph reports that the two remaining Beatles, Sir Paul McCartney and Ringo Starr, together with Yoko Ono and Olivia Harrison (widows of John Lennon and George Harrison), are negotiating with technology companies in a milestone deal for digital music. Industry sources report that "a considerable sum" was being asked by the musicians, who insist on maximum control of their recordings. The expectation is that they will soon seal an exclusive deal with a leading operator such as Microsoft's MSN, which plans an internet music store. MSN has already previewed a service which enables buyers to browse through huge list of songs and albums to purchase and download on to their computers. There may also be a Beatles-branded store, where the group's music, videos and other multi-media products could be bought.

Along with Madonna and members of Led Zeppelin, The Beatles have long resisted the internet, although the band has its own website, with links to those of Starr, Sir Paul and the late George Harrison. EMI, which owns The Beatles' master recordings, has urged them to grant permission for online access.

The IPKat hopes that the negotiations prove successful and that the parties’ respective law firms are accorded a percentage of the deal that is commensurate with the happiness they confer upon the Beatles’ ever-faithful fans.

Beatlemania here, here und hier
Beetlemania here and here

HANDS OFF OUR BALLS, SAYS RECKITT


In another twist to the saga of trade mark protection for dishwasher tablets, the Daily Telegraph reports that Reckitt Benckiser went to court yesterday to protect the shape of its Finish Power Ball dishwasher tablets. Reckitt is appealing against the decision of the Trade Marks Registry, which held that its rectangular tablets with a red ball in the centre which is meant to represent extra cleaning to remove tough stains, was not distinctive. The company, whose action is being opposed by their rival, McBride, told Mr Justice Mann:

“No one else has anything like this…It is so out of the ordinary that it will stick in the mind of the purchasing party. They will say ‘I don’t want that one, I want a tablet with a ball sticking out of the top, because it made my glasses shiny last time”.
However, McBride argued that the Powerball was
“not different enough to be a trademark [sic], and that the consumer would not see the shape as product specific”.
The IPKat awaits the result of this decision with interest and will of course bring you coverage when Mann J delivers his decision. He doesn’t know of any successful attempts to register the shape of a dishwasher tablet as a trade mark (and not for want of trying on the part of their producers). However, if any of his readers know of such an application that has gone through, he’ll make sure that they’re the proud recipient of a small yet tasteful prize.

More powerballs here and here
More red balls here, here , here and here and here

Wednesday, 9 June 2004

DELAYS IN EUROPEAN IP LITIGATION: IT CAN ONLY GET WORSE


At Monday night's Competition Law Association meeting on "Recent European Trade Mark Cases", hosted at Slaughter and May, IPKat's co-master Jeremy Phillips was outlining the increased length of time taken to resolve IP references to the European Court of Justice (ECJ) and appeals both to the ECJ and the Court of First Instance.

On this issue, Justin Watts, an intellectual property partner with Freshfields Bruckhaus Deringer, adds this:

When the ECJ quotes the length of its lists, I assume that means how long it has taken from referral for the cases currently before the court. That is not really a useful figure on which to base advice. Clients want to know how long a case referred now will take to reach judgment.

If the rate at which cases are referred exceeds the rate at which they are heard, then the waiting time for cases currently before the court must be an underestimate because the waiting list has grown between the current case starting and being heard.

Assuming a simple model in which the rate at which cases is heard is a constant (n), and the rate at which they are referred is also constant (N), then the current waiting time for cases in court now will underestimate the actual waiting time for new cases by a factor of N/n. Based on the figures given last night, with 446 new cases but only 331 cases heard per year, new cases will have to wait 35% longer than current waiting times. That means 34.5, not 25.5, months.

This is more or less consistent with the number calculated starting from the number of outstanding cases - 999 - against the number heard per year - 331. At that rate, a case added to the list now will take (999/331) years, or 36.2 months, to work its way through.

In other words, the position is already much worse than it looks. Add on to that all the reasons you gave for why, in fact, the rate at which cases are added is in fact growing, and it becomes even more worrying.


Lengthy litigation here, here and here
Swift justice here, here and here

EUROPEAN FILE-SHARERS SETTLE


The BBC reports that 18 file-sharers have settled litigation out of court with the IFPI. The group of 17 Danes and one German are part of the first wave of 200 song swappers against whom the IFPI launched legal actions this March. Meanwhile, litigation against other individuals is pending in Italy, Denmark and Canada. The IFPI also announced that it has begun proceedings against other file-sharers this week. The IFPI also claimed that there has been a 30% drop in illegal file-sharing since this time last year and has claimed that it vindicates its course of action. Said its chairman, Jay Berman:

"Today's results show that litigation, combined with the rollout of new legal online music services, is having a real impact on people's attitudes to illegal file-sharing".
The IPKat notes that as well as saving defendants from the expense and hassle of court proceedings, out of court settlements avoid any potentially unfavourable precendents for IPR holders.

Compromises here and here
No compromise here

Tuesday, 8 June 2004

STIX-HACKL PRONOUNCES ON DATABASE PROTECTION: BUT WILL THE ECJ FOLLOW HER ADVICE?


Directive 96/9 on the legal protection of databases (“the database directive”)introduced a sui generis right that was designed to protect the contents of organised collections of data, even if the compilation of data fell far short of a work of authorship that was entitled to copyright protection. The nature of the sui generis right is defined by Article 7 of the database directive, which provides:

Article 7
Object of protection
1. Member States shall provide for a right for the maker of a database which shows that there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents to prevent extraction and/or re-utilization of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database.
2. For the purposes of this Chapter:
(a) 'extraction` shall mean the permanent or temporary transfer of all or a substantial part of the contents of a database to another medium by any means or in any form;
(b) 're-utilization` shall mean any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies, by renting, by on-line or other forms of transmission. The first sale of a copy of a database within the Community by the rightholder or with his consent shall exhaust the right to control resale of that copy within the Community; Public lending is not an act of extraction or re-utilization.
3. The right referred to in paragraph 1 may be transferred, assigned or granted under contractual licence.
4. The right provided for in paragraph 1 shall apply irrespective of the eligibility of that database for protection by copyright or by other rights. Moreover, it shall apply irrespective of eligibility of the contents of that database for protection by copyright or by other rights. Protection of databases under the right provided for in paragraph 1 shall be without prejudice to rights existing in respect of their contents.
5. The repeated and systematic extraction and/or re-utilization of insubstantial parts of the contents of the database implying acts which conflict with a normal exploitation of that database or which unreasonably prejudice the legitimate interests of the maker of the database shall not be permitted.
Today Advocate General Christine Stix-Hackl has delivered Opinions concerning the interpretation of the database directive in no fewer than four cases that have been referred to the European Court of Justice (ECJ) for preliminary rulings. Three deal with databases of football fixtures, while the fourth deals with a database of horse-racing data. All of these cases raise issues concerning the true import of Article 7. The cases are:

* Case C-46/02 Fixtures Marketing Ltd v Oy Veikkaus Ab (referred from Finland)

* Case C-444/02 Fixtures Marketing Ltd v Organismos Prognostikon Agonon Podosfairou (referred from Greece)

* Case C-338/02 Fixtures Marketing Ltd v Svenska Spel AB (referred from Sweden)

* Case C-203/02 British Horseracing Board Ltd and others v William Hill Organization Ltd (referred from the United Kingdom)

The questions referred to the ECJ are too lengthy and complex to relate here, but the summary of the Advocate General’s Opinion goes as follows (all references to Articles are to provisions of the database directive):

1. Whether the works, data or other materials derived from the database have the same systematic or methodical arrangement and individual accessibility as in the original database is not relevant to the interpretation of the expressions ‘a substantial part … of the contents of that database’ or ‘insubstantial parts of the contents of the database’ in Article 7 (BHB).

2. The expression ‘obtaining’ in Article 7(1) must be interpreted as meaning that it also covers data created by the maker if the creation of the data took place at the same time as its processing and was inseparable from it (BHB).

3. The term ‘verification’ in Article 7(1) is to be interpreted as meaning that it is not limited to ensuring from time to time that information contained in a database is or remains correct (BHB).

4. The expression ‘a substantial part, evaluated qualitatively ... of the contents of that database’ in Article 7(1) is to be interpreted as meaning that the technical or commercial value of the affected part must be taken into account. The expression ‘a substantial part, evaluated quantitatively ... of the contents of that database’ in Article 7(1) is to be interpreted as meaning that the amount of the affected part is relevant. However, in both cases it is not solely the relative amount of the affected part as a proportion of the contents as a whole that is relevant (BHB; Svenska Spel).

5. The expression ‘insubstantial parts of the contents of the database’ in Article 7(5) is to be interpreted as meaning that such parts are more than individual data and less than ‘substantial parts’ within the meaning of Article 7(1) (BHB).

6. The term ‘extraction’ in Article 7 covers only the transfer of the contents of the database directly from the database to another data medium (BHB).

7. The term ‘re-utilisation’ in Article 7 covers not only the making available to the public of the contents of the database directly from the database, but also the making available to the public of works, data or other materials which are derived indirectly from the database, without having direct access to the database (BHB).

8. Acts which prevent the economic exploitation of the sui generis right by its proprietor even on potential markets are to be considered to be ‘acts which conflict with a normal exploitation of that database’. Acts which damage the legitimate economic interests of the maker to a degree which exceeds a certain threshold are to be considered to be ‘acts which unreasonably prejudice the legitimate interests of the maker of the database’ (BHB).

9. Article 10(3) is to be interpreted as meaning that any ‘substantial change’ to the contents of a database which qualifies the database for its own term of protection, entails that the resulting database must be considered to be a new, separate database, including for the purposes of Article 7(5) (BHB).

10. In assessing whether a database is the result of a ‘substantial investment’ within the meaning of Article 7(1), the purpose of the investment is not material. Investment for the purpose of drawing up the fixture lists in a databank must also be taken into account (Svenska Spel).

11. The protection granted by Article 7(1) and Article 7(5) against the ‘extraction’ of the contents of a database is confined to practices which entail direct exploitation of the database. The protection granted by Article 7(1) and Article 7(5) against ‘re-utilisation’ also covers the exploitation of the contents of a database where those contents are available from another source (Svenska Spel).

12. The expression ‘normal exploitation’ in Article 7(5) of the Directive must be interpreted as meaning that economic exploitation can be prevented by the owner of the sui generis right on potential markets too. The expression ‘unreasonably prejudice’ in Article 7(5) must be interpreted as referring to damage to the legitimate economic interests of the maker which goes beyond a certain threshold (Svenska Spel).

13. The term ‘database’ in Article 1 is to be interpreted as meaning that it can also cover lists of football fixtures (Organismos).

14. Article 7(1) must be interpreted as meaning that a database containing lists of football fixtures can be the object of protection, if qualitatively or quantitatively a substantial investment in the obtaining, verification or presentation of the contents is necessary. The maker of such a database has the right to prevent extraction and/or re-utilisation of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database (Organismos).

15. Article 7(5) prohibits the repeated and systematic extraction and/or re-utilisation of insubstantial parts of the contents of the database implying acts which conflict with a normal exploitation of that database or which unreasonably prejudice the legitimate interests of the maker of the database (Organismos).

16. Article 7 in conjunction with Article 10(3) must be interpreted as meaning that extraction and/or re-utilisation is also prohibited in respect of a database to the contents of which there has been a substantial change, evaluated qualitatively or quantitatively, which is thus the result of a substantial new investment, evaluated qualitatively or quantitatively (Organismos).

17. The requirement in Article 7(1) for a link between the investment and the making of the database must be interpreted in the sense that the obtaining referred to in Article 7(1) and the investment directed at it refers, in a case such as that in the main proceedings, to investment which is directed at the determination of the dates of the matches and the match pairings themselves and the drawing up of the fixture list also includes investment which is not relevant to the appraisal of the criteria for granting protection (Oy Veikkaus).

18. The protection provided for by the Directive against extraction and/or re-utilisation must be understood as meaning that persons other than the authors of the fixture list may not, without authorisation, use the data in that fixture list for betting or other commercial purposes (Oy Veikkaus).

19. A substantial part, evaluated qualitatively and/or quantitatively, of the contents of a database may also be affected where, of the data in the fixture list, on each occasion only data necessary for one week is used in the weekly pools coupons, and where the data relating to the matches is obtained and verified from sources other than the maker of the database continuously throughout the season (Oy Veikkaus).

The IPKat will need a little time to digest all this. What he can say, though, is two things.

* One area of controversy is the result of updating an existing database: does it become a new database in respect of which a fresh period of 15 years protection may be enjoyed? The Advocate General advises that any ‘substantial change’ to the contents of a database which qualifies the database for its own term of protection means that the resulting database must be considered to be a “new, separate database”. This may be impossible to ascertain in practice: you can keep amending data on a database and it may change a great deal in terms of new content -- but can it ever be said to be “separate”? If incremental amendments are not adequately protected, however, the incentive to make databases available may be greatly reduced.

* The Advocate General has also advised that the requirement for a link between an investment and the making of the database must be interpreted in the sense that it refers, on the facts of the main proceedings, to investment which is directed at the determination of the dates of the matches and the match pairings themselves. This advice will be greatly welcomed by those who spend a lot of time on effort creating or ascertaining data which costs little or nothing to draw up in its final form.

neh, neh, neh, neh, neh , neh , neh , neh , neh , neh , neh , neh , neh , neh , neh , neh COPYRIGHT!


The Times reports that Carmine Infantino, the creator of Batman, Batgirl and superhero The Flash is suing Time Warner and DC Comics, his former employers, for copyright infringement in the US. Infantino, who claims he revived the fortunes of Batman in the 1960s, decided to sue after he saw and interview with a Warner Bros executive who failed to mention him as the creator of the characters. Infantino worked in a freelance capacity for DC Comics, which was later bought by Warner Brothers between 1943 and 1967. The arrangement was that once his pay-check was signed by all parties, he relinquished all rights. Copyright in Batman is particularly sensitive since a new Batman film is to be released by Warner Bros next year.

The IPKat says that it’s hard to comment on the rights and wrongs of this case without seeing the conditions of employment and any assignments of copyright that were made. However, if you want to be a Boy Wonder, make sure ownership of copyright in employees’ creations are sorted out in advance, particularly if the employee is free lance. Copyright is freelance employees’ work has also caused problems in the UK in the recent case of Griggs v Evans .

Batman here, here and here
Batgirl here
The truth about Batgirl here
Batmobile here, here, here and here

Monday, 7 June 2004

DON'T FORGET!

Tomorrow is Super Tuesday. "Why?" you might ask. Well, it's the day that the ECJ Advocate General delivers his long-awaited first decisions on the Database Directive in the cases brought by the Fixtures Marketing Board and the British Horse Racing Board. The IPKat will of course bring you the details of the Advocate General's opinions as soon as they become available.

FTC TO FIGHT TROLLS

The US Federal Trade Commission (FTC) is putting forward reforms to the US patent system reports the BBC. Both the administrators and business are fed up with patents being used anticompetitively. One problem is that patents are granted to undeserving claims because lack of funds has led to insufficient time being devoted to their examination. A further problem is the rise of “patent trolls” (see IPKat blog of Thursday 14 August 2003) who buy up paper patents and use them in order to hold the industry to ransom, claiming that the technology covered by their patent is being infringed by the whole industry, even if the feature is very minor. In response, the FTC has had proposals on the drawing board for a year which include a new administrative procedure to challenge a patent's validity without having to go to law and measures to limit the awards of treble damages for infringement.

The IPKat welcomes this approach to the problems of patent abuse. It recognises that patents can be used anticompetitively and seeks to close the specific loopholes that allow this to happen while at the same time acknowledging that the patent system is fundamentally OK.

More patent abuse here
More trolls here, here, here and here

Sunday, 6 June 2004

IMITATION OR FLATTERY: HONDA SUES FOR REAL DAMAGES


Findlaw.com reports that Honda Motor Co. is suing China's biggest private motorcycle maker, Chongqing Lifan Industry Group Co., accusing it of pirating the Japanese company's logo, a Shanghai court said last Friday. Honda is demanding more than 17 million yuan ($2 million) in compensation and legal fees from Chongqing Lifan, claiming that the "SOR" logo used on its motorcycles looks too similar to an "SCR" logo registered by Honda as its trade mark in 1999. Officials at the Shanghai No. 2 Intermediate People's Court have apparently confirmed that the case was being heard there, but would not comment further. Lifan denies copying Honda's logo or products

Another case between Honda and Lifan is pending in Beijing's No. 2 Intermediate People's Court. In that case, Honda said Lifan used the name "Hongda" on its products - a name the Japanese automaker contends is too similar to its own. It is asking for more than 25 million yuan ($3 million) in compensation. Chongqing Lifan, set up in 1992 by entrepreneur and former college professor Yin Mingshan, began exporting motorcycles to Japan in 2001 and holds a large share of the market in Vietnam. The company has also branched into home appliances, wine making, security doors and financial services. It also owns a soccer team, the Lifan Football Club.
Given the high profile of Honda’s brands and the large amounts of money at stake, the IPKat will be watching this case carefully: it will send out a clear message as to the extent to which China’s centrally controlled economy is capable of protecting foreign IP rights against what appear to be blatant officially sanctioned rip-offs.

Things SOR stands for here
Things SCR stands for here
Chinese piracy here, here and here
China’s response to piracy here and here
Imitation: flattery or thievery? Click here, here and here

Friday, 4 June 2004

IRISH RE-JOYCE AS COPYRIGHT ACT AMENDED

Alan Cunningham of Queen Mary Intellectual Property Research Institute has brought the furore over the copyright in James Joyce’s Ulysses to the IPKat’s attention. The National Library of Ireland are planning an exhibition of manuscripts of Joyce’s work to coincide with Bloomday, 16 June (the date on which the action in Ulysses in meant to have taken place). However, Joyce’s estate has argued that such a display of the documents could breach its copyright in Joyce’s works. This has caused the Irish Parliament to pass emergency legislation, the Copyright and Related Rights (Amendment) Bill 2004, to “remove any doubt as to the right of any person to place literary or artistic works protected by copyright or copies thereof on public exhibition without committing a breach of copyright”.

The IPKat is somewhat startled by all the fuss. He doesn’t think that displaying a copy of a literary work falls within the definition of infringement anyway, unless it counts as a performance of the work. He’s also quite alarmed at the impact the Joyce estate can have as a result of merely intimating that it is contemplating an infringement action.

Bloomsday here, here and here
Kidney recipes here and here

Thursday, 3 June 2004

ARE US BRANDS LOSING THEIR LUSTRE?


This from Freepress, via Adbusters: consumers are sending “warning signs” to US brands, according to Patrick Barrett. He writes that declining respect for American cultural values, exacerbated by the crisis in Iraq, is having a potentially disastrous effect on the image of US brands such as McDonald's, Coca-Cola, Nike and Microsoft. This is the conclusion of a new worldwide study of consumer attitudes. According to NOP World, the number of people who like and use US branded products has fallen significantly over the past year, while brands perceived to be non-American have remained relatively stable. Tom Miller, the managing director of NOP World, said worsening attitudes to the county's products could damage US business.

"It's not like there's a massive boycott. Instead, it seems to be an erosion of support. It's not falling off the face of the earth, but it is clearly a warning sign for brands."
Surveying the attitudes of 30,000 consumers worldwide, NOP found the popularity and consumption of US products had declined for the first time since the research programme was launched in 1998. Until 2002, brands such as McDonald's and Coca-Cola were notching up healthy annual growth in terms of use and familiarity in international markets. However, last year NOP discovered that the growth in popularity of all major consumer brands - including those from Europe and Asia - had stalled. Over the past 12 months the positive trend has gone into reverse, with US products hardest hit. The number of non-American consumers who "trust" Coca-Cola had fallen from 55% to 52%, while McDonald's rating had slipped from 36% to 33%, Nike's from 56% to 53% and Microsoft had fallen from 45% to 39%. The total number of consumers worldwide who "use" US brands was found to have fallen from 30% to 27%, while non-American brands remained stable at 24%.

The IPKat wonders how the survey distinguishes between a decline in brand popularity which is caused by a brand being American and a decline caused by health or investment concerns.

Politicisation of brands here, here and here
More on brand surveys here and here

Wednesday, 2 June 2004

ON CLICKWRAPS AND COMPETITION


As of 1 May 2004, the EU's new Technology Transfer Block Exemption, Commission Regulation 772/2004, came into effect. That Regulation exempts various intellectual property licences, including for the first time software licences, from being void under Article 81(1) of the EC Treaty, if they are not likely to distort competition within the single market or a substantial part of it.

The IPKat has been trying to figure out a set of facts in which the terms offered by a clickwrap licence to an unknown licensee might prima facie fall within the scope of Article 81(1) and thus require the benefit of the Block Exemption. If readers have any suggestions, can they please post them below or send them here.

EVEN IF YOU HATE SPORT...


... you will be enthralled by next Tuesday's brace of European Court of Justice Opinions. Three of them (Cases C-46/02, C-338/02 and C-444/02) relate to the efforts made by Fixtures Marketing to establish its entitlement to enforce database rights in UK and Scottish football Premiership fixture lists against businesses that extract data relating to football fixtures and use them for betting purposes. The fourth, Case C-203/02 British Horseracing Board v William Hill, relates to the control of the right to exploit commercially a vast and complex database of horses, riders and racing fixtures which the BHB maintains and operates at great expense.

The IPKat hopes to bring you news and comment on the Advocate Generals' Opinions in these cases as soon as it is available, so watch this space.

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