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

Tuesday, 31 January 2006


Tam Lin rides again

The IPKat has received this intriguing piece from his New York friend Miri Frankel, from the New York Times. It begins:

"Fairyland was in turmoil. During a tech rehearsal for the October 2004 Off Broadway production of "Tam Lin" — a play about a clash between mortal and immortal worlds — a real-life clash threatened to derail the show. Exactly what happened has become, literally, a federal case, and the sides agree on very few details. Did the playwright, Nancy McClernan, insist that the director's staging was incompetent? Did the director, Edward Einhorn, refuse to alter it? Did the producer, Jonathan X. Flagg, smash some furniture on the set? One thing's clear: the morning after the tech rehearsal, after two months of unpaid work, Mr Einhorn was fired.

... Ms McClernan and Mr Flagg figured the show must go on. With the help of an assistant (who eventually received the program credit for direction), they supervised the remaining rehearsals, either largely restaging the play or retaining most of Mr Einhorn's contributions, depending on whose side you believe. In any case, "Tam Lin" opened, ran for its scheduled 10 performances and closed. But the drama was not over. Soon playwright and producer were embroiled in a lawsuit ....

The main interest of that suit, ... scheduled for trial in April, is not whether an artist deserves to be paid for work his employers deem unsatisfactory. What's really at stake is something much larger, because Mr Einhorn claims in his complaint that his staging contributions to "Tam Lin" — contributions that his former collaborators say they excised — constitute a copyrighted work of intellectual property, owned by him, and that the defendants must therefore pay for infringing the copyright. When the lawsuit was filed in October 2005, a new run of the play was already in rehearsal, this time directed by Ms McClernan herself, who had always intended to make "Tam Lin" an annual Halloween event. Because Mr Einhorn says that even these new performances represented unauthorized use of his work, the potential tab, based on the maximum allowable statutory damage of $150,000 per infringement, is now up around $3 million, not including several other remedies he is requesting — along with his original $1,000 director's fee.

Under the circumstances, it seems questionable whether "Tam Lin" ... will return in 2006. But many playwrights, including Ms McClernan, feel that a more dangerous threat is lurking in Mr Einhorn's copyright claim: the kidnapping of their plays. As a result, the famously collaborative process of theater-making is now shadowed by questions. Are directors engaged in anything akin to the kind of authorship protected by copyright laws? If so, what's to stop them from demanding payment whenever a play they once directed is revived? And what would that mean to the free flow of ideas in an art form that borrows heavily from all available sources?".
The article ends:

"The real drama, though, is the one being played out between playwrights, who according to tradition were kings in the theater, and directors, whose job didn't exist as such until semi-cultic figures like Stanislavski advanced the role. Since then, playwrights have looked on in horror as people who used to be glorified actors gradually usurped their power. The usurpers have long since conquered Hollywood, where writers are positioned so far below directors on the totem pole, they're basically underground. Now they are threatening the playwrights' ancestral home, claiming, with some anxiety of their own, not just power but also paternity. Mr. Einhorn put it this way: "A director gives physical and visual life to a text. In many ways, it is similar to that of an illustrator. I work with illustrators on my books" — he is the author of two "Wizard of Oz" sequels — "and I have had people comment, 'The book is half what you've written and half the beautiful pictures.' They are separate but interconnected. And even more so onstage, one could not exist without the other."

... The "Tam Lin" lawsuit may not decide the matter, but it will probably inflame passions further. Mr. Shechtman is champing at the bit. "If it's truly a collaborative art form, then why is it only the author who participates in the subsidiary rights that flow from a successful New York production?" he asked. "The appropriate resolution is to give fair credit to all the artists' contributions. One day, it may end up that the author gets 80 percent, the director 10 percent, the original cast X and the designers Z. Because, at bottom, this is all about money."

No wonder playwrights are worried. Even the usually unflappable Paul Rudnick is rethinking his options. "From now on," he said, "I'm only going to have my plays directed by lawyers".
The IPKat watches with excitement, not only because of the legal and socio-cultural dimensions to this dispute but because he is a bit of a Tam Lin enthusiast himself. Merpel says, why shouldn't stage contributions be protected? Under UK law, are they not potentially protected as "dramatic works" under s.3 of the Copyright, Designs and Patents Act 1988?

More on the legal dispute here
More on the Tam Lin legend here, here and here
Robert Burns' version of "Tam Lin" here
Classic rendition of "Tam Lin" by folk-rock band Fairport Convention and spine-tingling vocalist Sandy Denny here (scroll down to 'Listen to Samples', item 7)


Solar power not exhausted

The IPKat found Sun Microsystems Inc v Amtec Computer Corporation Ltd [2006] EWHC 62 (Ch), a Chancery Division yesterday from Mr Justice Warren, so far available only on the Butterworths' (LexisNexis) All England Direct subscription service.

Sun owned various trade marks. A Danish intermediary, KS, supplied Amtec with Sun Fire V240 servers that it obtained from a company in the UK. These Sun Fire V240 servers were neither imported into the European Economic Area, nor put on the market anywhere in the EEA by Sun or with its consent. Sun sued for trade mark infringement. Amtec argued that (i) it thought KS was a reputable European source of Sun products and (ii) it was a term of the contract between Amtec and KS that the servers be of European Union origin.

After Sun sought judgment in default or summary judgment, Amtec conceded that it had infringed Sun's trade marks, but said that it had done so innocently and reasonably, in the belief that it was allowed to do what it did.

Warren J had no time for Amtec's arguments. He held that it was not a defence for an importer of infringing goods to show he had taken all reasonable steps open to him to establish that goods had been put on the market by Sun, or with its consent. Amtec was therefore an infringer unless it could show that its servers had been put on the UK market by Sun or with its consent.

Giving judgment, Warren J held that Sun was entitled to orders designed to identify any other infringements Amtec had perpetrated.

* Following an enquiry into those infringements, Sun would be given the chance to make an informed election between damages and an account of profits.

* The correct balance to strike between the parties was to grant an injunction, but to permit Amtec to carry on selling Sun servers sourced in accordance with specified conditions.

* Sun would keep its right to an injunction, damages or an account of profits if there was any further infringement.
The IPKat has never been happy about regional trade mark exhaustion and feels quite uncomfortable about parallel traders having to pay damages for selling genuine goods that appear to have been sold in good condition. When IP law is coming under fire from all sides, this sort of protection is the most difficult to defend on moral, as well as economic, grounds.

Follow the Sun here and, less obviously, here

Glass patent case: not much to see

The patent infringement case of Tamglass v Luoyang, noted by the IPKat on Friday, is now available here in full on BAILII. As he predicted, it's mainly fact-based and contains virtually no law at all.

Letting go of IP rights: an Italian writes ...

The IPKat's friend Andrea Glorioso writes:
“On reading your report of 26 January 2006 on the FT Workshop "Letting go of intellectual property rights?" I cannot but wonder if the author realizes that both Open Source Software and Wikipedia (and related instances of "IPR-less innovation") do in fact rest upon IP rights—namely copyright.

The fact that one can choose a model of licensing over another does not mean that IP is not there. Quite to the contrary - it would be difficult to license, or to contract over, a right you don't own in the first place; indeed, it would be quite hard for projects such as Linux or Wikipedia to thrive, if it weren't for properly enforced and managed property rights (although the extent to which participants to these projects are aware of the IP dynamics involved, or are rather motivated and shaped by a sort of "customary norms", is an open question).

A better title for the article would have been "Letting go of absolutistic views on intellectual property rights". But in this world it is apparently easier to have an absolutistic view clash with another absolutistic view, rather than trying to reason and understand where the middle path lies".
The IPKat agrees. Merpel adds, Andrea’s right about the clash of absolutist views—just look at the so-called debate over the European Union’s proposed Computer Implemented Inventions last year.

Journal of Intellectual Property Rights

IPKat co-blogmeister received this message from Mrs Madhu Sahni:
“You will be glad to know that our institute, a constituent unit of the Council of Scientific & Industrial Research, Govt of India, is publishing a bimonthly IPR journal entitled Journal of Intellectual Property Rights to serve the professionals handling IPR issues, scientists, technologists, and managers of R&D institutions and industry. It also caters the needs of all those interested in IPR matter, including academicians, policy makers and managers in S&T departments/agencies and industries. It is a peer-reviewed journal.

The Journal,the only one of its kind in India, has completed its ten years of publication in 2005. It publishes contributed/invited articles, case studies and patent reviews; technical notes on current IPR issues; literature review world literature on IPR; national and international IPR news, book reviews, and conference reports. Besides contents and abstracts full text of the papers is also available on our website

The journal has a wide circulation among the growing intellectual property community in India as well as in other countries".
The IPKat wants to clarify that this journal is unconnected to Oxford University's Electronic Journal of Intellectual Property Rights, despite their near-identical titles. Merpel adds, the Indian publication has been going since 1996. Oxford's started two years later. Do you think they'll sue?

More Anglo-Indian intellectual property confusion: EIPR (left) v EIPR (right)


An IPKat reader wishes to know, have there been any cases which have interpreted the notion of the "author's own intellectual creation" under the protection of databases through standard copyright (rather than the sui generis database right)? How does this differ from the traditional 'sweat of the brow' concept in UK copyright?

The IPKat would be grateful if you would send your bright ideas to him and he will forward them to the questioner.

Monday, 30 January 2006


Copyright talk at QMIPRI

Next Monday (6 February) at 12.30pm Lior Zemer, Lecturer in Law at the University of Leicester and Visiting Assistant Professor at Boston University School of Law, will be speaking on copyright at QMIPRI. His subject is "A Riposte to Lockean Copyright Theorists".

John Locke (almost) live at QMIPRI

All are welcome and there’s no charge for attending but please RSVP to Ilanah. Full details are available here.

Japan examines copyright law on broadcasts reports that the Japanese Intellectual Property Strategy Headquarters is campaigning for revisions to the copyright law that will make it easier for ISPs to provide television programmes over the internet. Currently broadcasters need only pay fees to copyright owners after the programme is aired by conventional telelvision, but broadcasters and ISPs must obtain copyright clearance before showing any programme over the internet. The need for prior approval is said to have blocked the development of internet television services.

The proposed revision of the Copyright Law would redefine the distribution of TV programs offered to homes through communication facilities, including fiber-optic cables and broadband services, as "wired broadcasting," making a wider category of transmission types eligible for the ex post facto approval system. Any bill that might result from the Strategy HQ's work is expected in December 2007.

The IPKat thinks that this makes a lot of sense. It’ll open broadcasting up to competition and the distinction between conventional TV broadcasts and internet broadcasts doesn’t seem to be one based on principle.


Latest IP Review

The Winter 2005/6 issue of CPA's freebie client magazine IP Review has arrived. It has put on a good deal of weight over the winter, since it's now risen to 44 pages (if you count the covers).

Talking of the cover, it's got a really scary picture of patent agent Dr Caroline Sincock, Chief Intellectual Assets Officer of Glasgow's Intellectual Assets Centre (seen here, above right, smiling). Dr Sincock's brief is to raise awareness of IP as assets and to accustom Scottish businesses to thinking in terms of them. The website's very impressive. Scotland, once a leading centre of technological advance, is now more likely to summon up associations of deep-fried Mars bars (left), Trainspotting and a dreadful international football team. The IPKat sincerely wants this initiative to succeed and wishes the Centre every good fortune.

Other features worth noting in this issue are

* Daniel Greenberg's review of the IP set-up in South Africa and

* Balsamically fruity cult litigant Ralf Sieckmann (right: remember his ECJ litigation over the registration of olfactory signs as trade marks?) asks whether holograms will provide the next generation of trade marks.
If you want your own copy of IP Review, email CPA here.


The first issue of Butterworths' Intellectual Property & Technology Cases for 2006, edited by Michael Silverleaf QC (right), contains five case reports, this time all from the UK. Two are House of Lords decisions (Naomi Campbell v Mirror Group Newspapers No.2 , on whether unsuccessful defendants have to pay the full whack when claimants have made conditional fee arrangements and Synthon BV v SmithKline Beecham, the latest in a series of "last words" on disclosure and enablement in patent law).

There's also PPL v Reader, a colourful little decision of Mr Justice Pumfrey on whether the cost of getting a naughty defendant committed for contempt of court can be compensated through an award of additional damages, plus two Court of Appeal decisions: Nokia v InterDigital (stay of proceedings in a patent dispute) and Fraser-Woodward v BBC (fair use of celebrity snaps of the Beckhams in TV programme about tabloid newspapers).


Doom and gloom? Or are patents not the acid test?

The IPKat was fascinated by this doom-and-gloom article in Contractor UK, entitled "Europe plays a losing patent game". The article reports a speech by the eU Commissioner for Science and Research Janez Potocnik (right). It reads (in relevant part):

"European companies are failing to increase their market share of the world’s commercial technologies, with the US now filing more than twice as many patents internationally and across the continent. Despite being recognised as one of the global leaders in science, aerospace and telecommunications, the EU has a poor record at converting ideas into technologies compared to the dominant superpower. Such a warning came this week from Janez Potocnil (sic), EU Commissioner for Science and Research, who told Europe’s innovators that their creations no longer can compete on price alone [...].

Even though one third of the world's scientific knowledge is sourced from the EU, key challenges remain in tackling the competitive forces posed by the fastest growing nations, Potocnik said. “European companies apply for fewer than 170 European and US patents each year per million inhabitants, compared with 400 for American companies,” he told delegates at an Austrian science academy".

Left: US industry has a chilling effect on its European competitors

The IPKat is unimpressed. Has anyone shown that the success of the US corporations can be correlated to the larger number of patents taken out, as against their superiority in fields such as marketing and branding, their ability to build on a homogeneous credit-rich (or debt-laden) home market, or greater zeal for outsourcing (look how much Germany still manufactures - and look at the weak performance of US corporations that still manufacture in the US, such as General Motors and Ford)? Also look how much of the US ascendancy is related to their dominance of the media/communications sectors and their more relaxed view of what constitutes anticompetitive practices. Take away the US patent superiority and the US would still dominate. Merpel says, and what proportion of US patents are either desperately weak or of no serious commercial value? Europeans just don't go for that sort of patenting.

Letting go of intellectual property rights?

The Financial Times' Workshop 3 asks the question: "are intellectual property rights defensible any more?". Yes, says the IPKat - but the argument of the Workshop runs like this:
"Suppose they are not. The spread of the internet, the rise in consumer expectations in the developing world, the increasing technological possibilities for stealing ideas and the understandable clamour to tackle pandemics, such as Aids, are all threatening IPR. If current trends continue on steroids will it simply become impossible to protect intellectual property rights by 2015? If so, what challenges and opportunities would that throw up?

Some companies are already proving they can thrive in this world: open source software being the most notable example. Public goods are also being created: Wikipedia, the free online encyclopaedia that is written and edited by the public, is a good example.

Is counterfeiting even helping to increase the desirability of brands? Some companies privately seem to think so. “It is terrible that you are stealing our stuff, but if you are going to steal anyone’s then steal ours,” says one observer. Will an IPR-less world mean there will be fewer poor people, fewer inventions, and fewer lawyers?

The third CEO workshop considered this new world focusing on the implications for the pharmaceutical, software, and media and entertainment industries. [...]

(1) Pharmaceutical

The first break-out group concluded the fundamental question was: who would spend the hundreds of millions of dollars to invent new drugs if patents were no longer enforceable? Their answer: research would have to be revolutionised. By making all research publicly available, as with online encyclopaedias, you could create collective, collaborative research centres, speeding up development and reducing costs. A scientist in Shanghai, say, could suggest the missing piece in a theoretical jigsaw being put together in California. “As all knowledge became public people would combine it in a different way to create ideas. This could be highly economically efficient.”

The big pharma companies, of course, would hate the idea. Research is after all their heart and soul. But governments could step in to pump-prime research, perhaps by levying a health tax on their citizens. Publicly funded research might even find treatments for those “unprofitable” diseases in the developing world that traditional pharma companies have no financial incentives to tackle. You never know, universities might even get back to their original purpose of publishing research rather than patenting their findings.

“I would have shot my researchers in my company if they were talking about our ideas outside the company but I think a 12-year research project that we conducted could have been done in half the time and at half the cost [if there was such public collaboration],” said the chief executive of one processing company.

However, the assembled executive said this hypothetical model would certainly not spell the death of the pharma companies. They would still have phenomenal strengths in terms of industry expertise, manufacturing capability and marketing know-how. Just as the consumer electronics companies had got used to surviving on thinner margins, so the pharma companies might have to adopt a new business model.


The IT entrepreneurs in the room reckoned that the differentiation between highly sophisticated software and commodity output would widen in an IPR-less world. People would still pay good money for critical software that ensured your aeroplane landed safely or helped a surgeon operate on your kid (or for that matter they would happily buy a drug of trustworthy provenance that was proven to work). But it would be extremely difficult to protect non-critical software, just as it is almost impossible to stop DVDs being pirated. Releasing software to the public and then providing support services to customers might provide one alternative income stream.

Companies could attempt to increase the barriers to copying. They could do more to protect their trade secrets by “in-sourcing” all development, and splitting research between different teams so that none had a view of the entire project. They could also try to bundle hardware and software just as the iPod personal players only work with iTunes software. Or they could create “chains of trust” with consumers enabling their products to be approved by electronic word of mouth as currently happens on the eBay auction site. There seemed to be unanimity that personalisation of products would help retain consumer loyalty.

One particular challenge for both the pharma and the software industries in this new world would be how to treat their employees. How could you stop them from using valuable information gained at the workplace for personal gain? [...]

(3)Media and entertainment

Several strategies were floated. First, steal whatever is out there yourself. Inward-looking organisations could benefit hugely from copying ideas (or even products) from rivals. But media and entertainment companies would also need to personalise their products or experiment with new financing mechanisms (such as electronic “tipping” for articles on websites). “You have to have something unique so that people come to you. It being secret is one. But it may only be one way of many.”

Companies could also aim to make money from context rather than content. A film company, for example, could generate income by providing a stimulating cinema experience rather than selling the film itself. But the film industry might also have to face some unpleasant truths.

“Since the time of the pharaohs the pyramids have not been built. We should expect the death of Titanic the movie. The idea of spending a quarter of a billion dollars on a film about a sinking ship” is no longer going to work, said Jonathan Zittrain, professor of internet governance at Harvard and Oxford universities. [...]".
The IPKat reminds readers that the Soviet Union and its satellites developed a model that did not depend on IP rights. With a large and heavily regulated domestic market, admirable social aims and carefully-aimed state investment, the USSR and its tributaries produces little to improve the health, the comfort or the well-being of those members of the consumer society who complain so much about the evils of IP today. Is it not possible that the environment of tension and conflict engendered by IP rights is far more likely to produce innovation and the advance of science than the artificial cultivation of new business (or non-business) models. The only field in which the USSR's innovations matched those of its rivals was that of armaments - the only "market" over which it could not retain control.

Sunday, 29 January 2006


USINFO reports that the US Trade Representative, Rob Portman, has announced that the US has decided that Pakistan is eligible for preferential tariffs under the Generalized System of Preferences. A group of IP owners had argued that Pakistan was not doing enough to protect intellectual property to be eligible, but Portman has announced that the US is satisfied in particular with steps that Pakistan has taken against optical disk piracy. In particular, Portman has praised the “concrete results, including destruction of pirated optical disks, plant closures, arrests, and confiscations of imported disks" that have resulted from Pakistan’s enforcement efforts.

The IPKat says that it’s nice to hear the US satisfied with enforcement measures for a change.


Judge sees through transparent defence in glass patent case

Another scoop for the Butterworths' All England Direct subscription-only service is a note on Tamglass Ltd OY v Luoyang Glass Technology Co Ltd and another [2006] EWHC 65 (Ch), a Patent Court decision of Mr Justice Mann on Friday 27 January 2006.

The dispute in question revolved round a patent for a machine that incorporated the process of heating, bending and tempering glass into a single almost continuous process. Luoyang was the manufacturer of a machine which, Tamglass said, infringed its patent. A second defendant allegedly infringed the patent by keeping and using a machine supplied by Luoyang. Luoyang agreed that its machine fell firmly within the patent's claim but, citing several instances of what it maintained was relevant prior art, counterclaimed for revocation on the usual grounds (lack of novelty; no inventive step). The second defendant indicated that it was content to be bound by the court’s decision and played no part in the trial.

Below: Luoyang is famous for nobler crafts than patent infringement

Mann J gave judgment for Tamglass. On the evidence, the alleged prior patents or applications submitted in support of Luoyang's counterclaim neither anticipated the patent nor rendered it obvious the inventions claimed in the patent.

The IPKat suspects that Luoyang was just making token resistance since, while Tamglass took the trouble to instruct specialist counsel, Luoyang simply appeared through a company representative. Merpel says, it's not really much of a scoop, is it? When the full transcript of the judgment becomes available, it'll probably have little or no law in it all like, like most cases that haven't been seriously contested in court.

IP blogs from Poland

The IPKat has just been introduced to an intellectual property weblog from Poland, Poland IP Law Resources, by lawyer Dariusz (Darek) Czuchaj. There's not much content on it right now, but Darek will kindly oblige if there's enough interest in it. So, if you want news and views from Poland, in English, email Darek here and tell him. It contains a link to Tomasz Rychlicki's, which is a fairly busy English language news source containing links to developments in almost every country in the world - including Poland.

The IPKat is pleased to see IP blogging spread and hopes that these early efforts will lead to greater awareness of IP law and practice - both its good points and its bad side - in Eastern Europe.

What a performance!

The IPKat is informed that the Performances (Moral Rights etc) Regulations 2006 (2006 No.18) were laid before the UK Parliament on 11 January 2006. In the absence of anyone taking notice of them and violently objecting, the new Regs become law on 1 February 2006 (i.e. this coming Wednesday).

Amending the Copyright, Designs and Patents Act 1988 once again, the Regulations create two new moral rights for performers of "qualified performances". These are (i) the right to be designated as the performer and (ii) the right to object to derogatory treatment of one's performance. Hmm, thinks the IPKat. It will only end in tears ... unless (adds Merpel) the courts can be persuaded to grant damages at a level that will leave the successful performer with anything other than a bruised pocket even when he succeeds.

Saturday, 28 January 2006


A new Patent World

It's still a fairly nippy January, but the February 2006 issue of Patent World, published 10 times a year by Informa, has already arrived.

The cover story is a review of last year's big patent cases from the US, UK, Germany, Japan, France and China which consumes most of this month's issue - but there's also a feature by Yitai Hu (left) and Sean P. DeBruine (right) (Akin Gump Strauss Hauer Feld) on the activities of the International Trade Commission.

The title of this feature ("To the Rescue") and its description in the Contents ("Growing in popularity") both suggest that this piece has been written from an American standpoint. The IPKat hopes that subsequent issues will carry pieces on the same topic as viewed from outside the USA. Merpel says, perhaps the best solution is for every country to have its own ITC ...

Latest developments on Developments

The IPKat has been informed by one of his solicitor friends that the current edition of Developments, a free quarterly magazine produced by the UK government's Department for International Development, has some very interesting articles on technology in the developing world which also touch on the open source debate. She says that technology is changing the face of the developing world and high quality open source software is helping this. To quote an article on the website:

"In Zambia a street market vendor is paying for his order of Coca-Cola by text message. In Tanzania a candidate in the Presidential elections has been awarded his degree after completing it online through distance learning. In Nairobi, a daughter is sending money to her father in rural Kenya with prepaid 'pay as you go' airtime. And in Namibia schoolchildren are surfing the net, sending emails and writing essays thanks to FLOSS, open source software written by enthusiastic programmers who don't want any payment".
The IPKat is really glad that enthusiastic programmers who don't want payment are prepared to do this sort of thing - but he recognises that the remarkable speed of software development over the past 25 years has been the result of mercenary work by commercial enterprises, often funded by cash investment from people who want a return on their capital. Merpel says, I notice that it's the software that's written for nothing but the Coca-Cola that gets paid for ...

More info on the software here.


Google wins cache victory

MediaPost reports that Google has won an American copyright infringement case. Author and lawyer Blake A. Field argued that Google’s cached page function (by which it makes copies of websites so that users can access the copies if the original website goes down) was infringing. However, District Judge Robert C. Jones found that Google’s activities constituted fair use.

There has been speculation about whether this bodes well for Google in its attempts to scan books and make them searchable via its service. The IPKat isn’t convinced though. The GooglePrint service would compete with conventional published editions whereas the cached page service comes into its own when the original website isn’t working.

More on Google’s caching service here.

Drawing bugs VW

Autoblog reports that Volkswagen has sent a cease and desist letter to American artist Don Stewart. The letter concerns a pen and ink drawing of a VW Beetle with fantasy decoration. VW claim that the sale of copies of the drawing infringes its trade dress and seeks to

"capitalize on and profit from the goodwill and reputation of VWoA by misappropriating VWoA's registered trademarks and trade dress in its products."

Stewart’s drawing

The IPKat can’t understand this. First of all, the picture appears to be an affectionate tribute and not really worth making a fuss about. Secondly, it’s rather hard to succeed on a US misappropriation claim.

Friday, 27 January 2006


Cat caption winner

The IPKat has now received news of the winner of his Cat Caption Competition from the adjudicator, the bubbly and vivacious Charlotte Presse, of CPA.

The winner is Sarah Pollock's "The IPKat - fully kermitted to the cause of intellectual property ...".

Well done, Sarah - you win complimentary admission to The Business of IP: 10 questions the CEO will ask in the next 5 years (conference details here). Get in touch with Charlotte here, Sarah, so that your registration details can be arranged. Charlotte has also picked out some near misses, for honourable mention: they are as follows:

David Brophy: (i) "Yes - the illusion was complete! Only a series of nonchalant hops down the garden path to the pond stood between Mr. Tiddles and his lunch" and (ii) "Scooter paused, a horrible realisation sinking in. The disguise was perfect, and surely the goldfish would fall for it. But would his new ears fit through the catflap?".

Kate Colbourne: (i) "Someone just hadn't got the hang of the idea behind leapfrog" and (ii) "No one at the pond was more surprised than Freddie himself, when he coughed up a rather large fur ball".

Melonie Atraghji: (i) "Why can't I get that sodding ring-tone out of my head?"" and (ii) "Gene-splicing. Right or wrong?".

Nicholas Braddon: (i) "Complaining of a cat in its throat, the frog was too ill to go into the office"; (ii) "The auditions for next year's DFS adverts had taken a bizarre turn".

Thanks, all of you - winners, near-winners and those whose talent has yet to be properly recognised! Gathering the captions in turned out to be a lot of fun.

Thanks, also, to CPA and IAM for their kind support of this competition.

Frog recipes here and here


European patent judges force volte-face by Commission

The IPKat picked this up in the current issue of Legal Week, which reports how senior judges, campaigning to secure a European patent court, have won their first major victory by forcing the European Commission to drop its outright opposition to their proposals. With some reluctance the Commission has agreed to consult on the plans, which are backed by an array of top European intellectual property judges including Lord Hoffmann and Lord Justice Jacob from the British Isles.

The Commission's survey, blogged earlier by the IPKat here, asks a wide range of IP practitioners and organisations across Europe for their feedback on the blueprint, dubbed the European Patent Litigation Agreement (EPLA). The EPLA proposes the establishment of a unified European court to hear appeals from eight local ‘sub-courts’ in certain key jurisdictions. The request for feedback on the plan marks a significant policy shift for the Commission. The consultation ends on 31 March 2006. Unnamed UK IP lawyers have told Legal Week they now hope a treaty on the EPLA will be approved by European Union member states by the end of the year. A unified court could then be in place within three years.

The Commission had wanted to create a centralised court in Luxembourg to police a new European patent. The IPKat says, forget it.

What the Commission questionnaire says:

"Section 3 – The European Patent System and in particular the European Patent Litigation Agreement

Since 1999, States party to the European Patent Convention (EPC), including States which are members of the EU, have been working on an agreement on the litigation of European patents (EPLA). The EPLA would be an optional litigation system common to those EPC States that choose to adhere to it.

The EPLA would set up a European Patent Court which would have jurisdiction over the
validity and infringements of European patents (including actions for a declaration of noninfringement, actions or counterclaims for revocation, and actions for damages or compensation derived from the provisional protection conferred by a published European patent application). National courts would retain jurisdiction to order provisional and protective measures, and in respect of the provisional seizure of goods as security. For more information see [] Some of the states party to the EPC have also been tackling the patent cost issues through the London Protocol which would simplify the existing language requirements for participating states. It is an important project that would render the European patent more attractive.

The European Community is not a party to the European Patent Convention. However there is Community law which covers some of the same areas as the draft Litigation Agreement, particularly the "Brussels" Regulation on Recognition and Enforcement of Judgments (Council Regulation 44/2001) and the Directive on enforcement of intellectual property rights through civil procedures (Directive 2004/48). It appears that there are three issues to be addressed before EU Member States may become party to the draft Litigation Agreement:

(1) the text of the Agreement has to be brought into line with the Community legislation
in this field;

(2) the relationship with the EC Court of Justice must be clarified;

(3) the question of the grant of a negotiating mandate to the Commission by the Council of the EU in order to take part in negotiations on the Agreement, with a view to its possible conclusion by the Community and its Member States, needs to be addressed.


3.1 What advantages and disadvantages do you think that pan-European litigation arrangements as set out in the draft EPLA would have for those who use and are affected by patents?

3.2 Given the possible coexistence of three patent systems in Europe (the national, the Community and the European patent), what in your view would be the ideal patent litigation scheme in Europe?".

The IPKat was initially sceptical of the EPLA plan, but has now rather come round to it. Anything is more workable than the Commission's original proposals. But judges have a highly pathological view of patent disputes, since they only see the disputes that get to court. IP practitioners have many disputes that are resolved through negotiation, mediation or other means and their view of the court system is coloured by its broader context. It is thus vital to know what practitioners think.

EPLA documents here.

Treaty accessions

What do Azerbaijan and Benin have in common? Not a lot, you might think, but the IPKat knows better. Both have signed up for the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. In Azerbaijan's case the two treaties come into force on 11 April 2006 (see here and here). In the case of Benin the twin treaties operate five days later, on 16 April 2006 (see here and here).

Full list of all 58 WIPO Copyright Treaty contracting states here
Full list of all 57 WIPO Performance and Phonogram Treaty contracting states here
Number of Google hits for Azerbaijan + Benin: 46,400,000

Thursday, 26 January 2006


A cat in the public gallery has notified the IPKat of the outcome of today's Court of Appeal decision on Philips v Remington:

  • The Court of Appeal upheld Rimer J's judgment on the 452 mark, finding in Remington's favour. The clover leaf element was a mere embellishment and not an essential feature of the shape. This left the original "three head" mark which was function and hence barred from registration under s.3(2) of the Trade Marks Act 1994.

  • The Court of Appeal found in Philips' favour on the registrability of the device marks (pictures of three headed shavers). These were abstract and non-technical pictures. As such, they did not constitute the shape of the goods and so did not fall within s.3(2).
  • The Court of Appeal did not need to consider whether there was public recognition of the shape mark since. Public recognition was relevant to acquired distinctiveness, but not to the prior question of functionality under s.3(2).
The IPKat thinks that this all sounds very sensible. He looks forward to bringing you more detailed analysis in due course.


    Secret Symphony theft? You prove it! No, you disprove it!

    BAILII today carries this morning's pronouncement of the Court of Appeal for England and Wales (Lords Justices Buxton, Rix and Jacob) in EPI Environmental Technologies Inc and another v Symphony Plastic Technologies plc and another [2006] EWCA Civ 3, an appeal from the judgment of Peter Smith J.

    EPI provided Symphony with additives for use in making various thin film plastic products, the most important of which it somewhat unattractively called DCP509.Under its contract with EPI, Symphony was prohibited from analysing the additives. Suspecting foul play, EPI subsequently sued Symphony for breach of contract and breach of confidence. Peter Smith J was unimpressed with the allegations, holding that Symphony had neither analysed EPI's additives nor made any unlawful use of them.

    The Court of Appeal then heard EPI's appeal (in secret) as to whether the judge’s findings could be displaced. According to EPI, using copyright law as an analogy, if EPI could show that Symphony's way of making the additives was similar to its own, the burden of showing that Symphony had not breached contract and confidence then shifted to Symphony.

    The Court of Appeal rejected this line of argument. In its view the reasoning employed in copyright law illustrated not so much a rule of law as a rational weighing of evidence: if the degree of similarity between the original work adn the alleged infringement was unlikely to have come about by coincidence, the defendant had to explain it away. In this case, however, a comparison of two ways of making additives did not raise even a remote inference of copying one from the other. Since EPI's additive was still secret, Symphony could not have copied it, and there wasn't any apparent exact copying either. The components of both parties' processes were functionally the same, but that similarity was not enough to raise an inference of copying. Finally, there was ample evidence on which the judge could have concluded that there was no copying.

    The IPKat thinks the Court of Appeal is right in strict law: the copyright precedents are part of copyright law and were evolved to address issues relating specifically to copying, while breach of confidence is a far more amorphous body of law, one in which copying usually plays only a minor part. However, where the particulars of the alleged breach of confidence indicate that there has been direct step-by-step copying of an industrial process, he wonders whether the Court of Appeal would have reversed the decision of a Chancery judge who considered that the close copying was sufficient to raise a rebuttable presumption of copying in the absence of a plausible explanation. Merpel wonders whether, in an ideal world, the burden of proof couldn't be given to the trial judge to play around with in the course of his pre-trial case management ...

    More on plastic additives here and here


    Has Philips had a close shave?

    Does anybody know the result of Philips v Remington, due to be decided today by the Court of Appeal? All the IPKat's usual sources have failed him, and his whiskers are getting twitchy in anticipation...

    The IPKat promises to share. If you want to tip him off anonymously, that's fine too.

    Trade marks event

    The IPKat has received notice of the following event run by Own-It:

    Getting it Registered - Free Trademark Event
    Date: Tuesday 21 February 2006
    Time: 6.00 - 8.00 pm
    Location: Rootstein Hopkins Space, London College of Fashion, John Princes Street, London W1

    Book your place here

    Own It gets a lot of questions and enquiries regarding trademarks, whether they are appropriate, what is the value of getting this type of IP protection, how do you search and register and what are the costs etc. This Own It event on trademarks will be given by Gareth Hicks of The Patent Office and will answer all of these questions and provide all the information you need to know before you take the next step in the legal process.
    Aspects that will be covered in the talk include: What to consider before applying for a trademark - Searching the trade marks database - How to apply to register your trade mark - Case studies - acceptable/unacceptable trade marks - The various trade mark registration systems - Unusual trade marks - The Patent Office website There will plenty of opportunity to ask questions at the end of the session.

    Please note that you will need to have an understanding of intellectual property to benefit from this talk.

    Speaker: Gareth Hicks Gareth Hicks is Team Leader of the Trade Marks preliminary search and advisory department and is also an ex-parte Hearing Officer. He started in the Trade Marks Directorate of the Patent Office in 1992 as a trade marks examiner.

    Event sponsors: The Patent Office -
    Location map:
    Book here

    The IPKat thinks it looks rather good.


    VW Variant CTM application hits a Spanish obstacle

    The Curia website has today posted, in French and German only, the decision of the Court of First Instance in Case T-317/03 Volkswagen AG v OHIM, Nacional Motor, SA.

    The IPKat thinks VW applied to register as a CTM the word VARIANT for goods and services in Classes 7, 12 and 37. NM opposed, citing its earlier Spanish registrations of the words DERBIVARIANT, DERBI VARIANT and VARIANTDERBI in the same Classes. It looks as if the Opposition Division dismissed the opposition (no likelihood of confusion; there was also some issue as to title to two of NM's marks) but the Board of Appeal annulled that decision, finding a likelihood of confusion with DERBIVARIANT. The CFI appears to have dismissed VW's appeal with costs, although it found on VW's behalf on one issue.

    If any French or German speaker could post a clarificatory Comment below, the Kat would be most grateful.

    Taking the PIS

    The most recent issue of Product & Image Security has just fallen into the IPKat's paws. Published by EPI (part of the ECI International Group), it is an attractively-produced bimonthly magazine that focuses on the problems of counterfeiting, forgery, product piracy, substitution and diversion as well as retail theft and product tampering, providing a forum for discussing available solutions and technologies. Topics that might just excite the interest of IP owners include holograms, product identification, authentication, traceability, brand image protection, security labels, tags, tickets and packaging seals.

    The January/February 2006 issue reports on the first Authentication Connections Forum, subtitled "Linking anticounterfeiting strategy with authentication technology". This forum will be held in Florida at the end of March. Sounds as if quite a few people there will be blessing the bad men whose illicit activities have resulted in their being sent there. Merpel adds, have you noticed where in Florida this forum is being held? It's Tampa - which to anyone involved in authentication technologies is a homophone of "tamper".

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