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).

Sunday, 31 August 2008

More recent books reviewed

Always an enthusiast for IP as it is affected by real trade issues, the IPKat was unashamedly excited at the prospect of getting his paws on the TRIPS Regime of Antitrust and Undisclosed Information, by the eminent scholar and gentleman Nuno Pires de Carvalho.

What the publisher's blurb says:

"In this brilliantly conceived and authoritative work the eminent intellectual property specialist Nuno Pires de Carvalho focuses on the mechanisms, obligations, and opportunities of trade secret protection under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). With the powerful knowledge base derived from his long experience both at the World Trade Organization (WTO) and the World Intellectual Property Organization (WIPO), he illuminates the crucial relationship of antitrust and industrial property, clearly demonstrating – in contrast to much “received wisdom” – the intrinsic pro-competitive nature of intellectual property and of industrial property in particular. Using an extraordinary wealth of practical detail, and offering hundreds of pointed hypothetical and actual examples, Pires de Carvalho dispels the murkiness around such essential concepts and provisions as the following:

* the inevitable interdependence of industrial property and antitrust law;
* abuses of patent rights and the vexed issue of patents and monopolies;
* the legal implications of international exhaustion under Article 6;
* the meaning of “balance of rights and obligations” under Article 7;
* divestiture and the fruits doctrine under Article 32;
* international cooperation in identifying antitrust violations in licensing agreements;
* protection of confidential information in court proceedings;
* protection of undisclosed test data against unfair commercial use under Article 39.3;
* the WTO Dispute Settlement Mechanism in the context of undisclosed information.

... It combines an easy-to-follow article-by-article commentary on the TRIPs Agreement with a theoretical scholarly analysis that makes of it an invaluable resource to all those who wish to understand industrial property rights at a deeper level. Lawyers, judges, scholars and government officials will find an abundance of information and legal analysis here that will help them identify antitrust issues and solutions to problems of trade secrets posed by the implementation of the TRIPs Agreement".
The IPKat, being a believer in the interdependence of industrial property and antitrust law, needed little convincing about the central core of the author's thesis. Nor did he need reminding that international exhaustion of IP rights is not the end of the world for IP owners, who are perfectly capable of achieving measures of protection even when they cannot prevent their own lawfully-made products coming back home to roost. Accordingly he was naturally sympathetic to this book -- which goes way beyond the narrow themes suggested by "undisclosed information" alone. He is also impressed at the trouble that the author has taken in looking over the parapet of international IP law and fixing his analytical gaze on real provisions of national law and indeed literature.

The arrangement of this book is also clever, promoting the analysis of Article 40 (Control of Anticompetitive practices in contractual licences) ahead of the main course, as it were, of Article 39 (protection of undisclosed information itself) since the contract is the most effective means of (i) disclosing undisclosed information while still keeping control of it or (ii) restricting the ability of another to compete -- depending on your bias. The IPKat hopes that, when the next edition of this book is published, the author won't feel obliged to be quite so polite and objective, though, and that he will allow himself the luxury of a little rant about the need to persuade people that TRIPs and the Paris Convention actually exist on the same planet and that you don't have to choose one in preference over the other if you can make them pull together.

Bibliographic data: Publisher: Kluwer Law International, 2008. ISBNs 9041126430 and 13 9789041126436. Hardcover, xiv + 404 pages. Price £89. Rupture factor: moderate. Book's web page here.

For those who believe that economics is not a heavy subject, the two volumes of Economics Of Intellectual Property Law, edited by Robert P. Merges is the perfect myth-buster. Professor Merges (Wilson Sonsini Goodrich & Rosati Professor of Law and Technology and Co-Director, Berkeley Center for Law and Technology, University of California, Berkeley, US) has put together a thumpingly heavy compendium of must-read materials for those whose allegiance to IP is biased towards the marketplace rather than towards the human creativity model more favoured by the civil law tradition.

What the publisher's blurb says:
"For this comprehensive collection, the editor has brought together key readings on the subject of the law and economics of intellectual property rights – patents, copyrights and trademarks. It provides a judicious selection of the most important published research on this crucial topic, drawing equally from the law and economics literature. It thus brings together frequently cited classic articles that are rarely encountered in a single published source.

The articles have been selected on the basis of three primary criteria: their continuing influence in legal and economic discussions; their longevity (important in a field where the volume of published work is very large and growing very quickly); and their relevance to contemporary theoretical and policy debates. The chosen writings delve deeply into theory, empirics, and institutional detail, ranging from Edwin Mansfield’s early, influential study on patents and imitation costs, to very recent work on the relationship between copyright law and the first amendment. This collection makes an indispensable desk reference for scholars of intellectual property rights".
The IPKat says, when reviewing a work of this nature there's no point in taking issue with the authors of the individual chapters -- the quality of a collection must be measured by its breadth of intellectual scope and relevance to the modern reader. While this collection scores highly on that count, the Kat wishes that the editor had added a paragraph or two to each of the entries, whether by way of explanation or disclaimer, rather than allowing the assembled scholars and thinkers to speak timelessly for themselves. For example, Stephen Breyer's classic "Uneasy Case for Copyright" -- a piece that inspired and influenced this particular Kat's thinking when he read it in 1973 -- could do with a note on its subsequent history and there should be some sort of warning as to the relevance, if any, of Schechter's "Rational Basis of Trademark Protection" to trade marks as they have operated as market tools in today's world.

Bibliographic data: publisher: Edward Elgar. Volume 1: xiv + 482 pages; volume 2 viii + 586 pages. Hardback 978 1 84542 545 6. Price £295 (with online discount from publisher's website £265.50). Rupture factor: danger of double hernia if not handled carefully. Book's web page here.

A fascinating and rewarding read is Competition Law And Patents: a Follow-on Innovation Perspective in the Biopharmaceutical Industry, by Irina Haracoglou. The author, a lawyer and independent researcher/consultant, does not produce a description of the law so much as a sonnet, a reflection of her curiosity, sharp insights, perplexity and frustration at the slippery nature of the balance which is her declared objective.

What the publisher's blurb says:
"Within the broad context of the relationship between intellectual property rights and competition law, this book takes the example of research tools in biopharmaceutical research and innovation to examine the complexities of this relationship, and the ways in which the balance is struck between these two fundamental policies of law. It addresses a question that is certain to become paramount in other industries also: how to strike the balance between initial and follow-on innovation so as to ensure that access to ‘essential’ research tools (or other fundamental elements to follow-on innovation) is not impeded".
What the IPKat says: like Nuno Pires de Carvalho's work on TRIPs and undisclosed information (reviewed above), this is an attempt to identify a balance twin the opposite dynamic forces of IP monopoly and antitrust; another point of similarity is that each author considers this balance in a small, specialist niche within IP -- and their niches have a high degree of overlap. But there the similarities end. For while Nuno Pires de Carvalho works on the wide international canvas of the provisions of TRIPs and international law, focusing down on to specific issues and problems, Irina Haracoglou works upwards and outwards, starting with real problems and moving out towards possible solutions. She has done a jolly good job here, for which she should be congratulated.

Bibliographic data: Publisher Edward Elgar Publishing, 2008. 272 pp Hardback 978 1 84720 599 5. Price £69.95 (with online discount £62.96). Rupture factor: mild. Book's web page here.

Friday, 29 August 2008

Friday fidgetings

The number of events listed in the IPKat's efficiently-updated 'Forthcoming Events' feature, which you will find in the left-hand side-bar of this weblog's front page, stands at 39. Don't forget to check these events out: you might even find one you fancy ...

Voting has so far been somewhat spasmodic on the Afro-IP poll regarding the vulnerability of FIFA's portfolio of registered South African trade marks for "SOUTH AFRICA 2010" and "WORLD CUP 2010". You've still got three weeks to go, but why leave it late? So far, most voters take the view that these marks could be cancelled for lack of distinctive character.

The latest issue of Sweet & Maxwell's European Commercial Cases -- published six times a year -- carries two IP cases in full. First there is J.Choo (Jersey) Ltd v Towerstone Ltd, a 16 January 2008 decision of Mr Justice Floyd on infringement of Community registered and unregistered rights in handbags in which the judge affirmed that there was no defence of innocent infringement but refused to give injunctive relief when the infringing defendant gave a pepetual undertaking not to infringe again. The second is a Cour de Cassation decision from France regarding the right of photographers to put their photos taken at fashion shows online, without the permission of the owners of the fashion designs, for the sake of promulgating 'immediate information' (for the record, there no such right).

The IPKat's friend Jason McGinty is evidently a keen mouse-watcher. He has drawn the Kat's attention to this link to a feature in the Los Angeles Times on Mickey Mouse and the beneficial effect for Disney of them having prudently restyled the rodent at regular intervals since he was launched (left) into an unsuspecting world in Steamboat Willie. For when the copyright in early mouseworks expires, children will take some persuading that this anorexic little fellow is an acceptable substitute for the cool image (right) into which he has evolved for the 21st century.

Thursday, 28 August 2008

Copying Without Infringing again

The brochure is now available for the Copying Without Infringing Conference, which is being held in London on 26 November. The panel of speakers for the day is very impressive; this year's line-up includes

* Anna Carboni, solicitor-turned-barrister and now an Appointed Person in appeals against the UK-IPO's trade mark decisions;

* Ben Challis, a music law specialist and the man behind the media copyright and media arrangements for the Glastonbury Festival;

* David Stone, a partner in the London office of Howrey and a dedicated design right enthusiast;

* Trevor Cook, partner at Bird & Bird and a highly respected elder statesman in the IP field;

* Ian Karet, partner at Linklaters and a mercurial public speaker on any issue relating to patent rights.
Topics discussed include music sampling as theft or merely cultural evolution; literary plagiarism and the Raj Persaud episode; researching and experimenting around other people's patent rights and the question whether design law is now too complex for anyone to understand it.

IPKat team blogger Jeremy will be in the chair. Watch this space for details of the next IPKat competition, for which complimentary admission (worth £495 plus VAT) is the first ... and only ...prize.

Wednesday, 27 August 2008

Recent periodicals

Despite its somewhat unattractive acronym, Product & Image Security has some useful and attractive content. This bimonthly journal focuses on the growing demand for practical information relating to menas of dealing with counterfeiting, forgery, product piracy, substitution and diversion of goods on a practical basis, not to mention downstream crime such as retail theft and product tampering. Each issue contains articles relating to security materials, security holograms and applications, product identification, authentication, traceability, brand image protection, security labels, tags, tickets and packaging seals -- plus a variety of trade advertisements. This issue contains one item that particularly caught the IPKat's eye: "Pressing ahead -- The Giori Story", a surprisingly interest account of developments in the technology of the intaglio printing process and its contribution to product and label security.

The September 2008 issue of Sweet & Maxwell's monthly IP flagship journal, the European Intellectual Property Review, has commendably come out ahead of its cover date once again. In this issue the IPKat's venerable old friend Axel von Hellfeld (Wuesthoff & Wuesthoff), "Patent infringement in Europe: the British and German approaches to claim construction or purposive construction versus equivalency", which is based on a paper Axel delivered in Australia in March 2007. This piece charts the old British Catnic/Improver test against its German counterpart, the Schneidmesser test, with some fascinating results.

The Kat was also glad to spot a dissertation by a rather younger friend James Tumbridge (Gowlings) on whether the Canadian Supreme Court has anything to teach the British -- with their tiny quantity of case law on famous marks -- on a subject that will not develop much in this country until the Court of Appeal for England and Wales, armed with the ECJ's ruling in Intel v CPM (see IPKat's comment on the Attorney General's comment here), gets a steady diet of cases for their Lordships to practise on.

Also from the Sweet & Maxwell stable comes the scholarly Intellectual Property Quarterly which, as its name suggests, is published at regular three-month intervals. This issue leads with "Thinking Locally, Acting Globally: how trade negotiations over geographical indications improvise 'fair trade' rules".

Right: trade negotiators enjoy a little relaxation in between rounds of negotiation

The author, the prolific Antony Taubman, is Director, Global IP Issues Division, at the World Intellectual Property Organization (WIPO) - a job that the IPKat would dearly like to if it didn't mean having to spend so much time (i) listening politely to other people and (ii) having to publish a disclaimer everytime he said something interesting. This is a must-read for any trade negotiator, though the Kat doubts that many of them would pick up the subtle messages this article contains.

No mercy in Bakewell for those who fake well

The IPKat failed to notice earlier in the month this piece in the Telegraph. It seems that a group of cake lovers, led by the owner of the Old Original Bakewell Pudding Shop, are petitioning the EU (surely that should be DEFRA?) to grant the Bakewell Pudding protection as a geographical indication. The Bakewell consists of pastry, jam and almond filling and is reputed to have been created by accident in the 19th Century.

Said Ms Pheasy, owner of the shop:

"We want to protect the pudding's heritage...We are declaring what our recipe is, what goes into it, how it is made, taste, shape, colour, everything, just to specify this is how it is made."

The IPKat (whose culinary skills extend only to that other geographical cake - the Linzer Torte) isn't impressed. Every cake cookbook worth its salt has a recipe for the Bakewell (as does Mr Kipling), so it seems a bit late to specify the exact requirements of its 'heritage'. On a more philosophical note, surely evolution of the recipe is part of its heritage too?

Tuesday, 26 August 2008

Recent books reviewed

Although the introduction of a sui generis database right in European Union member states never turned out to be the New Dawn for investment in the information-based industries that the European Commission foolishly believed it might, the protection of databases remains a matter of concern and importance as much in the era of Web 2.0 as it did in the days when data was something stored in shoe-boxes and on-line was where you hung the washing. That's why The Legal Protection of Databases: a Comparative Analysis by Estelle Derclaye (Lecturer in Law, University of Nottingham) remains a more important book than ECJ jurisprudence might indicate.

What the publisher's blurb says:

"The protection of the investment made in collecting, verifying or presenting database contents is still not harmonised internationally. Some laws over-protect database contents, whilst others under-protect them. This book examines and compares several methods available for the protection of investment in database creation – namely, intellectual property, unfair competition, contract and technological protection measures – in order to find an adequate type and level of protection. To this effect, the author uses criteria based on a combination of the economics of information goods, the human rights to intellectual property and to information, and the public interest, proposing a model that can be adopted at international and national levels.

The Legal Protection of Databases will be of interest to intellectual property lawyers, competition lawyers, as well as general commercial lawyers because of the breadth of laws reviewed. It will also appeal to practitioners, policymakers, economists and students".
What the IPKat says: "Unlike many IP books published by Edward Elgar, which specialises in multi-authored works, this one is all written by Estelle herself. The fruit of this is that each chapter benefits from her ability to combine breadth of perspective with attention to detail. Although she freely confesses that this is the 'book of the thesis', it is plainly very much more than that: the book is a confident assertion of her mastery of both civil and common law thought as well as the subject's technical and commercial dimensions. Of particular interest is the tenth chapter, which deals with remedial steps to deal with both the over-protection and under-protection of database right, proposing a workable model which deserves more serious attention than it will probably receive".

Bibliographic data: xxviii + 362 pages. Hardback. ISBN 978 1 84720 133 1. Full price £85.00; price with online discount £76.50. Rupture factor: small. Book's webpage here.

Anything with the name 'Nimmer' on it attracts the attention of this member of the IPKat team, who sat at the feet of the late Melville B. Nimmer when learning his US copyright and enjoyed some tight games of Scrabble with his son David -- then a young and easy-going student, but now a toweringly authoritative voice in the field of American copyright law. Copyright Illuminated: Refocusing the Diffuse U.S Statute is David Nimmer 's latest offering.

What the publisher's blurb says:

"For several decades now David Nimmer has maintained a steady flow of insightful, witty, and deeply-informed commentary on copyright in the law journals. His well-earned reputation as a major authority and theorist on copyright law is unassailable.

In this new volume—a companion to his very well received Copyright: Sacred Text, Technology, and the DMCA, published by Kluwer in 2003—Nimmer once again tackles some of the thorniest issues that arise in the practice of copyright law, including the following and much more:

• the work for hire doctrine;
• repeat infringers;
• fair use determination; and
• substantial similarity of computer programs.

Although the volume collects articles originally published between 1988 and 2006 (mostly in the past few years), Nimmer has scrupulously updated the texts and woven them together into a unified whole. What the book offers as a result is a microscopic scrutiny of the U.S. Copyright Act of 1976 and all its amendments, with an immeasurable abundance of interpretation grounded in the author’s unmatched familiarity with the law and its application. This is a work that no lawyer handling copyright cases—or indeed no student or scholar of any branch of intellectual property law—will want to be without".

What the IPKat says: "For those who want to read David Nimmer's articles without the hassle and expense of subscribing to the periodicals for which he writes, and without going to the inconvenience of having to thumb the pages penned by others till he finds them, this is the perfect volume. Incidentally, Professor Nimmer is no mere copyright technician -- his footnotes reveal a cultured and intellectually curious polymath for whom US copyright legislation is a sort of prism through which philosophy, economics, literature and many other subjects are refracted. He also has a delightful sense of humour, which speed-readers and literalists may possibly miss. This is a great Christmas stocking-filler for the enthusiastic copyright lawyer".

Bibliographic data: xxiii + 571 pages. ISBNs 9041124942 , 13: 9789041124944. Hardcover. £123. Rupture factor: mild. Book's webpage here.

Every one of the first five volumes in Edward Elgar's New Directions In Copyright Law series has been warmly welcomed by the IPKat and this, the sixth edition, is no exception. Directed by Professor Fiona Macmillan (School of Law, Birkbeck, University of London), this series has turned regular thinking on copyright inside-out and upside-down, making it at once (i) an absurdly arbitrary and frequently illogical set of rules and (ii) a magnificently flexible catalyst for the protection, commercialisation, self-expression, transformation and consumption of a multitude of messages.

What the publisher's blurb says:

"This volume, and the series of which it is the final part, is structured around the six themes of the AHRC Network on New Directions in Copyright Law, which are: (1) Theoretical Framework of Copyright Law; (2) Globalisation, Convergence and Divergence; (3) Developments in Rights Neighbouring on Copyright; (4) Protection of Traditional Knowledge and Culture; (5) Copyright and the New Technologies; and (6) Copyright, Corporate Power and Human Rights. Accordingly, the volume addresses itself to all those with an interest in copyright, regardless of discipline".

What the IPKat says: "There's some great content in this volume. Paul Heald's "Property Rights and the Efficient Exploitation of Copyrighted Works: an Empirical Analysis of Public Domain and Copyrighted Fiction Best Sellers" -- though originally published in the Minnesota Law Review -- is one of the best, daring to suggest that the fact that books are in the public domain does not mean that they are commercially under-exploited. It's sad to think that this volume marks the end of the series; if there's sufficient demand, perhaps we'll see a sequel ...".

Bibliographic data: x + 388 pages. Hardback. ISBN 978 1 84542 265 3. Price £ 85 (with online discount £ 76.50). Rupture factor: mild. Book's webpage here.

Collecting societies find new way of spending their money

Displaying a previously unrevealed talent for reading legal decisions in Dutch, and with only a tiny bit of help from his friend Kristof Neefs (Laga), the IPKat brings news of a dramatic development in the Netherlands. In essence, a Dutch interim judge in Haarlem has issued a preliminary injunction prohibiting BUMA (a Dutch copyright collecting society) from granting any further licences for the online sale of the repertoire of works administered by the Performing Rights Society (PRS), in so far as those licences extend beyond the territory of the Netherlands. BUMA had previously granted a licence for the territory of the entire European Community to

PRS maintained that the reciprocal agreements between collecting societies did not grant BUMA any royalty-collecting rights beyond the Dutch territory. In its defence, BUMA attempted to rely on the Commission's recent decision in CISAC (see IP Finance post here). BUMA argued that any territorial restriction in its reciprocal representation agreements is null and void, as these restrictions are anticompetitive and infringe Article 81 EC. The judge in the interim proceedings rejected BUMA's argument, stating that even if the territorial restrictions in the agreements are invalid, BUMA still has no right to license the PRS repertoire beyond the territory of the Netherlands.

This is (says Kristof) an interesting ruling in light of the CISAC decision and the Commission's paper on creative content online. The IPKat agrees, though he is a little surprised to see collecting societies breaking rank like this rather than all being on the same side. Yes indeed, says Merpel: when copyright collecting societies litigate against one other, the cost is borne by the rights owners whom they are supposed to benefit.

BUMA goes beyond the European Union here, and also here
Naughty meaning of BUMA here

Monday, 25 August 2008

Around the IP blogs

The IPKat's Indian cousin, Spicy IP, has adopted this eye-catching logo. A regular feature of the blogosphere for the past three years, Spicy IP is powered by a team of eight commentators whose IP perspectives run far wider than the borders of their home patch. The IPKat wishes Spicy IP the very best with its logo, even if -- in his view -- the vegetable at its heart suggests more heat than light ...

Meanwhile, the IPKat notes that one of the most obscure IP blogs, The SPC Blog, has just notched up its 100th email subscriber. The SPC Blog is narrowly focused on the law and practice relating to supplementary protection certificates for pharmaceutical and plant protection patents. Considering that it only started this summer, and that it has been aggregating posts at a gentle rate of between one and two a week -- not surprising since this is an area in which relatively little happens -- the 100 mark for email readers represents a remarkably speedy take-up.

After more than a decade of experience with the concept of confusing similarity under the harmonised European law and the Community trade mark, the IPKat thought he'd seen everything and was quite unshockable. Not so, it seems. Via Likelihood of Confusion he discovered this gem from the TTABlog , which picked up a US TTAB ruling that the marks AMMIRAGLIA and FLAGSHIP were confusingly similar in respect of alcoholic beverages. Merpel says, I reckon that the relevant consumer would have to drink a hell of a lot of vodka before confusing those two.

Quite by chance, when looking for something completely different, the IPKat stumbled across The Patent Search Blog, masterminded by the British Library's Steve van Dulken. IPKat team member Jeremy's path and Steve's have criss-crossed on odd occasions since patents first entered Steve's life in a big professional way back in 1987. Ostensibly a weblog focusing on the lighter side of patents, The Patent Search Blog has its very serious side too. The IPKat hopes this blog, now in its second year, goes from strength to strength.

Sunday, 24 August 2008

Gone for a Burt -- TMPDF's new president

The IPKat has learned that, last month, the UK's Trade Marks, Patents & Designs Federation (TMPDF) appointed a new president, Dr Roger Burt. The TMPDF represents businesses -- whether British-based or not -- that have a substantial interest in originating new products and concepts and in seeking to protect their investment through the appropriate level of IP protection. Current members of the TMPDF are

ARM Ltd; AstraZeneca plc; Babcock International Ltd; BAE Systems plc; BP p.l.c.; British Telecommunications plc; British-American Tobacco Co Ltd; BTG plc; Delphi Corp.; Dow Corning Ltd; Dyson Technology Ltd; ExxonMobil Chemical Ltd; Ford of Europe; Fujitsu Services Ltd; G E Healthcare; GKN plc; GlaxoSmithKline plc; Hewlett-Packard Ltd; IBM UK Ltd; Infineum UK Ltd; Kodak Ltd; Merck Sharp & Dohme Ltd; Microsoft Ltd; Nestle UK Ltd; Nokia UK Ltd; NXP Semiconductors UK Limited; Pfizer Ltd; Philips Electronics UK Ltd; Pilkington Group Ltd; Procter & Gamble Ltd; QinetiQ Ltd; Renishaw plc; Rohm and Haas (UK) Ltd; Rolls-Royce plc; Shell International Ltd; Sony UK Ltd; Syngenta Ltd; The BOC Group plc; UCB Pharma plc; Unilever plc; Wyeth Pharmaceuticals; Xerox Ltd.
Having both seen and heard Dr Burt in action, this IPKat team member unreservedly welcomes his appointment. From his vantage point in the IP department of IBM he has had a wonderful opportunity to view the strengths and weaknesses of the IP system since his company has a wider experience of patents than almost any other: suing, being sued, proprietary licensing, open-sourcing, technical standard-setting, product branding in both B2B and consumer modes, product design, the IP/antitrust interface -- these all form part of the IBM experience. To be able to take this all in, to practise the skills of listening carefully and responding in sensible objective terms and to retain at least a modicum of one's sense of humour is no mean feat. The IPKat is also pleased to see that -- bucking recent trends in the UK -- the TMPDF has appointed as its president someone who is actually familiar with large chunks of the IP system.

Saturday, 23 August 2008

UK-IPO Patent Litigation Survey

The UK Intellectual Property Office (UK-IPO) announced yesterday its patent litigation survey.

UK-IPO is seeking information from those using the litigation process as part of ongoing discussions on the European Patent Court.
One possible limitation of the questionnaire is that it is appears to be aimed only at those using the patent system as a patent-owner (patent-owners, corporations). As such, it does not appear to ask adequate questions of those using the litigation system on a more regular basis, such as patent professionals. It is not clear that ownership of patents necessarily correlates with litigation activity or experience, so the IPKat wonders whether the insight of practitioners would offer a valuable contribution to this discussion. Nevertheless, he urges contribution to the survey from all those interested. However, the ever contrary Merpel just doesn't like filling out forms.

Friday, 22 August 2008

Friday fixations

There number of events listed in the IPKat's patiently-updated 'Forthcoming Events' feature, which you will find in the left-hand side-bar of this weblog's front page, stands at 38. Don't forget to check these events out: you might even find one you fancy ...

The IPKat's distant relation Afro Leo is conducting an opinion poll, hosted on his Afro-IP weblog, on the question whether FIFA's trade marks for the next World Cup football tournament are invalid for lack of distinctive character. The marks are WORLD CUP 2010 and SOUTH AFRICA 2010. If you're not sure why these trade marks might be invalid, see what Europe's finest have to say here. To cast your vote, click here.

The past is a foreign country, wrote Go-Between author L. P. Hartley. His book was at least filmed, which is more than can be said for the new James Bond book Devil May Care, which was cunningly crafted by best-selling novellist Sebastian Faulks. According to The Telegraph:

"Set in 1967 during the Cold War, the plot revolves around the international drugs trade and the action takes in London, Paris and the Middle East. ... But it is precisely this authentic period setting which has worked against Faulks and led to Eon, the production company behind the Bond franchise, turning down the movie rights. Producer Barbara Broccoli told industry publication Variety: "We love the book, but because it is set in the 1960s, we haven't considered making it in the near future".

Just read that final quote a few times and think about it, says the IPKat ...

If James Bond is out in the cold, Watchmen are very much the flavour of the month, it seems. A film based on the adventures of some rather flawed superheroes, based on the comic books of Alan Moore, is at the centre of a spat between Warner and Fox, the BBC reports. It looks as though Fox will be pressing for interim injunctive relief to halt the film's planned March 2009 launch date.

Right: tragic scene from Watchmen -- a starving actress picks her way through the rubble in search of the world's last-ever triple cheeseburger with french fries ...

The IPKat wonders what rights-allocation work by members of the legal profession could have been allowed to lead to this misunderstanding [or, Merpel says, is it those pesky clients that are to blame again?]. There are plenty of off-the-peg precedents that provide for film studios to obtain exclusive rights and to protect their amply padded backsides by sorting out the merchandising and associated rights, which usually involves some sort of due diligence.

More on the easyJet/easyGroup saga -- following the item published earlier this week on this weblog, one of the IPKat's sharp-eyed readers who is too modest to wish to be named spotted this item on the easyGroup's website. On the 56-page brand licensing agreement, drafted in 2000, Stelios commented:

“It should not be surprising to anyone that certain language that was drafted 8 years ago can be interpreted in more than one way in view of the fast changing business model of low cost airlines and their recent pursuit of ancillary sales. I want to be fair to the other shareholder's of easyJet PLC but also to the many investors in all the other "easy" branded businesses (see Given my commitment to the highest standards of corporate governance and my obvious conflict of interest as a director and shareholder of both companies, I feel it is best to ask a judge to interpret certain clauses in the brand license and in particular the so called 75:25 rule. I am sure that clarity is in the best interest of everyone involved in the "easy" brand. Given my obvious conflict I have suggested to the board of directors of both companies that we should all agree not to trade in the easyJet stock until this is resolved.”
The IPKat says, what a masterpiece of draftsmanship -- it's a shame that whoever penned this piece of spin didn't have a go at drafting the licence in the first place.

Date for your diary

Early warning of UCL Institute of Brand and Innovation Law's Innovation Seminar, taking place on 11 November at the UCL Institute of Child Health.

The title is Patent Enforcement - Problems and Possibilities. Speakers include:

  • The Honorable Judge Randall R Rader,
    Court of Appeal of the Federal Circuit, Washington DC, USA
  • Professor Jan Brinkhof,
    Former senior judge, Court of Appeal, Netherlands; Professor of IP, Utrecht University
  • The Hon. Mr Justice Kitchin,
    High Court of England and Wales
You can book online here.

The IPKat observes that it's free and there are drinks afterwards - what more could a Kat about town want?

Out of Doors - Supreme Court Rejects 21st Century Doors

How many Doors does it take to make a band. Earlier this month, the Calilfornia Supreme Court decided at least more than two.

In the great frenzy of re-makes and come-backs that seem to characterise the pop culture market at present (is this as good as it gets for recycling?), Raymond Manzarek And Robert Krieger, two surviving members of the 70s group, The Doors, wanted to continue to perform under that name. If it can work for Gary Barlow, then why not?

(At right, the original line-up: from left John Densmore, Ray Manzarek, Jim Morrison and Robert Krieger)

So they set out and toured as The Doors of the 21st Century (I had no idea) and apparently grossed more than US$8 million, using images of the original Doors in their promotional material. Some have suggested that the problem was that the pair dumped the third original member from the line-up, John Densmore, who then joined forces with the families of Jim Morrison and Pamela Courson to prevent Manzarek and Krieger from using the name.

In other reports Densmore states he is simply fulfilling the wishes of Jim Morrison, having refused other lucrative offers for commercials and other use. This is possible due to a "veto power" common in music contracts of the 1960s which requires all members of The Doors to be unanimous in any business agreements. As a result, each band member has a vote and the Morrison estate the fourth. The partnership has had disputes in the past and, although it is reported that Densmore was alone in refusing advertising deals, apparently the Morrison and Courson families joined him in his outrage over The Doors of the 21st Century, particularly the diversion of profits from their tours.

Densmore and the families claimed that if the pair continued to use the name, The Doors of the 21st Century, it would compromise the band's legacy. The Los Angeles Superior Court agreed and the Court of Appeal upheld this decision, 29 May. The pair were subsequently prevented from performing, touring, promoting or otherwise holding themselves out to be The Doors, The Doors of the 21st Century, or any other name that includes the words The Doors without prior written consent of all partners of the Doors partnership (I did however notice they are continuing to use the very 21st-century D21C ...).

The pair went on to petition the California Supreme Court but review was denied 13 August. The Supreme Court agreed (and all puns will be resisted). General counsel for the Morrison family, Lou Reisman, is reported as stating "We are particularly gratified that the court recognized Jim Morrison's iconic stature as a performer, songwriter and poet whose body of work continues to influence musicians and rock groups worldwide."

The pair have been ordered to pay damages and costs estimated at US$5 million. Instead of passing the hat around, they will now be touring as Riders on the Storm (circa 2005).

Merpel is pleased obstacles like band integrity did not persist into the 90s, with no such arrangement in place between Robbie and Gary. Otherwise there might have been a far inferior soundtrack to the Morrisons supermarkets commercials (just a coincidence ...)

(At left: the original legend)

Thursday, 21 August 2008

Truth, transparency and the role of academic research

P. Bernt Hugenholtz is someone for whom this member of the IPKat team has the highest regard. Attached to the Institute for Information Law at the University of Amsterdam, he has established his reputation as a scholar, a lawyer and as an acute observer of reality on so many occasions that his credentials are not seriously open to challenge. Accordingly -- while the IPKat may not (and indeed does not) agree with everything Professor Hugenholtz has ever said or written -- he would not lightly dissent from any position which he has taken on a matter of substance. It was therefore with a sense of increasing outrage that this Kat read the text of an open letter sent by Professor H to Dr Jose Manuel Barroso, President of the European Commission. The letter goes like this:

" The Institute for Information Law (IViR) of the University of Amsterdam is a leading research institute in the field of European copyright law. In 2006 and 2007, IViR produced two major studies on EU copyright law and policy:

The Recasting of Copyright & Related Rights for the Knowledge Economy,

Study on the Implementation and Effect in Member States' Laws of Directive 2001/29/EC on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society.

Both studies were commissioned by the Commission (DG Internal Market and Services) in December 2005, discussed at great length with Commission officials at every stage of their completion, officially approved by the Commission, and finally published on the DG Market website. Both studies were researched and written by teams of expert researchers in the fields of law and economics that were recruited from IViR and various other European institutes. In addition, the main conclusions of the Recasting Study were discussed with leading European scholars in the field of intellectual property law, prior to its final submission.

Since their completion and publication, both studies have attracted considerable attention in scholarly circles and among stakeholders and continue to play an important role in informing the current debate on the future of copyright law and policy in the EU. It comes therefore as a complete surprise to us to discover that our studies have been almost entirely ignored in the so-called `forward looking package' on Intellectual Property that the Commission has released on July 16, 2008.

The Explanatory Memorandum that accompanies the proposal for a term extension of the rights of performing artists and phonogram producers, which is the centre-piece of the Commission's package, references at various places studies and data provided by stakeholders, but fails to even mention our Recasting Study, which deals with the topic of term extension in detail and, on the basis of a thorough legal and economic analysis, rejects the main arguments made in favour of an extension. The Explanatory Memorandum also disregards our critical analysis of the issue of co-written musical works, which constitutes a separate chapter of the Recasting Study.

Amazingly and quite misleadingly, the Explanatory Memorandum states (on p. 6, in fine) that `[T]here was no need for external expertise'. This is patently untrue, as the terms of reference of the Recasting Study, which were drawn up by the European Commission (Invitation to tender Markt/2005/08/D), expressly asked for the examination of, among other issues, the need for a term extension and the issue of co-written musical works. The Impact Assessment that supposedly underlies the Commission's proposal also ignores the Recasting Study, except for a single mention in footnote 51, which quotes our study out of context. Similarly, the Green Paper on Copyright in the Knowledge Economy, that covers much of the terrain explored in both our studies, once again ignores the critical findings of our research.

We are, of course, well aware that several conclusions of the IViR studies do not agree with the policy choices underlying the Commission's proposals. And we are certainly not so nave as to expect that the recommendations of an academic institution such as ours, however well researched and conceived they may be, will find their way into the Commission's policies in undiluted form. What we would expect however is that our work, which was expressly commissioned by the policy unit in charge of these proposals, be given the appropriate consideration by the Commission and be duly referenced in its policy documents, in particular wherever the Commission's policy choices depart from our studies' main recommendations.

As you are certainly aware, one of the aims of the `Better Regulation' policy that is part of the Lisbon agenda is to increase the transparency of the EU legislative process. By wilfully ignoring scientific analysis and evidence that was made available to the Commission upon its own initiative, the Commission's recent Intellectual Property package does not live up to this ambition. Indeed, the Commission's obscuration of the IViR studies and its failure to confront the critical arguments made therein seem to reveal an intention to mislead the Council and the Parliament, as well as the citizens of the European Union.

In doing so the Commission reinforces the suspicion, already widely held by the public at large, that its policies are less the product of a rational decision-making process than of lobbying by stakeholders. This is troublesome not only in the light of the current crisis of faith as regards the European lawmaking institutions, but also - and particularly so - in view of European citizens' increasingly critical attitudes towards intellectual property law.

I hereby urge the Commission to fully inform the European Parliament and the Council of Ministers of the findings of our studies in connection with the above-mentioned proposals and to duly and properly reference our work in future policy initiatives.

Copies of this letter will be sent to Mr. C. McCreevy (Commissioner DG Market and Services), the European Parliament and the Council of the EU. This letter will also be publicly posted on our website at".

This member of the IPKat team shares Professor Hugenholtz's sense of grievance. I suspect that, if we are honest, most if not all of us are guilty of supporting lobby groups when they serve our purposes -- but there is all the difference in the world between supporting a position and justifying it. As a copyright owner I naturally want to see long, strong, enforceable rights to protect my work -- but I have to be kat enough to concede that the policy which is adopted into law should, as far as possible, be based upon objective and verifiable grounds, with any position that is contrary to my own being refuted on the basis of clear evidence and reasoning or rejected on the basis of support of a higher contrary principle.

Merpel chimes in here too. She says, this is not just an issue for the Commission and the institutions of the European Union. There is a feeling among many in the private sector too that academics are a cheap form of "hired gun", to be engaged in order to deliver the desired research results. I have seen proposals for, and been asked to perform, research projects in the private sector in respect of which I have been informed of the available funding, the time-scale and the desired conclusion. It would make more sense for the Commission to pay attention to the research it pays for -- and over which it has substantial control in terms of aims and methodology -- than to allow its ear to be bent by lobby groups whose attitude towards academic research may be that it is just another convenient commodity to be paid for, like advertising and public relations.

Gold in China; Mother wins round 1 of YouTube dancing baby case

Another British success in China

No, it's not the Olympics, but rather the news in the Scotsman that the Scotch Whisky Association has succeeded in gaining geographical indication protection in China for the term 'Scotch Whisky'. China imports 17 million bottles of Scotch a year.

The IPKat is too busy celebrating this Scottish triumph in traditional fashion to comment.

Fair use take-down victory

The LA Times reports that Stephanie Lenz, a mother who posted a clip of her baby dancing to the artist formerly known as the artist formerly known as Prince's song, 'Let's Go Crazy' has won the first stage of her battle against Universal Music (see earlier IPKat post here). Ms Lenz's clip was removed from YouTube after the site received a takedown notice under the Digital Millennium Copyright Act from Universal, the holder of the copyright in the song. The clip was reinstated after a month, but Lenz sued under the DMCA, pointing to the requirement therein that copyright owners can only demand the taking down of a work if they have "a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law."

Universal argued that copyright holders, in making this assessment, did not need to take into account whether the use made by the subject of the notice was fair use, since fair use is a defence, rather than a legal right. Not so, according to Judge Jeremy Fogel, who states:
"Even if Universal is correct that fair use only excuses infringement, the fact remains that fair use is a lawful use of a copyright. Accordingly, in order for a copyright owner to proceed under the DMCA with “a good-faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent or the law,” the owner must evaluate whether the material makes fair use of the copyright. 17 U.S.C. § 512(c)(3)(A)(v)."
However, he went on the conclude that Lenz was unlikely to win the case at full trial as she would need to show subjective bad faith on the part of Universal, i.e. that when it issued the takedown notice, it knew it was making a groundless threat of infringement.

The LA Times observes that the need to evaluate fair use will make it difficult for copyright owners to use automated 'bots to root out works which borrow from copyright works and issue take down notices ('bots can't evaluate whether use is fair).

The IPKat reckons that this is a good decision. On the whole, copyright owners are likely to be in a better position to evaluate fair use than individuals who post materials, and hosting sites, if forced to evaluate fair use may take a risk-averse strategy that would prevent them from allowing many socially useful works. The IPKat reckons that unless copyright owners are forced to evaluate fair use, many works which constitute fair uses will just disappear if made the subject of take-down notices since only exceptional individuals like Ms Lenz will persevere in getting their work reinstated.

Months from implementing IP Enforcement Directive, Sweden swamped by fake Abbas

Via the Intellectual Asset Management magazine's holiday email circular comes potentially good news for Swedish IP infringers. The circular carries a short feature, "Implementation of EU IP Enforcement Directive delayed … again" by Jenny Holmén and Stefan Widmark (Mannheimer Swartling). According to the authors:

"The Swedish implementation of the EU IP Enforcement Directive ... is severely delayed. The original implementation deadline was 29 April 2006 and the government’s failure to implement on time recently caused the European Court of Justice ... to find Sweden guilty of breaching its treaty obligations [as chronicled by the IPKat here] ... Sweden also failed to meet the new deadline of 1 July 2008 and implementation is now scheduled for 1 January 2009.

The directive and Swedish law

Although most of the minimum enforcement standards set out in the directive are already met by existing laws, a few features require the legislature’s attention. The issue that has apparently caused the delay is the right for IP rights holders to obtain information regarding the origin and distribution networks of infringing goods (Article 8). The Swedish government has explained that it needed to await the ECJ’s decision in the Promusicae Case (Case 275/06) [see IPKat note here], which considered whether the provision is an absolute requirement imposed on member states. The ECJ rendered its decision in the Promusicae Case in January 2008, finding that Article 8 does not require member states to lay down an obligation to communicate personal data in order to ensure the effective protection of intellectual property in the context of civil proceedings. However, the ECJ declared that Community law does require that, when transposing the directive, the authorities and courts of the member states must not only interpret national law in a manner consistent with the directive, but also ensure that they do not rely on an interpretation which would conflict with fundamental rights or with other general principles of Community law, such as the principle of proportionality. Sweden has also claimed that Article 8 of the directive is hard to interpret and hence difficult to implement; however, according to ECJ case law these are not valid excuses for failing to implement a directive in due time.

Other required amendments include:

* amendments to the provisions on civil search orders to facilitate the protection of confidential information and to enable orders to be granted in respect of anticipated IP infringements; and
* a new power for the courts to order the recall of infringing goods and the publication of judicial decisions and corrective notices.

Next steps

The Swedish government is planning to publish its bill on the required amendments in September 2008 and to implement the directive on 1 January 2009".

The IPKat says, hmm ... other Member States were able to implement the Directive without awaiting the outcome of Promusicae. Did they do something wrong? Merpel says, I'd always wondered why there were so many Abba tribute bands around; can it be traceable to Sweden's failure to provide a sufficiently high level of protection for its valuable intellectual assets?

Abba's earnings here
Number of Google hits for 'Abba' + 'tribute' = 223,000

Wednesday, 20 August 2008

Computer Weekly Blog Awards 2008 -- and the winner is ...


IT Law Blogs

IT Blog Awards

The IPKat, Merpel, Tufty and their human assistants are all a-flutter at the moment, having just learned that the IT Blog Awards for 2008 have been announced. Over 300 nominations were submitted by Computer Weekly readers, including the IPKat -- which surprised him a little since he had never really thought of this weblog as being an "IT Law and Governance" blog. But that was not nearly as surprising as discovering that this blog polled first in the category. With as much humility as a fictional cat can muster, the IPKat is hugely grateful to all those who nominated and voted for him. However he reserves the biggest thanks of all to his readers who, for more than five years, have kept him on his retractable toes by sending him so many snippets of information, valuable perspectives, unwanted but necessary correctives, haikus, limericks and requests for unpublished (sometimes unpublishable) materials. All in all, the Kats reckon that this is a good day for IP as a whole.

You can see the ten shortlists of nominated IT blogs here. IPKat contributor doesn't usually read articles on other people's blogs until they've been there a little while. This is for two reasons: (i) he likes to see them together with any accumulation of comments they attract and [this is the main reason, coming up ...] (ii) he doesn't want to have to fight the temptation to copy what others have said or to risk absorbing subconsciously the contributions of others. Still, he enjoyed squandering some prime blogging time in perusing many of the other nominated sites and must express himself quite impressed with the range of blog-based thought available in the IT sector.

New New Zealand Patent Bill

Buried alive in the IPKat's in-tray is a helpful summary of the main provisions of New Zealand's new Patents Bill, kindly sent to him by Elena Szentivanyi (Henry Hughes, Wellington NZ). The IPKat apologises for not posting it sooner. The summary, with occasional Kat-comments, runs like this:

"The long awaited legislation to replace the New Zealand Patents Act 1953 has been introduced into Parliament.

The Patents Bill 2008 is expected to have its first reading in Parliament within the next week or so [the IPKat suspects this may have already happened] and will then be referred to the Commerce Select Committee. The Select Committee will set a deadline for written submissions on the Bill and there will subsequently be an opportunity for oral submissions. The Select Committee will then recommend changes which will be debated in Parliament. The Bill will not become law until after it has been passed by Parliament, which is not likely to occur until 2009 due to the General Election to be held later this year.

The Patents Bill 2008 is substantially different from New Zealand’s current patent legislation. Many of the changes will be welcomed by applicants and patentees for bringing New Zealand’s patent law into line with that of most other countries.

Significant proposals in the Patents Bill 2008, which differ from New Zealand’s existing law include:

* Absolute novelty is required (novelty destroyed by written or oral description or use anywhere in the world) rather than the current local novelty requirement [another small break with history: local novelty, a creature of pre-global days, enabled intrepid travellers to go to far-away lands, find inventions -- the word 'invent' comes from the Latin verb that means 'to find' -- then import and patent them].

* The whole contents of a New Zealand complete specification with an earlier priority date published after the priority date of the examined application will be taken into consideration when determining the novelty of the invention. This is a change from the current law relating to prior claiming between New Zealand specifications [about time, too!].

* The Commissioner of Patents will be able to refuse a patent application on the ground that the claimed invention is obvious to a person skilled in the art. Presently obviousness is a ground upon which an interested person can oppose the grant of a patent or apply to revoke a granted patent.

* The Commissioner of Patents must be satisfied on the “balance of probabilities” that the claimed invention is patentable and that all the requirements of the legislation have been satisfied [this non-NZ Kat wonders what the Commissioner has to be satisfied with at present ...].

* Statutory exclusions from patentability have been included, such as methods for the medical treatment of humans by surgery or therapy and methods of diagnosis practised on human beings.

* Creation of a Maori Advisory Committee to advise the Commissioner of Patents on whether a claimed invention is derived from Maori traditional knowledge or from indigenous plants or animals and, if so, whether the commercial exploitation of that invention is likely to be contrary to Maori values [the implications of this proposal are potentially enormous. The Kat hopes that it has been carefully thought out].

* Where the invention is a micro-organism, a requirement will exist to deposit the micro-organism with a prescribed depositary institution on or before the filing date of the specification.

* The applicant will be under a duty to inform the Commissioner of Patents of the results of any documentary searches completed before the grant of the patent by, or on behalf of, a foreign patent office carried out for the purpose of assessing the patentability of an invention disclosed in a corresponding application filed outside New Zealand [that should save the Commissioner a bit of effort, then ...].

* Removal of the ability of an interested person to oppose the grant of a patent at an inter partes hearing before the Commissioner of Patents [lack of pre-grant oppositions makes post-grant actions soooo much more keenly fought].

* Any person will be able to request re-examination of a patent (without a hearing) by the Commissioner of Patents before or after grant on the ground that the claimed invention is not novel or does not involve an inventive step when compared with documents in the prior art".
You can read the Bill in full here
All about the kiwi bird here
Cook your kiwi here

IP and new trade agreement negotiations: the EESC speaks

Yesterday a wondrous document appeared on the website of the Official Journal of the European Union: the Opinion of the European Economic and Social Committee on the ‘New trade agreements negotiations — The EESC position’ (2008/C 211/21). Documents like this are precious because, while they have no legal force and receive little or no publicity in the mainstream media, they reflect the attitudes of Europe's rulers and the direction(s) in which their thoughts are next likely to wonder off.

The background to this Opinion is that, at its plenary session held on 26 September 2007, the European Economic and Social Committee (EESC) decided to draw up this new Opinion. The Section for External Relations, which was responsible for preparing the Committee's work on the subject, adopted its opinion on 1 April 2008. On 22 April, at its plenary sessons, the EESC adopted it by 101 votes to 6, with 7 abstentions.

On the issues closest to the hearts of the readers of this weblog, the EESC had this to say:

"7. Intellectual Property Rights (IPR) — and enforcement

7.1 The Committee welcomes the emphasis in the Communication [i.e. the Commission's ‘Global Europe’ Communication of October 2006] on strengthening IPR provisions in the ways that are outlined, including in particular offering support to SMEs and others trading with the emerging economies. Developing the EU's strategy for protecting intellectual property rights and strengthening enforcement activity is essential if the EU is to meet its aim to reduce IPR violations and the production and export of fake goods. Enforcement is key here. The TRIPs agreement must be fully implemented by FTA [Free Trade Agreement] partners, thus a primary objective for the EU in concluding these FTAs should be to obtain solid commitments for concrete enforcement of existing IPR legislation together with sufficient control and measurement of results achieved, rather than aim for entirely new agreements. Europe's Research and Development capacity and capabilities, so rightly emphasised in the Lisbon Strategy, will be a significant factor in maintaining EU competitiveness in a world where strong economic challenge will increasingly come from outside Europe [the IPKat wonders, this paragraph seems to have all the right words in it, but does it actually say anything?].

7.2 In combating counterfeiting, the Committee urges the negotiators — especially with India — to discuss measures to protect consumers from the risks associated with counterfeiting. Follow-up to the agreement should include a joint EU-India committee on counterfeiting (as is the case with China).

7.3 Given that India is involved in the Heiligendamm process (launched in June 2007) between the G8 and the five emerging countries to create a structured dialogue on promoting innovation and protecting intellectual property rights, for civil society, it would be helpful for the bilateral negotiations to take account of the monitoring of this process".
So now we know ...

Tuesday, 19 August 2008

Filesharer gets £16k slap

As noted by a couple of eagle-eyed IPKat readers, the UK Patents Court has ruled against a computer user for making a copy of a computer game available online via a filesharing network. Topware Interactive was awarded £6,000 in damages and £10,000 in costs after winning their case against Londoner Isabella Barwinska for infringing copyright in the game Dream Pinball 3D.

Right: pinball, IPKat-style; (image from Mirinda the orange cat).

More information about the case can be found from the BBC, the Register and Out-Law, among other places, although the judgment itself is not apparently yet available online.

The IPKat has some difficulty imagining how the figure for damages might have been arrived at, but he cannot see how the decision could have come out any different if Ms Barwinksa did indeed act as has been reported. Merpel wonders why she didn't just pay the £300 settlement instead, and wonders what kind of legal advice she was getting at the time.

Ferdinand gutted to miss out on strategic IP role

The IPKat has discovered that the UK Intellectual Property Office (UK-IPO) has announced the appointment of Peter Holland as its new Director of International Policy. According to a press release yesterday, Peter has already started work. His previous position, which presumably qualified him for his role with the UK-IPO, was with the Cabinet Office where he was Head of the Afghanistan Strategy Team.

Right: Rio Ferdinand is reported to be "gutted" at his failure to be given a top IP job (see IPKat comment below)

UK-IPO Chief Executive Ian Fletcher has said:

"Peter will add a breadth of talent and experience to the UK-IPO. It is essential that in our policy work we make full use of the resources and talents of the FCO. Peter is joining the office at an exciting time as we prepare help UK companies to compete in the global economy".
The IPKat wishes Mr Holland luck but notes that, in making this appointment, the government is followings its recent pattern (see here, here and here) of placing intellectual property issues in the hands of people with little or no apparent knowledge or experience in the field. This must come as a desperate disappointment to Manchester United defender Rio Ferdinand, who has substantial international experience and who must have been hoping for a top position in IP after failing to gain appointment as captain of the England football team today.

Merpel, noting the appointee's role as Head of the Afghanistan Strategy Team, wonders whether his brief is to executive a staged withdrawal of civil servants from the hostile and mountainous terrain of South Wales, where a small British contingent has been holed up in Concept House, terrorised by a marauding flock of killer sheep ...

Rio Ferdinand is not the only person disappointed. Some other Peter Hollands who failed to get the job can be found here, here and here

US carmakers get a grilling in India

According to today's Economic Times, the dispute between Indian manufacturers Mahindra & Mahindra and US carmaker Chrysler over the grille of M&M's Scorpio is not regarded by the Indian company as anything too serious. Says M&M's Managing Director Anand Mahindra reassuringly, "We are sorting it out". Chrysler is very unhappy that, in its view, M&M has copied a grille design that is normally associated with its Jeep, and for which trade mark registrations have been granted in many countries (plus the European Union). Pundits believe that M&M will be made to redesign the grille, since Chrysler has made no secret of its desire to make its presence felt in emerging markets like India and China [particularly, says Merpel, since people seem to have stopped buying them in any quantity in some of their formerly lucrative markets] .

Meanwhile, today's Hindu Business Line makes it plain that M&M doesn't think too much of General Motors either. The site reports:

"Mahindra has made it clear that the company is not interested in buying Hummer, the SUV brand of the US automaker General Motors. “There has been a lot of speculation. I am saying categorically that we are not pursuing Hummer. At the Auto Expo, we have showcased our strength as green warriors and we don’t want to tarnish our image,” he said, alluding to the gas guzzler image of Hummer".

Monday, 18 August 2008

New Journal from India

The IPKat is very pleased to announce a new journal being published by his friends in Hyderabad, India at NALSAR University of Law.

The Indian Journal of Intellectual Property Law adds to NALSAR's already active publication profile and boasts Vice-Chancellor Professor Veer Singh and the Honourable UC Banerjee (former Indian Supreme Court justice) as its patrons. Editor-in-Chief, Dr VK Unni, has assembled an international advisory board and has just issued a call for papers (click on the picture for details).

Merpel looks forward to reading articles from IPKat readers in this exciting new publication!

The mess is "easy" but the "core" is hard

The Times, this Saturday, picked up this curiosity concerning an extraordinary twist in the Saga of Stelios. Having fought tooth and nail to stop predatory businesses "borrowing" the prefix "easy" which he so eloquently attached to easyJet, Sir Stelios Haji-Ioannou is now suing the airline he founded in 1995 in order to limit its ability to cash in on "easy-" activities that conflict with his other ventures.

Right: the latest gimmick in low-cost passenger transport -- edible flights ...

Sir Stelios, who remains a member of the easyJet board and retains a 16% share in it, also owns the easyJet name through another company, easyGroup IP Licensing, which is the claimant in these proceedings. According to Sir Stelios, easyJet has associated itself with non-flying activities such as hotels, car hire and insurance. This is reputedly contrary to the terms laid down when easyJet was floated in 2000, when the brand licensing contract required the carrier to make 75 per cent of its income from “core activities”. This term is open to different interpretations: EasyJet says it includes activities associated with transporting passengers such as levying additional baggage charges, providing airport parking and running hotels. Sir Stelios considers that these activities clash with his other “easy” ventures, submitting that the airline's easyJethotels and easyJetholidays are potentially confusing with easyGroup brands such as easyHotels and easyCruise.

The IPKat is desperately worried about this litigation: if the defendants are allowed to get away with their business plans, members of the public might be duped into believing that the word "easy" is an ordinary descriptive term and not, er ... never mind. Merpel wonders whether any companies that were so daft as to conceive a provision as vague as "core activities" and then plant it at the heart of a serious business arrangement received independent legal advice.

First catch your copyright criminal ...

Last week the UK Intellectual Property Office posted news of a fresh consultation exercise, this time in respect of penalties for copyright infringement. As the UK-IPO's website observes:

"Currently the maximum fine that Magistrates' Courts [IPKat note: these are the entry-level criminal courts in England and Wales, largely staffed by amateurs] can award for online copyright infringement is £5,000. To reflect the commercial damage that large scale copyright infringement causes, the UK-IPO is consulting on increasing the level of fine handed down by a Magistrates’ Court to a maximum of £50,000.

This consultation takes forward Gowers Review recommendation 36, which recommended matching penalties for online and physical copyright infringement by increasing sanctions for online infringements.

Further to this in February this year "Creative Britain: New Talents for the New Economy" was published by the Departments for Culture, Media and Sports (DCMS), Business, Enterprise and Regulatory Reform (BERR), and Innovation, Universities and Skills (DIUS). It included a commitment to consult on increasing the fines available in the Magistrates’ Court from the current £5,000 limit to a maximum of £50,000 for online copyright infringement.

Scotland does not have Magistrates’ Courts; therefore the consultation considers introducing maximum levels of fines for Scottish summary courts that deal with equivalent cases in Scotland".

The interesting bit of this paper, the IPKat says, is the bit that deals with the Proceeds of Crime Act 2002 (POCA) and the mechanisms for depriving criminals of their ill-gotten gains. In the light of POCA's current provisions, does the law need any real changes at all? Sadly, says Merpel, POCA is only as good as you can make it: but you can't deprive criminals of their illegal profits until you convict them, and you can't convict them till you've got the evidence against them, and you can't pin the evidence on them till you can find them in the first place -- and the criminal copyright sector appears to be far bigger and better motivated than the bit of the criminal enforcement sector that can be allocated to deal with this issue.

PDF version of the consultation document (28 pages) here (you can also get it in Word from the link at the top of the page, if you want to cut-and-paste it ...)
The closing date for making your comments is 31 October 2008.

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