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

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

Monday, 31 March 2008

Why is taking photographs not allowed in Spitalfields Market?

The IPKat noticed this thought-provoking and slightly worrying post on the popular and prolific blog BoingBoing. A friend of the blogmeister Cory Doctorow went yesterday to the (publicly open) Spitalfields Market, and took an unremarkable photograph (right). He then says:

Right after I took the shot, though, a large security guard walked directly up to me. “We don’t take pictures in here.” “Oh?” I said. “Yes,” he replied, reaching for my camera. “We’ll have to delete that.”
The photographer managed, however, to escape with life, liberty and photograph intact.

The IPKat wonders why Spitalfields Market is taking against having photographs taken, particularly given there is a specific exclusion under UK Copyright law to allow this kind of thing. Since the many commenter on BoingBoing don't seem to have any idea, could any of the IPKat's knowledgeable readers cite any law that would either support or further discredit this view?

Given some of the comments below, the IPKat further wonders whether the recent Met campaign, evidenced by the (completely genuine) poster below, has anything to do with it...

Fianna didn't Fail

The IPKat has come across a rare example of two major political parties working together with a single aim. The two parties in question are the Irish parties, Fianna Fail and Fine Gael and the aim was to defeat an application by a third party to register their names (and that of Sinn Fein) as UK trade marks.

The third party was a Mr Patrick Melly. He applied to register the three names as trade marks for fresh fruit, vegetables and salad, potatoes, tomatoes, malt, all the produce of Ireland, lemons, bananas in Class 31 and business administration, office functions in Class 35.

He then sent letters to the General Secretaries of Finna Fail and Fine Gael which read:

We are instructed by Fine Gael Limited, a Company registered in England under registration number 05473574. The Company has recently filed an application to register the name “Fine Gael” with the UK Patent Office and the European Trade Mark Office as a Trade Mark.

Our client is now planning to commence trading in Northern Ireland and the Republic in the name of Fine Gael Limited and intends to fully enforce its rights as the proprietor of the trademark. It would appear to our client that your party may inadvertently breach the terms of the trademark and it would not wish to see your client embarrassed by having to make any public retractions or apologies to our client. Our client would also not wish to put the party into a position whereby
it is forced to change its name in some material way.

Our client would wish to enter into negotiations with your party for the grant of a license for the use of the trademark “Fine Gael” and would hope that this is of interest to your party.

Melly also appears to have written to the UK Treasury Solicitor indicating that if he did grant licences to the parties, he would place political conditions on them relating to the way in which public appointments were made.

The remarkable (though understandable on the state of the law) thing is that the Hearing Officer held that the parties could not oppose the registration.

Mr Geoffrey Hobbs QC reached the same argument on three of the four arguments put forward by the parties.

The party names could not benefit from Art.6bis protection as famous marks because there was no proof that the party names had been used as (unregistered) trade marks, nor was the evidence submitted sufficient to establish that they were well known in the UK.

The party names were also not protected by passing off as the parties had no goodwill in the UK.

The ban on registering deception marks also couldn’t help the parties. Mr Hobbs QC divided deceptive registration situations into two types: absolute and relative. Absolute covers deception as to what is being made available, relative covers deception as to who is making it available. The ban on registering deceptive marks was said to only be absolute deception. Concerns about who is making it available should be left to the relative grounds for the refusal of registration. The fear was that UK consumers would wrongly believe that the parties were using their name for fundraising purposes, which would be a relative type of deception, and consequently not covered under the absolute grounds.

However, the parties did succeed in showing bad faith. Although there is no ECJ case law on bad faith, the LCAP thought it legitimate to pay attention to the well-established Community law principle thatCommunity law should be interpreted and applied so as to confer no legitimacy on improper behaviour. Returning to the theme of absolutes and relatives, the LCAP found that the hearing officer was entitled to find that the relative position of the parties was not harmed, in that they would still be able to continue with their previous activities, even if Mr Melly’s application proceeded to registration. However, the hearing officer had paid insufficient attention to the absolute position of Mr Melly, who displayed a lack of integrity in threating to use the registrations in a way which would stop the parties from using their names or, more seriously (because the previous threat could probably be avoided with some good legal advice), by forcing the parties to distance themselves from his use of their names.

The IPKat finds it remarkable that the application for registration almost got away with registering the name of the major political parties in our very near neighbour. The parties didn’t help themselves here by failing to adduce evidence of recognition in the that went beyond mere assertions. Even if they had though, this wouldn’t have helped too much because the problem here was essentially lack of use as a trade mark. This put pay to both Art.6bis and goodwill for the purposes of passing off.


Watch out: EPO fee increases ahead

As from tomorrow, as all European patent attorneys will already know, virtually all fees payable to the EPO will be going up. Some of them (claims fees and renewal fees in particular) will be rising very steeply indeed (see IPKat commentary here), while others are rising by only be a few percent. Another point to be noted is that as from tomorrow it will no longer be possible to pay fees to the EPO by cheque (the IPKat wonders: does anyone still does this?).

All the details are available from the EPO here. The IPKat wonders, given that the claims fee increases are supposed to be 'budget neutral' rather than a way of gouging patentees and paying for retiring EPO staff, how patentees and their attorneys expect to see the total amount they pay for claims changing over the next few months. Will they be rising, staying the same, or falling?

New UK-IPO e-filing directions

A set of new directions have just appeared on the UK-IPO website relating to electronic filing of patent applications and documents relating to patent applications. These directions come into force today (31 March 2008).

As far as the IPKat can see, nothing much is changing compared with what was possible when the new Patents Rules 2007 came into force last December. He notes, however, that it now appears to be possible to do most, if not all, things in connection with patent applications at the UK-IPO online, provided you stick to using Microsoft software.

Merpel wonders: why is there no support for Apple or open source software? Does Microsoft have a monopoly even on patent applications now?

UPDATE (1 April): The UK-IPO have now issued a press release (get there while the link still works) regarding what they state are "major enhancements" to the e-filing services enabled by the new directions. Unfortunately the IPKat is unable to confirm this, as he has never used an e-filing service of any kind.

2007 UK JEB Exam Results

Although they have arrived a little later than some had expected, the results of the JEB exams from November 2007 have just come out. They are available for viewing (by CIPA members only, unfortunately) here.

(right: a cross-stitch depiction of the IPKat on graduation day; available here)

The IPKat, in all his various guises, would like to congratulate everyone who managed to pass any of these exams. This Kat (who passed his UK finals only last year) knows how hard some of them can be. It is certainly not a cakewalk nowadays, no matter what some of those with more experience in the profession might think.

For those who weren't so fortunate, the way to eventual success still lies ahead. With a bit of persistence (or sometimes a lot of persistence), you can get there. Or alternatively (for chemists in particular), you could comfort yourself with the fact that you might just be able to sneak in under the wire by getting your EQEs come this August.

p.s. Thanks to Claire Lazenby for pointing out that the results (at least the trade mark-related ones) are available sans passwords from the ITMA website. The IPKat now also notices that all the results appear to be available directly from JEB here.

Sunday, 30 March 2008

BPI, Virgin to pilot "warning" scheme for downloaders

According to today's Telegraph, internet service provider and telecom company Virgin Media looks set to become the first UK internet company to crack down on subscribers who download music illegally. While record labels are lobbying for a "three strikes" regime that would see those who collect pirated material disconnected from the internet, Virgin has been working with music trade body BPI on a pilot project which could see "dozens of customers" sent warning letters.

Right: Virgin's Richard Branson -- is he pleading not to be cut off?

This trial will go live within months, with the threat (or "option") of disconnecting customers who ignore the warnings. The trial is also open to film and television studios. Says the Telegraph:

"This would be the first time a British internet company has publicly moved to share responsibility for curbing piracy. Two years of negotiations between record labels and internet service providers (ISPs) have so far failed to produce an industry-wide agreement.

A spokesman for Virgin Media said: "We have been in discussions with rights holders organisations about how a voluntary scheme could work. We are taking this problem seriously and would favour a sensible voluntary solution."

The BPI has teams of technicians to trace illegal music downloading to individual accounts. It will hand these account numbers over to Virgin Media, which will match them to names and addresses".
In February the UK government said it would implement legislation by April 2009 unless ISPs came to a voluntary agreement with the music and film industries. According to industry sources, the Department for Business, Enterprise and Regulatory Reform is due to publish a consultation paper next month, outlining legal measures.

Says the IPKat, getting in with a consensual arrangement ahead of any legislative initiative will keep Virgin in the recording industries' good books, but is unlikely to stave off pressure for legislative intervention unless (i) the pilot works, (ii) it is adopted as a sectoral norm by all the other ISPs and (iii) does not raise suspicions within the European Commission that there exists any hidden market-sensitive agenda that will distort or reduce competition between ISPs or upstream or downstream of them. Merpel adds: Virgin's own slightly risquee, devil-may-care, young-and-attractive image may the main victim of this initiative -- it all depends on how carefully Virgin's publicity people spin it.

Wal-mart not so smiley

Slightly embarrassingly, the IPKat can't remember which kind reader sent him this link to the story in Daily Report Online about Charles Smith, a 50-year-old computer store owner who has just won a two-year legal battle with Wal-Mart. Smith had been making and selling T-shirts, beer steins and other items bearing slogans such as “Wal-ocaust” and “Wal-Qaeda.” Wal-Mart failed to protect its WAL-MART trade mark, US District Judge Timothy C. Batten Sr. (Northern District of Georgia) taking a firm view on the issue -- dear to all Europeans -- of whether famous marks, on account of their huge reputations, need more or less protection than less well-known marks:

“The fact that the real Wal-Mart name and marks are strong and recognizable makes it unlikely that a parody—particularly one that calls to mind the genocide of millions of people, another that evokes the name of a notorious terrorist organization … will be confused with Wal-Mart's real products".
Batten also concluded that the yellow smiley face that adorns Wal-Mart signs is not entitled to common law trade mark protection, a decision that one of Smith's lawyers said could hurt Wal-Mart in an unrelated, pending trade mark action over the right to the sunny symbol of happiness. The judgment in Smith v Wal-Mart, No. 1:06-cv-526, is 87 pages long. The Daily Report Online describes it as meticulously crafted.

The IPKat notes that there are other issues at stake: freedom of communication, parody and trade mark disparagement and dilution issues spring to mind. This all goes to show that, the more powerful a trade mark is, and the more cogently it symbolises the business activities of its proprietor, the greater is its vulnerability as a hostage to fortune when others seek to turn its high profile back against its owner.

Walocaust here; Wal-Qaeda here

Saturday, 29 March 2008

Blacklight Power: sci-fi science rejected by UK-IPO


The rather mysteriously-named Blacklight Power, Inc. has come to the attention of the IPKat through a decision that was issued recently by the UK-IPO. The decision (BL O/076/08) resulted in refusal of two of Blacklight's UK patent applications relating to a computerised atomic modelling system, on the grounds that any contribution made was only that of a discovery or scientific theory, in line with the (by now very familiar) Aerotel/Macrossan approach.

This in itself was fairly unremarkable, and the IPKat would normally not think of bothering his readers with it. However, what piqued the Kat's interest was how far the UK-IPO went in reaching their decision, given the rather bizarre subject matter involved. The applications, both of which derived from international application WO 2005/067678, related to a very unusual scientific theory that, among other things, claims to be able to produce virtually limitless amounts of power (bringing to mind various other fantastical perpetual motion-type claims such as those made by Steorn). The hearing officer was, however, much more diplomatic in saying "the physics underlying the invention as disclosed in the applications and comprehensively explained by Dr Mills at the hearing is at the very limit of my understanding".

All this is the work of inventor and scientist Randell Mills (pictured), who has for many years been developing his theory of 'Classical Quantum Mechanics' (see Wikipedia for more details and links). The theory has been widely discredited by many conventional physicists for being, among other things, quite clearly wrong. Dr Mills is not to be dissuaded, however, and continues in his valiant efforts to convince the world that a new energy breakthrough is just around the corner thanks to his new 'hydrino' energy source. Blacklight, which appears to be a commercial vehicle for Dr Mills' ideas, has even been able to obtain investment money to pursue these ideas and attempt to get some patent protection. So far, it seems that Blacklight is not doing particularly well. Even the USPTO realised (eventually) that some of their claims were a bit too outlandish to justify granting a patent on.

As a slight aside, all this brings to the IPKat's mind the work of Arthur Pedrick, well known in patent circles for his outlandish ideas, which he publicised by means of many and various GB patent applications (see here for a selection). Dr Mills' claims look quite tame compared with some of Arthur's ideas.

Friday, 28 March 2008

Friday finicketies

The Onion is having some more fun with other people's trade marks. This time it's Dippin' Dots - a brand with which the IPKat is unfamiliar: the thesis is that, in the future, the earth's inhabitants will consume Dippin' Dots rather than traditional ice cream.

" ... dessert items are made by flash-freezing beads of cream with liquid nitrogen, then storing them in subzero conditions. People enjoy these treats with great regularity, and often remark upon how delicious they taste ...

Put down your crude melting desserts of churned animal's milk and embrace the glorious world of high-tech flash-frozen treats ..."
It seems to the IPKat that one way to gauge the ubiquity of the public's consciousness of a brand is to see whether it features in parodies, satires and humorous pieces aimed at the general public. The Dippin' Dots feature works well for US readers, but the brand is little known outside its home markets (see the brand's biography in Wikipedia).


The IPKat says a big thank-you to his friend Kristof Neefs (Laga, Belgium), for sending him here also, on Ars Technica). This is all about AV v iParadigms, a Virginia District Court decision on whether students have rights to the material they hand in as class assignments. If they do, can they then sue iParadigms (owners of the turnitin automated plagiarism-detection operation) for infringing their copyrights when their works are uploaded not for the purpose of receiving a grade but for the purpose of seeing how many people may have already submitted the same assignment? And can iParadigms plead "fair use"?

In brief, Judge Claude M. Hilton rejected the students' claims. To use the service at all, the students had to agree to a clickthrough statement that absolved iParadigms from legal liability. The students' attempt to get around this by attaching a disclaimer to the material they submitted failed since the iParadigms scheme had no provisions for disclaimers. Arguments based on lack of capacity (the students being minors) and duress got equally short shrift.


What was the IPKat doing back in October 2007 when he missed the registration by Pfizer Inc of a Community trade mark for the word VIAGRA in Classes 01, 03, 09, 10, 16, 25, 28, 29, 30, 31, 32, 33, 35, 41, 42 and 44. The large range of goods and services covered by this registration includes the following, which the IPKat offers without comment:

"Class 28: Games and playthings; ... decorations for Christmas trees.

Class 29: ... frozen, dried and cooked ... vegetables; jellies ...; edible oils and fats.

Class 30: ... tapioca, sago, artificial coffee; flour ...; salt, mustard; vinegar, sauces (condiments); spices; ....

Class 31: ... live animals; fresh fruits and vegetables; seeds, natural plants and flowers; ....

Class 32: Beers; ...; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

Class 35: ... office functions.

Class 41: ... entertainment; sporting and cultural activities.

Class 42: ... design and development of computer hardware and software".

Surgical exceptions to patentability -- clash of principles, few EPO examiners hurt

Surgical Exceptions to Patentability is the title of a seminar which the Intellectual Property Institute is holding on the afternoon of Wednesday 16 April. The speakers are Florian Leverve (co-author of Sweet & Maxwell's loose-leaf reference work European Patent Decisions and a researcher at the Queen Mary Intellectual Property Research Institute) and IPKat team member Jeremy.

Right: having patched up the hospital's plumbing, Eric slips on his surgical mask and practises his latest bits of brain surgery, safe in the knowledge that no-one can see who he is.

According to the IPI's blurb:

"Of all the exclusions from patentability, most poignant is the bar on patenting methods of surgery, therapy or diagnosis practised on the human or animal body. While it seeks to release medical practitioners from the shackles of commercial monopoly and legal liability when choosing how best to treat their patients, many argue that its true effect is to stifle the creation, publication and promulgation of new techniques that save lives or improve their quality.

This seminar, based on a detailed study of decisions rendered by the Boards of Appeal of the European Patent Office, shows how the clash between conflicting principles has been resolved on the facts of individual instances, raising
questions as to whether the current law causes more problems than it resolves".
The venue is the London office of law firm Olswang, at 90 High Holborn, in the heart of Dickens' London. Registration starts at 4.30pm and the event gets underway at 5pm. Refreshments are rumoured to follow. If you're planning to attend, please email Anne Goldstein at the IPI so that you can be duly processed.

John ("the Beast") Bruton savages the yanks ... diplomatically

Thanks to the sharp eye of Birgit Clark (once again!) the IPKat can tell you all about the European Union's latest attempt at IP 'diplomacy' (a polite euphemism for "telling the Americans how to act in our interest rather than theirs").

Right: he may not frighten the Americans, but Ambassador John Bruton certainly scared the Kat!

Details of this attempt are chronicled in a European Union press release last week, headed "EU AMBASSADOR CALLS FOR RESOLUTION OF IPR CASES", says:

Ambassador John Bruton, Head of the European Commission Delegation to the United States, issued the following statement today highlighting the EU-US cooperation on global intellectual property enforcement and calling for the US to resolve outstanding IPR disagreements.

"At a time when there is increasingly impressive cooperation between the EU and the US in combating intellectual property infringements, it is high time for America to resolve our outstanding IPR disagreements."

As the stakes continue to grow in the intellectual property arena, the US should not weaken its voice in the debate by ignoring treaty obligations and WTO decisions. American delay on fixing the 'Irish Music' and 'Havana Club' cases diminish the arguments that both the US and EU countries have against China and other countries that continue to tolerate widespread intellectual property rights infringement.

"Happily, our relatively few – but important – cases are to be seen in the larger transatlantic context where cooperation on intellectual property enforcement is working successfully to combat piracy and counterfeiting. Today's counterfeit goods aren't just handbags and clothing, after all. They are fake medicines, toys and electrical appliances, even knock-off airplane parts! Think about that as you board your next flight."

Only recently, in November/December 2007, EU and US customs authorities worked together to seize over 360,000 counterfeit integrated computer circuits – critical to the infrastructure of modern business, healthcare, education and communication networks – with over 40 different trademarks. Such unreliable goods damage our networks and harm our economies by undermining the ability of European and American companies to compete globally. This 'Operation Infrastructure' was the first joint intellectual property rights enforcement operation undertaken by Customs and Border Protection and the European Union.

"We need to resolve the 'Irish Music' and 'Havana Club' cases and sweep away these long-standing trade irritants in an area that grows more important with each passing day".

The press release then gives some background:

* "Irish Music." Under Section 110(5)(B) of the US Copyright Act, most commercial premises in the US (e.g., bars, restaurants, retail shops) can retransmit broadcast music without paying any royalties to the copyright holders. In 2000, a World Trade Organization panel found Section 110(5)(B) to be incompatible with the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs).

Left: how to take the fun out of Irish music -- Riverdance paramilitaries about to practise the goose step.

Under the terms of a now-expired arbitration agreement, the US had in the past provided compensation directly to the EU right holders. The EU is not satisfied that the level of compensation was proportionate to the damage suffered, and in any event the compensation stopped in December 2004. The EU thus urges the repeal of the provision.

* "Havana Club." Section 211 US of the October 1998 Omnibus Appropriations Act diminished the rights of owners of US trademarks and trade-names, which previously belonged to a Cuban national or company expropriated in the course of the Cuban revolution. It takes away the right to register or renew such trademarks and to enforce such trademarks in US courts. The particular trademark targeted by this legislation was the "Havana Club" rum, which has been jointly distributed by the European company Pernod Ricard and the Cuban company Cubaexport since 1993. Cubaexport had acquired the Havana Club trademark in the US in 1976 after the original owners, the Arechabalas, had let their registration in the US Patent Office expire. In 1997, drink giant Bacardi purchased the Havana Club trademark, the related goodwill and any rum business assets that still existed from the Arechabalas. This led to a dispute on the ownership of the trademark in the United States and to the enactment of Section 211 at the behest of Bacardi.

The WTO Appellate Body found in 2002 that Section 211 violates both the national treatment and the MFN (Most-Favored Nation) obligations of the TRIPs Agreement. It however reversed the finding of the panel on Article 42 TRIPs (right to enforcement of IP rights in courts) and maintained the finding of the panel that the TRIPs does not govern the issue of the determination of ownership of IP rights. After several extensions, the period of time to comply with the WTO ruling has now expired since 30 June 2005. The EC has preserved its right to request the authorization to apply retaliation against the US. Several bills to repeal Section 211 are currently pending in Congress. The EC considers that only repeal would send the right message that one cannot play with IPRs to serve political goals, or to help individual companies win a decisive advantage in a commercial dispute.

* EU-US Cooperation on Intellectual Property Rights Enforcement. As part of ongoing efforts to address counterfeiting and piracy and cooperate on enforcement of intellectual property rights around the world, the EU and the US launched an ambitious new initiative at the EU-US Summit in 2006. Key components of the effort include closer customs cooperation, joint European-American enforcement efforts abroad, particularly in China and Russia, and much greater collaboration with the private sector.

Says the IPKat, Ambassador Bruton pulls out all the tricks: he pats the Americans on the head for the positive things they do [ie things they do together with the Europeans]; he reminds them that they should retain [or regain?] the moral high ground by complying with international treaty obligations -- and he tells them that, if they don't do this, they are no better than the Chinese [or that, in reality, we all know that the Americans and the Chinese can get away with failure to respond to the WTO rulings, while the rest of us can't?]. But will it work? Merpel says, there is a wide range of responses available:

(i) if you read these cases the way we do, you'll see that we didn't actually lose these cases, so there's nothing we need to do;

(ii) we made the rules, so everyone else has to keep them;

(iii) we can't do anything, because to do so would be unconstitutional;

(iv) we're in the process of doing it, but you have to understand that we're a democracy - the only one in the world - and in a democracy you have to give everyone a say;

(v) we are trying to decide which would be the best way of complying, but we keep being told to do it differently;

(vi) everything stops till after the end of the Election Year;

(vii) you're quite right -- we should have complied with the WTO by now and will do so as soon as is feasible. Please accept our apologies.

"Which of these is the least likely?", she speculates.

Thursday, 27 March 2008

WIPO roars over cybersquats -- and here's a new competition

In a press statement issued today, the World Intellectual Property Organization (WIPO) expressed its anxiety about current trends in cybersquatting.

Right: Cybersquatter, by Justin Bua (available here)

The flier for the press release reads, in relevant part:

"Against the background of an unprecedented number of cybersquatting cases in 2007, the evolving nature of the domain name registration system (DNS) is causing growing concern for trademark owners around the world. Last year, a record 2,156 complaints alleging cybersquatting – or the abusive registration of trademarks on the Internet - were filed with the World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center (Center), representing an 18% increase over 2006 and a 48% increase over 2005 in the number of generic and country code Top Level Domain (gTLDs and ccTLDs) disputes".
The IPKat isn't surprised at the trend: he believes it's far worse than WIPO's statistics suggest, since (i) where cybersquatters use sites actively it becomes realistic to pursue them through the courts and secure damages or an account of profits and (ii) where cybersquatters don't use sites actively, reputable traders have to be quite selective as to which ones they proceed against before WIPO, national equivalents or anyone else because of the huge toll in terms of time, money and effort. Merpel adds, the proliferation of pathetic and nearly meaningless top level domains doesn't help either. Who was it that urged the creation of .biz, .name and .info? It surely wasn't reputable business, was it?

Very long list of serious and not-so-serious top level domains here

The IPKat offers a copy of Elle Todd's excellent Gringras: the Law of the Internet (details here) to the best suggestions for truly silly top level domains. Please send your entries here and be patient if you don't get a swift acknowledgement. Closing date: Friday 4 April.

No strike-out in Nokia case

What with all the excitement of his foreign travels last week, IPKat team member Jeremy keeps finding odds and ends that he missed while in transit. One such morsel is InterDigital Technology Corporation v Nokia Corporation and another [2008] EWHC 504 (Pat), a Patents Court decision of Mr Justice Floyd on Monday 17 March.

Right: happier days for Nokia, when fishing lines were more important than telephone lines ...

This case is not (yet) on BAILII and has so far surfaced only on the subscription-only LexisNexis Butterworths service. InterDigital -- emulating Nokia (see IPKat note here) -- sought declarations that some 35 patents were inessential to the standard for European 3G mobile telecoms. In its re-amended defence Nokia argued that InterDigital's action had not been brought for genuine commercial reasons but for tactical reasons relating to the ongoing litigation between the parties. Nokia provided further particulars when asked by InterDigital, which then sought to have these assertions struck out of Nokia's defence under the Civil Procedure Rules (CPR 3.4(2)(a) and/or CPR 3.4(2)(b)) on the basis that (i) they provided no reasonable defence or, if they did, that (ii) they were an abuse of the process of the court.

According to InterDigital , once a real commercial reason for commencing litigation was shown, the fact that there might be tactical considerations was irrelevant: no amount of tactical benefit could cause the commercial interest in having the declaration, and therefore its practical utility, to cease to exist. Nokia disagreed: InterDigital's motives were relevant in two ways: (i) in arriving at a factual conclusion as to whether InterDigital had a real commercial interest in obtaining the declarations and (ii) in exercising the court's discretion, even if it was established that InterDigital had a real commercial interest. What's more, since this case concerned a "developing area of jurisprudence" [the IPKat says: this means there are litigants around but not much law], special care was called for before striking out claims such as these.

Floyd J dismissed the application to strike out. In his view

* there was no authority for the proposition that, provided that the declaration sought by InterDigital would serve a useful purpose, the court should close its mind to other discretionary factors;

* on the contrary, the court had to consider justice to InterDigital, justice to Nokia and special reasons why the declaration should (not) be granted;

* it was not appropriate, when being asked to exercise a broad discretionary power, for the court to determine on an interim application what factors could (not) affect the exercise of that discretion -- unless the matter relied upon could clearly be said to be irrelevant;

* in this case it was impossible to determine at this stage that the reasons advanced by Nokia as to why the litigation was started and pursued by InterDigital could not conceivably have a bearing on whether the declarations should be granted. Nokia's allegations might be relevant to the exercise of discretion to grant declarations in a number of ways.

The IPKat loves green-field litigation and admires the pioneering spirit of Nokia and InterDigital in this dispute. Merpel wonders, though, whether the issue of technical standards is too important to leave to mere chance and contractual arrangements between the patent-pool contributors: perhaps IP and competition legislators should be identifying the key policy issues and then seeing what, if anything, should be done about each.

Many thanks to Jane Mutimear (Bird & Bird), for finally resolving the IPKat's terrible confusion as to which party was which.

Wednesday, 26 March 2008

Chinese hotel liable for sales by shop; Apple opposes Hamburg recordings

The IPKat offers his thanks to Birgit Clark for drawing his attention to this link to some good news for the much-faked Louis Vuitton brand. The news is that the Intermediate People's Court in Dongguan City (southern Guangdong Province) has held a five-star hotel responsible for leasing space to a seller of knock-off Louis Vuitton products. The hotel was ordered to pay 100,000 yuan (US$ 13,888) together with the shop manager. Injunctive relief and destruction of infringing products was also ordered. Sadly those who like transparency -- or who just want to stay there -- the court documents didn't name the hotel, but they did record that the hotel collected a monthly rental of 20,000 yuan from leasing the shop, whose sales staff wore hotel uniforms. No public apology was however ordered, on the basis that the hotel hadn't caused the brand widespread market harm.

The IPKat is impressed with this decision, which looks like it's based on something between vicarious liability and ostensive agency. Merpel says, next time the hotel should dress the sales staff as pirates. That way it should escape liability ...


Another of the IPKat's trusted friends, Ben Challis (of Music Law Updates fame), has emailed him with details of the Beatles' company Apple Corps' plans for legal action against Miami-based Fuego Entertainment, which proposes to release live recordings of the Beatles singing various cover version during their pre-fame residency days in Hamburg. Fuego announced in January that it had acquired the rights to the live recordings off producer and promoter Jeffrey Collins, who claims to have represented the DJ who actually recorded the live Beatles show at Hamburg's Star Club in 1962. The recordings include Paul McCartney performing Hank Williams' 'Lovesick Blues' and McCartney and John Lennon singing together on 'Ask Me Why'.

The copyright situation regarding the recordings is a bit hazy. Collins says the DJ who recorded the gig had permission to do so from the venue, though it seems unlikely the band gave their go-ahead - but crucially these aren't dodgy 'audience member takes tape player into back of venue' recordings. Collins and Fuego both seem convinced the recordings can be released without infringing the copyrights of the band who appear on them, presumably because technically speaking - assuming you accept the recording was sanctioned - the sound recording copyright would originally belong to whoever made the recording, in this case Collins' DJ.

Apple however intends to sue, alleging that the recordings were unauthorised. Moreover, in the terminology of trade mark law, release of the live recordings would "dilute and tarnish" the band's memory because, says Apple, the recordings are of a poor quality.

The IPKat hopes to monitor the progress of this dispute, with a little help from his readers.

Beatles in Hamburg here
How to make a perfect Hamburger here

Patent pop quiz


The IPKat (right: in inscrutable mode) would like to ask his readers a couple of little questions. Here is a headnote from a recent EPO Board of Appeal decision:

"The mere fact that subject-matter, which is excluded per se under Article 52(2) (c) EPC, is technically implemented cannot form the basis for inventive step. Inventive step can be based only on the particular manner of implementation of such subject-matter. To this end it is therefore necessary to ask how the per se excluded subject-matter is implemented."
Now, the questions are:

1. What particular A52(2) exclusion is this decision about?

2. Given your answer to 1, would the same reasoning apply for the other exclusions?

Presumably someone will be able to name the decision itself, but the IPKat thought that it would be better to let his readers think about it first, before checking the web comments to find out.

Madrid amendments for doubly-treatied Union members

The IPKat has learned from the World Intellectual Property Organization (WIPO), via Madrid (Marks) Notification No. 178, of a small but significant amendment to Article 9 sexies of the Madrid Protocol, as adopted on November 12, 2007 by the Assembly of the Madrid Union at its thirty-eighth (17th ordinary) session. The amendment to the Madrid Protocol comes into force on 1 September 2008.

Right: if Madrid Union members don't get this right, they may find tanks on their lawn ...

The new text of Article 9 sexies goes as follows:

"Relations Between States Party to both this Protocol and the Madrid (Stockholm) Agreement

(1) (a) This Protocol alone shall be applicable as regards the mutual relations of States party to both this Protocol and the Madrid (Stockholm) Agreement.

(b) Notwithstanding subparagraph (a), a declaration made under Article 5(2)(b), Article 5(2)(c) or Article 8(7) of this Protocol, by a State party to both this Protocol and the Madrid (Stockholm) Agreement, shall have no effect in the relations with another State party to both this Protocol and the Madrid (Stockholm) Agreement.

(2) The Assembly shall, after the expiry of a period of three years from September 1, 2008, review the application of paragraph (1)(b) and may, at any time thereafter, either repeal it or restrict its scope, by a three-fourths majority. In the vote of the Assembly, only those States which are party to both the Madrid (Stockholm) Agreement and this Protocol shall have the right to participate".
The IPKat reminds readers who may not be intimately familiar with these provisions that the declarations under Articles 5(2)(b) and 5(2)(c) relate to the option of substituting an 18-month period in which a national office can refuse to extend an international application in place of the 12 month period provided under the Madrid Agreement. Article 8(7) permits declarations relating to the manner in which renewal fees can be levied by national offices in accordance with the formula laid down in that provision. Without much background, it looks to him as though this is a case of the Agreement asserting itself over the Protocol though, given modern technology at one end and a growing understanding on the part of national offices on the other that they exist for the benefit of the business community and not the other way round, even 12 months seems like a ridiculously long time or the approval of an international application. Can any reader enlighten him as to the background for this amendment?

Merpel sniffs, I don't know what all this fuss is about. I have relations in Madrid and in Stockholm and we don't need any Protocol to tell us what we can declare or not ...

Tufty adds, whoever edits the entry for Madrid System on Wikipedia needs a gentle prod: this useful resource has not been updated since December 2007.

Tuesday, 25 March 2008

Virtual reality

The avatars fight back

The IPKat took a trip into a parallel universe with a visit to the Seventh Sun, which reports on a new campaign by a group of Second Life Avatars to raise awareness of the ‘theft’ of virtual items created by the avatars (or at least, their creators) and imported into Second Life, where they are sold. The campaign features various seemingly well know avatars au naturel with the slogan ‘Content theft steals the clothes off our backs’.

What stands out to the IPKat is that although the ‘theft’ is of computer code, the rhetoric sounds like it comes straight from the tangible world. According to the avatars, what is being stolen is ‘stuff’ – even though it’s electronic, it does represent clothes, jewellery etc. According to one avatar, who owns a Second Life clothing store: ‘We want residents to understand that, for many content creators, SL is their livelihood and theft here is no different from theft in the real world. Intellectual property theft is illegal and actionable in courts around the world regardless of whether it happens in real life or inside a ‘game.’


World IP Day is on the way

It’s just over a month to go until World Intellectual Property Day (26 April 2008). This year’s theme according to WIPO is ‘celebrating innovation and promoting respect for intellectual property’. The IPKat is puzzled. Celebrating innovation he can understand, but what does promoting respect for IP mean? He thought perhaps that this was politically correct speak for stronger enforcement mechanisms, but then he read WIPO DG Kamil Idris’s message for World IP Day. He rounds off by stating:

"And so, on World Intellectual Property Day, we pay tribute to the inventors and artists, great and small, who enrich our existence with the fruits of their innovative thoughts and creative vision. And we remember why it is that their intellectual property rights, the rights that they have earned through their individual and collective talents, deserve our admiration, our protection, and our respect".
It seems then that protecting IP is different from respecting it. What does respect mean then? Should the IPKat doff his cap each time an inventor walks past?

Angora cats have their day in court

Readers have been pleading with the IPKat to quote what the Court of Appeal for England and Wales actually said about cats in its recent decision in European Central Bank v DSS (full text here on BAILII; short note here from the IPKat; newsy account here from Managing Intellectual Property).


Right: is this Angora cat a claimant or a defendant? Read on ...


The ipsissima verba of the felinophile Lord Justice Jacob are as follows:

"[This litigation] illustrates yet again the need for a one-stop patent shop (with a ground floor department for first instance and a first floor department for second instance) for those who have Europe-wide businesses. The case illustrates another point too: Kitchin J records at [88] that "the positions adopted by DSS before this Court and the CFI are radically different." As he went on to say:

This case therefore seems to me to be a very powerful illustration of why it is desirable to try infringement and validity issues together, where at all possible. If they are tried separately it is all too easy for the patentee to argue for a narrow interpretation of his claim when defending it but an expansive interpretation when asserting infringement.

Professor Mario Franzosi likens a patentee to an Angora cat. When validity is challenged, the patentee says his patent is very small: the cat with its fur smoothed down, cuddly and sleepy. But when the patentee goes on the attack, the fur bristles, the cat is twice the size with teeth bared and eyes ablaze".

The IPKat endorsed the sentiment that this case was a good advertisement for centralised patent litigation in Europe [Merpel thought it a good advertisement for mediation, too], but modestly refrained from preening himself on the cat point.

Angora cats here
More than one way to skin a cat here
More than one way to cook a cat here

Monday, 24 March 2008

Readers, can you help?

The IPKat has recently stumbled across the Total Recall Info website, which announces the following:

"There were 3,500+ product recalls WorldWide, last year. Toy recalls, Spinach recall, Peanut Butter recall, Pet Food recall you heard about, most recalls you didn't. Manufacturers, resellers and government all attempt to notify consumers about recalls. However, at the present time, there are too many scattered sources, political jurisdictions, and lack of resources to do the required job. Checking for a product recall is difficult and time-consuming work for the average consumer.

But now,there is a better way…

Total Recall Info conducts extensive research DAILY to provide consumers with one comprehensive source that lists all product recalls worldwide. With approximately 10 new recalls announced around the world each day, the purpose of this website is to increase consumer awareness about recalls in order to help reduce household injuries and deaths".
The IPKat is curious to know whether any of his readers have any experience of this service. While it mentions product recalls worldwide, the focus of the service appears to have a strongly US-flavoured taste to it. Merpel notes that at least one of the articles listed on the site mentions a brand (ReNu) by name, so presumably this is something that brand owners who are forced to recall products must be aware of. Please post your comments below or email them here.


Readers have written in to say that the IPKat's link to the decision of the French Tribunal de Grande Instance (9 January 2008) to invalidate the patent which DSS says the European Central Bank has been infringing (see IPKat article here) is not working. Can anyone who has a better link to that decision please post it as a comment, below? Many thanks!

Sunday, 23 March 2008

Recent periodicals

The March 2008 of the Oxford University Press monthly Journal of Intellectual Property Law & Practice (JIPLP) has now been published, looking resplendent in its glossy new blue livery. This is special issue, focusing on IP in the Asia-Pacific, is put together by guest editor Yee Fen Lim, who appropriately contributes a guest editorial too.

Asia-Pacific topics covered include the judicial protection of patents in China, how South Korea has marginalised IP problems arising from MMORPGs by seeking to engage contract law, the Singaporean treatment of non-traditional trade marks and the recognition and protection of well-known marks in Indonesia. The IPKat's favourite, though, is the account by Lanye Zhu and Jiaui Liu of the dispute between the US and China for the moral and indeed legal high ground in their WTO dispute.

Read the editorial in full -- and indeed all the editorials of the past twelve months here
Full contents of this issue here
For free sample, click here; to subscribe, click here; to write, click here
Fifty most-read articles since 2005 here


Also freshly published is the March issue of the European Copyright and Designs Reports, produced six times a year from Sweet & Maxwell. This issue contains five decisions:

* Honda v Kwang Yang Motor Co, an OHIM Third Board of Appeal decision on the novelty of an engine design and the nature of the informed user;

* Holey Soles Holdings v Crocs, another OHIM Invalidity Division decision -- this time on what turned out to be the invalidity of the celebrated Crocs footwear design;

* Atria Yhtyma v HK Ruokatalo, another OHIM Third Board of Appeal design decision, invalidating a design for meat foodstuffs;

* Prodir SA v Dariusz Libera, an OHIM Invalidity Division decision on the novelty of a ballpoint pen design;

* Murphy v Media Protection Services, a decision from the Administrative Court *England and Wales) being the highly-publicised conviction of Karen Murphy for receiving and showing in her pub the (cheap) Greek transmission of live football matches.



Volume 9 issue 2 (of 6) for 2006-2007 of the cult bimonthly Bio-Science Law Review has finally been published. Published by Lawtext Publishing, this wonderful periodical is a lot more current than its volume number suggests -- and as usual it's got some great content. The IPKat's choice here is
* "The Food and Drug Administration Amendments Act of 2007", by a three-man team from US law firm Covington & Burling, Erika Lietzan, Michael S. Labson and Shaw Scott. Is this state-of-the-art regulation or voluminous government meddling in free commerce? Don't sneer at this question: it was the subject of furious debate when US food and drug regulation was first mooted in the 19th century.

* "Interpreting Ordre Public and Morality in a Patent Law Context: Which is the Correct Approach?" by Tine Sommer (Aarhus School of Business, Denmark.

"Dangerous to use common sense", says patents judge

A treatment for psoriasis was at the core of Leo Pharma and another v Sandoz Ltd, a decision of Mr Justice Mann in the Chancery Division, England and Wales, on 17 March 2008. So far this decision has only been picked up by LexisNexis Butterworths' subscription-only site.

Leo held a patent for calcipotriol monohydrate, a new crystalline form of calcipotriol which was used in the treatment of the skin disease psoriaris. The patent claimed that the monohydrate form had technical and stability properties better than those of the existing anhydrate form. On April 2007 Sandoz obtained market authorisation for a calcipotriol ointment, launching the product shortly thereafter. On 18 June, it obtained market authorisation for a cream, the authorisation being posted on a publicly available website on 26 July.

Leo obtained a sample of the ointment and, on testing it, found that it contained the monohydrate version of the calcipotriol molecule. On 28 August Leo's lawyers wrote to Sandoz, stating that the ointment infringed its patent. Their letter added that Leo understood that the cream was to be launched in September and requested a sample, inferring that it too would contain the monohydrate molecule.

In the subsequent correspondence between the parties, Sandoz refused the request for a sample on confidentiality grounds and challenged the reliability of Leo's testing procedures. Sandoz continued to refuse the request, which was repeated on several occasions, and failed to disabuse Leo of their mistaken belief as to the date of the cream's launch, which actually occurred on 31 October. Following a further request for a sample made in December, Sandoz told Leo that the cream had been on the market for some time, meaning they could obtain a sample from a third party. Having experienced difficulties in getting hold of a sample, Leo repeated the request and later told Sandoz that it would be bringing infringement proceedings. At this point Sandoz made samples available, the testing of which revealed the presence of the monohydrate molecule, which constituted 15% of the crystalline forms detected.

At this point Leo applied for an interim injunction to stop Sandoz distributing the cream. Sandoz argued that there was no serious issue of infringement to be tried since, according to Leo's own tests, the presence of monohydrate crystals was so small that, as a matter of common sense, the beneficial effects referred to in the patent were not present. Questions also arose as to whether damages would be an adequate remedy for Leo if Sandoz were allowed to market the cream until trial, and as to the adequacy of any cross-undertaking in damages that Leo (whose own financial position was in doubt) would have to make in favour of Sandoz in the event that interim relief should not have been granted.

Mann J allowed Leo's application for interim relief. In his assessment of the situation

* there was a serious issue to be tried regarding infringement. It would be dangerous for a judge in an interim application to use common sense to determine what is ultimately likely to be a technical question that might require expert evidence.

* as to the balance of convenience if an interim injunction were either granted or refused, both parties had a case for saying that financial compensation would be inadequate to address their losses, although the impact of the financial uncertainty was greater so far as Sandoz was concerned. Accordingly, it was necessary to turn to other factors going to the balance of convenience and, if necessary, the status quo.

* the balance of convenience and what could be taken to have been the status quo also pointed in favour of granting an injunction. The correspondence in this case showed that Sandoz had embarked on a deliberate tactic to obstruct Leo as far as possible. While this was not something which was legally wrong, since Sandoz was entitled, as a matter of law, to employ this tactic, the fact that it had done so would have an effect on the balance of convenience and on determining the appropriate period by which the status quo was measured.

* the uncertainties relating to the adequacy of damages were created by Sandoz itself. This shifted the balance of convenience in favour of granting an injunction. Likewise Sandoz could not rely on a status quo whereby it had been distributing its product for three months as a result of its own unreasonable behaviour.
The IPKat agrees with the result, but wonders whether it is strictly correct to predicate the issue of balance of convenience -- an issue relating to the future -- upon the nature of the defendant's past conduct. It would have been nicer, he thinks, if the court was able to say that, since Sandoz's own conduct, though not unlawful, was not very sporting or cooperative, equity favoured Leo whose own conduct had been (on the brief facts of the LexisNexis note) irreproachable. Merpel adds, the conduct of patent owners is often the subject of adverse criticism; it makes a change to see the reproaches being aimed at the alleged infringers. Says Tufty, here's a conundrum: the judge says that it's dangerous to rely on "common sense" to determine a technical issue -- but the decision not to leave the technical issue to common sense is itself a decision that is based on common sense. Sort that one out!

More on psoriasis here
Coming up to scratch: psoriasis treatments for cats here

Friday, 21 March 2008

Friday flippancy

If you don't like the seedy practice of domain tasting and think it should be curbed, did you know that ICANN's Generic Names Supporting Organization (GNSO) is soliciting comments on its draft resolution on this very topic. If you care enough to vent your feelings, you've only got until 28 March to vent your spleen. For more information click here.


Back in January the IPKat posted this item on the revocation of DSS's French patent, this being part of an ongoing dispute as to whether the European Central Bank infringed DSS's anti-forgery technology. This item gave a link to the judgment of the Tribunal de Grande Instance in Paris on 9 January 2008. Alas, the link doesn't work any more. Does any reader have a link that he or she could kindly post as a comment below?


IP-Lite is the name of a new intellectual property blog, powered by the IPKat's friend and SOLO IP team member, London solicitor Shireen Smith (Azrights). You can visit it here. Good luck, Shireen!


Another new-ish IP weblog that the IPKat has just discovered is IP Kenya, masterminded by David Njuguna, a patent examiner at the Kenya Industrial Property Institute. David's interests extend well beyond the borders of Kenya (his most recent post deals with IP training for members of parliament in Rwanda) and he knows a thing or two about the battle in his own country to monopolise the colours of local bus service. David will be guesting from time to time on the Afro-IP team blog which is led by Darren Olivier.


If education's your thing, then let the IPKat tell you about two new Masters programmes for IP in Maastricht, which (says the Kat's friend, Anselm Kamperman Sanders) will raise the bar for English language IP education in the Benelux and the German border region. For the launch of the masters, the University of Maastricht's Faculty of Law and the Stockholm Network have organised a conference for 15 April 2008: “The Process and Impact of the of the WHO Intergovernmental Working Group (IGWG) on Public Health, Innovation and Intellectual Property”. The Stockholm Network has pledged its support to the new Maastricht IP Masters programme by awarding three grants of US$9,000 each (three more are destined for QMIPRI). Anyone wanting more details should contact Anselm directly here [Merpel says, these are really Maasters programmes ...].

Thursday, 20 March 2008

Wise after the event

If you search the Scottish Courts website under "intellectual property" you won't find this -- which is why the IPKat missed it on his prowl -- but Wise Property Care Limited v White Thomson Preservation Limited and others [2008] CSOH 46, a passing-off decision of Lord Matthews (Outer House in the Court of Session), was posted on the Scottish Court website this morning. The Kat thanks his friend and fellow runner Gill Grassie of Maclay Murray & Spens for this vital piece of information).

In this action the Pursuer [says the IPKat: that's the Scottish term for 'claimant' or 'plaintiff'] White Preservation, a trading division of Wise Property Care, successfully defended an application for recall of interim interdict (interim injunction) which had been granted without notice against White Thomson Preservation Limited and others. Says Gill (you'll have to do the delightful Scottish lilt yourself when you read it out):

"You will see that the case has a complex background borne out of a family dispute where the surname of the brothers involved was 'White'. The Pursuer successfully argued that the Defenders' use of the name White Thomson Preservation Limited was confusingly similar to their trading division 'White Preservation' and that the Defenders' use of that name passed off their business and services as those of the Pursuer.

As ever it's the facts that make the case quite interesting, with the Defender trying to pick up and run with goodwill which, he was effectively saying, had been lying dormant. The suggestion that this somehow gave him a defence to passing off which is assessed on an objective basis was quite rightly rejected by the judge. It is good to see the Scottish courts (and in particular recently appointed Court of Session judge) taking such a firm approach at an early interim stage of an action".

The IPKat says, it's depressing to see that passing-off actions in Scotland are as wordy and as fact-specific as their counterparts in England and Wales. This suggests a universal truth that, where IP is protected at the level of unregistered names, the courts do not so much apply the law to the facts as determine the nature of the facts and thereby establish the parameters of the law. Merpel says, but itsn't "justice in the individual case" something we strive to achieve?

Firing blanks: Lithuanian importers are forced to pay

The IPKat's Lithuanian friend Andrius writes to inform him that the Supreme Court of Lithuania has heard a case involving the private copying levy (also known as the blank media tax or levy) as a way of compensation to authors for the exceptions to copyright provided under the Lithuanian Copyright Law and Article 5(2)(b) of the EU Copyright Directive.

Right: resourceful Lithuanian litigants demonstrate an infallible way of stopping judges falling asleep in appellate courts

Says Andrius:

"The claimant - the Lithuanian collecting society (which also collects and distributes the private copying levy in Lithuania - sued a private company for refusing to pay the levy. The defendant argued that

(i) While the Lithuanian Copyright Law imposed the obligation to pay the levy on importers of blank media, since the defendant was importing the unlevied goods from other EU Member States within the single market, that did not amount to importation;

(ii) since the levy might have been paid in another Member State, paying it again in Lithuania would contradict the purpose of the Directive;

(iii) it was shown before the court that the media in question was sold not for private but for professional purposes and was not therefore used for private copying.

The case climbed the court ladder and finally reached the Supreme Court of Lithuania, which held for the claimant. It stated that, in the light of the Directive, the definition of importer should be understood as having a wider meaning than in customs-related matters. Narrowing the definition of the importer and
imposing the private copying levy only on media that were imported from third
countries would be contrary to the spirit of the Directive (note that Lithuanian courts are reluctant to refer to any spirits of any directives), the Court said. It continued that the Directive explicitly provides for the fair compensation to the rightholders if the private copying exception is applied.

As to "double taxation" argument, the Court emphasized that exporters are entitled to retrieve the paid levy when blank media are exported from the country. This, in Court's opinion, makes the argument essentially null and void.

The third argument was dismissed, to my point of view, leaving "the spirit of the Directive" aside. While acknowledging the possibility of proving the contrary, the Court held that the private copying purpose is presumed and this presumption was not rebutted by the defendant. The Court did not explained how it should be done and what evidence is required.

This decision ended the long-landing litigation and cleared the way for the collecting society to claim levies from all Lithuanian importers of blank media".

The IPKat thanks Andrius for telling him about this. Once again, whether one loves blank media levies and thinks they're cool or detests them like the plague, it cannot be in the best interests of creators, performers, the recording industry, manufacturers of the relevant hardware or indeed importers to have to waste money on a country-by-country basis around the European Union when the issues are simple to resolve in principle and could have been resolved by a couple of paragraphs of well-drafted law in an appropriate directive. That way, collecting societies wouldn't be spending on legal fees the sums which could be put to better effect if paid to their members. He also asks, does anyone have handy figures concerning the annual legal spend of Europe's many and varied collecting societies when they're trying to establish matters of clear legal and commercial principle, rather than chasing down the usual non-payers?

Merpel says, given Lithuania's horrific record (sic) in the Eurovision Song Contest, I assumed that blank media probably cost more than the recorded stuff.

Lithuania as an originator of recorded music: a story of shame here and indeed here
Lithuania's musical pride here

Wednesday, 19 March 2008

DSS's patent deceased -- in the UK, at any rate

The Court of Appeal for England and Wales gave its ruling today on the controversial and vigorously-litigated dispute of European Central Bank v Document Security Systems Incorporated [2008] EWCA Civ 192, with Lord Justice Jacob delivering judgment on his own behalf and for his colleagues (Lord Justice Lloyd and Sir John Chadwick). You can read the text in full here on BAILII. This was an appeal against the decision of Mr Justice Kitchin here (noted by the IPKat here). In short, Kitchin J found that DSS's banknote anti-forgery technology patent had been amended so much in the course of its early life that, by the time it was granted, it was quite different from the invention for which patent protection was originally sought.

Right: the IPKat applauds the Court for its use of illustrations. If he can't follow the words, he can at least enjoy the pictures ...

In a fairly short decision by modern English standards (just 52 paragraphs) the Court of Appeal firmly dismissed DSS's appeal. The vast bulk of this judgment consisted of a helpful review of the technological background and a painstakingly careful review of the evidence. Having done all this, the Court of Appeal had no doubt that the trial judge's reasons for his holding were absolutely sound.

The IPKat feels that disputes of this nature, involving allegations of infringement and claims fo revocation in a range of closely connected jurisictions with the same substantive laws, though different evidential and procedural rules, are a good argument in favour of mediation [says Merpel -- if you're man enough to handle it] or centralised patent litigation in Europe.

Other ECB/DSS disputes have been noted by the IPKat here (Dutch patent held valid), here (French patent revoked) and here (German patent valid).

SuperKat - more fun, more functionality

Regular visitors to the IPKat weblog will find a few small but potentially significant add-ons dotted around the site. They are

* a Google facility, to the top left hand side of the webpage, that lets you either translate the entire blog into one of five European or three Asian languages (if you click the flag icon) or gives you the opportunity to translate or look up individual words or phrases (if you click the Google Translate icon);

* a Digg button, which you will find at the bottom of each post. Digg is a news-sharing service: if you think an item on the IPKat is so newsworthy that it deserves a wider audience, press the Digg button and it may well score high enough to get one;

* a Slashdot button, which you will spot just next to the Digg button. Slashdot is a "news for nerds" service, which features items recommended by readers of weblogs and that have sufficiently higj law-and-computing content - software patents, open source and so on. The IPKat has been slashdotted a couple of times in the past years, which creates a huge and upwardly mobile, if temporary, surge in the otherwise modest accretion of his readership.
The IPKat hopes you enjoy playing with these new features. Merpel however suspects that they may turn into work avoidance rituals, particularly the Google Translate buttons.

Cats and language here and here
Cats and buttons here and here
Cats and digging here and here

Tuesday, 18 March 2008

INTA Grapevine Symposium: 7th and final report

IPKat team blogger Jeremy has never had a better chance to speak to a literally captive audience than in the final session of INTA's Advanced Trademark Symposium in Grapevine, Texas. A storm of majestic proportions materialised out of nowhere and grounded the entire fleet of aeroplanes at Dallas/Fort Worth that were poised to spirit several of the symposium's participants away before the close of the event.

Right: the Gaylord Texan - venue for the symposium - keeps its architectural features dry, even in the worst storms, with a vast glass roof

Resuming their seats with at least the appearance of good humour and resignation, the thwarted early-leavers were treated to all the thrills of "Internet Hot Topics", the session being moderated by Ellen Shankman (she of the eponymous law firm) and featuring contributions from Jeremy himself, Daniel J. Cooper (Fox Interactive) and Laura Hauck Covington (Yahoo!).

Jeremy opened with the unsurprisingly un-hot (and uncool) topic of trade mark auctions on the internet. He focused on three issues: why internet auctions are a good idea, why no-one is using them much as a means of selling trade marks and what a wealth of problems - due diligence and otherwise - are thrown in the face of anyone seeking to make such a purchase. He related the sad tale of the attempted eBay auction of the CRAZY EDDIE trade mark, where the $30,100 at which the mark was withdrawn fell a long way short of the $800,000 "buy now" pricetag.

Daniel followed, giving the perspective of the carriers of user-generated content (his company owns MySpace) about take-down and immunity issues relating to internet service providers. He reminded the audience that the US Digital Millennium Copyright Act (DMVA) had no legislative counterpart for trade marks, and questioned whether the DMCA, the Communications Decency Act or the Lanham Act's little-known exemption from liability for innocent printers [whatever "innocent" means here] might provide workable models for achieving a satisfactory balance of interests between IP owners, ISPs and their customers. He also analysed the legal issues following the take-down demand made on behalf of Prince in onnection with an unauthorised cellphone snap taken at the artist's concert (Prince's sign - now thought by some to be a cryptic copyright symbol - is featured here, right).

Laura then spoke openly of trade mark and other IP issues affecting multifunctional web-based operations such as Yahoo! In describing flickr's licensing structure she stated a profound truth concerning the sad reality of human life on the web: "no matter what sort of service you put online, people will eventually turn up on it".

Laura then contrasted old hierarchical models for web use with the new horizontal and interactive regime of Web 2.0, echoing in more discreet terms the coarse refrain of the new web generation that if you want to exploit your IP on the internet, you have to be prepared to lose some control over it - even if all you are doing is seeking to promote cooperation and the creation of user-generated content based on your own IP. Finally she reported on the latest developments regarding ICANN, the GNSO and suggested means of control of domain tasting.

By common consent, this was a successful symposium. Not much drinking was done (check out the etymology of 'symposium' if you're not sure about this allusion) but, to compensate, there was a good deal of thinking. It was well worth the effort to attend.

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