Friday factualities

Please, please, please take a look at the Forthcoming Events feature in the side bar of the IPKat's home page. You may not be able to afford to attend these events, but at least you can be jolly envious of those who can ...

The IPKat has been asked various questions about intellectual property law on the Isle of Man. If you're interested, you can follow the link to the Manx Treasury, which is responsible for it.

Right: The IPKat looks for an extension, but that's another tail ...

Is it really possible to litigate a patent dispute in England and Wales for no more than £50,000? "Yes" is the belief of a group of experts whose experience and integrity demands that their conclusions be taken seriously, even though one's intuitive feeling is that they must have lost a zero in the typing-up. For information take a quick peep at PatLit here.

Congratulations to Lord Neuberger, chime the Kats in unison. This distinguished judge, formerly of the House of Lords, has now been appointed Master of the Rolls, which means that he gets to run the civil side of the Court of Appeal for England and Wales. Sir David (for that is he) is believed to be the first former judge of the Patents Court to be appointed Master of the Rolls since the post was established in 1286. The IPKat is a great admirer of Lord Neuberger, whose dissenting judgment in Coflexip v Stolt Offshore he rates as one of the finest patent judgments he has ever read.

Thanks are due from the IPKat to Laurens Kamp (Simmons & Simmons), for this entertaining article about whether cats are left- or right-pawed. It's good to see original research into subjects like this.

EU identifies IPRs as trade barrier with US

The IPKat learns from IPWatch that the European Commission has issued a report highlighting trade barriers between the US and the EU. After stressing the closeness of the EU/US trade relationship, the report explains its purpose thus:

This annual report on U.S. trade barriers from the European Commission highlights some of the impediments that the European Union encounters when doing business with the U.S. The barriers described range from the small and relatively easily addressed to larger, more complicated problems, including challenging regulatory questions and some issues that have been or are being litigated at the World Trade Organisation. No matter the size or economic impact, all barriers need to be addressed, as far as possible, to help maintain and strengthen both transatlantic confidence and broader faith in the multilateral trading system.

Included are a number of IP-related trade barriers, namely:

• The US exemption for small businesses from paying copyright royalties (even though the US has lost a WTO case on the issue
• The lack of broadcast rights for producers and performers under US law (even though such rights are afforded to their US counterparts under EU law)
• Difficulties regarding GIs, particularly various European wine names classed as 'semi-generics' in the US
• Failure to inform patentees when the US authorities are going to use a patent
• s.337 of the Tariff Act 1930, which allows the owners of US IP rights to keep infringing articles out of the US
  
• The Havana Club case, whereby trade marks identical or similar to those owned by confiscated Cuban entities cannot be registered or renewed
• The US's first-to-invent patent system (though the report notes that the US is becoming more accepting of the first-to-file system)
• The Hilmer doctrine (excluding certain European prior art)
• Differences in patentability of business methods and computer software
• Differences concerning encryption products
  
• Strictures involving US plant variety rights
  

The IPKat reckons that these barriers are common knowledge. The impact comes from gathering them all together and placing them in the wider context of trade relations.

The MoU, the merrier ...

The IPKat was very excited when he read earlier this week about the Memorandum of Understanding concluded between the European Patent Office (EPO) and the Institute of Electrical and Electronic Engineers, Inc Standards Association (IEEE-SA). According to the EPO's website:

"Signed by EPO's ad interim Vice-President for Legal and International Affairs, Wim Van der Eijk, and IEEE-SA Managing Director Judith Gorman, the memorandum aims to increase co-operation between the two institutions on standards and intellectual property.

In the MoU, the two organisations agree to share knowledge, information and documentation on technology and standards, and to collaborate on education related to standards and IP issues. The IEEE will also facilitate the involvement of EPO representatives in all relevant IEEE-SA working groups and investigate whether the Office can participate in beta testing of its document management system.

"Clearly defined interfaces and information exchange must be established between formal standards setting organisations and patent offices in order to increase transparency in this critical field, where two types of regulatory systems are interfering " says Wim Van der Eijk. "This is the first agreement of its kind, but it is part of a wider strategy."

"We are also in talks with the International Telecommunication Union (ITU) and the European Telecommunications Standards Institute (ETSI) and hope to conclude similar agreements with them," he said.

"This landmark collaborative agreement with the EPO will help educate, promote and strengthen positions surrounding intellectual property polices in standardization," says Judith Gorman, IEEE-SA Managing Director. "It opens the door for a wide-range of activities related to IP in efforts to support the IP needs of industry not only in the EC, but around the globe."

Closer involvement with standards organisations is supporting EPO's efforts to make sure that the patent system contributes to the promotion of innovation and a healthy, competitive environment for business.

The IEEE, a not-for-profit corporation based in New Jersey, is a leading developer of international standards that underpin many of today's products and services, particularly in the fields of telecommunications, information technology and power generation".

The IPKat is a cooperative Kat, and he likes to see bodies like the EPO being seen to be caring and sharing. But what he wants to know is this:

* There are a lot of long and quite grand words in this MoU -- but what in practical terms do they mean for the examiner or the Boards of Appeal when they are carrying out their current functions?

* How will the effectiveness of any tangible outcome from the MoU be measured? By whom, and at what intervals of time?

* If standardisation in this context means what the IPKat thinks it does, are there any plans to bring the EU or national competition authorities into the circle? This may be important if standards bring about a need for cross-licensing or pooling of patents, with subsequent and vital significance for issues such as the ability of new entrants to gain access to the standards at an affordable cost and the feasibility of developing and patenting technologies that compete with those subject to the standards.

Merpel says, I just can't look at the letters "MoU" without adding "SE" ...

Zeno, dead cats, veiled threats ...

Dead cats had an airing in the Patents Court today, in Zeno Corp (Formerly Known As Tyrell Inc) & Another v BSM-Bionic Solutions Management GmbH & Another [2009] EWHC 1829 (Pat), a patent infringement ruling by Mr Justice Lewison.

The invention in this case was a hand-held unit for the treatment of insect stings and insect bites. Zeno didn't use it for that purpose, but for the treatment of acne, accompanied by an instruction leaflet that says it should not be used for insect or spider bites or stings. Following receipt of a letter from the patent owner's attorneys the Boots chain of chemist stores stopped ordering Zeno, although they were later persuaded to reorder. This action, predictably, had a counterclaim for invalidity and a claim relating to unwarranted threats to bring infringement proceedings.

Finding the patent valid but not infringed, and agreeing that the letter to Boots was an unjustified threat, the learned judge had this to say:

"... if the manufacturer of a product does not design or intend it to be used for the specified purpose, how does one judge whether it is "suitable" for use for that purpose? Is it simply a question of whether something is capable of being used for a specified purpose? After all, Terrell [a leading UK practitioners' work on patent law] is capable of being used as a doorstop or a paperweight; and a popular cartoon book of a few years ago was entitled "101 Uses for a Dead Cat". Was it "suitable" for all those uses? Closer to home, some of the feedback relating to Riemser's own product extolled the efficacy of a hot mug of tea or a lit cigarette end in applying heat to the site of insect bites. But are these "suitable" things to use?".

The IPKat's long-standing friend and national treasure Trevor Cook (Bird & Bird) wrote to draw the Kat's attention to this decision and to offer the kind hope that he would not be offended by reference to dead felines. The Kat was able to reassure him that it was not uses for dead cats that concerned him; rather it was people who had no uses for live cats ...

Merpel adds, the bit about "threats" is quite interesting since the letter was a funny sort of threat really. As the judge says:

"i) The letter did not mention proceedings or explicitly threaten them;

ii) The letter asserted that "up to this point" the writer could see no difference in the technical solution; but contained a request for the reason why the recipient thought that it need not "take into consideration" the patent;

iii) The writer of the letter was not an English lawyer to whom the conduct of proceedings about patent infringement in England would usually be entrusted.

iv) On the other hand, the letter was not addressed to the manufacturer of Zeno, nor even to Boots head office. It was sent to the stores that were actually stocking the product".

The letter was however written to retailers rather than to Boots' head office. The judge concluded:

"It is not a question of how Boots understood the letter; but how a reasonable person in the position of Boots would have understood it. Read in context, through the eyes of a retailer, the letter amounted, in my judgment, to a veiled threat of infringement proceedings".

101 Uses for a Dead Cat here

House of Lords' IP swan song: a Whiter Shade of Pale

Having been accused of "excessive delay" in bringing his action to be recognised as co-writer of Procol Harum's 1960s classic Whiter Shade of Pale, Matthew Fisher must have been impressed at the speed with which his legal action travelled through the Chancery Division of the High Court (remember Jarndyce v Jarndyce?), the Court of Appeal and now the House of Lords. You can read the decision in Fisher v Brooker [2009] UKHL 41, in full and hot off the internet here and here.

The Lord Law Lords (including one Legal Lady: Baroness Hale, who does remember the 1960s) have ruled that Fisher, who claimed he wrote the haunting pseudo-Bach organ melody which opened the song, is entitled to a share of future royalties.

In 2006 Mr Justice Blackburne concluded that he was entitled to 40% of the copyright. The Court of Appeal overturned the ruling last year on the basis that Fisher had waited too long (if 38 years can be said to be too long ...) to bring the case; accordingly the copyright nestled securely within the portfolio of rights owned by the group's frontman Gary Brooker and lyricist Keith Reid. Today the House of Lords, on its last day of judicial activity before metamorphosing into just another boring old Supreme Court, reinstated the decision of Blackburne J. In its view the delay in bringing the case had caused no harm to the other writers, who had indeed benefited financially from it.

The main speech was delivered by Lord Neuberger (still a teenager in 1967), who said Fisher had repeatedly asked if he could have a share in the rights to the record but was "rebuffed or ignored" by Messrs Brooker and Reid. Lord Hope added that there were no time limits under English law in copyright claims.

Lord Neuberger dealt with the Court of Appeal's decision as follows (at paras 72 onwards:

"... , the Court of Appeal upheld the judge’s conclusion that the judge was entitled to reject the respondents’ case on estoppel, but the majority went on to conclude that Mr Fisher was nonetheless not entitled to determine the licence which the judge found that he had impliedly granted. Mummery LJ’s careful analysis, ... reaching this conclusion and for setting aside the second and third declarations made by Blackburne J, seems to me to be encapsulated in the following two propositions. First, since May 1967, ... Brooker had, to Mr Fisher’s knowledge, continued “exploitation of the work on the basis that they owned all the copyright in it", and “it would be unconscionable for him [now], with a view to enforcing his property right by final injunction, to assert a joint share in the copyright and to terminate the implied licence under which he accepts the [respondents] have acted for very many years”... Secondly, Mr Fisher’s delay in bringing his claim means that “he could dictate his terms and put the [respondents] in a weaker bargaining position than they would have been in, had he made his claim in, say, 1967 or 1969” ...

As to the first of those reasons, it seems to me that, save in a very unusual case, it would be inconsistent to conclude that a claimant was not estopped from asserting his copyright interest, but then to refuse, on equitable grounds, to declare that the right existed. It is possible that there may be cases where such a course could be appropriate, but it would require wholly exceptional facts. ... if, as the Court of Appeal accepted, Mr Fisher originally had 40% of the musical copyright in the work and is not estopped from asserting it, then it is hard to see how he could be prevented from bringing proceedings simply for financial compensation or injunctive relief on the ground of copyright infringement. The refusal to grant him declaratory relief because he might seek an injunction on the back of it therefore seems to be questionable as a matter of principle.

In the present case, the majority of the Court of Appeal thought it appropriate to take such a course primarily because of the apparent inequity of Mr Fisher being able to seek an injunction to enforce his rights as the holder of an interest in the musical copyright in the work. .. this point ... involves the tail wagging the dog. If the declarations set aside by the Court of Appeal are reinstated, then, were Mr Fisher subsequently to apply for injunctive relief to prevent unauthorised use of the work, such an application would be dealt with on its merits. If the court was satisfied that it would be oppressive to grant an injunction in the particular circumstances, for instance because of prejudicial delay, it would refuse an injunction to restrain the infringement, and leave Mr Fisher to his remedy in damages ...

... if and when Mr Fisher seeks an injunction to restrain an alleged infringement of his copyright, it should be dealt with on its merits.

Further, the decision of the majority of the Court of Appeal deprived Mr Fisher of the ability not only to seek injunctive relief, but also to claim any royalties in respect of the exploitation of the work, of which he owned 40% of the musical copyright. (That must follow from the conclusion that he could not determine the implied licence). It is hard to see how that could be right, simply on the basis that it would be inappropriate to grant him injunctive relief, given that Mr Fisher was not estopped from asserting his 40% interest in the musical copyright in the work.

As for the change in the bargaining position of the parties between 1967 and 2005, that was neither pleaded nor argued before the Judge. In any event, there was no evidence that Essex or the respondents would have acted any differently from the way in which they did if Mr Fisher had pressed his claim in 1967 or in the ensuing few years. Further, there is also the judge’s finding ... that Mr Fisher’s very long delay in asserting his claim has been of considerable financial benefit to the respondents, effectively outweighing any disadvantage to them resulting from the delay.

The passage of time

... the basic problem for the respondents is that there is no English law statutory equivalent in the field of intellectual property to the doctrine of adverse possession in relation to real property .... the position in this jurisdiction is that the mere passage of time cannot of itself undermine claims such as those raised by Mr Fisher in the current proceedings. The respondents therefore rely on laches.

The argument based on laches faces two problems. The first is that ... laches only can bar equitable relief, and a declaration as to the existence of a long term property right, recognised as such by statute, is not equitable relief. It is arguable that a declaration should be refused on the ground of laches if it was sought solely for the purpose of seeking an injunction or other purely equitable relief. However, as already mentioned, that argument does not apply in this case. Secondly, in order to defeat Mr Fisher’s claims on the ground of laches, the respondents must demonstrate some “acts” during the course of the delay period which result in “a balance of justice” justifying the refusal of the relief to which Mr Fisher would otherwise be entitled. For reasons already discussed, the respondents are unable to do that. They cannot show any prejudice resulting from the delay, and, even if they could have done so, they have no answer to the judge’s finding ... that the benefit they obtained from the delay would outweigh any such prejudice".

The IPKat has ever since 2006 wondered why Fisher's share was put at 40%: Whiter Shade of Pale is a decently long track and he's sure the organ solo doesn't add up to 40% of its length.

Remembering the 60s here

BBC report here

When anticompetition spices up competition, greyhounds lose their appeal

Although it was really a competition law decision, the ruling of Mr Justice Morgan in Bookmakers' Afternoon Greyhound Services Ltd and others v Amalgamated Racing Ltd and others [2008] EWHC 1978 (Ch), a decision from the Chancery Division, England and Wales last August (noted here by the IPKat) was deemed to be of note to IP lawyers and owners too. Yesterday, at [2009] EWCA Civ 750, the Court of Appeal (Lords Justices Mummery, Lloyd and Moore-Bick) dismissed the appeal against the trial judge's decision. Here's what it's all about.

Bookmakers' Afternoon Greyhound Services (BAGS), a not-for-profit company, was comprised of 22 of the UK's 680 off-course bookmakers. Its memorandum of association included the duty to promote the interests of all bookmakers operating Licensed Betting Offices (LBOs). The other claimants in this action were some of the largest bookmakers in the UK. In 1986 it became lawful to show live pictures of horse-racing in LBOs and, in 1987, LBO operators began to pay a distributor, Satellite Information Services Limited (SIS), for the right to show those pictures; in turn, SIS made payments to the racecourses for those rights.

Eventually just over half the 60 British racecourses decided to participate in a joint venture company, the first defendant Amalgamated Racing (AR), which would serve as their new distributor, setting up the Turf TV channel. Around January 2007 those racecourses licensed their own LBO media rights to AR. The second defendant, Racing UK (RUK), was incorporated in 2004 to exploit the media rights of some 30 racecourses, which accounted between them for about 54% of total off-course LBO betting turnover. The seventh to twenty-third defendants were operators of 17 separate racecourses. The other 29 racecourses licensed their LBO media rights so that they were available to SIS. Both AR's and SIS's services were essential services so far as the LBOs were concerned.

As a result of those new arrangements, the 31 racecourses that participated in the joint venture received more revenue for their LBO media rights, since the LBOs were required to pay more in order to show the races in their premises. BAGS argued that the emergence of AR and its entry into the market was anticompetitive, being the result of an agreement which had as its object or effect the prevention, restriction or distortion of competition under Article 81 of the EC Treaty and the corresponding provision of the Competition Act 1998. On this basis they maintained that the agreements in question, including the agreements by racecourses to grant LBO rights to AR, were void under Article 81(2).

The defendants disagreed. In their view, before the arrangements in question were entered into, the market for LBO rights from racecourses was controlled by a monopsony composed of BAGS and SIS. As a result of its position of control of the upstream market, this monopsony paid racecourses a price that was less than that which their rights were worth. The whole point of making the new arrangements with AR was to allow it to be a new entrant into the upstream market -- this not have the object of restricting competition or of fixing prices but, on the contrary, had the object of enhancing competition. Although the result was that prices paid by LBOs went up, that was the result of enhancing competition in the upstream market, was not a restriction on competition.

In a mammoth judgment of 523 paragraphs Morgan J dismissed the action of BAGS and the other bookmakers. In his view

* There was no legal principle that a vertical supply contract was void when the supplier under that contract was a party to a horizontal price-fixing agreement that was itself void. Thus if a consumer under the vertical agreement wanted to complain that the price charged by the price-fixer was excessive, that consumer had a claim for damages for breach of Article 81. There was no need for the law to enable the consumer to have that contract ruled to be void.

* Here the pre-existing market was one of a monopoly purchaser from racecourses and the objects of the challenged agreement did not have the potential of restricting competition. As the defendants contended, the new arrangements actually had the potential to increase competition in the upstream market.

* The increased prices paid by LBOs did not result from the anticompetitive behaviour of sellers fixing prices but rather from the procompetitive entry of a second purchaser into a market formerly occupied by a monopsonist.

* On the evidence, the objective aim of the cooperation between the defendants was to sponsor the entry of AR into the market. The racecourses wanted it to exist and to have LBO media rights which would differentiate it from SIS.

The Court of Appeal agreed. In its view

* Article 81 only applied if the arrangements made here were intended to restrict competition or had that effect. If they were so intended, it was unnecessary to consider their effect. If the object of an agreement was to promote competition, for example by strengthening competition in a market, opening up a market or allowing a new competitor access to a market, some consequent elements of restriction could, taking a broad view of things, be seen as aiming to promote competition.

* In this case the object of the joint venture was to establish a second broadcaster which could compete both in the upstream and in the downstream markets. To be effective, such a broadcaster needed (i) to acquire media rights for a minimum number of racecourses on an exclusive basis, (ii) to have been promoted by or in association with a number of racecourses, and (iii) to be sufficiently protected at the birth of the venture to enable it to off the ground. This being so, Morgan J was right to reject the argument that the agreement had as an object the restriction of competition.

* Where an agreement did not have as its object a restriction of competition, its effects then fell to be considered. To be caught by the Article 81 prohibition the agreement had to be shown in fact to prevent, restrict or distort competition to an appreciable extent. However, cooperation between competitors in markets closely related to the market directly concerned by the cooperation could not be defined as restricting competition, if that cooperation was the only commercially justifiable possible way to enter a new market, to launch a new product or service or to carry out a specific project, Accordingly there was no reason to interfere with the conclusion of Morgan J that the overall effect of the joint venture was procompetitive.

The IPKat thinks this is right; he likes the idea that a little bit of anticompetition can actually promote competition -- after all, isn't that what the concept of the limited monopoly for inventions, copyright and designs is all about? Merpel says, the balance betweeen the subjective state of the alleged anticompetitors' minds and the objective consequences of their actions is an interesting one: lawyers are probably more comfortable than economists in dealing with the former, while the measurable nature of the latter must surely appeal to the skills of economists more than those of to lawyers. Tufty adds, I just love the word "anticompetitor" -- it's much more funky than grey and malevolent terms like "monopolist".

Afternoon Greyhound here
Dog Day Afternoon here
Cat races here and here

Is it safe?

As all UK patent attorneys will know, getting an order under section 22 is a complete pain. Not quite as bad as dentistry without anaesthetics, but not far off and, for the applicant, somewhat more expensive. Unfortunately it is not always easy to know what qualifies as "being information the publication of which might be prejudicial to national security" (according to s22(1)), so the general rule is either to wait six weeks after filing a UK patent application to find out if a order has been made or, if a first filing outside the UK is required and there is no time to do anything else, to send a copy of your application to the mysterious Room GR70 and ask if it is safe to file it abroad without risking being put in prison for up to two years (s22(9)).

The UK-IPO have now issued some guidance on what might constitute information that could risk a section 22 order being made. Along with the obvious ones like nuclear bombs and chemical weapons, however, there are quite a few categories in which apparently innocuous technology could conceivably fall foul of a secrecy order. The IPKat wonders whether an application directed to encryption, electronics or aerials (to take just a few examples from the list, all of which this Kat has drafted applications to without any thought to a secrecy order being relevant) would fall foul if no mention were to be made of a military application. If encryption is useful, it it not also useful militarily? As a result, in the IPKat's view, this list does not really provide any help at all, and seems likely to result in more confusion for patent attorneys and more work for those in Room GR70. If anyone has any properly useful guidance about what to look out for, could they please let the IPKat and his readers know?

Patent person pursues path of practical experience

Following the sudden and gratifying expression of interest in the most recent "work wanted" post on this weblog, here's another. This, also from a charming and dynamic young lady, goes as follows:

"I am currently searching for work experience in the field of intellectual property. My interest lies primarily in patent work as I have a background in the life sciences, both at degree- and PhD-level. However, I am keen to gain experience in other areas of IP and will voluntarily assist readers of IPKat with any IP-related work.

This year I qualified with the MSc in the Management of Intellectual Property at Queen Mary University of London, passing with distinction the additional papers providing exemptions from the CIPA and ITMA foundation level exams.

My previous work experience involved working as an intern writing articles on the latest patent, trade mark and copyright cases for a monthly publication that provides the basis for IP training sessions at various London law firms. I have also been involved in various science communication activities, presenting biology workshops at
science festivals and writing science articles for newspapers.

I am a fast-learner, hard-working and enthusiastic. If you would value an extra pair of hands and someone with my experience, please contact me".

Use of "trademark.com" domain names for criticism sites

The IPKat's Greek friend Nikos Prentoulis wrote a guest article last week, "Free speech prevails over common law rights in WIPO panel decision", Though it attracted only a couple of posted comments, the Kat received some very thoughtful emails on the subject. One of these is from Matthew Harris (a partner in Waterfront Solicitors), who has written to the IPKat as follows:

"I thought you might be interested to learn that for quite a few years there has been a debate ongoing among UDRP panelists as to the extent to which <[trade mark].com> domain names can be legitimately used for criticism sites.

WIPO chose this as one of the subjects of discussion during the meeting of panelists in Geneva last October under the heading “Criticism sites and other free speech - bridging the divide?”. The “divide” is recorded in paragraph 2.4 of the WIPO Overview of Panel Views. It is broadly between a US approach that has been prepared (at least in cases that involve only US parties) to be influenced by US case law on the issue, and non-Americans that have tended to be less impressed by such arguments and more often than not have concluded that <[trade mark].[tld]> domain names, even when used for criticism sites, are abusive.

In the last couple of years the question has arisen as to whether this divide is logically defensible. This in turn raises fundamental questions as to what extent the UDRP can or should be seen as providing a sui generis system of law (albeit one created by contract) or should be influenced by provisions in national law (including free speech rights under the US constitution as well as national law concepts of “fair use”).

For those who are interested in the subject, decisions in which this debate has been conducted include:

1066 Housing Association Ltd. v Mr D. Morgan, WIPO Case D2007-1461 [declaration of interest: Matthew drafted this ...]

Fundación Calvin Ayre Foundation v Erik Deutsch, WIPO Case No. D2007- 1947

Sermo, Inc. v CatalystMD, LLC, WIPO Case No. D2008-0647 and

Grupo Costamex, SA de C.V. v Stephen Smith and Oneandone Private Registration / 1&1 Internet Inc. WIPO Case No. D2009-0062

The decision in D2009-0693 mentioned by your correspondent is of some interest in that the US panelist reached different conclusions on the issues of “right or legitimate interest” and “bad faith”. However, ultimately it is a decision that appears to be consistent with the traditional “US view”. It does not appear to address the more fundamental debate taking place on these issues.

It is also perhaps worth recalling that the English courts recently strayed into this discussion (perhaps unknowingly) in Patel v Allos [2008]. The decision was picked up by the IPKat at the time but was not as extensively reported as it perhaps deserves. It has not found its way on to the BAILII site. However, a full copy is accessible on Nominet’s website here".

Thanks, Matthew, says the IPKat, for taking the trouble to write in and to elucidate the current state of play in this obvious area of IP v free speech so neatly.

Free speech here

Words are cheap here

Words are cheep here [for those who sincerely believe that all music in 1971 was cool]

Expensive speech here

But will they remove their rings?

Olympic Removals is the unfortunate name of a removal business that has been told it must remove the Olympic symbol from its livery or face some pretty rough litigation. According to the Hertfordshire Mercury, spotted by the eagle-eyed Claire Argent, Olympic Removals -- which happens to be located directly opposite the world-class white water course currently under construction -- has received a warning email from LOCOG, the London Organising Committee of the Olympic Games, to stop using their long-established logo or face being sued. The firm maintains that it has used the five-ring symbol for 22 years and says it will not budge.

LOCOG says the removal firm, which specialises in library moves, should take down or paint over the Olympic rings logo which adorns its fleets of lorries, vans and other signs, and withdraw it from its marketing materials. The deadline for action (17 July) has now passed. The company says it would cost a small fortune to change the firm’s logo, but if they were offered proper compensation they would consider it.

A London 2012 Organising Committee spokesman said:

“The Olympic symbol is the most valuable asset of the Olympic movement and is integral to us privately raising the £2bn needed to stage and host the Games. We are obliged to prevent its use by third parties who do not have an official association with the Olympic movement while respecting the rights of those who are able to do so under the law. We cannot comment on individual cases. However, LOCOG deals with every matter on a case-by-case basis and will always”.

The IPKat hopes that some compromise can be found. Perhaps, for a small consideration, Olympic Removals can become a sponsor: Official Library Removals Supplier or something along those lines.

Cats in danger of being Olympically crushed here

Olympic Delivery Authority delivers ... CATS!

Phones not on hold

Just out this morning and freshly available on BAILII is Mr Justice Kitchin's judgment n Nokia Corporation v Her Majesty's Commissioners of Revenue & Customs [2009] EWHC 1903 (Ch), in which he dismissed Nokia's application for judicial review of HMRC's refusal to detain a consignment of counterfeit 400 Nokia phones and accessories under the Counterfeit Goods Regulation (Regulation 1383/2003), which has been incorporated into UK law by The Goods Infringing Intellectual Property Rights (Customs) Regulations 2004 (SI 2004/1473).

Right: phoning from Colombia, Geraldine was baffled to discover that her brand new Nokia wasn't living up to her expectations ...

The items in question were on their way from Hong Kong to Colombia -- neither of which are countries within the European Union -- and it was during a brief transitory stop at London's Heathrow Airport that they were inspected and found to be fakes. "Detain these goods!", said Nokia. "Can't", said HMRC, which "had difficulty in understanding how goods could be counterfeit within the meaning of the Counterfeit Goods Regulation unless there was evidence that they might be diverted onto the EU market".

After an extensive recitation and review of the law, Kitchin J got straight to the heart of the issue:

"Clearly any power of arrest or detention of goods by HMRC must be exercised in accordance with law. It must have a clear basis for interfering with the property of a third party".

The judge then reviewed the not insubstantial ECJ case law and summarised it as follows:

"49. ... First, infringement of registered trade mark requires goods to be placed on the market and that goods in transit and subject to suspensive customs procedures do not, without more, satisfy this requirement. ...

50. Second, the position is different if the goods in the transit procedure are subject to the act of a third party which necessarily entails their being put on the market (“the Montex exception”). But the burden of establishing this rests on the trade mark proprietor.

51. Third, a mere risk that the goods may be diverted is not sufficient to justify a conclusion that the goods have been or will be put on the market.

52. Fourth, the Counterfeit Goods Regulation has not introduced a new criterion for the purposes of ascertaining the existence of an infringement of a registered trade mark or to determine whether there is a use of the mark which is liable to be prohibited".

Applying these four principles, Kitchin J could only refuse the application for judicial review and express his regret:

"80. ... I recognise that this result is not satisfactory. I can only hope it provokes a review of the adequacy of the measures available to combat the international trade in fake goods by preventing their transhipment through Member States".

The IPKat shares the judge's sentiments. Merpel adds, the same ruling presumably applies equally to situations in which the goods in question are fake brake pads, counterfeit medicines or, which is just as serious, tainted cat food. A review of both the policy and the mechanics of implementation of the detention of goods is certainly in order.

Copyright snippets

Yodelling copyright victory

The IPKat learns from the Daily Telegraph that a Munich court has decided that the heirs of Karl Ganzer, who wrote Kufstien Song, a German yodelling song containing the yodel "Holla-räe-di-ri, di-ri, di-ri" and once voted the best German song of all time, are entitled to the royalties, and not the song's publisher. The publisher argued that he 'jazzed up' the song, and therefore was entitled to a cut. What clinched it was a 1980s document where the publisher admitted that Ganzer was the author of the song.

The IPKat wishes he'd been a fly on the wall at the trial. All that yodelling... He notes though that even though this may be a highly popular song, the royalties only seem to amount to £3,000 per annum.

Author's own music taken down by YouTube

Proof that the silly season is upon us - the Mirror reports that the music producer Calvin Harris is not a happy bunny after the BPI arranged for YouTube to remove his own music from his YouTube account , citing copyright infringement. He has not kept his feelings to himself, but the IPKat won't report precisely what he said.

Oh dear..says the IPKat

Letter from AmeriKat

The AmeriKat has returned to London this week after a relaxing four days of fresh air and sea breezes on the island of Guernsey, only to find she has come down with a mammoth case of flu (not of the Swine variety, she hastens to add). Apparently, the London pollution keeps viruses at bay ...

Viral lobbyists

Like the viruses currently in the AmeriKat's bloodstream, the lobbyists in the hallways of Washington D.C had a busy second quarter infecting the various governmental branches with their agendas. A group of lobbyists that were particularly busy this year was comprised of Alan Davison, Pablo Chavez, Johanna Shelton, Harry Wingo and Robert Tai. These names are undoubtedly unfamiliar to many of the IPKat’s readers, but the corporation to whom they were lobbying for will be – Google Inc. Google spent $950,000 on lobbying this quarter, a figure which is up $200,000 over the second quarter of 2008. The increase is not surprising. In the past year, Google has faced several issues ranging from the hotly-disputed Google Book Search settlement to AdWords lawsuits to various YouTube infringement suits.

Can evidence of confusion be found in the Rosetta Stone?

A change in Google’s AdWords policy last month prompted Rosetta Stone, a provider of foreign language educational materials, to file a trade mark infringement suit in the Eastern District of Virginia contending that Google is free-riding off its Rosetta Stone mark by selling to third parties the right to use the mark for online advertising. Previously companies bid on keywords, including trade marks, which would trigger their advertisements to appear to the right of the Google Search. These key words and trade marks, however, would not appear in the advertisement’s body of text. On 15 June 2009, however, Google widened its policy so that keywords and trade marks would now appear in the advertisement’s text. At paragraph 67 of the claim Rosetta Stone alleges that, due to Google’s dominant position,

“Google effectively forces Rosetta Stone to purchase the ‘rights’ to have official Rosetta Stone advertisements appear when Internet users search the web for Rosetta Stone Marks. In other words, Google has set up a system wherein Rosetta Stone and others are, de facto, forced to pay Google to reduce the likelihood that consumers will be confused by Google’s own practices”

which costs Rosetta Stone “millions of dollars.” Rosetta Stone’s general counsel Michael Wu stated that

“Google and its advertisers benefit financially from and trade off the good will and reputation of Rosetta Stone without incurring the substantial expense that Rosetta Stone has incurred in building up its popularity, name recognition, and brand loyalty.”

Rosetta Stone will have to produce evidence, empirical or otherwise, that Google’s display and use of their mark in the ad text confuses consumers.

The US Circuit Court of Appeals had previously ruled in favour of Google in an earlier AdWords dispute brought by computer repair firm Rescuecom. But this past April the Court vacated this earlier ruling due to a misapplication of the ratio in 1-800 Contacts v WhenU and has now reinstated the case. The only issue to be decided at this trial is identical to the issue in Rosetta Stone’s claim: whether there exists confusion on the part of consumers by Google’s use of the complainant’s marks.

The AmeriKat believes that showing confusion, especially in relation to the behaviour of online consumers, will be incredibly difficult for the complainants in these AdWords suits. As reported in Business Week, Andrew Pederson (Google’s spokesman) said that Google’s AdWords policy was akin to a grocery store’s display of different brands on a shelf:

“Just as it’s reasonable to expect a range of brands on any shelf in a grocery store, providing users on Google with more than one option when they search for a brand name or other trademark helps them to find the best product at the lowest price.”

Except, the AmeriKat argues, grocery stores don’t put Kellogg’s stickers on generic cornflakes in order to assist the consumers in identifying that they are breakfast cereals, albeit at a lower price.

Google Search Settlement

A significant proportion of the lobbying budget will have been devoted to the issue of the Google Book Search settlement. As previously reported by the AmeriKat, the Google Book Search settlement has generated such a degree of concern in various creative industries that the Justice Department has begun an inquiry into the antitrust implications of the settlement and its possible violations of the Sherman Act. The DoJ is not the only governmental organization that will be investigating the settlement. After an initial complaint from Germany (supported by Britain and France) the European Commission will be holding a hearing where interested parties will be given the opportunity to comment on the settlement on 7 September 2009. With rumours that the House Judiciary Committee are contacting interested parties to arrange a hearing into the settlement, the AmeriKat expects that legislative and media coverage of the settlement to escalate in the run-up to the European Commission hearing and the expected 7 October judgment of Judge Denny Chin.

The AmeriKat will be interested to assess whether after these upcoming trials and hearings Google’s lobbying investment will have paid off. The AmeriKat also suggests that readers read this article in the Wall Street Journal about an ex-Google lobbyist who is reported to be working for Obama’s administration.

Other News

 The BlackBerry that may be nestling in your briefcase or pocket right now was made by Research in Motion (RIM). Last Thursday, Research in Motion agreed to pay $267.5 million to settle a 2006 patent lawsuit brought by California-based wireless email company Visto Corporation. The settlement also provides that RIM receives a perpetual, fully-paid licence on Visto’s patents. RIM had previously counterclaimed that Visto’s patents did not involve any new inventions which resulted in various global lawsuits being brought, including in the UK. If this case rings a bell now, it is probably because of Mr Justice Floyd’s refusal to grant RIM its full costs, stating that for its lawyers' (Allen & Overy) $10.32 million fees “one would be entitled to expect each of them to be able to recite all the documents in the case by heart.” Nevertheless, last week’s settlement may signal the end of a run of lengthy patent battles against RIM, whichwill now be able to focus its attention on its core market objectives.

 The Associated Press (AP) settled a lawsuit last week over AP stories that were rewritten and posted without credit on All Headline News. The claim was based on the “hot news” doctrine which originated in International News Services v Associated Press, a 1918 Supreme Court case which stated that, although there is no copyright in facts, breaking news is to be considered as a ‘quasi property’ right. Justice Pitney, in giving the majority decision, developed the doctrine of misappropriation in the news. According to his judgment a news organization has gathered news “at the cost of enterprise, organization, skill, labor and money” and therefore has a limited proprietary interest in it against a competitor. The AmeriKat is all for a settlement, but would have loved to seen the “hot news” doctrine reappear in court with one of its original parties almost 100 years later.

 Last week the AmeriKat reported on a Marvel Comic character, but this week it is DC Comics that make an appearance in her letter. DC Comics has filed a lawsuit against John Stacks, a Florida man who is allegedly committing copyright and trade mark infringements by selling resin composite figurines of Batman, Robin, Catwoman and other characters. Stacks told reporters that he has contracts with all the actors including Adam West, Burt Ward, and Frank Gorshin to use their likeness on his figurines. Stacks contends he has only earned about $3,000 from the kits in the past 10 years. DC Comics are suing him for $7.5 million. The AmeriKat believes that this suit will resolve itself amicably, if only for DC Comics to avoid a RIAA-style PR disaster.

 Speaking of recent RIAA PR disasters, AmeriKat readers may remember the case of Jammie Thomas-Rasset, the Minnesotan mother who has a $1.92 million judgment against her for illegally downloading 24 songs. Two weeks ago Thomas-Rasset’s legal team asked a federal judge to grant a retrial or at least lower the damages to $18,000. The Hollywood Reporter reported that Tomas-Rassett’s attorney, Kiwi Camara, told the court that the $1.92 million judgment was “grossly excessive and, therefore, subject to remittitur as a matter of federal common law.” One of the artists Thomas-Rasset downloaded, Richard Marx, said that he was “ashamed to have [his name] associated with this issue.” The RIAA is apparently open to negotiation.

Friday favourites

As ever, the IPKat reminds readers to check the Forthcoming Events side bar, which is positively encrusted with gems: conferences, courses, seminars, lectures -- all for your edification.


Doing well! The IPKat has heard from the organisers of this year's Handbags at Dawn event, the Annual Intellectual Property and Fashion Conference, in London on 22 September, that early bookings have been strong and a good crowd is expected. IPKat team blogger Jeremy is in the chair and this year, for the first time, the conference is sponsored by Fashionista at Law. Although the event is affectionately nicknamed 'Handbags at Dawn', it covers more than just handbags -- though the handbag has been a much-coveted and much-litigated accessory in recent times (see eg the Birkin bag here and here, Freitag bag, Spongebob Vadobag ...)

Around the blogosphere. The SPC Blog, that quirky little niche blog devoted to the extension of pharma and agrochemical patents, has now brought out its own sequel, SPC 2, or Son of SPC. Well, actually it's not quite like that, but the SPC Blog now has a separate Resources Blog, which is proving popular with, among others, students writing dissertations and who like to have their legal materials accessible in a single location. Take a look, and if you find (or rather, don't find) something which should be there but is missing, please email Jeremy here and let him know.

This is a bit of a quiet time for IP blogs, so there's not much else to report. The European trade mark blog Class 46 has decided to flag its posts via Twitter: you can find Class 46 on Twitter here. Oh, and don't confuse Class 46 with Class 99 -- a blog for design law in Europe which is masterminded by the IPKat's friend David Musker. Good luck, David and your team!

Thanks are due to ...

* Matt Garner (Boult Wade Tennant) for this link to an explanation as to why apes ape and don't invent;

* Iain Stansfield (Olswang) for drawing the Kats' attention to a curious experiment in de-branding by Starbucks;

Right: 'Thank You' Bagpuss, available from Collectables Ltd

* Miri Frankel (Beanstalk), for picking up on how George Orwell suddenly became a non-person, or at any rate a non-author, on Kindle (another of the IPKat's old friends, Hector MacQueen, supplied information on this topic leading to this piece on the 1709 Blog). Miri also sent the Kats a link to an article with one of the year's most unexpected headlines: "Music Industry Lures 'Casual Pirates' to Legal Sites";

* Reg Rea and the lads/lasses in Alicante, for sending the Kats the latest issue of Alicante News, with its special focus on Community trade mark and design practice in Hungary.

When is it better not to have a trade mark?

Yesterday the Court of Appeal for England and Wales (Lords Justices Rix, Lloyd and Wilson) gave its ruling in Whirlpool Corporation v Kenwood Ltd, [2009] EWCA Civ 753.

At issue in this dispute was the shape of Whirlpool’s retro-looking KitchenAid Artisan mixer and its rival, Kenwood’s kMix. The shape of the Artisan mixer was registered as a Community trade mark. Kenwood launched its kMix to be a rival product, intending to attract design-conscious consumers.

KitchenAid (left)

According to the trial judge, Geoffrey Hobbs QC, the average consumer for the purpose of establishing infringement could be taken to be the design-conscious consumer. The goods in question were premium-priced products, targeted at that niche group of consumers. The question of who the average consumer was should be approached with an eye to the ‘real world’ and empirical evidence, said the judge, rather than in the normative/regulatory way adopted by some EU Member States.

kMix (right)

Rejecting the claim that Kenwood's product infringed Whirlpool's Community trade mark, the judge held first that there was no likelihood of confusion and so no infringement under Art.9(1)(b) of Council Regulation 40/94 on the Community trade mark. While the kMix would be recognised as ‘KitchenAid-ish’, it would not be mistaken for a KitchenAid. There wasn’t even confusion of the ‘bait and switch kind’ (though Mr Hobbs QC expressed his belief that this would be actionable), whereby consumers would only realise that the kMix was not a KitchenAid after close examination. Moreover, a consumer who was about to spend upwards of £300 on a mixer would be unlikely to be under a misapprehension as to trade origin. This lack of confusion also meant that there was no misrepresentation for the purposes of passing off.

The kMix made a ‘non-verbal statement to the effect that the kMix is a mixer’. This being so, it was a sign, and Kenwood couldn’t argue that it wasn’t being used as a sign for the purposes of Arts 9(1)(b) and (c).

As for Art.9(1)(c), which addressed Whirlpool's claim that Kenwood's use if its shape took unfair advantage of, or was detrimental to the distinctive character or repute of the mark, the ‘mnemonic’ effect of the two marks meant that there was a ‘link’ between them. However, although it might affect its market share, the kMix would not affect the distinctive character or repute of the KitchenAid mark. In the words of Mr Hobbs QC, the KitchenAid was

‘distinctive with relatively little scope for deviation from the paradigm form. I do not think that the bodywork of the kMix is relevantly similar to a degree which impinges upon the distinctiveness of the trade mark so as to satisfy the 'specific condition' for liability. I think it would be excessive, in the realm of product shapes, to apply the concepts of 'free riding', 'blurring', 'tarnishment' or 'dilution' more generally so as to hold that the bodywork of the kMix was too close to the bodywork of the Artisan for
the purposes of Article 9(1)(c).’

In giving judgment Goeffrey Hobbs QC indicated that Article 7(1)(e) of the Regulation had a role to play in the determination of the question of similarity. This might seem a somewhat surprising thing to say, since that provision deals with absolute bars to registration for

"signs which consist exclusively of

(i) the shape which results from the nature of the goods themselves; or

(ii) the shape of goods which is necessary to obtain a technical result; or

(iii) the shape which gives substantial value to the goods".

Whirlpool submitted that the judge had misdirected himself in referring to Article 7(1)(e) and that he had applied too narrow a test than he ought on the basis that the mark was a shape.

Above: two views of the Whirlpool Community trade mark

Dismissing the appeal, the Court of Appeal held as follows:

* Article 7(1)(e) of Regulation 40/94 did not apply to the registration of Whirlpool's mark because the mark included the brand name and did not consist exclusively of a shape. However, the judge did not err in applying Article 7(1)(e); what he had actually done was to state that the policy underlying that article was relevant to the assessment of whether there was a sufficient similarity for the purposes of Article 9(1)(c), both the mark and the sign being shapes.

* An assessment of similarity had to be carried out on a global basis by reference to the degree of similarity between the mark and the sign (here the Court cited Case C-252/07 Intel Corp Inc v CPM United Kingdom Ltd, noted here and here by the IPKat). This being so, the nature of the mark, the sign and their similarity had also to be relevant. It was, therefore, not a misdirection in itself for the judge to observe that the mark and the sign respectively consisted of the shape of the product itself and that, while Whirlpool's mixer had a somewhat distinctive shape, it did not involve any fanciful or capricious element as a distinguishing feature.

* Other than as sounding a warning note, it was not clear what effect the judge's observation on Article 7(1)(e) had on his actual decision.

* The judge did not apply a narrower test than he should have. Starting by recognising that the two product shapes had enough in common for the one to remind relevant average consumers of the other, while not causing confusion as to trade origin, he accepted that that was sufficient to amount to the necessary link. He then asked whether that link caused detriment or led to unfair advantage being taken of the mark's distinctive character or repute, finding that it did not. No loss of Whirlpool's market share was attributable to any damage to its trade mark and the similarity between the respective articles was insufficient to affect the distinctiveness of the mark. No 'blurring', 'dilution', 'tarnishing' or 'free-riding' had been made out. By saying those concepts were not to be applied "more generally", he only meant that they could not properly be applied so generally as to find that the shape of Kenwood's mixer was so close to that of the mark as to infringe under Article 9(1)(c) -- not that they were to be applied less generally where the mark and the sign were both product shapes.

* the facts here were a long way away from those considered by the Court of Appeal in L'Oreal SA v Bellure (see the IPKat note here), where the alleged infringers clearly intended to take advantage of the distinctive character and repute of the claimants' marks. Kenwood had its own established goodwill in kitchen appliances and did not need to ride on Whirlpool's coat-tails. Being a newcomer in a specialist market in which Whirlpool had a monopoly, and having the same basic shape as Whirlpool's mixer, Kenwood's mixer would remind average, design-aware customers of the claimants' product.

The IPKat is reserving judgment on the Court of Appeal's decision till he has had more time to reflect on it.

[Danger: IPKat rant alert] Turning from the logic of the Court's reasoning to wider issues, he does however have this to say: while conceding that he is not the relevant consumer of the litigated products, he really feels that this episode is a difficult one to comprehend. Here are two household items which, even after reading two sets of judgments and looking at the illustrations, he would be hard-pressed to tell apart and which he is certain he would not be able to distinguish from each other if they weren't both in front of him at the same time; here is a case in which it has been apparently proved that there is no likelihood of confusion between the product shapes and here is a Community trade mark for something that looks like the shape of an ordinary household appliance rather than a message that guarantees the identity of the origin of goods bearing that shape. In addition, this dispute has occupied eight days of court time at first instance plus a further three days before the Court of Appeal, not to mention the time spent writing up two extremely long judgments. The result is that Whirlpool is unable to stop a competitor coming into the market with a product that closely resembles its own. This same result could have been achieved far more cheaply and sensibly, for the benefit of both manufacturers, by doing the right thing in the first place and refusing Whirlpool's useless Community trade mark application.

Right: when search engines look for 'cat' and 'mixer' ...

Dangerous Whirlpools here and here
Kenwood heritage here

Enthusiastic IP graddie seeks adventure

A young, vivacious and charming friend of the IPKat is looking for adventure. She writes:

"I am a recent Masters of Law graduate, with a specialism in Intellectual Property from the University of London, Queen Mary, looking for a Legal Internship in London, Europe, or South America. I am available immediately and I am very keen to assist with any projects in the area.

Having studied IP both at undergraduate and Masters level, I am very keen to gain an internship in this area. I really enjoy writing and the policy issues that arise from IP and its relationship to public policy, health, education, access to information and so forth. I have written two IP-related dissertations, one in the area of health, “New Era Genetics, Ownership, and Commodification, Ethical considerations in Biotechnology” and another in the area of education. “Sub-Saharan Africa, Education and The Knowledge divide: Copyright Law a Barrier to Information.” Although what I am looking doesn't have to be limited to the above, this is just to give you an indication of who I am, the direction I am moving in, and what interests me".

If you'd like to contact the young lady concerned, please email the IPKat here and he will forward your expression of interest to her.

Scents and sense -- or perfumes for peanuts?

Having just read "Estée Lauder defends brands", a Financial Times article published today and composed by Jonathan Birchall and Francesco Guerrera in New York, the IPKat has been pondering over the purchasing patterns of the market for scents, cosmetics and so on. This is because it is a long while since he has read anything particularly positive about selective distribution agreements. The article reads, in relevant part,

"Europe's small city-centre perfumeries and luxury boutiques have gained an ally from across the Atlantic in their continuing efforts to prevent the top brands they sell being available at cut-price rates on the internet.

William Lauder, chairman of Estée Lauder, ... warned ... that changing European competition laws could turn the business of buying beauty and skin care brands into an experience akin to flying on EasyJet, the low-cost UK airline.

Estée Lauder, whose brands include Clinique, MAC and Aveda, currently benefits from a "selective distribution" exemption to European competition law that allows the company to sell exclusively to authorised retailers, including the small city centre shops that are part of the traditional fabric of retailing across western Europe.

But the European Commission is reviewing the selective exemption rights that it grants to leading luxury companies that allows them to restrict distribution to favoured retailers and to their own branded e-commerce websites.

Mr Lauder described small local retailers as having "a real familiarity about the local clientele" that is "one of the key, core fundamental social principles of so many cultures and societies in Europe".

Mr Lauder compared the potential impact of taking away the selective distribution exemption to the experience of flying on EasyJet. "You got on the plane, they throw you a bag of peanuts . . . that's a commoditised experience," he said.

... the Commission is not expected to contest the "selective distribution" principle when it puts new draft guidelines out for consultation next week.

However, there has been heavy lobbying over some of the details and Brussels-based advocates for the brand manufacturers say there is still concern that, if a luxury manufacturer does not have an authorised distribution channel in one of the European Union's member states, unauthorised distributors could move in.

They are also concerned that imprecise language in the proposals could encourage litigation - although they say the unpublished draft has improved".

The IPKat notes that, when faced with the opportunity to purchase expensive perfumes and cosmetics, a very large number of consumers excitedly jump at it. If nothing else, this suggests that there exists a market for expensive products sold cheaply and without the hassle or the embarrassment that some feel when purchasing the equivalent product following a face-to-face encounter with an upmarket assistant in a fancy shop. It's equally plain that there are some people who value the experience, the intimate personal touch, the advice and the ambience that a sweet-smelling retail outlet can provide.

The Kat wonders what his readership, comprised of rich lawyers, poor students (not to mention poor lawyers and rich students), scholars, cynics, brand owners, policy makers and other bloggers, makes of this issue. Accordingly he is organising a little sidebar survey (see the top left hand corner of the IPKat's home page) in the hope that he can learn about prevalent attitudes. The survey closes at one minute to midnight, British Rainy Summer Time. on Sunday 2 August.

Adds Merpel, I've flown on easyJet a few times and never got any peanuts thrown at me. Perhaps Mr Lauder got mine as well ...

Free speech prevails over common law rights in WIPO panel decision

The IPKat's friend, Greek practitioner and scholar Nikos Prentoulis, has been getting very excited about a recept WIPO Panel decision over a domain name in which the respondent's freedom of expression prevailed over the complainant's common law service mark rights. Nikos writes:

"In deciding case D2009-0693, WIPO’s administrative panel rejected a domain name complaint filed by Sutherland Institute against Continuative LLC (both of Salt Lake, Utah, USA), after balancing conflicting interests in free speech and trade mark rights. Sutherland Institute, a non-profit organization/think tank, was incorporated in 1994. The institute contested the registration by Continuative of the domain name sutherlandinstitute.com, supporting its claim only on the basis that it enjoyed common law service mark rights.

Continuative LLC had used the contested website, which was essentially the same in layout and features, host political criticism against the Sutherland Institute because of its allegedly anti-gay political agenda. Continuative's site also included two small disclaimers, describing the site as “a parody site, an opposing political platform”. Continuative LLC filed no response to Sutherland's complaint.

Under WIPO rules, a domain name complaint will fail unless the following cumulative requirements are met: (a) the respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights, (b) the respondent has no rights or legitimate interests in respect of the domain name, and (c) the respondent’s domain name has been registered and is being used in bad faith.

In this case, confusing similarity was evidently not hard to demonstrate. Additionally, the panel correctly held that Continuative LLC had no legitimate right or interest in the domain name (this is essentially the “parody site” argument, deriving from the “fair use” doctrine). The key point of its lengthy reasoning was that there was “no transformation into a potential parody object.

However, the complaint failed the criterion of bad faith. The panel held that the disputed domain name was being used for purposes of political speech, which is protected under US Constitution (nb both entities are US based) and, for this reason, the panel would not be willing to interpret “bad faith” in a broad manner. Thus it rejected the complainant’s argument that the domain name was registered for the purpose of disrupting the business of a competitor. According to the decision,

“... only by the exercise of mental gymnastics may a group of gay rights activists be defined as a “competitor” of a conservative public policy think tank. A person seeking the services of a lobbyist or advocacy group who is unable to secure the services of a conservative think tank is unlikely to decide to take its business instead to a group of gay-rights activists. Perhaps in some very attenuated sense these two entities are “competitors in the marketplace for ideas”, but the Panel does not think this is what the Policy means when it refers to “competitors”.

In the core of its reasoning on bad faith, the panel did not contend the fact that Continuative LLC registered and used the disputed domain name to confuse Internet users into thinking that the Sutherland Institute was a source, sponsor, affiliate or endorser of its website. However, it ruled that there was no evidence that it did so for “commercial gain”. The reference to “commercial gain” in paragraph 4(b)(iv) of the Policy, the panel held, was not designed to inhibit “pure political speech.” “In these proceedings the evidence before the Panel indicated that Respondent is engaged in “pure political speech”. There were no advertising links on Respondent’s website. There are no requests for financial support on Respondent’s website. Because this proceeding involves political speech that is strongly protected under the U.S. Constitution, the Panel will not in these proceedings involving two U.S. parties attempt to identify bad faith elements that are not specifically enumerated in the Policy. If the right of political speech is to be interfered with based upon Complainant’s service mark incorporated in Respondent’s disputed domain name, it is preferable that a federal or state court make that application of the concept of “bad faith”.

The pure/impure political speech dichotomy proved effective in this case. It is unclear however whether it can always do the trick. To begin with, as the panel hinted, when sponsorship or fund-raising or even commercial affiliation is involved, “purity” will be highly debatable. Moreover, the limits of pure criticism when it comes to attacking famous trade marks (because such limits do exist) are hard to draw.

The IPKat says thanks, Nikos, for taking the trouble to write. Merpel says, I'm not sure I understand the parody point. Continuative's site does parody that of the Institute. For example, the "real" site reads

"The Sutherland Institute’s philosophy is simple: We believe that parents are responsible for their children’s education and that the state role in education is primarily as a support to parents. We also believe that educational freedom is a necessary ingredient in providing the best education possible for each individual student".

and the respondent's echoes it:

"The Sutherland Institute's philosophy is simple: Unfortunately it's nothing more than a bunch of hate speech wrapped up in this feel good, community knows best garbage that doesn't hold water".

But what precisely is the nexus between the parody of the content and the right to retain and use the name? Perhaps a kindly reader can put the logic in feline-friendly format.

Sutherland here
Sutherland's Law here

Comfy lenses, shame about the patent ...

It was decided rather earlier this month, but the ruling of Mr Justice Kitchin in Novartis AG and Cibavision AG v Johnson & Johnson Ltd and another [2009] EWHC 1671 (Pat) has taken a while to reach the top of the IPKat's must-blog pile. 356 paragraphs can take a long time for a Kat to read and, though he hates to admit it, even longer to get the hang of what it's all about.

In brief, Novartis claimed that J&J's Acuvue Oasys products infringed its European patent for extended-wear silicone hydrogel contact lenses that could be left in the eye overnight or even for several days. J&J counterclaimed for revocation on the bases of insufficiency (ie the teaching in the invention as disclosed did not provide sufficient information for the person skilled in the art to make contact lenses within or across the range of the claims without undue experimentation), lack of novelty and absence of inventive step.

Kitchin J ruled that the patent was invalid for lack of sufficiency. He reasoned as follows:

* As to lack of novelty, it had to be shown that the prior art contained a clear description of, or clear instructions to make, something that would necessarily infringe the patentee's claim if carried out after the grant of the patent. Since the examples in two earlier patent applications cited by J&J did not satisfy all the requirements of any of the patent's claims, this burden of proof had not been met.

* The way of making a silicone hydrogel lens which was ophthalmically compatible over a period of extended wear was not obvious in the light of (i) the common general knowledge or (ii) the content of three earlier cited patents.

* For a patent to be valid its specification had to disclose the invention in a way that was sufficiently clear and complete for it to be performed by a person skilled in the art. In this context, the specification had to enable the invention to be performed to the full extent of the monopoly claimed (citing Biogen Inc v Medeva).

* Whether the specification disclosed an invention clearly and completely enough for it to be performed by a person skilled in the art involved a question of degree: the specification need not set out every detail necessary for performance, but the skilled person should not be required to carry out any prolonged research, enquiry or experiment.

* In this case, the ion permeability values taught by the patent and set by the claims were "extremely confusing and of little or no practical assistance to the skilled person seeking to make an ophthalmically compatible lens suitable for extended wear": it would require a research programme to identify silicone hydrogel formulations which were useful for producing such lenses.

Says the IPKat, this judgment has some interesting material on priority (paras 113 to 140), and a whole mini-thesis on insufficiency (paras 230 to 323). Kitchin J bases his reasoning on the House of Lords decision in Lundbeck, which he sees as reaffirming the reasoning in Biogen, both support the basic rule for sufficiency (see paras 233-234). He cites Lord Hoffmann quoting the Technical Board of Appeal of the EPO in Exxon/Fuel Oils (T 409/91) [1994] O.J. EPO 653: "the extent of the patent monopoly ... should correspond to the technical contribution to the art in order for it to be supported, or justified" (para 233).

Merpel adds: if you want to know all about the place of silicone 3-(methacryloxy)propyl tris(trimethysiloxyl)silane (TRIS) in the history of silicone hydrogel development, or the use of SANS, SAXS, TEM, EDX, AFM, DSC and FEGSTEM in the analysis of microphase structures, you will find the judge's analysis quite un-put-downable.

The Dutch proceedings, in which the same patent is held valid and infringed, here

Contact lenses for cats here

Wild Cat contact lenses here
Cats' eyes here

UK-IPO: more money please

The UK-IPO have just announced a consultation on proposals for introducing changes to the fees charged for getting and keeping UK patents. The proposed changes are many and various, and can be digested in detail by reading the consultation document itself. These include:

• substantial (roughly doubling) increases to search and examination fees;
• the introduction of excess claims fees (although not quite at the level of the EPO);
• increased renewal fees;
• a new fee for contested proceedings; and
• a new fee for recording registrable transactions under section 32.

The IPO's reasoning for many of the increases includes the fact that (amazingly) no substantial increases have been implemented since the early 1990s, and there apparently should be some 're-balancing' of the way the IPO's work is funded, since the cost of search and examination is at the moment mostly paid for by renewal fees.

The IPO want to know what you think about it, and will be welcoming answers to their 11 questions in the consultation until 12 October 2009.

GGF lawyer questions Pirate Bay sale

And yet another chapter in the Pirate Bay saga (see the IPKat's earlier posts here and here): AP and the German magazine Der Spiegel now report that Ricardo Dijkstra, a lawyer acting for the would-be-buyer Global Gaming Factory X (GGF), today announced in an Amsterdam court that his client would only buy the Pirate Bay site if the site could be turned it into a "legitimate business."

Our readers may recall that it had been announced at the end of June that the file-sharing site had been sold to the Swedish gaming company GGF, who had reportedly paid 60m Swedish kronor (£4.7m) for this purchase.

GGF's latest announcement was made during a hearing in a civil case, which has been brought against Pirate Bay and GGF in the Netherlands by Stichting Brein, a Dutch copyright holders association.

Verb it up? Why becoming generic might be good for a trade mark

Have we not always learned that becoming "generic" is one of the worst things that can ever happen to a trade mark?

Well, think again...! While it is still a sensible strategy to advise trade mark owners how to prevent their trade mark from becoming generic, it appears that some businesses are changing their mind regarding this point and actually appear to like the idea of trade marks that can be "verbed up". At least, this is what Noam Cohen argues in this week's The New York Times' article "The Power of the Brand as Verb ". A quick and interesting read.

Picture from zazzle.com

Thanks go to Markenblog.de for alerting the IPKat to this article. After reading the article, Merpel wonders whether it is a good or bad thing that the term "IPKat" does not necessarily lend itself to genericism...

Iceland fishing for EU status

The IPKat, like all self-respecting felines, is passionate about fish. This is why he's so excited to learn that the Icelandic Parliament has voted by a narrow majority to set in motion an application to join the European Union. Iceland's bid must now be approved by the EU, after which Iceland's people will be asked to vote on it in a referendum.

Right: the IPKatfish?

Apart from the fish, Iceland's accession to the European Union would raise to 28 (if no-one else gets there first) the number of countries covered by the Community trade mark and the Community design -- as well as increasing the number of official languages into which the judgments of the Court of Justice of the European Communities and the Court of First Instance may have to be translated. Adds the IPKat, it means another set of dictionaries and lexicons for the Office for Harmonisation in the Internal Market's library and another jurisdiction in which distinctiveness acquired through use will have to be demonstrated before an inherently non-distinctive sign can gain registrability.

Merpel's quite worried. Iceland, she observes, is only one letter away from an existing EU member state, Ireland. Is this not a dreadful case of close similarity leading to a likelihood of confusion?

Lots of facts about Iceland here

Bad news for Lego in Germany

The IPKat's scholarly friend Guido Westkamp has drawn his attention to a decision last week by the Bundesgerichtshof (the German Supreme Court) that Lego toy bricks can no longer be registered as three-dimensional trade marks (Decision of 16.7. 2009 – I ZB 53/07 and 55/07). The full text of the decision is not yet available, but you can read all about it in German via this press release.

Right: Mona Lisa in Lego, by the talented and imaginative Italian artist/photographer Marco Pece. Would works like this have constituted trade mark use? And would they be regarded as taking unfair advantage, without due cause, of the reputation or distinctive character of the Lego brick trade marks? Perhaps now we shall never know.

Says Guido:

"The court asserted that, in assessing registrability as a three dimensional trade mark under Article 3(2)of the Trade Marks Act, the square form of the bricks must be disregarded altogether (this being the basic form of any such product in the respective class for toys), whereas the 'pimples' on the brick's upper side were purely functional. This rulng confirmed an earlier decision of the Patent Office which ordered revocation of the mark. Effectively,this means that Lego can rely neither on trade marks nor on unfair competition (the latter point having been decided in 2004) in seeking to protect its brick shapes".

Exciting things to do with Lego bricks here and here

Lego city of the future here
An impossible Lego model? Click here

How Lego bricks work here

Tweets and copyright

This Kat is a bit of a fan of the WIPO MAGAZINE. For those of you that use the social networking service Twitter and share your thoughts online via so called "tweets", the July edition of WIPO MAGAZINE has a nice short article by Consuelo Reinberg which discusses whether tweets can ever be "original" enough to be protected by copyright (see also the AmeriKat's post here and here). For those of you that do not (yet) use Twitter and wonder what this post is all about, WIPO's article also includes some explanatory notes.

There is certainly an argument to be made that a collection of tweets could - under certain circumstances - qualifiy to be protected under database rights. In this regard, the IPKat recommends Dr Carsten Ulbricht's article (only in German) which can be accessed here.

By the way, just like the IPKat, WIPO can also be followed on Twitter (link here).

"We are alive and well", says Peer-to-Patent

On Friday a puzzled IPKat asked, "What is happening to the Peer-to-Patent project in the United States?" Well, he has just received a most helpful answer from Mark Webbink (Visiting Professor and Executive Director, Center for Patent Innovations, New York Law School). Writes Mark:

"Much of the confusion has come become those who write headlines are not those who write the articles, and sometimes those who write the articles don't read carefully. The USPTO decided not to extend the Peer-to-Patent pilot beyond a second year in order to have an opportunity to evaluate the impact of the program. There may have been other motivations, but that is the only one they expressed to the project team. A decision to not extend the pilot did not mean the project had ended, only that it would no longer be accepting new applications.

Meanwhile, in the last few days before the window for new applications closed, the project received an additional 30 applications. At present we have over 60 applications still requiring peer review, and we will still be in business well into the fall processing those applications.

In the interim we expect to see Dave Kappos sworn in as the new director of the USPTO, and Dave has been an enthusiastic supporter of Peer-to-Patent since its inception. That doesn't mean Peer-to-Patent will get a free pass and automatically get incorporated into USPTO practice, but we do expect to get a fair hearing and, subject to the severe budgetary constraints facing the USPTO, we expect the USPTO to adopt Peer-to-Patent or some derivative thereof.

In the meantime, we are alive and well. By the way, as indicated in our Second Anniversary Report, a majority of examiners found the Peer-to-Patent produced prior art to be helpful, and an even larger number thought Peer-to-Patent should be incorporated into USPTO practice".

The IPKat loves experiments and thinks this one has great potential for a variety of reasons. He says, if the evaluation is positive, fine. If not, don't scrap the scheme but instead let's address the weaknesses and see how it can be made to work.

Letter from AmeriKat

This week’s letter is shorter than usual as the AmeriKat has retreated from the legal streets of London to recuperate on the Guernsey shores, but before she departed she had the following to say ...

“I'm coming for blood, no code of conduct, no law”

For those of you IPKat readers who are not overly familiar with X-Men this quote comes from the AmeriKat’s favourite member of the Marvel gang, Wolverine. Roger Friedman may also be coming for blood or at least a lot of money . Unlike Wolverine, however, Friedman is using the law. The former entertainment correspondent for Fox News who was dismissed after reviewing a pirated version of X-Men Origins: Wolverine has filed a libel lawsuit in the New York Supreme Court alleging that his former employer’s public statements following his dismissal “wilfully, recklessly, intentionally and maliciously” defamed him. Freidman is seeking damages amounting to more than $5 million from Fox News Ltd, its parent company News Corporation and Rupert Murdoch himself. Friedman posted an abbreviated review of the film after watching a leaked version of the X-Men spin-off back in April. In his article he stated that he found

“the whole top 10, plus TV shows, commercials, videos, everything, all streaming away. It took really less than seconds to start playing it all right onto my computer. I could have downloaded all of it but really, who has the time or the room? Later tonight I may finally catch up with Paul Rudd in I Love You, Man. It’s so much easier than going out in the rain!”

Given that News Corporation also owns Twentieth Century-Fox who released Wolverine, it should have been no surprise that Friedman was not to last long at Fox.

Friedman, however, alleges that it was in fact the defendants who were responsible for a series of errors that led to the publication of his review. First, the claim alleges that the copy of Wolverine that was placed on the Internet, had been under the possession and control of and screened by Rupert Murdoch. Second, Friedman alleges that he had emailed in-house counsel Dianne Brandi informing her that he was watching an unreleased version of the film and that Brandi never responded. Third, Friedman’s copy editor Jonathon Passantino approved and subsequently posted the article, all of which Friedman had no control over. On 4 April News Corp. released a statement which stated that Fox News had “promptly terminated Mr. Friedman” and that they “have zero tolerance for any action that encourages and promotes piracy.” Paragraph 37 of the suit alleges that these statements “accused Friedman of the crime of piracy and encouraging and promoting the crime of piracy.”

Interestingly, the suit points to an article published in the The Times in which the journalists “gave detailed instructions of how to pirate movies” and admitted to downloading Quantum of Solace and Iron Man. As many Kat readers will be aware, The Times is also part of Mr Murdoch’s media empire. The claim implicitly argues that, unlike Friedman, those responsible for writing and publishing this article were not publicly denounced as guilty of the act and encouragement of piracy.

The AmeriKat recognizes the film industry considers film piracy a significant problem that demands urgent action, but is intrigued to what is actually underlying Friedman’s dismissal. If Friedman’s allegations are substantiated and there were systematic failures throughout Murdoch’s corporation that led to the dissemination of Wolverine and of the publication of an article which allegedly encouraged piracy of that movie, the AmeriKat wonders if the overly-public dismissal of Friedman was in fact just an act of PR. Now that the cases of Goodman and Mulicare back in the U.K. will not be reopened by prosecutors, Murdoch will have more time to devote to Friedman’s lawsuit. The AmeriKat does not envisage any speedy settlement in this case as a settlement could potentially signal that News Corp does not take movie piracy as seriously as their previously issued statements proclaimed.

No You Can’t!

If the above statement is what Shepard Fairey is alleging in his July 9 filing in the federal court of the Southern District of New York, Obama’s famous “Yes We Can” will likely be Associated Press’s reply. Shepard Fairey is the artist who created the well-known campaign poster of the then presidential candidate entitled ‘Hope’ which used a photograph taken by Mannie Garcia and owned by the AP as its inspiration. The AP sued Fairey back in March for using their copyright image without permission, but Fairey alleges that the AP is not the true owner of the rights in the photograph.

Garcia is himself challenging both AP’s ownership claims and Fairey’s fair use defence. Garcia contends that he was a freelancer, not a full-time employee, of AP’s and therefore owns the copyright in his photograph. . The issue of ownership will be a factual exercise which will be limited and defined during the discovery stage of these proceedings. In the AmeriKat’s opinion the second issue of fair use is where the battleground will be fought by Garcia and AP. The four factors of fair use – purpose/character, nature of the copied work, amount and substantiality, and effect on the market place – all seemingly point to a potentially successful application of this defence. The AmeriKat thinks that this is a case not of a copyright owner actively protecting their copyright from bona fide infringement but a copyright owner recognizing a commercial opportunity for the licensing of derivative works post facto the success of a particular work.

The AmeriKat who, admittedly is not such a secret admirer of Lawrence Lessig’s work (whether she always agrees with him or not), suggests you watch his speech of the New York Library regarding Fairey’s work.

Friday fanfare

As ever, don't forget to check out the IPKat's side bar for Forthcoming Events. Right now, nearly 50 are listed. Some of them are even free!

What is happening to the Peer-to-Patent project in the United States? The IPKat thought at the time, and still thinks, that it's a great idea -- though he's aware that it's unpopular with many patent examiners who are uncomfortable with the participation of knowledgeable sections of the lay public in the patent examination process. He reads that the program has been closed, that is has been suspended and that it is merely not having any further patent applications added until the effectiveness of the program so far has been further considered. Can readers please enlighten this puzzled pussy?

A brand new intellectual property periodical has just been launched: it's the International Free and Open Source Software Law Review, the details of which you can see for yourself here. The IPKat supposes that, with the acronym IFOSSLR, it's bound to be called the "I-fossil review". The editorial board team includes the Kat's friend, Class 46 trade mark blog team-mate and visionary Tomasz Rychlicki, plus lots of other good folk.


It's not every day one sees a new legal decision on malicious falsehood -- that close cousin of the common law torts of passing-off and deceit -- so the IPKat is delighted to thank his friend Richard Kempner (Kempner Robinson) for telling him about Ajinimoto Sweeteners Europe SAS v Asda Stores Ltd [2009] EWHC 1717 (QB), decided this Monday by Mr Justice Tugendhat of the Queen's Bench Division, England and Wales. Asda sold products in its "Good for you" range containing what it described as "no hidden nasties", i.e. "no artificial colours or flavours, no aspartame & no hydrogenated fat". Ajinimoto, which enjoys 45% of the European market for aspartame, took exception to this:

"The complaint is that, by advertising that their own brand products do not contain aspartame, ASDA is impliedly making a statement derogatory of products that do contain aspartame, and so of aspartame itself. The Claimant claims that this implied derogatory statement is a false statement. The Claimant goes on to say that ASDA know that the implied statement is false, and that that is malice in this context. The Claimant claims that these false statements are calculated to cause pecuniary damage to the Claimant in respect of its business. The Claimant claims that if such statements continue to be made by ASDA, then shoppers will be scared of buying products containing aspartame, and the Claimant will lose sales".

The judge considered that the words used by Asda only meant that, if the customer thought that aspartame might be bad for him, or unpleasant to taste or consume, then Asda's products would be for him. The IPKat wonders what Ajinimoto's policy is with regard to the many websites that make far more explicit assertions regarding their product, eg. sweetpoison.com and Dorway's Aspartame & Aspartame Poisoning site (for those who want a very different view, visit Aspartame.org). Merpel adds, for those readers who like neither aspartame nor Asda (it being the British face of the much-criticised US retail giant Wal-Mart), this is what Oscar Wilde might have called "the inedible in pursuit of the unspeakable" ...


A curious little (or is it 'Lidl'?) case has been referred to the Court of Justice for a preliminary ruling and the IPKat doesn't know whether it's an IP case or not. It's Case C-159/09, Lidl SNC v Vierzon Distribution SA, which was referred by the Tribunal de commerce de Bourges (France). The question is this:

"Is Article 3a of Directive 84/450, as amended by Directive 97/55, to be interpreted as meaning that it is unlawful to engage in comparative advertising on the basis of the price of products meeting the same needs or intended for the same purpose, that is to say, products which are sufficiently interchangeable, on the sole ground that, in regard to food products, the extent to which consumers would like to eat those products, or, in any case, the pleasure of consuming them, is completely different according to the conditions and the place of production, the ingredients used and the experience of the producer?".

Can any reader shed light on this reference?

An assiduous student of IP writes: "Can anyone recommend any reading material on the relationship [the IPKat is tempted to add the words "if any"] between the World Intellectual Property Organization and the World Trade Organization?" So, dear readers, if you have any recommendations, can you please either (i) post them below or (ii) email me here and I'll pass them on.


Debate continues over the ruling of the European Court of Justice in L'Oréal v Bellure and the relative virtues of (i) protecting brands against imitations and/or (ii) preserving commercial speech (see earlier IPKat posts here, here, here and here).

Left: they look alike, they may even smell alike -- but common origin and individual identity evoke contrasting responses

This time it's the turn of the highly respected German trade mark expert, Berlin-based Andreas Lubberger (Lubberger Lehment), who displays no little creativity in putting together this letter. The IPKat says thanks, Andreas, for making this contribution. Merpel doubts that it will be the last word on the subject ...

A few souls have picked this item up off IPNow, but Mark J. Williams (Phillips Ormonde Fitzpatrick) was first. It's the tale of AJ Enterprises (Aust) Pty Ltd v McDonald’s International Property Company Ltd [2009] NZIPOTM 12, in which the now green and lovely fast food company failed again to prevent the registration of Anisha's single arch device for, among other things, food, drink and restaurant services in Class 43. Said the hearing office: "the whole of the applicant’s mark is not similar to the whole of the opponent’s mark". The same thing happened in Australia back in 2004. The IPKat wonders whether, given Anisha's choice of red-and-livery and "You'll love it" slogan, at least in Australia, passing off might have worked better than trade mark opposition: given the fact that a large proportion of relevant consumers probably like to wash down their tucker with a tube or three of amber fluid, anyone who finds themselves seeing double will certainly struggle to tell Anisha's arch from that of McDonalds.

What can be done about Swine 'Flu? The best suggestion received by the IPKat so far is to have it administered by the European Patent Office: that should delay its onset by several years ...

Maple Leaf Reg ousts American Clothing

What have maple leaves to do with Paris? The answer is apparent from the decisions earlier today in Joined Cases C‑202/08 P and C‑208/08 P, American Clothing Associates NV v Office for Harmonisation in the Internal Market; Office for Harmonisation in the Internal Market v American Clothing Associates NV, the latest thriller from Luxembourg's favourite court.

Back in July 2002, American Clothing applied to register the sign on the right as a Community trade mark for goods and services in Classes 18, 25 and 40 (‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’ (Class 18); ‘Clothing, footwear, headgear’ (Class 25) and ‘Tailoring; taxidermy; bookbinding; dressing, processing and finishing of skins, leather, furs and textiles; photographic film development and photographic printing; woodworking; fruit pressing; grain milling; processing, tempering and finishing of metal surfaces’ (Class 40)).

The examiner refused registration for in respect all the goods and services concerned, on the basis of Article 7(1)(h) of Regulation 40/94, stating that the mark was liable to give rise to an impression on the part of the public that it was linked to Canada, as he took the view that the maple leaf in the trade mark applied for is a copy of the emblem of Canada (WIPO's maple emblem for Canada appears on the left). American Clothing appealed unsuccessfully to the First Board of Appeal, then appealed further to the Court of First Instance (CFI).

The CFI partially annulled the decision at issue, in so far as it related to the registration of the mark applied for in respect of the services in Class 40, on the ground that Article 6ter(1)(a) of the Paris Convention, to which Article 7(1)(h) of Regulation 40/94 directly refers, does not apply to service marks. The CFI added that, when it adopted the original version of Regulation 40/94 relatively recently, the Community legislature was aware of the importance, in modern commerce, of service marks and could, therefore, also have extended the protection granted to State emblems by Article 6ter of the Paris Convention to that category of marks -- but didn't.

The appeal in respect of goods was, however dismissed. According to the CFI, for the purpose of assessing a complex mark from the perspective of Article 6ter, regard must be had to each of the elements of that mark and it was sufficient that even one of them was a State emblem or an imitation of it ‘from a heraldic point of view’ to preclude registration, irrespective of what the overall perception of that mark might be. In this case the average consumer would perceive American Clothing's mark essentially as an imitation of the Canadian emblem. For good measure the CFI added that (i) the application of Article 6ter(1)(a) of the Paris Convention is not subject to the condition that there be a possibility of error on the part of the public as regards the origin of the goods designated by the mark applied for or as regards the existence of a connection between the proprietor of that mark and the State whose emblem appears in that mark and that (ii) the alleged reputation of the trade mark applied for is also irrelevant.

Both sides appealed to the Court of Justice, American Clothing seeking to get the mark registered for goods and OHIM seeking to prevent it being registered for services.

Sadly for American Clothing and happily for OHIM, the Court dismissed the appeal of the former and, annulling the decision of the CFI, allowed the appeal of the latter. The Court had plenty to say, but the Kat will keep it short.

American Clothing's appeal

"40 ... the Advocate General highlighted some of the essential functions which may be attributed to a State emblem. These include that of identifying a State and that of representing its sovereignty and unity. The essential function of the trade mark, for its part, is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin ...

42 That discrepancy between the essential functions of trade marks and those of State emblems is also reflected in the difference in their treatment both under Community and international law.

43 Thus, Article 6 of Regulation No 40/94 sets out the principle that a trade mark is to be obtained by registration whereas, under Article 6ter(3)(a) of the Paris Convention, the States are merely to communicate the list of emblems to be protected to the International Bureau of the WIPO, such a communication not being obligatory in respect of flags of States. In respect of trade marks, the principle is that protection is provided in respect of certain determined classes of goods and services, whereas emblems, on the other hand, are entitled to general protection whatever the use one wishes to make of them. In addition, unlike trade marks, emblems cannot be declared invalid and their proprietor cannot be deprived of his rights. Moreover, the duration of their protection is not limited. Many aspects governing the protection of trade marks are therefore not capable of being transposed to the protection of State emblems.

44 The same is true of the existence of a likelihood of confusion which, although it is the specific condition for the protection of the trade mark in the case of similarity between the trade mark and the sign and between the goods or services ... is not required for the protection of an emblem, since Article 6ter(1)(a) of the Paris Convention makes no reference to it.

45 It is apparent from the second sentence of Article 6ter(1)(c) of the Paris Convention that the protection of State emblems is not subject to there being a connection, in the mind of the public, between the trade mark for which registration is sought and the emblem. In the case of emblems of international organisations, that provision authorises the registration and use of a trade mark if that mark is not of a nature such as to mislead the public regarding the existence of a connection between the user of the trade mark and the organisation. It follows that, in other cases, namely those involving State emblems, that possibility does not exist and there is therefore no need to ascertain whether there is such a connection. ...

47 ... Article 6ter(1)(a) ... prohibits the registration and use of a State emblem not only as a trade mark, but also as an element of a trade mark. The protection granted to emblems is therefore, in this regard, also very broad. Furthermore, the last part of that provision also contributes to guaranteeing broad protection to State emblems, in so far as it prohibits the imitation of the emblem in addition to prohibiting its exact replication.

48 However, the prohibition of the imitation of an emblem applies only to imitations of it from a heraldic perspective, that is to say, those which contain heraldic connotations which distinguish the emblem from other signs. Thus, the protection against any imitation from a heraldic point of view refers not to the image as such, but to its heraldic expression. It is therefore necessary, in order to determine whether the trade mark contains an imitation from a heraldic point of view, to consider the heraldic description of the emblem at issue.

49 It follows that American Clothing’s contention that the geometric description of the emblem must be taken into account cannot be accepted. ...

50 Thus, a trade mark which does not exactly reproduce a State emblem can nevertheless be covered by Article 6ter(1)(a) of the Paris Convention, where it is perceived by the relevant public, in the present case the average consumer, as imitating such an emblem. ...

52 ... the heraldic description of the emblem, which must be referred to in order to determine whether there is an imitation from a heraldic point of view within the meaning of Article 6ter(1)(a) of the Paris Convention, normally contains only certain descriptive elements, and does not necessarily concern itself with particular features of the artistic interpretation. The Court of First Instance therefore did not err in law by holding that a number of artistic interpretations of one and the same emblem on the basis of the same heraldic description were possible".

OHIM's appeal

"71 As regards the Court of First Instance’s refusal to apply Article 7(1)(h) of Regulation No 40/94 to service marks, it is necessary to consider the Paris Convention in the light of Article 6ter, to which Article 7(1)(h) of the Regulation refers.

72 ... the Paris Convention provides for a minimum level of protection for elements falling within its scope, while leaving the Member States party to the Convention free to extend the scope of the protection. Consequently ... those States are nevertheless free to provide for such an application unilaterally. ... Article 6ter ‘does not oblige States party to the Paris Convention to refuse or to invalidate the registration, and to prohibit the use of State emblems or other official signs as a service mark or as an element of a service mark. States are nevertheless free to do so ...’.

73 Consequently, Article 6ter leaves the extension of the protection guaranteed to trade marks for goods to service marks to the discretion of the States party to the Convention. In doing so, the Paris Convention does not require those States to distinguish between the two types of marks.

74 It is therefore necessary to consider whether the Community legislature intended to exercise that power of discretion and to extend to service marks the protection granted to trade marks for goods under the Paris Convention.

75 ... the body of relevant Community law provisions do not distinguish, in principle, between trade marks for goods and service marks....

81 ... the Court of First Instance erred in finding that, by refusing registration of the trade mark applied for in respect of services in Class 40 of the Nice Agreement, the decision at issue infringed Article 7(1)(h) of Regulation No 40/94".

The IPKat agrees that there is no meaningful distinction to be drawn for this purpose between trade marks and service marks, but has some misgivings as to the potential for abuse to which the notification of emblems can lead. Merpel wonders why so broad a degree of protection is needed for national emblems: would a pretty device containing maple leaves be so very deceptive or damaging to national interests when viewed by the relevant consumer as nothing other than a trade mark?

Maple Leaf Rag here

Maple syrup recipes here

Fun facts about maple syrup here

End of the road for a great trade mark licence as Grüne Punkt loses again

The Court of Justice of the European Communities handed down its decision in Case C-385/07 P Der Grüne Punkt-Duales System Deutschland GmbH v European Commission, supported by Vfw AG, Landbell AG and BellandVision GmbH, nearly 26 months after the ruling of the Court of First Instance which this 198 paragraph decision upholds.

For those whose memory may not instantly recall the decision of 24 May 2007 or the facts that led to it, let the IPKat recap ...

The German government passed a law to reduce the impact of packaging waste on the environment. This law required manufacturers and distributors to take back and recover used sales packaging outside the public waste disposal system in one of two ways: (i) they could take back the used sales packaging free of charge at or near the point of sale and recover it ('self-management') or (ii) they could guarantee the regular collection of used sales packaging from the final consumer or in the vicinity of the final consumer (an 'exemption system').

Grüne Punkt was the only undertaking which operated a Germany-wide exemption system, although other undertakings did so regionally. By an agreement with contracting manufacturers and distributors it was provided that (i) those participating undertakings should affix Grüne Punkt's logo on all pieces of packaging that were notified as being capable of recovery under the system and intended for domestic consumption in Germany and (ii) a fee would be charged for all packaging bearing its logo. This fee, which served to cover the costs of collecting, sorting and recovering the packaging, was charged irrespective of whether the packaging was in fact recovered through Grüne Punkt's system, through some other exemption system or through a self-management solution.

The Commission ruled that Grüne Punkt had abused its dominant position in the market by requiring payment of a fee for the total quantity of packaging bearing its logo and put into circulation in Germany, even though there was evidence that other exemption systems or self-management solutions were used. In the Commission's opinion Grüne Punkt was exploiting its customers by (i) charging for services that were not provided and (ii) obstructing the entry on to the market of competitors, in the light of the costs related to the linked use of a system other than Grüne Punkt's. The Commission decision did not criticise the fact that Grüne Punkt's customers were required to affix its logo to each piece of packaging intended for domestic consumption, but it did object to the requirement of payment for the total quantity of packaging carrying that logo. In its view no fee could be required, despite the affixing of the Grüne Punkt logo, where the customer had shown it had fulfilled its obligations under domestic law through some other exemption system or self-management solution.

Grüne Punkt brought an action before the CFI to annul that decision, arguing that the decision was disproportionate in preventing it from levying a fee on each package bearing its logo. In any event, it claimed, the abuse could be remedied through the selective marking of packages to signify which exemption system or self-management solution they were intended for. The CFI dismissed the action. In its opinion

* the Commission's measures were not disproportionate. They only required Grüne Punkt not to charge a fee on the total amount of packaging marked with its logo where it was shown that some of that packaging had been taken back and recovered through another system.

* Competition between systems took place on the basis of the quantities of material to be recovered and not on the basis of predetermined quantities of packaging which fell exclusively, in particular by means of selective marking, within one or other of the systems used.

* The requirement that Grüne Punkt not charge a fee based on all packaging marked with its logo did not disproportionately impair its interests, since it was still remunerated for the service which it provided - the taking back and recovery of quantities of material entrusted to it by the manufacturers and distributors of packaging which participated in its system.

* Even if it were theoretically possible to affix the logo to packaging selectively, that solution was more expensive and difficult for manufacturers and distributors of packaging to implement than limiting Grüne Punkt's the remuneration to cover only the service actually provided by its system.

* For the Commission to accept the principle of selective marking would be akin to permitting Grüne Punkt to continue to abuse its dominant position: the costs related to selective marketing and the practical difficulties involved in its implementation were likely to dissuade Grüne Punkt customers from using any alternative system to take back and recover some or all of their packaging in Germany.

Today the Court of Justice dismissed all eight grounds of appeal, of which the second and fourth specifically addressed trade mark issues. Dismissing the second ground of appeal (distortion of the meaning of the trade mark agreement) the Court said:

"87 ... the object of the Trade Mark Agreement is to allow DSD’s contractual partners to be relieved of their obligation to collect and recover packaging which they notify to DSD. The agreement provides that undertakings participating in the DSD system must affix the DGP logo to all packaging notified to DSD and intended for domestic consumption in Germany.

88 It follows that the Trade Mark Agreement which DSD’s customers entered into concerns the affixing of the DGP logo to all packaging notified to DSD and intended for domestic consumption in Germany.

89 ... the abuse of a dominant position established by the Commission arises from the fact that the Trade Mark Agreement requires DSD’s customers to pay a fee in respect of all packaging notified to DSD, even where it is proved that some of it has been taken back and recovered through competing exemption systems or self-management solutions.

90 It is clear that the Court of First Instance did not distort that part of the evidence on the file.

91 ... the Court of First Instance correctly stated that ‘only the provisions of the Trade Mark Agreement concerning the fee are regarded as abusive in [the decision at issue] [and], thus, [the decision at issue] does not criticise the fact that … the [Trade Mark Agreement] requires the manufacturer or distributor wishing to use the DSD system to affix the [DGP logo] to each piece of notified packaging which is intended for domestic consumption’.

92 As regards, specifically, the extent of the licence granted under the Trade Mark Agreement, DSD has been unable to identify the passages of the judgment under appeal in which the Court of First Instance incorrectly referred to the scope of that licence. ..".

As to the fourth ground, infringement of Community trade mark law, the Court had this to say:

"125 As regards, next, the alleged failure by the Court of First Instance to have regard to Article 5 of Directive 89/104, ... by virtue of Article 5(1)(a), a registered trade mark confers on the proprietor exclusive rights therein, entitling the proprietor to prevent all third parties not having his consent from using in the course of trade any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered.

126 It follows that, by claiming that ... the Court of First Instance failed to have regard to the exclusive right to the use of the logo of which it is the proprietor and by invoking Article 5 of Directive 89/104 in that context, DSD is arguing that the Court of First Instance should have held that the decision at issue had unlawfully stopped it preventing third parties from using a sign which was identical with its logo. DSD placed considerable emphasis on this argument at the hearing and claimed that the result of the obligations laid down by the decision at issue and of their approval by the Court of First Instance is that the DGP logo has, in practice, become available to be used by all.

127 In order to respond to that line of argument, it is necessary to draw a distinction between the use of the DGP logo by DSD’s contractual partners and the possible use of that logo by other third parties.

128 As regards the use of the DGP logo by DSD’s contractual partners, it is apparent from the wording itself of Article 5 of Directive 89/104 that that provision does not cover circumstances in which a third party uses a trade mark with the consent of its proprietor. That is the case, in particular, where the proprietor has authorised its contractual partners to use its mark under the terms of a licence agreement.

129 It follows that DSD cannot validly rely on the exclusive right conferred on it by the DGP logo as regards the use of that logo by manufacturers and distributors who have entered into the Trade Mark Agreement with it. It is true that Article 8(2) of Directive 89/104 provides that a proprietor of a trade mark may invoke the rights conferred by that mark against a licensee who contravenes any of the terms in his licensing contract referred to in that provision. However,... in the present case, DSD itself set up a system which requires that the DGP logo be affixed to all packaging, even where some of the packaging is not taken back by the system. It is accordingly a matter of agreement between the parties that the use of the DGP logo on all packaging notified to DSD is required by the Trade Mark Agreement and is therefore compatible with it.

130 In so far as DSD argues that the measures imposed by the Commission have the effect that the use of the DGP logo by its licensees is, in part, to be free of charge, suffice it to note that the sole object and sole effect of the decision at issue is to prevent DSD from receiving payment for collection and recovery services where it is proved that they have not been provided by that company. Such measures are not incompatible with the rules laid down by Directive 89/104.

131 Furthermore, ... the possibility cannot be ruled out that the affixing of the DGP logo to packaging, whether part of the DSD system or not, may have a price which, even if it cannot represent the actual price of the collection and recovery service, should be able to be paid to DSD in consideration for the use of the mark alone.

132 As regards the possible use of the DGP logo by third parties other than DSD’s contractual partners, neither the decision at issue nor the judgment under appeal state that such use would be permitted under trade mark law. In that regard, the Court of First Instance correctly found ... that the obligations laid down by the decision at issue concerned only relations between DSD and ‘manufacturers and distributors of packaging which are either contractual partners of DSD in the context of the Trade Mark Agreement …, or holders of a licence to use the [DGP] mark in another Member State in the context of a take-back and recovery system using the logo corresponding to that mark …’.

133 Therefore, any use of the DGP logo by third parties other than DSD’s contractual partners is not a matter for which either the Commission or the Court of First Instance bear any responsibility. Moreover, there is nothing to prevent DSD from bringing proceedings against such third parties before the national courts having jurisdiction in that regard".

For those who like statistics, the word "logo" appeared in the judgment no fewer than 124 times and "trade mark" featured 86 times.

The IPKat notes that Grüne Punkt is owned by investment firm Kohlberg Kravis Roberts, who as modern financial alchemists had clearly done too good a job at turning rubbish into gold. Merpel notes that today's ruling is unlikely to make further ripples since the Commission's decision was implemented as long ago as 2001. This suggests that perhaps, in the legal profession too, there are some people who know how to turn unpromising material into gold.

Eleven words that axed a thousand trees

Rather late in the day, the ruling of the Court of Justice of the European Communities in Case C‑5/08, Infopaq International A/S v Danske Dagblades Forening, a reference for a preliminary ruling from the Højesteret (Denmark).

In short Infopaq, a media monitoring and analysis business, drew up summaries of selected articles from Danish daily newspapers and other periodicals. Those articles were selected on the basis of subject criteria agreed with their customers. Once the articles had been secured by data capture, they were sent to customers by email. DDF, a professional association of Danish daily newspaper publishers which assisted its members with copyright issues, discovered that Infopaq was scanning newspaper articles for commercial purposes without authorisation from the relevant rightholders. Taking the view that such consent was necessary for processing articles using the process in question, DDF complained to Infopaq about this procedure.

The data capture process was as follows:

1. The relevant publications were registered manually by Infopaq employees in an electronic registration database.

2. Once the spines were cut off the publications so that all the pages consisted of loose sheets, the publications were scanned. The section to be scanned was selected from the registration database before the publication was put into the scanner. Scanning allowed a TIFF (‘Tagged Image File Format’) file to be created for each page of the publication. After the scanning, the TIFF file was transferred to an OCR (‘Optical Character Recognition’) server.

3. The OCR server translated the TIFF file into data that could be processed digitally. During that process, the image of each letter was translated into a character code that told the computer what type of letter it was. That data was saved as a text file which could be understood by any text processing program. The OCR process was completed by deleting the TIFF file.

4. The text file was processed to find pre-defined search words. Each time a match for a search word was found, data was generated giving the publication, section and page number on which the match was found, together with a value expressed as a percentage between 0 and 100 indicating how far into the text it is to be found, in order to make it easier to read the article. Also in order to make it easier to find the search word when reading the article, the five words which come before and after the search word were captured (this being referred to in the judgment as an ‘extract of 11 words’). At the end of the process the text file was deleted.

5. At the end of the data capture process, a cover sheet was printed out in respect of all the pages where the relevant search word was found. The following is an example of the text of a cover sheet’.

Infopaq denied that this procedure required consent from the rightholders and brought an action claiming that DDF should be ordered to acknowledge that Infopaq was entitled in Denmark to apply this procedure without the consent of DDF or of its members. After the court dismissed that action, Infopaq appealed to the Højesteret, which referred 13 questions to the Court for a preliminary ruling.

It was conceded that consent from the rightholders was not required for (i) press monitoring activity and the writing of summaries consisting in manual reading of each publication, (ii) selection of the relevant articles on the basis of predetermined search words, or (iii) production of a manually prepared cover sheet for the summary writers, giving an identified search word in an article and its position in the newspaper. Nor was it disputed that genuinely independent summary writing per se is lawful and does not require consent from the rightholders, or that the data capture process described above involved two acts of reproduction: the creation of a TIFF file when the printed articles are scanned and the conversion of the TIFF file into a text file. It was also common ground that the procedure entailed the reproduction of parts of the scanned printed articles since the extract of 11 words was stored and those 11 words were printed out on paper. The Højesteret however sought guidance on the following issues:

‘(1) Can the storing and subsequent printing out of a text extract from an article in a daily newspaper, consisting of a search word and the five preceding and five subsequent words, be regarded as acts of reproduction which are protected (see Article 2 of [Directive 2001/29, the Directive on copyright and the information society]?

(2) Is the context in which temporary acts of reproduction take place relevant to whether they can be regarded as “transient” (see Article 5(1) of Directive 2001/29)?

(3) Can a temporary act of reproduction be regarded as “transient” where the reproduction is processed, for example, by the creation of a text file on the basis of an image file or by a search for text strings on the basis of a text file?

(4) Can a temporary act of reproduction be regarded as “transient” where part of the reproduction, consisting of one or more text extracts of 11 words, is stored?

(5) Can a temporary act of reproduction be regarded as “transient” where part of the reproduction, consisting of one or more text extracts of 11 words, is printed out?

(6) Is the stage of the technological process at which temporary acts of reproduction take place relevant to whether they constitute “an integral and essential part of a technological process” (see Article 5(1) of Directive 2001/29)?

(7) Can temporary acts of reproduction be an “integral and essential part of a technological process” if they consist of manual scanning of entire newspaper articles whereby the latter are transformed from a printed medium into a digital medium?

(8) Can temporary acts of reproduction constitute an “integral and essential part of a technological process” where they consist of printing out part of the reproduction, comprising one or more text extracts of 11 words?

(9) Does “lawful use” (see Article 5(1) of Directive 2001/29) include any form of use which does not require the rightholder’s consent?

(10) Does “lawful use” (see Article 5(1) of Directive 2001/29) include the scanning by a commercial business of entire newspaper articles, subsequent processing of the reproduction, and the storing and possible printing out of part of the reproduction, consisting of one or more text extracts of 11 words, for use in the business’s summary writing, even where the rightholder has not given consent to those acts?

(11) What criteria should be used to assess whether temporary acts of reproduction have “independent economic significance” (see Article 5(1) of Directive 2001/29) if the other conditions laid down in the provision are satisfied?

(12) Can the user’s efficiency gains from temporary acts of reproduction be taken into account in assessing whether the acts have “independent economic significance” (see Article 5(1) of Directive 2001/29)?

(13) Can the scanning by a commercial business of entire newspaper articles, subsequent processing of the reproduction, and the storing and possible printing out of part of the reproduction, consisting of one or more text extracts of 11 words, without the rightholder’s consent be regarded as constituting “certain special cases which do not conflict with a normal exploitation” of the newspaper articles and “not unreasonably [prejudicing] the legitimate interests of the rightholder” (see Article 5(5) of Directive 2001/29)?’

The Advocate General answered each question separately, but the Court decided to short-circuit the issues by ruling as follows:

"1. An act occurring during a data capture process, which consists of storing an extract of a protected work comprising 11 words and printing out that extract, is such as to come within the concept of reproduction in part within the meaning of Article 2 of Directive 2001/29 ..., if the elements thus reproduced are the expression of the intellectual creation of their author; it is for the national court to make this determination.

2. The act of printing out an extract of 11 words, during a data capture process such as that at issue in the main proceedings, does not fulfil the condition of being transient in nature as required by Article 5(1) of Directive 2001/29 and, therefore, that process cannot be carried out without the consent of the relevant rightholders".

Says the IPKat, this short-circuiting approach is one that the ECJ rather likes, since it redirects the focal point of its rulings from the factual details -- which are in its view the province of the referring court -- to the general principles that national courts are to provide. Apart from the fact that the ECJ is wary of being asked effectively to rule on the facts, the more detailed are its answers to detailed questions, the easier it is to distinguish subsequent cases on the facts. He also muses on how just 11 words can generate so many thousands of words in terms of opinions, judgments etc.

Merpel says, it's an odd situation really: the printing out of the 11-word extracts looks like a non-transient part of a process which is part-transient, part-fixed; economically it is effectively transient but physically it isn't. Tufty adds: the Court made it plain that Article 5 provides derogations from the principle of protection for authors' rights and that, being exceptions to the basic rule that consent is needed, those derogations must be construed narrowly.

Eleven words that sound dirty but aren't, here

Day in a life, summarised in eleven words

Elven words here

Transient cat here

Microsoft tops Superbrands survey

The IPKat has learnt from the BBC that that Microsoft has won the 12th annual top 500 Superbrands survey. The top 10 brands are:

1.Microsoft
2.Rolex
3.Google
4.British Airways
5.BBC
6.Mercedes-Benz
7.Coca-Cola
8.Lego
9.Apple
10.Encyclopaedia Britannica

The IPKat was a little puzzled to see Rolex and Mercedez-Benz in there in these credit-crunch ridden times until he read that the criteria are quality, reliability and distinction in the sense of being differentiated from competitors. Of the supermarkets, only Sainsburys makes the top 100. It seems, says the IPKat, that criteria for good branding don't always equate to profitability.

A fine performance

To his acute embarrassment, the IPKat has only just, and rather belatedly, got round to reviewing the fourth edition of Performers' Rights by Richard Arnold (now Mr Justice Arnold, of the Patents Court for England and Wales). Despite only a four-year gap since the publication of the third edition, this authoritative and comprehensive review of the subject has many new issues to tackle and this task is undertaken with the author's obvious enthusiasm for the subject matter.

A particular joy, purrs the Kat, is the way in which the book not only covers with care every detail of "Part II" of the UK Copyright, Designs and Patents Act 1988 (called, with disarming simplicity, 'Rights in Performances') but also ranges across other related subjects. These include other types of protection from which performers may profit: passing off, privacy, defamation for example. Also discussed are some of the problems arising from performers' contracts. Although he doesn't much like things that bark, the Kat endorses the book's emphasis of the importance of the rule in Barker v Stickney (that an author cannot enforce a right to receive royalties against a third party assignee of a copyright which has been assigned by the author to a publisher and which the publisher then assigns to a third party) and shares the author's surprise that the rule is not better known.

There are a couple of aspects of the book that will not meet with universal approval. The IPKat is well known for his dislike of the reproduction of statutory extracts in an era in which trees are so precious and statutory materials are readily available at no charge on the web. In this case the statutory appendix count is 170 pages, or about 30% of the total. This may well however be the preference of the publisher, who finds it easier to justify a higher price when the book is, er, bigger.

The book also includes six pages of the author's detailed and radical proposals for reform of the present law. As it happens, the Kat disagrees with several of these proposals but their inclusion makes for a more engaging and lively book and is therefore to be welcomed. A further minor niggle is that some complex issues, dealt with carefully in one place in the book, are not always fully cross-referenced. For example, Chapter 5 opens with a good discussion as to whether certain UK exceptions are consistent with European law, but there is no cross-reference to this debate when the specific exceptions concerned (paras 15 and 18 of Schedule 2 CDPA) are discussed later in the same chapter. Someone in a hurry, looking for a specific answer to a specific question, might be caught out by this.

Delivering judgment, the Kat rules that this book is an excellent addition to any practitioner's or academic library. It was also stunningly up-to-date, including references to cases decided almost as the book was going to press. Given that at least two of those cases remain subject to ongoing appeal proceedings (Fisher v Brooker, the "Whiter Shade of Pale" case, is awaiting judgement in the House of Lords and Football Association Premier League Limited and others v QC Leisure, the case concerning smartcards for foreign satellite transmissions, is pending before the European Court of Justice), another edition very soon will doubtless be justified. It would be a shame if we are deprived of this by Richard Arnold's promotion to the bench.

Finally, a challenge for IPKat readers: in the book's useful survey of the social and economic position of performers, which provides the background to the evolution of the legal rights of performers, it is asserted that "the first English actor to achieve social prominence was Henry Irving, knighted in 1895." Do readers agree? If tempted, the Kat might make the case for David Garrick, who died a century or so earlier, after suffering a fit or stroke while the guest of Lord Spencer at Althorp, was the first actor to be buried in Poet's Corner at Westminster Abbey and whose grand house on the River Thames at Hampton still survives - although Garrick might be disqualified on the grounds that he was feted as a theatre manager as much as he was as an actor. Any other candidates?

Bibliographic details: Performers' Rights, Richard Arnold, 4th Edition (published 31 December 2008), hardback £175.00. Sweet & Maxwell, ISBN 978-1-84703-787-9. Rupture factor: moderate-to-low. Getting-nicked-off-the-desk by-colleagues factor: dangerously high. Website here.

A picture of annoyance: NPG growls at photo copier

Note: an earlier version of this article was erroneously posted on the 1709 Blog, which is already well populated with comments on this issue.

Guardian Online has reported that London's prestigious National Portrait Gallery has threatened legal proceedings for copyright infringement against Derrick Coetzee, who downloaded 3,014 high-resolution images from its website and placed them in an archive of free-to-use images on Wikipedia. There has been no formal response from the internet encyclopedia but Derrick Coetzee, who downloaded the images, has apparently uploaded the letter from the London lawyers Farrer and Co "to enable public discourse on the issue". According to the article,

"Photographs of works of art are protected by copyright in the UK, but not in the US, where Coetzee lives. All the creators of the original images are long since dead, but the photographs were only taken for the NPG as part of a £1m digitisation project in the last couple of years".

The gallery says it isn't suing Wikipedia and affirmed its willingness for the site to use low-resolution images. Loss of revenue from copyright fees for the high-resolution versions is not huge but would be noticed: the projected gross revenue from fees in 2008/9 was over more than £339,000.

The IPKat reflects on the fact that the issues here are reflected widely within not only copyright but other IP rights: tensions exist between (i) the need to respect and protect creativity, (ii) the entitlement of the public to gain access to and to exploit works that enter the public domain and (iii) the protection of investment that might not otherwise be made in activities such as the creation of high-resolution images, which incur a cost that the investor may not be able to recover. Merpel says, it seems that Mr Coetzee, by downloading images of pictures from the NPG and popping them into a wiki archive, is literally a human "photo copier".

Further reading and background material on Wikinews
Comment by Amanda Harcourt on some of the finer points of copyright law here

ECJ to unravel indigestible spaghetti of design questions

Via the ever-vigilant Hugo Cox and the UK's IPO website comes news of an interesting reference to the Court of Justice of the European Communities for a preliminary ruling from the Tribunale di Milano (Italy) in Case C-168/09 Flos SpA v Semeraro Casa & Famiglia SpA. This reference deals with the interpretation of the provisions of harmonised national law in Europe regarding the protection of design right.

Right: the IPKat runs so speedily to deliver his comments to the IPO on Case C-168/09 that he forgets his tabby coat ...

The questions referred are as follows:

"1. Must Articles 17 and 19 of Directive 98/71/EC [on the legal protection of designs] be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which - albeit meeting the requirements for protection laid down in copyright law - fell to be regarded as having entered into the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force, in so far as they had never been registered as designs or in so far as the relevant registration had already expired by that date?

2. If the answer to the first question is in the negative, must Articles 17 and 19 of Directive 98/71/EC be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which - albeit meeting the requirements for protection laid down in copyright law - fell to be regarded as having entered into the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party - without authorisation from the holder of the copyright on such designs - has already produced and marketed products based on such designs in that State?

3. If the answers to the first and second questions are in the negative, must Articles 17 and 19 of Directive 98/71/EC be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which - albeit meeting the requirements for protection laid down in copyright law - fell to be regarded as having entered into the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party - without authorisation from the holder of the copyright on such designs - has already produced and marketed products based on such designs in that State, where protection is precluded for a substantial period (a period of 10 years)?"

The IPKat, noting that the IPO has done a great job in shrinking the referred questions to more manageable proportions, wonders what might be the smallest number of words in which these three questions might be succinctly summarised. Merpel says, there are more important matters at stake: the IPO sent out one of its "Dear Interest" emails this morning which reads:

"... The ECJ have been asked for a preliminary ruling on Articles 17 and 19 of
Directive 98/71/EC.

... If you would like to comment on this case please e-mail policy@ipo.gsi.gov.uk before 17 July".

17 July is this Friday; this is the holiday season and it will take from now till then to work out what the questions mean, never mind working out how to respond. Given that the reference was only made on 12 May of this year, and most references take the best part of two years to process, isn't this time limit just a teensy-weensy bit mean? Tufty says, "Am I the only person who hates being addressed as 'Dear Interest'? I'm not an Interest, I'm a Kat ..."

Current JIPLAP

The July 2009 issue of Oxford University's flagship monthly IP journal, the Journal of Intellectual Property Law and Practice (JIPLAP), has been sitting on the IPKat's desk for some time, neglected but certainly not unloved. Items in this issue include the following:

* Nigel Parker (Allen & Overy) writes on "Intellectual property and joint ventures: protection of IP on exit", a thoroughly topical subject in recessionary times when exiting a JV may be needed for many different reasons;

* "Microbicide development: an argument for broadening the experimental use exception" by Rebecca Wolf, International Access to Medicines Research Fellow, PIJIP;

* "The shape of the Lego brick is free for all to use" by Patricia Cappuyns (Howrey, Brussels);

* Emir Aly Crowne Mohammed discusses "Parody as fair dealing in Canada", offering a guide for lawyers and judges;

* "Japan's IP High Court fids 3D seashell chocolate bar inherently distinctive", a Current Intelligence note by John Tessensohn and Shusaku Yamamoto.

The Editorial, "It's my party and I'll cry if I want to", a plea to take the Pirate Party's threat to IP seriously, can be read for free here.

List of editorial board panellists here
Full contents of this issue here
Free sample copy of JIPLAP here
Guidance for authors here
Read all of the past year's editorials here

Monday musings

This Tuesday 14 July, from 5.30pm to 7pm, Australian practitioner Julian Gyngell will be addressing an informal meeting of the IP Finance blog group on the subject "Phonewords and Finance". McDermott Will & Emery have kindly agreed to provide a venue in their City office at 7 Bishopsgate (here).

Several people have told IPKat team member Jeremy that they plan to attend this pleasant and informative event, for which admission is free, but he has yet to receive their confirmation. If you are coming, please email Jeremy here, today if possible, and let him know so he'll know how many chairs to put out etc etc ...

Every so often the IPKat gets asked about all those images he uses. Are they really copyright-free? No, they're not -- but some are supplied by readers (quite a lot of the cat-pictures fit into this category), others are (i) definitely out of copyright, (ii) probably out of copyright, (iii) taken by the IPKat himself, (iv) dug up from Creative Commons or similar licensed sources or (v) used on the assumption that they fall within fair use/fair dealing/ transformative use or other defences of varying degrees of reliability.

Above, left: this charming little fellow is just nuts about Creative Commons, which has licensed his transmission on this blog

But from now his task gets easier, since --thanks to his good friend Hugo Cox -- he has discovered a handy Google Image Search device that helps him root out images with Creative Commons or other tagged licence terms, as well as works in the public domain. You can read all about it on the Google Blog here.

When intellectual property academics and practitioners involved with learning and teaching get asked to teach 'some' intellectual property to students on programmes located in faculties other than law, the IP content is often part of a wider 'business law' unit.

Right: it's really cool to study IP-flavoured Business Law

If the students have already invested in a standard generic Business Law book, the odds are it will contain no mention of IP. This omission sends out a subliminal message that IP law isn't 'business law'. The IPKat's good friend Professor Ruth Soetendorp writes to the readers of this weblog:

"Your answers to the following questions (and comments) would be most welcome:

1. Should generic Business Law student texts include material on IP?

1a. If yes, what would an IP chapter cover?

2. Do you teach IP to students in faculties other than law?

2a. If yes, which faculties?"

Please email Ruth (and not the poor Kat!) here

Letter from AmeriKat

Premier League v YouTube (1-2) H

The busy courtrooms of the Southern District of New York consistently generate interesting fodder for the AmeriKat to digest, and this week was no exception. The Premier League, that bastion of English establishments which can unite and divide people in a matter of seconds, made their court debut in the Southern District back in 2007. Joined by music publisher Bourne Ltd and others, the Premier League filed a class action law suit alleging that YouTube (owned by Google Inc.) copied, stored and electronically disseminated, publicly displayed and performed in whole or a substantial part of the claimants’ motion pictures, sound broadcasting, musical compositions, television productions and sound recordings.

The claimants specifically alleged that YouTube and Google pursued “a deliberate strategy of engaging in, permitting, encouraging, and facilitating massive copyright infringement” and adopted “a cynical and self-contradictory strategy designed to perpetuate the unlawful exploitation” of the claimants’ valuable IPR, such as audiovisual footage of the Premier League’s football matches. YouTube and Google countered by contending, among other things, that they were protected by the Safe Harbour legislation in the Digital Millennium Copyright Act (DMCA).

Two years and over 140 court documents later, US District Judge Louis Stanton ruled that the plaintiffs were prohibited from requesting statutory damages “for foreign works which were not registered in the US except those in suit under the ‘live broadcast exemption’ in Section 411(c) of the Act.” Section 412 of the Copyright Act prohibits recovery of statutory damages for any work unless the work was registered before the commencement of the infringement or within three months after the work’s first publication (Note: statutory damages are capped at $150,000 per infringement). There is no exception in the legislation for excusing foreign works from this requirement. District Judge Stanton held that it was clear that Congress did not intend to exempt foreign works in Section 412 and in fact was passed in order to incentivize copyright registration (see H.R. Rep. No 94-1476 at 158 Spet. 3 1976).

Obviously the plaintiffs’ main bone of contention with this was that, unless Section 412 was construed to exempt foreign works from this requirement, its application would violate the Berne and TRIPS agreements which prohibit any formal requirement necessary for the enjoyment of copyright protection. The Premier League also tried to rely on an amendment in Section 411(a) of the DMCA which required that all “United States works” had to be registered before infringement proceedings were brought. Given that this affirmative drafting has been construed to exempt Berne Convention works from the requirement, the plaintiffs argued that Congress intended to exempt all foreign works from Section 412. Undoubtedly like District Judge Stanton, the AmeriKat was surprised that the Plaintiffs attempted this argument given the high unlikelihood that Congress would have ever intended section 411(a) to act as such a sweeping exemption of all foreign works in the absence of specific legislation. The Premier Leagues ‘own goals’ did not stop there. District Judge Stanton also rejected the plaintiffs' claim for punitive damages as “there is no circumstance in which punitive damages are available under the Copyright Act” (see the same court’s decision in Viacom v YouTube).

In typical US v International Copyright Treaty fashion, District Judge Stanton stated that the Senate Judiciary Committee (right) concluded that Section 412 did not completely prohibit the "availability of all meaningful relief” to foreign works. Also, even if in conflict with these treaties, because the Berne Convention and TRIPS are not self-executing under U.S. law they have “no effect on U.S. law unless Congress so provides.” District Judge Stanton therefore held that foreign works not registered could not benefit from statutory damages under the Copyright Act. If this ruling stands, a burden will be placed on foreign companies to register their copyright in order to protect their ability to claim statutory protection in future litigation.

The silver lining for the Premier League was however found in section 411(c). Under this section a foreign work containing sounds and/or images which was first recorded simultaneously with its live transmission may obtain statutory damages in the absence of registration if the copyright owner serves the infringer an “Advance Notice of Potential Infringement.” In their defence, YouTube/Google alleged that the plaintiffs could not “point to a single work for which they claim to qualify for the exception” nor did they “satisfy the provision’s detailed notice requirements.” In reply, the Premier League by way of their lawyer submitted a declaration that since 10 September 2008 the Premier League has served more than 340 Advance Notice on YouTube. District Judge Stanton held that this was satisfactory to amend the plaintiffs' complaint and YouTube/Google’s argument therefore failed.

As reported by Bloomberg, an in-house lawyer for Google stated that "the punitive and statutory claims dismissed by the court were baseless from the start.” Unfazed by the court’s decision, the plaintiffs’ lawyer Louis Solomon (Proskauer Rose LLP) stated that it was not “going to limit” the case. Instead he stated that it was “going to shape how we go about proving damages. We still have all the other statutory remedies, such as compensatory damages and disgorgement of profit.”

At the heart of both the Viacom and Premier League cases is whether YouTube did all they should have to stop the uploading of infringing content onto the site. In particular, both suits focus on YouTube’s responsibility in inducing infringing content to be uploaded and their alleged motive to include this content in order to increase site traffic. The AmeriKat doubts that a court will be sympathetic to such an argument. Given the specific legislative measures being interpreted and the purpose of the DCMA in facilitating/protecting sites like YouTube, the AmeriKat believes that Premier League’s success now depends on a factual exercise of whether or not the Advance Notices were compliant, and if so, whether YouTube did all they could in removing the infringing content once notified.

Trial dates have yet to be set for these two soon to be mammoth decisions.

Click for court documents for Viacom v YouTube and Premier League v YouTube.

News in Brief

 On the afternoon of Friday 26 June, Tony La Russa quietly dropped his claims against Twitter for, amongst other things, trade mark infringement. In the court document filed by La Russa’s lawyer, Gregory McCoy, La Russa dismissed with prejudice all claims against Twitter without any settlement. Given that the case was dismissed without any settlement, the AmeriKat thinks that Twitter may be in a more powerful position in the event that other potential claimants were thinking of bringing similar proceedings.

 As reported in the Chicago Tribune, patent attorney Matthew Pequignot sued a manufacturer of disposable cups, alleging that it was misleading consumers in continuing to mark its products with expired patent numbers. Summary judgment was granted to the manufacturer by District Judge Leonie Brinkema who stated that Solo Cup Company did not intend to deceive the public. This was the first time that a lawsuit had ever been brought under this obscure provision in US patent law which permits anyone to bring a suit on behalf of the United States. Any monetary damages are then split with the US government.

 If you say the paper towel brands “Brawny” and “Bounty” to any average American they will most likely respond “Brawny Man!” and then sing “the quicker picker upper, Bounty!” These two giants of the paper towel industry have locked heads this week. Bounty has filed a federal lawsuit alleging that Brawny has infringed its trade mark by using a ‘bowtie’ pattern on its paper towels. At a preliminary hearing on 8 July, lawyers for Bounty tried to obtain an interim injunction against the continued sale of the infringing Brawny towels. If obtained, it is alleged that an injunction would cost Brawny $110 million. The AmeriKat doubts that Procter & Gamble, who own Bounty, would ever be able to prove that a consumer would be confused between the two products because of allegedly identical/similar patterns on the paper towel.

EU IPR border detentions up

The EU has issued a press release congratulating itself on a significant increase in customs activity at the EU's external borders in relation to IPR infringement.

• Over 49 000 customs detentions were registered in 2008, compared to 43,000 in 2007
• 80% of the customs interventions were the result of requests from industry
• There was a sharp increase in 2008 in the actual number of IPR infringing goods detained by customs – 178 million compared to 79 million in 2007
• There was a 2600% increase in the number of DVDs detained
• China was the main source of infringing goods, but other countries were hotspots for particular goods (e.g. India for medicines)

The IPKat notes that there are two ways to read these figures - either customs detection is getting better, or potentially infringing imports are getting more prevalent. Merpel wonders about the huge increase in the number of DVDs - is it because more people have DVD players and so it's more worthwhile importing them?

Friday fillers

Remember to check out the Forthcoming Events feature in the IPKat's side bar: there's something for (almost) everyone!

Two people whose comments on intellectual property have been very much in the news this week are the Pirate Party's sole Member of the European Parliament Christian Engstrom, whose article in the Financial Times has been much commented on. Another Christian in the news was the world's most high-profile Christian, none other than the Pope himself. His Holiness whose latest encyclical, Caritas in veritate, states, at para 22:

"Corruption and illegality are unfortunately evident in the conduct of the economic and political class in rich countries, both old and new, as well as in poor ones. Among those who sometimes fail to respect the human rights of workers are large multinational companies as well as local producers. International aid has often been diverted from its proper ends, through irresponsible actions both within the chain of donors and within that of the beneficiaries. Similarly, in the context of immaterial or cultural causes of development and underdevelopment, we find these same patterns of responsibility reproduced. On the part of rich countries there is excessive zeal for protecting knowledge through an unduly rigid assertion of the right to intellectual property, especially in the field of health care".

The Kat notes that the Pope and the politician each espouse the moral high ground in order to dampen the ardour of those who create the wealth to which they don't aspire. Merpel's feeling a bit despondent since she couldn't find the Latin version, of which the English is presumably a pale translation. Quemadmodum dicere 'unduly rigid assertion of the right to intellectual property' in lingua latina, pensit catta bellissima ... Tufty adds his thanks to all the readers of this blog who sent in a link, either enriched by their comments or without them.

Unlike modern celebrities, who appear to be most easily recognised when unwrapped, even famous confectionery products will generally pass unknown if they stay within their packaging. This at least is the conclusion one can draw from Case T-28/08, Mars v OHIM, in which the Court of First Instance of the European Communities confirmed that its Community trade mark for the three-dimensional shape of its Bounty bar was invalidly registered (see commentary on this decision here). This decision was however picked up by the press and turned out to have been spotted by nearly all 8,000 of the IPKat's weekday readers. The thing the IPKat liked best about this decision is the contrast between the commonplace nature of the Bounty shape and the grandiloquence of the verbosity in which that commonplace nature is framed by the Court:

"31 ... as regards the allegedly distinctive characteristics of the shape in question, ... an elongated shape is almost intrinsic to a chocolate bar and does not therefore significantly depart from the norm and customs of the relevant sector. Furthermore, the word ‘bar’ itself suggests that the shape of the product it describes is elongated. It is a shape which comes naturally to the mind of the consumer of mass consumption goods such as the goods concerned ...

32 Secondly, the applicant’s argument that ‘applying rounded ends to an elongated rectangular chocolate bar is in itself unusual in the sector’ must also be rejected. ... many chocolate bars available on the market display that combination of elements. Furthermore, the applicant itself admitted in the application and at the hearing that there are other chocolate bars on the market which have a shape similar to that of the mark applied for. The applicant has not however shown in what respect those other goods are merely copies of the mark applied for in the present case.

33 Lastly, as regards the three chevrons on the top of the shape at issue, ... the Board of Appeal was correct to find ... that the average consumer of the category of goods concerned will perceive those chevrons, at the most, as decorative elements and not as a sign indicating the commercial origin of the product. The applicant has not established that the relevant consumer would pay particular attention to that characteristic or to the rounded ends to the point of perceiving them as an indication of the commercial origin of the product concerned. ... the end user will usually pay more attention to the label on the product or its packaging and the name, image or graphic design displayed thereon than simply to the shape of the product. Furthermore, as the product in question is sold in opaque packaging the consumer will generally see its shape only after having removed that packaging".

In other words, bars are bar-shaped and this is often the case with chocolate bars. The word "bar" makes people think of a bar. Other bars also look like bars, and some even have rounded corners. People who eat them don't study the top to see if there's a pattern on it and, if they do, they think it's decoration. Oh, and most people choose one bar over another because they read the label or identify the wrapper.


Secular Citizen brings news that the Hindu goddess Lakshmi has been converted into a brand ambassador for Burger King. Unsurprisingly there have been protests.

Right: another 'Texan Whopper', guaranteed to affront no-one but the vegetarian lobby

According to The Telegraph,

"The 'Texican Whopper' is an affront to Hindu sensitivities in its own right – it includes an all-beef patty, a beef chilli-con-carne slice, egg-based Cajun mayonnaise, all forbidden by strict Hindus. Some devotees would even be offended by the inclusion of onions which they believe inflame passions. But it is the depiction of Lakshmi which has provoked widespread anger with its suggestion that a Hindu deity eats beef".

The IPKat wonders what is in worse taste: this tactless depiction or the burger itself. He is however mollified by the fact that he has learned a little about Cajun mayonnaise, a product of which he was previously ignorant.

Many readers have sent the IPKat this link to the eBay petition for the European Commission to intervene to stop brand owners [actually or allegedly] restricting the online sale of branded goods -- some to urge him to sign it, others to press him to condemn it. To his shame, this member of the IPKat team has to confess that he has never either bought or sold any item via eBay, so he can't speak from direct experience. However, he believes that, with e-sales as with recorded music, the genie is out of the bottle and is unlikely to be squeezed back into it without a fight. If brand owners -- who have a lot of other things to worry about including competition with each other in their own sectors -- can't cooperate to create an entity of their own to compete effectively with eBay, they can expect little support from a European Commission that places cheap prices and consumer choice so far above whatever they may be able to offer.

Trial judge says "Boileau" to patent licence; appeal court agrees

The draft judgment of the Court of Appeal for England and Wales in Oxonica Energy Ltd v Neuftec Ltd [2009] EWCA Civ 668 has started circulating, though the final, approved text has yet to reach this member of the IPKat team and awaits posting on BAILII. This appeal relates to a contractual dispute, heard by Peter Prescott QC acting as a Deputy Judge. Peter Prescott summed up the whole matter up in the first two paragraphs where he said:

"How do we interpret a formal commercial agreement if it is ambiguous and we have reason to believe that its draftsman did not have a deep understanding of the relevant law? I think that is what this case is about.

The secret of drafting legal documents was best described by Nicolas Boileau, who was not only a literary critic but a qualified lawyer: "Ce que l'on conçoit bien s'énonce clairement et les mots pour le dire arrivent aisément". What one conceives well can be stated with clarity and the words to say it come easily. We should all have that framed and displayed on our desks. But too often the opposite precept is followed. Bits of legal boilerplate are bolted together so that it is the words that are allowed to shape the concept instead of the other way round. In that regard the invention of the word processor has worked wonders. Sometimes, I fear, it has dispensed with the 'concept' altogether. Misfortune not infrequently follows."

The Court of Appeal (Lord Justice Jacob giving the judgment with which which Judge and Arden LJJ concurred) dismissed the appeal, adding this comment concerning the interpretation of the patent licence:

"16. Each side supported its position with what I can call “big” arguments supported by various subsidiary arguments based on inference from other clauses. The latter have minor significance here given the poor drafting and the Mitsui principle of construction [".. the poorer the quality of the drafting, the less willing the court should be to be driven by semantic niceties to attribute to the parties an improbable and unbusinesslike intention, if the language used, whatever it may lack in precision, is reasonably capable of an interpretation which attributes to the parties an intention to make provision for contingencies inherent in the work contracted for on a sensible and businesslike basis": Mitsui Construction Co Ltd v A-G of Hong Kong (1986) 33 BLR 14)]. So it is not necessary to deal with these in detail. What matters are the big arguments.

17. Not surprisingly, each side said that the other’s position amounted re-writing the document rather than construing it. I do not agree with either view. Given that neither side suggests the agreements are void for ambiguity (a position of last resort in relation to the construction of any contract) the search is on to ascertain what the reasonable reader would make of the disputed phrase in the context of the two documents and the background".

The IPKat has complained about bad drafting on numerous occasions and continues to do so. Sometimes they are the result of inappropriate welding together of boilerplate terms; on other occasions they reflect a failure of licensor and licensee to reach agreement on certain issues or -- even worse -- an agreement not to flesh out some specifics, in case the attempt to do so should reveal a lack of consensus concerning them. But, given the regularity with which fudged and fuzzy contract terms get litigated, is the short-termism that leads to the signing of a botched job a better policy than nailing down the foreseeable issues before signing the licence?

Cure for bad drafts here

CLA pharma sector enquiry event

The IPKat has received notice of a forthcoming Competition Law Association event discussing the EU's Pharma Report.

'The Pharmaceutical Sector Inquiry: implications for the sector and beyond' will take place on 27 July at 6pm at the offices of Simmons & Simmons, CityPoint, One Ropemaker St, London EC2Y 9SS.

In the hotseat are Rowan Freeland (Simmons & Simmons) and Stephen Kon (SJ Berwin). The cost is £25 for non-members, £20 for members and £10 for associate members. CPD points are available.

If you're interested in going along send your name, address, any dietary requirement and an appropriate cheque to Sharon Horwitz, CLA Secretary, c/o Glynda Gabriel, Linklaters LLP, One Silk St, London EC2Y 8HQ.

STOP PRESS: this event will now take place a day earlier than originally publicised on 27 July. All other details remain the same.

Bits and pieces

Next Tuesday 14 July, from 5.30pm to 7pm, Australian practitioner Julian Gyngell will be addressing an informal meeting of the IP Finance blog group. He'll be raising some interesting issues on the topic of "Phonewords and Finance". Says Julian,

"Organisations pay handsomely (sometimes millions of dollars) for phonewords because they believe that the phoneword will help increase telephone communications with their business (and hence increase sales and their goodwill with customers). However, the rights of use conferred by the issuing authority in the country in question are limited to the specific underlying telephone number itself and the purchaser’s proprietary rights in the phoneword (if any) will depend on the phoneword in question and, in particular, whether

a. the purchaser owns a trade mark (registered or unregistered) which corresponds to the phoneword (or the key word in the phoneword) or

b. conversely, another organisation owns a trade mark (registered or unregistered) that corresponds to the phoneword (or the key word in the phoneword).

I plan to review a number of recent cases, including some very recent WIPO domain name decisions involving phonewords, and advise that a purchaser of a telephone number that is a phoneword needs to be acutely aware of a number of important factors if it is to maximise the potential return on its investment, namely

a. the scope of the rights of use that it has acquired (and those that it hasn’t acquired);

b. the rights of third parties that might conflict with its use of the phoneword and

c. the steps that it should take to further protect its investment".

McDermott Will & Emery have kindly agreed to provide a venue in their City office at 7 Bishopsgate (here). If you're coming, please email me here and let me know so I'll have a rough idea of how many bodies will be putting in an appearance. Everyone is welcome and admission is FREE.


The Class 46 weblog, which has specialised in European trade mark law since its inception in December 2007, has just collected its 700th email subscriber (702, to be exact, and rising). Well done! If you'd like to take a look at Class 46, you'll find it here. Perhaps an even bigger achievement, though paradoxically a smaller one, is the tally of 500 email subscribers attained by The SPC Blog which, as its name suggests, just deals with a single IP subject: the extension of term of pharmaceutical and agrochemical patents through the grant of supplementary protection certificates and paediatric extensions. You can see this blog here.

Last week this member of the IPKat team wrote

"As a British author of some antiquity, many of whose books are now no longer available and who has here: >generated a lengthy list of publications in periodicals, this member of the IPKat team is becoming increasingly perplexed about what precisely the proposed Google Book settlement might mean to him personally .... Knowing that many readers of this blog are in much the same position, he guesses that he can't be alone. If enough readers -- and even their publishers -- would like to get together with him during the summer to discuss the legal and commercial dimensions, can they please email him here with the subject heading 'Google Book'. If there's enough interest, we can get together for a drink and a chat".

First, thanks to those of you who have mailed to say you'd like to participate. Please accept this as an acknowledgement of your emails! Secondly, if anyone else who missed last week's post would like to add their name to the list of interested parties, it's not too late!


Finally, an appeal for patience: between his various email accounts this member of the IPKat team currently receives between 200 and 300 emails a day. If you email either the IPKat or Jeremy and don't get an immediate reply, please don't take it as a personal slight or rebuff: we'll get back to you when we can. Hot news that is sent to the IPKat on theipkat@gmail.com should also be sent to any team member by whom it is intended to be actioned, since the Kat's box is often only cleaned out once a day.

The pharma sector in Europe: what will become of it?

STOP PRESS: the full report can now be downloaded from the DG Competition website here.

Eight months after the publication of its 426-page preliminary report, DG Competition of the European Commission has at last unveiled its controversial Final Report on the Pharmaceutical Sector (see earlier IPKat posts here, here, here, here, here and here). This report, some 600 pages, long, will take a lot of reading. Meanwhile, here's the thrust of the report as described in this morning's press release:

"Antitrust: shortcomings in pharmaceutical sector require further action

Market entry of generic drugs is delayed and there is a decline in the number of novel medicines reaching the market ... The sector inquiry suggests that company practices are among the causes, but does not exclude other factors such as shortcomings in the regulatory framework. As a follow up, the Commission intends to intensify its scrutiny of the pharmaceutical sector under EC antitrust law, including continued monitoring of settlements between originator and generic drug companies. The first antitrust investigations are already under way. The report also calls on Member States to introduce legislation to facilitate the uptake of generic drugs. The report notes near universal support amongst stakeholders for a Community Patent [it has taken about two decades to win this battle...] and specialised patent litigation system [... and rather less time to win this one ...] in Europe [... but this is a much wider issue than pharma alone].

Competition Commissioner Neelie Kroes said: “We must have more competition and less red tape in pharmaceuticals [That's no surprise]. The sector is too important to the health and finances of Europe's citizens and governments to accept anything less than the best. The inquiry has told us what is wrong with the sector, and now it is time to act. When it comes to generic entry, every week and month of delay costs money to patients and taxpayers. We will not hesitate to apply the antitrust rules where such delays result from anticompetitive practices. The first antitrust investigations are already under way, and regulatory adjustments are expected to follow dealing with a range of problems in the sector."

Main findings and policy conclusions

The inquiry has contributed significantly to the debate on European policy for pharmaceuticals, in particular for generic medicines.

On the basis of a sample of medicines that faced loss of exclusivity in the period 2000 to 2007 in 17 Member States, the inquiry found that citizens waited more than seven months after patent expiry for cheaper generic medicines, costing them 20% in extra spending [the Kat bets these figures will come in for some conflicting explanations, along with others in the report].

Generic delays matter as generic products are on average 40% cheaper two years after market entry compared to the originator drugs. Competition by generic products thus results in substantially lower prices for consumers. The inquiry showed that originator companies use a variety of instruments to extend the commercial life of their products without generic entry for as long as possible [this applies in all patent-driven industries to some extent; if it's an evil to be cured here, does that cast light on DG competition's view of patents in other sectors?].

The inquiry also confirms a decline of novel medicines reaching the market and points to certain company practices that might contribute to this phenomenon. Further market monitoring is ongoing to identify all the factors that contribute to this decline in innovation [the IPKat has said this before and he'll say it again: if he had £100 million to invest, every penny of it would go into the generics sector -- he wouldn't waste a penny on original research nowadays, unless he was thinking of becoming a philanthropist].

Left: Moggins burrows into a box of debranded, repackaged cat-nip pills in search of an English translation of the contra-indications

Reacting to the findings, the Commission will apply increased scrutiny under EC Treaty antitrust law to the sector and bring specific cases where appropriate. The use of specific instruments by originator companies in order to delay generic entry will be subject to competition scrutiny if used in an anti-competitive way, which may constitute an infringement under Article 81 or 82 of the EC Treaty. Defensive patenting strategies that mainly focus on excluding competitors without pursuing innovative efforts will remain under scrutiny. To reduce the risk that settlements between originator and generic companies are concluded at the expense of consumers, the Commission undertakes to carry out further focused monitoring of settlements that limit or delay the market entry of generic drugs [this is an interesting phenomenon: it would be great to get some current data and to take a look at how these settlement payments affect pharma in the US]. In the case of clear indications that a submission by a stakeholder intervening before a marketing authorisation body was primarily made to delay the market entry of a competitor, injured parties and stakeholders are invited to bring relevant evidence of practices to the attention of the relevant competition authorities.

On regulatory issues the inquiry finds that:

There is an urgent need for the establishment of a Community patent and a unified specialised patent litigation system in Europe to reduce administrative burdens and uncertainty for companies. A full 30% of patent court cases are conducted in parallel in several Member States, and in 11% of cases national courts reach conflicting judgements [so 89% don't. Let's look at positives and see how we can push that figure up while we await a systemic overhaul].

Recent initiatives of the European Patent Office (EPO) to ensure a high quality standard of patents granted and to accelerate procedures are welcome. This includes measures taken in March 2009 to limit the possibilities and time periods during which voluntary divisional patent applications can be filed (so called "raising the bar exercise")

The Commission is also urging Member States to:

ensure that third party submissions do not occur and in any event do not lead to delays for generic approvals

significantly accelerate approval procedures for generic medicines - for example, the Commission believes that generic products should automatically/immediately receive pricing and reimbursement status where the originator drug already benefits from such status, which would allow for a faster product launch in certain cases [the IPKat suspects that, if the approval system were devised now, it would be a lot simpler than the current one anyway]

take action if misleading information campaigns questioning the quality of generic medicines are detected in their territory [presumably misleading campaigns of this nature are already unlawful, so what the Commission wants looks like specific state intervention rather than leaving it to generics to protect their own interest]

streamline trials that test the added value of novel medicines.

To assist Member States in delivering speedy generic uptake and improved price competition, the report contains an overview of national measures and their effects on generic uptake (volume, prices, number of entrants) and encourages Member States that want to benefit from generic savings to consider such measures. In this light the Commission will also examine existing EU rules in the area of pricing and reimbursement (Transparency Directive 89/105/EEC)".

The IPKat will have to do a lot of reading before he reaches proper positions. Meanwhile, readers are welcomed and encouraged to post their comments below.


Mission statement of DG Competition's Enterprise and Industry unit on Competitiveness in the Pharmaceuticals industry and Biotechnology here
DG Competition's web page listing the various materials available with regard to the pharma sector inquiry here
Read the Financial Times' speculation this morning here
Reuters' take, pre-publication, here
Big pharma bracing itself for bad news here
Five reasons why things are looking up for pharma here
How pharma faces competition in the US here, in Australia here and in India here
Things could always be worse: pharma patents in Venezuela here
Meet competition commissioner Neelie Kroes here

Right Start for Kick Start? Another IPO initiative

It must be the season for press releases, since the IPKat seems to be getting a lot of them of late. Here's another one which emanated yesterday from the UK's Intellectual Property Office, succinctly entitled "New trade mark services from the Intellectual Property Office make it cheaper and faster to kick start small businesses". According to this one:

"From October this year, businesses will be able to register trade marks more cheaply and easily [well, that can't be bad!] thanks to a number of new proposals announced today by the Intellectual Property Office.

In publishing its response to the ‘Helping businesses register trade marks and patents’ consultation paper, the Intellectual Property Office will implement a number of services aimed at strengthening business competitiveness throughout the UK.

[we've already been told twice that something good has been done. Now, even before we know what the changes are, we get the Minister's comment ...] David Lammy, Minister of State for Intellectual Property, said: "We are committed to supporting businesses in these difficult economic times, and our Right Start [not to be confused with Start-Rite] and E-filling initiatives [... which we still haven't been told about] make it easier and cheaper for trade mark owners, and in particular small businesses, to register and protect their brands. Registering a trade mark is an important step for a business to take. By protecting their intellectual property they are protecting their innovative ideas of the future. Failing to do this risks them losing their investment in developing successful brands for their products and services."

Proposals to be introduced include [at last!]:

A ‘Right Start’ service for trade marks. A business using the new 'Right Start' service will be able to defer payment of half the usual £200 trade mark application fee until after it has seen the Intellectual Property Office's assessment of whether the mark can be registered. [interesting idea, but it makes you wonder: if the deferring of £100 is going to make a meaningful difference to the viability of a small business, is the applicant dangerously undercapitalised?] If there any problems, the business will have an opportunity to informally discuss them with the trade mark examiner before deciding whether to proceed with the application and pay the balance of the fees [this informal discussion can be hugely helpful, especially when persuading traders not to opt for descriptive business identifiers. It would be great if this service could be offered before the applicant parts with any of his money, though].

An E-filling initiative. This will offer a £30 reduction in application fees for e-filed trade marks where the full discounted fee is paid at the time of filing and a £10 reduction in the application fee for e-filed patent applications. It also offers reduced fees for e-filed patent search and examination requests. [this probably benefits the IPO at least as much, if not more, than it benefits applicants -- but there's no harm in that].

[IPKat's helpful suggestion: this might be a good place to stick the Minister's comment, now we know what he's commenting about] The full responses to the consultation paper can be found on the Intellectual Property Office website".

Merpel adds, oh look! Someone else has already registered Right Start in Class 16, though fortunately only for 'magazines relating to parenting skills; photographs; cards; posters; calendars'.

Tim Cleary

The IPKat has just learned of the recent death of Tim Cleary, Head of Trade Mark Examination in the Patents Office, Ireland. As editor of the European Trade Mark Reports, this member of the blog team has read every word of Tim Cleary's decisions in recent years and has found them succinct, fair and sometimes quietly humorous. One of this writer's favourite passages of Tim Cleary's prose can be found in Newmans Chocolates Ltd v Société des Produits Nestlé, a decision from June 2006 involving the opposition raised by the owner of the MILKY BAR trade mark for confectionery to an application to register MILKBEARS for the same products:

"I have no evidence to suggest that the production of milk chocolate sweets specifically in bear-shapes is a common practice among confectioners such that the average consumer would expect such products to emanate from a number of different sources. Secondly, and more importantly, the word MILKBEARS is not at all a direct and obvious substitute for the descriptive term “bear-shaped milk chocolates”. The word makes no reference to chocolate at all and, to the extent that it refers to other aspects of the relevant goods, it does so by means of a covert allusion that on no account could be regarded as banal or commonplace. It is, in fact, a perfectly distinctive trade mark that evokes a concept of bears composed or milk or, perhaps, bears that like to drink milk. It is essentially a fanciful concept and is certainly sufficiently novel to impress itself upon the mind of the average consumer of the relevant goods in a lasting manner. I have no doubt but that the average consumer who was once exposed to the trade mark MILKBEARS, even if used in relation to bear-shaped milk chocolates, would readily recognise the mark on a subsequent occasion of purchase and rely on it to know that the goods so marked were one and the same as those that he had previously seen offered for sale under that name".

And later that year, in Reynolds Metals Company v Cofresco Frischalteprodukte GmbH & Co. KG, an opposition tussle between the earlier mark TOPPITs and the applicant's TUB-ITS, each for storage containers, he produced this little aside:

" ... the striking thing about TUB-ITS is not the look or the sound of it but the economic use of language to tell the consumer that the product so marked is a multi-pack of general purpose storage containers. That message is delivered in a flash and quite unmistakeably, in my opinion. It may be going too far to describe it as zen-like but it is certainly a clever little trade mark!"

The IPKat will miss him.

IP Crime? Bring on the pianists!

76 pages long, the 2008/9 IP Crime Report, published online by the Intellectual Property Office for the United Kingdom, is an impressive read; there are plenty of statistics at the back too. If you don't want to be impressed, or don't have the time to be impressed, you can read the IPO's press release instead.

Right: Harry loved those adidas stripes, but he just wasn't very good at counting

The press release states, in relevant part:

"Partnership work and shared intelligence is key [or should that be "are key"? The poor Kats can never remember] to combating IP crime

The Enforcement community and Industry are reaping the rewards of improved knowledge of IP crime and offenders thanks to the ‘Intelligence Hub’ created by the Intellectual Property Office to support a more targeted approach to operations.

The Intellectual Property Crime Group 2008/2009 IP Crime Report ... highlighted intelligence sharing as being one of the most effective and sustainable ways of tackling IP crime.

To facilitate a coordinated approach and the sharing of information to help address IP Crime, the Intellectual Property Office launched an IP crime strategy in 2004. This included the establishment of the IP Crime Group and outlined the development of an Intellectual Property Office led intelligence hub, working with those agencies leading the way in targeting those involved with IP crime.

The hub has received more than 2,000 intelligence reports since the beginning of 2009; a 120% increase in the same period for 2008 [meaning, from when to when? Also, this suggests rather that figures for 2008 must have been lousy, since 2,000+ intelligence reports doesn't sound like very many when contrasted with the victim estimates of the scale of IP crime]. This vast increase is attributed to the renewed partnerships that have been made with enforcement agencies such as the police and trading standards.

Commenting on the report Mr Lammy said: “... The UK is not alone in the fight [Indeed not! The IP criminals would be in a bad way if they only had the Brits to exploit]. IP crime is a serious global issue. The OECD estimates that the global trade in counterfeit and pirated products seized across national borders is worth around US$200 billion – higher than the GDP of 150 countries [or a good deal less than it has cost the British government to bail out its banks]. This figure continues to increase and doesn’t even include goods produced and consumed domestically.”

The Intellectual Property Office has also recently been awarded competent authority status which enables increased collaboration and intelligence sharing with enforcement agencies in different countries via Europol which will enable IP crime to be tackled further.

However, although progress has been made in combating some of the serious issues of IP Crime, it still poses a serious threat to businesses and consumers. The Rogers Review estimated that criminal gain from IP crime in the UK was £1.3 billion in 2006 with £900 million of this flowing to organised crime. Many believe that today the actual figure is far higher.

Giles York, Deputy Chief Constable of Sussex Police and Chair of the IP Crime Group said: “This latest report clearly shows that IP crime represents a significant threat to UK businesses and consumers [did we never know this before]. ...

The IP Crime Group, which was created in 2004 as a result of the IP Crime Strategy [is this repetition, or is the Kat just suffering from deja-vu?], brought together all the key players [ah, pianists!] in order to set priorities and coordinate activity. The current Group brings together representatives from government, industry and enforcement agencies. The aim of the IP Crime group is to discuss cross-cutting policy issues, raise awareness of IP crime and identify and disseminate best practice".

The IPKat would really like to know how many of the 2,000 intelligence reports received by the IP Crime Group have led to prosecutions and convictions, but accepts that it may be too early for that sort of information to be known. Merpel says, am I alone in wondering whether -- without being any longer -- press releases could be a great deal more informative, which they would be if they broke with the ritual formality that is attached to them. Having to read what the Minister says is a bit like having to sit through the speeches at prize day.

Monday miscellany

A couple of patent-y things happened last week. First, the Court of Appeal for England and Wales dismissed an appeal against the validity of the patent -- and the supplementary protection certificate based on it -- in Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd and another [2009] EWCA Civ 646. You can read all about this decision on The SPC Blog here. Secondly, on Friday Mr Justice Floyd gave ruled on the scope of injunctive relief to which MMI was entitled in (Patents Court, England and Wales) in MMI Research Ltd v Cellxion Ltd and others [2009] EWHC 1533 (Pat), where Cellxion (i) craftily tried to limit the scope of the injunction by invoking Crown use and (ii) had a go at getting a stay of the injunction pending a possible appeal. To find out what happened, you can visit PatLit here for further information.

The IPKat's friend David Musker (Jenkins), left, has just informed him that his 2001 book The Design Directive is now available on his firm's website here. Says David, modestly: "It sold well through CIPA, and formed the basis of the first part of my later book Community Design Law: Principles & Practice, but is now out of print. I have made a few corrections, but it is largely as published - opinionated, but often not far wrong!".


A bright, bouncy, dynamic and initiative-rich friend of the IPKat has written to inform him as follows:

"I am looking for a role as an IP lawyer. I qualified in Australia in 2001 and I am arranging to be UK qualified. I have broad commercial experience, and specialist IP law experience. My most recent UK role was as an IP lawyer and my remit included advising, filing and prosecuting, opposing and invalidating trade marks and preparing cease and desist letters. It also covered the law of copyright and passing off. Previously, I worked as an in-house commercial lawyer, and at the British Broadcasting Corporation as an IP litigation lawyer. I am particularly strong with collecting relevant evidence and turning a large amount of relevant evidence into strong witness statements. I am confident and outgoing, and meet challenges head on. I take a solutions-based approach, and am committed to my IP law career. I would love to hear from you".

If you'd like to know more, email the IPKat here and he'll forward your details.


The IPKat's copyright-shaped friend Gwilym Harbottle writes to him:

"As you may remember we are running a Copinger competition [details here]. The supplier of the best comment on or suggestion for improvement of the current (15th) edition wins a free copy of the next (16th) edition and its supplements. This is actually quite a worthwhile prize in financial terms – the present ed. plus 3rd supplement are retailing at £545.

There's now less than a month to go (31 July 2009), but unfortunately, despite your kindly featuring us on the IPKat some time ago, the dedicated competition mailbox (Copinger@hogarthchambers.com) has received vastly more spam messages than competition entries".

The Kats -- whose mailbox suffers from the same malaise -- do hope that their readers will rise to the occasion and come up with some good suggestions.

Letter from AmeriKat

Will the NHL score a touchdown in the Supreme Court?

The AmeriKat is nursing her burnt tail and whiskers having just returned from the most English of summer pastimes, the Henley Royal Regatta (admittedly not the most American way of celebrating the Fourth of July!) A similar American pastime which also entails the provision of sun, food, alcohol and a semi-enthusiastic interest in the sport is the American football tailgate. This less refined American pastime follows the schedule the National Football League (NFL) games of 32 teams every year from August to February. Comprising of the NFL’s multi-billion dollar revenue are royalties generated by the licensing of each team’s trade marks and logos to retailers and consumers.

Last Monday, the Supreme Court granted certiorari in American Needle Inc. v National Football League. After a decline in revenues from the team’s trade mark licences in 2000, an agreement was negotiated between the teams and Reebok International. In the agreement the teams contracted not to compete with each other in licensing their merchandise and not to permit any of these licences to be given to Reebok’s competitors for at least ten years. Consequently, American Needle’s and other manufacturers’ licences were not renewed and consumer prices for the teams’ merchandise rose. American Needle filed a complaint on 1 December 2004 alleging that this agreement violated Section 1 and Section 2 of the Sherman Act. The Sherman Antitrust Act provides that every contract made between two or more persons in restraint of trade is declared to be illegal and every person who monopolizes any part of trade or commerce shall be guilty of a felony. Corporations found guilty of these two sections must pay a fine not exceeding $100,000,000.

The NFL applied for a summary judgment motion claiming that they were exempt from the rule because they constituted a single entity and do not fulfil the plurality requirement required in the Sherman Act. The NFL oddly won on this argument in July 2007 before the district court and in August 2008 before the Seventh Circuit. As a result of these two decisions American Needle issued a write of certiorari to the Supreme Court. The AmeriKat is confused to how the district and Seventh Circuit courts could have held that the NFL is a single entity for the purposes of the Sherman Act, given that the Supreme Court in Radovich v NFL and eight other appellate court decisions since Radovich have held that the NFL and other professional sports leagues are subject to Section 1. Although an exemption is currently enjoyed by professional baseball (Federal Baseball Club of Baltimore v National League 259 U.S. 200 (1922)), the Supreme Court made clear that if given an opportunity to revisit the decision they would not find that professional baseball enjoyed such an exemption.

One would assume that the NFL, having won in the federal courts would have kept silent about the issue of the appeal. Not so! The spokesman for the NFL, Greg Aiello, stated that the league looked forward to explaining why the court should extend a favourable appeals court rulings on how anti-trust laws apply to the NFL. Other sports leagues like the National Basketball Association (NBA) and the National Hockey League (NHL) have come out in support of the NFL. Bill Daly, the NHL’s deputy commissioner, said the NHL looks

"looks forward to the Supreme Court finally resolving what has become an oft-litigated, contentious issue in litigation involving professional sports leagues. We are hopeful that that resolution will ultimately result in less litigation and will allow professional sports leagues to operate in a less costly and more efficient manner."

However, a former lawyer for the Federal Trade Commission and the Justice Department’s antitrust division, Stephen Ross, explained that he was concerned about the court’s decision to take the case. “This case did not need to be heard by the court unless it had a broad plan from withdrawing the pro-consumer protections of the antitrust laws to sports fans.”

The AmeriKat does not see that there should be any hope for the NFL in convincing the Supreme Court that the commercial activities between their 32 teams can ever represent a single entity. The NFL is already an incredibly powerful market force, and where the law can inhibit anti-competitive and monopolistic practices (such as was the instance in the Reebok contract) the Court must uphold their decision in Radovich.

Caught in the Rye

On Wednesday, District Judge Batts granted a preliminary injunction against the publication of the sequel 60 Years Later: Coming Through the Rye in the United States. As the IPKat reported last month, District Judge Batts initially granted a temporary injunction against publication while she decided whether the sequel was a parody and thus benefited from the fair use defence. In her 37 page Memorandum and Order, District Judge Batts held that the defendant’s work did not benefit from fair use and that in establishing a prima facie case of copyright infringement Salinger could restrain publication of 60 Years Later.

Citing Campbell v Acuff and Sun Trust Bank v Houghton Mifflin, District Judge Batts lambasted any contention held by the defendants that 60 Years Later was a work of parodic comment or criticism: “the Court found such contentions to be post-hoc rationalizations employed through vague generalizations about the alleged naiveté of original, rather than reasonably perceivable parody.”

Left: might the 76-year old Caulfield look like this, one wonders?

Specifically, the Court found that the 76 year-old Holden Caulfield regurgitated the same perspectives and characterizations as he did when he was 16. The Court held that such identical perspectives already depicted in Catcher would not benefit from protection as a parody in 60 Years Later. In coming to this conclusion the Court looked unfavourably on public statements issued by Colting and the publishers prior to the case which contended that 60 Years Later was a ‘tribute and sequel’ and a ‘free-standing novel’ which had nothing to do with Catcher. It was only when faced with a lawsuit did Colting and the publishers contend that the book was a parody (see footnote 3 of the Order). The AmeriKat wonders whether authors and publishers of derivative or transformative works will now be managing their pre-publication PR more closely in light of this judgment.

District Judge Batts also held that the transformative nature, though present in respect to the addition of J.D. Salinger as a character in 60 Years Later, was limited. The Court also ruled that the quantity and quality of the copyright material used from Catcher in 60 Years Later was “more than necessary in the alleged transformative purpose in criticizing Salinger and his attitudes and behaviour.” It must be noted that it was not solely the use of Caulfield as the protagonist that was unacceptable, it was the extent and similarity of the details of his character as detailed in Catcher that fell foul of the fair use defence. Additionally, the Court held that 60 Years Later was the type of work that in general, Salinger would develop or license others to develop, i.e. a derivative work that necessitates the permission of the copyright owner. Although District Judge Batts concluded that it was unlikely that 60 Years Later would “undermine the market for Catcher itself, it is quite likely that the publishing of 60 Years…could substantially harm the market for an authorized Catcher sequel or other derivative works.”

District Judge Batts’s written judgment was not a surprise to the AmeriKat, but her contention that the character of Holden Caulfield benefits from the protection of copyright is still surprising. As previously stated, the AmeriKat waits with baited breath for an appeal on this point.

Everything is Bigger in Texas

The court rooms of eastern Texas would not, as many may assume, have tumbleweeds blowing through the jury box. Instead, the Eastern District is known as having the most patent infringement lawsuits filed of any district in the United States and the most claimant-friendly with patent owners wining 77% of trials. The trend continued last week with the highest ever award of damages in a patent case in the United States. After a reported five hours of deliberation, the jury in Centocor Inc v Abbott Laboratories awarded the Johnson & Johnson unit $1.67 billion for Abbott’s willful infringement. The claim was over a process exclusively licensed to Centocor by NYU which is used to produce their Remicade arthritis drug which inhibits the TNF protein which causes inflammation. Centocar contended that Humira was made using this identical process. The AmeriKat wonders whether Abbott’s own lawsuit pending in a Boston court over their entitlement to royalties from J&J for the Simponi drug could go someway in lessening the blow of the billion dollar judgment against them [note: for a more personal account of the same trial, see "I think he should've shown a little more emotion" here].

Friday funtime

Looking for an intellectual challenge or just a little light entertainment? In either case, don't forget to check out the IPKat's Forthcoming Events on the side bar. There are some generous special offers available, with lots of chances to collect professional development points.

Now that the results of the IPWatchdog's two Top Patent Blog polls have emerged, the IPKat has a few comments to make. First, he'd like to add his congratulations to those which Patently-O has presumably been receiving for that blog's outstanding performance: Patently-O was not only the favourite patent weblog by a long distance, but also topped the "most read" list. Second, the Kat is delighted that, as a general IP blog and not a patent-specific one, his blog came third of the 50 listed sites of patent "favourites", and second among the "most reads". Thank you, to all of you who were kind enough to vote for him. Thirdly, the Kat was pleased to see how many non-US blogs have developed a sizeable following: European Patent Caselaw, Spicy IP, India Patent and IP:JUR all deserve honourable mentions in this regard. IPWatchdog is now going to combine the results of the two polls, to provide a final list, so watch this space for further developments.

The IPKat has just found something else to complain about. If you're looking for any ruling of the Court of Justice of the European Communities or the Court of First Instance since 17 June 1997, you can search for it on the Curia website in various ways. If you know the case number -- which most people don't -- you can use that. You can also search by field, which is handy if you know that the trade mark dispute over BAVARIA for beer is found under 'Agriculture' and not (for example) 'Free movement of goods' or 'Intellectual property'. You can also search for a case by name of party. This is really useful -- but for the fact that you have to have convenient access to diacritical signs before you start. Thus a search for 'L'Oreal' -- a frequent litigant in Luxembourg these days -- will score a zero, while 'L’Oréal' will give you loads of cases (the recent scraps with Bellure and eBay plus the FLEXI and SPA disputes). Since it's sometimes impossible and other times inconvenient for users to find the right signs, couldn't Curia 'soften' the search to enable 'L'Oreal' and 'L’Oréal' to generate the same hits? Merpel says, but those French accents are sooooo romantic ...

Thanks, Hugo Cox, for sending the IPKat this link to some fascinating revelations by Robin Wauters (TechCrunch) concerning social networking enterprise Twitter and the ownership and use of the word 'tweet'.

Normally one to thank his beneficiaries, the IPKat is not so sure in this instance. The man in question is patent wizard and brain-teaser Shabtai Atlow, who has reduced the generally stoic and self-disciplined feline to the status of a twitching wreck with this ingenious time-waster. The IPKat has been assured that 'Circle the Cat' is possible do accomplish, but to his great embarrassment he has failed. Can his readers do better?

Class 46, the specialist European trade mark weblog founded by a group of MARQUES members and supporters in late 2008, is to be adopted into the MARQUES organisation. Powered by a team of ten authors, Class 46 has posted some 1,500 searchable items of news, discussion and analysis and now has an email subscriber list of almost 700 readers. MARQUES will host the blog, greatly smartening up its appearance as it transits from a standard Blogger template to MARQUES' handsome livery. In all other respects Class 46 will remain the same: it remains fully accessible to non-MARQUES members and its editorial policy -- together with the moderation of readers' comments -- will be under the continued surveillance of the blogging team. There's no formal timetable for the move, but it is expected to occur soon. Meanwhile you can visit the current version of Class 46 here.

Birmingham to protect the Balti?; Google Book antitrust probe

Will Brum GI plan curry favour?

The IPKat is a little puzzled to read the news on the BBC that Birmingham City Council is pondering whether to get protected geographical status for the name Balti. A Balti is a hybrid British-South Asian curry, which is said to have originated in Birmingham in the 1970s. Unlike other curry dishes, they are subjectecd to high temperatures for the final 10 minutes of cooking. They are served in restaurants across the UK, without rice, in a special metal dish. While their Pakistani predecessor would have been slow-cooked and served on the bone, the meat in a Balti is served off the bone. The proposal has been welcomed by curry aficionados, who have expressed concern that recently the dish has been served on plates.

The IPKat thinks this smacks of protectionism. It looks like an attempt to turn back the clock and exclude others who are using the method of cooking from identifying it as such.

Google Book Deal - antitrust investigation

The LA Times reports that the US Department of Justice has notified the judge overseeing the Google Book Deal case that it is investigating the Google Book Deal for potential antitrust violations. The concern arises over aspects of the agreement in relation to orphan works. It would see Google being uniquely entitled to scan and distribute out-of-print works, arguable giving Google a monopoly on such works, and excluding other companies from similar practices.

The IPKat doubts whether this will be an easy decision for the DOJ. While the agreement may raise monopolistic concerns, the Kat suspects that the creation of the resource is such a massive undertaking that it might only come into existence if exclusivity is given.

Brussels bypass for BOIP

The IPKat's friends Sandra Bauwens and Michaël Beck (from Belgian law firm Arnold + Siedsma) bring news of a decision of the Court of the Benelux on 26 June -- a long-awaited opinion in response to a reference for a preliminary ruling from the Brussels Court of Appeals. The case concerned the possibility of lodging an appeal against a decision of the Benelux Office for Intellectual Property (BOIP) in an opposition procedure against a Benelux trade mark. The authors explain:

"Article 2.17 of the Benelux Treaty on Intellectual Property (available in Dutch and French here) provides for a judicial appeal against opposition decisions of the BOIP, in which a party may request that a decision be vacated. Until now, it was unclear whether a court of appeal, having vacated an opposition decision in this way, would then have to remit the case to the BOIP, or decide by itself on the merits of the case.

Last week’s decision of the Benelux Court clarifies that the court of appeal is competent to decide the case, in close analogy to the procedure for appeals against refusal decisions. However, the court of appeal may in general only rely on the information on the basis of which the BOIP’s decision was made, or should have been made. It thus appears that it would no longer be useful to provide new facts and arguments during the appeal procedure. It also appears that an applicant (the defendant in opposition and appeal procedures) who has not filed any substantive response to an opposition in the procedure before the BOIP can no longer do so in appeal. This is particularly relevant where the BOIP has dismissed an opposition in spite of the absence of a substantive defence from the applicant.

The Court further opined that a decision by the BOIP not to continue the processing of an opposition, because of lack of prosecution by the opponent, is also a decision from which an appeal lies. There, however, the court of appeal should give the opponent an opportunity to make its case (which implies submitting new facts and arguments) according to the accepted rules of the adversarial procedure.

This decision opens up a new strategy for opponents: they could consider filing a notice of opposition without any facts or arguments, making their case for the first time in an appeal procedure that would be filed against the BOIP’s subsequent decision not to process the opposition, thus effectively bypassing the BOIP procedure. This bypass strategy, used effectively by opponents, would unnecessarily strain the judicial system. Would it not have been wiser to limit the possibility to appeal from non-processing decisions to cases where the opponent has a good-faith excuse for not prosecuting the original opposition?

The original decision of the Court is available in Dutch and French on the Court’s website here. The decision was also briefly discussed on the Boek9 blog here".

The IPKat thanks Michael and Sandra for giving his readers this insight into the strategic possibilities of bypassing the BOIP. Merpel says, this is rather reminiscent of the early jurisprudence of OHIM and the Court of First Instance relating to Community trade marks and the extent, if any, to which evidence and arguments could be introduced at a later stage, thus bypassing the nether regions of the system.

ECJ dilution ruling splits well-informed blog readership

The IPKat's poll on L'Oréal v Bellure closed earlier this week. Its results, bearing in mind that voters were entitled to tick more than one box if they thought that more than one proposition most accurately reflected the true position, are as follows.

*36% of respondents -- that's 64 readers out of the 175 who cast their votes -- considered the ruling to be a "harsh restriction on the freedom of commercial speech;

* 30% (53 voters) felt that the decision was an "affirmation of the need for honesty in business practices;

* 25% (44 voters) considered the ECJ to have accorded "timely recognition of the importance of anti-dilution protection;

* 21% (37 voters) wrote the case off as "a policy ruling intended to protect the French perfume industry;

* 19% (33 voters) deemed the ruling "an inconvenience that competitors will soon work round".

The IPKat's not too sure what conclusions can safely be drawn from these figures, other than that the ruling has split opinion among the presumably well-informed readers of intellectual property weblogs authored by fictional cats. Merpel says the figures are both interesting and significant, but can't quite put her paws on the reason why. Can you help her?

On the same subject, last week the IPKat published a lively opinion piece by Swedish Advokat Mats Björkenfeldt (Hjalmar Petris Advokatbyrå HB) which suggested that the ruling of the Court of Justice of the European Communities in Case C-487/07 L'Oréal v Bellure might be contrary to Community law. Well, emboldened by his brush with media celebrity, Mats has come forward with another piece. He writes tells the IPKat, "Your poll on L'Oréal v Bellure gave me reason to think a bit, though the tropical heat in Stockholm". And this is what he thinks:

"Commercial Speech, ECHR and EU

Judge Tizzano, one of the judges in L'Oréal v Bellure, writes in Continuity and Change in EU Law, Essays in Honour of Sir Francis Jacobs, Oxford, 2008, p. 137, that the EU system of protection can be considered to be equivalent to that of the European Convention for the Protection of Human Rights and Fundamental Freedoms (ECHR). Article 10 in ECHR provides as follows:

“1. Everyone has the right to freedom of expression. This right shall include freedom to hold opinions and to receive and impart information and ideas without interference by public authority and regardless of frontiers. This Article shall not prevent States from requiring the licensing of broadcasting, television or cinema enterprises.

2. The exercise of these freedoms, since it carries with it duties and responsibilities, may be subject to such formalities, conditions, restrictions or penalties as are prescribed by law and are necessary in a democratic society, in the interests of national security, territorial integrity or public safety, for the prevention of disorder or crime, for the protection of health or morals, for the protection of the reputation or rights of others, for preventing the disclosure of information received in confidence, or for maintaining the authority and impartiality of the judiciary.”

Until recently, cases concerning commercial speech had been found not to violate Article 10. But in Krone Verlag GMBH & Co v Austria (No 3), (2004) 39 EHRR 42, the European Court concluded that the Austria´s restrictions on comparative advertising did breach Article 10. In this case Krone Verlag complained that its right to freedom of expression under Article 10 had been infringed by the Austrian courts' injunction in so far as it prohibited the comparison of sales prices of the Neue Kronenzeitung and the Salzburger Nachrichten. The Austrain court had considered, like the Austrian Government, that the interference served a legitimate aim, namely “the protection of the reputation or rights of others” within the meaning of Article 10 § 2 ECHR.

The European Court gave these reasons:

“31. For the public, advertising is a means of discovering the characteristics of services and goods offered to them. Nevertheless, it may sometimes be restricted, especially to prevent unfair competition and untruthful or misleading advertising. In some contexts, even the publication of objective, truthful advertisements might be restricted in order to ensure respect for the rights of others or owing to the special circumstances of particular business activities and professions. Any such restrictions must, however, be closely scrutinised by the Court, which must weigh the requirements of those particular features against the advertising in question; to this end, the Court must look at the impugned penalty in the light of the case as a whole…

32. Turning to the circumstances of the present case, the Court considers that the domestic courts based their decision first and foremost on the assumption that the two newspapers were not of comparable quality and that a comparison of their prices would therefore be misleading On the other hand, the courts also stated that the two newspapers were competitors in the same market and for the same circle of readers. The Court finds these two statements rather inconsistent.

33. In looking closer at the impact of the impugned injunction on the applicant company, the Court observes that no penalty was imposed. However, the measure at issue has quite far-reaching consequences as regards future advertising involving price comparison: the applicant company will also need to provide information on how its reporting style differs on matters of foreign or domestic politics, economy, culture, science, health, environmental issues and law. The Court considers the injunction to be far too broad, impairing the very essence of price comparison. Moreover, its practical implementation – although not impossible – in general appears to be highly difficult for the applicant company. Furthermore, the applicant company risks the imposition of fines for non-compliance with the injunction.

34. The Court notes that, in the instant case, the domestic courts gave priority to the protection of the reputation of the other competitor and the rights of readers against misleading advertising. However, when balancing the conflicting interests involved and taking account of the impact of the injunction on the applicant company's possibilities in future for advertising involving price comparison, the Court considers that the Austrian courts overstepped their margin of appreciation in the present case, and that the measure at issue was disproportionate and therefore not “necessary in a democratic society” within the meaning of Article 10 § 2 of the Convention.”

The ECJ´s decision in L'Oréal v Bellure has quite far-reaching consequences as regards Bellure´s et al future advertising. As Guy Tritton put it: it is very difficult to describe smell without using references e.g. “it smells like Chanel No. 5.”

Against this you may wish to ask Judge Tizzano, and the chairman in the case, the Austrian Judge Jann, if the EU system of protection really can be considered to be equivalent to that of the ECHR.”

The IPKat thanks Mats for again giving us the benefit of his thought. He's particularly keen to hear from other readers too. Do they think Mats has a point, or is this merely wishful thinking?

Patent news

The IPKat is delighted to learn that the Intellectual Property Office has now removed from its website the offensive article on regulation of trade mark and patent attorneys that was the subject of his ire last Friday (see "You want to complain" and the 23 comments appended to it). He thanks his readers for expressing themselves in so forthright a manner, congratulates the representative bodies of the UK's patent and trade mark professions for the success of their diplomatic role in all of this, and expresses his gratitude to the IPO for making what must have been an uncomfortable and difficult decision to take the article down. Now we can all give peace a chance.

The IPKat is not quite so delighted that the Court of Appeal's ruling in Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd and Daiichi Sankyo Co Ltd [2009] EWCA Civ 646 has been handed down today. It's not because he doesn't like the decision -- so far as he can see, it's spot-on -- but because he generally needs to wrap a cold wet towel around his poor little brain before reading any patent case, and on a hot day like today he can't get far before the towel is no longer cold and, once the water has evaporated, any moisture is self-generated. A note on this case will surely follow, but today.

Left: nothing to do with levafloxacin -- just a picture the IPKat conjured up from his search engine, using the terms wet + towel + head + cat

Not so cuckoo: the assimilation of marks from Madrid

The third treat from the Court of Justice of the European Union this morning was a rare occurrence -- consideration by Europe's Finest of the effects of the Madrid Protocol, in Case C‑302/08, Zino Davidoff SA v Bundesfinanzdirektion Südost. This was a reference for a preliminary ruling from the Finanzgericht München (Germany) -- not one of the regular suppliers of intellectual property questions to the Court.

Right: here's a useful guide to anyone who needs to navigate Madrid

Invoking Article 5(4) of Regulation 1383/2003 -- the Regulation that lets you get suspected counterfeits and infringements suspended from free movement within the EU till you can tell if they're genuine fakes or not -- Davidoff applied to the Oberfinanzdirektion Nürnberg (Bundesfinanzdirektion Südost) for border seizure of goods suspected of infringing 12 of its internationally registered trade marks. According to its text, Article 5(4) provides that

"Where the applicant is the right-holder of a Community trade mark …, an application may, in addition to requesting action by the customs authorities of the Member State in which it is lodged, request action by the customs authorities of one or more other Member States".

This application was dismissed on the grounds that (i) Article 5(4) of Regulation 1383/2003 concerned only ‘the right-holder of a Community trade mark’ and that that regulation was not amended by the Community legislature despite the Community’s accession to the Protocol. Davidoff appealed to the Finanazgericht München which considered that, by its very wording, Article 5(4) of Regulation 1383/2003 also applies to the right-holder of an internationally registered trade mark, since such a trade mark is treated as a Community trade mark with regard to its effects in the Community. The Finanzgericht München therefore stayed the proceedings and referred the following question to the Court for a preliminary ruling:

"In the light of the accession of the Community to the [Protocol], is Article 5(4) of Regulation [No 1383/2003] to be interpreted as meaning that, despite the use of the term “Community trademark”, marks with international registrations within the meaning of Article 146 et seq. of Regulation [No 40/94], are also covered?"

The Court ruled this morning, in answer to this question:

"Article 5(4) of Council Regulation ... 1383/2003 ... is to be interpreted as allowing the holder of an internationally registered trade mark to secure action by the customs authorities of one or more other Member States, besides that of the Member State in which it is lodged, just like the proprietor of a Community trade mark".

The reasoning of the Court in this very short judgment (just 27 paragraphs, inclusive of the relavant legal texts, the active part and the costs order) runs like this:

"23 Article 5(4) of Regulation No 1383/2003 relates specifically to a procedure for the implementation in the Community of the protection of a Community trade mark, as regards its effects.

24 According to its wording, it only allows ‘the right-holder of a Community trade mark’, in the context of an application to intervene, to secure, in addition to action by the customs authorities of the Member State in which it is lodged, action by the customs authorities of one or more other Member States.

25 However, following the assimilation into Community trade marks of internationally registered trade marks, it must necessarily be accepted that, in conformity with the Community legislature’s intention in adopting Regulation No 1992/2003, the application of Article 5(4) of Regulation No 1383/2003 may also be requested by the holder of an internationally registered trade mark".

The IPKat is cheered by this ruling which, in his opinion, is unchallengeable.

Cool Water in Madrid here

The Timeless Spanish cuckoo clocks of Cul de Sac: who owns the designs?

The second of today's European Court of Justice star attractions is Case C‑32/08, Fundación Española para la Innovación de la Artesanía (FEIA) v Cul de Sac Espacio Creativo SL, Acierta Product & Position SA, a reference for a preliminary ruling from the Juzgado de lo Mercantil n° 1 de Alicante y n° 1 de Marca Comunitaria (Spain). This reference turned on the deep and subtle meaning of Article 14(3) of the Community Design Regulation, which obviously could not have been intended to mean that

"where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the Community design shall vest in the employer, unless otherwise agreed or specified under national law".

Right: clock from Kit-cat

In short, FEIA designed a project known as ‘D’ARTES’, in which 50 skilled workshops in various sectors could produce, by means of a design project executed by a professional in the field, a family of objects to be placed on the market. The company AC&G SA (AC&G), as organiser, set the parameters of the D’ARTES project and was given responsibility for selecting the designers and concluding agreements with them. AC&G then entered into an oral agreement with Cul de Sac, which was not subject to the Spanish Labour Code, under which Cul de Sac was responsible for developing a design and providing technical assistance to a craftsman with a view to the creation by him of a new collection of products. As payment for its services, Cul de Sac received from AC&G the modest sum of EUR 1,800.

Cul de Sac designed a series of cuckoo clocks which were manufactured, in the context of the D’ARTES project, by the craftswoman Verónica Palomares, and released in April 2005 as part of the ‘Santamaría’ collection. AFter Cul de Sac and Acierta subsequently produced and placed on the market cuckoo clocks as part of the TIMELESS collection. FEIA considered that those cuckoo clocks were a copy of the unregistered Community designs which went to make up its ‘Santamaría’ collection, which it claimed to own both because of (i) its position as sponsor and main source of finance for the D’ARTES project and (ii) the assignment to it by AC&G of the exclusive rights to exploit the products produced in the first D’ARTES series. FEIA accordingly sued Cul de Sac and Acierta for (ii) infringement of its Community designs and (ii) unfair competition. Cul de Sac and Acierta disputed that AC&G and/or the FEIA ever owned those designs. Accordingly, in their view, FEIA had no standing to bring the action. The Juzgado considered that the FEIA could assert ownership only if AC&G, which purportedly assigned such ownership to it, itself owned the right to those designs. It accordingly stayed the proceedings and referred the following questions to the Court for a preliminary ruling:

"(1) Must Article 14(3) of Regulation No 6/2002 be interpreted as referring only to Community designs developed in the context of an employment relationship where the designer is bound by a contract governed by employment law whose provisions are such that the designer works under the direction and in the employ of another? or

(2) Must the terms “employee” and “employer” in Article 14(3) of Regulation No 6/2002 be interpreted broadly so as to include situations other than employment relationships, such as a relationship where, in accordance with a civil/commercial contract (and therefore one which does not provide that an individual habitually works under the direction and in the employ of another), an individual (designer) undertakes to execute a design for another individual for a settled price and, as a result, it is understood that the design belongs to the person who commissioned it, unless the contract stipulates otherwise?

(3) In the event that the answer to the second question is in the negative, on the ground that the production of designs within an employment relationship and the production of designs within a non-employment relationship constitute different factual situations:

(a) Is it necessary to apply the general rule in Article 14(1) of Regulation No 6/2002 and, consequently, must the designs be construed as belonging to the designer, unless the parties stipulate otherwise in the contract? or

(b) Must the Community design court rely on national law governing designs in accordance with Article 88(2) of Regulation No 6/2002?

(4) In the event that national law is to be relied on, is it possible to apply national law where it places on an equal footing (as Spanish law does) designs produced in the context of an employment relationship (the designs belong to the employer, unless it has been agreed otherwise) and designs produced as a result of a commission (the designs belong to the party who commissioned them, unless it has been agreed otherwise)?

(5) In the event that the answer to the fourth question is in the affirmative, would such a solution (the designs belong to the party who commissioned them, unless it has been agreed otherwise) conflict with the negative answer to the second question?".

This morning the Court ruled simply as follows:

"1. Article 14(3) of Council Regulation ... 6/2002 of 12 December 2001 ... does not apply to Community designs that have been produced as a result of a commission.

2. In circumstances such as those of the main proceedings, Article 14(1) of Regulation No 6/2002 must be interpreted as meaning that the right to the Community design vests in the designer, unless it has been assigned by way of contract to his successor in title".

The IPKat, with his impeccable common law background, can't see how the court could ever have reached the opposite conclusion and wonders why the referring court was persuaded to ask all those questions in the first place. Merpel says, I think the court did very well, considering that they didn't have the benefit of an English translation of the Advocate General's Opinion to guide them. Tufty says, within a few years there will probably be a provision of EU law that limits the design and manufacture of cuckoo clocks to certain parts of Germany and possibly Switzerland, protecting "cuckoo clock" as a PAMT (Protected Appellation for Mechanical Trivia).

More on cuckoo clocks here

Build your own cuckoo clock here

Dutch can keep Bavaria in Italy, says Luxembourg

The big news of the day is that the Court of Justice of the European Communities has just given its decision in Case C‑343/07, Bavaria NV and Bavaria Italia Srl v Bayerischer Brauerbund eV, a reference for a preliminary ruling from the Corte d’appello di Torino (Italy).

Bayerischer Brauerbund (BB), a German association, has since 1917 had the objective of protecting the common interests of Bavarian brewers and has owned the registered collective trade marks Bayrisch Bier and Bayerisches Bier since 1968. Bavaria, is a Dutch commercial brewer which began to use the word ‘Bavaria’ in 1925. Bavaria owns several trade marks and figurative elements containing the word BAVARIA. The company's Italian subsidiary is Bavaria Italia (BI). The term ‘Bayerisches Bier’ has been covered by bilateral agreements on the protection of geographical indications, appellations of origin and other geographic names between Germany and France, Italy, Greece, Switzerland and Spain.

In 1993 BB submitted to the German Government an application for registration of ‘Bayerisches Bier’ as a protected geographical indication (PGI) under Regulation 2081/92's ‘simplified’ procedure. The German Government then informed the European Commission, which regarded the application as well-founded and submitted a draft regulation seeking the registration of ‘Bayerisches Bier’ as a PGI. After some disagreement the Council adopted Regulation 1347/2001 which registers ‘Bayerisches Bier’ as a PGI. Neither Bavaria anor BI brought any action against Regulation 1347/2001.

Subsequently, following similar proceedings in other Member States, BB tried to stop Bavaria and BI from using their Italian trade mark for BAVARIA, seeking an interlocutory ruling declaring those marks invalid or revoking them, on the ground that they conflicted with the PGI ‘Bayerisches Bier’ or, in any event, because they contained a geographical indication which was generic and misleading, as the beer was Dutch. The Tribunale di Torino allowed this application in part; Bavaria and Bavaria Italia appealed to the Corte d’appello de Torino (Appeal Court, Turin), which stayed the proceedings and referred the following questions to the Court for a preliminary ruling:

"(1) Is Council Regulation ... 1347/2001 … invalid, possibly as a consequence of the invalidity of other acts, in light of the following:

Breach of general principles

– the invalidity of Article 1(1) of Regulation ... 2081/1992, read in conjunction with Annex I thereto, in so far as it permits the registration of geographical indications relating to “beer”, which is an alcoholic beverage listed (wrongly) in that Annex as one of the “foodstuffs” referred to in Article 1(1), but which is not one of the “agricultural products” listed in Annex I to the EC Treaty and referred to in Article 32 (formerly Article 38) and Article 37 (formerly Article 43) thereof, which the Council took as the legal basis for its competence to adopt Regulation ... 2081/1992;

– the invalidity of Article 17 of Regulation ... 2081/1992 in so far as it provides for an accelerated registration procedure under which the rights of interested parties are substantially limited and impaired, in so far as it makes no provision for a right of opposition, in clear breach of the principles of transparency and legal certainty, as is evident in particular from the complexity of the procedure for registering “Bayerisches Bier”, the [PGI] at issue, which took more than seven years from 1994 to 2001, and from the express acknowledgment to that effect in recital 13 in the preamble to Regulation ... 692/2003, Article 15 of which repealed – for those reasons – Article 17 of Regulation ... 2081/1992;

Failure to comply with procedural requirements

– the failure of the indication “Bayerisches Bier” to satisfy the conditions laid down in Article 17 of Regulation 2081/1992 for eligibility for registration in accordance with the simplified procedure provided for therein, in that, at the time when the application for registration was submitted, that indication was not a “legally protected name” in Germany, nor had it been “established by usage” there;

– the fact that the question whether the preconditions had been met for registration of the indication “Bayerisches Bier” was not given due consideration either by the German Government before submitting the application or by the Commission itself after receiving that application, contrary to the requirements established by the case-law of the Court of Justice (Case C‑269/99 Carl Kühne and Others [2001] ECR I‑9517);

– the fact that the application for registration of the indication “Bayerisches Bier” was not submitted in good time by the German Government in accordance with Article 17(1) of Regulation 2081/92 (six months after the date of entry into force of the Regulation, which took place on 24 July 1993), it being also the case that the subject-matter of the application initially submitted by the applicant company envisaged eight varying indications – with a reservation as to the possibility of later variations of an unspecified nature – which did not coalesce to form the current single indication “Bayerisches Bier” until well after the deadline on 24 January 1994;

Failure to comply with substantive requirements

– failure of the indication “Bayerisches Bier” to satisfy the substantive requirements laid down in Article 2(2)(b) of Regulation 2081/1992 for registration as a [PGI], given the generic nature of that indication, which has historically designated beer produced in accordance with a particular method of production which originated during the nineteenth century in Bavaria, whence it spread throughout Europe and the rest of the world (the method known as “the Bavarian method”, based on bottom-fermentation), and which even today in a number of European languages (Danish, Swedish, Finnish) is used as a generic term for beer and which, in any case, can at most identify, solely and generically, from among the numerous varieties of beer in existence any type of “beer produced in the German Land of Bavaria”, there being no “direct link” (Case C‑312/98 Warsteiner Brauerei [2000] ECR I‑9187) between a specific quality, reputation or other characteristic of the product (beer) and its specific geographical origin (Bavaria), nor evidence that this is one of the “exceptional cases” required under Article 2(2)(b) of Regulation ... 2081/1992 in order for it to be permissible to register a geographical indication containing the name of a country;

– the fact that, as emerges from the preceding paragraph, the indication “Bayerisches Bier” is a “generic” indication, and as such ineligible for registration pursuant to Articles 3(1) and 17(2) of Regulation ... 2081/1992;

– the fact that registration of the indication “Bayerisches Bier” should have been refused pursuant to Article 14(3) of Regulation ... 2081/1992, since, in the light of the “reputation and renown” of the Bavaria marks and “the length of time [they have] been used”, registration was “liable to mislead the consumer as to the true identity of the product”?

(2) In the alternative, if Question [1] is held inadmissible or unfounded, should … Regulation 1347/2001 … be construed as meaning that recognition of the [PGI] “Bayerisches Bier” is to have no adverse effects on the validity or usability of pre-existing marks of third parties in which the word “Bavaria” appears"

The Court this morning ruled as follows:

"1. Consideration of the first question asked by the referring court has not disclosed any factor liable to affect the validity of Council Regulation ... 1347/2001 ...

2. Regulation 1347/2001 must be interpreted as having no adverse effects on the validity and the possibility of using, in one of the situations referred to in Article 13 of Council Regulation ... 2081/92 ..., pre-existing trade marks of third parties in which the word ‘Bavaria’ appears and which were registered in good faith before the date on which the application for registration of the protected geographical indication ‘Bayerisches Bier’ was lodged, provided that those marks are not affected by the grounds for invalidity or revocation as provided for by Article 3(1)(c) and (g) and Article 12(2)(b) of First Council Directive 89/104 ... to approximate the laws of the Member States relating to trade marks".

The IPKat isn't surprised at the fate of Question 1, remembering the Court's position in Case C-465/02 Germany v Commission on the failed challenge to the law that clawed the generic term FETA back into Greek hands. He's relieved to see, too, that the investment of many decades in the BAVARIA brand will not have been wasted if BB can't show bad faith in registration.

Bavarian beer here

Oktoberfest here

Effect of beer on cats here

Wednesday bits and pieces

It may be crowded at Wimbledon's Centre Court later today, but there's still room for a few more bodies at the Intellectual Property Institute's seminar this afternoon. Dr Patricia Akester speaks on "The Impact of DRM on Access to Exceptions: The First Empirical Assessment" and IPKat team member Jeremy is in the chair. More information about the seminar here. Booking details here.


This is going to be a serious read. Telecommentator -- the recently-founded weblog of the IPKat's friend, author, communications regulation and transaction lawyer Colin Long -- is not for the faint-hearted. So if your IP interests take you in the direction of telecoms infrastructure, spectrum usage, superfast broadband et al, you may just want to keep an eye on it.


As a British author of some antiquity, many of whose books are now no longer available and who has generated a lengthy list of publications in periodicals, this member of the IPKat team is becoming increasingly perplexed about what precisely the proposed Google Book settlement might mean to him personally [on the proposed settlement see the IPKat here; 1709 Blog, citing Ron Kunstadt, here]. Knowing that many readers of this blog are in much the same position, he guesses that he can't be alone. If enough readers -- and even their publishers -- would like to get together with him during the summer to discuss the legal and commercial dimensions, can they please email him here with the subject heading 'Google Book'. If there's enough interest, we can get together for a drink and a chat.

File sharing site RapidShare vs GEMA

The IPKat last week reported on a decision of the Regional Court of Hamburg in which the court fined the file sharing site RapidShare AG 24 million Euro for copyright infringement in respect of 5,000 tracks which had been shared through the site.


The Hamburg court had taken the view that it was the legal "duty" of the hosting service (not the copyright owners) to ensure that no copyright infringement was taking place via the site. In its decision, the court apparently referred to a statement by GEMA, the German performance rights association, which had claimed that the necessary 'scanning' software (which can detect copyright infringing material) was already available.

RapidShare has now issued a press release in which it announces that it will appeal the Hamburg court's decision and if necessary (and/or possible) take this matter to the German Federal Supreme Court and the ECJ. RapidShare disagrees with the court's and GEMA's view and seriously questions how a file sharing site can practically fulfil its legal "duty" to monitor its site for potentially infringing content, particularly when it comes to monitoring hidden data files, checking links and content on an internet forum. Furthermore, RapidShare claims that GEMA did not allow RapidShare to test the scanning software.


The cat on the right attempts to scan the IPKat for infringing content. Image taken from www.catster.com

An interesting case, with potentially far reaching consequences.