For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Monday, 31 August 2009

Letter from AmeriKat: Part II (copyright and trade marks)

Can copyright save the newspaper industry?

Ever since reading Landes and Posner’s 2002 article “Indefinitely Renewable Copyright”, the AmeriKat has been sympathetic to Posner’s rationale that the strength and duration of copyright protection should be viewed in accordance with its effect on economic/market theory (generally speaking, of course).

Thus, when Posner wrote about using copyright as a mechanism for aiding the declining newspaper industry, her ears perked up. This June -- Posner, who is also a judge on the United States Court of Appeals for the Seventh Circuit in Chicago -- wrote about an idea to expand copyright to protect newspaper’s online content that is currently freely available. Posner argues that the economic downturn has irreversibly affected consumer behaviour by resulting in “online viewing rising as print circulation is falling” which indicates “a shift of consumers from the paid to the free medium.” The AmeriKat does not believe it is accurate to cite just the economic downturn, without citing the technology (speed, ease of access, etc.) of the internet as also contributing to this shift.


Posner stated that online news is free because “the marginal cost of providing content online is virtually zero, since it is the same content in a different medium” and because “online providers of news who are not affiliated with the newspaper can provide links to newspaper websites and paraphrase articles in newspapers” which does not require compensation to the newspaper. Posner argues that if newspaper revenues continue to decline, their physical and digital content will in turn become smaller which will also result in reduced content for non-affiliate websites that link to that newspaper’s content. Posner suggests that
“Expanding copyright law to bar online access to copyrighted materials without the copyright holder’s consent, or to bar linking to or paraphrasing copyrighted materials without the copyright holder’s consent, might be necessary to keep free riding on content financed by online newspapers from so impairing the incentive to create costly news-gathering operations that news services like Reuters and the Associated Press would become the only professional, nongovernmental sources of news and opinion.”
The AmeriKat duly declares her interest in this debate and is therefore conflicted with Posner’s approach. On on hand she would like the newspaper industry to be protected from blatant “free-riding” by online websites. Newspapers are, as the Press Clause and ECHR jurisprudence state, a pillar of a democratic society and although there is an availability of respected online sources, she personally does not believe that an anonymous blog posting or website can ever really replace the authenticity and legitimacy of information published under a known and respected newspaper title. Is it perhaps plausible, that in the same way that the press has specific protection and responsibilities in reporting in terms of defamation/privacy law, the law should also afford the printed press specific protection in terms of copyright law? If so, lobbying, such as in the case for the expansion of duration of sound recordings, may be a tactic the newspaper industry should attempt.

But on the other hand, the AmeriKat is unsure whether copyright law is the appropriate vehicle for this protection. Following Posner’s suggestion into practice, any time she or one of her fellow IPKats posted a hyperlink, permission from the copyright proprietor would have to be obtained. However, copyright law has fair-use defences (or in the UK fair-dealing exceptions/limitations) which would be successfully invoked in these scenarios of hyper-linking and paraphrasing news reports. The AmeriKat does not believe, that under the fourth factor of the fair-use test, a newspaper could actually prove that hyper-linking to their content affects the potential market value of the work. Surely Posner’s suggestion in protecting the print media by copyright would in fact have the effect as acting as an improper prior restraint in chilling freedom of expression and would therefore violate the Copyright Clause in ‘promot[ing] the Progress of Science and useful Arts.” In any event, the AmeriKat argues that the current application of section 230 CDA in the U.S. would most likely bar any effective remedy that the newspapers could achieve for such a so-called “copyright infringement” (see AmeriKat’s post here).

The AmeriKat is conflicted regarding copyright’s role in protecting the newspaper industry, but is interested to hear any views regarding this debate.


Trade mark for ‘Twitter’ but not for ‘Tweet’

As of the beginning of August, the USTPO preliminarily rejected Twitter Inc.’s application to register as a trade mark the name “Tweet” in connection with their online services, citing the existence of earlier trade mark applications for TweetMarks, Cotweet and Tweetphoto. Prior to the USTPO’s decision, Twitter’s official blog stated that “in fact, we encourage the use of the word Tweet. However, if we come across a confusing or damaging project, the recourse to act responsibly to protect both users and our brand is important.” The USTPO has now to consider the earlier registrations before a final decision can be made regarding Twitter’s application. For more on this story, please see CNET’s article here.



Sunday, 30 August 2009

Letter from AmeriKat: Part 1 (patents)

Matt Power’s l’esprit de l’escalier

The Amerikat’s week probably has been just like yours; everything the usual lawyer’s week entails including conferences with barristers, drafting letters, and finding the “un-findable” piece of evidence. However, for some reason, in all her verbal exchanges with all the usual suspects she was unable to respond with a characteristic witty retort or pointed response. Instead, she just smiled. It was, as the French say, a case of l’esprit de l’escalier … toute la semaine. Unfortunately, because life does not usually give you a second chance to respond to a comment or word in an elegant fashion you, like the AmeriKat is now, are doomed to replay scenarios in your head dreaming of what you should have said. But law, thankfully, permits l’esprit to crystallize in a full-bodied response by way of an appeal.


Right: George Rousse's L'Esprit d'Escalier

Matthew Powers, Microsoft’s trial attorney in the i4i case, had his opportunity to be rid of his espirit this week when he filed the appeal brief on Wednesday in the U.S. Court of Appeals. Two weeks ago, the AmeriKat wrote about the decision of Judge Davis who increased i4i’s award of damages for patent infringement by $40 million due in part to Powers’s comments that were “improperly trying to equate i4i's infringement case with the current national banking crisis implying that i4i was a banker seeking a ‘bailout’” in order to appeal to "the jurors' perceived prejudices" by misstating the law. Judge Davis warned Powers to “clean up” his language but, when Powers failed to do so, Judge Davis slammed Powers and Microsoft with a $40 million enhanced damages finding.

The brief’s Preliminary Statement opened up with the following damning paragraph:
“In patent cases, even more than most, the trial judge’s role as a gatekeeper is crucial. As gatekeeper, the judge must define the metes and bounds of a patent through claim construction and then ensure that the evidence presented by the parties’ numerous experts is both reliable and rooted in the facts of the case at hand. And after the jury has rendered its verdict, it is the judge who, before allowing that verdict to become an enforceable judgment, must ensure that the verdict is adequately supported by the evidence and supportable under the law. This gatekeeping function is especially important in patent cases because of the delicate balance struck by patent law to achieve its objective of promoting, rather than stifling, innovation. That balance can be lost if the district court does not protect the process, and patent litigation then becomes a tax on innovation rather than its guardian.

This case stands as a stark example of what can happen in a patent case when a judge abdicates those gatekeeping functions.” [“Miaow!”, says the AmeriKat]
Powers then continued by outlining the ways in which Judge Davis abdicated his ‘gatekeeping function’. First, Microsoft’s argument that i4i’s patent was invalid because the invention had been “implemented” and sold before the critical date of the patent was countered only by i4i’s inventor’s “self-interested” testimony that he had lied about the pre-sale invention date. i4i argued that in fact the invention came after this pre-sale to i4i’s investors and since the inventor had destroyed all the source code, Microsoft would not be able to prove otherwise. The brief stated that this uncorroborated testimony was “insufficient” to counter Microsoft’s invalidity claim or to establish that i4i’s invention was at the priority date and not before. The judge erred, therefore, in sending the question to the jury.

Second in line for attack was the formulation of the damages award as supported by i4i’s survey evidence. The brief stated that “the district court had abandoned even the semblance of gatekeeping” by allowing the survey evidence that 19 of 46 individual Microsoft Word users used the product in a similar infringing manner to be extrapolated to prove that 1.85 million Word users infringed i4i’s patent, which was in turn increased to 2.1 million six months before trial. When Microsoft countered this evidence at trial, the court responded by denying Microsoft’s motions because they had not presented any evidence that supported their argument that the survey methods were unreasonable or unreliable, nor had they presented these arguments at the time the survey and testimony were introduced. The brief argued that the “district court offered the clearly erroneous response that fundamental admissibility considerations such as whether the results were manipulated went only to the weight of the evidence” and not assumingly, the admissibility. “If this survey passes muster”, stated the brief, “there are no limits to what ‘evidence’ can be presented to lead juries astray, and patent law suffers.” The brief also stated that the district court failed to give any guidance to the jury regarding instances when a reasonable royalty may be “unreasonable.” Thus, without the appropriate guidance from the court, the “jury awarded the plaintiffs exactly what they asked for: a finding of willful infringement and an award of $200,000,000.”

Finally, at page 55 of his judgment, Judge Davis had held that none of the three factors in Soverain Software LLC v Amazon.com, Inc. pointed to a stay of proceedings pending reexamination by the USTPO of i4i’s patent. The brief however argued that the district court was wrong in this approach and should have intervened to “prevent a miscarriage of justice” which would have been appropriate, given that at the time of the post-trial motions the USPTO had provisionally invalidated i4i’s patent following re-examination of key prior art presented at trial.

The closing of the Preliminary Statement stated that:
“[t]his is not justice. If district courts are free to admit theories of infringement that nullify a patent’s claim terms, specification, prosecution history, and title; if they will allow an inventor to validate his patent by testifying without corroboration that he lied about the date of conception; if they will not intercede to preclude manifestly unreliable—indeed, concededly manipulated—surveys of infringing use, or Georgia-Pacific analyses based on “benchmarks” bearing no rational relationship to the accused product, then patent litigation will be reduced to a free-for-all, unbounded by the requirements of the substantive law or the rules of evidence or trial procedure. While that mode of dispute resolution might enrich some plaintiffs and their investors, it hardly can be said to “promote the Progress of Science and the useful Arts.”
The claws continued to be out for the next 90 some pages. In responding to Judge Davis’s award of enhanced damages, the brief stated at page 91 that the district court erred in holding that Powers’s conduct “favour[ed] enhancement.” In support of this argument, the brief cited Read Corp. v Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992), a federal court case which stated that “attorney…misconduct during litigation” is “not sufficient for an increased damages award under section 284” because it “say[s] nothing about the culpability of the infringer.” Additionally, it was argued that because Microsoft’s so-called “improper arguments” were not objected to by i4i’s counsel because “in light of i4i’s claim for $200,000,000 in damages and the belated request for injunctive relief” it indicated that i4i’s litigation had in fact been brought to achieve liquidity. In short, nothing true can be “improper.” Powers et al then criticized i4i’s counsel from McKool Smith, by arguing that, had an objection to Microsoft’s banker analogy been sustained and an “ordinary application of the goose-gander rule” been applied, then the Court should have likewise prohibited i4i from referring to Microsoft as “by far the biggest software company in the world” and informing the jury of the irrelevant fact that “$200 million represents a tiny fraction of Microsoft’s profits.” The brief stated that if the damages award was affirmed by the Court of Appeals, it would have the effect of forcing “alleged infringers to choose between rebutting the patentee’s case and risking an award of enhanced damages.”

As reported by the Wall Street Journal, i4i’s chairman, Loudon Owen called Microsoft’s brief an "extraordinary document" that "captures the hostile attitude of Microsoft toward inventors who dare to enforce patents against them." But with friends like Dell and Hewlett-Packard each filing amicus curiae briefs in support of Microsoft’s motion to stay the injunction, i4i is looking to have to fight more software and computer giants than just Microsoft. The AmeriKat predicts that with the addition of Dell and Hewlett-Packard’s briefs and in applying the third and fourth factors in the test for an injunction as set out in eBay Inc v MercExchange she would be surprised if the Court of Appeals does not lift or in someway amend the injunction given the far-reaching effect on third parties like Dell and HP.

After the Court of Appeals granted an expedited hearing, the hearing is now scheduled for 23 September 2009.

Friday, 28 August 2009

The IPKat is under attack - from Google

Many of those wanting to read the IPKat over the last day or two will have seen the warning above. Don't panic - the IPKat has not turned into a malicious feline hacker distributing malware to his trusting readers. Instead, this seems to be a result of Google being a little overzealous in rooting through the IPKat's old posts (all the way back to 2005), and turning up a link (now removed) in one of them to a site that may (or may not) be an intermediary to another site that may (or may not) be hosting malware. The chances of being infected by viewing any of the IPKat's pages are therefore pretty remote.

The IPKat is doing all he reasonably can to rectify the situation, and hopes that things will be back to normal shortly. In the meantime, other means of reading the blog by feed and email should work just fine.

Friday fanfare

Can it really be Friday again, time to check that lengthening list of exciting events? The IPKat's sidebar is burgeoning with goodies. London, Brussels, Brighton, Geneva, Pavia, Paris, Brno, Buenos Aires, Montreux, Sandton: wherever you are, you're never more than a couple of metres away from a group of networking IP-ers ...


Have you signed Dids Macdonald's Downing Street petitions for meaningful punishments and civil relief against design pirates? If not, click here for the background and for links to the petitions [note: you do have to be a British citizen or resident -- but there is no apparent age restriction and you don't have to be sane either].


If you feel in the mood to exercise some aesthetic judgment, patent litigation weblog PatLit is running a poll of its own. There's nothing more serious at stake than the choice of a new logo. If you'd like to take a peep and then cast your vote, the candidate logos are here and the poll can be found in the top right-hand bit of that weblog's sidebar. Though there are six 'possibles' to pick from, it's a bit of a three-horse race at this early stage. The poll closes at one minute past midnight on Tuesday 7 September (BST).


Film of the week? The IP connection isn't immediately apparent from the 56-second YouTube video made for IP recuitment agency Fellows and Associates. The story -- and the link to a most unfortunate goose -- can be found here on the SOLO IP blog.



A couple of plugs for upcoming events: both of which are organised by CLT, are being held in Central London and have a generous two-for-the-price-of-one offer for registrants. First, on 22 September 2009 there's "Handbags at Dawn", the 4th Annual Conference on intellectual property and fashion, sponsored by Fashionista at Law. Details of this event can be found here and IPKat team member Jeremy will be in the chair. Then on 10 November 2009 there's "Protecting Brands Online", chaired by the IPKat's friend and respected colleague Shireen Smith and a revisiting of the issues tackled in Shireen's very popular conference last year. Full details are available here.


IP Bulgaria magazine has issued a call for materials and presentations. Says editorial board member Ivan Ivanov:
"Our aim is to present the Bulgarian IP public with more colleagues from all over the world and with contemporary questions for discussions. If you have material which you like to be publish, please feel free to send it in English with a picture and short presentation of the author. We will be responsible for the translation from English to Bulgarian, but unfortunately cannot undertake the obligation to pay any author's fees".
If this opportunity appeals to you, please email Ivan here and tell him the IPKat mentioned him.


And finally, the legendary Bob Sacoff has thoughtfully suggested something for the Kat's readership to ponder over. He writes:
"This may be beyond your brief, as it is not a case or legislative development, but it's such an interesting site I thought you would like to see it. In the U.S., the design of "useful articles" is not copyrightable, and as I'm sure you know, the seminal case on "separability" is Mazer v. Stein, 347 US 201 (1954). Against that background, check out Things That Look Like Other Things".
Thanks, Bob!

Getting in a flap over copyright envelopes

A most concerned reader of this august weblog (indeed, it will be august for just a few more days, still September kicks in) raises a most interesting issue:

"I was interested to note in the most recent IP Insight mailout from the IPO [for non-UK readers, that's what we used to call the Patent Office] the following advice on protection of copyright:

"Additionally, a creator could send himself or herself a copy by special delivery post (which gives a clear date stamp on the envelope), leaving the envelope unopened on its return (ensuring you also know what is inside each envelope in case you do this more than once)... It is important to note, that this does not prove that a work is original or created by you. But it may be useful to be able to show the court that the work was in your possession at a particular date".
I am surprised that the IPO are advising this course of action since I believed that it was generally accepted that this is a waste of a stamp and would get nowhere in a sensible court. All that it demonstrates is that an individual sent themselves an envelope at a particular date. That envelope could have been empty and unsealed and a document added later, or could have contained a document, the flap closed by a couple of paper clips and the document replaced by another and subsequently sealed at a later date.
I'd be interested to know if the Kats or anyone has any experience of the "sealed envelope" argument being used in court, successfully or unsuccessfully?"
The IPKat has no experience of copyright enveloppage in court. He does however have a cupboard-full of similar envelopes, personally handed to him over the years by friends who were worried that they couldn't register their copyright in the UK and wanted proof of authorship. He agrees with his correspondent that they are not per se cogent from an evidential point of view (though at a pinch he could give evidence that he was familiar with the concents of each envelope when he received it). However, self-addressed and securely deposited envelopes are a wonderful cure for the sort of insomnia that is generated by the fear that no-one will ever know when the author had indeed created a work.

Merpel says, this could be a great business for the postal service to develop: a special surcharge for legible date-stamping. She adds, this sort of thing may be more use to a defendant, in showing that an alleged infringing work existed earlier in time than the claimant's work, than to the claimant in infringement proceedings.

As usual, readers' thoughts are welcomed.

Pushing the envelope here
The UK Copyright Service, which pours scorn on "poor man's copyright", here (Does anyone know who these people are? This website gives the impression of being somehow official ... )

Veggies sprout, claims shock report on crop diversity

The IPKat's scholarly friend Paul J. Heald (Allen Post Professor of Law, University of Georgia, Visiting Professor, Oxford University 2009) has been busily writing up his study with Susannah Chapman on changes in crop diversity in the 20th century. As Paul puts it, this topic is "so hot it's incendiary!" In short, writes Paul:

"According to the conventional wisdom, the twentieth century was a disaster of monumental proportions for vegetable crop diversity. The conventional wisdom is wrong. Our study of 2004 commercial seed catalogs shows twice as many 1903 crop varieties surviving as previously reported in the iconic 1983 study on vegetable crop diversity. More important, we find that growers in 2004 had as many varieties to choose from (approximately 7,100 varieties among 48 crops) as did their predecessors in 1903 (approximately 7,262 varieties among the same 48 crops). In addition, we cast doubt on the number of distinct varieties actually available in 1903 by examining historical sources that expose the systematic practice of multiple naming. Finally, by looking more closely at the six biggest diversity winners of the twentieth century (tomatoes, peppers, lettuce, garden beans, squash, and garlic), we suggest that patent law is virtually irrelevant".
You can read all about "Crop Diversity Report Card for the Twentieth Century: Diversity Bust or Diversity Boom?" on SSRN here

For those who can stomach the truth, this looks like a compelling read, says the IPKat, who is increasingly saddened by the stultifying force of conventional wisdom upon academic thinking and writing in the field of IP. Merpel's not so impressed: so much name-dropping of distinct varieties, she wails, and not a decent recipe to be found ...

Crop diversity here
Biodiversity here
Cat diversity here

Thursday, 27 August 2009

Choc shock as ex-child wins face-off action

Following the earlier saga of Russell Christoff's claim against Nestlé USA for wrongful face-lift, here's another face case, this time from Israel. This information comes from Monday's issue of Israel Today.

The story, loosely translated from the original Hebrew and rotated from right-to-left for ease of reading, involves one Roi Kroyotoro, who maintained that his image had been displayed on jars of Chocolit cocoa powder, a product by the Strauss Group, for the past decade. "Everyone Calls Me Cocoa", he complained. The Strauss Group has now been forced to cease using his image, following an order by Jerusalem District Court Judge Josef Shapiro. Strauss has been given three months in which to dispose of existing stock.

Kroyotoro, who is now a soldier, was photographed for Chocolit's purposes a decade earlier, when he was a minor. His parents received a one-time payment of 3,520 New Shekels [about 650 Euros at today's rate] from Elite, with which Strauss subsequently merged. There was no written contact. After his request for removal of the portrait was refused, Kroyotoro sued for 5 million Shekels [about 920,000 Euros at today's rate]. Straus claimed that Kroyotoro sold the right to use his image in perpetuity. The judge disagreed: the use of the image was granted for a reasonable time only, and that time had clearly passed.


The IPKat would like to know a bit more about the cause of action and the defence(s) raised. Can anyone enlighten him?

Chocolit factory here
Face/Off here
Strauss's Chocolate Soldier here and here

"Wake up and smell the damages ..."

Some people have all the luck -- or do they? Consider professional model Russell Christoff, for example. In 1986 Christoff was paid $250 to pose for a photograph which was to be used in Canada on a label for bricks of coffee. Sixteen years later Christoff, now a good deal older, saw his earlier face smiling out at him from a jar of Nestlé's Taster's Choice instant coffee in the US. Further enquiry revealed that his image had been used -- without his consent -- on millions of labels sold internationally for the preceding five years. Christoff sued in a California court for appropriation of his likeness. This action was commenced six years after Nestlé USA began using his image on the Taster's Choice label, but less than a year after he found out.

At this point things started getting procedural. The trial court applied a two-year statute of limitations and told the jury to decide under the discovery rule whether Christoff knew, or should have known earlier, that Nestlé used his image. No problem, said the jury, awarding him more than $15 million in damages. The Court of Appeal reversed this decision. According to that court, under the single-publication rule, since Christoff had not filed his lawsuit within two years after Nestlé first “published” the label (i.e. two years after six years ago = four years ago), his cause of action was limitation-barred unless, on remand, either (i) Nestlé was shown to have hindered Christoff‟s discovery of the use of his photograph, or (ii) the label had been republished following its initial publication.

Granting review, the Supreme Court of California agreed with the Court of Appeal that the trial court was wrong to rule that the single-publication rule did not apply to claims for appropriation of likeness.


Left: grounds for appeal ...

However, the Court of Appeal was wrong to conclude that this meant that Christoff's action was necessarily statute-barred unless he could show that Nestlé had hindered his discovery of the use of his photograph, or that the label had been republished. That ruling presupposed that Nestlé's various uses of Christoff's likeness necessarily constituted a “single publication” within the meaning of the single-publication rule. Since the parties were prevented by the trial court's erroneous legal ruling from developing a record concerning whether the single-publication rule applied, the Supreme Court remanded the case for further proceedings.

Right: This is not the first time Nestlé has pulled a stunt like this. The IPKat rages at finding his likeness on a packet of roasted pieces ...

The IPKat wonders whether the $15 million award would pass the sort of 'proportionality' test with judicial relief in Europe is supposed to conform. Merpel says, I think the damages award consists of $250 for the infringement; the rest is for the pain of having to litigate against seasoned courtniks like Nestlé.

Another new USPTO test

Following the news that the USPTO has issued interim guidance to its examiners regarding the Bilski "Machine-or-Transformation" test (see here), the IPKat can now exclusively reveal that the USPTO have just issued further instructions to all examiners. The instructions take the form of another flowchart, reproduced below (click on the chart for a larger view).

The IPKat thinks that there might be a slight flaw in the guidance, but can't quite work out what it is. Perhaps it has something to do with cats not taking baths.

Merpel thinks that the metaphor might have been stretched beyond breaking point.

Wednesday, 26 August 2009

Further nonsense at the USPTO

The following should be borne in mind before reading the rest of this post:

"The state of the law with respect to subject matter eligibility is in flux. The following interim instructions are for examination guidance pending a final decision from the Supreme Court in Bilski v. Kappos. These examination instructions do not constitute substantive rulemaking and hence do not have the force and effect of law. Rejections will be based upon the substantive law, and it is these rejections that are appealable. Consequently, any perceived failure by Office personnel to follow these instructions is neither appealable nor petitionable."
The IPKat can now announce that the USPTO, under its new ex-IBM boss David Kappos, has formulated a new set of guidelines (available from Patently-O) on how to deal with patentable subject matter, even though Bilski remains to be finally decided by the Supreme Court. More than this the IPKat is reluctant to say for now as his fur is bristling too much, but he finds it difficult to see how the new guidance, with its ridiculous (and strangely ironic) playschool-type flowcharts, will help in the meantime.

Thanks also to Stéphane Ambrosini for prodding the IPKat in action.

Shhh ... it's a secret, as spicy burgers go to court

Thanks are due to the IPKat's friend Gemma O'Farrell for sending him this item from the Irish Times, entitled "Legal row over recipe for spice burger". According to this article,

"The makers of the spice burger have secured a number of [interim] High Court injunctions against a former director who it is claimed has been passing off burgers made by him as their product.

Walsh Family Foods Limited have sought the orders against one of its former directors Patrick Walsh, .. the son of the person credited with inventing popular chipper staple [the IPKat is unfamiliar with this term, which has no corresponding Wikipedia entry. An internet search revealed just 47 'hits', so it may be an obscure Irish term of art ...], and is one of the few people who knows the burger's secret recipe. ...

The injunctions restrain Mr Walsh from destroying any information or interfering with any of the companies property, in particular any documentation sent by the suppliers of ingredients for the spice burger. ...

The orders also restrain Mr Walsh deleting or destroying any confidential information that relate to any scope of the company’s business acquired by Mr Walsh during his employment with or in his capacity as a director of the company. ...

Mr Walsh, counsel said, sells the burgers as “Paddy Walsh Spice Burgers,” and the “Original Spice Burger Company”.

Those actions, counsel claimed, are in breach of the provisions of his contract of employment, which prevents him from revealing any trade secrets to any group or company. ...

[Evidence was given] that the spice burgers being made by Mr Walsh look indistinguishable from those made by the company [The Kat wonders whether this was on the basis of the ECJ's beloved "global appreciation" basis, or was there a burger-for-burger comparison of individual characteristics. Merpel wonders whether, strictly speaking, the burger is just the bit in the middle, the bun being merely an outer casing] [but] that Mr Walsh had re-introduced MSG into the product to give it a slightly stronger flavour"".

Speculation is rife as to whether counsel for the parties belong to the Burger Bar ...
Wikipedia on burgers here
Spice burger recipes with video here
Kangaroo burger here
Warren Burger here

Tuesday, 25 August 2009

Government U-turn on downloaders; parallel imports blames for pharma shortages


Government revives downloader cut-off proposal

The IPKat has learned from the BBC that the Department for Business Innovation and Skills is to consult on whether the forthcoming Digital Economy Bill should include a requirement that ISPs cut off persistent downloaders. Although Lord Carter's Digital Britain report recommended that Ofcom should explore the issue thoroughly before such a measure was taken, this would take until 2012. The Government feels that this the threats posed by online infringement could mean that this would be too long to wait. To take account of the change in position, the Digital Britain consulation period has been extended to 29 September.

The IPKat isn't hugely impressed. What's the point of commissioning such a report if you're going to brief against its measured recommendations? And wouldn't it have been more sensible to have put this proposal forward at the beginning of the consulation period, rather than halfway through?

BIS press release here.

Parallel imports lead to UK drug shortages

Also from the BBC, the news that a survey by Chemist and Druggist magazine has revealed that 90% of pharmacies have experienced difficulties in obtaining stocks of branded medicines. Some patients have suffered health problem as a result (either physical problems, or caused by anxiety when the correct drug cannot be obtained). A good deal of the blame has been placed on parallel imports into other countries of medicines intended for the UK market.

The IPKat wonders if this is another effect of the credit crunch, with the weakish pound making the UK a good place to source goods for export. He wonders if a similar phenomenon is apparent is other products. The problem though is a serious one. He has a dim and distant recollection of an ECJ case saying that sales of parallel imported goods could be stopped on competition grounds where parallel trade leads to a shortage on the exporting market, but he never thought that the UK would be affected in this way.

Into battle! Will Dids save British design?

That veritable Boudica of British Design, battling Dids Macdonald of ACID (Anti Copying in Design), is at it again. Rather than sit back and watch the invading hordes of infringing products stifle the profitability of the creative but defenceless British design sector, she is taking on the British government itself in an attempt to force it to stiffen its legislative programme with some tough new deterrents -- both civil and criminal.

Dids is currently promoting two new-style Downing Street Petitions, each of which calls upon supporters to sign up en masse in the hope that the government might be persuaded that (i) there is a good economic argument in favour of deterrence of design piracy, that (ii) it is just and proper to hit design pirates where it hurts, or that (iii) there are votes to be won by supporting indigenous designers.

To sign the petitions, you must be a British citizen or resident. The closing date for signatures is 21 April 2010.

The first petition reads as follows: We the undersigned petition the Prime Minister to make changes to the copyright and unregistered design right infringement damages regime to create greater deterrent against IP theft. As Dids explains:

"The design industry is a creative industry and all too often ACID is increasingly aware of the emotional damage suffered by a designer when their designs are copied. This can have an extremely detrimental effect on their future ability and willingness to create new designs. A dissuasive system of damages for IP infringement needs to be created to discourage design theft.
In the recently published Government response to the consultation paper “Law of Damages”, The Ministry of Justice has ignored a Government implementation commitment on all recommendations in the 2006 Gowers Review on intellectual property to improve damages awarded for intellectual property theft. Despite this commitment, the MoJ has failed to address the lack of a deterrent effect within the existing damages regime. Gowers had recommended that the MoJ consult over the creation of such a deterrent function for civil damages awards for IP crime. Clearly, one of the main disincentives to a copier or dealer in copies of pirated goods is the potential remedies available against them should action be brought. Currently there are no criminal sanctions available for design infringement".
The second petition reads: "We the undersigned petition the Prime Minister to Create a law which introduces criminal sanctions for design right infringement". Again, Dids explains:
"Design law today has a far greater importance in terms of protecting new designs than it has ever done in the past. The four most copied industries within ACID’s membership are the furniture, textiles, interior accessories and giftware industries. A visit to any major High Street retailer will clearly demonstrate the importance of these sectors of the design industry to the UK economy. ACID is very concerned that there are currently no criminal sanctions whatsoever under the UK unregistered and registered design right, the unregistered or registered Community design. Accordingly anyone dealing in pirated goods that are protected by one of the design rights rather than by copyright or trade marks are at no risk of criminal proceedings being brought against them. Since ACID's formation in 1996, it has seen a huge escalation of copying taking place within the design industry. ACID firmly believes that the introduction of criminal sanctions for design right infringements, will have a significant effect on the reduction of copying and dealings with pirated goods in the UK, consequently strengthening the British design industry".
If you sympathise with these causes, you know what to do! And if you have any friends in the design sector, do please forward this post to them.

Monday, 24 August 2009

TRIPS book reviews

The IPKat has been looking at a couple of books on TRIPS, the Agreement on Trade-related Intellectual Property Rights. A fascinating thing about TRIPS is how, it seems, a device that was originally conceived as a way for the developed countries to keep their developing cousins in line has somehow swung round and become a stick for hitting the most developed countries with, as we shall soon see ...

The Implementation Game: the TRIPS Agreement and the Global Politics of Intellectual Property Reform in Developing Countries, by Carolyn Deere, is the first book the IPKat took a peek at. The author is the Director of the Global Trade Governance Project at the Global Economic Governance Programme, University College, Oxford. A Senior Research Associate at Oxford University's Centre for International Studies, she's also the founder and Chair of the Board of Intellectual Property Watch, one of the Kats' favourite reads.

But what of the book itself? According to the publisher, none other than Oxford University Press:

"With the launch of the World Trade Organization (WTO) in 1995, [TRIPS] emerged as a symbol of coercion in international economic relations [In some circles, true. But others saw it as a fair quid pro quo, which is why they were puzzled at the adverse responses]. In the decade that followed, intellectual property became one of the most contentious topics of global policy debate. This book is the first full-length study of the politics surrounding what developing countries did to implement TRIPS and why.

Based on a review of the evidence from 1995 to 2007, this book emphasizes that developing countries exhibited considerable variation in their approach to TRIPS implementation. In particular, developing countries took varying degrees of advantage of the legal safeguards and options-commonly known as TRIPS 'flexibilities'--that the Agreement provides.

To explain this variation, this book argues that TRIPS implementation must be understood as a complex political game played out among developing country governments and a range of stakeholders-developed countries, non-governmental organizations (NGOs), intergovernmental organizations (IGOs), and industry groups [The Kat agrees with this approach: this being a game in which the players move simultaneously rather than awaiting their turn, it's all the more difficult to follow the plot]. The contested nature of the TRIPS bargain spurred competing efforts to revise the terms of TRIPS and to influence global IP regulation more broadly. The intensity of the implementation game was amplified by an awareness among the various stakeholders that the IP reforms developing countries pursued would influence these ongoing international negotiations. The book attributes the variation in TRIPS implementation to the interplay between these global IP debates, international power pressures, and political dynamics within developing countries. The book includes historical analysis, compilations of evidence, and analysis supported by examples from across the developing world.

The Implementation Game will be of interest both to scholars of international relations, law, and international political economy as well as to policymakers, commentators, and activists engaged in debates on the global governance of intellectual property".
This book certainly delivers what it promises. While not a classic exposition of game theory, it demonstrates how the forces of cunning in the interpretation and application of rules, inertia, lack of accountability and of having little or nothing to lose can affect they manner in which both single countries and regional groups can derive some advantage even from an apparently unpromising position.

Bibliographic details: ISBN13: 9780199550616, ISBN10: 0199550611. Hardback, 432 pages. Price: $80. Rupture factor: low. Book's web page here.


The third edition of Daniel Gervais's TRIPS Agreement Drafting History and Analysis, published by Sweet & Maxwell, needs little introduction since the two earlier editions have become standard fare for those who want to understand either what TRIPS means now or how it got there in the first place. As the publishers say:
"Having been an active part of the negotiations when the TRIPS agreement was being formed, author Daniel Gervais presents a distinctive and insightful explanation of the history and background of the Agreement. This acclaimed book:

* Provides a complete background by following the history of the TRIPS agreement;
* Demonstrates the effect of the TRIPS agreement through analysis of recent cases;
* Presents an insightful article-by-article analysis of the full TRIPS agreement
* Offers a unique insider perspective as the author was involved with the TRIPS agreement negotiations
* Includes relevant dispute settlement cases and the ongoing panel discussions to reflect the developments which have occurred since 1995
* Takes into account the latest Doha Development Round discussions to bring to light the current international issues relating to the TRIPS agreement
* Analyses the rising trend of bilateral agreements and the implications for practitioners working in the countries party to them
* Anticipates the future impact the TRIPS agreement will have on the
international IP framework".
The IPKat has never quite made up his mind whether this work is really a treatise on contemporary legal history or a tome that can also at a stroke be converted into a springboard that enables the reader to take an informed leap into the future. Professor Gervais is an author to whom careful description and scholarly analysis appear to come more easily than speculation and spontaneous leaps in the dark, though in the current era of flux and uncertainty an appendix dedicated to well-informed guesswork would be quite welcome too!

Bibliographic details: ISBN: 9781847032829. Hardback, lxxvii + 785 pages, £189.00 Rupture factor: not insubstantial. Book's web page here.

Letter from AmeriKat

Oprah, Oz, Acai!

Yesterday morning the AmeriKat flew out into the sunshine and bounded to her local café for a smoothie. Ten minutes later ‘Smoothie Number 2’ consisting of blended passion fruit, mango and acai berry was served to her with a slice of banana cake. Belonging to the ‘yuppier’ end of the fruit scale, the acai berry’s attributes are meant to include its detoxifying and diuretic character.

It was these characteristics that found themselves the subject of a trade mark suit filed last Wednesday in federal court by Oprah Winfrey via her production company Harpo Entertainment Group and Dr Mehmet Oz. Dr Oz regularly features on Oprah in segments concerning diet and food choices that can lead to better health. In a segment last year, Dr Oz praised the acai berry’s attributes. Like anything Oprah touches, the acai berry quickly turned to gold and a market in the acai berry was born. Without the Oprah/Oz endorsement however, the acai berry was a virtual ‘nobody’ in fruit society. Inevitably, internet distributors began to sell acai products implicating the Oprah/Oz endorsement although neither party had ever licensed their likeness or trade mark for such use.

Subsequently, Oprah’s website received numerous complaints relating to the acai berry from those who had mistakenly believed the product they purchased was endorsed by Oprah or Dr Oz to those who were defrauded when their ordered products never arrived. Following these complaints, Oprah’s team, lead by Illinois Attorney General Lisa Madigan begun an investigation into what Forbes described as the “shadowy cottage industry of resveratrol (an anti-aging substance) sellers.” Following this investigation Madigan herself filed three consumer fraud lawsuits against five of these companies.

The suit filed by Oprah and Dr Oz last week against more than 50 internet marketers alleged trade mark infringement, copyright infringement, false advertising, and cybersquatting for domain names confusingly similar to Oprah and Oz’s marks, such as www.oprahdietsecret.com. Marc Rachman, a lawyer for Harpo, stated in Business Week that in the past lawyers would target individual website operators, but “then another would pop up where the affiliate changed the Web address by a letter or a dash…[w]e didn’t want to engage in a whack-a-mole. We want these practices to stop” and “consumers to get their money back.”

The AmeriKat believes that this case and Madigan’s consumer fraud lawsuits may act as a much-needed warning shot to these types of internet marketing practices.

The More the Merrier

Microsoft, Amazon and Yahoo! have joined the Internet Archive, library and publishing associations and the Open Book Alliance in the fight to stop the Google Book Search Settlement from being approved (see AmeriKat’s previous posts on the Google Book Search here and here). The Open Book Alliance’s lawyer, Gary Reback, no stranger to antitrust cases following his involvement in the famous antitrust case brought against Microsoft in the late 1990s, now finds himself fighting alongside the computing giant. Reback was quoted in the New York Times as stating that the settlement has “enormous, far-reaching anti-competitive consequences that people are just beginning to wake up to.” There has yet been a formal announcement from these three technology giants, but the AmeriKat is interested to see what Microsoft, Amazon and Yahoo! have to say about their motivation for participation. The AmeriKat reminds readers that the deadline to file submissions in support or opposition of the settlement is 5 September 2009.


Sony BMG’s Failure to LAUNCH

Following a lawsuit brought by recording companies owned by Sony Corp. in 2001, the United States Court of Appeal for the Second Circuit in New York ruled last Friday that Yahoo! is not required to pay royalties for songs played over its Internet radio, LAUNCHcast. The lawsuit claimed that LAUNCHcast was ‘interactive’ in that it permitted users to skip past songs and customize their radio stations. As the first federal appellate court to address the issue of whether an webcasting service that provides users with individualized and user-controlled content constituted an ‘interactive service’ under the definition in 17 USC § 114(j)(7), the court’s judgment was eagerly anticipated by the recording industry. If held to be an ‘interactive service’ under the definition then the service would be required to pay for licences for the sound recordings to the recording companies. If LAUNCHcast fell outside the definition, they would only be liable to pay the statutory licence fee as set by the Copyright Royalty Board. The music industry, in facing declining record sales and revenue, was obviously eager that the court construe Yahoo!’s activities as falling within the definition.

The full definition of an ‘interactive service’ under the statute is
one that enables a member of the public to receive a transmission of a program specially created for the recipient, or on request, a transmission of a particular sound recording, whether or not as part of a program, which is selected by or on behalf of the recipient. The ability of individuals to request that particular sound recordings be performed for reception by the public at large, or in the case of a subscription service, by all subscribers of the service, does not make a service interactive, if the programming on each channel of the service does not substantially consist of sound recordings that are performed within 1 hour of the request or at a time designated by either the transmitting entity or the individual making such request. If an entity offers both interactive and noninteractive services (either concurrently or at different times), the noninteractive component shall not be treated as part of an interactive service.
In short, the court stated that LAUNCHcast would be ‘interactive’ under the statute if a user can either:

1. request and have played a particular sound recording, or
2. receive a transmission of a program ‘specially created’ for the user.

Given that a LAUNCHcast user could not request and expect to hear a specific song on demand, the defendant fell outside the first definition. It was the second definition that caused the district and appellate court the most problems, given the phrase ‘specially created’. Following extensive discussion regarding Congress’s intent that this provision be aimed at protecting the recording industry against file-sharing programs like Napster, the court held that LAUNCHcast’s services did not satisfy the second definition either. The court stated that LAUNCHcast
“does not provide sufficient control to users such that playlists are so predictable that users will choose to listen to the webcast in lieu of purchasing music, thereby – in the aggregate – diminishing record sales.”
The AmeriKat agrees with this analysis. Having previously used LAUNCHcast she can personally vouch for the unpredictability of her personal customized station. Despite repeatedly clicking to “Never” hear any song by The Counting Crows, the AmeriKat’s radio station persisted in constantly playing their songs, much to her annoyance.

The AmeriKat disagrees with some commentary that this judgment is necessarily unhelpful in any way and believes that the judgment was in fact unsurprising, given the unpredictability of LAUNCHcast’s programming (in its present form, at least). The definition, it seems, will not include those services where a user only exercises a minimal choice of electing a musical genre, but may include services like Spotify where a user can play ‘on-demand’ user-requested songs and compile personalized playlists. The AmeriKat suggests two articles (here and here) in Wired regarding the proposed launch of Spotify in the US.

Sunday, 23 August 2009

"Keep your hands off our bleeding millions!", patent agent tells LinkedIn aliens

Every so often the IPKat receives a piece of email which, he suspects, was not primarily addressed to him. One such item is a circular email received from Gaurav Goel, a Registered Patent Agent in the United States. The circular reads as follows:

"PLEASE WRITE TO YOUR CONGRESSIONAL REPRESENTATIVES! [The IPKat wishes he had some. Fictional felines sadly are unrepresented in even the most generous of democracies ...] SEND THIS FORM LETTER ABOUT ILLEGAL OUTSOURCING OF PATENT APPLICATIONS!

Re: Blatent Disregard or Violation of U.S. Commerce and Trade Regulations by Outsourcing of Patent Applications

Dear Congressman / Congresswoman / Rep. / Sen. ____________________:

I am writing to seek your legislative initiative to stop the unlawful export of subject matter of U.S. patent applications being prepared abroad for filing in the U.S.A.

Exporting subject matter for the purposes of filing a U.S. patent application requires a clearance from the Bureau of Industry and Security at the U.S. Department of Commerce. Judging from the activity evident just on one website, LinkedIn.com, either the U.S. government is allowing a massive number of U.S. patent disclosures to be sent abroad for preparation, or this is being done without the appropriate government clearances [If nothing else, this shows the effectiveness of LinkedIn as a means of enabling professionals to send work to each other].

If the former is true, then this suggests the U.S. government is undermining our own national interests [Doesn't this depend on how "national interests" are defined? Is getting the filing of US patents done quickly and cheaply not itself in the "national interest"?]. If the latter is true, it suggests that many patent owners are exporting subject matter in violation of U.S. commerce and trade policies, while trying to gain advantage of those very same commerce policies, i.e., patent protection, here in the U.S.A. [This isn't so clear, is it? When is an invention a "US invention", in the case of, for example, the innovative product of more than one country, or of a multinational corporation, or where it is the result of 'open innovation'?] The activity evident on the website LinkedIn.com alone suggests this is being done on a massive scale. There is even a Linkedin group called Outsourcing of Legal Services [at the time of posting, this group had 508 members], with a very strong representation of foreign patent workers preparing U.S. applications and correspondence to the U.S.P.T.O.

Should America tolerate this kind of activity, in blatant disregard of our U.S. trade regulations? [presumably, whether 'America' tolerates it, 'Americans' are tolerating it already]

With respect, I say it should not. I, and many other professionals, including members of the patent bar, believe that allowing this kind of outsourcing to continue is both foolish and dangerous, and could never be in our national interest [This sounds like a very broad claim made against a tradititionally conservative and cautious profession].

In fact, I plead with you to propose legislation making the outsourcing of U.S. patent subject matter a statutory violation of U.S. laws. [The need for such legislation presupposes that such conduct is not currently a violation of US laws] I further believe that the U.S.P.T.O. will strongly support such a legislative proposal, which is likely to have strong bipartisan support. [Is there anything to suggest that the engaging and talented David Kappos is a protectionist?] In this time of economic crisis, this legislation will prevent the bleeding of billions of dollars of professional services from being illegally outsourced to foreign countries [The IPKat can almost hear the murmuring of thousands of patent professionals outside the US that they wouldn't mind getting their hands on some of those bleeding millions, as recompense for the fine mess that the US-precipitated world economic crisis has got them all into -- but that's another story].

Thank you very much for all the hard work you do for us every single day. You are greatly appreciated".
The IPKat would dearly like to know more about this in terms of the governing US law, also taking into account the economic and moral arguments for and against the outsourcing. Please feel free to post your comments below.

Friday, 21 August 2009

Reinstatement of UK patent applications

The UK-IPO has this week issued a practice notice relating to reinstatement of patent applications, following Mr Justice Pumfrey's judgment in Anning's application [2007] EWHC 2770 (Pat). This attempts to clarify what happens if there has been a failure to meet a time limit, for example as given in an examination report. The substance of the notice goes as follows:

Where an application has been treated as refused at the end of the compliance period due to failure to respond to a substantive examination report, the application may be reinstated provided that the requirements of section 20A and rule 32 are met. Where reinstatement is allowed, the applicant shall be allowed a period of not less than two months to respond to the substantive examination report, since it is the failure to respond to the examination report which led to the application being treated as refused. However, this will not have the effect of extending the compliance period. Therefore, where an application is reinstated after the compliance period has ended, and the opportunity under rule 108 for extending that period has expired, amendment of the reinstated application will not be possible. The applicant will instead have the opportunity of providing arguments, within the two month period, to show that the application was in order at the end of the compliance period.

It follows that in any circumstances where an application is refused, or treated as having been refused or withdrawn, due to failure by the applicant to comply with a requirement of the Act or rules, reinstatement of the application will not have the effect of extending the compliance period.

This notice highlights the importance of putting the application in order before the end of the compliance period. The compliance period may be extended in two-month tranches under rule 108(2) or 108(3), by filing Form 52, the appropriate fee and evidence supporting the request for an extension, if rule 108(3) applies. Any request for such an extension must be filed within two months of expiry of the period.
The IPKat is unsure why it has taken the UK-IPO nearly two years to getting round to doing this. Does it tell us anything we didn't already know?

Because today is Friday: some "divine" patent entertainment

Our readers know that Friday is the traditional day of "light IP" on this blog and so the IPKat thanks Neil Thomson (Boult Wade Tennant) for alerting the kat to US patent US 2007035812 -"for amusement only" as Neil points out.

A divine cat (left) can be viewed at the British Museum.

The IPKat wondered how such an unusual patent could have gone unnoticed for so long and has conducted some background research into Chris Roller and his powers. So this Kat dutifully wants to give credit to the Patently-O weblog whose bloggers first reported on this patent in 2007. However, Merpel thinks that something as "divine" as this patent deserves to be mentioned at least twice: due to its heightened relevance in the times of the credit crunch and mostly because today is a Friday. Neil also raises a valid point when he muses that the patent "...kind of raises the question of whether he [Christopher Anthony Roller] is entitled to claim small entity status."

"Abstract of US 2007035812 (A1)

Christopher Anthony Roller is a godly entity. "Granters" had been given my powers (acquired my powers) (via God probably). These "granters" have been receiving financial gain from godly powers. These "granters" may be using their powers without morals. Chris Roller wants exclusive right to the ethical use and financial gain in the use of godly powers on planet Earth. The design of godly-products have no constraints, just like any other invention, but the ethnic consideration of it's use will likely be based on a majority vote of a group, similar to law creation. The commission
I require could range from 0-100% of product price, depending on the product's
value and use.

Description of US 2007035812 (A1)

[0001] Christopher Anthony Roller wants exclusive right to the ethical use and financial gain in the use of godly powers on planet Earth.




Please click here to retrieve the full patent details.
To read about the lawsuit between Christopher Roller and David Copperfield’s Disappearing, Inc., please click here.
To watch Christopher Roller talking about his powers, please click here.

European Commission to commission research into IP systems

The IPKat notes that the European Commission's DG Internal Market has recently issued two IP-related invitations to tender (both available here).

One concerns patent quality and is described thus:

The European Commission's Directorate-General for Internal Market and Services plans to conclude a contract for a comprehensive study on patent quality. The aim is to study the quality of patent rights with economic analysis in order to propose effective policy solutions for the optimal functioning of the future patent system in Europe considering its objectives to encourage innovation and the diffusion of new technology and knowledge. This should take into account a system with the co-existence of national and European patents, and a future Community patent which is currently being negotiated between Member States.

The other is a wide-ranging study into the trade mark system, described as follows:

comprehensive study on the overall functioning of the trademark system in Europe. The study shall assess the current state of play of the Community trademark system and the potential for improvement and future development. As the Community trademark system is closely linked to national trademark systems, the study shall also evaluate national systems and, in particular, the relation and interaction between the 2 systems, including the need for further harmonisation. The results shall, in particular, serve as basis for future review of the trademark system as a whole and enhanced cooperation between the Office for Harmonisation on the Internal Market (OHIM) and the national trademark offices of Member States.

The IPKat wonders whether the timing of the two so close together is coincidental. The trade marks project in particular is mega - looking across both substantive and more procedural law (and all within the space of a year). Merpel notes the Commission's optimism regarding the fate of the Community patent...

Friday fizzle

As the autumn conference and seminar season looms large, there are even more events lined up than usual. Please remember to check them out on the IPKat's side bar! Some are free, some are fun, some are boringly essential ...

Around the blogs. Every day, it seems, more exciting developments are taking place in India. Now the IPKat has learned that Rodney D Ryder and Ashwin Madhavan have started a legal media website called Law Wire, about which they modestly say:

"Law Wire is a comprehensive legal media platform, which focuses on providing an in depth coverage, on the ever changing corporate legal sector in India and the world. The legal industry in India suffers from isolated pockets of legal communities which lack visibility of various key commercial legal issues. Law Wire bridges the gap between legal knowledge on one hand and the legal policy making communities on the other, through its print and electronic media".
Do check it out! Elsewhere on the IP blogosphere the main news has been the decision of Larry Lessig to give his hugely influential copyright blog a sabbatical (noted here on the 1709 Blog) and the capture by European trade mark blog Class 46 of its 750th email subscriber.


Wanted! The IPKat is looking for someone to get involved in an exciting project. The person he seeks must be (i) familiar with intellectual property rights -- particularly copyrights and patents; (ii) highly literate and able to write well for a wide readership that goes much further than lawyers and business players; (iii) a good researcher; (iv) able to work in at least one other major European language; (v) free to work for around one-two days a week for a period of around six to nine months; (vi) able to wait till the project is completed before receiving any remuneration. If you think you might be that person, please email the IPKat here, with the word "IP Writer" in the subject line of your email -- and please attach a short CV and one sample of your best writing.


Thank you, Mark Cruickshank (Maclay Murray & Spens) for this link to the strongest evidence yet that the Swedes and the Scots do not share a common sense of humour. The joke, according to small Scottish trader Olympian Furniture, involved the use of the phrase "IKANA believe how good this summer sale is" [IPKat note for non-Scottish readers: "IKANA" is an approximation of the way many consumers in Scotland pronounce the phrase "I cannot"] with the writing in yellow on a blue background – the colours used by Ikea.

Right: the Ikea BÄSTIS cat tent

According to a spokesman for Olympian, "Our promotion is liked by our customers, who understand the humour" and anyway no-one would be confused. Whether Ikea's customers understand the humour is unknown, but Ikea's lawyers -- if they see the joke -- are not likely to be seen laughing when their clients are contemplating an action for trade mark infringement.

Judge puts Strip Party on hold

Interim injunctive relief to stop use of the word "nude" may not have been granted (see earlier IPKat post here and Class 46 post here), but the word "strip" has fared rather better.

Right: from the safety of her vantage point on the roof, Tiddles looked down to see whether the Feline Depilator Squad had left the area yet ...

In Strip Ltd v Strip Pte Ltd and Strip UK Ltd [2009] EWHC 2070 (Ch) Mr Justice David Richards (Chancery Division, England and Wales) granted interim relief in an action for passing off brought by a celebrity waxing and depilatory business against another which, having traded in Singapore, Malaysia, Indonesia and Dubai under the names “Strip” and “Strip Co-Ed”, was about to open up in London under the name "Strip Co-Ed" and was just one day away from its launch party. The claimant had traded as "Strip" in London since 2005 and was the only local business to do so. The invading depilators had traded under their names since 2002.

Could the claimant legitimately seek to monopolise the word "Strip"? The judge thought so:
"22. Mr. Baldwin [for the defendants] submits further that any loss of business which is associated with the name “Strip” is not capable of protection by the law of passing off because in connection with depilatory services the word “strip” is no more than descriptive and that it has no real distinctive quality. ...

23. On this interim application, I am satisfied that the claimant has a very serious argument to the effect that the word “Strip” in this context – I say absolutely nothing of completely different businesses – is, or may well be distinctive and is not simply a descriptive term".
The judge accepted that there was a real prospect of damage to the claimant if no interim injunction were granted, and a real prospect of damage to the defendants if it were. The clincher was the fact that the claimant was already trading in London but the defendants weren't. He added:
"29. ... The fact that [the defendants' business] is due to open this week and this application is being heard the day before the launch party is, in my view on the evidence before me, the almost exclusive responsibility of the defendants".
Says the IPKat, this was basically because, while there was a history between the parties in relation to trade mark opposition and invalidation proceedings, the defendants didn't invite the claimant to their launch party, and certainly didn't keep the claimant fully informed about its launch plans. Merpel adds, if counsel for the defendants had succeeded on behalf of its depilatory client, it would definitely be a case of a Bald-Win. Indeed, adds Tufty, something to wax lyrical about.

This decision is not yet on BAILII but you can read it here. Thank you, Douglas Campbell (Three New Square), for tipping the Kat off.

Hair removal -- not be confused with unhairing.
How to use an Epilady here
How to remove cat hair here
Hair of the dog here

More confusion about EP divisionals

The IPKat doesn't understand why amendments to the law are often not fully thought through before they are brought in. Such is the case with the upcoming amendments to Rule 36 (among others) of the European Patent Convention. As from 1 April 2010, this will dictate strict, but uncertain, time limits on when divisional applications can be filed. More detail on the new rules can be found in the IPKat's previous posts here, here and here, and from the EPO's Administrative Council decision here.

The amended rules themselves are not very clear, as many patent attorneys will already know. The EPO have now issued a notice that attempts to explain how the new rules will work in practice, and clarify some of the wording used. Unfortunately, as might be expected, the notice is itself not very easy to follow. The IPKat has managed to get the following points from it, but there may be some others that his readers might be able to help with.

1. "Earlier" does not mean the same as "earliest", and is intended to refer to only the immediately preceding pending application, rather than the first parent application, meaning that the 24 month time limit starts either from the date of the earliest A94(3) communication (e.g. on the parent, although this need not be the case) or from the date of a first communication raising a unity objection under A82. These could, of course be the same, but the rule leaves open the possibility of a new date being set if a unity objection is raised later on.

2. The examining division's "first communication" is one under Article 94(3); communications before this, i.e. from other EPO divisions, do not start the 2 year period.

3. A communication under Rule 137(5) cannot start the clock ticking, as it is not an objection of lack of unity under Article 82.

4. The Rule 126(2) 10 day rule counts.

5. New Rule 36 applies only to divisional applications filed on or after 1 April 2010. If the time limit under the new Rule has expired by then, or is still running, a divisional can still be filed up until 1 October 2010. The IPKat guesses this means that the 2 year period has already effectively started for applications where a communication under A94(3) has been issued.
Some of these clarifications inevitably raise further questions, which the IPKat has vaguely in mind but will leave to his readers to puzzle over and comment on if they feel so inclined.

PS. After reading the comments below this post, the IPKat now thinks that the way to get the longest period for filing divisionals is the following:
  1. File the parent application, making sure as far as possible that no objection under A82 will result. If the search report or written opinion identifies a lack of unity, make amendments to overcome it. This should work for both direct application and ex-PCT regional phase applications.
  2. Within 24 months of the first communication under A94(3) issuing on the parent (or, if no report is issued, before the grant date), file a divisional application containing claims that will definitely result in an objection under A82 (two independent claims directed to roughly the same thing should do it).
  3. File any remaining divisional application(s) within 24 months of the examination report issued on the first divisional.
This strategy should give the applicant well over 4 years from the initial filing date in which to file their final divisional application. If any readers can think of a better way of maximising the time available under the new rules, please leave a comment.

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