Some correspondents have been wondering why the IPKat hasn't been able to provide more, and better, coverage of the progress towards the European Union's proposed Unified Patent Court and the Unitary Patent System. Well, you try it! As soon as you start reading one document, along comes another one!
Less than two weeks ago, along came the Draft agreement on a Unified Patent Court and draft Statute - Revised Presidency text (Brussels, 19 October 2011). This draft is 99 sides long: "Changes in relation to the previous version are marked. The provisions in italics marked with square brackets are still being developed as their final version depends either on the drafting technique to be adopted or on the content of the planned Commission proposal on changes to the acquis itself". However, one week later along came Draft agreement on a Unified Patent Court and draft Statute -- Revised Presidency text (Brussels, 26 October 2011). According to this document, also 99 sides long, "Delegations will find in the Annex a revised Presidency compromise text concerning the above draft agreement, to serve as the basis for discussions at the meeting of the Friends of the Presidency Group on 27 October 2011. Changes in relation to the previous version (15539/11) are underlined".
But while the Unified Court has been taking shape, the Unitary Patent has also been inching towards its completion. This document, also dated 26 October, contains (i) the Proposal for a Regulation of the European Parliament and of the Council implementing enhanced cooperation in the area of the creation of unitary patent protection -- Preparation of the next informal trialogue and (ii) the Proposal for a Regulation of the Council implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements -- Preparation of the next exchange of views with the European Parliament. This 87-page document promises that, "Following the meeting on 18 October, delegations will find in the Annexes comparative tables concerning the two above-mentioned proposed Regulations for examination at the meeting of the Friends of the Presidency Group on 27 October 2011 in preparation of the forthcoming informal trialogue, scheduled for 8 November 2011".
The IPKat wonders whether it is he alone who is struggling to keep up with all the latest documentation, digest and understand it and then make any sort of sensible comments on it before the next batch of documentation comes winging its way towards him. Merpel agrees and ponders on whether flooding interested parties with information as just as effective a way of silencing them as giving them no information in the first place.
The IPKat thanks Professor Steve Peers, University of Essex, for supplying him with so much to read!
Monday, 31 October 2011
Some correspondents have been wondering why the IPKat hasn't been able to provide more, and better, coverage of the progress towards the European Union's proposed Unified Patent Court and the Unitary Patent System. Well, you try it! As soon as you start reading one document, along comes another one!
This Kat is happy to announce yet another event. This one's a lunchtime seminar in which fellow Kat Neil does a duet with Paul Joseph on some of the problems that beset even the best of intellectual property licences. See you there?
Full details are as follows:
—and even to good ones”
Happy Halloween! The AmeriKat's mobile phone is practically Frankenstein. It is held together with industrial strength tape, has various dents and scratches pock-marking its surface, and opening the phone for use incites a sticky creaking noise. It horrifies the latest generation of touch-screen phones where a gentle left-to-right or other patterned sweep of the paw on the surface unlocks the phone. But at least, says the AmeriKat, it is not infringing the latest Apple patent.
Last Tuesday, the USPTO issued US Patent No. 8,046,721 to Apple Inc. for a method of unlocking a hand-held device (it also included two product claims). The "Slide-to-Unlock" method claim is set out in Claim 1 and reads as follows:
1. A method of unlocking a hand-held electronic device, the device including a touch-sensitive display, the method comprising: detecting a contact with the touch-sensitive display at a first predefined location corresponding to an unlock image; continuously moving the unlock image on the touch-sensitive display in accordance with movement of the contact while continuous contact with the touch screen is maintained, wherein the unlock image is a graphical, interactive user-interface object with which a user interacts in order to unlock the device; and unlocking the hand-held electronic device if the moving the unlock image on the touch-sensitive display results in movement of the unlock image from the first predefined location to a predefined unlock region on the touch-sensitive display.Dear readers, is your phone, sitting silently next to you, unwittingly (or not) infringing the latest Apple patent? Chances are that if you have a phone that runs the Google Android operating system or a Samsung Galaxy, your unlocking method may seem eerily similar to this claim. This summer the Dutch courts ruled against Apple in respect of one of their patent infringement claims against Samsung - a claim relating to a similar "Slide-to-unlock" patent - US Patent No. 7,657,849/EP 1964022. The court held that that patent was invalid for obviousness. The prior-art cited was the Neonode N1m, created by and released in 2005 (prior to those patents December 2005 filing date) by a small Swedish mobile phone manufacture. The question is, does this new patent, also filed in December 2005, withstand the Neonode N1m prior art? In any event, Google will undoubtedly be anticipating another fight on their hands from Apple.
2. The method of claim 1, wherein the moving comprises movement along any desired path.
3. The method of claim 1, wherein the moving comprises movement along a predefined channel from the first predefined location to the predefined unlock region.
4. The method of claim 1, further comprising displaying visual cues to communicate a direction of movement of the unlock image required to unlock the device.
5. The method of claim 4, wherein the visual cues comprise text.
6. The method of claim 4, wherein said visual cues comprise an arrow indicating a general direction of movement.
So if you hear leaves rustling behind you on this, the most haunted of all nights, it may be Sleepy Hollow, or the ghost of Jack the Ripper, but it could be something arguably far scarier - Apple's next mobile patent lawsuit...
Other Apple v Samsung disputes - here
Bobbing for apples - here
How to make shrunken apple heads (AmeriKat recommended!) - here
|WIPO staff agree that last week's|
conflagration is a lot more
interesting than Geneva's
boring old jet'deau
For the purposes of WIPO's registration services, (PCT, Madrid System, Hague System, Lisbon System, Arbitration and Mediation Center), WIPO was closed for business on October 27 and 28, 2011.
The meeting of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT), which was to end on October 28, 2011, was suspended at mid-day on October 27, 2011. Further information will be provided by the Secretary to the Committee.
whether IP really does create employment. Kinglsey Egbuonu's 20th visit to an African jurisdiction, in search of some sort of online presence for its IP offices, takes him to Gabon. PatLit has now concluded its mini-series of posts on the America Invents Act, kindly crafted for it by Faegre & Benson, with this piece on patent marking requirements. Finally, the 1709 Blog advertises a copyright debate on whether the recent controversial Meltwater ruling in England and Wales means the end of browsing: full details are available here.
|What! Scrap the UK's|
registered design regime?
Why didn't I think of that
Are Slovak customs uniforms really going into the bin? The IPKat's new friend Zuzana Hecko (Allen & Overy, Bratislava) informs him of a significant development in her corner of United Europe. She explains that, earlier this month the Slovak President signed the draft act on the Unification of the Slovak Customs Authority and the Slovak Tax Directorate, which will come into force on 1 January 2012. Under the new law, customs authorities will be merged with the tax directorate, to form a new 'Financial Administration'. The uniforms of customs officers will thus become part of the country's recyclable waste and will be replaced by formal suits (the deterrent effect of which is somewhat questionable). Zuzana comments:
|Slovakia: a small country with a big, big border ...|
"These developments are rather worrying because they carry the risk of customs officers becoming more focused on the 'financial' aspects of counterfeiting, such as tax evasion, rather than on the protection of IP rights as such. Sectors other than alcoholic spirits or tobacco should pay close attention to these developments. The changes are also likely to impede the anticipated creation of a specialised IP Unit within the customs authorities and an IP Monitoring Centre -- which are currently in the process of formation -- but a question mark now hangs over their future. This is even more worrying, given (i) the poor seizure statistics in Slovakia, which are in fact the lowest in the EU (only 11 detentions were reported to the European Commission last year) and (ii) an external border with Ukraine.
However, right-holders should take heart and remember that the Slovak (and Czech) customs, apart from having the power to act on the borders, also have the power to act in the internal market where the numbers of seizures are not as hopeless as on the border. Right-holders will have to submit specific customs applications for action in the internal market (different from the EU-wide customs applications for action based on regulation 1383/2003) to the customs authorities".
Sunday, 30 October 2011
The Plaintiffs (Petitioners) appealed to the Supreme Court. Certiorari was granted on 7 March 2011. The Petitioners’ argument basically boils down to the following:
The Copyright Clause gives Congress power to grant authors copyrights for “Limited time” and only to “promote the [p]rogress of knowledge and learning”. From 1790 to 1994, Congress exercised its power to expand the duration and scope of copyright protection no fewer than 19 times and each time copyright protection and duration was extended, the works in the public domain were left intact. The entry of a work into the public domain must mark the end of the protection, not an intermission where it can rise again. Otherwise, the protection for a “Limited time” and the public domain is meaningless; there must be a fixed boundary for the public domain. Otherwise, such uncertainty negates the “progress of knowledge and learning.” The thrust of the argument comes down to this statement in the brief: “There is no legitimate interest in giving away public speech rights in the hope of creating private economic windfalls. In complying with Article 18 of Berne, there was no requirement to remove works from the public domain.
Section 514 is compliant with the Copyright Clause and the provision for protection for “Limited time”. This is because, copyright restored under Section 514 expired on the same day it would have expired if the work received copyright protection when it was first published. Section 514 did not restore copyright protection to foreign works whose term of protection expired. The AmeriKat notes that “Limited time” means that Congress cannot grant rights in perpetuity, not that Congress cannot extend protection to works that had entered the public domain due to lack of formalities, such as the author not being nationally eligible or that it means that once set a “limited time” becomes forever fixed or inalterable. The first federal copyright statute in 1790 granted copyright protection for works that had previously been open for public exploitation – to say that there has been a bright line drawn around the public domain, be it in copyright or patent law, is a misnomer. [The Amerikat says, “Cute, but given it was the first copyright statute, what was the alternative?] The traditional contours of copyright protection, as discussed in Eldred v Ashcroft, include the idea/expression dichotomy, the fair use defence and restriction of unauthorized exploitation of other peoples expression. In so far as Congress legislates pursuant to those traditional features, the First Amendment inquiry is essentially at an end.
Save for during her day job, there is nothing that entertains the AmeriKat more than incredibly intelligent judges really testing the limits of counsels' arguments. If you get a chance, the AmeriKat suggests you read the mere 56-page (double spaced) transcript of the oral arguments (here) because the transcript shows the Justices doing just that. If reading is not your thing, you can listen to the arguments here (click here for the Oyez page)
Given the dicta in Eldred, the Justices were resistant to the plaintiff's argument that "Limited time" was to be interpreted as being finite and inalterable. Justice Ginsburg made the point that a work cannot be held to have "Limited time" if it had no time at all because it wasn't being protected. It is no secret that the AmeriKat is a big fan of Justice Ginsburg (picture, left) (and her daughter Jane). A mere four pages into the transcript of the oral arguments before the Supreme Court confirmed her life-long admiration. As a little treat, the AmeriKat sets out her favorite extract:
JUSTICE GINSBURG: They didn't get the equivalent of what a U.S. author -- but let's take the large category, because it's the ones that you feature. You're talking about Shostakovich, Stravinski, and I say, well, what's wrong with giving them the same time that Aaron Copeland got?
MR. FALZONE: Congress has been setting the limited time at zero since 1790. In the 1790 Act, Congress set the limit at zero for a wide array of works, those that did not comply with formalities, those that were written by foreign authors -
JUSTICE GINSBURG: That's not a limited time. That's saying you have no time.
MR. FALZONE: Well, but saying you have no time is itself picking the limit because the language of
the Copyright Clause forces Congress to pick a limit that constrains copyright by marking its end. And when -- if a limit does not mark the end once reached, then there is no limit; there is no end.
JUSTICE GINSBURG: But it has to have a beginning, too. And that -- for these people who were unprotected, because we didn't recognize their copyright, there's no beginning.
MR. FALZONE: No, there does not need to be a beginning. It is within Congress's discretion. Remember, this is permissive. Congress may grant exclusive rights, but it can also say your limit is going to be zero; we decide that you're not going to get any exclusive rights.
"If government can get around First Amendment limits by signing a treaty....then the First Amendment is defined only by the perceptions, the complaints, and frankly, the imagination of foreign countries. That can't be the way it works."
The AmeriKat has been otherwise preoccupied over the past several weeks - certain readers will know where and what has been diverting her time - but suffice to say you may soon be hearing a very Merpel-esque opinion about the new court rooms in the Rolls Building. Where the concept of convenience may strike a discord when placed in the same sentence as the Rolls Building, other harmonious pairings lead the way - peanut butter and jelly, Fred and Ginger, the AmeriKat and chai tea lattes. But along with the Rolls Building and convenience, the Berne Convention and the United States, have also had a spot on the disharmonious shelf. However, a new found harmony between the two has been signaled, at least by the US Government, in Golan v Holder. In particular, during oral arguments before the US Supreme Court two weeks ago counsel for the US government stated something that 20 years ago many thought they would never hear a US representative say: "Berne is not a menu in which we get to choose options." (picture, left - the AmeriKat's bi-minute stretch in trying to reach counsel from across the court room desks)
Berne takes a bite out of the US Constitution - or does it?
In 2001, the case of Golan et al v Holder was brought by a collection of plaintiffs, including orchestra conductors, educators, performers, motion picture distributors and publishers against the United States government alleging that Section 514 of the Uruguay Round Agreements Act (URAA)- section 104A and 109 of the Copyright Act - is unconstitutional. Section 514 granted copyright protection to various foreign works that were previously in the public domain in the US. The claimants had relied on artistic works in the public domain and had created works based on foreign works that were restored by virtue of Section 514. For example, one of the claimants, the late Richard Kapp, created a derivative work based on several compositions by Dmitri Shostakovich. Thus, the problem.
After years of study, the AmeriKat has grown to love the Berne Convention (thank you Dr. Aplin and Dr. Makeen). The US has had a hate-hate relationship with the granddaddy of copyright texts (no, not you, Statute of Anne!) for centuries. Given that during its early history, some of the US's economic success was built upon pirating copyright works, the US avoided joining the Berne Convention until it had to - in 1989. Under Article 18 of Berne, countries must provide copyright protection to pre-existing foreign works even when those works had been previously in the public domain in that country. Did the US's implementing legislation - the Berne Convention Implementation Act of 1988 – implement Article 18? Of course not.
Fast forward to April 1994 when the US signed various trade agreements during the Uruguay Round General Agreement on Tariffs and Trade which included the signing of Trade Related Aspects of Intellectual Property Rights (TRIPs). TRIPs required that all signatories comply with Article 18 of the Berne Convention and so, Congress enacted the URAA and Section 514. Where foreign works were formerly in the public domain because they failed to comply with formalities, lacked subject matter protection or lacked national eligibility, section 514 restored copyright to these works. Section 514 did not restore copyright in foreign works that entered the public domain through expiration of the term of protection.
Section 514 provides certain protections for what are known as reliance parties - parties who exploited foreign works before the copyright was restored and who continue to exploit the works after restoration. In order to enforce a restored copyright against a reliance party, a foreign copyright owner must either file notice with the Copyright Office within 2 years of restoration or serve actual notice on the reliance party. After a 12 months grace period from the notice of restoration, a reliance party is liable for infringing acts. Where a reliance party created a derivative work based on a restored foreign work they may continue to exploit that work for the duration of the restored copyright if the reliance pays the copyright owner "reasonable compensation". Where the parties are unable to agree on reasonable compensation a federal court will determine the amount of compensation.
The claimants disputed the constitutionality of the Copyright Term Extension Act and Section 514. At first, the district court in Colorado granted summary judgment to the US government. The claimants appealed, and the Appeals Court for the 10th Circuit concluded that the claimant’s challenge to the Copyright Term Extension Act was foreclosed by the Supreme Court's decision in Eldred v Ashcroft and that Section 514 did not exceed the limitation inherent in the Copyright Clause. The appeals court remanded the case back to the district court to assess whether Section 514 was content-based or content-neutral and to then apply the appropriate level of constitutional scrutiny to the section. The parties agreed that Section 514 is a content-neutral regulation of speech and thus should be subject to intermediate scrutiny. The district court concluded that "to the extent Section 514 suppresses the right of reliance parties to use works they exploited while the works were in the public domain”, Section 514 was unconstitutional. The government then appealed to the US Court of Appeals for the Tenth Circuit (picture, left) arguing that Section 514 does not violate the First Amendment.
Is Section 514 content-neutral or content-based?
Both parties agreed that Section 514 was content-neutral regulation of speech and thus subject to intermediate judicial scrutiny. In determining whether a regulation is content-neutral or content-based, regard is given to the government’s purpose in enacting the regulation. The main question is whether the government has adopted a regulation of speech because of disagreement with the message it conveys.
"If the regulation serves purposes unrelated to the content of expression it is considered neutral, even if it has an incidental effect on some speakers or messages but not others.”Although the parties agreed that Section 514 is content-neutral, it does not affect a court’s ability to review the position because the court has a special standard of de novo review (as if considering the question for the first time). The Court said that there was no indication that the government adopted Section 514 because of any agreement or disagreement with the message that the regulated speech conveys. The main purpose of Congress in enacting Section 514 was to comply with the US’s international obligations and to protect American authors’ rights aboard. For this reason, the Court agreed that Section 514 is a content-neutral regulation of speech.
Is Section 514 Constitutional?
Content-neutral regulations are subject to an intermediate level of judicial scrutiny because in most cases these types of regulations “pose a less substantial risk of excising certain ideas or viewpoints from the public dialogue.” A content-neutral provision will withstand scrutiny under the First Amendment if it “advances important governmental interests unrelated to the suppression of free speech and does not burden substantially more speech than necessary to further those interests.” (Turner Broad Sys Inc v FCC (1997)). Thus, in determining whether Section 514 was constitutional, the Court examined these two aspects under Turner I: (1) whether in enacting Section 514, the Government addressed a substantial and important governmental interest that alleviated a real harm, supported by substantial evidence; and (2) whether Section 514 was narrowly tailored to advance that interest.
1. Governmental Interest
The US Government argued that Section 514 advanced three important governmental interests. First, it complied with international treaties and agreements. Second, it obtained legal protections for American copyright owners abroad. Third, it remedied past inequities of foreign authors who lost or never obtained copyrights in the U.S. The Plaintiffs however, argued that the US Government did not have an important interest in the reallocation of speech interests between American reliance parties and American copyright owners. However, in Eldred v Ashcroft
“The First Amendment securely protects the freedom to make – or decline to make – one’s own speech; it bears less heavily when speakers assert the right to make other people’s speeches.”Thus, the Court of Appeals held that although the plaintiffs have First Amendment interests, so too do American authors. In securing foreign copyrights, American’s authors economic and expressive interests are preserved and these interests are at least as important or as substantial as other interests that the Supreme Court has found to be important to satisfy intermediate scrutiny.
Not only was there a substantial interest in enacting Section 514, but Section 514 addressed a real harm. The US Government argued that in implementing Section 514 the government was able to protect American copyright’s holders’ interests abroad. The Court, has to accord "substantial deference" to the predictive judgments of Congress when it enacts laws. The Court’s review of the laws, under these deferential standards, is to ensure that “Congress has drawn reasonable inferences based on substantial evidence.” Because it is Congress, not the Court, that is “far better equipped” as an institution “to amass and evaluate the vast amounts of data bearing upon the legislative questions.” (Turner II) This is especially the case in circumstances where judgments regarding foreign affairs are made (Citizens for Peace in Space v City of Colorado Springs (2007)) That is not to say that Congressional judgments regarding foreign affairs are entirely immune from the requirements of the First Amendment (Turner I) just that they are entitled to “substantial deference” (Turner II).
Before Congress enacted Section 514, it heard testimony addressing the interests of American copyright owners (click here to read HR 4894 and S.2368). In several foreign countries, American works were unprotected – much to the detriment of US interests. The general consensus during the testimonies was that far more US works were unprotected in foreign markets than foreign works protected in the US market, resulting in billions of dollars being lost each year. There was thus substantial evidence, to support Congress’s conclusion that Section 514 would alleviate the harm impacting American authors in foreign markets. In refusing to restore copyrights in foreign works in the public domain, the US was not in compliance with its obligations under the Berne Convention. As such, many of the US’s trading partners, especially those in Europe, made it clear to the US that they considered the US in violation of its obligations under Article 18. The US’s refusal to restore foreign copyright resulted in a tit-for-tat situation – foreign countries were refusing to restore copyrights in US works in the public domain because the US was refusing to do the same in respect of foreign works in the US. Some of the US’s trading partners also indicated that, in protecting US works, they would mirror the protection the US afforded to foreign works; if the US complied with its obligations under Article 18, they would also comply with their obligations under Article 18. It was very clear, that if the US wanted to protect American authors abroad, it had to “man-up” and implement Article 18.
The Plaintiffs argued that although Congress was presented with evidence regarding the need to restore copyrights generally, there was no evidence that Congress need to provide limited protections for reliance parties. They argued that there was nothing to support the contention that enacting stringent measures against reliance parties would impact the behaviour of foreign countries. To support this argument, the Plaintiffs argued that the US recognized that whatever choices the US made in its implementation of the TRIPS agreement would set an example for other countries in deciding how to implement their own legislation. It thus did not automatically follow that setting stringent conditions for reliance parties was condition-precedent for reciprocity of copyright protection. They pointed to the testimony of Eric Smith, speaking on behalf of trade associations during the Joint Hearings, who stated:
“The fact is that what the United States doe sin this area will carry great weight in the international community. If we interpret Article 18 of the TRIPS provision to deny protection or significantly limit is scope, our trading partners – just now considering their own implementing legislation – will feel free to simply mirror our views. If the largest exporter of copyrighted material in the world takes the position that we have no, or only limited, obligations, the United States will have little credibility in convincing particularly the new nations with whom we are just starting copyright relations to give us the expansive protection that we need.”
However, Congress also faced up to the reality that in imposing restoration of copyright protection to foreign authors, they would also have to “ensure that copyright restoration provides reliance users a sufficient opportunity to recoup their investment” (Statement of Senator DeConcini). However, the Plaintiffs argued that notwithstanding Congress’s recognition that they needed to balance interests, including the interests of reliance parties, Congress’s interest in enacting Section 514 was too speculative. The Court of Appeals disagreed and stated that although the court required “substantial evidence” to support the contention that Section 514 would alleviate the harms, “the evidentiary requirement was not as onerous as the plaintiffs would have us impose.” An overly demanding amount of evidence and detail is unreasonable in the legislative context as it’s “constitutionally unwarranted”.
The Plaintiffs also argued that there was some testimony that stated that just because the US implements Article 18 and restores copyright, it did not follow that every trading partner will automatically guarantee reciprocation. Although there was this evidence, the US Court of Appeals for the Tenth Circuit said this was not the only evidence on the record. The bulk of the evidence was that if the US wanted foreign countries to provide strong copyright protection for American authors, it had to do the same for foreign authors. Further, just because there was evidence that copyright restoration may not guarantee reciprocation from foreign countries, it did not follow that Section 514 was automatically unconstitutional. The US Court of Appeals concluded that in
“Considering the deference that Congress is owed, particularly in areas of foreign relations, we conclude that Congress’s judgments were supported by substantial evidence. The testimony before Congress indicated that the United States’ historically lax position on copyright restoration had been an obstacle to the protection that the United States was seeking for its own copyright owners…The United State’s ability to protect American works abroad would be achieved less effectively absent Section 514, and therefore, the government’s interest is genuinely advanced by restoring foreign copyrights with limited protections for reliance parties such as plaintiffs.”2. Is Section 514 narrowly tailored?
The Court was also tasked to determine whether Section 514 was narrowly tailored to further the government’s interests. As long as Section 514 promotes substantial governmental interests (referred to above) and “does not burden substantially more speech than is necessary to further that interest”, then the government is given the latitude to enact the legislation of it’s choosing (Turner II at 213). Further, the legislation need not be least-restrictive alternative in advancing that interest.
Narrow tailoring requires that the focus of the regulation (section 514) goes to the source of the evils that the government is seeking to eliminate “without banning or significantly restricting a substantial quantity of speech that does not create the same evils.” That occurs, when “the burden imposed by [a regulation] is congruent to the benefits it affords.” (Turner II). In very limited discussion, the Court of Appeals held that “the burdens imposed on the reliance parties are congruent with the benefits Section 514 afforded American copyright holders.”
The Plaintiffs argued that the US government could have nevertheless complied with the Berne Convention while providing stronger protections to the First Amendment interests of reliance parties. They argued that Article 18 provided considerable discretion that allowed the government to provide greater protection. The Appeals Court dismissed this argument. It held that the US’s interests were not limited to mere compliance with the Berne Convention –its interests were broader in seeking to protect American copyright owners in foreign countries and that included providing copyright protection against reliance parties. The Court held that it was immaterial whether the US government could have complied with the minimal obligations of Berne and could have granted stronger protections to the reliance parties. There was evidence before Congress that there was strong reciprocity standards being applied by its trading partners, so had Congress provided stronger protections to American reliance parties, foreign countries may have provided similarly strong protections to their own reliance parties and in doing so provided less protection to American authors.
The plaintiffs, and the district court, pointed to the United Kingdom’s approach in implementing the Berne Convention. The Court held that there is nothing in case-law that suggests that the constitutionality of Section 514 is undermined by the availability of a arguably less-restrictive model in the UK or otherwise; content-neutral regulation need not be the least restrictive or intrusive means of serving a government interest (Turner II at 54 and Ward v Rock Against Racism (1989) at 798). However, the Court nevertheless examined the UK’s model because the Court did recognize that, although not dispositive, the existence of less-speech-restrictive alternatives may be relevant in determining whether Section 514 is narrowly tailored.
No country has provided full, permanent exemptions for reliance parties. Many have, however, provided limited protections for reliance parties. Under the UK model, a reliance party is allowed to continue making use of the work it had made, or had incurred commitments to make, before the copyright was restored. Copyright owners can, however, “buy back” their rights immediately after the entry into force of the law restoring their copyright. Unless the copyright owner buys out the reliance party, it cannot enforce its copyright against said reliance party. Unlike Section 514, there is no grace period. In both systems, unless the copyright owner does something (“buys out” the reliance party, or services notices on a reliance party/files a notice at the Copyright Office), the copyright owner cannot enforce the copyright against a reliance party. The only difference, the Court of Appeals said, was that in the UK the reliance party receives compensation from the owner, whereas in the US the reliance party has a twelve month grace period to continue exploiting the work. Further, unlike the US, the UK does not provide provision for continued use of derivative works like Section 514 does – this indicated to the Court that the UK model did not seem to be more protective of reliance parties’ freedom of speech. The Court held that:
"Although the United Kingdom model is arguably more protective of reliance parties’ economic interests, we cannot say that it is substantially more protective of reliance parties’ expressive interests.”In closing, the Court stated that they believed that the Plaintiffs’ challenge to Section 514 reflected little more than a disagreement over the level of protection that reliance parties should receive:
“Congress sought to balance the interests between American copyright holders and American reliance parties. In so doing, Congress crafted a nuanced statute that offered some protections for both of these competing interests. It is not our role to opine on the best method of striking this balance."
The Plaintiffs also cross-motioned arguing that section 514 was unconstitutional on its face because removing works from the public domain was an illegitimate means regardless of the end or the importance of the stated governmental interest. They argued that there had to be a “bright line” drawn around the public domain. The Court of Appeals rejected the cross-motion very curtly. They cited their first decision in the case and stated that under Eldred v Ashcroft it was clear that Congress has expansive powers when it legislates under the Copyright Clause and the courts are not to interfere so long as the exercise of its authority is rational. It was plainly within Congress’s powers to extend copyright works that were in the public domain and there was no legal support advanced by the Plaintiffs that the First Amendment drew such a absolute bright lines around the public domain.
|Confrontation: just a little older than dispute resolution ...|
In this post the IPKat hosts some thoughts from his friend and long-time reader Aaron Wood, who is currently a consultant trade mark attorney with Olswang LLP, on a topic to which he has not previously turned his attention: confrontation analysis. Writes Aaron:
"Confrontation Analysis (CA), sometimes known as drama theory, is a development from game theory; its advocates admit the use of game theory in the conflict stage of a confrontation. The advantage of CA over game theory is said to be that it focuses on the resolution of conflict and the pre-action/negotiation behaviour of parties, to allow them to plan strategies to move towards resolution.
The main creator of the theory was Nigel Howard, a UK scholar who worked for the US for a while devising political strategies to sit alongside military strategies. He died in 2008. Howard's main work on the subject, Confrontation Analysis: how to win operations other than war, is available online here: it runs to approximately 300 pages.
A number of his papers are also available online here.
One of the main proponents of Nigel Howard's ideas is former military analyst Mike Young, who runs a company called Decision Workshops. Every so often Decision Workshops holds events that allow participants to experience how the process works. As well as these materials there is also an online forum, from which it can be seen that Nigel Howard was active until his death in discussing and developing the concept, and that it is now being looked at in a second iteration called DT2 to which Mike Young is a regular contributor.
An interesting point that emerges from the theory is the consideration of vertical relationships in negotiations, including how you make threats credible. Within a military context, this might include considering the position of politicians, the world stage and local commanders to make sure that the strategy deals with all aspects. In an IP context, this might mean creating a strategy which allows an IP counsel to integrate with a company's broader commercial perspectives and also to create local "messages" to go to local associates which confirm the credibility of higher-level threats".Aaron postulates that there is space for some serious thought as to whether CA has any mileage within IP dispute resolution. It might also be quite instructive to set up a case study by playing CA through a real dispute (at this point the global Battle of the Budweisers and the current Apple v Samsung struggles might be ripe for this exercise, or perhaps a US patent-trolling saga). The Kat thanks Aaron for raising this topic and wonders what his readers think. Merpel's a bit more sceptical and wonders whether CA isn't just a fancy dressing-up exercise for something that is often done anyway.
Saturday, 29 October 2011
|"Phew", said the IPKat, "for|
one dreadful moment I thought
I'd have to write this myself ...!
The IPKat has since received these thoughts from Dr Philip Webber (Dehns), which he is happy to share with his readers:
"Following the issuing of the recent stem cells decision from the CJEU (Brüstle v Greenpeace, C-34/10), opinions are still sharply divided as to the correctness of the decision. While it has been welcomed by Greenpeace and some church groups, many scientists have expressed deep concern about the effect that this decision may have on the stem cell industry within Europe. There are also questions about how wide the effect of the decision will be and what the European Paten Office (EPO) will do in response.
Since the background to the referral and some comments on the answers given by the CJEU have already been posted by the IPKat, that material will not be reproduced here. The following thoughts will concentrate on the possible repercussions of the decision within Europe. A small amount of background is, however, appropriate.
While the decision has provided some useful clarification on what is a "human embryo" (as least as far as patent law is concerned), the main impact of the decision stems from the comments made by the CJEU judges on the morality of stem cell-based inventions.
It will be recalled that, for many years, the Patent Office Examiners in Europe had very little guidance on what inventions were immoral, until in 1998 the European Commission passed a directive on the patenting of biotechnological inventions (the Biotech Directive). This directive confirmed that isolated genes and cells were patentable, but it also included – for the first time – a list of inventions which were said to be immoral, hence unpatentable. This list included “uses of human embryos for industrial or commercial purposes”.When the directive was passed, stem cell technology was in its infancy and the directive did not directly address the patentability – or morality – of human stem cell based inventions. In order to harmonise its practice with the Biotech Directive, the EPO incorporated the main provisions of the Biotech Directive into the EPO rules in 1999.
Given that the questions which were referred to the CJEU were largely similar to those addressed by the EPO in the WARF decision (G2/06), many expected the Advocate General to take a line in Brüstle which was similar to that taken by the Enlarged Board. However, an early indication that the European Court was going to depart from the WARF decision was provided by the Advocate General in March 2011 (noted briefly by the IPKat here). He hinted strongly that the full history of the invention needed to be taken into account when considering its morality -- not just whether the invention could be put into practice in a moral manner at the filing date of the patent. It was these comments that sent shockwaves through the European stem cell industry, with letters of concern being published in Nature and the major UK papers.
The decision of the CJEU has confirmed and clarified the comments made by the Advocate General. Essentially, the judges of the CJEU have followed the ethical line taken by the Advocate General, and they have made the point absolutely clear, stating that the full history of the invention must be considered when deciding upon the morality of that invention -
"The fact that destruction may occur at a stage long before the implementation of the invention ... is ... irrelevant".
Hence all inventions which require or have required in their past the destruction of a human embryo are now deemed to be immoral, and thus unpatentable, by the CJEU.
European patents which cover such inventions will still remain in force until they are challenged, but they will become essentially unenforceable. Patentees will have to take decisions on whether such patents still have any residual value or whether they should simply be allowed to lapse due to non-payment of renewal fees.
The decision will have binding effect on the courts of the EU member states but the EPO (which is not an EU institution) will have to decide whether to change its practice in light of the CJEU's decision. Implementation of the decision would not require either a change to the Articles or to the Rules of the European Patent Convention (EPC), so it could technically be implemented merely at the Directorate level.
More mischievous patent attorneys will be starting to consider what patents in other areas of technology might be vulnerable as a result of this decision. Does the use of slave labour to mine metals such as tin, tantalum, tungsten and gold for the mobile phone industry mean that mobile phone patents are immoral?
On a practical level, the decision has been welcomed by Greenpeace and some church groups, who have hailed the application of a moral compass to this area of technology. In contrast, many scientists have expressed dismay about the potential effect that this decision will have on European stem cell companies. They are particularly concerned about the detrimental effect that this decision may have on investment in stem cell companies. In particular, if investors cannot obtain patent protection for such inventions in Europe, are they still going to invest in European stem cell companies? The decision should not affect the ability of such companies to obtain patents in the US and elsewhere, but in the absence of European patents, will investment dry up? Or will such companies be driven out of Europe?
The irony of the situation is that the original intention of the Biotech Directive was to protect biotech inventions and to promote investment in this area in Europe, whereas the application of the Biotech Directive by the CJEU in this case could well lead to the destruction of a significant part of the European stem cell industry".
Friday, 28 October 2011
From my IP perspective, there are two kinds of contract categories that I encounter in provding transaction support. The first is your basic, non-IP focused contract, such as a share purchase agreement, in which an IP person may be called in to give advice on specific sections, most typically IP representations and warranties. The second is to provide IP-related documents that support the main agreement, most frequently in the form of assignment of IP rights.
But sometimes these two contact categories overlap in a way that creates contractual uncertainty. Perhaps the most recurrent example involves an IP assignment document that is attached as an exhibit to the main agreement which provides for an assignment of IP rights. The main agreement may provide something like this: "The Seller undertakes to assign and does hereby assign the IP Rights". Let's assume that "IP Rights" is a defined term that itself is defined something like the following--"IP Rights shall mean all Patent, Copyright, Trademarks and Know-How, as those terms are defined in the contract."
Now comes my question (actually, questions). What is the legal force of such a clause? Does it merely constitute an undertaking to assign the IP rights whereby, despite the declaration--"and does hereby assign", no actual assignment is effected? Or does the provision constitute both an undertaking to assign and, in addition, the actual assignment of such IP rights?
If the first alternative is the case, then the provision is either legally ineffective as an assignment of IP rights or, at best, it constitutes an equitable assignment in those jursdictions that recognize equitable rights in property. At stake is the validity of the purported assignment of IP rights. If the second alternative is the better position, then there still remains the evidentiary question of what IP rights have been assigned.
One way to solve this problem is to provide an exhibit to each of the defined IP Rights that describes with particularity the IP rights of the assignor that are being assigned. But it is not always the case that the definitions provide such specification of IP rights. Instead, the agreement goes on to provide that the parties will execute the attached form of IP assignment and transfer document.
In that event, unless a fully executed IP assignment document is attached to the main agreement, the attachment of a mere form of IP assignment would seem to have the legal effect of rendering the assignment clause in the main agreement--"The Seller undertakes to assign and does hereby assign the IP Rights", solely an undertaking to assign the IP rights, irrespective of the language that purports to assign these IP rights. Or maybe not. Perhaps the legal effect of the form of IP assignment in such a situation is merely evidentiary, such that the main agreement does constitutes a valid assigmnment of IP rights. Or maybe not.
The best way to handle this is to provide only for the undertaking of the assignment in the main agreement, subject to the execution of the assignment document pursuant to an attached form of assignment. In that case, however, care needs to be taken with respect to the IP assignment document so that it is consistent with the main agreement. In particular, the IP assignment document can incorporate by reference from the main agreement all the relevant definitions. However, not infrequently, the assignment document is based on whatever is the form assignment used by the attorneys involved (usually the assignor's attorneys) and care is not always taken to make the assignment conform with the provisions of the main agreement. In such a situation, the subject-matter of the IP assignment may not be consistent with the IP provisions of the main agreement.
It is roughly at this point that the transaction and IP lawyers go, hand in hand, to their litigation partner down the corridor for urgent advice.
Further to Jeremy's Friday fantasies and in particular on the topic of 'dodgy scam sites', may this Kat add that the WIPO scam warning site was indeed alive and kicking yesterday afternoon when she last checked. The reason that the site cannot currently be accessed is a different one. According to a message on WIPO's website WIPO unfortunately experienced "an electrical fire on its [premises so that] certain WIPO services will be unavailable until Monday October 31, 2011."
The IPKat hopes that everyone at WIPO is well and that the Office will be able to encourage creativity and innovation again on Monday. In the meantime, Richard Gallafent might be pleased to read that the German Patent and Trademark Office (DPMA) has a similar "warning against misleading requests for payment" on its website (English).
UPDATE: as just pointed out by the IPKat's observant friend Keith Gymer (Page Hargrave) OHIM also provides a scam list with images on its website "....but CRPT isn't there yet...!"
Ever tasted a red wine which claimed to be from Burgundy on the label but tasted nothing like what you would expect from a Burgundy pinot noir? As discussed in recent posts, where a product is from is important, whether it be tea from Darjeeling, cucumbers from Lea Valley in Hertfordshire, or wines from Champagne or Chianti. With regards to wine, there is no ingredient more important than location: it is the combination of the land, air, water and weather where grapes are grown which makes each wine unique.
A particular problem has arisen in that sometimes the grapes used in a wine were not actually grown in the region claimed. For instance, one of the most commonly misused names is 'sherry', the Anglicized name for the distinctive fortified wine made from white grapes that are grown near the town of Jerez in Spain. Often what one gets in 'sherry' in UK wine shops and supermarkets does not contain grapes from Jerez nor bear any relation to the renowned wines from southern Spain. Further, in other instances, wineries from X blend 70% foreign grapes with 30% grapes from X and label it as 'Cellared In X'.
On 26 July 2005, a Declaration to Protect Wine Place and Origin (commonly known as the Napa Declaration on Place) was signed as a 'declaration of joint principles stating the importance of location to wine and the need to protect place names'. It is now supported by 15 international wine regions: Champagne, France; Chianti Classico, Italy; Jerez, Spain; Long Island, New York; Napa Valley; Oregon state; Paso Robles; Porto, Portugal; Rioja, Spain; Sonoma County; Tokaj, Hungary; Victoria, Australia; Walla Walla Valley, Washington; Washington state; and Western Australia.
On behalf of the signatories to the Declaration, Public Opinion Strategies conducted a survey of 1,000 wine drinkers. The results were released last week and report that:
- 70% would be less likely to buy wines with misleading labels;
- 79% consider the region where a wine comes from an important factor when buying a bottle of wine;
- 75% would be less likely to buy a wine if they learned that it claimed to be from a place like Champagne, Napa Valley or Oregon, but was not;
- 96% say consumers deserve to know that the location where wine grapes are grown is accurately stated on wine labels; and
- 98% support establishing worldwide standards for all winemakers that would require that they accurately state the location where wine grapes are grown on wine labels.
Merpel, with her refined palate, thinks that life is too short to drink incorrectly labelled wine: if it says Champagne on the label, it better be Champagne in the bottle!
Friday's the day to check the IPKat's Forthcoming Events page. You just never know what exciting activities, lectures, seminars and conferences are just around the corner!
Among the events which are in the offing, the IPKat begs to inform you of the following -- all of which he has a paw in ...):
- Dr Galit Gonen's seminar on "Linkages between legal and marketing theories regarding secondary patents for pharmaceuticals", organised by the IPKat weblog, takes place next Thursday, 3 November, from 5.00pm to 6.30pm, at the London offices of Olswang LLP. Galit heads Teva's European patent litigation operation and in this seminar she presents some original research. Mr Justice Arnold will be in the chair. There are now 81 registrants for this seminar, but the room can still hold a few more. Click here for further details.
- A copyright debate: "Is NLA v Meltwater the end of browsing?" is to be hosted in the London office of Baker & MacKenzie LLP on Tuesday 15 November, 5.15pm to 7.00pm. A fuller announcement will soon appear on the 1709 Blog. Meanwhile, if you'd like to attend (admission free; 1.5 hours in CPD available; IPKat team member Jeremy in the chair and four outstanding speakers), email Naomi Harrison here and tell her the Kat sent you.
- Keith Mallinson (WiseHarbor) is giving a presentation at the London offices of Olswang LLP on Tuesday 22 November, 5.00pm to 6.30pm, under the title “Facts and figures on FRAND licensing for standards-essential IP”. Keith is a regular guest contributor to the IP Finance weblog (to which two IPKat team members contribute) on FRAND-related issues and has made a major contribution to debate on this sometimes contentious topic. Registrations currently stand at 18 and admission is free, which means that anyone who is turning up for the refreshments should be able to do quite well -- but we're expecting a surge in bookings soon. Click here for further details.
- IBC's third annual International Patent Litigation Conference takes place on Thursday, 8 December in the Bloombury Hotel, London -- just a few paw-paces from this Kat's habitual Holborn haunt. There is a generous 10% discount available to readers of this blog who quote the VIP Code FKW82249PLL when registering. All you need to know is just one click away.
Lea Valley cucumber. A fresh biographical note for Catherine will be added to the team's dramatis personae once she has decided which bits are worth including. In the meantime, the other Kats chortle in unison "Welcome back!"
here. The IPKat's ideal distance learning programme is illustrated on the left ...
As editor of the Journal of Intellectual Property Law & Practice (JIPLP), this Kat often receives interesting submissions of articles for publication on the theme of intellectual property and religious law. Indeed, in the past two years he has been offered contributions on the impact upon intellectual property law of (in alphabetical order) Christian, Islamic and Jewish legal doctrine. None of these articles has been published in JIPLP since, regardless of their merit, their content has tended to be philosophical and historical and has not sufficiently addressed the "law and practice" criteria which the journal's publisher Oxford University Press and also its peer reviewers seek to apply with increasing severity. Good news for IP-and-religion enthusiasts, however, is just around the corner. Oxford University Press is in the process of launching a new journal, the Oxford Journal of Law and Religion (OJLR), the details of which are accessible from its website here. If this subject enthuses, involves or troubles you sufficiently to want to write an article on it, OJLR is the place to send it!
Those dodgy scam sites again. The IPKat's longstanding friend Richard Gallafent (Gallafents LLP) has written to him on the subject of the CRPT Central Register for Patents and Trademarks. He draws attention to the fact that the World Intellectual Property Organization (WIPO) warning site is out of action. Indeed, this Kat has just verified that visits to the first three organic results for a search of WIPO + warning:
http://www.wipo.int/pct/en/warning/pct_warning.htmhttp://www.wipo.int/portal/en/scam_warning.htmlhttp://www.wipo.int/contact/en/area.jsp?area=scamsall generated the same depressing message:
404 - File or directory not found.The resource you are looking for might have been removed, had its name changed, or is temporarily unavailable.Unable to check if CRPT was on the WIPO list, Richard then checked out www.crpt.eu, and visited the "Trademark publications" page. He writes that,
"assuming you have not been rendered completely senseless by reading the terms and conditions page - I particularly liked the concept of "reproached functions", you can put in the name of a large city, and click search. You can then see how many entries there are.
If one assumes that all offers to mark owners in the UK are for the same price (€495 I am advised by someone who received such a letter), and that all the current entries result from mark owners paying the sum in question, then just the income from mark owners with LONDON in their address amounts to €162,855.
So lets have no more of that unqualified asserttion that you can't make money out of IP!"Thanks so much for your diligent efforts, Richard. This Kat hopes that readers bear them in mind --and that the WIPO warning services is soon working again.