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

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

Tuesday, 31 July 2012

DOLPHIN: Assessing the Similarity Between Goods for Identical Word Signs

The names that we give to objects, norms, types, classes and many other things, be they corporeal or incorporeal, and how we define such things are often sources of contention. Perhaps this is due to an inherent subjectivity, our perception of the elements that make up the definition are themselves limited. Moreover, the tools that we use to communicate the definition further dilute the accuracy and precision of a definition. The various categories of linguistics such as the lexicon, grammar and dialect, let alone issues of semantics and pragmatics, can obscure the effective communication to another human being of the intention. The great abyss between words and meaning. Are things defined by their types or are types defined by their things? Such queries came to this Kat's mind when considering the General Court's judgment in Case T-361/11 Hand Held Products, Inc. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), where the similarity between goods in the same class for the identical word sign DOLPHIN was assessed on the application of EU law's well-known relevant factors including, among other things, nature, intended purpose, method of use, whether the goods are in competition with each other or complementary and close connection.

The action was brought against the decision of the First Board of Appeal of the OHIM that rejected an opposition to the registration by Orange Brand Services Ltd of the identical word sign DOLPHIN for goods in the same class as the earlier mark. The applicant and proprietors of the earlier mark, Hand Held Products Inc. claimed that the goods (in Class 9, Nice Agreement), 'barcode and image scanners and related software for use therewith', covered by the earlier mark were sufficiently similar to the goods, 'telecommunications systems and installations; interactive terminals for displaying and ordering goods and services; electrical and electronic accessories' covered by the mark registration was sought for, that the likelihood of confusion and association with the earlier mark (Article 8(1)(b), Reg. No. 207/2009) meant that the opposition proceedings should not have been rejected.
This Kat loves dolphins

Before embarking on a glorious assessment of similarity and likelihood of confusion, the Court rejected that the Board of Appeal's assessments of the similarity of the goods in question, which refute the applicant's arguments, amounted to new arguments justifying the submission of evidence for the first time before the Court. So how did the Court distinguish the goods for identical marks?

First, it compared barcode scanners and interactive terminals for displaying and ordering goods and services and found that the essential difference between them is in terms of their method of use and intended purpose: the goods were not substitutable nor in competition with each other nor complementary since they are intended for different publics. The former is a device intended to be used by professionals for capturing encrypted data in a particular way, whereas interactive terminals have the specific purpose of enabling the general public to obtain information about goods and services. Although certain interactive terminals may have integrated barcode scanners that does not mean that the goods are of the same nature. Further, products of different origin may be assembled in a composite third product, but that is not a sufficient ground for concluding that all those components are similar and that, for the relevant public, they have the same origin (this was the sentence that got this Kat considering the nature of things).

Secondly, it compared barcode and image scanners and related software for use therewith and telecommunications systems and installations and found that, again, the intended purpose was different. This second assessment was broadly reasoned the same as the first: The fact that telecommunications systems and installations are found in an ever-increasing number of electronic devices does not suffice to change the essential characteristics of those devices (at [54]).

Thirdly, it compared barcode and image scanners and related software for use therewith and electrical and electronic accessories. Here, however, the Court found that the two products were similar contrary to the opinion of the Board of Appeal and OHIM that barcode scanners are hand-held or stationary input devices. Barcode scanners are not stand-alone devices but rather accessories to main devices in the absence of which the latter would serve no purpose. 

Finally, it assessed the overall likelihood of confusion globally on the well settled factor that a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Although the Board of Appeal was entitled to conclude that there was no likelihood of confusion in respect of the goods covered by the earlier mark and interactive terminals for displaying and ordering goods and services and telecommunications systems and installations (the first and second types of goods), it had erroneously concluded that there was no likelihood of confusion so far as accessories were concerned: 'There is in fact a real risk that the public might believe that the goods at issue come from the same undertaking or from economically linked undertakings' (at [64]).

In conclusion, the Board of Appeal's decision to reject the opposition in respect of electrical and electronic accessories was annulled, and the remainder of the action was dismissed. The parties were to bear their own costs.
Cats hide in barcodes, sometimes

So there we have it. An example of legal reasoning void of subjective element, or is it?

The judgment was also reported on on Class 46 on the 23rd of July 2012 here. Do the IPKat readers think that such judicial determinations of what goods are may dwindle in light of the changes post-IP TRANSLATOR, as reported by the IPKat here and here? And, more broadly, what is the nature of a thing that means it can be a dissimilar type determined by the class of user but then similar by the categorisation of its nature?

Tuesday tiddlywinks

Have you checked out the IPKat's Forthcoming Events page recently? Quite a few new items have been added of late, so make sure you mark your diaries for the ones you fancy.


Acte eclair
Last Friday the IPKat was wondering about the background leading to the new Czech preliminary reference to the Court of Justice of the European Union in Case C-299/12 Green - Swan Pharmaceuticals CR. One reader, known only as LB, kindly posted some information as a comment below that Friday post. The IPKat has also received the following from fellow blogger Martin Husovec (Legal Counsel & Researcher at EISi):
"The company Green-Swan Pharmaceuticals CR (Green-Swan) sells the food supplement "GS Merilin", which packaging also includes the following sentence (health claim): 
"The preparation also contains calcium and Vitamin D3, which help to reduce a risk factor in the development of osteoporosis and fractures". 
Czech Agriculture and Food Inspection Authority (CAFIA) considered this claim to be in conflict with art. 10(1) of Regulation 1924/2006, which prohibits some health claims in the labeling or advertising of food products. As a consequence, CAFIA ordered Green-Swan to pay 200,000 CZK (7,900 EUR) in fines. Green-Swan appealed the fine before the Regional Court in Brno, arguing that its health claim does not constitute a ‘reduction of disease risk claim’ as defined in art. 2(2)(6) Regulation 1924/2006. It also argued that Regulation 1924/2006 did not apply to its case because of an inter-temporal provision - art. 28(2) Regulation 1924/2006. This article provides that 
"Products bearing trade marks or brand names existing before 1 January 2005 which do not comply with this Regulation may continue to be marketed until 19 January 2022 after which time the provisions of this Regulation shall apply." 
Green-Swan argued that this provision applies not only to trade marks or brand names, but also to attached commercial communications as the objected health claim, so the Regulation should not apply in its case. The Regional Court in Brno rejected these arguments and confirmed the fine imposed by the CAFIA. Green-Swan appealed further before the Czech Supreme Administrative Court. The court considered that these legal questions were neither acta clair nor acte éclairé and thus submitted preliminary questions to CJEU".
The original Czech decision can be accessed here -- in Czech.


Mayotte: where equestrian|
events are strictly for the
sea-horses ...
Mayotte draws closer to Europe.  According to the European Council Decision of 11 July 2012 amending the status of Mayotte with regard to the European Union (which has just been published on the online version of the Official Journal of the European Union here), the Indian Ocean archipelago of Mayotte is ceasing to be an "overseas country or territory" governed by France and is being metamorphosed into "an outermost region of the Union within the meaning of Article 349 TFEU".  The IPKat isn't sure what level of IP protection has existed in Mayotte -- and will presumably continue to exist -- before this momentous event takes effect on 1 January 2014, but he's sure that it means something, if only for customs regulations and the free movement of goods within the European Economic Area.  Can any reader please advise?


Around the weblogs.  From the Brandprotect Blog comes "Shell’s “Let’s Go” Campaign Hoax Fools Many, Spreads Fast, Stains Their Reputation", reporting on a stunningly well-executed brand attack on Shell by Greenpeace and the Yes Lab. While every brand is a potential sitting target for action of this nature, some brands are always more likely to be target than others -- and there's no easy way to deal with treatment of this nature. Over on IP Draughts, Mark Anderson surprises us all with a variation on a popular theme: "10 words and phrases you should use in IP contracts", the use of which will make Mr Pettifog (right) "marginally less irritable".  Design law blog Class 99 contains a full-length analysis by Patrick Wheeler (Collyer Bristow) of a very confusing passing-off case, pitching HENLEY against HENLEYS, in which the Court had to grapple with "wrong-way-round" confusion -- where the evidence suggests that consumers think the claimant's goods are the defendant's. Turning to copyright, Iona Harding (1709 Blog) looks at the latest stumbling block that WIPO's proposed exceptions in favour of the blind and partially-sighted have run into.


"Hooper Report: Industry should lead on new ‘Copyright Hub’" is the breaking news from the UK this morning. It comes from a Department for Business, Innovation and Skills media release which reads, in relevant part, as follows:
After years of back-breaking, heart-breaking toil,
British creatives get what they've always wanted --
a chance to participate in a real live steering group
"The creative industries need to play a key role in leading and funding the Copyright Hub, a marketplace for rights to streamline copyright licensing and make transactions easier for creators, rights holders and users, according to an independent report published today by Richard Hooper. The report, ‘Copyright works’, was Richard Hooper’s final report on the feasibility of developing a Digital Copyright Exchange. The report’s two key recommendations are for the creation of a not-for-profit industry-led, industry-funded Copyright Hub, and the establishment of a steering group to drive forward and oversee the design and implementation of the Hub.
The Copyright Hub will have five main purposes, to:
act as a signpost and be a navigation mechanism to the complex world of copyright;

be the place to go for copyright education;

be the place where any copyright owner can choose to register works, the associated rights to those works, permitted uses and licences granted;

be the place for potential licensees to go for easy to use, transparent, low transaction cost copyright licensing;

be one of the authoritative places where prospective users of orphan works can go to demonstrate they have done proper, reasonable and due diligence searches for the owners of those works before they digitise them. ...".
This Kat is moving house between now and the end of the week and hasn't had time to digest this. Nor -- yet -- does he have any online facility in his new abode, though he's working on it. He hopes that fellow Kats and readers will give this some thought and provide him with something useful to read when he's next online.


From the IPKat's convivial friend Roland Mallinson (Taylor Wessing) comes the following little snippet:
"There was a story last week in the London Evening Standard about the Americans building an exact replica of the London 2012 Olympic BMX track in California to help with their practice. It set me thinking….
Once upon a time it was
only the bikes that got
design protection ...
Aside from issues of sporting ethics and the universal Olympic values, this story raises an interesting question for IP lawyers. On the presumption that the design of these BMX tracks requires considerable skill and expertise (and the website here suggests it does), they will be the subject of copyright and, in Europe at least, unregistered design protection. If the design has only been made public within the past year, the design could also still be registered (again in Europe, at least). The Americans seem ready to admit they copied the design, right down to the last hump -- thanks to the computer wizardry employed. Since that has been done in Chula Vista, it would be an issue of Californian or Federal US law. Arguably the process of creating the computerised 3D scan of the track in the UK gives rise to an infringing act here. Since this is the only Olympic event to which I managed to get tickets for my family, I will now be watching with renewed professional interest, i.e. just how good was the American copy? I wonder if Mitt Romney has any views he'd like to share on this".

Monday, 30 July 2012

Life after IP TRANSLATOR, or why António Campinos is a good sport

"Kick boxing? I thought you said Tick-Boxing!"
Spare a thought for the IPKat's friend António Campinos, President of the Office for Harmonisation in the Internal Market. While other Presidents have been travelling to London to watch their sports heroes compete for gold, or merely watching it on their giant-screen tellies while keeping an eye on political events nearer home, some Presidents have a job to do.  Our António -- a salaried President rather than the President-for-Life or popularly elected sort -- has been busily preparing OHIM for the next stage in its existence, life after IP TRANSLATOR (on which see earlier posts here, here and here, among others). In the letter which appears below, he sets out his Summer Manifesto, in the form of a letter to Europe's choicest trade mark practitioners:
IP Translator: New provisional feature for the identification of goods and services when e-filing CTM applications

Dear Users

In my letter of 20 June last regarding the Court ruling C-301/10 on the “IP Translator” case, I indicated that OHIM would be revising its e-filing systems to provide a user-friendly solution when Community trade mark (CTM) applicants use class headings to claim protection for all the goods and services [does Merpel detect sports terminology here? tennis, perhaps?] in the alphabetical list of the Nice Classification. I am now pleased to inform you that during August, OHIM will integrate a new provisional feature in the section on goods and services in the electronic Community trade mark application form. The new feature will allow Community trade mark applicants to tick a box [the President has an interest in boxing?] to indicate that the application intends to extend the coverage beyond the Class Heading  [heading? That's football ...] to the alphabetical list of the Nice Classification. This box tick option will replace the interim efiling requirement of attaching a separate declaration, meaning that the submittal of a declaration [declaration! That's cricket, sadly no longer an Olympic sport] will not be required nor accepted. If you have requested the full Class Heading title in the goods and services section of the e-filing form by ticking the indicated box, a confirmation text will be generated to the Class Heading title specifying the intention of the application to cover the entire alphabetical list of the Nice Classification for the respective class.

Even in the Roaring 1920s, modesty prevailed
We hope that this update will facilitate greater efficiency and transparency [Merpel, a modest feline, hopes that transparency is not the next thing to happen to ladies' beach volleyball uniforms, which have become steadily less apparent since the sport was introduced in the 1920s] for both users and examiners in light of the implications of the Court ruling C-301/10. As expressed on prior occasions, the work being carried out under the Convergence project relating to the Harmonization of Goods and Services and the taxonomy project are fundamental to achieving harmonization on classification practices in the EU. The concrete results of the taxonomy project that are expected by the end of this year will allow CTM applicants to clearly and precisely specify the scope of protection desired. Specifically, the CTM e-filing system will be enhanced and completed with a taxonomy structure functionality ensuring that applicants have the necessary tools and services to apply a clear, precise, practical and consistent approach when identifying goods and services.

Should you have any comments on the new feature proposed on the CTM e-filing form, we would be pleased to hear from you by Monday, 6 August 2012 [That doesn't give much time to get one's thoughts together. A bit of a sprint, really]. We apologise for this short notice but your understanding is appreciated taking into account the summer break [break? But sadly snooker, a sport in which Team GB might be expected to excel, is not an Olympic sport] period.

Catus Astutus Festivus - an Olympics update

The opening ceremony of the Olympic Games presents one of the greatest ever opportunities for brand promotion.  So it was oddly refreshing to witness a non-commercial display on Friday.  As host country however, Brand UK received maximum exposure from a parachuting HM Queen Elizabeth II and James Bond along with a speedboating David Beckham and a crooning Sir Paul McCartney.

Away from the official events, several brands did their best to ensure they were not left out of the party.  After all, and as we're told so frequently by the media, the Games is for everyone [and funded by everyone, or at least everyone who pays tax in Britain - Merpel].  Tip of the hat to all those who brought these anti-ambush marketing stories to the IPKat's attention and special mention to Lee Curtis for compiling the links so neatly.

First out of the starting blocks comes Paddy Power, which is no stranger to ambush marketing after featuring on Danish footballer Nicklas Bendtner's underpants during the European Football Championships in June.  This time around the Irish bookmaker sponsored an Egg and Spoon Race in London, France much to the chagrin of LOCOG (London Organising Committee of the Olympic and Paralympic Games), the body charged with enforcing the Olympic anti-ambush marketing legislation.  

After ordering the removal of Paddy Power's advertisements from billboards, LOCOG eventually decided the odds were not in its favour and decided to "monitor the situation" instead [perhaps it was the threatened counterclaim by Paddy Power to seek a High Court declaration of non-infringement for all current and future advertisements which persuaded LOCOG].

Nike also ran with the idea of using geographically identical place names in its video advertisement.  The "Find your Greatness" [or to everyone else the "we're getting as close as-possible-to-the-Olympics-without-actually-breaking-the-rules"] campaign features normal athletes from places called London around the world.  And it turns out that there are quite a few, though the number of people who will associate the word with anything other than the host city of the Games after watching the video can be counted with one paw.

Also picking up the baton is Oddbins, the British wine and alcohol retailer.  Clearly incensed at the Games' sponsorship rules, its managing director issued a statement so full of vitriol a summary could hardly do it justice:
"...thanks to LOCOG... any business without the tens of millions of pounds required to join the cabal of multinational brand partners for the Games are reduced to the status of beggars on the gilded streets of the Olympic movement. 
We have taken steps to ensure our planned window displays do not flout any of these asinine rules, but we are doing this primarily to highlight the absurdity of the fact that the British people - who are paying for these games - are at the same time being subject to ridiculous rules. Even though our window designs will be within the rules, we would not be surprised if LOCOG goes loco".
Oddbins has offered a discount to anyone wearing Nike trainers with Vauxhall car keys, an RBS MasterCard, an iPhone, a bill from British Gas and a receipt for a Pepsi bought at KFC. And the campaign appears to be working with online sales apparently up by 22% [if the sales are online how can they be sure what trainers the consumer is wearing?].
The classification of non-Olympic sponsor brands as destitute probably goes a little far but this Leodensian Kat would be glad to hear of anyone who can satisfy Oddbins' very strict criteria (and not just to save a few quid on a bottle of vino).
blog2_620On the final stretch we have Brewdog, a Scottish brewer and several times winner of the 'World's Strongest Beer' competition.  With a reputation for unconventional product names and provocative marketing, it does not disappoint with 'Never Mind the Anabolics'.  Marketed as a 6.5% India Pale Ale infused with creatine, coffee, guarana, ginseng, gingo, maca powder, matcha tea and kola nut, Brewdog launched the product by stating on its website:
"It is about time the greatest sporting event on the planet was not sponsored by fast food companies, sugary fizzy drinks producers or monolithic multi-national brewers. A burger, can of fizzy pop and an industrial lager are not the most ideal preparation for the steeple chase or the dressage (for human or horse)".
The IPKat loves an original and highly distinctive trade mark and Brewdog's is certainly up there as a gold medal contender.  But with a clearly political message about the nature of certain sponsors' products and the use of performance-enhancing drugs by athletes, this Kat wonders whether LOCOG might prefer to avoid drawing further publicity to the issue.

Sunday, 29 July 2012

For your delectation -- two new titles

Intellectual Property: From Creation to Commercialisation - A Practical Guide for Innovators & Researchers is the debut IP law book by John P Mc Manus, all the way from Ireland, the publisher being Oak Tree Press.  John's background is impressive. A scientist by training, he has held posts with Enterprise Ireland and NovaUCD. Group IP Manager for nanotechnology firm NTERA, he has also acquired extensive presentation experience, via training workshops for the European Patent Office's European Patent Academy.  So what is this book all about?  The publisher's web blurb explains:
"For many knowledge-intensive or technology-based start-up companies, the professional management of intellectual property (IP) is critically important. In fact, IP may be the main asset by which the value of a young company is determined and on which decisions to invest in the company are based – and so IP needs to be considered very early in the planning process.

Intellectual Property: From Creation to Commercialisation provides a detailed grounding for innovators and researchers [and not for lawyers -- this accounts for the absence of accumulated legal data in the form of footnoted references to learned articles clinging like barnacles to the foot of each page, daunting case lists, statutes etc, as well as the presence of some welcome clear, direct prose]. The book starts with the source of innovation – that is, at the point where resourcefulness and creativity combine to develop new opportunities through problem-solving – and examines the critical steps that need to be carefully managed in the process surrounding the creation of IP and managing its development from concept through to exploitation. This involves the steps of identifying, capturing and assessing the value of IP. Useful recommendations for managing the transfer of IP from a research environment to the knowledge economy are provided and case studies illustrate pitfalls to watch out for.

Readers can expect to gain a broad understanding of IP and the innovation process. 
Specifically, they will learn:

* The benefits of implementing procedures to ensure that IP can be protected, managed and exploited effectively.

* How to assess the most appropriate routes to market, such as licensing or sale of their IP, or establishing a spin-out company to deliver a service or product offering.

* How to present a viable business case to potential funders and investors".
As one might expect, while the words "Intellectual Property" feature in the title, some types of IP are very much more central to its core than are others: patents and ancillary means of protecting the fruits of organised scientific research are very much more the concern of innovators and researchers than are rights in trade marks and many forms of copyright, and this is reflected in the author's guidance to his intended readership. This guidance, incidentally, spans not merely the period from the IP's conception to its birth: it runs a long way both ahead of and after that period, taking in areas such as due diligence, project management and IP valuation which are more the province of the men in grey suits than those who in white lab-coats. Oh, and there's also a useful three-page table listing acronyms and initials that the reader is likely to encounter both in reading this handy book and, if his innovation is worth exploiting, in the real world thereafter.

Bibliographic data: ISBN 9781781190241. Hardback xvi + 314 pp (web page here) at 65 euro. Also available as an e-book here at 30.74 euro. Rupture factor: small.

************************************

The Oxford Introductions to U.S. Law: Intellectual Property is a handy student introduction to the subject which will be particularly appreciated by those students who do not intend to study the subject but want to know what they're missing, and possibly also for those who are agonising over which topics to choose and need a bit of expert guidance as to what the subject does, and does not, cover. The author, Dan Hunter, is Professor of Law at New York Law School and an expert in internet law, intellectual property, and artificial intelligence and cognitive science models of law. He endears himself to the IPKat by having a place in the blogosphere, being a co-founder of the scholarly Terra Nova blog. Now, what do the publishers have to say about this slender book? According to its web-blurb:
"In The Oxford Introductions to U.S. Law: Intellectual Property, prominent intellectual property scholar Daniel Hunter provides a precise, engaging overview and careful analysis of current laws of intellectual property and their history. Hunter first focuses on the central areas of intellectual property law, including copyright, patent, trademark, and trade secrets. He then moves beyond the basics, exploring the politics, economics, psychology and rhetoric of possession and control that influence and interact with this area of law.

Hunter explains how intellectual property has contributed greatly to the innovations that we, as a society, need in our modern lives. He also describes ways in which the expansion of intellectual property can reduce innovation by stopping others from implementing great ideas or producing new work. Hunter helps readers think about modern intellectual property in a way that allows them to see how innovation and progress are linked to intellectual property law, and how small changes in the laws have had significant consequences for our society. Ultimately, Hunter helps readers form their own views about the various areas within the arena of intellectual property [Merpel is amused by this bit about helping readers form their own views. It seems to her that one of the biggest problems faced by IP writers is getting readers to put their views aside for long enough to reflect on other people's]".
In short -- and one can really write "in short" here, since this is genuinely a short introduction to a vast subejct -- this is a fun book. It's stimulating, informative and harbours some big ideas. It's also a useful read for Europeans and other non-USans who occasionally need reminding that, while superficially IP rights work much the same in most jurisdictions, the US is another world, and a very important one at that.

Bibliographical data: ISBN 978-0-19-534060-0.Paperback: xiii + 242pp. Rupture factor: none. Web page here

Friday, 27 July 2012

CJEU to give pharma company branding a health-czech

Even with his eyes shut, Oscar could always
taste which colour the swans were -- but he
liked the black ones best ...
All the way from the Nejvyšší správní soud - and you've got to believe the IPKat, it really is the Nejvyšší správní soud; the Curia website says so -- comes Case C-299/12 Green - Swan Pharmaceuticals CR, a reference from the Czech Republic for preliminary rulings on the following questions:
1. Is the following health claim: ‘The preparation also contains calcium andVitamin D3, which help to reduce a risk factor in the development of osteoporosis and fractures’, a reduction of disease risk claim within the meaning of Article 2(2)(6) of Regulation ... 1924/2006 ... on nutrition and health claims made on foods, as amended by Commission Regulation ... 116/2010 ..., even though it is not expressly implied in this claim that the consumption of that preparation would significantly reduce a risk factor in the development of disease mentioned?

2. Does the concept of a trade mark or brand name within the meaning of Article 28(2) of Regulation ... 1924/2006 ..., as amended by Commission Regulation ... 116/2010 ..., also include a commercial communication on the packaging of the product?

3. Should the transitional provision in Article 28(2) of Regulation ... 1924/2006 ..., as amended ..., be interpreted to refer to (any) foods which existed prior to 1 January 2005, or to refer to foods to which a trade mark or brand name was affixed and which existed in that form before that date?
The IPKat hasn't got a clue what any of this is about, since none of the background facts are available to him and they certainly aren't on the webpage of the UK Intellectual Property Office that announces the existence of the case [Readers -- can you help? What are the trade marks concerned, and what are the claims made about the product?].  If you would like to comment on this case, you can email Policy at policy@ipo.gsi.gov.uk and advise the government whether it should get involved.  Turn off your TVs and block out the O******* if you want to respond, though -- you've only got till  Wednesday, 1 August 2012, to do so.

Incidentally, Article 28(2) reads as follows:
Products bearing trade marks or brand names existing before 1 January 2005 which do not comply with this Regulation may continue to be marketed until 19 January 2022 after which time the provisions of this Regulation shall apply.
Green Swan here
Swans in other colours here: White, Black, Red, Yellow, Turquoise ...

When the US Supreme Court Issues a Manifesto, It's Time to Listen

This Kat recently had an opportunity revisit the patent decision given by the United States Supreme Court on 20 March in Mayo Collaborative Services v Prometheus Laboratories, Inc. When judgment was given, the IPKat offered a vigorous analysis of this judgment, not sparing the rapier of his critical paw, here. What caught my attention this time was not the Court's belaboured analysis in reaching the conclusion that the medical treatment subject-matter was not in fact subject matter. Rather, this Kat was struck by the final paragraphs of the Court's decision, where it engaged in a brief soul-searching on the state of patent jurisprudence. In a word, the Court has provided a manifesto for action in making the patent system more responsive to societal needs.

In pertinent part, the Court set out this manifesto as follows:

" .... Prometheus, supported by several amici, argues that a principle of law denying patent coverage here will interfere significantly with the ability of medical researchers to make valuable discoveries, particularly in the area of diagnostic research. That research, which includes research leading to the discovery of laws of nature, is expensive; it “ha[s] made the United States the world leader in this field”; and it requires protection [citation omitted.]

Other medical experts, however, argue strongly against a legal rule that would make the present claims patent eligible, invoking policy considerations that point in the opposite direction. ... [They] tell us that if “claims to exclusive rights over the body’s natural responses to illness and medical treatment are permitted to stand, the result will be a vast thicket of exclusive rights over the use of critical scientific data that must remain widely available if physicians are to provide sound medical care” [Citations omitted].

We do not find this kind of difference of opinion surprising. Patent protection is, after all, a two-edged sword. On the one hand, the promise of exclusive rights provides monetary incentives that lead to creation, invention, and discovery. On the other hand, that very exclusivity can impede the flow of information that might permit, indeed spur, invention, by, for example, raising the price of using the patented ideas once created, requiring potential users to conduct costly and time-consuming searches of existing patents and pending patent applications, and requiring the negotiation of complex licensing arrangements. At the same time, patent law’s general rules must govern inventive activity in many different fields of human endeavor,with the result that the practical effects of rules that reflect a general effort to balance these considerations may differ from one field to another [citation omitted].

In consequence, we must hesitate before departing from established general legal rules lest a new protective rule that seems to suit the needs of one field produce unforeseen results in another. And we must recognize the role of Congress in crafting more finely tailored rules where necessary [citation omitted]. We need not determine here whether, from a policy perspective, increased protection for discoveries of diagnostic laws of nature is desirable."
This Kat found this to be fascinating set of ruminations by the Court on the tensions pulling at the patent system and the uncertainties that these tensions impose on the judiciary. In reading the judgment, there is the recurring feeling that the Court's repetitive style in setting out the key points of its analysis reflects something deeper -- the Court's need to convince itself, as much as the reader, of the correctness of its result. This is especially so, since the judgment overruled the decision given by the Federal Circuit Court of Appeals, the very court established in the 1980s to bring greater expertise and certainty to patent jurisprudence at a time when the United States was increasingly fearful of the challenge of Japanese technology.

Fast-forward 25 years and the United States is enduring another bout of inner-doubt, extending to its ability to continue to be the world leader in innovation. It is this state of uncertainty that explains, perhaps, the Court's discursive departure into the world of policy (as previously noted, "the justices read the newspapers" ... and watch television and view online content). Surely the Court had no intention to rely on a policy argument to determine its decision in the case -- yet it devoted nearly a page of its judgment to these policy considerations, in the main, that underscore the fault-lines in the patent system.

The Court notes that the patent interests of the medical research treatment industry is contrary to those of the care-givers; the patent system itself is inherently in constant tension between the advantages and disadvantages that flow from the grant of exclusion rights. Against this backdrop, the Court suggests that a "one size fits all' patent system may be too blunt a legal instrument; what works as a matter of patent law in one industry may not work in another. That said, however, the Court either feels too uncertain about its own capacities or considers that it lacks sufficient legal authority --or both -- to be the trailblazer by departing from current law. If change is to occur, it will be for the US Congress, as grid-locked as it seems to be on most issues these days, to carry the torch, hardly an optimistic scenario.

And so the Court's manifesto in this judgment, directed to all with a stake in the patent system. It will be interesting to see whether the Court will revisit this manifesto in future patent cases, depending upon legislative and industrial developments.


As for "carrying the torch", to all this Kat's friends in London--let the games begin!

"Cool guys don't look at explosions" and other action-movie commonplaces in the age of 3D

Some bloggers like to type
in ergonomic position
Action movies have been among the most successful genres ever in cinema history.
Though predictable (but only ... ehm ... sometimes), these films are great fun and also source of inspiration to others (how to forget the memorable scene in Shrek 2 in which Pinocchio rescues Shrek, Puss in Boots and Donkey in pure Mission Impossible-style? French version available here). 
However, as clarified in the relevant Wikipedia entry, action movies are populated with stock characters/plots/scenes. They are 
"a film genre where one or more heroes is thrust into a series of challenges that require physical feats, extended fights and frenetic chases. They tend to feature a resourceful character struggling against incredible odds, which may involve life-threatening situations, an evil villain, and/or being pursued, with victory achieved at the end after difficult physical efforts and violence. Story and character development are generally secondary to explosions [a thorough musical explanation of this concept can be found here], fist fights, gunplay and car chases."
Who said that action movies are
just about violence and explosions?
Although similar features are common to any theatre/movie genre (and this has been the case since Ancient Greece), it seems that with 3D techniques things have gotten worse than they used to be in 2D times.
A couple of days ago Funny or Die released a mash-up trailer which is claimed to be suitable for any 3D movie, since "If you see one 3D movie this summer, you've seen them all."
As explained in the teaser and also reported here:
"This Summer ... Sh*t is going to fly at your screen ... in derivative ways. Arrows will fly at your face [apparently also the much awaited (at least in Italy, where it has not been released yet) last film of the Dark Knight saga includes an archery scene]. You'll free fall from a skyscraper in New York City. Cities will be destroyed. Buildings will fall in similar ways. There'll be alien ... bug ... things. And for some reason, a blue light will have to shoot up into the sky at some point."

A young (and possibly attractive) 
Magneto portrayed whilst thinking 
about US copyright
If this is true (as it seems to be), what are the implications as far as copyright is concerned? (I know: this is far less fun than discussing whether Avengers 2 will be shot any time soon …)
Most of these films are US productions and so are protected under US law.
As is well known, US copyright includes the notion of scénes à faire (French for "scene to be made" or "scene that must be done"). This a principle which excludes copyright protection in certain elements of a creative works which are mandated by or are customary to a specific artistic genre.
As exemplified in the relevant Wikipedia entry, a spy novel is expected to contain elements such as numbered Swiss bank accounts, a femme fatale, and various spy gadgets hidden in wristwatches, belts, shoes, and other personal effects. As a consequence, no copyright is held to subsist in these elements.
"Average" copyright avenger on duty
To be more precise, in the monumental Nimmer on Copyright, it is explained that the doctrine of scénes à faire does not limit the subject matter of copyright; instead, it defines the contours of infringing conduct. So it is relevant to the evaluation of infringement, rather than the actual subsistence of copyright.
If all the above is correct, then a couple of questions may arise:
1. Is the use of 3D techniques contributing to a "standardisation" in the characters (by making Robin Hood or Hawkeye-style heroes as popular as ever), scenes, and - possibly - plots of action movies?
2.  If this is the case, then do these films have the potential to include fewer and fewer copyright-protected elements than 2D predecessors? What are the implications as far as potential copyright litigation is concerned?
3. Do these 3D action movies need some Wolverine-like (copyright) healing factor? In other words: do they have to strengthen their originality factor, also considering their economic importance and huge popularity [last year's US box office Top 10 included TransformersMission ImpossibleSherlock Holmes and Thor] ?

Role of the IPO

A different type of roll
Some soul-searching for the United Kingdom's Intellectual Property Office (IPO) comes in the form of the recently published government response to the Hargreaves review on the Role of the IPO. The response begins with “The purpose of the IP regime is to incentivise innovation” which gives you an idea as to the Hargreaves proposed changes.  As Katonomist posts have indicated, your Katonomist thoroughly sees IP regimes as innovation policy, but recognises that this is a matter of opinion. 

The IPO is staffed by dedicated civil servants who 
promote innovation by providing a clear, accessible and widely understood IP system, which enables the economy and society to benefit from knowledge and ideas.” 
At the same time, the IPO must navigate the waters of politics.  Such waters are known for placing occupants between the devil and the deep blue sea.  Let’s take a look at where the tide is flowing in the case of the role of the IPO.

Hargreaves proposed the following (as paraphrased in the response): The IPO
should have an overarching legal mandate to promote innovation and growth, and state that IPO decisions will be based in evidence and take due account of the impact of the IP system on innovation and growth.  The aim of the proposal was to improve the way in which the IPO gathers evidence to inform the development of policy. To do this, the Review proposed four new functions:
A duty to keep under review the impact of IP and IP rights, and market positions founded on IP rights, on innovation and growth, including adverse impacts on competition and the competitive spur to growth, and to report annually.
Powers to prepare one-off reports on specific areas or cases where there appears to be detriment to competition or consumer welfare.
Powers to require information to support the exercise of these reporting functions.
Powers to make recommendations to the competition authorities, and to fund investigations that competition authorities may make as a result.
These proposals make your Katonomist a very happy kat.  Proper scrutiny of IP under the innovation lens would allow the IPO to better inform IP policy.  A focus on competition and consumer welfare could also provide balance to IP debates which focus on supplier welfare.  But the powers to require information, also know as evidence, are tantalising.  All of that lovely data and the means to access it?  Very nice. (Merpel asks if trade secrecy and privacy concerns would scupper this power.) 

The response continues:
It is, however, important to note that, although growth is the Government’s top priority, there are other issues that sometimes come into play when developing policy on IP. While IP makes a substantial contribution to the UK economy, it also has an impact on society as a whole – on culture, education and the dissemination of knowledge and information.
The Government therefore considers that the most effective way of strengthening the IPO’s focus on innovation and growth would be to require it to report annually on the extent to which its activities had promoted those two ends. This increased transparency would act as a powerful incentive to develop policy based on the best available evidence, and to be clear about the respective weightings given to economic and social impacts on individual policy issues. Where the data are not as robust as we might like, a requirement to report will act as a spur to improve the quality of evidence.
The proposed response to Hargreave’s proposals is to have an annual report. This report is meant to lead to improved quality of evidence.  However, the problem with evidence has nothing to do with the IPO and has everything to do with the fact that either measurement of intangibles is very difficult or that the data is held privately.  This is significantly watered down from the original proposal that the IPO being granted the ability to require information and does not appear to advance the IPO’s current position.  It might, however, bring more attention to problems with evidence as a whole.

The government further proposes, “The IPO will therefore publish, alongside its Impact Assessments, a summary stating the impact that its analysis indicates the policy will have on innovation and growth.” Impact Assessments (some here) already include much of this but a focus on innovation and growth would highlight the policy implications. 

The response also details the potential problems that IP can cause in terms of competition.  The government concludes that “the IPO should strengthen its cooperation with the Office of Fair Trading (OFT). The IPO has therefore agreed a Memorandum of Understanding (MoU) with the OFT.”  This is promising as competition concerns are often neglected in IP debates.
These measures are currently under review – care to comment? Comments can be sent to iporole@ipo.gov.uk by 28 September 2012.

Finally, a disclaimer: Your Katonomist was a fellow at the UK IPO in the academic year 2010-2011.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':