The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Friday, 28 February 2014

Friday Fantasies

Not the easiest way
to join a webinar ...
"Very sorry for the late notice, but this whole thing is quite sudden", says Katfriend Michael Lin (Marks&Clerk, Hong Kong). The thing in question is "IP in China: Protecting Rights With Rigorous Investigation and Enforcement Strategies", a China IP/Anti-counterfeiting webinar which he will be conducting next week -- from 1-2:30 pm US EST (or, if you prefer, 6-7:30 pm UK time) on Tuesday, 4 March 2014. Adds Michael, by way of an enticing sweetener
"I have a limited number of free passes and so I would be happy to reserve two for IPKat readers who email me at – first come, first-served".
For others, the info and sign-up link is here (the price already includes a 50% discount). Enjoy!

Lush bombs Amazon ...
Around the weblogs 1. Nigel Hanley is truly desperate to hear from small IP practitioners, as SOLO IP posts herehere and here make clear. On Class 46, Natasza Slater guests a thorough analysis of Lush's triumph over Amazon in a somewhat unusual trade mark infringement case involving that perennially unpopular subject, the purchase of third party trade marks as keywords, while Tiina Komppa (Roschier) reviews two recent Finnish trade mark oppositions involving bulldogs (or at any rate bulldog-related trade marks ...).

Around the weblogs 2. Over on PatLit the indefatigable Stefano Barazza addresses another recent piece of US patent jurisprudence, this time on the relationship between foreseeability and the doctrine of equivalents. The Journal of Intellectual Property Law & Practice's jiplp blog celebrates the fact that its associated JIPLP readers and writers LinkedIn Group now has 200 members (the figure has since risen to 208).  Writing for Art & Artifice, Simone Blakeney neatly summarises the US proposal for an ART Act (on resale royalties for artists). There's also a new blog on the block. It doesn't seem to have a name -- but the author is the respected and well-regarded Colorado-based Carl Oppedahl, so it should be good!

"Coats of Arms and Trade Marks: Dual Protection or Mutual Antagonism?"  This is the title of an intriguing event coming up on Wednesday 19 March at the Honourable Society of Gray's Inn.  Registration is at bargain-basement prices and if you're a barrister or solicitor you can even pick up a couple of CPD points for attending it.  Click here for the page from which you click for further particulars and registration. Places are limited, so don't leave your decision too late!

Want to write for SAIPLJ?  On Wednesday the IPKat mentioned that the South Africa Intellectual Property Law Journal's (SAIPLJ) had issued a call for papers, ideally by the cut-off date of 30 April 2014. There's now a convenient link to the journal's call. Thanks, Caroline Ncube and Lee-Ann Tong, for letting us know.

Trade marks as a geopolitical matter: read on

Popular discourse about trade marks does not seem to have the same political and ethical engagement as do patents and copyright (when is the last time that any Kat reader said to himself—“trade marks are a geopolitical matter”). Patent trolls and their claimed harmful effects on innovation have become the subject of extensive (hysterical?) attention by legislators and bureaucrats, including the President of the United States, here. Similarly, copyright has become intertwined with both legislative and judicial disputes about the appropriateness and application of net neutrality, here. For sure, trade marks have been challenged since the dawn of their legislation in the 19th century through to capitalism-skeptic attacks in our own time (think Naomi Klein and No Logo, here) on the ground that trade marks do not create anything of social value but merely enable wealth transfer from duped consumers to greedy brand owners. But such challenges, especially of the modern variety, have been limited for the most part to academics and intellectuals. Except for the issue of the marking of cigarettes,here,this Kat is hard-pressed to recall the last time that trade marks were the focus of passionate (or other) public debate.

But two recent articles in the January 11, 2014 issue of The Economist served as a reminder for this Kat that this notion of the quiescent geopolitical role of trade marks is not quite so. The first article, “Seat belt, mirrors, brake”, discusses the uneven progress to a more open mark economy in Cuba (“the road to capitalism does not run smooth”), here. While the focus of the piece is on the dubious relaxing of restrictions regarding the right to purchase “modern” cars, attention is also devoted to the nascent market for reselling clothes imported from abroad. An elementary expression of a free-market-in-the-making, one might think. And one would be wrong, because on January 1, 2014, President Raúl Castro issued a law that bans such import and resale of clothing, which had apparently become a thriving business as a form of “tailor and dressmaker”, the trade of which was permitted as a private occupation only in 2011. What happened is that budding entrepreneurs construed “tailor and dressmaker ” to mean stocking up small local stores with brands from the United States, Europe and elsewhere. But no more--even if the right of Cubans to travel abroad has been relaxed, the ability to leverage such trips for entrepreneurial purposes has for the moment come to an end. So the likes of Eva, a 27-year old, will no longer be making bi-monthly trips to Madrid to bring back quantities of branded fashions for resale in Havana.

The second report, “Bruised, blooded and probably broken”,here, describes the current governmental crackdowns in Cambodia against expressions of dissent. One of the major centers of dissent has come from garment workers. Viral videos are reported to show violent repression of the authorities against such demonstrators. Against this tragic backdrop, it appears that the brand-holders whose garments and the like are being made in Cambodia—such as Levi Strauss, Puma and Gap, are reconsidering their presence in the country. This is no trifling matter for the economy of Cambodia—these foreign brandholders purchased over $5 billion dollars’ worth of finished garments last year, and the economic activity of the garment industry in Cambodia constitutes nearly one-third of the country’s entire annual budget.

From the trade mark perspective, what do we make of these events? Having regard to the Cuban situation, first we are reminded of the attraction and power of Western brands. Unless we assume that purchasers in Cuba have been especially “duped” in this regard, the conclusion is that they, like consumers elsewhere, find the message of branded goods to be of a compelling one. This Kat reckons that the apparent purpose of allowing the privatization of “tailor and dressmaker” occupation was driven by concerns for encouraging limited self-employment and perhaps an improvement in product quality, neither of which is served by enabling Western brands to be resold in the country. What this Kat wonders is, now that foreign clothing brands may longer be flogged in small fashion stores, whether the authorities will allow one of these tailor and dressmaker enterprises to develop a local Cuban clothing brand. Is it Western brands, or the notion of brands at all, that so frightens the Cuban government?

As for Cambodia, the response of foreign brand-holders in the local economy is reminiscent of reports that came out of Bangladesh after over 1,000 workers died in a factory fire last year, here. The dilemma faced by these brand-holders is especially challenging. Protesting government violence to its own people by pulling out of Cambodia market will do direct harm not only to the public coffers of Cambodia, but more immediately and importantly to the employees who will have lost their means of livelihood. How many countries can these brand-holders abandon before there will be none, or virtually none, which do not pose various forms of this same moral dilemma (especially when the price of the branded merchandise will then increase in a notable amount back home)?

Having regard to these two events, the question for this Kat more generally is whether those engaged in trade mark practice, either at the practitioner, corporate or organizational level, should be more engaged about the geopolitical aspects of trade marks and branding, and the moral and ethical issues that they raise.

Football news 2: when dough meets doh! Chelsea's latest signing

News broke yesterday that a deal has been struck between one of the most enduring items of intellectual property of the past two decades -- The Simpsons -- and one of the current band of elite billionaire-owned football teams that have refocused their profit-making from on-field to off-field activities, Chelsea Football Club.  According to Metro:
Chelsea have announced a new collaboration with the cult television series adored by millions around the world which will see Springfield’s famous father and son, Bart and Homer, feature on a new range of merchandise at the Stamford Bridge club.

Five Chelsea players have been given The Simpsons' treatment to celebrate the partnership with Twentieth Century Fox with Petr Cech, Eden Hazard, Fernando Torres and Frank Lampard being animated along with Terry.

‘It’s great to see myself and the other players as Simpsons characters,’ said former England skipper Terry. ‘The Simpsons was and still is my favourite show, and is now my kids’ too. I can’t wait to see what Bart and Homer will look like as Chelsea players.’
Will Snowball II ever make
the Chelsea first team?
It is apparent that Chelsea/Simpsons merchandise will be sold in Chelsea FC merchandise outlets and through the club's online shopping emporium, though no other details of the arrangement have been disclosed.  This Kat would love to know a bit more about the terms of the deal, though.  He assumes that Chelsea are to pay for the privilege, that there will be suitable quality control provisions which will extend to the quality of the goods sold but not to the quality of the football itself, that The Simpsons will be entitled to make some use of the Chelsea brand and the names and images of its players and that -- given The Simpsons' gift for self-deprecatory humour -- the deal is not contingent on Chelsea continuing to succeed on the football pitch.  It would be great to know if there is an exclusivity clause, or whether The Simpsons can strike similar deals in order to tap new markets for consumers of memorabilia of other Premier League teams such as Manchester United or Liverpool.  Beyond the English Premier League, Simpson deals have already been struck with Barcelona, Boca Juniors and FC Zenit St Petersburg. However, details of these deals are not easy to come by.  It's also interesting to speculate as to whether any special provisions are in place to provide for the contingency that one Simpsons team is matched against another.

Merpel is pleased to see that there is at least one way in which the animation of Chelsea's footballers will not lead to them being sent off, suspended and fined a couple of week's pay ...

One Cat who has already played for Chelsea, here

Football news 1: Arsenal sells Reed a dummy

Now here's a case name from the past: Arsenal Football Club v Matthew Reed. The original litigation back in 2001, which kicked off in the Chancery Division of the High Court, England and Wales, before the late, lamented  and reputedly Tottenham Hotspur-supporting Mr Justice Laddie, soon found itself heading for Luxembourg where the Court of Justice of the European Union (CJEU) had to decide (among other things) if the commercial use (by market trader Reed) of someone else's (ie Arsenal's) trade mark as a badge of loyalty for a sports team was precluded from being a use in the course of trade. No, it wasn't so precluded, said the CJEU.  Back went the case to Laddie J, who refused to apply the CJEU's ruling on the basis that the CJEU had overstepped the mark by making a decision on the facts instead of just giving a legal ruling and leaving it to the referring court to make the decision. Laddie J's decision was appealed to the Court of Appeal, which firmly reversed it in May 2003 and awarded victory to Arsenal.

Earlier this week, Arsenal and Matthew Reed faced each other in the Chancery Division once again, this time before Judge Pelling QC. This time, though, the boot was on the other foot since the claimant was not Arsenal but Mr Reed. How could this possibly be? Let the IPKat explain.

After the Court of Appeal ruled against Reed in 2003, he sought permission to appeal to the House of Lords (now rebranded the Supreme Court). At this point Arsenal, no doubt fatigued by the number of fixtures they faced that year, settled the proceedings by agreeing a consent order with Reed which (i) required Reed to stop infringing but (ii) imposed, under clause 7, a duty on Arsenal to use its reasonable endeavours to supply Reed with legitimate goods at prices that were comparable to the lowest prices offered to other market traders. 

A happy ending was now in sight, and Reed happily purchased goods both from Arsenal and from its third party licensees until 2011. In that fateful year, however, Arsenal decided to revise its business model on the basis that supplying goods to market traders and other retailers itself was uneconomic because of the credit risk and administrative burden. In 2012 it therefore withdrew entirely from the wholesale market and no longer sold anything to market traders, who were told that they could obtain products from Arsenal's official licensees instead.  Evidently much miffed, Reed claimed that the refusal to supply him was a breach of clause 7.  He therefore went to court in search of a declaration to that effect, an inquiry as to damages and a mandatory injunction.

Judge Pelling QC, in an extempore ruling noted by subscription service Lawtel, dismissed Reed's application.

* Taken in its context, in which market traders purchased goods both from Arsenal and from licensees, clause 7 did not oblige Arsenal to continue to supply Reed with its merchandise indefinitely, the key feature of that clause being its mechanism for setting a price that did not discriminate against Reed in the aftermath of the previous proceedings.

* The consent order was, to all intents and purposes, no different from a commercial contract and should be construed in the same way.

* The consent order settled litigation which had lasted a long time and engendered a degree of bad feeling [True, says Merpel, but what does that have to do with the construction of its terms? and now the consent order has itself engendered a degree of bad feeling, which is why it is now being not-so-merrily litigated].

* A factor behind Arsenal's agreement to settle was the fact that Reed was not good for the costs already incurred [Laddie J noted Mr Reed's reluctance to disclose the financial details of his business, but calculated that he had sold around half a million pounds worth of Arsenal memorabilia].

* The proposal for the settlement came from Reed, who was concerned that he should not be discriminated against by comparison with other market traders [How relevant is this?  Are we now applying the doctrine of interpretation of contract terms contra proferentem from situations in which one party lays down the terms to situations in which he proposes that there should be such terms?].

* If Arsenal decided no longer to sell to market traders, there was no breach of clause 7 since that clause did not contain any express provision that it would last indefinitely and there was no obligation to continue to supply the wholesale market, or Reed in particular, if there were justifiable commercial reasons for not doing so: . The purpose of the clause was to protect Reed from price discrimination -- and there could be no such discrimination by Arsenal if it was no longer in the wholesale market.

* Arsenal's obligation to use reasonable endeavours only applied to such matters as the delivery times and quantities of any supplies actually undertaken.

This Kat has nurtured a lifetime's suspicion and distrust of "reasonable endeavours" obligations, which he feels to be a recipe for uncertainty and an invitation to litigate.  While he has no sympathy for trade mark infringers and is a firm believer in the virtues of negotiated settlements, he can't help wondering whether, had he known the contract would be interpreted in this manner, Matthew Reed might have been a little more reluctant to seek permission to appeal.

Merpel  wonders if this decision is a good omen for Arsenal, who have not won any competitions for rather a long while and whose manager has been stigmatised as a "specialist in failure".

Selling a dummy here
Buying a dummy here

Thursday, 27 February 2014

CJEU says that spas must pay copyright fees and that territorial monopoly of collecting societies is OK

Copyright + Spa = The perfect getaway
It seems it was just yesterday that Advocate General Eleanor Sharpston issued her Opinion in Case C-351/12 Ochranný svaz autorský pro práva k dílům hudebním, os (OSA) v Léčebné lázně Mariánské Lázně as [slightly more handily: OSA], a reference for a preliminary ruling from the Krajský soud v Plzni (Plzeň Regional Court, Czech Republic) concerning the ever-exciting right of communication to the public, effect of badly-implemented directives (by means of national exceptions or limitations), and collective rights management.

As the IPKat reported back in November, the background to the case was as follows.

Radio and TV sets in the bedrooms of a residential health spa establishment in the Czech Republic gave access to broadcast works

Under Directive 2001/29 (the 'InfoSoc Directive), holders of copyright in such works have the exclusive right to authorise their communication to the public pursuant to Article 3(1) of this directive and may claim fees for doing so. 

OSA, a copyright collecting society with exclusive rights to enter into licence agreements and collect fees on behalf of authors of musical works in the Czech Republic, claimed fees for such communication to the public by the establishment in question. 

The spa claimed that it did own no fees, since its activities were covered by the relevant exception as per Paragraph 23 of the Czech Copyright Law, which so states [or rather stated ...]

"[O]peration of the radio or television transmission of a work’ means making a work transmitted by radio or television available by means of devices technically suitable for receiving a radio or television transmission. However, it does not include making a work available to patients when providing health care in health establishments."
 [it should be noted that Article 5(2)(e) of the InfoSoc Directive allows Members States to provide solely for an exception to the right of reproduction in favour of social institutions pursuing non commercial purposes, not also to the right of communication/making available to the public]

Frustrated at several failed attempts
to pronounce the word 'Plzeň'
The spa also claimed that the service in question was not communication to the public and that the Czech collecting society’s territorial monopoly infringed the establishment’s right, derived from EU provisions on freedom to provide services, to enter into a licence agreement with a collecting society in another Member State – a problem which, it claimed, was exacerbated by the Czech society’s abuse of its national dominant position by charging excessive fees.

The Plzeň Regional Court decided to stay the proceedings and ask the Court of Justice of the European Union (CJEU) whether the Czech legislation under which health establishments were exempt from the payment of copyright fees was in accordance with the InfoSoc Directive, inasmuch as that directive does not provide for an exception or limitation of that kind. The Czech court also wished to know whether OSA’s monopoly over the collection of fees in the Czech Republic was compatible with the freedom to provide services and with competition law.

The following were the questions referred to the CJEU:
  1. Must Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society be interpreted as meaning that an exception disallowing remuneration to authors for the communication of their work by television or radio transmission by means of television or radio receivers to patients in rooms in a spa establishment which is a business is contrary to Articles 3 and 5 (Article 5(2)(e), (3)(b) and (5))?
  2. Is the content of those provisions of the directive concerning the above use of a work unconditional enough and sufficiently precise for copyright collecting societies to be able to rely on them before the national courts in a dispute between individuals, if the State has not transposed the directive correctly in national law?
  3. Must Article 56 et seq. and Article 102 of the Treaty on the Functioning of the European Union (or as the case may be Article 16 of Directive 2006/123/EC of the European Parliament and of the Council of 12 December 2006 on services in the internal market ) be interpreted as precluding the application of rules of national law which reserve the exercise of collective management of copyright in the territory of the State to only a single (monopoly) copyright collecting society and thereby do not allow recipients of services a free choice of a collecting society from another State of the European Union?
This morning the CJEU delivered its judgment, in which it held that a spa that transmits protected musical works to its guests by means of devices located in their bedrooms must pay copyright fees, and that the territorial monopoly granted to copyright collecting societies is not contrary to the freedom to provide services.

According to the relevant press release, the Court ruled as follows:
Kat-monopoly is fine and fun
  • By transmitting protected works by means of television and radio sets located in the bedrooms of its guests, a spa carries out a communication to the public of those works. Such a communication must be authorised by the authors [Merpel would say - more correctly - copyright holders], who must, in principle, receive adequate compensation. The InfoSoc Directive does not exempt a spa from the payment of fees where it transmits protected works to its guests. Consequently, the exception laid down by the Czech legislation does not comply with the directive [what is the legal consequence? The judgment does not say clearly, although - following the Opinion of AG Sharpston - this may be judicial disapplication of contrasting national provisions. For the sake of self-promotion, it is noted that this Kat discussed this very point here]
  • The territorial monopoly granted to OSA constitutes a restriction on the freedom to provide services inasmuch as it does not allow users of protected works to choose the services of a collecting society established in another Member State. However, the restriction in question is justified, since that system is appropriate and necessary for attaining the objective of the effective management of intellectual property rights. As EU law stands at present, there is no other method allowing the same level of copyright protection. Hence, the monopoly granted by the Czech legislation to OSA is compatible with the freedom to provide services. 

EU copyright should (probably) allow digital resale but not fair use: UK response to EC Public Consultation

5 March is approaching fast. If you are wondering what this date is all about, wonder no further. 

It is the new (extended) deadline for submitting responses to the Public Consultation on the review of EU copyright rules, which the Commission launched on 5 December last [see here]. As this Kat learned from Twitter, apparently so far the Commission has received over 8,000 responses, of which a 15-people task force in Brussels is in charge [of course the relevant hashtag - and likely trending topic - was #dreamjob]

Yesterday the UK Intellectual Property Office (IPO) released UK Government's neat response to the Consultation, which takes account of a 2013 public call for views on copyright in Europe and representations from stakeholders on the consultation itself.

Overall, the UK response "stresses the importance of copyright, the UK's desire to see a robust, flexible and modern copyright framework, and the need for any proposals to be grounded in good evidence" [are you a copyright student and wish to get ready for your spring exams? OK, then answer the following question: do you think that this phrase is sufficiently original to attract copyright protection?].

As to specific points in the EC Consultation, this is what UK Government thinks:

Robust ...
Cross-border portability
The UK is in favour of increasing cross-border availability of content services by means of market-led licensing arrangements [possibly similar, to a certain extent, to the Copyright Hub? Or perhaps Armonia?], and also welcomes legislative initiatives such as the recent CRM Directive [on which see here and here]. However, the UK is not convinced that specific actions that will enhance content availability across borders at EU level have yet been identified.

Digital transmissions
The UK "notes that a number of the questions asked under this section appear to be adequately addressed by the existing copyright framework and a number are currently being considered by the Court of Justice." 

Indeed: as Merpel noted at the time when the EC Consultation was launched, in some significant instances the questions posed draw upon cases that have been or will be decided shortly by the CJEU, which - in doing so - has interpreted/will interpret existing EU and international legislation. While in many cases the Consultation asks you to respond 'yes' or 'no' as if the Commission could decide to do either way, it may not be that easy to think that any winning option could actually translate to workable legislative initiatives.

This said, the response notes that UK stakeholders have not raised with the UK Government any specific problems in relation to the issue of two rights being applicable to a single act of economic exploitation. In some situations, such as where a download is provided, necessary reproduction will usually be permitted under an express or implied licence. In other situations, such as the lawful reception of broadcasts, necessary temporary reproductions will be permitted under the temporary copying exception as per Article 5(1) of the InfoSoc Directive

As to the issue of linking, while welcoming the outcome of the recent Svensson case [on which see here for references], UK Government remains committed to a law that supports efforts to tackle online copyright infringement: "It is important for the interests of right holders that the law continues to forbid systematic provision of links that are known to lead to infringing content. In the UK this is done partly outside the copyright code, through fraud offences for example.

... Flexible ...
The applicability of the temporary copying exception to internet browsing is another question being considered by the Court of Justice of the European Union (CJEU) [it is Case C-360/13 Meltwater, on which see here]. Quite reassuringly, "[i]t seems clear to the UK that the making of temporary copies during the course of browsing (whether on the screen or in a cache) fall within this exception. Right holders have the option of putting such content behind a paywall or applying other technological restrictions if they wish to control access to it."

Finally, as regards the issue of digital resale, "the UK notes that traditional secondary markets for goods can encourage both initial purchase and adoption of technologies, and the prospect of sale on the secondary market may be factored in to an initial decision to buy and to market prices. There seems to be no reason why this should not be the case for digital copies, except for the “forward and delete” issue noted by the consultation." That's quite progressive stance, notes Merpel. Certainly this is an area that calls for prompt consideration. 

Readers will remember that the situation in the US remains in the sense of denying digital resale. In its 2013 decision in Capitol Records v ReDigi [noted here and here] the US District Court for the Southern District of New York held that the first sale defence (the EU doctrine of exhaustion was derived from US first sale doctrine) is limited to material items. Prior to the ReDigi decision, in 2010 the 9th Circuit issued its judgment in Vernor v Autodesk (a case concerning promo CDs), in which it ruled that, pursuant to 17 USC §109(d) the first sale doctrine does not apply to a person who possesses a copy of a copyright-protected work without owning it. Recently, the US Register of Copyrights Maria Pallante has called for US Congress to consider whether US law should allow digital resale. Possible options on the table might be the following: on the one hand, Congress may believe that in a digital marketplace, the copyright owner should control all copies of his work, particularly because digital copies are perfect copies or because in online commerce the migration from the sale of copies to the proffering of licenses has negated the issue. On the other hand, Congress may find that the general principle of first sale has ongoing merit in the digital age and can be adequately policed through technology — for example, through measures that would prevent or destroy duplicative copies.

... Modern (not to say the ultimate hipster)
Although existing international treaties [see Article 5(2) of the Berne Convention] prohibit formalities as a condition for the protection and exercise of rights, in its Consultation the Commission noted that this prohibition is not absolute. 

That is true. As William Patry noted in his How to Fix Copyright [a book one should always carry around for both enjoyment and enlightenment], Article 5(3) Berne adds that "Protection in the country of origin is governed by domestic law." The meaning of paras 2 and 3 together may be that countries are free to impose any formalities they wish on works by their own authors or those works whose country of origin is that country. If all countries did so, formalities could be imposed without violating any treaty obligations. 

UK believes that "[r]egistration systems can have a useful role in the identification and licensing of works [look again at the Copyright Hub, or think of the Global Repertoire Database]. The potential benefits can include easier licensing at lower transaction cost and better information about the availability and ownership of works, which should lead to more efficient markets in licences. However, registers should be provided on a voluntary basis, and registration should not become a de facto formality."

Identifiers for works
It is submitted that the EU should encourage development of strong, open standards for identifiers and other metadata.

Exceptions and limitations (look at UK response for specific exceptions and limitations)
UK Government believes that "[t]he flexibility currently provided by the Infosoc Directive [which this Kat believes not to exist in such broad terms] is helpful as it means Member States are able to update their laws to keep pace with technological change, and to do so in a way that meets their own national circumstances. The three-step test [as per Article 5(5)], which sets a boundary to all exceptions and limitations, helps to ensure that copyright remains able to incentivise the creation of new works and protects the rights of creators."

Judging fair use: a matter of law or fact?
Overall, it is believed that national disparities in respect of relevant exceptions and limitations are not particularly problematic. 

Current exhaustive list of exceptions and limitations is not the best solution, but a completely open [US-style] “fair use” approach would create uncertainties and result in the CJEU having to rule on a case-by-case basis [how could this be? The CJEU would be asked to rule only over interpretation of relevant EU provisions, not matters of fact, which would remain for national courts to decide. Deciding whether a certain act can be considered fair use of a work looks more like a matter of fact, rather than something (ie a matter of law) that would require the CJEU to rule on a case-by-case basis, as UK Government suggests]

A EU copyright title?
It might be a good idea, but "[with so many individuals and businesses reliant on and affected by copyright, and with so many contentious issues at stake, it would be unwise for the Commission to rush into any changes of this scale or ambition."

UK Government would also be interested in seeing your own or your organisations' responses to the consultation. If you wish to share them with the IPO, then email them to 

Wednesday, 26 February 2014

Wednesday whimsies

Around the weblogs.  Aaron Wood, in a guest post on SOLO IP, asks some uncomfortable questions on attorney-client privilege that may be disturbing for clients instructing unqualified or underqualified folk to do their IP work for them.  Writing on IP Finance, fellow Kat Neil writes on Aerosmith's Joey Kramer and his recipe for a solidly-based Rockin' and Roastin' coffee brand with its strong set of messages and a powerful punch.  PatLit carries a post from this blogger of a slightly unusual scenario in which a defendant in patent infringement proceedings applies to be served with more pleadings.  Finally we look at the copyright-oriented 1709 Blog, where Ben Challis reveals the latest litigation on Canadian copyright trolls and Sebastian Felix Schwemer takes a look at the EU's Collective Rights Management Directive.

Journals.  The South African Intellectual Property Law Journal (SAIPLJ) is calling for submissions for its next issue. If you have something suitable up your sleeve, the date for submission is provisionally fixed at 30 April 2014.  If you'd just like to speak to someone about appropriate topics, or want to find out more about this peer-reviewed journal, which is still in its relative infancy, email Lee-Ann Tong at or Afro-IP blogger Caroline Ncube at  Meanwhile another publication that is still in its infancy, The Trademark Lawyer, has just produced its most recent issue. For further information, click here.

IP opportunities for students.  As many readers are already aware, the International Trademark Association (INTA) is holding its 136th Annual Meeting in Hong Kong from 10 to 14 May.  This exciting trademarkfest includes a Career Development Day on 12 May: this is a day packed with programming and networking opportunities, specifically for law students. Good news from INTA's Carin is that
To help law students make their way to the Annual Meeting, we have a scholarship program that provides a complimentary registration to the meeting and up to $500 travel reimbursement [is that US dollars or Hong Kong dollars, wonders Merpel]. Interested students should complete the attached application form and submit an essay for consideration. We would greatly appreciate it if you could share this information with your student members.
Please feel free to contact Carin at with any questions.

Patents and GM crops: a reader asks ...

A reader of this weblog, whose identity is known to this blogger but who asks to be referred to, modestly, as "Pedestrian", has some big questions to ask, questions that may produce quite different answers as between different countries.  There's more here than this Kat can confidently answer, so he is happy to put the questions before his readers. Pedestrian writes as follows:

Over the years there have been a number of IPKat posts about genetically modified (GM) crops and patent laws (for example here). And there are a lot of other, often confusing, articles on this subject on the web generally. That's why I'm hoping you can help to clarify a few questions.
Right: genetically modified -- but will he fly?*
Given that there is good evidence that unintentional cross-pollination between non-GM crops and GM crops of the same species can happen (see New Scientist, here)  Can you or your readers answer the following questions?

First question

The ability to kill weeds without killing the crop is the advantage of Roundup-resistant crops. And the obvious proof that the farmer knew that the crop that he had planted had the gene for resistance to Roundup is that the farmer subsequently sprayed Roundup on that crop.

Have there been any cases of farmers being prosecuted for infringement, where there was no evidence that the farmer had used Roundup on that crop? And technically, could a farmer be prosecuted for growing a cross-pollinated Roundup-resistant crop, without evidence that the farmer had used Roundup to kill selectively the weeds growing in among that crop (ie a situation where there was no evidence of advantage to that farmer?)

Second question

The advantage of other GM crops, such as those containing the gene for the bacillus thuringiensis toxin, is that farmers do not need to use much in the way of pesticide spays on their crops: the plants have a built-in bug killer. In the case of these crops, proof that a farmer knew that his saved seeds contained unlicensed 'bug killer' genes should be trickier to establish.

Have there been any prosecutions of farmers regarding the planting of cross-pollinated second generation crops that need less or no pesticide? 
Third question 
In 2009 Scientific American famously reported that the sales contracts for GM seeds prohibited sale of these seeds for independent scientific research. Since then, the GM crop companies have significantly liberalized their policies regarding independent research into the 'behaviour' of GM crops in the environment.

However, is it still technically possible for a holder of a GM crop patent to use that patent to filter who can, or cannot, do research into that GM crop's behaviour, in the environment?
Come on readers, let's be hearing from you!

* "7 SUPERHERO CATS FIGHTING FOR JUSTICE AND CATNIP FOR ALL", by Kellie Foxx-Gonzalez, The Mary Sue, here

Again on food, porn and food porn: who cares about top cuisine IP?

The most depressing food porn ever,
proudly cooked and portrayed by this Kat
Talking about food porn, the new trend of taking pictures of recipes and posting them on social networks, the three-starred French chef Gilles Goujon [is this a nom de plume, asks Merpel?] complained that he feels deprived of his "intellectual property", reported France TV Info. Kat Annsley took him seriously (literally, "seriously?") in this great post here, also wondering whether and how a recipe's appearance could be protected under IP law. Annsley maintained it to be just a Sunday evening's joke, but now the Pandora's box is open and it is worth expanding on this tasty topic for a little bit longer.

The echo of Monsieur Goujon's whingeing spread throughout Europe, triggering diverging reactions from over the Channel and across the Alps. In London David Mitchell, likely one of the best columnist of the western world, took a rather sceptical approach towards Monsieur le chef’s painful complaint, writing in the Guardian a seminal article tellingly entitled “How dare chefs make such a meal out of people photographing their food”. David Mitchell does not share Mr Goujon’s concerns and concludes: “French cooks are whingeing about customers taking cameraphone pictures of their dishes. They should suck it up”.

In Italy, definitely the home country of cuisine [but isn’t ‘cuisine’ a French word, asks Merpel innocently?], the reaction was similar, even though it was expressed in more polite tones. The cuisine website Dissapore, whose pay-off significantly reads “nothing sacred but food”, interviewed a number of top Italian chefs about food porn and IP. With different nuances, the answer of all of them was "intellectual property? Not a big deal to worry about. Although using mobile phones during dinners is despicable and making bad pictures of good dishes is even more terrible, Chef Negrini of Il luogo di Almo e Nadia [strongly suggested by this Kat for a dinner in Milan] took the view that “if your are confident of the quality of your work, a bad picture could not invalidate it. After all, diffusion of pictures on Instagram is all about promotion for your restaurant”. Agrees Luca Lacalamita, patissier of Enoteca Pinchiorri in Florence, according to which “social networks help to promote reputation” and high-level restaurants should not mind about food porn as the food field, “in general, is all about copying”. “The intellectual property is the idea of the dish” [is this an application of the Red Bus principles, sniffs Merpel?], he continued, “and it is certainly not jeopardised by a picture, which is nothing more than an aesthetic habit”.

To similar conclusions came the research penned by Katfriend Lea Gesuà sive Salvadori (left), which delved into the issue of IP and top cuisine in her LLM dissertation at LSE. After dozens of interviews with the best Italian chefs, Lea concluded that:

“Despite the lack of a system of conscious social norms, there are some kinds of social habits resulting in attitudes and practice amongst top chefs that could replace formal law. This informal system is working well in ensuring the recognition of a creator thanks to clients, colleagues and critics and in stimulating new creations and innovations in order to satisfy the market’s tastes.The flow of new ideas in cuisine confirms that IP law is just one of many possible mechanisms that encourage innovation and creativity. Property rights tend to protect financial rewards, whereas the chef’s system values more reputation, public’s interest and prizes such as Michelin stars … In the end, cuisine and its actors do not need Intellectual Property to create and innovate, they better need sharing, openness and cooperation instead” [Lea has been so kind to make her paper available for the IPKat readership, here].

Serving Trieste's Bora as dessert
is not that obvious
No fixation requirement being provided, protecting a recipe's appearance under copyright in the Continent should not trigger particular concerns.  Moreover, high-level cuisine dishes could theoretically meet the originality requirement, with the caveat that the protectable subject matter is not the putting together of a half of a Tropea onion [which this Kat can't stand], Baltic caviar and ostrich egg's albumen, but the original manner in which those ingredients are arranged on the dish. On the other hand, design and trade mark protection of food is a fact under EU law, as class one of Locarno Classification and a number of famous cases demonstrate [last but not least, the Arnoldian reference in the Kit Kat case, on which see here]. And what about patents? Trieste, a lovely city located in the former Austro-Hungarian Empire, is globally known for its kat-abatic [and Kat-hartic, notes Merpel] wind called Bora. Darko Rodica, the psychedelic chef of Za Gradom, a soul place in Semedela (Slovenia) created a dessert that magically replicates the sound of the Bora blowing on the close Trieste in the assayers' ears. Isn’t it a great invention?
The (not so) tempting
Community Design

 No. 81344-0006

In most commercial fields, the more high-level products and service offered, the more IP protection. Apparently, in the food sector things work upside down. Despite same exclusive rights are available, food giants providing middle/low quality food are extremely careful in protecting their recipes as designs and distinctive signs. On the other hand, top-chefs appear to pay more attention to invent new recipes rather than protecting past efforts of their creativity [is this why some still call it “industrial property”, wonders Merpel?].

The IPKat believes that IP law is about fostering innovation. So, how come the most luxurious sector of the food industry does not bother about protecting and enforcing its own IP? Has this anything to do with the piracy paradox? Or does copying in the top-cuisine field play the same role of IP protection, constantly pushing chefs to create new dishes in order to supersede those already copied and to distinguish themselves from lower-level food providers?

Inspired by Rule 34 of the Internet, under which "If it exists, there is porn of it. No exceptions", this Kat also wonders whether there is a connection between food (porn) and the case of (real) porn, a continuously-growing industry despite massive piracy occurring on the internet. Is Porn and Food the new Eros and ThanatosFood, porn and food porn fans’ answers to these hot questions are more than warmly welcomed.  

(A great Katpat goes to Katfriend and IP/food expert Sebastiano Gangemi for bringing Dissapore’s posts at this Kat’s attention).

Everything one needs to know about sex and food in Ferreri’s Blow Out, here.
How to cook ostrich eggs here.
Cat porn here
The Rules of the Internet here.

Subscribe to the IPKat's posts by email here

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