For the half-year to 31 December 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Jani Ihalainen, Nikos Prentoulis and Mark Schweizer.

Birgit Clark is on Sabbatical till the end of the year

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

Thursday, 8 October 2015

As the CRO flies: when patent infringement litigation is not a Brundle of fun

Merpel thinks people who write inspirational
messages have a lot to answer for
Character traits that are admirable in one context can be quite a nuisance in another. One such virtue is persistence and a refusal to be beaten.  In the context of an inventor working to achieve an elusive innovation, a surgeon seeking to perfect an operation or a rights campaigner working to eradicate prejudice or poverty, it can be the crucial asset that catalyses a successful outcome,  In the context of a patent litigant it can however be a trigger for wasted effort, energy and resources.

Today this Kat has already posted an item dealing with a fairly minor sort of persistence, where a charity could not bring itself to use a logo that was not confusingly similar to that of another charity and, convinced of the rectitude of its position, refused all advice to sit down with the other side and settle out of court. Now here's an example of a far more egregious case of misplaced persistence. It's Richard Perry v F H Brundle & Others, a saga that has entertained many a casual reader but saddened many a serious IP litigator. It has been in this blog before and may be here again. At any rate, it has been rumbling on again of late.

But reality doesn't depend
on whether you believe it
Readers may remember the initial litigation, noted by this Kat back in March 2014 in "Coming off the fence: IPEC knows a threat when it sees one", in which the Brundle defendants established that Perry had made an unwarranted threat to commence patent infringement -- and that Perry's counterclaim for patent infringement was a non-starter. Only a couple of weeks later the same court entertained the same litigants in proceedings noted by this Kat in "Forging a new path: cost caps and contrary behaviour in cut-price IP court", here. Here the court, in the person of Judge Hacon, took a surprisingly lenient view of Perry's decision to write a letter which purported to be from the judge himself, reversing the earlier trial decision and awarding himself damages of £5 million at the same time. It could only be a matter of time, surely, before Perry, whom some unkind readers might stigmatise as being more than mildly eccentric in his behaviour, would be in court again. And so it was.

Oh no we don't
Mr Perry was back in court again last month, when he persisting in bringing what was to all intents and purposes a repeat of his earlier patent infringement claim, notwithstanding that he was now the subject of a bankruptcy order since he was unable to meet the costs order that had been made against him -- and that his appeal against the bankruptcy order had also been dismissed as being quite without merit. Again he came before the avuncular person of Judge Hacon.

This works for cats -- but not
for IP litigants without cash
On this occasion, as noted by subscription service Lawtel (since this extempore decision is not on BAILII), on 25 September Judge Hacon was asked to strike out Perry's patent infringement claim in its entirety.  Said Brundle, this claim involved the same allegedly infringing acts in respect of the same patent and looked like a decisive case of res judicata. What's more, Perry surely had no standing to bring this action because any right to bring proceedings had vested in his estate on the making of the bankruptcy order -- and the evidence showed that the Official Receiver had not consented to Perry suing. Perry conceded that he had no cause of action because he was a bankrupt, but he argued that, rather than striking out the action, the court should stay the proceedings pending the outcome of what he said was his ongoing appeal against bankruptcy before the Court of Appeal.

Judge Hacon granted the application to strike out.  In his view:

* While Perry might have lodged some sort of application before the Court of Appeal, it was doomed to fail. He had exhausted all the avenues available to him to appeal against his bankruptcy and there was therefore no sound reason to stay the patent infringement proceedings rather than strike them out.

* Even if Perry did have a cause of action, the proceedings would still be barred because the cause of action was res judicata, being materially the same as the counterclaim in the first action. These proceedings were therefore totally without merit, as were four other applications that he had apparently brought in the course of the same proceedings.

But that's not all.  Judge Hacon also issued an extended civil restraint order (CRO) against Perry, to stop him bringing any more versions of his action against Brundle.  Last week, at [2015] EWHC 2737 (IPEC), he gave his reasons.  His judgment culminated, at [34], with the following assessment of the situation:
In my view there is a very real prospect that notwithstanding Mr Perry's calm and measured submissions in court, his sense of injustice will shortly be rekindled and that this will lead to further hopeless claims and/or applications. A limited CRO would not be sufficient because such claims and applications will probably be made wholly or in part outside these proceedings. I also accept Mr Baran's submission [on behalf of Brundle] that Mr Perry's applications have necessitated the expenditure of considerable sums by the Defendants which are unlikely to be recovered and that if Mr Perry is left alone the pattern of wasted expenditure will continue.
Does anyone know how to appeal against a civil restraint order ...?

Viennese waltz may be the last dance for Board members

For some it's a game,
for others a sad reality
Up until very recently, the mooted new home for the European Patent Office (EPO) Boards of Appeal was Berlin, unwilling as its members might be to move at the whim of the EPO President. But, as Merpel reported last week, a new proposal is being negotiated behind closed doors: why not move the Boards to Vienna?  Merpel understands that President Battistelli is close to sealing a deal between Germany and Austria which would make this possible.

Why Vienna?
But consider this riddle: what does a move to Vienna achieve that a move to Berlin will not?

One suggested answer is found in the EPO Service Regulations. Under Article 53, refusing to relocate to another country is a sackable offence. There is no direct provision for firing an employee who refuses to relocate to a different city within the same country.
Article 53
Dismissal for other reasons
(1) The appointing authority may decide to terminate the service of a permanent employee if:
(a) the Contracting State of which the employee is a national ceases to be party to the Convention;
(b) the employee refuses to be permanently transferred to a country other than that in which he is serving; ...
Headquartering the Boards in a different country opens up the enthralling possibility of firing Board members, possibly even without the distasteful necessity of referring such decisions to the Enlarged Board. As Mr Battistelli has discovered in the last year, even getting one Board member fired is not as easy as one might think. The European Patent Convention and due process keep getting in the way.

Why move at all?
The drive to get the Boards out of Munich strikes Merpel as either deeply stupid or entirely cynical, and she doesn't believe Mr. Battistelli is at all stupid.  The purported problem identified in Mr Battistelli's proposal to reform the Boards of Appeal was the "perception of independence". You couldn't, he argued, have Boards in the same building as other EPO employees whose decisions a Board might be reviewing -- which is an odd argument, since there are no Examining or Opposition Divisions based in the Isar building.

A rather more widespread perception around the EPO is that Mr Battistelli can't bear to have the Boards in "his" building (Merpel seems to recall that they were there first, though), and/or that he wanted to teach the Boards a lesson. Even having his own private express lift from car park to the sumptuously appointed presidential floor does not always exclude the chance that he might encounter one face-to-face during his working day.

You can be on top
and still be furious ...
The relationship was poisoned when the Enlarged Board decided Case R19/12, a decision about judicial independence about which Mr Battistelli was furious. You see, far from lacking independence, the real problem for EPO management is that the Boards are sometimes too damn independent and this cannot be tolerated. Yes, there's a structural issue in how the Boards fit into the European Patent Organisation, which would require amendment of the Convention to fully remedy, but this did not seem to cause problems in practice until now.  Nobody should pretend that this proposal to move the Boards out of Munich serves the interests of judicial independence. It is really the opposite: showing this group of ungrateful judges who's really the boss, who's in control of their careers.

Having established that the Boards had to get out of the current Munich headquarters, Mr Battistelli identified two options: find another building in Munich, or relocate the members of the Boards to Berlin (Vienna, which is now the front runner, appears to have been arranged behind the backs of the Administrative Council (AC) and of the Boards, since it never formed part of the formal proposal).

Boards of Appeal are
getting the message
One would normally think that, faced with the choice between (i) uprooting a group of senior employees from their homes and sending them to another city or country, and (ii) finding an office building in a city the size of Munich, there would be no debate over the proper and ethical course of action and no difficulty in achieving this goal, but Merpel understands that the intention was always to push the Boards out of Munich, and the option to stay there has never received any serious consideration. Whether the AC falls for this ruse remains to be seen.

Merpel wonders if there is a mathematical formula involved which governs the relationship between judicial independence and distance from those being judged? If so, then Merpel suggests that the AC really needs to think about packing the Boards off to Reykjavik - an unbeatable 2,676 km from Munich as the crow flies.

New CJEU reference on linking and copyright: is streaming unlawful content an infringement?

Once again [see here for the latest installment], one might have thought that the story with hyperlinks and copyright was over. 

Of course it's not.

This time at issue there are questions such as: Is selling a product that contains hyperlinks to infringing content a copyright infringement? Are those who stream unlawful content infringers?

These, in a nutshell, are the very interesting questions [see here for an English translation] that the Midden-Nederland District Court (The Netherlands) has just referred to the Court of Justice of the European Union (CJEU).

Katfriend Dirk Visser, who represents one of the parties to the background proceedings 
(Dutch anti-piracy organisation BREIN), explains that this case concerns a media player (filmspeler) that an individual, Wullems, offered for sale via the website 

The sale of this product was advertised as follows:

“- Never pay for films, series, sport again, watch them directly without commercial breaks or waiting times (no subscription fees, plug&play). This means that Netflix is a thing of the past!
- Watching films, series, sport free of charge? Yes please!
- Never go to the movies again thanks to our optimised XBMC software. Free HD films and series, including films fresh from the cinema, thanks to XBMC.
- Are you looking for a Media player so you can watch your favourite films and series FREE OF CHARGE on any TV in HD Full HD or 3D? Then one of our Android Filmspelers (X5 X7 or X9) is right for you!
- You just connect the Filmspeler to your TV/monitor. Plug and play, easy peasy.
- Everything is plug&play and easy to use. All settings have been optimised. A selection of the installed software: ..."

Apparently Wullems installed open source software XBMC on his product and add-ons. The latter contain hyperlinks to contain hyperlinks, which, when clicked on, re-direct users to streaming websites managed by third parties and allowing one to watch films, TV series and live sports events made available without the relevant rightholders' consent.

BREIN started proceedings against Wullems for copyright infringement, also seeking a declaration that streaming by internet users of copyright works made available without the consent of the relevant rightholders does not qualify as ‘a lawful use’ within the meaning of Section 13a(b) of the Dutch Copyright Act, Section 1(f) of the Dutch Related Rights Act and Article 5(1)(b) of the InfoSoc Directive

The Midden-Nederland District Court decided to stay the proceedings and refer two sets of questions to the CJEU:

Shocking: BestWater was not the end
1) Is providing links to unlawful content an act of communication?

"Must Article 3(1) of the InfoSoc Directive be interpreted to mean that “an act of communication to the public” within the meaning of that provision occurs if someone sells a product (ie a media player) on which he has installed add-ons that contain hyperlinks to websites on which direct access is provided to copyright-protected works such as films, series and live broadcasts without the rightholders’ consent? [
Is this different if

- the copyright-protected works have not been previously disclosed to the public online at all or solely via a subscription with the rightholders’ consent?
- the add-ons that contain hyperlinks to websites on which online access is provided to copyright-protected works without the rightholders’ consent are freely available and can also be installed on the media player by the users themselves?

- the websites on which access is provided to copyright-protected works without the rightholders’ consent can also be located and accessed by the public without the media player?"

The Dutch court observed that no unequivocal guidance could be inferred from preceding CJEU case law. In particular, the court observed [contrary to a recent Greek rulingthat, although the BestWater case related to a work that was disclosed to the public without the rightholder’s consent, that decision does not state that no work is communicated to the public (either) if the link leads to the public to a website on which the work has been published without the rightholder’s consent 

Incidentally, in this humble Kat's humble opinion, what the Dutch court said is correct, because in BestWater the CJEU appeared to imply the need for permission of the initial communication: "If and to the extent that [a] work is freely accessible on the website to which the internet link points, the assumption must be that the holders of the copyright have, when they permitted this communication, considered all internet users as the public."

The look of terror:
what if the film George is streaming
was from an unlicensed source?
2) Is streaming unlawful content OK?

"Must Article 5 of the Copyright Directive (Directive 2001/29/EC) be interpreted to mean that there is no “lawful use” within the meaning of the first paragraph at b of that provision, if a temporary reproduction is made by an end user during the streaming of a copyright-protected work from a website of a third party on which this copyright-protected work is offered without the consent of the rightholder(s)?

If the answer to this question is in the negative, is making a temporary reproduction by an end user during the streaming of a copyright-protected work from a website of a third party on which this copyright-protected work is offered without the consent of the rightholder(s) in breach of a the “three-step test” referred to in Article 5(5) of the Copyright Directive (Directive 2001/29/EC)?"

IPKat readers may recall that, among other things, in its decision in FAPL the CJEU held (para 168) that "As is apparent from recital 33 in the preamble to the [InfoSoc] Directive, a use should be considered lawful where it is authorised by the right holder or where it is not restricted by the applicable legislation."

In addition, in ACI Adam [another reference from The Netherlands, commented here and here] the CJEU concluded that the private copying exception within Article 5(2) of the InfoSoc Directive does not encompass reproductions from unlicensed sources.

The Court observed that Article 5(2)(b) does not address expressly the lawful or unlawful nature of the source from which a reproduction may be made. However, when adopting the InfoSoc Directive, one of the objectives of EU legislature was to provide a high level of copyright protection. As a consequence, exceptions and limitations to exclusive rights must be interpreted strictly, and Member States must comply with the three-step test as per Article 5(5) of this directive. In compliance with these principles – notably that of strict interpretation of exceptions and limitations – the private copying exception must be understood as excluding reproductions from unlicensed sources.

This conclusion was also considered in line with what is required by the 3-step test in Article 5(5). To accept that reproductions for private uses may be made from an unlawful source would encourage the circulation of unlicensed works, thus inevitably reducing the volume of sales or of other lawful transactions relating to the protected works. This would conflict with the principle that exceptions and limitations must not conflict with a normal exploitation of the work and must not unreasonably prejudice the legitimate interests of rightholders.

Money to burn? When charities clash in court, there are no real winners

This Kat has from time to time complained that cases have reached court which should have been settled long before they got there.  Here's one such case.  And don't think that this is just the opinion of a fictitious feline: the judge said so too. The case is NOCN (Formerly National Open College Network) v Open College Network Credit4Learning [2015] EWHC 2667 (IPEC), a 25 September 2015 decision of Judge Hacon in the Intellectual Property Enterprise Court, England and Wales (the celebrated IPEC).

NOCN -- an educational coordinator and registered charity -- was the owner of UK registered trade marks for the letters OCN (which stood for "open college network") and NOCN, as well as a series of 10 figurative "swoosh" marks, of one is illustrated on the right.  The defendant, also a charity, was a breakaway from NOCN and was formed by the amalgamation of several local educational networks. Sensibly, NOCN did not object to the defendant's use of the thoroughly descriptive words "open college network"; it was no surprise, however, that NOCN objected that its UK registered trade marks were being infringed by the defendant's mark (below, left), suing also for passing off. The defendant denied trade mark infringement and counterclaimed for cancellation of NOCN's marks on the grounds that they had not been validly registered (i) since they conflicted with prior rights, (ii) they consisted of a "customary term" that was absolutely barred from registration under the Trade Marks Act 1994 s 3(1)(d) [= Trade Marks Directive 2008/95 Art. 3(1)(d)] and (iii) were registered in bad faith.

In support of its action NOCN explained that, in the period up to its incorporation in 1999 all the goodwill in the regional networks associated with the letters "OCN" was collectively held by the members of NOCN's predecessor, which an unincorporated association. The defendant countered that the member local networks were a class of entities, not an unincorporated association, and that since each member network had retained its own separate goodwill there had never been any collective ownership of the goodwill in the letters "OCN".

Judge Hacon dismissed the trade mark infringement action in respect of the word marks but upheld the claims for trade mark infringement and for passing off with regard to the "swoosh" mark,  In his view:

Where should Tibby go to study ...?
* The obvious relationship between the term "open college network" and its usual abbreviation "OCN" complicated the task of tracing the ownership of goodwill in the businesses associated with the name. Although neither side had argued for it, the conclusion had to be that both the letters "OCN" and the term "open college network" were entirely descriptive of a new type of educational body. Goodwill could not be attached to a purely descriptive term [unless of course it can, observes the Kat: it has attached to terms as purely descriptive as advocaat, vodka, Greek yoghurt and Swiss chocolate, for a start. This is what "extended passing off" is all about].

* It was significant that NOCN had not tried to restrain the defendant's use of the term "open college network", since the evidence showed that that term and the letters "OCN" were used descriptively;

* Any goodwill owned by the local networks was associated with their respective regional names, not with the letters OCN alone;

* Even if goodwill in "open college network" and "OCN" had arisen in the past, whether the affiliated networks had formed an unincorporated association or a class was irrelevant. This was because, in either event, NOCN owned no part of it;

* The counterclaim for invalidity under the Trade Marks Act 1994 s.5(4)(a) on the basis of prior rights failed, but it did succeed on the basis of a customary sign;

* Had the mark been valid, the defendant would have infringed it;

* NOCN's "swoosh" mark was not invalid for bad faith and was validly registered.

* The "swoosh" mark was infringed by the defendant's logo, and the claim for passing off succeeded.

The IPKat notes the judge's final words, at [73]:
 I now know that between them the parties, both charities, have incurred well over £400,000 on fees in this litigation. A very strong recommendation to settle at the case management conference was not taken up. The laudable cause of encouraging adult education will presumably have to endure an equivalent cut in funding solely because this dispute was not resolved at an early stage. Such an outcome is much to be regretted.
Here, of course!
This is by no means the first occasion that charities have faced each other in the courtroom in intellectual property proceedings that were unnecessary and perfectly avoidable, but if this isn't the most perfect example of a disgraceful waste of utter stupidity in branding and squandering of charitable funds for no constructive purpose this Kat has yet to see it.   While this Kat is a keen supporter of charities in general and educational charities in particular, he would be most reluctant to see so much as a penny's worth of his hard-earned cash go to any charity that adopted a logo as confusingly similar to that of another charity, whatever its alleged reason or justification.  He hopes that the Charity Commission will want an explanation.

Charity begins at home here
Faith, hope and charity here

Wednesday, 7 October 2015

Wednesday whimsies

This case seems to be
getting out of hand ...
To recap, the Court of Justice of the European Union (CJEU) gave its ruling on Wednesday 16 September in the '3D chocolate finger' trade mark case,  Case C-215/14 Nestlé v Cadbury [noted by Eleonora here]. On that very day, IPKat blogmeister Jeremy happened to alight upon the MARQUES Conference in Vienna, where some 820 trade mark experts -- mainly from Europe -- assembled. When he spoke to them, he received several different explanations as to what the CJEU's ruling actually meant.  While recent guest posts from Thomas Farkas (here) and Roland Mallinson (here) have suggested that the ruling was effectively a win for Nestlé -- subject to whatever the referring court might now do with the CJEU's ruling -- the popular press and many other practitioners have taken a different view.   Given the uncertainties as to what the CJEU's ruling actually meant, Merpel decided to ask readers of this weblog what they thought Mr Justice Arnold should do, now that he has either an answer or no answer to his questions. The results of this weblog's sidebar poll look like this:
What should the judge do? 
Accept the ruling gracefully and apply it to the letter, if that should be possible 46 (22%) 
Interpret the ruling in the light of his own knowledge of the law 58 (28%) 
Make a second reference to the CJEU to seek clarification of what it meant 52 (25%) 
Find a means of getting another judge to hear the next bit of this litigation and save himself a headache 46 (22%)
Never before has an IPKat sidebar poll attracted such a close call in terms of readers' responses.  This Kat thinks there is a case for saying that the good judge should fire the case back to Luxembourg and ask for some unequivocal clarification, though Merpel is inclined to think he should clarify the decision himself, leaving it for other judges to refer their cases to the CJEU if they disagree with him.

Here's a not particularly rigorous survey (naturally, since it's not one of ours, adds Merpel), prompted by Merpel's recent post to the effect that French applicants for European patents might not get their applications dealt with as swiftly as those of other nationalities. According to one of our more numerate readers, there have been 1,204 EP A documents published with French priority since 1 August 2015 and 194 EP A documents published with Spanish priority in the same period. Of the French documents, 118 (or 9,8% if you prefer) were published as A2s while for the Spanish only 9 (a paltry 4.6%) were published as A2s.  It is acknowledged that there may well be effects from backlogs in specific subject-matters associated with these delays. Or might this be a reprisal against the Spanish for having not only invented the concept of mañana mañana

Not all prosthetics
are patented, it seems
Around the weblogs. Here's a powerful piece of prose from Mark Anderson with the pull-no-punches title of "Amateurism doesn't work for IP", which it doesn't [adds Merpel: even professionalism doesn't always work either ...].   The IP Finance blog features a guest post from Felix Rozanski on the continuing problem of how to attract private sector investment in R&D and innovation in Latin America [Merpel's suggestion: make it more profitable to invest in IP than in infringement, which never seems to suffer from a shortage of private sector investment].  "Do not destroy the foundations of your argument" is the stern warning of Michael Thesen, noting EPO decision T2201/10 on PatLit.  The SPC Blog rejoices in the CJEU's clear and unambiguous ruling in Case C-471/14 Seattle Genetics that innovative pharma companies can get a few more days' protection for their extended monopolies. Finally, Aistemos takes a Cipher Snapshot at the distribution of patents and players across the vast, largely uncharted prosthetics sector.

From Katfriend and Polish blogger Bogusław Wieczorek comes a follow-up to an item this blog touched on over a year ago here. The story involved copyright in the unofficial so-called Polish "national anthem", Red Poppies in Monte Cassino, which turned out to be vested in the State of Bavaria.  Last month, representatives of Bavaria and Poland signed an agreement transferring the rights in this anthem to Poland. You can read the story in full in English, plus a scanned version of the agreement in question -- in Polish only -- here.

Tuesday, 6 October 2015

Gucci may be one nail away from a new legal battle

Kevin Bercimuelle-Chamot
Still dreaming of the outfits and accessories seen on the catwalks at recent Fashion Weeks around the world? Such dreams may come with legal headaches in some cases, eg for Italian fashion house Gucci.

Young and talented Katfriend Kevin Bercimuelle-Chamot (Lumière University Lyon 2) explains what is or may be going on.

Here’s what Kevin writes:

“The first half of 2015 has been a fairly animated one for Gucci. First, its (long-standing) cross-border trade mark battle against Guess? has taken a new shape. While the action that the Italian house had brought in France was dismissed on 30 January 2015, on 11 August 2015 Gucci won against Guess? before an Australian court. 

This legal saga, however, has not been the only element spicing life up at Gucci. 

Like other fashion houses [the latest piece of gossip appears to be that Phoebe Philo may be about to leave Céline] also Gucci has taken part in the fashion game of musical chairs. 

In January 2015 Alessandro Michele was appointed creative director following the abrupt departure of Frida Giannini [together with her now husband and former Gucci CEO Patrizio di Marco]. But this period of renewal might also be the beginning of a new legal battle.

Bijules nail rings
And Gucci might be the infringer this time.

Indeed, on 23 September last Gucci unveiled its Spring/Summer 2016 women’s collection. Amidst numerous accessories, golden nail rings could be spotted on the hands of models. It was the first time that the Italian house proposed this type of jewels.

The response of the fashion world has been immediate.

Among other reactions, one has to be particularly underlined. It is the one of American jeweller Bijules, also famous in the luxury market for its … nail rings. They are worn by celebrities like Beyoncé and Rihanna, just to mention a couple.

In a statement, Bijules designer Kim Jules said that Bijules may consider starting proceedings against Gucci for copyright infringement. She also pointed out how Gucci’s new creative director could have not been unaware of Bijules creations in his former capacity as Gucci head of accessories.

While waiting for future (contentious) developments, we may want to take a look at and compare the nail rings by Bijules and Gucci, respectively.  

Gucci nail rings
The “Bijules Serpensive Nail Ring” was registered with the US Copyright Office in 2007. As such it is protected by copyright under US law. The relevant rings – made of silver or gold – are composed as follows. The upper part of the ring reproduces the shape of a woman’s nail, which is attached to the finger through a ring. The lower part is shaped as a snake directed towards the hand. Overall these rings superpose the nail onto the distal phalanx of the wearer. Several models exist on the market, including one encrusted with crystals. A variation of the size of the nail can be also found.

The nail rings presented during Gucci’s show are all golden. They also reproduce the shape of a nail, that is juxtaposed to the nail of the wearer thanks to a ring at its basis. In several versions there is also the double G monogram of Gucci reproduced in small dimensions. There is also a version in which a golden bee is to be found on the basis of the ring. It is noteworthy to underline that the bee points towards the hand of the wearer. Also, other versions are made with spikes on the nail. The global size of the nail ring is variable, depending on the version.

It can be said that there might be a strong similarity between those nails rings, especially with regard to some versions. It is especially true after comparing detail by detail the rings of Bijules and Gucci.

But to hear the continuation of this story, we have to wait to see what Bijules eventually decides to do (also considering that it is unclear whether Gucci intends to market its own rings). If an action for copyright infringement is eventually brought, it will be interesting to see on what defence(s) (if any) the Italian fashion house will try to rely.”

EPO bids to save litigating employees from union's human rights infractions

Prior art? Wolf in sheep's clothing ...
Merpel has been taking another peep at the weird and wonderful topsy-turvy world of Eponia, in which the European Patent Office (EPO) has apparently seized the opportunity to offer some warm and tender paternalistic advice to those of its subjects (though it prefers the word "colleagues") who for some inconceivable reason might be troubled to bring legal cases against it.

"Out of its duty of care towards EPO employees", a duty which may indeed exist in theory but which many would say is sadly lacking in reality, the EPO urges its litigious colleagues to take great care to guard against the breach of its human rights by staff union SUEPO.  Both real and fictional Kats have memories that are admittedly fallible, but Merpel has this vague recollection that EPO's concern for human rights has been demonstrated more vividly by its defiance of them than by their protection. Was this organisation not called to account earlier this year by a Dutch court, in a judgment that the EPO ignored, trumpeting its immunity from national law? Yet it is the very same national law to which the EPO now, extraordinarily, turns.

Readers who are new to this weblog and who consider that the European Patent Office cares a bent penny for the human rights of its employees might like to look at the background here and here.  Readers who are familiar with this history can start reading last week's staff circular here:
Your rights

To all staff 
It has been recently brought to our attention that colleagues who turn to SUEPO for their pending legal cases against the Office are asked by SUEPO to sign a standard agreement in order to obtain financial support for the lawyer's fees. 
Out of its duty of care towards EPO employees, the Office requested an external legal advice to assess the conformity of this agreement to the applicable national law and has concluded that it does not fulfil the required standards of legality. 
Unions may be entitled to provide legal support to colleagues and to propose standard contracts to that effect. However, such contracts must comply with the applicable law and basic fundamental rights as recognised in all European countries and under general principles of law. 
More specifically, several clauses of this agreement seem to be against good faith and/or national law under which such contract is signed and are thus unlawful and void. 
For example, Article 13 of the agreement reads as follows:
‘Where an external lawyer has been retained, as defined above,
  • (a) The Applicant shall at all times entrust the whole procedure to the lawyer, either directly or through SUEPO's Legal Advisor.
  • (b) The Applicant shall at no time communicate directly with the Office on matters concerning the litigation without the prior and express approval of the external lawyer or the Legal Advisor.
  • (c) If the Applicant fails to meet the two requirements (a) and (b) above, financial aid by SUEPO may be revoked at any time and stage of the procedure.'
This standard clause prohibiting the staff member from communicating with the administration and therefore from taking any steps without requesting the express prior permission of SUEPO or SUEPO's lawyers restricts unlawfully the staff member's freedom of self-determination of his/her own case, infringes basic principles of the Law on general terms and conditions of employment, restricts his/her freedom of communication and constitutes an infringement of basic rights of occupational freedom in a dubious way. 
In case such unlawful clauses are used to block the possibility of amicable settlement or to exercise pressure to file further unjustified or unwanted litigation, this could be considered detrimental to the general interests of justice as well as an infringement of basic human rights of the staff member.
As a result, staff may consider contesting such contracts as void. 
In view of the above, the Office recommends staff to check with independent external lawyers of their choice the specific agreements they are asked to sign before doing so. 
If staff members are already engaged under such contract, they are in the same way and to the same extent also invited to check the lawfulness of the invoicing (proportionality of invoice against services, applicable fees under national law) as cases of overcharged legal fees/ invoices came to the attention of the Office. 
The Office's services remain at the staff's disposal for confidential consultation in case colleagues have already signed such documents and are not certain about the exact legal and financial obligations they have assumed from them. In such a case please contact the Conflict Resolution Unit.
Željko Topić
Vice-President DG 4
   Raimund Lutz
   Vice-President DG 5

Merpel wonders how many employees who are litigating against the EPO, or are contemplating doing do, would wish to take up the offer of the EPO's confidential consultation services.

Bat-tastic - Batmobile Protected by Copyright in the US

Amongst the very old school and traditionalist judgments here in the UK, it is always refreshing to read ones that step outside of that dusty judicial demeanor, and often our friends across the pond in the US show us that even judges remember their youth with fondness. Seemingly, as was the case in the recent US Supreme Court judgment in Kimble v Marvel [Katposts here and here], this emerges through cases involving superheroes, and a recent Ninth Circuit decision involving Batman was no exception.

The case of DC Comics v Mark Towle 2:11-cv-03934-RSWL-OP (accessible here) dealt with the copyright protection of the Batmobile, ever-present in the Batman saga, and its infringement through the making of replicas of specific versions of the aforementioned Batmobile [of the full-size variety, not merely toys]. As exclaimed by judge Ikuta, delivering the court's judgment; Holy copyright law, Batman!

Quickly, to the Katmobile!
As many will be aware, the Batmobile has been a part of the Caped Crusader's arsenal since the 1940s, often being drawn as a modern, high-tech vehicle containing bat-like features. It has also been features in a myriad of Batman movies and television adaptations, often being depicted as very different to the ones in the comic books. The more relevant ones were the vehicles used in the 1960s Batman TV series and the 1989 movie Batman. For both productions all rights to the recreation of Batman and other intellectual properties related thereto were licensed to the relevant parties for the purposes of merchandising, including the Batmobile. The defendant, Mark Towle, created life-like replicas of the Batmobile features in the TV series and the movie as a part of his business Gotham Garage, selling them to car collectors with a keen interest in Batman. He also sold car modification kits enabling a purchaser to do so themselves. DC Comics then took Mr. Towle to court in 2011 for both copyright and trademark infringement, as he had sold the replicas with clear indication and intention for them to be associated with the Batman brand.

The first claim dealt with by judge Ikuta was whether the Batmobile would be afforded copyright protection under US law ["to the Batmobile!" she exclaimed].

Through an extensive discussion of precedent surrounding comic book characters and protection afforded to them, judge Ikuta laid down a three-part test in assessing whether a character (or in this case, vehicle) would be afforded copyright protection. First, the character must generally have physical as well as conceptual qualities [meaning it has to not simply be a literary idea, but manifest itself in a physical and/or conceptual manner, such as in images, movies etc.]; second, the character must be sufficiently delineated to be recognizable as the same character whenever it appears [this need not be in terms of appearance, but through their character, personality etc.]; and third, the character must be especially distinctive and contain some unique elements of expression [in other words, not be a generic character with generic elements in their representation].

Some Kats have a secret alter-ego...
In applying the test judge Ikuta quickly saw that, as the Batmobile has appeared in many renditions in a variety of forms, it has conceptual and physical qualities. The vehicle has also maintained a sufficient amount of distinct features over the years, even with minor (or more major) difference in some iterations, along with its specific characteristics and features in equipment and technology, making it sufficiently delineated to be recognizable as the same vehicle. Finally, judge Ikuta saw that the vehicle was especially distinctive, containing unique elements of expression through its status as a key part of Batman's crime-fighting repertoire, along with its very distinctive name. The Batmobile therefore was deemed to be protectable under copyright.

As a final step the Court looked at whether Mr. Towle's replicas had in fact infringed on DC Comics' rights in the Batmobile. Both parties had no contentions over whether the cars were actual replicas of the two versions of the Batmobile. Mr. Towle argued that, as the Batmobiles features in the 1989 movie and the 1960s TV show were derivative works, he did not infringe on DC's rights in the underlying work. Judge Ikuta quickly dismissed this, stating that "...if the material copied was derived from a copyrighted underlying work, this will constitute an infringement of such work regardless of whether the defendant copied directly from the underlying work, or indirectly via the derivative work". No rights were transferred as a part of the licence agreements for the two derivative works, and therefore Mr. Towle had infringed DC's copyright through making his replica vehicles. This was deemed to be the case even though the two versions of the Batmobile differed from their depiction in the comic books.

The case was an interesting one, at least to this Kat. The Batmobile has been depicted in a variety of forms over the years, and when comparing the Batmobile in the recent Dark Knight movie, and, for example, the 1960s TV show version, it is hard to say they are cut from the same cloth. Even so, based on a US law argument the decision seems right [although this Kat invites anyone who might disagree to let him know why], and as judge Ikuta ended, quoting Batman: "[i]n our well-ordered society, protection of private property is essential".

Monday, 5 October 2015

Never Too Late: if you missed the IPKat last week

Were you away or just too busy to read the IPKat last week? Do not despair, because our dear friend and colleague Alberto Bellan is back as usual with his Never Too Late feature, now on its 66th edition.

So here's what happened last week:

"Punitive damages" is one of those topics that sharply divide the community of European lawyers. Mark takes a tour through the Court of Justice of the European Union's (CJEU) decisions on this point.

A few weeks ago this blog reported on the latest Opinion of the European Copyright Society (ECS), this time regarding a case currently pending before the Court of Justice of the European Union (CJEU): HP Belgium v Reprobel, C-572/13. IFRRO, the International Federation of Reproduction Rights Organisation, does not fully agree with ECS, Eleonora reports.

On 26 November, the Journal of Intellectual Property Law & Practice celebrates its 10th anniversary with a full day's conferencing, discussion, dispute and debate. Along with stellar speakers, there's another reason why IPKat aficionados should join the event, writes Jeremy.

WIPO, along with researchers at Cornell and INSEAD, recently published the Global Innovation Index. The index ranks countries by their innovativeness and usually grabs a few headlines, particularly in countries who've fared well. Nicola tells all.

Have you ever come across a copyright law that provides that the State automatically acquires ownership of copyright in a certain work upon death of the relevant owner? This appears to be what South African (SA) Government may have in mind (unless all this is just a result of bad inaccurate law drafting) with one of its proposed amendments to this country’s copyright law. IP enthusiast and Katfriend Nedim Malovic (Stockholm University) explains.

Once every three months or thereabouts, the IPKat and Merpel post an update of the goings-on both on this weblog and on other IP-flavoured blogs to which members of the IPKat's blog team contribute. Here's the last edition penned by Jeremy.  

Every year it is the pleasure of the IPKat to invite his friends, colleagues, informants and competitors in the intellectual property media sector to join him for a get-together at which matters of mutual interest are discussed in a friendly and informal atmosphere. This year is no exception, says Jeremy.

Here’s an interesting thought experiment about how patent offices should operate. Two patent applications are pending at the European Patent Office (EPO). Imagine that one was filed several years ago by Microsoft, and the other was filed at the same time by (say) an Italian SME which files “only” 10 patent applications per annum. Nothing much has happened in either case now for several years, but both files are allocated to the same examiner. Which case should the examiner pick up first – the one filed by the “customer” with 750 filings per year, or the one filed by the SME? Here's the first part of this tale, kindly recounted by Merpel.

… and here's the second one.

$100 billion loss per year (emphasis in original). At least. That is the sum of global IP losses due to 3D printing predicted by IT research and advisory company Gartner for the near future”, some say. Really, wonders Neil?

From guest contributor Emma Perot comes this appraisal of a dispute between a giant publisher of valuable and useful scholarly material on the one hand, and those who seek access to that same information on the other. 

Eleonora reports on a case (Tilda Riceland Private v OHMI - Siam Grains (BASMALI), T-136/14) that the General Court (GC) decided on 30 September last, and appears to have some relevant implications particularly as far as that peculiar creature of UK common law known as extended passing off is concerned.

Hyperlinking-loving ALAI (the Association Littéraire et Artistique Internationale) has recently released a new Report and Opinion on a Berne-compatible reconciliation of hyperlinking and the communication to the public right on the internet. Eleonora reports on that and hosts an analysis of a recent Greek decision by Katfriend Yannos Paramythiotis (Paramythiotis and Partners)

Katfriend Mira T. Sundara Rajan -- herself a concert pianist -- has something special to say about one of the most gifted musicians of our generation and an interesting issue in moral rights. 



Never too late 65 [week ending on Sunday 27 September] – Scotch whisky battle in far-off China | CJEU loves KitKat | EPO in Case T 0327/13 | UPC opening in London | Happy birthday copyright case | Goldbear saga | Tatoos and copyright | IP in 2015 – Where we are vs. Where I thought we’d be | PETA litigates over macaque selfie | JIPLIP event

Never too late 64 [week ending on Sunday 20 September] – Adwords in Canada | EU Draft consultation on ISPs | "The UPC: A Panel Debate" | Prince and Mean Music Companies v That lovely baby dancing Prince  Lenz v Universal Music | CJEU in KitKat | Paul Burrell v Max Clifford [2015] EWHC 2001 (Ch) | Economics of Collecting Societies | Who is an 'intermediary' for the sake of Article 11 of the Enforcement Directive? | IP: When innovation is the answer to a spiritual funk

Never Too Late 63 [week ending on Sunday 13 September] - Fair compensation in reprography and private copying: the ECS’ version | Substitute sellers | Teva UK Ltd & Another v Leo Pharma | Evidence-based IP policy | KitKat case | UK IPO’s priorities | UK IPO’s website vs complete copyright legislation | Patent Attorney Qualifications | Mylan and Actavis v Warner-Lambert | Copyright and censorship | Suicide at the EPO | Private copy levies in Austria | Court fees in the UK.

Never too late 62 [week ending on Sunday 6 September] - Copyright and industrial design in Japan | Greek political slogans and trade marks | Moral rights in legal works | Economist v patents | CJEU in Iron & Smith Kft v Unilever NV | Copyright over criminals' works | IPEC in Minder Music & Another v Sharples | Apple’s European slide-to-unlock patent declared invalid in Germany.

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