Slovenia's plans for European IP

Thanks to the IPKat's friend Bonita Trimmer (Wragge & Co) he now knows what the Slovenian Presidency of the European Union for the next few months means for those of us who toil ceaselessly in the field of intellectual property.

Right: a new European technique for achieving consensus on IP issues involves everyone keeping their mouths shut ...

Slovenia's secret plans have been presented to the European Parliament by the country's Economy Minister, Andrej Vizjak, who says:

"The Council is well aware of the importance the European Parliament attributes to a better patent system in Europe. Our goal is to find consensus on a system which takes account of the needs of industry and which can also lead to an agreement on Community patents".

The Minister also drew attention to the Directive on spare parts "on which the Council has not yet succeeded in reaching an agreement due to a lack of sufficient support for the original Commission proposal". The Slovenian Presidency will soon convene a meeting of the competent Council working party [IPKat note: 'competent' in this context merely means that the working party has met the legal criteria and has been vested with the necessary powers to do its job, not that it's any good at doing it] to study the options for reaching an agreement with the European Parliament.

The IPKat notes that the Slovenian Presidency is in favour of consensus-based solutions. He hopes that the Presidency will appreciate something that has often eluded its predecessors: consensus isn't something that happens overnight, particularly in fields of IP protection in which the interests of the various sides involved are in conflict with one another and where what is agreeable to one industrial sector may not be agreeable to another (in other words, for example, the pharmaceutical and healthcare industries may find their point of consensus as between IP owners, their competitors, industry regulators and consumers, but it might be a different point of consensus to that struck within the electronics, engineering or other industries). Please don't impose arbitrary deadlines and talk about "last chances" to reach consensus: it's childish and fails to appreciate the complexity of the issues involved.

EU on term extention for sound recordings

The IPKat has learnt from a combination of Boing Boing and Slashdot that the EU appears to have ditched plans to extend the term of sound recordings, and also to require ISPs to filter content.

The website of the CULT committee (don't get too excited - CULT stands for Culture and Education, rather than anything more sinister) did not have the latest set of minutes, recording this decision.

Can any of the IPKat's readers offer any further information?

Au secours!

There's another non-English Court of First Instance decision today on an appeal from an OHIM Board of Appeal on a Community trade mark law issue. It's Case T‑106/06, Demp BV, anciennement Demp Holding BV v OHIM, BAU HOW GmbH. Available in French and German only, so far, it involves the two trade marks depicted here and the IPKat thinks it's an opposition based on likelihood of confusion. More than that, he's not sure. Can anyone kindly enlighten him? Please post explanations below or email the IPKat here.

Mr Clean too dirty?

The IPKat's good friend and blogging colleague Frédéric Glaize has drawn his attention to an article published in Le Monde a week ago. This piece reports the tale of Pierre Chevalier, who had in the past portrayed "Mr Propre" (Mr Clean) for advertising purposes. M. Chevalier was told that his trailer was too dirty and must be moved. The trailer at stake has been parked on the camping of Parc des Roches in Saint-Chéron (Essonne) and had been left there since August by its owner. In November, Philippe Waver became the manager of the camping of Parc des Roches and wanted the trailer out, aiming at obtaining a fourth star for his camping. The bald actor told the journalist that the whole camping premises were closed and that the all other parking lots were as dirty as his.

The IPKat wonders whether this publicity will damage the goodwill in M. Chevalier's "Mr Clean" image, or whether it will open up fresh opportunities for diversity into areas in which cleanliness is not a merchandable commodity.

New IP Queen's Counsel

The IPKat sends his congratulations to 3 New Square intellectual property specialist Colin Birss (left) and to 8 New Square's IP guru Richard Meade (right) on becoming Queen's Counsel in this morning's list.

First degree burns

The IPKat owes this delicious little story to one of his favourite people, Professor Ruth Soetendorp (Joint Director, Centre for Intellectual Property Policy & Management, Business School Bournemouth University):

On a guided tour of Saigon's major market, bustling with wholesalers' stacks of garments and articles ready for onward distribution, the guide stopped in front of a section piled with wrapped shoes. "These are fake shoes" he explained "they will be burned". I was delighted, if surprised, to learn that Vietnam was taking IP enforcement so seriously when the guide went on to say "We produce fake shoes, fake clothing, fake money which we burn in honour of our deceased relatives, especially at New Lunar Year, to make sure they are provided for in the world to come".

Burns Night here
Grateful Dead here
Tiger tiger burning bright here

AG says peeking isn't distribution

Here's a copyright opinion from AG Sharpston in Peek & Cloppenberg. Cassina had an exclusive right to manufacture Le Corbusier furniture in Germany. P & C bought Le Courbusier-designed chairs, made by a different company, in Italy where, at the time, they were not protected by copyright. The furniture was used in P & C’s German branches in rest areas for customers (weary husbands/ boyfriends/ partners no doubt) and a table was used as part of a window display. The items were protected by copyright law in Germany. Cassina argued that this infringed its distribution right under copyright law. A reference from the German court to the ECJ ensued:

‘1.(a) Can it be assumed that there is a distribution to the public otherwise than by sale, within the meaning of Article 4(1) of [the Copyright Directive], in the case where it is made possible for third parties to make use of items of copyright-protected works without the grant of user involving a transfer of de facto power to dispose of those items?

(b) Is there a distribution under Article 4(1) of the [Copyright] Directive also in the case in which items of copyright-protected works are shown publicly without the possibility of using those items being granted to third parties?

2. If the answers are in the affirmative:

Can the protection accorded to the free movement of goods preclude, in the abovementioned cases, exercise of the distribution right if the items presented are not under copyright protection in the Member State in which they were manufactured and placed on the market?’

According to AG Sharpston, question 1(a) had to be answered in the negative. The definiton of ‘distribution’ implied a transfer of ownership. Such a reading would be in accordance with the relevant international conventions, and would also allow for the free movement of goods. A rule which found infringement where a defendant lawfully purchased protected goods in a territory where they were not protected by copyright, and then made them available temporarily where they were not so protected was not necessary to protect the specific subject matter of copyright. The fact that a narrow definition of the distribution right here contrasted with a wide definition in relation to intangible works, such as cinematographic or musical works, did not matter greatly, since intangible works were by their nature ‘, susceptible to being distributed in different ways from tangible works’.

It followed a fortiori that displaying the works in a shop window (question 1(b)) also did not infringe the distribution right.

It was therefore not necessary for the AG to answer question 2, but she found that the free movement rules did not point to a different conclusion.

She also stressed that it made no difference that the copyright owner hadn’t consented to the Italian sale.

The IPKat says that this looks like a victory for common sense. Surely copyright infringement can’t ever have been intended to stop the use (rather than the manufacture) of furniture? He’s not quite sure about the AG’s discussion of intangible works – isn’t all IP intangible?

Rambus in the wars

Last Friday Rambus Inc. failed in its attempt to save most of its patent for a memory-chip design, the validity of which was challenged by Hynix Semiconductor Inc. and Micron Technology Inc. The European Patent Office rejected all but one of Rambus's requests to reinstate patent claims in the case. However, this decision still leaves the Los Altos, California-based company with at least five other European patents related to dynamic random access memory chips.

Rambus, which designs semiconductors, has been embroiled in lawsuits in both Europe and the US with chipmakers Infineon Technologies AG, Micron and Hynix over royalties which Rambus claims they owe for using its patented technology. In March 2005 Infineon agreed to pay as much as $150 million to settle its five-year patent dispute with Rambus.

Litigation continues in the US, where cases involving Hynix, which will address antitrust, unfair competition and fraud claims against Rambus, are scheduled for a trial beginning next week in San Jose, California, Federal Court. A non-jury trial in Wilmington, Delaware, was held in November over antitrust claims filed by Micron against Rambus, on which the judge has yet to rule.

Left: never mind the Rambus, what about the Catbus!

Meanwhile Rambus is appealing against a US Federal Trade Commission finding that it used its patents to exact excessively high licensing fees from the memory-chip industry (arguments are scheduled to be heard on St Valentine's Day, 14 February). In Europe Rambus still faces allegations by EU antitrust regulators that it broke competition rules by seeking "unreasonable royalties" for some memory chips.

Patent royalties are the lifeblood for Rambus, generating $118.3 million, or 85 percent of the company's revenue, in the first nine months of 2007. The EU has claimed that Rambus practised "deceptive conduct" by hiding patents when industry standards were set which allowed the company to claim royalties from rivals. Rambus responded to the EU's allegations at a two-day hearing in Brussels last December (source: Stephanie Bodoni, Bloomberg News).

The IPKat is fascinated at the manner in which Rambus seeks to manipulate the market with its patents, which appear to cover a broad spectrum of validity: the company demonstrates that the interests of the innovator, the developer and the patent troll cannot always be easily separated. Merpel adds, from the point of view of internal corporate governance, how does one prepare an annual budget for a business that must almost by definition spend so much of its income on an expensive activity with an uncertain outcome such as litigation?

Rambus here
Rambo here

It's only a game -- or is it competition?

The IPKat would certainly have missed this decision, had it not been for subscription-only service Lawtel, which picked it up towards the end of last week. It's Football Association Premier League Ltd and others v LCD Publishing Ltd [2007] EWHC 3171 (Ch), a Chancery Division decision by Mr Justice Warren on 8 November of last year (available here on BAILII, on whose index you can find it prophetically listed under '18 November 2008').

Right: thanks to the latest technology, photographers are now able to take portrait snaps of footie stars with no fear of 'red eye' ...

This was an application by the FA to strike out part of LCD's defence that raised issues of restraint of trade and competition, in response to the FA's claim which alleged various economic torts. The FA let photographers and photographic agencies visit football stadiums under a licence that required them to abide by its conditions. One such condition was that they would not distribute photographs taken by them at such clubs for use in any magazine that was devoted solely to a single club or player. LCD published certain magazines that were devoted solely to a particular football club or football player. The FA claimed that LCD's magazines involved the unauthorised use of photographs taken by authorised photographers at stadiums of football clubs under its control, which constituted an infringement of copyright and trade mark rights, as well as an inducement to photographers to breach the licence agreements. According to the FA, LCD had failed fully and properly to plead its competition defence, which should therefore be struck out. LCD disagreed, arguing that the FA's particulars of claim, as served, were defective, contradictory and so obscure that further particulars were required before LCD could fully plead its competition law-based defence.

Warren J dismissed the FA's application to strike out. He accepted that the FA's particulars of claim were not defective, contradictory and obscure. He also considered that there was no further information that LCD needed before it could give particulars of its competition defence in relation to the FA's allegations of inducing a breach of licence. So far, so good. But this judgment was a game of two halves. The learned judge concluded that it was not in the interests of justice to strike out LCD's competition defence at this very early stage: it was appropriate that LCD should be given the opportunity to particularise its competition defence. Having said that, it was also appropriate to make an 'unless order', requiring LCD to provide particulars of its competition defence.

The IPKat is glad that the competition defences will be given an airing. He remembers a time when football in the UK was only a game and everyone felt they had a share in it. The game has become so packaged, marketed and proprietised that many people feel increasingly remote from it. Merpel wonders whether there isn't also a freedom of expression issue here.

FA here
Sweet FA here

A more recent decision, this time not available yet on BAILII but picked up by LexisNexis Butterworths, is Football Association Premier League Ltd v QC Leisure and others, [2008] EWHC 44 (Ch), a Chancery Division for England and Wales ruling of Mr Justice Barling.

At the instigation of the FA, each Premier League football match was filmed and modified. That process created 'the World Feed' in which the FA owned the copyright. The FA licensed foreign broadcasters to broadcast the 'World Feed' supplied from the United Kingdom, these broadcasts being made by encrypted signals via satellite.

Left: competition experts clash over the position to take regarding the broadcasting of big matches

Each broadcaster supplied decoder cards to its paying customers in its own territory so as to enable its customers to receive the broadcasts. The FA's licences required foreign broadcasters to undertake to procure that no device was knowingly authorised or enabled by or with their authority or that of their sub-licensees, distributors, agents or employees so as to permit anyone to view in an intelligible form any such transmission outside their particular licensed territory. In other words, broadcasters were prohibited from supplying non-UK cards for use in the UK and none of their customers were authorised to review or receive broadcasts from within the UK.

QC imported and supplied equipment to bars and public houses in the UK. According to the FA, QC had supplied British pubs with non-UK decoder cards, sourced through subterfuge from Greece and elsewhere, which (in the firt two actions) FA said they were not entitled to do. In a third action the FA alleged that the defendant, a pub-owner, had, with the knowledge and authorisation of QC, been using non-UK decoder cards in order to broadcast live Premier League football matches, damaging sales of decoder cards authorised for UK reception by the FA's licensees.

The FA issued proceedings alleging that the actions of QC and the pub-owner breached the anti-circumvention provisions of sections of 298 and 299 of the Copyright Designs and Patents Act 1988. The FA also alleged that the defendants' actions authorised and procured others to copy, without permission, the copyright works comprised in the matches. The defendants did not contest the facts as alleged, but raised a Euro-defence that the prohibition contained within the licence agreements, on which the FA relied, was based on or caused by agreements that prevented, restricted or distorted competition within the common market, contrary to Article 81 of the EC Treaty.

In these proceedings the FA sought summary judgment on the defendants' competition defence on the basis that it had no real prospect of success in the light of the European Court of Justice's ruling in Case 262/81 Coditel SA, Compagnie Générale pour la Diffusion de la Télévision v Ciné-Vog Films SA. Said the FA, its licence agreements with foreign broadcasters were akin to the licence in issue in that case, in which no breach of Article 81's predecessor was found to exist.
Barling J dismissed the FA's application to for summary judgment. In his view, the scope of the judgment in Coditel was narrow, indicating that the mere fact of the grant to a licensee of exclusive rights in a particular territory was not anticompetitive -- but nothing more than that. The licence in this case did not consist merely of a grant of exclusive right. Instead, it appeared to impose an obligation on each foreign broadcaster to undertake to 'procure' that non-UK decoder cards were not authorised or enabled by the licensee or any sub-licensee or distributor, agent or employee of such persons, so as to enable anyone to view the foreign broadcaster's transmission outside the latter's territory. This being so, the decision in Coditel was not determinative of the likelihood of success of the Article 81 defence in this case and the FA failed to demonstrate that there was no real prospect of success at trial.

The IPKat is pleased that this dispute will go to trial. At stake will be the issue of whether football broadcasting is a special case, given the international nature of its financial structure and the very heavy interdependence of the sport itself and the broadcasting system on which it feeds, or whether the principles that have brought to bear in other commercial and industrial sectors will be applied in similar fashion here. Merpel wonders whether any inference can be drawn from the fact that the Commission so far given a bill of health to other allegedly anticompetitive European and national football broadcasting arrangements (see here, here and here).

.. um, er ...

The IPKat's eagle-eyed friend Janice Trebble (Saunders & Dolleymore) has just told him that she has received notice that the top-level domain for the United States Minor Outlying Islands (.um) is now accepting domain registrations. Comprised of a group of uninhabited islands in the Pacific Ocean and Caribbean, they include Midway and Wake Islands, and the Johnston Atoll. Adds Janice,

"I am sure your readers could come up with some good suggestions as to why a group of uninhabited islands would need a top-level domain and some interesting suggestions as to who might register there and why!! I suspect filthy lucre to be at the bottom of this....".

If you have any interesting, do please share them with the IPKat by posting a comment below or emailing him here.

Some facts and figures concerning the (nearly) uninhabited Outlying Islands here