U-turn for U2?

According to a tiny article in The Times Online on Monday,

"the [UK] Government has indicated that it will support a policy change that will allow pop stars to earn more money from their recordings. Andy Burnham, the Culture Secretary, said that the Government would revisit its opposition to extending the copyright term on sound recordings from 50 to 95 years".

There's nothing on the Department of Culture, Media and Sport website to substantiate this, though. Can any wise reader put the IPKat right as to what's going on?

Syria opts for Hague

By the Hague Notification No. 84 notice, WIPO announces that the Syrian Arab Republic has acceeded to the Hague Agreement Concerning the International Registration of Industrial Designs (Geneva Act). The Geneva Act enters into force in respect of the Syrian Arab Republic on 7 May 2008.

Right: not all Syrian design is industrial. This lovely Cintamani tile dates from the 17th century.

More on the Hague system here
Full list of Hague members as of 7 February here

CTLR: Open Source Summit special issue

The February 2008 issue of Sweet & Maxwell's monthly Computer and Telecommunications Law Review has landed on the IPKat's desk and it's rather different from usual: this is a special issue, dedicated to the publication of the papers delivered at last year's Open Source Summit in London. This was the event, jointly sponsored by London-based law firm Olswang and its US friend Greenberg Traurig (GT), at which over 250 open source enthusiasts (and not a few cynics--though they kept a low profile) gathered to discuss, among other things, the role of open source within modern business models for software development and exploitation.

The seven discussion papers published in this issue are:

* "Innovation goes public", by Bruce Perens, a powerful speaker, a naturally creative thinker and a man who is so synonymous with the open source movement that he has all but trade marked it;

* "Origins and development of open source and GPL licensing" by Heather Meeker, a GT attorney and IP licensing academic who has a background in computer programming;

* "Key intellectual property issues in acquisitions involving open source software" by Jim Markwith -- open source software licensing counsel at Microsoft, who previously worked with Adobe. Jim also lectures at the Santa Clara University;

* "M&A, joint ventures and IPOs" by Nigel Swycher (Olswang's Open Source Unit), who masterminded the Summit;

* "Source code assessment in due diligence" by Kat McCabe (General Counsel, Black Duck Software: the IPKat is well-disposed to everyone called Kat, and this Kat has a great deal of practical and legal insight to commend her);

* "Commercial licensing models" by Jan Wildeboer (Solution Architect at Red Hat and a well known enemy of software patents);

"Open source in the mobile world" by David Wood (Executive Vice-President of Research, Symbian, and an author and commentator on software issues).

The IPKat has managed to procure a few spare copies, which he's happy to send out to the first few people who write in to request them. Please email him here and he'll let you know if you're one of the lucky few -- but remember, he can only send it if you've got a terrestrial address and a letter box ...

In search of Mr Spicy

The attention of the IPKat has just been drawn to this press release from Bird & Bird, headed "Landmark case clarifies law on keywords and sponsored search results".

Right: well, he DID marry a Spice Girl ...

The release reads, in relevant part:

"International law firm Bird & Bird together with Yahoo!'s In-house legal team successfully defended Yahoo! UK Ltd and its sister company ... in a groundbreaking trade mark infringement case concerning keywords and sponsored search results. The English High Court decision handed down on 20 February 2008 determined that when Yahoo! Search Marketing matched search terms entered by users to keywords bid on by advertisers in order to display sponsored links, there was no use of a trade mark by the defendants for the purposes of infringement.

The case was brought by Mr Wilson, proprietor of a Community trade mark for the words MR SPICY, registered in respect of food, sauces and spices and provision of food and drink. Mr Wilson complained that sponsored links to third parties' websites appeared when a user typed "MR SPICY" into Yahoo!'s search engine - arguing infringement of his trade mark by the defendants.

... Yahoo! ... argued that advertisers whose sponsored links appeared had not purchased MR SPICY as a keyword. Instead, sponsored links appeared due to matching technology which responded to the input of MR SPICY by displaying sponsored links to advertisers who had bid on related keywords, such as "spicy". Mr Wilson claimed this was also trade mark infringement.

... Yahoo! ... applied for summary judgment or for the claim to be struck out on the basis that they have not used the trade mark or that any use by them did not amount to "trade mark use".

In his decision Mr Justice Morgan held:

* The trade mark was not used by anyone other than the user who entered the words "MR SPICY" into the search engine.

* The defendants had only responded to the use by the user and this did not amount to use of the trade mark by the defendants. The judge held this would even be the case if advertisers had bid on the keyword "MR SPICY".

* Even if there was use by the defendants, it was use of the English word "spicy" and not "MR SPICY".

* Even if there was use of "MR SPICY" by the defendants, such use was not use "as a trade mark" following the ECJ case in Arsenal Football Club plc v Reed (C-206/01).

The claimant did not seek permission to appeal from the judge ...".

The IPKat wonders why this decision has been kept so quiet for a fortnight and hopes that it will soon be put on BAILII, where we can all look at it and read it carefully. He'd love to know what it says about the decision of the Court of Appeal in Reed v Reed. He also notes that the Mr Spicy case hasn't so far shown up on Google or even Yahoo! news searches. Merpel says, but what if the trade mark proprietor also registers his mark in respect of the service of providing results through the use of search terms on the internet?

Longer life for cellphone battery power -- but not for patents

Ever wished your mobile phone didn't cut out in the middle of crucial conversations? Well, Qualcomm is either your knight in shining armour or a villian, depending on your perspective. Sadly, the brief note from LexisNexis Butterworths on yesterday's decision doesn't go into all the details of Qualcomm's attempt to enforce its battery patents -- but the IPKat expects that the judgment in Qualcomm Incorporated v Nokia Corporation [2008] EWHC 329 (Pat) (Patents Court, England and Wales, before Mr Justice Floyd) was a long and technical one and he accepts that the function of an alerting system is to alert. The IPKat suspects that the full transcript will be available on BAILII soon, and hopes that any delay is only for the sake of doing the proof-reading.

The case goes like this. Ever since mobile phones were invented, battery power has been a problem: mobiles consume power even when not in active use because, while in idle mode, they remain switched on and tuned to the appropriate paging channel in order to learn whether their base station has sent them a message. In effect this means that most battery power is simply wasted.

Qualcomm owned two patents. Its 324 patent related to an apparatus for controlling the way in which the mobile phone reduced power consumption by monitoring a channel for incoming messages intermittently, while its 482 patent was for a method and device for the correction and limitation of the transmitted power of a mobile phone. Qualcomm sued major mobile phone maker Nokia for contributory infringement of its 324 patent and for primary infringement of its 482 patent by selling its handsets.

Nokia denied infringement of both patents and counterclaimed for revocation, alleging the usual grounds of invalidity (lack of novelty; obviousness; lack of inventive step; insufficiency and added matter).

Left: from mobile battery to immobile cattery -- the IPKat also consumes energy when idle ...

Mr Justice Floyd found that, on the proper construction of the first claim 1, the 324 patent was invalid on the grounds of lack of novelty and obviousness. The 482 patent fared little better, in that claims 1, 2, 9 and 11 were invalid for lack of inventive step and claims 9 and 11 were also invalid for insufficiency.

There's more information on this dispute, which echoes an International Trade Commission dispute between the same parties, on Electronista, the San Jose Mercury News and the Register.

Somewhere to Park those Aussie bikes?

Here's the latest on Honda Motor Co Ltd and another v Neesam and others [2008] EWHC 338 (Ch). This is a decision last Thursday from Sir Andrew Park, sitting as a judge of the Chancery Division, England and Wales. It originates from the increasingly useful LexisNexis Butterworths subscription service and is not, so far as the Kat is aware, available anywhere else.

Right: the IPKat with his freshly-imported bike. The red triangle is an allusion to the famous beer trade mark of the same shape and colour ...

By way of background, both claimants were companies within the Honda group. Neesam and his colleague were partners in the third defendant, a business that parallel-imported genuine Honda motorbikes from places were they were cheap and sold them at a decent profit where they were more expensive. Initially Honda got summary judgment against all three defendants, and against another defendant in respect of certain bikes that were the subject of proceedings noted by the IPKat here.

This case was about the parallel importation of Honda motorcycles into the UK and their subsequent resale by the fourth defendant . Between 1999 and 2004 the fourth defendant purchased a substantial number of bikes from an Australian company that had, in turn, purchased them from Honda Australia and from the worldwide parallel imports market. Honda Australia knew the Australian company was a dealer within the trade, and that it would be reselling the bikes it had bought to non-Australian purchasers who would resell the bikes in the course of retail or wholesale businesses. Honda however sued the fourth defendant in the UK, alleging trade mark infringement. The fourth defendant denied liability: since Honda, through its Honda Australia operation, had consented to it putting the motorcycles on the UK market and selling them (before that consent was officially withdrawn in May 2003), its trade mark rights were exhausted. Honda denied that any consent had been given to market the bikes on the UK market or elsewhere in Europe but added, just in case it was wrong, that any consent it might have given was terminated at the end of June 2002, when it discovered the final destination of the bikes it had sold to the Australian company.

Sir Andrew Park held for the defence. On the evidence, Honda Australia had impliedly consented to the sale of bikes to the fourth defendant, so that they could be resold in the course of its own business. Honda's claim for relief, except in respect of consignments of bikes supplied by the Australian company after consent was explicitly withdrawn on May 2003, failed.

Highly popular Australian exports here and here
Less highly popular Australian exports here and here

Recent publications

From the beginning of 2008, Oxford University Press took over the publication of the Reports of Patent Cases--a series that goes back to 1883 and which is mandated by statute--from Sweet & Maxwell (publication of the RPCs is put out to tender; the series is published for the UK IPO). Mary Vitoria QC remains the editor. There are two main changes, so far as the IPKat can see. One is that the RPCs now have a neat web page of their own. The other, to the annoyance of the postal services, is that it now comes out once a month instead of fortnightly. For those who like statistics, the first six cases reported this year are evenly split at 3-3 between patent and trade mark decisions. Paper subs start at £360.


Meanwhile at LexisNexis, the black shiny Intellectual Property and Technology Cases continue apace. The IPKat visited the website printed inside each issue, here, but came away from it several minutes later without having been able to find its price. He wonders what would be the minimum number of clicks from that page to a page containing IP&T subscription details, assuming that the person looking for information on IP&T doesn't already know where to find it.


The Kat receives occasional copies of Product & Image Security, which styles itself as "official journal of Product & Image Security Foundation". There's not a lot of legal analysis, since its prime readership is people who trust technology more than lawyers. If you like to have your products lasered, electro-tagged, holographed, DNA'd or painted luminous yellow until you choose to market them, this is the publication for you. It's £75/140 euro a year, but the Kat suspects that it's so advertising-driven that a determined haggler could probably negotiate a good personal rate without denting profit margins too much. Details here.


Now, this isn't a periodical -- but it's a real curiosity. Music 2.0 is a collection essays by Gerd Leonhard (co-author of The Future of Music). Gerd is a blogger and a visionary, though those of make our livings from copyright-based business models may not always (or ever, says Merpel ...) like his messages. These essays are drawn from Gerd's blogsposts and they are as opinionated and provocative as he is. You can order this book, or download it and pay whatever you want for the pdf, here. Whether you read it or not, it asks a lot of difficult questions should under no circumstances be ignored.

More brinksmanship as RIM fends off Visto patent

Last Thursday Mr Justice Floyd, in the Patents Court for England and Wales, gave his ruling in Research in Motion UK Ltd v Visto Corporation [2008] EWHC 335 (Pat), a decision noted by LexisNexis Butterworths but not yet available on BAILII.

Research in Motion ('RIM') made and sold the BlackBerry handheld wireless device,and ran the computer software and infrastructure for it. Visto held a patent for a 'system and method for synchronizing electronic mail across a network'. This was, in effect, (i) a means for retrieving an email from a server, (ii) a synchronisation module for deciding whether to send the email to a second mail store, possibly on a global server which provided HTML access to its contents for roaming users, and (iii) a communications module for establishing a channel with the second mail store, possibly through the second mail store's firewall, to send the email to the second store using HTTP.

In October 2006 RIM applied to revoke this patent and, two months later, sought a declaration of non-infringement of it in respect of the Blackberry system as described in a product and process description (the first PPD). Visto acknowledged non-infringement, but pointed out that the first PPD omitted any reference to software known as the BlackBerry Mail Connector. Visto's counterclaim therefore included a claim for infringement in respect of that system alone, the mail connector being described in a second PPD. Visto also made an unconditional application to amend its patent.

The inventive concept of the first claim of the patent as amended was that it was an email system comprising a firewalled LAN with a first mail store and systems for retrieving emails, deciding whether to send them to a second mail store within a global server, establishing a secure HTTP communication channel through the firewall and sending the email. It also had means operable to initiate email synchronisation from within the LAN firewall and a smartphone with a third mail store.

According to RIM, the patent as proposed to be amended was invalid both because it was obvious and because, being a claim for a computer program as such, it was not an invention under section 1(2)(c) of the Patents Act 1977. Visto disagreed: it said that its patent provided a system which enabled the remote user to gain access to a fully up-to-date email store without any implementation or assistance from a corporate IT department. Visto explained that there were three key innovative elements to it: the system's use of HTTP to cross the firewall, which was a commonly enabled port; the use of a global server which might be maintained by a third party; and the initiation of the synchronisation from within the firewall, so that the user did not have to negotiate a way, by dial-up or other means, through or around the firewall.

Floyd J ruled that Visto's patent, as proposed to be amended, was invalid both for lack of inventive step and because it claimed a computer program as such. If it had been valid, it would however have been infringed by RIM's mail connector. In his assessment. the primary evidence clearly established that the use of an HTTP communications channel to export emails from within a LAN firewall was obvious, being a practice that had become very popular in the run-up to the priority date. When providing users with web-based HTTP access to their emails, it would have been obvious to consider using the same protocol to load the emails on to the server. HTTP was a generic protocol well suited to handling all the range of data and it would have been attractive as it would have allowed code re-use. Moreover, the contribution of Visto's patent lay solely in excluded matter. It was in substance a computer program, not a new combination of hardware, being simply the effect of running the program on the computer.

The IPKat is acutely conscious of the large number of disputes that seem to turn on whether an invention for which patent protection is sought is precluded from being patented by the computer program 'as such' bar. It is his impression that, while the principle is easy to grasp in theory, it is often very difficult to apply in practice since the same invention can be both dressed up as a claim to something that lies outside the scope of the bar and as something that is stripped down to something that is entirely precluded from patentability by it. Irrespective of the desirability or otherwise of operating the computer-program-as-such bar, he wonders whether in the interests of smooth operation of the law it might not be better to shift the exclusion to a point at which the test is easier to apply and its outcome is more predictable. No, says Merpel, wherever you place the bar, that's the place where all the contentious litigation will cluster.

Visto here ...
... not to be confused with Bisto here

UPDATE (7 March): The judgment is now available on BAILII here.

Bud - now the truth can be told, Part II

The three best publishable summaries of the latest outbreak of Bud-related litigation in the UK (see earlier postings here and here) are these. The interesting thing in this exercise is to see how different issues appear to be of key importance to different authors.

Aaron Wood (Simmons & Simmons): "Anheuseur-Busch applied for the mark BUDWEISER in 1979. Budejovicky Budvar did the same in 1989. They largely covered identical goods. As a result of earlier proceedings, both applications were permitted to proceed under the 1938 Act because of shared goodwill and equal right to the mark.

Four years and 364 days after the registration of the two marks, AB applied to invalidate BB's registration under the 1994 Act on the basis of their earlier “1989” registration. The power under the 1938 Act to accept the mark no long existed. The Court upheld the invalidation of BB's registration, since statutory acquiescence occurs where over five years have passed since registration. They rejected the argument of a “common law” acquiescence, or estoppal either by acquiescence or abuse of process, since invalidity had not previously been available to AB and earlier decisions had only addressed BB's ability to use the term BUDWEISER".


Edward Smith (UKIPO): "In 1979, A registered “Budweiser”. In June 1989, B applied for the same mark. Both were registered on 19 May 2000 as the courts decided both companies were entitled to “shared goodwill”.

The law changed and A applied to invalidate B’s mark as their mark was an “earlier mark”. B said A had acquiesced for so long that legally they could no longer win. Nor was it fair, and what’s more, A were taking the mickey out of the whole procedure.

The judge had to agree with A. The acquiescence ran from registration, not B’s use. A didn’t acquiesce at all; they had given no hint to B they would not apply to invalidate. They were not taking the mickey, merely taking advantage of an unforeseen change in the law.

The judge did however say that the specifications weren’t identical, so he let B have malt beverages as small consolation".


Alex Batteson (Linklaters): "Budweiser Budvar’s appeal against UKIPO’s decision that its registration of “Budweiser” was invalid given Anheuser-Busch’s earlier applied-for identical mark dismissed insofar as they covered identical goods, “beer, ale, porter” (but allowed for “malt beverages”). Budvar’s earlier registration was result of judicial determination (in 2000) - this now irrelevant, given basis of registration, “honest concurrent use”/“special circumstances”, unrecognised by the Trade Marks Directive/1994 Act.

No statutory five-year acquiescence by Anheuser-Busch in use of mark by Budvar: acquiescence period begins with later mark’s registration (not application) date. But not acte claire. No common law estoppel by acquiescence (Anheuser-Busch unable to enforce rights until became earlier mark proprietor (19/5/2000)) or abuse of process (impossible to raise 1994 Act invalidity issues in earlier 1938 Act proceedings).

Art. 16 TRIPs (TM rights not to prejudice previous rights) not applicable: later mark not a prior right; but might help Budvar later if Anheuser-Busch sues for infringement".



The prize-winning entry, alas, can't be published. It's a cheeky one-liner from a lawyer who acted for one of the Buds in these proceedings, who has a sharp sense of humour and would probably get into all sorts of trouble if the winning entry were published ...

Bud - now the truth can be told, Part I

On Tuesday 19 February the IPKat, despairing of having to write up yet another piece of Budweiser litigation, offered a copy of the 8th edition of the Butterworths Intellectual Property Law Handbook both to the author of (i) the best 150-words-or-less summary of the decision and (ii) the best Bud-related haiku.

The summaries will be dealt with by a subsequent blog, As for the haikus, there were some excellent entries -- including many that followed the conventional rules for writing a haiku (or plain 'haiku', as we cognoscenti say). Stuart had two stabs. First, he essayed this:

It's only a name
No-one drinks you anyway
Have a beer instead.

Then, with a little hindsight, and some enthusiasm for his damning middle line, he added "actually this one might be better, although it's a bit biased":

It's just their town's name
No-one drinks you anyway
Later rights should lose

Craig Smith, in contrast, retracted his earlier offering before submitting this:

It is not Czech mate,
Well it is confusing Bud,
Another fight brews…

A very distinguished London lawyer, who begs to remain anonymous but whose haikus must be the most expensive in the Western World if his charge-out rate is anything to go by, got the Kats into a giggling fit with this:

Bengoshi-san:
"Budobaru, Anhoisaa Bussho,
Arigato gozaimasu."

The author modestly says "... but I'm not sure that it has mass-market appeal". Certainly it is not as populist as the offering from regular correspondent Miri Frankel, who weighs in with

Oh, where in the world?!
Can someone please summarize
which Bud prevailed where?

and again with

Which Bud is for you?
This Bud. That Bud? The Czech Bud.
Check Bud? Hey Abbot!

the Abbot being, the Kat suspects, a cultural allusion to Messrs Abbott & Costello, one of whom was indeed a Bud. Less delicate and more exuberant, but with a gleeful reference to what some regard as Budweiser's ultimate fate and others see as its main ingredient, Steven Hartman declaims:

Billions for Busch war
Budvar courts insurgency
I pee with delight

Then there's this from someone who signs himself simply "James" (could it be he of Nurton fame?), who proposes:

Litigious parties.
Same brand so huge kerfuffle.
Happy lawyers, no?

Ruth Soetendorp came with this on a long (and, one imagines, dry) car journey:

Keep thirst in czeck
with bud or bud, bud weiser
by var drink water

Shabtai Atlow capped a valiant argument that the rules for writing haiku should be ignored, or at least generously bent, citing no less an authority on the subject than Jack Kerouac himself, before producing this:

Budejovicky's brew
likely deceives or confuses?
Anheuser-Busch whacked.

Two Tims come next. From Tim Lucas there's a truly classical haiku, incorporating a reference to the seasons and the weather:

A bud in winter:
the tussle of old and new
lingers year on year.

Not to be outdone, Tim Roberts makes a nod to the shifts in UK trade mark law that have seen the end of concurrent use (one of those concepts that worked fine in practice but not in theory):

Now concurrent use
Leaves the later registrant
Sadder Budweiser

In David Fyfield's case it's the beer, rather than the weather, that contains the climatic allusion:

Frosty beer brewers
Dispute trade marks old and new
Appealing conclusion

Finally, from the Olympian heights of the IP Bar comes John Baldwin QC, who alludes to the large amount of money derived by his colleagues from the Budweiser dispute (John was not involved in this spat: if you want to see who was, click here):

Budweiser Budvar
Fat wallets on great lawyers
Fat tum otherwise.

Disqualified, for being a limerick rather than a haiku, but included because it's good fun, is this piece of poesy from Steven. M. Getzoff, an old acquaintance who must surely owe him at least one beer:

Two beery eyed boozers named Bud
both fought 'til each fell with a thud.
One cannot imagine the broke glasses and flagons
all for the name of some suds.

The IPKat awards the Golden Palm to Tim Lucas, to whom a copy of the Butterworths IP Law Handbook will soon be winging its way; special commendations go to Steven Hartman and Tim Roberts. Merpel meanwhile thanks all the contestants for making the effort to make the IP environment more fun than it would otherwise be.