Monday, 23 January 2017
|Keep calm and get a Doctoral Degree.|
Sunday, 22 January 2017
|Seeking an Arrow|
When this Kat doesn't know, he reaches out to Kat readers: what really happened at the dawn of modern commercial trademark use?
It is sometimes said that trademarks came into commercial use (and trademark law followed thereafter), when persons seeking to acquire goods no longer did so from a single, fixed physical source. If the goods came only from a single locus, there was no need to mark the goods, because everyone was aware of their source. Gradually, however, goods were sourced from other than this physical locus, and from a person other than the person associated with this physical locus, with the result that the notion of the source of the goods no longer could convey this unitary meaning. When this began to happen, marks came into popular use as the symbolic representation of such source. While the marking of goods has been present in specific situations over centuries and even millennia, it was only when modern commerce began to take form that the wide-spread use of marks took root.
Having said this, how true is this assertion? While there can be no doubt that the world moved from a time when there was virtually no use of marks for commercial purposes to their ever-expanding commercial adoption, this Kat has been unable to find scholarly research that explains this development. What happened in the 17th century, the 18th century and thereafter in this respect? This Kat thinks about the studies that have illuminated the development of the book industry in the West following the invention of the printing press (see, e.g., the notable book by Adrian Johns, The Nature of the Book: Print and Knowledge in the Making). In Johns’ own words --
“…the cauldron of creative and commercial forces in which print culture was formed, …allow[ing] us to visit booksellers’ shops and the Royal Society, paper manufactories and type foundries. We can eavesdrop on the often-bitter disputes between authors and printers, printers and booksellers, clerics and intellectuals as they debate and resolve the meaning and rights attached to the creation of ideas, their appearance in written form and then in print, and the opportunity to sell, buy, and read printed work.”This Kat is looking for studies about trademarks that provide a similar window through which to understand the rise of the commercial use of signs. He realizes that the subject-matter of the development of print is much less diffuse than seeking to explain how commercial marks came into popular use. That said, without an appreciation of how this came about, our understanding of trademarks and trademark law is incomplete. In this vein, this Kat can already think of the following questions:
1. How did people provide for their necessities at the dawn of the modern world?These are only some of the questions that have occupied this Kat for some time. If Kat readers have any suggestions where to look for answers, this Kat would be most grateful.
2. Was this all done in a self- subsistence manner, or were any of these “goods” acquired from third parties?
3. Indeed, was there such a notion of “goods” or “products”?
4. Was there such a thing as a “store” or other place where one acquired "goods"?
5. How did the market day(s) play a role?
6. How much of this trade took place via barter?
7. How were the differences in this regard between what happened in a village versus in a more urban setting?
8. Except for guild signs, was there such a thing as marks in use during that time?
9. Where and when exactly did commercial signs begin to take hold?
10. Can we trace the expansion of their use?
11. How did the increase in general literacy impact on these developments?
Thursday, 19 January 2017
Does the economic impact of SPCs necessitate SPC Regulation reform? The European Commission wants to find out
|The AmeriKat getting her weekly dose of SPC reform|
courtesy of DG Grow
The Single Market Strategy, which was adopted in October 2015, announced that the Commission will:
"consult, consider and propose further measures, as appropriate, to improve the patent system in Europe, notably for pharmaceutical and other industries whose products are subject to regulated market authorisations".Then, on 17 June 2016, the Employment, Social Policy, Health and Consumer Affairs (EPSCO) Council (Health) adopted Conclusions on strengthening the balance in the pharmaceutical systems in the EU. It invited the Commission to conduct an evidence-based analysis of the impact of the EU's pharmaceutical incentives, including the SPC and the “Bolar” exemption, on innovation and access to medicines.
"The study will complement the analysis of ongoing legal study on SPC (you published a post last year - see here), and it will also analyse other incentives as requested by the Council in June 2016. The study will in particular analyse the economic effects of SPCs for pharmaceutical uses (human and veterinary) and plant protection, data protection and market exclusivity for medicinal products for human use. Evidence on the overall impact on availability and accessibility of pharmaceutical care for patients and the pressure on health systems across the European Union will be examined. The evidence provided by this study will hence support the policymaking in those areas."The technical specifications of the Tender seem to identify five areas of the study to be explored as follows (with focus on SMEs, as well):
- Overview of existing IP related incentives and rewards supporting pharmaceutical innovation in the EU and analysis of their actual use by innovators through out the entire product life cycle (focus on SPCs, data protection and market exclusivity)
- Overall economic effects of SPC, data protection and market exclusivity on innovation, availability and accessibility - An analysis of the current economic incentives of SPC and data protection, taking into account patent protection and the impact on availability and accessibility of pharmaceutical care for patients and the pressure of health systems across the European Union
- Economic impact of EU regulations on SPCs - Essentially, does the SPC Regulation meet the objectives in terms of scope and term of protection in accordance with the R&D investment and "lengthy market authorisation requirements"?
- Economic impact of rules on data protection and market exclusivity for medicinal products, including the impact on innovation, availability and accessibility of the medicinal products concerned and the impact on the health of the population (through the development and availability of innovative medicines or the lack of access to them) and the financial sustainability of health systems
- Economic analysis of the specific rules on market protection for orphan medicinal products in Regulation (EC) 141/2000 - The study aims to take into account the findings of the study on the economic impact of the Paediatric medicinal products Regulation, including its rewards and incentives and whether the incentives are proportionate to the goals of the Regulation in encouraging innovation, improving patients' access to innovative medicines.
The analysis will be filtered into supporting policy making in two respects:
- The Commission will use the study as one of the inputs into an evaluation report of the SPC system in the EU and to inform the decision on whether to come forward with a revision (notably with an option of establishing common SPC titles covering the entirety of the internal market)/scope and term/modification of the existing SPC system
- In view of the 17 June 2016 Conclusions, the study will also contribute to analysing the impact of the incentives listed above on innovation, availability and accessibility of medicines in the EU as requested by the Council.
The maximum amount of the tender is 280.000. The deadline to apply is on 8 February 2017.
"As the use of digital services and Internet-based communications has become well-nigh ubiquitous, the underlying technology continues to evolve. Nevertheless, users Digital Single Market Strategy. Accordingly, the long term goal for the reform of the EU data protection legal framework, which commenced in 2012, culminated last year in the adoption of the General Data Protection Regulation (GDPR), reported here and here, which will apply throughout the EU from 25 May 2018. However, in order to complement this new system with the right of individuals to data protection, the European Commission has also been engaged in updating the legal framework set forth in the Directive 2002/58/EC with respect to the processing of personal data and the protection of privacy in the electronic communications sector (Directive on privacy and electronic communications), whose last revision dates back to 2009.
As a result, on January 10, 2017, the European Commission published a proposal for a Regulation (ePrivacy Regulation), in view of the economic and social importance of digital services, the development of Internet of Things (i.e. connected devices and machines communicating through electronic communications networks, also known in literature as “Enchanted Objects”) and the rise of the so-called Over-the-Top communications services (i.e. services provided in the form of applications running over an internet access service, such as Skype, WhatsApp, Facebook Messenger, Imessage, and Telegram; Gmail, Facetime and Viber), all of which currently fall outside of Directive 2002/58/EC [for more details on OTT services and the scope of protection of the ePrivacy Regulation, see WP240, Article 29 Data Protection Working Party's opinion 3/2016 on the evaluation and review of the ePrivacy Directive (2002/58/EC)].
The purpose of these efforts has been to fashion a technologically neutral legal instrument, which can keep pace with future technological developments as well as to fully harmonize the privacy issues in all the EU Member States. (Regulations are secondary law having general application and are binding in their entirety and directly applicable in all European Union countries.) The published proposal has been modified from the version that was leaked in mid-December 2016. The main issues that the reform is meant to address can be summarized as follows.
1. EU wide application
As for the GDPR, the scope of protection of the ePrivacy Regulation covers any publicly available electronic communications services, either provided to or used by end-users in the EU, regardless of whether the end-user pays for them or not, as well as the information associated with the EU end-user's terminal equipment (see Article 1(1) of Directive 2008/63/EC for definition of terminal equipment). For the purposes of the ePrivacy Regulation, end-users can be either natural or legal persons, especially insofar as the consent to the processing of end-user's electronic communications metadata (traffic/location data) is concerned.
2. Scope of protection
The ePrivacy Regulation affords protection to fundamental rights and freedoms, such as the right to data protection and the freedom of expression, information, thought, conscience and religion, of natural and legal persons, regarding the provision and use of electronic communications services. In particular, it covers these rights with respect to one’s private life and communications and an individual's personal data protection. All the foregoing is directed towards ensuring the free movement of electronic communications data and services within the EU.
The ePrivacy Regulation rests on the principle of secrecy of communications. Electronic communications must be confidential and interference therewith is prohibited, without the consent of the end-user concerned. The principle of confidentiality also applies to devices and machines that communicate with each other by using electronic communications networks. However, since the ePrivacy Regulation does not apply to activity falling outside the scope of the Union law, Member States may derogate its provision for the purposes of State security, defence, public security and crime enforcement.
4. Information stored on /retrieved from terminal equipment – Cookies
5. Direct marketing opt-in/opt-out
End-users must give their opt-in consent in order for a natural or legal person to transmit direct marketing communications (i.e. for any advertising, whether written or oral), sent to one or more identified or identifiable end-users of electronic communications services, such as automated calling, an email, or a SMS message. Natural and legal persons are permitted to direct marketing of similar goods and services to those already sold to end-users, using their emails already collected in the course of those previous sales, provided that end-users have been clearly, distinctly and freely given the opportunity to object to such further use of their data.
Regarding direct marketing calls, the electronic communications services providers must supply a contact line to the end-user targeted and must use a code/prefix identifying that this is a marketing call. Finally, Member States may implement opt-out rules for regulating the expression of an end-user's consent in the context of voice-to-voice marketing calls, e.g. registering their number on a do-not-call list.
6. Privacy by design
By default, software permitting electronic communications, including web browsers, must be configured to impede third party cookies from being stored on an end-user's terminal equipment and to process information already stored on the equipment. Once the software has been installed, the end-user will be informed of the privacy settings options so to provide the consent to the installation.
Users of electronic communications services will be granted compensation for both material and non-material damage incurred by virtue of infringement of the ePrivacy regulation, unless the alleged infringer can otherwise exclude his liability. Also, the scheme of administrative fines set forth under the GDPR applies, namely up to a maximum of 20 million euros or 4% of the total worldwide turnover, whichever is higher, with respect to a breach of the rules of confidentiality, the processing of electronic communications content and metadata, as well as the erasure and anonymity of electronic communications data; or up to 10 million euros or 2% of the total worldwide turnover, whichever is higher, where rules on cookies are infringed, software providers do not fulfil their obligations of privacy by default or the providers of publicly available directories do not comply with their obligations towards end users.
Finally, while the ISP's liability framework set out in the e-Commerce Directive will remain intact, the contemplated ePrivacy Regulation will be associated with the prospective European Electronic Communications Code (The European Commission's proposal was published on 14 September 2016 and the new legal text will recast the four Directives comprised in the EU regulatory framework of electronic communications: the Framework, Access, Authorization and Universal Service Directives) and will maintain synergies with the Radio Equipment Directive 2014/53/EU, providing that radio equipment should incorporate safeguards to ensure that the personal data and privacy of users and subscribers are protected.
As the ultimate objective is to make the ePrivacy Regulation applicable along with the GDPR, as of 25 May 2018, it seems that we can expect that the final text of the ePrivacy Regulation will be published during the next twelve months; IPKat will certainly monitor this."
Wednesday, 18 January 2017
|Carefully selecting some IP blogs!|
|New Year New Cat|
Tuesday, 17 January 2017
We would like to bring the attention of our German Readers a recent decision (published 13 January 2017) of the Federal Court of Justice (Bundesgerichtshof, BGH) with far-reaching implications for practitioners. In essence, the BGH held that any prohibition to distribute a product entails an obligation to actively recall any products already on the shelves, endorsing the view expressed by the Oberlandesgericht Munich in 2013. The same dispute has already led to a judgment of the ECJ on 23 November 2016 (not related to the enforcement of the order).
Plaintiff had obtained an injunction based on unfair competition law (UWG) against the mareting and distribution of alcoholic beverages under the signs "RESCUE DROPS" and "RESCUE NIGHT SPRAY" ("es zu unterlassen, im geschäftlichen Verkehr als Spirituosen gekennzeichnete Produkte unter der Bezeichnung „RESCUE TROPFEN“ und/oder „RESCUE NIGHT SPRAY“ zu bewerben und/oder zu vertreiben"). By its wording, the order only entails an obligation to cease and desist, and not any obligation to actively recall any products. The order became provisionally enforceable.
Defendant failed to recall any products already sold to retailers (primarily pharmacies). Plaintiff argued that this violated the order - and prevailed. The BGH held that in a case where the continued presence of the products on the shelves of retailers creates a continued disturbance ("fortdauernder Störungszustand"), the obligation to cease and desist includes the obligation to remove the continued disturbance, although generally, an obligation to cease (Unterlassungspflicht) must be distinguished from an obligation to remove (Beseitigungspflicht). It was further irrelevant that the buyers of the products were not obliged to comply with any request for a recall of the products (since they have become the legal owners of the products). The key reasoning is in paras. 24-27 of the decision for those who read German.
While the injunction in this case was based on unfair competition law, it is hard to see that the outcome would have been any different for a prohibition based on trade mark, copyright or patent law. In essence, any obligation to cease distribution of a product in Germany in the future also entails the obligation to recall products already distributed (and not yet used up). Failure to do so makes the Defendant liable to pay the administrative fine imposed by the order in case of non-compliance - in the case at hand, EUR 15,000 for the omission of recalling the products.
Monday, 16 January 2017
Social media, "WikiLeaks" and false news in the 18th century: Thomas Jefferson and the "Mazzei letter"
The political dynamics of the nascent American republic in the early 1790’s (remember the U.S. Constitution had been ratified only in 1788) witnessed an ever-increasing split between Jefferson and the ruling Federalist party led by President George Washington and Alexander Hamilton, especially over relations with France and England. Jefferson was an ardent supporter of France, having been energized by the French Revolution. In 1794, John Jay was sent by President Washington to England to negotiate a treaty (the Jay Treaty), which put an end to the dispute between those two countries.
The treaty enraged Jefferson, to the extent that when, on April 24, 1796, he wrote a private letter to a former neighbor in the United States, Philip Mazzei, now living in Pisa, Jefferson could not resist adding several sentences about the political situation. He described the Washington presidency (and by extension, the Federalist party) as “[a]n Anglican, monarchial and aristocratical party”. The distinguished American historian, Gordon Wood, summarizes the gist of Jefferson’s dissatisfaction with Washington as follows (“Empire of Liberty”, p. 235) —
“[Washington] was trying to subvert the American’s love of liberty and republicanism and turn the American government into something resembling the rotten British monarchy.”Jefferson’s own words were much more graphic—
“It would give you a fever were I to name to you the apostates who have gone over to these heresies, men who were Samsons in the field and Solomons in the council, but who have had their heads shorn by the harlot England.”John Adams.
But it is not so certain that there ever was a published translation into Italian. The Editorial Note to the Papers of Thomas Jefferson concludes that “[t]he Editors, however, have found no trace of an Italian publication …”, although Jefferson himself apparently believed so. At most, Mazzei may have translated the contents in Italian for an acquaintance in the diplomatic corps. The Editors suggest that Mazzei most likely copied the relevant contents in their original English and shared it with two friends, one of whom upbraided Mazzei for circulating the text without permission. Mazzei’s motivations for making the copies and dispatching them are not clear. Also not clear is exactly who translated the contents into French (perhaps from the original English, perhaps from an Italian translation) and who forwarded it to the French newspaper, Le Moniteur Universel.
What then happened in the United States is particularly noteworthy, involving, as it did, translations into English from a translation into French from either an Italian translation or from the original English text. As the Editors write--
"Three and a half months after the extract's appearance in France, the Federalist editor of the New York Minerva, Noah Webster, obtained a copy of the French newspaper from Epaphras Jones, a New York City merchant and ship owner who had recently returned from France. Webster arranged to have the extract and the Moniteur's subjoined paragraphs translated into English and printed in the 2 May issue of his newspaper. Subsequent mentions of it appeared in the Minerva on 3, 4, 6, 8, and 19 May. When Jones requested the return of his French newspaper, Webster made a copy for himself and had it certified by James Kent on 22 May. Webster also noted that Timothy Pickering, then secretary of state, “sent to me for the original paper, and had the letter in the original with a translation, if I mistake not, published in the Gazette of the United States”. After its publication there on 4 May, Pickering had his own copy prepared and certified by his chief clerk for his files (on 3 June). Pickering returned the newspaper to Webster. The extract in the Moniteur, of unclear lineage, had by then become the official version of Jefferson's letter, from which all American subsequent versions derived" [footnotes and citations omitted].American newspapers. pro and anti- Federalist, pro and anti-Republican, themselves published the contents in English (not based on the original English text, but from an English translation from a French, and perhaps even before then, an Italian version.) Sometimes this derived English text was accompanied by commentary, itself not infrequently expressed in the most scurrilous terms. As Wood describes, Federalist opponents of Jefferson read out the these portions on the floor of the Congressional House of Representatives, and one congressman then proclaimed: “Nothing but treason and insurrection would be the consequence of such opinions.” Claims were made about the accuracy of the English text and Jefferson defenders even challenged the attribution to Jefferson as the author of the text (which apparently he never denied). The controversy over the letter hounded Jefferson throughout the rest of his life (he died in 1826).
With one ear attuned to the public discourse of our own moment, what do we make of the "Mazzei letter" affair? Once the letter left Jefferson's hands (presumably he did not make a copy), it was left to the whims of the social media of the day. The role of the newspapers was crucial. As Wood observes, all parties involved sought—
"… a way of dealing with the immense power over public opinion that newspapers were developing in the 1790's. In fact, the American press had become the most important instrument of democracy in the modern world, and because the Federalists were fearful of too much democracy, they believed the press had to be restrained" (p. 250) [but the Federalists lost political power forever by 1800].Then, as now, IP seems to have played a minor role, if any. At least in the 1790's, one could point to the fact that the copyright laws were in their infancy (translations were in any event not yet protectable) as well as to the absence of protection for privacy and confidences. The dispute over the unauthorized publication of the private etchings of Prince Albert and the recognition of a right in confidences was still over 50 years away (Prince Albert v. Strange).
Still the last word, as the first, belongs to Kohelet/Ecclesiastes—"there is nothing new under the sun".
By Neil Wilkof