An improved Improver? - Part 2

Here as promised is the second part of this GuestKat's commentary on Eli Lilly v Actavis UK [2017] UKSC 48, which promises to have much ink spilled and air of various temperatures emitted on its behalf in the coming weeks, months and years. As noted in the first post, the Supreme Court reformulated the Improver questions, originally posed by Lord Hoffmann when at first instance and subsequently further evaluated by him in the House of Lords in Kirin-Amgen, which thoroughly examined the UK approach to patent claims. This GuestKat has regarded Lord Hoffmann's judgment in that case as a definitive guide to interpretation and construction and it is a bit of a shock to see his analysis criticised as "wrong in principle" by the Supreme Court. More on that later. Now we should move on to the other aspects of the case, starting with the question of the role of the prosecution history in interpreting the scope of claims.

The file was not extensive ...

The starting point for the claims of the patent was a claim to "use of a methylmalonic acid lowering agent in the preparation of a medicament useful in lowering the mammalian toxicity associated with an antifolate, and the medicament is administered in combination with an antifolate". Here the "methylmalonic acid lowering agent" is something like vitamin B12 and the antifolate is the pemetrexed derivative. 

In a first attempt at amendment of the claims during prosecution, Lilly offered limitation of the antifolate to "pemetrexed" and of the methylmalonic acid lowering agent to vitamin B12, but the examiner objected that the amendments introduced subject matter beyond that originally filed, contrary to article 123(2) EPC. Reference to "pemetrexed" did not find any basis in the application documents, which referred only to pemetrexed disodium. That, according to the examiner, is a distinct compound from pemetrexed (the free acid). In response, Lilly filed claims limited to the use of pemetrexed disodium in combination with vitamin B12. This led the Supreme Court to the consideration of two important questions: when is it permissible to have recourse to the prosecution history of a patent when considering whether a variant infringes, and whether the prosecution history in this case should alter the provisional conclusion the court had reached on direct infringement.

After looking at the comments of Lord Hoffmann in Kirin-Amgen about the undesirable consequences of permitting reference to prosecution history, and at the approach of courts in other EPC states, the court concluded that it was appropriate to take "a sceptical, but not absolutist, attitude" to reference to the prosecution file "along substantially the same lines as the German and Dutch courts". The comments of the court on the practicalities of reference to the file are interesting. They thought it was tempting to exclude the file on the basis that anyone should be entitled to rely on the content of the patent itself, without reference to other material, "as a matter of both principle and practicality". However, given that the contents of the file are publicly available, there might be occasions when justice might require reference to the file. The court seems to have been influenced in that conclusion by having been told that the contents of the file "are unlikely to be extensive". However, the circumstances in which a court can rely on the prosecution history "must be limited". That meant where (i) the point at issue is truly unclear if one confines oneself to the specification and claims, and the contents of the file would unambiguously resolve the point, or (ii) it would be contrary to the public interest for the contents of the file to be ignored. An example of (ii) would be where the patentee had made it clear to the EPO that he was not seeking to contend that his patent, if granted, would extend to the sort of variant which he now claims infringes.

Applying that to the facts of the case, the court didn't think the prosecution file justified departing from its conclusion on direct infringement. The reason the examiner thought the claims should be limited to pemetrexed disodium was because the specification did not expressly extend to any other anti-folates (although the court seemed to think the examiner was wrong about that, without explaining why). But in the court's opinion, "the whole point of the doctrine [of equivalents] is that it entitles a patentee to contend that the scope of protection "extends beyond the ambit of its claims as construed according to normal principles of interpretation". 

This GuestKat has noted with interest comments which suggest that this case opens the way to a doctrine of "file wrapper estoppel" in the UK, but wonders whether the case really goes much further than existing UK case law which has admitted reference to the file in cases of "admissions against interest" - see for example Rohm & Haas v Collag [2002] F.S.R. 28 and Furr v Truline [1985] F.S.R. 553. The refusal of the court to admit reference to the file in this case is consistent with the court not regarding the limitation to the disodium salt during prosecution as determinative of whether the patentee could argue for scope of the claim to include other salts or the free acid after grant based on the reference to equivalents in Article 2 of the Protocol. Presumably the court took the view that Lilly had not "made it clear to the EPO that [it] was not seeking to contend" that the patent, if granted, would extend to other salts such as pemetrexed dipotassium. 

Such an approach might open the door to more difficulty in interpreting a claim from the point of view of infringement, if one cannot decide on the question of equivalents without recourse to external resources such as expert evidence. Note that the court itself says that answering its question (ii) "does the variant nonetheless infringe because it varies from the invention in away or ways which is or are immaterial?" raises questions "which would normally have to be answered by reference to the facts and expert evidence". This seems potentially to admit far more extraneous material into the process of claim construction than reference to the file, which at least is self contained, even it may sometimes be more "extensive" than the court had been led to believe. 

This GuestKat is impressed with the number of comments which the first post on this case has generated on the question of claim scope and interpretation, and thanks those who have contributed to an intelligent debate on the subject. The Supreme Court was clearly influenced in its decision by its study of the case law in other European countries, for example these quotations from the Bundesgerichtshof: that a variant will infringe if (i) “it solves the problem underlying the invention with modified but objectively equivalent means”, (ii) this would be recognised by the person skilled in the relevant art, and (iii) that person “focus[sing] on the essential meaning of the technical teaching protected in the patent” would regard the variant “as being equivalent to the solution” offered by the invention (Case No X ZR 168/00, 2002 GRUR 519 (Schneidmesser I). It seems to this GuestKat that in the context of the present case, this leads to a focus on the practical and technical solutions which an appropriately skilled person might regard as "equivalent" to the solution defined by the claim, with less regard to the actual words which the drafter has used to express that solution. It is not clear to this Kat whether this makes a patent attorney's job easier or more difficult, particularly if the object of clear wording in the claim might be to exclude embodiments which the drafter wants to exclude, for example if they fall within the prior art. It also surely means that the scope of a claim can't be definitively determined without recourse to material outside the patent specification, such as expert evidence (as considered above), which surely makes the job of advising on infringement more difficult. No doubt debate on the meaning and consequences of this decision will continue for some time to come. 

Taking another pause for breath at this point, the remaining aspects of this case will be explored in Part 3 of this series.

Sky v SkyKick - no CJEU reference re removal of own name defence to EUTMs

Is Article 1(13) of Regulation 2015/2424 contrary to fundamental rights?  This is a question that SkyKick recently sought to refer to the Court of Justice of the European Union (CJEU) in Sky v SkyKick [2017] EWHC 1769.  We will not find out the answer for a while (possibly ever) because Birss J denied the defendants' desired pre-trial reference.

SkyKick offers a range of cloud based services including data backup, and cloud management software facilities.  SkyKick is a US company.  They carried out US searches in November 2011 and applied to register SKYKICK in the US in 2012.  In 2016 they filed and international trade mark (IR) designating the EU and other territories.  Sky brought its claim shortly after this filing in May 2016. 

Why does the own name defence matter?

The own name defence remains for UK trade marks until the new Directive is implemented (the deadline for national implementations is 14 January 2019).  However, Article 1(13) removes the own name defence for corporate defendants (it remains for natural persons) from article 12 of the European Trade Mark Regulation (i.e. Regulation (EC) No 207/2009).  SkyKick wanted to rely on the defence against Sky.

SkyKick alleged that Article 1(13) was contrary to:

• Article 16 of the EU Charter (Freedom to conduct business);
• Article 17 of the EU Charter (Right to property);
• Article 20 of the EU Charter (Equality before the law); and
• Article 21 of the EU Charter (Non-discrimination).

SkyKick also relied on:

• Article 51 of the EU Charter (the field of application);
• Article 52 of the EU Charter (scope and interpretation of the rights and principles); and
• Article 17 of TRIPS.

In summary, SkyKick alleged that the change to the law interferes with the freedom to conduct business and right to property which companies had under the existing law.  In particular, they alleged that there has been no proper assessment of the impact of the change in law, it is discriminatory as against natural persons, and there is no good reason for it.

Sky pointed out that the defence was originally only intended to apply to natural persons but was construed as covering legal entities as well by the CJEU in the Anheuser-Busch v Buddejovickybudvar (C-245/02 [2004] ECR-I-10989).  In other words, all that has happened is that the EU legislature has made an express alteration to the law so as to return it to the original intention.

Having considered these arguments, Birss J declined to make a reference at this time.

They think it's all over?

Birss J was clear that it was open to him to refuse a reference if he considers that SkyKick's arguments are unfounded (see IATA v European Low Fares C-344/04 [2006] ECR 1403).  In other words, whilst the question of validity of an EU law is not a matter for a national court to decide the application itself can be rejected if the national court considers that there are no grounds for saying that an EU law is invalid.

While it is open to a court to refer questions on the validity of EU law when considering the kind of legal conclusion the national court is entitled to reach (see R (Telephonica 02 Europe PLC) v Secretary of State for Business Enterprise and Regulatory Reform [2007] EWHC 3018 (Admin)), the timing is important. 

In other words, the main question Birss J considered in this application was whether a reference should be made in the middle of proceedings.  He considered the following principles:

1. references should not be made of matters which are of purely academic interest (Meilick and Bacardi Martini v Newcastle United);
2. the CJEU prefers for the relevant factual matrix to have been determined before a reference is made.

Although he considered that both sides have a properly arguable case on the merits he noted that:

1. SkyKick may win the action without a reference to the own name defence (their key argument was that there was no infringement by the goods and services that SkyKick offers);
2. Sky may win the action without the question of law being decided as the own name defence will have to be considered in any event in the context of the UK trade mark;
3. this means that the trial will consider the honest practices of the Defendants in detail and make findings of fact which will help with the question regarding the necessity of a reference.  These findings of fact will make it easier for the CJEU to make a decision;
4. although the Defendants' required the reference to be as soon as possible in order to achieve business certainty for their startup the Defendants had also made a request for a stay which was inconsistent with their purported desire for immediate certainty.

The own name defence question may become relevant if SkyKick wins in relation to the UK mark but loses in relation to the EU mark but it could just as easily be an unnecessary reference.  The best way for SkyKick to get a speedy resolution was to keep the trial timetable on track for early 2018.  

Stay?

Although there are parallel proceedings to invalidate Sky's marks at the EU IPO, the parties and the judge agreed that there were special grounds for continuing with the proceedings. This was because:

1. the parties agree (although this is not determinative);
2. there was a real risk of inconsistent decisions;
3. the need to keep the early 2018 trial on track;
4. the High Court claim also concerned passing off and UK trade mark infringement.

Sir Richard Arnold awarded honorary doctorate of law for his services to IP

The smile of every new doctor

Attending graduation together with fellow 'graduand' Sir Richard Arnold? For the finalist students at Westminster Law School this is indeed what happened earlier this week.

On 12 July, in fact, the University of Westminster awarded Sir Richard Arnold a Doctorate of Law honoris causa for his services to intellectual property law.

Sir Richard Arnold was educated at Highgate School and went on to study Chemistry at Magdalen College in Oxford, obtaining his Diploma in Law (Dip.Law) in 1984 from the Polytechnic of Central London, now the University of Westminster. He was called to the Bar of England and Wales in 1985 and became a QC in 2000.

Appointed to the High Court Bench in October 2008, Sir Richard specialised in intellectual property, entertainment and media law, and data protection, both domestically and in European Courts and Tribunals. He was Chairman of the Code of Practice for the Promotion of Animal Medicines Committee from 2002 to 2008, an Appointed Person hearing trade mark appeals from 2003 to 2008 and a Deputy High Court Judge from 2004 to 2008.

He was appointed to be Judge in Charge of the Patents Court in April 2013 and as an External Member of the Enlarged Board of Appeal of the European Patent Office in March 2016.

The University of Westminster recognised Sir Richard for his contribution to Westminster Law School as a key Associate Fellow of the Centre for Law, Society, and Popular Culture. He has also generously donated to Westminster’s 125 Fund, a bursary scheme for Westminster Students enabling them to undertake projects and activities that enhance their employability and help them to achieve their full potential.

In his acceptance speech, Sir Richard Arnold said: “I would like to begin by thanking the University of Westminster for the great honour it has done me by conferring an honorary Doctorate of Law. It is also this University that I have to thank for setting me on the path that led me to this point. In the space of just one year, I was given a foundation in law that not only enabled me to succeed in my careers, but also sparked a wider interest in the subject which has remained with me until now.”

Congratulations Dr Arnold!

Weetabix in New Zealand Customs dispute over local rival Weet-bix

According to The Telegraph, hundreds of boxes of Weetabix have been impounded by New Zealand customs because they allegedly infringe Weet-Bix's marks.   Weetabix is not well-known in New Zealand but a Christchurch-based shop, A Little Bit of Britain, had ordered 300 boxes to serve to its British immigrant customers.

Apparently Weet-Bix's owners have agreed to release the product if they are overstickered at point of sale and references to Weetabix are removed from the shop's website.  The shop owner considers this offer "ridiculous" because the boxes look nothing alike and customers will not be confused.

Thanks to Lawrence Ryz for sharing this story!

For the inevitable Change.org petition see here and Twitter hashtag see here.

This is not the only international scandal involving British food.  Trader Joe's in the US has been attempting to claim that the invented the "genius" sausage roll - or "puff dog" as Trader Joe's calls it.  For more on this see here.

Sunday Surprises

In these July Ides, (bit less famous than March's, but what can we do?) let's look at news, events and everything IP-related!

We start off with an insight on how China clamps down on pirate trademark ransoms for famous brands, offered by Frederic Mostert, director of the Walpole Group. Mr. Mostert's article talks about the impact five high-profile IP cases, namely involving Facebook, upmarket grocer Fortnum & Mason, former basketball player Michael Jordan, MGM Studios and Esso, had in the bad faith registration doctrine in China.

Sheena Jacob and Daniel Lee of JurisAsia LLC informed us that the Singapore Government, together with the national IP office, is seeking public feedback on proposed changes to the patent legislation. The proposed changes include, among others: new re-examination option for patentees and third parties, amendments to examination guidelines on the new grace period for filing, and proposed amendments to Patents Rules concerning patentable subject matter and supplementary examination. Closing date for feedback is August 1^st.

Kat more focussed on catching
crickets than in the news

In Indian shores, the famous white and blue-rimmed sari worn by Mother Teresa and by the order Missionaries of the Charity and the name Mother Teresa itself are now trade marks in India. The Guardian tells that that the name of the famous nun and her clothing have been used by other orders without permission and that this had misleading effects. Biswajit Sarka, the lawyer of the order, tells that the plans are now to have the name of Mother Teresa and her sari copyrighted (hopefully they meant trademarked) also in other countries.

Climbing a little north, Russia has a fast growing pharmaceutical market but recent political events as well as economic instability, might cut the presence of international innovators in the country. Mr. David Aylen of Gowling WLG, wrote the second edition of the comprehensive report The Universe of Pharmaceutical Trademarks in Russia 2017, discussing the trade mark aspects of the Russian pharmaceutical world. The full report can be dowloaded here.

Sailing on Radio Rock, if you are looking for pleasant things to do over the weekend, in the BBC's “50 Things That Made the Modern Economy” series, Tim Harford talks about the role Intellectual Property had in the Modern Economy, starting from Charles Dickens' harsh experience in the US, where at the time copyright laws did not apply to foreigners and he saw his works pirated. Stay tuned!

And lastly, if you ever wondered why it takes so long to have a patent granted in the and how can the process be sped up, well, the UKIPO has he answer: it all has to do with the number six and queues! Very intriguing indeed.


Image credits: Cecilia Sbrolli

Mock (culinary) trial at INTA 2017

Dario Palmas

During the 2017 INTA Annual Meeting held in Barcelona this year, on May 23 a “culinary” Mock Trial took place.  Dario Palmas from Franzosi Dal Negro Setti has kindly sent in this summary of the proceedings.

Here's what Dario writes:

"In the context of the magnificent University of Barcelona two parties battled over a famous dish of a famous chef.

The (real) Spanish chef is Nandu Jubany, owner of the one-Michelin-star holder restaurant Can Jubany. The dish is the dessert called "Hunting for truffles" ("Vamos a buscar trufas").
The concept of this dessert is spectacular: the client has to hunt for truffles (with the real dedicated instrument) through leaves, grass and soil. But of course nothing is what it seems, because pine leaves are made of chocolate, soil is made of streusels and the truffles themselves are made of ice-cream.

The plaintiff was Jubany, represented by Mr Vincenzo Jandoli (of Milan-based law firm Franzosi Dal Negro Setti) and Mr. Ramon Oriol (of local law firm Amat & Vidal-Quadras).

The defendant was the fictional company Creative Catering LLC, of Houston, TX, represented by Mr.Miguel Vidal-Quadras (Amat & Vidal-Quadras) and Ms Anna Maria Stein (Franzosi Dal Negro Setti), in both cases separated by strict Chinese walls accepted by the clients of both parties.

The Panel of Judges was composed of Ms Marta Cervera, Director of the Commercial Courts of Barcelona and Judge of Commercial Court Num. 8 of Barcelona; Mr Raul García Orejudo, Judge of Commercial Court Num. 7 of Barcelona and Mr Luis Torrents Fernández-Mayoralas (Amat & Vidal-Quadras).

The plaintiff enforced the following alleged rights:

1. EU denominative trademark "Hunting for truffles" and EU figurative trademark, both in class no. 30 of Nice Classification;
2. the image of "Hunting for truffles" as Community design registration and subject to copyright protection;
3. the recipe as protected by copyright;
4. the gustatory form as protected by copyright.  

"Vamos a buscar trufas"

The contested activity was the defendant’s dessert, advertised on the defendant’s website as "Truffle hunters, A creative concept inspired by the secret and exquisite recipe best Spanish chefs of our time". The advertisement showed a photograph of Jubany’s dish, which also is the EU figurative trade mark.

The plaintiff claimed the infringement by the defendant’s dish of the above mentioned rights and also unfair competition, asking for an injunction prohibiting the reproduction, offering and sale of the contested dessert.

The defendant claimed first and foremost that the alleged rights enforced by the plaintiff were not existent or valid. And secondly that they were in any case not infringed.

Succulent surprise: before the parties started discussing the case (one statement each, followed by one reply), chef Jubany himself, together with his assistant, on a large table placed between the audience and the Panel of Judges, prepared his famous dessert from scratch.

We will never know for sure whether the audience appreciated the parties' discussion or the chef’s show more. But we can imagine.

However, the dessert delivered by the Panel of Judges was the following:

1. the jurisdiction is limited to the Spanish market, since (i) there was no request otherwise from any of the parties and (ii) the EU rights are ...  unified, but their way of protection is different in the Member States;
2. the decision is limited to the advertisement made by the defendant on its website, because the parties failed to provide proof of how the actual contested dish is or look (or taste?) like;
3. the denominative trade mark is valid (it is not descriptive because “truffle” in this case does not refer to the subterranean fungus) and it is infringed by the defendant’s advertisement; in fact said ad (using identical trade mark) creates confusion with the plaintiff’s dish;
4. the figurative trade mark is not valid, because it is not represented by the real shape of the dish (for example the trade mark shows the truffles, whilst the very idea of the dish is to hunt for them, i.e. that they are hidden), but it represents only a still image of the consumption moment; 
5. the copyright on the recipe/dish is confirmed and deemed valid, since the classical concept of “artistic work” belongs to the 19th or even 20th century, but not to the current century where the concept of work of art encompasses any form and shape; and Jubany's dish is without doubts original and creative. However, since no proof of the actual dish offered by the defendant was provided by the parties (especially the plaintiffs, we might add, even if we can imagine that, being the defendant form Texas, USA, probably the plaintiff had no chance to see the actual dessert...) the relevant infringement claim must be rejected, even if there is the suspicion that the defendant’s dish is likely reproducing in some (probably infringing) way the chef’s dessert; but, in theory, the defendant’s dish might also be completely different;
6. the defendant is enjoined from using said ad in Spain with reference to dishes/food.

In addition the lawyers representing the parties also referred to the decision that surprisingly was held the same day by the Arnhem-Leeuwarden Court of Appeal which referred questions for a preliminary ruling to the CJEU relating to the extent to which a specific taste may qualify for protection under copyright law [see here].

We think that this unusual culinary Mock Trial among all the issues dealt with shows at least one important element: an original and creative dish can enjoy copyright protection, probably regardless of the fact whether it tastes good! (For the record: chef Jubany’s dessert tastes like heaven)."

EU IPO Observatory study finds trade secrets rule the roost over patents in Europe

The AmeriKat after a night awake reading
trade secret studies

Whether it is due to the ever-changing weather or unpredictable days, the AmeriKat has not been sleeping so well recently.  So when she can't sleep she turns to the nearest stack of papers in the hopes that it will lull her to sleep.  This morning's 2:30AM hopeful sandman was the EU IPO Observatory's publication entitled "Protecting innovation through Trade secrets and Patents - Determinants for European Union firms".

The work follows from Mannheim's Centre for European Economic Research (ZEW) research published in 2016 that examined the impacts of German firms protecting innovation via trade secrets and patents.  In this recent report, the Observatory investigated a number of factors that were considered to influence the use and preference of trade secrets and patents.  The study focused on the complementary role of the two methods of protection, finding, unsurprisingly, that they are not substitutes.  The study aims to provide a basis for policy makers to further develop polices in this area following the adoption of the European Trade Secrets Directive in 2016 (see previous reports here).

The Study examined factors relating to performance impacts of protecting innovation through the use of patents and trade secrets in almost 200,000 firms operating across Europe.

The Study found that:

• Innovating firms use both patents and trade secrets.    

• Use of trade secrets is higher than patents in most types of companies in all Member States - the weighted average of 24 Member States had trade secrets preferred at 52.3% to patents' 31.7%.  Larger companies prefer trade secrets 69.1% compared to 52.8% with patents (the figures are 51.2% and 30.4% for SMEs).    

• Italian innovating firms use trade secrets a third more than those in Croatia.  The smallest gap between patents and trade secrets was in Belgium and the UK, with the largest differences in Finland, Hungary, Lithuania and the Netherlands. 

• They are both likely to be used in companies with high R&D spend and when the innovation is art changing. 

• Trade secrets are preferred where the innovation is new to the firm.  

• Trade secrets use is very high in engineering/technical testing and computer programming and related activities sectors, as compared with patents.  

• Patents are more likely used when the product is a good (and subject to reverse engineering), rather than a service. 

• Trade secrets are more likely used to maintain a competitive edge.  

• Trade secrets are preferred in markets with strong price competition (commodity-type markets where differentiation is rare and margins are only enhanced with cost/process innovation).   

• Both are used in markets with strong quality competition.  

The Study recognized that the results uncover relationships, but they are not to be construed as conclusive proof of cause-and-effect relationships.  More in-depth research and better data is required.  Indeed, that is a problem that plagues trade secrets.  Unlike other areas of IP, trade secrets have been neglected in terms of studies and economic impact, in particular with that and patents.

As Member States begin to implement he EU Trade Secrets Directive into national law, the AmeriKat hopes the more studies into the use of trade secrets and patents are conducted in order to assess the economic impact of different modes of protection on the innovation landscape.   Indeed, the Study concluded that:

"Reliable indices of trade secrets and patent strength regimes could help to further understand the different preferences for appropriability mechanisms among innovating firms in the EU Member States and help illuminate how differences in legal frameworks could influence observed differences in the use of trade secrets."

With the introduction the EU Trade Secrets Directive it will be interesting to see if the preference for trade secrets over patents alters in the coming years as, hopefully, the approach and treatment of trade secrets becomes more harmonized.

Never Too Late: If you missed the IPKat Last Week!

Been too busy to up with last week's IP news? No problem! As always, the IPKat is here to bring you a quick summary -the 155th edition of Never Too Late.

When the court just doesn't get your humour

First application of the parody exception in Canadian law - long live Deckmyn!

Kat friend Sabine Jacques (University of East Anglia) brings news that a Canadian court has made the first application of the parody exception under Canadian copyright law. The court considered other jurisdictional definitions of parody before determining that the case in hand was not for the purpose of a parody because users are likely to be confused and the defendant’s intent was not humorous but aimed at embarrassing or punishing the plaintiff.

"Big Box" not found generic or lacking distinctive character, but still ....

Kat friend Jeremiah Chew (Ascendant Legal) reports on an interesting case from Singapore involving a trademark invalidation proceeding based on lack of distinctiveness. The trade mark in question “BIG BOX” was found to be devoid of distinctive character, wholly descriptive, and a generic term in relation to all the services in its specification.

Changes to the Singapore copyright system: an update on the recent public consultations

Kat friend Edoardo Di Maggio (J.D. Candidate at Singapore Management University) updates us on the forthcoming developments in the Singapore copyright system, following the 2016 public consultation which addressed a wide variety of issues, from the creation of a voluntary copyright registration system to the implementation of technological protection measures.

The diplomatic crisis of Qatar and Gulf Cooperation Council's IP

Kat friend Riyadh Al-Balushi (SOAS University of London) talks us through the recent and ongoing diplomatic crisis of Qatar, what that means in relation to IP and how it affects Qatari rights-holders. The Gulf Cooperation Council (GCC) has been successful in creating a number of pan-GCC intellectual property initiatives that are legally operational in Qatar as well as the rest of the Gulf. However, these are now threatened by the current diplomatic crisis due to political differences between Saudi, Bahrain, and the UAE on one side, and Qatar on the other.

Bundesgerichtshof's landmark ruling to hook extra-territorial patent infringement in Germany

Dr Felix Trumpke (Quinn Emanuel) reports on the German Supreme Court (“Bundesgerichtshof”) ruling (Decision of 16th May 2017, X ZR 120/15 – Abdichtsystem) which held that a foreign company selling patent infringing goods to customers outside of Germany may be liable for patent infringement in Germany. The decision further included some interesting findings with regard to the claim for recall of infringing products from the distribution channels. 

BREAKING: Eli Lilly success as UK Supreme Court finds Actavis products directly and indirectly infringe pemetrexed patent

The on-going saga between Eli Lilly and Actavis regarding Lilly's pemetrexed disodium product has kept the English courts busy for years. The culmination of the litigation was heard back in April and the UK Supreme Court has just posted a summary of their decision. The summary stated that the Supreme Court allows Eli Lilly's appeal and holds that Actavis' products directly infringe Eli Lilly's patent in the United Kingdom, France, Italy and Spain. The Court dismisses Actavis' cross-appeal on the basis that if its products did not directly infringe, they would indirectly infringe to the extent held by the Court of Appeal.

And, of course, the weekly updates Monday Miscellany and Sunday Surprises.

Photo credit: rawdonfox

PREVIOUSLY ON NEVER TOO LATE

Never Too Late 154 [week ending Sunday 2 July] I Book Review: Patent Drawing Rules I German Supreme Court holds that extra-territorial delivery can result in patent infringement I Canadian Supreme Court holds promise doctrine "unsound" in AstraZeneca v Apotex Nexium dispute I EU General Court finds bad faith in VENMO trade mark dispute I “Correction” of expiry dates for granted SPCs now finally possible in Italy...sometimes I Book Review: The Law of Trade Secret Litigation Under the Uniform Trade Secrets Act I Chanel victorious in California court battle against Amazon sellers of counterfeit goods I Simplifying Community Registered Design litigation in the UK - Spin Master v PMS I 77M v Ordnance Survey - access to justice for SMEs in IPEC I Canadian Supreme Court holds that Google can be ordered to de-index results globally I Life as an IP Lawyer: Copenhagen, Denmark I UK UPC ratification timetable to continue in September, while Prep Committee acknowledges German constitutional hold-up I Hendrix's portrait is original afterall say Paris Court of Appeal I Covfefe ... the trade mark?! I Injunction available after claimed licence fees paid - PPL v JJPB I Trademark application for the devil's horn withdrawn I Jo Johnson to continue as IP Minister I UPC Order on Privileges & Immunities placed before Parliament today I Celebrate 120 years of AIPPI in Sydney I Event invitation - The Pirate Bay communicates to the public: are there any more online infringement questions to be answered? I Re-using Amazon item numbers (ASINs) for similar goods can constitute trade mark infringement and passing off

Never Too Late 153 [week ending Sunday 25 June] | US Supreme Court holds provision preventing registration of disparaging trade marks unconstitutional | Wolfing down those veggies: it's a matter of the right descriptive term | A googol of generic questions in Ninth Circuit's Elliott v Google decision | Life as an IP lawyer | Former Constitutional Court judge weighs in on UPC ratification suspension | AG Szpunar advises CJEU to rule that a red sole may not be just a colour | Trump and his coat of arms | BMW wins appeal over use of trade mark to promote spare parts business | Around the IP Blogs | Saturday Sundries

Never Too Late 152 [week ending Sunday 18 June] German Constitutional Court stops implementing legislation for Unitary Patent Package | Conference report: Innovation and Competition in Life Sciences Law - Part I | Conference report: Innovation and Competition in Life Sciences - Law Part II | Special K and beyond: tennis brands | CJEU says that site like The Pirate Bay makes acts of communication to the public | The challenge of big data: we ignore it at our professional peril | German court orders Google to stop linking to Lumen Database | Event report: Trends in the creative digital economy | A Tale of Stability - Business Models in the Creative Industries | Paris Tribunal supports heir's claim to looted painting | Kiss singer seeks trade mark registration for hand gesture | Tuesday Wonders | Sunday Surprises

Never Too Late 151 [week ending on Sunday 11 June] Mozart and Other Pirates | TILTing Perspectives 2017 report (1): The healthcare session | TILTing Perspectives 2017 report (2): The IP session and the Key Note | Application to amend nappy patent not so watertight - IPEC holds nappy patent invalid for added matter and lack of clarity | SugarHero and the Snow Globe Cupcakes - Copyright and Food Videos | Mr Justice Birss introduces the brand new FRAND Injunction in Unwired Planet v Huawei | French Counseil d'État invalidates decrees implementing law on out-of-commerce works | A Tight Squeeze: Matters of Comity and Justiciability | Life as an IP Lawyer: Milan | AIPPI/AIPLA Event: Copyright in a digital age - US and UK perspectives

Event Report: Can Crowdsourcing Solve the Orphan Works Problem?

Crowdsourcing is one of the great innovations of the 21st century, but can it help address the issue of diligent search in the use of orphan works? The challenge of unlocking access to copyright works where the author is unknown has been a priority in the cultural agenda for some time. The issue of orphan works as an obstacle to the “productive and beneficial uses” of copyright works has been recognised as a policy challenge since at least 2006 when the US Copyright Office first made proposals for a legislative solution.

Since 2006, we have seen major legislative initiatives such as the EU Orphan Works Directive 2012 (Kat post here) and the UK IPO orphan works licensing scheme (Kat post here). However, despite guidance provided by the IPO, the “diligent search” requirement set out in the legislation has been identified by many as a major practical and financial hurdle. 

Seeking to address this, the EnDOW ("Enhancing access to 20th Century cultural heritage through Distributed Orphan Works Clearance") project was launched two years ago. The project aims to research the legal instruments of “diligent search” in the EU and create an online platform that allows crowdsourced diligent search processes in order to investigate the potential application and challenges of such a platform.

At the end of June, an international symposium held at the Centre for Intellectual Property, Policy and Management (CIPPM) at Bournemouth University brought EnDOW researchers together with copyright scholars from around the world. We hear more about the event from our friends at CIPPM:

Peter Jaszi talking orphans in America

"Crowdsourcing could be a solution to the challenge of diligent search for orphan works. This was the message from the EnDOW project, which launched its new platform at the symposium “New Approaches to the Orphan Works Problem”. Scholars from three continents came together to discuss solutions to the various roadblocks they have identified in their jurisdictions around the issues of orphan works.

Multiple perspectives, throughout the symposium, demonstrated that proving the orphan work status through diligent search (as requested, most notably, by the Orphan Works Directive 2012/28/EU) was exceedingly time-consuming and costly, especially for non-profit cultural institutions. 

However, one solution could be found in crowdsourcing efforts to perform diligent searches. As shown by 

Dr Kris Erickson, many cultural institutions already use volunteers for that purpose, and crowdsourcing expands on these existing practices. This effort poses certain practical difficulties, but innovative solutions to those difficulties as appearing, as highlighted by Prof Dan Hunter in his presentation of Blockchain technology as a way to facilitate diligent searches. The EnDOW platform, launched at the symposium in its Beta version by Maarten Zeinstra and the researchers of the EnDOW project, sets out to enable diligent searches in a streamlined and effective way.


Meanwhile, a review of the legislative efforts suggested that these attempts to deal with the problem are unconvincing. In the US, scepticism on these efforts came from Prof Peter Jaszi’s tale of repeated pushes for legal intervention being ground down by endless congressional negotiations and mismanagement. Paradoxically, the lack of orphan works legislation in the US favoured the proliferation of digitisation projects relying on the flexibility of fair use. By contrast, as shown by Prof Maurizio Borghi and Dr Marcella Favale, the over restrictive scheme introduced in EU Member States by the Orphan Works Directive has substantially failed to deliver its promises.

A particular problem was identified by Associate Prof Lillà Montagnani through the survey of 20 EU Member States’ diligent search standards: the process and the sources which cultural institutions need to go through to satisfy the standard of diligent search. Though many Member States used the same sources of the Directive, overall more than 1,700 different sources are listed when tallying these various Member States; Italy alone lists over 300. A particularly thorny problem was the fact that many of those sources could not be accessed freely, a limitation which hits non-profit archives the hardest.

A common solution – reversing the burden of proof so that works were assumed to be cleared until a rights holder came forward – was given its chance by the French authorities, as explained by Associate Prof Franck Macrez. Macrez showed that this chance was short-lived, as the ECJ struck down the French law on out-of-print books and put forward the rights of the creators as requiring prior consent and no formalities [see the IPKat here and here]. While a French-style solution may be revived within the proposed Directive on Copyright in the Digital Single Market, it remains to be seen whether the ECJ decision will have an impact on other national solutions of the orphan works problem.

Kris Erickson engaging a lively discussion

If solutions do not stem from legislative efforts, where should they come from?  One idea was relying on the public interest, putting forward the importance of archives – and more importantly their non-profit nature. As was shown by both Dr Claudy op Den Kamp and Leontien Bout for the EU and David Hansen in the US, archives simply rarely get sued or pressured by rights holders. Many archives end up uploading works after sometimes limited diligent search, and, in the EU, sometimes just enough to follow the bare minimum standards of sources laid out in the Directive. The US context is particularly well-suited for such an approach, as shown by Meredith Jacob who discussed how the fair use doctrine is fertile ground for archives interested in using works, bypassing the copyright headache altogether thanks to their non-commercial mission.

As explained by Kris Erickson, these institutions’ relative safety is precarious: re-emerging rights holders remain a major worry, blocking a large portion of 20th century works from being released to the public. Various initiatives have shown some progress in changing the way cultural institutions approach the problem, as shown by Victoria Stobo in relation to the Digitizing the Edwin Morgan Scrapbooks project, but legal certainty is the only way to completely alleviate worries.

Finally, an argument proposed over the course of the Symposium was that, if the problem of diligent search could not be avoided, making it as easy as possible was the way forward, through reducing the time and cost involved in the process. One aspect of that was highlighted by Annabelle Shaw was - empowering those working for the various cultural institutions through training and increased expertise, and inspiration from risk assessment frameworks and other proven tools to guide the process of diligent search."

See #endow on twitter for more photos and comments about the event and project. 

Keep up to date on the the EnDOW project here and other events going on at CIPPM here.

Photo credit: Maurizio Borghi

Freedom of panorama in Italy: does it exist?

Arnaldo Pomodoro's Sfera Grande,
located in Pesaro (Marche)

Until recently the exception in the InfoSoc Directive (Article 5(3)(h)) allowing so called ‘freedom of panorama’ was an obscure and little discussed - if not altogether neglected - one.

That is no longer the case: discussion of freedom of panorama has been undertaken at the level of EU legislature (the Reda Report recommended this exception be made mandatory), and Member States have legislated in this area. France, for instance, has just introduced a narrow exception allowing freedom of panorama.

The InfoSoc Directive in fact allows Member States to introduce an exception in their copyright laws to allow the "use of works, such as works of architecture or sculpture, made to be located permanently in public places".

But what is the situation in Italy? This Member State is interesting for many reasons, including the fact that, while formally it does not have an exception allowing freedom of panorama, a few years ago the competent Ministry stated that making reproductions of copyright works permanently located on public display is not to be regarded as a copyright infringement.

Katfriend and art law expert Gilberto Cavagna di Gualdana (MiLa Legal) explains where the law stands:

Here’s what Gilberto writes:

“Freedom of Panorama - the right to take picture and/or videos of buildings, monuments, as well as artistic and architectural works present in a public space – is not recognized in Italy, unlike other countries. Italian law does not in fact include a specific provision that establishes or regulates such a right. Therefore, evaluation of the legality of reproduction of visible works in a public place must be conducted according to general copyright laws (Law 22 April 1941 No 633 as amended: the ‘Copyright Act’) and the protection of cultural heritage (Legislative Decree 22 January 2004 No 42 as amended: the ‘Cultural Heritage Code’).

Copyright law protects all works that possess creative character, no matter the method or form of expression, and reserves to the author the right of economic exploitation of such works as well as the right to prevent any use that could be damaging of the author’s honor and reputation. Though there are some exceptions, for the most part, the duration of economic rights for protected works is 70 years after the death of the author; moral rights are not subject to any temporal limitation and upon the death of the author, these rights can be exercised by descendants and the President of the Council of Ministries as long as, “public purposes require so” (Article 23 of the Copyright Act).

The reproduction of a work protected by copyright hence always requires authorisation from the author/owner (or from the descendants). However, there are is also a number of exceptions: in particular, reproduction is always allowed for “personal use, on condition that this act does not conflict with the normal exploitation of the work or of the other subject-matter and does not unreasonably prejudice the rightholders” (Article 71-sexies of the Copyright Act). Another case is the “reproduction, free of charge, via Internet, of images and music in low resolution, for didactic or scientific use and only in cases in which such usage does not have an economic purpose” (Article 70 of the Copyright Act).

   

The case of the 'Armed David'

The Cultural Heritage Code protects works that have artistic, historical, archeological and ethno-anthropological interest, irrespective of their ownership (public or private). However, these works cannot be “works of a living author or works whose creation does not date back to more than 50 years, if the works are objects and over 70 years if they are buildings” (Article 10 of the Cultural Heritage Code). As regards their reproduction, the Code established that the “Ministry, regions and other public territorial entities can allow the reproduction of cultural objects...” (Article 107 of the Cultural Heritage Code).

The provision does not specify whether it encompasses solely cultural objects protected 'indoors' (such as inside a museum) or also those that are located outdoors. The provisions also covers the topic of whether protection can be available to cultural works housed both indoors and outdoors, or solely the former, since – according to scholarly literature – cultural works that are freely visible in public should be subject to “a regime of pure and simple commons. The image of these works must therefore be considered “common” for all and the reproduction of such a cultural work, no matter the purpose, should therefore be free as well, and not subject to any authorisation or payment” (Resta, L’immagine dei beni, in Resta (edited by), “Diritti esclusivi e nuovi beni immateriali”, Torino, pp. 557-558).

The Cultural Heritage Code thus leaves a large margin of appreciation to public authorities that have access to protected works without giving consistent indications and behavioural references. In practice, authorities have adopted different policies: for example, the Municipality of Milan called for a specific procedure to allow the filming of the city’s cultural works, even with payment of a compensation depending on the use and final purpose of the images obtained; some Monuments and Fine Arts Italian Public Departments (named “Soprintendenze”, organisations linked to the Ministry of Cultural Heritage, known as 'MiBACT'), such as the one in Cagliari (Sardinia), consider there to be no need for authorisation or payment for the use of cultural works exposed visibly in public. 

The wording of the Cultural Heritage Code refers specifically to cultural works that are available to all public authorities, meanwhile comparable protection is not set forth for cultural works that are privately owned. According to scholarly literature, the same legislation for public cultural works might be also applied to those that are privately owned (interpretation by analogy) due to the fact that the Cultural Heritage Code does not generally provide any distinction regarding the state of ownership of the goods; however, this theory does not have unanimous confirmation.

Maurizio Cattelan's L.O.V.E.,
located outside the Milan Stock Exchange

The lawfulness of the reproduction of a work protected by the Cultural Heritage Code, lacking the prior consent of the owner, may depend on the type of works (public or private), its location (inside a museum or in an open, public space) and any policy adopted by the entity that controls such work. 

In the absence of a clear set of rules, the matter of acknowledging in Italy a Freedom of Panorama and its possible terms and conditions of such right was submitted to the MiBACT. In the response given on 5 February 2008 to the relevant parliamentary hearing, the Ministry responded that “freedom of panorama […] is acknowledged in Italy for the well-known principle under which behaviour that is not forbidden by law must be considered lawful”; with the consequence that, with the exception of the provisions of the Copyright Act, “in Italy, since there is no specific legislation in place, it must be lawful to photograph freely all visible works, from the new building in the Ara Pacis site to the Coliseum, for any purpose, including commercial, with the exception that, in modifying or altering the object of the picture, this is offended in its decorum and in the values that it expresses”. [readers might remember the recent case of the 'Armed David']

The response of the Ministry has given rise to criticism, also because the answer seems to be partially departing from the Cultural Heritage Code. Currently, the discussion whether or not freedom of panorama exists in Italy is far from settled.  In any case, lawfulness of each reproduction of a cultural work shall be assessed, case by case, pursuant to the applicable rules of the Copyright Act and the Cultural Heritage Code.”