"Making the innocent pay" is the title of this month's editorial in the Journal of Intellectual Property Law & Practice, the Oxford University Press IP monthly (home page here). This piece considers the aftermath of Unilin Beheer BV v Berry Floor NV Information Management Consultancy Limited [2007] EWCA Civ 364, a decision in which the Court of Appeal sought to justify an award of damages for infringement of a patent that should never have been granted and which was therefore invalid. You can read this editorial, together with all the past year's editorials, for free if you click here. Other content in this issue includes You can view the content of the current JIPLP here.* "Patent prosecution history as a predictor of re-examination success" by John Anderton, analysing the ability to predict the likely outcome of a re-examination, only based on the prosecution history of the patent, by examining the data available from patent prosecution and re-examination proceedings, the methods used in collecting it and the measures used in analysing re-examination outcomes;
* "Belgian newspapers v Google News: 2–0" by Benoit Van Asbroeck and Maud Cock, on the resistance of Belgian newspapers to having their content conveniently hyperlinked and served up for the enjoyment of Google search facilities (abstract here);
* "Copyright in custom code: Who owns commissioned software?" by T. J. McIntyre, this being a detailed and thoughtful analysis of the key issues and the manner in which case law has addressed them (abstract here).
Guidance for would-be authors here; subscription details here; free sample issue here; Editorial board members here
One of the IPKat's curious friends has emailed him to ask the following question: "In the US, an online service provider (OSP) needs to meet a few requirements in order to benefit from the Digital Millennium Copyright Act (DMCA) safe harbour protection for third party content:Resisting the temptation to give his own answers, the IPKat thinks it might be prudent to throw the questions out to this weblog's more responsible readership, in the hope of getting some correct answers. If you can be of any assistance, please email team blogger Jeremy here and he'll forward your response to the inquisitive questioner.
1. posting a copyright policy, including termination of repeat infringers;
2. enforcing the policy;
3. registering an agent to receive notices of infringement in the US Copyright Office;
This is particularly relevant for sites such as YouTube. which feature user-generated content.
In contrast, in the European Union and in Israel, an OSP doesn't actually need to register anywhere or take specific steps (other than take down in response to notices) in order to benefit from DMCA-like safe harbour protection from third party infringing content.Does anyone know if there are any specific legal requirements (like registration with the national copyright office, or posting something specific on the OSP's website) to benefit from DMCA-like protection in Japan, China, Korea, Singapore or Australia?
More generally, has anyone come across a compilation of the worldwide requirements in this area in order to benefit from DMCA-like protection from third party content posted to a website?"
Reviewed by Jeremy
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Monday, July 09, 2007
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The full text of the "Copyright in Custom Code" article is available to non subscribers via my blog.
ReplyDeleteComment on the editorial in JIPLP.
ReplyDeleteEditorial states ...."The recent ruling of the Court of Appeal in Unilin Beheer BV v Berry Floor NV Information Management Consultancy Limited, 25 April 2007 [2007] EWCA Civ 364, is one such case. In brief, following a vigorously contested patent infringement action and a counterclaim for invalidity in the UK, the claimant's patent was held valid and infringed. The successful patent owner was held to be entitled to damages and to costs, both of which were substantial. Subsequently, in opposition proceedings before the European Patent Office, the claimant's patent was held to be invalid. One of the questions for the Court of Appeal to resolve was whether the claimant was entitled to receive damages for patent infringement when the patent should never have been granted."
Not sure if this is correct. Wasn't the Unilin patent ultimately upheld at the EPO? My understanding is that it got through the opposition division, and was under appeal, and went up to the Enlarged Board with all the other divisionals cases (and consolidated with G1 / 05). As it turned out (i.e. following the Jacob decision in the Court of Appeal), G1 / 05 has now come out, the current divisionals practice is maintained (which, incidentally, was something on which IPKat breathed a sigh of relief last week), and the Unilin patent was maintained.
Jacob's judgment was looking at the situation of "what IF the patent is ultimately held invalid by the EPO".
What a co-incidence; the Unilin EP-B2 is published today.
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