More Monday Miscellany

Refreshed by a few hours of sleep, punctuated by the emptying of nocturnal bins and orchestrated by the wailing of ambulance sirens, the IPKat awoke to inhale that first draught of San Francisco breeze -- only to have his breath quite swept away by an avalanche of incoming emails, news items, requests for money and offers to purchase new electronic garage doors. Having taken stock, he thought it might be a good idea to offer an additional Monday Miscellany to his readers.


First, something for computer software enthusiasts. The First Senate of the German Bundesgerichtshof decided in February, in Oracle v usedSoft (I ZR 129/08), that there were a couple of questions on which it wished to seek the guidance of the Court of Justice of the European Union (see the 1709 Blog here) regarding the sale of 'second hand' downloads. The Kat now understands from the UK's Intellectual Property Office that this reference for a preliminary ruling on the software directive has been given a number (Case C-128/11 Oracle International Corporation v usedSoft GmbH) and that the questions referred are these:

"1. Is the person who can rely on exhaustion of the right to distribute a copy of a computer program a 'lawful acquirer' within the meaning of Article 5(1) of Directive 2009/24/EC? ("In the absence of specific contractual provisions, [most infringing] acts ... shall not require
authorisation by the rightholder where they are necessary for the use of the computer program by the lawful acquirer in accordance with its intended purpose, including for error correction).

usedSoft

2. If the reply to the first question is in the affirmative: is the right to distribute a copy of a computer program exhausted in accordance with the first half-sentence of Article 4(2) of Directive 2009/24/EC ("The first sale in the Community of a copy of a program by the rightholder or with his consent shall exhaust the distri­bution right within the Community of that copy,... ") when the acquirer has made the copy with the rightholder's consent by downloading the program from the internet onto a data carrier?

UnusedSoft

3. If the reply to the second question is also in the affirmative: can a person who has acquired a 'used' software licence for generating a program copy as 'lawful acquirer' under Article 5(1) and the first half-sentence of Article 4(2) of Directive 2009/24 also rely on exhaustion of the right distribute the copy of the computer program made by the first acquirer with the rightholder's consent by downloading the program from the internet onto a data carrier if the first acquirer has erased his program copy or no longer uses it?".

If you think you know the answers, send them to the Court of Justice on a postcard.  If you think the UK government should take a position and make a submission to the Court, you have until this Thursday, 19 May, to do so by emailing Policy. As ever, it's absurd that so little time should be given for this mock consultation with the public and regrettable that we have no idea what happens to submissions, if anyone does manage to submit them within the all-too-brief window of opportunity. If you are do know what happens to the submissions, please send the answer on a postcard to the IPKat ...


One thing this Kat will miss today is the presentation by Edward Lee (Illinois Institute of Technology - Chicago-Kent College of Law) on The Global Trade Mark for Famous Marks". It's nothing personal, but the Kat is on a panel reviewing papers on the Madrid Protocol and passing off which runs at the same time. Edward's paper is available on SSRN and the abstract goes like this:

"This article offers a proposal for WTO countries to adopt global IP rights for a special class of trademarks: famous or well-known marks. Well-known marks are well-suited for greater departure from the territoriality principle, given the transnational protections for well-known marks that already exist under the Paris Convention and TRIPS Agreement. This Article proposes creating a Global Trademark (GTM) for well-known marks, to be governed by one, uniform international law. The GTM will span all countries in the WTO. The GTM is inspired, in part, by the Community Trade Mark (CTM) in the European Union, the first truly transnational IP form. While the CTM is regional in scope, the GTM will be international.

This article proceeds in five Parts. Part I discusses the theory behind the Global Trade Mark (GTM) and why it is worth adopting today. Part II discusses the outlines of the proposed Global Trade Mark Treaty, whose signal feature will be to establish a uniform body of international law to govern the GTM and an International Court of the GTM to resolve conflicts over its interpretation. Part III discusses the two Pathways by which a trademark can be registered as a GTM: (1) international registration of an existing famous mark that is famous in a certain threshold number of countries (here under a proposed Rule of 7 countries, the formula of which is discussed below), or (2) an “intent-to-develop” registration of a mark an owner intends to make famous under the Rule of 7 countries within a prescribed time of 10 years. Part IV discusses enforcement of GTMs in national courts and post-registration issues, including abandonment and genericide. Part V addresses objections".

This Kat hopes that someone at that session will let him know how discussions pan out, so he can post a report.  His own position is that, if global trade mark protection is a viable option -- which he thinks it can be -- then the candidates for protection will be only those trade marks which carry no fame, reputation or other baggage at all. But that's a topic for another INTA ...

Honest concurrent
user

Tuesday breakfast meeting.  If you are planning on attending tomorrow morning's giant LinkedIn Groups breakfast session, masterminded by the Kat's friend Alfred Strahlberg -- to which a remarkable 200+ INTA folk have already signed up -- at the Golden Gate University, 536 Mission Street, San Francisco, breakfast sponsors Hiaring & Smith have kindly posted links to the presentations which have been made available so far, thus kindly relieving this Kat of his promise to do likewise.  Many thanks!