Monday miscellany

Well bread. In May the IPKat reported that the Irish Battle of the Breads, between bakers McCambridge and Brennan, was to be fast-tracked and that a July trial date had been fixed. Well, he's not too sure whether July has come a bit late this year or whether a July fast-track hearing was followed by a slow-track judgment -- but it does appear that McCambridge has won its action and secured injunctive relief against Brennan's continued use of what was found to be a confusingly similar packaging.  Merpel's just a little sad that this litigation didn't take place in England and Wales, where an appeal might just be heard by a man most knowledgeable in the field of intellectual property, Lord Neuberger of Abbotsbury, the Master of the Rolls. The IPKat thanks his friend Gemma O'Farrell for the link to this news item.

The IPKat's French friend Asim Singh brings fresh news from Paris concerning the ever-popular pastime of les Françaises -- litigating Google AdWords. Reports Asim:
"In a decision handed down on 14 November 2011 the Tribunal de Grande Instance de Paris addressed Google’s role in respect of its (in)famous AdWords program. At issue was whether Google ought to be characterized as a mere hosting entity with respect to the text of a sponsored link for Prisma Press’s gossip website (which, the Court held, violated the plaintiff’s right of privacy under Article 9 of the French Civil Code). 
Applying the principles laid down by the Court of Justice of the European Union in Google France, the Court found that Google was not entitled to the safe-harbour protection afforded to mere hosting providers because its role was not purely technical, automatic and passive such that it had neither knowledge nor control over the hosted information. The Court reached this conclusion after careful analysis of the service’s Terms of Use. It stated: “in light of the proven knowledge by the person in charge of AdWords of the contents of the message and the key words, as well as the editorial control which it exercises contractually, it must be held that it cannot be characterized as a hosting provider and benefit from the corresponding liability exemptions”. 
The Court identified the following elements, in particular, from the Terms of Use as indicative of Google’s active role:
- Google was entitled to demand that its client (the advertiser) show it the advertising message at least 3 days before the scheduled start date;
- Google was entitled to determine the advertisement’s position in its discretion;
- Google was entitled to inform the client that it had 72 hours to correct or modify the key words;
- Google was entitled to reject or withdraw any advertising for any reason; and
- Google was entitled to evaluate the relevance of the advertising. 
Referring to the Court of Justice's finding that the fact that Google provided general information to its clients was not sufficient to deprive it of the status as hosting provider, the Court stated that the provisions of the Terms of Use went much further and gave the editorial rules a contractually binding character which evidenced Google’s active role in drafting the ads. 
Accordingly, the Court found in favour of the plaintiff and held Google and the advertiser jointly and severally liable for the harm suffered as a result of the violation of plaintiff’s right of privacy and ordered them to pay €1,500 in damages and €3,000 in court costs. 
The decision is a first-instance judgment and is subject to appeal".

Browsing through the website of the UK's Intellectual Property Office the other day, one of the IPKat's most dedicated and mischievous readers chanced to find this interesting little application, filed last month, to register the word AVIDITY for goods and services in Classes 9, 16, 38 and 41.  The applicant is named as Avidity IP which, it unsurprisingly transpires, is a firm of European patent and trade mark attorneys (here). Noting that the dictionary meanings of 'avidity' include 'greed' and avarice', the Kat's correspondent cheekily suggests that the choice of such a word might be unsuitable or, worse, descriptive. The Kat doesn't think there's a problem here and he does quite like the brightly coloured, eye-catching logo (right). But what's exercising his mind at the moment is the small print underneath it: "satisfaction is not enough". He's wondering what else might be in store, in addition to satisfaction.  Readers' suggestions, especially from Avidity IP (among whose people he has spotted some friendly names), are most welcome.

The IPKat's friend Robert Watson (President, FICPI-UK) writes to tell him that FICPI-UK is attempting to carry out a survey of qualified patent and trade mark attorneys in private practice in the UK to answer some of the points raised in the Hargreaves Review, in particular about small and medium-sized enterprise (SME) access to the IP system. The aim is to generate some evidence of the efforts our profession makes to assist SMEs in understanding the IP system and in obtaining and enforcing IP rights. He has emailed FCUK FICPI UK members as follows:
"Please spare 10 minutes to answer this e-survey from FICPI-UK regarding services for SMEs in the UK – it only has 10 questions! Please pass it on to as many qualified patent and trade mark attorneys in your firms as possible, as the more answers we get the better. However, we are only looking for answers from those in private practice.

We are gathering evidence to submit to the UKIPO in relation to the Hargreaves Review, which concluded that "current service provision is not configured as well as it could be to help SMEs understand and protect their IP or realise value from it. There are three main issues which serve to impede SMEs in obtaining the support they need: the complexity of available offerings; a lack of broad based, strategic business advice; and the substantial costs involved in IP management.”
The attached document explains in more detail the background to this survey, and what we will do with your answers. 
We would like your answers by 19 December 2011".

The IPKat's excellent and scholarly friend Norman Siebrasse tells him that he has recently become aware of a recent Canadian decision, Nazerali v. Mitchell, 2011 BCSC 1581, granting an interim injunction in a defamation action, inter alia "enjoining the defendants Google Inc. and Google Canada Corporation from permitting the or search engines from returning any search result from"  Says Norman:
 "It occurs to me that this may be of general interest. I have never seen an injunction of this nature before, though I have to admit that I do not follow defamation law closely. I wonder if similar injunctions have been granted in other jurisdictions. It does seem to me that this kind of injunction might be invoked in respect of illegal downloading and other forms of pirating, and not just in defamation. It is similar to the injunction discussed by the Court of Justice of the European Union in Case C-70/10 Scarlet Extended [noted by the IPKat here], but it is more specific and so, from what I understand from your report, would not be directly prohibited by that decision. I'm not even sure how difficult it will be for Google to comply".
Readers' comments are earnestly requested.

The IPKat's WIPO-based friend Sacha Wunsch-Vincent has kindly drawn his attention to The World Intellectual Property Report 2011- The Changing Face of Innovation. This exciting new WIPO publication describes how ownership of intellectual property rights has become central to the strategies of innovating firms worldwide. With global demand for patents rising from 800,000 applications in the early 1980s to 1.8 million in 2009, the Report concludes that growing investments in innovation and the globalization of economic activities are key drivers of this trend. For those who like stuff which is evidence-based [on which see the excellent post by Dr Nicola Searle in her Katonomics series here], there are lots of real facts and figures. Thanks, Sacha, for letting us know.
Monday miscellany Monday miscellany Reviewed by Jeremy on Monday, November 28, 2011 Rating: 5


  1. To try to answer some of the questions about Deep Capture.

    Google routinely block access to specific URL's on request. Blocking access to an entire domain should be similarly straightforward. They could simply avoid sending their spider to it (I am sure they have a list of sites to avoid) or if they did spider it configure their search not to return results from it.

    Compare that with the extremely vague - and completely impractical - order sought by the claimant in Metropolitan International Schools v Designtechnica. Some of Eady J's observations in that case may be of interest concerning the liability of search engines. One difference is that the judge in the Deep Capture case focuses on the storage of defamatory material in google's cache (which I find puzzling) whereas in the Metropolitan International Schools case the focus was on the snippets.

    Its right to say that Scarlet Extended is quite different. In particular it required the ISP to carry out deep packet inspection with serious implications for the right to privacy of its subscribers (it is the electronic equivalent of steaming open the envelopes and looking inside). Google already looks at the URL and so there can be no additional intrusion. The technical simplicity and interim basis of the injunction are all factors that separate it from Scarlet.

    I think the fact that the Deep Capture order is an interim injunction (until 2 December) with liberty to apply means that one should not read it too closely.

  2. Thanks for the information and observations. If I understand correctly, your view is the Deep Capture injunction is both technically and legally reasonable. Do you by any chance know of any similar injunctions that have been granted in other jurisdictions.

  3. The Avidity logo reminds me of the Google colours...for a moment I thought that Google was expanding its boundaries and entering the IP domain itself...

  4. Regarding the confusingly similar bread packages, readers may be interested to know that the Israel court gave a ruling on a very similar matter last year. See

  5. @Anonymous 5:25pm - the Avidity logo reminds me of the logo for the fat blocking drug Alli. Hopefully the side-effects will not be the same...

  6. I'd like to thank Brian. I've been racking my brains trying to think of that product which the avidity logo reminded be of.

    Q to Brian: You are reminded of Alli, but have you been confused into using the services of avidity ip in place of the weight loss drug? The use of most patent firms results in a severe lightening of the wallet, so perhaps there is a connection.


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