Wednesday whimsies

If you subscribe to the bound volume service of the European Trade Mark Reports (ETMR), published monthly by Sweet & Maxwell and, coincidentally, edited by IPKat blogmeister Jeremy, your handsome yellow tome, containing over 1,100 pages of headnoted judgments from European and national courts, should have arrived.  Check your terrestrial letterbox!

The Intellectual Property Lawyers Organisation (TIPLO) hosts its spring [if you can call it that, mutters Merpel] event on Tuesday 26 March – "Leveson and its consequences". This promises to be a thought-provoking and critical view of the recent Leveson Inquiry into the culture, practices and ethics of the press and its implications, including

  • the proposed press regulatory body with considerable enforcement powers.
  • a proposed inquisitorial arbitration service for privacy and defamation claims against the press.
  • power to award exemplary damages.
  • amendments to data protection law and the powers of the Information Commissioner. 
Speakers are Mr Justice Peter Kelly, Keith Mathieson (partner, RPC) and Sir Louis Blom-Cooper QC -- but for many mortals the main attraction is the dinner. For more information, click here.  You can register and pay online.  TIPLO is happy to accept payment by cheque or PayPal.

Coming up on 24 April 2013 is the Competition Law Association's 15th Burrell Competition Lecture and Dinner, "The New Competition & Markets Authority: Aspirations and Challenges". Speaker: Alex Chisholm. Venue:  Middle Temple Hall, Middle Temple, London EC1Y 4AG, Middle Earth ... Click here for details.

The Jacques Lassier Prize, worth €1,830, is awarded for a written work or dissertation on a competition law subject (covering both antitrust law and unfair competition law, including IP related matters). Entriess must have been produced or dissertations defended in the two years leading up to the date of the closure of the competition.  The Prize is open to young individuals (these being those who are under 35 on 31 April 2013 [according to the organisers who, unlike Merpel, may have forgotten how many days there are in April], who are individual members of the International League of Competition Law (LIDC) or residents of a country where there is an affiliated national group (such as the Competition Law Association in the UK). Full details of the Prize rules can be found on the CLA’s website here.  If you're not planning on entering but are merely curious, details of earlier prizes and winners can be found here

Writing on behalf of Prospect, the union that represents patent examiners in the United Kingdom, Eleanor Wade refers to the continuing discontent of Intellectual Property Office (IPO) staff over the deleterious and demoralising effect of government pay policy (see earlier Katpost here).  Eleanor now tells the Kat that since, unfortunately, the IPO remains unable to resolve the dispute, its hands being tied by central government, members of Prospect members at the IPO are striking again today, alongside their colleagues from the Public and Commercial Services Union (PCS) union. Says Eleanor:
"We do regret any inconvenience caused to our customers by this action. However we feel that we have been left with no choice, since we believe that if the situation on pay is not resolved the impact on the IPO's ability to deliver for its customers will be much greater. We remain hopeful that a way of funding a fair and sustainable pay system from IPOs funds can be found". 
This Kat believes that the UK's examiners are not getting a good deal, but -- having been inconvenienced too many times over the years by strikes which have been called by others who regret his inconvenience but do not share it -- he has cultivated a dislike of strikes which he finds impossible to overcome.  He has said before, and will say again, that the best way for examiners to put pressure on the government is to say that, until they get a better pay deal, they will simply grant all applications that come before them.  That way, they will at least get applicants on their side.

Around the weblogs. A post on PatLit shows how difficult it can be for a patent owner, alleging infringement, to get a speedy trial on the basis that the allegedly infringing product made by the defendant will have become the de facto industry standard by the time a more distant trial is heard.  Over on the 1709 Blog, Ben Challis reports on some recent research to the effect that music copyright owners should basically stop worrying about online piracy.  There's a cry for help on Class 46 from Katfriends Uli Hildebrandt and Andreas Lubberger, who would like some assistance in compiling information about avoiding injunctions for Community trade mark infringement -- and, finally, Simone Blakeney on Art & Artifice reports on the call by Maria A. Pallante (head of the US Copyright Office) for better copyright protection for artists.

Following Eleonora's earlier post about Gita Hall May filingsuit against the producers of hit cable TV show Mad Men, which has attracted some comment, Miri Frankel has put together some further thoughts of her own. She writes:

"I’ve noticed that the reader comments appended to the Deadline article (here) highlight a profound confusion among the public as to the application of rights of publicity.  In particular, numerous opinions state that if M. Avedon owns the copyright in the photograph, Mr Avedon is the required approver of its use in Mad Men.    
However, astute Kat readers were quick to point out in the comments to Eleonora’s post that Ms May’s claims will be decided on the basis of state law regarding rights of publicity, rather than US Federal law.  States have developed their own laws regarding rights of publicity and privacy, and, in fact, many states (22 out of 50) have no such laws at all. 
One Kat reader asked:

“[I]f someone has consented to (and presumably been paid for) being photographed for an advert, it seems unlikely that additional use of that photo could be described as an "invasion of common law rights of privacy".
Such an analysis might very well be correct under the laws of states that protect only the right of privacy.  Those laws generally do not protect public figures who are newsworthy, have chosen to enter public life, or have otherwise consented to a certain level of publicity.  However, states that protect an individual’s right of publicity also give that individual control over how his or her name, image/likeness or voice is used commercially.  In some states, the right of publicity only extends to public figures and celebrities, and in other states the right is given to all individuals (because the right of publicity is born from the right of privacy).  
That western bastion of sunshine known as the State of California, home to Los Angeles and all of its Hollywood star and starlet residents, does indeed have right of publicity protections codified in its Celebrity Rights Act.  In the case of Ms May, I do wonder if the 9th Circuit’s recent opinion in the Jersey Boys case, reported by Ben Challis in the 1709 Blog here, will ultimately weaken her case.  In particular, the producers of Man Men did not necessarily seek to “capitalize” on Ms May’s fame, but instead sought to draw viewers into the style of the 1950s and 1960s  by flashing a number of advertising images from that time period, including the Revlon ad in which Ms May modelled her Satin Set hairdo.  On the other hand, copyright infringement is quite different in nature from the highly personal claim of infringement of the right of publicity; Ms May might succeed because of the public interest in protecting an individual’s control over how her image is presented in connection with commercial ventures".  
Thanks, Miri, for these observations!
Wednesday whimsies Wednesday whimsies Reviewed by Jeremy on Wednesday, March 20, 2013 Rating: 5


  1. On the final musing, Russell Christoff's case against Nestle for use of his photo on the label of 'Tasters Choice' coffee springs to mind - more here

    In the US case of Edgar Winters v DC Comics (2003) the court said what the right of publicity holder possesses is not a right of censorship "but a right to prevent others from misappropriating the economic value generated by the celebrity’s fame”.

    In Australia Paul Hogan has been vigilant in protecting his image rights, and the 1969 case of Henderson v Radio Corporation might be of interest.

  2. Would applicants really be so pleased if UK patent examiners simply granted all patent applications?

    Isn't part of the value of a UK patent the associated level of likely validity that comes with it having undergone substantive examination?

    If this is taken away, so that anyone can get a patent for anything, (even if just for a short time) then how will anyone (e.g. investors) know which patents are likely to be valid or not?

  3. Catherine: investors can't ever know which patents are likely to be valid or not, since fresh prior art can surface any time, any place. They will in any event make their own assessment, often before the patent is applied for or examined, on the basis of a basket of criteria of which a patent's validity is just one element.

  4. Jeremy: thanks.

    Yes, I know that you can never know for sure whether a given patent is valid or not (regardless of whether it has undergone substantive examination), and also I appreciate that a (valid) patent is just one of many criteria that investors will look at, I just meant that on average surely patents which have been examined are more likely to be valid than those which have not (otherwise, why perform substantive examination?)?

    Another way of looking at it: is any extra value attributed to patents granted in countries with substantive examination, than in other countries where there is only formal examination?

  5. Some/many applicants also base their decision on whether/where to file further applications on the UK IPO's search (and sometimes also examination) of their UK priority application in the priority year. If all search and examination results were positive, it would be much harder for applicants to know the likely prospects for applications elsewhere and whether it would be worth the expense of filing any.

    Overall, I think applicants gain from a thorough UK search and examination and it would be a disadvantage to them if this were not performed.

  6. Granting all UK applications would certainly make the UK Patent Box quite interesting!

  7. Catherine: utility models, petty patents, innovation patents and other forms of second-tier protection are apparently the subject of investment -- but they don't have the benefit of pre-grant examination.

  8. Hi, in Spanish Law (I'm from Barcelona) image right use is very strict. An authorization for a specific use does not imply an extension to other media or term.

    Enric Enrich
    Enrich Advocats

  9. I am bemused as to how Jeremy can believe striking is wrong, but simply not doing your job is justifiable. I prefer the former response, which is at least honest. The patent profession is already awash with 'fakers' purporting to a job they can not do adequately, providing a poor and hugely overpriced 'service' to UK businesses.

  10. I must admit to having gone on strike myself on more than one occasion when I was an examiner in the 1980's: I fear that it is the only way to get taken seriously by central government.

    It is evident from the Patent Office's recent annual reports that their staff have not been happy bunnies for some time. What with frozen salary increments and worsening working environment I would probably have joined them had I still been in post.

    The following quotes from the annual report for 2011-12 may throw some light on things:

    Page 18

    The Office was disappointed that its engagement index in the Civil Service wide People Survey was similar to last year, and at 52% for the organisation, was 4% below the average for the Civil Service. As a consequence the Office missed one of its Ministerial Targets – ‘improve the IPO’s engagement index so that our score is at least equal to that of the Civil Service 2011 benchmark’. Although the Office improved its scores in a number of areas, namely Leadership & Managing Change, Organisational Objectives & Purpose, and Inclusion & Fair Treatment, there were other areas, such as Pay & Benefits, Resources & Workload and Learning & Development, where scores declined. There was some suggestion that this result was partly a response to broader economic drivers, such as the Government wide pay freeze.

    Page 20

    Working Beyond Walls is the Office’s project to improve the working environment and reduce office space. This was piloted this year and, in consultation with staff, will be rolled out across the Office next year.

    It is surely a masterpiece of spin worthy of Sir Humphrey to assert that moving staff from individual offices to open plan, which involves reducing the amount of space per person, constitutes an improved working environment. I experienced this situation a decade ago in my last few months of industrial practice, where our department was relocated to an open plan office, it having become company policy that all employees below a certain grade were to be in open plan. We shared our office with a call centre, so most of us bought ear defenders from the local tool shop or used totally enclosed headphones in order to concentrate on our case work.

  11. Something I have just noticed in the Steering Board minutes for 17 July 2012:

    9.4 The under spend in Patents Directorate was due to pay costs, as they had not recruited as many patent examiners as budgeted for. 19 examiners had been recruited and a further 5 were due to start in September. This was not an under spend as such; the IPO had not been able to attract as many examiners as initially planned and had not been able to over recruit. Consideration was being given to and open door recruitment policy but this was not an effective way of training new examiners. The impact of the Government’s pay policy could impact negatively on the retention of staff.

    I think that this must be the first time in the PO's history that a recruitment exercise has not been able to attract enough recruits: the post of Examiner was always a much sought-after position.

    Despite the observation

    " but this was not an effective way of training new examiners"

    the IPO's web site indicates that an "open door" recruitment policy has in fact now been adopted.

  12. I have to say that I continue to be flabbergasted by the suggestion that examiners should simply grant all cases. This will not please the applicants’ competitors, who will be faced with patents with overbroad and/or unclear claims. But it will not please applicants either, if following grant they then have to limit the patents in revocation proceedings, presumably paying the costs of whichever competitor began the action. I would imagine that the Office would consider granting patents that are known to be invalid a disciplinary offence, on a par with stealing - indeed, if the Office starts granting invalid monopolies it would possibly be worse for its future than the actual theft of any amount of its belongings.

    I agree with what Ron says about Working Beyond Walls. When this was first announced it was stated to be about providing a better working environment. It only came out later that it was because the government was imposing a limit on how much space per person the Civil Service could have. This meant that various pertinent questions, such as “Does the Department have the power to require this?” (the IPO is an agency and a trading fund, and so is supposed to be able to make its own decisions about how it achieves its results) and “Will this actually save money?” (the IPO is in Newport, where property is cheaper than in London, plus after the scheme was well under way the Office still had no idea who might rent the spare space or even how much the local rents were that it was competing against) were not asked until too late.

    Incidentally, the Office-wide bonus depends on the Office meeting its agency targets. For the year 2011-2012 the Office met all but one of its targets, but (as Ron has quoted above) missed the one relating to the staff survey. So everyone’s bonus was reduced by about 9% simply because staff had said they were unhappy.


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