The IPKat

Trash-talking counsel consigned to the Newzbin

noreply@blogger.com (David Brophy) — Fri, 27 Jan 2012 16:57:00 +0000

An anonymous correspondent has pointed the IPKat towards a rather unusual story of barristerial misconduct in today's Daily Telegraph.

It is true that in the IPKat's experience, the gravest impropriety likely to be committed by a barrister is the indiscriminate and unnecessary use of words like "nugatory" (instead of, say, "worthless") [coming from someone whose opening line included "barristerial", that's a bit rich, says Merpel], or an inability to hide their fever of excitement as they advise the miserable client, whose case has just sunk with all hands on board, that "we could make some really interesting law here if we appeal".

Perhaps the big surprise is that the misconduct in question occurred behind the scenes at an IP case (reported on by the IPKat here) colloquially known as Newzbin 1. This was a decision of Mr Justice Kitchin, as he then was, finding in favour of Twentieth Century Fox and against Newzbin Ltd. Newzbin provided access to Fox's films and was held to have authorised acts of copyright infringement, to have communicated copyright works to the public, and so on.

Today's story is foreshadowed in the opening paragraphs of the judgment which alluded to a change of counsel for Newzbin which occurred eight days into the trial. Newzbin was initially represented by Mr David Harris, but it was revealed during trial that Mr Harris, a barrister engaged directly by the defendant company, was in fact the sole owner of the defendant company. Not surprisingly he was compelled to step down once this came to the attention of the Court.

There was more to come, however. During the trial, Mr Harris posted to Twitter (under the alias @Geeklawyer, which was ultimately determined to be his account), and those tweets included slurs and obscenities directed to the opposing counsel and to the plaintiff's firm of solicitors, and also apparently tweets commenting on the merits of his client's (i.e. his own) case, one such tweet being “We are guilty as sin, f--- me they are entirely right”. The IPKat appreciates that the latter tweet may have been ironic but it's not what you expect from your own barrister nonetheless.

Freddy only skimmed Mr Kitchin's judgment and was
therefore terribly disappointed when he found
that he couldn't access free movies by visiting the New Bin

Ever an innocent soul, the IPKat needed Merpel to patiently explain to him what was meant by the enigmatic abbreviation "f---" in this context. Merpel obliged him with her characteristic gusto, and reeling from the shock, the IPKat has decided against quoting any of Mr Harris's other tweets, even in redacted form.

Mr Harris was brought before the Bar Standards Board, charged with professional misconduct. Apart from the nature and content of the tweets, the conduct complained of related to his actions in acting for a company in which he had a financial interest, and in a case in which there was a good likelihood he would be called as witness.

Neville Nagler OBE, the chairman of the Bar Standards Board, said that it was clear that the tweets had been sent by Harris and that he had brought the profession into disrepute, both in relation to the content of the tweets (which he labelled as "disgraceful") and on a professional level in acting as counsel for his own company. Mr Harris was therefore disbarred, fined £2,500 and ordered to pay costs.

The IPKat feels that it is superfluous - and possibly even nugatory - to comment on the lessons to be learned from this rather bizarre episode, and is confident that his learned friends know far better.

Friday fantasies

noreply@blogger.com (Jeremy) — Fri, 27 Jan 2012 15:07:00 +0000

Hamish the Town Cat has his
own Facebook page

Do you fancy working with a school that deliberately doesn't have an apostrophe in its name? If so, this may be for you. The Institute for Capitalising on Creativity, in the School of Management at the University of St Andrews [correct spelling], is recruiting a Knowledge Transfer Partnership Associate. The project is with Creative Scotland and identifies successful strategies for the management, commercialization and exploitation of intellectual property in the creative industries in Scotland. It's a great opportunity to work with the creative industries and research their IP strategies under the supervision of Hamish the St Andrews Town Cat, (above, right) with possible input from our favourite Katonomist Nicola Searle too. The position is based in Edinburgh and candidates are invited to apply if their backgrounds are in economics, management or law. The deadline for applications is 15 February and you can get more information from the IP Finance weblog here.

If Scotland is too cold, or too independent, for your liking, you may find Nottingham more to your taste. If so, you will be thrilled to discover that Katfriend Estelle Derclaye has the funding to support two PhDs in copyright law. Full details of these two exciting prospects can be found on the 1709 Blog here. Nottingham is famous for being the zone of activity of Robin Hood, one of the best-loved villains in folk history, whose celebrity was founded in the principle of stealing from the rich and giving to the poor. Merpel innocently asks where we might see the same principle put into action today, within the IP context?

How far does the copyright in a photo or digital image extend? The 1709 Blog is hosting a seminar on exactly this question, following the controversial ruling by Judge Birss QC in the "Red Bus" case (see links to blogposts here, here and here, plus readers' multifarious comments). Details of the seminar, which takes place on Tuesday 21 February, can be found on the 1709 Blog here. If you want to attend, you'd better not delay too long: the event was only launched yesterday but already has over 30 registrants signed up.

Meanwhile, the University of Sheffield is hosting a forum, “Governance and Intellectual Property of Biotechnology: Developed and Developing Countries Perspectives” on 2 March 2012. This, says Carlos Conde, is the first 2012 regional meeting founded by the Postgraduate Forum on Genetics and Society (PFGS) and organised by University of Sheffield postgrads. Calls for papers and all sorts of other details can be obtained from the PFGS website here.

Tallinn Airport: sadly, this lovely
design was rejected for the main
terminal, though the city planners
found another use for it ...

Around the weblogs. SOLO IP has been active this week. First it drew the attention of readers to the ongoing patent and trade mark professionals' salary survey, which now has data from well over 200 respondents and is looking quite useful. Then, in "The Terrors of Taxonomy", the excellent Filemot reports on the OHIM British Day, hosted by the Intellectual Property Office. PatLit alerts us to the latest UK call for evidence, this time relating to the proposed small claims track which, it is hoped, will be a reality by this October. Finally, readers of the jiplp weblog are treated to the reassurance that in Estonia, a country from which little IP information emanates, the courts have affirmed that the country's main airport cannot exercise a monopoly claim to use of the word "airport".

It's big, it's black and it's back! The 7th edition of that great classic, The C.I.P.A. Guide to the Patents Acts, is now published. You can get all the details from the publisher's website here. The book is only £250, which isn't very much when you consider that it's compiled by a team of no fewer than 34 authors, each of whom is more expert than the rest. A review of this mighty tome will follow, once the IPKat has had his letterbox surgically stretched. Meanwhile, readers of this weblog have the chance to spot -- before publishers Sweet & Maxwell correct it -- a whopper of a mistake in the book's description. Just look here!

Taking unfair advantage: VIAGUARA successfully opposed

noreply@blogger.com (Jeremy) — Fri, 27 Jan 2012 11:55:00 +0000

So many people have been emailing the IPKat to ask him if he has seen yesterday's General Court decision in Case T-332/10 Viaguara v OHIM - Pfizer (VIAGUARA) that he's beginning to worry if they are trying to tell him something. Actually he has seen the decision and might even already have written on it, had not the magnificently energetic Laetitia Lagarde not immediately potted it for the MARQUES Class 46 blog here, thus taking the urgency out of any inclination he may have had to post an urgent note on this case.

The good folk at Curia considered this case sufficiently important to dedicate an entire press release to it, though it doesn't appear to this Kat to contain any novel legal proposition. Possibly they were motivated by the fact that the decision is so far available only in French (the language of love) and Polish (the language of fiery passion), but not in English (the language of trade and commerce). Anyway, the gist of the case can be picked up from it:

"The sign "VIAGUARA" cannot be registered as a Community trade mark for drinks

Use of that sign is likely to take unfair advantage of the distinctive character or repute of the trade mark VIAGRA

The Community Trade Mark Regulation provides that registration of a trade mark may be refused ... where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In October 2005 the Polish company Viaguara S.A applied to [... register] the word sign VIAGUARA as a Community trade mark, in particular for energy drinks and alcoholic drinks.
However, the American company Pfizer Inc., proprietor of the earlier Community trade mark VIAGRA (registered in particular for a drug to treat erectile dysfunction), opposed that application.

On the basis on that opposition, OHIM refused to register VIAGUARA as a Community trade mark. Viaguara S.A. applied to the General Court to have that decision annulled.

... [T]he General Court dismisses the action and confirms the decision of OHIM.

As regards the condition relating to the repute of the earlier mark, the General Court holds that OHIM was correct to find that the reputation of the mark VIAGRA extends not only to consumers of the drugs concerned, but also to the general population. The General Court then examines the similarity of the signs at issue. In that regard, it notes that, when it comes to word marks, the consumer generally pays more attention to the initial part of the word. Therefore, the presence of the same stem "viag" in the signs at issue gives rise to a strong visual similarity which is, moreover, reinforced by the final part "ra" which is common to the two signs. Likewise, it finds that the signs are phonetically very similar and that there is nothing to distinguish the signs conceptually. The General Court therefore holds that the marks at issue are very similar.

The General Court observes that, even though a direct link cannot be established between the goods covered by the marks at issue, which are dissimilar, an association with the earlier mark is still possible, having regard to the high degree of similarity between the signs and to the huge reputation acquired by the earlier mark which extends beyond the public concerned by the goods for which it has been registered. Therefore, even if the respective publics targeted by the marks at issue do not completely overlap, as the goods concerned are different, a connection between the marks is likely to be made.

Lastly, the General Court rules on the condition relating to the risk of an unfair advantage being taken of the distinctive character or the repute of the mark Viagra. It concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation. The Court finds in that regard that even if the non-alcoholic drinks concerned do not actually have the same benefits as a drug to treat erectile dysfunction, the consumer will be inclined to buy them thinking that he will find similar qualities, such as an increase in libido, owing to the transfer of positive associations projected by the image of the earlier mark [this is a curious proposition: the Viagra product is claimed to have no effect on libido, though use of the Pfizer product is presumably a consequence of it]. Moreover, as regards the alcoholic drinks produced by Viaguara S.A. containing guarana, it should be noted that the applicant has itself claimed that they have other fortifying and stimulating effects on the mind and the body, as well as properties which are beneficial for health, similar to a drug [the precise significance of this is difficult to gauge: most food and drink will have some fortifying and stimulating effect on the mind and the body].

The General Court observes in that context that, although the product covered by the mark Viagra is a drug used to treat erectile dysfunction and is sold only on prescription, the fact remains that it does not necessarily refer to the treatment of a serious illness, but to an image of vitality and power, since it enables persons affected by erectile dysfunction to improve their sex life and quality of life and that the association with such an image is not incompatible with the "seriousness" which is intrinsic to medicinal products. Since the drug concerned is also used "recreationally" by young persons, the General Court states that such an image could be transferred to non-medicinal products, and in particular, the alcoholic drinks of the mark applied for, of a different nature, but consumed when going out or at parties [If this were a patent action, one might expect the court to order experiments to verify these propositions ...].

The General Court concludes that Viaguara S.A, by using a mark similar to the earlier mark, is attempting to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of that mark in order to create and maintain its image, to promote its own products. Therefore, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of the mark Viagra".

The IPKat would only add that it seems to him a dreadful shame that, regarding a mark for which registration was sought in October 2005, we've still got only as far as a decision of the General Court. There's still the prospect of an appeal to the Court of Justice. The IPKat can't believe that it is beyond the wit of man to devise a means of processing applications, oppositions, appeals and further appeals more swiftly.

Viagra jokes here, here, here and here [poor taste warning]

On The Way to Mumbai

noreply@blogger.com (Neil Wilkof) — Fri, 27 Jan 2012 11:12:00 +0000

This Kat has been holed up in his lair over the last week or so, feverishly trying to ready himself for a short of change of pace and venue: he will be serving as a Visiting Professor at the Shailesh J. Mehta School of Management here, part of the Indian Institute of Technology, Mumbai, for the next month.

Neil reports that it will be his pleasure to take part in various seminars and workshops at the crossroads of management and intellectual property and he looks forward to learning much from the students and faculty at this distinguished institution.

Each of this Kat's adventurous offspring had long ago traversed broad swathes of the Indian subcontinent, but he only ventured first after grandparenthood had set in. The electricity and energy of the place immediately captured him and he is delighted to return. He expects that some of his forthcoming blog posts will reflect on his experiences there.

During his stay, Neil will take part in the multiple-day 1st International Conference on Management of Intellectual Property and Strategy"(February 2-5, 2012), here and he promises to report on highlights of this event. He also wishes to thank Professor Karuna Jain, the head of the Shalish J. Mehta School of Management, for arranging this appointment. Neil is pleased to inform Indian-based readers of the IPKat that he would be delighted to meet them in Mumbai, should they find themselves in the vicinity over the coming month. The scenic view from Lake Powai, a minute from Neil's campus lodgings, will await them.

'D'oh! stuff up': when Homer meets Hollywood

noreply@blogger.com (Catherine Lee) — Fri, 27 Jan 2012 10:42:00 +0000

Merpel wishes they'd checked with her if she could actually read
before putting her Presidential speech on to the autocue

For your Friday reading entertainment, this Kat brings you news of an incident involving an Australian politician, a Hollywood film, a screaming howler and Homer Simpson.

Any ideas?

As widely reported in the Australian media, earlier this week, Anthony Albanese, Leader of the Australian House of Representatives and Minister for Infrastructure and Transport (right), gave a speech to the National Press Club of Australia. During the course of that speech he stated:

'In Australia we have serious challenges to solve and we need serious people to solve them. Unfortunately, Tony Abbott [leader of the Opposition] is not the least bit interested in fixing anything. He is only interested in two things: making Australians afraid of it and telling them who’s to blame for it'.

It has since been revealed that Mr Albanese misappropriated lines from the 1995 Hollywood film The American President, the screenplay for which was written by the critically acclaimed writer Aaron Sorkin. There, Michael Douglas, in the role of the President, criticised his political opponent by stating:

'We have serious problems to solve, and we need serious people to solve them. And whatever your particular problem is, I promise you, Bob Rumson is not the least bit interested in solving it. He is interested in two things and two things only: making you afraid of it and telling you who's to blame for it'.

As any sentient reader can see, Mr Albanese's words are very similar to those written by Mr Sorkin. After hours of silence from his office after the speech, Mr Albanese seemed to try to make light of the matter on Twitter by tweeting 'D'oh! Stuff up' (for the record, that comes from another great American, Homer Simpson). An embarrassed Mr Albanese later took responsibility for the gaffe, but is reported in The Australian newspaper to have said that the lines were a just small part of a 13-page speech: 'It was unfortunate -- but is it a big deal?'.

Um, well .. yes?

The script for The American President would be protected as a dramatic work under section 10 of the Copyright Act 1968 (Cth). Under sections 31 and 36, copyright is infringed by reproducing the whole or a substantial part of a copyright work in a material form. 'Substantial part' in this instance is a matter of quality not quantity. As English readers will be aware, this is the same as the position under the Copyright, Designs and Patents Act 1988.

When this Kat viewed the script for The American President online, it ran to approximately 130 pages. Accordingly, the use of a few lines (as memorable as they are performed by Mr Douglas) might be considered by some to be unlikely to constitute a substantial part of Mr Sorkin's script for the purposes of copyright infringement. However, that does not mean that Mr Albanese is off the hook.

Plagiarism is one of those concepts which is difficult to define, but people claim to know it when they see it. As a useful starting point, the Oxford English Dictionary defines plagiarism as 'the wrongful appropriation or purloining and publication as one's own, of the ideas, or the expression of the ideas … of another'. Plagiarism is broader than the test for copyright infringement and arguably covers Mr Albanese's actions in this instance. That he realised that he should have acknowledged the origin of The American President quote is evident in his later acknowledgement of 'd'oh!' from Homer Simpson.

The IPKat observes that Mr Albanese is approaching the issue of copyright/plagiarism from the wrong perspective. Mr Albanese stated words to the effect that a few problematic lines in a 13 page speech was not a big deal. First, as readers will know, the correct question to ask in respect of copyright was whether the problematic lines were a substantial part of the original work of Mr Sorkin, not whether they formed a substantial part of Mr Albanese's subsequent speech. Secondly, in respect of plagiarism, what mattered was the misappropriation of the ideas or expression of another etc in the first place, irrespective of the role those ideas or expression etc played in the subsquent text.

Merpel, in the words from another great play by Mr Sorkin (A Few Good Men), cheekily wonders if Mr Albanese 'can't handle the truth' ...

Cutting the red tape: can we do better?

noreply@blogger.com (Jeremy) — Thu, 26 Jan 2012 23:18:00 +0000

Even red tape
has its uses ...

The United Kingdom's Department for Business, Innovation and Skills (BIS) is, by definition, part of the civil service -- and it is the civil service, not just in the UK but in practically every industrial country, which is blamed for generating red tape: unnecessary and/or excessive administrative formalities that consume the time, money and patience of people that have to deal with them.

Today BIS issued a media release which indicates that the government recognises that the time has come to remove, or at least reduce, this red tape. It reads as follows:

"Companies of all shapes and sizes have today been asked for their views on how to tackle unnecessary bureaucracy in company and commercial law.

For the next three weeks, the latest phase of the Red Tape Challenge will focus on more than 120 company law regulations, guidance and enforcement processes that businesses deal with on a daily basis. The campaign asks for a variety of suggestions about how regulations can be improved, simplified or abolished, whilst maintaining a company law framework that gives companies the flexibility to compete and develop effectively.

Examples of areas open for comment include:

Internal workings of companies and partnerships: Rules on shares and share capital, requirement to hold information at business premises and rules on meetings and resolutions.

Accounts and returns: The content, form and auditing requirements of financial accounts and other reports.

Business names: The rules covering company names. [This is a subject that has some connection to intellectual property: the UK's Intellectual Property Office hosts the Company Names Tribunal, here]

Disclosure of company information: The regulations covering the information companies must supply to the official register.

...

The results of the Red Tape Challenge for company and commercial law will be published later this year".

The IPKat is pleased that this initiative is taking place, but wonders at the same time whether there aren't still some improvements that remain to be made in the forms and formalities relating to (i) registration of IP rights and dealing with matters arising from them and (ii) IP litigation itself. He invites readers, regardless of their countries, to submit their comments and suggestions. Merpel says, don't forget to send your comment in triplicate, typed on one side of the computer screen only, to the IPKat here, with the subject line "Cut the Red Tape".

Congress 1, Public 0, Part 2: The Dissent in Golan v. Holder

noreply@blogger.com (Tara Aaron) — Thu, 26 Jan 2012 19:27:00 +0000

On Tuesday, this Kat discussed the majority’s holding in the U.S. Supreme Court case in Golan v. Holder, in which it was decided that Congress has the power to pull works out of the public domain and put them back under copyright protection. While the holding is limited at present to foreign works which were not protected in the United States after accession to the Berne Convention for a limited number of reasons, the language of the Court was broad enough to certainly get copyright lawyers talking.

This Kat broke her promise to deliver to you a summary and discussion of the dissent yesterday, but makes good on it now.

The dissent was written by Justice Breyer and joined by Justice Alito, two justices who will virtually never be seen on the same side of an issue. IP is one of the few issues in the U.S. where opinions do not run along Democrat/Republican lines - we law geeks love that about it.

Justice Breyer’s dissent stems from one major point: In his view, the recapture of certain works from the public domain under the Uruguay Round Agreement Act does nothing to further the American utilitarian purpose of copyright law. The dissent actually contains a solid and concise history of the development of the Anglo-Saxon utilitarian view of copyright which has been adopted in America, as opposed to the natural rights view that prevails in continental Europe. The utilitarian view, it is explained “understands copyright’s grants of limited monopoly privileges to authors as private benefits that are conferred for a public reason-to elicit new creation.” (Dissent, Slip Op. at 2). The recapture of existing works, in the dissent’s view, does nothing to incentivize the creation of new work. The dissent discusses this point at length, but the majority made short shrift of the argument in its opinion, referencing in a footnote the amicus brief of the Motion Picture Association of America who observed that “income from existing works can finance the creation and publication of new works” (Slip Op. at 20, n. 25). (The majority went on to make an additional argument that Congress need not limit copyright legislation to that which promotes the creation of new works - it may also promote the dissemination of existing works. It is not clear to this Kat or a number of others why such an argument needed to be made, and it is striking many in the U.S. copyright world as, well, backwards. Dissemination is generally understood to occur on a wider scale when works are in the public domain, not when they are protected under copyright.)

Sergei Prokofiev, one of the better known composers,
some of whose works have been recaptured into copyright
in the U.S. under Section 514.

A substantial portion of the dissent's argument arises from the basic premise that Section 514 does nothing to further the cause of promoting new works. But it also highlights the substantial administrative costs to those who previously used or wished to use the works in questions. (The named plaintiff in the case, Lawrence Golan, discussed these costs in an interview prior to the Court's decision). On the most obvious level, which works which used to be free are no longer free. But other costs exist - the works in question are foreign works created between 1923 and 1989, and many of them are “orphan works” whose owners can not be found, or at least not without great expense and difficulty. Moreover, because the recaptured works are limited to specific categories created by copyright statutes which are not easily known or understood by the average user (and even if they were known, could be difficult or impossible to apply to any particular work), the status of many works is now unknown, effectively removing them from public use altogether. The dissent is forced to admit that copyright necessarily imposes costs on the public, but points to the “special harm” imposed because of the “foreign location of restored works” and “technical requirements . . .to establish where a work has had its copyright restored by the statute.” (Dissent Slip Op. at 14). These harms, according to the dissent, require the Court to “scrutinize with some care” (presumably referring to the intermediate scrutiny standard applied to cases that restrict free speech, but on a content-neutral basis). The majority, of course, held that works in the public domain are not in a “category of constitutional significance,” and that First Amendment free speech concerns are not in play. Furthermore, the majority came far closer to telling Congress it will bury its head in the sand when it comes to that body’s legislation on copyright issues, than to giving it any kind of constitutional scrutiny.

The small orchestras, symphonies, museums, and schools affected by Section 514 have been affected by it since 1996, so it remains to be seen what new immediate effects this decision may have on users of foreign works created between 1923 and 1988. But regardless, the decision will be a topic of discussion for some time to come.

'Mein Kampf' copyright dispute - "foggy" news

noreply@blogger.com (Birgit Clark) — Thu, 26 Jan 2012 13:29:00 +0000

The next chapter in the "Mein Kampf" copyright dispute between a British publisher and the Bavarian government (see the earlier IPKat post here):

German news media websites report (also here, here) that the Regional Court Munich on 25 January 2012 blocked the publication of a magazine containing annotated excerpts of Hitler's book "Mein Kampf". The Bavarian Finance Ministry, who owns the copyright in the book, had obtained a preliminary injunction (case reference: 7 O 1533/12) against this planned publication. The publisher, Mr McGee, had expected such a decision and thus decided to completely blur Hitler's original text in his magazine before sending it to the newsstands: basically "Hitler in the fog" (Hitler im Nebel) as a commentator writing for German news site n-tv.de observed. Interested readers can now only read the foreword by a historian and the annotated text but not Hitler's text, which has been blurred to such an extent that Hitler's text is completely illegible.

It appears - the news reports are a bit confusing - that Mr McGee believes that the injunction only prevents the sale of the magazine at newsagents so that he may still be able offer the "unblurred" magazine by mail order. This Kat could not verify whether this is indeed true but would be surprised if there was such a loophole. Bavarian Finance Minister Markus Söder, in the meantime was reportedly pleased with the decision. Mr McGee was disappointed since he believes that the broader public has a right to read Hitler's text which would help to demystify the book to be able understand the full horror of his ideas.

To be continued.... I have no doubt.

Should the duration of pharmaceutical patents be extended?

noreply@blogger.com (Catherine Lee) — Wed, 25 Jan 2012 17:57:00 +0000

Some Kats never grow up.
Merpel will do anything for
the strawberry flavoured one ...

This Kat was intrigued about a debate this week in the Wall Street Journal concerning the duration of protection for pharmaceutical patents: "Should Patents on Pharmaceuticals Be Extended to Encourage Innovation?" At its simplest, the WSJ explained the issue as follows:

'The drug makers say those profits fund the research that produces breakthrough treatments. They warn that with patents expiring on several big-money drugs, their ability to develop new drugs will be severely hampered. Longer-lasting patents, they say, would protect the profits that they need to keep innovative products moving through the pipeline.

Critics question that assumption. There's no proof, they say, of a link between patent life and innovation. In their view, drug companies focus on developing the most marketable drugs instead of the most urgently needed medications. So extending patents would serve mainly to boost drug companies' profits, not to encourage the innovation needed to address the world's unmet medical needs'.

For pharmaceutical patent extension

Writing in favour of an increase in patent protection was Dr Josh Bloom (right), director of Chemical and Pharmaceutical Sciences athet American Council on Science. He describes the 'problem' as follows:

'A confluence of events in recent years has made drug discovery more difficult, expensive and time consuming. Most important, it has become less profitable, largely because longer development times mean companies have less time left under patents to exclusively market their discoveries. Now, the industry faces a financial crisis because of the recent or imminent expiration of the patents on many of its most profitable drugs'.

In the course of his argument, Dr Bloom provides some striking statistics (or 'Ugly Numbers' as he calls them). For instance, bringing one new drug to market takes roughly 14 years and at a cost of roughly US $1.3 billion (£835 million or so). For every medicine which makes it on to the market, more than 50 research programmes fail. Further, owing to increased development times, pharmaceutical companies usually only have 11 years of market exclusivity for their medicines. Dr Bloom concedes that 'of course longer patents would mean that important drugs would remain relatively expensive for a longer time'. However, this is quickly followed by the (expected) ominous warning: 'but the expense of new drugs is preferable to not having them at all'. Taking a compromise positoin, Dr Bloom concludes:

'... a well-planned extension of patent protection, especially for innovative drugs [as opposed to the 'so-called line extensions-where companies simply tweak existing patents enough to earn a new patent'] is both reasonable and necessary to keep what is left of the American pharmaceutical industry healthy enough to continue its crucial work'.

Against pharmaceutical patent extension

Writing against an increase in patent protection was Dr Els Torreele (right), director of the Access to Essential Medicines Initiative of the Open Society Foundation's Public Health Program. For Dr Torreele, the 'problem' is that:

'... drug companies are more focused on developing the drugs with the greatest market potential than they are on developing truly innovative treatments that address critical health needs. And the patent system encourages that approach. The previously stringent criteria ensuring that patents applied only to real innovations have gradually been eased. Nowadays, companies can secure a 20-year monopoly by either making minor changes to an existing drug or inventing a totally new drug—so why take the risk of failure associated with the latter?'

In response to the suggestion that the patent system could be modified so that 'innovative drugs' received longer protection, Dr Torreele stated that this:

'perpetuates the fallacy of a link between patents and therapeutic innovation—and that distracts us from thinking about alternative policy tools to promote real health innovation. It's perfectly possible to achieve a major medical breakthrough with a product that isn't patented, while the fact of obtaining a patent doesn't say anything about a compound's actual medical value. Moreover, the patent office [ie the United States Patent and Trademark Office] isn't equipped to judge therapeutic benefit'.

Instead, Dr Torreele proposes a more stringent approach so that new medicines had to demonstrate 'a therapeutic benefit over existing treatments before giving market approval—a judgment the agency [the Food and Drug Administration in the United States] is perfectly capable of making, but somehow doesn't now'. She continues with the (expected) ominous warning that 'without such a prerequisite, companies will continue to focus on pharmaceuticals with the highest market potential, rather than innovating to address medical need'.

As an alternative to patent extension, Dr Torreele believes that the answer is:

'institut[ing] a regulatory environment that prioritizes health innovation instead of market opportunities, by making approval of new drugs contingent on therapeutic advances that address unmet health needs. In parallel, we should mobilize public and private resources to finance research and development independently of patents, so that we can stop relying on pharmaceutical sales as the primary source of funding for research'.

You've heard both sides -- so the IPKat and Merpel throw the topic open for discussion: should the duration of pharmaceutical patents be long or short, and should they be driven by patent protection or pushed by funding in a regulatory environment? Do tell us!

Wednesday whimsies

noreply@blogger.com (Jeremy) — Wed, 25 Jan 2012 12:46:00 +0000

Reminder! The European Scrutiny Committee of the British House of Commons, which has been following discussions on the proposal to set up a unified patent court in Europe, is holding two evidence sessions this afternoon. The first will explore the concerns of patent lawyers in the UK and Europe with the proposed court. The second will ask the Government to explain its policy on the proposed court, and to answer the concerns of the proposed courts’ many critics. The agenda for the two sessions looks like this (those giving evidence are named in brackets):

* This afternoon, 2.30pm (Tim Roberts, President, and Vicki Salmon, Chair, Litigation Committee, Chartered Institute of Patent Attorneys; Henry Carr QC, Chair, Intellectual Property Bar Association); 3.30pm (Dr Christian Gassauer-Fleissner, Chairman of European Patents Lawyers Association -- EPLAW)

* Next Wednesday 1 February, 2.30pm (Baroness Wilcox, Parliamentary Secretary, and officials, Department for Business, Innovation and Skills).

These sessions, which will be held in a Committee Room at the House of Commons, are open to the public. You should be able to watch them since they're being streamed by Parliament TV (which you can access here). The IPKat hopes that lots of people will be watching, though he has a slight misapprehension that, if more than three people try to watch it at the same time, the whole system will crash. Merpel adds: if the camera is panning the audience as well as the participants, viewers might get a glimpse of Annsley the AmeriKat, who is selflessly yielding any prospect of pleasure on this, her birthday afternoon, by attending this vitally serious session.

Recent publications. British Brands, the newsletter of the British Brands Group, has just released its most recent newsletter, which leads with a feature on the Dulux dog (left), a successful brand which is now in its 50th year. Maybe not a shaggy dog but definitely a bit hangdog these days is Welsh international soccer star and Manchester United stalwart Ryan Giggs (right), who graces the cover of the current issue of Informa's Intellectual Property Magazine: Giggsy's trial by social media. The cover story, by Lewis Silkin LLP's Jonathan Coad and Sadiq Tajbhai, compares social media treatment of named and shamed celebrities with the placing of miscreants in the village stocks, to have rotten cyber-fruit thrown at them.

Around the weblogs. Munich-based US and European patent attorney Robert Lelkes has just launched a brand new blog with what has a preumably limited life-span, the AIA Monitor (subtitled Tracking Implementation of the Leahy-Smith America Invents Act). The IPKat hopes that, once implemented, the AIA will provide enough food for thought to persuade Robert to keep it going, though. Soon to be published in JIPLP itself but now available to all on the jiplp weblog is Amanda Scarmaglia's analysis of the split decision in Australia concerning Bodum's right to monopolise a particular manifestation of a coffee plunger.

Strange advertisements. Readers of this morning's Cat the Kat post, "The Wheels on the Birss ..." may have followed the link to "The Wheels on the Bus", here. The link led to a performance by the GiggleBellies (right) of the popular children's song of that name, accompanied by an on-the-bus cartoon sequence. This Kat is wondering if something went wrong with Google's fabled targeted advertising software, since the song sequence was accompanied by advertisements for (i) a dating agency, (ii) assistance in giving up smoking and (iii) an MSc in Marketing. Can any reader explain?

Are you a UK-based IP practitioner who is interested in salaries? If so, you may enjoy completing a survey which Fellows & Associates is conducting and which has already received responses from more than 100 of your professional colleagues and/or competitors. SOLO IP plugged it yesterday here, where you will find a link to the whole caboodle. And while on the subject of jobs, this Kat has recently received a call from BraveNewTalent, which appears to be a sort of social-networking find-yourself-a-job and/or recruitment community; he understands that this embraces a Solicitors Skills community. If any readers of this weblog have experience of BraveNewTalent that they wish to share, the Kat looks forward to hearing from them.

Some live, unexploded haggis

On 7 February LES Scotland is delighted to welcome Mary-Ellen Field and Paul Carlyle as a guest speakers at the LES Scotland Burns Supper 2012. Technically Burns Night is celebrated on 25 January but it seems that our canny IP cousins from the North have applied for and been granted a 14-day extension. The venue is the enchanting Barceló Hotel, Edinburgh, which the Bawdy Bard would surely have immortalised in verse had he lived another 216 years. Star attractions, apart from the haggis, are the outspoken and well-shod Leveson Inquiry survivor Mary-Ellen Field and Miss Paul Carlyle's Presentation on Image Rights [Merpel queries: shouldn't that read "Don't Miss ..."?]. Registration details here. If you like bagpipes click here. If you don't, click here.

Civil service training is particularly rigorous
for those engaged in IP policy. But the IPKat
is still uncertain: is the Hooper the person who
holds the hoop or the soul who jumps through it?

Promotion, palace coup, digital exchange: renewed call for evidence. If you tweet "Esther Bernaldo de Quiros, Policy Adviser and Project Support, Digital Copyright Exchange Feasibility Study Secretariat", you will have used 119 of your 140 allotted characters. But never mind, Esther B de Q [not to be confused with B & Q, warns Merpel] is now a name for IP enthusiasts in the UK to conjure with. Having replaced Jo Sampson in the DCE secretariat [Is this a promotion? A palace coup? An Arsene Wenger substitution? A Digital Copyright Secretariat Exchange? Merpel demands to know] wants to introduce herself as the new contact for Richard Hooper, Ros Lynch and any DCE-related enquiries. More importantly , she wants to double check [how typical of civil servants to do everything twice!] that we have all received the call for Evidence that her office issued in December. All you need to know, if you want to submit evidence, can be gleaned by a quick visit here. If you're going to respond, Esther asks you to email your evidence with a completed response sheet to HooperSecretariat@ipo.gov.uk no later than Friday 10 February. If, like most ordinary mortals, you have no idea what the UK government deems to be "open and transparent evidence for policy", you will be relieved to discover that this mysterious concept is demystified here.

The Wheels on the Birss ...

noreply@blogger.com (Catherine Lee) — Wed, 25 Jan 2012 10:44:00 +0000

The IPKat patiently waits for the bus to keep still ...

This Kat, who has a keen interest in photography, also admits to purchasing the occasional souvenir of London for the Australian crew. She was therefore keen to read about the proceedings in Temple Island Collections Ltd v New English Teas [2012] EWPCC 1 (12 January 2012) before Judge Birss QC in the Patents County Court for England and Wales (sometimes referred to on this blog as the Merpel Court) which combined both of these interests [Merpel, a Londoner by birth, finds it difficult to use words 'souvenir of London' without thinking instantly of the classic Procol Harum song of the same name -- lyrics here, YouTube here -- something that no-one would wish to purchase, especially for the folk back home!].

The Parties

Temple Island Collections (TIC), which produces souvenirs of London, claimed to be the owner of copyright which subsisted in a black and white photograph of a red bus travelling across Westminster Bridge (left). Judge Birss described (at [1]) the image as 'largely in black and white, with the Houses of Parliament and the bridge shown in grey. The sky is white, with no clouds or anything else visible. A bright red London Routemaster bus stands out on the bridge' (Image 1). Image 1 was created by Mr Fielder after manipulating a photo he took with Photoshop software and was first published in February 2006.

New English Teas (NET), as its name suggests, produces tea. It wished to use an image which Judge Birss described (at [2]) as containing 'these iconic London landmarks and with the same general form: grey scale Houses of Parliament and a red bus on the bridge' (Image 2). Image 2 (right) was created by Mr Houghton and Sphere Design after the combination and manipulation of four photographs taken by Mr Hougton.

Significantly, this was not the first time that the parties had been in dispute over NET's alleged infringement of Image 1. Prior to the proceedings in question, TIC had alleged that NET had infringed copyright in Image 1 by the use of the so called 'First Allegedly Infringing Work'. These proceedings settled settled on the basis that NET agreed to withdraw the 'First Allegedly Infringing Work'.

In the present proceedings, TIC claimed (at [9]) that Image 2 infringed its copyright in Image 1 by reproducing a substantial part of Image 1. NET responded (at [10]) that TIC 'cannot use use copyright law in effect to give them a monopoly in a black and white image of the Houses of Parliament with a red bus in it'. Instead, NET contended (at [9]) that 'the key consideration is the assessment of the relevant skill and labour which went into the expression of the copyright work and whether that skill and labour has been reproduced in the alleged infringement'.

Copyright: Photographs and originality

At trial it was common ground between the parties that the impact of European Union law meant that the judgment of the Court of Justice in Infopaq International A/S case v Danske Dagblades Forening (C-5/08 [2010] FSR 20) was such that copyright may subsist in a photograph if it is the author's own 'intellectual creation'. Judge Birss considered the scope of photographic copyright by reference to three aspects which could be considered 'original':

'(i) Residing in specialities of angle of shot, light and shade, exposure and effects achieved with filters, developing techniques and so on;
(ii) Residing in the creation of the scene to be photographed;
(iii) Deriving from being in the right place at the right time'.

He held (at [23]) that there was 'clearly room for originality' in aspect (i). He further held (at [27]) that the 'composition of a photography is capable of being a source of originality' as in aspects (ii) and (iii).

After analysing a number of other similar works depicting a red Routemaster, Westminster Bridge, Big Ben and the Houses of Parliament submitted by NET, Judge Birss was of the opinion (at [49]) that:

'(i) The Houses of Parliament, Big Ben and so on are iconic images of London. So too is the Routemaster bus.
(ii) The idea of putting such iconic images together is a common one. That includes in particular the idea of an image of Big Ben and the Houses of Parliament with a London bus on Westminster bridge (or the road nearby)...
(iii) The technique of highlighting an iconic object like a bus against a black and white image is not unique to Mr Fielder ...
(iv) Whether anyone had ever produced a black and white image of Big Ben and the Houses of Parliament with a red bus in it before Mr Fielder is not clear.'

Judge Birss found (at [51]) that Image 1 was original. He further explained that it is the result of Mr Fielder's 'own intellectual creation both in terms of his choices relating to the basic photograph itself: the precise motif, angle of shot, light and shade, illumination, and exposure and also in terms of his work after the photograph was taken to manipulate the image to satisfy his own visual aesthetic sense. The fact that it is a picture combining some iconic symbols of London does not mean the work is not an original work in which copyright subsists'.

For Judge Birss, the particular elements worthy of attention in the picture were (at [52]):

'(i) Its composition: not just Big Ben but a substantial

frontage of the Houses of Parliament and the arches of Westminster Bridge. The bus is on the central left side near a lamppost. It is framed by building behind it. People can be seen on the bridge and some are in front of the bus, but they are not prominent. Portcullis House is visible as well as the river itself.
(ii) The visual contrasts: one between the bright red bus and the monochrome background, and the other between the blank white sky and the rest of the photograph.

Infringement

Having established that Image 1 was capable of copyright infringement, under sections 16 and 17 of the Copyright Designs and Patents Act, that copyright is infringed by reproducing the whole or a substantial part of a work in a material form. 'Substantial part' in this instance is a matter of quality not quantity. According to the House of Lords decision in Designer Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416, Judge Birss had to decide: (a) whether there had been copying; (b) if yes to (a), which features had been copied; and (c) if yes to (a), whether the copying in (b) represents a substantial part of the original work.

Judge Birss also noted (at [34]) that 'visual significance must also be relevant to infringement and to the question of whether a substantial part of an artistic work has been taken. ... What is visually significant in an artistic work is not the skill and labour (or intellectual creative effort) which led up to the work, it is the product of that activity. The fact that the artist may have used commonplace techniques to produce his work is not the issue.'

Had Image 1 been copied?

Judge Birss found (at [55]) that Image 1 had been copied by Mr Houghton. Given the 'obvious similarities' between the two images, for Judge Birss, the onus fell to NET to argue that there had not been any copying. NET was unable to do so for two reasons. First, Mr Houghton had seen Image 1 (as demonstated by the earlier proceedings). Second, Mr Houghton did not suggest that he had seen any of the other similar works referred to in the evidence before seeing Mr Fielder's Image 1.

Judge Birss emphasised (at [56]) that any differences between Image 1 and Image 2 do not 'negative copying ... [but had] a bearing on whether a substantial part had been taken'. On the issue of the other similar works, Judge Birss went as far as to infer (at [57]) that Mr Houghton sought this material out after he had decided to produce an image similar to Image 1 and accordingly rejected the submission that the other similar works acted as a 'relevant independant source'.

What features had been copied?

Judge Birss addressed (at[58]) features of composition and visual contrast. In terms of composition:

'i) Elements of the composition of the claimant's work which have not been taken are the prominent arches of the bridge and the river, the steps in the foreground and the prominent lamppost. The angle to the vertical is somewhat different since the road can be seen with the bus sitting on it in the defendants' image whereas from the angle of the claimant's picture a balustrade obscures the road. The angle presented by the facade of the Houses of Parliament is different: in the defendants' image the perspective of the facade falls away more sharply whereas in the claimant's image there is much less perspective. The bus is on the central right side of the image, touching Big Ben, it is not left of centre as in the claimant's picture. The defendants' bus is bigger and presents a slightly different angle to the viewer. There are no people in front of the defendants' bus.

ii) Although the images undoubtedly differ in their composition, elements of the overall composition of the claimant's image have been reproduced. The bus is a Routemaster, driving from right to left with Big Ben on the right of the bus. The riverside facade of the Houses of Parliament is part of the image. The bus is on Westminster Bridge (albeit in a different place) in both images. This is obvious in the claimant's image and can be seen from the presence of the balustrade on the left in the defendants' image. There are some people visible but they are small (and in different places). There is no other obvious traffic. The edge of Portcullis house is visible on the right. Running from top to bottom, there is a substantial amount of sky in the picture (albeit more in the claimant's) and the top of the bus is roughly the same height as the facade of the Houses of Parliament'.

In terms of visual contrast:

'i) The element of bright red bus against a black and white background has been reproduced.
ii) The element of the blank white sky, which creates a strong sky line, has been reproduced. A small point arose that the image produced by Sphere actually has no sky at all, so that it takes on the background of the box it is placed on. Nothing turns on that since in use it is placed on a white (or very pale grey) tin'.

Were these copied features a substantial part of Image 1?

This was 'not an easy question', but Judge Birss found (at [63]) that Image 2 did reproduce a substantial part of Image 1 because they still include the key combination of 'visual contrast features with the basic composition of the scene itself'. Two factors influenced Judge Birss in arriving at this decision: the nature of Mr Fielder's image (at [66])(its appearance being the product of deliberate choices and deliberate manipulations) and the collection of other similar works relied upon by NET (at [67])(it counting against NET because 'the collection served to emphasise how different obstensibly independant expressions of the same idea actually look').

Conclusion

NET's Image 2 infringed TIC's image 1. Judgment (at [70]) was entered for TIC.

Comment

On the 1709 Blog, a certain Blogmeister commented that, if this decision is correct, then 'advice which I have given law students since I first taught copyright in the 1970s is no longer reliable, that the photographer who recreates the effect of another's photograph of a public scene or monument is now a copyright infringer, and that there may now be a notion of copyright in an idea, a lay-out or a scheme for such a photograph'.

This Kat admits that she was surprised by the decision. Although Judge Birss does concede it was a difficult to decide on the issue of 'substantial part', with respect his judgment does now seem to blur a fundamental aspect of copyright law, namely the idea/expression dichotomy.

The IPKat asks: was Judge Birss correct?

Merpel would like it known that any attempt to include a colourised version of her in a black and white photograph of a red bus travelling across Westminster Bridge with Big Ben and the Houses of Parliament in the background will need to be approved through official channels ...

The Wheels on the Bus here (this performance, by the GiggleBellies, has been watched by more than 16 million viewers. Lurid colour advisory)
The Wheels of Justice here

Is overlooking a fact an error of principle?

noreply@blogger.com (Norman) — Wed, 25 Jan 2012 09:00:00 +0000

MMI Research Ltd v Cellxion Ltd [2012] EWCA Civ 7 is a rare appeal that turned entirely on the facts, and yet it is not necessary to understand the invention to understand the appeal, except to say that it is embodied in a machine.

There were two issues on appeal. The more straightforward, and in this Kat’s view, the more interesting point, was obviousness over an article referred to as “Fox.” Floyd J had held that the invention was not obvious over Fox. CellXion appealed on the basis that this finding was contrary to the evidence. In particular, as the Court of Appeal explained:

It was common ground that for an appeal on obviousness to succeed, it has to be shown that the Judge made an error of principle, see Biogen v Medeva [1997] RPC 1 at p.45. Mr Wilson submitted that he had indeed done so. The error was that the Judge had overlooked the fact that the experts on both sides accepted that the way to get from Fox to the claim would have been obvious. The evidence was all one way. There was no weighing of conflicting opinions to be done.

The Court of Appeal carefully reviewed the evidence and ultimately accepted this argument. It therefore held the invention to be obvious, and CellXion’s appeal succeeded on that basis.

This Kat does not see any error of principle here. The Court of Appeal simply held that Floyd J at trial had overlooked a key concession made by the expert witness for MMI. But Biogen never said that an appeal on obviousness can succeed only if the trial judge has made an error of principle. It said that the trial judge’s decision on obviousness “should be treated with appropriate respect,” and “[w]here the application of a legal standard such as negligence or obviousness involves no question of principle but is simply a matter of degree, an appellate court should be very cautious in differing from the judge's evaluation.” The standard of review applied by the Court of Appeal is consistent with this statement of the law, even if there was no point of principle.

What you may find in a brown envelope

MMI v Cellxion shows that it is not strictly necessary to find a point of principle in order to appeal on the question of obviousness. This Kat is firmly of the view that this standard of review is appropriate. An appellate court should be able to reverse a trial judge on the facts where it feels the he has gone wrong, because the alternative, which this Kat has seen all too often in Canadian law, is that the appellate court will make up some point of principle simply in order to reverse a judgment that was wrong on the facts. That point of principle is not always sound, but it can go on to trouble that law for years or even decades. If an appellate court is really convinced that the trial judge has gone wrong, it will reverse; better that this be done on the facts than by distorting the law.

The other issue on appeal was that of novelty over supply of the machines and manuals before the priority date. The appeal turned on a procedural point. At the original trial [2009] EWHC 418 (Pat) Floyd J held that the GA-900 machines had been supplied subject to an obligation of confidence, and in any event, inspection of the machines would not reveal how they worked. The anticipation argument failed accordingly. The defendant CellXion claimed to have been supplied, after the original judgment, by an anonymous source with a brown envelope containing a manual in English with an accompanying disk, and a manual in Italian. CellXion applied to the Court of Appeal for permission to appeal and for permission to adduce further evidence. The Court of Appeal held that there was no real doubt that either of the manuals would anticipate the invention, if they had been disclosed to someone who was free to use the information. The Court of Appeal consequently decided ([2009] EWCA Civ 1120) to admit the new evidence and to remit the matter to the Patents Court; but it explicitly instructed that “The issue of whether a user can work out what [] the GA 900 machine does from the machine itself is not to be re-opened.”.

The dubious provenance of the two manuals proved to be too much of a hurdle for CellXion to overcome, and in the judgment on the remitted issues [2011] EWHC 426 (Pat), Floyd J was not persuaded that the manuals had been supplied to anyone before the priority date. On appeal CellXion argued that even if the manuals were not provided before the priority date, the manuals were evidence going to show that a user of the GA-900 machine would have been able to figure from inspection of the machine - not from the manuals - how the GA-900 worked. In other words, the argument was that the manuals showed that Floyd J was wrong in his original conclusion that sale of the machines would not constitute enabling disclosure. The Court of Appeal dismissed this ground of appeal with the observation that the order remitting the matter to Floyd J expressly prohibited a reopening of this issue

Gambling on an appeal? Seeing Red over 32

noreply@blogger.com (Jeremy) — Tue, 24 Jan 2012 23:38:00 +0000

The IPKat prefers the real thing to the online version

If you like gambling and 32 is your lucky number, or if you like betting on whether the decision of a non-specialist IP judge in a complex piece of litigation has a chance of surviving a vigorous appeal, here's a judgment that is sure to excite you: it comes from the Court of Appeal for England and Wales and it's WHG (International) Ltd., WHG Trading Ltd and William Hill Plc v 32Red Plc [2012] EWCA Civ 19 -- a whopper of a trade mark decision.

Gibraltar-based 32Red ran the 32Red online casino and secured registration of the word 32RED as a Community trade mark in May 2004. In January 2006 32Red secured registration of a figurative Community trade mark in the form of a logo showing the number 32 and the word Red in a distinctive red cursive script on a white background, with a broken red circle around the 32. Both of these registrations were for a range of goods and services in Classes 9, 16 and 41 (gaming and gambling software, betting and bookmaking services, casino services etc). 32Red also purchased "32" as a keyword for Google AdWord searches, with the consequence that any person using “32” as a search term would be presented with an advertisement for 32RED in the sponsored search results.

In December 2005 a company registered in Antigua registered the domain name '32vegas.com' and in 2006 opened an online casino under the name '32Vegas'. Initially the 32Vegas casino seemed to be a small-scale operation, posing only a limited threat to 32Red's business on account of its inability to operate in the United Kingdom. However, in October 2008 the William Hill Group (‘WHG’) entered into a joint venture which involved the purchase of an established online gaming business, the assets of which included the unregistered mark 32Vegas. As part of the joint venture arrangements, two companies within the WHG --WHG (International) Ltd and WHG Trading Ltd (the first and second defendants) -- were granted a licence to use the 32Vegas.com domain name together with any associated marks, whether registered or unregistered. As a result of the establishment of this joint venture, the 32Vegas online casino, formed part of WHG and was free to compete with 32Red on equal terms in its home market.

In January 2009, less than three weeks after the defendants began trading, 32Red sent a cease and desist letter to the defendants, who declined to back down. 32Red subsequently issued proceedings. By the time of issue of the proceedings 32Red had additionally obtained the registration as a trade mark in the United Kingdom of the number ‘32’, in respect of casino and betting services in Class 41.

At trial, 32Red alleged that, on account of the similarity of the respective marks and the high degree of similarity or identical nature of the services of the defendants to the goods and services covered by its registered trade mark, there existed a likelihood of confusion under Article 9(1)(b) of Council Regulation 207/2009 on the Community trade mark and section 10(2) of the Trade Marks Act 1994. It also alleged that the use by the defendants of their domain name and trade name constituted the taking of advantage, without due cause, of the distinctive character or repute of its trade marks under Article 9(1)(c) of Council Regulation 207/2009 on the Community trade mark and section 10(3) of the Trade Marks Act 1994.

The defendants denied liability for trade mark infringement under either head of claim. They maintained that 32Red had no reputation in any of the marks and averred that the 32vegas.com website had ceased to operate in August 2009, when it was replaced by a website bearing the name 21nova.com. This being so, the time during which the defendants had actively operated an online casino under the 32Vegas brand ran for a period of barely seven months. In their counterclaim, the defendants sought a declaration that both of the Community marks and the United Kingdom mark had been invalidly registered on the basis that they were devoid of distinctive character under Article 7(1)(b), descriptive under Article 7(1)(c) or customarily used in the trade under Article 7(1)(d) of Regulation 207/2009. The defendants also maintained that 32Red's United Kingdom mark should be revoked on the basis that its AdWord campaign would confuse and mislead the public as to the meaning and significance of “32”.

Before the court in these proceedings the judge had to consider, inter alia, the following issues: (i) were 32Red's three trade marks actually used? (ii) if they were use, did they enjoy a reputation? (iii) did the use by the defendants of the Vegas signs infringe 32Red's two Community marks under Article 9(1)(b) of the Regulation? (iv) did the use by the defendants of the Vegas signs infringe the two Community marks under Article 9(1)(c) of the Regulation? (v) were 32Red's Community marks and United Kingdom trade marks valid;? (vi) had the defendants had infringed the UK mark?

Mr Justice Henderson -- who is not a regular member of the Patents Court judicial squad -- allowed 32Red's claims in part and dismissed the counterclaims. In his view:

With regard to proof of likelihood of confusion, the test laid down for infringement under Article 9(1)(b) did not require there to be evidence of actual confusion; if such evidence was available, it was likely to be of a confirmatory nature rather than an essential ingredient of the value judgment which the court had to draw from all the circumstances.
When considering whether the similarity between the respective marks was likely to give rise to confusion on the part of the public, that question had to be looked at in this case through the eyes of the average consumer of online gaming services. On this basis, even though online gaming was essentially a recreational one for many consumers, and not all customers played for real money, allowance had to be made for the fact that the average online gambler would rarely have had the opportunity to make a direct comparison between the parties’ respective marks and would thus have had to rely on the imperfect picture of them which he retained in his mind. Consumers of online gambling services would also be faced with an online gambling market which was crowded and volatile, in which a large number of brands competed for their attention and where, in general, there were very low levels of customer loyalty and retention.
It would be natural for consumers to draw the conclusion be that the respective casinos were under common ownership or control. Stables of thematically-linked online casinos were familiar within the market and there would have been nothing surprising in a family of "32" casinos. In contrast, it would have been surprising, given the highly specific nature of the number 32 and its lack of intrinsic gambling association, for two unconnected casino operators to have hit on such similar names independently.
The goods and services covered by the defendants’ marks were actually or virtually identical to those covered by 32Red's Community trade marks and, while a lesser degree of similarity between the respective marks might establish a likelihood of confusion in such circumstances, the defendant’s marks were undeniably similar to the claimant’s Community trade marks. On the evidence in this case the combination of 32Red's marketing activities had given its business a significant visual presence in at least the United Kingdom online gambling market. In the circumstances, there was a likelihood of confusion on the part of the average online gambler in 2009 between the Vegas signs and the Community marks since the overall impression created by the two sets of signs would have been very similar. Accordingly the infringement claim under Article 9(1)(b) succeeded in relation to each of the Community marks, in relation to all of the Vegas signs.
32Red had succeeded in building up a reputation as one of the UK’s leading providers of high quality online gaming and it had always been an important part of the claimant's strategy both to develop and to maintain such a reputation.
Where infringement had been proved under Article 9(1)(b), a secondary claim based on Article 9(1)(c) became comparatively unimportant because a finding of infringement under Article 9(1)(c) added nothing to a successful claim under Article 9(1)(b). Since the similarity between the parties’ respective marks was such as to give rise to a likelihood of confusion on the part of the relevant public, 32Red 's case of infringement under Article 9(1)(b) would be made out and the company would be entitled to the relief claimed and there was nothing to be gained by seeking to satisfy the much more specific and stringent requirements of Article 9(1)(c).
Notwithstanding this, the Court of Justice of the European Union had held that Article 9(1)(c) also applies in situations in which the goods or services are identical or similar to those for which the mark was registered, with the result that overlapping claims are naturally advanced in order to cover all eventualities, and the cost and complexity of litigation, in what is already a complex and difficult area, has been correspondingly increased as a result.
In this case the requirements of similarity between the marks and the existence of a link between the marks in the mind of the relevant public had been satisfied, and 32Red’s Community marks had an established reputation. This being so, the introduction and use of the defendant’s marks was detrimental to both the distinctive character and repute of 32Red’s Community trade marks. Accordingly the claim under Article 9(1)(c) succeeded.
The challenge to the validity of 32Red's Community marks under Articles 7(1)(b) and 7(1)(c) of the Regulation could not succeed. While “32” could be characterised as the result of the roll of a roulette ball, a mark describing a roulette result did not designate a characteristic of roulette, let alone a characteristic of the whole range of goods and services provided by an online casino, and could not be described as being devoid of distinctive character.
Since there was no evidence of customary usage in 2002 of either the number "32" or the word "red" to designate goods or services covered by the registration of 32Red’s marks, the registration could not be said to be invalid under Article 7(1)(d) of Regulation 207/2009.
It could not be argued that 32Red’s AdWords campaign would cause confusion and mislead the public. Accordingly the 32Red marks were not vulnerable to revocation under Article 51(1)(c) of Regulation 207/2009.
32Red’s UK mark was valid. There was no reason in principle why a two-digit number could not be sufficiently distinctive to act as a badge of origin of a specific category of goods or services.
There was no evidence of bad faith on 32Red's part in registering the mark. Even though that registration had been made with a view to strengthening its position in this litigation, and with a view to obtaining a monopoly for related services under the "32" mark, neither of those objectives necessarily indicated bad faith.
The defendants had not infringed 32Red's UK trade mark since 32Red had not, at the relevant period, made any, or any significant, use of the 32 mark separately from the 32Red. On this basis it had not yet acquired any separate reputation in the 32 mark. The WHG companies appealed against this pretty comprehensive thrashing, while 32Red cross-appealed. The appeal was

"... a full-scale, wide-ranging attack on the Judge's analysis and conclusions on virtually every aspect of his judgment. It is said that the Judge has not only made errors of principle, but, even where he has correctly stated the law, he has misapplied it to the facts, and even some of his findings of fact were perverse" [para.49].

It's tempting to do this in a complex case where the judge is not a regular IP judge but, to Henderson J's credit, the Court of Appeal (Lords Justice Toulson, Etherton and Kitchin) dismissed the appeal from top to bottom and, adding insult to WHG's injury, allowed 32Red's cross-appeal on the UK infringement point. On that point the Court of Appeal correctly noted, at para.98, that

"The Judge appears to have assumed that it was not legally possible for there to be an infringement of the 32 number mark under section 10(2) in the absence of separate reputation established by use. That was incorrect. Having found inherent confusion and infringement of the 32Red mark by use of 32Vegas, and that the number 32 was the dominant feature of the Community marks and 32Vegas, he had no proper basis for saying there was no infringement of the 32 number mark under section 10(2)".

Merpel was quite impressed by the precision with which the Court of Appeal was able to address and dispatch so many issues in a judgment of a mere 99 paragraphs.

What is the meaning of 32? Click here to find out.

Congress 1, Public 0 - the U.S. Supreme Court's Big Decision in Golan v. Holder

noreply@blogger.com (Tara) — Tue, 24 Jan 2012 22:47:00 +0000

The Public Domain in the United States just got smaller.

In this Kat’s opinion, SCOTUS (The Supreme Court of the United States) picked quite an interesting time to release its opinion in Golan v. Holder, (10-545, January 18, 2012), which upholds Congress's ability to recapture works previously in the public domain and put them back under copyright protection. Just as Congress was running away from the roar of the tech community with its tail and its SOPA and PIPA bills between its legs, SCOTUS gave Congress a great big boost in confidence in its own power to legislate copyright matters.

Many scholars more studied and intelligent than this Kat have summarized the case much better than this Kat could. You can find a good explanation here, but for sake of reference, this Kat will provide a brief one as well:

In 1989 the U.S. acceded to the Berne Convention to give protection to foreign works to the same extent protection was granted to U.S. residents. Initially, however, Congress chose not to enact Article 18 to extend protection to works that had fallen in the public domain in the U.S. for one of three reasons: “The United States did not protect works from the country of origin at the time of publication; the United States did not protect sound recordings fixed before 1972; or the author had not complied with certain U.S. statutory formalities,” including proper copyright notices and timely renewal. (Slip Op., 1). Certain Berne member countries were unhappy with this decision, according to the majority, but no mechanism was in place to resolve the dispute or to force compliance until the U.S. acceded to TRIPS in 1994. As a result of its obligations under TRIPS, Congress re-captured foreign works in the categories above from the public domain and gave them copyright protection to the end of the term to which they otherwise would have been entitled, under Section 514 of the Uruguay Rounds Agreement Act. (For a counterview on whether the recapture of all such works was in fact an obligation under TRIPS, and a strong opinion on the case in general, see Tyler Ochoa’s blog post here.)

The result was that an enormous body of work which had been previously available to orchestras and symphonies to use and arrange for free was suddenly no longer available for free (Congress did instill a grace period that made the change not so “sudden”). Before, “Prokofiev’s Peter and the Wolf could once be performed free of charge; after §514 the right to perform it must be obtained in the marketplace.” (Slip Op. 29)

The majority relied heavily on legislative history to countervail any argument that recapturing works in the public domain was a highly unusual move for Congress to take. (The dissent uses much of the same history to come to a different conclusion, of course).

The petitioners made a number of arguments that are much better described elsewhere, but some points in the case are worth mentioning again.

One of the arguments made by the petitioners was that the law violated their First Amendment right of free speech by taking away the right to perform these works. The majority held that the two “traditional contours” of copyright in the U.S. that protect First Amendment rights - fair use and the idea/expression dichotomy - are all the First Amendment protections that exist. Moreover, and perhaps unnecessarily overstated, the public domain is not, according to the majority, “a category of constitutional significance.” (Slip Op. 21, n. 26). Petitioners had argued that impingement of their “vested rights” in the works in the public domain deserved higher scrutiny - the majority turned the argument on its head, stating that the rights only vest “at the outset of copyright, in an author or rightholder.” (Slip Op. 28). Works do not “vest” anywhere at the end of the copyright term; instead they simply fall into the netherworld of public domain which exists, it seems, only in the absence of a statute.

Moreover, the majority seems to suggest that Congress may, if it sees fit, enact any number of statutes that may restrict (or for that matter expand) the public domain; the Court reiterates its statement in the Copyright Term Extension Act case of Eldred v. Ashcroft, 536 U.S. 186 (2003), that the Copyright Clause of the U.S. Constitution “empowers Congress to determine the intellectual property regimes that, overall, in that body’s judgment, will serve the ends of the Clause.” Id., at 222. We may find some comfort in the the Court’s consideration of what action it might take if Congress were to engage in such “legislative misbehavior” as “perpetual copyright,” but the deference to Congress’s authority under the Copyright Clause (and the general current belief, in light of SOPA and PIPA, that Congress may in fact be moving towards perpetual copyright) has caused some measure of alarm.

This Kat was, as you might have read, somewhat dismayed by the pitchfork raising that overtook Twitter last week in the fight against SOPA. But it can not be denied that the voice of the Users was louder than the Creators in that fight, and it had a big and dramatic effect. This might have been good practice. With the Supreme Court bowing so low to Congress’s authority, those who find themselves on the wrong end of the next copyright legislation to come out of Congress may well consider themselves the last and best line of defense against a bad or runaway law, and a Twitter rally may be the only way to stop it.

Tomorrow, we'll look at the dissent. This Kat personally thinks the dissent's arguments mostly don't stand up, but it certainly sheds some light on the real life consequences of the majority's holding.

When reporting "trumps" copyright: the sad case of Declan Hainey

noreply@blogger.com (Jeremy) — Tue, 24 Jan 2012 16:26:00 +0000

Declan Hainey

IP cases from Scotland are none too common and, when they do come, they require a good degree of guidance and indeed translation from someone proficient in Scottish law. Fortunately for the IPKat, guidance came in the form of a note from his friend Gill Grassie (Maclay Murray & Spens LLP) on a hot topic that pits copyight against some countervailing public interests: the decision of Lord Woolman, sitting in the Court of Session, in Petition by the British Broadcasting Corporation for Access to Crown Productions in the case of Her Majesty's Advocate v Kimberley Mary Hainey (which you can read in full here). As Gill explains:

"This recent decision of the Court of Session in Scotland, dealing with what was primarily a criminal/murder charge, is not the usual type of case in which one might expect to see issues of copyright being debated. The BBC applied for access to certain photographs of a little boy, muder victim Declan Hainey, which it wished to use in reports to be broadcast about the hearing in which criminal sentences had been imposed on the guilty party -- in this case Declan's mother. Initially the BBC had requested releases of photographs on several occasions from the Crown Office (the Scottish equivalent of the Crown Prosecution Service in England and Wales). When access was refused it applied to the Court of Session under a specific procedure and was again refused access. The terms of that application were revised and it was opposed at that stage by the convicted mother.

The photos concerned were used at the trial and had been taken by the victim's mother, who was the owner of the copyright in them. Trial judge Lord Woolman, noting this, referred to Section 45 of the Copyright Designs and Patents Act 1988:

(1) Copyright is not infringed by anything done for the purposes of parliamentary or judicial proceedings.
(2) Copyright is not infringed by anything done for the purposes of reporting such proceedings; but this shall not be construed as authorising the copying of a work which is itself a published report of the proceedings.
In the judge's view that provided an answer to any claim of copyright infringement which the owner of the copyright might raise here. The BBC only intended to use the photographs for the purposes of reporting the trial.

The BBC however also relied upon Section 171(c) of the same Act:

"Nothing in this Part affects any rule of law preventing or restricting the enforcement of copyright on grounds of public interest or otherwise."
In this context, having also considered the effect of Article 10 of the European Convention on Human Rights (the right to impart and receive information), he decided that, were it necessary for him to decide this point, the public interest in the proper and full reporting of this case was sufficient to “trump” any right of the copyright owner.

Additionally, an interesting analysis arose of the Crown Office’s opposition to allow access to the photographs on the grounds that it would infringe Declan's grandmother’s right to privacy and potentially that of the mother. A balancing exercise between Articles 8 and 10 of the Convention was duly carried out and the judge restricted access to one particular photograph of Declan with his grandmother. This restriction was imposed on the basis that there was no good justification for publishing that photograph. However, remaining photographs were, according to the judge, in a different category and there was no reason why they could not be broadcast or published to illustrate the tragedy associated with the death of the infant concerned. Access was accordingly granted".

This Kat, who is naturally saddened by the tragic circumstances that led to the application, thinks the court got this right, both in terms of the section 45 point and in his consideration, obiter, of the application of section 171. He does not envy the Crown Office its task, as a principally crime-facing body, of having to apply principles of civil law which may be outside its normal remit

The "deformation" of Joseph Beuys' live art performance

noreply@blogger.com (Birgit Clark) — Tue, 24 Jan 2012 00:25:00 +0000

In a press release of 30 December 2011, the Higher Regional Court Düsseldorf reported on a case concerning the copyright subsisting in photographs taken by a third party (a well-known photographer) of a live art performance of an artist. Sadly, the press release did not include the case reference. Update: case reference is I-20 U 171/10. Thanks go to the IPKat's knowledgeable friends Andreas Thielmann, Thorsten Lauterbach and Monika Bruss.

German copyright collection society Verwertungsgesellschaft Bild-Kunst wanted to prevent the re-display by the museum Stiftung Museum Schloss Moyland of photographs taken of the famous late German artist Joseph Beuys during a live art performance which itself was broadcast on German TV in 1964. By way of background: German copyright law protects live art performances as “artistic works”.

The exhibition in question - which had lasted until September 2009 - had displayed a recently unpublished series of black and white photographs taken by Manfred Tischer which showed Mr Beuys during his live art performance of Das Schweigen von Marcel Duchamp wird überbewertet, 1964 (in English: Marcel Duchamp's Silence is overrated, 1964) in the live television show "Die Drehscheibe" shown on German television in 1964.

The court of first instance, the Regional Court of Düsseldorf (Landgericht Düsseldorf) had ruled on 29 September 2010 (case reference: 12 O 255/09) that the museum may not exhibit the photographs as they were infringing Mr Beuys' (his estate's) copyright.

Presiding Judge Prof. Wilhelm Berneke of the Higher Regional Court of Düsseldorf now agreed with the lower court's decision and confirmed that the photographs of the performance were not a free adaption of Mr Beuys' copyright-protected live art performance an reworking (or more harshly translated a "deformation") of the original performance. Thus by exhibiting the photographs the museum without seeking his estates prior approval had infringed Mr Beuys’(his estate's) copyright in his art performance. While the photographs had adapted Mr Beuys' live art performance, this adaption had not been far enough removed from the original live art performance to amount to a free adaption which would not have required authorisation from the copyright holder.

The court explained that the photographs not only showed the specific arrangement of items but also the actual sequence of events. Furthermore, there was not enough evidence, the judge found, that Mr. Beuys had consented to the photographs when they were first taken in 1964. However, the court allowed a further appeal to the German Federal Supreme Court (Bundesgerichtshof) due to the importance of the legal questions raised.

This is an unusual case and it would be interesting to see it go all the way to the Bundesgerichtshof. How do you correctly balance an artist’s right (or that of his estate) of creatorship with the right to freedom of art/expression of the museum and indeed, if he was still alive, the creator of the performance photographs, Mr. Manfred Tischer (Articles 5 (1), (3) German Constitution/potentially Article 10 ECHR)? This Kat, who incidentally is a bit of fan of Mr Beuys' art, can't help but wondering whether Beuys' estate just wanted to be asked -- or maybe they did not like the photographs?

A great example of Mr Beuys' art is the installation 'The Pack' which used to be on display at the Tate Modern in London, please have a look here.

Katonomics 9: IP valuation

noreply@blogger.com (Jeremy) — Mon, 23 Jan 2012 17:48:00 +0000

In this, the third post in the second series of Katonomics, the IPKat weblog's resident and much-loved Katonomite, Dr Nicola Searle continues her introduction to economics for intellectual property enthusiasts, scholars, practitioners and policy-makers. This week Nicola tackles a subject that some IP experts view as a precise science and others see as a hybrid discipline that lies somewhere between guesswork and witchcraft. To find out what Nicola says, just read on:

"Valuation of IP

I have two favourite answers in economics: “it depends” and “diminishing marginal returns”. Both are useful phrases and can be applied to many situations. However, for this post, only one is relevant. So, how do you value IP? Answer: It depends.

The most common valuation techniques for IP are cost, income and market methods. Cost methods values IP as the costs incurred in the creation of the IP (typically R&D costs). Income methods value the IP at what it earns (or could earn), often in the context of discounted cash flow analysis. Market methods value the IP at what the market is willing to bear. This WIPO guide explains the methods well.

These methods are not unique to IP or to intangible assets. For example, the commercial real estate market uses similar methods. Under the cost method, a building is worth its replacement cost. The income approach entails a cash flow analysis of rental income and costs. A market analysis would look at sales of similar buildings. This analogy also highlights how the three different methods interact; for example, cheaper construction costs and lower rents will depress market sales. Ultimately, an asset is only worth what someone is willing to pay for it.

But, as I said, it depends. For some IP, the cost model may be inappropriate. What if the IP in question was developed through a flash of genius? Or if an upcoming PR disaster is going to damage a brand severely? The IP may be worth much more or less than its R&D cost.

Market valuation is tricky as there may not be comparable sales or available data on those sales.

The income methods are particularly appealing as they avoid some of the above problems associated with cost and market methods, and are unpinned by the well-established cash flow valuation analysis. However, they are not infallible, as they still require projections and assumptions about markets.

One innovative solution is to treat IP rights as probabilistic rights and apply real options analysis. Lemley and Shapiro put forth the idea that, instead of ironclad rights, IP should be treated as probabilistic rights. IP protection can be lost through a variety of means including invalidation, market obsolescence, damaged goodwill and loss of secrecy. A patent is not a right to exclude, but a right “to try to exclude.” Thus, an IP right represents a probability of having a right, rather than an absolute right.

Real options analysis captures the probabilistic nature of IP rights in its valuation. As noted by German economist Baecker, real options valuations incorporate the bundle of options associated with a patent including the option to commercialise and the option to litigate. For example, British economist Van Reenan and his American counterpart Bloom use real options analysis of patents to investigate how uncertainty affects productivity. They find that policy attempts to reduce uncertainty will increase productivity.

Real options have long been a strategic tool for the modelling of investment decisions. The theory behind real options comes from the finance world and incorporates the principles of cash flow analysis. However, as Greek economist Andrikopoulos describes, the statistical assumptions and restrictions of the model may not be in tune with the business reality. Given the recent performance of financial markets, readers will be forgiven for their scepticism. Nonetheless, real options analysis could address some of the shortcomings of other methods.

As a policy measure, the valuation of IP can have an impact on the use of IP. Consider the case of litigation of patent infringement. Scotchmer argues that there is circularity between valuations used in disputes and those in negotiations. A potential licensee chooses between licensing and infringing. If the valuation used in court is lower than a licence, the potential licensee may choose to infringe. At the same time, a licensor’s proposed royalty payments are limited by the values used in court. Thus, valuations in disputes affect bargaining positions in seemingly unrelated transactions.

Here we touch on the world of economics of crime, a discipline that has exciting tag lines such as “the socially optimal rate of murder”. Economist Becker put forth the idea that lawbreakers weigh the costs and benefits of breaking or obeying the law and find in favour of breaking the law. The same logic applies to the would-be patent infringer, industrial spy or counterfeiter. Assuming equal benefits, if the costs of not infringing outweigh the costs of infringing (adjusted for the likelihood of getting caught), then infringing is a logical decision. The value of the IP in question plays into this cost-benefit analysis.

At this point in the post, I’m heading into diminishing marginal rates of return. What is your preferred valuation method? Does the would-be patent infringer take potential damages payment into account?"

Monday miscellany

noreply@blogger.com (Jeremy) — Mon, 23 Jan 2012 15:16:00 +0000

There's nothing like a little
scrutiny to focus one's attention ...

The European Scrutiny Committee of the British House of Commons has been following discussions on the proposal to set up a unified patent court in Europe [as has the IPKat: see posts here, here and a multitude of earlier posts], and has reported its concerns and those of stakeholder associations to the House through its Reports on 9 November and 7 December 2011. The Committee will hold two evidence sessions. The first will explore the concerns of patent lawyers in the UK and Europe with the proposed court. The second will ask the Government to explain its policy on the proposed court, and to answer the concerns of the proposed courts’ many critics. The agenda for the two sessions looks like this (those giving evidence are named in brackets):

* Wednesday 25 January, 2.30pm (Tim Roberts, President, and Vicki Salmon, Chair, Litigation Committee, Chartered Institute of Patent Attorneys; Henry Carr QC, Chair, Intellectual Property Bar Association); 3.30pm (Dr Christian Gassauer-Fleissner, Chairman of European Patents Lawyers Association -- EPLAW)

* Wednesday 1 February, 2.30pm (Baroness Wilcox, Parliamentary Secretary, and officials, Department for Business, Innovation and Skills).

These sessions, which will be held in a Committee Room at the House of Commons, are open to the public. If you can't be bothered to go through the elaborate security rituals that are a prerequisite for entering the building, or doubt that you can restrain yourself from making unsolicited interventions, the preferable course is to enjoy the whole thing through the live streaming facility which you can access by clicking here.

Since the Scrutiny Committee has been on live
Parliamentary TV, it was found necessary to
introduce new ways of evaluating evidence ...

Who is actually on the Scrutiny Committee? The line-up is as follows: William Cash (Chairman), (Stone), Conservative; James Clappison (Hertsmere), Conservative; Michael Connarty (Linlithgow and East Falkirk), Labour; Jim Dobbin (Heywood and Middleton), Labour; Julie Elliott (Sunderland Central), Labour; Tim Farron (Westmorland and Lonsdale), Liberal Democrat; Nia Griffith (Llanelli), Labour; Chris Heaton-Harris (Daventry), Conservative; Kelvin Hopkins (Luton North), Labour; Chris Kelly (Dudley South), Conservative; Tony Lloyd (Manchester Central), Labour; Penny Mordaunt (Portsmouth North), Conservative; Stephen Phillips (Sleaford and North Hykeham); Jacob Rees-Mogg (Somerset North East), Conservative; Henry Smith (Crawley), Conservative; Ian Swales (Redcar), Liberal Democrat. The IPKat is sure that, with one member called Cash and another named Penny, this Committee will be highly sensitive to the potentially financial implications of the proposed Euro-legislation. Merpel's just pleased to see a Mogg on board ...

Not all vultures are, or want
to be, extra-virgin ...

Calling all Vulture Growers. For the average Englishman, the word "vulture" has a fairly pejorative meaning. The vulture is a bird of prey that feeds on carrion. And colloquially, as this Kat's trusty Collins English Dictionary puts it, a vulture is a "person or thing that preys greedily and ruthlessly on others, especially the helpless". The word VULTURE does make it on to the UK trade mark register, in Class 12, for "motor road vehicles, all for use in the handling and transporting of refuse, scrap, waste and of the like materials; parts and fittings included in Class 12 for all the aforesaid goods", as well as for music and art magazines (a "culture vulture being a person who greedily consumes culture). Today this Kat has just learned that the word VULTURE -- presumably as a trisyllabic word -- has now been accorded protected designation of origin status for extra-virgin olive oil from Italy. From Agricoltura Italiana Online he discovers it has " ... a unique taste quality, that distinguish it from other oils, demonstrated by historical documentation and in particular due to age-old commitment of the Vulture growers who were able to link this production to the particular climatic conditions of the production area".

Around the weblogs. Kingsley Egbuonu is now on the 32nd country of his A to Z tour of African official IP websites for Afro-IP -- and he has still only got to 'M' for Mauritania. There are plenty more countries to visit -- and the likelihood of plenty more depressing news to come for anyone who thinks they can easily contact national IP offices in Africa and access current information online. Class 46 asks here why generic drugs have such tongue-twisting names. Over on the 1709 Blog, Eleonora Rosati reports on Mario Monti's plan to solve Italy's economic problems by (inter alia) making copyright collecting societies more competitive, while her colleague Jeremy ponders over the rights and wrongs of the recent Red Bus photo case. Finally, Chris Wadlow demonstrates that he has few if any peers when it comes to writing enjoyable book reviews when, on the jiplp weblog, he reviews two new titles in one go, here.

Knut saga revisited

noreply@blogger.com (Birgit Clark) — Mon, 23 Jan 2012 00:19:00 +0000

When the BBC recently reported on the birth of little polar bear cub Siku at a Danish zoo at the end of 2011, this Kat immediately had to think of the late polar bear Knut's fate. Both cubs had to be hand-reared after their respective mothers could not care for the cubs. See the earlier IPKat posts on Knut here, here and here and MARQUES Class 46 posts on Knut here, here, here and here.

Having followed poor Knut's story from cuddly cub to famous celebrity zoo animal with a massive marketing machine (including various trade mark disputes, see "Knut, Flocke, and Co: the bear facts revealed"; JIPLP 2008, pages 764-774, available in full here) until his untimely death at the age of four at Berlin zoo in March 2011, this Kat feared that it would not take long until someone would try to market and trade mark little Siku. However, so far, there does not even appear to be a CTM for Siku -- what a difference to the "140 million dollar polar bear Knut."

Mostly prompted by the fact Bloomberg Business Week was investigating the strength of a Knut's brand even after his death, this Kat has been wondering for a while whether Knut's death would put an end to the zoo's persistent exploitation of Knut's story. Could there still be any marketing ideas left that the Berlin zoo would explore after Knut's death? It appears so. First, Knut's body was put on ice for several months after his death and then the zoo announced plans to have Knut's stuffed body on display -- very much to the bewilderment of many German observers. So, why not let go of the whole story and let Knut rest in peace in dignity? However, it transpired that the Berlin zoo was planning a memorial for Knut. The German public was initially less than inspired when the zoo held a competition to design the memorial: the only entry received was by a seven-year-old girl.

So, just when I thought that even I should let the Knut story go and focus on the Easter bunny trade mark disputes, German media last week reported on two new Knut related stories. First we learn that Knut's father has become the proud father of polar bear cub Anori - Knut's half brother. Anori was born at Wuppertal zoo, which should not be confused with the Zoo in Neumünster which was once involved in a dispute with Berlin zoo over Knut royalties. So far, I could not find any Anori trade marks, but this may just be a question of time...

The second Knut-related story takes us back to Berlin, where the Berlin zoo this week revealed that there would be a Knut memorial after all. See here for details of the design. Knut will be immortalised in a bronze sculpture created by Ukrainian sculptor Josef Tabachnyk, who reportedly beat 40 other entries in the initially slow Knut memorial competition. The memorial, which shows Knut as a sad and pensive animal, does look tasteful. Nonetheless, the whole story does leave some bitter aftertaste. It appears that the Knut saga is not yet over.

This Kat is also wondering whether the idea of a celebrity zoo animal is a purely German (and Austrian) one: Knut, Flocke, octopus Paul during the World Cup, Heidi, the opossum, Jack the monkey, Fu Long the panda cub in Vienna? Has something similar ever happened in a non-German speaking country?

Many thanks go to IP enthusiast and polar animal lover Harry (Harriet) Robinson for alerting this Kat to the latest Knut memorial plans.

Post-Bilski split on patentable subject matter

noreply@blogger.com (Norman) — Sun, 22 Jan 2012 13:21:00 +0000

In Bilski v Kappos, 130 S Ct 3218 (2010) the majority of the US Supreme Court held the business method patent at issue to be unpatentable as claiming an “abstract idea” (13). But Bilski has by no means settled the question of whether business methods are patentable in US law. There is a long-standing division of opinion in the US courts as to what it means to claim an “abstract idea,” that parallels the European debate over the meaning of the “as such” proviso in EPC Art 52(3). The contrasting post-Bilski decisions of the Federal Circuit in Ultramercial v Hulu, 657 F 3d 1323 (Fed Cir 2011) and last Friday’s decision in Dealertrack v Huber, 2009-1566, -1588 (Fed Cir 2012) show that this split is alive and well.

One strand, exemplified by the US Supreme Court decisions in Benson 409 US 63 (1972) and Flook 437 US 584 (1978), understands the rule as a substantive objection to patenting ideas or algorithms. A claim is invalid if it would “wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself” (Benson 72). So, according to Flook at 591-92: “Whether the algorithm was in fact known or unknown at the time of the claimed invention . . . it is treated as though it were a familiar part of the prior art.”

Patentable

The other strand holds that the objection is to patenting of abstract ideas. If the idea or formula is embodied in a practical application, it is patentable. This was long the view of the US Federal Circuit. Despite Benson and Flook, in In re Alappat 33 F 3d 1526, 1544 (Fed Cir 1994) the court required only a “useful, concrete, and tangible result,” and similarly in State Street 149 F 3d 1368, 1373 (Fed Cir 1998) the court held that “a practical application of a mathematical algorithm” is enough to render the subject matter patentable. The rationale for this approach is that a substantive objection to patenting of ideas “if carried to its extreme, make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious” (Diehr 450 US 175, 189 (1981)). As Laddie J said in Fujitsu Ltd's Application, [1996] RPC 511 at 523 (Pat), “most inventions are based on what would be viewed by many people as discoveries.”

This divergence was not resolved by Bilski. In Ultramercial the Federal Circuit held that a claim to a method for distributing copy-righted products (e.g. songs, movies, books) over the Internet was patentable subject matter, on the basis that it was “a practical application of the general concept of advertising as currency” (14). In contrast, in Dealertrack a different panel of the court held claims to a computer aided method of managing a car loan credit application through an electronic clearinghouse to be unpatentable subject matter on the basis that the claims were “directed to an abstract idea preemptive of a fundamental concept or idea” (35). Though the claims were limited to the use of a clearinghouse in the car loan application process, “it nonetheless covers a broad idea”, (37) and simply adding a “computer aided” limitation is insufficient to render the claim patent eligible (36).

Unpatentable

The court in Dealertrack purported to reconcile Ultramercial on the wholly unconvincing basis that in Ultramercial “the patent claimed a practical application with concrete steps requiring an extensive computer interface,” whereas “the claims here recite only that the method is ‘computer aided’ without specifying any level of involvement or detail” (36). The only real distinction is that there was no overlap in the composition of the panel. Chief Justice Rader wrote the decision in Ultramercial, with Judges Lourie and O’Malley concurring. He has consistently been a strong proponent of the view that the it is only abstract claims which are prohibited – see his opinion in Bilski 545 F3d 943 (Fed Cir 2008). In Dealertrack Judge Linn wrote for himself and Judge Dyk. Judge Plager in Dealertrack declared a plague on both houses; he held that the courts should not “foray into the jurisprudential morass of §101 [subject matter] unless absolutely necessary.” He would therefore have instructed that the trial courts should always decide invalidity on all other possible grounds before addressing subject matter. (Merpel says that Judge Linn declined to adopt this approach precisely because he did not want Chief Judge Rader to be clearing the only path through the morass.)

This Kat’s view is that both approaches are wrong. While Chief Judge Rader is right in his approach to the rule against abstract claims, which was distorted beyond recognition by the US Supreme Court in Benson and Flook, the US courts generally have been wrong to refuse to identify any limits on subject matter patentability other than that imposed by that rule. The concurrence of Justice Stevens in Bilski adopts the right approach, which is to say that the rule against abstract claims and exclusion of particular subject matter fields are entirely distinct, so that it is quite possible for a business method to survive the rule against abstract claims, because it is embodied in a practical application, and yet still be invalid on the basis that business methods are excluded, even if it is claimed in a practical application. Whether business methods in particular are an excluded field is a distinct question which flows from this framework. By consistently addressing subject matter exclusions in terms of the rule against abstract claims, the US Supreme Court has used the wrong tool for the job; consequently, it has damaged the tool, and done a poor job.

For more of this Kat’s views on the incoherence of the US approach, see here, and see here for more on the rule against abstract claims.

Nuckin Futs: what the ...?

noreply@blogger.com (Catherine Lee) — Sat, 21 Jan 2012 21:37:00 +0000

Yes, you read the title correctly and no, this Kat has not made an unfortunate typo (was cheekily suggested by a certain Blogmeister). To satisfy your curiosity, this Kat can inform you that NUCKIN FUTS is actually a trade mark (No 1408134) which has recently been accepted in Australia in Class 29 for prepared nuts, mixtures of nuts and dried fruits, prepared snacks made from nuts, and potato crisps.

Now, you are probably wondering how this trade mark was accepted when it is an obvious spoonerism. Under section 42 of the Australian Trade Marks Act 1995 (Cth), an examiner must reject a trade mark if it is '(a) the trade mark contains or consists of scandalous matter or (b) its use would be contrary to law'. According to the Trade Marks Office Manual of Practice & Procedure, an examiner is obliged to decide, on behalf of the "ordinary" person, whether a trade mark should be regarded as shameful, offensive or shocking, and therefore be rejected'. It was further in the Manual that:

The words and images fitting this description have changed with the passage of time, and it is quite likely, in the 21st century, that words which would have caused major offence in earlier times are now acceptable as trade marks in certain markets. Similarly, words which were once innocuous may have developed quite different connotations and now be regarded as offensive in certain circumstances.

After two adverse examination reports, this seems to have been the approach adopted by Jamie White, representative of the applicant Universal Trading Australia Pty Ltd. Mr White is quoted in the Daily Mail as stating that 'the words "f**k" and "f**king" were now part of the universal discourse of the ordinary Australian ... over the passage of time, certain words which may have caused major offence in earlier times would now be acceptable as trade marks in certain markets, namely the Australian market'. (This was news to this Kat - although her people have a reputation for being 'easy going', she was not aware of the elevation of the f*bomb to 'part of the universal discourse of the ordinary Australian', except perhaps in relation to certain Ashes cricket matches). Nonetheless, this argument was persuasive to the Examiner, Clara Witheridge, who accepted NUCKIN FUTS for registration on 5 January 2012. However, Ms Witheridge attach a condition to her acceptance, namely that 'the trade mark will not be marketed to children'.

In the UK, section 3(3)(a) provides that a 'trade mark shall not be registered if it is contrary to public policy or to accepted principles of morality'. The term 'accepted principles of morality' has proven somewhat difficult to define. In the UK Trade Marks Examination Manual it is suggested that Examiners should ask the question: 'is the mark likely to cause offence which amounts only to distaste or is it likely to cause offence which would justifiably cause outrage?' If a trade mark is merely distasteful, then an objection by an Examiner under section 3(3)(a) is unlikely to be justified whereas, if it would cause outrage or would be likely significantly to undermine religious, family or social values, then an objection will be appropriate.

Readers may be interested to note that, in an example of trade marks considered objectionable under section 3(3)(a), the trade mark FOOK is stated to be 'contrary to accepted principles of morality as it is phonetically identical to, and visually similar to the taboo word FU*K in some regional dialects in the UK' (the IPKat recorded this little episode back in May 2004). On this basis, it seems that Mr White's argument would not be so successful if NUCKIN FUTS decided to expand in the UK ...

The IPKat, a simple soul, admits that he was not aware of the f*bomb until reading this post.

Merpel dares to (re)ignite the debate: is this (yet another) case of (over-)relaxed Aussies versus (over-) prudish Poms? Should NUCKIN FUTS be allowed to be registered as a trade mark?

A Sweet Decision on Obviousness

noreply@blogger.com (Norman) — Fri, 20 Jan 2012 13:55:00 +0000

This Kat admits that puzzling over the implications of difficult leading cases is intellectually stimulating, but sometimes exhausting. Today’s decision of the Court of Appeal in Apimed Medical Honey Ltd v Brightwake Ltd [2012] EWCA Civ 5 is refreshingly straightforward. While Kitchin LJ, writing for the Court of Appeal, overruled Judge Fysh QC [2011] EWPCC 2, who had held the patent invalid for obviousness, there is no general principle at issue.

The formula for honey as a wound dressing?

Apimed’s patent, EP(UK) 1,237,561, related to the use of honey for the treatment of wounds. This use for honey has been known since ancient times – the patent itself says that this use is recorded in 4000 year old Sumerian clay tablets. It has recently been discovered that this was not superstition on the part of the ancients, and honey does indeed have anti-microbial properties. The problem is that honey is liquid at body temperature, and so is difficult to retain at the wound site, and is liable to be diluted by the moisture exuded by the wound. The patent solved this problem by teaching that a “gelling agent” should be used so that the honey would gel into a sheet or putty which could then by applied directly to the wound. The particular gelling agent emphasized in the examples was sodium alginate. The closest prior art was an article by the inventor himself which taught the use of honey impregnated into a dressing of calcium alginate or sodium-calcium alginate. Both of these types of dressings were commonly used in hospitals in place of cotton gauze. Judge Fysh, in a couple of briefly reasoned paragraphs, found the use of sodium alginate obvious over this prior art.

However, as the Kitchin LJ emphasized, despite the similarity in composition, calcium alginate and sodium-calcium alginate are not gelling agents. They are fibrous felts, like cotton. They are insoluble in honey, and do not cause the honey to gel or become more viscous. Instead the honey is retained in the interstices of the felt material. Sodium alginate, in contrast, dissolves into the honey and causes its viscosity to increase. There was some debate as to whether it forms a true gel, but it does in any event allow the honey / alginate compound to be formed into sheets and applied to the wound. Consequently, as Kitchin J explained

The real difference between the [prior art] and the inventive concept of claim 1 of the Patent lay not in the adoption of a calcium or sodium-calcium dressing in place of a gauze dressing but rather in having the idea of discarding such a dressing altogether and, instead, using a gelling agent such as particulate sodium alginate to increase the viscosity of the honey to such a degree that it could be rolled into a sheet or formed into a putty without the need for any dressing at all.

Kitchin J held that the failure to correctly identify the differences between the prior art and the invention was an error of principle, and he went on to conclude that the claims at issue were not obvious.

As a postscript, the defendant Brightwake had prevailed at trial on the issue of infringement, and Apimed appealed solely to establish the validity of its patent. In accordance with the guidance given in Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2006] EWCA Civ 185, the Comptroller appeared to present the counter-arguments to Apimed’s appeal.

It appears from the facts that most honey, including supermarket honey, does have some degree of anti-microbial effect, but if you want to try this at home, make sure that the honey has not been pasteurized, which destroys the effective enzymes - and that there aren't too many ants around.

Friday fantasies

noreply@blogger.com (Jeremy) — Fri, 20 Jan 2012 13:01:00 +0000

Don't forget to check out the IPKat's Forthcoming Events page. You never know what you might find!

Taking a running jump. Following this week's Fakes in Transit seminar (the PowerPoints for which are available here), the IPKat has received from Edward Humphrey-Evans a link to a YouTube video of what happened to some goods -- skyrunners-- seized by customs at his behest. He explains that the goods in question are protected in the UK by EP1196220, with the euphemistic title “Device for helping a person to walk”. His client decided that it wanted the goods destroyed, since the infringers did not have any further money to transport the goods back to China/elsewhere). The goods were sent to Germany, where they were destroyed by a Caterpillar tracked vehicle. The IPKat is fascinated by these devices but is a little miffed at the fact that, as a quadruped, he has to buy two sets.

Not on this year's reading list --
but there are changes to come

Real-life drama: a reader's struggle. "I struggled to locate the PDFs containing the collated country annexes that the World Intellectual Property Organization (WIPO) allegedly produces each year for printing before the EQE [the much-feared European Qualifying Examination for European patent attorneys] and so I called them up. WIPO was very helpful [Katnote: this is a true story] and led to me to this page where the PDFs have been up since last week. I thought that EQE candidates might find this information useful". A big kat-pat goes to Christine Walmsley-Scott (Technical Assistant, Marks & Clerk (Luxembourg) LLP) for letting us all know.

Drink, drugs and Detroit. A kat-pat goes to the ever-informative Chris Torrero for spotting that the United States Patent and Trademark Office (USPTO) has struck a deal to take a lease on a 31,000 square foot of office space in premises which, coincidentally formerly housed Parke-Davis Laboratories and Stroh’s Brewery in Detroit. The IPKat wonders whether there might be a bit of spare room in the building for some of the European Union's patent establishment. That would swiftly end any further squabbling as to where in Europe the trade bloc's IP institutions should be housed.

An earlier proposal for sharing
out IP litigation was based on
the principle of rotation ...

Assignment of IP litigation: even the courts do it. IP litigation in Spain has recently become, at least in theory, a more specialist and highly-focused activity. Since 2003, the country's Commercial Courts have been the exclusive venue for commercial litigation -- including IP, unfair competition, advertising, bankruptcy and antitrust disputes. Presiding judges had to pass specific examinations in these subjects, but that was not enough. Following an internal agreement among the Commercial Courts of Barcelona of 23 November 2011 (recently approved by the Spanish Ministry of Justice), the ten current Commercial Courts of Barcelona have agreed to assign all their patent litigation to Commercial Courts 1, 4 and 5, while trade mark and design cases will be solely heard by Commercial Courts 2 and 8 (a kat-pat goes to Ignacio Marqués Jarque, Baker & McKenzie Barcelona, S.L.P., for kindly supplying this information)

The Megaupload logo:
pause for reflection ...

Around the blogs. Congratulations to the 1709 Blog, which specialises in copyright, on welcoming its 1,100th email subscriber. The event that brought this up was surely Ben Challis's piece on the arrest of the Megaupload team in New Zealand, which you can read here. Darren Olivier has posted this fun pic on Afro-IP -- fun, unless you are involved with KIA or NOKIA, that is. For those folk who wonder what, in real terms, Court of Justice rulings on patent term extension in Europe actually mean, Netherlands patent examiner Martijn de Lange has extrapolated some actual data as to the one-SPC-per-patent concept as it affects patents in his office. Finally, the IP Finance blog features the departure of adidas as kit sponsor for Liverpool Football Club and ponders over collateral damage which the adidas brand may suffer.

A hint of a suggestion of a possibility of confusion

noreply@blogger.com (Norman) — Fri, 20 Jan 2012 10:00:00 +0000

Deutsche Post World Net: a sign of Canadian patronage?

Deutsche Post AG applied to register the trade-mark DEUTSCHE POST WORLD NET in Canada in respect of a wide range of wares and services, based on proposed use in Canada and use and registration of the mark in Germany. Canada Post, a Canadian Crown corporation, opposed on a variety of grounds. The Trade-Marks Opposition Board held that there was no likelihood of confusion between the mark in question and any of the opponent’s registered marks, essentially because Canadians are not so parochial as to think that Deutsche Post is operated by Canada Post. However, Canada Post also appealed to section 9(1)(d) of the Canadian Act, which prohibits marks likely to lead to the belief that the wares in question are sold under Canadian government patronage. The Board held that in Canadian law, the test under this provision was not confusion; the mere suggestion of government patronage – that is, patronage of Canada Post – was enough. Accordingly, the opposition was successful, at least in respect of those wares and services that were also provided by Canada Post.

Even if the test is suggestion, rather than confusion, this Kat fails to see how DEUTSCHE POST could suggest Canadian government patronage to a person of average intelligence, even the notional "ordinary hurried purchasers." More generally, it is disappointing to see IP law successfully invoked when one party is not trading on the reputation of another. It is this kind of use (abuse, says Merpel), that gives IP law a bad name.

The patent system: some thoughts on stakeholders and users

noreply@blogger.com (Jeremy) — Thu, 19 Jan 2012 22:42:00 +0000

Lest anyone accuse this Kat of getting into an awful argument and then trying to change the subject, he states at the outset that he writes with both urgency and frequency on more or less all aspects of intellectual property law, so the switch in the course of today from US copyright and the Wikipedia black-out, through European Commission research material on parasitic copying and then on to the patent system is no more than what he'd normally be doing in any old workday.

Two things got this Kat thinking and he has put them together to make a third. The first is the use of the term "stakeholder" -- a word which, in his imagination at least, has changed its meaning over time -- and the clamour of so many different voices to be heard in the great BungleFest which has been the recent debate over the final form of the make-over for the unitary patent system and unified patent litigation system for the European Union.

First, "stakeholder". Once upon a time, two persons might for example have a wager as to which could drink a yard of ale more quickly. Each of the contenders would hand the sum they were prepared to wager to a trusted third person who would hold the amount each staked until, following the outcome of the contest, it was apparent that one or other was the winner. The stakeholder would then return to the winner his original stake, together with the sum staked by the loser. A useful, if not essential, characteristic of the stakeholder was that he was in some sense neutral and trustworthy, so that he would do nothing to prejudice the outcome of the wager and could be relied on to pass the stake to the victor.

Language changes over time, and so do concepts. Now, when seeking evidence in support of law reform, governments in some enlightened countries invite comments and submissions from "stakeholders", who are characterised not by their neutrality and trustworthiness (though they may possess both), but by their involvement in the field in which the law reform is contemplated and their direct interest in its outcome. In one sense this is exclusionary. Patent owners (whether industrial concerns or so-called trolls), their competitors who may be excluded from trade by the existence of a patent, investors who lend money in contemplation of the grant of a patent or on security of it, health agencies and environmental groups can all be said to have a stake in a particular patent, in a sector in which trade is shaped by patents or in the patent system as a whole. In a wider sense, however, "stakeholder" is inclusionary since it is difficult to define a cut-off point which deprives consumers, their dependants and the public at large of an entitlement to express the manner in which a patent, or the system at large, affects them.

Self-interest -- a defining
characteristic of the stakeholder,
or an innocent by-product?

Turning now to the debate over the new-style European Union patent system, this too raises the issue of who has an entitlement to be heard. Here the vocabulary of stakeholder interest appears ill-fitting. "Stakeholder" is almost a disqualification in a debate where the display of one's credentials, experience and expertise is seen as a concealed plea on behalf of one's own self-interest. The right to be heard is shaped by rules of engagement that determine the order in which different organs of the European Union process a law reform proposal; which committees and which administrators are involved; which issues have been removed from further consideration via explicit or implicit agreement over a solution or over need to defer it; and so on. At this point, the law reform exercise has become a political issue and the question of who has a say is a political question.

Leaving the question of the "stakeholder", this Kat had the pleasure earlier this week of opening a package that contained a book which invoked in its title a refreshingly direct concept: the user. Its title, A User's Guide to Patents, is not intended to contribute to any debate. It's a heritage title (old IPers will recall the launch by Butterworths in the early 1980s, of Michael Flint's A User's Guide to Copyright; sister publications dedicated to trade marks and patents followed, somewhat later). This title reminded the Kat of something of utmost importance: the patent system isn't a sequence of legal and/or logical propositions that exist for the sake of mental gymnastics and the amusement of economists, nor is it a multi-player real-time game in which the participants either pay or receive sums of money. What is it, but something which is used on a daily basis by thousands of people. And it is on the basis of whether its users can make it work properly that the patent system should be assessed, adjusted and radically reformed if necessary. In doing this, the question we must keep before is not "how do we balance stakeholders' interests?", since that is a question of fine tuning, but "can we get it to work at all?" If it's not fit for purpose, all the balancing in the world won't make it any better.

A User's Guide to Patents will be reviewed, eventually, on this weblog (this, the third edition, is a chubby book, so this may take a while). The author, Bird & Bird's Trevor Cook, is a friend of all felines but, more importantly, he is a person who has spent decades of his life actually using the patent system and who, notwithstanding the fact that he has done so, still turns up smiling at conferences and seminars and has something positive to say about how you can get that little bit more out of the patent system if you know how to use it [Merpel speculates that Trevor is the sort of person who knows how to squeeze those last little bits out of the ketchup bottle too and hopes he'll put the same skill to a new book on how to squeeze some extra royalties from the nation's IP law publishers -- but that's another story ...]. The wisdom of Cooks throughout the ages is that the proof of the pudding is in the eating: much the same can be said about the patent system too. Does it work when used according to the accompanying instructions? Is it user-friendly? How does its use fit into a world in which most people have only an indirect connection with it, at best? How can its performance be improved for the benefit of users and non-users alike? In answering these questions, this Kat hopes this book will be of some ...use!

If you can't wait for the Kat's review, you can read about Trevor's book here.