The IPKat

Strictly for the birds?

noreply@blogger.com (Jeremy) — Tue, 29 May 2012 19:55:00 +0000

Radio Frequency Identification (RFID) technology doesn't often get a mention on this weblog, despite its usefulness in the fight against fakes. However, the IPKat thought it would be worth drawing it to his readers' attention, having just been captivated by a recent BBC news item from Malaysia, "RFID technology thwarts bird's nest counterfeiters", by Jennifer Pak, here. The article reads, in relevant part:

"One of the most coveted beauty products in Asia is found inside a damp and dark three storey house in southern Malaysia's Johor state. The delicacy is spun from saliva [the Kat is not making this bit up ...] and it will soon land in someone's soup, as people in China believe that eating bird's nest is good for their skin and they're willing to pay up to US$100 just for a handful. It's a lucrative industry and counterfeits have flooded the market.

Safety concerns last July effectively halted all exports of bird's nests to China from Malaysia, the world's second biggest supplier of the delicacy.

The Malaysian agricultural ministry says its edible bird's nest industry is worth RM5b ($1.59bn; £1.01bn) [... or this bit]. That is why the government is now investing in Radio Frequency Identification (RFID) to boost consumer confidence. It's one of the most common reasons why Asian governments use the technology.

RFID allows a product to be easily tracked from the source to the consumer. The bird's nests can be sealed in a box with an RFID tag that contains a microchip [shouldn't that be micro-"cheep", wonders Merpel] embedded with details about the harvest. A handheld scanner emits a radio frequency to unlock that information. It may sound similar to barcodes, but RFID tags are said to be harder to duplicate.

... The final product can only contain saliva. Still, it is hard for consumers to tell if a bird's nest is real or not so [Yanming Resources] has been forced to lower prices in order to compete with counterfeits. But with RFID, every step of this laborious process, from harvesting to packaging, is tagged. The data is stored centrally with the government. This official support will be key for consumers.

In essence the RFID becomes a certificate of authenticity, says Yow Lock Sen, who is in charge of overseeing the government project. The system is still being perfected, but eventually customers who have safety concerns will be able to trace the origins of the product by simply downloading a free app onto a smartphone, and scanning the RFID tag on the product.

Although it is a government research project, participation from the industry is voluntary since it requires companies to buy the RFID tags and reading equipment. ..."

The IPKat, who is fascinated by this, wonders whether the sale of fake bird's nest is the sort of thing that would be protected by an "extended passing off" action in the United Kingdom and whether the bird's nest concept might be protectable as a Traditional Speciality Guaranteed in the European Union. Merpel still feels uncomfortable about eating anything that is essentially saliva and wonders what other strange and squirm-making bits of the body and its excrescences might also be regarded as delicacies at dining tables braver than hers.

Monday miscellany

noreply@blogger.com (Jeremy) — Mon, 28 May 2012 20:43:00 +0000

Stuff the (Single) Market -- with canapés;
Tax the Rich -- lightly ...

“A Kat reflects”. On 12 June 2012 this member of the IPKat weblog team takes time off from his gruelling training schedule ahead of the London Blogging ~~Olympics~~ O******s in order to devote some time to Union activities. The Union in question is the Union of European Practitioners in Intellectual Property and he is attending a meeting of its British cell. Since the Union couldn’t afford the prices at The Old Nick and they don’t have good prospects of leverage through taking industrial action, they’ve had to opt for something a little more downmarket and they’ve ended up at The Royal Society, 6-9 Carlton House Terrace, London. To sweeten the blow a little, those attending will be mollified with Champagne and canapés. If you want to hear a Kat Reflect, there are still some spaces. Details are available here

Anshika's appointment:
a blow for Wallace and Gromit

Attaché now on the case. A press release informs the IPKat that the UK's second Intellectual Property attaché has been appointed and will start work in India as part to the UK Government’s plans “to bolster trade relations and support IP and innovation-led businesses abroad”. The lucky person, Anshika Jha, will be based in the British High Commission in New Delhi and will be working with to help British businesses operating in India make the most of the business opportunities there [says Merpel, it will be good to know how much of this is related to enforcement of IP rights held byBritish businesses and how much will address the licensing of UK technology into India – and vice versa].

Tea at 3pm? You must
be joking!*

IP TRANSLATOR delayed — but not by much. Thanks to the IPKat’s excellent friend Michael Edenborough QC the news can be broken to a disappointed world that the long-awaited ruling of the Court of Justice in Case C-307/10 Chartered Institute of Patent Attorneys (the IP TRANSLATOR case, concerning which some people have still not yet read Richard Ashmead’s masterly three-part analysis of the issues here, here and here) will not be handed down at 9.30am on Tuesday 19 June 2012. The new time is 3pm, just too early for tea.

* Illustration: Tea Time with Angel, by Monica Van de weer, available for purchase here

Katonomics 18: the Olympics -- or should that be Olympigs?

noreply@blogger.com (Jeremy) — Mon, 28 May 2012 18:48:00 +0000

In this, the sixth and final post in her third Katonomics series, the ever-competitive Doctor Nicola Searle goes for Gold when she takes on her toughest assignment yet: an IP-sensitive economic appraisal of the Olympic Games:

What do Olympigs (a pork stand), Polympics, Monopolymics (economic structure of international sports), Holympics (church sponsored fitness classes) Woolympics (Harris tweed uniforms), and Olympits (deodorant manufacturer) have in common? They all potentially violate the London 2012 Olympics protected rights. Described by the London Organising Committee of the Games and Paralympic Games (LOCOG) as “extremely valuable assets,” what is the relationship between IP, the Olympics and economics?

Economic analysis of the Olympics lives up to its dismal science nickname. The analysis argues that wealth and population size predict the number of Olympic medals a country will win. This slightly undermines the whole international-display-of-athletic-prowess image of the competition. Instead, Greek researchers Vagenas and Vlachokyriakou find that the size of the Olympic team, which is a measure of population and wealth, predicts 70% of the number of medals. Americans Bernard and Busse have similar findings but note that the host country typically enjoys a 2% bump in medals. Unfortunately, “you came all this way and lost because we have a statistical advantage” is unlikely to succeed as a sports chant.

Hosting the Olympics should have a positive impact on regeneration, tourism, legacy and cultural values. This tends to focus on the host city, but British-bases economists Walton, Longoand Dawson find that Brits outside London also support the games. They calculate that the positive impact of the games in the South West of England is around £173 million in addition to the £480 million positive impact in London. This is done using the Contingent Value Method which is based on asking how much the population is willing to pay for the event. The DCMS report uses a similar technique and argues a £3.2 billion overall positive impact on the UK over 10 years.

Like the valuation of IP, measurements of the value of events, particularly events that have yet to happen, include the valuation of intangibles. This leaves these valuations open for debate and, particularly as the valuations of the Olympics were conducted in pre-austerity times, subject to change. The DCMS report includes seven intangible benefits: feel-good factor, improving awareness of disability, inspiring children, legacy of sports facilities, environmental improvements, promoting healthy living and events. At the same time, there are six intangible costs listed: crowding, increased petty theft, security risks, local disruption, transport delays and, one to which I am contributing, excessive media coverage.

Surprisingly, respondents didn’t cite enforcement of IP right as either a cost or a benefit. The enforcement of Olympic IP right has come under some heat recently. On one side, control over these rights is an important funding mechanism and guarantees exclusivity for event sponsors. On the other, the public may associate these IP rights as freely used cultural symbols which form part of the feel-good intangible benefits. For example, we have objections that estate agents were threatened with legal action for creating an Olympic ring display out of hula-hoops. And who wouldn’t want to eat at the banned Olympigs food stall, which presumably is an important part of a training diet?

For IP and the Olympics, therein lies the conflict. A public which sees the Olympics as cultural event and is funding a £9.3 billion public sector package, and LOCOG who has raised £670 million from sponsors who have paid for exclusivity (I should confess some confusion here as the DCMS financial report refers to the LOCOG funding as part of the £9.3 billion public sector funding package). Would the public be willing to pay an extra £670 million to have London 2012 cupcakes unregulated?

Regeneration of the Olympic sites is also an economic benefit. Barcelona is often touted as an example of the positive impact the games have on the local area. British-based economist Kavetsos finds that the Olympics are responsible for a 2.1-5% increase in property prices in the area, which translates to £1.4 billion increase overall. The regeneration of East London should have long-term positive economic impact on the area.

At this point, my head is synchronised swimming with all of these numbers. It is much easier to tally the costs of the Olympics than the benefits. The positive impact figures I’ve mentioned should be net of the costs involved. The £9.3 billion public sector package doesn’t simply disappear -– it represents contracts for UK businesses, employment, development and the intangibles mentioned earlier.

Excuse me while I’m off to rehydrate with my Oympips orange-flavoured sports drink.

NOTE TO DOCTOR NIC’S DEVOTED READERS: while this post may mark the end of the third series of Katonomics posts, it does not mark the end of her contributions to this weblog. Stay tuned for further news, and be prepared to be delighted ...

To ™ or not to ™? A reader writes ...

noreply@blogger.com (Jeremy) — Mon, 28 May 2012 08:25:00 +0000

As every Kat knows,
TM stands for
transcendental meditation

Much-loved favourite question returns. The IPKat's friend Bansi Pattni has written in with a question which members of the blog team get asked quite often in one form or another, so this Kat thought it was time to open it up to the public rather than leave it in the murky realm of private correspondence. Writes Bansi:

"I am currently working for a company in the Netherlands and I am attempting to write some guidelines for the use of registered trade marks within the company. While doing so, I have come across wordmarks for computer programs which are not registered but which the company considers as its trade marks. The word marks are distinct and have the possibility of being registered. However, they are only used internally within the company so there seems to be no incentive to register them. In the event that one of these wordmarks is used in marketing material or client reports, I was thinking of suggesting the use of the ™ symbol.

After doing some research I found that, in general, US sources seem to advocate the use of ™ for unregistered trade marks whereas UK sources state that the use of ™ implies the trade mark is unregistered but does not speak of where it can be used and if it really should be used. In short, internet sources and textbook answers are not sufficient and neither is the opinion of just one professional.

There appear to be no set rules on whether to use ™ or not so I was hoping you may be able to provide me with your own professional opinions on whether ™ should be used for unregistered trade marks. I am also curious to know how its use is received by the IP community in different countries".

This Kat’s position is that, in the jurisdictions with which he is most familiar, the use of ™ is not explicitly controlled by statute or case law and that it is no more than an indication that the business that uses it regards the sign to which it is appended as being a trade mark even though it may not have been registered as such – and even if no application has been made to register it.

The bigger the 'TM', the more
difficult it is so miss ...

Be that as it may, use of the ™ may confer some benefits. In the first place, where the distinctive character of an unregistered sign is being contemplated in the course of registration proceedings, it often happens that an applicant’s mark is refused registration on the basis that the relevant consumer, seeing it, would not realize that it was a trade mark (rather than an advertising or promotional slogan, a description of goods or services or as an ornament or embellishment of the packaging). If such a sign is however accompanied by a ™, it may be more difficult to draw the conclusion that the relevant consuming public would not consider it to serve a trade mark function.

Additionally, in the event that an action for passing off or unfair competition is brought in respect of an unregistered sign which is followed by a ™, its presence may influence the decision whether to grant provisional relief and, if the plaintiff succeeds, the flagrant nature of the infringement and therefore the scale of the damages awarded.

Merpel says, whatever else may be said about ™s, they’re not very pretty. There ought to be a better way to handle this. How about an official depository of signs used as unregistered trade marks, together with a list of goods or services covered by their non-registration …?

But what do readers think? Let’s be hearing from you!

Other pleasures represented by the letters TM here, here and here

Delving into moral rights in the House of Harlot

noreply@blogger.com (Catherine Lee) — Sun, 27 May 2012 19:26:00 +0000

This Kat likes her moral rights cases (for instance see her earlier KatPost here). So she was very interested to hear that Recorder Douglas Campbell, sitting in the Patents County Court, England and Wales, had given judgment in a moral rights case on 18 May 2012 in Emma Delves-Broughton v House of Harlot. Every day since then, she has been checking the usual suspects for a transcript of the decision -- but currently the case remains as unreported.

Wearing nothing but a white fur coat, Merpel
always thought she was quite daring enough:
fur and latex rubber really don't go ...

This Kat has however ascertained the following so far: Ms Delves-Broughton is a professional photographer (her website bears the legend: "WARNING: This site contains images of partial nudity up to Art Nude"). She took a photograph of an unnamed female model in a forest wearing a garment supplied by the House of Harlot. ("CLICK TO ENTER HOUSE OF HARLOT AND TORTURE GARDEN CLOTHING FOR LATEX RUBBER FETISH FASHION"). Ms Delves-Broughton gave a copy of the image to the model with a letter which only granted the model permission to use the image on her own website for personal use. If anyone else wanted to use it, the model should let Ms Delves-Broughton know. The model however presented the image to the House of Harlot, which then proceeded to modify the image by reversing it and removing the forest background [says the IPKat, it's just as well they didn't remove anything else ...]. It then put this second image on its website.

When Ms Delves-Broughton complained, the House of Harlot promptly took down the second image. Ms Delves-Broughton then commenced proceedings for (a) copyright infringement and (b) derogatory treatment of her work. The House of Harlot responded by arguing that (a) it had a licence to use image by virtue of subsequent oral discussions between the model and Ms Delves-Broughton and (b) the changes it made to the image did not constitute derogatory treatment.

Douglas Campbell decided in favour of Ms Delves-Broughton on both claims. In respect of the claim of copyright infringement, he found that it was inherently implausible that Ms Delves-Broughton and the model had a discussion during the shoot to the effect that the House of Harlot was granted a licence to use the image. He was critical of the credibility of the model, particularly as her oral evidence (that a licence to the House of Harlot was granted) went further than her witness statement (which reiterated the understanding outlined in Ms Delves-Broughton’s letter outlining use of the image). He preferred the evidence of Ms Delves-Broughton and found that she had granted no such licence to the House of Harlot.

On the issue of damages for infringement, the fact that the image had appeared on eight pages of the website did not mean that there were eight uses for damages purpose. the judge stated that there had only been a single use: on the website. He followed the guidelines set out in the National Union of Journalists and awarded £675 for the infringement claim.

In respect of the claim of derogatory treatment of the work, Douglas Campbell noted that considerable time and effort had done into the composition of the image and that it had been important for the forest to appear for artistic reasons. Accordingly, he found that the changes amounted to distortion, but not mutilation, and were not prejudicial to Ms Delves-Broughton’s honour or reputation. Nonetheless, there was a distortion and therefore derogatory treatment of the work.

On the issue of damages for derogatory treatment, taking everything into account, the court awarded £50 damages. Normally the primary remedy in such cases was an injunction, but that remedy was inappropriate in the present proceedings as the House of Harlot had already removed the photograph from its website.

The IPKat and Merpel ask: has anyone been able to get their paws on a judgment or statement of reasons?

Friday fantasies

noreply@blogger.com (Jeremy) — Fri, 25 May 2012 12:57:00 +0000

Message to Google. The IPKat is not sure whether the improvement in performance of the new Google software since he posted his open letter to the company is simply a random event or is a direct consequence of the kind intervention of the anonymous IPKat-reading Google personality who read it and said he'd see if he could get it actioned. Either way, this entire post has been composed without any technical hiccups at all -- and it's a very long time since the Kat has been able to say that. Thanks, he says. Hope you don't get into trouble with your boss, adds Merpel.

"I spy ..."

That EU IP Observatory! The latest score on the IPKat’s sidebar poll shows that there is little respect or enthusiasm for the recently-announced EU Intellectual Property Observatory. If you’d like to add your opinion, whether by offering your support, by expressing your rage or by anything in between, there are still a few days in which to do so.

Unitary Patent Update. The AmeriKat does normally intrude on the Friday Fantasies but she’s doing so here. She tells the IPKat that, further to her update yesterday, the European Parliament's website has now been updated to show that the plenary sitting and first reading of the unitary patent provisions will take place on 13 June with the vote to be held on 14 June 2012.

The course was okay, but student
life on the intergalactic IP course
was a bit sparse ...

Patents at a distance. Prompted by yesterday’s post yesterday about distance learning and copyright ("Why distance learning has come a long way", here), the IPKat has received this request for information from a keen reader:

I have been looking for a distant learning LLM relating to patents or more specific, to patent litigation. I know of three European possibilities: Nottingham (patent litigation), CEIPI in Strasbourg and Hagen in Germany. Are there any other options, especially in the UK? I am interested in Nottingham, although I find it very UK specific. Are there any plans of changing this to make it more European or is there another course offered? I am thinking in view of the European Patent Court, if this ever becomes reality. I have asked in Nottingham, but haven´t received anything other than the programme of the litigation LLM.

Any suggestions, or inside information? Do let our reader know.

When resolving disputes
between heavyweights, it's
often advisable not to come between them ...

While we’re on the subject of patent litigation, this Kat has something of a vested interest in IP dispute resolution this summer. This is because he’s running a little stand-alone workshop on the subject as part of the IP Dispute Resolution offering by LexisNexis at the end of June. The conference itself runs from 28 to 29 June, but the workshop is on the afternoon of the day before. You can click for details here and, if you use the VIP code FKW82288IPK for readers of this weblog, you can even get a very generous 25% discount.

Safe and sound in Canada. A katpat goes to the IPKat’s effervescent friend Lorraine Fleck for news that, after the IPKat hosted her note on the registration of sound marks in Canada in the wake of the application to register the roar of the MGM lion, four further applications for sound-based trade mark have now been received. You can listen to them here.

What About Generic Copyright?

noreply@blogger.com (Neil Wilkof) — Fri, 25 May 2012 07:59:00 +0000

We all know that certain trade marks can be too successful, with the result that they become the generic name for the good or service that they are intended to identify. But what happens when a copyright work becomes "too" successful? Is the result something akin to genericity in trade mark law -- or is something else at work? Before you accuse this Kat of having had too much catnip, consider the following.

Nearly 20 years ago, the Israel Supreme Court had to decide whether a drawing based in large part on the figure of Donald Duck constituted copyright infringement. One of the claims made by the defendant was that the figure of Donald Duck had become such an integral part of modern culture that it no longer could enjoy copyright protection. This claim was rejected and the defendant ultimately was found liable for infringement. However, this Kat has continued to be intrigued by the notion that there may be certain works that are so well-recognized that certain aspects of the work take on a public life and meaning of their own, even if they do not enjoy copyright protection per se.

Spurred on by this intriguing question, this Kat has sought to formulate circumstances in which aspects of protected copyright take on a special role in public consciousness--what we will call "generic copyright". He has come up with at least two variant possibilities for generic copyright. In the first, the element is detached from the work, but its public fame continues to be connected with the underlying copyright work. In the second, the element is not merely uncoupled from the work, but it takes on a public meaning that does not depend upon its original creative context. This Kat has decided that the time has come for him to float this notion with the readership and so--a proposed exemplary list of generic copyright follows.

1. The voice of Jacob, the hands of Esau--And so it is written in Genesis (27:22)--"So Jacob came close to Isaac his father, and he felt him and said, 'The voice is the voice of Jacob, but the hands are the hands of Esau' "(New American Standard Bible). The phrase has become a wide-spread cultural staple whenever one wants to express the notion of inconsistent facts from what should be a single source that should be yielding consistent information.

2. Faustian bargain--I suspect that most of us have not read this greatest of all German literature (even not in translation, shame on us), but the notion of making a pact with the Devil (Faust traded his soul to the devil in exchange for unlimited knowledge and worldly pleasures), with all of the resulting unpleasantries, has become a standard motif of western culture.

3. "Toto, I don't think we're in Kansas anymore." - Who can forget that scene from the Wizard of Oz, when Dorothy finds herself removed from her Kansas cabin due to the tornado, surrounded (at least at knee-length), by those uniquely-voiced Munchkins. Her trenchant comment to her dog Toto has become a standard cultural fare for expressing the notion that one is in a new, unfamiliar situation.

4. "Phony"--Never has a single word from a work of modern fiction taken on a life of its own outside of its original literary moorings. We are speaking about J.D. Salinger's classic, "The Catcher in the Rye" (you may agree or disagree whether it is the great American novel, but this Kat continues to read the book every five years, much to the bemusement of Mrs Kat). The main character, Holden Caulfield, accuses almost every one (at least older than he) of being a "phony." The term has come to connote the dichotomy between the sweet world of childhood innocence and the unpalatable world of shallow adult hypocrisy. Before Salinger's creation, would any of us ever have thought to describe that pompous investment banker down the hall as a "phony"? Today the use of the term is so widespread that we tend to forget its origin.

5. "Catch-22"--The phrase, which is the name of Joseph Heller's monumental work on the potential insanity of armies and war, has come to mean "a problematic situation for which the only solution is denied by a circumstance inherent in the problem or by a rule" (Merriam-Webster.com). Be honest--is there anyone out there who has not referred to a circumstance as "a Catch 22" situation? As European leaders struggle to sort out the current financial crisis, is the current plan to adopt austerity to achieve growth "a Catch 22"?.

6. "My Way"

"And now the end is near
And so I face the final curtain.
My friend I'll say it clear
I'll state my case of which I'm certain.

I've lived a life that's full
I travelled each and every highway.
And more, much more than this
I did it my way."

Paul Anka's song is so closely identified with Frank Sinatra's rendition that it is perhaps the quintessential example of why we need to protect performer's rights as a neighbouring right. More generally, the phrase "My Way" has become a pithy means to express the actions of a person who lives life on his/her own terms. For those of you old enough to remember, the changes brought about by Mikhail Gorbachev to the former USSR in the 1980s were described as the "Sinatra Doctrine"--Gorbachev did it "his/my way."

7. "Ground Hog Day"--In the movie by the same name, actor Bill Murray plays an egocentric Pittsburgh TV weatherman (can any weatherman from Pittsburgh really be egocentric?) who gets sent to the town of Punxsutawney (this is the real name) to cover the annual Groundhog Day event. If the groundhog sees its shadow, we are in for six more weeks of winter (this is a true tradition in Punxsutawney). Murray finds himself repeating the same day over and over again, waking up to an alarm clock just before 6:00 am each morning. After trying hedonism, suicide attempts, and everything in between, he reexamines his life and priorities. In a short period of time, this phrase has come to mean any situation which we seem to be repeating, until we perhaps alter, our behaviour.

7. "Hotel California"

"Last thing I remember, I was running for the door
I had to find the passage back
To the place I was before
"Relax, " said the night man,
"We are programmed to receive.
You can check-out any time you like,
But you can never leave!"

Has any song ever conveyed imagery as strong as this song by the Eagles? And is there any better way of expressing the notion that it is easy to enter, but difficult, maybe even impossible to leave a situation? Once again, referring to the economic challenges facing the Euro, is Euro membership like the Hotel California, or not? We may learn the answer very soon.

8. "If you build it, he will come"--One of the all-time great fantasy movies-"Field of Dreams"--tells the story of a farmer in Iowa who is spurred on to construct a baseball field in corn fields in response to the exhortation of the unseen voice, who implores--"If you build it, he will come". I leave it to you to discover who the "he" was. Suffice to say, the phrase has become an eloquent way of expressing the idea of pursuing one's inner voice to achieve a goal, as quixotic (I suppose we could have this word to our list) as it might be seem to some.

Well, dear readers, if you have followed this Kat all the way to the end, here is his exemplary list of generic copyright. Maybe it is a bit culture-bound, but that may be unavoidable. Comments anyone?

Mini Unitary Patent Update: European Parliament vote , Rules of Procedure & Legal Services Opinion Request (UPDATED)

noreply@blogger.com (Annsley Merelle Ward) — Thu, 24 May 2012 15:44:00 +0000

A picture of what the AmeriKat would
like to be doing right now
ideally with some gelato in tow
(or is that "ice cream"?)

The sun is shining down in London, the people are smiling and all seems well in the world, except, that is, for the threatening unitary patent storm clouds growing over Brussels. "Oh how dramatic, AmeriKat!", you say, "There is no need to ruin our second sunny day all year with your Doomsday predictions of the unitary patent package.". Oh, but she must. She does, however, promise to make it quick. In fact she only has three points to share with you:

1. European Parliament vote: With the upcoming meeting of the Competitiveness Council meeting this Wednesday, the AmeriKat was alerted to the European Parliament's tabling of the plenary sitting date and first reading of the unitary patent package first scheduled for 11 June 2012, but now scheduled for 13 June with the vote on 14 June 2012. Can this be construed as a confident Statement of Intent to get the patent package approved come what may or as a cautiously optimistic "pencilling-in"?

2. Rules of Procedure news: Following the first circulation of the Rules of Procedure to stakeholders in April, Rules of Procedure Committee Chair, Kevin Mooney (Simmons & Simmons) tells the AmeriKat that they are now on the 8th draft of the Rules to which they have received 31 detailed responses. The ninth draft will go to the Commission/Danish Presidency today so that it is available for the Competitiveness Council meeting on Wednesday.  After the meeting, the draft should be more widely distributed, but as of yet there is no news on a public consultation. "We are waiting", says the AmeriKat, tapping her paws impatiently.

3. Update on request for unredacted version of Legal Services Opinion: On Sunday (or Monday, depending how late you were up), the AmeriKat reported on the confirmatory application request she stumbled upon for access to the unredacted version of the Opinion of the Legal Service (document here) on the compatibility of the draft agreement with the CJEU's Opinion 1/09.  Two of her lovely readers responded, including the anonymous requstor, who alerted her to the Council's response to the application (found here) who refused to provide access to the unredacted document. However

"Denmark, Estonia, Slovenia, Finland and Sweden cannot concur with the reasoning in the draft reply, which seems contradictory in first arguing that the negotiations are entirely outside the Council’s decision-making structures but that there still is a need to protect the Council’s decision making process (because the draft Agreement and the two draft Regulations form a “package").

As regards the contents of the opinion, it would seem that even if a possible harm to decision making or to the protection of legal advice could be demonstrated, there would be an overriding public interest in handing out the information, or at least more significant parts of it in line with Article 4(6) of Regulation 1049/2001."

Too right! The AmeriKat understands the UK government also did not support the Council's reply. Stay tuned for a Katty post on European legislative transparency coming to your computer screen and e-mail inbox very soon.

Now, with that done, please go enjoy the sunshine!

F1: Community TM institutions can't cast aspersions on national marks

noreply@blogger.com (Jeremy) — Thu, 24 May 2012 13:19:00 +0000

If you were busily digesting the Chocolate Bunny ruling earlier today, you might have missed a further trade mark ruling from the European Union's senior court: Case C‑196/11 P, Formula One Licensing BV v OHIM, Global Sports Media Ltd, on an opposition relating to a Community trade mark that was filed a little over eight years ago and which may still have a few more years' mileage to it.

The following analysis is taken from today's Curia press release:

"The Court of Justice sets aside the judgment of the General Court which failed to acknowledge, in relation to trade marks, the distinctive character of the ‘F1’ sign

Neither OHIM nor the General Court are competent to call into question the validity of national trade marks capable of opposing the registration of a Community trade mark

In April 2004, Racing-Live SAS [a company which was subsequently replaced by Global Sports Media Ltd as proprietor of the trade mark applied for] filed an application for registration of a Community trade mark ... for a figurative trade mark (right) in respect of various goods and services (magazines, books, publications, reservation of tickets for shows, and arranging competitions on the Internet).

However, Formula One Licensing BV opposed that application. The opposition was based on the existence of an international word mark and two national word marks for ‘F1’, and the Community figurative mark (left), covering the same products and services as those indicated in RacingLive SAS’ application for registration.

By a decision given in October 2008, OHIM dismissed the opposition, considering that there was no likelihood of confusion between the trade mark applied for and those of which Formula One Licensing was the proprietor. Moreover, OHIM stated that the word element ‘F1’ was a descriptive element in the trade mark applied for.

Formula One Licensing subsequently brought an action for the annulment of OHIM’s decision before the General Court. By its judgment of 17 February 2011, the General Court dismissed the company’s action and confirmed OHIM’s decision. Formula One Licensing now claims that the Court of Justice should set aside the judgment of the General Court.

In its judgment delivered today, the Court of Justice notes, first, that that the Community trade mark does not replace the national trade marks of Member States and that those two types of trade mark co-exist in the economic life of the EU. The Court states that in this dual system of trade marks, the registration of national trade marks is solely a matter for the Member States and that, therefore, OHIM and the General Court are not competent for either the registration or the declaration of invalidity of those trade marks. Accordingly, the Court notes that the validity of a national trade mark may not be called into question in proceedings opposing the registration of a Community trade mark, but only in cancellation proceedings brought in the Member State in which the national trade mark was registered [quite right, though isn't strange that, while a national Community trade mark court can rule a CTM to be invalid, the organs of the CTM can't do the same to national marks?].

In addition, according to the Court, it cannot be found, in such opposition proceedings, that a sign identical to a national trade mark is devoid of distinctive character, that is, the ability to allow the public to associate the products and services designated by the sign with the company which applied for its registration. Such a finding would be likely to eliminate the protection which national trade marks are supposed to provide [Exactly! That's why the argument was raised, wasn't it?].

Hence, the Court notes that, in a situation such as that in the present case, OHIM and, consequently, the General Court, must verify the way in which the relevant public perceives the sign which is identical to the national trade mark, solely in relation to the mark applied for, and evaluate, if necessary, the degree of distinctiveness of that sign. In that respect, the Court points out that it is necessary to acknowledge a certain degree of distinctiveness of a national mark on which an opposition against the registration of a Community trade mark is based. In those circumstances, the Court finds that, in finding that the sign ‘F1’, identical to the national trade marks of Formula One Licensing, was devoid of distinctive character, the General Court called into question the validity of those trade marks in proceedings for registration of a Community trade mark and therefore infringed the regulation on the Community trade mark.

Therefore, the Court sets aside the judgment of the General Court and, since it is not in a position to give final judgment in the matter, refers the case back to the latter".

Says the IPKat, there are interesting issues at stake here. One is the presumptive validity of every national trade mark, which is a matter of law, versus the reality that some trade marks may have lost whatever distinctive character they had by the time a later Community trade mark is applied for: what is the value to the market place of preserving the effect of a monopoly which is based on a presumption that can be undermined? A further question relates to national marks which are cited in support of an opposition but which are open to challenge and apparently invalid on the basis that they are in conflict with a protected geographical indication (this can easily happen in the case of a newly acceding EU Member State). The courts must find a comfortable balance between the need to balance commercial and legal certainty, the protection of investment in brands and branded businesses, competition and consumer choice

Adds Merpel, the moral of today's rulings is that, so far as distinctive character of a trade mark is concerned, it's better to be involved in the motor racing business than in the manufacture of chocolate rabbits.

Formula One car-catching cat here

Day of Judgment for Chocolate Bunnies

noreply@blogger.com (Jeremy) — Thu, 24 May 2012 12:12:00 +0000

If you want to know whose
bunny this is, you have to
read the small print ...

It has often been said that the Day of Judgment will be accompanied with a great weeping and a gnashing of teeth. Well, today was judgment day for a well-known, much-loved but dubiously distinctive chocolate rabbit and, while there may have been some wailing from the general vicinity of Lindt & Sprüngli, teeth might have been more involved in noshing than gnashing, as Europe's consumers prepare for a world in which they will be faced with a market in which they must choose between any number of branded and presumably generic chocolate bunnies. This is the result of Case C-98/11 P Chocoladefabriken Lindt & Sprüngli AG v OHIM, which (at time of writing) has not yet been made available in English [but it's in English now, here. A katpat to Luis Gimeno for being first to pull the trigger!].

According to today's Curia press release,

"The shape of a chocolate rabbit with a red ribbon cannot be registered as a Community trade mark

The Court of Justice confirms that this shape is devoid of any distinctive character According to the Community Trade Mark Regulation the shape of goods or their packaging can constitute a Community trade mark. However, a mark which is devoid of any distinctive character cannot, in principle, be registered.

On 18 May 2004, the company Lindt & Sprüngli AG filed an application for a Community trade mark ... for a 3D sign representing the shape of a chocolate rabbit with a red ribbon. OHIM dismissed the application, in particular on the ground that the mark applied for was devoid of any distinctive character. Lindt challenged that decision before the General Court, which dismissed the application, concluding that OHIM had not erred in law in its decision.

Lindt brought an appeal against that judgment before the Court of Justice.

In its judgment delivered today, the Court rules that the General Court did not err in law by concluding that the OHIM’s refusal to register the mark was valid.

The Court recalls that the distinctiveness of the mark must be assessed, first, by reference to the goods or services for which registration is sought and, secondly, by reference to the perception of the relevant public. In that regard, the Court rules that the General Court correctly identified and applied those criteria by carrying out an evaluation both of current practices in the industry and the perception of the average consumer. As regards the acquisition of distinctive character through use of the mark applied for, the Court confirms the reasoning of the General Court which found that Lindt had not proved that distinctive character had been acquired through use across the EU.

Consequently, the Court dismisses the appeal".

You can read the decision here in German. Fortunately the IPKat has a team member, Birgit, who is both a native German-speaker and an expert in all things to do with the registration of chocolate rabbits as trade marks (for background to this decision, see Birgit's excellent post here). If there is anything worth adding to this brief post, rest assured that Birgit will add it.

How to make a chocolate Easter bunny here
How to make a chocolate Zombie bunny here

Why distance learning in IP has come a long way

noreply@blogger.com (Jeremy) — Thu, 24 May 2012 08:55:00 +0000

Handy accessory for
distance learning

Reading the recently-published details of the LLM and postgraduate diploma distance learning courses in UK, EU and US copyright offered by Kings College London in conjunction with what is described as the Informa Academy, this Kat recalls with no little embarrassment that he was once asked to contribute his input to a distance learning postgraduate and professional programme for the teaching of copyright but declined to do so, since he had such strong reservations as to whether it could ever be made to work. Admittedly that was in the latter years of the last century, but he must report that he has reconsidered the matter and must admit either that he was wrong all along -- or that he was right but that things have subsequently changed.

Much of this Kat’s reticence to support the notion of distance learning was based on his own experiences of teaching copyright and other IP subjects at postgraduate level to students whose first language was not English and who therefore had to grapple with the twin demands of working in a foreign language and dealing with often abstruse legal terminology. Surely these obstacles could not be overcome by distance learning? Yet they have. The quantum leap in computer technology, in particular the internet, means that no student is more than a couple of mouse-clicks away from unlocking the meaning of a legal term of art or discovering the significance of technical vocabulary. Also, rapid improvements in computer translation give students an unprecedented chance to get at least the sense of a paragraph in their own language before tackling the original. A bonus is that EU materials, both legislative and judicial, are generally available in the languages of all the major colonial powers of a bygone era, which gives students the option of studying primary sources in their own tongue.

A second layer of reticence as to the viability of distance learning of copyright was based on the length of time taken in communication between students and tutors. It seems incredible to think that, even in the mid-to-late 1990s, so much of the world was either computer-free or dependent on slow and expensive dial-up online access, thus requiring reliance on the vagaries of terrestrial communication via the postal service ("snail mail"). Now communication between the teachers and the taught, and among each group, can be effectively instantaneous.

A bonus for today’s distance learner is that, just as he or she will have become accustomed to control the speed and manner in which information is sought and delivered online, so too can that student control the speed at which distance learning takes place. As the marketing literature for this distance learning programme states: “You can set the pace at which you learn and decide when, where and how long you want to study for” — a great advantage for those who are studying while holding down a job or shouldering domestic commitments.

Out of all the IP subjects on offer, copyright and trade marks offer another advantage — particularly in Europe. This is the fact that they both more or less started again in 1996 (the year of the WIPO “internet treaties”, the opening of the doors of the Office for Harmonisation in the Internal Market and the coming into force of the Madrid Protocol). This means that the vast majority of primary material and, necessarily, scholarly and professional literature based on that material, has been written within the past 15 years or so. It therefore requires less personal face-to-face input to steer puzzled students in the right direction when faced with technologies and social and commercial phenomena with which they have little or no familiarity.

Regarding the Kings/Informa offering which prompted this post, you can get all the details of the programme, the faculty and registration here. The IPKat notes that several of his friends are participating as faculty in the programme, which speaks volumes for its credibility — though personally he’d prefer to have them all in the same room at the same time for some lively and controversial debate rather than cross swords with them from a distance ...

Wednesday whimsies

noreply@blogger.com (Jeremy) — Wed, 23 May 2012 19:15:00 +0000

The IPKat and Merpel: on the
scent of a technical solution
-- or on their way to Wordpress?

An open letter to Google. If anyone from Google is reading this, or has any influence with anyone who works for Google, can they please assist? This blogger has this to say:

Since Google has replaced the old Blogger software with a new blogging program, we have been beset by problems. When trying to compose in "Compose" mode, we meet with what appear to be random enforced "save" procedures which freeze the blogging process for between a few seconds and half a minute [this has already happened to this Kat three times since he started composing this little letter]. The same happens when composing in html mode.

In addition, the position of artwork has become more difficult since strange strings of html code have a habit of appearance unannounced and have to be removed manually.

Aesthetically and functionally, the "back pages " of the new software are more difficult to work with, particularly for anyone who is working with a number of blogs and has a small screen. Several of this Kat's colleagues have given up trying to use the new software and are sending him Word documents which he is posting for them as and when he can, but this is far from being an ideal arrangement. When working at home, he is working from two computers simultaneously so that, when the blogging software freezes on one, he can move across to the other and work on that one till it, too, freezes. This solution does not work when he is on the move and has only one computer at his disposal.

We have sent feedback via the "Send feedback" button but have received no responses ourselves. Nor have we heard from anyone who has. Apart from suggesting that we bloggers depart en masse for Wordpress, is there anything constructive that Google can tell us? Are there any words of comfort?

Apologies to the readers of this blog and its associated weblogs for delays in commenting on latest developments. We are really struggling [the final tally for screen freezes in composing and revising this letter was 21].

Message to IPKat readers. The IPKat, Merpel and others have a pile of unposted material and are trying out ways of getting it on the blog with less delay and frustration. Please be patient, especially if you are one of those people who has sent us all sorts of interesting and/or topical news and are puzzled as to why we haven't posted it yet.

Bad news milestone -- if you're
running in the London
marathon, that is

Around the weblogs 1. First, a few congratulations on recently-passed milestones. Earlier this month, just after the International Trademark Association's Annual Meeting in Washington DC, the MARQUES Class 46 weblog -- which numbers Kats Jeremy and Birgit among its contributors -- welcomed its 2,700th email subscriber. Further down the line, but with lots of momentum right now, the 1709 Blog, which specialises in copyright matters, has today gained email subscriber number 1,300, while the bilingual (English and Spanish) Latin America-focused IP Tango has notched up subscriber number 400.

Around the weblogs 2. “Homage or Humiliation? Moral Rights, Vertigo, and The Artist” is the title of the first guest post by Mira T. Sundara Rajan for the 1709 Blog on moral rights in copyright law. Judging by the level of early responses, this series is going to attract and retain a good deal of attention. Meanwhile, over on the IP Finance weblog, fellow Kat Neil Wilkof examines the Pareto Principle and contemplates its application to IP business scenarios [note to Katonomists: this topic is highly likely to be taken up by Nicola Searle on this weblog in the not-too-distant future].

Under-age celebrities and personality rights: the German Federal Constitutional Court speaks

noreply@blogger.com (Birgit Clark) — Wed, 23 May 2012 07:51:00 +0000

Herr Ochsenknecht (the father)

Privacy and personality rights: should there be different rules when it comes to media reports about people that are under-age? Some cases appear very clear-cut, such as the case of intrusive media reports about J.K. Rowling's child (see also Katpost here) -- but what about media reports about teenagers that are well-known in their own right, such as young actors or under-age offspring of famous parents that are starting their own careers?

Such a case concerning a media report about the questionable nocturnal behaviour of two young German actors and sons of a well-known actor father, recently made it all the way to Germany 's highest court, the Federal Constitutional Court (Bundesverfassungsgericht, in short: BVerfG). The publisher of such a media report had filed a constitutional complaint based on an infringement of its right to freedom of expression and reporting under Article 5(1) German Constitution ("Grundgesetz") after Germany's courts decided in favour of the young celebrities when they tried to prevent (further) publication(s) by obtaining an injunction enforced by penalties against the publisher (case references: BVerfG, 1 BvR 2499/09, 1 BvR 2503/09 of 25 January 2012)

In a decision of 25 January 2012, which was recently published, the BVerfG decided that, in cases of media reports about persons under 18 years of age, the relevant German civil courts have been applying too strict an assumption in employing the rule that, when it comes to media reports, the personality rights of an under-age person should as a rule and in principle outweigh the right of freedom of expression of the reporting media outlet/publisher. The BVerfG found that this assumption insufficiently differentiated the facts of each similar case, it being necessary to balance properly the conflicting rights of freedom of expression/press on the one hand and the general personality right on the other in each case -- including each specific instance of media reports about celebrity teenagers and adolescents.

What actually happened? The sons of well-known German actor Uwe Ochsenknecht, Wilson Gonzalez and Jimi Blue, had been watched by interested bystanders while they were damaging bicycles during "Freinacht" or "Hexennacht" (in English: free night or witches' night, the night between 30 April and 1 May, an increasingly annoying German tradition where young people play little or no- so-little tricks, a bit like Halloween). During the same night the young Ochsenknechts were also seen tearing out plants from gardens and destroying a public phone booth. This rather juvenile behaviour was reported in a media report on the complainant's website together with the editorial comment that the police had only taken the personal details of the young Ochsenknechts but had not started any criminal investigations into their behaviour. In particular, a report on the complainant's website stated (this Kat's translation) "the two young actors and singers had been questioned by police after a wild riot in Munich's city centre".

In its decision the BVerfG stressed that (like all other cases) cases relating to under-age celebrities required a case-by-case balancing of the conflicting rights (freedom of expression v personality right). In this particular case the judges took the view that the lower courts had not adequately considered that the encroachment upon the young actors' personality rights was alleviated by the young actor's "public image" (Öffentlichkeitsimage) as "wild youth" (Junge Wilde) and the fact that their behaviour would be seen as a mere petty offence. The BVerfG found that the lower courts had misinterpreted the scope and the importance of the human right of freedom of expression (Article 5(1)) insofar as they had not assessed the specific circumstances affecting scope of the young actors' personality rights and thus had given the personality right precedence over freedom of expression when balancing both rights. Consequently, the BVerfG annulled the lower court's decisions and send the cases back to the Regional Court for a new decision.... and rightly so says Merpel.

The court's press release can be retrieved here (in German).

Katonomics 18: more on IP and economic growth

noreply@blogger.com (Jeremy) — Tue, 22 May 2012 16:20:00 +0000

Just like cats, countries come in two
different styles: the developed and
the developing

In this week's Katonomist column, experienced IP-flavoured economist Dr Nicola Searle continues her quest to make economics intelligible to intellectual property folk. This week she returns to last week's theme -- IP, economics and growth, and develops it:

IP and Economic Growth – La Segunda Parte

Last week, I looked at the relationship between IP and growth. A sub-theme of the post was the concept that IP might affect growth different in developing versus developed nations. What can developing nations expect from increasing the strength of their IP regime?

First, a note on the vocabulary of economics of development. Terms like North-South divide or First and Third world have fallen out of favour due to their perceived biases. The generally preferred terms are developed and developing countries. Again, these are somewhat controversial as ‘developing’ implies inferiority, but they are widely used [as an aside, the IPKat wonders why there's no term for countries that have finished developing and are now heading back the other way; after all, there seem to quite a few of them around. Words such as 'declining' and 'disintegrating' would seem quite handy but, again, they may have problems with perceived biases]. A second note is to clarify, in response to reader comments, what I mean by “IP regime strength.” The term represents an overall measurement of IP and bundles together enforcement, the quality of institutions, and the legal structure of IP policy. The use of this measurement allows for policy analysis of IP but potentially conflates issues.

History offers insight into the relationship between IP and development. As countries develop, their interest in IP increases. For example, the US was slow to recognise foreign-owned copyrights. The American film industry relocated to Hollywood to escape patent enforcement actions. The “father of the American Industrial Revolution,” Samuel Slater, started his career by memorising (export was banned) British machinery designs. Now considered developed, the U.S. is in the position of owning a lot of economically relevant IP and is a proponent of stronger IP regimes.

The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is a defining moment in the relationship between IP and economic development. It sets an international standard for IP regimes and is compulsory for members of the World Trade Organization (WTO). Membership is desirable as it stimulates economic growth and promotes free trade. Despite criticisms that the WTO favours developed countries, the perceived benefits of membership to developing countries outweigh the perceived costs. Are strengthened IP regimes a cost or a benefit?

The benefits of stronger, standardised IP regimes internationally are relatively straightforward for developed countries. As the owners of economically relevant IP, an increase in the international strength of IP could mean increased profits. For example, over 70% of the world music market is owned by UK and US based companies. The top 15 pharmaceutical companies (http://en.wikipedia.org/wiki/Pharmaceutical_industry#Industry_revenues) are also based in developed countries. New markets in developing countries with sufficiently strong IP protection are an attractive proposition. For the developing country, strengthened IP regimes should attract foreign investment, increase the diffusion of knowledge (known as technology transfer) and encourage innovation. However, the relationship is not straightforward. Most economic research finds that stronger IP regimes do attract foreign investment.

For example, Oxford economist Javorcik finds that foreign investors in technology intensive sectors are sensitive to IP regime strength. If the regime is weak, investment in all sectors favours distribution projects over production. American-based Maskus has an accessible summary of economic papers on this topic.

However, as Makus argues, investment eventually gives way to licensing as IP regimes strengthen. American economist McCalman notes that foreign revenues outweigh domestic revenues for Hollywood films. He finds that moderate IP regimes are associated with higher licensing but that the picture is less clear with stronger or weaker IP regimes. Overall, it appears that stronger IP regimes do increase activity by foreign firms in markets.

The same is true for technology transfer and the spread of innovation. Maksus’s summary catalogues research which supports a positive relationship between IP regime strength and technology transfer. National Bureau for Economic Research (NBER) economists Branstetter, Fisman and Foley find that American companies increase technology transfer when IP regimes strengthen. The promise of TRIPS to bring in new investment and technology from developed countries to developing countries appears to be holding up. However, that relationship still implies dependency. Countries are also interested in creating their own innovation. Some authors argue that innovation in developing countries is largely imitative – meaning that it imitates IP owned elsewhere. When IP regimes increase, this innovation is shut down as it infringes on the IPR of others. Would Hollywood be as successful if it had respected patents from the start?

Another issue to consider is global pricing. This international report argues that a factor exacerbating piracy is that copyrighted material is priced internationally. When you adjust for income, the price of legitimate copies in developed countries matches that of pirated copies in developing countries. For example, the U.S. price of $24 for a DVD of The Dark Knight, is equivalent to the $25 price of the pirated copy in Russia (this comparison uses the technique of purchasing power parity which adjusts prices to match purchasing power based on incomes. The Economist has a fun example of this called The Big Mac Index.) Similar arguments can be made in the pricing of pharmaceuticals.

Finally, there are considerations about access to medicines, traditional knowledge and bio-piracy that may not be captured by looking at economic development as a whole.

So, we do not have a clear picture on how IP affects development. A colleague recently reminded me of a Winston Churchill joke about how economists never agree: “If you put two economists in a room, you get two opinions, unless one of them is Lord Keynes, in which case you get three opinions.” IPKat readers will have their own opinions -- are stronger IP regimes good for development?

Monday miscellany

noreply@blogger.com (Jeremy) — Mon, 21 May 2012 10:54:00 +0000

Despite decades of European harmonisation, the Belgian academic
community has never departed from its traditions, including
the ever-popular Professorial Retirement Procession (above)

Retirement launch. The IPKat's scholarly friend Frank Gotzen's retirement is to be excitingly launched by a commemorative conference, "Harmonisation of European IP Law: From European Rules to Belgian Law and Practice". In case you didn't know,

"Frank Gotzen, the founding father of the Centre for Intellectual Property Rights, displayed a vivid interest in IP law and the European harmonisation movement throughout his academic life. At the beginning of his career in 1970 the European harmonisation movement was negligible. During the many years of his research and teaching, a whole body of harmonised rules came into being in the sector of IP rights in the EU. It is widely known that this field of law and the gradual emergence of a ‘true’ European IP system always was, and still is, at the heart of Frank Gotzen’s interests.

Undoubtedly, his lectures and publications have contributed to the shaping of European IP law, and to the modification of Belgian IP law after the European model. Frank Gotzen’s superannuation constitutes an exquisite moment for giving an echo to the achievements – and failures – of this ambitious European project of harmonising IP law".

This Kat remembers the first meeting of the International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP), back in the mists of the last century when there still lots of continental IP scholars who didn't speak a word of English: Frank did, so this Kat had the benefit of his wisdom -- which he very much appreciated. Merpel is quite amused at the title of the conference: "Harmonisation of European IP Law: From European Rules to Belgian Law and Practice". She wonders if, had this been a Dutch professor who was retiring, the title would have been "Harmonisation of European IP Law: From Belgian Law and Practice to European Rules" .... Anyway, further information concerning this event, which is "followed by an academic celebration", can be sought from Linda Mees or from the Leuven CIR (Centre for Intellectual Property Studies) website here.

Memory in need of a jog. One of the Kat's oldest friends has emailed him to ask about the identity of a passing-off case. He describes this case as "one in which it was held lawful for a trader to claim (truthfully) that he was formerly employed by or otherwise associated with another, even if his intent was to benefit himself by the association". He asks: "do you remember the name of the case and the judge?" Of course I do -- in general terms, says the IPKat, but not quite at this moment. Merpel suggests that the Kat asks his readers, who may remember the specifics and be kind enough to post them below.

Around the weblogs. The 49th country in Kingsley Egbuonu's pan-African tour of official intellectual property office websites is Tanzania: you can read his findings on Afro-IP here. Remember the days when three strikes was the preferred formula for dealing with copyright-infringing file-sharers? Well, the discussion in the US now is all about six strikes, explains Eleonora Rosati on the 1709 Blog here.

Sympathy for Dahlia -- but the skort goes back to court

noreply@blogger.com (Catherine Lee) — Mon, 21 May 2012 10:34:00 +0000

This is a tale of two garments, unregistered design rights, allegations of infringement and an unsuccessful application for summary judgment -- all told by Judge Birss QC in the Patents County Court, England and Wales, in Dahlia Fashion Co Ltd v Broadcast Session Ltd [2012] EWPCC 23 (16 May 2012). Dahlia claimed that Broadcast infringed its unregistered design rights when it sold copies of the Dahlia Skort Playsuit and the Dahlia Betty Dress (for those not familiar with the lingo, a ‘skort’ is a garment which looks like a skirt but is actually a pair of shorts).

In relation to the Dahlia Skort Playsuit, Broadcast challenged the subsistence and ownership of Dahlia's rights and alleged several differences between the Dahlia Skort Playsuit and the version it sold. Dahlia believed these points would fail at trial, but accepted that summary judgment in its favour could not be granted in respect of the Dahlia Skort Playsuit.

In relation to the Dahlia Betty Dress (left), Broadcast did not admit the subsistence nor ownership of the rights claimed by Dahlia. Judge Birss QC stated that Broadcast’s version was ‘plainly virtually identical to the Betty Dress’ (at [3]). In response to the allegation of flagrant infringement by Dahlia, Broadcast contended that they had no reason to believe that the dress was copied from or infringed any rights in the Betty Dress. Dahlia sought summary judgment of its claim in respect of the Betty Dress.

Judge Birss QC would have had ‘no difficulty giving summary judgment for Dahlia’ except for one point (at [9]): both the Betty Dress and the Dahlia Skort Playsuit were the result of a commission to the same freelance designer Katherine Graziano. In relation to the Dahlia Skort Playsuit, Broadcast challenged the subsistence and ownership of Dahlia’s rights by alleging that Ms Graziano did not in fact design the garment, but only made minor modifications to an existing design sourced from China. Dahlia denied this and argued that Broadcast simply had no defence in relation to the Betty Dress.

Although Judge Birss QC had ‘considerable sympathy’ with Dahlia, he declined to grant it summary judgment in relation to the Betty Dress because it would have been ‘wrong to do so’ (at [12] and [15]). His Honour stated that Broadcast’s defence in relation to the Betty Dress was weak (at [14]). On the material before him, he believed that it was much more likely that Dahlia than Broadcast would win at trial. However, he noted that if the argument about the Dahlia Skort Playsuit did succeed, which was possible but unlikely, it was also conceivable but unlikely that that result would have a knock on effect on the Betty Dress as it was designed by the same person working as a freelance designer for Dahlia in the same circumstances.

Not all was lost for Dahlia. Taking into account the weakness of Broadcast’s defence and the proportionality of costs in defending the claim (Broadcast had only sold £477 worth of its Betty dresses), Judge Birss QC ordered that Broadcast pay £10,000 into court as security for Dahlia’s costs (at [20]).

The IPKat, noting the judge's sympathies, his views as to the weakness of the defence and the large sum which the defendant has been asked to produce by way of security for costs, suspects that these proceedings may mark the end of this litigation.

Merpel is very excited about the judge said about this being a paper hearing (at [5]):

"It seemed to me the summary judgment application could be dealt with on paper. I directed that the parties should consider whether they accepted the application should be dealt with on paper once the evidence was complete. Written evidence was exchanged and the parties agreed to the application being determined that way. The defendant wanted to file written submissions and I directed that brief written submissions should be filed, limited to four pages each".

She has often heard people talking of an action folding; now she knows why ...

The big copyright debate – in Germany

noreply@blogger.com (Birgit Clark) — Mon, 21 May 2012 09:02:00 +0000

Copyright and the protection of IP rights is a topic that is hotly debated in many countries. With Die Piratenpartei (The German Pirate Party) increasingly gaining seats in more and more German state parliaments, the debate is becoming more heated in Germany too.
One of Die Piratenpartei’s political aims is a reform of Germany’s patent laws (keywords: “fewer monopolies and open markets”) and copyright legislation (keywords: “no copy restrictions and free use”, “fair balance between rights owners and the public”]. All rather progressive and controversial stuff -- that is, rather appealing to the young(ish) and free spirits of the Internet Age but downright scary for some rights owners and creators.

The German magazine Focus now reports that these recent developments now prompted an open letter by more than 100 well-known German writers and other artists asking for better protection of intellectual property, the biggest concerted effort in this field so far. They start their open letter by defending copyright protection with the following sentence (translated by this Kat with a lack of elegance):

“As authors and artists, we follow the public attacks against copyright laws with concern and a lack of understanding. Copyright laws are a historical achievement of civic freedoms against feudal dependency, they grant the material basis for individual intellectual creation”.

In a society based on the sharing of labour, artists have to trust publishers, galleries, producers or collecting societies with the marketing of their works, insofar as these look to and defend their interests. The new realities of the internet and digitalisation do not justify the profane theft of intellectual property nor require the legalisation of such theft. The open letter further demands a strengthening of copyright and IP laws and an adjustment of these laws according to the modern requirements of fast and mass access to such intellectual creations.

This Kat sometimes wonders whether these at first very opposite opinions are really that irreconcilable...

When unity creates division: A Kat patent recap

noreply@blogger.com (Annsley Merelle Ward) — Mon, 21 May 2012 00:08:00 +0000

The unitary patent's countdown clock
has the same face as Big Ben....coincidence?

The AmeriKat cannot say whether the hands on the unitary patent clock that are ticking away as she types are counting down to an expected implementation of the patent proposals that have preoccupied the patent community for the past year or to yet another legislative death when the proposals for the Utopian ideal of a unified European patent system fail to bring fruit. Nor does she know when the time on the clock will run out: Will it be on 30 May when the Competitiveness Council is scheduled to meet again to discuss the package? Will it be sometime in June when EU leaders called for a final agreement on the EU patent package? Or will it be after that, as suggested earlier this year by Baroness Wilcox?

President Van Rompuy's message to
the Competitiveness Council:
"Don't make me come back there...."

Indeed, even the President of the European Council, Herman Van Rompuy in a letter written three weeks ago to members of the European Council did not seem quite sure when the actual deadline for agreement was. He wrote:

"I really appeal to each of you to instruct your Ministers responsible for these files to show the necessary sense of compromise to help the Presidency achieve results on what are key elements for growth in Europe. I would like to say a particular word on the Unitary Patent. This important file has been discussed for many years and we are now very close to a final deal, albeit only at 25. This deal is needed now, because this is an issue of crucial importance for innovation and growth. I very much hope that the last outstanding issue will be sorted out at the May Competitiveness Council. If not, I will take it up at the June European Council."

But the questions of "if" and "when" are not new. If anything, they have become familiar friends during the unitary patent saga. With each passing day that the profession and industry know and are told nothing concrete about the status and future of the proposals in Brussels, these - the most important questions - are pushed to the sideline. Instead we trudge ahead with our ever maddening debates on the defects of the substantive provisions, feverish lobbying and letter writing by industry, and drafting Rules of Procedure for the yet-to-be (or never-to-be) Unified Patent Court.

As a welcome treat in our unitary patent proposal routine, a few weeks ago, after months of evidence from patent lawyers, judges, industry and Baroness Wilcox, the House of Commons Scrutiny Committee published their evidence on the unitary patent proposals (see IPKat post here). Although the Committee's report was mostly predictable given the lines of questioning and cross-examination taken by the MPs (see AmeriKat posts here, here, here, here, here and here on the hearings), there did contain one surprise – that on the controversial Articles 6 to 8 of the Proposed Regulation. Although the Committee strongly agreed, as a matter of patent law, with the majority who oppose the inclusion of Articles 6 to 8 in the Regulation, they nevertheless recognized the "inevitability to their inclusion" as a matter of EU law despite the opinions of Sir Robin Jacob and Professor Kraßer. This, they said,

"calls into question whether incorporating a unitary patent regime within the EU will ever be practicable."

What the academic Utopia looks like where
CJEU referrals are fast, quick and cheap

Readers will be familiar with the two camps of thought in respect of whether the inclusion of Articles 6 to 8 in the Proposed Regulation which involves the Court of Justice of the European Union (CJEU) on matters of the interpretation of what constitutes patent infringement, is necessary under EU law (see arguments here). Recently proponents of the inclusion of Articles 6 to 8 in the Proposed Regulation could find solace in an article published last month by competition professor Hanns Ulrich entitled "Harmonizing Patent Law: The Untameable Union Patent" who convincingly argued that the inclusion was necessary – albeit convincing from a non-practising and purely academic viewpoint. ["Spend some time in a CJEU trade mark referral", says Merpel, "and watch how much easier it is to argue the contrary position!"]. In this and many proponent's arguments, it seems that purely academic technicalities seem to outweigh the practical implications for the patent industry who require fast and certain protection and enforcement of their patents. [Merpel also wonders what Professor Kraßer, the Intellectual Property Judges Association and Professor Sir Robin Jacob would make of Professor Ulrich's footnote 148 where he calls them a "lobby initiative"? Any comments from these, our distinguished Kat friends?]

Not endorsing Dr. Tilmann's views

Professor Ulrich is not alone, of course. He joins the only other big named proponent of the inclusion of Articles 6 to 8 - Unified Patent Court's Rules of Procedure committee member, Dr. Winfried Tilmann. Readers may recall that Dr. Tilmann, who is an adviser to the German Ministry of Justice and is Of Counsel at Hogan Lovells, submitted this letter (scroll down) to the House of Commons Scrutiny Committee arguing that Article 118 TFEU demands that Articles 6 to 8 are included in the Proposed Regulation and that in respect of trade mark law, the CJEU's practice is "impressively good". With comments like these, it came as little surprise that on 12 April, after it was reported by the IPKat in February that Dr. Tilmann's letter referred to his position at Hogan Lovells, the firm wrote to the Chair of the House of Commons Scrutiny Committee making it clear that his letter contained

"his own personal views. The views he expresses are not those of the Hogan Lovells intellectual property practice and are not endorsed by us. It is regrettable that the presentation of his opinion did not make this clear."

Duck Tape - the quick fix solution to all of life's problems,
but perhaps not for the unitary patent proposals

For the proponents of the inclusion of Articles 6 to 8 and to answer the concluding concerns of the Scrutiny Committee, the quick fix solution for those who wish to have uniform substantive patent law part of EU legal order should be to limit the scope of unitary patent system only to the unitary patent and not to the current European patent. Those users who wish to use the EU unitary patent system will then be subject to references to the CJEU while the rest of the users who chose not to partake in the system sit back and watch how many references are made and how long it takes. Of course under the current proposed system, the transitional measures which allow owners of European patents or applications to opt-out within seven years is considered to be too short a transitional period given that most patent infringement suits are brought at the end of the life of a patent. After seven years, the Unified Patent Court assumes exclusive jurisdiction over unitary and European patents which is why many commentators have proposed permanent opt-out provisions or opt-in provisions and/or that the Unified Patent Court only have exclusive jurisdiction over unitary patents. These types of proposals were mooted by patent professionals, namely CIPA, during the House of Commons Scrutiny Committee hearings, and as the AmeriKat understands were recently proposed, together with the deletion of Articles 6 to 8 of the Regulation, by sections of German industry to the German Justice Department.

The AmeriKat does not think she is overstating this when she says, despite the industry's tireless efforts in raising these serious problems of the proposals with their respective national and European governmental ministers, that the profession and industry is worried that it may still nevertheless be bounced into a situation like the one they experienced last December. The AmeriKat fears that next week when the Competitiveness Council meets will she again be watching press conferences of European officials boasting that "everything has been agreed" as various gob-smacked professional patent organizations scramble to figure out who has and what has been agreed. She hopes this is not the case, but one thing that has been consistent throughout this process is the lack of transparency and certainty as to exactly what is going on at the national and European level in respect of the patent proposals. ["If anything, the slogan for the European legislative process should be "Surprise!", says the AmeriKat]

The Unitary Fairy's wand - with one
flick all of the unitary patent's problems
are fixed and we we are finally
unified....

But before the Competitiveness Council meets, the AmeriKat wonders if the unitary patent fairy could grant her and the patent profession three wishes:

(1) Can we please finally see the unredacted version of the Opinion of the Legal Service (document here) on the compatibility of the draft agreement with the CJEU's Opinion 1/09? The AmeriKat notes that someone who shares her insistence on this filed a request for the document in December. The request was rejected by the Council in January with the excuse that issue was too "complex" and "sensitive". Then the same individual - whose identity the AmeriKat has deduced - requested a confirmatory application under Regulation 1049/2001 (see chain of correspondence curiously, or not, found on the Austrian Parliament's website here) No word if that request has been responded to...

(2) Can we have some news of Italy and Spain's cases regarding the enhanced cooperation procedure? ["If it is taking this long to get a judgment from the CJEU on these, surely basic, procedural European law questions, it doesn't bode well for any substantive patent referrals", says the AmeriKat.

(3) Although publishing a beautiful and thorough report, can the UK's Scrutiny Committee make sure that after this they do not fail to exercise their powers to ensure that the voices of UK industry are not disregarded by UK negotiators in Brussels next week?

And on that note, the AmeriKat lays her head down to sleep wishing that when she awakes the unitary patent fairy will have paid her and the patent profession a visit....

Letter from AmeriKat: Brought to you by the Letters 'A', 'W' and 'R' and the numbers 50 million and $100 million

noreply@blogger.com (Annsley Merelle Ward) — Sun, 20 May 2012 17:41:00 +0000

The AmeriKat and her niece kitten
watching hours of the wonderful
Sesame Street

Over the past 18 months or so, the AmeriKat has delved back into the once familiar world of Sesame Street, hardback books with impossibly cuddly kittens in them and little jars of applesauce. As she is shaping herself into the fashionable and fun aunt, the majority of her skills have been honed in teaching her kitten niece key life skills, such as 100 % cotton - good, polyester-blend - bad, silver - good, gold -better, platinum - even better, and trying to convince her that Elmo is just not on the same intellectual level as Grover (i.e. character over beauty). The latter belief, however, cannot be budged as it is cute red baby-faced Elmo that grabs her and many young kittens attention over the more accident-prone, blue spindly Grover. But while watching about 84 episodes and clips of Sesame Street this last Christmas to convince the little one of her mistaken allegiance, the AmeriKat was reminded of how seamless and congruous Sesame Street's episode production is. Centered over a theme, a number and a letter every clip effortlessly teaches you, with a little humor, the building blocks of knowledge and human interaction. So on that theme, today's post is brought you by the following numbers and letters.....

You won't be finding any Cuban-made Havana Club rum
in the Supreme Court Justices' Conference Room

The letter 'R': The letter that stands for the AmeriKat's spirit of choice - rum - and subject of Monday's Supreme Court decision (not "decision decision") not to intervene in the on-going dispute over the rights of the HAVANA CLUB name in Empresa Cubana v Department of Treasury. The AmeriKat has previously written on a separate but similar strand of the trade mark infringement dispute relating to the Puerto Rican and Cuban rum saga between Pernod Ricard and Bacardi (here and here) over the HAVANA CLUB mark. Pernod Ricard who has an agreement with Cuba state-owned company, Cubaexport, is permitted to sell the Havana Club rum in every country under its US trade mark name - HAVANA CLUB- save for the U.S. where the Cuban trade embargo on goods produced in Cuba is still alive and kicking. Barcardi has made and sold Puerto Rican made rum under the Havana Club name since 2006 in the U.S.. However, the subject of the current case is the US Treasury Department's Office of Foreign Assets Control's recent refusal to renew Cubaexport's trade mark citing section 211 of the WTO-disputed Appropriations Act which makes trade marks confiscated by the Cuban government, such as by Cubaexport, unenforceable. The Court of Appeals for the District of Columbia (i.e. Washington) upheld the decision (see decision here). The decision by the Supreme Court not to grant the writ of certiorari leaves their decision in tact. Pernod stated that should the American embargo be lifted, it would start selling a new rum under a new mark - Havanista:

"In light of this decision, Pernod Ricard announces the registration of the trademark Havanista® with the USTPO. Produced and bottled in Cuba, Havanista® is a premium Cuban rum specifically aimed at the U.S market, which will be launched if the embargo is lifted. Havanista® will be a celebration of Cuban taste and culture in a genuine Cuban rum. It will benefit from the same high-level production processes and quality requirements as the Havana Club range."

For more information see Pernod's Press Release on the decision here.

The number 50 million: The number of people in the US since 1997, that have taken Bristol-Myers Squibb's blood-thinning drug Plavix. Plavix made $7.09 billion dollars in 2011. Even with the expiry of Plavix's patents last Thursday their market share is not predicted to change, according to Barbara Ryan, an analyst with Deutsche Bank as reported by Bloomberg. On the face of it, Plavix's patent expiry may have arguably paved the way for Eli Lilly & Co's and AstraZeneca's own blood-thinning drugs, Effient and Brilinta respectively, to gain more market share but the expiry of the patent does not mean that increasing the market share of their competitor drugs will be easy. In the pharmaceutical industry, once you have carved out your monopoly with patent protection and your drug has proved safe and effective in a patent's care plan, it is difficult for subsequent and competitive drugs to overtake that established market share even when your patent protection expires. Instead, Effient and Brilinta, as well as several new generic drugs, will have to concentrate on developing their new patient market. According to Seamus Fernandez, an analyst with Leerink Swan, Effient sales will peak in 2017 at $865 million and Brilinta may reach $1.77 billion, as compared to Plavix's 2011 sales of $7.09 billion. So perhaps, our little limited monopoly incentive ideals in patent and IP law aren't as limited as they may first appear....For more information see this New York Times article here and see guest Kat Norman's post on the recent Canadian litigation involving Plavix here.

The view of Director Kappos from the AmeriKat's
computer this afternoon as she listed to almost
2.5 hours of testimony....exciting times...

The letter 'A': The letter that starts the American Invents Act (AIA) (see previous posts here) which formed the subject of US Patent and Trade Mark Office (USPTO) Director David Kappos's testimony to the House Judiciary Committee last week (watch the full hearing here). Director Kappos reported to the Committee regarding the status of the implementation of the AIA of which seven provisions have been implemented and where the USPTO has published rules for a further nine provisions. Joining Director Kappos was the Senior Vice President and General Counsel of Eli Lilly, Robert Armitage (read his written testimony here), General Electric's Chief IP Counsel, Car"l Horton (read his written testimony here), President and Chief IP Counsel of 3M Innovative Properties, Kevin Rhodes (read his written testimony here), Richard Brandon, Associate General Counsel of the University of Michigan on behalf of the Association of American Universities (written testimony here) and Eliot Williams of Baker Botts LLP on behalf of several financial and banking associations (written testimony here).

As as well as outlining the continued work on the Trial Rules and various international arrangements such as the Patent Prosecution Highway, Director Kappos stated that with the adoption fo the AIA:

"the U.S. is now able to implement an optimal 21st century harmonized patent system – one that international negotiations have anticipated for the last 25 years. Congress has enabled the USPTO to not only act, but to lead in realizing a vision of an IP world in which national and regional patent systems are coordinated to create an optimal environment for technological innovation and diffusion. Passage of the AIA has provided an opportunity to restart long-stalled discussions with our foreign counterparts toward substantive harmonization that will help U.S. businesses succeed in the global business environment.

The USPTO is working to capture this opportunity, reaching out to our stakeholders and our counterparts in patent offices throughout the world, to work toward substantive patent law harmonization. During the first week of April, I visited several of our foreign counterparts to discuss this unrivalled opportunity for substantive patent law harmonization. During these conversations I stressed that a key issue to realizing international harmonization is European adoption of a modern grace period. The grace period has been adopted in many patent systems throughout the world and is recognized as a global best practice. We look forward to continuing these discussions."

[Merpel imagines that Baroness Wilcox will be taking note of such beautiful political soundbytes on the merits of "international patent harmonization" in case she is ever called back before the House of Common's Scrutiny Committee to give evidence on the European unitary patent proposals.]

Director Kappos also stated that the recent spate of mobile phone and technology patent disputes was not a by-product of a flawed patent system.

Congressman Watt
(D-North Carolina)

Congressman Watt: "Based on recent press accounts, technology companies seem to be engaged in a so-called patent arms race. Tech companies are spending a lot of money to buy patent portfolios and suing to block technologies in every conceivable venue...Over the course of this Congress we frequently heard representatives of the tech community argue that copyright infringement suits brought against tech companies by content owners stifle innovation. By that logic the rash of patent cases brought against tech companies by tech companies might stifle innovation. Can you give us your take on this and does litigation to protect intellectual property rights stifle innovation? Is there any reason to think that copyright litigation against tech companies stifles technological innovation any more or less than patent litigation?

Director Kappos: No, I don't think there is any reason to believe that any copyright or patent lawsuits of the kind that we are seeing in the so-called smart phone wars are a sign of stifling technological innovation. In fact much to the contrary... We've seen this movie many times before. We saw it when Boulton and Watt got into their fights in the 18th Century in England over the patents that started the Industrial Revolution...We saw it when the sewing machine was invented and then we saw it when the telegraph was invented...It starts with fundamental technology innovation that is transformative in nature. Then others come along and want to do incremental innovation on top of it. The original innovators, let's say the Apples of the world, as an example...have intellectual property positions resulting from massive investments, they seek to enforce those investments to level the playing field in some way and you have a dust-up as we are seeing right now. I don't believe its a sign that there is anything wrong with the innovation environment in the US, in fact I think it is a by-product of a very healthy overall innovation environment. These things happen, they sort themselves out over time -its a strength of our system that we have strong and balanced intellectual property rights that lets folks play their hands out in the way they are...I don't think its in any way a sign that there is some fundamental problem with patents across the board. It would be different if we were talking about non-innovators involved in these patent wars, but we are talking about some of the most innovative companies on the planet...I see it as a market reaction to a market development...in a tremendously competitive market."

Is Director Kappos correct or is it reasonable to point some blame on some arguably improperly granted patents?

The label she wishes she could
find in a new raincoat....dreams...

The number $100 million: The amount in damages that Manhattan federal court awarded British heritage label Burberry last week in a trade mark infringement lawsuit brought by the label against several Chiense websites using the Burberry trade mark and selling counterfeit Burberry goods. The court also awarded Burberry the domains from where the goods were being sold - yesburberryision.com and buyburberry.com. More importantly, it is reported that the judge also decided to afford Burberry the election to "hold third-party hosts; payment processors; search engines, such as Google, and social media sites such as Facebook and Twitter, accountable for associating with the infringing sites" such third-party services not being permitted to provide services or links to the sites. (The AmeriKat has not been able to hunt down a copy of the decision to ascertain exactly what the judge said, so if any kind readers find it please let her know.) The AmeriKat doubts that proving actionable "association" between third-party services and such links will be easy and may just prove to be rhetoric from the judge, District Judge Thomas Griesa. The Burberry decision is the third in a trio of robust trade mark counterfeit decisions this month in the U.S. which includes Judge Denise Cote's $100 million award to Hermes against similar counterfeit outfits trading on sites such as HermesBagsOutlet.org and HermesBirkin-Bags.org and Judge Ronald Guzman of the Northern District of Illinois's award of $686 million to Uggs's parent company Deckers Outdoor Corp in their lawsuit against 3,000 China-based websites. Under the US Immigration and Customs Enforcement's Homeland Security Investigations and the National Intellectual Property Rights Coordination Center's initiative - Operation In Our Sites - the US Department of Justice can recover defendants' monies collected by third-party sites, i.e., through payment processors, which makes it easier for rightsowners suing in the US to enforce their judgments against foreign defendants.

World Industries's skate shoe subject to Adidas's
complaint

The letter 'W': The letter which features on the side of the upper sole of World Industries's skater shoe (and which also stands for "World") which is the subject of a trade mark complaint brought by Adidas against the California based manufacturer. Adidas, whose famous three-stripe logo, filed its claim in Oregon federal court last week alleging that World has made unauthorized use of its three-stripes trade mark. Adidas's North American headquarters are located in Portland, Oregon. Adidas also sued Big 5 Sporting Goods which featured the offending shoe in a full-page ad. In the ad, an Adidas "Tip Off 2" basketball shoe with three stripes was positioned next to World's "Major" skate shoe. According to Adidas's complaint, the retailer also positioned the shoes next to each other in their stores. To Merpel and the AmeriKat, both can see, not three stripes, but the tip of King Triton's trident. According to World Industries' parent's president, Scott Chantos "we cap the top of our W so it looks like a pitchfork. And one of our logos is a devil holding a pitchfork." "Ahh...so not quite Greek mythology reference we were hoping for", says the AmeriKat. Do readers see or associate Adidas's three stripes with the shoe?

Shall We Thuuz Today? Only the Trade Mark Knows For Sure

noreply@blogger.com (Neil Wilkof) — Sun, 20 May 2012 11:19:00 +0000

One of my podcast staples is the hour-long lecture as part of the DFJ Entrepreneurial Thought Leaders Seminar here, under the auspices of Stanford University and the Stanford Technology Ventures Program here. Each week (well, weekly as long as classes are in session at Stanford) the Seminar brings a speaker of note with some connection to innovation and entrepreneurship. In addition to trying to get an ongoing feel for the culture and narrative from "entrepreneurship ground zero", this Kat listens to the broadcasts with a particularly idiosyncratic content fetish -- he pounces on every mention of IP. Despite the techie focus of most of the lectures (the Seminar is hosted by the Stanford Engineering Department), and the emphasis on how to turn monetize innovation, this Kat is continually surprised by the paucity of mention of IP topics. Rare indeed is a discussion on trade marks.

I was intrigued, therefore, by the brief Q&A exchange that took place between a lecturer, Warren Packard, a successful VC type in Silicon Valley, and a student in connection with Mr. Packard's 8 February address to the seminar. Mr Packard is currently the CEO of a start-up company named Thuuz, here. The company is described on their website as "revolutionizing sports entertainment" as follows:

"Thuuz alerts you to the most exciting sporting events as they're happening, so you never miss the action. We'll even tell you where to tune into these games, whether you're in front of your TV, computer, mobile phone or tablet. How does it work? Analyzing hundreds of factors, Thuuz rates the excitement of all live games on a scale of 0-100 so you can see which games are trending as most exciting. You can also find exciting games by seeing what your friends are watching. We'll even alert you when games reach a certain excitement level or when friends share games."

I suspect that the Thuuz algorithm worked overtime for a few minutes last week at the conclusion of the Manchester City v Queens Park Rangers English Premier League match. Indeed, it would be interesting to compare my sense of "exciting" with the scaled value generated by the Thuuz algorithm. In any event, in listening to Mr Packard's lecture, I was struck that IP was not mentioned, his two main themes being that: (i) the world of entrepreneurship is better characterized by the uncertainty of statistics than the certainty of calculus; and (ii) at least at the outset, staffing is the most important variable.

But what about the company's underlying technology, I wondered. Not unlike most of the lectures in this series, there was far less mention of the technology per se and no mention of how the company seeks to protect it. The closest the lecture got to addressing IP was a brief mention of the company's interest in reaching agreement to obtain more non-U.S. sports contents, e.g., the Indian cricket league.

"Well, there is one last IP chance", this Kat said to himself, as the Q&A begun. "Certainly there must be at least one member of the audience who is curious how the company views and protects its IP." I was right, but in an totally unpredictable way. The first question was straight out: how did the company choose its name (Thuuz)? Nothing about its algorithm or related technology, or about the challenges of copyright and broadcasting right clearance, but rather the simple question of how the company's name was chosen. The response by Mr. Packer was, as I recall, short and to the effect that the word, with a double "u", was available and that the mark suggests the word "enthusiasm.". Whether he meant the domain name or the trade mark is not clear; I assume the former, although I note that the company has also registered the mark THUUZ. Answer given and with no follow-up to it, the Q&A went on to consider other issues, none of which was connected with IP.

All of this reminded me once again that, more often than not, IP protection is a secondary concern in the world of entrepreneurs, whereby it is taken for granted that adequate IP protection will somehow be found. That said, the name THUUZ was seen sufficiently creative that it merited a question from the audience and that the selection of the mark was "successful". This further points to the conclusion that the decision to adopt the THUUZ trade mark was a reasoned one. As such, this albeit brief focus on trade marks in connection with the broadcast is interesting. As we discussed previously in our blogpost of 25 March here), surveys show that businesses value value trade marks more than they do all other IP rights. This brief exchange regarding the THUUZ mark suggests that there may be more of a role in providing trade mark advice to entrepreneurial ventures than we sometimes think.

Friday fantasies

noreply@blogger.com (Jeremy) — Fri, 18 May 2012 16:58:00 +0000

The best way to preserve
old blogposts? Turn
them into paper!

Old blog posts: still of value. The current (May/June) Internet Newsletter for Lawyers carries a neat piece by co-editor Nick Holmes entitled "Keeping up with IP law", which lists some twenty IP-flavoured intellectual property law blogs. After gazing intently for slightly too long at the bit which featured the word "IPKat", this Kat took a peep at some of the other sites listed. These include Abbe Brown's IPEdinburgh which, though silent since December 2010, contains a good deal of fascinating archived material reaching back to May 2005. Also silent, though only since December 2011, is law firm Bonallack & Bishop's Intellectual Property Lawyer blog. Over the years a number of other IP blogs have ceased production, of which two of the most notable and high-profile examples are those of Lawrence Lessig (hibernating since August 2009) and Bill Patry (occasional lapses into consciousness since August 2010 but no stirrings since March 2010; contains fine memorials of Barbara Ringer and Sir Hugh Laddie). All of this has set the Kat wondering: can any reader tell him what archival measures, if any, have been made for preserving old legal blogposts (i) in the UK and in other jurisdictions and (ii) by public sector and privately funded initiatives?

IP education for non-lawyers in Ireland: can you help? "Hello Kats!", exclaims our friend Laura Prado. She continues [after the usual paean of praise, deleted on account of the Kats' inherent modesty], "Since I have no formal law training (I graduated in journalism and have half of a graduate diploma in IP - but this is a long story), I'm looking for recommendations of places where a non-law degree holder could go to continue her studies in intellectual property, in Ireland. Perhaps taking a full law degree would be more useful, regardless or my specific interest? My searches online didn't return good results, so I'm going to the best source I know. I don't intend to become a lawyer, but I'm looking to grow as a consultant for companies with IP-related issues. Any help will be very appreciated". Are there any courses? Or, if not, is there enough demand to make it worth running one? Comments, please!

... to this?

From this ...

IPO on the move. We all know that public sector bodies in Europe are a bit short of money these days. Can it be for this reason that the UK's illustrious Intellectual Property Office is moving its London premises? As of 21 May 2012 [that's next Monday, for the uninitiated], the IPO is packing its bags and moving to first floor premises at 4 Abbey Orchard Street, London SW1P 2HT. for those readers who still use telephones as their preferred means of making contact with civil servants, news is that there will be no change to the telephone numbers for the office, so you can still listen to the IPO's much-loved alphanumerical voicemail recording: "press 'P' for patents, 'T' for trade marks, 'D' for designs, 'W' for Wallace and Gromit ..."

Like confectionery, legislative
amendments are often more
palatable when they're
all mixed up together

Legislative assortment. The Crime and Courts Bill was laid before the United Kingdom Parliament earlier this week. It's a mixed bag of provisions, which include the repeal of bits of the Copyright Designs and Patents Act 1988 so that the Patents County Court can be reconstituted as a free-standing court within the Chancery Division. The changes will not affect the service provided by the court at present, which means that its procedures, special cost rules and limits, financial limits and (not-yet-operative) small claims track will remain unscathed. Don't read this if you're coming up for retirement, since the changes won't take effect till 2013/14 [katpat to Graham Titley for the link].

Little-known fact:
Scotland developed
the world's first bellows-
powered portable
computer ...

Jobs for the lads -- and lasses. There's a IP lectureship which is being advertised for the School of Law in Edinburgh, somewhere near the frozen wastes of Northern Britain. If you fancy taking a shot at it, or even if you're just curious to know all about the terms and conditions under which Scottish academics operate [there are not many institutions in the world that offer lecturers a quart of whisky and half a ton of coal a month on top of their ordinary pay and increments, says Merpel], just click here. And if you'd like to try Edinburgh out for a couple of days and see if it agrees with you, there's a jolly SCRIPT conference coming up between 6 and 8 June. The link is here but be warned, they sometimes turn the central heating off in June ...

They can't do worse than Hargreaves ...The IPKat's friend Professor Ruth Soetendorp has written to tell him that, as from this morning, students at UK universities and colleges have been given the opportunity to express their views as to what they think about intellectual property. She explains:

iPan and docking unit

"A survey, initiated and steered by IPAN (Intellectual Property Awareness Network), funded by the IPO, and designed and administered by the National Union of Students Services Research Department, has gone out to students in all faculties at all levels. Questions are designed to elicit students' current attitudes to IP, their experience (if any) of IP learning and teaching, and their expectation of the role IP will play in their future careers. Through careful dissemination the research is expected to benefit students and their union, higher education institutions, professional bodies and governmental policy makers. We look forward to sharing the findings in due course".

Will over-exposure set in? A postscript to the "Mein Kampf" copyright saga

noreply@blogger.com (Birgit Clark) — Fri, 18 May 2012 12:37:00 +0000

As an aside, Charlie Chaplin's
movie The Great Dictator was
banned in several countries

Our readers may recall the copyright dispute over Adolf Hitler's infamous Mein Kampf ("My struggle") between a British publisher who had planned to publish selected excerpts of Mein Kampf in Germany and the Bavarian state government which is the copyright holder and who pulled all legal stops to prevent the publication (see earlier IPKat posts here, here and here).

By way of background: contrary to popular belief (in Germany), Mein Kampf is not banned in Germany but can be freely re-published when the copyright held by the Bavarian State government (more precisely the Finance Ministry) is set to expire in 2015 - 70 years after Hitler's death. The Bavarian State government took over the rights of the main Nazi party publishing house Eher-Verlag after the end of World War II as part of the Allies' de-Nazification programme.

The Regional Court of Munich I (LG München I) in March 2012 confirmed its preliminary injunction of 25 January 2012 and stopped the publication of this annotated version (see Monika Bruss's excellent summary of this decision on the 1709 Blog here. Subsequently, in what appears to be a never ending story, Bavaria's Finance Minister Markus Söder in April then announced that the Munich-based Münchener Institut für Zeitgeschichte (Institute of Contemporary History, "IfZ") would soon publish an annotated version of the book as well as an edition for use in (Bavarian) schools. This was reported before (see the IPKat here) but Mr Söder's approval of this edition is newsworthy.

Not this is not enough, it appears. Now the magazine Der Spiegel reports that the German Bundeszentrale für politische Bildung (BPD), a governmental political education organisation, plans to prepare a special annotated edition of Mein Kampf to be used in German schools. The BPD's director, Thomas Krüger, is cited as saying that today's youth would most likely stop reading the book after a few pages and would wonder "what kind of weirdo" the author was (presumably if the book was written today, Merpel feels obliged to add).

Some German commentators argue that all this is going too far and that the book is receiving far too much publicity, with potentially negative consequences bearing in mind its underlying ideology. Others argue that whoever wanted to read the book will have found a way to do so by now.

While this Kat one the hand thinks it may not be a bad a idea to demystify the book, she is still very much against having its content spread. Having said that, this Kat also noticed that, while she got excited about Mr Söder's announcement in April when she first read about it ("hey, another development!"), she very soon forgot about it completely and never finished her initial IPKat posting … maybe all this publicity has another effect on potential readers: overexposure, leading to consequent fatigue.

In A Galaxy Far Far Away - More on Samsung v Apple

noreply@blogger.com (Darren Smyth) — Fri, 18 May 2012 12:27:00 +0000

This kat was saying just the other day that electronic subject matter is not really his thing, unless the IP right in question is a registered design. So imagine his excitement at finding the case of Samsung Electronics (UK) Limited and Anr v Apple Inc listed for Monday 21 May 2012.

Not really made for cats...

It actually won't be in a galaxy far far away, but will be at the Royal Courts of Justice in London, before the Master of the Rolls, Lord Justice Lloyd and Lord Justice Moore-Bick, and concerns an appeal from the decision of Mr Justice Mann reported by this Kat here, concerning the Samsung Galaxy tablet computer and Apple's registered community design 000181607-0001.

More details than this don't appear to be available. But the IPKat can't wait to get his feline fangs into another juicy registered design decision. This particular kat will be travelling in the orient next week, but will be checking the usual sources for information to share with his dear readers. But if any reader attends the hearing, then the IPKat would love to hear what happens.

Sales of illegal software last year hit US $63.4billion. Was it YOU?

noreply@blogger.com (Catherine Lee) — Fri, 18 May 2012 12:00:00 +0000

Some placed where
software copyright
is infringed

To accept the licence terms,
press "paws"

This Kat is aware that many other people use unauthorised software, however she was not aware of the numbers involved until she read the Business Software Alliance 9th annual Global Software Piracy Study. The Study found that, globally, 57% of personal computers use illegal software. The commercial value of this software in 2011 was US $63.4 billion (up from US $58.8 billion in 2010). This increase was due to emerging economies extending their share in the global PC market: emerging economies took 56% of last year's PC shipments and emerging economies have a high rate of illegal software use (68% in emerging economies as opposed to 24% in developed economies).

According to the BSA press release other key findings were:

There is strong global support for IP rights and protection in principle, but a troubling lack of incentive for pirates to change their behaviour in practice. Just 20% of frequent pirates in mature markets — and 15% in emerging markets — say the risk of getting caught is a reason not to do it.
The most frequent software pirates are disproportionately young and male — and they are more than twice as likely to live in an emerging economy as they are to live in a mature one (38% to 15%).
The most frequent software pirates also are the most voracious software users. They report installing 55% more software on their computers than do non-pirates. This gives them an outsized impact on the global piracy rate.
Business decision-makers admit to pirating software more frequently than other users — and they are more than twice as likely as others to say they buy software for one computer and then install it on additional machines in their offices.
By its sheer scale, China has the most troubling piracy problem. China’s illegal software market was worth nearly US $9 billion in 2011 versus a legal market of less than $3 billion, making its piracy rate 77%. Moreover, buyers in China spend just $8.89 per PC on legal software, less than a quarter of the amount buyers spend in other BRIC markets.

In response to these findings, BSA President and CEO Robert Holleyman stated:

'If 57 percent of consumers admitted they shoplift, authorities would react by increasing police patrols and penalties. Software piracy demands a similarly forceful response — concerted public education and vigorous law enforcement'.

The IPKat has been musing over the statement of Robert Holleyman that, "if 57 percent of consumers admitted they shoplift, authorities would react by increasing police patrols and penalties". That's true but, if the authorities did react in that fashion, consumers would soon stop admitting that they were shoplifting ...

Merpel says, it would be a very good thing if computer users respected software copyright -- but it would also be good if software companies did more to make themselves lovable. Having twice been stung by having to pay automatic renewal fees for software which she had ceased using, and having also been frustrated at having to pay for bundled software that included loads of unwanted functionality as well as the bits she did want, she thinks she can understand why many consumers feel little sympathy towards software houses when faced with the opportunity not to enrich them further.

Rospatent makes it three-in-a-bed for Patent Translate

noreply@blogger.com (Jeremy) — Thu, 17 May 2012 22:42:00 +0000

The IPKat has read with fascination of the agreement which the European Patent Office (EPO) and its Russian counterpart Rospatent have signed in order to "facilitate innovation" by cooperating in the mechanical translation of patents. The EPO press-release (presumably there is a mechanically-translated Russian text too) reads as follows, in relevant part:

"The EPO and the Federal Service for Intellectual Property (Rospatent) have agreed to enhance co-operation in the promotion of innovation by enabling machine translation of patents from and into Russian. Under the Agreement ..., Rospatent and the EPO will exchange full-text versions of patent documents in Russian and English to create bilingual text corpora for use in the free Patent Translate service [that's the EPO's love-child, from its relationship with Google] on the EPO's website.

"For the first time in the history of the European patent system Russian-language patents will be made available to the users This agreement breaks new ground in the relationship between the EPO and Russia," said EPO President Benoît Battistelli. "It will bring the wealth of technology contained in patents to the fingertips of innovators in both our regions, removing language as a delimiting factor," he said [Gosh, says Merpel, how have inventors and innovators ever managed before, without all that groundbreaking fingertip business?].

"The information function of patents cannot be rated high enough [Really? Then how come the most inventive folk in the ICT sector keep telling us that there are so many patents out there that it's neither cost-effective nor even technically worthwhile reading them? Aren't they only fit for cross-licensing or mischievously selling to the trolls?]. Innovation is a global market [no it's not -- it's a process which may, if we're lucky, help to establish and develop a market], and by making their respective collections of patent documents accessible to researchers, scientists and inventors in Russian and English, the EPO and Rospatent significantly contribute to strengthening the innovation process both in their regions and at worldwide level. Especially small and medium-sized enterprises [Aha, says Merpel: this is the usual lip-service to SMEs in paragraph three of the press release], as well as research institutions, stand to benefit from this improved access to information on new technologies," President Battistelli stated.

"This agreement will facilitate the filing of patent applications by Russian companies in the rest of Europe and by European companies in Russia," said Boris Simonov, Director General of Rospatent. "This in turn will lead to further innovation in our two regions."

The enhanced relationship between Russia and the EPO is reflected in the trends in recent filing figures. For example, applications filed by companies from EPO member states with the Russian patent office saw an increase by approximately 10% from 2010 to 2011. The number of applications filed by Russian inventors and companies at the EPO in 2011 was up 19% on the previous year [while percentages without basic numbers can easily mislead, these do at least look encouraging -- and that's without the benefits of the new agreement]".

The IPKat is not averse to the cooperation of the EPO and/or Rospatent on technical matters such translations, and indeed is even inclined to welcome it -- but he does wish that cooperation of this nature was not garnished with rhetoric and wild generalisations about IP and innovation that detracts from, rather than supports, the institutional achievements of patent administering bodies. They can mislead, raise expectations beyond the point at which they can be fulfilled and also make it more difficult for policy-makers to establish priorities within each sector in which intellectual property administrations interface with the world of business and commerce [he must be thinking of the European Observatory again, muses Merpel].