The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Saturday, 31 October 2009

The IPKat team welcomes a new Kat

The IPKat is delighted to announce an addition to his blogging team: Mark Schweizer, an associate in the Zurich, Switzerland practice of Meyer Lustenberger and a respected contributor to the Class 46 European trade mark blog. Good luck, Mark, we're all looking forward to that touch of continental colour which you can give us from somewhere up in the Alps ...

Friday, 30 October 2009

And the next EPO President is ...

Following his post earlier this week, the IPKat has just heard that the EPO Administrative Council have failed to reach an agreement on who should be the next EPO President. None of the candidates managed to get the required qualified majority of three quarters of the votes cast by member states. The Council has therefore decided to continue the election process at its next meeting in December.

The IPKat is slightly disappointed at this news, but on the other hand is heartened that his poll results might now be useful to tell the Administrative Council which way they should be voting. After 179 votes, the poll gives the Swedish candidate Susanne Ås Sivborg a commanding lead with 107 votes, 59% of the total. The next highest scoring candidate, Roland Grossenbacher (apparently the current front-runner), has so far managed only 29 votes.

If you have not yet voted for your favourite candidate, please do so. The poll is still up on the sidebar and, given the recent news, the IPKat has decided to leave the poll open for another week to give everyone interested a chance to have their say.

Friday fantasies

The IPKat's sidebar, as ever, is bulging with exciting opportunities to attend live talks, do a spot of networking and generally get out of the office or college routine for a bit and, well, live it up! There are plenty of events on offer, so don't forget to check them out.

There have been a few changes to the IPKat weblog of late. Following suggestions that the former colour scheme was (i) not particularly attractive or (ii) called to mind other IP blogs that share the same template (Spicy IP and SOLO IP, to name but two), the IPKat decided to go blue with some red and yellow trimmings. He likes it; Merpel wishes it were pink and purple. Another change is the addition of a blogroll that lists some of the other weblogs with which IPKat team member Jeremy is associated. Apart from one slight glitch, which is that the blogroll insists that Fashionista-at-Law last posted anything half a year ago, this feature seems to working tolerably well.

The IPKat's friend Professor Toshiko Takenaka is coming to London in December where she will give a talk on the differences between patent litigation in the United States and Japan. If you'd like to hear on on Tuesday 8 December, you can find the details here. Another of the IPKat's friends, trade mark guru and IP Finance blogger Neil J. Wilkof, will be giving a lunchtime talk in Central London a week later, on Tuesday 15 December. The subject will be the role played by trade secrets in business. The venue is still to be confirmed. Meanwhile, if you're thinking of coming, email Jeremy here and let him know; he'll send you the details when they materialise.

Here's something for patent-y people to play with. Finding patents that are identical to your own is all very well, but finding patents that aren't the same, yet somehow relevant, is more of a challenge. The good news is that now you can look for similar patents, using

MI5 and police oppose internet disconnections. The IPKat thanks Paul Jakma for this link to a fresh set of insights into the 'three strikes and you're out' debate. It seems that you more you think about the significance of people not having an online presence, the more problems spring up. Law is slow to change and tends these days to run along some distance behind the technologies it seeks to regulate -- while the rate of technological change rattles along merrily, as does the rate at which consumers, ever-younger and more sophisticated, explore and adopt those techno-changes.

Around the blogs. The JIPLP Blog is thrilled to have secured its first 50 email subscribers (now over 60, actually) within 24 hours of launch; as an interactive accompaniment to the Oxford University Press monthly Journal of Intellectual Property Law and Practice, the blog has already added two new sidebar features: 'Articles in search of an author' and 'Authors in search of an article'. Meanwhile, the IPKat welcomes a new entrant to the IP blogosphere, Raymond Hegarty (left) of Intellectual Profit. A self-styled IP evangelist, Raymond's creed involves "deriving profit with IP management". Good luck, Raymond, we'll all be watching you ...

OHIM has been having fun ... and so has the IPKat, who has been pawing at the Office for Harmonisation in the Internal Market's "Hands off my design" teaching and games site. The thing he likes about it best is the lengthy disclaimer, which among other things reassures the reader that its contents are "not necessarily comprehensive, complete, accurate or up to date". Merpel says, I want to know if the student illustrated on the right is male or female ...

The IPKat has been hearing all about the evening events which Appleyard Lees has been running for almost a year now in sunny Manchester for part-qualified and recently-qualified patent and trade mark attorneys and IP solicitors. The formula consists of a brief lecture followed by an opportunity for socialising over food and drinks [The events are free and are open to everyone. The Kat's wondering who buys the booze ...]. So far, reports the Kat's mole, these events have had some excellent speakers from the EPO, UK IPO and the Bar. Now it seems the organisers are looking for volunteer speakers to step forward and offer their talents. If you fancy a shot at public speaking on an IP topic and enjoy socialising afterwards, or only want to be added to the mailing list for forthcoming events, email here.

Thursday, 29 October 2009

French speakers, visual similarity sink AGILE mark

Today's pick of the Community trade mark appeals is Case T‑386/07, Peek & Cloppenburg v Office for Harmonisation in the Internal Market, Redfil. Redfil applied to register the 'Agile' figurative mark (right) for 'bags, rucksacks’ (Class 18), 'sport footwear, shirts, vests, jackets, pullovers, socks, trousers, hats, berets, visors’ (Class 25) and 'golfbags, golfing gloves, golf clubs, games balls’ (Class 28). Peek & Cloppenburg opposed, citing various national and Community trade mark registrations for the word AYGILL'S for goods in Classes 3, 6, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 27 and 28 and maintaining that, on account of the similarity of the respective marks and the similarity/identity of goods, there was a likelihood of confusion among the relevant consumers.

The Opposition Division agreed and upheld the opposition. The Second Board of Appeal had other ideas. Since the earlier national registrations and the earlier Community registration were identical, the Board based its decision exclusively on the CTM. However, while the relevant respective goods were identical, the marks were only slightly similar: they were visually similar only to a low degree, their phonetic similarity was limited to French; there was no conceptual similarity. Accordingly, on a global assessment of the likelihood of confusion, despite the inherently distinctive character of the earlier mark and the identity of the goods in question, there was no likelihood of confusion between the marks. The degree of phonetic similarity between two marks was held to be of less importance here, since the respective goods were marketed in such a way that the relevant public, when making a purchase, usually perceived the mark designating those goods visually.

Peek & Cloppenburg's appeal to the Court of First Instance was upheld and the decision of the Board was annulled. Said the Court:
"25 ... the first four letters of the mark applied for, namely ‘a’, ‘g’, ‘i’ and ‘l’ are included in that order amongst the first five letters of the earlier mark, namely ‘a’, ‘y’, ‘g’, ‘i’ and ‘l’. Furthermore, it should be noted that the mark applied for has only five letters and that the earlier mark has only seven and that, therefore, they have in common a majority of the letters of which they are constituted. It can be deduced from those elements that the consumer will perceive the signs at issue as being visually similar despite their different ending, namely the letter ‘e’ for the mark applied for and the letter ‘l’ followed by an apostrophe and the letter ‘s’ for the earlier mark. In that regard, it should be recalled that, according to established case-law, the consumer generally pays greater attention to the beginning of a mark than to the end [citation omitted]. ...

27 ... the Board of Appeal was wrong to take into account the particular font used by the mark applied for in its comparison of the signs at issue. As the applicant is correct to note, since the earlier mark is a word mark, its proprietor has the right to use it in different scripts, such as, for example, a form comparable to that used by the mark applied for [citation omitted].

28 ... the Board of Appeal’s analysis of the visual comparison of the signs at issue was incorrect in so far as it concluded that there was only a low degree of similarity there, there being, at least, an average degree of visual similarity between them. ...

34 ... the signs at issue are visually and phonetically similar, but conceptually different.

35 ... conceptual differences can in certain circumstances counteract the visual and phonetic similarities between the signs at issue. For there to be such a counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately [citation omitted].

36 However, ... the conceptual difference between the signs at issue is not, in the circumstances of the present case, such as to neutralise the similarities found to exist.

37 ... in light of the visual and phonetic similarities between the marks Aygill’s and Agile, it cannot be excluded that consumers of the goods in question might attribute the same conceptual content to the earlier mark as to the mark applied for.

38 Therefore ... it is apparent that the effect of the conceptual difference between the signs at issue could attenuate the established visual and phonetic similarities, but not neutralise them.

39 It follows that the signs at issue must be considered to be similar overall, but to a low degree with regard at least to the French-speaking public, which, apart from a visual similarity, will also perceive a phonetic similarity between them".
Since there was a greater degree of similarity than that found by the Board, the Board was wrong to exclude that there could be a possibility of a likelihood of confusion, .

The IPKat suspects that he has not heard the last of this case. While he agrees that the degree of similarity between the marks is greater than that which the Board found, as a non-Francophone feline he does not feel qualified to make his own assessment of the degree of similarity or its impact on the consumer. However, this case looks like a close call and Redfil, having gone so far and trailing 2-1, may reckon that it has little to lose from an appeal to the Court of Justice.

Out today! WIPO's new IP journal

The IPKat congratulates publishers Sweet & Maxwell on getting issue 1 of the new WIPO Journal out on time (you can get all the necessary details here). His excitement is of course nothing to do with the fact that one of IPKat team member Jeremy's little pieces of pungent prose slipped gracefully past the peer reviewer and glided into the new title. Normally the IPKat would not have mentioned his contribution, but for the sake of completeness and in the interest of truth he felt he should mention that it was a fun thing to write.

Right: it has been a long time since the IPKat ever had to submit an article in pencil

Anyway, the substantive contents of the first issue look like this:
"The global intellectual property order and its undetermined future: Peter K Yu

The pre-history and establishment of the WIPO: Christopher May

International norm-making in the field of intellectual property: a shift towards maximum rules? Annette Kur

Some consequences of misinterpreting the TRIPS Agreement: Susy Frankel

Seizure of generic pharmaceuticals in transit based on allegations of patent infringement: a threat to international trade, development and public welfare
Frederick M. Abbott

Threshold requirements for copyright protection under the International Conventions: Sam Ricketson

Rethinking of copyright institution for the digital age: Yoshiyuki Tamura

Internet piracy as a wake-up call for copyright law makers – is the “graduated response” the good reply?? Alain Strowel

The Lisbon Agreement’s misunderstood potential: Daniel Gervais

What is “traditional cultural expression”? – international definitions and their application in developing Asia: Christoph Antons

One hundred years of progress: the development of the intellectual property system in China: Handong Wu

The China-US relationship on climate change, intellectual property and CCS: requiem for a species? Peter Drahos

Intellectual property and the transfer of green technologies: an essay on economic perspectives: Keith E Maskus

I wouldn't want to be starting from here, or why isn't intellectual property research better than it is? Jeremy Phillips".

Drawing a blank

The IPKat's friend Richard Pringle (Shell) asks a non-work-related question, which has lots of ramifications:

"Could you please tell me, or point me in the direction where I might find out, why trade marks (and other IP) are often blanked out or avoided in other ways in films, TV shows, advertisements, etc?
E.g. the Apple logo is often blanked out on its laptops in advertisements for car insurance and many other things. The same occurs in a house-buying TV show when the participants sit at home and “watch it on the laptop”. I assume the design of the laptop (which is visible and recognisable) is a registered design, even if it’s not a registered TM; but with that level of recognition it could be registered as a TM. In car insurance advertisements, I’ve seen representations of cars with their badges removed; I’ve also seen invented representations of cars that look like a hybrid of a variety of identifiable models from different manufactures, the end result being arguably damaging to allure of the component cars. In a film I recently saw (Fish Tank), the producers had gone to the trouble of using made-up alcohol branding for all the cans and bottles in the film (scenes of alcohol abuse were portrayed in this film, but only as small element of the whole film).

What about exhaustion of rights or any of the other reasons why this type of use (if it went ahead) could be said not to be infringing use, or any of the defences to infringement?"
The IPKat is no admirer of the restrictions placed on product placement which, even though they have been lifted somewhat in Europe, still seem misplaced and arbitrary. Viewers in the United States have been exposed to the phenomenon for decades with no apparent ill-effects, and since commercial advertisements are part of our everyday life it has always seemed to him to be pointless and misconceived to blank them out of TV productions. Merpel agrees and adds: if for the sake of reality they don't blank out swear-words or nudity, it seems silly to blot out Apple logos, doesn't it? Tufty says, I'd like to do some reverse product-placement, like threatening to dress a really obnoxious character in a popular brand unless the brand owner pays me to blank it out!

The Truman Show here
How to draw a blank here
Check out the brands that aren't blocked out on BrandChannel's Brand Cameo

Wednesday, 28 October 2009

Deere, Deere: red faces in battle for yellow and green

There was a colourful ruling of the Court of First Instance of the European Communities (CFI) today in Case T‑137/08, BCS SpA v Office for Harmonisation in the Internal Market, Deere & Company, an appeal against the decision of the Second Board of Appeal not to invalidate Deere's Community trade mark.

In 1996 Deere applied to register the colours depicted on the right for 'attached, pushed or self-propelled agricultural and forestry machines’ in Class 7 and 'self-propelled agricultural and forestry machines, in particular farm tractors, small tractors, land tractors and trailers’ in Class 12. The colours were designated using the Munsell system as 9.47 GY3.57/7.45 (green) and 5.06 Y7.63/10.66 (yellow). Their arrangement was described as being ‘green for the vehicle body and yellow for the wheels’, as shown by the picture attached to the application and reproduced on the left. The marks were registered in 2001.

Three years later BCS SpA sought a declaration of invalidity in respect of all the goods protected by the registration of the mark, maintaining that it was devoid of distinctive character when the application was filed and that there had been insufficient proof of distinctive character acquired through use. A second ground of attack that the mark had been registered despite the existence of an Italian non-registered trade mark, also consisting of a combination of the colours green and yellow. Said BCS, the use of that unregistered mark before 1996 in relation to ‘agricultural machines, in particular farm tractors, small tractors, land tractors and trailers’ in ten EU member states gave it the right to prohibit the use of a subsequent trade mark consisting of those colours.

The Cancellation Division was unimpressed with this assault on the mark's validity and dismissed the application for the declaration. In its view BCS had not shifted the burden of undermining the evidence submitted by Deere of distinctiveness acquired through use. Further, even though BCS had shown that it had used the colours yellow and green on various types of agricultural machinery before the filing date of the disputed mark, it had not proven that, before that date, that sign was perceived as an indication of commercial origin by the relevant public in the territories concerned. The Board of Appeal dismissed BCS's appeal, so the company tried its luck with the CFI -- but to no avail, the court dismissing BCS's claims and ordering it to pay costs.

The CFI carefully reviewed the decision of the Board of Appeal and its approach to the evidence before it, concluding that BCS's case was plainly deficient. Among other things, the CFI reminded the litigants that the burden on Deere of establishing distinctive character was not as heavy as BCS would have liked:
"39 ... lthough it must be proved that the disputed mark has acquired distinctive character throughout the Community (see, to that effect, Case C-25/05 P Storck v OHIM [2006] ECR I-5719, paragraph 83), the same types of evidence do not have to be provided in respect of each Member State".
Thus surveys in some States can be supplemented by documentary evidence in others. The CFI also said this about BCS's own attempt to establish that it had a sufficient reputation in the colours to prevent Deere's use of its mark:
"73 First, it is common ground between the parties that the applicant ceased, at least from 1973 to 1982, to use the combination of the colours green and yellow on its goods in Italy. Although it would have been possible for the applicant to acquire a non-registered right in its sign through the use from 1983 to 1996 it did not do so. It is also apparent from the findings ... that it did not use the combination of the colours green and yellow in a consistent and uniform manner. On the contrary, it used a number of shades of green and yellow as well as a combination of the colours green and white.

74 It follows that the suspension of use of the combination of the colours green and yellow as a mark and the varying use of those colours were liable to prevent the public from systematically associating the applicant with a specific combination of colours.

75 Secondly, the Board of Appeal was fully entitled to regard the evidential value of declarations made by former employees of the applicant as questionable. ... those declarations were not corroborated by other evidence in the file and they were even partially disproved.

76 Thirdly, the Board of Appeal cannot be criticised for having found that the market survey submitted by the applicant was not persuasive. ... the Board of Appeal was fully entitled to point out ... that the participants in that survey, contrary to that carried out by [Deere], had not been asked for their reasons for giving a particular response and had not been shown a different image in a different colour in order to ensure that they did not recognise the image because of criteria other than the colour. Those facts are not disputed by the applicant. Consequently, it cannot be ascertained whether, at the end of the applicant’s survey, the participants recognised the applicant’s goods solely as a result of their colours and not as a result of their shape or other factors.

77 It must also be stated that the Board of Appeal was fully entitled to find that the evidential value of the applicant’s survey was noticeably lower than that of the survey submitted by [Deere], since the respondents in the applicant’s survey had been asked to recreate from memory their perception of the marks 10 years previously".
The IPKat thinks this decision is clearly correct, but also feels some sympathy with BCS who, having previously used green and yellow livery themselves, must have felt a little miffed at Deere coming along -- as they were entitled to do -- and gaining the upper hand through a valid trade mark registration. However, if your competitor gets the green and yellow, isn't it better to spend money on teaching the public to recognise a new set of colours than to spend five years in pointless and fruitless litigation? Merpel wonders about the para.77 point: could it not be argued that, if the respondents still retained a perception of marks for a whole decade, those marks must have made a really powerful impression upon them?

Yellow and Green here
Green and Black here
Test yourself for colourblindness here
Are cats colourblind? Click here

Wednesday wround-up

O death, where is thy sting... ? If your internet connection dies on you, before you check that your cable is still plugged in, that your router is twinkling away and that your server is operational, ask yourself whether you are in the catchment area of Lord Mandelson, a.k.a. The Terminator. According to the BBC, speaking at a government-sponsored forum he said the UK would introduce a similar policy to the French "three strikes" law: "persistent pirates" will be sent two warning letters, before facing disconnection from the network. It has been unkindly said of his Lordship that he understands better than others the operational functionality of a "three strikes" rule since, in the days before his ennoblement, he twice had to resign from a government position on account of his having done nothing wrong. [Thanks, Howard Knopf (Excess Copyright, for spotting this]

... O grave, where is thy victory? Newport, in the beautiful principality of Wales, is the location of the United Kingdom's excellent Intellectual Property Office. Earlier this week the IPO issued a press release with the most depressing title the IPKat has ever seen, bearing in mind how many patents are optimistically filed and how many inventors' aspirations are mercilessly crushed beneath the weight of development costs, competition and unresponsive consumers. The title reads thus: "First Minister Rhodri Morgan guest of honour as ideas of the future are buried in Newport". The press release, which is not as miserable as its title, can be read here.

Young, gifted and ... suitably qualified. Earlier this week the IPKat announced the launch and inaugural meeting of IPSoc, the new organisation for bright, young, dynamic, charming and suitably qualified IP practitioners. The response has been terrific, not least from bright, young, dynamic, charming in-house IP practitioners who wanted to know why they had been excluded from IPSoc membership. The good news, say twin IPSoc powerhouses Charlotte and Juliette, is that

"Due to popular demand, the in-house issue was raised with the IPSoc committee which has voted in favour of removing the private practice restriction and therefore admitting IP practitioners who are in-house and fulfil our qualification criteria.

We would be extremely grateful you would post a further ad on IPKat to this effect - the Standing Orders of the Constitution and membership forms have been amended to reflect this and can be accessed from our holding page".
The IPKat is delighted to oblige, adding that the ability to execute a graceful u-turn -- though not an admission criterion for IPSoc -- is an inestimably valuable talent in later professional life.

Tuesday, 27 October 2009

Oxford IP journal gets its own weblog

JIPLP (pronounced "jip-lip") is the name of the new weblog which is to run in tandem with the Journal of Intellectual Property Law and Practice, the monthly periodical published by Oxford University Press. The JIPLP weblog is intended as a low-volume weblog which will post a relatively small number of items each month; it is emphatically not a news service: in the main, its content will be selected from Current Intelligence notes that have already featured in the journal, as well as some of the Editorials, comments, corrections, amendments and updates relating to features previously published in the journal.

Although this weblog is intended primarily for the journal's subscribers, the decision was taken to make it more generally available to the intellectual property community. It is hoped that the prospect of a wider readership will encourage more authors to submit Current Intelligence pieces for publication. Additionally, the comments of readers help to serve as a reality check and provide a degree of quality control since, while the major articles published in the journal are peer-reviewed, Current Intelligence contributions cannot be effectively peer-reviewed without loss of currency.

The Journal of Intellectual Property Law and Practice is available both in traditional paper format and online. You can visit the journal's website here and the new JIPLP weblog here.

Monday, 26 October 2009

Who should be the next EPO president?

The professional body for European Patent Attorneys epi has recently announced the results of interviews with each of the four candidates for the post of EPO president, which will become vacant when Alison Brimelow departs at the end of June 2010.

The four candidates are:
The final decision will apparently be made at the next meeting of the EPO Administrative Council, starting tomorrow in Munich. The IPKat is entirely impartial in this matter, but would be interested to see who his readers think should be elected as the next president. To find out, he has placed a new poll on the sidebar. Please cast your vote before the poll closes, and we find out the real result, this coming Friday, 30 October.

Are YOU a junior IP practitioner?

The IPKat’s ears pricked up when he heard about IPSoc, a new society which will bring together junior barristers, solicitors, patent & trade mark attorneys in private practice for a spot of learning and socialising in a fun and relaxed environment. Although IPSoc may be new, it already has an impressive pedigree, with Committee Members drawn from establishments as august as 3 New Square, Bird & Bird, Bristows, Field Fisher Waterhouse, Gill Jennings & Every, Howrey, Lovells, Olswang, Roiter Zucker, Simmons & Simmons, Taylor Wessing and Wragge & Co.

Kicking off on 23 November with an inaugural speech from that anything-but-junior Lord Justice of Appeal, the Honourable Sir Robin Jacob, IPSoc looks set to be the number one forum for junior IP practitioners in private practice. Although membership applications will continue to be accepted for the membership year to November 2010, space at the inaugural event is limited to 150 attendees and places will be allocated on a first-come, first-served basis. According to IPSoc's organisers, who are not averse to putting a word or two into the IPKat's mouth

"IPSoc is the brainchild of a group of dynamic young lawyers from Bristows, Field Fisher Waterhouse, Howrey, Roiter Zucker and Simmons & Simmons. With an impressive speaker list, creative “educationals” to mop up those pesky CPD points and fun social events all on the agenda, IPKat wonders whether for £35 annual membership, any self respecting Kat-in-the-making can afford not to be a part of this exciting venture? Says the IPKat, Oh, to be a kitten again!"
For more information on IPSoc and on how to become a member please visit its website or email IPSoc chair Charlotte Weekes of Roiter Zucker, being sure to include the word IPSOC in the subject line.

The IPKat congratulates the organisation's founders and thanks them for the coffee they treated him to. Merpel is sure that Lord Justice Jacob will have no trouble finding a theme which is suitable for an infant organisation for the benefit of the profession's youngsters: the topic that springs most swiftly to her mind is that all-time classic for trade mark lawyers, the European Court of Justice ruling in the BABY-DRY case.

Monday miscellany

The IPKat noted here the decision of Mr Justice Arnold last May in L'Oréal SA and others v eBay International AG and others [2009] EWHC 1094 (Ch). On 12 August the court, as it said it would do, referred a number of questions to the Court of Justice of the European Communities for a preliminary ruling. You can read the questions in full on Class 46 here.

QFinance the Ultimate Resource is a sort of coffee-table book for people who occupy a particular space in the world of business and finance. Typically, they need lots of information, have short attention spans and can lift really heavy volumes (the rupture factor is at danger levels). It's published by Bloomsbury Publishing and costs £125. Some of the intellectual property bits are written by IPKat team member Jeremy, who also had the opportunity to act as peer reviewer for some of the other chapters. If you fit the description above, or want to put some reading matter in your office reception area which is too heavy for clients to steal, this is the book for you. You can get all the details here.

Another case the IPKat reviewed earlier this year is Daimler v Sany, in which Daimler sued Sany for trade mark infringement and passing off, claiming that Sany's device mark (right) caused confusion with and took unfair advantage of, or caused detriment to the well-known Mercedes Benz figurative mark (below left). The Mercedes mark was registered in Classes 7 and 12 and Sany had applied to register its own mark in Classes 7 and 12, together with a statement supporting the application saying that Sany had been using the mark, or had an intention that it would be so used. Sany counterclaimed for part-cancellation of Daimler's mark. In May Geoffrey Hobbs QC refused Daimler's request for summary judgment (see the IPKat here). On Friday, focusing on just one infringement issue (Daimler having dropped its claims based on passing off and trade mark infringement through likelihood of confusion) Deputy Judge of the Chancery Division Susan Prevezer QC held there was no trade mark infringement on the remaining ground (taking advantage, without due cause, if the repute or distinctive character of Daimler's mark) as no link in the mind of the consumer was established: the average consumer, looking at the Sany logo, wouldn't call to mind Daimler's 3 pointed star mark. She added that, even if this were not the case, she would not have found that the use by Sany took unfair advantage of the distinctive character or repute of the Daimler brand. She also dismissed the counterclaim (you can read the judgment in full here). The IPKat's friend Peter Brownlow (Bird & Bird), who acted for Sany, observes that tis is one of the first High Court cases in England and Wales to apply the recent ECJ decision in L'Oreal v Bellure in assessing how far trade mark protection extends for marks with a reputation.

Haikus keep coming in, but remember that the closing date for the competition -- for which the prize is complimentary registration for CLT's annual Copying Without Infringing conference -- is 31 October, which is only a few short days away. Entries should be emailed to the IPKat here with the subject line 'haiku'.

Online gaming has become a major industry in about as long as it takes to toss a couple of dice, but there's not much available legal reading matter on the subject. Enter GamingTechLAW: the Blog on gaming and technology law, and whatever sounds interesting..., masterminded by Giulio Coraggio (an Associate in Lovells' Rome office). The content, in English, has quite an Italian flavour -- but that's no bad thing: so have many of the world's most tasty delicacies. Good luck Giulio, and enjoy the blogging!

Sunday, 25 October 2009

In other news: Denic softens its rules, Pirate Bay and a handbag war

Some IP news that caught this kat's eye this week include....

We learned from the BBC that The Pirate Bay, now officially owned by a Seychelles-based company called Riversella Ltd, was yet again involved in court proceedings. This time a Dutch court ordered The Pirate Bay's founders to remove all links to the material of a group of Dutch music and film makers. The case was brought by Stichting Brein against The Pirate Bay's former spokesperson Peter Sunde and its other founders Frederik Neij and Gottfrid Svartholmmen.
According to the BBC's report Strichting Brein had submitted a report at court claiming that Frederik Neij was the Chief Executive of Riversella Ltd. The Pirate Bay's founders deny this allegation and in turn state that given this latest judgment was is not against The Pirate Bay but "against the former owners of TPB" it put them "in a weird position, since none of us have the control they tell us to get. Does the court require us to hack someone else's system?"

Is it just me or is The Pirate Bay saga getting slightly absurd?

Handbag wars? The website Financial Express this week reported that actress Mischa Barton and Australian accessories maker Mischa Accessories are engaged in a trade mark dispute. Mischa Barton, of television fame, is trying to register her name as a trade mark in Australia for goods such as handbags. Mischa Accessories active in the same obviously was not too keen and opposed. For a slightly different spin of this story, please click here.

Denic softens its registration rules: last year the Higher Regional Court of Frankfurt decided that Denic, the German central registry operator of the .de top level domain, had to register the domain as requested by Volkswagen AG. The court, inter alia, decided that Denic's refusal to register the domain was against competition laws due to Denic's dominant position (case ref. 11 U 32/04) on the market.

The Frankfurt court had ruled that Denic's argument that single and two digit domains could cause technical problems (and that it system could not process short second-level domains that are similar to top level domains) were not "proportional". In the light of this decision Denic has now amended its domain guidelines with effect from 23 October 2009. Denic abolished most "of the restrictions currently applicable with regard to the registration of second level domains under the TLD .de." The new rules are set out below:

* One- and two-digit domains as well as domain names composed exclusively of numerals can now be registered.

* Domains identical with combinations of letters that are used for motor-vehicle number plates or for TLDs are released for registration.

* A domain may be comprised of the digits 0-9, hyphens, the letters a-z of the Latin alphabet and the other letters listed in the currently valid annex to the Domain Guidelines.

* A domain must neither begin nor end with a hyphen. Neither must it have hyphens as both its third and fourth characters.

* The minimum length of a domain is one character.

* The maximum length of a domain is 63 characters (referred to the ACE-encoded form of the domain) - without .de respectively."

Denic's press release can be found here (in English).

Letter from AmeriKat II: copyright

Every time a phone rings, ASCAP won’t get its wings, judge decides

When someone calls the AmeriKat, Led Zeppelin’s Misty Mountain Hop blasts out (much to the annoyance those around her) on her cellphone. If you are like the AmeriKat and have an attention-seeking ringtone on your phone, the American Society of Composers, Authors and Publishers (ASCAP) wants you to pay a royalty every time your phone rings. ASCAP represents owners of the copyright in the musical composition only, opposed to the sound recordings, and therefore only licences the public performance right in musical works.

Thankfully last Wednesday District Judge Denise Cote dismissed ASCAP’s claim ruling in favour of Verizon’s application for summary judgment. ASCAP’s case brought earlier this year claimed that service providers like Verizon engage in public performance of musical works when it downloads ringtones to customers and when those customers’ phones ring. ASCAP alleged that Verizon is both directly and secondarily liable for these performances.

By way of information, the Transmission Clause (Section 101 of the Copyright Act) states as follows:

“To perform or display a work “publicly” means —
(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or
(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.”
District Judge Denise Cote made the following points:

1. The Transmission Clause speaks of those “capable of receiving the performance”, not of those “capable of receiving the transmission”. For the purposes of section 101, it is the “transmission of a performance that is itself the performance”. Because only one subscriber is capable of receiving the transmission, the transmission is not made to the public and is not covered by the Transmission Clause. This analysis is supported by the Court of Appeals’ decision in Cartoon Network v CSC Holdings (2008).

2. Judge Cote cited a decision of Judge Connor, who arrived at the same decision by different reasoning. In U.S. v ASCAP (2007) Judge Connor started with the premise that the Transmission Clause required that a “performance” of the work had to be transmitted. Then, “in order for a song to be performed, it must be transmitted for contemporaneous perception.” Since downloading or copying took place from one device or computer to the other without any “perceptible rendition”, the transaction was “a data transmission rather than a musical broadcast” or performance. This act should therefore be more properly categorized as a reproduction. Thus, in order to succeed in this complaint, the plaintiffs would have to show a causal link between the downloading and the public performance.

3. Under section 110(4) performances of any musical work “otherwise than in a transmission to the public, without any purpose of direct or indirect commercial advantage and without payment of any fee or other compensation for the performance to any of its performers, promoters or organizers if there is no direct or indirect admission charge” are exempt from copyright infringement. At the heart of this exception is whether or not there is an expectation of profit.

4. Judge Cote held that when a ringtone audibly rings in public
“Verizon customers are not playing the ringtones for any “commercial advantage”; they do not get paid any fee or compensation for these performances; and they do not charge admission. In sum, customers do not play ringtones with any expectation of profit. The playing of a ringtone by any Verizon customers in public is thus exempt under section 110(4) and does not require them to obtain a public performance license.” (at page 24)
5. Given that Verizon’s customers are not infringers of ASCAP’s rights in the public performance of musical works it follows that Verizon is therefore not secondarily liable for their infringement.

6. ASCAP’s reliance on Arista Record LLC v, Inc (2009) failed because that case concerned a defendant “actively engaged” in “the exchange of content between users who upload infringing content and users who download such content.” Such conduct was not present here.

7. Verizon does not receive revenue from publicly played ringtones. The only revenue Verizon makes is in selling ringtones, for which it already pays a mechanical licensing fee in connection with those sales.

The AmeriKat joins Fred von Lohmann, a copyright lawyer with the Electronic Frontier Foundation (EFF, an amicus curae in the case) in welcoming Judge Cote’s decision. Lohmann stated that
“The ruling is an important victory for consumers, making it clear that playing music in public, when done without any commercial purpose, does not infringe copyright.”

Letter from AmeriKat I: Patents and Trade Marks

Last week the AmeriKat was so engrossed in reading the latest issue of Vanity Fair and Michael Wolff’s article on Rupert Murdoch, newspaper content, and the internet on her flight back to London that she forgot to sleep. This Kat does not do well without sleep. So when she made it to Heathrow last Sunday morning, her paws were too shaky to sit and write her weekly letter. Now finally acclimatized to Greenwich Mean Time, if not the dark and drizzly weather, she is back at her computer, bushy tailed and bright eyed.

iPhone apparently needs an ‘app’ for paying Nokia’s FRAND licensing fees

The AmeriKat finds iPhones slightly obnoxious (or maybe it's just some of their owners), so she was excited to read the case brought by Nokia in Delaware against Apple Inc. for patent infringement and declaratory judgment. The claim focused on no fewer than 10 patents, each one alleged to be essential to the Global System for Mobile Communications (“GSM”) Standard, the Universal Mobile Telecommunications System (“UMTS”) Standard and other universal standards. The patents covered included patents that are claimed to enable access to a mobile station so the network can be accessed with less delay (U.S. Patent Nos. 6,775,548), to ensure clear, efficient speech communications over mobile networks (U.S. Patent Nos. 5,862,178) and to ensure secure transmission of date over (U.S. Patent Nos. 6,882,727).

Nokia had granted licences under each of the patents on fair, reasonable, and non-discriminatory (FRAND) terms and conditions. FRAND terms and conditions are licensing standards that are set by Standards Setting Organizations (SSOs) (see article in JIPLP here). Where an IPR holder has voluntarily undertaken to license its IPR on FRAND terms it irrevocably commits itself to allow the standards to be implemented under its IPR and thereby waive its legally defined right to exclude others from practising the standard under its IPR. This in turn lets other manufacturers use the IPRs that are essential to maintaining set standards, for example in the instance where mobile phone technology needs to be compatible to work on various networks. In return for the right to use the patents, the manufacturers are obligated to compensate the IPR holder for FRAND compensation. If the manufacturer refuses to be subject to a licence or refuses to pay altogether, the IPR holder may seek an injunction to prevent the manufacturer from continuing to use the patent without payment.

According to the complaint, Nokia allegedly made various offers to Apple under the FRAND terms and conditions to license the patents to them; however Apple rejected Nokia’s offers and refused to compensate them for use of the patents.

Nokia is seeking compensation under FRAND and a declaration that:
1. The patents are infringed by Apple’s products and that they are not invalid or unenforceable;
2. That Nokia has complied with its obligations under the FRAND undertakings by negotiating in good faith;
3. That Apple has refused to compensate Nokia on FRAND terms for the patents and
4. That Nokia is entitled to an injunction until and unless Apple pays FRAND compensation for past infringement of the patents and irrevocably commits to pay such compensation in the future.
As reported in the Financial Times, Nokia’s vice president for legal and intellectual property, Ilkka Rahnasto stated:
“The basic principle in the mobile industry is that those companies who contribute in technology development to establish standards create intellectual property, which others then need to compensate for. Apple is also expected to follow this principle. By refusing to agree appropriate terms for Nokia’s intellectual property, Apple is attempting to get a free ride on the back of Nokia’s innovation.”
According to this New York Times article, the timing of Nokia’s lawsuit may be all-telling. Last week Nokia reported a 35% fall in its share of the global smartphone while its competitors, RIM and Apple posted significant gains. According to London analyst Neil Mawston of Strategy Analytics, “where there is a hit, there is a writ.”

Other Patent and Trade Mark News

• Last week the USTPO filed a motion for summary judgment to dispose of the case brought by German company Sigram Schindler Beteiligungsgesellschaft (say that three times fast!) in the Eastern District of Virginia against them challenging their rules for appealing USPTO decisions on ex parte re-examination proceedings.

Left: Sigram Schindler himself

Ex parte re-examination proceedings are employed when third parties request that the USTPO review another party’s patent validity. If the USPTO declared that the patent is invalid, the patent owner can appeal the decision. If the patent owner demands a further appeal, following a change to rules in 2001, the only option available to the owner is to issue a complaint in the U.S. Court of Appeals for the Federal Circuit of Columbia. The German company alleges that the USTPO has overstepped its statutory authority in regulating proceedings outside of the USPTO. The USPTO allege that the legal and factual basis for Sigram Shindler’s “does not apply to the complainant now and may never apply to them at all.” For further information please see this article from the National Law Journal.

• South Korea’s LG Electronics has filed a patent infringement claim in U.S. District Court of New Jersey against Whirlpool for infringement of LG’s refrigerator patent for “ice-making system in the fresh food compartment”. According to the Wall Street Journal, Young Ha Lee (chief executive of LG’s home appliance unit) said:
"LG has a superior technology in French-door refrigerators protected by its patents. LG will aggressively enforce its rights against any infringing products.”
This October International Trade Commission Judge Essex ruled in favour of LG in another patent dispute brought by Whirlpool that LG’s use of ice storage bins in its refrigerator doors did not infringe any of Whirlpool’s patents.

• The USPTO granted Man & Machine, a small computer-accessories company, the trade mark for “Mighty Mouse” for their waterproof mouse. Apple Inc. also sells a mouse under the same sign. Man & Machine’s trade mark registration means that Apple will have to start calling their mouse something different. Not such a problem, given Apple’s unveiling of their new multitouch mouse, Magic Mouse.

• Those skiing enthusiasts among us will undoubtedly know of Warren Miller, skier and filmmaker. Warren Miller, Warren Miller Entertainment and Level 1 Productions (WME) are currently embattled in a dispute brought by WME against Level 1 Productions for their use of Miller’s image, name, and likeness (rights of publicity) in their film Refresh. Miller sold the rights to his name “Warren Miller” and associated names to WME’s predecessor company in 1988. It is undisputed that WME owns the rights in these names. Miller appeared in Level 1’s film under his name and likeness (obviously). Last Tuesday Judge Arguello granted a motion to delay the legal dispute between the parties pending the completion of a private arbitration between WME and Warren Miller. For further information see this article in the Examiner.

Ted Blake

The IPKat is sad to record the passing of Ted Blake, who died peacefully on Friday after a long battle with leukaemia. He had only very recently retired from a career in the world of patents which spanned nearly half a century. Originally an examiner in the Patent Office, he subsequently became marketing director, in which capacity he introduced many new ideas for communicating the affairs of government to the public: roadshows, advertising and press articles, as well as the recruitment of television personalities such as Carol Vorderman and Clive Anderson, with a view to explaining the benefits of the patent system to a wider audience [the IPKat gratefully notes in passing that he was not responsible for the recruitment of Wallace and Gromit].

In 1996 Ted became PR Consultant to the Chartered Institute of Patent Attorneys (CIPA), as well as handling projects for the World Intellectual Property Office, the European Patent Office, the World Bank and the UK’s Foreign & Commonwealth Office. According to information supplied by CIPA,

"His consultancy work took him to 34 countries, including some where the patent system was far from well established, such as Moldova, Azerbaijan and Turkmenistan. He exploited his travels and natural ability as a raconteur to develop a sideline as the Michael Palin of patents, giving illustrated talks to interested groups about his global peregrinations, peppered with generous name-dropping: Margaret Thatcher, Chris Chataway, Shirley Williams, Geoffrey Howe. Nick Ross, Patrick Moore and even Her Majesty The Queen had all had the privilege of meeting Ted Blake".
This member of the IPKat team had the privilege of working with him on a couple of conference programmes, and remembers him as a cheerfully well-informed soul, a persuasive speaker and a good listener and a person whose impact was felt through his lightness of touch. The Kat's condolences are extended to Ted's wife Connie and to all his family.

Friday, 23 October 2009

Charity chips and dodgy patent claims

The IPKat wrote a while ago (here, and updated here) about what turned out to be already a very old story relating to a patent application apparently made by the charity ActionAid UK. Thanks to an anonymous commenter, the application itself was revealed to be GB0203202.7, which published in 2003 as GB2384968. According to the UK patent register, the application terminated before grant. Intrigued to find out more, the IPKat filed a request for a copy of the file (at his own expense, he hastens to add) so he could see what happened to the claims, which as-published read as follows:

1. A fat-absorbent, soggy potato chip imbued with the flavour of salt.

2. An edible potato product, a chip, fashioned from a peeled and sliced raw potato tuber that is soaked (defused imbibition) in a sodium chloride salt solution (concentration up to 30 per cent by weight), drained; dried; deep fried in triglyceride oil at a specified temperature for a specified period of time; removed from the frying medium and allowed to drain for a specified period of time; re-introduced to the triglyceride oil at a specified temperature for a second specified period of time, drained and served.

3. A potato chip as claimed in Claim 2, wherein the potato slices are soaked in a salt solution for five minutes to imbue the chips with the salt flavour.

4. The slices are drained of excess water and allowed to air dry.

5. A potato chip as claimed in Claim 2 or Claim 3, wherein the freshly washed, drained and dried raw peeled potato slices are immersed for a period of three minutes in a triglyceride vegetable oil, such as that derived from the corn or sunflower plant, which is maintained at a temperature of 170-180 degrees C.

6. A potato chip as claimed in Claim 3 or Claim 4, wherein potato slices are removed from the oil, and left to drain for up to two minutes.

7. A potato chip as claimed in Claim 5, wherein the par-cooked potato slices are reintroduced into the oil, at a constant temperature of 180-190 degrees C, for a period of approximately 2 minutes.

8. A potato chip as claimed in Claim 6, wherein the potato slices are removed from the cooking oil and drained. The slices are now in their final form, presenting an appealing textura dichotomy that manifests itself in a pleasing, golden coloured, crisp exterior and a tender, salt flavoured soggy interior. These cooked slices are known as chips.

9. A potato chip as described herein with reference to Figures 1-9 of the accompanying drawings.

10. A method of preparing a foodstuff from the potato comprising the following steps: a peeled and sliced raw potato steeped in a pre prepared sodium chloride salt solution, drained; aired; deep fried in triglyceride oil at a specified temperature for a specified period of time; removed from the frying medium and allowed to drain for a specified period of time; re-introduced to the triglyceride oil at a specified temperature for a second specified period of time, drained and served.
The IPKat does not have as much experience with patents as many of his readers, but on a first reading it didn't look to him that these would stand much of a chance of being allowed, even though some of them look on first sight to be worded in a somewhat obfuscatory way. It turns out that the Patent Office examiner thought so too. In a combined search and examination report, the examiner cited various documents, including a couple of web pages, that apparently comprehensively demolished the claims for either a lack of novelty or inventive step. The best bit of the report, in the IPKat's view, was the following:
"Claims 5 and 7 relate to the times and temperatures for each of the frying stages. I have objected to these claims under Novelty, as the times specified fall within the ranges disclosed in [US4447459]. However you may wish to argue that these claims are not anticipated. Moreover in [US4447459] the chips are fried at 350F (180C) in both stages, which is probably not what you intended. I am therefore objecting to these claims under Inventive step as well.

It is well known from Mrs Beeton to Delia Smith to double fry chips, heating the oil to a higher temperature for the second stage. The FOOD 911 recipe [an internet citation, sadly no longer apparently available] is given as an example of this method. Every cookery writer and internet recipe enthusiast will have their own particular variation on the exact temperature to use, and how long each stage might take. The frying time will depend on the shape of the chip, its moisture content and its temperature on entry into the hot oil, according to [US4447459] col 8 lines 64-66. To this list of parameters I would add the age and type of potato used, the size of the chip, and how long it has been soaked for. So the timings given are likely to be guidelines only.

The MACZIPPY recipe [another internet citation, also no longer available] for making chips soaks in salt water and then fries at a temperature of 320F followed by 375F (190C). The first temperature is a few degrees below the bottom of the range in Claim 5 and no times are specified. However, it would be obvious to a person skilled in the art of frying chips that they could modify MACZIPPY along the lines of FOOD 911 which initially fries at 325F (170C) for three minutes (as required by Claim 5), and then at 375F (190C) for four minutes. You may intend the second frying stage of Claim 7 to be carried out for only (approximately) two minutes and no longer, but as no reason has been given in the description for the selection of this particular time, this is a distinction which does not seem to be inventive."
The examiner also made a number of other objections to the claims on grounds of clarity, consistency and support, presumably for completeness.

Unfortunately, ActionAid failed to reply to the report, and the application was treated as refused once the Rule 34 period (as it was then known) ended on 11 August 2006.

In response to an enquiry about their application, Helen Jeffrey of ActionAid UK wrote back to the IPKat with the following:
"In regards to the Chip patent, this spoof patent was part of a campaign run by ActionAid in 2002 and is not related to our current work. We apologise for any confusion and we have now amended our website to make it clear that this is a previous campaign. Please see the amended webpage here.

This spoof chip patent application was a campaign device to highlight and draw attention to the issue of patents on food crops. We were very clear at the time in our press releases and materials that this was spoof application to draw attention to the issues. We do also have serious information about the patent system

We did the application at the time of the deliberations of the Commission on Intellectual Property Rights (
CIPR) which was set up by the Department of International Development (DfID), and which was looking at the implications of IPR rules and development policies.

Many of ActionAid's key concerns were reflected in the final report by this CIPR in September 2002, and we felt that the investment of under £100 in the spoof chip patent application was a good and cost effective use of our precious resources."
The IPKat didn't want to waste any more of ActionAid's precious resources, so he left it at that (unlike fellow blogger Patently, who seems to be rather more persistent, as well as a bit ranty). He does, however, wonder whether ActionAid really thought at the time of making their application that it was a 'spoof patent', since their original post on the subject suggested that they thought they would be able to get a patent for their invention and thereby be in a position to threaten chip shops with infringement actions. If ActionAid were really trying to make a serious point about the patent system, the IPKat wonders why they have not clarified to their web readers that dodgy patent applications such as theirs will tend not to be granted. A bit of education about how the system really works might help to dispel some of the blatant misinformation that tends to surround stories such as these.

Curia replies to Sir Kat -- and it's good news!

Yesterday the IPKat carried on his campaign for the Curia website to fix the defective images of Community trade marks and signs that are supposed to be shown embedded in the judgments of the Court of First Instance of the European Communities in Community trade mark appeals (see earlier posts here and here). The IPKat has now received an emailed response, and it's a welcome one:

"Importance: High [Quite right! That's one thing that the IPKat and Curia agree on]

Dear Sir [The Court of Justice is a great stickler for protocol and correct etiquette. If its officials address a fictional Kat as "Sir", you can be sure that it's the proper mode of address ...],

To answer your mail from October 22, we corrected the image from case T-307/08. The access to the images should be all right now. [It is all right. The Kat has checked it out personally. The images in this decision are both reproduced on this post]

Yours sincerely,

Georgios Kamolinos
Cour de Justice des C.E."
The IPKat has already written to Georgios to thank him and to ask him a couple more things:
"1. It has been noted that images have been found to be inaccessible in many other judgments. We are all grateful that they have been instated for Case T-307/08. Can we now assume that they will be made to appear in all future CFI decisions and that the deficient images in the old judgments will be corrected?

2. Would it be possibly to place hyperlinks from the CFI decisions on Community trade marks and Registered Community Designs to the decisions of the Boards of Appeal of the Office for Harmonisation in the Internal Market from which the appeals or applications to the CFI have been made?".
As ever, the Kat waits expectantly for the positive answer he so fervently desires. If Curia says it doesn't have the money to carry on this important work, the IPKat knows exactly who does ... [If you really don't know, click here to find out].

Friday fling

The list of forthcoming events is even more burgeoning than ever! Since not everyone has the leisure to peruse it, specialist sub-lists have now been set up for events that are specific to patent litigation (on PatLit), copyright (on The 1709 Blog) and intellectual property damages, valuation, securitisation and other financial issues (on the IP Finance Blog).

Autumnal reflection on loose leaves. If you subscribe to Sweet & Maxwell's European Patent Decisions, please note that Release 30, with a publication date of October 2009, has now been released, updating this looseleaf to September 2009. The UK post is bad at the moment, but at least you can be assured that it's on its way. No loose leaves on the patented tree (left), though: it's evergreen.

Does anyone have a copy of the transcript of the judgment of Michael Furness QC, sitting as a Deputy Judge in Pocket Kings Ltd v Safenames Ltd and another [2009] EWHC 2529 (Ch)? [see IPKat post here for details of the decision itself]. This decision has caught the eye of a number of readers who are demanding to know more.

Around the blogs. Boosted by readers' interest in the IP dimensions of the Rio 2016 Olympic Games, the IP Tango Latin American intellectual property weblog has just secured its 200th email subscriber. Coinciding with this, the blog has taken on a new team member, the talented Patricia Covarrubia, whose contributions as a guest blogger over the past week or so have already enhanced its content. Meanwhile, PatLit has announced a free seminar in London on Tuesday 8 December, when Toshiko Takenaka explains the differences between US and Japanese patent litigation (details here). Fashionista-at-Law will be sponsoring next year's Handbags at Dawn IP and Fashion conference, for which a date has just been set: 21 September 2010.

The IPKat notes that the John Marshall Review of Intellectual Property Law (“RIPL”) has just published the first issue of volume nine. Contributors include Professor William Henslee on how the Recording Industry of America is working with internet service providers to reduce the rampant copyright infringement of music on the internet; Professor Shubha Ghosh discusses the impact of the Economic Espionage Act 1996 and federal criminal trade secret law in the US on the global mobility of skilled labour, while Professor Amir H. Khoury explains how the Emirate of Dubai is reinventing its economic identity with an emphasis on intellectual property. Finally Professor Linda M. Beale provides incite regarding the potential impact of In re Bilski on the future of tax planning strategy patents. For further information click here.

Thanks, Jeff Roberts (long-time IPKat reader and author of McGill's IP News this Week), for sending the Kats a link to this entertaining and informative article from the Wall Street Journal on one man's mission to promote Anti-Monopoly and his struggles with the owners of the IP rights in Monopoly.

The IPKat has enjoyed his time on Twitter, where he has learned a great deal about succinct writing and has shared a large amount of IP-related information with colleagues all over the world. Having a penchant for poetry and the arts, the Kat is delighted to discover that he is being followed by Patent Limericks. Not all the content is limerick-related, but the idea's a lovely one.

Committal for contempt not fit for 'grey area' disputes

Lord Hoffmann started the mini-trend of dropping down a court, and now Lord Justice Patten has been at it too. The case in question (cases, actually) is (i) Alan Grisbrook v MGN Ltd, Scottish Daily Record & Sunday Mail Ltd and Syndication International Ltd; (ii) Alan Grisbrook v MGN Ltd and Syndication International Ltd [2009] EWHC 2520 (Ch), a 16 October decision of Lord Justice Patten sitting as a Chancery Division judge.

Right: back-issues such as this one have been saved and made accessible for future use through newspapers' archival sites -- but in many cases the rights of individual copyright owner have been overlooked.

This was an application by Grisbrook, a freelance photographer, to commit newspaper publisher MGN for contempt of court following the alleged breach of an undertaking contained in a consent order, with an alternative claim for sequestration of MGN's assets.

The background is that Grisbrook had provided photographs for MGN for a number of years, without a written contract, being paid when his photographs were used. MGN archived the photographs it used; any subsequent use by MGN entitled the photographer to a further fee. It was conceded that Grisbrook licensed MGN to use his photos in this way while retaining copyright in them, though there was some dispute as to how far this licence extended.

Following a dispute over unpaid licence fees, a consent order was made which (i) terminated the licence, (ii) entitled Grisbrook to the return of materials held by MGN and in which he retained the copyright and (iii) an undertaking by MGN not to infringe Grisbrook's copyright. Grisbrook conducted an agreed search of MGN's archive to locate his material and, at its conclusion, served a further copy of the consent order on MGN. Subsequently Grisbrook carried out random searches of MGN's websites, including such staples as and and discovered that a large number of his photographs were still being used. Although MGN removed his photographs from some of its websites, it refused to compromise in respect of images contained on websites which offered complete back issues of its publications.

Grisbrook was not best pleased with this and went to court, arguing that any reproduction of already-published material constituted an infringement of his copyright and was therefore a breach of the undertaking. No, said MGN: the consent order was not intended to cover the reproduction of photographs which were contained in already-published newspapers and should be construed accordingly. MGN further argued that, even if the undertaking was unlimited and included such infringements, no infringement had taken place or could take place as the licence granted by Grisbrook had to be treated as extending to the subsequent reproduction or use of published material.

Patten LJ refused the application. In his view
* The real issue between the parties was whether the operation of the back issues websites amounted to an infringement of Grisbrook's copyright in the photographs contained in those issues: did MGN's licence impliedly extend to the storage of and access to Grisbrook's photos as they appeared in the back issues?
* Since such an implied licence derogated from or relaxed the copyright owner's statutory rights, it was for MGN to justify the basis for extending the licence to cover what would otherwise be separate acts of infringement.
* The compilation of a database and its use for archival purposes might be so justified, but the exploitation of Grisbrook's photos through the back issues websites seemed to be a different kind of operation, one that was not contemplated at the time the licence was granted and could not be said to have been necessary to regulate the rights of the parties at that time. MGN's operation of the back issues websites accordingly infringed Grisbrook's copyright.
* MGN was entitled to take a different view on this difficult question, and disputes of this sort should not be resolved through committal proceedings. The dangers inherent in generally worded injunctions or undertakings not to infringe a patent or copyright had long been recognised and could often lead to a further round of litigation in order to determine whether an infringement had occurred. Nor was the infringement point which Grisbrook was arguing a point that featured in the actions which led to the consent order. A party who argues in good faith that his conduct did not amount to an infringement should not ordinarily be penalised by a fine or sequestration in the event of failure merely because an applicant had chosen to use committal proceedings rather than an ordinary claim to resolve the issue.
* Although the operation of the back numbers websites did infringe Grisbrook's copyright in his photographs, those rights could be adequately protected by a declaration to that effect.
The IPKat is greatly relieved at the court's finding on implied licences, since he give the same unwelcome advice to a periodical publisher that was planning to do much the same thing some 15 years ago, who responded that "it must be lawful because other publishers are doing it too". He also agrees that, where infringement is a 'grey area' in which plausible arguments can be raised by each party, contempt proceedings should not be used as a weapon. Merpel says, is it my imagination or are the courts consistently soft on infringing defendants in IP committal proceedings?

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