For the half-year to 31 December 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Jani Ihalainen, Nikos Prentoulis and Mark Schweizer.

Birgit Clark is on Sabbatical till the end of the year

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Friday, 9 October 2015

Henry Wickham, the Amazon river and rubber trees--the state of biodiversity and biopiracy today

Around Christmas time in 2012, this Kat published a post about the Global Seed Vault in Norway, whose avowed purpose was to preserve a semblance of biodiversity should there  be a major world-wide calamity to our food stocks. Then, and now, the issue of enhancing biodiversity remains a highly contentious issue. In companion pieces (here and here) that appeared in the 12 September issue of The Economist, “Growing pains: Storing wild seeds –and lives” and “A dying breed: Specimen-hunting has become less dangerous, but takes persistence”, we are reminded of the interweaving of private, national and international interests that have come together to make biodiversity such a complex issue. We start with the stark fact, as reported, that merely 30 (!) crops satisfy nearly all of the world’s nutritional needs. The risk that a serious, wide-spread disease might endanger a critical mass of our world food production has led to a search for wild-grown relatives of these food crops, the goal being to try and identify genetic traits that can then be brought back to develop new and ideally lead to more resistant crops. This means that botanists and the like who seek such potential wild varieties must do so in the plants’ natural habitats.

The challenge is how to go about this process of plant collection in light of the international arrangements that have been put into place. In particular, the UN Convention on Biological Diversity of 1992, ratified by nearly 200 jurisdictions, has given recognition to plants as part of a country’s national heritage. It has also put into place measures to prevent “biopiracy”, which prevents one from gaining pecuniary advantage from such plants without reaching agreement to compensate the country in which the plants are found. Not surprisingly, following the recognition of national rights in the plants found within a given jurisdiction, the process of regulation and bargaining over the terms of removing plants has sometimes complicated efforts to enhance biodiversity. Access by botanists and the like to such plants is uneven, bureaucracy can impede, and over-strict interpretation of the Convention, such as in India, restricts the ability to share plants and seeds.

In light of our current framework, it is interesting to recall how the transfer of plants once took place. The story of Henry Wickham (1846-1928), an English explorer sometimes called the first modern” biopirate”, is instructive. Wickham is credited with bringing to the Royal Botanical Gardens in Kew, 70,000 rubber seeds from a rubber plant (Hevea brasiliensis) found in the Amazon, in the Santarem region of Brazil. These seeds became the foundation for the rubber plantations in Southeast Asia. Controversy abounds regarding exactly what Wickham did with respect to these rubber seeds, and how he collected and delivered them to Kew Gardens. There does not appear to have been any law in Brazil at the time that prevented seed gathering and exportation (although there does seem to be evidence that Wickham did not explicitly disclose the nature of his cargo).

As for Wickham himself, opinions differed, as reported on
“One view was expressed by Henry Ridley, Director of the Botanic gardens in Singapore and the person who, more than any other, persuaded the country know known as Malaysia to develop rubber plantations: ‘I looked on him as a failed planter who was lucky in that for merely travelling home with a lot of seeds had received a knighthood and enough money to live comfortably in his old age…. He ordered natives to bring him in the seeds and to pack them in crates and put them on board ship. One cannot help feeling he was jolly well paid for a little job. He was no agriculturalist, he knew nothing about rubber and cared not for it…. As for his abilities in planting I should say he had none’.

Edward Lane, one of the very few people to have studied Wickham’s life in detail, wrote of him in 1953 as an ardent imperialist with little business acumen with an autocratic manner which made him difficult to get on with yet he was a staunch and loyal friend to those he really liked. Fordyce Jones, a close friend in Wickham’s later years called him: ‘a great man … whom to know was to love and whom all those in the rubber industry who have its interests at heart have affectionately called its ‘father’”.
Whatever the facts were, the Southeast Asia rubber tree industry developed as a result of the removal of the seeds from the Amazon and Wickham played some role in this removal.

Wickham’s story brings us back to the complexity involving biodiversity. It is reported that the removal of the seeds and the rise of plantations in Southeast Asia broke the dominant (monopolistic?) position enjoyed by Brazil. In principle, breaking down monopolies is a good thing for competition and presumably it aids the goal of biodiversity. Also, talking about national interests in the context of the 19th century Amazon region, as well as the imperialistic overtone to the industry in Southeast Asia, muddies the analytical waters. Still, it would seem that the international community was better off as a result, even if there were winners and losers at the national and regional levels. Today, the international community has taken the position that biopiracy of the Wickham kind is no longer tolerable, strengthening the bargaining position of countries fortunate to have plants of potential value within their borders. The aggregate benefit to biodiversity, at least in the short run, may be less certain.

A Site for Sore Eyes: Economics of Domain names

What is in a name? With Internet consumer laws changing, Google buying all sorts of new domains, requests from IPKat readers, the introduction of .film and recent UK government funding for Digital Economy research, it's time to address some economics of domain names.

New York Zoological Society
Like the economics of trade marks, the economics of domain names rests primarily on the information and signalling aspects of brands. In this case, the letters and words of the domain name provide information to the consumer and serve as a unique identifier for the website. However, unlike trade marks, the supply of domain names is much more restricted.  Domain names are limited to alphanumeric characters, top level domain suffixes and practicalities such as length and legibility.

The restricted supply of possibly domain names encourages a creative market.  Cue the advent of grammar and spelling that would have deeply offended my grandma.  Instead, the restrictions on the 'real estate' or 'space' of domain names have lead to linguistic innovation.  Cue also rather amusing failures (e.g. Speedofart,  Oldmanshaven, and Americanscrapmetal.)

Like trade marks, there are also concerns about domain name squatting and everyone's favourite portmanteau, typosquatting.  This keeps WIPO busy. While squatting is an example of a bad faith exploitation of the system, there are legitimate business models which rely on domain prospecting. Hence, like many points of IP, the lines are are often blurrier than we might expect.

Trust is perhaps more important in domains than in trade marks. The big bad scary world of the internet is less frightening when the consumer recognises the brand and domain.  Domain names can signal (or mis-signal) that a customer is on a trusted site.  This is helpful for customers but also for suppliers.  Domains with less brand awareness and trust must use more expensive, third party services, such as selling through Amazon or Google, to overcome the weaknesses of their domain name.  
Keyboard cat, Cassandra Leigh Gotto

The market for domain names

The .com bubble of 2000 took some shine off the glittering promise of domains.  Lindenthal, looking at domain prices for the years 2006-2013, finds "on average, domain prices grew by 6.6 percent per year in the last 7 years, exhibiting a boom and bust pattern that closely resembles the path of the overall IT industry." He also finds high correlations between domain prices and both trends in the high tech economy, and online advertising revenues.

Changes in search engines are possibly driving down the average price of a domain name.  As search
engines focus more on content and less on domain names, the bigger, more popular websites become even bigger and more popular.  Whereas the earlier, perhaps more naive, days of the internet were more dependent on basic searches and consumer expectations, the playing field may have been more level. Instead, like many things in the digital era, the big become bigger and the small become smaller. This distribution is also consistent with the value of patents, trade marks and most IP.

Bonsai Kitten, 松林 L
Restrictions on the market are changing. The introduction of non-latin alphabets expanded the supply of domain names and reduced the confusion caused by transliterations. And expanded it has, the Wikipedia list of domain names is impressive. Of course, the more top level domains, the bigger the available 'land' in the market.  This increase in supply will exert a downward pressure on prices.

At the political level, unsurprisingly, existing domain owners favour the status quo and are against expansion. (Although, exceptions for smaller linguistic groups are popular.)  With an ever expanding internet, news businesses will need domains and the pressure for expansion will continue.  But this may increase both consumer confusion and the cost to business as brands spend more to protect trade marks from domain squatters.   The domain name game is far from over.

A rose by any other name may not smell as sweet...

Friday fantasies

Forthcoming events. The IPKat and Merpel have been busily adding events to the list of attractions on offer over the next few months.  Do please remember to check them out! See you there?

On the subject of forthcoming events, the 10th Anniversary Conference on 26 November that marks a decade of the Journal of Intellectual Property Law & Practice (JIPLP) as well as IPKat blogmeister Jeremy's retirement now has 217 registrants -- so you'd better hurry if you are thinking of attending.  The event, generously hosted in the London office of Freshfields Bruckhaus Deringer, is free, and should be lots of fun.  Programme details and registration via Eventbrite can be found here.

Still on the subject of forthcoming events, registrations are also coming in for this year's IP Publishers and Editors Lunch, kindly hosted by law firm Veale Wasbrough Vizards in its London office on 25 November.  If you have been before and want to repeat the experience, if you've never been before and would like to sample it, or if you aren't sure whether you are eligible to sample it at all, you will find all the relevant details here.

Dreaming of Louboutin ...?
And while we're at it, one further forthcoming event is this year's nearly-annual conference on Intellectual Property in the Fashion Industry, coming up in Central London on 22 October.  Run by CLT, it's definitely one of the more fun events of the year, combining serious legal perspectives with some very lively questions, answers and debating points from IPKat blogmeister Jeremy in the chair.  You can check out the details of this year's programme here. He's not the only Kat on the programme, though, or even the only blogger.  Katonomist Nicola Searle is speaking as well as Art & Artifice blogger Rosie Burbidge. There is also a chance to meet Judge Melissa Clarke, who is one of the Intellectual Property Enterprise Court's judges.  Do join us!

Academic opportunity 1. One of this Kat's oldest friends has contacted him to ask:
Is there a PhD completer, a recent graduate or even a practitioner who is keen to get a foot in the door of IP teaching, and who is able to step in and assist at extremely short notice? In its 4th year of running, numbers for the Intellectual Property Management module at City University, Cass Business School, for 2nd year BSc business and management students have shot up from around 40 to 72 for this year [great news, and no doubt music in the ears of fellow Kat Neil, who has long bemoaned the lack of time, space and appreciation given to IP by so-called Business  Schools]
Management has agreed to fund a third tutorial group (groups attend tutorials 1 hour every other week over 11 weeks).   I'd welcome some assistance with tutorials, and there would also be an opportunity for paid marking of coursework and exam papers. If you can think of anyone who has the necessary knowledge, attitude,aptitude and time to fit the bill, an urgent message would be most appreciated.
If any reader thinks that he or she might be the right person, can that person please email the IPKat at with the subject line CassIP? All expressions of interest will be forwarded to this Kat's friend (this Kat has no further details, so don't even ask ...).

An elaborate initiation ritual for IP support tutors?
No, just a sample of the famous Edinburgh tattoo
Academic opportunity 2. The University of Edinburgh is seeking an IP support tutor for the academic year 2015/16 for one of the modules in its online distance learning IP LLM. The course in question is 'Intellectual Property: Industrial Property', which runs in semester two (January-March 2016: average temperature in January here; in March here). It's principally focused on patents and trade marks, plus sessions on confidentiality, passing off and IP/free movement of goods. The role of support tutor is to assist the course organiser and tutors in facilitating student online discussions during the course of the semester, updating course materials and marking/preparing feedback on student participation. The support tutor does not need to be based in Edinburgh, as the tutoring process can be conducted completely remotely. The position would be ideal for any PhD students or researchers who might be looking to develop their portfolio of teaching experience. Applicants with professional experience in the relevant fields are also welcome. The job advertisement is here.  The closing date is the end of October 2015. Course organiser Jane Cornwell will be happy to field questions and provide further information.

Off to Moldova? The European Patent Office (EPO) has announced this week that European patents will shortly cover Moldova too, thanks to an agreement between the EPO and the Moldovan government.  The agreement comes into force on 1 November 2015 and will bring to 42 the number of countries for which patent protection can be obtained simultaneously with a single European patent application. The IPKat welcomes this move.  Merpel, mindful of her recent blogpost on the much-discussed exile of the EPO's Boards of Appeal from Munich, wonders if this agreement is a prelude to the departure of those august personages to Moldova itself ...

Around the weblogs.  On IP Tango, guest blogger Magda Voltolini brings us up to speed on Brazil's current cogitations about pharma patent law reform;  Aistemos features a plea by its CEO Nigel Swycher on how important it is for even little companies to have an IP strategy. On the 1709 Blog, Ben Challis offers another CopyKat medley, of particular interest to those who can't tell their antiphons from their Elgars, while Andy Johnstone asks -- in the US context -- whether true copyright reform can ever be a practical option. Finally, from Art & Artifice come two posts in quick succession: one features a metaphorical assault on the long-dead French painter Renoir, by Liz Emerson; the other, from Marian Ang, recounts the first prosecution for war crimes of an Islamist militant accused of destroying historical buildings in Timbuktu.

Italy commits to unitary patent. Italy has now notified the European Commission that it wishes to participate in its enhanced cooperation regime. The Commission has adopted a decision -- 2015/1753 of 30 September -- confirming Italy's participation and applying the Regulations 1257/2012 (on the unitary patent) and 1260/2012 (on the unitary patent translation regime) to Italy. Italy is already a signatory to the Unified Patent Court Agreement.

The harbour's no longer safe: personal data flow must find another way to go

Those guest Kats just keep cropping up again, even after we think we've said goodbye.  Not so long ago, Valentina Torelli was one of our three carefully selected guest colleagues -- and here she is again, this time with her take on an important data protection ruling from Europe's top court, a ruling that may not have made a lot of Americans very happy.  Here's what she has to say:

Maximilian Schrems
Even as we await the new EU Regulation on data protection, which will supersede Directive 46/95 (the Data Protection Directive), the Court of Justice of the European Union (CJEU) ruled on 6 October 2015 on the reference for a preliminary ruling in Case C-362/14 Maximilian Schrems v Data Protection Commissioner, finding invalid the US-EU agreement on the processing of individuals’ personal data and the free movement of such data, the so called “Safe Harbour” scheme set out in Commission Decision 520/2000. 
The case stemmed from a complaint filed by an Austrian citizen, Maximillian Schrems, with the Data Protection Commissioner in Ireland, following the transfer to servers located in the US for processing at least some of the data that he had provided to Facebook in signing-up with Facebook’s Irish subsidiary. Schrems’ concerns originated from revelations that came to public light as part of the Snowden affair in 2013, when EU citizens became aware that US intelligence services, in particular the National Security Agency (‘NSA’) could gain access to the data transferred from the EU to the US without US law and practice limiting such surveillance activity. 
The Data Protection Commissioner rejected Schrems’ complaint on the basis of Commission Decision 520/2000, which stated that the “Safe Harbour” scheme regulating privacy protection of data transferred from the EU to the US ensured an adequate level of protection in compliance with the Data Protection Directive. Schrems then took his complaint to the High Court of Ireland, which was asked to determine whether the powers conferred by the Data Protection Directive to both the national supervisory authorities and the Commission were cumulative or mutually exclusive The Court referred the following two questions to the CJEU for a preliminary ruling:
1.       Whether in the course of determining a complaint which has been made to an independent office holder who has been vested by statute with the functions of administering and enforcing data protection legislation that personal data is being transferred to another third country (in this case, the United States of America) the laws and practices of which, it is claimed, do not contain adequate protections for the data subject, that office holder is absolutely bound by the Community finding to the contrary contained in Commission Decision of 26 July 2000 (2000/520) having regard to Article 7, Article 8 and Article 47 of the Charter of Fundamental Rights of the European Union (2000/C 364/01), the provisions of Article 25(6) of Directive 95/46/EC3 notwithstanding? 
 2.       Or, alternatively, may and/or must the office holder conduct his or her own investigation of the matter in the light of factual developments in the meantime since that Commission Decision was first published?
The CJEU affirmed Advocate General Bot’s Opinion of 23 September 2015, holding that the existence of a Commission decision on the adequate level of protection of the personal data transferred cannot eliminate or even reduce the national supervisory authorities’ powers under the directive on the processing of personal data and that the Commision’s Safe Harbour Decision was invalid. 
Cats have their own way of protecting
personal identity data ...
First, the Court held that the mere existence of a Commission decision adopted under Article 25(6) of Directive 95/46, such as Decision 520/2000, which had found that, even if a third country ensures an adequate level of protection of the personal data transferred, a concerned individual may still bring a complaint with the national supervisory authorities. Such authorities are vested with powers under both Article 8(3) of the Charter of Fundamental Rights of the EU and Article 28 of the Data Protection Directive: such powers cannot be eliminated or even attenuated by a decision of the Commission. The Court stressed that the national supervisory authorities must be completely independent in examining whether the transfer of an individual’s data to a third country complies with the Data Protection Directive. This is so, irrespective of the existence of a previous Commission decision on the same issue. 
The Court stressed that individuals such as Schrems, who believe that the Commission decision is invalid, as well as national authorities which have been vested with reviewing the matter of data protection, must both be given the right to bring that claim before the national courts. In turn, these courts may refer to the CJEU for a preliminary ruling, that court being the sole authority to determine the validity of a Commission decisions by virtue of Article 263 TFEU. 
The Court then considered whether US law and practice regarding the processing of personal data comply with the requirements and guarantees contained in the EU Data Protection Directive and in the Charter. The Court answered—“no". The Commission had merely stated that the Safe Harbour scheme was acceptable under the principles set out by the Data Protection Directive, without analyzing whether the US data protection legislation as such offered the adequate level of protection to EU citizens. 
According to the Court, the Safe Harbour is not in line with EU data protection rules. The purpose of the Safe Harbour scheme was to create a framework for US-EU data protection whereby

“organizations must notify individuals about the purposes for which they collect and use information about them. They must provide information about how individuals can contact the organization with any inquiries or complaints, the types of third parties to which it discloses the information and the choices and means the organization offers for limiting its use and disclosure”.
The scheme would apply only to US undertakings, which could disregard its provisions in the event of a conflict with national security, the public interest or law enforcement, all of which came before data protection on a sliding scale of priorities. Further, US public authorities such as the NSA are not even subject to the Safe Harbour scheme. 
Finally, the Court observed that Commission Communications 846/2013 and 847/2013 showed that the processing of EU personal data in the US by US authorities went beyond what was strictly necessary and proportionate for the protection of national security. At the same time, concerned individuals had no means of redress to access, rectify and eventually erase their data. Finally, the Court observed that those same Commission Communications showed that the processing of EU personal data in the US on the part of US authorities went beyond what was strictly necessary and proportionate for the protection of national security: concerned individuals had no means of redress to access, rectify and eventually erase their data. The Court thus found that there was no equivalent level of protection f for the fundamental rights and freedoms guaranteed in the EU, by which the right to privacy under EU law can be derogated by the collection, storage and processing of personal data only when strictly necessary.
The Court added that, in the EU,
 ”[l]egislation is not limited to what is strictly necessary where it authorises, on a generalised basis, storage of all the personal data of all the persons whose data has been transferred from the European Union to the United States without any differentiation, limitation or exception being made in the light of the objective pursued and without an objective criterion being laid down by which to determine the limits of the access of the public authorities to the data, and of its subsequent use, for purposes which are specific, strictly restricted and capable of justifying the interference which both access to that data and its use entail”.
This being so, Shrems’s fundamental right to privacy and to effective judicial protection were compromised by the Safe Harbour Decision. This was so because the decision, in confirming the Safe Harbour framework which provided that all EU Member States would be bound by the European Commission’s finding of “adequacy” of the scheme, did not enable the national authorities to verify that the Safe Harbour principles, as implemented in for the US, were limited to what was strictly necessary. The Data Protection Commissioner thus had the power to examine Schrems’ case thoroughly in deciding whether the transfer to the US of data obtained from Facebook subscribers in Europe should be suspended, if there were found to be an inadequate level of protection of personal data.

Thursday, 8 October 2015

As the CRO flies: when patent infringement litigation is not a Brundle of fun

Merpel thinks people who write inspirational
messages have a lot to answer for
Character traits that are admirable in one context can be quite a nuisance in another. One such virtue is persistence and a refusal to be beaten.  In the context of an inventor working to achieve an elusive innovation, a surgeon seeking to perfect an operation or a rights campaigner working to eradicate prejudice or poverty, it can be the crucial asset that catalyses a successful outcome,  In the context of a patent litigant it can however be a trigger for wasted effort, energy and resources.

Today this Kat has already posted an item dealing with a fairly minor sort of persistence, where a charity could not bring itself to use a logo that was not confusingly similar to that of another charity and, convinced of the rectitude of its position, refused all advice to sit down with the other side and settle out of court. Now here's an example of a far more egregious case of misplaced persistence. It's Richard Perry v F H Brundle & Others, a saga that has entertained many a casual reader but saddened many a serious IP litigator. It has been in this blog before and may be here again. At any rate, it has been rumbling on again of late.

But reality doesn't depend
on whether you believe it
Readers may remember the initial litigation, noted by this Kat back in March 2014 in "Coming off the fence: IPEC knows a threat when it sees one", in which the Brundle defendants established that Perry had made an unwarranted threat to commence patent infringement -- and that Perry's counterclaim for patent infringement was a non-starter. Only a couple of weeks later the same court entertained the same litigants in proceedings noted by this Kat in "Forging a new path: cost caps and contrary behaviour in cut-price IP court", here. Here the court, in the person of Judge Hacon, took a surprisingly lenient view of Perry's decision to write a letter which purported to be from the judge himself, reversing the earlier trial decision and awarding himself damages of £5 million at the same time. It could only be a matter of time, surely, before Perry, whom some unkind readers might stigmatise as being more than mildly eccentric in his behaviour, would be in court again. And so it was.

Oh no we don't
Mr Perry was back in court again last month, when he persisting in bringing what was to all intents and purposes a repeat of his earlier patent infringement claim, notwithstanding that he was now the subject of a bankruptcy order since he was unable to meet the costs order that had been made against him -- and that his appeal against the bankruptcy order had also been dismissed as being quite without merit. Again he came before the avuncular person of Judge Hacon.

This works for cats -- but not
for IP litigants without cash
On this occasion, as noted by subscription service Lawtel (since this extempore decision is not on BAILII), on 25 September Judge Hacon was asked to strike out Perry's patent infringement claim in its entirety.  Said Brundle, this claim involved the same allegedly infringing acts in respect of the same patent and looked like a decisive case of res judicata. What's more, Perry surely had no standing to bring this action because any right to bring proceedings had vested in his estate on the making of the bankruptcy order -- and the evidence showed that the Official Receiver had not consented to Perry suing. Perry conceded that he had no cause of action because he was a bankrupt, but he argued that, rather than striking out the action, the court should stay the proceedings pending the outcome of what he said was his ongoing appeal against bankruptcy before the Court of Appeal.

Judge Hacon granted the application to strike out.  In his view:

* While Perry might have lodged some sort of application before the Court of Appeal, it was doomed to fail. He had exhausted all the avenues available to him to appeal against his bankruptcy and there was therefore no sound reason to stay the patent infringement proceedings rather than strike them out.

* Even if Perry did have a cause of action, the proceedings would still be barred because the cause of action was res judicata, being materially the same as the counterclaim in the first action. These proceedings were therefore totally without merit, as were four other applications that he had apparently brought in the course of the same proceedings.

But that's not all.  Judge Hacon also issued an extended civil restraint order (CRO) against Perry, to stop him bringing any more versions of his action against Brundle.  Last week, at [2015] EWHC 2737 (IPEC), he gave his reasons.  His judgment culminated, at [34], with the following assessment of the situation:
In my view there is a very real prospect that notwithstanding Mr Perry's calm and measured submissions in court, his sense of injustice will shortly be rekindled and that this will lead to further hopeless claims and/or applications. A limited CRO would not be sufficient because such claims and applications will probably be made wholly or in part outside these proceedings. I also accept Mr Baran's submission [on behalf of Brundle] that Mr Perry's applications have necessitated the expenditure of considerable sums by the Defendants which are unlikely to be recovered and that if Mr Perry is left alone the pattern of wasted expenditure will continue.
Does anyone know how to appeal against a civil restraint order ...?

Viennese waltz may be the last dance for Board members

For some it's a game,
for others a sad reality
Up until very recently, the mooted new home for the European Patent Office (EPO) Boards of Appeal was Berlin, unwilling as its members might be to move at the whim of the EPO President. But, as Merpel reported last week, a new proposal is being negotiated behind closed doors: why not move the Boards to Vienna?  Merpel understands that President Battistelli is close to sealing a deal between Germany and Austria which would make this possible.

Why Vienna?
But consider this riddle: what does a move to Vienna achieve that a move to Berlin will not?

One suggested answer is found in the EPO Service Regulations. Under Article 53, refusing to relocate to another country is a sackable offence. There is no direct provision for firing an employee who refuses to relocate to a different city within the same country.
Article 53
Dismissal for other reasons
(1) The appointing authority may decide to terminate the service of a permanent employee if:
(a) the Contracting State of which the employee is a national ceases to be party to the Convention;
(b) the employee refuses to be permanently transferred to a country other than that in which he is serving; ...
Headquartering the Boards in a different country opens up the enthralling possibility of firing Board members, possibly even without the distasteful necessity of referring such decisions to the Enlarged Board. As Mr Battistelli has discovered in the last year, even getting one Board member fired is not as easy as one might think. The European Patent Convention and due process keep getting in the way.

Why move at all?
The drive to get the Boards out of Munich strikes Merpel as either deeply stupid or entirely cynical, and she doesn't believe Mr. Battistelli is at all stupid.  The purported problem identified in Mr Battistelli's proposal to reform the Boards of Appeal was the "perception of independence". You couldn't, he argued, have Boards in the same building as other EPO employees whose decisions a Board might be reviewing -- which is an odd argument, since there are no Examining or Opposition Divisions based in the Isar building.

A rather more widespread perception around the EPO is that Mr Battistelli can't bear to have the Boards in "his" building (Merpel seems to recall that they were there first, though), and/or that he wanted to teach the Boards a lesson. Even having his own private express lift from car park to the sumptuously appointed presidential floor does not always exclude the chance that he might encounter one face-to-face during his working day.

You can be on top
and still be furious ...
The relationship was poisoned when the Enlarged Board decided Case R19/12, a decision about judicial independence about which Mr Battistelli was furious. You see, far from lacking independence, the real problem for EPO management is that the Boards are sometimes too damn independent and this cannot be tolerated. Yes, there's a structural issue in how the Boards fit into the European Patent Organisation, which would require amendment of the Convention to fully remedy, but this did not seem to cause problems in practice until now.  Nobody should pretend that this proposal to move the Boards out of Munich serves the interests of judicial independence. It is really the opposite: showing this group of ungrateful judges who's really the boss, who's in control of their careers.

Having established that the Boards had to get out of the current Munich headquarters, Mr Battistelli identified two options: find another building in Munich, or relocate the members of the Boards to Berlin (Vienna, which is now the front runner, appears to have been arranged behind the backs of the Administrative Council (AC) and of the Boards, since it never formed part of the formal proposal).

Boards of Appeal are
getting the message
One would normally think that, faced with the choice between (i) uprooting a group of senior employees from their homes and sending them to another city or country, and (ii) finding an office building in a city the size of Munich, there would be no debate over the proper and ethical course of action and no difficulty in achieving this goal, but Merpel understands that the intention was always to push the Boards out of Munich, and the option to stay there has never received any serious consideration. Whether the AC falls for this ruse remains to be seen.

Merpel wonders if there is a mathematical formula involved which governs the relationship between judicial independence and distance from those being judged? If so, then Merpel suggests that the AC really needs to think about packing the Boards off to Reykjavik - an unbeatable 2,676 km from Munich as the crow flies.

New CJEU reference on linking and copyright: is streaming unlawful content an infringement?

Once again [see here for the latest installment], one might have thought that the story with hyperlinks and copyright was over. 

Of course it's not.

This time at issue there are questions such as: Is selling a product that contains hyperlinks to infringing content a copyright infringement? Are those who stream unlawful content infringers?

These, in a nutshell, are the very interesting questions [see here for an English translation] that the Midden-Nederland District Court (The Netherlands) has just referred to the Court of Justice of the European Union (CJEU).

Katfriend Dirk Visser, who represents one of the parties to the background proceedings 
(Dutch anti-piracy organisation BREIN), explains that this case concerns a media player (filmspeler) that an individual, Wullems, offered for sale via the website 

The sale of this product was advertised as follows:

“- Never pay for films, series, sport again, watch them directly without commercial breaks or waiting times (no subscription fees, plug&play). This means that Netflix is a thing of the past!
- Watching films, series, sport free of charge? Yes please!
- Never go to the movies again thanks to our optimised XBMC software. Free HD films and series, including films fresh from the cinema, thanks to XBMC.
- Are you looking for a Media player so you can watch your favourite films and series FREE OF CHARGE on any TV in HD Full HD or 3D? Then one of our Android Filmspelers (X5 X7 or X9) is right for you!
- You just connect the Filmspeler to your TV/monitor. Plug and play, easy peasy.
- Everything is plug&play and easy to use. All settings have been optimised. A selection of the installed software: ..."

Apparently Wullems installed open source software XBMC on his product and add-ons. The latter contain hyperlinks to contain hyperlinks, which, when clicked on, re-direct users to streaming websites managed by third parties and allowing one to watch films, TV series and live sports events made available without the relevant rightholders' consent.

BREIN started proceedings against Wullems for copyright infringement, also seeking a declaration that streaming by internet users of copyright works made available without the consent of the relevant rightholders does not qualify as ‘a lawful use’ within the meaning of Section 13a(b) of the Dutch Copyright Act, Section 1(f) of the Dutch Related Rights Act and Article 5(1)(b) of the InfoSoc Directive

The Midden-Nederland District Court decided to stay the proceedings and refer two sets of questions to the CJEU:

Shocking: BestWater was not the end
1) Is providing links to unlawful content an act of communication?

"Must Article 3(1) of the InfoSoc Directive be interpreted to mean that “an act of communication to the public” within the meaning of that provision occurs if someone sells a product (ie a media player) on which he has installed add-ons that contain hyperlinks to websites on which direct access is provided to copyright-protected works such as films, series and live broadcasts without the rightholders’ consent? [
Is this different if

- the copyright-protected works have not been previously disclosed to the public online at all or solely via a subscription with the rightholders’ consent?
- the add-ons that contain hyperlinks to websites on which online access is provided to copyright-protected works without the rightholders’ consent are freely available and can also be installed on the media player by the users themselves?

- the websites on which access is provided to copyright-protected works without the rightholders’ consent can also be located and accessed by the public without the media player?"

The Dutch court observed that no unequivocal guidance could be inferred from preceding CJEU case law. In particular, the court observed [contrary to a recent Greek rulingthat, although the BestWater case related to a work that was disclosed to the public without the rightholder’s consent, that decision does not state that no work is communicated to the public (either) if the link leads to the public to a website on which the work has been published without the rightholder’s consent 

Incidentally, in this humble Kat's humble opinion, what the Dutch court said is correct, because in BestWater the CJEU appeared to imply the need for permission of the initial communication: "If and to the extent that [a] work is freely accessible on the website to which the internet link points, the assumption must be that the holders of the copyright have, when they permitted this communication, considered all internet users as the public."

The look of terror:
what if the film George is streaming
was from an unlicensed source?
2) Is streaming unlawful content OK?

"Must Article 5 of the Copyright Directive (Directive 2001/29/EC) be interpreted to mean that there is no “lawful use” within the meaning of the first paragraph at b of that provision, if a temporary reproduction is made by an end user during the streaming of a copyright-protected work from a website of a third party on which this copyright-protected work is offered without the consent of the rightholder(s)?

If the answer to this question is in the negative, is making a temporary reproduction by an end user during the streaming of a copyright-protected work from a website of a third party on which this copyright-protected work is offered without the consent of the rightholder(s) in breach of a the “three-step test” referred to in Article 5(5) of the Copyright Directive (Directive 2001/29/EC)?"

IPKat readers may recall that, among other things, in its decision in FAPL the CJEU held (para 168) that "As is apparent from recital 33 in the preamble to the [InfoSoc] Directive, a use should be considered lawful where it is authorised by the right holder or where it is not restricted by the applicable legislation."

In addition, in ACI Adam [another reference from The Netherlands, commented here and here] the CJEU concluded that the private copying exception within Article 5(2) of the InfoSoc Directive does not encompass reproductions from unlicensed sources.

The Court observed that Article 5(2)(b) does not address expressly the lawful or unlawful nature of the source from which a reproduction may be made. However, when adopting the InfoSoc Directive, one of the objectives of EU legislature was to provide a high level of copyright protection. As a consequence, exceptions and limitations to exclusive rights must be interpreted strictly, and Member States must comply with the three-step test as per Article 5(5) of this directive. In compliance with these principles – notably that of strict interpretation of exceptions and limitations – the private copying exception must be understood as excluding reproductions from unlicensed sources.

This conclusion was also considered in line with what is required by the 3-step test in Article 5(5). To accept that reproductions for private uses may be made from an unlawful source would encourage the circulation of unlicensed works, thus inevitably reducing the volume of sales or of other lawful transactions relating to the protected works. This would conflict with the principle that exceptions and limitations must not conflict with a normal exploitation of the work and must not unreasonably prejudice the legitimate interests of rightholders.

Money to burn? When charities clash in court, there are no real winners

This Kat has from time to time complained that cases have reached court which should have been settled long before they got there.  Here's one such case.  And don't think that this is just the opinion of a fictitious feline: the judge said so too. The case is NOCN (Formerly National Open College Network) v Open College Network Credit4Learning [2015] EWHC 2667 (IPEC), a 25 September 2015 decision of Judge Hacon in the Intellectual Property Enterprise Court, England and Wales (the celebrated IPEC).

NOCN -- an educational coordinator and registered charity -- was the owner of UK registered trade marks for the letters OCN (which stood for "open college network") and NOCN, as well as a series of 10 figurative "swoosh" marks, of one is illustrated on the right.  The defendant, also a charity, was a breakaway from NOCN and was formed by the amalgamation of several local educational networks. Sensibly, NOCN did not object to the defendant's use of the thoroughly descriptive words "open college network"; it was no surprise, however, that NOCN objected that its UK registered trade marks were being infringed by the defendant's mark (below, left), suing also for passing off. The defendant denied trade mark infringement and counterclaimed for cancellation of NOCN's marks on the grounds that they had not been validly registered (i) since they conflicted with prior rights, (ii) they consisted of a "customary term" that was absolutely barred from registration under the Trade Marks Act 1994 s 3(1)(d) [= Trade Marks Directive 2008/95 Art. 3(1)(d)] and (iii) were registered in bad faith.

In support of its action NOCN explained that, in the period up to its incorporation in 1999 all the goodwill in the regional networks associated with the letters "OCN" was collectively held by the members of NOCN's predecessor, which an unincorporated association. The defendant countered that the member local networks were a class of entities, not an unincorporated association, and that since each member network had retained its own separate goodwill there had never been any collective ownership of the goodwill in the letters "OCN".

Judge Hacon dismissed the trade mark infringement action in respect of the word marks but upheld the claims for trade mark infringement and for passing off with regard to the "swoosh" mark,  In his view:

Where should Tibby go to study ...?
* The obvious relationship between the term "open college network" and its usual abbreviation "OCN" complicated the task of tracing the ownership of goodwill in the businesses associated with the name. Although neither side had argued for it, the conclusion had to be that both the letters "OCN" and the term "open college network" were entirely descriptive of a new type of educational body. Goodwill could not be attached to a purely descriptive term [unless of course it can, observes the Kat: it has attached to terms as purely descriptive as advocaat, vodka, Greek yoghurt and Swiss chocolate, for a start. This is what "extended passing off" is all about].

* It was significant that NOCN had not tried to restrain the defendant's use of the term "open college network", since the evidence showed that that term and the letters "OCN" were used descriptively;

* Any goodwill owned by the local networks was associated with their respective regional names, not with the letters OCN alone;

* Even if goodwill in "open college network" and "OCN" had arisen in the past, whether the affiliated networks had formed an unincorporated association or a class was irrelevant. This was because, in either event, NOCN owned no part of it;

* The counterclaim for invalidity under the Trade Marks Act 1994 s.5(4)(a) on the basis of prior rights failed, but it did succeed on the basis of a customary sign;

* Had the mark been valid, the defendant would have infringed it;

* NOCN's "swoosh" mark was not invalid for bad faith and was validly registered.

* The "swoosh" mark was infringed by the defendant's logo, and the claim for passing off succeeded.

The IPKat notes the judge's final words, at [73]:
 I now know that between them the parties, both charities, have incurred well over £400,000 on fees in this litigation. A very strong recommendation to settle at the case management conference was not taken up. The laudable cause of encouraging adult education will presumably have to endure an equivalent cut in funding solely because this dispute was not resolved at an early stage. Such an outcome is much to be regretted.
Here, of course!
This is by no means the first occasion that charities have faced each other in the courtroom in intellectual property proceedings that were unnecessary and perfectly avoidable, but if this isn't the most perfect example of a disgraceful waste of utter stupidity in branding and squandering of charitable funds for no constructive purpose this Kat has yet to see it.   While this Kat is a keen supporter of charities in general and educational charities in particular, he would be most reluctant to see so much as a penny's worth of his hard-earned cash go to any charity that adopted a logo as confusingly similar to that of another charity, whatever its alleged reason or justification.  He hopes that the Charity Commission will want an explanation.

Charity begins at home here
Faith, hope and charity here

Wednesday, 7 October 2015

Wednesday whimsies

This case seems to be
getting out of hand ...
To recap, the Court of Justice of the European Union (CJEU) gave its ruling on Wednesday 16 September in the '3D chocolate finger' trade mark case,  Case C-215/14 Nestlé v Cadbury [noted by Eleonora here]. On that very day, IPKat blogmeister Jeremy happened to alight upon the MARQUES Conference in Vienna, where some 820 trade mark experts -- mainly from Europe -- assembled. When he spoke to them, he received several different explanations as to what the CJEU's ruling actually meant.  While recent guest posts from Thomas Farkas (here) and Roland Mallinson (here) have suggested that the ruling was effectively a win for Nestlé -- subject to whatever the referring court might now do with the CJEU's ruling -- the popular press and many other practitioners have taken a different view.   Given the uncertainties as to what the CJEU's ruling actually meant, Merpel decided to ask readers of this weblog what they thought Mr Justice Arnold should do, now that he has either an answer or no answer to his questions. The results of this weblog's sidebar poll look like this:
What should the judge do? 
Accept the ruling gracefully and apply it to the letter, if that should be possible 46 (22%) 
Interpret the ruling in the light of his own knowledge of the law 58 (28%) 
Make a second reference to the CJEU to seek clarification of what it meant 52 (25%) 
Find a means of getting another judge to hear the next bit of this litigation and save himself a headache 46 (22%)
Never before has an IPKat sidebar poll attracted such a close call in terms of readers' responses.  This Kat thinks there is a case for saying that the good judge should fire the case back to Luxembourg and ask for some unequivocal clarification, though Merpel is inclined to think he should clarify the decision himself, leaving it for other judges to refer their cases to the CJEU if they disagree with him.

Here's a not particularly rigorous survey (naturally, since it's not one of ours, adds Merpel), prompted by Merpel's recent post to the effect that French applicants for European patents might not get their applications dealt with as swiftly as those of other nationalities. According to one of our more numerate readers, there have been 1,204 EP A documents published with French priority since 1 August 2015 and 194 EP A documents published with Spanish priority in the same period. Of the French documents, 118 (or 9,8% if you prefer) were published as A2s while for the Spanish only 9 (a paltry 4.6%) were published as A2s.  It is acknowledged that there may well be effects from backlogs in specific subject-matters associated with these delays. Or might this be a reprisal against the Spanish for having not only invented the concept of mañana mañana

Not all prosthetics
are patented, it seems
Around the weblogs. Here's a powerful piece of prose from Mark Anderson with the pull-no-punches title of "Amateurism doesn't work for IP", which it doesn't [adds Merpel: even professionalism doesn't always work either ...].   The IP Finance blog features a guest post from Felix Rozanski on the continuing problem of how to attract private sector investment in R&D and innovation in Latin America [Merpel's suggestion: make it more profitable to invest in IP than in infringement, which never seems to suffer from a shortage of private sector investment].  "Do not destroy the foundations of your argument" is the stern warning of Michael Thesen, noting EPO decision T2201/10 on PatLit.  The SPC Blog rejoices in the CJEU's clear and unambiguous ruling in Case C-471/14 Seattle Genetics that innovative pharma companies can get a few more days' protection for their extended monopolies. Finally, Aistemos takes a Cipher Snapshot at the distribution of patents and players across the vast, largely uncharted prosthetics sector.

From Katfriend and Polish blogger Bogusław Wieczorek comes a follow-up to an item this blog touched on over a year ago here. The story involved copyright in the unofficial so-called Polish "national anthem", Red Poppies in Monte Cassino, which turned out to be vested in the State of Bavaria.  Last month, representatives of Bavaria and Poland signed an agreement transferring the rights in this anthem to Poland. You can read the story in full in English, plus a scanned version of the agreement in question -- in Polish only -- here.

Tuesday, 6 October 2015

Gucci may be one nail away from a new legal battle

Kevin Bercimuelle-Chamot
Still dreaming of the outfits and accessories seen on the catwalks at recent Fashion Weeks around the world? Such dreams may come with legal headaches in some cases, eg for Italian fashion house Gucci.

Young and talented Katfriend Kevin Bercimuelle-Chamot (Lumière University Lyon 2) explains what is or may be going on.

Here’s what Kevin writes:

“The first half of 2015 has been a fairly animated one for Gucci. First, its (long-standing) cross-border trade mark battle against Guess? has taken a new shape. While the action that the Italian house had brought in France was dismissed on 30 January 2015, on 11 August 2015 Gucci won against Guess? before an Australian court. 

This legal saga, however, has not been the only element spicing life up at Gucci. 

Like other fashion houses [the latest piece of gossip appears to be that Phoebe Philo may be about to leave Céline] also Gucci has taken part in the fashion game of musical chairs. 

In January 2015 Alessandro Michele was appointed creative director following the abrupt departure of Frida Giannini [together with her now husband and former Gucci CEO Patrizio di Marco]. But this period of renewal might also be the beginning of a new legal battle.

Bijules nail rings
And Gucci might be the infringer this time.

Indeed, on 23 September last Gucci unveiled its Spring/Summer 2016 women’s collection. Amidst numerous accessories, golden nail rings could be spotted on the hands of models. It was the first time that the Italian house proposed this type of jewels.

The response of the fashion world has been immediate.

Among other reactions, one has to be particularly underlined. It is the one of American jeweller Bijules, also famous in the luxury market for its … nail rings. They are worn by celebrities like Beyoncé and Rihanna, just to mention a couple.

In a statement, Bijules designer Kim Jules said that Bijules may consider starting proceedings against Gucci for copyright infringement. She also pointed out how Gucci’s new creative director could have not been unaware of Bijules creations in his former capacity as Gucci head of accessories.

While waiting for future (contentious) developments, we may want to take a look at and compare the nail rings by Bijules and Gucci, respectively.  

Gucci nail rings
The “Bijules Serpensive Nail Ring” was registered with the US Copyright Office in 2007. As such it is protected by copyright under US law. The relevant rings – made of silver or gold – are composed as follows. The upper part of the ring reproduces the shape of a woman’s nail, which is attached to the finger through a ring. The lower part is shaped as a snake directed towards the hand. Overall these rings superpose the nail onto the distal phalanx of the wearer. Several models exist on the market, including one encrusted with crystals. A variation of the size of the nail can be also found.

The nail rings presented during Gucci’s show are all golden. They also reproduce the shape of a nail, that is juxtaposed to the nail of the wearer thanks to a ring at its basis. In several versions there is also the double G monogram of Gucci reproduced in small dimensions. There is also a version in which a golden bee is to be found on the basis of the ring. It is noteworthy to underline that the bee points towards the hand of the wearer. Also, other versions are made with spikes on the nail. The global size of the nail ring is variable, depending on the version.

It can be said that there might be a strong similarity between those nails rings, especially with regard to some versions. It is especially true after comparing detail by detail the rings of Bijules and Gucci.

But to hear the continuation of this story, we have to wait to see what Bijules eventually decides to do (also considering that it is unclear whether Gucci intends to market its own rings). If an action for copyright infringement is eventually brought, it will be interesting to see on what defence(s) (if any) the Italian fashion house will try to rely.”

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