Rule 141 and UK IPO spin

tytoc collie wondered a few weeks ago what the point was of the new requirements as from 1 January 2011 to supply search results to the EPO on priority applications, under an amended version of Rule 141 EPC.  This was particularly puzzling since the requirement will immediately become superfluous in relation to priority application from the UK, US and Japan, according to a Decision of the President from 9 December 2010.

Baroness Wilcox meets Wallace & Gromit [Flickr]

Thanks to a press release (UPDATE: see the original here; the web version has now been mysteriously modified, possibly in light of tytoc collie's comments below) issued today by the UK Intellectual Property Office, the point now becomes clear.  According to the UK minister responsible for IP, Baroness Wilcox (right: the one in the middle), the point is cutting duplication of work. She says:

"Reducing the burden of bureaucracy saves businesses time and money. It is essential in creating the conditions for businesses to grow and prosper. 

These new arrangements will make it cheaper and easier for UK firms to obtain patent protection as they look to expand into other European countries. 

The UK has been campaigning for greater work sharing like this and I am pleased to see this latest development. 

Cutting duplication is key to dealing with the worldwide backlog of patent applications.
The quicker we deal with patent applications, the quicker firms can bring the latest innovations to the consumer."

These might seem like very good aims, but only really make sense if they relate to reducing a burden that already existed.  Rule 141 in its new form does not even come into force until tomorrow, so to claim that the requirement not to submit search results somehow reduces the burden on applicants is somewhat disingenuous, to say the least.  In its old form, Rule 141 could only result in an EPO examiner inviting the applicant to provide search results, with no provision for a penalty if the applicant did not comply. This was therefore hardly an onerous burden, and in practice was rarely used.

To add a further insult to its (presumably uninformed) readers, the IPO adds that the new requirements reduce costs because "individuals cannot make their own applications to the EPO so companies must engage a patent attorney to do it for them".  It is perhaps fair enough to presume that a non-patent attorney applicant would not know of the provision of Article 133 EPC, which states that, except for applicants from outside Europe, "no person shall be compelled to be represented by a professional representative in proceedings established by this Convention".  To have the IPO propagate such misinformation, however, is a little surprising.

tytoc collie thinks that perhaps the new year celebrations have started a little early at the IPO.

Happy new year!

On behalf of Merpel, the AmeriKat, Tufty, Birgit, David, Mark, Matt and Neil, tytoc collie takes this opportunity to wish all of his readers a very happy new calendar year, starting in just a few short hours time -- unless you are Japanese, an Australian, or similar -- in which case you are ahead of our time, if not your own.

tytoc collie is also very excited to tell everyone that, just a few short hours ago, he welcomed his 5,000th email subscriber (we're up to 5,001 now, and rising); his Tweets have a following of 1,477 -- almost exactly the 738 he had on the last day of 2009.  And so far this blog has been visited over 689,000 times, a decent rise over 2009's figure of 643,451.

All the Kats are united in thanking you, our readers, for your leads, your thoughts, your constructive comments and your attention -- as well as your participation in the wider IP community.

Friday fantasies

No new forthcoming events were added this week, but there are still plenty of excellent events in the pipeline, so do remember to check them out on tytoc collie's Forthcoming Events page here.

The Kat is having a bad caption
day. Can anyone come up with
a good one?

Around the blogs.  tytoc collie's attention has been drawn to Digital Copyright Canada, which operates under the banner of 'All Canadian Citizens are "Rights Holders"!'  Like most things digital, its interest transcends even Canada's ample borders, so do take a look if you are a digital copyright consumer/producer.  The weblog of the Journal of Intellectual Property Law & Practice, jiplp, carries a stern warning about plagiarism and the use of unattributed sources -- two things which are temptingly easy to do in the digital environment.  MARQUES's Class 46 European trade mark weblog asks readers for their advice on registering a trade mark so that you can give it to a friend as a present, but readers are either still on holiday or are waiting for someone else to post the first comment.  Class 99, the design law weblog, has spotted a reference to the Court of Justice of some interesting questions on registered Community design infringement.  The 1709 Blog, dedicated to copyright, hosts a neat note from Hector MacQueen on some repercussions for copyright of a newly-published Scottish Law Commission Discussion Paper on "Prescription and Title to Moveable Property".

IPKat weblog reader Ton van der Reijken writes to remind us that Nominet -- the UK registry for dot.uk domain names --  will be offering short domain names to registered trade mark owners.  Rules and guidance here; register here.


Regarding this weblog's recent post on the Court of Justice ruling in the battle over Bavaria beer ("Court upholds Dutch Claim to Bavaria", here), the Kats have received a thoughtful missive from their friend, scholar and trade mark diplomat extraordinaire, Alexander von Mühlendahl.  Alex writes:

"First of all, BAYERISCHES BIER is a traditional Bavarian specialty since the 16th century at least, and in my humble opinion a beer brewer in Holland should have chosen a name different from "Bavaria", thus staying away from profiting from the name and reputation of "Bavarian" [An admirable sentiment, though not one which is expressed in European Union trade mark legislation. Would we say the same if for 'Holland' we substituted 'United States' and for 'Bavaria' we substituted 'Budweiser'?  Budweis beer was brewed in Bohemia since 1265.  However, it is now clear that the Danes, French, Germans and Britss should have opted for a name other than Feta for their feta ...].

Second, the first Bavarian case - C-343/07 - upheld the validity of the registration of BAYERISCHES BIER as a PGI, and it did not hold that the Dutch were entitled to use their mark in Italy. That issue is currently before the Italian courts.[In legal terms Alex is absolutely correct; the Court of Justice only makes a preliminary ruling, and then it's up to the referring court to apply the law: but the right to use the Dutch Bavaria trade mark in Italy has already been conferred by Der Spiegel and Reuters, and no-one seems to be betting on a win for the real Bavarians].

Nota bene: Under a bilateral German-Italian treaty for the protection of GIs, concluded in 1963!, Bayerisches Bier has always been reserved to German products in Italy. [Quite rightly so! This Kat would defend the reservation of this right to German products too]

Third, the ECJ's newest foray into the conflicts between trade marks and GIs, the second Bavarian judgment of 22 December 2010, merely held that the Dutch-origin mark could not be cancelled on the grounds of Article 14 of Regulation 2081/92. But no more: prior to the registration of BAYERISCHES BIER (or the publication of the registration) German law applied, and nothing in the Court's judgment precludes German courts from applying to a mark applied for or registered in (or with effect in) Germany the rules of German law. Under German law applicable until the protection at EU level became effective there should not be any doubt that the registration of the Dutch Bavarian mark could have been cancelled. And this may well still happen now.[The Kat suspects that one or two readers may wish to comment on this point]

As IP lawyers we know, by the way, that the principle first-in-time = first-in-right, also called the priority principle, has so far not ever been interpreted as meaning that where two marks or signs are in conflict, the date of publication of registration is decisive. The ECJ could have held that the date of application for registration was decisive - it did not, instead choosing for BAYERISCHES BIER the latest possible date of all dates. We should be wary before applauding such a novel notion.  Thus the cases are not yet over, and certainly not yet resolved n favour of the Dutch Bavarians".

The British New Years Honours List for 2011 went public this morning (you can check it out in full here) -- and it didn't have a great deal of cheer for the private sector of the innovation community. Dr John Crawshaw Taylor, an inventor, was awarded an OBE (Order of the British Empire) for services to business and to horology.  The holder of over 150 patents, Dr J's innovations led to the sale of over 200 million Strix thermostat controls for electric kettles (used over a billion times a day by over 20% of the world's population).  He is also a noted philanthropist, though there is now public record as to how much money he has invested in the services of intellectual property practitioners.  Six good souls from the government's Department for Business, Innovation and Skills also picked up honours: on Knight Bachelor, one Companion of the Bath, one CBE, one OBE and two MBEs -- which presumably shows that we are better at administering innovation than at doing it.  Congratulations, everyone!

A tale for our time: Princess Ilonka and the Landeshauptmann

Until very recently tytoc collie had never heard of Ilonka Sayn-Wittgenstein.  Now he thinks she's heading to be a household name, either as described above or, as she would prefer it, as Ilonka Fürstin von Sayn-Wittgenstein.  The long name is banned by the Austrians, it seems, but the Germans have no problems with it.  The lady is an Austrian, but lives and works in Germany.  All this is the stuff of which exciting references to the Court of Justice of the European Union are made.  And don't think that this has nothing to do with intellectual property, because it does.

The history of Europe used to be
the story of mad kings; now we
have so few monarchs, our
legislators, administrators and
judiciary have to take it in turns
to be mad ...

The saga of Case C 208/09  Ilonka Sayn-Wittgenstein v Landeshauptmann von Wien, in which the court gave its ruling on 22 December, all began in Vienna, Austria, in 1944 where Ilonka was born, instantly becoming an Austrian citizen. After later moving to Germany, where she became permanently resident, she was adopted in 1991 by a German citizen, one Lothar Fürst von Sayn Wittgenstein, through an order issued by the Kreisgericht Worbis (Worbis District Court); in the next year the same court issued a supplementary order to confirm that, following the adoption, Ilonka had indeed acquired the surname of her adoptive father as her name at birth, in the form ‘Fürstin von Sayn-Wittgenstein’.  The designation "Fürst", and its feminine form "Fürstin", mean "prince" and "princess" respectively.  This isn't always useful for professional purposes, but it was really handy for Ilonka, whose day job was selling castles and stately homes.  

At first all went well.  The Austrian authorities registered Ilonka's long but apparently legal surname in the Austrian register of civil status; she received a German driving licence in that name and incorporated a German company under it. Her Austrian passport was renewed at least once in her princessly persona, in which the Austrian consular authorities in Germany treated her to two certificates of nationality.

Without the goodwill in "Fürstin von", Ilonka might
end up selling castles of  a less grand nature

At this point things started going pear-shaped.  In November 2003 the Austrian Constitutional Court ruled, in a similar case, that Austria's Law on the Abolition of the Nobility bans Austrian citizens from acquiring a surname which includes a former title of nobility by means of adoption by a German national who is permitted to bear that title as a constituent element of his name.  By this Law,no Austrian may bear titles of nobility, including those of foreign origin. Further, Austrian law, unlike German law, does not permit surnames to be formed according to rules that are different for men and women.  This being so, the Landeshauptmann von Wien (a sort of Viennese administrative top dog, this Kat thinks) decided that Ilonka's post-adoption birth certificate was incorrect and told her he was going to amend her surname in the register of civil status to ‘Sayn-Wittgenstein’.

The precise words with which Ilonka greeted this news are not recorded in the reference for a preliminary ruling, but tytoc collie guesses that they must have sounded impressive, even to a non-German-speaker.  Anyway, the good lady objected and maintained that, based on EU law, she was entitled to travel within the Member States of the European Union without having to change her name.. The Landeshauptmann von Wien was unmoved and lopped off the offending "Fürstin von".  Ilonka then took to the courts.  She argued on the basis of infringements of her rights to freedom of movement and to provide services, as guaranteed by the Treaties of the European Union: non-recognition of the effects of the adoption with regard to the law governing names amounted to an obstacle to the freedom of movement of persons because she would have to use different surnames in different Member States.  Also, in relation to public policy (the basis on which Austria bans handles of nobility), Member States were mutually obliged to restrict its application to the most necessary and most intolerable cases.  As if a plea based on economic freedoms wasn't enough, Ilonka invoked human rights (though this probably isn't the right court for that sort of plea: down the road in Strasbourg she might have had better luck).  She argued tht an amendment of the surname ‘Fürstin von Sayn Wittgenstein’ which she had used continuously for 15 years, constituted interference with the right to respect for family life guaranteed by Article 8 of the European Convention for the Protection of Human Rights and Fundamental Freedoms.

Born in 1944?  tytoc collie hopes the castles
she sells are as well-preserved as she is ...

The Landeshauptmann was unmoved: there was nothing in this episode to cramp the right of freedom of movement provided for in Article 21 TFEU or seriously to inconvenience Ilonka -- she was not being required to use different names but merely to remove the noble element ‘Fürstin von’ from the surname ‘Sayn-Wittgenstein’, which remained unchanged. And even if she were to suffer some professional or personal inconvenience as a result of the correction to the birth register, that inconvenience should not be accorded an importance which would justify ignoring the Law on the abolition of the nobility. Adding insult to injury he even asserted that the Germans didn't know their own law: according to the German choice-of-law rules, he said, the name of a person is determined by the law of the State of which that person is a national. If it had correctly applied the law, the Kreisgericht Worbis should have concluded that Ilonka's name had to be determined under Austrian law. Since the form ‘Fürstin von Sayn-Wittgenstein’ is not authorised under Austrian law, its attribution to the applicant is incorrect under German law too.

Hearing this dispute, the Verwaltungsgerichtshof probably thought "(i) whichever side we hold for, we'll upset the other side, (ii) we can see both sides of the answer, (iii) we don't know the answer anyway and (iv) no-one likes the Court of Justice, which is in any event on neutral soil", so it decided to stay the proceedings and refer the following question to the Court of Justice for a preliminary ruling:

‘Does Article [21 TFEU] preclude legislation pursuant to which the competent authorities of a Member State refuse to recognise the surname of an (adult) adoptee, determined in another Member State, in so far as it contains a title of nobility which is not permissible under the (constitutional) law of the former Member State?’

The Court of Justice of the European Union (Second Chamber) has now held that the question should be answered as follows:

"Article 21 TFEU must be interpreted as not precluding the authorities of a Member State, in circumstances such as those in the main proceedings, from refusing to recognise all the elements of the surname of a national of that State, as determined in another Member State – in which that national resides – at the time of his or her adoption as an adult by a national of that other Member State, where that surname includes a title of nobility which is not permitted in the first Member State under its constitutional law, provided that the measures adopted by those authorities in that context are justified on public policy grounds, that is to say, they are necessary for the protection of the interests which they are intended to secure and are proportionate to the legitimate aim pursued".

In other words, the court is saying [according to Merpel]:

"We are delivering a ruling that is applicable only to situations with the same unusual facts as this one; we can't tell from Luxembourg whether the conditions in Austria in 2010 are such as to justify the protection of interests which they are intended to secure, not that we can even imagine what they are, and we leave it to the referring court to determine what the legitimate aim pursued by the Law on the Abolition of the Nobility is, and whether trying to stop a German resident from selling castles under her preferred name is a proportional response to the threat of people with funny names staging a coup and reinstating the Habsburgs".

tytoc collie, who has no interest in either promoting or preventing noble names, thinks the prohibition on Ilonka being able to use her chosen name is pathetic and an embarrassment to 21st century Austria.  Ilonka can register her full German name as a Community trade mark, which will cover the whole of Austria; she can trade in castles in Germany and watch with amusement as the goodwill in her business crosses the Austria-German border on foot, by car, on TV and radio and via the internet.  Austria has a past -- as do many countries -- and is entitled to escape from a return to it; but Austria also has a present and a future, and it may be wondered whether the ban on titles of nobility, and on Austrians getting adopted by title-bearing Germans, is still relevant.  Merpel adds, from a trade mark infringement and passing-off point of view (in those countries where it is appropriate), the "bona fide use of one's own name" defence generally depends on one's use of the exact name and not a variant of it; if Ilonka is unable to continue to use the name of her choice, the availability of that defence might be at risk.

Castles in the air here, here and here

The BGH and the photographs of Prussian castles

tytoc collie almost missed these three "copyright-related" cases, which were decided by 5th Civil senate of German Bundesgerichtshof, which is the senate that is, inter alia, responsible for property law.

On 17 December 2010, the 5th Civil senate of German Bundesgerichtshof decided in three cases brought by the Prussian Palaces and Gardens Foundation Berlin-Brandenburg ("Stiftung Preußische Schlösser und Gärten Berlin-Brandenburg", "SPSG") against third parties that had taken and/or distributed pictures of the SPSG's gardens and palaces without the foundation's permission. The Bundesgerichtshof held that public foundations, such as the SPSG, which curate palaces, gardens, etc., own the exploitation rights for photographs taken of these facilities from within the property boundaries as well as for photographs which have been taken of the facilities for commercial use and exploitation.

Please click here to retrieve the court's detailed press release which tytoc collie has translated and summarised below.

The first case (case reference: V ZR 45/10 of 17 December 2010) dealt with a law suit the SPSG had brought against a photo agency. The SPSG had claimed that the photo agency had commercially exploited photos of the SPSG's parks and palaces without. The court of appeal, the Higher Regional Court of Brandenburg had dismissed the SPSG's claim and taken the view that taking photographs and making films of the parks and palaces did not infringe the SPSG foundation's property right since the SPSG had allowed free access to the parks and palaces. As such, the exploitation rights for the photographs and films rested with the actual copyright owners rather than the SPSG.

On appeal, the Bundesgerichtshof saw things differently and referred the case back to the court of appeal. In its decision the curt referred to two precedents of the Bundesgerichtshof's 1st Civil Senate, which is the senate responsible for copyright matters: "Schloss Tegel" (case reference: I ZR 99/73) and "Friesenhaus (case reference: I ZR 54/87). In these decisions the Bundesgerichtshof's 1st Civil Senate had legally differentiated between pictures had been taken from outside the property boundaries and those that had been taken from within the property boundaries. The latter ones can be prohibited by the property owner since it is he who can determine the use of the land. The 5th Senate applied these precedents and took that the view that despite the fact the SPSG's legal interests were different to those of a private owner of a real estate property, since the SPSG was a public foundation and so had to pursue the common good ("Gemeinwohl") as its main interest, the SPSG nonetheless had no (public) duty to allow third parties to use the parks and palaces for their commercial purposes. The Higher Regional Court now has two decide the case again applying these legal principles to the facts of the case.

A second case dealt with the SPSG's claim against a film producer who was distributing DVDs of films about the city of Potsdam (case reference: V UR 45/10 of 17 December 2010). Since the (real estate property) rights of SPSG were obvious in this case, with the films having clearly been made from within the property of the SPSG, the Bundesgerichtshof was able to decide the case in favour of the SPSG without having to refer it back to the Higher Regional Court.

As regards to the SPSG's third lawsuit (case reference: V ZR 44/10 of 17 December 2010), a claim against an Internet platform which allowed the exploitation of third party photographs by photographers and photo agencies on its virtual forum, the Bundesgerichtshof referred to its recent precedent concerning Wireless Lan networks in the "Sommer unseres Lebens" (case reference: I ZR 121/08) and held that the claimant only had a duty of care in those cases where there was an obvious infringement of third party rights. Hence, an Internet portal which publishes photos was free from liability unless it has positive knowledge of the infringement. The mere fact that someone had shared the photos on the forum was not enough to constitute knowledge since it was impossible for the forum owners to determine whether the photos had been taken with permission and/or from within our outside the property boundaries.

Merpel summarises these three cases as follows: the decisions clarify that public proprietors of real estate property enjoy the same rights as private property owners: while neither can prevent that photos are being taken from outside the property boundaries, public and private owners alike nonetheless have identical rights to control photography which takes place within the property's boundaries.

The SPSG's website (picture top left) can be found here - it does include some very beautiful photographs of the respective parks and gardens.

Trade marks, AdWords and the location of harmful events: some brain-teasers

Without the facts, tytoc collie isn't even sure
if this is the right Wintersteiger

Now here's a good IP question or two for the Court of Justice of the European Union -- it's coming up in Case C-523/10 Wintersteiger [courtesy of the UK Intellectual Property Office, here] and the questions run like this:

"1. In the case of an alleged infringement by a person established in another Member State of a trade mark granted in the State of the court seized through the use of a keyword (AdWord) identical to that trade mark in an internet search engine which offers its services under various country-specific top-level domains, is the phrase "the place where the harmful event occurred or may occur" in Article 5(3) of Regulation 44/2001 ("Brussels I") is to be interpreted as meaning that;

1.1. jurisdiction is established only if the keyword is used on the search engine website the opt-level domain of which is that of the State of the court seized;

1.2. jurisdiction is established only if the search engine website on which the keyword is used can be accessed in the State of the court seized;

1.3. jurisdiction is dependent on the satisfaction or other requirements additional to the accessibility of the website?

2. If Question1.3 is answered in the affirmative: Which criteria are to be used to determine whether jurisdiction under Article 5(3) of Brussels I is established where a trade mark granted in the State of the course seized is used as an AdWord on a search engine website with a country-specific top-level domain different from that of the State of the court seized?"

tytoc collie is surprised only that it has taken so long for these issues to reach Europe's highest court, given the high level of internet (and AdWord) use within a single market in which there are so many countries and jurisdictions.

If you would like to advise the UK Intellectual Property Office on these issues, thus enabling the UK government to decide whether to get involved or not, you can email your thoughts here.  As usual, the time for response is absurdly short, and is really an insult to the intellectual property community: you have to submit your comments by Tuesday 4 January 2011 -- and there aren't exactly many working days between now and then.   The deadline for the court to receive observations is 1 March 2011.

Merpel says, can any reader tell her what the underlying dispute is all about?

The BGH, the "circulation" of images and a "psychogram of a murderer"

In a decision of 7 December 2010, the German Bundesgerichtshof has decided that an image archive agency which provides images from its archives to an (external) press outlet has no duty to examine the lawfulness of a final press report which uses these images as illustration, (case references: VI ZR 30/09 and VI ZR 34/09 of 7 December 2010)

What had happened? The Bundesgerichtshof's press release of 7 December 2010 tells us as follows (summary and strictly unofficial translation by tytoc collie).

The defendant in the proceedings operated a commercial image archive which press and media outlets used for sourcing images. The claimant, who had been convicted for several killings and murders, has been serving a life imprisonment sentence since 1983. German media had extensively reported about the claimant's crimes in the 1950s, 1960s and early 1980s. Upon a request by German Playboy magazine, the defendant provided the magazine with one image depicting the claimant in the 1950s and two images showing the claimant in the 1960s. Playboy magazine then used the images to illustrate a feature article about the claimant under a title which roughly translates into "The file ….psychogram of one of the murderers of the century" ("Die Akte … Psychogramm eines Jahrhundertmörders").

The claimant objected to this, stating that the defendant had circulated the images without his prior consent and as such had infringed his "right to his own image" under § 22 of the German Act on the Protection of the Copyright in Works of Art and Photographs (Kunsturhebergesetz, KUG). The claimants were of the view that their actions were protected by the human of right of freedom of the press under Article 5(1)(2) German constitution.

By way of background: The so-called ‘‘right to one’s own image’’ (Recht am eigenen Bild) under § 22 KUG is a special manifestation of the general personality right, as protected by the German constitution in its Articles 1(1) and 2(1). Under § 22 KUG, an ‘‘image’’, which includes any kind of presentation that reproduces the appearance of a person, so as to be identifiable by third parties, may only be circulated in public with the consent of the person depicted. §§ 22 and 23 KUG contain detailed provisions concerning the protection of an individual’s image.

The claimant's law suits aimed at preventing the circulation of the images. The court of first instance, the Regional Court of Frankfurt, decided in favour of the defendants (case references: LG Frankfurt am Main, 2/3 O 129/07 and 2/3 O 90/07 of 17 April 2008. On appeal, the Higher Regional Court of Frankfurt, found - partly - in favour of the claimant (case references: OLG Frankfurt am Main, 11 U 22/08 and 11 U 21/08 of 23 December 2008).

Upon further appeal, the VI Civil Senate of the Bundesgerichtshof, which is, inter alia, responsible for personality right cases, has now dismissed the claims. In its decision of 7 December 2010, the Bundesgerichtshof reiterated that the exchange/provision of lawfully archived images is protected by (the human of right of) freedom of the press as protected under Article 5(1)(2) of the German constitution. Further, in accordance with established precedents, freedom of the press not only protects the distribution of news and opinions but also protects the process of preparing the process of publication, which in particular includes the gathering of information. The court took the view that this legal background had to be taken into consideration when interpreting the terms "circulating of images" as set out in § 22 KUG. A quasi "press-internal" passing on of images by an image archive could hence not be made dependant on the owner of the image archive having to assess whether or not the press publication using of the images was lawful. It was entirely the responsibility of the actual press publisher to examine whether the use of the images was in accordance with §§ 22, 23 KUG. The depicted individual, here the claimant, did not suffer any "tangible disadvantage". The quasi "press internal" passing on of images at most affected his personality rights in a negligible way.

Merpel, who is familiar with the KUG, notes that the court of appeal, the Higher Regional Court of Frankfurt, had interpreted § 22 KUG more broadly than the Bundesgerichtshof. The Higher Regional Court had held that the defendants had a duty (akin a duty of care) by which they had to examine the lawfulness of the final publication using the images, even in cases where this was "difficult" or "unusual" . While there are good arguments to support the Frankfurt court's stricter view, this Kat feels inclined to agree with the Bundesgerichtshof's approach, which appears is little closer to reality when it interprets "circulation" as an external process, with the crucial moment being once actual publication has taken place rather than the moment when an image is sourced from an archive and passed on to another press outlet. So while this decision strengthens the scope of freedom of press it also appears to confirm that interim injunctions are the instrument of choice when it comes to potential personality right infringements.

The Bundesgerichtshof's press release of 7 December 2010 can be retrieved from the court's website by clicking here, where the lovely picture of the court top left has also been taken from.

Wednesday whimsies

Loz Kaye and tytoc collie may not share
the same political and legal outlook,
but they are united in their affection
for little woolly hats

The Pirate Party UK has declared its hand with regard to the forthcoming Oldham East and Saddleworth by-election -- and this may be a little embarrassing for one of Europe's leading media and IP lawyers.  A long-standing and much-admired friend of tytoc collie is Laurence Kaye, solicitor, blogger and level-headed commentator on IP/media matters.  Now, the Pirate Party UK candidate for for election to the Mother of Parliaments is its current leader ... Laurence Kaye.  This Laurence Kaye, known as "Loz", blogs and tweets;  a supporter of Wikileaks, he is campaigning on a platform promoting freedom of speech and government transparency.  By profession (and this is surprising, given his attitude to copyright) he is a composer and musical director, currently teaching at the Liverpool Institute of Performing Arts. tytoc collie notes that this by-election has actually been caused by the exercise of freedom of speech by the incumbent Member of Parliament Phil Woolas, who was stripped of his Parliamentary seat (starting salary £65,738 plus generous expenses allowance and you get to vote to decide what your pay should be) after saying some naughtily untrue things about a fellow candidate.

DV or not DV, that is the question.  On the subject of people with confusingly similar names, not everyone knows that there is a difference between Dirk Visser and Derk Visser.  tytoc collie is therefore pleased to remove any misapprehension which readers may be cultivating.  Dirk is Professor of intellectual property law at Leiden University and a partner with Dutch IP specialists Klos Morel Vos & Schaap in Amsterdam.  Derk, in contrast, is a patent attorney at EIP and Lecturer in European patent law with CEIPI in Strasbourg.

Above, left: Darth Vader, disguised as Tufty the Cat;
below, right: Tufty the Cat, disguised as David Vaver

On the dark side, Merpel reminds tytoc collie, we should not forget an extremely valuable intellectual property who shares the same initials as Dirk and Derk Visser: Darth Vader -- which in verbal terms is not actually much different from another IP landmark, David Vaver.  And before you say that there's no likelihood of confusion between the latter pair, taking account of their visual, aural and conceptual components, remember that the European Union is blessed with a General Court which is easily likely to be confused.

Darth Vader, this time
not disguised as Tufty,
listens to the IP Strategy
podcasts

IP strategist, pod-jock and nice guy Duncan Bucknell has been investing a huge amount of time, effort and thought in getting his series of IP podcasts (it says "by Think IP Strategy", which is what his outfit now calls itself, but we still call it IP ThinkTank, which us easier to remember) up-and-running.  Until today IPKat team member Jeremy has had no time for all this tomfoolery with podcasts -- but now that he has finally worked out how to turn his iPod on, he has decided that the time has come to adopt a more positive stance.  Anyway, you can download and/or subscribe to the entire current series of IP Strategy podcasts, free of charge, via iTunes here.  Enjoy!

Around the weblogs. The jiplp blog, which is tied to the Journal of Intellectual Property Law & Practice (JIPLP), traditionally publishes a fair bit of subscription copy free-of-charge, including the monthly editorials.  The editorial for the January 2011 issue is a bit of a break with traditional -- it's a guest piece, written by Editorial Board member and Scottish solicitor Gill Grassie (Maclay, Murray & Spens, LLP) on IP and environment/climate change: "Pooling together: IP as hero or villain?". You can read Gill's opinions here.   Those readers who are into patent litigation one way or another will be pleased to note that PatLit has published a complete list of its "PCC Pages" series on England and Wales's increasingly affordable and user-friendly Patents County Court.  The affable, imaginative and culture-wise Gino van Roeyen, one of the MARQUES Class 46 trade mark blog team, has posted the fruits of his legal, historical and sociological musings in "Ex Parte SANTA CLAUS": you can find it on mr-online here.

If innovation is the tonic, what's the gin?

The Chartered Institute of Patent Attorneys (CIPA) has issued today its "scorecard" for the UK's coalition government. According to CIPA's media release, "The coalition government has been putting money – what little it can find – where its mouth is in encouraging innovation, according to Alasdair Poore [CIPA president]".  The media release continues thus:

"Chancellor George Osborne, Justice Secretary Ken Clarke and Business Secretary Vince Cable have each notched up a pro-business innovation initiative:

1 New incentives in the tax system for businesses to innovate and patent their inventions [on which see Anne Fairpo's IP Finance posts here and here];

2 Reformed IP enforcement – dramatic changes to make it much easier and cheaper for innovative businesses to enforce their patents and other IP rights [on which see the series of PCC Pages on PatLit, listed here];

3 Strong support for a cheaper European Union patent system, with an initiative to make it simpler for British firms to get their innovative products patented throughout Europe, without all the current substantial costs of translation [on which see earlier IPKat posts here and elsewhere].

‘Since they took up their portfolios in May, ministers have been pinning their hopes on innovation as the tonic that will revitalise the economy and end the recession,’ says Alasdair Poore. ‘The parting shot of the Labour government was to rush through its Digital Economy Act [on which see comments here and earlier on the 1709 Blog], which raised as many new questions as it answered. But it did succeed in pushing innovation and intellectual property yet further up the political agenda. The coalition government is pushing the connection between new ideas and the need for a 21st century system for protecting them, to the benefit of the economy. They have been quick to commission a new review of IP [the Hargreaves Review, on which see the Kats' comments here], which Prime Minister David Cameron announced along with his intention of creating a ‘silicon valley of East London’. 

... ‘China’s manufacturing output overtook the UK’s a long time ago,’ says Alasdair Poore. ‘Its government is now competing with the UK’s to promote innovation and development of ideas, and patent protection for them, as a key driver for its growing economy. For example, Chinese firms that register patents outside China can get a grant of $8,000 [great idea -- and good news for translators too!]. Chancellor George Osborne recognised that this country needs to provide similar incentives for innovation when he announced the so-called ‘patent box’ in his autumn statement. This is proposes to cut corporation tax to just 10 per cent for revenues from patents. According to pharmaceutical industry experts, that announcement has already encouraged major companies [Glaxo, at any rate] to invest over half a billion pounds in the UK’.  ...

[Cutting to the bit about enforcement:] 'On October 1, the government introduced the reformed Patents County Court system, making it a quicker and much more affordable process — particularly for small firms. With the almost simultaneous appointment of His Honour Judge Birss QC as its highly impressive judge, the PCC now provides companies with a low-cost way to enforce their patents and other IP rights. Procedures have been enormously simplified, trials will be limited to a maximum of two days within months of proceedings being issued, and recoverable costs are kept to a minimum, resulting in much cheaper affordable means of enforcing their IP rights for businesses.’

...  ‘Much of the work in preparing the ground for these initiatives had taken place long before the coalition government came to power,’ says Alasdair Poore. ‘Nonetheless, it is to ministers’ credit that they have taken decisive action to encourage British businesses to innovate and to make sure that the IP system is fit for the digital economy of the 21st century.’"

tytoc collie likes the idea of giving governments an end-of-term report, based on their IP-friendliness -- and he agrees with CIPA that the coalition government has done pretty well so far.  He has a few black marks to hand out too, though.  The first relates to the apparent lack of overt government support and enthusiasm for a proper means of seizing and retaining counterfeit goods that are not (allegedly) intended for sale in the European Union but are merely taking a short-cut across its territory.  A second relates to the lack of interest shown in coordinating the various tentacles of public sector enforcement (customs, police, trading standards officers, recovery of the proceeds of crime) and indeed private sector enforcement so as to provide more fluency in both administrative and judicial matters.  A third is the woefully short time that the government, via the Intellectual Property Office, gives interested parties to respond on European Court of Justice litigation and the lack of transparency (you can't see whether other people have already made the same comments and you've no idea whether the government is going to accept, modify or reject your suggestions).  The fourth is the continued failure to press for prompt English-language translations of Court of Justice decisions and Advocate Generals' Opinions so that we can know what's going on.  He suspects that readers may have their own black marks to add and that he may soon be reading them as readers' comments.

Says Merpel, "ministers have been pinning their hopes on innovation as the tonic that will revitalise the economy and end the recession" -- but tonic's not much good without the gin (click here for gin and tonic), which is the IP system.  Without the gin, why bother investing in the tonic at all?  She adds, CIPA say of the Digital Economy Act that it succeeded in "pushing innovation and intellectual property yet further up the political agenda". This is true. However, pushing IP up the agenda may be likened to pushing an enema up its chosen path -- people start regarding it as a pain in the proverbial and it never gathers any momentum before the initiative dissolves.

Can IP really halt a general election?

Can IP really halt a general election? Possibly, in Nigeria, says Kingsley Egbuonu (currently reading for a MSc in the Management of Intellectual Property at the Centre for Commercial Law Studies, Queen Mary, University of London), referring to the recent High Court Abuja decision in Bedding Holdings v INEC & Others. Since this case began with allegations of fraud and corruption and even once involved the police and the EFCC (Nigeria's anti-graft agency), it is extremely difficult to analyse this case without steering into politics.

Bedding Holdings, brought an action in November 2010 against the Independent National Electoral Commission (INEC) and the other defendants, asserting that it had exclusive patent rights to produce Electronic Collapsible Transparent Ballot Boxes (ECTBB), as well as being the patentee of the Proof of Address System/Scheme (PASS), used for the collation and collection of the names, age, gender, address, fingerprint, geographical description and location of various places in the country, including the biodata of every person resident in Nigeria.

In its infringement claim, Bedding sought N10 billion (£41,620, 251.67p) in damages, together with an order for interim injunctive relief to restrain INEC from awarding contracts and going ahead with its planned voter registration exercise pending the hearing and determination of the substantive suit. The court granted this request on 3 December, though at least one report suggests this was in fact struck out.

On 13 December the court rejected the defendants' claim to set aside the order on the grounds that (a) the act which the claimant sought to prohibit had already been completed; (b) the claimant’s case lacked substance since no intellectual property right subsisted, (c) the action threatened the holding of the 2011 general election and (d) the claimant had not provided sufficient undertaking for the relief sought (see here).

Kingsley has managed to find the laws/rules governing intellectual property in Nigeria here, though failed to locate the official national IP office’s website or supposedly, the site holding information on registered patent rights in Nigeria (see the National Office for Technology Acquisition and Promotion here).

With the nature of information gathering, storage and dissemination in Africa, it is often the case that accurate or up-to-date information is scarce or complicated because those seeking justice just simply have no clue where to find it. This is evident from the report here that Technocrat Consult and IT Systems Limited (and perhaps the same claimant, Beddings Holdings) filed a law suit against same defendants, and various other reports also alleging copyright infringement. There is also a report that this suit was struck out on same day because the claimant had apparently named the wrong defending parties in the particulars of claim.

It is Kingsley's understanding that Bedding Holding took similar claim to court three years ago (see here) but still participated in the tendering process to supply the article(s) in question. Whether it dropped the case a few years ago and/or resurrected it in grief, having lost out on this particular contract, is another fairy tale.

Kingsley has also learned that the claimant did involve the president in this matter with a letter seeking his intervention in evidencing a certificate of registration of various patent and design rights.

Apart from obvious inadequacy of law reporting in Nigeria, Kingsley says, one would imagine that several eyebrows or questions would be raised by IP practitioners and enthusiasts in well-established jurisdictions on two essential issues in any litigation: (a) costs and (b) professional ethics (misleading the court/abuse of court process).

Kingsley would very much appreciate responses and comments from any readers of this weblog who have sufficient familiarity with both the Nigerian system for patent litigation and any other system to be able to highlight differences between them in procedural and substantive terms, especially with regard to issues such as how to deal with frivolous claims and counter-claims, and whether the public interest in holding a general election can in any other jurisdiction be seriously raised as a ground upon which to resist an action for infringement or an application for interim injunctive relief.

Kingsley concludes by expressing the belief that, among other areas, intellectual property law and practice in Nigeria needs urgent technical legal assistance -- and the sooner that comes, the better if foreign direct investment and local businesses are to thrive.

The Court's decision in Bedding Holdings v INEC & Others was expected this month.

Monday miscellany

tytoc collie has been a little disheartened in recent times by the constant stereotyping of the inventor as some sort of impractical, bumbling fool, redeemed from being an imbecile only by the kindness of the occasional author or the empathy of the reader. It was therefore with great pleasure that he left the Watford Palace Theatre after a performance of the popular seasonal pantomime Aladdin. This version, by Joanna Read and Stuart Thomas, featured Aladdin as an intelligent, articulate, relatively credible inventor, whose innovative ideas -- as much as his use of the genie of the lamp and a ring-fairy serving in a consultancy capacity -- enable the princess to be traced and rescued.  The Emperor actually says, "I'll be pleased to have an inventor as a son-in-law".  This Kat has no idea who these authors are but he feels that, apart from putting together a richly allusive libretto with enough cultural content to satisfy a three-generation audience, they could  do a more plausible job than some of our spin-doctors in placing inventors in a positive light.

Like a chameleon, Oxford University Press's monthly Journal of Intellectual Property Law & Practice (JIPLP) changes its colour from time to time, each year in fact.  The January 2011 issue, now available online to subscribers (full contents here), is a fetching and rather senatorial purple (illustrated left). Recommended features in this issue include J. Royce Fichtner and Troy J. Strader's "Automated takedown notices and their potential to generate liability under section 512(f) of the Digital Millennium Copyright Act", a delightful poke at Court of Justice jurisprudence from those delightful provocateurs Stephan Ott and Maximilian Schubert, "‘It's the Ad text, stupid’: cryptic answers won't establish legal certainty for online advertisers", plus a post-Christmas season special from the irresistible keyboard of Christopher Wadlow, "The professor, the patent, and the perilous life of the PHOSITA".

Hotel Cipriani: Venetian splendour
no further away than a mouse-click

The January 2011 issue of Sweet & Maxwell's monthly European Intellectual Property Review (EIPR) has now been published, ahead of schedule as usual. This issue contains plenty of material for the trade mark lawyer: Kevin Dugan (Lathrop & Gage LLP, New York) writes on the shared interest of trade mark law and the US Food and Drug Administration in avoiding medication errors -- an interest which, although shared, is approached in very different ways. Chris Wadlow elegantly unravels the mysteries of the Ciprianis and the relevance of international internet access to what was once imagined as business goodwill that came neatly packaged within national boundaries. Claire Howell tackles a bit of fusion with the point at which trade mark and registered design laws collide -- somewhere in the vicinity of LEGO brick and seductively shaped vacuum cleaners -- and the ever-young Charles Gielen plausibly argues today's popular heresy that the use of a Community trade mark in a single EU Member State no longer constitutes genuine use of that mark within the Community.

Another horse in the Sweet & Maxwell stable is the monthly series of law reports on European trade mark cases, containing handy headnotes as well as full English text.  This product is imaginatively and creatively entitled the European Trade Mark Reports (ETMR).  The January 2011 issue leads with the decision of Mr Justice Arnold in Och-Ziff (noted here by tytoc collie) that a doctrine of "initial interest confusion", well-known and much discussed in the United States, could also be discerned in the case law of the Court of Justice of the European Union as well as in British case law. Other cases from Poland, Ireland and the Court of Justice (illustrated) are reported.

Famed for its French cuisine and its generous portions, the
Dorchester Hotel is seen here taking delivery of one of its
specialities of the house: the horse d'oeuvres

Having not yet received his January 2011 issue of Intellectual Property Magazine (IPM), IPKat team member Jeremy has been contentedly gazing at the beautiful photographs of happy winners of that publication's Annual Awards, at a ceremony to which he contributed by presenting one such award and eating a meal that was as tasty as it was substantial in the elegant surroundings of London's Dorchester Hotel.  There are some articles too,  of which the most interesting was a piece by Simmons & Simmons lawyers Rowan Freeland and Scott Parker (presumably on loan from West Ham United) which was a sort of obituary of the unpopular and much-resented European Commission investigation into the pharma industry.  Good news for Simmons supporters is that even if Rowan and Scott don't scoop one of IPM's 2011 Awards, Scott is already a contender for Footballer of the Year.

Hulu: The Once and Future (?) IPO

Given the paucity of IPO activities in recent years, the buzz surrounding a possible IPO by Hulu has attracted particular interest since the summer. After all, Hulu, a joint venture of NBC Universal (General Electric/Vivendi), Fox Entertainment Group (News Corp) and ABC Inc. (The Walt Disney Company), with funding by Providence Equity Partners, has been one of the most ballyhooed online content distribution initiatives of recent years.

The initial notion of Hulu was to stream recent episodes of television programs, with income to be derived from advertising. The service at first was limited to the U.S. and its roll-out to other countries is proceeding at a snail's pace, apparently due to issues regarding the securing of streaming rights. More recently, at the urging of some of its owners, most notably News Corporation, it began to consider a subscription service as well, culminating in the launch last month of Hulu Plus, which offers access to full seasons of streamed program content, rather than merely the most recent episodes, plus delivery capability to portable devices such as the iPad and to internet-connected televisions. When the possibility of an IPO arose, one report suggested that the IPO would be at a valuation of $2 billion dollars.

Alas, there will not be any IPO, not for a $2 billion valuation, not for a $1 billion valuation, and not even a $1.00 dollar one. As reported in the Wall Street Journal on 21 December by Jessica Vascellaro and Sam Schneider ("Hulu Mulls More Pay Plans, Not an IPO") here, Hulu has apparently abandoned, at least for the moment, any current plans for an IPO. Instead, it seems, the company will consider seeking alternative sources of financing as well as strengthening its subscription services.

That said, I was particularly struck by one comment made in the Wall Street Journal report:

"The people familiar with the matter said that Hulu's lack of long-term rights to its owners' online-video programming was one reason the board and Hulu's management have decided not to proceed with an IPO."

I had to do a double take on this sentence. It says that a major reason that Hulu

pulled its IPO plans is because it is apparently unable to secure long-term rights to use the contents of its (!) owners. It is one thing to say, as the article points out, that Hulu is still trying to decide with what types of content it wants to be identified (i.e. how it wishes to brand itself), but it is quite another thing to acknowledge that you do not have, for whatever reason, long-term rights to your owners' online video programming.

Unfortunately, the Wall Street Journal article does not further elaborate on this spectacularly curious point. Further insights can be gleaned, nevertheless, from a brief report by Sean Portnoy ("Hulu yanks IPO, mulls other subscription plans") that appeared in the 23 December issue of ZDNet here. Portnoy writes as follows:

"However, Hulu is running up against a couple of major obstacles, one external and one internal. The outside factor is Netflix’s success with its streaming service, and while it offers little in the way of new TV episodes and movies, it does have an extensive catalog of titles that Hulu Plus lacks. A major reason for Hulu’s need for more cash is to obtain additional content that would make its subscription plan more attractive.

The company is also facing pressure from its content partners to come up with other pricing plans that provide more revenue to those partners. No details were reported about such plans. But those partners would need to open up their archives fully in order to justify new pricing, especially as Netflix aggressively pursues content for its service — even inking deals with Hulu’s partners" (emphasis by this Kat).

Portnoy's comments suggest that Hulu's own owners are hedging their bets, at least with respect to what platform(s) will be best positioned to monetize their video contents. This apparent bet-hedging by Hulu's owners comes on the heels of increasing penetration by both Netflix and YouTube into online access of television programming which, after all, has heretofore distinguished Hulu from other online content delivery platforms.

Behind all of this remains the continuing nagging question: how and who will be able to make money with respect to the provision of online contents? If the CEO of Hulu, Jason Kilar, stated in a recent interview that the company is on track to generate $260 million dollars for the year 2010. Revenues of $260 million dollars are not a small amount, but it certainly takes a number of multiples to reach even a $1 billion dollar valuation.

Friday fantasies

The Forthcoming Events list for 2011 is building up nicely, so please don't forget to check it out!

Full speed ahead -- but will
he get his submission in by
the 1 March cut-off date?

tytoc collie has already reported that the independent review on intellectual property and growth in the UK (the Hargreaves Review, on which see IPKat posts here and earlier) has issued a call for evidence, To recap, the focus of the review is to consider how the IP framework might be changed in the interest of promoting innovation and growth. In particular, it will consider whether there are any barriers to innovation and growth in the IP system and how the IP framework could better enable new business models that are appropriate to the digital age. What this blogger didn't know is that responses to the call for evidence are invited by 1 March 2011, in the expectation that the review will report in April 2011.  That doesn't give much time, so if you're going to be making a submission please start work on it now.


Thanks to Chris Torrero tytoc collie has been pointed to some potentially interesting papers on the economics of Industrial Research and Innovation, which can be accessed here.  They are

#12/2010: Doing R&D or not, that is the question (in a crisis)

#11/2010: Corporate R&D and firm efficiency: Evidence from Europe’s top R&D investors

#10/2010: The determinants of R&D Investment: the role of Cash flow and Capabilities

#9/2010: What is small? Small and medium enterprises facing patenting activities

#8/2010: Innovation and Employment: A firm level analysis with European R&D Scoreboard data

#7/2010: Young Leading Innovators and EU’s R&D intensity gap

The Kat hasn't had the time to read them yet, and wonders whether they contain any of the evidence that the Hargreaves Review (above) seeks.  If one or more diligent reader with time on his/her hands would like to skim them for facts and conclusions that can be cut, pasted and sent to the Review, that would be an act of great and unremunerated kindness.

Sporting their attractive new uniforms,
Mongolian trade mark examiners train
for the onset of the Singapore rules

Planning a trip to Mongolia? If so, you will be pleasantly surprised to learn that that remote (unless you're Mongalian) republic has deposited its instrument of accession to the Singapore Treaty on the Law of Trademarks, which takes effect there on 3 March 2011.  Says Merpel, that gives me two days to get there for the Coming Into Force Celebrations after I've deposited my submissions for the Hargreaves Review.  Notes tytoc collie, there's a website set aside by the Mongolian government, but not currently operating, for the promotion of Mongolian brands.  Let's watch this space and see what happens.

It's not widely known, but the idea for loose-leaf
binders was inspired by the man-trap

Careful with that Christmas post! If you're a Sweet & Maxwell customers, don't throw anything away before you've checked it. Release 34 (December 2010) of that publisher's European Patent Decisions, updating the dreaded Looseleaf [who'd have thought we'd still be using loose-leaf in the digital age?] to October 2010 has now been released.  When you're inserting your latest release, mind your fingers!

The first waffle iron: great for
food but terrible for shirts

For those who are easily bored, US IP practice Brown & Michaels, PC, has kindly compiled a patent quiz, which you can find here.  tytoc collie used to love these quizzes in the days before the internet, because you actually had to know the answers or at least be the owner of a fully-fledged reference library.  Now all you need is a computer and access to a search engine.  In his opinion the real test shouldn't be whether you know the answers or not, but how few searches you need in order to find them.  Merpel says, no!  The first 18 questions are the same: "Can you guess when these patents were issued in the USA?" -- and the answer is always going to be "yes" or "no".

Around the blogs.  tytoc collie has been asked to introduce his readers to an Indian IP blog of which he was not previously aware.  It's called SiNApSE and you can inspect it here. This is a Brain League initiative, run by its Nurturing Genius director, Kaylan.  Elsewhere on the Blogosphere, things are quietening down for the new year holiday season -- but expect plenty of excitement and adventure when 2011 dawns!

tytoc collie has recently been in correspondence with a young and charming Polish lawyer with interests in intellectual property, new media and IT law -- and a CV to kill for.  He does not intend to practise as a barrister in England and Wales but he is seeking an unfunded pupillage there in order to enrich his experience, following which he will return to the post that is being held for him by the Polish affiliate of a large, successful company in the telecoms sector.  If you can offer him an unfunded pupillage for six months from October 2011, he -- and tytoc collie -- will be delighted.  If you'd like to know more, please email tytoc collie here and let him know; he'll forward your email.

tytoc collie has learned from Diane Richards that there have been some useful developments of the Inspec Database, produced by the Institution of Engineering and Technology (IET).  Inspec contains over 100 years’ worth of prior art records from the world’s technical and scientific literature in physics, computing, control engineering, electronics, electrical engineering, information technology, manufacturing, production and mechanical engineering -- not to mention over 20,500 records with abstracts for selected UK and US basic and equivalent patents in the fields of physics, electronics, computing and control which were published from 1968 to 1976.  Since January Inspec has been mapping its indexing schemes to the WIPO International Patent Classification (IPC) scheme in order to assign IPC codes to relevant records. 75% of Inspec records contain IPC codes, with an average of two codes per record.  This all adds up to a valuable tool for the prior art searcher, allowing the ready clustering of relevant non-patent literature within the same familiar code structure used for patents. Further information is available here.