The bad-faith bandit from Banja Luka

Consumers in Banja Luka: do they know who is monitoring
the importation of their favourite brands?

tytoc collie's Ministry for Nasty Practices has been growling about the WIPD scam for long enough; it's time to focus on other miscreants. Via his helpful friend Jelena Jankovic (Petosevic) he has learned all about another naughty business, EKOSAN. The story goes like this:

"Until recently, Bosnia had only one law on IP rights, the Law on Industrial Property, which entered into force on 27 August 2002 and covered patents, trade marks, designs and geographical indications and designations of origin. The Law, which was in force until 1 January 2011, had no provisions regarding bad faith trade mark applications.

Bad faith applications were therefore tolerated and a large number of well-known global brand names passed into the hands of local counterfeit sellers. Legal remedies available in these situations were limited. The Bosnian PTO did not recognize bad faith as one of the grounds for cancellation, prosecutors refused to pursue bad faith cases claiming there was no criminal intent and the civil courts were reluctant in issuing decisions in unfair competition claims.

The new Law on Trade Marks, in force as of 1 January 2011, listed bad faith as one of the relative grounds for cancellation. However, without the actual use of the mark in Bosnia, it will be difficult to prove bad faith, especially with the PTO that has traditionally favoured local companies.

The most notorious example of this practice is the case of EKOSAN, an importer of textile products from China and Turkey, located in Banja Luka, northwestern Bosnia. The company registered almost 200 trade marks that belong to well-known apparel companies and requested customs monitoring. The company then managed to prohibit import attempts by other companies, including the actual owners of the marks. Among the trade marks EKOSAN registered are brands that are well known globally, but without any local presence, marketing or campaign in Bosnia. The company has even started to register some of the well-known marks in other countries in the region".

tytoc collie can scarcely imagine how galling it must be for brand owners to be excluded from the opportunity to monitor the importation of goods bearing their own trade marks and other indicia.  But the lesson is clear.  For as long as trade mark rights are territorial and not global -- which is likely to be forever -- international businesses have to take the lead in registering and protecting their brands.  It is an expense and it is an inconvenience, but it this this that underpins the credibility of a trader's goods and services and protects consumers too.  Merpel says, it seems bizarre that, as late as 2002, a country could pass an intellectual property law that contained no provision for dealing with bad faith trade mark applications.  It's not as if there weren't plenty of examples of other people's trade mark laws to look at.  What were the Bosnian legislators thinking of?

Monday miscellany

Egypt: home to the earliest evidence
that cats were once human too

Egypt.  tytoc collie and his friends note the current political turmoil in the top right-hand corner of Africa. It's quite likely that our friends in Egypt aren't able to read this right now, given the recent suspension of communications, including our beloved internet. However, they should know that our thoughts are with not just the intellectual property community there but also the public at large. According to a recent news release from Abu-Ghazaleh Intellectual Property (AGIP), "... all Government Departments, including Trade Mark and Patent Offices are closed until further notice". We hope that normal communication channels will soon be restored and, whatever the immediate or long-term outcome of the present state uncertainty, there will be peace and no further loss of life.

Instant branding and Los 33.  The February 2011 issue of the Journal of Intellectual Property Law and Practice, published by Oxford University Press and edited by IPKat team member Jeremy, has now come out (contents here).  The Editorial, which is available online to everyone via the jiplp weblog, whether they subscribe to the journal or not, raises the issue of "instant brands" and the sudden rise last year in the brand potential of the 33 Chilean miners who were rescued after an unprecedented set of events that captured the world's imagination.  You can read it here.

" ... and I tell you the patent's
invalid!", he shouted

Damages for infringing an invalid patent.  The debate over the commercial, moral and practical issues arising from an award of damages for infringing a subsequently-invalidated patent -- which tytoc collie inadvertently set off last week here -- has been relocated to the PatLit weblog, where cudgels have been taken up by a couple of anonymous heavyweights here and here.  It is hoped that the United Kingdom's Supreme Court will hear arguments on this topic later this year -- and tytoc collie does not rule out a reference to the European Court of Justice on the extent to which such damages can live with the principles and the provisions of Directive 2004/48 on the Enforcement of Intellectual Property Rights.

The Temperance Bar at Glasgow's
Grand Central Hotel, famed for its
Robert Burns Elderflower and
Raspberry Cocktail

“Wee Tweet’rous Beasties”. In a moment of madness, IPKat team member Jeremy agreed to speak at the LES Britain + Ireland Burns Supper on 9 February somewhere north of Hadrian's Wall.  He has been placed, quite literally it seems, between the Scotch Broth and the Haggis, which has its own address (not www.haggis.com, which is a parked domain). Remarkably, there is no sign of alcohol anywhere in the menu programme, which closes at 9.35pm with "networking" (they must be expecting a busload of Americans).  Other attractions on the night include a 20-minute talk from the internationally renowned TBC, not to mention an Interactive Tweetfest with decadent prizes. You can check out the details of the evening here.

Thank you, Chris Torrero, for unearthing a fascinating resource which, tytoc collie suspects, has the capacity to keep many a music enthusiast well and truly distracted from his day-to-day work.   The Discography announces:

"Our central Database includes 1,300 entries covering 2,400 court opinions (including over 30,000 pieces of data) spanning almost 200 years, fully summarized and searchable by numerous variables, featuring nearly every artist you'll think of (many you won't), covering copyrights and contracts, trusts, torts and more. There's also a Blog and up-to-date legal music News to boot. The Discography: Legal Encyclopedia of Popular Music has arrived".

It looks as though its sole focus is the United States -- so let's hope that some good soul with a good deal of time on his or her hands, and who truly doesn't mind being distracted from day-to-day work, will put together a pan-European version.  If anyone volunteers to do this, tytoc collie will be happy to publicise their efforts and spread the word once the database is up-and-running.

Letter from AmeriKat: End of January Jolly

Yesterday the AmeriKat was stomping up and down Kings Road on a hunt for a new casual outfit. Her journey had started with an idea of a new cocktail dress needing to be instilled in her wardrobe (the AmeriKat uses the word "needing" very liberally). However after a few frustrating attempts, she realized a perfectly fitting, appropriately priced, and pitch-perfect dress was not going to be found that cold winter's afternoon. With the stubborn ideal of a dress still swimming around her head, she begrudgingly walked into one store which never enjoys much success with the AmeriKat. After a few meaningless paces around the retail floor, she was leaving the store when she decided to change her mind and reframe her objective. She stopped, turned around and decided that she was going to find something here and marched down to the sale rack. Assisted by a trusty advisor, low and behold she found the perfect skirt at an amazing price which assisted her in sparkling later that night. It just goes to show that when you are about to give up on something, a little change in one's attitude can make all the difference. (Picture, top left - the AmeriKat hiding in her shopping bag after a long afternoon browsing)

RIAA lawyer to be next US Solicitor General

Another change was announced last week when President Obama (right) nominated Donald Verrilli as the next United States Solicitor General. Verrilli will be filling the shoes left by Justice Elena Kagan who left the post last year when she was appointed to the Supreme Court. Prior to becoming a White House lawyer, Verrilli’s private practice experience at Jenner & Block LLP included representing the Recording Industry Association of American (RIAA) in their on-going battle (or crusade, depends on who you ask) with copyright infringers. He also has represented Hollywood film studios in similar battles. According to the New York Times Verrilli has argued before the Supreme Court 12 times and before the federal appeals and state supreme courts around 35 times.

The US Solicitor General is responsible for determining the US’s legal position in matters that reach the Supreme Court and arguing on behalf of the US Government in cases in which they are a party (which is a hefty task in itself). The Solicitor General also files amicus curiae briefs in cases of federal government interest, such as the Google Book Settlement case (see report here). Former President William Howard Taft and former Supreme Court Justice Thurgood Marshall (the first African American to serve on the Supreme Court bench) also acted as the US Solicitor General.

If Verrilli’s name sounds familiar to IPKat readers, it is because Verrilli (picture, left) has been one of the lead attorneys in two famous copyright battles: Grokster and Viacom v YouTube. The Supreme Court’s famous MGM v Grokster ruling in 2005, unanimously held that operators of peer-to-peer file sharing websites could be sued for contributory copyright infringement for the illegal sharing of copyrighted content on their website. The Viacom v YouTube case, which has now reached the Court of Appeals for the Second Circuit, also involves a claim by Viacom that YouTube should liable for contributory copyright infringement in failing to remove and to prevent the uploading of Viacom’s copyrighted content (see previous reports here). However, Verrilli is known also for acting in cases which pressed for greater rights for prisoners, including methods by which death-row inmates are executed, as well for pro bono clients.

Verrilli takes over from acting solicitor general, Neal Katyal. Katyal, although a top choice for the nomination was considered to be too challenging a choice to get past the now Republican saturated Senate. In 2006 in Hamden v Rumsfeld, the Supreme Court ruled against the Bush administration in their plans to hold military commission trials for Guantanamo Bay detainees. Katyal was part of this legal team. The AmeriKat is sadly not surprised that a lawyer with specialization in the telecommunications and IP, with multi-billion dollar industry clients would be a more palatable choice for some Senate Republicans than a lawyer who won a case against the Bush administration. Americans love nothing more than mixing a bit of politics with their judiciary!

Despite the Amerikat’s general ideological qualms in relation to the Katyal choice, she is excited that the next (hopefully) Solicitor General will be an IP lawyer. This is a further message of the importance of IP to the Obama Administration and the US's economic recovery.

Verrilli will now have to go through the usual confirmation process by the Congress and Senate before he takes office. The AmeriKat will keep you posted on any developments.

Snap! Kodak’s hope for a picture perfect ITC trial is not to be

Last Monday, Eastman Kodak lost the opening round in an US International Trade Commission (ITC) patent battle. Last year following failed negotiations with Apple and Research in Motion (RIM) – the makers of Blackberry – Kodak filed a complaint with the ITC alleging that Apple and RIM infringed their 2001 patent (see previous AmeriKat mention here). The complaint coincided with Kodak filing patent infringement claims against Apple in New York and Texan federal court.

During Monday’s initial recommendation ruling Administrative Law Judge Paul Luckern ruled that Apple’s iPhones and RIM’s Blackberry models did not violate Kodak’s patent. The ITC’s six commissioners now have 4 months to decide to either amend Judge Luckern’s ruling or let it stand. Laura Quatela, Kodak’s chief IP officer stated that the judge’s recommendation represented

“a preliminary step in a process that we are extremely confident will conclude in Kodak’s favor. This very same Kodak patent was upheld by a different ALJ [administrative law judge] at the ITC in our case against LG and Samsung, whose products use the very same Kodak technology to function in the very same manner as similar products from Apple and RIM. What’s more, the attorneys at the ITC’s Office of Unfair Import Investigations, which separately examined this case, agree with Kodak’s interpretation of the patent. We fully expect the ITC Commission will ultimately rule that the patent claim at issue is valid and infringed by Apple and RIM.”

In recent years, Kodak has been attempting to reinvent itself into a digital photography powerhouse, a move which has seen them licence their technology to several companies including Motorola and Nokia. The AmeriKat does not anticipate that the commissioners will come back with anything other than bad news, but as George Will said “The nice part about being a pessimist is that you are constantly being either proven right or pleasantly surprised.”

Catcher in the Rye suit settles

Two years the AmeriKat wrote about the copyright infringement suit brought by JD Salinger against Fredrik Colting, the Swedish author of the unauthorized sequel to Catcher in the Rye - 60 Years Later: Coming Through the Rye -which was subject to an injunction barring its publication in the US, The case reached the 2nd Circuit Court of Appeals. Last week it was reported that the two parties have settled on terms that the book will continue to not be published in the UK, the title will be changed and it is reported that Colting is forbidden from dedicating the book to Salinger. For more details on the settlement please see here.

Sony Ericsson sues over logo

Two weeks ago mobile phone maker Sony Ericsson sued wireless broadband operator Clearwire for allegedly infringing their trade mark logo to the tune of about $150,000 including costs. Sony Ericsson reportedly became aware of Clearwire's intention to use the offending logo and in 2010 wrote to them demanding them to rethink its branding. In May 2010 Clearwire announced it was to begin selling mobile phones under the logo. Sony Ericsson's trade mark is not as widely recognized as it is in Europe. What do readers think? Is Clearwire's logo infringing?

Friday fantasies

The Kat likes fiddling, but
not with email attachments

Forthcoming events: you can check tytoc collie's list for some exciting seminars, conferences, talks and other social get-togethers if you visit his special page here.  Urgent reminder for anyone seeking a listing for their event: it must be incorporated in their email in a form in which it can be quickly understood and, ideally, cut-and-pasted.  The Kat is so deluged with emails that he can't fiddle around with attachments from which the relevant data has to be carefully culled.  Thanks!

What are French fries, but French
friends without the 'nd'?

A couple of tytoc collie's French friends have written to ask him if he knows of, or can recommend, a study or analysis that addresses the procedural aspects of Community trade mark opposition proceedings (including such vital topics as deadlines, timings, formal requirements, "traps, tips and tricks").  They add: The OHIM Guidelines are a starter -- but we are looking for something more practical as we would like to have a global view of all the formal aspects which must be taken into accounts and not forgotten when brining a Community opposition -- whether in attack or in defence".  Offhand this Kat can't think of anything other than the usual textbooks and reference works that cover Community trade marks, so he thought he'd ask his readers if they had any ideas.  Please do get in touch if you can help!

WIPO, WIPD, scams and demands for money.  The happy news that the WIPO lookalike scam site WIPD has changed its logo for a less confusing one (noted here) has blunted neither tytoc collie's interest in the subject nor the World Intellectual Property Organization's concern.  Says a spokesperson for the Organization:

“Fraudulent requests for payment of fees come in many forms, including documents made to appear as if they are official WIPO communications. Unfortunately, even crude fakes can find their mark with people who are busy or inexperienced. If you come across one of these requests, therefore, please report it to WIPO, using our scam warning and fake invoices contact form, so that we can take action to help protect our community of users.”

Meanwhile, tytoc collie has learned from impeccable sources that on 23 January Česká televize (a Czech TV channel) ran a feature on WIPO’s efforts to get the WIPD operation closed down: one beneficial side effect of this is that it has been helpful in further exposing the scam, thus warning potential victims. The programme is said to have included an interview with Dr Koutna, director of the Marks Department of the Industrial Property Office of the Czech Republic, which showed that the Czech authorities are actively engaged with WIPO on this.  Incidentally, Česká televize's reporters tried to track down the “entrepreneur” at the firm's address in Prague, which they found to be only a rental office, where no one had any contact details. Nor could they find anyone at the permanent residence address. Nb tytoc collie's Competition closes on 6 February.  Details can be found here here.  Most of the entries so far have had to be disqualified on the grounds of blatant criminality!

Jiminy: not a
real cricketer

That cricket team! Names for "The CIPA, ITMA and CIPA Informals Cricket Club" have been coming in from various quarters. As a sort of acronym, Maarten Giesen recommends "Ch I C I - Cri C" [can you work it out for yourselves?] which, he suggests, might be pronounced "chicky-crick" or "cheeky-crick", while Bob Sacoff has proffered the IPKrickets.  Meanwhile tytoc collie has also received offers to play matches against him, for which he is ill-equipped.  Richard Lloyd of Legal Business magazine (owned by Legalease, of Legal 500 fame) is rumoured to be already practising his sledging techniques.


Following the recent report on the Galileo trade mark dispute (here), tytoc collie was not surprised to hear from that distinguished Irish bard Tony McStea, who recalled the lyrics of Queen's Bohemian Rhapsody, in which Galileo receives a mention.  With a nod to the late Freddie Mercury, Tony writes:

Freddie Mercury

"I see a little tiny semblance of a mark
Justice Floyd, Justice Floyd, please don't make our hopes bang go
Navigation sightings really are delighting me
Galileo, Galileo,go figure-oh-oh-oh-oh-oh
I'm just a poor mark, nobody used me
He's just a poor mark, from a poor family!
Spare him his life, but restricted should be
Regi come, regi go, please don't let me go
Commission, No! We will not let him go
Let him go!
Commision, No! We will not let him go
Let him go!
Will not let him go!
Will not let him go!
Will not let him go!
No! No! No! No! No! No!
E Commission! E Commission! E Commission! He won't go!
Bai-L, E flubbed, when appeal allowed just partially - tially - tiallyeeeeeeeeeee"

Personally, the Kat considers that by far the best version of Bohemian Rhapsody is this one -- even though it might be considered to infringe the rights of some celebrated footballers past and present.

What is the impact of unregulated
IP practitioners and consultants
on the creative sector?

Around the blogs.  Recent additions to the MARQUES Class 46 writing team include Pedro Malaquias (Portugal) and Niamh Hall (Ireland), thus increasing the scope of its coverage of European trade mark developments; other recent recruits to Class 46 are Benedetta Cordovado (covering OHIM's Boards of Appeal) and Marjut Alhonnoro (Finland).  PatLit is hoping for some debate on the legitimacy, expediency and morality of expecting a litigant to pay damages for infringing a patent which is subsequently held to be invalid (here).  SOLO IP wants to know your thoughts about the impact of unregulated IP consultants and practitioners on the regular IP professions and on clients (here).


tytoc collie is informed by his Australian friend Rebecca Dimaridis that Wednesday was Australia Day. Rebecca also asked tytoc collie to inform his readers of some fundraising on behalf of those in Queensland who are affected by the floods. Rebecca is sure that there are many people out there particularly ex-pat [that's 'expatriate', not 'expired patent'] Aussies who, like her, feel like they should be physically doing something to help. Well, here is your chance!

Just another everage Aussie ...

• Come along on Tuesday 15 February to Bloomsbury Bowling Lanes. The line-up includes bowling, foos-ball, karaoke, pool, ping pong, and DJ. All activities are FREE and unlimited with ticket entry this link. The event starts at 7.00pm. You can also RSVP to the event on Facebook here - invite your mates!
• If bowling and other the fun doesn't take your fancy, donations can be made here.
• Donate a prize for the raffle, officially support the event, promote the event in your newsletters or pass on details about the event to contacts at media outlets or to any contacts we can approach for donations etc.

Anyone that can help in terms of prizes/sponsorship etc or would like to help in any other way can contact Rebecca at rzd@jgrlaw.co.uk. Any help is much appreciated!

"Win the game or lose the plot?"

"Let's Blow Up Parliament!" is a great concept, Guy, but are you
sure -- are you really sure -- that it's not been done before?"

"Win the game or lose the plot?" is the title of a forthcoming seminar on the copyright aspects of plots, themes and formats.  This topic has been inspired by recent litigation on both sides of the Atlantic on the "Harry Potter and the Stolen Story" litigation brought by the estate of Adrian Jacobs ("Willie the Wizard") against JK Rowling and her allies, by the recent re-emergence of format right protection -- which, we hear, has just been accorded copryight status in Brazil -- and by some fresh spats over computer games.

This seminar, which runs on 9 March, is hosted by Hardwicke, in its congenial den in Londonn's historical Lincoln's Inn.  It has a half-day structure (11am to 3pm), to allow locals to check their emails before attending and to give non-locals more travel time so they don't have to leave home in the dark.  The cast of speakers is unusual in that it has no fewer than three Kats on parade: Jeremy, Birgit and Annsley.  The full programme runs like this:

* Fact and fiction: recent UK case law on protecting plots (Mark Engelman, Hardwicke)

* Protecting computer games and business programs: is it possible? (Shireen Peermohamed, Harbottle & Lewis)

* Music themes (Nick Kounoupias, DHM Stallard)

* Plots, themes and formats - a US overview (Annsley Merelle Ward, Collyer Bristow)

* How do other countries handle these problems? (Rebecca Dimaridis, Jeffrey Green Russell)

* If copyright won’t provide protection, what of other IP rights? (Birgit Clark, Berwin Leighton Paisner)

Jeremy Phillips (IP consultant, Olswang LLP) will be in the chair, among other places.

The event carries three whole CPD points and, inclusive of a tasty lunch and VAT at the new rate of 20%, still costs just £70.  For further details and registration click here or email Lisa Pick.  You can even phone Lisa on +44 20 7242 2523.  Since previous Hardwicke half-day seminars have turned out to be very popular, early booking is advised.

The Hargreaves Review: the debate begins

The copyright debate always livened up when the subject of Creative Columns cropped up

tytoc collie learned earlier today from his friend Laurence Kaye (the digital media guru, not the Pirate Party UK one: see here for explanation) that the Institute for Public Policy Research (IPPR) hosted a roundtable discussion yesterday on the (Hargreaves) Independent Review of Intellectual Property and Growth (here).  It was the opening event of the IP Review.  Laurence was asked to make some introductory remarks. Here they are:

"The interaction between the extant IP regime, innovation and economic growth: what works, what doesn’t and how it could work better

I was consulted last week by an Internet start-up in the field of education. Their site will include free resources and paid-for content via an e-commerce store, as well as a subscription-based service. It’s just the kind of start-up we want to see thrive.

They wanted to discuss their ‘copyright needs’, as they put it. They made two things clear. First, protecting copyright in their materials, including their authors’ rights, was really important and valuable to them. Second, they had lots of questions about how to deal with rights clearances and permissions. Whilst they saw copyright as central to their business, they had questions about the practical workings of the system. That theme – of bringing permissions and rights management into the 21st century world of ‘search, find, click, clear and, where relevant, pay’ - is in my view the key to making the system work better.

I am not complacent about the copyright system. But there is some merit in the old adage, ‘if it ain’t broke, don’t fix it’. The creative industries are 7.3% of the economy, employing two and a quarter million people. The UK is an international centre of creative activity, bringing major social, cultural and educational benefits to the country as well as the obvious economic ones. The UK has some of the world’s most successful authors and creators. And it is copyright which underpins these industries.

That is all the more so as a result of the ‘digital shift’ - the shift from selling physical goods to the provision of virtual goods and digital services based on licensing– download to own, rental, streaming and so on. Those licences, whether granted individually or by collecting societies, derive from, and are facilitated by, copyright. 

But as I said earlier, there is no place for complacency in the search for innovation and growth. In analysing the IP framework in this context, especially in the copyright field, I would suggest some important criteria which should be applied to the case for change:-

• First, we need to distinguish between the copyright system per se and the way it works in practice. We should not equate problems about the working of the system with the system itself. For example, improving the way permissions are managed can largely be solved within the existing framework.

• Second, we should not ascribe to the copyright framework, problems or barriers to growth which are attributable to other factors such as lack of access to start-up capital, technical expertise or the absence of tax breaks.

• Third, where there is a proven case for change to the copyright framework, we should make the minimum change needed to accomplish the objective.

• Fourth, solutions should be appropriate and proportionate to the problem. For example, education and information provision are the right tools to use to remove confusion and uncertainty concerning copyright – for example, what can and can’t be taken without infringing copyright. In the case of certain barriers to growth, there are other legal tools available to remove them, such as competition law.

• Fifth, let’s be careful not to introduce changes which solve an analogue problem which will disappear over time in the digital age. For example, any proposals to deal with ‘out of commerce’ works should recognise that as works become increasingly ‘born digital’, they will almost always be available in the digital store. 

So let’s look at the case for legal change. There are instances where legislative intervention is needed. There is general consensus that the problem of ‘orphan works’ needs a legal solution, most appropriately at the EU level. The most recent statement on the subject was the Report of the ‘Comite des Sages’ published this month from the perspective of bringing Europe’s cultural heritage online.

There is also consensus that some of the proposals following the Gower Review need to see the light of legislative day in the UK, including updating exceptions for education to include distance learning (where no collective licence is available) and the extension of the exception for Libraries and Archives to sound recordings and films. We may need to re-visit the issue of ‘format shifting’ as proposed by Gowers, but only insofar as licensing solutions don’t deal with the issue.

The Call For Evidence mentions investigating the benefits of “fair use” exception to copyright. I have some real concerns about that:-

• First, the differences between the US ‘fair use’ exception and the various exceptions in UK copyright law are more apparent than real – compare US cases on ‘fair use’ for commentary and criticism with UK cases on the ‘fair dealing’ exception for criticism and review.

• Second, a lot of emphasis is placed on the concept of ‘transformational use’ developed by the US Supreme Court in a line of cases on fair use. We don’t have time for a detailed discussion but it would be misleading to represent it as a simple facilitator for the creation of new works derived from existing ones.

• Third, we also need to recognise that introducing a general exception of this type into European copyright law would require deep pockets to fund litigation over a number of years to develop the case law to tell us the scope of any such new exception to copyright law.

I would like to end by making three points:-

1. First, I would repeat that there is no room for complacency. It is no longer acceptable for rights and permissions to be locked inside old paper contracts stored in filing cabinets. But much of that change we need is non-legislative. In particular, I hope Professor Hargreaves’ Review will focus on the need to encourage the development and take-up of technology to build an integrated rights and transactional infrastructure with machine readable permissions and licences which also accommodate and respect legal exceptions. The core elements are standards-based machine readable expressions (such as Creative Commons, ACAP and ONIX), Online registries, including the ARROW project and the Book Rights Registry, and persistent content identifiers such as ISBN, ISWC and DOI and then linking all of this to payment solutions. And let’s be clear. I am not talking here about ‘DRM’ in the sense of technical protection measures. I am talking about an infrastructure which makes it easy to ‘click, find, use and pay’. If this infrastructure can become as ubiquitous as broadband itself, everyone in the ‘copyright chain’ will benefit – creators, producers, distributors, intermediaries and, of course, the citizen and consumer of digital content and services.

2. Second, all of this takes investment. Weak IP laws and weak enforcement substantially reduce the case for investment. The Commission’s Report on the Enforcement Directive published in December last year contains some important points about the problems of enforcing IP rights online in the face of the economic damage caused by piracy.

3. Finally, discussion and debate about copyright can easily become polarised. And that’s something we can all be guilty of. So let’s take as our starting point that we are a ‘community of interests’, encompassing traditional actors in on the copyright stage and new players too, even if those interests sometimes diverge. Working together, we can realise the commercial and societal benefits of a rich and diverse variety of professionally produced and amateur created content".

Laurence Kaye blogs here and can be contacted here.
The IP Review blog lives here

The Right of the Living Dead? Italians can't kill zombie copyright, says ECJ

Arco, or a good Chinese copy ...

The principle of the protection of legitimate expectations is not one which often gets an airing on this weblog, or in any other intellectual property blog for that matter, but it was in the news today in Case C‑168/09 Flos SpA v Semeraro Casa e Famiglia SpA, a reference to the European Court of Justice for a preliminary ruling from the Tribunale di Milano (Italy).

Briefly stated, this reference is all about this: if a work is protected by a design right which has died, but the law subsequently clarifies that that work is now protected by copyright, what effect does its sojourn in the land of dead IP rights have upon liability for copyright infringement when it returns as a zombie, now protected as a copyright work? It originated from an action which Flos brought against Semeraro in the following circumstances.  Said Flos, Semeraro had imported from China and marketed in Italy a lamp called the ‘Fluida’ lamp which, it said, imitated all the stylistic and aesthetic features of Flos's own Arco lamp. In interim proceedings the court found that the Arco lamp, which was created in 1962 and entered the public domain before 19 April 2001, was nonetheless eligible for copyright protection as an industrial design under Italian Law No 633/1941, as amended by Legislative Decree No 95/2001, and that the lamp imported by Semeraro slavishly imitated all its stylistic and aesthetic features. The Fluida imported lamps were confiscated and Semeraro was ordered to stop marketing them.

Semeraro

After these proceedings commenced, Italy changed its law on copyright protection for industrial designs but there was some doubt as to whether the new law actually conforms with Directive 98/71 (the Designs Directive) and, more specifically, with the principle of cumulation of protection established by Ar:ticle 17 of that directive ("A design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State").  At the heart of the matter was a rather generous moratorium period of ten years in favour of otherwise-infringers in respect of their use of former public domain works. The referring court stopped the proceedings there and then, to ask the ECJ:

‘1. Must Articles 17 and 19 of Directive [98/71] be interpreted as meaning that, in implementing a … law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which – albeit meeting the requirements for protection laid down in copyright law – fell to be regarded as having entered the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force, in so far as they had never been registered as designs or in so far as the relevant registration had already expired by that date?

2. If the answer to the first question is in the negative, must Articles 17 and 19 of Directive [98/71] be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which – albeit meeting the requirements for protection laid down in copyright law – fell to be regarded as having entered the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party – without authorisation from the holder of the copyright on such designs – has already produced and marketed products based on such designs in that State?

3. If the answers to the first and second questions are in the negative, must Articles 17 and 19 of Directive [98/71] be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which – albeit meeting the requirements for protection laid down in copyright law – fell to be regarded as having entered the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party – without authorisation from the holder of the copyright on such designs – has already produced and marketed products based on such designs in that State, where protection is precluded for a substantial period (a period of 10 years)?’

Today the ECJ ruled as follows:

"1. Article 17 ... must be interpreted as precluding legislation of a Member State which excludes from copyright protection in that Member State designs which were protected by a design right registered in or in respect of a Member State and which entered the public domain before the date of entry into force of that legislation, although they meet all the requirements to be eligible for copyright protection.[i.e. Article 17 won't let Italy refuse copyright protection to ex-design-protected works that still fit the conditions for copyright protection]

2. Article 17 of Directive 98/71 must be interpreted as precluding legislation of a Member State which – either for a substantial period of 10 years or completely – excludes from copyright protection designs which, although they meet all the requirements to be eligible for copyright protection, entered the public domain before the date of entry into force of that legislation, that being the case with regard to any third party who has manufactured or marketed products based on such designs in that State – irrespective of the date on which those acts were performed". [i.e. Article 17 won't let Italy ban or suspend copyright protection for the benefit of anyone who relied on the fact that the work was once in the public domain]

On the principle of the protection of legitimate expectations the Court had this to say:

"51 ... in accordance with the principle that amending legislation applies, except where otherwise provided, to the future consequences of situations which arose under the law as it stood before amendment ..., acts performed before the date of entry into force of new legislation continue to be governed by the previous law. Thus, the revival of copyright protection has no effect on acts of exploitation definitively performed by a third party before the date on which such rights became applicable.

52 Conversely, by virtue of that principle, the fact that copyright protection applies with regard to the future consequences of situations which are not definitively settled means that it has an effect on a third party’s rights to continue the exploitation of subject-matter which is protected afresh by an intellectual property right (see, to that effect, Butterfly Music, paragraph 24).

53 It should also be recalled that it is settled case-law that the principle of the protection of legitimate expectations cannot be extended to the point of generally preventing new rules from applying to the future consequences of situations which arose under the earlier rules ...

55 As regards ... the legislative measure providing for a transitional period in relation to a specific category of third parties with a view to protecting their legitimate interests, it follows from the principle that acquired rights must be respected and from the principle of the protection of legitimate expectations that Article 17 of Directive 98/71 does not preclude such a measure, provided that the measure does not have the effect of deferring for a substantial period the application of the new rules on copyright protection for designs so as to prevent them from applying on the date laid down by that directive ...

56 In that regard, the assessment of the compatibility of the length of that transitional period and of the category of third parties covered by the legislative measure must be carried out in the light of the principle of proportionality.

57 Accordingly, the legislative measure adopted by the Member State concerned must be appropriate for attaining the objective pursued by the national law and necessary for that purpose – namely ensuring that a balance is struck between, on the one hand, the acquired rights and legitimate expectations of the third parties concerned and, on the other, the interests of the rightholders. Care must also be taken to make sure that the measure does not go beyond what is needed to ensure that that balance is struck.

58 For that purpose, the measure may be regarded as appropriate only if it is directed at a category of third parties entitled to rely on the principle of protection of legitimate expectations – that is to say, persons who have already performed acts of exploitation in relation to designs within the public domain at the date of entry into force of the legislation transposing Article 17 of Directive 98/71 into the domestic law of the Member State concerned.

59 Furthermore, the legislative measure should ensure that the period of use of the designs by those third parties is limited to what is necessary for them to phase out the part of their business that is based on earlier use of those designs or to clear their stock.

60 The measure does not go beyond what is necessary to ensure that a balance is struck between the competing rights if it does not defer entitlement to copyright protection for a substantial period.

61 In this instance, as regards the definition of the category of third parties as against whom it is provided that copyright protection is for a temporary period to be unenforceable, Legislative Decree No 95/2001 and Article 239 of the IPC may be regarded as appropriate since they are directed solely at persons who acquired their rights before the entry into force of the national measures transposing Directive 98/71.

62 Conversely, unenforceability for a transitional period of 10 years does not appear to be justified by the need to safeguard the economic interests of third parties acting in good faith, since it is apparent that a shorter period would also allow the part of their business that is based on earlier use of those designs to be phased out and, even more so, their stock to be cleared.

63 Furthermore, a 10-year moratorium in respect of copyright protection appears to go beyond what is necessary, since, by taking 10 years off the period during which a work is protected (as a rule 70 years after the death of the author), the application of copyright protection is deferred for a substantial period.

64 As regards, in the second place, Article 4(4) of Decree Law No 10 of 15 February 2007, abolishing the moratorium and rendering copyright protection unenforceable for an indefinite period in the case of products manufactured on the basis of designs which were in the public domain before 19 April 2001, it follows from the foregoing that such a measure negates Article 17 of Directive 98/71, since it has the effect of preventing, generally, the application of the new protection, that is to say, protection relating to copyright. Nor does that measure seek to restrict the category of third parties who may rely on the principle of the protection of legitimate expectations. On the contrary, the measure renders copyright more generally unenforceable, since, under the provision, it is not necessary for a third party to have begun exploiting the designs before 19 April 2001".

Quite right, says tytoc collie -- though he is still trying to get his furry little brain around the interrelationship of the principle of the protection of legitimate expectations with the doctrine of proportionality.  Merpel adds, it might be fun to measure some earlier ECJ intellectual property rulings against the protection of legitimate expectations ...

Resurrection of copyright here
Revival of copyright here

Theses and the InfoSoc Directive: dancing the Slovak Three-Step

A man of great principle and the author of one of
the world's most influential theses, Martin Luther
was not an internet user and always preferred
doors to Windows

Fellow blogger and friend of tytoc collie Martin Husovec would like to know what readers of this blog think about the real or imagined compatibility of a new Slovak law with Directive 2001/29 (the information society directive).  He explains:

"At the end of last year the Slovak parliament passed (and the President signed) so called anti-plagiarism amendment of the Act on Schools of Higher Education. This basically legislates that each student at any Slovak university must consent to have his thesis published online.  Failure to grant this licence results in a student's not being able to defend that thesis and subsequently complete his university education. These provisions apply not only to bachelor and master students, but also doctoral students and habilitation works [Merpel's not too sure what these are, but they do sound grand ...].

According to the Act each student must conclude an non-exclusive and territorially unrestricted licence agreement, agreeing to have his work released and communicated to the public via the Slovak Republic (represented by the Ministry of Education) before his thesis defence. This licence agreement must be concluded without any remuneration. By default every thesis will be published with electronic information identifying rights and technological protection measures which prevent the printing and downloading of the work, but any student can consent to publish his work without these restrictions. Works will be published online on a so-called Central Register of Qualification Works (CRZP). If the thesis includes trade secrets, classified information or personal data, that part shall be embodied in a special attachment which is not subject to publication. 

In order to protect possible patentable technical solutions or some other interests, the Act provides that a student can postpone online publication within CRZP for 12 months. This period could be exceptionally extended to another 24 months (amounting to 36 months in total) under special conditions following a special procedure. 

The only works that are excluded from the online publication are those that have been already published in a periodical or non-periodical publication. There is no time limit after which thesis shall be taken down. However, every student who has published his work as a periodical or non-periodical publication after his graduation can subsequently ask for its removal. The details of this publication have to be proved to CRZP. The law will come into effect on 1 September 2011.

My primary concern is whether this law is a measure having the equivalent effect to a statutory licence? If so, is this amendment compatible with the information society directive, especially its exhaustive list of exceptions and limitations --  and the three step test?

A little bit more information (with links) is provided here".

All comments and suggestions are welcomed, as well as any clues as to whether other jurisdictions have taken -- or are thinking of taking similar measures.  Merpel says, I don't mind the compulsory publication of theses -- I'm just terrified at the thought that it might become compulsory to read them.

Dance the three-step in Sardinia here
Three steps to breakdance here (not for the faint-hearted ...)

Pathetic website offering words that rhyme with "theses" here

Patents, licences and random musings

Now let me think ...

After posting sundry musings about patents and licensing, loosely pinned to his reflections on LexisNexis's forthcoming "Licensing Patents & Know-How" conference ( Millennium Mayfair Hotel, Londonn 17 February), tytoc collie has received various patent-licence-related items from kind persons who obviously, and probably correctly, feel that his education on the subject would not be harmed by a little extra current reading.

The Kat has also rceived some interesting thoughts from readers relating to patent licensing.  One addresses the issue of "pay-to-delay" patent settlements, which are currently the subject of both controversy and litigation in the United States. The idea is simple and ingenious: patent owners pay generic pharma manufacturers not to challenge the validity of their patents, thus enabling them to continue exploiting their monopolies but effectively sharing the proceeds with what would otherwise be a competitor. Some people think this is a great way to sort out a problem in a way which makes everyone happy except purchasers of cheap generic drugs and enthusiasts of competition law who say that this is all wrong: since patents are presumed valid until proven to the contrary, it doesn't look very brave for big companies to hide behind their presumed weakness as a justification for buying off a prospective challenger -- and isn't there a Sherman Act somewhere about?  So perhaps the solution is not to buy off a challenger but to sell the challenger the patent and buy back an exclusive licence to manufacture, on much the same terms?  tytoc collie thinks there may be problems here too, but at least they're couched in different terms.  The Kat now sees that licensing has already been thought of in the context of pay-to-delay, is is apparent from the application for certiorari in Louisiana Wholesale v Bayer (here).

Another reader has, just for the sake of curiosity, raised the issue of non-disclosure agreements.  She was reading the Wikipedia entry on NDAs and observed that they are not characterised there as being licences. But, she insisted, they really should be regarded as such, at least where they permit the use of the licensed confidential information for the purposes attached to the disclosure -- evaluating its technical efficacy, costing out potential use in manufacture, and so on.  tytoc collie's keeping an open mind on this one, though he's somewhat doubtful about the proposition -- and he's not sure whether, in the case of NDAs, their characterisation as a licence or not is a distinction without a difference.

You can check out the agenda of Patents and Know-How here, inspect the speakers' credentials here and download the brochure here.

Recent periodicals

The January 2011 issue of Oxford University Press's flagship IP title, The Journal of Intellectual Property Law & Practice (JIPLP) is the first to sport its bright, eye-catching purple cover (2010 was silvery grey; 2012 is up for discussion).  The full contents of this issue can be viewed here.  As editor, IPKat team member Jeremy is very fond of all the contributions to this journal -- and all the contributors -- so he doesn't have any favourites.  However, he would be disappointed if anyone who considered himself a true patent enthusiast did not take the opportunity to read Christopher Wadlow's "The professor, the patent, and the perilous life of the PHOSITA" (abstract here).

The latest issue of the John Marshall Law School's Review of Intellectual Property Law (volume 10, issue 2) is now available online here.  This issue includes a special dedication to the former Chief Judge of the United States Court of Appeals for the Federal Circuit, Paul R. Michel. Among the topics covered is a discussion by Wu Wei-hua of international arbitration as a method for resolving patent disputes, and there's a note by Jacobi M. Fields on fraud liability in respect of false statements made to the USPTO in the course of US trade mark registration [tytoc collie has often wondered about some of the statements which, per OHIM Board of Appeal proceedings, appear to have been made to OHIM and which have struck him as having the ring of not-quite-true about them -- so should be follow the American lead?].

Another online journal, this time from the other side of the Atlantic, is Scripted, the delightfully erudite and often challenging publication from the University of Edinburgh's IP folk.  Volume 7, issue 3 is now at your disposal (contents here).  What tytoc collie likes about Scripted is that it forces him to look beyond IP itself to adjacent disciplines in which IP plays a part, such as -- in the case of this issue -- genetic testing, the right of withdrawal from electronically entered contracts and even Nano poems.  But then, this is a journal of law, technology and society, and its editorial team make sure it sticks to its brief! tytoc collie's pick this time round is by Naomi Hawkins (University of Exeter) for her article (which you can read in full here) "Human Gene Patents and Genetic Testing in Europe: a Reappraisal":

"Popular and academic objections to patents over human genes are legion. Although some concerns about the negative impact of these patents have declined recently, questions persist as to the effect of gene patents on genetic testing. This paper undertakes a timely reappraisal of the patentability of human genes in Europe, by reference to EPO and English case law, and demonstrates that isolated DNA and the associated diagnostic tests remain patentable in Europe, although recent cases indicate a sensible tightening of the patentability requirements. The paper concludes by considering the potential for gene patents to affect the provision of genetic testing services".

Not a journal, this time, but a poddie with accompanying transcript.  It's another “Beyond the Book” production from the Copyright Clearance Center in which CCC's very own Chris Kenneally explores, together with a selection of guests, numerous Digital Rights Management (DRM) challenges facing the entertainment and media industries in attempting to manage content and control distribution to an ever-larger [and more disenchanted, mewses Merpel?] customer base. Poddie here; transcript here.

The perennially popular Managing Intellectual Property magazine for December/January leads with a 'Ten for Ten' cover story, reviewing the ten biggest cases of 2010.  Of most excitement to tytoc collie is a piece by a four-strong team from Allen & Overy on the absurd, unjust and (he hopes) soon to be eradicated principle which the Court of Appeal for England and Wales upheld by a 2-1 majority in Coflexip v Stolt that a patent owner can collect infringement damages even when the patent is subsequently ruled to be invalid.  Among other attractions this issue contains a useful survey of six countries in which the courts are happy (or not) to entertain trade mark surveys. Visit the MIP website here for further information.

Looking ahead, since we're still Januarians, the February-March 2011 issue of the ever-fatter World Trademark Review (WTR) opens with a selection of views on what are sometimes termed "zombie brands" -- once-popular but now effectively dead trade marks that suddenly find their way into trade mark auctions and, at least in theory, back into the market.  The WTR's pretty covers can't be uploaded on to tytoc collie's pretty weblog any more since they're .ashx files, so here's a picture of a blank screen instead.

Wednesday whimsies

Good news at last!  The World Intellectual Property Database (WIPD) website is no longer as deceptively lookalike as it was yesterday (on the uncanny resemblance of this site to the World Intellectual Property Organization's site, see tytoc collie's recent posts here and earlier).  If you take a look here, you can see that it now sports the logo on the right.  The new logo actually looks not unlike a black-and-white version of the lettering of the WIPR (World Intellectual Property Review), but that's another subject and not one that tytoc collie is about to chase up.  Anyway, tytoc collie is hugely relieved that the risk of confusion and deception has been reduced.

On the subject of rogue websites, tytoc collie has received some very thoughtful comments and even a couple of entries in response to yesterday's competition -- which remains open till 6 February.  Do take the opportunity to imagine yourself to be advising a United Nations agency -- and to win a copy of Alexander Tsoutsanis's new book Trade Mark Registrations in Bad Faith, which would cost you £125 if you had to buy it yourself!

Komodo Dragon

Around the blogs. PatLit's latest PCC Page, on the new, versatile Patents County Court for England and Wales ("Snails and Octopuses", here) looks further at the dynamics of delay. There's a new blog on the block, this being the splendidly-named IP Komodo Dragon (interests: "eating people" and "intellectual property"). Providing an elegantly-written commentary on IP in Indonesia, this blog is not connected with the excellent IP Dragon, and readers should not be confused by it -- though that's not to say that the trade mark law of a well-known European country beginning with "G" does not contain a specific rule to govern the situation in which a junior mark consists of two words which are identical to the senior mark, where those words are separated in the junior mark by a third word which, while not found in the senior mark, is a word which, while unusual and striking in its appearance, contains a conceptual link to the second of the two words which comprise the senior mark ...

tytoc collie has learned from Rita Matulionyte (Institut für Rechtsinformatik, Leibniz Universität Hanover) that a group of European academics released last week an opinion on the Anti-Counterfeiting Trade Agreement (ACTA). Says Rita, this opinion identifies the most critical aspects of ACTA and invites European and national institutions to consider it carefully before ratifying the Agreement or withholding consent. The opinion is open for signatures until 7 February 2011, when it will be submitted to the European Parliament and other relevant European and national institutions [Merpel's puzzling a little bit over the word "relevant", which she sometimes has difficulty understanding when it comes so close to the words "European Parliament" ...].  By the way, does anyone know why it's Hannover in German but Hanover in English? Was this an early example of textese?