I'm rather belatedly in the middle of reading Moral Panics and the Copyright Wars by Bill Patry, and an excellent book it is - which I will review in due course. The message that a liberal approach to downloading actually - perhaps counter-intuitively, at least to the record and film industries - leads to increased sales is echoed in a posting by the author Paulo Coelho on his blog which is worth reading.
Years ago, before I knew a thing about copyright, when I copied friends' LPs onto tape (and permitted them to do the same with mine) I did so with the aspiration of "upgrading" in due course by buying my own copy of the disc. If I didn't like the music I wouldn't bother, but neither would I listen to the tape. Far from meaning lost sales, I am sure it meant I bought more than I otherwise would. OK, albums were desirable possessions in their own right in a way that CDs aren't and downloads couldn't possibly be - though LPs do take up a lot of space. And the tape recordings were pretty rough. There were compelling reasons to buy the LP if you could.
And there's such a lot of music available, legally, for free download anyway - including so much of The Grateful Dead's oeuvre, recorded with their blessing by their fans - further proof, if proof were needed, that allowing copies to be made does not necessarily hurt the rights owner.
Friday 29 April 2011
Thursday 28 April 2011
The Hargreaves Review: Can we be told what is happening?
The Hargreaves Review should be the biggest piece of IP news this month. We have been promised all along that it will report in April 2011 and there's not much time left. I have had plenty of other things to think about recently, but there's a small break from the relentless flood of pressing obligations and anyway I need to be ready to cover Hargreaves in my next podcast - so I went looking for news of progress.
First I went to the (independent) Review's pages on the Intellectual Property Office website. Obviously my understanding of the word "independent" in this context is somewhat old-fashioned. I assume that the IPO is just generously providing a facility for the Review, which is exactly the sort of public-spirited activity that I always thought we had a government for rather than all the superficial promotional work the IPO does to raise awareness of the intellectual property system ... not to mention its ridiculous name-changing and the attendant waste of taxpayers' money on trade mark applications that should be completely unnecessary ...
The Review pages on the IPO website are not very informative about where it's got to and when the report will be out. Indeed, the home page hasn't been updated since 25 March - and the rest of the site is older still. There's a blog attached to it (which I mentioned in a recent podcast) but that too is up to date to 25 March - which is to say, not up to date at all. And the blog invites us to follow the Review on Twitter - which I find I was already doing, but hadn't noticed because there have been no Tweets since 25 March.
With all those social media resources at its disposal, it's inexcusable for a publicly-funded review to put out so little information about its work. Had the blog and the Twitter account not been set up in the first place, and my expectations therefore raised, I'd just be waiting for the words of wisdom to emerge - standing patiently outside the HMSO bookshop, perhaps. This dearth of information, though, is pathetic, and a bit of an insult to all who will feel the impact of what the review recommends - and to the taxpayers who have funded the exercise.
First I went to the (independent) Review's pages on the Intellectual Property Office website. Obviously my understanding of the word "independent" in this context is somewhat old-fashioned. I assume that the IPO is just generously providing a facility for the Review, which is exactly the sort of public-spirited activity that I always thought we had a government for rather than all the superficial promotional work the IPO does to raise awareness of the intellectual property system ... not to mention its ridiculous name-changing and the attendant waste of taxpayers' money on trade mark applications that should be completely unnecessary ...
The Review pages on the IPO website are not very informative about where it's got to and when the report will be out. Indeed, the home page hasn't been updated since 25 March - and the rest of the site is older still. There's a blog attached to it (which I mentioned in a recent podcast) but that too is up to date to 25 March - which is to say, not up to date at all. And the blog invites us to follow the Review on Twitter - which I find I was already doing, but hadn't noticed because there have been no Tweets since 25 March.
With all those social media resources at its disposal, it's inexcusable for a publicly-funded review to put out so little information about its work. Had the blog and the Twitter account not been set up in the first place, and my expectations therefore raised, I'd just be waiting for the words of wisdom to emerge - standing patiently outside the HMSO bookshop, perhaps. This dearth of information, though, is pathetic, and a bit of an insult to all who will feel the impact of what the review recommends - and to the taxpayers who have funded the exercise.
Wednesday 27 April 2011
World IP Day - spreading the word ...
I spent yesterday doing my bit for IP education - talking to entrepreneurs, inventors, small business people and the like about the subject, and also plugging my book - though that's not a natural constituency for it, really. (Here's a picture of me in action, though I don't really look like that at all, do I?) I do hope that Leeds Central Library will consider it a worthwhile investment - and other designated patent libraries, too.
Also doing her bit - with much more style than me - for IP education is Hope London, which I'm afraid I thought at first must be a charity for down and outs in the capital. She's an artist who has chosen to use her talents to promote the message that intellectual property, and of course copyright in particular, is important for graphic artists. This article about her appeared in The Scotsman, because she's based in Wigtown, where you can see her works as part of a festival called Spring Fling. Her mission is, using the medium of a graphic novel, to get the IP message in a across painless and amusing way (my mission in the Dictionary of Intellectual Property Law, too, though the medium is rather different and I didn't exercise my cartoon-drawing skills, such as they are, which have lain dormant since my contributions to the Warwick Boar in 1977) - a very promising idea, as you'll see if you follow that last link - though being a boring, literal minded, male, English lawyer the American usage of "Esq" does grate on me ... However, it's a universal message so I won't go on about it. I'll just wish her luck and hope to see more of her work in the future - Wigtown is not, unfortunately, on my itinerary in the near future. Leeds and Bradford yesterday was enough for now.
Also doing her bit - with much more style than me - for IP education is Hope London, which I'm afraid I thought at first must be a charity for down and outs in the capital. She's an artist who has chosen to use her talents to promote the message that intellectual property, and of course copyright in particular, is important for graphic artists. This article about her appeared in The Scotsman, because she's based in Wigtown, where you can see her works as part of a festival called Spring Fling. Her mission is, using the medium of a graphic novel, to get the IP message in a across painless and amusing way (my mission in the Dictionary of Intellectual Property Law, too, though the medium is rather different and I didn't exercise my cartoon-drawing skills, such as they are, which have lain dormant since my contributions to the Warwick Boar in 1977) - a very promising idea, as you'll see if you follow that last link - though being a boring, literal minded, male, English lawyer the American usage of "Esq" does grate on me ... However, it's a universal message so I won't go on about it. I'll just wish her luck and hope to see more of her work in the future - Wigtown is not, unfortunately, on my itinerary in the near future. Leeds and Bradford yesterday was enough for now.
Sunday 24 April 2011
Book review: Working Within the Boundaries of Intellectual Property
I am a very fussy reader. I remember decades ago being appalled at a sentence in a best-selling book that, lacking a verb, made no sense. Years later, I had been enjoying Captain Corelli's Mandolin until Mr de Bernieres suggested that the Cyrillic alphabet was used in Greece. And more recently a friend's novel was spoilt for me by a mistake ("taught" instead of "taut") on the first page - his prose also turned out to be purple enough to make an Anglican bishop's outfit look colourless, which further detracted from a rather good story.
So when, also on the first page, in fact the third line, of this book - once I'd skimmed through the preliminaries, including endless pages of biographies of the contributors - I read that patents granted to American universities had "grown almost in order of magnitude" from 434 in 1983 to 3,259 in 2003, I knew all I wanted to know. The inclusion of the word "almost" makes it complete and utter mathematical rubbish. The fact surely is that the statistic has increased by an order of magnitude, no more and no less: you simply cannot have partial orders of magnitude. It has gone up from 4.34 x 10² to 3.259 x 10³ - an order of magnitude.
Why on earth use a concept like orders of magnitude anyway? Because it sounds learned? "Almost tenfold" would have worked (though it would have been very approximate). At least we were spared the misuse of the term "exponential".
My own writing is far from perfect, and I already know of entries in my recently-published Dictionary that I would write very differently with hindsight, so of course I risk attracting brickbats by picking fault with the work of others. The publisher should be ashamed of this one, though, and I think I am justified in mentioning it in connection with a work of scholarship such as this. If intellectual rigour is lacking there, might it also be lacking elsewhere? I have found nothing to suggest that it is - but one does not read books like this because one already knows the subject-matter but to learn something new. And this has a great deal to teach us.
Subtitled "Innovation Policy For The Knowledge Society", it was published on 4 March 2010 and is edited by Rochelle C. Dreyfuss, Diane L. Zimmerman, and Harry First, all from New York University School of Law. It is a follow-up to the same editors' Expanding the Boundaries of Intellectual Property, published by Oxford University Press in 2001. At 568 pages and £85.00 it is a substantial piece of work, and its focus on the expansion and strengthening of intellectual property laws is a subject of huge importance which certainly doesn't get enough attention from practitioners, who often resemble turkeys enjoying an indefinite postponement of Christmas. I have a feeling that few practitioners are going to be reading this, though - their time is money - but I hope that the learning contained within it will percolate down from the realms of academe and generate more debate about whether intellectual property rights have become too strong.
So when, also on the first page, in fact the third line, of this book - once I'd skimmed through the preliminaries, including endless pages of biographies of the contributors - I read that patents granted to American universities had "grown almost in order of magnitude" from 434 in 1983 to 3,259 in 2003, I knew all I wanted to know. The inclusion of the word "almost" makes it complete and utter mathematical rubbish. The fact surely is that the statistic has increased by an order of magnitude, no more and no less: you simply cannot have partial orders of magnitude. It has gone up from 4.34 x 10² to 3.259 x 10³ - an order of magnitude.
Why on earth use a concept like orders of magnitude anyway? Because it sounds learned? "Almost tenfold" would have worked (though it would have been very approximate). At least we were spared the misuse of the term "exponential".
My own writing is far from perfect, and I already know of entries in my recently-published Dictionary that I would write very differently with hindsight, so of course I risk attracting brickbats by picking fault with the work of others. The publisher should be ashamed of this one, though, and I think I am justified in mentioning it in connection with a work of scholarship such as this. If intellectual rigour is lacking there, might it also be lacking elsewhere? I have found nothing to suggest that it is - but one does not read books like this because one already knows the subject-matter but to learn something new. And this has a great deal to teach us.
Subtitled "Innovation Policy For The Knowledge Society", it was published on 4 March 2010 and is edited by Rochelle C. Dreyfuss, Diane L. Zimmerman, and Harry First, all from New York University School of Law. It is a follow-up to the same editors' Expanding the Boundaries of Intellectual Property, published by Oxford University Press in 2001. At 568 pages and £85.00 it is a substantial piece of work, and its focus on the expansion and strengthening of intellectual property laws is a subject of huge importance which certainly doesn't get enough attention from practitioners, who often resemble turkeys enjoying an indefinite postponement of Christmas. I have a feeling that few practitioners are going to be reading this, though - their time is money - but I hope that the learning contained within it will percolate down from the realms of academe and generate more debate about whether intellectual property rights have become too strong.
Friday 22 April 2011
March podcast now available
The March podcast is now available to subscribers for download from the usual place. The notes will follow shortly. In this month's programme:
- The Max Planck Institute’s study of European [sic] trade mark law is published
- The Court of Justice kills off the uniform patent litigation system
- EPO appeals board agreeing with English courts about the Medinol stent
- Advocate General Jääskinen on the application of the private-copying levy to distance selling (and several other things - he's a busy man)
Thursday 21 April 2011
Clutter: Planck's New Constant
The Max Planck Institute’s Study on the Overall Functioning of the European Trade Mark System was published on 8 March. It has taken me a while to get to this – and I haven’t yet read all 278 pages – so these thoughts are liable to be added to, changed, or dropped. Watch this space!
It was commissioned (appropriately enough) by the European Commission, and it is one element of the Commission’s overall evaluation of what it insists on calling the European trade mark system. (See my separate posting on that.)
The purpose of the Commission’s evaluation of the trade mark system is to provide an assessment of how the system is working and to identify potential areas for improvement. It also considers the potential for enhanced co-operation between OHIM and the national offices, and evaluates the distribution of a proportion of the renewal fees paid for CTMs – a particularly touchy subject between national offices and the Community one. The Commission is free to choose not to follow recommendations in the Study, and some of them are certainly controversial: it will bring forward its ideas for legislative change in the autumn. The general tone of the Study, and its recommendations, would lead to greater cohesiveness between the Community and national trade mark systems – and several recommendations involve making optional provisions in the Directive mandatory (including the extended anti-dilution protection afforded to marks with a reputation).
The Study begins by canvassing the views of relevant stakeholders in the Community and national systems (I will call them collectively the systems, to save me becoming over-excited about the misuse of the word “European”). I’m glad they didn’t waste time with irrelevant stakeholders, though if they are stakeholders surely they are relevant by definition. The MPI organised two hearings with representatives of these stakeholders – but I have a feeling that when you examine the identities of the stakeholders you’ll find that they all have a vested interest in the continuation of the trade mark system pretty much as it is.
It also collected information from national trade mark offices, and the Benelux regional office (BOIP) which I hope will not feel offended if I don’t single it out for special mention every time I use the expression “national offices”. Finally, a representative survey among users of the CTM system was conducted by the Institut für Demoskopie Allensbach in February and march 2010.
The Study draws a number of conclusions from its survey of the field and makes many recommendations. A recurring theme throughout the study, and an expression for which I for one am indebted to the Institute, is “cluttering”. Such is the extent to which it is used that it should be regarded as a new Planck’s Constant.
The recommendations include:
Sharing out the half of OHIM’s renewal fees that had already been earmarked for the national offices, so all national offices get a minimum plus a top-up amount depending on the number of applications and international registrations dealt with by them. With a surplus of €400 million, this is a significant issue, especially as national offices might feel that this is money that has been taken from them by the parallel system in Alicante.
The requirement for graphical representation should be removed from the Directive and the Regulation. This will allow the development of new types of representation, while not detracting (although it’s not clear how you could do that without detracting) from the level of certainty for “non-traditional” marks prescribed by the Court of Justice (not, note, the European Court of Justice, though it it commonly so-called) in Case C-273/00, Sieckmann.
The requirement for graphical representation should be removed from the Directive and the Regulation. This will allow the development of new types of representation, while not detracting (although it’s not clear how you could do that without detracting) from the level of certainty for “non-traditional” marks prescribed by the Court of Justice (not, note, the European Court of Justice, though it it commonly so-called) in Case C-273/00, Sieckmann.
Classification
This is a hot potato currently before the Court in Case C-307/10, IP TRANSLATOR. The main problem in this area is that OHIM will insist on treating an application for everything in a class heading as covering everything in the class, even though there will be stuff in the class that isn’t mentioned in the class heading. Practices in national offices vary (and one of the Study’s most useful contributions is to tell us what each national office is doing). Overwide specifications, whether using class headings or otherwise, lead to cluttering of the register and firmer action than recommended by the Study should be taken. The Study offers a classic SOTBO: OHIM and national offices should agree a common approach. It suggests (more helpfully) that applicants should be required specifically to claim goods or services which might not be understood to fall under a class heading – giving the example of “software” in class 9.
How many classes?
This sort of cluttering could also be reduced if the Community system were not so generous as to allow applications in three classes for the basic fee. The Study suggests that separate fees – application and renewal fees – should be payable for each class.
Acquired distinctiveness
This should be assessed not on a state-by-state basis, as the General Court requires at present, but across the EU. The result will be to allow more marginal trade marks onto the register, which is hardly a step forward and will lead to cluttering. This appears to apply only to non-traditional marks. Why not all? The study also recommends "in accordance with the spirit underlying Article 6quinquies(C) of the Paris Convention, the length of time of an unchallenged and substantial use of a sign should be taken into account for the establishment of acquired distinctiveness”.
Relative grounds
There should be no change from the way OHIM deals with relative grounds – conflicts between registered trade marks and new applications – because it doesn’t have the resources to carry out a proper examination (as opposed to just a search) and work out whether to refuse applications. How can this be squared with the €400 million surplus? This despite 48 per cent of proprietors favouring the change – not an absolute majority, but more than were of the opposite view.
Prior unregistered rights
Relative grounds based on unregistered rights should be limited to nationwide rather than purely local rights.
The mandatory search of the OHIM register for prior registrations should be retained. The Study reports that many stakeholders like it. However, OHIM should be free to offer pre-filing search services in co-operation with national offices – on payment, naturally, of a fee.
The mandatory search of the OHIM register for prior registrations should be retained. The Study reports that many stakeholders like it. However, OHIM should be free to offer pre-filing search services in co-operation with national offices – on payment, naturally, of a fee.
Bad faith
OHIM should not start examining bad faith ex officio as a ground for refusal, but it should be a mandatory ground for refusal or cancellation in national offices – which cannot possibly promote consistency.
Even fewer proprietors wanted to change the opposition period from three to two months (as the UK has already done), and the Study thought this was not enough to warrant a change.
Even fewer proprietors wanted to change the opposition period from three to two months (as the UK has already done), and the Study thought this was not enough to warrant a change.
Non-use
Should the period of non-use after which a registration is vulnerable to challenge be reduced from five years to three? A trade mark which clutters up the register depletes the stock of available trade marks and may even foreclose the market to new entrants. Although there is an almost infinite variety of trade marks available to be used, the CTM system is already up to number 9 million and something (not all granted trade marks, certainly, but it’s still a very large number which tends towards infinity) and in any case an entrant to the market from outside the EU with an established brand is hugely vulnerable to foreclosure.
The Study also rejects the introduction of declarations of use, despite the fact that they would have massive decluttering power.
Promotional activities outside he core area of a trade mark’s registration should be regarded as a form of genuine use.
Infringement
Clutter is also the product of the extension of what amounts to infringement, but far from reversing this trend the Study suggests rewriting the Regulation and the Directive to accommodate the Court’s lawmaking in cases like Case C-292/00 Davidoff v Gofkid.
Genuine useGenuine use requirements are the second big area of controversy (along with classification issues – probably the bigger of the two) and also before the Court in ONEL/OMEL . The Study recommends that there should be no requirement that a CTM be used in more than one Member State: but by what logic can it be called a Community trade mark if it is in fact nothing of the sort? The Study recognises that there will be difficulty in enforcing a CTM against a later national trade mark in a distant part of the internal market from where the CTM is in use – a co-existence rule to deal (under carefully defined conditions) with conflicts between CTMs and later national trade marks is suggested.
Priority claims
The present system of "confining the examination [of priority claims] to requiring the necessary documentation for inclusion in the files and the congruence between what is documented and what is claimed" is not up for change, because it keeps costs down.
Extended protection
Trade marks that meet the criteria for extended protection, against dilution, based on their reputation – which are now coming to be referred to as “reputation trade marks” - should be regarded as well-known trade marks and accorded the protection of Article 6bis of the Paris Convention. That might be helpful, because no-one has ever had the faintest idea what constituted a well-known mark before. If you are lucky to have a well-known mark, it will enjoy protection against likelihood of confusion as well as against unfair use of, and detriment inflicted on, their reputation or distinctive character, irrespective of whether they are registered or not in the territory where protection is sought.
The meaning of “unfair advantage” is also something that could usefully be clarified, leading to more certainty about the extended protection for reputation marks.
Transit
For the purposes of infringement, use of a trade mark should include use anywhere in the territory of a Member State or (for a CTM) the EU – including custom-free zones, which means a change from the current position. If goods are counterfeit within the meaning of the TRIPS agreement and would be infringing in the country of transit (or the EU) it should be possible to take action against them. This is another controversial matter currently before the Court in Cases C-446 and C-495, Nokia and Philips.
Sanctions
The Regulation might benefit from saying something about sanctions for infringement, but perhaps (the Study concludes) that’s a matter for the Enforcement Directive (2004/48) which is currently under review. However, it does say that it thinks that Community Trade mark Courts should be able to grant Community-wide injunctions in all cases where they are requested – on which, see the DHL case.
The Regulation might benefit from saying something about sanctions for infringement, but perhaps (the Study concludes) that’s a matter for the Enforcement Directive (2004/48) which is currently under review. However, it does say that it thinks that Community Trade mark Courts should be able to grant Community-wide injunctions in all cases where they are requested – on which, see the DHL case.
Empire-building
The report also recommends that a role for OHIM in the counterfeiting field be considered. This seems to be part of an inexorable and undesirable process by which intellectual property offices arrogate to themselves roles well outside their natural jobs of maintaining registers of who owns what (and, perhaps, making sure that no-one claims what someone else owns, or has rights over something that they shouldn’t have).
The report also recommends that a role for OHIM in the counterfeiting field be considered. This seems to be part of an inexorable and undesirable process by which intellectual property offices arrogate to themselves roles well outside their natural jobs of maintaining registers of who owns what (and, perhaps, making sure that no-one claims what someone else owns, or has rights over something that they shouldn’t have).
Consistent decision-making
The study found substantial room for improvement in consistency of decision-making between OHIM and the national level, evidenced by the proportion of users who expressed dissatisfaction.
The study found substantial room for improvement in consistency of decision-making between OHIM and the national level, evidenced by the proportion of users who expressed dissatisfaction.
A misnomer - or trade mark imperialism?
The Max Planck Institute’s Study on the Overall Functioning of the European Trade Mark System is misnamed. It is not about any - "the" or "a" - European trade mark system: if it were, it would be a work of fiction and the whole project would be ultra vires and the UK Independence Party or someone would be challenging it in the Court of Justice (not, note, the European Court of Justice, nor the Court of Justice of the European Union, which institution includes the Court of Justice in which such a constitutional challenge would be brought). It is concerned with trade marks in the European Union, a large part of Europe but by no means its entirety; and a political unit, not a geographical or cultural one.
I find it extraordinary that the Commission, who should know a great deal better, should continue - arrogantly? - to refer to it as European, when it is about trade mark law in the European Union. Are there expansionist forces at work here? Or is it just sloppiness? What do the Swiss think, or Icelanders, Norwegians, Belorussians, Ukrainians, Moldovans, Serbs, Croatians, Albanians – even Manxmen, Monegasques, Channel Islanders, and all the other non-EU Europeans? I hope to see some comments posted here ... even if they tell me I am wrong.
Good. Now I can get on with looking at what the Study says about trade mark law.
Max Planck's English
Before I comment on the Max Planck Institute’s Study on the Overall Functioning of the European Trade Mark System, I have to get two things off my chest, and if I do it now I might be more constructive with what I say about the substance of the document. Also, as separate comments they stand a better chance of coming to the attention of those to whose attention they should come.
First, I am frankly appalled at the quality of the writing, about which I haven't seen anyone else say anything. As a taxpayer, I should not be expected to accept work of this quality. And my dismay is compounded by the discovery that the English version is the only version offered on the French and German-language versions of the Commission's website. So, a German institute prepared the document in English, in which form it is offered to speakers of all the other European Union languages. If only it were good English.
Brits must take great care before criticising the linguistic skills of other nationalities, I know, but this document is so badly rendered into English that there are points at which its meaning disappears. Apparently it came in below budget, but how much better if that money had been spent on a professional translation. It would surely have been perfectly practicable to have a literate native English-speaker polish it up before publication. Sentences like:
Development of IT tools dedicated to support national authorities in the fields of the combat to counterfeiting such as image searchable IT tools (para 1.57)
are inexcusable, but we can read past the incorrect prepositions, wrong parts of verbs and lackof punctuation to uncover the meaning. Likewise:
The Hungarian office has indicated that despite of …
Words like “trasferreded” should not have slipped through the net, “do” does sound like “due” if you learnt English from Hollywood films, “easy-friendly” might be a useful neologism, and the battle to preserve the word “datum” by ensuring “data” remains plural has probably been lost already. “Eventually” is a false friend to most non-native speakers of English.
When a document is so badly presented, one begins to wonder whether it is equally slipshod in substantive areas. I don't think it is - although there is much to criticise - but it would have greater credibility if it were written in good English. At least - so far - I have not been unable to understand what it is trying to say.
Book review: Trade Mark Registrations in Bad Faith by Alexander Tsoutsanis
The law on this topic is surprisingly diverse, even between the UK and the Community trade mark system, and indeed expressed in diverse ways. When applying for a UK trade mark you have to declare that you are using or have a bona fide intention of using the trade mark: there's no such requirement in the Community system. The subject of the work is the requirement - common to the UK and the CTM system - is that a trade mark can be invalidated if it were applied for in bad faith.
This book is a handsome hardback production, as one would expect from OUP. It's 424 pages long, including preliminaries and index, with none of the flab - regurgitated legislation - that one often finds bulking out legal texts. Its scope is not world-wide, though, which isn't clear from the title - it covers the Community trade mark system and the laws of several Member States (including the UK), the country chapters varying greatly - 15 pages on the UK, 17 on Germany, one on Portugal. The CTM regulation gets 55.
Considering its origin as Dr Tsoutsanis's thesis (defended in 2005, which perhaps partly explains why the new EU Member States are dealt with quite briefly) this is far from being a dry, unreadable exposition. The author, who is an Associate with Klos Morel Vos & Schaap in Amsterdam and a lecturer at the University of Leiden, has brought the work up-to-date although to what date is not stated. It was published on 11 November last year, and presumably it took a while to get into print after he finished writing.
On the other hand, having begun life as a thesis it naturally contains everything that the world's greatest enthusiast for the subject thought worth including. That's not intended remotely as a criticism - more like a reflection of my own experience of preparing a doctoral thesis - but it does mean that there is probably more in this work than you'd ever need in practice, more probably than an academic researcher might need either. But if we only ever bought law books that we knew would be 100 per cent, or even a lesser percentage, useful, we would buy very few: and how can we know what we are going to need before something lands on our desks? For the practitioner, I guess the point is that the country chapters about those jurisdictions about which to give advice would cause our PI insurers sleepless nights are for interest only, but the UK and CTM chapters are sufficiently valuable to make this a useful addition to any practitioner's library.
Further details are on the publisher's website here.
Tuesday 19 April 2011
Morrison, Manzarek, Krieger, Densmore ... Albeniz: a little non-copyright story
I have known large parts of Asturias by Isaac Albeniz (which I have just heard on Radio 3 played, I think, by Miloš Karadaglić, although the playlist on the website doesn't confirm anything as it's The Gramophone's chart that Rob Cowan's working through) for years. Ever since I bought Weird Scenes Inside the Gold Mine, in fact, which was in about 1973. But notwithstanding my wide musical taste (and Mr Fender's music culture classes at school) I didn't know of Albeniz - and The Doors didn't enlighten me.
Spanish Caravan, the Doors song that (being generous) quotes extensively from Asturias, is credited to the four band members. Albeniz died in 1909, so even in 1968 when The Doors recorded Spanish Caravan (on the album Waiting for the Sun) it was out of copyright, probably everywhere but certainly in the UK and the USA. For the UK, the right to be identified as the author only raised its ugly-or-not-depending-on-where-you-stand head in the Paris Act of the Berne Convention in 1972, and we took 19 years to get it into law, by which time Albeniz had been in Montjuic cemetery for 80 years and his rights had expired before even being conferred. If only the UK had acted more promptly on that change to the Berne Convention! Even so, because the government was so ungenerous about it, the right has to be asserted, so Albeniz's right to be identified as a co-author of Spanish Caravan would not have been secure automatically.
And my point is? An interesting illustration and history lesson, I suppose, and four celebrated rock musicians in a morally suspect place because they didn't name the other composer. There's a pile of literature on the subject, some of which claims that it was Paco de Lucia's Spanish Dance #5, and also that the song was Robbie Krieger's work - not surprising given the subject and the prominence of the guitar, and he plays it very well - and it seems he happily acknowledges Paco de Lucia, but not Albeniz. But who wrote the lyrics? They certainly sound like Morrison's work.
Spanish Caravan, the Doors song that (being generous) quotes extensively from Asturias, is credited to the four band members. Albeniz died in 1909, so even in 1968 when The Doors recorded Spanish Caravan (on the album Waiting for the Sun) it was out of copyright, probably everywhere but certainly in the UK and the USA. For the UK, the right to be identified as the author only raised its ugly-or-not-depending-on-where-you-stand head in the Paris Act of the Berne Convention in 1972, and we took 19 years to get it into law, by which time Albeniz had been in Montjuic cemetery for 80 years and his rights had expired before even being conferred. If only the UK had acted more promptly on that change to the Berne Convention! Even so, because the government was so ungenerous about it, the right has to be asserted, so Albeniz's right to be identified as a co-author of Spanish Caravan would not have been secure automatically.
And my point is? An interesting illustration and history lesson, I suppose, and four celebrated rock musicians in a morally suspect place because they didn't name the other composer. There's a pile of literature on the subject, some of which claims that it was Paco de Lucia's Spanish Dance #5, and also that the song was Robbie Krieger's work - not surprising given the subject and the prominence of the guitar, and he plays it very well - and it seems he happily acknowledges Paco de Lucia, but not Albeniz. But who wrote the lyrics? They certainly sound like Morrison's work.
Monday 18 April 2011
The way forward for Community patents
Last week, the Commission published its proposals on enhanced co-operation to break the decades-old logjam that has denied users the possibility of getting a single patent for the whole of the European Union. Its two-pronged approach comes as part of a package of measures under the rubric "Single Market Act" (doesn't that sound reminiscent of Maastricht?).
Whether users actually feel the lack of a single EU patent is perhaps a moot point - it was generally acknowledged back in the eighties that the European patent system (which was, ironically, built on the foundations originally intended for the Community patent) gave users pretty much everything they wanted. The big issue these last twenty or more years has been patent litigation, addressed unsuccessfully in the European Patent Litigation Agreement and the Uniform Patent Litigation System. This aspect is not dealt with in the latest proposals: the Commission will be coming back to the litigation issue next month.
The two new proposals deal with the creation of unitary patent protection and with the applicable translation arrangements. As with other areas of intellectual property law, and indeed with many aspects of the European project since the 1950s, language issues have been to the forefront, despite 15 Member States creating the London Agreement to reduce the need to translate European patents quite so much.
There are, naturally, massive problems in turning a filing-and-prosecution system like the European Patent system (which ends up with the grant of a bundle of national patents) into a true unitary patent system. The problem is exacerbated if some Member States are't willing to be part of the new initiative. How to deal with validity problems in the new unitary-but-not-quite-unitary system is a major headache, for example. Plenty more to discuss on this topic - but later ...
Even this much isn't certain - Spain has until 8 May to challenge the decision to proceed on the basis of enhanced co-operation. For the creation of unitary patent protection, under Article 118(1) TFEU a qualified majority of the 25 member states involved must vote in favour, as must the Parliament. For the language arrangements, governed by Article 118(2) TFEU, there must be unanimous agreement among the 25 Member States, after consultation with the Parliament.
The proposed language regime will enable applicants to file in any language, but if the language chosen is not English, French or German, the filing must be accompanied by a translation into one of those three languages. The patent would then be granted in whichever of these three languages the applicant chooses. For a transitional period of up to 12 years, patents granted in French or German will need to be translated – at the patent holder's expense – into English, and those granted in English will have to translated into another EU official language.
Whether users actually feel the lack of a single EU patent is perhaps a moot point - it was generally acknowledged back in the eighties that the European patent system (which was, ironically, built on the foundations originally intended for the Community patent) gave users pretty much everything they wanted. The big issue these last twenty or more years has been patent litigation, addressed unsuccessfully in the European Patent Litigation Agreement and the Uniform Patent Litigation System. This aspect is not dealt with in the latest proposals: the Commission will be coming back to the litigation issue next month.
The two new proposals deal with the creation of unitary patent protection and with the applicable translation arrangements. As with other areas of intellectual property law, and indeed with many aspects of the European project since the 1950s, language issues have been to the forefront, despite 15 Member States creating the London Agreement to reduce the need to translate European patents quite so much.
There are, naturally, massive problems in turning a filing-and-prosecution system like the European Patent system (which ends up with the grant of a bundle of national patents) into a true unitary patent system. The problem is exacerbated if some Member States are't willing to be part of the new initiative. How to deal with validity problems in the new unitary-but-not-quite-unitary system is a major headache, for example. Plenty more to discuss on this topic - but later ...
Even this much isn't certain - Spain has until 8 May to challenge the decision to proceed on the basis of enhanced co-operation. For the creation of unitary patent protection, under Article 118(1) TFEU a qualified majority of the 25 member states involved must vote in favour, as must the Parliament. For the language arrangements, governed by Article 118(2) TFEU, there must be unanimous agreement among the 25 Member States, after consultation with the Parliament.
The proposed language regime will enable applicants to file in any language, but if the language chosen is not English, French or German, the filing must be accompanied by a translation into one of those three languages. The patent would then be granted in whichever of these three languages the applicant chooses. For a transitional period of up to 12 years, patents granted in French or German will need to be translated – at the patent holder's expense – into English, and those granted in English will have to translated into another EU official language.
Copyright is slippery stuff
It can be tricky to work out who has what rights, as a report in The Guardian last week makes clear. The BBC had to halt the planned transmission of a new television adaptation of John Braine's novel, Room at the Top, after a problem emerged over the broadcasting rights. Hardly surprising that this sort of thing can happen, given that copyright is not a type of property that is recorded on a register. As the article explains, copyright owners can hand out licences and options as the mood takes them, and it becomes impossible to work out whether the rights you think you've acquired now are actually worth a thing.
Perhaps the surprising thing is that this doesn't happen more often. In the US, copyright owners and their heirs are given a chance to take back rights that might have been unwisely alienated at some time in the past (see this article by my good friend Lloyd Jassin). The Intellectual Property Foresight Forum has suggested to the Hargreaves Review that there should be a 10-year reversion rule so copyright comes back to the author or his or her heirs. The Forum's paper (written by Prof Martin Kretschmer) observes that a 10-year investment horizon for the cultural industries is quite generous. It certainly seems as if it might have saved the BBC some problems.
Perhaps the surprising thing is that this doesn't happen more often. In the US, copyright owners and their heirs are given a chance to take back rights that might have been unwisely alienated at some time in the past (see this article by my good friend Lloyd Jassin). The Intellectual Property Foresight Forum has suggested to the Hargreaves Review that there should be a 10-year reversion rule so copyright comes back to the author or his or her heirs. The Forum's paper (written by Prof Martin Kretschmer) observes that a 10-year investment horizon for the cultural industries is quite generous. It certainly seems as if it might have saved the BBC some problems.
Advocate General rejects Belgian file-sharing law
Last week, in Case C-70/10, Scarlet Extended SA v. Société Belge des auteurs, compositeurs et editeurs (SABAM) Advocate General Pedro Cruz Villalon has indicated that an ISP cannot be obliged by national law to block users from illegal file-sharing. A Belgian measure ordering an ISP to install a system for filtering and blocking electronic communications in order to protect intellectual property rights in principle infringes the Charter on Fundamental Rights, in the AG's opinion.
The Court's press release contains more information and the Opinion (in French only) is here.
The Court's press release contains more information and the Opinion (in French only) is here.
Using trade marks to fence off the commons
Some IP owners seem to be insatiable. That modern copyright law has been adapted to serve the purpose of corporate interests is trite - why else would the United States have a piece of legislation known colloquially as the Mickey Mouse Protection Act? And why would we be considering increasing the duration of protection for sound recordings in Europe, to avoid the obviously undesirable consequence of early Elvis recordings losing copyright protection? (And what about Kind Of Blue?)
Here is news that Disney is trying to obtain a trade mark (actually a US one, so "trademark") for PRINCESS AURORA. She's a character in Sleeping Beauty, and seems to have been since 1697, but of course that makes no difference for trade mark purposes. In a similar vein, The True Snow White - a site set up to promote a new book telling the old story - rails against Disney's applications to register the heroine's name as a trademark, although it seems to be a bit late - the US register seems to have quite a few Snow White trade marks on it, not all Disney's. Ron Coleman has a posting about the same matter on his Likelihood of Confusion blog.
As I have said, and written, before, the problem isn't with the large corporations that are filing these applications to enclose what everyone believed to be in the public domain. It's a form of evergreening, though it has more to do with bringing back to life intellectual property which has been dead for years - perhaps never lived to begin with. The fault lies with the laws that allow this sort of thing to happen, and if protection of this nature can be obtained it's no surprise that corporate trade mark owners avail themselves of what is on offer. Failure to do so could be a failure by the directors of the company to do their duty, and shareholders could become understandably upset - especially if someone else grabbed the property because the "right" owner hadn't done so themselves.
The fallacy in this argument is, however, that the reason the law permits this sort of thing to go on is because those same corporate IP owners have persuaded the legislature that it should. There is, I think, a simple answer to this problem - and problem it certainly is, because it leads to foreclosure and depletion in the trade mark field and has chilling effects on creativity - which is to force the trade marks genie back into the bottle labelled "indication of origin". Let trade marks do what they were designed to do, and stop this excessive, harmful monopolisation. There's a lot of anger about concerning the excessive strength and reach of copyright and patents - it is high time the trade mark system came in for the same criticism. And we ought to get started on designs, too.
Tuesday 12 April 2011
February podcast now available
The February edition of the IPso Jure podcast is now available in the usual way - along with the notes. It includes:
- Various Advocates General’s opinions in the FA Premier League case (about territorial licensing), Nokia (about the counterfeit goods regulation) and Budweiser (about acquiescence)
- The Court of Appeal reversing the summary judgment in Virgin v Delta – the airline seats patent case
- The High Court on PLAY DOH and (in another case) on misleading advertising and (in yet another case) on post-sale confusion
- The Patents County Court refusing to allow the claims in the Media CAT litigation to be withdrawn, on the grounds that it would be an abuse of process
Details of how to subscribe available by following the links on this site.
Fair use? Don't confuse matters!
An article in the Independent this morning (available here) challenges received wisdom about the Hargreaves Review's job. Coverage of the Review has given the impression that it was set up to foist fair use on us, whereas it seems that not all of the small businesses that the government is trying to encourage - by reforming copyright law and designating the area around my firm's office as a centre for all things digital - it hardly qualifies as Silicon Valley, and Silicon Roundabout doesn't have quite the right ring to it. "East London Tech City" somehow doesn't sound like a desirable destination. Just plain Hoxton or Shoreditch seems to have quite enough kudos nowadays.
Anyway, when the PM announced the new initiative (in the old Trumans brewery in Brick Lane) he remarked that Google couldn't have contemplated starting their business in the UK because of the copyright laws. Strange, because they aren't exactly beyond the reach of UK copyright law anyway. Or any other country's copyright law. But they are so big, perhaps, that it's not want the law says that matters, more the way Google want to deal with it. Which might be the same as saying that by constantly challenging existing copyright laws Google is keeping up the momentum of reform.
All this talk about reusing other people's work depresses me. If it's so like someone else's work that there might be a copyright problem, it should be discouraged. People can create their own stuff that tips its hat to others' works, but even parody and caricature is possible without running the risk of copyright infringement - indeed, it's better for it, surely. If the copyright owner feels he or she has a claim for infringement, that might indicate that the rules about infringement need attention, not that we should carve out a huge copyright-free "fair use" area. Perhaps the Court of Justice's Infopaq judgment, raising the originality test to the heights of "author's own intellectual creation", will bring about the necessary changes.
Which isn't to say that the present exceptions can be left alone. They are too vague and not well-enough understood (as I noted a while ago in connection with Ben Goldacre's problems with LBC): they give the absolutists too much power. Which brings me to the point in the Independent's story that really caught my eye: a business set up to help academics share and manage research papers online, which has problems with universities owning copyright. It seems to me there's a very simple solution there: these universities are, in this country at least, substantially funded out of the public purse, and I believe the same is true of other countries too - even in the US many universities are public ones. By what right do they claim to be entitled to exclusive rights in the work for which the taxpayer has paid? The same paradox in the field of Crown copyright was addressed some years ago - the minister responsible for it being David Clark, whose seat in Parliament I once tried to take from him and came closer than he probably expected - and if universities' copyright is a problem now, let's do something about it. Stop at least one group of absolutists!
Anyway, when the PM announced the new initiative (in the old Trumans brewery in Brick Lane) he remarked that Google couldn't have contemplated starting their business in the UK because of the copyright laws. Strange, because they aren't exactly beyond the reach of UK copyright law anyway. Or any other country's copyright law. But they are so big, perhaps, that it's not want the law says that matters, more the way Google want to deal with it. Which might be the same as saying that by constantly challenging existing copyright laws Google is keeping up the momentum of reform.
All this talk about reusing other people's work depresses me. If it's so like someone else's work that there might be a copyright problem, it should be discouraged. People can create their own stuff that tips its hat to others' works, but even parody and caricature is possible without running the risk of copyright infringement - indeed, it's better for it, surely. If the copyright owner feels he or she has a claim for infringement, that might indicate that the rules about infringement need attention, not that we should carve out a huge copyright-free "fair use" area. Perhaps the Court of Justice's Infopaq judgment, raising the originality test to the heights of "author's own intellectual creation", will bring about the necessary changes.
Which isn't to say that the present exceptions can be left alone. They are too vague and not well-enough understood (as I noted a while ago in connection with Ben Goldacre's problems with LBC): they give the absolutists too much power. Which brings me to the point in the Independent's story that really caught my eye: a business set up to help academics share and manage research papers online, which has problems with universities owning copyright. It seems to me there's a very simple solution there: these universities are, in this country at least, substantially funded out of the public purse, and I believe the same is true of other countries too - even in the US many universities are public ones. By what right do they claim to be entitled to exclusive rights in the work for which the taxpayer has paid? The same paradox in the field of Crown copyright was addressed some years ago - the minister responsible for it being David Clark, whose seat in Parliament I once tried to take from him and came closer than he probably expected - and if universities' copyright is a problem now, let's do something about it. Stop at least one group of absolutists!
Monday 11 April 2011
Sub-prime patents
An interesting critique of the US patent system and inflationary trends, from The Independent by Stephen Foley, its Associate Business Editor. I like the expression "sub-prime patents", and also "Mutually Assured Litigation" though it's a shame the original acronym couldn't have been preserved. Still, especially for French-speakers, MAL isn't half bad.
Statutory definitions
There are no fewer than 20 definitions of this expression on the statute book, none of them in a statute devoted to intellectual property. They are listed in Gray v News Group Newspapers Ltd & Anor [2011] EWHC 349 (Ch):
- i) Section 8(2) of the Atomic Energy Authority Act 1986.
- ii) Section 92A(9) of the Building Societies Act 1986.
- iii) Section 88(10) of the Clean Neighbourhoods and Environment Act 2005.
- iv) Section 861(4) of the Companies Act 2006.
- v) Section 712(3) of the Corporation Tax Act 2009.
- vi) Sections 129(2) and 29(6) of the Finance Act 2000.
- vii) Section 8(3) of the Forestry Act 1967.
- viii) Section 9(1A) of the Income and Corporation Taxes Act 1988.
- ix) Sections 195(6) and 306(6) and 536(4) of the Income Tax Act 2007.
- x) Sections 456(1) and 19(6) of the Income Tax (Earnings and Pensions) Act 2003.
- xi) Section 579(2) of the Income Tax (Trading and Other Income) Act 2005.
- xii) Section 15 of the Law Reform (Miscellaneous Provisions) (Scotland) Act 1985.
- xiii) Sections 33B and 35(3C) of the National Heritage Act 1983.
- xiv) Section 72(5) of the Senior Courts Act 1981.
- xv) Paragraph 2 of the Personal Accounts Delivery Authority Winding Up Order 2010/911.
- xvi) Paragraph 9(6) of the Overseas Companies (Execution of Documents and Registration of Charges) Regulations 2009/1917.
- xvii) Paragraph 2 of the Scientific Research Organisation Regulations 2007/3426.
- xviii) Paragraph 1(2) of the Education (Qualifications and Curriculum Authority and Qualifications, Curriculum and Assessment Authority for Wales) (Transfer of Property and Designation of Staff) Order 1997/2172.
- xix) Paragraph 5 of the Employment Tribunals Extension of Jurisdiction (England and Wales) Order 1994/1623.
- xx) Paragraph 5 of the Employment Tribunals Extension of Jurisdiction (Scotland) Order 1994/1624.
One day I will work through them and see what they all say. Numbers iv and xiv are quoted in the Dictionary.
Trolls becoming respectable?
An IP bank is being set up in Taiwan, reports Taiwan Focus. It won't merely help fund defences against infringement claims - increasingly, the report says, one way in which businesses compete with each other - but will buy up patents and either licence or sell them to Taiwanese businesses. It seems like an entirely laudable enterprise - and it shows just how complicated is the whole non-practising entity/Troll thing. There is no "bright line" test to tell good from bad, although it's usually not difficult to work out which is which.
And perhaps we need another term to apply to IP owners who engage in litigation in the ordinary course of business - as part of competing, perhaps making life difficult for the other side, rather than for the sake of protecting their important assets. Another instance of IP becoming an end in itself rather than a means to an end.
And perhaps we need another term to apply to IP owners who engage in litigation in the ordinary course of business - as part of competing, perhaps making life difficult for the other side, rather than for the sake of protecting their important assets. Another instance of IP becoming an end in itself rather than a means to an end.
Copyright in a 23-word listserv message?
Only if it's highly original. A California court made clear that there's no copyright in a short listserv posting, in Stern v. Does, 09-cv-01986 (C.D. Cal.; Feb. 10, 2011) (see Eric Goldman's blog here) which merely sought information about others' experience of a firm of forensic accountants. It took the court 30 pages to do so, a degree of thoroughness that seems disproportionate to the triviality of the claim. The point is made that the first stanza of Jabberwocky (not, as the Goldman blog says, the whole poem) comprises 23 words but displays more than enough originality to qualify for the protection of the copyright laws. I can't imagine an English court would approach the matter very differently - indeed, if a copyright work must be its author's own intellectual creation (per the (EU) Court of Justice in Infopaq) a claim like the one in this case would be a complete non-starter.
As the court said, though in the original with the translation in a footnote, “He will win who knows when to fight and when not to fight.” Sun Tzu, The Art of War 32-33(Lionel Giles trans., Ulysses Press 2007). Perhaps there might even be copyright in a 13 word sentence. Perhaps more important in this day and age, a 57-character sentence. 125 characters (by my count) in the first stanza of Jabberwocky, suggesting there's every reason to believe that copyright can subsist in a Tweet: the listserv message in suit would require a little condensing as it comes in at 152 characters. So, one-fifth longer than Lewis Carroll's fragment but without much more that an iota of originality.
The blogger, Venkat Balasubramani, observes:
As the court said, though in the original with the translation in a footnote, “He will win who knows when to fight and when not to fight.” Sun Tzu, The Art of War 32-33(Lionel Giles trans., Ulysses Press 2007). Perhaps there might even be copyright in a 13 word sentence. Perhaps more important in this day and age, a 57-character sentence. 125 characters (by my count) in the first stanza of Jabberwocky, suggesting there's every reason to believe that copyright can subsist in a Tweet: the listserv message in suit would require a little condensing as it comes in at 152 characters. So, one-fifth longer than Lewis Carroll's fragment but without much more that an iota of originality.
The blogger, Venkat Balasubramani, observes:
A court will not argue with an artist over whether something he or she did was sufficiently creative. Are courts more likely to do this when it comes to written material?I think that depends what you mean by "artist". The use of that word implies a greater degree of originality - a stronger claim to copyright protection - than anyone's doodle. My creativity in the artistic field is probably on a par with the literary creativity shown by the plaintiff in this case, but I would not consider myself an artist nor would I have the nerve to claim copyright in my "work". No need that I can see to apply different levels of creativity in those two fields.
Sunday 10 April 2011
How long does it take for prior art to become common general knowledge?
Merck Sharp & Dohme Corp v Teva UK Ltd, [2011] EWCA Civ 382 is a case in the Court of Appeal for England and Wales concerning the validity of a patent for an invention for treating glaucoma. Last Thursday the Chancellor of the High Court, Sir Andrew Morrit, handed down his judgment with which Richards and Patten LJJ agreed. At first instance, Floyd J had held the patent invalid for obviousness and for containing added matter ([2009] EWHC 2952 (Pat)). Only the obviousness question was before the Court of Appeal.
The problem was that the prior art that appeared to make the claimed invention obvious had been published only six days before the priority date. The appellant based its argument on the superficially logical and attractive proposition that this wasn't long enough for the skilled person (in this case a team) to do anything with it. In determining whether there is an inventive step the judge must assume the mantle of the skilled addressee - and if he did so, MS&D argued, he would still have been blundering about in the dark trying to make sense of this latest piece of art when the application was filed. (The fact that the paper in which the prior art was published was written by a team three of whom were connected with MS&D doesn't seem to have made any difference.) The Chancellor rejected this approach, saying at para 36:
But when it comes to inventive step, it is a matter of considering the skilled addressee's knowledge. Importing the notion of the skilled addressee necessarily means that not everything in the state of the art is relevant. Perhaps on the facts of this case it made no difference that this piece of prior art would take some time to percolate through to the notional skilled addressee, but it seems to me that in determining what that person might know the time it could take to assimilate some new learning might logically postpone the inclusion of that learning in the individual's knowledge, and to deem that to happen immediately is a bit of rough justice too far.
The problem was that the prior art that appeared to make the claimed invention obvious had been published only six days before the priority date. The appellant based its argument on the superficially logical and attractive proposition that this wasn't long enough for the skilled person (in this case a team) to do anything with it. In determining whether there is an inventive step the judge must assume the mantle of the skilled addressee - and if he did so, MS&D argued, he would still have been blundering about in the dark trying to make sense of this latest piece of art when the application was filed. (The fact that the paper in which the prior art was published was written by a team three of whom were connected with MS&D doesn't seem to have made any difference.) The Chancellor rejected this approach, saying at para 36:
There is no additional time requirement… If by reference to the relevant state of the art the invention is obvious then it matters not that it may take time to perform the necessary routine tests. It is a matter of simple comparison between the relevant art and the claimed invention.The rules governing who can get a patent for an invention are necessarily a little arbitrary. The "first to file" rule involves a bit of tough justice - but no workable alternative would be any better, although some might prefer the uncertainty of "first to invent". The novelty test doesn't look at what the inventor actually knew, or even what he or she (or they) might reasonably have known: what matters is what is in the state of the art.
But when it comes to inventive step, it is a matter of considering the skilled addressee's knowledge. Importing the notion of the skilled addressee necessarily means that not everything in the state of the art is relevant. Perhaps on the facts of this case it made no difference that this piece of prior art would take some time to percolate through to the notional skilled addressee, but it seems to me that in determining what that person might know the time it could take to assimilate some new learning might logically postpone the inclusion of that learning in the individual's knowledge, and to deem that to happen immediately is a bit of rough justice too far.
Sunday 3 April 2011
European Commission to propose unitary patent protection for Europe
As baffling as having two football database cases proceeding in parallel is the whole Community patent thing. UPLS is dead in the water but the Community Restricted Area Patent (per the IPKat) lives on, now under the official title Unitary Patent Protection (UPP, not nearly as good as CRAP) subject to the previously almost unknown enhanced co-operation procedure. Conor Maguire, of Brussels Matters Ltd, drew my attention (and the attention of many others on LinkedIn!) to the following, which I have extracted from the Commission's Agenda:
On 13 April 2011, the European Commission will present proposals for a unitary patent protection for the EU and the applicable translation arrangements under enhanced cooperation.
The proposals will ensure that:
The background:
- The holders of European patents can apply for one single patent protection for the territory of 25 Member States at the European Patent Office (EPO); this will ensure the same level of protection for the inventions for 25 EU countries.
- Patent applications can be submitted into any official language of the EU. However, building on the EPO's existing language regime, the applications continue to be examined and granted in English, French or German. The patent claims, defining the scope of the protection, will have to be translated to the other 2 official languages of the EPO.
...
Commission proposals for a unitary patent protection have been under discussion for over a decade, but there has been stalemate in the Council over language rules. The Commission tried to unblock this with its June 2010 proposal on the EU Patent’s language requirements (see IP/10/870). However the EU's Council of Ministers was not able to find a unanimous agreement on this. Under a proposal from the Commission (see IP/10/1714), 25 EU countries have decided to move forward on this issue. At this stage, the two remaining countries, Italy and Spain, do not wish to participate but they have the possibility to join in the future.
Unreliable Evidence on Intellectual Property
I listened with interest to Clive Anderson's programme, Unreliable Evidence, on the subject of intellectual property: it's available on the BBC website here. My good friend Filemot has written it up on the SoloIP blog too.
It was an interesting tour d'horizon of the IP world, and did well to bring out the diverse nature of intellectual property rights instead of making the usual media mistake of treating it as a single subject. Clive Anderson's previous career at the Bar no doubt helped. I have always found him faintly irritating as a presenter, but I enjoyed this programme - and will listen to more in the series, if I remember.
His guests were an interesting bunch too, particularly Michael Fysh QC who several times sought permission to introduce something that was in danger of being overlooked - "Can I put in a word for the law of passing off?" The revelation, which I find a little hard to believe, that when he started in practice the Patent Bar comprised himself, Robin Jacob (as he then was) and Max Moseley, was worth listening for the whole 45 minutes for.
One point that merits further research - section 40 of the Patents Act was attributed (blamed on or credited to, whichever you prefer) the then Labour government. Surely it was not a government initiative at all, but the work of the late Lord Lloyd of Kilgerran? Maybe someone will read this and tell me ... Given the criticism there has been recently of that case (Jacob LJ in Shanks v Unilever, with his reference to Thomas Blanco White's comment about "sewing the fly buttons on the statute - and come to think of it wasn't Blanco White at the Bar when Michael Fysh started? Was he only listing the juniors, perhaps?) the world should be told who created it. Or is the world going to be interested?
It was an interesting tour d'horizon of the IP world, and did well to bring out the diverse nature of intellectual property rights instead of making the usual media mistake of treating it as a single subject. Clive Anderson's previous career at the Bar no doubt helped. I have always found him faintly irritating as a presenter, but I enjoyed this programme - and will listen to more in the series, if I remember.
His guests were an interesting bunch too, particularly Michael Fysh QC who several times sought permission to introduce something that was in danger of being overlooked - "Can I put in a word for the law of passing off?" The revelation, which I find a little hard to believe, that when he started in practice the Patent Bar comprised himself, Robin Jacob (as he then was) and Max Moseley, was worth listening for the whole 45 minutes for.
One point that merits further research - section 40 of the Patents Act was attributed (blamed on or credited to, whichever you prefer) the then Labour government. Surely it was not a government initiative at all, but the work of the late Lord Lloyd of Kilgerran? Maybe someone will read this and tell me ... Given the criticism there has been recently of that case (Jacob LJ in Shanks v Unilever, with his reference to Thomas Blanco White's comment about "sewing the fly buttons on the statute - and come to think of it wasn't Blanco White at the Bar when Michael Fysh started? Was he only listing the juniors, perhaps?) the world should be told who created it. Or is the world going to be interested?
Football Dataco v Sportradar: jurisdiction
Because the point in this case about jurisdiction, which lies at the heart of the questions referred to Luxembourg, is rather illuminating (and the light it sheds is on what is to me a rather dark corner of EU law), I thought it worth elaborating as a separate posting. Article 27 of the Brussels Regulation (44/2001/EC) provides that:
"1. Where proceedings involving the same cause of action and between the same parties are brought in the courts of different member states, any court other than the court first seised shall of its own motion stay its proceedings until such time as the jurisdiction of the court first seised is established.
2. Where the jurisdiction of the court first seised is established, any court other than the court first seised shall decline jurisdiction in favour of that court."
Jacob LJ referred to Article 27 of the Brussels Regulation and subsequent case law which showed that for this Article to apply three identities had to be present: the same parties, the same cause and the same object. These had wide meanings, not narrow meanings as the defendants had argued. He also held that the English court had jurisdiction under Article 5(3) of the Brussels Regulation too, being the place where the harmful event in the claim for joint-tortfeasorship occurred.
The trouble with databases
The first problem I have with databases at the moment is that there are two cases going through the courts, both of which have produced references to Luxembourg from the Court of Appeal, and in both of which the first claimant is Football Dataco (and the other claimants are mostly the same, too). Football Dataco Ltd & Ors v Yahoo! UK Ltd & Ors [2010] EWCA Civ 1380 is the first and Football Dataco v Sportradar [2011] EWCA Civ 330 the second: the expeditions to Luxembourg began respectively on 9 December last year and 29 March this year.
Of course, that's not the only trouble with databases. Other problems stem from the uncertain language used in the European Community's directive on the legal protection of the things, 96/9/EC, implemented in the UK by the Copyright and Rights in Databases Regulations 1997 (SI 1997/3032). The directive harmonises copyright protection for databases by requiring that to secure protection they must, "by reason of the selection or arrangement of their contents, constitute the author's own intellectual creation". Whether the stuff in the database is protected by copyright doesn't come into it: the directive gives that stuff no protection, though it might well have it anyway, and the directive (Article 1(2)) defines a database in terms that envisage a collection of material that has its own copyright protection as well as mere data that don't (and always remember, dear reader, that "data" is a plural, and resist the process by which usage is making it a singular noun, because where would that leave the word "datum", as in "Ordnance Survey Datum" and how would we then know whether sea levels were rising?):
So, I think it's fair to say that date, time and teams constitute independent materials when taken together. What isn't clear from the Fixtures Marketing case is whether that material constitutes data, but it's hard to see what else it might be. It's certainly not copyright works, and once the directive had specifically enumerated works and data the addition of other materials seems to serve little purpose - other than to allow the Court to leave us partly in the dark at this point.
What also isn't clear is whether the date, the time, and the teams are themselves data or materials, and if so (and surely they have to be one or the other) whether they are independent. They have autonomous informative value, surely, although taken singly they convey no information about actual football matches.
In the Yahoo reference, the Court of Appeal asks whether the intellectual effort and skill of creating the data should be excluded when applying the "own intellectual creation" test. However, that test looks at selection and arrangement rather than creation per se - so there's a subtext here, with the court asking whether the creation of data (and perhaps it should have said "independent data", although it has left it open for the Court of Justice to elaborate on the difference) might constitute selection and arrangement. How about: selecting and arranging odd little bits of data with no autonomous informative value of their own, like dates and names of teams, so as to create what the Court of Justice has identified as independent data, can satisfy the test? There's a further complication, because the legislation talks at one moment about contents and at another about independent data, but I see no insuperable problem there - the database contains independent works, data or other materials (and the adjective seems, on the basis of the Fixtures Marketing case, to qualify all three nouns). But if it contains independent data it must logically contain non-independent data too, so perhaps the question boils down to whether selecting and arranging the non-independent data so as to create independent data can satisfy the "own intellectual creation" test.
Then finally there's perhaps the most important question of all: "does 'author’s own intellectual creation' require more than significant labour and skill from the author, if so what?". In Case C-5/08, Infopaq International A/S v Danske Dagblades Forening, the Court of Justice stated that a work would only be protected by copyright if it was its author's own intellectual creation, a proposition which it took not from Directive 2001/29 but from the simple use of the word "work". That seems a shallow foundation on which to build a challenge to a fundamental principle of copyright law - but perhaps it will cut back some of the excesses of copyright protection that have grown up in the recent past. Crucial to determining what the scope of this newly-found requirement is, will be the answer to that question. If the "author's own intellectual creation" test is more rigorous than what we are used to in the UK if not elsewhere (as it surely must be) the answer to the Court of Appeal's question will show us the future of copyright law.
The Sportradar case involves another part of the directive, the one that created a sui generis right to protect databases - which in the UK we called "database right", the use of legal Latin being malum prohibitum. (But calling it a sui generis right, using a generic term for a particular example of the genre, is so extraordinarily unhelpful that one has to prefer the UK's approach.) The right covers unauthorised extraction and re-utilisation of the contents of the database, and re-utilisation means "any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies, by renting, by online or other forms of transmission" (Article 7(2)(b)). The key issue in the case is jurisdiction, as there are proceedings on foot in Germany and the UK, and where the contents of the database are being made available determines which court can proceed with the case: is it Austria or Germany, where the servers are situated, or the UK where punters log on to the Internet to interrogate the data on the servers?
"Making available to the public" is also an important concept in copyright law, so the answer to this question will be important for more than just database right - and might be as revolutionary for the copyright system as the earlier question about intellectual creations.
Of course, that's not the only trouble with databases. Other problems stem from the uncertain language used in the European Community's directive on the legal protection of the things, 96/9/EC, implemented in the UK by the Copyright and Rights in Databases Regulations 1997 (SI 1997/3032). The directive harmonises copyright protection for databases by requiring that to secure protection they must, "by reason of the selection or arrangement of their contents, constitute the author's own intellectual creation". Whether the stuff in the database is protected by copyright doesn't come into it: the directive gives that stuff no protection, though it might well have it anyway, and the directive (Article 1(2)) defines a database in terms that envisage a collection of material that has its own copyright protection as well as mere data that don't (and always remember, dear reader, that "data" is a plural, and resist the process by which usage is making it a singular noun, because where would that leave the word "datum", as in "Ordnance Survey Datum" and how would we then know whether sea levels were rising?):
... a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means.In Case C-444/02, Fixtures Marketing Ltd v Organismos prognostikon agonon podosfairou AE (OPAP), the Court of Justice held that "independent" means "separable from one another without the value of their contents being affected", or alternatively (and it is not clear where the Court got this from, and it doesn't appear in the ruling at the end of the judgment) it means that the data have "autonomous informative value". Given that all these cases involve databases of football fixtures, let's be specific: there are dates, times, and names of teams in the database, along with venues perhaps and in due course scores (though at the stage in which the gambling industry is concerned those are obviously in the future).
So, I think it's fair to say that date, time and teams constitute independent materials when taken together. What isn't clear from the Fixtures Marketing case is whether that material constitutes data, but it's hard to see what else it might be. It's certainly not copyright works, and once the directive had specifically enumerated works and data the addition of other materials seems to serve little purpose - other than to allow the Court to leave us partly in the dark at this point.
What also isn't clear is whether the date, the time, and the teams are themselves data or materials, and if so (and surely they have to be one or the other) whether they are independent. They have autonomous informative value, surely, although taken singly they convey no information about actual football matches.
In the Yahoo reference, the Court of Appeal asks whether the intellectual effort and skill of creating the data should be excluded when applying the "own intellectual creation" test. However, that test looks at selection and arrangement rather than creation per se - so there's a subtext here, with the court asking whether the creation of data (and perhaps it should have said "independent data", although it has left it open for the Court of Justice to elaborate on the difference) might constitute selection and arrangement. How about: selecting and arranging odd little bits of data with no autonomous informative value of their own, like dates and names of teams, so as to create what the Court of Justice has identified as independent data, can satisfy the test? There's a further complication, because the legislation talks at one moment about contents and at another about independent data, but I see no insuperable problem there - the database contains independent works, data or other materials (and the adjective seems, on the basis of the Fixtures Marketing case, to qualify all three nouns). But if it contains independent data it must logically contain non-independent data too, so perhaps the question boils down to whether selecting and arranging the non-independent data so as to create independent data can satisfy the "own intellectual creation" test.
Then finally there's perhaps the most important question of all: "does 'author’s own intellectual creation' require more than significant labour and skill from the author, if so what?". In Case C-5/08, Infopaq International A/S v Danske Dagblades Forening, the Court of Justice stated that a work would only be protected by copyright if it was its author's own intellectual creation, a proposition which it took not from Directive 2001/29 but from the simple use of the word "work". That seems a shallow foundation on which to build a challenge to a fundamental principle of copyright law - but perhaps it will cut back some of the excesses of copyright protection that have grown up in the recent past. Crucial to determining what the scope of this newly-found requirement is, will be the answer to that question. If the "author's own intellectual creation" test is more rigorous than what we are used to in the UK if not elsewhere (as it surely must be) the answer to the Court of Appeal's question will show us the future of copyright law.
The Sportradar case involves another part of the directive, the one that created a sui generis right to protect databases - which in the UK we called "database right", the use of legal Latin being malum prohibitum. (But calling it a sui generis right, using a generic term for a particular example of the genre, is so extraordinarily unhelpful that one has to prefer the UK's approach.) The right covers unauthorised extraction and re-utilisation of the contents of the database, and re-utilisation means "any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies, by renting, by online or other forms of transmission" (Article 7(2)(b)). The key issue in the case is jurisdiction, as there are proceedings on foot in Germany and the UK, and where the contents of the database are being made available determines which court can proceed with the case: is it Austria or Germany, where the servers are situated, or the UK where punters log on to the Internet to interrogate the data on the servers?
"Making available to the public" is also an important concept in copyright law, so the answer to this question will be important for more than just database right - and might be as revolutionary for the copyright system as the earlier question about intellectual creations.
Friday 1 April 2011
15 years of Community Trade Marks
Was April Fool's Day an appropriate day on which to start the CTM system? I was never convinced that the Community trade mark system was an unqualified Good Thing, and not only because I was making a decent living out of UK trade mark work and getting friends abroad to deal with national applications in their countries for my clients and vice versa.
OHIM, unsurprisingly, has issued a press release (or actually what now seems to be called a media release) to mark the CTM's 15th birthday. Equally unsurprisingly, it claims that the project has been a success. More applications were filed on Day 1 than they had expected for the whole of year 1. Since then the pace hardly seems to have slackened. "Since then almost 320,000 companies or individuals in 190 countries have made 940,000 CTM applications, of which more than 713,000 have been registered, making the CTM a true European success story" to release tells us.
Leave aside the fact that calling a European Community or Union project "European" smacks of imperialism and must surely be highly offensive to Norwegians, Icelanders, Swiss, Serbs, Croats, Ukranians, Russians, Byelorussians, Moldovans and all the other non-EU Europeans. On what level is it a success?
It has generated immense revenues for OHIM, of course, and if you count a public institution making lots of money a success then that's a good start. It has also given important protection to the identifiers used by a lot of businesses.
But the money in OHIM's coffers has come from somewhere, and much of it has come from businesses which have little alternative but to register a trade mark before someone else registers one that conflicts with theirs. Because in the Community system what matters isn't how businesses are recognised in the market place but who first applied to get a CTM registered, there are a lot of trade marks registered that in a better system (like the one we used to have in the UK, perhaps) wouldn't have to be registered in the first place. To businesses that have to file applications for purely defensive reasons, the CTM system is little more than a tax.
It has also enabled some trade mark owners to build sprawling empires, by registering trade marks for all manner of goods and services that they don't have any real interest in, by registering elements of their trade marks instead of only the composite sign which is what identifies them and which is what trade mark law should protect, and by grabbing exclusive rights for the whole European Union area when in fact they are only trading in a small part of it. Foreclosure and depletion are becoming (indeed, probably have become) big problems, yet the Benelux and Hungarian trade mark offices are considered "off-message" when they demand evidence of use at something approaching Community level.
And that's before we even get onto the costs imposed on businesses of opposing applications that conflict with their registrations - because notwithstanding the hefty fees charged by OHIM, they don't presume to keep the register clear of conflicts. no, that's another cost for the trade mark owner.
And ... to add insult to injury the register contains completely ridiculous trade marks of which my favourites
are 005338959 and 005238399 - for which nonsense (double nonsense - why two apparently identical trade marks, unless there's some small difference in the goods and services that I haven't spotted?) we taxpayers have swelled OHIM's coffers. What sort of trade do these represent? Why the vast range of goods and services (watercolours, for goodness sake! And artificial flowers!)? And why a CTM? Is an invasion planned? Wouldn't trade mark protection in Afghanistan, Iraq and perhaps Libya be more useful?
I don't blame the trade mark owners: if there's a possibility to register something they need to take it and if they let someone else get it their shareholders or other owners will want to know why. If the system allows them to register daft trade marks, then register them they must, until they run out of money. If the system doesn't give emanations of the state the sort of protection they get in Canada (where, I know, "official marks" are overstrong, so any other country's law that tries to go the same way needs to be carefully limited) we will have government departments, police forces, universities and others registering trade marks - because, like it or not, all these bodies are now engaged in some form of trade. No, the fault for this bloated, over-inflated trade mark system lies with the institutions and the politicians who created the laws.
OHIM, unsurprisingly, has issued a press release (or actually what now seems to be called a media release) to mark the CTM's 15th birthday. Equally unsurprisingly, it claims that the project has been a success. More applications were filed on Day 1 than they had expected for the whole of year 1. Since then the pace hardly seems to have slackened. "Since then almost 320,000 companies or individuals in 190 countries have made 940,000 CTM applications, of which more than 713,000 have been registered, making the CTM a true European success story" to release tells us.
Leave aside the fact that calling a European Community or Union project "European" smacks of imperialism and must surely be highly offensive to Norwegians, Icelanders, Swiss, Serbs, Croats, Ukranians, Russians, Byelorussians, Moldovans and all the other non-EU Europeans. On what level is it a success?
It has generated immense revenues for OHIM, of course, and if you count a public institution making lots of money a success then that's a good start. It has also given important protection to the identifiers used by a lot of businesses.
But the money in OHIM's coffers has come from somewhere, and much of it has come from businesses which have little alternative but to register a trade mark before someone else registers one that conflicts with theirs. Because in the Community system what matters isn't how businesses are recognised in the market place but who first applied to get a CTM registered, there are a lot of trade marks registered that in a better system (like the one we used to have in the UK, perhaps) wouldn't have to be registered in the first place. To businesses that have to file applications for purely defensive reasons, the CTM system is little more than a tax.
It has also enabled some trade mark owners to build sprawling empires, by registering trade marks for all manner of goods and services that they don't have any real interest in, by registering elements of their trade marks instead of only the composite sign which is what identifies them and which is what trade mark law should protect, and by grabbing exclusive rights for the whole European Union area when in fact they are only trading in a small part of it. Foreclosure and depletion are becoming (indeed, probably have become) big problems, yet the Benelux and Hungarian trade mark offices are considered "off-message" when they demand evidence of use at something approaching Community level.
And that's before we even get onto the costs imposed on businesses of opposing applications that conflict with their registrations - because notwithstanding the hefty fees charged by OHIM, they don't presume to keep the register clear of conflicts. no, that's another cost for the trade mark owner.
And ... to add insult to injury the register contains completely ridiculous trade marks of which my favourites
are 005338959 and 005238399 - for which nonsense (double nonsense - why two apparently identical trade marks, unless there's some small difference in the goods and services that I haven't spotted?) we taxpayers have swelled OHIM's coffers. What sort of trade do these represent? Why the vast range of goods and services (watercolours, for goodness sake! And artificial flowers!)? And why a CTM? Is an invasion planned? Wouldn't trade mark protection in Afghanistan, Iraq and perhaps Libya be more useful?
I don't blame the trade mark owners: if there's a possibility to register something they need to take it and if they let someone else get it their shareholders or other owners will want to know why. If the system allows them to register daft trade marks, then register them they must, until they run out of money. If the system doesn't give emanations of the state the sort of protection they get in Canada (where, I know, "official marks" are overstrong, so any other country's law that tries to go the same way needs to be carefully limited) we will have government departments, police forces, universities and others registering trade marks - because, like it or not, all these bodies are now engaged in some form of trade. No, the fault for this bloated, over-inflated trade mark system lies with the institutions and the politicians who created the laws.
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