Thursday, 20 December 2012
Wednesday, 19 December 2012
Of course, it is not the job of the Court of Justice to decide anything remotely factual, so it is limited to telling us what might be, whereas we might like to know what actually is. Is the ruling a sound communitaire one? It certainly looks like it at first sight. But I think it fails any useful test of such soundness. Bear with me ...
If the only way to protect a trade mark were to register it in the Community system, it would be absurd to say that it had to be used in (say) more than a single Member State (even dafter to insist it were used in all of them, of course). But that isn't the way things work. You can get protection in a single Member State if that's what you want, or need - or in two, or three, and so on. Of course, at about that point a Community trade mark becomes better value, but the cost is not the important thing here. To my mind, a Community trade mark, to be worthy of the name, must be used (or the proprietor must intend to use it) throughout the European Union: and if the proprietor intends to use only in a few countries, it should get national trade marks in those countries. It's not like a trade mark used only in Scotland, for example: there, the owner can't get protection in the territory of interest to it without also getting the rest of the UK (pending a referendum on Scottish independence, of course).
Any other approach simply causes dreadful, anticompetitive and chilling cluttering, and in a rational system should be prevented at all costs. It also seems to me to offend the basic principles of federalism - which may be irrelevant, given that the EU is not a federation - but this approach does not take us any closer to being one, and anyway principles of federalism can still inform aspects of the development of the Union.
It goes on to say that "[t]he plans, which will involve a step change in the way the Intellectual Property Office (IPO) delivers services, include:
- launching a superfast patent processing service to deliver patents in just 90 days and a faster trade marks examination service which will deliver a full examination report in five days, instead of 10;
- a campaign to educate smaller businesses about getting the best value from their creativity and innovation;
- action to help consumers and young people understand the importance of respect for IP and the harm counterfeiting or illegal downloading can do; and
- working with key partners, such as the City of London Police, to tackle IP crime such as counterfeiting and online piracy."
... also expand the way it operates, moving beyond just granting rights and do more to support businesses in understanding the opportunities available to them at home and abroad. This will include piloting an IP advisory service for small and medium businesses with high-growth potential. The IPO will work more closely with organisations where businesses already go for advice such as trade associations, UKTI, chambers of commerce, banks and accountants.The proposal that has attracted most attention is the one to allow super-fast patents (and, to a lesser extent, trade marks), at a price. The IPO apparently argues that patent applicants often need to secure their rights more quickly than the present system permits, and are willing and (in some cases, but probably not SMEs) able to pay for the privilege. Funny - I thought that rights were secured from the filing date ... And is it really right that we should be introducing a premium patent service when the problem of the cost of litigation is so great, and exacerbated by the unitary court proposals?
Moreover (I have started too many sentences with "and"), what is the point of making a UK national patent quick to get when so many patentees want Europeans? Not a rhetorical question - if anyone has an answer please post a comment.
* If you missed the reference, it's explained here. Nice one, Minister.
Tuesday, 18 December 2012
The case turned on the construction of an agreement. The Health Authority contended that it gave them copyright in pre-existing works created by Dr Wilkinson, and not surprisingly she contended otherwise. HHJ Birss QC did not imply an assignment of copyright, but did imply a licence for the NHS to use the pre-existing materials, even in competition with Dr Wilkinson, which makes her (partial) victory in this case distinctly pyrric - and emphasises the crucial importance of getting the agreement right in the first place.
However, it is good to see that cases like this can get an airing these days, in the Patents County Court, the jurisdiction that should show the way forward for the European Union - which is resolutely going in a different direction. Read, and enjoy, this trenchant speech by Rt Hon Lord Justice Kitchin.
My good friend Pete Fellows, of Fellows & Associates, IP recruiters extraordinaire, is looking for patent agents, and offering some nice inducements for anyone who refers a successful candidate. He writes:
We are asking for your help in recommending candidates to us and, as it’s Christmas, have decided to add an additional range of incentives including a TV, flying lessons, a spa day, a Galaxy Note 10.1, a PS3, a Wii U and Selfridges vouchers if you refer candidates who ultimately obtain any of the following positions.I reckon I don't move in the right circles, perhaps because I am not a patent agent - and at my age "1-4 years post qualified experience" sounds pretty newly-minted. But times change - and when I had 4 years PQE I thought I knew everything ...
We are currently recruiting for the Biotechnology and Chemistry departments of a major private practice firm of Patent Attorneys based in London. They have enjoyed a significant uptake in work and are therefore intending to increase the size of both departments by between 2 and 3 attorneys each. They are interested in speaking to people across a wide range of experience from part qualified to newly qualified and also more experienced attorneys with 1-4 years post qualified experience.
The firm deals with most of the largest pharmaceutical companies in the world and the vast majority of the top ten biotechnology companies. They are well known for dealing with high volumes of contentious work as well as delivering a more strategic, commercial advice led approach to their clients. They encourage all attorneys to be involved heavily in building relationships with clients and given the volume of work coming in, can offer a great deal of variety (and to some extent interest-led ‘cherry picking’, enabling you to get the portfolio you want).
Friday, 14 December 2012
Le Blog du Droit Européen des Brevets posts l'invention de la semaine each week - and this one appeals to to that side of me that is offended by the use in London parks (and I imagine elsewhere) of ridiculous petrol-powered hand-held leaf-blowers. This invention will contribute much less to climate change, which probably itself has an effect on leaves falling ...
Tuesday, 11 December 2012
My own opinion, for what little it is worth, is that the unified patent idea, which looks good on paper, stinks. It is good for Big IP and its lawyers, bad for everyone else, which is a theme you can see running through most developments in the IP worlds at this stage of their development. I recall back in the mid-1980s, when my job at the CBI had the grand title "Head of Commercial Law", no-one really seemed to want the Community Patent Convention: the EPC delivered all the benefits they could ask for, even the big multinationals, but the project clearly has momentum that, eventually, is irresistible.
But I will leave the criticism, for now, to Dr Pagenberg, and make this posting factual. Mostly, anyway. On 19 November COREPER agreed a package, comprising a draft regulation creating the unitary patent which is proceeding on the basis of Enhanced Co-operation a (Euro speak for co-operation between not all the Member States, in this case 25 because Italy and Spain are not taking part), the language regulation, and a 26 member international agreement which will set up a single specialised patent jurisdiction.
The main regulation will create a one stop shop at the European Patent Office in Munich, which will grant patents effective in the 25 member states which are taking part. After a twelve-year transition period, the sort of thing that only the European Union could dream up, there will be a 23 language regime both before and after the patent is granted. Applications may then be filed in any language but processed in English, French or German, and after grant the claims will be translated into 23 languages. Contrary to first appearances, this, it is claimed, will cut translation costs by 80 per cent.
As for the unitary patent court, all the governments at the November council meeting agreed that the seat should be Paris, with satellite courts in London and Munich. The London Court will deal with chemical and pharmaceutical patents and the Munich court with mechanical engineering. That much appears to be fairly non-contentious, the product of a typical Euro horse-trading exercise, but there is a great deal of excitement over changes made to the text in July 2012 on the initiative of the United Kingdom. Articles 6, 7 and 8 of the proposed agreement were deleted, and equivalent provisions added to the parallel international agreement (articles 14 septies to 14 nonies: I think you know you are in trouble when an instrument's numbering gets to bis, let alone septies and nonies, rather like the Z sections in some UK legislation like the Registered Designs Act). Article 6 dealt with the right to prevent third parties from making direct use of an invention, Article 7 with knowingly supplying means relating to an essential element of the invention, and Article 8 to limits on the effect of the single patent. In other words, these three articles described the effect of the granted patent, and deleting them removes from the regulation the essence of what patents are all about. Removing them meant that the Court of Justice could not review infringement matters. The powers of the Court of Justice have been removed and then given to the EU Patent Court, whose authority is therefore boosted. A new article 5bis will throw the matter back to national authorities.
Members of the European Parliament were dismayed at these deletions, saying that it went against the previous agreement that had been reached between the Council and the Parliament and moreover were illegal. Bernard Rapkay MEP, German Social and Democrat member, and the rapporteur for the Legal Affairs Committee (which inevitably in this age of text-speak seems to have become known as JURI), says the removal of these provisions has gutted the enforcement provisions of the regulation and left nothing for the Court of Justice to do (which presumably was exactly what the UK government wanted to achieve). And Mr Rapkay says that the November text appears compatible with EU law and respects the Court of Justice's power to ensure consistent application of the legislation. It also upholds the parliament's right to be involved if the patent rules change. He described the compromise as "sub-optimal", but thought that the Legal Affairs Committee would be able to accept it (see the EP press release here). Nevertheless, the compromise has been criticised by the Greens and European Free Alliance for its lack of legal certainty, with Eva Lichtenberg MEP (Austria) saying that it ''poses a risk of endless legal proceedings. It is not what we need."
Council is now expected to accept a compromise on the 10th December and Parliament may go on to vote on it in the same week. Then the regulations could be adopted on 21 December and the international agreement signed on 18th February, with the whole package becoming effective when the international agreement is ratified.
While the compromise seeks to deal with the Article 6 to 8 problem, some doubt its effectiveness. The removal of those provisions clearly did not comply with Article 118 TFEU because the deleted articles defined the very substance of the rights conferred by the EU patent. The proposal therefore did not conform to the legal basis set out in the Treaty. The EP declared the removal of those provisions unacceptable and postponed a plenary vote: but placing the same provisions in the international agreement will not work either, according to some critics including the Max Planck Institute. The method of the compromise has also come in for a good deal of criticism. But the bandwagon seems to roll on.
Friday, 7 December 2012
Although the DRS clearly anticipates that domain name disputes might go to court (and for example provides that Nominet will stay enforcement if litigation commences) that doesn't mean that the court can review the Experts' decisions. The door was deliberately left open in the DRS for a trade mark infringement or passing off action to be brought, but not for a declaration such as that sought by Mr Toth - and which could, were that view correct, have the effect of staying enforcement of the Expert's award indefinitely.
Groups representing authors, publishers and collective societies, meanwhile, are pressing the commissioners to go for stronger copyright protection. No change there, then. Evidence-based policy-making is no doubt in progress, assisted by those who have plenty of evidence to support what they want.
Preliminary findings of a survey aimed at mapping the current prevailing ideas on intellectual property confirmed recognised trends that academics and intergovernmental IP professionals look more favourably on weaker IP protection, and traditional North-South differences toward IP rights are becoming less clear cut. It also found that policymakers tend to rely heavily on statistics from industry to help them with their decisions, whether reliable or not.With evidence-based policy-making being so fashionable since the Hargreaves Review, this seems very timely: survey evidence of preconceptions and prejudices, combined with a reliance on what those with the biggest axes to grind say is best. This is how we got our present law on industrial designs - it has been going on that long.
Wednesday, 5 December 2012
Competition law is is a set of rules that seeks to give legal expression to economic concepts. It therefore takes a huge amount of time to weigh the evidence necessary to decide whether an economic wrong is being committed - or, indeed, whether one has been committed. Because the time it takes to deploy the heavy artillery of competition law is the main justification, it seems, for cutting back intellectual property protection to ensure that the competition problems don't arise in the first place. Today we have a classic example reported in European Voice here: a record financial penalty imposed on a cartel that fixed the price (and other matters too) of cathode ray tubes for televisions and computer monitors. Great news for consumers of those goods - were it not for the fact that cathode ray tubes have not been used in those devices for some years.
Wednesday, 28 November 2012
Legalis.net reports today (en français) that on 17 October 2012 the Cour de cassation annulled a decision of the cour d’appel of Aix-en-Provence, which appeared to have forgotten the rules of originality for copyright in computer programs. It has to be shown that:
les choix opérés [témoignent] d’un apport intellectuel propre et d’un effort personnalisé de celui qui avait élaboré le logiciel litigieux, seuls de nature à lui conférer le caractère d’une œuvre originale protégée.So, software is protected only if it is the author's own intellectual creation - under the software directive, if not expressly in UK copyright law. France seems to have got it more right than us.
The cour d'appel had held that the software was original because it provided a particular solution to the management of bailiffs - a significant problem, I can confirm, having once acted for a large organisation of bailiffs ... The cour de cassation referred back to its 1986 decision in Pachot, where it had held that the creator of a program had to impress his or her own personality on it: it had to be more than the mere implementation of an automatic, logical process. And that, in all areas of copyright law, must be right - although our law might not say so in so many words, and the required standard of originality might be abysmally low (and falling).
You can read the judgment here, si vous voulez.
Wednesday, 21 November 2012
Should we hold Baker & MacKenzie responsible for the split infinitive in the piece on the Commission's website?
Tuesday, 20 November 2012
The Copyright Licensing Agency has developed a mobile app for iPhone and Android (further discrimination against BlackBerry users, I fear) which enables users to scan the ISBN or ISSN code of a book and find out whether they may legally copy it under their CLA licence. More details, including where to download it, via this link.
Thursday, 15 November 2012
As Sir Robin Jacob made clear - indeed, went out of his way to emphasise - the case was never about whether Samsung copied the iPad. It was about whether Samsung had infringed a registered design, which was not the same as the iPad, and as Sir Robin had said on the original appeal, the case had to be decided as if the iPad had never existed. The UK case was not at odds with decisions of other courts around the world - in fact, it was at one with them, which is precisely the opposite of the impression given by the Apple statement. The court awarded costs to Samsung on an indemnity basis, one of the devices available to it as "a mark of the court's disapproval of a party's conduct, particularly in relation to its respect for an order of the court." It must, indeed, have come close to being contempt.
I have read some comments which accuse the Court of Appeal of Apple-bashing. Apart from demonstrating a degree of ignorance which should deter any sensible person from going public with their views, the idea that somehow an American corporation should be able to cock a snook at the legal system of a country in which it does business is disturbing - one can imagine the howls from the same commentators if a British company treated the American legal system that way (however richly it might deserve it).
It is not unknown for directors of companies to be held personally liable for copyright infringements committed by their companies. One can be jointly liable for an infringement if one has acted in concert with another infringer, or other infringers, for a common purpose, but it is rare for directors of a company to be jointly liable with their company. In a recent Scottish case, Naxos Rights International Ltd v Project Management (Borders) Ltd and Salmon  CSOH 158 the Outer House of the Court of Session ruled that the defendant and its sole director were jointly liable for infringing copyright.
Naxos is the largest independent classical music record label in the world, and certainly when it was new it was widely disliked in the industry. It developed its catalogue by using eastern European orchestras and performers which it could hire for much less than it would have to pay British ones. It also had a spot of copyright trouble in the US, in Capitol Records, Inc. v Naxos of America, Inc. 2005 NYSlipOp 02570, arising from its issuing of CDs made from old shellac discs which it turned into digital recordings and cleaned up. But that was then, and this is now: Naxos seems now to be regarded as a respectable player in the classical music industry, with a fantastic repertoire at budget prices.
The defendant company offered classical music through its website, which ominously could be found at the address www.royalty-free-classical-music.org. Naxos sued the company and Dr. Salmon, its sole director and shareholder (don't get your fish mixed up) for unpaid royalties stemming from sale and resale of two Naxos recordings, one Vivaldi's "The Four Seasons" performed by Cappella Istropolitana, which was based in Bratislava, with Takako Nishizaki (violin), conducted by Stephen Gunzenhauser - a classic Naxos mix, I think; and the other the Christmas carol "Joy to the World" performed by the Choir of Worcester Cathedral under Donald Hunt, which fits the Naxos mould less well - indeed, not at all. A total of 14 tracks were in issue, and there was no doubt that the files offered by the defenders were indeed copies of the Naxos recordings. The court found the company liable for infringement with no difficulty, but what about the director, Mr. Salmon? On the principle that there is joint liability where a party "intends and procures and shares a common design that the infringement takes place", the court ruled that he was liable in his own right. He had, along with the company, put together and operated the website through which the infringing tracks were sold, and he could not hide behind the corporate veil. Ironically, of course, Mr. Salmond's defence was based on the principle in Saloman v Saloman and Co. Ltd.  AC 22, but more important was the less ancient (English) precedent MCA Records v Charly Records Ltd  FSR 26 (CA), in which Chadwick LJ identified the four principles which deal with a director's liability, which I think bear repeating here:
49 First, a director will not be treated as liable with the company as a joint tortfeasor if he does no more than carry out his constitutional role in the governance of the company - that is to say, by voting at board meetings. That, I think, is what policy requires if a proper recognition is to be given to the identity of the company as a separate legal person. Nor, as it seems to me, will it be right to hold a controlling shareholder liable as a joint tortfeasor if he does no more than exercise his power of control through the constitutional organs of the company - for example by voting at general meetings and by exercising the powers to appoint directors. ... I would hesitate to use the word 'never' in this field; but I would accept that, if all that a director is doing is carrying out the duties entrusted to him as such by the company under its constitution, the circumstances in which it would be right to hold him liable as a joint tortfeasor with the company would be rare indeed. ...
50 Second, there is no reason why a person who happens to be a director or controlling shareholder of a company should not be liable with the company as a joint tortfeasor if he is not exercising control through the constitutional organs of the company and the circumstances are such that he would be so liable if he were not a director or controlling shareholder. In other words, if, in relation to the wrongful acts which are the subject of complaint, the liability of the individual as a joint tortfeasor with the company arises from his participation or involvement in ways which go beyond the exercise of constitutional control, then there is no reason why the individual should escape liability because he could have procured those same acts through the exercise of constitutional control. ...
51 Third, the question whether the individual is liable with the company as a joint tortfeasor - at least in the field of intellectual property - is to be determined under principles identified in CBS Songs Ltd v Amstrad Consumer Electronics Plc  AC 1013 and Unilever Plc v Gillette (UK) Limited  RPC 583. In particular, liability as a joint tortfeasor may arise where, in the words of Lord Templeman in CBS Songs v Amstrad at page 1058E to which I have already referred, the individual 'intends and procures and shares a common design that the infringement takes place'.
52 Fourth, whether or not there is a separate tort of procuring an infringement of a statutory right, actionable at common law, an individual who does 'intend, procure and share a common design' that the infringement should take place may be liable as a joint tortfeasor. As Lord Justice Mustill pointed out in Unilever v Gillette, procurement may lead to a common design and so give rise to liability under both heads.
The Register reports, under the headline UK's planned copyright landgrab will spark US litigation 'firestorm', that American photographers are not amused by the changes which will be wrought by the Business and Enterprise Reform Bill currently before Parliament. The American Society of Media Photographers, the Professional Photographers of America, the National Press Photographers Association, the Picture Archive Council of America, and the Graphic Artists Guild, argue in a letter to Business Secretary Vince Cable that the proposals to create extended collective licensing schemes breach international law, saying:
If the use of foreign works in the UK is directly or indirectly permitted by this Bill, a firestorm of international litigation will immediately ensue, and any persons, businesses or institutions making use of foreign works under this Bill would be well served to expect to be promptly sued by the copyright holders, incurring significant liability for copyright infringement.
The schemes can grant others the rights to use material without the copyright owners' consent, and without payment of a royalty, unless they manage to opt out of the scheme. Rather like the Google book scheme, then. Intended to deal with the problem of orphan works, the UK legislation seems to be being pushed through with indecent haste before the recently-adopted directive has to be implemented: the UK's own approach is very different from that in the European Union.
The Register explaines that calling things "orphan works" is often misleading because "most of them are actually recent digital images that have been stripped of their attribution, rather than old black-and-white snaps festering in library vaults". It also reports that no economic impact assessment of the potential damage has been conducted by the IPO, which it refers to as a "rogue agency" (singling out one civil servant for particular opprobrium, which I won't compound by mentioning names here).
Monday, 12 November 2012
The Court of Appeal declared that neither database copyright nor sui generis database rights subsists in the EU in fixtures lists. It ordered the claimants to post this message on their respective websites for a month clarifying the position:
Following the decision of the Court of Justice of the European Union dated 1 March 2012 in Case C-604/10 Football Dataco Ltd v Yahoo! UK Ltd & Others, it has been determined that neither copyright nor sui generis database rights subsist in the EU in fixture lists for the English and Scottish football leagues."The claimants suggested at the hearing before the Court of Appeal that they might find a way to create fixture lists in a new way in future that attracted protection, but they do not seem to have any concrete ideas at present. Given that the Court of Justice found that the activity conducted by the Claimants in creating the fixtures should be disregarded when assessing whether the fixture lists merited protection, they sound very optimistic indeed.
Presumably now there will be rather a lot of claims for repayment of licence fees - especially for the period since the Court of Justice decided that there were no rights to support the claimants' licensing activities.
Tuesday, 6 November 2012
If you wish to show a film in public, there's quite a lot to think about - not all of it copyright-related. It's certainly not just a mater of going to the DVD rental shop, or buying the disc from Amazon or somewhere - those copies will have copyright restrictions that will thwart your purpose (or land you in trouble if you breach them). Having done some delving, I thought I might usefully make the result of my research available.
To start with, you can find out what sort of licences you might need at Licences you may need to apply for - Licence Finder - GOV.UK. It covers a wide range of activities, not only showing a film. In addition to a licence covering the copyright in the film, you will also - probably - need a premises licence under the Licensing Act 2003.
The licence to show the film itself is dealt with by crossing the palms of either the Motion Picture Licensing Company Ltd or Filmbank with silver. Which of them you need to go to, depends on the film you want to show and the market sector in which you operate. Whether you are showing a single film (whether on a commercial or non-profit basis), or need an annual licence, they can usually help. Otherwise you will have to approach the distributor of the film.
Monday, 5 November 2012
I haven't blogged the so-called Angry Gnomes case on Community registered designs before, which is surprising given that it has been through so many levels of appeal. It fell within one of my blogging hiatuses, although I covered the OHIM Board of Appeal decision in a podcast. From Alicante it embarked on an expedition to Luxembourg, where the General Court had a go and now the Court of Justice has weighed in too.
The real name of the case is Joined Cases C-101/11 P and C-102/11 P Herbert Neuman, Andoni Galdeano del Sel, and Office for Harmonisation in the Internal Market (Trade Marks and Designs) v José Manuel Baena Grupo, SA and the General Court case, slightly abbreviated, is T-513/09 Baena Grupo v OHIM (that link is to the French text, which I assume is usually going to be the most useful to my readership). Mr Neuman and Mr Galdeano del Sel were interveners in the General Court, but became appellants when they took it to the Court of Justice. The subject matter comprised two representations of gnomes, in the form of simple line drawings, both seated but one looking relaxed and the other looking distinctly angry about something - perhaps about the temerity of the applicant for registration of the later design, which it believed conflicted with its own earlier trade mark rights. The RCD was first invalidated as being a misuse of the earlier rights, but the Board of Appeal overturned that decision on the basis that the idea of "use" did not extend to use of something merely similar. However, it decided that the RCD lacked individual character over the cited trade mark, so it was still invalid, and the owner of the RCD appealed to the General Court.
The General Court (in January last year) reversed the Board of Appeal, to do which it had to perform some strange gymnastics. It decided that the informed user was a young child or teenager, and that the first gnome's angry expression was what that informed user would notice. This is very different from the approach of the English courts in Procter & Gamble v Reckitt Benckiser: the General Court's "informed user" is not especially attentive or particularly interested in design issues, and the Court gave a leading role to the doctrine of "imperfect recollection", which the English court considered less important in design cases than in trade mark ones.
The Court looked at the cited (angry) gnome as a whole, thus overlooking the small matter of the later gnome's lack of a mouth. Commentators, such as Dave Musker on the Class 99 blog (who I predict will be one of probably a small number of people who recognise the title of this piece), observed that a fair comparison would have been to compare that part of the cited gnome without a mouth to the design. "In the context of an infringement, the implication of the General Court's approach is that one could take the entirety of a design, add something and thus avoid infringement", he commented. Or take something away, like the mouth. Either way, I think that this holistic approach can result in absurdities and injustices, not to mention cluttering, foreclosure and depletion, and runs counter to the general tenor of registered design protection which has always focussed on novel features of a design while UK UDR (and copyright before it) considers the design as a whole. So what has the grown-up court done now? Not a lot. It merely decided that the General Court was entitled in law to come to the conclusions it came to. Not a very exciting denouement, especially when the conclusion it had come to seems to so many people to be patently wrong.
Friday, 2 November 2012
Sir Richard Arnold asked a question which highlighted the difference between the "limitations" approach taken in the abortive US legislation and the "permission" approach taken in the EU directive. The public sector, and public interest bodies, are the beneficiaries of the Directive: but an institution such as the British Library would find it unacceptable to do something which is unlawful, protected only by a limitation on the remedies available to the copyright owner. Better that they operate within legal permissions - or, to use the trendy phrase as Maria Martin-Prat did, "safe harbours". [I think this proposition should become known as Arnold's Principle.]
Carol Lee, a director of ALCS, was aggrieved that neither Hargreaves nor Hooper had much to say about authors. Hooper claimed that the hub would be good for the little guys, but there would be disputes, a matter being addressed by the steering group (or whatever term was used for the body dealing with implementation of the idea). The quality of data on who owns what is poor, and in the digital age there can be no excuse for this.
Shira observed that there is a list in the back of the Directive that gives an indication of where to look in the course of a diligent search, adding that had the US Copyright Office been required to produce the guidance mentioned in the abortive legislation it might have included a Google search [one might even imagine that a Google search alone could one day be considered exhaustive].
In reply to a question from Jeremy Phillips about anonymous photos of cats, Graeme made the observation that silence on the part of an author does not indicate acquiescence. Maria added that were that to be the case the directive would amount to compulsory licensing. And Richard Hooper pointed out that although it is an offence to strip out metadata, thus removing ownership information, newspapers do it all the time with images.
Google made another appearance, with someone [my notes don't record who] saying that access to authoritative ownership information is fundamental to the proper operation of their takedown procedure [and I made a mental note to check whether they had taken down something I gave them notice about a couple of days ago]. Of course (as someone else whose identity Peter failed to note said), having such an authoritative source would defeat many of the excuses and justifications for copyright infringements.
In reply to another question, Richard Hooper explained that the Hub would not be a building, just a website, and it would not compete with those who connect with it.
Tom Rivers asked about extended collective licensing, observing that an essential pre-requisite for it is collective licensing. Often, he said, people do not want to license their copyright collectively, but if they could do this they would undermine the whole idea of licensing for mass digitisation. Maria pointed out that extended collective licensing (ECL, a new abbreviation that is becoming common currency) allows an opt-out for copyright owners, which is what distinguishes it from compulsory licensing.
A propos something which I didn't note, two final comments from members of the panel which deserve to be recorded even if I have lost the context ... Graeme Dinwoodie commenting on the fact that there is a great deal of paternalism in copyright laws (citing the US provisions on reversions), and Richard Hooper saying that complexity provides excellent protection for the "big guys", and drawing parallels with the way the complexity of the financial markets allowed the global financial crisis (or GFC, an shorthand expression which seems to be current in Australia only but which ought to be more widespread) to catch everyone by surprise including those who were supposed to understand what they were doing (he mentioned, though he did not pose, the twin questions "have you ever met an intelligent banker?", and "have you ever met a banker who did not think he was intelligent?")
Given that note-taking is an imprecise science, and my memory an increasingly unreliable piece of equipment, readers are invited to comment on, add to and correct this posting. Please.
The event was opened by the Chairman, Professor Sir Robin Jacob who compared orphan works' authors to property owners who do not maintain their properties and asked whether they should have the right to their work if they 'cannot be bothered to be found'. He drew a comparison with the landowners' neglect leading to the creation of rights of way or squatters' rights.
Position in EuropeThe seminar progressed to a brief summary of the current position in Europe by Maria Martin-Prat, the Head of Unit 'Copyright' in the IP Directorate of the European Commission. Maria introduced the new Directive 2012/28/EU, adopted on 25th October 2012, on 'certain permitted uses of orphan works'. She described the digital technology as the start point of the development of the Directive, as trying to locate the author who cannot be found seemed an increasing problem, which the Directive is aiming to solve. In Maria's opinion the individual works are not the problem; it is the mass digitisation and mass use of collective works which requires proper licensing which needs facilitating. The Directive is the first piece of copyright legislation with a cross-border effect and the Member States were given 2 years to implement it.
Position in the USAThe situation of orphan works in the US was presented by Shira Perlmutter, the Chief Policy Officer and Director of International Affairs for the US Patent and Trade Mark Office. She described it as 'work in progress', whereby the USA are starting over again, after the first proposal did not pass 4 years ago. The draft law applied to all types of orphan works and focused on the limitation of remedies. It required that a 'diligent effort reasonable in the circumstances' is used: the Copyright Office would have been required to publish guidance on what would constitute diligence. If the owner was found (or "showed up", as she put it), they should be paid reasonable compensation.
The Hooper ReportThe next panellist to speak was Richard Hooper CBE, the author of the Hooper Report, who started off by saying that his research concentrated on copyright licensing and processes and organisation of copyrights rather than copyright changes and commercial rights or rights' owners. For the first 4 months of his research Richard looked at streamlining of copyrights' licensing and establishing key existing issues experienced by people working in the industry. The second 4 months of work was spent on trying to find solutions for the identified issues. He chose to focus on the proposals for a 'copyright hub', which has 5 main purposes:
1. It will help people to find their way through the complexity of copyright
2. It will educate people about copyright
3. It will be a place where people are able to register their rights
4. It will be a place for automated copyright licensing system for a high volume, low transaction cost copyright licensing
5. It will act as an authority where prospective users of orphan works can go to demonstrate they have done proper, reasonable and due diligence searches for the owners of those works before they digitise them
The view from the IPO
He then spoke about the Enterprise and Regulatory Reform Bill, which contains scheme-making powers to deal with orphan works (powers which might now come to be exercised in the course of implementing the directive) and extended collective licensing, as well as a few other copyright matters.
Sir Robin took the opportunity afforded by the need to introduce the next speaker to say that as a result of the directive there would be a registry of orphan works in Alicante, part of the Observatory, adding that he had wondered what there was to observe in Alicante.
The Academic viewGraeme Dinwoodie from Oxford University spoke of the international climate which frames the choices to be made – in particular, the requirements in Berne and Trips that there be no formalities. He reinforced the point that the new Directive reflects the 'country of origin' rule in its art. 4 on diligent search, and complies with the formalities rule from the Berne Convention. This (he noted) was often considered to be fundamental to Berne, but had only been included in the Berlin Act of 1908. Prior to that there was a “one formality” (home country) rule, and the Directive reverts to that approach.
Doing away with the need for formalities, he said, tends to damage the "little guy", because the "big guys" can set up systems to deal with the lack of information about copyright ownership. in the US system, if the "little guy" messed up he would lose copyright altogether.
Graeme pointed to the weakness of the current Directive: the fact that there is still right for compensation even for past uses which might not make it beneficial to go through the diligent searches. On the other hand, he commented on the innovative approach it takes to mutual recognition of orphan status which will be helpful to users.
Questions and answersThe panellists' presentation was followed by a Q and A session and discussion on the links between orphan works and Hooper's 'copyright hub', the practicality of implementing the Directive and the extended collective licences scheme. [I am putting this in a separate posting, as it is based on my notes of the discussion and therefore should be separate from Marta's report - Peter.]
Tuesday, 30 October 2012
Thursday, 25 October 2012
Judges have taken to disposing of such claims summarily, assuming responsibility for both the extrinsic and intrinsic analyses of the alleged infringement and therefore denying plaintiffs (as they are still called in those parts of the world where Lord Wolfe's dumbing-down exercise could not reach) their constitutional right to a jury trial (denied to copyright owners here rather earlier, I think). Worth a read: like so much American legal writing, the prose is clear and attractive, and the story is potentially relevant in our copyright system.
Wednesday, 24 October 2012
The book is published by Oxford University Press with the following particulars: OUP USA, 676 pages, 235x156mm, ISBN13 978-0-19-991741-9 / ISBN10: 0-19-991741-8; Paperback; 31 May 2012.
Existing reviews and references:
To the best of this reviewer’s knowledge, save for the publishers’ blurb and the promotional message on the website of the authors’ firm, Adin-Liss Law Offices, commentaries hitherto made on the book have been located in the following sources:
- On the back cover; by Dr. Amir H. Khoury, Senior Lecturer, Faculty of Law, Tel Aviv University and Professor Jeremy Phillips, Editor, Journal of Intellectual Property Law & Practice.
- On The IPKat weblog by Jeremy Phillips.
- On The IP Factor weblog by Dr. Michael Factor, posted (in chronological order) on 29 April 2012, on 15 July 2012 (also quoted in its entirety on 16 July 2012), and on 22 July 2012).
Scope and breadth:
A page count of each one of the 11 chapters attests to the authors’ contention that “[t]his book provides a comprehensive view of the laws and case law in the entire range of intellectual property laws in Israel” (p. xxiii, Preface).
Perhaps, the most striking first impression one gets from a cursory flip through the book before undertaking a detailed reading of this hefty volume is the scope and comprehensive nature of the contents. Indeed, as noted by all three eminent reviewers, the book’s “length reflects its comprehensiveness” (Michael Factor), while “the breadth of coverage and depth of analysis” (Amir Khoury) gives one the impression that the authors “have written the definitive text” (Jeremy Phillips).
The book as the authors put it “includes very detailed chapters on the three main branches of intellectual property laws: patent, trademark, and copyright laws” (p. xxiii, Preface). Perhaps at the expense of an imbalance between chapter lengths, the above three areas are covered in minutiae. While chapter 2 on “Patents”, chapter 4 on “Trademarks and Passing Off”, and chapter 5 on “Copyright” span 134, 164 and 140 pages, respectively, the length of the remaining substantive chapters, range between a minimum of 3 pages (“Introduction to the Israeli Legal System”, chapter 1) and 58 pages (“Major Issues in the Information Technology Context”, chapter 9). In view of its brevity, it might have been an idea not to have numbered the 3-page synopsis on the Israeli legal system, as chapter 1, but perhaps simply to have presented it as a condensed overview on a par with the Preface.
Chapter headings and subject-matters
The authors have achieved a remarkable feat by managing to cover in a single volume the entire spectrum of IP fields as well as complementary rights and obligations under chapter 6 (“Unjust Enrichment”) and chapter 7 (“Trade secrets”). Moreover, having incorporated two sector-specific chapters on IT and the Pharmaceutical industries, in both of which Israel boasts an impressive performance, the authors provide a rare insight into the dynamics of IP as they feature within the context of these sectors in the country. One is almost left wishing that there could have been room for the authors to cover other specialist industries, such as biotechnology and nanotechnology in which Israel equally excels or perhaps technology transfer and commercialisation of R&D output within the framework of industry and academia collaborations, where Israeli success stories enjoy worldwide acclaim.
“Related Rights”, however, as a choice of title for chapter 8, where seemingly incongruous areas including “Appellation of Origin” and “Geographical Indications” (sections 8.1 and 8.2, respectively), “Plant Breeders’ Rights (section 8.3), “Right of Publicity” (section 8.4) and “Unfair Intervention” (section 8.5) have been examined, could possibly occasion slight confusion among those readers who have come to associate the use of the expression ‘related rights’ as a term of art, exclusively in connection with copyright such as “neighbouring rights”.
The first (“Introduction to the Israeli Legal System”, ch. 1) and the final chapters (“Enforcement of IP Rights”, ch. 11) of the book should be treated, in this reviewer’s opinion, as being of paramount significance for non-Israeli readers who may not be familiar with the Israeli legal system, which is a reflection of “the profusion of legal and business cultures” as aptly expressed by Jeremy Phillips (see back cover) and upon which the Israeli intellectual property jurisprudence is built. Therefore, while an excellent overview of the Israeli judicial system is provided under section 11.1.1, one wonders whether that information might have been a welcome addition to the introductory chapter 1 on the Israeli legal system. For readers who set out to read the book from cover to cover as in the case of this reviewer or indeed for those who intend to benefit from the text as a reference source and consult the desired sections as and when needed, it might be advisable to read chapter 11 first, or at the very least section 11.1.1, before delving into other chapters which, as the authors put it “... deal with substantive issues in IP law” (p. 600, para. 1).
Since a list of abbreviations which would have been a helpful addition at the beginning of the book, is unfortunately missing, it is suggested that either chapter 1 or 11 might have been an appropriate place where some explanation about the case citation style adopted in the text by the authors could have been given (see further below under ‘Case law and legal citations’).
Tamir goes on to explain the eclectic nature of the Israeli legal system as follows:
Ruth Levush (Senior Legal Specialist at the Eastern Law Division, Directorate of Legal Research, Law Library of Congress, Washington DC, USA) provides an equally colourful and comprehensive account of Israel’s rich legal history. (see Levush, “A Guide to the Israeli Legal System”, LLRX.com, http://www.llrx.com/features/israel.htm; see also Legal Research Guide: Israel, Library of Congress, http://www.loc.gov/law/help/israel.php, which is by and large an abbreviated version of the text at LLRX.com.
Despite the detailed scope of the information provided, the authors manage to preserve a practical slant which is conveyed in a vivacious tone that is reinforced by terse affirmative phrases in the form of single sentence paragraphs, e.g. “We shall discuss both aspects” (p. 301, above section 188.8.131.52), “We shall discuss each of these remedies” (p. 310, just above section 4.12.2) or brief rhetorical questions which read like FAQs that are interspersed throughout the text, e.g. “What happens if an applicant seeks to amend the specification in the course of opposition proceedings?” (p. 62, para. 2), “What must the license include?” (p. 244, section 184.108.40.206). These short phrases and questions help maintain the reader focused and ensure the book’s standing as a handy reference work for consultation. Perhaps, therefore, for purposes of providing citations from the work, a preference for numbered paragraphs over cumbersome subsection numbers (such as “220.127.116.11.2.6” at p.263) might have been more appropriate, in view of the fact that the book is likely to be a contender for being considered as an indispensable source of reference for practitioners and legal advisors on intellectual property law in Israel.
Without going as far as Michael Factor according to whom “[u]nfortunately, the readability of the book suffers from the lack of professional editing” (http://blog.ipfactor.co.il/book-reviews/) it is impossible not to notice the presence of typographic errors and inconsistencies that appear to have made their way through to the published text.
Notwithstanding a predilection for American English spelling throughout the book, readers are occasionally likely to stumble upon a word that is spelt variably in British English (e.g. ‘defence’, p. 258, fn. 265 as opposed to ‘defense’, p. 284, section 4.9.5). A selection of other inconsistencies and typos which seem to have slipped the editors’ attention is listed below:
- “L’oreal” spelt with lowercase ‘O’ at p. 557, as opposed to the correct form in capital ‘O’ as provided in the corresponding footnote 92. With respect to this case, it has also to be noted that (i) the order of the claimant/defendant has been reversed in the main text; and (ii) the case has been omitted in the Table of Cases.
- Inconsistent spacing between hyphens, e.g. “Abstraction- Filtration-Comparison” at p. 373, last line;
- Inconsistent use of certain legal phrases, e.g. “conditioned imprisonment” at p. 629, fn. 26, as opposed, perhaps, to “conditional (?) imprisonment”; “an acknowledge country” at p. 587, fn. 21, as opposed to “an acknowledged (?) country” as referred to in the main text at subsection (2);
- Inconsistent use of capitals/lowercase letters for ‘trademark owner’, e.g. “Trademark Owner”, at p. 233, para. 2, where both initials are in capitals; “Trademark owner” at p. 237, section 18.104.22.168, para. 2, where the ‘T’ is in capital and ‘o’ lowercase letters; “trademark owner” at p. 239, penultimate paragraph, where both initials are in lowercase letters;
- Inconsistent use of capitals/lowercase letters for ‘registered user’, e.g. “registered user” at p. 233, para.2; where both initials are in lowercase letters; “Registered User” at p. 245, first paragraph, third line, where both initials are capitalised;
- Inconsistency in the use of bold fonts: It’s not clear as to why registration numbers cited at fn. 170 on p. 226 are in bold unlike others, e.g. at fn. 171.
- Misspelling of the eponymous Anton Piller case: This would have been less conspicuous had it not been in a legal work, e.g. spelt as “Pillar” in the Index at p. 663 and in the introductory chapter 1 at p. 3, para. 2.
An excellent feature of the book is the abundance of references to the Israeli case law together with relevant quotes from judgments as well as accompanying comments by the authors. Several rulings that date from 2011 provide the reader with the reassurance that access to the current legal dynamics and trends in Israeli IP law is available at hand. Considering the paucity of reported Israeli decisions in English, the effort by the authors to compile, summarise, and quote judiciously from these cases is a commendable service to English-speaking readers.
As practising lawyers who have acted on behalf of their clients in a number of the cases cited, the authors provide readers with access to several unreported and unpublished cases (e.g. Pharma Israel v. The Ministry of Health, p. 589, fn. 24), which serve as a gateway to a legal treasure grove for scholars and practitioners in other jurisdictions. That said, the use of acronyms, in the absence of a table of abbreviations at the beginning of the book containing information about the citation method adopted, might lead the reader to despair unless as fortunate as this reviewer to be able to resort to the counsel of Israeli legal experts. While it may not have been particularly necessary to indicate in brackets that “R&D” would stand for “Research and Development”, e.g. p. 9, para. 3 and p. 577, para. 2 or “POA” for “Power of Attorney” at p. 240, where in the latter case it may have been more appropriate to introduce the abbreviation at p. 200, para. 3 when first mentioned, the same can hardly be said of cryptic acronyms, highlighted in bold by the reviewer, that precede case names such as in those listed below, as quoted in the book:
C.A. 8802/06 Unipharm Ltd. v. SmithKline Beecham PLC et al (p.26, fn. 57):
C.C. 115/98 Microsoft Corp. V. Data Pool Ltd. et al. (p. 630, fn. 28):
C.F. (Haifa) 12313/04 Tzur Aviram et al. v. Komda Ltd. et al (p.368, fn. 165):
M.A. (Tel Aviv) 1281/06 Amgen Fremount Inc. v. The Patent Registrar (p. 50, fn. 115)
O.M. 506/06 Matim Li Fashion Chain for Large Sizes Ltd. et al. v. Crazy Line Ltd. et al. -- as spelt in the Table of Cases at p. 644, which, probably is better than the citation at p. 546, fn. 69 where inconsistency in the use of capital letters prevails:
By way of illustration, in “C.C. 115/98 Microsoft Corp. V. Data Pool Ltd. et al.” (p. 630, fn. 28)”, C.C. could be taken to stand for either a ‘Civil Case’ or a ‘Criminal Case’. To make the distinction, in the Guide to Foreign and International Legal Citations of the Journal of International Law and Politics by New York University School of Law, authors are instructed to adopt “C.C.” for civil cases and “Cr.C.” in respect of criminal cases (section 3.1, p. 94, (http://www.law.nyu.edu/ecm_dlv1/groups/public/@nyu_law_website__library/documents/documents/ecm_dlv_006388.pdf). On the other hand, in its “Instructions for Contributors” for publications in the Israel Law Review by Cambridge Journals, civil cases are required to be abbreviated as “CC” and criminal cases to be cited as “CrimC” (p. 11, http://assets.cambridge.org/ISR/ISR_ifc.pdf). This particular style might have been a more befitting choice for the publishers of this book in view of the fact that the “Israel Law Review – albeit published by Cambridge University Press -- uses the style of citation formulated by the Oxford University Standard for Citation of Legal Authorities (OSCOLA)” (p. 3, B. 2. (a), ibid).
In view of the fact that the book is likely to attract the attention and interest of an international audience, it is, therefore, disappointing, that the publishers have not deemed it necessary to provide a comprehensive list of abbreviations at the beginning of the book.
Nevo, the legal publishers:
It may, perhaps, have been helpful had some information been provided, at some point, on the local legal publishers for the benefit of readers who may not be familiar with Israeli legal resources, as Ruth Levush, or Dr. Michal Tamir, have done in their guides to the Israeli legal system (see above).
The date as of which Nevo -- an Israeli legal publishing house to which laconic references are made in brackets following a number of cases cited in the text (see e.g. C.F. 827/07 Erez Ben Simon v. Monitz Iro et al. (published in Nevo))” -- assumed the publication of the judgments of the Israeli Supreme Court, which were previously published by the Israeli Bar, however, differs by a year in Levush and Tamir’s respective guides. Tamir maintains that Nevo began to report cases since 1997 (see section 8.8, ibid) whereas Levush pins the date at 1999 (see LLRX.com, ibid and Library of Congress, ibid, under “Official Case Reports (in Hebrew)”).
This reviewer is inclined to place his bet on the advice kindly offered by his friend Li Maor, according to whom, it was, actually, in the mid 1998 that Nevo Press began to report cases following a successful bid for tender and was duly licensed as the official publishers of the judgments of the Supreme Court.
Readers may find it disconcerting that dates relating to cases frequently appear to be missing. Unfortunately, phrases such as “As recently held by the Patent Registrar ...” (see p. 147, section 3.3, para. 3 and corresponding footnote 23) or “In the recently published guidelines for examination ...” (see p. 67, last para, and the corresponding footnote 152) without further precision as to the exact dates either in the text or in the corresponding footnotes, are not particularly helpful. For instance, in connection with the landmark JAFFA case which is covered under chapter 8 at p. 505, no dates are to be found either in the text or at footnote 4 where the case is cited in full or, for that matter, in the Table of Cases at p. 638. In a lucid and detailed article on the same decision by Neil Wilkof and Shir Uzrad in the Journal of Intellectual Property Law & Practice (“In the matter of the appellation of origin for ‘JAFFA’”, 2008, Vol.3, No. 1, doi:10.1093/jiplp/jpm222), the authors, by contrast, introduce their article with a citation that leaves not a shred of doubt as to the full particulars of the case not least the date: “The Citrus Division of the Plant Production and Marketing Board v Israel Commissioner of Patents and Trade Marks  1011/05, Appeal Board (Jerusalem), 12 July 2007” (at p.17).
As might be expected from a text that is written by two litigation lawyers, the practical slant of the content is a pervasive feature of this book. Liss and Adin would, therefore, appear to have achieved what they set out to accomplish as stated in the Preface at pp. xxiii-xxiv:
The use of flow charts as in the case of the “standard” or “fast procedure” on pp. 617-18 and p. 620, respectively, within the context of procedural steps as prescribed by the Customs Guidelines, as well as illustrated comparisons of trade marks on pp. 177-79, 251-56, 264, and 267-68 are particularly helpful and informative.
Frequent commentaries and suggestions throughout the text, such as to the manner in which damages are assessed (at p. 311) may be welcome as useful complimentary legal advice to the foreign businessperson or legal advisor, as well as providing the non-practitioner with a deeper understanding of the underlying issues and the local jurisdiction. The authors do not hesitate to express their forthright criticisms of decisions with which they disagree (see e.g. p. 258, second paragraph or at p. 304, first line). In this respect, albeit written in English, one may surmise that the authors intend that the Israeli legislature (e.g. at p. 243, section 22.214.171.124, para. 3), the judiciary and the Israeli Patent Office be among the target audience for the book.
Sections of various IP legislation and passages from judgments, as quoted by the authors in English, in parts of the text appear to have been selected judiciously and in good measure. Though, unfortunately not made clear as to whether the English translations are those of the authors or the officially authorised version, they do help the reader to form an opinion which is not strictly influenced by the observations and objections that reflect the authors’ own views and deductions.
In support of the virtues of comparative studies, this reviewer should like to quote from Henry H. Ehrmann:
The authors’ deliberate choice to adopt a comparative approach with references to the US, UK and the EU appears sagacious, as it thus has not only the potential to appeal to a wider audience but also to render Israeli IP jurisprudence more accessible to the foreign reader who may, by drawing comparisons, have a yardstick against which to judge and appreciate the nuances of another legal system.
At times, Liss and Adin simply consider the differences between two of the jurisdictions mentioned above such as the EU and Israel (e.g. at p. 169, final para. concerning the registration of single letter marks) or the UK and Israel (at p. 230, comparison between the position in the UK and Israel in the context of the use of a trade mark) and in other instances between all three, e.g. at chapter 9, on the subject of “software, e-commerce and business patents”, where the authors successively trace the developments in the US (at pp. 522-24, para. 126.96.36.199.1), the EU (at pp. 524-27, para. 188.8.131.52.2) and Israel (at pp. 527-31, 184.108.40.206.3).
Currency and reliability
Another of the book’s forte is the abundance of case law that helps put the law into context and observe how it is applied by the Israeli judiciary. Several cases that are cited are as recent as 2011, such as the decision by the Israeli Supreme Court sitting as the Court of Appeal in the case of C.A. 3960/106 The Customs Authorities v. Christian Dior Couture (2011) (see p. 618).
The information is current and up-to-date. Petach Tikva, which became the sixth District Court of Israel in 2007 (see http://www.israelnationalnews.com/News/News.aspx/123435 as cited on http://en.wikipedia.org/wiki/Israeli_judicial_system) on top of the existing five, comprising Be’er Sheva, Haifa, Nazareth, Tel Aviv, and Jerusalem, is mentioned in chapter 9 at p. 602. It has to be noted that in this instance, Liss and Adin are one step ahead of the official website of the Israeli Foreign Ministry where the number of district courts still stands at five (see “Judiciary: The Court System”, under “District Courts” at http://www.mfa.gov.il/MFA/Government/Branches%20of%20Government/Judicial/The%20Judiciary-%20The%20Court%20System, as at 30 September 2012).
Despite some minor typographic and editorial lapses, the reviewer is assured that the book is an extremely valuable guide to Israeli intellectual property law and practice and, as a comprehensive textbook, is likely to appeal to the international academia, while at the same time serving as an authoritative reference source for the business world and the legal profession.