Thursday, 15 March 2018

Abbreviations, acronyms, and their plurals

Creating a slide show this morning, a task that demands brevity and therefore frequent recourse to abbreviations, I wrote "TMs" for "trade marks". Autocorrect didn't like it, but that was no surprise and I overrode it. Then I wondered whether the correct way to form the plural of an abbreviation wasn't just to add an "s" - should I be adding another "M" (or "m", perhaps)? After all the plural of "p" for page is "pp", and of "op" for work (opus) is "opp". (The use of full points turns out to be another contentious matter.)

In fact The Economist Pocket Style Book (Economist journalists must have bigger-than-average pockets) tells me that the right way to set out an abbreviation is in small capitals, and to use a lower case "s" for plurals. I suppose that in the name of a case (e.g. "Re Le Mans TM") the phrase would have capital initials by virtue of forming part of the title - "title case" is in fact the correct expression for that, I think. And actually the words of the trade mark should be in upper case: Re LE MANS Trade Mark (BL O-012-05, a decision of Richard Arnold QC as he then was). But of course the heading of the decision is in block capitals, although in the body of the decision it is in upper case. None of the three IP textbooks at my right hand have it in the table of cases, so no guidance from there. I could have scanned them for another such decision but life is too short, especially when I can reach up to the top shelf and take down a dusty copy of the 12th edition of Kerly - in which I look up the Perfection case (Crosfield [1910] 1 Ch. 118; 26 R.P.C. 561) and find the trade mark rendered just like that - a capital initial only.

Neither Fowler's Modern English Usage nor The Oxford Style Manual offer any assistance in their entries on abbreviations. The King's English doesn't even have an entry in its index for the topic. The Oxford Dictionary of English Grammar is however more helpful: it tells me that the initial letters of the (main) words of a phrase should appear in upper case, so BBC and OTT get the same treatment, which is not what The Economist prescribed. It goes on to say that "[t]here are a few special written conventions for plurals", of which it gives three: "pp", which is from where I embarked on this little voyage through English grammar, MSS which I was also thinking about, and "ff" for "following pages". Elsewhere, I read that "p" stands not for "page" but for its Latin equivalent, "pagina", and "pp" ("paginae") is an example of a special rule for Latin words or expressions in English usage. ("Op" and "opp" presumably follow the same rule.)

Finally, since it seems that uppercase or small capitals is correct, and an added "s" rather than a doubled last letter is right, should there be an apostrophe? I can see a reason why there should be a difference in the treatment of contractions (e.g. Dr) and true abbreviations, where there is something missing between the initial letter in the abbreviation and the plural "s". But The Oxford Style Guide says just add the "s", so TMs would be correct, and I could have saved myself half an hour or so on this interesting diversion. Maybe some helpful reader will be able to guide me further, but unless I hear otherwise I'll go with TMs.

Saturday, 3 March 2018

Interpreting patent claims: Actavis v Eli Lilley

It's now 13 years since Lord Hoffmann told us definitively how to interpret patents claims, in his opinion in Kirin Amgen v Hoechst Marion Roussel [2005] 1 All ER 667. The courts had spent a lot of time pondering how to do what should have been a pretty simple task: judges have always been in the business of finding the meaning of legal documents, and patent claims should never have been much different. Or should they? For many years the courts have eschewed (nice word) a literal interpretation and chosen instead to look at the claims as practical documents written for practical readers.
I have never bought into that view (but who cares what I think?). Patent claims are usually written by highly skilled and trained patent attorneys for other patent attorneys, members of the patent bar and ultimately specialist judges to read. Why should it be necessary to adopt a different rule about interpretation from that which governs the interpretation of, say, conveyances?
I suppose that, centuries ago, when patents for inventions first came before the courts, the judges were able to say "we know how to interpret documents like this: we look at the wording." Only later did the fiction arise that the claims were anything other than highly specialised documents written by and for experts. The idea that patent claims are addressed to some hypothetical individual skilled in the art strikes me as nonsense: what ordinary person, however skilled they might be in the art, ever reads patent claims?
The courts pursued this strange idea through a series of cases, tying themselves in more and more knots. Catnic, for one, should probably have been a professional negligence case - which is not to say that the patent agent who write the claims was necessarily negligent, but it would have been helpful if the courts had considered the point. Then in the Improver case Hoffmann J formulated a series of questions for the judge to ask, which turned into the Protocol Questions when the Protocol on Interpretation of Article 69 (of the EPC), originally dating from 1973, became recognised as the governing document, and in due course Lord Hoffmann put his own Improver Questions out of their misery.
In Activis UK Ltd v Eli Lilley & Co [2017] UKSC 48 (12 July 2017) the claim in issue was a Swiss-style claim for pemetrexed disodium, with vitamin B12, used in the manufacture of a medicament for treating cancer. Actavis sought a declaration that it would not infringe by marketing drugs containing other pemetrexed compounds (for example, with potassium instead of sodium). Arnold J at first instance gave the declaration, and the Court of Appeal upheld him, both following (as they pretty well had to) Kirin Amgen. The Supreme Court, however, allowed Actavis's appeal.
Lord Neuberger (who, remember, is a Oxford chemistry graduate) held that when a court has to consider a possible infringement by a variant, there are two questions that it must ask:

  • First, does the variant infringe the claim at issue as a matter of interpretation? If it does, that's all the court has to do.
  • If not, ask whether the variant infringes because it varies only in a way, or in ways, which are not material. Put another way, is the variant equivalent to the claimed invention?

Lord Neuberger said that the Improver or Protocol Questions remain useful in finding an answer to the second question, but needed to be changed slightly. They now require the judge to consider

  1. whether the variant has a material effect on the way the invention works;
  2. whether the notional addressee, on learning what the variant does, would consider it obvious that it would achieve substantially the same result in substantially the same way as the invention; and
  3. whether the notional addressee would have uderstood from the language of the claim that the patentee intended strict compliance with the primary meaning to be an essential requirement of the invention.

The courts had previously set their faces against introducing a doctrine of equivalents into UK patent law, but the amendment to the Protocol which introduced Art.2 made this untenable. Potassium was, in effect, equivalent to sodium for the purposes of the patent and Actavis would infringe if they marketed the products about which they asked in the first place.
The further the courts move away from a literal interpretation of patent claims, the less certainty there is for those, like Actavis, who want to operate in the field but also don't want to infringe. One argument - perhaps the argument - against a literal interpretation is that it prevents a patent claim being read in the light of technological developments. But is it right that a patentee who has chosen to specify a sodium compound rather than using broader language (if, of course, they could get away with it) should receive such an extensive, and flexible, monopoly? Perhaps the correct approach would be to regard the discovery that a potassium or some other compound would do the job as leading to an invention in its own right.

Thursday, 1 March 2018

Steve Jobs: Trade marks and personal names

The news that two Italian brothers have registered what turn out to be two EU trade marks, one for the name Steve Jobs and the other for a logo comprising the name with the letter J, missing a bite-shaped piece like another well-known logo, illustrates how difficult it is to accommodate celebrities' personal names within the trade mark system. There was a time, long before EU trade marks arrived on the scene, when the Trade Marks Registry in the UK would not have allowed an application for registration of someone else's personal name as a trade mark to proceed without the consent of the owner of the name.

You might think that is how a trade mark system should work, but these Steve Jobs trade marks show the limitations of the law. First, the story tells us that the brothers were surprised that Apple had not registered Steve Jobs's name as a trade mark. But why should Apple have done so? Actually for the very bad reason that if you don't register a trade mark you run the risk of someone else grabbing it - a possibility since the switch from a use-based trade mark registration system, where the register records what distinctive signs businesses are using, to a registration-based system in which the property right comes into existence through registration. When we made that change in the UK in 1994, it put trade mark law on a very different footing - and incidentally condemned small (and not small) businesses to paying lots of fees and lawyers' bills for trade marks that up until then they never really needed to register.

Although there are many personal names of celebrities on the register, there are also examples of celebrities failing to secure registration. There are significant distinctiveness problems, as the Elvis Presley estate and later Sir Alex Ferguson, the Princess of Wales's executors and Corsair Toileteries Ltd who tried to register Jane Austen as a trade mark, found. Celebrities' names are not necessarily perceived as indications of commercial origin: in the case of deceased celebrities, they might be seen as some sort of commemoration.

Apple apparently tried to prevent the trade marks being registered, but without a trade mark of their own they must have been relying on common law rights - and even if Steve Jobs had used his name in trade and thus accumulated goodwill, which doesn't seem to be the way things happened because he adopted the Apple trade mark for his business, that would have been Mr Jobs's goodwill not Apple's (unless it had been assigned to the company). Would his estate have been better-placed to sue? Yes, probably, but still only if it owned some goodwill. Reputation - of which Mr Jobs had plenty - only becomes goodwill when it is used in trade.

A better argument might, perhaps, have been that the trade marks were not applied for in good faith - and that is an argument that I suppose could yet be deployed to have them declared invalid. But that is a very difficult route to take, the facts being hard to prove and the standard probably quite low. So a situation that most ordinary people (which in this context means "not trade mark lawyers") would imagine the law would not allow to arise, might be something that the perceived rightful owner can do nothing about.

Thursday, 22 February 2018

Where there's a hit there's a writ

The old saying doesn't work so well now we don't have writs any more, but anyway the litigation reported by the BBC today is taking place under US law. That also means that considering how it might pan out under English law is pretty speculative, but it does serve to illustrate some important points of copyright law.

The story is about the family of a playwright (a Pullitzer Prize winner, Paul Zindel) suing several parties concerned with the film The Shape of Water. The fact that it is tipped to win an Oscar or two goes some way to explaining why it has generated litigation - the simple fact is that if it wasn't a hit, it would not be worth the price of a writ.

The plaintiffs (they still have them in the USA) argue that the film is "in many ways identical" to Mr Zindel's play Let me hear you whisper. The defendants say they never heard of that play, although the article says that there was a TV production of it at about the time the idea of the film was forming in its writer's mind. The writer might have been exposed to it, and it's possible that subconscious copying took place. It's also possible that nothing of the sort happened, and that the "at least 61" ways in which the films are identical are down to the fact that if you tell a story about an aquatic creature kept in a laboratory and its relationship with a cleaner or janitor those similarities are going to happen. Like Hoehling v Universal Studios  618 F.2d 972 (2d Cir. 1980) which turned partly on the point that if you're going to make a film set in Nazi Germany you are bound to have scenes in beer halls and people giving straight-arm salutes.

US copyright law works differently from the way our copyright law works. Because it expressly excludes ideas from protection, US law requires the judge to go through what has become formalised as a three-step process of abstraction, filtration and comparison - to reduce the work to a copyright-protected "golden nugget" before putting it beside the alleged copy to compare the two. The equivelant in our law is the rule that copyright is infringed if the defendant has taken the whole or a substantial part of the work - it all comes down to substantiality at this stage. In other words (and if an American friend should happen to read this I stand to be corrected), US copyright law protects elements of a work which qualify for protection (which are the author's original work, basically) whereas the UK law looks at the work as a whole and asks whether it meets the originality standard, then considers whether a substantial part has been taken. This is a point that I have discussed before on this blog: it seems unlikely that any element which is not the author's original work could be regarded as a substantial part, but this is not an area of the law where everything is set in stone at present.

The news story is by no means a comprehensive disclosure of the facts, so it would be wrong to speculate much about the possible outcome, but an interesting illustration of copyright principles.

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