New appointments to Court of Appeal

Mr Justice Kitchin will now be Lord Justice Kitchin (at least from October) and will presumably be taking over the role played so brilliantly by Lord Justice Jacob (as he was), looking after IP cases in the court. Full details are in this announcement which also reveals that Dame Anne Rafferty has been appointed too, from 5 July. Many years ago, when she was a practising barrister, if my memory serves, she gave a talk to a group of German criminal defence lawyers for whom, for reasons too complicated to go into, I organised a study visit to London. In addition, Lewison J become Lewison LJ.

How to cite a podcast

Obviously a matter of interest to me - and other legal podcasters. Rex Gradeless (Social Media Law Student) reports that the Blue Book would be addressing this in its 19th edition - which was due out in a week after he wrote the post, so by the time I have caught up with it has probably been out for a month.

19th? I am still going by the second-hand copy of the 14th that I picked up at that legendary institution, Shorey's bookstore in Seattle (once renowned as both the oldest bookstore west of the Mississippi River and "the world's largest antiquarian bookstore", probably my favourite shop in the world, which sadly closed in about 2000: see here for more from the superbly-named Post-Intelligencer - but seems to have reopened a few miles to the north) for $6 - copyright date 1986, formerly the property of Christensen O'Connor Johnson & Kindness. Out of date it might be, but it has served me well and will continue to do so - a pity more English lawyers don't use it - or more to the point the Oxford Standard for Citation Of Legal Authorities which surely ought to be more widely known about and which I am going to add to the links on this site immediately.

Particle size: it's obvious

I already mentioned Cephalon v Orchid & Mylan [2011] EWHC 1591 (Pat) in passing, but now I've looked at it you might like to know more. The interesting part is the bit that deals with validity: the infringement point seems to have turned on a pretty narrow construction point, and indeed the outcome was determined by some rather unfortunate claim drafting - so the judge said. But I'm not sure even the invalidity bit is so very interesting ...

It all came down to the size of particles (this being a pharmaceutical case), and whether it was obvious to use smaller particles of the active ingredient (modafinil) when making up the formulation. Conveniently, the matter was addressed in a publication called Drugs of the Future, and the judge was able to find that between that publication and the common general knowledge it was obvious to use smaller particles. It takes quite a few paragraphs of the judgment to get there, but it does seem fairly cut and dried. The judge didn't need to go on to consider obviousness over one particular piece of prior art, nor did he have to consider the insufficiency squeeze that the defendant tried to put on the patent. So perhaps not a judgment many people are going to find worth spending time studying.

Recent cases ...

A few new cases have popped up on that phenomenally useful service Bailii recently and deserve a brief mention pending mature consideration and commentary:

Cephalon Inc & Ors v Orchid Europe Ltd & Ors [2011] EWHC 1591 (Pat) (24 June 2011) is a judgment of Floyd J on patent infringement and (inevitably) validity. The challenges to the patents were based on lack of inventive step and insufficiency, and the judge held the claimant's three patents invalid. To make it worse for them (or perhaps it makes it a bit better?) the patents, had they been valid, would not have been infringed anyway.

Atrium Medical Corp & Anor v DSB Invest Holding SA [2011] EWHC 74 (Pat) (21 January 2011) has just appeared - an interesting case on the construction of a technology transfer agreement which I covered in my monthly podcast when it was news.

Then there are three Patents County Court cases:

• Temple Island Collection Ltd v New English Teas Ltd & Anor [2011] EWPCC 19 (22/06/2011) which is a copyright case. At the case management conference HHJ Birss was asked to allow amendments to the claim. He refused, saying that the amendment "does not satisfy a cost-benefit analysis." 
• Lenric C21 Ltd v Tesco Stores Ltd [2011] EWPCC 16 is a UKUDR case involving secondary infringement. The case was settled before trial, though not long before - so costs were important. The judge gave the defendant 70 per cent of its costs.
• Wuxi Suntech Power Company Ltd v Tittmann Solar GmbH [2011] EWPCC 17 is a trade mark infringement case. Judgment had been given in default and this was an application to set it aside. The defence amounted to saying that the bill of lading which showed that the infringing goods were being consigned to the defendant had been forged, which the judge was not prepared readily to believe - while noting that this was not what he had to do at this stage anyway. He set the judgment aside and gave the defendants leave to defend, while also making an order for security for costs against them. There's a more detailed note on Jane Lambert's NIPC blog here.

Bailii is in danger from lack of funding, so if you find it useful do support it!

Python

"You learn from a conglomeration of the incredible past - whatever experience gotten in any way whatsoever", according to Bob Dylan, quotes by whom I found myself searching out this morning in the hope of finding something inspirational - something as inspirational and uplifting as the rendition of My Back Pages from his 40th anniversary concert. Well, that seemed like a useful quote to remember, and when I found myself doing some more research this evening, into the Python programming language, I got some experience which I thought might be worth sharing. After all, the second most popular posting on my personal blog shares my experience of how to replace a Nissan Micra K11 water pump drive belt (the most-read one is about an Achilles heel injury, although it might be the Dylan song title I used for it that draws in the visitors).

If you want to know about the Python language itself, Wikipedia has what looks like a good article on it - though with Wikipedia, who knows? No warranties. What interested me was the licence: the original Python was incompatible with the GPL, apparently for the sole reason that it was governed by the laws of the State of Virginia. I assume that doesn't reflect at all on the laws of that particular state: merely that the GPL doesn't permit stipulations about governing law. In any event, the licence was modified to overcome this and the replacement, the Python Software Foundation License is compatible with it. The PSFL as it is familiarly known is a BSD-style, permissive free software license. What I found interesting is that it is not a copyleft licence: it permits modifications to the source code, as well as the construction of derivative works, without making the code open-source. So a program written in Python (of which Wikipedia lists many) isn't necessarily going to be open source just because it was created with open source tools.

Dutch court holds Bulgarian decision contrary to public policy

It sounds like it should be none of their business, but, as that Dutch IP oracle Nauta Dutilh (and in particular Prof Charles Gielen, who coincidentally acted for the successful party in this case) explain in an article on their website, it's very much the business of the Dutch court when considering whether the Brussels I Regulation applies. Because the Bulgarian court's judgment was contrary to public policy, it did not have to be recognised by the Dutch court.

For a court to hold a foreign court's judgment to be contrary to public policy is powerful stuff. The case concerned Johnny Walker whisky, placed on the market outside the EEA but confiscated in Bulgaria at the instance of Diageo, the trade mark owner. The Sofia district court, on the basis of an interpretation of the relevant law by the country's Supreme Court, held that the importation into the EEA of goods placed on the market outside the EEA with the trade mark owner's consent did not amount to an infringement. That's a view of the rules about exhaustion which is perhaps more archaic than novel. It's certainly surprising. Equally surprising is that five judges dissented. How many judges does the Bulgarian Supreme Court have, for goodness' sake? A lot, apparently, but I can't find its judgments on the web, although I have learned some useful Bulgarian words (and letters in its version of the Cyrillic alphabet: съд is transliterated as "sud", the vowel being my new letter: the word means "court". The Russian sounds the same but with the phonetically equivalent letter у in the middle).

Because the trade mark registrations were held by Diageo's Dutch subsidiary (not an uncommon situation, for tax reasons) the confiscatee brought proceedings in Amsterdam to recover damages. Diageo contended that the Sofia district court's judgment was contrary to public policy within the meaning of Article 34(1) of the Brussels I Regulation. The Supreme Court had gone against the Silhouette judgment (which also involved parallel imports and Bulgaria, though at that time it was not an EU Member State) and should have made a reference to the Court of Justice under Article 267 of the Treaty. The Supreme Court had violated a fundamental principle of EU constitutional law, so not only the district court's judgment but also the Supreme Court's interpretation on which it was based was contrary to public policy.

Rights in town design

A Chinese developer is creating a replica of Hallstadt, an Austrian town that is a popular tourist destination and a UNESCO World Heritage Site, and for which the word "picturesque" seems to be a colossal understatement, according to Chris MacDonough on the Washington College of Law blog (following a story in the Washington Post). Chris speculates about the position under intellectual property laws, and concludes that there's not much to be done about it. Maybe it's a case of imitation being the sincerest form of flattery.

Maybe there's a case for extending protection for geographical indications - not just to cover the situation where a producer pretends that his goods have come from somewhere else, but also where somewhere pretends to be somewhere else. But that wouldn't help - who's going to think they are in Austria when they are clearly in the ersatz Chinese version? There'll be no pretence involved. Trade mark infringement? Only if the Chinese were very unwise in what they call it. Copyright? Well, of course it subsists in works of architecture and in maps and plans - but a work of architecture is defined in terms of single structures, not entire settlements, and maps and plans can be created from measurements (which is what the developer seems to have done here, from the reports). Of course reproducing Hallstadt will necessarily involve copying the designs of individual buildings, but it sounds as if the architects have probably been dead for so long that even a bit of Disney-style lobbynomics isn't likely to help them. They probably did their work before town planning was thought up. So an interesting case study, but one that clearly points up the limitations of intellectual property laws. And it's a good thing too.

Forces muster against Lodsys

I wondered last month whether this NPE might have picked a fight it would come to regret, and this report from CNET suggests things are worse for Lodsys than they already were. It's not only Apple who are taking them on: crowdsourcer Article One Partners has offered a bounty of $5,000 for prior art fatal to any of three Lodsys patents - so some lucky bounty-hunter could land $15,000. Peer to patent at its best? It can't stop trolling (without prejudice to the question whether that's an accurate epithet for Lodsys) but it can certainly place some constraints on it. And that might be just as well, if the UK government's "Patent Box" tax-break scheme turns out to work as well for trolls as for innovators, which seems possible.

No escape from software patents

An impassioned plea for software to be made patentable, included in this report from ZDnet of a conference organised by the Westminster Legal Forum (never heard of it before). It's John Mitchell, the chairman of the SME Innovation Alliance, who's been heard on this subject before and whose position I find it hard to understand. Patents, a fortiori software patents, are playthings for big business: they enable them (should they wish to do so - and I don't mean to imply that they always do) to bully small businesses. Worse still, they lead to the worst excesses of trollery and it's small businesses that suffer from that rather than the large ones - though they are certainly not immune.

Mr Mitchell compares software to materials, like wood and paper, from which inventions may be made. That in itself does not justify allowing patents for it: no more than it justifies patents for wood or paper. What patents can rightly be granted for are the inventions that are made using the software. And that's exactly what the UK and European patent systems strive to do, without crossing the line and granting patents for pure software (which as one comment on the ZDnet story points out is nothing but mathematics). The trouble is that it's a difficult boundary to map, and the UK Patent Office and the EPO have drawn it in slightly different places. A problem, but not the problem that people seem to be arguing about. Both systems seem to me to look for a technical effect that lies outside the fields excluded from patentability by the relevant legislation, although they express this search in different ways. And, excluding a few die-hard anti-patent lobbyists (but a growing number: software and business methods patents bring the whole patent system into disrepute), that seems to be the attitude of most people, outside the USA at least. Including Marty Goetz, another commenter on the ZDnet story, and probably Mr Mitchell too. And certainly Prof Hargreaves, whose recommendations on this point seem spot on.

Co-existence agreements and trade mark classification

Omega SA v Omega Engineering Incorporated [2011] EWCA Civ 645, 27 May 2011 concerns the interpretation of a co-existence agreement - the sort of thing we encounter all the time in trade marks practice, especially in these days of more-or-less spurious oppositions. Nothing spurious about this case, though: it's a dispute that has been rumbling on for a long, long time. Almost another Hundred Years War - well, not really, because it only kicked off in 1984.

At first instance ([2010] EWHC 1211 (Ch)) Arnold J upheld the agreement, siding with the US company and rejecting the opposition from the Swiss watchmaker. The Court of Appeal (Mummery LJ giving the leading judgment, with which Black LJ and Sir John Chadwick agreed) concurred with him. The agreement did not (as the Swiss argued) restrict the Americans to class 9, so that they (Omega SA) were entitled to oppose an application in class 14. The agreement, not surprisingly, was concerned with demarcating the goods on which each party could use the trade marks, not with matters of classification. The agreement did not mention class 9 or class 14, or indeed say anything about classes: the appellants were trying to persuade the court that the officious bystander would imply such a reference, but the court saw no need for reasons of commercial efficacy to imply anything into the agreement.

One important point made by both Arnold J and Mummery LJ was that it is not unknown for the Nice Agreement, which sets out the international classification of goods and services, to be changed. Goods could move from one class to another. If the appellants' approach were adopted, a change of classification would wreck the agreement. Of course, a form of words could be devised that would include mentions of the classes while avoiding this outcome, but that was not what the appellants were arguing for anyway. The case does make it abundantly clear that when drafting a co-existence agreement one must take great care to ensure that it draws the line in exactly the right place - just as with any commercial agreement, in fact ... Between the lines, the case also says quite a lot about class headings and the role of the classification system, both highly topical subjects at present. I never quite understood the purpose of the classification system: it doesn't even play a useful role in making searches easier, though I suppose it can narrow the field. Apart from that, it only gives trade mark registries an excuse to charge additional fees. It certainly doesn't provide a rigorous basis for a co-existence agreement (although it might well provide a starting point).

Trade marks: get them while you can!

Every business uses trade marks - distinctive signs to identify themselves to their customers or clients. The trade mark my just be the proprietor's name, but if the business found that either it couldn't use it, or someone else could use it as well, that would be unfortunate. At best. Disastrous, perhaps.

Stevens Hewlett & Perkins, the patent and trade mark attorneys, have a report on their website that brings home just how crucial this could be. Sussex County Cricket Club wanted to call a new walkway on their premises "The Walk Of Fame", but discovered that the name had already been registered by record producer David Courtney, who established his own Walk of Fame at nearby Brighton Marina nearly ten years ago. He offered to grant the club a licence to use the name, at a fee of £20,000 a year. They decided to go for a different name, expressing surprise that an everyday phrase should have been protected as a trade mark.

One should not be surprised at anything the trade mark system does these days. In a sensible trade mark system, the phrase without some addition ("Brighton" might suffice) should be unregistrable: it seems to me that it should fail any rational test for distinctiveness, but so diluted is the concept now that it hardly stops anything. The result is that localised usage can become a powerful exclusive right, for which substantial royalties can be demanded - coming close to trollery, IMHO. It is the law, not the trade mark owner, that's wrong: it simply should not allow this sort of situation to arise.

Unfortunately, this is a self-perpetuating inflationary process. Because this sort of thing can happen, someone else with a "trade mark" that should not be allowed anywhere near the register will apply successfully to have it registered - perhaps even being able to point to the precedent established by an earlier registration. And so another little bit of the great common of the English language will be enclosed, and trade mark law will have failed us again.

Designs: similarities do not always mean copying

The UK's law on designs is a mess, with five different regimes (including a small residue of copyright) all having a go at much the same subject matter. Albert Packaging Ltd & Ors v Nampak Cartons & Healthcare Ltd [2011] EWPCC 15 (02 June 2011) is a case on unregistered design right, or UDR, or more correctly UK UDR to distinguish it from the rather different Community right of the same name. Section 213 of the Copyright, Designs and Patents Act 1988 provides that UDR may subsist in “the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article”. The design has to be original, but that's another part of the story.

In 2005 the claimants designed a new sort of package for wraps - the foodstuff, that is, which can be found alongside sandwiches and things in supermarket chiller cabinets and the like, stuffed with the sort of fillings that people commonly want in their lunches. Roasted vegetables and hummus. They supplied them to Sainsbury's, who later switched to buying their wrap wrappings from the defendants. The claimants said that the defendants were infringing, while the defendants not only denied that but also challenged the subsistence of UDR. Matters were complicated by the fact that  the formalities needed to create an exclusive licence so as to give the licensee standing to sue had not been complied with, and HH Judge Birss considered that compliance with these formalities (a written licence) was essential, unlike the trade mark situation mentioned in my posting a few minutes ago - so the "Ors" (Adrian and Jeremy Weintroub) could sue but apparently not Albert, which doesn't alter the finding about infringement.

The claimants characterised their design in three ways, all of which had to be assessed for subsistence of UDR:

1. The shape of the carton in assembled form;
2. A generally rectangular box save in that the top face slopes downwardly from the rear face to the front face, there being a window extending from the sloped top face onto the front face;
3. The distance from the shoulder of the pack to the top of the back panel, along the back panel, is 35mm regardless of the length or width or depth of the pack.

The first problem for the claimants was to overcome objections that what they had was a method or principle of construction - in which there can be no UDR. The judge followed the reasoning of Mann J in Rolawn Ltd v Turfmech Machinery [2008] EWHC 989 (Pat) and the Court of Appeal in Landor & Hawa International Ltd v Azure Designs Ltd [2007] FSR 9:  “[t]his exclusion operates to limit the level of generality at which a definition of the design to be relied on can be stated: the more abstract the definition relied on, the more likely it is to fall foul of the exclusion”. The second and third characterisations of the design fell foul of this exclusion.

The there was the question whether the designs were commonplace (in which case they would not be original and therefore there would be no UDR). The judge thought not: the evidence showed that there was no such thing as a wrap box designer - the design field was cartons. But approaches 2 and 3 were at too high a level of generality, and if UDR existed at such a high level other designers would be unable to design cartons. The first approach aw another matter altogether - the design expressed that way was by no means commonplace.

So there was at least some UDR to argue about. That looks to me like an excellent expression of the carton-designer's skill - making packaging that can magically assume the required shape strikes me as very clever. Although I can't help feeling that the world was a better place before packaging became ubiquitous ...

Infringement, of course, requires copying, and the judge explained how he thought he had to go about working out whether this was present:

[39] … the approach I will take to infringement is as follows. First I will consider whether the similarities between the Nampak product complained of and the Albert Packaging design (as well as the possibility of access) call for an explanation. In other words - do they raise an inference of copying? In considering that matter I will bear in mind that functional features may be similar because they are performing a function not because of copying. If an inference is raised then I will consider what explanation Nampak put forward. In the end I will compare the Nampak product and the design objectively, reminding myself that for infringement, the relevant article must be produced exactly or substantially to the design.

It was clear to him why there was a complaint. there had been an opportunity to copy (all you had to do was go to the chiller cabinet in your local Sainsbury's) and the cartons were clearly very similar, although not identical. But the defendants' design's origins lay in a document that predated the claimants', so notwithstanding that the claimants' design had influenced the defendants' product such that it was not independently designed - but (a nice nuance) that did not mean it infringed. By section 226 infringement comprises (inter alia) “copying the design so as to produce articles exactly or substantially to that design”. None of the defendants' products were made exactly or substantially to the claimants' design, so there was no infringement. What similarities there were derived from the earlier design, not from the claimants'.

Which all goes to show how difficult it can be to work out when an infringement of UK UDR

Informal licences and oral use of trade marks

Prudent trade mark owners don't let others use their trade marks without taking precautions, but in Jean Christian Perfumes Ltd & Anor v Thakrar (t/a Brand Distributor or Brand Distributors Ltd) [2011] EWHC 1383 (Ch) the High Court (Mr John Baldwin QC, sitting as a deputy judge of the Chancery Division) held that even where the licence had been granted orally the licensee could bring an action for infringement if he had the consent of the proprietor.

The case concerned a Community trade mark: there is no reason to suggest that a UK trade mark would be treated any differently. This ruling could be very useful where the proprietor of the trade mark is overseas and might therefore be required to give security for costs before being able to sue for infringement. A licensee using the trade mark here, even without a formal written licence, could bring the action instead.

There was also a point in the case about whether non-graphic use of a trade mark could be infringement. The deputy judge observed that as the Community trade mark regulation provides for the registration of such exotic, non-graphic, marks as sounds, it would be absurd if oral use were not capable of being an infringement. I have always understood that the 1994 Act widened the scope of what amounts to infringement to include oral use, although I believe it's not expressly stated on the face of the statute - it's just that the Act doesn't say infringing uses have to be graphic. And quite right too: mention of a trade mark in a TV or radio programme should, if the relevant conditions are met, amount to an infringement.

The logical extension of these principles is that oral use of a trade mark will be enough to overcome a claim of non-use. Just hard to prove.

Italy introduces trade mark oppositions

A bit late, I thought, because Directive 89/104/EEC should have been implemented in national law in 1992, which means that the Trade Marks Act 1994 was late too. But reading the Directive again - something I haven't done for a long, long time - I see that there's nothing in it to require Member States to permit oppositions: and I also notice that Article 4 - the one about relative grounds - says that a trade mark shall not be registered where there is a conflict with an earlier right as set out in that Article.

That looks to me very much like a direction to Member States to keep the register clear of conflicts. Was the UK actually allowed to change from the old approach of refusing applications ex officio where there was a conflict to the opposition-based system that we have now? I've always considered that a breach of contract with earlier trade mark owners, who'd registered on the understanding that the Registry would stop others impinging on their exclusive rights. It increased the costs of trade mark ownership enormously, left a lot of trade mark owners exposed, and opened the way to a lot of very dodgy practices by trade mark bullies. It would be interesting to look into the legality of the change, and what debate took place at the time, but I'd like to see a challenge this detrimental change to our system.

Hat tip to Natalie Dreyfus, author of Dreyfus.Blog, for bringing this to my attention.

Scammers and the IPO

Trade mark owners continue to fall prey to scams masquerading as official agencies, writing to tell them their trade marks need renewing (not difficult information to come by) and obtaining a signature on a piece of paper that constitutes an instruction to renew at a fee practitioners would not charge in their widest dreams. Not illegal in itself, this technique relies on the fact that trade mark owners won't recognise an official letter: a practitioner would spot this at a glance.

When the source of the letter is a company called Intellectual Property Agency Ltd (although not a company incorporated in England and Wales) it's easy to see how someone might confuse it with the Intellectual Property Office. That institution directs complainants to Consumer Direct, though it seems to me that anything set up to help consumers (I include the Unfair Terms in Consumer Contracts Regulations, the Unsolicited Goods and Services Act, and the distance selling regulations) will be of no avail for the simple reason that anyone registering or renewing a trade mark is by definition not a consumer: only traders need trade marks - OK, let's say "undertakings" ... the connection between trade marks and trade was jettisoned in 1994.

Had the Office not been renamed, scammers might have found it difficult to pull the wool over anyone's eyes without using the words Patent Office and therefore committing an offence under section 112 of the Patents Act. But hang on - that section talks about using not only those words but "other words suggesting that his place of business is, or is officially connected with, the Patent Office". "Intellectual Property Office" is a "trading name" or something of the Patent Office, so surely using the name "Intellectual Property Office" is an offence - it suggests an official connection with the Patent Office. Changing "Office" to another word is unlikely to be enough to avoid the offence. So maybe some of these scams are more illegal than they look - but is anyone going to do anything about it?

Spain and Italy challenge unitary patent

Spain and Italy have filed a complaint at the Court of Justice in Luxembourg against the proposals to bring in the unitary patent (for the European Union, minus Spain and Italy) using the ironically-named "enhanced co-operation" procedure, which seems to have nothing to do with co-operation and much to do with taking a pragmatic approach to opposition from a minority of Member States.

The Commission's hope - and the hope of many others too, including my Spanish friends whom I quoted on this blog a week or so ago - was that Spain and Italy would see a way to waive their objections, which are based on the omission of their languages from the list of official languages of the proposed system (a traditional reason for opposing supranational legislation in the intellectual property field). No doubt there is a great deal of horse-trading still to be done, but evidently they are not yet ready to back down.

Consent to being photographed

What can a photographer do with an image of a well-known person? Or even someone who's not well known - who may still be what in modern parlance is called a "celebrity". A recent case from the United States sheds some light on the question - though the judgment is remarkable more for the care with which the court circumscribed its reach than the actual finding.

This is the district court for the Central District of California's decision Shirley Jones v Corbis Corporation (Case No 10-8668 SVW (CW)) (hat tip to Bob Tarantino of Heenan Blaikie in Toronto who tipped his hat in turn to THR, Esq). Shirley Jones, who was in the 1970s TV show The Partridge Family (which I had the great good fortune to escape ever seeing) not to mention films like Oklahoma!, Carousel, and Elmer Gantry , took exception to the use of photos of her in "red carpet" situations. She claimed her right of publicity was being infringed by Corbis (a stock photography agency, in case you haven't had a run-in with them or otherwise heard of them: it was founded, and is owned, by one Bill Gates) when they showed samples of images of her on their websites.

The court rejected her claims. If you show a celebrity a red carpet and a few photographers, he or she is likely to start striking poses: they know what is expected of them, and what will happen to the results. That's not exactly what the court said, but I think it's a fair paraphrase. Thereafter, the images are sold by the photographers - why else would they bother taking them? - and showing them in the manner about which she complained, even through the medium of Corbis, was entirely consistent with the implied consent given by Ms Jones. There was no evidence to support her claim that the consent was personal to the individual photographers.

At some "red carpet" events, notices are posted stating that the celebrities being exposed on the carpet consent to photos and moving images being recorded and reused, which not only kicks any argument like Ms Jones's into touch for those events but also shows pretty clearly what custom and practice is. Indeed it was not disputed that she consented to the photos being taken, and to their being sold. Her actions, and the context in which she performed them, added up to consent to everything that subsequently happened to the photos. What I don't see in the judgment, and which would be interesting to know, is when the photos were taken - I assume they date from the period of recent history in which this way of dealing with the images would have been commonplace. Had they been images from an earlier era, pre-digital, pre-Corbis, the extent of her implied consent might have been very different.

Although this is a decision of a US Federal court on US law (common law and statutory rights of privacy were pleased, though I am not sure after quickly scanning the judgment which statute is invoked), there are lessons for photographers - and for celebrities, and event organisers - elsewhere, even if (as in the UK) privacy rights are much less well-developed. Put up one of those notices, to start with, so there is the least possible doubt about what's going on. Photographers should be able to rely on the subject's implied consent just because they are there, and if the celebrity is striking poses for the photographers so much the better. Beware, however, if they are hiding their faces, or instructing photographers not to take pictures: that would probably override any implied consent, though you're more unlikely to encounter that sort of reaction on a red carpet. It's a rather special environment, and special rules apply which would not apply if you encounter the celebrity on the street.

Peer to Patent, EFF style

An interesting twist on the "peer to patent" review idea: I've just seen the Electronic Frontier Foundation's patent-busting campaign, listing their top ten undesirable patents and inviting people to tell them about prior art so the patents can be busted. From the information on the website, it seems that they have had some success. A useful antidote to unjustified software and business methods patents? No doubt, though I always worry about the danger of mob rule - the difference between good patents and bad ones, which is subjective at the best of times, could easily be lost.

May 2011 IP podcast

Earlier this morning I recorded and uploaded the May podcast for subscribers. It includes:

• A look at the Hargreaves Review and Euro-Hargreaves
• The Advocate General's opinion that pog designs are invalid
• The Court of Appeal on groundless threats, in Best Buy
• Peter Smith J on Formula One motor racing, in Lotus v Lotus

Of course there's lots more too - well over an hour ... If you'd like to get your CPD economically and conveniently, drop me a line or leave a comment. If you'd like to hear a sample, go to the podcasts page (follow the link in the heading).

Thanks to Olcott International & Co LLC for sponsoring the IPso Jure podcasts.

Internet access a human right

A report prepared for the Human Rights Council of the UN General Assembly proposes that Internet access should be treated as a human right, and even illegal acts such as copyright infringements should not result in Internet access being cut off. Clearly, access to the Internet is an important component of free speech these days - although I am reminded that, as Stanley Fish told us, "There's no such thing as free speech: and it's a good thing, too". We see that every day, it seems, in the English courts as the judges try to balance the right of privacy with the freedom of the press, as Parliament told them to do when it passed the Human Rights Act. There's another balance to be struck between the right of a scofflaw to free speech and the rights of the copyright owner with whose material they make free.

Isle of Man to update IP law

The Isle of Man, which constitutionally is a self-governing Crown dependency and a semi-detached part of the European Union, is going to have updated intellectual property laws soon: at least, the government is consulting on changes. Most of them reflect changes that have been made in the UK to meet the requirements of directives from the European Community - they predate the Lisbon Treaty. Copyright could be extended to 70 years pma, there might be new rules for damages for infringement, and the government is considering reforming design laws and introducing a publication right, a "making available right" protecting the performer of a work which is made available to the public on the internet, and moral rights for performers.

The consultation paper identifies 81 possible changes, of which the government is minded to recommend adopting the majority, is undecided about several, including increasing the basic copyright term (what an unusual degree of honesty and openness in a government!) and has already decided to reject a couple - the introduction of rental and lending right, and artist's resale right.

The consultation is not limited to copyright, perfomers' rights and designs. There are proposals on trade marks (how to protect International Trade Marks (EU)), patents, SPCs, and database right too. The document is 106 pages long, and about 90 of those pages contain a description of what might be done, the pros and cons, how the UK has done it and how the Isle of Man could do it - so it doesn't make for easy reading, but it isn't hard to find what you're looking for, if you see what I mean.

Pogs: the Advocate General speaks

What design law enthusiasts have been waiting for: Advocate-General Mengozzi gave his Opinion in the  "pogs" appeal (Case C-281/10 P PepsiCo v Grupo Promer Mon Graphic) on 12 May. This is the first case on Registered Community Designs to come before the European Union’s highest court.

PepsiCo had registered the design; the cancellation division at OHIM had declared the registration invalid; and the Board of Appeal had allowed PepsiCo’s appeal. The General Court largely upheld the Board of Appeal’s legal analysis, but held that the design was not sufficiently different from Promer’s earlier one. PepsiCo appealed.

The case raises both procedural and substantive points. The ground for the appeal was that the General Court violated Council Regulation (EC) No. 6/2002 in five respects:

• It had failed to take into account the constraints on the designer in developing the contested design; 
• It had wrongly interpreted the notion of the "informed user" 
• It had erred in considering the attention level of the informed user; 
• It carried out a comparison between the designs based on actual products in the file rather than on the designs as registered; and 
• It based the comparison on distorted facts. 

The Advocate General considered that many of the grounds of appeal are really matters of fact, which cannot be appealed to the Court of Justice: he said of some of the points that it was "undeniable that the arguments adduced by PepsiCo are designed solely to call into question the findings of fact made by the General Court." (para 35).

He also said that in his view there is no reason to treat appeals on design cases any differently from those on trade mark cases (paras 71-75). The General Court has a wide freedom to examine the appeal and substitute its own views for those of OHIM. 

The constraints on the designer’s degree of freedom

It was not for the Court to call into question the findings of the General Court on this point, which were matters of fact not law. 

The concept of ‘informed user’

The Advocate General considered that:

"… generally speaking, the informed user is not a ‘technician’ with special knowledge, but just a user who is a little more attentive and interested than the average consumer: in other words, a user of whose perceptions the General Court is able to form an adequate picture." (para 74).

Design cases will therefore, to widespread relief, be saved from getting overburdened with expert or survey evidence.

As for the application of the concept of "imperfect recollection" in comparisons of designs, the AG thought that the General Court had not in fact uses that analysis, although the language of its judgment was "a little infelicitous". Anyway, the law does not exclude either direct or indirect comparisons and sometimes an indirect comparison may be useful or necessary as a practical matter (paras 49-50, 55). 

The attention level of the informed user and the scope of review by the European Union judicature

The next point concerned the attitude of the informed user. The Advocate General agreed with the General Court:

...the General Court envisaged an informed user who was anything but superficial and inattentive, even if lacking the analytical acumen which, if anything, is the hallmark of an observer of patents. (para 67).

The review focused on the goods rather than on the designs at issue

Regarding using samples instead of the registration in the comparison exercise, the AG took a pragmatic view. He thought it was allowable in the circumstances of this case, and probably every other case too:
83. In any event, it seems to me that it is entirely proper – if, as in this case, it is physically possible – to take account of the actual goods characterised by a specific design. As we have in fact seen, the relevant public for assessing designs is made up of informed users, who are not experts, but simply individuals who are particularly interested in and attentive to such goods. In the present case, the informed users include children aged between 5 and 10 years. In those circumstances, it is quite right that the General Court should also have considered the goods in the form of the ‘real thing’, as seen and perceived by the informed users, who, it should be pointed out, do not usually ever see the registrations of the designs, but only their ‘practical application’, that is to say, the goods characterised by those designs. At the hearing, PepsiCo itself considered it appropriate to show the Court of Justice a number of ‘pogs’ to clarify some of the points contained in its observations.

This is pretty much the same approach as that of the UK courts, which take the view that otherwise it is difficult to compare like with like. 

Distortion of the facts

This argument was to no-one’s surprise rejected as inadmissible.

Book review: Sudden Genius? by Andrew Robinson

The Journal of Intellectual Property Law and Practice has my review of this excellent and informative book in its latest edition: you can read it here. I seem to have carved out a niche, reviewing books for JIPLIP that aren't simply IP textbooks - probably a lot more interesting.

A Spanish view of the EU Patent

My friends at J Isern Patentes y Marcas point out in an interesting article that the Spanish position on the EU patent, understandable as it may be as a means of preserving the importance of a major European language, will put Spanish businesses at a disadvantage, relegating them to a second division within the EU. Pepe Isern concludes:

El sacrificio en aras de una patente única debería haber sido para todas los países por igual y en todo caso establecer como lengua franca el inglés.

Or, per Google:

The sacrifice for the sake of a single patent should have been to all countries equally and in any case to establish English as a lingua franca.

Which has come to mean a language adopted as a common language between speakers whose native languages are different, but originally meant the blend of Italian with French, Greek, Arabic, and ironically Spanish, used in the Levant. I guess the fate of English is inevitably to be a lingua franca in the modern sense: good  for the rest of the world, good for English-speakers (who don't have to bother learning others' languages - I was being ironic there, because what are they missing out on?), bad for the English language. But the point is made that 85 per cent of scientific and technical literature is in the form of patent specifications: of course those specifications are available to researchers in Spain whether or not Spain joins the unified patent system, and the problem is that Spanish innovation will not be as fully protected as innovation in other EU countries. However, isn't the larger part of that 85 per cent going to be in English anyway? Should the European Union just go with the flow?