A Run Through Patents Part 2 now available

I've now recorded the second part of the Run Through Patents lecture - follow the links from the sidebar to the Run Through page where you can download the MP3 file (about 42MB, and 45 minutes). Please let me have any comments (good or bad) if you listen to it!

Svensson

The Court of Justice decision in Case 466/12, Svensson v Retriever Sverige, came just before the cut-off date for University of London exams and probably those of other institutions too, so (apart from its inherent importance) I need to alert my students to what it says. Here is a link to the press release  on the Curia website and here's the headline from it:

The owner of a website may, without the authorisation of the copyright holders, redirect internet users, via hyperlinks, to protected works available on a freely accessible basis on another site.

The question in the case was whether there was a communication to the public when the defendant provided a hyperlink on its website to the work of the copyright owners. The Court said yes, providing a hyperlink did amount to a communication and it was to a public, but it was not a new public in the sense of being a public that had not been in the copyright owners' contemplation when they authorised the original communication to the public. (The copyright owners were journalists whose work was communicated to the public initially via a newspaper's site.)

So far so good, with one big reservation which I'll mention in a moment. The Court then considers whether it makes a difference if clicking on the link brings up the copyright work in such a manner that it appears to be on the defendant's website rather than the newspaper site where it was originally published (if I may use the word loosely). No, it says, no difference: which must also be right, as the copyright work remains the same and the context in which it appears is irrelevant to that. My only reservation about that is that the original communication was to readers of the Göteborgs-Posten, and we are now asked to equate that with communication to users of Retriever Sverige. Surely that calls into question whether the public is the same in each case? And it looks to me as if people will go to the Retriever website (assuming I have found the right one) for rather different purposes - individuals looking for news would go to the GP website, displaying a preference for that particular avowedly liberal newspaper, whereas Retriever seems to be collecting news stories for its clients (who I imagine are probably corporate) from across a wide spectrum of sources. In other words it might introduce readers of, say, Dagens Industri to stories in GP which they otherwise wouldn't read. Just like in England, a reader of the Financial Times might find his or her way to a story in The Guardian which they would not normally read, via such a website.

Then, the Court asks whether it would be different if the original website proprietor restricts access. I can't tell whether GP does - my knowledge of Swedish is quickly exhausted (utan bilen stannar Sverige, as the sticker given to me by a Swedish friend many years ago said is about the extent of it. I find to my surprise that the slogan is still in use, at www.utanbilenstannarsverige.se, and I did spell it correctly! But say the newspaper were a notorious paywall-user, like The Times, and Retriever took you round the end of the paywall, or through a hole. Or suppose, like the FT, the paper offers visitors to the website a monthly ration of free articles, after which they have to pay for a subscription. Then, the Court says, the new readers would not be among those to whom the story was originally communicated. (My FT example is not a good one, though, because it would all depend on whether members of the group had used up their monthly ration - that would make it very complicated.)

Finally, the Court addresses the question whether Member States can make the concept of 'communication to the public' wider than it is in the Information Society directive. To which the answer is 'of course they can't', in rather more diplomatic language.

Let's go back to the Court's reasoning that there are different 'publics' to be considered. The plural form of the word does appear in the Oxford English Dictionary, but either as an abbreviated form of 'public houses' (which is not what the Court had in mind) or as sociological gobbledegook. Rather than concern ourselves with that, let's look for usages of the word 'public' in the intellectual property universe.

First, it appears in the copyright legislation. There is, for example, a definition in Part 1 of the CDPA of 'public library', and here the adjective is the opposite of 'private'. That raises interesting questions about libraries which you have to pay for, such as the London Library: could it be said to be open to the public? (Like the law courts, which are said to be open to everyone in the same way as the Ritz Hotel, in an aphorism unreliably attributed to Darling J, or LJ according to some references). But section 18 is more relevant to the present matter: the issue to the public of copies of a work is an act restricted by copyright. The fact that this is closely related to section 18 (communication to the public) suggests that this is the right place to look. And there a work is either communicated to the public, or it isn't: it's a straightforward binary thing, which doesn't require any consideration of which public. It assumes that the public is a single unitary entity. This view seems to be supported by the Court's earlier decision in Case C-5/11, Donner, in which advertising was directed to local members of the public and a delivery and payment method was made available to them amounted to issuing copies to them. In other words, the important thing seems to be that the work be issued to members of the public, which makes it unnecessary to consider whether there be in fact a plurality of publics.

Consider also the Patents Act 1977, section 2. The state of the art consists of everything that has ever been made available to the public, anywhere, anyhow (I paraphrase). 'Made available' is passive where 'issued' is active, but the notion of 'the public' is surely the same. There is no need to ask 'which public?'. Either the public has it, or it remains private. I think the Court's analysis, based as it is on there being a plurality of publics, is misguided: there is only one public, and if copies have been made available or a work has been communicated to members of it that is all that matters. There is no new public to whom the work may be made available. It might have been communicated to a limited group, not to the public (behind a paywall, perhaps, though the mere fact that it has to be paid for does not necessarily change whether it is available to the public), in which case providing hyperlinks would amount to communicating to the public, but that is very different. The directive talks about communicating to the public: to read it as if the indefinite article were used is quite wrong. And it's likely to mystify people whose native language has neither definite nor indefinite articles! К сожалению, студенты!

Law Commission reports on remedies for groundless threats

Intellectual property law – achieving a balance between the right to enforce and protecting innovation - Law Commission is the title of the Law Commission's report on remedies for groundless threats. The Commission says on its website:

In our report, we recommend that:

• the protection against groundless threats of infringement proceedings should be retained, for patents, trade marks, registered and unregistered design right but it should be reformed;
• a threats action may not be brought for all threats made to a primary actor; this is already part of patent law but should also apply for the other rights. Primary actors are those who have carried out primary acts, such as the importation of goods or the application of a mark to packaging. Primary acts can cause the greatest commercial damage to a rights holder;
• it should be possible to communicate with secondary actors, that is those who have not carried out primary acts.  This will be where there is a legitimate commercial purpose behind the communication and where there are reasonable grounds for believing that the information provided is true. Guidance as to what may be said should be provided by the legislation;
• for patents, it should no longer be possible to avoid liability for making threats by showing that at the time the threat was made the threatener did not know, or had no reason to suspect, that the patent was invalid; and
• a lawyer, registered patent attorney or registered trade mark attorney should no longer be jointly liable for making threats where they have acted in their professional capacity and on instructions from their client.

A Run Through Patents - part 1

I have uploaded the first of two recorded lectures on patents - download if from the Run Through page on this site. It covers obtaining patent protection, including patentability: next I will deal with ownership, employee inventions and infringement.

No lien over database

In Your Response Ltd v Datateam Business Media Ltd [2014] EWCA Civ 281 [2014] WLR (D) 131 (14 March 2014) the Court of Appeal (Moore-Bick, Davis, Floyd LJJ) held that, because there is nothing about a database that can be possessed, it is not possible to exercise a lien over it - as a mechanic would over a car he has repaired and not been paid for.

Not surprising: but someone must have thought it was worth a try!

The Copyright (Regulation of Relevant Licensing Bodies) Regulations 2014

The Copyright (Regulation of Relevant Licensing Bodies) Regulations 2014 came into force on 6 April. The Regulations support relevant licensing bodies' self-regulatory codes of practice. As the Explanatory Memorandum says:

The Secretary of State may direct a relevant licensing body to adopt a code that complies with the specified criteria if three circumstances are met. These are that the relevant licensing body is not a micro business; that it has no code of practice or the one that it has does not comply in material respects with the criteria specified in the regulations; and that it has not amended its code of practice within 49 days of being informed by the Secretary of State of the noncompliance. The Secretary of State may then impose a code on a relevant licensing if the body fails to adopt an appropriate code within a further 49 days of having been directed to amend its code. The Regulations also enable the Secretary of State to appoint an independent code reviewer and an ombudsman, and to impose sanctions in the form of financial penalties on the relevant licensing body for certain breaches of the Regulations.

You can read the  platitudinous press release here, and from there you can follow a link to official 'legal guidance'. Not advice, I note.

'Internal' distribution does not mean GPL is not invoked

Chicago software licensing attorney Evan Brown  notes an interesting case, XimpleWare Corp. v. Versata Software, Inc., 2014 WL 490940 (N.D.Cal. February 4, 2014), one of very few which address the workings of the General Public Licence (in suit, GPLv2) - a document which becomes more and more important every day.
The plaintiff (as they still call them over there - how quaint! Oh, sorry, I forgot that British irony would be completely lost on any American readers) wrote an XML parser and made it available under GPL v2. The defendant acquired software from another vendor that included the code, and allegedly distributed that software to parties outside the organization. The plaintiff argued that the defendant did not comply with the conditions of the GPL (no attribution, no copyright notice, no reference to the plaintiff's source code, no offer to 'convey' as the GPL puts it the source code), and sued for copyright infringement.
The defendant's argument was that its 'distribution' of the software was merely internal, mainly to its own financial advisers, so the GPL's requirements were not triggered. The court rejected defendant’s argument, looking to the allegations in the complaint that defendant distributed the software to vendors in India, as well as providing it to 'thousands of non-employee financial advisers.'

A clean and pleasant trade - revisited

Legal Futures reports that the most senior judge in the Isle of Man, no less, has told Applebys, the international law firm, that they do indeed have to join the local profession's indemnity scheme even though they have their own insurance cover. Nothing for this blog there - but what did interest me was that the judge (or Deemster, as they call them there) made some comments - perhaps somewhat unfashionable comments, but to my mind all the better for that - on the obligations of professional people. And to support him he cited no less an authority than Karl Marx (1818-1883, if you'd forgotten), whose 1835 work Reflections of a young man on the choice of profession suggested that the “chief guide which must direct us in the choice of a profession is the welfare of mankind and our own perfection”.

Dishonesty does not necessarily preclude claim

In Lloyds TSB Insurance Services Ltd and Halifax General Insurance Services Ltd v James Michael Shanley [2014] EWCA Civ 407  the appellants failed to get the judgment of Pelling J (unreported) overturned despite the fact that the claimant had lied in the course of the proceedings. The claim was for infringement of copyright in a software tool and for breach of confidence, and the defence was that Halifax had a licence and that Lllyds had a sub-licence under it.

The case against Halifax failed because the evidence (such as it was, even after the claimant had demonstrated himself to be unreliable) showed that there was an oral agreement allowing the bank to use the software tool in question (although a forged written licence quite rightly cut no ice). The question was whether Halifax had been entitled to grant a sub-licence to Lloyds to use it, too, and the judge had little difficulty in finding that they didn't. Just because the claimant had told lies did not mean that Lloyds' claim that they had the benefit of a licence would succeed. 

Amount of private copying levy may not take account of unlawful reproductions - Court of Justice

The Court of Justice has held that the amount of the levy payable for making private copies of a protected work may not take unlawful reproductions into account, in Case C-435/12, ACI Adam BV and Others v Stichting de Thuiskopie, Stichting Onderhandelingen Thuiskopie vergoeding (the link is to the press release). The Court took the view that the law should not tolerate unlawful reproductions, so the law has to draw a distinction between private copies from lawful sources and others. National legislation which does not distinguish between lawful and unlawful private reproductions cannot ensure a proper application of the private copying exception. The levy system must ensure that a fair balance is maintained between the rights and interests of authors and users, and if it does not distinguish between lawful and unlawful reproduction that balance is not struck.