Change to transitional arrangements for the repeal of section 52

A news story on GOV.UK tells us that the statutory instrument to implement the repeal of section 52 - that's the section of the Copyright, Designs and Patents Act 1988 which shortens certain aspects of copyright protection when the work is applied industrially - has itself been repealed. It's only a few days since I posted a comment about the extended timescale for the repeal to come into operation (April 2020), remarking that it even allowed time for the repeal to be repealed. I doubt this has come about because someone read this blog. In fact, the official reason is that judicial review proceedings were being threatened, challenging the compatibility of the regulations with EU law, which of course is where this whole sorry episode started (with the copyright term directive and the perceived significance of the Arco lamps case, Case C-169/08 Flos v Semeraro).



Sadly, this doesn't mean that the government has seen sense. The website goes on to say:

The Government will launch a fresh consultation on revised transitional arrangements, including the date for implementing the repeal. A further announcement will be made when the new consultation is published.

I'll keep an eye open for it ... Pity if we don't the promised judicial review: that would have been much more interesting.



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Creative Commons for Patents

Creative Commons is usually associated - perhaps always associated - with copyright. But it goes further than that: I just happened across this Model Patent License, the title of which gives away its American origins although that's not a fatal flaw by any means. I thought readers might find the link useful, and so might I one day. I was tempted to include it in the IP module I am working on for the College of Law's Legal Practice Course, but it might be a bit left-field for that purpose.



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Remedies for infringements of Standards-Essential Patents

In a nicely-balanced judgment in Case C‑170/13, Huawei Technologies Co. Ltd v ZTE Corp. and ZTE Deutschland GmbH (judgment here) (16 July) the Court of Justice held that the holder of a Standards-Essential Patent (or SEP, a term of art that is gaining currency very rapidly in this SEP-reliant age) can only have an injunction against an infringer if it has previously offered a licence on FRAND (a better-established term of art) terms. If the patentee has given an irrevocable undertaking to grant such a licence, it is not an abuse of a dominant position to seek an injunction and that would be prohibited by Article 102 TFEU, but the patentee has to get over a few hurdles before it is in the clear, to make sure that the right balance is struck between the interests of the patent owner and the would-be user.

First, the patentee has to alert the alleged infringer to the alleged infringement, and then it has to present a FRAND licensing proposal. If the alleged infringer carries on regardless, it will not be regarded (in the court's phrase) as having responded diligently to the proposal. It can only claim that there is an abuse of the patentee's dominant position if it has responded with a counter-proposal, offering FRAND terms (or, you might say, terms which are more FRAND, or FRANDER - there's a nice neoligism) of its own - because, of course, the only matter that can be in dispute is whether the purported FRAND terms qualify as such. Although that makes it sound far easier than it is: FRAND is not a binary, yes-or-no, matter - a wide range of terms might fall within the scope of what is fair, reasonable and non-discriminatory.

The court's approach, within its limits, nevertheless makes perfect sense: if your patent becomes the basis for a standard that everyone has to use, you have to accept that it is no longer a right to stop others from using it, merely a right to remuneration (which may be substantial). Everywhere in the IP field you can observe this shift from exclusive rights to a right to be paid for use: it happened in copyright even before the 1988 Act, when collective licensing suddenly took off with the creation of the CLA, and it was built into design right under Part III of the 1988 Act right from the start.

However, like all references to the Court of Justice, it leaves questions unanswered (usually because the questions weren't posed in the first place, which in turn is usually because they didn't arise in the case concerned so the referring national court had no reason to ask them). Can (as Laëtitia Bénard of Allen and Overy in Paris said to WIPR, that astonishingly inaccurate publication mis-spelling her surname) an injunction be blocked merely because the alleged infringer challenges the FRAND-ness (my word, not Ms Bénard's) of the offer? Will holding an SEP always place the patentee in a dominant position (a point made to WIPR by Axel Walz of King and Wood Mallesons, Munich)? How detailed does that "irrevocable undertaking" have to be (my own thought)? Given the growing frequency with which patents are already becoming standard-essential, which is likely to accelerate rapidly in the future, these are probably questions that we will see coming up before very long.

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Private copying regulations quashed

Back to the unfamiliar territory of the Administrative Court, where last month the regulations that made private copying of certain works (those of which the copier had lawfully acquired a copy) were unlawful. Now in British Academy of Songwriters, Composers and Authors Musicians' Union & Ors, R (on the application of) v Secretary of State for Business, Innovation and Skills & Anor [2015] EWHC 2041 (Admin) (17 July 2015) the same court has quashed the regulations, having left open after the first judgment what would be done.



Copies made since the permitted act was created in October last year will not become automatically unlawful, though it seems that any action brought in respect of such copies may proceed on the basis that they were not authorised. There will be no expedition to Luxembourg at the this stage. The government will presumably now try to work out how to pass legislation that will hold water - it will need to define what it means by de minimis, for one thing. Policy-based evidence-making won't cut it, and a good thing too.



Meanwhile, the record industry (which is the area principally affected by all of this) will continue not to take action for infringement when users "format shift" recordings. They have taken this view, as I understand it, for several years, which makes it odd to my mind that the government should have wasted time on legislation in the first place. Keep it as a threat, by all means, so that the industry is not tempted to rescind that concession, but surely that is enough.



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Rounding conventions: what is the value of 1?

Smith & Nephew Plc v Convatec Technologies Inc [2015] EWCA Civ 607 (24 June 2015) is a patent case which turns on how to read a numerical range. The patent related to wound dressings in which silver - a known antimicrobial agent - was applied to the fibres. To prevent discolouration, the patent specified the use of a binding agent, at a concentration between 1 per cent and 25 per cent.

The trial judge, Birss J, interpreted this (using the conventions that I thought I had remembered from school maths lessons) to mean between 0.95 per cent and 25.5 per cent. But the Court of Appeal knew better (or at least they picked up on the argument).

Of course, like all interpretations of patent claims, the right approach is that set out in the Protocol on Interpretation of Article 69 - which requires us to consider what the person skilled in the art would think the claim was intended to mean.

It came down to whether the right approach was a "whole number" approach or a significant figure approach. The whole number approach would say that 1 per cent means all figures greater than or equal to 0.5 per cent and less than 1.5 per cent - or to put it another way, all values that round to 1 per cent when expressed in a whole number. The significant figure approach was explained by Kitchin LJ, who started by noting that the rules formed part of the common general knowledge: 

i) non-zero digits are always significant;
ii) zeros between non-zero digits are always significant;
iii) leading zeros are never significant; if a decimal point appears in a number then trailing zeros are significant (before or after the decimal point);
iv) in the absence of a decimal point, trailing zeros are not generally significant unless stated otherwise either expressly or with a bar over the zero.

Applying these rules, 1 per cent indicates a range from 0.95 per cent to 1.5 per cent. It is asymmetric because the values that round to 1 must comprise two significant figures: if there's only one significant figure, you can't round it up or down. This is how Birss J got to the conclusion that the defendants' 0.77 per cent concentration did not infringe. He reckoned that the skilled person would use the significant figures approach. The Court of Appeal preferred to think that the skilled person would assume that the values were expressed to the nearest whole number, so there was an infringement.

Why, oh why, didn't the person who drafted the claims (and the description, of course, as it has to support the claims) either write "up to 25 per cent" or "1.0 to 25 per cent" (especially when the teaching of the patent was that as little as 0.01 per cent would do the trick)? I'm sure they had their reasons, just as the patent agent who wrote the Catnic patents had his reasons for writing "vertical" (or was it "vertically"?). However, in neither case are the reasons known, while in both of them the effect was significant, indeed determinative, in the patentee's favour in both cases, though only just in the earlier one. Cases like these cause me to reflect on the received wisdom about patent claims, that they are technical documents written for technical people and not suited to the sort of legal scrutiny that a conveyance should get (I forget the precise quote). But in fact they are complicated legal documents (often incredibly so) written by highly-trained professional patent agents (soi disant attorneys, indeed) and to my mind that means that meticulous verbal analysis (there, I remembered the words!) is entirely appropriate. And the Protocol is wrong!



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TVR Automotive v OHMI - TVR Italia (TVR ITALIA) (Judgment) [2015] EUECJ T-398/13 (15 July 2015)

In TVR Automotive v OHMI - TVR Italia (TVR ITALIA) (Judgment) [2015] EUECJ T-398/13 (15 July 2015) the General Court held that the OHIM Board of Appeal had been wrong to conclude that there was no genuine use of the TVR trade mark at the material time (February 2007) when the application in suit was filed by the applicant, an Italian company claiming somehow (and very optimistically) to be the successor to the business of the then-defunct British sports car manufacturer. Its trade mark comprised a TVR logo (in familiar form) with the word "Italia" appended in smaller letters.


The true successor to TVR's business opposed the application, and the Italian company demanded evidence of use. The opposition was rejected in relation to the goods for which use had been shown - which was not all the goods in the application, but it was the important ones. The Italian company appealed, and then filed for revocation. The appeal was stayed while that was sorted out. The Cancellation Division rejected the application for revocation on the grounds that genuine use had been shown, and the Italian company appealed against that, but out of time so the opposition proceedings then went ahead: the appeal was upheld, on the basis that genuine use from 28 January 2003 to 27 January 2008 had not been proved.


The case was based on the non-use of the TVR trade mark, although there appears to be no allegation that such non-use had lasted for five years: and in any case one of the trade marks involved had not even been registered for five years at the time. It received short shrift from the Court, which took a rather different view of what constitutes "genuine use" in relation to specialised, low-volume motor cars, making me wonder how the case ever got to Luxembourg in the first place.


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Repeal of Section 52 CDPA

The misguided repeal of section 52, a paradigm case of policy-based evidence-making, now has a date (and has done for several months, but I only just got round to telling you): happily, it's not until 6 April 2020, which even leaves time to repeal the repeal, if the government ever sees sense.

The soi-disant Intellectual Property Office has published the results of the consultation here.

Transitional provisions, should the need arise, will protect those who have made copies taking advantage of the permitted act. The implementing legislation, when it comes, will give them an indefinite period of time after commencement in which to sell off existing copies, but prevent the manufacture or importation of new unlicensed copies. The legislation will leave people free to deal with existing copies after commencement. Sounds to me as if the first and the third cover similar territory, and the second is what the repeal is all about so hardly needs to be said.

So there will be protection for what I recall were referred to as vested rights back when the duration of copyright was increased, in the mid-nineties. It doesn't sound as if a date is going to be set from which you won't be able to stockpile what would be infringing copies if made or imported after the repeal - does this mean that one will be able to accumulate shedsfull of ersatz Arco lamps right up to the commencement date, and remain free to dispose of them thereafter? If so, it sounds like a daft arrangement. I will have to read more ...



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Implied covenants in assignments of intellectual property

For reasons too complicated to mention here, I found myself thinking about the implied covenants in assignments, covenants invoked by the magic words 'full title guarantee' or sometimes 'limited title guarantee'. The Law of Property (Miscellaneous Provisions) Act 1994 explains (at some length) what these ritual incantations mean in practice. I won't bore you with it all here, but I will post this link to the legislation for the benefit of anyone (like me) who needs to find it.

Guest post: .sucks me not: Why organisations & celebrities are afraid of this domain!

During a recent trip to San Diego for one of the world’s biggest IP conferences, I, alongside of over 10k IP lawyers from over 100 countries, came across a newly launched gTLD (generic top level domain) named .sucks. The unique launch campaign which involved mainly students who stood around the city holding banners with just .sucks written on it and giving away condoms in nicely wrapped packets with .sucks printed on the wrapper. Mobile signage vans making the rounds across the city captured people’s attention and the curiosity grew because all the signage said was .sucks.

What is .sucks?
.sucks is a new domain name launched by a Cayman Islands based entity called Vox Populi Registry Ltd., which is a subsidiary of Ottawa based Momentous Inc. In 2014, Vox reportedly paid over US$ 3 million to ICANN for the rights to manage the .sucks domain.

Why .sucks?
As per John Berard, Founder-Vox Populi; the .sucks domain is a platform for legitimate critical commentary, which is definitely not being considered true by others. In fact, in a recent statement, California Republican Darrell Issa termed it as “legalized extortion”.

Why the fear?
In today’s socially connected Internet era, bashing of brands (entities or individuals) is becoming more common and trust me, just like any of us, no one likes criticism of any kind. Therefore, entities and celebrities too find it hard to take the criticism that is hurled at them (even if it is a constructive one). A common practice by most of the entities is to troll social media platforms and other web sites to keep a tab on the criticism and handle it in a best possible manner. Since it is almost impossible to keep a track of all the social media sites to handle criticism, time and again it has gone out of control and ended up damaging brands and personal images mainly due to lack of a timely response or mishandling of the same.

With the launch of the .sucks domain, the public and media (including customers and potential customers) will get a specific platform to post their experiences, concerns, opinions and sometime vent out their anger (of course). However, the scary part of this solution would be that someone, other than you (the brand owner), owning that specific platform (www.yourbrand.sucks), would leave you with virtually no control over it!

The pricing controversy
Generally, a new domain is launched through a sunrise period before it is opened to the general public. In this case, Vox fixed the sunrise period price at $2499 which was considered exorbitantly high. The sunrise period was extended by a couple of months which added more fuel to the fire which finally ended on 19th June 2015.

From 21st June 2015 onwards this domain is open for regular registrations with reduced price, however, it is still considered to be high by many, as Vox has created various categories such as “Premium” and “General” under which the “big names” are still selling at the price of $2499.

Role of ICANN (Internet Corporation for Assigned Names and Numbers) and Slip ups
As you all would know, ICANN is the only authority in the world controlling the domain names. It has launched over 400 new domain extensions such as .CEO, .consulting, .social, .menu, .tech etc. in past year or so. However, the .sucks was the only domain which got more attention and criticism across the world for various reasons. Faced with mounting criticism and controversy, ICANN made failed attempts appealing to the U.S. Federal Trade Commission (FTC) and Canada’s Office of Consumer Affairs (OCA) seeking review of the legality of the .sucks domain extension1.

ICANN seems to have made a statement to the effect that it approved the .sucks domain because no one objected to it. The statement goes on to say that ICANN lacks the authority to block the domain or control its pricing.

What are big organisations and celebrities doing?
As of now, several large and well-known organisations like Google, Amazon, Microsoft, Yahoo, eBay, WhatsApp, have registered different variants of the .sucks domain. Similarly, many celebrities such as Taylor Swift, Justin Bieber, Oprah Winfrey, Rihanna, Mark Zuckerberg, Hillary Clinton etc. have registered their own .sucks domains. However, there are still many organisations (such as Twitter, LinkedIn and Indian biggies like Infosys and Wipro) that have apparently not yet taken any action against the potential threats of .sucks domain2.

What should you do?
If you are an organisation of repute or a celebrity and worried about uncontrolled criticism, you must consider registering .sucks domain. Even if you do not wish to have a website with the .sucks domain, Vox provides an option of blocking the domain so no one else can do it. This option actually costs about 25% less!

How to go about it?
If you are lucky or if your brand/name was not considered valuable enough by others, you may check the availability of your .sucks domain at https://www.registry.sucks/ and register or block it.

The domains have been classified as standard, premium, market premium etc., some of which are:

Standard: It includes names that don’t fall under premium or market premium categories and are available on first come first served basis. Registration and annual renewal cost is currently $ 249.

Premium: Vox has created a list of names which it thinks has a high market value. These premium names such as LinkedIn, Twitter, Infosys, Wipro are priced at a much higher cost i.e. $ 2499.

Conclusion
Amidst the raging .sucks controversy, it is expected to gain momentum going forward and drag many entities and celebrities into it. Where a handful of organisations have been proactive in registering this domain as a defensive step, others are either not aware of it or do not consider it to be a potential threat.

In my personal view, it is just a matter of time before disputes over the .sucks domain start, as cyber squatters are out there to make a quick buck and create trouble for valuable brands. In light of the above and without questioning ICANN’s authority or pre-empting what would be the future of this domain, it is recommended that you buy or block the .sucks domain, subject to your brand having market value and also if you believe that someone else might misuse it, if left unregistered. You may also consider blocking/buying it (of course, subject to availability), to avoid paying cyber squatters a hefty price and to give you the option to use this domain in the future if you so wish.

1: https://www.wxnetwork.com/the-controversial-sucks-domain-and-how-to-protect-your-brand/

2: http://marketingland.com/big-brands-sports-teams-celebrities-tech-companies-among-3400-early-sucks-domain-registrants-133621

3: https://www.registry.sucks/products

Charles Dickens and copyright

Authors’ Licensing and Collecting Society has published an interesting article on Charles Dickens's copyright campaigns by my Society of Authors management Committee colleague Lucinda Hawksley who happens to be the novelist's great great great granddaughter, and a patron of the Dickens Museum where there is currently an exhibition devoted to the subject. I have long intended to go to the museum, so perhaps with this incentive I will achieve this aim - as I failed to do recently when the RAF Museum had an exhibition of Biggles-related paintings. Although as I can find no mention of any such exhibition on the website, perhaps I am already too late. Curiously, one of the few references to copyright is to the Museum's archive of images, which they claim is "the world's most extensive copyrighted range of images connected with the author." The term of protection has increased since his lifetime, but not that much.



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The Ukulele Orchestra of Great Britain v Clausen & Anor (t/a the United Kingdom Ukulele Orchestra) [2015] EWHC 1772 (IPEC) (02 July 2015)

According to BBC News, the Ukelele Orchestra of Great Britain has won in court against the UK Ukelele Orchestra, a German band albeit composed of British uklelists. The judgment is on BAILII: The Ukulele Orchestra of Great Britain v Clausen & Anor (t/a the United Kingdom Ukulele Orchestra) [2015] EWHC 1772 (IPEC) (02 July 2015). It's a trade mark infringement (the claimants, a partnership albeit only of two people, not much of an orchestra, have a CTM), passing off and copyright infringement case. The case illustrates the importance of the action for passing off even given the breadth of protection given to a registered trade mark under the modern law, because the validity of the CTM was successfully challenged and therefore the infringement claim never got off the ground (which might be the reason for the confused report on the BBC website). The claim for copyright infringement also failed, but it was a slightly optimistic-looking claim relating to dramatic works. The passing-off claim, however, succeeded, as it should.

Coincidentally, the same court declared a CTM invalid in The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC), on 29 June 2015, on the basis that the trade mark had not been used in more than a single EU member state. And again, the claimant succeeded on passing off.

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