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.

A Run Through Intellectual Property Law

If only there were more hours in the day. I have finally launched the lecture series I have been talking about for years, under the general title A Run Through Intellectual Property Law. This link will take you to the page from where the recordings can be downloaded. I envisage nine lectures to cover the basics, of which I have recorded three so far: they are each about an hour in length.

Feel free to listen, and download the files to listen to on your choice of device if you wish. Just don't share them with your friends, as I would prefer you to send them to this site to download their own copies. If you have any requests for subjects I might cover in the future, please let me know - leave a comment or email me at peter@ipsojure.co.uk. If you have comments on the content, including corrections, please let me know too, but bear in mind that these lectures reflect the law on a specific date and won't be updated very frequently.

Going home: Coleman on legal education

Ron Coleman, of Likelihood of Confusion fame, is one of the most perceptive legal writers (and probably the most perceptive legal blogger) I know, although when he gets onto politics I find my hackles rising ... well, it would if I were the sort of animal that had hackles in the first place, and if I were a dog or a cat I wouldn't know much about politics, or be able to read what Ron writes on the subject. Oh dear, this seems to be getting complicated. Let's see if I can get back to the point.

Although it seems to be a post from a couple of years ago, leading eventually to a 19-year-old article, 'Go Home ...' is horribly relevant today. Back in '95 when Ron wrote the original article I was teaching would-be (or as people might say now, and perhaps would have said even then, 'wannabe') solicitors who were attracted by the notion that it was a 'clean and pleasant trade' (follow his links and allow Ron to educate you about that phrase, if, like mine, your upbringing didn't already make it familiar). And I was wondering why on earth many of them had ever thought they might stand a chance.

I found my way easily - too easily - into the legal trade. At the time, I thought it was a profession, and perhaps it was, until about 1984 when advertising restrictions were lifted. After that it quickly turned into a business, which at first seemed progressive and exciting, but perhaps the deficiencies of my route into the law were brought into sharp relief by that change. Although my father couldn't teach me the clean and pleasant trade, he could arrange for his best friend to do it, and in due course, after three years at university during which I learnt a great deal about politics, photography, journalism and real ale but very little about law, followed by a very miserable six months at the College of Law studying the new wave music that was sweeping the country at the time, followed inevitably by another six months cramming to resit the Law Society Qualifying Examination, Part II (an examination of such stunning mindlessness that has surely never been surpassed, although from what I hear the Multistate Bar Exam might run it close), I became articled to him. If you lost track of that sentence, as I did, the 'him' to whom I was articled was my father's best friend, senior partner in the equal-largest firm in Teesside, which in those days meant six partners: there were three other behemoths with the same number of partners in the area.

I realise now that my articles were a further period during which I learnt no law (but did learn even more about politics). It wasn't a great start to a career in a learned profession, but once I'd qualified I did begin to learn some law, not only on the job but also by pursuing a formal part-time course of study which led first to being awarded a Masters degree in business law, then in due course to a doctorate, and finally to a (still part-time) position at the institution that had finally given me some legal education, teaching those would-be solicitors on the new Legal Practice Course, the successor to the Law Society Finals which had replaced the unlamented Part IIs. By this time - the mid-nineties - it was firmly in the business of law student farming, in Ron's apt phrase. The parallel with the fermiers who played such an important part in causing the French Revolution is striking.

Between the late seventies and the mid nineties, legal education shifted from being a system that one could negotiate with little effort, coming out with a 'gentleman's degree' and scant knowledge of the law and moving comfortably into a clean and pleasant profession, to one which demanded hard work, much learning, and considerable expense, the end of which was admission into a far-from-clean and definitely unpleasant trade. But there remained several hurdles, even for those who had passed the LPC (and the fermiers certainly saw no advantage to failing any of their students). First, the aspiring solicitor needed a training contract.

A large number of students only embarked on the LPC after securing an offer of a training contract. Often they would be sponsored by the firm with which they would complete that final stage of their training. But many didn't, and for years after they moved on I was still writing references for students who needed to persuade a solicitor to take them on. One of them tragically succumbed to breast cancer shortly after qualifying, having secured a training contract several years after passing her exams. And to this day there is still a colossal mismatch between the production of aspiring solicitors and the capacity of the profession to absorb them. A friend who had completed her LPC a few years ago searched for a long time for a training contract, finally accepting the only one offered which was quite unsuitable and made no use of her impressive qualifications and experience; now having qualified she faces a difficult search for a job.

Ron - if I may be permitted to return to the point of this rambling discourse - remarks at some length on the vicissitudes of applying for jobs. A 'gentleman's degree' is an immediate disqualification, no matter that it be supplemented with a doctorate: the way applications are filtered takes no notice of what follows one's first degree unless it is at least an upper second. I like his comment about the 20 'top ten' law schools ... A similar dilution of the quality of legal education has taken place here, and his comments about how attractive a law school is to a fermier is as relevant in the UK as in the US. The best are excellent, but the bulk of them offer less value - but, however good the legal education they offer, none of them can offer entry into a clean and pleasant trade. Or any trade, for that matter.

Enough, already. I will feel inclined to return to this topic another time. This is a good point at which to stop, for now.

Greek yoghurt means yoghurt from Greece

Fage UK Ltd & Anor v Chobani UK Ltd & Anor [2013] EWHC 630 (Ch) (26 March 2013)  is what aficionados call an extended passing-off case. The claimant had been selling Greek yoghurt in the UK for some time, while the defendant introduced what it had previously sold in the USA as 'Greek yoghurt' to the British market sometime later. I sampled it at a running bloggers' conference last year - it seemed OK but with what I know now I'd certainly taste the thickening agent - and even came away with a pair of laces, branded with the Chobani name. I certainly won't be using them: not the sort of brand values I wish to be associated with. Anyway they won't fit my huaraches. Anyone want them? Drop me an email.



Nothing surprising about the passing-off claim here: FAGE won. A bit more interesting is the malicious falsehood sideshow, a counterclaim arising from the claimant's approach to Camden trading standards. The judge noted in particular that as he didn't imagine the trading standards department would take action without investigating the allegations first, there was little chance of the defendants (counterclaimants) suffering any damage.

Border detentions - new manual for rights owners

The European Commission has published a new manual  for rights owners wanting customs to stop infringing goods.

Rights of audience: Law Society secures rule change for IP solicitors - The Law Society

Solicitors will have the same rights of audience in the ultra-trendy Intellectual Property Enterprise Court* as they had in the Patents County Court, the Law Society  says, claiming that its lobbying has brought about this outcome. (I wish it would work equally hard to prevent the unqualified, which as I understand it remains unlawful, use of the title 'attorney' by patent and trade mark attorneys).

Although it was the Chancellor of the High Court who announced that judges would allow solicitors to appear, our too-big-for-its-boots regulator had to stick its oar in:

The SRA has also confirmed that it will not regard solicitors appearing in the IPEC as being in breach of the rules and will change the regulations to make it clear that solicitors have rights of audience.

How kind of it.

*The utterly spurious word 'Enterprise' is what makes it ultra-trendy, although I should make clear that it's the name not the court that I am describing thus.

OHIM's new examination guidelines

News  of revised guidelines from OHIM on the examination of CTM and RCD applications, which have now been published in the Official Journal.

UK Patent Office discontinues Patents Form 10 Reminder letter

The Patent Office, to give it its proper name, has announced in this statement  that it won't in future be sending out letters reminding patent applicants to file Form 10 and cross their palm with silver to request a substantive examination. For applicants with switched-on agents who have what Americans in general and patent lawyers everywhere call 'docketing systems', this won't matter, but for those who represent themselves it will be another matter. They will be told in the letter informing them of the A Publication that they have to file Form 10 and pay the fee within six months after that publication, as they already are: but the reminder which until now has been churned out two or three weeks before the end of that period will no longer be sent. The Office says it sends out about 3,000 of these letters per year, presumably many of them to agents who know perfectly well what is going on but who are either leaving it to the last minute or waiting for their client to get their act together.

3,000 letters is, these days, quite a lot, and producing a letter costs  much more than the cost of the paper and postage stamp, even in the computer age. So I can see the attraction of cutting out an unnecessary communication, though one might have thought that (again, in the computer age) some sort of automated reminder system for applicants in person could be devised - perhaps at a modest extra charge.

Advertising Standards Authority Adjudication on Trademark Office Ltd

Back in October 2013, the ASA published the result of an adjudication in which it came down as much like the proverbial ton of bricks on one of the leading producers of what I think it is fair to call misleading renewal notices: the adjudication is here. Unfortunately the ASA is not set up to do 'ton of bricks' very well, and it ends up being more like a couple of pounds of feathers, but even so ... Given that the respondent did not even take the trouble to reply to communications from the ASA, one cannot be optimistic about the chances of the parasites giving up, but I suppose that every little helps.

Two things might help more. First, the rogues use (on patent renewal 'notices') the designation 'Patent and Trademark Office'. (I pause to note that the American spelling of 'Trademark' ought to be a bit of a give-away, but will be lost on many people, who apart from anything else have for too long been exposed to far too much American 'culture' - like the contestant on Celebrity Mastermind the other day who referred to the London A-Z pronouncing the last letter 'zee'.) That includes the designation 'Patent Office' and to use that is an offence. If anyone thinks that perhaps the offence is not committed because other words are included, consider the efforts of the Architects Registration Board - and its prosecution of Ronald Baden Hellard, reported at (1998) 14 Const LJ 299. (The Court of Appeal accepted that using the affix RIBA amounted to using the style 'architect', although to be fair to the Court of Appeal there was little argument to persuade them otherwise.) Second, and this will require a change in the law which I acknowledge is as likely as an English winter without widespread flooding, as a consumer protection measure this sort of work needs to be reserved to the professions who will do it properly - and at far, far lower cost than the rip-off rates charged by the purveyors of confusing non-invoices.

There must also be an argument that they are committing a fraud, misrepresenting themselves to the inexpert or merely inattentive recipients. In which case the banking system should reject them as customers. I recently had no end of trouble when a bank with which I maintained an account detected suspicious activity on my account, to wit a payment from HMRC by way of a rebate of income tax. Unusual, perhaps, but suspicious? So why when my bank refuses to handle those funds are other banks (or perhaps even the same one) handling the proceeds of deceptive advertising?

Arbitrating licence agreements: interim relief

The mysteriously-named  AB v CD [2014] EWHC 1 (QB) (03 January 2014)  concerns not, as one might expect, a badly-behaved professional footballer or television presenter but two businesses with a licensing agreement. The agreement concerned an electronic marketplace, but no software was supplied. The claimant faced big problems when threatened with termination the licence to use a facility which was an essential part of their business, and sought an interim injunction to stop the termination until arbitration had been completed. Because the dispute was subject to arbitration, and there were obligations of confidence in addition to what one would normally expect to be inherent in arbitration proceedings, the names of the parties were not disclosed.

Why was the agreement going to be terminated? First, because in breach (it was alleged) of the licence the claimant had failed to stick to a sales and marketing plan which the licence required it to agree with the defendant (the licensor). But no such plan had actually been agreed, so there was at least an issue to be tried there. Likewise the second ground, that the claimant's business had developed in a different direction from that of the defendant, because the judge (Stuart-Smith J) thought it was arguable that the core business remained the same.

Would damages be an adequate remedy? The judge, perhaps slightly surprisingly, thought so. It looks like a clear case of a situation in which the claimant will suffer too much damage if the defendant is allowed to do what they propose to do. The situation is further complicated by the fact that the parties had agreed to limit the damages available for breach. The case-law left the judge feeling somewhat uneasy with the result, and consequently have gave leave to appeal. So, an interesting case which highlights a legal issue that's novel to me, but not, I suspect, the last word on it.

The cult of the NDA

The cult of the NDA makes for interesting reading - even though it is over ten years old. I can't remember how I got to it, following a link from somewhere, nor is it apparent who wrote it, but it's still worth a few minutes of anyone's time who's concerned about intellectual property and start-up businesses. It chimes with one of my recurrent themes, observable throughout the IP world: that intellectual property is just a means to an end, not the end itself. Even if you're a troll.