For the half-year to 30 June 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Suleman Ali, Tom Ohta and Valentina Torelli.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Thursday, 29 January 2015

Belgium asks CJEU: does the Enforcement Directive allow cost-capping in IP litigation?

From Stijn Debaene and Hakim Haouideg (fieldfisher, Brussels: katpat!) comes some pretty hot news from Belgium which ties in to some extent with yesterday's guest Katpost by Barbara Cookson on the recovery of costs in patent litigation -- but it goes wider than that and, like Belgian chocolates, is likely to make an impact that reaches from one end of Europe to the other, and beyond. Stijn and Hakim write:
In a decision of 26 January 2015, the Antwerp Court of Appeal decided to refer some preliminary questions to the Court of Justice of the European Union (CJEU) in a patent infringement action brought by United Video Properties (UVP) against Telenet.

In April 2012 [and thankfully not 2002, as an earlier version of this blogpost erroneously stated] the President of the Antwerp Commercial Court revoked the Belgian part of United Video Properties' patent for lack of novelty. UVP appealed to the Antwerp Court of Appeal but, after a negative decision in the United Kingdom on the UK part of the same patent (in proceedings against Virgin Media), UVP withdrew its appeal. This meant that the only issue that remained to be decided was the costs.

Telenet argued that, if Belgian law as it stands today were to be applied,
* it would only recover a small part of its attorney fees. The Belgian Act of 21 April 2007 and a Royal Decree of 26 October 2007 indeed provide that only small capped amounts can be recovered from the losing party as compensation for the attorney fees of the successful party.

* it would not recover the fees it paid to its patent attorney as Belgian case law only provides for the possibility to recover this type of costs where the unsuccessful party acted wrongfully and the fees were incurred in consequence of that wrongdoing.
Accordingly, argued Telenet, Belgian law violates Article 14 of IP Enforcement Directive 2004/48 ["Member States shall ensure that reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity does not allow this"] and asked the Antwerp Court of Appeal to refer preliminary questions to the CJEU. On 26 January 2015 the Antwerp Court of Appeal in essence asked the CJEU whether Article 14 may be interpreted as authorising
* a system of small capped amounts as provided for by the Belgian Act of 21 April 2007 and a Royal Decree of 26 October 2007,

* case law that holds that the successful party can recover the fees it paid to a technical expert only when the losing party acted wrongfully.
We believe this case potentially has a huge European impact, as Belgium is not the only Member State to have a system under which only a small part of the real attorney fees can be recovered from the losing party in a IP dispute.
Says the IPKat, it's plain from the wording of the questions that the referring court, omitting the word "patent", contemplates a ruling that encompasses all forms of IP litigation and not merely patent suits. The CJEU, however, has a track record of not giving answers that run wider than the facts of the underlying national litigation. While it is important to take account of considerations of procedural economy and of not extending a ruling beyond points on which the parties are prepared to argue, it seems immediately apparent to this Kat that there is a more important reason for answering the Antwerp court's broad questions quite narrowly.  The words "reasonable and proportional legal costs" are likely to measured by quite different yardsticks in patent litigation than in cases involving trade marks, copyright or designs and the relatively short life of the patent and the impact of technological obsolescence may justify additional expenditure. While it is always annoying to have to keep returning to the CJEU to get it to amplify or fine-tune earlier rulings, that may still be more desirable than giving a broad ruling that causes subsequent injustice or inconvenience to national trial courts.

Every successful IP
litigant's costs dream ...
Merpel adds, the words "reasonable and proportional legal costs" in Article 14 will be an invitation to counsel to plead before the CJEU that these concepts should also be measured against the ability to recover costs in actions that are not covered by implementation of the IP Enforcement Directive. For example, Recital 13 leaves it to Member States to choose whether to extend its provisions so as to cover actions for unfair competition, parasitic copying and the like.  Will the mandatory recovery of "reasonable and proportional legal costs" in litigation involving the traditional IP rights be treated differently depending on whether that principle does, or does not, extend to other rights, she wonders -- and will a different cost-capping regime determine that, in some countries, breaches of IP licences will be treated as IP infringements rather than breaches of contract?

Wednesday, 28 January 2015

The patent profession: visions for the future, problems for the present

The typical successful patent practitioner
of the mid-2030s: technically savvy multi-
tasking female, working from home ...
Visiting a group of patent and trade mark attorneys (but mainly patent folk) the other day for a friendly chat over a sandwich and sushi, I was asked what I thought the profile of a typical successful patent practitioner might be in 20 years time. My colleagues were a bit surprised and perhaps a bit amused when I opened with the words "She will be ..." since, while change is in the air, the patent profession is still under-represented by women, particularly when compared with the other major branches of intellectual property practice [on this topic, new readers to this weblog may wish to read the recent posts here and here, together with a selection of the best and worst of our readers' comments].  I added that the typical successful patent practitioner of the mid-2030s would almost certainly have a wider range of peripheral skills and knowledge and thus be able the better to engage with clients in taking a holistic approach to what the client may perceive as a purely legal issue. Thus, in answer to the question "can you patent my invention?", the client will not just receive a yes/no response but will be prompted to consider a variety of different commercial and strategic options. This Kat believes that  this is already happening to a not inconsiderable extent in many practices and among more experienced practitioners, but he feels that professional training and better use of information and resources already available online will enable the successful patent practitioner to advise across a larger spectrum of issues with greater confidence and at a higher level of competence than at present.

The unified patent court: newly
 hatched, but misconceived?
When it comes to litigation however, it is less easy to profile the successful patent practitioner, at least in the new Europe.  Regular patent attorneys, patent attorney litigators and solicitors are all equally disadvantaged by the ongoing uncertainty as to how the unitary patent and the unified patent court will change their lives and those of those of their clients, and as to the extent to which they will need to prioritise their cultivation of patent claim interpretation, drafting pleadings, manipulating procedural rules and advocacy.  The new system should be a newly-hatched chick, freshly emerging from its shell and ready to face the world as it assumes its pre-ordained form. Instead it more closely resembles a stream of escaped yolk, oozing from the shell in a direction of its own making: all agree that it may have some value, but will it in practical terms be of any use?

Group therapy plus refreshments and net-
working: the ideal mix for a patent conference
So how do we get from where we are now to where we want to be in, say, 2035?  There are three basic approaches: one, through the media, is based on the transmission of relevant legal fact and principle, so that it can be absorbed, understood, and applied where necessary. A second, through training courses, mock trials and workshops, gives people the opportunity to practise skills that require and transcend knowledge: writing specifications, drafting claims, pleadings and contracts, advocacy techniques and the like.  The third, of which this Kat is particularly fond, is the sharing of individual and collective uncertainty, ignorance and unfamiliarity with the best way to tackle uncharted issues: this for him is the best justification of the patent conference, where speeches and sessions are not mere exercises in the transmission of fact but a catalyst.  There, you have the chance to discover that you are not alone: your doubts and anxieties are those of the people attending with you, and both the sessions and the discussions surrounding them can provide insight where one there was a professional fog, clarity in place of confusion.  Although the word "networking" is overused by many conference organisers and disparaged by cynics as a euphemism for "having a good time, ideally at someone else's expense", a good conference gives those who attend the chance to speak with one another, to listen, to engage in professional dialogue and to come away with a sense of collegiality, a feeling that something has been gained by the sharing experience.  Judging by the fact that there have been a fairly large major international patent events over the past couple of years, most of which have been well attended, this Kat suspects that both those who organise these events and those who attend them feel much the same way as he does.

On a personal level, this Kat notes with some pleasure that Managing Intellectual Property magazine's International Patent Forum 2015 will soon be with us, running on 10 and 11 March.  This year's must be the third, since he was pleased to announce the second last year.  This Kat -- who has a soft spot for the magazine since he founded it in 1990 and was its first editor -- is pleased to see that admission is free for in-house corporate and patent counsel, academics and R&D professionals and that it is once again offering a £300 discount to readers of this weblog who register for it [to claim this discount, private practitioners should email registrations@managingip.com, quoting "IPKAT"].  The venue is once again London's Waldorf Hilton Hotel, which is not 100 miles from his base in Holborn, so he may well be popping in to enjoy the ambience, say hello to his friends and pick up a little inspiration.

The line-up of speakers has some familiar countenances plus a sprinkling of new faces.  Corporate speakers include Clemens Heusch (Head of European Litigation. Nokia), Julie Dunnett (Director of IP, GKN Aerospace), Kevin Fournier (IBM), Leonid Kravets (Interdigital Communications), Ian Hiscock (Head of IP Policy and Litigation, Novartis) and Adam Pilcher (Metaswitch Networks), and this Kat will be curious to know how confident are the patent decision-making processes in the enterprises which they represent. To give just one example, he has heard several different versions of what US software patenting is all about in the wake of Alice v CLS Bank [noted on this blog by Darren here], but what is the reality on the ground so far as patents examined and granted before and after Alice are concerned, and for examiners, businesses and investors?  Likewise he has received mixed messages concerning China's patent grant and protection policies. These are great topics to talk through and to see how much consensus can be reached when patent owners and practitioners can get put their heads together.

The Forum's website can be accessed here. See you there?

Snatching defeat from the jaws of victory: the pain and the pleasure of a bondage frame dispute

All litigation takes a toll of litigants, whether in terms of money expended, time consumed, emotions drained or blood pressure sent racing.  The following guest piece, by long-standing Katfriend, IP practitioner, blogger and Old Nick devotee Barbara Cookson, reflects on an example of a case that yielded the injured party a good deal less and cost considerably more than he originally expected. Yet with an adjustment of his own expectations and a little tweaking of the procedural issues, things could have been so different ...

Snatching defeat from the jaws of victory

When litigating in the Intellectual Property Enterprise Court (IPEC), England and Wales, there are often times when the costs are in danger of becoming significantly greater than the damages in issue. While the costs cap allows those with smaller value claims to have access to justice, costs can become equally contentious.

One of the claimant's frames --
or a machine for extracting costs?
On 22 January 2015 Judge Hacon gave a written costs judgment in Haiss v Ball [2015] EWHC 74 (IPEC). The costs judgment is suitable for children whereas the principal liability case at [2013] EWPCC 35 may need to be treated with caution as it concerns frames for use during sexual activities involving bondage. At trial in July 2013, Mr Ball was found by Miss Recorder Amanda Michaels to have made infringing products. Damages could not be agreed and were eventually assessed on inquiry on the now almost inevitable user principle [on which see Barbara's earlier guest Katpost here] at 10% in December 2014 at [2014] EWHC 4019 (IPEC). This resulted in the sum due being a paltry £2,859.20 plus interest. Once that judgment was handed down, there remained the usual argument on costs. The idea in the IPEC is that costs should be determined quickly from pre-prepared schedules and that the costs decision be delivered immediately so that it can be recorded in the order prepared by the advocates. This means that both counsel and solicitors -- if present (which they may well not be) -- try to listen while simultaneously scribbling down the judge’s words. The term for this is "taking a note". You cannot use a tape recorder or other instrument for recording sound. It is contempt of court if done without leave of the court. You can of course pay for the official court recording to be transcribed, assuming that there were no faults in the recording process [This Kat can see no good reason for banning the use of recording instruments in the digital age, in which the art of short-hand writing is all but obsolete and grown-up adults can be trusted not to abuse the facility].

The problem comes when there have been offers and it is not a simple matter of assessing this costs incurred by the winning party.

Short-hand? No way!
In this case, since Haiss and Ball already had their two IPEC hearing dates, there was no time left to determine costs when judgment was handed down so it had to be done on the basis of written submissions. The good side of this is that we get the benefit of the written analysis. However, Judge Hacon doesn’t like it and makes the point that “the parties should ensure that sufficient time is set aside by the court for the hearing following judgment”. This, naturally, is all done in private so anyone interested in the costs may find themselves staring at an empty court room -- as happened to me when I attended the handing down in the Marrubi inquiry as to damages (here). At a later date, on 16 January, a good two hours were spent by the parties in sorting out the question of costs following a Calderbank offer [an offer of payment in settlement of a claim which is made without prejudice, save as to costs] that turned out not to have been beaten. Judge Hacon also gave an extempore judgment on that occasion which, had his predecessor (Mr Justice Birss) known at the pre-trial case management conference what he knew at trial, he would have transferred the case to the small claims track. This had the result that there was no costs order at all for the whole of the inquiry. But I digress ...

In Haiss v Ball, the offers to settle were Civil Procedure Rules (CPR), Part 36 offers. Judge Hacon begins his judgment by making a general observation encouraging IPEC litigants to take a realistic view as to the likely outcome. In his court, by the time of the case management conference, or completion of pleadings, the parties should be sufficiently informed to make a well-judged offer under CPR Part 36. Part 36 is not the simplest part of the CPR for an inexperienced litigators to navigate (but inexperience gives you no concessions) and it is also scheduled to be updated from 6 April 2015 (there's a useful post on that from McDaniel & Co, here). Nevertheless, Mr Ball -- then acting as a litigant in person -- had made a £15,000 Part 36 offer in August 2013. As is normal for a Part 36 offer, it did not include costs. The relevant period for Haiss to accept it expired without acceptance. The offer remained open under the current rule (from 6 April an offer can be made such that it is automatically revoked at the end of the acceptance period). 
Mr Ball did eventually revoke this offer on 30 December 2013. In retrospect this turned out to be a mistake because Mr Haiss did not beat it (though it would not have been a mistake had Mr Haiss seen the light and taken the £15,000 later in the day). His counsel (subsequently appointed presumably under direct access) pleaded that his status as a litigant in person meant that he should be given more indulgence than would be accorded to a company awash with high-powered legal advice. The judge preferred to accept the submission that “litigants in person, like all litigants, must live with the consequence of ill-advised procedural decisions”. The first offer was not totally pointless though, as a result of CPR 44.2(4)(c), which allowed the judge to decide in his discretion that Mr Haiss was unable to claim his costs after the expiry in September 2013 of the relevant period for the offer which he clearly should have accepted. Mr Ball, however, only received his costs from the expiry of the relevant period in March 2014 on a second Part 36 offer on the same terms.

At this point I feel we should stop for a round of applause for the subtlety of a Haconian judgment ['Haconian' being defined as "sensible because it avoids going into those places that will only get you into trouble if you go there"]. The reasoning is scrupulous. The litigant in person is not allowed any indulgence. Mr Haiss is spared any criticism for the sequence of offers which are spelled out purely factually in the judgment but which suggest to the reader, who knows that the final judgement was for £2,859.20 plus interest, that Mr Haiss conducted his case with some degree of disproportionate oppression. For example it is stated that Mr Haiss’ solicitors wrote to Mr Ball suggesting that he may wish to mortgage or sell property in order to raise the sums Mr Haiss was seeking.

Another useful pointer for the litigator in this judgment is the treatment of Mr Ball’s refusal to mediate. Mr Ball said that, due to the high cost of mediation and the low value (sic) of any settlement, mediation would not be cost-effective. The judge agreed with Mr Ball that, bearing in mind Mr Haiss’ stance with regard to the sum he felt was due by way of damages, he doubted that mediation would have been successful. The refusal to mediate therefore had no effect on the costs assessment.

For the litigator making an offer it may not always be possible, desirable or proportionate to give a detailed analysis of the computation used in this dispute. Judge Hacon confirms that there was no obligation on a party making a Part 36 offer to spell out his reasons -- he is entitled to pluck a figure from the air.

An IPEC litigant works
on reducing his blood pressure
While this began as a case where the costs of the inquiry greatly outweighed the damages, it transpired that the payment ordered still resulted in a sum (£9,710) that significantly exceeded the damages and it was paid by the winner to the loser. It should however be noted that the costs of the liability trial had been paid by Mr Ball since, at that time, he had not learnt about the subtleties of Part 36 or the desirability of representation in court. Therefore, overall proportionate justice probably has been done in purely financial terms. The impact of this case, which began in 2011, on the blood pressure of the participants is unknown to the writer but, we suspect it was not beneficial to either party.
Thanks, Barbara, says the IPKat, it's good to see how the admirable intention of the law to deal with litigation costs in a clear and simple manner can work out in practice, when the facts or the litigants are unfavourable.  Merpel, who is a bit cross-eyed from reading backwards and forwards through the CPR costs rules, wonders if there isn't an easier way of doing things. Do any of our continental cousins in Europe and our friends from more distant parts have better ways of doing things, she asks.

Wednesday whimsies

The Twitter Ten Thousand.  Earlier today the IPKat's Twitter account @ipkat attracted its 10,000th follower.  Although 10,000 is an arbitrary number and carries no greater significance on the IP social media than, say, 9,999 or 10,001, this little milestone is something that makes all the Kat team purr with happiness -- and indeed with gratitude. since without our readers, contributors, critics and followers we would be nowhere. The IPKat, Merpel and blog team are committed to providing a lean and mean Twitter service, letting followers know when new blogposts appear, making pertinent IP comments sparingly and being highly selective in the third party tweets we retweet.  Whether you are a regular on Twitter who does not yet follow us, or are preparing to sign up to that service for the first time, you are welcome to give us a try, here.


Around the weblogs.  From Canadian copyright expert Barry Sookman's blog comes two items of interest: the first is his 2014 year in review post for the Law Society of Upper Canada; the second is a set of slides that summarise nearly 60 cases that feature in his review.  There are two fresh posts on the jiplp weblog that list intellectual property books which are available for review. Remember: review the book and you get to keep it.  The books on offer are listed here and here. Class 99 carries a handy post by Krystian Maciaszek on a recent OHIM Board of Appeal ruling on registered Community designs and how to establish on the evidence that such a design would infringe an earlier copyright work. Over on the 1709 Blog, Ben Challis waxes lyrical on the theme of "where there's a hit, there's a writ".

News from elsewhere.  First to send the IPKat this link to "Royce Rizzy Hit With Trademark Infringement Lawsuit from Rolls-Royce" was the ever-vigilant Chris Torrero (katpat!), but we thank other readers for doing likewise. This Kat has also received a plethora of links to the BBC piece "Sam Smith: Tom Petty given writing credit for Stay With Me" -- a curious tale if ever there was one. According to the Beeb, "Tom Petty has been given a song writing credit on Sam Smith's hit Stay With Me, because of the similarities to his 1989 track I Won't Back Down".  This is the result of an amicably-agreed out-of-court settlement and it's not known whether any money is changing hands [apart, presumably, from Smith and Petty to their respective legal teams, thinks Merpel].


Call for papers.  The University of Southampton's Law School is holding a conference, "Enrolling internet intermediaries in the law enforcement process - Challenges and opportunities" on 17 and 18 September. You can check it out here.  This iCLIC event, the first of its kind, seeks to being together researchers, legal practitioners, industry actors, digital rights advocates and NGOs to debate key issues for the development of the internet.  If you'd like to respond to the call for papers, you'll find the relevant details here. But note the deadlines, the first of which is 26 March for the submission of abstracts.


Patent attorneys seem to be
getting younger these days
IPSoc again.  The IPKat’s ears pricked up when he heard about the forthcoming events that IPSoc has in store this year. For those not in the know, IPSoc is the society for junior lawyers that brings together solicitors, barristers, patent & trade mark attorneys and legal executives for a spot of learning and socialising in a congenial, relaxed environment. IPSoc, which has an impressive pedigree and is now in its fifth year, draws impressive speakers to their creative “educationals” which mop up those pesky CPD points and as well as fun social events throughout the year. This Kat wonders whether, with annual membership dues at only £40 [that's roughly what it costs to watch Cats at the London Palladium], any self-respecting Kat-in-the-making can afford not to be a part of this exciting venture.

Kicking off the events this year is a social, giving the opportunity to mix with fellow members on 12 February -- to which it is not too late to sign up. Hot on its tail is a great educational which is a must for every fashionable Kat: an update on "Victoria’s Secret, Rihanna and the Future of the Law of Trade Marks and Passing Off" by Charlotte May QC on 4 March. This event is only open to fully paid-up members so, if you aren’t a member, now is the time to join. For more information on IPSoc and on how to become a member please visit its website or email membership@ipsoc.org.


EPO Blues? No, not at all.  Yesterday's Katpost by Merpel,"Life as a patent examiner according to the EPO: paid-for article in the New Scientist", recorded, without criticism or comment, the fact that the European Patent Office had paid a highly respected journal to carry an interview with someone who, it now seems, may not actually be an examiner on life as an EPO examiner.  This blogpost encouraged many of our contributors to fire off their salvos against or in defence of the beleaguered body -- but also inspired the following parody of that great ABBA hit and earworm par excellence Money Money Money.



I sleep all night, I work all day, to pay the bills I have to pay
Ain't too bad
And when they’re paid there’s still a sizeable amount that’s left for me
Makes me glad! In my dreams I have a plan
To become a wealthy man
I check on patents filed by all, I fool around and have a ball...

Money, money, money
Really funny
In this rich man's world
Money, money, money
Always sunny
In this rich man's world
Aha-ahaaa
All the things I can do
‘Cos I have a lot of money
In this rich man's world!

The perks we have are hard to find, to them I’m totally resigned
Ain't no fad!
We’re paying no one's income tax, the atmosphere’s pretty relaxed
Great launch-pad
For a future in IP
As a well-paid patent attorney
And make a fortune in that game, my life will never be the same...

Money, money, money
Really funny
In this rich man's world
Money, money, money
Always sunny
In this rich man's world
Aha-ahaaa
All the things I can do
‘Cos I have a lot of money
In this rich man's world!

But in this ointment there’s a fly, that’s known to all and sundry by
Benny Batt!
He’s trying to end Elysium by introducing his kingdom
Autocrat!
Thinks he’s got je ne sais quoi
But in truth it is L’état, c’est moi
Suspending members of the Board, that has the whole of Europe floored

Money, money, money
Not so funny
In this rich man's world
Money, money, money
Things are gummy
In this rich man's world
Aha-ahaaa
All the things I can’t do
In this gilded cage of of money
In this rich man's world!

Website blocking in Greece: how does it work there?

Yannos Paramythiotis
Debate around online copyright enforcement has intensified over the past few years, particularly with regard to blocking injunctions, and will likely be even more so this year

The recent decision of the Court of Justice of the European Union (CJEU) in Telekabel [here and hereheld that such measures are compatible with EU law, and that it is left to the concerned internet service providers (ISPs) to determine how best to achieve the result sought by the relevant rightholder(s).

In the UK several website blocking orders have been issued since the introduction of s97 CDPA, and via the Cartier decision [here and here] it is now clear that such measures are also available against websites that advertise and sell counterfeit goods.

But how does website blocking work in other EU Member States, eg Greece?

Katfriend and fellow blogger Yannos Paramythiotis (@Paramythiotis_Y) reports on a recent decision of the District Court of Athens on this very issue.

Here's what Yannos writes: 

"With a 49 page decision (13478/2014) on 22 December 2014 that leaked on the internet before its official release, the District Court of Athens dismissed the application of five Greek collective management organisations for an injunction that would oblige Greek ISPs to block pirate sites. 

The dismissal was justified on fundamental freedoms grounds and conflict with the principle of proportionality. 

Background

Grammo, Athina, OSDEL, AEPI and EPOE are Greek collecting societies managing copyrights and related rights. Relying on Art. 64A of the Greek Copyright Act, by which Greece implemented Art. 8(3) of the InfoSoc Directive into its own national law, they requested that the defendant ISPs should enforce technical measures to block websites infringing the rights of their members. These included notorious torrent sites like thepiratebay.se, kat.ph and isohunt.com and local online forum sites that provide their members with hyperlinks leading to sites where infringing content can be downloaded (like Rapidshare, Mediafire etc). One of the collective societies (Grammo, representing phonogram producers) went further and requested that the ISPs should be forced to deliver all archives containing Internet traffic data relating to those sites. This information would then be used in trial following a lawsuit against the owners of the infringing websites.

Copyright infringement
does not trump
data protection in Greece
The Court’s decision

In relation to the request for exposure of traffic data, the court held that the right of the collective societies to request an order for communication of documents, according to the Greek laws implementing Art. 6 of the Enforcement Directive and Art. 15(2) of the Ecommerce Directive can be only exercised in compliance with the legislation regarding data protection and confidentiality of communications. 

According to that legislation ISPs are obliged to reveal the identities of the persons behind the IP addresses and give information about Internet traffic only in regard to certain specific major offences listed in an exclusive manner in Art. 4 of Law 2225/1994. Copyright infringement is not within that list.

As long as the list is not amended, copyright and related rights holders are practically deprived of that legal instrument. In view of that, the significance of blocking orders is even greater for rights holders. It is worth mentioning that the Greek culture minister proposed the inclusion of copyright infringement in the aforesaid list through an amendment proposal brought to the Greek Parliament on 22 December 2014. The proposal was however withdrawn following harsh criticism from the opposition and some MPs of the coalition government parties.

Concerning the request to block access to specific websites the court’s reasoning is –in its main points- as follows:

Linking does not constitute copyright infringement neither as an act of reproduction nor as an act of making available to the public. The Court made no reference to Svensson [Katposts here] but only to pre-Svensson outdated theory. Did the judge disagree with the CJEU regarding the nature of the act of linking or was she simply not familiar with the decision [that would be in contrast with Dutch Advocate Generals, who are instead very much familiar with Svensson and its progeny]? Here’s a lost opportunity to have Greek case law on whether linking to unlawful content is communication to a “new” public or not.

Washington scandals?
A walk in the park compared to 
ignoring Svensson
The content distributed through p2p technology is not necessarily infringing. It could include free information or works. This would be either because these lack originality or because they have fallen into the public domain or because their communication to the public is permitted by the authors, eg under a creative commons license. The same can be said in relation to sites giving access to torrent files or links. The fact that an IP/DNS blocking measure cannot discriminate between infringing and legal content can deprive Internet users of access to online information, thus violating their freedom to information and freedom to participate in the Information Society (see Art. 5A of the Greek Constitution). This is the CJEU reasoning in Scarlet [and also in Telekabel]. In that case the CJEU ruled on the legality of content filtering, ie the installation of a system that would monitor all the electronic communications made with the use of p2p software through the network of the ISP. The Greek court extended the decision’s reasoning to IP/DNS filtering. The websites could also contain lawful data. Users’ access rights prevail over IP rights. The court equated the legal implications of two different technological measures (content filtering – IP/DNS filtering). Is this justified? In order for one to decide, one would have to know at least the lawful content/infringing content ratio of the websites.

-  The measure of blocking is not suitable to achieve protection of the rights holders, because the said websites can be easily transferred to a new IP and DNS. This fact, in combination with the disproportionate limitation of users’ and ISPs’ rights, leads to a conflict between the measure sought and the principle of proportionality.   

Be specific, please!
Such a measure can only be acceptable if it leads to the blocking of a specific part of a website but not of the website as a whole. So this means that in contrast to “www.example.gr” the blocking of “www.example.gr/piratedmovie” is OK. With that assessment the Court overcame the obstacle of freedom of information and gave rights holders the ability to request the blocking of specific parts of websites that distribute infringing content. The rest of the website that offers legitimate content remains accessible. No freedom of information or freedom to participate in the Information Society violation. Do we have the privilege of creating the term “deep-blocking”?

Apart from the above mentioned the court “borrowed” from Scarlet also in regard to the antithesis of blocking measures to Art. 15(1) of the Ecommerce directive and to the ISPs’ freedom to conduct business. The nature of the requested measure makes it difficult to follow such an opinion. Website blocking is an inexpensive “one off” measure while content filtering is an on-going costly procedure that covers all future data transmission through a specific technology (p2p).

To sum up: the Athens Court rejected blocking measures in all cases with the sole exception of blocking specific parts of a website. The decision is in contrast with the earlier – and the first one ever in Greece - 4658/2012 decision of the same Court, which found that the requested blocking of two websites is proportionate and in compliance with constitutional rights."

Forsgren's SPC: what does the marketing authorisation have to say about the active ingredient?

In a recent judgment, Case C‑631/13, Arne Forsgren v Österreichisches Patentamt, the Court of Justice of the European Union (CJEU) had to again consider a referral about a Supplementary Protection Certificate (SPC). The judgment was about

* whether an SPC could be obtained to a product per se in ‘separate’ form when the marketing authorisation was for a medicine in which the product is covalently bonded to other ingredients 
* whether the SPC could rely on a marketing authorisation which only described the product as a ‘carrier protein’ and did not provide any information about an independent therapeutic effect (such as the one described in the patent on which the SPC was based).
What are SPCs?

Using someone else's marketing
authorisation can cause trouble
Normally when a medicine is being developed a patent application is filed at a very early stage. It then takes many years to develop the medicine and to perform the tests necessary for obtaining regulatory approval (or ‘marketing authorisation’).The purpose of SPCs is to provide protection for specific defined medicinal products beyond the term of the original ‘basic patent’ as a way of recompensing the patentee for the time taken to obtain regulatory approval, during which commercialising of the medicinal product was not possible. In Europe SPCs for medicines are governed by Regulation 469/2009 and are obtained based on the patent and the granting of a marketing authorisation for the medicinal product. A separate, very similar, Regulation governs SPCs for plant protection products.

Previous SPC referrals to the CJEU

There have been a surprising number of referrals to the CJEU which concern clarification of the SPC Regulation (see Katpost here). The Regulation is very short and has little description of how the active ingredient, the claims of the basic patent, the marketing authorisation and the product protected by the SPC need to relate to each other. Some of the issues that have arisen have been due to combination products, such as whether a patent to product A can support an SPC to product A+B (see discussion of that here and a Katpost about whether that can be fixed by post grant amendment of the claims here). Essentially the case law is strict on the relationship between the claims of the patent and the definition of the product in the SPC, but there is more flexibility concerning how these relate to the specific medicine that was tested and described in the marketing authorisation. For example, a marketing authorisation which describes a combination product can support an SPC that relates to a single medicinal product which is part of the combination product. The marketing authorisation does not have to be your own. It can be any that relates to your product.

The CJEU has previously decided that an ‘adjuvant’ which enhances the therapeutic of another substance, but which does not have its own therapeutic activity, cannot be an ‘active ingredient’ as defined by the Regulation and therefore cannot be the subject of an SPC (see SPC Blog post here). However in the field of SPCs for plant protection products the CJEU has also decided that a ‘safener’ which protects a plant from the harmful effects of a herbicide can be the subject of an SPC (see Katpost here).

The facts of the present case

Perhaps the CJEU simply enjoyed
having lots of SPC referrals
Mr Forsgren is the proprietor of European patent EP0594610B which claims as a product per se Protein D, an IgD binding protein of Haemophilus influenzae, and describes its use in a vaccine against this bacterium. He now wished to obtain an SPC in Austria to Protein D based on a marketing authorisation to ‘Synflorix’ filed by GlaxoSmithKline Biologicals. Synflorix is a vaccine against conditions caused by Streptococcus pneumonia and contains pneumococcal polysaccharides covalently bonded to Protein D, which is acting as a carrier molecule. The marketing authorisation specifically points out that there was insufficient evidence that Synflorix provided protection against Haemophilus influenza. The Austrian Supreme Patent and Trade Mark Adjudication Tribunal (the ‘referring court’) asked the CJEU to determine whether an SPC could be granted in these circumstances for Protein D per se, where in the marketing authorisation it is described as covalently bonded and only acting as a carrier protein, with no reference to its therapeutic activity against Haemophilus influenzae.

The arguments

Mr Forsgren argued that Protein D present in Synflorix would have two effects:
* as a vaccine against Haemophilus influenza, and 
 *as an adjuvant for the pneumococcal polysaccharides.
For the first effect he argued there is nothing in the Regulation that requires the marketing authorisation to refer to the therapeutic effect. For the second effect he referred to the CJEU’s previous ruling that an SPC could be granted for a ‘safener’.

The referring Court argued that the covalently bound form of a substance would have different properties, and thus an SPC could only be granted for the covalently bound form of Protein D. It also argued against the granting of the SPC based on the fact the marketing authorisation did not refer to the independent activity of Protein D against Haemophilus influenzae.

The European Commission also made submissions, arguing that the SPC system needed simplicity and transparency, which would not be achieved if there was a need to look beyond the marketing authorisation to establish whether a substance was an active ingredient.

The CJEU’s response

The CJEU found that the ‘covalent bonding’ issue should not prevent the granting of an SPC.

Independent action is needed 
before an SPC can be granted
It had a much more complex response to the issue of whether the marketing authorisation was adequate to support the grant of the SPC. The CJEU hinted at the fact that Protein D may be playing an important role when Synflorix was used to treat Streptococcus pneumonia which is different to that of an adjuvant. It ultimately decided that for Protein D to be an ‘active ingredient’ as required by the Regulation it must produce ‘a pharmacological, immunological or metabolic action of its own which is covered by the therapeutic indications of the marketing authorisation’. It left that determination for the referring court to carry out, and seems to have left the door open for Mr Forsgren to try to convince the referring court that Protein D does have some independent action within Synflorix. It seems to this Kat that, unless Mr Forsgren is able to provide additional material not referred to in the present decision, the referring court will decide against the granting of an SPC.

This Kat notes that the judgment does not require the marketing authorisation to ‘disclose’ the independent ‘actions’ required for a substance to be considered an active ingredient, but only that they must be ‘covered’ by the therapeutic indications the marketing authorisations refer to. That seems to give some leniency in the information which the marketing authorisation needs to provide, but presumably also leaves the door open for future referrals on the issue!

The specific questions that were referred to the CJEU together with the CJEU’s formal answers can be found in this SPC Blog post.

Tuesday, 27 January 2015

French say "non!" to nutty name

"French court stops child from being named Nutella" is the title of a BBC news item today. This item reads, in relevant part:

A French court has stopped parents from naming their baby girl Nutella after the hazelnut spread, ruling that it would make her the target of derision. The judge ordered that the child be called Ella instead. He said in his ruling that the name Nutella was the trade name of a spread that is commonplace in Gallic homes. "And it is contrary to the child's interest to have a name that can only lead to teasing or disparaging thoughts", he pronounced.

French parents are usually free to choose the names of their children, but local prosecutors are empowered to report what they deem to be unsuitable names to a family court. ...
It would be good to know more about this law and its parameters, says the IPKat. For example, does the proprietor of a registered trade mark have the right to institute proceedings, or to be joined to proceedings which have already been commenced, in order to seek protection? Also, given the great value placed on celebrity status these days, would a brand owner be able to intervene on behalf of the parents in order to support their parental name-choice? Merpel finds it strange that parents can be prevented from naming their children after brands while there is no reciprocal protection offered to chidren whose names may subsequently be appropriated for brand use.

Italian-owned Nutella is a hugely popular brand outside France too and the ingredient that gives it its distinctive taste is a specific hazel nut, Nocciola Piemonte, which is a protected geographical indication in the European Union. The product is made by Ferrero [Merpel thinks this means "Smith"], which also includes Nutella as the filling of its Ferrero Rocher chocolates. Good news for parents is that "Hazel" is a long-accepted forename, currently in use for girls and even boys.

18 signs that your friend needs a Nutella intervention here
Why cats and Nutella don't mix here
Nutella as you've never heard it before here
Beer, pepper ... see what else Nutella is registered as a Community trade mark for here

Life as a patent examiner according to the EPO - paid-for article in the New Scientist

Fresh from publishing the thoughts of a former member of the Boards of Appeal of the European Patent Office, Merpel just noticed this article: A day in the life of a patent examiner appearing in the New Scientist.

Merpel was immediately struck by the byline "The interview was produced by New Scientist in conjunction with the European Patent Office, which paid for it to be produced."  Need the EPO be paying for publication about the career path of an Examiner in order to attract suitable candidates?

Merpel wonders what readers think about the article itself, and whether the EPO should be paying for placement of such pieces.

Disciplinary authority over the EPO Boards of Appeal: a former member speaks

A Cat speaks ...
The events that unfolded in the European Patent Office (EPO) in Munich in December 2014 have been extensively covered by Merpel on this blog, and have attracted many comments.  Almost the entirety of the internal members, and many (here and here) of the external members, of the Enlarged Board of Appeal wrote in protest at the so-called "house ban" imposed on a member of the Board of Appeal, referred to by the administration as a "member of staff". The actions of the administration were also criticised by many European judges in a letter from Sir Robin Jacob.  The Kats are delighted to receive this legal analysis of the situation from Catarina Holtz, a former member of the Boards of Appeal of the European Patent Office.  Catarina writes:
"The altercation at the EPO in December 2014 concerned a member of the Boards of Appeal who was ousted without any further ado by the President. This action was subsequently condoned in a suspension decision by the Administrative Council. 
In legal terms this is a borderline case with regard to Article 23 EPC 2000, which gives the power to remove members exclusively to the Enlarged Board of Appeal. The word “removal” suggests permanent severance from the position of member, but an action with no previous preparation should be avoided. 
Article 23 is part of the necessary self-management of a court, in keeping with the European Convention of Human Rights, Article 6 (which deals with the rights to a fair hearing and a fair trial, and primarily to a court of law). Under Article 10(2)(h) EPC 2000, the President has the power to exercise disciplinary authority over employees. However, with regard to senior employees he only has the function  to propose disciplinary actions, which are for the Administrative Council to decide upon. This rather suggests that the President cannot take action without a previous decision by the Council. Where it may be dangerous to delay, there might be a margin for actions by the President -- but this is not in keeping with the organisation of a court, where the chief of the court would have the right and function to discipline colleagues, possibly with the help of a group of colleagues (for example, as in the EPO, the Enlarged Board of Appeal). 
Decision R 19/12 means that the system in place, with the Boards of Appeal as part of the European Patent Office, is deficient in that the Boards of Appeal are not considered a court. The agreement proposed for the forthcoming European Unified Patent Court is a highly commendable model: it provides for the Boards, e.g. to be a separate body, and to have a transparent recruiting organisation, introductory education of new members and self management by the judges themselves as well as re-education during their tenure in the court and a well organised system for removal from office. Germany and Sweden have both operated such a system for several decades, with a separate patent appeal instance. This should now finally be done for the Boards of Appeal of the European Patent Office."
Catarina Holtz, LLD, SSE, Stockholm (Retired appellate judge, Svea Court of Appeal Stockholm, retired member of the Boards of Appeal of the EPO)
The IPKat and Merpel thank Catarina for her comments, adding that it is always a pleasure for the Kats to entertain a Cat ...

Linking to infringing content: the story may not be over

Hyperlinking&copyright fans
have already ordered
their custom-made T-shirts:
what are YOU waiting for?
Did you think that the story with copyright and hyperlinks in Europe was over following the decisions of the Court of Justice of the European Union (CJEU) in Svensson [Katposts here] and BestWater [here]?

Well, you were wrong ... at least if you are based in The Netherlands. 

A Katfriend who wishes to retain his/her anonymity but nonetheless tweets as Pacta Sunt Servanda (@TreatyNotifier) has some interesting news to share, concerning a Dutch reality TV star, Playboy and, of course, hyperlinks.

This is what Pacta writes:

"In 2012 Britt Dekker posed for a nude photoshoot for the December issue of Playboy Nederland, where the relevant licensee is Sanoma. 

What happened was that, prior to their publication on Playboy, the pictures were placed on Australian site filefactory.com, and a link (after litigation only available in redacted form) to them appeared on Dutch website geenstijl.nl (known for controversial and sometimes journalism-related content, and not afraid to take a legal fight). 

GSMedia’s Geenstijl published a post regarding the pictures, provided a link to filefactory, and placed an excerpt from a single picture on the website which made it very clear what kind of content was to be expected. 

Sanoma successfully sued Geenstijl before the Amsterdam District Court, but the verdict was partially reversed on appeal by the Amsterdam Court of Appeal, after which the case reached the Supreme Court (Hoge Raad). This has yet to issue its decision but, as it [often] happens [also] with CJEU cases, this court seeks the opinion of an Advocate General (AG) first.

The AG in this case, Robert van Peursem, has now issued his opinion, in which he discussed whether Geenstijl was allowed to place an excerpt from one of the pictures on its website. The AG concluded in the affirmative, taking into consideration freedom of expression concerns and relevant case law from the European Court of Human Rights. 

Most importantly, the opinion also includes an assessment of whether the link to filefactory.com constituted copyright infringement. The issue was not whether a tort ('onrechtmatige daad') was committed as this was clear (and is governed by national law), but rather whether linking to infringing content constituted copyright infringement (in this cases also EU provisions would apply).

Britt Dekker
The AG reviewed relevant case law, ending his analysis with BestWater (at 2.3.29). He concluded that, while in that case the CJEU decided that embedding content is not a communication to a new public within Article 3 of the InfoSoc Directive, it is still unclear whether embedding of illegal content falls within the scope of this provision [but wasn’t the YouTube video at stake in that case a video uploaded without the rightholders’ consent?]

At 2.3.34 Van Peursem is remarkably blunt in his statement, assuming that in BestWater the issue of embedding illegal content might have been overlooked by the CJEU:

"[The problem in applying CJEU case law here] is that the new-public doctrine of the CJEU is based on the premise that prior lawful publication exists and Sanoma et al. have not given permission of publication to any public, let alone the public of Geenstijl. Even in the BestWater case this [use of the premise of prior lawful publication] is used: first it is asserted that the content is illegal (with as an extra complication that in that case it was clear that there was no “new public”), but the motivation [of the judgment] is based on a case where legal content exists. I can only comprehend this, assuming that the illegal content character in main argument of the judgment was overlooked [by the CJEU]. Apart from that our case cannot be compared to BestWater, because in BestWater, a link was provided to content placed by a third party on an open platform (YouTube)."

Then Van Peursem indicated that the Swedish Supreme Court (Högsta Domstolen) had asked very relevant questions in C More Entertainment (Case C-279/13) [a case concerning linking through paywall circumvention]. However, the AG learned (much to his disappointment), that all but the fifth question have been retracted after BestWater [who else knew about this?]

So, the AG advised the Hoge Raad to stay the proceedings and refer 7 questions to the CJEU (2.3.37), concerning whether linking to illegal content constitutes a “communication to the public”, and to what extent it matters whether the content linked to is available on a digital safe or similar facilities. 

These are the 7 questions that in the AG’s opinion the Dutch Supreme Court should refer to the CJEU:

1) Does it constitute a “communication to the public” in the sense of Art 3(1) of Directive 2001/29, when a person -who is not the copyright holder- makes available a work -which was placed without the consent of the copyright holder by a third person an a website- on his own website through a hyperlink (in other words: in the case of [linking to] so-called illegal content)?

2) If not, does it constitute a “communication to the public” in the sense of above mentioned Article, if restrictive measures on the original site where the illegal content [note: the AG uses the English term] is placed can be circumvented, as meant in point 31 of the decision of 13 February 2014, C-466/12 (Svensson et al/Retriever)? 

Also Merpel was recently
asked to pose for PlayKat
3) If the answer to question 1) is in the affirmative: Is it a relevant factor whether the restriction measures on the original site can be circumvented as meant in point 31 of the decision of 13 February 2014, C-466/12 (Svensson et al/Retriever)?

4) If 2) or 3) are answered in the affirmative: What should be understood as restrictive measures as meant in point 31 of the decision of 13 February 2014, C-466/12 (Svensson et al/Retriever)? Are those (from weak to strong): 

a) material which is hard (but not impossible) to find without an access code
b) subscription access, paywall, password etc, 
or should there be a
c)”digital vault” situation where the content is “fully private (for 1 or more persons) and practically speaking unreachable” (and when is that the case)?

Should in this evaluation also the legal conditions of use that apply for use and access of the source site be taken into account?

5) Should in answering questions 1) and 2) be taken into account to what extent the “hyperlinker” has knowledge of or should have knowledge of the absence of permission of the rights owner, and thus knows that the links directs to “illegal content”?

6) Does it matter in 1) or 2) whether a “new public” is targeted and if so: how should this be determined, in the case that there is no “original permission” [original: permission given to the third party to place it on its website] of the copyright owner, as the case is about linking to illegal content?

7) Are there any other circumstances that should be taken into account to answer the question whether providing access through hyperlinks to illegal content should be regarded a communication to the public?"

Thanks so much Pacta for this great update from The Netherlands. The decision of the Hoge Raad is due on 3 April, and The IPKat will let you know what it decides to do. Stay tuned!

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