For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Monday, 30 June 2008

Can you help?

Not for the first time, IPKat team blogger Jeremy is searching the readership of this weblog for some help. If you

* have a good understanding of trade-related intellectual property issues;

* are familiar with investment-related literature as well as traditional IP law;

* have a credible research track record;

* have some spare time between now and December;

* can travel to London maybe two or three times without undue inconvenience;

* are interested in doing some remunerated casual research under his supervision,

please let Jeremy know by emailing him here, using the words "Research project" in the title and if possible sending a short but current CV. Jeremy will try to acknowledge all responses by the end of the week.

The Modern Law of Trade Marks, third time around

There comes a time in every lawyer's life when he needs more than just an internet connection and a smattering of favourite sites -- that dreadful moment when he has to consult a book. If he needs some joined-up thinking in the field of trade marks, and he's an English-speaking practitioner with a UK/European practice, he might just find that the book he's consulting is The Modern Law of Trade Marks (Third edition, 2008), published by LexisNexis and positively bulging with points to ponder, references to run to and an amplitude of verba ipsissima from some very quotable members of the judiciary.

The authors of this edition are barristers Christopher Morcom QC, Ashley Roughton and Simon Malynicz, all of IP specialists Hogarth Chambers. No wives, partners or significant others have been identified in the Preface, from which it may be inferred that the authors had to write the whole thing themselves -- no mean task for a triumvirate who also have much to occupy them during the working day. There's also a Foreword by Sir William Aldous, who opines:

"I expressed the hope in my foreword to the second edition that the problem of the delays involved in references to the European Court would be solved. Unfortunately it has not been ... This the national courts realise. It has led to reluctance on behalf of the parties and the courts to refer".
The IPKat disagrees. It seems to him that in many disputes there's always at least one party who is delighted that there will be a reference for a preliminary ruling, since it buys him time -- and the judges seem quite excited about referring their questions to the ECJ now that they've been encouraged to offer their suggested answers too.

Right: if you think your hoover is a dyson, you might think of adding this tome to your Christmas present list.
According to the publishers, who admittedly have a vested interest in saying nice things about it,

"The Modern Law of Trade Marks is a comprehensive guide on trade mark law enabling practitioners to provide clients with effective advice with the best possible support and authority [the IPKat says, if you look at the case law, you'll see that this book is actually a monument to decades of clients having either followed bad advice or chosen not to follow the good advice]. It includes detailed analysis of important UK and European legislation and decisions [which is why it has expanded to nearly 1,800 pages in length], in-depth commentary on the complexities of the Trade Marks Act 1994 [from some out-of-depth drafting?] and the Madrid Protocol and the CTM Regulation.

All aspects of registered trade marks are included, together with information on applications, registration, protections and infringement. Divided into 7 parts, key topics covered are: Background to the Law; Registered Marks; Passing Off; Civil Proceedings; Customs and Criminal Offences; International Treaties; and the Community Trade Mark".
The IPKat thinks that this is a fair description of the content. He is particularly pleased to see that the sections on customs and criminal offences have a lot more meat in them and are really very good now, probably in response to the confession by many law firms that they're not so big and important that they don't do that kind of grubby work. The sections covering criteria of registrability are also clear, well-structured and easy to follow, which makes them a pleasant change from some of the impenetrable source material which they have sought to explain.

On the downside, the IPKat appreciates that little has been written about the effect of the Intellectual Property Enforcement Directive 2004/48 and that, throughout Europe, there has hardly been any case law, but he feels that pretty well everything we've ever learnt about civil remedies is now under the shadow of the Directive and that there should be a great big disclaimer at the foot of every page of the section on Remedies, saying "All this is subject to the interpretation and application of Directive 2004/48".

As for the book itself, the Appendices start at p.953, which means that readers are getting around 800 pages of further padding in the form of things they're already got copies of several times over in their offices and libraries (though he's delighted to see the oft-forgotten Trading With the Enemy Act among them). The IPKat would rather see a lighter, cheaper book on sale, seeing as anyone who wants to have a copy of the relevant provision with him when he's reading the authored text will probably want them both open at the same time, which you can't do when they are all bound into the same volume.

Bibliographic data: hardback, cxv + 1,767 pages. ISBN 9781405727556. Website here. Rupture factor: severe

Sunday, 29 June 2008

Fancy improving your IP writing skills?

Two years ago the IPKat, under the auspices of team blogger Jeremy, ran a half-day course entitled "How to Improve Your Intellectual Property Writing Skills". The course covered basic principles of good writing, then moved on to genres such as articles, case notes, correspondence and summaries, looking at writing conventions, best practices and worst mistakes. The course culminated with an exercise in which an article published in a well-known journal was dissected and critically analysed by participants. There was also a piece of optional homework, in the form of a case note which the IPKat corrected and sent back with comments.

This course turned out to be quite fun and was held three times, welcoming participants from several countries and many different linguistic backgrounds.

Jeremy is proposing to offer this course again, if (as he suspects) there is sufficient demand for it. If will be offered initially in Central London and will be very reasonably priced (two years ago it was £65; it will be a little more this time round, but definitely under £100, inclusive of course materials and light refreshments).

If you want to improve your writing skills -- or want to improve the skills of a colleague -- and want to be kept informed, email Jeremy here and let him know, being sure to use the words "Writing Course" in your email subject line.

Saturday, 28 June 2008

Judge not rash in psoriasis ruling

On Wednesday the Court of Appeal for England and Wales (Lords Justices Mummery, Jacob and Wilson) heard the appeal in Leo Pharma and another v Sandoz Ltd, a decision of Mr Justice Mann this March (see earlier IPKat post, "Dangerous to use common sense" Says Patent Judge, here). The Court of Appeal is not yet available on BAILII, though it has been briefly noted on the LexisNexis Butterworth subscription-only service.

Right: the IPKat is working on a new process for making calcipotriol monohydrate ...

Leo, the first claimant, held a patent for calcipotriol monohydrate, a new crystalline form of calcipotriol used to treat psoriaris, the second claimant being Leo's subsidiary. Sandoz, a big player in the generic pharmaceutical market, secured market authorisation for a cream containing the monohydrate version of the calcipotriol molecule, whereupon Leo roared "patent infringement!" and applied for an interim injunction to stop the distribution of the cream.

The question arose as to whether damages would be an adequate compensation for Leo if Sandoz were allowed to sell the cream up till the time of the trial, and as to the adequacy of a cross-undertaking in damages for Sandoz if that company were banned from selling a cream which, if it later turned out, they were allowed to trade in. On top of this, Leo's own financial difficulties were relevant, particularly in the light of its potential loss of sales and the need to reduce its own prices in order to combat the presence of a competitor in what would otherwise have been its monopoly market. Sandoz, on the other hand, wanted to protect itself against the loss of the benefit of being the first generic supplier to market the cream. Finally, the effect of the balance of convenience and the status quo fell to be determined.

Mann J allowed Leo's application. On the evidence, Leo would not adequately be compensated by damages and the balance of convenience meant that the injunction should be granted. Sandoz appealed, complaining that Mann J had erred in principle by taking into account the likelihood of Leo having to cut its prices before trial.

The Court of Appeal dismissed the appeal. In its view it was important to bear in mind precisely what it was that the judge had to consider. He did not have to decide on a balance of probabilities whether there would be price cuts if the injunction were not granted. His job was to undertake an entirely different exercise -- to consider the various possibilities that might happen before the trial, disregarding those possibilities which were fanciful. If there was any chance of a circumstance occurring, the judge was entitled to consider whether that circumstance affected the question of whether damages were an adequate remedy. That's what Mann J and his judgment could not be faulted.

The IPKat, who regarded the original decision as impeccable, naturally agrees with the Court of Appeal too.

Psoriasis here, here and here

Friday, 27 June 2008

Zipher v Markem: more bald men and combs

Readers may already be familiar with these two distinctive names, which came to the wider attention of the IP professions through the case of Markem v Zipher at the Court of Appeal (see previous IPKat post here), on appeal from three High Court judgments in August 2003 by HHJ Fysh QC. They have popped up yet again in a patents court judgment issued yesterday, reported on BAILII as Zipher Ltd v Markem Systems Ltd & Anor [2008] EWHC 1379 (Pat).

The cases are messy, to put it mildly, and any understanding of them was not helped by the partial overturning of Jacob LJ's reasoning (although not the eventual judgment) in the Court of Appeal relating to entitlement issues by the later House of Lords judgment in the separate case of Yeda v Rhone Poulenc (see IPKat post here).

The issues this time related to the substance of the patents (and of one still pending application), in particular whether they were valid and infringed, and if the patent proprietor would be allowed to amend in light of previous undertakings. Zipher, having won control after the first rounds, naturally decided to use the patents against Markem, who naturally counterclaimed for revocation on the usual grounds of novelty, inventive step, added subject matter and insufficiency.

At first instance, HHJ Fysh QC had held that Markem were entitled to some of the patents' broader claims, but that the narrower claims belonged to Zipher. Zipher's counsel Adrian Speck offered an undertaking to the court to narrow the wider claims by amendment if it was successful in establishing its claim to be entitled to them, which at first instance it was not. The Court of Appeal then allowed Zipher's appeal, acknowledging that some of the wider claims as they stood then were invalid, but did not refer to the previous undertaking.

Much discussion and argument this time involved whether the claims that Zipher were putting forward (which were not those they had previously offered to amend to) were valid, in light of many and varied pieces of prior art (and alleged prior art) that Markem put forward. Most of the claims survived this barrage of tests. Zipher would, however, have needed to make amendments in order to get anywhere with what they had. Floyd J refused to let them amend, even though he acknowledged that the law relating to the discretion of the court had been removed when sections 27 and 75 of the UK Patents Act were amended to bring them in line with the new EPC 2000. The judge's reason for refusing was that Zipher was already precluded by its unconditional undertaking to the court from making amendments which would result in claims wider than the claims they undertook to amend to in the first place. The application to amend was therefore refused, not because there was any general discretion to refuse amendments under section 75, but because the request was an abuse of process.

(Right: some patented uses a bald man can find for a comb)

However, just in case he was wrong on this point (can the IPKat sense another appeal coming?), Floyd J then went on to find that the patents were invalid for lack of sufficiency, and summed up the whole sorry mess by finding that there was really nothing left for Zipher to argue about. The patents they were trying to assert were invalid, could not be amended to give them what they wanted, some of the amendments they wanted to make would add matter, the patents were in any case insufficient, but if they had managed to get through all that then Markem would have been infringing.

The IPKat is astonished and saddened by the enormous effort (and money, obviously) expended over what in the end appear to be fairly threadbare patents. He can only conclude that this is a case where, over more than five years, the lawyers involved have been given pretty much free rein to use whatever arguments they could think up and pursue at all costs, but at no point does there appear to have been any realistic attempt made by either side to see the wood for the trees, and realise that there was in the end nothing worth fighting for. Does Jarndyce v Jarndyce ring any bells?

Friday flings

The IPKat's 'Forthcoming Events' feature, which you will find in the left-hand side-bar of this weblog's front page, contains some fresh entries which you may not yet have seen. Don't forget to check them out.


Judging by his post-box, the IPKat guesses that most of his readers spend their time between posts on this weblog in hunting down the latest news of the Naked Cowboy and his dispute with Mars over its M&M advertising (see earlier post here). Well, there have been developments. To recap, Naked Cowboy Robert Burck sued Mars Incorporated, objecting that the company had misappropriated his image by outfitting the image of a dark blue M&M confection with boots, hat, underpants and a six-string guitar, deploying this image in animated cartoon which it ran on two video billboards in Times Square, New York.

Right: Naked Cowboy -- nonsuited in his privacy claim

Judge Denny Chin (United States District Court, Manhattan) has ruled that his privacy rights have not been infringed: the law protects the “name, portrait or picture of a living person” but not a character created by a person — no matter how famous he might be. However, he has been permitted to press ahead with a separate cause of action in respect of his trade mark rights, on the basis that "consumers seeing the defendants’ advertisements would conclude — incorrectly — that he had endorsed M&M”.


The IPKat has received from many sources (for which he says "thanks") the news that an Israel Boycott Declaration will no longer be required from anyone applying for trade mark, patent or industrial design protection in Syria, following the issue of Directive 4964/1 on 4 June. The effective date of this reform has not yet been indicated.


This may not change your life, but Commission Regulation 606/2008 of 26 June 2008 amending Regulation 831/2002 implementing Council Regulation (EC) No 322/97 on Community Statistics, concerning access to confidential data for scientific purposes has just been published online in the European Union's Official Journal.

The UK-IPO's Corporate Plan


The UK Patent Office, who persist in calling themselves the UK Intellectual Property Office, have issued a corporate plan, announced on their website here yesterday. They say that this is an ambitious and demanding programme of work for itself and its "delivery partners", and is apparently a new way of working, following the Gowers report and last year's 'Innovation Nation' white paper.

(Right: the plan's cover page. What can it all mean? Is it something like that Coldplay album?)

The Minister for Intellectual Property, Baroness Delyth Morgan, says that the Government's goal is now to make the UK the best place in the world to run a creative, innovative business, with new knowledge and ideas being exploited to develop more effective products, services, processes and organisations a vital step in achieving this goal. The plan, she says, sets a "very clear and dynamic programme of activity for the next three years".

The IPKat, who is very impressed by the colourful layout of the plan, is unfortunately completely unable to tell his readers what any of it means. He was looking for some snappy soundbites to show his readers what a forward thinking and dynamic outfit he knows the UK-IPO to be, but unfortunately couldn't find anything that he could make any sense of. The following, being two of the UK-IPO's goals for next year (31 March 2009, to be precise), will therefore have to do:

  • "We will have ensured that any decisions in the EU affecting the patent system are influenced by UK thinking and show clear potential benefits for business and society (one year goal).
  • We will have shown that thinking on the CTM system has been developed on the basis of economic evidence and UK policy objectives (one year goal)."
Could any of his readers help the IPKat and others see what is really going to happen over the next 3 years (other than Baroness Morgan losing her job)?

More management speak here, here and here.

OHIM fees: time for a price reduction?

“Think Small First”: a "Small Business Act" for Europe is the catchy short title for a 21-page document, the Communication From the Commission to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions, adopted by the Commission this Wednesday.

Right: not everyone in OHIM is excited about it becoming more accessible. This design for the new OHIM Building was favoured by some of the office's less extrovert staff members

It says, at page 13:

"the Commission will make the Community Trade Mark system more accessible, in particular by significantly reducing Community Trade Mark fees as part of a comprehensive solution to the financial perspectives of the Office of Harmonization for the Internal Market (OHIM)".
Good news, says the IPKat. We've been lobbying for the fee reduction for a long time. Good news, says Merpel: making the system more accessible presumably means shifting OHIM from Alicante to a place that has a realistic selection of business flights.

The full version of the Small Business Act (82 pages) can be found here

Peer to Patent one year on

A press release informs the IPKat that Peer-to-Patent has released a report on the results of its one-year pilot project. The idea of the project was to improve patent quality in the United States by connecting the United States Patent and Trademark Office (USPTO) to an open network of scientific and technical experts to enhance the patent examination process.

Right: Peers of the realm - but can they review the prior art?

Says the press release:

"Launched on June 15, 2007 by New York Law School Professor Beth Noveck together with a network of corporate and academic collaborators and in cooperation with the USPTO, Peer-to-Patent is the first social networking project with a direct link to decision-making by the federal government. Under traditional practices, USPTO patent examiners bear the sole burden of identifying and relating information pertinent to patent applications. Under Peer-to-Patent, expert volunteers were permitted to assist in these efforts at the Web site. With the consent of participating inventors, patent applications were posted to the Peer-to-Patent site where the expert reviewers discussed the applications and submitted bibliographic information, known as prior art, relevant to determining if an invention was new and non-obvious, as the law requires to obtain a patent. At the conclusion of the review period, this prior art was forwarded to the USPTO patent examiner for consideration and use in their further search efforts.

Major companies such as IBM, Microsoft, Hewlett-Packard, Sun Microsystems, Intel, and GE, companies whose patent portfolios account for nearly one-third of the patents issued to the top 30 U.S. patent holders in 2007, all submitted patent applications to the Peer-to-Patent process. Other patent applications were submitted by Red Hat, Cisco, and Yahoo!, as well as smaller firms.

Data from the first year of the Peer-to-Patent pilot shows that an open network of reviewers can improve the quality of information available to patent examiners and that such citizen-reviewers are capable of producing information relevant to the patent examination process and are willing to volunteer time. Initial results based on a survey of patent examiners from the USPTO suggest that information provided by the public is beneficial to the examination process.

Findings from the first-year report include:

* Peer-to-Patent attracted more than 2,000 peer reviewers [The IPKat says, the press release doesn't say how many patent applications attracted these reviewers. This is a pity. One of the objections raised is that the system will be flooded by responses from cranks, grudge-bearers and the ranks of the ill-informed. 2,000 reviewers may be a few, or a lot, in relation to the applications filed. The full report, p.6, says that the experiment handled 40 applications, so it looks like each attracted an average of 50 peer respondents. Merpel adds, the figure was bound to be high, given the high-level publicity given to the test, and it has a novelty factor too -- but in real life the number of active peers-per-patent may well be lower].

* The first 23 office actions issued during the pilot phase showed use of Peer-to-Patent submitted prior art in nine rejections [This is encouraging: if all failed, the results would demoralise applicants and dampen the wish to file, but if none failed the system would be labelled ineffective].

* On average, citizen-reviewers contributed 6 hours reviewing each patent application in the pilot [That's about one day's work, assuming an 8 hour working day but taking into account lunch and refreshment breaks, time spent checking emails, discussing the latest IP news with colleagues etc].

* Although USPTO rules permit third-party prior art submissions on pending applications, the average number of prior art submissions on Peer-to-Patent applications was 2,000 times that of standard rule-based submissions.

* Ninety-two percent of patent examiners surveyed said they would welcome examining another application with public participation [Sad about the other 8%. Can something be done to make them happier with public participation?], while 73% of participating examiners want to see Peer-to-Patent implemented as a regular office practice [Are the remaining 27% prepared to accept early retirement?].

* 21% of participating examiners stated that prior art submitted by the Peer-to-Patent community was “inaccessible” directly to USPTO examiners [This alone almost justifies the experiment. Prior art "inaccessible" to examiners seems to find its way almost miraculously into the hands of parties challenging the validity of a granted patent].

* Prior art submissions by Peer-to-Patent reviewers were four times as likely to include non-patent literature (any document that is not a patent, including Web sites, journals, textbooks, and databases) as compared to prior art submissions by applicants [This isn't surprising, but it's welcome news].

“As the first example of harnessing public knowledge to improve a government process, the first year of Peer-to-Patent was an unquestioned success,” Noveck said. She added: “While the impact of this project on patent quality will take longer to assess, the early indications are certainly promising.”"
The IPKat salutes Beth Noveck and all those who worked with her in getting this project off the ground and jealously wishes that it was his idea in the first place.

Thursday, 26 June 2008

Intel v CPM - AG's Opinion

The IPKat brings news of the AG's Opinion in Intel v CPM. Here the Court of Appeal referred the following questions when Intel took on the proprietors of INTELMARK for telemarketing services and the like, based on the registration of the INTEL mark for computers etc.:


(1) For the purposes of Article 4(4)(a) of [the Directive], where:

(a) the earlier mark has a huge reputation for certain specific types of goods or services,

(b) those goods or services are dissimilar or dissimilar to a substantial degree to the goods or services of the later mark,

(c) the earlier mark is unique in respect of any goods or services,

(d) the earlier mark would be brought to mind by the average consumer when he or she encounters the later mark used for the services of the later mark,

are those facts sufficient in themselves to establish (i) “a link” within the meaning of paragraphs 29 and 30 of [Adidas I] and/or (ii) unfair advantage and/or detriment within the meaning of that Article?

(2) If no, what factors is the national court to take into account in deciding whether such is sufficient? Specifically, in the global appreciation to determine whether there is a “link”, what significance is to be attached to the goods or services in the specification of the later mark?

(3) In the context of Article 4(4)(a), what is required in order to satisfy the condition of detriment to distinctive character? Specifically, [(i) does] the earlier mark have to be unique, (ii) is a first conflicting use sufficient to establish detriment to distinctive character and (iii) does the element of detriment to distinctive character of the earlier mark require an effect on the economic behaviour of the consumer?

AG Sharpston began by setting out the context. She noted that US and EU dilution law has sometimes been criticised for not conforming to Frank Schechter's view that highly distinctive marks (rather than famous marks) should be protected, and also for not being as wide as Schechter's protection. However, the task of the ECJ was to interpret the word of a Community directive. Schechter's discussion could not govern. In line with this, she found that AG Jacob's discussion of the meaning of the various types of dilution in Adidas v Fitnessworld was in the nature of a historical and contextual discussion, rather than an expression of the extent of Community protection.

She also noted the need to balance the public interest in protecting trade marks with than in avoiding the abuse of trade mark protection.

She reformulated the referred questions into 4 questions - what is required to establish

  1. a link
  2. unfair advantage of distinctive character/repute
  3. detriment to distinctiveness
  4. detriment to repute
Establishing a link

According to the AG, establishing a link is a necessary precondition for establishing Art.5(2) infringement but it isn't sufficient. It bound up with the preliminary conditions of reputation and similarity of marks. However, factors used in establishing a link may also be relevant a second time in establishing the various types of harm.

The language of the referring court, bringing to mind, was effectively the same as establishing a link or making an association, in that all imply a mental process above the threshold consciousness.

As for how the link can be established, the AG noted the factors referred by the Court of Appeal (huge reputation, dissimilarity of goods or services and uniqueness of the mark on any market) were relevant, but probably not sufficient by themselves.

She notes that the Adidas court stated that the link must be appreciated globally 'just like a likelihood of confusion'. She then mentions the factors considered in the likelihood of confusion analysis and also considers the factors used in the US under s.43(c) of the Lanham Act as amended in 2006, which she notes are 'fully consistent with the Court's approach to the assessment of likelihood of confusion'. [IPKat comment: this is very confused. First of all, she's borrowing too greatly from confusion analysis if she approves s.43(c) as being consistent with the ECJ case law on confusion. More worryingly, she's looking at what the US uses to prove, blurring not what they use to prove an association between the marks. But she previously said that although the same factors may be relevant to both things that need to be proven, they 'must be assessed separately' and the factors 'may have to be taken into account in different ways'.]

She also notes that a link between the parties' goods may be relevant to establishing a link, but is not a requirement. Such a requirement would fly in the face of the wording of the Directive, which talks about dissimilar goods.
[IPKat comment: a sensible balance between the reality of how consumers will think and the wording of the Directive.]

She also throws in an observation that in Adidas the ECJ spoke aobut the existence of a link, rather than the likelihood of one.
[IPKat comment: this isn't helpful. Side observations could like this could give fuel to those who want an actual dilution requirement. Such a step shouldn't be taken lightly. In the US, the requirement eviscerated dilution as a cause of action and led to major legislative reform.]


Establishing unfair advantage

Unfair advantage was said to focus on the benefit to the later mark, rather than harm to the earlier mark. What is needed is 'some sort of boost given to the later mark by its link with the earlier mark'. A dampening or merely neutral effect just won't do.

Again, the referred factors were necessary, but weren't, on their own, enough to support a finding of free-riding. Having said that, the greater the reputation and distinctiveness of the earlier mark, the more likely is it that a later mark could derive an advantage from it. However, that still wasn't enough. To show that the earlier mark would enhance the performance of the later mark, the 'relationship between the prestigious connotations of the earlier mark and the context in which the later mark isn't used.' Where the earlier mark has been used, survey evidence might be helpful.

[IPKat comment: The IPKat isn't feeling too much the wiser. He suspects this is quite a flowery way of saying that it all depends on the facts of the case. Also, he's willing to offer a fabulous prize to anyone who can come up with a survey to demonstrate that a later mark has 'been enhanced' by the 'prestigious connotations' of an earlier, the construction and carrying out of which manages to survive our Court of Appeal.]

Establishing blurring

The AG also wasn't too impressed by the factors suggested by the Court of Appeal for demonstrating blurring. Once again, a link wouldn't be enough. The mark also didn't need to be 'unique', although a truly unique mark would be particularly distinctive, and very distinctive marks are more prone to having their distinctiveness impaired by the presence of similar marks. Likewise, not effect on consumers' economic behaviour was needed, though if an effect could be shown, it would 'buttress' the proprietor's case. Other factors mentioned by the Court of Appeal were relevant but not decisive one way or the other.

[IPKat comment: the Kat now knows what isn't enough to prove blurring. Will someone please put him out of his misery and tell him what is enough? Actually, the question may be flawed, and the answer may be that it will depend on balancing the mix of factors in every case, which brings us on to the AG's next point...]

None of the factors could be said to have a 'threshold' to which they had to be shown, since a global appreciation was required where the overall balance is decisive.
[IPKat comment: probably the right approach, but not great for legal certainty.]

The AG also cautioned that a first conflicting use would not normally be enough to cause detriment. Thus it would be appropriate to look instead at the likelihood of the harm being caused by repeated use.
[IPKat comment: this takes care of one of the problems with an actual dilution standard.]
Establishing tarnishment

Since tarnishment wasn't raised in the referred questions, the AG didn't say much about it, but she did observe that what is required is 'to compare the connotations of each mark, in relation to either the goods or services covered or to the broader message which they may convey, and to evaluate the damage entailed.' [The IPKat is intrigued by this 'broader message' - is it the advertising function?]

Concluding comments
The AG had 3 parting messages in relation to all 4 issues:
  1. It should be remembered that the assessment is always a global one, taking into account all relevant facts. Those facts are interdependent.
  2. Less evidence is likely to be available in registrability cases than in infringement cases. Suitable inferences will be needed in registrability cases.
  3. Actual harm isn't required in registrability cases, but evidence of a future risk which is more than hypothetical must be show.
[IPKat conclusion: generally a sound opinion, which stresses the need for the assessment to be based on the facts of the specific case, and how they fit together in a global analysis. This means that there shouldn't be an overly rigid approach, but isn't great for legal certainty. Some blips though, notably a lack of clarity on actual versus likely dilution and a confusing about of borrowing from confusion case law in testing for association. The Kat would have liked to have seen dilution related back to the essential function of a trade mark - in his opinion blurring certainly is on all fours with it.]

EPO hears WARF arguments

Yesterday the European Patent Office (EPO) heard oral submissions on the application of Wisconsin Alumni Research Foundation (WARF) for a European patent that relates to human embryonic stem cells. All in all, some 126 submissions were received from interested parties, including the United Kingdom Intellectual Patent Office (UK-IPO) -- which observes that there is no consensus within European Patent Convention Contracting States concerning the public policy issues which WARF’s application raises.

The IPKat has received a press statement from Scotland-based IP practice Shepherd and Wedderburn, which endorses the UK-IPO’s position that it is for Contracting States and not the EPO to determine acts which they consider to be immoral. Says the statement:

"The issues raised by bioscience are within the margin of appreciation of Contracting States. It is unfair to WARF that the moral acceptability of its purported innovation will be decided upon by the EPO, based on its perception of what may be acceptable across the breadth of Contracting States".
The firm predicts that the EPO is likely to move cautiously [the IPKat says, that's no surprise if you consider its movements over the past 30 years], concerned not to be seen as pushing potentially unwanted technical innovation on to the more conservative Contracting States. This caution, concerning issues of public policy which ought rightly to be decided at Contracting State level, may have unintended consequences. The firm's conclusion is that the imposition of moral criteria upon patent application decisions in the stem cells field may well drive investment from Europe to jurisdictions where patent criteria will be decided upon solely on the basis of merit [the IPKat has never understood why this should make any difference: wherever the R&D cash is spent, the results will be either patentable or non-patentable in the same markets -- and even the absence of patent protection has never stopped people commercialising their products if they see a profit ahead. Can someone assist him?].

The IPKat awaits further developments with bated breath.

Wednesday, 25 June 2008

Commission report on collecting societies draft; Intel tomorrow

Collecting societies under threat?

The IPKat has been remiss thus far in failing to report on a draft decision from the European Commission which, if adopted, would lead to major reforms of Europe's music collecting societies. According to the Guardian, the draft, which has not yet been signed by EU Commissioner Neelie Kroes, berates the fact that the collecting societies operate as monopolies within their national borders, partitioning the EU market on national lines. It gives the collecting societies 90 days to terminate their agreements and calls on them to cross-license.

The draft has been criticised for not going far enough to break down national monopolies.

The IPKat notes that, from what little information is available, it seems that the Commission isn't too worried about the notion of collecting societies, but rather about the way in which they operate territorially. This territoriality is understandable, since copyright has grown up as a system of national rights with a slightly different focus in the different Member States.


Tomorrow

Tomorrow the Advocate General will deliver his Opinion in Intel v CPM - a UK reference on dilution. The IPKat will endeavour to bring you the lowdown tomorrow - as long as it isn't only in French.

Never mind the Botox ...

First with the news of Allergan's triumph is the Irish Examiner, which reports on yesterday's High Court ruling of Mr Justice Brian McGovern that Dublin company Ocean Healthcare infringed Allergan's BOTOX trade mark when it used BOTOINA in one of its cosmetic products. Also alleging passing off, Allergan sought injunctive relief and damages.

Ocean, who obtained their products from the Swiss company Labo, denied liability. According to Ocean, BOTOX was a weak trade mark which had become generic. It also argued that Allergan had not objected when it registered BOTOINA in Ireland and that it was only after it was launched that the court proceedings were initiated.

Ruling in favour of Allergen, McGovern J dismissed the notion that BOTOX was a weak or generic mark; BOTOINA was leaning on the BOTOX mark in order to “piggy-back” on its goodwill. Both parties' products were marketed at the same consumers and would be sought by people seeking to "eliminate or ameliorate the effect of wrinkles or lines on the face". Taking visual, aural and conceptual similarities between the marks, he added that Ocean was "trying to create an interface" between the two products which would be somewhat blurred. For sure, though,use of BOTOINA created a likelihood of confusion as to the origin of Ocean's goods. The trial was adjourned for two weeks in order for the parties to iron out the wrinkles of damages and injunctive relief.

Good news for trial lawyers, says the IPKat: Allergan has initiated similar cases in 75 of the 110 countries where BOTOX is sold.

Botulinum toxin here
Nicole Kidman 'bat-face' here; Botoina here

IP crime in the UK: the battle begins ...

A press release from the UK Intellectual Property Office reports on the Trading Standards Consumer Affairs Conference in Bournemouth, which the UK-IPO describes as "an opportunity ... to celebrate the success of partnership working and new legislative powers in the on-going fight against IP Crime".

Right: there ought to be a prize-winning caption to fit this touching illustration of law enforcement

According to the press release,

"A new and effective enforcement tool in the fight against IP crime is asset confiscation. Using new legislation, the Proceeds of Crime Act [not so new: this Act was passed in July 2002], a Sheffield dealer selling counterfeit designer goods worth millions of pounds was recently told to pay back the proceeds of her crimes - £2.8million - or face 10 years in prison.

Other successes include the recent pilot scheme between the Wales Regional Intelligence Unit and the Optical Media Industry anti-piracy units which, with the support of Trading Standards, Police and Regional Asset Recovery Teams has led to major disruption of both physical and on-line crime groups. ...

Detective Sergeant Graham Mogg, Intelligence Co-ordinator, who joined the UK-IPO from South Wales Police in August 2007 said: ''The criminal fraternity often view IP crime as a low risk, high profit business venture [But it is! Each year about 100 people in the UK are struck by lightning, but asset confiscations and forfeitures run at the rate of about two a month], however, the individuals and organised crime groups engaged in IP infringement undermine community values, impact on legitimate businesses and damage the UK economy".

The UK-IPO has taken this opportunity to advertise the existence of The Intellectual Property Crime Report 2007, which carries plenty of upbeat and highly information about the fight on fakes in the criminal sphere of activity. The Report contains the following recommendations:

Recommendation 1 Page 13
UK-IPO, in conjunction with the new Strategic Advisory Board for IP policy
(SABIP), to enhance the coordination of IP related research [first things first: SABIP has a bit of an IP learning curve ahead of it if it's going to be much use].

Recommendation 2 Page 16
The Government (the UK-IPO) should work with IP Crime Group members to agree an accurate national standard measure of the level of IP crime, including industry
revenue loss, industry profit loss, criminal market size and criminal gain [this would be really helpful since, if nothing else, it gives a much better idea of the scale of the resources that are needed in tackling IP crime].

Recommendation 3 Page 16
The Government to agree that the UK-IPO record the seizures of counterfeit and
pirated goods from all enforcement authorities and publish the results of prosecutions and Proceeds of Crime actions on an annual basis.

Recommendation 4 Page 36
The use of the Proceeds of Crime Act and Financial Investigators to be encouraged when prosecuting IP criminals.

Recommendation 5 Page 37
Members of the IP rights owning community should be encouraged to provide
training and share expertise with enforcers to improve their technical knowledge
and understanding of IP [but the IP rights owners have being trying to do this for years, with organisations like the Anti-Counterfeiting Group doing much to bring the two together].

Recommendation 6 Page 39
The UK-IPO to facilitate a continuing national programme of awareness-raising
within enforcement authorities and officials within the judicial process, with the
assistance of brands and trade associations where appropriate [This should be fun!].

Recommendation 7 Page 40
UK-IPO to develop and host a secure web-based resource that allows access by enforcers to counterfeit product identification guidelines and a contacts database listing brand protection departments and rights holders representatives’ details for use by the IP community [Can we assume that the competition authorities won't regard this is a veiled form of information-sharing for the purposes of establishing market dominance?].

Recommendation 8 Page 43
Achieve the wider dissemination of expertise and knowledge pertinent to internet
investigations through delivery by the IP rights owning community across
enforcement agencies and the IP Crime Group membership [Gosh -- "pertinent"is an anagram of "internet" plus the letter "p" ...].

Recommendation 9 Page 60
UK-IPO to engage at corporate level with UK businesses, to ensure an understanding of the responsibilities and work programme being progressed by the UK-IPO/IP Crime Group.

The IPKat is pleased that, at long last, the adversaries of IP crime -- the victims and the enforcement agencies -- are facing the same direction and have some sort of shared perspective on what ought to be done. Merpel says, someone involved in the production of the Intellectual Property Crime Report 2007 should be convicted of crimes against the environment. There are ten blank pages in the 98 page report. If you print them out, you will receive ten heavily coloured/shaded blanks. This is a waste of paper and printing cartridges. Please don't do this again!

Operation Scuttle: latest news

Readers of this weblog may recall the anxieties expressed by senior members of the trade mark community concerning the likely disruption, not to say chaos, that may be caused by the forced renumbering of the articles of the European Union's principal trade mark laws (see earlier IPKat posts here and here). The Kats have just received an update on the position from Knud Wallberg (Sandel, Løje & Wallberg, Copenhagen), who writes:

"The issue of the consolidated texts was discussed at the ECTA conference in Killarney last week. Alexander von Mühlendahl raised the issue in the session in which a representative from the Commission was present. The representative said that this was just one in a series of consolidated legal in the Better Regulation programme and that he could really not see our problems, since it must be an advantage to everybody that there is an authoritative version of the legal texts.

The latter is of course true but this is not only an consolidation of texts - in which all the inserted articles were listed with their present numbers such as by way of example Rule 16, Rule 16a etc.- but a renumbering so that 16a becomes 17 and so on. This has an impactson all guidelines of OHIM, creates problems with references to previous decision, templates used by users etc. so it definitely has a great – and unnecessary – impact. Also, the Commission is in the process of studying the functioning of the trade mark regulations in the EU, and will issue suggestions for change – if any – within a few years, so why not wait?

The problem is that the procedure for adopting such consolidated legal texts is such that they are put on the agenda for the EU Council as an A point, which means that are decided without debate (i.e. it may be the Council for the Ministers of Finances or Fisheries for that matter that adopts the texts). It is very difficult indeed to block or rather change this procedure in general and the Better Regulation procedure in particular. This can, to the best of my knowledge only be done by getting one or more member states to block the procedure, so that the usual procedure applies in stead! Under the usual procedure there will be more open discussions of the matter, users will be heard etc.".
The IPKat is grateful for this information, but remains depressed at the thought that Better Regulation is so clearly in this instance something that may be better in theory, possibly, for regulators but not for the system's users.

Tuesday, 24 June 2008

Satellite TV case to go to ECJ


In a judgment of over 45,000 words and 98 pages, handed down this morning in the case of the Football Association Premier League & others v QC Leisure & others [2008] EWHC 1411 (Ch), the Honourable Mr Justice Kitchin has delivered a tentative blow against the rights of satellite broadcasters such as BSkyB to protect their exclusive rights to broadcast football games to subscribers in individual EU countries. The IPKat thanks James Wilmore of The Publican for letting him have a copy. Interested readers can find a copy on the IPKat's Google Groups site until the judgment becomes available on BAILII.

The three combined actions involved in this case concerned the use of foreign decoder cards in the UK to access foreign transmissions of live Premier League football matches. The claimants complained that the dealing in and use of such cards in the UK involved an infringement of their rights under s.298 of the CDPA 1988, as amended, and of the copyrights in various artistic and musical works, films and sound recordings embodied in the Premier League match coverage.

The defendants argued that the use of copyright law to effectively prevent them from using decoder cards in the UK which had been legitimately bought in other EU states was contrary to EC law. Several Directives were cited, the key one being 98/84/EC, also known as the Conditional Access Directive. The main issue (of many) appeared to be whether the decoder cards (bought in Greece, imported and used in the UK) were to be regarded as "illicit devices" under the terms of this Directive.

Both sides put their arguments at length, and yet Kitchin J felt that he was unable to come to a definite conclusion, considering that a proper interpretation was not clear and that this was an issue that should be referred to the European Court of Justice. He did, however, offer a 'provisional' view that the defendants' arguments should be preferred, providing the following reasons (at paragraphs 79-84):

"First, the Recitals do recognise the need for legal protection of broadcasting and information society services whose remuneration relies upon conditional access. For example, Recital (6) expressly acknowledges the development of a wide range of such services has the potential for increasing consumer choice and contributing to cultural pluralism but that the viability of such services often depends upon the use of conditional access in order to obtain the remuneration of the service provider. Moreover, the Recitals make clear that disparity between national rules concerning the legal protection of services based upon, or consisting of, conditional access was considered liable to create obstacles to the free movement of goods and services and that a Directive was needed to provide for an equivalent level of protection between Member States. Further, the use of the word necessary in Recital 13 indicates that appropriate legal protection against illicit devices was considered a proportionate measure and that no less a restrictive measure would suffice to protect this legitimate policy object. However, I do not believe these considerations, of themselves, assist in determining the scope of definition because the protection of the service provider against pirate cards would seem to meet all these policy objectives.

I believe some indication of the intention behind this measure can, however, be derived from Recitals (13) and (15), read as a whole. The former refers to protection against the placing on the market of a device which enables or facilitates without authority the circumvention of any technological measures designed to protect the remuneration of a legally provided service. The latter explains that commercial activities in relation to such devices are detrimental to consumers who are misled about the origin of illicit devices. Both Recitals suggest to me that the Directive is concerned with the production and placing on the market of devices which do not have their origin in a legitimate service provider rather than the unauthorised use of devices which do originate from a legitimate service provider.

Second, Article 1 makes clear that the objective of the Directive is to approximate provisions in Member States concerning measures against illicit devices which give unauthorised access. However, I do not think it can be inferred the Directive is concerned only with effect, as the claimants contend. To the contrary, it seems to me that if this were the position then there would have been no need to limit its scope to illicit devices. Rather, it would have been directed to all devices which are used give unauthorised access.

Third, this impression is reinforced by the definitions of Article 2. A “conditional access device” means equipment or software designed or adapted to give access to a protected service. This suggests to me that it is concerned with the physical nature of the device or, as the defendants say, with its inherent nature. Similarly, an “illicit device” is a conditional access device which is designed or adapted to give such access without the authorisation of the service provider. Once again, it is the physical or inherent nature of the device which must confer this characteristic. This is the natural interpretation of the words used.

Fourth, and as the defendants submit, any reading of this definition which means that a device is “illicit” or “not illicit” depending upon where it is intended to be used is wholly unworkable given the infringing acts defined in Article 4 and the Community wide scope of the prohibitions. These are acts performed by manufacturers and dealers, not end users, and no mens rea or mental element is involved. Equipment becomes an “illicit device” upon its manufacture in any Member State of the Community; a device which is not illicit to begin with cannot change its status by reason of the subjective intention of a dealer as to the place where it is to be used. Indeed, a dealer may not even know where an end user intends to use a device which is supplied by a dealer to another dealer or to an end user.

Fifth, I agree with the defendants that it is very hard to see what substance there can be to Article 3(2)(b) if the interpretation for which they contend is not correct."
There were a whole raft of issues considered in much detail, which the IPKat will leave for other readers to delve into for themselves, including of course the central issue of the applicability of Article 81 EC. Kitchin J concluded as follows (at paragraph 385):
"The issues in this case have at their heart the proper interpretation of a number of instruments of Community legislation concerning the cross-border broadcasting of television programmes by satellite. There can be no doubt that recent years have seen a proliferation of encrypted television channels which are accessible only on payment of a fee. Yet the broadcasting organisations responsible for the transmissions are often prohibited from permitting viewers in other Member States to access the encrypted programming; and this is so even when such viewers are prepared to make the requisite payment. This prohibition stems from the desire of rightholders to extract what they perceive to be the fair remuneration to which they are entitled. However, it creates a tension with the concept of a Community audiovisual area and the principles of an internal market without frontiers, and it is this tension which is reflected in the multitude of claims and defences deployed in this case. I have made such findings as I can. But I believe the issues which I have identified and upon which the assistance of the Court of Justice is sought are so fundamental that they should be considered as a whole by the Court at the earliest opportunity. I therefore invite the parties to make submissions on the precise wording of the questions to be referred and to suggest, if so advised, any additional questions for this court’s consideration."
The IPKat is pleased on the one hand that this important issue is getting the attention it deserves. BSkyB have for years been able to charge several thousand pounds to UK pubs for the right to show football matches on their premises to paying customers, when similar rights in Greece cost only a few hundred pounds. Many pubs across the country have been complaining bitterly that this is daylight robbery (see, for example, the Morning Advertiser to find out more). If Community legislation on free movement of goods and services is to mean anything, this surely must be an issue that goes to the heart of the matter. Is the current decoder card market a legitimate sub-division of the common market, allowing consumers a fair share of the benefit, or is it contrary to the principles of Article 81 EC? On the other hand, however, the IPKat is slightly disappointed (although not in the least surprised) that the issue has been so clouded with Directive after Directive, when the fundamental issue appears to be quite clear: are these devices "illicit" or not (the IPKat thinks not)? We will now have to wait an indeterminate amount of time for the issue to be considered, via the process of Chinese whispers that is the ECJ referral procedure, and then finally decided by the High Court (although even then the issue will almost certainly not stay there).

Higgs v R: Modchip slip-ups revealed

As reported tentatively by the IPKat last week (here), the Court of Appeal has overturned Neil 'Mr Modchip' Higgs' conviction relating to 26 offences under section 296ZB of Part VII of the CDPA 1988 (as amended numerous times). The story is, however (as the IPKat suspected, but was unable to confirm), not as straightforward as it might have appeared at first sight. Mod chips are not now legal, and Sony v Ball has not been overturned. All the details have now been revealed via the magic of BAILII.

Neil Higgs was convicted largely on the basis that, by supplying modchips (similar to the one shown above right) designed to allow a gaming console (the XBox in this case) to play copied discs, he was enabling circumvention of the effective technological protection measures (TPMs) present on the console. Consoles tend to have various means of detecting whether an inserted disc is genuine (i.e. not copied) or authorised (i.e. having the right regional code), and the modchips sold by Mr Higgs were effective in overcoming both of these checks. Mr Higgs was, the prosecution alleged, encouraging and exploiting a market for pirate games, since no one would make or sell them unless they could be played.

Unfortunately, according to their Lordships (led by Lord Justice Jacob), this was not a correct reading of the relevant statutory provisions. Merely proving that the modchips worked in practice was not enough. What was required was proof that the TPMs actually prevented copying taking place, which the prosecution did not show. A case could have been made relating to playing of pirated games on a console being an infringing act, since a transient copy would of necessity be made through this act (in line with Sony v Ball), which normally would have been prevented by the TPMs in place on the console, but the prosecution had not thought to put forward any evidence relating to this. The case that they did put forward did not fit within the provisions of the Act, and the conviction was therefore wrong. Jacob LJ summed up this particular fine mess in the following way:

"Mr Higgs is a fortunate man in that it may well be that if the legislation had been less complex and/or the Crown had had greater opportunity to consider the details of copyright law the case would have been proved on the basis that merely playing a pirated game involves making a copy in the console and thus involves infringement. He may also be fortunate that, at least this far, he has not been sued in the civil courts. There the procedure is apt to be much faster, technical slip-ups in evidence can generally be readily cured before final judgment and the remedies of damages, an account of profits, injunction and legal costs are readily obtainable. Breach of an injunction, if serious, can of course itself lead to imprisonment" (paragraph 36).
The IPKat thinks that this is fair enough, and agrees both that Mr Higgs should have been set free and that he is very lucky, but also thinks that the prosecution should really have done their job properly if they wanted a safe conviction. They clearly did not. There appears to be no doubt that Mr Higgs would not have had his conviction overturned if evidence of transient copying had been put forward in the first place. It is not really any sort of excuse to say that the provisions are too complex, particularly since Laddie J did such a fine job of what was required in Sony v Ball on almost identical facts. Presumably the prosecution didn't bother to read this, and instead relied on knowing that modchips were in some way 'wrong', which is just not good enough. The IPKat wonders if they will learn their lesson, and get Mr Modchip properly next time. In the meantime, will Mr Modchip be back in business in 36 days (see here)? The IPKat thinks that he would be very foolish if he has any serious plans to start again.

Will Strawberry Shortcake escape the Cookie Jar?

According to today's Daily Telegraph, a dispute has erupted over Strawberry Shortcake, heavily-merchandised 30-year-old children's (sic) character. American Greetings, which has owned the brand since the 1980s and has harvested the fruit of licences to DIC, secured an injunction in Ohio last Friday to stop DIC being taken over by predatory Canadian children's TV company Cookie Jar Entertainment.

Right: Ms Shortcake was not available for comment

According to American Greetings, the licence to DIC prohibits the sale of DIC to a competitor without the consent of the brand owner. American Greetings' intellectual properties group head Josef Mandelbaum is quoted as saying:

"We were very open to having a conversation with Cookie Jar and DIC. However, they declined to engage in meaningful discussions with us. With that said, we need to make sure we are doing all we can to protect one of our greatest intellectual properties".
DIC, which expects Strawberry Shortcake and friends to drive in US$28m of its predicted 2008 revenues of US$80m, is quoted as saying it remained fully committed to pursuing the merger with Cookie Jar and that American Greetings' claims were without merit:
"DIC fully intends to pursue all appropriate legal options available to it to overturn the temporary restraining order, prevent the issuance of any further injunctions and pursue the terms of the merger".
The IPKat would dearly like to read the break clauses in the licences which, presumably, are open to such widely differing interpretations. Merpel says, why doesn't American Greetings just buy Cookie Jar and have done with it?

Recipe for Strawberry Shortcake here
Strawberry rash here; strawberry allergy here; Strawbs here
Cookie Jar Monster here

Monday, 23 June 2008

Being a vacation judge is no holiday

It seems that Lord Hoffmann is not the only Law Lord who doesn't mind stepping down to hear an appeal to a lower court than his own (see IPKat post here). WL Gore & Associates GmbH v Geox SpA [2008] EWCA Civ 622, heard on 10 June 2008, was a decision of a two-man Court of Appeal for England consisting of Lord Justice Rix and and Lord Neuberger of Abbotsbury. It was noted on LexisNexis Butterworths' subscriber service.

This dispute arose back in September 2007 and it concerned four patents owned by Geox. The patents were for sole structures for footwear comprising waterproof breathable membranes. Gore sought a declaration of non-infringement in respect of two designs of shoe construction, plus revocation of each patent on the grounds of novelty, lack of inventive step and insufficiency. Last January the parties agreed directions; an order was drawn up in February, providing that the trial would be fixed not before the first mutually convenient date on or after this coming November 2008. Meanwhile the parties were free to apply for further directions and attendance.

It gradually dawned on Gore that the directions, which would place the trial in January 2009, caused it commercial problems and since it ideally wanted to know the outcome of the proceedings by 12 September 2008 when a big trade exhibition, attended by prospective licensees, was due to be held in Germany. Gore said that, when it agreed the directions, it was unaware that prospective licensees would refuse to commit themselves in the absence of the court's decision. This being so, Gore sought an expedited hearing, preferably in July 1998.

The judge said no. First, the parties had agreed the timetable and there was no valid reason for varying it. Secondly it was inappropriate to speed things up: there had been no material change of circumstances and no-one had been misled as to the correct factual position. What's more, it this trial was sped up it would be likely to slow down other trials which in the ordinary course would have been heard earlier.

Gore appealed, at the same time proposing that the hearing take place in September since the two principal judges of the Patents Court would be sitting then as vacation judges. It was clear that the case could be heard in September and expedition in such circumstances would not involve the sort of queue-jumping problems which had rightly been identified.

Right: in an attempt to make the judiciary appear more accessible and less frightening to litigants, the Department of Justice has instructed Vacation Judges to dress in a manner more in keeping with vacations. Seen here, standing in front of the Royal Court of Justice, is Mr Justice Thribblewell of the Chancery Division

The Court of Appeal allowed Gore's appeal. In essence it concluded that

* it was open to the court to consider the application on its merits, even though the original order had been made by consent and the ground for departing from it could have come to Gore's attention before the order had been agreed;

* the whole point of the agreement in this case was to fix agree directions for the trial and there was no real issue on concerning those directions in which the parties were in dispute: they were merely trying to find a sensible procedure to which they could then adapt their internal procedures. This being so, the order did not need to be treated as a binding contract;

* the court should retain a degree of flexibility and control over its own procedure, especially on matters such as speedy trial;

* the fact that the hearing could take place in September put a quite different complexion on the application;

* in considering an application such as this there were four factors to take into account: (i) did the applicant show good reason for expedition; (ii) would a speedy trial interfere with the good administration of justice; (iii) would expedition cause prejudice to the other side; and (iv) were there any other special factors?

* these criteria being established, it would be penal to deny the application to bring the trial forward.
The IPKat thinks this is right: if no-one is inconvenienced and a dispute gets resolved earlier, we are all the winners -- particularly since patents only have short lives and it's a shame if they have to live under the cloud of alleged invalidity any longer than they need to. Merpel says, but what about costs in this application? If Gore had only been awake, this would never have happened. Don't the lawyers talk to the marketers?

Leaves on the line derail confidence case

The IPKat has learnt of a case of great importance to anybody that travels on trains in the UK. In Basic Solutions v Sands, Eady J considered whether to grant an interim injunction to restrain Mr Sands from tendering or offering for sale a product known as Super Grip, which is meant to enable trains to run even when there are 'leaves on the line'.

The injunction was sought by his former employer, Basic Solutions. They argued that he was still within the terms of a non-compete clause with Basic, and also that his product made use of confidential information which he had learned in the course of his employment.

The court first found that the non-compete clause was invalid as, inter alia, it was too long to be competitive.

The court was also dismissed by the breach of confidence claim. The court noted that the nature of the confidence claimed fluctuated throughout the case. At one stage it was suggested that the fact that Network Rail (which is responsible for the infrastructure of the track system in the UK) was putting the contract to prevent delays caused by leaves on the line out to tender constituted confidential information, but it was found that this could not be the case as EU law requires such contracts to be put out to tender to at least three contracts. This meant that the evidence could not have a suitable 'quality of confidence'. Further claims that Mr Sands had used confidential information were based on mere speculation and assertion such as from one witness : "It is simply not possible that Super Grip [Sand's product] can have replicated Track Grip [Basic's product] without some use of the information acquired by [the Defendant] and I do not accept that he has not in fact made use of the actual product to copy it." Moreover, there was evidence that Sand's product was made of a different substance. Said Eady J

In the teeth of the unchallenged evidence from Mr Donmall and the Defendant, I cannot attach any significant weight to these bold assertions. Track Grip is not replicated in Super Grip and Mr Donmall had no input from the Claimant's know-how. The Claimant is making serious allegations against the Defendant, including to the effect that he kept samples and sought to copy them in breach of his duty of confidence, but it is incumbent upon the Claimant to produce at least some evidential support to weigh in the scales against the clear evidence from the Defendant and Mr Donmall. The decision was made not to apply for an adjournment of the hearing before me, but, even if one had been obtained, I cannot see any basis for thinking that any solid evidence would have been forthcoming to support Mr Paul's accusations.

Both the finding on confidence, and the finding on the non-compete clause meant that the case fell on the first hurdle of the American Cyanamid test, i.e there was no serious case to try. The court also drew attention to the public interest considerations involved, stating that in the decision as to whether to grant an injunction, the court had to consider the cost and inconvenience caused by leaves on the line. However, the court did note that in an appropriate case, a party's interest in protecting its confidential information could usurp these public interest concerns.

The IPKat says that this case seems to be one that was doomed from the start. It is however interesting to note the interplay between public interest concerns (both in terms of whether to grant the injunction, and as to the role played by the tendering process) and confidence.

Sunday, 22 June 2008

Play it again ...

Via the IPKat's friend Miri Frankel comes this feature on Wired regarding the Recording Industry Association of America (RIAA) and its litigation against file sharers (so far more than 20,000 copyright infringement actions have apparently been launched). This story involves a New York family accused of copyright infringement.

The RIAA initially identified the mother, Joan Cassin, as being the operative copyright infringer, but later dropped its action at the point at which which the judge was pondering a motion to dismiss the case based on the "making available" theory (see here, here and here). Two weeks later, the RIAA re-filed more or less identical allegations in a fresh action that was sent to another judge because the RIAA did not "relate" the cases. Discovery was immediately sought in order to find out whose KazaA file share folder was being used -- a share folder on the same Verizon internet account as was used at the Cassin household. Curiously the second lawsuit was filed as a John Doe case, without naming a defendant.

Right: images such as these have done much to portray the battle between the RIAA and file sharers as a contest between bully-boy and defenceless victim. The reality is more complex, particularly since the "making available" theory is not universally subscribed to -- but the imbalance of resources in litigation of this kind remains a bone of contention.

Says the IKat, whatever the rights and wrongs of copyright infringement, and whether you believe that RIAA's decision to pursue individuals in this manner is (i) prudent protection policy or (ii) downright reprehensible harrassment, episodes like this are bound to make the objective bystander feel that there is an unacceptable risk that the system can be manipulated. Adds Merpel, it's strange how often John Doe ends up in court. With all his experience of litigation he ought to be quite good at manipulating the system himself ...

Below: this cartoon -- which accompanied the Wired article -- suggests that the RIAA would prefer it if the repertoire of its recording company members remained unheard. This misses the point. What the RIAA wants is to make sure that new songs are heard, but only on the condition that remuneration can be secured and that the means of dissemination remains under the control of rights owners. If new works are not put on general release, everyone loses. There has been much clamour for new business models to replace the old ones on which the RIAA's members prospered, but the range of real-world options seems alarmingly small.

Saturday, 21 June 2008

2,000 and still going strong!

On 22 June 2005 the IPKat and Merpel established their email readers' list, to enable readers of this weblog to receive the latest postings in the comfort of their own in-trays, without the need to exercise their furrowed browsers. Today, virtually three years to the day, the 2,000th email subscriber has joined the list. Although this is just an arbitrary figure, the Kats are thrilled at this -- it shows that even a so-called "niche subject" like intellectual property can attract and sustain a large and growing readership.

On behalf of all of the blogging team, the Kats would like to say a huge thank-you to all of their readers. Your comments, suggestions, links and even the occasional holiday snaps have been an inspiration (and often a provocation) to us all. Another thank-you, just as heartfelt, goes to the authors, inventors, artists, musicians, judges, legislators, bureaucrats, marketeers, rights owners and litigants who have made this all possible.

Right: cards of this lovely illustration of the Kats celebrating can be acquired from the Bengalized Studio Store Art Cards for a moderate consideration

Friday, 20 June 2008

STOP PRESS: Verdict in Doctor Copyright Hearing

On Tuesday the IPKat reported on the plagiaristic activities of Dr Raj Persaud, celebrity doctor and media personality. It has just been reported by the BBC that the General Medical Council has suspended Dr Persaud from his medical practice for three months. The GMC ruled he had brought his profession into disrepute, adding that itnwanted to send a message that his actions were "unacceptable". The GMC's official statement stated that the body had "

responsibility to protect the public interest, particularly with reference to maintaining public confidence in the profession and upholding proper standards of conduct and behaviour".
The IPKat would like to know how a three-month suspension stands in terms of other misdemeanours within the medical profession, such as sexual misconduct, leaving scalpels inside patients in the operating theatre or misprescribing drugs. Can anyone advise? Merpel adds, it shouldn't happen to a vet ...

Friday firebrands

The IPKat's 'Forthcoming Events' feature, which you will find in the left-hand side-bar of this weblog's front page, contains some fresh entries which you may not yet have seen. Don't forget to check them out.


When mentioning the IPRoo blog last week, the IPKat commented on how many animals are featured on IP blogs. He unpardonably forgot to mention the illustrious platypus, nobly stepping into the limelight as the mascot of the Australian Trade Marks Blog of the affable Nick Weston. Sorry, platypuses (is that the correct plural?) everywhere ...!


Another new IP blog: this time a trilingual one (Spanish and Portuguese in addition to English). It's IP Tango and it's being run by IPKat team blogger Jeremy together with Alicante's Aurelio Lopez-Tarruella Martinez and a panel of invited friends which will be growing over the coming weeks. A sort of cousin to Afro-IP and Class 46, IP Tango offers a regional slant, giving coverage of intellectual property news, case law and commercial developments in Latin America. Enjoy!


There's a new set of Patent Cooperation Treaty fees coming into effect on 1 July, according to PCT Notification No. 189 ("Amendments to the Schedule of Fees annexed to the Regulations"). So if you are an international patent protection-seeker and you want to benefit from the old fees, you've only got a week or so in which to do so.


Talking of new fees, the Community Plant Variety Office has just published details of its amendments to annual fees and fees payable in respect of technical examinations. The new scheme, which kicks in on 1 Junuary 2009 - a public holiday throughout the European Union - also makes it easier to pay, even accepting 'payment cards' (which the IPKat assumes to be credit and debit cards, unless someone puts him right).


The IPKat's friend, scholar and renowned blogger Birgit Clark, has drawn his attention to the stew into which the Lancashire Constabulary has got itself over unlawful performances. The Performing Right Society (PRS) has accused the Chief Constable of Lancashire of infringing copyright by allowing music to be played in the county's 34 police stations. The PRS is seeking an injunction plus damages for copyright infringement. Helpfully, the IPKat suggest some items that the Lancastrian law enforcers might like to listen to here and here [best listened to with the sound turned off] -- and some which they may prefer to avoid here and here.


Creativity Stifled? Bournemouth University's Centre for Intellectual Property Policy and Management (CIPPM) has orchestrated a letter to the President Barroso of the European Commission, challenging the notion that any case can be made for the extension of the term of copyright in sound recordings from the present 50-year norm to a whopping 95 years -- as recently mooted by Commissioner Charlie McCreevy (see earlier post here). The multisignatory letter, which enjoys the support of some very respectable names within the IP community (some of whom the IPKat is too modest to name), is accompanied by a statement, Creativity Stifled?, which seeks to lay bare the issues in clear and persuasive terms.

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