The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Monday, 28 February 2011

More Monday Miscellany

Sam Cameron explains the basics
of brand extension to the Prime Minister
Further to Mary Ellen Field's post today ("The system's fine, but where's the money?", here), and in the context of the UK government's familiarity with and understanding of intellectual property issues, Mary Ellen adds in a comment beneath her piece "... We should not forget that the PM sleeps with a branding expert. Sam Cameron was creative director at that classic British Brand long before he was an MP. She has totally revitalised a tired brand and taken it international".  All credit to Sam Cameron, but Merpel has only this to add: while it's commendable that the PM sleeps with a branding expect, she's more concerned about who he spends his waking hours with: however pleasurable branding expertise may be, Merpel doubts that it is sexually transmitted.

This coming Wednesday, 2 March, at the coffee-friendly hour of 11am, the IPKat's excellent and scholarly friend Tanya Aplin (Kings College London) is speaking at Brunel University.  Her oration will be on the topic of  “the continuing dilemma of database protection”. Attendance at this event is free and more information concerning it can be found here.

WIPO (the World Intellectual Property Organization) has now made available some pages to stir the spirits of those who intend to celebrate World IP Day on 26 April 2011 -- and indeed all week, if need be.  The IP Outreach portal is here; this year's theme ("Designing the future") is featured here and a roll-call of posters and fun-and-games from previous years is here.

From Stephan Weber (Legal Counsel, EMEA - IHS Global Limited) comes this plaintive missive: "I have today received another (rather official-looking) scam letter alerting me that one of our trade marks is about to expire and offering assistance. This letter is from the European Trademark Organisation S.A.. I would be happy to forward you a copy of the letter if that is helpful. Do you know of any database where such scams are recorded or would you maybe be interested in setting up such a database?" The MARQUES Class 46 weblog is now doing just this, asking people for details of databases at national level that complement WIPO's own database here.  If you have details of such databases, please let Class 46 know (several useful links have already been received and will be published shortly). All information collated will be shared!

The IPKat himself received a grand little letter from the Domain Renewal Group this morning, kindly reminding him that his domain names are coming up for renewal and kindly offering to do the job for him, for a consideration.  A brief visit to his friendly search engine reveals that a lot of people have mistakenly assumed that Domain Renewal Group had some official sanction or role, and were somewhat unpleased to find themselves parting with money which, all things considered, they'd rather spend on other things.

In the lovely city of Turin (or Torino, if you love the beautiful name by which Italians call it) there's a fascinating conference coming up on 11 March under the title "Copyright or the right to copy?" (details are available in full on Art & Artifice, here).  One of the speakers is HHH (Hogarth head honcho) Alastair Wilson QC, who will be tackling "Reproduction of Works of Art in the UK".  Says Alastair:
"The essentials of copyright protection have not changed hugely over the past two hundred years – but the nature of art has. 
Copyright law still has the fundamental requirements that for a work to be a copyright work it must be “original”, and to be infringed a “substantial part” of it must have been copied. 
Real problems now arise in the case of conceptual art and artworks closely based on pre-existing works: questions arise as to whether some such things are copyright works at all, and even if they are, what constitutes an infringement". 
If you want to know more, you'd better check your flight times -- unless of course you live in Torino.

Finally, from the Kat's friend, trade mark and branding expert Bob Boad, comes a couple of links (here and here) to a recent news item concerning Alibaba, China's largest e-commerce group which, he observes "is popular with Western traders as a source of cheap Chinese manufactures but it is also notorious as a conduit for counterfeits and other scams".  What's interesting here is that there are actually people at the top who are being identified and expected to bear responsibility -- though not, it seems, liability, for the fraudulent activities of the company they run.  A small step in the right direction is not much to cheer at, except when you consider that it's a lot better than a large step in the wrong direction.

Monday miscellany

"Pass the Katsup"
The IPKat is delighted to discover how many people will be sharing the TIPLO dinner with him this coming Wednesday -- though he thinks there may still be room for a few more. Young and aspiring IP-ers are reminded that there's a special price just for them -- there's also the added attraction of Lord Justice Jacob in the chair. Full details here.

Perhaps of more immediate interest to the Big League is Managing Intellectual Property magazine's first ever International Patent Forum, coming up in London on 5 and 6 April.  This event, when the IPKat wrote about the programme here, generated an unprecedented volume of readers' comments for anything he has ever written about conferences.  While it might stretch the pockets of students, trainees and the newly-qualified, the range of topics covered and the credentials of the speakers on display will appeal to the discerning conference connoisseur.  Check out the programme and register here and you will be entitled to enjoy the 20% IPKat readers' registration discount.

If you like
the look, you'll
love the feel!
Look and feel.  The IPKat's friend Caroline Ncube, of Cape Town University, South Africa, is currently doing some research into the law that governs the potential which the tort of passing off has to offer for protecting the look and feel of a website.  So far she has only unearthed Lifestyle Management Ltd. v Frater [2010] EWHC 3258 (TCC) (10 December 2010, noted by the IPKat here).  She asks: "Would you know of any case law or scholarly publications on this point? Any pointers would be greatly appreciated".   Please post your suggestions as comments below, says the IPKat, so we can all enjoy them.

World Trademark Review's latest Global Trademark Benchmarking Survey  is now open and awaits your response.  As WTR's Adam Smith explains:
"We have conducted this survey two years previously and it has always collected insightful results. The first year it revealed how the trade mark industry was coping with the economic downturn, while last year the results showed how many in-house counsel still find it hard to foster cross-company understanding for trade marks. The uniqueness of the survey is that it looks at both sides of the profession: for example, how in-house counsel believe fee structures are changing, and how much of a shift away from hourly rates external counsel are willing to admit to. 
On behalf of each survey participant, WTR will make a donation to a charity chosen by the participant – either the Susan G Komen Breast Cancer Foundation or WaterAid. The results of the survey, together with full analysis based on interviews with trademark industry insiders, will be published in Issue 31 of WTR magazine, the issue we’ll take with us to INTA in May".
To complete the in-house survey, click here. To complete the private practice survey, click here.

Before charity fatigue kicks in, let's not forget the IPKat's friend and JIPLP contributor Bratin Roy.  Despite being of apparently sane mind, Bratin is running the London Marathon on 17 April.  Since he will no doubt be shedding many pounds, he would like you to do likewise, donating some cash for two charities that are close to his heart.  To find out more, and indeed to sponsor Bratin's worthy causes, click here.

The system's fine, but where's the money?

Much loved by innovative SMEs:
the Loan Arranger
In a thoughtful and much-commented piece hosted by the IPKat on Friday ("Pioneers, Pirates and Parvenus – IP v Innovation", here), Gwilym Roberts -- who attended one of the Hargreaves Review meetings last week -- made some valuable observations about the "problem" of the IP system being not so much the system itself but the failure of funding to back innovative projects. To this, Mary Ellen Field adds some highly pertinent comments of her own:
"It is very sad that there was little input from SMEs at the meeting last week, but not at all surprising. SMEs are trying to keep their heads above water when the banks won't lend and they are often fighting off attacks on their IP from counterfeiters and larger well funded companies with clever aggressive lawyers. They are in my opinion effectively excluded from the Hargreaves report by virtue of the makeup of the panel and the language used. It might also be because they think IP Law in the UK is fine and that they don't have the time nor the money to navel-gaze

I tried very hard to be allowed to attend that session this week and I believe I had a lot to offer. I am not a lawyer or an academic but I have been successfully managing, protecting and exploiting my clients' IP from a commercial perspective for thirty years, working with lawyers throughout the world. I wrote to my MP, to the IPO and to Prof Hargreaves himself but had no luck despite my MP writing to Baroness Wilcox on my behalf [The IPKat would love to see more involvement from MPs in general -- the All Party Parliamentary IP Group seems to have gone to ground again -- and from the IP Minister Baroness Wilcox]. I have finally managed to get a slot on Monday afternoon [today!] at the IP Review Surgery Event

The fact is that SMEs are not usually populated by lawyers and academics, the wording in the review document suggests that unless you are a lawyer or an academic, your opinions count for nothing. Professor Hargreaves states that the submissions must be "evidential", this word alone would put any hard working SME off. Perhaps as an academic Professor Hargreaves does not want case studies from SMEs who may well be able to shed great light on this issue. Perhaps SMEs are intimidated by the language of the Review document. Surely if the government or the panel wanted to know the problems facing innovators, they would have put an innovator on the panel. At least he or she would have spoken the same language as the SMEs, also I don't think there are any women on the panel

There are three major problems facing innovative individuals and SMEs in the UK and IP framework is not one of them.

1. The lack of people willing to invest in startups. Our banks won't consider lending to you and the turnover you need to attract Private Equity investors grows each year. Added to this is the fact that investors in this country usually require 100% security over the innovator's IP, and too often the founder finds himself removed from his creation if things don't move as fast as the investors require. As the banks have done away with the concept of bank managers who took it upon themselves to understand their client's business, there is no one to talk to at our banks who knows what you are talking about. If you doubt me, trying explaining the concept of a royalty stream to your local Barclays business branch [The IPKat entirely endorses this. He has been hearing it from small innovative businesses since the 1980s].

2. The catastrophic consequences of financial failure in the UK. Our laws relating to financial failure are so draconian that a failure when young can prevent you ever being able to raise funds in the future and even if you manage to start up again and be successful, whenever you are mentioned in the media no matter how successful you are even decades later you will be referred to as "Bill Smith the former bankrupt" In the United States failure is regarded as a part of the learning curve unless you have intentionally defrauded people. That is seen as capitalism in action [Strange how, at the bottom level, banks are so reluctant to take even the smallest of risks, while they seem to throw caution to the winds when it comes to buying subprime mortgage portfolios and investing in financial paper of which they have manifestly little understanding]

3. Predatory behaviour by larger British firms, particularly retailers with very scary lawyers. The costs to an SME to take on a large company that the SME believes has infringed his IP rights are simply out of the question for most SMEs. It is possible of course to arrange IP litigation insurance but that requires an opinion from counsel before the insurance company will commit. The cost of this can be prohibitive to a small company or individual. Even if you can force the big company to back down enforcement can become a full time job [If evidence is needed here, Hargreaves can speak to ACID, which can provide some real examples]

Perhaps it is because I am Australian but I get extremely annoyed when the British do whatever the Americans tell them to do. It drives me nuts. Who cares what Google wants? They don't care about innovation in the UK, they just want it made easier for them to make money here. This UK has never been short of innovators and it isn't now, it's just extremely bad at supporting its innovators, forcing many to move abroad or giving up their innovations for next to nothing because it's not polite to fight back. I have several innovative British SMEs as clients, they export throughout the world they use the Internet as an integral part of their businesses. Sadly most of them could not raise funds here and have raised them abroad from foreign investors who take a long term view".
The IPKat applauds not just the message but the manner of its delivery.  Members of the Hargreaves Review, please take note!

Friday, 25 February 2011

Growltiger's IP Dinner

Reminder: next week's TIPLO (The Intellectual Property Lawyers Organisation) dinner on Wednesday 2 March (click here and scroll) has now attracted a pleasantly ample number of diners.  However, IPKat team member Jeremy wants to remind readers that TIPLO has kindly agreed to offer a special discount to bona fide students, trainees and recently-qualified IP professionals who are not TIPLO members and could not be expected to fork out £135 for its delicious delights. The idea is that the next generation of leaders and activists within the UK's IP community should be encouraged to step forward and rub shoulders with those whom, in years to come, they will surely replace.  For these eager young souls, registration is available at a just-above-break-even point of £60, which is pretty good.  For registration details, and anything else you need to know, click the TIPLO site here [nb the discount details aren't given on the online booking form] or email Renate Siebrasse here.  Merpel adds, young IP professionals should all be joining IPSoc ("The Society for Junior IP Practitioners") too. The IPSoc site is here and you can email the membership secretary here.

Part of the evening's entertainment consists of a speech delivered by this particular Kat under the title "Growltiger's Last Stand: the World according to Kats". This talk will focus on the part played by bloggers and other social networkers within the fabric of modern IP law and practice. In light of this, it seems appropriate to reproduce, with due credit given and all relevant licences granted, and with acknowledgment to Old Possum (click here for the original), the following words from the pen of IP enthusiast and solicitor Tom Broadhurst:
Growltiger was a Bravo IPKat, who roamed the blogosphere :
In fact he was the roughest Kat that ever travelled here.
From INTA through to WIPO he pursued his IP aims,
Rejoicing in his title of the ‘The Terror of all confusing Domain Names’.

The Woe to the student, that neglected his homepage;
Woe to the pampered IP Lawyer, that faced Growltiger’s rage;
Woe to the bristly official, that lurked in cyberspace,
Woe to any correspondent whose pdf’s Growltiger faced.

Now on a peaceful spring night, all IPKats seemed at play ,
The tender moon was shining bright, the TIPLO dinner ended the day.
All in the balmy moonlight Growltiger yowled out-
And thus the Bravo IPKat showed his full IP clout.

Yet the ruthless IP hoards of diners pressed forward, in stubborn rank on rank ;
But Growltiger to no one’s surprise avoided walking the plank.
He who a hundred infringers had driven to that drop,
At the end of his speech the jolly applause took long to stop.
Thank you, Tom.

Pioneers, Pirates and Parvenus – IP v Innovation

Pioneer -- but was he first
a pirate or a parvenu?
The IPKat's friend Gwilym Roberts (Kilburn & Strode) attendedHargreaves meeting earlier this week which, though smartly chaired by Johanna Gibson, was sadly lacking in input from its target SME audience. Participants were exhorted to get their submissions in by the end-of-month deadline and Gwilym was inspired to do so.  This was what he writes:
Pioneers, Pirates and Parvenus – IP v Innovation

Value comes from resources and there are two kinds of resource: physical and intellectual. Mere access to physical resources – raw materials, say – can provide value, and only when location or extraction of a physical resource becomes competitive does innovation cease being marginal. For intellectual resources, however, innovation is the sole creator of value. As the UK only has intellectual resources, therefore, innovation is everything.

With this in mind, and in its never-ending quest to find a British iPod, the UK government has commissioned another report, this one led by Prof Hargreaves, which seems to ask the slightly wrong question “How can IP promote innovation and growth?” The problem of stimulating innovation is of course fundamentally unrelated to the nature of the legal system protecting it, and if this is the goal then the nation must be tasked with creating the necessary culture of creativity, risk taking and adventure. IP is useful but peripheral – innovation leads IP; not the other way around. What is useful is ensuring that the framework IP provides (and I’m focusing on patents) is properly thought through.

At one end of the IP spectrum sparkle the pioneers. These iPod-creating, dual cyclone-reaping entrepreneurs have ideas so world-beating that there is often a clear patent playing field, and a reasonable monopoly is enough to merit the research and investment underpinning their success. The patent system is well designed to provide this, and given the funding to support development and the relatively modest proportion spent on protection, the system has rewarded their creative/ risk-seeking adventurous handsomely and fairly.

At the other end lurk the pirates. The IP system is again very effective, as long as technology can keep up, at stopping plain, sometimes criminal copying. Here again it seems fit for purpose.

Which leaves us in the middle with the legitimate latecomer competitor, the provider of an alternative approach, the parvenu. Unlike the pioneer, they are not moving into uncharted and unclaimed territory, but a region cluttered with patent thickets and landmines. Yet unlike the pirate, they are just trying to carve out a fair slice of the action. An advantage is certainly that the market is established and the rewards are quantifiable – the risk has shifted from a commercial to a legal one. The problem that the latecomer has, therefore, is of uncertainty. If they knew they couldn’t do something, they’d move on, but what they face is a game of percentages, endless waiting and painful legal costs while they establish a rough idea of FTO.

So at the highest level IP v innovation can be boiled down quite neatly. First, innovation leads, and this is a cultural issue beyond Hargreaves’ remit. For those who’ve “got” innovation – the pioneers - it’s then about funds, to develop to market, and to get the good advice, often with little third party IP in the way. For the parvenu it’s about timely clarity and a good understanding of where they can safely compete. And for the pirate – hopefully – it’s about time they gave up.

Wishful thinking, or cruel deception?
The government can help therefore. The system at either end is fine – it’s clear how we can get patents, and it’s relatively easy to stop straight rip-offs. The problem is in the middle. We need an accessible and educated market for raising money to fund innovation – simple and early exposure to potential investors and respected metrics for evaluating the value of intellectual assets can provide the platform for exploitation of a great idea. We also need a faster way of resolving uncertainty about potential infringement, whether through limiting the remedies or improving mechanisms such as declarations of non-infringement. With these in place we’ll be able to exploit our intellectual resources more readily, and with less fear that they’ll turn out to be someone else’s.

Ideally this will lead to upwards mobility in our strange IP class system: pirate becomes parvenu; parvenu becomes pioneer. As for where the pioneer goes, well they’ll do fine whatever the framework, and if the outcome of Hargreaves is a few more of them then it will have been an unmitigated success.
The IPKat hopes to hear from those pioneers, pirates and parvenus who read this weblog: has Gwilym got it right?

Thursday, 24 February 2011

Summary judgment Delta blow...

Adopting the maxim that things are more fun in pairs, the Court of Appeal yesterday handed down not one, but two judgments in the Virgin Atlantic aircraft seating cases: Virgin Atlantic Airways v Delta Air Lines [2011] EWCA Civ 162; and Virgin Atlantic Airways v Premium Aircraft Interiors [2011] EWCA Civ 163. The former deals with an appeal against summary judgment, and the latter with an application to vary the order made on 12th January 2010 following the handing down of the Court of Appeal's judgment ([2009] EWCA Civ 1062, noted by the IPKat here) in which it found that Premium had infringed Virgin's European Patent.

Sadly, twice the fun also means twice the time spent reading, and lots of other things have gotten in the way of this today. Therefore this Kat has chosen to save the second case for later. Focusing, therefore, on the Delta decision:

Contour (sometimes also called ‘Premium’) is a company that makes “ship-sets” of aircraft seats (i.e. not only the seats, but the plinths and all other fittings for a particular type of aircraft of the customer airline) in the UK. Delta is one of its customers. In October 2009, by a decision of the Court of Appeal (noted by the IPKat here), Virgin succeeded in its infringement action against Contour under the patent. The Patent as it then stood was held valid and infringed in the UK by Contour. Subsequently, however, in September 2010, the patent was amended in opposition proceedings before the European Patent Office. As the Court explains: “Prior to that decision Virgin had sued Delta claiming that it was a joint-infringer with Contour. The action had stalled pending determination of the Contour litigation and the EPO proceedings. When the Patent was amended, Delta applied for summary judgment”. On 30 November 2010, Arnold J held ([2010] EWHC 3094 (Pat) - noted by the IPKat here) that Virgin had no real prospect of successfully establishing that Delta infringed or would infringe Virgin’s European Patent (EP(UK) 1,495,908), and accordingly granted Delta's action for summary judgment and dismissed Virgin's action for infringement. Virgin did not take this sitting down (so to speak) and so appealed. As already noted, the Court of Appeal handed down its judgment yesterday.

Summarising the decision below, Lord Justice Jacob (delivering a judgment with which Smith and Patten LJJ agreed) noted that Arnold J had been faced with three main issues:
a) Do Contour’s acts within the UK fall within the scope of the amended Patent, and more specifically does the Patent claim cover a ship-set before it is installed on the aircraft?
b) Can the manufacture and sale in the UK of a complete kit of parts to assemble a device which falls within a patent claim infringe?
c) Can the manufacture in, and export from, the UK of an incomplete kit of parts for assembling abroad a device which falls within a patent claim infringe?
The judge had answered these questions as follows:
(1) Contour did not infringe because the main patent claim (claim 1) required a seating system comprising a plurality of seat units assembled and arranged on an aircraft. The system was only assembled abroad.
(2) As a matter of law it was arguable that manufacture in the UK of a complete kit of parts for assembling a patented device could infringe a patent.
(3) But as a matter of law it was not arguable that the manufacture in the UK of an incomplete kit of parts subsequently exported could infringe. [Of course if the incomplete kit was used in the UK to assemble the whole patented article, there might be contributory infringement pursuant to s.60(2))]
Delta did not challenge the second finding, so the Court of Appeal was faced with two live issues – (a) and (c).

On construction, the Court considered (at [24-26]) that the phrase “system for an aircraft” should be approached with a very strong predilection for understanding it as meaning suitable for. Moreover, the “skilled man reading the claim in context would expect it to mean suitable for. He would ask himself what the patentee intended by the words used. They are not the words anyone would naturally use to claim an aircraft fitted with a system.” Accordingly, “system for an aircraft” would not be read, as the judge at first instance had, as “system on an aircraft”, but rather as “system suitable for an aircraft” and would cover a ship-set capable of being installed on one.

Mr Justice Arnold had rejected this construction pointing, among other reasons, to a concern that it would not “provide reasonable certainty for third parties”, contrary to the requirements of the Protocol on the Interpretation of Article 69 EPC. The Court of Appeal considered that this was not so:
[34] “the skilled reader would expect the language to be confined to a realistic complete system for an aircraft. There is no unreasonable uncertainty for third parties. They know what they can and cannot do.”
The Court of Appeal also went to some lengths to distance itself from the judge’s comments concerning the wider matters that the skilled reader would know about and take into account when addressing the claims. These included the fact that:
(i) It is possible to frame claims in a variety of different ways. In particular, claims may be directed, subject to constraints on unity of invention, both to the whole of an inventive product and to its key components separately.
(ii) It is possible to infringe a patent both directly … and indirectly …[T]he latter type of infringement involves the supply or offer to supply of “any of the means, relating to an essential element of the invention” i.e. less than the whole of a claimed product.
(iii) Patents are territorial in nature…. [Therefore] a UK patent prevents persons other than those “entitled to work the invention” … from doing things in the UK. …[A] patentee can [also] in principle obtain, and may well have in fact obtained, parallel patent protection in other countries. [Although] …the skilled person [is not presumed to]… actually carry out a search to locate any corresponding foreign patents, even though a well-advised person would do so and nowadays would be able to locate most such patents quickly and easily using electronic databases.”
Commenting on these points, Jacob LJ stated (at [36]) that while it “did not form any part of the Judge’s reasoning when he came to claim construction. I would not want to be taken as endorsing this paragraph.”

In conclusion, whereas the judge had granted a declaration of non-infringement, Jacob LJ considered that, given his “conclusion on the construction of the claim, …the declaration should be discharged”, and the matter should proceed to full trial. So we'll be seeing this dispute again in the near future.

(As for the title: I know.)

"Work Made for Hire: When Is There Contractual Abuse?

It is a form of clause that I suspect many readers of this blog have encountered. The circumstances are as follows: You represent a non-U.S. entity in an employment or development agreement in which copyright may be created by your client. Your client will perform the agreement outside of the U.S. on behalf of a U.S. entity, and your client is asked to execute a form of assignment, either as part of the agreement. The agreement is governed under the law of one of the U.S. states.

The clause typically goes something like this:
The Employee acknowledges that any original works of authorship that are created by the Employee (solely or jointly with others), within the scope of and during the period of the Employee's relationship with the Company, are deemed a "work made for hire", as that term is defined in the United States Copyright Act, and are protected in accordance therewith. To the extent that any such work is not, by operation of law, a work made for hire as aforesaid, the Employee does hereby transfer and assign to the Company, on a world-wide basis, all her right, title and interest therein, including copyright.
To round out the clause, permit me to set out Section 101 of the U.S. copyright law, which defines a “work made for hire” as
"1. a work prepared by an employee within the scope of his or her employment or

2. a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instrucitonal text, as a text, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire."
I must confess: I simply don't understand such a clause in the context that I have described. Let me ennumerate various reasons for my bewilderment:
1. "A work made for hire clause" under U.S. copyright law deals with authorship, not copyright "protectability"(whatever that term means). The issue of authorship is determined by the national copyright law in which the issue arises (at the most, if appropriate, exercise of choice of law provisions will determine which national copyright law shall apply).

2. Stated otherwise, the governing law (being the law of one of the U.S. states) applies to the construction and performance of the agreement. However, the governing law provision cannot provide which substantive copyright law will apply to the issue of authorship. 
3. The parties cannot ex ante provide in the agreement whether a work will, or will not, constitute "a work made for hire". That determination is made in accordance with the statutory provisions of the U.S. copyright law as construed an applied by the courts. More particularly: 
a. If the work is created by an employee, then the first part of the definition will apply (namely--"a work prepared by an employee within the scope of his or her employment"), as construed by U.S. courts. 
b. If the work is created by a contractor, then the second part of the definition, being a narrow list of ennumerated exceptions, will apply. It is noted that here, unlike in (a), the parties need to execute a written agreement acknowledging the "work made for hire" status. That said, such a requirement only applies when the parties are in a contractor relationship (which is at its core a contractual arrangement) and not an employer-employee relationship, which is governed first and foremost by a combination of fiduciary duty law and statute, and only secondarily by contract law. All of this, of course, is subject to U.S. case law on the subject. 
4. In either case, as a matter of contract, the parties cannot directly override these statutory provisions ex ante. That renders all reference to the statutory meaning of "work made for hire" irelevant as a contractual matter between the parties. One cannot apply U.S. copyright law to the issue of ownership, unless U.S. copyright law other applies to the question of authorship. 
5. At the most, the parties can ex post provide for an assignment of copyright ownership, whereby the party deemed to be the initial author may transfer ownership to another party.
If the foregoing analysis is correct, the question is then asked: why does this type

of clause persist? I have several possible explanations:
1. Analytical error--The employer/contracting party fails to understand the distinction between rights fixed ex ante pursuant to national copyright law and the contractual arrangements reached consensually by the parties with respect to ownership. As a result, it conflates these two different issues within the framework of the clause, resulting in a distorted form of contractual belt and braces. 
2. Inertia--The U.S. party replicates the clause used for an agreement where both parties are American (whether or not the clause is even appropriate here is still an open question--see above) to a situation where the work is created outside of America, without giving sufficient thought to the difference between these two circumstances. 
3. Mea culpa--My analysis above is incorrect, and in fact the clause is appropriate as a matter of both contract law as well as the application of U.S. copyright law to the circumstances.
Thoughts anyone?

Wednesday, 23 February 2011

Wednesday whimsies

Don't like how IP is handled elsewhere? If you have not yet participated in the third Taylor Wessing Global Intellectual Property Index survey, there's still time to do so. You get a chance to say which of the 20+ selected jurisdictions run their IP administration and litigation, and which are, welll, dodos.  Click PatLit here for further details.

Free trial still on offer.  This is not the cost of a legal trial, however.  Oxford University Press's monthly Journal of Intellectual Property Law and Practice (JIPLP) is still offering, for the last few days, free access.  All you need to do is to enter a trial code. To set yourself up to avail yourself of this golden opportunity, simply click through to the instructions page and the rest should be easy.  If you can't be bothered. you can still get some idea what the journal's like by dipping into some of the content which is made available at no cost via its associated jiplp weblog here. STOP PRESS: there doesn't seem to be a code any more. The Kat will investigate on his return from Madrid.

Meanwhile, let us celebrate the fact that Oxford University Press --which is part of the University -- has charitable objectives.  This means partly that it can give publications away to worthy educational causes, and also that it can make some jolly generous discounts when it has its winter sale.  Books on offer at up to 75% off the regular price can be found here.  They include the Associate's Guide to the Practice of Copyright Law, which this Kat thought, when reviewing it for another blog, was very handy for non-US readers.

PatLit's latest PCC Page -- the 17th in the series -- asks whether a business which is suing for IP infringement in the Patents County Court for England and Wales might find that it is the victim of its own success, in that this makes the dispute too big, in terms of value, to qualify for the court's jurisdiction. To find out more, click here.

Ever wondered what happens to works once they enter the public domain? If so, there's a seminar just for you.  On the afternoon of Wednesday 23 March the 1709 Blog is happy to host a talk on exactly that subject by American live-wire academic Paul J. Heald.  While the details and the venue (somewhere in London) remain to confirmed, just email here, with the subject line 'Heald Seminar', if you'd like to attend.

The MARQUES Winter Meeting takes place tomorrow and Friday in Madrid. IPKat team member Jeremy will be there -- and he will be writing the event up on the MARQUES Class 46 weblog. But don't worry, there will still be plenty to read on this blog too ...

Mr Tumpy is alive and his caravan is kicking

Noddy, Enid Blyton's most famous
creation, had the exclusive right to
provide taxi services in Toytown ...
"Unknown Enid Blyton story found" is the startling headline of the Press Association release that stunned the world with news of the chance finding of an unpublished novel by the creator of Noddy, The Famous Five, the Secret Seven, Malory Towers and  a generation of unashamedly politically incorrect "we-read-Noddy-and-it-didn't-do-us-any-harm" adults -- the infamous Enid Blyton.  The media release explains:
"Mr Tumpy's Caravan, an 180-page fantasy story thought to have been unknown previously, was found among a collection of manuscripts auctioned in September. The Seven Stories children's book centre in Newcastle paid around £40,000 for the haul .... Archivist Hannah Green then discovered the unpublished work, which follows the adventures of a caravan with feet and mind of its own [The feet are a novelty. Anyone who has tried driving with a caravan in tow will already know that it has a mind of its own]. 
A spokeswoman for the centre said: "... It's a very clean manuscript with no spelling mistakes." [Merpel's not surprised. The Enid Blyton stories she's read also didn't have any spelling mistakes. Ms B knew her limitations and didn't risk using difficult words she might have got wrong]. The manuscript was initially believed to be a version of a picture book called Mr Tumpy and His Caravan, which was compiled using comic strips, but the Enid Blyton Society confirmed it appeared to be a completely different book. 
Imogen Smallwood, Blyton's youngest daughter, told BBC News: 
"It's a whole book, written with words, about a completely different Mr Tumpy and indeed a completely different caravan ...".
Enid Blyton died in November 1968, says the IPKat, so this work, being unpublished at the time of her death, will remain copyright-protected in the UK till the end of 2039 (thanks, Graham Cornish, for the correction!). But what intrigues him is the close similarity between the two titles of two apparently entirely different stories.  Merpel's not surprised: she points out that William Shakespeare did exactly the same thing with his plays.  The storyline in Henry IV Part I is totally different from Henry IV Part II, but after a new sniffs of the old catnip you can hardly spot the difference at all ...

Tuesday, 22 February 2011

IP enforcement in verse: the best limericks

The IPKat's competition for which the prize was complimentary admission to next month's IP Enforcement Conference ground to a miserable halt when the conference sadly had to be cancelled. The limericks, however, are of some substantial interest and some of them deserve an airing on this weblog.

Andy Clemson (Senior Assistant, Cleveland) was closely focused on trade mark matters. Thus his two entries ran as follows:

“I have an infringed mark” he did claim;
And he had some defendants to name;
So he sought an injunction;
And costs in conjunction;
And success! The court found them to blame.

A third party was using his mark;
So, on a court case he chose to embark;
To seek the endorsement;
Of the mark for enforcement;
But the claim was misfiled by the clerk.
It's not known whether Andy Clemson knows Mary Smillie (Associate, Bird & Bird), but the first of her offerings makes an allusion to him:
There was a young lady called Mandy
Who bought a bag from the market - it was handy,
Her friends thought - she's rich
A Louis Vuitton - what a bitch
Until arrested by an officer called Andy.
But the IPKat preferred this attempt from her:
There was a Customs fellah from Dover
Who checked imported goods over
He looked in each box
Compared the goods with his docs
And confiscated the fake Kat called Rover!
Lindesay Low (Legal Adviser, Legal Affairs Department, Scotch Whisky Association) might have been reflecting on the Philips and Nokia references to the Court of Justice when she penned this:
A container of fake Chinese brands,
Fell right into Customs’ hands,
Did they seize it? Oh, no
They just let it go
It was destined for far away lands!
From Henry Ward (8 New Square) comes this epic, which he names "A Cautionary Tale – Part 44"
There was a young man from Manila,
Who’d scored all the music to “Thriller”.
When the bootlegs came out,
He feared that he’d get nowt,
So he took out a quick Anton Piller.

The search order did its main function,
At a warehouse just by Clapham Junction.
Knock-off discs in a heap,
Were found in the sweep,
And our hero he got his injunction.

The trial itself took quite a while,
As his Silk had a ponderous style,
But a week was enough,
To wade through all the stuff,
And our man got his Judgment on file.

All was quite well or so you would think,
And the crooks were all locked in the clink,
But then came the fees,
“OH MY GOD, they’re WHAT? JEEZ!”
“They’re enough to make Donald Trump blink!”

The amounts that were owed were absurd,
They worked out at some nine quid a word,
And what he recouped,
From the “jackpot” he’d scooped,
Was a quarter of what he’d incurred.

“Well I know just how Pyrrhus did feel”
Said our man at the thought of appeal,
“If there’d just been a cap,
To get round this trap,
Well I’d not have had such a raw deal.”

So there is just one moral you see,
Though us fee-earners may disagree,
To keep hold of your purse,
Go to HHJ Birss!
Transfer it to the new PCC ...
The Kat ventures to suggest that the Part 44 in the title might be this one.

Next up is Helen Thomas-Peter (Registered Trade Mark Attorney, Walker Morris), who offers us this:
The doughty ex-coppers from FACT
Are blessed with extraordinary tact
But those that they raid
Should be rightly afraid
'Cause they'll use the full force of the Act.
To conclude this  little selection, here's a couple of tasteful creations, sent in by a talented reader who is clearly under-challenged by the duties imposed by his employment in examining applications for registration of a well-known intellectual property right and whose identity, for that reason, is best kept anonymous (nb these limericks are not connected):
Last week HM Customs in Hull
Had a week far from dull.
They seized a few loads
Of counterfeit toads
And fed them to their mascot seagull.

A patrol of the border police
On their beat between Turkey and Greece
Caught a load full of fakes
But when they had to go to the Jakes
They found the goods infested with fleas.
Henry's the winner!  But now the IPKat will have to negotiate an alternative prize ...

This little PGI went ... all the way to the European Commission

Left in the oven for too long, Cornish
Pasties can become quite volatile
The IPKat does not normally disturb the peace of this zone of the blogosphere with news of the grant of protected legal status to geographical indications; he leaves that task to the MARQUES Class 46 weblog, which has broken the news of fresh GI Regulations at regular intervals over the past couple of years. However, he has just heard the news (which is a good deal fresher than the last Cornish Pasty he sampled) that the designation CORNISH PASTY has today received Protected Geographical Indication (PGI) status by means of a Commission Regulation which has not yet been published online.  The Cornish Pasty Association (CPA), which has been campaigning for PGI status for the past nine years, is ecstatic.  According to Sky,
"The CPA says a Cornish pasty is characterised by its "distinctive 'D' shape" and by "being crimped on one side, never on top". 
The filling should be chunky with no less than 12.5% meat, potato, swede, onion and a light seasoning. 
As for the pastry, the casing must be "golden in colour, savoury, glazed with milk or egg and robust enough to retain its shape throughout the cooking and cooling process without splitting or cracking". 
Britain now has 43 protected products, with Cornish Clotted Cream, Melton Mowbray pork pies and Arbroath Smokies among the others".
This Kat has spent his entire adult life using the term "Cornish pasty" as a generic term and will not find it easy to adjust to life under the new regime.  What, he wonders, is the new generic term for a substance which in the past has been so termed but has now been excluded?

More on Cornish pasties here
Web definitions of Cornish pasty here and here
Cornish pasty recipes here, here, here, here and here
1984 Newspeak here

Patents: some light reading for a rainy day

This post features four very different recent publications in the field of patents.  If you are going on (i) a long journey, (ii) a short journey on the London Underground system or (iii) any journey at all which involves you having to pass through any British Airport Authority air terminal when all flights in and out of London have been grounded by the turbulent effect of butterflies flapping their cute little wings in Tuvalu, you may want to read them all, one after the other.  If you are more selective, discerning or (as we lawyers like to say) specialised, one or two only will suffice.  The four books are:

* Figures of Invention: a History of Modern Patent Law, by academics Alain Pottage and Brad Sherman and published by Oxford University Press.  Based in London but presumably not stuck in transit, Alain Pottage is a Reader in Law at the London School of Economics and Political Science, just down the road from this Kat's Holborn office, while Brad Sherman, now Professor of Law at the Griffith University, Brisbane, was formerly attached to the same institution.  According to the publisher,

"Taking the invention as its object of study, this book develops a radical new perspective on the making of modern patent law. It develops an extended historical and conceptual exploration of the invention in modern patent law. Focusing primarily on the figures that make inventions material, and on how to overcome the intangibility of ideas, this intellectually challenging book makes explicit a dimension of patent law that is not commonly found in traditional commentaries, treatises and cases.

The story is told from the perspective of the material media in which the intangible form of the invention is made visible; namely, models, texts, drawings, and biological specimens [This makes it conceptually stimulating to read, which is what the authors intend, but correspondingly a bit tricky to use as a conventional patent reference work]. This approach brings to light for the first time some essential formative moments in the history of patent law. For example, Figures of Invention describes the central role that scale models played in the making of nineteenth-century patent jurisprudence, the largely mythical character of the nineteenth-century theory that patents texts should function as a means of disclosing inventions [hang on there, some readers still believe this theory -- and it's more credible than Santa existing or Elvis still being alive ...!], and the profound conceptual changes that emerged from debates as to how to represent and disclose the first biological inventions [this has repercussions even now: we can ask whether the Budapest Treaty on the Deposit Microorganisms is still fit for purpose]. At the same time, this historical inquiry also reveals the basic conceptual architecture of modern patent law. The story of how inventions were represented is also the story of the formation of the modern concept of invention, or of the historical processes that shaped the terms in which patent lawyers still apprehend the intangible form of the invention.

Although the analysis focuses on the history of patent law in the United States, it develops themes that illuminate the evolution of patent regimes in Europe [In this regard, the US is the sun to Europe's moon. Europe reflects events and debates which are earlier and usually more articulately expressed in the US]. In combining close historical analysis with broad thematic reflection, Figures of Invention makes a distinctive contribution both to the field of patent law scholarship and to emerging interdisciplinary debates about the constitution of patent law and of intellectual property in general. ".
The IPKat enjoyed this book, and its approach, which he happily commends to anyone who already knows a bit about patent law and wants a book that will enhance his understanding without in any sense intimidating him.  The book is almost too short, since it almost leaves the reader wanting to know what happens next. Some of the footnotes are naughtily long and contain content which might, on reconsideration, be of sufficient importance to promote above the line, but that does nothing to detract from the pleasure of reading this work.

Bibliographic data: Hardback, xi + 212 pages.  ISBN 978-0-19-959563-1. Price: £70. web page hereRupture factor: none.

* Rules of Patent Drafting: Guidelines from Federal Circuit Case Law, by Joseph E. Root, is also published by Oxford University Press but, unlike Pottage and Sherman, this tome emanates from OUP's busy, bustling, practice-oriented New York desk.  The author set up his own company, QualiPat, to develop an innovative programme for teaching patent drafting and has had the personal satisfaction of being able to implement that programme with UnitedLex, a legal consulting, technology and outsourcing firm, where he created a team from a group of engineers.  But does this book give personal satisfaction too?  Says the publisher's blurb:

"Patents are invalidated every day for reasons often stemming from avoidable error [Isn't that what judges are for?]  Rules of Patent Drafting: Guidelines from Federal Circuit Case Law helps patent drafters avoid such errors with a set of patent drafting rules derived from Federal Circuit decisions. By focusing on drafting principles, instead of abstract legal concepts, the reader gains a coherent, integrated understanding of what the Federal Circuit requires. The rules point the way to confident drafting.

Rules of Patent Drafting: Guidelines from Federal Circuit Case Law addresses a major development in patent law over the last two decades - the Disclosure Revolution. Claim construction now depends more on support from the specification than any other factor, and other determinants of validity have followed suit [Can this be the "the largely mythical character of the nineteenth-century theory that patents texts should function as a means of disclosing inventions" to which Pottage and Sherman allude?] Written description, the doctrine of equivalents, and definiteness, all look to the specification to determine the application of each of these doctrines, and others as well. This book guides the drafter in meeting all the requirements that the Federal Circuit has set out for patent validity. Beyond demonstrating how to ensure bare validity, the book goes further to illustrate techniques for achieving desired coverage through rules teaching breadth in drafting, claiming, and prosecuting [Breadth is not for the faint-hearted -- woe to the applicant whose claims run wider than his invention!]

The rules-based approach to patent drafting provides a clear framework to assist both the beginner and the experienced practitioner [and you have the comfort of telling your client, if anything goes wrong, that it's not your fault because you kept to the rules]. A learner is guided through the facets of a rule piece by piece, looking to the Federal Circuit rationale for each clause. Seasoned drafters can quickly update themselves or clarify specific points with precision. For either reader, the clear exposition communicates essential information rapidly and thoroughly".
Says the IPKat, this helpful book saves the best bits for the end.  The last 100 pages or so are taken up with an extensive section on Avoiding Problems which is worth a read on its own, both for its functional utility and for its practical and realistic appraisal of the specific issues of inventorship and priority regarding which the unique provisions of US law are apt to seem so puzzling to the rest-of-the-worldies who might be reading it.  The author also reminds readers that the appropriate time to address problems is before they happen -- a piece of advice that readers might do well to carry with them beyond the portals of patent law and into the great wide world that lurks beyond it.

Bibliographic data: Paperback, xxxvi + 477 pages. ISBNs 13: 9780199734924 and 10: 0199734925. Price: $225. Book's web page here.  Rupture factor: none.

* DON'T File a Patent! is a book of passion, enthusiasm and of an unquenchable determination to persuade the reader of the virtues of the author's case.  The author, John D. Smith of Orlando, Florida, is no admirer of the patent system.  He is witty, knowledgeable and quick to identify faults in the ponderous patchwork of bureaucratic and professional practices which is the US patent system today.  While the comments contained in this self-published book are directed at the US system, readers from other jurisdictions may easily recognise the applicability of the author's barbs to targets nearer home.

How does the author characterise his book?  He explains in his own words:

"DON’T File a Patent! is the first and only book that shows you why NOT to file a patent application on your invention. In this book, you will learn that the Patents Office wants the inventor’s money, not their invention. You will see the roadblocks the Patents Office uses to discourage inventors with their repeated Patent Office patent application rejections. These Patent Office patent application rejections require inventors to continually re-submit their patent application and pay thousands in additional government filing fees, before their patent application are ultimately turned down.

Inventors who create innovative intellectual property like patents, trademarks and copyrights are told by their patent attorney or patent lawyer that they should protect their intellectual property rights and secure patent protection by doing a patent search and then file a patent application and a trademark application.

In this book, I’ll give you over 10 reasons why you should NOT file a Patent Application on your invention. You’ll learn that Utility Patents and patent protection are worthless and does not stop someone from copying your invention. You’ll learn that a patent attorney or patent lawyer will encourage inventors to file patent infringement lawsuits for the patent attorney benefit, not
to benefit the inventor or his invention. You’ll learn that infringement lawsuits are very expensive and the only one that will make money in a patent infringement lawsuit will be your patent attorney. You’ll see that Judgments gained as a result of expensive patent infringement litigation are worthless, as they are impossible to collect. You’ll understand that if you are a successful inventor or inventors and you have a successful invention or inventions, you will get ripped off by copycat competitors, as this is a sign of your invention success.

In addition to the truth about the terrible way you’ll be treated by the Patent Office, I’ll also share with you many experiences I have had over the last five years. I’ll describe and give you contact information for several other inventors and entrepreneurs that got a trademark on their brand name and are making and selling their products themselves, as you should be doing. ..."
The author's weapons do not consist solely of rage and indignation. He is no stranger to humour, as "A day at the Patent Office with Elaine Patenthosen (No patent examiners were harmed in the making of this parody video)" testifies. A successful inventor in his own right (details here), his words go straight to the heart.  The approach which he advocates is, the IPKat hastens to add, not one which is equally applicable to all inventions under all circumstances --  it may be particularly unsuitable for processes and for inventions that have no independent life of their own but are merely incremental add-ons to existing products.  However, for the one-patent-product scenario his advice makes a lot of sense and will be welcomed by small and some medium-sized enterprises which either can't afford patents at all or, if they get them, lack the financial and emotional resources to enforce them.

Bibliographic data: Book's website here. No risk of rupture, but don't read this if you're a patent attorney who is susceptible to apoplexy.  Price: US$ 24.95 plus packaging and posting which, as the author observes, "will cost you less than 10% of a 1 hour consultation with a patent attorney or patent lawyer" (available at the same price as an e-book).

* Terrell on the Law of Patents (17th Edition, 2011), is now edited by Richard Miller QC, Guy Burkill QC, His Honour Judge Birss QC and Douglas Campbell (all from Three New Square).  This book has been through the doldrums in its time, but successive editions since the 1970s have made it a much more useful book.  a tendency to paraphrase the relevant statute and then footnote the paraphrased provision has given way to some genuinely instructive guidance on the operation of the UK's Patents Act 1977 (as frequently amended), the most important decisions of the European Patent Office's variously-shaped Boards of Appeal and the indigenous judicial rulings and practice directions of the British courts and the UK Intellectual Property Office. 

It's difficult to introduce to readers a title which has been going since 1884 and which is familiar even to many folk who have never read it, so let's investigate the state of the current edition.  According to publishers Sweet & Maxwell, this edition has some new features:

"* Thoroughly revised and updated, with new or expanded discussion throughout of numerous current topics and recent developments in the law of patents;
* New chapters dedicated to Entitlement, to Supplementary Protection Certificates, and to the Person Skilled in the Art;
* Extensively expanded discussion of Validity issues, including major chapters now separately dedicated to Novelty, Obviousness, and Insufficiency:
* Incorporates discussion of all significant recent case law including the House of Lords decisions in Lundbeck v Generics and Conor v Angiotech, and the EPO Enlarged Board cases G2/08 and G3/08".
The IPKat couldn't bring himself to read this tome from cover to cover -- and noone would believe him if he said he did.  Has however found himself doing some sampling while using Terrell for some recent research, and found it to be crisp, current and accurate in all material respects.  He can predict with confidence that, like its ever-improving competitor The Modern Law of Patents (here), this title will run and run.

Bibliographic data: Hardback, with more Latin and Arabic pagination than this Kat can wave a paw at. ISBN: 9781847039033. Price £325 (nb there is no missing decimal point in that figure, but local delivery is free).  Web page here. Rupture factor: severe.

Rocky time for Rockwool

Building solutions manufacturer Kingspan Group plc has just won a trade mark and advertising dispute against Rockwool Limited. According to a press release from Wragge & Co., who acted for the victorious company, Mr Justice Kitchin, in the Chancery Division of the High Court (England and Wales) found that a series of Rockwool demonstrations and video recordings, which compared the fire performance of Kingspan and Rockwool products, was misleading and failed to comply with the Misleading and Comparative Advertising Directive. The judge also ruled that Rockwool took unfair advantage of Kingspan's trade marks, causing damage to its reputation, but dismissed Kingspan's malicious falsehood claim.

The judgment, [2011] EWHC 250 (Ch), has been posted on BAILII here and the IPKat hasn't yet had the chance to read it (it's 251 paragraphs in length), The Kat will revert to this case when the opportunity occurs -- though a swift glance suggests that most of the judgment consists of a painstaking analysis of the facts, but not too much legal argument.

Rockwool here
Stone sheep here
Kingspan here
Kingspeech here
Kingspeach here

Monday, 21 February 2011

Jurisdiction to deal with foreign patents: Solvay goes all the way

Sticky issues go to the ECJ
Here comes another set of riddles for the Court of Justice of the European Union to resolve: it comes in the form of Case C-616/10 Solvay S.A v Honeywell Fluorine Products Europe B.V., Honeywell Belgium N.V. and Honeywell Europe N.V.  This was a reference for a preliminary ruling from the Rechtbank's-Gravenhage, The Netherlands, regarding the application of Articles 2, 5(3), 6(1) and Article 22(4) of Council Regulation 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (the Brussels Regulation). Background to this reference can be found on PatLit, here.

The questions are as follows:
Regarding Article 6(1) of the Regulation:

In a situation where two or more companies from different Member States, in proceedings pending before a court of one of those Member States, are each separately accused of committing an infringement of the same national part of a European patent which is in force in yet another Member State by virtue of their performance of reserved actions with regard to the same product, does the possibility arise of ‘irreconcilable judgments’ resulting from separate proceedings as referred to in Article 6(1) of the Regulation?

Regarding Article 22(4) of the Regulation:

1. Is Article 22(4) of the Regulation applicable in proceedings seeking provisional relief on the basis of a foreign patent (such as a provisional cross-border prohibition against infringement), if the defendant argues by way of defence that the patent invoked is invalid, taking into account that the court in that case does not make a final decision on the validity of the patent invoked but makes an assessment as to how the court having jurisdiction under Article 22(4) of the Regulation would rule in that regard, and that the application for interim relief in the form of a prohibition against infringement shall be refused if, in the opinion of the court, a reasonable, non-negligible possibility exists that the patent invoked would be declared invalid by the competent court?

2. In order for Article 22(4) of the Regulation to be applicable in proceedings such as those referred to in the preceding question, must the defence of invalidity be subject to procedural requirements in the sense that Article 22(4) of the Regulation is only applicable if invalidity proceedings before the court having jurisdiction under Article 22(4) of the Regulation are already pending or are to be commenced - within a period to be laid down by the court - or at least that a summons in that regard has been or is being issued to the patent holder, or does it suffice if a defence of invalidity is merely raised and, if so, are requirements then laid down in respect of the content of the defence put forward, in the sense that it must be sufficiently substantiated and/or that the conduct of the defence must not be deemed to be an abuse of procedural law?

3. If question 1 is answered in the affirmative, does the court, after a defence of invalidity has been raised in proceedings such as those referred to in question 1, retain jurisdiction in respect of the infringement action with the result that (if the claimant so desires) the infringement proceedings must be stayed until the court having jurisdiction under Article 22(4) of the Regulation has given a decision on the validity of the national part of the patent invoked, or that the claim must be refused because a defence that is essential to the decision may not be adjudicated, or does the court also lose its jurisdiction in respect of the infringement claim once a defence of invalidity has been raised?

4. If question 1 is answered in the affirmative, can Article 31 of the Regulation confer on the national court jurisdiction to adjudicate on a claim seeking provisional relief on the basis of a foreign patent (such as a cross-border prohibition against infringement), and against which it is argued by way of defence that the patent invoked is invalid, or (should it be decided that the applicability of Article 22(4) of the Regulation does not affect the jurisdiction of the Rechtbank to adjudicate on the infringement question) jurisdiction to adjudicate on a defence claiming that the foreign patent invoked is invalid?

5. If question 4 is answered in the affirmative, what facts or circumstances are then required in order to be able to accept that there is a real connecting link, as referred to in paragraph 40 of the Van Uden v Deco-Line judgment [Case C-391/95], between the subject-matter of the measures sought and the territorial jurisdiction of the Contracting State of the court before which those measures are sought?
This particular member of the IPKat team freely admits that, if Kats have Achilles' heels, the Brussels Regulation is definitely one of his, so he is keeping quiet about this one till he is faced with a neatly packaged, carefully reasoned judgment to criticise.  However, if any reader would like to comment on this case to the UK's Intellectual Property Office you can email the IPO at before 28 February 2011.

More Monday Miscellany

They thought it was a bicycle -- but it was
just a great ruse for importing Bauhaus chairs
across the Italy-Germany border
Earlier today the IPKat called for some gallant soul to give him some background on Case C-5/11 Titus Alexander Jochen Donner, which has been referred to the Court of Justice of the European Union for a preliminary ruling. What, he wondered, was it all about? The noble Tobias Irmscher has emailed this weblog with the crucial background knowledge (for which the Kats in unison sing his praise):
"The case concerns an arrangement for ordering unlicensed copies of Bauhaus furniture etc from Italy to Germany, for which no (enforceable) protection existed in Italy at the material time (between 2005 and 2008). Under this arrangement, a person ordering the items agreed that the transfer of ownership would take place in Italy at the Italian producer's storage facility; the purchaser would agreed to pick the items up in person or to arrange for its picking up by his agent. However, the order form contained an advertisement and an easy order possibility for the shipping services offered by the company of the accused Mr Donner, the services of whom were recommended. He was charged under sections 106 and 108a German Copyright Act with aiding and abetting the prohibited distribution of copyright-protected works in Germany.

While the court of first instance (Landgericht Munich II) recognised that the transfer of ownership took place in Italy -- where the production and distribution of the items concerned was not illegal at the relevant time -- they considered that, de facto, the transfer of the power of disposal took place in Germany where, because of the copyright protection, the distribution would constitute a criminal offence at the time. The decisive question for the Bundesgerichtshof was where - for the purposes of interpreting section 17 German Copyright Act (right to distribute) - the "distribution to the public" in terms of Art. 4(1) Directive 2001/29 [yes, that's right, says the IPKat, it's the Information Society Directive, specially designed to deal with hi-tech copyright in the information age and the movement of furniture across the Alps] took place. The court confirmed the first instance judgment that, in the present case and for the purposes of applying German criminal law, such distribution to the public took place in Germany, as this was where the items left the sphere of the vendor (whom the shipping company was only assisting).

However, the question was raised whether this application of national criminal law would result in an unjustified restriction of the free movement of goods under Articles 34 et seq. TFEU. The Bundesgerichtshof tends to agree to an application of the principles of the ECJ in EMI/Patricia (judgment of 24 January 1989, C-341/87) as proposed by the first instance court. This decision concerned only the different durations of protection, but it should be applied a maiore ad minus where there are only differences in the enforceability of similar rights.

The court order of 8 December 2010 (1 StR 213/10) containing the request for a preliminary ruling may be found here (German only), and a not-quite-up-to-date translation of the German Copyright Act can be found here".

Via Hut'ko's IT & IP Legal Blog comes news of an interesting reference which the German Bundesgerichtshof is making to the Court of Justice for a preliminary ruling.  The case is Oracle v UsedSoft, in which Europe's top court is being invited to rule on whether downloaded software may be traded as "used".    More details are available from UsedSoft's press release here and from the Bundesgerichshof's press release here.

It is with sadness that the IPKat records the death of Ron Hickman, an extraordinary inventor and enjoyably robust character, at the respectable age of 78.  Ron is best known for the invention sold successfully around the world as the Black & Decker WORKMATE work bench (right).  Ron's patents were heavily litigated because many people found it difficult to believe that a contraption made entirely out of ordinary items which performed their normal functions could ever be inventive -- but the invention lay in their ingenious configuration.  Ron was not a one-trick donkey, either.  He also designed the original Lotus Elan, a beautiful vehicle which this blogger could never contort himself sufficiently to get inside it.

Lotus Elan (actual size)
This member of the IPKat team met Ron when he spoke at the Institute of Patentees and Inventors meeting back in the 1980s and he was struck by Ron's direct, no-nonsense approach to problem-solving and his refusal to pontificate about the state of the patent system.  His invention was also one of the first to enjoy the benefits of a layered licensing structure with separate royalties expressed in respect of use of the patent, know-how, design drawings etc so that, if the patent was invalidated, the other bits of the licence could still generate income.

The IPKat thanks his good friend Tufty for breaking the news to him so gently.

"Win the game, lose the plot".  The IPKat is pleased to say that the seminar on plots, games and other copyright-protected (or unprotected) content, hosted at Hardwicke, Lincoln's Inn, on 9 March, is a complete sell-out.  There may still be some cancellations, so it's worth giving your name and details to Lisa Pick just in case.  More details of this seminar, in which three members of the IPKat team are participating, can be found here.

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