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, 31 December 2007

Coming out of copyright -- some notable deaths from 1937

Those jurisdictions that have a life + 70 year period of post-mortem copyright protection will be welcoming into the public domain the works of the following people:

Sir James Matthew Barrie (1860-1937)

Born into a large Scottish family, JM Barrie grew up listening to tales of adventure and fantasy told by his mother every evening. At the age of thirteen, Barrie left his home village to pursue his studies. In 1882 he received his MA from Dumfries Academy at the University of Edinburgh, following which he moved to London as a freelance writer. Six years later, Barrie’s first successful book was published – Auld Licht Idylls, a humorous sketch of Scottish life. After the dramatisation of his novel The Little Minister, Barrie focused on writing for the theatre. Peter Pan (or as it was first entitled, Peter and Wendy) was originally produced for the stage in 1904, and was not published as a story for seven years. The characters evolved from stories told by Barrie to the five young sons of his good friend Sylvia Llewelyn Davies.

Jean de Brunhoff (1899-1937)

From an early age, Jean de Brunhoff was always inseparable from his books. However, he first intended to become a professional artist, and he studied painting at the Academie de la Grand Chamiere. After his marriage to Cecile Sabourand and the birth of his sons, Brunhoff invented a bedtime story about a little elephant. His children, Laurent and Mathieu, took part in the creation of the storyline and Brunhoff himself named the elephant, illustrated the tale and turned it into a book. The original series traced six stages in the life of Babar the elephant: his birth, the loss of his mother, his journey to the city, his education, his return home, his marriage, his coronation, the birth of his children, and the development of his kingdom. After Brunhoff’s untimely death at the age of thirty-eight, his elder son Laurent expanded the series to the fifty-odd Babar books that exist today.

George Gershwin (1898-1937)

Born ‘Jacob Gershowitz’ to a family of poor Jewish immigrants, George Gershwin went on to become one of America’s leading composers. He taught himself to play by ear and only began formal tuition at the age of twelve. Within a few years, Gershwin had published his first song and was attracting the attention of Broadway composers. While he is known for composing numerous songs, the work which really propelled to success was Rhapsody in Blue, written in the early 1920s. Following this, George began to collaborate with his brother Ira, a lyricist, to write musicals on Broadway. Their first was Lady Be Good (1924). In addition to his Broadway hits, Gershwin continued to write for the classical orchestra and for piano solo, and managed to achieve international acclaim in both ‘traditional’ circles and modern society.

Antonio Gramsci (1891-1937)

Antonio Gramsci had a difficult childhood. His father was unable to get a job after a stint in prison charged with maladministration. The family of nine struggled with great financial problems, and Antonio suffered from ill health which left him a hunchback. After winning a scholarship to study at Turin University, Antonio became very involved with the socialist movement in the city. When the Italian Communist Party was founded in 1921, Antonio was elected as a member of the central committee. After spending over a year in Moscow, Gramsci returned to his native country as leader of the Communist Party. He was jailed in 1926 for opposing Mussolini, and forbidden to write for three years. From 1929, Gramsci kept prison notebooks. When he died in prison at the age of forty-six, he had written thirty-three books. Tatiana, Antonio’s sister-in-law, managed to smuggle these books out of prison and arranged for their publication in Moscow.

Rayner Hoff (1894-1937)

Rayner Hoff’s father was a stone and wood carver, and as a child Hoff enjoyed helping his father on architectural commissions. In the years leading up to World War One, Rayner studied at Nottingham School of Art. In 1915, Hoff joined the army and fought in the trenches, an experience which inspired him greatly when he later designed several war memorials. After completing his studies in London and Rome, Hoff moved to Sydney where he was director of sculpture and drawing at the East Sydney Technical College. His best known works are his sculptures for the ANZAC war memorial in Hyde Park, Sydney (right).

Maurice Ravel (1875-1937)

Ravel began learning the piano at the age of seven, and was composing five years later. His parents were always supportive of his musical interests, and sent him to study at the Paris Conservatoire. Ravel was a pupil there for fourteen years, under the guidance of Gabriel Fauré. Despite his remarkable talent, Ravel never worked well with the French musical establishment. After a scandal where he was robbed of the prestigious ‘prix de Rome’, Ravel left the Conservatoire. When he was awarded the ‘Légion d’Honneur’ by the French government, Ravel refused. He moved into the countryside and wrote from the seclusion of his home. In 1928, Ravel embarked on a hugely successful tour of Amercia, where he made good friends with Gershwin. He was also impressed by American jazz, which influenced his later compositions. Although Ravel considered himself a classicist in terms of musical structures, his works featured innovative harmonies, favouring modal colouring rather than the traditional major or minor tonalities. His works remain part of the standard concert repertoire of today.

Ikki Kita (1883-1937)

In his student days, Kita was attracted to the socialist cause and met with many influential figures in his native Japan. After the outbreak of the Chinese Revolution in 1911, Kita travelled to China to help oust the Qing dynasty from power. However, by the time he returned to Tokyo eight years later, Kita had grown greatly disillusioned with socialism and the revolution. A founding member of ‘Yuzonsha’, an ultranationalist organisation, Kita soon replaced his socialist philosophy with a pro-fascist one. While he promoted national unity, Kita also believed that the way forward was a military coup d’etat, followed by a totalitarian Imperial regime which would suspend the constitution and remove all corruption. Part of his ‘reorganisation’ plan involved limits on individual wealth, and land reforms for the farmers. Kita’s writings had a strong influence on the Japanese military, and demonstrate a unique blend of fascism, Marxism, agrarianism and militarism.

Ahmad Javad (1892-1937)

Ahmad Javad Akhundzade was born in 1892. In 1918 he became a member of the Musavat Party, and later became a member of the central committee. Javad was also the leader of the Musazat Literature Union (‘Yashil Galamlar). The Soviet regime was always suspicious of him, and had him arrested and freed in the early 1920s on ‘counter-revolutionary’ charges. Several years later, Javad was accused of encouraging nationalism and independence. He was arrested again, and executed in October 1937. Javad is best known for writing the words of the Azerbaijani national anthem, as well as several poems.

Louis Vierne (1870-1937)

Despite being born almost blind, the young Louis demonstrated a prodigious ability to pick out tunes on the piano from the age of two. He went on to study at the Paris Conservatoire, following which he held a position as principal organist at the cathedral of Notre Dame. He kept this position for the rest of his life. As his sight continued to diminish, Vierne resorted to Braille to do most of his work. He suffered many additional difficulties during his life, separating from his wife and losing his son in the First World War. Nevertheless, his students always described him as a kind, patient and encouraging man. He died of a heart attack during his 1,750th organ recital at Notre Dame. Much of his work was never written down, as Vierne was chiefly a musical improviser – one of the finest of his generation. However, his output was still quite substantial and includes repertoire covering many combinations of instruments.

Karol Szymanowski (1882-1937)

The composer and pianist was born into a wealthy Polish family. After studying music privately with his father, Szymanowski attended first the Gustav Neuhaus’ Elizavetgrad School of Music, then the State Conservatory at Warsaw. In 1926 Szymanowski became director of the latter institution, but retired four years later. Opportunities for music making under the Russian occupation were limited, and Szymanowski found much inspiration on his extensive travels through Europe, Amercia, North Africa and the Middle East. Despite this, the composer always retained a deep love for Polish folk music – an attachment which clearly shows through in his compositions. In addition to his many musical works, Szymanowski also produced a collection of poetry and a novel.

Sunday, 30 December 2007

Sir Nicholas Pumfrey 1951-2007

The IPKat learned this morning that Sir Nicholas Pumfrey, recently elevated from the Patents Court for England and Wales to become a Lord Justice of Appeal, passed away on Christmas Eve following a stroke. The Kat, in common with many, many other people, greatly enjoyed his company and valued his opinions. Whether he was discussing principles of IP law, reminiscing about his own professional experiences, encouraging those following in his footsteps, or discussing the pleasures of the pedalo, his warm and friendly personality shone through.

Only nine days ago Sir Nicholas gave a highly-publicised ruling in Murphy v Media Protection Services Ltd (noted here on the IPKat), upholding the conviction of a publican for an offence under the Copyright, Designs and Patents Act 1988 when she sought to obtain the transmission of live football matches from Greece, but agreeing to refer questions arising from competition law to the European Court of Justices.

On behalf of all the readers of this weblog, the IPKat sends sincere condolences to his family and prays that they will be spared all further sorrow.

Patents, morality and the WTO; The African question

Human Rights and the WTO: the Case of Patents and Access to Medicines is the title of a remarkable book by Holger P. Hestermeyer, published by Oxford University Press. Dr Hestermeyer is a Senior Research Fellow at the Max Planck Institute -- not THE MPI which we IP lawyers all know and love, the one that lives in Munich, but the Max Planck Institute for Comparative Public Law and International Law, Heidelberg. According to the publisher's blurb

"The international trading system has come under increasing attack by activists as being in conflict with human rights law. Others have defended the system as contributing more to the fulfilment of human rights than many other areas of international law. This study examines the alleged conflict of WTO law with international human rights law, using one of the most prominent examples of such a conflict: that between international patent law, ie the TRIPS Agreement, and access to medication as guaranteed eg by the International Covenant on Economic, Social and Cultural Rights. This highly controversial political issue of the appropriate use of international patent law on life saving medicines gained the world's attention during the discussion about the price of AIDS medication, but recent instances also include the availability of the patented medication for bird flu and for anthrax.

The book discusses both the patent law and the international human rights law involved in great depth, distinguishing between obligations under different human rights instruments and including a highly readable introduction into both areas of law. It then explains the concept of conflict between legal regimes and why patent law and human rights law are in conflict. The current state of international law on the conflict between legal regimes and the origin of such conflicts is analyzed, covering such issues as hierarchy in international law and introducing the concept of 'factual hierarchy'. The book then turns to the role of human rights law in the WTO system, concluding that such law currently is limited to aiding the interpreting of the WTO agreements. It shows how a further integration of human rights law could be achieved and describes the progress made towards accommodating human rights concerns within the TRIPS Agreement, culminating in the first ever decision to amend a core WTO Agreement in December 2005".

The IPKat finds it strange to be looking closely at a subject he knows very well, but viewing it through someone else's microscope and having to use someone else's conceptual vocabulary in order to explain it. It's an excercise that is well worthwhile, though. Anyone who doesn't have the time or the inclination to read this book -- which is not actually as long as it seems -- can benefit hugely from the summary of arguments in Appendix 1 (this is a really neat idea which should be shamelessly copied by others, particularly when the book in question is 'the book of the thesis'.

Bibliographical details. Price: £60 (Hardback). ISBN-13: 978-0-19-921520-1; hardback. xxxvi + 369 pages. Rupture factor: low to medium. Further details from publisher's website here.

The IPKat has been asked a question recently: "Is there any interest in the publication of a weblog that would focus specifically -- and entirely -- on intellectual property developments across the vast continent of Africa?" Africa consists of over 50 countries and a wealth of divergent cultures, but there are many IP issues (counterfeits, access to medicines, stimulating innovation, recording and broadcasting) that they share in common. Yet the IPKat can't point his finger to any reliable source of news and comment on IP legal, commercial and political issues. A weblog would not solve all the problems of IP in Africa, but it could at least help raise the level of knowledge and understanding that is the first step to making Africa more IP-savvy.

If an African IP weblog were to be established and you think you'd be interested in reading it, can you email the IPKat here and let him know. You will be kept informed in the event that there should be any developments.

Saturday, 29 December 2007

IP codification in Europe: the legacy of E. M. Meijers

Recently the E.M. Meijers Institute of Legal Research celebrated its 10th anniversary at Leiden University and published a series of commemorative essays. One of the contributions, covering Intellectual Property law, was written by the IPKat's friend Dr Alexander Tsoutsanis (attorney-at-law, Klos Morel Vos & Schaap, Amsterdam).

This article, "The codification of intellectual property law: the legacy of E.M. Meijers and recent trends in Europe", addresses some general legislative developments in IP law in the Netherlands, Europe and Russia. The article is available online at the Dutch blog Boek9 (click here and here for more details).

Friday, 28 December 2007

Use of term 'buried in computer' not an infringement

eThe IPKat's friend Daniel Alexander QC, sitting as a deputy judge of the Chancery Division (England and Wales), gave his decision in RX Works Ltd v Hunter (trading as Connect Computers) [2007] EWHC 3061 (Ch) shortly before Christmas, on 20 December 2007. You can read the full decision here on BAILII.

Hunter owned the trade mark 'vet.local', which was registered in classes 9, 16, 41 and 42 for computer software, hardware and firmware. RX had created a computer system in which the term 'vet.local' appeared on computer screens in various ways. According to RX, the term 'vet.local' was buried within the workings of the system to such an extent that vet users were likely to only stumble upon it by chance, and knowledgeable system administrators were likely to know that the term did not relate to any goods or services. RX also submitted that 'vet.local' as used by it was not a sign that was inherently likely to denote trade origin. Hunter disagreed. In his view, users encountering the use of the term would associate it with his business or computer systems and services, or that they could see it as denoting quality.

In these proceedings RX sued Hunter for making unjustified threats of trade mark infringement, seeking summary judgment; Hunter counterclaimed for infringement. The specific issue to be determined in this application was whether the uses of the term 'vet.local' by RX infringed the trade mark. According to Hunter, since the use of 'vet'local' by RX was either an actual infringing use or at least an arguable one, there was a need for further factual investigation at a full trial.

Left: evidence of alleged infringement included this image of a computer screen, on which the word 'vet.local' appears in the dialogue box

Daniel Alexander QC allowed RX's application for summary judgment. In his view,

* where a sign was intended to act as an internal name for an aspect of a complex computer system, there being a perfectly credible explanation as to what it had been intended to mean, there was no serious basis for concluding that it would be taken to mean something different to that intended-- there being no credible reason why likely users should regard it as denoting anything else;

* it could not be seriously argued that any of the disputed uses of 'vet.local' was ever intended to bring to mind, or refer to, the trade origin of Hunter's software or his domain name. Noo was there any real prospect that any further evidence would emerge that would change that position;

* since RX's uses of the term 'vet.local' in its computer system did not infringe Hunter's trade mark, to the extent that threats had been made of proceedings for infringement of that mark, they were unjustified.
The IPKat thinks this must be right and is surprised that this case got as far as it did: it was really a no-hoper. Merpel says, considering that this was just a small-time application for summary judgment, the judge did a pretty good job in summarising the substantive law issues really well.

RX Works Veterinary Practice Management Systems here
Paul Hunter's Connect Computers here

Thursday, 27 December 2007

Forthcoming events

Design Rights: strong but no longer silent is the title of a meeting that takes place on Wednesday 9 January 2008 at 5.30pm for a 6pm start. The venue is Visit London, 2 More London Riverside, London, SE1 2RR. This meeting has been arranged by the Brands Committee of the Licensing Executive Society Britain + Ireland branch. David Stone (Howrey LLP) will be speaking: he spearheads the MARQUES Team that produced a highly useful report -- since updated -- on the first 150 OHIM invalidity decisions relating to registered Community designs.

If you would like to attend this meeting please complete and return the attached registration form to the LES B+I Administrative Office. An optional dinner will follow the meeting. Don't forget to indicate on the registration form whether you would like to attend. Also, if you'd like to become involved with the LES Brands Committee, email Darren Olivier (Bowman Gilfillan) here and he'll add you to the list.

Coming up on Monday 4 February is CLT's annual IT and E-Commerce Update Conference. As usual, IPKat team member Jeremy is chairing it. This event, which is held in Central London, features a strong cast of speakers that includes

* Annie Lachmansingh (Rouse Legal), on domain names, websites, search engines and other internet-related topics;

* James Tumbridge (Milbank Tweed Hadley & McCloy), looking at the point of contact between IP/IT law and competition law in the Court of First Instance's recent Microsoft case.

* John Fell (Pinsent Masons) gives a masterly overview of the big picture in current e-commerce practice, particularly in the light of Web 2.0;

* the perennially popular Robert Carolina (Origin) looks at the problems arising when an IT outsourcing contract comes to an end.
Full details of the programme and instructions on how to book are available here.

The Times gets more time

Not available elsewhere, this decision of Mr Justice Warren in Experience Hendrix LLC and another v Times Newspapers Ltd was picked up by subscription service LexisNexis Butterworths. It emanates from the Chancery Division (England and Wales) on 14 December.

Experience claimed it was the owner of (i) the performer's rights in the performances given at the Royal Albert Hall (London, England) in February 1969 by the late Jimi Hendrix, and (ii) the copyright in the sound recordings of those performances. Experience sued the publisher of The Times newspaper, saying that the publisher had infringed its rights by authorising and procuring the manufacture, and the issuing to the public, of compact discs featuring copies of those recordings. The Times denied infringement, pleading that the allegedly infringing acts had actually been licensed. The basis of the defence was the existence of a chain of licences, beginning with a letter from the mid to late 1970s, which gave it a defence under section 180(3) of the Copyright, Designs and Patents Act 1988, which states:

"The rights conferred by this Part apply in relation to performances taking place before the commencement of this Part; but no act done before commencement, or in pursuance of arrangements made before commencement, shall be regarded as infringing those rights".
Experience applied for summary judgment on the ground that The Times had no reasonable prospect of defending the claim; The Times in turn applied to adjourn the application pending the submission of further evidence relating to the purported licences.

Mann J held that, on the evidence before him, The Times had no reasonable prospect of defending the claim. The original letter was not a contractual document and no other evidence of a contractual relationship between the parties existed. However, The Times would be given the chance to obtain further evidence. If no further evidence was forthcomig, Experience would be awarded summary judgment.

The IPKat notes that, at least in this short note of the ruling, the judge was concerned that the arrangement upon which The Times relied was not a contractual document. Secdtion 180(3) does not however stipulate that the arrangements relied upon by the party claiming to be licensed have to be contractual -- even though, in the real world in which copyrights are jealously guarded and profitably exploited, it will generally be the case that a licence will have originated from a contract.

Earlier IPKat posts regarding Jimi Hendrix's pre-1988 performances here and here
Jimi Hendrix fan club on Bebo here
Hear Jimi Hendrix here

Wednesday, 26 December 2007

Getting lucky at Luxor?

The IPKat's judicial friend from Norway, Torger Kielland, has sent him this news item concerning Egypt's proposal to pass a law requiring payment of royalties whenever its ancient monuments, from the pyramids to the sphinx, are reproduced. According to Zahi Hawass, head of Egypt's Supreme Council of Antiquities, this move was necessary to pay for the upkeep of the country's thousands of pharaonic sites:

"The new law will completely prohibit the duplication of historic Egyptian monuments which the Supreme Council of Antiquities considers 100-percent copies. If the law is passed then it will be applied in all countries of the world so that we can protect our interests. It is Egypt's right to be the only copyright owner for these monuments in order to benefit financially so we can restore, preserve and protect Egyptian monuments".
The proposed law will not however forbid local or international artists from profiting from drawings and other reproductions of pharaonic and Egyptian monuments from all eras -- as long as they don't make exact copies.

The IPKat agrees with Torger that this move does seem a little late, given that the pyramids and sphynx have been part of the public domain for some 4,000 years: they also both wonder how Egypt proposes to enforce this claim outside Egypt, notably in the United States where the Luxor Hotel, Las Vegas (above, right), receives more visitors annually than the Egyptian cultural treasure. Merpel says, hang on: the sphynx has the body of a CAT. Surely the Egyptian government should be made to support the upkeep of its country's feline population out of the proceeds!

Pyramid sales here
Coconut pyramids here
Building of the pyramids here and here

Anonymised net drug sales might yet infringe

The IPKat found this decision a little while ago on subscription service Lawtel, but has only just caught up with it. It's Eli Lilly & Company and Lilly Icos LLC v 8PM Chemists Ltd, a Chancery Division for England and Wales decision of Mr Justice Mann on 23 November.

Eli Lilly made and sold prescription drugs under its trade marks. PM, a UK-based business, ran an operation that enabled US customers to buy Eli Lilly drugs cheaply over the internet. This was done in the following manner: customers would place orders on a website. The drugs were then supplied from Turkey by a Turkish supplier having first been repackaged under "anonymous" packaging. Thus repackaged, the drugs would be sent to PM in the UK, from where they would be dispatched to individual customers in the US.

This dispute arose after UK Customs officials became suspicious that some of the drugs in one consignment might be counterfeit. Eli Lilly was granted an ex parte injunction restraining the use that PM could make of the goods in that particular consignment, as well as a Norwich Pharmacal to require the disclosure of information concerning the consignment's origins.

Before the court on this occasion was the question whether Eli Lilly had an arguable case for trade mark infringement. This in turn depended on whether PM was importing or exporting products in relation to which the trade mark was registered, contrary to the Trade Marks Act 1994 s.10(4)(c). According to PM, (i) there had been no trade mark infringement since the goods had been brought into the UK under the inward processing relief system and all were intended for re-export. If there had been no import, there could not have been any export; (ii) Eli Lilly's ex parte application for the interim injunction had been attended by such serious non-disclosure that the original order should be discharged. Eli Lilly disagreed, and applied for the ex parte relief to be continued.

Mann J, holding for Eli Lilly, continued the injunction. In his view

* Eli Lilly had an arguable case that its trade marks were being infringed. The ECJ ruling in Case C-405/03 Class International BV v Colgate-Palmolive Co (noted here by the IPKat) suggested that the holding of goods under Customs warehousing procedures or external transit procedures was not, without more, an import. The same was very likely to be true of the inward processing relief system. However, while the ECJ was saying that putting the goods into free circulation within the European Union constituted an import, it was not saying that nothing short of such an act would be capable of amounting to an import.

* It was properly arguable that the impression given by the method of distribution used in this case was that the drugs had an English origin. That, coupled with the manner in which the goods arrived in the UK, made it arguable that this case was distinguishable from the more ordinary transshipment cases envisaged by the ECJ in Class, and that the acts amounted to "importing" within the meaning of s.10(4)(c) of the Act.

* The fact that the drugs were placed in anonymous packaging in Turkey did not necessarily mean that the importation was not under the mark. It was more likely that the expression "under the sign" qualified the goods, rather than the act of importation, the goods being under the sign if they bore it or were associated with that sign.

* The balance of convenience was in favour of granting an appropriate injunction until trial, given that the reputation of Eli Lilly's trade marks in relation to its products was at stake. Any damage done to it would not be easily remediable.

* Two out of the three allegations of non-disclosure raised by PM failed. The subject of the third allegation, while amounting to culpable non-disclosure, was not of itself sufficient to justify discharge of the original ex parte injunction.
The IPKat concurs with this. If everyone trading in the drugs knows what they are and who is making them, but seeks to circumvent the trade mark right by blanking out the marks and taking a devious shipping route, while the "course of trade" is effectively British, it makes good sense in pre-trial proceedings to look at the substance of the transaction rather than at the niceties.

Left: the IPKat blasts off from Ankara, seeking a new route to the United States that does not cross UK air-space

There will be plenty of opportunity for the court to take a more literal view of the scope of trade mark protection once the merits of the argument are properly aired. Merpel adds, the main problem here is that the ECJ in Class International only did what it was supposed to do, and considered the law on the basis of the facts before it: it's quite likely that each trade dodge that seeks to circumnavigate the notion of putting goods into circulation within the European market, will be separately tested with an ECJ reference.

Tuesday, 25 December 2007

All change!

The IPKat's friend Chris Rycroft, the publisher at Oxford University Press who was responsible for launching the Journal of Intellectual Property Law & Practice and for building up OUP's now-formidable list of intellectual property and competition law books, has left OUP for a new and exciting challenge. He has just moved into private legal practice with London solicitors Lewis Silkin, with whom he will be working in the field of practice development.

Right: of the 1oo or so hits secured by a Google Image search for "Chris Rycroft", this was the one the Kats liked best.

Meanwhile, the IPKat has learned that the hot-seat formerly occupied by Chris Rycroft at OUP will be filled by Luke Adams. No stranger to intellectual property law, Luke has been building up a long and lively list of IP titles for Edward Elgar Publishing. This company has worked hard to elevate the status of multi-authored collections of essays on contemporary IP law, of which the New Directions in Copyright series is an outstanding example.

Left: the "Luke Adams" Google Image search notched up over 2,000 hits -- of which this was the best likeness.

Both the IPKat and Merpel wish Chris and Luke good luck in their respective new ventures.

Monday, 24 December 2007

Latest news from Europe

The Official Journal of the European Union has published a call for the training of national judges in EC competition law and judicial cooperation between national judges (2007/C 310/08). Details here. Deadline for application: 15 February 2008.

Says the IPKat, this will give someone a golden opportunity to help the judiciary understand that intellectual property rights are not the enemies of competition policy but a means of enabling that policy to come to fruition. Says Merpel, I suppose you're going to say that special attention should be paid to cuddly cartels, the most attractive way for large and wealthy businesses to minimise the risks inherent in any form of innovation by pooling their patents and kindly surrendering their right to exclusivity.

Own up, admit it! You haven't read the Lisbon Treaty yet, have you? Well, here is your very own link to the Treaty of Lisbon amending the Treaty on European Union and the Treaty establishing the European Community, signed at Lisbon, 13 December 2007, together with all its Protocols and dangly bits. The Lisbon Treaty amends the Treaty establishing the European Community and even some IP-specific bits. First, there's power to create IP rights [but not, the IPKat says, the power to destroy them. That's left for the European Court of Justice to do]:


(84) The following new Article 97a shall be inserted as the final article of Title VI:

‘Article 97a

In the context of the establishment and functioning of the internal market, the European Parliament and the Council, acting in accordance with the ordinary legislative procedure, shall establish measures for the creation of European intellectual property rights to provide uniform protection of intellectual property rights throughout the Union and for the setting up of centralised Union-wide authorisation, coordination and supervision arrangements.

The Council, acting in accordance with a special legislative procedure, shall by means of regulations establish language arrangements for the European intellectual property rights. The Council shall act unanimously after consulting the European Parliament’.

Left: the Conquistadors -- a monument to the point at which the European Union, having finally dealt with the threat to its autonomy posed by Member States, sets its sights on the New World

Then there's a nice little bit about common commercial policy [says the IPKat, this seems to require unanimity when dealing with outsiders (i.e. non-EU nations) even though individual Member States still possess some limited power to fiddle with their own domestic IP regimes]:

(158) An Article 188 C shall be inserted, replacing Article 133:

‘Article 188 C

1. The common commercial policy shall be based on uniform principles, particularly with regard to changes in tariff rates, the conclusion of tariff and trade agreements relating to trade in goods and services, and the commercial aspects of intellectual property, foreign direct investment, the achievement of uniformity in measures of liberalisation, export policy and measures to protect trade such as those to be taken in the event of dumping or subsidies. The common commercial policy shall be conducted in the context of the principles and objectives of the Union's external action.

2. The European Parliament and the Council, acting by means of regulations in accordance with the ordinary legislative procedure, shall adopt the measures defining the framework for implementing the common commercial policy.

3. Where agreements with one or more third countries or international organisations need to be negotiated and concluded, Article 188 N shall apply, subject to the special provisions of this Article.

The Commission shall make recommendations to the Council, which shall authorise it to open the necessary negotiations. The Council and the Commission shall be responsible for ensuring that the agreements negotiated are compatible with internal Union policies and rules.

The Commission shall conduct these negotiations in consultation with a special committee appointed by the Council to assist the Commission in this task and within the framework of such directives as the Council may issue to it. The Commission shall report regularly to the special committee and to the European Parliament on the progress of negotiations.

4. For the negotiation and conclusion of the agreements referred to in paragraph 3, the Council shall act by a qualified majority.

For the negotiation and conclusion of agreements in the fields of trade in services and the commercial aspects of intellectual property, as well as foreign direct investment, the Council shall act unanimously where such agreements include provisions for which unanimity is required for the adoption of internal rules.
Finally, we get to a bit of routine amendment of terminology:

(213) In Article 229a, the words ‘the Council, acting unanimously on a proposal from the Commission and after consulting the European Parliament,’ shall be replaced by ‘the Council, acting unanimously in accordance with a special legislative procedure and after consulting the European Parliament,’ and the words ‘Community industrial property rights’ shall be replaced by ‘European intellectual property rights’.

The last sentence shall be replaced by the following:

‘These provisions shall enter into force after their approval by the Member States in accordance with their respective constitutional requirements’.

Have you ever fancied working for the Office for Harmonisation in the Internal Market, being one of those little cogs in the big machine that drives the Community trade mark and Community registered design systems? If so, here's your chance. The deadline for applications is 24 January 2008. The IPKat says, good luck!

Right: training to be an examiner ...

Is there no justice in this world?

The IPKat's friend Nerys Hucker has sent him a startling piece from the New York Times concerning a World Trade Organization (WTO) ruling last week. It appears that the tiny Caribbean nation of Antigua and Barbuda has been gifted the right to violate copyright protection on goods like films and music from the United States as part of a dispute between the countries over the US policy of blocking Antigua's online casino sites while permitting online betting on horse races.

Right: A sad sight, as Antigua's golden beaches give way to industrial plant churning out millions of dollars of infringing products

Antigua and Barbuda had claimed damages of $3.44 billion a year. WTO said it was entitled to just $21 million, but that the compensation would be recouped through allowing Antigua to distribute copies of American music, movie and software products to that amount. The US will not be taking this lying down, though. On Friday the United States trade representative is said to have warned Antigua to avoid acts of piracy, counterfeiting or violations of intellectual property rights while talks continue.

The ruling of the arbitrator, in relevant part, reads as follows:


5.6 In its request for authorization to suspend concessions or other obligations, Antigua identified certain obligations under the TRIPS Agreement, that it proposed to suspend. Specifically, Antigua indicated that it intends to take countermeasures in the form of suspension of concessions and obligations under the following sections of Part II of the TRIPS:

Section 1: Copyright and related rights
Section 2: Trademarks
Section 4: Industrial designs
Section 5: Patents
Section 7: Protection of undisclosed information.

5.7 As we have determined above, Antigua may seek to suspend obligations under the TRIPS Agreement. In order for such suspension to be equivalent to the level of nullification or impairment of benefits accruing to Antigua, it must not exceed US$21 million.

5.8 It is incumbent on Antigua to ensure that, in applying such suspension, it does not exceed this level. Antigua has declined to provide any explanation on how it proposes to apply such suspension and how it will ensure that the level of the proposed suspension does not exceed the level to be authorized by the DSB. We regret that Antigua did not find it useful to provide such explanations.

5.9 We note that our mandate does not allow us, in reviewing the equivalence of the proposed suspension with the level of nullification or impairment, to consider the "nature" of the obligations to be suspended. We understand this to mean that we may not question the complaining party's choice of specific obligations to be suspended (other than in the context of considering a claim that the principles and procedures of Article 22.3 have not been followed) and that we must assess the level of the proposed suspension, rather than its form, against the level of nullification or impairment.

5.10 At the same time, it is important that the form that is chosen in order to enact the suspension is such as to ensure that equivalence can and will be respected in the application of the suspension, once authorized. The form should also be transparent, so as to allow an assessment of whether the level of suspension does not exceed the level of nullification. We also note that the suspension of obligations under the TRIPS Agreement may involve more complex means of implementation than, for example, the imposition of higher import duties on goods, and that the exact assessment of the value of the rights affected by the suspension is also likely to be more complex.

5.11 In the light of these considerations, we note the remarks made by the arbitrators in EC – Bananas III (Ecuador), on the suspension of TRIPS obligations in that case. We consider these remarks to also be relevant to this case, in that the same considerations will be pertinent to the manner in which Antigua might implement a suspension of its obligations under the TRIPS Agreement.

5.12 Like the arbitrators in EC – Hormones (US) (Article 22.6 – EC) , US – 1916 Act (EC) (Article 22.6 – US) , and US - Byrd Amendment (Article 22.6 - EC) , we also note that the United States may have recourse to the appropriate dispute settlement procedures in the event that it considers that the level of concessions or other obligations suspended by Antigua exceeds the level of nullification or impairment we have determined for purposes of the award.

5.13 Finally, we note that Article 22.8 of the DSU provides that:
"The suspension of concessions or other obligations shall be temporary and shall only be applied until such time as the measure found to be inconsistent with a covered agreement has been removed, or the Member that must implement recommendations or ruling provides a solution to the nullification or impairment of benefits, or a mutually satisfactory solution is reached. ..."


6.1 For the reasons set out above, the Arbitrator determines that the annual level of nullification or impairment of benefits accuing to Antigua in this case is US$21 million and that Antigua has followed the principles and procedures of Article 22.3 of the DSU in determining that it is not practicable or effective to suspend concessions or other obligations under the GATS and that the circumstances were serious enough. Accordingly, the Arbitrator determines that Antigua may request authorization from the DSB, to suspend the obligations under the TRIPS Agreement mentioned in paragraph 5.6 above, at a level not exceeding US$21 million annually".

The IPKat considers it monstrous that innocent third parties face damage to their businesses, their profits and, in the case of trade marks, their goodwill, as the result of an award in a dispute to which they are not party and over which they have no control. Are there no better or more appropriate punishments available to the WTO arbitrator in such cases? Merpel is fascinated by the prospect of executing and monitoring such an award: surely there is no accounting formula that will address it. Tufty just hopes that the brake pads on the arbitrator's car aren't fakes that have been sourced from Antigua ...

Decision of the WTO arbitrator here
Further reports on this item from MajorWager, SlashDot, Antigua Sun and Casino Gambling Web.

Sunday, 23 December 2007

Who wins, who loses? Two ambivalent outcomes

The IPKat thanks his friend Edward Tomlinson for sending him this link to a ruling of the High Court for England and Wales that had not, at the time of posting, made it to BAILII. This ruling establishes that InterDigital Technology Corporation's European patent 0 515 610, which designated the UK as a country in which protection was sought, is indeed essential to the 3G UMTS WCDMA European Standard. This means that, in the court's opinion, neither Nokia nor anyone else can comply with this technical standard -- which is promulgated by the European Telecommunications Standards Institute (ETSI) -- without either infringing the patent or taking a licence to work it.

The patent relates to open loop power control, a fundamental aspect of 3G technology. Patents with identical or similar claim language to the ‘610 patent have been issued in the United States and Canada as well as a clutch of key European jurisdictions. The effect of this ruling is that Nokia is to withdraw its challenge to the essentiality of another patent (European patent (UK) 0,515,675) relating to pilot codes, effectively conceding that that patent is also essential. While this doesn't look great for Nokia, since that company brought its challenge to the ETSI standard, InterDigital has conceded that nine of its 'standard' patents are non-essential, while a further two patents are no longer in force. A further 15 patents remain in contention.

The IPKat is fascinated by this litigation, which he believes, is novel within the UK. ETSI itself was reluctant to become involved, leaving it to the parties to slug it out. This is a shame: a lot can be learned about the formation of effectively beatified cartels from the manner in which standards are identified and enforced. Merpel still wonders why, with so many countries to choose from, the parties ended up litigating this dispute in England and Wales. Do any readers have an explanation, given that so many people keep telling us that that jurisdiction is such a bad place to litigate patent disputes?

Earlier IPKat post on this dispute here

Thanks, too, to the IPKat's friend Jim Davies for retrieving this item about the settlement (that sounds like a euphemism) of Apple's dispute with Think Secret over the latter's fan site. This is a bit of an old row, really, having blown up in January 2005, when Think Secret revealed details of Apple's Mac Mini before the date of its official unveiling. Apple brought the lawsuit to make the fan site reveal who had leaked details about the cut-down computer. In agreeing to close itself down, Think Secret gets to preserve the anonymity of its sources. Both sides express themselves happy to have this behind them.

According to Apple (who are described as "notoriously secretive about forthcoming products"), bloggers should not enjoy the same right to protect the anonymity of their sources as those granted to mainstream journalists. The trial court agreed with Apple, but that decision was reversed on appeal, the court agreeing that bloggers, being analogous to journalists, should enjoy the same legal protection.

Left: Apple products just keep getting smaller, but their secrecy is not to everyone's taste ...

Speaking purely objectively, and without regard for any thought that they might be sued for serving as journalists, the IPKat and Merpel welcome the sagacity of the appellate court, but wonder what benefit -- apart from some pathetic face-saving -- can be derived from shutting down the Think Secret weblog. Tufty adds, are you sure it's shut down? It still seems to be here.
Apple turnover here
Apple crumble here

Saturday, 22 December 2007

Football broadcast match to go to Europe?

The IPKat's friends Alex Fenlon and Jim Davies both sent him this news from the BBC concerning the dispute between UK broadcaster BSkyB and publican Karen Murphy over the latter's right to show live UK football matches to her customers in the Red, White and Blue pub (right), Southsea, via Greek station Nova for just £800 a year, instead of paying £6,000 a year for a licence from BSkyB. What appears to be a two-man Court of Appeal (Lord Justice Pumfrey and Mr Justice Stanley Burnton) dismissed her appeal based on domestic law.

Giving judgment, Pumfrey LJ is quoted as saying that BSkyB had the exclusive right to screen or broadcast the matches in question in the UK and it was "apparent" Ms Murphy knew that was the case. However, the court had not heard arguments about whether European competition and free movement legislation might affect the case:

"So far as the competition law case is concerned, we do not at present follow how it is to be developed, and this appeal must therefore be restored for these points to be argued if that is what the appellant wants".
The court granted Ms Murphy permission to reopen the appeal at a one-day hearing in January.

Several companies install foreign satellite equipment in pubs in the UK, including Digital Sales, run by Joe Ibrahim. He maintains that the ruling was unfair and inconsistent with copyright rules that covered other products:
"If what we're doing is illegal, then it will stop people bringing European cars into Britain and if you buy a DVD in Europe and have it shipped to you in Britain then that will be deemed illegal too".
The IPKat looks forward to reading the transcript of this decision if it should appear on BAILII or elsewhere, since he is never at ease with media reportage of IP cases. He is also curious to see what form the questions referred to the European Court of Justice will take. Merpel says, more interesting than those questions is the lobbying that will be directed at the European Commission to open up the market for broadcasts in Europe.

Friday, 21 December 2007

From Catwalk to Commercial Court: the triumph of Karen Millen

The IPKat thanks his friend Deirdre Kilroy (LK Shields) for sending him this hot news from Ireland: Dunnes Stores has lost its bitterly-contested design dispute against UK-based fashionistas Mosaic Fashions. In this, the first Community unregistered design right case to be fought out in Ireland, Mosaic, owners of the Karen Millen, Coast and Whistles brands, alleged that Dunnes had copied its designs. Since the issues were the same in all three instances, Ms Justice Mary Finlay Geoghegan ruled on the Karen Millen case first.

Right: the IPKat is very happy with his fashionable new fur coat -- but less happy with suggestions that it might be commonplace

The judge was shown a €150 Karen Millen black jumper, which was described as a "faux-shrug cami top" and a striped shirt, as well as the corresponding Dunnes items which sold for a good deal less (the jumper retailed at a snip for €25). Like all good infringers, Dunnes denied infringing and alleged that the designs were commonplace - but to no avail.

The IPKat awaits sight of the transcript of the judgment with excitement and trepidation: how will the judge assess whether the designs were commonplace?

Karen Millen Katwalk here
Rudyard Kipling Katwalk here

A Meowy Christmas from the IPKat (and friends)

(Thanks to the Jingle Cats)
More Jingle Cats here.

Thursday, 20 December 2007

EPO: advance warnings of more expensive things to come

Just before Christmas, when many people are winding down, the EPO has decided to come out with some significant changes to be made to the way European patents are dealt with. Two Administrative Council decisions have recently appeared on the EPO website, both of which will, in different ways, affect how much European applications will cost in future.

Decision CA/D 16/07, which will come into force on 1 April 2008, increases fees for applications across the board. Most increases are fairly small single digit percentage rises, but renewal fees in particular will rise substantially, becoming even more weighted towards the latter end of the life of a patent application pending at the EPO. [The IPKat wonders whether this gives the EPO more of an incentive to be even slower than they are at present, since the longer they hang on to applications the more money they get.]

The second decision, CA/D 15/07, does not come into force until 1 April 2009, but makes some pretty scary changes to the fees, particularly for those who like filing large patent applications with lots of claims, as well as applicants who might want coverage in only a few countries through the European system.

These changes include:

  • Additional fees on filing for applications having more than 35 pages, with each extra page being charged at 12 euros;

  • A single designation fee of 500 euros, to cover all member states (removing the option at present of having fewer than 7 states designated on filing);

  • A dramatic increase in excess claims fees (from 1 April 2008) for more than 15 claims, with 200 euros being charged for each claim, and (from 1 April 2009) 500 euros for the 51st and subsequent claims.

  • The message from this is fairly clear: the EPO wants applicants to be a lot more careful about what they file, and there will be heavy penalties for not playing the game. For example, an application with 50 claims will, after 1 April 2008, cost an extra 7000 euros, and 60 claims (after 1 April 2009) will cost an extra 12,000 euros, compared with only 2250 euros now. Combined with the new strict requirement to sort out unity of invention at the international phase (under rule 164), there will be a big incentive to keep applications slimmed down as much as possible.

    Although these changes do not come into force for a while, they should be affecting decisions being made right now, given the long lead time between filing an application and entering the European phase up to 31 months later. Some applicants may be in for a nasty, and very expensive, surprise later on.

    IP Finance Group meeting

    Earlier this month, the IPKat wrote:

    "Following the recent discussions that have taken place between UNCITRAL and intellectual property enthusiasts over the application of its work on a Legislative Guide on Secured Transactions to the collateralisation of intellectual property and IP-driven project finance, it seems that a lot of people on the IP side are concerned about the topic but that there isn't a natural forum for them to come together and talk.

    Right: talking of securitisation, this charming Kat money box can keep your assets safe.

    To this end, the IPKat is curious to know who might like to attend an informal gathering where IP finance people can just meet each other and exchange ideas/phobias. If you'd like to attend a gathering -- probably in mid-to-late January somewhere in London -- and/or just want to be kept informed, please email the IPKat here and let him know".

    Well, the IPKat now has a list of around 20 people who have expressed their interest (they will be circulated at the end of this week) and he has also secured a venue for a brief getting-to-know-you and how-do-we-take-it-from-here meeting. Details are as follows: date, Wednesday 30 January; time 5.30pm to 6.45pm; venue the London office of Olswang, here; star attraction - Eva Lehnert (IFPI) will give a short resume of the state of play at UNCITRAL. Light refreshments will be provided. If you'd like to come, or if you can't come but would like to be kept informed of further developments, email the IPKat here.

    If it isn't in your language, it doesn't count ...

    Last week the European Court of Justice ruled in Case C-161/06 Skoma‑Lux sro v Celní ředitelství Olomouc (11 December 2007) that the obligations contained in European Union legislation cannot be enforced in any Member States if that legislation has not been published in the Official Journal in the language of that Member State. According to the Court, on a reference from the Czech Republic, Article 58 of the Act concerning the conditions of accession to the European Union of the Czech Republic ... and the adjustments to the Treaties on which the European Union is founded (the "Act of Accession") requires EU legislation to be translated and published in the official language of each Member State in which enforcement is sought.

    The IPKat notes that this ruling does not explicitly cover the position regarding rulings and orders of the European Court of Justice itself, even though the courts of Member States may be obliged to follow them. Since so much intellectual property law and practice at Community level is driven by judicial slants on Regulations and Directives, he feels that the spirit of Skoma-Lux is at least on the side of those who argue for more -- and faster -- translations of ECJ and CFI decisions. Merpel agrees, noting that no-one rudely told the Czechs to stop complaining and learn some more languages.

    The language of cats here and here
    Teach yourself Eurospeak here

    Wednesday, 19 December 2007

    TorrentSpy loses in US

    CNet reports that TorrentSpy has lost a copyright infringement suit in California, not on the merits as such, but rather because it hid and destroyed evidence in a way which made it impossible to try the case fairly. As well as failing to comply with discovery orders, TorrentSpy intentionally modified or deleted directory headings naming copyright titles and forum posts that explained how to find specific copyright works, concealed IP addresses of users and withheld the names and addresses of forum moderators. The court terminated the case, holding ‘The court finds that plaintiffs have suffered prejudice, to the extent that a rightful decision is not possible’.

    The IPKat says that this is certainly a victory for the Motion Picture Association of America, which brought the case, but in copyright terms it’s neutral. TorrentSpy got punished for major breaches of procedure, rather than having a copyright finding per se against them.

    Mewsings on the word ‘technical’

    Warning: this post is quite technical, and some less well informed readers might therefore find it difficult to understand.

    After recent technical discussions (see IPKat posts here and here), the IPKat was wondering what exactly the EPO means when it uses the word ‘technical’. - click to visitWhile he was pondering this, a “Communication pursuant to the Decision of the President of the European Patent Office dated 12 July 2007 on the filing of priority documents (Special edition No. 3, OJ EPO 2007, 22)” landed on his desk.

    (Right: the IPKat gets into techno music for the occasion; click the picture to see more)

    The communication effectively tells the applicant that they don’t technically need to go to the bother of getting certified copies of priority documents (as long as they come by technical means from certain selected patent offices) because the EPO have been technically able to get copies themselves electronically, at technically no charge to the applicant. Which is very nice of them, and of course is just the sort of thing that is technically possible in this modern technological age.

    What made the IPKat’s technical whiskers spring to attention, however, was the following sentence:

    “It should be noted that, for technical reasons, this communication may be issued not only if the priority document has been included in the file ectronically [sic] in accordance with the abovementioned Decision but also if it was filed by the applicant.”

    Now what ‘technical reasons’ could there be? Interpreting this according to the EPO technical boards of appeal, the technical reasons may well possess ‘technical character’, and couldn’t therefore technically relate solely to computer programs, business methods or any of the other ‘exclusions’ under Article 52(2) EPC.

    Given that the communication technically relates to computer programs retrieving copies of priority documents, as part of the business method (‘administrative task’, if you will) of processing patent applications by technical means, how could there be any ‘technical character’ regarding the reasons why the communication might have issued if the priority documents were instead technically filed by the applicant? Could there be a special cleverly-designed piece of technical machinery somewhere at the EPO where all priority documents have to be technically processed? Or does computerised technical processing of priority documents inherently possess technical character?

    Another thought, however, occurred to the IPKat. The word ‘technical’ could instead mean what he always thought it to mean, which is to say: “this is too complicated to explain in a few words, and too difficult for mere mortals to understand, so we would rather you didn’t worry about it until you are sufficiently well-informed”. That seems to make much more sense, particularly as the EPC is full of the word being used in this sense*. The definition of ‘technical character’ consequently also becomes much more easy to understand, which goes something like: “having a character that is quite complicated and cannot therefore be expressed in words that a normal person can understand, but which I, as a well-informed clever person, can”. Now, all we have to do is find a representative clever person...

    Such as: “technically qualified” (A18-22), "technical opinion" (A23), "technical information" (A85), "technical means of communication" & "technical requirements" (Rule 2), "technical or legal difficulties" (Rule 11), "technical process" (Rules 27&29), "technical preparations for publication" (Rules 31&32), "technical designation of the invention" (Rule 41), "technical field" & "technical problem" (Rule 42), "technical features" (Rule 43), "technical relationship" (Rule 44), "technical means" (Rule 124) etc. etc.

    India trumpets her patent success

    The IPKat congratulates India on that excellent country's most recent achievement. According to a press release from the Government of India's Press Information Bureau:

    "In recognition of the efforts made by the Government of India in modernising its intellectual property systems as well as infusing transparency and openness in the system, the 170 plus Member States of the World Intellectual Property Organization (WIPO), in the recently concluded General Assemblies of WIPO, endorsed India’s recognition as an International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA). “The recognition of India as an ISA/IPEA puts India in a coveted league of only 15 nations and organization which are currently recognized at a global level by ISA/APEA”, Shri Kamal Nath, Union Minister of Commerce and Industry, informed in a press briefing ....

    The status of ISA and IPEA would be beneficial for India in several ways. Apart from the international recognition that our IP system would get, it would also generate revenues in the form of fees that would be provided to us for functioning as an ISA/IPEA. Being the only English speaking nation in the Asian region to be recognized as an ISA/IPEA would mean that several international applications received by WIPO under the Patents Cooperation Treaty would be sent to the Indian Patent Offices for search and preliminary examination purposes".
    Right: the IPKat on a recent trip to India

    The IPKat hopes that India's prestige at international level will be reflected in the increased efficiency and user-friendliness of its patent system at the domestic level. Merpel agrees, but urges the Indian patent authorities to read and take to heart the content of the Spicy IP weblog, which is a valuable, well-balanced and constructive commentator upon the Indian IP scene. That way, they will remember that the patent system is for the benefit of its users, not its administrators.

    Spicy IP petition for an Indian patent database here
    Recipes for elephant stew here; elephant soup here and elephant ears here

    Property of the imagination?

    QMIPRI -- the Queen Mary Intellectual Property Research Institute -- is holding a special Roundtable Event at its lovely new premises (67-69 Lincoln's Inn Fields, London), Friday 4 January 2008. The title of this event is 'Trade Marks ... Property of the Imagination?' Keynote speaker is Professor Sheldon W Halpern (Harold R Tyler Professor of Law and Technology, Albany Law School, USA). Other contributors are Tibor Gold MBE (Visiting Professorial Fellow, QMIPRI), Spyros Maniatis (Professor of Intellectual Property Law, Queen Mary, QMIPRI) and IPKat team member Jeremy Phillips (Olswang, Visiting Professorial Fellow, QMIPRI).

    The Roundtable starts at 10am and will be followed by a buffet lunch. Attendance is free, but places are strictly limited. Please register directly to The Roundtable has Law Society and General Council of the Bar CPD accreditation (3 points).

    Tuesday, 18 December 2007

    IP roundup conference

    The 12th Annual Intellectual Property Law Conference, held each year in London under the aegis of CLT, takes place on Wednesday 30 January 2008. As usual, it will be chaired by IPKat team blogger Jeremy, but the real attractions lie with the selection of expert speakers. This event is a bit of a Woodstock, as afficionados gather together for a blissful session of peace, love and IP. The panel includes

    * Ian Karet (Linklaters), delivering a delicious fare for patent enthusiasts, including the controversial issue of costs ("can winners be losers?")'

    * Phillip Johnson (7 New Square), explaining what the institutional shifts within the IP superstructure mean for IP users on an everyday basis;

    * Joel Barry (Olswang) on the current landmarks in UK and European trade mark infringement law;

    * Justin Patten (Human Law) pleads the case for mediation as an highly useful way to tackle IP disputes involving small or under-resourced parties.
    For full programme and booking details click here

    Cyprus fails to delight Turkey

    The IPKat slipped up in failing to note the battle between Turkey and Cyprus regarding Turkish delight (see this article in the Times). Cyprus is to gain PGI recognition for Loukoumi Yeroskipou, used to describe the sweet which is also known as lokum, or Turkish delight. While the Turks are casting aspersions on the ability of Greek Cypriots to make lokum, the Cypriots are responding that Turkey shouldn’t be able to control the name, since the sweet is also produced in Greece and Lebanon. In fact, it seems that the Cypriots aren’t trying to control the production of the sweet, but rather to raise to the profile of their loukoumi in export markets.

    The IPKat notes that now that EU GI registration has been opened up to third countries, Turkey could equally well apply for registration. Regarding the scope of registration, the IPKat wonders whether consumers could be misled, or whether Turkey could gain any real advantage from evoking the Cypriot registration, bearing in mind that Turkish production is so much more famous. Meanwhile, ever the sceptic, Merpel notes the fabulous timing of a battle about Turkish delight just before Christmas.

    Monday, 17 December 2007

    Warring parties wave their weapons when IP licences come unstuck

    This decision from the High Court for England and Wales from nearly two weeks ago, Societa Esplosivi Industriali SpA v Ordnance Technologies (UK) Limited (formerly SEI (UK) Ltd), Impact Science Ltd and Stephen Cardy [2007] EWHC 2875 (Ch) is a bit of a whopper, standing at 110 paragraphs and without many jokes or easy bits. You can read it here in full on BAILII.

    Right: warlike and multiple-headed, an ideal deterrent ...

    Societa Esplosivi (an Italian company) made a number of allegations against Ordnance Technologies (a British company) in connection with the design and manufacture of shaped warheads for use in multiple warhead systems, following their agreement to work together on the development of new generation warhead systems. The contract provided for any bids and contracts to be in the name of Societa Esplosivi, which was also to be the design authority and lead contractor in their ongoing relationship. In turn, Ordnance Technologies was to be the exclusive sub-contractor for making and testing the design concept. Under this contract Ordnance Technologies was not allowed to offer its specialist skills to anyone else and needed permission from Societa Esplosivi before it could participate in any UK classified programme or contract in which Societa Esplosivi could not itself participate.

    Ordnance Technologies subsequently contracted with Raytheon, a US weapons manufacturer, to work on a trade study project for a multi-mission missile and to undertake work on a dense metal penetrator. Societa Esplosivi, which objected to Ordnance Technologies working in those areas, issued proceedings. At the first trial the court held that Ordnance Technologies had breached the agreement by failing to supply documentation to Societa Esplosivi over which it had IP rights and by disclosing confidential information to a third party; an inquiry into damages was ordered ((2004) EWHC 48 (Ch)). Meanwhile, the allegations breach of contract, breach of contractual and equitable obligations of confidence, infringement of copyright and infringement of design right remained to be determined. Since Ordnance Technologies subsequently went into liquidation, and no part in these proceedings was taken by Impact Science (the second defendant, being a company previously purchased by it), the active dispute continued against Cardy, Ordnance Technologies' sole director.

    Mr Justice Lindsay gave judgment in part for Societa Esplosivi. In his view,

    * both in its multi-mission missile work and its dense metal penetrator work for Raytheon, Ordnance Technologies had breached its contract with Societa Esplosivi in relation to the use of the intellectual property for multiple warhead systems. It could only properly have used that information with the consent of Societa Esplosivi, which it did not obtain. Ordnance Technologies was also in breach by its insinuation of itself as the main contractor with Raytheon, to the exclusion of Societa Esplosivi . Judgment was thus entered for Societa Esplosivi on that point.

    * as to the breach of contractual obligations of confidence, the information had been given to Raytheon was of insufficient significance to be regarded as confidential within the provisions of the contract, so there was no real breach of confidence.

    * the algorithms, software and data in respect in which Societa Esplosivi claimed copyright had not been further identified in the pleadings, nor was the occasion on which it was said that some of it had been supplied to Raytheon. Even an absent party such as Ordnance Technologies, and a present litigant in person such as Cardy, were entitled to something more specifically and clearly alleged.

    * the protection usually afforded to trade secrets under the equitable doctrine of confidence was to be taken as qualified where the parties were in a contractual relationship, where the contract made express provision on the subject of confidentiality. In such a case, arguably, the express provisions of the contract should be taken to have replaced those of the equitable doctrine. Here, accordingly, it was only by reference to the contractual provisions related to confidence that Societa Esplosivi could bring its claim.

    * proof of infringement of design right through the authorisation another to infringe required proof that the alleged infringer intended that an actual infringement would take place. Such proof was not necessarily negatived by a defendant's denial. Whether the weapon made by others was immaterial, particularly if an article protected by design right had actually been made. The court was not however satisfied that, in relation to the multi-mission missile, Ordnance Technologies had for a commercial purpose made any design documents for the purpose of enabling articles infringing the protected design to be made.

    * a director would be treated as personally liable with the company as a joint tortfeasor, where the wrongful acts complained of arose from his participation or involvement in ways which went beyond the exercise of his power of control through the constitutional organs of the company. In this case Cardy had acted in a manner which was to be taken to facilitate an infringement of design right. Since he shared with Ordnance Technologies a common design that the acts complained of should take place, he had been personally involved in the commission of the tort to an extent that was sufficient to render him personally liable.

    The IPKat hates these complex multi-headed IP infringement disputes getting to court, where everyone gets to pore over militarily sensitive technology. Surely, he wonders, a good case could have been made for (i) sticking a decent arbitration clause into the original agreement and (ii) ensuring that the key employees and directors of the respective parties entered collateral contracts on their own account. Merpel notes that neither the first nor the second defendant companies appeared, and that Cardy appeared in person. Did this, she wonders, keep the costs down?

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