For the half-year to 31 December 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Jani Ihalainen, Nikos Prentoulis and Mark Schweizer.

Birgit Clark is on Sabbatical till the end of the year

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

Thursday, 2 July 2015

TMs and social security organizations before the Greek TM Office

The OAEE (initials for Organismos Asfalisis Eleftheron Epaggelmation) or, roughly, Freelancers’ Social Security Organization is (what else) the Greek State’s social security organization for “freelancers” (this includes lawyers in Greece). Exercising its wisdom (at least in trade mark terms), the OAEE filed (and registered) its logo (below right) as a trade mark in Greece in classes 16, 35, 38 and 44 back in 2009.  

Within the context of the easy breezy situation in Greece, a large number of beneficiaries of OAEE have been unable to pay social security contributions over the past years and have been exposed to the possibility of not receiving OAEE’s health benefits and services and, most probably, have also needed advice as to how to handle their situation legally. This has apparently led to the formation of collectives comprising such beneficiaries in an effort to more robustly pursue their interests.

On February such a group named (again a rough translation) “Panhellenic Group of OAEE un-insured” filed the mark below in Class 45 designating provision of information on legal issues and free legal services. 

This application allowed the Greek TM Office to issue one of its few (if not the first ever – after the 2012 TM law revision) ex officio refusals of a trade mark over famous trade mark infringement.The application was also rejected as misleading and as infringing earlier non-registered rights, namely the indication OAEE as a distinctive title. Unfortunately, the reasoning of the decision is a potpourri of the relevant grounds of refusal doing injustice to all of them. The competent Examiner, not citing the earlier OAEE registered trade mark(!), ruled that it has become a famous trade mark in Greece. Although not expressed, one can infer that the Examiner thought that the very function of OAEE suffices to render the relevant trade mark a famous one.

The decision further reads that due to the dominance of the OAEE letters in both marks, in spite of the difference in the way they are styled and the additional word indications of the later mark, the two marks are similar. This similarity leads, under the decision, to the likelihood that the public would consider there being some form of relationship between the owners of the later mark and the Greek State. This risk of ‘association’ is not categorized by the decision in any of the grounds of refusal set forth and sort of leaves us wondering. For sure, it cannot come under famous trade mark infringement, although it could fall within the ambit of the provisions on misleading marks and marks infringing earlier non-registered rights, as OAEE does not own a trade mark in Class 45.   

An interesting angle is that the right part of the later mark includes words of criticism such as "Victims of OAEE", which could give rise to freedom of expression concerns and a defence over the non-existence of any likelihood of association. Unfortunately, the applicant did not respond to the procedural invitation to submit its observations, so we may never find out if this would make an interesting case. The applicant may still file a recourse action before the Trade Marks Administrative Committee. 

This Kat regularly complains (usually in front of a mirror) of the quality of Greek TM Office decisions, because he feels it is not a very hard task. Still, he would accept the accusation that he nags a lot. The decision in Greek is here.

Allfiled allegations and interim relief: balancing the interests of litigants -- and customers

Another in this Kat's series of not-quite-so-recent cases that he is writing up now because they flashed past him when he was too busy to grasp hold of them a couple of months ago is Allfiled UK Ltd v Eltis & 16 Others [2015] EWHC 1300 (Ch), a 19 May 2015 decision of Mr Justice Hildyard, in the Chancery Division, England and Wales, in an action seeking an interim injunction to stop a total of 17 defendants -- former directors and employees and three companies -- from using its confidential information and intellectual property and from carrying on a trade similar to its own.

Once Allfiled realised that its
employees were missing, it
didn't take too long to find out
Allfiled, a company that had developed technology for the storage of important or confidential personal data, alleged that the defendants, who had all worked in developing this system, had left it in order to set up a new company that was developing and selling a similar product, and to poach Allfiled's customers. Damages were claimed for breach of fiduciary duty and breach of contractual covenants not to compete or to solicit Allfiled's customers. While Allfiled sent letters before action in January 2015, when it realised that it had lost staff and contracts, it delayed for two months before applying to the court -- and even then it only did so on the basis of the proceedings it expected to commence and without having issued a claim form. The defendants said they had used neither Allfiled's confidential information nor its intellectual property. In any event, they argued, the covenants on which Allfiled relied were too broad to be enforceable since that most computer programming companies would, on some level, compete with Allfiled and that the balance of convenience between Allfiled and the various defendants before trial weighed against the grant injunctive relief.

Hildyard J had something to please both parties in his 177-paragraph judgment, since he granted interim relief -- but only in part. In his view:

* Allfiled's basic business idea was clearly the same as that developed by the new company, even if there were differences between their respective technologies. However, competition in itself was not precluded.

* Whether the conduct of departing directors and employees was permissible or not was a fact-sensitive question.

* Allfiled's non-competition and non-solicit covenants were broad; they reinforced obligations which might otherwise be implied, but they did not define what information was properly to be characterised as confidential.

* When considering whether to grant a pre-trial interim injunction, the court had to seek to protect rights and expectations which were arguably enforceable, the breach of which could not be properly compensated by damages, applying the American Cyanamid test of whether there was a serious question to be tried unless there were "extreme circumstances where a trial is rendered plainly and obviously otiose" [para 78].

Well, they were
preparing ...
* Even though Allfiled put a term in its customer contracts that intellectual property rights vested in the customer, the evidence disclosed an at least arguable case raising a serious issue to be tried that the work done in relation to its storage system, and the system itself, was confidential and belonged to Allfiled. If this were so, any use of it by the defendants would be a serious breach of Allfiled's legal rights and a serious breach of an ex-director's fiduciary duty. There was a good arguable case against all the defendants that their implied duties of good faith and fidelity as employees included a duty not to make preparations during their employment to compete with Allfiled after their employment ended, and not to solicit other employees to leave.

* Factors against granting an injunction were that Allfiled might not even benefit from it, since it had lost its entire workforce and was in a perilous financial position, while the new company (Port Tech -- the 15th defendant) appeared interested in only one of Allfiled's customers, Magpie: this meant that leakage of information elsewhere was unlikely and an injunction could even backfire on Allfiled because, if the new company was allowed to continue trading, it was more likely to be able to pay damages than if it was forced out of business.

Some magpies seem quite
well able to look after
their own interests ...
* While those factors were outweighed by several factors in favour of granting injunctive relief, it was still inappropriate to stop the new company developing its storage system and fulfilling its contract with Magpie so long as it did so without the use of any property or confidential information that belonged to Allfiled. Injunctive relief would therefore be granted with that proviso, with Port Tech putting part of its profits in escrow -- and an expedited trial of the proceedings would be ordered.

* Given the court's assessment of the balance of convenience, it was not strictly necessary to consider what should be taken as the status quo for the purpose of the American Cyanamid test. Allfiled had actually delayed seeking relief and, while delay was not of itself fatal to relief, the longer the "last change" had gone unchallenged, the more likely that it would be established as the new status quo. The fact that Allfiled had taken a risk in waiting two months after issuing its first challenge to the defendants was another reason for the provisos in the injunctive relief granted.

This Kat hasn't come across an instance before in which the party seeking interim relief no longer has a workforce to service lost customers and wonders if this has happened before. Since specific performance of contracts of employment and, presumably, directors' contracts, is not an available option, the notion of protecting the interest of Magpie -- not a party but nonetheless represented in these proceedings -- seems only right and proper.

Wednesday, 1 July 2015

No go for GO: Skechers scupper trade mark applications

In the next few weeks, this Kat will be posting on a number of cases that are still of interest though they are no longer "hot news", these being decisions on which was unable to comment at the time they were published since he was up to his whiskers in conferencing and foreign travel. The first of these is GO Outdoors Ltd v Skechers USA Inc II [2015] EWHC 1405 (Ch), a 19 May decision of Mrs Justice Rose, sitting in the Chancery Division, England and Wales, on an appeal from a decision of the UK Intellectual Property Office.

GO Outdoors ('GO') -- apparently the UK's largest specialist retailer of camping equipment, outdoor clothing and footwear -- applied to register as UK trade marks the words GO WALKING and GO RUNNING in both stylised and non-stylised forms (as represented on the right) for rucksacks and bags (Nice Class 18) and retail services connected with the sale of clothing and accessories (Class 35).

GO had used these marks over many years in its stores' signage, marketing literature and radio and television advertising throughout the UK. US footwear manufacturer Skechers opposed on absolute grounds, objecting that the marks were devoid of any distinctive character under the Trade Marks Act 1994 s 3(1)(b) and that they were purely descriptive contrary to s3(1)(c) of the same Act.

The hearing officer [the seasoned George Salthouse, interjects Merpel] dismissed the opposition under s 3(1)(c) since he concluded that the terms "go walking" or "go running" did not actually describe the basic activities of walking or running: while "walking" and "running" described the basic activity, the addition of the word "go" altered their character by turning them into an order or exhortation to carry out the activity in question.  However, he agreed with the challenge based on the marks' inherent distinctiveness under s 3(1)(b), holding that they failed to meet the criteria in Case C-398/08 P Audi AG v OHIM [the 'Vorsprung durch Technik' case, noted by the IPKat here] in that they lacked originality, did not require any interpretation by the relevant public and were not indicative of a particular undertaking. Nor had the marks acquired distinctiveness through use.

GO appealed, submitting that the hearing officer had wrongly treated Audi as deciding that a mark had to possess a certain originality or resonance requiring at least some interpretation by the relevant public or setting off a cognitive process in the mind of that public in order to have inherent distinctiveness; that he had made findings in relation to distinctiveness under s 3(1)(b) that were inconsistent with his findings on descriptiveness for s 3(1)(c); (3) and that he had failed to give proper weight to the evidence of the use of GO's marks over the years.

Mrs Justice Rose dismissed GO's appeal. In her view:

* the hearing officer would have been wrong to hold that Audi established that slogans could not be distinctive unless they had originality or resonance, since the requirement for a trade mark to be distinctive was no different than for any other type of mark -- but he didn't hold like that since he took the trouble to consider whether GO's marks were distinctive even if they lacked originality or resonance. The reason why he said they lacked distinctiveness was because they would not enable the average consumer to distinguish goods being retailed by one undertaking from those of another.

Skechers: putting the boot in
* the reason why the hearing officer's findings in relation to distinctiveness and descriptiveness were apparently inconsistent was because they were made in answer to very different questions. In relation to descriptiveness the issue was whether the terms were descriptive of the retail services for which GO sought registration ( they weren't), while the descriptiveness issue was whether the public would recognise those marks as an indication of origin because they were inherently distinctive or had acquired distinctiveness through use (which they wouldn't).  He thus rejected the claim to distinctiveness of the marks not on the basis that they were descriptive of the retail services but because the public would perceive them as merely pointing to where the goods were to be found in the store, not as indicating that they were from a particular source. There was therefore no inconsistency.

* on the evidence -- photographs of the inside and outside of GO's stores, its in-store banners and posters and copies of advertising material -- the hearing officer's stated reasons for finding that it did not show the kind of use that would cause the marks to acquire distinctiveness had been clearly set out and there was nothing wrong with his conclusion.

For good measure she added, obiter, that the hearing officer's decision that GO's marks did not describe the activity of shopping for outdoor clothes or shoes and did not comprise a sign or indication which might designate characteristics of that service was clearly correct.

Adds the IPKat, it is not always appreciated that, unlike oppositions under the Community trade mark system, which can only be made on relative grounds where the opposition is founded on the existence of an earlier registered or unregistered right, oppositions in the United Kingdom can (as in this instance) also be made on absolute grounds of refusal.  Merpel notes that it's never to late for GO Outdoors to rectify the position: all they have to do is just keep on using the target marks as trade marks for the goods and services in question, spend lots of money on educating their customers, suppliers and everyone else that the words "GO Walking" and "GO Running" are specific indicators of their products, amass loads of evidence to that effect, hope that someone else will use the same words in the course of trade so that they can successfully sue them for passing off -- and then apply again. Should be easy!

Rules of GO here, not to be confused with the 'other' GO here
Go Fly a Kite here
Go take a running jump here
Go to Hell here

The IPKat and his friends: the latest round-up of our IP weblog news

Once every three months or thereabouts, the IPKat and Merpel post an update of the goings-on both on this weblog and on other IP-flavoured blogs to which members of the IPKat's blog team contribute. 

There are a couple of items of news relating to the blog team "regulars". First, Birgit is taking a Kat sabbatical till the end of the calendar year, when we look forward to welcoming her back.  Secondly, we are happy to record the return of one of our former regulars -- Nicola Searle -- who, in her guise of the Katonomist, composed some highly thought-provoking pieces about the role of IP in economics, and vice versa. 

Now for news of our guest Kats who, for a full six months, join the team and are vested with full blogging powers and privileges on equal terms with the blog team regulars. Back in January of this year we had the pleasure of introducing readers to guest Kats Tom Ohta, Valentina Torelli and Suleman Ali.  At midnight last night we said our sad farewells to them, thanked them for their contributions and wished them the very best in their post-Kat activities.

As in real life, so too on the blogosphere is sadness so often tinged with joy, for the departure of our recent guest colleagues coincides exactly with our pleasure at welcoming two brand new guest Kats who have joined us from 1 July till midnight on 31 December.  They are Nikos Prentoulis (Prentoulis Lawyers & Consultants, Athens) and Jani Ihalainen (Redd Solicitors, London). Both have blogging experience (Nikos as a long-term member of the MARQUES Class 46 team and Jani with his own IP Iustitia weblog).  We are also thrilled to mark the arrival of a third guest, a prodigal Kat returning to the fold, is Mark Schweizer (Meyerlustenberger Lachenal, Zurich), a fellow Class 46 blogger and an adjunct judge in the Swiss Federal Patent Court. We wish them the best of luck -- and hope that you will enjoy their contributions. 

Kat-stats


Over the past few weeks, the stream of visitors to this weblog has continued to grow. Since June 2003 we've now received more than fourteen and a half million page views. Nearly 9,500 individual blogposts are online and can be searched via the blog's search box at the top left hand corner of its home page.  This year looks like being our busiest ever. So far, over half a million visits have been made to us, around twice the volume of readers at this time last year. In March of this year alone, the IPKat welcomed 212,040 site visitors -- the highest monthly figure ever recorded.

The number of readers receiving Katposts by email is, at the time of writing, 11,811, and this blog is pursued by over 11,200 followers on Twitter at @Ipkat. The most frequently-visited blogpost remains Catherine Lee's June 2011 item, "Goodbye Cathy: Hello Kitty and Miffy settle copycat case", here, which has been visited more than 239,000 times. 

The blog operates a moderated comments facility and invites readers to post comments that are relevant, responsible and neither obscene nor insulting. At present the number of readers' comments posted to this weblog stands at over 24,500 -- and we give a big "thank you" to those who have taken the time and trouble to share their thoughts and information with us and with our readers.


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The Kat's blog friends. Every few months this weblog lists, in no particular order, a number of IP -flavoured weblogs with which members of the IPKat's blogging team are associated. If you've not yet come across them -- and many of our more recent readers probably have not -- we hope that you will find some merit in them. For the avoidance of doubt, this list only relates to IP blogs to which Kat team members contribute: it is not intended as an exhaustive list of intellectual property blogs, or of blogs that have received our personal blessing. That's why there are plenty of IP blogs that are not listed, even though we know about them, like them and often read them!


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Class 46, founded by friends of European trade mark organisation MARQUES and driven by a big team of international contributors, delivers trade mark and brand-related news and developments from across Europe (www.marques.org/class46/). As of today, this blog has no fewer than 4,463 email subscribers and a searchable database of well over 4,000 items -- mainly relating to European case law and office practice but with coverage of plenty of other themes too, including plain packaging of tobacco products and the latest WIPO and OHIM initiatives for assisting users of the international and Community trade mark systems. Kats Jeremy and Birgit both contribute to this blog, as do former guest Kat Laetitia Lagarde and current Kat Mark Schweizer.  
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Class 99, founded by patent and trade mark attorney David Musker, is dedicated to design law and practice in the UK, in Europe and beyond (http://www.marques.org/class99/default.asp). This weblog is now part of the MARQUES social media family along with Class 46. It has 1,750 email subscribers and a searchable database of over 630 items.  New blog team contributors are earnestly sought from among the ranks of those who are either MARQUES members or work for a company or firm that belongs to MARQUES.
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Incidentally, Class 46 and Class 99 are just one small but significant part of MARQUES's social media presence. Posts on both blogs are usually recorded on MARQUES's Twitter account at https://twitter.com/MarquesIP and all sorts of items concerning trade marks, brands and designs are likely to end up on MARQUES's Facebook page, which you can access at facebook.com/marques.ip. MARQUES also has a very busy and carefully moderated LinkedIn discussion group, with well over 3,300 members.

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The 1709 Blog, which caters for the copyright enthusiast and seeks to cover all aspects of copyright law and practice in all its rich and varied glory (the1709blog.blogspot.com/). As of today, this blog has 2,470 email subscribers and a searchable database of nearly 2,100 items. It has a large and international team of contributors: Glastonbury Festival's Ben Challis, IPKat bloggers Eleonora and Jeremy and recent guest Kat Marie-Andrée Weiss, Professor Mira T. Sundara Rajan, John Enser (Olswang) and our man in Paris, Asim Singh. You can follow this blog on Twitter, here.
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The SPC Blog is a handy information source for anyone who is involved in the tiny but controversial and highly lucrative world of supplementary protection certificates (SPCs) for pharmaceutical and plant protection patents, as well as other forms of patent term extension (thespcblog.blogspot.com/). As of today, this blog has 2,052  email subscribers, many of whom have enriched the content of this weblog with their comments and through the provision of information concerning SPCs. This blog contains over 600 items, including English translations of some European national decisions that are not available elsewhere.  Incidentally, The SPC Blog organises an annual seminar, which is free to all comers and provides a great opportunity for pharma patent-owning companies, generics, private practitioners and patent office functionaries to get together and compare notes.
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PatLit tackles patent dispute resolution topics -- principally litigation -- not just from the UK but from wherever interesting news and comments emerge. As of today this blog, whose contributors include Michael Thesen, and David Berry, has 1,466 email subscribers and a searchable database of getting on for 970 items. Within the near future, PatLit is to be relaunched as IP-Lit, covering not just patent dispute resolution but litigation and its alternatives right across the spectrum of intellectual property rights. If you are interested in participating in this blog -- particularly if you are based in the United States, Canada, Australia/New Zealand or one of the major Asian markets, do please get in touch!
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IP Finance, which was launched in January 2008 in response to the UNCITRAL initiative on security interests in intangibles, touches that delicate interface between intellectual property and the world of finance, addressing securitisation, valuation, royalty rates, assessment of damages and the evolution of new business plans (http://ipfinance.blogspot.com/). As of today, this blog has 1,567 email subscribers and a searchable database of almost 1,300 items. Kats Neil and Jeremy write for this blog, which is also garnished with content from US academic Mike Mireles and (F)RAND expert Keith Mallinson (WiseHarbor).
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jiplp is the blog of the leading Oxford University Press monthly publication, The Journal of Intellectual Property Law and Practice (JIPLP), which IPKat team member Jeremy (jiplp.blogspot.com/edits, with assistance from Deputy Editor Eleonora. As of today, this blog has 1,002 email subscribers and a searchable database of 601 items. This blog's content includes Current Intelligence notes, book reviews, requests for articles on specific topics and occasional guidance as to how to write (or not to write) good IP articles. There's an active and carefully moderated LinkedIn Group for JIPLP contributors and readers with over 330 members, which you can see here.  You can also follow this blog on Twitter here.
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Afro-IP (afro-ip.blogspot.com/), for which the blogmeister is Darren Olivier, deals with the IP scene in Africa. As of today, this blog has 890 email subscribers and a searchable database of over 1,800 items. This blog, which offers the largest single searchable online source of recent African IP news, features Caroline Ncube, Jeremy Speres, Isaac Rutenberg and Chijioke Ifeoma Okorie within its blog-squad.  Afro-IP can be followed on Twitter here.
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IP Tango (iptango.blogspot.com/), which is a bilingual blog with contributions both in Spanish and English, covers the increasingly important developments for IP in Latin America. As of today, this blog has 536 email subscribers and a searchable database of over 1,400 items. Like Afro-IP, IP Tango is a major source of intellectual property information and comment in its increasingly important area of focus.
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Art & Artifice (www.artandartifice.net/). As of today, this international weblog, which includes Simone BlakeneyRosie BurbidgeRachel BukerAngela Saltarelli, Elizabeth Emerson and Marian Ang, has 560 email subscribers and a searchable database of 476 items. Its scope is broad enough to cover not merely intellectual property law but other areas of legal concern for artists and the art-driven industries. Art & Artifice recently launched a Twitter presence that is followed by getting on for 300 readers.
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Revitalised last year and growing in momentum is SOLO IP, which reflects some of the interests, and the anguish, of those who practise IP by themselves or in small groups, or who work in environments in which they are the only IP people (soloip.blogspot.com/). As of today, this blog -- which is driven by blogmeister Barbara Cookson (Filemot Technology Law Ltd), has 305 email subscribers and a searchable database of 446 items. This blog warmly invites expressions of interest from would-be bloggers (on which see 'Would you like to be an IP Blogger' below)
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Would you like to be an IP blogger? Most of the weblogs listed above are still hoping to recruit some fresh talent into their blogging teams, as well as to host more good guest items from occasional writers. If you (i) have something valuable to say about IP, (ii) have some experience of IP in one form or another and (iii) think that you may be able to turn your hand at blogging (or already have some experience), do email Jeremy at jjip@btinternet.com, attaching or linking to your CV, and explain why you think you might be a good blogger.

Tuesday, 30 June 2015

Tuesday tiddlywinks

The advantage of a furry face:
no-one can see you blush
Justia Blawgsearch. Via a post on the excellent Copyright Litigation blog ("All practice, no theory") this Kat read with happiness, excitement and not a little embarrassment that the IPKat weblog has come top in the Justia Blawgsearch list of the "25 Top Copyright Blogs of All Time".  

Once again the IPKat, Merpel and all the blog's contributors take the opportunity to say a big thank-you to their readers and information-providers and to the litigants, legislators, judges and consumers who have combined to make copyright what it is today ...



Matters arising 1. Earlier this month, thanks to Axel Paul Ringelhann, the IPKat announced the reference to the Court of Justice of the European Union of some Community trade mark questions relating to phonetic similarities between marks in Case C-223/15 Combit Software. The official English translation of those questions is now available and the UK Intellectual Property Office invites comments by 10 July 2015 which might persuade the UK government to make representations of its own. Details can be found here.


Matters arising 2. Yesterday morning the IPKat posted a guest article by Revital Cohen, "Is UberPOP a transport service? A new reference to the CJEU". Frustratingly the version of the article that was originally posted managed to de-format itself and almost all the hyperlinks vanished.  The article has since been repaired and the hyperlinks restored. You can now read it here while clicking to your heart's content. Apologies to all our readers -- and of course to Revital.



At sea with Oracle? Better than a coracle
Matters arising 3. Way, way back in December of last year the Kats hosted a guest blogpost from Thomas Dubuisson, "Oracle v Google: are certain elements of the Java platform entitled to copyright protection?" The US Supreme Court has just refused to hear Google's appeal. As Thomas explains, iGoogle, Inc. v Oracle America, No. 14-410 a petition for a writ of certiorari was finally denied since Google failed to convince the US Supreme Court to hear the case. It is a big victory for Oracle! As a reminder, on 6 October 2014, Google filed a petition asking that court to review the Federal Circuit's appellate ruling holding Oracle's asserted Java API declaring code to be copyright-protected. This saga, which already started four years ago, is still not over. The case is now sending back to the District Court in CA for a retrial on API under 'fair use'.



Most events offer refreshments ...
Forthcoming events. The IPKat's calendar of Forthcoming Events can be checked out here -- and it has some recent additions, so do take a peep. Additionally, the July events diary of the Queen Mary Journal of Intellectual Property can be accessed here. One forthcoming event that this Kat is particularly excited about is the JIPLP-GRUR seminar on Tuesday 8 September on the enforcement of IP rights in the wake of the IP Enforcement Directive.  You can get all the relevant details by clicking here. It's free, it's fun and it's instructive. See you there?




Around the weblogs 1. The SiNApSE blog runs a "young intellectuals" feature, in which bright young IP talent is interviewed.  Six people have been interviewed so far, most recently Dominic D'souza. You can check the series out here.  Another blog which has recently come to this Kat's attention is Chillin' Competition, composed by Pablo Ibáñez Colomo -- it's well worth a look. Meanwhile, Mark Anderson, the doyen of IP transactional bloggers, expresses in IP Draughts his own perplexity at the increasingly execrated ruling of the US Supreme Court on post-expiry royalty payments in Kimble v  Marvel. Finally, from the European Commission's blog, keen holiday snappers can put their minds at rest after digesting the good news that "Europe is not banning tourist photos of the London Eye" (Katpat to Chris Torrero), a theme addressed by fellow Kat Eleonora earlier today. In short:
"Recent press reports may have left readers with the idea that the EU is about to legislate to “ban” or “censor” holiday snaps of famous monuments and art works and/or make it illegal to upload them to Facebook or Instagram. There is no such legal proposal on the table. Even if there were, it would require the agreement not only of MEPs but of a large majority of Member States, most of which, like the UK, currently apply “freedom of panorama”. That principle allows anyone to publish, even for commercial ends, images of public places, including the buildings and public art works permanently located in those places. Some other Member States, including France and Belgium, have laws which restrict – usually to non-commercial purposes – the use of such images without prior authorisation. But they do not seek to ban people from taking photos for their own pleasure. Neither is there any evidence that tourists are being dragged through French or Belgian courts simply for uploading holiday photos to their Facebook page, as the reports suggest would be the case if similar rules were extended EU-wide".

Around the weblogs 2. The MARQUES Class 46 and Class 99 weblogs both invite their readers to participate in the organisation's "tell us who you are and what you want" survey, which offers a bottle of Luxembourg Cremant as a random prize to one lucky adult respondent.  Class 46 also carries Laetitia Lagarde's useful posts on proof of priority in Community trade mark (CTM) opposition proceedings and on the inevitable problems faced by anyone trying to register the word essence as a CTM for cosmetics. The jiplp weblog hosts a follow-up by Jakub Mrozowski and Michal Siciarek to Tomasz Rychlicki's earlier CTM piece on how to justify decisions while rejecting the evidence.

Looking for a job? The United Kingdom Intellectual Property Office is currently advertising for a new, London-based press officer. The particulars can be accessed and read here. Being a media relations officer is not apparently for the faint-hearted, the position being "highly rewarding" [not that these words refer to the remuneration ...] and, in words that could have been specially selected by the Delphic Oracle, an "active job which you will be hard pressed to match".  

Are EU policy-makers fighting the right copyright battles?

Amidst all these polite conversations
around EU copyright reform ...
Debate is currently being undertaken at the level of EU institutions as to whether the existing legislative framework in the area of copyright should be updated. 

In May 2015 the EU Commission issued its Digital Single Market (DSM) Strategy [here]. As far as copyright is concerned, despite earlier statements by Commissioners Ansip (from @Ansip: “We are reforming & modernising #copyright rules to get rid of pointless barriers on transfer & access to digital content” (23 February 2015); “#copyright rules fit for digital age? I don’t think so” (19 March 2015)) and Oettinger (from @GOettingerEU: “Modern #copyright rules … are the key goals for 2015” (6 January 2015)), the DSM Strategy does not contain much. 

Policy action is in fact only likely to occur in relation to three issues: (1) (lack of) cross-border access to content and its portability; (2) text and data mining for non-commercial and commercial purposes alike; and (3) discussion around civil enforcement and the role of internet service providers. 

In addition to the very narrow focus of proposed interventions, the DSM Strategy does not clarify what legal instruments (if any) would be adopted to undertake reform in the proposed areas.

In parallel to initiatives on the side of the Commission, also the European Parliament has engaged in the copyright reform debate. Pirate Party member and MEP, Julia Reda, was tasked with drafting a Report on the implementation of Directive 2001/29/EC (‘the InfoSoc Directive’). The original version [here] contained a number of ambitious proposals to reform EU copyright. Following its publication in early 2015, numerous amendments were however presented, so that the text approved by the Legal Committee of the European Parliament in mid-2015 represents a significantly watered-down version of the original Report [a final vote in the plenary of the Parliament is due to take place in early July].

Among the things that have generated a heated debate there is the so called freedom of panorama [here]. Article 5(3)(h) of the InfoSoc Directive allows Member States to introduce into their own national copyright laws an exception or limitation to copyright exclusive rights to allow "use of works, such as works of architecture or sculpture, made to be located permanently in public places". 

... Is it really worth fighting
against freedom of panorama?
Due to the optional (with the sole exclusion of the temporary copies exemption) nature of exceptions and limitations in Article 5 of the Directive, there is a number of Member States, eg France and Italy, that have decided not to transpose Article 5(3)(h) into their own copyright laws.

In the Report as originally enacted, among other things Ms Reda recommended that freedom of panorama be made mandatory (rather than merely optional) for Member States to implement into their own legal regimes. 

The amended version of the Report (as approved by the Legal Committee) includes a recommendation that "the commercial use of photographs, video footage or other images of works which are permanently located in physical public places should always be subject to prior authorisation from the authors or any proxy acting for them".

To translate the latter proposal to reality it would be necessary to amend the InfoSoc Directive. However, at the moment re-opening the InfoSoc Directive does not seem to feature high in the agenda of the Commission (although it is unclear how text and data mining for commercial and non-commercial purposes alike would be achieved).

Is it smart?
In any case, besides legal technicalities the current approach to (lack of) freedom of panorama has generated (outraged) headlines. These have ranged from ‘How the absurd EU copyright law threatens to censor holiday snaps’ of The Times (24 June 2015) to ‘Why the EU wants to stop you posting your vacation photos online’ of Forbes (25 June 2015), and ‘Freedom of panorama: EU proposal could mean holiday snaps breach copyright’ of The Telegraph (25 June 2015). 

Such reactions suggest a complete lack of support on the side of the public opinion. Thus the question that arises is whether relevant EU policy-makers have chosen the right battle to fight: is it so vital to restrict freedom of panorama at the EU level?     

Paucity of case law even in those Member States that do not acknowledge freedom of panorama may suggest that this is not really an issue about which relevant rightholders are so passionate that they cannot stand the idea of not suing alleged infringers. 

All in all, the main message that is being conveyed and perceived by the general public is that copyright imposes unreasonable restrictions and is, ultimately, a ridiculous set of norms. 

Is this good for creators, copyright owners, and users of copyright-protected works alike? Not really.


(This is the text of a forthcoming Editorial in the Journal of Intellectual Property Law & Practice)

Patent Déjà vu - Hospira v Genentech and another patent dies

There has been a superabundant deluge of patent cases last week, with two decisions from the Court of Appeal and two from the Patents Court.  So it is with slight delay that the IPKat comes to the latest decision in the apparently endless Hospira v Genentech saga.  Hospira is seeking to invalidate all of Genentech's secondary patents relating to the cancer drug trastuzumab (Herceptin) so that it can market a generic version now that the SPC for the basic patent has expired.

Two patents were killed off in the first action (reported here and confirmed on appeal here).  Another two were killed off as reported here (some claims survived in one patent, but these are apparently not of concern to Hospira); this is currently under appeal.

The present case Hospira UK Ltd v Genentech Inc [2015] EWHC 1796 (Pat) concerns EP (UK) 1037926, which concerns a combination of trastuzumab with another favourite of pharmaceutical litigation, taxol (and other taxanes).  The unbrief main Swiss claim (there was also a claim in the EPC 2000 format) as granted reads (with the integer numbering adopted by the Court):

[1] Use of an anti-ErbB2 antibody in the preparation of a medicament
[2] for treatment to provide clinical benefit as measured by increased time to disease progression of malignant breast cancer characterised by overexpression of ErbB2 in a human patient,
[3] wherein said antibody binds to epitope 4D5 within the ErbB2 extracellular domain sequence as determined by a cross-blocking assay using said antibody and antibody 4D5 obtainable from deposit ATCC CRL 10463,
[4] and wherein the method comprises combined administration of the antibody with a chemotherapeutic agent which is a taxoid and not in combination with an anthracycline derivative,
[5] wherein the combined administration has:

[a] clinical efficacy as measured by determining time to disease progression and

[b] reduced myocardial dysfunction compared with combined administration of the antibody and anthracycline derivatives.


Mr Justice Arnold construed the claim as requiring by integer [2] that it is known to, or reasonably foreseeable by, the manufacturer of the medicament that the antibody will be intentionally administered in combination with a taxane for the relevant therapeutic purpose.  He also construed that integer as requiring that the combination of antibody and taxane be more effective than the taxane alone, resulting in an increased time to disease progression (abbreviated as TTP).

There was only one piece of prior art to consider -  Baselga et al, "HER2 Overexpression and Paclitaxel Sensitivity in Breast Cancer: Therapeutic Implications", Oncology, 11, Supp. 2, 43-48 (March 1997) ("Baselga 97").  This describes, among other things, a Phase III trial of trastuzumab in combinations with paclitaxel and other agents, but does not disclose any results from that trial, but it does disclose the results from the Phase I and II studies.

The judge considered that Baselga 97 did not enable the clinical benefit claimed in the Patent to be directly and unambiguously derived, and therefore that the claim was novel.

Turning to inventive step, Arnold J set out that the authorities required "a reasonable or fair expectation of success" for a claim to be obvious.  Thus he considered the issue to be whether the skilled person would have a fair expectation of success, meaning a fair expectation of increased efficacy as measured by TTP of the combination compared to taxane alone, if he were to undertake the phase III trial.  Even though the results of the trial were not disclosed in Baselga 97, because it was ongoing, the judge found that the results that were in the document, in particular that the results of the Phase II trials and the xenograft studies were described as "positive" and "encouraging", would cause the skilled person to have had a reasonable expectation of success in the Phase III trial.

Therefore he found the claim to be obvious.

A relatively brief decision merits a relatively brief report.  One thing that does strike this Kat is that in the first of this series of cases, EP 1 210 115, directed towards a dosage regime of trastuzumab, was held to be invalid on the basis that the skilled person would attempt a trial of the claimed regime; there was no need for a fair expectation of a positive outcome of the trial - only sufficient expectation to actually conduct it.  As far as this Kat can tell, this is because in that case the claim did not recite any clinical benefit, so there was no need for the skilled person to expect one for the claim to be obvious.  But the IPKat would be interested in readers' views.


Letter from AmeriKat: Spiderman's web ensnares the US Supreme Court in Kimble v Marvel

Try as she might, the AmeriKat is
no Spiderman...
It was a busy week for the US Supreme Court last week, as it delivered blockbuster judgments on Obamacare and same-sex marriage rights.  No surprise that the Supreme Court's decision in Kimble v Marvel may have been missed by all but a few keen IP legal eagles. But not to fear, in superhero spirit the AmeriKat has come to the rescue...

Background

Back when the AmeriKat was only a kitten, Stephen Kimble obtained a patent for a toy (US Patent No 5,072,856).  The toy allowed children to role-play as a "spider person" by shooting webs "from the palm of [the] hand" by way of pressurized foam string.  The patent was filed on 25 May 1990.

Kimble then met with the president of Marvel, the maker of Spider-Man products (among other super hero comic book characters), with the view to sell or licence his patent.  Soon afterward, Marvel started selling a toy dubbed the "Web Blaster" - a toy which encompassed a polyester glove and a canister of foam that when deployed would mimic the infamous Spider Man's web.  In 1997, Kimble sued Marvel for patent infringement (among other claims).  The litigation settled and Marvel agreed to purchase Kimble's patent in exchange for about $500,000 and a 3% royalty on Marvel's future sales of the Web Blaster. The royalty payments were not subject to an end date.  In the words of the court, the parties apparently contemplated that the royalties would "continue for as long as kids wanted to imitate Spider-Man (by doing whatever a spider can)."

Everything was going along fine until Marvel stumbled across Brulotte v Thys (1964).  In this case the US Supreme Court held that a patent holder cannot charge royalties for the use of his invention after its patent term has expired.  This would have the effect of sunsetting the royalty payments under the Kimble/Marvel agreement.  But at the time of negotiating the settlement, neither party was aware of the case.  Nevertheless, Marvel sought declaratory judgment that the licence payments could stop.  The federal district court and, then, the Court of Appeals for the Ninth Circuit agreed (although begrudgingly on the basis that Brulotte was "counter-intuitive" and "unconvincing").  Despite the Brulotte decision, Kimble sought the help of the Supreme Court asking it to depart from the rule in favor of a "flexible, case-by-case analysis...under the rule of reason" under anti-trust law.  This rule requires that the courts analyze a practice's effect on competition (i..e whether a patentee is curtailing competition).

Justice Kagan, adding the
"super" to the Supreme Court
The Question for the Court

Should the US Supreme Court overrule Brulotte?

The Answer

No.  Adhering to the principles of stare decisis (i.e. the notion that today's Court should stand by yesterday's decision), the US Supreme Court refused to overrule Brulotte.  Although they recognized there are critics of the Brulotte rule (which included the dissent), those critics "must seek relief not from this Court but from Congress".

The Reasoning

The Supreme Court's decision, lead by Justice Kagan, can be boiled down into three maxims:

Maxim #1:  All good things come to an end, even patents.
As Justice Kagan put it:  "Patents endow their holders with certain super powers, but only for a limited time".  This was the balance struck by Congress to incentivze innovation but to ensure access to discoveries in a "post-expiration public domain".  The balance is struck by way of the 20 year duration of a patent which runs from the day the application was filed.  Once expired, then the patentee's ability to control the use of the patent expires.  The US Supreme Court has carefully guarded this cut-off in a series of cases of which Brulotte was one of them.  In that case by an 8-1 vote, the US Supreme Court held that a licence agreement was unenforceable in so far as it provided for the payment of royalties after the last of the patents incorporated into a hop-picking machine had expired.  The court cited the decision of Scott Paper holding that any attempt to limit what a licensee can do with an invention following expiration of the patent would run "counter to the policy and purpose of the patent laws."  To hold otherwise, would allow the patent monopoly to continue beyond the patent period (although it would only be the licensee who would be impacted and not the entire world).
Maxim #2:  If it ain't broke, don't reverse it.
Kimble's now infamous
sticky spiderweb string patent
In a few pages of exquisite explanation, the Court held that to do so would cut across the principle of stare decisis.  Although stare decisis is not an "inexorable command" it is nevertheless the desirable course as it promotes the predictable and consistent development of law (Payne v Tennessee) and avoids the expensive reopening of litigation.  However, the Court noted that respecting the principle can mean "sticking to some wrong decisions".  Nevertheless, when there are critics of a decision, the opponents have the opportunity to take their complain "across the street, and Congress can correct any mistake it sees". But, continued Justice Kagan, in this case Congress has refused several opportunities to revisit Brulotte namely when it has revised/re-examined the period of protection for patents (see for example, the Uruguay Round Agreements Act).  Congress has also rejected proposed legislation that would have replaced the Brulotte rule with Kimble's anti-trust style analysis.  Congress' reluctant to meddle with the law strengthened the application of stare decisis especially in case like this one where statutory IP law and contractual law intersected. 
Reversing Brulotte had to be for a "superspecial justification" which could not be found in Kimble's argument.  First, there was no justification in the statutory and doctrinal underpinnings of the Brulotte rule (i.e. a patent's duration) as neither had changed over time.   Second, Brulotte is not unworkable; it is simple to apply.  All that needs to be asked is whether a licence agreement provides royalties for the use of a patent post-expiry.  If it does not, then Brulotte does not apply.  Kimble's anti-trust rule of reason, in comparison, is far more unwieldy and would, in the Court's opinion, produce "notoriously high litigation costs and unpredictable results".  
Maxim #3:  Complain to Congress, not the Court.
Please file your complaints with
the US Congress
Kimble's reasoning that Brulotte rests on a mistaken view of the competitive effects of post-expiration royalties and suppresses technological innovation  may give Congress a reason to legislate the Brulotte rule, but did not justify the Court doing so.  Kimble argued that the Brulotte rule assumed that post-patent royalty arrangements are anti-competitive but that was not the case; more often than not they increase competition on the basis that a longer payment period is generally a lower one leading to lower consumer pries.  Although the Court did not take issue with Kimble's economic reasoning, they nevertheless considered that if such economic misjudgement existed it was the job of Congress to fix it.  Unlike antitrust law via the Sherman Act, patent laws "do not turn over exceptional law-shaping authority to the courts.  Accordingly, statutory stare decisis...retains it's usual strong force".  In any event, the Court did not consider that Brulotte was premised on a misunderstanding of the economic concepts at play.  Competition considerations did not have a role to play in Brulotte as patent law does "not aim to maximize competition (to a large extent, the opposite.)"  The patent term is also a "bright-line rule" that does not call for "practice-specific analysis" as demanded under the anti-trust rule of reason principle.  Taken together, economic policy had no role to play in Brulotte.  Kimble's real complaint likely boiled down to the merits of such a patent policy, but again the Court said that was a complaint for Congress not them.  
In conclusion, the Court held:
"What we can decide, we can undecide. But stare decisis teaches that we should exercise that authority sparingly. Cf. S. Lee and S. Ditko, Amazing Fantasy No. 15: “SpiderMan,” p. 13 (1962) (“[I]n this world, with great power there must also come—great responsibility”). Finding many reasons for staying the stare decisis course and no “special justification” for departing from it, we decline Kimble’s invitation to overrule Brulotte."

What does this mean?

Not everyone is happy in the Supreme Court
following the decision in Kimble
The Brulotte rule and the "bright-line rule" of patent duration remain steadfast.  Patentees can continue to licence their patent rights but only until the expiry of the patent.  Once the patent term expires, that contract is invalid under the Brulotte rule (subject to the contractual caveats outlined in the decision). The Court has also distinguished the role of the courts in developing anti-trust law with that of the statutory provisions in patent law, with the former permitting increased judicial involvement.

Although Kimble lost, he will have taken some solace in the vocal dissent from Justice Alito, joined by Chief Justice Roberts and Justice Thomas, who declared the Brulotte decision as a "bald act of policy making" and one that:
",..interferes with the ability of parties to negotiate licensing agreements that reflect the true value of a patent, and it disrupts contractual expectations. Stare decisis does not require us to retain this baseless and damaging precedent."
In a final damning conclusion, Justice Alito states
"In the end, Brulotte’s only virtue is that we decided it. But that does not render it invincible. Stare decisis is important to the rule of law, but so are correct judicial decisions." 
Time to walk across the street and knock on Congress' door....

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