From March to September 2016 the team is joined by Guest Kats Emma Perot and Mike Mireles.

From April to September 2016 the team is also joined by InternKats Eleanor Wilson and Nick Smallwood.

Monday, 30 May 2016

Never Too Late: If you missed the IPKat last week

Were you away and missed the last week of IPKat? Well, here's Never Too Late, number 98, and bang up to date!

* Are academic publishers liable for ginormous damages?

If a US academic author attempts to assign copyright to an academic publisher, but universities own the copyright in articles all along, could academic publishers be in serious trouble? Mark Schweizer explains the current debate.

The draft UPC Code of Conduct has, apparently, answered some of Merpel's questions... but raised many more for the rest of us.

* What does the timing of the US Defend Trade Secrets Act and EU Trade Secrets Directive really mean for companies?

AmeriKat and James Pooley explore the transatlantic implications of the two new legislative measures strengthening trade secrets protection, just before the EU Trade Secrets Directive was unanimously adopted (see below).

David Brophy brings us an impending CJEU reference which queries what happens when the owner of a trademark right has caused uncertainty as to the function of origin. In particular, although it may seem to be a single entity, the Schweppes mark has various owners across the EEA and so parallel importing is a real possibility.

The new transfer process from triage appears not to have opened the floodgates to overwhelm IPEC, but questions remain about the valuation of IP on the Claim Form, particularly pre-disclosure. Annsley Merelle Ward reports, with a little help from Katfriend James Sweeting.

* Thursday Thingies
Thomson Reuters Innovation Survey - India's IPR Policy - Upcoming Events - "McKosher" trade mark opposition - Uggs trade mark dispute - The Not-So-Secret Diary of Andrea Brewster

* To tub, or not to tub? Last chance to comment on Civil Justice Council's expert hot-tubbing survey

Well, the very, very last chance to comment on the concurrent evidence survey is tomorrow

* IP wrangling (briefly) delays Mourinho's anointment as new Manchester United manager

What was the hold up with the Special One's latest deal? Nick Smallwood explores the IP issues at play and the lighter side of personal image and trade mark rights.

Julia Jarzabkowski from the Law Commission formally introduces the new Bill to the IPKat, following its introduction to the House of Lords last week. The new Bill sets out a test for unjustified threats which is almost identical for all patents, trade marks and designs.

* Sir Terence Etherton to be next Master of the Rolls

Darren Smyth brings the good news that a highly experienced IP judge, and the first out gay senior judge in the UK has been appointed as the next Master of the Rolls, commencing in October this year. Congratulations Sir Terence!

* The life and death of the PRINCE Bill

Common law personality rights in the US are not to be extended post-mortem, not even by what Emma Perot points out to be an extremely creatively titled Bill.

* BREAKING: EU Council unanimously adopts EU Trade Secrets Directive

AmeriKat Annsley Merelle Ward reports that the EU Trade Secrets Directive has been unanimously adopted by the EU Council. The Directive is not intended to impede investigative journalism, good faith "whistle-blowing" or free speech, but will create a minimum framework for trade secrets across Member States.

* Book Review: The Competence of the European Union in Copyright Lawmaking

This book by Ana Ramalho a must for copyright policy makers and researchers, says Nicola Searle.

* The Nominative Fair Use "Defense" in Trademark Law: Confusion in the US Circuit Courts of Appeal

Mike Mireless explains the confusing evolution of nominative fair use in Trademarks as interpreted by the various Circuits, in light of the latest interpretation by the Second Circuit in International Systems Security Certification Consortium v. Security University.


Never too late 97 [week ending on Sunday 22 May] "Simply"Trademark victory for M&S | Notable events this summer | Positec - the end of disclosure? | IPEC or bust? | Enfish distinguished in TLI Communications patent eligible subject matter case | The Politics of Evidence-Based Policy Making, Book Review | UK tobacco plain packaging law - judicial review challenge rejected | IPKat Limerick Competition

Never too late 96 [week ending on Sunday 15 May] Takedown request tactics in Italy | Wines, spirits, cheese & GI infringement | EU report on GI infringement published | Merpel on latest developments at EPO | Does UPC spell disaster for the EPO boards of appeal? | Andy Grove: in memoriam | Friday Fantasies | Has Federal Circuit revived computer-implemented inventions? | AIPPI event on EU trade mark reform | Ex Deep Purple member registers band name as trade mark | Copyright in the telephone directory

Never too late 95
 [week ending on Sunday 8 May] The Economist presents an anti-patent narrative (and is set straight) | UPC Code of Conduct | Period of compensation for trademark violation - Advocate General Wathelet's decision in C-280/15 'Nikolajeva' | Independent Fashion and IP | Italy approaches UPC ratification | Creative franchising copyright - notably of the Klingon language | ITMA discussion of the Trunki decision | IP Challenges in Bio-Pharmaceuticals | Tobacco Products Directive is valid, according to CJEU | Universal Music score summary judgment against IFP

Never too late 94 [week ending on Sunday 1 May] - Vantablack: is it possible to have rights over a colour? | Anne Frank's diary & geoblocking | Magic Leap lampoons Google Glass | Arnold's decision in Richter Gedeon Vegyeszeti Gyar RT v Generics| US Trade Secrets Act passes House | Publishing and the Machine| DSM Communication on Platforms leaked!| Google Books legal saga ends | s52 CPDA repeal comes into force 28 July 2016 | The latest Jack Wills v House of Fraser judgment

The Nominative Fair Use "Defense" in Trademark Law: Confusion in the US Circuit Courts of Appeal

Applied inconsistently and confusingly, the nominative fair use analysis has been adopted in some U.S. Circuit Courts of Appeal.  This confusion is exemplified in the recent Second Circuit's International Information Systems Security Certification Consortium v. Security University decision. Notably, that case rejects both the Ninth Circuit's and the Third Circuit's approach to nominative fair use.

Ibolya Nyikos
Nominative fair use analysis in trademark law developed from the distinguished former Chief Judge Kozinski of the Ninth Circuit's opinion in the 1992 New Kids on the Block v. News Am. Pub., Inc. case.  Chief Judge Kozinski, the well-known libertarian, is the author of the excellent "Trademarks Unplugged" article. Nominative fair use is different from the classic descriptive fair use defense because the alleged infringer is essentially using the trademark of another to refer to the trademark owner. The classic descriptive fair use defense is ordinarily utilized when an alleged infringer is using the trademark of another to fairly describe the alleged infringer's goods or services.  However, nominative fair use could even apply to a fanciful mark because the alleged infringer is trying to directly refer to the trademark owner itself.

In New Kids on the Block, Chief Judge Kozinski set forth the elements for the test: "First, the product or service in question must be one not readily identifiable without the use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder."  Chief Judge Kozinski ultimately found a newspaper's use of the New Kids on the Block trademark in a for-profit telephone poll concerning the band was a nominative fair use.  Notably, Chief Judge Kozinski's concerns with the First Amendment protection of free speech loomed large--and the case did involve a newspaper and the public's expression of which New Kid was the "best."  After New Kids on the Block, the Ninth Circuit itself confusingly applied the test.  For example, some courts placed the burden on the trademark owner to prove a lack of nominative fair use and others placed the burden on the alleged infringer to prove nominative fair use.  Courts also either applied nominative fair use as a replacement for the likelihood of confusion test and others applied it as a defense.  In the 2010 Toyota Motor Sales v. Tabari decision, Chief Judge Kozinski explained that post-KP Permanent Make-Up v. Lasting Impression, a Supreme Court case, the burden is on the trademark owner to prove a lack of nominative fair use and nominative fair use replaces the likelihood of confusion test.
Boy Bands & Libertarians! MEEOW!

Some Circuits have considered nominative fair use and others have not.  The Third Circuit modified the Ninth Circuit's approach in Century 21 v. Lending Tree by revising the factors to attempt to more accurately reflect the necessity of the trademark by the alleged infringer and a concern with preventing any potential consumer confusion.  As distinguished from the Ninth Circuit, the Third Circuit expressly recognizes there could be a likelihood of confusion and the nominative fair use defense could apply.  The Third Circuit's approach seems to recognize broader protection for an alleged infringer's use of a mark than the Ninth Circuit's approach which may contemplate that any confusion would not allow nominative fair use to apply.  Under the Third Circuit approach, after the trademark owner proves likelihood of confusion under a modified test, the alleged infringer must prove: "(1) the use of plaintiff's mark is necessary to describe both the plaintiff's product or service and the defendant's product or service; (2) the defendant uses only so much of the plaintiff's mark as is necessary to describe plaintiff's product; and (3) the defendant's conduct or language reflect the true and accurate relationship between plaintiff and defendant's products or services."

On May 18, 2016, the Second Circuit in International Systems Security Certification Consortium v. Security University addressed the nominative fair use analysis in the context of the use of a certification mark.  Specifically, the court rejected nominative fair use as an affirmative defense (the Third Circuit approach) mostly because Congress specifically provided for affirmative defenses in the Lanham Act and did not provide for nominative fair use.  The court also appears to reject the Ninth Circuit approach; however, the Second Circuit notes the nominative fair use tests applied by the Third and Ninth Circuits are relevant for determining whether there is a likelihood of confusion.  The Second Circuit conflates the Ninth Circuit and Third Circuit test, and seemingly takes a swipe at the Third Circuit's word play.  The Second Circuit stated:
It's not always so black and white.
When considering a likelihood of confusion in nominative fair use cases, in addition to discussing each of the Polaroid (likelihood of confusion) factors, courts are to consider: (1) whether the use of the plaintiff's mark is necessary to describe both the plaintiff's product or service and the defendant's product or service, that is, whether the product or service is not readily identifiable without use of the mark; (2) whether the defendant uses only so much of the plaintiff's mark as is necessary to identify the product or service; and (3) whether the defendant did anything, that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder, that is, whether the defendant's conduct or language reflects the true and accurate relationship between plaintiff's and defendant's products or services.
The Second Circuit also provided guidance on applying the factors: "When assessing the second nominative fair use factor, courts are to consider whether the alleged infringer 'step[ped] over the line into a likelihood of confusion by using the senior user's mark too prominently or too often, in terms of size, emphasis, or repetition.' . . . Additionally, when considering the third nominative fair use factor, courts must not, as the district court did here, consider only source confusion, but rather must consider confusion regarding affiliation, sponsorship, or endorsement by the mark holder."

The confusion in the U.S. Circuit Courts of Appeal make the existence and application of the nominative fair use defense ripe for consideration by the U.S. Supreme Court.  Hopefully, the U.S. Supreme Court will get the opportunity to clarify the doctrine soon.

For more on former Chief Judge Kozinski, enjoy this blog post from Above the Law including highlights from the Judge's relatively recent interviews at Yale Law School and this blog post concerning his views relating to the immigrant experience and judging.

Saturday, 28 May 2016

Book Review: The Competence of the European Union in Copyright Lawmaking

Given, um, upcoming political events, analysis of the lines between member states and EU institutions couldn't be better timed. In "The Competence of the European Union in Copyright Lawmaking", Ana Ramalho presents a comprehensive analysis of EU competencies related to copyright.Using EU Court of Justice case law and EU treaties to identify benchmarks, she develops normative perspectives on EU copyright policy.

It's always interesting to read analysis of EU competencies.  As per the UK Government's 2013 consultation, a UK-centric definition of EU competencies is: "everything deriving from EU law that affects what happens in the UK ... all the areas where the Treaties give the EU competence to act, including the provisions giving the EU institutions the power to legislate, to adopt non-legislative acts, or to take any other sort of action ... areas where the Treaties apply directly to the Member States, without needing any further action by the EU institutions." Basically, where the EU can tell member states what to do.

Given member states' diverse approaches to copyright, Ramalho addresses some core tensions in EU copyright law. Like most IP debates, there is friction between a natural rights justification, where IP is largely a recognition of existing rights, and a utilitarian/social welfare approach, which is where innovation arguments come into play.  Noting the debates amongst scholars, she suggests that a combination of the two approaches better encapsulates the rationale for IP. [Merpel is pleased to hear there is a middle ground.]

The author details a thrust towards harmonisation in recent EU copyright policy, but as a consequence of a general harmonisation drive of the internal market, rather than a copyright-specific approach. Looking back to the 1970s, copyright initially fell under a cultural remit, instead of the market focus of today.  Ramalho also investigates how copyright policy should connect to the EU objectives of 1) creation of an internal market, 2) promotion of the EU's values including respect for fundamental rights and the rule of law, and 3) respect of cultural diversity (she notes both cultural and diversity are hard to define.)

Ramalho explores the principles that support the competencies system.  These principles are key to member states' negotiations with the EU.  They are (paraphrased):
1. Conferral - the EU is bound by the objectives and the powers bestowed on it by member states
2. Subsidiarity - the EU should only do things that need to be done at an EU level, rather than by member states
3. Proportionality - a three factor test, but basically asks whether EU competency/action is suitable, necessary and is proportional (is burden > help?)
Making law
by Azzza

The author then proceeds through an analysis of EU primary law and CJEU case law, and develops a series of benchmarks for legislative activity. She makes a number of normative statements to 'field-test' these benchmarks. The former civil servant in me bristled at this point, expecting specific policy measures, as is the penchant of economists.  However, Ramalho instead further unpacks some of the practical issues in EU policymaking. For example, in examining the benchmark of "Protection of Creators: Guarantee of Income and Recognition to Creators," the author looks at the protectionist trend in recent copyright policy which, "takes place regardless of who the owner of the rights actually is." I would have liked to seen some more detail on how a "guarantee of income" would work, but that likely merits a future book in itself.

This book is a must for copyright policy makers and researchers. It might become a must for all of us, depending what holds next for the UK.

Bibliographic information: Ramalho, Ana. 2016. The Competence of the European Union in Copyright Lawmaking: A Normative Perspective of EU Powers for Copyright Harmonization. Cham: Springer International Publishing. Hardcover: £74.50 e-book: £58.99 Rupture factor: Medium-Low, 250 pages.

Friday, 27 May 2016

BREAKING: EU Council unanimously adopts EU Trade Secrets Directive

Just as the AmeriKat was ready to
leave for the Bank Holiday weekend
the EU Council surprises her...
(c) Joe Delaney
This morning the EU Council unanimously adopted the EU Trade Secrets Directive.  The EU Trade Secrets Directive provides for a common framework of minimum standards that Member States must provide for the protection of trade secrets.  For background on the Directive see previous Kat posts here.  The vote had originally been scheduled for yesterday's meeting but was postponed until today.

In its press release, the Council addressed concerns that the provisions provided for in the Directive would impact free speech, whistle-blowers or mobility of employees.  The measures provided by the Directive "fully ensure that investigative journalism can be exercised without any limitations including with regard to the protection of journalistic sources".  In particular Recital 19 of the Directive provides that:
"While this Directive provides for measures and remedies which can consist of preventing the disclosure of information in order to protect the confidentiality of trade secrets, it is essential that the exercise of the right to freedom of expression and information which encompasses media freedom and pluralism as reflected in Article 11 of the Charter ofFundamental Rights of the European Union, (‘the Charter’) not be restricted, in particular with regard to investigative journalism and the protection of journalistic sources."
As to whistle-blowers, the EU Council commented that in line with Recital 11:
"Persons acting in good faith that reveal trade secrets for the purpose of protecting the general public interest, commonly known as “whistle-blowers”, will enjoy adequate protection. It will be up to national competent judicial authorities to judge whether the disclosure of a commercial secret was necessary to denounce a misconduct, wrongdoing or illegal activity."
Article 5 backs up these principles by providing that Member States will dismiss applications for measures, procedures and remedies under the Directive where the alleged misuse or disclosure of a trade secret was carried out:
"(a)  for exercising the right to freedom of expression and information as set out in the Charter, including respect for the freedom and pluralism of the media;  
(b) for revealing misconduct, wrongdoing or illegal activity, provided that the respondent acted for the purpose of protecting the general public interest;  
(c) disclosure by workers to their representatives as part of the legitimate exercise by those representatives of their functions in accordance with Union or national law, provided that such disclosure was necessary for that exercise;  
(d) for the purpose of protecting a legitimate interest recognised by Union or national law."
After the Directive is published in the Official Journal of the EU and it comes into force (i.e. the 20th day following its publication in the OJEU under Article 20), Member States will have a maximum of two years to incorporate the new provisions into domestic law.

The Council's adoption of the Trade Secrets Directive comes only a couple of weeks after President Obama signed the Defend Trade Secrets Act into law.  For discussion on what the coincident timing of these two trade secrets laws might mean for companies, see the AmeriKat's recent conversation with Jim Pooley here.
Kat pats go to Holger Andreas Kastler (Morrison & Foerster) and Gunther Meyer (Eversheds) for alerting the AmeriKat to the news this morning.  

The life and death of the PRINCE Bill

The recent passing of Prince left many fans in mourning and potential heirs clambering for a piece of his estate. The singer, who died intestate, left behind a wealth of copyright protected works. His right to publicity, however, did not survive him, as the common law right in Minnesota, where Prince was domiciled, only applies to the living.

The Minnesota State Legislature hastily attempted to pass a bill to change this, by creating a post-mortem right of publicity. On May 9, the Bill, entitled Personal Rights in Names Can Endure Act, was put forward, two weeks before the end of the Legislature’s session on May 23. The bill was subsequently pulled amid concerns that it was not properly thought out and could have unintended consequences, but this Kat commends the carefully created name. 

The current law in Minnesota

Minnesota recognises a common law right of publicity and the tort of appropriation of name and likeness. Even though the right of publicity is not statutory, Minnesota’s common law approach provides extensive protection as it is not delimited to specific personal attributes. Instead, the right protects against unauthorised uses of ‘identity’ for commercial purposes. This can extend to the names of characters portrayed by an individual, as occurred in the case of McFarland v. E & K. Corp., 1991 WL 13728 (D. Minn. 1991) where the plaintiff successfully claimed for use of his character name ‘Spanky’.

The potential for a broad interpretation of ‘identity’ is best illustrated by the Californian case of White v. Samsung Electronics Am., Inc., 971 F.2s 1395 (9th Cir. 1992). In this case, Wheel of Fortune presenter Vanna White claimed that Samsung had infringed her right of publicity by creating an advertisement featuring a robot, wearing a dress, standing next to a replica of the ‘Wheel of Fortune’ board. White claimed this was an unauthorised use of her likeness for a commercial purpose. The 9th Circuit Court of Appeals dismissed White’s appeal as they opined that the robot did not constitute likeness within the meaning of the California publicity statute. However, the found her common law right of publicity infringed as the advertisement evoked her ‘identity’.

Labour theory

The theoretical justification behind Minnesota’s law is Lockean labour theory, as the court in McFarland stated that [2] “A celebrity’s identity, embodied in his name, likeness, and other personal characteristics, is the “fruit of his labor” and becomes a type of property entitled to legal protection.” Labour theory is often cited as a justification for persona protection in US courts, and was advanced by Nimmer in his seminal 1954 article, published the year after the right of publicity was first recognised. This theory has been criticised by Madow as it does not take into account that fame does not result solely from the efforts of the individual. Stylists, publicists and producers crafted Prince into the superstar that he was. Also, Prince undoubtedly worked hard to achieve his stardom, but the Minnesota right applies to every individual, regardless of fame. There is no labour requirement, which means even celebrities who have rose to the spotlight through luck or connections, benefit from this protection.

Implications of a post-mortem right

The Bill proposed a duration of 50 years post-mortem. Since Minnesota’s common law approach gives a broad interpretation to ‘identity’, Prince’s estate would be able to require authorisation for any use which evokes Prince. This broad protection would have chilling effects on posthumous memorabilia and advertising uses, even where his attributes have not been directly used. In the meantime, it is likely that the merchandising industry will capitalise on his death.

The Bill has been shelved for now, but may be reconsidered next year.
If the Bill passes into law, it would give new meaning to the lyrics from Prince’s song, ‘Let’s go Crazy’:
But I’m here to tell you
There’s something else
The afterworld

Sir Terence Etherton to be next Master of the Rolls

Sir Terence Etherton
The IPKat is indefatigable in scouring news sources for information about developments relating to IP law.  However, it is his first time, he thinks, to cite Pink News as the source for the identity of the next Master of the Rolls, to replace Lord Dyson in October 2016.  The Master of the Rolls is the head of the Civil Division of the Court of Appeal of England and Wales, and this rol[l]e is to be assumed by Sir Terence Etherton, currently Chancellor of the High Court (head of the Chancery Division, of which the Patents Court is a part).  Sir Terence was the first out gay senior judge in the UK, and so this Kat hopes that IP Inclusive and IP Out will be as thrilled as he is at the news.

Although he never sat in the Patents Court, Sir Terence has an impressive record of IP-related decisions, many (possibly all?) of which have been lovingly reported here on the IPKat.  Highlights include:

  • Lambretta v Teddy Smith, where Etherton J in the High Court ruled that there was no design right or copyright in the colourways of a track top
  • Jacobson & Sons v Globe GB was a trade mark case relating to the flash on the side of Gola shoes - the registrations were held by Etherton J to be valid and infringed
  • In Cook Biotech Incorporated v Edwards Lifesciences AG, Etherton LJ in the Court of Appeal gave the leading judgment rejecting the appeal and affirming the first instance decision of Kitchin J that Cook's patent for an artificial heart valve was invalid and not infringed
  • In Microsoft v Motorola Etherton LJ again gave the leading judgment, upholding Arnold J and finding Motorola's patent relating to synchronisation of message statuses across multiple messaging devices invalid
  • Etherton LJ also gave the leading judgment in rejecting Lundbeck's request (in their dispute against Resolution relating to escitalopram) that Arnold J recuse himself on the grounds that one of the expert witnesses had been the supervisor of his undergraduate chemistry research project at Oxford University
  • In Generics v Yeda, on an aspect of the case relating to professional conflict for in-house lawyers, Ward L.J. had to adjudicate between what he called "the characteristically forceful common sense judgment of Sir Robin Jacob" and "the characteristically erudite judgment of Etherton L.J."  The former advocated a strict application of a conflict rule for in-house lawyers, the latter a more relaxed one.  Erudition and Sir Terence won the day.
  • Turning his had to copyright, Etherton LJ gave the leading judgment in  Football Association Premier League v QC Leisure, allowing the use of foreign decoding devices in pubs in this country.
  • [Update 28 May 2016] A kind reader has pointed out that I omitted the procedural trade mark case Starbucks v British Sky Broadcasting / EMI v British Sky Broadcasting, reported by the IPKat here,  which created the "Alicante Torpedo" in English law - if you receive a cease & desist, quickly file invalidity proceedings at the EUIPO, and the English proceedings must be stayed.  This may not necessarily be regarded as a good thing...
Sir Terence has also sat giving concurring judgments in a number of other IP cases. This Kat is delighted to see a judge with such diverse experience in all areas of intellectual property as the head of the civil judiciary in England and Wales, and congratulates Sir Terence on his appointment.

Threatening someone with IP infringement? Law Commission explains what you need to know about the new IP (Unjustified Threats) Bill

The AmeriKat's reaction to being threatened...
The Intellectual Property (Unjustified Threats) Bill was introduced in the House of Lords last week (see Kat post here).  For those of you who have not really been following this legislation, do not fear.  The Law Commission lawyer leading the project, Julia Jarzabkowski,  has written a short piece just for the IPKat explaining what is in the Bill, what is new and what it will mean for the UK IP profession.  Over to Julia:
"On 19 May 2016 the Intellectual Property (Unjustified Threats) Bill was introduced in the House of Lords and will now follow the special procedure for Law Commission Bills. This brings our project, Patents, Trade Marks and Designs: Unjustified Threats, to its end stages. If implemented, the Bill will change the law for patents, European patents, trade marks, European Union trade marks, registered designs, design right and Community designs. 
The new threats provisions are almost identical for each of the rights, save for a few small tweaks. The first 6 clauses of the Bill substitute new provisions for old within the Acts or regulations in which they are currently found. The Bill will also apply the threats provisions to Unitary Patents by amending Schedule A3 of the Patents Act 1977, once that schedule has been inserted into the Act by the Patents (European patent with Unitary Effect and Unified Court) Order 2016 (SI 2016/388). 
The substance of the reform is in 5 parts. In a nutshell, the first sets out the test for whether a communication contains a threat. It is based on the current law with one change. As now, the test is concerned with how a recipient would view the communication. What the sender intended by it is irrelevant. The test is whether a reasonable person, in the position of a recipient of the communication: 
  • would understand it to mean that a right exists (no change);
  • that someone intends to bring infringement proceedings against someone else (no change);
  • for an act done in the UK, or if done, would be done in the UK (new). 
The last requirement will ensure the provisions can apply to European patents that come within the jurisdiction of the UPC. 
The second part determines whether a person aggrieved (no change in definition) can bring a threats actions. A threats action cannot be brought for: 
  • Threats that refer only to specified acts, such as manufacture or importation that have been done (no change) or if done, would be one of these acts (new).
  • Any threats made to those who have done one of those acts (no change for patents, but new for the other rights) or who intend to (new).
  • Implied threats contained in a permitted communication (new). 
The third part introduces the concept of permitted communication between parties where one would ordinarily be entitled to bring a threats action. Where information in a communication amounts to an implied threat, a threats action cannot be brought where the information was given for a permitted purpose, was necessary for that purpose and the person making the communication reasonably believed what is said is true. There is guidance on what is, or is not, a permitted purpose and on what types of information might be necessary.

The fourth part deals with remedies (no change) and defences. The justification defence remains, but without the reference to the defence not being available where the right is shown to be invalid. It is not mentioned because it is obvious, and leaving it out does not prevent anyone from raising it anyway. A defence currently only available for patents is extended to all the rights. It is a defence to show that all reasonable steps (changed from best endeavours) have been taken to identify the source of the infringement (e.g. manufacturer) without success. The recipient of the threat must be told what those steps were before or at the time the threat is made. 
The fifth part provides a shield for professional advisers – it does not create a loophole for their clients as their liability is unaffected. No threats action can be brought against a professional adviser acting for a client in a professional capacity providing legal or attorney services for which they are regulated. 
Once again, we would like to take this opportunity to thank all those who have worked with us and been so generous with their time and effort during the project."

Thursday, 26 May 2016

IP wrangling (briefly) delays Mourinho's anointment as new Manchester United manager

This Kat was busy obtaining his daily fix of sports news on the BBC website when he spotted an unusual headline - 'Jose Mourinho Image Rights Hold Up Manchester United Deal.' 

Jose Mourinho and his agent (driving a
hard bargain).
The story broke on Wednesday and has been widely reported (see articles by the Daily Telegraph, ESPN, The Independent, The Guardian and many more).

This Kat's favourite response came from satirical website NewsThump, which suggested that Jose Mourinho might have no choice but to wear a balaclava next season in order to remain on the right side of the law. So, what happened?

Mourinho on the touchline next year? 
Image Rights (courtesy of Guest Kat Emma Perot)

The delay in negotiations was partly down to Mourinho’s personal endorsement deals with rival companies of Man United’s sponsors. (Mourinho has deals with Jaguar, Swiss watch company Hublot & South Korean casino operator Paradise Co, while United is sponsored by Chevrolet, American watch company Bulova, and Asian casino and leisure resort, Donaco International).

‘Image rights’ is the popular term in the UK for these types of endorsement deals. These ‘rights’ are created by contract as they do not exist in the UK. However, they do exist in the countries of the companies which Mourinho has deals with. In the US, in the absence of federal law, states have developed statutory publicity rights or use the proprietary tort of appropriation of name or likeness, both of which have an economic focus. In Korea, the right of publicity was first recognised in the 1997 case of Marcus D. Winslow Jr. v. Good People Inc., et al., (94Gahab13831) (Seoul Western Branch Ct., Aug. 29, 1997). 'Personality rights' are also protected under the Swiss Constitution.

Regardless of the terminology used, these rights generally allow the individual to control the commercialisation of personal attributes. The consequence of Mourinho’s move to United is that the club will want to control his ‘image rights’ in a way that satisfies their sponsors. As such, they will likely seek an exclusive license for use of Mourinho’s attributes in the watch, car and casino industries.

It is unlikely that Mourinho will assign his rights altogether, as he may want to continue pursuing valuable personal endorsement deals. However, Mourinho will have to terminate his existing relationships which conflict with Man United’s sponsors. If United’s sponsors were to use Mourinho’s ‘image’ before he terminated his existing arrangements, they would potentially be liable for infringement of exclusive licences in countries where ‘image rights’ have a proprietary basis.

Trade Marks

Another common thread picked up in the press and on social media was that Chelsea (who Mourinho has managed in two separate spells) still own a trade mark for 'Jose Mourinho.'

Bottom of the class for IP reporting is ESPN, which comments that 'Chelsea still own the copyright to the Portuguese's name.' Top marks, however, to Mark Critchley at The Independent for citing the EUTM registration in his piece. It shows that Chelsea filed an application to register the Mourinho mark in 2005, covering a range of different goods.

Twitter had fun with this: 'gonna kick back in my Mourinho lingerie, crack a few nuts and stick Mourinho on the gramophone' quipped one user.  It's not as silly as it sounds! The registered specification covers a wide range of goods; however, it's unlikely that Chelsea ever actually marketed underwear, nutcrackers or gramophones bearing the Mourinho name.

Chelsea Football Club Limited owns a number of active trade mark registrations associated with their former manager, including:

 - A registered EUTM for his signature.
 - Registered UK, Australian and Norwegian marks for his name

So, how did United and Chelsea resolve the trade mark issue? One option for United would have been to obtain a licence to use the marks. Another would have been for United (or Mourinho himself) to make an offer to Chelsea for a full assignment of the trade marks. It's rather surprising that Mourinho doesn't own the 'Jose Mourinho' mark himself - that would give him an option to licence the rights to his employers (which for a successful manager change rather frequently...)

Whatever it is that held up that deal here (it's not exactly clear), congratulations to the IP lawyers who burned the midnight oil to hasten The Special One's arrival at the Theatre of Dreams.

To tub, or not to tub? Last chance to comment on Civil Justice Council's expert hot-tubbing survey

Baths are scary enough without
Hot-tubbing.  Warm water.  Fresh air.  View of the mountains.  Bubbles disguising any flabby bits.  What is not to love?  Nothing or possibly everything when viewed in the context of expert evidence.  The practice of "hot-tubbing" or "concurrent evidence" has long been a topic of intrigue for us in the UK.  The practice is more common in Australia and allows the judges and trial lawyers to question experts together.  Experts are also able to directly challenge each other's evidence, which can make it easier to identify the issues in contention.  As Lord Justice Jackson explained
"the general view [from the Australian experience] is that this procedure is beneficial for four reasons: 
(i) The procedure is quicker and more focused than the traditional sequential format. 
(ii) Experts find this procedure easier; they give evidence better and sometimes more impartially than under the traditional sequential format. 
(iii) Judges find it easier to understand complex technical evidence when it is given in this way. 
(iv) The procedure achieves a significant saving of both trial time and cost."
Following the Jackson review, hot-tubbing was introduced to legal proceedings in England and Wales.  The process is set out in Practice Direction 35 which states that at any stage of the proceedings the Court may order hot-tubbing.  Paragraph 11.2 of PD 35 and onward sets out the procedure.  Importantly the judge initiates and leads questions addressed to each expert witness and may invite the other expert to comment.   The parties' representatives then get their turn, but only insofar as it tests the correctness of an expert's view or clarifies it.  The judge then summarizes the views expressed.

So, what has happened?  Well, as far as the AmeriKat is aware, nothing in the Patents Court.  This is despite Sir Robin Jacob commenting in his recent book, IP and Other Things, that there should be "no formal reason why it should not happen in England and Wales", despite lawyers obviously being resistant to the idea.  Cross-examination of your expert is scary enough, why make it scarier with having the other side's expert having a crack at it?  Or so, the complaint would go.

Lord Neuberger described this state of affairs in a recent speech he gave to the Royal Society last November on "Science and Law:  Contrasts and Cooperation" in which he stated:
"Nonetheless, when it comes to expert evidence, I can see considerable attraction in the notion of the experts giving their evidence at a somewhat more informal basis, at a hearing which is more like a meeting chaired by the judge. Court rules now permit such concurrent evidence, or hot-tubbing as it was dubbed by the Australians who developed the concept, and who now, I understand, adopt it in most civil cases. However, it is currently little used in this country, owing no doubt to what is, depending on your view, appropriate scepticism or innate conservatism on the part of lawyers and judges.

Lawyers may fear that concurrent evidence would result in a loss of control on their part, and judges may fear that it would involve greater preparation and early understanding of the issues on their part. Both fears are justified in fact, but do not represent good reasons to avoid hottubbing. So far as the justice system is concerned, lawyers are there to assist on getting the right answer. The fear of the judges may, at least in some cases, be partly attributable to the fact that there are very few judges, other than those who specialised in patent law when in practice, with any significant scientific education!
Lord Neuberger goes on to discuss the fact that "scientific ignorance has not prevented some judges with no significant scientific education proving themselves to be very find judges of scientific issues" and some other great quotes worthy of a read.

The Civil Litigation Review Working Group of the Civil Justice Council is conducting a survey of the practice, with responses due this Tuesday, 31 May 2016.  A full report of the findings of the survey will be published in July 2016.  The survey is focused on those legal representatives who have actually bee involved in hot-tubbing - either in England and Wales or in another jurisdiction.  Those who have not had experience are immediately ushered to Question 10 which reads as follows:
"For legal representatives who have not used "hot-tubbing" as part of legal proceedings, please feel free to make any comments about the process in the box below (including whether you may have proposed the use of hot-tubbing in a particular case, but the court declined to make that direction)."  
Views on Question 10 will be "most helpful" to the Civil Litigation Review Working Group, so if you want the Courts to direct more hot-tubbing or not, perhaps now is your chance.

To complete the survey, click here.

With a Kat pat to Alisa Carter of Gowling WLG for bringing this to the Kat's attention.

Thursday Thingies

Information Technology has seen the most innovation this year
Thomson Reuters 2016 State of Innovation Study. Innovation is moving forward at a record pace, according to this year's report from Thomson Reuters. Global innovation year on year is in the double-digits (at 14%), with Information Technology dominating the landscape, but substantial increases also observed in Medical Devices, Home Appliances, and Aerospace and Defense. The report combines analysis of patent applications with research of global scientific literature to put these innovations in context; worldwide patent volume grew at an annualized rate of 13.7 percent in 2015, driving the overall growth rate for patents to over 100 percent since the State of Innovation study was launched six years ago.

Vin Caraher, the president of Intellectual Property and Science at Thomson Reuters, said:
“The last year has been marked by a series of epic breakthroughs: the first autonomous cars tested on public highways, the longest-ever human space mission, the first biosimilar drug approval – all of these were made possible by disrupting conventional boundaries and testing the limits of human creativity. By consistently benchmarking innovation with concrete metrics on global patent and scientific literature production, we’re able to get a clear outlook on future growth areas.”
You can see the press release here and download the full report here.

India's National IPR policy. India's recently unveiled new IPR policy is intended to promote "a holistic and conducive ecosystem to catalyse the full potential of intellectual property for India's economic growth and socio-cultural development, while protecting public interest". The main objectives involve such broadbrush aims as increasing IP awareness and creating a stronger framework for IP generation, legislation, administration and commercialization. The policy has been received sceptically optimistically by the US Chamber of Commerce’s Global Intellectual Property Center (GIPC), with the Executive Director of International Intellectual Property, Patrick Kilbride saying:
“We hope today’s announcement is a precursor to the concrete, structural changes that are necessary if India is to implement a strong IP-led innovation model. Words are empty without action, and we need to see the Modi administration’s expressed commitment to IP matched by decisive legal reforms..."
Critics have described the policy as rather vague and a missed opportunity for meaningful reform - we are grateful to Katfriend and former Indian Government Patent Examiner, R.S. Praveen Raj for drawing it our attention and for his comments in the Deccan Chronicle here.

ACID & Boult Wade Tennant IP Seminar and Drinks. Anti Copying In Design and Boult Wade Tennant cordially invite us to a seminar about proactive IP protection strategy and how to get the most out of the CTM before this September 2016. All will be revealed in the Boult Wade Tennant's Grays Inn offices on 22 June. For more information and to register, go here.

WIPO and Queen Mary University of London's School of Arbitration are organising a seminar on 30 June 2016 on the theme of 'SEP/FRAND Mediation and Arbitration.'

The event will be hosted at Allen & Overy, 1 Bishop's Square, London, E1 6AD. Topics will include:
  • The Standardisation process
  • How litigation resolves SEP/FRAND disputes
  • SEP/FRAND mediation and arbitration
  • Calculation of FRAND rate
The seminar will be co-chaired by Professor Julian D M Lew QC (Head of the School of International Arbitration; Barrister, 20 Essex Street) and Ignacio de Castro (Deputy Director, WIPO Arbitration and Mediation Center).

You can read more about the programme here and register for the event here.

WIPO Roving Seminars. More from WIPO - Roving Seminars are coming up on 7 and 9 June in Paris and Lille. More info here.

Kosher McDonald's are to be rebranded as McKosher
- and possibly confused with traditional Scottish fare
Man with 'McKosher' ancestry loses trade mark battle with McDonald's. Mark Glaser was definitely not lovin' it when his mark was refused. He had been hoping to get the name registered for his exotic-sounding Scottish and Jewish restaurant (in Maclean, the "Scottish capital of Australia"). McDonald's relied on calls by some Rabbinical leaders to rebrand kosher-friendly McDonald's restaurants to "McKosher" (in Israel..), and pointed to their veritable catalogue of protected "Mc-" marks. As a result, Glaser was not able to get his mark registered, with the trade mark office ruling that "McKosher" risks confusion with the international franchise. More on the story here.

Are UGGs really Australian? Or an American Trademark. Back down under we go! And the classic phrase "as Australian as UGGs" [which this Kat should confess to having never heard of before] may be in jeopardy. (US-based) Clothing company Deckers is bringing a lawsuit against Australian Leather Pty Ltd for selling flat-soled sheepskin boots with an 'Ugg' label. The case will raise jurisdiction issues and it seems likely that Uggs are at risk of "genericide", with the original brand mark being now virtually synonymous with the trendy, comfy boots themselves. A full report is here.

What really goes on at CIPA? IPKat is delighted to be able to report that the "Not So Secret Diary of Andrea Brewster" is back, with its unique Presidential insights and CIPA commentary. Enjoy! 

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