From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Monday, 23 January 2017

Around the IP Blogs


"Lower courts can give fresh insight into the adjudication taking place at the highest national and European courts" -- Geert Lokhorst brings his insights  on the "new food for thought on the meaning of placing a hyperlink 'for profit'" which was created by the German and Dutch courts on the recent GS Media case. 


Brad Spitz's writes a recap of the different approaches that the ECJ and the French courts took with regard to "out-of-print" books -- after the ECJ's ruling, the French legislation therefore must be corrected so that each author is actually informed beforehand and can oppose the digital exploitation of his work without further formalities.



Say a good Farewell to EU IPO practice
“There will be no gold clocks for retirees from EUIPO practice” -- UK practitioner Barbara Cookson says her concerns in the post-Brexit era: "(we) will shortly find careers as EUIPO representatives ended as a result of Brexit. I understand that some continue to hope that our businesses will be saved but while that would be welcome, it isn't to be expected within the complexities of the negotiation that must deliver a departure to which we are unlikely to be able to attach conditions. Concessions may come later as they did for Swiss Norwegian and Icelandic representatives."


More than 700 key enforcement judgments from 16 EU Member States are now available online in EUIPO’s eSearch Case Law database. The decisions collected, which have set new trends in case-law, include all types of IP rights -- including trade mark rights -- and cover both civil and criminal proceedings. See further information here


* New Turkish IP Code: what it means for designs

Mutlu Yıldırım Köse (Gün + Partners) summarizes the notable updates for designs in the New Turkish Industrial Property Code which entered into force on January 10, 2017. 

* Designs 2017: Global Guide now available

The publishers of the World Trademark Review have issued their subscribers with Designs 2017: A Global Guide. While its objective is undeniably promotional, its contributors include many 'household names' in the field of design and IP practice, and it enjoys the advantages of being slim and attractively presented. Further details can be found here.

* DesignClass news: CP7 reaches completion

From EUIPO's User Association newsletter comes welcome news of DesignClass. Phase II of this valuable and useful project went live this month, marking the finalisation of the CP7–Harmonisation of Product Indications convergence project. The objective is to make available a harmonised database of product indications and a common classification tool for designs. 

Sunday Surprises

* PhD positions

Keep calm and get a Doctoral Degree.
--> EUI Doctoral Programme is calling for PhD candidates. Application deadline: 31 January 2017. The Application Form for the 2017-2018 academic year (starting 1 September 2017) is active from 2 November 2016 until 31 January 2017. For more information, check here

--> New 3 year Funded PhD positions in Communications Law: PhD position in Communications Law at IViR on the meaning of established values and concepts such as editorial control, independence and liability in light of news media personalisation. The application deadline is 31 of January 2017 and the position ideally commences in spring 2017. More details can be found here

 Seminar

3rd February 2017, London
The Rise of Web Blocking Orders in the UK: Empirical Evidence Perspectives. 
Speaker: Professor Lilian Edwards (Strathclyde University). 
Sign up here, and more details can be found here

* Conference announcement 

CIPIL Annual Spring Conference 2017 -- Intellectual Property and Human Rights
Faculty of Law, University of Cambridge, 10 West Road
Saturday, March 11th 2017, 10.00am-5.00pm

This conference seeks to explore the interplay between IP and human rights. Beginning with an introduction to the different human rights instruments, their relations with European and national law, as well as an exploration of the methods used (proportionality, balancing of rights), the programme goes on to consider particular interactions, tensions and conflicts: the relationship between copyright and human rights (in particular freedom of expression and science); the relationship between trade marks and health in the context of plain packaging; the relationship between copyright and a host of other rights in discussion of intermediary liability (Angelopolous); and the relationship with patents and the right to health.e).

Booking: For further information and to book a place via the electronic booking system please see this link or email Claire Hill (ch771@cam.ac.uk).

Postdoctoral program

The Project on the Foundations of Private Law at Harvard Law School is seeking applicants for the Qualcomm Fellowship in Private Law and Intellectual Property.

The Qualcomm Fellowship is a two-year, residential postdoctoral program specifically designed to identify, cultivate, and promote promising scholars early in their careers with a primary interest in intellectual property and its connection to one or more of property, contracts, torts, commercial law, unjust enrichment, restitution, equity, and remedies. Fellows have been selected from among recent graduates, young academics, and mid-career practitioners who are committed to pursuing publishable research likely to make a significant contribution to private law scholarship.

Fellows devote their full time to scholarly activities in furtherance of their individual research agendas. In addition, fellows contribute to the intellectual life of the Project and the Harvard Law School community through mentoring students, presenting their research in and attending faculty workshops and seminars, helping to organize and participating in Center events, and blogging.

Application details can be found in the attached documents. For more information, please contact Bradford Conner, conner@law.harvard.edu. Applications must be received by March 1, 2017. For more informations see here and here

Call for Papers

Deadline 27th January
4th Winchester Conference on Trust, Risk, Information and the Law
Date: Wednesday 3 May 2017
Venue: West Downs Campus, University of Winchester, Winchester, Hampshire, UK

The Fourth Interdisciplinary Winchester Conference on Trust, Risk, Information and the Law will be held on Wednesday 3 May 2017 at the West Downs Campus, University of Winchester, UK. The overall theme for this conference is: Artificial and De-Personalised Decision-Making: Machine-Learning, A.I. and Drones

Keynote speakers:
Professor Katie Atkinson, Head of Computer Science, University of Liverpool, an expert in Artificial Intelligence and its application to legal reasoning, and John McNamara, IBM Senior Inventor, who will speak on 'Protecting trust in a world disrupted by machine learning’.

Papers and Posters are welcomed on any aspect of the conference theme, which might include although is not restricted to:
* Machine learning and processing of personal information;
* Artificial intelligence and its application to law enforcement, legal reasoning or judicial decisions;
* Big Data and the algorithmic analysis of information;
* Implications of the Internet of Things;
* Machine based decision-making and fairness;
* Drone law and policy;
* Trust and the machine;
* Risks of removing the human from - or leaving the human in - the process;
* Responsibility, accountability and liability for machine-made decisions.

The conference offers a best poster prize judged against the following criteria: 1) quality, relevance and potential impact of research presented 2) visual impact 3) effectiveness of the poster as a way of communicating the research. Proposals for workshops are also welcome. Workshops offer organisers the opportunity to curate panels or research/scholarship activities on an aspect of the conference theme in order to facilitate interdisciplinary discussion.

This call for papers/posters/workshops is open to academics, postgraduate students, policy-makers and practitioners, and in particular those working in law, computer science & technology, data science, information rights, privacy, compliance, statistics, probability, law enforcement & justice, behavioural science and health and social care.

Abstracts for papers are invited for consideration. Abstracts should be no more than 300 words in length. Successful applicants will be allocated 15-20 minutes for presentation of their paper plus time for questions and discussion. Please note that accepted poster presenters will be required to email an electronic copy of their poster no later than a week before the conference. Accepted poster presenters will also need to deliver the hard copy of their poster to the venue no later than 9am on the date of the conference to enable it to be displayed during the day. Workshop proposals should summarise the workshop theme and goals, organising committee and schedule of speakers, panels and/or talks. Proposals should be no more than 500 words. Workshops should be timed to be 1.5-2 hours in length.

Abstracts and proposals, contained in a Word document, should be emailed to trilcon17@winchester.ac.uk. Please include name, title, institution/organisation details and email correspondence address. The deadline for submission of abstracts/proposals is Friday 27 January 2017. Successful applicants will be notified by 17 February 2017. Speakers/poster presenters/workshop organisers will be entitled to the early registration discounted conference fee of £80 and will be required to book a place at the conference by 28 February in order to guarantee inclusion of their paper/poster/workshop. Speakers will be invited to submit their paper for inclusion in a special edition of the open access eJournal, Information Rights, Policy & Practice.

To book a place at the conference, please click here to visit the Winchester University Store and click on academic conferences. For more information, please contact the conference team at trilcon17@winchester.ac.uk

Photo courtesy of Ms. Nyske Blokhuis.

Sunday, 22 January 2017

Never Too Late: If you missed the IPKat last week!

This Kitten is delighted to bring you the 131th edition of Never Too Late covering the posts from 9 until 15 January!

Seeking an Arrow

GuestKat Eibhlin Vardy discusses Fujifilm Kyowa Kirin Biologics Co., Ltd v AbbVie Biotechnology Ltd & Anor [2017] EWCA Civ 1, which involves two appeals, both raising the question of whether a Court can grant a so called ‘Arrow declaration’, i.e. a declaration that “a product was old or obvious in patent law terms at a particular date”.


Yangjin Li shares a guest post analysing the reasons why the State Intellectual Property Office of China (SIPO) tops the World Intellectual Property Indicators of IP Offices based on receiving more patent applications, the quality of the patent applications filed and the impact of this patent activity on China.


GuestKat Rosie Burbidge discusses Bhayani & Anor v Taylor Bracewell LLP, [2016] EWHC 3360, a summary judgment in which addressed the question of whether there was passing off due to the use of the plaintiff’s family name as part of the law firm’s name after she had left the partnership.


PREVIOUSLY ON NEVER TOO LATE

Never Too Late 130 [week ending on Sunday 8 January] | Around the IP Blogs | Sunday Surprises | Trademark and co-branding as a badge of … did you say "location"(?) | 15 fully-funded IP PhD positions are calling for candidates | Never Too Late: If you missed the IPKat last week! | Around the IP Blogs | Biosimilars battle in clearing the way - Fujifilm v AbbVie continues | Book review: Maintenance time and the industry development of patents

Never Too Late 129 [week ending on Sunday 1 January] | Happy Public Domain Day! | Jaguar Land Rover DEFEND[ER]s its trade mark | Never Too Late: If you missed the IPKat last week! | Passing off the National Guild of Removers and Storers | Fuss over function: In case you missed the annual IP-World Christmas party | The Supreme People's Court of China's Michael Jordan Trademark Decision | Intermediary IP injunctions: what are the EU implications of the UK experience? | Länsförsäkringar, Länsförsäkringar, bork, bork, bork!| The champagne of trade mark disputes | Around the IP Blogs! | Swedish Supreme Court has ruled that sport broadcasts are not protected by copyright | Swedish Patent and Registration Office refuses registration of figurative mark because contrary to morality and public order

Never Too Late 128 [week ending on Sunday 25 December] | Sunday Surprises | A TITANIC trade mark dispute | Book Review: two new methodology books for EQE candidates: Smart in C and Tactics for D | Around the IP Blogs | Before there was copyright there was censorship: the tale of "The Feast in the House of Levi” by Veronese | Permission to appeal in patent cases - farewell to the Pozzoli approach | EPO bows to EU Commission on patentability of products of essentially biological processes | Monday Miscellany | Groundless threats - Nvidia v Hardware Labs

Never Too Late 127 [week ending on Sunday 18 December] | Around the IP Blogs | Top-level Property Rights Protection Guideline released in China | CEIPI/EAO Conference--"Copyright Enforcement in the Online World" | More on the Swedish application of GS Media | Mini UPC Update: UK signs Protocol on Privileges & Immunities | When a holiday e-card meets IP: Well done, IPOS! | Unregistered designs for eXreme storage | Academic publishing houses lose appeal against Delhi University & photocopy shop | GS Media finds its first application in Germany | Monday Miscellaneous | Part 36 offers in the IP Enterprise Court

When this Kat doesn't know, he reaches out to Kat readers: what really happened at the dawn of modern commercial trademark use?


There are times when this Kat encounters an IP question, but finds himself unable to fashion a suitable response and so he reaches out to the IPKat community for assistance. This is one of those instances.

It is sometimes said that trademarks came into commercial use (and trademark law followed thereafter), when persons seeking to acquire goods no longer did so from a single, fixed physical source. If the goods came only from a single locus, there was no need to mark the goods, because everyone was aware of their source. Gradually, however, goods were sourced from other than this physical locus, and from a person other than the person associated with this physical locus, with the result that the notion of the source of the goods no longer could convey this unitary meaning. When this began to happen, marks came into popular use as the symbolic representation of such source. While the marking of goods has been present in specific situations over centuries and even millennia, it was only when modern commerce began to take form that the wide-spread use of marks took root.

Having said this, how true is this assertion? While there can be no doubt that the world moved from a time when there was virtually no use of marks for commercial purposes to their ever-expanding commercial adoption, this Kat has been unable to find scholarly research that explains this development. What happened in the 17th century, the 18th century and thereafter in this respect? This Kat thinks about the studies that have illuminated the development of the book industry in the West following the invention of the printing press (see, e.g., the notable book by Adrian Johns, The Nature of the Book: Print and Knowledge in the Making). In Johns’ own words --
“…the cauldron of creative and commercial forces in which print culture was formed, …allow[ing] us to visit booksellers’ shops and the Royal Society, paper manufactories and type foundries. We can eavesdrop on the often-bitter disputes between authors and printers, printers and booksellers, clerics and intellectuals as they debate and resolve the meaning and rights attached to the creation of ideas, their appearance in written form and then in print, and the opportunity to sell, buy, and read printed work.”
This Kat is looking for studies about trademarks that provide a similar window through which to understand the rise of the commercial use of signs. He realizes that the subject-matter of the development of print is much less diffuse than seeking to explain how commercial marks came into popular use. That said, without an appreciation of how this came about, our understanding of trademarks and trademark law is incomplete. In this vein, this Kat can already think of the following questions:
1. How did people provide for their necessities at the dawn of the modern world?

2. Was this all done in a self- subsistence manner, or were any of these “goods” acquired from third parties?

3. Indeed, was there such a notion of “goods” or “products”?

4. Was there such a thing as a “store” or other place where one acquired "goods"?

5. How did the market day(s) play a role?

6. How much of this trade took place via barter?

7. How were the differences in this regard between what happened in a village versus in a more urban setting?

8. Except for guild signs, was there such a thing as marks in use during that time?

9. Where and when exactly did commercial signs begin to take hold?

10. Can we trace the expansion of their use?

11. How did the increase in general literacy impact on these developments?
These are only some of the questions that have occupied this Kat for some time. If Kat readers have any suggestions where to look for answers, this Kat would be most grateful.

Thursday, 19 January 2017

Does the economic impact of SPCs necessitate SPC Regulation reform? The European Commission wants to find out

The AmeriKat getting her weekly dose of SPC reform
courtesy of DG Grow
While the AmeriKat has otherwise been engaged in the world of life sciences, she received an email from Fabio Domanico this week, economist in DG-GROW's "Intellectual property and fight against counterfeiting" unit alerting her to the recently published SPC tender entitled "Study on the economic impact of supplementary protection certificates, pharmaceutical incentives and reward in Europe".

The Single Market Strategy, which was adopted in October 2015, announced that the Commission will:
"consult, consider and propose further measures, as appropriate, to improve the patent system in Europe, notably for pharmaceutical and other industries whose products are subject to regulated market authorisations". 
Then, on 17 June 2016, the Employment, Social Policy, Health and Consumer Affairs (EPSCO) Council (Health) adopted Conclusions on strengthening the balance in the pharmaceutical systems in the EU.  It invited the Commission to conduct an evidence-based analysis of the impact of the EU's pharmaceutical incentives, including the SPC and the “Bolar” exemption, on innovation and access to medicines.

Fabio explains:
"The study will complement the analysis of ongoing legal study on SPC (you published a post last year - see here), and it will also analyse other incentives as requested by the Council in June 2016. The study will in particular analyse the economic effects of SPCs for pharmaceutical uses (human and veterinary) and plant protection, data protection and market exclusivity for medicinal products for human use. Evidence on the overall impact on availability and accessibility of pharmaceutical care for patients and the pressure on health systems across the European Union will be examined. The evidence provided by this study will hence support the policymaking in those areas." 
The technical specifications of the Tender seem to identify five areas of the study to be explored as follows (with focus on SMEs, as well):

  • Overview of existing IP related incentives and rewards supporting pharmaceutical innovation in the EU and analysis of their actual use by innovators through out the entire product life cycle (focus on SPCs, data protection and market exclusivity) 
  • Overall economic effects of SPC, data protection and market exclusivity on innovation, availability and accessibility - An analysis of the current economic incentives of SPC and data protection, taking into account patent protection and the impact on availability and accessibility of pharmaceutical care for patients and the pressure of health systems across the European Union  
  • Economic impact of EU regulations on SPCs - Essentially, does the SPC Regulation meet the objectives in terms of scope and term of protection in accordance with the R&D investment and "lengthy market authorisation requirements"?
  • Economic impact of rules on data protection and market exclusivity for medicinal products, including the impact on innovation, availability and accessibility of the medicinal products concerned and the impact on the health of the population (through the development and availability of innovative medicines or the lack of access to them) and the financial sustainability of health systems
  • Economic analysis of the specific rules on market protection for orphan medicinal products in Regulation (EC) 141/2000 - The study aims to take into account the findings of the study on the economic impact of the Paediatric medicinal products Regulation, including its rewards and incentives and whether the incentives are proportionate to the goals of the Regulation in encouraging innovation, improving patients' access to innovative medicines.  

The analysis will be filtered into supporting policy making in two respects:

  • The Commission will use the study as one of the inputs into an evaluation report of the SPC system in the EU and to inform the decision on whether to come forward with a revision (notably with an option of establishing common SPC titles covering the entirety of the internal market)/scope and term/modification of the existing SPC system
  • In view of the 17 June 2016 Conclusions, the study will also contribute to analysing the impact of the incentives listed above on innovation, availability and accessibility of medicines in the EU as requested by the Council. 

The maximum amount of the tender is 280.000. The deadline to apply is on 8 February 2017.

A look at the proposal for the ePrivacy Regulation


Former Guest Kat Valentina Torelli, now associated with FJF Legal in Madrid, has graciously continued her coverage and commentary on EU developments in the area of privacy, this time in connection with the ePrivacy Regulation.

"As the use of digital services and Internet-based communications has become well-nigh ubiquitous, the underlying technology continues to evolve. Nevertheless, users
still have generic concerns about the inherent risks, especially those associated with security and privacy issues. Against that backdrop, the European Commission has established that increasing trust and security in digital services must be among the main objectives of the Digital Single Market Strategy. Accordingly, the long term goal for the reform of the EU data protection legal framework, which commenced in 2012, culminated last year in the adoption of the General Data Protection Regulation (GDPR), reported here and here, which will apply throughout the EU from 25 May 2018. However, in order to complement this new system with the right of individuals to data protection, the European Commission has also been engaged in updating the legal framework set forth in the Directive 2002/58/EC with respect to the processing of personal data and the protection of privacy in the electronic communications sector (Directive on privacy and electronic communications), whose last revision dates back to 2009.

As a result, on January 10, 2017, the European Commission published a proposal for a Regulation (ePrivacy Regulation), in view of the economic and social importance of digital services, the development of Internet of Things (i.e. connected devices and machines communicating through electronic communications networks, also known in literature as “Enchanted Objects”) and the rise of the so-called Over-the-Top communications services (i.e. services provided in the form of applications running over an internet access service, such as Skype, WhatsApp, Facebook Messenger, Imessage, and Telegram; Gmail, Facetime and Viber), all of which currently fall outside of Directive 2002/58/EC [for more details on OTT services and the scope of protection of the ePrivacy Regulation, see WP240, Article 29 Data Protection Working Party's opinion 3/2016 on the evaluation and review of the ePrivacy Directive (2002/58/EC)].

The purpose of these efforts has been to fashion a technologically neutral legal instrument, which can keep pace with future technological developments as well as to fully harmonize the privacy issues in all the EU Member States. (Regulations are secondary law having general application and are binding in their entirety and directly applicable in all European Union countries.) The published proposal has been modified from the version that was leaked in mid-December 2016. The main issues that the reform is meant to address can be summarized as follows.

1. EU wide application

As for the GDPR, the scope of protection of the ePrivacy Regulation covers any publicly available electronic communications services, either provided to or used by end-users in the EU, regardless of whether the end-user pays for them or not, as well as the information associated with the EU end-user's terminal equipment (see Article 1(1) of Directive 2008/63/EC for definition of terminal equipment). For the purposes of the ePrivacy Regulation, end-users can be either natural or legal persons, especially insofar as the consent to the processing of end-user's electronic communications metadata (traffic/location data) is concerned.

2. Scope of protection

The ePrivacy Regulation affords protection to fundamental rights and freedoms, such as the right to data protection and the freedom of expression, information, thought, conscience and religion, of natural and legal persons, regarding the provision and use of electronic communications services. In particular, it covers these rights with respect to one’s private life and communications and an individual's personal data protection. All the foregoing is directed towards ensuring the free movement of electronic communications data and services within the EU.

3. Confidentiality

The ePrivacy Regulation rests on the principle of secrecy of communications. Electronic communications must be confidential and interference therewith is prohibited, without the consent of the end-user concerned. The principle of confidentiality also applies to devices and machines that communicate with each other by using electronic communications networks. However, since the ePrivacy Regulation does not apply to activity falling outside the scope of the Union law, Member States may derogate its provision for the purposes of State security, defence, public security and crime enforcement.

4. Information stored on /retrieved from terminal equipment – Cookies

An end-user's consent for transparent purposes, about which the end-user has been informed, is the basic requirement for the use of a terminal equipment’s processing capabilities, as well as the storage thereon, for the retrieval of information from the equipment and the remote collection of information for identification purposes. Otherwise, the use of cookies and information collected from an end users' terminal equipment should be necessary in order to carry out the transmission of the communication over an electronic communication network or to provide an information society service requested by the end-users. This may be the case of cookies for remembering language preferences or tracking an end-user's input when filling online forms. Also, it seems that, as set out in Article 29 Data Protection Working Party's W240 above mentioned, (first party analytic) cookies applied to measure web traffic to a site are also legitimate.

5. Direct marketing opt-in/opt-out

End-users must give their opt-in consent in order for a natural or legal person to transmit direct marketing communications (i.e. for any advertising, whether written or oral), sent to one or more identified or identifiable end-users of electronic communications services, such as automated calling, an email, or a SMS message. Natural and legal persons are permitted to direct marketing of similar goods and services to those already sold to end-users, using their emails already collected in the course of those previous sales, provided that end-users have been clearly, distinctly and freely given the opportunity to object to such further use of their data.

Regarding direct marketing calls, the electronic communications services providers must supply a contact line to the end-user targeted and must use a code/prefix identifying that this is a marketing call. Finally, Member States may implement opt-out rules for regulating the expression of an end-user's consent in the context of voice-to-voice marketing calls, e.g. registering their number on a do-not-call list.

6. Privacy by design

By default, software permitting electronic communications, including web browsers, must be configured to impede third party cookies from being stored on an end-user's terminal equipment and to process information already stored on the equipment. Once the software has been installed, the end-user will be informed of the privacy settings options so to provide the consent to the installation.

7. Liabilities

Users of electronic communications services will be granted compensation for both material and non-material damage incurred by virtue of infringement of the ePrivacy regulation, unless the alleged infringer can otherwise exclude his liability. Also, the scheme of administrative fines set forth under the GDPR applies, namely up to a maximum of 20 million euros or 4% of the total worldwide turnover, whichever is higher, with respect to a breach of the rules of confidentiality, the processing of electronic communications content and metadata, as well as the erasure and anonymity of electronic communications data; or up to 10 million euros or 2% of the total worldwide turnover, whichever is higher, where rules on cookies are infringed, software providers do not fulfil their obligations of privacy by default or the providers of publicly available directories do not comply with their obligations towards end users.

8. Remedies

In view of the above, end-users of electronic communications services have the right both to commence a judicial actions before the courts of a EU Member State of her/his habitual residence and to lodge complaints before the Supervisory Authority of the place of residence, work, or alleged infringement of her/his rights under the ePrivacy Regulation.It is immediately apparent that the proposed ePrivacy Regulation is meant to be consistent with the GDPR. Both legal texts are to be read in conjunction with respect to an end-user’s privacy and confidentiality, where personal data are processed in the electronic communication sector. It is noted that the GDPR will apply to matters not specifically covered by the prospective ePrivacy Regulation, such as is the case for an individual's access, rectification, cancellation and opposition of an individual's personal data rights (A.R.C.O.) and the obligations on controllers and processors.

Finally, while the ISP's liability framework set out in the e-Commerce Directive will remain intact, the contemplated ePrivacy Regulation will be associated with the prospective European Electronic Communications Code (The European Commission's proposal was published on 14 September 2016 and the new legal text will recast the four Directives comprised in the EU regulatory framework of electronic communications: the Framework, Access, Authorization and Universal Service Directives) and will maintain synergies with the Radio Equipment Directive 2014/53/EU, providing that radio equipment should incorporate safeguards to ensure that the personal data and privacy of users and subscribers are protected.

As the ultimate objective is to make the ePrivacy Regulation applicable along with the GDPR, as of 25 May 2018, it seems that we can expect that the final text of the ePrivacy Regulation will be published during the next twelve months; IPKat will certainly monitor this."

Wednesday, 18 January 2017

Around the IP Blogs!


This kitten is delighted to bring you the highlights of some IP blogs!

Carefully selecting some IP blogs!
Marie-Andree Weiss of The 1709 Blog discusses the Paramount Pictures Corp. v. Axanar Productions, Inc. case (2:15-cv-09938-RGK-E), brought before the Central District of California, which involved the unauthorized production of a 21-minutes film entitled Prelude to Axanar and planning the production of a full-length movie (Axanar), both crowdfunded by Star Trek fans. 

Hirotaka Nonaka of TrustinIP considers the first criminal case in Japan involving book scanning services. The High Court found that such services, comprising the cut and scanning of books per client’s request, amount to copyright infringement.

Moving to designs, Paul Tjiam and Hidde Koenraad recaps on MARQUES Class99 the decision issued by the District Court of the Hague in the consolidated cases Samsung Electronics Co Ltd v Maxperian NL BV and Samsung Electronics Co Ltd v Digital Revolution BV [ECLI:NL:RBDHA:2016:14383, para 4.74], which held that toner cartridges can be protected under Community Design rights because they are not component parts of a complex product.

Moving to trademarks, MARQUES Class 46 announces the publication by Sweet & Maxwell of the first European Trade Mark Reports (ETMR) of 2017. The January 2017 issue includes reports of recent decisions from IP offices, national and EU courts. 

Staying with trademarks but moving to Latin America, José Luis Alvarez details on IP tango the opposition system in Mexico, which in the opinion of this kitten merely provides certain regulations (by establishing a deadline and fee) regarding the Mexican practice that was known as “third party observations” (see IPKat post related here). 

Moving to patents, Patricia Covarrubia reports on IP tango about Resolution No. 175/2016, issued by the National Institute of Industrial Property (INPI) of Brazil, which makes permanent the “Green Patent” program, giving priority to the examination of inventions related to eco-friendly technologies. Also, IP tango covers the meeting of the PROSUR Directorship Committee, which addressed the Patent Prosecution Highway (PPH) program as well as the plans for 2017 and the extension of funding by the Inter-American Development Bank. 

Over at PATENTLYO, Dennis Crouch blogs about the non-precedential decision In re Chudik, issued by the United States Court of Appeals for the Federal Circuit, which involved whether a functional limitation contained in a claim can be found in the prior art. 

Staying with patents, as IPKat member Neil Wilkof discusses on IP Finance the challenges faced by the world’s largest generic drug company, Teva Pharmaceutical Industries Ltd (based in Israel), but whose most successful product in recent years has been the proprietary drug COPAXONE. 

Finally, Stéphanie Faber recaps on GLOBAL IP & PRIVACY LAW BLOG the changes to the Consumer Protection and Tourism Codes, introduced by the French Digital Republic Bill, regarding how the information must be provided by online platforms, social networks, forums and chatrooms.

Never Too Late: If you missed the IPKat last week!


New Year New Cat 
Too busy working on those new year’s resolutions to keep up with IPKat this week? No problem – here is the 130th edition of Never Too Late.

InternKat Tian reviewed Dr. Qiao Yongzhong's book “Maintenance time and the industry development of patents -- empirical research with evidence from China

Full low down on the interim decision handed down by Mr Justice Carr on 29 December in the biosimilars battle of Fujifilm Kyowa Kirin Biologics Co., Ltd and Others v AbbVie Biotechnology Limited [2016] EWHC 3383 (Ch).
The European IP Institutes Network (EIPIN) is recruiting 15 PhD candidates wishing to conduct doctoral research on the role of IP in the adaptive complexities of innovation.

Neil looked at an example of co-branding employed by a senior citizen facility

And the weekly round ups Sunday Surprises and Around the IP Blogs

PREVIOUSLY ON NEVER TOO LATE 

Never Too Late 129 [week ending on Sunday 1 Janurary] A Kat's 2016 Copyright Awards I Happy Public Domain Day! I The champagne of trade mark disputes I Jaguar Land Rover DEFEND[ER]s its trade mark I Länsförsäkringar, Länsförsäkringar, bork, bork, bork! I Passing off the National Guild of Removers and Storers I Fuss over function: In case you missed the annual IP-World Christmas party I The Supreme People's Court of China's Michael Jordan Trademark Decision I Intermediary IP injunctions: what are the EU implications of the UK experience? I Swedish Supreme Court has ruled that sport broadcasts are not protected by copyright I Swedish Patent and Registration Office refuses registration of figurative mark because contrary to morality and public order I Never too Late I Around the IP Blogs

Never Too Late 128 [week ending on Sunday 25 December] | Sunday Surprises | A TITANIC trade mark dispute | Book Review: two new methodology books for EQE candidates: Smart in C and Tactics for D| Around the IP Blogs| Around the IP Blogs | Before there was copyright there was censorship: the tale of "The Feast in the House of Levi” by Veronese | Permission to appeal in patent cases - farewell to the Pozzoli approach | Permission to appeal in patent cases - farewell to the Pozzoli approach | EPO bows to EU Commission on patentability of products of essentially biological processes | Monday Miscellany | Groundless threats - Nvidia v Hardware Labs | 

Never Too Late 127 [week ending on Sunday 18 December] | Around the IP Blogs | Top-level Property Rights Protection Guideline released in China | CEIPI/EAO Conference--"Copyright Enforcement in the Online World" | More on the Swedish application of GS Media | Mini UPC Update: UK signs Protocol on Privileges & Immunities | When a holiday e-card meets IP: Well done, IPOS! | Unregistered designs for eXreme storage | Academic publishing houses lose appeal against Delhi University & photocopy shop | GS Media finds its first application in Germany | Monday Miscellaneous | Part 36 offers in the IP Enterprise Court

Never Too Late 126 [week ending on Sunday 11 December] | Will Iceland's EU trade mark end up on ice? I Obviousness over the CGK - dead or alive? I Will UK industry suffer from Government's "ratify now, repent at leisure" UPC stance? | Indian Trade Marks Registry to widen its doors for recording “well known” marks | Mediaplayers and streaming: AG Campos Sánchez-Bordona in Filmspeler proposes broad interpretation of notion of 'indispensable intervention' | AIPPI Rapid Response Report: Debating Lyrica's recurring pain on plausibility, abuse and infringement | PPDs and standard disclosure - can you have your cake and eat it? | BREAKING: Unanimous Supreme Court in Samsung v Apple finds that damages may be based on a component, not whole product | (Belatedly) remembering Raymond Niro, the most influential person in patent litigation whom you may have never heard of | Genuine use of three dimensional EU trade marks - heated arguments over ovens | Wild Boys Sometimes Lose It: Duran Duran fail to reclaim their US copyright |Around the IP Blogs 


Photo credit: Steve Jurvetson

Tuesday, 17 January 2017

BGH: to cease means to recall

We would like to bring the attention of our German Readers a recent decision (published 13 January 2017) of the Federal Court of Justice (Bundesgerichtshof, BGH) with far-reaching implications for practitioners. In essence, the BGH held that any prohibition to distribute a product entails an obligation to actively recall any products already on the shelves, endorsing the view expressed by the Oberlandesgericht Munich in 2013. The same dispute has already led to a  judgment of the ECJ on 23 November 2016 (not related to the enforcement of the order).


Plaintiff had obtained an injunction based on unfair competition law (UWG) against the mareting and distribution of alcoholic beverages under the signs "RESCUE DROPS" and "RESCUE NIGHT SPRAY" ("es zu unterlassen, im geschäftlichen Verkehr als Spirituosen gekennzeichnete Produkte unter der Bezeichnung „RESCUE TROPFEN“ und/oder „RESCUE NIGHT SPRAY“ zu bewerben und/oder zu vertreiben"). By its wording, the order only entails an obligation to cease and desist, and not any obligation to actively recall any products. The order became provisionally enforceable.

Defendant failed to recall any products already sold to retailers (primarily pharmacies). Plaintiff argued that this violated the order - and prevailed. The BGH held that in a case where the continued presence of the products on the shelves of retailers creates a continued disturbance ("fortdauernder Störungszustand"), the obligation to cease and desist includes the obligation to remove the continued disturbance, although generally, an obligation to cease (Unterlassungspflicht) must be distinguished from an obligation to remove (Beseitigungspflicht). It was further irrelevant that the buyers of the products were not obliged to comply with any request for a recall of the products (since they have become the legal owners of the products). The key reasoning is in paras. 24-27 of the decision for those who read German.

While the injunction in this case was based on unfair competition law, it is hard to see that the outcome would have been any different for a prohibition based on trade mark, copyright or patent law. In essence, any obligation to cease distribution of a product in Germany in the future also entails the obligation to recall products already distributed (and not yet used up). Failure to do so makes the Defendant liable to pay the administrative fine imposed by the order in case of non-compliance - in the case at hand, EUR 15,000 for the omission of recalling the products.

Monday, 16 January 2017

Social media, "WikiLeaks" and false news in the 18th century: Thomas Jefferson and the "Mazzei letter"


In today’s public discourse, nothing is more super-charged than social media, "WikiLeaks" and false news. We like to think about these issues as something new. However, if we discount the internet and digital context and look through a much longer historical lens, we see that the issue is really about platform, dating back to the advent of the printing press and the mass distribution of printed contents. In the Biblical words of Kohelet/Ecclesiastes, "there is nothing new under the sun". And at the end of the 18th century, this sun blazed no brighter than on the “Mazzei letter” affair, involving the later-to-be vice-president and thereafter president, Thomas Jefferson. At issue were two of the primary means of communication at the end of the 18th century, the letter and the newspaper, one a private matter and the other inherently public. The "Mazzei letter" affair shows what can happen when this separation between the private and public was breached.

The political dynamics of the nascent American republic in the early 1790’s (remember the U.S. Constitution had been ratified only in 1788) witnessed an ever-increasing split between Jefferson and the ruling Federalist party led by President George Washington and Alexander Hamilton, especially over relations with France and England. Jefferson was an ardent supporter of France, having been energized by the French Revolution. In 1794, John Jay was sent by President Washington to England to negotiate a treaty (the Jay Treaty), which put an end to the dispute between those two countries.

The treaty enraged Jefferson, to the extent that when, on April 24, 1796, he wrote a private letter to a former neighbor in the United States, Philip Mazzei, now living in Pisa, Jefferson could not resist adding several sentences about the political situation. He described the Washington presidency (and by extension, the Federalist party) as “[a]n Anglican, monarchial and aristocratical party”. The distinguished American historian, Gordon Wood, summarizes the gist of Jefferson’s dissatisfaction with Washington as follows (“Empire of Liberty”, p. 235) —
“[Washington] was trying to subvert the American’s love of liberty and republicanism and turn the American government into something resembling the rotten British monarchy.”
Jefferson’s own words were much more graphic—
“It would give you a fever were I to name to you the apostates who have gone over to these heresies, men who were Samsons in the field and Solomons in the council, but who have had their heads shorn by the harlot England.”
So far, what we find is an instance where a person lets his political hair down in writing to a friend (and we should keep in mind the rich tradition of epistolary communication at that time). That should have been the end of it. But it was not. What happened was a series of translations, publications and reproductions of the “political” portions of the letter, spanning countries and exploiting the social media of that era, accompanied by claims of distortion and worse of the original text. According to Wood, Mazzei translated these portions of the letter into Italian for publication in a newspaper in Florence (but see below). From there, it found its way to a French version that was published in France. The French version was later translated into English for publication in the American press, shortly after Jefferson had begun to serve as the vice-president under the Federalist president, John Adams.

But it is not so certain that there ever was a published translation into Italian. The Editorial Note to the Papers of Thomas Jefferson concludes that “[t]he Editors, however, have found no trace of an Italian publication …”, although Jefferson himself apparently believed so. At most, Mazzei may have translated the contents in Italian for an acquaintance in the diplomatic corps. The Editors suggest that Mazzei most likely copied the relevant contents in their original English and shared it with two friends, one of whom upbraided Mazzei for circulating the text without permission. Mazzei’s motivations for making the copies and dispatching them are not clear. Also not clear is exactly who translated the contents into French (perhaps from the original English, perhaps from an Italian translation) and who forwarded it to the French newspaper, Le Moniteur Universel.

What then happened in the United States is particularly noteworthy, involving, as it did, translations into English from a translation into French from either an Italian translation or from the original English text. As the Editors write--
"Three and a half months after the extract's appearance in France, the Federalist editor of the New York Minerva, Noah Webster, obtained a copy of the French newspaper from Epaphras Jones, a New York City merchant and ship owner who had recently returned from France. Webster arranged to have the extract and the Moniteur's subjoined paragraphs translated into English and printed in the 2 May issue of his newspaper. Subsequent mentions of it appeared in the Minerva on 3, 4, 6, 8, and 19 May. When Jones requested the return of his French newspaper, Webster made a copy for himself and had it certified by James Kent on 22 May. Webster also noted that Timothy Pickering, then secretary of state, “sent to me for the original paper, and had the letter in the original with a translation, if I mistake not, published in the Gazette of the United States”. After its publication there on 4 May, Pickering had his own copy prepared and certified by his chief clerk for his files (on 3 June). Pickering returned the newspaper to Webster. The extract in the Moniteur, of unclear lineage, had by then become the official version of Jefferson's letter, from which all American subsequent versions derived" [footnotes and citations omitted].
American newspapers. pro and anti- Federalist, pro and anti-Republican, themselves published the contents in English (not based on the original English text, but from an English translation from a French, and perhaps even before then, an Italian version.) Sometimes this derived English text was accompanied by commentary, itself not infrequently expressed in the most scurrilous terms. As Wood describes, Federalist opponents of Jefferson read out the these portions on the floor of the Congressional House of Representatives, and one congressman then proclaimed: “Nothing but treason and insurrection would be the consequence of such opinions.” Claims were made about the accuracy of the English text and Jefferson defenders even challenged the attribution to Jefferson as the author of the text (which apparently he never denied). The controversy over the letter hounded Jefferson throughout the rest of his life (he died in 1826).

With one ear attuned to the public discourse of our own moment, what do we make of the "Mazzei letter" affair? Once the letter left Jefferson's hands (presumably he did not make a copy), it was left to the whims of the social media of the day. The role of the newspapers was crucial. As Wood observes, all parties involved sought—
"… a way of dealing with the immense power over public opinion that newspapers were developing in the 1790's. In fact, the American press had become the most important instrument of democracy in the modern world, and because the Federalists were fearful of too much democracy, they believed the press had to be restrained" (p. 250) [but the Federalists lost political power forever by 1800].
Then, as now, IP seems to have played a minor role, if any. At least in the 1790's, one could point to the fact that the copyright laws were in their infancy (translations were in any event not yet protectable) as well as to the absence of protection for privacy and confidences. The dispute over the unauthorized publication of the private etchings of Prince Albert and the recognition of a right in confidences was still over 50 years away (Prince Albert v. Strange).

Still the last word, as the first, belongs to Kohelet/Ecclesiastes—"there is nothing new under the sun".

By Neil Wilkof

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