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

Sunday, 18 March 2018

Unlawful street art used in a promotional campaign: H&M withdraws its complaint

The H&M advertisement
Street art and copyright have been increasingly at the centre of attention. Katfriend Angela Saltarelli (Chiomenti) reports on a case that was initially brought by H&M against a street artist and – nearly as fast as the creations of fast fashion-focused businesses -  has been now settled.

Here’s what Angela writes:

“H&M, the famous Swedish fast fashion retailer, sued on March 9 last an LA-based graffiti artist, Jason “Revok” Williams, before the US District Court for the Eastern District of New York, requesting a court order that would enable the company to use Revok’s artwork in the background of its new men’s sportswear campaign called “New Routine”, without paying any royalty.

Before the lawsuit, on January 8, 2018 the street artist had sent H&M a cease and desist letter, complaining about the unauthorized use of his artwork in the fashion retailer’s new campaign, requesting compensation for copyright infringement, negligence and unfair competition.

H&M reverted back to Revok’s letter with this complaint, arguing that the graffiti was unlawful and constituted mere vandalism. The retail giant claimed that the making of an illegal act, including criminal trespass and vandalism to the detriment of property of New York City, would entail that the artist does not own any enforceable copyright on his work.

On a subsidiary basis, H&M stated that its production team for the campaign went to the New York City Department of Parks and Recreation (“DPR”) to request whether it needed to pay royalties for using the graffiti images as part of its campaign. H&M stated that DPR confirmed that the company should not pay anything.

This case created in few days a heated debate in both the legal and artistic community [see, eg, here].

As to legal debate, some commentators have held the view that the US Copyright Act does not make any difference between artworks that have been legally created and those which have not, only requiring the work to be original and created on a fixed medium. On the other hand, others have submitted that illegal artworks are not copyrightable, because they fail to promote the progress of science and useful arts, as stated in the US Constitution.  

As to the artistic community, street artists lashed out at H&M harshly over the past few days … so much that last Friday H&M announced via Twitter to have withdrawn the court complaint, saying that it “respects the creativity and uniqueness of artists, no matter the medium. We should have acted differently in our approach to this matter. It was never our intention to set a precedent concerning public art or to influence the debate on the legality of street art.”H&M announced also that they contacted Revok to find an amicable solution.

The legal debate over copyright protection of street art created in conditions of unlawfulness remains therefore open.”

Friday, 16 March 2018

Friday Fantasies

IPKat is here with your weekly update of IP news and events! This week we have news of the ratification of the Hague Agreement by the UK, a new IP inclusive group and a number of seminars and events on copyright reform. 

UK ratifies the Hague Agreement

The UK has ratified the Hague Agreement Concerning the International Registration of Industrial Designs. The agreement will come into force on 13th June 2018. Since 2008, it has been possible to achieve design protection for the UK through the Hague system via the EU’s membership. UK ratification of the Hague Agreement will allow access to the UK as a contracting party in its own right.  

Changes in New Zealand

Amendments to the New Zealand PatentDesign and Trade Mark Regulations have recently been notified. The amendments include changes to micro-organism deposit requirements for patent applications and changes to the extension of time provisions for filing a counter-statement in patent revocation proceedings. See the recent statement on the changes from the New Zealand Intellectual Property Office for further details. 

IP Inclusive

Last month Baker McKenzie hosted IP & ME’s inaugural event, which went ahead in defiance of "The Beast from the East". The theme of the event was Chinese New Year and the speakers were Jenny He (IBM) and Gabriel Goh (Taylor Wessing). Attendees learned about Chinese New Year and how it is observed by businesses in China and other countries. 

Maneki Neko
Next month will see the launch of IP Inclusive's new initiative Careers In Ideas. The launch party will be held at the Royal Society of Medicine on Tuesday 10th April 2018. See more details on the IP Inclusive Blog. Careers in Ideas aims to raise awareness of all types of jobs within the IP sector, from those suitable for school-leavers to those that require further education. 

IP Strategy Survey

AISTEMOS is a London based IP data analytics company. They are currently conducting a survey on IP strategy, focusing on the impact of disruptive technologies, such as blockchain and AI, on the attitudes to IP within organisations. See here to participate in the survey. AISTEMOS's report on their IP strategy survey last year can be found here

The IV Edition of More Than Just A Game (MTJFG) will focus on Culture, Identities, Freedoms & Artificial Intelligence, and will be held on Thursday 5th to Friday 6th April 2018 at Ironmongers Hall, Shaftesbury Place, London EC2Y 8AA. The focus will be on the impact of "AI and Immersive Technologies on Interactive Entertainment and our Culture, Identities and Freedoms". During the two days of the conference, leading international academics, publishers, lawyers, industry experts and policymakers will discuss a wide range of legal and regulatory topics, including Intellectual Property Law, Technology, Content & Communities Regulation, Data Protection and Privacy, E-sports and Streaming, Monetisation Regulation and Loot Boxes. The full programme and registration can be found here

EU copyright reform

Geo-blocking is the practice of restricting or denying access to certain services or content outside a specified territory. As part of the Digital Single Market Strategy, the Council of the European Union recently adopted the EU Anti-Geoblocking Regulation, now published. See more on the history of the EU's approach to geo-blocking herehere and here.

COMMUNIA is an EU project with the stated aim of advocating "for policies that expand the public domain and increase access to and reuse of culture and knowledge". Next week COMMUNIA is organizing a series of European Copyright Action Days in Brussels, in order to highlight "the broad opposition of civil society, libraries, the users, industry and many others concerning the restrictive aspects of the copyright reform proposal [Copyright in the Digital Single Market Proposal]" (Kat post here). Full details of the planned events can be found here

In the library
If you want to learn more about the issues involved in copyright reform, The City Law School is hosting a free seminar: Exceptions, Institutional Uses and the Construction of Copyright Norms, on the evening of 6th April 2018. The seminar will focus on one of the most controversial areas of EU copyright reform: the use of works in institutions such as libraries, museums, archives or schools. The speaker is Professor Guido Westkamp from Queen Mary University. See here for full details and registration. 

There will be another free seminar at The City Law School on 20th March 2018 on Derivative Works in Copyright and Improvement Inventions in Patent Law. The seminar will particularly focus on comparing the different approaches of copyright and patent law  to second-generation creators and inventors. Would a patent-like approach to copyright help promote creativity for the public benefit? The speaker is Professor Maurizio Borghi from Bournemouth University. More information can be found here

WIPO roving seminar series

The WIPO roving seminar series continues. There will be a free Slovenian Roving Seminar on WIPO services in Ljubljana on 27th March 2018. The event and materials will be in both English and Slovenian. Additional information, such as the seminar’s programme and a link to the registration page, can be found here

Ljubljana, Slovenia

The protection of genetic resources, traditional resources and folklore 35 meetings later…

In a few days it  will be time for the next meeting (the 35th one in fact) of the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore. Between the 19th and the 23rd of March, the members of the Intergovernmental Committee will convene in Geneva to discuss issues related to the protection of traditional knowledge, genetic resources and traditional cultural expressions. (This body is a WIPO Intergovernmental Committee with the mandate to conduct text-based negotiations for the adoption of legal instruments for the protection 
of traditional knowledge, genetic resources and folklore).

A quick review of the agenda reveals that the majority of issues that will be discussed are reports on the implementation of earlier decisions. Some of them are based on and refer to decisions that were adopted already in 2001.

In addition to the usual agenda points concerning the accreditation of organisations, the participation of indigenous communities and the discussion on voluntary funding to enable their participation, this meeting will consider the following documents:

This 47-long page document includes a long list of definitions of key terms used with regards to the exploitation of traditional knowledge, genetic resources and traditional cultural expressions as well as those that concern mechanisms used in order to facilitate the fair and equitable sharing of the benefits arising thereof. The glossary is a revised and updated version of earlier documents with similar content. It is not a surprise that the glossary adopts definitions that have been previously used by other major international legal instruments, such as the Berne Convention, the FAO International Treaty on Plant Genetic Resources for Food and Agriculture and the (UNESCO) Recommendation on the Safeguarding of Traditional Culture and Folklore.

Although 47 pages of glossary might seem nothing more  than an expression of exaggerated formalism, reaching consensus on the meaning of terms that are part and parcel of the structures for  providing adequate protection for traditional knowledge, genetic resources and folklore has proven a daunting task. As stated in the document, even the fundamental term of “traditional knowledge” does not enjoy a definition that is acceptable by all. A disappointing statement one would say after over 17 years of negotiations.

This document provides a review of available resources  on the WIPO website, databases, materials and information that may be accessed by visiting It also presents a series of available activities, such as seminars, workshops and publications.

This very short document confirms that the IGC Secretariat continues to work on the accessibility and further use of online contractual clauses and guidelines for the drafting and negotiation of benefit sharing agreements. Nothing new here, it is just keeping up with the previous contributions.

This document  includes a list of resources (documents developed   both by the Secretariat as well as such those that have been proposed by Member States), concerning the documentation of traditional knowledge and genetic resources as well as the compilation of such knowledge in databases.

This report includes all relevant resources and activities by  WIPO and Member States concerning disclosure requirements and their connection to the patentability of inventions based on TK. In addition to discussing  relevant  regional and national initiatives, there is also a database with national legislation regulating the disclosure requirement. 

This document, submitted by the delegations of Canada, Japan, Norway, the Republic of Korea, the Russian Federation and the United States of America concerns a proposal for a further study to be based on national experiences as they relate to a set of questions concerning the disclosure requirement and the effect it has had in practice. Some of the questions posed are of considerable interest according to this Kat, namely: 

“If there was a disclosure requirement, did the Office also require disclosure of prior art that is material to the patentability of the invention? If not, what was the basis for having a disclosure requirement of the source of GR and/or TK, but not on prior art that is material to patentability? Does disclosure improve examination? How often was the source or origin material to patentability? For countries whose IP law requires disclosure, was there also a national law related to misappropriation or misuse of GR and/or TK?
Does the Office provide a mechanism for third parties to submit information material to patentability to a patent application?”

Such a review  could provide interesting insights into the link between the protection of TK and genetic resources and the patentability of inventions. One aspect that, surprisingly to his Kat, is omitted t of the long list of questions  regarding  how the Nagoya Protocol (available here) has been implemented and whether it has had any impact  on how the disclosure requirement is applied and on the effects that it has had.
The 35th meeting of the Intergovernmental Committee; a step closer to the protection of traditional knowledge? 
Image result for cat traditional knowledge
What will this IGC meeting bring?
From the documents submitted, a major part of the 35th meeting of the Intergovernmental Committee will be dedicated to discussing past decisions and activities (some of them already 15 years old).  It  does not seem that the Committee will include the discussion of any novel documents.   Still, planning for a future study on the disclosure requirement is a necessary step in getting a grip on whether twenty years of negotiations in the Committee, as well as the entry into force of the Nagoya Protocol (which in fact omits reference  to the patent-related aspects of the disclosure requirement), have had an impact on this  concrete link between the protection of TK and genetic resources and the patent system. And yes, this might be a step closer to the protection of traditional knowledge, even if it is a tiny one.

Thursday, 15 March 2018

Spanish Supreme Court puts an end to a “sui generis” case concerning database “sui generis” right

(Probably) *Not* a
database right-inspired band
The Database Directive has been around for a while, yet it is arguable that one of its crucial aspects, this being the sui generis (database) right, has remained somewhat ambiguous.

Katfriend David Serras Pereira (SPAutores) reports on a recent SPanish decision concerning indeed the sui generis right.

Here’s what David writes:

A long time ago in a galaxy far, far away....

The Database Directive was adopted in March 1996, and not so often we hear of national landmark decisions based on the national laws implementing the Directive, giving us clues on the best practices and guidance when dealing with databases cases.

Quoting the IPKat’s last post (Technomed v Bluecrest) covering national “newsfeed” on this topic (here) “Database right is an infrequent visitor to the IPKat's pages”! 

Now, again, two medical industry players, offer reasons to highlight it again!

How many times as the Article 7 sui generis right infringement resulted in EUR 5 million fine? None? Not anymore, Spanish judges have decided.

In a very recent decision the Spanish Supreme Court (here) has dismissed an appeal for annulment and upheld the judgments issued by the lower courts which imposed a fine of EUR 5 million on IMS Health to be paid to Infonis for having copied the latter’s database.

This decision puts an end to this case and shows a good and interesting approach to the sui generis right by Spanish judges in what looks like a landmark decision, especially if one takes into account the (ok… I’m tempted to use it here) “sui generis” amount of the damage award related to the “sui generis” right and the interesting evidence considered by the court.

Article 7 of the directive states:

“Member States shall provide for a right for the maker of a database which shows that there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents to prevent extraction and/or re-utilization of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database.”

Spain has transposed this provision by means of Articles 133 - 137 of Real Decreto Legislativo 1/1996, de 12 de abril (here).

The case

In 2010, Infonis (a Spanish company) sued IMS Health claiming that the latter had infringed its database rights. Basically, Infonis claimed that ZBSales, its pharmaceutical marketing database, had been copied by IMS Health and resulted in the creation of a competing and suspiciously similar database (Sanibricks),

INFONIS devoted three years to the making of ZBSales (a database tracing the health map of all the Spanish autonomous communities) which was presented to the pharmaceutical market in 2006. In the same year, a 10-year marketing agreement was also reached between Infonis and IMS Health. Yet 3 months later IMS was said to have put an end the agreement and extracted the data contained in Infonis database.

Both at first instance and in appeal the claimant succeeded. Both courts found that INFONIS had made a substantial investment in connection with its database. What is interesting is also the evidence relied upon to prove infringement of the database right …

Just don’t copycat the errors… they said…

So, speaking of evidence, how have the courts reached the conclusion that there had been copying of the ZBSales database?

By comparing the two databases (and analyzing more than 20.000 items as reported here) it was found that the Sanibricks database included the same errors of of the ZB Sales these being errors in the names of the basic health zones.

It was found that it would very strange (impossible) that the exact same errors present on the claimant database, would be also present in the database created by IMS Health.

This is an interesting decision, not only in terms of the uncommon amount of the awarded damages for the infringement of this “sui generis” right, but in understanding how evidence (regarding the infringement, and not the other requirements, eg effort, investment…etc…) should be gathered and produced in similar cases. 

Above all, this decision is proof that the database sui generis right is applicable, not “dead lex”, and that the protection of the efforts and investment carried out by undertakings in such cases has now one more favorable decision strenghtening its effectiveness.”

Infighting at Nigeria’s main collecting society – Powers of the sector regulator

Katfriend and AfroIP blogger Chijioke Ifeoma Okorie returns on a topic that has been increasingly at the centre of attention recently: collective rights management and collecting societies in Nigeria.

Here’s what Chijioke Ifeoma writes:

“At a meeting of the Board of Directors of the Copyright Society of Nigeria (COSON) held on 7th December 2017, COSON’s founding Chairman (Mr. Tony Okoroji) was removed and one of the founding Directors, Mr. Efe Omoregbe, appointed in his stead. A General Meeting involving COSON’s members (General Assembly) was held on 19th December 2017 and the members who attended the meeting reinstated Mr. Tony Okoroji as Chairman and appointed other Board members. Earlier this month, COSON instituted Suit No ID/4827/GCMW18 seeking inter alia an injunction restraining Mr. Omoregbe from parading himself as Chairman of the Society.

This post reviews the line of events from the perspective of the role of the Nigerian Copyright Commission (NCC), the sector regulator for COSON and other collecting societies in Nigeria.


The issue here is a dispute between members of the COSON Board and one that concerns the internal workings of COSON. There are no specific provisions in COSON’s Memorandum and Articles of Association regarding disputes arising in relation to the position of COSON Chairman. However, general provisions pertaining to the position of COSON Chairman and the powers of the General Assembly may be found in Articles 17, 36, 44 and 61 of COSON’s Memorandum and Articles of Association. COSON’s Memorandum and Articles may be obtained from the Corporate Affairs Commission (CAC) or from COSON itself.

Article 17 is to the effect that the chairman of the management board is to preside as chairman at every general meeting of COSON. Article 36 stipulates that the business of COSON is to be managed by the Management Board and no regulation made by the COSON General Assembly is to invalidate the actions of the Board. Article 44 gives the Management Board to elect the COSON Chairman from amongst its director members and to determine the period for which such chairman is to hold office

Where there is a dispute regarding which director shall be Chairman of the society, such dispute is one that exists between members of COSON and is within the purview of the NCC’s powers as sector regulator. This is because, by virtue of Regulation 2(3)(iii) of the Copyright (Collective Management Organisations) Regulations 2007 (CMO Regulations) and Article 61 of COSON’s memorandum and articles of association, every member of the Management Board excluding the General Manager, is or must be a member of COSON itself.

Powers of NCC in relation to the issues at stake

In relation to disputes between members and/or disputes regarding the Management Board, the NCC may by virtue of the CMO Regulations:

(a)  Order an audit of the accounts of the collecting society [Regulation 10].
(b)  revoke the licence of a collecting society [Regulations 3 and 20(2)].
(c)  serve a written caution to a collecting society [Regulation 20(1)].
(d)  suspend the licence of a collecting society for 3 months [Regulation 20(2)].
(e)   set up a dispute resolution panel [Regulation 15].

Given the nature of the issues as described in the preceding paragraphs, appropriate provisions exist within the CMO Regulations that indicate that the NCC is aware of the resolutions reached at the various meetings. In terms of Regulation 2(3)(vi) of the CMO Regulations, Article 35 of COSON’s memorandum and articles of association provide for the NCC to have its representative as a non-voting member of the Management Board. Further, COSON is required to furnish the NCC with a report of all its meetings by virtue of Regulation 9 of the CMO Regulations. In the circumstances, a dispute regarding powers exercised at the meetings of COSON’s management board and general assembly respectively is within the regulatory competence of the NCC and falls squarely within the purview” of the CMO Regulations.

Yes ... there might be
more fun things to collect than royalties

The NCC is clearly in a position to act and issue a written directive capable of quelling the storm at COSON. The NCC has clear powers to appoint an auditor to audit the account of COSON especially in view of the allegations of financial impropriety levied against the Chairman of the Board. It was present at these contentious meetings and even if it was absent, it has access to report of these meetings. The NCC’s adjudicatory powers in this instance can only be activated by a member of the management board presenting the Chairmanship dispute before the NCC. However, the constitution of a panel to resolve such dispute is at the discretion of the Director-General of the NCC by virtue of Rule 6 of the Copyright (Dispute Resolution Panel) Rules 2007.

Accordingly, the NCC has the powers to issue appropriate directives regarding the conduct of COSON’s management board and the general assembly. Indeed, there is no point sitting in at meetings and receiving report of meetings if the NCC cannot take steps to address issues that threaten the existence and purpose of COSON.

Presently, COSON’s funds that should serve the financial interests of its members are being depleted in terms of lawyers’ fees and its image as a fair and transparent collecting society is gradually being eroded.

Up till April 2017 when Nigeria’s Attorney-General exercised his powers to approve the Memorandum and Articles of Association of Musical Copyright Society of Nigeria (MCSN) and direct the issuance of a CMO licence to MCSN, COSON has operated as a sole collecting society approved for musical works and sound recordings in Nigeria. Indeed, despite several suits instituted regarding the status and powers of MCSN, the courts have consistently ruled that without due appointment and registration by the sector regulator, the NCC, COSON remained the only collecting society available to music copyright owners (for membership) and music copyright users (for music licences) in Nigeria. It is therefore without doubt that COSON wields considerable powers in ensuring adequate remuneration to music copyright owners regarding the use of their protected works.

In the circumstances, it is important that the internal administration of COSON continue to operate smoothly like a well-oiled engine. The NCC can exercise its powers to ensure the achievement of this objective and save COSON from imploding.”

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