The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Thursday, 27 July 2017

CREATe Summer Summit 2017: Open Science, Open Culture & the Global South (and everything between)

Former Intern Kat Eleanor Wilson attended the CREATe's inaugural seminar on the issue of openness in science, culture, and everything between. The relevancy of the topics considered warrant publishing Eleanor's summary of the event.

IPKat readers may be familiar with the CREATe centre based in the University of Glasgow. To use its full title, the Research Councils UK Centre for Copyright and New Business Models in the Creative Economy, it has explored numerous research areas within this impressive remit. I was lucky enough to attend CREATe’s inaugural Summer Summit from 26 – 30 June, which was jointly organised with National Law University (NLU) Delhi by Dr Sukhpreet Singh (CREATe, University of Glasgow). The theme of the summit was ‘Open Science, Open Culture & the Global South’, and openness was discussed from every possible interpretation – from open access to open exceptions, from open policy making to open education. This post contains just some edited highlights of an intensive week.

The week kicked off with a keynote from Dr Peter Jaszi (American University Washington, DC), who argued that what is sometimes seen as “gaps” in copyright law are part of its fabric and design. Apart from describing copyright as a luxurious piece of lace, he raised some serious concerns about the constrictiveness of closed-list exceptions against the impetus for openness. It quickly became clear that, while it means different things to different people, “openness” is much more than a buzzword. Openness is, it seems, a very broad church which includes the concept of “free as in beer” and “free as in speech”, and embraces openness to access, remix, re-use, and often more.

This concept was developed in the conversations which took place around open education and science. It was clear that openly available education was viewed by Professor G. S. Bajpai (NLU Delhi) as a global mandate, and not an optional extra for universities, particularly when state funding is involved. It was interesting to then contrast the E-Pathshala ["Pathshala" is a Sanskrit term for education] with the Massive Open Online Courses offered by the University of Glasgow.

On the theme of open science, Dr Arul Scaria (CIPPC) highlighted the risks of fraud and harm when scientific research is not transparent, which is also evinced by the woeful statistics for private scientific journals: 90% of papers are never cited and as many as 50% are only ever read by the authors and editors. In the light of this, the preference of scientific authors for the “impact factor” over open access appears to be ripe for a review.

This view was consolidated by Prof Roberto Caso (University of Trento) who acerbically criticises the scientific community’s apparent obsession with metrics and commodification at the expense of open access and pedagogy. All of this was fleshed out by policy-oriented presentations from Claire Fraser from HEFCE and Chris Banks FRSA of Imperial College, both of whom explained in detail the current practicalities and challenges of supporting open access to research outputs and data.

Continuing the discussion on open science enabling a more open culture, Dr Thomas Margoni (CREATe, University of Glasgow) queried why the InfoSoc Directive should mandate a “high level of protection”, rather than a “balanced” or “proportionate” one, and whether one-size-fits all copyright protection remains viable. Particular obstacles to academic research across all fields are the limitations of the newish non-commercial text and data mining copyright exception, since it potentially conflicts with the licenses under which academic works are published.

To remedy the situation, CREATe’s Dr Giulia Dore demonstrated a new tool supported by Horizon 2020 funding, namely OpenMiNTeD, which is designed to support researchers intending to undertake computational analysis of large volumes of material by text and data mining, and is developing a novel “traffic light” system, which will reveal the compatibility of text and data mining with various forms of licence. This was, of course, made possible by employing text and data mining of license terms themselves(!).

This was just one of various new web tools showcased last week, all of which work to further increase openness and indeed are generally available (at least as Creative Commons). There was the Copyright Evidence Wiki, a database for empirical copyright research; Online Media Behavioural Analytics (OMeBA) survey data; and – my personal favourite, and well worth a look – the digitisation of Edwin Morgan’s scrapbooks.

This last resource was presented by Jesus Rodiguez Perez and Kerry Patterson (both CREATe, University of Glasgow) and demonstrates the potentially prohibitive costs and effort required to diligently search for orphan works, notwithstanding the progress made at the EU and UK levels in orphan works licensing and use by institutions, which were thoroughly explained by Margaret Haig from the UKIPO and Victoria Stobo, an archivist at the University of Glasgow. As a practical exercise, we participants attempted our own diligent searches for authors or owners of orphan works registered at the EUIPO and – so it seemed – came close to a breakthrough, but ultimately had to concede.

For my part, it took a couple of days to get comfortable with the different conceptions of openness without trying to reconcile them into a homogenous conceptual objective. As Dr Martin Kretschmer has mischievously noted, an optimal framework within one country is to adopt a maximally open IP framework while its international neighbours maintain a closed, narrow approach to exceptions, access and use. Evidently, this is not a universal solution to achieving openness internationally.

Two contrasting studies of openness operating in very different contexts were presented. First was on the crowdfunding platform Kickstarter, a platform which seems to reward “remix” culture according to a study by Dr Kristopher Erickson (CREATe, University of Glasgow). The second considered indigenous cultures, where Dr. Saskia Vermeylen (University of Strathclyde) advocates a more respectful approach to shared property, which incorporates fiduciary concepts of stewardship rather than importing closed-off, westernised property principles.

To draw together the strands of the summit, the benefits of “open” for stakeholders from Scottish Power to the British Library are emerging. There are practical steps that academics and businesses alike can take already, although the legal framework could be tweaked to nudge openness onto the agenda. What may be harder to shift is the received wisdom, even intuition, that high protection and secrecy necessarily lead to advantages or profits. Another potential pitfall could be conflict resulting from different expectations of a standard of “openness”, although attempting to coin a universal definition would feel somewhat short-sighted and restrictive.

Photo on lower left by Andrew Dunn and is licensed under the Creative Commons Attribution-Share Alike 2.0 Genesis license

BREAKING: BGH asks CJEU what a 'quotation' is: only unaltered reproductions or also something else?

Miami to Ibiza?
Better: Karlsruhe ...
Via Katfriend Mathias Schindler (Office of MEP Julia Reda) comes the news that today Germany's Federal Court of Justice (Bundesgerichtshof - BGH) has referred a new copyright case to the Court of Justice of the European Union: I ZR 228/15 - Reformistischer Aufbruch.

This is the third copyright reference from the BGH in less than two months: last month, in fact, this court referred the (long-running) Metall auf Metall case, and the Afghanistan Papiere case [both reported here].

According to the relevant press release (and its Google Translate translation), similarly to the two other references mentioned above, also this new case seeks guidance on – among other things – the interplay between copyright protection and the protection of third-party rights and freedoms (including freedom of the press), as well as the proper interpretation of relevant exceptions in the InfoSoc Directive – in this case, news reporting and quotation within, respectively, Article 5(3)(c) and (d) of the InfoSoc Directive.

This new reference has been made in the context of proceedings brought by a German politician who, in 1988, authored a book about “sexual acts of adults with children”. The publisher apparently edited the manuscript without the author's consent and the resulting publication was, according to the author, a distortion of his views.

The original manuscript was found in an archive in 2013, and the author submitted it to several newspapers to demonstrate what he had actually written. Although he did not authorize publication of the manuscript or extracts thereof, he consented to newspapers linking to a statement he published on his own website.

... to Luxembourg
The publisher also released a press report on its own portal to support its view that the original manuscripts had not been distorted. To this end, the publisher included a link that allowed users to download both the original manuscript and the resulting publication. No link to the author’s website was provided.

The author submitted that all this amounted to copyright infringement, and brought proceedings against the publisher, being successful at both first instance and on appeal.

The case eventually reached the BGH, which has now decided to stay the proceedings and make a reference to the CJEU.

Although the press release does not contain the exact questions referred, it appears that the core of the reference, which – as also noted by the BGH – is similar to the Afghanistan Papiere case – concerns the interpretation of the notions of ‘news reporting’ and ‘quotation’ within Article 5(3) of the InfoSoc Directive.

With particular regard to ‘quotation’, the core issue seems to be – by reading the press release – whether this exception requires the quotation to be an unaltered reproduction of part of the original, or also allows the reproduction not to be identical.

This question is a very intriguing one, and the answer may be anything but straightforward. There is no need to say that the resulting outcome will have a significant impact on the scope of the EU quotation exception and - with it - national quotation exceptions.

AG Wahl says that, at certain conditions, suppliers of luxury goods may prohibit retailers from selling on third-party online platforms

Yesterday Advocate General (AG) Wahl issued his Opinion in Coty Germany GmbH v Parfümerie Akzente GmbH, C230/16 [the Opinion has already received a thorough and interesting commentary by leading competition law blog Chillin’Competition].

This is a reference for a preliminary ruling from the Higher Regional Court, Frankfurt am Main (Germany), seeking guidance from the Court of Justice of the European Union (CJEU) on how to interpret relevation competition law provisions [Article 101(1) TFEU and of Article 4(b) and (c) of Regulation (EU) No 330/2010] in the context of selective distribution agreements.

This case is linked to, on the one hand, the increasing popularity of electronic marketplaces over which producers have no influence [eg Amazon, eBay] and, on the other hand, the question whether a supplier may prohibit authorized resellers from making use of non-authorized third undertakings over fear that the relevant products would otherwise lose or risk losing their ‘luxury’ image.


As readers may imagine, the latter is indeed the core issue in the background national proceedings, brought by Coty Germany [an undertaking that supplies luxury goods and is certainly not new to having its cases referred to the CJEU: eg herehere, and here] against one of its authorized distributors (Parfümerie Akzente), which has been selling Coty’s products for years both at (Coty-approved) brick-and-mortar locations and online (through When Coty sought to extend the control that it has over physical retail to the online sphere, Parfümerie Akzente refused.

As a result, litigation ensued.

In 2014 the first instance court sided with Parfümerie Akzente, and held that the objective of preserving a prestige brand image does not justify the introduction of a selective distribution system which by definition restricts competition.

The decision was appealed to the Higher Regional Court, which was unsure whether the one at first instance was a correct application of CJEU case law, notably the 2011 judgment in Pierre Fabre Dermo-Cosmétique. The court thus decided to stay the proceedings and refer the case to the CJEU.

AG Wahl
The AG Opinion

AG Wahl noted at the outset that the decision in Pierre Fabre Dermo-Cosmétique has been subject to divergent interpretations by national competition authorities and courts: this case is therefore an opportunity for the CJEU to clarify the meaning and scope of its earlier jurisprudence.

According to the AG, the interpretation given at first instance in the background national proceedings is not the correct one: the seller of luxury products is not prevented at the outset from requiring its authorized retailers to sell products at certain conditions and locations – whether offline (brick-and-mortar shops) or online.

This is because price competition is not the only form of effective competition [para 33], and – indeed – “it is on the basis of that premise that selective distribution systems [based on qualitative criteria] should be seen” [para 34].

The CJEU has recognized the legality of selective distribution systems based on qualitative yet objective criteria (determined uniformly and applied in a non-discriminatory fashion – including preserving a certain product image) since the seminal decision in Metro.

The AG also recalled that it has been gradually accepted that selective distribution systems of this kind may even have positive effects on competition: by favouring and protecting the development of the brand image,

“[t]hey constitute a factor that stimulates competition between suppliers of branded goods, namely inter-brand competition, in that they allow manufacturers to organise efficiently the distribution of their goods and satisfy consumers.” [para 42; on intra-brand competition, see para 44].


“Selective distribution systems are, especially for goods with distinctive qualities, a vector for market penetration. Brands, and in particular luxury brands, derive their added value from a stable consumer perception of their high quality and their exclusivity in their presentation and their marketing. However, that stability cannot be guaranteed when it is not the same undertaking that distributes the goods. The rationale of selective distribution systems is that they allow the distribution of certain goods to be extended, in particular to areas geographically remote from the areas in which they are produced, while maintaining that stability by the selection of undertakings authorised to distribute the contract goods.” [para 43]

Eau de Toilette ... for Kats
While in principle selective distribution agreements are not contrary to Article 101 TFEU, there are some conditions [the Metro criteria] that sellers must respect [paras 52 ,65-66]:

1.    It must be established that the properties of the product necessitate a selective distribution system, in the sense that such a system constitutes a legitimate requirement, having regard to the nature of the products concerned, and in particular their high quality or highly technical nature, in order to preserve their quality and to ensure that they are correctly used.
2.    Resellers must be chosen on the basis of objective criteria of a qualitative nature which are determined uniformly for all potential resellers and applied in a non-discriminatory manner.
3.    The criteria defined must not go beyond what is necessary.

The AG then focused on the particular case of luxury goods, and recalled [para 72] that:

“In the context of trade mark law, the Court [notably in Dior and Coty Prestige] has emphasised that luxury and prestige goods are defined not only by reference to their material characteristics, but also on the basis of the specific perception which consumers have of them, and more particularly of the ‘aura of luxury’ which they enjoy with consumers. As prestige goods are high-end goods, the sensation of luxury emanating from them is essential in that it enables consumers to distinguish them from similar goods. Therefore, an impairment of that aura of luxury is likely to affect the actual quality of those goods. In that regard, the Court has already held that the characteristics and conditions of a selective distribution system can, in themselves, preserve the quality and ensure the proper use of such goods.” 


The Opinion of AG Wahl appears both correct and sensible, including from an IP perspective [but see here for a critical take].

Readers will remember in particular that in Dior the CJEU linked the grant of a licence in the context of a distribution agreement concerning luxury products (in that case, "corsetry goods") to the exercise of Dior’s trade mark rights, notably the right to put relevant goods into circulation for the first time. In Coty Prestige the CJEU noted that the exclusive nature of trade mark rights means that any unauthorized use of a trade mark may amount to an infringement [see paras 89-90 of the Opinion].

Let’s see if now the CJEU also agrees with the AG. Stay tuned!

Wednesday, 26 July 2017

Around the IP Blogs

This Kat has been surfing about the IP blogosphere and has returned with some very interesting articles for your digestion and rumination!

Snooping for some perspectives on copyright, The 1709 Blog reported on US litigation about pre-1972 (year in which recordings started to be subject to federal copyright) copyright issues of the 60s band “The Turtles”. In The CopyKat. Friday the 13th without Jason Voorhees, sounds like a nightmare!, the actions of the association Alliance for Creativity and Entertainment and the deal with YouTube of the American Society of Composers, Authors and Publishers in this specific field of copyright law are also discussed.

In Canadian news, after years of consistent Supreme Court decisions about fair dealing in schools and universities, Federal Court Judge Hands Access Copyright Fair Dealing Victory: Micheal Geist reports on the reasoning of the court and the repercussions of the judgement.

On to trade marks, in Mexico the Tequila dispute is burning up! Are you Desperados for Tequila? The famous beer brand Desperados, which uses the appellation of origin “Tequila”, might be facing litigation as the tequila industry frowns upon the situation and, more importantly, Tequila has been granted a Certification Mark in the US. Florelia Vallejo Trujillo of IP tango reports on the news.

Maybe I could take the bike out today...
nah, window watching it is
Up for a bike ride in Christiania, Copenhagen? Well you will find yourself in the midst of an in-fight between CHRISTIANIA BIKES and CHRISTIANIA CYKLER (which happens to be the Danish translation of the former). For the Kluwer Trademark Blog, Lasse Søndergaard Christensen and Louise Thorning Ahle.

In The link between passing-off and provenance, Darren Margo and Natalie Hill of Afro-IP, talk about the Supreme Court of Appeal judgment Herbal Zone v Infitech Technologies. The South African judgement “covers that situation where an ex distributor turns competitor, and what is then required to stop that business selling products bearing the same name. It is also a reminder on the importance of registering a trade mark”.

Turning to designs and patents accordingly, BMW AG v Acacia Srl reported by MARQUES, involved the latter company manufacturing and selling on-line replicas of BMW and other car brands' wheels. Acacia sought the Italian Courts for a declaration of non-infringement. The case centered on whether the Italian Court have jurisdiction and, ultimately, the CJEU confirms lex specialis status of jurisdiction under the Design Regulation.

The second case, Intermarine v. CMC Marine, dealt with the request for the declaration of invalidity of an utility model by Intermarine. CMC counter argued that not only the model was valid but that could even be converted into a patent. The Court of Appeal of Turin (Italy) sided with Intermarine as explained by Luca Giove in EPLAW.

Anthony McCain of PatentlyO proposes some Bits and Bytes to nibble on as wells as The Copycat of The1709 Blog!

And lastly, the Journal of Intellectual Property Law and Practice proposes an interesting editorial on Control of Content in Social Media where the author Gill Grassie asks whether  the legislator could in this context learn something from the IP enforcement experience.

Image credits: Cecilia Sbrolli

Book Review: Common Innovation

An emerging theme in economics of innovation is the recognition that our standard definition of innovation is restrictive and generally ignores innovation occurring outside the boundaries of businesses. Author G.M. Peter Swann seeks to further these arguments, by delving into common innovation, which he defines as "innovation carried out by 'the common man and woman' for their own benefit, in his book "Common Innovation: How We Create the Wealth of Nations."

Innovation is part of the foundations on which IP policy is built, and improving our understanding of innovation should help IP achieve its incentive-to-innovate goals. This is also the theme of another book I recently reviewed, the Cambridge University Press book on innovation in the informal economy. Innovation has classically been framed as the Schumpeterian "creative destruction," in which innovation (creation) disrupts (destroys) the status quo. Swann puts common innovation in perspective,
If [business innovation] can be described as Schumpeter's 'perennial gale of creative destruction,' [common innovation] is usually much more like a 'gentle and benign breeze.' ... some business innovations have substantial 'destructive' power because the innovator accounts for the beneftis to his business, but does not account for the damage done to other interests. ... [in common innovation], such destructive power is unusual. The interests of the innovator and the user are close, and the innovator is unlikely to pursue projects that are against the interests of the user.
A case study chapter examines common innovation and the socio-economic environment. It discusses a oft-overlooked idea in economics - social innovation.  One of the case studies which peaked my interest was the provision of pro-bono legal services as a social innovation. Swann notes pro bono work is done for the public good and has risen in prominence since cuts to Legal Aid.  However, Swann describes a chicken game (brinkmanship) between government and the legal profession, where the government argues Legal Aid savings are achievable with pro bono support, and the profession argues it can't - and yet the cuts proceed, leading to a socially inefficient outcome.

An uncommon cat,
Il gatto Briciola by Peter Forster
The book is structured with the first part detailing the theoretical concepts of innovation, followed by Parts II and III which provide a series of case studies on both types of innovation, and concluding with Part IV which considers the implications and future of common innovation. I found the case study chapters interesting (they also give an excellent overview of interesting economic theories such as Parkinson's Law and Veblen consumption), but they at times seem tangential to the core theme of the book.

Having recently got into a number of debates in my personal life (a professional hazard) about the impact of innovation and technology on workers and consumers, this is the kind of book which would equip me with more things to shout (an excellent debating tactic.) The back cover states that the book, "will be of great interest to scholars and students seeking a more expansive and insightful understandings of the economics of innovation and wealth." That sounds about right, although I would add that some basic understanding of economics would aid the reader.

Swann, G. M. P. Common Innovation: How We Create the Wealth of Nations. 2014, published by Edward Elgar, ISBN: 978 1 84720 050 1, is available here for £72 hardback or £20 paperback. Rupture factor: Low, a comfortable 260 pages.

EPO takes an ‘about turn’ on the patentability of products obtained by essentially biological processes

The IPKat faces down Broccoli 
At the end of June the EPO published a notice (see here) stating from 1 July 2017 plants and animals exclusively obtained by means of an essentially biological process will no longer be patentable.  With thanks to Gemma Barrett (Bristows) who explains what this means:  
"Many readers will be aware that the EPO's Notice represents a U-turn for the EPO following the decisions of the Enlarged Board of Appeal (EBA) in 2015 in the Tomato II and Broccoli II cases (G2/12 and G2/13). Here the EBA conducted a lengthy and in-depth legal analysis leading to the conclusion that a narrow interpretation of Art 53(b) EPC was appropriate and as a result plants and animals derived from essentially biological processes were in principle patentable, even if they were inevitably derived from such processes.

The law seemed settled until the European Parliament asked the EU Commission to consider various issues concerning the Biotech Directive (Directive 98/44/EC). The exclusion to patentability in the Biotech Directive is framed much like that in Article 53(b) EPC i.e. it expressly excludes from patentability essentially biological processes for the production of plants and animals but does not mention products derived from such processes. The Commission reviewed the context and provisions of the Biotech Directive and published a notice on 3 November 2016 (Notice 2016/C 411/03) concluding that the European Union legislators’ intention when adopting the Biotech Directive was to exclude such products from patentability. 
In response to the Commission Notice in November last year the EPO stayed all proceedings in relevant examination and opposition cases ex officio. This remained the situation until the EPO notice published at the end of last month.
The Commission’s Notice states that it is intended only as guidance and, in any event, the EPO is not bound by the views of the Commission nor any decision of the Court of Justice of the European Union (CJEU) on interpretation of these provisions. So why the change in position by the EPO? The EPO notice states that the decision has been taken by the Administrative Council to safeguard uniformity in harmonised European patent law. It seems the EPO wanted to avoid future divergent decisions on this issue around Europe for example between EU member states and between these member states and the EPO. In addition, the Biotech Directive itself is relevant to the EPO when considering patentability. The EPC Implementing Regulations were amended to include its main provisions and it is used as a supplementary means of interpretation (see Rule 26(1) EPC). In these circumstances the possibility of legal disharmony seemed inevitable.

Following the EPO notice the Administrative Council has amended Rules 27 and 28 of the Implementing Regulations to the EPC and these changes came into force on 1 July and apply to European patent applications filed on or after this date, as well as European patent applications pending at that time. The key provision in Rule 28(2) now reads:
“(2) Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.”
This may at first sight appear to be the end of the saga but is it? The Commission Notice is clear that it is a guideline document only, merely to assist in the application of the Biotech Directive, and only the CJEU is competent to rule on the interpretation of EU law. Hence there could still be a reference to the CJEU in the future."

Copyright protection of minimalist furniture design

Cross Frame Chair (1952)
In a recent decision, the Swiss Federal Supreme Court had the opportunity to clarify the requirements for the "individual character" of (super) minimalist furniture design.

The Swiss artist and industrial designer Max Bill (1908-1994) designed among others in 1952 the "Kreuzzargenstuhl" (cross frame chair) and in 1955/1964 a bar stool (see pictures). These were produced for decades by the furniture manufacturer Horgenglarus.

After Max Bill's death in 1994, his copyrights in his works were passed on to the Bill Foundation, which entered into a license agreement with Horgenglarus. In 2001, the Bill Foundation terminated the license. Horgenglarus kept manufacturing and selling the cross frame chair and bar stool designed by Max Bill, arguing that they did not enjoy copyright protection under Swiss law because they did not have the necessary individual character to be considered "works" in the sense of copyright law.

Bar Stool (1955/1964)
The Bill Foundation sued for copyright infringement before the Commercial Court of St. Gallen and prevailed regarding the cross frame chair, but lost on the bar stool. The Commercial Court held that all elements of the bar stool were known at the time of its creation, that it did not create or significantly influence a style of furniture design (as the Supreme Court's case law seemed to require for copyright protection of furniture designs) and if in doubt, copyright protection for works of applied art should be denied.

On appeal by the Bill Foundation, the Federal Supreme Court reversed the decision regarding the bar stool. It restated that the degree of individuality (originality)  required for a work to have individual character depended on the degree of freedom the category of works permitted. If the degree of freedom was limited, even minor deviations from known designs could convey individual character. On the other hand, if the design was entirely determined by technical considerations, there was no room for individual character. For chairs and stools, the degree of freedom was quite large, certainly their form was not determined exclusively by technical considerations.

The lower court had erroneously applied a "mosaic" approach to the assessment of individual character. It was irrelevant that all the elements of Max Bill's stool - the round seat, the three legs, the angle of the legs - were known in the prior art (see picture). Relevant was the overall impression of the design. The individual elements had never been combined in the way Max Bill combined them. The work was unique.

The design was also not determined exclusively by technical considerations. While each element served a technical purpose, the same purpose could be served by other forms (e.g., a square instead of  a round seat).

Prior Art for the Bar Stool
The Supreme Court then "clarified" (overruled, really) its earlier statements that a furniture design needed to start or substantially influence a new style in order to enjoy copyright protection. This was not absolutely necessary as long as the design in question was more than a mere work of craftsmanship or industry and showed a degree of individual artistic design.

While the Supreme Court left open the question whether for works of applied art the bar for individual character should be set higher than for other works (because they could also be protected by registered designs), it appears pretty clear that the Supreme Court now applies the same (low) standard for individual character to works of applied art as to other works (see the BGH's "birthday train" decision).

While this decision concerns Swiss law, UK courts likely will soon have to grapple with the question when a furniture design is a "work of artistic craftsmanship" in the sense of the Copyright, Design and Patents Act 1988 after the repeal of section 52 CDPA.

Decision 4A_115/2017 of 12 July 2017.

Disclaimer: the firm I am working for represented the Bill Foundation in the proceedings against Horgenglarus.

Tuesday, 25 July 2017

Geographical Indications: News from the UK and New Zealand

If you're a foodie and an IP enthusiast, no doubt Geographical Indications (GIs) are a favourite topic of discussion. Recently, two GI related developments have caught this kat’s eye, in the UK and New Zealand.

A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that particular origin. The GI identifies a good as originating in the territory where a particular quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. The purpose of the GI is to inform consumers about a product’s geographical origin and a quality, characteristic or reputation of the product linked to its place of origin. [Protection is provided under the TRIPS Agreement] For example Greek Yoghurt (Kat post here) and the Cornish Pasty (Kat post here).

Kats keeping an eye on the Fish
In recent news in the UK, the country's oldest smoked salmon business H Forman and Sons has become the first London food producer of either food or drink to receive the hallowed European Protected Geographical Indication (PGI) status for our London Cure smoked salmon.

The GI status was granted after a four-year process and the award has been praised by Prime Minister Theresa May and the Mayor of London, Sadiq Khan. H Forman & Sons stated on their website that they welcomed the protection for their craft which they have been practicing for over 100 years.

Unavoidably, as is the case of anything regulated at EU level… someone whispers ‘what about Brexit?’ As Lance Forman, formerly a special adviser to Conservative MP Peter Lilley and now owner of H Forman & Sons said: “Nobody knows whether PGI status will be called into question when we leave the EU, it’s one of the things that’s up for discussion… I would imagine that if Britain is no longer part of PGI we will have our own scheme that mirrors it because there needs to be mutual respect.”

Evidently, being signatory to the TRIPS agreement, the UK will still continue to have GI protection but this will need to added to the ever growing list of new regulation required. Perhaps the UK might look over to New Zealand where such legislation has just been approved.

Just testing the geographical authenticity of this wine 
New Zealand has approved and published new regulations that establish the Geographical Indications Register for wines and spirits. The long awaited regulations set out the procedure for examining and registering a geographical indication under the Geographical Indications (Wine and Spirits) Registration Act 2006. The Act and regulations come into force on the 27th July 2017. The regulation is particularly relevant for the protection of the New Zealand wine brand, a reputation that was recognised by the Minister of Commerce and Consumer Affairs the Honourable Jacqui Dean.

After the 27th July 2017 it will be possible to apply to register a geographical indication in New Zealand for foreign and domestic GIs. The registration process, and the Register of Geographical Indications, will be administered by Intellectual Property Office of New Zealand.

It will be interesting to see how the legislation is applied in New Zealand and if/how the UK decide to legislate on GIs in the future.

Cats vs Fish Tanks here.
Photo credit: (fishtank) play4smee and (wine) Helena Jacoba

Monday, 24 July 2017

French Supreme Court : End of the trade mark dispute over 'Cheval Blanc'

'How long do you have to take legal actions against a deceptive mark?' was the last question asked to the French Supreme Court in a decade-long dispute between two wine-making companies, over the trade mark rights in the household name 'Cheval Blanc' (Cour Cass, Ch. com., 8 juin 2017, decision No 15-21.357 - here in French language). 'As long as the statutory limitation' will allow, the Court said. Yet, this answer does not quite clarify the crux of this claimant's matter...what should be the starting point of this limitation period...the day the mark was registered or the day the deceptiveness ended?

Estate of Château Cheval Blanc
The claimant in this dispute is the wine-making company trading as 'Château Cheval Blanc' based in St Emilion, a region of France well-known for its vintage. The company registered the work mark 'CHEVAL BLANC' for the class of goods 33, in 1933 and renewed its registration ever since. In 2008, Château Cheval Blanc assigned a competitor, Mr Chaussié and his company "Chaussié de Cheval Blanc",  in revocation of two of their trade marks and of their company's name.

The defendant has owned the word marks "Domaine du Cheval Blanc" (reading in English " Estate of Cheval Blanc") and "Chateau Relays Cheval Blanc", as well as the graphic mark featuring a horse head (see below) for the same class of goods (33) since their registrations in 1973 and 2003, respectively. The dispute had taken them to the Bordeaux Court of Appeal in 2012 which confirmed the dismissal of Château Cheval Blanc's claim by the judgement of first instance. Both decisions confirmed the defendant's right to use the place name "Cheval Blanc" in the context of his professional activities, including trade mark registrations and the name of his registered company. However, neither lower court responded to the claimant's argument on the deceptiveness of the mark, in their respective decisions. Château Cheval Blanc advanced that, even marks relying place names may be refused or revoked if deceptive. The claimant lodged their first appeal before the Court of Cassation on this ground, which was received by the highest civil court on  1 January 2014, the French Supreme Court. The Court of Cassation quashed the Court of Appeal decision for not addressing the question of deceptiveness, and referred the case back to them to perform the relevant assessments to this end.

In 2015, a different formation of the Bordeaux Court of Appeal heard the case upon referral from the Supreme Court. The appeal judges rejected for a second time the claimant's revocation for the latter had failed to comply with the (then) 30-year statutory limitation placed on legal actions. The Court of Appeal held that the claimant should have applied for the revocation of the word mark no later than 2003, counting thirty years from the registration of Chaussié's mark.
Chaussié's graphic mark registered in 2003

Following the Bordeaux decision, Château Cheval Blanc filed for a second appeal before the French Supreme Court arguing that the appellate Court had misinterpreted the provisions of the French Intellectual Property Code by concluding their right to legal actions against a deceptive mark had lapsed. The claimant argued that Article L 711-3 provided that the deceptiveness of a mark was unaffected by neither time nor use, and is a ground for revocation at any point within the period of the mark legally registered. Château Cheval Blanc thus submitted that their action against Chaussié's deceptive mark could not have lapsed, since deceptiveness is itself declared unaffected by time by Article L 711-3 which bases their action. The claimant also dispute the starting point for the limitation period picked by the Court of Appeal. In their view, the starting point of the time limitation of their action in revocation for deceptiveness could not have been the date of the registration of the mark because the 'vice' (of deceptiveness) of the disputed mark was still ongoing at the time proceedings were introduced. This, they contended, should have prevented any time from running, for the purposes of statutory limitation. Finally, the claimant appealed the decision of the Bordeaux Court to deny them damages for the prejudice they suffered from Chaussié's use of the phrase 'Cheval Blanc', they regarded to dilute the prestige and reputation of their business name and mark.

A Kat a bit touchy about her wine...
...who would not be?
The French Supreme Court rejected all claims for a second time. The highest court held that the fact that deceptiveness was unaffected by neither time nor use should not be interpreted as lifting statutory limitations on legal proceedings relying on Article L 711-3 as a primary cause of action. This response of the Supreme Court implies that, indeed, time does not affect claims of revocation for deceptiveness when the latter are introduced as a defence against infringement, but not otherwise. The question of the starting point of time limitations for the revocation of alleged deceptive marks was left unaddressed by the Supreme Court as it was a new argument introduced in appeal, contrary to procedural rules. The Court stressed that such grounds should be been raised in previous instances and could not be reviewed upon 'cassation' at this point, as it required an assessment of both facts and law for which the Court of Cassation has no authority, and the defendant should be given the opportunity to put forward a response to such claims. Finally, the Supreme Court confirmed the Court of Appeal's decision with regard to damages. The decision stresses that the claimant's prejudice in their reputation and name was unsupported by appropriate evidence.

One may question whether this decision will indeed be the finale of the dispute, as the question of the starting point of the statutory limitation of actions in revocation of marks of deceptive marks was left unanswered by the French Supreme Court. Should we expect yet another action from Château Cheval Blanc to clarify this point in the future?

The right of communication to the public ... in a chart

Right of communication
to the public?!
The right of communication to the public under Article 3(1) of the InfoSoc Directive has been subject to several (nearly 20) references for a preliminary ruling to the Court of Justice of the European Union (CJEU). Over time, this exclusive right has become increasingly complex, and yet absolutely topical to online exploitation of works and enforcement of relevant copyrights.

Article 3(1) of the InfoSoc Directive does not define the concept of ‘communication to the public’. This provision, in fact, only states that EU “Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.” 

Lacking a definition of the notion of ‘communication to the public’, the CJEU has sought to determine the meaning and scope of this concept in light of the objectives pursued by the InfoSoc Directive, notably to ensure a high level of protection of intellectual property (Recital 24) and for authors. 

In its rich body of case law on Article 3(1) of the InfoSoc Directive, the CJEU has consistently stated that the essential requirements of Article 3(1) are an ‘act of communication’, directed to a ‘public’. In addition, the CJEU has also highlighted the importance of considering additional criteria which are not autonomous and are interdependent, and may – in different situations – be present to widely varying degrees. Such criteria must be applied both individually and in their interaction with one another.

So, what questions should you ask yourself when addressing communication to the public issues?

As part of my student materials [see here] and inspired by mandatory summer reading, ie magazines and their relevant quizzes, I have created a little - simplified - chart on the right of communication to the public post-Ziggo [C-610/15, also known as The Pirate Bay case]

If you are interested in a more extensive discussion of the requirements under Article 3(1) of the InfoSoc Directive, see this recent paper of mine here [presented here].

The chart can be also downloaded in PDF here. An alternative graphic representation of CJEU case law on Article 3(1) is available here.

Any feedback and comments are very welcome!

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