Kat friend Simon Klopschinski, of rospatt osten pross, has kept IPKat readers up-to-date on major developments in arbitration law as they apply to IP. Below he discusses an important recent result in this regard, Bridgestone v. Panama.
The Bridgestone v. Panama case differs from previous IP-related investment arbitrations, e.g. Philip Morris v. Uruguay, in that the tribunal regarded trademarks and licenses as sufficient to constitute an “investment” under Article 25 ICSID Convention, despite the absence of any other form of investment commonly associated with investment, e.g. shares or real property. Thereby, the tribunal has opened an additional possibility to litigate IP disputes in an ISDS context.
The facts of the Bridgestone v. Panama arbitration read like an unjustified threats case gone wild. Different entities of the Japanese Bridgestone group, which manufactures and markets tires, owned the trademarks BRIDGESTONE and FIRESTONE or were licensees of these trademarks, respectively. It was the policy of the Bridgestone group to oppose any third party application to register a trademark in relation to tires that bears the suffix “-stone”. After the Chinese Luque Group had unsuccessfully tried in 2002 to register the RIVERSTONE trademark in the US, on November 3, 2004, Bridgestone’s US lawyers wrote to Luque, warning them that Luque would be “acting at its own peril” if it used the RIVERSTONE trademark in other countries. In 2005, a Luque subsidiary filed for registration of the RIVERSTONE trademark in Panama. In response, the two Bridgestone entities BSJ and BSLS, in their respective capacities as the owners of the BRIDGESTONE and FIRESTONE trademarks in Panama opposed the Luque application. The opposition was denied in first instance proceedings. BSJ and BSLS filed an appeal but subsequently withdrew it.
Luque then commenced proceedings in the Panamanian court against BSJ and BSLS, alleging that its filing of the opposition proceedings had been wrongful and had caused Luque to cease sales of RIVERSTONE tires out of a fear that their inventory would be seized if they were to lose in court. Luque, inter alia, argued that these fears were justified taking into account the letter of Bridgestone’s US lawyers of November 3, 2004 (see above). In 2014, the Panamanian Supreme Court decided in favour of Luque and ordered in its judgment of May 28, 2014 BSJ and BSLS to pay US$ 5 million (plus attorney fees) to Luque.
In response, the two Bridgestone entities BSLS and BSAM filed a request for arbitration with the ICSID against Panama. BSLS and BSAM claimed for compensation in the amount of US$ 16 million under the TPA, arguing that the judgment of the Panamanian Supreme Court had diminished the value of their investment, i.e. trademarks and licenses, by weakening the protection given to them in Panama and elsewhere in Latin America. As far as BSLS is concerned, the investment relied on is the FIRESTONE trademark registered in its name in Panama. The investments in relation to which BSAM seeks relief are (i) the license that it had been granted by BSLS to use the FIRESTONE trademark registered in Panama; and (ii) the license that its wholly owned subsidiary, BATO, had been granted by BSJ to use the BRIDGESTONE trademark registered in Panama. In its Decision on Expedited Objections of December 13, 2017, as discussed below, the arbitral tribunal dismissed a number of preliminary objections that Panama had raised.
One of Panama’s objections was that BSAM did not have a qualifying investment. Under the applicable rules of the TPA, an “investment” must be an asset that is capable of being owned and controlled. In addition, the asset claimed to be an investment must have the “characteristics” of an investment, i.e. a commitment of capital or other resources, expectation of gain or profit, and assumption of risk. Similar criteria apply to an “investment” under Article 25 ICSID Convention. The tribunal set up the following legal standards under which trademarks and licenses can qualify as an investment:
“In summary, a registered trademark will constitute a qualifying investment provided that it is exploited by its owner by activities that, together with the trademark itself, have the normal characteristics of an investment” (para. 177)."/> “Under the footnote to Article 10.29 (g) of the TPA a license will not have the characteristics of an investment unless it creates rights protected under domestic law, that is under the law of the host State. No similar provision applies to (f) “intellectual property rights”, but the Tribunal is in no doubt that they must be rights protected under the law of Panama, otherwise they can neither properly be described as “intellectual property rights”, nor as “assets.”
The respective Claimant must own or control, directly or indirectly, the rights granted by each License.
The License must be exploited by the licensee in the same way as a trademark must be exploited if it is to qualify as an investment, as above described” (paras. 178 to 180).
The tribunal held that a trademark is exploited by the manufacture, promotion and sale of goods that bear the mark. Such exploitation confers upon the trademark, by virtue of the core trademark functions, the characteristics of an investment. Thus, resources are dedicated, both to the production of the articles sold bearing the trademark and to the promotion and support of those sales. Another way to exploit a trademark is that the owner may license the use of the trademark under an agreement that grants to the licensee the right to exploit the trademark for its own benefit.
Against this background, the arbitral tribunal found that BSAM’s rights as licensee of the BRIDGESTONE and FIRESTONE trademarks were qualifying investments:
“Where the owner of a trademark licenses its use to a licensee, it is necessary to distinguish carefully between the interest of the owner and the interest of the licensee, each of which may be capable of constituting an investment. If the owner does no more than grant a license of the trademark, in consideration of the payment of royalties by the licensee, the value of the trademark to the owner will reflect the amount of royalties received, while the value of the license to the licensee will reflect the fruits of the exploitation of the trademark, out of which the royalties are paid.
Thus, in the present case, the claim of BSLS, as the owner of the FIRESTONE trademark, must be distinguished from the claim of BSAM, as licensee of that trademark.
So far as the BRIDGESTONE trademark is concerned, BSJ, as owner, has no claim because, being a Japanese company, it falls outside the protection of the TPA. BSAM’s claim as indirect owner and controller of the license enjoyed by BATO, mirrors its claim as licensee of the FIRESTONE trademark” (para. 219 to 221).
Another objection raised by Panama was that there was no investment “arising directly out” of an investment, as required by Article 25 ICSID Convention. The tribunal dismissed the objection insofar as it relates to Bridgestone’s disputed claim to have suffered damage within Panama, as follows:
“Any owner of a trademark, or a license to use a trademark, in Panama will be concerned, as a result of the precedent set by the Supreme Court, that steps reasonably taken to enforce it may result in a heavy liability in damages. The chilling effect of this makes the protection afforded by or in respect of a trademark in Panama more expensive to enforce, and the trademark less attractive and less valuable in consequence. This in its turn is likely to encourage the registration and use in Panama of trademarks that are confusingly similar to, inter alia, the FIRESTONE and BRIDGESTONE trademarks, thereby further diminishing the goodwill attaching to those brands” (para. 245).
The results of the arbitral proceedings on their merits remain to be seen. In any event, the arbitral tribunal’s decision is a further step towards IP rights entering the ISDS theatre. For further reading have a look here, here, here, and here.
Picture on upper left by Jack. E Boucher is in the public domain. Picture on lower right by Alexrk and is licensed under GNU Free Documentation license.
IPKat is here with your weekly round up of the goings-on around the IP blogosphere. This week's highlights include the Dutch equivalent of Actavis v ICOS (Tadalafil), a US ruling on patent eligible subject matter and medical diagnostic methods and contradiction between the CJEU and the Spanish Supreme Court on SPC regulations. Patents Actavis v ICOS - Netherlands Last year, IPKat reported on the UK Court of Appeal decision Actavis v ICOS EWCA Civ 1671, in which the concept of "obvious to try" for a particular dosage regime was assessed in the context of clinical trial data. EPLAW reports on the equivalent Dutch case. In a similar decision to the UK courts, the Dutch District Court ruled that the skilled person, when starting from the prior art, would arrive at the claimed dosage range in various non-inventive steps constituting to "no more than walking down a one-way-street". The Dutch EP patent was thus revoked.
US patent eligible subject matter
Patentlyo analyses a recent split Federal Circuit ruling concerning patent eligible subject matter, particularly applied to medical diagnostic methods, and Alice/Mayo step 2, i.e. whether the claims include an inventive concept beyond a natural law “sufficient to transform the claims into a patent-eligible application” (MPEP § 2106). The Federal circuit ruled that a claim directed to a method of detecting human body temperature was valid and did not relate to patent ineligible subject matter. The court's reasoning is worth a read for US applicants encountering Alice/Mayo objections who are looking for potential ways-forward.
Cheshire knows all about Alice
Indian patent working requirement
TrustinIP explores the historical background and modern day relevance of the Statement of Patent Working requirement in India. Section 146(2) of the Indian Patent Act requires every Indian patentee and licensee (exclusive or otherwise) to provide an annual statement of the extent to which the patented invention has been worked on a commercial scale in India. The deadline for providing the statement is the 31st March of each year. As described on TrustInIP, non-compliance with the requirement can result in a fine of 1 million rupees (~ £11,000), whilst knowingly providing false information can be punished with imprisonment for up to 1 year (Indian Patent Act, Section 122). TrustinIP considers the relevance of this requirement to modern patent practice and technologies, and comments on recent indications that the provision may soon be targeted for reform.
National genetic heritage and traditional knowledge in Brazil
On a previous Around the IP Blogs, IPKat highlighted IPTangos report on the approach of Peru to biopiracy relating to unauthorized and/or non-compensated access and/or use of biological resources or traditional knowledge (TK) of indigenous people. This week, IPTango reports that the Brazilian Instituto Nacional da Propriedade Industrial (INPI) has given notice that they will now (from 27 February 2018) be issuing formal Official Actions asking all applicants for Brazilian patent applications relating to national genetic heritage and/or TK, to provide proof in the form of a positive declaration of authorization to access the relevant resources. If no such declaration is provided within 60 days, the INPI will assume there has been no access to such resources, and will continue with examination. IPTango asks, if the INPI continues regardless of whether a declaration is filed, what will be the practical purpose of the office action?
Event report - Union IP, Indirect Infringement
Tufty the cat reports on the UNION-IP Round Table Event in Germany, which focused on the approach of different European jurisdictions to indirect infringement.
The SPC blog reports on the development in Sweden regarding the correction of the duration of SPCs, in the context of the CJEU ruling C-492/16, that the term of an SPC is set by the rules of the Regulation 469/2009 and cannot be set by a national patent office. In second instance proceedings, the Spanish Patent and Market Court of Appeal (PMCA) found that the Spanish patent office was competent to decide on the duration of an SPC. The Spanish Supreme Court recently decided not to hear an appeal of the relevant cases, such that the second instance decision of the PMCA became final, in apparent contradiction to the position of the CJEU.
Spanish Supreme Court
The Kluwer Copyright blog reports on the recent ruling by the Spanish court in proceedings brought against a number of internet providers. The proceedings were brought by various audiovisual producers belonging to the Motion Picture Association of America (MPAA) and were aimed at forcing the providers to block internet access to certain websites providing content infringing the claimants' copyright. As pointed out by Kluwer Copyright, one interesting aspect of this judgement is that it was directed against the internet providers as opposed to the websites themselves.
Trade marks Marques Class 46 provides a guest post by Ricardo Alberto Antequera on the recent changes in Venezuela of the foreign currency system used to calculate and pay official fees at public authorities, including IP office fees.
Sources of case law?
Finally, IP Draughts muses on case law trawling and argues that legal firms providing case law reports need to get better at explaining the context and importance of a case. Of course, for important IP case law, there is IPKat!
A few days ago this blog reportedthat Irish Government has recently proposed the introduction into Irish law (new section 53A of the Copyright Act) of a copyright exception for text and data mining (TDM).
From an EU standpoint, the most interesting aspects of the Irish proposal are probably the following:
Secondly, the different scope of the Irish exception [which would be derived from Article 5(3)(a) of the InfoSoc Directive] and the EU exception, in the sense that the former – while only allowing non-commercial TDM – would not limit the catalogue of beneficiaries. The EU exception – at least in the version proposed by the EU Commission - would instead be available to ‘research organisations’.
Following the publication of the IPKat post, I have engaged in some discussions on whether and to what extent national TDM exceptions – having a different scope from the EU one – would survive after the introduction of an EU exception. Another question would be whether EU Member States could continue to rely on Article 5(3)(a) of the InfoSoc Directive to introduce their own TDM exceptions following the introduction of an EU exception.
These questions do not have an easy answer, especially if one looks at the text of the directive as originally proposed by the EU Commission.
Dreaming of freedom ...
The Commission’s version
Arguably, the text of the original Commission’s proposal does not leave room for national TDM exceptions.
If in fact one looks at Recital 5, the goal seems to be one of maximum harmonization, in the sense that other directives – including the InfoSoc Directive and its TDM exception under the umbrella of the research exception – would only apply to “uses not covered by the exceptions or the limitation provided for in this Directive [ie the Directive on copyright in the Digital Single Market]”.
This might mean that, as the new directive covers TDM, there will be no room for national transpositions of Article 5(3)(a) of the InfoSoc Directive to allow TDM that bypass the Directive on copyright in the Digital Single Market.
This conclusion appears reinforced if one also considers Recital 14, which highlights the shortcomings of TDM exceptions rooted within the InfoSoc Directive alone.
The Council’s latest version
However, things may be different if the version of the EU TDM exception eventually adopted was the one most recently proposedby the Council.
In fact, in this version (which would appear the last instance in which the Council has touched upon TDM), what is interesting is the wording of Recital 5 and Article 17.
First, Recital 5 states that “[t]he exceptions and limitations existing in Union law should continue to apply, including to text and data mining, education and preservation activities, as long as they do not limit the scope of the mandatory exceptions laid down in this Directive and on condition that their application does not adversely affect nor circumvent the mandatory rules set out in this Directive”.
This would suggest that national TDM exceptions could survive after the adoption of this new directive, as long as certain conditions are satisfied. In a way, this solution appears to have points of resemblance with the grandfather clause in Article 5(3)(o) of the InfoSoc Directive.
... and freedom
Article 17(2)(b) requires that the InfoSoc Directive is amended, to the effect that exceptions adopted pursuant to Article 5(3)(a) will be without prejudice to the exceptions and the limitation provided for in the new directive … including TDM.
This might suggest that, even after the introduction of an EU TDM exception, Member States could retain the freedom to introduce their own national (non-commercial) TDM exceptions, without any particular limitations as regards the types of beneficiaries.
While an approach of the kind suggested by the Council would have the merit of retaining some flexibility and national freedom as regards possible approaches to and regulation of TDM activities, it could also impair the goals of harmonization, including underlying internal market-building goals. In any case, an EU action of this kind would achieve minimum harmonization in the area of TDM (especially if the resulting EU exception was only aimed at research organisations), while substantial disparities might remain in place (or subsequently arise) at the EU level.
The Bulgarian presidency of the Council is expected to continue its work and find compromise solutions that meet the approval of Member States.
In parallel, the European Parliament is also working on the text of the directive, and the JURI Committee Rapporteur – MEP Voss – is expected to issue his Report sometime soon, the vote in that Committee being now scheduled for late April.
Social media offer new opportunities for trademark owners to contact and engage consumers. At the same time, alleged unauthorised uses of trademark by third parties in social media threads have become more and more frequent. In an attempt to control and limit the damage, rightsholders apply for injunctive relief, presenting the courts with the difficult task of balancing between the protection of a registered trademark and the irreparable damage that might result from erasing social media threads in connection with the alleged infringer. The case at hand, Frank Industries v. Nike Retail  EWCA Civ 497 , in addressing the alleged unauthorised use of the registered trademark LNDR (UK and EU mark) owned by Frank Industries (FI), by Nike UK, provides an excellent example of this tension.
Both companies design and sell sportswear. Nike launched an advertising campaign to promote its brand to Londoners, under the slogan “Nothing beats a Londoner”. During the campaign, Nike used the marks LDNR and LNDR as forms of abbreviation for the slogan. The campaign was launched in the beginning of January 2018, and already on 26 January 2018, FI's solicitors wrote to Nike, complaining that the sign was infringing the registered mark. Nike carried on using the sign, and the following week it proceeded to launching a video using the signs on YouTube.
FI began proceedings against Nike, alleging both trade mark infringement and passing off seeking also both an injunction restraining Nike from infringing the marks and from passing off and an order for delivery up or destruction on oath of infringing material.
Preliminary injunctions ruling
On 22 February 2018, FI applied for an interim injunction, which was granted on 2 March 2018 by the High Court of Justice ( EWHC 424 (IPEC). Paragraph 1 of the order was a restraining order while paragraph 2 was a mandatory order requiring Nike, by 4 p.m. on 16 March 2018, to take all reasonable steps to delete the signs LDNR, LNDR, LDNER and LNDER from social media accounts within its reasonable control, including Twitter, Facebook, Instagram and YouTube. The scope of the interim injunction is for a period of four months (taking into consideration that the trial date is set for the 12th of July 2018). The ruling of the High Court was appealed and the Court of Appeal ruling came on the 13March 2018.
Lord Justice Lewison considered the steps followed by the High Court in ruling on the preliminary injunction (see paragraph 10 of the High Court judgement):
"Following the sequence set out by Lord Hoffmann, I must consider the following matters in deciding whether to grant an interim injunction. One, whether the damages will be an adequate remedy for the claimant; if so, no injunction should be granted. This must be on the assumption that the defendant is good for the damages: See American Cyanamid at page 408. Two, whether there is a serious question to be tried; if not, no injunction should be granted. Three, if the answers to one and two are no and yes, respectively, whether the cross‑undertaking in damages would provide the defendant with an adequate remedy if an injunction were granted; if yes, the injunction should be granted. Four, if there is a risk of irreparable harm both ways, the court must go on to assess the balance of irreparable harm in order to determine whether granting or withholding the injunction is more likely to cause the greater irremediable prejudice overall. Five, among the non‑exhaustive list of matters which the court may take into account are (a) the nature of the prejudice to the claimant if no injunction is granted and the nature of the prejudice to the defendant if an injunction is granted; (b) the likelihood of the prejudice in each case occurring; (c) the extent to which the prejudice may be compensated by an order of damages, or by the cross‑undertaking; (d) the likelihood of either party being able to satisfy such an award; and (e) the court's opinion of the relative strength of the parties' cases."
According to Lord Justice Lewison, the High Court application of the above-mentioned criteria was correct. There is a serious danger that the public would perceive FI’s own goods as being in some way part of Nike’s business. The issue to be tried was undoubtedly serious, and thus the remaining core question was whether Nike would suffer irreparable harm by the grant of the injunction. While the reasoning behind the prohibitory injunction is, according to the Court of Appeal, solid, the High Court sparse in its words when it comes to the mandatory injunctions. It simply provided that Nike is not only supposed to refrain from future activities but also to take affirmative steps to remove Instragram posts, tweets and a Youtube video.
According to the Court of Appeal, mandatory actions in general are more likely to cause irremediable prejudice than where a defendant is merely prevented from taking or continuing with some course of action (see Films Rover International Limited v Cannon Film Sales Limited  1 WLR 670. The High Court judge dealt with the mandatory part of the order in one short passage, at paragraph  of the judgment. He said:
"The effect of an injunction would be to require Nike to remove its video in its present form from YouTube and other media and to remove LDNR references from its website. So far as the YouTube video is concerned, LDNR is only used, or only significantly used, right at the end of the video. Mr. Campbell told me that no objection would be taken to the remainder of the video being used. Therefore all that Nike would have to do would be to remove that small last section; otherwise, the video can remain on YouTube and other social media. So far as Nike's website is concerned, it would not, it seems to me, be very difficult to remove the sign."
The ruling of the Court of Appeal
The Court of Appeal had to consider the delicate balance between the interest in providing adequate and efficient injunctions until trial, and the importance of not causing irreparable damage to the social media presence of the alleged infringer. The Court of Appeal concluded that the High Court ruling disregarded the fact that amending a YouTube video entails its removal and reposting (with a different URL). The effect would be that Nike would lose all posted comments as well as all video shares and likes. Similarly, deleting Instagram posts would lead to the removal of all related comments and posts.
Twitter posts particularly concerned the Court of Appeal. Deleting existing posts was considered by the Court of Appeal to be of an irreversible and far-reaching nature because it would deprive Nike of the benefit of continuing conversations between young Londoners.
LNDR an abbreviation for London, free for all or trademark use?
Twitter posts particularly concerned the Court of Appeal. Deleting existing posts was considered by the Court of Appeal to be of an irreversible and far-reaching nature because it would deprive Nike of the benefit of continuing conversations between young Londoners. The Court of Appeal reversed thus the High Court ruling regarding Twitter posts. Furthermore, the Court of Appeal ruled that with regards to Instagram, Nike would be able to archive them rather than simply deleting them, while the YouTube video need not be removed provided the offending signs are blurred.
This case reminds us of the importance of social media, the role they play and the power that they have in the communication between trademark holders and the public. They are much more than a mere communication media, being rather the platform upon which public discussion takes place and, as such, worth protecting (such as the tweets by young Londoners in connection with Nike). The Court of Appeal, contrary to the High Court, seems to take into consideration the potential value of social media (by providing for the archiving posts in the case of Instagram and blurring offending signs in YouTube videos) as well as undesirable technical consequences (such as deleting a tweet deletes all subsequent comments and discussions on the tweet in question) in order to find a balance between the interests of the rightsholder and the potential damages inflicted on the alleged infringer.
The pre-examination European Qualifying Examination ("pre-EQE") was introduced in 2012 as an entrance exam to the main EQE for European Patent Attorneys. Only after passing the pre-EQE is a European patent attorney trainee allowed to enroll for the Main Exam.
Controversy over the pre-EQE is not new. In previous years, candidates have successfully appealed to the disciplinary board of appeal (DBA) against their result on the grounds that the answers to some of the questions were ambiguous (D3/14).
This Kat has been alerted to the fact that, this year, the questions for the pre-EQE were particularly ambiguous, setting the stage for the greatest pre-EQE controversy so far.
The pre-EQE The pre-EQE is a multiple choice exam, with 20 questions, each question having 4 statements for which candidates must indicate true or false. A complicated marking scheme dictates that for each question: 4/4 = 5 marks, 3/4 = 3 marks, 2/5 = 1 mark, and 1/5 = 0 marks. The complicated mark scheme highly rewards getting of all the statements within a question right, or equivalently, heavily penalises one mistake in a question. The pass mark is 70/100.
The paper is divided into two sections, legal questions and claim analysis. The claim analysis section deals with issues of clarity, added matter, novelty and inventiveness with regards to a series of claim sets, amendments and prior art documents.
It may seem odd to those used to EP patent application prosecution, that claim analysis may be reduced to mere true or false statements. Deciding on the closest prior art and inventiveness without the opportunity to argue your point can feel, at times, unfair. At the very least, it is hoped that the issues presented in the exam should be fairly clear-cut and unambiguous.
To complicate matters, the pre-EQE may be taken in English (EN), French (FR: "Examen préliminaire") or German (DE: "Vorprüfung"), for which there are corresponding versions of the paper. It is intended that the answers to the EN, FR and DE papers are identical.
Every year, DeltaPatents provides their model solution to the pre-EQE (EN version) before release of the official mark scheme. In recent years, the German Plattform für den Gewerblichen Rechtsschutz (GG-IP) has also been providing model solutions (DE version). It has become customary for candidates to check their solutions with these model answers before the release of the official mark scheme and results. In 2017, the DeltaPatents solution was identical to the official solution. Controversy
Given the subject-matter and format of the exam, it is perhaps not surprising that the pre-EQE has already been beset by controversy. In 2015, following successful appeal by a candidate to the disciplinary board of appeal (DBA), the EPO published an Addendum to the 2015 pre-EQE, in which it was decided to a award marks for either True or False for 2 statements in Question 15 and 17 respectively. After some initial uncertainty, the marks of candidates who did not file an appeal, but who would have passed in light of the changes, were upgraded (IPKat here and here).
The 2018 pre-EQE (EN, FR and DE) took place at the end of last month. This Kat has been alerted by colleagues to a worrying disparity between the solutions provided by GG-IP and DeltaPatents this year. Particularly, the GG-IP and DeltaPatent model answers differ on 5 points, corresponding to an alarming 10 marks (out of 100), (for comparison, last year's GG-IP solution differed from the DeltaPatents solution on 2 statements, corresponding to 4 marks out of 100). The complicated mark scheme of the pre-EQE causes ambiguity in a few statements to have a disproportionately large impact on a candidate's marks. The official solution has not yet been released.
The disagreement was in regard to the answers to questions 11.2, 12.4, 14.3, 16.1 and 18.1.
Pre-EQE 2018: Water filter lid
All of these questions are also highlighted as problematic in the DeltaPatent pre-EQE blog, and from a quick analysis of the paper, this Kat agrees that the answers to these questions are not clear cut (at least in the EN version). Q12.4, for example, relates to Article 84 EPC (clarity) and asks whether a feature of a claim simply claims a solution to a problem and not the technical features that provide this solution:
"...a counter configured to automatically increment in response to water being added to the jug"
DeltaPatents thinks no, Article 84 EPC is not contravened, whilst GG-IP thinks that it is. This Kat notes that somebody involved in the prosecution of European patent applications, might expect the EPO to reject such a claim, but that the Examiner may be persuaded by argument.
Q16.1 relates to claims directed to a plurality of interrelated products. GG-IP concluded that 2 independent claims (a 1st claim directed to a filter lid for a water jug and a further claim directed to a jug with a filter lid), are interrelated products, whilst DeltaPatent believes that they are not.
Worryingly, still further issues with the claims have been raised in the comments on the DeltaPatent blog (that do not even correspond to the differences between Delta and GG-IP answers). A particularly problematic question, according to DeltaPatents itself, is Q 12.2 which concerns the correct two-part form for a claim in view of a stipulated prior art document.
The DeltaPatent and GG-IP bloggers are experienced European Patent Attorneys and tutors. The disparity between their solutions clearly demonstrates that the claim analysis section of this year's pre-EQE is far from unambiguous.
Kat confused by claim analysis
Whilst the solutions to the EN, FR and DE versions of the paper should be identical, translation issues can lead to different interpretations. Indeed, according to D 1/94 a translation error may be considered to contravene Article 11(3) of the Regulation on the European qualifying examination for professional representatives (REE) "since this provision assumes that the translation from the language selected by the candidate into one of the official languages of the EPO is totally correct". However, such a magnitude of issues with this year's paper suggests this is not just a translation problem.
This Kat has been unable to find a model answer for the FR version of the paper, but feels this would be a useful comparison.
As a gateway to the main EQE, passing the pre-EQE is of considerable importance to a trainee European patent attorney. A fail means a candidate must wait about another 2 years before they can take the Main Exam. The degree of ambiguity in this year's questions will thus be causing significant anxiety.
The official pre-EQE marks scheme and results will be published in the coming months. Stay tuned to IPKat for further news.
The piece of (street) artwork at stake in the '5 Pointz' case
The recent decision in the 5 Pointz case [here] has brought back to centre stage one of the quirks of US copyright law: the right to object to any intentional or grossly negligent destruction of works of ‘recognized stature’ (US Code, Title 17, §106). As explained by Katfriend Mira Sundara Rajan in a recent commentary of the case [here], this right was introduced by the 1990 Visual Artists Rights Act (VARA) under the umbrella doctrine of moral rights (although this right goes beyond what the moral right doctrine traditionally entails).
From one vantage, the decision is to be welcome, inasmuch as it protects a notable piece of street art [per the court and mainstream media, here and here], thereby enabling the preservation of more contemporary forms of our cultural heritage. However, this Kat has some reservations regarding the ability of the IP law framework to embrace such a role. In particular, who determines what is ‘recognized stature’ and under criteria is it determined? The answer: mainly as the court decides (read: judges), for the simple reason that Congress offered little in the way of definition or guidance on this point [seeCheffins at 600]. This places US judges in the difficult position of acting as cultural gatekeepers, given that they have the final say as to what is worthy of such protection.
Judges themselves have noted the challenge in being asked to rule on the protection of works of recognized stature [see Martin v City of Indiana(1999) ; Cheffins v Stewart(2016)]. This is especially so in that they are called upon to render judgment on an issue in which they are not expected to have any necessary expertise, namely, when is a work of "recognized stature”.
Some may argue that a concern about judges serving as cultural gatekeepers is allayed by the fact that the context is unique to US law and it is an unusual form of moral right. Moreover, since few decisions are actually rendered under this provision, this risk of cultural gatekeeping is well-contained. However, in this Kat’s view, this it is not the only occasion in which judges are in the position of playing the part of cultural gatekeepers. After all, copyright law applies selectively to prescribed categories, and only these categories, of original creative works in a fixed form – conditions which are themselves culturally-bounded [hereand here].
Furthermore, once copyright subsists in a work, it provides a platform to control its dissemination, thereby fundamentally impacting on the nature of our cultural landscape. Right holders, artists and their heirs can even pursue claims bordering on strategies of ‘heritage preservation’ or ‘heritage safeguarding’, either through the moral right doctrine of integrity, or the economic right to control some most derivative works, and of course, the US right to object to the destruction of works of recognized stature. Cultural gatekeeping thus can be seen as underpinning almost every aspect of copyright long before the right to object to the destruction of works of ‘recognized stature’ was introduced in the US.
Thus, the larger question is how to make sure no (or limited) cultural gatekeeping takes place there? First, we do so by reiterating that copyright law does not deal with cultural quality or aesthetic considerations, something both commentators and judges in various jurisdictions (including in the US) have often emphasised [see Gracenat 304; Schott Musik (1997) 145 ALR 483, 486, Hensher v Restawile (1974) 2 All ER 420, 423]. In many ways, eschewing any consideration of cultural or aesthetic quality is one of the main safeguards within copyright law to prevent cultural gatekeeping. Indeed, judges have been vigilant not to behave as art critics [see Bleinsteinat 251]. When they have, they have been corrected thanks to the appeal mechanism, i.e. corrective mechanisms built into our legal systems.
A notable example was the Victor Hugo decision (2003) in which the Court of Appeal of Paris had extended the moral right of integrity enjoyed by Hugo’s heirs so as to ban the publication of sequels of Les Miserables (focusing on the main character Jean Valjean).
The Paris Court of Appeal stated:
"… [O]utlawing sequels of Les Miserables does not, as the parties contend, breach the principle of free creation since, in the facts presented before us, this work, being a pillar of world literature. [Les Miserables] […] is not a mere novel for it presents a philosophical and political approach”
“Considering that, it follows that no sequel shall ever be given to a work such as Les Miserables, forever complete, and that the company Plon has, by editing and publishing Cosette ou Le Temps Des Illusions and Marius ou le Fugitif, by presenting the works as sequels to Les Miserables, violated Victor Hugo’s moral right as vested in the latter literary work” [Kats’ translation]
This decision was subsequently overturned by the Court of Cassation [hereand here], the highest court in France for matters of civil law, which stressed that the cultural significance of the work could not be taken into consideration in construing the law or in balancing the fundamental rights at stake.
But are these safeguards enough? The appeal process suffers from a major drawback: it depends upon the claimants’ financial ability to pursue appeal proceedings. Even more, what about more subtle cultural references made in connection with determining the subsistence or infringement of copyright, another slippery slope of cultural gatekeeping?
Thus, in Hadley v Kemp (1999), Park J draw a (bold) comparison between the creative process followed by members of the Spandau Ballet and that of Beethoven to, it seems, reach his conclusion on the difficult distinction between authorship, joint-authorship and performership in copyright law ( EMLR 589, 645-6).
The Spandau Ballet
The decision reads:
‘After all, when Mr Kemp [Spandau Ballet’s lead composer and musician] devised the song he devised it for performance, not by himself as a solo artist, but by Mr Hadley [Spandau Ballet’s lead singer] and the whole band. A composer can ‘hear’ the sound of his composition in his mind before he ever hears it played. Beethoven could hear his music in this sense even when he was deaf. When Mr Kemp was devising his songs the sound which he had in his musical consciousness must surely have been the sound they would have when performed by Spandau Ballet, not the sound they would have when sung by Mr Kemp alone to the accompaniment just of his own guitar.’
Beethoven and his cat unimpressed by the comparison
Why use a canon of classical music to inform a decision on copyright about pop music marks? The analogy drawn here by the Court between Beethoven and the Spaudau Ballet (or rather between their respective practices) begs the question of how much this comparison weighed on the outcome of the case. Would the court have sided with Kemp had the decision been informed by another cultural reference, say Björk, Aretha Franklin, Daft Punk or…Kim Kardashian?
There may be a risk of indirect cultural gatekeeping in shepherding a select few fountainheads of our culture as relevant illustrations for the ‘hows’ and ‘whys’ of creativity for copyright purposes. This question is particularly important when it affects the distribution of rights between claimants or the eligibility protection of creative expressions for copyright protection. In this regard, Hadley v Kemp is not an isolated instance (see Rockford Map Publishers at 148-9; Miller v Civil City of South Bend at 1093-5; Garcia v Googleat742-3).
What could be the safeguard against cultural gatekeeping? The answer is discussing, disputing and engaging those who favour a select few canons of so-called ‘high-culture’ in copyright law? To be clear— the result of this process is not predetermined. It is only through critical inquiry that we can reach reasonable positions on whether cultural gatekeeping and the biases that it entails, are welcome parts of the copyright law, or is it an inevitable deviance of copyright law-making processes?
Can Mattel be prevented from making its own Frida Kahlo Barbie doll? Mattel has launched the “Inspiring Women Series” of Barbies, which counts on its ranks also the 11 1/2 version of Mexican artist Frida Kahlo, but this decision, and especially the appearance of the doll, were not well-received by everyone. Kat Eleonora discusses whether an image right’s infringement claim by the Frida Kahlo Corporation would have legal ground under Mexican law.
Does 5 Pointz, a.k.a. the “world’s largest open-air aerosol museum”, fulfil the standard of recognized stature? The almost 30 year old site has been at the centre of a legal battle after it was whitewashed overnight. Kat friend Mira T. Sundara Rajan in The 5 Pointz case: Should works of art be protected from destruction? If you are interested in the protection of graffiti, you might enjoy reading thisIPKat post.
Kat Mirko discusses how Gutenberg.org loses to German publisher and is found liable for damages. Gutenberg.org is an online database of free e-books, following US copyright law. The books, however, could be translated into German among other languages and, after doing the math on the difference in copyright terms in the two jurisdictions, did not end up well for the website.
Never Too Late 185 [week ending 4 March] Exclusive interview with Johanne Bélisle, Chief Executive Officer of the Canadian Intellectual Property Office| Patents and the Fourth Industrial Revolution. What indications for the future on the basis of patent activity? | GuestPost: Is there really a problem with NPE litigation in Europe? | Do patents and literature have something in common? | The 1st specialized IP Tribunal of Northwest China unveiled in Xi'an | Sweet! (or not?): cookie-shaped cushions without trade mark owner's permission | Sieckmann kicks in once again: when is a representation of a sign an acceptable representation for the sake of registration? | GUCCI as a well-known mark, with special attention to evidence, surveys, and unfair advantage | Book Review: Copyright User Rights, Contracts and The Erosion of Property
Never Too Late 184 [week ending 25 February] BREAKING: UK IPO launches technical consultation on draft regulations transposing the EU Trade Secrets Directive | Here we go again? Strong brands as a barrier to entry, this time from "The Economist" | UK IPO publishes consultation on implementing Trade Mark Directive 2015 into UK law | Top 10 issues from submissions before UK Supreme Court in Warner-Lambert v Actavis second medical use battle | EPO looking for new legally qualified members of the Boards of Appeal | Repair or reconstruction: Where do you draw the line for exhaustion under patent law? | L'Oreal v RN Ventures - The Registered Design Perspective | More than Just a Game: Music, video games, GDPR & technical protective measures” (Report 2 and Report 3) | German FCJ: doctors can have their profile deleted from rating site - but can they?
Never Too Late 183 [week ending 18 February] Mr Justice Carr's L'Oreal v RN Ventures decision bristles with warnings on Actavis v Lilly claim interpretation, equivalents and prosecution history (Parts I and II) | Can Wenzhou and cigarette lighters tell us something about why there are IP rights? | Surveying the scene - passing off & surveys | Copying the counterfeits | 2017 Canadian trademark cases: progressive and regressive | Linking under US copyright law: green light to its inclusion in the scope of public display right comes from New York | Isgrò and Waters, problem erased | Stockholm Administrative Court orders ISP to provide customers’ details to Swedish police | (No) privacy by default? German court finds Facebook in breach of data protection law | More than Just a Game (Report 1): eSports | Blockchain my IP | Strategies for Combating Counterfeiting and Piracy (The USA and The EU Perspectives) | AIPPI UK Upcoming Event: Professor Bently to debate how far the "zone of exclusivity" of registered IP rights goes
Never Too Late 182 [week ending 11 February] BREAKING: in his new Opinion in Louboutin AG Szpunar (confirms and) advises CJEU to rule that a trade mark combining colour and shape may be refused or declared invalid | The new AG Opinion in Louboutin: is it really bad news for the famous red sole? | Yet another horse – The Polo/Lauren Company L.P. v Royal County of Berkshire Polo Club Ltd. | When passing off is enough to successfully oppose a trade mark | BREAKING: Sky's the limit for CJEU references in Sky v SkyKick trade mark battle | Influencers and undisclosed sponsored activities: where do we stand? | Brand Finance 500 … What’s the value of music IP? | The Céline affair: what moral rights can and can’t do…even in France | Can Nativity scene characters attract copyright protection under Italian law? | Blackcurrant, public interest and the first ever compulsory licensing application at the Community Plant Variety Office? | Costs of intermediary injunctions: Sir Richard Arnold's review of a recent publication | Alternative ways for financing and incentivizing research: a Nobel laureate and his colleagues state their case | Event Report: IP inclusive - Inappropriate Behaviour
Katfriend Alex Mogyoros is a doctoral student at the University of Oxford, St. Peter’s College. Her research focuses on trade marks and certification marks, and is supported by a Canadian Social Sciences and Humanities Research Council Doctoral Fellowship. She has kindly provided us with a review of Belson's Certification and Collective Marks: Law and Practice :
Jeffrey Belson’s book is a very welcome and highly needed contribution to trademark law scholarship. Certification and collective marks are an often-overlooked area of trademark law. They have been described as “shy beasts”[i]that “cast almost no shadow.” [ii] So it is perhaps not surprising that little has been written on the subject.
For those new to this exotic area of trade mark law, certification marks and collective marks are special forms of trade marks, often regulated under trade mark legislation, but distinct from ordinary trade marks. Certification marks indicate that the goods or services bearing that mark are certified as meeting a particular set of standards or have certain characteristics or qualities. Collective marks, as Belson explains, are marks that generally function as a sign of membership, such as association with a trade or industry association.
This book is the second edition of Belson’s earlier book entitled Certification Marks: Law and Practice published in 2002, and is likely the only major treatise that has been written on the subject in the last 15 years. This book will be of particular interest to those who were keen to see the recent introduction of the EU Certification Mark.
In keeping with the first edition, Belson offers a comprehensive and mostly descriptive account of the law concerning certification and collective marks. It is self-described as a “wide-scope, research-based treatment of both the historical development and present state of applicable laws and policies,” and the book more than lives up to its promise. In eight chapters, Belson is able to bring a lot of clarity and insight to this topic. He positions the law of certification and collective marks in its historical context (Chapter 1), explores the statutory and doctrinal aspects of these legal entities (Chapters 3-5), and consider their application and use in practice – namely in regulation and standard setting, the use of ecolabels and the authentication marking of digital products (Chapters 6-8). His increased focus on collective marks, and focus on ecolabels (those signs that indicate a product is environmentally friendly) are two of the contributions to this new edition that stand out.
His chapter on ecolabels (Chapter 7), which Belson defines as “a voluntary sign, used on or with products, to represent that the product causes significantly reduced harm to the environment) is of particular interest given the growing prominence of such signs, and the increased value sustainable and environmentally friendly brands enjoy. Belson takes a broad approach to ecolabels, considering the legal status and typology of these signs, and the different intellectual property rights that may be engaged by their use. It would have been interesting to see a more focused examination of how ecolabels challenge traditional understandings of certification marks – especially, as Belson notes, some ecolabels are registered as trademarks and others as certification mark. Even still, Belson aptly identifies the different moving parts that are engaged where ecolabels are used, such as the trust consumers need to have for an ecolabel’s message, so these marks can be relied on to ultimately generate a positive environmental impact.
Kats love napping reading
While this book does put forward original arguments on the issues raised by the law of certification and collective marks, these arguments are at times obscured by the thorough and rigorous account of the law. Nevertheless, Belson undoubtedly brings to light some of the emerging issues and debates in this area of intellectual property law. Belson is particularly interested in, for instance, the controversial rule that a certification mark owner cannot make use of his or her own mark. This rule is often due to the idea that for certification marks to be able to perform their purported public interest role, the certifier must remain independent and detached. Belson notes that this rule may be a cause of the under-utilization of certification marks, and is somewhat in “tension” with the EU’s regulatory policy on self-certification of one’s own products, and is an area ripe for further exploration.
While there is no doubt the area of certification marks and collective marks could benefit from more scholarship, and theoretical work, on the issues they raise, this book is an extremely valuable contribution to the intellectual property community. It will no doubt be of value as a reference text, or those looking for a well-researched and thoughtful introduction into the often-under explored world of these shy trademark beasts.
[i] Dev Gangjee, 'The Business End of Collective and Certification Marks' in Illanah Simon Fhima (ed), Trademark Law and Sharing Names: Exploring Use of the Same Mark by Multiple Undertaking (Edward Elgar Publishing Limited 2009) 79.
[ii] Jeremy Phillips, Trademark Law: A Practical Anatomy (Oxford University Press 2003) 621.
Mr Lemberger's picture (left) and Mr Andersson's painting (right)
Exhausted after several days of intense work, I (finally) afforded the luxury of watching some TV. Zapping my way through the channels, I stumbled upon something called “Domstolen” (ENG: “The Court”), a reality TV-show in the form of a reportage, based on somewhat recent court cases and judicial developments in Sweden. Just as I was about to zap away to the next channel there appeared a case concerning copyright infringement.
The case reported is colloquially known as Swedish scapegoats – a case from 2017 that made all the way up to the Swedish Supreme Court, and concerned a copyright dispute between the author of a close-up photograph and the author of a painting that was based on that photograph.
Markus Andersson is a Swedish artist who primarily paints images in oil and watercolor. In 2006 he was invited to exhibit his oil paintings at the Moderna Museet in Stockholm(The Museum of Contemporary and Modern Art). Mr Andersson exhibited a number of oil paintings of Swedish people, represented as scapegoats (a scapegoat is someone that is used to lay the blame on for all that goes wrong). Amongst others, there was a painting depicting the prosecuted – but subsequently freed of charges – Christer Petterson,ie the alleged murderer of former Swedish Prime Minister Olof Palme.
The portrait used as a basis for the painting of Christer Pettersson was a photograph by Jonas Lemberg. Mr Lemberg had followed and photographed Christer Petterson for a few days in 2005. One of the photographs taken by the Mr Lemberg was a close-up portrait of Christer Petterson that was consequently circulated on Swedish media.
The painting used dull colours in a rugged landscape and – compared to the photograph - featured a goat depicted in the upper right corner in the background. A photograph of the painting was subsequently uploaded onto Mr Andersson’s website and also sold in poster format.
When finding out about the painting, Mr Lemberg claimed that the artist had infringed the copyright in his close-up portrait of Mr Christer Petterson.
The District Court and the Court of Appeal’s decisions
The Solna District Court held that, because main focus of the painting was Christer Petterson, which was also the case in the close-up photograph, the painting could not be considered a new and independent work, but rather an adaptation of the original work. This was the case despite the alteration of the environment, such as the dull colours, the rugged landscape and the goat.
The Court of Appeal, however, held that the painting could not be regarded as an adaptation of the close-up portrait but rather as a new and independent work. In the Court of Appeal’s judgment it is stated that “the face of Christer Petterson has … been highlighted and the face seems less angular than in the photograph. In addition, the colours in the painting are more subdued and adapted to the background, which also causes some differences in how the light falls over the face”.
The Swedish Supreme Court
The main issue subsequently raised before the Swedish Supreme Court was whether the work in question should be regarded as an adaptation of the photographer’s existing work or rather as a new and independent work.
According to 4 § of the Swedish Copyright Act (SCA), a person who has made an adaptation of a work or shall have copyright in the work in the new form, but the right to exploit it shall be subject to the copyright in the original work. Hence, the exclusive rights of the author of the adaptation would be dependent on the original photographer’s rights. The former would therefore not be allowed to dispose of the painting by, for example, making copies of it without obtaining the prior approval of the original copyright owner. If however the work was regarded as an independent work, the artist’s rights in relation to his painting would be separate from the photographer’s rights and he would be free to exploit his painting as he wishes.
The IPKat reflects on scapegoats and adaptations
According to the preparatory works for 4 § SCA, for a work to be regarded as an adaptation of the original work, the adaptation must leave the individuality and form of the original work unaffected. The original features of the original work must therefore be left unaltered in the work as adapted. In order to receive separate copyright protection, instead, the adaptation must be so independent and original that a new work would be created, taking into account, inter alia, the older work that has been used as a model.
If the artistic individuality that embodies the older work appears as dominant in the new work, then it would be merely regarded as an adaptation. If, however, the new work is characterized by the author’s own expression of individuality and originality, it would be regarded as a new and independent creation.
In making its assessment, the Supreme Court stated that the painting must be considered in its entirety. Hence, even though Christer Petterson is at the centre of the painting, the dominant composition thereof essentially differs from the photograph. The dull colours, the rugged landscape and, above all, the symbolic goat – all give the painting a completely different meaning than the one conveyed by the original photograph. Instead of a strong close-up portrait, the painting conveys an allegory that suggests criticism of mass media’s need for scapegoats. The painting is therefore a provocation in the form of commentary: Christer Pettersson is only portrayed a subject that has been prone to such media attention. Together with the goat, he is the carrier of such a symbolic message, a message which is also emphasized by the colours in the background.
The Supreme Court, therefore, held that the artist had transformed the photograph in such a way that he had created a new and independent work that gives expression to the painter’s individuality. Therefore he had not infringed the photographer’s rights over the underlying photography of Christer Petterson.
While the case might seem rather peculiar, it is interesting because it protects transformative uses of existing works … is this the Swedish fair use doctrine?
Last week, Marine Le Pen, leader of the political party National Front (‘Front National’), announced the re-branding of her party, following a defeat in the latest presidential elections in France. A new name, a new team, and a new programme, are all on the cards. The National Front is now to be called ‘Rassemblement national’ (read: National Rally). The objective is to ‘soften’ the image of the National Front, and thereby to distance the party from its tumultuous past (hereand here).
Ironically, perhaps, this is not the first time that the name ‘National Rally’ has featured as the name of a national party. Indeed, it had already been used by a collaborationist party known as ‘National Popular Rally’ (‘Rassemblement National Populaire’), founded in 1941 by Marcel Déatduring the period of Vichy France (through 1945) (here).
Evidence of prior use of the phrase 'National Rally' by the National Front in the 1986 elections
In fact, the phrase ‘National Rally’ had already been used by her father (Jean-Marie Le Pen) back in 1986 (here), and Marine Le Pen claimed that the party had registered it as a trade mark with the French Intellectual Property Office. However, there does not appear to be any evidence that any such application was ever filed on the behalf of the National Front or its key members (past or present), much less than it was ever registered or renewed. That said, the French Intellectual Property Office (INPI) advised the press (here) that it is still checking whether an application was indeed filed back in 1986.
'RN Rassemblement National' (National Rally) mark purchased by the 'Front National' f rom Mr Bigrat
As for the new brand, a number of registrations for similar signs, owned by other right holders and in other classes of goods and services, appear on the INPI registry (here). For example, the INPI records show that the ‘Rassemblement national Nin-Jutsu’ (read: National Gathering of Nin-Jutsu) used by an association dedicated to the martial arts is registered (here) and already in use (for the classes 16, 25, 28, 41).
There is one registered mark, using the exact same phrase for the purposes of an (apparent) political association, that might have prevented the National Front from using its new brand. However, contrary to what was reported online, the ‘National Front’ was able to purchase this mark from its right holder, Mr Frederick Bigrat, on 22 February 2018, and it can be expected that the records of the French Intellectual Property Office will indicate the re-assignment of the mark soon.
As such, the apparent controversy on the ownership of the trade mark, which occupied the national press for the best part of last week, had in fact been resolved before it even started. Having said that, commentators (hereand here) have rightly noted that the other right holders may still file an opposition or pursue other proceedings to prevent a claimed risk of confusion following the renewed attention given to the mark by the National Front.
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