Last year the High Court of England and Wales (Arnold J) in FAPL v BT  EWHC 480 Ch concluded that it had jurisdiction under section 97A of the Copyright, Designs and Patents Act to order to block access to streaming services (rather than the more tradition case of websites) giving unauthorised access to protected content. In particular, unlawful streams services providing access to live Premier League football matches could be temporarily blocked by means of a so-called ‘live blocking order’ until the end of the 2016/17 season.
Still in 2017 (in July) the High Court issued a similar order ( EWHC 1877 (Ch) (25 July 2017), again in favour of the Football Association Premier League, for the season that would end in May 2018. That order allowed the applicant to seek an extension of the order's operation (para 9).
As suggested by the first order, a live blocking order differs from ‘standard’ blocking orders in that:
It only comes into affect at times when Premier League matches are being broadcasted;
It provides the list of target servers to be "re-set" each match week during the Premier League season;
It is only applicable for a limited period that can be however potentially extended; and
In addition to the safeguards which have become standard in section 97A orders, the order requires a notice to be sent to each hosting provider each week when one of its IP addresses is subject to blocking.
Hence, the now extended ‘live blocking order’ will be in place for the next Premier League season. It will be interesting to see what other rightholders, besides Football Association Premier League, will apply for such orders in the future. Any thoughts?
The question of whether a partial opposition is possible seems to differ across jurisdictions. Kat friendLim Tianjun provides an illustrative account of how the issue was recently considered under Singapore law.
“Can the registration of a trade mark be opposed for only some of the goods or services within the same class? The issue of whether the Singapore Trade Marks Act (the “Act”) permits such partial opposition was recently considered by the Intellectual property Office of Singapore (“IPOS”) in Tencent Holdings Limited v Monster Energy Company 2018 [SGIPOS] 9. While not strictly required for the disposal of the opposition, the Registrar considered the parties’ submissions and opined that partial oppositions are not permitted under Sections 8(2) and 8(4) of the Act.
This case concerns Monster Energy in stylized form in Classes 9, 41, and 42 (the “Mark”). The Opponent relied on numerous earlier trade mark registrations, although it identified a number of registered trade marks for “MONSTER ENERGY” as being the most similar to the Mark. The Registrar decided that the Opponent’s “MONSTER ENERGY” trade marks were dissimilar to Tencent’s Mark and dismissed the opposition under Sections 8(2)(b) and 8(4) of the Act. The Registrar also dismissed the opposition under Section 8(7) of the Act as the element of deceptive misrepresentation that is required to establish passing off was not made out given the said dissimilarity. Even though the Registrar’s decision on the above is sufficient to dismiss the opposition, he made some observations on whether partial oppositions are permitted under the Act.
The issue of partial opposition concerns the Registrar’s power to refuse the registration of certain goods or services in a particular class, while allowing the registration to proceed for other goods or services within the same class. This issue, the Registrar observed, was not yet decided by the Singapore courts, although it was previously considered in another IPOS decision (Christie Manson & Woods Limited v Chritrs Auction Pte. Limited  SGIPOS 1).
The Registrar was inclined to the view that he did not have the power to order partial opposition under both Section 8(2) and Section 8(4) of the Act. This is so as the wording of Sections 8(2) and 8(4) of the Act does not expressly provide for such power. The absence of such express provisions must be contrasted with the express provisions in the Act that specifically provide for partial revocation (Section 22(6) of the Act) and partial invalidation (Section 23(8) of the Act). Given this contrast, Sections 8(2) and 8(4) of the Act should not allow for partial oppositions.
The Registrar also noted that decisions from the UK in this regard were of limited persuasive value. In the UK, partial oppositions appear to have been permitted even in the absence of an express provision. This was, however, attributed to the effect of Article 13 of Council Directive 89/104, which expressly provides for partial opposition. Even though the words of Article 13 are not expressly reflected in the English Trade Marks Act, the UK’s registrar of Trade Mark, whose task is to implement Article 13 on behalf of the State in Registry proceedings in the UK, must give effect to the binding provisions of Article 13. This is unlike the case in Singapore. Singapore is not a member state of the European Union and is not bound by Article 13 of the said Council Directive. Consequently, UK cases which held that partial oppositions were permitted are not persuasive in Singapore.
The Registrar also observed that the previous IPOS decision in Nike International Ltd v Campomar SL  SGIPOS 4 (“Nike”) must be viewed in the context of the pre-1999 version of the Trade Marks Act, which applied to that case. Even though the Nike decision was sometimes viewed as a case which allowed partial opposition, the Registrar noted that the applicant in Nike was technically ordered to amend the specification by adding an exclusion to its specification. Such an order was given in Nike pursuant to Section 12(2) of the former Trade Marks Act – a provision with no equivalent in the present-day Act.
Finally, it was noted in passing that the wording in Section 8(7) may possibly allow partial opposition. Section 8(7) states that a “trade mark shall not be registered if, or to the extent that, its use in Singapore is liable to be prevented by” virtue of any rule of law or an earlier right, such as those under the law of passing off or copyright. The words “or to the extent that” might arguably be interpreted as allowing partial oppositions. However, the Registrar did not make any further comments as this was not argued before him.
To be clear, it is the partial opposition of goods or services within the same class that is of issue. It is uncontroversial in Singapore that the Registrar can refuse the registration for the specification of a trade mark in one class of goods or services, but yet allow it in another class. It remains to be seen how the Singapore courts would decide on the permissibility of partial oppositions under the Act since, to date, this issue was discussed only in two IPOS decisions. Even then, the discussion was merely ancillary to the decisions as the oppositions were decided on other grounds.
Meanwhile, there may be a procedural work-around that the applicant of a national trade mark registration can avail itself of. To avoid having a trade mark application being opposed to in its entirety, the applicant may consider dividing an application into two or more separate trade mark applications. This is provided for by Rule 17 of the Trade Marks Rules, which allows such a division upon the request of the applicant made any time before the trade mark is registered. Goods or services that are dissimilar to the opponent’s marks goods or services can be divided from goods that may be sufficiently similar. In this way, the applicant may be able to retain the benefit of having an earlier priority date for goods or services that are dissimilar to those registered under an earlier trade mark."
Photo on middle left by Vsion and is licensed under Creative Commons Attribution Alike 3.0 license.
Photo on lower right by Augustus Bino and is licensed under Creative Commons Attribution Alike 4.0 International license.
There is a new development in the judicial saga featuring the founder of Megaupload, Kim Dotcom, against the US government. New Zealand Katfriend Ken Moon (AJ Park) explains it for Kat readers.
“As many readers will know, the US Government has, since 2012, been seeking the extradition from New Zealand of Kim Dotcom, based on charges of criminal copyright infringement in the US. Megaupload purported to simply provide file storage on its website. In reality, Dotcom’s website hosted or stored infringing digital copies of movies – often ripped from DVDs. Each uploader would receive a link which they could share via third party websites. The viewing or downloading of movies was free for the first 72 minutes and thereafter Megaupload levied charges through a subscription service. The website also generated revenues by hosting advertisements. The movie companies had persuaded the US Government that Megaupload’s business operation constituted a criminal offence under the DMCA, but in the meantime Dotcom had moved out of the jurisdiction to New Zealand.
The extradition saga commenced early 2012 at the request of a US Federal Prosecutor with a police raid conducted on Kim Dotcom’s Auckland home. There have been many interlocutory proceedings, but the extradition proceeding proper has now been through three courts on appeals by Dotcom: the District Court, the High Court and now the Court of Appeal.
On July 5th, the New Zealand Court of Appeal held that ‘double criminality’ is required for extradition to the US. That is, that there must be a New Zealand copyright offence corresponding to the alleged US offence, despite argument that this principle may not apply under the New Zealand – United States Treaty 1970. In considering whether New Zealand had a comparable copyright offence to that under which Dotcom was charged in the US, the Court decided the act of facilitating the dissemination of infringing digital copies of protected works over the internet was a criminal offence under the Copyright Act 1994 (NZ).
The Copyright Act 1994 (NZ) was amended in 2008 to introduce in Section 16 the right of ‘communicating a work to the public’, the infringement of which is subject to civil remedies. No equivalent amendment was made to Section 131 of the same Act, which lists possible criminal offences for copyright infringement.
This contrasts with the 2003 amendment of copyright law in the UK for example, where the introduction of the communication to the public under the Copyright, Designs and Patent Act 1988 was paired with an equivalent criminal offence (see s. 20 and s. 107(2A)).
Section 131 of the Copyright Act 1994 (NZ), standing unchanged after the 2008 amendments of the act, reads:
‘Every person commits an offence … who … (d) in the course of business, (iii) distributes … an object that is, and the person knows is, an infringing copy of a copyright work.’
Contrary to the High Court below, the Court of Appeal reasoned that the word ‘object’ was not limited to physical tangible copies, but also extended to digital files. Consequently, the infringing digital copies of movies stored on Megaupload’s websites are ‘objects’ in the meaning of Section 131 of the 1994 Copyright Act (NZ).
The Court oddly took support for their interpretation from the fact that the 1994 Copyright Act had substituted the word ‘object’ wherever the word ‘article’ had been used in previous legislation (1962 Act). The Court also noted the NZ Supreme Court decision in R v Dixon  NZSC 147 [see here], holding that digital CCTV footage was both a ‘document’ and ‘property’ under the NZ Crimes Act 1961.
Most copyright practitioners in New Zealand, including this one, had interpreted ‘object’ in s.131 (and elsewhere) in line with the Oxford English Dictionary meaning – ‘a material thing that can be seen and touched’. However, the new meaning given to it by the Court of Appeal in their decision will now ‘digitise’ a number of provisions in the 1994 Act which employ the word ‘object’. By interpreting the text in this way, the Court of Appeal may have updated the law for the government which is currently reviewing the NZ Copyright Act, reducing the extent of the reform required.”
Subsequent to the Court of Appeal issuing its judgment, Kim Dotcom’s legal team has announced that an appeal will be lodged with the Supreme Court.
As previously reported on this blog, the CJEU had to decide on a case of interest to Whisky- and IP-connoisseurs alike.
The Scotch Whisky Association from Scotland (TSWA) took offence at the name of a Whisky that is produced by the Waldhorn distillery in Berglen, situated in the Buchenbach valley in Swabia (Baden-Württemberg, Germany). The Whisky in question is called ‘Glen Buchenbach’.
TSWA claimed that use of the term ‘Glen’ infringes the registered geographical indication ‘Scotch Whisky’ and asserted a breach of Art. 16 (a) - (c) of the Regulation No 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks.
The interesting detail in this case is that ‘Glen Buchenbach’ does not use any part of the registered geographical indication ‘Scotch Whisky’, but ‘Glen’ certainly makes you think of Scotland. But does it make you think of Scottish Whisky?
The District Court of Hamburg, where the case originated, referred the following questions to the Court for a preliminary ruling:
(1) Does “indirect commercial use” of a registered geographical indication of a spirit drink in accordance with Article 16(a) of Regulation No 110/2008 require that the registered geographical indication be used in identical or phonetically and/or visually similar form, [ (6)] or is it sufficient that the disputed element evokes in the relevant public some kind of association with the registered geographical indication or the geographical area?
If the latter is sufficient: When determining whether there is any “indirect commercial use”, does the context in which the disputed element is embedded then also play a role, or can that context not counteract indirect commercial use of the registered geographical indication, even if the disputed element is accompanied by an indication of the true origin of the product?
(2) Does an “evocation” of a registered geographical indication in accordance with Article 16(b) of Regulation No 110/2008 require that there be a phonetic and/or visual similarity between the registered geographical indication and the disputed element, or is it sufficient that the disputed element evokes in the relevant public some kind of association with the registered geographical indication or the geographical area?
If the latter is sufficient: When determining whether there is any “evocation”, does the context in which the disputed element is embedded also play a role, or can that context not counteract any unlawful evocation of the registered geographical indication, even if the disputed element is accompanied by an indication of the true origin of the product?
(3) When determining whether there is any “other false or misleading indication” in accordance with Article 16(c) of Regulation No 110/2008, does the context in which the disputed element is embedded play a role, or can that context not counteract any misleading indication, even if the disputed element is accompanied by an indication of the true origin of the product?’
In its judgmenton June 7th, the CJEU agreed with Advocate General (AG) Saugmandsgaard Øe’s assessment of the case, which was detailed here.
The first question
Looking at point (a) of Article 16, the CJEU found that the use of the term ‘Glen’ does not amount to a direct or indirect commercial use of the registered geographical indication ‘Scotch Whisky’.
According to the court, both alternatives require that the protected geographical indication itself be used, which was not the case here. While TSWA had argued that an ‘indirect’ commercial use of a registered geographical indication would not require use to be made of that indication itself, the court disagreed. It found that a ‘direct’ use takes place when the protected geographical indication is affixed directly to the product concerned or its packaging, while ‘indirect’ use requires the indication to feature in supplementary marketing or information sources, such as an advertisement for that product or documents relating to it (para 32).
The second question
Next, the judges looked at Article 16(b) and the concept of ‘evocation’ of a registered geographical indication. The concept of ‘evocation’ is obviously wider than ‘use’ in the sense of Article 16(b). The referring court observed that the CJEU has consistentlyinterpretedthe concept of ‘evocation’ as meaning that it “covers a situation in which the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product the image triggered in his mind is that of the product whose designation is protected”. However, no such rulings existed that clarify whether a phonetic and/or visual similarity between the signs at issue would be a necessary requirement for the existence of evocation to be established.
Again siding with AG Saugmandsgaard Øe, the CJEU ruled that the partial incorporation of a protected geographical indication in the sign at issue is not an essential condition for Article 16(b) of Regulation No 110/2008 to apply (para 46). Going even further, neither a phonetic or visual similarity between the disputed designation and the protected geographical indication would be an essential condition for establishing that there is an ‘evocation’ within the meaning of Article 16(b) (para 49). While both these conditions could result in a breach of Article 16(b), they are not a condition sine qua non - there are other factors to be taken into account.
Citing Viiniverla, the CJEU stated one also needsto take account of the criterion of ‘conceptual proximity’, since such proximity, like the other criteria mentioned above, may also trigger an image in the consumer’s mind which is that of the product whose geographical indication is protected (para 50).
Does this Kat think of Scotch Whisky?
The referring court will now have to determine whether consumers think directly of ‘Scotch Whisky’ when confronted with ‘Glen Buchenbach’, which incorporates the disputed designation ‘Glen’. In doing so, the CJEU found, the court will have to determine the view of an average European consumer who is reasonably well informed and reasonably observant and circumspect (para 47).
The third question
Finally, the CJEU looked at Article 16(c) and the impact of additional information surrounding the disputed designation. In essence, the Hamburg Court asked the CJEU whether a ‘false or misleading indication’ could be legitimized by accompanying it with additional information relating, in particular, to the true origin of the product.
First, the judges agreed with AG Saugmandsgaard Øe that Article 16 of Regulation No 110/2008 contains a graduated list of prohibited conduct. Point (c) widens the scope of the protection to include ‘any other … indication’ that is false or misleading, while not actually evoking the protected indication. Such indication could be present on the description, presentation or labelling of the product concerned.
The court is very clear that if it were possible to restrict the protection of geographical indications by the fact that additional information is included alongside an indication which is false or misleading, the objectives of Regulation No 110/2008 (to protect registered geographical indications, both in the interests of consumers who should not be misled by inappropriate indications, and in the interests of economic operators) could not be met (para 70). The judges therefore concluded that when assessing an infringement of Article 16(c), account is not to be taken of the context in which the disputed element is used.
Since this GuestKat is based in Hamburg, he will keep an eye on the case and provide an update once the District Court of Hamburg has decided on the merits.
TL;DR [if you are wondering what this means, wonder no further and see here]
The CJEU clarified the following for future cases:
- A direct or indirect commercial use of a geographical indication under Article 16(a) requires the actual use of the indication in an identical form or at least in a form that is phonetically and/or visually highly similar.
- An ‘evocation’ in the sense of Article 16(b) can occur even when no visual or phonetic similarity between the designation and the indication exists. The decisive criterion is whether, when the consumer is confronted with a disputed designation, the image triggered directly in his mind is that of the product whose geographical indication is protected. Any conceptual proximity between the designation and the indication needs to be taken into account.
- When assessing a ‘false or misleading indication’ under Artitcle 16(c), the context in which the disputed element is used shall not be considered. It is impossible to ‘heal’ misleading indications by accompanying it e.g. with the true origin of the product.
“It is no secret (amongst local residents at least) that the publicly-funded Edinburgh tram project was seriously delayed, and cost almost double the original estimate at nearly £1 billion. To add insult to injury the completed route was considerably shorter than planned. It is also no secret that an inquiry has been taking place to investigate why the project was so late and so expensive. However, the alleged trade secrets of one of the Inquiry’s core participants have been the subject of a recent decision by the Inner House of the Court of Session (the Scottish appeal court). The decision is available here.
The decision reinforces the lesson that a party seeking to protect its trade secrets must provide the court with sufficiently detailed information to allow the court to determine that the information is actually a trade secret. This can obviously be a catch 22 – how can this be done without giving the secret away? In this case the hurdle was one that the applicant failed to overcome.
What was so secret?
Bilfinger was responsible for the tram civil engineering works and is one of the core participants in the Inquiry. Bilfinger’s former director gave evidence to the Inquiry that referred to reporting methods and the sending of monthly reports. Those reports had not been produced to the Inquiry. Lord Hardie, the Inquiry chairman, requested sight of them. Bilfinger asked to provide them in a redacted form but that request was declined. Following disclosure of the reports, Lord Hardie indicated his intention to provide them to all other core participants.
Bilfinger then made an application to Lord Hardie which according to it
explained clearly, and in detail… the confidentiality and sensitivity of the Confidential Information, as well the (sic) very real risk of significant harm were the information to be disclosed publicly.
The information it sought to protect was project overview charts, performance sheets, weighted results with chances and risks, cost reconciliations and forecasts, overview movements of contingencies, commentaries, approved change orders and unapproved changes. In addition to the information itself, Bilfinger also argued that the way the information was presented was commercially sensitive. Bilfinger stated that,
were the Confidential Information (or the methodology) to become public, there [was] a real and substantial possibility – if not probability – of [Bilfinger’s] competitors using it to undercut [Bilfinger] on price when tendering for construction projects ... the Confidential Information (including the methodology) could be used to the material disadvantage of [Bilfinger], and other members of the [Bilfinger’s] group, by prospective employers to whom [Bilfinger], or other group members, tender for work.
Lord Hardie refused to restrict publication on the basis that the application was too general and lacked sufficient specification as to why the information was commercially sensitive. There was no specification of what harm would be caused by publication, why the information was not merely of a type typically reported in a large infrastructure projects, what was commercially sensitive about how the information was presented and why the information might be relevant to other projects particularly given the passage of time.
Bilfinger then applied to the Court of Session for suspension of Lord Hardie’s decision and interim interdict (the equivalent of interlocutory injunction) preventing publication. Bilfinger had to satisfy the court that (i) there was a prima facie (or arguable) case and (ii) that the balance of convenience favoured restricting publication. Lord Tyre, as the judge hearing the application, decided that Bilfinger had failed to demonstrate that there was a prima facie case. This was again because Bilfinger had failed to explain why the content of the reports or presentation of the information was commercially sensitive. Also, it had not explained why publication would cause loss and damage. Interestingly, Lord Tyre went on to say that, if he had found a prima facie case then he would have determined that the balance of convenience favoured restricting publication. This was because any damage caused by publication would be irreversible and, in the particular circumstances of a public inquiry, no compensation was available. Lord Tyre’s decision is available here.
Bilfinger then appealed Lord Tyre’s decision to the Inner House of the Court of Session. Lord Carloway agreed with Lord Tyre and his reasoning. and held on that basis Lord Tyre was correct to find that no prima facie case existed.
Bilfinger drew attention to a previous application by Siemens, another core participant, to restrict publication which in contrast had been granted. It argued that there should be a consistency in approach. Lord Carloway also rejected this argument as there was insufficient specification that the type of information in issue in the two applications was similar and “there may be a myriad of reasons for treating the two applications differently”. Particularly, Lord Carloway indicated that Siemens may be engaged in similar works elsewhere thus making the protected information valuable to competitors. This consideration could not apply to Bilfinger who admitted they no longer carried out this type of civil engineering work. Lord Carloway also saw no reason to interfere with Lord Tyre’s decision that had Bilfinger demonstrated a prima facie case, then the balance of convenience would have favoured restraining publication.
This case serves to remind those thinking of bringing a trade secrets claim that the claimant must provide enough information and evidence to show that (1) the information is commercially sensitive and confidential and (2) that the claimant would be harmed by the information being released and the reasons for both This is always going to be a challenge where the information itself, for obvious reasons, cannot be disclosed and descriptions must inevitably be abstract.
If Bilfinger had managed to overcome what is usually the relatively low hurdle of establishing a prima facie case then both Lord Tyre and Lord Carloway believed that the balance of convenience favoured the grant of the interim interdict. This may at first glance be a little surprising in the context of information that was around 10 years old and where Bilfinger had admitted they no longer carried out the same type of work. The important point for both courts seems to have been that the consequences of releasing the information would have been irreversible and damages were unavailable as a result of a statutory immunity from suit. This is an important factor to bear in mind when seeking or defending applications for interim orders. The balance of convenience always turns on the facts of a particular case but the availability of damages is usually at the forefront of a decision. Here, the argument was a straightforward one as damages simply could not be obtained. In a more typical trade secrets case, the argument can be more difficult and consideration needs to be given to the likely magnitude of damages, whether any loss could accurately be quantified and the defender/defendant’s ability to pay.
On July 10th last the State Intellectual Property Office of China (SIPO) held the Q3 press conference in Beijing. It is the first time for SIPO to release the major IP statistics about patent, trade mark and geographic indications (GIs) all-together after its restructuring.
1. The highlights of the 1st half of 2018
The figures remain high, showing a good momentum of development. For perhaps easier-reading, this Kat has taken a different approach this time -- hopefully you will enjoy the charts!
By the end of June 2018, the cumulative number of invention patents held by the Chinese mainland is 1,475,000, namely 10.6 invention patents for every 10,000 head of population.
Obviously, China's domestic patents have a significant advantage in quantity. SIPO’s earlier statistics also showed that the domestic invention patents outnumbered the foreign invention patents in 32 out of 35 WIPO technology fields (the gaps seen in optics, turbine, and medical technology). Yet on the other hand, China still has shortcomings in many of the core technologies, e.g. computer technology, audio-visual technology, and electrical apparatus; in 28 out of 35 WIPO technology fields the number of the specific domestic invention patents which have been maintained for over 10 years is lower than that of foreign invention patents – as has been reiterated over the years, more efforts need to be put into improving the quality of domestic patents.
During the 1st half of 2018, the number of cases handled by the patent administration law enforcements was 19,900, of which 12,400 were patent disputes cases, and 7,541 patent-counterfeiting cases were investigated and handled.
The headline of a WIPO report back in 2016 seems to be a proper choice here as well: China's trade mark activity continues to soar. China remains an extremely busy jurisdiction, if not the busiest, in the world for trade marks. We often hear sayings like "too crowded/too many!" when it comes to the massive numbers of trade marks in China. Well, this Kat doubts that much can be concluded from the sole total numbers -- opportunities or pitfalls? Potential or dangers? Abnormal or in fact a new-normal? -- the answers are open to interpretation and probably will call for deeper analyses.
The period of examination in trade mark registration has been shortened from 8 months to 7 months (the goals specified in the Opinions on Deepening the Reform of Trademark Registration Facilitation and Effectively Raising Efficiency of Trademark Registration issued by the State Administration of Industry and Commerce on November 14 2017 was to shorten the period to 6 months by the end of 2018).
Accumulatively 8,091 enterprises have been approved to use GI, and the related value of output exceeds 1 trillion Chinese Yuan.
2. More changes are still to come -- Stay tuned
As summarized, there are four characteristics reflected from the SIPO's IP statistics, namely:
"(1) Progress has been achieved and stability ensured in China’s IPR creation and utilization;
(2) The main role of domestic enterprises in innovation continues to be strengthened;
(3) The overseas IPR applications of Chinese enterprises increase steadily;
(4) The domestic environment for IPR protection is further optimized."
At the same time, several projects are in progress, seeking to add new vitality to the Chinese IP environment. For instance, regarding the examination period, Prime Minister Li Keqiang noted in the recent national teleconference on transforming government functions (the theme was to simplify procedures, decentralize powers, and to optimize public services) that within the next 5 years, the period of examination in trade mark registration shall be shortened to 4 months or less, and of invention patent the period shall be shortened by 1/3 (for the high-value patents the examination period shall be reduced by half). These good intentions meanwhile will require much more substantial efforts in terms of highly professional systematic design, well-collaboration and staffs' meticulosity -- challenges seem to be inevitable to occur. Curious about how China will resolve the difficulties? Stay tuned for the follow-up reports!
* There are 3 types of patents in China, the invention patents, the utility models and the design patents.
IPKat brings plenty of exciting IP news right to your doorstep! Enjoy a weekly roundup of forthcoming events, educational initiatives, calls for papers and more!
A new Joint Master’s Degree Programme in Intellectual Property and New Technologies is being organised by the Jagiellonian University in Krakow, the World Intellectual Property Organization (WIPO Academy) and the Patent Office of the Republic of Poland, with participation of IP specialist from the European IP centres, as well as specialists from the sector of new technologies. The curriculum will be structured in three-semester study between 1st October 2018 and 28th February 2020. Learn more about the programme here.
The Chartered Institute of Patent Attorneys Life Sciences Conference this year will take place at De Vere Tortworth Court, Wotton-under-Edge on the 8-9th November 2018. Patent and IP professionals active in the pharma, medical technology and biotechnology sectors are invited to join the presentations and panel sessions on UK, EPO, Canada and US law updates, Oppositions at the EPO - Impact of the Recent Changes, Current Status of Litigation in Europe, SPCs and Devices, Life Sciences Beyond Therapeutics, Scientific Presentation, and others. Full programme may be found here.
The 28th Kuhen & Wacker European Intellectual Property Seminar will be held in K&W offices in Freising, Germany, on 7-12th October 2018. Seminar programmefeatures talks and discussions on international patent litigation, IP in chemistry, pharma & biotech, EU trade marks and litigation, EU and international designs, IPR enforcement in Europe, computer-implemented inventions, and of course - Unitary Patent and Unified Patent Court. Early registrationis highlight recommended!
Confederacy of European Patent Information User Groups (CEPIUG) is organising the 10th Year Anniversary Conference, which will be held in Milano, Italy, on 9-11th September 2018. A three-day programme includes six main sessions, more than 40 speakers will be involved in presentations and panels, an occasion to discuss about certification of professionals, higher education needs, a story of the profession, an exposition of professional services, an opportunity for networking, a patent search trial, a celebration party in the wonderful city centre, and much more. Registration, preliminary program and fee details are available here.
IP Out Network organises an event themed "In or Out: LGBT+ people and mental health". Join in at Kilburn & Strode London Offices on 30th July 2018 for a discussion of specific ways in which LGBT+ people are at risk of mental health issues, and what firms, colleagues and the individuals themselves can do to mitigate the risk. More details: here.
University of Antwerp
Call for Papers
8th International Conference on Information Law and Ethics (ICIL) 2018, entitled “Modern Intellectual Property Governance and Openness in Europe: A Long and Winding Road?”, will be held on 13-14th December 2018 at the University of Antwerp, Belgium. Suggested topics for abstracts include: access to information, access to knowledge, open innovation, open science, open access, open data, data sharing, artificial intelligence, blockchain technology, intellectual property and contemporary issues of openness, e-government and the digital divide. Abstracts may be submitted to firstname.lastname@example.org at the latest on 15th September 2018. Visit here for more information.
Renmin University of China, Beijing, China, will host Asian Pacific Copyright Association’s (APCA) 2018 Conference on 26-28th October 2018. This year’s theme provides ample scope for scholars in diverse areas of copyright law. The APCA Executive Committee invites scholars at all levels of experience to submit a paper proposal, including an abstract (max. 500 words), the author’s name, title and affiliation. An English proposal may be sent to the APCA President, A/Prof. Susan Corbett, at email@example.com, and a Chinese proposal - to A/Prof. Luo, Li, at firstname.lastname@example.org by no later than 17th August 2018. More details: here.
New Zealand Intellectual Property Office (IPONZ) has recently updated its trade mark practice guidelines to reflect the following items:
(1) Introduction of new practice guideline on Absolute grounds– Geographical indications. IPONZ has added a new practice guidelinerelating to the office’s interpretation of Section 20 of the Trade Marks Act 2002, which specifies that trade marks that contain geographical indications must not be registered in certain circumstances.
(2) Similarity of goods and services classes. IPONZ has added a new guideline regarding the similarity of goods in classes 32 and 33.
Our own Book Review Editor Hayleigh Bosher and Sevil Yeşiloğlu have published an articleentitled “An analysis of the fundamental tensions between copyright and social media: the legal implications of sharing images on Instagram”. This analysis builds on the literature that recognises the underlying conflict between copyright and social networking sites (SNSs); namely that the basic implication of copyright is the restriction of copying, whereas the ethos of social networking is the promotion of sharing.
Volume 1, Issue 1 of the Interactive Entertainment Law Review (IELR) is now available and is currently free to access via Elgaronlineonline platform. The articles cover the topical issue of loot boxes in gambling law, and the question of whether video game input streaming can have copyright protection. Short analysis focus on digital distribution of computer programmes, and Virtual Reality products (both data protection issues, and the legal and regulatory pitfalls in VR advertising). Case Reviews consider the courts’ positions on tattoo copyright protection and portrait rights in eSports.
The EnDOW project, aimed at studying and facilitating Diligent Search to clear the rights of Orphan Works was concluded on the 31st of May 2018. Its final conference, held at the EUIPO in Alicante on the 15th of May 2018, brought together the results of the three-years’ research, as well as a discussion on the best way to resolve the diligent search problem, with representatives from the European Commission, the European Parliament and Europeana. See blogposts hereand here.
The EnDOW Diligent Search Platform (available here) is an online tool that guides the user towards a step-by-step diligent search and produces a Diligent Search Report that provides evidence on record of the search carried out. If the right holder is not located, the work can be registered on the Orphan Works Database of the EUIPO and the work can be published online by the Cultural Institution.
In a recent post, this GuestKat explored the possibility for runway models to claim performers’ rights under UK law (here), concluding that runway models could make a reasonable claim for performer’s rights protection under several legal bases. One such basis relies on the definition of "protected performers" under the Rome Convention and WIPO Performance and Phonograms Treaty (WPPT) [as interpreted here]. International treaty or no international treaty, the provisions of the Copyright, Designs and Patents Act (CDPA) in the UK are arguably broad enough to fit runway models within the scope of performers’ rights (see also, Richard Arnold (2016) para 2.17). As such, invoking the Rome Convention and WPPT is most germane in the face of a narrow [conservative?] interpretation of the CDPA.
But the UK is not the only country bound by the Rome Convention and the WPPT. What about the other signatory countries whose domestic laws have expressly excluded models from the scope of performers’ rights, say like …France? Are they countries in breach of international IP law? It sure looks like it.
The minimum standard of protection set by the Rome Convention and WPPT
So, focusing on France, we note that both the Rome Convention and the WPPT set minimum standards of protection (in the form of performers’ rights) to any “persons who act, sing, deliver, declaim, play in, or otherwise perform literary or artistic works” (Rome Convention, Article 3(b); WPPT, Article 2(b)). A literal interpretation of this provision concludes that as long as a performance is the interpretation of a ‘work’ in the meaning of copyright, performers’ rights must apply. Signatory members remain free to decide whether they also want to apply performers’ rights to performances that are not interpretations of copyright works, but the reverse is mandatory: signatory countries must extend performers’ rights whenever a person performs a copyright work. Failing to do so would breach the minimum level of protection guaranteed by the Rome Convention and the WPPT, leaving signatory states vulnerable to sanctions through the World Trade Organisation and/or the European Commission for non-compliance.
A knock-on effect
The upshot of this interpretation is that for every new copyright work (capable of performance) recognized by national courts, new categories of protected performances will arise. The result would be a knock-on effect between the subsistence of copyright and performers’ rights, respectively. Meaning that every extension of copyright protection to new works (capable of performance) will see new protected performances.
First in line to test this interpretation could be runway models. Why? Because fashion shows were recognized as full-fledged copyright works (‘oeuvres de l’esprit’) under French law by the Civil Supreme Court (Court de Cassation) in 2008 (decision: Ashby v Gaulme, Kenzo et Lacroix (2008) ; Ashby Donald and Others v France  ECHR 28; see here). Logically, once French courts reached the conclusion under their own jurisprudence (Ashby 2008) and then applied a literal interpretation of the Rome Convention and WPPT treaties, which were incorporated almost verbatim under the French Intellectual Property Code (see Article L 212-1), runway models should be entitled to performers’ rights. It should be as easy as 1 + 1 = 2.
A statutory exclusion
The problem is that French domestic law expressly exclude models from the scope of performers’ rights (together with auxiliary performers), or so the courts interpreted prior to Ashby. In existing case law, the exclusion of models from performers’ rights finds its legal basis in the French Employment Law Code, which describes models as the conduits of a commercial message aimed at advertising or presenting goods for sale (Art L 7123-2). By contrast, according to existing jurisprudence, performers are artists who ‘stamp’ their performance with the ‘mark of their personality’. The notion of ‘stamp of personality’ should sound familiar to copyright lawyers; the same concept is used to define the requirement of originality in the context of French copyright law (‘droit d’auteur’).
This GuestKat argues that the line drawn between ‘models’ and ‘performers’ by the jurisprudence no longer holds true – if it ever did. This is because the definitions of protected performers outlined by the Rome Convention and the WPPT Treaty (and the Intellectual Property Code’s own provisions), combined with the Asbhy jurisprudence, contradict the blanket exclusion of all models from performers’ rights. At the very least, runwaymodels should be included within performers’ rights.
Correcting French law on this point should not be too difficult. The exclusion of models is not actually part of the French IP Code, but is judge-made. As explained above, it is the result of a farrago of statutory definitions mingled together by the jurisprudence. Side-stepping precedent in a jurisdiction like France, which does not have the principle of binding precedent, should be easy enough. All that is required is a new case raising a relevant fact situation.
After almost 80 years of existence, there remain significant oversights or blind spots in the implementation of the Rome Convention. If we take into account that discussions on performer’s rights began already in the late 1920s, this brings us to 100- years’ worth of legal discussion and regulation in this area of law. And yet, provisions as basic as the definition of protected performances continue to hold surprises.
Let us begin, with a degree of sadness, from the end. This Kat recently read an obituary (and here) for William Reese, who died in early June at the age of 62. While Mr. Reese was not a household name, he enjoyed an exalted status among those who had any interest in rare books, especially of Americana vintage (this Kat was familiar with him). It is presumed that while Mr. Reese viewed his engagement with rare books as a commercial venture, he also seemed to see his enterprise in terms of mission.
Thus, in one interview, he observed that—
“I always had a concept as a person dealing in Americana that I was selling evidence in one form or another.”
In another setting, he noted—
“The object can sit for 200 years, and nobody can know why it’s needed, no scholar can put in context until that moment when that piece of paper tells a story, provides a connection.”
Mr. Reese’s comments regarding the mission of the rare-book-as- preserving-content-for-public-use led this Kat to consider just how one can understand the implications of this mission. We begin with three observations.
First, under the copyright system, the public interest is taken into account, e.g., with respect to the idea/expression divide, which preserves certain contents in the public domain a priori, and the duration limit for copyright protection, which contributes once-protected contents into the public domain. Underlying this is the centrality of copyright in contributing to knowledge by ultimately making all contents accessible in the public domain. Second, there is a fundamental legal distinction between protecting the intangible rights in the contents of a book via copyright and the rights of the book as a physical object under the laws of tangible property (or even as stored in Kindle form). Third, research has shown (here and here) the role that norms sometimes play in regulating IP-like behavior, such as how French chefs protect their recipes, even in the absence of formal IP rights.
Against this backdrop, let’s consider the following hypothetical. Rare book dealer and collector “A” has in his possession the only extant copy of a 19th century autobiography written by Father González, a leading figure in the establishment of the chain of missions between the years 1769 to 1823 in the New Spain province of Alte California. It is believed that this autobiography sheds light on several unresolved major issues in our historical understanding of that period.
Let us say that “A” has the option of either: (i) continuing to maintain the copy in his possession, without public access, including to scholars; (ii) continuing to maintain the copy in his possession, but causing a digital copy to be made of its contents for use by the public; (iii) selling the book to a private book collector, who has made it known that he will not provide any access to the book nor will he make a digital copy; or (iv) selling the book to a rare books library.
Under the usual copyright paradigm, the continuing exclusive right in the book as tangible property goes hand in hand with the expiry of exclusivity in controlling the reproduction of contents under copyright. With multiple copies of the book available in the public domain, accessibility is enabled. But in our hypothetical, at least in situations (i) and (iii), ownership of the physical book will in effect cause the public domain contents to be inaccessible. As such, the role of the public domain as envisaged under the copyright laws would seem to be impaired.
So what are the solutions? One is for the public, through the agency of the legislator, to enact suitable legislation to ensure that ownership of the tangible right in the book does not prevent access to the contents, indeed even exercising something like the power of expropriation/eminent domain to take the tangible property from its owner in the name of the public. Either option challenges basic notions of property ownership, and with respect to expropriation, there is arguably something distasteful about relying on such a measure in order to make the contents publicly accessible.
This leads us to suggest an alternative approach, based on the idea of a norm-based set of behaviors even in the absence of an applicable legal (IP) framework. From the seminal research on the norm-based behavior of French chefs, we see that such a system tends to occur within a small, homogeneous population (such as French chefs, and arguably, the world of rare books). Second, forms of accessible conduct are informally agreed upon.
For instance, regarding French chefs, such conduct focuses on agreement that that no chef may copy in exact form the innovative aspects of the recipe of another chef; if a recipe is disclosed to a fellow chef, that chef may not pass on the contents of the disclosure without permission; and chefs must give credit to the developer of a significant improvement or information regarding recipes.
This Kat is not aware of any study that has examined norms-based behavior with respect to the acquisition and possession of rare books, especially in light of the potential impairment to the public domain, as set out in the hypothetical. Ultimately, perhaps, the issue comes down to one's personal choice and whether one sees an element of mission when engaging in rare books. Or perhaps there are such norms, not generally known, within certain circles. Kat readers?
By Neil Wilkof
Picture on upper right by William Hoiles and is licensed under Creative Commons Attribution 1.0 Generic license
Picture on lower left by Shruti Mukkhtyar and is licensed under Creative Commons Attribution-Share Alike 4.0 Internationa license
Wimbledonis in full swing in sunny london! Yesterday we saw Angelique Kerber take the women's title and the men's final concludes this afternoon between Anderson and Djokovic. Defending champion Roger Federer only made it to the semi-finals, but no doubt keen IPKat readers would have noticed something different about his appearance when he stepped out onto Court this year.
Love Match Credit: Bounder
Jacqueline Pang kindly provides us with the details of Federers new sponsorship deals and the trade mark issues involved. Jacqueline has worked as a trade mark attorney at Mewburn Ellis for the past 7 years. She is a big Federer fan but claims to hopeless at playing tennis... so she's sticking to the IP Court!
When Roger Federer stepped out onto Centre Court at Wimbledon this year as defending champion, there was a striking difference in his appearance: in place of the well-known Nike ‘swoosh’ on his shirt was a bright red UNIQLO logo.
Federer signed a deal with the Japanese brand after his two decades-long partnership with Nike came to an end earlier this year. However, there are still some outstanding issues. In his first round post-match interview he accepted that the RF logo that is associated with him is still ‘with Nike at the moment’.
In particular, Nike Innovate C.V. and Nike, Inc. are recorded as the owners of a number of trade mark registrations around the world for the logo (see here), predominantly covering class 25 goods. Presumably Nike also owns the copyright in the logo. On the face of it, they are therefore in a strong position to continue exploiting the mark and to stop third parties, including Federer and Uniqlo, from using it or a confusingly similar mark for clothing and related goods.
However, EU law provides for an 'own name defence' to trade mark infringement actions, provided the use of the name is 'in accordance with honest practices in industrial or commercial matters'. It is, however, questionable whether Federer would be able to successfully rely on it should he decide to press ahead with use of the RF logo or a confusingly similar mark without first resolving the situation with Nike. Firstly, it seems doubtful that Federer's use in these circumstances could be considered in line with 'honest practices'. It is also unclear whether the defence would stretch to cover the initials of one's name as opposed to a full name. Further, the rationale behind the defence is to prevent trade mark owners from prohibiting others using their own names to identify themselves; it seems unlikely to apply in the context of commercial transactions. Happily for Federer, he owns the trade mark registrations for his full name and so they are not in dispute.
There are echoes here of a line of European case law concerning fashion designers, notably Elizabeth Emanuel, who famously designed Princess Diana’s wedding dress, and Karen Millen. Both sold their eponymous businesses and were later prevented from using their own names in starting new ventures. Although those cases had different factual circumstances, they nevertheless reinforced the general principle that the same name can be separated into personal and commercial spheres, and that a name that has been used commercially is an asset that could be negotiated over and traded like any other good.
As always, much will depend on the contract between Nike and Federer. It may, for example, provide for how the ownership of the registrations and any goodwill in them would be determined upon termination. This episode also provides a lesson in the negotiation of contracts. Federer first signed with Nike in 1994, when he was a fresh-faced 13 year old. Few would have dreamt that he would go on to win 20 Grand Slam titles (and still counting) and be considered as one of the greatest players of all time. He has since become a brand in his own right. Clearly, when negotiating and drafting agreements parties should consider possible future scenarios and try to provide ways of dealing with them. Further, after an agreement comes into force, parties should continue to review it once in a while to see whether the terms remain appropriate or need re-negotiating or updating to reflect changed circumstances. This is particularly pertinent when the brand in question is a name, alias or nickname.
In his interview Federer seemed confident that the RF logo ‘will come to me at one point’. This may suggest there is indeed provision in the contract for the rights in the brand to be assigned to him or that talks are already under way. Alternatively, it may be a shrewd move to very publicly apply pressure on Nike and make sure that ‘sooner rather than later, Nike can be nice and helpful in the process’.
Federer may have realised that ultimately the legal position may prove irrelevant. He sums up the situation as “It’s also something that was very important for me, for the fans really … They are my initials. They are mine.” For his fans, the RF logo and the merchandise on which it appears are a personal and emotional connection with Federer and a public display of support. Nike may be in for a tough PR battle if it wishes to retain legal control of the brand: even if successful, it may be a Pyrrhic victory if it means alienating Federer’s passionate and loyal fanbase on whom the value of the brand presumably rests.