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

Thursday, 26 April 2018

Celebrating female inventors on World IP Day!

Happy world IP day to all IPKat readers! 

The theme of this years WIPD is "Powering change: Women in innovation and creativity". In a statement, WIPO Director Francis Gurry explains that the day is for "celebrating the talents and accomplishments of women inventors and creators around the globe". On cue, IPKat celebrates some important female inventors in IP that we should all know! 
Mary Phelps Jacob
- the inventor who delivered us from corsets
 
The blogosphere was abound with lists of historical female inventors for International Women's Day 2018, many including:
  • Mary Phelps Jacob (the bra, US111567, 1871)
  • Maria Beasley (life raft, US226264, 1880)
  • Letitia Mumford Geer (one-handed operated syringes, US622848, 1899)
  • Mary Anderson (windscreen wiper, US743801, 1903)
  • Josephine Cochrane (dishwasher, US1223380, 1917) 
  • Stephanie Kwolek (Kevlar, US3287323, 1966)
But what about modern day female inventors? Here is a list of some of this Kat's favorite:

First on our list is Dr Ann Tuskmaoto, co-inventor of a method for isolating human haemopoeitic stem cells (HSCs) capable of regeneration and differentiation in culture (US5061620, 1990). HSCs are adult stem cell that go on to form the red and white cells of the blood. The ability to isolate and grow these cells in the lab has facilitated important research into lymphoma. HSC transplantation is also now a widely adopted lymphoma therapy.

Dr Laura van‘t Veer (Merck), winner of the 2015 European Inventor award and the 2014 European Women Innovators Prize, is a researcher in the field of personal medicine, and part of the team responsible for a gene based breast cancer test that evaluates tumour tissue for the 10-year risk of cancer recurrence (EP1410011). The test allows women to make informed decisions about whether to opt for surgery or chemotherapy. 

In the field of pharmaceuticals, notable inventors include Rachel Fuller Brown and Elizabeth Lee Hazen, co-inventors of the first anti-fungal Nystatin (Mycostatin). Nystatin is the penicillin equivalent for fungal infections, and can be used to protect immuno-compromised (e.g. AIDS) patients and burns victims from devastating fungal infections. Brown and Hazen donated the 13.4 million USD royalties from the Nystatin patent to a nonprofit research foundation: Research Corporation for Scientific Advancement. Brown and Hazen were the first women to receive the Chemical Pioneer Award from the American Institute of Chemists.


Brown and Hazen - inventors of the first anti-fungal

Mandy Haberman, vice chair of IPAN, is the British inventor of the Anywayup Cup (GB 2266045) a baby cup that does not spill, a case study in how to successfully protect and market your invention against large industry players. Haberman successfully took a leading manufacturer of baby goods Jackel International to court for patent infringement (Haberman v Jackel International [1999] FSR 683). Haberman has received frequent mentions here on IPKat (see here).

Ann Lambrechts, winner of the 2011 European Inventor Award and head R&D of Building Products at Bekaert, played a pivotal role in the invention of Dramix steel fibers for increasing the strength and stability of concrete. The Dramix fibers improve the bending strength of concrete by 32%, opening up a new world of exciting architectural possibilities, particularly in the mining and tunnel industries. 


China's CCTV headquarters, Beijing - built with Dramix
Finally, no list of modern day of inventors would be complete without mention of Herta Heuwer, inventor in 1949 Berlin of the famous German delicacy, the curry wurst. Heuwer patented her "chillup" sauce in 1951 (DE721319).

Heuwer - inventor of the curry wurst
The importance of education

In other news this week, the suffragist Millicent Fawcett became the first female to be honored with a statue in parliament square. Millicent Fawcett was also the co-founder of Newnham College Cambridge, only the second college in Cambridge to admit female students (after Girton College, of which this Kat is a proud alumna). A reminder that access to education has not always been straightforward for those with two X chromosomes. 


Millicent Fawcett in Parliament Square
Photo credits: Millicent Fawcett statue by Hayleigh Bosher

Wednesday, 25 April 2018

AG Campos Sánchez-Bordona denies communication to the public in ‘Cordoba’ case

A few months ago, this GuestKat reported about yet another CJEU case that tries to capture the scope of the right of communication to the public within Article 3 (1) of the InfoSoc Directive.

In ‘Cordoba’, the plaintiff’s photograph was freely accessible to all internet users with his consent on a travel-related website. A student of a German school used this picture (without asking for permission) in a written report for her Spanish class. The report was subsequently copied to the school’s servers and from there added to the (public) website of the school.

The plaintiff asked for removal of the image from the school’s website and for damages. The defendant argued that his actions did not constitute a communication to the public. He argued that the image was already available - without technical restrictions - to the general internet public with the owner’s consent. According to Svensson and GS Media, linking to such a work is indeed not a communication to the public. However, the defendant did not merely link to the image and did not merely embed it on his homepage. Instead, he made a copy [the reproduction right is clearly affected here, but not part of the reference] on the server of his own website and made this copy available to the public.

Germany’s highest civil court, the Federal Court of Justice (FCJ) decided to stay the proceedings and referred the following question to the CJEU:

“Does the inclusion of a work — which is freely accessible to all internet users on a third-party website with the consent of the copyright holder — on a person’s own publicly accessible website constitute a making available of that work to the public within the meaning of Article 3(1) of Directive 2001/29/EC 1 if the work is first copied onto a server and is uploaded from there to that person’s own website?”

The AG’s Opinion

Today, Advocate General Campos Sánchez-Bordona issued his opinion on the case (C-161/17, at the time of writing, the english version is not yet available). His conclusion is that the use of the photograph in this case does not infringe the right of communication to the public within Article 3 (1) of the InfoSoc Directive.

To get to this result, AG Campos Sánchez-Bordona first tests whether there was an act of communication. There was little doubt that the defendant’s actions did constitute such an act in a technical sense. The image was copied to their server and published on the school’s public website. However, the CJEU has established a number of additional criteria one being the indispensable role played by the user and the deliberate nature of its intervention. In its referral, the FCJ affirmed that such a role was played by the defendant. It argued that by copying the report with the picture to the school’s server and publishing it on the website, the student and the teacher took deliberate action to provide visitors of the school’s website access to the content in question.

New subjective criteria

AG Campos Sánchez-Bordona disagreed with the FCJ and took a different approach, introducing several new criteria to the test. First, he determined that with regards to the student’s report, the picture only had an accessory nature. According to his reasoning, the student’s intent was to make the report (and with it the picture) available to the (limited) group of people interested in the report, such as other students and family members. The AG said he could not see an intention to enable access for an audience larger than the audience that was reached on the (travel-related) website where the image was first made available. This GuestKat is not completely convinced by this argument. It fails to recognize that there still was a deliberate act on behalf of the student to make the report (and the image) available to the public, by copying it onto the school’s server and public website. And while the actual audience of the school’s website may be smaller than the original website where the image was published, modern search technology like Google’s image search finds such images and makes them accessible to a vast audience. This would remain so even when the ‘original’ image was removed by the plaintiff. Another thought: what if the student had believed that the school’s website had more traffic than the website she took the image from? What if this was actually the case? How can such a ‘soft’, completely subjective element determine whether the use of a work is infringing or not?

The second new criterion applied by AG Campos Sánchez-Bordona is that of easy and ‘universal’ access to the image, which was made available with the owner’s consent. While in GS Media, the work that was being linked to was made available to the public without the owner’s consent, the case was indeed different here. According to the AG, the correct question to ask here was whether the student knew or should have known that she needed permission from the owner to use the picture. Due to the fact that there was no copyright notice below the original picture and that it was accessible without any technical restrictions, the AG concludes that a person who wants to use such a picture for educational purposes could assume the owner does not object such use. This would establish a fair balance between the interests of copyright owners and ‘normal’ internet users that do not pursue occupational interests.

As a third criterion, the AG mentioned the non-commerical character of the use in question. Citing both the Filmspeler and the The Pirate Bay decisions, AG Campos Sánchez-Bordona highlights the use of the term ‘customers’ in both decisions and the lack of such ‘customers’ in the case at hand.

Presenting an interim result at this point, the AG stated that the defendant’s actions did not constitute an act of communication to the public.

Again, this GuestKat is surprised by the AG’s reasoning. In GS Media, the CJEU established that when hyperlinks are posted for profit, it must be presumed that that posting has occurred with the full knowledge of the protected nature of that work and the possible lack of consent to publication on the internet by the copyright holder. The AG reverses this argument and takes it much further. He states that non-commercial users could assume the copyright holder’s consent when works are available online without technical restrictions or a copyright notice. This could put copyright owners in a difficult position because the legality of a use of their work would depend on various ‘soft’ factors - some of them solely in the head of the user. Even if the copyright owner was certain he had not licensed the use in question, it could still be legal depending on the nature of the use (private/educational/non-commercial/commercial) and the intention or belief of the user.

A new public?

Next, AG Campos Sánchez-Bordona established that no ‘new technical means’ were used, since both images were available on regular public websites. Thus, a communication to the public would require a communication to a ‘new’ public. Again looking at the facts of the case, the AG found that both websites address the same ‘general’ internet public. However, the FCJ’s referral expressed doubts with regards to this point. The FCJ argued that a user who uploads an image to his own website and makes it available plays an indispensable role in the making available of this image. The judges further pointed out that allowing such actions by users would interfere with Art. 3 (3) of the InfoSoc Directive, according to which the right of communication to the public shall not be exhausted by any act of communication to the public or making available to the public.

AG Campos Sánchez-Bordona found that even though users could assume the copyright holder’s consent under certain conditions (non-commercial / educational use, no technical protection measures restrict access to the work and no copyright notice next to the work), this would not result in an exhaustion of the right of communication to the public. He expressed that it would be the logical consequence of copyright owners’ actions that users who come across a work presented in such an ‘unprotected’ way would assume it is freely available to the public. The AG added that it could be expected of tradesmen to take appropriate steps to protect their content and to express their will against third party uses in order to prevent false assumptions.

Concluding this part of his opinion, AG Campos Sánchez-Bordona stated that copyright owners would not lose control over their works, because they could request the deletion of such content when they believe the use harms them (para 107). While the opinion does not expressly say this, it introduces a ‘notice-and-takedown’ obligation for copyright owners in situations such as the case at hand. It remains to be seen if such an interpretation of Article 3(1) of Directive 2001/29 provides the high level of protection for authors sought by that directive.

Exceptions of Art. 5(3) InfoSoc-Directive

Even though the FCJ did not ask for the relevance of the exceptions of Art. 5, AG Campos Sánchez-Bordona took them into consideration. Art. 5(3) reads:

“Member States may provide for exceptions or limitations to the rights provided for in Articles 2 and 3 in the following cases:

(a) use for the sole purpose of illustration for teaching or scientific research, as long as the source, including the author's name, is indicated, unless this turns out to be impossible and to the extent justified by the non-commercial purpose to be achieved;”

AG Campos Sánchez-Bordona found that the exception should not be limited to ‘teaching’ and teachers, but to uses by students as well.

He went on to state that the author’s name was sufficiently included in the present case, because the student had written ‘Schwarzaufweiss’ below the picture she used (Schwarzaufweiss was the name, but not the URL, of the website from which the image was obtained). According to the AG’s opinion, both the student and the teacher acted diligently, and they could not be blamed for failing to add the photographer’s name to the picture. This is quite an astonishing assertion, since clearly the author was not named and there are no apparant reasons to believe this was impossible.

The three-step-test

Next, the AG turned to Art. 5(5) and the three-step-test and stated that the relevant use would not conflict with a normal exploitation of the work, since the picture was being used for educational purposes and without a profit-making intention. As pointed out by this GuestKat above, Google’s image-search (and other such services) do not care for the purpose of the use, only for the availability of the content. The wide availability of a work on third party websites may very well conflict with a normal exploitation, as can be seen from the ‘Monkey Selfie’ case.

AG Campos Sánchez-Bordona concludes his opinion by looking at the ‘certain special cases’ criterion of Art. 5(5). While he believes that there may be a very large number of similar cases for students and teachers across Europe, he argues that it is not the number of cases that should be considered, but rather the definition and the contours of such cases, so that all of them could be considered as the same ‘special case’, which shall not unreasonably prejudice the legitimate interests of the rightholder.

We are now waiting for the CJEU’s decision in this case, which can be expected in Q3 of 2018. While in the past the CJEU sided with the AG’s opinion in a majority of cases, this has not always been the case.

BREAKING: "Specifically, precisely and individually identifiable", AG Wathelet adds to the Article 3(a) SPC Regulation wrangle

The AmeriKat working off her impatience while awaiting
this morning's Article 3(a) Opinion
This morning Advocate General Wathelet handed down his opinion in the reference from Mr Justice Arnold in Teva v Gilead (Case C-121/17) concerning Article 3(a) of the SPC Regulation.  The background to the case was summarized by the AmeriKat's friend Steve Baldwin in this post here last January and the full decision of Arnold J can be read here

The question that was referred was the exquisitely simple and direct question of
What are the criteria for deciding whether ‘the product is protected by a basic patent in force’ in Article 3(a) of Regulation No. 469/2009 [the SPC Regulation]?
So what did AG Wathelet say and did he agree with Arnold J's comments that:
"In the hope that it will assist the Court of Justice to provide a clear answer this time, I will again offer my own suggested answer to this question. As discussed above, it is now clear that it is not sufficient that dealings in the product would infringe a claim applying the Infringing Act Rules. It is also clear that it is necessary that the product falls within at least one claim of the basic patent applying the Extent of Protection Rules. In my view, however, it is not sufficient that the product falls within at least one claim of the basic patent applying the Extent of Protection Rules. As explained in paragraphs 39-43 above, and as the facts of the present case illustrate, the scope of protection test proves too much in this context. Accordingly, more is required. 
What more is required? In my view, the answer is that the product must infringe because it contains an active ingredient, or a combination of active ingredients, which embodies the inventive advance (or technical contribution) of the basic patent. Where the product is a combination of active ingredients, the combination, as distinct from one of them, must embody the inventive advance of the basic patent. Thus in a case such as the present, where the inventive advance of the Patent consists generally of the compounds of formulae (1) and (1a), including specifically TD, a medicinal product whose active ingredient is TD is protected by the Patent within the meaning of Article 3(a) because it embodies the inventive advance of the Patent. A medicinal product whose active ingredients are TD and another therapeutic agent such as emtricitabine in combination is not protected by the Patent within the meaning of Article 3(a) because the combination, as distinct from TD, does not embody the inventive advance of the Patent. This is not a question of the wording of the claims of the basic patent, which as discussed above can be manipulated by the patent attorney who drafts it, but of its substance. By contrast, if Gilead (or another inventor) were to obtain a patent for an invention consisting of a combination of TD and substance X which surprisingly had a synergistic effect in treating HIV, then a medicinal product whose active ingredients were TD and X would be protected by that patent since it would embody the inventive advance of that patent. In my view, this interpretation of Article 3(a) would accord with the object of the SPC Regulation, which is to encourage invention in the field of medicinal products by compensating inventors for the delay in exploiting their inventions due to the need to obtain regulatory approval, and not to confer unjustified monopolies. 
For the avoidance of doubt, this interpretation of Article 3(a) would not prevent a patentee from obtaining an SPC in circumstances where the patent protected a single active ingredient A, but the patentee had only obtained a marketing authorisation for that active ingredient in combination with another active ingredient B. In those circumstances, as the Court of Justice held in Medeva, the patentee could obtain an SPC for product A."
AG Wathelet said:
"Article 3(a) of Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products precludes the grant of a supplementary protection certificate relating to active ingredients which are not specified in the wording of the claims of the basic patent. The fact that a substance or combination of substances falls within the scope of protection of the basic patent is a necessary, but not sufficient, requirement for it to constitute a product protected by a patent within the meaning of Article 3(a) of Regulation No 469/2009. 
A product is protected by a patent within the meaning of Article 3(a) of that regulation if, on the priority date of the patent, it would have been obvious to a person skilled in the art that the active ingredient in question was specifically and precisely identifiable in the wording of the claims of the basic patent. In the case of a combination of active ingredients, each active ingredient in that combination must be specifically, precisely and individually identifiable in the wording of the claims of the basic patent.."
The AmeriKat has had little time to digest the Opinion, but with other pending Article 3(a) references in the pipeline, this area is not going to be settled for long.

When fashion sought to protect itself through private collective action: recalling the Fashion Originators Guild


This Kat has found himself preparing a presentation on alternatives to protecting fashion under formal IP regimes. One aspect of this question is whether there Is there any legal space for private collective action against “piracy”? Stated otherwise, how broad a shadow does competition law/antitrust law cast when copying takes place, but the IP laws are not applicable? Consider the tale of the New York-based Fashion Originators Guild.

The Guild was established in 1932 in the teeth of the Great Depression. After the laissez-faire administrations of Presidents Calvin Coolidge and Herbert Hoover, President Franklin Delano Roosevelt, through his New Deal, signaled that solutions for economic ills could be found in collective action. The Guild can be viewed against this backdrop. Its members designed and manufactured medium to high-priced dresses, for sale to retailers, who selected the merchandise from dresses that were shown in various showrooms in New York City. The members claimed that their dresses were all based on "original designs." Under U.S. law, there was no copyright or patent protection. As such, according to the Guild, other dress manufacturers, which were called "style pirates", designed and sold so-called “unauthorized” copies.

The way that the Guild worked was to reach agreement with a critical mass of dress manufacturers, who undertook to refuse to sell to retailers that traded in dresses that the Guild concluded were “copies” of a member’s design. To the end, members would register their designs with the Guild, and a “Piracy Committee” was set up, which was tasked with determining whether such designs were in fact “original”. The Guild then employed shoppers located various places within the US, who would visit shops and report sales of so-called “pirated” designs.

A retailer carrying such an item would be asked to stop selling the item and return to the seller the “pirated” item; if not, such retailer not would be supplied with any more dresses from Guild members, nor would it have any further access to the show rooms. Generally, retailers had to to warrant to their customers that their dress merchandise was not “pirated”. In that connection, the Guild also provided a label of authenticity. At its zenith, the Guild signed nearly 12,000 retailers to the agreement.

Not surprisingly, the Guild’s collective actions were challenged on antirust grounds and, also, not surprisingly perhaps (it was the 1930’s), the Guild’s program was found to be an unlawful collective boycott, first by the Federal Trade Commission and then by both the Second Circuit Court of Appeals and the Supreme Court. Interestingly, though, the two courts based their respective rulings on somewhat different grounds.

The Second Circuit noted that the Guild’s members may have had common law copyright in the dress designs, but such right, if it existed, was extinguished upon “publication” of the designs. As such, the member who may have created the design had no IP right that it could seek to enforce against the alleged pirates. As such, the court ruled that the Guild was an unlawful “combination seeking to exclude outsiders from a market to which they have as lawful access as it has itself." In so ruling, the court rejected the argument that its actions "were necessary to protect the industry as a whole from 'demoralization' and the 'property' of its members from appropriation."

The Supreme Court did not consider whether the Guild had a relevant property right, focusing rather on whether the Guild’s program constituted a horizontal boycott that--
“effect the direct suppression of competition from the sale of unregistered textiles and copied designs."
The Court ruled that it did so effect competition and thereby constituted a horizontal boycott that was illegal per se. The Court went on, ruling that the--
"combination is in reality an extra-governmental agency which prescribes rules for the regulation and restraint of interstate commerce and provides extrajudicial tribunals for determination and punishment of violations, and thus 'trenches upon the power of the national legislature and violates the statute.'" 
But the hardline per se approach under the U.S antirust laws against collective activity ultimately began to soften from the early 1940’s, when these decisions were given. Indeed, this Kat, as a law student, was witness, in Forrest Gump-like fashion, to the challenge that the likes of then Professor Richard Posner and his colleagues at the University of Chicago were mounting in the 1970’s contrary to this view. Against this backdrop, Professor Robert Merges took issue with the Court’s per se hostility in a situation such as the Guild. Merges argued, in his article entitled “Contracting into Liability Rules: Intellectual Property Rights and Collective Rights Organizations", that the—
“Court should have considered whether the Guild tended to enhance economic efficiency,' and whether it did so at a lower cost than a formal property right in dress design" [recalling the attention paid by the Court of Appeal to whether the Guild members had IP rights in their dresses--NJW].
He went on—
"The Court’s rejection not only killed an interesting experiment in alternative intellectual property systems, but it also sent a far-reaching signal that when these systems are based on informal property rights, they are void per se.”
In so doing, the Court had signaled the per se invalidity of the possible pro-competitive effects of a system based on “informal property” rights. Better a “rule of reason” approach that treated each case on its competitive, or anti-competitive merits. Perhaps the arrangements put in place by the Guild in the 1930’s would encounter the same judicial objections today. Still, the critique raised by Merges cannot be rejected out of hand. Private collective arrangements may yield positive benefits, at least in an industry such as fashion.

By Neil Wilkof

Photo on lower left by Prayitno and is licensed under the Creative Commons Attribution 2.0 Generic license

Wednesday Whimsies

Vacancy Announcements

The Motion Picture Association is looking for a Brussels-based Copyright Policy Legal Advisor to advise the EMEA policy team on copyright law matters in the region comprising Europe, the Middle East and Africa, with a particular emphasis on European affairs. Job description and application procedure may be found here.

The Max Planck Institute for Innovation and Competition is in search for a Junior Research Fellow to undertake academic work in a research project on the protection of geographical indications (with the possibility of an independent doctorate), comparative legal analysis of EU-wide and foreign regulations on the protection of geographical indications and their connection to trade marks, as well as market-related questions (e.g. competition and consumer law), and collaboration on empirical studies and data evaluation. Application documents (letter of application, a detailed CV with publications list, and proof of qualification for foreign languages) should be submitted by 31 May to bewerbungen@ip.mpg.de

Education and Training

OxFirst Academy invites readers to a two-day, fully CPD accredited intensive course entitled “Intellectual Property Wealth Generation”, which will be held at Oxford University. The program is designed to enable the inventors to align IP strategy with the goals they have for their inventions, grasp core concepts of invention valuation and target novel markets for the commercialisation of the inventions. Details about the course modules, moderators and registration are available at OxFirst Academy website here.

Beautiful Padova
The Innovation and Technology Law Summer School invites professors, graduate students, research scientists, and professionals, who are interested in the intersection of law and innovation, to Padova on 18-23 June. The session program will focus on the emerging issues in the field of technology law, in particular exploring the interface between computer science and law and the significant role that law plays in promoting innovation. The Summer School is subsidised, with registration limited to 30 applicants. More details here.

The Institute for Information Law, affiliate of the University of Amsterdam, will hold its annual Summer Courses on International Copyright Law and on Privacy Law and Policy. The courses are held simultaneously from 2 to 6 July and will take place in the city center of Amsterdam. Both courses are aimed at private sector lawyers, government officials, NGO staff, academics, PhD students and others involved in matters of copyright law. Enrollment is limited to 25 participants.

Events

European Copyright Society is organising an international conference - “EU copyright, quo vadis?”. The event will take place on the 25 May at Université Saint-Louis, Brussels. It aims to engage a fruitful debate with the European Commission and the audience on the reform of copyright. This debate will also take into account the looming challenges that artificial intelligence poses to various key notions of copyright. Full programs, speaker list and the logistics are here.

The Good, the Bad, and the Unknown
London Craft Week will feature an event on 9 May: Protecting design - what exactly is "artistic craftsmanship"? A multi-disciplinary panel of experts, including designers, curators, commentators and legal experts (see details here), will address this question from a number of viewpoints.  They will also attempt to get to the essence of what it means to put artistic objects into the world today and to try to decipher what exactly we should consider to be ‘artistic craftsmanship’. Sign up here and join the discussion at the Simmons & Simmons London offices in Moorgate.

On 7-8 May in Alicante, the EUIPO will hold its second IP Case Law Conference. The event will be dedicated to substantive and procedural issues surrounding trade mark and design registration. This conference will bring together users of the international IP systems, practitioners, judges, national and international institutions for the two-day event. Click here for programme and registration.

The 9th GRUR meets Brussels Workshop will be dedicated to artificial intelligence, robotics and IP. Join the free event on 5 June from 12.00 to 20.00 at the Representation of the State of North-Rhine Westphalia to the European Union, Brussels. Early registration is highly recommended.

In 2017 and 2018, the Alexander von Humboldt Institute for Internet and Society has organised a workshop series in cooperation with the Haus der Kulturen der Welt to discuss the pressing issues concerning music and copyright law in the digital society. The series is part of the ‘100 years of copyright’ programme of the HKW and it aims to examine copyright law in an interdisciplinary fashion. The events address topics such as the role of collecting societies, the classification of sampling as transformative art or copyright infringement, issues around hosting- and streaming platforms and fair remuneration of authors. More information is provided here.


Image credits: Luca Argalia and Emily Limna


The Wundversorgung decision - proportionality and injunctive relief in Germany

In Dave's view, all nap-time injunctions
were just and proportionate 
Injunction, Injunction, what's your function?  Even for those who are unable to reminisce of the wonders School House Rock, the question still rings true.  Indeed, at this year’s Fordham IP Conference the topic of proportionality of injunctive relief was intensely debated revealing stark differences in different jurisdictions. The AmeriKat's friend, Christopher Weber (Kather Augenstein) reports on a very different view of the role of proportionality in Germany when granting an injunction.  Over to Christopher:  
"It’s well known that at least since eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) injunctions are not automatic anymore in the U.S. They are not automatic in France and many other jurisdictions, either, while Germans and German law view it as a matter of course that the infringement of an absolute right, such as a patent or trade mark, leads to the automatic granting of injunctive relief. When confronted with an allegedly apparent lack of any proportionality in that automatism, Germans tend to shrug and respond that there is the FRAND defense and a claim for compulsory licenses and possibly a grace period. This response implies that these respective tools are more than enough proportionality for our sense of justice, thank you very much. Meanwhile, the quantity of successful FRAND defences and compulsory licenses are rarely mentioned in this context … and a grace period has yet to be granted for e.g. patent infringement.  
Against this background of automatic injunctions, avid IPKat readers are aware that – to make matters worse for infringers - the meaning of cease and desist has come to include also recalling products, at least under unfair competition law. In the decisions “Hot-Sox” (dated 19 November 2015 – I ZR 109/14) and “RESCUE Tropfen” (decision of 29 September 2016 – I ZB 34/15) the Federal Court of Justice (FCJ) found that a cease and desist order includes the recall of previously sold products. The infringer is thus obliged to stop further infringement by companies downstream the distribution chain. These decisions were met and are still being met with a lot of criticism in Germany.

In any case, the relevance of these decisions could have possibly been explained away then by pointing out that there is no separate claim for recall of infringing goods under German competition law. There are, however, such claims under German patent- and trade mark law. Thus, there is a lex specialis argument that injunctions should not include recall under laws which include a special claim for this.


This hope has now been dashed by the recent FCJ decision "Produkte zur Wundversorgung" (Decision of 11.10.2017 – I ZB 96/16) on trade mark law. The trade mark owner had claimed infringement of his trade marks and subsequently obtained a preliminary injunction, which it served upon the infringer. The infringer did not recall the products already delivered to his customers and did not inform his customers about the preliminary injunction that had been issued. The trade mark owner requested an administrative fine, which was set by the Regional Court. The Court of Appeal rescinded the fine and justified this essentially by the fact that the injunction debtor is in principle not responsible for the actions of third parties. The trademark owner appealed this decision to the FCJ – which then applied the reasoning from the previously mentioned decision on competition law.

Thus, there are now aligning decisions on competition law and trade mark law by the I. Senate of the FCJ. Patent law is still notably absent and probably the X. Senate of the FCJ is now the last remaining reason for hope that injunctive relief is again pruned back.

The upshot is:
  • Cease and desist is less flexible in Germany than in other jurisdictions.  
  • It is also broader than previously thought, even in Germany.  
  • On the one hand it can be difficult for the infringer to identify which steps/measures must be taken to comply with an injunction.  
  • On the other hand, it might be difficult for the IPR owner to assess the extent of his/her liability in case the enforcement of the injunction turns out to be unfounded.  
The following part of the decision by the FCJ provides some guidance (numerous references to previous decisions omitted to improve readability):
In particular, an obligation to cease and desist is not merely an act of inaction, but also includes the obligation to take actions to remedy a previously created state of disruption if this alone is sufficient to comply with the requirement to cease and desist. This is the case if the failure to remedy the state of infringement is tantamount to the continuation of the act of infringement. Even if the infringing act giving rise to the injunctive relief is not a permanent act of the debtor, an obligation to refrain from or tolerate an act may include an obligation to perform actions if the debtor can only fulfil his obligation to cease and desist or to tolerate if he also performs actions. If products marked or presented in violation of the law have already been further distributed, the obligation to cease further distribution regularly also includes the recall of products already delivered.

(…)

A positive obligation on the injunction debtor to act does not presuppose that the decision formula already indicates that the injunction debtor is also obliged to act actively. Duty to act to be determined by way of interpretation, the titled duty to cease and desist only supplementary duties to act need not be separately titled.

A title based solely on an omission according to its decision formula may also be to be interpreted in this way, because the reasons for the decision and the grounds for the application or action must be taken into account as admissible interpretation material for this purpose. Such a title may therefore contain the obligation to do positively, which is enforceable according to § 890 ZPO, even if this has not been expressly stated in its decision formula.

The acceptance of a positive duty to act on the basis of the injunction does not violate - as the intervener of the debtor believes - the requirement of certainty regulated in Article 103 II of the Basic Law. The principle of certainty in Article 103 of the Basic Law applies solely to measures of state coercion, but not to proceedings for the enforcement of injunctive relief. Although this provides for means of order similar to criminal law, it is not based on the state's monopoly on the use of force, but serves to enforce obligations under private law between private individuals. The determinability of the scope of the title, also by way of interpretation, satisfies the constitutional requirements for a specific requirement of determinacy under enforcement law. The criminal nature of the means of order and the resulting burden on the debtor already takes account of the fault requirement existing there. Accordingly, a sanction can only be imposed if the debtor is at fault for the infringement.

If, as a result of the interpretation of the instrument of omission, the debtor is obliged to take measures by positive action to eliminate the ongoing state of disruption and to influence third parties, it does not matter whether he has corresponding claims against the third parties in question. The debtor of an injunctive relief is not responsible for the independent actions of third parties. However, this does not release him, within the framework of his positive duty to act as determined by interpretation, from exerting influence on third parties whose actions are of economic benefit to him and for whom he must seriously reckon with - possibly further - infringements. The debtor is therefore obliged to exert influence on such persons to the extent possible and reasonable. With regard to its possibilities of influencing the third party, it is only important whether the debtor has legal or actual possibilities of influencing the conduct of third parties. It is therefore sufficient for him to be able to make an actual impact.

The debtor's obligation is not only justified but also limited by what is possible and reasonable for him. On the one hand, the debtor may not remain inactive if and insofar as the interpretation of the instrument of omission results in an obligation to act positively. On the other hand, however, he does not have to do anything that does nothing to prevent further injuries and is therefore not necessary, nor does he have to take measures to prevent or rectify faults that are disproportionately detrimental to his commercial activity and therefore unreasonable for him - for example towards his customers with whom he has an ongoing business relationshi

(…)
A positive obligation on the injunction debtor to act does not presuppose that the decision formula already indicates that the injunction debtor is also obliged to act actively. Duty to act to be determined by way of interpretation, the titled duty to cease and desist only supplementary duties to act need not be separately titled.
A title based solely on an omission according to its decision formula may also be to be interpreted in this way, because the reasons for the decision and the grounds for the application or action must be taken into account as admissible interpretation material for this purpose. Such a title may therefore contain the obligation to do positively, which is enforceable according to § 890 ZPO, even if this has not been expressly stated in its decision formula.
The acceptance of a positive duty to act on the basis of the injunction does not violate - as the intervener of the debtor believes - the requirement of certainty regulated in Article 103 II of the Basic Law. The principle of certainty in Article 103 of the Basic Law applies solely to measures of state coercion, but not to proceedings for the enforcement of injunctive relief. Although this provides for means of order similar to criminal law, it is not based on the state's monopoly on the use of force, but serves to enforce obligations under private law between private individuals. The determinability of the scope of the title, also by way of interpretation, satisfies the constitutional requirements for a specific requirement of determinacy under enforcement law. The criminal nature of the means of order and the resulting burden on the debtor already takes account of the fault requirement existing there. Accordingly, a sanction can only be imposed if the debtor is at fault for the infringement.
If, as a result of the interpretation of the instrument of omission, the debtor is obliged to take measures by positive action to eliminate the ongoing state of disruption and to influence third parties, it does not matter whether he has corresponding claims against the third parties in question. The debtor of an injunctive relief is not responsible for the independent actions of third parties. However, this does not release him, within the framework of his positive duty to act as determined by interpretation, from exerting influence on third parties whose actions are of economic benefit to him and for whom he must seriously reckon with - possibly further - infringements. The debtor is therefore obliged to exert influence on such persons to the extent possible and reasonable. With regard to its possibilities of influencing the third party, it is only important whether the debtor has legal or actual possibilities of influencing the conduct of third parties. It is therefore sufficient for him to be able to make an actual impact.
The debtor's obligation is not only justified but also limited by what is possible and reasonable for him. On the one hand, the debtor may not remain inactive if and insofar as the interpretation of the instrument of omission results in an obligation to act positively. On the other hand, however, he does not have to do anything that does nothing to prevent further injuries and is therefore not necessary, nor does he have to take measures to prevent or rectify faults that are disproportionately detrimental to his commercial activity and therefore unreasonable for him - for example towards his customers with whom he has an ongoing business relationship."

IP Law Summer School returns to beautiful Cambridge

Downing College
Our friends at KNect 365 wish to let IPKat readers know that, also this year, the IP Law Summer School returns to Cambridge for 4+1 days (13 – 17 August; the first day, devoted to fundamentals, being separately bookable) of discussions and learning in the stunning premises of Downing College.

The agenda includes sessions devoted to substantial IP issues, contractual and corporate matters, policy issues, and enforcement of IP rights.

The other good news is that IPKat readers enjoy a 15% discount on the registration fee, by using the following discount code: FKW82799IPKE.

Click here for further information and registration.

Tuesday, 24 April 2018

Event Report: Women, Coding & the Future

With World IP Day just around the corner on a timely and fantastic theme of "Powering change: Women in innovation and creativity", two weeks ago Bird & Bird hosted the London Chapter of ChIPs' event  "Women, Coding and the Future".  The AmeriKat was sadly unable to attend, but Zoe Fuller (Bird & Bird) reports on the evening:   
"Following the successful launch of the London Chapter of the ChIPs network last year, the eagerly anticipated "Women, Coding and the Future" event took place yesterday evening.  
Amali in action 
Headlining this event was Amali de Alwis, CEO at Code First: Girls, a social enterprise that has taken on the challenge of tackling the thorny issue of why there are not more women in tech and entrepreneurship. Amali took us through some all too familiar statistics which highlight the low numbers of women in these industries. In 2017, for example, female programmers and software developers made up only 3.9% of tech and telco professionals in the UK. Code First: Girls is engaging with this issue by teaching women (but not just women) to code, many of whom for free. Amali explained their 2020 campaign; teaching 20,000 women to code by 2020. Code First: Girls is well on its way to completing that challenge. As a taster of a typical coding lesson, Amali gave a practical introduction to coding principles and the internet, clarifying terms which we all use on a daily basis without really understanding what they mean and explaining how to create a website in under 10 minutes.
Anita Shaw (a patent attorney at IBM) was up next. She outlined the reasons why she chose a computer science degree rather than one in arts or medicine (because of the wide ranging career options coupled with a very tempting sponsorship offer from IBM) and described the chance opportunity which then led her down the patent attorney route. Anita shared her experiences of working in a male dominated environment and highlighted some of IBM's initiatives to improve diversity.
The evening was rounded off by a dynamic panel discussion with many questions and observations from the audience. Amali and Anita were joined on stage by Charlotte Szostek (Machine Learning Engineer/Data Scientist at Ripjar) and Sam Funnell (Adarga Ltd and co-chair of the London Chapter of ChIPs). Issues were identified, experiences shared and solutions proposed.
A lack of role models was mentioned as one particular challenge. Mentoring was generally considered to be a positive experience and need not be limited to the traditional mentoring relationship. Value can be had from both male and female mentors whilst reverse mentoring and peer-to-peer mentoring can be mutually beneficial. The availability of mentoring schemes was noted as a good resource for those who do not have ready access to a mentor.

A debate on possible reasons why the number of women in law dwindles at the senior level led to a topical discussion of gender pay gap statistics. Equality in terms of maternity and paternity leave and flexible working policies were highlighted as potential ways to help level the playing field, with one observation of a gender neutral sabbatical leave being trialed in a work place. It was noted that there seems to be an increasing trend of clients demanding diversity in the legal teams they instruct. These clients would not be fooled simply by having a diverse pitch team which then disappears as the work starts. Perhaps ultimately any improvements in diversity within law firms will be client driven, rather than internally driven.
Brainstorming and network continued with gusto over drinks and canapes.
Changing the status quo will not happen by itself. Obstacles and deterrents need to be knocked down, and the more people involved in making that happen, the better. It was both heartening and exciting to see so many like-minded people buzzing with ideas to improve prospects for women in this industry. ChIPs, and other women-led initiatives, are paving the way to change things for the better for future generations. "   
To find out more about ChIPs and to become a member click here.   To learn more about this year's World IP Day click here.  And to get involved in coding initiatives with Code First: Girls click here

No likelihood of confusion between ‘Bobo Cornet’ and ‘Ozmo Cornet’, says the General Court

In November 2013 the intervener before the General Court (GC), Elka Zaherieva, filed for an application for registration of an EU trade mark (EUTM) for the following figurative sign:


The application was for a trade mark for goods and services in Classes 29 (milk beverages, milk products), 30 (Frozen Yoghurt, confectionary ices), and 32 (Non-alcoholic beverages, milk, chocolate and peanut beverages) of the Nice Classification.

The application was published in January 2014 and was subsequently opposed by Şölen Çikolata Gıda Sanayi ve Ticaret (the party to the GC proceedings) pursuant to what is now Article 46 of Regulation 2017/1001 (EUTMR). 

Based on what is currently Article 8(1)(b) EUTMR, the opposition claimed that the applicant's sign conflicted with the earlier international registration for goods and services in Class 30 (Cocoa, cakes, chocolates, chocolate creams, cakes with cocoa milk and chocolate cream) of the Nice Classification:


The EUIPO Opposition Division rejected the opposition in its entirety. The decision was subsequently appealed to the Fourth Board of Appeal, which also dismissed the appeal.

The decision of the Fourth Board of Appeal

The Fourth Board of Appeal took in fact the view that the signs are visually dissimilar (notwithstanding the word ‘cornet’), in view of the dominance of the figurative elements in the mark applied for, and in particular the element of the rabbit which constitutes a “striking feature” of the applicant’s sign. The mere fact that the word ‘bobo’ and ‘ozmo’ share the same vowel ‘o’ does not make the two marks similar. In addition, the initial element ‘ozmo’ of the earlier international registration and the initial element ‘bobo’ of the mark applied for are likely to have had more of an impact on the overall visual and phonetic impression than the final element ‘cornet’. 

The General Court’s installment

The holder of the OZMO CORNET trade mark appealed the decision to the General Court (GC) on two grounds:

i)        First, holding that the Fourth Board of Appeal had infringed Article 8 (1)(b) (likelihood of confusion in relation to relative grounds for refusal) EUTMR, and
ii)       Secondly, alleging infringement of Article 94 EUTMR, in particular breach of the duty to state reasons and breach of the duty of diligence.

The GC issued its decision (T-648/16) a few days ago.

The present analysis will only focus on the first point, i.e. the likelihood of confusion, as this appears to me the most interesting aspect of the decision.

Likelihood of confusion between BOBO CORNET and OZMO CORNET?

The holder of the earlier trade mark claimed that the Board had erred in its comparison of: (1) the goods; (2) the signs (visually, phonetically and conceptually); as well as (3) likelihood of confusion between them.

The relevant public

The GC started by noting that the goods in question are everyday consumer goods directed at the general public with an average level of attention.

Comparison of the signs

In order to assess the similarity of the goods the Court conducted a global assessment of the signs, bearing in mind their distinctive and dominant components. The average consumer normally perceives a sign as a whole, rather than in its individual components. Only if other components are negligible would the assessment of similarity be carried out solely on the basis of the dominant elements.  

(1) The visual comparison

According to the holder of the earlier trade mark, the dominant element in the mark applied for consists of the terms ‘bobo’ and ‘cornet’ and not the image of the rabbit.

The Court did not accept this and found that the Fourth Board of Appeal had not erred when it found that the representation of the rabbit holding an ice cream cornet is the dominant feature. This is because that representation occupies two thirds of the mark applied for, and therefore constitutes a particularly striking feature of that sign.  

Furthermore, the verbal elements ‘bobo’ and ‘cornet’ framed by a thin black line depicting a cloud in the upper left-hand corner, even though not insignificant, occupy a less prominent position than does the representation of the rabbit holding the ice cream cornet. Among those verbal elements, the initial element ‘bobo’ has a more visual impact than the final element ‘cornet’, given the larger size of its letters in relation to those of the word ‘cornet’.

Therefore, the Fourth Board of Appeal was correct in finding that the initial element ‘ozmo’ is likely to have a greater visual impact than the element ‘cornet’. The word ‘ozmo’ is written in larger letters than the word ‘cornet’ and is framed by a thin black line. 

(2) The phonetic comparison

Also with regard to this point, the Fourth Board of Appeal did not err in finding that the words ‘bobo’ and ‘ozmo’ will have a greater phonetic impact amongst the relevant consumers than the word ‘cornet’. This is because the two words considered together constitute a relatively long combination and it is therefore likely that the relevant public will pronounce only the first word of each of them when purchasing the goods designated by those combinations. This is especially the case for the part of the relevant public with an understanding of the meaning of the word ‘cornet’ which will perceive that word as having a descriptive character and will therefore refrain from pronouncing it when making the relevant purchase.

Kat cornet
(3) The conceptual comparison

The assessment of the degree of conceptual similarity involves consideration of the distinctive and potentially descriptive character of the common elements of the sign at issue in light of the goods or services in question.

In the present case, regard must be taken of the presence of the rabbit holding a cornet which assumes a dominant character in the mark applied for, the absence of any comparable figurative element in the earlier international registration, and the absence of any concept conveyed by the words ‘bobo’ and ‘ozmo’, respectively.

The GC observed that as for the word ‘cornet’, it is correct that the verbal element is present in the two signs. However, that word is descriptive and, as such, is a non-distinctive element. Having regard to the absence of any concept conveyed by the words ‘bobo’ and ‘ozmo’,  and to the presence of a dominant figurative element in the mark applied for – the mere circumstance that that verbal element is present in the two signs at issue cannot in itself introduce even a low degree of conceptual similarity. Therefore there is no conceptual similarity.

Global assessment of the likelihood of confusion

According to settled case law, the existence of a likelihood of confusion presupposes both that the mark applied for and the earlier international registration are identical or similar. Furthermore, the goods or services that are the subject of the application for registration ought to be identical or similar to those in respect of which the earlier international registration has been registered. These conditions are also cumulative (Gateway v OHIM, C57/08 P).

In light of the above , the dominant character of the rabbit holding the cornet in the mark applied for, the visual and phonetic difference between the two marks in question, the words ‘bobo’ in the mark applied for and ‘ozmo’ in the earlier registered mark, and the secondary character of the word ‘cornet’ having regard to its position, size and descriptive character,  the GC found that the Fourth Board of Appeal was correct in finding that there is no likelihood of confusion between the two marks. Hence, registration of the BOBO CORNET sign would not conflict with the earlier OZMO CORNET registration.

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