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).

Monday, 30 September 2013

Monday miscellany

Still time to vote.  There's just one short day to go in the IPKat's sidebar poll on what should be done with the Washington Redskins brand: should supporters fight to the death to preserve its iconic status, or should it be condemned as offensive and simply not appropriate in an age in which the feelings of ethnic minorities and indigenous cultures should be prioritised over commercial expediency?  Do take the opportunity to vote -- and tell your friends to do likewise!

President John D. Smith has just informed the IPKat that the third edition of his DON’T File a Patent! ebook is now available here from the Amazon Kindle Store. Says  John, "Thanks to feedback from my patent attorney readers, this is the most accurate and up to date version. The cost for the Amazon Kindle version is just $9.99 and it is an 8.5 MB download".  Adds John: "The ebook has two distinct parts over its 228 pages: Part I (pp 17-89) has 10 Reasons not to file a Patent on an invention. These have all been vetted by patent attorneys. Part 1 also includes USPTO Patent Examiner Miss E.P.’s Third Office Action Rejection for my Storm Stoppers product, so you can see what awaits you when you file a patent. Part II (pp 90-210) has over 100 pages of tips and strategies to encourage inventors to manufacture and sell their products successfully themselves, as I have done".

INTA news 1. This Kat has just learned that the International Trademark Association (INTA) is seeking a professor to be chosen as a Table Topic moderator for the 2014 Annual Meeting, which is to be held in Hong Kong next May. Indeed,
"INTA has expressed interest in reaching out to professors who might be interested in leading Table Topic discussions in a particular area. Table Topics are two-hour discussions limited to ten participants on a wide variety of topics related to trademarks.
Participants at the Annual Meetings register (and pay) in advance for a seat at the table to discuss, and the seats typically fill up quickly, so it can be a good opportunity to generate discussion if you happen to be working on scholarship ideas that might benefit from input from diverse perspectives, particularly from an international audience. A sample of topics from the 2013 Annual Meeting can be found here. If you would like to be considered, please send a short paragraph describing the general topic to me [that's Megan Carpenter, Professor of Law and Director, Center for Law and Intellectual Property at the Texas A&M University School of Law] at, by Tuesday, October 15. INTA does not cover travel expenses".
This Kat, who will be hosting a Table Topic on Coexistence Agreements at the Hong Kong Meeting, strongly urges his academic colleagues to take every opportunity to share their ideas and perspectives with professional and commercial trade marks from all round the world. The INTA Meetings are perfect for any true trade mark enthusiast who is self-financing and/or well-funded and who can dispense with the need to sleep for the best part of a week ...

INTA News 2. The Kat has also learned that the Fifth Annual Trademark Scholarship Symposium will take place during the INTA's Annual Meeting in Hong Kong. According to the Kat's impeccably-placed sources,
"The Symposium will take place on Monday, May 12, 2014 as part of INTA’s Academic Day and is an opportunity for trademark scholars from around the world to present a complete, or near complete, work of trademark scholarship to practitioners and academics. This year we are only selecting 1-4 papers, which will be presented with a practitioner and an academic commentator, rather than in the traditional workshop setting.
Go there! Even if you have
to sell your shirt to get there
Please send an abstract (approximately 300 words) describing a current trademark or unfair competition scholarship project to Signe Naeve at and Jeremy Sheff at by November 15, 2014. The Task Force will then select a maximum of 4 papers to be presented at the Symposium. Selections will be announced by January 1, 2014. For each selected project, a near complete draft of the paper must be submitted by April 1, 2013 [Well, that should eliminate most serious applicants ...]. There is no publication obligation.
Participants will receive complimentary enrolment in the Academic Day program, including an all-professor panel exploring trademarks at the crossroads of trade and culture, a trademark professor luncheon offering perspectives from in-house counsel, a reception and other networking opportunities. Airfare and accommodations are the speaker’s responsibility. For INTA membership and Annual Meeting registration information, please contact Carin Diep-Dixon at

The symposium is organized by the INTA Professor Task Force: Symposium Co-Chairs

· Signe H. Naeve, University of Washington School of Law

· Jeremy Sheff, St. John’s University School of Law


· Barton Beebe, New York University Law School

· David C. Berry, Thomas M. Cooley Law School

· Megan M. Carpenter, Texas Wesleyan University School of Law

· Eric Goldman, Santa Clara University School of Law

· Mark Janis, Indiana University Maurer School of Law

· Susan Barbieri Montgomery, Northeastern University School of Law & College of Business Administration

· Antonio Selas, Law School of Universidad Carlos III [ooh, look, says Merpel -- a token non-US-based representative!  How about a little positive discrimination in favour of the rest of the world?  Or is trade mark scholarship the exclusive prerogative of the Americans? The IPKat would like to see more non-US representation too, but thinks that it's not going to happen till non-US trade mark academics take a more positive view of what INTA has to offer and are far more assertive when seeking funds and time to travel to this very special event].

BOIP takes the plunge.  Today's a big, big day for the European intellectual property community: according to a press release just received by this impressed and excited Kat,
"From 1 October 2013 any business with the Benelux Office for Intellectual Property (BOIP) can be conducted in English. BOIP is adopting English as a third working language in addition to Dutch and French. Our clients and our partners will therefore in the future be able not only to correspond with us in English, but also to register trade marks and designs, file an opposition and conduct all other official business in English.    
BOIP is committed to offering its users a client-friendly, timely and reliable service. With our high-quality service, we were awarded the title of best trade mark office in the world by a leading international IP magazine [this accolade came from the Kat's friends at Managing Intellectual Property -- but that was in May 2010 ...]. We are making every effort to live up to this title by making additional improvements to our services. We have therefore been hard at work getting English implemented as the third working language at BOIP and this will become a reality on 1 October 2013. 
... The procedure has been set up in such a way that henceforth all business with BOIP may be conducted in English, though in procedures in which different parties are involved (oppositions) no one will actually be forced to use English. BOIP can, on request and on payment of the appropriate fee, provide a translation of any trade mark or design registration, which were filed in English. Needless to say, the language rules of the concerned jurisdiction in question shall apply to any legal procedure that may arise ..." 
This Kat is hugely impressed with the BOIP initiative. Merpel isn't: how can BOIP flaunt its prowess by conducting business in English but still neglect the linguistic needs of the Welsh, she wonders ...

Sunday, 29 September 2013

Friend or Pho? No go!

Although Catherine (alias Cat the Kat) is still on a blogging sabbatical, there are times when her repute as the Culinary Kat means that the rest of the team will willingly defer to her, even to the extent of disturbing her tranquillity and begging her to break into print again. So here she is, giving her account of a recent spat that has sent shock waves resounding through London's cosmopolitan restaurant culture [where, it seems to Merpel, the only country whose culinary delights are not greatly in evidence is England itself -- but that's another matter]. Writes Catherine:

When this Kat previously thought of controversies involving soup, she remembered the Seinfeld episodes concerning whether soup was a meal (The Soup) and concerning a certain procedure for ordering soup (The Soup Nazi).  Last week in London there was another controversy involving soup, namely the extent to which a business could or should rely on its various UK trade mark registrations for the word 'pho'.  According to Wikipedia, pho is a popular Vietnamese noodle soup consisting of broth, linguine-shaped rice noodles, a few herbs, and meat.

Since 2005 Pho Holdings Ltd of Central London has registered a number of trade marks containing the word 'pho' for its Pho Cafe business.  These include Pho and device in class 43 (No 2392990), Pho and device in classes 29, 30, 32 and 39 (No 2398772 and Pho word series in classes 39 and 43 (No 2449151).  There are also registrations for PHOCAFE in classes 39 and 43 (No 2594929) and PHO TO GO word series in classes 29 30 32 39 and 43 (No 2524327).

The Guardian reported that last Monday Pho Holdings emailed a small Vietnamese restaurant called Mo Pho. (If you want an alternative meaning, this Kat suggests that you say it aloud) requiring Mo Pho to change its name.  At this point the Foodies took up arms ... and resorted to Twitter to question whether one company should be able to trade mark the national dish of Vietnam. Comparisons were made to fish 'n' chips, pizzas and sandwiches.

The founders Stephen and Juliette Wall later explained on Twitter:

“We made the decision six years ago to trade mark Pho, when Vietnamese food wasn’t as common on the high street and we only had one restaurant, to protect what we hoped would eventually become a successful restaurant business.The trade mark we own simply means only we can operate a restaurant under the name Pho (in the UK) as our restaurant brand name, but of course the word can be used in many other different types of businesses, and in many other ways (descriptively, menus, etc.)  

With plans to grow over the next few years, it’s important to us to maintain the trust of our customers, as well as to protect our name. While we regret that asking other restaurants to change their name is part of the process, we are not, and we would not, ask anyone to shut down, stop operating or change their menu.We’re following IP law to protect our brand, which means we have to ask all restaurants, large and small, to refrain from using the trade mark Pho in their name. And with what we think is a fair amount of time to rename, we know the country’s independent Vietnamese restaurants will continue to do well and serve their local communities.” 

In another Tweet, Pho Holdings Ltd stated 'we haven't TMed pho descriptively, just as our restaurant name. Did many years ago&roll out has been happening, albeit slowly'.

But this cannot be correct.  If one looks at the specification in class 29 for the trade mark Pho and device (No 2398772) one sees that the registration includes 'noodle soups ... prepared products made wholly or principally of any of the above'.

This Kat asks: is Mo Pho infringing Pho Holdings Ltd's trade marks?  As outlined above, Pho Holdings Ltd has only one registration for the trade mark Pho by itself.  However if one looks closely at the PhoCafe website, this trade mark could be susceptible to a challenge on the grounds that it (a) is not used as a trade mark by itself but only in conjunction with the device and (b) is used descriptively to name its 15 varieties of noodle soup.  If such a challenge to the word only trade mark registration were successful, the question then would become: is PHO and device is infringed by MO PHO?  This Kat thinks it probably does not infringe as the two trade marks are not sufficiently similar. 
Unfortunately we will never know for sure.  By Tuesday, Pho Holdings Ltd had given up.   On Twitter it stated:

View image on Twitter
Merpel has heard that earlier this year the Soho House Group obtained trade mark registrations for DUCK SHOP in class 43 (No 2636625), FISH SHOP in class 43 (No 2636627), MEAT SHOP in class 43 (No 2636629) and STEAK SHOP in class 43 (No 2636631).  She wonders how many other examples are there out there?

Saturday, 28 September 2013

Who can be a UPC judge? Thoughts from a UK Patent Attorney perspective

The IPKat team is drawn from a variety of professional backgrounds. However, this particular moggy is a UK and European patent attorney. He has recently been mulling over some issues relating to UK registered patent attorneys in relation to the UPC Agreement.

What has particularly got this moggy thinking today is the question of what judicial office might be open to a UK registered patent attorney. Readers will recall that he posted last week on the call for expressions of interest for technically and legally qualified judges. It seems fairly self-evident that a UK registered patent attorney could fulfil the requirements to be a technically qualified judge ("a university degree and proven expertise in a field of technology" according to Article 15(3) of the UPC Agreement, since the other requirements of Article 15 can apparently be met by training according to Article 2 (3) of the Statute of the UPC [the text of the Statute can be found following that of the Agreement, at the same link]).

But what about being a legally qualified judge?

The key requirement to be a legally qualified judge according to Article 15(2) of the UPC Agreement is that the candidate should possess "the qualifications required  for appointment to judicial office in a Contracting Member State". The IPKat has received from a mammalian correspondent of a different species an argument that UK registered patent attorneys fulfil these requirements.

The Judicial Appointments Order 2008 in combination with Sections 50 and 51 of the Tribunals, Courts and Enforcement Act 2007 renders UK registered patent attorneys eligible for certain judicial and quasi-judicial office.  Is sufficient to allow a UK patent attorney to be a legally qualified judge of the UPC?  What do readers think?

Merpel wonders whether in any event there would be any desire among the UK patent attorney profession to become a legally qualified judge, or whether a UK patent attorney in any case would likely be more interested in being a technically qualified judge. She recalls from the IPKat's earlier post here that technically qualified judges have a wider range of other employment options open to them if they wish to work part time at the UPC.

Commentators on the earlier post have correctly pointed out that Art 149a(2)(a) EPC allows the Administrative Council of the European Patent Office to permit EPO Board of Appeal members to "serve on a European patent court".  The IPKat recalls however that the type of court envisaged when this was inserted into the EPC 2000 would have included non-EU members of the EPC, quite different from what is now planned to occur.  Presumably if the Administrative Council does decide to permit this, then BoA members will in general need to be (part time) technically qualified judges - if they seek to be (part time) legally qualified judges then they will additionally require individual dispensation from the Administrative Committee of the UPC according to Article 17(2) of the UPC Agreement.

Another question that this Kat has been mew-sing, which is perhaps a wider point, concerns rights of representation at the Unified Patent Court. It seems clear that a UK registered patent attorney is "authorised to practise before a court of a Contracting Member State" [the Patents County Court]  as required by Article 48(1) of the UPC Agreement, and therefore that a UK registered patent attorney is a "lawyer" under the terms of the UPC Agreement. Therefore, UK registered patent attorneys should have the right to practise before the UPC without any further qualification.  This Kat has, however, noticed that the rules in this respect (in particular rule 286 on evidence of the right to practice and rule 287 on privilege) seem to confuse the issue which is clear in the Agreement and employ definitions stemming from Swedish practice ("persons possessing a law degree (jurist) who are authorised by the Swedish Patent Attorneys Board or equivalent body in a Contracting Member State") which are not applicable to the UK.  This Kat hopes that these issues will be sorted out in the next draft of the rules of procedure.

Friday, 27 September 2013

FTC Seeks Public Input On Investigating PAEs

Nearly ready for a cat nap...
after commenting on the FTC.
This Kat was preparing for an early start to the weekend when she noticed this article in the New York Times describing an announcement by the US Federal Trade Commission (FTC) that it is seeking public input on a proposal to gather information about the internal operations of Patent Assertion Entities (PAEs).  The FTC would use the information it gathers to determine whether PAEs engage in anti-competitive behaviour in connection with which the FTC would seek formal redress. 

The FTC explains,
"[t]he Commission, however, has unique Congressional authority to collect nonpublic information, such as licensing agreements, patent acquisition information, and cost and revenue data, which will provide a more complete picture of PAE activity. 
Because the Commission believes a broader study will enhance the quality of the policy debate surrounding PAE activity, it proposes information requests directed to the following questions:
  • How do PAEs organize their corporate legal structure, including parent and subsidiary entities?
  • What types of patents do PAEs hold, and how do they organize their holdings?
  • How do PAEs acquire patents, and how do they compensate prior patent owners?
  • How do PAEs engage in assertion activity (i.e. demand, litigation, and licensing behavior)?
  • What does assertion activity cost PAEs?; and
  • What do PAEs earn through assertion activity?
"To understand how PAE behavior compares with patent assertion activity by other patent owners in a particular industry or sector, the FTC also proposes sending information requests to approximately 15 other entities asserting patents in the wireless communications sector, including manufacturing firms and other non-practicing entities and organizations engaged in licensing."
[This Kat suggests that the FTC can learn the answers to at least some of its questions by listening to "When Patents Attack", a podcast produced by National Public Radio's This American Life, previously highlighted by the IP Kat here.]

Any readers wishing to submit comments to the FTC on this matter may do so using this link.  Comments are welcomed from interested persons, US or foreign.  [Merpel wonders if comments from felines are also welcomed...]

This FTC proposal was inspired by President Obama's directive to US federal agencies to “protect innovators from frivolous litigation” by developing strategies and undertaking intiatives that disincentivize patent troll behaviour. 

Thursday, 26 September 2013

Samsung: Cooperation is Key

Working together
for the
greater good
This morning, this Kat read with great interest the AmeriKat's post on the open letter, initially published in the New York Times, co-signed by Apple, Samsung, Microsoft, Google and other "strange bedfellows," addressing concerns in respect of the Unified Patent Court's Rules of Procedure. 

Apparently, strange bedfellows might also make useful partners in business development and revenue growth. Samsung and LG have come to the realization that patent litigation between the companies is a costly distraction from their core businesses operations.  They have thus agreed to end their courtroom battles immediately.  The companies have announced that, rather than compete with each other, they will work together to best their competitors in China, Japan and elsewhere.

According to Samsung, it has
“come to an agreement with LG Display to focus on finding ways to cooperate on patent matters though discussions, and to immediately drop lawsuits over liquid-crystal displays and next-generation organic light-emitting-diode display patents.”
LG, in its own announcement, acknowledged that "[w]hat's most important for both of us is upgrading our competitiveness globally.”

This Kat thinks that the funds that would have been spent on patent litigation are certainly better used for R&D, and she applauds the companies for their determination to work together [or, at least, to avoid fighting with each other]

The IP Kat hasn't heard any other details of this arrangement yet.  Are any readers aware of the extent to which the companies might cooperate on new innovations?  Or is this cooperation mainly limited to an agreement to stop suing each other?

Apple, Samsung and Google unite in expressing industry's concerns on the UPC's Rules of Procedure

The AmeriKat awakes late at night to the sound
of a 3-page letter in her e-mail inbox....
Late last night, with less than a week to go before the deadline for the public to submit their comments on the Unified Patent Court's Rules of Procedure, the New York Times received a short letter. It is not unusual for the Times to receive letters, but it was unusual to receive one that was co-authored by some strange bedfellows. Only a matter of great importance could ever unite the likes of Apple with Samsung. And, indeed, it was a matter of great importance - the Unified Patent Court.

Authored by numerous Goliaths of Silicon Valley and beyond, including Google, Microsoft, Intel and Cisco, the open letter stated that, although they appreciated "that Europe has long worked towards a unified patent system", there were two aspects of the latest (15th) draft of the Rules of Procedure that may undermine the benefits of a unified system by creating opportunities for abuse. No prizes in guessing that the two aspects were bifurcation and injunctions.

The bifurcation complaint is well-rehearsed by this blog and others, but it goes something like this. In some jurisdictions infringement and validity of a patent are heard separately. One court can therefore find a patent is infringed without determining whether that patent is even valid. Defendants can therefore face the bizarre consequence where they are prohibited from selling their product on the basis it infringes a patent which may and is in fact invalid. Because in some jurisdictions infringement trials in a separate court can take a long time (if they happen at all), the period of time that a defendant could be off the market could kill the defendant's market.

The Agreement on the Unified Patent Court, and therefore the Rules of Procedure which is parasitic upon the Agreement, provide for bifurcation. The coalition states in their letter:
"By enabling this unbalanced patent system, the proposed new patent system could undermine, rather than promote, innovation in Europe, as producing companies could develop strategies to avoid European jurisdictions in fear of an unfair litigation system being too advantageous for patent proprietors. Such strategies could include divesting resources from Europe, thus driving genuine innovation elsewhere. And any significant increase in litigation costs would undoubtedly consume company resources which could be better spent on innovation and growth. Manufacturing companies in Europe should not be placed at a competitive disadvantage compared to companies that manufacture in other regions where patent jurisdiction is more balanced.

In order to mitigate the potential for such abuses before the UPC, procedural adjustments to the UPC rules of procedure are needed to provide clear guidance and predictability on how bifurcated proceedings where the validity of the patent is an issue should be handled and to permit defendants in bifurcated cases to more easily obtain a stay of infringement proceedings until a decision on patent validity has been reached."
There are, of course, already rules that should - to some extent - mitigate what has been dubbed "the injunction gap" (i.e the period of time between an infringement decision and decision on validity) by way of Rule 118(3) which provides for either condition subsequent orders or a stay of the infringement proceedings where there is a decision pending a revocation action. However, the application of the mitigating rules is untested, for obvious reasons, which presents an unknown risk to litigants. Will judges decide to bifurcate? Will they decide to order condition subsequent orders?

The second issue is injunctions. Rule 211 of the Rules of Procedure sets out the criteria for the granting of preliminary injunctions. What is a cause of concern for many industry members is that the word "may" is littered about that Rule in relation to the exercise of the Court's discretion. The rule of most concern is Rule 211(2) which states that "in taking its decision the Court may require the applicant to provide reasonable evidence to satisfy the Court with a sufficient degree of certainty that the applicant is entitled to commence proceedings and that the patent in question is valid and his right is being infringed".

Rule 211(3) states that deciding whether to grant an interim injunction "the Court shall have the discretion to weight up the interests of the parties." As the AmeriKat commented as part of her UPC Panel at AIPPI recent Forum in Helsinki earlier this month, "shall have the discretion" is just a fancy way of saying "may". If you may, you may also "not". That is the problem with the Court's discretion in relation to the granting of injunctions under the Rules of Procedure.

Injunctions under the Rules could, if the judge decides not to have any regard to the discretionary considerations, be granted almost automatically with little evidence. What could be an automatic injunction with effect across the 25 Participating Member States (a massive consumer market), becomes a powerful tool but one that could be prone to abuse by Patent Assertion Entities (PAEs). The AmeriKat teased the AIPPI audience in Helsinki with a snippet of this letter on this issue. She can now reveal the full comment from the coalition as follows:
"A rule that does not offer sufficient guidelines on when to grant injunctions will create strong incentives for abusive behaviors and harm the innovation that the patent system is designed to promote.

This will be particularly true with injunctions under the UPC because the UPC injunction power will extend beyond a single country to most of Europe, and it could be used with the intended effect of impeding product sales across the region. This substantial bargaining power to force excessive settlements from companies would, in all likelihood, lead to a rise of abusive litigation before the UPC. Indeed, PAEs have already begun to set up shop in several European countries, drawn by the potential for siphoning more revenue from European companies.

The potential for these types of abuses is not only theoretical. In the United States, litigation brought by Patent Assertion Entities (PAEs), entities whose business model is based solely on extracting settlements through the assertion of often low-quality patents, reportedly cost U.S. businesses $29 billion in 2011 alone and resulted in half a trillion dollars in lost wealth from 1990 to 2010. PAEs’ infringement claims are often spurious or based on invalid patents, as demonstrated by the fact that they prevail in less than 9% of the cases in which their claims are fully adjudicated on the merits. Despite the weakness of their legal claims, PAEs are often highly profitable due to their success in extracting settlements. The lucrative nature of PAEs has led to a rapid rise in U.S. patent litigation. Indeed, PAE litigation now accounts for the majority of all U.S. patent litigation. The diversion of revenues from R&D and patenting activities to pay for escalating litigation costs and excessive royalties is staggering, with no resulting gain to innovation.

To mitigate the potential for abuses of such power, courts should be guided by principles set forth in the rules of procedure to assess proportionality prior to granting injunctions. And PAEs should not be allowed to use injunctions for the sole purpose of extracting excessive royalties from operating companies that fear business disruption."
The AmeriKat, as she stated in Helsinki, has to be fair to the Rules of Procedure Committee - the "may" problem was inflicted upon us and on them by the Agreement (Article 62(2)). The only saving grace for a party, currently, is that a party can argue that court must weigh up the interests of the parties and must take into account the fact that the patentee is a PAE (for example, by referring to the position in granting injunctions under national law when PAEs are involved).

Google, Microsoft, Apple and the likes are of course not alone, many of these concerns were addressed in AIPPI's Position Paper on the Rules of Procedure (click here) and have been and will be addressed by separate submissions by industry and industry associations by the 1 October 2013 deadline.  However, given the prominence of its signatories, it is this open letter that some hope will make the Preparatory Committee (and indeed European politicians who were responsible for the Agreement) take notice of the real concerns that leading global players have about the UPC and the Rules of Procedure.

But perhaps the solution to these concerns does not lie in a change to the Rules (although the AmeriKat agrees that some further safeguards should be added), but  instead lies in the most uncertain of the UPC variables - the judges. As Judge Grabinski commented during the UPC panel in Helsinki, experienced judges will not (and should not) manage a case which could lead to the types of consequences outlined in the open letter.  The question then becomes for these companies, perhaps the fight is not in the Rules themselves (which are necessarily constrained by the Agreement), but in finding and training the judges who will be implementing them (see Darren's post on the call for applicants here).

So with that, who wants to organize the UPC Judges Training Sponsorship Drive? The AmeriKat has a few thoughts as to where we may be able to find some lucrative donors....

Tuesday, 24 September 2013

Copyright dispute meets Chechnya president

When engaged in any blogging activity, one could argue that you always end up with people copying your work without your consent. Such is the life of IP rights on Internet, especially when it comes to photographs, copyrights are hardly respected and it is difficult to always acknowledge of someone’s work by the time you see a picture you wish to use.

This guest Kat, feeling a little homesick recently came across an unusual story involving copyright infringement, presidential blogging activity and sheep from his hometown. 

Here is the story:

On July 24, Dutch mechanical engineer and photographer Herbert Schröer uploaded a picture of several lovely sheep resting above Chamonix’s valley, next to the Mont Blanc. This guest Kat, being originally from this part of the French Alps, believes that the exact location would be near la Flegere”

Early September, another Instagram user decided to take the same photo, add a filter on it and post it on his Instagram account without any mention or authorisation given by the author. This is quite a classical on-line infringing story. However, what is unlikely in blogging is to get your picture copied by the head of a state.

The disputed photograph:
GuestKat's siblings resting peacefully
Razman Kadyrov is the 38 years old head of the Chechen Republic. Besides leading the Republic, he is an avid user of social networks, specifically Instagram on which he has posted more than 1,600 photos and has more than 183,000 followers. This is quite an impressive number considering that Chechnya total population is about 1,200,000. The reason of this success is linked to the use he makes of social media. Indeed the uploaded photographs differ a bit from the usual presidential protocol you would find in other countries. From official meetings to kitties strangulation petting, from heavy lifting to  medieval cosplay, Kadyrov often steps out of the presidential attitude to disclose his best shots.

[Merpel asks: Wasn’t the last French president a bit of a performer too?] He was indeed, but he never published a video of him exceeding speed limits by more than a hundred km per hour.

Since Kadyrov is an Instagram’s Users he has to agree on the service's terms and conditions. It appears that Instagram as a system to claim for IP infringement, namely trade mark and copyright. Once the claim has been made, the response given by Instagram seems to be a simple warning with a demand  to remove the disputed picture. If it happens again, your account can be disabled.

After many people commented on the post to reveal this infamous act, President Kadyrov removed the disputed photograph from his account.

This guest Kat wonders if he did it after a copyright notice was sent by Instagram or because of public opinion. Perhaps he suddenly became aware of the importance of intellectual property rights...

CJEU asked to clarify copyright questions regarding online infringement, transformation and ... exhaustion

Ready for autumn:
Merpel with her bouquet of
newly sharpened pencils
and collection of
latest CJEU copyright
With autumn officially started, it is time to get back to school, buy a "bouquet of newly sharpened pencils" (you got it: it is a quote from one of this Kat's favourite 1990s rom coms) or, if you happen to be a copyright case, probably head to the Court of Justice of the European Union (CJEU). 

In fact, two new cases have just been referred, one concerning the interpretation of Brussels I Regulation in the context of online copyright infringement cases, and the other very interesting issues concerning transformative use and exhaustion of the distribution right under EU copyright.

Case C-441/13 PEZ EJDUK: intention to target in online infringement cases

This is a reference for a preliminary ruling from apparent photography-loving Member State Austria (also the Painer case was an Austrian reference). As explained by the UK Intellectual Property Office (IPO), this case concerns a claim by a photographer based in Vienna (Austria) for infringement of copyright in photographs by a company based in Dusseldorf (Germany). The applicant believes that the Vienna courts have jurisdiction as the website on which the photographs were published by the defendant is accessible in Vienna.

The Austrian court does not appear so sure, and thus decided to seek guidance from the CJEU as to the following:
An 'intention to target' that is probably
cuter than that at stake before the CJEU
'Is Article 5(3) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters [the Brussels I regulation] to be interpreted as meaning that, in a dispute concerning an infringement of rights related to copyright which is alleged to have been committed in that a photograph was kept accessible on a website, the website being operated under the top-level domain of a Member State other than that in which the proprietor of the right is domiciled [Or. 2], there is jurisdiction only

- in the Member State in which the alleged infringer is established; and

- in the Member State(s) to which the website, according to its content, is directed?'

This Kat thinks that some hints as to how this question will be answered may be found in the recent Opinion of Advocate General Niilo Jääskinen in Case C-170/12 Pinckney (Katpost here) and the CJEU ruling in Case C-523/10 Wintersteiger, another reference from Austria, albeit in the context of EU trade mark law (Katposts here).

In any case, if you wish to comment on this reference, just email by 26 September 2013.


Still bearing the legendary
enigmatic "smile"?

This is truly an exciting reference, this time from The Netherlands. The Dutch Supreme Court is seeking guidance as to what extent transformative uses are permitted under EU law, and also - surprise surprise! - issues of exhaustion of the right of distribution.

As explained by the IPO, Allposters used the works of rightholders represented by Dutch collecting society Pictoright by altering and reproducing them on canvas. Allposters argues that the works were significantly altered and disseminated to the public in a different form; therefore Allposters did not infringe the copyright of the rightholders.

An accurate background to the litigation with relevant Dutch legislation and case law is provided by EU Law Radar

The following question concerning an interpretation of Article 4 of Directive 2001/29/EC ('Distribution right') has been referred for a preliminary ruling:

'Does Article 4 of Directive 2001/29/EC (the Copyright Directive) govern the answer to the question, whether the distribution right of a copyright-protected work which has been sold and delivered within the EEA with the consent of the rightholder where the reproduction has been subsequently altered in respect of its form and is again brought into circulation?'

The controversial ruling in Case C-128/11 UsedSoft has left many with an uneasy feeling, certainly awaiting an answer to the question whether exhaustion applies to digital subject-matter other than software (see Katpoll here). Although the Dutch reference appears concerned with works in more traditional (analogue) formats, the CJEU might shed some light also in respect of digital works.

If you would like to comment on this case please email by 30 September 2013.

Software patents in New Zealand and Australia: a little clarification

From Matt Pini (a partner in the Australian bit of Marks & Clerk) comes an expression of grave concern that the law in New Zealand concerning that patenting of computer software has been misunderstood. Software patents have not actually been banned, despite some excitedly explicit headlines to that effect (see eg CBC here, ZDNet here and Ars Technica here). Explains Matt:

The restriction on patenting computer-related inventions is qualified to the extent of proposed clause 10A of the recently-passed NZ Patents Bill [or Act? See Katnote below] which clearly states that a computer program, as such, is not to be considered an invention, but it will however be possible to obtain patent protection for a computer program if the inventive contribution lies outside of the computer or if the contribution affects the computer itself but is not dependent on the type of data being processed or the particular application being used. More obviously for readers, a blanket ban on patenting computer-software related  inventions would hardly be considered a boost for innovation in most modern countries. Moreover, the quote of Paul Matthews (chief executive of the Institute of IT Professional’s in New Zealand) seems to fall squarely within numerous existing patent laws around the world to hold the view, as stated, that 
“The patents system doesn't work for software because it is almost impossible for genuine technology companies to create new software without breaching some of the hundreds of thousands of software patents that exist, often for very obvious work.”  
Current patent laws based on hundreds of years of legislation and case law have provisions for denying or revoking patents for “obvious work” so the validity of any such patents would be on shaky ground.  To say that hundreds of thousands of such shaky software patents are granted and enforceable is to overlook the evolving practices and attitudes of many Patent Offices spending much time and effort over many years now to improve the standards of and resources for examination.

Furthermore, it is noteworthy that the new direction in NZ appears to be in complete contrast to the very latest development in Australia.  Whilst the legislature in NZ have adopted a new restriction on computer-related inventions under the newly passed Patents Bill, a decision of the Australian Federal Court on appeal from the Commissioner of Patents has essentially retracted the recent practice of the Australian Patent Office in rejecting computer-implemented inventions.  In RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871, 30 August 2013, Middleton J confirmed that the question of patentability under Australian law is to be guided by the seminal and watershed decision of the Australian High Court in NRDC v Commissioner (1959) 102 CLR 252. In my opinion and that of many other Australian practitioners, NRDC ought to be considered the undisputed authoritative statement of principle in regards to the patentable subject matter standard in Australia.  That the NRDC decision is our test for patentability, regardless of whether a software invention, a biotech advance or pots, pans or a mouse trap is being considered, is a view I have long held since my days in the Australian Patent Office during the introduction of the 1990 Patents Act examining patent applications in the field of digital computing, as well as the odd pot, pan and mousetrap!  The RPL decision reaffirms that software patents are allowable under Australian law provided they are a manner of manufacture or, as put in NRDC, “an artificially created state of affairs in the field of economic endeavour”.
Thanks, Matt, for this explanation.

Katnote: This Kat can't understand whether the legislation in question is a Bill or an Act. According to IPONZ -- the New Zealand Intellectual Property Office -- it's an Act, and this view appears to be supported by the New Zealand Parliamentary Counsel Office where the text of the Act appears in full. However, Matt says:
"There won’t be sections of an Act until the Bill is enacted and the NZ government have not yet given a timetable for that as yet. The official New Zealand Patent Office website states currently that: “IPONZ will announce an enactment date for the Bill and a consultation timetable for the regulations in due course.” Whilst the relevant clauses of the Bill may stay with the same numbering for sections of the Act, that isn’t guaranteed".
The version of the Act on the PCO website has the bit about computer programs at section 11, which states:
11Computer programs
  • (1)A computer program is not an invention and not a manner of manufacture for the purposes of this Act.
    (2)Subsection (1) prevents anything from being an invention or a manner of manufacture for the purposes of this Act only to the extent that a claim in a patent or an application relates to a computer program as such.
    (3)A claim in a patent or an application relates to a computer program as such if the actual contribution made by the alleged invention lies solely in it being a computer program.
    A process that may be an invention
    A claim in an application provides for a better method of washing clothes when using an existing washing machine. That method is implemented through a computer program on a computer chip that is inserted into the washing machine. The computer program controls the operation of the washing machine. The washing machine is not materially altered in any way to perform the invention.
    The Commissioner considers that the actual contribution is a new and improved way of operating a washing machine that gets clothes cleaner and uses less electricity.
    While the only thing that is different about the washing machine is the computer program, the actual contribution lies in the way in which the washing machine works (rather than in the computer program per se). The computer program is only the way in which that new method, with its resulting contribution, is implemented.
    The actual contribution does not lie solely in it being a computer program. Accordingly, the claim involves an invention that may be patented (namely, the washing machine when using the new method of washing clothes).
    A process that is not an invention
    An inventor has developed a process for automatically completing the legal documents necessary to register an entity.
    The claimed process involves a computer asking questions of a user. The answers are stored in a database and the information is processed using a computer program to produce the required legal documents, which are then sent to the user.
    The hardware used is conventional. The only novel aspect is the computer program.
    The Commissioner considers that the actual contribution of the claim lies solely in it being a computer program. The mere execution of a method within a computer does not allow the method to be patented. Accordingly, the process is not an invention for the purposes of the Act.
    (4)The Commissioner or the court (as the case may be) must, in identifying the actual contribution made by the alleged invention, consider the following:
    • (a)the substance of the claim (rather than its form and the contribution alleged by the applicant) and the actual contribution it makes:
    • (b)what problem or other issue is to be solved or addressed:
    • (c)how the relevant product or process solves or addresses the problem or other issue:
    • (d)the advantages or benefits of solving or addressing the problem or other issue in that manner:
    • (e)any other matters the Commissioner or the court thinks relevant.
    (5)To avoid doubt, a patent must not be granted for anything that is not an invention and not a manner of manufacture under this section.
Further reading:
Darren's blogpost "New Patents Act in New Zealand", 29 August 2013, here
A New Patents Act for New Zealand, from Marks & Clerk UK here

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