For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Friday, 29 August 2014

Seriously, did you really assign your IP rights to all members of the group?

How many times have Kat readers encountered, or even been complicit in, the drafting of, an agreement where the licensc or assignment of IP rights purportedly applies to multiple members of the “corporate group” or the like? The impetus for such a provision usually comes from a tax or corporate law source, and it is often found where there is a contribution of technology by one party to the other, such as in the context of an acquisition or an investment. In such a case, the owner of the IP underlying the technology will either license or assign its IP rights to multiple named related entities (this Kat will call them “Named Group”) or, more generally, to the entire “corporate group” (this Kat will call them “Corporate Group”), which is broadly defined and may well span an indeterminate number of entities that are somehow all members of the group. Whatever the reason, such a provision often places the IP lawyer in an awkward situation in attempting to explain to his colleagues the potential problems of such a provision. It is useful to consider further the various circumstances in which such a provision appears and the problems that may arise by virtue of such a clause.

1. The owner licenses the IP to either all members of the Named Group or to Corporate Group—In principle, this arrangement should not pose a problem, since the law contemplates that an IP licence may be either exclusive or non-exclusive. On its face, the licence described here would appear to fall comfortably under the rubric of a “non-exclusive” licence. There are, however, a number of possible pitfalls here.

The agreement can explicitly recite that the licence is “exclusive” (this Kat not discuss here the situation where the licence recites that it is “exclusive” except for the following named entities, and leaves this possibility for perhaps another time). True, one is not bound by the contractual characterization of the licence as “exclusive” or “non-exclusive” and the actual provisions of the licence will prevail. But what happens where the parties draft the licence in terms of an exclusive licence, whereby the only material aspect of the licence that supports the conclusion that it is non-exclusive is the existence of multiple licensees by virtue of their inclusion within either the Named Group or the Corporate Group? If ever put to legal challenge, will the court simply impose the relevant provisions appropriate for a non-exclusive licence, which would effectively require the court to rewrite a portion of the licence as agreed-upon? Or would a court find that the licence provisions are invalid, because they have failed their essential purpose, or have run afoul of a similar contract doctrine?

A second potential problem arises when the licence involves a trade mark and the jurisdiction requires quality control to maintain the validity of the licence. Here, the licensor needs to pay particular attention to which members of the Named Group or Corporate Group (if the licensor can even successfully identify which of them are relevant) are actually using the licensed mark. Even in jurisdictions where there is no formal quality control requirement, the practicality of the situation will place a burden on the licensee to monitor use of the trade mark properly, lest one or more of the licensees is using the mark in a way that does harm to the integrity of the mark, especially when it is part and parcel of the licensor’s brand.

2. The owner assigns the IP to either all members of the Named Group or Corporate Group—This type of provision may pose an even more fundamental problem because transfer (and receipt) of ownership of the IP right is involved. Let’s first take the situation where the grant provision simply provides that the assignor assigns its IP rights to all members of the Named Group or Corporate Group, without further stating the proportional interest granted to each entity. Depending upon the laws of the relevant national jurisdiction, there may be a presumption that the proportional interest received by each assignee is equal. The national jurisdiction may also provide either explicitly or by case law the terms and conditions for the exploitation of the IP right (as well as an accounting to the other assignees for profits obtained) by each of the assignees. Here too the open-ended nature of the entities included within the Corporate Group may pose a difficulty of identification. Also, where the law does not provide an easy way to determine the proportional interest or the right of exploitation for each assignee, uncertainty will prevail and may well require the various assignees to enter into a further agreement to resolve the situation. And did we mention the tax consequences?

Perhaps of more interest is a further clause in the assignment agreement that provides all members of the Named Group or Corporate Group, as assignees, undertake to subsequently designate a single entity from among the relevant group that will be the ultimate owner of the IP rights. A number of possibilities arise. If the assignees do not thereafter designate the ultimate owner of the IP rights, does that invalidate the entire assignment arrangement or does such failure to designate simply mean that each of the assignees as members of the Named Group or Corporate Group becomes the owner of a proportional interest of the IP right? In any event, which part (ies) has a right to seek termination of the assignment for failure to comply fully with its terms, or to the otherwise challenge the assignment?

In a variation, consider that the assignment agreement itself provides the identity of the ultimate owner of the IP rights, while still preserving the initial assignment grant to each of the members of the Named Group or Corporate Group? In such a situation, at least two possible alternatives (there well could be more) suggest themselves to explain the outcome of such a provision: (i) a two-stage assignment arrangement has been created, whereby at the first stage each of the assignees takes ownership, subject to the considerations discussed in the previous paragraph, followed by the later assignment to a single entity; or (ii) the first stage creates a situation where the assignor remains the constructive owner of the IP rights, wherein the members of the Named Group and Corporate Group hold merely a legal right in the IP rights; it is only after the second stage is consummated that beneficial and legal rights are joined in the hands of a single ultimate owner.

For Kat readers who have braved this post until the end, the discussion has been intended to emphasize one overarching point. Absent extremely unusual circumstances, it is advisable to avoid the kind of grants of IP right discussed above, lest uncertainty cloud the outcome of the disposition for all concerned.

The secret life of Hello Kitty

"Hello Kitty: not a cat?" is the striking but -- to this Kat quite unsurprising -- title of an article by Hannah Marsh, published in The Telegraph earlier this week. in relevant part, the article reads (with spellings corrected):

"... D]id you know that Hello Kitty is not a cat, but a young British girl with a twin sister and an entire backstory? Christine R Yano, an anthropologist from the University of Hawaii and visiting professor at Harvard, has spent years studying the phenomenon that is Hello Kitty and her lasting appeal. Speaking to the LA Times, she explains some of the lesser-known facts about the cutesy character.

"Hello Kitty is not a cat," she says. "She's a cartoon character. She is a little girl. She is a friend. But she is not a cat. She's never depicted on all fours. She walks and sits like a two-legged creature. ..."

... She's actually British. She has en entire backstory that sees her living at home outside London with her parents, George and Mary White. Her full name is Kitty White. She has a twin sister called Mimmy White, a cool grandpa called Anthony and a sweet grandma called Margaret. She's a Scorpio. She loves apple pie. As well as her own pet cat, Charmmy, she has a hamster called Sugar, given to her by her friend Dear Daniel."
The reason why this Kat is not surprised to learn that Hello Kitty is not actually a cat is that, many years ago, he did some consultancy work for Express Newspapers, in the course of which the subject of another fictional character arose, Rupert Bear. This nominal ursine (right), despite his ears and facial features, is not a bear at all but a boy (also apparently British) with the face of a bear [a cursory surf of the internet has not yet revealed any source to support this contention but, like Hello Kitty, Rupert behaves in human fashion].  This Kat is fairly certain that there may be others and has a hunch that his readers may be jogging his memory ...

Merpel notes that there is a seamier side to Hello Kitty's existence. Like all valuable intangible assets, she is the subject of a thicket of trade mark registrations.  This is quite normal: while brand extensions can be lucrative, they are most attractive to invest in when the shifting of a popular brand or icon from one product to another is underpinned by legal protection. However, some of these registrations are for quite surprising goods.  For example, Community trade mark EU000103721 (a figurative mark, depicted on the left) is registered for a large number of products that even a pretty imaginative reader would not immediately associate with Hello Kitty.  The list includes:
Class 3 cleaning, polishing, scouring and abrasive preparations
Class 5 preparations for destroying vermin; fungicides, herbicides
Class 8 side arms; razors
Class 9 fire-extinguishing apparatus
Class 11 apparatus for ... sanitary purposes
Class 18 whips
Another of Hello Kitty's Community trade mark registrations, EU003142247 covers some even more unpromising products:
Class 4 industrial oils and greases; diesel oil; gasoline; kerosene; petrol
Class 6 materials of metal for railway tracks
Class 10 artificial limbs, eyes and teeth; tongue scrapers.
Class 12 non-skid devices for vehicle tires.
Class 34 tobacco; smokers' articles.
To the best of this Kat's knowledge, the Hello Kitty portfolio of IPs has not been licensed for use on any of these products, and he doubts that they will be.

Here's one further little-known fact about Hello Kitty: "Goodbye Cathy: Hello Kitty and Miffy settle copycat case", penned in June 2011 by Catherine Lee ("Cat the Kat") and available here, is the all-time most-visited blogpost on this weblog. As of this morning, this post has been visited no fewer than 238,983 times.

Thursday, 28 August 2014

All is Fair (Use) in Love (Lace)

I learned about this interesting fair use case from a tweet posted his week by Eleonora. Thank you @eLAWnora!

On August 25, 2014, Judge Thomas P. Griesa from the Southern District of New York (SDNY) dismissed the copyright and trademark infringement complaint of Plaintiff Arrow Productions against Defendants The Weinstein Company LLC, the producers of the movie Lovelace. The case is TPG Arrow Productions, Ltd. v. The Weinstein Company L.L.C. et al, 1:13-cv-05488.

Plaintiff is a company producing and distributing films. It owns the copyright to the 1972 movie Deep Throat starring Linda Lovelace. It also owns the trade marks “Linda Lovelace,” one for films and the other for adult sexual aids. It also owns the trade mark “Deep Throat” for alcoholic beverages and energy drinks. Defendants produced and distributed the 2013 movie Lovelace, a biopic about the (in)famous actress, starring Amanda Seyfried.

Plaintiff filed a copyright and trademark infringement suit in the Southern District of New York (SDNY) in August 2013 against The Weinstein Company LLC, which produced the movie Lovelace, claiming copyright and trademark infringement. Defendants moved to dismiss.

As explained by the SDNY, “Deep Throat is a famous pornographic film replete with explicit sexual scenes and sophomoric humour.” It has achieved cult status. I have not seen it, but one time I found at a library sale a tattered copy of the autobiography of Linda Lovelace, Deep Throat. I bought it, as I cannot resist a 10 cent price tag. I was not expecting much, but the book is quite interesting because it depicts the story of a woman who was abused by her entourage and forced to play in pornographic movies. The movie produced by Defendants was inspired by this book as it describes Linda Lovelace’s life and the physical and emotional abuse she suffered. It does not contain pornographic scenes or nudity.
She Is Doing Whaaaaaat?

Plaintiff alleges that defendants infringed its copyright by copying three scenes from the Deep Throat movie into their Lovelace movie. Indeed, some scenes of the Lovelace movie show behind-the-scenes accounts of some of the most famous Deep Throat scenes. The court found no infringement, because it was fair use.

The doctrine of fair use, originally created by the courts, is now codified in the Copyright Act of 1976, 17 U.S.C. §107, and provides an affirmative defense to a copyright infringement claim. 17 U.S.C. §107 lists four factors which the courts consider when determining if a particular use of a protected work is fair:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.”

As the determination of fair use is a mixed question of law and fact, the SDNY reviewed and compared both movies to undertake its fair use analysis. Some days at work are better than others.

The SDNY found that Lovelace is “entitled to a presumption of fair use” under the first fair factor, the purpose and character of the use, as it is a “critical biographical work,” and biographies are generally considered fair use. The more important question, under the first factor, is whether the use was “transformative.” In Campbellv. Acuff-Rose Music, Inc., the Supreme Court explained in 1994 that the first factor aims at determining whether the use is transformative, as adding something new, or if it merely supersedes the original work.

Here, the court found that the three scenes added “a new, critical perspective on the life of Linda Lovelace and the production of Deep Throat.” The Lovelace movie is not pornographic but instead focuses on Linda Lovelace’s life and her emotional state while filming Deep Throat. It portrayed her “as an unsuspecting amateur, anxious about her role in the film” and how she was intimidated by her then-husband Chuck Traynor into participating to the film. As such, the Lovelace scenes serve a different purpose than the original, pornographic scenes.

Even if Lovelace is a commercial work, this does not prevent finding fair use. As explained by the Supreme Court in Campbell, “the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”

The second factor, the nature of the copyrighted work, also weighed in favor of defendant, as it was of creative and expressive nature, which provides “a greater leeway… to a claim of fair use” (Cariou v. Prince, Second Circ. 2013 at 709).
Is This Fair Use? 

The third factor, the amount and substantiality of the use, also weighed in favor of the defendants. Lovelace copied or recreated three scenes from Deep Throat but they contained original dialogues and lasted about four minutes, while Deep Throat is sixty-one minutes. Therefore, the SDNY found “that defendants did not copy any more than necessary to achieve its creative purposes.” The purpose of Deep Throat was pornographic while Lovelace is a critical, biographical film.

The fourth factor, the effect of the use on the market, also weighted in defendant’s favor. Courts consider whether the allegedly infringing work harms the market for derivative works for the copyright owner of the original work. Lovelace is a transformative use of Deep Throat as it has a different subject and thus could not supplant demand for the original work.

For all these reasons, the SDNY found that defendants had not infringed Plaintiff’s copyright.

Plaintiff also claimed trade mark infringement and trade mark dilution by blurring and tarnishment because Defendants named  its movie Lovelace and referred to Deep Throat when marketing it. However, the SDNY found no trademark infringement as consumers were not likely to be confused by believing that Plaintiff was involved in the production of Lovelace. The dilution claim failed as a matter of law, as Plaintiff had failed to provide any basis for its dilution claim beyond reciting the law.

The SDNY entered judgment in favor for Defendants and dismissed the complaint in its entirety.

Thursday thingies

Mother knows best
Southampton, alma mater ...  This week's Monday Miscellany excitedly announced that fellow Kat Eleonora was taking up a lectureship in IP Law at the University of Southampton, mentioning a couple of famous IP lawyers who had emanated from this notable establishment. In his excitement he overlooked mention of IP omnivore Trevor Cook (now with WilmerHale) and James Tumbridge (Pillsbury). There are surely others too so, if you are heavily into IP and Southampton is your alma mater [translated by Wikipedia as "nourishing mother"] do let us  know!  Meanwhile, Eleonora's own unique form of intellectual nutrition continues to benefit us all. For the second time in recent weeks, one of her Katposts has been avidly seized upon by leading professional law magazine Legal Week, this time on the question whether taking a selfie inside London's National Gallery [a place where lots of selfies from pre-digital days are exhibited] a copyright infringement? You can read Legal Week's take on the subject here.  Oh, and here and here are a couple of Rembrandt selfies, hanging in that very institution.

Monkey selfie poll.  The 1709 Blog's sidebar poll on the ideal resolution of the copyright issues relating to the now celebrated selfie taken by a black-crested macaque is now close to receiving its 300th response.  At present, marginally more than half those who have participated are of the opinion that there should be no copyright at all in such a work.  This is the position taken by Wikipedia and endorsed by the US Copyright Office. However, there are still four days to go and there is not inconsiderable support for the proposition that copyright should subsist and be enjoyed by what one might describe as the nearest available human.  Do please participate if you have not done so already!

Kat-chats and dialogues.  Next Thursday's Kat Chat between Christopher Rennie-Smith and Darren Smyth about life in the fast lane at the European Patent Office, detailed here, is now pretty well full to capacity. We have however opened a reserve list for people who can come if someone else has to cancel (there are are usually a few on-the-day cancellations as work, illness and unexpected occurrences take their toll) so, if you've not yet signed up there might still be a chance for you.  In contrast, the dialogue on Tuesday 16 September between IAM editor Joff Wild and IP guru Neil Wilkof about the impact of patent litigation on patent values, a joint IPKat-IP Finance blog production which is detailed here, still has spaces available. If you'd like to come, just sign up!

Question 1: "How many
European Courts are there?"
Error of their ways.  The IPKat's friends at the UK Intellectual Property Office (UKIPO) did a bit of a whoopsie last week when they somehow managed to confuse with that tyrannical tiger of a court, the Court of Justice of the European Union with that tired and toothless tabby, the EFTA Court [see "Court in the act: how many European courts are there?", here]. Fortunately. no doubt having read Monday's blogpost, the UKIPO has put matters right, confirming that Case E-16/14 Pharmaq SA v Intervet International is indeed an EFTA Court case which involves some fascinating questions (six in all, of which some are more fascinating than others ...) involving marketing authorisations for veterinary medical products upon which supplementary patent certificates for patent term extension may be based.  Better still, the closing date for interested parties [proprietary drug manufacturers, their generic competitors and pet owners, says Merpel] to make their comments, thus indicating to the UK government what position it should take on the questions, has been extended from tomorrow, 29 August, to 4 September.  Thanks, UKIPO, says this Kat: you've done the noble thing.

PAEs: do they come in
peace -- and should they
go in pieces ...?
Around the weblogs.It isn't really a blog, but Way Better Patents looks and feels like one. Here, on "Let the Dance Begin: the FTC PAE Study is On", Arleen Malley Zank writes on the fact that, in the US, the Federal Trade Commission has received the go-ahead for a major review of patent assertion entities: the budget allows for nearly 30,000 person-hours between now and the end of August 2017 to examine the impact of PAEs on the IP monetisation ecosystem (katpat to Nigel Sywcher for unearthing the link).  Elsewhere, a couple of new books have been given the once-over: PatLit opens the covers of the latest England and Wales IP litigation thriller, Intellectual Property Enterprise Court: Practice and Procedure by Angela Fox, while Art & Artifice ponders a slim but subtle new title, Comic Art, Creativity and the Law, a decidedly US-pitched tome by Marc Greenberg and none the worse for that.   IP Finance asks some questions about Singapore's imaginative IP ValueLab, while the 1709 Blog's post on Portuguese proposals to expand the scope of that country's private copying levy indicates that this notion is not universally welcomed.

Wednesday, 27 August 2014

The Blue Jay Trade Mark Battle Commences...

New Billy Bluejay
(U.S. Application Serial No. 86067719)
A cross-border trade mark dispute arose late last week when Canada’s only Major League Baseball team, the Toronto Blue Jays (Blue Jays), filed a Notice of Opposition (Proceeding No. 91217791) at the U.S. Trademark Trial and Appeal Board against a design trade mark application of a bird head in International Class (IC) 025 for Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms (Serial No. 86067719; the “Application”). The Application, owned by Creighton University—a small university in the U.S. mid-west (Omaha, Nebraska to be precise), depicts a new version of the university's sports mascot Billy Bluejay, which has been in use since October 9, 2013. The Blue Jays assert in their notice that Creighton’s new Billy Bluejay logo creates a likelihood of confusion (15 U.S.C. §1052(d)) with several of the Blue Jays’ prior-registered U.S. marks including Registration Nos. 4314074, 4314078, and 2619938 to name a few (collectively, “Registered Marks”).
Toronto Blue Jays Logo
(U.S. Registration No. 4314078)
Although news reports mentioned that Creighton representatives were in negotiations with the Blue Jays to resolve this trade mark dispute, some recent reports also show that Creighton may dispute the Blue Jays’ opposition claims. As reported in the Globe and Mail, Creighton’s general counsel James Jansen stated that, “there’s nothing that should confuse Creighton University with the [Blue Jays]” and that the Application’s design is a “remake” of Billy Bluejay, which has had multiple variations since it was chosen as Creighton's mascot in 1878. He further commented that “I don’t know how many different ways you can depict a bluejay head.”  
If the Application’s design is considered a remake of prior variations of Billy Bluejay dating back to the 19th century, Creighton may claim that the Application’s logo obtained common law protections well before the Registered Marks’ first use in commerce or even the Blue Jays' founding in 1977. This may allow Creighton to claim priority trade mark rights to the Application (15 U.S.C. §1057(c)15 U.S.C. §1052(d)).
Old Billie Bluejay
However, an examination of the Application and previous variations of Billy Bluejay shows that unlike Mr. Janson’s assertions, there are actually multiple ways to depict a bluejay head. Unlike the Application’s navy, light blue and grey coloring of Billy's head, previous Billy Bluejay images show Billy colored royal blue with yellow eyes and beak (no to mention he is wearing a white jumper!), which would likely be considered substantially different from the Application's depiction of Billy. Beyond these substantial differences, Creighton claims in the Application that their first date of commercial use of the new Billy was in October 2013—likely preventing the University from arguing that Creighton has prior use rights in the Application.
Absent priority, Creighton will likely have to show that the Application does not cause a likelihood of confusion with the Registered Marks. This will be determined based on the multiple factor likelihood of confusion test laid out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Although any of the ten factors of this test may determine the outcome of such an assessment, one of the most contentious factors will likely be the similarity of the Application and the Registered Marks in their entireties as to appearance, sound, connotation and commercial impression. See, e.g. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103 (C.C.P.A. 1976); TMEP § 1207.01.
(U.S. Registration No. 3080408)
Within this factor, one of the most contentious and highly subjective evaluations will be the similarity of the visual appearance of the Application and the design-only Registered Marks due to the Application’s design-only status. In evaluating the likelihood of confusion between design marks, the similarity of the marks must be decided primarily on the basis of visual similarity. In re Vienna Sausage Mfg. Co., 16 U.S.P.Q. 2d 2044, 2047 (T.T.A.B. 1990). Although the Application and the main design-only Registered Marks have triangular shaped bird heads and are depicted in public with similar navy and light blue coloring, most of such Registered Marks have something distinguishable from the Application such as a maple leaf (see above left; Reg. No. 4314078), a large letter J (see left), or a baseball background (Reg. No. 1256175). Further, neither the Application nor the Registered Marks claims color as a feature, meaning that their similar coloring will not be a determinative factor in a likelihood of confusion analysis. However, whether the visual differences between the marks are distinguishable enough in general to rule out confusing similarity amongst the general public remains to be seen.
Further, as has been excellently highlighted by Ms. Mari-Elise Taube in the Trademarkologist, there remains a burning question as to whether the public will be confused as to the source of the Application owner's goods or services. The likelihood of confusion between similar marks in general is not determined on whether people will confuse the marks, but rather whether the marks will confuse people into believing that the marks’ goods or services derive from the same source. Paula Payne Prods. Co. v. Johnson’s Publ’g Co., 473 F.2d 901, 902 (C.C.P.A. 1973); TMEP § 1207.01. Although likely unfamiliar to most European readers, Creighton is primarily known in U.S. sports for its previous mid-major, now major conference college basketball teamthink of a U.K. football club moving from League One to the Championship League or directly to the Premiership, e.g. Hull City A.F.C. but in an amateur status. In contrast, the Blue Jays are a professional baseball team. As raised by Ms. Taube, it may be difficult for the Blue Jays to argue that the general public will be confused as to Creighton's sponsorship or affiliation by the Blue Jays, who play a different sport, in a different league, in a different professional status, and who even originate from a different country.  
Although it is unknown how this dispute will be resolved, it is clear that the fate of bird head sport logos hangs precariously in the balance.

Patent Law in Greater China: a new title

Patent Law In Greater China, edited by Stefan Luginbuehl and Peter Ganea, has just been published by Edward Elgar Publishing as part of its Intellectual Property Law an Practice series, which itself is co-edited by two Katfriends, practitioner Trevor Cook and academic Jo Gibson. Stefan, incidentally, is an attorney at the European Patent Office (Eponia), while Peter lectures and researches in the Interdisciplinary Centre for East Asian Studies of the, Goethe University, Frankfurt. The book is enriched by the choice of a strong cast of contributors, some of whose earlier works this Kat has either read or indeed edited

Having had the opportunity to see this book ahead of publication, when asked to give an approbation of it for the website and back cover, this Kat has to confess that he had some reservations about agreeing to do so. Too many China IP books in his experience have suffered from the three vices, listed in increasing degrees of severity, of being (i) out of date to the point at which they were of more historical than practical value, (ii) often unclear in terms of their description and analysis of Chinese law and its applicability to the sort of problems that regularly beset IP owners whose rights have been (or are alleged to have been) infringed and (iii) dull. In the event, this Kat was pleasantly surprised. He wrote:
"Chinese intellectual property law has been one of the fields in which it has been most difficult to obtain an accurate, reliable and intelligible perspective. The achievement in putting together Patent Law in Greater China is therefore all the more laudable. Chapters from practitioners, administrators, academics and the business world give this work a degree of relevance and immediacy and show how the complex and initially puzzling interplay of law and practice in China and the economies within her orbit can be depicted and understood".
This is how the publishers describe it, in part:
"This book provides a comprehensive introduction to patent policy, law and practice in Greater China [which for these purposes includes Taiwan, Hong Kong and Macau] and will be a go-to book for patent practitioners who have client interests in that region.  Features [include]:
• Introduction to Chinese patent policy.

• Detailed coverage of technology transfer and substantive patent law in China, including prerequisites for protection, exceptions and limitations.

• Practical analysis of patent law relating to three specific fields of invention: employee inventions, biotechnological and pharmaceutical inventions, and software inventions.

• Overview of the patent application and examination procedure, with a particular view on PCT applications.

• Insight into specific characteristics of enforcement mechanisms and jurisprudence in China, including the dual enforcement system, claim interpretation, infringement types, and invalidity procedures.

• Invaluable section on the relationship between patent and antitrust law, including practical realities in the sphere of anticompetitive licensing.  ...
Not listed by the publishers but of potential interest and value to the reader are the book's coverage of design patents and utility models; the text is also replete with references and further reading -- in a wider variety of languages than this Kat can cope with.  The presentation of this volume has a genuine practitioners'-work feel to it, with numbered paragraphs and a handsome font. Well done, everyone!

Bibliographic data: Hardback. li + 469 pages. Hardback ISBN 978 1 78195 483 6; ebook ISBN 978 1 78195 484 3. Price: hardback $230 (online from the publisher, $207). Rupture factor: substantial. Book's web page here.

"Cultivated capsicums!" Peppers resist insect, breeders resist patent

This Kat has received information concerning the publication in a national Dutch newspaper of a double page item calling for crowd-funding of opposition proceedings against a European patent.  The patent in question, granted last year to Syngenta, relates to EP2140023 relating to insect-repellent pepper plants.  Or, to put it another way:

The Bemisia in question is none other than the whitefly, of which there are several varieties (the rather handsome Silverleaf whitefly is shown on the left: don't worry -- the real ones are a lot smaller than this).  What's good news for pepper-lovers is bad news for ladybirds, praying mantises and lacewings, which don't eat pepper in any shape or form but do enjoy tucking in to a juicy whitefly when the opportunity arises.  Too small to eat whiteflies, the Amblyseius swirskii mite (for it is he, or possibly she) will happily go to work on a whitefly egg, though it is not recorded whether this delicacy is preferred when scrambled, lightly boiled or poached. Merpel adds: Bemisia is quite unrelated to another Silverleaf, much respected in IP circles ...

EP2140023 has generated a good deal of interest, not to mention controversy; it has even been the subject of a question before the European Parliament which recites that 34 non-governmental organisations (NGOs) and farmers' and breeders' bodies are united in their opposition to it. So it is not surprising that Bionext (a Dutch organisation of organic farmers and food-growers) should be campaigning against it in the following terms:

Thanks to Google Translate, this Kat can bring you the following information (which you can read in the original Dutch here) about Bionext and its objection to EP 2140023:
BIONEXT is the organization for organic food and farming in the Netherlands. Within BIONEXT working farmers, growers, trade and processing and retailers together to promote organically in the Netherlands and more sustainable. 
BIONEXT is the organization behind Adopt a Chicken, Adopt an Apple Tree and consumer magazine Taste Making. ... 
With the campaign "Heart for biodiversity, no patents on life" asks BIONEXT attention to the trend that more and more natural properties of plants and animals to be patented. EP 2140023 B1 patent is central to the campaign. This patent has been granted by the European Patent Office (EPO) on May 8, 2013. With the patent Syngenta receives ownership over all paprika (and pepper) seeds, plants and -fruits who have a natural defense against whitefly. The patented pepper plants have been developed by a cross between a commercial sweet pepper with a wild pepper the desired property already owned. The insect resistance is derived from Mother Nature through the gene bank freely accessible to every grower and breeder. 
With patents on features of classically bred plants companies such as Syngenta their dominance in the global seed trade. Strengthen Breeders do not have freedom of access to the basic material of plant breeding: plant varieties and wild plants. 
The withdrawal of the pepper-patent would be an important first step in stopping patent classic bred plants. But for a structural solution is a modification of the European Patent legislation is necessary.
Not having a scientific background, this Kat is not in a position to judge whether the patent should have been granted or not. However, it seems to him that there may be something of an oversimplification. Whatever one may think about EPO examiners, they can usually be relied on to spot a piece of killer prior art, such as an insect-repellant wild pepper which is so blatant that NGOs and organic breeders' groups can see it too. And if the patent's claims seek to cover products and processes that already exist in nature, those claims won't be able to prevent anything being done with or to those products that wasn't already available for them to do before the patent was granted. On the other hand, the existence of some respected and rational organisations in the list of those opposing the patent suggests that -- unless they have been afflicted with some collective illusion -- there may be some firm ground upon which their concerns are based.

So can readers of this weblog clarify the position: 
(i) what exactly is the invention? (ii) how does it stand in relation to the prior art? (iii) do the claims cover things that already exist and can be made or done?(iv) is there (a) no problem at all, (b) a problem that the existing law can and will be expected to cope with or (c) a problem calling for legislative reform?
Pig and pepper here
Peppa pig here

Tuesday, 26 August 2014

Television Show Fan Does Not Own Facebook Likes

Jeremy kindly informed me of a very interesting case about the ownership of the “likes” generated by a social media account created by a fan of the television show The Game. Spoiler alert: the fan lost.

On August 20th, the Southern District Court of Florida granted Defendant Black Entertainment Television LLC (BET)’s motion to dismiss in a case where the network was sued by Stacey Mattocks over the control of her Facebook fan page dedicated to The Game television show. The case is Stacey Mattocks v. Black Entertainment Television LLC., 0:13-cv-61582.

This Kat Has to Ask: Is this Alsatian Pinot ? 

 The Game is a dramatic comedy about the lives of professional football players, their wives and girlfriends, and was originally broadcast by the CW Network from 2006 to 2009. In 2008, Plaintiff Stacey Mattocks created a The Game Fan Page on Facebook (the FB Page). According to Facebook’s Terms of Service, an individual may create such page, even if not affiliated with the brand or entity featured there, as long as it is not deceptive and that the page “make[s] clear that the Page is not the official Page of the brand, entity (place or organization) or public figure.” Fan pages are public. The FB Page did not contain any BET-owned or third-party-owned content and Plaintiff did not present the FB Page to be an official fan page.

After The Game was canceled in 2009, Plaintiff nevertheless, according to the complaint, “continued to aggressively promote [it] on the FB Page in hope that a network would eventually pick it up and return it to air.” At the time, the FB Page had over 750,000 “likes.” Plaintiff’s wishes came true when Defendant began producing and broadcasting new episodes of the show in January 2011. Plaintiff alleged in her complaint that this decision was made “due in large part to [her FB Page.]”

BET contacted Mattocks in the Fall of 2010, when the FB Page had about 1.3 Million “likes” and hired her part-time in January 2011 to manage the FB Page. BET then “prominently displayed its trademarks and logos in the top header of the FB Page, encouraged BET’s viewers to “like” the Page, and provided Mattocks with exclusive content, including links to video clips and photographs, to post on the Page.” Plaintiff could chose not to post some material, but posted most of it. The two parties entered into a letter of agreement in 2011 where BET could have access to the FB Page and Mattocks would not lose her administrative rights. All these efforts paid off as the number of “likes” on the FB Page went from around two million to more than six million.

After signing their letter of agreement, BET and Mattocks also discussed full-time employment, but Mattocks suspended BET’s administrative access to the FB Page pending further agreement. BET then asked Facebook to “migrate” fans of the page created by Mattocks to an official FB Page created by BET. Facebook also shut down Mattock’s FB Page. Further, BET successfully asked Twitter to shut down the account Mattock used to promote the series for BET.
I Could Have Been A Contender...

BET informed Mattocks that it had rescinded “any and all rights that may have been previously granted to you directly, implicitly or otherwise, to use BET intellectual property (“BET Material”). You are respectfully directed to cease and desist from using all BET Material in any and all media immediately and further advised that BET expressly reserves its various rights and remedies as copyright and trademark owner in connection with willful infringement of our intellectual property.”

Mattocks sued BET, alleging inter alia that BET wrongfully deprived her of “certain rights” by disabling the FB Page and her Twitter account. She also claimed tortious interference with her contractual relationships with Facebook and Twitter, breach of agreement and conversion of her business interest in the FB Page. Defendant moved for summary judgment. The court granted defendant’s motion on all counts. The court found no tortious inference with a contractual relationship as, under Florida law, the interfering defendant must be a stranger to the business relationship, unless it is done for malicious reasons. The court found that BET was not a stranger to the relationship as it exercised control over both social media accounts. It did not act maliciously either as it had been deprived of “control over its intellectual property on the [FB] Page and how [The Game] was officially promoted there.” The court found that BET acted to have these two social media accounts closed down under “companies’ policies protecting brand owners’ rights.” As for the breach of contract, the court found that Mattock’s material breach by blocking administrative access excused performance of the agreement by BET.

 Mattocks also claimed that BET converted a business interest she had in the FB Page. This interest was all the “likes” on the FB Page which provided her with business opportunities with companies paying her for redirecting visitors to their sites. But the court found no property interest in the “likes” on the FB Page, as ““liking” a Facebook Page simply means that the user is expressing his or her enjoyment or approval of the content.“ As users are free to revoke their “likes” anytime, the court concluded that “if anyone can be deemed to own the “likes” on a Page, it is the individual users responsible for them.“

The case is interesting as it raises the issue of ownership of a social media account. The issue is not novel when the case involves an employer and an employee‘s arguing over the ownership of an account [see here and here], but I believe this is the first time a court had to examine a case where a fan is claiming ownership rights over an account promoting a show, a sports team or an artist (if you know of such case, please let us know!).

The parties in the cases involving an employee and an employer both struggled to prove which party was indeed the source of a particular social media account’s success. In our case, before BET got involved in the FB Page, Mattocks could not, and did not, post any BET-owned or third-party-owned content from The Game. The FB Page got many more “likes” after “official content” was regularly posted and that content, protected by copyright and trademark, undoubtedly played an important role in the FB Page’s success. However, Plaintiff was certainly emotionally involved with the show and that passion may have attracted “likes” of users touched by an individual’s work of love, which may have contrasted with corporate promotional efforts. But, at the end of the day, it is the corporation which owns the IP rights over the content, not the fans.

Sparks fly as sharks fly, but attack on patent validity loses its bite

Sharks in the courtroom are nothing new according to some critics of the legal system, but they are usually referring to the lawyers who appear there, charging inflated fees and ruining their clients.  In this note, occasional guest blogger Paul England (senior associate, Taylor Wessing, and definitely not a shark) gives us the low-down on a recent fairly economical patent dispute in which the only things inflated were the products made by the respective parties.  This is what he tells us:

The Great White Infringer
The recent decision of His Honour Judge Hacon in the Intellectual Property Enterprise Court, England and Wales, in William Mark Corporation & Another v Gift House International Ltd [2014] EWHC 2845 (IPEC) is a very largely fact-based patent action concerning flying fish toys. The first claimant devises and markets toys and is the proprietor of the two patents in suit: GB 2482275 ("275") and a divisional of 275, GB 2483596 ("596").  Both are entitled "Flying shark", the invention of which is described in 275 in these terms: "flight of the toys can be controlled in both horizontal and vertical direction. Most preferably, such flying toys simulate with a high degree of realism movement of a fish in its natural habitat". The most important features of these are:
* 275, claim 1 - this can be summarised as a flying toy, comprising a body that includes a portion filled with lighter than air gas, in order to give neutral buoyancy; a moving surface and tail assembly, coupled to a first actuator and the body portion by an elastic element, such that it can move at variable and different angles to the forward motion of the body portion (ie a moving tail fin, but not necessarily one that propels the fish forward); a second actuator coupled to the body that can move a weight so as to change the pitch of the toy to allow for controlled ascent and descent (ie the fish can point its head down or up);

The patented Mark Shark
* 275, independent claim 9 - concerned with the tail fin assembly for a flying toy this can be summarised as comprising: a base plate with an actuator coupled to a moving surface such that the surface can move as described in claim 1; an elastic element that allows reversible coupling of the tail fin assembly to an inflatable and compressible body portion of the toy; and, configuration to allow application of a compressive force to the body via the elastic element (so as to maintain rigidity between body and tail fin);

* 596, claim 1 – primarily concerned with the movement of the weight to control pitch and provide for the weight element to comprise removable ballast;

* 596, claim 2 – contains the additional feature that "…the toy has a moving surface that is configured to move side-by-side for forward propulsion of the toy".
The defendant also devises toys, and imports for sale in the UK a flying fish known as a “Mega Flier”, which the claimants alleged, infringed its patents. The defendant argued that the patents were invalid.

Our guest blogger has left his mark
Further to an Order of Mr Justice Birss following this action's Case Management Conference, there were two issues to be decided on infringement, one of which was argued: did the defendant's products have an 'elastic element' within the meaning of claim 1 of 275? Judge Hacon held that the defendant's toys had plastic strips which were sufficiently elastic to serve as elastic strips as required by claim 1 of 275.

Invalidity was alleged on grounds of lack of inventive step over two items of prior art:
* Slater – disclosing an anchoring means on a full-sized airship. This comprises a magnet which, when the airship is brought to rest, attaches to an anchoring member on the ground. The airship also has a track support mounted lengthways along the underside of the main body, which allows the airship's gondola to slide forwards or backwards.

* Kinoshita – disclosing a mechanism for propelling a floatable structure filled with lighter than air gas. Such as a flying toy (exemplified by a flying fish in the specification). A powered fin swings to and fro in a vertical plane propelling the toy forward.
The judge held that claim 1 (and dependent claims) of 275 was not obvious over Kinishita, particularly as regards the second actuator and moving weight to control pitch claimed in 275. Further, there was no expert evidence to suggest that it was obvious on the basis of Slater to add a flapping tail to a toy. As regards independent claim 9, there was no evidence that it was obvious to adapt the base plate and plastic strip in Kinoshita to make the plastic strip elastic and have the surface move at variable and different angles. Slater also did not render claim 9 obvious. The result was that all claims of 275 were valid and the defendant's product infringed claim 1.

As regards 597, only Slater was relied upon. The experts accepted that removable ballast was a common feature of such toys and nothing was said to dispute that adapting the moving gondola to a moving weight that controls ascent and descent was obvious. However, the further feature of claim 2 which claimed forward propulsion by the side-to-side movement of the moving surface was not obvious over Slater. The result was that claim 2 of 597 was valid and infringed by the defendant's Mega Flier.
Sharks and Jets here
Law to save sharks here
Shark recipes here

Cold Comfort Farmers Cards: Californians feel New Zealand chill

From Katfriend and long-time respected IP commentator Ken Moon (AJPark) comes news of a 13 August ruling of the New Zealand Court of Appeal (Harrison and Miller JJ) in a software copyright and trade secrets dispute, Karum Group LLC v Fisher & Paykel Finance [2014] NZCA 389, which was heard this June.  Ken takes us through the IP aspects of this dispute as follows:

This case, which relates to alleged copying and misuse of confidential information arising from a system integration and data migration project, is the first New Zealand case on non-literal software copyright infringement. In short, the Court of Appeal upheld the judgment of the High Court that Fisher & Paykel Finance (FPF), in modifying its own credit software, had not infringed any copyright in Karum’s CMS software; nor had Karum proved a claim of breach of confidence through FPF incorporating Karum's trade secrets into its own software.


In 2004 FPF purchased Retail Financial Services (RFS) from Farmers Trading Company, principally to acquire the business of "Farmers Card", a private label credit card. The legacy software supporting Farmers Card, called "CMS" and written in COBOL, had been supplied by California based Karum in 1994. FPF secured a licence from Karum to continue to operate CMS temporarily on RFS mainframes while FPF modified its own credit system software called "Lending" (written in Ingres) to support Farmers Card functionality and allow the two business systems to be integrated.

The court's reasoning

The Court of Appeal noted the duration of the trial in the High Court – eight weeks with numerous expert witnesses – and the complexity of the action due to its technical detail and the ‘novelty of the copyright claim’. The latter remark arose because Karum did not claim its CMS source code had been copied, but rather that FPF had copied non-literal design elements and logic.


• The underlying factor in deciding whether copyright protection could extend to something beyond or more abstract than program code was observed to be the principle that copyright did not protect ideas, but rather protected the expression of ideas. While this was trite law it was reinforced by the TRIPS Agreement, to which New Zealand had been a signatory since 1994.

• Since there was no New Zealand authority on non-literal copyright infringement it was germane to consider English and United States authorities on non-literal software copyright infringement. In this respect the Court of Appeal made reference to the 1992 US case of Computer Associates v Altai which had agreed that, just as in traditional literary works, copyright could in principle extend beyond code to cover 'structure', although only to the extent that it was limited to structure as such and did not extend to any ideas or functions behind the structure – or for that matter at any other level of abstraction. The US Court of Appeals also said 'structure' referred to 'the functions of the modules in a program together with each module's relationships to other modules'.

• The judgments in SAS Institute v World Programming were then considered and the Court of Appeal observed that while the courts of England and Wales [here and, on appeal, here] and the Court of Justice of the European Union [here] had admitted the possibility of copyright protection for non-literal elements such as structure, the copied functionality in that case was not protectable expression.

• The Court of Appeal observed that claims of an analogy between the plot of a traditional literary work and some non-literal element of a computer program had been rejected by the High Court, England and Wales, in Navitaire v easyJet [here] because a computer program has no plot, merely a set of operations intended to achieve desired functionality: that Court had held that such functionality may be replicated precisely in another program because functionality is not protected by copyright as it lies on the ideas side of the line between idea and expression. And nor were business rules or business logic, these not being original to the programmer and in any event falling into the category of functions or ideas.

• In summarising the English and US cases the Court of Appeal concluded that the scope of any copyright in non-literal elements is constrained: a plaintiff would likely find it difficult to distinguish expression from idea or to prove specified elements were not mere functionality or business rules.

• Applying this law to what Karum had claimed were copied by FPF (namely character string displays of payment and delinquency calendars, and the use of 'buckets' for storing aged debt with payments being assigned to the bucket containing the oldest debt), the Court said that the CMS calendars and aged debt module were no more than mere functionality or business rules as the codes used to represent age of debt or payments as a proportion to debt were not distinctive and were not literary works whether taken singly or together.

• In particular, on the facts this case could not be distinguished from the English cases even though -- unlike those cases -- FPF did have access to the CMS source code. The Court categorised this as 'a distinction without a difference' as the CMS source was not copied by FPF.

• The Court concluded its findings on copyright infringement by observing that, for copyright to be infringed, the Copyright Act required that a substantial part of the work must be copied. In this case, even if FPF had copied any original expression in CMS software, it was not a substantial part of the CMS software package.

Breach of confidence

Cats may be difficult to herd, but they respond
well to modern farming techniques if properly fed
• In addition to the calendars and aged debt, Karum's claim extended to FPF's use of what it called 'special codes' and 'intercept codes'. The first were some of the codes used in a customer account to indicate the status of the account, examples being '4' meaning 'account with a collection agency' and '7' meaning 'closed'. Some of the claimed codes were in fact mapped into CMS during the changeover from the Farmers previous software, F-Credit. The Court held all these codes to be non-substantive content: they were simply arbitrary characters representing business rules and did not amount to trade secrets.

• The intercept codes were codes sent with customer statements electronically to the agency retained to print and mail out the statements, such as '54' indicating hold the statement (and not mail it). FPF did use some of these codes because it used the same interface file with the printing agency that Farmers had used. There was no proof that the interface file format was owned by Karum as it was an agreed format worked out with the print agency by Farmers.

• The Court observed that Karum had chosen to sue FPF for breach of confidence in equity and had itself expressly cited the three-step test established in the 1969 English case of Coco v AN Clark (Engineers) [noted here] which had been long adopted by New Zealand courts.
[Merpel adds: the Coco v Clark three-step test is as follows: (i) the information itself must have the necessary quality of confidence about it; (ii) that information must have been imparted in circumstances importing an obligation of confidence; (iii) there must be an unauthorised use of that information to the detriment of the party communicating it.  This is hardly rocket science and it's scarcely even a test, but judges, lawyers and litigants alike have clung to it like limpets for generations, almost to the point of making excuses for it when it doesn't quite fit ...].
It therefore rejected Karum's argument that establishing the necessary quality of confidence for the first step should solely be carried out by interpreting the relevant trade secret stipulations in the CMS software licence (which formed part of the settlement agreement). The Court added that, while the licence clauses should be taken into account, the determination was ultimately a question for the court, taking into account policy considerations as in Yates Circuit Foil Co v Electrofoils Ltd [1976] FSR 345.

• The Court found that there was no disagreement between the parties that FPF was entitled to examine CMS for the purpose of identifying business rules and functionality and that entitlement extended to testing both systems to ensure nothing was lost in translation. In any event the Court agreed with the High Court judge that there was nothing confidential about the codes -- which were arbitrary and trivial, both singly and collectively.

• In assessing the third Coco test, misuse of information to Karum's detriment, the Court confirmed that equity would require a showing of detriment in commercial cases, as in such cases it was the normal measure of fairness. The Court did not accept that Karum had suffered detriment because equity would not intervene where FPF only did what it had the right to do so.

Brief comments

It was not surprising that the idea/expression dichotomy dominated the reasoning for the first time in New Zealand copyright case instead of the usual subsistence and infringement considerations. However, the Court of Appeal rejected the opportunity to elaborate on what protectable expression might lie above source and object code, simply holding that the non-literal elements of software it was presented with fell on the idea side of the dividing line as being either functionality or business rules. 
On breach of confidence it could be argued that the Court of Appeal has raised the bar in New Zealand for the first Coco test in appearing to require a higher quality of confidence than simply that the information be more than mere trivia. The Court has ruled that at least for commercial cases in New Zealand, a showing of detriment is a required part of the third Coco test. It was interesting also that the Court of Appeal recognised that, in the interests of commercial efficiency courts should resist 'the attempts of legacy system owners to leverage intellectual property rights so as to inhibit competition from second comers'. 
There are still a lot of legacy banking systems requiring replacement over the coming few years because of brittle over-modified third generation code and/or mainframe hardware well past its use-by date.
Disclaimer of personal interest: Ken was part of the legal team representing Fisher & Paykel Finance.

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