For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Wednesday, 23 April 2014

Wednesday whimsies

World IP Day 1. This Kat has heard from his friends at Edward Elgar Publishing that, in honour of World Intellectual Property Day on 26 April, they are offering a 35% discount on books published in the Elgar 'Research Handbooks in IP' series. Anyone wishing to take advantage of the discount price just has to email sales@e-elgar.co.uk with the code WIPD35 and give details of the book they'd like to buy. Books published in the series are below:
Research Handbook on Intellectual Property Licensing (edited by Jacques de Werra)

Criminal Enforcement of Intellectual Property (edited by Christophe Geiger)


The Law and Theory of Trade Secrecy (edited by Rochelle C. Dreyfuss and Katherine J. Strandburg)


Research Handbook on the Future of EU Copyright (edited by Estelle Derclaye)


Trade Mark Law and Theory (edited by Graeme B. Dinwoodie, University of Oxford, UK and Mark D. Janis)


Copyright Law (edited by Paul Torremans)


Patent Law and Theory (edited by Toshiko Takenaka).
If you fancy buying any of these books (details of which can be retrieved from the publisher's website here), this is your golden opportunity to save a bit in the process. There's no clue right now as to when this offer ends, but why take chances?



World IP Day 2.  This is just a reminder that this year's theme for World Intellectual Property Day, chosen by the World Intellectual Property Organization itself, is "A Global Passion", this being a celebration of innovation and creativity in the film industry. Via its dedicated World IP Day website, here, WIPO encourages everyone to mark the day in an appropriately festive manner.  You can also visit the World IP Day Facebook page and follow events on Twitter using the #worldipday hashtag.  Once you've exhausted these delightful prospects, if you are a film buff you can tackle Managing Intellectual Property magazine's World IP Day Movie Quiz, which you can find here.  Merpel says she knew all the right answers really, but just couldn't quite remember them all at the time ...



Bucerius links with Hastings. The new summer programme at the Bucerius Law School, Hamburg, Germany, has just been announced. The subject is Transnational IP Law and Licensing and it takes place from 22 July 22 to 8 August 2014. Details can be obtained here. This year's event is a collaboration between the Bucerius Law School and UC Hastings, San Francisco, so not surprisingly it features faculty from both the US and Europe. According to Dana Beldiman (whom you can mail at dana.beldiman@law-school.de with all your questions):
"It is intended for young practitioners and upper division law students who have had some exposure to IP. The topics cover IP concepts from a comparative perspective, as relevant to licensing, as well as the legal and practical aspects of international licensing transactions, including relevant competition/anti-trust law. It concludes with a negotiation workshop, during which small groups of students negotiate the key terms of a technology licence agreement". 


New podcast coming up. Rolf Claessen has emailed the IPKat with the exciting news that he is launching a new podcast, IP Fridays, which you will be able to enjoy here.  IP Fridays, which goes live on 2 May 2014 -- just before the INTA Annual Meeting -- is co-hosted by Ken Suzan and will address all topics related to intellectual property.


What's on at the Red House? The University of Amsterdam’s Institute for Information Law is offering two Summer Courses on International Copyright Law and Privacy Law & Policy, from 7 to 11 July.  The 15th annual International Copyright Law Summer Course focuses on recent developments and broader trends in copyright law. Full details of the course's objectives, faculty and registration are just one click away, here.  As if that's not enough, the 2nd annual Privacy Law and Policy Summer Course tackles privacy law and policy related to the internet, electronic communications and online and social media. Again, full details of the course's objectives, faculty and registration are here.  The venue is  De Rode Hoed (the Red House), on the banks of Amsterdam's historic Keizersgracht. If you can't wait for these goodies, the Information Influx conference is being held the week before the two Summer Courses.


“Quentin, come here!” -- a plea for Tarantino’s copyright litigation in Europe


Feeling depressed for copyright infringement?
Many people may know the sad story of Quentin Tarantino’s ‘Hateful Eight’. For those who don’t, ‘Hateful Eight’ is [or might have been] the American director’s next movie. After finishing the first draft of the script, Quentin confidentially gave the document to six trusted friends to find out how much they liked it. Instead of obtaining feedback like “Sergio Leone would have never used so much tomato sauce”, “Japan again? Seriously?!?” or “cartoons: never considered it?”, the American director found his script leaked on an American gossip website named Gawker. Not exactly “on”, actually: indeed, Gawker just provided the hyperlink to another website that hosts Tarantino’s script on its servers. That threw the director into the deepest sadness. He told to the Deadline:

"I'm very, very depressed … I finished a script, a first draft, and I didn't mean to shoot it until next winter, a year from now. I gave it to six people, and apparently it's gotten out today."

As anyone knows, the best therapy against depression is filing lawsuits, and that is what Quentin did. After racking his brains in vain to identify the bad apple that provided the gossip website with the precious script, Quentin cut the Gordian knot and directly sued Gawker for copyright infringement at the US District Court for the Central District of California. If all this sounds sad, even sadder appears to be the first instance Court’s outcome. As Variety reports, some hours ago Judge john F. Walter held that Tarantino had failed to “adequately plead facts establishing direct infringement by a third party or facts that would demonstrate that Gawker had either caused, induced or materially contributed to the alleged direct infringement”, and that

“nowhere in these paragraphs or anywhere else in the Complaint does Plaintiff allege a single act of direct infringement committed by any member of the general public that would support Plaintiff’s claim for contributory infringement … instead, Plaintiff merely speculates that some direct infringement must have taken place. For example, Plaintiff's Complaint fails to allege the identity of a single third-party infringer, the date, the time, or the details of a single instance of third-party infringement, or, more importantly, how Defendant allegedly caused, induced, or materially contributed to the infringement by those third parties”

"Quentin, come here!"
The US Judge, however, allowed Tarantino to file an amendment for his contributory infringement claim, which should be filed by the first of May. This Kat feels deep sympathy for the director’s cause and for depression in general. As a few days remain before the first of May deadline expires, he thus asked Merpel to wear the sexy black dress of Anita Ekberg in Fellini’s ‘La Dolce Vita’, dive into the Trevi Fountain and launch a heartfelt plea:

MARCELLO QUENTIN, COME HERE! COME TO DEFEND YOUR COPYRIGHT IN EUROPE!”

Quentin, we might not have as many surfers as California [which might not necessarily be a bad thing], but we know how to recognise a blatant infringement when we see one. And this is your case! Although you may not know it, thanks to the wisdom of International conventions such as Berne and TRIPs, you own copyright in your script here as well, and from the very moment of its creation [we have never requested registration for art works -- that sounds such a trade mark/patent thing, and the same word “copyrighted” is banned from the Continent]. Under the national treatment principle provided by those Treaties, Quentin, you will be treated like one of us – or even better, considered the proverbial European hospitality.


Not that Svensson.
It might be true that some of us are not familiar with the slippery approach to indirect liability for copyright infringement that you have in the US. But still, who cares -- we have Svensson! As football soccer passionate, Quentin, you will think this is about the Swedish Anders -- but it is not. Instead, it is a rather seminal decision of the Court of Justice of the European Union (‘CJEU’) rendered in February.  In that ruling, the CJEU implicitly held that providing hyperlinks to works whose diffusion was not authorised by the right holder amounts to a communication to the public via the EU exclusive right called “making available” [provided by Article 3(1) of the Infosoc Directive, if you fancy delving into it] and, therefore, to a copyright infringement [all you need to know about it is herehere and here].

Got it, Quentin? We would take your rights extremely seriously -- no need to “allege the identity of a single third-party infringer, the date, the time, or the details of a single instance of third-party infringement” or to explain “how Defendant allegedly caused, induced, or materially contributed to the infringement by those third parties”. Gawker provided the link to the platform that unlawfully hosts your work. You are not fine with that. That’s enough to establish copyright infringement in the EU -- and no need to worry about fair use!

Not that Pinckney.
And if you come to litigate in Europe, Quentin, also normally boring procedural issues may bring some great fun! In a 2013 decision on jurisdiction for copyright infringements committed online [the case is “Pinckney”, on which see here], for instance, the CJEU said that courts have jurisdiction to hear copyright infringement cases whenever the website providing the infringing work is “accessible within the jurisdiction of the court seised”. As the link to your script that Gawker provides for is accessible from all EU Countries, thus, you just have to choose the EU State you like more, sharpen your [juridical] Hattori Hanzo sword and sue your enemies wherever you feel most comfortable [various and diverging natural scenarios, human beings, cuisines and types of weather and Judges available].

Why getting depressed for negative verdicts, after having had your work ingloriously stolen? Quentin, do the right thing! Quentin, come to Europe!


[Join the petition! #QuentincometoEurope, or #QCtEU or #whatsthematterwithJapan]



Tuesday, 22 April 2014

Pipcu prevails, counterfeiter calamities and now YOU can be a trade mark 'intern' on your smartphone!

With Easter now over, we begin another sacred event: the four day working week. To ease you into it, here is a trio of anti-piracy titbits of news and entertainment.
Pipcu prevails, pirates panic
Pipcu – The City of London Police Intellectual Property Crime Unit – has scored a big hit in the eternal fight against online piracy, having forced a major file-sharing site to shutdown merely by sending it a threatening email, reports the BBC and Torrentfreak. Pipcu, in its own words, is an “operationally independent law enforcement unit dedicated to tackling serious and organised intellectual property crime (counterfeit and piracy) affecting physical and digital goods (with the exception of pharmaceutical goods).” Its focus is on online piracy. It has been running since September 2013, based in the City of London (for those who don’t know this is effectively London’s business centre).
Grumpy cat's expression is actually
a result of feline dwarfism
Pipcu has a number of initiatives underway, including its Infringing Websites Lists (or IWL), a blacklist of pirate sites it will share with advertising networks and agencies to discourage them from placing ads on the sites, thus depriving them of their major (if not only) source of revenue. Controversially, the list is not being made public.
It has also been writing angry emails to alleged infringing websites, including The Sports Torrent Network, a popular sports-focused bittorrent tracker providing links to downloads of football (or soccer to the Americans), basketball and Formula 1 events, amongst others. The emails have threatened police action if the sites do not respond although this Kat hasn’t seen the correspondence and so can’t be sure precisely of what offences the sites have been accused. The email sent to The Sports Torrent Network has apparently done the trick without any actual prosecution or even arrest having had to be made – it closed yesterday.
Brand owners baffled at counterfeiter calamities
Counterfeit products are no laughing matter for brand owners. But with thanks to Andrew Digwood for sharing this one, here is an amusing photo list of 30 such products that demonstrate a complete misunderstanding of trade mark law, an ingenious imagination or (in the case of number 20) a desperate need for an educational tour around a zoo. I give you Buzzfeed’s “30 Knockoff Products That Are Almost Better Than The Real Thing”, which includes this gem:
Courtesy of Reddit.com - a fruity line in fashion 
Now YOU can be a trade mark 'intern' on your smartphone!
If the long working days of the city trade mark lawyer simply aren’t long enough for you, or your blackberry just won’t flash its evil red eye at you as regularly as you’d like, help is at hand from indie game developer The Men Who Wear Many Hats in the form of the smartphone game “Intern Saga: Trademark Lawyer”. The game is a parody of, amongst other controversies, the trade mark battle over the word CANDY reported earlier in the year by the AmeriKat here. It sees you take on the role of an intern striving to pay off his or her student debt by sending cease and desist requests to developers uploading infringing games to a fictional app store. To give an indication of what the makers think of lawyers, the opening message tells you “This job is so easy a monkey could do it.” If you have an Android phone, find it here. If you have an iPhone, tough luck – Apple refused to approve it without giving much in the way of a reason: “The concept of the app is not the sort of app we want in the app store” Apple is reported to have told the makers.

Can you earn $100,000 to pay off your student debt?

Tuesday Titivation

This Kat is not used to writing the multi-issue blogposts that are such a speciality of our dear blogmeister.  However, a few things have arrived in his inbox while he was engaged in his Easter aestivation, which are unrelated to each other, and none of which appears to merit a blogpost of its own, and so he is going to try his hand at the multi-issue roundup.

1. Norway to accede to the London Agreement [title updated with apologies]

Thanks to @dustshoveller for this picture
of the procrastipuss, which stops the IPKat writing
Firstly, Katfriend Stein Roar Gjøen from Acapo has let the IPKat know that the Norwegian cabinet has proposed acceding to the London Agreement, effective from 1 January 2015.  This is apparently rather a speedy decision, since the public consultation was completed only in February.  News is available in Norwegian here, and via the joys of Google translate here.  Merpel is amused that the translated title promises "expensive patenting".

2. Transitional Provisions for new Patent law in New Zealand

Hearty Katpat for the much katpatted Chris Torrero for pointing out that the Intellectual Property Office of New Zealand has published information about the coming into force of aspects of the Patents Act 2013 (the Act itself was discussed by the IPKat here).  You can see the information on the IPONZ website here.

3. The Streisand Effect

This moggy does not often read family law cases, but was very taken with the case of  London Borough of Haringey v Musa [2014] EWHC 1200 (Fam) (11 April 2014), in which, despite the explicit instructions of the judge that a prior judgment should be published,  the legal department of the London Borough Haringey caused an administrator at Bailii to removed the entire judgment from the BAILII site.  The judgment ends with the most unusual sentence "On that incredibly melancholy note, and with the utmost despair on my part, I draw the present hearing to a close."

The taking down of judgments from BAILII has led to the establishment of a website dedicated to the recording of cases being deleted from BAILII.  You can read about it here.  It is called BailiiStreisand.com after the Streisand Effect, which "is the phenomenon whereby an attempt to hide, remove, or censor a piece of information has the unintended consequence of publicizing the information more widely".

Disappearing judgments are not much a feature of intellectual property law as far as this Kat can remember, but the IPKat welcomes this contribution to judicial openness.

Friday, 18 April 2014

What does the ACI Adam decision mean for InfoSoc system of exceptions and limitations?

A few days have passed since the Court of Justice of the European Union (CJEU) issued its decision in Case C-435/12 ACI Adam [here], ruling that Article 5(2)(b) of the InfoSoc Directive, read in conjunction with paragraph 5 of the same provision [this imported the 3-step test into EU copyright law], must be interpreted as precluding national legislations that do not distinguish the situation in which the source from which a reproduction for private use is made is lawful from that in which that source is unlawful.

As readers will remember, this case concerned the compatibility of Dutch private copying exception with EU law. Article 16 of the Dutch Copyright Act stated that the reproduction of a work or any part thereof would not be an infringement of copyright, provided that the reproduction was carried out without any direct or indirect commercial motivation and was intended exclusively for personal exercise, study or use by the natural person who made the reproduction. 


Interpretation of Dutch law has been in the sense of including also copies made from unlicensed sources, eg unlawful downloads from the internet. The Dutch State Secretary held the view that reproducing works from unlicensed sources should no longer be part of the private copying exception, although these activities should not be punishable. However, at the end of 2012, Dutch Parliament dismissed this proposal, and decided instead to impose temporary private copy levies on certain digital and electronic devices and storage media. 

Litigation ensued before Dutch courts between a number of importers and manufacturers of blank data media, eg CDs and CD-Rs, and two Dutch collecting societies. The former argued that they did not have to pay levies for reproductions from unlawful sources, in that only reproductions from lawful copies could fall within the scope of the private copying exception and, as a result, the amount of the applicable private copying levies should not take into account compensation for harm suffered as a result of copies of works made from unlawful sources. 

No need for an investigation:
the Directive does simply omit to say whether
only lawful or also unlawful

Following two unfavourable judicial outcomes, ACI Adam and other importers and manufacturers brought their case before the Dutch Supreme Court. This decided to stay the proceedings and seek guidance from the CJEU.


As Advocate General Cruz Villalon observed in his Opinion [from which the Court did not depart], although in some Member States (Denmark, Germany, Spain, Italy, Portugal) the law already excludes applicability of the relevant national private copying exception to reproductions from unlawful sources, and some national judges (eg the French Conseil d’État) have interpreted the scope of this exception in the sense of excluding its applicability to reproductions from unlawful sources, whether the private copying exception within Article 5(2)(b) of the InfoSoc Directive may only encompass reproductions from licensed sources was an issue on which the CJEU had not ruled yet.


The Court observed that Article 5(2)(b) does not address expressly the lawful or unlawful nature of the source from which a reproduction may be made. However, when adopting the InfoSoc Directive, one of the objectives of EU legislature was to provide a high level of copyright protection. As a consequence, exceptions and limitations to exclusive rights must be interpreted strictly, and Member States must comply with the three-step test as per Article 5(5) of this directive. In compliance with these principles – notably that of strict interpretation of exceptions and limitations – the private copying exception must be understood as excluding reproductions from unlicensed sources.

The 3-step steps
This conclusion is also compliant with what is required by the 3-step test in Article 5(5). To accept that reproductions for private uses may be made from an unlawful source would encourage the circulation of unlicensed works, thus inevitably reducing the volume of sales or of other lawful transactions relating to the protected works. This would conflict with the principle that exceptions and limitations must not conflict with a normal exploitation of the work and must not unreasonably prejudice the legitimate interests of rightholders.

The outcome of this case is not particularly surprisingThe judgment is however extremely relevant in that it further clarifies [current?] CJEU understanding of Article 5 system of exceptions and limitations.  

The InfoSoc Directive harmonised copyright exceptions and limitations, on belief that – similarly to the case of exclusive rights [discussed also here]differences among the laws of Member States had direct negative effects on the functioning of the internal market, and that such differences would have become more pronounced in view of the further development of cross-border exploitation of works. 

While the rationale of Article 5 is to require a coherent application of the various exceptions and limitations, it leaves Member States the option (the sole exception being temporary acts of reproduction) to provide for certain (21) exceptions or limitations. 

Aww ... If only shopping for copyright
exceptions was this cute
Eminent commentators have held the view that in most cases Article 5 ‘shopping list’ would be composed of categorically worded prototypes rather than precisely circumscribed exceptions, thus leaving the Member States broad margins of discretion at the stage of national implementation. This is indeed what has happened in practice, the Dutch case being a notable example.

To this Kat the current question, however, is whether this is what the InfoSoc Directive actually allows (or allowed) Member States to do, also considering that Recital 32 requires Member States to arrive at a coherent application of Article 5 exceptions and limitations. 

In its decisions in Case C-510/10 TV2 Danmark [here] and, prior to this, Case C-467/08 Padawan [here], the CJEU seemed to suggest that, unless where the InfoSoc Directive leaves it to Member States to fine-tune the scope of resulting exceptions and limitations, it is not possible for them to alter the scope of the exceptions and limitations that they have decided to transpose into their national regimes.

This conclusion appears not only confirmed by the ACI Adam decision, but likely to be even stricter than what those decisions suggested. 

It's all about the market
At paras 33 and 34 of the decision, the CJEU stated that it follows from Recital 32 in the preamble to the InfoSoc Directive that Member States have the option of introducing the different exceptions provided for in Article 5 in accordance with their legal traditions. However, once they have made the choice of introducing a certain exception or limitation, this must be applied coherently across the EU. This is necessary to avoid undermining the objectives of this directive, including that of ensuring the proper functioning of the internal market. Incidentally, compliance with this objective has become central to the achievement of unexpected outcomes in a number of recent CJEU cases in the area of copyright [let's just think of the decisions in FAPL or UsedSoft].

Overall, it appears that Member States’ freedom to fine-tune the breadth of resulting national exceptions and limitations may be much narrower than what has been understood so far. In most cases Article 5 exceptions and limitations would not be just categorically-worded prototypes. 

Above all, as the CJEU appeared to suggest at para 27 of its decision, Member States’ freedom (where it exists) would be just in the sense of limiting the scope of the resulting national exceptions or limitations, not also in the sense of extending it beyond the scope of what is provided in the relevant Article 5 exception or limitation. 

This would follow from Recital 44 in the preamble to the InfoSoc Directive. 


According to the Court, this Recital suggests that when Member States provide for one of the exceptions and limitations referred to by the InfoSoc Directive, the scope of the resulting national exception or limitation could be limited even more when it comes to certain new uses of copyright works and other subject-matter. By contrast, neither this Recital nor any other provision in the Directive appears to envisage the possibility for Member States to extend the scope of the national exception or limitation beyond what is permitted by Article 5. 

Is this the above good or bad news for fans of Article 5? 

Of course, it depends on which side of the copyright debate (and related interests) you wish to place yourself, but if it is true that current Article 5 system - at least in the view of the CJEU - is and should be less flexible than what has been understood so far, and Member States' discretion could be solely exerted to narrow down the scope of resulting national exceptions or limitations, perhaps the time is apt to think whether this is what is best for a European Union, that - thorough its usually outspoken European Commissioners - has consistently expressed its desire to put in place and maintain a competitive and attractive copyright system.

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