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.

Sunday, 27 July 2014

Eponia: a State of mind?

Practically independent already: the European
Patent Office -- or is it now Eponia? 
"Scottish independence: Europeans with an eye on Edinburgh" is the title of an informative piece for the BBC website by Esther Webber who asks:
"Voters will go to the polls in September to decide whether Scotland should become an independent country. But what other Europeans are pressing for independence and how closely are they watching Scotland?"
Esther then lists the eight: they are, in no particular order, Catalonia, the Basque country, Flanders, Padania, Veneto, Brittany, Corsica and Transylvania (or at any rate the Hungarian-speaking part of it).  This Kat has however spotted a ninth country which has pretty well established itself as an independent country within Europe: the Democratic Republic of Eponia.

Eponia is a small landlocked state mainly based in Munich, though it has established colonies in The Hague, Berlin, Vienna and Brussels.  Few people are born in Eponia (though it is rumoured that quite a few have been conceived there); most are settlers -- though they prefer to call themselves by a less provocative term, Examiners.

Patent income: a veritable cornucopia
One of the most buoyant economies in Europe, Eponia enjoys a unique and apparently inexhaustible source of income: patent tourism. Pilgrims come from far and wide to place their supplications before the local sages, or Boards of Appeal. Well-wishers also ply Eponia with money in order to obtain patents, cancel patents, amend patents or sometimes just to accelerate or retard the rate at which these much-desired services are delivered. Those whose petitions for a patent are successful often find that they are blessed with plenty, and that their influence extends from one end of Europe to the other. Some say that this good fortune can persist for getting on for 20 years, so long as occasional sacred donations, quaintly termed "renewal fees", are paid. What other country in Europe can offer such attractions?  The horseshoe, the four-leaf clover, the leprechaun pale into insignificance in comparison.

The European limit of the territorial reach of Eponia has been a matter of regret to its overlords, who have found the "EP"ness of its constitution something of a nuisance.  So they decided to simply ignore it, and venture forth into more distant territories, such as Tunisia which, last time Merpel checked, was not by any geographical or political criterion known to be part of Europe.

The national religion of Eponia is contained in a document known as the European Patent Convention, whose Articles (far more numerous than the Church of England's mere 39) are held to have been dictated directly into the ear of Blessed Bob van Benthem by a divine voice in the form of a holy hummingbird.  While of less mystical origin, the Rules are also greatly revered Like any sacred text, its superficial meaning is open to misinterpretation, and only specially trained priests are initiated into the deeper meaning of its rites and rituals (enigmatically referred to as "Guidelines"). When sufficiently inspired, those who are closest to achieving spiritual ecstasy can be seen and heard to be "talking in tongues", which embrace English, German and French -- but never Spanish or Italian.

"L'Etat, c'est moi!"
Many countries in Europe have a representative democracies which practise a strict division between church and state, and between the legislative, judicial and executive functions.  Eponia, however, practises a form of government which, economical in terms of labour, is highly efficient in terms of decision-making and in the enforcement of policy: some refer to it by the term that is derived from the Latin (dictatorship), while others prefer the Greek-originating version (tyranny). This should be no surprise to anyone who noticed the description of Eponia as a Democratic Republic.

The inhabitants of Eponia are restless, apart from the chosen few who enjoy the confidence of The Leader or upon whom he has cast a beneficent eye.  Spurning financial inducements, they crave the opportunity to pursue their avocation in peace and tranquility, to express their thoughts without fear of retribution and to, er, sign their own names when they post comments on popular intellectual property weblogs.

Inspired by the Rule of his namesake St Benedict, The Leader expects the Examiners to take vows of stability and obedience.  The vow of stability is enforced by paying them salaries higher than are available anywhere else, while the vow of obedience is enforced by the Guidelines for Investigation, which are wielded by the greatly feared Judges, who are, shall we say, Dredd-ful.  Their word is law and their word is final.  Cowering Examiners may not summon aid, nor keep silent to avoid self-incrimination.  Their cooperation is mandatory.  This however has not gone unnoticed by some of the territories in which Eponia metaphysically resides, and has dared to undertake legal, if not yet military, invasion into the sanctity of the Eponian premises.

To the public at large of Europe and further afield, the Democratic Republic, keen to attract its patent tourism Euros, issues glittering propaganda.  The most magisterially handsome, appealing to zealots and bibliophiles alike, is the Official Journal, that can be bound into volumes with pleasing ballistic properties.  For those who eschew such traditional means of communication, there is a handy newsletter thingamajig.  But these are mere fripperies compared with the Great Pilgrimage that is ordered every year to worship at the Shrine of Inventorship, where all the renewal fees of that year are spent on the European Inventor Award, thereby distributing to the few the offerings of the many.  By special Oecumenical Agreement, this is relayed to the world at large, at no little effort, by no less an organisation than CNN.

The theocracy of Eponia is not slow to learn from the religions of other territories, even those as far away as Japan.  Learning at one of the meetings of the Trilateral Offices that the Ise Shrine is rebuilt every 20 years according to Shinto precepts, The Leader resolved that whereas one patent life was sufficient for Japan, perhaps two might be suitable for the Netherlands, and so decreed the creation of a replacement building after 40 years.

There is another small troubling matter that irritates The Leader.  Unlike hereditary monarchs or papal clerics, his mandate does not last forever.  Fortunately, the college of overlords, cunningly picked from the very organisations that benefit from the overflowing bounty of the largesse of Eponia in the form of national renewal fees and direct assistance, are biddable.  The Eponians were delighted therefore to learn that the college of overlords happily extended the mandate of The Leader (well, perhaps not all of them) for a further four years.  All pilgrims were however perhaps surprised that the extension was approved without the details of the contract being finalised: these little details, such as presumably the pitiful associated emoluments, were left for subsequent private agreement between The Leader and the chief of the overlords.

And here we leave Eponia for the time being, to focus on the goings-on in other regimes but secure in the knowledge that readers of this weblog will continue to keep us informed of the happenings in this curious little fiefdom. Meanwhile, thanks to all of you who have kindly kept us informed of latest events there. There are too many of you for me to name here,and many of you must, on pain of losing your jobs, remain content for the time being with receiving just an anonymous Katpat.

Friday, 25 July 2014

Friday fantasies

Bogus bruin: more than
the Cubs can "bear"
Baseball team Chicago Cubs are reported to have filed a lawsuit against a group of five people who, they say, have been dressing in bogus "Billy Cub" mascot costumes, following which they are said to be participating in “inappropriate and unsavoury actions” in the vicinity of the Cubs' Wrigley Field stadium (thanks go to Lauren Somers of HGF for this link: she earns herself a Katpat). The inappropriate and unsavoury action in question appears to include exacting charging fans for pictures and getting into bar fights. Three of the five fake Cubs are not identified in the charges which are being brought against them.

The real item
According to the Cubs the accused, who are not affiliated with the Cubs in any way, are infringing the team’s trade marks by using the character to mislead people into thinking Billy Cub is associated with the team.  The suit alleges “mascot-like activities” and specifies such practices as dancing with fans and, in a presumed departure from normal mascot practice, making “rude, profane and derogatory remarks and gesticulations to patrons, ticket holders, fans or other individuals located in the area of Wrigley Field". One "Billy Cub" was also caught on video apparently punching a man in a local bar. There is also a website promoting the character, billycub78.info, the home page of which contains the following statement in defence of what many may quite reasonably demand as being indefensible:
"Help Save Billy Cub!!! 
For seven out of the last one hundred and ten years the Chicago Cubs have had a positive off the field image; a figurehead for the organization. From 2007 to present this significant role has been graciously filled by Billy Cub. During this time Billy Cub has served as the unofficial mascot of Chicago Cubs, positively impacting and improving the Wrigleyville game day experience for over 2,000,000 fans. Billy Cub wants nothing more than to be the official mascot of the Chicago Cubs but bureaucrats are trying to take Billy’s passion away. Official mascot or not, Billy Cub will never stop giving baseball fans, young or old, the best game day experience possible. Please support Billy Cub’s selfless efforts by signing the “Save Billy Cub” petition as well as posting your photographs and unforgettable moments on facebook. With your non monetary support you can help keep Billy Cub off the endangered species list and his dream of being the official mascot alive!"
The IPKat will continue to monitor the situation, rather suspecting that trade mark expert, American sports-lover and blog team member Neil will feel tempted to write something on it when the moment is ripe.


Another curiosity from the United States may be perused in this Daily Mail article, "New Jersey sues Florida pizza shop 1,300 miles away because logo is 'too similar' to Garden State Parkway", via a tip-off from Chris Torrero (Katpat!). New Jersey is known as the "Garden State": this dispute has arisen because the New Jersey Turnpike Authority felt that the Florida pizza shop's logo was too similar to the Garden State Parkway's green and yellow signs. This Kat is a little amused, recalling the ONEL case and the debate in the European Union as to whether use in one little corner of its territory should be regarded as genuine use in the EU.


Around the weblogs. After a week or two of relative torpor, PatLit has awoken, with posts in rapid succession on last month's "Limitation and Amendment of Claims during Litigation" event (here) and two applications to stay proceedings: in one, the idea is to stay office proceedings pending the outcome of a trial; in the other, the application was to stay court proceedings pending the outcome of an office action.  The 1709 Blog has been busy too, with a terrible tale of a copyright infringement claim that got out of control in the hands of an unreasonable claimant, who has now received a civil restraint order, plus the next of Ben Challis's oh-so-enjoyable CopyKat round-ups. Class 99 boasts a guest piece by José Ángel García-Zapata on locus standi and why Spanish distributors of goods made by their parent company outside Spain don't have it when they want to sue a competitor for design infringement.


Dr Parminder Lally is, during normal working hours, a Technical Assistant for Marks & Clerk LLP in its Cambridge office.  Once set free from his employment duties, he assumes an altogether different role: that of editor of the Yellow Sheet, the official blog of the Informals [no, explains the IPKat, it's not a paramilitary organisation; it's the (informal) organisation of student members of the Chartered Institute of Patent Attorneys, or CIPA]. Parminder asks the Kats to spread the following message:
“Those of you in the patent profession in the UK may be aware of the existence of the Yellow Sheet, the official blog of the Informals. The Informals is, as its name suggests, an informal association of the unqualified (and part-qualified) Student Members of the patent profession. The Informals provide a UK-wide support network for trainees, organising lectures and tutorials directed towards the examinations, trips to the UKIPO ["But why would anyone want to go there ...?", wonders Merpel] and social events. The Yellow Sheet blog (which some years ago replaced paper versions of the Yellow Sheet in the CIPA Journal), is used to publish information of interest to Student Members of CIPA. 
The blog includes information on upcoming social events across the UK, sporting fixtures, practical information relating to tutorials and Informals lectures, and the time-honoured “Wacky Patent” feature. The blog also contains links to other sites which may be useful when preparing for the PEB [Patent Examination Board] exams and the EQEs [European Qualifying Examinations]. Student Members, Fellows of CIPA, and anyone who’s just interested in finding out what patent trainees are up to -- all are encouraged to subscribe to the Yellow Sheet to keep up-to-date with Informals activities and education-related matters. Simply visit the site and enter your email address to subscribe. Subscribers will receive an email whenever a new post appears on the blog. If any IPKat readers have any news which may be of particular interest to patent trainees, they are most welcome to contact the Yellow Sheet Editor by email".

Finally, a word from Katfriend Aaron Wood (Swindell & Pearson) who advises the Kats that they may wish to blow the trumpet of a fellow IP professional – Keith Beresford. He is a patent attorney advocate and appeared in the Court of Appeal for England and Wales on Wednesday in Lantana Ltd v Registrar of Patents. Aaron thinks this is the first time a patent attorney advocate has appeared in the Court of Appeal. Can anyone confirm if Aaron is right about this? If so, well done, Keith!

When employee layoffs can spell trouble for your reputation

Does the public announcement of a large-scale lay-off of employees affect a company's goodwill and reputation? At a certain level, bad news about company may well affect consumer behaviour. This Kat admits that, a few years ago, he was dissuaded from buying a Blackberry mobile phone because of the announcements about the company's business difficulties, changes at the senior management level and substantial employee lay-offs. I suspect that what happened then was that I felt that, rightly or wrongly, I could no longer trust the brand. But Blackberry's decline was sudden and massive and occurred in the face of larger and better-healed competitors, such as Apple and Samsung. But what if the circumstances are less drastic?

This question arose following the 17 July announcement by Microsoft that it was eliminating 18,000 positions during 2015. The announcement, made by Microsoft CEO Satya Nadella, here, stated as follows:
"The first step to building the right organization for our ambitions is to realign our workforce. With this in mind, we will begin to reduce the size of our overall workforce by up to 18,000 jobs in the next year. Of that total, our work toward synergies and strategic alignment on Nokia Devices and Services is expected to account for about 12,500 jobs, comprising both professional and factory workers. We are moving now to start reducing the first 13,000 positions, and the vast majority of employees whose jobs will be eliminated will be notified over the next six months. It’s important to note that while we are eliminating roles in some areas, we are adding roles in certain other strategic areas."
[In addition, the company will abandon its attempt to create original content by gradually closing down its Xbox Entertainment Studio, here.]

We start with the assumption that most people probably did not actually see Mr Nadella's announcement. We further assume that only a relatively small number of people read at least one newspaper or online article about the move. On the other hand, we assume that many more people probably saw a headline or were exposed to a brief media description, enough to become aware of the scope of the lay-offs, although they probably did not focus on the fact that the bulk of the lay-offs are directed to employees who were absorbed only recently by the company as part of its acquisition of mobile phone assets from Nokia. What one is likely to remember is that the company is laying off a record number of employees. And so the question—has the Microsoft brand been impaired?

My immediate response would be—no. Microsoft is not Blackberry. Lay-offs do occur, not infrequently at mature mega-companies (HP also announced relatively recently sizeable lay-offs, here.) I have used the installed base of Microsoft software on my computers for years and I will continue to do so in the future. But the issue may be more nuanced that that. Mr Nadella has emphasized that he wishes to pursue "mobile-first" and "cloud-first" strategies for the company. Unlike the desktop, however, the cloud and mobile are both highly competitive areas where Microsoft is merely one among a number of competitors. It is here that potential trouble lurks for the Microsoft brand.

For a company of Microsoft's size, one can identify two different circumstances in which sizeable employee lay-offs will occur. The first is an outright cost-saving measure, where the company seeks to become "leaner and meaner". The second is an attempt to redeploy assets into new and more promising areas. Ironically, perhaps, it is this second type of lay-off that poses the greater risk to the reputation of a company such as Microsoft. This is because the company is making an implicit promise that the lay-offs are part of a larger strategy intended ensure that the company will have a better tomorrow. In such a situation, the risk to a company's reputation is that it will not make good on its promise. As such, the circumstances surrounding Microsoft's announcement will not harm the company's goodwill in the present. However, it does set up the brand for a fall if the company ultimately fails to deliver on its promise.

Thursday, 24 July 2014

Survey evidence: Mystery Morgan brings parrot back from the dead

This Kat's email inbox has been building up all day with excited missives about the fact that an endangered species, indeed one that was thought at one stage to be extinct, has been found lurking in a London Community Trade Mark Court. It was there that one of the jurisdiction's most rare and recondite intellectual property judges -- Mr Justice Morgan [a High Court judge since 2007 and mysteriously listed as a Patents Court judge, though he has only ever once got a mention on this blog, and even that was in a case that was really on competition law ...] -- brought to life an application to admit market survey evidence. With all regular Kats busy, in hiding or in the wrong time zone, it fell to occasional contributor and long-term Katfriend Aaron Wood (Swindell & Pearson) to step into the breach and write this post:
Unlike the famous Norwegian Blue parrot, it appears that trade mark surveys were not dead -- just sleeping!

The lord of all he surveys ...
Following the decision of the Court of Appeal for England and Wales in Interflora 2 [2013] EWCA Civ 319 [noted by the IPKat here], it had been felt in certain quarters that survey evidence no longer had a role to play in trade mark cases.  In infringement situations a survey may have been said to usurp the role of the trial judge, and in that case Lewison LJ commented:
“the general message [is] that evidence from consumers in this kind of case (i.e. trade mark infringement involving ordinary consumer goods or services) should only be admitted if it is of real value; and even then only if the value justifies the cost; and that judges should be robust gatekeepers in that respect”
The decision of 22 July 2014 in Enterprise Holdings v Europcar Group UK Limited & Another [2014] EWHC 2498 (Ch) tests this in the context of a case where the claimant seeks to adduce evidence of acquired distinctiveness, reputation and goodwill attaching to a mark.  Two of the counsel from Interflora 2 were counsel in this case: Geoffrey Hobbs QC again pitched as the erstwhile slaughterer of surveys, whilst Simon Malynicz reprised his role as counsel seeking to have the survey admitted.

Finding that the survey should be admitted, Mr Justice Morgan made a number of significant comments on the admissibility of survey evidence, as well as making findings on the validity of the survey itself.  Interested readers should read the comments on the validity of the survey, but the admissibility is of greater broad interest. On “real value” he noted the existence of OHIM’s guidelines on trade marks with a reputation, particularly the words: 
"Opinion polls and market surveys are the most suitable means of evidence for providing information about the degree of knowledge of the mark, the market share it has, or the position it occupies in the market in relation to competitive products. The probative value of opinion polls and market surveys is determined by the status and degree of independence of the entity conducting it, by the relevance and the accuracy of the information it provides, and by the reliability of the applied method."
He also commented that in Interflora 1 (Interflora Inc v Marks and Spencer plc [2012] EWCA Civ 1501 [noted by the IPKat here] Lewison L.J. had stated that different considerations from the general position on surveys apply where the issue is whether a registered mark has acquired distinctiveness.  He further noted the words of Etherton J in  D Jacobson & Sons Ltd v Globe Ltd [2008] EWHC 88 (Ch) [noted by the IPKat here] that the survey had helped on the question of whether a mark had acquired distinctiveness.

He also gave some thought as to how it might fit with other evidence to be provided:
  1. Before addressing the "likely to be of real value" test derived from Interflora 1, it may be helpful to discuss the point summarised at paragraph 17(4) and 18(5) above as to the utility of a survey when the competent authority has "particular difficulty in assessing distinctive character". This question has been identified in a number of decisions of the European Court of Justice. It seems that it is envisaged that the question will be answered as part of the overall assessment made by the competent authority, rather than at an earlier gatekeeping stage. If the question is addressed as part of the overall assessment, then the competent authority will be able to take into account all of the other evidence as to acquired distinctiveness when answering the question. If the question has to be answered at an earlier gatekeeping stage, then the competent authority may be much less clear as to whether the case will turn out to be one of particular difficulty. It may be that the cases which are more likely to be of real difficulty are those where the mark in question is not a traditional trade mark.
  1. In the present case, I consider that it is likely that there will be difficulty in assessing whether Enterprise's green logo has acquired distinctive character through use. Although the green logo is a traditional trade mark, some (possibly most) of its use has been as part of or in conjunction with another trade mark and the survey is designed to assist with the question whether the green logo, by itself, has acquired distinctiveness as identifying the goods or services of Enterprise.
  1. So far, I have considered Europcar's criticisms of the surveys carried out, or proposed to be carried out, for Enterprise. I have held that it is likely that the surveys will be held to be valid surveys. It nonetheless remains for Enterprise to satisfy the court at this gatekeeping stage that it is likely that the surveys will be of real value at the trial.
  1. My conclusion is that it is likely that the surveys will be of real value at the trial. I have already explained what is involved in the concept of a mark having a distinctive character acquired through use. I do not consider that a trial judge in this case will be able to determine that question by using his own knowledge and experience. Even if a trial judge thought that he had relevant knowledge and experience, the trial judge would wish to guard against the possibility that his view might be somewhat idiosyncratic or not fully informed. Of course, the trial judge will have evidence on the question of distinctiveness over and above the survey evidence. At the present stage, I do not have sight of that evidence. It is not possible at this stage to assess whether the survey evidence will be of real value in addition to the other evidence but, as I read the decision in Zeebox [noted by the IPKat here], I am not required to attempt to carry out that exercise.

On the question of whether the value justifies the cost, he noted that the parties had expended a substantial amount at this “gatekeeper” stage – indeed, Europcar had spent more on the gatekeeper stage than it estimated it would spend dealing with the results themselves, and the application had led to expert evidence on both sides as to the validity of the proposed surveys.  This irony was not lost on the judge, who noted that the point of the gatekeeper stage was to prevent parties incurring large cost dealing with surveys which have no inherent value.  If a party is willing to spend more than £100,000 on the gatekeeper stage when the cost of dealing with the results is less than this then there could be seen to be little concern with cost.  The judge also noted that the trial was set down for four days and has a collective legal budget of approximately £1.7M, so we might conclude that he felt this was not exactly a case without value.

The decision moves the needle back towards the position many litigators took, namely that there are instances where surveys are needed and that the cost of them is better incurred than not if it leads to a successful outcome.  It also follows the suggestion of Lewison LJ that the hard line taken in relation to surveys in “standard” trade mark infringement cases may not apply in the other situations he identified. 

In the present case the satellite litigation on the admissibility of the survey threatens to dwarf the remainder of the costs (the defendant having stated that it will appeal on admission of the survey).  As the judge suggests, where a survey may have real value it may well be worth allowing it in, with the weight and eventual value considered once all evidence is presented.  The clear suggestion is that if it turns out that the survey did not advance the case far beyond the other evidence available then there may be consequences, but that this cannot be assessed at the application stage. 

The outcome creates a risk that parties may make the request for survey evidence as a safety measure (or, worse make it not knowing the strength or availability of other evidence) –- it would seem likely that such behaviour would be penalised at the costs stage, and if opposing the admission of evidence it may be worth probing the level to which the applicant has reviewed the amount and nature of other evidence in order to provide the court with the fullest possible picture of the evidential value of the survey and to perhaps put the applicant in a position where it will be far less able to defend the cost of the exercise at a later date.
Thanks so much, Aaron (major katpat!) for your sterling efforts, and for your speed in setting your thoughts out for our benefit. 

Does this mean that every trade mark and passing off litigator in England and Wales will be rushing off to get a survey done? Not if pre-trial case management is conducted in a firm and pragmatic manner, thinks this Kat.  Will a lot of people seek to sneak survey evidence is, even where it shouldn't be? For sure, says Merpel: what can you expect of humans?

When the Writ Hits the Phan

Making YouTube videos for a living or as a hobby is a growing phenomenon. You can delve into the lives of “beauty gurus” or watch tutorials on just about everything from cooking help to how to make rainbow loom bracelets. While creating new content does not raise problems, using songs protected by copyright can land you into trouble as Michelle Phan has just discovered. Ms Phan, a YouTube entrepreneur earns money through the platform by making make-up and lifestyle videos. As background music for her videos, she has used songs from various artists. Ultra Records, which is in charge of some of the artists’ works featured in Ms Phan’s videos, brought an action for copyright infringement against her.

Artists usually assign their rights to a music society in exchange for royalty payments. The society then takes care of granting licences to other parties who wish to use the artists’ works. Artists therefore no longer have the right to decide whether to allow someone else to use their work, nor can they sue people for unauthorised use, as it is the music society which becomes responsible for this.

Among the songs featured by Michelle Phan in her videos is Kaskade, and although his songs are some of the most used ones in her videos, he does not agree with his record label’s decision to sue her. Despite having no control over the claim, he is siding with her on this matter. In her support, he has said: “Copyright law is a dinosaur, ill-suited for the landscape of today's media.” True, copyright laws were designed around a time when the YouTube phenomenon could not be anticipated. Today, content is created constantly on YouTube and songs are often added to videos. “Free music” can be found online, but it is unlikely to include any “trendy” songs.

The label’s complaint contains 50 alleged instances of copyright infringement, and they are asking for £88,000 for each proven breach. They fear that unless ordered to stop by the court, Michelle Phan will continue to use materials without their permission. However, a spokesperson for Ms Phan said that the claims lacked merit and emphasised that Ultra had agreed to let her use the music previously: “Michelle's intention has always been to promote other artists, creating a platform for their work to be showcased to an international audience.” Fans on twitter have attested becoming aware of Kaskade’s songs through her videos. 

Whether the works were used with or without permission remains to be seen. The usual policy when copyright infringement is alleged on YouTube is the take down the videos, but given the extensive use of copyrighted music here, we shall have to see what happens next. Ms Phan has more than 6 million subscribers to her YouTube channel and it is perhaps the potential loss of revenue from broadcasting to a public of this size that is the driving force for Ultra Records’ claims. They maintain that she used the songs in her videos without their permission and that despite not requesting a licence to use the musical works, she “…continues to wilfully infringe in blatant disregard of plaintiffs' rights of ownership”.

More on the story here.


EU copyright Public Consultation responses Katseries #2: linking and browsing

As reported by this very blog, yesterday afternoon the Directorate General for Internal Market and Services of the European Commission released its Report on the 9,500 responses to the Public Consultation on the Review of EU Copyright Rules [here and here]

The first episode of a special Katseries on the analysis of the main points of the Report was broadcast yesterday. It focused on some data about responses and respondents, and issues of cross-border access to content and more rights involved in a single act of exploitation.

It is now the turn of linking & browsing.

Linking in the aftermath of Svensson

When she saw the questions about linking and browsing and whether they should be subject to rightholders' permission, this Kat thought that any serious policy discussion around these issues would really depend on the outcome of Svensson, [herehereherehere and here], PRCA [here] and other cases, which - at the time when the Consultation was launched - were (and some are) still pending before the Court of Justice of the European Union (CJEU). 

Svensson was however decided on 13 February last, ie a few weeks before the Public Consultation ended, so did it have had any effect on the responses? 

Merpel's favourite kind of linking
Of course it did. 

In particular end users/consumers pointed out that in its decision the CJEU did not specify whether the person who provides the link would have to check whether the website linked to had permission to make the content available to the public [well ... see here], and argued that - if this was the case - there would be too much legal uncertainty for those providing the links. 

The CJEU may shed some light on this very issue when it decides C More Entertainment. Don't be misled by the fact that the case was stayed pending Svensson and the questions read the same: it is about linking to infringing content (by means of paywall circumvention).

The vast majority of authors and performers said that in some cases [not specified in the Report though] the provision of a hyperlink to publicly available content should be subject to the authorisation of the rightholder. Some authors and performers stated that authorisation should be required for embedded or framed links within websites, since the owner of the website displaying works may generate advertising revenue by keeping the viewer on its website. This is fairly interesting, since the BestWater case (still pending) is actually about the embedding of videos

The vast majority of publishers, producers and broadcasters considered that the use of hyperlinks should be subject to the rightholders’ authorisation, at least in specific circumstances. However many respondents, for example commercial broadcasters and film producers, said that the question whether the provision of a hyperlink leading to work triggers the making available right should remain subject to a case-by-case assessment, also because market behaviours and technology will continue to evolve.

What about linking to newspaper content?

Readers will be aware that this is currently a matter of discussion in Europe (and elsewhere). Last year Germany introduced new sections 87f, 87g and 87h into its Copyright Act to provide for the exclusive right of press publishers to exploit their content commercially for 1 year, thus preventing search engines and news aggregators from displaying non-insignificant excerpts from newspaper articles without paying a fee. Initiatives similar to the German one were also considered - before being abandoned - by Belgium and France, and are currently being discussed in Spain [here]. Despite the criticisms expressed by the Spanish Competition Authority at the end of May when it said that initiatives like the German one might have anti-competitive effects, earlier this week proposed Spanish IP reform - including the creation of an ancillary right over news content - received its first parliamentary approval

According to the Report, "Newspaper and magazine publishers in particular highlight that when links to newspaper content are posted with snippets, the risk exists that readers would be diverted from reading further on the newspaper website as such. Newspaper publishers also consider that a distinction should be drawn between non-commercial and commercial uses. They consider that they may want to allow members of the public to freely view their websites for non-commercial uses while recluding (or charging a licence fee for) commercial uses." 

Time to celebrate!
They have finally linked to something
that is not protected by copyright!
Everything linked to permission? Yes, say CMOs

At the opposite side of the spectrum from intermediaries/service providers, collective management organisations held the view that "the rightholder's authorisation should be required whenever the provision of a hyperlink leads to a work or other subject matter protected by copyright". That is, says Merpel, what happens 99,98% of the time.

Browsing: PRCA was not so straightforward to academics

As regards internet browsing, end users/consumers and institutional users argued that it is akin to reading and therefore should not be subject to authorisation from the relevant rightholder, while authors and performers argued that in certain cases [the Report does not really say which though] it should be authorised. 

Besides the issue of linking (is it an act of making available to the public?), academics were also divided on browsing, with some considering that the exception in Article 5(1) of the InfoSoc Directive would not apply to this type of activity. 

Did academics see more problems with browsing than necessary? It may well be the case, since the CJEU decided PRCA with a fairly short judgment and thought there was not even need for an Opinion from one its Advocates General.

Comic relief? Glee Club remedies step into the limelight

Twentieth Century Cats: a fox-free chorus line ...
"Glee" is a word that suggests happiness and pleasure to many, but which has caused the occasional judicial brow to furrow. Last year Mr Justice Birss concluded that there is "no material difference between joy and glee" here.  Unsurprisingly therefore, another judge has found that there's not so much difference between glee and glee. The case in question is Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2014] EWHC 2286 (Ch), a Chancery Division, England and Wales, decision last week of Roger Wyand QC (Sitting as a Deputy High Court Judge). This decision is still not available on BAILII, but that's no excuse for leaving it to the tender mercies of DOBBIN. so it's being written up with a little help from a LexisNexis case note.  For background to this litigation, readers are referred to earlier Katposts in 2012, here, and then in February of this year, here.

The original infringement proceedings were an action for trade mark infringement and passing off regarding the use of the word 'glee'. Comic owned a series of two UK registered figurative trade marks which featured the words 'The Glee Club'. TCF produced a television series, 'glee', about a fictional singing club at a fictional American high school. No, said the court, there was no passing off, but yes, there had been trade mark infringement.  The question now arose as to what to do about it. Comic wanted  (i) an injunction to restrain trade mark infringement; (ii) delivery up/destruction of infringing materials; (iii) an account of profits; (iv) disclosure of enough information to determine how to proceed in terms of an inquiry into financial relief; (v) a publicity order; and (vi) interim payment pending calculation of the final sum.

Being very judicial about it, Roger Wyand QC ruled as follows:

*While the balance of all the relevant factors favoured the granting of an injunction, such an injunction ought to allow TCF to refer to the fact that the programme had been previously known as 'glee'.

* As for delivery up, it would be proportionate to order delivery up or relabelling, where appropriate, of physical and digital copies of its programmes in TCF's possession, power or control -- but it wouldn't be proportionate to make TCF try to get back stocks that had been sent out to customers.

* Comic would be allowed to seek an account of profits on the basis that TCF could provide a rough assessment of the total profit made by the programme. Since the actual figures were commercially sensitive and protected by a confidentiality order, there was no need for TCF to produce extensive disclosure to support that evidence.

* A publicity order to be granted since it was important for viewers of "glee" to know about the court's judgment.

* While it was bound to be difficult to assess the quantum of damages and/or account of profit that would be eventually awarded, £100,000 seemed to be a good shot at a conservative interim payment in respect of damages or an account of profits.

* In terms of timing, it was appropriate to stay the effect of the injunction, but not the publicity order -- since that was important if further damage to Comic's trade mark was to be minimised.

All of this seems reasonable under the circumstances, says the IPKat, who believes that this is the first British case to cross his path since the coming into force of IP Enforcement Directive 2004/48 in which the making of a publicity order has been of such prime importance.  Merpel finds the litigation literally instructive: before it started, she knew about the "glee" programmes but hadn't heard of the Comic Enterprises' Glee Club.

Comic Relief here

More on this case from the Nottingham Post, the Birmingham Mail and Bloomberg.

Wednesday, 23 July 2014

Wednesday whimsies

Around the weblogs.  Over on the increasingly busy SOLO IP blog, IPKat team member contrasts the fortunes of IP practitioners in small practices with those of medical practitioners: which has had the better deal over the past few decades?  Having survived a brief flurry of comments as to the distinction between liqueur and liquor, Class 46's Laetitia introduces us to the HEATSTRIP dispute, in which a naughty agent who tries to register his principal's trade mark, having lost before the OHIM Board of Appeal, gets a second helping of comeuppance from the General Court. On IP Finance, Rob Harrison marks the launch of the Australian Global Innovation Index: phrases like "packed with metrics", "best practice" and "degree of scepticism" give a hint of what you might just find there. "Taylor Swift is incredible" is the title of a guest piece written by Richard Tomasi and hand-crafted by our own Eleonora. Never heard of Taylor Swift (pictured, above left, with the IPKat)? Then take a look.


Come to the BioHub. This Kat has never been to a BioHub; indeed, until last night be had never even seen the word. However, he has discovered a good way of getting into one. There's an IP seminar & networking event coming up on 30 September 2014 at the BioHub at Alderley Park, Cheshire. It's masterminded by Appleyard Lees and this Kat has a feeling that former guest Kat Robert Cumming has had something to do with it. The star attraction is Judge Richard Hacon, who was appointed as specialist circuit judge of the Intellectual Property Enterprise Court (IPEC) for England and Wales when most of us were sharpening our teeth knives in anticipation of the seasonal turkey in December 2013. There will be some war stories and law stories, plus all the usual delicacies.  This event is free to all comers and will take place in the conference centre by Appleyard Lees' office at the BioHub at Alderley Park. The fun starts at 4.30 pm with the quaint tradition of registration and carries on till the bar runs dry networking is brought to a seemly conclusion. To attend, email Sara Baines at sara.baines@appleyardlees.com to register your interest.  Space is limited so do book early. The Appleyards and Lees apologise to anyone who will miss out on the event due to the patent examinations, explaining that Judge Hacon "has limited availability to speak in the North". 


Now here's a brand
name that summarises
this Kat's sentiment ...
This Kat, born and bred a Londoner, has just been reminded by Richard Pringle (Head of Validation Services, Valideus Ltd) that the priority period for .LONDON domains -- which gives priority to categories of potential registrants including owners of UK registered and unregistered trade marks -- closes on 31 July. Beyond that date, as Richard delicately puts it, "it will be a straight case of first-come, first-served".  The .LONDON registry website is here and its priority rules are here. He adds:
"Our view of the situation is that with over 50,000 applications expected for .LONDON domain names in the pre-launch period alone, the domain will quickly reach critical mass and be a familiar sight online and potentially a valuable domain suffix for brands. Furthermore, with this volume of applications there will be many that are for trade marks in the offline world. These will include registrations of descriptive dictionary words, trade marks in different sectors, trade marks used by brand interest groups, fan sites and gripe sites; as well as some trade marks registered for cybersquatting". 
While his memory is good enough to recall the days when the choice of top-level domain was really quite important, it's not good enough to recall the last time he actually typed a whole domain name into his browser, or even paid attention to the top-level domain: his habits are determined by long familiarity with the advantages of search engines and his skill, whether intuitive or intellectual, in identifying the fastest way to find his target sites [very good, says Merpel, but you still can't find your way round the OHIM and EPO websites ...]. Are .LONDON and its equivalents really important any more? Or has the time of the prestigious or catchy domain name come and gone? Do tell us what you think.

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