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

Tuesday, 9 February 2016

Arnold J's latest judgment flags down the iconic (but not distinctive) London black cab

In warmer times, the AmeriKat can be found on Broadway
hailing the iconic yellow cabs to take her to Bloomingdales
for some light shopping.
 
Outside her window this morning, the AmeriKat is watching the iconic yellow cabs of New York racing workers and tourists up and down the island.  The New York yellow cab's equally iconic cousin is the black cab of London.  Its color and shape is as familiar and iconically British as beefeaters and Big Ben and far more useful than either when the London skies are pouring with rain. But would your average Londoner hailing a taxi know (or care) if it was a TX1or a Metrocab? More importantly, is such a Londoner the "average consumer" of the taxis for the purposes of trade mark law? This was just one of the many questions dealt with by Mr Justice Arnold in The London Taxi Corporation Limited trading as the London Taxi Company v (1) Frazer-Nash Research Limited and (2) Ecotive Limited [2016] EWHC 52 (Ch). The AmeriKat thanks up and coming IP enthusiast, Jemma Trainor, for the full story:
Background: The TX models v the Metrocab  
In typical fashion, Mr Justice Arnold's decision provides a colourful and detailed history of the London cab (from 1621 to the present no less).  The important point for these purposes is that, by 2015, the licensed London taxi fleet was dominated by certain models of taxis manufactured by the claimant. These were the TX4, the TXII and the TX1. In contrast, the humble old Metrocabs manufactured by the defendants, made up only 1.7% of the London fleet.  

FNR, one of the defendants, had been trying to design a new Metrocab (without much success) since the early 2000s. By 2010 it had settled on a design vision - to produce a car which was both recognisable as a licensed London cab but distinct from the LTC cabs that were widely used in the market. The design process culminated in a new model of Metrocab which had certain distinguishing features (a large “M” on the front and sides, a panoramic glass roof affording views of the city to passengers) but was also “instantly recognisable as an iconic London Hackney Cab”. See the picture below for a comparison – the new Metrocab is on the right, with LTC’s TX4 on the left.  
LTC's TX4 (left) and Metrocab (right)
The claimant, LTC held three-dimensional trade marks for the shapes of the Fairway (an old model it stopped producing in 1997) and the TX1/TXII taxis. The Fairway trade mark was a CTM registered for motor vehicles, accessories and parts. The TX1/TXII mark was a UKTM registered for cars, the shape which was its subject was also protected as a registered design. In addition LTC claimed goodwill in these models, as well as the TX4.  
LTC argued that the defendants intended to deceive the public as to the origin of the new Metrocab by adopting a shape which closely resembled LTC taxis and that, by marketing the Metrocab, they would commit trademark infringement and passing off. The defendants counterclaimed for invalidity of LTC’s trade marks.  
Deception as to origin  
Knocking the first argument on its head, Arnold J had “no hesitation” in rejecting the allegation of fraud made against the defendants in that they had adopted a shape which closely resembled the LTC taxis in an attempt to deceive the public as to the origin of the new Metrocab. Although it was found that images of certain LTC models were used in specific, but limited, ways in the Metrocab design process, Arnold J had not been satisfied that the defendants had instructed its designers to update or face-lift LTC’s TX4 model. The design of the new Metrocab differed in many respects from the LTC taxis and the intention imputed to the defendants was “deeply implausible”.  
The average consumer 
The CTM
Arnold J agreed with LTC that the reasonably well informed, reasonably observant and circumspect average consumer of taxis for the purposes of assessing validity and infringement of the marks would be taxi drivers – the persons who actually purchased the goods in question. However, he rejected its submission that members of the public would also be considered average consumers of taxis for these purposes. Whilst taxi drivers would be careful and knowledgeable purchasers of the taxis, members of the public were merely "users of the service provided by the consumer of the goods" who were likely to pay low levels of attention to the actual taxis themselves. 
Distinctive character 
The defendants argued that the CTM for the Fairway shape of LTC cab was invalid because it was devoid of inherently distinctive character. In Bongrain SA’s Trade Mark Application [2004] EWCA Civ 1690 at [26]-[28], Jacobs LJ had, interpreting various European case law including Joined Cases C-456/01P and C-457/01 P Henkel v OHIM EU:C:2004:258, rejected the idea that a “fancy” or unusual shape of goods would automatically be taken by the public as a trade mark denoting trade origin. It was not that a shape of goods could never become a trade mark, but that mere use of an unusual shape (in that case, the flower-like shape of a particular cheese) would not be considered distinctive in the trade mark sense unless it could be shown that the average consumer had come to believe that the shape indicated the product’s origin. Arnold J considered the reasoning behind this to be correct, summarising that “the fact that the shape of a product is unusual is a necessary, but not a sufficient condition for it to have inherent distinctive character.” 
Arnold J accepted that LTC’s trade marks looked different to normal cars and that they resembled a type of 1950s car.  However, neither point was sufficient to show that the average consumer would perceive the marks as anything more significant than a variation on the theme of a London taxi. Even had the marks departed significantly from the norm and customs of the sector, the average consumer would not consider them as designating the origin of the taxis. Hence, both the CTM and the UKTM were considered devoid of distinctive character. 
Had the trade marks acquired inherently distinctive character under Article 3(3) of the Trade Marks Directive? No, held Arnold J, who reviewed the CJEU guidance he had recently applied in Société des Products Nestlé SA v Cadbury UK Ltd [2016] EWHC 50 (Ch) (as digested by IPKat here), Arnold J considered that it had not been made out that, at the relevant date, a significant proportion of taxi drivers in the UK perceived the Fairway and TX1/TXII taxis as originating from LTC because of the trade marks in question. Evidence advanced, including advertisements which described the taxi as an “icon” might show that the taxis were well known, but not that their shape denoted their origination from LTC. Furthermore, even taking into account LTC’s argument that the trade marks had become distinctive to a significant proportion of consumers of taxi services (remember, who were not “average consumer”), Arnold J pointed out that these consumers had no reason to care about the trade origin of the taxis they used – they would not see their shape as a trade mark. 
Shapes which gave substantial value to the goods 
Excerpt from the UKTM
On the argument that the CTM and UKTM consisted exclusively of the shapes which gave substantial value to the goods, Arnold J first considered the UKTM for the TX1/TXII which was also a registered design. He considered the fact that the shape was protected as a registered design was a relevant, but not determinative consideration.  This point could be inferred from the reasoning of the Advocate General and the CJEU in Case C-205/13 Hauck GmbH & Co KG v Stokke A/S, which indicated that an important purpose of Article 3(1)(e)(iii) of the Trade Marks Directive was to prevent the use of indefinite trade marks protection to extend the time-limited protection of other intellectual property rights. Hauck, had concerned a trade mark for the shape of a child’s high chair (the “Tripp Trapp”) the design of which was also protected by copyright. In finding that the mark consisted of the shape that gave the product substantial value, the CJEU stated that this concept was not limited to the shape of products having only artistic or ornamental value and that it also covered products with “essential functional characteristics”. 
Bearing in mind the various assessment criteria (as considered in Paragraph 93 of Advocate General Szpunar’s Opinion in Hauck), such as the artistic value of the shape, the dissimilarity of the shape from other shapes in common use and the price of the goods, Arnold J held that the shape of the TX1 did add substantial value to the goods. Relevant factors in the analysis included the fact that the design of the TX1 was regarded as “iconic” and a “design classic” and marketed as such, and its shape was generally dissimilar to other cars at the relevant time. The CTM was not protected by a registered design, but nevertheless the same conclusion was reached in respect of it. 
Non-use of the CTM 
As if it wasn’t enough to find the marks invalid on the other two grounds, Arnold J also agreed that the CTM for the Fairway should also be revoked for non-use in accordance with Articles 15(1) and 51(1)(a) of the CTM Regulation. The Fairway model had stopped being produced in 1997 and had only been available to purchase second hand after that date. Assuming for a moment that the sale of used vehicles could constitute use of a trade mark (which in itself was a difficult question that the CJEU would have to finally resolve), LTC had not displayed genuine use of the Fairway mark.
Excerpt from the UKTM
Arnold J held that the sales of used Fairways simply amounted to recirculating goods which had already been put on the market under the CTM. The limited average price of resale did not help to create or maintain a share of the market for the Fairway cars (as noted above production of the vehicles had long since ceased) and the territorial extent of the CTM’s use had been essentially confined to the UK. Furthermore (in case there was any doubt) disposing of Fairways for scrap was did not constitute genuine use, rather it was “the antithesis” of use of a trade mark. 
On the question of whether the sale of TX1s, TXIIs and TX4s during the relevant period constituted use of the Fairway CTM in a form different in elements which did not alter its distinctive character, Arnold J held that any distinctive character attributable to the CTM derived from the totality of its appearance. The other LTC models of cars were clearly different from the Fairway (and therefore the CTM) in a number of respects.
Infringement 
Entertaining the possibility for a moment that the marks were valid and capable of being infringed, Arnold J found that they would not have been infringed. He noted that a visual comparison of the two taxis showed that the Metrocab was distinct from the Fairway and TX1/TXII in a number of respects. It was bigger, it bore prominent Metrocab advertising and the rear and side views of the cars were quite different. Taking into account the overall impression of the new Metrocab, it did look a London taxi but not like an LTC taxi or either of the marks. As such, the average consumer was not likely to be confused – the marks had little distinctive character and there was ultimately a low degree of similarity between the new Metrocab and the trade marks. 
Neither the CTM nor the UKTM had acquired a reputation and, even if they had, Arnold J was not satisfied that the new Metrocab would have cause detriment to their distinctive character. The average consumer would consider the Fairway, the TX1/TXII and the Metrocab to be “species of the genus London taxi” but this was not be detrimental to LTC’s marks. Arnold J also refused to accept that the defendants intended to gain unfair advantage by exploiting, or riding on the coat-tails of the trade marks. 
Passing off 
Excerpt from the UKTM
Turning to the passing off claim, which was LTC’s final attempt to put the brakes on the development of the new Metrocab, Arnold J noted that LTC’s claim to goodwill was based on abstractions which described the common features of the various models (e.g. a large and upright windscreen, a tapering bonnet, a prominent grill, etc.) rather than specific features of shape. Arnold J agreed that there was considerable force in LTC’s submission that consumers would perceive these features as indicating that the vehicle was a London taxi but, to establish goodwill, these features needed to indicate the source of the taxi model. Unsurprising, given his findings above, Arnold J held that this claim failed for “essentially the same reasons” as in relation to the marks’ lack of distinctive character. Further, there was no misrepresentation because there was no evidence that the shape of the new Metrocab would make consumers believe it came from the same source as LTC’s taxis and Arnold J had already held that the defendants had not intended to deceive the public. 
Conclusion 
The case represents a resounding win for Metrocab’s manufacturers and a full set of flat tires for LTC. However, the one-sided nature of the result should not be equated with simplicity in either fact or law –the length of the judgment itself (just short of 300 paragraphs) speaks volumes as to number and complexity of the issues raised before the High Court in this outing. Coming swiftly after the latest Nestle v Cadbury installment (another judgment of Mr Justice Arnold’s that came out in January) this decision provides a further practical application of the CJEU’s guidance that, in establishing whether a trade mark has acquired distinctive character, it must be shown that “the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company” (EU:C:2015:604). As LTC will have appreciated, the case is also a further example of the uphill struggles for proprietors of three dimensional trade marks seeking to assert that consumers perceive the often unusual and commercially distinctive shapes of their products as trade marks indicating the product’s origin.

Monday, 8 February 2016

Never too late: if you missed the IPKat last week

Were you away or just too busy to read the IPKat last week? As usual, nothing to worry about: thanks to our dear friend and colleague Alberto Bellan it is #NeverTooLate (now on its 84th edition) to catch up.

So here’s what happened on this very blog last week:

A few days ago Darren attended the inaugural running of an event at the Chartered Institute of Patent Attorneys - a seminar for PhD students. Many young IP enthusiasts discussing many IP issues = a perfect combination for a Kat!

The Japan Fair Trade Commission has recently released an amendment to the “Guidelines for the Use of Intellectual Property under the Antimonopoly Act”, in order to address the issue of how the JFTC approach cases involving standard essential patents in patent litigation. Katfriend Kaori Minami of Squire Patton Boggs reports.

A study provides an astonishing empirical look at the invalidation rate before the German Federal Patent Court and German Federal Court of Justice. Mark tells all.

Brian Whitehead, at Kempner & Partners, provides an edifying summary regarding the increased feasibility of electing an inquiry as to damages in connection with patent litigation.

Ka friend and trade secret expert, James Pooley, has flagged up two key changes to the US Defence Trade Secrets Act, relating to whistle-blower protection and the language on "threatened misappropriation".

How do you measure IP? Data on IP is scarce; inaccessible registries, unregistered rights and privately held information don't help. Yet, recent trends in IP data suggest progress is being made, Nicola says.

The EPO has announced the appointment of its new Chief Economist. Definitely a dream-job, writes Merpel.

GIFs reproduce (very) short extracts of films or other likely-to-be-copyright-protected material, more-often-than-not for non-commercial purposes. Can you protect it with copyright? You bet, says Eleonora.

The IPKat team is calling for candidates for a new role, to be called "InternKat". Among other exciting duties, those who will get the positions will have the honour to keep writing these lovely weekly round-ups. The deadline expires on 29th February. Before that, it is #nevertoolate to get into the fabulous Katworld!

Considering the “wider” significance of the December 2015 launch of the movie, “The Force Awakens”, the latest and probably the most profitable instalment in the Star Wars saga, IP in general, and copyright in particular, may be doing harm to our reservoir of content creation, says Neil.
**********

PREVIOUSLY, ON NEVER TOO LATE

Never too late 83 [week ending on Sunday 31 January] – The AmeriKat from the Silicon Valley | INGRES conference on developments in European IP law 2015 - patents | Economics of UK creative industries |Stretchline v H&M | Merck KGaA v Merck Sharp & Dohme | Ethics in IP | Social dialogue at the EPO | Ms Potter's extended copyright | CJEU on TMs' genuine use | Replicating works in museums.

Never too late 82 [week ending on Sunday 24 January] – Economics of legal professions | One shot to boost your EU trade marks | AG's opinion on fair compensation | Enforcement Directive consultation and UPC | Armonised grace period | Draft UK Legislation on Unitary Patent and Unified Patents Court | Arnold J's ruling in KitKat | Linking and copyright | GE moves to Boston.

Never too late 81 [week ending on Sunday 17 January– Talented IP barristers 2015 | Wright Hassall LLP v Horton Jr & Anor [2015] EWHC 3716 (QB) | Economics of Collective Management Organisations | International jurisdiction in online EU trade mark infringement cases | SUEPO officials fired, downgraded | Electromagnetic Geoservices v Petroleum Geoservices  [2016] EWHC 27 | Accord Healthcare Limited v. medac Gesellschaft [2016] EWHC 24 (Pat) | New PCT Applicant's Guide | US Defend Trade Secrets Act.


Never too late 80 [week ending on Sunday 10 January] – Allergan's patent extortion claim, Samsung's damages petition, Revlimid generic settlement & more! | Recovery for pecuniary loss and moral prejudice | EU Trade Secrets Directive | Journal d’Anne Frank as a trade mark?! | New Patent Act in Spain | Yellow as a trade mark in Australia | Innovation is the dirty little secret of IP | David Keltie.

Book Review: Indigenous Intellectual Property

Almighty tomes occasionally cross this Kat's desk for review, and she was very excited to receive her copy of Edward Elgar's Indigenous Intellectual Property. Part of the publisher's series of research handbooks on IP, this book, "considers the international struggle to provide for proper and just protection of Indigenous intellectual property (IP)" and is a collection of chapters by experts in the field.

This Kat is very pleased to see more attention devoted to this area of law and policy.  Many of the authors will be well-known to readers from their work in other parts of IP.   The book covers the major IP rights (patents, trade marks, copyright, design, and related rights), in addition to privacy law and identity rights. The strength and high concentration of Indigenous IP researchers in the Australasia region is reflected with a number of chapters looking at Australia and New Zealand. Slightly closer to this Kat's childhood home, a chapter on governance challenges in Canada analyses the Vancouver 2010 Olympic "Ilanaaq the Inuskshuk" logo, which borrows heavily from Nunavut official flags.  The authors note, with some irony, that the Aboriginal peoples of Canada were not allowed to use the logo under the Olympic and Paralympic Marks Act.

Some more from the publisher:
This Handbook considers the international struggle to provide for proper and just protection of Indigenous intellectual property. Leading scholars consider legal and policy controversies over Indigenous knowledge in the fields of international law, copyright law, trademark law, patent law, trade secrets law, and cultural heritage. This collection examines national developments in Indigenous intellectual property from around the world. As well as examining the historical origins of conflicts over Indigenous knowledge, the volume examines new challenges to Indigenous intellectual property from emerging developments in information technology, biotechnology, and climate change.
This book joins other titles in series, edited by founding Kat Jeremy Phillips, including Research Handbook on the Future of EU Copyright by Estelle Derclaye and the Research Handbook on Cross-border Enforcement of Intellectual Property by Paul Torremans.

Bibliographic information: Indigenous Intellectual Property: A Handbook of Contemporary Research,  Research Handbooks in Intellectual Property series. Edited by Matthew Rimmer, Professor of Intellectual Property and Innovation Law, Faculty of Law, Queensland University of Technology (QUT), Australia, 2015, 752 pp, Hardback, available for £175.50, E-book available February 18th for £48.00

Friday, 5 February 2016

Star Wars: Good or bad for movie myth-making?


Software aside, copyright protection is seldom viewed as a means for acquiring market leadership
in content-creation industries. Truth be told, the treatment of such a clearly functional creation as software as a literary work has always required a bit of analytical sleight-of-hand. In any event, the role of network effects is far-removed from the context in which most works of copyright are created and commercialized. Against this background, it is worth pausing a moment to consider how The Economist has chosen to elaborate on the “wider” significance of the December 2015 launch of the movie, “The Force Awakens”, the latest and probably the most profitable installment of the Star Wars saga. Intellectual property, in general, and copyright, in particular, may be doing harm to our reservoir of content creation.

Kat readers with no direct memory of the circumstances of the screening of the initial movie in 1977 may be hard-pressed to appreciate the impact that the movie had on a broad swathe of movie-goers worldwide. To say that it broke new ground barely captures the impact that it had on the film industry and the viewer experience. It is no secret that the Star Wars series, in all of its forms of commercial exploitation, has made a ton of money for Lucasfilm (and now Disney). But no one is forced to go to a Star Wars movie or buy a movie-themed toy. It is a tribute to Hollywood bringing together this combination of experiential and commercialization success.

Not so fast, Kat readers. According to The Economist--
“… Disney has skilfully capitalized on their intellectual property—and in so doing, cemented its position as the market leader in the industrialisation of mythology.”
In its view, this movie, like many other Disney creations,
“…draw[s] on well-worn devices of mythic structure to give their stories cultural resonance. Walt Disney himself had an intuitive grasp of the power of fables. George Lucas, the creator of Star Wars, is an avid student of the work of Joseph Campbell, an American comparative mythologist who outlined the “monomyth” structure in which a hero answers a call, is assisted by a mentor figure, voyages to another world, survives various trials and emerges triumphant. Both film-makers merrily plundered ancient mythology and folklore. The Marvel universe goes even further, directly appropriating chunks of Greco-Roman and Norse mythology. (This makes Disney’s enthusiasm for fierce enforcement of intellectual-property laws, and the seemingly perpetual extension of copyright, somewhat ironic.)”
What Disney (and Lucasfilm) have done is “plunder” time-honored myths with cross-cultural resonance. The Star Wars series is a less impressive creative enterprise than it seems. The really “creative” contribution of Star Wars has been to successfully package these myths by cleverly exploiting modern technology and the expanding possibilities of product merchandising and theme parks. As such, Disney and Lucasfilm are using intellectual property not to protect their relative modest creative contributions, but to gain a leading position in the way that some of our most fundamental cultural heritage is being used for entertainment and commercial purposes. People need to find ways to relate to their most deeply-felt myths, and Disney is increasingly dominating the way that this is being done.

What exactly is the claim here? Is it that because the movie is making abundant use of cultural myths, and the creative contribution is alleged to be modest, Disney should be more measured about the enforcement of its copyright? That is an odd way to view the situation. After all, copyright law has various means to deal with this kind of thing, such as the idea/expression dichotomy and the notion of scène à faire. If Disney oversteps the bounds of its protected copyright, and the courts are correctly applying the appropriate legal principles, then efforts to claim copyright protection in cultural myths will be denied. But it seems that the root of the magazine’s complaint is not legal but moral. Someone like Disney, which makes good money (at the moment) from generating popular contents, should be showing more gratitude. The ultimate problem is not legal but a flaw in corporate character—being less “fierce” (how much less so is not clear) in protecting its intellectual property rights is one way that the company could be saying thank you to the cultural antecedents that have enabled it to successfully create its products.

But the criticism is not merely about a flaw in corporate character, but also the veiled
suggestion that Disney’s increasing presence in the market for creations about myth may have a dampening effect. Using intellectual property as a sword, the ultimate result is that fewer creations might be made than would be the case if intellectual property was being properly applied. Seen in this way, the criticism by The Economist is an extension of the attack that it mounted in August 2015 regarding the alleged deleterious effect of patents on innovation. When it applied to Disney, at least, we can now add to the black list the harm being done to the market for creations that make use of cultural myths.

Thursday, 4 February 2016

Katcall for new positions in the IPKat team

The IPKat is pleased to announce a new and exciting opportunity for aspiring community bloggers!  Considering the running of the IPKat blog in the future, the IPKat team is proposing to create a new role, to be called "InternKat".

The IPKat team is therefore looking for 2 keen intellectual property enthusiasts to fill the position of InternKats. It is envisaged that the InternKats selected would carry out the role for a period of 6 months, and be responsible for tasks including:

  • Round-up posts (example);
  • Never-too-late posts (example);
  • Around-the-blog posts (example);
  • Book reviews (example);
  • Updating the events calendar (here);
  • Reporting of statistics and analytics of the IPKat blog and coverage with a monthly round-up.
If the InternKats wish, they are also invited to write independent posts with a suggested contribution rate of about once a month.  Throughout the period the InternKats will receive training as required for the tasks that the role involves, as well as mentoring and guidance from the IPKat team in writing posts.

Anyone may apply for this role, but the Kats think that it will be most suited to graduate students in the field of IP law or trainees (or recently qualified people) in one of the IP-related professions.

To apply, applicants should send their CV and a 400-word sample post on the topic of their choice by email to theipkat@gmail.com, and include the word "InternKat" in the subject line of the email. The covering email should include the applicant's name, qualifications, current occupation, areas of IP interest, and 150 words on why they would like to be an InternKat.

The deadline for applications is 29 February 2016. Successful applicants will begin their internship on 1 April 2016.

So if you want to get your paws on one of the most stimulating opportunities in feline IP blogging [a crowded market, Merpel notes], get in touch now!

Can GIFs infringe copyright? In Europe the answer is potentially 'yes'

Facebook GIF button
Thanks to Katfriend and scholar Martin Husovec (Tilburg University) this Kat has become aware that, after Facebook, also Twitter is on the move to introduce a dedicated GIF button (although for the moment it is only testing it on its mobile version).

As most IPKat readers will know, a GIF [which stands for graphic interchange format and - importantly - must be pronounced with the same soft 'g' of 'gelato'] is "something between an emoticon and a video clip" and "looks like a short, slightly grainy video file that plays over and over again".

Usually GIFs reproduce (very) short extracts of films or other likely-to-be-copyright-protected material, more-often-than-not for non-commercial purposes [if you wish to create your own GIFs, learn how here].

This Kat is not aware of any specific decision on the copyright status of GIFs, although determining whether a GIF is something that has the potential to infringe third-party rights may become particularly relevant. This is so on consideration: (1) of their increasing availability, now also by means of dedicated buttons; and (2) that there are entire news portals that provide daily good journalism also by using GIFs as a visual aid.

In the recent past the NFL has submitted takedown requests to Twitter over allegedly-infringing GIFs, although some commentators have concluded that - even if likely to fall within the scope of copyright protection - under US law GIF-providers would be likely shielded from liability for copyright infringement thanks to the 'fair use' doctrine.

But would the same be true in Europe?


GIFs prima facie infringing?

Among other things, Article 2 of the InfoSoc Directive mandates upon EU Member States "to provide for the exclusive right of authors to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part" of their works.

The notion of 'reproduction in part' was interpreted by the Court of Justice of the European Union (CJEU) in its landmark decision in Infopaq.

In that case the CJEU held that there is 'reproduction in part' any time extracts that "contain an element of the work which, as such, expresses the author’s own intellectual creation" [para 48].

Although the Court conceded that reproduction of individual words would not fall within the scope of Article 2, it is apparent - also in light of subsequent case law - that reproduction of anything above a de minimis threshold would be likely regarded as reproduction in part.

In relation to GIFs, it is arguable that they contain protectable elements of a work or, to borrow from the language of trade mark law, elements of a work that are used because of their very distinctive and recognisable nature.

The real point would then be to determine whether any defences could be available to GIF-providers.


GIFs as quotations?
Any defences?

There is probably no need to recall that, unlike US law, under EU law there is a closed list of exceptions and limitations in Article 5 of the InfoSoc Directive that EU Member States are free (with the sole exclusion of the exemption for temporary copies in Article 5(1)) to implement into their own legal systems. 

If we take the (general) case of a GIF that reproduces part of a protected work without modifications (so that there would be no issues of whether the GIF at stake could be regarded, for instance, as a parody), it would appear that in general this is unlikely to treated as criticism or review of a work or its underlying ideas, or news reporting [a while ago this Kat discussed this very possibility in relation to vines of Premier League goals]

As such, the applicable defence might be potentially the one for quotation within Article 5(3)(d) of the InfoSoc Directive. This exception allows Member States to permit "quotations for purposes such as criticism or review, provided that they relate to a work or other subject-matter which has already been lawfully made available to the public, that, unless this turns out to be impossible, the source, including the author's name, is indicated, and that their use is in accordance with fair practice, and to the extent required by the specific purpose."

Besides the fact that this exception is optional for Member States to implement, the problem is that different Member States that have introduced it into their own laws have done so in different terms.


Quotation: yes, but where?

Introduced in 2014, section 30(1ZA) of the Copyright, Designs and Patents Act 1988 provides that:

"Copyright in a work is not infringed by the use of a quotation from the work (whether for criticism or review or otherwise) provided that— 
(a) the work has been made available to the public, 
(b) the use of the quotation is fair dealing with the work, 
(c) the extent of the quotation is no more than is required by the specific purpose for which it is used, and 
(d) the quotation is accompanied by a sufficient acknowledgement (unless this would be impossible for reasons of practicality or otherwise)."

This exception has not yet been applied by a UK court, so its scope is uncertain for the time being. However, in this Kat's opinion a GIF would likely satisfy all the conditions indicated by this provision, including fair dealing. The main problem could be however with acknowledgment, although a GIF could possibly be excused from failing to providing it.

Whether a GIF could be however regarded as a quotation might be more problematic in other EU Member States.

For instance in France Article L-122-5(3)(a) of the Code de la propriété intellectuelle states that quotations are allowed insofar as (1) they clearly indicate the name of the author and the source; and (2) are justified for by the critical, polemic, educational, scientific or information of the work in which they are incorporated.

Both conditions may be difficult to meet for GIFs, particularly the latter. This is because GIFs are self-standing quotations, not attached to any other work.

Finally, if we take the case of this Kat's native land, Italy, Article 70(1-bis) of the Legge sul Diritto d'Autore allows online free publication of low resolution or degraded images and musical works, for educational or scientific uses and only where such use is for non-commercial reasons.

As far as this provision is concerned, the main problem for GIFs would be to determine whether they can be regarded as educational or scientific uses of protected works.

In conclusion

The creation and provision of GIFs under the laws of EU Member States does not appear necessarily a safe enterprise from a copyright standpoint, especially if one considers jurisdictions like France or Italy.

This means that both direct creation and making available of GIFs (as it appears to be the case, for instance, of Buzzfeed) and the hosting of GIFs (eg on Facebook and Twitter through their GIF buttons) have the potential to generate some copyright headaches, at least in some European countries, for GIF-creators and internet service providers alike.

But what do readers think?

EPO appoints new Chief Economist

The EPO has announced the appointment of its new Chief Economist, Yann Ménière.

According to the press release:

Yann Ménière, EPO photo
"Yann Ménière is professor of economics on leave from MINES ParisTech, where he was leading the Chair on "IP and Markets for Technology" until joining the EPO. His research and expertise relate to the economics of innovation, competition and intellectual property. In recent years, he has been focusing more specifically on IP and standards, markets for technology, and IP issues in climate negotiations. Besides his academic publications, he has also written a number of policy studies for the European Commission, French government and other public organisations. Outside MINES ParisTech, he has been teaching the economics of IT standards at Imperial College Business School and the economics of IP law at the Law School of Université Catholique de Louvain."
The Office of Chief Economist at EPO typically runs as fixed-term appointment from as short as one year to as long as nearly six. The appointment has always been external and the career profile has thus far been civil servant, academic or consultant. Most previous post holders have had strong ties with France or Belgium. Yann, a French national, will be the fifth Chief Economist.

Presumably high on the list of the incoming economist's agenda will be modelling the Unitary Patent and its financial impact on the EPO. This impact is heavily dependent on how the agreement works out, and what demand for the UP looks like.

Welcome to the patent policy world, Yann!

EPO Chief Economists of the past - Theon van Dijk, Bruno van Pottelsberghe, Dominique Guellec and Nikolaus Thumm

Thursday Thingies

OHIM has announced the opening of the entry period for DesignEuropa Awards 2016. All designs entered must be valid Registered Community Designs (RCD).  The award is in partnership with the Italian IP office, UIBM and is awarded in three categories: industry, small & emerging company, and lifetime achievement. The application window closes July 15th.  Fun fact: The Italian word for patent, brevetto, comes from the latin brevis, meaning short.

AIPPI Spanish Group has announced the program for their next sessions. Me gusta el programa.  The event, to be held on the 18th and 19th of February in Madrid, covers all things IP. Registration here. Fun fact: round table in Spanish is mesa redonda, and both the English and Spanish terms are likely translations of the French table ronde. 

The USPTO has published a white paper on Remixes, First Sale, and Statutory Damages (summary version here.)  In it, their Internet Policy Task Force recommends no legislative action on remixes and first sale doctrine, but lots of 'monitoring,' 'guidelines' and 'best practices.' It recommends action on statutory damages to "provide both more guidance and greater flexibility to courts in awarding statutory damages ... changes to remove a bar to eligibility for the Act’s “innocent infringer” provision, and to lessen the risk of excessive statutory damages in the context of non-willful secondary liability for online service providers." It also suggests the establishment of a small claims tribunal for infringement cases against individuals. Covered here on 1709 blog.

Taylor Wessing is soliciting responses for their annual Global IP Index Survey.  The survey closes Friday and can be completed in three languages: English, French and German.  Readers are encouraged to respond -- data in IP is scarce! Fun fact: The word in German for survey is umfrage and I can't find anything else to say on that matter.

The UK government published its response to the planned ascension to the Hague Agreement, two weeks ago, as covered in this Taylor Wessing blog post. Fun fact: The 'the' in The Hague likely comes from an old tradition of calling a place by its medieval description, rather than a name.  According to Slate, The Hague, or Den Haag comes from, "from Des Graven Hage, which means "the counts' hedge" and refers to the fact that Dutch noblemen once used the land for hunting." The IPKat approves.

Wednesday, 3 February 2016

Trends in IP Data

You can't touch IP, most litigation devotes significant energy to even defining a right, and, by definition, any particular right is unique. So, how do you measure IP? Data on IP is scarce; inaccessible registries, unregistered rights and privately held information don't help. Yet, recent trends in IP data suggest progress is being made. In particular, trends in national offices are promising.

"Sh!t ton is my favourite unit of measurement."
Bill Murray Parody Twitter Account
Pallas cat looking angry, by Tambako the Jaguar

Economics is data-obssessed.  I’ve discussed before economists’ predilection for all things quantitative (numbers), but it’s worth emphasising why – objectivity.  Anecdotes and observations are susceptible to the subjective views of the observer. Shark attacks are a good example as our fear, horror stories and media coverage can lead us to vastly overestimate the actual risk.  Quantitative data provides an objective information on shark attacks to balance our subjective view. However, the objectivity of quantitative data is only relative and data collection involves oft-forgotten subjectivity (even deciding what to measure is subjective.) Nonetheless, I've never met a standard deviation that didn't do it for me.

The relative dearth of data in IP impacts both policy and business.  The lack of good data means that policy may be based on subjective views not in line with empirical evidence. Poor data on the value of IP, litigation risk and the importance of IP protection may mean that firms’ IP strategies are not optimised.  For example, the fear of patent litigation, even if such fear is unwarranted, increases demand for litigation insurance, and consequently increases insurance premiums.  Good data benefits everyone.

The trendy word in datasets these days is, “granular.” Granular, however, does not mean organic grains stuck between teeth, but “the size in which data fields are subdivided.” In short, it means detailed.  The kinds of datasets becoming available now are at an unprecedented level of detail.  <Merpel, were she an economist, would swoon at this point.>

Creating a database is challenging work.  In some cases, historical data, key to understanding trends, may be stored on legacy systems or in hard copy only.  Records may be poorly maintained due to error or even deliberately (managing data costs money) and ownership of data may be unclear.  Data must be “cleaned,” which is not some organised crime euphemism, but quality control.  Missing data, or an errant line of code, can mess up a database.  And once you’ve done all the work of extracting the right data, you may have to go through the same exercise next year.

Thankfully, IP offices are making data more accessible.  While the increasing availability of IP registries for search purposes is encouraging, one-off cases provide little insight. Comprehensive research requires complete databases rather than registry searches. It is these complete databases where we are seeing great improvements.
IP God?
British Museum Egypt
by Einsamer Schützer

Patents
I could write multiple posts on patent data, but suffice to say that it is much more widely available, from both offices and commercial databases, than other rights.  The USPTO has recently published some more data on application data, which the Written Description blog has covered.  IP Australia’s forthcoming 2016 version of their IP Government Open Data (IPGOD) has broader coverage than previous releases and includes attorney information, abstracts, transactions and process milestones.

Trade marks
The USPTO has led the trend in publishing trade mark data.  They've created good, easily accessible databases (accessibility here meaning comprehensive, high-quality, historical data in a format that can be easily ported into a variety of software.)  Hot on the heels of the USPTO are the UK IPO and IP Australia.  IP Australia has particularly exciting plans, according to Chief Economist, Ben Mitra-Kahn, “We are working with WIPO, USPTO, UK IPO, IPONZ and OHIM to create a global TM database with the Universities of Swinburne and Melbourne which will also be a first. Next steps are tools to work and look into the data. A lot of cool stuff.”

OHIM has plans to make its data more accessible and WIPO, in some cases, is restricted from sharing its data as it is often-third party. If readers could alert me to other offices making more data available, please do.  Most offices seem to be sticking to online searchable, but not downloadable, records systems and statistics releases (e.g. analysis of IP trends, often in published in pdf.)

Design rights
Alas, poor design rights. They are the lesser loved of the registered IP rights, so feel some pity.  Like trade marks, they’re heavily dependent on images, which makes large scale analysis challenging. However, improved image analysis techniques suggest we may get a lot more out of image data than we do at present. Unofficially, I hear offices are planning to publish more design data.

Copyright
The unregistered nature of copyright suggests we won’t be seeing much by way of copyright data boons from IP offices. However, the digital era creates opportunities for copyright-related data.  For example, Google makes its copyright removal requests available for download.  Digital copyright exchange-type initiatives and Orphan Works schemes are also ripe for creating valuable data.

I have very high hopes for the future of IP data.  Increased digitisation means that more data is available in formats that can be relatively easily mined.  So, keeping in mind you are what you measure, Merpel would like you to know her vital stats: Hairball average: 1.1 per month, Grooming sessions: 3 per day (summer) 5 per day (winter), CIQ (Cat I.Q.): 17/20 (but she was distracted by a mouse when taking the test.)

And remember, "“Measurement is like laundry. It piles up the longer you wait to do it.” - Amber Naslund

Tuesday, 2 February 2016

US trade secrets legislation on the way to full Senate consideration

Like the California sky in January,
will the future be bright
for the DTSA as it floats towards
full Senate consideration?
Last Thursday, the US Senate Committee on the Judiciary reported the proposed Defend Trade Secrets Act (DTSA) out of Committee (see video here).  This means that, following a mark-up session, the bill (with amendments) was approved.  It will now go to full Senate consideration.   For background on the DTSA see the AmeriKat's previous reports here.

Kat friend and trade secret expert, James Pooley, has flagged up two key changes to the DTSA relating to whistleblower protection and the language on "threatened misappropriation".  James, who recently testified before the Senate Judiciary Committee on the DTSA, comments as follows:
"Whistleblower Protection: Trade secret law in the U.S. has never had an express exception for those who need to disclose their employer’s confidential information in order to report a possible crime to the authorities. Although some cases have spoken of an implied exception based on public policy, this has never been clearly embraced in a reliable way. In order to ensure people come forward without the fear of retaliation, they need to know they have a safe harbor against persecution for their efforts. The amendment offered by Senators Leahy and Grassley will for the first time guarantee protection to employees against claims of trade secret misappropriation when all they have done is talk to a lawyer or to the authorities. This will of course not just help those individuals, but also give law enforcement better access to information about criminal activity that otherwise would remain bottled up behind employee nondisclosure agreements. 
Threatened Misappropriation: Here the story is a bit more complicated, but starts with the language of the Uniform Trade Secrets Act (now the law in 47 states) that expressly allows injunctions against “actual or threatened misappropriation.” In 1995 the Seventh Circuit in Pepsico v. Redmond (1995) approved a temporary 5-month injunction against a high level executive taking the same marketing position with a company that was about to launch a directly competing product. Importantly, the individual had lied about his plans and otherwise behaved in a way that showed he was not trustworthy. But in announcing its decision, the court in dictum said that an injunction could issue against an employee taking a new job when it would “inevitably” lead him to misuse confidential information. This came to be known as the “inevitable disclosure doctrine”. Naturally, because it was expressed in such broad terms many in California took it to be inconsistent with our state’s policy on the free movement of labor. A California court later said as much (see Central Valley General Hospital v Smith (2008)). This lead to a patchwork quilt of states where the doctrine was rejected or accepted.

The amendment offered by Senator Feinstein (Democrat - California) reads that a court may not stop an employee from “entering into an employment relationship, and that conditions placed on such employment shall be based on evidence of threatened misappropriation and not merely on the information the person knows.” Some may think that this just forces California’s rejection of the inevitable disclosure doctrine on the federal courts, but I have a very different view. I consider that it will have the salutary effect of shifting the debate away from an abstraction that has almost never been applied in the way that people assume, and move back to the statutory language. This will refocus attention on the nature and quality of proof required to prove a “threat.” In other words, this could result in the end of the debate about the purported existence of the inevitable disclosure doctrine. In that sense, Senator Feinstein's amendment has not changed the law but reframed the debate to where it should have been all along."
There are other changes to the DTSA, including tightening up of the ex parte seizure orders by emphasizing that the remedy is available only in "extraordinary circumstances" and clarifying that only federal law enforcement can perform the seizure (with assistance from an independent expert).  To review all the amendments click here and here.

As the AmeriKat has mentioned previously, the DTSA stands a strong chance of being passed for all the reasons that bipartisan bills in an election year have a good chance of being passed.  For more detail about the amendments, see this excellent post by James published on Patently-O.

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