For the half-year to 30 June 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Suleman Ali, Tom Ohta and Valentina Torelli.

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

Sunday, 3 May 2015

“A bird doesn’t sing because it has an answer": a famous quote and the stamp of (in)authenticity

The IPKat welcomes the following guest post from copyright moral rights enthusiast Mira T. Sundara Rajan,  Professor of Intellectual Property Law, University of Glasgow, on a fascinating drama in which the principal actors are two literary ladies and, making a relatively rare appearance centre stage, the United States Postal Service.  This is how Mira unrolls the sequence of events and explains their legal significance:

In a commendable gesture, the United States Postal Service has issued a stamp honouring that most-maligned of modern professionals, a poet. Maya Angelou, an African-American writer, has been described by the Post newspaper in her native St Louis as “star, icon, woman,” and by Michelle Obama as "the master", She died in May of last year, at the age of 86. Her contributions were numerous – and, indeed, they transcended literature and spilled over into dance, music, and drama – but she remained best known for an early autobiography. Entitled I Know Why the Caged Bird Sings, the book became an internationally-acclaimed bestseller and, as her website notes, continues to be widely read as  “a course adoption at college campuses around the world".

The U.S. Postal Service chose an expressive and wonderfully appropriate quotation to accompany Angelou’s picture on the stamp: “A bird doesn’t sing because it has an answer, it sings because it has a song.” As noted by Ron Nixon of the New York Times, the U.S. Postal Service explained the choice of the quotation by commenting “that Ms Angelou had cited the quotation frequently in interviews and that it provided a connection to her 1969 autobiography, ‘I Know Why the Caged Bird Sings.’”

The picture and quotation were a perfect match. The stamp, and the honour intended, promised spectacular results.

Or did they? Life is never so perfect. Despite the best of plans and intentions, something had gone astray: Angelou never wrote the words that appeared beside her picture on the postage stamp. They were actually authored by Joan Walsh Anglund, a writer of “children’s and inspirational books.”

How, then, did these words come to be attributed to Maya Angelou, and to find their way onto the postage stamp?

It seems clear that Angelou loved them. She is said to have quoted this line in “many interviews,” though she never claimed it as her own. At least some part of the public believed that the words were hers. No less a figure than President Obama quoted the line and attributed it to Angelou publicly, at least once – in the course of a 2013 awards presentation honouring artists receiving the National Medal of Arts and the National Humanities Medal.

Joan Walsh Anglund
Members of the USPS dealing with the commemorative stamp therefore had reason to think that the quote originated with Angelou. But it is very interesting to consider the reasons why the USPS might have thought so – not because Angelou ever said that the line was hers, but because they heard about the quote in association with her, because she quoted it frequently, because others (including those in authority) said it was hers ... above all, perhaps, because it seemed appropriate. After all, the similarity of image, idea, and sentiment between this epigram and the title of Angelou’s autobiography is both obvious and striking. The attitude of the USPS was not founded on anything that could be called knowledge; it was, rather, based on rumour, belief, received wisdom, myth, or legend.

The USPS made a mistake. There is nothing so extraordinary in that; but, what is extraordinary, is that  the U.S. Postal Service now has no interest in correcting the error. The stamp will go ahead as is. And why? According to an email from David Partenheimer, a spokesman for the USPS, to the New York Times: 
“The sentence was chosen to accompany her image on the stamp to reflect her passion for the written and spoken word. ... [It] held great meaning for her, and she is publicly identified with its popularity.”
And there’s the rub. Anyone who cares about history, culture, literature, or human rights should be given at least a moment’s pause by this explanation. Partenheimer makes two extraordinarily telling points about the choice. First, the sentence was chosen because it was, yes, appropriate: it seems right that Angelou should have written it. This is the way the human mind works – why generations of people thought that the world was flat, or the sun went round the earth. It “makes sense.” But the fact that Angelou didn’t write these words opens up an alternativee universe of interesting possibilities that flow, not from any limited human sense of what is “right” or “fitting,” but from the real world of actual possibilities based on (dare we say it) the truth. One of those possible, interesting implications is that Maya Angelou’s thought was mirrored in similar thoughts and reflections expressed by other writers and thinkers – perhaps she influenced them, perhaps they influenced her, or perhaps they were all influenced by something like Hegel’s world-spirit at work at that time. By recognizing authenticity, we end up with a more accurate, comprehensive, and richer picture of reality. We achieve an awareness of the interconnectedness of things – ideas, thoughts, words, sentiments.

But the second justification noted by Partenheimer is, if anything, still more disturbing – Angelou is “publicly identified” with the “popularity” of the words. Well, he was careful – he did not exactly say that Angelou was publicly identified as the author of the words. But that idea seems implicit in his statement. Since the association with Angelou was the main reason behind the popularity of the quote, according to Partenheimer, that is reason enough to create a commemorative stamp which places her picture alongside an unattributed version of that quotation.

And the combination of image and word seems powerful. What is likely to happen in the mind of a person who sees the stamp? Will the response be to admire the quotation and wonder who wrote it? Or will the eyes travel, quite naturally, if carelessly, to the picture of the writer beside them, the author of a book with a related title – birds that sing and sing again – leading to the natural, if careless, thought, that here, then, is the picture of the author of those words?

The U.S. Postal Service is no ordinary institution: it is an agency of the U.S. government. It represents the government of a country – and not just any country, but the most culturally dominant country in the world. It is empowered to undertake action in support of American culture, and, conversely, it can also create damage. The USPS has power; and with power comes responsibility. Commemorative stamps represent the cultural achievement of a country, and they carry word of that achievement around the world. The United States is only one of many countries to issue them, and to make them an occasion to celebrate writers. Independent India issued them, too; though, as the example pictured here shows, India took the course, perhaps wiser, if less ambitious, of including the writer’s picture and years of life, alone – no words.

But the US Postal Service doesn’t need to care about its mistake, for the simple reason that it has violated no U.S. law. The United States copyright law, which may well be unique in the world in this respect, protects no general right of attribution. It rejected this possibility when Congress decided not to implement generalized “moral rights” for authors at the time of joining the Berne Convention for the Protection of Literary and Artistic Works, in 1989. Nor has the United States compensated for this shortcoming in copyright law by providing a right of attribution for authors elsewhere in its legal system. The only exception to this rule is a limited right of attribution for artists working in the visual arts. This artists’ attribution right has been written into a special statute known as the Visual Artists Rights Act of 1990, or VARA, section 106A of the U.S. Copyright Act. As American copyright scholar Jane Ginsburg has noted before, attribution for authors at large simply remains unrecognized. No moral rights, no attribution – and, for the USPS, no problem.

Where does this leave us, as far as the one thing that matters is concerned – the preservation of American literary heritage? Future generations will receive a stamp, issued in 2015, with a picture of a poet and an accompanying quotation that is not explicitly attributed to anyone. The picture, itself, may prove to be nothing less than an implicit form of misattribution, leaving an impression in the receiver’s mind that Maya Angelou wrote those beautiful, interesting, and memorable words. In most other countries in the world – India, for example – the issuer of the stamp would be legally, as well as ethically, responsible. But not in the United States.

As for Ms Anglund, the now 89-year old author of the quotation, which dates from a 1967 book – as the U.S. Postal Service might say, “Never heard of her" [Postal Service officials said they had not heard of Ms Anglund’s book, “A Cup of Sun,” until asked about it by The Washington Post, which published an article about the stamp on Monday": New York Times]. Ms Anglund’s reaction to the debacle was that “she was a fan of Ms. Angelou’s and hoped that the stamp would be successful.”  Is life’s greatest beauty to be found, after all, in its imperfections?

Green around the gills? Political party seeks to roll copyright back by three centuries

As the UK's General Election draws closer, it has to be conceded that intellectual property has again largely avoided the limelight in the endless arguments between the contending political parties and their candidates as to what's best for the economy, the country, mankind and civilisation as a whole.  However, some eyebrows have been raised at the position taken by one of the political parties -- the Green Party -- with regard to copyright. In this guest blogpost, Kevin Winters explains:

As the IPKat has regularly pointed out, intellectual property doesn’t often feature prominently in the minds of politicians, at least not in the run-up to a General Election.  However the UK Green Party has decided to change this, by taking a very clear position in its 2015 manifesto on the state of UK copyright law.  Under the heading of ‘Information and Digital Rights’, the Green Party states that, if elected to form a government:
“We would…Make copyright shorter in length, fair and flexible…”
The Party went on to give more detail on this by stating in policy documentation that this would involve introducing
“... generally shorter copyright terms, with a usual maximum of 14 years”.
Despite some initial confusion regarding when the duration of copyright protection would begin, the Green Party did announce that protection would last for 14 years after death (and that they were reviewing their copyright policy).  This pledge to reduce copyright protection from 70 years to 14 years after death has been met with criticism from many writers and artists.   
Katfriend and IP specialist Graeme Fearon had this to say on the decision by the Green Party to pursue this policy:
“Given that the Greens’ sole MP in the last UK parliament represented Brighton -- a town full of authors, artists and creatives of all description who rely heavily on copyright to earn a crust -- this is quite a brave stance.  Caroline Lucas (the MP in question, currently a candidate for re-election) has explained that this is “just a proposal [and so] isn't in our general election manifesto.  It is not something we want to introduce as a priority in the next 5 years.”  However, the manifesto clearly proposes to amend copyright to make it “fairer, more flexible and shorter. To bring the law up to date to better reflect the demands of the digital age.””
This pledge by the Green Party does go against the grain.  History has seen copyright protection for authors' works gradually extended: the Statute of Anne (1709 or 1710, depending on whichever way you look at it) did provide for a 14 year protection, which grew and grew till it reached the Berne Convention (1886) norm of life plus 50 years.  Today the vast majority of copyright legislation provides for an extended period of protection for newly created copyright works: life plus 70 years under both the US Copyright Act (1976) and the UK Copyright, Designs and Patents Act (1988).  
Looking at the duration of protection currently afforded under UK copyright law, Graeme adds:
“It hardly needs saying that this can be a very long time – the work of a long-lived child prodigy could conceivably be protected for 150 years.  The rationale for this has always been to offer authors and artists a fair chance to derive a proper income from their work during their lifetime, and to be able to bequeath this value to their estates like any other property.  But why should the children (or even grandchildren) of an author be able to enjoy the fruits of their ancestor’s hard work and ingenuity in a way that isn't offered to the descendants of, say, inventors or plant breeders?” 
There is an added dimension to the Green Party’s policy regarding the reform of copyright law which its manifesto fails to address.  As the UK is part of the EU, any change in the law of copyright would have to be compliant with European legislation (the current regime being the result of the Copyright Term Directive).  Could it be that the party's support for an in-out referendum on EU membership has negated any need for discussion on this point? 
Patiently awaiting that first royalty statement ...
Given the response from authors and creatives towards the Green Part and their proposed 14 year copyright protection, it is perhaps wise for some further thought to be given to it -- some authors have been reported to have had to wait between 12 and 13 years before they enjoyed any royalty payments from copyright protection.  Further, it may also be wise for a wider audience to be consulted on this particular policy: while a 14 year copyright is recommended by academic research, there has been no reported input from other stakeholders and interested parties.    
For any IP law enthusiast it is always pleasing to see it figure in political party manifestos.  However, the Green Party appears to be almost alone in its desire to alter the current framework for copyright protection (though the Pirate Party would reduce the term still further, to 10 years).  It will be interesting to see whether the views expressed by authors and writers have any bearing on the Green Party’s position on reforming copyright in the UK.

Friday, 1 May 2015

Proprietor may be unhappy because BE HAPPY is not a trade mark

The General Court has issued another judgment relating to the controversial issue of promotional statements that may also serve as trade marks in the Joined Cases T-707/13 and T-709/13, shattering the dreams of happiness of the CTM proprietor Steinbeck GmbH: the Court confirmed the cancellation decisions of the 'BE HAPPY' marks on the absolute grounds provided by Article 52.1.a) in combination with Article 7.1.b) of Regulation 207/2009.

Steinbeck registered with OHIM two word marks for the sign 'BE HAPPY', the first in 2007 for goods in class 16, 21, 28 and 30 and the second in 2010 for goods in class 9, 11 and 18.
Be happy with Steinbeck

In 2012, the company Alfred Sternjakob GmbH & Co. KG applied for invalidity of the BE HAPPY CTMs on the grounds that they lacked distinctive character and were descriptive of the characteristics of the goods they covered, according to Articles 7.1.b) and 7.1.c) of Regulation 207/2009 respectively .

The Cancellation Division upheld the requests for invalidity, and the Board of Appeal confirmed the decision that the registrations were null and void because the marks were not distinctive.

In particular, the Board of Appeal recognised that the relevant public, whose perception is paramount to establishing whether a mark is distinctive, comprised not only English-speaking consumers but also those speaking German, in that the marks consisted of a basic and common English words which, on their own and in their conjunction, could be easily understood by both categories of consumers. In addition the sentence “be happy” is a fundamental component of the lyrics of the very famous song 'Don't worry, be happy', which is common knowledge.

Have you told me
Then the Board of Appeal underlined that the BE HAPPY marks complied with the rules of English syntax and grammar and their meaning resulted in the plain exhortation to - be happy! No originality or unusual structure was present to justify a conclusion that the marks had some fancifulness which conferred distinctiveness. On the contrary, the public would perceive the CTMs as advertisement statements conveying positive emotions and inciting to purchase the goods they covered.

The Board of Appeal went on and specified that such a positive invitation to buy, as provided by the contested BE HAPPY CTMs, could apply to any provider of any goods and, therefore, to any purchasing situation. Likewise, the CTMs evoked the joyful feeling for shopping and using the goods in respect of which protection was claimed, so that consumers could directly link 'BE HAPPY' to those types of goods. In the view of all these arguments the BE HAPPY CTMs could not identify and distinguish Steinbeck's goods in the market.

Steinbeck appeal to the General Court presenting a sole plea in law based on infringement of Article 52.1.a) in combination with Article 7.1.b) of Regulation 207/2009.

The Court sided with the Board of Appeal and reiterated its conclusion in regard to both the relevant public's identification and perception of the marks, not challenged by the parties, and the customary nature and structure of the CTMs which invited the consumer to be happy.

In addition, the Court underlined that, although the contested marks were not semantically descriptive of the goods they covered, this nonetheless failed to confer upon them distinctiveness. This was even more so given that BE HAPPY could describe the commercial value of such goods as deriving from an advertisement statement which caused the consumer to shop for them.

The General Court had to deny that the BE HAPPY CTMs could fall within the case-law admitting that a promotional formula can also serve as commercial origin identifier if it implies some interpretation or a cognitive process on the part of the relevant public. This was still confirmed despite the fact that the signs were short enough to be easily remembered and that for a sign to be distinctive it is not necessary that they are particularly original or fanciful.

However, besides constituting a promotional formula, these CTMs produced no resonance in the perception of the relevant consumers as is required for the purposes of the mentioned case-law. The Court concluded that the BE HAPPY marks were devoid of distinctive character because of their laudatory and promotional nature, this assessment being also unchallengeable in respect of Steinbeck's further arguments.

Significantly, the Court had to remind that the assessment of the distinctive character is undertaken within an abstract and in a priori examination aim at establishing whether the mark can lead consumers to distinguish the products and services it covers in the market. Consequently, it dismissed Steinbeck's claim that because of the placement of the BE HAPPY sign on the goods concerned, in a typical position for trade marks, consumers would have perceived them as commercial source identifiers.

The General Court finally rejected the argument that the Board of Appeal applied the case-law on mere slogan marks that are devoid of distinctiveness and had not instead applied the case-law which considers that a slogan can at the same time be a proportional formula and a trade mark, provided that the sign can serve identify and distinguish the goods and services of an undertaking in the market. The Court referred again to the case-law requesting that the slogan be more than a customary promotional message but that it also show a certain originality to serve as a trade mark.

Google says "We want your patent. Maybe."

The IPKat recently noticed Google’s latest initiative, which the search giant has alliteratively dubbed the “Patent Purchase Promotion”.This Kat belatedly spotted that Mike Mireles had already covered this over at our sister blog IP Finance, but thought that the initiative by Google might be of general interest to this blog's readers as well as providing a timely opportunity to highlight the IP Finance blog for readers interested in those issues that arise when money meets intellectual property rights.

Put at its simplest, Google is looking to buy patents. It is going to open a process where sellers can offer their patents to Google. The seller sets a price for each individual patent (must be a US patent, and not a portfolio or a family), and Google will decide to buy or not, with no negotiation taking place. As described on the Google Public Policy Blog post “Announcing the Patent Purchase Promotion”:
So today we’re announcing the Patent Purchase Promotion as an experiment to remove friction from the patent market. From May 8, 2015 through May 22, 2015, we’ll open a streamlined portal for patent holders to tell Google about patents they’re willing to sell at a price they set. As soon as the portal closes, we’ll review all the submissions, and let the submitters know whether we’re interested in buying their patents by June 26, 2015. If we contact you about purchasing your patent, we’ll work through some additional diligence with you and look to close a transaction in short order. We anticipate everyone we transact with getting paid by late August.
(There is one slightly arcane restriction on which patents are eligible to be sold. Google says it is not interested in any patent subject to a terminal disclaimer, due to the complications arising from splitting ownership between such a patent and other patents related to the terminal disclaimer.)

The terms of the deal are relatively straightforward. Assuming that the patent survives scrutiny of due diligence, the seller will assign it to Google, and will be granted a licence to use the invention. As to the terms of that licence, the FAQ says:
Question: If Google ends up buying my patent, can I still practice the invention?
Answer: Yes. As part of our Patent Acquisition Agreement ( see section 4.4), sellers will retain a license back to their patent. For you lawyers out there, the license is “irrevocable, nonexclusive, nontransferable, nonassignable (including by operation of law or otherwise), nonsublicensable, worldwide, [and] fully paidup.”
As one would expect by now, this rather clever company has framed its offer pretty shrewdly. They tell the world that they are open to purchasing patents, with no hint of any characteristics that might make those patents desirable (for example what fields of technology they are interested in), and no hint of what they might be willing to pay for any patent.

The IPKat expects that there will be a considerable flood of submissions from people hoping to make a killing at Google’s expense. Of these, it is natural to expect that many if not most will be overvalued by the seller (at least from Google’s standpoint), and that a much smaller percentage will be fairly priced or significantly underpriced (again from Google’s standpoint).

Having made no commitment to purchase anything yet, Google can confine itself to cherrypicking the bargains that it spots. While it might choose to buy very large numbers of patents as long as they are fairly priced, this Kat suspects that this is not about adding significant numbers of patents as a mere numbers game, but rather is intended to flush out some real gems. The IPKat may be wrong. It’s happened before.

Given this expectation, the IPKat is not sure that he is entirely convinced by the Google’s averred reason for the initiative:
We are looking for ways to help improve the patent landscape, and we hope that by removing some of the friction that exists in the secondary market for patents, this program might yield better, more immediate results for patent owners versus partnering with nonpracticing entities.
Of course it can’t be entirely selfless, and the IPKat suspects that Google is not expecting anyone to believe that it is purely an altruistic move. However, if it works, it’s probably a win-win for both parties when a patent is selected for purchase. Google (presumably) gets a patent it wants at a very good price, and the seller gets exactly what they asked for. A bird in the hand, and all that.

The IPKat will watch with interest and hopes that at the conclusion of the process there is some high level analysis released of the numbers of patents submitted and the percentage actually purchased. Finding out the price per patent actually purchased would be wonderful but this might be too much to hope for.

Thursday, 30 April 2015

How the EPO's sick leave policy stacks up internationally

In a post earlier this week on the continuing unrest at the EPO, Merpel mused on whether the EPO’s proposals to reform sick leave and long term invalidity policies were really so very different to the policies applying in other intergovernmental bodies and IP offices in Europe. Here's what she wrote:
She wonders: can some kind reader compile a comparative table of sickness-related provisions and benefits that apply for each of the organisations mentioned above, and any others she may have overlooked, so that she can publish it here and readers of this weblog can see for themselves whether the EPO staff have a genuine grievance or are merely in training for the Marathon Moan event at the next Olympics?

Well, this cri de coeur came up trumps. A very kind reader, who shall remain anonymous but who deserves enormous thanks nonetheless, has prepared a detailed comparison of the sick leave policies of the EPO as they currently stand and as proposed to be reformed (explained here), set against those of the following bodies:
  • CERN
  • European Commission
  • NATO
  • OECD
  • UN
  • WIPO
  • World Bank
  • Austrian Civil Service
  • German Civil Service

The document, which Merpel has hosted here, goes far beyond what Merpel had hoped for. The author cites sources carefully, explains the conclusions reached, and provides measured analysis of how the EPO’s regime compares to the other organisations listed. If any kind reader with knowledge of OHIM’s sick leave policy can add to this table and/or provide a copy of the sick leave provisions, Merpel would be very interested to know how it compares. She assumes it mirrors the EC provisions, but perhaps not. 

Table 1: Main Findings
Number of days of uncertified sick leave in annual cycle
Maximum duration of uncertified sick leave (working days)
Latest day of sick leave on which a medical certification has to be issued
EPO current
EPO proposed
1 – 4
World Bank
Austria, civil service
Germany, civil service

Merpel’s most concise explanation of the main table of findings, reproduced above, will follow an imaginary employee – let’s call him Benny -- who has the flu and is absent from work for a few days as a result. 

The middle column tells us that in most organisations surveyed, Benny can only be absent from the office without a doctor’s certificate for 2 or 3 days. In NATO and the UN, for instance, Benny needs to have a doctor’s certificate if the absence lasts beyond two consecutive days. At the EPO and European Commission, Benny needs to visit a doctor and obtain a certificate if the absence lasts beyond three consecutive days. So far, so good, and the EPO is in line with most of the other organisations.

Assume Benny has returned to work after three days’ absence. Six months later, he gets food poisoning and is incapacitated for 24 hours, requiring him to take a day off work. In every organisation surveyed, including under the EPO’s current regime, Benny could report in sick, tell his boss he expected to be in tomorrow, and this would be excused. Under the EPO’s new regime however (see column 1), Benny would already have completely exhausted his entitlement to uncertified sick leave for the full year, and would thus be absolutely required to visit the doctor that day and obtain a certificate to prove he was ill. He would have to produce that certificate to the EPO on the same day. (Merpel doesn't know how this works in Germany, Austria and the Netherlands, and has only the sketchiest understanding of human healthcare, but she sometimes has difficulty in getting a same day appointment with her vet. Presumably humans never have such problems.)

Benny would have to juggle these obligations with the requirement that he be at home between the hours of 10am – 12 midday and 2 pm – 4 pm in case the EPO decided to send a doctor to the house to check he was not malingering. He could leave the house, if he managed to get in touch with the President of the EPO and Mr Battistelli was agreeable to his absence from home.

For readers who want to read more and to verify that the data is reliable for comparison purposes, Merpel  can only suggest they pore over the details provided by her anonymous source in the linked document.

Merpel's own instinctive reaction is that the current allowance of 12 days uncertified leave in both the EPO and European Commission appears very generous,  but this does not justify the level of bad faith and suspicion evident in the reformed system. What employee could feel that there can be a relationship of trust with an employer who insists on a doctor’s certificate being provided on the very first day of an illness and who also (uniquely among the organisations surveyed) imposes an obligation to wait at home for the company doctor to ferret out fraudulent claims of illness during both morning and afternoon on each and every day when one is ill.

Finally, while the survey mentions the sick leave policies of the German and Austrian civil services, Merpel wonders if there are any readers willing to share how sick leave operates in each of the national IP offices which are under the stewardship of the delegates to the Administrative Council. These delegates had no hesitation in imposing the new sick leave regime on EPO employees at the request of the EPO President. Merpel wonders:
  • Did the AC delegates approve the EPO's new regime because similar provisions already apply in their own national IP offices? 
  • If not, should readers expect their AC delegates to push through similar reforms on their home turf?
  • If the national regimes are more liberal, and the AC delegates don't intend to push through similar reforms at home, is there something in the Weissbier that causes one's views to harden while in Munich and to soften on the plane or train home?
Merpel thinks she knows the answers -- but she would love to be wrong.

As ever, Merpel welcomes comments, but begs to remind readers of the following:
Henceforth, in respect of all EPO-related blogposts, no comment will be posted if it is merely ascribed to "Anonymous".  Any reader wishing to conceal his or her identity must adopt a pseudonym (which should not be obscene and should not be the name, or the mis-spelling of the name, of a real person).  The pseudonym need not be an actual login name, as long as it is stated clearly at the beginning and/or end of the comment itself. This way, it will be easier for people who post later comments to identify and remember the earlier comment-poster and to recall the discussion string.  Where, as has already happened on occasion, a string carries over from one blogpost to a later one on the same or a related subject, readers will be encouraged to use the same pseudonym for the sake of continuity.

BREAKING NEWS - EPO consults on proposed structural reform of Boards of Appeal

Merpel has just noticed that today the European Patent Office has published on its website an on-line consultation on the proposals for the reform of the administration and structure of the Boards of Appeal.  As reported by the IPKAt (here, here and here) the proposals, put by the EPO President to the Administrative Council in March, were ostensibly to increase the independence of the Boards of Appeal, but also (regrettably in Merpel's view) alluded to issues of efficiency.  Both AMBA (the Association of Members of the Boards of Appeal) and the Presidium of the Boards of Appeal raised concerns about some aspects of the proposals, as reported by the IPKat here.

The consultation will run until 30 June 2015. 

The consultation itself is

The proposals can be read in the links above, or in pdf form here.

The report of the March meeting of the Administrative Council is here.

According to the consultation form, input appears to be specifically solicited from Patent attorneys, In-house patent council, Attorneys-in-law/solicitors/barristers, Judges, and University/research institutions, and filling in one of these categories (or "other") is mandatory.  It is also mandatory to name the responder - so anonymous submissions are not welcomed.

Merpel urges interested parties to make their views known.

Wednesday, 29 April 2015

Wednesday whimsies

Logos wanted.  Last week the IPKat called for readers' submissions of new logos for the Office for Harmonisation in the Internal Market when it is rebranded as the European Union Intellectual Property Office. The Kat has received some good entries, but not nearly enough!  Come on, put your designer's clogs gloves pyjamas hat on and send us your best efforts. 

Forthcoming events.  Do please check out the IPKat's Forthcoming Events page -- there's plenty to educate the student, to inform the expert, to advise the investor, to connect the networker and to amuse the dilettante. Some of the events are even free, or reduced-rate for readers of this weblog. 

Talking of forthcoming events, the IPKat's friends in the Competition Law Association are holding one under the title "Intellectual Property Enterprise Court Practice". The speakers on the topic of this most welcome of courts are Judge Hacon himself, District Judge Melissa Clarke and Angela Fox (RGC Jenkins & Co, author of this book on the subject). The date: Monday 18 May, 2015, 6 pm. The venue: Courtroom 1, Competition Appeal Tribunal, Victoria House, Bloomsbury Place, London WC1A 2EB. Click here for details.

Which way round?  "Multilateralism at Risk: traditional intellectual property treaties and the threat of trade and investment agreements" is the challenging title of a forthcoming seminar at the Dickson Poon School Law, King's College London from 5 to 7 pm on Tuesday 26 May, in conjunction with the British Institute for International and Comparative Law.  Speakers are Sam Ricketson, Shira Perlmutter and Federico Ortino and you can register by clicking here [Merpel finds herself pondering whether one could ask the question the other way round: are trade and investment agreements threatened by a persistent longing for multilateralism? But that's another matter ...]

Around the weblogs.  While Merpel has posted at length (here and here) on the tussle of Big Bus and Ticketogo as to whether Big Bus can get disclosure of the licences that Ticketogo has granted to third parties in patent infringement proceedings in which it is the defendant, PatLit carries a short, sharp summary by Ian Wood -- who acted for Big Bus and who tells this Kat that Ticketogo has already received leave to appeal.  EU Law Radar carries a helpful review of Case C-160/15 GS Media [noted by the IPKat here and here], a reference to the Court of Justice of the European Union on what the author describes as porno hyperlinks and hyperleaks. IP Finance takes a look at the PatentVue weblog. 

Something to read? The Unitary EU Patent System, edited by Justine Pila and Christopher Wadlow, was published last month by Hart Publishing. It's neither a practitioners' manual nor a collation of academic abstractions, but rather a many-layered appraisal of this curious legislative package. According to the web-blurb:
The purpose of this book is to explore the key substantive, methodological, and institutional issues raised by the proposed unitary EU patent system contained in EU Regulations 1257/2012 and 1260/2012 and the Unified Patent Court Agreement 2013. The originality of this work lies in its uniquely broad approach, taking six different perspectives (historical, constitutional, international, competition, institutional and forward-looking) on the proposed EU patent system. This means that the book offers a multi-authored and all round appraisal of the proposed unitary system from experts in patent law, EU constitutional law, private international law and competition law, as well as leading figures from the worlds of legal practice, the bench and the European Patent Office. The unitary patent system raises issues of foundational importance in the fields of patent and intellectual property law, EU law and legal harmonisation, which it is the purpose of the book to engage with.
This blogger mentioned its publication on PatLit not so long ago, but he has now had a chance to see it in the flesh, as it were. Justine and Chris have assembled an impressive array of contributors from the UK and beyond, so he'd expect it to be good. Since the new European patent package is still capable of being described as "work in progress", it's unsurprising that this volume is described as the "First Edition": clearly we can expect a sequel. Further details are available from the publisher's web-page for it, here; there's no risk of a rupture because it's hand-luggage friendly.

World Intellectual Property Day: report of the IPAN event and a proposal for a centralised recordal system

The Directors of IPAN with Francis Gurry
Readers of this blog who are on Twitter and other social media can probably not possibly have failed to know that, ever faithful, World Intellectual Property Day turned up again as usual this year on 26 April.  This being a Sunday, some events were held in the preceding days.  Equally faithful, IPAN held an event on Thursday 23 April which however was transferred, because of the upcoming General Election, from its usual venue at the Houses of Parliament to the BPI at County Hall.

This moggy was delighted to run into not one, but two IP Ministers -- the current incumbent (at least until the General Election...) Baroness Neville-Rolfe, and her illustrious predecessor Lord Younger. John Alty, the CEO of the Intellectual Property Office (also known by the statutory title of the Comptroller-General of Patents, Designs and Trade Marks), was also in attendance, together with many other luminaries of the IP firmament.

For the report of the event itself, this Kat can do no better than call upon IPAN's own summary, which he gratefully reproduces here:


In an introductory message to the 100 or so guests attending the IP Awareness Network’s (IPAN) annual London celebration of World IP Day, the Director General of the Geneva-based World Intellectual Property Organization (WIPO), Mr Francis Gurry said: 

Intellectual capital is the basis of wealth creation today. This has elevated the importance of intellectual property as intellectual property captures the competitive advantage conferred by innovation and investment in intangible capital”.
Mr Gurry led a distinguished speaker panel which included Mike Weatherley, the former MP and IP adviser to the Prime Minister and the prominent designer Sebastian Conran, in discussing the theme of the IPAN celebration: “IP a 2020 Vision”.  Mr Gurry focused on the state of play of IP at an international level, ranging from the complexities and challenges of policy-making in the internet era to the continued growth in patent and related IP filings even in today’s difficult economic conditions.  He said, 
“We are living through a period in which innovation has become central to the economy and experiencing a profound revolution in the production, distribution and consumption of creative and cultural works. Intellectual property is key to responding to the magnitude of the challenges that are arising from the centrality of innovation and the digital revolution.”
Giorgio Sincovich, a senior IP Crime expert with Europol, speaking about the challenges of dealing with IP crime and enforcement, said:   
“Close cooperation between government and law enforcement agencies and the private sector is key to winning the fight against IP crime especially in day-to-day consumer goods. The profits generated from this type of crime are huge, rivalling those from better known forms of organised crime. Focusing on the financing of IP crime is essential to disrupt the criminal groups involved and so protect the health and safety of EU citizens.”
In her closing remarks, Professor Ruth Soetendorp, IPAN’s Chair, said, 
“Our vision for the future is to engage IP committed organisations and individuals in building on IPAN's 21 years of raising awareness of IP's value and importance within education, finance, business and parliamentary circles.”
During the Event, IPAN launched its newly revised Issue Briefs for parliamentarians and others seeking basic information about IP topics.  Also the Chartered Institute of Patent Attorneys (CIPA - an IPAN member and Event sponsor), publicised its newly developed Manifesto for the IP System and supporting video aimed at influencing the new Government to ensure that all forms of IP actively promote entrepreneurship and enterprise.

There is more about the event on IPAN's website here and here.
It was a great pleasure to hear again from the erudite Dr Gurry, who also graced with his attendance the 10 year celebration event for this very blog.  An interesting idea arose in discussions with Dr Gurry over tea at CIPA before the event, which he mentioned in response to a question asked at the IPAN event, and which - you heard it here first - the IPKat will now reveal.

The speakers: Francis Gurry, Mike Weatherley,
Giorgio Sincovich and Sebastian Conran
Registration of assignments, licences and securities on registered rights internationally can be a very expensive process.  The formalities required differ considerably from country to country, and many jurisdictions still require translations, notarisation, legalisation, and other costly certifications.  How about an international treaty, administered by WIPO of course, to provide a centralised, and much cheaper, mechanism of recordal, with the minimum of extraneous formalities?  This would benefit the rights holders and licensees by reducing the cost of recordal, and would benefit third parties as then registers would be much more likely to be accurate and up-to-date.  The complexity of the current systems means that often registration never takes place at all, with the result that the real owners of rights, and other parties with an interest in them, can often be difficult or impossible to determine.  As it happens, in a case reported by the IPKat this very morning, apparently only 38 of a total of 60 licences were actually recorded on the Register.

What do our readers think?

The tale of Ticketogo, or Does My Bus Look Big in this Licensing Scheme? Part II: the decision

Continued from Part I ...

The decision

Would Big Bus and Ticketogo be likely parties, should proceedings be commenced?  


Would the disclosure sought by Big Bus also be subject to Ticketogo's standard disclosure obligations should proceedings be commenced?

Yes, but only in relation to the subset of documents sought by Big Bus.  Ticketogo's solicitor had argued three points.  First, if Ticketogo brought an infringement claim, there would be a split trial. If Ticketogo was unsuccessful on liability then there would be no inquiry as to damages.  Accordingly, there would be no disclosure of documents relating to quantum. To this the judge responded that although it is usual, it is not set in stone that the trial would be split.   Even if it was, under Baldock the obligations for discovery extended to documents relating to quantum notwithstanding the presence of a split trial. Arnold J considered the cases of Hazeltine and Kapur to be consistent with this and the position under the Civil Procedure Rules to be much the same as under the old rules (which were at issue in Baldock). Arnold J continued:  
"... CPR rule 31.5(8)(f) empowers the court to order disclosure in stages, which includes ordering disclosure only in relation to liability in the first instance, but that depends on the exercise of the court’s discretion. The fact that the court will normally exercise its discretion in favour of staged disclosure does not undermine the proposition that, in principle, the duty of standard disclosure extends to documents relating to issues as to quantum. Unilin v Berry is consistent with this."
Secondly, Ticketogo's solicitor argued that if Ticketogo was successful, it might elect for an account of profits in which the licence agreements would not be relevant.  The judge considered that it was more likely that TIcketogo would elect for an inquiry as to damages than an account of profits. Indeed, when the judge asked Ticketogo's solicitor whether Ticketogo would be prepared to undertake only to seek an account of profits in an claim against Big Bus, "unsurprisingly the answer was no".  

Thirdly, even if Ticketogo elected for an inquiry as to damages, it was not the case that all licence agreements would be relevant.  Here, the judge agreed that only a subset of documents would be disclosable as not all licences under the patent would be "sufficiently comparable that they would fall within Ticketogo's duty of standard dislcosure on an inquiry as to damages".  At this juncture, the judge considered that the duty of standard disclosure would extend to all licences in the transport sector.  

Was the disclosure sought desirable in order to dispose of or help settle the proceedings or in the interest of costs?  

Yes, large sums of money may have been spent by parties at the liability stage.  Sometimes, and worryingly, these sums can exceed that than the value of the claim.  Mr Justice Arnold cited two of his cases where this had occurred: Force India Formula One Team Ltd v 1 Malaysia Racing Team Sdn Bhd [2012] [noted by the IPKat here] and Primary Group (UK) Ltd v Royal Bank of Scotland plc [2014].  It was therefore desirable for the parties to be able to make realistic and informed assessments of the value of the claim as soon as possible.  Where key information is held by one party, it is desirable for that party to disclose the information.  Such information can promote settlement without the recourse to proceedings.

Further, the value of the claim helps determine how the case should be managed should proceedings ultimately be commenced (i.e. proportionately to the value of the claim).  To this end, Hazeltine and Baldock should be distinguished in that they were decided before the Woolf and Jackson reforms, the latter of which emphasizes proportionality of case management.  Further, in all of the four cases cited, limited disclosure had been offered, suggested or ordered by one of the parties or the court.  The courts therefore recognized the desirability of 
"... some disclosure as to quantum being given at an early stage. What the courts have resisted is the expense of full disclosure of documents relating to quantum being given prior to liability being established in cases where a split trial has been or is likely to be ordered, which would defeat part of the object of a split trial."
Should, in the Court's discretion, disclosure be ordered?

Yes.  Significantly, Ticketogo's solicitor made submissions relating to its "freedom of negotiation", i.e.,that it was desirable for Ticketogo to negotiate licences individually with licensees without each licensee knowing what the other licensees have agreed to pay.  This freedom of negotiation permits each party to maximize the licence income it obtains from each licence.  Mr Justice Arnold stated that, in his view 
"... this is the real point of principle raised by this application: is it an answer to an application for pre-action disclosure that is otherwise well founded that it would deprive a patentee (or other right owner) of the ability to conduct its business in that manner? In my judgment, it is not. On the contrary, I consider that, here as in other contexts, transparency is a virtue. Availability of price information is one of the key requirements for the proper functioning of any market, and I see no reason why the market for patent licences should be an exception to that rule. Why should Big Bus be obliged, if it does not wish to litigate, to accept whatever royalty rate Ticketogo now sees fit to offer it, if a court would award less by of damages? Accordingly, I consider that it is appropriate to exercise my discretion in favour of disclosure."
Related to this point is that Big Bus cannot form its own assessment on the value of the claim without this disclosure.  The fact that other licnesee entered into licences with Ticketogo without the benefit of disclosure, does not demonstrate Big Bus' ability to formulate the value of the claim.:  
"With the exception of the first licensee to take a licence, they could have made similar applications to that now made by Big Bus. Why should Big Bus have to fight and lose on infringement and validity in order to find out what it would have to pay by way of damages?"
Practical point

The closed, private world of patent, licence negotiation may have been cranked open following Big Bus's success.  There are sure to be further applications hot on its heels.  Meowing out loud, Merpel wonders if someone already subject to a licence agreement could bring about the end of the contract and then launch an application for pre-action disclosure on the basis that the licensor would then sue them for infringement (subject to the terms of the contract).  The purpose of such an application would be to see whether they had entered into a good or bad deal (subject to the dispute resolution clauses in the contract).   

The model of patent licence entities sending letters en masse to alleged infringers in the hope of securing licence agreements may lose some of its lustre as a result of this case.   The reward in successfully cajoling a company into a into licence agreement in order to avoid the threat of high litigation costs may no longer be worth it if the price the troll under the bridge has to pay is disclosure ...

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