The team is joined by: GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopoulou, Mathilde Pavis, and Eibhlin Vardy; by InternKats Ieva Giedrimaite, Rose Hughes, and Cecilia Sbrolli; and by Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Sunday, 21 January 2018

Image rights and the unauthorized use of one's own portrait on cigarette packs

Plescia's image and
the warning that
"Smoking causes strokes and disability"
Can someone's own image be used without permission?

This question may have different answers, depending on both the context in which the relevant image is used and the legal system considered. With particular regard to the latter, in countries that envisage 'image rights' (or publicity rights), the availability of protection may be even irrespective of the context in which one's own image is being used.

Italian law

This is for instance the case of Italy which, similarly to other continental European jurisdictions, has a long-standing history of protecting image rights. 

The relevant provision in the Italian Civil Code, ie Article 10, states that if one's own image is displayed or published outside the cases in which the display or publication is allowed by law, or in situations which are prejudicial to the honour or reputation of the person, a court may - upon application by the interested person - order that such use is brought to an end, as well that damages are awarded.

In a similar tone, Article 96 of the Italian Copyright Act states that - subject to some limitations pursuant to Article 97 thereof - the portrait of a person cannot be put on display, reproduced or used commercially without their consent. 

The image rights story that a number of Italian newspapers [eg here and here] have reported is therefore quite interesting.

Maurizio Plescia
Becoming a health warning ... without knowing it

A man from Ischia (one of the islands in the Naples Gulf), Maurizio Plescia, was quite shocked when he found out that his image was reproduced on the cigarette packs marketed by different multinationals, as part of what the EU Tobacco Products Directive calls ‘combined health warning’, ie health warnings consisting of a combination of a text warning and a corresponding photograph or illustration illustrating the risks of smoking.

The image of Plescia represented him while hospitalized in Colombia. He had gone there to visit his former partner and - further to certain breathing issues - had taken a medication to which he happened to be allergic. Together with the initial symptoms of pneumonia, such allergic reaction resulted in his hospitalization.  

Apparently while he was lying in his hospital bed, someone took a photograph of him. Subsequently such photograph was included in the picture library administered by the EU Commission pursuant to Schedule 2 of the Tobacco Products Directive, which contains images to be used for the marketing of tobacco products [if you wish to know more about the rationale of health warnings, see here].

Apparently Plescia was not the only one to come forward as the person allegedly depicted in the image of the man in bed, and this has complicated the matter further for him. However, he eventually managed to obtain an expert certification that there are no doubts that the person represented in the image is really him. He first contacted the companies marketing the relevant cigarette packs, but these said that they have no control over or responsibility for the use of the images selected for use on packaging of cigarettes, and that the EU Commission would be rather the one to address.

What's in one's own image?
Other cases

There is abundant case law concerning the unauthorized use of one's own image, and this blog has reported on decisions which have found an infringement of image rights even lacking use of one's own actual image. 

Protection has been granted also in instances relating to the unauthorized use of one's own image in situations in which one was filmed during a public event. For instance, the Italian Supreme Court has held that a TV programme could not use one's own image, captured during a football match, after that event's current character has ended (in this specific case, 6 years after the match).

Some readers might have also read news reports [hereherehere] that a judge in Rome has recently ordered - at the risk of a financial penalty - the mother of an teenager to refrain from publishing pictures of her son on social media. Although the text of the decision is not particularly detailed in the legal reasoning part, it seems that also the protection of one's own image has played a role in the conclusion reached.

A comment

Newspapers do not report whether Plescia’s case has come to an end, but it seems quite incredible – if true - that one could be photographed without their authorization and the resulting image could be included in the Directive's picture library and subsequently used for combined health warnings without obtaining all necessary permissions.

In this sense, Plescia’s case is a useful reminder that, when it comes to using third-party images, wannabe users should not be just concerned about copyright issues (including the non-assignable moral rights of the author of the photograph), but also the rights of the person(s) portrayed in the photograph. The latter may present potentially a risk also in those countries that do not explicitly recognize the existence of self-standing image rights. In this sense, the quite recent Rihanna case in the UK is a telling example [here and here].

Sunday Surprises

Here are a few events and opportunities not to miss out on!

A two-in-one event in Milan! On 23 January 2018, by joint effort of the Università di Milano and the Italian Competition Authority, there will be an IP & antitrust event comprising a seminar on “Abuses in patent filing and regulatory procedure in the pharmaceutical sector and a book presentation of the work, edited by Giovanni Pitruzzella and Gabriella Muscolo of the Italian Competition Authority, titled “Competition and Intellectual Property Law in the Pharmaceutical Sector. An International Perspective”. Speakers will include judges, lawyers, professors, Authority officials and industry representatives. Further information and registration here.

Abuses in patent filing make for an angry Kat
On 16 and 17 April 2018, the University of Exeter will host the conference “Intellectual property in transitions: (Re)-imagining intellectual property. The conference is aimed at discussing how the dramatic multi-faceted changes of our times have or will have an impact on IP law. The conference committee has opened the call for contribution for paper and panel submissions (see the call here) and a prize of £200 will be awarded to the Best Presentation given by a Postgraduate Researcher. More information on the event here.

Yann Meniere and Pia Björk, respectively the Chief Economist and the Programme Manager at the EPO, will talk, on 26 January 2018, about "IP Management and IP Strategy in Small and Medium Sized Companies – Perspectives from the EPO" on a free webinar. The talk will revolve around some case studies undertaken by the EPO, on patent leveraging with an eye to support the development of SMEs. More information on the case studies here and link to the webinar registration form here.

For those out there in search of the doctoral challenge, a very interesting proposal comes from the ULB (Université Libre de Bruxelles). The Belgian University offers a full-time research grant for a 3-year period to write a thesis on “Interactions between Intellectual Property Law (IP) and Artificial Intelligence (AI)”. Deadline for applications is 16 April 2018. For more information on the various  requirements and specifics, see the call here.

To end on a jolly note, a few week ago, GuestKat Mathilde published the interesting post 
Erasing Kevin Spacey: performers' rights to the rescue?. Tweet after Tweet, the post was noticed and Mathilde was asked to rewrite the post for the Independent, which you will find here.

Around the IP Blogs!

IPKat keeps you up to date with more news and views from around the IP blogosphere!

Case law


Quick off the mark, the MARQUES trademark blog reviews last week’s opinion of the Advocate General on validity of the EUTM “Neuschwanstein”. The Advocate General upheld the General Court’s decision that the State of Bavaria’s EUTM “Neuschwanstein”, a German fairy tale castle and popular tourist attraction, is not descriptive of the goods and services covered by the mark and not therefore not invalid.

MARQUES also posts on the recent CJEU opinion, Red Paralela and others v Orangina Schweppes, concerning the effect of the exhaustion of rights rule of Article 7(1) Trademark Directive on the right of a trademark owner to oppose the importation of goods affixed with the trademark, when the trademark was placed on the goods by an assignee of the trademark in another EEA member state. The CJEU held that the importation of goods bearing the trademark could not be opposed, because the owner had promoted the trademark as a single global trademark. 

Exhausted his rights?

The Blog of European Patent Law reviews the recent decisions issued by the EPO technical board of appeal (BoA). Highlights include T796/12, in which the BoA considers the admissibility of an appeal filed by a company that was in fact dissolved before the appeal was filed due to bankruptcy, and T1127/14, in which reimbursement of the appeal fee is considered in view of a violation of the right to be heard following modification of the description by the Opposition Division without submission to the Patentee. Also look out for The Blog of European Patent Law's invention of the week!

In the US, IPwatchdog provides an overview of the current US case law concerning the obviousness and anticipation for claims directed to an isolated component of a prior art mixture. Examples of such claims include pharmaceutical products comprising a single enantiomer isolated from a known racemic mixture. The takeaway messages include that for “an isolated component to potentially be vulnerable to an anticipation attack, the anticipatory reference needs to specifically identify and characterize the component, and must teach how to isolate the component”.

Patentylo reports on a reminder from the US Federal Circuit that an inventor who signs an employment agreement providing that an inventor “will assign” rights to inventions, doesn’t mean that she does, in fact, assign them. The issue in this appeal case was whether a co-inventor of a patent transferred her co-ownership interests in the patent under the terms of an employment agreement.


The MARQUES designs blog analyses the recent Acacia designs cases, in which the CJEU considered the scope of the so-called repair clause (Article 110(1)) of the Community Design Regulation (CDR). The repair clause excludes Community Design protection for designs constituting a component part of a complex product for the purpose of the repair of that complex product. In a decision termed “revolutionary” by MARQUES’s Fabio Angelini, the CJEU ruled that the scope of the repair clause is not limited to component parts of a complex product necessary to the appearance of the protected design, but applies to any component parts of the complex product.

News and opinion

Brazilian patent prosecution can be a bit of a waiting game (discussed by IPKat back in 2015, and IPTango last year). IP watchdog now reports that, to deal with the backlog, the Brazilian Government is considering the emergency measure of automatically granting (without examination) more than 200,000 patent applications.

Instituto Nacional da Propriedade Industrial (INPI), Brazil

IPDebate’s Ashley Cohen considers the effect of the WIPO’s Beijing Treaty on Audiovisual Performances. The Beijing Treaty extends the minimum standards of moral rights provided under the Berne Convention to audiovisual performers. Cohen also considers the difference in the protection of moral rights in US, France and UK. 

Finally, feeling in the need for an overview of the current state of copyright law? The 1709 Blog’s CopyKat, provides!

Friday, 19 January 2018

Teaching IP to kids with Ed Shearling, Kitty Perry and friends

Ducks can come up with great logos in a matter of minutes
Many people have puzzled over how to educate the public about intellectual property.  This task is even harder when trying to educate children.  The UK IPO believes it has found a solution...

Children like cartoons, so they made a cartoon about IP told through the story of Nancy (a French bulldog) and her gang of meerkats.  There are lots of videos and other resources in the series but the episode which caught the attention of the BBC concerns logos...

Ed Shearling - guess the animal...
Nancy is helping her mate Ed Shearling to set up his band.  In an excellent example of client management she starts her meeting by questioning his choice of ducks as backing singers.

With the tough questions over, Nancy delves into the IP issues with the help of a mysterious geezer in a suit.  It then becomes an episode of Mastermind with Ed being introduced to the concept of "logos" and immediately subjected to a tough quiz.  Amazingly, Ed cracks the first clue ("who do you think is behind this logo shaped like an apple?") in record timing - cue major meerkat excitement.

Justin Beaver
Ed Shearling is very inspired by Justin Beaver and doesn't think it would be so bad for people to get them confused.  But Nancy's suited and booted manager cautions against this approach

For those who remember the Moshi Monsters dispute over Lady Goo Goo (who appeared together with Dustbin Beaver), it is particularly surprising that the UK IPO has adopted these names for its cartoon.  Others have criticized whether the £20,000 spent on the videos was money well spent.

One final thought - the BBC's  coverage of the new resources focused on the trade mark videos but the average person reading the article (headline: Kitty Perry and the copyright lessons for seven-year-olds) would assume that copyright is the only form of intellectual property. Admittedly trade marks do get a mention but it is buried in the text).  Perhaps IPO resources would be better focused on educating the media before worrying about kids getting to grips with IP.

Huge thanks to Amit Alagh (Wolters Kluwer) and James Sweeting (Superdry) for flagging this story on the BBC website!

You can watch the band logo video here and all of the Nancy & the Meerkats resources are available on the UK IPO here.

Prosecution history - as relevant as any inventor evidence?

Readers interested in patent law will be familiar with last summer's decision of the UK Supreme Court in Actavis v Eli Lilly [2017] UKSC 48 This has raised a number of issues, including whether the Supreme Court decision opens the door to greater use of the file history in the UK.  Taly Dvorkis of A&O enters into the debate, examining the differences in US and UK law, and queries whether it is linked to inventor evidence:

The inventor Kat taking centre stage
"At the November UCL debate "Equivalents: K = Na. Is the genie out of the bottle?" (reported on IPKat here and here), U.S. Court of Appeals for the Federal Circuit Judge Kathleen O'Malley expressed the view that had the Actavis v Lilly case come before a US court, the result may have been different, in light of the established doctrine of prosecution history estoppel, whereby concessions made by the patentee during prosecution limit the scope of equivalence that can be sought.

Prosecution history estoppel has not been applied in English proceedings, and it remains to be seen whether that will change in light of Actavis v Lilly. The judgment does not completely discount the relevance of the prosecution file but finds it is appropriate to take "a skeptical, but not absolutist, attitude" towards it.  The judgment reiterates the oft-repeated words of Lord Hoffman in Kirin-Amgen [2005] RPC 9: “The courts of the United Kingdom, the Netherlands and Germany certainly discourage, if they do not actually prohibit, use of the patent office file in aid of construction. There are good reasons: the meaning of the patent should not change according to whether or not the person skilled in the art has access to the file and in any case life is too short for the limited assistance which it can provide.”

Do those jurisdictions that take into account the contents of the prosecution file (such as the US) do so because there it is assumed that the skilled person would also have examined the file? That is unlikely. Rather, I think the difference between the UK and the US approaches is more fundamental - it is the difference in how all inventor evidence is treated.

Patent litigation in the UK has no need for the patentee. It is becoming increasingly difficult to obtain disclosure of inventor documents. What the inventor thought was invented, the work done to get there, and how the inventor understood the state of the art are not relevant - rather, the scope of patent protection is whatever the skilled person would have understood it to be. There is no need for evidence from the patentee (who may not be a skilled person but may have extraordinary skill in the art).

In the US, the patent scope is similarly determined by reference to the skilled person; however, the patentee plays a greater role in the litigation. Much of the discovery revolves around the patentee, including disclosure of the inventor’s documents and the taking of inventor depositions. Often the first witness to testify at trial - whether before a judge or jury - is the patentee, telling his invention story. The inventor's views and corresponding documents may be used to try and define claim scope, obviousness, novelty, and the state of the art.

It is not surprising, in this framework, that evidence showing a patentee’s back-and-forth with the patent office could have significance in narrowing the scope of protection. Meanwhile in the UK regime where evidence from inventors is not relied upon, there has been no need to rely upon the file history or apply estoppel. The underlying rationale is not only that “life is too short” - rather, as with all evidence pertaining to the patentee, it isn’t needed. Or is it?

Even before Actavis v Lilly, a skilled person had to take into account the patentee’s intent when applying the third Improver question, which asks: “Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention?” The patentee’s intentions remain at the root of the third question as reformulated by Actavis v Lilly: “Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?”
To assess equivalence, a patentee’s intentions need to be known. As mentioned at the UCL debate, those intentions may be gauged from the language of the specification, such as when the patentee specifically disavows a potential equivalent. But the intentions can also be learned from the file history, as the judgment acknowledges.

Actavis v Lilly demonstrates there may be room to consider the file history, and by extension, evidence from the patentee. It remains to be seen whether the court will apply prosecution history estoppel to limit equivalence, but if it does - what’s next? Would other inventor evidence be taken into account? That seems unlikely, given the general trend to limit disclosure."

These obervations on inventor evidence resonate with this Guestkat's experience in the UK. What do readers think?

Thursday, 18 January 2018

Swedish Patents and Market Court of Appeal requests CJEU to clarify notion of ‘shape, or another characteristic, which gives substantial value to the goods’

The 'Manhattan' print
While trade mark professionals are keenly awaiting the outcome of the Louboutin reference [the case has been re-opened, and a new Opinion of Advocate General Szpunar, on which see here, is due on 6 February], the appeal branch of the specialist Swedish IP court has made a reference to the Court of Justice of the European Union regarding what is to be intended as ‘shape, or another characteristic, which gives substantial value to the goods’. 

The reference concerns Article 7(1)(e)(iii) of the 2009 EU Trade Mark Regulation as amended by Regulation 2015/2424 [now Regulation 2017/1001].


The reference has been made in the context of infringement and invalidity proceedings regarding EU trade mark (EUTM) ‘Manhattan’.

Svenskt Tenn is an interior design company, and has acquired a good reputation for its products. The company also notoriously collaborated with famed Austrian architect Josef Frank. The collaboration resulted in Mr Frank producing 2,000 furniture sketches and 160 textile prints, which are still marketed and sold by Svenskt Tenn. Among the textile prints, there is a pattern known asManhattan’.

Svenskt Tenn claims that the pattern that Mr Frank designed is an artistic work within the meaning of the Swedish Copyright Act, in which the company holds the copyright. Since 2012 the company has also owned the EUTM “Manhattan” (No 010540268), this being a figurative mark characterized by the colours blue, white, green, and red. The trade mark is, inter alia, registered in classes 21 and 16 of the Nice classification for: tissues and textiles (class 21); and table cloths, napkins posters, and graphic presses (class 16).

Textillis is a UK company that since 2013 has also sold and marketed textile prints through its online marketplace. Textillis has allegedly sold certain fabrics and textiles incorporating the pattern designed by Mr Frank. 

Josef Frank
Svenskt Tenn brought proceedings against Textilis on grounds of copyright and trade mark infringement. It argued that the Patents and Market Court (lower instance) should prohibit Textilis from selling the specific items and prohibit use of the Manhattan trade mark. In response to Svenskt Tenn’s application, Textillis argued that the Patents and Market Court should revoke registration of the 'Manhattan' trade mark. According to Textillis the reason for this was that Manhattan lacks distinctive character and that the sign is a shape that gives the product a substantial value, thus being ineligible for registration.

The Patents and Market Court (lower instance) found that it had not been demonstrated why the Manhattan trade mark should be revoked. In support of this, it held that the EU Trade Mark Regulation states that a EUTM may consist of all signs which can be represented graphically, including images, provided that they have distinctive character. In this regard, because pattern-like images can be registered as trade marks, the Court found that the elements represented in the Manhattan design are signs that are likely to attract trade mark protection. Furthermore, the Patents and Market Court found that the registration of the Manhattan trade mark did not entail a sign consisting of a shape. Thus, a trade mark could not be cancelled on the basis of the absolute grounds for refusal within Article 7(1)(e)(iii) of the Regulation.

The CJEU reference

The case was appealed to the Swedish Patent and Market Court of Appeal which decided [see also here] to stay the proceedings and refer the following questions to the CJEU [please note that the reference is not yet available on the Curia website so the translation from Swedish may not be accurate]:

1. Whether Article 4 of Regulation 2015/2424 means that the wording of what is now Article 7(1)(e)(iii) of the EU Trade Mark Regulation applies to invalidity proceedings brought after the entry into force of the new provisions but in relation to trade marks registered before that date;

2. Whether Article 7(1)(e)(iii) of the EU Trade Mark Regulation should be interpreted as meaning that its scope covers a sign consisting of the two-dimensional representation of a two-dimensional product, including a fabric; and

3. If the answer to question 2 is yes – how should the wording in Article 7(1)(e)(iii), “shape, or another characteristic, which gives substantial value to the goods", be interpreted? Would it cover a situation where the registration includes a variety of classes of goods and services and the sign in question could be applied differently to the various goods and services covered by the registration? 

The IPKat will follow this reference and reports on relevant updates in due course.

Presentation of information: Is the EPO stretching the line for patentable subject-matter, again?

A cat looking for information
The new Guidelines for Examination of the EPO, valid from 1st of November 2017, include an interesting revised (and rather detailed) section G II 3.7, dedicated to the patentability of claims based on presentation of information. Presentation of information under 52(2)(d) of the EPC includes any form of information (such as visual or, audio) and covers both its cognitive aspect as well as the means of communication. However, the fact that the claims include purely cognitive (and thus non-technical) aspects does not automatically mean hat they are excluded from patentability. Presentation of information that assists the user in achieving a technical task has a technical effect (confirmed also in T336/14 and T1802/13). 

This, one could claim, is old news. Nonetheless, the Guidelines continue by stating that whether a specific invention falls under the scope of Art. 52(2)(d) might depend either on its content or on the way it is presented. When the information has as its sole objective to assist the recipient in making a purely non-technical decision, then the presentation of information is non-technical:

“Information representing a state of a non-technical application run on a computer system, such as the state of a casino game, a business process or an abstract simulation model, constitutes non-technical information. This type of information is exclusively aimed at the user for his subjective evaluation or non-technical decision-making which is not directly linked to a technical task".
This means that what is important is the role this information plays: will it be used for a technical purpose or not?

The Guidelines continue:
“A feature defining a presentation of information produces a technical effect if it credibly assists the user in performing a technical task by means of a continued and/or guided human- machine interaction process (T 336/14 and T 1802/13). Such a technical effect is considered credibly achieved if the assistance to the user in performing the technical task is objectively, reliably and causally linked to the feature.”

The Guidelines add yet another requirement, namely,  the manner of presenting information should produce in the mind of the user an effect that does not depend on the user’s psychological factors but on purely objective physical parameters. The choice of one or another way of presenting information, when this is based on the subjective preferences of the recipient (some prefer that information is presented in numerical way, others in text,  yet others that the information to be conveyed in writing in some audio-visual manner) may thus not be considered technical. On the other hand, when the choice of presentation mode depends on the recipients physiological attributes, the presentation of information has a technical character. 

One of the examples referred to in the Guidelines is  a  visual aid that permits a surgeon to position an implant in a more precise, timely and credible manner. Such a presentation of information would in fact provide technical effect.  Yet another interesting example provided by the Guidelines is that of a soccer game:

“In a video soccer game, the particular manner of conveying to the user the location of the nearest teammate by dynamically displaying a guide mark on the edge of the screen when the teammate is off-screen serves the technical purpose of facilitating a continued human-machine interaction by resolving conflicting technical requirements: displaying an enlarged portion of an image and maintaining an overview of a zone of interest which is larger than the display area”

So far so good! But where do we draw the line of patentability when it comes to inventions that cover methods related to the presentation of information? It seems that the above-stated example allows for a certain  range e of interpretation. When the presentation of information (both content andr method of presentation) allows the recipient to perform a technical act (in the previous examples, placing an implant or identifying a player) in a more timely, precise and credible manner, it will be considered to have a technical effect. 

OK, but how about, for instance, claims related to lean manufacturing? Lean manufacturing covers methods that involve the development of information and the appropriate communication of the information to users (employees involved in the production process)., It has as an objective to minimise waste and costs and to maximise efficient production, taking into consideration objective factors such as the number of employees, the space, the nature of the product, and the constraints of the manufacturing processes.. An application of the Guidelines would lead us to the conclusion that although lean is per se not technical, it might in fact provide a technical result, since it is presented proactively,  depends on the user’s physical parameters, and its goal is to enable the user to perform a task in a more efficient and precise manner. The result of the different steps of a lean production method are in fact technical (such as reduced time, decreased number of accidents, and  enhanced quality of products). Against this backdrop, it seems that the new G II 3.7EPO Guidelines open up  new opportunities with regards to the definition of patentable subject-matter.

A final thought: If applying the Guidelines leads to the conclusion that a method of lean manufacturing could be a patentable invention, how far away are we from discussing patentability of pure business methods in the EPO? 

Wednesday, 17 January 2018

Around the IP Blogs!

As the January blues have seriously started to kick in, the IPKat is in search of some excitement around the IP blogland. Stay warm and cozy, Kat friends!

IPKat doesn’t mind a duvet day!
The 1709 Blog discusses the proposed Music Modernization Act in the U.S., directed to an overhaul of the system of royalty arrangements for mechanical licenses. This piece of legislation proposes a mechanism, under which digital services would fund a Mechanical Licensing Collective, and, in turn, be granted blanket mechanical licences for interactive streaming or digital downloads of musical works.  Although paid for by the digital services, the new collecting society would be run by music publishers and (self-published) songwriters. The law would also change the way the statutory boards and courts that regulate US collective licensing are organised; the selection method for judges to rate courts; and the criteria employed when setting rates that would be altered to reflect market realities.

JIPLP looks at the CJEU’s decision in C-265/16, VCAST, which analyses the intersection of private copying and communication to the public in the context of the cloud. The Court held that a service enabling private individuals to receive free-to-air television content and directly record it onto a personal cloud storage space was unlawful. Even though the Court did not address the applicability of the private copying exception to cloud services in general, it did not foreclose its application of this exception. The exception should arguably apply to copies made by individual customers of the service in cases where the work is lawfully made available or the cloud service is predominantly characterised by the reproduction function.

Over at the Kluwer Patent Blog, the patent light shines onto the IP community’s request for governmental action to ensure continuity and certainty of IP law in the context of Brexit and to prevent disruption both to IP providers and its users. The document of the IP organisations, inter alia, seeks UK’s continued intention to stay in the UPC and to abide by the terms of the UPCA, to retain one of the sections of the Central Division in London, and to ensure continued involvement of UK national judges and participation of legal professionals qualified and based in the UK in all parts of the Court’s procedures.

IP Draughts reviews the process by which this document was drafted and also comments on its substantive contents. It is anticipated that many more such communications from the IP industry stakeholders are on the way, aiming to enlighten governmental officials on the issues that Brexit raises for IP law and policy.

The IPKat snuggles in a trade mark blanket to find some celebratory news from WIPO and EUIPO as announced on Marques.The ROMARIN, Madrid e-Alert and Madrid Realtime Status tools have all been discontinued by WIPO as of the 1st of January 2018, leaving Madrid Monitor the only tool for tracking the status of international trade mark applications and registrations under the Madrid System. The first day of this year also marks the effective date for the 11th edition of the Nice Classification. EUIPO bids farewell to the good old fax as a method for filing and renewing a EUTM.

Image credits: Aymeric Kaczmarski

New presidency of the Council of the European Union ... new position on the EU copyright reform?

Following the conclusion of the 6-month Estonian presidency, the presidency of the Council of the European Union is now Bulgarian, and will be so for the first semester of 2018.

The Council is one of the key EU institutions and brings the voice of Member States' governments into the decision- and law-making process. In fact and among other things - together with the European Parliament - the Council is in charge of adopting EU legislation.

Of course, one of the pending pieces of legislation that might receive a decisive boost towards its formal adoption over the next few months is the Directive - proposed by the EU Commission in September 2016 - on copyright in the Digital Single Market [here; Katposts here].

Since its release, the draft directive has attracted extensive commentary. In particular, the draft provisions contained in Article 11 ('Protection of press publications concerning digital uses', this being a proposal to introduce a new neighbouring right in favour of press publishers) [Katposts hereand Article 13 ('Use of protected content by information society service providers storing and giving access to large amounts of works and other subject-matter uploaded by their users', this being a proposal to be read in combination with Recital 38 in the preamble to the directive and aimed at remedying the so called 'value gap' or 'transfer of value') [Katposts hereare those that have been subject to the most extensive scrutiny, at several levels.

Consensus in the Council regarding the proposed copyright directive

The former Estonian presidency worked indeed on reaching consensus among Member States' governments regarding the position that the Council of the European Union would adopt in relation to Articles 11 and 13 in particular.  

Different versions of the Estonian 'compromise' were made available and, of course, widely commented. 

For the Council to be able to advance its position political consensus among the various Member States' governments is key.

The latest, consolidated, version of the presidency compromise proposal is available here.

Now that the presidency of the Council has passed to Bulgaria, what will change (if anything)?

Bulgarian's questions for Coreper orientation debate

Yesterday, a document prepared by the Bulgarian presidency and aimed at setting up an 'orientation debate' on Articles 11 and 13 of the proposed directive within Permanent Representatives Committee (Coreper) was released.

What's in it?

First, the Bulgarian presidency highlighted the progress made under the Maltese and Estonian leadership, and noted that any progress would have as a basis the latest compromise proposal prepared by the Estonian presidency. 

This said, the Bulgarian document sets up some questions for consideration by Coreper, with the hope that consensus could be reached among Member States.

Press publishers' right: to be kept ... possibly with some nuances

With regard to the proposed press publishers' right, Bulgaria noted that no consensus could be reached on either option advanced by Estonia, ie: (A) an actual right, that would be written in such a way that its scope would be clearer than what the Commission had proposed; or (B) a presumption of entitlement of press publishers to license and enforce the rights in their press publications. 

From the text of the document it would appear that Bulgaria favours option (A). In fact, the document formulates a number of questions around option (A), the answer to which could help Member States achieve consensus in the Council in the form of an acceptable compromise. 

Where do you think you're going?!
In particular, the Bulgarian presidency is asking Member States about:

- determination of the extracts of press publications that would fall within the scope of the right: would that be a matter of originality (and therefore eligibility for protection also under copyright, as per Infopaq) of the part reproduced, or should size be a criterion irrespective of originality?

- whether the type of use made of the press publication (commercial or non-commercial) should be a relevant criterion;

- term of protection: is the original proposal of a 20-year term adequate?

Value gap proposal: also to be kept ... subject to a few clarifications (or not) 

Also here, the Bulgarian presidency seems oriented towards maintaining Article 13 in the text of the directive, but is asking Member States to comment on certain aspects of the provision, hoping that addressing these issues would allow consensus to be reached.

In particular:

- Should the directive clarify or not what is to be intended as communication to the public by platforms that host and make available user-uploaded content [the original proposal does not clarify]?

- Should the directive exclude that platforms that make acts of communication to the public are eligible for the safe harbour under Article 14 of the E-commerce Directive [the original proposal refers to the safe harbour for hosting providers]?

- If platforms are liable for unauthorized acts of communication to the public, should there be some sort of "targeted liability mitigation provided for to avoid potentially excessive impact on platforms storing and giving access to user uploaded content" [this could be so, assuming the ineligibility of such platforms for the Article 14 E-commerce Directive safe harbour]

- If there is a clarification of the communication to the public, should there also be an obligation to apply measures [likely including pro-active filtering - on this point it might be interesting to look at this and bear in mind the recent EU Commission's Communication on Tackling Illegal Content Online, which includes reference to the so called 'good Samaritan clause' (p 3)] as an additional provision, and if so, should it apply to the same service providers as those concerned by the clarification on communication to the public or should the scope of this obligation be different and potentially wider? 

Where to write one's
own thoughts and responses
Finally, Bulgaria is asking whether a better option could be NOT to include in Article 13 any language relating to communication to the public and safe harbours and include, instead, a new recital that would recall the existing principles of EU law which are relevant to determine the conditions under which user-uploaded content platforms engage, based on existing case law of the Court of Justice of the European Union, into a copyright-relevant act and are not covered by the limited liability in Article 14 of the E-commerce Directive.


From this document released by the new Bulgarian presidency it would appear that neither Article 11 nor Article 13 are going anywhere, Council-wise. 

With regard to Article 11, the idea of replacing a right in favour of press publishers with a presumption of representation seems to have been abandoned. 

There is greater room for manoeuvre in relation to the value gap proposal, and on crucial aspects indeed. 

Let's see what happens over the next few months, also at the Parliament level. The JURI Committee is now expected to vote on the report by MEP Axel Voss (who has replaced MEP Comodini-Cachia) on 26-27 March (the January date has been in fact postponed once again), and it will be crucial to see what the report proposes, and how the vote goes.

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