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

Friday, 30 August 2013

Can Patent Judges "Colloquy" Themselves To Greater Uniformity?

This Kat has gone silent for the last week or so while taking part in the Fourth Global Forum on Intellectual
Property in Singapore, here. One of the overarching themes of the conference was the tension between the international nature of markets and the national role of the IP right in furthering innovation and competitive advantage. Perhaps the most challenging expression of this tension was set out by the always engaging and challenging Chief Judge Randall Rader, United States Court of Appeals for the Federal Circuit. Judge Rader has been an outspoken advocate of the position that the IP system has to find more effective ways to mitigate the potentially deleterious effects of this tension.

In particular, Judge Rader focused on the problem facing multinationals with world-wide markets for their patented goods, but which are subject to the uncertainties that flow from the possibility of conflicting national judicial decisions concerning (more or less) the same patent, the same invention, the same prior art and the same parties. Apple v Samsung not to the contrary, for both sides of a dispute under such circumstances, perhaps the only result worse than losing in a given jurisdiction is the spectre of prevailing in one country, only to lose in another. Certainty provides a baseline, even when such certainty means that you have lost the patent dispute, because one can then plan and manage for the future with full knowledge of the rules of the game.

As is widely appreciated, however, there are no structures for providing consistent results of identical dispute across various national jurisdictions. And so the question—should judges across jurisdictions seek ways by which more consistent results in virtually identical patent disputes can be reached? At one level, it is well-recognized that IP judges from various countries get together inter alia to discuss matters of mutual interest. In such meetings, one can assume that a given judge may try to champion his or her view about a given matter, in the hope that perhaps this judge will be persuasive vis-à-vis his colleagues, as they then return to their national jurisdictions and render judgment on the matter at hand. In certain situations, these kinds of meetings and discussions might then have the effect of reducing disparities in result across the national jurisdictions. Indeed, Judge Rader is known as an indefatigable proponent of certain views, expressed in diverse regional and international forums.

However, a comment by Judge Rader in his address at the Singapore conference suggested that something more systematic maybe be taking place. At one point, Judge Rader referred to a certain patent dispute (sadly, this Kat did not hear the name of the case) that had been litigated in a number of key jurisdictions. He then observed that an identical result had been reached in the dispute in the US, UK and Germany (in which it appears that the judge reversed a long-time precedent regarding the issue at hand), respectively. Judge Rader stated that this identity of result "was not by accident". He explained that the three national judges had apparently taken part in discussions and that they had explored how to reach a common result, subject to the national-law limitations of the three jurisdictions. In this way, judges could achieve a measure of uniformity on patent law questions even in the absence of any formal mechanisms or structures for doing so.

On the one hand, this Kat can appreciate the potential benefits achieved by such semi-formal consultations. The parties to the dispute were the recipients of a uniform result in three of the principal forums in the world for adjudicating patent disputes. On the other hand, this Kat has a lingering sense of unease about the fact that there seems to be a "club" of distinguished patent jurists who confer with each other outside of the formal national judicial structures. After all, however attractive may be the position that more uniform results in patent disputes across countries are good both for the patent system and the global marketplace, this comes at the potential price of doing harm to the notion of IP rights as being national in nature.

It is one thing for the head of the central bank of various countries to get together at Davos or wherever, and to discuss between and among themselves common financial matters. After all, policy coordination between the banks may well contribute to both national and international financial stability. However, when legal rights are involved, these rights are still in part local and national in nature. No matter how seemingly identical the cases, there still may exist material distinctions in the case at the national level. More generally, seeking to achieve trans-national uniformity might further distance IP judges from the demands of their national settings. In a world where international elites are already under attack for allegedly being too far removed from their constituencies, are patent judges, in seeking to reach a more uniform consensus, in danger of falling into this same trap, to the detriment of both the patent judiciary and the broader community that is nourished by the patent system?

Friday fantasies

Snooker ace Hurricane Higgins
created his own micro-climate
Via a Tweet from Matthew Rimmer @DrRimmer comes this clip, promoting an uproarious idea: why not name hurricanes and cyclones after notable climate change deniers?  This clever device appeals to this Kat since it combines humour with a powerful punch. This notion may however hit the rocks in Europe, where the European Convention on Human Rights must be addressed: there's a tricky task of striking the right balance between the public's right to know who the identity of climate change deniers must be balanced against the right to privacy that deniers and their families are entitled to enjoy, not to mention their own right to the commercialisation of such proprietary rights as they might hold in their own names.  Merpel, who is a client change sceptic, wants to know what phenomena, natural or otherwise, might be named after those who believe in climate change.  Suggestions?

"Berne, baby, Berne!"
Around the weblogs. Writing on the IP Finance blog, IPKat blogmeister Jeremy expresses some concern at the fact that struggling surfwear business Billabong has given its brand a zero valuation.  Afro-IP reports that Mozambique is acceding to the Berne Convention for the Protection of Literary and Artistic Works this November, a bit of a surprise for many people who assumed that the country was already a member of the Berne Union (and before you look -- no, it isn't a signatory to the Universal Copyright Convention either).  The MARQUES Class 46 blog announces that MARQUES is offering previews of its refreshed website, which goes formally live at its annual conference next month in Monte Carlo. Finally, it's gratifying to see that the normally quiet SOLO IP blog has received a few more visits than usual this week, following the posting of no fewer than three items (about as many as it normally posts in a month). Could this be the beginning of a new growth spurt, this Kat wonders.

The Cheshire Cat: reputedly from
Oxford -- but not from Catz. For
the true story of the hyping of
Lewis Carroll's relationship with
Oxford, read this book
Last Friday, Darren posted this piece on a selection of consultations and events coming up shortly that deal with the European Union's new patent landscape, but there's more to come.   This Kat's highly respected friend -- academic, author and master of both wit and wisdom Chris Wadlow -- has pointed him in the direction of "Perspectives on the Unitary (EU) Patent System", a two-day conference which will be held on 4 and 5 October.  Chris has organised this event together with another Katfriend, the erudite and eloquent Justine Pila.  The venue is the lovely and inspiring setting of Jesus College, Oxford [Merpel wonders why it had to be Jesus: isn't Catz College good enough then? It's good enough for Justine ...] This event, a collaboration of University of Oxford (Institute of European and Comparative Law) and the University of East Anglia (ESRC Centre for Competition Policy), neatly outflanks Cambridge to the west and the east -- but that's not the only interesting political aspect of the conference.  More significantly it seeks to mark the 40th and 50th anniversaries respectively of the signing of the European and the Strasbourg Patent Conventions, and to help set the agenda for the future [Hmm, says Merpel, hasn't the agenda already been set by the European Commission? The best we can hope to do is to derail it make gentle suggestions as to how the future might be made to work ...]. The conference will bring together 16 international experts from different fields to offer their perspectives on the system. You can check out the full programme here and register here for a surprisingly and delightfully moderate sum.

Not all Greek? What do the words "Greek yoghurt" mean to you? It's not as silly a question as you might think, since the concepts of "Greek Yoghurt" and "Greek-style Yoghurt" have been discussed, and will doubtless continue to be discussed for some time to come, in the courts of England and Wales where there is something of a tussle in progress on these and related issues. The jiplp weblog is running a sidebar poll on what you understand by the term "Greek Yoghurt", and there's just one day to go till it closes.  Don't delay -- vote today! The poll can be found here.

Digital vibrations -- if you can manage them!  Intellectual Property and Digital Content, edited by Richard S. Gruner (Emeritus Professor of Law, John Marshall Law School, Chicago) is the biggest and heaviest work this Kat has tried lifting this year. It comes in two hefty volumes, each of which is a high-level rupture risk in its own right.  According to the publisher's website:
"Few changes in the world of intellectual property have been as transformative as the advent and proliferation of digital content works [Merpel still thinks the advent of the railway trains was more transformative, since it enabled works to be shifted from places where they caused no trouble to other places where they did -- but that's another matter ...]. The high value of these works in modern society has prompted calls for new IP standards to promote the protection – and the sharing – of such valuable assets.

Assembling some of the best analyses by legal scholars [indeed, there is a stellar cast], these volumes explore the implications both of applying older IP standards to the new digital technologies and of devising new enhanced IP standards for the digital age [contributions stretch back to 1986 with pieces on computer program copyright and patents by Katfriends Paul Goldstein and Donald Chisum respectively]. In covering the influences of patent, copyright, trademark, trade secret and other intellectual property laws, this wide-ranging collection reflects the sweeping impacts of IP standards and controversies on digital content works.

Professor Gruner’s extensive introduction illuminates the timeless policy and societal issues involved and suggests ways forward for this vibrant new field".
So many of the essays included in this work, all of which are published, are classics that it is difficult to review them in any meaningful sense. However, a regular criticism of similar publications from the illustrious stable of Edward Elgar Publishing is about to be trotted out again: there is nothing in the book's promotional material to indicate that it focuses only on one small part of the world, that is, the United States. Apart from the fact that the prospective purchaser is not forewarned, there's the racing certainty that the US-based reader will be confirmed in his erroneous supposition that IP and digital content is a purely US topic. which has no European, Asian or African counterpart. Please, EE, help set the US free from the parochialism that non-Americans often find so frustrating when trying to explain to them that, for example -- as this Kat did in the Fordham International IP Conference a couple of years ago -- that the internet is not coterminous with the terrestrial borders of the US but, remarkably, extends beyond it.

Bibliographic data: publication date -- ostensibly October 2013, though the twin tomes sitting prominently on the Kat's desk look pretty well published already, and it's only August.  More pages than you can flick a thumb at. Hardbacks, ISBN 978 1 78100 686 3. A snip at US$760 (or online from the publisher for just US $684). Web page here.

Thursday, 29 August 2013

Thursday thingies

Nuggets of Gold for the CIPA Journal.  This Kat has learned today that his good friend Tibor Gold is replacing Michael Harrison at the helm of the CIPA Journal, where he will function as Acting Editor.  Good luck, Tibor, it's good to know you're always prepared to answer the call!

Darren, delight and disappointment.  Further to Kat team member Darren's post last Friday on "Yet More on Unified Patent Court Plans -- Delight and Disappointment", here, Darren has now enriched this post by adding, in bright red text, news of a forthcoming webinar on that subject.  If you're a UPC addict, or even if you're not, do check it out!

Sublime? No, sub-sub-sub-optimal!  On the not unrelated theme of the unitary patent, Dr Ingve Björn Stjerna has been turning his powerful intellect to what he calls [with some justification, says Merpel] 'The "sub-sub-suboptimal compromise” of the EU Parliament', this being an article on the Special Meeting of the Legal Affairs Committee on 19 November 2012 which you can contemplate at your leisure here.  

Around the weblogs.  J.Sai Deepak's Indian IP and innovation blog The Demanding Mistress has just treated itself to a hard-to-avoid logo: you can see it for yourself here. Meanwhile, the normally staid and sleepy SOLO IP weblog, which is keenly searching for new volunteers [if you're a solo or small practitioner and think you can blog, email Barbara here and tell her], has posted no fewer than three items this week covering claims-caps in the Intellectual Property Enterprise Court, the attractions of having your IP practice owned by (or even run as) a charity and the prospects of tax relief if you're selling your business premises after installing a new toilet. Finally, if you fancy speculating on the legal protection of a symphonic musical work composed by crowd-sourced apps, take a peep at the 1709 Blog here.

Victoria's not-so-secret. As reported by the excellent Intellectual Property Watch, here, it seems that the talented Victoria Espinel has wasted no time in finding an outlet for her IP-friendly talents.  Victoria takes over as President and CEO of what used to be called the Business Software Alliance -- now renamed the Software Alliance --this coming Tuesday.  This Kat wishes her the best of luck in her new role [Merpel guesses that after spending four years as Intellectual Property Enforcement Coordinator, answerable to the White House, she probably thought it was time she took on a real challenge ...]

Facebook $20 million settlement in class-action lawsuit over violation of privacy rights

Source: Facebook
In Angel Fraley et al. v Facebook Inc, the US district Court of Northern California approved on 26 August a $20 million settlement to be paid by Facebook for putting users’ names and faces in “Sponsored Story” ads without their permission and without paying them.

This Kat, rummaging through her Facebook account's associated email Inbox, realized she had also received back in February the spam-look-alike Legal notice from Facebook to join the class action lawsuit- and actually treated it as such.

It did explain very well what sponsored stories are in Facebook jargon:

Sponsored Stories are a form of advertising that typically contains posts which appeared on [..] and may be displayed, for example, when a Facebook user interacts with the Facebook service (including sub-domains, international versions, widgets, plug-ins, platform applications or games, and mobile applications) in certain ways, such as by clicking on the Facebook "Like" button on a business's, organization's, or individual's Facebook page.”  

Aimed at tablet and smartphone users, these advertisements and logos started appearing in 2011 in the central “newsfeed” rather than on the more hidden right hand corner and while it attracted more the users/consumer’s attention who would click on them, it allowed Facebook to earn a considerable income from advertising. However, in Facebook’s view, even if users have never read the Statement of Rights and Responsibilities (SSR's) -- regrettably not even this IP lawyer/Facebook user does-- Facebook only reused information users had already voluntarily disclosed to their “friends” (including grandparents, co-workers, and friendship request users feel obliged to accept).

The US District Judge found that 150 million Facebook users had their names and /or likeness misappropriated to promote products and services through Facebook’s sponsored stories program Nevertheless, the Court stated that plaintiffs would have a substantial burden in showing they were injured or to determine to which amount they were harmed would litigation be pursed -- it would have been easier to demonstrate harm for of the famous claimants’ horror story including promoting sexual lubricant last Valentine’s Day-- or even to ascertain the standing to bring this action by some users who seldom use their own image or name –like this Kat who is concerned about her privacy (although Facebook discourages such practice!).

The Court held that according to the law, the settlement is “fair, reasonable and adequate”. The $20 million will cover first the class action lawyers’ fees; the rest is to be divided among Facebook users who appeared in Sponsored Stories ads- the very few who eventually claimed it can hope to 15$ per person -  or, if the demand is too great or where “the proof of individual claims would be burdensome or distribution of damages costly”, the money is distributed to non-profits that work on privacy issues (listed in footnote 7 of the Order) under the form of a cy pres payment derived from a charitable trust doctrine.

The Court delivers a happy ending for the parties in the case stating
injunctive provisions [in this case] provide at least some meaningful  benefits to the class members. Facebook has agreed both to provide greater disclosure and  transparency as to when and how member’s names and profile pictures are re-published, and to give  them additional control over those events. Additional injunctive provisions have been tailored to  address the minor-subclass and the parental consent and control concerns related thereto
-- it seems, however to justify Facebook’s slight attempts at violating privacy rights—
As Facebook points out, however, it is a platform for sharing information, which members join  voluntarily. Members are not charged any fees for Facebook’s services, which cost the company  hundreds of millions of dollars to provide. While it does not follow that Facebook has carte  blanche to exploit material belonging to, or regarding, its members in any fashion whatsoever,  neither is it foreclosed from adopting SRRs that are not as “pro-member” or “pro-privacy” as some  might like.”
This Kat who loves to read a good Judgment drafted American-style and enjoys citations such as “Settlement is the offspring of compromise”  (Hanlon v. Chrysler Corp, 9th Circuit, 1998) cannot help but wonder what might have occurred if this case actually followed its due course. 

Catbook - the Facebook for cats
Grumpy Cat book - most famous of social networks cats.

New Patents Act in New Zealand

The IPKat (well this one, at least) is always excited by news of a new Patents Act, and so he was jolly pleased to read in his Twitter feed that the New Zealand Patents Bill was finally passed by its Parliament yesterday, on 28 August 2013.

Much of the previous coverage  (including on the IPKat here), and the chatter from yesterday, focused on the exclusion from patentability of software.  The IPKat believes that what has been agreed is the following:

10A Computer programs
(1) A computer program is not an invention and not a manner of manufacture for the purposes of this Act.
(2) Subsection (1) prevents anything from being an invention or a manner of manufacture for the purposes of this Act only to the extent that a claim in a patent or an application relates to a computer program as such.
(3) A claim in a patent or an application relates to a computer program as such if the actual contribution made by the alleged invention lies solely in it being a computer program.
 (4) The Commissioner or the court (as the case may be) must, in
identifying the actual contribution made by the alleged invention,
consider the following:
(a) the substance of the claim (rather than its form and the
contribution alleged by the applicant) and the actual
contribution it makes:
(b) what problem or other issue is to be solved or addressed:
(c) how the relevant product or process solves or addresses
the problem or other issue:
(d) the advantages or benefits of solving or addressing the
problem or other issue in that manner:
(e) any other matters the Commissioner or the court thinks
(5) To avoid doubt, a patent must not be granted for anything that
is not an invention and not a manner of manufacture under this
European practitioners will see resonances in the "as such" language, and the IPKat is given to understand that the expectation is that the approach taken will be similar to that in the UK.

Perusing the Bill, the IPKat was delighted, if astonished, to see that a patentable invention is still defined with reference to "a manner of manufacture within the meaning of section 6 of the Statute of Monopolies" (you know, this Statute of Monopolies - from 1623).

This Kat recalls that under the old (current) New Zealand law methods of medical treatment were considered not patentable as being contrary to morality, in the absence of any statutory exclusion, and is therefore not surprised to see that this position is regularised in specific exclusions:
An invention of a method of treatment of human beings by surgery or therapy is not a patentable invention.
An invention of a method of diagnosis practised on human beings is not a patentable invention.
Again, these exclusions will be familiar to European practitioners.

Naturally, a number of New Zealand firms have blogged about this development - the IPKat has consulted posts from AJ Park and Henry Hughes.  And of course the software angle has been extensively covered by Florian Mueller, who has helped to counter the popular (incorrect) reporting that software patents have been "banned" in New Zealand, whereas the reality is much more nuanced.

Merpel notes that New Zealand legislative process rivals European law-making for speed - this Bill apparently started in 2008!

UPDATE 30/8/13 Thanks to Twitter commenter @nzPaulM and comment from Ken Moon (9th comment) below, the IPKat has realised that the original blog post inadvertently omitted sub-sections (4) and (5) of Section10A.  These have now been added above.  The essential point that New Zealand is aligning its statute with the UK jurisprudence on patentability of software seems to apply equally to these sub-sections.

Not inadvertently, the IPKat omitted the "Examples" - to a process using a washing machine and a process for automatically completing a document - as they are rather lengthy and don't seem to be especially helpful to understanding the new law.  You can read the whole proposal for Section 10A including all of this material in Supplementary Order Paper (SOP) No. 237 downloadable (together with other material relating to the Bill) from the New Zealand legislation website here.

Twin Peeks? The Peeks and the Cloppenburgs go head-to-head

The UK's Intellectual Property Office (IPO) has kindly reminded the IPKat that the Court of Justice of the European Union will soon have the joy of considering an appeal against a judgment of the General Court: in Case T-506/11 Peek & Cloppenburg. The appeal apparently relates to an opposed application to register as a Community trade mark the words 'Peek & Cloppenburg', which the applicant sought to register for goods in Class 25 and services in Class 35. Says the IPO:

"The grounds of the appeal are an alleged misinterpretation of the criterion 'confers ... the right to prohibit the use of a subsequent trade mark' and the concept 'of more than mere local significance'". 
The IPO adds that this case, which now carries the CJEU's reference number C-325/13 P, can be viewed on its website at -- but this is not in fact the case ["IPO folks, are you reading this?" asks Merpel]. All you get is a link to the Curia's page for the case which, since it hasn't been heard yet, offers no useful information at all. It wouldn't cost much to add a link to the appealed-against decision in Case T-506/11, would it?

Never mind, if you'd like to advise the British government whether to intervene in this contest between Peek & Cloppenburg (Dusseldorf) and Peek & Cloppenburg (Hamburg), you have until next Thursday, 5 September, to do so. Just email Policy here -- and say the IPKat sent you [Merpel remains puzzled by this whole dispute: wouldn't it be more sensible, rather than having Peek & Cloppenburg v Peek & Cloppenburg, to have both the Peeks on one side and both the Cloppenburgs on the other? Then there wouldn't be any problems at all].

Twin Peeks here and here (not for the prudish or the easily-offended; will suit most Australians, especially from Woolloomooloo)
Twin Peaks here and here
Twin Pekes here

Wednesday, 28 August 2013

Insta-Backlash: A Brand Protection Strategy "Don't"

Instagram recently created waves of animosity among developers who have launched apps using Instagram’s API.  Now owned by Facebook, Instagram is a photo- and video-sharing service that connects with users’ social media profiles.  It claims over 100 million active users uploading more than 58 new photographs every second.  Users also benefit from a number of symbiotic apps that have been developed using Instagram’s API.  Such apps include services that print and either mail or email Instagram photos, provide search and analysis functions based on the user’s Instagram account activity and interests, and numerous other apps that function in combination with Instagram’s services.  However, Instagram has upset some of these app developers by updating its Instagram Brand Guidelines to state: “Don’t: Use ‘Instagram,’ ‘IG,’ ‘Insta’ or ‘Gram’ in your app name.”

Instagram understandably wants to protect its brand’s good will and prevent consumer confusion or trade mark dilution.  However, it should have considered these IP issues earlier in its history.  App-owners whose app names violate this new guideline are upset by letters sent by Instagram requesting that they change their brand names after they have built their own good will and consumer recognition.  As it was growing its user base and encouraging developers to build complementary apps, Instagram allowed apps to use “Insta” or “Gram” in their app names, presumably to remind users that those apps required, or at least functioned best with, an Instagram account.  In those early days, Instagram’s Instagram API Terms of Use stated, “[w]hile you cannot use the word ‘Instagram’ or ‘IG’ in your product’s name, it’s ok to use one (but not both) of the following: ‘Insta’ or ‘Gram.’”  Unfortunately for the developers, the Terms of Use also stated, “we reserve the right to reject any use of these terms in connection with the use of the Instagram API,” and indeed, its current API Terms of Use omits the statement regarding the approved use of either “Insta” or “Gram.”

While Instagram did reserve the right to make such a change to its Terms of Use, this reversal of policy does a disservice to its partners, its users and itself by applying it retroactively.  When Instagram tried to change its user Terms of Service to allow it to use or sell users’ photographs for advertising purposes , users deactivated their accounts in droves, and Instagram quickly reversed course on the new policy.  Similarly, according to this article in TechCrunch, affected developers are considering shutting down their apps entirely rather than changing their brand names.  Does Instagram really want to see the demise of apps that drive consumers to Instagram or help keep those consumers loyal to Instagram?  Or will developers decide that the short term brand damage associated with a name change will ultimately be outweighed by the long term benefits of being associated with Instagram?  Time will tell. 

Instagram's new policies may
create many stray apps
Regardless, this Kat does think Instagram should take a long hard look at its trade mark strategy.  Instagram may have the right to block from Instagram compatibility any apps that refuse to remove “Insta” or “Gram” from their names.  However, it may not have a strong ability to otherwise pursue objecting app developers for trade mark infringement.  Because Instagram officially permitted developers to use the elements “Insta” and “Gram” in their own brand identities, Instagram seemingly eroded its claim to exclusive use of those portions of the mark other than as used together.  That it permitted developers to use “Insta” or “Gram” for nearly three years prior to this new guideline change may make equitable estoppel defenses insurmountable for Instagram in the event of any trade mark infringement litigation.  Also, this Kat thinks that a claim of consumer confusion is also in jeopardy because of the ubiquity of the use of “Insta” or “Gram” in the names of previously released apps, including (to name just a few) Instaprint, Instadrop, Instagallery, Stickygram and Statigram.  Consumers are quite used to the fact that other apps use "Insta" or "Gram," and are thus less likely to assume that all such apps originate from Instagram.  On the other hand, all such app brands are so named specifically to highlight a connectivity to Instagram.  If Instagram no longer allows an app to synch with Instagram due to the app's refusal to rebrand, the app name could become deceptive to consumers and falsely suggest an endorsement by Instagram.
Regardless of how Instagram will fare in its trade mark protection efforts, this situation is a good reminder that even startups who want to encourage early adoption, brand loyalty and word-of-mouth recommendations must be wary of how their actions might affect the strength of their intellectual property rights.
What do readers think?  How might Instagram fare in another jurisdiction?
InstaCat here
InstaKitty here
InstaPuppy here

Tuesday, 27 August 2013

"Don't pass it on ...": have the French got it right or wrong?

"We'd better open them first,
just to make sure ..."
Reading one of his favourite IP weblogs, Mark Anderson's IP Draughts, this Kat was both intrigued and startled by one of the items on Mark's recent post "Ten things I have learned recently ...", here. Item no.2, handsomely and somewhat cryptically illustrated with a picture of half an avocado pear, replete with stone, reads thus:
"The approach of French lawyers in relation to confidentiality of communications between lawyers is very different to that of English lawyers. It seems that, in France, a lawyer may not copy to his client a letter that he has received from the other party’s lawyer. Result: effective communication with one’s clients becomes unnecessarily difficult".
The Kat is fascinated by this.  Knowing that this blog is read by a large number of thoughtful and highly capable French lawyers, he hopes that one or more of them will be tempted to respond to the following questions:
  • Does this rule really exist?
  • If so, is it a general rule of law that applies in respect of all professions (and therefore applicable also to, eg, accountants, architects, surveyors, loss adjusters), a rule imposed for the purpose of regulating the conduct of the legal profession or merely a matter of professional etiquette which has assumed the status of a binding rule?
  • What if any are the sanctions that may be imposed upon a lawyer who copies a letter received by the other client's lawyer to his client? Are they civil or criminal, based in copyright or breach of confidence, data protection or privacy, or what?
  • May any use be made, or cognisance taken, of such a letter if it has indeed been so copied?
  • Does it apply in respect of all letters from the other party's lawyer or only those from a French-qualified practitioner?
  • May this restriction be waived by the sender of the letter or by his client?
  • Is any justification offered for this rule and is there any consideration as to whether it should be modified or scrapped?
Merpel's curious to know whether other jurisdictions impose a similar restriction upon the forwarding of professional correspondence. Do tell!

French letters here and here

Coming soon: CIPA and IPAG's Big Events

Citius, Altius, Fortius ... 
CIPA Congress: of turtles and early birds.  The Chartered Institute of Patent Attorneys' annual gathering of the clan, the CIPA Congress 2013, takes place on 3 and 4 October in the lovely, lively location of the Lancaster London Hotel.  Like the Pacific green turtles returning to their ancestral beaches to breed and lay their eggs, the members of this thick-skinned tough and resilient profession convene annually from a multitude of countries -- and indeed continents -- in order to meditate on the survival of their profession into the next decades.  Also, like the green turtle, the patent attorney today must operate in a hostile, competitive and ever-changing ecosystem where the rule of the game is adapt or die.  How will the European patent attorney function when its traditional national feeding grounds are homogenised by a new unitary environment?  Will the pressure of the European Commission crack its carapace?  Will minor subspecies from lands in which patent filing and litigation are scarce be wiped out completely? Will the journey to the rich feeding grounds set aside in Paris, Munich and London prove a trip too far for practitioners from as far away as the Baltic and the Aegean?  And will their nutritious clients be wiped out by predatory trolls?
Kat among the
Early Birds

Come to the Congress if you want to find out what the future holds for the patent attorney, or if you'd like to take part in preserving the functional utility of this splendid creature in the new world of innovation that lies ahead. You won't regret it!  Apart from anything else, you may be able to detect more than a scent of the Kat when you get there.  Two members of the blog team -- patent attorney Darren Smyth (on design right) and patent litigation solicitor Annsley Merelle Ward (in the hot topics session)  -- will be offering their usual combination of wit and wisdom.  A third Kat, blogmeister Jeremy himself, has enjoyed watching this year's programme evolve and has even done something useful, helping his good friend and national treasure Tibor Gold compile a round of the table quiz that would have been the star attraction of the President's Dinner were it not for Mr Justice Birss agreeing to be the guest speaker. Note: you can book your place at Congress here; the Early Bird discount rate expires this Friday, 30 August.

From turtles to axolotls.  Occupying a strange relationship with patent and trade mark attorneys in Europe and beyond is the intellectual property administrator, a species falling within the genus IPAG ('Intellectual Property Administrators Group').  Some IPAG members have a symbiotic relationship with the IP professionals who engage them, performing various office tasks with the speed, accuracy and efficiency that comes with constant practice.  Others, rather like the axolotl in relation to the salamander, might have developed into patent or trade mark attorneys themselves but remained instead in their neonetic state. Anyway, IPAG has a very special conference of its own, which runs annually at the same time, an in the same venue, as that of the CIPA Congress.  You can check out the IPAG programme here.  The IPKat's friends at IPAG tell him that there are “mix n’match discounts available ranging from 10% -25%!”, which may be particularly attractive if you are a patent administrator who hunts in packs.

The BGH, Pippi Longstocking and a fancy dress

Pippi (the TV character)
on a German stamp 
On appeal from the Higher Regional Court of Cologne, the German Federal Court of Justice (Bundesgerichtshof, or short: BGH) recently decided that third parties (here: a super market chain) may use the image of a literary figure (here: Pippi Longstocking or Pippi Langstrumpf as she is known in Germany) in their advertisements without consent of the copyright owner provided they only adopt a few "external" characteristics of that literary figure.

In its decision of 17 July 2013 (case reference I ZR 52/12) the BGH found that the fictional character "Pippi Longstocking", as created by the famous Swedish author Astrid Lindgren, enjoyed copyright protection due to the literary character’s "unique personality".  However, the court rejected the claim of the heirs of the late author in so far as it was based on copyright law and sent the case back to the court of appeal for a new decision.  The court noted that it had not assessed claims under unfair competition laws. So far we only have the court's press release which can be retrieved here (in German, No.127/2013).

The heirs of the author, who now own the copyright subsisting in the artistic work of Ms Lindgren, had sued the super market chain for copyright infringement. The chain was selling carnival costumes showing the Pippi character in his shops and had distributed marketing material within Germany, including prospectuses which showed photographs of a five-year old girl and a young woman in Pippi style outfits (red hair wig with pigtails, a t-shirt and long stockings with a green and red striped pattern). The photos were also printed on the costume packaging of which the defendant had sold about 15,000 units. The claimants demanded damages in the form of a notional license fee of 50,000 Euros.

The First Instance Court (Regional Court of Cologne) and the Court of Appeal (Higher Regional Court of Cologne), agreed with the claimant under Article 97(2) UrhG.  By way of background: Article 97(2) UrhG states that "authors… may, if (an) infringement was intentional or the result of negligence, recover, as justice may require, a monetary indemnity for the injury caused to them even if no pecuniary loss has occurred."

In its decision of 17 July 2013 the BGH accepted that the literary figure of Pippi Longstocking was a literary work. As Pippi has a distinct personality (unique personal characteristics with distinct external features) because her external features were unusual  (including carrot-coloured hair in pigtails, a heavily freckled nose in the shape of little potato, etc). Pippi also had specific personality traits (difficult family but always happy, witty and full of fantasy, etc.).  Nonetheless, the court concluded that the defendant's use did not amount to copyright infringement under Article 97 (2) UrhG.  Even though the observer was able to recognise that the defendant’s images were meant to be Pippi, the advertisements only adopted some of those external characteristics (emphasis by the IPKat, not in the original) that were legally relevant to the existence of its copyright protection.  Copyright that subsisted in a literary figure would not be infringed,  where a third party only copied "a few selected external features", as it had happened here by copying Pippi’s style of clothing, if these by themselves would not be enough to create copyright protection for that figure. Therefore, the BGH decided to send the case back to the Court of Appeal for a new trial and decision.

Merpel notes that, in its press release, the BGH states "... that it is clear to observer that the figures [as depicted in the defendant’s advertisements] are meant to be Pippi...”, which - at a first glance - is not completely without contradiction.  However,  the BGH’s presiding judge Professor Bornkamm was cited in German media as having said that copyright law was not meant to prevent ‘...the ability to adopt another identity by way of fancy dress’ (see Der Spiegel Online, 18 July 2013). As such, it will – as always - be interesting to see the full decision.

Monday, 26 August 2013

Report from US Government Accountability Office on patent litigation does not say much about NPEs

As mentioned by blogmeister Jeremy recently, it can be hard to find an interesting IP topic during the month of August. With very few court decisions and the absence of legislative activity, it seems that everybody is enjoying summer and saving IP matters for rainy days. "Not everybody!", says Merpel: a topic that has been extensively discussed over the past two weeks still remains alive and brings a welcome news flow for this GuestKat: Non Practising Entities (NPEs)!

Here is a fact: when in doubt about something to discuss about patent law, there will always be a new story to write about PAEs/NPEs/PMEs (patent monetisation enterprises)/Trolls. Whether it is based on a biased documentary on the Eastern District of Texas, an Attorney General measure against frivolous demands in Minnesota or the role of a public patent fund, NPE always remain an endless topic.

On the menu today, we have an important report made by the US Government Accountability Office (GAO) about patent litigation and most specifically, NPEs. For the record, GAO defines itself as “an independent, nonpartisan agency that works for Congress. Often called the "congressional watchdog," GAO investigates how the federal government spends taxpayer dollars”.

This report, published on August 22 is entitled “Assessing Factors That Affect Patent Infringement Litigation Could Help Improve Patent Quality”. It is worth noting that this long awaited study was mandated by law. Contained in the Leahy-Smith America Invents Act (AIA), section 34 sets its goals:

(a) GAO STUDY.--The Comptroller General of the United States shall conduct a study of the consequences of litigation by non-practicing entities, or by patent assertion entities, related to patent claims made under title 35, United States Code, and regulations authorized by that title.
(b) CONTENTS OF STUDY.--The study conducted under this section shall include the following:
(1) The annual volume of litigation described in subsection (a) over the 20–year period ending on the date of the enactment of this Act.
(2) The volume of cases comprising such litigation that are found to be without merit after judicial review.
(3) The impacts of such litigation on the time required to resolve patent claims.
(4) The estimated costs, including the estimated cost of defense, associated with such litigation for patent holders, patent licensors, patent licensees, and inventors, and for users of alternate or competing innovations.
(5) The economic impact of such litigation on the economy of the United States, including the impact on inventors, job creation, employers, employees, and consumers.
(6) The benefit to commerce, if any, supplied by non-practicing entities or patent assertion entities that prosecute such litigation.
(c) REPORT TO CONGRESS.--The Comptroller General shall, not later than the date that is 1 year after the date of the enactment of this Act, submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the results of the study required under this section, including recommendations for any changes to laws and regulations that will minimize any negative impact of patent litigation that was the subject of such study [Considering that the date of the enactment of the AIA was September 16, 2011, the report has been published with a 23 month delay. It seems that GAO uses the same routine as most IP offices].
To address these four objectives, the GAO reviewed relevant laws and academic papers, and interviewed officials from the PTO, FTC and ITC as well as 44 stakeholders from the patent market (including operating companies, NPE, economists, legal commentators, patent brokers).

Regarding methodology, GAO makes a previous statement that gives rise to some concern:
"As noted in a September 7, 2011, letter from the Comptroller General to the chairs and ranking members of the congressional committees with jurisdiction over patents, the bill being considered at that time would have required a GAO study involving several questions for which reliable data were not available or which could not be obtained. The bill was enacted without change, but the Chair of the Senate Judiciary Committee, responding to these concerns, stated that GAO should note data and methodology limitations in its report prepared in response to the mandate. ...  Consequently, we developed report objectives consistent with these limitations, and we have noted specific data limitations throughout this report, as appropriate."
This Kat is not familiar with reports from US accountability authorities, but this statement sounds a little as if GAO was declaring "we may not have the resources to achieve this work properly but we did  it anyway since it we had to". The real lack of information is to be found on market data regarding "patent assertion outside of the court". So here is a report, being allegedly empirical about NPEs, which for the most try to avoid litigation through negotiation (i.e outside of the court), but there is no data available on it [Merpel points out that this still does not explain the significant delay].

However, going through the 50 page report, there are some precious findings to be read about patent litigation and NPEs. This GuestKat happens to be enjoying these delightful statistics on a rainy London afternoon. Here is a list of the most relevant facts:
- Operating companies brought most of the lawsuits between 2007 and 2011 (68%), not NPEs (19%). The rest were filed by independent inventors (8%), universities and research firms (3%). For you maths experts wondering who were the rest of the plaintiffs -- they were "undetermined plaintiffs" [Merpel says that maybe they were NOOBS: Not Operating Organization nor Business Speculators]. However, according to a recent article written by Sara Jeruss, Robin Feldman and Tom Ewing, 2012 was the first year in which NPEs brought more lawsuits than operating companies (56%).

- From 2010 to 2011, the number of patent infringement lawsuits increased about 31 percent (+900 in a year). Although this might sound impressive, this growth seems to be artificial and caused by the AIA's implementation. The AIA restricted the number of accused infringers who could be joined in a single lawsuit. This was done by prohibiting the joining of unrelated defendants in the same action even if they were allegedly infringing the same patent. Anticipating this new rule, plaintiffs filed more lawsuits during this year. The report subsequently details the different types of business that occur in the patent market and for which entities could be labelled as PMEs or NPEs. We end up with a list describing classical PME entities related to operating companies (privateers), research firms, universities or even operating companies asserting patents for which they do not market any product. One thing appears clear here and stands among the other facts: there are many types of NPE and you can not assess this topic with a simplistic, one would say Manichean, vision. Therefore, if any issue is to be found in the US patent system, restrictions on specific types of corporate structures may not be of any help to resolve it.

- By 2011software-related patents made up more than half of all issued patents. Between 2007 and 2011, 46% of lawsuits involved software-related patents. More worryingly, software patents were used to sue 93% of the defendants in PME lawsuits. This author wonders if this can be seen as the key point for this discussion. It seems to be the main reason why Europe is not experiencing the NPE phenomenon in the same proportions. 
- The Eastern District of Texas is the favourite choice of venue for PME lawsuits, mainly for procedural reasons and efficiency. 
- Besides cases that are still ongoing, 86% of studied cases likely ended in a settlement within one year of being filed.  
- Quoting a study made by the AIPLA, GAO recalls that in 2011 the average cost of defending a single patent infringement was between $650,000 and $5 million, depending on how much was at risk. The median damages were over $5 million and damages in NPE cases were higher than in other types of suits. 
- Based on the stakeholders interviews, three main factors contributed to the rise of PME litigation:
(1) Overly broad and unclear patents, causing uncertainty as to the scope of their claims. This may be caused for example by the lack of common terminology in some industries (software industry). That is no surprise. The number of patents that should not have been granted in the first place appears to be tremendously high, making the freedom to operate or product clearance researches very hard to conduct. 
(2) Disproportionately large damages giving incentives for PMEs to litigate. The GAO uses the FTC report from March 2011 to emphasize the need to ground damages calculation in an economic analysis and not the 25% rule. For example, the ratio between France and US when it comes to damages is 1 to 29. The report takes good notes that some judicial precedents occurred in recent years to modify the calculation rules, but considers that the issue is not yet settled. 
(3) increasing interest in patents as a valuable asset. The rise of financial investors in the patent market over the past ten years may have had an impact on the increasing number of patent infringement lawsuits especially when they help fund a lawsuit that due to the costs may not have been funded.
Now does the future look brighter according to the GAO?

After these alarmist considerations, the report goes on the remedies that would be suitable to make the US patent system a better place. It differentiates the procedural measures from the PTO changes.

The GAO first emphasises the efforts that have been recently made to reduce litigation cost and improve the courts' handling of patent cases, notably the Congress patent cases pilot program. This program was made to encourage the enhancement of expertise in patent cases among court judges. It consists in creating a cadre of patent specialist judges. But apparently, judges who were interviewed pointed out the possible failure of this program due to the lack of resources.

Another remedy would be to reduce litigation cost by reducing the discovery phase costs, which are known to be really expensive in the US (from $350,000 to $3 million). This represents a lot, especially when very few documents are being used during the trial (fewer than 1 in 10,000). The way to reduce it would be to use the Advisory Council for the U.S. Court of Appeals for the Federal Circuit model regarding discovery for emails (e-discovery). The model appears to be a template for judges to adopt and issue in patent infringement lawsuits.

Regarding USPTO, the report emphasizes four initiatives taken by the office to address patent quality: update of patent examination guidelines and issuance of new one regarding the definiteness requirement, partnership with the software industry (known as "the Software Partnership") to determine common terminology, creation of the Cooperative Patent Classification system to facilitate patent searches and, finally, a PTO initiative to provide more transparency in patent ownership.

The report also insists on post-grant review proceedings as a mean to reduce future litigation. However, this last point may not be really helpful considering the cost of such proceedings ($166,000 and $390,000), much more expensive than the EPO system. Furthermore, operating companies may want to challenge their competitors patents but obviously this will not have any effect on lawsuits brought by NPEs. Considering that NPEs do not file patent applications but acquire them mostly from non-competitors, and that very few patents end up in litigation, it is unlikely that post-grant review proceeding may help reduce it. This new feature may not even be used in its classic functions like before the EPO if federal judges do not consistently delay a trial until the PTO board completes its review.

Finally comes the time for conclusions. The GAO makes a very true statement: "the focus on the identity of the litigant -- rather than the type of patent -- may be displaced."Most of the recommendations are made to the PTO, to plead for an improvement of patent quality. Therefore the PTO seems to be the key to progress.

Here this author begs to differ. Enhancing the quality of granted patents may be helpful but the litigation issue, (if it exists) should be treated in the litigation field i.e by changing the rules of civil procedure. What about a "loser pays" rule?

Merpel wonders if our readers have any comment on this report. Does it bring anything new to discuss or is it the same old story?

Sunday, 25 August 2013

Questionable Trade Marks: Squeezing Blood from the USPTO?

A Katfriend has sent the IP Kat a tip about a US-based law firm that specializes in debt collections.  That firm, Cook Collections Attorneys, uses the mark, a reference, presumably, to its level of success. 

Can you squeeze blood 
from a turnip? At least one
debt collector thinks so
Says our tipster, who will remain anonymous: “Apparently in hopes of attracting clients yearning to go beyond what is reasonable to collect, collections attorney David Cook trade marked the term ‘’ He obtained the trade mark in 2007 by claiming to the U.S. Patent and Trademark Office that he was going to use the phrase for ‘Clothing, namely, t-shirts,’ but he instead mostly uses it for his firm's website, email addresses and stationary.  I am among many who find a collection attorney's use of the phrase to be ‘threatening, offensive, disparaging, and immoral or scandalous.’”

The Lanham Act, which codifies US trade mark law, sets forth the various reasons why a mark will not be accepted for trade mark protection, including a mark which "consists of or comprises immoral, deceptive, or scandalous matter."

A debt collection attorney’s use of the mark “SqueezeBloodFromTurnip” in connection with debt collection practices may seem unsavory, and, perhaps, disrespectful to the debtors, who are not necessarily bad apples (pun intended).  However, this Kat doesn’t think it rises to the level of immoral, deceptive or scandalous.  Rather, this Kat views the mark more as a form of marketing puffery – proclaiming to potential clients that Cook can recover assets that the debtor would otherwise have been unable to pay.  But, as the saying goes, you truly cannot squeeze blood from a turnip, try as Cook might.  As long as Cook adheres to the legal obligations of debt collectors pursuant to the US Fair Debt Collection Practices Act and applicable state laws and regulations, Cook likely will not be able to achieve a better result than another equally qualified and experienced collection attorney. 
Mott's For Tots but
not yet for babies
What this Kat found more intriguing than Mr Cook's use of is that Cook has apparently secured registered trade marks in the marks Cook, Cook Collection Attorneys and Cook Legal Services .  In the US, a mark based primarily on a common surname cannot be trade marked unless it has achieved secondary meaning in the minds of consumers (think: McDonald’s and Heinz).  Cook is a relatively common surname in the US.  Indeed, it is the 60th most common surname in the country.  As such, it is surprising that the USPTO allowed the Cook marks to be registered as trade marks, especially since the USPTO recently rejected an application by Mott’s, arguably one of the most well-known applesauce and apple juice brands in the US.  In that case, Mott’s applied for a trade mark for use in connection with baby foods, a product category in which it had not previously sold products.  Despite the high consumer recognition of the Mott’s brand name in connection with apple-based products, the USPTO rejected the baby food application on the grounds that Mott’s is primarily surname, and "not a rare" one.  Thus it was ineligible to be registered as a trademark in the absence of acquired distinctiveness.  [Notes Merpel, Mott doesn't even crack the top 1000 most common US surnames.]  Most likely, the USPTO decision (which was subsequently upheld by the USPTO's Trademark Trial and Appeal Board) was due to the fact that Mott’s had filed its baby food trade mark application on an intent-to-use basis prior to actually using the mark in commerce.  Mott’s was thus unable to show acquired distinctiveness in the category of baby foods, and it failed to link the application to its distinctive and established trade marks, including a registered Mott's For Tots mark, in other food and beverage categories. 
In contrast, Cook appears to have filed his trade mark applications for Cook, Cook Collection Attorneys and Cook Legal Services after he had already begun using those marks in commerce.  He submitted evidence of his use (e.g. advertisements for his legal services under the name Cook Collection Attorneys) to the USPTO, and (as far as this Kat can tell) the USPTO appears to have accepted this evidence without further investigation.  Still, given the popularity of the surname Cook, it seems odd that Cook was so easily able to register trade marks featuring his surname.  In addition, Cook Collection Attorneys and Cook Legal Services seemingly also could have been challenged because the marks are merely descriptive of the services in connection with which the mark is used.  The USPTO often investigates or requests that an applicant submit further evidence of acquired distinctiveness in connection with applications claiming exclusive use of a relatively weak, descriptive or potentially unregistrable mark.  Would any readers care to share their thoughts on why the USPTO might not have questioned or rejected Cook’s applications during its review period of these marks?

The Kitchen Cat here and here
Merpel does not suggest putting the words Cook and Cat together in a single search query...

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